U.S. patent system may be biggest obstacle for inventors

By Bruce Berman
August 14, 2016

Is it possible that the biggest impediment that innovators face today is the U.S. patent system — the very system that was created to protect them?

Tory Norred

Tory Norred

Is the U.S. patent system the biggest impediment to success faced by innovators today? That is one of questions posed in an unsettling article recently published in Popular Mechanics, by investigative reporter, Scott Eden.

In How the U.S. Patent System Got So Screwed Up, Eden, an award-winning reporter, whose credits include the Wall Street Journal, ESPN and TheStreet, examines the negative impact of recent changes to the patent system by focusing on an inventor who got screwed by it.

The NPR-style article tells the story of Tory Norred, a fellow in the cardiology program at the University of Missouri, who in 1998 came up with the idea for a collapsible prosthetic aortic valve that could be fished up through an artery with a catheter and implanted in the hearts of patients who suffered from failing aortic valves. Unlike previous valves, Norred’s stent disperses the force needed to hold it in place against the aorta’s walls, requiring no sutures.

In November 2002 he received U.S. Patent No. 6,482,228, “Percutaneous Aortic Valve Replacement.” Norred knew that he was on to something important, but that was not the beginning of success, it was the start of a nightmare that led to repeated frustration.

“That’s my valve!”

Heart Valve

Figure 4 of U.S. Patent No. 6,482,228.

Norred spent the next four years talking to venture capitalists, medical products companies and consultants, in an effort to finance his invention. Despite many quality meetings, no one was interested in providing capital or product development – including the product-development people he signed non-disclosure agreements with at Medtronic, Edwards Lifesciences, Johnson & Johnson, and Guidant.

“By September 2003,” writes Eden, “Norred had all but given up on his dream when he and a colleague were strolling the exhibition hall at an important cardiology congress held annually in Washington, D.C. They came upon a booth occupied by a California startup called CoreValve. With increasing alarm, Norred studied the materials at the booth. He turned to his colleague: ‘That’s my valve!’”

The rest of the story is not unfamiliar: CoreVale basically ignored him, and Norred settled into private practice. Then, in 2009, Norred saw the news online: CoreValve had sold itself to Medtronic for $775 million in cash and future payments.

In fact, collapsible prosthetic valves fished up through an artery with a catheter and implanted in the aorta are well on their way to becoming the standard method of replacing worn-out heart valves. The annual market has already surpassed $1.5 billion and is expected to grow.

Immediate Suspicion

The remainder of How the U.S. Patent System Got So Screwed Up is devoted to the slow decline of the patents system over the past decade, and how a handful of “patent trolls” have been used as the reason to systematically dismantle much of the patent system. The same system that was the envy of the free-world and spawned many breakthrough inventions and successful businesses that employ millions.

“Norred wasn’t a troll,” continues the article, “and the decision to sue did not come easily for him. His lawyer told him that the cost to litigate could exceed half a million dollars. Norred did not have half a million dollars. He considered letting it drop and moving on with his life, but in the end he couldn’t. ‘It’s hard to give up on something you’ve worked so hard on,’ he said.”

“Whenever an independent inventor sues for infringement today, an immediate suspicion attaches to the case,” states Eden. “The anti-patent feeling is such that to assert one is to become stigmatized as a troll or, worse, a con artist or a quack. But there’s another way to look at these litigants. It could be that an inventor-plaintiff is a modern-day Bob Kearns, the Michigan engineer who spent decades fighting the global automobile manufacturing industry over the intermittent windshield wiper. They made a movie about it called Flash of Genius.

Greater Uncertainty

uspto-building-angle-335 copy

USPTO headquarters, Alexandria, Virginia.

Inter partes reviews (IPRs) were supposed to clear up much of the uncertainty surrounding patents that are thought to be infringed, by determining which if any of their claims are valid in the first place. But IPRs also have had an unfortunate side effect. IPR tribunals make it easier for sophisticated defendants to kill patents held by legitimate inventors.

“The IPR isn’t an effort to figure out whether an inventor invented something,” says Ron Epstein, a former Intel attorney. “It has turned into a process where you use every i-dot and t-cross in the law to try to blow up patents.” He adds, “There isn’t a patent that doesn’t have some potential area of ambiguity. If you set up the office so that no ambiguity is allowed, no patents will survive.”

The names of some of the great inventors adorn the halls of the United States Patent and Trademark Office (USPTO), in Alexandria, VA – Fermi, Marconi, Tesla, Disney, Pasteur. If Tory Norred’s experience is any indication, we can expect fewer new names to join them.

Go here for the full article, “How the U.S. Patent System Got So Screwed Up.”


Popular Mechanics is the classic magazine of popular technology. First published on January 11, 1902, it has been known for over a century as the monthly bible of the independent inventor. 

In 2011, two of Scott Eden’s pieces received “Best in Business” awards from the Society of American Business Editors and Writers (one for investigative reporting and one for feature writing). Eden is former staff reporter for TheStreet and Dow Jones Newswires.

The Author

Bruce Berman

Bruce Berman is principal of Brody Berman Associates, a management consulting and strategic communications firm he founded in 1988. He has supported 200+ IP portfolios, executives and businesses, including law firms and their clients. Bruce is responsible for five books, including From Ideas to Assets and The Intangible Investor and The Intangible Investor. He also writes The Intangible Investor column, which appears in IAM magazine. His weekly posts about trends can be seen at IP CloseUp. In 2016, Bruce founded the the Center for Intellectual Property Understanding, an independent, non-profit that focuses on IP awareness and education.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 44 Comments comments.

  1. Anon August 14, 2016 10:26 am

    Not to harp, but the “Tr011” line has me wondering what Ron Katznelson’s next move is.

    He has been a champion on this subject and the rather anemic (and excessively late) response from the government to his rather detailed expose of the “Tr011” propaganda lines in the White House paper go hand in hand with the remark in this article.

  2. angry dude August 14, 2016 5:08 pm

    This is a brave new world out there which requires new strategies:
    Hide it behind trade secrets if you can for as long as possible, otherwise – don’t do sh1t (unless of course you want “to promote the progress” at the expense of being a sucker..)

  3. Benny August 15, 2016 5:16 am

    Quote – “His lawyer told him that the cost to litigate could exceed half a million dollars” This looks like the core of the problem. Norred had the law on his side, but couldn’t afford the cost of justice. Perhaps the headline of the article should be, “how the legal system has priced itself out of the reach of innovators”.

  4. Anon August 15, 2016 8:22 am


    That is certainly an important factor, but just as certainly, it is not the core of the problem.

    Please employ a root cause analysis or at least another layer of “why.”

  5. François August 15, 2016 8:52 am

    I would have advised the inventor to find a large competitor of the infringer and sell his rights to the patent to that large competitor. Let the big guys fight over it.

  6. Benny August 15, 2016 9:16 am

    Here’s why. If you are granted a patent I am going to walk all over you because I know you can’t afford to defend your rights. (And also because you are Anon and I would be delighted to “prove” you wrong in court). If you work for, and assign your patent to, a big corporation, I am going to be more picky about who I’m entering the ring with. The system doesn’t give the low-budget innovator any practical options, only theoretical ones. Solution? if the big law firms would take up one or two cases a year pro bono, that might give some corporations pause for thought.

  7. Laurence Pearson August 15, 2016 10:53 am

    I just scanned the IPR decisions of the PTAB that killed the patent in this case. I don’t understand the connection between what happened here and the term “patent trolls” and some of the other accusations. Just on a quick scan, there seemed to be ambiguity in the claim language, including a 112 para. 6 issue. Dr Norred did seem to go ahead and fund his legal costs (he is a cardiologist, after all) and the case was taken as far as dismissal due to invalidity of the patent. Where was the “immediate suspicion” and the “need to dot i’s and cross t’s.” Are we not supposed to be precise in our patent drafting? Who was suspicious of him?

  8. Anon August 15, 2016 11:24 am

    As I stated – the core of the problem is different than the mere cost.

    Your answer confirms my view.

  9. Ron Hilton August 15, 2016 11:59 am

    The truth is that there are bad actors on both sides. It really depends on the strength and validity of the patent in question.

  10. angry dude August 15, 2016 12:07 pm


    You don’t get it

    It’s not just about money.

    It’s about the “exclusive right” – the right to exclude others from making, selling etc.
    This right used to be the foundational principle of the US patent system

    If your patent is found to be valid (new, unobvious etc) and (willfully) infringed (after all re-exams and court appeals are exhausted) then only injunction can make you whole again…

    At the same time court-imposed injunction can easily determine (via fair negotiation process, possibly with multiple competing companies ) the amount of money to be paid for past and future patent use (assuming that patent holder wants to benefit financially from his patent as opposed to just sitting on it which also should be perfectly legal), not some completely random figures derived by judges and juries

    Of course this would necessitate fixing US PTO patent granting process first, or some industries might be screwed in a short term

    But instead they decided to screw the American inventor

    Amen then

    let google invent stuff for you
    we’ll see how it goes

    P.S. On just cost-efficiency basis google’s “innovation” process is horrible, just horrible – remember those “google glasses” ?

  11. Thomas August 15, 2016 4:59 pm

    Was the patent system really created to “protect inventors”? I’ve seen this mentioned a couple of times recently and I wonder if this really is the aim of patent systems. There are not many patent applications filed by “inventors” these days, and the real aim of the patent system seems to be more to do with promoting innovation, rather than just protecting inventors?

  12. Edward Heller August 15, 2016 5:22 pm

    The problem seems be that the novel structure/materials in the ring element were not claimed, just its function. Further, other novel structure was claimed in MPF format, which the PTAB construed to read on different structure than the patent owner. When the patent owner tried to add claims to claim only the structure he thought corresponding, the PTAB held that he was broadening.

    It appears that the inventor may have been done in by his patent attorney when he used functional claiming without adding dependent claims that expressly claimed the structure.

  13. Anon August 15, 2016 6:08 pm

    Mr. Heller, your view is not in accord with the law and you are embarking on your witch hunt again.

  14. Edward Heller August 15, 2016 8:39 pm


    Innovation in existing products and services is spurred by competition.

    Innovation in new or replacement products and services is spurred by protection.

    We need a patent system primarily to promote the second form of innovation.

  15. Ron Hilton August 15, 2016 9:35 pm

    I’m not sure whether competition and protection promote different forms of innovation, but we need antitrust law for competition in the same way that we need patent law for protection. Completely unfettered competition leads to copy-cat products that deter innovation, just as stifled competition leads to dominant products that also deter innovation. A delicate balance between the two preserves the free (antitrust) and fair (patents) competition needed to promote innovation.

  16. Prizzi's Glory August 15, 2016 9:52 pm

    @Edward Heller#12, While I have no doubt that in some circumstances APJs will lie on official government documents at the behest of the USPTO leadership, I don’t see evidence of such in this IPR.

    Norred’s attorney seems to have made some basic errors that gave the PTAB the opportunity to invalidate Norred’s patent without criminal acts.

    I wonder whether Norred’s attorney failed to seek patent reissue because the Norred patent was reaching the end of its term.

  17. Benny August 16, 2016 2:00 am

    Edward at 14,
    Correct. The emergence of such critical technologies such as jet propulsion, digital communication, nuclear energy, electronic computers, high frequency electronics, even the internet, was spurred by…sorry, that wasn’t protection after all was it? It was government/military mandated research.
    Actually, a lot of innovation doesn’t get protected, but survives on its’ own merits (as in the case under discussion), in which case, as angry dude stated above, the inventor is helixed.

  18. Pro Se August 16, 2016 10:43 am

    The USPTO started to lose its way once lawyers were allowed to operate within in place of pure engineers. Lawyers are the water and the USPTO is the boat, lawyers are by which the integrity of the USPTO activity can float within the practice of law. Once the USPTO formed a crack where lawyers started to flow internally, like water, the ship is sinking because the USPTO was never traditionally designed to be a lawyer ran organization, but ran by engineers and scientists to designate rights among their peers. When an engineer can’t join the bar, but a lawyer can become a USPTO patent examiner, the house is useless against rain when the cloud is placed inside the roof.

  19. Edward Heller August 16, 2016 12:15 pm

    Ron, I can tell you for a fact that competition spurs innovation and lack of competition kills it. Compare the telephone equipment industry before and after the breakup of AT&T. Look at the disk drive industry. Semi-conductors. Computers. And so on. There are no exceptions.

    Lack of competition, by regulation or otherwise, kills the need to innovate.

    So, protection is really needed when launching new products that are easily copied by others.

  20. Edward Heller August 16, 2016 12:23 pm

    There is no doubt that wars, whether hot or cold, help develop new technologies. Clearly World War II was the reason we have nuclear power, and perhaps modern aircraft. It is also a lot of spinoff technologies from the space race. Back in the day, when Republican Party finally got into power and killed off the laissez-faire policy of the Democrats, there is a major investment in the development of railroads and the telegraph the United States all spurred by the government.

    But the telegraph itself and the railroad itself were not invented by government. And the railroads and the telegraph system were not built by and run by government. Thank God the government does not own and operate the Internet one telephone system. Wherever the government actually operates something, there is very little progress technically.

  21. Gene Quinn August 16, 2016 12:47 pm

    Pro Se-

    Your understanding of the U.S. patent system is incorrect.

    You say that engineers cannot join the bar, which is false. Engineers and scientists can and do become patent agents all the time. Furthermore, the vast majority of patent examiners are NOT lawyers. So your rant about lawyers is misplaced and uninformed.


  22. Ron Hilton August 16, 2016 2:01 pm

    Edward @19 I think we are in violent agreement! As an entrepreneur and start-up founder I have relied heavily on patent protection, and I have also seen how patents have been abused by industry incumbents to actually deter innovation. But big companies also need patent protection – for example how could the high cost of drug research be born by major pharma companies if copy-cat generics were able to immediately flood the market?

  23. Prizzi's Glory August 16, 2016 2:30 pm

    @Edward Heller#19, It is possible that AT&T would have innovated more if it had not been legally excluded from the computer market, but I know one inventor who got his start at AT&T Bell Labs and tells the story that he left Bell Labs in 1984 when the director of the lab in which he worked responded to his proposal to add a graphics chip to the AT&T cell phone with the comment, “Why would anyone want that?”

  24. Edward Heller August 16, 2016 3:53 pm

    But, Mr. Hilton, there is no competition in specific drugs. Each drug must be approved by the FDA first. That investment is justified only if there is patent protection.

    Each drug is therefor like the brand new widget. Patent protection is essential.

  25. Edward Heller August 16, 2016 3:57 pm

    Prizzi’s Glory, well, the guys the lead Bell Labs were no Steve Jobs, and vice versa, Jobs was no technologist. Jobs was a marketing genius.

  26. Gene Quinn August 16, 2016 4:05 pm

    Edward Heller & Prizzi…

    Steve Jobs was also something of a perfectionist. The current cadre of Apple executives could learn from his perfectionist characteristics and stop releasing alpha and beta products that customers have to live with. That was always the Apple advantage. Pay more so you get something that actually works. Those days are long gone it seems.


  27. Ron Hilton August 16, 2016 4:05 pm

    Edward #24 Like I said, we’re in violent agreement!

  28. Curious August 17, 2016 7:24 pm

    I can tell you for a fact that competition spurs innovation and lack of competition kills it.
    I like to think that it is “obstacles” that spur innovation. An obstacle can be a competitor, a technical problem, or a patent. Like water and electricity, business people like to take the path of least resistance. The cheapest/easiest approach is the approach they will likely take. However, if an obstacle is placed in the path, then one has an incentive to invent around the obstacle. Perhaps they need a cheaper way to do the same thing (that is being done by a competitor). Perhaps they need to do something but cannot because of a patent blocking the way. Perhaps they need to do X (currently not possible) before they can do Y (the desired goal). Consequently, X is an obstacle that needs to be overcome.

    Of the three things listed above, the biggest driver of innovation is: (i) technical problem, followed by (ii) preexisting patent, followed by (iii) finding a cheaper way. In (i), the end goal cannot be reached without the innovation. In (ii), if you don’t succeed, you can still go forward, but you have to pay a license. In (iii), nothing is preventing you from going forward — it just isn’t as profitable.

  29. Edward Heller August 17, 2016 7:27 pm

    Curious, you will find that major companies competing in the same product space cross license each other.

  30. Curious August 17, 2016 8:00 pm

    Curious, you will find that major companies competing in the same product space cross license each other.
    I am personally very well aware of that, but I’m not sure how that impacts what I stated.

    In the situation where cross-licensing does occur, there is a pointed need for patents since who pays what in the cross-licensing is highly dependent upon the size of the portfolio. When the sizes of the respective portfolios reaches in the hundreds, thousands, or even tends of thousands of patents, it becomes cost-ineffective to evaluate the portfolios based upon technology being covered. As such, the proxy for “value” becomes number of patents.

  31. Edward Heller August 17, 2016 8:52 pm

    Curious, it is not the size of the portfolio that counts. So long as each company is investing in R&D and getting patents, the benefit of a cross license is apparent. One company may be larger and have a larger R&D budget generating patents, but it also has more exposure. It kinda works out to a wash.

    Publishing large numbers of patents that can be used by competitors does not seem to be a good idea on its face. What counts is a few good ones, well prosecuted and strategically selected by wise old heads. Otherwise, a company is best advised to keep their technology secret.

  32. malcolm g chapman August 19, 2016 9:18 pm

    We know the patent office is more word smiths than engineers. Maybe patent holders need to be more stealthy, if the robbers sue you for ownership of your patent let them have it, don’t spend a dime on a lawyer, maybe get a few bucks out of them, so the patent robbers, unknown to them, your stolen patent will be a “dud” after there buyer spends $ millions on it. (unexpected consequences) “Al Gore”
    This way, because they claim the useless patent. You are free of any patent litigation.
    By simply leaving out key equipment or functions in the patent that make it work for you only, that is not claimed in the patent. So get your new patent pending under a different name for the device with parts that are not part of (your original) that the robbers claim is theirs!. don’t hang it all out for everybody to see, remember lose lips sink ships.

  33. Curious August 20, 2016 10:11 pm

    Curious, it is not the size of the portfolio that counts.
    It does. Cross-licensing isn’t necessarily a “I get a license to your patents and vice-versa” kind of deal. Oftentimes, “you get a license to my patents and pay me $XXXXX and I get a license to your patents because my portfolio is much bigger than your portfolio.” Size definitely matters.

    Publishing large numbers of patents that can be used by competitors does not seem to be a good idea on its face. What counts is a few good ones, well prosecuted and strategically selected by wise old heads. Otherwise, a company is best advised to keep their technology secret.
    That’s assuming you can keep your technology secret — not likely going to happen. Engineers talk to other engineers. They go to technical conferences. Sales people talk up the latest improvements. Engineers move onto different companies. In a large corporation, there are just too many possible ways for technology to leak out that one cannot reliability and effectively keep track of it all.

    What counts is a few good ones
    If you can reliably tell me which ones are those, then you are worth your weight in gold. Again — not likely to happen. When one deals with the bleeding edge of technology and you’ve got hundreds if not thousand of irons in the fire, some pan out and some don’t. However, it becomes really difficult to tell which ones are which at the early stages of the patent process. Additionally, the good idea of today may not be commercially viable for 10-15 years down the road, but the minor improvement developed 10 years later may be the one that becomes the road block for the competition.

  34. Anon August 21, 2016 8:17 am

    I agree with Curious – it is beyond Polly Anna to think that the size of the portfolio does not matter. One look at IBM and its “strategy” of pushing for shear number of patents year over year (with many of questionable value) should inform the situation.

    As far as “publishing larger numbers of patents that can be used by competition” this comment too appears to miss the mark. Many of the patents simply CANNOT be “just used” – unless a license fee has been paid. This is a pure bonus for patents on items in directions that the company itself is not pursuing. Those patents close to the actual pursuits may be only offered at substantially higher rates – or may not be offered for license at all. The comment then presupposes its own conclusion without a careful and more detailed business evaluation.

    Most companies – under a tight budget – will strive more towards the last point of trying to maintain “only a few good ones.” Curious point here tends to widen the pool – but not eliminate that point. However, as I noted, not all players use that business tactic, and the point that Curios provides is certainly a valid one. This does mean that this last point, while modified to a certain extant is valid on occasion, it certainly does not carry the weight that Mr. Heller would like it to carry.

    One takeaway from this is that those that can afford to play the game will play the game- at the same time can engage in efforts to diminish the value of patents, make the reward/risk of patent efforts more negative and even play “false flag” games. The dangers to a strong patent system come from several different directions, and may very well include those that currently heavily use the system. Increased costs today may be a strategic lower overall cost when being able to cripple the disruptive innovation of others.

    Machiavellian? Sure, but take the blinders off folks – this is some seriously Big Corp with seriously Big Profits we are talking about.

  35. Edward Heller August 21, 2016 3:15 pm

    IBM and AT&T are special cases. Because of anti-trust consent decrees, they had to license their patents to all comers. Each of them adopted the policy of licensing for a reasonable royalty, including cross-licenses back. They developed licensing programs that did more than just obtain cross licenses back, but actually were a profit center and funded their R&D. Obviously, under this kind of business model, having a lot of patents is impressive by itself.

    So neither example refutes what I said about patenting enough to obtain cross licenses without disclosing one’s technology to one’s competitor. That is sufficient for “business” purposes.

  36. angry dude August 21, 2016 7:01 pm

    “…patenting enough to obtain cross licenses without disclosing one’s technology to one’s competitor”

    Isn’t patenting all about public disclosure of invention… so anyone in the world can practice it ?

    It seems that this fundamental aspect of patents is completely forgotten (or ignored on purpose) by the general public (and by major corporate players in this field – the true patent system abusers)

    Every time the subject of patents comes up in general discussion with lame people (try any bar in US) everybody has an impression that if you patent something it’s like a government-protected trade secret – a ticket to riches
    When I tell them the true story everyone in the audience looks at me like I’m some kind of retarded idiot (which I am btw for trusting the US government back in 2002 and filing for US patent)

    Sad, very sad…

  37. Edward Heller August 22, 2016 8:41 am

    Angry dude, you be surprised that a lot of management in corporations is almost as naïve as the average patron of the local bar. Our duty as patent counsel is to provide strategy to top management that is good for the corporation. What I see, and in many cases in corporate life, our decisions and recommendations are being made not so much for the good of the company, but for the good of the recommender.

    If one’s salary and position depends upon the size of one’s budget, and they all are, the recommendation by most patent counsel will always be to expand the patent portfolio and perhaps turn it into a profit center. (And if advised by outside counsel, there would be little difference because the greater the patent portfolio the greater the firm’s profit.)

    But if I were a consultant to top management and I found this to be the practice of a particular company, my recommendation would be to fire that patent counsel.

  38. Ron Hilton August 22, 2016 12:08 pm

    I have seldom regretted filing a patent, but I have definitely regretted a few that I didn’t file (because I thought it was obvious from the prior art, but a competitor got a patent on it any way and sued me with it). As long as patent quality is not improved, patent quantity will remain important to a lot of companies, and those with deep pockets will use that to their advantage.

  39. angry dude August 22, 2016 1:43 pm


    Unlike you, most independent inventors are NPEs, or “patent trolls” (they can’t be sued for patent infringement by competitors)

    Disclosing something new and important to the world in return for nothing (or worse) is a failing business plan

    It’s much better just to sit on one’s ass, drink beer and do nothing

    And to hell with promoting the progress

  40. Ron Hilton August 22, 2016 2:02 pm

    There’s nothing wrong with being an NPE, but unfortunately the trolls (extortioners of settlements using patents of dubious value) have poisoned the well for the good guys. If we (independent inventors) want companies to work with us, we really need to solve the troll problem. Patent quality is a big part of the solution.

  41. Edward Heller August 22, 2016 4:02 pm

    Ron and Angry, well one strategy to keep it secret while retaining the right to patent is to yearly file a provisional application, attempt to license under confidentiality, and if someone adopts, then file non provisional and go after them.

  42. angry dude August 22, 2016 4:39 pm


    if you accept the concept of patents being private property which can be bought and sold then the “troll” problem is only a PR campaign by SV corporate infringers

    Patent quality is NOT part of this problem – it’s entirely different and huge problem with government incompetence and corruption
    It’s not up to us, independent inventors or patent attorneys, to solve – we are only a tiny portion of the general population

  43. angry dude August 22, 2016 4:42 pm

    Edward at 41

    yeah, right..

    good luck with that strategy 🙂

  44. Ron Hilton August 22, 2016 5:00 pm

    I personally know of horror stories on both sides – companies being sued by trolls with patents that should never have seen the light of day, and independent inventors being ripped off by companies with deep pockets to stave off legitimate infringement suits. Any solution has to deal with that reality.