USPTO, PTAB refuse to follow Supreme Court Nautilus decision

By Gene Quinn
September 5, 2017

USPTOSerious and disturbing questions about the Patent Trial and Appeal Board (PTAB) have been raised over the last several years, ranging from a lack of due process at the PTAB, to the refusal to consider timely submitted evidence, to very serious conflicts of interest where Judges are deciding cases of former defense clients, to pro-patent eligibility decisions being deleted from the PTAB database, and admitted stacking of PTAB panels to ensure desired outcomes. Now the Federal Circuit will soon be faced with issues almost too bizarre to belief, except for those intimately familiar with the imperial nature of the PTAB. Indeed, the PTAB is openly refusing to follow the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., it has found a term previously determined definite by the Federal Circuit to be indefinite, and the Solicitor’s Office is siding with an infringer with a reputation as a knock-off artist over an independent inventor.

Although it probably feels like it, you haven’t entered some bizarro patent universe or twilight zone. This is sadly business as usual for the PTAB and a Trump Patent Office that is largely – if not completely – indistinguishable from the Obama Patent Office. Innovators of all stripes are having their interests subjugated to satisfy willful infringers, even knock-off artists. It is difficult to belief the U.S. patent system has fallen to such lows.

Just last week the United States Patent and Trademark Office (USPTO) filed a brief as an Intervenor at the United States Court of Appeals for the Federal Circuit in Tinnus Enterprices, LLC v. Telebrands Corp. Tinnus Enterprises owns the patent rights to one of the most successful new toys to hit the market in years – Bunch O Balloons – which has been unscrupulously copied by Telebrands. The ingenious invention quickly and easily allows the filling of 100 water balloons in 60 seconds, it works like a charm, and it flies off the shelves of major retailers like Costco, for example.

Shockingly, the USPTO has decided to intervene not on the part of the inventor and patentee of this extraordinarily successful invention made by independent inventor Josh Malone, but instead has chosen to intervene on behalf of knock-off artist Telebrands, a company with a reputation in the industry for pushing the envelope whenever possible to copy successful products invented by others.

True to its reputation, shortly after learning of the Bunch O Balloons product, Telebrands soon began selling a virtually identical replica of the Bunch O Balloons under the name Balloon Bonanza – identical in virtually all respects including color. Tinnus filed lawsuits, even obtaining a preliminary injunction that was upheld by the Federal Circuit earlier this year, which is not easy to do in this era where there is a decided bias against patent owners and an even greater bias against the issuance of injunctions. See Federal Tinnus Enters., LLC v. Telebrands Corp., (Fed. Cir. Jan. 24, 2017).

So determined has Telebrands been at knocking off Bunch O Balloons that it has filed multiple post grant challenges, and the legal fees incurred by Malone and his partners to chase down these knock-offs have so far exceeded $17 million. Each year, Telebrands reboots with a minor change to the design, and the battles reset. Earlier this year, in May 2017, Tinnus won it’s third preliminary injunction, but today Walmart is still selling pallet loads of knock-offs.

Making matters worse, in the post grant review (PGR) decision of the Patent Trial and Appeal Board (PTAB) the Board actually explained that they were knowingly and intentionally choosing to ignore the Supreme Court’s most recent pronouncement on the proper standard for determining indefiniteness in Nautilus, Inc. v. Biosig Instruments, Inc. Instead, the PTAB explained that they believed that the proper test for indefiniteness remained the test outlined by the Federal Circuit in In re Packard, which was decided prior to the Supreme Court’s Nautilus decision. This pre-Nautilus standard applied by the PTAB to determine whether claims are indefinite is just another example of how the USPTO take positions against patent owners when deciding whether to uphold a patent the agency issued and which is supposed to be statutorily presumed valid.

Not giving any deference to the Office’s own examination procedures is hardly newsworthy, but choosing to ignore Supreme Court precedent in order to invalidate the patent of an independent inventor being repeatedly harassed by knock-off after knock-off is rather inexcusable. The hope that President Trump would usher in a new era at the Patent Office in favor of patent owners and property rights seems to be all but gone. The bias against patent owners is not limited to those with biotech innovations, or computer implemented inventions. Here is an example of an independent inventor who had the fortune to invent something desirable – potentially iconic – and the patent deck, and Patent Office, is lined up against him.

But why doesn’t the USPTO follow Nautilus? Because the Patent Office feels that since they apply the broadest reasonable interpretation to claims that means that the indefiniteness standard set forth by the Supreme Court in Nautilus does not apply to the Office. Breathtaking! Simply stated, there is absolutely no reason why the USPTO cannot apply both the broadest reasonable interpretation and the Nautilus standard. There is nothing internally or irreconcilably divergent with respect to the two.

So as to not put words in the mouth of the Administrative Patent Judges on the PTAB, here is exactly what they wrote about why they do not follow the Supreme Court’s test for claim indefiniteness:

In this post-grant review AIA proceeding, we apply the test for indefiniteness approved by the Federal Circuit in Packard, i.e., “a claim is indefinite when it contains words or phrases whose meaning is unclear.” We recognize that Packard involved a USPTO patent-examination matter. We also recognize that subsequent to the Packard decision, the Supreme Court in Nautilus enunciated a differently worded definiteness requirement in the context of patent infringement litigation. We do not understand Nautilus, however, to mandate the Board’s approach to indefiniteness in patent examination or reexamination matters or in AIA proceedings, in which the claims are interpreted under the broadest reasonable interpretation standard, and an opportunity to amend the claims is afforded. The test for indefiniteness approved in Packard, which is applied by the USPTO in patent examination, sets a threshold for indefiniteness that demands at least as much clarity, and potentially more clarity, than the Nautilus definiteness requirement. See MPEP § 2173.02(I).

But wait – if you can believe it – as justification for refusing to follow the Supreme Court’s decision in Nautilus, the PTAB panel actually cited the fact that in post grant proceedings applicants have the opportunity to amend claims to correct ambiguity. Talk about the most disingenuous argument ever made by anyone ever. Yes, the statute clearly gives the applicant the right to one amendment, but the PTAB virtually never grants applicants the right to actually amend. In fact, the PTAB has consistently and intentionally misreading the clear wording and intent of the statute. The PTAB reads the amendment provisions of the statutes as giving the PTAB (not the patentee) absolute discretion to allow or disallow amendments. Amendments cannot be made as a matter of right in a post grant proceeding. The PTAB says applicants merely have the right to ask for an amendment, which the PTAB will then summarily reject in virtually all cases. This is the issue before the Federal Circuit currently in In re Aqua Products, a case the Federal Circuit took en banc and has been sitting on after hearing oral arguments in December 2016. See Where is the Federal Circuit on Aqua Products?

According to the PTAB panel: “An applicant’s ability to clarify claim language through amendment was a significant reason why the Federal Circuit in Packard approved of the indefiniteness test recited in the MPEP.” That being the case, and the absolute reality that applicants are denied virtually all attempts to amend, by the PTAB’s own reasoning it is wholly inappropriate to apply Packard regardless of whether it was overruled by the Supreme Court.

And it isn’t just this particular PTAB panel that holds this belief. On behalf of the USPTO as a whole the Solicitor’s Office intervened to argue that Packard is the proper standard and the Office doesn’t need to follow Nautilus.

All of this matters because Packard says a “claim is indefinite when it contains words or phrases whose meaning is unclear”. The Supreme Court specifically and intentionally overruled the Federal Circuit’s jurisprudence on indefiniteness in Nautilus. Justice Ginsberg, writing for a unanimous Supreme Court, wrote: “We conclude that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement.” Ginsberg went on to succinctly and clearly state that the Court held: “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecu­tion history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

Therefore, the Packard standard focuses on whether meaning of a word or phrase is “unclear”, which is distinctly different than the test annunciated by the Supreme Court in Nautilus.

Packard invited the Federal Circuit to say whether the insolubly ambiguous test, then the test used in litigation to determine whether a patent claim was indefinite, was the appropriate test to be applied during prosecution. The Federal Circuit declined, and even noted that neither party could find a case on point where the Federal Circuit had ever addressed the question. Presumably the Judges and Clerks couldn’t find a case on point either.

What else do we know? As already mentioned, the Federal Circuit has already issued an opinion in a related case between Tinnus and Telebrands – and the the term the PTAB found to be indefinite in its PBR final written decision is the same term the Federal Circuit has already found to be definite in that related appeal! See Federal Circuit District Court’s Grant of Preliminary Injunction. Indeed, in the Federal Circuit opinion, authored by Judge Stoll, the court seemed to openly mock the argument that one of skill in the art, admitted to be an individual with at least two-years of engineering schooling, would not understand what it means to be “substantially filled.”

Judge Stoll wrote:

We find it difficult to believe that a person with an associate’s degree in a science or engineering discipline who had read the specification and relevant prosecution history would be unable to determine with reasonable certainty when a water balloon is “substantially filled.”

See Federal Tinnus Enters., LLC v. Telebrands Corp., (at page 21).

Of course, we also know the last time the Supreme Court pontificated on the issue of indefiniteness it spoke unanimously and said the proper test was whether claims read in light of the specification and prosecution history inform those of skill in the art with reasonable certainty of the scope of the invention.

Still further, we know that the Board felt that it was compelled to some extent to continue to apply Packard because claims can be amended during post grant proceedings, but we also know that is simply not true – it is a lie given the practice of the PTAB as it has unfolded over nearly five years.

Thus, what we seem to have here is yet another in a very long and growing line of abusive decisions from the Patent Trial and Appeal Board. This time, we also have the Trump Administration Patent Office picking up right were the Obama Administration Patent Office left off – siding with infringers over innovators and backing an imperial PTAB with powers that seem to know no limits.

There is a fundamental lack of due process at the PTAB, the decisions are arbitrary and capricious, the refuse to consider timely submitted evidence, the tribunal has misapplied the law of obviousness, determined that an MRI machine is an abstract idea, they have ignored the law with respect to what is a CBM patent, allowed very serious conflicts of interest where Judges are deciding cases of former defense clients, pro-patent eligibility decisions have been deleted from the PTAB database, and the Office has admitted stacking PTAB panels to ensure outcomes. Now the PTAB refuses to follow the Supreme Court, finds a term previously found definite by the Federal Circuit to be indefinite, and is siding with an infringer with a reputation as a knock-off artist over an innovator.

With every passing day and each new piece of evidence it becomes more and more clear. The only viable solution is to disband the PTAB.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 80 Comments comments. Join the discussion.

  1. Night Writer September 5, 2017 9:35 am

    Wow. We don’t understand Nautilus. Wow.

  2. Bluejay September 5, 2017 10:10 am

    The Oil States attorney should bring this to the attention to SCOTUS.

  3. Anon September 5, 2017 10:38 am

    While I do applaud the continued efforts to spotlight the abomination spawned by the AIA, the comment of “This pre-Nautilus standard applied by the PTAB to determine whether claims are indefinite is just another example of how the USPTO take positions against patent owners when deciding whether to uphold a patent the agency issued and which is supposed to be statutorily presumed valid.” is off in a particularly important manner.

    That very “stick in the bundle of property rights” of that statutory presumption of validity no longer exists for items dragged back into the executive administrative agency of the Article I domain of the USPTO.

    At the legally separate institution decision point, that particular stick is indeed taken (think eminent domain, except for the lack of any remuneration or ability to challenge the distinct initiation decision point in an Article III forum).

    As to “But why doesn’t the USPTO follow Nautilus? Because the Patent Office feels that since they apply the broadest reasonable interpretation to claims that means that the indefiniteness standard set forth by the Supreme Court in Nautilus does not apply to the Office. Breathtaking!

    There is actually a colorable argument FOR this position. Which is all the more reason why it is critical to note exactly what happens to a property right at the distinct legal point of the initiation decision point.

    Some have attempted to “move the goalposts” and claim that the ensuing result of any deliberation by the PTAB is itself an item that can be challenged in the proper Article III forum. But that argument is a non sequitur, and it is the positions argued here*** that if taken at face value, actually make the Takings case (and the ensuing Constitutional infirmity) all the more stronger.

    As to: “Talk about the most disingenuous argument ever made by anyone ever. Yes, the statute clearly gives the applicant the right to one amendment, but the PTAB virtually never grants applicants the right to actually amend.” I will once again point out that the words as used by Congress do not in fact provide for ANY amendment of right. That is simply not there. Clearly. The “right to ask” and the “right to amend” simply are not the same things. But this makes the statement by the Article I judge even more dam-worthy (not less). An opportunity to ask is NOT an opportunity to amend.

    The decision in In re Aqua Products NEEDS to be made and published. Even if (especially if the law as written is upheld (and reflects my repeated corrections to this point).

    ***and again, while I may not agree with it, it is indeed colorable to draw a legal distinction between what happens in the Office domain and what happens outside of the Office domain; other items have been shown to be different as well, for example, inequitable conduct).

  4. Night Writer September 5, 2017 10:54 am

    @3 Anon: one of your better posts.

  5. Judge Rich's Ghost September 5, 2017 11:04 am

    Gene: “Yes, the statute clearly gives the applicant the right to one amendment . . .”

    With respect, you ought to clarify this statement. The problem with current IPR process is that there is no RIGHT to amend. There are procedures which allow amendment under certain circumstances, and the PTO/PTAB only rarely allow amendment, but that is very different from saying there is statutory right to amend.

  6. Bemused September 5, 2017 12:22 pm

    Bluejay@2: Agree. And yet another example of an Article I tribunal overruling an Article III court. This example is particularly galling in the sense that a PTAB panel thumbed their noses at rulings (reaching the opposite result) from the district court and the CAFC. Stated another way, the PTAB just overruled the Federal Circuit on the indefiniteness issue for these particular claims. Wow.

    Remember that old adage: Nature abhors a vacuum? When the CAFC had an opportunity to push back on absurd PTAB decisions, they tucked their tails between their legs and instead started issuing Rule 36 affirmances. Given the complete leadership failure of the CAFC to police the PTAB its no wonder the PTAB has stepped up and seized the reins of patent adjudication.

    Shame on “Chief Judge” Prost and shame on SCOTUS if they don’t put a stake through the heart of the PTAB.

  7. Gene Quinn September 5, 2017 1:00 pm

    Judge Rich’s Ghost-

    As I’ve written before, I think the statute itself and the entire statutory scheme is extremely clear. There is a statutory right to amend that is vested in the patentee. The PTAB, however, intentionally misinterprets the statute to read the discretion to amend as their discretion to allow an amendment. That is not at all in keeping with the statutory scheme, or the legislative history. The PTAB does this because they don’t want to be examiners. Unfortunately for them the statute gives the patent owner the right to amend once.

    So I think it is perfectly accurate to say that there is a statutory right to amend, that the PTAB refuses to recognize that statutory right to amend, and that virtually no amendments are allowed. Yet another example of a rogue tribunal that does not follow the clear intent of the statute and ignores extraordinarily clear legislative history.

  8. Gene Quinn September 5, 2017 1:03 pm

    Bemused is 100% accurate when he says that the PTAB seized the reins of patent adjudication. There is no doubt that the PTAB is the most important patent tribunal in the world. They refuse to follow the Supreme Court at their discretion and seemingly without consequence, and the Federal Circuit has except in a few rare instances subjugated themselves to the dominance and superiority of the PTAB. Obviously, everything we learned in law school about an Article III court having dominion over and review authority over an Article I tribunal is completely wrong.

  9. Judge Rich's Ghost September 5, 2017 1:25 pm

    The statute grants the right to file a motion to amend. It doesn’t grant the right to amend: “[T]he patent owner may file 1 motion to amend the patent in 1 or more of the following ways . . .” Even that is a bit of a stretch, as it uses the permissive “may.”

  10. Gene Quinn September 5, 2017 1:43 pm

    Judge Rich’s Ghost-

    The discretion in the statute is there so as to not require patent owners to file a motion to amend. The discretion in the statute is not there to allow the PTAB to refuse amendments. The legislative history is very clear on this point.

    Also, to read it as being discretionary with the PTAB would absurd. Does anyone really think Congress intended to give the PTAB discretion to prevent the patent owner from canceling a claim? That, of course, must be what the statute means for those who read it as you do. So your reading of the statute leads to an absurdity, which is not how statutes are supposed to be construed. At best, that leads to an ambiguity that requires one to look at the legislative history. When that is done it is clear that the intent of every Member of Congress who spoke on this issue (and there were many) was that patentees would have the right to amend to keep the patent. Over and over again Members kept saying that no one was looking to take patents away, this was just about making sure the claims were patentable.

  11. Judge Rich's Ghost September 5, 2017 3:31 pm

    Well, if your primary argument is to ignore the statutory text and go to purpose and legislative history, you won’t win many arguments in court. And the Supreme Court understood that there is no absolute right to amend claims in IPR. It’s not just me and most attorneys.

    Gene: “Does anyone really think Congress intended to give the PTAB discretion to prevent the patent owner from canceling a claim?”

    Answer: Of course. That’s exactly what Congress usually means when it uses permissive language such as “may.” This is doubly so when Congress said it can be made in the form of a motion. By requiring the filing of a motion, it necessarily invokes the PTAB’s power to grant or deny a motion. Otherwise, there is no point in filing a motion.

    While you have some strong policy arguments, your argument steers off course and runs counter to the statutory language and the Supreme Court’s discussion.

  12. Gene Quinn September 5, 2017 4:22 pm

    Judge Rich’s Ghost-

    My argument would steer off course and run counter to the statute if the statute gave the PTAB discretion to deny the motion to amend. The statute does not give the PTAB discretion to deny the motion to amend. The statute merely says that the patent owner has the right to file one motion to amend, which is not mandatory. No where in the statute is a power found in the PTAB to deny that motion to amend. In fact, it would be the ONLY circumstance anywhere in the USPTO where anyone has the authority to deny the cancellation of claims. Claims can be cancelled even on appeal. Claims can also be cancelled in reissue and reexamination. So it seems that my reading of that statute, which is in keeping with the entirety of the Patent Act is far more logical than is any other reading of the statute. That it is also clearly and unambiguously in line with the legislative history is just icing on the cake.

  13. HeartPTAB September 5, 2017 5:29 pm

    Hold on, so bunch-o-balloons “flies off the shelves of major retailers” is somehow a bad thing for Tinnus?

    If it’s successful and the patents don’t matter, then this shows that patents aren’t necessary.

  14. HeartPTAB September 5, 2017 5:41 pm

    “This is sadly business as usual for the PTAB”

    What this article shows is that the PTAB provides much needed help for independent software folks to be able to work and develop software without blackmail threats from the parasitic legal industry!

  15. Bemused September 5, 2017 6:34 pm

    HeartPTAB you truly are clueless. “If it’s successful and the patents don’t matter, then this shows that patents aren’t necessary.” Yep you nailed it, Einstein.

    Now try going to your buddies/paymasters in Silicon Valley and let them know that they don’t need patents for their software or hardware or search algorithms because they’re already so successful. I’m sure they’ll see the logic of that argument (not).

    As regards your comment regarding the “blackmail threats from the parasitic legal industry” that’s too dumb to even respond to – although I’m sure there will be posters on this blog that will have more inclination to do so.

  16. Night Writer September 5, 2017 7:16 pm

    @14: HeartPTAB: the balloon example actually illustrated that without patents that successful inventions are copied and your profits drop.

    Can you give examples of “blackmail threats from the parasitic legal industry!”?

    I’d bet that Gene would publish a blog entry from you if you would take the time to document a case of this blackmail threats. Believe it or not the vast majority of us on this blog would like the patent system to work well.

  17. Judge Rich's Ghost September 5, 2017 7:45 pm

    Gene, if that’s your best argument, that is not very good. A motion by its very nature is subject to being granted or denied. That is plain for anyone who does patent appeals or litigation.

    Had Congress wanted to do what you claim it did, Congress could have used straightforward language. Congress could have and would have said: “[T]he patent owner shall have the right to amend the patent in 1 or more of the following ways . . .” Unfortunately for patent owners, that’s not what Congress enacted, and it’s not we have.

    Your argument that is consistent with the rest of the Patent Act is a red herring because statutory terms on construed in the context of the act in which they are passed–here the AIA–not necessarily unrelated sections in the same title of the U.S. Code–i.e., all of Title 35.

    Again, I’m not disputing that the PTAB has misapplied the general intent of Congress by making the amendment process illusory. But your argument is different, misapplies canons of statutory construction, and, even assuming ambiguity in the statute, overlooks the wide discretion courts give agencies in interpreting and applying statutes.

  18. Pro Se September 5, 2017 8:21 pm

    “where Judges are deciding cases of former defense clients”

    -I can tell you I know of instances where there have been “big firm” IP attorneys on the golf course with PTAB judges..

    If the SCOTUS disbands the PTAB..

    All kinds of hush info will emerge…

  19. Judge Rich's Ghost September 5, 2017 8:49 pm

    I agree with Pro Se. Many attorneys/firms are very cozy with PTAB judges.

  20. Night Writer September 5, 2017 10:31 pm

    I am a “big firm” IP attorney and have been on the golf course with a PTAB judge. But, we didn’t discuss any cases and have been friends for a long time.

    Not sure just being on the golf course means much.

  21. HeartPTAB September 6, 2017 12:55 am

    “Believe it or not the vast majority of us on this blog would like the patent system to work well.”

    Night Writer – not only does the patent system not work well for small innovative software developers – but it does not work at all. Small being the key here – large corporations that as Gene points out pays $millions to develop software, the system works perfectly well for. Try implementing software as a small guy and patents offer you nothing. But according to Gene, I know nothing about writing software.

  22. Benny September 6, 2017 5:32 am

    Night @15,
    Quoted, “the balloon example actually illustrated that without patents that successful inventions are copied and your profits drop.” It does indeed. But the example also shows that with patents and a partially functioning IP system you can spend 17M$ trying to enforce your patents, which, I’m guessing, is drawn from your profits. Question is, which is the greater loss? No one would pay me bonus for choosing to stay quiet and take a 16M$ drop in profits, but I would be ahead of the game by 7 digits.

  23. Edward Heller September 6, 2017 5:39 am

    Gene, I have to had it to you. Another great post.

  24. Night Writer September 6, 2017 6:51 am

    @18 HeartPTAB: The devil is in the details. I have been the patent attorney for software start-ups and it has worked-out fine. I also see a lot of people that just copy what other people have done and are surprised when they get sued.

    The devil is in the details. We’d have to see your details. And, we probably would greatly appreciate you taking the time to tell us your details as a case study.

  25. Night Writer September 6, 2017 6:53 am

    @19 Benny: I don’t understand your post. What is your point? I think the case study is pretty clear that if you have a great product that many people are going to copy it and undersell you. Without the patent system many people aren’t even going to bother.

  26. Night Writer September 6, 2017 6:54 am

    I think Gene has been showing very well that the PTAB is a rogue entity that has few constraints on what they can actually do.

  27. Roger Heath September 6, 2017 7:04 am

    TAB – “where software folks discuss patents and their effects on real people developing innovative software.”

    OK- Where are they?

  28. Benny September 6, 2017 7:44 am

    Night at 22,
    I’ll do the math for you. The patent holder spent 17M$ trying to remove knock-offs from the market. To obtain 17$M, the patent owner must sell thousand products. How many knock off products has the patent holder removed from the market? If the answer is less than , he is playing a mug’s game, since, assuming he was entirely successful, he would have increased his profits, due to increased sales, by less than 17M$.
    In this particular case, assuming the figure of 17M$ stated in the article is correct, it is possible (I can’t say for certain) that the cost of enforcing the patent exceeds the monetization value of the patent, in which case IP ownership is a net loss.
    I don’t need to be reminded that this is only true because the system is helixed.

  29. Night Writer September 6, 2017 9:40 am

    @25: You should read the blog post by the inventor and use the facts in the blog post. Again, it just isn’t clear what you are saying.

    http://www.ipwatchdog.com/2017/07/16/real-staggering-cost-getting-patent-ptab/id=85639/

  30. Joachim Martillo September 6, 2017 10:03 am

    A non-lawyer’s question. At what point does a member of the public have the right to seek disbarment of a PTAB judge? Some of Judge Moore’s comments have implied that the Director has violated 18 U.S.C. § 1001. I have certainly found prima facie evidence that members of the PTAB have violated this statute, which is supposed to describe a crime as grave as perjury.

  31. Bemused September 6, 2017 10:37 am

    Joachim@28: As an initial matter, you said “disbarment” which is revocation of the license to practice law. I presume you really meant “termination” or the removal of that individual from serving as a PTAB judge.

    If that is accurate, the simple answer is that the public does not have a right to seek the termination of a PTAB judged. These individuals are federal government employees so you’d have to go through the proper administrative procedures to file a complaint with the USPTO, etc, etc.

    I presume (with a caveat that I’ve never worked for the federal government), Presumably, that whichever department at the USPTO is charged with handling complaints against employees would investigate and take proper remedial action to the extent the complaint was found to be meritorious.

    As an aside, my general understanding/impression of federal employee job security is that short of them standing up on their boss’s desk and urinating on said desk and said boss, its almost impossible to terminate a federal government employee.

  32. Gene Quinn September 6, 2017 11:21 am

    Judge Rich’s Ghost-

    I’m sorry that you don’t think my best argument is good. My argument, unlike your argument, is in keeping with known canons of statutory construction. Your argument ignores canons of statutory construction and leads to an absurd interpretation of the statute. One that would require the PTAB to do unnecessary work rather than to allow a patent owner to capitulate. Where in US process does that occur? Nowhere. So your reading of the statute would be to allow the PTAB to hold on to a claim and spend the time interpreting a claim that the patent owner wants to cancel. Completely absurd.

    Being consistent with the entire Patent Act is not a red herring… it is a canon of statutory construction.

    We will see who is correct. Clearly, we know what that statute was intended to do from the legislative history. We also know what the statute was intended to do from the words of the USPTO and PTAB itself. Whenever it is convenient, as in Josh Malone’s case, they point to the statute and fraudulently claim that the patent owner can amend, which we all know is a lie. The PTAB wants to have its cake and eat it too. They deny practically every amendment because they claim they have the discretion to do so, but when they find it useful they point to the statute and say the patent owner has the opportunity to amend. To call that disingenuous is an insult to things that are merely disingenuous. The PTAB is a sham, period.

  33. Robert W. September 6, 2017 11:43 am

    Gene, I commend you for your persistent and prompt reporting on the current sad state of the “imperial nature” of the PTAB and USPTO. However, your final conclusion (last line) that “The only viable solution is to disband the PTAB” was mild to the extreme.
    IMO, the most democratic and viable solution is to disband the USPTO, the main obstacle in the American path of inventions. Prior to searching for the right alternative, is useful to do a little math to reveal the financial burden imposed on the Americans, without their consent, by the inefficient and wasteful office of the USPTO.
    1. USPTO “income”: The FY2018 budget, set in May 2017, is $3.6B. The # of USPTO employees in 2016 was 12,725 (8,350 examiners & 570 examining attorneys).
    The resulting ratio: (tax payer funds) / (USPTO employee) = $283,000
    This means that the American inventors (through patent application fees) and the general tax payers (including the same inventors) pay an average of $283k for each USPTO employee. In general, companies with revenues of $283k/employee are considered very profitable and attract further investments! However, USPTO is not a for-profit corporation, but a continuously deepening financial sink hole!
    https://en.wikipedia.org/wiki/United_States_Patent_and_Trademark_Office#Structure
    2. Patent examiner salaries: In 2016, avg salary = $118k. In 2004, avg salary = $85k. This means that in 12 yrs, the Examiner’s avg salary increased by $33k, or an average compound rate of 2.8% / yr. During the same period, the US inflation rate was less than 2% (<2% in 2004-2014, <1% in 2015-2017). Clearly, USPTO salaries are far ahead of the inflation rate!
    https://www.federalpay.org/employees/occupations/patent-examining https://tradingeconomics.com/united-states/inflation-cpi
    3. These figures show that USPTO, in the realistic business world of a private company held accountable for its spending versus its income, would have been forced into a long overdue bankruptcy. And this is the simple case for disbanding the USPTO and its second fiddle, the PTAB. They are not only inefficient, a major obstacle to the inventors and the source of endless and ginormously expansive litigations, but they are financially poorly managed and constitute a certifiable economic drag to America’s economy.

  34. Joachim Martillo September 6, 2017 11:50 am

    Bemused@31

    I really meant disbarment.

    As I understand, if a PTAB judge is disbarred, he can’t sit on a PTAB panel.

    Some of the actions of PTAB judges (and USPTO management) seem to reach threshold offenses for disbarment. If a few PTAB judges were disbarred or if an FBI affidavit and criminal complaint were prepared, maybe USPTO management would take notice.

    Some of Judge Moore’s comments imply that Michelle Lee should be in a jail cell after conviction under 18 U.S.C. § 1001.

    I can only conclude that some of the CAFC judges are becoming extremely annoyed as are many patent practitioners. Consider the sua sponte poll on the correctness of the decision in NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017).

    Judge Rich’s Ghost@17

    BTW, what in 35 U.S. Code § 316 – Conduct of inter partes review – gives the PTAB discretion to refuse to accept amendments.

  35. 3ff2f33f32f September 6, 2017 12:21 pm

    Agreeing the procedure could and should be fixed, but If I fill an expandable balloon with water and ask 10 engineers to stop me right when it is “substantially filled”, I will probably get at least 8 different answers. This is not a definite claim.

    It sucks for the inventor, but its not the fault of the patent system. He (his lawyer) could have said “when the amount of water exceeds 50 mL” or something, and there would be no problem. But he went for a broad, vague claim construction and now he is paying for it. Does the system suck, maybe, but we can certainly learn from this as practitioners.

  36. Night Writer September 6, 2017 12:52 pm

    @34: I think there are three possibilities: 1) a complaint to their state bar; 2) complaint to federal government; and/or, 3) criminal or civil action.

    You’d have to have a good theory of the case and strong facts to get anywhere. You can count on the system being on their side.

  37. UnhappyPracticioner September 6, 2017 1:15 pm

    “With every passing day and each new piece of evidence it becomes more and more clear. The only viable solution is to disband the PTAB.”

    Agreed! Gene, speaking from experience, the PTAB is even more disfunctional than you realize. Perhaps once the SCOTUS disbands the PTAB (or more likely, shrinks it back to its pre-AIA size and duties) some of the soon to be laid-off APJs and patent attorneys will describe what it was really like there and the dirty tricks they played that have no parallel in the commercial realm.

  38. HeartPTAB September 6, 2017 1:29 pm

    “I have been the patent attorney for software start-ups and it has worked-out fine.”

    Night Writer – “has worked out fine” is past tense and does not mean will work in 2017.

    How does spending $17m on enforcing patents equate to a system “working fine for startups”?

  39. Gene Quinn September 6, 2017 1:35 pm

    3ff2f33f32f-

    “If I fill an expandable balloon with water and ask 10 engineers to stop me right when it is “substantially filled”, I will probably get at least 8 different answers.”

    Doubtful if those 10 engineers also read the patent itself, which is required when interpreting the claims, which is what the Federal Circuit did and why they concluded the exact opposite of what you are saying. In fact, the Federal Circuit concluded that anyone with at least two years of engineering education would easily understand the meaning of “substantially filled” after reading the claim and the specification. So say what you will, but what you are saying is false.

    As far as what could have been said, you are trying to define “substantially filled” without the benefit of even the claim, let alone the patent application, which provides a condition precedent.

  40. Gene Quinn September 6, 2017 1:37 pm

    HeartPTAB-

    You ask: How does spending $17m on enforcing patents equate to a system “working fine for startups”?

    That is a very good question to ask. Finally you understand that the PTAB is an abomination and has to be abolished!

    Of course, the other answer is spending $17 million does make sense when one is making more than $17 million. Bunch O Balloons is extraordinarily successful, which is why Telebrands is knocking it off and harassing Tinnus using the PTAB.

  41. 3ff2f33f32f September 6, 2017 1:53 pm

    “So say what you will, but what you are saying is false.”

    @39: Not according to the PTAB judges…

  42. Night Writer September 6, 2017 2:03 pm

    @38 HeartPTAB; you are right. I am speaking of the past tense. I pretty much mean pre-PTAB.

    3ff2f33f32f- : you have no idea what you are talking about.

  43. Joachim Martillo September 6, 2017 2:30 pm

    Doesn’t this case come close to the tropical fish example from the PLI patent bar exam course? I think Gene gave us a claim that referred to “about pH 7”.

    BTW, the USPTO seems to understand the term “substantially”. Just check out MPEP-2183 and MPEP-2186, which refer to “substantially different” or to “substantially equivalent”.

  44. Gene Quinn September 6, 2017 2:43 pm

    Joachim-

    If you look at the first CAFC decision in Tinnus v. Telebrands the argument was made that “substantially” was itself indefinite, which the Court was not about to entertain given the tens of thousands, if not hundreds of thousands, of patents that use that term.

    Clearly, what is substantially filled would easily be understood by anyone with half a brain if they read the claim, looked at the drawings and read the specification. After all, we are talking about water balloons for crying out loud. If they are substantially filled they fall off, if they aren’t they don’t. It really is that straight forward. Only infringers and apologists for infringers want to make something so simple complex.

  45. Joachim Martillo September 6, 2017 2:45 pm

    3ff2f33f32f@41

    A certain amount of experimentation is allowed. Do you really think undue experimentation would be required to understand “substantially filled”?

  46. 3ff2f33f32f September 6, 2017 2:52 pm

    @45 nobody said anything about enablement, so why are you talking about undue experimentation?

  47. 3ff2f33f32f September 6, 2017 2:58 pm

    “If they are substantially filled they fall off, if they aren’t they don’t. It really is that straight forward. ”

    This is clearly wrong, since the connecting force has to be greater than or equal to the weight of the balloon that is “substantially filled with water.” The balloons do not fall off when they are substantially filled, so your definition cant work– they dont fall off until they are “sufficiently” shook.

    “a connecting force that is NOT LESS THAN a weight of one of the containers when substantially filled with water”

  48. Joachim Martillo September 6, 2017 3:06 pm

    If I understand “substantially filled” from the standpoint of enablement, may I suggest that “substantially filled” in the claim is clear enough the help define the “metes and bounds” of the claim?

  49. UTEngineer September 6, 2017 3:22 pm

    Joachim: If I fill a balloon with 1 drop of water and shake it hard enough, it will fall off. Is 1 drop of water therefore substantially filled? Gene seems to think yes. The problem is that “sufficient shaking” is defined as “shaken sufficiently to cause a balloon substantially filled to fall” and “substantially filled” is defined as “filled sufficiently to cause a balloon to fall when sufficiently shaken.” F=ma. I can make “m” as small as I want if I am allowed to make “a” as big as I want, and get to any F.

  50. Gene Quinn September 6, 2017 5:22 pm

    UT Engineer-

    You say: ” Is 1 drop of water therefore substantially filled? Gene seems to think yes.”

    Did you read the patent? Obviously not, which makes your comments uniformed (to be polite).

  51. Night Writer September 6, 2017 5:50 pm

    @44 >> Only infringers and apologists for infringers want to make something so simple complex.

    What is up with these arguments about substantially? Are these surrogates for the knock-offs?

    Seriously. I looked at the claim and had no trouble understanding what was meant. And, usually I am very critical of the word substantially.

  52. UTEngineer September 6, 2017 8:03 pm

    @51: Substantially filled is “filled enough such that, when sufficiently shaken it falls off.”

    Sufficiently shaken is “shaken hard enough such that, when substantially filled, it falls off.” Plug one definition into the other, and you run into problems.

    I can shake hard enough such that with 1 drop it falls off.

    @51 the problem is not “substantially.” The problem is “filled”. An flexible container is always “filled”. The volume changes to match the amount of fluid placed inside of it.

  53. HeartPTAB September 6, 2017 8:21 pm

    “Finally you understand that the PTAB is an abomination and has to be abolished!”

    Gene – abolishing PTAB would remove ability for little guy to somewhat cost effectively defend themselves against invalid patents threats.

  54. Joachim Martillo September 6, 2017 8:52 pm

    Night Writer@51

    To tell the truth, I don’t have to have read the patent. I’ve played with water balloons. I’m a lot happier with “substantially full” under BRI than with “full”. What does “full” mean with respect to a water balloon? A water balloon has an aperture and a tip opposite the aperture. Is a water balloon full if the tip opposite the aperture is slightly (how much?) perky like a nipple or must it not be perky at all. How about the balloon’s neck that extends from the aperture to where the water balloon begins to expand with water? How long should it be? Defining a full water balloon is difficult. How about a water balloon “more than 70% full?

    Here is why (among other reasons) I want these guys disbarred.

    They are trying to steal the invention and put it in the public domain.

    For lawyers this theft is truly unethical. The members of the panel and Matal should not be allowed to practice.

  55. Judge Rich's Ghost September 7, 2017 2:18 am

    Gene, your lack of litigation and advocacy shows. You focus on the right to “cancel” the claim, and you create a scenario that no one would consider – the PTAB refusing a patent owner a motion to cancel a claim. Sure, it wouldn’t be an efficient way to proceed, and it’s unlikely to occur, but it is permitted under the language of the statute. Simply because there is some subset of motions that are virtually guaranteed to be granted does not logically lead to the conclusion that all motions must be granted under the statute. You basically spelled out a classic logical fallacy.

    The correct reading of the statute does not “require the PTAB to do unnecessary work rather than to allow a patent owner to capitulate.” The correct reading merely recognizes that, in certain instances, the PTAB will almost always grant to motion to cancel. It does not logically follow that the PTAB must always grant a motion to amend or add claims.

    A motion, by its very nature is either granted or denied. Congress established a system in which a patent owner can file a motion that can be granted or denied, depending on the rules put in place by the PTO. Congress did not grant a right to amend.

    Again, I don’t disagree that the PTAB’s implementation is far from ideal. But you should focus your writing on more credible arguments. Otherwise, your good arguments get tarnished.

  56. Anon September 7, 2017 8:28 am

    HeartPTAB,

    Your lament sounds in “the Ends justify the Means.”

    That is a most dangerous concept when it comes to the legal world.

  57. HeartPTAB September 7, 2017 9:14 am

    Anon – when startups are hampered by a legal obstacle then if another legal mechanism is available to remove said 1st legal obstacle then use it.

  58. Joachim Martillo September 7, 2017 9:27 am

    HeartPTAB@55,

    Here is the way the patent system is supposed to work.

    If someone else has a monopoly on the invention you want to use, either you license it, or you develop a non-infringing work around. Thus, the US patent system encourages invention.

    You do not try to steal his intellectual property and thereby work to destroy the system and to weaken or to ruin the US economy. If you are working to ruin the US economy, you become an enemy of the USA.

    Also, maybe you have not thought far enough ahead, but if you own a startup, it will one day probably own intellectual property.

    We need to be more blunt about what the USPTO is doing.

    You may have to kiss your startup goodbye if the USPTO steals your intellectual property and puts it in the public domain.

  59. Gene Quinn September 7, 2017 10:06 am

    Judge Rich’s Ghost-

    Your unfamiliarity with every canon of statutory construction shows. To get to your reading of the statute you have to ignore every canon of construction and read the statute to lead to an absurd result.

    You are correct when you say that not all motions can be granted under the statute, the statute says which motions can be denied. It grants the patent owner the ability to file a motion for two situations. If the patent owner does not seek to cancel a claim or substitute a reasonable number of claims then the motion is out of order. There is nothing in the statute that gives the Board the power to rule a motion to amend out of order for any other reason, and you haven’t pointed to such discretion because you cannot.

    Your argument that Congress set up a system under which the patentee can file a motion that can be summarily rejected in all cases is absurd and everyone knows it. You say my litigation inexperience is showing, when in fact your argument shows almost no familiarity with litigation practice whatsoever. A motion is merely a filing that asks a court or tribunal to do something… anything. There does not need to be any particular authorization in the rules of procedure to file a motion, motions are filed all the time for a variety of matters that come up that could never be anticipated and are peculiar to the events and facts of a case. Congress did not have to give a patent owner the right to file a motion with the Board, such right already existed the same as it would have existed with any tribunal anywhere on any level. Thus, the only logical way to read 35 USC 316(d) is as a right to amend. Otherwise it is superfluous.

    You can say it is because I don’t have litigation experience, but I do. And you can say that your reading of the statute is correct and mine is incorrect, which is wrong. We will see at the end of the day when the dust settles who winds up being correct.

  60. Gene Quinn September 7, 2017 10:09 am

    HeartPTAB-

    You say: “Gene – abolishing PTAB would remove ability for little guy to somewhat cost effectively defend themselves against invalid patents threats.”

    It has bee clear since you started commenting that you really are unfamiliar with this topic, but now this latest comment demonstrates beyond any shadow of a doubt that you don’t know what you are talking about.

    The legal fees alone for a post grant challenge range from a bargain basement price of $300,000 to over $1,000,000. There are NO “little guys” filing post grant challenges, and no little guys other than patent owners who are getting harassed and forced to lose their patents participating in post grant proceedings.

    So either you are wholly unfamiliar with what it is you are talking about, or you are a shill for the infringer lobby spewing lies. Which is it?

  61. Judge Rich's Ghost September 7, 2017 5:13 pm

    Well, keep dreaming, Gene. Congress did have to grant a right to amend an issued patent claim. That is just basic patent/admin law.

    “Ignore every canon of construction . . . ” Really? Arguments like these from patent lawyers are why the Supreme Court rarely takes patent lawyers seriously. Thankfully for Oil States, we have an appellate specialist on board.

  62. Gene Quinn September 7, 2017 5:37 pm

    Judge Rich’s Ghost-

    Thanks for the laugh. An appellate specialist? You mean like the one who erroneously admitted in Alice oral arguments that the computer software in question could be coded by a second year engineering student over a weekend not once but twice? What a joke.

    Obviously, since you refuse to use your name we can’t know who you are, but any litigator worth anything who has ever had to make an argument about the meaning of a statute is familiar with canons of statutory construction, which real judges in real courts concern themselves with. So I don’t know who you are trying to fool, but it won’t be me, and it won’t likely be many here who are reading.

    I’ve set out quite a number of canons of statutory construction that your rather ridiculous interpretation violates and so far all you have done is attempt to belittle my knowledge, claim I don’t know anything about litigation, and now take cheap shots at patent attorneys. It seems you are incapable of responding substantively. I understand… I really do. You can’t respond substantively to any of my arguments because I am, of course, correct.

    Were you even aware that you were suggesting an interpretation that would result in the only place in the USPTO where an applicant or patent owner wouldn’t have a right to cancel claims?

  63. Judge Rich's Ghost September 8, 2017 9:01 am

    Gene, you still haven’t acknowledge the legal fact that, because Congress authorized a patent owner to file a motion–and not an absolute right to amend–the PTAB necessarily has the right to deny the motion. That is Civil Procedure 101. (The Board’s decisions on motions must, of course, with APA standards, but those standards still don’t require an absolute right to amend.)

    And your focus on the cancellation of claims is misplaced as well. While the Board will usually grant a motion to cancel claims, there are situations in which the Board may not want to cancel claims. For example, if the parties have proceeded through “trial” and the hearing, then the Board may deem it a better course to affirmatively rule on the patentability of the claim. Granted, this is less likely, but it’s a reasonable scenario, and it further explains why Congress authorized only the filing of a motion to amend or cancel — and not the absolute right to amend or cancel.

    In terms of being the “only place in the USPTO where an applicant or patent owner wouldn’t have a right to cancel claims,” that is irrelevant because you’re talking about a completely new administrative system for revoking patent rights. What the PTO does in ex parte examination or even reexamination is not dispositive of analyzing the AIA procedures.

  64. Gene Quinn September 8, 2017 1:15 pm

    Judge Rich’s Ghost-

    Congress didn’t give an absolute right to amend because the statute only allows amendment in two circumstances. Nice try though trying to twist. What is interesting, is you continue to refuse to point to anywhere in the statute that gives the PTAB the right to deny the motion.

    It is, of course, not irrelevant that under your reading this would be the only situation where a claim could not be canceled or removed. You try and save your asinine reading of the statute by simply saying “irrelevant.” Laughable. Well how about this to continue to prove just how asinine your position is… not only would your reading be the only time at the USPTO a claim couldn’t be canceled or removed, it would be the only time in all of U.S. law where a party couldn’t remove an issue with prejudice and thereby not require a tribunal to issue a decision. What statute or rule would ever require a tribunal on any level to go through the exercise of issuing a decision where a party was willing to take an adverse decision with prejudice? LOL.

    You continue to dig yourself a deep hole. But please, continue to say I’m the one who doesn’t understand the law, I’m the one who doesn’t understand litigation, I’m the one who doesn’t understand judges, or whatever ridiculously stupid thing you will say next.

    And while you’re at it, why not explain why the Federal Circuit hasn’t issued a decision in Aqua Products already if this is so easy and the statute is so clear on its face and my reading is so horribly naive? LOL. The CAFC already has cases that read that statute the same way you do and the en banc court took Aqua Products and is still sitting on the decision since early December oral arguments. Why? Because they plan on affirming?

  65. Judge Rich's Ghost September 8, 2017 2:15 pm

    Wow, impressive . . . Cancelling a claim is not the same as a dismissal with prejudice. More akin to dismissal w/o prejudice bc there may be other patents that have similar claims, and the voluntary cancellation in the PTAB proceeding will not have preclusive effect on another proceeding (or pending patent application). You may want to refresh on the law regarding FRCP 41.

  66. Gene Quinn September 8, 2017 5:53 pm

    Judge Rich’s Ghost-

    Cancelling a claim is the same as a dismissal with prejudice. You can struggle to try and convince others (and yourself) that cancelling a claim in a post grant challenge is really just a dismissal without prejudice, but we are attorneys here and know what dismissal without prejudice means. When a claim gets canceled in post grant review it is lost forever and against the whole world. So that claim is gone, cannot ever come back, and cannot be asserted. It is exactly the same as a dismissal with prejudice.

    Now I understand why you can’t admit that canceling a claim is the same as a dismissal with prejudice… because that would demonstrate that you have been wrong from the beginning. You are in too deep and you’ve insulted me too many times to be wrong. But then there is that Federal Circuit pending decision in Aqua you keep ignoring. If you were right why did they take the case en banc? Why have they taken 9+ months to issue a decision when, according to you, it is so easy and clear and they will just affirm what they said previously. I realize you don’t want to address that either since that is yet further proof you are wrong, and uninformed.

    Your arguments are embarrassing and demonstrate that you are either (1) a shill; or (2) completely ignorant. If only you hadn’t insulted me I wouldn’t have felt the need to demonstrate the true limits of your understanding on all things patent. But here we are. Moving forward I’m more than happy to continue this discussion but I think we’ve reached the point where everyone should know who you really are. After all, your positions are so egregiously asinine that one has to start to wonder whether you really are a lawyer at all. I mean seriously, a canceled claim is without prejudice? How stupid!

    In any event, you know who I am. If you want to continue let’s learn who you are.

  67. Judge Rich's Ghost September 9, 2017 8:32 pm

    You’re getting a little unhinged now. Cancelling a claim is not a dismissal with prejudice because, for example, the claim can be reintroduced in a related pending patent application. It won’t be a common occurrence, but it demonstrates why cancelling a claim is not the same as a dismissal with prejudice. And again, a motion, by its very definition, can be denied. I’ll be back when vindicated by Aqua Products.

  68. Joachim Martillo September 10, 2017 8:41 am

    This comment may be off topic, but I thought during prosecution that the prosecutor has the option:

    (1) of amending a claim with the status indicator (newly amended) or

    (2) of canceling said claim with the status indicator (canceled) along with adding the amended version of said claim as a new claim with the status indicator (new).

    I think procedure (2) is occasionally chosen when the modifications of a claim are possibly over complex.

    If I understand the procedures correctly, I think a correct summary would distinguish cancellation of a claim in an application during prosecution from cancellation of a claim in a granted patent.

  69. Anon September 10, 2017 9:39 am

    Joachim,

    Your comment hits the tip of the iceberg.

    What is indeed happening is that an executive branch (read that as a known “political” body) administrative agency has been provided power by the legislative branch to take a property right (a granted patent) and turn that property right into LESS THAN a full property right.

    I keep on emphasizing the point that this occurs at the initiation decision point because it is at that point that the nature of the property right is changed, and ALL of the ensuing discussion then – and only then – becomes pertinent.

    Cancellation is definitely something that needs to be distinguished. There are also other points in the discussion that are simply off base here. The single largest fallacy is the attempt to NOT pay attention to the direct words of the law instituted by Congress itself. The canons of construction are being bent WAY out of shape here, because the direct words are clearly unambiguous as to exactly what a patent holder has been granted during a post-grant procedure, and if Congress wanted to provide an absolute right TO amend, they know how to say exactly that.

    They simply did not do so.

  70. Gene Quinn September 10, 2017 1:33 pm

    Judge Rich’s Ghost-

    I don’t see where you provide your real name. I guess that is predictable. Anyone so obviously wrong about everything they’ve said would need to cling to anonymity.

    Moving forward what I said still stands. If you want to engage with me you need to provide a real name and come out of the weeds. You’ve been exposed as a know nothing already by your screen name. It is time everyone know who you are.

  71. Anon September 10, 2017 5:27 pm

    Gene,

    Not sure if there is a “fake email”*** thing going on with Judge Rich’s Ghost, but as far as anonymous (or pseudonymous) posting goes, let’s stay away from the fallacy of “outing-or-use-real-name.”

    That type of response is not positive for a forum like this.

    ***Of course, as I have indicated in the past, I would actually drive a more severe treatment for fake email use, as there is no reason whatsoever to use a fake email; anonymity and pseudonymity simply do not require such.

  72. Joachim Martillo September 10, 2017 6:09 pm

    I wonder whether I can make a comment that has no embedded HTML.

  73. Joachim Martillo September 10, 2017 6:10 pm

    Apparently, I can.

  74. Joachim Martillo September 10, 2017 6:15 pm

    The USPTO and PTAB seem to be ignoring the USPTO’s own training examples.

    https://www.uspto.gov/patents/law/exam/supp_112_exr_training_exs.pdf

    B. Relative terminology (e.g., terms of degree, subjective terms)

    1. In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983)

  75. Joachim Martillo September 10, 2017 6:18 pm

    I just don’t find much difference between “essentially free of alkali metal” (the example claim language) and “substantially filled” (the claim language in the case before the PTAB.

    MPEP 2173.05(b) explicitly references “substantially”.

    BTW, I may be running into some sort of length restriction on comments.

  76. Judge Rich's Ghost September 10, 2017 6:21 pm

    This is my last post on this thread, until a court decision on the issue. Gene has used the following in response to my straight-forward arguments: “asinine,” “laughable,” “embarrassing,” “ridiculously stupid,” and “LOL.” Those responses speak for themselves.

    My final point is that the appellant in Aqua Products did not argue for an absolute right to amend. Thus even the party pushing this issue at the Federal Circuit hasn’t adopted the extreme position Gene argues here.

  77. Gene Quinn September 11, 2017 11:29 am

    Ghost-

    What speaks for itself is how you started with personal insults, but I guess you forget that. My comments were directed to your position, not your person, and your position is asinine, as I’ve demonstrated.

    Too bad you are too afraid to provide a real name.

  78. Night Writer September 11, 2017 12:04 pm

    I think there are lots of reasons for not providing real names. I think the issue is to prevent paid bloggers. But, if you are going to require real names then I would probably have to stop blogging because many of the positions I take may drive clients away, which is the only reason I’ve remained anonymous.

    Seems to me there is no point in requiring the Ghost to provide a real name unless you want to verify that he isn’t just a paid blogger or someone that is intentionally disrupting the blog for his own purposes.

    Of course it is your blog and you do a great job of keeping it free of too much noise.

  79. Gene Quinn September 11, 2017 12:23 pm

    Night-

    I don’t often tell commenters that I think they need to provide a real name, but Ghost insulted me and all patent attorneys as not knowing anything about litigation, and his/her knowledge of patent law and practice seems exceptionally limited (although the confidence level of that limited knowledge is exceptionally high). My guess is Ghost is a litigator who thinks he/she knows everything there is to know about patents, but really doesn’t know much at all.

    -Gene

  80. Gene Quinn October 4, 2017 11:45 am

    Judge Rich’s Ghost-

    http://www.ipwatchdog.com/2017/10/04/federal-circuit-aqua-products-patentability-burden-amended-claims-petitioner/id=88855/

    Looks like the Federal Circuit agreed with me in Aqua Products (no surprise). Starting at page 37 of the decision the Court explains that “Congress made clear that patent owners may propose amendment to their patents as of right at least once in an IPR.” And then on page 40 the Court explains: “By reading too much into 316(d) and too little into 316(e), the PTO effectively injects illogic into that framework and undermines its function and purpose.”

    Looks like yet another one of my predictions has come true. Funny.

    -Gene

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