In Search of a Jury Trial: One Inventor’s Experience at the PTAB and Federal Circuit

By Paul Hayes
January 27, 2020

“The jury’s main contribution is objectiveness and their ability to sniff out the truth. Those 12 sets of juror eyes can observe the witness take the stand and endure cross-examination. They can learn from witness demeanor, body language, tone of voice, etc. By short-circuiting access to a jury trial, the AIA denies a patent holder their Seventh Amendment right.”

https://depositphotos.com/266789900/stock-photo-judges-hammer-scatters-in-the.htmlOutlined below is the story of how the America Invents Act (AIA) of 2011 made a novel 2002 invention obvious in 2018.

I’m the first named inventor on U.S. Patent No. 7058524, which was filed on October 25, 2002. The title of the patent is “Electrical Power Metering System”. Unfortunately, I was never able to produce, let alone market the meter. There were many barriers to entry for my essentially hardware-based invention. I was working full time and had a growing family to be concerned with. Following retirement in 2013, I decided to attempt to license the ‘524’ technology. In early fall 2014, I partnered with a Non-Practicing Entity (NPE). I received an up-front sum and had an agreement with the NPE to share (fairly in my view) in any ‘back-end’ licensing revenue. After extensive investigation and attempts at licensing, in 2016 the NPE asserted against Duke Energy in Delaware. We believed Duke’s new smart meters, particularly those using Itron’s OpenWay Riva technology, were infringing the ‘524 patent.

Following the “Infringer Handbook,” Duke made a motion to dismiss the case based on Alice-abstractness. Fortunately for us, Judge Robinson did not agree that a physical meter was all that abstract.

In early 2017, we moved to step two in the “Infringer Handbook.” Itron, who designed and manufactured the power meters, apparently indemnifies Duke. As a result, Itron petitioned the Patent Trial and Appeal Board (PTAB) on Duke’s behalf. Itron submitted their petition, just in time, prior to the one-year time limit.

Itron, the petitioner, raised three pieces of prior art. The PTAB settled on a single, abandoned, patent application by a would-be inventor named Suh. The grounds chosen by the PTAB were Obviousness (re: 35 U.S.C. 103). The PTAB Administrative Patent Judges (APJs) instituted a trial. Our district court case against Duke in Delaware was stayed before we could get a jury trial.

Sunk by Secret Prior Art

Suh is what is termed Secret Prior Art. Suh’s application was ‘secret’ in the sense that there is no way for the inventor to have access to it before filing their patent application. Suh’s patent application was not published by the USPTO until about a week after I filed the ‘524 application. Apparently, use of secret prior art is a favorite move by the Infringer Community (see the Yelderman article, titled: “Prior Art in Inter Partes Review” 104 Iowa L. Rev. 2705 (2019)).

Infringers like to bring secret prior art to the PTAB. Perhaps petitioners and APJs believe this strengthens their argument that the examiner and/or the inventor made a mistake; or maybe they just like to rub the patent holder’s nose in this judicial mistake that’s still outstanding? (See Andrew Berks, “Secret Prior Art – Time for Another Look”, April/May 2017, published by New York Intellectual Property Law Association).

Suh was not considered by the ‘524 examiner. Fairness, common sense, and good policy would dictate that the hypothetical Person of Ordinary Skill in the art (POSITA), should have been able to access the prior art. This lack of access is likely the reason the rest of the world does not allow secret material to be used as prior art. As articulated in the Berks article above, due to an outstanding judicial error from years ago this loophole allows secret prior art to be treated like actual prior art in the United States. In our case, the secret prior art—a patent application—was abandoned; so there is no potential conflict with another patent. Good policy would be to completely ignore secret prior art like Suh. As per Berks:

“Several modern cases have recognized the flaw in Hazeltine. In OddzOn Products, Inc. v. Just Toys, Inc., 34 the court relied on Kimberly-Clark Corp. v. Johnson & Johnson to conclude that “patent laws have not generally recognized as prior art that which is not accessible to the public.”35 More recently, Judge Newman noted in a dissent in Solvay S.A. v. Honeywell International Inc. 36 that “[i]nvalidation by secret prior art is disfavored,” citing OddzOn and Kimberly-Clark.”

Credit this ‘Hazeltine loophole’ to section 102(e), which deals with anticipation; and not section 103, which deals with obviousness. Go figure.

Another judicial tenet in deciding obviousness requires showing that a POSITA was somehow motivated to seek out the prior art in question. Our hypothetical POSITA must have had a criminal streak; he or she must have been motivated to break into the USPTO, search it omnisciently, find the Suh application and think: “Wow! This makes 524 obvious.”

Although I did not have access to Suh before filing the ‘524-patent application, it really did not matter. Suh is irrelevant as prior art to the ‘524 patent. The ‘524 examiner had access to Suh’s patent application during the prosecution of ‘524. The ‘524 examiner chose different and stronger prior art to reject ‘524. The examiner found an article published by the IEEE, in 2000, by Swedish author, Jerker Delsing, titled: “The IP-meter, design concept and example implementation of an Internet enabled power line quality meter“.

We subsequently modified our claim language during prosecution and gained allowance from the examiner. The language we added, circa 2001, turned out to be the same language contested in the inter partes review (IPR) at the PTAB. This (bold font) language was added to the last element of ‘524’s claim 17:

transmitting the IP-based power consumption information from the processor to a destination autonomously in IP format over an external power line network.

This language limited the scope of claim 17.

Predictably, the APJs in their Final Written Decision found all the challenged ‘524 claims invalid on the ground of obviousness.

We were surprised by such an outrageous decision.

Hope Dies at the CAFC

The NPE, on their nickel, filed an appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC). We were encouraged to be heard by a real (Article III) court, although still without a jury.

At the oral argument, we appeared in front of Judges Wallach, Reyna and Hughes. Wallach seemed intent on disrupting our attorney’s argument with questions. Indeed, Wallach seemed more interested in what he termed “house-keeping” than in finding the truth.

Here’s a link to the recording of the oral argument at the CAFC. It’s about 15 minutes long, including the dead air while Wallach directs our attorney’s attention from one cherry-picked piece of the record to another.

The hearing was short, but not so sweet. At an expense we could not afford, I brought my wife and four children. I reasoned that the outcome of the CAFC decision would impact them more and longer than it would me, so they should be present. This was to finally be our day in a real, Article III court, with constitutionally appointed judges. I wanted my children to witness what transpired. We were met in the courtroom by Josh Malone, who was kind enough to attend and lend moral support. Unfortunately, things did not go well.

From what I gather, based on my experience, when CAFC judges give patent holder attorneys a hard time, it’s par for the course. In our hearing, the judges badgered, asked disruptive questions, and even berated our attorney. This was in stark contrast to how the CAFC justices treated the appellee’s attorney. The infringer’s attorney was allowed to present their case in an uninterrupted manner. If they were interrupted, it was often to ask leading, clarifying and/or supportive questions. No wonder around 75% of appeals from the PTAB to the CAFC fail.

Patent Owners Deserve Jury Trials

In my opinion, the key broken piece in the system is the way the AIA removed the probability of a jury trial from the patent holder by creating a post-grant system that allows for abuse and delay of other proceedings.

The majority of APJs do not have the experience of a hypothetical POSITA, let alone the expertise of specialized examiners or Supervisory Patent Examiners. Perhaps this explains why APJs so often find the petitioner’s expert witness persuasive?

Without the technical experience to review the patent material, APJs are essentially glorified full-time jurors. APJs are jurors chosen only by the Infringer Community for the resulting kangaroo court. I say this because many of the APJs have worked for the Infringer Community and/or law firms used by the infringers before coming to work at the PTAB. To my knowledge, this fact has not resulted in a single recusal by an APJ to work a case. The same APJs who decide to institute a trial get to sit in judgment for that trial. Normal rules of judicial ethics and conduct have been thrown out the window at the PTAB. Many APJs were recruited and hired by former USPTO Director Michelle K. Lee. Lee volunteered many of the unfair rules of the PTAB process and has been reported to have stacked APJ panels to get the decision she wanted. Some of these rules have been corrected by current USPTO Director Andrei Iancu.

When Judges Ignore Facts

In my experience, APJs essentially ignore the patent holder’s expert witness unless he makes a misstatement or happens to agree with the petitioner. In our case, the APJs ignored and discredited our expert’s arguments, evidence, testimony; the ‘524-patent; the secret prior art; and of course, all of the patent holder attorney’s argument.

There is really only one avenue to influence an APJ’s opinion. That chance is through the deposition of the petitioner’s expert witness. Our attorney caught the petitioner’s expert telling the truth, while defending an untruth, during deposition. Petitioner’s expert essentially admitted that ‘524 was novel and non-obvious. He was unable to identify any prior art (let alone Suh) that taught use of HomePlug on an external power line, other than the ‘524 patent (See p. 62, line 9 – p. 64, line 22 of document at this link). Petitioner’s expert did this, while focused on defending his contention that HomePlug and X10 (mentioned in 524) are examples of Developed Data Transmission Overlay Technology (DDTOT). Coincidentally, these were the only examples of DDTOT that came to the expert’s mind. In truth, no one knows, including Google, what Suh meant by DDTOT in 2002. Neither Suh nor Dang explain DDTOT, or provide support for it, in any way.

This was the one salient point our attorney had a chance to make at the CAFC. Petitioner’s expert got caught in deposition attempting to use the ‘524 patent as prior art to make the ‘524 patent obvious. The PTAB APJs ignored this fact. What did the CAFC judges do with this truth?  Other than a rapid glance from Hughes toward Wallach when our attorney made this point, there was no acknowledgement from the CAFC judges. In the end, the CAFC judges also, conveniently, ignored the fact that Suh was not relevant as prior art.

During deposition, as soon as Itron’s expert became aware of his accidental truth telling, he clammed up. Itron’s expert refused to answer the question repeatedly and became non-responsive. Itron’s attorney objected and described this as “question asked and answered”.

Unfortunately, the CAFC judges are even less technically equipped to understand patent material than are the APJs. Wallach asked most of the questions, which were clearly designed to put our attorney off balance. All questions were anti-patent holder in nature. Only one question was technically oriented. It, too, was designed to put the patent holder in a bad light.

Wallach echoed the single technical question, first asked by Itron: “What’s the difference,  between transmitting on an internal power line and transmitting on an external power line?”

This is a good question. I would have loved to answer it in a real court, in front of a jury. Our attorney, not being an IP network expert, responded as best he could. But really this was a question for an expert to answer and for a jury to listen to.

The jury’s main contribution is objectiveness and their ability to sniff out the truth. Those 12 sets of juror eyes can observe the witness take the stand and endure cross-examination. They can learn from witness demeanor, body language, tone of voice, etc. A jury is not required to be technically competent, only impartial. Rules requiring the selection and sequestering of a jury are designed maintain this impartiality. Jury deliberations allow careful consideration and discussion of the issues. Unfortunately, at the PTAB and the CAFC, there is no jury. By short-circuiting access to a jury, the AIA denies a patent holder their Seventh Amendment right.

A better answer to Wallach’s question might have been:

The difference in transmitting on the internal, versus the external power line, is demonstrated by the ability of the destination to receive the message. A successful transmission involves sending and receiving a message that survives the journey. The internal power line is a relatively sheltered transmission environment compared to the external power line. The external power is exposed to increased noise levels, spikes, surges, sags; and a multitude of sources of transmission all competing for very limited bandwidth. The multitude of transmission occur in an uncoordinated and conflicting manner on the external power line, resulting in collisions and lost data. The distance that must be traveled on the external power line is typically hundreds of miles. Whereas, on the internal power line the transmitter is in close proximity to the receiver, within a home. The internal power line requires only one transmission, one hop. The external power line requires a series of receptions and re-transmissions (e.g. a network). As disclosed by 524, these must be directed re-transmissions (an IP Network) to reach the destination (the electric utility back office).

But I doubt, from the tone of the questions asked at the CAFC, that even this answer would have changed the foregone conclusion of this set of CAFC judges.

The Final Blow: Rule 36

We were Rule 36-ed by the CAFC. The good news was that we made it home with the family before getting the “ruling”. The bad news was that we never really got that day in court and maxed out our credit cards, yet again.

Here’s an excellent article on the CAFC’s use of Rule 36 by IPWatchdog’s Gene Quinn.

Given no day in court, no jury trial, a cancelled franchise (re: the SCOTUS Oil States decision) and a one-word CAFC decision (affirmed); I felt compelled to prepare a short video to explain why I believe Suh does not make ‘524 obvious. I kept the video as non-technical as possible. Please view it here, if you can spare 10 minutes.

Dear reader, assuming you’ve had time to deliberate; as a juror in the Court of Public Opinion (COPO), have you reached a verdict?

What say you?

The pending Inventor Rights Act seeks to mitigate many of the problems described above. Learn more about it here.

Note: IPWatchdog reached out to Itron’s counsel for comment on this article but had not received one as of the time of publication.

 

Image Source: Deposit Photos
Image ID: 266789900
Copyright: MarkoAliaksandr 

The Author

Paul Hayes

Paul Hayes is a retired software engineer. He has worked for Rockwell Collins, ITT's Aerospace Communications Division, and currently is self-employed as sole owner and Managing Member of Hudson Bay Wireless LLC. He is also an avid activist for small inventors.

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 38 Comments comments. Join the discussion.

  1. Josh Malone January 27, 2020 9:16 am

    My heart breaks for Paul and his family. He followed the law and did everything correctly to earn the patent for his invention. One thing he graciously left out of this article is that he did not have adequate representation. There are very few lawyers that know how to advocate for inventors any more. One error can be enough to lose a case, but often the case is lost because the lawyers for the infringer are more aggressive and sophisticated. In this case Paul’s attorney did not even file a reply brief in the appeal. I have met many inventors like Paul that have that horrifying realization that they lost their case because their lawyers failed to make it.

  2. Anon January 27, 2020 10:14 am

    Mr. Hayes,

    I think that your feelings are real, but that you have written in a bit of lack of understanding of the law (for example, understanding what Secret Prior Art really means).

  3. Ternary January 27, 2020 11:21 am

    Paul, I would definitely have decided for you. The technology favors you.

    However, you and your team were out-lawyered. The other side provided arguments in their brief that were picked up by the Court and your attorney was confronted with. The other side had nothing else to do than to repeat the argument, kiss-up to the judge and sit down. And that is what they did.

    What struck me most was the incorrect (false?) testimony of Dr. Akl. This is the single most damaging element in the case. It should have been a huge red flag and countered with one or more of your expert testimonies, not just to counter but to destroy the credibility of this inaccurate testimony.

    Reading your case makes me sick to my stomach and I feel for your disappointment. It is (again) a warning for me and my fellow independent inventors not to underestimate the opposition and to do two things 1) load up the spec with technical details, if needed with provisionals that are incorporated by reference and 2) to keep the case alive by filing continuations and CIPs.

    I watched your video and your arguments are clear to me, but a bit lengthy. I would recommend to redo it if you can. Or at least replace your first slide with the incorrect spelling of Internet (“Interenet”). It does of course not affect the strength of your arguments, but it looks sloppy.

    I am not sure that everyone is familiar with the OSI layer model. Which makes your arguments PHOSITA oriented rather than legally convincing arguments. This is also reflected in your “better answer” above. I hate to be Monday morning QB-ing, but this behavior of the CAFC judges in not novel, unknown or even surprising.

    Having said all of this, my impression is you had a valid patent and Itron really got away with this.

  4. angry dude January 27, 2020 11:30 am

    Infringers or just some nice folks out there also like to “doctor” prior art – e.g. add new stuff to some obscure manual in foreign language sitting in some library
    or backdating and re-publishing freshly modified “scientific” article – happened to me once but I caught it immediately and reported to USPTO – in 2 separate IDS statements highlighting the differences between “same” articles
    I think the standard for what constitutes “prior art” has to be very stringent

  5. Curious January 27, 2020 11:36 am

    In this case Paul’s attorney did not even file a reply brief in the appeal.
    I cannot confirm this. However, I did look at the Appeal Brief, which was linked to above. What I’m trying to figure out is what was the specific error being alleged: was it a finding of fact or a conclusion of law? This makes a difference as to the standard of review.

    After skimming/reading a good portion of the brief, it appears to be a factual question, which has a very deferential standard of review.

  6. Jam January 27, 2020 12:12 pm

    Would a jury trial have made a difference? Other comments suggest inadequate representation. If inadequate representation were the case, then a jury trial may not have rectified the issue. Further, even if representation were adequate, such adequate representation may not have stood a chance against biased judges. If there is a bias against patents from the appointed judges (regardless of representational adequacy), a jury trial may very well have helped the situation. Jury trials are one of the best checks against the judicial branch as well as the executive branch. A check which has seemingly been removed from patent trials therein replacing the will of the people (juries) with the whim of the state (judges).

  7. MaxDrei January 27, 2020 12:48 pm

    What a coincidence. Just today, the Crouch blog (Link below) posted something on secret prior art as the basis of an obviousness objection. This of course is a feature of patent law unique to the USA.
    https://patentlyo.com/patent/2020/01/supporting-clarifying-disclosure.html#comment-461556

  8. Pro Say January 27, 2020 1:22 pm

    Thank you for sharing your heartfelt story Paul.

    Yet one more among oh, so many; where the true American innovators are crushed — not because their patents aren’t valid and infringed (which they are) — but because of the power, money, and influence aligned against them.

    “Prior art” is, sometimes, neither prior . . . nor art.

    . . . and as for the unconstitutional PTAB . . . calling it a kangaroo court . . . casts aspersions on kangaroos.

  9. Concerned January 27, 2020 1:49 pm

    Mr. Malone:

    “B” has offered to represent me at CAFC after PTAB. Based on your comments on outgunned representation. I will give your advice strong consideration. “B” is a contributing attorney to this website and is extremely knowledgeable as noted by comments from other posters. He also has been through my entire file wrapper.

    On a personal note Mr. Malone, I was honored to be named in the same book as you, which I received my copy last Friday.

    Disclaimer: I ready admit that I am not in the same league as many of you on this forum. It was an honor to be highlighted in that book and also published on this website.

  10. Some Guy January 27, 2020 2:39 pm

    I read that depo transcript very differently. Akl identified Home Plug and X10 as external prior art *as admitted* by your patent. He did not identify your patent as prior art. Maybe his testimony isn’t correct, but I don’t think you’ve accurately framed it here. If your attorney didn’t give the correct or best answers to the judges’ questions, that is his failing, not the judges.

  11. angry dude January 27, 2020 3:04 pm

    US Patent System is a big fraud

    Obviousness HAS TO be decided right at the get-go by the technical experts at the USPTO constantly policing their respective technical fields – not clueless and corrupt APJs some 15-20 years later

    After that – only novelty can be attacked and ONLY IF new prior art is discovered

  12. Pro Say January 27, 2020 5:29 pm

    The only thing worse than a death squad?

    An unconstitutional one.

    Congress: Time to send these PTAB posers packing, restore eligibility to all fields of innovation, and abolish the unnecessary section 101.

    Concerned: Where can that book you referenced be purchased? Thanks.

  13. Concerned January 27, 2020 6:29 pm

    Pro Say:

    cpva.info

  14. Pro Say January 27, 2020 9:25 pm

    Thanks Concerned.

  15. Concerned January 28, 2020 2:32 am

    The examiner’s arguments since the book interview are now even more ridiculous.

    The rejection went from routine, conventional and well understood on a process nobody on Earth as ever done to (we proved):

    Automates a manual process that was never manual to automate or expedite. (no proof offered in rejection)

    No practical application even though the examiner readily admits solved a many decades old problem beyond the reach of experts and working professionals and their computer networks/other computer tools. (admitted twice by examiner)

    Only acknowledged 3 of the 14 meaningful limitations. (self evident)

    The examiner never produced any substantiating evidence on any of his arguments. As the book points out, the usual stand by rejection was cut and pasted from other patent applications.

    Too bad I did not patent (or copyright?) that usual stand by cut and pasted rejection somehow, there would be infringement every submitted and routinely rejected application.

  16. Paul V. Hayes January 28, 2020 7:08 am

    Anon,
    Thanks for taking the time to read the article and comment.
    Do you agree that Suh is secret prior art, wrt the 524 patent?
    What is it about secret prior art that you feel I do not understand?

  17. Paul V. Hayes January 28, 2020 7:13 am

    Pro Say,
    Well said.

  18. Paul V. Hayes January 28, 2020 7:43 am

    Some Guy,

    Thanks for reading the article and deposition of Itron’s expert, Dr. Akl.

    I agree that Dr. Akl identified Home Plug and X10 as external prior art as admitted by your my patent.

    But disagree that Dr. Akl did not attempt to identify my patent as prior art.

    The specific portion of the deposition where I believe Dr. Akl attempts to treat 524 as prior art begins on page 62, line 25:

    “Q: In 2002 are you aware of any implementation of HomePlug or X10 that was on an external power line?

    A: Yes. The 524 patent itself [Dr. Akl expounds, reading from 524]…

    Q: Other than what’s disclosed in the 524 patent are you aware of any use of HomePlug or X10 on an external power line?

    At this point, Dr. Akl is unable to identify any other instance of the use of HomePlug or X10 on the external power line and ‘clams-up’.

    re: “If your attorney didn’t give the correct or best answers to the judges’ questions, that is his failing, not the judges.”

    True, but if the judges were not impartial, then it’s their failing, not our attorney’s.

    The only technical question asked was a repeat of an Itron question. Why didn’t any CAFC judge ask a pro-patent holder question?

    Several come to mind:

    1) Suh [0030] discloses use of “developed data transmission overlay technologies” (DDTOT) on a power line. Is DDTOT the same thing as “Internet Protocol” (IP) used in 524?

    2) Petitioner’s Expert Witness, reading from the 524-patent, testified that HomePlug and X10 are the only examples of DDTOT that came to his mind. Are HomePlug or X10 the same thing as IP?

    3) Suh’s figures 1 and 3 show that the power line [73] – the power line that uses DDTOT, is used to power the Suh meter and it’s battery backup. Do you think your POSITA would have known that it’s illegal to use unmetered power from the external power line and concluded 73 was an internal power line?

    4) Is Suh substantially the same prior art as Delsing?

    5) APJs found Petitioner’s Expert ‘persuasive’, as he argued that use of a telephone line (Suh Fig. 4), enables use of a power line. Do you think the power grid has the equivalent of a Public Switched Telephone Network (PSTN), hidden somewhere between the Suh meter and the utility back office?

    6) Would the transmission range on the external power line allow a message to reach the destination, e.g. the power utility’s back office; or would a power line network be required to get the message delivered?

  19. Jonathan Stroud January 28, 2020 11:22 am

    The NPE he’s referring to is Wi-Lan (Quarterhill), an old, very experienced (and in my opinion, professional) publicly-traded company with plenty of resources. Their stock value has rebounded significantly in the past year, almost doubling, and they recently won another eight-figure judgment after losing the first judgment on appeal on remand from the Federal Circuit. For what it’s worth, all of my interactions with their counsel have been pleasant, civil, and professional.

  20. Anon January 31, 2020 9:10 am

    Mr Hayes,

    Your choice of articles in regards to Secret Prior Art show a fundamental flaw from the authors of those articles (attempting a “real person” view instead of the legal fiction view).

    It’s that simple.

    That the first article is by a professor of law is an indictment rather than an accolade.

    (I have not looked at any of the particulars of your case, so I have offered no views on those items)

  21. Paul V. Hayes January 31, 2020 12:54 pm

    Anon,
    Thanks for the explanation, reply.
    I thought I had given attention to the legal fiction view, when discussing our criminally inclined POSITA. j/k.
    I take it you do not agree with Berks. Yelderman is not clerking for Gorsuch I understand. I read his article sometime ago, but from memory he does not use the term ‘secret prior art’; but only that the inventors when filing would have been unable to access the secret prior art later used against their patent at PTAB.
    Do you have a good reference on the distinction between a ‘real person’ and the ‘legal fiction view’
    thanks

  22. Anon January 31, 2020 4:27 pm

    Mr. Hayes,

    I have a very detailed reply that for some reason is getting caught up in a “Page Moved” processing error.

  23. Anon January 31, 2020 4:28 pm

    in pieces…

    Mr. Hayes,

    To answer your direct question, I do not have a reference for you.

    POSITA (also known as PHOSITA – Person Having Ordinary Skill In The Art) – has always been considered a person of legal fiction, and has NON-real person capabilities (knowing everything published everywhere in any language).

    The reason for this is simply that the legal test does NOT use as a ‘check’ any real inventor (and what any real person knows).

    The reason is that the legal test is simply aiming at a different gauge, and is summarized in a terse phrase:
    State of the Art.

  24. Anon January 31, 2020 4:29 pm

    Inventors (real persons) are NOT the gauge of what is allowed to BE patentable (in the sense of the legal tests of novelty (35 USC 102) and non-obviousness (35 USC 103). So in a very real sense, what any one real person knows is quite meaningless for the legal test.

    Instead, the State of the Art is the gauge, and this is measured against the legal fiction. One of the powers of the legal fiction – and long set as the US standard – is that regardless of any actual person being able to see the item on the date filed, actual filings DO make up part of the State of the Art.

    This entirely makes sense if you think about it.

    Should someone be able to obtain a patent on an obvious variant of what IS in the State of the Art?

  25. Anon January 31, 2020 4:30 pm

    Consider as well, that the original (and selectable option) of the original Quid Pro Quo was non-publication of your application. In any reasonable modern sense, this means that “visible to real persons” would ALWAYS lag the actual State of the Art, and if this requirement were to be loosened, then we would have an immense body of granted patents that would BE obvious over other prior-filed-but-not-published works.

    One of the traditional strengths of the US patent system was the presence and level of the presumption of validity. This presence and level adheres in part because ALL of the law is applied during examination (including the rigorous tests of both 35 USC 102 and 103) against that legal fiction.

    There are of course various wrinkles to the concept and application.

  26. Anon January 31, 2020 4:31 pm

    For example, items submitted to the Office, but not published, MAY be removed from the world of prior art that makes up the State of the Art. This is directly tied to the traditional US Quid Pro Quo that had always been a bargain of a full set of legal property rights (a granted patent) for the exchange of the mere publication of the patent. Other Sovereigns offer different bargains. Most notably, pretty much Rest of the World offers a far less generous bargain of the exchange of publication for the mere CHANCE of obtaining patent rights, IF you make it through examination. Most of these Sovereigns offer some “processing time” and attempt to provide a meaningful Search Report and Written Opinion prior to the set publication time, and one may expressly abandon and prevent publication in those Sovereigns. This though is NOT to confuse the very real difference in Quid Pro Quo.

  27. Anon January 31, 2020 4:31 pm

    Also something to consider: the USPTO has NO requirement (and hence no associated level of effort) for any inventor to perform ANY type of prior art search. Real persons are perfectly allowed to file what they believe to be their invention with ZERO effort as to what may actually be prior art (and quite the contrast to the legal fiction having nigh omnipotent powers of knowing any and everything out there published, in any language, anywhere in the world).

    Now mind you, a “best practices” tip IS to pay for as extensive as a prior art search as you can afford. This provides the best basis for writing your own application and distinguishing from the known art at the get-go. Mind you as well, that NO MATTER how much you spend, your own prior art search is NOT what the examiner will use, and likely, will NOT be what anyone against whom you want to enforce any later granted patent against will use. And while you DO have a duty of disclosure to the Office (you do most always need to report your search effort results – with no practical exceptions), and sometimes examiners MAY use items that you uncover, the legal basis of 35C 102 and 103 is simply NOT set by your own ‘real person’ efforts.

  28. Paul V. Hayes January 31, 2020 5:02 pm

    Anon,

    I would argue that a patent application does not become part of the ‘state of the art’ until it is published. I can see a practical policy reason for 102(e), as applied to obviousness, but not when the patent application is subsequently abandoned. On abandonment, there is no practical policy benefit to retention of the filing date as the priority date. On abandonment, imo, the priority date should shift to the publish date. Thus eliminating this type of ‘secret prior art’. Do you agree?

  29. Anon January 31, 2020 5:30 pm

    Patent applications abandoned before publication are expressly not a part of the prior art.

    What you are talking about then is those instances in which the (revised) US policy (and for applicants NOT taking advantage of the non-publication option) may fall into with the (traditional) bargained exchange NOT being met.

    Why should such have ANY merit at all in being “counted” as prior art — regardless of publication?

    Aside from the answer to that question, your supposition (again) falls back to a mind set of setting the legal test by what real people may do (or see).

    My posts explain that such has never been the case.

    The crux of the matter is that State of the Art is a legal determination.

    Again, the date being filing date reflects the ACTUAL State of Art, unencumbered by real person effects and limitations.

    If you want to turn it into a “real person” determination, then I would posit NOT stopping at the actual publication as a gauge. Why should that happen? Why should any publication anywhere in any language be a deciding factor?

    In a nutshell, we have really moved away from a State of the Art test and have moved to a different “what can a real person have known of the State of the Art” test. How would it be possible then to keep ANY of the non-human abilities in the actual legal test?

  30. Paul V.Hayes January 31, 2020 5:52 pm

    Anon,
    I do not disagree that Suh was legally prior art.
    However, I maintain that from a policy perspective Suh should not have been.

    So what I am suggesting is a change in the law. Our attorney found this a ‘bridge too far’; apparently as do you. I would ask, who is harmed if Suh (a published, but abandoned patent application) had priority not from the file date, but from the publication date – effective on abandonment? Suh is not harmed since he did not receive a patent. Without this change, only inventors are harmed. If the Examiner finds their patent obvious, then so be it.

    Setting aside for the moment ‘Any of the non-human abilities in the actual legal test’; shifting the priority to the publication date breaks the convenient rule (involving the legal fiction of a POSITA), but improves public policy, imo. The first to file has priority from the file date, unless they abandon the application. It the application is published, then it enters the public domain. It simply makes the POSITA a little more realistic. Only the definition of the State of the Art test is made more realistic. We need not reduce the POSITA’s omniscient knowledge of the ‘State of the Art’ further. The law is the law. We avoid decreasing a POSITA’s super powers further unless it makes sense to. There is no slippery slope here, in my view. However, clinging to a rule, without a good reason does not seem like good public policy to me. Good public policy is to encourage innovation, to encourage inventors to file; and not to hold on to rules for the sake of simplicity; or for the sake of incumbent business models that may be infringing.

  31. Anon January 31, 2020 10:29 pm

    Paul,

    Thanks for the discussion. I see now that you have moved from law to a particular desire outside of law.

    You dress this up as “policy,” and want to say “no harm,” but there is harm — massive harm. The rule of law is not subject to your version of desired policy (one that serves you under the guise of ‘exception’ — without any regard to Quid Pro Quo that ALL deserve, even Suh, who if bereft of the Quid, at least does not suffer the indignity of Quo taken in a soulless exchange).

    What tips me off is that your principle is NOT one of rule of Law, nor one of a consistent approach to any of the underlying principles that speak to innovation protection. Bending things “just enough” IS a slippery slope. I do not think that your view can see just how slippery. But you really do not mean “the law is the law.” You mean the changed law that lets you slip by, that alters actual State of the Art even as another sacrifices with no Quid, but Quo that is taken (just time-shifted for your convenience).

    I am sure that what you want may even be considered entirely fine — to the putative Rational Actor.

    I just have a higher goal than Rational Actor justifications.

  32. Paul V.Hayes February 1, 2020 1:15 am

    Anon,

    I’m still searching for the ‘massive harm and indignity’ done to Suh, in the proposed hypothetical situation.

    Apparently blindly following a bad law is a ‘higher goal’?

    The deal with the USPTO is to disclose, in return for a chance to temporarily gain exclusive rights to the invention.

    The deal is not to disclose, in return for no one getting exclusive rights, subsequent to the file date. When the USPTO published the application, the ‘state of the art’ is impacted; prior to this the application is a secret, much like a trade secret. Is making a trade secret a part of the ‘state of the art’ good policy?
    Is this the ‘massive harm done to Suh in the soulless exchange’?

    Had the priority shifted from file date to publish date, when Suh abandoned the application, the only ‘harm’ done to Suh would have been that any other would be inventor, filing before Suh actually entered the public domain (was published), would still have an opportunity to receive exclusive rights.
    Had Suh wanted to add to the ‘State of the Art’, and block others on the date of filing, he could have saved the grief and cost of dealing with the USPTO and published an article online – instead of, or in addition to, filing with the PTO.
    Suh chose to abandon the application after it was published. Suh lost the chance to gain exclusive rights. Why should other would be inventors also lose the chance of exclusive rights during the period of time when Suh was still a secret?
    It is true that this rule change would have benefited our case. But it also, imo, is better policy.
    Regardless, Suh was not relevant prior art.
    A way better example of massive harm and indignity is to be told one’s invention is obvious, because ‘DDTOT’ is Internet Protocol. External is internal, the power grid has a Public Switched Telephone Network (PSTN) hidden in every transformer; and our Hypothetical POSITA is not as smart as a 5th grader when it comes to correlative conjunction grammar.

  33. Anon February 1, 2020 6:19 am

    Apparently blindly following a bad law is a ‘higher goal’?

    Your use of both “bad” and “blindly” make no sense given the details that I have provided.

    The deal with the USPTO is to disclose, in return for a chance to temporarily gain exclusive rights to the invention.

    No. Read again. What you provide here is a ROW Quid Pro Quo.

    When the USPTO published the application, the ‘state of the art’ is impacted; prior to this the application is a secret, much like a trade secret.

    Please read again my posts. You are committing the error of “real person” versus legal person again.

    Is this the ‘massive harm done to Suh in the soulless exchange’?

    Since you have misstated the US Quid Pro Quo, I see why you don’t understand the harm.

    the only ‘harm’ done to Suh would have been that any other would be inventor, filing before Suh actually entered the public domain (was published), would still have an opportunity to receive exclusive rights.

    You are stating your premise as a conclusion, dismissing the nature of legal State of the Art, and again shifting on a slippery slope.

    Had Suh wanted to add to the ‘State of the Art’, and block others on the date of filing, he could have saved the grief and cost of dealing with the USPTO and published an article online – instead of, or in addition to, filing with the PTO.

    Here at last a decent point. Yes, he could have done so. But doing so is not legally needed AND surrenders the essence of the US Quid Pro Quo.

    It is imperative that you understand the legal point at hand — you appear to be stuck in colloquial thinking (in more ways than one).

    Suh chose to abandon the application after it was published. Suh lost the chance to gain exclusive rights.

    Yes, apparently he did so. But his actions may well have been preventable with the exercise of the option of the non-publication request. His mistake though changes nothing in regards to the larger discussion.

    Why should other would be inventors also lose the chance of exclusive rights during the period of time when Suh was still a secret?

    I have already discussed the answer to this question. Others lose the chance because the legal test is made based on the legal person and is not based on real person artifacts.

    The point of the matter is that the actual filing date is the date that the Prior Art IS changed. The exception to the rule is the ability of an inventor to withdraw prior to publication. I have explained how this is tied to the US Quid Pro Quo (and why it is the exception rather than the rule).

    I “get” why you want this to be different. But your wanting violates the Rule of Law of our US Sovereign.

    I also “get” that it is your opinion that this change that you want is — in your opinion and your feelings — better. But as I have explained, your feelings and opinion are NOT tied to the meaning of the law, nor are they reflective of the US Quid Pro Quo.

    The wielding of the word “policy” and “better” while committing errors of understanding on basic legal terms is simply not as persuasive as the depth of your feelings.

    Regardless, Suh was not relevant prior art.

    A completely different point and one with no intersection with the legal understanding that I have provided. As I have indicated, I have not committed on this type of particular analysis, but instead have focused strictly on the point that I have been discussing instead. You may well be 100% correct on this separate point, and your correctness would have zero bearing on the point that I am discussing. Politely, this is called a non sequitur and does not help your position in our discussion.

    and our Hypothetical POSITA is not as smart as a 5th grader when it comes to correlative conjunction grammar.

    I take this as an attempt at humor instead of a legal argument concerning the nature of the legal person. We could discuss the nature of that legal person in more detail, if you would like. Given the proclivity though of you being willing to BE on a slippery slope and only change some aspects of that legal person in order to purely benefit yourself (and do so without consistency or understanding of the nature of the law at hand), I am not convinced that such a discussion will be fruitful. I suggest that you contemplate the actuality of the law before you become emotional with your wanted changes.

    We could also discuss the Berks article that while having been composed “well” (as a ‘read’), is deeply flawed on legal and logical grounds.

  34. Anon February 1, 2020 6:24 am

    “have not committed on this type of particular analysis”

    Should read:

    “have not commented on this type of particular analysis”

  35. Paul V. Hayes February 1, 2020 8:15 am

    Anon,
    Ok. Thanks for the discussion. I will leave you with the last word.

  36. Anon February 1, 2020 9:27 am

    In that case, let me end with one point that you DO bring up that I have not commented upon previously:

    The ‘524 examiner had access to Suh’s patent application during the prosecution of ‘524.

    This is indeed a fact and one often ignored by those who want to declare how ‘unfair’ the ‘legal fiction’ approach is.

    Mind you, for some inexplicable reason, awhile back the Patent Office made an ‘Executive Decision’ (all on their own) to stop looking at material that they are fully aware of and in possession of.

    If anything, this is much more egregious than your Rational Actor mode, and is nothing short of a dereliction of duty.

  37. Pro Say February 2, 2020 4:59 pm

    Anon and Paul — thanks for the interesting and worthwhile discussion.

    One which all patent-seeking inventors should pay close attention to.

  38. Stuart Fox February 9, 2020 5:41 pm

    The bottom line is that its so disheartening ……. and moreover dissuasive for invention.

    Its as bad as a court finding > “The rustler is not guilty ……. and he can keep the cattle.”

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