Chamberlain Petitions SCOTUS to Review CAFC’s ‘Refusal to Assess Claims as a Whole’ in Garage Door Opener Case

By Rebecca Tapscott
May 27, 2020

“Citing many cases where industries have asked the Supreme Court to step in [on Section 101], Chamberlain noted that this is “an innovation emergency” that is undermining innovation and investment.”

https://depositphotos.com/5764613/stock-photo-garage-door-opener.htmlOn May 15, the Chamberlain Group Inc. filed a petition for a writ of certiorari asking the U.S. Supreme Court to review the U.S. Court of Appeals for the Federal Circuit’s (CAFC) decision reversing a district court’s holding that Chamberlain’s claims covering a “moveable barrier operator” were patent-eligible under Section 101. If the Supreme Court grants review, it will consider whether the Federal Circuit “improperly expanded § 101’s narrow implicit exceptions by failing to properly assess Chamberlain’s claims ‘as a whole,’ where the claims recite an improvement to a machine and leave ample room for other inventors to apply any underlying abstract principles in different ways.”

Federal Circuit Reasoning

On appeal, the CAFC found the disputed claims of U.S. Patent No. 7,224,275 (the ‘275 patent) to be ineligible because “wireless transmission” was the only element of the claims that was inventive over the prior art. The CAFC noted that “transmitting information wirelessly was conventional at the time the patent was filed and could be performed with off-the-shelf technology.” Thus, since “wireless communication cannot be an inventive concept here, because it is the abstract idea that the claims are directed to,” the Court held that “no inventive concept exists in the asserted claims sufficient to transform the abstract idea of communicating status information about a system into a patent-eligible application of that idea.”

Chamberlain’s Argument for Granting the Petition

Chamberlain noted that there are three reasons why the Supreme Court should grant its petition. First, the CAFC persistently refuses to analyze claims “as a whole” under Section 101, which defies Supreme Court precedent and “divorces the statute’s implicit exceptions from the statutory language and preemption concerns.” Second, Chamberlain argued that the CAFC’s approach to Section 101 threatens innovation and investment across many technological areas. Third, Chamberlain outlined several reasons why this case is an “ideal vehicle” to address and correct the CAFC’s Section 101 jurisprudence.

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CAFC’s Application of Section 101

The bulk of Chamberlain’s arguments surrounded its assertion that the CAFC has strayed from the text of Section 101 and drastically expanded the exceptions to patent eligibility, in particular by not analyzing claims “as a whole.” Chamberlain noted that Alice’s two-step framework enforces a balance between the monopolization of natural laws and abstract ideas and claims that apply those basic tools in a new, useful and particularized way. Chamberlain further noted that the CAFC’s refusal to examine claims “as a whole” caused a failure to properly assess the preemption concerns addressed by both steps of Alice.

Chamberlain noted that step one of Alice asks whether the claims at issue are directed to a patent-ineligible concept. Explaining that Supreme Court precedent dictates a holistic approach that examines what the claims at issue are directed to “as a whole”, Chamberlain argued that the CAFC’s approach of separating the claims into old and new elements basically equates to the invention of a “fundamentally different step-one test.” Chamberlain also argued that the CAFC’s approach of focusing on “the claimed advance over the prior art” improperly imports novelty and obviousness determinations into the question of whether the subject matter of a claim is eligible under Section 101.

Chamberlain also noted that the CAFC improperly proceeded to step-two of the two step framework, which subjects claims to a “closer scrutiny, deeming eligible those that incorporate natural laws or abstract ideas more prominently (and so were not filtered into ‘eligibility’ territory at step one), but that nonetheless pair those concepts with a specific, inventive component (and so pose no risk of undue preemption).” Noting that the Supreme Court has held that inventors cannot preempt an entire field and must rather narrow claims to a particularized application within a field, Chamberlain asserted that the CAFC misapplied the “technological environment” standard. Chamberlain noted that the critical question should have been whether the claims “preempt every imaginable implementation of the abstract idea within that technological field, and so improperly monopolize the idea itself.” Chamberlain asserted that the answer was “no”. 

Effects on Innovation and Investment

Chamberlain argued that the CAFC’s approach to Section 101 is widespread and threatens innovation and investment in many areas of technology, such as manufacturing, home appliances, automotive and computing. Citing many cases where industries have asked the Supreme Court to step in, Chamberlain noted that this is “an innovation emergency” that is undermining innovation and investment.

Chamberlain also argued that this case is an “ideal vehicle” for the Supreme Court to “reaffirm that courts must evaluate the claims ‘as a whole’ and tether the § 101 inquiry to the preemption concerns embodied in the statute and the Constitution.” Instead, the clarification Chamberlain is seeking “targets the analytical misstep that has led the Federal Circuit down the wrong path in so many recent cases and will greatly reduce the confusion surrounding § 101 without a complete overhaul of established jurisprudence,” said the petition.

In conclusion, Chamberlain further noted that the case is an “ideal vehicle” because: 1) of the “current uncertainty” surrounding § 101; 2) this is a case where the lower courts’ confusion and the Supreme Court’s precedent makes a practical difference; 3) there is no dispute that would significantly impede efforts to clarify § 101; and 4) garage door technology is familiar and easy to understand.

Image Source: Deposit Photos
Author: sepavone
Image ID: 5764613 

The Author

Rebecca Tapscott

Rebecca Tapscott is an intellectual property attorney who has joined IPWatchdog as our Staff Writer. She received her Bachelor of Science degree in chemistry from the University of Central Florida and received her Juris Doctorate in 2002 from the George Mason School of Law in Arlington, VA.

Prior to joining IPWatchdog, Rebecca has worked as a senior associate attorney for the Bilicki Law Firm and Diederiks & Whitelaw, PLC. Her practice has involved intellectual property litigation, the preparation and prosecution of patent applications in the chemical, mechanical arts, and electrical arts, strategic alliance and development agreements, and trademark prosecution and opposition matters. In addition, she is admitted to the Virginia State Bar and is a registered patent attorney with the United States Patent and Trademark Office. She is also a member of the American Bar Association and the American Intellectual Property Law Association.

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 27 Comments comments. Join the discussion.

  1. MaxDrei May 28, 2020 4:25 am

    Ah, that old chestnut, the “as a whole” argument. But despite it being as old as the hills, or perhaps for that very reason, I agree that this is a nice case on eligibility to take up to the Supreme Court. Everybody can understand “door” and “wireless”, can’t they?

    It reminds me of the equivalent strong difference of opinion on eligibility of any given claim, between the EPO and England. England points to the need for an “invention” and enquires into the “contribution” made by the claim to the art. It dismisses the EPO’s “as a whole” approach as “intellectually dishonest”.

    Strong words. Does the Supreme Court want to weigh in? Somehow, I doubt it.

  2. Paul Cole May 28, 2020 4:43 am

    Many thanks for drawing attention to this petition.

    It is in my view remarkably well-written and covers most points that have been troubling those who draft and prosecute patent applications for the better part of a decade. Its thoroughness is evidenced by the Table of Authorities which extends over seven pages. Very importantly it makes the point that the claimed subject-matter falls unequivocally within the eligible “apparatus” category of section 101. Hopefully it will derive significant support in amicus briefs and receive the attention from SCOTUS that it deserves.

  3. Concerned May 28, 2020 7:22 am

    I wish Chamberlain luck.

    The USPTO is also a party to these actions. Currently going through the courts are previously issued patents. However getting a granted patent today is difficult at best.

    My inventive concept is not used in any field of commerce, yet I get rejections. The examiner has failed to point to one application of my inventive concept anywhere on Earth in any field of commerce, admits it solves a decades old problem which includes working professionals, experts and their computer networks where the problem occurs, and makes up an imaginary manual process that does not exists and was proven not to exist with hard documents in all regulatory jurisdictions. Of course, this is a process that the Berkheimer court had to remind folks that truth and facts actually matter in a legal setting. No kidding but where in the process do truth and facts matter?

    Perhaps the patent system is like dentist and preachers. They are trying to put themselves out of business.

  4. AAA JJ May 28, 2020 8:36 am

    Those windmills aren’t going to tilt at themselves I guess.

  5. Pro Say May 28, 2020 11:42 am

    Should SCOTUS accept this well-grounded, well-deserving, critically important petition?

    You bet they should.

    But will they?

    Not. A. Chance.

    While SCOTUS shrugs over the innovation and economic damage they (and the CAFC with their misapplication of Alice / Mayo) have and continue to inflict on our Country . . . China, Europe, and the ROW quietly rejoice.

  6. André Schumacher May 28, 2020 12:12 pm

    Write a new computer program for an arduino, get a new patent.

    This has to stop.

  7. anonymous May 28, 2020 1:29 pm

    Petitions for cert on 101 issues: 50, at least.
    Granted: Zero.

    The Emperor Has No Clothes, says Judge Plager himself.

    Only Congress can fix this. Senators Tillis and Coons, why did you bother having hearings on this issue? The time to act is now.

    Stop blaming “stakeholders” for refusing to “compromise”, when you’re the murderous cop kneeling on the neck of inventors and small business.

  8. Ternary May 28, 2020 9:10 pm

    André Schumacher, if your assertion is correct we are on the wrong path. What to do, what to do?

    So, I checked the USPTO database for patents that claim Arduino. I was bracing for a deluge of issued patents, based on your palpable discontent with the US Patent system. (I am also not happy with it, but for a different reason.)

    You know how many issued patents the database has with Arduino in the claims? 11, yes eleven issued patents with Arduino in the claims. They had titles like: “NFC system for unlocking a vehicle via smartphone biometric authentication” and “LiDAR based sensing for visually impaired.” Those appear to be useful and patent eligible inventions.

    Like so many anti-patenters your opinion is wrong and not evidence based.

  9. Night Writer May 29, 2020 10:09 am

    @8 Ternary Thanks for taking the time to respond to Andy boy at 6. Too bad we can’t get more studies about the economic effects of the weakening of the patent system. SV has flooded us with studies with pre-determined results that weakening the patent system is good.

    It occurred to me the way people are admiring the EPO. Ridiculous. Europe has not kept pace with the rest of the world in innovation and particularly in the areas where they limit patentability.

    And the only country that is doing well is Germany that has the most lax views on patentability and the strongest patent system by far in the EU.

    Yet, we hear the virtues of the EPO. Yes let’s adopt their practices to cripple our economy like they have.

  10. Night Writer May 29, 2020 10:11 am

    For this I think the odds of the Scotus taking cert are close to zero.

    The Scotus did what they wanted. They gave the CAFC unlimited power to shape 101 anyway they want with SJ and any fanciful idea a judge has be the law. The Scotus won’t look at this again until they feel it is ripe for another change.

  11. MaxDrei May 29, 2020 1:13 pm

    Night, your proposition that it is the EPO that is the cause of Europe’s crippled economy is about as plausible that the cause of heart disease is having English as one’s first language. Don’t confuse effects with causes. Europe is perfectly capable of not keeping pace with innovation leaders in the USA and Asia without any help at all from the EPO.

    Take Volkswagen for example. And I’m not referring here to defeat software on diesel engines. Launch of i) conventional GOLF VIII and ii) its own all-electric TESLA-beater, both of them indefinitely postponed because of a decade of management failure to get functioning vehicle software written. Typical of dreamland Europe, I regret.

    Nothing that has gone on at the EPO made any difference to that failure.

  12. Ternary May 29, 2020 2:30 pm

    NW,This is the thing that puzzles me about Europe. They are certainly not stupid and do excellent innovative work. Like steppers made by ASML, ERP software by SAP, and the leading cryptographic standards (AES and SHA-3) are from Belgium, Louvain. But for some reason they only seem to follow. They take ideas and improve on it. They appear to be convinced that “real” innovation comes from institutions and companies, not from individuals. This is of course a very blunt generalization and you can find exceptions. But if being an independent inventor in the USA is tough it is almost impossible in Europe.

    The EPO and the European patent system to me are an exponent of that thinking. With little or no support to the individual inventor. It aggravates me to see how we here adapt to that way of thinking, basically wringing the neck of the goose that lays the golden eggs, etc.

    Rather than applauding Arduino as a simple, cheap and effective platform to develop new inventions, it is condemned because it all seems so simple, too simple. An utter misunderstanding of what innovation is. It reflects, to me, a European way of thinking, I find. Arduino is considered a toy, not a serious development platform. That is why the Apple and PC are American inventions and not European ones. We know it and they know it and still we both fail to learn the right lessons from it.

  13. MaxDrei May 29, 2020 4:27 pm

    Ternary, can you say more. I see that Arduino recently went into partnership with ARM, itself owned by Softbank. To me, that seems not to fit with your “condemned”. Further, I do not understand your assertion that the patent system in Europe offers no support to inventors. What is it that gave you that idea? My experience, here in Europe, is different. Perhaps it is everywhere harder to win games when playing away from the home arena?

  14. Ternary May 29, 2020 10:19 pm

    MaxDrei, Arduino was not brought up by me. To me it is merely a computer platform, being an inexpensive one. However, the insertion of the name Arduino into the discussion was clearly a rhetorical one, to inflame readers on “how easy it is” to get a patent in the US on software. As such it was implicitly condemned as an innovation tool by Andre, not by me. Don’t twist my words please.

    ARM in my mind is an example of European innovation. Good and solid technology. But Europeans (including ARM) were not the inventors of microprocessors and customizable processor libraries. SAP is a result of integration of MRP software which has a long AS400 history in the US. ASML follows the long history of stepper technology development in the USA. Their UV laser comes from Cymer, a company I visited when it was a single room company in San Diego. From the same area comes Qualcomm that started with their OmniTRACS product and that was deliberately sabotaged by what then still were European telecom administrations.

    I do not say that the EPO does not support inventors. You should read what I write before you make such an allegation. Such inaccuracies will get you into trouble during patent prosecution. I say that they do not support independent inventors. That concept is alien to the EPO and Europe in general. The enormous costs of patent prosecution and the constant “invitations” to pay fees make it unaffordable to independent inventors to obtain a patent. EPO annually honors inventors, who all (or most of them) are members of an institution or company.

    I am puzzled by Europe’s inability to come up with inventions as in the US and bring it to an attractive novel service or product. Almost everything in technology is an imported and/or copied variant of a foreign development. What you mention about VW (your words, not mine) appears to be indicative of Europe. VW with their diesel debacle were fraudes. There was no clean diesel technology.

    What I care about, with others on this blog, is how companies and institutions in the US have taken a page out of the innovation policy book of Europe and continue to screw up our own system.

    With others on this blog, I am also a bit baffled that you appear to promote the European patent system on this US site, while Europe in mentality and outlook and interests is clearly so different from us.

  15. MaxDrei May 30, 2020 5:02 am

    Ternary thanks for such a long answer.

    You tell us you are “baffled”. No, sorry, I must learn not to misquote you, not to “twist” your words: you say that you are “a bit baffled”. So I will explain. Being a European patent attorney in a large firm, I receive instructions from all round the world. To be of service to my clients, I need to understand what they are thinking, behind the words that they write. I know of no better way to understand the American mindset than to post provocatively on blogs like this one, and see what remarks are thrown back at me.

    As to garage inventors in Europe, one good example is Sir James Dyson, of vacuum cleaner fame, and recently declared in theTimes Rich List to be England’s richest man. For years he railed against the patent system but, these days, he is one of its most energetic bulk users. He constantly rails at the British government, to take measures to help the public (and the establishment) grasp the vital importance of engineering science.

    No need to be puzzled by “Europe’s inability to come up with invention”. There is quite a lot of invention in Europe. Where Europe is not so good is in societal support of technological innovation, and awareness in society that it is the key to our continuing prosperity.

  16. Anon May 30, 2020 9:19 am

    MaxDrei,

    You state that you should “must learn not to misquote” just as you also appear to do just that.

    You lead with the (extremely minor) change from “baffled” to “bit baffled” but appear to NOT answer the actual statement in which the actual two word phrase appeared in.

    To wit, the actual full phrase was:

    With others on this blog, I am also a bit baffled that you appear to promote the European patent system on this US site, while Europe in mentality and outlook and interests is clearly so different from us.

    This clearly runs to the SAME probing of you that I have long done, for example, with the phrase of “Here, wear my glasses, they work for me.”

    Are you now insinuating that Ternary should be ‘banned’ because he questions you and your tactics (while you CONTINUE to employ those very tactics without regard to anyone questioning you)…?

    Your last paragraph is more than a little spin and in fact negates what Ternary is putting to you. Ternary is NOT concerned with the false premise you offer of “No need to be puzzled by…” Ternary expressly states that THAT is not his puzzlement (nor his ‘need.’).

    You then turn and admit to the point undergirding Ternary’s ACTUAL puzzlement with “Where Europe is not so good is in societal support of technological innovation, and awareness in society that it is the key to our continuing prosperity” – but you leave out the DISTINCTION at point between the European patent system and the traditional (even some may say disrespectful) Bruce Willis-movie allegorical phrase of Yippee Ki Yay US underpinning of the ‘lone cowboy’ and individual inventor.

    There is a HUGE difference at base in the philosophies of US fierce independence and EVEN disrespect for authority, revolting against the much more European-accepted stule of feudalism and ‘place’ of a Corporatacracy as head of a neo-feudalistic system. The Europe mentality and the US mentality are simply “vastly different ocular prescriptions,” and your constant drumbeat has NEVER taken that into accord.

    THAT is what causes the “bit baffled.”

    But you addressing THAT point, is doubtful, as addressing THAT point would cause you to perhaps stop a drive that has animated your posts for at least a decade now, while admitting that MY critiques of you have been directly on point.

  17. Ternary May 30, 2020 3:18 pm

    MaxDrei, You read my comments in parts, not as a whole. What I say is “I am puzzled by Europe’s inability to come up with inventions as in the US and bring it to an attractive novel service or product.” Dyson may be an example of a “garage inventor” but the vacuum cleaner of Dyson is an improvement, as I argued before. Your point about Dyson being initially anti-patent supports my opinion that Europe’s patent system does not support the independent inventor.

    I have made that point several times and you have not responded to it. The fact that Dyson has seen the light so to speak after obtaining a market position, actually supports my view that European patents are to serve companies and institutions, the establishment, not the start-up.

    The US Patent system was (and still partially is) geared towards promoting and supporting the independent inventors. At the time of the start of this nation there were no institutional inventors. Remember, at that time almost anything related to technology had to be imported here. With a limited population of around 5 million there was no industrial base.

    The mythical American inventor is not entirely a myth. It is still reflected in application fees and issue fees, which are discounted for small entities and are and should not be a major barrier for independent inventors. Incumbents in the US realize that and have created other barriers.

    What about the fees in the EPO? As a corporate attorney (that was not really a surprise), you probably find that of little concern. As a corporate attorney, you may find independent inventors with patents an annoyance, as many do in this country.

    Answers I would be interested in to receive from you relate to:
    1) do you agree that a patent system should make it easier for independent inventors to file a patent application.
    2) do you agree that the EPO and the European fee structure make it tough for independent inventors to obtain a valid, valuable patent
    3) do you agree that independent inventors by obtaining a valid and valuable patent are a positive economic force, in general.

    It is OK with me if you are not pro independent inventor. A clever response would be “I am pro inventor.” But at least I would know where you stand so I don’t have to conduct this elliptical discussion to find out what you mean to say.

    The USA is not a derivative of Europe. I have had this discussion many times with European friends and acquaintances. There are some fundamental differences. As Anon says, ” US fierce independence and EVEN disrespect for authority, revolting against the much more European-accepted style of feudalism and ‘place’ of a Corporatacracy as head of a neo-feudalistic system.” It is baked into the national psyche.

    In Europe, authority often steps in to criticize new ideas: your boss, your colleagues, your professor. They always have a million reasons why it doesn’t and cannot and shouldn’t work. We have that also in the US. The difference here is that many people who are thus criticized in this country, take their fate in their own hands and start their own company. And it may start by filing a patent application.

    That is a phenomenon that was almost uniquely American. It is certainly not a continental European mentality. And the pro-institute attitude is reflected (as I said several times) in the European patent system.

    I have no disrespect for European science and capability to invent. I am puzzled (again) by the European inability to come up with a breakthrough (or however you want to call that) invention or development. My argument is that Europe not only did not invent and not develop the PC, (or the cell phone) but was incapable of doing so.

    I have to add that I am not the only one who is puzzled or concerned by this. European governments had at least the same concerns, and sent hundreds of delegations to the US to study how the US was able to achieve this economic impact by technology. How the heck to create a start-up culture? I organized and accompanied many of these delegations to SV, to VCs, to US Government like the NSF with their programs. Basically what it came down to is that you have to promote individual initiatives and it was something that most Europeans did not get. They only saw the end result, of an Intel, MS, Qualcomm, but they never understood or grasped the path to that success. They still believed that innovation is a rational, corporate development. Individuals are ancillary to that.

    Which brings me back to my original concern. Which is the role of the independent inventor (who you call garage inventor it seems) in innovation. Europe does not have an equivalent of the post WW2 independent inventor as in the US. And the US is busy to wipe out the independent inventor as an economic force. You appear to contribute to that discussion by bringing in a European vision on America society. I may be wrong in that opinion, but I am ready to be convinced of the opposite.

  18. MaxDrei May 30, 2020 5:22 pm

    Ternary what I care about is promotion of the progress of the useful arts, because such progress is vital to ongoing prosperity and, indeed, the very survival of humanity on Planet Earth. So I am pleased to see, for example, progress in Europe (in Oxford, Heidelberg, Basle and Berlin amongst other places) towards a vaccine against the corona virus. The sorts of invention on which the future of humanity depends are not made by inventors working at home, in their basement, attic or garage.

    As to comparing the cost of getting a patent in Europe with that in the USA, we should be careful to distinguish Office fees with attorney fees, to factor in the probability that the first thing that happens after a first action on the merits is a notice of allowance, and also careful to take into account the likelihood of an issued patent being bogged down in post-issue prior art attacks. A functional patent system requires that bad patents be swiftly revoked and good ones be swiftly enforceable even while they brush off spurious attacks.

    The patent system functions for patent owners in Germany and in England, even the ones lacking a deep pocket. In the USA, it doesn’t.

    Here is a link to another admirable British “garage” inventor.

    https://mandyhaberman.com/about

    And here one to famous German inventor Artur Fischer:

    https://en.wikipedia.org/wiki/Fischerwerke

    A post-War start up which now has 47 subsidiary companies.

    Then of course there is SAP:

    https://en.wikipedia.org/wiki/SAP_SE

    Do any of these examples dent your thesis, I wonder?

  19. Anon May 31, 2020 2:40 pm

    Maybe MaxDrei can figure out all on his own how disrespectful it is to ignore points put directly to him.

    Maybe he should consider his own involvement on blogs given this level of disrespect.

    Leastwise, before he points out the spec in someone’s eye, he might want to remove the log from his own.

  20. MaxDrei June 1, 2020 5:23 am

    Ternary, you want to know: “Which is the role of the independent inventor (who you call garage inventor it seems) in innovation.” I did reply but my reply has not appeared. My mistake was perhaps to include too many links.

    My suggestion was to ask other people in Europe, that have in common with James Dyson that they were independent inventors but also entrepreneurs who have built successful and profitable businesses in Germany and the UK. I don’t know enough about other European countries like France and Italy but do not doubt that they have just as many examples. For my part, I suspect that in the financial sector, Europe today is inherently less ready to take risks than it is in the USA. Perhaps the innovators lack the skills to enthuse investors and then the investors just think the game is not worth the candle. And in Europe there is far too much complacency, that’s for sure. Necessity is the mother of invention. In Europe, life is perhaps not dangerous enough to give a stimulus to invention.

    I see that you are not happy with the term “garage inventor”. And one is not going to come up with a vaccine against COVID-19 in a garage, indeed. You are quick to dismiss most everything as a mere improvement rather than a breakthrough invention. These days, the mere improvements come from the corporations and the genuine breakthroughs, the blue skies stuff, comes (but perhaps you disagree) mostly out of the universities (which then set up spin off start up operations to exploit them, at least in England and Germany. I wonder, do you see those inventors, those entrepreneurial professors and their teams as “independent”. I presume not.

    You also asked about EPO fees, from the point of view of an independent inventor. Yes of course independent inventors should be able to obtain rapidly enforceable patents, quickly and economically. The longer the chain of communication between the inventor and the EPO, and the more intermediaries there are that are not well-versed in drafting, filing and prosecution outside the USA, the greater the cost and the less well-adapted is the patent for quick and effective enforcement. There is one style of patent drafting for the USA and a different one for everywhere else in the world. Ask US corporations doing business in Europe how easy it is, in England or Germany, for small European patent holders to get injunctive relief from infringement, quickly and at a cost proportional to the amounts at stake.

  21. Anon June 1, 2020 8:50 am

    MaxDrei,

    You miss the point — as usual.

    The comments have been to the different cultural Zeitgeist and how the spectacles that you wear (based on your European experience) do not — can not — prescribe what is best for the US Sovereign.

    You continue** to ignore a foundational difference even as that difference has now been presented to you anew, and with the ‘respectful’ tones that you clamor for.

    The ‘biscuit’ here is that while you SAY you want to see respect here, what you really want is a lack of critical view so that you can continue to peddle your propaganda with no pushback.

    That is the ultimate in confusing “polite” for “respect.”

    **how long is it now that I have put this point directly to you?

  22. Ternary June 1, 2020 10:27 am

    Your answers resemble the discussions I had with European delegations that studied the US technological/entrepreneurial culture. You are very institutional/corporate centric. You are missing the point of individuals being a driving force in innovation.

    In my opinion the European fee structure is prohibitive for independent inventors, let alone the skyhigh attorney fees. So, whatever innovative and entrepreneurial activities there are by independent inventors in Europe, they are not helped or promoted by the EPO. You don’t even bother to address that issue.

    You are not making a case for Europe being a hotbed for breakthrough technological inventions. Europe is just not. There are some. But not many. The ones that come to mind for me are the Compact Disc, the CT scanner, centrifuge based nuclear enrichment, the Concorde, all corporate/institutional.

    Looking at Europe and the USA, I see no reason to harmonize with Europe. As far as we did (first-to-file and basically rescinding the filing grace period) were negative measures for independent inventors.

    You keep on coming back to “corporate” interests and the importance of a patent system for corporations. My argument is that you also need “independent inventors” for a vibrant innovation culture. Europe’s patent system does not support an “independent inventor” culture. Your fee structure is already against it.

    We used to have a reasonable pro-independent inventor system that has been demolished, partially by harmonizing with Europe. But also by other measures. We don’t need Europe to further screw up our patent system. We are entirely capable of doing that ourselves.

    As an independent inventor I see the EPO as an example of an expensive, corporate interest driven, bureaucratic system. We have enough of that here. And so far you failed to provide any arguments that the EPO supports independent inventors.

  23. MaxDrei June 1, 2020 4:18 pm

    Ok Ternary. I rather think we are now done. I have failed to sway you and you have failed to move me. I have acted for independent inventors and start ups (even though most of my clients are established companies) and for my various clients I have filed and prosecuted all over the world.

    Shifting from First to Invent to First to File is, of course, a monumental change. What drove that change? Surely not the urgings of independent inventors. Nevertheless, based on my 40 years of experience as a patent professional, I remain sceptical that independent inventors can fare better with ongoing interferences than with priority contests under a First to File system.

    Not being myself an inventor or patent owner myself, I can view the whole question dispassionately. I’m not convinced though, that you can.

  24. Ternary June 1, 2020 6:19 pm

    You have no clue about independent inventors, MaxDrei. Your writings are an exponent of rigid corporate/institutional R&D with a continental European bias. This makes your opinion about independent inventions in the USA and the culture it represents a bit suspect for its motivation.

    Being passionate or dispassionate has nothing to do with it. You can easily and unequivocally state: yes, EPO filing fees are a barrier, or no EPO filing fees are not a barrier for independent inventors. But you cannot bring yourself to express such a thought. You may have to defend such an unpopular opinion to people who you boast to that you write on a US patent blog.

    Like with so many European bureaucrats, one never gets a straight answer and clear opinions are postponed, hidden and obfuscated until expressing that opinion does not pose a threat to a career.

    Don’t twist my words to make yourself appear thoughtful. I expressly wrote that first-to-invent was a wrong harmonization. Like I said before: all the traits of a faithful European bureaucrat and disappointingly so.

  25. Anon June 1, 2020 10:10 pm

    Welcome Ternary, to the opinion that I have – and have had since within the first five minutes of attempting to hold a conversation with MaxDrei.

    He is only interested in spouting his propaganda, and refuses to actually listen or even critically think about anything outside of his very limited single block (that he has been going round and round about for decades upon decades).

    He cares not a word for what you say, for the US Zeitgiest, or for anything that he dare actually contemplate that would “sway him.”

    He views this as some ‘closed minded’ thing of him swaying you as him swaying you and simply refuses to understand the point actually presented to him.

    Critical thinking is just not something within his capacity. At best, he may serve as an occasional foil to show how errant and closedminded he really is, and how flawed the European model remains.

  26. MaxDrei June 2, 2020 7:58 am

    Ternary, I try to understand what you write, but sometimes I struggle. I had you down as one who regrets the switch away from First to Invent. You wrote:

    “We used to have a reasonable pro-independent inventor system that has been demolished, partially by harmonizing with Europe.”

    In reply, I wrote:

    “Shifting from First to Invent to First to File is, of course, a monumental change. What drove that change? Surely not the urgings of independent inventors.”

    It seems that this has upset you, for you now write:

    “Don’t twist my words to make yourself appear thoughtful. I expressly wrote that first-to-invent was a wrong harmonization.”

    In what way am I “twisting” your words? How can it be, that first-to-invent is (regardless whether right or “wrong”) harmonisation?

    But if you meant to say that surrender of First to Invent was “wrong” then why is my observation so upsetting to you, that this surrender was surely not driven by the promptings of independent inventors?

    but perhaps there are other aspects of international harmonisation that trouble you more. If so, do tell.

  27. Anon June 2, 2020 8:04 am

    MaxDrie reminds me of the three classic beings in a row:

    He certainly has his hands over his eyes, refusing to see things that he does not want to see.

    He certainly has his fingers in his ears, refusing to hear the points that have been put to him.

    And he merely only partially has his hands covering his mouth (it’s not a perfect analogy). The partial is that while he will not speak on point to the counters presented to him, he will continue to proselytize about how you should wear his spectacles because they correct his own vision problems so well.

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