The U.S. Patent System is Still Worth Saving

By John White
November 23, 2021

“At the moment, amici briefs are filed too infrequently to make a difference…. What we need, instead, is an ongoing amici effort that is financed and has purpose and direction.”

U.S. patent system - https://depositphotos.com/20324613/stock-photo-red-life-buoy-with-hands.htmlMuch deserved criticism has been leveled at the U.S. patent system in the last decade or so, from all sides. No one branch of the system seems to much appreciate what the other branches are doing. The Supreme Court and Federal Circuit are issuing decisions that seem innocuous at first, but then inevitably snowball into wrecking balls. Regulatory policies, guidelines and statutory prescriptions that are well intended when the ink dries turn lethal to patents—witness the creation of the Patent Trial and Appeal Board (PTAB). But, despite this situation, in the late summer/early fall of this year, in a brief burst of face-to-face patent events, I began to re-appreciate the value of the system and what it means to the country and our collective future.

It all began at IPWatchdog’s LIVE annual meeting in Dallas, Texas, during a lunch time chat with a very frustrated independent inventor. Despite his efforts in creating a turn-key seamless web advertising and sales system, and obtaining patents, licensing prospects were dim and PTAB attacks seemed certain. He concluded that he would have been better off had he not even tried to patent his invention at all. Instead, he feels he should have just kept his retirement nest egg intact and stayed home. He was spent, both emotionally and literally. I could not really challenge his deeply personal conclusions. But I could determine that it was worth changing that outcome; we, as a society simply cannot afford to lose the contributions from our inventors.

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Our culture and society, like no other on earth, believe in a bright future brought to us by the technical innovation of today. It is not that we do not like tradition and status quo; we do. America loves baseball, but we are also impatient and want to solve the problems of today to create a better future for those in our care. We want diseases swept away, we want technological blockages removed, we want a “better, cheaper, faster” tomorrow for all.

A Plan to Resuscitate

The path to this bright future is to resuscitate our patent system, to restore the incentive and ambition and the future harvest that it brings. If you want to be inspired, even now, flip through the pages of the USPTO’s weekly Official Gazette of issuing patents. Flip through classes and subclasses with which you are unfamiliar. You will be astounded. Each and every week.

A plan to accomplish this goal passes through the Federal Circuit. It has to. Here’s why.

We have watched, in despair, as the Supreme Court has clung to its reputation of never finding a patent valid or the system not unbalanced toward patent owners, and in need of a good throttling of all that flows therefrom. It is, in my observation, rather hopeless to expect people with no particular patent familiarity, except their own inchoate precedent, to find a way out of the mess that their cases have created. Firstly, they do not get what they ever did wrong, and do not believe that righting the ship is their job. Second, they refuse to acknowledge that it is impossible to apply all of their own precedent, which in the patent space is hopelessly irreconcilable. In addition, it will take too long to get through the Supreme Court to save a system wherein the lifeboats have already been put to sea. We need action and need that action now!

Likewise, a statutory fix seems beyond the capability of our elected officials and the influential corporations to whom they seem to report. I am not throwing any one group or party under the bus. Our system works as it does: those with issues to push spread their influence through the Capitol in various ways, and for reasons that are difficult to explain, pro-patent forces simply do not engage in the same influence peddling activities. Until our elections are free from such influence, it is what it is. I feel badly for those few who are likely tilting at windmills on the Hill hoping for some patent conscience to develop. It might happen, but I am not holding my breath. And neither should you. Besides, when laws do get passed, the implementation can gut the entire purpose of the “fix”. See; e.g., the America Invents Act.

Be a Friend to the Federal Circuit

So, as I said, the Federal Circuit is it, and amici filings are the way to get it done. At the moment, amici briefs are filed too infrequently to make a difference. I observe that only the “big” cases get any amici play, and then there are too many, and they drown each other out. The court is able to pick off a few here and there and use them to sway a decision. This rate of filing won’t work for the fix we need.

What we need, instead, is an ongoing amici effort that is financed and has purpose and direction. What we have now is ad hoc, at best. We need to retrieve the injunction. The Federal Circuit should have the courage to conjure a formulaic injunction test that passes muster, and let’s get back to stopping those who infringe!

We also need to retrieve patent eligibility. The precedent needs to be narrowly read and narrowly applied to precisely what the Supreme Court rules, nothing more. Rigor needs to be brought to the Alice flowchart. An “abstract idea” needs to be truly intangible and unknowable in form and execution. It cannot be simply an argument to rid us of inconvenient property rights of others. Speaking of which, rights should be real property—not some government lease hold, because they are not! This theory implies that all ideas, of any origination, are owned by the government even before realization. If you, thereafter, “discover it”, the government lets you borrow it from them as long as you do not overreach. Idiotic.

Jurisdiction has really run off the rails, under the guise of venue, when the largest companies to ever stride the earth that invade and persist in every facet of our lives, dawn to dusk wherever and whenever we go, can only be sued in a forum they choose. That certainly cannot make any rational sense after courts and businesses alike have shown they can carry on as per usual via Zoom and other platforms. There is venom and vile toward Judge Alan Albright for preserving the choice of forum of plaintiffs because his courtroom is viewed as pro patent owner. Where is that same outrage for those mega-corporations that seek to move the cases to judges and courthouses that are known to be favorable to infringers? Crazy.

It Has Worked Before

But, you say, the Federal Circuit cannot, and does not have the authority to, accomplish what I have set out. On the contrary, they can and do, and I have seen it done. Not too long ago, the Supreme Court decided a trade dress case, Two Pesos v. Taco Cabana, 595 U.S. 763 (1992). It seemed to make any distinctive trade dress into a super design patent trademark combo that could be used to take down any pseudo imitator. Well, the various Circuit Courts wisely decided that despite what they wrote, that was not what they meant. Back into its properly narrow box it went. Likewise, KSR International Co. v. Teleflex, Inc., 127 S.Ct. 1727 (2007), according to its overly broad wording, stood to wipe out the patent system with a scourge of obviousness based on “predictability”. The Federal Circuit, in but a few years, put KSR and obviousness back into a rigorous box, more-or-less saying that, despite what they said, that is not what they meant, and we have been applying the standard they struggled to articulate for years, anyway! Done.

We have a new Chief Judge at the Federal Circuit, and her court is meant to keep the system on its rails—let’s give them the help they need to get it done. Contact me by visiting the link in my bio below about organizing and financing this solution!

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The Author

John White

John White John White is a US patent attorney and a patent lecturer. He is CEO/Managing Director of www.PCTLearningCenter.org, and he is also the principal lecturer/author of the PLI Patent Bar Review Course, a course that he originally created in 1995. By now, John has personally taught close to 65% of all practicing patent attorneys and patent agents how to successfully become admitted to the Patent Bar. John has also taught numerous US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners. John serves as an expert witness in patent litigations and is regarded as a leading authority on patent practice and procedure. He also maintains a select patent practice, Berenato & White, and also assists start-up technology companies increase and monetize their patent portfolios through his affiliation with SorynIPGroup.com.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 23 Comments comments. Join the discussion.

  1. Greg DeLassus November 23, 2021 8:11 pm

    [T]he Supreme Court has clung to its reputation of never finding a patent valid or the system not unbalanced toward patent owners, and in need of a good throttling of all that flows therefrom.

    Exactly. As Justice Jackson sourly observed over 70 years ago, “the only patent that is valid is one which this Court has not been able to get its hands on.” Jungersen v. Ostby & Barton Co., 335 U.S. 560, 572 (1949). And yet, all during that reign on unrelenting invalidation, U.S. industry and innovation flourished just as unrelentingly. In other words, this is how the U.S. patent system is supposed to work.

    Be of good cheer. Nothing about our patent system needs to be “saved.” It has never been better.

  2. Josh Malone November 23, 2021 8:29 pm

    Excellent analysis. I would add that inventors need better advocates. Too many attorneys have a conflict of interest in preserving the status quo. PTAB practice is easy money. Infringer retainers put food on the table. Challenging precedential decisions or PTAB practice makes people not like you. Proving up an injunction is hard. It’s much easier to put your head down and do what everyone else is doing – which is losing.

    Inventors are becoming aware the system is rigged. If you are an attorney who is willing to fight for justice for inventors, please reach out so we can add you to our network.

    As we build robust cases in the district court and raise compelling arguments for appeal, the author’s amicus plan can be put into motion.

  3. B November 23, 2021 9:41 pm

    @ Gene “Firstly, they do not get what they ever did wrong, and do not believe that righting the ship is their job. Second, they refuse to acknowledge that it is impossible to apply all of their own precedent, which in the patent space is hopelessly irreconcilable.”

    Gene, if you take a really, really close look at Bilski and Mayo, especially in light of their respective procedural postures, you can see that the SCOTUS does backtrack on Benson to the point where nothing is left of Benson.

    However, b/c the SCOTUS laid on a thick layer of fluffy nonsense in their Bilski and Alice dicta – while also mischaracterizing aspects of Benson – it’s hard to tell.

    Anyway, because Bilski wasn’t particularly destructive given that it was a 103 rejection in disguise, we all breathed a collective sign of relief. But for six CAFC judges refusing to read the SCOTUS’s Bilski decision, Alice would not have been necessary and we’d be calling this 101 nonsense Bilski-Mayo.

    We could sure use another 5-6 CAFC judges with the intellect of Rader.

  4. Model 101 November 24, 2021 6:43 am

    Will never happen…too many crooks!

  5. concerned November 24, 2021 7:44 am

    There are a couple things the CAFC could do immediately.

    Evidence: Look at all the evidence, not just looking at evidence when it is used to create a SCOTUS judical exception against the patentee or patent applicant.

    Define words: If the courts must insist on engrafting words on the statutory text, then define said words or default to their common everyday meaning. Of course, Congress should be the ones establishing text, however, the bench does it anyway and then keeps those definitions a big secret.

    The above are obvious suggestions that should be occurring anyway in a legal setting. The fact the above suggestions are not occurring in this legal setting lead to other thoughts about what is really going on.

    Perhaps Chief Justice Moore will straighten some of these matters out. I am hoping my appeal has Chief Justice Moore sitting on it.

  6. Charles Lee Mauro CHFP November 24, 2021 7:50 am

    Excellent point on the proactive amici approach. As you note the problem is funding and organization. As one who has contributed on several occasions to major amicus briefs, I can say that they are time-consuming and costly for the parties involved.

  7. Kip Azzoni Doyle November 24, 2021 8:45 am

    Thanks for this piece. Attending the “decade of stolen dreams” rally in Detroit was really important and informative. I am honored to be apart of this fight.

  8. Anon November 24, 2021 9:38 am

    Greg’s post at one is summed up in two words:

    utterly asinine.

  9. PA Crier November 24, 2021 10:23 am

    This doesn’t have anything to do with the gist of this essay but I will comment on the sentence:

    Speaking of which, rights should be real property—not some government lease hold, because they are not!

    I absolutely agree that intellectual property is personal property or if you prefer real property. However in real estate there is little evidence gathering; a surveyor determines the property lines – the metes and bounds – and you are done.

    Patents rely on factual evidence as does criminal and civil law making those areas aptly comparable. In criminal/civil law the lack of evidence means the person bringing the action loses. In patent law the lack of evidence means the person bringing the action wins. Seems strange to me that a person wins so big when there is little effort to find factual evidence.

    102 and 103 have taken a back seat because of 101 but those problems still exists.

  10. Jacek November 24, 2021 10:27 am

    There is a known fighting technic in Chinese martial arts. In essence, you use the attacker’s force to help him lose his balance and fall. It seems that message “Do not Patent in the US if you do not want to face financial ruin and personal disaster” is such martial art move. Big tech is working on this relentlessly. Help them out. Only when things became worse than dire Congress will start paying attention to it.

    But most likely at the time, we are going to be back in caves.
    (And Chinese will live on the Moon)

    The biggest problem is that thousands of wannabe inventors have no clue what waits for them. They will never stop inventing. To save their efforts and their skins the “message” with a little bit of information on what you can do abroad can help the most motivated to survive.

    EVERYBODY MUST KNOW if you want any change.

  11. Josh Malone November 24, 2021 11:32 am

    Greg is very out of touch. The patent system was never flawless, but from 1790 to 2006 we had progress by — more often than not — securing to inventors the exclusive right to their discoveries. Today — post eBay, Alice, and AIA — that is virtually impossible.

    How many inventor protests were there in that earlier period? How many inventors were complaining to Congress and the USPTO in letters and submissions? How many inventors believed the patent system was rigged against them? How many inventors were signing license agreements with 10% royalties? How many inventors were creating sustainable businesses to commercialize their technologies?

    Those metrics have fallen off the cliff in the past 15 years.

    The patent system is utterly broken, it does not work at all.

    If you think the rate of innovation today is near-optimal, then patents are unnecessary, and independent inventors are unnecessary.

    Because today we don’t have a functional patent system. It is incomparable to any period from 1790 to 2006.

    Amicus may help, but I suspect many of the Federal Circuit judges believe as Greg does — that patents are privileges for corporations and lawyers, not for inventors and innovation.

  12. Curious November 24, 2021 12:59 pm

    It has never been better.
    It was better 15-20 years ago. I witnessed an inventor, who pro se drafted/prosecuted much of his own patents, earn millions in licensing fees. Today, that inventor’s patents would have been destroyed at the PTAB or the Federal Circuit.

    There was time when the Federal Circuit would issue precedential opinions about 103 and damages. We don’t even get that far anymore. Patents are efficiently killed well before a district court encounters those issues.

    Today’s Federal Circuit lays traps for the unwary everywhere. There was a time when the Federal Circuit would construe a patent with an eye towards validity. Today, the Federal Circuit bends over backwards to invalidate patents. Anybody who thinks that this is the golden era of US patent system needs to keep away from their liquor cabinet at least until after lunch is over.

  13. Curious November 24, 2021 1:24 pm

    I would add that inventors need better advocates. Too many attorneys have a conflict of interest in preserving the status quo. PTAB practice is easy money. Infringer retainers put food on the table. Challenging precedential decisions or PTAB practice makes people not like you. Proving up an injunction is hard. It’s much easier to put your head down and do what everyone else is doing – which is losing.
    This is BS. If anybody was consistently winning at the PTAB or the Federal Circuit, inventors would be flocking to him/her/them. The fact of the matter is that nearly everybody is losing. The most sophisticated and hardcore advocates still get their butts regularly handed to them by the Federal Circuit. This isn’t because they have a conflict of interest or are afraid to piss off a judge. They lose because majorities exists in the 12 Federal Circuit judges and 9 Supreme Court justices who have led to the US patent system being royally screwed.

    I understand that inventors like when their attorneys employ some kind of ‘burnt earth’ strategy. However, I have never seen making people not like you achieve something positive. Judges, whether it is at the PTAB, the district court, Federal Circuit, or wherever, do not like to be lectured at and/or disrespected. You may draw some satisfaction from having your attorney make those kind of arguments, but it isn’t going to save your case.

    As a practical matter, whether I get more (or less) work from my clients is based upon the success that I achieve for my clients. If I’m successful, and I get more patents, then I’ll get more patent applications. If I’m less successful and my clients have to pay more prosecution costs, then I’ll get less patent applications. As someone who represents inventors/patent owners, the more successful my clients, the more successful I will be. There is no conflict of interest.

    I am never sad when I receive a Notice of Allowance — despite knowing that this is going to be the end of a particular stream of revenue. I did my job, and my client got their patent, which makes me happy. If the client likes what I did, maybe they’ll give me more, in which case my revenue stream comes back. If not, I still did my job, which is what I got paid to do.

    As for “PTAB practice is easy money,” I disagree. If my client wins at the district court, they’ll get paid, which means it is far more likely that I’ll get paid. However, if my client wins (or loses) at the PTAB, they don’t get paid. As such, I have to hope that they have some extra cash floating around to support my billings.

  14. Jonathan R Stroud November 24, 2021 2:14 pm

    This post ignores reality. More amicus briefs are filed in patents than in any other area of the law. Ask a Supreme Court clerk or have a Federal Circuit clerk compare notes with any other circuit. We file stacks of amicus briefs in this area. More patents are issuing than ever before, with more litigations, transactions, financing, and larger judgments than ever before. Studies confirm the value of US patent assets in total is higher today and far outpaced economic growth. I find it hard to take these narratives that the system is somehow in crisis seriously when it’s never been a more profitable system for those asserting, selling, and licensing in it.

  15. Greg DeLassus November 24, 2021 3:18 pm

    The patent system was never flawless, but from 1790 to 2006 we had progress by — more often than not — securing to inventors the exclusive right to their discoveries. Today — post eBay, Alice, and AIA — that is virtually impossible.

    I agree that eBay, Alice, & the AIA make it very hard for inventors to realize value from patents, but this is how it has been for most of the history of the U.S. patent system. The Wikipedia entry on Eli Whitney correctly explains that “Whitney applied for the patent for his cotton gin on October 28, 1793, and received the patent… on March 14, 1794, but… patent infringement lawsuits consumed the profits… and their cotton gin company went out of business in 1797.” That story is fairly typical. The U.S. patent system has long run like a sort of lottery, where a few inventors get very rich and most lose their shirts acquiring and enforcing their patents. Thankfully (if somewhat paradoxically) this scheme is still attractive enough to have incentivize the enormous tech progress that we witnessed across the XX century and which we continue to witness today.

  16. Pro Say November 24, 2021 5:56 pm

    B: “We could sure use another 5-6 CAFC judges with the intellect of Rader.”

    If only.

    Sure do miss him.

  17. B November 24, 2021 7:32 pm

    @ Greg “And yet, all during that reign on unrelenting invalidation, U.S. industry and innovation flourished just as unrelentingly.”

    Did it occur to you that business in the U.S. flourished in the late 1940s not because the Supreme Court was killing innovation, but because the U.S. and Canada were about the only industrialized Western democracies that hadn’t been bombed into the stone age by 1946 and everyone in Europe needed new stuff to replace the bombed-out stuff?

    @ Josh “I suspect many of the Federal Circuit judges believe as Greg does — that patents are privileges for corporations and lawyers, not for inventors and innovation.”

    Silicon Valley just nominated Judge Taranto Man of the Year

    @ Curious “The most sophisticated and hardcore advocates still get their butts regularly handed to them by the Federal Circuit. This isn’t because they have a conflict of interest or are afraid to piss off a judge.

    Just FYI, I’ve talked to a few attorney in big firms doing some of my research. It’s all about dealing with conflicts of interest and losing potential clients. Also, they’re totally chicken-s*** about pissing off the judges. It’s a firm reputation thing.

    “They lose because majorities exists in the 12 Federal Circuit judges and 9 Supreme Court justices who have led to the US patent system being royally screwed.”

    Absolutely. the courts misbehave and the best attorneys lose even in cases that could not be lost in theory. Why? New theories arise and/or the evidentiary record gets distorted by some dark legerdemain.

  18. concerned November 25, 2021 4:19 am

    Greg DeLassus: “Nothing about our patent system needs to be “saved.”

    Then save us from the people who freely toss evidence when convenient, add words to law and refuse to define said words, cherry pick lower court decisions over SCOTUS case law, etc.
    You are an attorney and somehow you condone this kind of behavior in a legal setting?

    I bet there is not one patent in the history of this country that I could not destroy if I was allow to cart blanche add words to law, make up the meaning of those words as I go, toss evidence as I please, pick any court whatever ruling I choose regardless how contradictory, etc.

    I understand PTAB destroys patents 87% of the time. I could destroy patents 100%, even you the ones you prosecute.

    Just hope these people do not turn on you.

  19. Moderate Centrist Independent November 27, 2021 4:55 pm

    The ex parte appeals that make it to the Federal Circuit are likely those that lost at the PTAB. We need more sharing of successful PTAB appeals to avoid having to go to the Federal Circuit.

  20. concerned November 29, 2021 7:15 am

    Curious @13: “Judges, whether it is at the PTAB, the district court, Federal Circuit, or wherever, do not like to be lectured at and/or disrespected. You may draw some satisfaction from having your attorney make those kind of arguments, but it isn’t going to save your case.”

    Probably true. When they show me disrespect with statements that are the equivalent to my applicant is rejected because Thanksgiving is really on the first Wednesday in April, then I will stand up to them with calendars from every manufacture of calendars. I did the same level evidence from every end user of my process proving their statements were not true.

    I may lose now. This ship will eventually righten and I may no longer be in the patent environment. I will get the satisfaction that I stood up to the bullies.

  21. Greg DeLassus November 29, 2021 10:39 am

    [B]usiness in the U.S. flourished in the late 1940s not because the Supreme Court was killing innovation, but because the U.S. and Canada were about the only industrialized Western democracies that hadn’t been bombed… and everyone in Europe needed new stuff…

    A few brief thoughts in response:

    (1) I certainly do not contend that the U.S. flourished because our courts were hostile to patents. I merely point out that—objectively speaking—our courts today are no more hostile to patents than they were through most of the XIX & XX century, during which periods American innovators did some excellent, world-changing work.

    (2) Henry Ford, Thomas Edison, Eli Whitney, Nicola Tesla, the Wright brothers, & the Dodge brothers all did their inventing under a patent-law regime as hostile as ours today, and all well before a single bomb had dropped on any western European city. I am not convinced that your WWII explanation holds all that much explanatory power. The U.S. had already overtaken Europe in economic size and industrial capacity by 1890, well before either of the world wars.

    (3) What is your point? Do you mean to say that patent law is irrelevant to global economic progress, and that the real trick to economic advancement is to bomb your competitors? How does your observation (even setting aside counterpoints #1 & #2 above) help establish a thesis that you wish to advance?

  22. Greg DeLassus November 29, 2021 11:34 am

    Just hope these people do not turn on you.

    I do not matter in the patent system, and there is no reason why anyone should worry about the system “turning on” me. The point of a patent system is to encourage tech innovation. The point of the patent system is definitely not to provide lucrative employment to patent attorneys like myself. If we are seeing tech innovation, then the system is working fine.

  23. Anon November 29, 2021 12:13 pm

    Greg’s counterpoint (1) above simply misses a distinction of “in spite of” versus “system that promotes.”

    His type of ‘meh, we advanced anyway” is more than a little of adding to the problem of an anti-patent court system.

    His DK Peak of Mount Stupid reigns supreme and he appears intent on excusing anti-patent sentiment.

    The point is not correct in viewing “well, we still see innovation advancing, so everything must be ok.”

    I can only fathom that this type of Alfred E. Newman mindset is a result of Greg’s Big Pharma background.

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