Patently-O Bits and Bytes by Juvan Bonni

Bits and Bytes, Patent

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Hide comments

51 thoughts on “Patently-O Bits and Bytes by Juvan Bonni”

  1. 9

    Biden was asked who he was going to appoint as the Director of the USPTO and he answered that it was chocolate with swirls of vanilla and continued to lick his ice cream cone.

      1. 8.1.1

        I’d like to know Lee net worth now. I wonder if SV has managed to push $10 million her way in return for her service.

  3. 7

    Greg’s selective memory mischaracterizes the Lee regime.

    There were issues both coming in and going out.

    See
    Overall: link to patentlyo.com

    Coming in:
    link to patentlyo.com (similar ‘acting as’ – but not “Acting”)

    link to patentlyo.com (rough start – rather dusty)

    Going out:

    At Jan 19, 2017: link to patentlyo.com
    At Jan 26, 2017: link to patentlyo.com
    Finally a bit of clarification of the ‘transition’ at Mar 10, 2017 (it only took a FoIA letter): link to patentlyo.com

    And at last: link to patentlyo.com

    at least last until this: link to patentlyo.com

    That’s quite a few links – may need to post in portions…

  4. 6

    Anyone know the history of the rumor (see link below) that Pres. Biden is planning to appoint Marcus Delgado as the next USPTO Director? Specifically I am trying to figure out where/when this rumor originated.

    link to mobile.twitter.com

  5. 5

    Is PAIR working for anyone else? For the last half hour, no matter what serial number I enter, it tells me “not yet available for public inspection,” even though these are all serial numbers that I have checked before.

  6. 4

    Matthew Bultman: Patent Office Policies Drive Interest in Old Litigation Playbook (Source: Bloomberg Law)

    At least he is honest enough to dispense with the BS – inexpensive alternative to litigation. Ex parte reexamination needs to adopt the doctrine of administrative estoppel to function in harmony with the courts — as was the original intention of the statute. Now it just post verdict harassment, and undermines the principal of finality to judgments of the judicial branch.

  7. 3

    As to Prof. Snow’s article…

    Logic fault: “Inventors would accordingly choose not to disclose knowledge about those inventions to the public, and the denial would chill their speech.”

    The error is in that the CHOICE of disclosure remains fully open to the inventor.

    This error reflects a lack of appreciation of how the patent system actually works, and how the patent system is set up to work. The nature of an inchoate right and how that right is transformed into a bona fide property right should be understood by an academic writing on IP law.

    Perhaps Prof. Snow should focus on the basics…

    Turning towards copyright, yet another (this time at least double logic fault):

    “ A copyright bar to statues of the Confederacy, for instance, would deter artists from speaking such content.”

    A copyright has never been permitted for actual statutes (even for the Confederacy). There has never been a deterrence of artists for any statute.

    Period.

    The only thing this article smacks of is an attempt to induce the world of IP to start admitting Woke principles.

    So let’s see Prof. Snow’s experience in real world innovation or heck, simple engineering:

    (from his CV at link to sc.edu ):

    Harvard Law School Juris Doctor

    Brigham Young University Bachelor of Arts, summa cum laude (Philosophy and Economics)

    And an apparent bare minimum in practice of law:

    Associate, Baker Botts L.L.P., Dallas, Texas, 2004-2006.

    Summer Associate, Jenner & Block, Chicago, Illinois, Summer 2002 & Summer 2001.

    Summer Associate, Cadwalader, Wickersham & Taft, Washington, D.C., Summer 2002.

    So, two summer associate gigs (split summer?) – no year on his Harvard Law degree, but a two year gap between the associate gigs and start as an associate at Baked Botts. Location in Texas indicated possible “patent litigation” as his only exposure, and for the past 15 years, drenched in Academia…

    Academia: check yourself, the stench of rot is unmistakable.

    1. 3.1

      When they starting conflating ‘freedom of speech’ with IP law – you know something very uninformed – and probably dead wrong – will follow. A copyright bar to statues in the Confederacy. LOL. But what about the copyright bar to the Napoleonic Code?

      How about the inchoate right – I have a book idea. Great! Write the book and you have yourself a protected work. Under copyright.

  8. 2

    The “Apple Might Leave the U.K.” article is just weird.

    The… UK Supreme Court said that any decision it made on the amount the iPhone maker must pay would apply worldwide, not just to its UK sales.”

    How can the U.K. award damages on sales outside the U.K.? In what sense do ex-UK sales infringe a UK patent? Weird.

    Apple’s lawyer Marie Demetriou replied… ‘Apple’s… should… be able to reflect on the terms and decide whether commercially it is right to accept them or to leave the UK market. There may be terms that are set by the court which are just commercially unacceptable.’

    Well, yes, if Apple’s $7Bn judgment makes it unprofitable to continue doing business in the U.K., then it would only make good commercial sense for Apple to cut loose from that market. I wonder what profits Apple makes in the U.K. most years?

    The… case… highlight[s] the need for global patent reform to end the process of companies acquiring either standards-based or overly broad patents with the sole aim of extorting money from tech companies.

    Global patent reform? You might as well say we need global agreement on pizza toppings. This is not going to happen.

    1. 2.1

      >Well, yes, if Apple’s $7Bn judgment makes it unprofitable to continue
      >doing business in the U.K., then it would only make good commercial
      >sense for Apple to cut loose from that market. I wonder what profits
      >Apple makes in the U.K. most years?

      People in the U.K. tend to have an inflated sense of their own importance in economic terms; they’d probably be surprised to learn that Apple’s annual sales in the U.K. stands at around $1.8 billion, which amounts to well under 1% of Apple’s total global revenue. And that’s just revenue, you figure 38% of that is profit based on historical stated global profit margins (although Apple’s margins may be lower in the U.K. than other countries). So a judgment of $7B could potentially wipe out all future profits in the U.K. for the better part of the next decade, from a judgment in a single case. But I suspect the article is right, it’s unlikely a Apple would actually withdraw from the U.K., even if such a judgment became a reality.

      1. 2.1.1

        Interesting about Apple leaving. Weird that international companies have this much power now.

        The blow to the UK would be much harder than it would be to Apple. Of course, if lots of countries kicked Apple out, then a competitor could fill the void. But as it is now it is better for the UK to have Apple than not.

    2. 2.2

      >>The… case… highlight[s] the need for global patent reform to end the process of companies acquiring either standards-based or overly broad patents with the sole aim of extorting money from tech companies.

      Competition. The other companies can defeat this type of behavior by putting more money and effort into writing and developing the standards.

      I work on standards work for one company and we are almost always ahead of everyone else. The tech team is top notch and the patent team is top notch. I get standard essential patents allowed all the time and write claim charts.

      1. 2.2.1

        I also note that Greg has no experience in this area and his science background is not in CS/EE.

      2. 2.2.2

        Plus Greg’s argument amounts to, this patent system sets up an incentive to invent and to get ahead of other companies.

        Guess what? Jimmy Carter set up the CAFC to end the malaise of our large corporations. And Greg wants that malaise back.

        1. 2.2.2.1

          Sorry for the confusion of my poorly executed HTML tags, NW. The bit you quote from my post is not my argument. Rather, it is the argument that I quote from the article. I agree with you that this argument is nuts.

    3. 2.3

      “overly broad patents”

      “Overly broad” patents, meet your 102, 103, and 112 executioners.

      102, 103, and 112 executioners, meet “overly broad” patents.

      Nuff said.

  9. 1

    Abby Rives says “. A high-quality patent can help to establish a place in the market, prevent direct copying, attract investors, and create confidence for business partners.”

    This is not correct. High quality patents, like mine and many other entrepreneurs, do not work. The PTAB in particular is invalidating way too many thoroughly examined and lawfully granted patents for significant inventions. Just a few of these stories are highlighted at usinventor.org/inventors

    Engine seems to be very one sided and out of touch with the reality for startups.

    Even applauding the benefits of recent changes to the patent system rings hollow, because startups are still at great risk of liability and litigation for patent infringement. The changes have almost exclusively benefited large incumbent corporations, with little to nothing for small businesses.

    It is disingenuous and causes entrepreneurs to question Engine’s motives and interests when they constantly focus on patent “trolls” and patent “quality” while ignoring patent “reliability”. Why not both?

      1. 1.1.1

        No, we had to beat the big incumbent commercially despite rampant infringement, had to raise and deploy $20M in litigation (6 different firms and 30 different attorneys), and organize a PR campaign to replace the Google USPTO Director.

        And other tactics which I will only share privately.

        The PTAB backed down after the patent burning, and reassigned the lead judge on my case.

        That’s not working. And it certainly isn’t reproducible.

        Are you disingenuous also, or do you seriously think that my patents “worked just fine for their intended purpose”? More importantly, on the substantce of my comment, do you think they work for entrepreneurs?

        2. 1.1.1.2

          “More importantly, on the substance of my comment, do you think they work for entrepreneurs?”

          No. They. Do. Not.

          And for anyone who hasn’t already read Paul Morinville’s superb piece on why the SCOTUS Arthrex fix is no fix at all:

          link to iam-media.com

        3. 1.1.1.3

          You imply here that political/lobbying pressure is what carried the day in front of PTAB.

          Have you written about this in depth? Such an allegation troubles me more than most of your other comments. I wonder if others might feel the same.

          1. 1.1.1.3.1

            Why would you take this bit seriously? M. Lee did not leave under mysterious circumstances. She submitted her resignation at the usual time in a political appointee’s term of service, but was then allowed to stay on in office until a replacement was named. The replacement was named about two months later (not earlier) than PTO Directors are usually appointed in new administrations, but given the notorious tardiness of Trump administration this was pretty much a normal schedule.

            In other words, nothing about either the timing or the process was indicative of unusual pressure being brought to bear. Malone’s claim here is transparently empty boasting.

            1. 1.1.1.3.1.1

              “Malone’s claim here is transparently empty boasting.”

              It looks like that to me as well, but I think a story of “I put lobbying pressure on the PTO and got my PTAB judge changed” has a wider potential audience than Josh’s standard arguments.

              “given the notorious tardiness of Trump administration this was pretty much a normal schedule.”

              Not to defend the cheeto, but perhaps that was merely the new normal. August 26, 2021 is nearly upon us.

              1. 1.1.1.3.1.1.1

                Not to defend the cheeto, but perhaps that was merely the new normal. August 26, 2021 is nearly upon us.

                Ha! A fair point, that.

            2. 1.1.1.3.1.2

              “M. Lee did not leave under mysterious circumstances.”

              Greg is clearly wrong — and not only did she leave oddly, she came in under a heavy cloud as well.

          2. 1.1.1.3.2

            Under the AIA, Patents are 100% political. Even Justice Thomas pointed out that patents are privileges from the government. Like “the right operate a toll bridge”, they require lobbying and political pressure. I’m glad to hear you find that troubling.

            1. 1.1.1.3.2.1

              Not only does Greg not find that troubling, his mindset is that THAT is exactly how it is supposed to be.

            2. 1.1.1.3.2.2

              The TPAB is a star chamber. How could it NOT be 100% political.

              “He has made Judges dependent on his Will alone for the tenure of their offices, and the amount and payment of their salaries.” <<— That's the PTAB

              "For depriving us in many cases, of the benefit of Trial by Jury." <<– That is what the PTAB does.

          3. 1.1.1.3.3

            If the rooster tells you that his crowing causes the sun to rise, do you feel anxious at the thought that all life on earth depends on one bird’s larynx? I know that I do not feel much anxiety about such obvious nonsense.

        4. 1.1.1.4

          No, we had to… raise and deploy $20M in litigation (6 different firms and 30 different attorneys)…

          Right. That is how patents work. That is how they are supposed to work. Patents are legal documents, enforced by litigation (with corresponding legal expenses) in the legal system. Anyone who expects litigation to be cheap or simple has misunderstood what they are getting when they apply for a patent.

          [W]e had to beat the big incumbent commercially despite rampant infringement…

          Once again, that is how it is supposed to work. The patent is there (subject to the points noted above) to create an obstacle to the infringement, but you still have to compete commercially in order to realize value. Patents are not prizes awarded for genius. They are merely business tools that can be deployed in business circumstances to serve business purposes. They do not excuse the holder from the lived reality of competition in a commercial marketplace.

          Are you disingenuous also, or do you seriously think that… they work for entrepreneurs?

          They work about as well for entrepreneurs as can be hoped in a world run by human beings. To the extent that entrepreneurs expect patents to work otherwise, it is all for the best if the word gets out (as I know you are trying to get it out) among entrepreneurs about how patents really work. Much misery would be avoided if people had a more realistic expectation ex ante.

            1. 1.1.1.4.1.1

              I think that while Greg has a point — that expectations should reflect reality; he rather badly misses the point that we (the good guys) want a Strong innovation protection system and that the maladies that Greg would merely shrug his shoulders at are indicative of failings of NOT having such a strong system.

              Greg’s ‘Big Pharma Shill’ viewpoint comes screaming through in his being ‘ok’ with patents being a Game of Kings (as opposed to being an enabler of disruptive innovation in which competition is NOT based on the non-innovative features of an established entity).

        6. 1.1.1.6

          “despite rampant infringement, had to raise and deploy $20M in litigation (6 different firms and 30 different attorneys)”

          Serious, sincere question: How much do you think it should have cost you to enforce your patents?

          1. 1.1.1.6.1

            Zero. If we had a remotely functional patent system no one would be stupid enough to steal tens of millions of dollars worth of intellectual property relaying on nothing more than a vexatious legal strategy to avoid liability.

            I had the strongest case of infringement (slavish copying of the claimed and commercialized inventions) and strongest case of non-obviousness (no advancement in the field for 63 years) that you will ever see.

            Yet, it was still a good business strategy for the infringer to litigate, because it works 999 out of 1,000 times.

            Now if it were a close case, it should cost about $2-3M at most and take 18 months at most, and the appeal should be upheld at least 80% of the time.

            1. 1.1.1.6.1.1

              Upon further consideration, it should cost $500K at most. That is a 3-6 full months of partner level and/or expert attention.

              1. 1.1.1.6.1.1.1

                I think you’re expecting a level of certainty that you absolutely did not pay for at the PTO. But thanks for the clear answers.

            3. 1.1.1.6.1.3

              [T]he appeal should be upheld at least 80% of the time.

              You will no doubt be gratified to hear that reversals and vacated judgments have long accounted for <80% if CAFC dispositions, whether in appeals from district courts or the USPTO.

              link to patentlyo.com

            4. 1.1.1.6.1.4

              Hmmm,

              Isn’t there a more “direct” ramification inherent in Greg’s own narratives?

              Rather than, “Zero. If we had a remotely functional patent system no one would be stupid enough to steal tens of millions of dollars worth of intellectual property relaying on nothing more than a vexatious legal strategy to avoid liability.”

              Why don’t we look to Franchise basics and seek an enforcement indemnification from the FranchisOR to the FranchisEE of this Public Franchise thing called Patents?

              Is it not only fair that if there is to be NO Quiet Title, and that (per the Supreme Court in Oil States) the Executive Branch’s Administrative State Agency should “keep their fingers on the fully vested property,” that they should PAY a bit for that privilege?

    2. 1.2

      “It is disingenuous and causes entrepreneurs to question Engine’s motives and interests when they constantly focus on patent “trolls” and patent “quality” while ignoring patent “reliability”. Why not both?”

      Quality before enforceability makes some sense. We don’t want bad patents to be “reliable”, right? Naturally, the bar for “quality” and “bad patent” is arguable.

      1. 1.2.1

        Ben – do your* Fn job and the quality should be there.

        ANY discussion of “quality” should be clearly discussing examination quality.

        *(The Royal Your, of course)

    3. 1.3

      The Rivers article needs a serious disclaimer.

      As to “Engine”….

      “Engine seems to be very one sided and out of touch with the reality for startups.

      … The changes have almost exclusively benefited large incumbent corporations, with little to nothing for small businesses.

      It is disingenuous and causes entrepreneurs to question Engine’s motives and interests when they constantly focus on patent “trolls” and patent “quality” while ignoring patent “reliability”.”

      A quick Google reveals what is suspect from the Efficient Infringer fingerprints of their message:

      link to theintercept.com

      Their own website is markedly absent of any information about who they are or how they are funded.

      Yet another wolf in sheepskin.

Comments are closed.