Posts in IPWatchdog Articles

In truth, the dissent of Justice Breyer is extraordinarily short-sighted. As is the case with many inventions that are foundationally important, many judges seem extremely willing to find such pioneering inventions invalid for one reason or another. Indeed, Justice Breyer even glowingly referred to the Supreme Court’s decision in Gottschalk v. Benson, the Supreme Court case that originally prevented the patenting of software. Today, the ruling in Gottschalk universally believed to be wrong, yet to some it still seems to remain the seminal case showing that pioneering inventions should not be patented.

Earlier today the United States Supreme Court granted certiorari in Mayo Collaborative Services v. Prometheus Laboratories, Inc., which sets up another foray into the patent eligible subject matter waters for the Supreme Court in the October 2011 term. This appeal by Mayo will challenge the December 17, 2010 decision of the United States Court of Appeals for the Federal Circuit, one of the first patentable subject matter cases for the Federal Circuit in the wake of the Supreme Court’s decision in Bilski v. Kappos. In fact, this case was returned from the Supreme Court to the Federal Circuit for further consideration in light of the Supreme Court ruling in Bilski v. Kappos.

The reality is that from 1790 to 1836 patents were given to the first to file. Between 1836 and 1870 a panel of arbitrators would decide disputes between conflicting patents and patent applications, but were not required to grant the patent to the first and true inventor. Moreover, even with the passage of the Patent Act of 1870, the first act that specifically and unambiguously gives the Patent Office the authority to grant a patent to one who is not the first to file, the power to grant to the first to invent is conditional, not mandatory. This permissive language persists through the Patent Act of 1939, and ultimately into the regime we have today, which was ushered in by the 1952 Patent Act.

Apple doesn’t have to worry about being an infringer under the copyright laws of the United States even if someone uses an Apple device to make an unauthorized recording or capture unauthorized images. That is because there are so-called substantial non-infinging uses capable for the iPhone, for example. So why then would Apple pursue disabling technology and put the keys to your iPhone in the hands of a third party who can disable certain functionality at will without your permission? That is a good question indeed.

Our biggest problems (apart from judicial salaries and the consequent effect on morale and tenure of judges) are judicial vacancies and the politicization of the confirmation process. There has not been an omnibus judge bill for years; the Administrative Office has requested Congress to establish 88 new judgeships based on workload statistics. A bipartisan group of senators has introduced the Emergency Relief Act of 2011 (S.1014) to address some of the greatest judgeship needs. It provides for 10 additional judgeships in California, Texas, and Arizona, and would make permanent two additional temporary judgeships but, as of May 23, 2011, there were 86 vacancies; of 53 pending nominations, 40 are pending in Committee; only 13 are pending on the Senate floor. While there has been some welcome movement on confirmation votes recently, especially for the district courts, there are still 33 judicial emergencies. I am grateful to Denise Cardman of the ABA Washington office for following this situation so competently and providing me with these statistics.

The magnitude of the problems facing our economy cannot be overstated. Neither can it be overstated that a coherent national innovation policy is the answer to what ails the U.S. economy. As Hank explains in the Introduction, “for the first time in our history, the connection between technological innovation and job creation has broken down. And for the first time also, the wealth created by innovation is going mostly just to a handful of founders and venture capitalists rather than to many thousands of employees, not to mention the community at large.” Through mismanagement and misapplication of tax, immigration and patent policies our leaders in Washington, D.C. have done us no favors. Speaking at the reception last night Nothhaft explained: “We live in the greatest country in the world and we seem bent on tying our arms behind our backs.” That has to change.

Indeed, more then 80 percent of most companies net value consists of intangible assets such as intellectual property. There is an increasing need to protect these assets in order to mitigate risk and avoid litigation. Even the most powerful companies in the world have a need for protection of their IP portfolios. In order to help defend themselves against patent litigation, Google put in a bid of $900 million for the patent portfolio of Nortel Networks which includes over 6,000 patents.

The man who secretes his invention makes easier and plainer the path of no one. He contributes nothing to the public. Over and over has it been repeated that the object of the patent system is, through protection, to stimulate inventions, and inventors ought to understand that this is for the public good. Where an invention is made and hidden away, it might as well never have been made at all,–at least so far as the public is concerned. The law owes nothing to such an inventor, and to permit him to lie in wait, so to speak, for one who, independently and in good faith, proceeds to make and disclose to the public the same invention, would be both unjust and against the policy of the patent laws. In the eyes of the law he is not the prior inventor.

Simply stated, the overwhelming evidence suggests that the United States Supreme Court, the Federal Circuit and even early political and judicial leaders of the United States all envisioned the truth that one can legitimately be called an inventor even though they are not the first to invent. Unlike the many arguing in this debate I will actually prove this if you keep reading, which actual citation to cases and statutes. You see, when truth is on your side it is easy to come up with support for your argument. Sadly, those who want to challenge truth don’t provide citation to cases, they simply think that the passion of their beliefs ought to be enough to will their erroneous statements accurate.

Finally, we believe that in the interest of fairness a word about the person who has his name attached to this case – Dr. Mark Holodniy—is required. Rather than being a rogue inventor, or a naïve academic wandering around signing invention rights away, another portrait emerges from this case. Dr. Holodniy did exactly what he was asked to do by his employer through instructions from his superior. He dutifully signed an agreement giving Stanford rights to his inventions, and agreed to go to Cetus as he was requested to do. At Cetus he complied with their policies.

Given that House Republicans seem to fear an adequately funded Patent Office I got to thinking — What could they be afraid of? With that in mind, here are the top 10 things that House Republicans must be afraid of as they seek to oppose an adequately funded Patent Office. Can you hear the black helicopter squad swirling overhead, conspiracy theories in hand?

A representation relationship is just that, a relationship. Who you work with is an important decision and patent attorneys operate differently. At the end of the day what you should be looking for is someone who is competent and who you connect with on some level. In my opinion, when representation is most successful there is a good working relationship between the attorney and inventor, and that requires a certain comfort level and familiarity. Try and work with someone in a symbiotic way. No matter how good the inventor, the invention or the patent attorney, an “oil and water” characteristic to the relationship cannot result in the best work product or the most beneficial ultimate outcome.

icrosoft wanted to see that changed, with prior art not considered by the Patent Office requiring a lower evidentiary threshold to invalidate. To rule in Microsoft’s favor would have required the Supreme Court to throw away 30 years of well-settled Federal Circuit law, as well as overruling Supreme Court precedent in effect since at least 1934, but which traces back in some form from that date a further 100 years. That was a bridge too far for the Supreme Court, who ruled today 9-0 (with concurring opinions but no dissents) that in order to invalidate patent claims 35 U.S.C. 282 requires clear and convincing evidence regardless of whether the prior art was known by the Patent Office during prosecution of the patent application.

Despite the fact that Congressmen Ryan and Rogers would like this to be about the Obama Administration, the fact is that Senator Tom Coburn (R-OK) is the one who championed the amendment in the Senate that would give the Patent Office the ability to keep the fees it collects. Senator Coburn is known as “Senator No” for his staunch fiscally conservative stance on virtually all issues. So if you are willing to let facts influence your viewpoint there is absolutely no way that Patent Office funding within proposed patent reform can be an issue upon which Republicans can beat up Democrats. It was a leading fiscally conservative Republican in the Senate who brought the USPTO funding issue out of obscurity and to the top of the agenda.