What is a troll patent and why are they bad?

By TJ Chiang (Professor at George Mason Law School). Professor Chiang wrote the following squib after reading yet another article complaining about patent trolls.

There is much debate and controversy over the term "patent troll." Let me suggest a fairly narrow definition, but one that identifies a category of patents with distinct problems. Moreover, let me suggest that we should talk about individual patents as "troll patents," rather than entire entities as patent trolls. A troll patent is one that:

1. Is owned by someone that does not practice the invention.
2. Is infringed by, and asserted against, non-copiers exclusively or almost exclusively. By copying I mean any kind of derivation, not just slavish replication.
3. Has no licensees practicing the particular patented invention except for defendants in (2) who took licenses as settlement.
4. Is asserted against a large industry that is, based on (2), composed of non-copiers.

The problem with a patent troll—or, more accurately, the particular troll patent—that fits all four conditions above is that the troll patent does only two things. First, it gathers dust in the patent office. Second, it inflates prices on products. The patent itself contributes nothing useful to society, in so far as the people who actually make anything useful would have done it equally in the absence of the patent.

These four conditions also rule out a few non-practicing entities; or, rather, many of the patents held by these entities. University-held patents are largely not troll patents, in so far as they are often on substantial advances where the infringers copy. Individual inventors are also not always trolls. An individual inventor that licenses others to commercialize the invention is not a troll; nor where the inventor actually has something significant that gets pirated. But a patent owner who sits in wait to ambush an industry later, with a patent that does nothing otherwise except gather dust, is a troll.

One hypothetical that will surely be thrown at me is the individual inventor who tries to commercialize the invention, but fails, and then sues the industry years later. This inventor is a visionary ahead of his time who was merely unlucky. On the other hand, this inventor still contributed nothing useful to society. It is worth emphasizing the fact that, by my hypothetical, the industry produced the same technology independently, without copying anything from the patent. In the absence of copying by someone else or the commercialization of the product through the patent, I do not see the inventor as having done society much of a favor.

Comments

[Just an ordinary inventor(TM)]

I'll have to think about that??

[Dennis Crouch]

TJ, Thank you for this post. However, I think that you miss a few issues.

Patents are necessarily considered in a dynamic marketplace - patents involve new products and methods and only become valuable when the old ways are displaced by a shifting market.

It is important to consider the incentive role of patents. The point of protecting patents today is to provide an incentive for future developments. By cutting out classes of inventions that could be protected, you may well be cutting the incentive for beneficial innovations.

In most areas of business, patents are not necessary for a successful new product launch. The first entrant will have a strong market position, and trademark-type rights may be sufficient to retain the position. In those markets, I like to think of patent rights as something more like insurance. Patents are a way for the innovation to pay-off when the patentee is unable to lead in the marketplace. This insurance helps provide the incentive to innovate in the first place.

You implied that secret innovation that failed in the marketplace is worthless. I would challenge that notion, and will write more about why in a future post. One idea to consider here is the currently popular notion of Edison's multiple failures leading to eventual success.

Finally, the troll label places the blame on the patent holder for not informing the world of the patent rights. Of course, information flow requires two parties, and both the speaker and listener must be active. Your troll patents may only be hidden because no one has looked for them or because they were ignored.

[Just an ordinary inventor(TM)]

In a world of growing unemployment, isn’t keeping patent professionals, including all those at the patent office, gainfully employed, worthwhile in and of itself?

So what if not all patents “promote the Progress of Science.” Even those patents provide gainful employment. So do cigarette factories. Which does society more harm?

If companies like international pirate companies like Google, Cisco and others in the abomination called Coalition for Patent Fairness don’t like independent innovation to threaten them, let them managed the patent landscape as IBM has done for many decades – beat the independent inventors to the punch, invent all kinds of stuff before independent inventors do. Now that approach promotes “the Progress of Science.”

I say, get a life, live and let live.

[me]

Folks like this seem to miss that patents have been around since the Greek city states to promote innovation - and their is a huge weight on the other side of the scale as patents protect actual products and actual jobs. There are not many patent trolls, patents are hard to assert and win, and a few trolls are the cost to the system of protecting the gigantic R and D investments in this country.

Let's not throw the baby out with the bathwater - the Leahy bill's damages provision will hasten this downturn, hurt this country, and cost real jobs. Is it worth that to get rid of a few trolls?

[Just an ordinary inventor(TM)]

Dear Professor Crouch,

Re: “Your troll patents may only be hidden because no one has looked for them or because they were ignored.”

How true. I’ll add to your insightful comment if I may.

From a professional independent inventor’s view, a big problem is international corporate arrogance. Not that I have specific experience with Google or Cisco, by companies such as those in the Coalition for Patent Fairness routinely tell inventors whose patents they are infringing, when they are offered a reasonable license, to:

“pss off, we don’t need no dam license from you, you are too little to sue us, and if you do sue, we can out litigate you till you drop dead – cause nobody likes independent inventors anymore – haven’t you been listening to our incessant successful ‘troll propaganda lobbying ’ for years?”

["Strawman, calling Mr. Strawman. Is Mr. Strawman in the house?"]

"The patent itself contributes nothing useful to society, in so far as the people who actually make anything useful would have done it equally in the absence of the patent."

Makes your analysis SO MUCH EASIER when you assume that somebody else would have come up with the idea.

If somebody else "would have done it equally in the absence of the patent," why should we grant a patent in the first place?

The original bargain is the person who publicly discloses the idea obtains the patent, not the person who practices the idea obtains the patent.

In some industries, it is just impractical for anybody other than the current market entrants to practice the invention. Should economic barriers to entry preclude obtaining a patent in that particular industry?

"But a patent owner who sits in wait to ambush an industry later, with a patent that does nothing otherwise except gather dust, is a troll."
I find it hard to believe that anybody can be 'ambushed' when the patent is issued, it is available for anybody to find it. Any prudent manufacturer should investigate whether their new product infringes any patents – including those held by the "good trolls" or practicing entities. As such, if anybody is ambushed, it is their own fault.

"This inventor is a visionary ahead of his time who was merely unlucky. On the other hand, this inventor still contributed nothing useful to society."
So says you. Many people would vehemently disagree. If I found the key that unlocked commercially viable fusion power, but I didn't have the 10 billion needed to commercialize it, I would still expect the Nobel prize in physics to come my way. In such a situation, I think I would have contributed something useful to society.

[me]

Think about this smart professor - think of all those patents protecting all those research jobs and all those new products. Let's get our heads out of academia and really think about the implications of misguided, and small minded posts such as this:

"In the U.S., a typical ratio of research and development for an industrial company is about 3.5% of revenues. A high technology company such as a computer manufacturer might spend 7%. Although Allergan (a biotech company) tops the spending table 43.4% investment, anything over 15% is remarkable and usually gains a reputation for being a high technology company. Companies in this category include pharmaceutical companies such as Merck & Co. (14.1%) or Novartis (15.1%), and engineering companies like Ericsson (24.9%).[2]"

You really want to risk this? You really think patents don't protect true innovation?

[Don't blame the professor!]

Imperfect knowledge yields imperfect analysis.

His undergrad was in accounting and finance and he practiced as an associate in a business litigation firm.

Do you think he's been around inventors? Do you think he has been in an environment where R&D takes place? Do you think he understands the economics of taking a patentable idea and taking it to market?

Really, when you are atop the ivory tower, it is difficult to understand the trials and tribulations of the little people.

So don't blame Chiang for his opinion, he cannot help it if his knowledge base is a little imperfect.

[dweller]

"On the other hand, this inventor still contributed nothing useful to society. It is worth emphasizing the fact that, by my hypothetical, the industry produced the same technology independently, without copying anything from the patent."

The above is shamelessly unethical.

Analogy:

-Here is your civil service award for saving someone's life

-(2 years later) Give us back that award because someone on the other side of the country just saved someone's life and it's not so special anymore.

Give me a break.

[Another AnonPatent Atty]

Patent Troll, defn: pejorative term, a largely mythical creature, a sub species of homo bogeyus, not unlike Goldstein in 1984, a propaganda tool, against which prejudice is raised and at which invective is hurled, without an examination of whether an underlying factual basis actually exists. The most famous "trolls" at which those in favor of destructive patent reform point, can be counted on the fingers of two hands, have patents (a very small number when taken over a total of more than 7 million issued cases) that almost invariably should not have issued, and would not have issued had they been examined properly in the first place under the existing law. Used to justify extremist positions in favor of gutting US Patent law, most often by people who have no idea what they are talking about.

[Blaise Mouttet]

Even if a patent "gathers dust" in the patent office it is likely to be used as a piece of prior art by patent examiners to reject future patent applications (provided that it includes a truly novel, nonobvious teaching). This has the effect of raising the bar of innovation on the future patent applicants attempting to claim the same idea and provides incentive for the future patent applicants to work around the patent which is "gathering dust" once they find out that their patent application is rejected by the dust collecting patent. If work arounds are possible this may result in even better (or at least more diverse) solutions and thus such dust-collecting patents can indirectly promote innovation even if the disclosed technology is never developed.

On an unrelated note information on licensing my patented technology related to memristor crossbars is available at http://knol.google.com/k/blaise-mouttet/programmable-electronics-using/23zgknsxnlchu/2#

[BlahBlahBlah]

I'd like to see what the VC's would do when presented with the scenario of investing in a great new start-up without the security of IP.

If non-practicing entities can't enforce IP, irrespective of where it came from or who owns it, there is no value left to the remaining IP and no investor will take the risk of investing in an environment where anyone can steal ideas.

Let's see where that leaves us.

[step back]

Are there "troll" professors, and if so, what is the definition?

[me]

Let's see - do I trust an accountant who is an IP prof, and Laemley - another prof who I do not think even qualifies to take the patent bar - or do I trust the Chief Judge of the Federal Circuit? I guess I go with Chief Judge Michel who says the good prof is perpetrating myths based on complete abject lack of factual analysis:

http://www.cafc.uscourts.gov/pdf/1-28-09_CJMACPC_Speech.pdf

A quote from the judge:
"How do such myths survive? They are repeated so vociferously so many times,
they simply become accepted as true despite the absence of support in the form of
representative examples and statistics. Who perpetuated such claims and why: A dozen
or two companies, mostly from Silicon Valley or Wall Street, that wanted lower damages
and litigation costs when they were sued. All claimed that likely litigation results forced
them to settle for plainly exorbitant amounts. But the University of Houston Law
School’s examination of all actual jury verdicts in calendar years 05-08 fails to show any
award against most of those companies, much less exorbitant awards. Two companies
did suffer large awards, but the markets were large; large size does not prove undue
size."

An another:

"I suggest we all bear responsibility to assure Congress gets the truth, the whole
truth, and nothing but the truth; as the common cliché puts it: “everyone is entitled to
their own opinion, but not their own facts.” Once the full facts are presented, both
Congress and courts can do their respective parts to make necessary improvements,
but still do no harm. I, for one, place great hope in all of you informing the Congress and
the Federal Circuit, both directly and through on-going proceedings in the Federal Trade
Commission."

NOW - ALL YOU SLEEPING PRACTITIONERS! WE NEED THE SAME FORCEFUL ATTACK ON THIS STUPIDITY AND THE PATENT REFORM IT IS DRIVING THAT WE HAD FOR GSK!!! GET TO WORK!!! CALL YOUR CONGRESSMAN AND SENATORS AND DEFEAT THE PATENT TROLL MYTH AND THE "REFORM" IT IS DRIVING!!!!

[RNM]

'So what if not all patents “promote the Progress of Science.”'

. . . Then it is beyond the authority of Congress to authorize the patent grant. It is important to remember that it is the promotion of innovation that forms the actual power grant to Congress in Art. I, Sec. 8 of the Constitution.

"Congress shall have the power . . . to promote the progress of science and the useful arts . . . ."

Are "troll patents" unconstitutional? I don't know if it should go that far but the authority to issue patents does have a Constitutional basis that should not be ignored.

[Leopold Bloom]

"I find it hard to believe that anybody can be 'ambushed' when the patent is issued, it is available for anybody to find it. Any prudent manufacturer should investigate whether their new product infringes any patents – including those held by the 'good trolls' or practicing entities. As such, if anybody is ambushed, it is their own fault."

The problem with this response is that it assumes that the "troll patent" actually reads on the accused product. If it did, then the "prudent manufacturer" you describe might actually have found it. However, if you look below the surface of a number of troll lawsuits, you'll find that a claim that clearly, or even arguably, reads on an accused product is by no means required to file a lawsuit and collect half-million dollar settlements. (Multiply that by 10 defendants, and you're talking pretty good money. Multiply that by a few dozencases, and you're talking private airplanes...) Back in my in-house days, I was on the receiving end of lawsuits based on patents that I would never have dreamed could be asserted against our products, despite 20 years of technical experience. Now I know better.

I understand that the "troll" rhetoric bothers some honorable people, but I think they are poorly served by pretending there's no such thing, or that there are no "stick-up" patent lawsuits out there. A more productive response might be to point out that perhaps the problem isn't quite as big as some make it out to be, or that the problem might be addressed via some very modest litigation-based reforms. For instance, it seems to me that a few of the cases I've seen could have used a little bit of Rule 11 enforcement, but judges appear unwilling to use that tool. Ideas that might be worth considering including tweaking venue law a bit, maybe allowing interlocutory appeals of claim construction. These ideas shouldn't harm legitimately harmed inventors or patent owners, but might reduce the "hold-up" value of an infringement. Just a thought...

"The above is shamelessly unethical."

The above is ridiculous. Since when is having and expressing an opinion unethical?

[Just an ordinary inventor(TM)]

My friend Leo is right as rain as usual.

[smashmouth football]

Leopold Bloom said:
"Back in my in-house days, I was on the receiving end of lawsuits based on patents that I would never have dreamed could be asserted against our products, despite 20 years of technical experience. Now I know better."

Quesion from a rookie: Why doesn't summary judgment weed out bad claims like this? Or is it simply that discovery is necessary (as long as the claim survives Rule 12(b)) and the costs are so large even at that embryonic stage that the defendants find it cheaper to cut and run?

[The author is a symptom of a broader problem]

The fact that this person holds a teaching position in an institution of higher education is a testament to the deteriorated state of the American academic system as a whole.

What an embarrassment for all.

[smashmouth football]

Another suggestion comes to mind in response to this comment:
"For instance, it seems to me that a few of the cases I've seen could have used a little bit of Rule 11 enforcement, but judges appear unwilling to use that tool."

Under your hypothetical, it should also be incumbent on the judge to entertain a motion for fee shifting under 35 U.S.C. 285.

[Patent_Medicine]

"One hypothetical that will surely be thrown at me is the individual inventor who tries to commercialize the invention, but fails, and then sues the industry years later. This inventor is a visionary ahead of his time who was merely unlucky. On the other hand, this inventor still contributed nothing useful to society."

So, according to the last paragraph, an inventor who tries to commercialize his invention, but fails, is not only "unlucky", but to add insult to injury, he becomes a troll later when someone else tries to market his invention without taking a license?

And how can you say that he contributed nothing to society? Someone thought his invention was worth practicing!!!

And there is simply no basis for your statement that "the industry produced the same technology independently, without copying anything from the patent." Businesses intelligence and market analysis are highly developed fields nowadays, and patents are a part of that analysis. It is very difficult (nearly impossible, really) for two commercial entities to develop the same thing truly independently, with no knowledge of each other.

I'm sorry, but your squib does nothing but expose bias, tortured logic, and lack of analytical thinking.

[me]

Good professor - the Federal Circuit was created because of the last bad economic downturn (in the late 70's and early 80's) - why not figure out they did that and why strong patent protection is viewed as a job creator not a job killer?

[dweller]

"The above is ridiculous. Since when is having and expressing an opinion unethical?"

Leo, are you using an overly literal interpretation of my comment because you are lazy, pedantic, or do you have some other, perhaps more useful, reason for doing so? Worst case of drive-by Internet criticism. Ever.

--Supporting-- the above is shamelessly unethical.

There. Happy?

[The Mad Prosecutor]

Doesn't this four point definition cover every large company that (for example) patents two things, practices one, and sues people who practice the other.

For example, if I am Ford, and I patent two transmissions, and I practice transmission one, and sue to keep people from practicing transmission two (to keep consumers buying my transmission one), then I am a troll? Another academic who attempts to come up with a definition that covers every company.

[The ultraviolet light of social interaction]

I submit that to completely ignore this work of writing would be a more powerful denunciation of it than is addressing its "substantive" elements.

The more I think about it, the less I am convinced that the author's aim was related to the "substance" of the writing. It sounds more like baiting to me.

And the baiting seems to have worked.

[Leopold Bloom]

"Quesion from a rookie: Why doesn't summary judgment weed out bad claims like this? Or is it simply that discovery is necessary (as long as the claim survives Rule 12(b)) and the costs are so large even at that embryonic stage that the defendants find it cheaper to cut and run?"

You answered your own question, smashmouth. For instance, electronic discovery across a few R&D, sales, and marketing sites for an international company can be very expensive, especially if the plaintiff's counsel is skilled at raising endless controversies over the production. Although judges appear to be getting a little bolder about summary judgment in patent cases (KSR, in my view, was a clear invitation to district court judges to invalidate patents on summary judgment), but skilled plaintiff's counsel can often maintain a jury question. In any case, even if you want to publicly spank the plaintiff, your recommendations to the corporation must include the pragmatic alternatives. Notwithstanding the recent travails on Wall Street, corporate managers are generally pretty risk-averse, in my view.

[anonymous]

Just an ordinary inventor(TM),

I have a slight correction for you. The point of patents are to "promote the Progress of . . . useful Arts." Copyrights are to "promote the Progress of Science." Common day understanding of these words have changed quite a bit since the Constitution was written.

[Just an ordinary inventor(TM)]

Dear anonymous,

As my mentor, Science Office Spock, would say, Fascinating!

[Raoul]

I do not agree with all of this attention focusing on the types of patent holders. I think we are missing the point. There are individual inventors and even little R&D companies who do manufucture items that embody their inventions, but they do contribute to innovation. I am not even opposed to those entities that purchase older patents for the sole purpose of suing companies. I am more concerned with the latter companies being able to completly exploit the system. It seems to me that the problem is that, through certain law firms, these companies can use questionable legal tactics and take some borderline invalid patents, twist the claims around to cover anything under the sun, sue a large coporation, put relatively little work in the beginning (if you have seem some of their claim charts in litigation regarding how some of the accused products infringe - its obvious they aren't even trying), use the threat of an injunction and a ridiculously large initial damages sum (since they can go back six years), settle for a sum that is slightly less than the cost for the defendant to litigate (still usually at least in the seven figures), and then move on to the next company. I think any patent reform should look at how these entities and their attorneys are able to exploit the system. instead of merely carving exceptions for certain patentees. Ebay and the injuction correction was a good step since I don't see a reason to give an equitable remedy when the patentee is clearly only seeking a monetary award (this could be considered somewhat of an exception, but I think injunctions should be more in line with the usual standards for equitable remedies which is generally when monetary awards are inadequate). I lke KSR as a start for crappy patents. However, I think we need tougher sanctions for questionable patent infringement filings. I'm not concerned with entities asserting valid, infringed, yet old patents as much as I am with asserting questionably valid patents that really do not cover the product without any fear of retribution since sanctions for that is relatively unheard, yet still be settle for large sums that are a "bargain" since they are comparable to the cost of defending the litigation. I also think we could change the damages provision to actual notice or up to six years only if any product has been marked properly, thus not let non-practicing entities go back six years. I think this gives a non-practicing entity incentive to wait longer to bring a lawsuit to increase their damages, which, is the wrong incentive. I think the incentive should be to give notice to the infringer sooner rather than later.

[Just an ordinary inventor(TM)]

Dear anonymoun,

To promote the
Progress of Science and useful Arts, by securing for limited Times
to ------------- Authors and Inventors the exclusive Right to their
respective - Writings and Discoveries;

Viewed this way, it is soo so obvious, yet soo so obscure; Brilliant!

Amazing that no one on Patently-O noticed this before, Just amazing!

Incidentally, obvious, but obscure inventions have always been my favorite.
That’s what intellectually challenged KSR folk cannot comprehend.

[patenttrollmyth]

UHHM, NO. Patents ARE PROPERTY just like real estate. If you thought of it YOU OWN THE IDEA, just as if you bought land YOU OWN IT REGARDLESS OF WHETHER YOU CAN AFFORD TO BUILD A SHOPPING MALL ON IT.

The analogy is simple and at least addressed in the last paragraph by Mr. Chiang. Yes, if you cannot afford to develop your idea BECAUSE YOU CANNOT AFFORD financing, it does not make your idea any less powerful, just as your prime piece of real estate which cannot be developed into a retail shopping mall because you cannot afford financing. They tried to "contribute to society" but failed because LARGE CORP is getting all the money for innovation.

So, a PATENT TROLL is a mythical creature, and is DEROGATORY NAME CALLING created by LARGE CORPORATIONS that can get financing. Large corp would NEVER pay for something they could get away with copying...

[Just an ordinary inventor(TM)]

Dear anonymous,

(Pardon my misspelling – it was the excitement of your revelation.)

You have made my year. I, and everyone else onboard, owe you.
A round of drinks, drinks all around to celebrate Mr. anonymous.

[Just an ordinary inventor(TM)]

Dear anonymous,

(Pardon my misspelling – it was the excitement of your revelation.)

You have made my year. I, and everyone else onboard, owe you.
A round of drinks, drinks all around to celebrate Mr. anonymous.

[patenttrollmyth]

looks like Dennis is filtering content...
Let me repost.
PATENT TROLL is DEROGATORY NAME CALLING by large corporations. If you thought of an idea, you own it - END OF STORY. There's more but Dennis does not want it posted.

[Michael F. Martin]

I'm going to try and cut a Gordian knot here and say that an underlying source of disagreeement is over how much the public domain is enriched by the disclosure of patent applications. Since Mansfield this has been recognized as the quid pro quo for patenting. But today, outside a very select number of fields (optical engineering? drug research), there are very few fields in which experts consult new patent filings to keep abreast of new work. That, in my opinion, is what has to change in order to avoid the problem of the lone inventor, ignored by the field. So long as it remains more efficient for engineers or scientists to ignore patent filings and independently invent, there will be redundancy in work and "troll patents."

Now it should be recognized that wholly aside from the teaching of the disclosure, patenting a technology may facilitate the quicker dissemination of a new technology since it gives patent owners some modicum of comfort in collaborating with other entities when their only protection otherwise would be contract or tort. But this, I believe, is why Prof. Chiang distinguishes "patent trolls" from "troll patents."

[patently ridiculous]

The problem with a patent troll—or, more accurately, the particular troll patent—that fits all four conditions above is that the troll patent does only two things. First, it gathers dust in the patent office. Second, it inflates prices on products. The patent itself contributes nothing useful to society, in so far as the people who actually make anything useful would have done it equally in the absence of the patent.

Absurd. Patents are not granted for commercializing an invention or for making a product. The inventor is granted a patent in exchange for disclosing his invention via the patent document. This is his contribution to society. If he would like his invention to collect dust, so be it. It is his right.

The real difference between "patent trolls" and the conglomerates that seek patent reform is the percentage of commercially viable patents held by each. Trolls hold a small number of patents that are, by their nature, commercially viable. Conglomerates hold thousands of patents only a handful of which are viable. If we should penalize owners of intellectual property for failing to practice their inventions, let's start with the IBMs and Microsofts of the world as they are the biggest offenders.

[dweller]

"But today, outside a very select number of fields (optical engineering? drug research), there are very few fields in which experts consult new patent filings to keep abreast of new work."

Yes, fine, true and all that, most people don't consult patents.

But...a patent enables the patentee to disclose his invention in the form of commercial literature, conference papers, the product itself, etc.

So while nobody is actually reading the underlying patent, they are certainly leaning from the patentee's work. The quid pro quo still exists, even if zero patents were ever read in the entire history of the patent system.

[Friend of a troll]

"One hypothetical that will surely be thrown at me is the individual inventor who tries to commercialize the invention, but fails, and then sues the industry years later. This inventor is a visionary ahead of his time who was merely unlucky. On the other hand, this inventor still contributed nothing useful to society"

This is NOT a hypothetical, but a common occurence. Inventors invent. If aided by financing, they are ideally followed by manufacture, marketing and profits. The invention is taken to market by funding put up by Angel investors, VC's and subsequently IPO's. All of those investors are counting on there being substance to the patent that the inventor obtained to protect the venture when it succeeds. And they also are looking at the residual value of the patent in the event the venture does not succeed.

So, the high-risks startup gets some funding and a patent issues, but the venture fails, for any of a myriad of reasons. The patent is bought out of bankruptcy by someone who pays value for it -- value that the otherwise-hosed investors appreciate.

The purchaser of the patent considers options for use of this purchased patent, one of which is asserting it against big companies who use the technology, thus earning the purchaser the title "troll," when in fact he is providing a funding backstop to the early investors.

Bear in mind, also that the inventor often has to go the start-up business route because the big companies that complain about trolls also refuse to talk to individual inventors. The inventors can't get a straight business deal with those guys, and now those guys are also trying to gut his legal rights.

[SF]

The value of a disclosure provided by a patent is greatly diminished where (1) no one ever reads the patent, (2) where others independently developed the invention a few months after the patent application was filed and (3) where the patentee never disclosed the invention other than through cease and desist letters to people who independently knew about the invention already.

Not all disclosures are created equal, so step off your "disclosure" soap boxes, folks. In some instances, the public is getting short-changed bigtime.

[Malcolm Mooney]

patenttrollmyth "If you thought of an idea, you own it - END OF STORY. "

That's undoubtedly not the end of the story. But the quasi-religious belief of certain folks that it is the end of the story explains quite a bit of the angst around here.

Dennis writes: "By cutting out classes of inventions that could be protected, you may well be cutting the incentive for beneficial innovations."

Maybe. Or innovation would increase in areas where the costs of innovation are signficantly increased by the existence of patents.

It should be recognized that, in spite of (poorly worded and misguided) statements in the case law to the contrary, our system already "cuts out classes" of inventions and deem them unpatentable. Is America suffering from a lowered rate of innovation of beneficial algorithms, abstract ideas, and mental processes? If we allowed cookbooks and instruction manuals to be patentable, would we have better food and instruction manuals?

If one effect of the patent reforms is to put the focus (and the money) on developing useful products and methods and away from the generation of paper whose primary value is a ticket to litigation.

[Count von Count]

Leopold, how come Rule 11 and Antonious v. Spalding don't take care of the problem you talk about?

http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=Fed&navby=case&no=011088v2&exact=1

Is it really that easy to assert frivolous claims or to file suit without a pre-filing investigation?

[Malcolm Mooney]

FriendOfTroll: "The purchaser of the patent considers options for use of this purchased patent, one of which is asserting it against big companies who use the technology, thus earning the purchaser the title "troll," when in fact he is providing a funding backstop to the early investors."

In other words, the early investors recognize (and therefore advocate for) the inclusion of material and claims in patent applications that could be used to harass established companies, even if the start-up fails (which it usually does).

You use the term "backstop." When we were kids, we sometimes played baseball in the street. We didn't have a backstop so if there was a wild pitch the catcher or some other kid had to chase the ball. It was annoying but that was the way it was. It kept you from throwing crazy pitches.

Of course, if you sucked at pitching and needed practice, a backstop was more desirabe. So we'd put the catcher in front of a closed garage door in the driveway. Invariably, the owner of the garage would notice all the dents and paint chips on the garage door and tell us to get the sam hill out of there and learn how to pitch.

Think of the United States as the owner of that garage door. The backstop needs to be taken away. And the kids need to learn how to pitch.

[AgamemAnon]

"the Federal Circuit was created because of the last bad economic downturn (in the late 70's and early 80's)"

I thought it was created because the Supreme Court's failure to understand the 1952 Patent Act resulted in inconsistent opinions by the various Courts of Appeal.

[Michael Valentine Smith]

What many of you say re: "patent trolls" is something that I have long felt & said.

If you actually invent something & patent it, you should NOT be considered a "troll". You have disclosed your invention to the public and have the same rights to defend it or manufacture/use it as any other patent holder. That is your right for the disclosure. There is NO requirement in the patent statutes that a patent owner must practice the disclosed invention. And any assertion that there should be is really just an attempt by some/many large corps. to screw-up the system.

What I would consider a "patent troll" is someone that fraudulently or otherwise improperly patents (or even attempts to patent) something to which they are not entitled to. (& I am not talking about just filing overly broad claims). A few examples off the top of my head are some of Lemelson's & Hyatt's patents (i.e., those that have been repudiated; can not officially comment on any others or pending applications).

Those that did not contribute anything to the public but then try to obtain $$$ from companies that DID are the real "trolls".

MVS

[Lionel Hutz]

"Makes your analysis SO MUCH EASIER when you assume that somebody else would have come up with the idea."

No assume they would have. I almost all cases they had no idea the patent existed. It is independent invention. That is why they are non-copiers.

[stoopit examiners should remain quiet]

"What I would consider a 'patent troll' is someone that fraudulently or otherwise improperly patents (or even attempts to patent) something to which they are not entitled to. (& I am not talking about just filing overly broad claims). A few examples off the top of my head are some of Lemelson's & Hyatt's patents (i.e., those that have been repudiated; can not officially comment on any others or pending applications)."

And your evidence that Lemley and/or Hyatt obtained their patents fraudulently, or by any other improper means, is what?

[Friend of a troll]

Malcolm said: "Think of the United States as the owner of that garage door. The backstop needs to be taken away. And the kids need to learn how to pitch."

I can't believe that is a serious argument, or maybe you didn't understand my point. Investors don't throw money at startups in expectation of or hoping for troll status. The sale of the patent of a failed startup probably only returns pennies on the investor's dollars, but at least is softens the blow a bit.

[Leopold Bloom]

"Is it really that easy to assert frivolous claims or to file suit without a pre-filing investigation?"

I didn't say it was easy. Those who do it well are quite skilled.

By the way, the case you cite doesn't appear to provide much support for your apparent contention that filing frivolous patent litigation will get you sanctioned. The specific case you cite denies a petition by the sanctioned party for re-hearing. However, the case for which re-hearing was denied actually vacated the sanctions and remanded:

"We vacate the sanctions order and remand to the district court for further proceedings. To the extent the district court concluded that Finnegan Henderson's proposed construction of certain critical claim language was frivolous, we hold that the court's conclusion was legally erroneous. To the extent the district court concluded that Finnegan Henderson's prefiling investigation was inadequate, we cannot uphold the court's ruling on that ground because the court apparently analyzed the prefiling investigation in light of its view of the proper claim construction. On remand, the district court must assess Finnegan Henderson's prefiling investigation in light of Finnegan Henderson's proposed claim construction and may impose sanctions only if the court determines that the prefiling investigation was inadequate under that claim construction."

I haven't read the case closely, but the above doesn't sound like a crushing defeat for the plaintiff's counsel. Rather, it seems to suggest that the plaintiff's conduct should be assessed against its own claim construction, presumably at the time the litigation was filed.

In any event, I never meant to suggest that Rule 11 couldn't be used. I actually suggested that perhaps it should be used more often.

[Malcolm Mooney]

FriendOfTroll: "Investors don't throw money at startups in expectation of or hoping for troll status."

I never said that they do. But you are contradicting yourself and/or trying to have it both ways. On one hand, you want to say that investors don't have an "expectation" of troll status. On the other hand, you admit (correctly) that they do have such an expectation and are willing to pay for it.

If, in fact, the backstop of trolling the patent is not worth much to the average investor, then why cry about the backstop being diminished somewhat in size? Because for now that is all that is happening. Nobody is proposing that non-practicing entities are going to lost all or even most of their patent rights.

"The sale of the patent of a failed startup probably only returns pennies on the investor's dollars, but at least is softens the blow a bit."

Poor babies.

[Malcolm Mooney]

Leo: "In any event, I never meant to suggest that Rule 11 couldn't be used. I actually suggested that perhaps it should be used more often."

Leo, other have already noticed this, but your comments today are astute. New coffee beans?

[TJ]

A few responses:

Dennis: What I am trying to do is distinguish between two types of “incentives to invent” provided by the patent system. There is the incentive to file a piece of paper, and the incentive to make that piece of paper useful. An incentive to invent that consists of filing pieces of paper that no one will ever read until sued is not too useful.

I’m not sure about your insurance point. In my mind, if the patentee is good at inventing but trailing badly behind a larger company in commercializing, the Coase theorem transaction is negotiate an exclusive license to the larger company ex ante. If the ex ante transaction is not possible, then the patentee can commercialize (however badly, as long as he does it), and then sue and get an injunction. Neither of these scenarios will involve me labeling this person a troll.

Your point about cumulative invention is an interesting one. As I understand it, you are saying that if I filed a patent on a unicycle and it is completely worthless commercially, I might build on that research five years later and invent the bicycle. Note that the crux of the case is still that *someone else*, say X, independently invents the unicycle and makes the unicycle commercially successful, and then I sue X. So in your scenario, we are using X’s profits on unicycles to subsidize inventing bicycles. If the profits of a patent on bicycles are not enough to warrant its invention and we need the subsidy from the unicycle patent, I am not sure this is fully justified.

As for the hidden patent point. Yes, the patent might have been ignored. But if it was, what good is the patent doing? The fact that the inventor is not really “at fault” under our system—he has no legal obligation to publicize or commercialize—just means the system could be improved.

dweller: Yes, the derivation might be from another publication by the patentee, or from the patentee's commercial product, and not necessarily the patent itself. Consider that a minor amendment to the definition of copying.

[6]

"And your evidence that Lemley and/or Hyatt obtained their patents fraudulently, or by any other improper means, is what?"

No evidence is required in the court of public opinion. Think before you speak.

[Michael F. Martin]

@dweller

"But...a patent enables the patentee to disclose his invention in the form of commercial literature, conference papers, the product itself, etc."

Because I'm not sure you read it, that's what the second half my comment was meant to address.

"So while nobody is actually reading the underlying patent, they are certainly leaning from the patentee's work. The quid pro quo still exists, even if zero patents were ever read in the entire history of the patent system."

It's not a quid pro quo for *patenting* in that case the, is it? It's a quid pro quo for patenting and then working to transfer the knowledge (and at least partially suceeding) through other means.

But your comment raises the other possibility -- supposing that patent disclosures cannot be improved (I assumed the opposite in my comment above), then perhaps remedies for infringement should be predicated on patenting AND engaging in whatever activities ARE effective for disseminating knowledge to the field.

That, in a nutshell, is what Paul Heald has proposed:

http://ipfinance.blogspot.com/2009/03/patent-damages-as-incentive-to-transact.html

[stoopit examiners should remain quiet]

"No evidence is required in the court of public opinion."

Anonymous cowards from the PTO have never felt evidence is required. That's why they're working at the PTO as anonymous cowards. Like you.

"Think before you speak."

You should take your own advice.

[Lionel Hutz]

"So, according to the last paragraph, an inventor who tries to commercialize his invention, but fails, is not only "unlucky", but to add insult to injury, he becomes a troll later when someone else tries to market his invention without taking a license?"

No, when someone else tries to market his/her/its own invention later without taking a license. The hypothetical is about non-copiers (i.e., 99% of victims in these suits)

[Just an ordinary inventor(TM)]

6

Think before you speak.

That's pretty funny coming from you, buy you someone would say that, right?

[Lionel Hutz]

No assumption that they would have. In almost all cases the alleged infringer had no idea the patent existed. It is independent invented by the alleged infringer. That is why he/she/it is a non-copier.

Reposted because my original post was a garbled mess.

[Alan McDonald]

"How come Rule 11 and Antonious v. Spalding don't take care of the problem you talk about?"

Because no court is willing to actually grant Rule 11 sanctions, especially the trolls' favorite Eastern District of Texas.

Can anyone give me 3 (I won't take one off the wall decision) cases where sanctions were granted under Rule 11 to a patent defendant?

Let's explain how trolls work. They file suit without any prefiling investigation. Then then require the defendant to provide extensive discovery to determine if they have even a colorable claim. They also know that they have next to nothing discoverable themselves, so their discovery cost is marginal. At the same time they offer to settle for less than the cost of providing the discovery. Since they know that no district court judge is going to grant Megacorp Rule 11 damages against small individual "inventor" (Lemelson et al.) it's a no brainer.

Just give me 3 decisions of the CAFC enforcing Rule 11 sanctions equal to the defendant's total costs in the future and a major proportion of troll cases go away.

[6]

"That's why they're working at the PTO as anonymous cowards. Like you."

I work at the pto as an anonymous coward?

I'm going to say this one more time. Think before you speak.

"buy you someone would say that, right?"

Jaoi, was there something you were wanting to say? Maybe you didn't think before you spoke?

You guys are really on your game today. First we have a guy that thinks inherency needs to be supported by evidence in the record while explicitly saying that the supporting evidence that is required is extrinsic. Then we have guys who believe that someone needs evidence to consider someone else a troll. Finally we have people that can't even make a coherent comeback that has some factual truth.

Bravo. Encore. I know you want to.

[me]

The Fed Cir wa established specifically to clean up the mess of the other circuits - patents had been upheld almost never in some circuits. I guess we can argue whether it was primarily established for one reason or another - but I know at least one of the resons discussed at the time was increasing patent strength.

[Come on ... think about the conequences]

"I[n] almost all cases they had no idea the patent existed. It is independent invention. That is why they are non-copiers."

Do you really think they would admit -- "Hey!! We copied that directly from Joe Inventor"?

They could, even in could faith, say that they indepedently came up with the idea, when the actual fact is that the subsequent independent inventor came up with the idea after overhearing a conversation about something that somebody saw that eventually could be traced back to the original inventor. There are just too many unknowns to consistently prove or disprove independent invention.

If independent invention is important, then why should it apply to just patent trolls. Instead, shouldn't it apply to everybody? Of course, that would then be the #1 defense for every patent infringement claim -- "we independently developed the idea."

[dweller]

Michael Martin:

I did read the latter part of you comment, but it seemed to me that you didn't give much credence to other kinds of disclosure.

Patents are very effective for disseminating knowledge. The problem is that few people take the time to read them. Keeping up with the patent landscape takes work. It's much easier to ignore the landscape and then complain about trolls.

[NNW at about 20 knots]

"Nobody is proposing that non-practicing entities are going to lost all or even most of their patent rights."

For somebody that prides himself as to knowing which way the wind is blowing, you cannot detect the direction these arguments are headed?

[dweller]

TJ said "There is the incentive to file a piece of paper, and the incentive to make that piece of paper useful. An incentive to invent that consists of filing pieces of paper that no one will ever read until sued is not too useful."

TJ, why do you wish to penalize an inventor (by limiting his rights unless he commercializes) because someone else was too lazy to read his patent?

Anyone who reads his patent (a) saves time and money by not independently inventing and (b) learns who owns the invention. And if they're worried about a potential troll, they can license the patent. What's the problem?

Is it too much to ask a large company with millions or billions in revenue to read the two, twenty, or two hundred patents granted each week in its technology area? Is that the issue here? There's lots of dangerous paper out there, but the ostriches don't want to read it?

[Michael R. Thomas www.worldsonlyinventorofsignificancearguably.com]

Patent patrollers are individuals who invest in intellectual property for the purpose of enforcing a legal wright they form an alliance with the inventor who signs off on his rights for a sum or % of judgement. This is the inventor recieving sum profit because the companies wont pay him a reasonable sum or he doesent have the money to fight a million doller legal battle or open his own company so this is his only method of any compensation for him.

[Malcolm Mooney]

"For somebody that prides himself as to knowing which way the wind is blowing, you cannot detect the direction these arguments are headed?"

There's a difference between high prevailing winds and the air moving about a room when someone coughs. I don't see non-practicing entities having their patent rights voided across the board anytime soon. I haven't seen anybody who matters suggest that as a viable option in the US.

[stoopit examiners should remain quiet]

"Then we have guys who believe that someone needs evidence to consider someone else a troll."

That's not the accusation that was made against Mr. Lemelson and Mr. Hyatt. The accusation was that they committed fraud in obtaining some of their patents.

You really are stoopit.

[Malcolm Mooney]

"Anyone who reads his patent (a) saves time and money by not independently inventing"

This is only true in the instance where learning about the invention takes less time and money than creating it.

As any honest person will readily admit, a great many software and computer-implemented inventions require as much time to "invent" as it takes to write the claim. This is because, as we were informed so famously by our old friend "pds", softare and computer-inventions are "pre-enabled." They certainly do tend to be claimed that way.

Thus, I can sit here and type, "A method of storing television programming transmitted to a user, comprising: obtaining data corresponding to a televised image; determining if the televised image includes an image of interspecies animal copulation; wherein if said televised image includes an image of interspecies animal copulation, said data is saved to a folder organized in a hierarchical database, wherein said folder is accessible only by a user-specified password."

Voila. Invention. It is that easy. Of course, this invention is more useful and better claimed than most in this field.

[Patent Practicioner]

Thanks to all the previous posters. I could challenge the factual accuracy of almost every sentence (except the hypothetical statements) and thus the conclusions based on false or faulty premises (premesii?). However, In toto, I believe the previous posts have done so already.

Patents are property rights. If the big companies really don't want to be bother by trolls, then don't infringe or settle cases that survive Rule 11 scrutiny. (disclosure- I work for a big company now and have represented big companies for over 10 years). Akin to real proprty rights, you can't trespass (legally) because you are bigger or the owner isn't home. Squatter, infringer, trespasser; all in the same category.

[TJ]

dweller, as you say, someone who reads the patent will save money by not having to independently invent. If so, the big companies should have plenty of incentive to read the patent, whenever the cost of independent invention is less than the cost of reading the patent. Thus, independent inventors occur only when the invention is so easy to re-invent that it is smaller than the (supposedly tiny) cost of reading the patent. If the patent is on such a insignificant invention, what is the contribution of the patent? Also, laziness is a two-way street. The big company is too lazy to search 7 million issued patents, the patentee is too lazy to mail a copy of the patent (42 cents) to the few big companies in his industry.

And although this is a semantic point, am I really "penalizing" the patentee, or just not throwing money at him when no one else has copied his invention?

[dweller]

Malcolm, if I were one of Google's 20,000 employees and I was paid a tiny portion of their 20 billion in revenue as salary, and it were my job to read the 10 or so applications published each day that might become a problem should they fall into the hands of a troll, I would recommend doing a third-party submission of prior art against your claim.

I would search for half a day (while earning an infinitesimal amount of that 20 billion, by the way) or I would hire our friend 6 to find killer art in 5 minutes. Heck as an employee of one of the world leaders in computer software, I would probably have killer art sitting on my desk.

Voila. Troll bane. It is that easy.

[6]

"That's not the accusation that was made against Mr. Lemelson and Mr. Hyatt. The accusation was that they committed fraud in obtaining some of their patents."

And that such a thing made them a troll.

"What I would consider a "patent troll" is someone that fraudulently or otherwise improperly patents (or even attempts to patent) something to which they are not entitled to. (& I am not talking about just filing overly broad claims). A few examples off the top of my head are some of Lemelson's & Hyatt's patents (i.e., those that have been repudiated; can not officially comment on any others or pending applications). "

Sir, you are beaten. Learn to read and learn to think before you speak.

Who'll bet that it is a 100% certainty that this guy is a lawyer?

Don't get me wrong, I love guys like you, you bring the lulz. And dam if you guys don't bring em in by the truckloads around here.

Hurry and bring some more guys, I need something to tide me over on the weekend when hardly anyone posts.

[6]

Oh, and I should add, guys like you will pay for my kids tuition if I stick around here. Or at least you'll cause some hapless apps to pay for it.

[Michael F. Martin]

Given the academic nature of this discussion, perhaps this is too banal a point, but independent invention is not a defense to patent infringement.

[Michael Valentine Smith]

Hey, "stoopit examiners should remain quiet" (JD by another name?? Sounds like his usual ranting),

As one easy example, how about the patent that Hyatt received for a processor & memory on a single chip (a simplified explanation of the patent)? It later came out (in the various interferences, etc.) that he never had support going back to 1968 (I believe that was the year he claimed he had priority to) for what he claimed & got a patent on about 20 years later.

Based on most of what you will find out when reading the various articles, etc. on this patent & Hyatt & the various legal proceedings, it is clear that he did not have support and knew he didn't have it when he added it to the spec & claims (should have been rejected under 112, 1st, but that is another matter). He basically took what was already out there, claimed priority to many (dozens?) of different earlier applications, and said he had support for it. If not "fraud" outright, at least "improper" in my personal opinion (& here I am NOT commenting on the validity of an issued patent, but explaining the background history of a patent that has been legally invalidated).

In my opinion, someone who claims rights to something that they knowingly or what they SHOULD knowingly) not have rights to claim is "fraudulently or otherwise improperly" receiving a patent for material that is not their own work.

Satisfied?

MVS

[Just an ordinary inventor(TM)]

6

Thank you. I "knew" you'd comment like that, and I made a bet.

[dweller]

TJ, I don't know if the cost of independent invention would ever be less than the cost of reading the patent. It takes, what, an hour to read the average patent. It's easy to say "1 click purchase", but to think it through and write it down so it can be implemented by Joe programmer, takes more than an hour, I think.

Perhaps the European system is better at forcing applicants point out what they've invented relative to the prior art. A well written patent can be read in 20 minutes.

7 million sounds like a scary number, but it is quite manageable if you know what technology you're interested in. A wide swath of computer patents covering databases and search engines issued at a rate of about 35 per week in 2008. Is that really too much for a potential troll target to keep up on?

Independent invention is a result of ignorance of not having read the first inventor's patent. Is our system to reward ignorance?

[Jules]

Yes indeed, 6 did say "Hurry and bring some more guys". That does not suprise me.

[TJ]

Dweller, your position sounds suspiciously like saying that the pedestrian who gets mowed down by the drunk driver could have avoided the accident too, by being really, really careful and jumping out of the way first. Otherwise, we are "rewarding" the pedestrian for him not taking all possible precautions; just like a company that does not take all possible precautions to search all possible patents.

The key question is the comparative cost. Is it cheaper for the drunk driver not to be drunk or the pedestrian to jump out of the way? Is it cheaper for the patentee to mail a copy of the patent (again, 42 cents) or for the company to find it through search (last I checked, $5000 per patent)? If searching is nearly as easy as you suppose, then we wouldn't have a patent searchers making a living on it, nor would we have claim construction problems. For even after you find the patent, it is pretty hard to figure out whether it covers your product. Add to that the possibility of a continuation a la Rambus, and it becomes nigh impossible.

[Patent_007]

"The patent itself contributes nothing useful to society, in so far as the people who actually make anything useful would have done it equally in the absence of the patent."

I must more than disagree with this scholarship - this is just plain crap, from a "scholar" no less. Dozens of unexplained, unsubstantiated, conclusions are wrapped up into a turd ball not unlike what you'd expect to find as a patent law exam answer.

[stoopit examiners should remain quiet]

Hey MVS (or LL's sock puppet, whichever you prefer),

"...it is clear that he did not have support and knew he didn't have it when he added it to the spec & claims..."

It is? Says who? You?

Are you aware there is a difference between a finding that the claims did not have support and a finding that he knew the claims did not have support?

"Satisfied?"

No. The "I read it in some articles therefore it is clear he committed fraud" proffer is not, in my opinion, sufficient evidence to support an accusation of fraud.

SESRQ

[6 not knowing the law ... yet again]

"First we have a guy that thinks inherency needs to be supported by evidence in the record while explicitly saying that the supporting evidence that is required is extrinsic."

You obviously don't know the meaning of "extrinsic evidence." In the context of an inherency argument, it is evidence (e.g., a patent, a publication, a paper) that supports that the inherent teaching is necessarily found in the applied prior art. The "evidence" is extrinsic to the applied prior art -- i.e., it isn't part of the applied prior art.

BTW -- if you don't like the law, blame the MPEP and the Federal Circuit. Of course, you are an examiner, you don't have to follow the law -- just make it up as you go along.

Just because the cops in Alabama can ignore the law doesn't mean that you can too.

[Ryan Kennedy]

I don't think the professor is very clear on what type of right a patent grant contains. It is not only possible, but likely, that an inventor cannot practice his invention because that's the law. S/he has the right to exclude others, but not the right to commercialize the invention. The entire patent system is based on the negative rights principle, so all patentees are by definition trolls unless and until they have clearance to operate from every single other negative right (patent) that their product might infringe. The fact that the good professor misses this very elementary aspect of patent law is not reassuring. The Coalition folks prey on this kind of ignorance of the law. Here's hoping Congress is smarter than that. I jest of course.

[Malcolm Mooney]

6notknowing "You obviously don't know the meaning of "extrinsic evidence." In the context of an inherency argument, it is evidence (e.g., a patent, a publication, a paper) that supports that the inherent teaching is necessarily found in the applied prior art. The "evidence" is extrinsic to the applied prior art -- i.e., it isn't part of the applied prior art."

*sigh* This is the zombie whine about the PTO that refuses to go away.

Look, assume I'm an Examiner (too funny) and you're a prosecutor (highly likely).

If your claim recites a "A floating rocking chair, where said chair is attached to a water-resistant buoyant device" and I have an article describing someone attaching helium balloons to a rocking chair, I do not need to "prove" to you that the balloon is water-resistant or buoyant before making my inherency argument. I just need to tell you that it is and if you don't like it, I know where there's a rolling donut waiting to be made love to by you.

[MM ... always the classless act]

"I do not need to 'prove' to you that the balloon is water-resistant or buoyant before making my inherency argument. I just need to tell you that it is and if you don't like it, I know where there's a rolling donut waiting to be made love to by you."

NEVER and I mean NEVER, after looking at well over a hundred inherency arguments have I seen one as clear cut as the example you provided. Any monkey can come up with a hypothetical inherency argument that no one reasonable would deny -- as you have shown. However, the fact that a MMonkey can come up with a solid hypothetical establishes nothing -- except your inability to present solid arguments.

[Lionel Hutz]

Independent invention is not a defense to patent infringement and I am not arguing it should be. I am agreeing that there is a problem with nonpracticing inventors, generating license revenue through lawsuits for ideas already in use by large corporations.

I personally do not see any solution to that problem that does not create some other harm against the patent system. However, since E-bay changed the practice with respect to injunctions, I am less concerned.

The ability to threaten an injunction against a company with a profitable business by an opportunistic patent holder was unfair. As long as courts are applying the four-factor test that all other injunctions are subject to, I have a lot less problem with "troll patents"

[TJ]

Ryan Kennedy: I am perfectly well aware of what the patent right contains, thank you very much. I am not advocating that patentees must commercialize. I am arguing that they should commercialize *or* sue people who copy from them. About the only people who are excluded are independent inventors, and note I am not even arguing that all independent inventors should be excluded. I am arguing that when an entire industry is made of independent inventors, the patent made no real contribution.

And you say that the patentee might not be able to commercialize due to other blocking patents. That is conflicting quite a bit, I would say, with the many people here who think that it would be so easy to find all the blocking patents and then license them ahead of time . . .

[Michael Valentine Smith]

Hey "stoopit JD",

After a very quick search (you are not worth the time for more), here are just a couple of cites that indicate the patent was "improperly" obtained. Plus, remember that it was invalidated because he did not actually disclose what he claimed.

http://www.intel4004.com/hyatt.htm ("was not implementable with the technology available at the time of the invention.")

http://datamath.org/Story/Intel.htm ("Hyatt never actually built a computer-on-a-chip, but based his claim to the invention on a series of patent applications he filed with the Patent Office in the 1970s and 1980s. In the Patent Office interference proceeding, he claimed he filed the first patent application describing a computer-on-a-chip in December 1970. After a review of tens of thousands of pages of Hyatt's patent filings, however, the Patent Office determined that Hyatt first mentioned the invention in an application that was not filed until December 1977--six years after TI introduced the product.")

Of note, are the quotes that point out that the technology to actually implement what he claimed was not available in 1968 when he originally filed. Would you not call that "improper"?? Or do you suggest that your clients keep applications alive for 20 years (before GATT) & keep adding material that was not around when they filed and claim that they still had it on the original date. Would your "legal ethics" allow that?

BTW, I did not explicitly say that "he committed fraud" as you state. I said "If not 'fraud' outright, at least 'improper' in my personal opinion" "Fraud" would be a legal decision decided in a court. He was not convicted of legal fraud. So, for that basis he did not commit "fraud". Did he do things that were "improper". Clearly the record is "yes". If, for no other reason, his patent was invalidated because of his actions and that he could not support what he claimed in his claims.

MVS

PS, Thanks for the complement, but I am not LL. We do know each other, but he is more tolerant of you than I. He thinks that all of what you post is just a front & you just like to argue but are reasonable in real life. I think you are a lost cause & just a angry & hateful person who would not want to agree with me or anyone no matter what the discussion.

[6]

"NEVER and I mean NEVER, after looking at well over a hundred inherency arguments have I seen one as clear cut as the example you provided."

Then you haven't gotten any inherency statements by me. Too bad for u.

Oh and examiners should never "argue" inherency, a simple statement is always best.

"The "evidence" is extrinsic to the applied prior art -- i.e., it isn't part of the applied prior art."

I know what it means, I figured I'd see if you would bite on the claim construction definition but you just came over to this thread instead.

To the matter at hand however.

First I should tell you that I make inherency statements literally every week, if not every couple of days, I'm pretty well versed in them and I deal with the best of the best lawyers that prosecute applications (see your own rankings of law firms). They know how to argue and will argue anything that they can. They do not argue what you propose. Why?

"To fully develop reasons, the Office must provide reasonable support for invoking inherency. This reasonable support requires “a basis in fact” (evidence) and/or reasoning tending to show that an allegedly inherent feature necessarily flows from the teachings of the applied art. (MPEP 2112 (IV), citing Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original)). "

Pretty much says it all. Except "evidence" isn't actually in the MPEP. If what I state as being inherent is factual, you lose if you choose to argue.

Trust me, I know precisely what is required to make an inherency statement stick. Usually all that I insert as my reasoning is that something exists, or that something must happen because that is all that is required to establish it as a fact and provide reasoning since the applicant is simply claiming exactly what is in the prior art and is simply describing exactly what the prior art is doing in different words or stating a technical fact about what is going on in the reference. Sometimes I get a little technical, but I have yet to provide anyone (except one newbie to my art SPE because I was feeling generous that day and I was genuinely interested to look up that fact) a reference to show that a previously made inherency statement was true. And I won't start providing them to attorneys probably ... ever, unless I feel generous that day.

You badly need to read this page:

http://patentablydefined.com/?p=59

BTW, going with "1" on that page = final if the inherency is indeed based on fact and the previous explanation wasn't wayyyy too simplified. I strongly recommend going with "2" no matter what. But, that's your choice. And remember, he inserted "evidence" for "basis in fact".

I don't know what failtastic arts you prosecute in, but when you come to play with the big boys you will find out that an inherency statement most certainly does not mean that you just "won".

If you bring your lulzy arguments to my office I'll simply approve my appeal numbers on your dime.

As a brief aside, anyone who chooses to argue like Mike at the end of the above article will find themselves with one warning in a final action to address the issue or not have the amendment entered, and then all subsequent amendments not entered until they do. Including ones that come after their inevitable RCE. Assuming that is their only argument that is. This is what I would do personally. Strangely I have yet to see those "avoid the issue" type of arguments again after such actions but you guys can feel free to waste your time all you like.

[Patent Hawk]

TJ Chiang is precisely the type of conceptually clueless academic, stupid really, that will do little more than pollute his students with tripe. The man is dangerous in his utter failure to grasp his professed area of interest.

Patents hold the promise of accelerating invention. But they don't perform that function particularly well, having nothing to do with the status of the inventor or patent holder. To blame patent holders for the failure of patent transactions is the equivalent of shooting the messenger.

As Prof. Crouch noted, patents are published. If the patent system worked as it should, companies would be sifting the patent database for inventions they could use. The interesting question is why that does not happen.

[Mason Boswell]

There is an often repeated assumption that patents can be secretive and hidden in the Patent Office, but as we all know patent law assumes just the opposite, namely that once a patent is published it is available and publicly known. How, then, would you ever determine that someone was a non-copier? You cannot know that someone in the organization did not get the idea to "independently make the product" either directly or indirectly through the published patent.

Why is it that no one ever asks the victims of so-called trolls why they did not perform a freedom-to-operate search to identify potential patents that they should license before going forward with a product? I think it a bit one sided to say that it is always the unsuspecting company that got asked to pay a reasonable royalty for someone else's invention that is right.

Comparing this to the realm of real property, your article is a bit like saying that trespass is okay if the owner of the land is not using it and if someone found themselves innocently on the parcel. However, the land owner still has a right to eject others off of his land or to charge a fee for being there, because the deed gives him a bounded area of ownership. Similarly, a patent marks out a bounded region of the invention, and the owner has the right to control the use of that area regardless of his purpose in ownership.

This is yet another area where too many are quick to allow property rights to be eroded that many fought so hard to obtain just to solve an isolated problem.

[ChrisC]

Dear Professor CJ:

This coming from a person of such stature is shocking! I guessed you've never invented anything in your life and never fought on your own dime with the big boys who would not pay anything because they knew you can't afford to sue them! Shame on you!

Sincerely
ChrisC

[question]

"First, it gathers dust in the patent office. Second, it inflates prices on products"

How do we know that the alleged infringer did not actually see that patent and try to copy different aspects of it?

[Watchin the puppet show]

What is happening over at George Mason Law?

I thought we had put to rest the hackneyed notion of trolls. Now troll patents?

If a troll patent is so dusty and worthless it should be easy to defeat; and why would anyone pay maintenance fees on a worthless patent? Either patents protect something or they don't.

All this talk about patent trolls and dusty patents is being perpetrated based on myths and stories from people who have never set foot in a manufacturing plant and who are relying on anecdotes to make their case.

"In most areas of business, patents are not necessary for a successful new product launch. The first entrant will have a strong market position, and trademark-type rights may be sufficient to retain the position."

This is not necessarily true and is not the point. And what does "trademark-type rights" mean in terms of "being sufficient to retain the position?"

This is what happens when academics start opining on how business works. I can't think of anyone less qualified to talk about how business works than a professor.

[step back]

"Troll is, as troll talks of." --Forest Gump of Bubba, Gump and Rich LLP

[step back]

Second to independently invent is like second in a foot race. Nice, but no 1st place trophy.

The patent system is a race. That is how it "promotes" the pace of progress. Without it, we would be on a pleasant afternoon walk. We would get there eventually. But eventually can be a long, long time away.

[Just an ordinary inventor(TM)]

Dear Lionel,

Re: “The ability to threaten an injunction against a company with a profitable business by an opportunistic patent holder was unfair.”

Let’s look at the other side of that coin: If a self-employed independent inventor cannot threaten injunction, why would a dirty farkin’ international patent pirate (i.e., big businesses that need to maximize profits so its executives can reap- rape the rewards) take a reasonable license without litigation the inventor can ill afford, especially considering lower damage awards? And under these circumstances, how the hello can the inventor find a contingency firm?

Moreover, given the stigma inventors must endure, created by incessant covert and overt “lobbying” by international powerhouses like Cisco, Symantec, Google and their ilk in the “Coalition for Patent Fairness” in the mass medias, Congress and Executive agencies including the PTO (at least the management thereof), given all that, and KSR to boot, District, Federal Circuit and Supreme Court Judges and the vast “pool” of jurors – they all have been poisoned against the independent inventor.
I know, I’ve been there and I’ve been royally screwed even with legal representation as good as it gets.

Please, please wake up and smell the coffee.

[Brian]

A lot of angry people here trying to defend the patent system. You talk about the "original bargain," disclosing the invention in exchange for the right to control use of the invention, and that anyone may search the patent office for said inventions.

Who does that? Really. Has anybody here read a patent lately? The original bargain is broken: patents are written to *obscure* the idea behind the invention, not at all to *reveal* it. You could no more do research in the patent office than you could learn English by reading Chinese.

I also reject the gainful employment of patent-related jobs (read: lawyers) as any sort of gain to society. Yes, these people will have employment, at the cost of the many, many more jobs we could have made if we didn't follow the M.A.D. model of innovation.

Any walled garden like this, which despises any sharing or cooperation, is doomed to fail without the continued diligence of those that benefit most from it. The RIAA has been struggling lately to prove its relevance. Surely the lawyers that defend these submarine patents should have to explain just what benefit they are to anyone-- besides themselves, that is.

[Noise above Law]

Brian,

You seem to be just aware enough of patents to make some seemingly inane comments. I'm sure that there is more to your story than what is shown in your posting. Perhaps I may offer my perception of what you said (and didn't say), you can correct or add to my interpretation....

First two paragraphs:
It is your view that patent lawyers want the system "as is", or close to "as is" and hate attempts to "fix" the system. You believe the system is broken and that inventors are not meeting the disclosure portion since a) nobody actually reads patents anyway and b) patents are written in such a manner as to hide ideas behind the invention rather than reveal those ideas.

IMO, you would be mistaken on a number of levels. (Most) Patent attorneys are passionate about what they do. It is not anger in defense of the patent system as is that you see. It is passion in protecting a legal system from undue corporate influences that would decimate the system for particular gain. The attempted decimation is guised in the folds of improving the system, and this duplicity generates such passion. It is the Office disregarding the rule of Law and taking it upon itself to decide what is law and what is lawLOL (a 6 term), that ignites the passion that you see. It is the indignation of the same large tech firms that hide behind NOT researching what is available (and published patents are clearly available) so as to avoid certain damage levels if/when they infringe other's property rights that ignite passion - choosing to be ignorant as a business decision - yet you would chastise patent lawyers and remain silent to the actual perpetrators.

There is no doubt that there are "bad patents" that should not have issued. There is no doubt that the pejorative term "troll" does describe some peoples' actions. Likewise, there is no doubt that both these are smoke screens for political agendas that have little if anything to do with the law.

What you see is passion about the law from people that care deeply about the law. If, as you suppose, a patent does not reveal anything about the invention, than that patent application should have been rejected under the Law as the law now stands - 101 and 112 are possible tools for such. The bargain is not broken. The bargain and the law just need to be applied.

The Office spends an inordinate amount of time and resources on its policy objectives rather than fixing the actual problems. What riles many here is the aim of patent quality being placed everywhere except where it should be - on examination quality.

You do not seem to have comments on examination quality, time limits of examination, correct application of applicable laws, yet do seem to have a very negative viewpoint of patent lawyers. Your statement in the third paragraph would indicate that you think patent lawyers directly cost "real" jobs. You state this as fact, but have no basis for this, revealing a malicious bias. Can you tell us what you mean by the acronym M.A.D.?

As to your fourth paragraph, I do not understand what you are trying to say. Who is the party that has the continued diligence and who benefits most from the "walled garden" of the system? What is the despised sharing or cooperation that you refer to? Are you buying into the rhetoric that the applicant should do the examiner's job? This has never been the case. Why should this doom to failure the system now? What is the pertinence of the RIAA to patents? Are you confusing your forum? What are these submarine patents you refer to? Do you know what a submarine patent is? Do you know the current law and its relation to what is commonly known as submarine patents?

I welcome your views - just please try to make them less noise and more substance.

[phwting]

Another way to look at a "troll" is why such an entity exist. Troll's exists because inventors lack the resources to license and litigate. Take a look at TIVO, they are still in litigation after how many years. Or Kearns
...
http://www.theautochannel.com/news/2005/02/25/005398.html

He shopped his invention around to various automakers but did not reach a licensing deal with any of them. But carmakers eventually began offering intermittent wipers as standard or optional equipment.

Kearns sued Ford Motor Co. in 1978 and Chrysler in 1982, claiming patent infringement.

In 1990, a jury decided that Ford infringed on Kearns' patent, though it concluded the infringement was not deliberate. Ford had contended the patent was invalid because the windshield system contained no new concepts. But Kearns argued a new combination of parts made his invention unique.