Radio Systems Corp. v. Accession, Inc. (Fed. Cir. 2011) – Part II
As the facts are alleged in this case, after learning that Radio Systems had received a notice of allowance on its “SmartDoor” patent application, Accession’s patent counsel telephoned the USPTO Examiner handling the Radio Systems. Because the Examiner did not answer the telephone call, Accession’s attorney left a voice message. Six days later, the Examiner returned the telephone call and spoke directly with Accession’s attorney. During the conversation, the examiner apparently learned about the existence and relevance of the Sullivan prior art patent. (Mr. Sullivan is the founder of Accession). After considering the prior art, the examiner withdrew the patent from issue and filed a new rejection of independent claim 17 based on the Sullivan prior art. Without comment, Radio Systems cancelled claim 17 and the patent issued.
These conversations all occurred in August 2009. For the three years prior to that time, Radio Systems and Accession had been engaging in a slow conversation regarding the Sullivan patent and whether Radio Systems would license the patent rights. During that time, Radio Systems never submitted the reference as prior art to the patent examiner.
To recap, a patent attorney representing a third party (who was interested in ensuring that no patent issued) provided the USPTO Examiner with valuable prior art and likely an explanation of how the prior art related to the patent application under examination. The Examiner had a verbal conversation with the patent attorney and concluded that the prior art rendered the pending claims invalid. The patent applicant had previously been made aware of the prior art but had failed to inform the Examiner of its existence. Without argument, the patent applicant cancelled its claim after it was rejected by the Examiner.
Illegitimate Means to a Legitimate End?: From all appearances, the result of this sequence of events is that third-party contact helped the USPTO avoid issuing a patent with invalid claims. The problem is that the examiner and attorneys had to violate USPTO rules to achieve that beneficial result. When rules in-place frustrate beneficial ends, the proper solution may well be to change the rules.
Legitimizing the Means: What is needed here is a simple straightforward mechanism for third parties to provide information to patent examiners regarding reasons why a particular pending application should be rejected. The submission should be written and preferably in the English language, but there is no reason why it must follow any other formality requirements. At that point, the patent examiner should have independent authority to consider the submission on its merits. Written correspondence (such as e-mail correspondence) between the third party and the examiners could also be allowed to give the examiner a better opportunity to understand the submission. The written record is helpful to avoid the appearance of any secret or improper dealings between the examiner and a third party.
Background on Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application
US patent applications were not published prior to 2001. As Congress considered implementing the publication system, some patent applicants complained that competitors and others would raise the cost of patenting by filing needless oppositions. Thus, the law was written to limit third party oppositions. The relevant statute, 35 U.S.C. § 122(c), states that:
The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.
The USPTO has given a somewhat narrow interpretation to the restrictions blocking any post-publication “protest or other form of pre-issuance opposition to the grant.” In its rulemaking for 37 C.F.R. § 1.99, the USPTO decided to allow third parties to submit prior art during a limited two-month period after publication but prohibited any explanation of the patents or publications or the submission of any other information. 1239 Off. Gaz. Pat. Office 71. Thus, according to the rulemaking, the mere third-party submissions of prior art is not considered a “protest” or “pre-issuance opposition.”
In 2003, Steve Kunin was the Deputy Commissioner for Patent Examination Policy at the USPTO. In March of that year, Kunin published a notice in the USPTO Official Gazette explaining further limitations on the examination corps in dealing with non-party contact with examiners during ex parte prosecution. Kunin writes:
[T]he USPTO is instructing the Patent Examining Corps to: (1) not reply to any third-party inquiry or other submission in a published application that is still pending before the USPTO; (2) not act upon any third-party inquiry or other submission in a published application, except for written submissions that are provided for in 37 CFR 1.99 and written submissions in applications in which the applicant has provided an express written consent to protest or pre-issuance opposition; and (3) decline to accept oral or telephoned comments or submissions about published applications from third parties. When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, to this Notice, or to 37 CFR 1.2 (all Office business should be transacted in writing), if appropriate. The USPTO may also refer third-party inquiries or submissions not provided for in 37 CFR 1.99 by registered practitioners in published applications in which the applicant has not provided an express written consent to protest or pre-issuance opposition to the Office of Enrollment and Discipline for appropriate action.
The USPTO’s interpretation of the law is that examiners should refuse to consider any submissions by non-parties. However, Kunin’s notice further indicated that the USPTO retains the right to use the material submitted if it is relevant to patentability:
[T]he provisions of 35 U.S.C. § 122(c) and 37 CFR 1.99, 1.291, and 1.292 limit a third party’s ability to protest, oppose the grant of, or have information entered and considered in an application pending before the USPTO. However, these provisions (and this notice) do not limit the USPTO’s authority to independently re-open the prosecution of a pending application on the USPTO’s own initiative and consider information deemed relevant to the patentability of any claim in the application.
This approach follows a recent examiner comment on Patently-O that “what has been seen cannot then be unseen.”
Changing the Rule without Changing the Law: The law forbids non-party “protests” and other forms of “pre-issuance opposition to the grant of a patent” subsequent to publication of the application. The law also requires the USPTO Director to establish appropriate procedures to ensure that those activities do not take place. However, USPTO has already decided that the law does not forbid submission of prior art documents during a limited time period post-publication so long as the examiner retains independent authority to analyze for patentability and craft rejections. The USPTO would likely be well within its powers to expand the document submission program in a way that (1) allows for submission of explanations; (2) extends the timing of submissions; and (3) reduces or eliminates the fee associated with the submission.
ANL, this is just a bit much.
Have you read and understood Precision Instruments? The facts there and the facts here are very close. Two applications claiming the same invention. One applicant lies to the PTO. Another knows about it, but says nothing. He then takes advantage of the silence.
I think the Supremes were clear, if you know of fraud (or attempted fraud), you have a duty to report it. You cannot keep quiet because then, as in Precision, you can take advantage of that secret knowledge that no others can have without extroadinary expense.
I think any law, any rule or any legal theory that would prevent one with particular knowledge of fraud from reporting it is not only ill considered, but virtually unconstitutional just as Paul Cole suggested.
Now, we have the law and the rule, what could the attorney in the shoes of Accession’s attorney do to get the info to the PTO prior to the patent issuing?
Let’s go back to Precission Instruments: file a reissue application, copy claim 17 or a broader claim to the locking mechanism, request and interference, and in the same request report the attempted fraud by Radio.
Since all of this is legal, within the rights of Accession, why not short circuit the process and proceed with just a little common sense?
If you are looking at the situation as a lawyer, you see the Examiner as an administrative judge, you see the application as an ex parte judicial process and you become incensed at any outside interference with that process.
If you are a technologist, you are concerned with objective reality. If the claimed subject matter is not new, then it does not matter so much how the relevant knowledge gets to the Examiner, what is important is that the application is amended, if that is possible, or refused.
Likewise of the disclosure cannot be made to work because critical information has been omitted, or a third party has repeated the procedure as described and failed to achieve the stated results. As is known to any practising scientist, peer repetition of published results is essential to keeping the progress of science on track. If you don’t admit such evidence, you are likely to be granting patents for cold fusion.
On the whole, I am for the second group. As Dick Feynman famously said, nature cannot be fooled. Nor in the end can the courts. So if there is a damaging reference there, taking the position that it ought not to be considered for procedural reasons is folly. And if what is disclosed does not work as described, turning a blind eye to that is similar folly. Patenting is not a game, and the patents we obtain for our clients have to be fit to put before a court. Although I can see where A New Light is coming from, his argument however well founded in law is less well founded in reality.
In Radio’s shoes, I’d like to think that I would have submitted that patent just to make sure that it got considered on the record. Plus, unless it was substantially cumulative with art of record, I would imagine that even if claim 17 recites some limitations not taught by the patent, it might be the case that it could still be applied in an obviousness rejection. But I don’t have enough information to reach any conclusions.
Of course, Radio still had the opportunity to submit the reference before issuance, or to rexam the issued patent later on. It might be said that the inequitable conduct, if it occurred, is not tolled until they attempt to enforce the issued patent, because the failure to submit that reference can be remedied prior to the enforcement of the patent.
I just don’t see how your position as tenable that Accession would be harmed by issuance of that claim 17, as it only creates a right to sue. And if claim 17 were truly obvious or anticipated by Accession’s earlier patent, then Claim 17 would be deemed invalid at trial. I know you are concerned that Accession would have trouble licensing their patent to others if those others would fear infringement of Radio’s claim 17, but it would be a rather absurd fear of infringement if the product is faithfully built according to Accession’s disclosure, and thus is prior art to Radio’s claim 17.
I guess the bottom line is, I don’t really understand this fear of issuance of potentially invalid claims. The economy was booming during the hey day of potentially invalid claim issuance, back when business embraced the reality that doing business involves risk and uncertainty, and cross-licensing of defensive patent portfolios was the order of the day.
Of course, the immunity to countersuit of so-called “patent trolls” changes the game with respect to them, but isn’t Accession the non-practicing entity (NPE) in this case? It’s hard to have sympathy for NPEs that don’t even try to bring their invention to market. That is why I have proposed that damages awarded to such entities be offset by an amount of damages equal to those that would be awarded the defendant for infringement of the defendant’s dominant patents by the NPE were the NPE to bring a commercially successful product to market that would be covered by the asserted claim(s) of its servient patent. That would put the NPE in the shoes of, or at least on equal footing with, a PE, and discourage would be NPE’s from believing the pipe dream that they can just patent and license inventions, instead of bring them to market.
TINLA, I made an argument similar to yours elsewhere for Radio’s good faith. However, you will note that the locking arrangement appear to be the same: a shoulder and a channel. The details are just a bit different.
Despite the minor differences, wouldn’t you agree that if the law firm knew about Sullivan’s patent, they should have disclosed it absent any more relevant prior art?
There are facts here that need to be fleshed out indeed. But the question I had is why with so much smoke, why didn’t the PTO investigate the lack of disclosure just a bit more?
BTW, are you familiar with Oddz on Products?
Just for you Ned, I have read through all the comments below, and it seems to me that you are insisting on viewign the facts in the light least favorable to Radio Systems, and leaping to several conclusions.
Try looking at it in the light most favorable to Radio Systems, and see if you still think there are grounds, absent findings of fact by a jury, for your premature conclusions that fraud and inequitable conduct took place.
For example, for all we know, Radio Systems honestly believed that Accession’s patent was not relevant to the claims of it’s application, and that Accession’s allegations of anticipation and interference were wholly groundless. For support of this possibility, look to Radio Systems’ arguments of record regarding irrelevance of Accessions’ patent to the claim that was rejected by the Examiner as anticipated by the patent:
“Applicant respectfully submits that Sullivan does not disclose the limitations of ‘a frame defining … an engagement shoulder … outlining a portion of the through-way; a flap defining an engagement slot; and a locking mechanism engaged with said flap, said locking mechanism situat[ing] said flap at a locked position and an unlocked position, when said flap is at the locked position, the engagment slot receiv[ing] the engagement shoulder,’ appearing in claim 17. To the contrary, Sullivan discloses that ‘[w]hen flap lock knob 76 is turned counter clockwise, flap lock cam 169 is rotated down in upper hinge 163, lowering flap 166 of flap assembly 162 down and between interior frame 172 and exterior frame 172trapping an area 166A of lowermost portion of flap 166 as shown in FIGS. 50A-C.’ Sullivan c. 25, ll. 59-64 (emphasis added). In other words, Sullivan discloses that the flap is received by slot in the frame. Thus, Sullivan does not infringe claim 17.”
By all appearances, the Applicant was able to point out some differences that indicate the rejection of claim 17 was imporoper. The Duty to disclose the patent only arises if the Applicant knew or should have known that a reasonable Examiner would want to apply the art in rejecting the claims. of course, reasonable people disagree over what constitutes a “broadest reasonable interpretation” of claim language. However, I think everyone can agree that Applicants have no duty to disclose art that an Examiner would apply in establish an improper rejection, even though even reasonable Examiners make mistakes from time to time. Therefore, I don’t think you can look to the fact that the Examiner chose to apply the Accession patent in rejecting one of the claims of Radio Systems’ application as conclusive proof of the relevance of the patent to the claims in the application.
In view of all of that, I say it still remains unfair for the Applicant to be forced to cancel the allowed claim to get the other claims to issue without having to appeal or file an RCE, especially where the regulations provide for other opportunities for submission of the reference, and post grant remedies. A court of law is the place to settle these allegations of fraud and inequitable conduct, where finders of fact can perform their smoke and mirrors routine in which they somehow assess the credibility of witnesses and leap to a permissible conclusion that looks a bit more like justice than such conclusive leaps appear when performed by you, me, or a USPTO Examiner.
I don’t know why you think it is good or just to conduct an invalidity trial at the USPTO, or in blog comments based on an incomplete statement of inconclusive facts.
“blah blah blah ping is right blah blah blah”
Ya got some parts right there Dim – specially the bold part in my summary here.
“Shall” being a non-optional directive,…
A masterful job, ANL. I agree completely that 35 USC 122 is clear on its face.
But I do have one question – I note that the “shall” you discuss is actually applied to the Director, as in the “Director shall establish appropriate procedures …” Aren’t you saying that the Director broke the Law, rather than the examiner? What about the patent attorney?
There is a 30 year history now, at the EPO, of declining to look at written submissions until the patent owner has given his explicit consent to their introduction to the ongoing proceedings. Works very well. Unproblematic, uncontroversial. Any thoughts Paul?
Dennis,
The title of this thread, “Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application” starts well enough and eventually gets around to the background of the importance of the title, but seems to lose its way very quickly.
In doing so, you have invited quite a number of posts to join in on a policy debate that already was undertaken and decided – in law (not in “rules” as you indicate). And while the carpet bombing does bloat the number of comments on the thread, there appears to be very little actual substance – and what substance there is horribly overlooks the greater wrong or is simply misfocused on red herrings.
Further, I would hold that the actual “rule” in place by the Office, or at leas thow it is applied, horribly twists the very law that it is meant to uphold. In your section “ Background on Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application you nicely lay out that law – and the compromise that generated that law. The words of the law are clear and strong: shall… no… or other form… without express….
“Shall” being a non-optional directive,
“no” does not mean maybe,
“or other form” is open ended – not closed ended, and “without express” clearly seeks to place the control back into the hands of the applicant – not the examiner.
Clearly, the law is meant to ameliorate the loss of control suffered by the applicant with the, at then, unimaginable violation of confidentiality that the publication route invoked, and the appliant did indeed lose the traditional “Quid Pro Quo” arrangement.
The purpose of the Law, it seems has been forgotten, or at least muddled with the notion that no express written consent is needed as long as the examiner is still the one doing the examination.
I make no bones about that I think that publication has been an absolutely horrible idea. And to make matters worse, how the Office decides that any submission by a third party is something other than “an opposition or other” is simply put, intellectually dishonest. It is quite besides the point that “an invalid patent may issue” – two wrongs do not a right make. The ends never justify the means. Never. There may be justification, but carte blanche treatment cannot stand. Further, the debate about First Amendment is a horrible red herring. Lest we forget, this is a third party involvement and the law – which any rule is meant to support clearly states that the applicant controls what is or is not to be submitted to the examiner. Even the two month window allowed by Rule 99 still must comport with the Law that it falls under.
To me, the Office would be in perfect alignment to allow the full time period from publication to issue – as long as the law was followed and the reference was not examined in any way until the applicant provided express written consent – as demanded by law. Dennis, you reflect on a comment by an examiner that “what has been seen cannot then be unseen.” And while this may be true – it is just as true that what hasn’t been seen remains unseen. There is an old story on this premise. It lies in a box and Pandora is casting a curious eye towards it.
As Ping states, but somewhat mischaracterizes, the step of giving control back to the applicant is not an open invitation to simply bury a prior art reference in order to get a patent. Thus, even the end to be achieved as fulfilling the Office mandate is a false argument. If the applicant knows of a damning reference, then the applicant knows that a claim in a patent obtained will not only be not enforceable, but that the entire patent can be subject to invalidation based on the grounds of inequitable conduct. If there is a third party that properly submits a reference to the applicant, the applicant knows that such art lies like a deadly mine ahead – it never is something tha the appliant can truly bury. Like Stephen King’s pet cemetary, anything so butied will come back in a most unpleasant way. But it is the applicant that chooses how to proceed – that is how the law is written.
Dennis, you seem to fan the flames of misunderstanding by stating so matter of factly “The patent applicant had previously been made aware of the prior art but had failed to inform the Examiner of its existence. Without argument, the patent applicant cancelled its claim after it was rejected by the Examiner. ” As TINLA has shown, this simply was not the case, and as many have noted – the examiner broke both the rule and the law by not first obtaining the required express written consent of the applicant prior to examining the third party supplied reference.
I will agree that “When rules [and law] in-place frustrate beneficial ends, the proper solution may well be to change the rules [and law].” But there are proper ways to reach that proper solution, to change the law, and until the law is changed, that law must be respected and obeyed. Publication has taken the control out of the hands of the applicant – such loose and disrespectful stomping of the law, no matter how beneficial the ends, damages even more so the hallowed Quid Pro Quo. It shames me to think that anyone would lose sight of the real injustice here. The examiner should be fired. The attorney sanctioned. Ask yourself this – would either be permitted to operate in the first place with such a callous disregard for the law? I think not.
Well Paul, I agree they are rare at the EPO but, unlike you, I don’t find that surprising. I think the real reason why there are so few observations filed is because it prompts Applicant to: i) check extra carefully that the pending application is going to be able to resist all post-issue attacks on its validity, Art 123(2) included, and ii) get at least one divisional on file.
But these reasons don’t apply in the USA.
So perhaps those Chicken Littles fearing the sky is going to fall are not Chicken Littles at all. Perhaps the public, motivated by the thought that, at issue, the C+C presumption of validity is going to kick in, will indeed hit most every app pending at the USPTO with a flood of penetrating observations on the validity of one or other questionable claim.
“one which I suggest ought to be followed in the US”
Sounds great Paulie, but does not address the US rape O the Quid Pro Quo (teh Quid Pro Quo be a beautiful driver that makes the US system teh Gold Standard, makes the US patent the more powerful patent).
“If there is a system of law in which patent applications are published pre-grant, then it is as a practical matter essential to provide a mechanism by which members of the public may comment or provide information.”
Well the US does not agree completely. As I done observed, the US does provide a structered window for the members of the public to provide information (not too surprisingly, none of the naysayers seems able to address this point O law). The comments and “observations concerning the patentability” be reserved to the person responsible for the examination – as it should be. This little facet preserves the level playing field and attempts to stymie the Sport O Kings effect.
Before the EPO, third party observations are governed by a 114 EPC which reads:
In proceedings before the European Patent Office, following the publication of the European patent application, any third party may, in accordance with the Implementing Regulations, present observations concerning the patentability of the invention to which the application or patent relates. That person shall not be a party to the proceedings.
These provisions are given practical effect by r.114 EPC which states that:
(1)Any observations by a third party shall be filed in writing in an official language of the European Patent Office and state the grounds on which they are based. Rule 3, paragraph 3, shall apply.
(2) Any such observations shall be communicated to the applicant for or proprietor of the patent, who may comment on them.
Rule 3 paragraph 3 provides for the filing of documentary evidence.
If there is a system of law in which patent applications are published pre-grant, then it is as a practical matter essential to provide a mechanism by which members of the public may comment or provide information. The EPO procedure enables this to be done in a structured way, and does not enable informal telephone contacts which are never recorded. That is consistemt with the principle that the whole file record should be documented so that both the applicant and the public can see what transpired and have a proper opportunity to comment.
Experience has shown that the EPO is not deluged with a flood of third-party observations which are, in practice, surprisingly rare. One reason is that if they are to be effective such observations need to be prepared with care and properly documented and argued and the effort and cost involved may approach the cost of subsequently filing a European opposition The European approach is one which I suggest ought to be followed in the US.
Big D – posts be disappearin.
Sunshine – nice goal post moving equipment here.
Now you be wanting an analysis of efficacy O the reasons given, when only the fact that there be reasons at all was the issue.
No one is distracted from your waffling. Here let me quote me:
“ping said in reply to Malcolm Mooney…
Well Sunshine, it seems we have moved from “perfect for summary judgment” to “it would seem like a pretty good candidate.”
So does this mean that ya actually agree with me that it depends on the actual facts and that just because one side says the reference be relevant dont make it so?
You can line up with wtvlfdt to thank me when it be quiet here.
Reply Apr 27, 2011 at 12:45 PM ”
Just thank me already and move on.
assuming that Accessions attorney had no duty to report possible fraud, do you then support, as do many here it seems, disiplinary proceeding for his actual reporting of fraud (assuming that is what he did) in violation of the rule?
I’ve explained at great length in this thread why I don’t think there was a violation of a rule.
On the flip side, did he become a party to the proceedings when he contacted the PTO and had a conversation with the examiner to the extent that he then had a duty to disclose the fraud or attempted fraud after he became involved?
Of course not. Does some loon become a party to a lawsuit when he wanders into the courtroom and starts yelling about conspiracies? No! The term “party to the proceedings” is a term of art, Ned. You really don’t know what that means?
If you Cy were representing Radio under these circumstances, do you report the alleged fraud, or continue to represent Radio but keep quiet?
You’ve adjusted the scenario so much, Ned, that I don’t know what “these circumstances” are. If your client won’t let you submit prior art that you’re convinced is material, then you must withdraw from the representation. Does that answer your question?
Sunshine – that ranks right there with Ned’s nono-responses. You be trading meds again?
Yet another point you have left hanging Ned.
Just an observation.
Ned-O-gram, your own posts contradict what ya what them ta say:
“the Supreme Court seemed require all attorneys who had any knowledge of the perjury to either withdraw from further representation of Larson” – there be nothin here that meets your invocation to report fraud (either to the court or to teh Office). all attorneys… any knowledge… Cause it be given that in this case all attorneys where a party to the proceedings, your own facts cannot lead to the conclusion you want.
Cy, assuming that Accessions attorney had no duty to report possible fraud, do you then support, as do many here it seems, disiplinary proceeding for his actual reporting of fraud (assuming that is what he did) in violation of the rule?
On the flip side, did he become a party to the proceedings when he contacted the PTO and had a conversation with the examiner to the extent that he then had a duty to disclose the fraud or attempted fraud after he became involved?
“What would you do?”
Ya keep on asking questions when ya havent answered my questions there Ned.
Why is that? Are you now a proponent of removing all statutes O limitations and laches? Disband all procedural rules becuase they can only get inthe way of the ends? Cmon Ned, let’s see your defense of your positions here, not questions.
“Unfairly forced to cancel it.”
Have you been following this thread since this post of yours. Have you changed your mind on this point?
Here are the facts that TINLA posted (and know, TINLA, I don’t have you on “ignore”):
While I have not reviewed the teachings of the reference to determine how credible the explanation is
I’m not interested at all in Radio’s self-serving b.s. about the “differences” between the reference and the claim that they canceled, for obvious reasons.
pingaling, if you and TINLA want to explain to us all how the reference is “different” from the claim, please be my guest. Otherwise, there are no facts indicating any differences whatsoever, just some crxp that Radio put in their Response which I’d bet $100 is pure b.s.
Nothing, ‘cept it appears Accession first learned of the patent application just about when it called the examiner.
Assume these are the facts just for the sake of argument. What would you do ping when you discover that a party to whom you disclosed an invention has filed on it in their own name and a patent is about to issue on it, especially if the patent covers your products and your business?
What would you do?
No really. But I will grant you the Supremes did not have a case before it involving the facts of this case, Accession v. Radio.
But, under Precission, the Radio patent here appears to have been procured under supicious circumstances. They were accused by Accession’s attorney of “perjury.” Did they have a duty to explain to the PTO all the facts involved?
I note Radio simply cancelled the claim without explanation. Was this fufilling the uncomprosing duty as described in Precision?
If you Cy were representing Radio under these circumstances, do you report the alleged fraud, or continue to represent Radio but keep quiet?
If you need to, I will review with you what you said upstream.
OK, I think the Supremes were clear there is a duty to report fraud if
1) you know of it; and
2) you are a party to a proceeding in which the fraud occured.
In this case, it applies in spades to one of the two named parties and does not apply to the other.
Name the guilty party.
Well, what is interesting is that your reply completely evades my points.
Will you be providing a reply that addresses my points?
From the above, I conclude that if one is aware of perjury or fraud on the PTO by another then one has a duty to inform the PTO.
Then you’re not reading it right. Context matters, as do the actual words the Court uses.
In Precision, Automotive was trying to enforce a patent that went through a filthy interference proceeding. Even though the perjury involved their opponent, Automotive participated in covering it up. Automotive went so far as to buy the contaminated application from their opponent and managed to get a patent from it. And you’re surprised that the Court wouldn’t let them enforce their portfolio?
Now let’s look at the words the Court used: “Those who have applications pending with the Patent Office or who are parties to Patent Office proceedings have an uncompromising duty to report to it all facts concerning possible fraud or inequitableness underlying the applications in issue.”
Those words do not give rise to any duty to inform the PTO of your concerns about somebody else’s patent, unless and until you’re involved in proceedings involving that patent.
You’re all wet, Ned.
Well it is interesting that automotive’s own patent was found unenforceable despite the fact that it itself was acquired without fraud.
Cy, if you think about the purpose for the disclosure to the patent office, it will be to someone else besides the solicitor division responsible for disciplining attorneys. It would be to someone who could effectively do something about the fraud so as to protect the public against unlawfully acquired or issued patents.
“the Supreme Court seemed require all attorneys who had any knowledge of the perjury to either withdraw”
This is hardly a ringing endorsment of “must” anything.
1) seem to
2) withdraw from further representation.
The first is ambiguous, the second requires absolutely NO action invloving either the court of the USPTO.
This cannot be your best case.
CY, read this an please comment:
link to supreme.justia.com
It is the Precision Instruments case.
The Supreme Court held that Automotive had to disclose to the PTO the perjury committed by Larson, the inventor of another patent in interference with an Automotive application.
Rather than do that, Automotive settled the interference, acquired the Larson patent, and by contract, silenced all who had knowledge of the perjury.
The attorney for Larson, once he was made aware of the perjury, withdrew.
The attorney for Automotive never informed the PTO, but instead hired Hobbs who then settled the case by acquiring the Larson patent for Automotive.
From the above, I conclude that if one is aware of perjury or fraud on the PTO by another then one has a duty to inform the PTO.
Further, the Supreme Court seemed require all attorneys who had any knowledge of the perjury to either withdraw from further representation of Larson or report the perjury.
They seem to suggest that Hobbs was one of the villains and that he had a duty to listen when Automotive tried to tell him of the perjury.
See if you agree on this.
But Ned,
Ya might be able to stop the (C)onsitutional (C)onsternation of (C)y below, and redress your past misdeeds.
Just have your buddies reinstall the No Publication Until Issue Rule.
You cannot allege something you dont know anything about, now can ya?
Added benefit to the American farmer – cow sales will soar.
“I note you do that with seemingly everyone here.”
Posse initiation rites…?
Good thing all the cancer survivors have left for the day.
“Of course, compared to you, 6 is a genius.”
dammm, talk about a low blow…
Toilet humor – sunshine is really reaching for the stars now.
Whats the matta sunshine – no cancer survivors to put down?
sunshine,
Or you can thank me now, given that the thread has enough subcomments that ya can hide here.
I promise I wont tell anyone.
wtvlfdt,
Or you can thank me now, given that the thread has enough subcomments that ya can hide here.
I promise I wont tell anyone.
or perhaps sparring with feeble-minded nitwits like ping too much
It’s not “sparring”, really, unless you consider taking a number 2 to be “sparring” with the txilet bowl.
Citation, Ned? Or do I have to read some 1885 treatise on patent prosecution?
If your knowledge of the fraud comes from outside the client representation,then you might indeed be in a tricky place. But I suggest, given your demonstrated propensity for making up facts to make the story more interesting, that you might want to be darn sure that you really have actual knowledge of that fraud before you follow through with your duty.
And you would have examiners, EXAMINERS!!!!!, who have ZERO legal training on issues like fraud, inequitable conduct, professional responsibility, etc. charged with a “duty of reasonable inquiry” and empowered to “investigate” and “verify” every 3rd party allegation.
There’s nothing fundamentally wrong with the rules. The current rules and policies for examiners were arrived at after careful consideration, including consideration of the previous policies and procedures under which the PTO investigated allegations of fraud and inequitable conduct. The PTO doesn’t have the resources or the expertise for that, but you’re here banging the drum incessantly for the PTO to go back to those policies and procedures.
You are right, I am a wunderkind. Of course, compared to you, 6 is a genius.
But Cy Nical aint cy nical about this…
…interesting.
TINLA,
More likely simply a Med issue. He be allergic to Substance, and sometimes he messes up his psychotropics with his allergy meds.
Ya notice how all of a sudden, he cant find this comment either?
“I just don’t see the rules allowing this.”
Ned-O-gram,
Just what about the two month time period do you not see?
And ya never did answer my question abouts statute O limitations and laches – why is that?
Lolz at you Cy – you be the one who thinks that either Sunshine or wtvlfdt be capable of anything O substance. (O the irony of you calling me a feeble-minded nitwit)
Cy, but the prior fraud by the client was the exact situation of a leading Supreme Court case on this topic. The holding of the Supreme Court was that the attorney had a DUTY TO DISCLOSE the prior fraud of his client.
As I said, this does seem to place attorneys between a rock and a hard place when dealing with the PTO.
He’s also assuming that Watov had “actual knowledge of fraud” being committed on the PTO by Radio Systems. Watov had no such “actual knowledge.” He had knowledge that Radio Systems was aware of a reference that arguably was, and arguably was not, material and did not submit. That is not “actual knowledge of fraud.” No matter how many times Ned says it.
Ned has also never responded to my point that the examiner searched in the exact spot where Accession’s ‘141 patent was classified and didn’t apply it, or even cite it. The reference is so d#mning yet the examiner saw it, and didn’t even bother to list it along with the usual form paragraph references.
Not sure how you can conclude that Watov had “actual knowledge” of “willful fraud” by Radio Systems in not submitting a reference the examiner didn’t even bother to cite.
DC7, I assume that the prosecuting attorney did not know of the 141 reference or anything about his client’s contacts with Sullivan. Otherwise he or she probably would be in a lot of personal trouble with the PTO based on the Federal Circuit summary alone. If I were the examiner, I would have reported this incident to the office of discipline if Accession’s attorney had include the story about Sullivan’s contacts with Radio including the bit about giving Radio the Sullivan applications serial number.
Shifting to the client, Radio, it is only recently that the duty of disclosure extended to presidents and other principles. It may be the people handling Sullivan did not know what was in their own patent application or that Sullivan’s patent needed to be disclosed. They may have assumed that their own patent application was limited to the radio claims, and did not have claims to the pet door locking mechanism that was the subject matter of Sullivan’s prior patent.
But the facts are suspicious, indeed, and warrant further investigation, by someone.
You may note that our wunderkind WHAT has stated that he would have followed the contact rules to the letter and would have hung up on Accession’s attorney had he attempted to convey personal knowledge of willful fraud. I assume most examiners would do the same, which does indicate there is something fundamentally wrong with the rules.
“As to the evidence suggesting fraud, that clearly was the import of the Accession’s attorneys statements. He all but used the words ‘stole,’ ‘thief’ ‘liar’ and the like in his communications with Radio.”
Really? You have access to the actual communications from Watov to Radio Systems?
For a guy who’s convicted an applicant and its counsel of “willful fraud” and “actual IC” based on ZERO evidence of intent to deceive or mislead the PTO, you gotta lotta nerve whinig about “personal attacks.”
The Supreme Court required practitioners to disclose actual knowledge of fraud on the PTO. How are we to square this edict with the PTO’s position that it will not listen to such information regardless of the form of disclosure?
You seem to be assuming (among other things) that calling the examiner is the only way to “disclose actual knowledge of fraud on the PTO.” Wouldn’t writing a letter to OED satisfy your obligation? Are you telling us that the Supreme Court says that patent attorneys have to take all means necessary to prevent a fraudulently obtained patent from issuing? If so, I don’t believe you…
One last matter, I have heard practioners say they will resign representation of a client who asks them to commit fraud. But, what is the attorney’s duty when he learns of prior fraud by the client?
This is hardly a matter unique to patent law, Ned, and was probably addressed in that ethics class you had to take in law school. (Hint – your duty is to keep your mouth shut, if you learned it from your client.) I suggest you review your state’s comments accompanying the rule about confidentiality with respect to client communications. I don’t think any jurisdiction has exceptions for reporting past fraud, even if you were unwittingly part of it. The PTO rules (10.57) don’t have an exception at all for preventing fraud, only for preventing a crime.
The problem is Malcolm is that I would join in that criticism if the rules provided Accession a way of communicating with the PTO in a manner that would guarantee that the examiner got the message.
I just don’t see the rules allowing this. However, I might be wrong and simply asked what the Accession attorney could do within the rules to effectively communicate.
what, I thinking about that. I suggest claim 17 of Radio’s patent. Much broader and I believe supported in Sullivan ‘141.
As to the evidence suggesting fraud, that clearly was the import of the Accession’s attorneys statements. He all but used the words “stole,” “thief” “liar” and the like in his communications with Radio.
what, we could discuss things a bit better if you would stop making personal attacks as part of every post. I note you do that with seemingly everyone here.
Okey doke – I’ve gone on way too long on this topic. But you two have been practicing patent law way too long (or perhaps sparring with feeble-minded nitwits like ping too much) if you really think that “providing a fair and just system to patent applicants” trumps the 1st Amendment. I’m just saying …
Word.
Good, What. I just wanted to get that on the record. I assume the examiner would do nothing to investigate despite the direct prohibition on issuing a patent where fraud was even attempted.
FYI, the PTO once had a procedure for investigating fraud; but long since abandoned it for lack of resources. So why still maintain that portion of Rule 56 if the PTO will not listen to or investigate accusations of willful fraud based on personal knowledge?
That said, we still have a problem. The Supreme Court required practitioners to disclose actual knowledge of fraud on the PTO. How are we to square this edict with the PTO’s position that it will not listen to such information regardless of the form of disclosure?
One possible solution is to amend Rule 56 to require practictions with personal knowledge of fraud to report it in writing to the PTO, under oath, but have that accusation simply become part of the public record.
If it turns out later that a pratitioner with personal knowledge of fraud failed to bring that matter to the attention of the Office, he could be disciplined or disbarred.
One last matter, I have heard practioners say they will resign representation of a client who asks them to commit fraud. But, what is the attorney’s duty when he learns of prior fraud by the client?
there has to be a more compelling reason than PTO convenience for a rule that expressly bans speech
The rule doesn’t ban speech. The rule requires that those who wish to speak do so at certain times and following certain procedures.
This is not about “PTO convenience.” This is about providing a fair and just system to patent applicants.
If everyone followed the lead of the Accession attorney and the Examiner in this case, the USPTO would turn into a gxdxmn circus.
Which is precisely why there are rules that tell the examiner what to do in this situation. If examiners consistently follow these rules, then there’s no circus.
As I mention upthread, in a response to wtvlfdt, the PTO rules do have to comply with the constitution, but there has to be a more compelling reason than PTO convenience for a rule that expressly bans speech, especially when there are less restrictive approaches available. I also suggest in that response that this is likely why the rules don’t expressly ban contacts like the one that occurred in this case.
Smart@ss responses like “you can’t yell fire in a crowded theater” really don’t address Mr. Cole’s point about whether PTO rules should be interpreted to ban speech.
There’s a reason why the PTO does not conduct “further inquiry” into 3rd party allegations of “willful fraud” and “actual IC.” Can you guess what those reasons are?
“Do you know when”
I do not. Should I care?
As far as I know, there is no special dispensation to the two month window based on when someone might have learned. (lesson: be diligent)
Further, since teh two parties here had been going at it for far longer then the time in question, not knowing that the other party had a patent application published in the very art space that be your sole business smacks O incompetence, dont it?
I just dont see a valid counterpoint there Ned.
Cy
the state has to balance the jurors’ free speech rights against the defendant’s 6th Amendment right to a fair trial, including an impartial jury.
B-b-b-ut what’s the problem with the jury hearing facts about the case??????????!?!? How can a jury hearing facts possibly lead to unfairness?!??!?!
Seriously, Cy, that is why the PTO has rules in place about when and how third parties are permitted to intervene. Without them, the Office would be inundated with phone calls with “tips” to Examiners from random (and non-random) guys like Ned who have “information” about “apparent” Rule 56 violations and the like.
If everyone followed the lead of the Accession attorney and the Examiner in this case, the USPTO would turn into a gxdxmn circus.
Careful TINLA, that smacks O substance, which has been known to drive wtvlfdt to a sunshine-like swear/deviant-behavior accusation mode.
“like, say, developing a process whereby examiners are entitled to, nay, instructed to, ignore certain submissions?”
Are you pulling Sunshine’s leg by statiing a process that actually is in place?
After all, as I done observed, the Office does allow the action under discussion for a specific limited time already.
Cy, what do you suggest with those, where as here, simply disobey the law and rules by doing something after the point in time that such actions are cut off? Should the ends jusitfy the means of eliminating any and all statutes of limitations and laches?
The change in question did, of course, result in realization of a lot of other significant concerns. Massive art mailings to competitors just didn’t turn out to be one of them.
The point is that peer to patent, 1.99 art submissions, the proposed change to allow art to be submitted post allowance, and even 3rd party initiated reexam, are all just solutions in search of problems. Most don’t get utilized significantly, and reexam just gets abused by infringers who typically withold the best art for trial, seeking two bites at the apple. I really don’t see the point in reexam, except as a way for defendants to forum shop, needlessly consume PTO resources, and create unnecessary delay. I’d make patentees and defendants hash it out in Court, and only permit reexam for patentees seeking to repair claims that were invalidated at trial.
I guess sequestering juries is unconstitutional as well?
No, but it’s only done under exceptional circumstances, and only then because the state has to balance the jurors’ free speech rights against the defendant’s 6th Amendment right to a fair trial, including an impartial jury.
Is there some other Constitutional guarantee that would be vindicated by a “rule preventing a member of the public from speaking to an examiner about a published application and making reasonable and straightforward factual representations”? Are there less restrictive approaches to further the Patent Office’s valid interest in efficient operations, like, say, developing a process whereby examiners are entitled to, nay, instructed to, ignore certain submissions?
I think Ned is right, insofar as the anticipatory nature of the reference is plain, and the applicant’s knowledge of the reference is well established. With this baseline, is there a rule that examiners use to determine when to balk when known facts raise a suspicion of inequitable conduct? The examiner would not know whether or not the applicant knew that one of his claims read on the reference, and in this case that fact has not been expressed, at least in the post (it is possible that the prosecuting patent attorney knew of the reference but did not realize it anticipated a claim he had drafted). However, after three years of knowledge of the reference and three years of prosecution, I would hope that the prosecuting patent attorney would catch on. The fact that he did not cite the reference is enough to legitimize a further inquiry by the PTO before granting the patent. But is there an established threshold for initiating a further inquiry?
That’s certainly true, wtvlfdt, but to the extent that the rules of professional conduct are promulgated and enforced by the state, which they certainly are, those rules still have to pass constitutional muster.
Paul’s comment raises a valid point. There is lots of case law addressing the constitutional validity of restrictions on lawyers’ speech, especially in the context of the criminal trial. While certain restrictions are permissible, there must be good reasons for the restriction. At the very least, free speech concerns should make us look very carefully at what a rule that might implicate those concerns actually says.
Here we have a situation where Congress directed the PTO to prevent pre-grant oppositions and the PTO implemented rules telling examiners how to handle pre-grant submissions. Neither issued a direct prohibition of any attorney speech. This was probably intentional, as the PTO’s approach should be just as effective as expressly banning the unwanted submissions, and doesn’t raise any free speech issues.
I appreciate the comment, Paul. Leave it to a Brit to appreciate our Constitution more than we do. By the way, has anyone over there inquired into whether the Right Honorable David Cameron has produced his long-form birth certificate?
Now JD, I certainly didn’t tell you that. But you did just now demonstrate knowledge of something that you were apparently well aware of all along.
I will tell you something that occured during a search training thing we had a few mo. back though. Apparently some of the QAS’s had been noticing search results forms and search results themselves which seemed to their proper minds to be indicating that an enormous amount of art was being considered for those cases. However, it turned out that there was merely some confusion amongst some people as to how to properly fill out forms and that it was necessary for QA to request for people to put a little initial next to the searches that were entirely looked through on the search results themselves.
Also I lulzed during this training program.
What I find very entertaining.. Is what was his Major?
That facts… Just the Facts… But that is the other side of the Nickel.
Drag Net..? Grad. Ten..? Word play. I don’t think so!
That’s not what I was referring to, Ned. You seemed surprised that Accession seems to be getting a bit of flak here. But I don’t find it surprising at all, given Accession’s flagrant violation of the rules.
According to the search notes in the IFW, the examiner performed a classified search, including the class/subclass where Accession’s ‘141 patent was primarily classified. Are you telling us that examiners claim to have performed classified searches, by listing the classes/subclasses in their search notes, which they know are part of the public record, but don’t actually perform the searches?
Ned, when it comes to “assuming facts” I bow to you as the master.
BTW, I asked if you could write a count for an interference, but I haven’t seen you post one. So based on the actual fact that Accession’s 141 patent allegedly anticipated ONE of Radio Systems’ claims, you’ve determined that, without a doubt in your mind, the two patents are claiming the same subject matter.
“The facts are suspicious.”
But they’re enough for you to have convicted Radio Systems and its counsel of “willful fraud” and “actual IC.”
You’re a piece of work.
I simply cannot believe that you’re an attorney.
OMG, you’re an absolute nut.
But first I’ll answer your “hypothetical.” If I were an examiner (I was once, but am no longer), and I got a phone call from a 3rd party I would tell the caller immediately that I’m not supposed to discuss pending applications with 3rd parties. And if the 3rd party insisted on trying to tell me some story about one of the applications pending on my docket, despite my admonition that I’m not supposed to communicate with 3rd parties, I would hang up on the caller.
“Let’s assume further that the few facts that you can verify yourself do so verify…”
I wouldn’t be “verifying” anything some 3rd party relayed to me, because I would understand that, as an examiner, it is not my job to “verify” 3rd party allegations of “willful fraud” and “actual IC.” What do you not understand about that? That is not the examiner’s job.
Should the examiner ignore all of this “direct evidence of willful fraud”? Well, if my only choices are 1) Yes or 2) Ned Heller’s suggestion that examiners start conducting witch hunts in response to every improper 3rd party contact, then I’ll choose 1).
There are many, many good reasons why examiners are not charged with “investigating” allegations of “willful fraud” and “actual IC”, or even charged with a “duty of reasonable inquiry.” Your insistence on ignoring those many, many good reasons, and your crusade to have the examining corps empowered with these duties and powers, suggests that you’re a whacko. And again, based on your stance on Therasense, a hypocrite too.
I don’t know. You tell me. It appears from the Fed’s rendition of the facts that Accession hired new counsel circa July after discussion broke down with Radio. The approach to the examiner occured in August. This suggests that Accession became aware of the Radio application then and acted promplty.
But, if they could have done something different to prevent the Radio patent from issuing, you tell me.
“the difference between listing something on search notes and having actually searched there which exists for many people.”
lolz – please explain.
Cy,
We gots another sockpuppet conspiracy mystery theatre special brewing here…
What, you are excellent at assuming facts and diverting attention?
The issue is whether the attorney’s statements about “interference” and that Sullivan should have been a co-inventor, were corroborated. They were. The claims in the two patents appear to be claiming the same subject matter — subject matter disclosed to Radio several months prior to Radio’s filing date.
The facts are suspicious.
I think what you meant to say was “I noticed you had no response to my point that the examiner LISTED ON HIS SEARCH NOTES the class/subclass where Accession’s 141 patent was primarily classified,” while knowing in your mind the difference between listing something on search notes and having actually searched there which exists for many people.
What, you again dodge the question. I did not say that Accession’s attorney told the examiner all the facts described in the Fed. Cir. opinion. I don’t know what he said. So we are dealing here with a hypothetical.
Now the reason for the hypothetical is your assumption that the examiner is entitled to ignore evidence of willful IC communicated to him by a member of the public. That is what I am testing here. That statement or thought, whichever more accurately describes your position.
So the hypo is this, once again: assume that you are an examiner and a member of the public with direct evidence of willful fraud phones you and tells you about it? Let’s assume further that the few facts that you can verify yourself do so verify, so that it appears that the caller is telling the truth.
What do you do?
And, please, do not dodge the question once again by assuming facts not in evidence to erect strawmen to knock down.
BTW – Worst.Sockpuppet.Ever.
shhhh – no discussion O substance for the would-be posse member.
good point there ping. Do you know when Accession learned of Radio’s application?
Those comments were clearly made in jest, d#uche bag.
Ya gotta apply that Latiin meaning in the context of the US system Firefly.
If ya don’t understand the US system, then your “makes no sense” state O mind would be a fairly common thing on these boards.
Maxie, be close enough for hand grenades with his “it goes like this”, but be way off in the characterization of “garage inventors” which implies a lower level of business savvy – it actually be the opposite – those with a larger degree of business savvy be more likely upset with the Rape of the Quid Pro Quo (leastwise those who like and enjoy the US Gold – read that as better – system).