Gary Odom v. Microsoft (Fed. Cir. 2011)
Gary Odom runs his own patent search firm as well as his own patent law blog – the Patent Prospector – where he provides piquant comments on patent law and practice. Odom is also a patent holder. His Patent No. 7,363,592 is directed toward a modification of the “toolbar” and “tool groups” that are familiar aspects of most computer software displays.
At their broadest, the claims are directed to a method of (1) first displaying a toolbar made up of a set of tool groups with user-manipulable dividers located at the ends of the groups; and then (2) changing the position of the dividers based upon user input.
Odom filed for patent protection in 2000. In 2008, Odom sued Microsoft, arguing that the new “Ribbon” of Office 2007 infringed upon the patent. On summary judgment, the Oregon district court held the asserted claims (1) invalid as obvious and (2) not infringed either literally or under the doctrine of equivalents.
The district court based its obviousness holding on the conclusion that Odom had merely “cobbled together various pieces of what was already out there in a manner . . . that would have been obvious to anyone skilled in the art at the time of the invention.” On appeal, the Federal Circuit affirmed.
The obviousness analysis began with Microsoft’s previously filed patent directed to a “composite toolbar” that can be manipulated by a user. (Patent No. 6,057,836 to Kavalam, et al.). The Kavalam patent provides a mechanism for users to re-size toolbar groups. The appellate panel found only one difference between Kavalam’s disclosure and Odom’s claim — that Odom’s tool groups “are on a single toolbar.” However, the court found that difference merely “an insignificant advance over Kavalam.” The court went on to hold that the “weak” secondary considerations presented by Odom could not overcome “strong prima facie” evidence of obviousness.
Considered by the Examiner? Odom’s patent at issue in this case issued as a continuation. In the parent case, Odom had submitted the Kavalam patent in an information disclosure statement and Kavalam is cited as one of 11 references considered by the examiner. The same USPTO examiner worked on both the original and the continuation. However, Odom did not re-submit the Kavalam patent as material art (nor did he submit any other references) in the continuation case and the new patent cites only one reference on its face. As David Jaglowski notes in the comments below, the MPEP indicates that the patent examiner is supposed to review and consider all information that had been filed in any parent application. M.P.E.P. Section 609.02.
The examiner will consider information which has been considered by the Office in a parent application when examining: (A) a continuation application filed under 37 CFR 1.53(b), (B) a divisional application filed under 37 CFR 1.53(b), or (C) a continuation-in-part application filed under 37 CFR 1.53(b). A listing of the information need not be resubmitted in the continuing application unless the applicant desires the information to be printed on the patent.
That rule of examination is followed by a subsequent admonition in M.P.E.P. Section 707.05: “In all continuation and continuation-in-part applications, the parent applications should be reviewed for pertinent prior art.” The actual rules of practice (37 C.F.R. 1.98) state that material must be resubmitted in a continuation unless the information was properly submitted in the prior application.
Whether the Kavalam patent was considered by the examiner is important because it relates to the the pending Supreme Court case of Microsoft v. i4i. In that case, the Supreme Court is likely to approve of some type of divided analysis between invalidity arguments previously considered by the examiner, and those not previously considered. In my estimation, however, the court is unlikely to spell out the dividing line of when an argument may be deemed to have been previously considered. I suspect that the situation presented here will likely fall on the side of not considered because, despite the rules, there appears to be no evidence that the examiner actually considered the reference in the continuation application. Of course that legal and factual conclusion may depend upon which panel of Federal Circuit judges is the first to decide the issue post-i4i. (Note – This issue is merely an aside for Odom’s case as the examiner’s consideration of the reference was not addressed by the Federal Circuit opinion.)
Judicial Bias: The Federal Circuit did address Odom’s argument regarding judicial bias by the Oregon court. Odom’s argument was based on the court’s rulings on Odom’s motion to strike; Odom’s motion to stay; Odom’s motion to block his (former) attorneys from withdrawing from the case; and by allowing Odom’s former attorneys to (allegedly) breach attorney-client privilege by talking with the judge. The Federal Circuit rejected all of those arguments as lacking merit.
Too good for words (except the self-referential third person variety):
link to patenthawk.com
Too bad for Odom; he runs an informative patent law blog. This loss can’t be great news for his patent practice or blog, in terms of his credibility as a patent expert.
You are welcome. Yes, OED publishes its opinions, although they’re not easy to find: link to des.uspto.gov . There seems to be an increasing trend towards confidential settlements, however, with published sanctions against “Anonymous” for redacted activites.
Regarding Colitz, there was a lot more going on there than just the drawings. Mr. Colitz’s problem was that he forgot who the client was.
Now, if an inventor comes to you with drawings, there may not really be a problem. The issue in Colitz (one of the many issues, actually) was that an unregistered intermediary (the invention promotion firm) was directing the production of the drawings. It’s a different story again if the inventor does it on his own initiative. Obviously you still have to apply your own legal judgment to determine whether they are suitable.
Thanks, Nic
In thinking these issues over I wasn’t able to resolve in my mind how drafting figures relates to UPL. Colitz is scary because I don’t think many of us would bat an eye if an inventor came to us with drawings done by their draftsman. I’m not sure I would have batted an eye if a promotion firm came to me with drawings already done.
Does OED publish its opinions? The Va State Bar sends out summaries every month of the lawyers who are getting spanked, but I wasn’t aware that OED made it’s decisions public. It would be a great source of excess stomach acid.
Also, from a 2004 Final Order:
The “unauthorized” practice of patent law before the USPTO is the act of practicing patent law before the USPTO by a person not either registered under 37 C.F.R. § 10.6 or working under the supervision of a person registered under 37 C.F.R. § 10.6.
In the Matter of Todd Wengrovsky (# 03-09, 2004)
One interesting aspect of this case is that the USPTO suspended an unregistered person for 3 years. I guess it makes sense to blacklist a person, if you’ve got the facts for it. I suspect the bigger problem for Mr. Wengrovsky is that his local bar was informed of the suspension.
I agree with Babble Boys understanding of what constitutes “practice”. Signing of on the work of another is signing off on someone else’s practice. The creation of the specification and claims lies at the heart of what we do.
That’s fine, but the PTO at least partly disagrees with you. Consider this language from a final PTO disciplinary decision where they dropped the hammer on a guy who was too cozy with one of those invention promotion companies:
… By statute, a drawing may be a required part of the application, and its contents, as part of the patent disclosure, can affect the patentee’s rights. 35 U.S.C. § 113. Thus, preparation of patent drawings is as much the practice of law as is preparation of patent specifications and claims.
Respondent argues that drafting patent drawings does not constitute the practice of law because patent attorneys routinely delegate such drafting. It is undoubtedly true that a draftsman who prepares a patent drawing on behalf and under the direction of a licensed patent attorney or agent does not engage in the unauthorized practice of law. This is not what occurred here, however. Rather, the companies arranged for the preparation of the drawings directly on behalf of the inventors. The drawings were prepared before the inventors were ever referred to Respondent. Although the drawings were ultimately incorporated into a patent application prepared and filed by Respondent, Respondent’s subsequent involvement cannot negate that the companies, without the involvement of a practitioner, arranged for and oversaw the drafting of documents intended to be a legally significant part of the patent disclosure to the USPTO.
The decision (Moatz v. Colitz, # 99-04, Jan. 03) makes a pretty clear distinction between work that is done under the supervision and control of an attorney, and work that is not. Both are the practice of law, but only the latter is unauthorized.
Babble’s initial point was quite correct – if someone brings you an already complete application, you shouldn’t touch it. But it’s a different situation if you work with the client and you direct a clerk in the drafting of a specification (or even claims).
“As for restricting clerks to sweeping the floors: paragraph (b) allows practitioners to hire non-practitioners under the practitioner’s supervision to “assist the practitioner.” That means checking spelling of the specification and the numbering of the claims — it doesn’t mean writing them.”
Hmmm, um yeah, from what I’ve seen I think some other firms are taking a different stance on this.
I agree with Babble Boys understanding of what constitutes “practice”. Signing of on the work of another is signing off on someone else’s practice. The creation of the specification and claims lies at the heart of what we do.
I am curious though. If one who has practiced in error of allowing and promoting the unauthorized practice of law comes to the realization that they have been doing so, are they obligated under the rules of ethics to report themselves? The seemingly immense danger of doing so (are all patents achieved through such unauthorized practice also in danger?) must surely and strongly clash with the abiding ethical responsibility.
Max, perhaps your “expert witness” approach to what a reference teaches might work in court, but in the PTO the examiner needs solid evidence of a teaching.
Read the In re Wertheim, 646 F.2d 527 (Fed. Cir. 1981)(en banc) case I quoted in another thread for an example of the way the PTO can possibly show what an ambiguous suggestion in one patent can be explained by the use of secondary references. I refer here the alleged combination of two reference to teach a concentration of coffee extract levels to 35-60% solid in a claimed freeze drying process. Now consider that rather than using “evidence,” the PTO examiner simply said that concentrations of coffee extract to the disclosed ranges would have been obvious to one of ordinary skill in the art given the suggestion in just the one reference to concentrate the coffee extract. That’s the very kind of bull we are trying to avoid.
I guess you’re right, the unregistered scab who charges to draft patent applications would probably have to be prosecuted under state law. But the lawyer who paid the scab would be prosecuted by OED for assisting another in the UPL. Most states also have ethics rules that prohibit lawyers for assisting in the UPL. So the registered lawyer gets double-hammered. An agent would only get single hammered because the state bar couldn’t reach him.
I stand my ground on the assertion that the scab who writes patent applications for hire is committing UPL. Here’s Rule11.5 in pertinent part:
37 CFR 11.5(b)(1)
Practice before the Office in patent matters. Practice before the Office in patent matters includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Board of Patent Appeals and Interferences, or other proceeding. . . .
As for restricting clerks to sweeping the floors: paragraph (b) allows practitioners to hire non-practitioners under the practitioner’s supervision to “assist the practitioner.” That means checking spelling of the specification and the numbering of the claims — it doesn’t mean writing them.
This regulation combined with the statutes and regulations requiring registration to practice before the PTO clearly proscribe what Alun is talking about — paying a scab to write applications that you sign off on.
In my view the use of non-registered clerks to write applications is also proscribed — I would call that much more than “assisting.” Drafting spec and claims is explicitly defined as practice before the Office.
Of course, I don’t have any “assistants” so it’s easy for me to say.
Is this bizarro world? 6 being kind of reasonable? Arguing with MM? Did they break up or something?
corruption
It’s not, all by itself. But it is when you sell it as a service to the public, or when you file it to the PTO on somebody else’s behalf. I don’t think there’s any ambiguity about that.
Writing or speaking about the treatment of disease isn’t the practice of medicine, either, until you sell that service to a member of the public, to address his specific symptoms.
On the topic at hand, I don’t think anyone has mentioned 37 CFR 10.49 yet: “A practitioner shall not form a partnership with a nonpractitioner if any of the activities of the partnership consist of the practice of patent, trademark, or other law before the Office.” That seems pretty clear. While this rule doesn’t apply to Mr. Odom, since he apparently is unregistered, it is applicable to Mr. Kuhn.
D@mn, now it looks like I’m obligated to write a letter to OED. I’m no expert in partnership law, but if one applies the broadest reasonable interpretation …?
I have had inventors coming to me and wanting me to file an application that a non-registered third party has written. When I explain that I cannot merely sign-off on an application written by someone else but will use their “application” as a disclosure to draft a proper application, they go off in a huff, presumably to find some hard-up, unethical agent who will take the $200 to file it for them.
Funny you you should mention it: I just saw an ad on Fox for “Legal Zoom” (?) featuring Robert “OJ” Shapiro and one of the quotes given a few moments of unique screen time was “Provisional Patent Application – $199”.
Call now! Free set of steak knives.
Since when was drafting an application unauthorized practicin’ of lawl?
But as for the scabs, I don’t know who busts them.
That’s a matter of state law; many make the unauthorized practice of law a crime. I believe in Washington this is addressed by RCW 2.48.180, which specifies that repeated instances make for a felony.
As I read 11.5, if someone else is drafting the application and you are signing it, you could be asking for trouble, even if that person is your employee. I sure hope so.
Here, I think you are incorrect. There’s a big difference between holding yourself out as a legal services provider to the public and preparing drafts under the supervision of an attorney who takes responsibility for the draft. If your interpretation were correct, then it would be illegal for law firms to use clerks for anything other than sweeping the floors and straightening up the file room – I don’t think that’s the case. That said, the clerk shouldn’t directly communicate with the PTO at all, other than for administrative matters.
I agree with you that you shouldn’t get involved with a draft, prepared by someone else, brought to you by a potential “client.” The issue isn’t that you can’t take responsibility for the draft (I think you can), but that you can’t assist someone else with the unauthorized practice of law.
“As someone with a reg. number, I have paid someone with no number to draft an application for me at least once.”
Better be careful, my friend.
I have had inventors coming to me and wanting me to file an application that a non-registered third party has written. When I explain that I cannot merely sign-off on an application written by someone else but will use their “application” as a disclosure to draft a proper application, they go off in a huff, presumably to find some hard-up, unethical agent who will take the $200 to file it for them.
My impression is that there are quite a few of these non-registered third parties out there advertising their “patent services” on the cheap, which is what it appears Hawk is doing.
I don’t believe that OED has any jurisdiction over these unauthorized people. OED has jurisdiction over a registered practitioner who assists another in the unauthorized practice under Ethics Rule 10.47. But as for the scabs, I don’t know who busts them.
Section 33 makes it an offense for a non-registered person to hold himself out as being qualified to draft/prosecute applications, but I don’t think OED has any authority to bust a person who is not registered. What are they going to do, suspend the registration the scab doesn’t have?
And when you say it’s OK for you to review and sign off on an application written by someone not registered, you’d better get a second opinion on that. It is a violation of Rule 11.5 for anyone other than one registered with the PTO to prepare a patent application, draft a specification or claims, consult with the client, draft an amendment, or reply to any communication from the PTO. If you assist [or pay] someone who does this, looks to me like you’re violating 10.47.
As I read 11.5, if someone else is drafting the application and you are signing it, you could be asking for trouble, even if that person is your employee. I sure hope so. I didn’t go to all that expense, years of lost income, and sweat bullets by the barrel to pass that ^&(*&% exam so that some wanna’ be patent lawyer can get paid to draft applications.
IMHO it should be a violation of Rules 10.47 and 11.5 if a partner who is registered with the PTO pays a non-registered employee of the firm to draft applications and/or claims, or to draft responses to office actions, or to communicate with examiners, or to do anything other than ministerial work.
Ned and bo, I’m thinking you can’t do TSM until you identify a person (real or a legal fiction) as the intended addressee. You need this in order to work out what is the disclosure content of a prior art reference, specifically, that part of it which is implicit to a reader who has the background knowledge of the technical field in question, but which is not implicit to the untrained reader.
So how can you cry “abolish the POSITA”? i don’t understand.
correct!
6 is indeed growing up. Bravo performance here 6. Really good job.
6 is making sense to me, which is rare. MM is not, which means normal reality is not entirely suspended.
As someone with a reg. number, I have paid someone with no number to draft an application for me at least once. There is no UPL issue in that whatsoever. I review it and sign the papers, and I am responsible for it. It is also not considered to be fee-splitting as long as the principal (the entity paid by the client) is licenced to practice. Law firms use technical advisors to draft apps in exactly this way all the time, including the firm where I now work.
It becomes both impermissible fee splitting and UPL when a firm where the principals are neither attorneys nor agents pays, for example, an agent to draft apps for third parties. Sadly, I did report a firm that was doing just this to OED, who did not act on this information because I was unable to identify the agent they were using (I simply didn’t know who it was). Not only that, but the PTO has since used that same firm as a contractor to perform searches. I would love to identify the errant search firm here, but I suspect they might regard it as libel.
In the case you were discussing it would be OK as long as the client was Mr. Kuhn’s client and not Mr. Odom’s, even if Mr. Odom drafted the app, as long as he was merely paid by Mr. Kuhn as his employee in this particular matter. Mr. Odom could not accept payment from the client himself, or even on behalf of a partnership between the two of them, if only Mr. Kuhn is licenced to practice.
As for a litigation track record it would have to be pro se, and at present looks less than impressive.
The world may well be coming to an end, I concur.
Out with it – what is the point ya tryin ta make?
You be makin my point for me, pingaling.
You won’t answer a straightforward yes/no question directly related to comments that YOU made upthread until you know what “point” I’m trying to make. That’s truly pathetic. But you’ve always been a pathetic coward, haven’t you been, “Homey”?
Malcolm,
It may be just my view, but when your replies to Ping center around expletives, it seems that he has had the better of you.
I think he feeds on the evidence of your frustration. I would advise not answering at all, or just answering in an objective matter. It’s like wrestling with a pig in the mud, and Ping is the pig. I am not sure what you hope to accomplish other than making Ping happy, but I find the crassness of your repeated expletives to be even worse than Ping’s hijinks.
“The point is the patent is a p.o.s. that never should have issued and the USPTO didn’t and still doesn’t know how to examine such cxxp, or they pretend not to know to keep their most whiny consituents happy”
Well idk about that MM, seems to me like you guys made up plenty of silly rules about obviousness that seem perfectly reasonable in nearly every context except software and abstract ideas and then you get ahold of an application in those fields of endeavor and want to backtrack on those rules you just established for obviousness. Why? Probably because they were bad silly rules to begin with, but nobody wants to just come on out and say that.
“None of these “improvements” are “inventive”. ”
Blatantly not MM, but that’s why I say kill it with 101 to put the rest of the people out there on notice.
“OF COURSE you can do such things with a virtual toolbar, along with a trillion other things. The computer could determine a variety of preferred toolbar preferences so that they change according to the day of the week, based on a log of the type of work you typically do on that day.”
MM I think your inventive genioos just blew the minds of pretty much every software patent attorney there is. That’s like 3 inventionlols you just gave away for FREE TO THE PUBLIC. WHO WOULD EVER INVENTLOL LIKE THIS IF THEY COULDN’T “PROTECT” THEIR INVENTIONLOL?
“When is the patent office going to force this “industry” to grow up?”
Probably not until the CAFC makes them. Which again is why I say use 101.
“Kudos to the CAFC for the smackdown.”
Improper smackdowns get no kudos from me. And I’m not convinced totally on this case one way or another.
Me “*yawn* We’re talking about moving virtual objects around on a screen. When was this app filed? 1963? The additional step of shrinking, twisting, inverting, enlarging, distorting, blah, blah, blah performed on any virtual object: obvious per se unless you have some profound unexpected result.”
6 Well if that’s what they want to hold then that’s fine by me.
The point is the patent is a p.o.s. that never should have issued and the USPTO didn’t and still doesn’t know how to examine such cxxp, or they pretend not to know to keep their most whiny consituents happy.
The prior art is a virtual toolbar and a real-world toolbox. Because it’s a virtual toolbar, you can do all the things with it “virtually” (in theory — and the claim is pure theory) that you could do with a real toolbar/toolbox PLUS anything else that you can imagine. It could turn into a virtual mouse when you wave your cursor over it three times. It could flash purple and gold when you open your garage door. None of these “improvements” are “inventive”. It’s just wanking or, as the court said, it’s “insignificant.”
OF COURSE you can do such things with a virtual toolbar, along with a trillion other things. The computer could determine a variety of preferred toolbar preferences so that they change according to the day of the week, based on a log of the type of work you typically do on that day. Isn’t that an awesome “invention”? No, it’s not. It’s just an idea that I wrote down in a way that nobody has written down before. On contrary, all it is is just another obvious example proving the same thing: you can imagine doing whatever you want with your virtual toolbar and, unless there’s some technical hurdle, an ordinary programmer can make it happen.
When is the patent office going to force this “industry” to grow up? It’s one thing to feed the trolls. It’s another thing to change their diapers and give them free candy every time they cry.
Kudos to the CAFC for the smackdown. I hope there’s many more to come.
The USDC’s comment clearly predicates the finding of obviousness on the manner in which the invention was made, in clear violation of 103
I guess it depends on what you think that particular passage in the 103 means.
En banc is more than warranted here.
LOLOLOL. Take it all the way to the Supreme Court. You know, like Bilski did.
You’re not being nuanced at all, pingaling. You’re just being your usual axxhole self.
Do you disagree with this: In certain instances, the existence of a technological hurdle (real or perceived) would be evidence of non-obviousness. Such a hurdle would certainly have helped the claims.
If so, say so. And explain why. Maybe cite a case.
Otherwise, “you just be spoutin yer usual tired sxxt.”
Me: “What about specifically asking the Examiner to acknowledge in writing that the references in the parent were examined?”
pingaling: Good luck with that
Friend of MPEP: I have at times missed a continuing application and a polite response from the attorney asking me to consider the references and make them of record on the search notes was provided. I saw this, and immediately went back and checked the relevant patent and noted it on my search notes. I would recommend something similar to the above to include in a response to a rejection where there is no explicit statement by the examiner.
You can start sxcking it again, pingaling.
“For a patentee to get sanctioned in this way for asserting a patent granted by the USPTO and presumed valid is inexcusable. ”
I was thinking about that just last night.
“Everything downstream from that, including the costs — especially the costs — is judicial payback.”
Yeah I know right?
“Does anyone have details on what the “modification” would need to be to read the claim on MS’s ribbon?”
Pretty much anything in line with the spec. It isn’t like it is some sort of monumental feat to understand what he is trying to claim.
“Or maybe the CAFC is basically saying that the patentee didn’t argue the missing element, so they can go ahead and ignore it for obviousness analysis. Which one appears more likely based on the arguments presented? ”
Lulz if true. Can examiners do that too?
“Conversely, should Exmainer’s start saying that the missing element is “too easy,” ”
Lulz, and here I think some people get errors for doing that.
What we are missing in this analysis is PH having the chutzpah to accuse a USDC judge of impropriety. Everything downstream from that, including the costs — especially the costs — is judicial payback. That’s the only way to make sense of this mess.
Neither the USDC nor the CAFC had the bxlls to get their pound of flesh by holding PH in contempt because then it becomes an evidentiary issue and PH’s accusations themselves become triable and, potentially, verifiable.
For a patentee to get sanctioned in this way for asserting a patent granted by the USPTO and presumed valid is inexcusable.
6 said, “PH should … have … stuck to the tried and pretty true (until this year anyway) missing element.”
6 also said below, “But hey, if we can just wave a magic obviousness wand then I’m down with that.”
And that appears to be the case since Tanaka, at least with certain CAFC judges.
But it’s one thing for the CAFC panel to say, as in Tanaka, that the missing element, though not evidenced anywhere in the prior art, would have been “too easy” to cobble up, and that all of the evidence of secondary considerations (i.e., commercial success and copying by others) made no difference. I mean, that’s bad enough.
But here, the CAFC panel basically said that even though the claim construction has not been settled as to what exactly is the element that is recited in the claim and missing from the prior art, it would still be too easy to cobble up. Maybe that could be an appropriate ruling if the nature of that missing element, even according to the patentee’s advocated claim construction, would still be “too easy.” I’m not sure what claim construction was advanced by the patentee in this case. Does anyone have details on what the “modification” would need to be to read the claim on MS’s ribbon?
Or maybe the CAFC is basically saying that the patentee didn’t argue the missing element, so they can go ahead and ignore it for obviousness analysis. Which one appears more likely based on the arguments presented?
Does the panel’s decision here impact what Examiner’s should do during prosecution? In other words, should Exmainer’s start ignoring missing elements until Applicants argue them? Conversely, should Exmainer’s start saying that the missing element is “too easy,” even though the Examiner provides no construction of the claim terms that recite the missing element?
Tibs, I fully agree.
The decision should be based solely on evidence from the prior art.
Second, the decision itself should be objective, not subjective. Any decision based on the hypothetical opinion of a POSITA is nothing but subjective. It is an opinion.
So long as the decision of the question remains statutorily based on the opinion of a POSITA, we have no real hope of moving to an objective, evidence-based inquiry.
Simple suggestion, remove POSITA from Section 103, and enact in its stead, TSM. TSM is not based on anyone’s opinion. That is why it is a good test.
By not limiting the analysis to published document evidence that existed at the time of the invention, pretty much many inventions can be viewed obvious in hindsight and the impermissible hindsight analysis be hidden in lawyer-like language:
1. Circular argument – 103 Obvious because it was obvious: Odom had merely “cobbled together various pieces of what was already out there in a manner . . . that would have been obvious to anyone skilled in the art at the time of the invention.”
2. Untimely (post Odom patent application) evidence – 103 Obvious because we personally believe it was insignificant because Odom did prove the invention subsequently had a significant impact making it insignificant at the time the application was filed: “However, the court found that difference merely “an insignificant advance over Kavalam.” The court went on to hold that the “weak” secondary considerations presented by Odom could not overcome “strong prima facie” evidence of obviousness.”
We are on the wrong path.
This is IP theft, plain and simple.
Gary; one of the hard-working little guys; was robed.
The only thing cobbled together here was an illegal and unsupported (and unsupportable) “reasoning” for obviousness.
If these courts didn’t want Gary to have what was legally,rightly, and morally his, they should have just told him so:
En banc is more than warranted here.
Going on and on? Je? Well, I’ll give you the precise exchange:
Hawk:
“In case you didn’t know, Platinum Patents drafts and prosecutes patents with more firepower than your garden-variety prosecutor, because our litigation experience brings first-hand insight into what it takes to draft enforceable patents.”
BB:
“Pretty impressive, alright.
“But ‘our litigation experience?’
“On the Platinum Patents website I see Hawk, who is not registered and, I believe, is not a lawyer, and Mr. Kuhn, who has been registered as an agent since only Apr 2008. Presumably an agent because he is, also, not a lawyer.
“How much ‘litigation experience’ can you have?
“I also wonder whether there is an unauthorized practice of law issue if a non-registered person is paid $160/hr. or any price to ghost-write applications that are then filed under a registered agent’s number.
“You might want to check your business model.”
Posted by: Babel Boy at February 16, 2011 9:26 AM
I might also add that the CAFC smack down puts into further question how valuable Hawk’s “litigation experience” is in drafting “enforceable patents.” Personally, I’m happy to be “garden-variety” non-litigating prosecutor if the alternative is drafting applications like US Pat. 7,363,592 .
What’s wrong with you, Moonbeams? Can’t you read the thing?
The USDC’s comment clearly predicates the finding of obviousness on the manner in which the invention was made, in clear violation of 103.
Even if the CAFC did not apply this rationale, it is such a clear misstatement of the law it raises the question of why Lourie would put the quote in his opinion. He’s only showing us that he doesn’t understand obviousness.
Oh, definitely. I would not argue that citing the parent on the IDS would do the same thing. But if applicant so chooses to not include the parent on an IDS, then one should request that the examiner make it of record so that the decision of whether the examiner did or did not consider the reference is not left to a third party.
You are a good man Friend,
Stay the h_e11 away from 6.
I have at times missed a continuing application and a polite response from the attorney asking me to consider the references and make them of record on the search notes was provided. The response was something like the following:
Applicant would like to thank the examiner for considering the references in the parent application. However, it is noted that the search notes do not include a reference to the 090 patent which is a parent to the current application. MPEP 904 [R-5] and MPEP § 719.05 instructs the examiner to include a statement in the search notes that the examiner has considered the parent. The Applicant respectfully requests that the examiner consider the 090 patent and note as such on the search notes to clarify the record.
I saw this, and immediately went back and checked the relevant patent and noted it on my search notes. I would recommend something similar to the above to include in a response to a rejection where there is no explicit statement by the examiner. If stated politely, most examiner’s will oblige. Most examiner’s probably aren’t even aware of this part of the MPEP so I wouldn’t think that politely pointing it out to them would hurt. At least I’d like to think so.
Friend,
you will note that the Rule overrides the MPEP and the Rule (as I so helpfully fully augmented) along with your helpful MPEP comment clearly shows that merely listing the parent application on the signed IDS is enough to properly and fully convey that the parent’s references have been considered.
Nothing more is required – only exceptions are to be noted.
Actually – this stuff aint that all nuanced (it just be that wtvlfdt be way way too full O himself).
“Funny that you can’t step up the plate, pingaling. Wet your pants again?”
Lolz right back atcha Sunshine. tell me exactly what I wet my pants about? Tell me what plate I am not stepping up to? Like I done asked you – what be your point O the question?
Not step up to the plate?
Project much?
Cmon bigboy, step up and esplain your question. Out with it – what is the point ya tryin ta make?
Why cant ya answer?
Just thought I’d share that part of the MPEP to generate discussion. I don’t think it had been brought up before.
Where the cited prior art of a parent application has been reviewed, this fact should be made of record
To me personally, this part of the MPEP requires an examiner to note if the parent application’s references have been considered to keep the record clear. If this is required of an examiner and we are to assume that the examiner follows the MPEP to the letter, I don’t think that one can assume that the references have been considered if the information is not of record. I also personally think that this section is particularly relevant to the instant case. How one would interpret the “should” I guess is not up to me. But I really hope that if the case is relying on the examiner to follow the MPEP, I hope that this section is discussed in the decision.
However, as an examiner, when I search the references of a parent application I include this information on the search notes. If for some reason I have not considered a reference, I explicitly cite that on the search notes as well. If the parent application has not been referenced on my search notes, it’s because I somehow missed the parent application and the references were most assuredly not considered.
And welcome to Sunshine’s world of goal-post-moving responses…
“In certain instances… would have”
Funny, this just dont compare too favorably to your “” (heavy-handed-as-usual-and-as-usual-incorrect) pronouncement.
“Welcome to the Malcom-Make-Believe world of grown-up inventing, and law-creation pingaling.”
Fixed.
Or am I being too nuanced for you?
Again: if you disagree with the statement that MPEP rules have an effect on what a court may presume that an Examiner has done, just let us know, pingaling.
Otherwise, I’ll assume (and it’s a dubious assumption) that with respect to this issue you are not DAAFR.
Funny that you can’t step up the plate, pingaling. Wet your pants again?
O wait, that kinda defaltes what Sunshine be blowin, dont it? Dammm the law, it just gets inthe way of Sunshine-wanna-be-law.
The patentability of the claims wasn’t “negatived” by how they were made. But the weren’t helped by the fact that they were merely cobbled together.
In certain instances, the existence of a technological hurdle (real or perceived) would be evidence of non-obviousness. Such a hurdle would certainly have helped the claims.
On the other hand, if such a hurdle had existed, the invention claimed here might not have been conceived or it might not have been enabled as of the filing date.
Welcome to the world of grown-up inventing, pingaling.
Friend,
Perhaps you will be a bit more gracious than the Hoity-Toity-think-they-know-it-alls that dont know how ta be gracious to the kindly help I provide…
“as required for all continuation and continuation-in-part applications”
Nice start.
“Record the application number of a parent application that is still pending or abandoned, followed by “refs. checked” or “refs. ck’ed.” If for any reason not all of the references have been checked because they are not available or clearly not relevant, such exceptions should be noted.”
Note that the examples are just that: examples. They are not directives.
Also note that only the application number of a parent application need be checked, followed by “refS. checked” as a fully permissable path (that might be too nuanced for teh Uptight-Know-It-All). Now IF a reference AINT BEEN checked, THEN the examiner is directed ta note such exceptions.
From MPEP 904 [R-5] How to Search
In all continuing applications, the parent applications should be reviewed by the examiner
for pertinent prior art. Where the cited prior art of a parent application has been
reviewed, this fact should be made of record in accordance with the procedure set forth
at paragraph II.(E) of MPEP § 719.05.
And from MPEP § 719.05.
(E) A review of art cited in a parent application or an original patent, as
required for all continuation and continuation-in-part applications, divisional
applications, reissue applications and reexamination proceedings, or a review of
art cited in related applications.
Record the application number of a parent application that is still pending or
abandoned, followed by “refs. checked” or “refs. ck’ed.” If for any reason not all
of the references have been checked because they are not available or clearly not
relevant, such exceptions should be noted.
Examples
S. N. 495,123 refs. checked
S. N. 490,000 refs. checked
S. N. 480,111 refs. checked except for Greek patent to Kam
S. N.410,113 refs. not checked since the file was not available
Record the patent number of a parent or related application that is now patented
or of an original patent now being reissued with “refs. checked” or “refs. ck’ed.”
If this information is not recorded in the examiner’s search notes, I think it should be assumed that the examiner did not consider the references in the parent application.
“If there was some technological hurdle”
Lolz – the famous Technological Hurdle test – it be right there captured in the law at 103(a): “Patentability shall not be negatived by the manner in which the invention was made.”
O wait, that kinda defaltes what Sunshine be blowin, dont it? Dammm the law, it just gets inthe way of Sunshine-wanna-be-law.
Actually, the fact that the pieces are “cobbled” together is key. If there was some technological hurdle involved in implementing the claimed method on a computer, then the invention might not be obvious.
But of course there was no such hurdle. Thus, combining the pieces together was obvious. The claims would be no less obvious if a limitation was added, “wherein one of said tools turns magenta”.
And maybe if he relays to the Applicant what he has read as to what the Applicant has captured… then it will be .PERIOD! that is what will make Patents strong. What will it take for a little.. Oh i get what your saying from the Examiner.. to yah from the Applicant. I’d call that MARBLE.
“6, I haven’t studied the case, but your post here suggests that the most crucial element of the claims was not in the prior art. If this is true, it would seem, therefor, that the Feds must have “overlooked” this element in deciding that only difference between the claim and the prior art was whether there were more than one toolbar.”
Overlooked or magicked away. It is hard to tell which. Of course, PH going on and on about nonsense doesn’t help matters.
“If this is indeed true, the case represents one more example of might makes right, or as stated elsewhere, the patent owner could not aford good attorneys and therefore lost, and not only lost, ended up paying Microsoft’s costs.”
That is, unfortunately, the way I see it.
On the other hand, might does make right.
You get my drift.
There are more than two defining methods… You need to think tank… Bring it before Congress. Now we all know that Infringement has it’s own special bent… But in order to make Patents very strong…..You need to separate a CIP from a DIP from a whole new Idea. When I went in , I was misunderstood. So much so that what I was relaying was ignored. That is different from what I am saying here.
There are more than two trains of thought. An Examiner needs to understand what the Application is about ….. PERIOD. Then if it is not CIP’d or DIP’d by the time it is Patented, then it becomes new matter to a whole new entity. PERIOD.
THINK Get a grip. This will make it all fair.
Change the structure, and make it stick. If you don’t capture it in the Application, the CIP or the DIP before someone else does TUFF…And after that time it it is New matter to a new entity.PERIOD
6, I haven’t studied the case, but your post here suggests that the most crucial element of the claims was not in the prior art. If this is true, it would seem, therefor, that the Feds must have “overlooked” this element in deciding that only difference between the claim and the prior art was whether there were more than one toolbar.
If this is indeed true, the case represents one more example of might makes right, or as stated elsewhere, the patent owner could not aford good attorneys and therefore lost, and not only lost, ended up paying Microsoft’s costs.
Well done Federal Circuit. Gives me a lot of confidence in the judicial system. A lot.
And it struck me as you going on and on about something he already warned you about awhile back and yet another example of why we can’t have nice things.
“However, the court held that the asserted
claims presented ‘one of the clearest’ cases of obviousness
that had come before it because Odom had simply ‘cobbled together various pieces of what was already out there
in a manner . . . that would have been obvious to anyone
skilled in the art at the time of the invention.’ ”
OK, well, one small legal point that apparently escaped the USDC: the manner in which the pieces are “cobbled together” is irrelevant as to the question of obviousness.
One wonders why Lourie would focus on this quote from the USDC. It suggests that Lourie doesn’t understand the law of obviousness anymore than the USDC did.
It was surely gratifying to Microsoft that they could rely upon their own patent as invalidating prior art. Though this patentee fought up to the CAFC, Microsoft’s patents proved their worth. Anybody want to comment on the quality and value of the Microsoft patent?
Considering that Kavalam was in effect cited prior art Odom seems to have had good factual position on obviousness. The shift in jurisprudence has made enforcement more difficult for all patent holders. Just look at the string of patentee-losses in the smartphone patent wars.
If memory serves, which it often does not anymore, ostensibly he disabled comments in response to my questioning whether he is involved in unauthorized practice of law, the issue being him drafting patent applications when he doesn’t have a ticket. A number of folks chipped in with their own concerns, and — pruoooffttt — he pulled the comments-plug, which struck me as an admission of guilt.
Actually, the Microsoft v. i4i case shouldn’t impact this case at all. The Federal Circuit is still operating under the clear and convincing standard, regardless of whether the examiner considered the reference or not. In this case, they still found the claims obvious. So, it doesn’t matter whether the Supreme Court relaxes the standard in the i4i case – it’s not like their ruling can make Odom’s patent Even More Obvious.
An Ode to the Seals and Obama. With apology’s to Leonard Bernstein and Barbra Streisand.
My Name is O-BAM-A
My mother said that Barrack came from the USA.
But last week she said, He was one special baby for sure.
I don’t believe in what the Dorks say.
They’re all in the Zoo. Busy with their own who do’s.
And who’s the President anyway.
His name is O-BAM-A.
“:Sure. Whatever. That’s because virtual objects have much more inherent flexibility, if you will (infinite, really), then real-world objects, a fact which everyone skilled knew long long before Odom’s application was filed.”
Oh I’m quite aware that they did, but there is still a missing element. In fact, that is the only thing missing from the prior art so far as I can see, and so far as the CAFC seems to think. But hey, if we can just wave a magic obviousness wand then I’m down with that.
“*yawn* We’re talking about moving virtual objects around on a screen. When was this app filed? 1963? The additional step of shrinking, twisting, inverting, enlarging, distorting, blah, blah, blah performed on any virtual object: obvious per se unless you have some profound unexpected result.”
Well if that’s what they want to hold then that’s fine by me.
“Maybe claiming the technical aspects of the invention instead of the softie waftie bxlxoney would help.”
I agree, although I still think it would have been nicer of them to go all 101 on him. Even on summary judgement where 101 wasn’t yet raised lol.
And are we looking at dividers or are we looking at method steps? Because so far as I’m aware, we’re looking at method steps in this claim. Not dividers per se.
Nice try, but the real world dividers are movable so when you move them … that’s a method.
And I have looked at the dividers and the implicit methods of their use, and there are quite a few of the ancient ones that do not allow you to “divider” the toolgroup itself down into a more compact form.
Sure. Whatever. That’s because virtual objects have much more inherent flexibility, if you will (infinite, really), then real-world objects, a fact which everyone skilled knew long long before Odom’s application was filed.
And I have also seen the PA utilized in the case, and there is no indication of this method step limitation taking place.
*yawn* We’re talking about moving virtual objects around on a screen. When was this app filed? 1963? The additional step of shrinking, twisting, inverting, enlarging, distorting, blah, blah, blah performed on any virtual object: obvious per se unless you have some profound unexpected result.
Maybe claiming the technical aspects of the invention instead of the softie waftie bxlxoney would help.
He disabled comments a few months back. At the time I thought it pretty thin-skinned for someone who likes to dish out to the CAFC judges and pretty much anyone else who disagrees with his worldview. Now I wonder how the timing of that meshed with the oral arguments before the CAFC…maybe he saw what was coming down the road and disabled comments b/c of that?
Maybe he’s going to petition for rehearing en banc as to whether or not the “that isn’t a good enough improvement to warrant a patent” standard is the proper standard. I probably would. And then I’d note a missing limitation. And then I’d fight like a he ckcat to overcome 101. Hopefully the court would kill me on 101 though. But that’s just how things would play out in a perfect world.
“Try looking at some real toolboxes with moveable dividers sometime. They’ve existed for centuries.”
Centuries or years?
And are we looking at dividers or are we looking at method steps? Because so far as I’m aware, we’re looking at method steps in this claim. Not dividers per se.
And I have looked at the dividers and the implicit methods of their use, and there are quite a few of the ancient ones that do not allow you to “divider” the toolgroup itself down into a more compact form. They only allow you to “divider” your whole section down to the length of the overall toolgroup. That is, there is always a minimum number of tools displayed and you can’t make that number smaller by using the divider. Indeed, that was most annoying back in the day, and it may very well have been obvious to make one to allow that to happen, yet, if you’re going to do a legal analysis then you’re going to need to do it correctly. And I have also seen the PA utilized in the case, and there is no indication of this method step limitation taking place. Keep in mind that this is a method claim, not a product/apparatus/composition claim.
“Yes, pretty much, by virtue of your comments above.”
Um, No.
If you want to make assumptions – then they be your assumptions. Didnt anyone teach you how not to over-read somethin?
“But if you disagree”
Um, No.
Whether or not I agree or disagree hasnt even been reached.
Why don’t you first make your point from your comment at Reply May 05, 2011 at 12:32 PM (if ya have one) — what is the point of your question “Would you also argue that the MPEP rules have no effect on what a court may presume that an Examiner has done?”
As I done said – dont put words in my mouth.
Yeah they seemed to say that since they were waving their magic obviousness wand then it didn’t really matter. I was fairly disappointed in the whole decision to be frank, but on the other hand, they might have been poed that he was all picking on the district court. And on a third hand, they probably didn’t want to have to raise 101 sua sponte to end this claim.
In any case, PH should not have raised what were surely loser arguments and should have stuck to the tried and pretty true (until this year anyway) missing element.
pingaling I simply helped ya out by pointing out the unless portion of the very rule ya bandied about.
Uh …. no. You did a little more than “simply pointing out the unless portion” of the rule, pingaling (as if it was even necessary — wtvldt wasn’t ignoring any part of the rule).
Do you need more coffee to help your memory?
The Patent Prospector site is usually quick to comment on CAFC decisions.
For some reason there has been no mention of this one there.
Yes, pretty much, by virtue of your comments above.
But if you disagree with the statement that MPEP rules have an effect on what a court may presume that an Examiner has done, just let us know, pingaling.
Otherwise, I’ll assume (and it’s a dubious assumption) that with respect to this issue you are not DAAFR.
Feel free to correct me, though.
“Got that, dipshxt pingaling?”
Mighty defensive there wtvlfdt – specially as I simply helped ya out by pointing out the unless portion of the very rule ya bandied about.
You are not very big on being helped out are ya?
“looks like an axxhole.”
Says the person who picks on cancer survivors.
Lolz
This decision is labelled as nonprecedential. The propositions of law were all known, and the decision on the facts matters only to the parties.
However, the CAFC quoted a passage from KSR: “In situations where the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.”
It is therefore natural to expect more summary judgment applications against weak patents.
Thanks, David. My point was clearly too nuanced for those without even a cursory command of prosecution practice, such as DAAFR pingaling.
Whenever you file a continuation or divisional, submit an IDS that simply lists all of the art submitted and/or cited in the parent application(s). No copies of the prior art needed. See Rule 98(d). Easiest way to insure that the prior art from the parent application(s) is “considered” without relying on the examiner to follow the directive of the MPEP.
Got that, dipshxt pingaling?
Please do not put words in my mouth – I dont know where you may have had them.
“Okay, so you agree that the MPEP rules have an effect on what a court may presume that an Examiner has done.”
Did I say that?
Davie – did I say I was addressing wtvlfdt’s point?
Ya always jump ta conclusions? Clearly, I was helping wtvlfdt out by posting the rest O his parsed rule.
You do get the “unless” portion right? You do get how that augments wtvlfdt’s message right?
Do I need ta hold your hand too?
lolz ta Sunshine – reaching high on the creativity scale again for you replies.