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   Author  Topic: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY  (Read 20766 times)
Isaac
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #15 on: Jan 19th, 2006, 10:53am »
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on Jan 19th, 2006, 8:35am, Cibola wrote:
Isaac and JimIvey may have misinterpreted my earlier remarks. I was responding to the statement -->Do any reasonable people consider Eolas the poster child for improperly allowed patents (claims)? <-- by furnishing evidence of some (perhaps reasonable) people who do consider the Eolas patent a poster child for a low quality patent. I did not say anything about what I thought, so extrapolations to "my" view of obviousness (or anything else) are unjustified from the text presented.

 
Actually it looks like I misattributed a quoted remark to you.  Sorry about that.
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Isaac
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  jamesdivey  
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #16 on: Jan 19th, 2006, 12:02pm »
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Like Isaac, you can substitute "the authors" for "you" in my last post.  When someone posts a quote, it's hard to tell if the quote is offered as representative of the poster's viewpoint or simply as a point of discussion.  My apologies.
 
For what it's worth, my view that patents can't be lumped together in one big pile but must each be considered on its merits is consistent with Mark Lemley's proposal in his "rational ignorance" paper (sorry, don't have a link).  His argument is essentially that, due to the very small percentage of patents enforced (through litigation and licensing, to the extent he could get numbers on licensing), it's best not to devote too many resources to evaluating them until enforced.  Ultimately, he suggested doing away with the presumption of validity -- allowing the first meaningful examination/evaluation to be in court.  In essence, his point is that limiting thorough examination to those patents people really care about is a more efficient use of examination resources.
 
My main problem with that was the harshness of Graver Tank.  He admitted to me that he overlooked that in his paper but had some complex civil procedure, collateral estoppel obscure hair-splitting stuff I couldn't understand to suggest that there's a possibility to enforce a claim after being held invalid despite Graver Tank.  I wouldn't hold my breath waiting for such a result in court any time soon, but it's possible in theory (according to Mark).
 
My solution would have been to perhaps weaken the presumption of validity vis-a-vis the USPTO and maintain the strong presumption with repect to prior judicial/jury evaluations of specific items of prior art and specific arguments for invalidity/unenforceability.  You might call it a reverse Graver Tank.  Mark didn't respond to that, so I don't know if he liked it.
 
Lastly, I think Mark's notion of what constitutes enforcement of a patent is lacking (and I think he admitted as much in a footnote or parenthetical).  A patent which is not litigated and not licensed might still be an effective barrier to entry into a particular market.  Quantifying that "value" and the percentage of such enforcement (i.e., impact on the marketplace) would seem to be extremely difficult.
 
Regards.
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Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #17 on: Jan 20th, 2006, 10:55am »
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Of Lemley, note that he has extended (modified) his position from the discussion in Northwestern LR to now propose a two-tier system, with a presumption of validity applied only to so-called gold-plated patents.  Lemley's "ignorance" paper was later criticized by Kesan, who argued for "optimal ignorance".  All of this discussion ignores most basically that the point of the patent system is to obtain disclosure (not innovation or commercialization).  Further, Lemley's arguments ignore that people affirmatively invest in things because of the presence of patents.  For example, people have invested in BlackLight's technology without having licensed or litigated it.   The Patent Office should not be a party to encouraging bad investments anymore than the journal Science should trick people about the current state of advance in embryonic stem cells.  Lemley misses the big picture (and he's still wrong about the patent grant rate business).
 
As an aside, I don't at all understand your Graver Tank point.  As a factual matter, the patentee got access, through equivalents to manganese silicate, even though a claim, literally covering manganese silicate, had been declared invalid.  What point are you making?
 
Going back to the earlier Microsoft, big companies don't make mistakes point,  recall the testimony, before Congress, of the Exxon executive who stated he evaluated the decision to buy Reliance Electric by reading his college EE textbook during commercials while watching television.  More money was involved in that decision than in the Eolas case.
 
Of software patents, note also 9 Marq. Intell. Prop. L. Rev. 249.
 
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JimIvey
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #18 on: Jan 20th, 2006, 12:01pm »
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on Jan 20th, 2006, 10:55am, Cibola wrote:
As an aside, I don't at all understand your Graver Tank point.

"Graver Tank" is shorthand for the Supreme Court case that you found and its oft-noted holding is that, once a claim is found invalid, it's invalid forever against all accused infringers.  It's a collateral estoppel holding.  To have absolutely no presumption of validity (in Mark's proposal, regardless of how he may have modified it since) would seem harsh in the face of full collateral estoppel if a claim is ever found invalid.  It would seem harsh to allow a claim unlimited de novo challenges to validity requiring no more than a preponderance of evidence to prove invalidity when any one successful challenge forever renders the claim invalid.  I've always seen Graver Tank (the collateral estoppel holding, not the particular fact pattern) as balancing the presumption of validity.  Remove one and the scale of equity tips dramatically.
 
on Jan 20th, 2006, 10:55am, Cibola wrote:
Going back to the earlier Microsoft, big companies don't make mistakes point,  recall the testimony, before Congress, of the Exxon executive who stated he evaluated the decision to buy Reliance Electric by reading his college EE textbook during commercials while watching television.  More money was involved in that decision than in the Eolas case.

I never said big companies don't make mistakes.  My point was that it's hard to imagine a more motivated and better funded challenge to a patent's validity than MSFT challenging browser technology reading on ActiveX.  To suggest that there's this obvious, spot-on prior art right in the HTML standard that MSFT somehow missed or didn't assert properly just doesn't smell right.  That's all.  If I didn't have to work, I could sit around and read through all the documents in the Eolas case and come up with an informed opinion as to why MSFT didn't use that prior art or why that prior art isn't invalidating.  And, in reality, I really wish I could do just that.  Unfortunately, I do have to work.
 
Regards.
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Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #19 on: Jan 20th, 2006, 5:55pm »
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When I think of the estoppel effect of a prior determination of invalidity, I think of Blonder-Tongue Labs., Inc. v. University of Ill. Foundation, 402 U.S.  
313 (1971).  
 
The more familiar Graver Tank case, 339 U.S. 605, was limited to the question of infringement of the four valid flux claims and to the applicability of the doctrine of equivalents to findings of fact in this case.  It did not involve invalidity or collateral estoppel.
 
The less familiar Graver Tank case, 336 U.S. 271, did involve invalidity.  The district court had found invalidity of certain flux claims, which determination was reversed by the Seventh Circuit:  The Court of Appeals considered that because there was nothing in the  
record to show that the applicants for the patent intended by these claims to assert a monopoly broader than nine metallic silicates named in the specifications.  The district court and the Supreme Court found that because the claim read on certain silicates, undislosed and inoperative, the claim was invalid.  There is no mention of estoppel in the case, nor is an estoppel issue presented.
 
Lemley, in  16 Berkeley Tech. L.J. 1045,
talked about the absence of collateral estoppel barring a defendant from asserting invalidity of a patent previously held valid:  Parklane Hosiery Co. v. Shore, 439 U.S. 322, 330 (1979) ("If a defendant
in the first action is sued for small or nominal damages, he may have little incentive to defend vigorously, particularly if future suits are not foreseeable.").
 
 
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