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   Author  Topic: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY  (Read 20477 times)
Cibola
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Posts: 25
Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #25 on: Jan 24th, 2006, 11:06am »
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Of Eric's comments, a link to Lemley's gold-plating paper (as well as Kesan's "optimal ignorance" paper in the UHouston LR) may be found in Patently-O.  Some discussion of Lemley's approach to patent valuation may be found at IPBiz
(ipbiz.****/2005/12/valuation-of-patents.html ).
 
I agree as to the lack of value of a European style opposition for US practice.  Several US attorneys, including Joe Hosteny, have been attacking this proposal for some time.  It is quite ironic that Jaffe and Lerner, who complain about the involvement of lawyers in US patent practice, advocate the opposition procedure, which would introduce more lawyers.  This is one example of so-called patent reformers creating more problems, rather than introducing efficiency into the patent system.
 
Of the Microsoft "motivation" point, note the interference proceeding over the rights to the "Dolly patents" between two US companies, who separately had picked up rights from various entities (eg, Geron from Roslin Biotech).  This truly was a "bet the ranch" case, yet the effort was so bad that when the attorney for the junior party finished his presentation, the judges told the lawyer for the senior party not to bother with his case, because he had already won.
 
Of the Graver Tank discussion, I assume we agree that Graver Tank has nothing whatsoever to do with collateral estoppel.
 
 
 
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Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #26 on: Jan 24th, 2006, 11:48am »
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The first Graver Tank case (on invalidity) has some relevance to the recent LizardTech case decided by the Federal Circuit, discussed for example on IPBiz
(http://ipbiz.****/2005/10/lizardtech-ucberkeley-lose-to-earth.html).
 
How much discussion of individual species is deemed to give written description support for a genus?  
 
Is this UC/Berkeley patent another poster child for a bad patent (as some say the UC/Berkeley Eolas patent is)?
 
I am not sure what Eric means by an outlier?  Does that mean the Eolas patent is valid, but nevertheless disruptive to innovation?  What?
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Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #27 on: Jan 28th, 2006, 11:07am »
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Of relevance to the patent "quality" algorithm of Wagner, note that footnote 76 of Gideon Parchomovsky and R. Polk Wagner, 154 U. Pa. L. Rev. 1 (Nov. 2005), complete with the assertion about the USPTO approving 97% of all patent applications made it all the way to eBay's brief to the US Supreme Court in eBay v. MercExchange:
 
Generally, when reexamination occurs, one recent article states that nearly 74% of the time finds the patent invalid or restricts its claims. (…) This result is unsurprising given that an overworked PTO can spend a mere 18 hours on average to review a patent application before initial issuance. [citing to Parchomovsky (but not mentioning co-author Polk Wagner), 154 U Penn L Rev 1 and then citing to Cecil Quillen (but not mentioning co-author Webster), specifically the FIRST Quillen/Webster paper, 11 Fed. Cir. B J 1 (estimating the rate of patent approvals by the PTO to be 97%).
 
The connection to Wagner in the brief is obscured by the failure of eBay's lawyers to cite second authors in multi-author papers or to even denote et al.  The 97% number, which was proposed only as an estimated bound for grant rate by Quillen and Webster, was modified by Quillen, Webster, and Eichmann the next year to 85%, but you would never know that from what eBay told the Supreme Court.  The method of Quillen and Webster, which subtracts the number of continuing applications from abandonments without showing that there is an antecedent abandonment to justify the subtraction, has been shown to be wrong, but you never know that from what eBay told the Supreme Court.
 
Of the remark in the eBay brief about re-examination of patents, about 75% of all reexamined patents incur SOME change to SOME claims, but only about 13% have all claims canceled.  One recalls in the director-ordered re-exam of the claims of the Eolas patent (of relevance to the litigation with Microsoft), NO CLAIMS WERE CHANGED, in spite of the assertion by many in the open source community of the invalidity of the claims of the Eolas patent.  [I am still not sure about the remark in this thread of the Eolas patent being an outlier.  I would agree that one cannot formulate patent policy based on a perceived problem about one patent.  I would also state one can't formulate patent policy (or write briefs to the Supreme Court) about a non-existent 97% grant rate at the Patent Office.]
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Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #28 on: Feb 4th, 2006, 9:36am »
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An interesting irony has developed in the brief of eBay in the now-pending Supreme Court case eBay v. MercExchange, reviewing  MercExchange v. eBay, 401 F.3d 1323, 74 USPQ2d 1225 (CAFC 2005).   The eBay brief noted, that subsequent to the district court decision, the PTO had found claims of US 5,845,265 invalid (actually rejected in a non-final Office Action), suggesting that eBay was being persecuted by a patent now known to be invalid.  
 
The eBay brief failed to note that  
 
1.  The art relied on by the PTO in the re-exam (90/006,956) was the SAME ART (US 5,664,111) which was found not to invalidate the MercExchange patent by the district court and affirmed by the Federal Circuit.
 
2.  The art relied on by the PTO in the re-exam was 102(e) art which was not even publicly available at the time of filing of US US 5,845,265.
 
The irony is this.  While effectively criticizing MercExchange for the rejections claims of the '265 patent over art not available when the '265 was filed, the eBay brief also cited Cecil Quillen, 11 Fed. Cir. B. J. 1, 3 for "estimating rate of patent approvals by the PTO to be 97%."   Although not mentioned in the eBay brief, Quillen and Webster corrected their view of estimates of the Grant Rate number the following year (12 Fed. Cir. B. J. 35 (2002), discussed in 86 JPTOS 568 (2004)).   Thus, eBay criticizes MercExchange over something MercExchange could not have known at the time of filing, BUT eBay cites to a false number (97%), the correction for which eBay could have learned before filing its brief.
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Isaac
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #29 on: Feb 6th, 2006, 7:42am »
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on Feb 4th, 2006, 9:36am, Cibola wrote:
An interesting irony has developed in the brief of eBay in the now-pending Supreme Court case eBay v. MercExchange, reviewing  MercExchange v. eBay, 401 F.3d 1323, 74 USPQ2d 1225 (CAFC 2005).   The eBay brief noted, that subsequent to the district court decision, the PTO had found claims of US 5,845,265 invalid (actually rejected in a non-final Office Action), suggesting that eBay was being persecuted by a patent now known to be invalid.  
 
The eBay brief failed to note that  
 
1.  The art relied on by the PTO in the re-exam (90/006,956) was the SAME ART (US 5,664,111) which was found not to invalidate the MercExchange patent by the district court and affirmed by the Federal Circuit.
 
2.  The art relied on by the PTO in the re-exam was 102(e) art which was not even publicly available at the time of filing of US US 5,845,265.

 
Unless ebay is implying inequitable conduct on the part of the patentee, I don't see anything wrong with pointing out the PTOs latest take on things.   In particular, argument 2 is just one of those things patentees and practitioners have to live with.   Not all prior art is even potentially findable prior to filing.   The relevant question is whether the application should have been taken into account at the time the infringement action was filed.
 
Quote:

 
The irony is this.  While effectively criticizing MercExchange for the rejections claims of the '265 patent over art not available when the '265 was filed, the eBay brief also cited Cecil Quillen, 11 Fed. Cir. B. J. 1, 3 for "estimating rate of patent approvals by the PTO to be 97%."   Although not mentioned in the eBay brief, Quillen and Webster corrected their view of estimates of the Grant Rate number the following year (12 Fed. Cir. B. J. 35 (2002), discussed in 86 JPTOS 568 (2004)).   Thus, eBay criticizes MercExchange over something MercExchange could not have known at the time of filing, BUT eBay cites to a false number (97%), the correction for which eBay could have learned before filing its brief.

 
Even the numbers in the second paper were panned in that JPTOS article.   I don't think it matters much whether the 97% or the 85% number is used.  I'd question either the integrity or the familiarity with patent practice of someone making an unqualified citation to either Q+W paper.  
 
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Isaac
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