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   Author  Topic: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY  (Read 20857 times)
Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #30 on: Feb 6th, 2006, 1:10pm »
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Of the text:
 
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.  
 
eBay is not raising an inequitable conduct defense, which would be inappropriate in either a re-exam or in the Supreme Court action (it would be off-point to the question presented, which is about injunctions).  My point was two-fold:  
 
#1.  the IRONY that the only art found to invalidate the MercExchange patent was not publicly known at the time of filing of the MercExchange application (it is 102(e) art and it is available).  In all the discussion of "bad" business method patents and how the claims of same were well-known in the art, this shows that eBay could not muster relevant prior art that was known at the time the patent application.
 
#2.  relevant to the earlier discussion in this thread about collateral estoppel, the IRONY that, after MercExchange prevailed against the '111 patent in litigation at district court, eBay filed a re-exam on the SAME art (the '111 patent) and prevailed in an Office Action that was mailed AFTER the CAFC decision affirming that the '111 patent did NOT invalidate the claims of the MercExchange patent.  The same parties have "litigated" the same issue twice, and but
there is no estoppel against the USPTO.  Of your text "I don't see anything wrong with pointing out the PTOs latest take on things," I don't see anything wrong with mentioning the re-exam BUT I do see something wrong in failing to mention that a DIFFERENT outcome arose over the SAME prior art when considered by the courts.    In New Jersey at least it is a disciplinary rule violation to fail to mention publicly available material information to a tribunal (see In re Seelig).  
 
Of the citation by eBay to the FIRST Quillen paper, my main point is not that the FIRST Quillen paper is wrong (and it very definitely is wrong) but rather that eBay's statement to the Supreme Court is FALSE.  Quillen did NOT estimate the patent approval rate to be 97% in the first paper.  He (and Webster) placed the grant rate between 80 and 97%, and by virtue of his footnote 17, Quillen made clear (at least to those familiar with continuation practice) that the the 97% number was not accurate.
 
As a subsidiary point, in the first Quillen paper, we have concrete evidence that the chief patent counsel of a major corporation did not understand that a patent could issue on both a parent application and separately on a continuing application (including a continuation  application, but also including a divisional application) deriving from that parent.  Anyone who understood that patents can issue from both continuing applications and the associated parent would have understood that the 97% number was not correct, BEFORE reading any of the later papers on the issue.
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Isaac
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #31 on: Feb 6th, 2006, 3:31pm »
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It seems we agree about the citation of the Quillen paper.  
 
I fail to see any ironic significance to the use of previously unavailable art 102(e) art in the re-exam.   Even if the art was unavailable previously, that does not make Ebay any more of an infringer, or make their reliance on the newly found evidence in court any less appropriate.   I don't find it any more ironic than if the new reference was a master's thesis written in Swahili that the Examiner did not have the resources to find during prosecution.
 
Further, there is no doubt in my mind that the previous judgment was in front of the court, but while the court owes some deference to the PTO, it owes none to even its own previous decision.
 
I think I understand your point, I just don't find the issues with respect to the patent's validity very significant.
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Isaac
Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #32 on: Feb 6th, 2006, 4:52pm »
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Of the text
 
-->I fail to see any ironic significance to the use of previously unavailable art 102(e) art in the re-exam.   Even if the art was unavailable previously, that does not make Ebay any more of an infringer, or make their reliance on the newly found evidence in court any less appropriate.   I don't find it any more ironic than if the new reference was a master's thesis written in Swahili that the Examiner did not have the resources to find during prosecution.  
 
Further, there is no doubt in my mind that the previous judgment was in front of the court, but while the court owes some deference to the PTO, it owes none to even its own previous decision. <--
 
First, of the sequence, we have
 
#1.  Litigation before district court with '111 patent asserted in invalidity defense
 
#2.  eBay loses, MercExchange patent found valid over '111 AND, separately, eBay infringes
 
#3.  eBay files re-exam, asserting invalidity over '111 patent
 
#4.  CAFC affirms district court as to validity over '111
 
#5.  PTO mails Office Action finding 3 claims invalid under 102(e) and remaining over 103
 
#6.  eBay mentions result of re-exam in Supreme Court brief
 
The irony is NOT in the fact that the examiner in the initial exam didn't find the '111 patent (he could not have found it, so there is no "resource" issue).  
 
An irony is that for all the talk about how many business method patents are low quality and represent knowledge already in the art, the only reference against this MercExchange patent was a reference that was not part of the known art.  I am not saying that 102(e) art is not available, just that, for all the talk, one would have expected a wall of references.
 
A different irony is that the reference used in the re-exam (the '111 patent) had already been litigated and the appeal decision published (the '111 does NOT invalidate the claims) BEFORE the USPTO mailed its Office Action (the '111 does invalidate the claims).
 
One's view of the force of the eBay brief can depend on the omitted information.  Merely being told of the result of rejection in re-exam, one thinks:  hmmm, some new art led to rejection.  How on earth could the district court think about an injunction when this new art caused the PTO to reject the claims.  What a waste by the district court.  BUT, if one knows the "new" art is the same "old" art fully litigated in district court AND reviewed by the CAFC, one thinks "how could the PTO miss the deficiencies in the art already fully shown by the CAFC?"  What a waste by the PTO.  At the end of the day, invalidity in a re-exam will be reviewed by the CAFC.   Do you believe that the CAFC will find the MercExchange patent invalid over the '111 when it previously found the MercExchange valid over the '111?  
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Isaac
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #33 on: Feb 6th, 2006, 8:33pm »
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I understand the circumstances, I just don't agree with your assessment that those circumstances reflect badly on Ebay's behavior.  
 
And of course I'm frequently wrong.  I would not worry overly much about the fact that we disagree.
 
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Isaac
Cibola
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Re: USPTO PARTNERS WITH OPEN SOURCE COMMUNITY
« Reply #34 on: Feb 7th, 2006, 6:15am »
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I guess that depends on what one means by "badly."  Enitities as MercExchange and NTP have been criticized as trolls who impede innovation through operating more by litigation than discovery of new things.  Here, eBay filed a re-exam asserting prior art that had already been analyzed in a litigation.  The prior art was not even publicly available at the time MercExchange filed its application.  MercExchange's patent was available to eBay at the time eBay infringed.  In its actions in the re-exam, eBay did nothing "illegal" but yet its actions did not bear out the contention that MercExchange's patent claims were well-known in the art.
 
Separately, in mis-stating the contents of the first paper by Quillen and Webster, I would say eBay did behave badly.  People may say just about anything in law reviews, but stating something to the Supreme Court is a different matter.  There is a duty to verify.  There are at least two levels of bad behavior.  First, the statement is not an accurate presentation of what Quillen and Webster said in 2001.  Second, shepardizing the paper would have revealed that a number of authors, including Quillen and Webster, had found the 97% number deficient.
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