Monday, April 30, 2007

KSR v. Teleflex (deeper diggings)

As Curly in the movie, City Slickers, said, you got to figure out what your "one thing" is, just one thing. Everybody is going to have some key word or sentence they focus on within the KSR decision. For me. the following paragraph is where the paydirt (the gold) is buried. You got to ask yourself, what are you going to do to preserve your "genuine issue of material fact"? How are you going to fashion your expert affidavit? That's true even if all you do is patent prosecution:

To the extent the [Fed. Cir.] court understood the Graham approach to exclude the possibility of summary judgment when an expert provides a conclusory affidavit addressing the question of obviousness, it misunderstood the role expert testimony plays in the analysis. In considering summary judgment on that question the district court can and should take into account expert testimony, which may resolve or keep open certain questions of fact. That is not the end of the issue, however. The ultimate judgment of obviousness is a legal determination. Graham, 383 U. S., at 17. Where, as here, 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. Nothing in the declarations proffered by Teleflex prevented the District Court from reaching the careful conclusions underlying its order for summary judgment in this case.

Everything in the law is a double edged sword. The Supremes declared that PHOSITA is not an automotan. He (or she) is a "person". A person who comes with some degree of "ordinary" creativity. But then again, also a "person" who comes to the stage with other characterisitics of "ordinary" personhood, like being a 'follow the crowd' kind of guy/gal ... to be continued

KSR v. Teleflex (RIP U.S. Patent system) --First Thoughts

The second from last paragraph in the Supreme Court (of Jesters) ruling of KSR v. Teleflex (4/30/2007) caught this fool's eye:
["]We["] build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of ["]our["] shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from [ever] higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts. See U. S. Const., Art. I, §8, cl. 8. These premises led to the bar on patents claiming obvious subject matter established in Hotchkiss and codified in §103. Application of the bar must not be confined within a test or formulation too constrained to serve its purpose.

It ties in nicely with what some refer to as The Religion of Perpetual Progress. Simply put, the fundamentalist believers in this religion use their "common sense" to conclude that "progress" is everlasting and guaranteed to continue in perpetuity while exponentially accelerating towards The Technological Singularity. Regretably, there are only handfuls of people outside the walls of the Supreme Court of Jesters who are aware of dark clouds gathering and threatening the very existence and continuance of the human race let alone perpetuation of the notion that, like diamonds, "Progress" is Forever. The only thing that can be said for the legal geniuses who sit on our Supremist of courts is: Forgive them, they know not what they do.

You can see the exuberent ignorance in their boastful congratulations to themselves. They brag about how "We" build and "We" create. They crow about how we use "instinct" and "inference" to raise our divine selves to ever higher and more glorious plateaus of technological achievement. The sad fact though, is that these Jesters of the Highest Court do not build anything except self aggrandizing words. You can see in their tones that they have not a clue about how the inventing process proceeds. They are so far removed from the trenches that they float on clouds of "palpable reality". Lucky for them, they are not alone. Wiley Coyote hangs there too.

Tuesday, April 24, 2007

Functional / Non-functional DoubleTalk / Non-Double Talk

Is it just me, or does this run of logic from a recent BOPAI decision make any sense to you?

"When non-functional descriptive material is recorded on some computer-readable medium, in a computer or on an electromagnetic carrier signal, it is not statutory since no requisite functionality is present to satisfy the practical application requirement. Merely claiming non-functional descriptive material, i.e., abstract ideas, stored in a computer-readable medium, in a computer, on an electromagnetic carrier signal does not make it statutory. See Diamond v. Diehr, 450 U.S. 175, 185-86, 209 USPQ 1, 7-8 (1981) (noting that the claims for an algorithm in Benson were unpatentable as abstract ideas because “[t]he sole practical application of the algorithm was in connection with the programming of a general purpose computer.”). Such a result would exalt form over substance. In re Sarkar, 588 F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA 1978) (“[E]ach invention must be evaluated as claimed; yet semantogenic considerations preclude a determination based solely on words appearing in the claims. In the final analysis under 101, the claimed invention, as a whole, must be evaluated for what it is.”)"

First off, how does one store "abstract ideas" in a physically real storage medium? If they are abstract, the ideas don't exist in the real world. They belong to the existentially abstract nether world. So what is the PTO's BOPAI talking about?

And speaking of double talk, how can something be "descriptive" and yet non-functional? Doesn't being descriptive inherently provide the function of describing something? What makes a functionality a "requisite" one? Isn't that just circular logic where the rejection supports itself by powers of self-levitation?

Makes no sense to me. But then again, I am just another abstract entity on the abstract Internet. So please do not pay any attention to these rantings.

Friday, April 6, 2007

Failure to Call a Witness for the Defense

Imagine yourself sitting in a courtroom, watching a murder trial.

The Prosecutor calls up a forensic "expert" to examine the blood trail, the collections of carpet fibers and to offer an expert opinion on how obvious it is that the Defendant did it. With that damning testimony in place, the Prosecution rests.

Now the Judge calls upon defense counsel. "You may call your first witness."

"We have no witnesses to call," the lawyer confesses. "We believe that overwhelming evidence and arguments are already in place for us to easily win the case. The Defense rests your Honor."

You rub your eyes. What? No witnesses? No testimony on behalf of the accused? Boy, this poor bastard is going to fry. What kind of self-proclaimed lawyer fails to mount a defense?

On very rare occasions the answer might be, a very clever one. However, in most cases, the lawyer would be a fool to not call up an expert of his own to counter what the other side's alleged expert found to be "obvious".

Time to de-suspend your not too suspended disbelief. This after all is a patent blog. So "obviously" we are not going to be talking about murder trials. But how about appeals in front of the USPTO's BOPAI? How often does the defense fail to call up an expert witness in rebuttal against what the PTO's "expert" (a.k.a the Examiner) found to be "obvious"? Answer: All too often.

Here is a case in point. The BOPAI rules as follows.

For the foregoing reasons and those stated in the Answer, we determine that the Examiner has established a prima facie case of obviousness in view of the reference evidence. Appellant has argued that unexpected results have been demonstrated. Therefore, we begin anew and consider the [totality of the record] evidence for and against obviousness. See In re Oetiker, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We do not find Appellant’s "evidence" persuasive for the following reasons. Expected beneficial results are evidence of obviousness, just as unexpected beneficial results are evidence of unobviousness. See In re Skoll, 187 USPQ 481, 484 (CCPA 1975); In re Skoner, 186 USPQ 80, 82 (CCPA 1975). Here [we find that the] Gleave [reference] teaches that improved results will occur by substituting the VAC thickener for a conventional PMM thickener (see factual finding (7) listed above). Additionally, Appellant’s "evidence" of nonobviousness that is not commensurate in scope with its claims cannot overcome the rejection of those claims. See In re Boesch, 205 USPQ 215, 219 (CCPA 1980) ... [rest of 103 affirmance is here.]

Now you might say to yourself, this is an aberration, not the norm. Actually, I took a quick sampling of several 103 affirmance cases decided in early April 2007 and found the same pattern repeated again and again. Look also here and here and here and here.