Fed Circuit kills all pending false marking cases retroactively. Are patent infringers next to be dismissed?

11 Jul

In a policy move based on illogic, the Federal Circuit affirmed a USDC decision dismissing a qui tam false marking suit based on false marking occurring prior to passage of the law limiting recovery to actual damages. The law was prospective, but the USDC, affirmed by the CAFC, applies it retroactively in a docket clearing move. This is a policy move by the Court to clear the massive backlog of qui tam false marking cases by effectively pardoning all those who false marked. The decision is doublespeak, as it says what is clearly a court-made pardon is not a pardon. When a court says black is white and the Fed Circuit affirms, the Fed Circuit is showing that, for it, the ends justify the means. The Court appears to me to have found that the Court’s case management is the priority not the enforcement of legal rights. So, the next move will I suppose come if the pending patent troll legislation passes the best Congress money can buy to kill independent inventors cases at the behest of big business lobbying. This false marking pardon sets the stage for the dismissal of all perceived troll cases using the same logic. That is, why not just pardon willful infringement by big business on the basis that such pardon is not a pardon but what Congress really intended to do. I am not a fan of massive qui tam false marking cases, but that WAS the law. If the Federal Government wants to eliminate rights and deny due process, it seems just compensation should be paid BY THE GOVERNMENT. The 5th Amendment’s just compensation clause is there to protect citizens against Government deprivation of due process or taking of property. So, rather than summary dismissal by court fiat, it seems to me that summary dismissal and some payment of just compensation is the proper route.

Here is the Fed Circuit opinion.


Michelle Lee, What Will You Be?

12 Dec

Uh-Oh! Just as we expected (and feared). Another big software patent strategist as PTO Director. This time, the former Google IP patent strategist, Michelle K Lee.

A founder and current board member of ChIPs (Chief IP Counsels), an organization dedicated to advancing the careers of women in patent-related fields.

Board Member of the “Asian Pacific Fund” dedicated to providing resources to the Asian community.

Manager of the Silicon Valley Branch of the PTO.

What does this all mean. It means “Money makes the world go around, world go around, world go around…In the most peculiar ways.”

Big software wants to kill the enforcement of software patents, with Google leading the charge. Michelle K. Lee was their advocate. Now the legislation is before Congress. The legislation will hurt independent inventors by making patent assertion next to impossible for those who are not blessed with the billions of dollars needed to launch software inventions. Who better to ram through the next BAD legislation than one of its chief proponents. Michelle K Lee. See where she stands in her own words

Deja vu! When Big Software (aka IBM) wanted to ram through “patent reform” (first to file and a host of big business earmarks designed to weaken the patent system and tilt it further toward big business), Senator Patrick “IBM” Leahy nominated the patent strategist from IBM, David “IBM” Kappos to this same influential post. Why? To implement that dastardly legislation to put the screws to small inventors and make patents a big business bonanza not accessible to small inventors. The result was Kappos lobbying hard for patent reform with the promise that the PTO would get to keep its revenues. However, all the bad parts got through and the revenue part got limited by being subject to House Appropriations Committee oversight and yes, with sequestration and the need to look for money sources the promised end to fee diversion was set aside and diversion continues.  Not to be sidetracked by ethical considerations, Kappos pushed on with the implementation starting with all the pro-big business aspects of patent reform, especially two big business specialties,  both acronymed FTF, first Fast Track for Fatcats (big companies can pay to jump to the front of the line, underfunded little guys stay back and get screwed over) and First to File (big companies who have in-house patent attorneys, know the rules, and can file super fast will just be “constructively” deemed the real first inventor, even though they aren’t, rather than let the real inventor get the patent the way it used to be).  So that big companies can better steal employee inventions, provisions were included to allow companies to file without having to even get the inventors’ signatures (that way if the employee objects, the employee is SOL). To raise the ante on enforcement so small guys can’t afford to enforce their patents, new burdensome reexamination and opposition proceedings were set up (to run up the costs of enforcement and delay recovery so inventors go broke if they try to assert a patent). But inventors are, by nature, inventive and they invented a way around this big business crap, and that was to aggregate their patents in one powerful entity that could go toe to toe in litigation with big business. So, big business set out on a publicity and lobbying campaign to call those aggregators “patent trolls”, “non-practicing entities”, “owners of bad patents”, “frivolous patentee”, “frivolous lawsuits”, “unfair litigation”, etc. Michelle K Lee, at Google, was a leading proponent of those labels and that strategy. Once the dastardly deed was done, well David “IBM” Kappos bailed before the inevitable bad fallout from patent reform hit and went to a lucrative law firm position. Was it the payoff for a bad deed well done? Small inventors (who have seen this revolving door game many times before) think they know the answer, big business will surely deny it.

So, round two, big business fights back with more money thrown at Congress to try to stop the patent aggregators, which truth be known is really to stop small inventors who have no other recourse due to prior patent “reform”.  So who does the best White House money can buy and the best Congress money can buy put in now to head the PTO. Naturally, the leading proponent of anti-troll patent reform.  So, now we will see the implementation of patent killing rules and laws to block this end run invented by small inventors to find some modicum of reward for their inventions that are being stolen by Google and other big software firms.  Deja vu, round two.

One of the big complaints is that these patent-killing reforms will just result in sending to Asia the American jobs that might have been created were American inventors given a fair shake.  I hope that appointing an Asian-American is just a coincidence, but one has to wonder if she will have the same sensitivity to the inventors in America as would other possible choices.  She is, after all, a Board Member of the “Asian Pacific Fund” which has as its purpose “a need to increase the resources available to the Asian community.” We hope those resources do not include the inventions created by small American inventors and the ‘Asian community’ is the one that is a welcome part of the American community and not the one centered in Beijing, Seoul and Tokyo. Ms. Lee is from Silicon Valley, which is known as a hotbed of invention, so we can only hope here loyalties are with the startups and small inventors she represented occasionally at Fenwick & West rather than their big software clients like Google where she went before being pushed rapidly up the ladder at the PTO.  I have serious doubts that she is being appointed for any other reason than to see to the implementation of anti-patent troll rules and regulations, but I wonder how strongly she will fight against jobflow to Asia. It is, I submit up to Ms. Lee to prove me and other skeptics to follow wrong. Until then, I am operating under the assumption that her motto will be a warning to small American inventors and patent aggregators “Whatcha gonna do when they come for you? Bad Boys, Bad Boys. Whatcha gonna do when they come for you?”  Next move up to you Ms. Lee! From here in St. Louis in the “Show Me State”, I say show us where your loyalties lie! From the heartland of American, and the Gateway to the West, I say to you, I hope it is here in America, so it can remain the home of Yankee ingenuity! God Bless America, Keep it Strong, Resilient and Ever Creative. In the dreams of our inventors lie our nation’s hope for the future. Don’t let the dreams die! Michelle Lee, What Will You Be?

Bruce Burdick, Managing Attorney, The Burdick Law Firm, Alton, IL & St. Louis, MO

Owner, America Invents IP Blog

Licensed: IL, MO, TX & numerous state & Federal Courts

Registered Patent Attorney since 1974

Past President, Illinois Innovators & Inventors

Member, Inventors Association of St. Louis

Past Chairman, Midwest Inventors Conference 1999-2006

Member or Past Member, American Bar Assoc., Licensing Exec., American Intellectual Property Law Assoc., International Trademark Assoc.

Top IP Contributor 2012 & 2013,

[This editorial comment article may be reproduced provided due credit is given as to the source]



USPTO issues updated TMEP

30 Oct

On October 30, 2013, the USPTO issued the October 2013 TMEP, which incorporates USPTO trademark practice, amendments to the Trademark Rules, and relevant case law reported prior to October 1, 2013. The policies stated in this revision supersede any previous policies stated in prior editions, examination guides, or any other statement of USPTO policy, to the extent that there is any conflict.

The manual is found here


USPTO introduces GSPN which is actually SIPO

22 Oct

SIPO is China’s  State Intellectual Property Office (SIPO) hence the nickname for the database as SIPO. The USPTO provides a link to it at deceptively made to appear like the USPTO is the source of the database. Rather embarrassing for the USPTO if you ask me, to plagiarize SIPO and pass it off as GSPN. It seems to be an admission by USPTO that the USPTO patent searching tools are not up to date with such things as GAPS (Google Advanced Patent Search) or FPO (Free Patents Online & Cobalt IP) or the premium patent search sites like Delphion, Lexis/Nexis, and Pantrop IP. Still SIPO provides English language access to Chines patent publications, something that has been unavailable to most inventors and practitioners before. A proper patent novelty search should now include GSPN.


USPTO Proves Independent Inventors Low Priority

14 Oct

Independent inventors watch with amazement as the USPTO shows its true colors. The first thing cancelled by the USPTO? – Yes, the Independent Inventor Conference.

Independent inventors know where they stand in the priority of the USPTO, at the back end of the line. There already was little doubtafter the “Fast Track For Fat Cats” program was adopted to let the rich to, literally, jump to the front of the line for processing while independent inventors go to the back of the line for processing.

Now, if IBM wanted a conference by the USPTO, say to Pat Leahy themselves on the back about the A-IBM-A, would they be as quick to cancel? No that was held on time as scheduled.

Other meetings will be held,

or just pushed back.

Government of the people, by the rich, for the rich. Something got replaced there.




NSA can break your encryption.

06 Sep

The NSA is reported to be able to routinely crack encrypted trade secret communications.

IP attorneys take note.

I suppose if you sue the Government this means you are pretty much at a disadvantage, not only assymetry in size but in data protection.


Microsoft desperate to slow down Google, wins another token patent suit against Motomob

05 Sep$14.5m-in-motorola-patent-licensing-suit/

Losing the commercial battle badly to Google’s Android devices, MS turns again to patent litigation. $14.5 million is not chump change to most companies, but to Google it is a partial victory as MS sought $29 million.


Do playlists for streaming sites violate compilation copyright? Suit contends they do.

05 Sep

In a lawsuit that seem to have a reasonable ground under copyright law for contributing to/inducing copyright infringement, a compilation copyright owner (Ministry of Sound) has sued Spotify for allowing a playlist duplicating the collection of songs on an album covered by a compilation copyright.
Since compilation copyrights cover the arrangement of songs, seems logical to think that unauthorized playlists constituting that exact arrangement might infringe the compilation copyright since the playlist copies the creative essence of the copyrighted compilation. And, to boot, the playlist enables the compilation via links to streams for the content.


Big software and the White House and AIA – the circle of life (or death) for the American patent system

29 Aug
So that no one has any disillusions about whether the White House is firmly in the grasp of the tentacles of big software, the Chief IP Enforcement Coordinator at the White House (Victoria Espinel) has just been given a lucrative position as head of the Business Software Alliance where she will now be in charge of stomping on small businesses in favor of big software.
We thought big software had a hold on Obama and his staff when David “IBM” Kappos, patent strategist at IBM, was nominated by Sen. Patrick “IBM” Leahy and appointed by Obama to be Director of the PTO, we thought it more when the White House and the IBM controlled PTO supported Patrick “IBM” Leahy in his push for adoption of the pro-big software earmark-riddled AIA legislation to gut the patent system, help Wall Street and help certain law firms and make patents even more a game for politically connected fat cats, we thought it confirmed when Kappos bailed immediately after implementation of the AIA and took a plush job with AIA lobbyist  law firm Covington & Burling ([see]where Espinel came from – no surprise) . The small inventors of America, who are arguably the ones really creating American jobs, really stand no chance with this Congress and this Administration and their desire to please big software and the lobbyist law firms for big software. It makes you wonder if Thomas Jefferson was right about patents when he argued against James Madison’s plan to have them in America. You see Jefferson felt they would become a tool of the rich to thwart the natural right of people to ideas of inventors disclosed to them  (Jefferson, like many of our founding fathers, was a Deist who believed in a natural rights theory of property – see Jefferson did not want patents to be awarded to just fat cats as they were for King George, who awarded patents to courtiers not to inventors. Jefferson was sufficiently concerned that the compromise that got the first patent law through put Jefferson as the first “patent examiner”, even before he became President, a position where he was one of three, two of which had to approve an invention to become a patent and thus was in effect managing the patent system [].

But cheer up, the Republican’s record on patents is perhaps even worse.


US Patent Office finally (after nearly 20 years) has PDF patent images online – or does it?

24 Aug

From our “premature-announcement” dept.

GAPS (Google Patents) has had PDF for years, as has, Free Patents Online and practically every other patent search service. PDF patent images are the standard for courts and pdf patent images are readily available nearly everywhere else, so the USPTO announced it has dropped the archaic use of TIFF images and joined the modern world with PDF patent images. Now perhaps the PTO can gradually upgrade its obsolete search engine, perhaps to be more like Google’s or other free services.

Now if they really wanted to update their online services, perhaps the PTO could even make patent authoring software, such as (created by Rocky Kahn and his staff under NSF grant funding and even used by the EPO examiners for examining patents and automating office actions) has had freely available online for years, that would be customer service. Some of us, me included, think the PTO is too beholden to IBM and other big business interests to fulfill its opportunity to encourage small innovators who are the real engine for technological advancement and new jobs (at least new American jobs).

However, despite the announcement,blasted out by email today (8/24/2013) as follows:

“Patent on the Web Upgrade

The USPTO has upgraded the USPTO Full Text and Image Database. It now uses PDF images instead of TIFF images which provides several new benefits including the ability to print full documents. Patent images may be viewed, printed and saved using a standard PDF-equipped browser. A separate TIFF plug-in is no longer required. In addition to the standard page-by-page viewing, users may now also click on a “Full Document” button to retrieve all the patent images at once.”

 a quick check of the link in the notice on 8/24/13 (date of the announcement) reveals the USPTO still uses TIFF images instead of PDF images and require a TIFF viewer like AlternaTIFF or Quicktime. Lack of credibility aside, the PTO is long overdue in switching to PDF, the overwhelming standard of the government and business world, as PDF provides several new benefits including the ability to print full documents rather than do it laboriously page by page. As the notice says if the PTO actually does what it says it already did, patent images may be viewed, printed and saved using a standard PDF-equipped browser. If the PTO actually does what it say it already did, a separate TIFF plug-in will be no longer required. In addition to the standard page-by-page viewing, users may now also click on a “Full Document” button to retrieve all the patent images at once.

I see the PTO is still using TIFF images in PatFT as of the date of the announcement of the switch.

I, for one, would prefer the PTO to just work out some deal with Google and let Google run the PTO full text search engine so it could be done properly and save the PTO millions of dollars in the process. Those millions could much more usefully go to hiring more examiners in the backlogged art units than paying for an obsolete search engine with limited capabilities and a poor interface.