Supreme Court Rejects Attempt to Expand Patent Liability, but Limits Defenses | Hacker News Reader

Supreme Court Rejects Attempt to Expand Patent Liability, but Limits Defenses

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The most important text in this Supreme Court ruling is this:

    > District courts have the authority and responsibility to ensure that frivolous
    > cases—brought by companies using patents as a sword to go after defendants for
    > money—are dissuaded, though no issue of frivolity has been raised here.
    > Safeguards — including, e.g., sanctioning attorneys for bringing such suits, see
    > Fed. Rule Civ. Proc. 11 — combined with the avenues that accused inducers have
    > to obtain rulings on the validity of patents, militate in favor of maintaining
    > the separation between infringement and validity expressed in the Patent Act.
    > Pp. 13–14

In the past, the district courts have failed utterly to fulfill this responsibility, and I question whether they have the de facto authority. The cited Rules of Civil Procedure - https://www.law.cornell.edu/rules/frcp/rule_11 - are not a sufficient tool for the courts to fulfill this responsibility with. While this ruling makes it clear that they must do something, it seems as though it obligates them to invent new legal theories.

The most important text in the opinion is dicta?

If only in pointing out to observers like us that no such thing will be happening....

Like in most Supreme Court cases?

> District courts have the authority and responsibility

Foreigner here.

Interpreting that bit literally makes me think that district courts, having the responsibility, can be held responsible for not fulfilling their responsibility. Is this correct, or is the above just waffly moral wording? If it is correct, what would be the means and path of holding a district court responsible?

It's waffly moral wording. It will have no effect. The problem is that issued patents are presumed to be valid, and hence prosecuting those patents is presumptively non-frivolous, even if they are later determined to be invalid. And it has to be that way, otherwise there would be no point in having a patent office at all.

The problem really is not with the courts, it's with the patent office, which is issuing a flood of bogus patents. And they're doing that because there is no disincentive for them to issue bogus patents, while there is a significant disincentive for them to reject a bogus patent: the application can, at very little cost, pester the patent examiner until they cave in. I have personally tested this theory by obtaining a patent on a device that violates the laws of physics (http://www.google.com/patents/US20030133714). I did this just as a lark so that I could have a personal data point to show just how broken the system is. But I didn't aim high (or low) enough. This patent:

https://www.google.com/patents/US6368227

really should have been the one that embarrassed the PTO into real reform, but it didn't.

Very impressive response that more than answered my question and throws up questions like "Why is the patent office not being sued for gross negligence of duty?"

Thanks for being so detailed.

The system just hasn't been set up with the idea that it's important to protect the public against bad patents. I don't know if a lawsuit of the kind you suggest could possibly succeed. What I think is more likely is that Congress will eventually absorb the idea that a counterbalance of some kind is necessary.

My own proposal is that bringing an infringement case should require the plaintiff to provide objective evidence that the invention is nonobvious. This evidence could be along the lines of what are called the "Graham factors" [0]: commercial success; long-felt but unsolved needs; and failure of others to solve the same problem. This evidence could be challenged by the defendant and would be weighed by the court.

This would weaken the presumption that an issued patent is valid; but not, in my opinion, to the point of making the patent valueless.

[0] http://en.wikipedia.org/wiki/Graham_v._John_Deere_Co.#The_Pa...

You probably can't sue the patent office since it is a part of the federal government and enjoys sovereign immunity.

Wow, the swing patent is hilarious, but what I can't figure out is why it is so commonly cited.

https://www.google.com/patents/US8697853 CTRL+f: swing

The Supreme Court can't punish the lower courts but it can overturn them and write opinions that bash them. That is very embarrassing to a judge and they try to avoid it. No judge likes getting overturned.

But that language won't really make a huge difference. Most cases going to court aren't totally frivolous. The frivolous patent trolls avoid court like the plague because they will lose and their patents will be invalidated. Instead they just extort small payments instead of going to court. Some people like NewEgg and Adam Carolla are fighting them, but most just hand over the money.

Yeah this is a punt from the supremes. Not going to happen.

Very sad, that there is still no courage, to effectively limit weak patents.

Weak patents are a hindrance to innovations. In a better world, the patent offices should care for that -- but because they earn money from issuing them, standards have been continuously reduced in the past decades. It also looks better in the "innovation news" of the past year, when more patents can be listed ... but it is just eye-washing.

First everyone at the top needs give up on the idea that patents = innovation, therefore more patents = more innovation. I remember until 2-3 years ago even Obama basically said the same thing in his speech, when he passed that new legislation that gives the patent to whoever files for it first. I don't know if he still believes that now, but many still do in the government.

If anything, more patents = increased ability to restrict competitors from coming into the market or doing more rent-seeking = less innovation.

We have the same thing in Germany. The problem is not, that the politicians are to ignorant or adhere to wrong believes, but for example our chancellor first met with the big corporation bosses -- and they told her, what "innovation" is in their opinion. And of course, the big corporations have a total different view of innovation than others.

It is like asking the dinosaurs, who the most fittest species on earth is.

Why was the government involved in this case and on the side of patent trolls?

In general the government is interested in anything that increases the government's power. Stronger patents make them a more powerful tool.

The Solicitor General can essentially argue in any SCOTUS case he wants or SCOTUS can invite him to (which is treated as a command, he never declines).

While the plaintiff in this case was a troll this isn't a directly troll related case. It applies broadly to all patent holders.

This is a fairly bad ruling. Patents should be thought of as invalid by default, especially considering the rubber stamp methodology used by the USPTO. None of this is addressing how trivial it is to get trivial patents, then use them for monetary gain against those who actually build things.

70 year olds making tech policy is just scary. This is a major boon to "troll" companies and probably sets back any reform movement several years if not decades.

The presumption of validity is ingrained in the patent system. Otherwise, what would a patent grant mean?

I've been involved with my own patents and other patents long enough to see the patent office become relatively less rigorous than when I first started patenting things.

The response could be to weaken the meaning of a patent grant. Maybe the answer is for the government to offer a bounty to overturn grants of patents. But that implies the patent office would be any better at filtering challenges to patents than they are at filtering applications.

>Otherwise, what would a patent grant mean?

Exactly what it is: a government protected idea untested by the courts. If its still untested, it should be assumed invalid. I don't see what's wrong with that.

If there is ever a bounty system, it should be via a 3rd party mediator, not the very same USPTO that gives out invalid patents, many often with trivial prior-art or questionable logic like appending "on a touchscreen device," to an ancient computer science concept.

> Exactly what it is: a government protected idea untested by the courts. If its still untested, it should be assumed invalid. I don't see what's wrong with that.

On that assumption, why bother having the USPTO at all? If something "untested by the courts" is invalid, you're effectively appealing to the court as the arbiter of all innovation.

However, the court system is not equipped to be evaluating innovation claims, either in terms of time or expertise. I suspect the outcome would be worse.

>why bother having the USPTO at all?

Because 18th century economic theory dictated a patent process because back then information moved so slowly it was easy to copy a design and market it as your own with consumers unaware that it was a copy. How this remotely connects to software in the information age is beyond me. I don't see a need for the USPTO at all, outside of trademark protection.

It's a barrier to entry. Even if the court assumes the patent is invalid without the USPTO it would be easy to bring unlimited trivial nuisance suits with a clear incentive for 3rd party's to settle. It also acts as a clear timestamp.

The USPTO patent being assumed invalid is simply to avoid spamming patents until something gets though.

Relevant: http://patentlyo.com/patent/2014/06/proper-presumption-valid... ("According to Justice Breyer’s concurrence, joined by Justices Scalia and Alito, the presumption of validity only provides protection against factual elements of an invalidity challenge. That concurrence, and the Supreme Court’s recent opinion in Nautilus, Inc. v. Biosig Instruments, Inc., suggest that the presumption of validity has no application to purely legal bases for invalidity.")

Assumption of validity isn't the only path. In Australia there is no assumption of validity; the court essentially re-examines the patent when a suit is brought. This doesn't necessarily increase costs/time either, the Federal Court (has patent jurisdiction in Australia) exercises pretty decent case management to ensure that frivolous suits are quickly dealt with.

The USPTO is far from perfect, and examiners make bad calls sometimes... but it is by no means trivial to get a trivial patent issued. And the idea of a presumption of invalidity (as opposed to, say, no presumption one way or the other) is so ludicrous that it doesn't bear response.

It seems reasonable for courts to avoid injunctions or punitive damages for periods prior to a patent being tested in court. Calling this invalid or no presumption is more or less the same concept.

No, it isn't. The presumption goes to how hard it is to assert a patent in court.

That's a good thing in this case. Start with 100 junk patents to the USPTO > one gets though.

Now take that one and threaten a company. Company says the is a BS patent. Take company to court demand injunction + damages. Company responds it's invalid!

Q: Does the court force an injunction anyway?

If it does there is huge incentives to settle even if it’s a BS patent.

Of course it is not trivial to get a patent application threw, but that is the reason, big corporations have highly paid lawyers for that. The whole thing is a shadow-industry of it's own (starting at the patent office, that earns money by issuing patents).

The patent office doesn't get to keep lots of the fees it takes in.

> it is by no means trivial to get a trivial patent issued

Actually, it's pretty easy. Here's how you do it:

1. File the application.

2. Wait for it to be rejected. The rejection will have a point-by-point explanation of why the patent was rejected. (i.e. the patent office is required by law to do your homework for you.)

3. Tweak the application so that the objections raised by the examiner are no longer valid, and re-file.

4. Repeat as necessary.

I have personally used this method successfully three times, and it only took two iterations all three times. The third time I used it on an intentionally bogus patent (http://www.google.com/patents/US20030133714) just to see if it would work. It did.

Like I said, examiners do make mistakes sometimes. For what it's worth though, your claims look pretty lengthy.

> examiners do make mistakes sometimes

That is true, but it misses the point. Apart from the occasional honest mistake, there is a system of perverse incentives that results in the reliable and predictable issuing of bogus patents even when examiners do their jobs well.

> your claims look pretty lengthy.

You must not have read many patents. I have one independent claim and six dependent claims, each with a single minor tweak on the independent claim. That's well below average.

I mean your independent is lengthy. I don't care how many dependents you have if we're talking about the breadth of the patent.

It's about 220 words. I don't have time to do a survey, but I think that's not unusual.

But you're still missing the point: this is an intentionally bogus patent. It's essentially a patent on a perpetual motion machine that I prosecuted simply to test the theory that one can patent anything by using the method I described. The length of the claim is irrelevant.

It's not irrelevant. It's not the examiner's job to figure out if your invention works (although if it clearly doesn't, they might notice). It's his job to find out if it's new and non-obvious relative to the prior art.

Yes, you can hide the ball from the examiner. But if your claim is so lengthy that it'll never be infringed (not to say yours is quite that bad) then what's the harm in allowing it to issue?

> It's not the examiner's job to figure out if your invention works

Yes, it is:

http://www.uspto.gov/web/offices/pac/mpep/s2107.html#d0e1986...

See section II "WHOLLY INOPERATIVE INVENTIONS; “INCREDIBLE” UTILITY"

> Yes, you can hide the ball from the examiner.

My ball was not very well hidden. If my invention worked it would let you communicate faster than the speed of light. I would expect any competent patent examiner to be familiar with the basic laws of physics.

Some examiners are easier to hide the ball from than others. But if your claim can never be infringed under the laws of physics, who cares if you have that claim issued in a patent?

I care, because it is indicative of the lack of care that the PTO takes when making these decisions. I have four other patents which, in retrospect, also should not have been issued, and God only knows how many bogus patents have been issued to other people. Even if 99% of them are harmless that doesn't undo the real damage done by the rest.

In a perfect world, there would be enough funding for examiners to spent a month examining every application that comes in. In the real world, I worry a lot more about overbroad claims being issued than silly, but extremely narrow claims being issued.

I completely agree. I'm not holding up my patent as an example of the problem, merely as a data point to support my claim that getting a patent that does not meet statutory requirements (of utility and enablement in my case) is easy.

You've got one lengthy means plus function independent claim. That is typically a poor claim. Means plus function severely limit claims despite sounding very broad.

Yes, of course it's a poor claim. The whole patent is bogus. That's the whole point.

I mean poor in terms of how good it is to assert against someone. You can easily get a really narrow useless patent, but that doesn't cause any problems.

That's true. But you can also get a really broad bogus patent. I happened not to do that, but many others have, and that does cause problems.

The point is just that the actual bar for getting a patent -- any patent -- is very low if you know how to play the game.

From my experience it's quite easy to get a patent issued if you have enough lawyers on staff. I have been at brainstorming sessions at a big company where we came up with around 10 ideas within an hour and often at least one of them ended up being a patent.

I deal with patents day in, day out. With millions of patents issued and many more examined, there is bound to be some real stinkers. Whether or not a patent is allowed depends on the examiner assigned to the case, the art unit (technology category), the prior art patents the examiner finds (they define the outer limits of the patent claims), the skill of the attorney/agent, the name of the company seeking a patent, and, of course, the amount of money thrown at the examination.

Some examiner are push-overs. Some examiners are impressed with the assignee name (Google, Apple, and such), and may be more likely to allow. Some examiners seem to take pleasure in rejecting the application, even if they cannot find appropriate prior art.

There is variability in the quality of examination. However, there are methods to correct mistakes at the Patent Office. I am often involved with post-grant review procedures to invalidate issued patents. If a patent is truly overly-broad, then it should be possible to find prior art somewhere in the world that can be used to invalidate the patent.

The presumption that a patent is valid only applies in court. There is no presumption during reexamination or an inter partes review process. In fact, it is very difficult to defend a patent in post grant review. The patent owner is very likely to lose its patent or find it severely weakened.

Also, someone here has pointed out an example or two of terrible patents. Even though issued, these patents could be near useless, because the claims are extremely narrow and are easily designed around, if anyone cares to even do this. Most of these patents are like bees without stingers - still buzzing and spinning around, but harmless and soon to die.

One more thing, it irritates me when people in the software world say the patent system is broken and should be abolished, when they may just be looking at it from just a software point of view. There are many true innovations in every field, and at least a few copycats that are waiting for a product to hit big, so they can create a duplicate completing product. Look at the X-Hose getting knocked-off by PocketHose. There should be some protection for those who have created something novel.

You can argue that some people would create innovations without the patent system, which is true; but there are many more who would not bother without the prospect of patent protection. One more benefit of the patent system is that, in exchange for a patent, the applicant must fully disclose how to make and use the invention. Instead of sitting in some notebook or Word file, the information is shared. The maintenance fee system (where a patent owner must pay a fee at 3.5, 7.5, and 11.5 years to keep its patent in force) weeds out many patents, as the owner decides that it is no longer worth the money to keep it alive.

"Look at the X-Hose getting knocked-off by PocketHose. There should be some protection for those who have created something novel. You can argue that some people would create innovations without the patent system, which is true; but there are many more who would not bother without the prospect of patent protection. One more benefit of the patent system is that, in exchange for a patent, the applicant must fully disclose how to make and use the invention. Instead of sitting in some notebook or Word file, the information is shared. The maintenance fee system (where a patent owner must pay a fee at 3.5, 7.5, and 11.5 years to keep its patent in force) weeds out many patents, as the owner decides that it is no longer worth the money to keep it alive."

Insightful, I'm hesitant to agree that people will be dissuaded by having to compete, and will therefore not innovate. I think people should produce what they please and others should choose to purchase whichever product they seem superior. Without any coercion.

A patent is not a monopoly in the pure sense, meaning there is no consumer choice and the consumer must buy what is patented at the asking price. It is quite the opposite in most situations. The competition between companies is fierce. Several companies may have competing similar products, each with their own patents.

I help companies look at patents and find ways to design around the claims or just invalidate them. You would be surprised how often we succeed.

Look at cell phones, there are numerous patents on cell phones, apps, communication technologies, and so on. Yet, there is no lack of choice. We are buried in choice.

Also, I advise my clients to think of every way their invention can be made, including the terrible ways. Many times, the competing, non-patented product will be inferior to the patented product, yet not infringing the claims. The inferior product may just have better marketing. The consumer is usually not an expert in the field and must rely on advertising claims and dubious good reviews.

It is my opinion that patents create constant disruption and competition, which is healthy for the market; and ultimately provides better choice for the consumer. Perfect designs, like paper clips, enjoy 20 years of protection, then eventually become commodities. While imperfect designs will be exploited by the competition, with design-arounds and improvements. And there are very few perfect designs.

Finally, I mainly work with small companies that wish to compete against large companies. They do not wish to be the free R & D lab for the larger company. A patent may allow a small company to compete against the overwhelming resources of a large company; hopefully creating jobs and wealth at the same time. It is still a very hard path that few can navigate. Patents are just one tool to make business a little easier.

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