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April 4, 2008

Presumed Valid

Microsoft and its counsel, including Theodore B. Olson, repeatedly employ deception in petitioning the Supreme Court to lower the burden of proof for invalidating patents, twisting SCOTUS' own words. As the Supreme Court observed, efforts by Microsoft and other mega-corporations of its ilk to decimate patent protection "stifle, rather than promote, the progress of useful arts." KSR, 127 S. Ct. at 1746 (citing U.S. Const., art. I, § 8, cl. 8).

Of course the Supreme Court did not comment as above on attempted corporate manipulation of the patent system. What SCOTUS observed in KSR was that:

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 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.

Likewise, the Supreme Court was not addressing the burden of proof required to invalidate a patent in the above quote. Yet, in its thrust to lower the burden of patent invalidation, Microsoft put words into the Court's collective mouth:

If the burden of proof in such litigation is not calibrated carefully, it will "stifle, rather than promote, the progress of useful arts." KSR, 127 S. Ct. at 1746 (citing U.S. Const., art. I,§ 8, cl. 8).

Further, Microsoft in its petition:

[T]his Court issued its decision in KSR, wherein this Court observed that the "rationale underlying" the statutory presumption of validity--"that the PTO, in its expertise, has approved the claim--seems much diminished" when potentially invalidating prior art has not been presented to the examiner. 127 S. Ct. at 1746.

But, contrary to Microsoft's attempted feints, the Supreme Court failed to address the issue of the standard for presumption of validity in KSR.

What the Supreme Court wrote in the KSR decision, in the context that the prosecutor failing to cite a particular prior art reference, Asano. The referred "presumption" was that the claim was valid at all, not that the burden of proof should be diminished just because an examiner didn't appraise a prior art reference.

Asano was neither included among the Engelgau patent's prior art references nor mentioned in the patent's prosecution, and the PTO did not have before it an adjustable pedal with a fixed pivot point.

We need not reach the question whether the failure to disclose Asano during the prosecution of Engelgau voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We nevertheless think it appropriate to note that the rationale underlying the presumption--that the PTO, in its expertise, has approved the claim--seems much diminished here.

An old propagandist's trick: twisting meaning by selective quotation out of context.

Integrity and credibility are alien concepts to such manipulators. Aristotle, in expressing that excellence is a habit, not an act, observed, "we are what we repeatedly do."

So too with ethical baseness. An articulate and civilized facade may cover a black heart, lacking empathy and sense of equity. Microsoft's corporate history speaks volumes in this regard, as with this petition, writ small the same.

As to the petition's substance, Microsoft wants the "clear and convincing" standard scrapped for presumed validity under 35 U.S.C. § 282. In its losing to Z4, Microsoft wanted the jury instructed that "the burden to prove invalidity "is more easily carried when the references on which the assertion [of invalidity] is based were not directly considered by the examiner during prosecution."" Neither the district court nor appeals court bought that line.

That may have something to do with the little snag that it makes no sense. Other than maiming case law, Microsoft's petition provides no logical argument for the position that prior art not cited during prosecution intrinsically carries more heft. What difference should it make that an examiner, "in the interest of compact prosecution," relied solely upon the best prior art found during a cursory search? None whatsoever. So, in no way should cited prior art, or lack thereof, affect the presumption of validity.

Olson, you may recall, was the mouthpiece before the Supreme Court in staunching the 2000 Florida presidential election recount, thus paving the way for the ascendance of George W. Bush as this nation's truth-teller-in-chief. Birds of a feather....

Professor Crouch has a well-written entry on the petition. Nicely done, Dennis.

Posted by Patent Hawk at April 4, 2008 1:11 PM | Prior Art


Yeah, Olson: human paraquat, man. Just very smart human paraquat.

Yeah, z4 is getting to be interesting law for a number of reasons. Part of the CAFC's rationale for not applying 102(g) was that the asserted MS s/ware doesn't do what it's claimed to do; therefore, it's not 102(g) PA. Now, there's an embarrassment,Dude -- Gates trying to assert blipped out s/ware. The CAFC's position: this aggression will not stand.

Also interesting in the CAFC opinion is a link to an mp3 file of oral arguments -- see page 25 of the opinion.


This is a great idea, but if you just cut and copy you'll get zip. And I don't mean a zip file. I mean nada. The opinion has a bedeviling space inserted between "/" and "oralarguments."

I don't absorb recorded arguments as well as I do the written transcript, but I love to hear them suits rattle on. It's like Bunny: "Blow. You're not blowwwwing."

But the CAFC's dead link raises some issues. One sees a lot of links being used as citations, particularly in US specifications. They bug me. A patent lasts for 20 years as a patent and forever as PA. An appellate decision lasts for however many generations the courts survive before Koranic law takes over. How long does a link last? Weeks to months, maybe a year.

One problem in academia is libraries canceling hard-copy subscriptions to journals in favor of online access through the journal website. When I was a grad student, I spent an awfully lot of time reading articles in moldy 19th century medical journals. They will be there another 100 years more for whomever needs them. But when an on-line journal goes bust and takes it's website down and there goes all the references. So you have on-line articles citing on-line articles, and it's all just vapor. I believe Greg A. raised this issue a few months ago. It should be a concern.

But if the judges can put a link in an appellate opinion, why can't I put a one in a claim, so long as there is antecedent support for it? "A method for accessing the search engine of www.google.com while soaking in a bath tub with a pis$ed off marmot, comprising the steps of . . ."


Posted by: Bable Boy at April 4, 2008 3:28 PM

Hawk, as I'm an outsider I must perforce comment on the law as it might be, rather than as it is. My theoretical question: can't you have a preponderance standard AND a presumption of validity. They are not mutually exclusive. In fact, in practice, everywhere else in the world, as MS well knows, they belong together.

Posted by: MaxDrei at April 6, 2008 1:22 AM