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« XY, LLC v. Trans Ova Generics, L.C. (Fed. Cir. 2018) | Main | Conference & CLE Calendar »

May 31, 2018


Am I the only one that thinks that, on the particular facts of this case - namely that the phrase in question was added by examiner's amendment - the PTO should be estopped from considering the purported indefiniteness of the claim as a result of the addition of this phrase? It's inconceivable that the PTO can suggest an amendment, thus indicating that that amendment passes muster under 112, and then after grant say, "Oh, we changed our minds". On the facts of this case, consideration of such a challenge should have been reserved for the courts.

I am relieved that the CAFC came to the correct conclusion, and that it appears that Telebrands is on its way to getting what it deserves, namely an injunction and payment of damages for infringement. Unless, of course, the PTAB concocts some other non-prior art reason to invalidate the claims.

I'm confused by the Tinnus exemplar you give of why patent owners are frustrated with the patent system with what appears to be a political attack on the "mainstream medium" for pointing out the very thing the Tinnus case seems to illustrate. Whatever liberties that may have been taken by a comedian like John Oliver ( I don't watch his show), the patent community needs to develop a thicker skin. In fact, the old adage may apply here. i don't care what you say about me; just spell my name correctly.

Dear James (spelled correctly I hope),

Thank you for your comment. My point about the Tinnus case was expressed well by Atari Man’s comment above. My “attacks” on the mainstream media have been previously documented on the blog (including the links provided in this post). However, I consider my commentary to be more a complaint against the mainstream media’s largely one-sided portrayal of the patent system, focusing on the bad actors (or sometimes only perceived bad actors), while failing to explain the benefits of the patent system. To be fair, I don’t fault Jon Oliver – I do find him to be funny, and his humor wouldn’t be as funny if he had to explain the nuances of his subjects. And Laura Sydell, who put together the This American Life episodes, did give a short explanation of the benefits of the patent system, although it was generally buried in the rest of the story that sensationlized a patent case for an invention that turned out to be novel and pretty useful. Instead, for that case, the downfall for the patent holder was an inventorship problem (which was a bizarre twist considering Ms. Sydell could have picked so many other better troll stories). But you are correct, if it was just these outlets railing against the system, I wouldn’t have a problem. But at the time, the anti-patent sentiment almost resulted in the patent reform legislation that would have seriously weakened the patent system in an attempt to curb “bad patents.” For the present case, I thought the linked videos that explained the background of the present appeal did a good job of responding to these other reports (even if they did come four or five years too late). I thought they were worth sharing as a follow-up to my previous coverage of the topic. Again, thanks for commenting.


Andrew, I'll go you one further: the mainstream press and the Silicon Valley tycoons keep trotting out the myth of the "patent troll". That's sooooo 2010. Even before the AIA, the courts were moving in the direction of reigning in troll behavior, and even since the adoption of the AIA, there have been other developments that would have likewise controlled this problem (e.g. changes in the requirements for pleadings, and of course venue limitations).

Today what we've got is a system in which a patent is hardly worth anything, because if it doesn't get killed under 101 (also a post-AIA, judicially created monster that has killed trolls and actual innovators as one), the PTAB will be more than happy to invalidate it. How many bites at the invalidation apple has Telebrands had?

Why have a patent system if it's not going to protect people like Josh Malone?

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