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Comment by kurthr | Hacker News Reader

If the specification is not enabling and novel to one skilled in the art (much less obvious), then it is not valid. Under rexam or court proceedings they will be worth the paper they're printed on. That's an expensive way to determine things, but it sounds like that particular section of art at the patent office isn't doing much. On the other hand they only have to hide one novel idea and unique claim in the list to have a right to enforce.

I do think the EFF's concern about claims and documentation already debunked/invalid being hidden behind seal is pretty serious and I think judges approving it are doing the public no service.

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When you go to court, the presumption is that the patent is valid. The judge is unlikely to be technical, and he must assume the experts at the patent office did their job. Since the patent office basically rubber stamps anything you send to them, it's a very uphill battle to start with.

In my case, we submitted lots of prior art (some over 100 years old) to the court, and of course they shared this with the plaintiffs. I was certain we should be in the clear. However, in the time between receiving those documents and the actual court date, the plaintiffs submitted our list of prior art to the patent office as some sort of addendum. The patent office re-rubber stamped the new stack of paper, and the judge disregarded it during the trial. We lost. I doubt the patent office bothered to read, much less understand, any of it.

I feel very strongly that their patent was not novel, and since I wrote the algorithm which got us sued from scratch as a new college grad with only a bachelors degree, I doubt it was non-obvious to one skilled in the art. Maybe we could've won with better lawyers, but as a small startup, we didn't have that kind of money.

It sounds like you didn't have very good counsel if the court didn't consider clear prior disclosure as demonstrating invalidity.

FWIW in the UK we have expert patent court judges; USA used to have that too, I gather.

>I doubt it was non-obvious to one skilled in the art //

You have to be careful here, "obvious" doesn't quite mean the same as in daily life. It's so easy to see a neat solution to a problem and go "that's so simple, anyone could have done it". Once you've seen things they often seem simple (ex post facto analysis).

I think this is particularly true in some arts where basically every day any ordinary worker invents solutions to problems.

The plaintiffs certainly had a larger legal team. We brought our patent attorney and a trial lawyer on our own dime, and we managed to get some time from the chief patent counsel for a very large company because he had a relationship with one of our investors.

The plaintiffs managed to get jurisdiction in their own city (across the country from ours), and the general belief was that the judge granted this because he wanted a change from the drug trials he normally dealt with. This made it very expensive for us, and they definitely had the home court advantage.

I could whine about a lot of other things. For instance the plaintiffs removed every juror candidate who had any college, leaving only locals who I don't think even understood trigonometry. The fact that you're not supposed to be able to patent math, but somehow math on a computer gets through the patent process, etc...

> ex post facto analysis

I'm not sure what definition of "obvious" survives then. I was out of college for less than 2 months, and I wrote the code in a single evening. The "infringing" algorithm was less than 10 lines.

This very recent case was similar: https://www.eagleview.com/wp-content/uploads/2019/10/Order-g...

The jury found that the plaintiffs patents for measuring roofs on aerial imagery were valid, even though every photogrammetrist in the world would say otherwise. Hopefully they'll appeal and have better council...

> The patent office re-rubber stamped the new stack of paper, and the judge disregarded it during the trial.

Not sure I understand this -- are you saying the judge took the PO rubber-stamp as proof that though the prior art might be related, it was not disqualifying?

Indeed, a granted patent includes a list of citations, and the presumption is that the office has found that the cited works are not disqualifying prior art. A published patent is assumed to not be self-disqualifying.

I'm not a patent lawyer, but I've been involved in this stuff, often conducting extensive prior art searches. The gold standard for prior art is a single document that teaches everything in the claims of the patent. Often, folks think that they've found prior art if they find one thing in one document and another thing elsewhere. Nope.

Now if you happen to find the pieces of a claim in different prior documents, then you may be able to demonstrate obviousness rather than prior art. For instance it's generally considered obvious to take two patented ideas and combine them together. But obviousness is profoundly harder to prove than straightforward prior art.

Meanwhile, anything that's taught in the body of the patent, can be added to the claims at a later date. Within some limitations of course. A patent can be invalidated in its entirety, and the holder can submit a completely new claim set based on the original body text.

Thank you for your reply, it does actually change how I see the prior art thing played out.

> Often, folks think that they've found prior art if they find one thing in one document and another thing elsewhere. Nope.

Still, I think there must be something profoundly broken if you find the exact math in an old book, and the new patent basically says, "do that math on a computer".

I'd be inclined to agree with you. In fact, as I understand it there are new rules that specifically address so called "with a computer" patents. You weren't supposed to be able to patent a math formula, so instead, people would patent a machine that carries out a math formula.

I'm more surprised that the judge didn't look at the revision date of the paper, or that your lawyer didn't point out that the patent was modified.

Yes, exactly.

> The judge is unlikely to be technical, and he must assume the experts at the patent office did their job.

If the executive branch always did its job correctly we'd hardly need courts.

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