Post-Grant Opposition, Post-KSR.

My lunchtime reading was recent testimony to the Senate Committee on “The Future of American Innovation” (was that proposed as the name for a ride at Tomorrowland; no, that was “House of the Future”).  Having not spent my formative years inside the D.C. Beltway, it is an unknown whether legislative committees (like litigants) only call witnesses expected to provide helpful testimony; or is the approach more random.

Random choice resulted in a print-out of testimony from the Chief IP Counsel at Goldman, Sachs, appearing also for SIFMA, AB(ankers)A, and FSR.  Concern was expressed over “a system out of balance” and “in need of substantial reform.”  The organizations refused to be cast on either side of the reform debate, and noted was their willingness to finance innovators large and small.  No less testimony though was devoted to their status as patentholders, as well as potential defendants (scions vs. trolls, oh my!).  The guiding metaphor was “balance,” as in a see-saw needing to be “rebalanced.”  The fear was the see-saw now is “overweight” with notions based in the Industrial Revolution, and underweight on “value drivers of the knowledge economy” (those may include drivers in play at golf courses near Palo Alto).

The primary point was the represented financiers support for the post-grant opposition procedures in S. 1145.  No longer will patentees have to wait for an infringement to defend or to lose their patent, it could be immediate.  The testimony referred to untapped, and yet-unexamined “troves of prior art,” and how to “improve patent quality” with a “balanced mechanism for firms to inject prior art” into post-grant oppositions.  That injection would enjoy the added feature, not available in Court, that “the challenger need only prove invalidity under the more equitable [to whom?] preponderance of evidence standard [and] without the [pesky] presumption of validity.”

So, let us take up an example, using USP 6,975,996 assigned to Goldman Sachs for “Electronic Subpoena Service.” The `996 tries to solve the “lack of coordination amongst [gov’t] agencies conducting investigations” of financial institutions.  The claimed “computer-implemented” method receives the subpoena, associates it with a recipient, picks a method of delivery over communication networks, transmits it, and tracks responses to the subpoena.  Novel, useful, non-obvious – let the phosita decide.  The `996 lists 125+ prior art patent documents, and over 30+ lines of “other” art – ALL of which was examined under the pre-KSR standard for non-obviousness.  Indeed, a final rejection, based on anticipation and obviousness, issued against the application.  But, there it is today.

Consider this, the `996 issues post-KSR, and post-grant oppositions are permitted – how much might it cost Goldman Sachs to defend the invention, again and against those previously-considered 125+ patents, plus against an ‘injection’ from the “troves of prior art” in the files of the opposers, and when only a preponderance and no presumption are in play?  It likely will cost the patentee a lot, or about the amount of money that Goldman Sachs makes every 14 or 15 minutes.

Is our patent system constrained within “an ‘Industrial Revolution-era’ view of the world”?  Preaching pejoratives against the I. Revolution, and arguing for radical changes to protect the E. Revolution is a dicey proposition.  But, as the politicos best understand the quote from one denizen of Dogpatch: ‘if’n you ain’t fer it, yur agin it.’  Patent reform, priceless.