back to article Ethernet patent inventor given permission to question validity of his own patent

The inventor of two patents that covers Ethernet switching products has been given permission to question the validity of his own invention. That's the unusual upshot of a decision by a US federal appeals court this week, which ruled anyone – including the original inventor – is entitled to challenge the validity of a patent …

  1. Mark 85 Silver badge

    Curiouser and Curiouser

    Sounds like someone has a major grudge here but there's no reason given in the article.

    1. Pascal Monett Silver badge

      Re: Curiouser and Curiouser

      I don't think it's a grudge. He moved company, so now he wants to be able to use that thing that he got patented without having to pay the royalties.

      Or something along that line.

      1. Richard 12 Silver badge

        Re: Curiouser and Curiouser

        It seems very likely that it was patented because Cisco wanted a patent - any patent, and not because it was actually a new invention.

        Given the court's decision, the patent would not have been granted if the original examination had been done properly, as the claims weren't novel.

        1. mkaibear

          Re: Curiouser and Curiouser

          Actually they were found to be not inventive (the obviousness test)

          Since there is no objective test for obviousness, it becomes a matter for the lawyers to hash out.

    2. SImon Hobson Silver badge

      Re: Curiouser and Curiouser

      As Pascal says, he moved company. You may have to read between the lines, but it's fairly clear in the article.

      After inventing the "thing", he assigned the patent to Cisco - fairly common that employers want the patents on things their employees invent as part of their employment. So Cisco, not he, owns the patent.

      After that, he left and (with other Cisco employees) startup up another networking gear company - Arista. Now it stands to reason that some of the things they'd like to sell would infringe said patent, so they have three options : 1) Say "pretty please" to Cisco and buy a licence on whatever terms Cisco may (or may not) want to give them; 2) avoid infringing on the patent (which may mean leaving features out of the product); or 3) challenge the validity of the patent. Don't forget that other than in the case of a standards required patent (ie something that's incorporated into a standard*), Cisco do not have to licence the invention if they don't want to - they can refuse and so prevent any other vendor from taking advantage of the invention. And if they do licence it, they can name their own terms - which could be quite expensive.

      So here, it was Arista that challenged the patent, and presumably this happened before Cheriton left. But either way, strictly speaking, it's not the inventor challenging the patent, it's his company.

      * Where a patented method is incorporated into a standard, there's normally a FRAND clause attached - the holder of the patent must licence it to anyone on a Fair, Reasonable, And Non-Discriminatory basis. This is to avoid someone getting their patented method included in a standard, and then being able to to hold everyone else to ransom - or even block certain competitors from using it at all.

  2. Anonymous Coward
    Anonymous Coward

    So why was it granted in the first place?

    Goes to show exactly why Duche Batistelli should go. He wants to move from the current situation where the patent would not be granted in Europe to the USA situation where we will have insanities like this.

    1. Anonymous Coward
      Anonymous Coward

      Re: So why was it granted in the first place?

      Err - Battistelli was replaced in July!

      1. defiler Silver badge

        Re: So why was it granted in the first place?

        Battistelli was replaced in July

        The system works!

      2. DropBear Silver badge

        Re: So why was it granted in the first place?

        Which makes it all the more curious how we never saw as much as single peep around here, at the very least concerning his departure, after the deluge of articles concerning basically every breath he took up to roughly a year ago. Then suddenly just deafening silence. One definitely has to wonder if anybody here was "advised" to kindly refrain from biting this particular hand ever again by the Powers That Be.

        1. Michael Wojcik Silver badge

          Re: So why was it granted in the first place?

          I figured his departure just wasn't all that newsworthy. While he was in office, he was a danger; once out of it, he's just a historical curiosity.

          And, of course, summer is the Silly Season and staffing is reduced by people taking holidays. (I know I sent the Reg one tip for a story and got a response saying they didn't know if anyone would be available to research and write it, due to seasonal backlog. I sympathize.)

  3. SonOfDilbert
    Coat

    Absurd

    This situation is patently absurd.

  4. Anonymous Coward
    Anonymous Coward

    Two minds about this ?

    One of the reasons companies provide employees with remuneration is so they can reap the benefits of the employees work. Bearing in mind that unless Cisco was being run like a UK state school and employees (or their parents) were expected to provide the basic equipment necessary to develop the patented technology then they've certain got a claim on whatever the employee creates ?

    I suspect if this claim succeeds, companies will be less generous in their salaries.

    1. Anonymous Coward
      Anonymous Coward

      Re: Two minds about this ?

      Your comment *sounds* like you're trying to argue against the principle that an employee might be able to claim additional renumeration or ownership of a patent or invention created during their work with a former employer?

      The problem is that has *nothing* to do with the basis of the case here, so I don't see what point you're trying to make.

    2. Voland's right hand Silver badge

      Re: Two minds about this ?

      One of the reasons companies provide employees with remuneration is so they can reap the benefits of the employees work.

      Incorrect - at least in most of Europe. The Patent act in the UK and similar legislation in other Eu countries MANDATE that the employee is adequately renumerated.

      If the renumeration is inadequate the company may lose the rights to the invention. I can think of only a couple of lawsuits on adequacy though. Most cases used to be about lack of renumeration (state school scenario). If the company does not renumerate you, you can actually repossess the invention. There is plenty of precedent on that and the companies have learned the hard way to pay patent bounties.

    3. bombastic bob Silver badge
      Devil

      Re: Two minds about this ?

      It's usually "work for hire" at your normal salary/rate, and then any patent or copyright belongs to whomever it was that paid for it.

      That's pretty much understood in the industry. Otherwise, good luck getting work as an engineer if you're not willing to sign over the patent/copyright to the employer.

      The only part about this that bothers me are the number of claims about things that are "obvious". You're NOT supposed to be able to patent "obvious" and "trivial" things. otherwise the 'for' and 'while' loops would've been patented by some troll, who'd then try to extort money for EVERY programmer for using them.

      Patent abuse is bad enough, but at least this one is getting a (apparently worth while) review. That should help the industry at large, In My Bombastic Opinion.

      1. Yes Me Silver badge

        Re: Two minds about this ?

        Patenting the obvious is a career-enhancement in many big hi-tech companies; the world leader is IBM, not Cisco. The issue is that patent examiners are under pressure to shift paper off their desks as quickly as possibly, and granting a patent is much less bother than denying it, because then there'll be follow up and all kinds of botheration.

        And BTW when you take a job with one of these companies, the small print in the terms and conditions that you sign specifies that anything you invent belong me. It isn't a matter of choice.

  5. Anonymous Coward
    Anonymous Coward

    Engineers are put in a difficult position

    I was in a somewhat similar position. I am named as a (joint) inventor on 2 patents from work I did for a former employer. At that time there was a push to get lots of patents and many of us software types were being encouraged to patent anything that moved. I knew very little about patents and went along with it. My employer gave me a small payment to reward the patents being granted.

    The work was interesting but it mostly consisted of two or three technical meetings with the team thrashing out some implementation issues, and some thinking and documenting of some the general principles involved. Interesting enough but, with hindsight, I am not at all sure it was inventive enough to be patented. I feel that any team of people skilled in the art of developing real-time, kernel-level networking software could have done the job.

    The patent made its way to some troll, who wanted to use it to get money from Cisco and others. They contacted me wanting my support for their case. By that time I was very fed up with the way software patents had gone and knew more about the requirements. I did not believe it should have been granted in the first place. I looked into it a little and found out that assignor estoppel prevented me from standing up and saying it shouldn't have been patented. Fortunately, the case was in the US and I was in the UK so I decided that I would ignore their requests unless they decided to take legal action to force me to be involved.

    I think that other engineers are still being put in the position of requesting patents which probably should not be granted. It is a reasonable request by an employer that you must complete the paperwork (honestly, of course) and it is up to the patent offices to decide if it is patentable. I am pleased that engineers should now be allowed to subsequently express a view that their patent should not have been granted -- which the court could choose to interpret any way they wished given that we are not trained patent lawyers.

    (AC as I really don't want to get involved in that particular case again, if it is still going on somewhere)

    1. imanidiot Silver badge

      Re: Engineers are put in a difficult position

      It might sometimes be better NOT to get your name on a patent. Yes, it'll give you some "bragging rights" when seeking new employment, but they can also come to bite you in the ass if you choose to go the self-employment/own company route.

  6. Whitter
    Boffin

    Duty to disclose

    I was under the impression that all persons involved in the patent application have an on-going "Duty to disclose" any material they become aware of during the lifetime of the patent, not just during the application process. If so, then why the notion that an inventor cannot (or shoudl not) query their own invention?

    Any lawyers in the house to check on that?

    1. imanidiot Silver badge

      Re: Duty to disclose

      Probably at some point thought up by a large company to prevent employees with a grudge from making their life difficult.

      Edit: reading the wiki page it seems it also prevents someone from later infringing their own patent after they've sold it because they found an "insider" way that makes it invalid.

      So say, Tom sells a patent to Jerry. Tom then later brings out a product that infringes that patent and gets sued by Jerry for said infringement of the patent Jerry now legally owns. Tom is now not allowed to claim invalidity of the patent because he's the one who invented it and if he knows about something that makes it invalid he should have disclosed such to Jerry before the sale. It's to prevent "have your cake and eat it too" scenarios.

    2. Anonymous Coward
      Anonymous Coward

      Re: Duty to disclose

      The duty of disclosure is a complicated one and by no means universal.

      Many patent offices don't require the applicant to do their job for them; some patent offices require disclosure only of documents cited against related applications before other patent offices. A few years ago the USPTO tried to bring in new rules requiring applicants to prepare the equivalent of a full bibliography for every application, but the change was successfully blocked.

      The relevant USPTO code is here: https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html#d0e319407

      In the case in the article the patents are being challenged after being issued. It's better to submit observations or relevant prior art during the examination process. At the European Patent Office this can be done anonymously so an inventor could submit whatever she liked even if still ostensibly friendly with the applicant.

  7. EveryTime Silver badge

    This article is clearly only telling a slice of the story, and it seems to be a biased slice.

    Most patents go through several iterations, both prior to filing and in response to rejections. Patent attorneys write the claims to be as broad as possible, and narrow them minimally in response to the patent examiner's objections. Each round provides an opportunity to add more claims, keeping the same priority date.

    It's quite possible that the inventor of a key claim didn't have anything to do with the subsequent pile-on of broader claims and additional claims.

    1. Anonymous Coward
      Anonymous Coward

      In my experience the *lead* inventor might be involved in assisting the attorney in refining the claims during prosecution but rarely any junior inventor and even more rarely if they have since left the assignee company.

  8. Herby Silver badge

    Looks like to me...

    That this is a case of trying to look in a mirror, and hoping you don't see yourself, then arguing that it isn't your image.

    Oh, well. Be careful for what you ask for, you may just get it.

    1. This post has been deleted by its author

    2. YetAnotherLocksmith

      Re: Looks like to me...

      ...like you've got that all reversed...

  9. PCMcGee

    This is a good example of a broken system. Not the patent system, though, the monetary system itself. The notion that an idea is the lone invention of a single mind is absurd on its face. The patent system is simply a race to establish proprietary ownership over an idea that is emergent from technological progress in a given field, or the realization of efficiencies from associated fields of endeavor. The technologically stifling patent system is mainly there to protect the interests of the wealthy, who can buy control over the rights to profitable technological advances, (the rich ensuring their control markets) and the researchers who infer the patentable technology are usually rewarded with little, if any compensation. Either they have already signed away their rights by working for a corporation, or they lack the ability to invest the captal needed to produce the technology or to protect it from attack by funded interests. The idea of the lone inventor patenting his crazy idea and becoming wealthy is another American pipe-dream used to decieve the public into supporting a system that benefits those with vested interest in controlling technology and limiting competition. As with most systems in a monetary economy, the systems that serve to best affirm established interests, are the systems that are most highly reinforced and protected by moneyed interests. The prison we find ourselves building is not laid to any Master Plan from the occult elite, but emergent from the self-reinforcing nature of monetary economics.

    1. keith_w

      "The idea of the lone inventor patenting his crazy idea and becoming wealthy is another American pipe-dream used to decieve the public into supporting a system that benefits those with vested interest in controlling technology and limiting competition."

      Don't tell Ron Popeil that.

  10. Walter Bishop Silver badge
    Joke

    Method and apparatus for making toast

    I hereby claim a patent on the fermented extract of wheat and yeast that has undergone a chemical alteration called the Maillard reaction through the application of infrared radiation in the 700 nm to 1 mm region of the electromagnetic spectrum.

POST COMMENT House rules

Not a member of The Register? Create a new account here.

  • Enter your comment

  • Add an icon

Anonymous cowards cannot choose their icon

Biting the hand that feeds IT © 1998–2019