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Discussion in 'General DISH™ Discussion' started by Curtis52, Jun 2, 2009.
The claims are rejected? Please cite source.
Where have you been? On 8/3/09 the PTO issued an initial office action rejecting TiVo's claims 31 and 61.
Excerpt from Receipt of Petition in a Reexam (page2):
What I said all along. I wonder how TiVo can continue to say that the start code detection and building of an index table are irrelevant to Claims 31 and 61, while still manages to survive the rejection without at a minimum making some serious modifications of the claim terms.
I wonder what was TiVo's primary consideration position during the initial discussion with the examiner which was not agreed upon by the examiner? More importantly did E* get a copy of the record? The rule says the third party (who requested the reexam) shall be copied of all responses, but don't know the timing of the transmission.
BTW, on further reading, I think I know what was TiVo's primary consideration position, it was the Figure 8. Figure 8 depicts those "objects", specifically the "source", "transform" and "sink" objects. If I read the examiner's notes correctly, he rejected those "objects" as patentable art, because according to him they are "too high level", meaning not descriptive enough to meet the patentable requirements.
Reading the examiner's notes, it appears TiVo still did not try to refute the PTO's interpretation that "parse video and audio data" means "detecting start codes and building index..." because had TiVo done so, it would have likely been noted by the examiner, it would have been such a key disagreement not to take note of it.
Again, WORDS HAVE MEANINGS!
Earlier you said the claims were rejected. That clearly is not true.
Why should anybody believe anything else you argue when you clearly have little respect for the truth?
Hey, it's the Internet - the truth never gets in the way on the Internet.
That was exactly what I said and I continue to say so. Claims 31 and 61 were rejected by the initial office action, and so far the rejection stands, after TiVo failed to overcome the rejection with their "primary consideration position".
The "secondary consideration position" usually involves modification of the claim terms in order to try again to overcome the rejection. While we do not know what kind of modifications TiVo will make, from reading the examiner's notes, we know TiVo's "primary consideration position" was the disclosure of those four "objects" which they claimed were the invention.
But the examiner rejected such position because he said those "source object", "transform object", "control object" and "sink object" were too much high level terms, TiVo needed to use lower level terms to describe their invention in the software claims.
Do you know what that means? If TiVo must modify all those terms in order to overcome the rejection, then the modified software claims will read nothing like the old software claims. That alone should at a minimum compel a new trial with respect to the infringement issue by the E* DVRs because many of the previous court claim constructions will no longer be applicable.
I have a feeling E* will not let this pass them by without bringing it up to the appeals court.
He comes in here time after time trying to give us the impression that he was all for words and the meaning of the words, yet time after time I have demonstrated that he dose not even know what words that are at issue before coming in here with his accusations.
The claims stand.
The patent is in force.
You are not being truthful.
The software claims are rejected.
The patent is in force.
Different words mean different things.
Just because the claims are rejected, does not mean the patent is unenforceable, but if the claims stand rejected by a final action, the patent owner may not accuse anyone of infringement on those rejected claims until such time the patent owner succeeds in appealing the office action and overcome the rejection.
If an infringement issue has been well settled, even if the claims at issue are rejected in a later time, the infringement issue and settlement may not be revisited. But if the infringement issue is still in proceedings while the claims at issue are rejected by a final action, the court must exercise its discretion in determining how the infringement proceedings should continue or be stayed.
None of the above however applies to the current appeal, E* is not asking the court to stay the proceedings, some of the issues that can impact the appeal are:
1) The reexamination proceedings themselves, because the appeals court had granted E*'s motion to take judicial notice of the reexam proceedings.
2) The PTO's interpretations of several software claims terms, which the appeals court will take judicial notice of, as it said it will.
3) The latest PTO's position that TiVo needs to amend (modify) the software claims terms in order to try again to overcome the rejection. E* can file notice to the appeals court of such development because this is part of the reexam proceedings which the appeals court said it will take judicial notice of.
4) TiVo's own statement in its request to the PTO for an extension, in which TiVo said they will likely amend (modify) the software claims terms to try to overcome the rejection. Again E* can notify the appeals court and argue that any modifications of the software claims terms will render the related previous court claim constructions moot, therefore a new trial will be a logical path.
The court simply cannot determine an infringement issue based on the claim constructions that are now made moot in light of TiVo's admission that they will modify the claim terms.
The PTO said no such thing.
TiVo said no such thing.
TiVo made no such admission.
It sounds like you just made that up.
"Secondary consideration" is a legal term for a type of evidence. It refers to evidence of "commercial success, long felt but unsolved needs, failure of others, etc." This evidence is one factor used to determine the obviousness (or lack thereof) of a patent.
TiVo wants additional time to "gather the evidence necessary to support its secondary consideration position" to aid in the PTO's final determination of obviousness. For example, if another CE vendor (including Echostar) had unsuccessfully tried to create a DVR product after the Philips and iMedia patents were filed in 1996, then that would be evidence of secondary consideration.
Excerpts from PTO rules:
First off, let's agree that a lot of things were said in that meeting, and what we have read is only the most skinny of the summary by the examiner in filling out that summary form, so what you meant was you could not read from his summary to say he actually said such thing.
What I said was what was deducted from his notes. First he told TiVo inventors the Fig 8 was too high level, which meant the TiVo inventors tried to use Fig 8 to claim their position, which resulted in such examiner's response.
Next you try to find out exactly what that Fig 8 is. It turns out Fig 8 depicts the four "objects" disclosed by the software claims. Therefore you conclude that the examiner told the TiVo inventors that the "objects" are too high level and not patentable, he then told the TiVo inventors to use Figs 6 and 9 to see if they could find some thing more to say.
Do you refuse to deduct, or do you disagree with my analysis, or do you simply refuse to hear my analysis?
TiVo of course will not come out to say so, but what else do you think TiVo can do to overcome the rejection, when the initial things they argued to claim the invention (the "objects") were rejected by the examiner?
Can you prove TiVo did not say such thing to the examiner? We shall wait and see.
Are you saying TiVo has overcome the rejection on their first try?
I will give you that. You have clearly explained to me what the "secondary consideration position" means. But my questions are:
1) What about the "primary consideration position" and did TiVo not fail on that one? Else why do they even need to use the "secondary consideration position" and more importantly why do they need more time? Two months were not enough?
2) If you are correct that:
Then don't you have to admit that TiVo will also fail on the above point too? It is obvious every other company has succeeded in creating a DVR product of its own, with clear commercial success, resolving long felt but unsolved needs?
Now if your response is, but they did so by infringing on the TiVo's patent, I want you to stop right there, because the secondary consideration has nothing to do with infringement, only that whether someone else was able to do the same thing after TiVo's patent was filed. If they did so successfully, like E* did, then TiVo cannot use that secondary position to overcome the rejection.
I thank you for educating me on what the "secondary consideration position" means, now that I know what it is, I see TiVo having no chance of using such position to overcome the rejection.
After looking into the term "secondary consideration", I must say while Ken's definition of the term was correct, his example was not quit right. So if Ken you want to discuss this issue further I am all game.
The point I want to make though is, by simply reading the examiner's notes, TiVo did present its position on the non-obviousness of the software claims terms (Fig 8), and the examiner did not agree to such position. The examiner then made some suggestions (Figs 6&9) to assist TiVo to improve their chance of success, all the above were done on 9/22, and nothing in the above had anything to do with any "secondary considerations".
The assumption is of course by 10/3, the deadline for TiVo to submit their position to overcome the rejection, the examiner thought TiVo by taking his suggestions, might be able to offer a better position.
However now we know that TiVo is asking the PTO to give them 30 more days, not to prepare the position as suggested by the examiner, but to prepare their "secondary consideration position".
The implication is, TiVo did not think using Figs 6&9 would have secured their position to overcome the rejection, so they are working on the "secondary consideration position" and they need more time to do so. I also want to add that secondary considerations are very weak positions, recently rejected by the appeals court in some cases, and secondary considerations are even less convincing with the PTO.
Correcting stuff in this neighborhood can get to be a full time job if one get's drawn in. It's like the tar baby hazard and is about as futile as catching raindrops with a seive.
Yet a few people continue to try this job, sometimes successfully making corrections, other times finding themselves totally clueless, without exception though, in the end they were shown how TiVo got covered in tar at the appeals court, the PTO and at the business front.
TiVo might be able to clean some spots down the road, but let's face it, they are covered in tar.
Below is more reading to demonstrate just that:
In this case, the "others" are the combination of the Thomason and Krause patented prior art.
TiVo should just follow the examiner's suggestion and work on the Figs 6 and 9, without trying to delay the process and extend the deadline to 11/3, curiously one day after the 11/2 appeals court hearing.
This case is a "103 rejection" not a "102 rejection", see a later post for more info.
Logic says that lower level descriptive terms are likely to broaden the scope of the patent, giving TiVo even further patent protection.
Since you claimed to use logic, let me point out that your logic is contrary to the issue at hand. We are talking about how to overcome the rejection here. Broaden the claim terms will only make them easier to be rejected because broader claims naturally will invite more prior art into the picture. As an example, if you insist that the step one of the software claim only discloses the parse function, then E*'s PID filter will meet such limitation, but to do so you are broadening the first step, by removing the two narrower limitations, which limit the parse to only parse "audio and video data", not any data, also to then "temporarily store the audio and video data." Without the two narrowing terms, you may say a PID filter will meet the definition, but at the same time any PID filter prior patents can be used to render such broad step obvious.
What the examiner meant was, in order to overcome the rejection, TiVo must narrow the claim limitations, not broaden them. A narrower claim is more likely to overcome a rejection but also more difficult to be infringed on.
An important correction.
The PTO rejection in this case is a "103 rejection" not a "102 rejection".
I pointed out earlier that secondary consideration is useless in a "102 rejection", but did not know that it can be used in a "103 rejection". Nevertheless secondary consideration position is a weak position. TiVo's request to prepare their secondary consideration position means they could not use the formal position to overcome obviousness rejection by Thomason and Krause prior patents, they now want to try the next position.
I still could not find out what is the substantive difference between a "102 rejection" and a "103 rejection", but my guess is if a rejection is based on obviousness made by a single prior art, it is a "102 rejection", if a rejection is based on obviousness made by a combination of prior art, it is a "103 rejection".
It is not pertinent whether a company succeeded in creating a DVR product after the TiVo patent was filed. It would be pertinent if a company attempted and failed to create a DVR product after the Philips/iMedia patents were known but before the TiVo patent was known. Differences aren't so obvious if others tried and failed to create DVR products using prior art. Companies are assumed to know about existing patents during product development.
This is just one of many potential examples. Evidence of secondary consideration can take many forms and not all are equally relevant to every case.
The preliminary rejection of the TiVo patent was made on the following grounds (103a):
A 102 rejection would mean that the prior art (i.e. Philips and iMedia patents), taken together, duplicates what is found in the invention. In that case, evidence of secondary consideration is irrelevant. Evidence of secondary consideration is only relevant when differences exist and the PTO must determine whether those differences are obvious.
A 103a rejection -- as in TiVo's case -- means that all prior art (i.e. Philips and iMedia patents), taken together, does not duplicate what is found in the invention, but the differences have a high degree of obviousness, such that the average person in the field could duplicate the invention when made aware of the prior art. In this case, evidence of secondary consideration is highly relevant, because it goes straight to the question of whether the differences are indeed obvious.
Don't get too hung up on the term "secondary consideration." That isn't meant to imply something about its importance. It's just the name for a type of evidence used by the PTO to help determine whether differences from the prior art are obvious. I'm told that evidence of secondary consideration is a common request by the PTO in 103a rejections. Evidence of secondary consideration can be very important or of little importance; it all depends on the evidence itself.
I will respond to your last comment first.
For all the recent cases I have been able to Google for ever since the “secondary consideration” issue came out a few days ago, in those cases the appeals court had without exception rejected those secondary consideration positions, even though in one or two of those cases the “secondary” evidence were quite compelling.
In this case, one of the main reasons Judge Folsom declined to impose enhanced damages in 2006, was because as he put it, E* developed DVRs long before TiVo even existed. In your view does the above not undermine your example?
One other problem I have with your “Philips and iMedia patents” example is, in this case, it is not the “Philips and iMedia patents”, rather the Thomason and Krause patents (the prior art in this case), that are pertinent prior art. While if you are correct that the Philips and iMedia patents were filed in 1996, the Thomason and Krause patents were filed a bit later, in 12/96 and 11/97, respectively, while the TiVo patent was filed in 7/98.
Below is a short history of major DVR development in a nutshell:
As you can see, at least five different companies, including TiVo, had demonstrated working DVRs almost one year before the TiVo patent was filed. Even if you want to argue that the Microsoft DVR (the E* Dishplayer) did not have commercial availability until after TiVo’s patent was filed, the working model was demonstrated almost one year prior to the TiVo patent filing. At a minimum however, ReplayTV had their DVRs out long before the TiVo patent was filed and received the “Best of Show” award.
What other secondary consideration evidence can you think of?