Thank you for your most informative post on the basis of the defence allegations. I have some questions:

As I read the first unenforceability court, the defendants are accusing Mr. Hamilton of signing a false declaration that the abandonment of the application was an accident. The defendants allege that the abandonment was intentional, not accidental.

If Hamilton incorrectly believed that the application had been abandoned yet Fish and Moore believed the application was progressing, is the abandonment accidental or intentional?

The second count is less clear. I think they are arguing that Mr. Shaw defrauded the PTO because he did not tell the PTO that the specification was inoperable/not enabled, and therefore deficient under 35 USC 112.

Isn't the argument that Shaw didn't believe that the specification was operable on a Nanotronic chip, yet according to publicly available information, neither did Sony,

"77. At some point in early 1992, engineers working for Nanotronics decided to forego the use of a ring oscillator system clock in the Nanotronics Microprocessor because of the risk that a microprocessor using such a clock would not work."

"The word we got was that Sony did know about us and they don't believe it is possible. I have the .8 micro process running at 500mips with 650ps pulse widths etc. Engineers will tell you that this is not possible. Conventional engineering says the limit is ten times lower than this and that these numbers are just not possible, but there is the chip"
(Moore, November 16, 1996).

As long as Fish and Moore believed the utility claimed, isn't that the determinant?

(In United States patent law, utility is a patentability requirement. Today, the utility requirement is the lowest bar and is easily met. Largely utility is used to prevent the patenting of inoperative devices such as perpetual motion machines. Utility is required by the patent law: 35 U.S.C. 101, "inventions patentable", and 35 U.S.C. 112, "specification".

There are three types of utility:

1. General utility is the requirement of functionality.
2. Specific utility is the requirement that the invention actually perform the function.
3. Moral, or beneficial, utility requires that the invention not "poison, promote debauchery, facilitate private assassination".[1]

The patent examiners guidelines require that a patent application express a specific, credible, and substantial utility. Rejection by an examiner usually requires documentary evidence establishing a prima facie showing of no specific and substantial credible utility.

http://en.wikipedia.org/wiki/Utility... )

People seem to be missing the point about proper inventorship. It does not matter that either Fish or Moore is an inventor; they must both be inventors.

As Higgins was in ongoing discussions with both Fish and Moore as to the patents, it follows that there must have been joint input, no matter what the ratio.

"When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent." 35 U.S.C. § 116.

I read this as meaning that if either of Fish and Moore made a contribution to at least one claim of the patent, they are joint inventors. Is this correct?

Be well