Mar 262011

Today I made it up to Concord NH for the IP Cafe, sponsored by the Patent Law Forum and IIPO student organizations. I hadn’t been back at UNH School of Law since December so memories flooded back to me as I walked the halls and sat in classrooms. I also noted the new addition to the school, which will soon be known as the Franklin Pierce Center for Intellectual Property.

It was really good to start off my Saturday in Concord NH at an IP-dedicated symposium with like-minded individuals.

Mary Wong started things off by explaining what the Franklin Pierce Center for Intellectual Property is or will be. The gist of the center will be to maintain global IP prominence.

Mark Solomon and Deirdre Sanders, from Hamilton Brook Smith Reynolds gave the first talk entitled, Top 10 Issues in Patent Law. Their remarks were basic, for the most part, I think because they were addressing a very diverse audience and they didn’t want to overwhelm anyone! But there were some interesting topics that were raised. Here are the issues they addressed, including my thoughts.
1. What forms of IP can build assets?
Trade Secrets
… and more

Three simple questions that a practitioner can ask an inventor to find out what the invention is all about.
What is the problem you’re solving?
How are others solving it?
How are you solving it?

The 3.5 year first installment is due after the 3.5 years for cases that are before the examiner for longer than 3.5 years.

2. How do you document your idea?
A. Notebooks. This section of the talk was interesting because the company I am currently working for is really big into notebooks. Dierdre used her litigation experience to discuss how notebooks can be more credible if they are initialed by someone else. But an interesting question raised was if this really adds to the credibility of the notebook because this witness, who is supposedly removed somewhat from the inventor, may not really understand and appreciate all the notes the researcher is including in his notebook. This is especially the case if there are lots of lab notes and lots of notebooks.
B. Internal invention disclosure form – One question that you may have with regards to these disclosure forms is, “How far upstream do they encourage invention disclosure forms be filled out?” The answer is at conception.

3. How do you determine ownership?
This topic was interesting to me. Some questions the speaker posed was, Who owns patent rights at the time of bankruptcy? What about when the company goes through a merger or acquisition and the inventor says that he didn’t assign the patent to the company? These questions made me think of the upcoming Stanford v. Roche case.
Another question talked about in the assignment portion of this bullet was, What is the value of recording the assignment at the PTO? An assignment doesn’t have to be recorded at the PTO to be a legitimate assignment. But there are benefits. The recordation tells bona fide purchasers that they should be on notice that you have the rights to it.

4. How do you know when to file?
The United States has a one-year period to file your patent. Australia and Canada also have 1 year. Certain European countries have an absolute bar of novelty, meaning that you have to file it before it becomes public. Certain Asian countries are 6 months.
“Disclosure” may be different from one country to another so even if a form of publication has issued, this may not automatically bar you from filing a patent in another country, depending on how they interpret disclosure.

5. How do you assess where to file?
This involves analysis of multiple factors including:
License agreements that may require certain filings
Potential investors
Potential licensees

6. How do you claim the invention?
Sometimes it is best to split up a patent into two to license the technologies to two separate entities: methods on one patent, compositions on the other. But these are business decisions as well, as they may add on additional maintenance fees.

7. How do you describe the invention?
US requirements include enablement, written description, and best mode. Other countries may be different.
Sometimes your parent application can obviate a continuation-in-part. If the parent mentions, but does not enable, blood, for instance, then the continuation in part will be obvious in light of the parent application, but it would not be enabled so you’re “screwed both ways.”

8. How do you navigate the process?
Remarks made on the record can estopp you. You can live with your description for the rest of your patent. If you make assertions to the foreign office too. But it was pointed out that recently the CAFC said that prosecution in other countries is not relevant for estoppel purposes in this country. I don’t know which case the audience member was referring to, but litigators will argue that this should be narrowly construed. Even if you can mention it at all will cause serious problems.
The way that Dierdre described Markman hearings really got me excited to see one in action. I believe Markman hearings are open to the public to sit in on, but I was not sure. I’ll have to look into this because I got excited about seeing one.
Then they talked about duty to disclose. For instance, who is under the duty? CFR 1.56. The lesson learned from McKesson is that you have to cite to the examiner the same case that they have allowed previous. You can’t assume that they know anything. But you always are assumed to know about previous references being the reasonable practitioner.
Try to disclose everything

9. How do you keep your options open?
You can file one patent that is very big or multiple patents with multiple maintenance fees

10. How do you use an issued patent?

Overall, it was a very interesting event. Tom Field was in the back asking questions and laughing as I remember him best. There was also this pretty sharp audience member who had a Russian accent and who every once in a while corrected the speaker.

 Posted by at 10:59 am
Mar 042011

There’s an old saying about those who forget history. I don’t remember it, but it’s good. Stephen Colbert

When I took the class Patent Law a couple years ago, our class (probably like all other patent law classes across the country) studied the three iconic cases that dealt with the subject matter of processes: Benson, Flook, and Diehr. There seemed to be no controversy when we went over Benson, the “can’t patent an algorithm” case. The redacted opinion in my textbook had no dissent (Even though the opinion was unanimous, three justices did not participate in the decision). Furthermore, the professor, like Justice Douglas’s opinion, seemed to generalize the invention into an algorithm that converts numbers into binary. This was a very “obviously” unpatentable invention, at least that was my sense at the time.

Now, in revisiting this grandfather of subject matter cases (refer to how much Bilski still deferred to this case), I am noticing that the claims tell a different story. An interesting observation of Benson is that the CCPA in In re Benson, 441 F.2d 682 (C.C.P.A. 1971), which upheld the invention as patent-eligible, specifically cited to and focused on the claims at issue (claims 8 and 13). The Supreme Court did not even cite to the claims in the opinion, but rather attached them in the appendix to the opinion. How could the Supreme Court paint the invention in such clear terms without referring to the actual claims which make up the invention?

The claims at issue are as follows:

Claim 8.

The method of converting signals from binary coded decimal form into binary which comprises the steps of
(1) storing the binary coded decimal signals in a reentrant shift register,
(2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position of said register,
(3) masking out said binary ‘1’ in said second position of said register,
(4) adding a binary ‘1’ to the first position of said register,
(5) shifting the signals to the left by two positions,
(6) adding a ‘1’ to said first position, and
(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position of said register.”

Claim 13.
A data processing method for converting binary coded decimal number representations into binary number representations comprising the steps of
(1) testing each binary digit position ‘1,’ beginning with the least significant binary digit position, of the most significant decimal digit representation for a binary ‘0’ or a binary ‘1’;
(2) if a binary ‘0’ is detected, repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;
(3) if a binary ‘1’ is detected, adding a binary ‘1’ at the (i + 1)th and (i + 3)th least significant binary digit positions of the next lesser significant decimal digit representation, and repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;
(4) upon exhausting the binary digit positions of said most significant decimal digit representation, repeating steps (1) through (3) for the next lesser significant decimal digit representation as modified by the previous execution of steps (1) through (3); and
(5) repeating steps (1) through (4) until the second least significant decimal digit representation has been so processed.

Looking at the invention from the claims rather than from what the Supreme Court or a patent law professor tell you provides a different story. If I were the PTO today, I might go ahead and issue Benson’s application today. Let me explain why.

Back in 1968, the board rejected Benson’s application using the “mental processes” and “mathematical steps” doctrines. But when looking at the claims above, I don’t really see how the claims don’t fit within the framework of § 101. I agree with Judge Rich’s analysis: “Would a reasonable interpretation of the claims include coverage of the process implemented by the human mind?” The answer clearly is “No, for claim 8 is for a method to be practiced in part on particular apparatus specified to be a ‘reentrant shift register.’ Claim 8, moreover, refers to the operations of storing, shifting, and masking ‘signals’ which, by a reasonable interpretation in the light of the specification, can only mean signals of the kind upon which the disclosed electronic digital computer hardware operates.” Id. at 1142.

With regards to claim 13, which dealt with converting one representation into another representation, the board rejected it as “mental,” but Judge Rich’s analysis is enlightening. “The process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer.” It makes one wonder how the claim could be interpreted as broader than a digital computer, for instance having the recording medium be pencil and paper or red and blue poker chips, considering the specification makes no mention of other implementations besides a digital computer.

Fast forward 40 years. Today the PTO, the board, and other courts now prefer to use the term “abstract idea” to reject claims like this. But is it possible that the Federal Circuit today is similar to its CCPA predecessor then? Could Judge Rader be the new Judge Rich? The recent RCT v. Microsoft decision seems to imply so. Granted, Benson is different than RCT because RCT had already been issued patents and thus deserved a higher level of validity while Benson, on the other hand, involved the application stage. The RCT court refused to define abstract but said that  “this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter.” The court went on to show that the following claims were patent-eligible:

1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.

11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to per-form said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.

1. [not asserted] A machine comprising a computer readable storage device which stores a dither matrix for use in halftoning image information and a comparator responsive to said computer readable storage device, said dither matrix comprising at least one array, said at least one array, when thresholded at a number of levels produces a number of dot profiles, a plurality of said number of dot profiles each having a power spectrum substantially characteristic of a blue noise power spectrum for the level at which such dot profile is produced.

4. The machine of claim 1, wherein substantially all of said number of dot profiles have a power spectrum substantially characteristic of a blue noise power spectrum for the level at which such dot profile is produced.

57. [not asserted] A computer readable memory device comprising a thresholdable halftoning mask, said halftoning mask designed to produce a plurality of visually pleasing dot profiles when thresholded at a number of levels and a comparator responsive to said computer readable memory device.

63. The computer readable memory device of claim 57, wherein said halftoning mask is designed to produce substantially all visually pleasing dot profiles when thresholded at a number of levels.

29. Apparatus for the halftoning of color images comprising a comparator for comparing, on a pixel-by-pixel basis, a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministric, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein an output of said comparator is used to produce a halftoned image.

Like Benson, the claims when read in a vacuum could reasonably be interpreted as “mental” or “mathematical.” But in the context of the specification, it is clear that the invention was tailored to a machine and was not abstract. Indeed the RCT court, without agreeing to define what abstract meant, provided perhaps the best definition to date: “this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter.” Id. at 868. The invention was not that.

In my opinion the PTO, or at least the Federal Circuit, in following its own subject matter jurisprudence, could hold that Benson’s invention is patent-eligible today. The invention sure wouldn’t survive other provisions of the Patent Law today, such as 102, 103, and 112, among others. But it’s useful to revisit Benson’s decision because to me the “unanimous” decision to hold Benson’s invention as non-statutory subject matter was not inevitable. It could have gone the other way.

 Posted by at 8:06 am
Feb 172011

It’s been a year since the USPTO issued guidelines stating that the claim “computer-readable medium” should not be statutory subject-matter because viewed in its most broad interpretation, the claim includes transitory embodiments such as signals. And since In re Nuijten held that signals do not fit into a statutory class of subject matter, the claim fails. I already made my thoughts known about this here, but today I wanted to give a report of the aftermath. The BPAI has certainly been busy, and especially since Bilski, in striking down patents related to software. Searching through the BPAI decisions, I found 132 cases that have been decided on the merits of subject matter. Interestingly, these cases are coming through the BPAI on a very regular basis. From the time I first performed my search (two weeks ago) to today, 17 more results appeared. This is definitely a hot topic right now. Software patents seem to be very much alive and well, however, a critical element of claiming computer-program related inventions is what you include in your specification.

While conducting this research, a few things struck me. First, the most common rejection was that there was insufficient limitation in the patent or the claim could be interpreted into non-statutory matter. Second, avoid having your claims get pegged with the label “software per se.” It’s bad. Next, RCT v. Microsoft was finally cited in a most recent BPAI decision. Ex Parte Clifford R. Jack & Peter C. Obrien, 2009-015192, 2011 WL 486179 (Bd. Pat. App. & Interf. Feb. 7, 2011). It appears that the BPAI has finally caught up to this recent and very important Federal Circuit case.

Next, initially after Bilski was decided, there was a trend towards rejecting claims that related to software. This trend seems to be going the other direction (although perhaps there has not been sufficient time to tell) since RCT v. Microsoft. Next, your patent, whether in the claims, or in the specification, needs to require that the invention be limited to some embodiment or on some particular apparatus. The limitation just can’t be construed as including a signal or else your claim is toast. Finally, you can claim a “computer-readable medium” if your specification limits the invention to being performed on a non-transitory medium. Otherwise, game over.

I’ve created a document that organizes the cases into one table. It’s interesting so I’ve made it available for download, in case anyone would like to look at the details. Here is the file: [download id=”2″] The document includes the citation to the decision, the claims at issue, the disposition of the claims, and the representative claim language.

Briefly about how I searched, it was difficult to search for “software patents” because of how unpredictable the wording of a claim might be. One of these days, we’re going to come to a point where you send your computer a telepathic vibe of what you want and a query will then return results for you. But we’re not to that point yet, so I conducted a very broad search of all 101 subject matter cases. Then I refined the search manually. Almost all of the subject matter was computer-related, to my satisfaction. Only a couple cases were purely abstract, involving how to play a game. If you want to perform the search for yourself, I used Westlaw:
advanced:(101 & “subject matter”) & DA(after 06-28-2010).

 Posted by at 6:39 pm
Feb 012011

I have been doing research on the scope of a patent’s claims. I’m sure you’ve seen the words on a patent:

While the invention has been described in conjunction with the detailed description thereof, the foregoing description is invented to illustrate and not limit the scope of the invention, which is defined by the scope of the appended claims. Other aspects, advantages, and modifications are within the scope of the following claims.

Even though this language may be used, can an invention really be interpreted so expansively as to include subject material not illustrated in the specification?

In the United States, the answer has been “maybe.” While never being entirely consistent, the Federal Circuit has allowed claims to be applied outside of what is explicitly included in the specification. See Texas Digital Sys Inc v Telegenix Inc (308 F 3d 1193 (Fed Cir 2002) (using a dictionary first to determine the ordinary meaning of claim terms, then looking to the specification); Specialty Composites v Cabot Corp, 845 F 2d 981, 987 (Fed Cir 1988) (“[W]hat is patented is not restricted to the examples [described in the patent specification], but is defined by the words in the claims.”); SRI Int’l v Matsushita Elec. Corp., 775 F 2d 1107, 1121 (Fed Cir. 1985) (“The law . . . does not require that an applicant describe in its specification every conceivable and possible future embodiment of his invention.”). But recently, this approach of looking to claims first and foremost has been abandoned. In Phillips v AWH Corp., the court made clear that the standard is to look first to intrinsic evidence (the specification), and only with ambiguities is expert or dictionary evidence used to interpret the claims. They affirmed the initial panel in that a baffle should be understood from the context that it was outlined in the specification, rather than the plain meaning of the word. This decision has resulted in a clear trend of narrowing claim scope. But a recent case shows that the doctrine of emphasizing the claim language rather than the specification is not dead. In Arlington Indus., Inc. v. Bridgeport Fittings, Inc. (Fed. Cir. 2011), Judge Rader and the majority quoted Ariad v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed.Cir.2010) (en banc):  “[Focusing on the specification] devalues the importance of claim language in delimiting the scope of legal protection. ‘Claims define and circumscribe, the written description discloses and teaches.’” Judge Lourie dissenting countered that “the basic mandate is for claims to be interpreted in light of the specification of which they are a part because the specification describes what the inventors invented. . . . The specification is the heart of the patent.  In colloquial terms, you should get what you disclose.”

This debate that some characterize as the contextualist versus the literalist approach still continues. Be that as it may, some practical take-homes are still in order. Claims arguably cover more than what is disclosed in the specification, in the sense that the plain meaning of a word does not have to be limited to how the specification refers to that word. This could change depending on future cases. In practice, it makes sense to include as many examples of your invention as possible, not limiting such examples as the invention. It also makes sense to then couple that disclosure with broad claim construction.

If the United States law in this area is so complicated, what about other countries? Which countries are broad in claim deference? (i.e. which countries don’t require you to include every example of what you would like protection on?) Which countries are narrow (only grant you protection on material that is explicitly in your specification)? I heard that Russia very narrowly applies its claims, only granting protection for specific examples illustrated in the specification, but I am interested in learning more about this topic. Does anyone know where can I find this international information?

 Posted by at 7:03 pm