The Register Confuses Utility and Design Patents

It surprises me how often even industry publications get IP wrong. A case in point: The Register, the well-respected, often irreverent, but definitely tech-savvy website issuing mainly out of the UK today published a piece poking fun at Apple for patenting (and the PTO for issuing) what appears to be a power adapter for what used to be known as an automobile cigarette lighter (now known in PC-speak as a 12-volt power port).

The Register noted that "the device is so substantially similar to a standar automotive 12-volt power plug . . . that the penetrating intelligence of the US Patent and Trademark Office would surely not grant a patent for it if that were, indeed, its sole purpose. After all, the USPTO defines a patent - or, more specifically, a utility patent, as 'a new, useful, and nonobvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof." The post then went on to speculate as to what other possible uses the "power connector" could be put to.

The problem? The patent number -- D585,375 -- clearly signifies that the patent is a design patent, not a utility patent.

I might be more forgiving if the mistake had been made by a general-interest publication, but The Register holds itself out as "Biting the Hand that Feeds IT" and should know better.

Federal Circuit Revises In re Comiskey (again), Recants 101 Determination

Today the Federal Circuit issued a curious revised opinion in In re Comiskey, an appeal of a Board of Patent Appeals and Interferences decision affirming an examiner's rejection of Mr. Comiskey's patent claims.

What's curious, of course, is not the fact of the revision, but what was revised: where the original opinion had stated that certain of Comiskey's claims described "patentable subject matter under §101," the revised opinion deleted that discussion and instead remanded the claims to the PTO for that question to be addressed "in the first instance."

The bulk of the revised opinion is very similar to the original, in that it affirms the rejection of two independent and a number of dependent claims as not claiming patentable subject matter because they attempted "to patent the use of human intelligence" and described "an allegedly novel way of requiring and conducting an arbitration."

The original opinion then went on to consider two additional independent claims and 29 dependent claims, declared that they "claim patentable subject matter under §101," and remanded the case to the PTO for a consideration of whether the remanded claims are obvious.

In the revised opinion, however, the Federal Circuit removed this entire section discussing these additional claims, and replaced it with a paragraph remanding them to the PTO for the question of patentability under §101 to be considered "in the first instance."

So in the span of 13 days, 31 claims went from enjoying the imprimatur of "claim[ing] patentable subject matter under §101" to worrying in the uncertainty of a remand so that same issue could be "addressed in the first instance by the PTO."

What makes this change so very curious is the court's discussion at the beginning of the opinion. Mr. Comiskey had initially argued that the Federal Circuit lacked the power to consider §101 as a ground for rejection because that ground was not relied on by the BPAI. The court explained that the question of whether the claims were invalid for failure to claim statutory subject matter was "a question of law which we review without deference," and so was a ground that the court had the power to raise. (This reasoning is somewhat tortured, and has come under attack.) The court also noted that raising and resolving the §101 issue made sense where it "'would be wasteful to send' the case back to the agency for a determination as to patentable subject matter."

The court did acknowledge that in some cases, it would not be appropriate for the appellate court to raise and resolve the patentability issue sua sponte, for example where there were additional factual determinations needed that had not been made by the BPAI. In its revised opinion, however, it did not direct the PTO to make any such factual determinations, nor did in indicate that the lack of such facts prevented the Federal Circuit from making its own determination of whether the additional claims satisfied §101 in the same manner as it had no problem doing with the first set of claims.

As a final curiousity, this was a Bilksi-free opinion, perhaps because this is the second/third go-round for this opinion, which vacated the court's 2007 pre-Bilski opinion.

Good Discussion on Invention and Education

Woody Norris is a serial inventor. In this TED Talk, he discusses one of his recent inventions -- an "acoustic cannon" -- as well as his thoughts on the connection between invention and education.



TED is a great source of interesting discussions on all sorts of topics. It's fun to listen to Norris take the invention at the core of his talk and riff on its many potential applications.

NSA Agents Reduced to Conducting E-Discovery on Citizens?

New allegations from Russell Tice, the former NSA analyst who earlier revealed the agency's role in warrantless eavesdropping on international phone calls, suggest that the NSA has also been compiling a vast database of information about the domestic communications of US citizens.  In two interviews with MSNBC's Keith Olbermann -- who is probably not the most objective person to be hosting the discussion -- Tice described in fairly rough terms a practice of data collection and analysis that sounds very much like some forms of electronic discovery.  Wired has a good summary of the assertions here.   

In particular, Tice describes a system of information gathering that is less direct eavesdropping than it is data mining: "This is garnered from algorithms that have been put together to try to just dream-up scenarios that might be information that is associated with how a terrorist could operate," Tice said. "And once that information gets to the NSA, and they start to put it through the filters there . . . and they start looking for word-recognition, if someone just talked about the daily news and mentioned something about the Middle East they could easily be brought to the forefront of having that little flag put by their name that says 'potential terrorist'."  The process he talks about is similar to earlier speculation as to how such surveillance would operate.   

If true, Tice's claims raise obvious Fourth Amendment issues.  They also paint the rather sad picture of some of our country's best intelligence analysts toiling away at tasks that are little different than those practiced by junior associates and contract attorneys in law firms and e-discovery companies from New York to New Dehli.  It would be adding insult to injury, of course, if Tice's allegations are true and the analysis is being directed at the analysts' fellow citizens.  

UK IPO Opens Two New Patent Search Databases

The UK Intellectual Property Office has introduced two new searchable databases that could be helpful to companies doing business there.

The first is a database of expired patents; useful because calculating terms from issue dates is a cumbersome and often inaccurate way of determining whether a patent is in force (for example, if maintenance fees aren't paid, the invention could enter the public domain well before its apparent expiration date).

The second database lists patents that are available for a "License of Right," a form of compulsory license available in the UK where the patent holder agrees to make the patent available for license at a reasonable royalty, and the UK IPO acts as the arbiter of last resort in the event the parties are not able to come to terms.

The search interface is simple -- very Google-like, with a single search box -- and the test searches that I ran executed very quickly. Not at all like what the USPTO forces us to work with.

RIAA Fights Internet Broadcast of File-Sharing Hearing

As you may have heard, a Massachusetts federal district court judge recently granted the motion of the defendant in a file-sharing copyright infringement case brought by the RIAA to broadcast a pre-trial hearing over the Internet. Yesterday, that order was stayed so that the RIAA could appeal it to the First Circuit. The RIAA's mandamus petition is interesting reading. The main ground of the petition is essentially that the judge's order is against the rules, namely rule 83.3 of the local rules.

Really. Let's take a look at Rule 83.3.

-- (a) Recording and Broadcasting Prohibited. Except as specifically provided in these rules or by order of the court, no person shall take any photograph, make any recording, or make any broadcast by radio, television, or other means, in the course of or in connection with any proceedings in this court, on any floor of any building on which proceedings of this court are or, in the regular course of the business of the court, may be held. [Emphasis supplied]

Looks to me like the judge has some discretion there. But, the RIAA argues, allowing recording conflicts with the policies of the Judicial Conference of the United States. This appears to be a stronger argument -- the Judicial Conference has repeatedly come out against permitting the recording or broadcast of court proceedings. In a 2007 statement to Congress, Judge John Tenheim explained the bases for the opposition:

-- The Judicial Conference position is based on a thoughtful and reasoned concern regarding the impact cameras could have on trial proceedings. This legislation has the potential to undermine the fundamental right of citizens to a fair trial. It could jeopardize court security and the safety of trial participants, including judges, U.S. attorneys, trial counsel, U.S. marshals, court reporters, and courtroom deputies. The use of cameras in the trial courts could also raise privacy concerns and produce intimidating effects on litigants, witnesses, and jurors, many of whom have no direct connection to the proceeding. In addition, appearing on television could lead some trial participants to act more dramatically, to pontificate about their personal views, to promote commercial interests to a national audience, or to increase their courtroom actions so as to lengthen their appearance on camera. Finally, camera coverage could become a negotiating tactic in pretrial settlement discussions or cause parties to choose not to exercise their right to have a trial.

While few if any of those concerns apply in this case, there's no arguing that the Judicial Conference is not a fan of broadcasting contentious courtroom proceedings.

So is the RIAA simply defending the Judicial Conference against the actions of a wayward District Court judge? No; the RIAA is concerned that allowing the hearing to be broadcast will cause "irreparable harm." The nature of that harm?

-- Here, where the district court's interpretation of the Local Rule may well open the doors to a flood of applications by broadcasters seeking to record and broadcast other proceedings throughout the District of Massachusetts, there is necessarily a "sufficient showing of irreparable harm" to merit the exercise of this Court's power of mandamus.

So the RIAA is also defending the rest of the Massachusetts Federal Judiciary from the increased burdens of having to deal with this "flood of applications" from others seeking permission to broadcast other trials. A very noble position, to be sure, but of course the RIAA is also worried on its own behalf:

-- Nor is there any doubt that Petitioners would suffer irreparable harm if the proposed broadcast of the proceedings in this case is allowed to proceed.

By way of proof, the RIAA then offers the following explanation:

-- The Judicial Conference has repeatedly expressed the view that presence of cameras in district court proceedings "can do irreparable harm to a citizen's right to a fair trial."

That, however, is by no means proof that irreparable harm would occur in this case. The RIAA's next argument is rather ironic, given the nature of the dispute:

-- Petitioners are concerned that, unlike a trial transcript, the broadcast of a court proceeding through the Internet will take on a life of its own in that forum. The broadcast will be readily susceptible to editing and manipulation by any reasonably tech-savvy individual. Even without any improper modification, statements may be taken out of context, spliced together with other statements, and broadcast rebroadcast [sic] as if it were an accurate transcript.

Of course, a written transcript is even more susceptible to manipulation than is a video or audio recording. It's laughably easy to select statements out of context from a written transcript and present them in a way that is unfavorable to one side or the other. If anything, a video record would make any such manipulation more evident, with cuts and splices to the record appearing as odd "jumps" or "skips" in the recording or in the appearance of the speaker.

The RIAA saves what to me is its strongest argument for last: that the Beekman Center, which would host the broadcast, is strongly opposed to the RIAA's suits against alleged file sharers and is closely allied with the defense team. This, however, is the issue that is easiest to fix -- allow a relatively neutral party, such as a "traditional" news organization, to host the feed.

The RIAA, of course, has a legitimate reason to complain where the manner in which users copy or distribute its members' recordings reaches beyond the often-murky boundaries of fair use. Its vehement opposition to having this hearing broadcast appears to masquerade a real concern about looking bad before an Internet audience with a stated concern about protecting the integrity of the judical system. That's a little ironic in view of the RIAA's recent decision to more or less abandon the courts and let ISPs regulate offending users.

Read Wired's take on this here and here.

WhiteHouse.gov Uses Creative Commons Copyright License

Change.gov is now referring visitors to http://www.whitehouse.gov/. Behind the notice page, however, the website remains active, which is good to know given the amount of information deposited there.

The copyright policy is a bit simpler now, but still incorporates Creative Commons for third-party content:

Copyright Notice

Pursuant to federal law, government-produced materials appearing on this site are not copyright protected. The United States Government may receive and hold copyrights transferred to it by assignment, bequest, or otherwise.

Except where otherwise noted, third-party content on this site is licensed under a Creative Commons Attribution 3.0 License. Visitors to this website agree to grant a non-exclusive, irrevocable, royalty-free license to the rest of the world for their submissions to Whitehouse.gov under the Creative Commons Attribution 3.0 License.

Fed Circuit Pending Patent Appeals Increase Slightly

The Administrative Office of the United States Courts has posted its latest set of judicial statistics. For the year ending March 31, 2008, the number of pending cases being considered by the Federal Circuit declined by about 20%, from 1201 to 975. Most of that decline, however, is accounted for by a decrease in appeals coming from the Court of Appeals for Veterans Claims.

Pending cases originating out of District Courts -- most of which would be patent-related -- increased from 317 to 336, while cases coming from the PTO declined a bit, from 39 to 34.

View the table here; for more appeal stats for other courts, look here.

Webinar -- Protecting Your Intellectual Property

On February 12, I am participating in a webinar titled "Protecting Your Intellectual Property." It's a "basics" type of presentation; if you read this blog and others like it, you probably know most of what we'll be talking about. However, please feel free to register or suggest it to friends or colleagues who would like a quick overview of the area.

Document Destruction Leads to Unenforceability Ruling in Patent Dispute

A dozen Rambus patents have been declared unenforceable against Micron in a long (going on nine-year) patent dispute in the District of Delaware. The reason: the destruction by Rambus of documents as part of its record retention/destruction policy that the district court (Judge Robinson, D. Del.) held were relevant to Micron's patent misuse, antitrust, and unfair competition defenses.

The 33-page opinion went into some detail about Rambus's long-simmering plan to exploit its patent resources, and determined that "litigation was reasonably foreseeable" by "no later than December 1998." Further, "because the document retention policy was discussed and adopted within the context of Rambus' litigation strategy, the court finds that Rambus knew, or should have known, that a general implementation of the policy was inappropriate because the documents destroyed would become material at some point in the future." Accordingly, the court ruled that "any documents purged" from December 1998 forward "are deemed to have been intentionally destroyed, i.e., destroyed in bad faith."

Had Micron only attacked the Rambus patents on their merits, however, the outcome might have been different. In a footnote, the court noted that "defenses that do not seem likely to depend from evidence internal to Rambus include those of anticipation and obviousness, since prior art references (by definition) must be publicly available. Likewise the written description requirement involves an objective review of the patent. . ." The defenses of unenforceability due to patent misuse, violation of the antitrust and unfair competition laws, and inequitable conduct, however, "are defenses that are illuminated by evidence of a non-public nature, e.g., by internal Rambus documents" -- the documents that were no longer available.

The court concluded that given the "clear and convincing" "showing of bad faith," Micron's "showing of prejudice can be proportionally less." Because the documents that were destroyed included "innumerable documents relating to all aspects of Rambus' business," and in view of "Rambus' litigation conduct" (which the court termed "obstructive at best, misleading at worst"), the "very integrity of the litigation process has been impugned."

There are several points (at least) to take away from this remarkable decision:

- Be careful how you implement or change record retention policies. The court found that Rambus's policy was litigation-driven; while in the opinion it appears that the original policy followed on the heels of a recommendation made in a Kroll Ontrack security audit, Rambus's litigation counsel was involved in the decision to implement it. Had the policy come from the corporate side of Rambus, or as a result of a business-oriented decision to clean out a growing accumulation of old files, the outcome might have been different.

- Make sure those responsible for prosecuting patents are aware of what those responsible for enforcing patents have planned. Another factor that hurt Rambus was the order to clean out patent prosecution files, which happened after the December 1998 "litigation was foreseeable" date.

- Be very careful about the extent and enforcement of a litigation hold. Rambus introduced a litigation hold as a result of the Micron dispute in December of 1999, but a year later disposed of "as many of 480 boxes of Rambus materials in connection with an office move."

- Tell your lawyers about your plans to shred. "Rambus employees, in several instances, did not inform outside counsel of the Rambus shred days."

- If the ruling stands, companies embarking on aggressive patent licensing programs may need to keep a much broader range of documents than companies that are trying to keep competitors out of a given market. If courts are going to assume that among the "reasonably foreseeable" litigation issues arising out of licensing negotiations include business issues such as patent misuse, antitrust, and unfair competition, then companies will need to keep documents that bear on such issues. Given the wide-ranging nature of civil discovery in the U.S., this could be a significant burden.

New York Blood Center Drops Social Security Number Requirement

Perhaps on the heels of a New York law that prohibits "[p]rint[ing] an individual's social security account number on any card or tag required for the individual to access . . . services or benefits," the New York Blood Center has finally dropped its longstanding requirement that donors give up their social security numbers to the Blood Center before they were allowed to donate blood or plasma.

I had complained about this more than four years ago, and I knew that the requirement remained in place as of this past fall. In reviewing the new statute, I decided to ask the Blood Center whether it still required its donors social security numbers. A prompt email reply informed me that, as of December 1 of last year, it did not.

Time to roll up my sleeve . . . .

Declaratory Judgment Jurisdiction Still Has its Limits

Contrary to popular belief, there are limits on the scope of declaratory injunction subject matter jurisdiction despite the Supreme Court's broad interpretation of the standard in MedImmune v. Genentech.

For instance, if the patent holder never contacts you at all -- let alone alleges you infringe, or even just sends one of those über-bland letters that brings its patent to your attention -- your DJ action is probably going to be difficult to maintain.

That's the message delivered by Panavise Products, Inc. v. National Products, Inc., a January 6, 2009 non-precedential opinion from the Federal Circuit. Panavise and National each manufacture suction cup mounting devices; National is the assignee of U.S. Patent 6,666,420. National had actively pursued a number of alleged infringers of the '402 patent, but had never contacted Panavise concerning the patent or any Panavise product.

Panavise nonetheless filed a DJ action, alleging that Panavise sold a "potentially infringing" product; that "upon information and belief," National had seen the product at a trade show; and that National had sued other parties for infringing the '420 patent as well as other patents.

The Federal Circuit upheld the trial court's grant of National's motion to dismiss for lack of subject matter jurisdiction. National, the court noted, had attacked the factual allegations in Panavise's complaint that National had seen the Panavise product at the trade show, so that the allegations in Panavise's complaint were not controlling. This "placed the burden on Panavise to demonstrate facts sufficient to support its contention regarding the court's jurisdiction."

Panavise failed to meet this burden: "there is nothing 'definite and concrete,' and nothing 'real and substantial,' as Panavise has never presented any evidence and proof to support its allegation."

The Federal Circuit was careful to point out that it did not mean to say "that the lack of direct pre-complaint communication between a patentee and a declaratory judgment plaintiff by itself is sufficient to defeat subject matter jurisdiction." In this case, however, National's only other actions were its earlier lawsuits against other defendants concerning different products, and Panavise did not make a showing that its product was similar to any of those products.

While it denied National's motion for sanctions, the panel did take pains to note that "the appeal can be viewed as very weak from both a factual and a legal standpoint," and that it "approaches wasting the court's time and unduly delaying more deserving litigants."

Takeaway point: there are limits to the breadth of declaratory judgment jurisdiction even after MedImmune. In the absence of a direct communication from the patent holder, a DJ plaintiff will need to show something else -- in this case, perhaps, a showing that the Panavise product was structurally similar to other products accused by National in the past.

Fed Circuit Rains on ED Texas Patent Suit Parade

The Federal Circuit's recent decision in In re TS Tech USA Corporation is going to make it more difficult for out-of-Texas patent holders with few connections to that forum to sue U.S. infringers there. Difficult, that is, where the strongest connection to Texas is that infringing product ended up there.

In TS Tech, the plaintiff was a Delaware corporation with a principal place of business in Michigan; the defendants were two Ohio corporations (with Ohio PPOBs), and a Canadian corporation. The patent infringement lawsuit was filed in the Eastern District of Texas, where the district court denied the defendants' motion for a change of venue (to Ohio). The district court found that the inconvenience to parties and witnesses was outweighed by the "deference" entitled to the plaintiff's choice of forum.

The defendants took the question straight to the Federal Circuit via a writ of mandamus, which ratcheted up the standard of review from the "abuse of discretion" standard applicable to ordinary appeals to the higher "'clear' abuse of discretion" that "produced a 'patently erroneous result'" standard applicable to mandamus cases.

While the Federal Circuit noted that district court was correct in its evaluation of several "neutral" factors, it ruled that there were "several key errors" that together combined to meet the "clear abuse of discretion producing a clearly erroneous result" standard. In particular:

- the district court "ignored" the Fifth Circuit's "100-mile rule," requiring that the court consider "[w]hen the distance between an existing venue . . . and a proposed venue . . . is more than 100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional distance to be traveled." Here, witnesses were identified in Michigan, Ohio, and Canada, making the proposed Ohio venue materially (900 miles) more convenient than the existing Texan one.

- the district court treated the plaintiff's choice of forum as a "factor" against transfer, instead of merely according it "deference." This seems to be a rather fine point, but at a minimum expect to see future district courts explaining how they have given "deference" to plaintiff's forum choice without weighing it as a "factor" in the venue analysis.

- despite the fact that the "vast majority of physical and documentary evidence" was located in Ohio, Michigan, and Canada, and that none of the evidence was in Texas, the district court incorrectly treated the location of the evidence as a "neutral" factor because many of the documents were in electronic form. The Federal Circuit pointed out that, given that all of the physical evidence was "far more conveniently located near the Ohio venue," this factor should have been weighted in favor of transfer.

- the public interest did not favor the Texas forum, since allegedly infringing product was sold nationwide. As a result, the "citizens of the Eastern District of Texas have no more or less of a meaningful connection to this case than any other venue."

- finally, in an effort to justify its decision that this was a "clear abuse of discretion," the Federal Circuit compared the TS Tech case with the Fifth Circuit's most recent leading venue case, In re Volkswagen of Am., Inc., and after listing the factors from that case that favored the same finding (including that the district court "glossed over the fact that not a single relevant factor favored the plaintiff's chosen venue") stated that "the district court's errors here are essentially identical." (Ouch.)

While TS Tech is not going to preclude use of the Eastern District of Texas as a popular forum for patent infringement cases, it will make things more difficult for plaintiffs that cannot show an obvious connection to the forum. Expect to see patent plaintiffs add as defendants ED Tx-based parties in the distribution chain in an effort to bulk up the relevance of the forum to something more than "some infringing products ended up there."