Initial Office Action in reexamination of ' 517 FAT patent

There was an initial rejection of claims in the re-examination by the USPTO of one patent of Microsoft covering File Allocation Table (FAT) technology. The Public Patent Foundation had announced in April that it had submitted a request for a reexamination of Microsoft's US Patent No. 5,579,517.
(see http://pubpat.org/Reynolds%20517%20Reexam%20Request.pdf) A copy of the Office Action is available.
(see http://www.pubpat.org/Reynolds_517_OA_09162004.PDF)

The "next step" will be for Microsoft to respond to the first Office Action. At this point in time, the patent is valid.

Microsoft's licensing program involves

5,579,517: "Common name space for long and short filenames"
5,745,902: "Method and system for accessing a file using file names having different file name formats"
5,758,352: "Common name space for long and short filenames"
6,286,013: "Method and system for providing a common name space for long and short file names in an operating system"

All four of these patents deal with the virtual FAT, a system driver that acts as an interface between an application and the system's FAT. One of the limitations of the FAT file system technology is that it can store only files with eight-letter words; VFAT allows for the longer file names commonly used to today.

Nanotech and silver antibacterial combine

Another example of a Bayh-Dole effort is NanoHorizons (State College, PA), which initially developed silver nanoparticles in conjunction with a medical manufacturer that makes devices that get implanted in a person's body. The company (12 people) has received funding from, among others, Pulsar Ventures and Life Sciences Greenhouse.

NanoHorizons is largely promoting its silver and gold nanoparticles, which come in solutions that range in price from $100 to $400 a liter. The silver and gold particles themselves range in size from 10 nanometers to 90 nanometers.

The use of silver particles of colloidal size as antibacterials is well-known in the art. Further, the antibacterial properties of silver have been known for some time (e.g., silver spoons). Whether silver itself (i.e., Ag(0)) or some form of ionic silver on the surface of elemental silver is not clearly established. Additionally, whether the antibacterial properties are regenerable is a significant issue, especially for nanoparticles.

Relatively small group of people deciding patent policy?

The jump below is to a discussion in the New York Times of a book by Lerner and Jaffe, generated in the context of patent reform.

Although this is "news" in the New York Times for Sept. 27, 2004, Scientific American had published a review in May 2004. Sadly, the book relies on many mistaken assumptions, including the patent grant rate numbers of Quillen and Webster.

--> From Scientific American website, May 2004

The patent bar is a priesthood with its own secret dialect, intelligible
only to initiates. Two economists--Adam B. Jaffe of Brandeis University and
Josh Lerner of Harvard Business School--have now undertaken to translate for
the rest of us the inner workings of the patent process and then to dissect
what plagues it. Innovation and Its Discontents: How Our Broken Patent
System Is Endangering Innovation and Progress and What to Do about It is to
be published by Princeton University Press in October. The book describes
how two seemingly well-meaning changes made by the U.S. Congress have
engendered the current crisis. In what the authors call a "silent
revolution," Congress in 1982 took what appeared to be the relatively
mundane decision of assigning all appeals in patent cases to a single
court--the Court of Appeals for the Federal Circuit (CAFC). Intended to
eliminate "forum shopping" (the attempt by plaintiffs to find the most
patent-friendly jurisdiction), the congressional move ultimately resulted in
a court whose specialized nature tended to turn it into an advocate of
patent holders' rights. The CAFC has issued ruling after ruling that
sustains lower-court findings of patent infringement and has fostered the
extraction of greater damages from defendants. It has even made it easier
for a patentee to shut down a competitor's business before the patent is
shown to be valid. And its rulings have held that software, business methods
and certain biotechnologies--considered by many to be unpatentable--are
eligible to receive patents.

The other major action by Congress came in the early 1990s, when, during the
annual budgetary process, it converted the U.S. Patent and Trademark Office
from a primarily taxpayer-funded agency to one that survives on the fees it
collects. The revamped structure, intended to serve patent applicants in a
businesslike manner, created incentives to process patent applications as
fast as possible, with little heed to the complexity of a particular
application. The two actions, Jaffe and Lerner assert, led to a decline in
rigor in the standards by which patents are assessed. The impact of the
changes resulted in an explosion in patents granted: annual increases in
patenting had nudged along at a rate of less than 1 percent from 1930 to
1982; in contrast, that rate skyrocketed to about 5.7 percent from 1983 to
2002.
Rather than marking a blossoming of innovation, the patent boom has
signified a rise in the number of questionable patents, such as, infamously,
a Smucker's patent on crustless peanut butter and jelly sandwiches. A
broadening of patent coverage has also inhibited research. For instance,
some medical investigators, the authors note, have abandoned their programs
to study two breast cancer genes because of what they perceive as onerous
licensing terms imposed by Myriad Genetics, the holder of the patents on
these genes. A concurrent growth in infringement lawsuits creates a
situation in which established companies, often with declining market shares
but large patent portfolios, file suit against smaller firms, forcing the
defendants to pay royalties that crimp their ability to conduct their own
research and development. The collective effect has produced what the
authors characterize as nothing less than a tax on innovation.

[Book relies on patent grant statistics of Quillen and Webster, debunked in July 2004; see
http://jip.kentlaw.edu/art/volume%204/4-1-4.htm]


-->From "Greedy IP":

http://www.nytimes.com/2004/09/27/technology/27patent.html?th

Key quotes:
"there's a relatively small group of people in the D.C. patent bar, and they have a very powerful influence on how patent policy gets decided. There is a powerful incentive for them to keep a patent system that is complicated, and one that involves protracted, costly litigation."

Yikes! They're on to us!

and:

"Second, to see the patent review process as 'one size fits all' is again a mistake. There has to be way to figure out how to devote more resources to those patent applications which are really the important ones, and less to the unimportant ones."

P/A to large corporate client: "sorry, sir, it's been determined that your application just isn't all that important."

Pfizer to contest Chinese action on Viagra patent

Bloomberg:

Pfizer Inc. appealed on Sept. 28 China's revocation of its Viagra patent in a case that may test the nation's commitment to stronger protection for intellectual property rights.

The appeal of the July decision by China's State Intellectual Property Office was filed with the Beijing First Intermediate People's Court, Wang Xunbiao, public relations manager in Beijing for the New York-based company, said in a telephone interview.

Abandoned cars in Hamilton, NJ

Page D4 of the Trenton Times of Sept. 27 contains "public notice" of Hamilton Township, NJ accepting sealed bids for the sale of abandoned vehicles:


1992 Audi, 1992 Nissan, 1991 Ford, 1992 Jeep, 1993 Chrysler, and 1995 Ford.

Boston Globe on EmCell's stem cell work

A recent article in the Boston Globe on EmCell, a company in the Ukraine engaged in research on embryonic stem cells, was skeptical of the work by EmCell. While not judging the accuracy of the evaluation of EmCell, I noticed several misstatements in the Globe article.

Text from Boston Globe:

A patent, moreover, is no indication that a technique actually works, said Janis Fraser, who reviewed EmCell's patents for the Globe and is a principal in the Boston office of the law firm Fish & Richardson. A patent is a claim of invention, and the patent office's main function is to verify that an invention is original. It does not test effectiveness. In the United States, the FDA is charged with evaluating whether a treatment is safe and effective. An FDA spokesperson said that the agency has no information on EmCell.

[Comment by LBE: It is true that the Patent Office does not experimentally test inventions. However, it is not true that the "main" function of the PTO is to check originality. The PTO is charged with evaluating patentability, which includes utility, novelty, nonobviousness, written description and enablement. Of enablement, the PTO does check to see that the disclosure enables the invention for practice by one of ordinary skill. Albert Einstein did the same thing in the Swiss patent office a hundred years ago. The FDA does check whether a treatment for a particular purpose is safe; however, a medical doctor is legally allowed to prescribe an approved drug for a purpose OTHER THAN evaluated by the FDA.]

The EmCell website contains numerous scientific reports, which it calls "publications." But none have been published in a journal reviewed by other scientists, meaning that they hold no more weight than an advertisement. Smikodub said that he would like to publish his results in peer-reviewed research journals. He said he submitted one report, on his AIDS therapy, to a journal, but it was rejected without explanation.

[LBE comment: The term "publication" refers to something that has been published (made publicly available.) What "weight" the publication has is determined by whether it is accurate and reproducible. Publications in the Proceedings of the National Academy of Sciences (PNAS) can be communicated (not reviewed) but still have more weight than an advertisement. Further, the publications of Jan-Hendrik Schon were peer reviewed by referees for journals such as Science and Nature, and yet turned out to be fraudulent, not accurate and not reproducible. The absence of peer review does not prove lack of value and the presence of peer review does not prove value.]

Forgent. JPEG. LizardTech.

Forgent acquired U.S. Patent No. 4,698,672 (issued 1987) from its predecessor company's acquisition of Compressions Labs Inc. in the mid-1990s. The patent is directed to compression technology in JPEG, a standard developed through the Joint Photographic Experts Group Committee. Forgent is currently suing 42 major technology vendors over their use of technology in the JPEG image standard.

Three additional patents Forgent may seek to enforce are U.S. Patent Nos. 5,933,597; 6,181,784 and 6,650,701.

UPDATE from pdfzone:

The story was first reported on PDFzone on April 26, around the time the suit was filed in U.S. District Court.


Adobe, it turns out, had been the first to settle with Forgent back on July 2, for an undisclosed amount of money. It was dropped from the still-pending suit's list of defendants. Sony settled soon after.



The nuts and bolts of the case revolve around Forgent's U.S. Patent #4698672 , which addresses a particular algorithm used in JPEG compression, which most industry analysts believed to be public domain. Google, Apple, IBM, Kodak, and Xerox were among defendants named in Forgent's original complaint or were later added to the list--31 were named at first, and 11 more were added since.



"We believe that the patent continues to have significant value, and we will continue to license and litigate against those who we believe are infringing but have not yet agreed to a license," Forgent CEO Jay Peterson said in a July 2 article published in the Austin American-Statesman.



Forgent claims to have made $100 million in settlements so far. Some 90% of the fledgling software company’s revenue has come from patent negotiations; according to reports in the Austin American Statesman newspaper, the company is going after the digital recording technology behind TiVo in another potential lawsuit.



Furthermore, Forgent has hired a 650-lawyer firm, Baker and Botts, to scour 40 more patents tech it owns for potential infringements.



The company develops scheduling software, and employs 300 people. Licensors of its JPEG patent worldwide had paid the company about $90 million at the time the suit was filed.



Forgent claimed to have made $50 million in settlements on the JPEG patent before Macromedia agreed to terms. Dallas-based law firm Jenkins & Gilchrist--working on the JPEG case--also receives 50% of the licensing revenue plus some expenses from the patent.



The 17-year-old JPEG patent expires in October 2006.

UPDATE:

There seem to be similar concerns (related to JPEG2000) about US 5,710,835, which technology was developed by Los Alamos National Laboratories, and licensed by Lizardtech. In October 1999 Lizardtech sued Earth Resource Mapping (ER Mapper), claiming infringement of the '835 patent. ER Mapper is a strong supporter of the JPEG2000 image standard, which competes with Lizardtech's proprietary compressed image format.

See
http://www.directionsmag.com/press.releases/?duty=Show&id=10513&trv=1&PRSID=2a11be8696d782066e9f25680f61d2b6

UPDATE: The CAFC held in favor of Earth Resources and against LizardTech and UC/Berkeley on October 4, 2005. (05-1062)

Applied Materials and Novellus Systems settle patent dispute

Applied Materials and Novellus Systems announced on September 24, 2004 an agreement that provides for a payment to Novellus of $8 million and waives a claim for unpaid royalties of approximately $3.5 million. The agreement also contains provisions limiting for specified time periods each party's ability to sue each other (and each other's customers and, in certain circumstances, suppliers and distributors) for infringement of their respective patents covering products in certain technology areas. For existing products, the specified time period is five years, and for new products, it is two years. There is no new license of technology in the agreement. The agreement ends all pending lawsuits between the companies without either party admitting any liability. Additional details of the agreement are disclosed in Applied Materials' Form 8-K filed Sept. 24.

Changes coming in Wi-Fi?

In sorting out how to pay for its patent infringement loss in 2003 to Symbol, Proxim, to reduce its future payments from 6% to a more manageable two percent, has agreed to hand over some of its own patents to Symbol. These are related but different to the Symbol patents, but Symbol general counsel Peter Lieb believes they will produce another royalty stream. Also, the transferred patents have more life left, because the patents handed over by Proxim last until 2014, while the Symbol patents referred to in the suit, run out in 2009.

The technology in question in the patent litigation, a power save feature, is built into standard Wi-Fi chipsets but, but according to analysis of the jury verdict, does not infringe the Symbol patent until the chipset is built into a system. This is a standard feature on every 802.11 access point. This means that every other Wi-Fi system supplier could be infringing claims of the patent of Symbol and liable to pay 6% royalties.

The next licensing targets could be Linksys, Belkin, Apple, and Cisco.

Ironically, this bad result for Proxim originated in a patent suit brought by Proxim against Symbol. This result illustrates the careful analysis required in deciding whether to bring a patent infringement suit at all.

**UPDATE**

---->Unstrung has the following post on 9/24/04:

Chris Quilty, analyst at Raymond James & Associates Inc., writes in a research note that the Symbol/Proxim case involved a number of patents that are "fundamental" to the 802.11 standard. Therefore, he reckons, Symbol could use the $23 million settlement as a lever in "a targeted campaign against low-end equipment vendors that possess no intellectual property position."

"That's my supposition -- it's not supported by anything the company has said," Quilty told Unstrung on Friday. "But they are extremely litigious, and they've been successful at it... I'm just connecting the dots.

--> In response, one notes that the Symbol/Proxim case involved litigation over claims of a patent directed to a power save feature. Further, as noted, it was PROXIM, NOT SYMBOL, that started the litigation.

----> from wifiplanet:

Techdirt says the US Patent office is to blame and that current laws have us on the "eve of a patent apocalypse," tech companies in particular.

[Of the projected lawsuit by PowerOasis against Wayport], Wayport's official response to inquiry about this law suit is that it "hasn't formally been served with a lawsuit yet—in fact we had never even been contacted by PowerOasis before they filed this suit—but we have obtained a copy of the documents and begun our review. We believe that the claims made are without merit and intend to vigorously contest them."

The 'without merit' feeling is shared by others. The technology commentary Weblog techdirt said this week, "Basically, PowerOasis is admitting that Wayport has a better sales and marketing force. No one at Wayport deprived PowerOasis of anything. They just beat them in the market." Not to mention companies like T-Mobile Hotspot, Sprint PCS, Boingo Wireless, Hotspotzz -- just about every consumer hotspot provider around has some form of pay-as-you-go access for customers not looking for a long term subscription.

[Wayport is known for its successful locations in hotels and airports, and even more for landing the deal to unwire as many as 8,000 McDonald's restaurant locations in the United States over the next year.]

UPDATE: okpatents.com has posted a copy of the complaint in the PowerOasis/Wayport matter at
http://www.okpatents.com/phosita/images/Poweroasis%20v.%20Wayport%20Complaint.pdf

UPDATE from internetnews (Oct. 23, 2004):

The Newport Beach, Calif.-based company is sending out information packets to Wi-Fi operators informing them of the patent claim and including a licensing agreement. Companies have 30 days to ask questions, sign the licensing pact, or prove to Acacia that the wireless operator is not infringing the patent.

The licensing pact demands that hotspot operators pay Acacia $1,000 a year for up to 3,500 redirected connections -- after which operators would have to pay 5 to 15 cents for each redirected connection.

"Anybody who operates a hotspot with redirection can assume they'll hear from us," Acacia's executive vice president of business development and general counsel Rob Berman told Wi-Fi Networking News.

Berman emphasized that this is not a "shakedown" of mom-and-pop coffee shops that operate a Wi-Fi hotspot.

Austin, Texas-based Wayport—on its way to becoming the nation's biggest hotspot provider through a deal with McDonald's—says it is one of the many Wi-Fi hotspot companies under scrutiny from Acacia.

"Wayport has received a package of materials from Acacia," says Amy Shields, a spokesperson for the provider. The letter seeks "Wayport's acquiescence to a licensing agreement by which Wayport would pay Acacia a usage-based fee."

"Our IP attorneys are reviewing this matter and we are evaluating next steps," Shields says.

T-Mobile USA's response was "no comment," according to Bryan Zidar, a spokesman. Earlier this week, T-Mobile announced it had finished rolling out 802.1X security throughout its 4,700 hotspots using new Connection Manager software. Using the software, there is no redirection.

Berman has said Acacia believes the royalties will not burden small operators, nor stifle the Wi-Fi market.

"We don't think it will have any impact at all on the Wi-Fi industry," Berman told Wi-Fi Planet.

In 2001, the patent in question (No. 6,226,667) covering "controlled communications over a global computer network," was granted to LodgeNet. LodgeNet provides hotel guests with interactive television services. Acacia purchased the patent from LodgeNet in July.

Earlier this year, Nomadix raised eyebrows when it announced it would enforce its own patent (No. 6,636,894 B1) covering how Wi-Fi hotspots redirect users. Acacia appears to have beat Nomadix to the U.S. patent office: the Nomadix patent was filed in December 1999, while Acacia's was filed in January that same year.

"Nomadix has always respected the valid and enforceable patent rights of others in our industry, as we expect our competitors to do the same," said Kurt Bauer, CEO of Nomadix.

"We are communicating with our customers and partners to ensure them that business continues as normal, and we will stand behind them," Bauer said in a statement.

The patent for redirecting Wi-Fi hotspot users joins other high-profile patents that have given Acacia a somewhat infamous reputation. In July, the non-profit digital rights group Electronic Frontier Foundation (EFF) named Acacia's patent for streaming audio or video to the top of the EFF's list of worst patents. Universities, local cable television and online porn outlets were asked to license the patent described as covering "the transmission and receipt of digital content via the Internet, cable, satellite and other means."

Wi-Fi service providers which stream audio or video wirelessly could hear from Acacia, says Berman.

UPDATE.

Wi-Fi was an issue in the Scott Peterson trial.

from Ben Charny at law.com:

Wireless Internet access is the latest must-have technology inside courtrooms, but some courthouse administrators admit they installed the gear understanding very few of the pitfalls.

For instance, at the recently concluded trial of double murderer Scott Peterson, a savvy TV news reporter used the courthouse wireless network to bend, but not break, the media rules set by the presiding judge, Alfred Delucchi. While short of broadcasting a video image of the proceedings, which was banned, the reporter did cause a stir by supplying a live, text account of the proceedings. The judge's staffers later said they'd been outfoxed.

"After Delucchi banned cameras in the courtroom, we asked ourselves how can we do this and still put on a good product?" said Dan Weiser, news director of TV station KCRA-TV in Sacramento, Calif., whose reporter used the court's Wi-Fi network to paint the word picture for viewers. "The technology was there, so we did it."

Peggy Thompson, executive officer of the San Mateo County Superior Court, said the incident illustrated just how much she and other court administrators don't understand of the dangers associated with the wireless networks they're embracing.

Freely available software lets laptops make phone and videophone calls over the Internet -- and could easily be used for a guerilla broadcast of courtroom events, as they unfold, to anyone with a Web connection.

Jurors in jury assembly rooms are encouraged to use the wireless network to pass the time on the Internet -- but they could easily download illegal copies of music or movies. And because the networks create wireless zones that are hundreds of feet long, someone outside the courthouse could be logged on and up to no good.

"In my life, I would have never thought you could do any of that," Thompson said. "When we put the wireless network in about two years ago, we didn't think anybody would even use it."

Of the courts that built wireless networks, some experts estimate about half are in the same predicament as San Mateo County, in that they installed the technology with the best of intentions, but only afterward realize the Pandora's box of problems they have opened. The startling percentage is improving, however, as courts upgrade to more sophisticated wireless hardware and use better systems integrators, while court administrators urge judges to create rules about how and when courtroom visitors can use the networks.

"Courts in general don't have a good policy on this," said Michael Overing, an adjunct professor of Internet law at the University of Southern California's Annenberg School of Journalism.

No one is dismissing the benefits of wireless networks for courts, especially ones with heavy case loads. Known informally as Wi-Fi, or wireless fidelity, a single Wi-Fi wireless access point creates zones up to 300 feet in area, in which laptops and personal digital assistants can access the Internet at very fast speeds and without having to plug into anything. Courts turning to Wi-Fi will spend about three times less to outfit every office, desk and courtroom with Internet access than if they used traditional wired means, according to Tom Racca, a vice president of Chantry Networks in Waltham, Mass. And with more employees using the Net, productivity increases, with cases making their way through the system much quicker. But court administrators now realize that wireless networks also have downsides.

"Technology develops so quickly, and some people just don't realize what it can do," said a spokesman for the Administrative Office of the United States Courts, the administrative arm of the federal judiciary.

Courts can solve Wi-Fi headaches using a number of options. The most expensive results in state-of-the-art wireless networks such as the one the Bernalillo Metropolitan Courthouse in Albuquerque, N.M., installed when it built a new courthouse two years ago. The wireless network, supplied by Boulder, Colo., firm SpectraLink Corp. and Chantry Networks, doles out Internet access depending on your access privileges and where you are in the courthouse, and also blocks transmissions of instant messages, e-mails or other kinds of Internet data, said Paul Roybal, the court's chief information officer.

"We built this place from the ground up, and adding wireless was one of the easiest things we did," Roybal said.

A less expensive route, and better if you've already added a wireless network, is to ban, or further restrict, where laptops and other Internet-enabled devices are allowed in courthouses. Some courts let lawyers and other parties to a case use their laptops inside a courtroom, while members of the public cannot. At the Peterson trial, Delucchi allowed reporters to use their laptops, ostensibly to take more accurate notes. That probably won't happen again in Delucchi's courtroom, and may spark other San Mateo County judges to clamp down on courtroom laptop use as well, according to Thompson.

Also, according to Chantry Networks' Tom Racca, some courts don't realize that the access points they've installed have built-in security measures to shield the data being transmitted, and require a password to log on. Typically, the Wi-Fi access points are shipped with such security measures turned off. "It's easy enough just to turn these things back on," he said.

Amicus briefs in Phillips

The Patently Obvious blog (Dennis Crouch) has links to several of the amicus briefs filed in Phillips v. AWH (2004 U.S. App. LEXIS 15065), a case that may resolve issues in the Texas Digital line of cases (308 F.3d 1193 (CAFC 2002)).

I notice that the brief of IP section of the ABA, filed Sept. 20, responded to Judge Rader's suggestion.
See http://www.abanet.org/intelprop/Phillips_AWH_Amicus_Brief.pdf

The issues upon which the court requested briefing (and a few of my comments) are as follows (see Int. Prop. Today, pp. 34-37 (Sept. 2004)):

1. Is the public notice function of patent claims better served by referencing primarily to technical and general purpose dictionaries and similar sources to interpret a claim term or by looking primarily to the patentee’’s use of the term in the specification? If both sources are to be consulted, in what order?
2. If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope? If so, what language in the specification will satisfy those conditions? What use should be made of general as opposed to technical dictionaries? How does the concept of ordinary meaning apply if there are multiple dictionary definitions of the same term? If the dictionary provides multiple potentially applicable definitions for a term, is it appropriate to look to the specification to determine what definition or definitions should apply?
3. If the primary source for claim construction should be the specification, what use should be made of dictionaries? Should the range of the ordinary meaning of claim language be limited to the scope of the invention disclosed in the specification, for example, when only a single embodiment is disclosed and no other indications of breadth are disclosed?
4. Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?
5. When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity under, e.g., 35 U.S.C. §§§§ 102, 103 and 112?
6. What role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms?
7. Consistent with the Supreme Court’’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (CAFC 1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?

The touchstone for divining the meaning of a term of art should be the understanding of that term by one of ordinary skill. One of ordinary skill would view a term in the context of its use, so one suspects that a definition of a term of art in the specification should control over dictionary definitions. Further, in the absence of a definition of a term of art in the specification (e.g., hydrosol ), the meaning understood by artisans is intended, so that a technical dictionary definition should suffice and control over a general dictionary definition. General dictionaries could be consulted for the meaning of non-technical words. In all of this, one has to distinguish issues about term definition from issues about allowable scope through written description limitations. One suspects that issues from University of Rochester v. Searle may still linger.

Of the hydrosol case:

See discussion of the meaning of hydrosol in Novartis v. Eon, 363 F.3d 1306 (CAFC 2004) in Lawrence B. Ebert, Int. Prop. Today, p. 8 (May 2004): “Separate from the specific technical issues pertaining to hydrosol, the larger concern with Novartis is with the approach in which
general purpose dictionaries, which are not concerned with technical nuances, can be used to limit claim terms in ways which might not be apparent to one of ordinary skill and which might not accord with the knowledge of one of ordinary skill. A technical person would not go to Webster's to learn about the meaning of hydrosol, and would not rely on such definition in research.” In Phillips, the concern was over the meaning of “baffles” in vandal-resistant building wall modules, with the initial holding that the claim in question covered only baffles not oriented at 90 degrees to the wall. The Innova case is also relevant to term meaning and written description.

Of the Rochester case:

Contemplate endnote 5 of James J. Kelley, Are there 2 or 3 requirements in 35 USC 112 P1?, Int. Prop. Today, p. 34 (Jan. 2004) in comparison to Judge Rader’s dissent from the decision not to hear the case en banc (Univ. Of Rochester v. Searle, 2004 U.S. App. LEXIS 13784, on appeal from 358 F.3d 916 (CAFC 2004)) wherein Judge Rader said “Indeed a brief survey of the literature on this topic, an astounding amount in a few short years, shows 31 articles criticizing the Eli Lilly doctrine, 7 articles defending the doctrine, and 16 neutrally commenting on the state of this evolving case law.” Of the Rochester decision, see also Lawrence B. Ebert, There's Always Something There To Remind You, Int. Prop. Today, p. 49 (May 2003).

"Perpetual motion" in data compression?

Roger Howorth writes:

-->

But there is a danger that people could obtain patents for technologies that they have not yet created. This scenario is not as unlikely as one might think.

Well, I became interested in the patent-free Gzip compression algorithm once I noticed that Microsoft had begun using it. It was at a press briefing about Exchange 2003 recently that I found out that the new version of Microsoft's groupware uses Gzip compression to speed up network performance from the email server to certain types of client device.

Now, I had come across Gzip on various Linux and Unix systems, and in popular Windows tools, such as WinZip, and I guess Microsoft must have first used it for the Compressed Folder feature in Windows XP. So I was interested that Microsoft's use of open compression is growing.

I was particularly interested as Gzip was developed specifically as an open - IETF RFC 1952 - compression algorithm that did not contain any patented technologies. Given that Microsoft did not simply go off and grab a ready-to-run version of Gzip from the web, it surely chose Gzip because it's an open standard that does not include patented technologies.

Well good for Microsoft.

I guess it chose Gzip so that both Microsoft-designed devices and third-party devices could connect to Exchange using the same compression. Now if Microsoft's choice of a patent-free compression algorithm is an irony, it is not the only one.

Among the rather dubious patents issued in the past by the US are several for perpetual motion machines. Eventually the folks at the US patent office came to their senses and stopped issuing patents for what is commonly accepted to be something that is impossible to invent.

But this has not stopped them from allowing several patents of compression algorithms that claim to be able to compress random data. For the record, storage experts agree that it's not possible to compress random data.



<--

As comments to Roger's text, I note that

** if it is truly impossible to compress random data, then 1) no one has to worry about infringing claims of a patent which asserts compressing random data because it is impossible to infringe and 2) the USPTO does get around to impossible patents (see BlackLight).

** if it is possible to compress random data and someone got a patent claim to do it, but didn't really describe the invention and/or enable it, then the patent will be found invalid. See for example, the demise of the University of Rochester's COX-2 patent in University of Rochester v. Searle.

Automark attempts to profit from Help Americans Vote Act

Automark Technology Systems LLC is pushing a Voter Assist Terminal—a ballot machine for people with disabilities.

Automark was founded two and a half years ago by Eugene Cummings, 62, and Joseph Vaneck, 43, both patent attorneys who maintain private practices here, Automark has a lot riding on the machine. The idea for the terminal came from Mr. Cummings, who accompanied an inventor client to a trade show for voting technology in 2002. He was struck by the fact that machines for voters with disabilities were not compatible with existing voting equipment.

See also U.S. 6,668,517; 6,662,998; 6,641,033 (Hart InterCivic, Inc.)

PAIR and IFW at Patent Office

PAIR is the Patent Application Information Retrieval system that displays information regarding patent application status. There is both a PUBLIC and PRIVATE side to PAIR.

--> “ Public PAIR ” only displays issued or published application status. To access Public PAIR, you need only have a patent, application, or publication number that you wish to search.

--> “Private PAIR” is the Patent Application Information Retrieval system developed to provide secure access for customers who want to view current patent application status electronically via the Internet. Private PAIR provides secure real-time access to pending application status and history using digital certificates issued from the USPTO's Public Key Infrastructure. Private PAIR provides real-time status information for all action taken by the USPTO for a given application. Private PAIR allows the customer to have access to USPTO's internal database (PALM); therefore, the customer can view the information as soon as it is posted. To access Private PAIR, you must

be a registered patent attorney/agent or an Independent Inventor,
have a customer number,
have a digital PKI certificate to secure the transmission of the application to the USPTO,
have downloaded the software to your PC.

--> PAIR and IFW (image file wrapper): To maintain general availability of USPTO information and services provided on the Internet, any activity or operation by a third party that has the potential to cause a denial or diminution (decrease) of services to other customers, whether generated automatically or manually, will result in the Office’s denying access to the Office Internet resources to that third party.

Contact the Patent Electronic Business Center (EBC) for assistance with IFW images in PAIR. The Patent EBC is a complete customer service center that supports all Patent e-business products and service applications, and can be reached at 703-305-3028 or toll-free at 866-217-9197 between the hours of 6 am and 12 midnight Monday through Friday ET, or by e-mail to ebc@uspto.gov.



*******************

-->from text by Kevin Flynn:

Because patent rights are like laws, it has been always been possible to find all issued patents through various hard-copy and electronic search methods, just as any other public record. The PTO has maintained public databases facilitating searches for US Patents, but the databases did not include the important file wrapper material. Until relatively recently, there really was no way to search for or learn about pending applications. After a patent was issued, anyone interested could order the contents of the file wrapper (also called the "prosecution history"), and after paying several hundred dollars and waiting a week or two, a copy of its contents of the file wrapper on the issued patent would be provided. Before issuance, however, patent applications were hidden from all but the inventor, his attorney and the patent examiner.

A recent change to the patent laws calls for most patent applications to be published approximately eighteen months after entering into the process. This is useful as most applications take more than three years to get through the process--and unfortunately, many patent applications take substantially longer than three years. This publication rule is a major improvement to reduce the number of patent applications that are hidden in the patent application pipeline. Without the implementation of Public PAIR, however, this process would take on far less significance. Now there is no waiting period and no cost to be able to see details on most pending applications (there are some patent applications that are not published, but this is a small percentage).

The new big picture is that patent attorneys and anyone who cares to look can easily and at no cost look at pending patent applications well before the application is either issued as a patent or abandoned. Added to search capabilities for issued patents, the interested public now has a set of very powerful tools available to it.

How does this change the patent landscape?

While not everyone is going to want to learn how to access the information in Public PAIR, many people other than the patent applicant and its attorney have a legitimate interest in knowing what is happening within the patent process on various patents.

Many businesses routinely check the PTO databases to see if new invention on which they are working are truly different from the patent applications already on file at the PTO. The result of being able to obtain detailed information about potentially important patent applications owned by competitors, allows uncertainly to be removed for certain business decisions and can sometime provide early indications of the competitor's future product offerings.

Further, the patent application process, as it can now be viewed, allows a preview of the process that shapes the scope of the claims. Access to the information in the IFW even before the patent issues allows careful analysis and a prediction as to what may or may not be permitted in competition if the patent does issue. While judges deciding infringement issues have access to this information after the fact, the early release of and easy access to the information allows analysis of the claims at the time they are being evaluated and shaped by the patent examiner. It is a step forward to make it easier for companies to see the shape of legal prohibitions in time for the company to reshape its product plans.

Accuracy in publication--time for law reviews to wise up?

An editorial in the Trenton Times (22 Sep 04, p. A18) states:

-->If there was a time for the responsible news media to exert every effort to get it right, it's now... The democratic process can work only if the public is well informed and has faith in the information it gets, which is why it's essential that the traditional newspapers and networks retain -- or in some cases, recover -- their reputation for accuracy...

Beginning journalism students are taught to verify information before presenting it as fact...

As doubt about the documents spread, Mr. Rather and CBS hunkered down and defended their report. "CBS stands by, and I stand by, the thoroughness and accuracy of this report, period," Mr. Rather said defiantly.<--

In a far less publicized arena than the National Guard memos presented by Dan Rather and Mary Mapes, I had pointed out factual errors in an article published in the University of Chicago Law Review (71 U. Chi. L. Rev. 129). Even though a particular footnote (number 29) cited to an an article which did not support the contention advanced (and separately did not refer to the correct page of the source article), I received the following Rather-esque response: “The Law Review checks and proofs its articles very thoroughly before publication in order to ensure that no substantive errors are published. It is our policy not to issue corrections for stylistic or substantive disagreements.” Wholly apart from the problems with the page number and the non-support, the Law Review article itself presented a contention which was substantively wrong. The particular contention was that the inventors of the transistor anticipated uses only for hearing aids, and thus did not foresee the scope of utility of their invention. In the October 2004 issue of Intellectual Property Today, I present comments of John Bardeen's first graduate student on the accuracy of the allegations in footnote 29 in 71 U. Chi. L. Rev. 129.

Although many academic commentators have been quick to criticize failings at the Patent Office, they are glacial in responding to errors that they make. The non-discussion of these errors allows the errors to become imbedded as virtual folklore and thereby serve as an impediment to valid academic debate. An article in the Harvard Law Review in 2003 asserted that the patent grant rate at the USPTO was 97% ! [116 Harvard Law Review 2164 (2003), as discussed in Lawrence B. Ebert, Good Night, Gracie?, Intellectual Property Today, pp. 26-27 (August 2003)] A different example of this problem is a misstatement in the Boston University Law Review about the work of Robert Clarke in evaluating the patent grant rate issue (Mark A. Lemley and Kimberley L. Moore, Ending Abuse of Patent Continuations, 84 B. U. L. Rev. 63 (2004) at footnote 22); the mistake of Lemley and Moore is discussed in http://jip.kentlaw.edu/art/volume%204/4-1-4.htm.

If articles in law reviews are to serve as a resource of information, it is time that editors carefully review the accuracy of submissions in the first place and that the law reviews promptly correct errors in the second place.

UPDATE

In the financial area, AP reports that the Securities and Exchange Commission (SEC) is investigating the Chicago-based firm Morningstar for failing to properly correct inaccurate data it published about the mutual fund Rock Canyon Top Flight. At issue is the timeliness of correction of data between March 12 and March 23, 2004. Now, if only the SEC had jurisdiction over law reviews...

UPDATE

from: http://powerlineblog.com/archives/007975.php
on the plagiarism issue with Lawrence Tribe of the Harvard Law School

-->There are indications that Tribe's book may, in fact, have been written largely by others, especially Ronald Klain, who went on to become Vice-President Al Gore's chief of staff, but at the time was only a first year law student. I don't know, of course, what caused Tribe's apparent plagiarism. But my guess is that two forces were at work.

The first is the fact that a famous scholar can ultimately turn into a brand. Larry Tribe's Harvard biography says that he has published more than 100 books and articles. Realistically, this is more work (along with everything else the prolific Prof. Tribe does) than one man can possibly accomplish. Inevitably, he must have come to depend on law students and other assistants for much of the research and writing that has gone into has books.

The second element, I suspect, is that Tribe regarded God Save This Honorable Court as politics, not scholarship--much as Dan Rather knew that his National Guard story was politics, not journalism. I don't believe that Larry would deliberately commit plagiarism. But I do believe that when a book is written not as a serious work of scholarship, but as a popularized tract intended to influence a political debate, it is not surprising that the author's editorial standards may slip. The overriding criterion by which a book like Honorable Court is judged is neither truth nor originality, but political impact. Once a scholar starts down that path, plagiarism is, perhaps, the least of the pitfalls to which he is subject.

As of the time Bottum's article went to press, Professor Tribe had not responded to his request for a response [note: a response was made later]. It may be that Larry will be able to muster a defense. Based on the quotations Bottum reproduces, however, it is hard to see how that is possible.<--

[LBE comment: of the first point (on excessive productivity), similar observations were made about the publication output of Jan-Hendrik Schon, but were not heeded. For example, none of the reviewers of Schon's papers noticed that certain graphs were reproduced and relabeled; that was only discovered later by a tip from the inside. of the second point (on politics; not scholarship), much of the discussion about the alleged excessively high patent grant rate (in the Harvard Law Review, the Boston University Law Review, and Federal Circuit Bar Journal) seems to arise from the politics of patent reform rather than from scholarly effort to analyze the grant rate issue. Separately, the thrice-repeated footnote (including within the University of Chicago Law Review and the Stanford Law Review) about the lack of understanding of the inventors of the transistor arises from the publication, in popular magazines, of a verbally-transmitted misconception. A false idea that couldn't directly make it into primary literature is bootstrapped into law review literature via footnotes.

UPDATE:

from "The Record" at Harvard Law
http://www.hlrecord.org/news/2004/10/07/News/Dean-Of.Mass.Law.School.Central.Figure.In.Discovery.Of.Tribe.Plagiarism-748270.shtml?page=2

-->Dean Velvel's weblog has become a focal point of sorts over the recent plagiarism scandals. Tribe is not the only distinguished legal scholar who has corresponded with Velvel. HLS Professor Alan Dershowitz became the subject of Dean Velvel's scrutiny over comments made to the media. Seizing upon Dershowitz's public mention of "cultural differences" between the legal profession (where judges routinely take the work of lawyers and clerks in writing their opinions) and the rest of academia, Dean Velvel expressed disbelief that Dershowitz would make such a distinction the basis for an excuse.

Dershowitz responded to Velvel, acknowledging that he stood by his comment of cultural differences but explaining that it was meant to serve as an observation on how accidental plagiarism may occur, not a defense of such actions. "There is never under any circumstances any justification for plagiarism and nothing I said was intended to serve as a justification," wrote Dershowitz. Dershowitz also suggested the establishment of a committee to set out clear guidelines for the use of research assistants by law professors.

Judge Richard Posner also weighed in on the matter, expressing dismay to Velvel about the status of legal writing. "The problem is that we no longer have a culture of writing. Writing is now a specialty," wrote Posner. "I am one of the dinosaurs who still does my own opinion writing," wrote Posner. "But let's face it: we're on the road to extinction." <--

Improving patent quality with post-grant opposition?

Joseph Hosteny, in the August 2004 issue of Intellectual Property Today, criticized the analysis of "Prospects for Improving US Patent Quality via Post-Grant Opposition." Although he did not give a cite, he may have been referencing the paper by Bronwyn Hall, Stuart Graham, Dietmar Haroff, and David Mowery (none of whom seem to be patent lawyers). This paper compares European opposition procedures to American re-exam methods, but does not formulate an explicit proposal for an American opposition method. Thus, we discuss below some comments of the AIPLA. [The paper by Hall et al. cites, but does not endorse, the rational ignorance paper of Mark Lemley; further, it recognizes the "knowledge spillover" value of a patent but does not attempt to quantify this value in the overall picture of "patent quality." Because no entity is likely to oppose patents of no economic value (such as the swing patent cited therein, US 6,368,227), the paper is problematic in proposing a solution that will not cure the defects identified. Oppositions will address patents perceived to be economically valuable.]

One advocate of the opposition mechanism is the AIPLA, which wrote:

In view of the absence of an effective and inexpensive means to challenge patents, AIPLA, the PTO, the Federal Trade Commission (FTC), the NAS, and, just last week [ca. June 2004], the Intellectual Property Law Section of the ABA have all put forth suggestions for post-grant opposition proceedings as a means of permitting a more meaningful, timely and cost-effective opportunity for the public to challenge patents that may be of questionable validity.

In 1996, AIPLA proposed the establishment of a post-grant opposition system to provide parties with an efficient, effective, and relatively inexpensive procedure to evaluate whether the claims of an issued patent are too broad or simply should not have been issued at all. The PTO, as part of its 21st Century Strategic Plan released in 2002, called for the post-grant review of patents. Last October, the FTC, in its report entitled “To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy,” also recommended the establishment of an effective post-grant opposition system. Earlier this year, the NAS, in its report mentioned earlier, recommended the creation of an “Open Review procedure” to provide “more timely, lower cost, and more efficient review of granted patents” to replace the current reexamination procedures. The resolution adopted by the IPL Section of the ABA is generally supportive of a post-grant proceeding along the lines of the proposal AIPLA has developed. The call for an effective, efficient post-grant system to review patents has reached a crescendo. It is time to act.

The AIPLA proposal includes the following:

Nine-month post-issuance period in which to request the opposition.
Requirement to identify the real party in interest, but allowing its name to be kept confidential in appropriate cases, until such time as justice and fairness require disclosure.
“Front loading” of the requester’s evidence supporting the opposition is required to expedite the proceedings.
Opportunity for the patent owner to respond with evidence.
Opportunity for the patent owner to amend the claims at least once.
Discovery is normally limited to cross-examination of affiants, but could be extended if required in the interests of justice.
Requester has the burden of proof by a preponderance of the evidence.
One-year time limit, start to finish, but extendable to no more than 18 months in appropriate cases.
Opportunity for oral hearing, filing briefs, reconsideration, and appeal to CAFC by all parties to the opposition.
Bar to any later inter partes reexamination by the opposer and no concurrent reexamination proceeding until the opposition terminates
Estoppel against unsuccessful requester as to the validity issues actually decided, but with exceptions for issues based on later availability of new material evidence regarding a legal or factual issue.

The AIPLA also noted:

The adoption of any post-grant opposition system by the United States would be of limited value unless the necessary resources are dedicated to its implementation. As a point of reference, the latest statistical report of the European Patent Office (EPO) indicates that the EPO granted 59,992 European patents in 2003. That same year, 2,634 patents, or approximately 4.4%, were opposed. In the context of the PTO which granted 189,597 patents in 2003, this would translate into over 8,000 oppositions. Even discounting this number by 90% to account for patent owners or others who would continue to use ex parte reexamination to test patent validity and who would be reluctant to use the post-grant opposition procedure, one could still be looking at a potential caseload that is many times the number of interferences currently handled by the Board. While interferences are admittedly more complex than the proposed post-grant oppositions, the adoption of a post-grant opposition system would require a significant increase in the number of APJs (20 of the 61 APJs currently at the Board are exclusively dedicated to interferences). Hiring the number of properly trained and skilled individuals needed to handle post-grant oppositions – irrespective of which proposal is adopted – will be essential if the system is to achieve the results intended. We cannot overlook this need when considering this change to the patent system.

Immersion wins patent verdict over Sony

Immersion Corporation announced on September 21, 2004 that a jury returned a verdict favorable to Immersion, finding that Sony infringed all the asserted claims of U.S. Patent Nos. 6,275,213 and 6,424,333 and that those claims were valid. The verdict also awarded Immersion damages in the amount of $82.0 million.

Novartis files Hatch-Waxman suit against Teva over LOTREL

Novartis reported on September 21, 2004 that it has filed a Hatch-Waxman lawsuit against generic drug manufacturer Teva Pharmaceutical Industries Ltd over its high-blood-pressure drug Lotrel.

McDonald's loses MacTrademark case in Singapore

McDonald's asserted trademark infringement claims against Singapore-based Future Enterprises Pte Ltd. for registering products such as MacNoodles, MacTea, and MacChocolate. McDonald's lost on appeal. Davinder Singh represented McDonald's.

Of 30,000 restaurants worldwide, McDonald's has 129 restaurants in Singapore.

Bayh-Dole arrangement in nanotech/microfluidics

from Business Wire-->

PASADENA, Calif.--(BUSINESS WIRE)--Sept. 20, 2004--Arrowhead Research Corporation announced today that the California Institute of Technology ("Caltech") has granted exclusive rights to over 80 new U.S. and international patents and patent applications covering microfluidics and micromachines technology to Nanotechnica, Inc., a subsidiary of Arrowhead Research. R. Bruce Stewart, President of Arrowhead Research, remarked, "This new technology further strengthens the growing portfolio of patent rights held by Arrowhead and its subsidiaries, which includes exclusive rights to over 180 U.S. and international patents and patent applications in the nanotechnology space."


Dr. Yu-Chong Tai, the primary inventor of the licensed technology, is a consultant to Nanotechnica. Dr. Tai has extensive experience in micromachines and microfluidics and has developed devices such as sensors, anemometers, actuators, microvalves, and micromotors. He is a Caltech Professor of Electrical Engineering and the Director of the Caltech Micromachining Laboratory.

The Nanotechnica research and development team is presently led by Chief Technical Officer Dr. Michael Roukes, who is currently on leave from Caltech. Dr. Roukes, Caltech Professor of Physics, Applied Physics and Bioengineering, is the Director of Caltech's Kavli Nanoscience Institute, co-founder of the Nanosystems Biology Alliance, co-founder and co-director of both the Initiative in Computational Molecular Biology and the Laboratory for Large Scale Integration of Nanostructures, and chair of the external advisory board of Harvard University's nanoscience center. Nanotechnica's R&D group also includes consultant Dr. Scott Fraser, the Anna L. Rosen Professor of Biology and Director of the Biological Imaging Center at Caltech.

"We are pleased to have Dr. Tai as a key scientific consultant to Nanotechnica. The combination of Dr. Roukes' expertise in nano-electro-mechanical systems, Dr. Tai's experience with microfluidics, and Dr. Fraser's knowledge of biological systems will provide Nanotechnica with one of the most talented interdisciplinary nanotech teams in the world," said Stewart.

Nanotechnica is initially focusing on commercializing nanoscale devices such as scanning probe tips, pathogen sensors, and medical diagnostics. Nanotechnica seeks to establish capabilities for mass production of a variety of different, proprietary nanoscale devices and systems.

--> About Dr. Roukes

PASADENA, Calif., April 22, 2004 /PRNewswire-FirstCall/ -- Arrowhead Research Corporation [profile] (OTC Bulletin Board: ARWR), an emerging company in the field of nanotechnology, announced today that it has reached an agreement with Dr. Michael Roukes, California Institute of Technology Professor of Physics, Applied Physics and Bioengineering, and Caltech itself, to form a new corporation, Nanokinetics, that will focus on the development of the processes and devices needed to commercialize various nanotechnology applications. Nanokinetics will be the third majority-owned subsidiary formed by Arrowhead Research.

Dr. Roukes has gained worldwide recognition through his work on the physics and fabrication of nanoscale electronic devices. He is the newly named founding Director of Caltech's Kavli Nanoscience Institute, which recently received a $7.5 million grant to foster innovative research at the frontiers of nanoscale science and engineering.

Nanokinetics plans to focus upon building the technological base required to transition today's academic "nanoscience of the individual device" to the integration and mass production required for these market-ready products. With this process-oriented focus, Nanokinetics hopes to jumpstart the commercialization of many of the nanotech applications already available. Dr. Roukes stated, "It is becoming clearer every day that the companies that make early and decisive investments to establish capabilities for complex nanodevice production will dominate the broader realm of commercial nanotechnology that lie beyond first-generation applications."

One application being developed by Dr. Roukes and his team is a microfluidic-based electronic biosensor based upon BioNEMS (biofunctionalized nanoelectromechanical systems). In the near term, nanosystems such as these, with nanoscale sensor elements numbering in the hundreds and thousands, can provide powerful new approaches to bio-threat detection, drug screening, and medical diagnostics -- with sensitivity approaching the single molecule level.

--March 12, 1998---

PASADENA--Wristwatch cellular phones and space probes the size of baseballs would certainly have some eager customers, but both are still the stuff of science fiction.

Nonetheless, physicists are making strides these days in the sort of miniaturization that could someday make tiny electromechanical devices a reality. One such milestone, the first nanometer-scale mechanical charge detector, is reported in the current issue of Nature.

According to Michael Roukes, professor of physics at Caltech and coinventor of the device, the new electrometer is among the most sensitive charge detectors in existence, and definitely the first based upon nanomechanical principles.

"One compelling reason for doing this sort of thing is to explore entirely new avenues for making small, ultralow power electronic devices," says Roukes.

"Making new types of electronic devices that involve moving elements, which we call nanoelectromechanical systems, will open up a huge variety of new technological applications in areas such as telecommunications, computation, magnetic resonance imaging, and space exploration. And the physics is exciting, besides."

The device fabricated at Caltech by Roukes and his former postdoctoral collaborator, Andrew Cleland (now an assistant professor at UC Santa Barbara), is a good example of the type of advances in solid-state devices that currently are loosely gathered these days under the rubric "nanotechnology." Roukes says he generally avoids using the term. "Rather, this is the kind of science that is building the foundation for real nanotechnology, not the stuff of fiction. Right now Mother Nature is really the only true nanotechnologist."

Woolston on eBay litigation

InformationWeek has some quotes by Thomas Woolston on the eBay/MercExchange battle:

What makes Woolston mad at George Bush is that after the ruling in the lower court, eBay appealed to the U.S. Patent and Trademark Office to review the validity of the MercExchange patents, which the agency agreed to do. Woolston says it's a violation of at least the spirit of the law for the Patent Office to review the patents after a court has already ruled on them. (...)

Many people think the patent process has gotten seriously out of whack, especially when it comes to Internet-related patents. But Woolston says the rights of Internet pioneers need to be protected. "The rights are sorting themselves out," he says. "What's the big deal?" It's a big deal, I suppose, if you're on the wrong end of that equation. Last week, a U.K. company, BTG, sued Amazon.com, Barnes & Noble.com, Netflix, and Overstock.com for infringing on patents BTG owns "covering technologies related to tracking the navigational path of a user through the World Wide Web," according to BTG. The patents, No. 5,717,860 and No. 5,712,979, were granted by the Patent Office in 1998 to a company called Infonautics, and acquired by BTG in 2002. BTG is asking for unspecified damages and an injunction to stop the Internet companies from using the patented technology.

from my article in the June 2003 issue of Intellectual Property Today ("Say Good-night, Gracie"):

On May 27, a jury found that a subsidiary of eBay had infringed claims of US 5,845,265 (prosecuted by the inventor/lawyer Thomas G. Woolston) and of US 6,085,176 (prosecuted by Fish & Richardson) assigned to MercExchange and found $ 35 million in damages.

Alpharma and gabapentin

Alpharma stated on September 17, 2004 that the CAFC had set aside its earlier order that had prevented the company from selling a generic capsule form of Neurontin (gabapentin). Neurontin is one of Pfizer's biggest products with annual sales approaching $3 billion.

We had discussed issues with gabapentin in the context of the Warner-Lambert/Apotex case in the March 2003 issue of Intellectual Property Today ("It's bound to scare you, boy"):

In the realm of Hatch-Waxman, Warner-Lambert sued Apotex, (2003 U.S. App. LEXIS 594. )asserting that the generic's version of the drug would infringe a patent that of Warner-Lambert for a method of using gabapentin to treat certain neurodegenerative diseases such as stroke, although the FDA had approved gabapentin only for treatment of epilepsy. The Federal Circuit decision makes clear that such an approach by the innovator drug company does not even state a cause of action against the generic company under the Hatch-Waxman Act:

Warner-Lambert does not have a cause of action under § 271(e)(2)(A). Congress clearly intended to limit actions for infringement of method-of-use patents under § 271(e)(2)(A) to "controlling use patents," or patents that claim an approved use of a drug. An ANDA applicant, who necessarily "piggybacks" on the approved NDA of the innovator, can only apply to sell the approved drug, which, in this case, is no longer under patent, and to market it for the use for which the FDA has indicated that the drug is safe and efficacious, for which use the patent here has also expired. Apotex has neither submitted an application to sell a drug claimed in an extant patent, nor submitted an application to sell a drug the use of which is claimed in an extant patent. Both gabapentin and its only FDA-approved use are now off-patent. [end case quote]

Separately, the Federal Circuit also found no induced infringement under 271(b). Although an NDA, and hence an ANDA, only approves a use for which safety and efficacy have been proven, a physician may prescribe an approved drug for any use consistent with acceptable medical practice. Warner-Lambert stated that, by 1998, only about 22% of gabapentin sales were for treatment of epilepsy, the remaining 78% being prescribed for off-label uses, including the infringing use of treating neurodegenerative diseases. The Federal Circuit stated precedent holds that mere knowledge of possible infringement by others does not amount to inducement and specific intent and action to induce infringement must be proven. The court also noted that intent to induce infringement cannot be inferred even when the defendant has actual knowledge that some users of its product may be infringing the patent. The court also invoked logic: it defies common sense to expect that Apotex will actively promote the sale of its approved gabapentin, in contravention of FDA regulations, for a use that (a) might infringe Warner- Lambert's patent and (b) constitutes such a small fraction of total sales.

RFID. Intermec/Matrics disagreement a problem?

through ZDnet:

Intermec has key RFID patents and its royalty program, which levies 5 percent to 7.5 percent fees on various RFID hardware components, illustrates a difficult balancing act for RFID patent holders--something Intermec's own Miller calls a "conundrum." One the one hand, patent holders want to profit from their development work. On the other, they don't want to sap the demand for the technology with excessive fees.

A pile-on by other patent holders could double the costs of RFID tags and related equipment, according to MIT's Engels. About 30 other companies and individuals, including Lucent Technologies and Micron Technology, hold important RFID patents, though some expire soon, he said.

Although it's a worst-case scenario, a doubling of price would be a major blow to the industry, which has been marching toward a 5 cent tag as a prerequisite for introducing more advanced RFID features, such as those to combat shoplifting and counterfeiting. Those features require the tagging of millions of individual items rather today's more common practice of placing tags on shipping cases, which requires far fewer tags. Today, tags sell for 20 cents to 45 cents each, depending on the volume of the order.

"We're seeing a downward trend in prices, and that's one of things driving adoption," said Jeff Richards, president and chief executive of R4 Global Solutions, an RFID consulting firm in San Francisco. "Anything that adds cost into the equation could impact that progress."

Warning about off-label prescriptions?

A panel advising the Food and Drug Administration (FDA) recommended a black box warning for non-FDA approved uses and marks a significant shift in the government's regulatory stance toward widely used antidepressants -- which include Prozac, Paxil, Zoloft and Celexa -- for treating children with depression, anxiety, obsessive-compulsive disorder or other conditions.

The issue of patent infringement wherein the majority of prescriptions were for off-label uses came up in the Neurontin case.

from the Washington Post-->

The panel had to wrestle with a problem unique to psychiatry: Depression is itself associated with suicide, and many specialists believe the drugs reduce the risk.

While there is no conclusive evidence of this, studies have shown that suicide rates dropped among populations of children as the prescribing of antidepressants increased. Some experts believe the medications, many of which belong to a class of drugs called selective serotonin reuptake inhibitors, or SSRIs, may increase the risk of suicide among some children while reducing it in others.

"If there were no SSRIs, would there be more suicides, fewer suicides or the same number of suicides in children?" panel member Norman Fost, professor of pediatrics and bioethics at the University of Wisconsin Medical School, asked at the start of yesterday's session.

Robert J. Temple, the FDA's associate director for medical policy, said there are no data to answer that question.

But most of the panelists agreed that the enthusiasm for the drugs among American physicians was not supported by the research. Many noted with concern that with the exception of Prozac, none of the antidepressants have been approved by the FDA for treating depression in children. Most children are prescribed the medications "off label" -- based on physicians' belief that the drugs are safe and effective. Once a drug has been cleared for the market, physicians are free to use it even for conditions not specifically endorsed by the agency.

The panel's recommendation, on a 15 to 8 vote, left the FDA in the potentially awkward position of having to warn physicians about using the drugs for purposes that the agency has not approved.

While the agency traditionally avoids telling doctors how to practice medicine, many panel members argued that drug marketing was superseding science: Although companies cannot promote most of the antidepressants for childhood depression -- an unapproved use -- they can aggressively market the same medications for adults.

The experts noted that although Prozac is the only drug specifically approved to treat depression in children, the top-selling antidepressant for youngsters is Zoloft. Two trials of Zoloft failed to show the medication was superior to sugar pills in depressed children.

Prozac is no longer being actively marketed because its patent has expired; Zoloft is still being promoted.

Temple said the FDA would weigh whether to include specific information on each drug's label detailing how the drug had performed in clinical trials

Appeal of Gemstar ITC case decided by CAFC

In Gemstar v. ITC, the CAFC went through a number of claim construction issues. As to an inventorship issue, there was a question of corroboration of testimony, somewhat like the corroboration issue in Finnigan v. Bruker as to the testimony of Keith Jefferts.

Gemstar cites to the Ewen case, one of my favorites (Ewen once was at Exxon [below]).

--> on disavowal of claim scope

**Gemstar wins

Gemstar’s statements in the prosecution history do not indicate a disavowal or disclaimer of claim scope, see ACTV, 346 F.3d at 1091, but merely provide an example to illustrate differences between the invention and the prior art. In essence, Gemstar stated only that the Kram reference was incapable of performing a certain type of search, not that the scope of the claimed invention was limited to that particular type of search.

**Gemstar loses
Gemstar’s comments in the prosecution history constitute a disclaimer of claim scope to distinguish the prior art. To avoid a rejection based on teletext prior art cited by the examiner, Gemstar explained the operation of its claimed invention as follows

-->more dictionaries (Texas Digital; Phillips)

The ITC correctly looked to dictionary definitions, including a definition of “criterion,” the singular form of “criteria,” from Webster’s Third New International Dictionary 538 (1993): “a standard on which a decision or judgment may be based.” From this definition, the ordinary meaning of “user selection criteria” is simply any parameter chosen by the user in selecting a program.

--> inventorship

The parties dispute whether Neil is an omitted co-inventor of the ’121 patent. Gemstar argues that the ITC erred by failing to construe the claims, instead determining that Neil made contributions to “key facets” or “foci” of the patent. Gemstar maintains that the ITC erred in finding that Neil presented facts supported by clear and convincing evidence corroborating his contribution to the claims of the ’121 patent. Scientific-Atlanta responds that the ITC specifically identified Neil’s inventive contributions, explained how those contributions appeared in particular claim limitations, and correctly concluded that Neil’s testimony was adequately corroborated under the “rule of reason” analysis.
A patent is invalid if more or fewer than the true inventors are named. Jamesbury Corp. v. United States, 518 F.2d 1384, 1395 (Ct. Cl. 1975). Because a patent is presumed valid under 35 U.S.C. § 282, there follows a presumption that the named inventors on a patent are the true and only inventors. See Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997). When two or more persons jointly invent, they must jointly apply for a patent. 35 U.S.C. § 116 (2000). Co-inventors must so apply “even though . . . they did not physically work together or at the same time, . . . each did not make the same type or amount of contribution, or . . . each did not make a contribution to the subject matter of every claim of the patent.” Id. § 116. Because conception is the touchstone of inventorship, each “joint inventor must contribute in some significant manner to the conception of the invention.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997); see also Ethicon, 135 F.3d at 1460.

Whether the co-inventor’s testimony has been sufficiently corroborated is evaluated under a “rule of reason analysis,” which requires that an “evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached.” Price, 988 F.2d at 1195. Corroborating evidence may take many forms. Reliable corroboration preferably comes in the form of records made contemporaneously with the inventive process. Sandt Tech., Ltd. v. Rosco Metal & Plastics Corp., 264 F.3d 1344, 1350-51 (Fed. Cir. 2001). Circumstantial evidence of an independent nature may also corroborate. Trovan, 299 F.3d at 1303. Additionally, oral testimony from someone other than the alleged inventor may corroborate. Id.

Because Neil failed to present facts supported by clear and convincing evidence of his co-inventorship, the ITC erred in holding Neil to be an unnamed co-inventor of the ’121 patent.

--> John Ewen on Ewen:

I wanted to do academic research but my pedigree was not good enough to get a teaching position at a University. I therefore pursued employment in a long range oriented group at Exxon where I formulated some of my early research proposals. When Exxon eventually rejected some of my dearest ideas as impractical I moved on to be a plant chemist and pursued them as a hobby at night while working at Fina. What inspired me? Simple: The skepticism of those around me and the desire to succeed. I needed to be right and above the prejudices against my pedigree. The academic standards needed to be wrong. I would never quit. I needed to prove that my ideas were worthwhile.

-->

"I am deeply honored to receive this recognition from the President of the United States," Ewen said. "It is gratifying to realize the benefit that has resulted in our daily lives as a result of metallocene technology -- creating thousands of jobs worldwide and enhancing everyday items such as golf balls, medical IV bags, CD oysters, food wrapping, luggage and automobile parts, clothing, and more."

The National Medal of Technology, which recognizes innovation and advancement of the nation's global competitiveness, was established by Congress in 1980 and is administered by the Department of Commerce.

-->
[Exxon also let C60 ("buckyball") slip through its fingers. It published the discovery of C60 and a method of making it one year prior to the work of Smalley and Kroto.]



[Now read the Ewen case...]

Cold fusion report by DOE scheduled for end of Sept. 2004

Later in September 2004, the U.S. Department of Energy will receive a report from a panel of experts on the prospects for cold fusion—the asserted generation of excess heat energy using tabletop apparatus. It's an interesting turn of events for something supposedly discredited more than ten years ago; a few people were surprised earlier this year when James Decker, the deputy director of the DOE's Office of Science, announced in April 2004 that he was initiating the review of cold fusion science.

from a talk by Nobel Laureate Brian Josephson:

This talk mirrors "Pathological Science", a lecture given by Chemistry Laureate Irving Langmuir (1). Langmuir discussed cases where scientists, on the basis of invalid processes, claimed the validity of phenomena that were unreal. My interest is in the counter-pathology involving cases where phenomena that are almost certainly real are rejected by the scientific community, for reasons that are just as invalid as those of the cases described by Langmuir. Alfred Wegener's continental drift proposal (2) provides a good example, being simply dismissed by most scientists at the time, despite the overwhelming evidence in its favour. In such situations incredulity, expressed strongly by the disbelievers, frequently takes over: no longer is the question that of the truth or falsity of the claims; instead, the agenda centres on denunciation of the claims. Ref. 3, containing a number of hostile comments by scientists with no detailed familiarity with the research on which they cast scorn, illustrates this very well. In this "denunciation mode", the usual scientific care is absent; pseudo-arguments often take the place of scientific ones. Irving Langmuir's lecture referred to above is often exploited in this way, his list of criteria for "Pathological Science" being applied blindly to dismiss claims of the existence of specific pheomena without proper examination of the evidence. We find a similar method of subverting logical analysis in a weekly column supported by the American Physical Society (4).

Other popular forms of attack are "if X were true we would have to start over again" (as we of course had to do with Relativity and Quantum Theory, and so the argument proves nothing), and then there is the dictum "Extraordinary Claims require Extraordinary Evidence", which has the marvellous feature of allowing the requirements for acceptable proof to be stretched indefinitely as more and more support for a contested claim comes in. Its originator, the late Marcello Truzzi, later decided that his comment was 'a non sequitur, meaningless and question-begging', and had planned to write a debunking of his own creation (5). Ref. 6 takes a light-hearted look at a range of strategies used by critics.

"Cold fusion" appears to be the modern equivalent to continental drift, starting with the controversial claim, made by Pons and Fleischmann in 1989, to have generated in an electrochemical cell heat considerably in excess of anything explicable in conventional terms. This provoked hostile reaction: ignoring the possibility that an aggregate of ions in a condensed matter matrix may behave differently to a collection of freely moving ones, it was asserted that nuclear fusion could not be responsible for the claimed excess heat. Then came 'failure to replicate' by a number of groups, equated with the non-existence of the phenomenon, ignoring the fact that if different groups get different results there can be two explanations, one that the people who see some effects are bad experimenters, and the other that they were in fact better at creating the precise conditions needed for an effect to be seen. Usually in such cases time tells which side is right, but here the steadily mounting evidence that there was a real effect was suppressed through the publication policies of the major journals. Consequently, these apparently supportive results are not known to most scientists, who simply take it for granted that the Pons-Fleischmann claims have been disproved.

[http://www.lindau-nobel.de/images/ock/media/downloads/Media_1703187544.htm]


from physicstoday (Ludwik Kowalski):

Speculations about practical applications of new findings should be de−emphasized at this time. They will emerge naturally when basic scientific claims are recognized as valid and when researchers in cold fusion are no longer treated as if they were con artists and charlatans. The "chilling effect" mentioned by Randall Hekman in the Physics Today story prevents young scientists from entering the area of cold fusion research. I also agree with chemist Allen Bard that being able to reproduce experimental results is not good enough; it is only a preliminary step. But wasn't poor reproducibility the central point of criticism when cold fusion was first investigated 15 years ago? In my opinion, experimental claims should not be disqualified solely on reproducibility; validation should depend on credentials of researchers and, above all, on methodologies they used in particular experiments.


--> Just as a counterpoint to Kowalski, Marconi developed radio in spite of an imperfect scientific understanding (for example, he believed the "spark" was necessary for transmission). Separately, some of the people who had thorough understanding of E&M (e.g., Maxwell) did not develop radio.

As to "chilling effect," maybe more chill was needed as to the experiments of Jan-Hendrik Schon, which, unlike cold fusion, were readily embraced by most in the physics community.

Los Alamos National Lab to resume operations by end of September

Los Alamos National Lab is set to resume operations at the end of September 2004. The question of whether there were, or were not, missing zip disks has not yet been answered.

from the Scientist:

After calling a halt to operations at the lab on July 16, 2004, LANL director Nanos lashed out at the few scientists responsible, calling them "cowboys" for failing to follow safety and security procedures. In an all-employee E-mail this week, Nanos said he shut the lab down because "a pattern of near misses in safety and security had created in me and others a fundamental lack of confidence in our ability to conduct work without a major mishap."

Nanos put 19 scientists and managers on paid leave following the July 7 discovery that a pair of classified Zip disks were missing from the top-secret Weapons Physics Division. Statements from Sen. Pete Domenici (R-NM), who was briefed on the matter, raised the possibility that the disks never existed.

In an interview this week, Nanos declined to say whether the disks really exist or whether a clerical error made it seem like they were missing, citing pending investigations by the FBI and Energy Department. "I think that is all going to come out very shortly," he said.

***
And, in all of this, LANL hired a patent attorney.

Further to "substantial evidence" in patent cases

Further to the earlier post on the CAFC case (Guidant v. St. Jude) involving interpretation of substantial evidence, one might consider In re Jolly, 308 F.3d 1317, 1320 (CAFC 2002).

If evidence supports several reasonable but contradictory conclusions, the CAFC will not find the Board's decision unsupported by substantial evidence because the Board chose one finding over another plausible alternative.

from Velander v. Garner (CAFC 2003):

Substantial evidence "means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Our review of the Board's factual findings for substantial evidence examines the record as a whole, taking into account evidence that supports as well as detracts from those findings. Gartside, 203 F.3d at 1312. "The possibility of drawing two inconsistent conclusions from the evidence," however, will not render the Board's findings unsupported by substantial evidence. Consolo v. Fed. Mar. Comm'n, 383 U.S. 607, 620 (1966). In other words, if the evidence of record will support several reasonable but contradictory conclusions, we will not find the Board's decision unsupported by substantial evidence because the Board chose one finding over another plausible alternative. In re Jolly, 308 F.3d 1317, 1320 (Fed. Cir. 2002).

Three-dimensional self-assembly in nanotech?

A report in the September, 2004, issue of Nanoscience and Nanotechnology says that researchers Jagdish Narayan (Ph.D., Berkeley, 1971) and Ashutosh Tiwari used a pulsed laser to heat nickel until it turned into plasma - a form of matter with positively and negatively charged ions. In this form, the nickel rearranged itself on two different substrates - aluminum oxide and tin titanium nitrate - as uniform dots.

The dots arranged themselves at a density that would, theoretically, allow about five terabytes of data - five thousand gigabytes - to be packed into computer drive roughly the size of postage stamp. "Now the aim should be to integrate these handouts with silicon chips," Narayan told New Scientist.

"In the 6-10 nm dots created so far, we have the ability to control the spin patterns – the spin is what stores the bit of information. Assuming a 7nm magnetic nanodot will store one bit of information, we can achieve over 10 trillion bits per square inch, which is close to 500 times the existing storage density,” he said. Mihail C. Roco, Senior Advisor for Nanotechnology, NSF, commented: "Narayan has used the basic concepts of self-assembly to create a 3-D array of nanodots which may have significant applications in lighting, lasers, spintronics, and optical devices. If developed for practical applications in the next 2-3 years, the nanodot lighting systems may have significant environmental, economic and energy-saving advantages."

There is discussion in the article of "patented" processes. One suspects there are patent applications.

-->
The most interesting application may be the development of energy-efficient, low-cost, solid-state lighting. By creating a matrix of layers of varying sizes of nanodots embedded in a transparent medium such as aluminum oxide, Narayan can create a chip that glows with white light. Solid-state lighting would use about one-fifth the energy of standard fluorescent lighting and last for approximately 50 years.


Another interesting application for the nanodots is the development of a chip that can hold 10 terabits of information - information that equals 10 million million or 10 to the 13th power bits - which is equivalent to 250 million pages of information. Narayan estimates that a chip with this storage capacity represents an increase of more than two orders of magnitude, or five hundred times the existing storage density available today.


According to Narayan, the key to moving nanotechnology from the laboratory to the consumer is keeping the cost of manufacturing low because people will not embrace a new technology if the cost is substantial. He believes that the beauty of these new patented processes is that they make it possible to build a three-dimensional matrix of nanodots that is not only more efficient but also costs less to produce. Using Narayan’s methods, all of the steps can be performed in the same processing chamber, reducing the manufacturing cost and the impact on the environment. With further development of these new processes, copper can be created that is as strong as steel, and ceramics can be made tough enough to be used in automobile engines.

Lawsuit involving Lipitor

The Public Patent Foundation filed suit against Pfizer over a patent covering Lipitor after Pfizer announced earlier in September 2004 that it filed lawsuits against 18 Internet sites selling generic versions of Lipitor, which are typically manufactured overseas.

In its lawsuits, Pfizer listed just one of its five patents on Lipitor. The Public Patent Foundation asserts the claims of this patent are invalid because the claims are not patentably distinguishable in view of claims in older patents that would expire as early as 2010.

Did Marconi foresee more than point-to-point radio?

In addition to his suggestion that the inventors of the transistor anticipated uses only in hearing aids, Mark Lemley (based on previous statements by Nathan Rosenberg of Stanford University) suggested that Marconi only foresaw applications in radio involving a transmission from one point to one point.

A basic problem with this is that it conflates the business model of Marconi (which did involve point-to-point transmissions called Marconi-grams) with the technical understanding of Marconi. This issue is somewhat like the improper practice of limiting the claims of a patent to the commercial embodiments of the patentee (e.g., Rawlplug Co. v. Illinois Tool Works, Inc., 11 F.3d 1036, 1041 (Fed. Cir. 1993)).

The issue is further discussed in the September 2004 issue of Intellectual Property Today-->

MORE ON MARCONI

Lemley, in referencing work of Rosenberg, has suggested that Marconi only envisioned point-to-point communications, rather than broadcasting, and that Marconi is thus an example of an inventor who did not see the full scope of his invention. This may be an oversimplification of the situation, which does present interesting patent issues. First, Marconi's invention was radio telegraphy, rather than radio telephony, which telephony was established by Fessenden. Second, Marconi established a successful business based on his embodiment of radio telegraphy. His embodiment may not have been the best technology through most of the time he dominated radio telegraphy, but it did fill a need. Third, Marconi was certainly aware of the point-to-many points nature of radio, both from the early growth of amateurs who listened to radio telegraphic messages and from an incident related to the Titanic disaster, in which radio telegraphic instructions about restriction of the news of the disaster were intercepted by the U.S. Navy. Fourth, although Marconi initially disbelieved in the science of Fessenden's CW technology which facilely permitted radio telephony, after Marconi saw that it worked, he obtained a license. However, radio telephony was blocked by the failure of diverse patent owners to come to an agreement. This impasse was broken by World War I, with the U.S. government combining the technologies, which, among other things, allowed President Wilson to make a radio address to the German people. After World War I, Marconi was forced out of the American radio business.

Of the technology issue, Marconi initially ridiculed Fessenden's suggestion that a wireless signal could be produced by applying a high frequency [HF] alternating current to an antenna. Early workers in the art were nearly unanimous in the view that a spark was essential to wireless, an error in understanding that delayed the commercial development of radio telephony. The lack of correct scientific understanding by others did not keep Fessenden from getting patents, but it did alter the way in which he got financial backing. The continuous wave [CW] approach of Fessenden was the pathway for radio telephony, which in turn was necessary to open up mass broadcasting. A court opinion stated: "in effect it has been established that the prior art practiced, spark, or damped wave transmission, from which Fessenden departed and introduced a new or continuous-wave transmission, for the practice of which he provided a suitable mechanism which has since come into extensive use." The CW technology of Fessenden presented problems distinct from the spark gap technology of Marconi. First, at a distant station where the received signal was weak, and the receiver had to be carefully tuned to this narrowband signal in the expanse of unused radio spectrum. The broadband spark signal was more easily found. Second, the coherer-type detector used for reception of spark transmission was ineffective for detecting CW signals. In 1914 the Marconi Company purchased a license to Fessenden's patents from the National Electric Signalling Company (NESCO), whose interests were later controlled by the Radio Company of America (RCA). RCA was incorporated October 17, 1919, to control the radio-related patents of GE, AT&T, Westinghouse and United Fruit, according to a plan of GE lawyer Owen D. Young to buy out American Marconi and create an American monopoly. The Navy approved of the plan to keep radio out of the control of British Marconi.

In proving he was right about the technology, Fessenden also established the radio broadcast. Through a contract with the United Fruit Company (which had installed wireless systems on the boats to control the harvesting and marketing of bananas in Puerto Rico), Fessenden gave a Christmas Eve present to his customers on the dozen or so ships of the United Fruit Company at sea. He told the wireless operators to listen on Christmas Eve for "something different". At 9 pm on December 24, 1906 the operators heard the familiar "C.Q." ( meaning "listen all stations" and further demonstrating the point to many points nature of early radio telegraphy) from his transmitter at Brant Rock and then they heard first Fessenden's voice speaking, and later Christmas music.

The issue of "broadcasting" was involved in the Titanic disaster. The initial distress call from the Titanic was CQD (listen all stations, distress), later followed by SOS, with many ships, sadly not including the Californian, receiving the signal. After the sinking, messages from the mainland to the Carpathia (which ship carried surviving Titanic radioman Harold Bride), which were intercepted by the U.S. Navy (indeed, the New York Navy Yard maintained an "intercepted messages" book), proved to be an embarrassment for Marconi, who was in the United States (and booked on the return trip of the Titanic). The New York Times, which benefited mightily from its coverage of the Titanic disaster, was to pay Bride (and another person Cottam) roughly $1000 each for their exclusive story, and radio telegraphy was used to inform them to keep their mouths shut until the Times contacted them. Unfortunately, the messages (called Marconi-grams in those days) were intercepted, and a New York Times rival, the New York Herald, had a field day (the page one headline of April 21, 1912 was 'Keep Your Mouth Shut, Big Money for You,' was Message to Hide News). Further, Marconi himself was questioned about this in the Titanic inquiry headed by U.S. Senator Smith.






Endnote 12: Again, footnote 29 of 71 U. Chi. L. Rev. 129 (2004). The article by Carol Haber, Electronic Breakthroughs; Big Picture Eludes Many, Electronic News, 1994, 40, 46, amounts to an interview with Professor Nathan Rosenberg of Stanford. Of Marconi, Haber writes: “The inventor of the radio, Guglielmo Marconi, expected its users to be steamship companies, newspapers and navies who needed directional, point-to-point communications.” These entities were users of Marconi’s radio telegraphy, but that does not mean Marconi thought radio telegraphy (or the radio telephony of Fessenden) was limited to point-to-point. In a different publication (the McKinsey Quarterly, June 22, 1995), Rosenberg wrote: “The idea of communicating to a large audience of listeners rather than to a single point seems never to have occurred to the pioneers of radio.” Early on in radio, there was a large group of listeners (amateurs). Further, early broadcasting in the 1920's was directed to selling receiving sets as much as anything else, somewhat like the later waggish assertion that the broadcasting of Bonanza was directed to selling color television sets. [The contents of footnote 29 appear elsewhere, including 56 Stanford Law Review 1345 at footnote 160.]

Professor Tony Smith challenges Iowa State U plan in patents

Under the Bayh-Dole Act of 1980, various non-profit organizations, including universities, can take title to patent rights derived from research funded by the federal government. This transfer requires the permission of the federal funding agency, and the transfer remains subject to certain march-in rights of the federal government. If neither the agency nor the university are interested in patent rights, the professor who obtained the grant may obtain the patent rights; an example of this is Professor Madey in the case of Madey v. Duke University. Under the Bayh-Dole Act, the non-profit is required to report patentable inventive activity to the funding agency, and to follow a certain schedule.

The arrangements can be complicated and involve lots of money, as seen in the relationship between the University of California at Berkeley with Novartis, involving the transfer of $25 million. However, there was no commercialization of technology obtained from Berkeley. More than $200,000 was later spent in analyzing the propriety of the arrangement. [See the discussion of the report by Lawrence Busch of Michigan State University;
http://www.berkeley.edu/news/media/releases/2004/07/30_novartis.shtml
and text in L.B. Ebert, Int. Prop. Today, pp. 34-37 (Sept. 2004);
see also L.B. Ebert, The Bayh-Dole Act in the Age of Proteomics,
http://www.pa-bar.org/membersonly/17/ipfall00.pdf.]

In the following (an article by Tracy Skadeland in the Iowa State Daily), Professor Tony Smith questions the involvement of Iowa State in the patent business.

Of the text--"What we're doing to underdeveloped countries is we're saying you can't use the means that we used to become developed."-- one observes that U.S. patents have no legal effect in countries other than the U.S. People in underdeveloped countries are free to utilize the published information within U.S. patents, and are free to practice that technology, provided there are no patents covering that technology in the underdeveloped country. An issue related to this concerns drugs for treating AIDS, and is discussed elsewhere in IPBiz.blogspot.

Of the text--The patent system is also unfair to Iowans, because it asks them to pay twice for the same innovation. They pay to fund Iowa State's research, which frequently includes research that private companies don't want to pay for, and they pay a second time in monopoly prices charged by the company that owns or licenses the patent.-- one observes that this is true, and has been inherent in the Bayh-Dole Act since its passage in 1980. Private companies can effectively leverage their research by making the U.S. taxpayer a co-adventurer in the enterprise. If the research does not produce a useful product, the U.S. taxpayer loses as to potential commercial gains, although the value of the research performed remains. If the research does produce a useful product, the U.S. taxpayer does have to pay the royalty on the product.


-->
At least one ISU professor believes that the university's policy of seeking to increase the number of patents awarded at Iowa State does not necessarily serve the public good.

Tony Smith, chairman and professor of philosophy and religious studies, said he objects to a goal set by the university in the current draft of its 2005-10 strategic plan calling for Iowa State to "lead the nation in the number of new patents awarded, licenses issued and successful business ventures initiated."

"My problem is with the idea that extending intellectual property rights is always the best thing to further technical advance and always the best thing for society," Smith said.

James Bloedel, vice provost for research administration, said licensing intellectual properties and obtaining patents is not a new emphasis at Iowa State, but is consistent with Iowa State's "Science with Practice" motto.

"[The increasing patents] component of the strategic plan is a statement of Iowa State's commitment to transferring the technology that is generated in the university to the public at large for the benefit of economic development in the state," Bloedel said.

Smith said the areas in which researchers can get patents has broadened in the past 20 years, which hurts smaller companies.

"If you extend patent rights, then you're giving a benefit to the large corporations because they can afford to hire armies of patent lawyers to defend their patents, extend their patents aggressively and go after anybody who might remotely be infringing them," he said.

A lot of technical advances come from small companies, but they cannot afford to license patents or enter into cross-licensing agreements, he said. Underdeveloped countries face a similar problem, because approximately 97 percent of all patents are given to individuals or corporations in the countries where only 20 percent of the world's population live, Smith said.

"The United States and most industrial countries developed by taking advantage of scientific and technical knowledge as a free good," Smith said. "What we're doing to underdeveloped countries is we're saying you can't use the means that we used to become developed."

The patent system is also unfair to Iowans, Smith said, because it asks them to pay twice for the same innovation. They pay to fund Iowa State's research, which frequently includes research that private companies don't want to pay for, and they pay a second time in monopoly prices charged by the company that owns or licenses the patent, he said.

Bloedel said the Iowa State University Research Foundation owns the patents for faculty research. It handles administrative aspects of obtaining a patent, including analyzing the invention to ensure similar inventions have not already been patented or licensed. If the U.S. Patent and Trademark Office grants a patent, royalties for licensing the technology are used to pay the expenses of management and obtaining the patent. The inventor, the college and ISURF equally share royalties from licensing, Bloedel said.

"The patent system is one of the features that motivates additional research," Bloedel said. "One of the objectives in performing applied research is to create intellectual property that can benefit mankind and be transferred to the public for use, and that's part of the enjoyment a faculty member receives from performing applied research."

**from ft.com -->

The stage is set for a clash over the future of international intellectual property protection, with Brazil and Argentina planning to call for a "development agenda" at the World Intellectual Property Organisation's annual meeting later in September 2004.


Intellectual property protection is a means of promoting innovation and the transfer and dissemination of technology and "cannot be seen as an end in itself", the proposal by the two countries says.

Among their more controversial suggestions are negotiation of a treaty to promote developing-country access to knowledge and technology; work on collaborative information-sharing mechanisms to stimulate innovation; and an amendment to Wipo's constitution stressing the need to take the development concerns into account.

Brazil has been in the vanguard of moves to ensure intellectual property rights enshrined in international pacts do not override public interest or development needs. This reflects its domestic agenda, which includes promotion of generic drugs and open-source software.

Brazilian negotiators played a key role in drafting a landmark World Trade Organisation agreement in 2001 that affirms developing countries' right to give public health needs priority over drug patent protection.

Resolution of the Scalia/Hattiesburg affair?

from Hattiesburg American:

The U.S. Marshals Service has admitted its agent was wrong when she seized recordings of two reporters at a speech in Hattiesburg in April by U.S. Supreme Court Justice Antonin Scalia.

The recordings of former Hattiesburg American reporter Antoinette Konz and The Associated Press' Denise Grones who were covering Scalia's speech at Presbyterian Christian School were seized by U.S. Deputy Marshal Melanie Rube.

The newspaper and The Associated Press filed a lawsuit in May accusing the Marshals Service of violating the Privacy Protection Act and the First, Fourth and Fifth Amendments to the U.S. Constitution.



from AP:

The government has conceded that the U.S. Marshals Service violated federal law when a marshal ordered reporters with The Associated Press and the Hattiesburg American to erase their recordings of a speech by Supreme Court Justice Antonin Scalia.

The Justice Department also said the reporters and their employers are each entitled to $1,000 in damages and reasonable attorney fees, which had been sought by the media organizations.

The government's concessions were contained in court papers filed Friday in response to a lawsuit by the news organizations.

Nehemiah Flowers, U.S. marshal for the Southern District of Mississippi, had said after the incident that Rube's erasure of the recordings was appropriate, given that one of the service's responsibilities is to provide a traveling Supreme Court justice with security.

However, Flowers conceded that Scalia's wishes that his remarks not be recorded should have been publicly announced before the speech.



--> Relevant to an earlier post discussing Justice Scalia's remarks at Concord (virtual) Law School, there was notice that Scalia's remarks were not to be taped.

The American reported: Scalia, who later sent letters of apologies to both reporters, said he did not order the seizure of their recordings and announced a change in his policy to allow recordings of his public speeches by members of the print media.

***the take in Naples, FL

Deal for Morgan Lewis to pay into Brobeck estate?

from law.com:

Morgan, Lewis & Bockius has agreed to pay $10.2 million to the estate of Brobeck, Phleger & Harrison to avoid litigation with Brobeck's bankruptcy trustee.

Knorr-Bremse on opinions of counsel: decision by Judge Newman

We now hold that no adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer's failure to obtain or produce an exculpatory opinion of counsel. Precedent to the contrary is overruled.

-->

The court referenced text in Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983):

The attorney advised that "[c]ourts, in recent years, have -- in patent infringement cases -- found the patents claimed to be infringed upon invalid in approximately 80% of the cases," and that for this reason the patentee would probably not risk filing suit. Id.

-->
The court discussed the history of the "adverse inference":

Thus arose the adverse inference, reinforced in Fromson v. Western Litho Plate & Supply Co., 853 F.2d 1568 (Fed. Cir. 1988), and establishing the general rule that "a court must be free to infer that either no opinion was obtained or, if an opinion were obtained, it was contrary to the infringer's desire to initiate or continue its use of the patentee's invention." Id. at 1572-73.

-->
Departure from stare decisis:

While judicial departure from stare decisis always requires "special justification," Arizona v. Rumsey, 467 U.S. 203, 212 (1984), the "conceptual underpinnings" of this precedent, see id., have significantly diminished in force. The adverse inference that an opinion was or would have been unfavorable, flowing from the infringer's failure to obtain or produce an exculpatory opinion of counsel, is no longer warranted. Precedent authorizing such inference is overruled.

-->
Questions answered:

QUESTION 1
When the attorney-client privilege and/or work-product privilege is invoked by a defendant in an infringement suit, is it appropriate for the trier of fact to draw an adverse inference with respect to willful infringement?

The answer is "no."

QUESTION 2
When the defendant had not obtained legal advice, is it appropriate to draw an adverse inference with respect to willful infringement?

The answer, again, is "no." The issue here is not of privilege, but whether there is a legal duty upon a potential infringer to consult with counsel,

QUESTION 4
Should the existence of a substantial defense to infringement be sufficient to defeat liability for willful infringement even if no legal advice has been secured?

The answer is "no."

Poly-America vs. GSE: issues of on-sale, preamble

-->On-sale issue

Poly-America responds that the district court was correct to deny GSE’s motion for JMOL because the process later claimed in the ’112 patent was not ready for patenting when the Gundle die was sold in 1987. That defect, it argues, prevents the sale from becoming a bar to patentability. Poly-America asserts that our decision in Kollar is inapposite and that GSE has generally failed to show that the jury charge regarding the sale of the Gundle die was either erroneous or prejudicial. Also, Poly-America argues that the jury could have found a material difference between the “choker slides” and the claimed “plugs” and that such a finding was supported by substantial credible evidence.
We agree with Poly-America that the district court properly denied GSE’s motion for JMOL

*distinction between Kollar and Minton

Whereas the transaction in Kollar involved mere know-how in need of development, the patentee in Minton transferred a fully operational computer program capable of implementing the claimed method. Id.

*neither Kollar or Minton on point here

Neither Kollar nor Minton is wholly on point here, so we need not parse out which case’s facts are closer to this one.

--> Preamble issue

“Whether to treat a preamble as a limitation is a determination resolved only on review of the entire[] . . . patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). “No litmus test defines when a preamble limits claim scope.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). On the one hand, a preamble is a claim limitation if it recites essential structure or steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, 182 F.3d at 1305. On the other hand, a preamble is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). “Further, when reciting additional structure or steps underscored as important by the specification, the preamble may operate as a claim limitation.” Catalina Mktg., 289 F.3d at 808.
We agree with Poly-America that the phrase “blown-film” is a limitation of the claims of the ’047 patent.

We therefore agree with the district court’s conclusion that a
“[r]eview of the entirety of the ’047 patent reveals that the preamble language relating to ‘blown-film’ does not state a purpose or an intended use of the invention, but rather discloses a fundamental characteristic of the claimed invention that is properly construed as a limitation of the claim itself.”

Inventors of transistor foresaw only a hearing aid application?

In the September 2004 issue of Intellectual Property Today (FORESEEING A NOT OBVIOUS FUTURE, pp. 34-37), I address the frequently-repeated contention that the inventors of the transistor (who are Bardeen, Brattain, and Shockley) foresaw a use for the transistor only in hearing aids. From the text of the article in IPT:

In 2004, in footnote 29 of 71 U. Chi. L. Rev. 129, it was suggested that the inventors of the transistor anticipated a use for hearing aids and therein did not foresee the full scope of their invention. I believe that the motivation of the research project [at Bell Labs](replacing unreliable tubes by more reliable solid state devices in phone systems), the imposition of confidentiality on the research, the competition among the inventors, the concern over patents, and the briefing of the military all indicate that the inventors were aware that the impact of the transistor would be significant and extended far beyond hearing aids. Further, Bell Labs readily licensed its technology to companies in the consumer products area, so that uses beyond those contemplated by the inventors were readily developed.

An endnote in the Sept. 04 IPT article states:

I questioned the accuracy of footnote 29 and received a response from the law review: “The Law Review checks and proofs its articles very thoroughly before publication in order to ensure that no substantive errors are published. It is our policy not to issue corrections for stylistic or substantive disagreements.” One may also consider the following. 1. The citation within footnote 29 in the article in the University of Chicago Law Review to the article by Carol Haber in Electronic News has confused the issue number of Electronic News (2018) with the page number (46). Thus, the citation itself is mechanically wrong. 2. There is no support whatsoever in the Haber article for what the inventors of the transistor did, or did not, think of the uses for the transistor. The Haber article mentions discussion of the transistor in an article by the New York Times: "The invention of the transistor was not front page news but a tiny item in a weekly column "News of Radio" buried inside a 1947 edition of the New York Times. The device, the article predicted, 'might be used to develop better hearing aids for the deaf.'" Thus, there is no support in the cited reference for a lack of understanding of the scope of the invention by the inventors, the reason for which the reference was cited. The footnote should have failed cite-checking for both of these reasons. [Parenthetically, there is also a potential issue with the mention of the year 1947 in the Haber article as opposed to the year 1948; the transistor was not named until 1948 and there was a news blackout by Bell Labs until June 30, 1948.] As a related matter, one notes that academic commentators have recently been highly critical of behavior at the U.S. Patent Office (e.g., (e)stopping the madness at the PTO in 116 Harvard Law Review 2164 (2003)) yet the PTO of 50 years ago seems to have better understood transistors than some current academicians. One has to be careful about the accuracy of footnotes in law reviews. (also, L. B. Ebert, 4 CHI-K. J. INTELL. PROP. 129 (2004)).

****
For those interested, a copy of the article in the New York Times in 1948 (not 1947) is available on the internet. Hope you love Eve Arden and Our Miss Brooks! (Page 46 of July 1, 1948 issue of New York Times: http://people.msoe.edu/~reyer/regency/NYTimes.jpg)]

****
A version of footnote 29 had appeared earlier in Matthew J. Conigliaro, Andrew C. Greenberg, and Mark A. Lemley, "Foreseeability in Patent Law," 16 Berkeley Tech. L.J. 1045 (Fall 2001), a law review article related to the IEEE amicus brief in the Festo case (535 U.S. 722 (2002)). It is somewhat ironic to note the connection in view of the confusion over what knowledge the inventors of the transistor possessed at the time of the invention of the transistor. A version of footnote 29 also appears in the Stanford Law Review; Shockley and Pearson were both at Stanford at one time.

Arguments in eBay appeal of MercExchange verdict set for Oct. 5

The CAFC will hear oral argument in the appeal, by eBay, of a $29.5 million jury verdict against it for infringement of claims of a patent of MercExchange.

Forbes identified one issue on appeal: whether or not a certain videotape was prior art which invalidated the claims of the patent of MercExchange. The videotape was before the jury. Thus, on appeal, an issue is whether or not there is substantial evidence to support the jury verdict [see earlier post in IPBiz]. The Forbes article also points to an issue about whether or not the videotape is prior art at all. There was a recent decision of the CAFC [IN RE CARL F. KLOPFENSTEIN and JOHN L. BRENT, JR.] which gave guidance on what is, and is not, prior art. The Forbes article also mentions a re-examination of Woolston's patents [Woolston is the inventor of the MercExchange patent in the litigation.]

from the article in Forbes:

Yesterday [Sept. 8, 2004], the U.S. Court of Appeals for the Federal Circuit set Oct. 5 as the date when it will hear arguments in the eBay appeal of a judgment of patent infringement against it.

Sure to figure in that hearing is a videotape that eBay hopes will exonerate the company. The tape, narrated by former newsman Edwin Newman, was made by New York gallery owner Ken Nahan in 1994 for his company Hanicorp. Nahan hoped the investors who saw it would back his patent to tie together art inventories across the world, allowing customers to view art via computer.

That video, eBay has argued, is what is known in the patent business as "prior art," because it proves that Hanicorp was the first to propose an Internet auction in February 1994. That would have been a few months before MercExchange's founder Thomas Woolston, an electrical engineer who served in the military and with the U.S. Central Intelligence Agency, did the same.

A jury, however, was not convinced. They were shown the tape during a four-week trial in Virginia last year and returned a verdict that eBay willfully infringed on 41 claims in two MercExchange patents (see: "EBay Loses Round One In Patent Fight"). The court awarded MercExchange $29.5 million.

Now eBay is in the midst of a battle to overturn that verdict. The way the tape got into evidence and how eBay is using it now makes one thing clear: eBay is not treating MercExchange as a tiny nuisance.

An eBay attorney attempted to hand over the video to MercExchange late one night after the trial had already begun, not, as is usual, during discovery. A woman who described herself as hotel security called a MercExchange attorney's room at the Norfolk Marriott, claiming there was a disturbance on the floor and that she needed to come up immediately. Suspecting a ruse, the attorney told her that there was no disturbance and refused to give his room number. It was then that she told him a paralegal wanted to serve him with papers. He again refused.

The next morning, eBay served the attorney with the tape and introduced the video in court. The federal court accepted assurances from eBay's outside counsel that the tape was authentic, and outside counsel explained that the video was a publicly available infomercial "displayed on national television."

But the verdict caught the attention of Nahan, and he contacted Woolston last summer with curious news: Two attorneys, who later identified themselves as representatives of eBay, had called his wife Sherri on March 7, 2003, and asked if they could meet with them on the following Tuesday. The Nahans agreed.

After explaining the litigation with Woolston, the lawyers asked the Nahans whether they would testify on behalf of eBay and for permission to use the Hanicorp video. But, in a deposition to be used in oral arguments in the appeal, Nahan says he told the lawyers that the tape was never publicly distributed to anyone prior to 1996 and thus that it could not be considered prior art to the Woolston patents. "It was not as...eBay has asserted...an infomercial, i.e., a public advertisement," Nahan says. What's more, Hanicorp required anyone who viewed the tape to sign a confidentiality agreement and since that was still in force, Nahan declined to give the tape to the eBay lawyers.

(...)
The company is using the tape not just in appealing the verdict, but also in its request in June to the U.S. Patent and Trademark Office to reexamine all of Woolston's patents. The office agreed to a reexamination. About that reexamination, Durzy says that MercExchange used these same arguments and failed to stop the patent office from going forward with the reexamination. Of course, by agreeing to the reexamination, the Patent office did not make a ruling on the validity of any charges. That won't happen for at least 18 months.

*****
from CAFC case [IN RE CARL F. KLOPFENSTEIN and JOHN L. BRENT, JR.] on prior art:

The appellants argue on appeal that the key to establishing whether or not a reference constitutes a “printed publication” lies in determining whether or not it had been disseminated by the distribution of reproductions or copies and/or indexed in a library or database. They assert that because the Liu reference was not distributed and indexed, it cannot count as a “printed publication” for the purposes of 35 U.S.C. § 102(b). To support their argument, they rely on several precedents from this court and our predecessor court on “printed publications.” They argue that In re Cronyn, In re Hall, 781 F.2d 897 (Fed. Cir. 1986), Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985) (“MIT”), and In re Wyer, 655 F.2d 221 (CCPA 1981), among other cases, all support the view that distribution and/or indexing is required for something to be considered a “printed publication.”
We find the appellants’ argument unconvincing and disagree with their characterization of our controlling precedent. Even if the cases cited by the appellants relied on inquiries into distribution and indexing to reach their holdings, they do not limit this court to finding something to be a “printed publication” only when there is distribution and/or indexing. Indeed, the key inquiry is whether or not a reference has been made “publicly accessible.”

As we have previously stated,
The statutory phrase “printed publication” has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was “published.”

Footnote 4 is relevant to the eBay argument (as it applies to material in a videotape shown to others as prior art):

With regard to scientific presentations, it is important to note than an entirely oral presentation at a scientific conference that includes neither slides nor copies of the presentation is without question not a “printed publication” for the purposes of 35 U.S.C. § 102(b). Furthermore, a presentation that includes a transient display of slides is likewise not necessarily a “printed publication.” See, e.g., Regents of the Univ. of Cal. v. Howmedica, Inc., 530 F. Supp. 846, 860 (D.N.J. 1981) (holding that “the projection of slides at the lecture [that] was limited in duration and could not disclose the invention to the extent necessary to enable a person of ordinary skill in the art to make or use the invention” was not a “printed publication”), aff’d, 676 F.2d 687 (3d Cir. 1982) (unpublished table decision). While Howmedica is not binding on this court, it stands for the important proposition that the mere presentation of slides accompanying an oral presentation at a professional conference is not per se a “printed publication” for the purposes of § 102(b).

Societal crisis over credibility of drug company testing results?

The journal The Scientist reported on September 10, 2004 about a hearing on Sept. 9 of the House Energy and Commerce Subcommittee on Oversight and Investigations which was critical of the both the Food and Drug Administration (FDA) and pharmaceutical company officials concerning issues in failure to fully disclose clinical trial results. As the article notes, New York State Attorney General Spitzer has been active in this area.

The International Committee of Medical Journal Editors (ICMJE) said it would bar [from publication] data from trials that had not been registered–before enrolling any patients–in a free, open-to-the-public database that is managed by a nonprofit organization. Each trial file would include: protocols; definitions of outcomes; key trial dates; target number of subjects; funding source; and contact data for the principal investigator. According to the ICMJE, ClinicalTrials.gov comes closest to its ideal.

PhRMA also has a registry proposal, which would be voluntary and will be online at www.clinicaltrialresults.org.


from the article-->

Representatives from GlaxoSmithKline, Forest Laboratories, Wyeth Pharmaceuticals, Eli Lilly, Bristol-Myers Squibb, Pfizer, and Organon USA all said they supported the PhRMA proposal and would participate. All the officials also said they had not had time to digest the AMA proposal, but were open to participation. Most said they were in the process of disclosing trial results on their own Web sites.

Both Forest and GlaxoSmithKline have been forced to create online registries through recent consent agreements with New York State Attorney General Eliot Spitzer.

John Hayes, an Eli Lilly product team leader, said Lilly will disclose full information about phase I, II, III, and post-marketing trials within a year of each study's completion. The company was motivated in part by bad press, he said: "There's a societal crisis in terms of the credibility of drug company results."

But, he said, there is a limit to what makes sense to make publicly available, noting that the company recently submitted a new drug application to the FDA that contained 417,000 pages, much of it raw data.

Waxman said he and colleague Edward Markey (D-Mass.) would not wait for voluntary efforts to pan out, but instead will soon introduce legislation to make it mandatory to register trials at ClinicalTrials.gov. The bill would also incorporate recommendations from the ICMJE and the AMA.

USPTO employee Dec. 2003 valedictorian at virtual Concord Law

The class rooms at Concord Law School are virtual. Mass lectures are taped and video-streamed; real-time online classroom discussions are conducted through a combination of Real Player audio and a form of instant messaging that allows teachers to direct oral questions to individual students -- and demand immediate answers, as in a brick and mortar law school, except that the students type the replies in for all to see.

The average age of a student is 43 and about 40 percent already hold at least one advanced degree. Clifford Crowder of Winchester, Va., age 59, is older than average. A training and quality assurance specialist at the U.S. Patent and Trademark Office in Crystal City, Va., Crowder graduated in December, 2003 and was valedictorian at the graduation ceremonies -- real, not virtual -- in Los Angeles, where the school has offices. Concord is owned by Kaplan Higher Education, a division of Kaplan Inc., which in turn is owned by the Washington Post Co.

On June 25, 2004. from his chambers in Washington, D.C., Supreme Court Justice Antonin Scalia conducted an hourlong online colloquium with more than 400 Concord Law School students, answering their questions and expounding on the rule of law.

Perjury issue in patent case of Monsanto v. Ralph

Monsanto (rep. by Seth Waxman) v. Ralph (CAFC Sept. 7, 04):

On the contrary, the record suggests that Ralph actively concealed the existence of those bags by leaving them at Sinkers until he believed that the order had expired. In fact, according to the district court, Ralph had represented under oath during the pendency of the order that there was no stored seed. Sanction Hearing Transcript, slip op. at 27. We find no abuse of discretion in the court’s refusal to allow Ralph to benefit from his own perjury. Furthermore, as Monsanto points out, the district court has the inherent power under section 37 to sanction abuses of the judicial process irrespective of the existence of any particular order.
Ralph’s arguments that his conduct would only have affected one out of four claims in this case and that he concealed information only to protect his friend Hendrix are similarly unavailing. The district court justifiably concluded that Ralph’s subornation of perjury and lying under oath with respect to cottonseed saved in 2000 cast a pall of doubt over all of his defenses. According to the court, “lies . . . compounded upon lies. . . . The violations [were] willful and continuing. The defendants . . . engaged in a systematic pattern of lying to keep the truth from being discovered in this case,” Sanction Hearing Transcript, slip op. at 30-31, and it was only when confronted with objective evidence that Ralph would purport to come clean, at which time he would “come forward and tell another story. . . . [T]he Court’s only conclusion is that they changed their story to fit the moving target of the truth,” id. at 28. Not only did Ralph destroy evidence, but in doing so he also knowingly violated the court’s orders and he was found to have lied under oath with regard to the extent of the destruction. As a result, the court concluded that it had “no confidence that we will ever know the truth in this case,” and that “[w]henever given the chance to tell the truth, the defendants have consistently chosen dishonesty.” Id. at 31. We conclude, therefore, that the court did not abuse its discretion by refusing to limit its sanctions to the cottonseed saved for 2000. With respect to Ralph’s argument that he was trying to protect Hendrix, we agree with the district court that “[l]ying to protect a friend is lying, pure and simple. Lying to give an alibi to another criminal is punishable. . . . Lying to protect a friend is nothing more than lying.” Id. at 28.
Ralph’s argument that Monsanto was not prejudiced by any of his perjured testimony because Monsanto uncovered all the facts on its own misses the point, because it fails to take into account that Monsanto had to take costly steps to uncover facts that Ralph was obligated to provide voluntarily. Moreover, because the district court found that the full truth could not be ascertained, the full extent of the prejudice to Monsanto from Ralph’s deceit is likewise unknowable. Further still, even if there was no harm at all to Monsanto, Ralph’s conduct undermined the integrity of the court and the judicial system, and sanctions would have been warranted on that basis alone. Finally, although we agree with Ralph that there are important public policy reasons to allow an accused infringer to prove that patents asserted against him are invalid or unenforceable, Ralph gave up the right to attempt to fulfill that role when he violated the court’s orders and lied to the court. Accordingly, for the foregoing reasons, we conclude that the district court did not abuse its discretion by striking Ralph’s pleadings.

RIAA sued for patent infringement in P2P area

A patent infringement action by Altnet includes RIAA as a Defendant, an ironic situation in that RIAA is frequently a plaintiff in copyright suits.


from Business Wire:

Stating its efforts at cooperation have proven fruitless, Brilliant Digital Entertainment (BDE) subsidiary Altnet has filed a civil suit against a number of companies and organizations, including the RIAA, alleging the breach of the "TrueNames" patent it licensed in 2002. The suit names RIAA chief Mitch Bainwol, and the RIAA's Hillary Rosen, Cary Sherman and Marc Morgenstern as defendants, in addition to The RIAA, Overpeer, Inc., Loudeye, Inc., and Media Sentry Inc. Altnet alleges some of the defendants infringe on its patents to "spoof" peer-to-peer (P2P) users with bogus or corrupted media files. Altnet alleges this has inhibited the growth of P2P for legitimate file sharing that benefits copyright holders (which Altnet advocates) and thereby has injured its business.

Court on IP professor

-->
Charter One Financial (2001 WL 1035721; 65 USPQ2d 1684):

"In the instant case, defendant has challenged Professor Lichtman's credentials to testify about trademark law.

Since June of 1998, Professor Lichtman has been employed as an assistant professor of law at the University of Chicago. From June of 1997 through May of 1998, he was employed as a Fellow at Yale Law School. His academic credentials are impressive. He was graduated from Yale Law School in 1997 as an Olin Fellow in Law, Economics and Public Policy and as a Coker Teaching Fellow in Constitutional Law.

He attended Duke University and was graduated first in his class with a B.S.E. in Electrical Engineering and Computer Science. He has published seven works, on subjects including telecommunications law, patents and jury reform. None of the works that Professor Lichtman has published focuses on trademark law, but he is currently researching a project that has a focus in trademark law. Furthermore, the classes that he has taught while an assistant professor at the University of Chicago contain a trademark component.

During the preliminary injunction hearing, Professor Lichtman testified that he considers himself an expert able to testify about trademark law, patent law, and law involving emerging technology. Professor Lichtman has never done any practical work on a trademark. He has never drafted a trademark application, defended a trademark or prosecuted a trademark.

[3] Professor Lichtman is not currently qualified to testify as an expert on trademark law. Courts have recognized that expertise may be acquired through practical experience, academic experience or simply through observing the work of others. DePaepe v. General Motors Corp., 141 F.3d 715, 719 (7th Cir. 1998); Wetherill v. University of Chicago, 565 F.Supp. 1553, 1563-64 (N.D. Ill. 1983) (Shadur, J.).

However, Professor Lichtman has no special qualification over the average lawyer in the field of trademark. He testified that he is qualified as an expert because "I am incredibly well read in the area, read all relevant law, read a lot of the relevant cases, read a lot of the commentary, try to understand what the next issues will look like, try to understand the policies that caused us to design the law *1690 the way we did, their strengths and weaknesses. The details of practicing trademark law, that is not what I do."

Essentially, Professor Lichtman is asking this Court to certify him as an expert because he has done what any motivated lawyer could do, namely, study precedent. There is no special or unique perspective, other than his intelligence, which Professor Lichtman can bring to the court. It is difficult to reconcile Professor Lichtman's lack of overall experience with his claim to be an expert in so many wide-ranging areas of the law. Given that none of his published work involves trademark law and that trademark law only comprises a small subset of larger topics which he teaches, we cannot find Professor Lichtman qualified as an expert.

However, we have considered his legal arguments. In our opinion, he advanced no arguments that could not have been presented to this court as legal argument in a brief or memorandum. As our opinion makes clear above, we rejected Professor Lichtman's analysis that, using the imagination test, "charter" is a suggestive mark.

Monsanto v. Ralph: perjury in patent case

from the CAFC decision in Monsanto v. Ralph:

On the contrary, the record suggests that Ralph actively concealed the existence of those bags by leaving them at Sinkers until he believed that the order had expired. In fact, according to the district court, Ralph had represented under oath during the pendency of the order that there was no stored seed. Sanction Hearing Transcript, slip op. at 27. We find no abuse of discretion in the court’s refusal to allow Ralph to benefit from his own perjury. Furthermore, as Monsanto points out, the district court has the inherent power under section 37 to sanction abuses of the judicial process irrespective of the existence of any particular order.
Ralph’s arguments that his conduct would only have affected one out of four claims in this case and that he concealed information only to protect his friend Hendrix are similarly unavailing. The district court justifiably concluded that Ralph’s subornation of perjury and lying under oath with respect to cottonseed saved in 2000 cast a pall of doubt over all of his defenses. According to the court, “lies . . . compounded upon lies. . . . The violations [were] willful and continuing. The defendants . . . engaged in a systematic pattern of lying to keep the truth from being discovered in this case,” Sanction Hearing Transcript, slip op. at 30-31, and it was only when confronted with objective evidence that Ralph would purport to come clean, at which time he would “come forward and tell another story. . . . [T]he Court’s only conclusion is that they changed their story to fit the moving target of the truth,” id. at 28. Not only did Ralph destroy evidence, but in doing so he also knowingly violated the court’s orders and he was found to have lied under oath with regard to the extent of the destruction. As a result, the court concluded that it had “no confidence that we will ever know the truth in this case,” and that “[w]henever given the chance to tell the truth, the defendants have consistently chosen dishonesty.” Id. at 31. We conclude, therefore, that the court did not abuse its discretion by refusing to limit its sanctions to the cottonseed saved for 2000. With respect to Ralph’s argument that he was trying to protect Hendrix, we agree with the district court that “[l]ying to protect a friend is lying, pure and simple. Lying to give an alibi to another criminal is punishable. . . . Lying to protect a friend is nothing more than lying.” Id. at 28.
Ralph’s argument that Monsanto was not prejudiced by any of his perjured testimony because Monsanto uncovered all the facts on its own misses the point, because it fails to take into account that Monsanto had to take costly steps to uncover facts that Ralph was obligated to provide voluntarily. Moreover, because the district court found that the full truth could not be ascertained, the full extent of the prejudice to Monsanto from Ralph’s deceit is likewise unknowable. Further still, even if there was no harm at all to Monsanto, Ralph’s conduct undermined the integrity of the court and the judicial system, and sanctions would have been warranted on that basis alone. Finally, although we agree with Ralph that there are important public policy reasons to allow an accused infringer to prove that patents asserted against him are invalid or unenforceable, Ralph gave up the right to attempt to fulfill that role when he violated the court’s orders and lied to the court. Accordingly, for the foregoing reasons, we conclude that the district court did not abuse its discretion by striking Ralph’s pleadings.

The return of Juicy Whip vs. Orange Bang

Following the decision in Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728 (Fed. Cir. 2002), a jury awarded Juicy Whip compensatory damages totaling $643,379.75. In a return visit to the CAFC, Juicy Whip appealed from the district court’s decision denying its claim for lost profits and requested reassignment of the case to a new judge.

Of the lost profits issue, Juicy Whip argued that the district court erred by denying it the opportunity to present to the jury its theory of lost profits from lost syrup sales. It claims that there exists a functional relationship between the PATENTED dispenser and the UNPATENTED syrup, a link adequate to justify recovery of lost profits. Orange Bang responds that Juicy Whip has not shown sufficient proof of such a functional relationship between the two items and that, because the two items are capable of use independently of each other, Juicy Whip should not be permitted to recover damages from syrup sales.

The CAFC noted: The dispenser and the syrup are in fact analogous to parts of a single assembly or a complete machine, as the syrup functions together with the dispenser to produce the visual appearance that is central to Juicy Whip’s ’405 patent. Despite some limited interchangeability—other syrups may be used in Juicy Whip’s dispenser and, likewise, other dispensers could use Juicy Whip’s syrups—the two items do “function together to achieve one result,” Rite Hite, 56 F.3d at 1551. The dispenser needs syrup and the syrup is mixed in a dispenser. Such is indeed a functional relationship, and a functional relationship between a patented device and an unpatented material used with it is not precluded by the fact that the device can be used with other materials or that the unpatented material can be used with other devices. We therefore conclude that the district court erred as a matter of law by denying Juicy Whip the opportunity to present to the jury evidence for its theory of lost profits on lost syrup sales. Accordingly, we vacate the jury’s award of a reasonable royalty and remand this sticky issue for further proceedings to allow Juicy Whip to prove lost profits on its syrup sales.

--> Isn't there some kind of antitrust issue here?

Of the judge issue, Juicy Whip requested that the case be reassigned to a different district court judge, alleging that the judge “continues to view Juicy Whip’s invention with disdain and is punishing Juicy Whip as a result.” Appellant’s Opening Br. at 40. Juicy Whip cites passages from various opinions issued by the district court that it claims are indicative that the court may have “substantial difficulty putting out of its mind its view that the ’405 invention lacks utility and/or is unimportant.” Id. at 43. Orange Bang responds simply that there are insufficient grounds to require reassignment.
We agree with Orange Bang that reassignment to a different judge is not warranted in this case. Juicy Whip does not assert personal bias and has not shown adequate reason to merit the unusual remedy of reassignment. We cannot say, based on the few excerpts cited by Juicy Whip in view of the entire lifetime of this litigation spanning nearly seven years, that the district court judge has demonstrated such irreversibly firm views that the case requires reassignment or that such action is necessary to preserve the appearance of justice. The district court judge is quite familiar with the parties and the issues, and reassignment would only result in a waste of judicial resources. Because “[s]uch unusual circumstances rarely exist” to justify reassignment, Glen Holly Entm’t, Inc. v. Tektronix, Inc., 343 F.3d 1000, 1017 (9th Cir. 2003), and because we do not believe that this is such a case, we decline to reassign the case on remand.

More on WHAT DO PATENTS PURCHASE?

Further on the article by Shubha Ghosh and Jay Kesan, WHAT DO PATENTS PURCHASE? IN SEARCH OF OPTIMAL IGNORANCE IN THE PATENT OFFICE, 40 Hous. L. Rev. 1219 (2004).

Of the text:
For example, Congress could adopt standards for patentability that are akin to the standards that the National Science Foundation (NSF) has for the granting of funds for research. n172 A critique of the NSF system is itself worthy of a paper and response, n173 but our point is that Congress could conceivably limit the grant of patents to inventions that are clearly cutting edge in a field of study. In this way, the USPTO would be promoting progress of a sort and would have guidelines for how to pursue its mandate. Furthermore, the scope of optimal ignorance for the USPTO would be given structure; the agency and its examiners would know what to look for and what to ignore within the scope of the mandate.

n172. National Science Foundation, Grant Proposal Guide (Oct. 2003), available at http://www.nsf.gov/pubs/2004/nsf042/nsf042.pdf (listing the following characteristics: novel and untested ideas, emerging and potentially transformative ideas, new approaches to established topics, research for quick response to natural disasters, and innovative advances).

n173. For a discussion of the NSF and other institutions including the USPTO as they relate to innovation and information policy, see generally Brett Frischmann, Innovation and Institutions: Rethinking the Economics of U.S. Science and Technology Policy, 24 Vt. L. Rev. 347 (2000).

--> One might question the concepts 1) that NSF funding goes to "inventions that are clearly cutting edge in a field of study" AND that patents should be restricted to "inventions that are clearly cutting edge in a field of study."

Although some NSF funding goes to "cutting edge" work, the recent scandal over the work of Jan-Hendrik Schon illustrates that NSF funding can go to follow up on someone else's cutting edge work. Thus, the initial work by Schon was funded by Lucent/Bell Labs (not by NSF or other government agencies) but the follow up work was funded by government agencies, including NSF. In this particular case, the work was fraudulent and millions of dollars of public money was spent following up the fraudulent work. Separately, the initial "cutting edge" work on oxide superconductors was done by IBM and the initial "cutting edge" work on C60 was performed by Exxon in 1984, although much follow up work was funded by government agencies. Whether or not the NSF model is appropriate for optimizing patent law can be seriously questioned.

Separately, patent law is not restricted to "cutting edge" [pioneering] inventions. Incremental advances which are useful, novel and nonobvious should be protected to encourage such advances.

As a separate point, the idea that patent applications might be submitted to competitors for peer review (as happens with NSF grant proposals) can be criticized. The misuse of such information (whether advertent or inadvertent) has been documented (and was even the subject of a plot line on Law & Order ten years ago ["Big Bang" episode on proton lifetime; see http://academicgame.blogspot.com/
archives/2004_01_09_academicgame_archive.html and my article on "scientific doormen" at pages 34-35 of the January 1999 issue of Intellectual Property Today, available LEXIS]).

Thus, the "NSF standards" alternative of Ghosh and Kesan appears as an easily demolished strawman.

The most direct remedy for perceived issues at the PTO is to give at least sufficient resources to perform art searches in relevant patent and non-patent databases. Some mistakes will still be made, but then again Science and Nature published Schon's entirely fictionalized research as if it were real. Thus, provide a reasonable procedure for mistake correction.

**
Separately, Kieff provides a different alternative to that of Kesan, and describes Kesan:

"...which differs from the argument presented here in that it adheres to the orthodoxy of advocating methods for improving hard-look examination systems and eschews soft-look approaches like those explored in this work), and Shubha Ghosh & Jay Kesan, What Do Patents Purchase? In Search of Optimal Ignorance in the Patent Office 2–5 (Univ. of Ill. Coll. of Law, Ill. Law & Econ., Research Paper Series No. LE03-007, 2003), at http://papers.ssrn.com/pape.tar?abstract_id=410545 (arguing that Patent Office examination of patent applications, especially better informed examination, is important in making issued patents more valuable as the objects of licensing deals). But, as discussed infra Part III.A, the rules relating to patent validity are, and should be, responsive to information that happens to be not known or easily knowable by the patent applicant. As a result, heaping added incentives to find this information on the back of the patent applicant is not likely to be an efficient tool for bringing this information to the attention of decisionmakers. For other bounty approaches, see Joseph Scott Miller, Building a Better Bounty: Litigation-Stage Rewards for Defeating Patents 7–9 (2003) (working paper, available online at http://ssrn.com/abstract=431242) (suggesting cash rewards be granted to those who successfully defeat the validity of a patent).
Yet another approach is to alter the framework for appellate review of patent cases, as explored in the recent important work by Rai. See generally Arti K. Rai, Fact, Law, and Policy: An Allocation-of-Powers Approach to Patent System Reform (Univ. of Pa., Inst. for Law & Econ., Research Paper No. 02-20, 2003), available at http://ssrn.com/ab-stract_id=335122 (advocating change in the appellate review process)."

Procter & Gamble sues Coca-Cola over preservative in fruit drinks

Procter & Gamble asserts Coke's Minute Maid fruit drinks fall within the scope of claims of several P&G patents on processes that control the growth of microorganisms.

US Patents 6,294,214 and U.S. Pat. 5,431,940 are likely implicated.

Some claims of various patents follow.

US 6,773,737 (claims the benefit of Provisional Application No. 60/109,058 filed Nov. 19, 1998. )


.A method for treating food to clean and reduce the level of microorganisms on the surface of said food, said method comprising treatment occurring just prior to consumption, comprising the step of contacting the surface of said food with a aqueous dilute treatment composition comprising a toxicologically-acceptable anionic detergent surfactant; total electrolyte to provide at least about 0.04 molarity of cations, and toxicologically-acceptable basic buffer to provide a pH of greater than about 8.5, the composition being essentially free of any material that adversely affects safety or palatability, so that said food does not need to be rinsed before consumption, said composition comprising:

(a) greater than about 0.015% by weight of a member selected from the group consisting of sodium or potassium lauryl sulfate, and mixtures thereof;

(b) toxicologically-acceptable basic buffer selected from the group consisting of water soluble borates, hydroxides, ortho-phosphates, carbonates, and/or bicarbonates, to provide a pH of from about 8.5 to about 13

(c) sufficient electrolyte to provide at least about 0.04 molarity of cations without considering any surfactant cations:

(d) optionally, from about 0.0005% to about 3% by weight of calcium ion sequestrant selected from the group consisting of water soluble salts of polyphosphates, organic polycarboxylic acid, and mixtures thereof;

(e) optionally, toxicologically-acceptable preservative;

(f) optionally, toxicologically acceptable suds suppressor;

(g) the balance comprising an aqueous carrier optionally containing ethanol.

2. The method of claim 1 wherein said aqueous treatment composition comprises:

(a) less than about 5% by weight and sufficient to maintain the viscosity of said solution to less than about 50 centipoise, of sodium or potassium lauryl sulfate;

(b) toxically-acceptable basic buffer selected from the group consisting of water soluble potassium and/or sodium, hydroxides, ortho-phosphates, and/or carbonates, to provide a pH of from about 10.0 to about 12.5;

(c) sufficient electrolyte to provide at least about 0.08 molarity of cations and

(d) from about 0.001% to about 2% by weight of said calcium ion sequestrant, which is selected from the group consisting of sodium and/or potassium tripolyphosphate, ethylenediaminetetraacetate, citrate, and mixtures thereof.

******

US 6,455,086 (from PCT/US98/13279 )


1. A composition for treating food, including produce and meat, and/or surfaces that contact food, to make the food safe to eat, optionally after dilution, comprising:

(A) an effective amount of food compatible sanitizer to reduce the level of microorganisms, selected from the group consisting of: (1) basic buffer to provide a pH of from about 10.5 to about 13; (2) water soluble bleach; (3) water soluble antimicrobials; and (4) mixtures thereof;

(B) an effective amount to provide a desirable odor effect of food compatible, non-substantive perfume; wherein at least about 50% of said non-substantive perfume comprises perfume components having a ClogP of less than about 3.5 and/or a boiling point of about 260.degree. C. or lower and said non-substantive perfume has at least four different perfume components having a ClogP of less than about 3.5 and/or a boiling point of about 260.degree. C. or lower;

(C) optionally, sufficient food compatible detergent surfactant to reduce the surface tension and to reduce the viscosity to less than about 50 cp., to help maximize surface wetting and/or drainage thus minimizing residue, but less than an amount that will affect palatability;

(D) optionally, an effective level of calcium ion sequestrant to sequester calcium in hard water to control calcium precipitates;

(E) optionally, food compatible uncomplexed cyclodextrin;

(F) optionally, food compatible preservative;

(G) optionally, food compatible suds suppressor; and

(H) the balance comprising diluents; an aqueous carrier selected from water and, optionally, low levels of low molecular weight, food compatible organic solvent; and/or minor ingredients;

said composition being essentially free of any material that is not food compatible.

****
from US 6,294,214 (This application is a continuation of 08/642,795, filed May 3, 1996, now abandoned, which is a continuation in part of copending application Ser. No. 08/201,300, filed Feb. 24, 1994 now U.S. Pat. 5,431,940, issued Jul. 11, 1995. )


1. Noncarbonated beverage product with improved microbial stability, comprising:

(a) from about 100 ppm to about 400 ppm of a preservative selected from the group consisting of sorbic acid, benzoic acid, alkali metal salts thereof and mixtures thereof;

(b) from about 300 ppm to about 900 ppm of a polyphosphate having the formula: [not illustrated]

where n averages from about 3 to about 100 and each M is independently selected from the group consisting of sodium and potassium atoms;

(c) added water having from 0 ppm to about 60 ppm of hardness; and

(d) a vitamin selected from the group consisting of vitamin A, provitamins thereof, and mixtures thereof, but wherein the beverage product is not fortified with calcium, magnesium, or iron;

wherein the resulting beverage product has a pH of from about 2.5 to about 4.5 and an ambient display time of at least about 10 days.

2. The beverage product of claim 1, wherein the preservative is potassium sorbate and the polyphosphate is sodium hexametaphosphate.

Procter & Gamble sues Coca-Cola over preservative

Procter and Gamble asserts that Coke's Minute Maid fruit drinks fall within the scope of claims of several P&G patents on processes that control the growth of microorganisms.

One of these patents is believed to be US 6,294,214 (some claims reproduced below; related to US 5,431,940), although P&G has many patents in the antimicrobial area.

Some claims of P&G patents -->

US 6,773,737 (claims the benefit of Provisional Application No. 60/109,058 filed Nov. 19, 1998. )


A method for treating food to clean and reduce the level of microorganisms on the surface of said food, said method comprising treatment occurring just prior to consumption, comprising the step of contacting the surface of said food with a aqueous dilute treatment composition comprising a toxicologically-acceptable anionic detergent surfactant; total electrolyte to provide at least about 0.04 molarity of cations, and toxicologically-acceptable basic buffer to provide a pH of greater than about 8.5, the composition being essentially free of any material that adversely affects safety or palatability, so that said food does not need to be rinsed before consumption, said composition comprising:

(a) greater than about 0.015% by weight of a member selected from the group consisting of sodium or potassium lauryl sulfate, and mixtures thereof;

(b) toxicologically-acceptable basic buffer selected from the group consisting of water soluble borates, hydroxides, ortho-phosphates, carbonates, and/or bicarbonates, to provide a pH of from about 8.5 to about 13

(c) sufficient electrolyte to provide at least about 0.04 molarity of cations without considering any surfactant cations:

(d) optionally, from about 0.0005% to about 3% by weight of calcium ion sequestrant selected from the group consisting of water soluble salts of polyphosphates, organic polycarboxylic acid, and mixtures thereof;

(e) optionally, toxicologically-acceptable preservative;

(f) optionally, toxicologically acceptable suds suppressor;

(g) the balance comprising an aqueous carrier optionally containing ethanol.

2. The method of claim 1 wherein said aqueous treatment composition comprises:

(a) less than about 5% by weight and sufficient to maintain the viscosity of said solution to less than about 50 centipoise, of sodium or potassium lauryl sulfate;

(b) toxically-acceptable basic buffer selected from the group consisting of water soluble potassium and/or sodium, hydroxides, ortho-phosphates, and/or carbonates, to provide a pH of from about 10.0 to about 12.5;

(c) sufficient electrolyte to provide at least about 0.08 molarity of cations and

(d) from about 0.001% to about 2% by weight of said calcium ion sequestrant, which is selected from the group consisting of sodium and/or potassium tripolyphosphate, ethylenediaminetetraacetate, citrate, and mixtures thereof.

******

US 6,455,086 (from PCT/US98/13279 )


1. A composition for treating food, including produce and meat, and/or surfaces that contact food, to make the food safe to eat, optionally after dilution, comprising:

(A) an effective amount of food compatible sanitizer to reduce the level of microorganisms, selected from the group consisting of: (1) basic buffer to provide a pH of from about 10.5 to about 13; (2) water soluble bleach; (3) water soluble antimicrobials; and (4) mixtures thereof;

(B) an effective amount to provide a desirable odor effect of food compatible, non-substantive perfume; wherein at least about 50% of said non-substantive perfume comprises perfume components having a ClogP of less than about 3.5 and/or a boiling point of about 260.degree. C. or lower and said non-substantive perfume has at least four different perfume components having a ClogP of less than about 3.5 and/or a boiling point of about 260.degree. C. or lower;

(C) optionally, sufficient food compatible detergent surfactant to reduce the surface tension and to reduce the viscosity to less than about 50 cp., to help maximize surface wetting and/or drainage thus minimizing residue, but less than an amount that will affect palatability;

(D) optionally, an effective level of calcium ion sequestrant to sequester calcium in hard water to control calcium precipitates;

(E) optionally, food compatible uncomplexed cyclodextrin;

(F) optionally, food compatible preservative;

(G) optionally, food compatible suds suppressor; and

(H) the balance comprising diluents; an aqueous carrier selected from water and, optionally, low levels of low molecular weight, food compatible organic solvent; and/or minor ingredients;

said composition being essentially free of any material that is not food compatible.

****
from US 6,294,214 (This application is a continuation of 08/642,795, filed May 3, 1996, now abandoned, which is a continuation in part of copending application Ser. No. 08/201,300, filed Feb. 24, 1994 now U.S. Pat. 5,431,940, issued Jul. 11, 1995. )


1. Noncarbonated beverage product with improved microbial stability, comprising:

(a) from about 100 ppm to about 400 ppm of a preservative selected from the group consisting of sorbic acid, benzoic acid, alkali metal salts thereof and mixtures thereof;

(b) from about 300 ppm to about 900 ppm of a polyphosphate having the formula: [not illustrated here]

where n averages from about 3 to about 100 and each M is independently selected from the group consisting of sodium and potassium atoms;

(c) added water having from 0 ppm to about 60 ppm of hardness; and

(d) a vitamin selected from the group consisting of vitamin A, provitamins thereof, and mixtures thereof, but wherein the beverage product is not fortified with calcium, magnesium, or iron;

wherein the resulting beverage product has a pH of from about 2.5 to about 4.5 and an ambient display time of at least about 10 days.

2. The beverage product of claim 1, wherein the preservative is potassium sorbate and the polyphosphate is sodium hexametaphosphate.

Cardiac Pacemakers, Guidant v. St. Jude

There are a number of issues in the case, some of which are mentioned in the case text below.

-->Obviousness
We think that the district court, in granting JMOL, applied an incorrect standard to the ultimate question. Recognition of the problem of treating complex heart arrhythmias does not render obvious the eventual solution. Recognition of a need does not render obvious the achievement that meets that need. There is an important distinction between the general motivation to cure an uncured disease (for example, the disease of multiple forms of heart irregularity), and the motivation to create a particular cure.

-->Substantial evidence
[If there is "substantial evidence" supporting the opposite conclusion reached by the jury, does that imply there is not "substantial evidence" supporting the conclusion reached by the jury?]

The record contains substantial evidence whereby a reasonable jury could have reached the verdict that it would not have been obvious in March 1981 to provide an ICD that includes cardioversion. In view of this evidentiary support, the district court's grant of JMOL cannot stand. See Continental Air Lines, Inc. v. Wagner-Morehouse, Inc., 401 F.2d 23, 30 (7th Cir. 1968) (the jury verdict must be sustained, even if the judge would have reached a different conclusion, if the verdict is supported by substantial evidence). The grant of JMOL is reversed, and the jury verdict is reinstated that the '288 patent is not invalid for obviousness.

****Procedural***
Procedural Matters
St. Jude states that CPI failed to preserve a right to appeal the claim construction, because CPI did not make formal objection when the jury was instructed on the claim construction. CPI responds that the claim construction was decided at the Markman hearing, and was not a proper subject of trial objection under Rule 51.

(…)
. CPI refers to the "futility" exception, recognized by the Seventh Circuit in Chestnut v. Hall, 284 F.3d 816, 820 (7th Cir. 2002) ("A party may be excused from complying with the formalities of Rule 51 where: (1) the party's position has been previously made clear to the court; and (2) further objection would be unavailing and futile. ")

(…)
St. Jude responds that if we modify the district court's claim construction, as we have, a new trial is required so it can present evidence and argument that were not needed under the district court's original claim construction, such as whether the now-asserted scope of the claims is supported by the specification. St. Jude points out that it is entitled to jury determination of the question of infringement. We agree.

***False testimony

The witness had concealed contradictory testimony that he had given in a related case. CPI has paid and is not appealing the sanctions already imposed, for St. Jude's attorney fees and expenses associated with the false testimony.

There they go again: patent citation studies

-->
The European Commission's Research DG has published a call for tenders for a study on highly-cited patents, highly-cited publications and research networks.

This study forms part of the work to be performed under ASSIST in the area of economic analysis, statistics and indicators on science and technology and as such will contribute to implementing the European Science and Technology Foresight and Indicators Knowledge Sharing Platform.

In a knowledge-based society, scientific and technological knowledge plays a key role for innovation and growth. In recent years, a number of companies have established research and development labs in close proximity to renowned public research organisations, expecting positive spillover effects from the external research, the basic argument being the impact of close proximity to important research. On the other hand, modern information and communication allows access to new knowledge almost everywhere. The basic question underlying this study is the extent to which one or the other argument is valid and to what extent networks and geographic proximity matter in the innovation process. Patent applications are a particularly rich source for analysing prior knowledge that lead to the inventions or innovations protected by patents. In this respect, the patents cited in a patent application indicate existing technological know-how that has helped develop innovation. Equally interesting is the NPL listed in patent applications.

For further information, please contact:

European Commission
Directorate-General Research
Attn: Xabier Goenaga
SDME 9/77
B-1049 Brussels
Tel +32-2 296 1434
Fax +32-2 296 7026
E-mail: xabier.goenaga@cec.eu.int


**http://dbs.cordis.lu/cgi-bin/
<--

Better put out the bat signal for Edlyn Simmons and Nancy Lambert to put down this latest fire of stupidity. However, as Edlyn stated:

Evaluating an individual patent can't be done without knowledge about whether the patent is a grape or a watermelon. But
business people like easy, quantitative answers, ...

[so here we go again, but refer to

Edlyn S. Simmons and Nancy Lambert. "Patent Statistics: Comparing Grapes and Watermelons" In Recent Advances in Chemical Information, Proceedings of the 1991 Montreux International Chemical Information Conference & Exhibition, H. Collier, Ed, (Royal Society of Chemistry, Cambridge; CRC Press) pp 33-78 (1992).

Simmons, Edlyn S.; Lambert, Nancy. "Comparing grapes and watermelons." ChemTech 23 (6), 1993, p. 51-59. ]

Issues with patents for AIDS drugs

Back in May 2004, there was a flurry of excitement when Amir Attaran published work suggesting that poverty, not patents, was the principal problem creating lack of access to AIDS drugs in third-world countries.

-->
Amir Attaran, a fellow at the Royal Institute of International Affairs in London finds that patents are largely a non-issue when it comes to treating the world's poor. His findings, out this week, follow earlier research on drug access in poor countries he published in the Journal of the American Medical Association.



The new study, in the journal Health Affairs, concludes that "in sixty-five low and middle income countries, where four billion people live, patenting is rare for the 319 products on the World Health Organization's Model List of Essential Medicines." Attaran points out that "only seventeen essential medicines are patentable, although usually not actually patented, so that overall patent incidence is low."



Attaran suggests the reason patenting is so uncommon is THAT "in very poor, low-income developing countries, particularly in Africa, annual drug spending may be $2 or less per person. With so little revenue at stake, most drug companies decided to forgo patent protection in these countries."



The significance of these findings becomes obvious when one considers what many global health activists and their friends in the media have been saying for years, arguing that patents are a chief obstacle to fighting disease effectively. Their beef is that the enforcement of drug patent protection in Africa and elsewhere prices the world's poor out of the market. Patents, in short, are killers.

<--

This discussion in May 2004 had been going on for some time (e.g.,
2001 article in http://www.overpopulation.com/articles/2001/000101.html;
http://www.news.harvard.edu/gazette/2001/10.18/08-aids.html)

There has not been that much discussion of the AIDS/patents interface recently. [But see post on blogspot:
http://infoserve.blogspot.com/2004_07_18_infoserve_archive.html]

UPDATE 23 Sept 2005:

In the first few years after federal regulators approved the influenza-fighting pill Tamiflu in 1999, the drug suffered from lackluster sales and indifference from U.S. health officials more focused on creating new vaccines.

Now, demand for Tamiflu is outstripping supply.

The drug's sales have skyrocked in recent months as a major U.S. vaccine supplier failed to meet half the nation's needs and the World Health Organization, worried about the threat of a worldwide bird flu epidemic, urges governments to stockpile anti-viral drugs.

That's touched off a nasty dispute between two drug companies that are fighting for control of the pill's growing profits - even as U.S. health experts fret about inadequate Tamiflu stockpiles and Third World countries threaten to ignore U.S. patents and make generic versions of the drug.