End of the line for URochester COX-2 patent

from the AP:

-->The University of Rochester's costly legal battle to reap billions of dollars in royalties from a new class of "super aspirin" appeared to be over November 29, 2004, after the U.S. Supreme Court refused to hear its claims. The high court denied the school's request for a review of lower court rulings that dismissed its patent infringement claims against the makers of lucrative painkillers known as cox-2 inhibitors, which include Pfizer Inc.'s Celebrex and Merck & Co.'s Vioxx.<--

[The use of the term "super aspirin" is a bit misdescriptive, because COX-2 drugs offer no more pain relief than do conventional NSAIDs.]

I had written in the May 2003 issue of Intellectual Property Today:

-->In University of Rochester v. G. D. Searle, et al., 2003 U.S. Dist. LEXIS 3030, the Federal Circuit will have the opportunity to tackle so-called "reach-through" claims, claims which attempt to reach-through from one discovery to obtain patent protection on a different discovery not yet made. In the area of non-steroidal anti-inflammatory pain relievers (for example, aspirin, RELAFEN), researchers at the University of Rochester had a theory that two enzymes were implicated in inflammatory pain, and that inhibition of one of them (COX-2) but not the other (COX-1) would be beneficial in treating humans. They identified the portion of the genome coding for COX-1 and COX-2, and were able to make these two enzymes. However, they did not make, or suggest how to make, a drug which was capable of selectively inhibiting the COX-2 enzyme. The University of Rochester obtained a patent claim for a method of treating humans with a drug capable of selectively inhibiting the COX-2 enzyme, and they asserted the patent the day it issued. However, in the litigation, this claim was invalidated because of the failure of the patent to describe such a drug or a way to make such a drug. The defendants in that litigation had made a drug capable of selectively inhibiting the COX-2 enzyme, and were selling it to the public (CELEBREX). One suspects that the decision will be affirmed by the Federal Circuit. [IT WAS.] From a patent law standpoint, 35 U.S.C. section 112 requires that the patent applicant provide a written description of the invention to show what it is that the inventor possesses and that the applicant show that the invention actually works. Patent law expresses the requirements of a deal between the inventor and the public. The public, in return for the grant of a right to exclude others for a limited period, is entitled to receive an invention which can be put into practice without undue experimentation. In the case of the University of Rochester patent, the public did not receive knowledge of how to obtain a drug to selectively inhibit the COX-2 enzyme, and thus could not use the invention as claimed. The public cannot live on promises of what could have been if some third party did significant work. Of Chairman Greenspan's issues, one notes that a determination that reach-through claims were valid would discourage the innovative effort of those who would actually bring a tangible, working product to the public. Economic growth, in the form of patients buying newly developed, viable drugs to foster better health, would be thwarted. <--

[In passing, with the issues with Merck's VIOXX, there is a whole new discussion about COX-2 inhibitors in regard to stroke and heart attack.]

Brazil to go to compulsory licensing of AIDS patents

Although Brazil will pay royalties to the patent holders of three to five foreign drugs used in an anti-AIDS cocktail central to its innovative program to fight AIDS, Brazil will violate the patents because Brazil will do so without permission from the drug manufacturers. "After technical analysis of the sustainability of the universal access to medication in this country, we determined that we have to move to a situation of self-sufficiency through compulsory licensing," said Pedro Chequer, head of the government's AIDS program.

Merely as an historical reference, recall the program of the United States for compulsory licensing of aircraft patents in the time period 1914-1918. Recall also the handling of radio patents in this time period. Recall also the history of CIPRO during the anthrax scare.

**UPDATE. August 25, 2005** from Chicago Tribune

A key question is whether the two countries [Brazil and Argentina] plan to break international patents, many of which are held by U.S. companies, and use the venture to produce their own versions of the most effective and expensive drugs to fight AIDS.

Gines Gonzalez Garcia, Argentina's minister of health and environment, said the accord was aimed at "guaranteeing our inhabitants access to these medicines."

"Without prejudice to our understanding of the international rules of the game," Gonzalez Garcia told the Buenos Aires daily Clarin, "what comes first are the interests of the citizens of each country."

His Brazilian counterpart, the newly appointed Jose Saraiva Felipe, was more assertive. He is under pressure from health experts and lawmakers to declare AIDS a medical emergency, which some Brazilian officials argue would allow the government to manufacture patented anti-HIV drugs without violating international trade agreements.

"We are going to conduct ourselves in accordance with the public interest," said Saraiva Felipe, who took over as health minister last month.

"There is no predisposition to gratuitously violate intellectual property, but if Brazil goes so far as to develop medicines, especially anti-retrovirals, we could come to adopt this attitude."

Anti-retroviral drugs, which kill or inhibit the growth of HIV, are key components in the so-called AIDS cocktail.

Brazil battles drugmaker

Brazil is locked in a battle with Abbott Laboratories over one such drug, Kaletra. Brazil, which provides free AIDS care to its citizens, wants the North Chicago company to further lower Kaletra's price. Abbott and other drugmakers say discounts to Brazil have gone far enough.

The two parties appeared to have reached a deal last month that would have dropped the Brazilian government's cost of Kaletra from its current $1.17 a pill while affirming Abbott's patent rights.

But after Saraiva Felipe took office, he said no agreement had been signed yet. He pressed Abbott for further discounts, saying Brazilian companies could produce a generic version of Kaletra for as little as 41 cents a pill.

Kaletra, also known as Lopinavir/Ritonavir, is a protease inhibitor. That means the drug blocks an enzyme, protease, that HIV needs to make more copies of itself. The drug is one of Abbott's biggest moneymakers, expected to produce $1 billion in sales this year.

Abbott submitted a revised pricing proposal to Brazil last week, the company said. In a statement, the company pledged "to negotiate in good faith . . . to finalize an agreement that Brazil will honor."

Like other major drug companies, Abbott charges different prices in different countries. It says Brazil, which boasts the world's ninth-largest economy, can afford the "fair price" Abbott is demanding. And it argues that without strong profits from Kaletra and other successful drugs, Abbott would be unable to fund the research that produces such breakthroughs.

But Brazilian officials say Kaletra itself eats up a third of the country's AIDS spending. Anti-HIV medicines account for a quarter of the Health Ministry's budget, Saraiva Felipe said.

"We say the price of drugs has to be based not on how rich the country is but how rich the person is," said Michael Weinstein, president of AIDS Healthcare Foundation, a Los Angeles medical and advocacy group.

"Brazil is one of the world leaders in AIDS prevention as well as in providing access to treatment and drugs," Weinstein said, praising Brazil's aggressive stance with drugmakers as well as its willingness to cooperate with other nations.

This month in Argentina, officials from 11 Latin American nations reached a deal with 26 drug and diagnostic companies to lower the prices governments pay for anti-HIV drugs and tests. Among the signatories were Brazil, Mexico and Argentina, Latin America's three biggest pharmaceutical markets.

Though AIDS activists complained that the reductions, which range from 15 percent to 55 percent, are still not enough, officials said they will help governments reach their goal of providing anti-retroviral therapy to everyone who needs it.

According to the World Health Organization, Latin America and the Caribbean are home to about 465,000 people under age 50 who need anti-retroviral therapy. Nearly two-thirds of them are now being treated, the WHO estimated.

Risk of trade sanctions

Brazil runs the risk of trade sanctions should it break the patents on Kaletra or other drugs. Some members of the U.S. Congress already are preparing retaliatory legislation, a real threat for Brazil's export-fueled economic recovery.

Yet Brazil has won price reductions from multinational companies in part by developing its own technology and capacity. Brazilian and Argentine officials say they must pursue alternatives in case drug shortages arise or the cost of drugs from abroad is deemed too high.

But this week's accord should not be viewed as merely another aspect of their negotiating strategy, Argentine officials said.

"It's downplaying this to say the agreement is only to negotiate prices," said Gabriela Hamilton, director of Argentina's AIDS and HIV program.

She also said the nations would work together on drugs to treat diseases other than AIDS.

Patents infringing patents?

Classen Immunotherapies Inc. alleges that Elan Pharmaceuticals Inc., a unit of Elan Corp. filed patents on the muscle relaxant Skelaxin that included methods involving the disclosure of drug interaction events covered by two of Classen's patents, and that King Pharmaceuticals Inc. later purchased these patents from Elan.

Infringement under 35 USC 271 requires the alleged infringer to make, use, sell, or offer to sell the accused product or process. One can obtain a patent on a method that requires the use of a (separately) patented method. That by itself is not infringement. If one uses the method, then there are issues.

Posner to sit by designation over Pinpoint v. Amazon in ND Ill

Judge Richard A. Posner of the Court of Appeals for the Seventh Circuit will be sitting by designation as the district court judge presiding over the jury trial concerning infringement asserted by Pinpoint against Amazon.com's over claims of Pinpoint's U.S. Patent Nos. 5,758,257 and 6,088,722.

Judge Posner sat by designation in an earlier patent case, SKB v. Apotex. I had written in the May 2003 issue of Intellectual Property Today ("There's Always Something There to Remind You"):

-->In the case SmithKline Beecham v. Apotex, 2003 U.S. Dist. LEXIS 2902, the district court addressed the issue of de minimis infringement and concluded that a composition of matter claim can be read as if it excludes any [measureable] amount so small as to lack any commercial significance. Although this interpretation is helpful to generic companies seeking to design around proprietary drugs, it is not clear that it will stand up to text in Embrex v. Service Engineering, 216 F.3d 1343, 1352-1353; 55 USPQ2d 1161 (Fed. Cir. 2000)[J. Rader concurring: "no room remains in the law for a de minimis excuse," the patent statute gives no leeway to excuse infringement because the infringer only infringed a little and that questions of degree go to damages, not to liability]; Madey v. Duke University, 307 F.3d 1351 as quoted in Semitool v. Ebara, 2002 U.S. Dist. LEXIS 21939 ["Similarly, our precedent does not immunize any conduct that is in keeping with the alleged infringer's legitimate business, regardless of commercial implications."]. Provided that the patent holder did meet the requirements of the patent law, the patent holder is given the right to exclude a competitor from making, using, selling, or offering to sell his claimed invention, without reference to the "amount" of the claimed invention to be used. The concept that there can be a "de minimis" level of infringement will likely be rejected by the Federal Circuit.

(...)

The Glaxo decision has many interesting aspects. The claim at issue simply recites crystalline paroxetine hydrochloride hemihydrate. The words “paroxetine hydrochloride hemihydrate” describe chemical composition. One of ordinary skill knows what paroxetine is, what hydrochloride is, and what hemihydrate means. The word “crystalline” establishes a requirement of a degree of translational periodicity of the chemical entities; in practical terms, it means relatively narrow lines in x-ray diffraction. If this claim is indefinite, there are many, many claims which are indefinite. The opinion repeatedly talks about “single crystals,” although it does not mean “single crystals” as a scientist would understand them (a phase consisting of one crystal manifesting narrow diffraction lines corresponding to long coherence lengths through the Scherrer equation, as distinct from a polycrystalline material having crystallites of different orientations). In the context of the opinion, a single crystal means a single particle of the claimed material. There is much discussing of the “disappearing polymorph” phenomenon, which is more in the realm of anecdotal stories than well-researched evidence. If SARS were as contagious as the alleged seed contamination were pervasive, there would be no one left to read this article. The bigger problem in the case, however, is the adoption of a “de minimis” infringement exception in light of Federal Circuit cases to the contrary.<--

In the end, the Federal Circuit did not adopt Judge Posner's claim construction or the proposed "de minimis" level of infringement. Further, Posner's new defense was not accepted.

The CAFC affirmed Posner's decision on grounds Posner rejected: public use. It is interesting to note here that SKB began US testing in May 1985, just two months after the (British) lab discovery in March 1985. (However, there seemed to be a natural conversion in December 1984.) As a result of the decision, foreign drug companies will need to accelerate the timetable on US filings.

The judges in the case seemed to have an (unjustified) fear that the modification in question bore some similarity to prions and ice-nine. Ironically, the fear was instilled by SKB. [As a separate matter, as discussed in IPL&B, SKB's lawyers never really got on board with the way Judge Posner was running the case.]

For another pair of eyes on the Apotex case, here is text from the Orrick website:

-->In revising the claim construction, the Federal Circuit admonished the district court for its policy-driven narrowing of the unambiguous language of claim 1 of the '723. The Federal Circuit held the claim to be broad enough to cover even a single crystal of the hemihydrate, as SKB had argued. The court went to hold that because the record showed that Apotex's proposed drug would contain trace amounts of the hemihydrate, Apotex's proposed drug would infringe claim one of the '723 patent. More importantly, the record also showed that more than one year before filing the '723 patent SKB had conducted public clinical trials to test the efficacy of the hemihydrate as an antidepressant. It was on this basis that the court held that the claim at issue was invalid as barred by a prior public use under § 102(b).

Rejecting SKB's argument that the clinical trials constituted an experimental use which would negate the application of the public use bar, the court pointed out that "an experimental use only negates a statutory bar when the inventor was testing claimed features of the invention." Thus, because the asserted claim of the '723 patent claims only the hemihydrate regardless of its use as an antidepressant, clinical trials testing the drug's efficacy as an antidepressant were not an experimental use that negated the public use bar. Holding claim 1 of the '723 patent invalid for public use under § 102(b) as a matter of law, the court warned that: "a patentee should understand that testing the properties, uses, and commercial significance of a compound claimed solely in structural terms may start the clock under § 102(b) for filing a claim that is not limited by any property, commercially significant amount, or other use of the compound." SmithKline Beecham Corp. v. Apotex Corp., 2004 WL 868425 (Fed. Cir. (Ill.))<--

In the present matter, Pinpoint is represented by Phil Beck and Peter Bensinger, Jr.

Sony and Ampex settle digital camera dispute

In return for withdrawal of complaints before the ITC and D. Del., Sony will license Ampex-patented technology for making digital videotape recorders and digital still cameras. Sony will pay $40 million for the period through April 2006. After that, royalties will be based on sales. Sony will pay the fees starting with the fourth quarter of its fiscal 2004.

Recall that way back in the 1950's, Sony and Ampex cut a deal over videotape technology. Contrary to reports by Mark Lemley (for example in the University of Chicago Law Review), both parties understood the commercial potential of home videotape recording, but a business decision placed that market with Sony. Neither party failed to foresee the potential.

Parachutes for Merck execs in post-Vioxx period

Merck has adopted a special severance plan for about 230 managers. Note that part of the motivation for a special plan for Merck managers is the loss of patent protection for Zocor in 2006.

-->from Reuters

Merck & Co. Inc. has adopted a severance benefits plan aimed at protecting key managers in the event the company is taken over -- a growing possibility since the withdrawal of arthritis drug Vioxx sent shares tumbling.


(...)
Participants in the plan must sign a release of claims against the company, and a commitment not to solicit company employees for two years following the change in control.


[Barbara] Ryan said the plan, by guaranteeing pay and benefits to senior managers, could discourage them "in the short run" from jumping to rival drugmakers.


But she said morale at the company and the mood of shareholders will continue to be sorely tested because Merck's earnings will likely decline through 2007, in part due to the slated loss of U.S. patent protection in 2006 on its Zocor cholesterol fighter.


Ryan said the two companies most likely to make a bid for Merck, were a bid to emerge, are London-based drugmaker GlaxoSmithKline Plc (GSK.L) and Novartis AG (NOVN.VX) of Switzerland.


She said Glaxo wants to grow into a company closer to the size of New York-based Pfizer, the world's largest drugmaker, and that Glaxo would also bolster its line of heart drugs by acquiring Merck. <--

Sarnoff's iTrace software

On November 29, 2004, the Trenton Times had a feature article on the iTrace technology of Sarnoff Labs, developed with Post Logic Studios.

The technology is a watermark system. The asserted improvement is a watermark that can uniquely mark millions of legitimate copies and make that watermark easily readable, even on bad copies. Jeffrey Lubin is the chief developer of the watermark system.

More on the auction of Commerce One patents

A query for the San Francisco Chronicle in regard to their coverage of the auction of Commerce One's patents. If Commerce One's patents covered the use of Web services utilized by many companies, how come Commerce One went bankrupt?

from the SF Chronicle:

-->On the auction block are 39 patents held by Commerce One, a bankrupt software company in Santa Clara that's shutting down and liquidating its assets. The patents cover technical protocols that underlie popular methods for exchanging business documents over the Internet.

The protocols, also known as Web services, are in wide use. Microsoft, IBM and, presumably, the companies at last week's meeting have incorporated them into their software products and their own business systems, Smith said. Although it may turn out that the patents are too broad to enforce or may be otherwise invalidated if challenged, people are nervous.

"There's a concern that these patents could be used aggressively by a buyer to shake down the whole Web services industry," said Jason Schultz, an attorney at technology activist organization the Electronic Frontier Foundation. Schultz is helping put together and promote the CommerceNet proposal. <--

Korean Trade Commission bans Matsushita PDPs

Further to the LG/Matsushita IP dispute, on November 29, 2004, South Korea imposed a temporary ban on imports of plasma display panels [PDPs] made by Matsushita after LG Electronics complained its rival had violated its intellectual property rights. Matsushita has raised similar complaints about LG in Japan [see earlier posts.]

The Korean Trade Commission’s ban indicates Panasonic will temporarily be prohibited from importing new PDPs, used in flat-screen televisions and computer monitors, and will not be able to sell those it has in stock until a formal ruling is made.

-->The dispute underlines the increasingly strong stance Japanese electronics groups are taking against their Asian competitors over intellectual property rights. Japanese manufacturers have been alarmed about technology leaks and patent infringements by Asian rivals, which they claim are undermining their competitiveness in an industry where digitalisation has lowered the entry barrier to many product sectors.<--

EU demands before WTO about descriptors of origin

The EU has demanded a global trade agreement that protects at least 41 food and drink names (eg, Port, Parmesan, Roquefort, Chianti and Champagne). The US asserts that most of the names have passed into everyday usage (ie, become generic). A confidential interim report was issued by a WTO dispute panel last week (Nov. 2004). The WTO had asked the EU to clarify whether products from outside the EU could be registered in Europe's geographic indicator system.

[Trenton Times, C8 (Nov. 27, 2004)]

Scientific mafias ...

There has been a lot of discussion about utilizing the creativity of academic researchers through the Bayh-Dole Act. Under this law, which goes back to 1980, universities may, subject to certain conditions, take ownership interest in patents obtained through the use of federal funding. In 1980, there was talk of harnessing the innovation of academics to improve a US economy under attack from the outside, and, in the years since, many patents have gone to universities. But is there really a wellspring of innovation to visit?

In an article focussed on cold fusion, there is a quote about mainstream academic science being composed of "mafias," who, far from being innovative, are clanlike in their adherence to orthodoxy and resistance to change.

As a microcosm of this issue, many years ago, there was a certain topical Gordon Conference which, year after year, invited the same people to attend. These same people talked about fundamentally the same research year after year, and this Gordon Conference became like a summer vacation retreat in New Hampshire. No one talked about new ideas, and new people were generally excluded. There were complaints, and this particular group was put on probation. But not that much changed. Orthodoxy and the same-old, same-old were the order of the day.

Separately, posts on a different board complain about the publishing of "me-too" articles on nanotech in the Journal of the American Chemical Society. Each one is a little different, but none really represent any significant advance. One thinks back to the thousands of publications on fullerenes in the 1990's, along with the hundreds of patents, with no real commercial innovation to show for any of the activity. Most of the work was highly derivative in nature, with very little innovation going on. Similarly, the relish with which academic scientists embraced the fraudulent work of Jan-Hendrik Schon is a different indicator of problems in the research community. Rather than step back and think about the issues, there was a lemming-like rush to derivatize Schon's work.

The feeding frenzy over Schon does remind one of the days of cold fusion. However, unlike with the Schon research, resistance to the experiments of Pons and Fleischmann developed rather quickly, and the "cold fusion" work was discredited by the mainstream scientific community. In an article on November 21, Sharon Weinberger presents the flip side to this. Through years of mainstream criticism, certain scientists hung on in "cold fusion" and received in August 2004 a hearing from the Department of Energy. There is only one question before the DOE: Is the work surrounding cold fusion legitimate science? The DOE is expected to give its answer by the end of 2004.

In her article, Weinberger highlights Peter Hagelstein of MIT, who believes the mainstream community has been unreasonably dismissive of cold fusion. Apart from the particulars of what one might believe about cold fusion, there are general themes about rejection of outsiders and maintenance of orthodoxy (recall H. pylori?).


from an article by Sharon Weinberger in the Nov. 21, 2004 issue of the Washington Post, on cold fusion:

-->on scientific mafias

[Peter] Hagelstein describes the
mainstream scientific community as "mafias" that
promote and publish their friends' work, unwilling to
accept new ideas. "From time to time there will be
wild claims that will be wrong," he says. "Let's
accept that, instead of destroying the careers of the
folks who either say such things or work on such
things. This is a normal part of the process, too."

(...)

Just days after the infamous Utah announcement,
Hagelstein presented possible theories for cold
fusion, and MIT applied for patents on his behalf.
Some scientists openly ridiculed his theories. And
cold fusion, despite his support, was attacked the
next month at a Jasons meeting he attended. Hagelstein
remembers Happer, then chairman of the Jasons, telling
him to choose between cold fusion and his membership
in the group. Hagelstein resigned.

--> of the secrecy of the August 2004 DOE meeting on cold fusion

The Department of Energy went to great lengths to
cloak the meeting from public view. No announcement,
no reporters. None of the names of the people
attending that day was disclosed. The DOE made sure to
inform the panel's members that they were to provide
their conclusions individually rather than as a group,
which under a loophole in federal law allowed the
agency to close the meeting to the public.

At 9:30 a.m., six presenters were invited in and
instructed to sit in a row of chairs along the wall.
The group included a prominent MIT physicist, a Navy
researcher and four other scientists from Russia,
Italy and the United States. They had waited a long
time for this opportunity and, one by one, stood up to
speak about a scientific idea they had been pursuing
for more than a decade.

All the secrecy likely had little to do with national
security and more to do with avoiding possible
embarrassment to the agency. To some, the meeting
would seem no less outrageous than if the DOE honchos
had convened for a seance to raise the dead -- and in
a way, they had: Fifteen years ago, the DOE held a
very similar review of the very same idea.

--> McKubre of SRI and Hagelstein of MIT

McKubre and Hagelstein met in 1990 at the first
international cold fusion conference and quickly hit
it off. While hundreds of scientists still plow away
at cold fusion worldwide, the two of them have emerged
as perhaps the most prominent, particularly in the
United States. Hagelstein, an applied physicist at
MIT, works on theory, while McKubre is a practiced
experimentalist.

McKubre's staff is well below its all-time high of 12
people -- today, it's just he and a part-time
assistant -- but the lab is still well equipped. For
years the experiments took place behind bulletproof
glass, the result of a 1992 accident that killed one
of his colleagues. McKubre still has bits of glass
embedded in his side from the cold fusion experiment
that exploded that day in his lab (the blast had
nothing to do with fusion; hydrogen mixed with oxygen,
creating the equivalent of rocket fuel).

--> on publications

Since 1989, hundreds of scientists working in dozens
of labs around the world have claimed similar results.
Supporters point to the written literature -- more
than 3,000 papers -- as proof of the effect. But the
most credible cold fusion advocates concede that the
vast majority of those papers are of poor quality; one
supporter called the collection "mixed toxic waste."

And even the best research is plagued by cold fusion's
most nagging problem: a long history of failing to
reproduce experimental results. McKubre is one of the
more respected people in the field, and in more than
50,000 hours of experiments, he says, he has recorded
50 times when the setup "unmistakably" produced excess
heat. That is a far cry from the scientific standard
for reproducibility. Erratic results such as those,
coupled with the theoretical unlikelihood of the whole
idea, long ago drove most mainstream scientists to
dismiss cold fusion; they say that any indication of
heat or nuclear byproducts is the result of an error
in the experiment. Now few of them take the trouble to
review the new results or attend the annual cold
fusion conferences.

[Note: the last time I looked, there were over 7,000 scientific publications on buckminsterfullerene and fullerenes.]

--> on patents

Research money has dried up. The U.S. Patent and
Trademark Office has refused to grant a patent on any
invention claiming cold fusion. According to Esther
Kepplinger, the deputy commissioner of patents, this
is for the same reason it wouldn't give one for a
perpetual motion machine: It doesn't work.

These problems, Hagelstein and McKubre argue, are all
tied to the 1989 DOE review. While the report's
language was measured, pointing out the lack of
experimental evidence, "it was absolutely the
intention of most of the framers of that document to
kill cold fusion," McKubre says.

[Don't forget the patent issued to BlackLight concerning the hydrino]

--> Other workers

Edmund Storms, a former scientist at the renowned Los Alamos
National Laboratory, has set up a cold fusion lab next
to his home in Santa Fe, N.M. John Dash, a physicist
at Portland State University in Oregon, conducts cold
fusion research, but among his academic colleagues, he
says, "I'm an outcast, a pariah."

[There still is an annual meeting of workers in cold fusion.]

--> Early criticism

As Hagelstein explains it, leading physicists came out
swiftly and prematurely against cold fusion. A
prominent physicist at Caltech said Pons and
Fleischmann were "suffering from delusions." William
Happer, a Princeton professor, called them
"incompetent boobs."

[Where were these folks when the papers of Jan-Hendrik Schon were being published?]

***Separately, merely for contemplation, from 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.

In an attempt to promote proper discussion of the issue, I tried in 2002 to upload a survey by Storms (7) to, the preprint server arxiv.org, the natural place for facilitating such discussion, but the moderators frustrated this intent by deleting the review, declaring it "inappropriate" (chemists, being a more robust species than physicists, were permitted to see it on their own server chemweb.com). A breath of fresh air has been introduced into the situation now, with the recent decision of the US Department of Energy to review the research (8); if the reviewers simply look at some of the research going on they will almost inevitably conclude that fusion can take place at ordinary temperatures, with a yield far in excess of the 'almost undetectable level' referred to in Langmuir's lecture.

The overall situation seems profoundly unsatisfactory. The system built up over the years to promote scientific advance has become one that narrow-minded people can use to block any advance that they deem unacceptable. This demands urgent review: otherwise, just as astronomy became fixated on the reasonably accurate, but wrong, Ptolemaic model, science will become fixated in a respectable, but inaccurate, view of reality.

The scope of surrender in Festo

In the November 2004 issue of Intellectual Property Today, Grant Langton et al. of Jeffer Mangels suggest that "a claim that is cleanly allowed without being amended may ultimately capture a greater lanscape of products (through its scope of equivalents)..."

The Langton article did not cite to the Hamilton Sunstrand case, wherein a cleanly allowed dependent claim was infected by surrender in the independent claim. It may be that the "clean allowance" of a claim is not the principal issue. Rather, if there is any claim with broader scope as to a claim element which is narrowed through amendment or abandoned, that action of surrender can infect other claims reciting that element and affect the equivalents for that element.

Whether the use of many independent claims solves the Festo problem remains to be seen.

Separately, from a board:

-->As for Festo, abandoning an application with broad claims to file a second application with the same specification and narrower claims has the same effect as cancelling broad claims and entering narrower claims without comment through a preliminary amendment. <--

The "without comment" merits discussion. In the past, the mantra has been --the less said, the better.-- Now, with a presumption of surrender, there is some merit in explaining why one narrows a claim. In the Festo case itself, Festo might have been able to make a "tangential" argument if the reason for the change had been more clear. On the facts as they were, Festo had no opportunity for the tangential argument, which ultimately may become the best way to rebut the presumption of surrender (note Insituform, Cordis, and see my article in the December 2004 issue of Intellectual Property Today.)

Of foreseeability, the patentee has to walk a tightrope in showing no foreseeable interchangeability at the time of amendment, but interchangeability at the time of infringement.

Extreme discussion of patent reform

In a discussion of the book by Lerner and Jaffe, Newswise stated the following:

-->Newswise — The U.S. Patent and Trademark Office (PTO) is bogged down with tens of thousands of patent applications, most of them for totally worthless inventions. The PTO grants thousands of patents every year, many of them for completely absurd "inventions" such as a crustless peanut-butter-and-jelly sandwich, a watch for dogs that runs seven times faster than a conventional watch, and a kit for a snowman complete with a lump of coal and a carrot, to name just a few.<--

The position of the book is summarized:

-->To inject some sanity back into the patent process, Jaffe and Lerner propose that, first, legislators create incentives and opportunities for parties to challenge the novelty of an invention before the U.S. Patent and Trademark Office grants a patent. Second, that the PTO provide multiple levels of application review, with examiners devoting successively more time and effort as an application proceeds to higher levels, a way to avoid wasting money on unimportant patents, while taking sufficient care to avoid mistakes where the stakes are high. Finally, in cases involving claims of patent invalidity based on the existence of prior art, replace juries with judges who could call on experts for guidance. The change would give parties threatened by invalid patents a better opportunity to make their case.<--

Of --tens of thousands of patent applications, most of them for totally worthless inventions--, the PTO gets more than one hundred thousand applications yearly. Whether they are for totally worthless inventions is not clear. They have enough perceived value that someone is paying the application fees.

The first point of reform seems related to various proposals for a European-style opposition proceeding to be created in the US. Of the third point, one recalls the judge in the district court of Arizona in the Osram case who set back chemical science over 100 years by doing stoichiometric calculations using atomic number instead of atomic weight. Whether this amounts to a "correction" of the PTO by the court is open to question.

Nanotech coating for clothing from Clemson

Another Bayh-Dole innovation is a nanotech coating for clothing developing at Clemson University.

An AP release on November 26, 2004 describes the coating as a polymer mixed with silver nanoparticles which is infused into the fabric.

An interesting statement is imputed to Philip Brown of Clemson:

--> He [Brown] siad the film won't make clothing look glossy because the particles [of silver] are too tiny to be seen and, theoretically, have no color because they are smaller than the wavelength of light. <--

While particle size has an influence on the reflectivity of light (see Lord Rayleigh), absorption of light works well no matter what the particle size. Thus, (molecular) chlorine gas has a color as do many molecules dissolved in solvents.

Here, silver particles smaller than the wavelength of visible light are not transparent because they are smaller than the wavelength of visible light.

Upcoming patent wars over 3G cell phones?

In the past, there has not been much direct conflict between Texas Instruments Inc. and Qualcomm Inc. over cell phones by virtue of their focussing on different mobile technologies: in TI's case, the GSM standard used by 80 percent of mobile subscribers; for Qualcomm, the CDMA system used in parts of the United States and Asia.

In the future, with the advent of new standards for third-generation mobiles, the companies may compete on one another's turf.

from Reuters:

-->San Diego-based Qualcomm, as well as making chips for the 3G standard that will succeed CDMA, is tasting early success with its semiconductors for the GSM successor.

TI, likewise, is offering chips for both of the new technologies that will turn mobile phones into broadband Internet-enabled devices.

But Qualcomm has an advantage in that both 3G standards are based on its patented CDMA technology, as their names attest: the GSM successor is called WCDMA, while the plain CDMA networks are upgrading to CDMA 2000.

"Next year is going to be a brand new game," said Warren Lau, a semiconductor analyst at Macquarie Securities. "Qualcomm seems to be doing pretty well in Europe with their WCDMA chipsets. But I'm not sure if they can repeat their success in Asia." <--

WTO authorizes sanctions against US concerning Byrd Amendment on dumping

On November 26, 2004, the WTO authorized stiff sanctions against the US concerning the Byrd Amendment, which US law allows American companies to receive proceeds from duties levied on foreign rivals for alleged "dumping" —selling goods at below-market prices, making it difficult for American producers to compete against their foreign competitors.


The WTO agreed with assertions that the Byrd Amendment breaks trade laws by punishing exporters to the United States twice: first the foreign competitors are fined in the form of the duties, and second, that money is passed on to their U.S. counterparts.

The value of the sanctions has yet to be determined, but trade officials have said they could amount to more than $150 million a year — a tiny sum in comparison with the $2 billion in sanctions the EU threatened in its successful bid to force the United States to lift illegal tariffs on foreign steel last year.


In August 2004, a WTO arbitrator approved penalties of up to 72 percent of the money collected from foreign exporters and handed to American companies and said the winners in the case should submit lists of potential targets. Under WTO rules, however, formal authorization must come from the dispute settlement body.

US patent applications with thousands of claims

I saw a post on an IP board asserting that only 1 in 10,000,000 US applications is longer than 430 pages (ie, basically there are no such "long" applications.)

The asssertion was based on the following reasoning.

-->Among 100 applications published on November 11, 2004, the longest was 68 pages, the shortest was 2 pages. The mean length was 12.9 pages, standard deviation 10.4. To estimate the frequency of very long patent applications, i.e. "thousands of pages" or at least 2000 pages long, I used a log-normal distribution.* Based on this model: 10% of the app's are more than 23 pages long; 1% of the app's are more than 51 pages long; only 1 in 1000 is more than 89 pages long; and only 1 in 10,000,000 applications is longer than 430 pages. In other words, it is unlikely that the USPTO ever received a patent application was thousands of pages long.<--

Although such items are not typical, they do exist. Because we are talking about what happened in the past, all we have to do is look. Extrapolating from the results of part of one day to infer --In other words, it is unlikely that the USPTO ever received a patent application was thousands of pages long.-- is risky business, and, in this case, wrong.

In the context of patent reform, then PTO Director Rogan told a House panel that an oil company had submitted a patent application to the USPTO that contained 5,100 claims. I don't know which one he meant. However, US App 20030196788 [titled "Producing hydrocarbons and non-hydrocarbon containing materials when treating a hydrocarbon containing formation," first inventor Vinegar, Harold J.; Shell Oil] has 8,958 claims. Separately, it contains at least 1,884 numbered paragraphs; number 1884 recites:

FIG. 193 illustrates a comparison plot between the average pattern temperature curve and temperatures at the coldest spots for each pattern, as a function of time when heaters are turned off after the average temperature reaches a target value. As shown in FIG. 193, average temperature curve 1882 of the formation reaches a target temperature (about 340.degree. C.) in approximately 3

[at this point, my text from the PTO database ends]

Additionally, US App. 20020093648 (Methods and systems for determining an implant characterstic and a presence of defects on a specimen; first inventor Nikoonahad, Mehrdad) has 6,632 claims. There are 175 independent claims and 6457 dependent claims. Apart from the claims, it has 580 numbered paragraphs, the last of which recites:

Further modifications and alternative embodiments of various aspects of the invention may be apparent to those skilled in the art in view of this description. For example, the system may also include a stage configured to tilt in a number of angles and directions with respect to a measurement device. Accordingly, this description is to be construed as illustrative only and is for the purpose of teaching those skilled in the art the general manner of carrying out the invention. It is to be understood that the forms of the invention shown and described herein are to be taken as the presently preferred embodiments. Elements and materials may be substituted for those illustrated and described herein, parts and processes may be reversed, and certain features of the invention may be utilized independently, all as would be apparent to one skilled in the art after having the benefit of this description of the invention. Changes may be made in the elements described herein without departing from the spirit and scope of the invention as described in the following claims.

In terms of applications filed after November 11, 2004, we have
US appl no 20040235205 (titled: Methods and systems for determining a critical dimension and overlay of a specimen, assigned to KLA-Tencor, drafted by Conley Rose, P.C., published November 25, 2004) which has 6,632 claims and 580 numbered paragraphs.

Another litigation/reexamination combination

In the Eolas/Microsoft browser matter, the director-ordered re-exam came after the litigation. In the CNS/Silver Eagle matter we have a different permutation.

-->CNS Inc., maker of Breathe Right nasal strips, reported Nov. 24, 2004 that the USPTO will re-examine two of its nasal strip patents at issue in a lawsuit. This re-examination comes at the request of Silver Eagle Labs Inc., a company named as a defendant in a patent suit filed by CNS. <--

Happy Thanksgiving to patent lawyers...

A USAToday article by Kevin Maney begins:

Though it's not a usual part of the Thanksgiving tradition, this year you might pause to give deep and gracious thanks to lawyers.

The text includes references to US 6,460,020 of Pool/DE, to Allen Kaplan, and to American Video Graphics.

The article includes the text:

-->Is there anything wrong with these broad patent lawsuits?

"Many people intuitively suspect that many such patents are not, in fact, valid, enforceable and infringed," says tech lawyer Daniel McMullen of Calfee Halter & Griswold in Cleveland.

"In many instances, (the big companies being sued) have never heard of (the plaintiffs) before receiving some form of demand — and therefore perceive such offers to grant a license as thinly veiled extortion."<--

Oil shale: history repeating?

-->The U.S. government said on November 23, 2004 it was ready to resurrect oil shale drilling in the Rocky Mountains, a technology heralded 30 years ago to boost America's energy output until it failed financially. <--


As I learned in "mining law" from Professor Helmholtz at Chicago, the time period of the 1970s was not the first time oil shale in the US was big. Legal cases involving The Oil Shale Company (aka TOSCO) go back to the 1920s.

Also, apart from the financial issue, there are some aspects involved with the high arsenic levels.

As has been said, synfuel is the fuel of the future and always will be.

Google scholar

A search of selected academic literature is available at
http://scholar.google.com.

It won't be mistaken for Dialog, but it's free.

To illustrate some of the problems, I searched on myself, as L.B. Ebert.

The first three hits were denoted [citation], meaning that the pertinent article was identified only because it was cited, not because the database had the article.

Then, there was the hit

Experimental Band Structure and Temperature-Dependent Magnetic Exchange Splitting of Nickel Using …
DE Eastman, FJ Himpsel, JA Knapp - Cited by 96
Using angle-resolved photoemission and synchrotron radiation, we have determined
the energy-versus-momentum valence-band dispersion relations for a Ni(111) ...
Physical Review Letters, 1978 - link.aps.org - adsabs.harvard.edu

which was totally irrelevant.

Similarly irrelevant was

Nature of the Bond in Hydrogen Chemisorption on Ni, Pd, and Pt
JP Muscat, DM Newns - Cited by 5
We describe a model of H chemisorption on Ni, Pd, and Pt in which both extended
sp bands and the more localized d bands are appropriately incorporated. It ...
Physical Review Letters, 1979 - link.aps.org - adsabs.harvard.edu

Google scholar appears to need work. It is flawed.

The Dec. 1, 2004 issue of JAMA

The December 1, 2004 issue of the Journal of the American Medical Association [JAMA] six articles related to drug safety.

Dr. Steven Galson, acting director of the FDA's Center for Drug Evaluation and Research stated that the agency earlier this month asked the Institute of Medicine to study the effectiveness of the nation's drug safety system.

There has been some discussion of risks associated with taking statins (eg, Lipitor, Pravachol, Zocor) AND fibrates (used to lower the level of triglycerides).

Ranbaxy challenges Pfizer's Lipitor in D. Del.

Ranbaxy Laboratories Ltd. has filed an ANDA concerning two patents that Pfizer says protect Lipitor through 2009 and 2011. Trial will begin November 30, 2004 in D. Delaware.

UPDATE:

Pfizer spokesman Paul Fitzhenry said Pfizer believes that Ranbaxy is infringing on two patents, which will expire in 2009 and 2011, respectively. “Ranbaxy is seeking to sell a generic form of Lipitor and it claims its products will not infringe on our basic patent and that the other patent is invalid,” he said.

More patent litigation in Japan?

-->In late 2002, the Japanese Parliament passed a law that has cut the time it takes to try a patent-infringement case to around a year, down from two to three years. And in April, 2003, a bill was passed enabling companies to block the import of products they allege infringe patents if court hearings are pending -- the law Matsushita just invoked against LG of South Korea.

Critics of the legal deluge charge that Japan is just trying to erect protectionist import barriers. And the litigation isn't without risks. LG, for instance, has filed its own suit against Matsushita in Korea that seeks to cut off imports of its Panasonic products. And Hynix is threatening "aggressive countermeasures."

The Matsushita court action came just two days after Toshiba Corp. filed suit in Japan and the U.S. against South Korea's Hynix Semiconductor Inc., charging patent violations in the manufacture of so-called NAND flash-memory chips that Hynix began selling in February. Toshiba is seeking a ban on imports of Hynix chips into Japan and money damages in the U.S. The company has a lot to protect. With 37% of the global market, Toshiba ranks second only to Samsung in flash memory and holds more than 1,000 NAND-related patents. The chips are used in digital cameras, MP3 players, and other equipment. "We are prepared to take action against any infringement of our patents," says Shozo Saito, a vice-president in Toshiba's semiconductor division. Hynix vigorously denies any wrongdoing.<--

Memo of understanding from 22nd Annual Trilateral Conference

from USPTO press release:

Heads of the Department of Commerce’s United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO) signed on Nov. 19, 2004 a Memorandum of Understanding (MOU) to coordinate work sharing, electronic business developments to support work sharing, and harmonization or standardization of search strategies, tools and substantive patent law. The 22nd Annual Trilateral Conference held this week at the USPTO in Alexandria, Virginia continues the cooperative effort that began in 1983 among the three Offices, known as the Trilateral Offices.

Patenting the "is not" operator

An article in eWeek criticized a Microsoft patent application which is entitled the --IS NOT OPERATOR-- [US appl no 20040230959, to Vick, Barsan and Silver; drafted by WOODCOCK WASHBURN LLP]. The first claim recites:

A system for determining if two operands point to different locations in memory, the system comprising: a compiler for receiving source code and generating executable code from the source code, the source code comprising an expression comprising an operator associated with a first operand and a second operand, the expression evaluating to true when the first operand and the second operand point to different memory locations.

Claim 15 recites:

A method for producing executable code for performing an object non-equivalence comparison comprising: receiving source code comprising at least one statement comprising a keyword representing a logical operator, a first operand preceding the keyword and a second operand following the keyword; and generating from the source code, executable code for evaluating the statement to true if the first operand and the second operand point to different locations in memory and to false if the first operand and the second operand point to the same locations in memory.

Claim 21 recites:

A computer-readable medium comprising computer-executable instructions for: receiving source code comprising at least one statement comprising a keyword representing a logical operator, and a first operand and a second operand; and generating from the source code, executable code for the at least one statement, the executable code evaluating to true when the first operand points to a first location in memory and the second operand points to a second location in memory that is different from the first location in memory, the at least one statement evaluating to false when the first operand and the second operand point to the same location in memory.

The patent application is directed in part to BASIC. BASIC, (Beginner's All Purpose Symbolic Instruction Code), was designed to be an easy-to-learn programming language that makes programming easier by providing an intuitive, English-like syntax in which to code. One of the ways in which BASIC eases programming tasks is by not requiring the use of pointer arithmetic. When a BASIC program is executing, a memory buffer 250 (typically a heap) is created in RAM (random access memory) to store application data. When a new object is created, space for the object is allocated on the heap.

Of the application, Peter Coffee wrote:

-->It sounded like the worst sort of sophomoric parody, worthy of the most rabidly anti-Microsoft blog, but it turned out to be the literal truth. A team of three inventors, two of whom are publicly identified as "members of the Visual Basic team," has applied (in a filing published late last week) for a U.S. patent on "A system for determining if two operands point to different locations in memory"—in short words, on the IsNot operator in "BASIC-derived" programming languages.


The fundamental idea, of course, is the same as that of the eq predicate in Lisp, which determines whether two symbolic expressions evaluate to the same actual object rather than merely to objects with identical values, or the similarly semanticized == operator in Prolog. Oh, excuse me, I guess the patentable novelty is in having a single inequality operator that is the logical complement of Lisp's eq or Prolog's ==. Prolog, though, already had \==—and for that matter, C already had the != operator whose allowable operands include pairs of pointers.


This seems like an obvious setup for a dumb joke with a nursery-rhyme punch line, perhaps "Peter promptly proffered pounds of programmers' prior practice," except that I'm not making up this stuff.


As often is the case with legal documents, what's perhaps most interesting is not the self-evident silliness of the top-line claims, but rather the invidious implications of the footnotes. Some developers, for example, might dismiss this episode as irrelevant to their interests due to the putative focus on "BASIC-derived languages." Perhaps their threat assessment will change when they realize that Paragraph 42 of the Description section of the patent application lists Borland's Pascal-based Delphi among the so-called "BASIC-like or BASIC-derivative" <--

Peter had a jump for the "visual Basic [VB] team." At the other end was the following:

VB Team in India

The VB Team is coming to India next week! Alan Griver (http://blogs.msdn.com/vsdata) and I will be visiting five cities for the final leg of the 2004 VB World Tour. It will be great to see India and meet up with VB developers over there.

We'll be in:

Bangalore: 11/30 and 12/1
Mumbai: 12/1 and 12/2
Chennai: 12/3 through 12/6
Hyderabad: 12/7 and 12/8
Delhi: 12/9 and 12/10

Line extensions the wave of pharma's future?

Text by Cutting Edge asserts --71% of these same companies expect line extensions to be their predominant defense strategy over the next three years.--

In the case cited by Cutting Edge of Prilosec/Nexium, Astrazeneca BOTH litigated against the generics over Prilosec AND launched a line extension of sorts (they obtained a patent on the active ingredient in Nexium, which is an enantiomer of the racemate in Prilosec). This particular type of "line extension" will not be available for all drug companies. In fact, with key patents running out on many drugs in the next few years, "line extension" may be an imposed strategy, rather than a strategy of choice.

from PRnewsire:

Although patent litigation remains the most commonly used generic defense strategy among pharmaceutical companies -- 71% of drug companies have used legal battles to defend their patents in the past three years -- many feel that line extensions offer the greatest strategic opportunity for the future, according to research from pharmaceutical business intelligence firm Cutting Edge Information.

Aside from litigation, line extensions are the most common, and potentially most lucrative, strategy pharmaceutical companies pursue. Cutting Edge Information's study, "Combating Generics: Pharmaceutical Brand Defense," available at http://www.PharmaGenerics.com , reveals that 57% of surveyed companies have begun researching line extensions for products close to expiration. 71% of these same companies expect line extensions to be their predominant defense strategy over the next three years. When implemented correctly, line extensions can salvage much of the revenue stream exposed to generic competition. AstraZeneca, for example, successfully shifted 40% of its Prilosec users to Nexium prior to Prilosec's patent expiration.

"Ethical pharmaceutical firms are looking for any way possible to lengthen revenue streams for their products," says Jon Hess, senior analyst at Cutting Edge Information. "After all, drug-makers spend an average of 12 years turning a patented compound into a marketable drug and a few more producing and marketing it. In reality, innovative drugs have just five to seven years to earn returns before the core compound's patent expires."

Missing patents?

A recent law review article by legal academics speaks of missing patents. These are patents which are issued, but are not licensed or litigated or otherwise used to make money.

The ability to be commercially successful is not one of the criteria analyzed by the Patent Office in granting a patent application. Whether or not a patent makes money is irrelevant to the patent bargain, which is (full disclosure) in return for (limited period to exclude others).

Issued patents are publicly available. They are not missing.

Patent agent Matthew Powell gives a nice, short description of the patent process.

-->from Matthew Powell

Patents can be thought of as a bargain between the patent owner and the public. That is, in return for a full disclosure of how to make and use a new, useful and unobvious invention, the patent owner receives the exclusive right to prevent others from practicing the invention.

The two-part form of the patent document reflects this bargain--a description and drawings fully describing the invention supports a claim or claims defining the exclusive right held by the patentee.

Lewontin on coerced co-authorship

Think about the co-authors of Jan-Hendrik Schon.

Richard Lewontin in Nov. 18 NYRB:

Despite the sophistication of Judson's analysis he has missed a pervasive dishonesty in the practice of science that makes a certain level of intellectual corruption characteristic of the institution. The dishonesty consists in the way credit for scientific research is falsely ascribed to some of the authors of jointly signed scientific papers. He brushes by this practice by referring to "gift authorship," but, far from a willing gift, it is an exaction that the powerful impose on the weak. Science is carried out for the most part in a collection of cottage industries, work groups called "laboratories," but that is a synecdoche. The group is headed by a senior scientist, sometimes accompanied by a more junior but established colleague, and includes postdoctoral fellows, research associates, graduate students, visiting scientists, and technical assistants all working in offices and laboratory rooms clustered around the laboratory director's own space.

It is almost always the case that the laboratory director performs no actual experimental work. There is considerable variation from laboratory to laboratory and from project to project within the laboratory in the degree to which the senior scientist participates in the conception, planning, supervision, and eventual writing-up of the work. In many cases the entire project from conception to publication is without any significant input from the director. Much of what is done, however, is supported by funds from various grants and contracts obtained by the director as the euphemistically named "principal investigator."

Regardless of the actual involvement of the laboratory director in the intellectual and physical work of a research project, he or she has unchallenged intellectual property rights in the project, much as a lord had unchallenged property rights in the product of serfs or peasants occupying dependent lands. The chief product of a laboratory is in the form of published papers and the chief manifestation of the director's intellectual property rights is that he or she will be coauthor on every publication from the laboratory, sometimes including even general review papers and book chapters written by subordinate group members. Such property rights explain how, for example, Professor Eugene Braunwald of the Harvard Medical School came to be an author, at the age of fifty, of over six hundred publications.

Unfortunately for Braunwald, one of his protégés and coauthors, John Darsee, turned out to be a detected fabricator. One wonders how many sleepless nights Braunwald spent worrying about those other publications. But if laboratory directors as a matter of course claim authorship of work to which they have made no intellectual contribution or only a trivial one then they are, year in and year out, committing an intellectual fraud from which they reap immense rewards of ego, prestige, income, and social power. Moreover, by an unconscious affirmation on the part of the scientific community as a whole, these rewards grow autocatalytic. Robert Merton, the founder of modern social studies of science, called attention to a phenomenon he named the "Matthew Effect" after Matthew 25:29:

For unto every one that hath shall be given, and he shall have abundance; but from him that hath not shall be taken away even that which he hath.
Irrespective of the order of authors on a paper, it is referred to informally and sometimes formally by the name of the best-known author. In laboratory libraries papers are filed under the name of the "senior" author and remembered and discussed under his or her name. I was an indignant witness to an extreme case of the Matthew Effect. A graduate student in my laboratory had published a seminal paper, without my name on it, on an enzyme called alcohol dehydrogenase that everyone agrees has revolutionized the experimental study of population genetics. Shortly afterward I gave a lecture on a different subject, at the end of which a colleague came up from the audience and said, "That was very interesting but what I really admire is your paper on alcohol dehydrogenase." There is some justice in the world, however, and the misappropriation of intellectual property occasionally means that one may try to pass a bad check. The Matthew Effect then does its work. The fraud attributed to Imanishi-Kari becomes known as the "Baltimore Affair." To them that hath it shall be given.

Scientists in training are conscious of the appropriation of credit for their work by senior scientists and they resent it but feel that they cannot protest. It is not that they place no value on the details of authorship. They will fight bitterly with colleagues of their own rank about who should be first author on jointly authored publications. Yet when they too become seniors they will engage in the same fabrications of intellectual credit. The fabrications and falsifications of scientific results that we condemn as fraud are carried out from the desire for fame, status, and economic reward. But the misappropriation of credit by senior scientists arises from the same motives. How can we expect scientists to hold literal truth about nature as an inviolable standard, when they participate, en masse, in a conscious everyday falsification about the production of that truth? That is an aspect of what Judson calls "the culture of fraud" that is far more relevant to scientific honesty than the behavior of the executives of Enron on whom most scientists claim to look with disdain.

IVAX to challenge Forest's LEXAPRO

Generic drug makers including Miami-based Ivax Corp. have filed ANDAs on Lexapro, which is an altered version of Forest's older drug Celexa. Both drugs are licensed from Danish company Lundbeck A/S.

Beating on the swing patent

Nicholas Gruen picks on the swing patent (6,368,227, since invalidated) and the toast patent (6,080,436), as well as the video screen patent (5,576,951).

On magnetoresistive random access memory (MRAM)

Jeff Young of Motley Fool has an interesting piece on the Magnetoresistive Random Access Memory (MRAM) of NVE.

It concludes:

This is the model of how a former penny stock like NVE becomes a darling of speculators. Take allegedly important patents and big name licensees who may never use the technology or produce a marketable product. Add a promotional CEO and mix in a self-styled "visionary" with a wide readership of speculators.

But dubious penny stocks have a habit of returning from whence they came. The truth is that everyone best positioned to understand NVE's technology and future business prospects -- Motorola or Cypress or even Baker -- has cashed out already. Investors who get caught in this trap have simply ignored the evidence before them.

Young also writes:

NVE has also enjoyed the sponsorship of a number of stock promoters, including most prominently the Forbes/Josh Wolfe nanotech newsletter, which first mentioned the stock in June 2003. Wolfe subsequently anointed it a "Nanosphere" play and the stock took off. Wolfe has shown panache as a self-promoter. Before he had made a single nanotech investment, he modestly heralded himself as one of the "true business visionaries of the nanotechnology sector."

Although Young does not mention specific patents of NVE, he states:

The highlight of what NVE calls its "watershed" MRAM patents is something known as a "one-transistor-per-bit read addressing scheme." This invention relates to the electrical circuitry supporting a memory cell, but has nothing specific to do with MRAM. Further, the claim is based on so much prior art that it's meaningless and unenforceable. The DRAM in your PC has relied on this approach for decades. Motorola did license technology from NVE in 1995, but this was before NVE even had these patents. Motorola pays NVE no fees today and has no reason to pay NVE royalties in the future. Meanwhile, Cypress Semi appears no closer than it has been to producing a commercially viable MRAM-based product. No other company with a major MRAM development program has licensed NVE's patents.

[Young notes that MRAM relies on magnetic tunnel junctions (MTJ). Separately, in conventional flash memory (not SRAM but EEPROM), there are two transistors which are separated from each other by a thin oxide layer. One of the transistors is known as a floating gate, and the other one is the control gate. The floating gate's only link to the row, or wordline, is through the control gate. As long as this link is in place, the cell has a value of 1. To change the value to a 0 one uses a process called Fowler-Nordheim tunneling, which alters the placement of electrons in the floating gate.]

Inverness prevails against Acon over US 6,485,982

Inverness announced on November 22, 2004 that it had prevailed in a jury verdict against Acon concerning US 6,485,982 (Charlton) in D. Mass.

Inverness expects the court to issue an injunction against Acon.

Ron Zwanziger, CEO of Inverness Medical Innovations, stated: We are extremely pleased that the jury decided in our favor in this case, and that they agreed with our contention that the patent is clearly valid. We feel very positive about the impact this decision will have on the growth of our business, and are particularly proud that the jury affirmed our longstanding belief in the strength of our patent position. We fully intend to apply the result in this case in our prosecution of other infringement actions.

Continued discussion in European Union about "what is an invention"

As of November 22, 2004, members of the European Union [EU] have delayed voting on a proposed law that would define which technological innovations are patentable inventions, after Poland said it was considering withdrawing its support.

The proposed definition was endorsed by government leaders this month as an important legislative priority for the sluggish European economy to make it more competitive with the American economy. But an agreement reached in May 2004 by the European Union's 25 members now appears to be unwinding because of Poland's possible switch.

At issue is whether the proposed modification could open the door to patents on software - something many people in the debate believe would harm innovation.

The definition of what constitutes a patentable invention is related to recent remarks made by Ballmer of Microsoft about the WTO.

Update from eWeek:

On Thursday [Thanksgiving is not a holiday in Europe] or Friday, the Competitiveness Council is expected to decide whether to formally back-draft legislation on "the Patentability of Computer-Implemented Inventions," which received the tentative approval of the EU Council in May. In the long EU legislative process, this would amount to a significant step forward for the controversial proposal, which many argue would open the floodgates to software patents if approved in its current form.

In a statement published on Tuesday [Nov. 22, 2004], Torvalds, the inventor of the Linux operating system kernel, along with Michael Widenius, one of the creators of the MySQL database, and Rasmus Lerdorf, creator of the PHP scripting language, urged the EU Council to prevent the proposal's adoption. "In the interest of Europe, such a deceptive, dangerous and democratically illegitimate proposal must not become the Common Position of the member states," they wrote.

"The draft directive in question is deceptive because it leads laymen, and even those legal professionals who are not familiar with the intricacies of patent law, to falsely believe that it would exclude software from patentability," the statement read. In fact, the proposal would legitimize the practice of patenting software and business practices, which has already crept into European Patent Office practice, they argued, reiterating the position of most of the proposal's critics. The proposal's backers deny that it would allow software patents.

At stake is whether software patents will be officially allowed and enforceable in Europe, as is already the case in the United States. Many companies, including American IT giants such as Cisco Systems Inc., oppose software patents on the grounds that they stifle innovation and shut out smaller competitors, requiring companies to build up huge patent portfolios in order to defend themselves from legal attacks.



"Software patents are dangerous to the economy at large, and particularly to the European economy," Torvalds, Widenius and Lerdorf stated. "Lawmakers should heed the warnings of such reputable organizations as Deutsche Bank Research, the Kiel Institute for World Economics, and PricewaterhouseCoopers. A software patent regime would establish the law of the strong, and ultimately create more injustice than justice."

UPDATE on Nov. 30
from http://www.theinquirer.net/?article=19964

-->John Collins, a partner at UK firm Marks and Clerk said: "Torvalds and his supporters lack a fundamental understanding of intellectual property rights as they seem to be unaware that copyright can only protect software code and not software".

“Linus Torvalds (creator of Linux) has recently made a statement claiming that the Directive would broaden the area in which patents would be granted. This is simply a false assumption. The original proposal was solely designed to clarify and unify existing practice in the EU. However the current version – as a result of amendments made by the European Parliament – will result in patent holders in certain areas losing a significant element of protection meaning that some existing patents will become worthless.”<--

The Oddzon precedent soon to be removed by statute?

The decision in OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 43 USPQ2d 1642 (CAFC 1997) has generated much discussion. [for example, L.B. Ebert, Written Description: Circumscribing Possession to Prevent Overreaching, Intellectual Property Today (October 2000).]

It now appears the controversial holding of the case may be reversed by statute.


from the Washington Post:

In its Oddzon decision, the Court of Appeals for the Federal Circuit found that the inventor of the Vortex ball, a patent for which was held by OddzOn Products Inc., derived the invention with the help of research collaborators who shared confidential designs among each other.

In a challenge from a rival toymaker, the court found that the information shared by the inventors could be considered evidence that the invention was not original, and thus the patent could be revoked.

Essentially, the ruling meant that sharing of information among researchers, even confidentially, could lead to challenges to the validity of patents by parties who had nothing to do with the original patent.

"It was the sword of Damocles hanging over the heads of universities that engage more and more with other universities and companies," said Andrew Cohn, spokesman for the Wisconsin Alumni Research Foundation [WARF], which coordinates patents for University of Wisconsin at Madison.

The bill, which had broad, bipartisan support, changed U.S. patent law to eliminate the threat of such challenges. [The bill remains to be signed by President Bush.]

"Today's biotech, pharmaceutical, and nanotechnology companies are among the foremost users of collaborative research strategies," Rep. Lamar S. Smith (R-Tex.), the bill's chief sponsor in the House, said in a statement.

UPDATE:

The President signed the Cooperative Research and Technology Enhancement (CREATE) Act of 2004 into law on December 10, 2004. The Act extends the safe harbor provision of 35 U.S.C. 103(c) that shields patent claims from certain types of secret prior art. Under the new law, secret prior art of another is excluded as long as the claimed invention was made under a joint research agreement and the application discloses the names of the parties to the agreement.

California's proposition 71 on stem cell research

from stanford.edu:

Irving Weissman, director of Stanford’s new Institute for Cancer/Stem Cell Biology and Medicine, already is looking for Prop. 71 money to fund the institute’s facility, now slated to be one floor in a planned four-floor medical school building. That space will house eight institute faculty and 20 to 30 additional collaborators. The mere existence of the new funds will make it easier to lure scientists to the institute. “When I go to recruit people who are devoting their lives to this research, they’re having trouble funding their work,” Weissman remarked. “If I said to them, ‘In California you can apply for grants that will cover your full expenses,’ that would be very appealing.”

(...)

Palmer added that curing disease is the most talked about but perhaps least important aspect of embryonic stem cell work. Creating new lines from people with genetic diseases would let researchers study how and why cells carrying these mutations become diseased. “With this work we could think about preventing the disease before it starts,” he said.

Creating these new lines requires a technique called somatic cell nuclear transfer, which Palmer said he’s eager to use in his lab. “I can’t do SCNT now because I don’t have a history of that research,” he said, and he can’t get federal funding to do it. With Prop. 71 ending the financial barrier he said that one good postdoctoral fellow could seed his lab with the cell lines needed to study the genetics of Parkinson’s and other diseases.


[cross-reference: WARF]

A mild Habanero, but will it kill fire ants?

Dr. Kevin M. Crosby and the folks at the Texas A&M
Agricultural Experiment Station in the Rio Grande
Valley have developed and patented the TAM Mild
Habanero, with less than half the bite of the familiar
jalapeno (which A&M scientists also previously
produced in a milder version).

In an entirely different patent, someone had patented the use of extracted peppers (containing capsaicin) as an insecticide against ants and termites.

The Scoville scale is used to measure pepper "heat." A regular jalapeno scores between 5,000 and 10,000 units on the Scoville scale of pepper hotness based on the amount of the chemical capsaicin, and a regular habanero averages around
300,000 to 400,000 units. Texas A&M's mild version registers
only 2,300, or barely one-hundredth of its coolest
formidable namesake.


There has been an attempt in Mexico, to trademark
the Yucatan habanero in the same way, say, that the
French protect Champagne and Cognac.

Capsaicin is being studied as a stroke preventive.
Other chemicals in peppers were potent antioxidants
and protected against macular degeneration.

Gillette files DJ action in D Mass over Hummingbird Flosser

Gillette filed a declaratory judgment action on Nov. 12, 2004 in federal court in D. Mass., seeking a declaration that three patents licensed to Water Pik by Dane Robinson/Skyvision are not infringed or invalid.

This action relates to an electric dental-flossing device, which
Gillette began selling in March 2004 as the Oral-B Hummingbird Power Flosser and Pick.

Coolsavings.com wins in Catalina Marketing case

Catalina alleged infringement of claims of US 4,674,041 by coolsavings.com. In this second visit to the Federal Circuit (Catalina-I is 289 F3d 801 (CAFC 2002)), four claim terms were at issue. The Federal Circuit sustained the district court's interpretation and Catalina lost.

Two of the terms at issue were means plus function terms, and the (unpublished) decision illustrates how such claiming can be problematic when few structures are recited in the specification.

Patent applications for new ways to keep unrefrigerated tortillas fresh

Of further examples of the Bayh-Dole Act, Ralph Waniska of Texas A&M University is filing patent applications on new ways to keep unrefrigerated tortillas fresh.

Two of the methods involve ways to make tortillas thinner, with the knowledge that thinner tortillas stay fresh longer.

A third method involves the use of an enzyme otherwise used to produce high fructose corn syrup. Waniska finds that the use of this enzyme makes the proteins in the tortilla function more effectively to hold up the tortilla structure.

Waniska has a colloboration with Iowa State University to make tortillas that last four years without refrigeration.

And, yes, there is a use. NASA has been using flour tortillas since the early days of the space shuttle, because they make few crumbs to get lost in zero gravity. NASA would like longer lasting tortillas. One of the favorites is apparently peanut butter and jelly tortilla sandwichs. Hmm... is this a prior public use or an infringement of the crustless peanut butter-and-jelly sandwich covered within U.S. Patent 6,004,596 for a "sealed crustless sandwich."

[I didn't find Waniska's applications on the USPTO database, but there are other tortilla applications: 20040191378, 20040105925, 20040071854, 20030066106. Did find reference to papers: Mitre-Diestre, C.M., Ames, N.P., Rooney, L.W. and Waniska, R.D. 2001. Effect of amulose and -glucan content on barley tortilla properties. Tortilla Industry Association Technology Meeting. Los Angeles, California, May 2001; Gomez, M. H., Rooney, L. W., Waniska, R. D. and Pflugfelder, R. L. 1987; Dry corn masa flours for tortilla and snack production; Cereal Foods World. 32:372.]

[For a listing of articles on the Bayh-Dole Act, see
http://academicintegrity.blogspot.com/2004/08/intellectual-propertytechnology.html]

Testimony of David Graham before Senate Finance Committee on drug safety

In testimony before the Senate Finance Committee on November 18, 2004, David Graham raised issues about the safety of the drugs Meridia, Crestor, Accutane, Bextra, and Serevent. [AP report, for example, Trenton Times, C9, Nov. 19, 2004.] The corresponding drug makers have defended the safety and use of these drugs.

Graham asserted that the FDA's Office of New Drugs (Sandra Kweder, Deputy Director) maintains a drug is safe unless reviewers establish ith 95% certainty that it is not.

The CEO of Merck has noted that his wife took VIOXX until the date of withdrawal.

Anchen files ANDA for Wellbutrin XL (buproprion)

Taiwan-based generic company Anchen Pharmaceuticals has submitted an abbreviated new drug application (ANDA) to the FDA for Biovail's Wellbutrin XL (once daily dose of bupropion for depression).

Litigation over bupropion has been extensive. Current issues are NOT about the drug itself (the composition of which is off patent) but about the formulations for controlled delivery of the drug. The Excel and Impax decisions of the Court of Appeals for the Federal Circuit have involved interpretation of the foreseeability prong of the US Supreme Court decision in Festo (535 US 722 (2002)).

Wellbutrin is a drug used to treat depression, but the underlying chemical is also used for smoking cessation (marketed as ZYBAN). Of depression, the chemical is different from Paxil, Prozac and Zoloft, and as a result, Wellbutrin can often successfully treat people with depression whose condition has not improved from taking these other drugs.

Although the chemical of Wellbutrin and Zyban has been off patent as a composition of matter for a long time, in 1995 Glaxo received a patent for the extended release formula of Wellbutrin SR. In 1999, generic drug manufacturer Andrx filed two ANDAs with the FDA seeking to sell generic versions of extended release Wellbutrin and Zyban. Andrx argued that because its generic used a different method of extended release, that it did not infringe on Glaxo's patent. Four other generic manufacturers followed Andrx's lead, and several have received tentative approval to manufacture and market their generic versions. In February of 2002, the US District Court for the Southern District of Florida ruled that Andrx did not violate Glaxo’s patent and therefore should be allowed to manufacture and market its generics. On appeal, however, the Federal Circuit Court of Appeals held that the district court in Florida erred in its construction of the patent infringement claims.

Glaxo owns U.S. Patent No. 5,427,798 (the ’798 patent) directed to controlled sustained release tablets containing bupropion hydrochloride. Pharmacologically, bupropion (m-chloro--t-butylaminopropiophenone) is a monocyclic aminoketone antidepressant. See U.S. Patent No. 4,393,078 (issued July 12, 1983) (the ’078 patent). These compounds treat depression and inebriation. In addition, they facilitate the cessation of smoking by producing neural stimulation in mammalian systems. See ’798 patent, col. 1, ll. 5-10; ’078 patent, col. 1, ll. 29-39; U.S. Patent No. 3,819,706 (issued June 23, 1974). To avoid the need for multiple dosages with the attendant fluctuations in plasma bupropion concentrations, Glaxo invented a sustained release formulation of the compound. While bupropion hydrochloride itself was separately patented, Glaxo obtained the ’798 patent to protect its sustained release formulation of the drug. Glaxo markets this patented sustained release formulation as Wellbutrin®SR for treatment of depression and as Zyban® for smoking cessation. The key ingredient for achieving sustained release in this invention is hydroxypropyl methylcellulose (HPMC), which is a partly O-methylated and O-(2-hydroxypropylated) cellulose. In oral preparations, HPMC extends drug release by transforming into a gel that swells upon ingestion. The hydrogel state of HPMC releases bupropion hydrochloride from an ingested tablet over a period of time.

The ’798 patent claims a sustained release tablet containing an admixture of bupropion hydrochloride and HPMC. However, many of the claims as originally filed did not recite HPMC as a limitation. During prosecution on the merits in the United States Patent and Trademark Office (Patent Office), the examiner rejected the claims that did not recite HPMC for lack of enablement under 35 U.S.C. § 112, 1. Glaxo amended those claims to overcome the rejection.

The first independent claim of the ’798 patent states:

1. A controlled release tablet comprising 25 to 500 mg of bupropion hydrochloride and hydroxypropyl methylcellulose, the amount of hydroxypropyl methylcellulose to one part bupropion hydrochloride being 0.19 to 1.1 and said tablet having a surface to volume ratio of 3:1 to 25:1 cm-1 and said tablet having a shelf life of at least one year at 59deg to 77deg F. and 35 to 60% relative humidity, said tablet releasing between about 20 and 60 percent of bupropion hydrochloride in water in 1 hour, between about 50 and 90 percent in 4 hours and not less than about 75 percent less in 8 hours.

The WTO angle and TRIPS

Of the Ballmer quote: "Someday, for all countries that are entering the [World Trade Organization], somebody will come and look for money owing to the rights for that intellectual property."

Section 5, Article 27, paragraph 1 of TRIPS recites:

1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. (5) Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.

Paragraphs 2 and 3 don't say anything about business method or software patents.

[http://www.wto.org/english/docs_e/legal_e/27-trips_04c_e.htm#5]

David Berlind writes: Given the significant overlap between the members of the WTO and the European Union [EU], I'm having a tough time imagining how, if Europe can't uphold patents on software, the WTO can. One poster observed that the EU could take the position that business methods/software are not a "field of technology" or perhaps even "inventions." Further, if the USA did even try to get WTO to force a change in the EPC, the EU would counter-attack with TRIPS complaints about various aspects of the US patent system which currently favour US-based inventors. --> Mutually assured standoff.


Berlind also wrote of the WTO remark: "the easiest way to get rid of a potential customer forever is to sue them. Especially when that customer is a government. Governments usually have pretty big budgets."

Within the US, patent holders have sued customers. Go back to the days of the Selden patent on the automobile. One of the advertising slogans for licensed cars was "Don't buy a lawsuit." Henry Ford said that this tactic by the Selden patent holder (ALM) launched Ford's business. In the pharma business today, many claims on drugs are written such that patients, doctors, and pharmacists could be sued for use of competitor's infringing drugs. For example, this could have happened with omeprazole. But, of course, it didn't. In the area of copyright, there have been some exemplary suits brought by the RIAA against consumer-infringers, but this is tricky business.

A different website gives a different example.
http://www.linuxworld.com.au/index.php/id;1874419189;fp;4;fpid;1

-->Up to now, not many users have faced such threats. When asked for an example of a user actually getting sued over intellectual property rights, Microsoft spokesmen go back four years.

In 2000, Allan Konrad, a computer scientist, sued three dozen corporations, including General Motors, Ford Motor, The Boeing Co., Daimler Chrysler, United Air Lines and Eastman Kodak. Konrad held three patents and ownership to the mechanism of Web-based delivery of information. He went after corporations serving Web information from back-end databases.

"Microsoft worked to get IBM, Sun and AOL, whose products were also implicated, to step in collectively on behalf of our customers. We hired one law firm to defend them, paid the cost of that. The outcome was very positive, the infringement claims were thrown out," said David Kaefer, director of business development at Microsoft. <--

The Register goofs on Microsoft's FAT patents

From Andrew Orlowski in The Register, Nov. 19, 2004:


-->Let's remember too that many software patents are thrown out by the judge. Microsoft's first foray into patent licensing was thrown out by the USPTO itself, when its right to the FAT patents was nullified on the basis of prior art. The explosion of patent filing activity at Microsoft doesn't necessarily indicate an explosion of creativity; and many may be even more fatuous than the FAT patent. For example today (thanks TheoDP) Microsoft has applied to patent the IS NOT operator.<--

Sorry, Andrew, but the action taken by the USPTO as to the FAT patents has NOT nullified or invalidated these patents as of this time. You need to get a better grip on US patent law.

Elsewhere, Andrew suggests that the Microsoft foray is to set up the WTO as an enforcement agent:

-->By adopting the WTO as its intellectual property enforcement proxy, Redmond believes it has a tactic that allows it to prevail without filing a single lawsuit. This has many advantages for Microsoft, as we'll see. But without filing a lawsuit, it's going to prove extremely difficult to convince anyone that the GPL poses a risk to their way of doing business: so many people now depend on it.<--

Andrew does not believe a non-litgious strategy will work in places like China:

-->In China, Linux is considered more expensive than Windows (a pirate copy of Windows, of course) because Linux comes on three CDs rather than one. For Microsoft to compete effectively in a fair market competition against Dragon Linux, it's going to have to produce a version of Windows much cheaper than the $26 cut down version offered in Thailand. It'll have to cut this by an order of ten, or fifty.

So it's in Microsoft's long-term strategic interests to make writing GPL software and using it illegal. Microsoft has already indicated that it can build up its IP patent stream without opening fire. In an interview published last week, Microsoft's director of licensing David Kaefer noted that Microsoft could no longer "look the other way" when companies used its IP, [here] But Kaefer also "... noted that [Marshall] Phelps built IBM's intellectual property business without filing a single lawsuit." [our emphasis] Phelps is the IBM attorney who built up its patent revenues from zero to a billion dollar business in the 1980s. He joined Microsoft last summer.

So how can Microsoft win a patent war without suing anyone? It's hard to conclude that it can, but perhaps that's not the goal. We can certainly see how hard the company wants to avoid a legal fight over the GPL. Tacking the GPL's validity head on in court carries lots of dangers.<--

Andrew captures the essence of the IBM patent strategy:

-->So like Mutually Assured Destruction, the true value of Microsoft's patent arsenal lies in the threat of their use, not their actual use. In any case, what Microsoft seems to be counting on is that the momentum behind the GPL will falter as companies become wary of deploying it.<--

On the politics of world trade:

-->There's much irony to this. The anti-globalization movement arrived in the United States with the extraordinary Seattle protests at the height of the dot.com boom. Panglossian dot com sages huffed and puffed and did their best to ignore it: after all, politics was dead: entrepreneurs were the revolutionaries, and any lessons that conventional economics could tell us were useless in the New Economy. Both markets, and the internet itself, they believed, were "self-correcting".

But the protesters weren't so much against trade, as they were for fair trade, and against a Washington Consensus that sees financial capital ride over the interests of labor everywhere, and developing economies in particular. This is the logic that reduces technically skilled white collar workers in the first world to the state of indentured coolies, and orders developing countries to institute "cost recovery" programs where poor parents must pay for their kids' education. (Former Nobel Prize Winner, and chief economist of the World Bank, Joseph Stiglitz describes how Uganda rebelled against this imposition, with the result that a generation of daughters received an education for the first time, rather than being forced to work on the land as child labor).

So Microsoft's adoption of the WTO as its enforcer may be the moment when the technical community realizes that everything is political, perhaps encouraging them to send their Ayn Rand novels down the crapper.<--

Microsoft's Balmer on patent infringement by Linux

Although there have been some indications that Microsoft is moving toward an IBM-like, non-litigious approach to intellectual property, a recent statement by Steve Balmer suggests that patent infringement issues with Linux remain. A later report refines the context of the statement, from "Microsoft says Linux violates patents..." to "Microsoft says OSRM says Linux violates patents..." A still later report quoting Dan Ravicher, author of the OSRM study, questions the revised Microsoft interpretation. There has been much discussion on the internet about the issue.

from Reuters, Nov. 18:

-->Linux violates more than 228 patents, Microsoft Chief Executive Steve Ballmer said at the company's Asian Government Leaders Forum in Singapore. He did not provide any details on the alleged violations, which the Linux community disputes.

"Someday, for all countries that are entering the WTO (World Trade Organization), somebody will come and look for money owing to the rights for that intellectual property," he added. <--

HOWEVER, later on Nov. 18, Microsoft denied part of the story.

From Mary Jo Foley at eWeek:

Microsoft Corp. is denying that its CEO Steve Ballmer told Asian government leaders on Thursday that Microsoft believes that Linux violates more than 200 software patents.

Instead, Ballmer was citing a controversial study done earlier this summer by a risk-mitigation consultancy that claimed that Linux has been found to violate more than 200 software patents, according to a Microsoft spokesman.

"Steve [Ballmer] was speaking at the Asia Government Leaders Forum [in Singapore] and noted the recent OSRM [Open Source Risk Management] report in answer to a question he was asked on Linux and licensing costs," said the Microsoft spokesman. "It wasn't in the context or perspective of 'Microsoft saying this,' but rather 'Here's what the industry is saying and it is a factor to consider.'"

A published report claiming that Ballmer said Microsoft believes Linux violates 228 or more software patents created a quite a stir across the Web on Thursday.


According to the story, Ballmer did not go so far as to say Microsoft planned to sue Linux vendors or customers over the alleged violations. However, he did note that "someday, for all countries that are entering the WTO [World Trade Organization], somebody will come and look for money owing to the rights for that intellectual property," according to the report.

In August, OSRM, a provider of open-source consulting and risk mitigation insurance, announced it had unearthed 283 issued, but not yet court-validated, software patents that could conceivably be used in patent claims against Linux. OSRM is planning to begin offering a patent-litigation insurance policy for Linux users and developers in 2005.

Microsoft has not weighed in publicly on whether it has discovered patent violations by open-source vendors involving any of its products. But the Redmond, Wash., software vendor, like a growing number of corporations, is availing itself of a variety of tools for monitoring the source of its own source code, Microsoft officials said.

David Kaefer, Microsoft's director of business development for IP and licensing, told Microsoft Watch earlier this month that Microsoft has been creating process controls to ensure that Microsoft knows from where its own code is coming. Microsoft has created a number of tools and is licensing others that will allow the company to make sure that there is no hidden code (open-source or otherwise) in its products that shouldn't be there, Kaefer said.

OTHER DISCUSSION:

from http://news.zdnet.co.uk/software/linuxunix/0,39020390,39174372,00.htm

This statement didn't impress Novell which -- like Microsoft -- owns a very large number of software patents.

"The intellectual property risks associated with open-source software are really no greater than those with proprietary software and so far, nobody has filed any patent claims against open source," said Bruce Lowry, Novell spokesperson.

"Novell provides indemnity protection against legal action for our customers and we are committed to using our own patent portfolio to protect our open source software offerings," Lowry added.

Last month Novell chief executive Jack Messman declared that his company would use its patent portfolio to defend customers who used its open source software.

Gael Duval, founder of Linux vendor Mandrakesoft, accused Ballmer of scare tactics, and argued that Windows users were just as much at risk as Linux users.

"Again [we have] some fear, uncertainty and doubt from Microsoft. They do whatever they can to fight against Linux," Duval said.

"On the other hand, Microsoft is involved in a number of patent trials, so governments who use Microsoft products face patent lawsuits no more and no less than for Linux products," Duval added.

Stuart Cohen, chief executive of the Open Source Development Labs (OSDL), said his organisation had a lot of confidence in Linux's robustness when it came to IP, patents and copyright.

"Some of the world's largest vendors share our view and are willing to stand behind Linux to protect their customers, as are we. HP offers its Linux customers indemnification. So do Red Hat and Novell. Both Novell and IBM have publicly promised to use their extensive patent portfolios to protect Linux customers," said Cohen.

"And OSDL set up a $10m legal defence fund for Linux customers. With Linux adoption growing three times faster on the server than any other operating system, customers are clearly continuing to embrace Linux," Cohen added.

Microsoft was not immediately able to expand on Ballmer's remarks, which have sparked speculation that they represent Microsoft's plans for litigation against Linux.

Ballmer stopped short of saying that Microsoft itself would be suing Linux users, and also did not say who owned the patents in question. Previous reports have claimed that Linux violates 283 patents.

Analysts believe Ballmer's remarks could actually rebound on Microsoft.

"The impression that customers will get from these sort of comments will do nothing to move them closer to a mature and strategic relationship with Microsoft," said Rakesh Kumar, senior vice-president at META Group.

"Users are intelligent enough to assess their own risks. Microsoft needs to build bridges with international organisations rather than being abrasive," Kumar added.

If Ballmer's remarks do represent a turning point in its battle with Linux, then it is heading for explosive confrontations with several other IT giants.

On Wednesday, Sun chief executive Scott McNealy said his company was ready for war over the issue of intellectual property litigation.

McNealy told ZDNet UK sister site ZDNet Australia the recent Kodak patent case was an example of the company "taking a bullet" to protect its end-users.

"Customers need to use a software provider with cash in the bank, who protects and indemnifies them and will look out for their interests," McNealy said.

When asked how many bullets Sun could take, McNealy said the company had $7.4bn in the bank, strong growth and an "IP war chest" that "scares a lot of companies away". McNealy did not rule out a patent war, but was confident of Sun's position should one occur.

UPDATE. from eWeek.
http://www.eweek.com/article2/0,1759,1729908,00.asp

"Microsoft is up to its usual FUD [fear, uncertainty and doubt]," said Dan Ravicher, author of the study Microsoft cites, who is an attorney and executive director of PUBPAT (the Public Patent Foundation).

"Open source faces no more, if not less, legal risk than proprietary software. The market needs to understand that the study Microsoft is citing actually proves the opposite of what they claim it does."

"There is no reason to believe that GNU/Linux has any greater risk of infringing patents than Windows, Unix-based or any other functionally similar operating system. Why? Because patents are infringed by specific structures that accomplish specific functionality," Ravicher said.

"Patents don't care how the infringing article is distributed, be it under an open-source license, a proprietary license or not at all. Therefore, if a patent infringes on Linux, it probably also infringes on Unix, Windows, etc.," he said.

It makes no difference whether and how software is distributed, Ravicher said. "The bottom line is there's no reason to believe that Windows, Solaris, AIX or any other functionally similar operating system has any less risk of infringing patents than Linux does."

Patent questioning fullerene electroluminescence application

The most recent patent to mention fullerenes (as of Nov. 18, 2004) questions, rather than supports, fullerene use in electroluminescent devices:

Although a large amount of research and investigation was conducted on the alternating current electroluminescent devices, the devices never achieved practice application although they were originally highly touted as a room lighting sources. Unfortunately, at high brightness levels the AC electroluminescent devices exhibited a very short life, and after about 1963, most of the research into the AC electro-luminescence devices was severely curtailed.

The most recent efforts in this area have been directed to a molecular carbon (e.g., a form of carbon known as fullerene-60) system. The high voltage drive requirements, the associated high cost of drive circuitry, poor stability and lack of color capability have made these devices cost prohibitive.

[from US 6,819,649]

Email destruction issues in Burst v Microsoft

Although Microsoft has settled many litigations, the one involving Burst.com remains and now involves allegations of destruction of email evidence. Burst.com sued Microsoft in June 2002, alleging Microsoft developed its own multimedia software for moving audio and video more quickly over the Internet after discussing the technology for months with Burst.

In a recently unsealed motion, Burst.com asserts Microsoft:

-->told workers, beginning in 1995, not to save e-mails to corporate servers.


-->maintained its deletion policy by creating servers that forced workers to "auto-delete" e-mails.


-->"carefully limited the employees it asked to preserve documents for litigation, and excluded key employees ... This has meant that a large number of core documents simply no longer exist."


-->and has "concealed or falsely described its document retention practices in past litigation."

Burst.com attorney Spencer Hosie: "Microsoft is a very clever company, and it saw earlier than most how damaging e-mails can be to corporate America." Microsoft denies it did anything wrong.

Marvin Johnson on patents

Marvin Johnson of Phillips Petroleum on patents:

"It's the same in patents as it is in having a baby. Conception is the best part of it."

from fastcompany:

-->Johnson's straightforward approach to innovation is at odds with much new-wave thinking about where great ideas come from. Innovators break the rules, right? Johnson is about as loyal a company man as you'll find. Today, he works part-time in order to accommodate the occasional urge to go off and explore other projects, but for the most part, he can be found right where he's always been -- at the company research lab in Bartlesville, Oklahoma. This is a place that will never be confused with Silicon Valley or Madison Avenue. There are no splashes of multicolored paint on these walls, no scooters waiting to provide "inspiration" to free-spirited thinkers. Johnson's office contains a standard light-wood, L-shaped desk; a couple of floor-to-ceiling bookcases; and five or six framed awards on the walls. His lab is similarly austere, with its white linoleum floors, equipment carefully tended on counters and in cabinets, and charts and diagrams taped to the doors and walls.

So what makes Johnson tick? That's easy: He rarely meets a problem that he doesn't want to solve. "There's an endless series of problems, things that the company needs us to solve, and we go and do that," he says.<--

Scientists vs. engineers:

-->Most of the work Johnson does is about solving smaller, focused problems -- and the more focused, the better. Johnson believes that his training in chemistry and engineering has influenced his research techniques. "The differences between chemistry and engineering are more profound than people think," he explains. "Chemistry is about exploring, but it is not about developing processes once you've discovered them. It's where the research starts. Engineering is very quantitative. It's about sequences of steps and descriptions of processes." Straddling these two disciplines helps Johnson combine the best of both worlds: the inquisitiveness of the chemist and the pragmatism of the engineer. "When I approach a problem, it's not enough to discover the nature of the solution. I want to apply it. I know that if I keep at it until I can describe everything with numbers and equations, then I will really understand it."<--

Academic vs. industrial research

-->"The first time I retired, I was 58," he says. "I went to teach at Oklahoma State University. But you know what? Universities are slow! They're collections of individuals doing their own research. I missed working for a big organization with smart colleagues who were all in it together, working toward a single goal. But it took me a few years to figure that out."<--


Some patents of Johnson:

6,794,552 (a divisional of application Ser. No. 09/398,664, filed Sep. 17, 1999 and now U.S. Pat. No. 6,417,316 B2). First claim:
A process comprising contacting a hydrocarbon-containing fluid which comprises a highly unsaturated hydrocarbon with a catalyst composition in the presence of hydrogen in a hydrogenation zone under a hydrogenation condition effective to hydrogenate said highly unsaturated hydrocarbon to a less unsaturated hydrocarbon wherein said catalyst composition is prepared according to a process comprising impregnating a metal aluminate catalyst support with palladium and a catalyst component selected from the group consisting of silver and an alkali metal compound wherein said metal aluminate catalyst support is prepared by a process comprising:

(a) incorporating alumina with a melted metal component to thereby provide a metal-incorporated alumina, and

(b) calcining said metal-incorporated alumina under a calcining condition to thereby provide said metal aluminate catalyst support wherein said calcining condition comprises a temperature in the range of from about 600.degree. C. to about 1350.degree. C., a pressure in the range of from about 7 pounds per square inch absolute (psia) to about 750 psia, and a time period in the range of from about 1 hour to about 60 hours; and

further wherein said melted metal component comprises a metal component having been melted under a melting condition.

5,296,515
As of Nov. 18, 04, cited six times.
First claim:
A method comprising:

(a) providing a mixture of at least one hydrocarbon polymer and a solvent, wherein the solvent comprises a combined weight percentage of C.sub.n H.sub.2n-8 and C.sub.n H.sub.2n-10 hydrocarbons of at least about 10 weight percent, where n is an integer of at least 8 in C.sub.n H.sub.2n-8 and n is an integer of at least 10 in C.sub.n H.sub.2n-10 ;

(b) contacting the mixture, having said at least one hydrocarbon polymer at least partially dissolved in the solvent, with hydrogen under conditions which include a temperature of about 750.degree. F.-1200.degree. F. and a pressure of about 700-2000 psig, and which are sufficient to hydrovisbreak said at least one hydrocarbon polymer, thereby producing a product containing a fraction which comprises hydrovisbroken polymer.

4,421,638 (Demetallization of heavy oils).
As of Nov. 18, 04, this patent was cited five times.
First claim
A method for treating metal containing hydrocarbon feed streams comprising contacting said hydrocarbon feed stream with an amount of a phosphorus sulfide of at least about 0.5 weight percent based on the weight of the hydrocarbon containing feed stream at demetallizing temperatures and pressures sufficient to convert said metals to oil insoluble compounds.

Sun plans to protect customers from infringement suits

Sun Microsystems is announcing an intellectual-property protection plan for customers as part of an effort to bolster the status and adoption of Solaris, a proprietary version of Unix that has been adversely affected by open-source Linux.

from http://news.zdnet.com/2100-3513_22-5456451.html:

-->Details of that protection plan won't be revealed until Sun announces its licensing terms for open-source Solaris in the coming weeks. But at an event here this week to announce the Solaris 10 OS, Sun Chief Executive Scott McNealy offered an example of how patent protection could work. McNealy mentioned his company's $92 million payment to Kodak to settle a patent suit over Java that could have affected others who ship Java products.

"You should have a company that can protect you and take that $92 million bullet," McNealy said. Sun also has an arsenal of patents it can use as the basis for countersuits against computing companies, he said, adding that "most people with network-computing intellectual property probably don't want to come after us, because we might go right after them." <--

Fed Cir vacates preliminary injunction given to Medpointe by DNJ

In a 2-1 vote, the Federal Circuit vacated a preliminary injunction earlier granted to Medpointe against High Tech Pharmacal.

A significant point in the decision concerned the effectiveness of a (1938) prior art reference, the anti-cough remedy Candettes. The Candettes product had all three of the claimed (cationic) ingredients of Medpointe's US 6,417,206, although with different counter-anions. Because the '206 patent claimed specific counter-anions not in Candettes, this became an obvious rejection (35 USC 103), not an anticipation (35 USC 102). There was motivation to move from the anions of Candettes to the claimed anions.

The major issue with the Candettes reference was the presence of a fourth major ingredient, ammonium chloride, and whether this simple compound [NH4Cl] was an "active" or "inactive" ingredient. Medpointe's position was that it was "active" and that there was a patentable invention in REMOVING ammonium chloride from the 1938 composition.

Claim 1 of the '206 used open-ended language, "comprising." The CAFC interpreted this as limiting the "active" ingredients to only the three listed by Medpointe. Although the topic didn't come up in the obviousness case, if the three ingredients do function as a cough remedy, they inherently do so, and did so in 1938 when Candettes was marketed. If it were clear that the counter-anion of the three active (cationic) ingredients did not affect the cough remedy, then this case could have been decided as an anticipation, not on obviousness grounds. In the case In re Donohue, the court found anticipation even though the prior art and claimed product differed in their chemical identity (through a reaction known to one of ordinary skill).


Yes, amazon.com v. BarnesandNoble, 239 F3d 1343 (CAFC 2001) was cited in the case. Yes, the CAFC vacated a PI of the district court of New Jersey.

Chief Judge Mayer dissented. First, he disagreed with the finding that ammonium chloride was not an active ingredient. Second, he disagreed with the finding about tannates (the counter-anion in the patent). Finally, he took issue with the use of "the failure to break even" as a way to negate commercial success as a secondary factor to negate obviousness.

UPDATE. Apparently, there is a question over "what has to happen" for a preliminary injunction to be vacated. Medpointe seems to think there needs to be an order from the CAFC to DNJ, and that the DNJ has to lift the injunction.

from a press release-->
MedPointe Pharmaceuticals responded today [Nov. 22] to recent developments concerning its continued efforts to enforce its intellectual property rights covering its TUSSI-12(R)D product line.

MedPointe's TUSSI-12(R)D brand products are covered by U.S. Patent No. 6,417,206 ("the '206 patent"). MedPointe has previously successfully enforced this patent against certain manufacturers to prevent infringement, obtaining consent orders and preliminary injunctions from the U.S. District Court for the District of New Jersey that prevent these parties from offering to sell or selling generic versions of MedPointe's patented TUSSI-12(R)D products.

Although a panel of an appellate court on November 17, 2004 issued an opinion that the preliminary injunction against Hi-Tech Pharmacal Co., Inc., Amityville, NY, should be vacated, MedPointe believes that the preliminary injunction remains in full force and effect, unless and until the appellate court issues a mandate vacating it. Among other things, the preliminary injunction prevents Hi-Tech Pharmacal Co., Inc. from shipping, manufacturing, having manufactured, offering to sell, selling, or importing into the U.S. Tannate 12 D S, a generic version of MedPointe's TUSSI-12(R)DS brand suspension product.

On November 19, 2004, Hi-Tech Pharmacal Co., Inc. issued a press release stating that it "plans to begin shipments of its Tannate 12 D S cough and cold product in the near future" but that it "may still be subject to liability based on a claim of patent infringement for sales of Tannate 12 D S." MedPointe believes that Hi-Tech Pharmacal Co., Inc. remains bound by the preliminary injunction and may not ship, manufacture, have manufactured, offer to sell, sell, or import into the U.S. Tannate 12 D S, unless and until the District Court, acting on a mandate by the appellate court, lifts that injunction.

MedPointe believes that the panel opinion of the appellate court is in error, and agrees with the Chief Judge of the appellate court, who dissented from the panel opinion. MedPointe intends to petition for a rehearing to overturn the opinion and prevent the issuance of any mandate vacating the injunction.

Patent program in Maine

There is discussion of a certain patent application within an article on a new program to foster patents in the state of Maine.

-->It's still possible for an individual to navigate the process, said Roger Hewson, who has an unusual patent pending for his idea that leadership qualities can be identified by looking at 12 functions of thinking. He's writing a book on the idea and found that because his theory is based on scientific principles, it requires a patent instead of a copyright.

Hewson, who started the Maine-based Sabre Yacht Corp., said he managed to prepare his 57-page patent application with the help of the patent program, a do-it-yourself patenting book, about eight trips to the Inventors Forum and a session or two with a patent attorney.

He said going the traditional route of turning it all over to an attorney would have cost him about $25,000.

Hewson said he hopes that his idea can be marketed as an executive development course for use in business schools and other programs, and that could benefit Maine.<--

Of the program itself:

-->The event where they can do that, the Maine Inventors Forum, is run by the Maine Patent Program, a small, state-funded office that sees inventiveness and creativity as economic development tools that can lead to business creation and greater employ- ment.

"The state is really getting on board the idea that research and development in science and technology is critical to economic growth," said Rita Heimes, director of the Technology Law Center at the University of Maine School of Law. The law center runs the Maine Patent Program.<--

Oak Ridge National Lab reviewing SPORE software

From the article below, it appears that the Oak Ridge National Laboratory is currently reviewing the SPORE's software for patent analysis.

from a press release on Nov. 16, 2004:

Spore, a provider of intellectual property consulting services and software, will work with a federally funded initiative in Western North Carolina on technology transfer of patents related to energy efficiency, the company said Monday.

Spore was selected by the Western North Carolina Center for Technology Commercialization (WNCCTC) as part of a project intended to help turn more than 300 patented applications into new business. The patents include biology/chemistry, electrical/mechanical and materials engineering.

"Spore is the first company to offer an IP software tool designed to simplify the patent process in the most efficient and cost effective way possible," said JiNan Glasgow, the founder and CEO of Spore. She also is a practicing patent attorney and a former patent examiner with the U.S. Patent & Trademark Office.

(...)

The Department of Energy funds the WNCCTC through the Oak Ridge National Laboratory. It is managed by the Institute of Biltmore, which is based in Asheville. The Oak Ridge National Laboratory is currently reviewing the software.


Spore uses search and matrix technology to review, organize and classify the patents and technolofies.

The WNCCTC will introduce the technology at its Energy Efficient Technology and Business Fair on Jan. 25 in Enka, NC.

Patents of Commerce One to be auctioned on Dec. 6, 2004

Thirty-nine patents of now-bankrupt Commerce One will be auctioned on Dec. 6, 2004. One of the patents has claims related to methods and apparatus for managing transactions among nodes in a network. The New York Times puts a --damper on innovation-- [eg, patent terrorism] spin on the Commerce One patents.

from the New York Times:

Bidding for a portfolio of 39 patents of Commerce One will begin at $1 million in an auction which is scheduled for Dec. 6, 2004 in federal bankruptcy court in San Francisco. Earlier in November 2004, the patents were carved out from the rest of Commerce One's assets.

One of the inventors involved, Robert Glushko, who no longer holds the patent rights, fears the winner of the auction might use the patents mainly to impede other companies or to press competitors to pay licensing fees for practices already common in Internet commerce. He is not alone.

"The big issue is what people call 'patent terrorism,' " said Jack Russo, an intellectual property attorney in Palo Alto, Calif.

(...)
"We filed these patents to describe a standard method for using documents to connect services into business networks," said Mr. Glushko, who is now an adjunct professor at the University of California at Berkeley in the School of Information Management and Systems. "At Commerce One, our business model depended on an open infrastructure for doing that. It is completely antithetical to our intent to use the patents to prevent it."

Commerce One, founded in 1994 and based in Santa Clara, Calif., developed software applications for electronic commerce. In 1999, it acquired a small start-up firm, Veo Systems, which had developed electronic commerce technology based on set of protocols known as Extensible Markup Language, or XML. The idea was that a publicly available technology like XML would help electronic markets grow rapidly.

Mr. Glushko said that as a co-founder of Veo he had contributed the ideas in several of the key patents to industry standards groups, a move that may have placed those ideas in the public domain. Mr. Glushko contends that those contributions make the patents harder to enforce. However, a representative of Commerce One in the bankruptcy proceeding said that his firm had explored that issue and that the patents were enforceable.

*****
One Commerce One patent is US 6,125,391, arising from an application filed Oct. 16, 1998. Related applications: The present application is related to co-pending U.S. patent application Ser. No. 09/173,858, filed on Oct. 16, 1998, the same day as the present application, and having the same inventors, entitled DOCUMENTS FOR COMMERCE IN TRADING PARTNER NETWORKS AND INTERFACE DEFINITIONS BASED ON THE DOCUMENTS; and to co-pending U.S. patent application Ser. No. 09/173,847, filed on Oct. 16, 1998, the same day as the present application, and having the same inventors, entitled PARTICIPANT SERVER WHICH PROCESSES DOCUMENTS FOR COMMERCE IN TRADING PARTNER NETWORKS.

The first claim of the '391 patent recites:

A method for managing transactions among nodes in a network including a plurality of nodes which execute processes involved in the transactions, comprising:

storing machine-readable specifications of a plurality of participant interfaces, the participant interfaces identifying transactions, the respective transactions being identified by definitions of input documents, and definitions of output documents, the definitions of the input and output documents comprising respective descriptions of sets of storage units and logical structures for the sets of storage units;

receiving data comprising a document through a communication network;

parsing the document according to the specifications to identify an input document and one or more transactions which accept the identified input document;

providing at least a portion of the input document in a machine-readable format to transaction processes associated with the one or more identified transactions.

Claim 25 is independent and recites:

Apparatus for managing transactions among nodes in a network including a plurality of nodes which execute processes involved in the transactions, comprising:

a network interface;

memory storing data and programs of instructions, including machine-readable specifications of a plurality of participant interfaces, the participant interfaces identifying transactions, the respective transactions being identified by definitions of input documents, and definitions of output documents, the definitions of the input and output documents comprising respective descriptions of sets of storage units and logical structures for the sets of storage units;

a data processor coupled to the memory and the network interface which executes the programs of instructions; wherein the programs of instructions include

logic to receive data comprising a document through a network interface;

logic to parse the document according to the specifications to identify an input document and one or more transactions which accept the identified input document; and

logic to provide at least a portion of the input document in a machine-readable format to transaction processes associated with the one or more identified transactions.

The '391 patent also contains this interesting (and problematic) text:

COPYRIGHT NOTICE

A portion of the disclosure of this patent document contains material which is subject to copyright protection. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all copyright rights whatsoever.


As of Nov. 16, 2004, the '391 patent has been cited by 22 US patents, including 6,816,865, 6,813,636, and 6,347,307.

UPDATE. Nov. 26, 2004.

A move is afoot to form an industry consortium to buy about 40 patents that are among the assets of bankrupt Commerce One Inc. The CommerceNet industry group met on Monday with representatives of major technology vendors to discuss forming a foundation to buy the patents, which cover Web services technology, according to Lee Van Pelt, an attorney at Van Pelt & Yi LLP, in Cupertino, California, who attended the meeting. That purchase could prevent speculators from acquiring the patents and launching expensive lawsuits to enforce them, he said.

"Mom Inventors" featured on NBC

On Monday, November 15, 2004, the NBC Nightly News had a feature on "mom inventors."

From the website (http://www.mominventors.com/about/overview.htm):

Established by a mother and inventor in early 2003, Mom Inventors, Inc. is founded on the belief that many of the best and most unique ideas come directly from their target market -- Moms. Unfortunately so many of those unique ideas never reach the marketplace. Recognizing this opportunity, Mom Inventors is determined to support the realization of the dreams of other mothers who are also inventors. Offering web-based collaboration resources and participation in a unique online community, the company offers an educational and supportive structure for the transformation of inventions into marketable products.

Also from the website:

-->Tamara Monosoff is Founder and President of Mom Inventors, Inc. With over twelve years of experience in business operations, program management, and corporate communications, she combines strategic vision and entrepreneurial spirit with being a Mom to Sophia, age 2 and Kiara, 8 months. It was her most recent role as a Mom that provided the inspiration for Mom Inventors.

Prior to founding Mom Inventors, Tamara was Founder and President of ScoutAsia, a provider of pan-Asian consulting services. Initially headquartered in Hong Kong and subsequently relocated to the U.S., the company provided industry research, logistics management, and access to a network of expert consultants for companies and organizations seeking to expand into Asian markets. Previous to ScoutAsia, she worked in Washington D.C. under the Clinton Administration where she earned several progressive assignments, including the position Senior Communications Associate for the President's Initiative on Race at the White House, Chief of Staff for the Office of Vocational and Adult Education at the U.S. Department of Education, and Education Director for the Office of White House Fellowships. <--



They also have a trademark --Mom invented-- tag.

Research driven, brainstorming companies: old idea rediscovered?

from a post on slashdot:

"Microsoft alum Nathan Myhrvold so strongly believes intellectual property is the next software that he's studying for the patent bar exam. His company, Intellectual Ventures, doesn't actually make anything - only patent attorneys roam the hallways. Myhrvold isn't the only true believer. Microsoft, Intel, Sony, Nokia, Apple, Google, and eBay have contributed to a $350M bankroll which the firm is using to buy up existing patents that can be rented to companies who want to produce real products."

from http://www.intellectualventures.com/home/default.asp

Intellectual Ventures is a private firm founded in 2000 by Nathan Myhrvold and Edward Jung to invest in innovation and invention. We have a unique, multidisciplinary invention process paired with an invention-focused business model. While most venture capital firms invest in the business of technology (including start-ups that design and manufacture products), Intellectual Ventures invests in pure invention: creating, funding and commercializing innovative new ideas. We apply our creativity, brainpower and capital to foster innovation across many different fields because we believe that successful innovation can improve productivity, health and, ultimately, quality of life.

Myhrvold: Invention is a side effect at corporate labs, not the focus. When it comes to mission vs. invention at most companies, mission wins.

The belief at such companies is that creative people are fueled to find problems that interest them.

[Gee, sounds like Bell Labs during the 1940's and 1950's; what happened to Bell Labs? Why didn't GE think Sarnoff Labs had any value?]

UPDATE:

John Markoff in the Nov. 16, 04 NYT reported:

-->A Silicon Valley investor who is in contact with potential bidders [for the patents of now bankrupt Commerce One], however, said that Intellectual Ventures, a venture capital firm founded by Nathan Myhrvold, a former top Microsoft executive, was considering making a bid. The company also declined comment.<--

If true, buying up someone else's issued US patents on business methods might not seem like --creating, funding and commercializing innovative new ideas.--

Markoff also presents an obscure quote attributed to Mark Lemley:

"There is a potential risk to society in business models that says we're neither going to come up with an innovation nor create products ourselves," said Mark A. Lemley, a patent law expert at Stanford University. "As a business model it makes sense, but it's not clear that innovation is going to flourish."

[Incidentally, Mark Lemley is not a registered patent attorney.]

UPDATE on Nathan Myhrvold from princeton.edu:

Myhrvold, who is co-founder and chief executive officer of Intellectual Ventures in Seattle and retired in 2000 as chief technology officer at Microsoft, will be awarded the James Madison Medal on February 26, 2005.

Myhrvold is renowned for his visionary thinking as well as his success in linking research to product development and commercialization. He earned his master's and doctoral degrees in applied mathematics from Princeton in 1981 and 1983, respectively, then was a postdoctoral fellow at Cambridge University. He worked with Professor Stephen Hawking on research in cosmology, quantum field theory in curved space time and quantum theories of gravitation.

After one year, Myhrvold returned to the United States to co-found a company, Dynamical Systems, that produced a software product on which he had worked as a graduate student. That product, a precursor to the Windows operating system, attracted the interest of Bill Gates and the company was acquired by Microsoft in 1986.

During his 14-year tenure at Microsoft, Myhrvold held various positions and was responsible for founding Microsoft Research and numerous technology groups that resulted in many of the company's most successful products. ''At a time when other corporations and even government agencies were scaling back basic research, Nathan had the vision and ability to convince some of the greatest business leaders of our time that an investment in basic science is indeed a wise investment,'' wrote an alumna in support of his nomination.

Myhrvold holds 14 patents and has numerous patents pending. With his latest undertaking, Intellectual Ventures, he is focused on a variety of business interests relating to the funding, creation and commercialization of inventions. In 2000, he partnered with Paul Allen and pledged $1 million to the SETI (Search for Extraterrestrial Intelligence) Institute to fund the development phase of the world's most powerful telescope -- the Allen Telescope Array.

Myhrvold has served as a member of the advisory board for Princeton's Department of Physics and as a trustee at the Institute for Advanced Study. He also has served on several other educational, charitable and civic boards, including the Children's Scholarship Fund, through which his donations have provided many scholarships for low-income families. In addition, he has contributed numerous articles to scientific journals and general interest publications. ''In a word, I would describe Nathan as a visionary,'' wrote another alumnus. ''Fortunately, he shares his vision generously in a number of arenas. We are richer for it.''

Unpublished (nonprecedential) opinions

from "Litera Scripta Manet," Intellectual Property Today, August 2002:

The July 12 issue of PTCJ [Vol. 64, No. 1580] contained some discussion of unpublished or nonprecedential opinions. It quoted Kenneth J. Schmier about the issue of fostering indifference about injustices or error.

from IPT, May 2002:

There had been discussion that this panel decision had been limited by the later panel decision in YBM Magnex, Inc. v. Int'l Trade Comm'n, 145 F.3d 1317, 46 USPQ2d 1843 (CAFC 1998). See also, L. B. Ebert, "Chiuminatta: 35 USC § 112(6) and the Doctrine of Equivalents," IPT, pp. 32-33 (July 1998), especially the discussion of the unpublished opinion in Brunswick Corp. v. U.S., 46 USPQ2d 1447 (CAFC 1998). See also, L. B. Ebert, "More On Pfaff v. Wells Electronics: Knowing It When You See It," IPT, pp. 16-17 (Sept. 1998), especially endnote 5.

from IPT, Feb 2002:

There is a world of difference between the Kinzebaw issue and, say, the issues in Insituform, wherein the patentee never gave up more than one cup. Insituform Technologies v. Cat Contracting, 58 USPQ2d 1392 (CAFC 2001) [unpublished].

See “Insituform: Festo for the Festophile,” IPT, pp. 48-49 (May 2001) and separately “Does Festo Change Patent Prosecution?”, Id. pp. 44-45

Microsoft's Excel

Although Microsoft introduced its Excel spreadsheet program in 1985, it didn't file a trademark application April 2004. Microsoft has not officially registered trademarks for some of its most popular brands, including Office and Word.

Reuters on VIOXX

The benefits of COX-2 inhibitors VIOXX and CELEBREX were the lowered incidence of GI problems, not enhanced pain relief. For people who did not suffer GI problems with NSAIDS, there were no benefits.

from Reuters on November 14, 2004:

As the implications of Vioxx sink in, companies are likely to reexamine the relationship between risk and reward in the drug development process, especially for those products that offer only incremental benefits over existing treatments, they said.

"Vioxx is a crystallizing event for the drug industry," said Roger Longman, managing partner at Windhover Information, a healthcare information company. "Investors, patients, doctors and regulators are questioning the whole notion of how big pharma does its work."

from a post by Lehmann on corante (Derek Lowe):

Responding to the question whether the cardiac dangers of Vioxx are drug-specific or relate to the entire class of COX-2 inhibitors (Coxibs), scientific evidence based on gene knockout studies pointed out that it is an adverse reaction associated with the mechanism, hence the whole class of drugs. See DrugIntel for details, where these problems for Vioxx were predicted in spring 2003. Clinical studies confirming this danger take longer and suffer from less precision, and are more difficult to conduct objectively for obvious reasons. The Cochrane Reviews (2004) commented "For individuals in whom cardio-prophylactic low dose aspirin is indicated, the evidence suggests that celecoxib [Celebrex] offers no additional benefit in terms of GI safety." On the social aspects, agreed that withdrawing every drug with side effects or dangers would leave us with no drugs. However, judging Vioxx on medical risk-benefit, it never was a winning proposition - omeprazole + ibuprofen was judged to be safer, not to mention cheaper, by the Oregon Health & Science University / Oregon Health Resources Commission cogent and objective review on the topic. Hopefully the constructive result will be that Merck returns to its tradition of research resulting in truly novel drugs addressing unmet medical needs, rather than overmarketed, overpriced drugs with selling points rather than medical superiority.

Ranbaxy withdraws AIDS drugs from WHO list

from Reuters:

Indian firm Ranbaxy took all its anti-AIDS drugs off the U.N.'s approved list, the World Health Organization said on Nov. 9, 2004, dealing a blow to efforts to make cheaper medicines more widely available to treat AIDS.

The United Nation's health agency said the company took the step voluntarily after discovering "discrepancies" in tests done to show the antiretrovirals were equivalent to brand-name drugs.

The Geneva-based agency had already announced in August that it was dropping three generic HIV/AIDS drugs produced by the firm, India's largest pharmaceutical company by sales.

"Ranbaxy Laboratories Limited has informed the World Health Organization that it is voluntarily withdrawing all its antiretrovirals," WHO said in a statement.

WARF's US 5,843,780 on stem cells

The November 13 issue of the Milwaukee Journal Sentinel has an article on WARF's patent in the stem cell area. However, the article does not mention the patent number or some of the issues surrounding the patent.

In 1998, James Thomson and his research team reported in Science [Science 1998, 282, 1145] that they were able to isolate and grow embryonic stem cells in a way that maintained their pluripotency—the ability to transform themselves into any kind of human cell. Using embryos that had been discarded by couples who sought in vitro fertilization at a University of Wisconsin clinic, Thomas generated five human embryonic stem cell lines derived from blastocysts, a hollow ball of about 150 cells that develops a few days after fertilization.

The patent in question is US 5,843,780, although note also US 6,200,806.

In October 1999, the WiCell Research Institute was set up, with Thomson as scientific director, specifically for stem-cell research and is operated by the Wisconsin Alumni Research Foundation (WARF), a not-for-profit entity that has managed patents on behalf of the University of Wisconsin since 1925. WARF has created an endowment that returns on the order of $20 million annually to UW-Madison for unrestricted use in research and education. Stem cell lines are one of their big products. Thomson's work was partially funded by Geron Corporation.

On August 9, 2001, President Bush announced that federal funds would be available to support limited human embryonic stem cell research. The new policy provided that federal funds could be used for research on 64 existing stem cell lines that have already been derived or were already in existence as of the date of the announcement.

On August 13, 2001, WARF filed a lawsuit 19 in U. S. District Court in Madison, Wisconsin asking the court to declare Geron's exercise of an option invalid [WARF v. Geron, Civ. No. 01-C-459-C (D. Wis. Aug. 2001)]. WARF later amended its complaint to ask the court to declare that Geron's license does not cover rights to research products that might be developed from the stem cells. WARF, which through the Bayh-Dole Act holds patents comprising claims on the methods described in the Science article, sued Geron for asserting that it had exclusive rights to research products and services. Calling such an assertion contrary to their contract with the company and NIH guidelines, WARF asserted its own right to sell and distribute the stem cells to researchers.

In September 2001, NIH began discussions with WARF concerning access by federally-funded researchers to human embryonic stem cells. WARF was said to hold patents affecting 64 stem cell lines, including absolute rights to five lines. HHS Secretary Thompson announced that an agreement has been reached with WARF that allowed federal researchers access. Further, as a result of guidelines set up in August-September 2001 time period, the NIH, not WiCell, will retain ownership of any new intellectual property arising from that research, and researchers may publish their results without restrictions.

from Milwaukee Journal Sentinel (Nov. 13, 2004):

Geron funded much of the early research at the University of Wisconsin-Madison leading to James Thomson's first-ever isolation of human embryonic stem cells in 1998.

The company has certain rights to develop therapeutic and diagnostic products involving certain stem cells. Geron has said it hopes to be in clinical trials by the end of 2005 or early in 2006 for therapies for spinal cord injuries.

That makes Geron a fan of WARF's patent.

"At the very root of stem cell research is the preparation of the stem cell lines," said Peter Balbus, managing director at Pragmaxis LLC in Glen Ellyn, Ill. "That's why that patent is so coveted and controversial."

Theoretically, the patent gives WARF the right to collect royalties until December 2018 on any products or therapies made with stem cells. In reality, WARF is likely in for a vicious fight.

"From what we've heard over here, (WARF's patent) will be difficult to hold up in Europe," said Stephen Minger, who says he and others who made three stem cell lines at King's College in London didn't make them with "anything resembling" the methods described in WARF's patent.

WARF is appealing a decision by European patent authorities denying it a stem cell patent, spokesman Andrew Cohn said.

WARF and Singapore-based ES Cell International are the world's biggest distributors of stem cells. WARF has licensed stem cells to 244 academic institutions and eight companies, Cohn said.


****
from http://www.news.wisc.edu/7529.html

Carl Gulbrandsen, WARF's managing director: "One reason we have filed patent applications in some areas is to ensure that researchers here have freedom to operate. It takes the fun out of your research if somebody else owns it, and particularly if someone else can direct what you can do with it. If industry is going to own all the technology, and we're beholden to them to have rights to do the research, industry is going to set the agenda. If academia owns the technology, then academia can use it the way it wants to."

Compared to the often snail-like pace of academic publishing, the patent process can look comparatively swift. UW Animal Science Professor Mark Cook recalls that he once discussed an invention with a reporter, not realizing that the patent application hadn't been filed. Such a disclosure starts the clock on U.S. patents and could invalidate patent claims entirely in some countries. "I called WARF and said, "You've got until the evening news to get it done.' They got it filed by 5 o'clock," Cook says. "WARF can move very quickly if it needs to."

More digital camera patent litigation

from http://english.chosun.com/w21data/html/news/200411/200411110028.html
-->

U.S. patent license company Saint Claire has filed a suit against Samsung Electronics in a U.S. federal court for infringing patents on their digital camera patent technology. Saint Claire asserts five companies -- Samsung Electronics, Hewlett-Packard, Matsushita, Nokia and Kodak -- appropriated digital camera technology patent in four cases.
Last year, Saint Claire sued eight Japanese digital camera companies, including Canon, Nikon, Fuji Film, and Minolta for violating patent law.

Dispute over royalty payments at Kent State University

In another aspect of the Bayh-Dole Act, there is currently a dispute between a professor (Kumar) and a university (Kent State University) over property royalty payments to the professor.

from http://www.ohio.com/mld/ohio/news/10152675.htm?1c
-->
Physics professor Satyendra Kumar believes he is not receiving royalty payments involving two patents that are part of eight licensing agreements the university struck with companies, said Cheryl Casper, president of AAUP-KSU. Casper said the patents deal with liquid crystal technology.

Delzell/Herrick study on IBM microprocessor workers

There had been a controversy with Elsevier's journal Clinics in Occupational and Environmental Medicine not publishing an article by Richard Clapp on cancer rates among IBM microprocessor workers.

Now a study ordered by IBM reports opposite conclusions to those of Boston University's Clapp. Underlying the different results is a question of the appropriate baseline for comparison, an issue which also is found in the Vioxx discussion.


from The Scientist (Nov. 9, 2004):

An IBM-commissioned study has found that employees at the company's microprocessor manufacturing plants had a lower rate of cancer than would be expected, contradicting results of a yet-unpublished study that found higher rates of cancer among workers and is at the root of a controversy involving the journal that was to publish it.

"Overall mortality among IBMers at the study locations was 35% lower than the comparison populations," Martin Sepulveda, IBM's vice president for occupational medicine, wrote in a company-wide employee memo. "Cancer among IBM employees was 16% lower."

The findings fly in the face those of another study, by Richard Clapp, at Boston University, who used IBM's employee dataset and concluded that there were higher mortality and cancer rates at plant facilities. The judge forbade Clapp from testifying during a recently resolved court case in California between IBM and former employees diagnosed with cancer. Because of the case, no one has seen the study.

Biotech DJ actions against Columbia University dismissed

Judge Mark Wolf in D. Mass. dismissed declaratory judgment [DJ]actions filed by large biotechnology companies (including Genzyme and Biogen) against Columbia University that alleged that Columbia University was improperly trying to extend its rights to a process widely used to engineer new drugs.

from the Boston Globe:

In dismissing the claims, Wolf let stand Columbia's patent itself, which the school is having reexamined by the US Patent and Trademark Office. David I. Gindler, an attorney at the firm of Irell & Manella LLP in Los Angeles who represents Columbia, said Wolf's ruling leaves open the possibility of a future decision by the government agency that would extend the school's rights after all.

Richard Axel and two colleagues created a way to splice bits of DNA into living cells to create human proteins, a basic technique used to produce many of today's best-selling biotechnology products such as Genzyme's Cerezyme for Gaucher disease and Biogen Idec's multiple-sclerosis drug Avonex.

Microsoft: Licensing, not Litigating?

From article by Ina Fried in CNET news:

-->One place the software titan is trying to avoid is the courtroom. Following the lead of its intellectual property lawyer, former IBM attorney Marshall Phelps, Microsoft is seeking to beef up its licensing without having to file a bunch of suits to do so. Kaefer noted that Phelps built IBM's intellectual property business without filing a single lawsuit (although he inherited one when he took the job). <--

The article also states

-->Microsoft also is rapidly trying to boost its presence among the elite in the patent filing world. The software giant, which holds less than 4,000 patents, plans to file 3,000 applications for patents this year alone. <--

The 3,000 number seems to be higher than in previous reports. One wonders if proportionately more technical people were hired to reach the 3,000 goal, or if applications are to be filed on lower level items, using the same number of technical people. The IBM approach was to build a "wall of patents," with the idea that if any one, or a dozen patents, might not survive challenges, there would be one patent of the thousands that would win for IBM, and the competitor would lose.

NEC sues Harris

from Forbes, Nov. 8:

In a filing in the federal district court for Northern California, NEC asserted that Harris infringes claims of seven patents in the United States and four in Canada for point-to-point digital microwave radio terminals. [There was a separate filing in Canada over four Canadien patents.]

The complaints - filed in NDCa and Canada's Federal Court - concern technology on interfaces, transmitters and radio protection switching technology in Harris's products, which mobile phone service operators use to relay calls between cell phone users.

[NEC is the putative discoverer of the fullerene carbon nanotube.]

TV show: Inventor's Showcase

A representative of a new TV show, Inventor's Showcase, will talk about marketing techniques at a seminar on November 9, 2004 sponsored by the Florida A&M University Office of Technology Transfer. The representative will be keeping an eye out for contestants in what is being dubbed the "American Idol" for inventions. As in "American Idol" and "Star Search," the audience will vote for the invention it most likes or finds most useful.

Inventor Andrew Toti

From Roger Hoskins in the Modesto Bee about inventor Andrew Toti.

Good news-->

Toti's contributions include:

The "Mae West" inflatable life jacket, which saved thousands of lives in World War II and beyond.

The automated chicken plucker, a device he modeled in his youth while plucking his parents' poultry.

Variations on horizontal and vertical blinds.

Lightweight construction beams, which are used now most often in Australia.

His latest invention is the EndoFlex endotracheal tube, a breathing tube used during surgery. Toti's version has a flexible tip which makes it easier for doctors to insert the tube with less danger to the patient.

Japan has bought a license to import 300 million units, and this week's episode of the television show "ER," guest-starring Ray Liotta, will feature the device.

Need for a good patent attorney-->

In his office about 50 yards from the museum, he keeps other mementoes of his inventions. There are 15 file cabinets filled with papers relating to litigation Toti has been involved with in trying to protect his patents.

Patent infringement kept him in courts for much of the time he wasn't inventing. [NOTE: Recall the Wright Brothers. Wilbur Wright died from contaminated food consumed while in Boston, visiting his patent attorney.] His experience leads him to offer practical advice for would-be inventors:

Never, ever turn your ideas over to one of these idea companies. "They will take all your money and blame you when the idea goes nowhere. Then they will ask for more money," Toti said.

A good invention is only half the battle, he said. After you have it, you have to prove it to a good company and prove it can be made profitably.

And while you're at it, Toti advised getting a good patent attorney. He said you can recognize a good patent attorney because they always cost good money.



Less good-->

If he were younger, he said would continue to tackle a pet project, perpetual motion — something some physicists believe is impossible. But such a machine would offer the advantage of an endless power supply.

Toti's machine is electromagnetic and mechanical. He said he has reached 95 percent to 97 percent levels, meaning a power conversion loss of 3 percent to 5 percent. He believes his 3 percent energy loss is the lowest anyone has achieved.

"I still believe it's possible," he said.

Development of innovation at the University of Virginia

A November 7 article by John Yellig in the Daily Progress in Charlottesville describes efforts of that University of Virginia to commercialize faculty inventions. Pertinent text is as follows:

-->Recognizing the need to better take advantage of commercial opportunities such as Avaki, the University of Virginia Patent Foundation created Spinner Technologies Inc. in 2000. Spinner is a for-profit subsidiary of the foundation tasked with helping faculty start-ups to market.

“Spinner was formed by the patent foundation and the university in recognition that faculty entrepreneurialism had really become a national movement,” executive director Robert MacWright said. “We wanted to embrace that, and the patent foundation has given an absolute preference to licensing inventions to faculty start-up companies since 1998.”

The university, not faculty inventors, owns the rights to intellectual property developed with UVa resources. In exchange for equity in a new company, Spinner licenses the intellectual property to faculty entrepreneurs. Spinner also provides the new company with office and laboratory space, available at three facilities: the Corridor One Building and the Corner Building, both on West Main Street, and the Emerging Technology Center at the University of Virginia Research Park at North Fork.

All of the physical facilities are leased to the company at discount rates or, in exchange for a 5 percent to 10 percent stake, provided free for the first year or until the company raises $1 million in financing.

The lab space is an important step in a research and development company’s path to profitability. In order to qualify for federal Small Business Innovative Research grants, a primary source of funding for many R&D startups, a company must do 60 percent of its research in its own lab.

“We help reduce the hurdles, and in some ways the risk, that these companies encounter, so they have a greater chance of success,” Spinner general manager Andrea Alms said.

Since it was founded, Spinner has helped start nine companies, Alms said. Spinner’s goal was to start 30 to 50 companies in its first five years, according to news accounts of its founding in 2000.<--

Of the statement -->The university, not faculty inventors, owns the rights to intellectual property developed with UVa resources. <-- if the invention was developed with the use of federal funds, then the provisions of the Bayh-Dole Act attach. With the approval of the federal funding agency, the university may take title to the patents arising from the research, subject to certain retained rights of the federal government. If the university declines to patent, the faculty inventor may take pursue patents, as indeed happened in the case of Professor Madey, of fame in the case Madey v. Duke University.

The article also mentions criticisms of the Foundation:

-->The foundation is too passive in licensing its patents, he said, adding that the foundation relies too heavily on a business discovering the existence of a faculty member’s patent, rather than actively putting that patent in the hands of the licensee, he said.

“The likelihood that your patent is going to be licensed is under 1 percent,” said Martin, a former faculty member in the Medical Center’s departments of radiology and orthopedic surgery.

He added that the problem is not unique to UVa. “None of the universities in Virginia, and very few nationally, have the means to represent and warrant that the patents that they have are of any good business value. They don’t have the means of making patents available to businesses that might be interested. They rely on discovery.”

In the instances where the foundation does actively shop an invention around, it oftentimes exposes the university to significant losses because in attempting to determine the patent’s marketability, the foundation exposes the substance of an invention without filing a patent, Martin said.

“The university loses phenomenal amounts of potential revenue,” he said. “I think the intent of what they do is very good. I think the way they do it probably destroys more value than it helps create.”<--

In any context implicating the Bayh-Dole Act, the statement -->the foundation exposes the substance of an invention without filing a patent<-- is problematic. Under the Act, the university/foundation must maintain confidentiality of, and promptly file patent applications on patentable inventions, before disclosing the invention to third parties. Thus, in a Bayh-Dole context, the university/foundation should not be exposing patentable inventions to third parties prior to filing a patent application.


The article also mentions alternative sources of funding:

-->David Kalergis, a faculty member who successfully started a company without financial assistance from the foundation, said the university shouldn’t be regarded as the be-all, end-all of startup capital.

“In terms of actual investment in small companies, I think that’s a role for private investors,” he said. “How do [university staff] make decisions among their faculty without getting caught up in charges of favoritism?” [NOTE: The Berkeley/Novartis interaction illustrates that there are complicating issues, apart from favoritism.]

Kalergis’s company, Diffusion Pharmaceuticals, is developing a drug to treat cellular oxygen deprivation. The company recently secured $2.1 million in private investment and $1.2 million from the U.S. Office of Naval Research.<--

No patent attorney questions NTP patents?

It appears that the Court of Appeals for the Federal Circuit is getting around to the NTP v. RIM case and will examine a pro-NTP decision rendered in the ED Va. Oral arguments in the appeal had been heard June 7, 2004. In a trial in November 2002, the jury took only five hours to negate RIM’s defense of patent invalidity and to find RIM guilty of infringement of five NTP patents, handing down a $23 million damages verdict. [The question of infringement was decided by the jury; the judge determines whether or not an injunction is imposed. On the case, see 2003 WL 23100881 ]


A quote in a CNET news article by Richard Shim caught my eye:

-->"We have yet to find a legal expert or independent third party outside of RIMM that is familiar with the NTP case and who thinks that RIMM will come out on top," Pablo Perez-Fernandez, an analyst with investment bank Standford Group, wrote in a research note last week. "Our own review of court proceedings and the patents involved in the case suggest that NTP has a very strong position." <--

The CNET article also mentioned that RIM had filed a re-examination request. [The PTO approved a director-initiated reexamination on December 26, 2002 and announced the reexamination in January 2003. Director-ordered reexaminations happened with the Eolas patent and with the Katz patents. Four of the five litigated patents (in the jury verdict of November 2002) are part of the re-examination. Overall, there are five patents being re-examined: U.S. Patent Nos. 5,625,670; 5,631,946; 5,819,172; 6,067,451 and 6,317,592. Because one patent of the jury verdict is not being re-examined, an adverse result to NTP in the re-examination would not necessarily change the outcome. NTP’s counsel, James Wallace, has downplayed the significance of the Patent Office’s decision by noting that NTP’s oldest patent is not part of the reexamination process. "The other four [patents] could go down the tubes, and we’d be fine based on that patent," according to Mr. Wallace. ]

Further, the US Congress made some comments about the case. The Chief Administrative Officer of the House of Representatives, James Eagen III, sent a letter to counsel for both parties advocating a resolution to the patent dispute that did not halt "Blackberry" operations. In this letter, Eagan wrote that "Not only do members and staff depend on the Blackberry service for daily communications and business operations, the House relies on the device for notifications and communications in emergency situations." By one report, the House has issued almost 3000 "Blackberry" devices to House members and staff and invested in over $6 million in the supporting proprietary technology. Also at issue: "On September 11th, [Blackberrys] were the only thing that worked. Pay phones and cell phones were out." He added, "In the interest of national security, we just can't have people's Blackberrys turning off."

Canada's Research In Motion (RIM) makes wireless products for the mobile personal communication market, including the BlackBerry wireless e-mail service, an interactive pager, wireless PC card adapters and embedded radio modems.

More on patent grant rate at USPTO

In response to discussion about the difference in method between Quillen/Webster (who reported on patents ALLOWED by the USPTO) and Clarke (who reported on patents ISSUED by the USPTO), I performed an additional study, which has now been accepted for publication.

From the abstract:

-->In the present paper, we use data from the USPTO to show that the divergence in grant rate numbers does not arise from the difference between "allowed" and "issued" applications; we suggest that the elevated numbers in the Quillen and Webster approach arise from a flawed numerical approach.<--

The initial study was Lawrence B. Ebert, Patent Grant Rates at the United States Patent and Trademark Office, 4 CHI-K. J. INTELL. PROP. 108 (2004); available http://jip.kentlaw.edu/art/volume%204/4-1-4.htm).

Of the incorrect footnote in the article by Mark Lemley and Kimberly Moore in the Boston University Law Review [Ending Abuse of Patent Continuations, 84 B. U. L. Rev. 63 (2004], it is noted

In working with data on issued patents to identify the number of patents based on continuing applications, Clarke merely did a more thorough job of what was attempted in the QWII. As stated in the footnote of Lemley and Clarke: "The 85% number provided in the revised Quillen et al. study is based on actual data about the applications that ISSUE based on continuations," [emphasis added], QWII made their correction based on data on ISSUED applications, not on ALLOWED applications. If the use of data on ISSUED applications means an assumption that every allowed continuation resulted in a patent, then it is an assumption made by both Quillen/Webster and Clarke. Because it is assumed by both, this assumption is not a basis to select the results of Quillen/Webster over those of Clarke.

Umea University team questions efficacy of atenolol beta blocker

Reuters, November 5, 2004:

"Our results cast doubt on atenolol as a suitable drug for hypertensive patients," Professor Lars Hjalmar Lindholm, of Umea University in Sweden, said in a report in The Lancet medical journal.

Atenolol belongs to a class of drugs known as beta blockers, which are prescribed for high blood pressure, angina and to prevent repeat heart attacks. The drugs help relieve stress on the heart and slow its beat.

Lindholm and his team examined the results of four studies that compared atenolol with a placebo, or dummy pill, and five that contrasted its effects with other blood pressure-lowering drugs.

Atenolol, which is sold under the brand name Tenormin by drug company AstraZeneca, was first introduced in 1976. It has been off patent for many years and most sales now consist of generics rather than the AstraZeneca brand.

The research showed the drug was no better than a placebo in reducing deaths from heart attacks or heart disease. But in one study the drug reduced stroke more than in patients who were not receiving any treatment.

"The main finding was that atenolol could not be shown to have the same preventive effects on cardiovascular disease as other common anti-hypertension drugs," Dr Bo Carlberg, who worked on the study, said in an interview.

"Compared with the placebo, atenolol did not decrease all-cause mortality. It did not decrease cardiovascular mortality and did not decrease myocardial infraction (heart attack)," he added.

AstraZeneca questioned the researchers' interpretation. "We believe the study is inconclusive," a company spokesman said.

Cendant Publishing sues Amazon over US 6,782,370

Dow Jones:

In a lawsuit filed Oct. 29, 2004 in the U.S. District Court in Wilmington, Del., Cendant Publishing asserts that Amazon is infringing claims of US Patent 6,782,370 entitled "System and Method for Providing Recommendation of Goods or Services Based on Recorded Purchasing History."

The application for the '370 patent, which issued August 24, 2004, was filed September 4, 1997.

The first claim of the '370 patent is a business-method claim and recites:

A computer-implemented method for the recommendation of goods and/or services to potential customers over a distributed network based on customer buying history utilizing an information processing system containing processing means having transmission means for receiving and transmitting data, and database storage means for storing information in database files, the method comprising the steps of:

receiving customer commands specifying a particular good or service to be used as filter data;

storing information pertaining to goods and/or services purchasing history of previous customers;

comparing said filter data with said stored information and determining whether, for said filter data, corresponding entries exist within the stored information; and

if corresponding entries exist, displaying the identity of other goods and/or services purchased by said previous customers who have purchased the good and/or service used as said filter data.

Independent claim 7 recites:

A computer-implemented interactive system for assisting a potential customer in purchasing decisions from among a plurality of goods or services, the system comprising:

an operator interface for enabling potential customers to input requests to said computer, including requests for:

the purchase of goods or services,

information concerning goods or services,

recommendations of goods or services based on operator input;

a database maintained in said computer, containing information pertaining to goods and/or services purchasing history of previous customers;

means for processing inputted requests and for filtering relevant history information regarding said inputted requests from said database;

a distributed network for transmitting requests from said operator interface to said computer and for transmitting responsive information from said computer to said operator interface;

interface whereby goods and/or services identification information corresponding to goods and/or services purchased by previous customers who have purchased the goods and/or services requested by said potential customers are transmitted to said operator interface for use by said potential customers.

Independent claim 16 recites:

A computer program product having a computer readable medium having computer readable code recorded thereon for the recommendation of goods or services in response to user input, comprising:

input means for receiving user commands specifying a particular good or service to be used as filter data;

database storage means for the retention of data concerning goods or services purchase decisions of prior users; and

means for filtering said database storage means using said specified particular rood or service to obtain recommendations of other goods or services to a user based on said inputted user commands.

The Cendant patent cites to two Amazon publications:

Amazon.com, www.amazon.com, no date known.*
"Amazon.com Catapults Electronic Commerce to Next Level With Powerful New Features", Sep. 23, 1997.

***UPDATE from Jim Rapoza of eWeek:

As soon as I read about this [Cendant] patent, I remembered a conversation I had in the mid-1990s with a group of developers who were starting a company called Net Perceptions. These guys were touting a technology that would come to be called "collaborative filtering," a capability that Amazon has made classic with its product recommendations. (For example, "People who bought this book also bought ... ")

I distinctly remember one of the developers saying that this was a big step forward because, before that time, Web sites based their recommendations only on an individual buyer's purchase history. I didn't dispute this because it's the plain truth. I mean, it didn't take a genius to figure that out.

Like all of the worst patents, the Cendant patent reaches well beyond its main target. In fact, you'd be hard-pressed to find an e-commerce site that doesn't provide recommendations a la Amazon. So, now, the entire online commerce business has to hold its breath because the patent office isn't concerned with doing things the right way.

But as bad as the Cendant patent is, it isn't even the worst or most potentially damaging one to make itself felt recently.

Dell is currently facing patent claims from a company called DE Technologies, which holds a patent in the innovative, completely nonobvious and never-been-done-before process of "patent covering international transactions handled over the computer."

South Korean official Lee Hee-Beom sends warning in Matsushita/LG dispute

from the China Post:

South Korean Commerce, Industry and Energy Minister Lee Hee-Beom said a message has been sent to Tokyo calling for its "fair and prudent" handling of Matsushita's request to ban imports of LG-produced plasma display panels (PDPs). Lee told reporters: "The [South Korean] government is deeply concerned. The Japanese government should make a fair and prudent ruling."

UPDATE. The warning of Mr. Hee-Beom was not heeded.
From Forbes/Kyodo on Nov. 11:

OSAKA, Nov 11, 2004 (Kyodo via COMTEX) -- The Tokyo Customs office on Thursday accepted a demand by Matsushita Electric Industrial Co. that imports of plasma display panels produced by LG Electronics Inc. of South Korea be suspended due to its alleged patent infringement, Matsushita officials said.

The step will enable customs houses across Japan to bar LG Electronics-made PDPs from entering the Japanese market for two years, the officials said.

Earlier this month, Matsushita filed for a court injunction to halt sales in Japan of the South Korean firm's plasma displays, claiming the maker infringed its patents.

UPDATE (Nov. 22)

Laying down the gauntlet to its rival, LG launched the world's largest plasma TV on Monday, Nov. 22, 2004, with a screen measuring 71 inches (180 cm) diagonally. That came just months after Matsushita, which makes Panasonic products, released a 65-inch set. The two are in a legal dispute over alleged plasma patent infringements.

Dell sued over DE's US 6,460,020

BusinessWeek reports that on Oct. 27, 2004 Dell was sued in a U.S. District Court by the Virginia company DE Technologies, which alleges that the PC giant has infringed claims of its US Patent 6,460,020 covering a system for "facilitating international computer-to-computer commercial transactions." BusinessWeek also noted that critics of the USPTO have long said it lacks the resources to fully vet Internet business-method patents. The number of applications for such patents soared to 8,700 in 2001, from 927 in 1997. Last year, patent examiners received 6,000 such applications.

To date (Nov. 3, 04), the '020 has not been cited by any US patent.

The first claim of the '020 patent recites:

A computer implemented process for carrying out an international commercial transaction comprising:

running a transaction program on a computer system so as to integrate processes including:

(a) selecting a language from a menu in which to view cataloge information on products;

(b) selecting a currency from a menu in which to obtain price information;

(c) selecting a product to be purchased and a destination for shipping such product to be purchased;

(d) accessing at least one local or remote database for obtaining

(i) price information for the product to be purchased; and

(ii) a product code for an international goods clasification system pertinent to such product; and

(iii) international shipping information related to an origination point of such product and said destination;

(e) calculating costs involved in moving such product to said destination based upon said destination and such product;

(f) determining a total cost of the transaction that includes a price of the product;

(g) receiving an order for such product thereby triggering an electronic process for confirming existence of available funds; and

(h) upon confirmation of availability of said funds, accepting said order, generating an electronic record, such record including the content of a commercial invoice, to facilitate passage of such product to said destination.

Technically, this method claim has only one step ("running a transaction program") with the itemized claim elements being processes that must be integrated. Of these processes, one notes no element --confirming the availability of such funds--.


Independent claim 13 recites:

A system for carrying out an international commercial transaction over a network of computers, the system comprising:

means for running a transaction program so as to integrate components including;

(a) means for determining a language in which to view catalogue information on products;

(b) means for determining a currency in which to obtain price information;

(c) means for receiving a selection of a product to be purchased and a product to be purchased and a destination for shipping such product to be purchased;

(d) means for accessing at least one local or remote database for

(i) price information for the product to be purchased; and

(ii) a product code for an international goods classification system pertinent to such product; and

(iii) international shipping information related to an origination point of such product and said destination;

(e) means for calculating costs involved in moving such product to said destination based upon said destination and such product;

(f) means for receiving an order for such product thereby triggering an electronic process for confirming existence of available funds; and

(g) upon confirmation of availability of said funds, means for generating an electronic record, such record including the content of a commercial invoice, to facilitate passage of such product to said destination.




The businessweek article began:
-->Remember when dot-coms discovered the U.S. Patent & Trademark Office? In the late '90s, no puffed-up Internet idea was complete unless it included plans to file for patents that would supposedly recognize claims of being the first to do this or that in cyberspace. Scads of applications were made, and some patents were granted, but none was sillier than Amazon's (AMZN ) failed 1999 attempt to keep rival Barnes & Noble (BKS ) from copying its "one click" payment system.<--
To recall history, amazon.com got an injunction from the district court, which injunction was later vacated by the CAFC. Amazon and Barnes & Noble later settled the case.

Batteries are still the weak link

An article by Newhouse News Service reiterates that batteries are still the weak link in going cordless, wireless.

The battery business expects sales of 101 billion dollars in 2004, with NiMH (nickel metal hydride) the leader. However, carbon-lithium and other lithium ion batteries are on the front edge of technology. [refer to earlier post concerning John Goodenough for some litigation in this area]

More on VIOXX

Both the Wall Street Journal and the Associated Press had articles on the VIOXX matter this week.

In an article entitled --Report: Merck hid Vioxx risk evidence--, the AP discussed a March 9, 2000 email from Merck research director Edward Scolnick stating an elevated risk of heart attack and stroke was "clearly there." [for example, Trenton Times, p. C8, Nov. 2, 2004)]

The AP cites a "media report," which apparently is that of the Wall Street Journal on Monday, November 1, 2004. More discussion of that article is on Derek Lowe's blog.

UPDATE. from the Philadelphia Inquirer on Nov. 5, 2004:

Swiss researchers are reporting today in an international medical journal that evidence was clear and overwhelming in 2000 that Vioxx doubled the rate of heart attacks and that Merck & Co. Inc. should have withdrawn the drug four years ago.

The analysis, by Peter Juni and colleagues at the University of Berne, looked at results from 18 Vioxx studies, all sponsored by Merck, which showed that 41 patients out of about 11,000 Vioxx users had suffered heart attacks by late 2000, twice the rate of those receiving a placebo or other painkillers.

The study, funded by the Swiss National Science Foundation, analyzed 18 randomized controlled Vioxx trials and 11 related observational studies. The results were published online by the British journal the Lancet. The data were based on data obtained primarily from the U.S. Food and Drug Administration.

When Merck withdrew Vioxx on Sept. 30, after a company-sponsored study found the risk of heart attack and stroke doubled in users after 18 months, Merck said the data were "unexpected."

Merck said in a news release yesterday that it had been "vigilant in monitoring and disclosing the cardiovascular safety of Vioxx" and "we absolutely disagree with any implication to the contrary."

The Swiss researchers concluded that the heart attack risk was as great in patients taking smaller 12.5-milligram and 25-milligram doses as the 50-milligram Vioxx dose. "The increased risk appears not to be dose-dependent," Juni said in telephone interview.

Researchers said the increased rate of heart attacks occurred in patients who took Vioxx for less than six months and in those who took it longer. "We don't have evidence to suggest the length of treatment influences increased risk," Juni said.

In a scathing editorial that accompanied the Swiss academic researchers' analysis, Lancet editor Richard Horton faulted Merck for "astonishing failures" in monitoring the post-marketing safety of its drug. Horton also criticized the FDA for "lethal weaknesses" in regulatory oversight.

The Lancet had commended Merck a few weeks ago for "acting promptly" to withdraw Vioxx, but said today that its praise "was premature."

"With Vioxx, Merck and the FDA acted out of ruthless shortsighted and irresponsible self-interest," the editorial says. "It's hard to see how Merck's chief executive officer, Raymond Gilmartin, can retain the confidence of the public, his company's most important constituency."

The Lancet editorial also criticized the FDA. "Too often, the FDA saw and continues to see the pharmaceutical industry as its customer - a vital source of funding for its activities - and not as a sector of society in need of strong regulation," it says.

Cardiovascular risk

The Swiss researchers said that while the data established "robust evidence" of cardiovascular risk, the data did not indicate a greater risk of stroke or cardiovascular deaths among Vioxx users. "The number of those events was too small to reliably determine the exact risk," Juni said.

In March 2000, when results of Merck's Vigor study showed that Vioxx patients had heart attack rates four or five times higher than the naproxen group, the company said the differences were due to naproxen's heart-protective effect.

However, the Swiss researchers said in the Lancet that Merck's notion was based on "hypothesis" and not on studies to support it. Researchers said the cardio-protective effect of naproxen, "if it exists, was small" and "certainly could not explain the increased heart attacks" in Vioxx users.

In its response, Merck said that data used in the Lancet analysis "are not new and are essentially consistent with the results from the combined analyses of randomized controlled clinical trials that Merck published in 2001."

What's more, Merck said, the Lancet's analysis is "not as comprehensive as our combined analyses because it fails to include several studies, including two large placebo-controlled studies that are publicly available and were summarized in the U.S. prescribing information for Vioxx."

Two things to prove

Prudential Equity Group analyst Tim Anderson said the Lancet's report "plays into the hands of plaintiffs' attorneys" and "has the ability to bolster their case against the company." However, Anderson said lawyers suing Merck must prove two things: that the company was negligent and knew about the Vioxx risks, and that the drug played a role in causing heart attacks or strokes.

Proving causation - that Vioxx caused people's heart problems - will be "much harder to achieve," Anderson said. "We do not think, at this time, at least, that the company's ultimate liability will sum to fen-phen-like proportions," he said, referring to the $16.6 billion Wyeth has set aside to pay for liability from its recalled diet drugs.

David Risinger, an analyst at Merrill Lynch & Co. Inc., estimates that Merck's legal costs could reach $4 billion to $18 billion, including $2.5 billion to $15.3 billion to cover "serious" cardiovascular claims.

Merck said recently that at least 300 lawsuits have been filed by people who took Vioxx. More than 20 million Americans have used Vioxx since it was introduced in 1999. With annual sales of $2.5 billion, Vioxx accounted for about 11 percent of Merck's revenue last year.

Ambrogi article on intellectual property blogs

Robert J. Ambrogi presented a survey of IP blogs in the New Jersey Law Journal in October 2004. Sadly, this blog was not mentioned, nor was the blog of Professor Lawrence Lessig of Stanford University.

A few of the entries:

--> IPTAblog, www.iptablog.org. Third-year law student Andrew Raff writes with a focus on how computers and the Internet affect the practice and substance of law, particularly within the areas of copyright, trademark and privacy.

--> I/P Updates, http://ip-updates.blogspot.com. William Heinze, an IP lawyer in Atlanta, where he is of counsel to the firm Thomas, Kayden, Horstemeyer & Risley, provides news and information for IP practitioners. He is a frequent and thoughtful writer who covers a range of IP-related matters.

--> The Invent Blog, www.inventblog.com. Stephen Nipper, a patent attorney in Boise, Idaho, provides news and information about patents, trademarks, copyrights and IP law in general. But of most interest are his postings about unique and noteworthy inventions and inventors.

--> Navigating the Patent Maze, http://lorac.typepad.com/patent_blog. Having spent part of her career spearheading development of an online IP database, Carol Nottenburg, now a Seattle patent lawyer, brings to her blog a unique focus on finding and using online patent data.

AIPLA meeting discusses patent reform proposals of FTC and NAS

Jose Cortina, writing of the AIPLA meeting discussing the reforms proposals of the FTC and the NAS wrote of the topic of questionable patents:

-->Judge Rader of the CAFC questioned a number of the recommendations and conclusions reached in the report. For instance, in addressing the issue of “questionable patents,” Judge Rader pointed out that the decisions being handed down by the Federal Circuit simply did not support the proposition that the USPTO was issuing a large number of patents of questionable value. Members of the audience also questioned creation of a research use exception tailored to universities, and properly pointed out that the role of universities today is to conduct research for the purpose of making money.<--

**Judge Rader's comments would seem to undercut the Quillen/Webster suggestion that enhanced grant rate indicates a lower quality review of applications.

Fullerene patent on photovoltaic cell on November 2, 2004

Fullerene patents continue. On November 2, 2004, we have US 6,812,399, the first claim of which is

A photovoltaic cell, comprising:

a first electrode;

a second electrode;

a first layer between the first and second electrodes, the first layer comprising:

a first polymer, the first polymer being conjugated; and

a fullerene component; and

a second layer between the first electrode and the first layer, the second layer comprising doped poly(3-alkylthiophene).


[As of Nov. 2, 2004, a search of the PTO database reveals 792 patents with the word --fullerene-- and 823 patents with --fullerene or buckyball--.]

Another hydrogen patent

Hy-Drive is an energy technology firm that has developed a patented Hydrogen Generating System (HGS). The HGS generates, on demand, and injects small amounts of hydrogen gas into the combustion chamber of a regular internal combustion engine, creating an enriched air mixture and a more complete and faster burn of the air-fuel mixture. The result is reduced emissions and improved fuel efficiency and torque. The company prides itself on being able to "Stretch Fuels Farther" and being a bridge to the future in the new-age Hydrogen Economy.

On November 2, 2004, Hy-Drive Technologies Ltd. announced that the U.S. Patent Office has approved another new patent for the Hy-Drive Hydrogen Generating System (HGS) apparatus and components.

Matsushita sues LG in Tokyo over plasma display patents

November 2, 2004:

At Tokyo District Court Matsushita is seeking an injunction to halt sales in Japan of plasma display panels (PDP) made by the South Korean company LG Electronics Inc. which panels Matsushita says violate its Japanese patents. This legal action impacts sales only in Japan. "Only several hundred PDPs of LG's global PDP exports are shipped into Japan every month so it will have little impact on total sales and profitability," LG said. An LG spokesman said the company exported more than 100,000 PDPs globally in October, 2004.


There have been previous IP disputes over PDP technology. In April, 2004, Tokyo Customs agreed to temporarily halt imports of PDPs produced by Samsung SDI Co. of South Korea after receiving a complaint from Japanese company Fujitsu Ltd. about possible patent infringements. Samsung and Fujitsu settled in June, 2004. They had been filing lawsuits and counter-lawsuits in the United States and Japan. In June 2004, Sharp Corp., the world's largest liquid crystal display (LCD) TV maker, said it was suing the Japanese unit of Taiwan appliance maker TECO Electric and Machinery Co, alleging patent infringement on LCD technology.



In 2003, Matsushita and LG Electronics were the world's largest and second-largest PDP television makers, with market shares of 15.1 percent and 11.1 percent, respectively, according to research firm iSuppli. Matsushita sees worldwide demand for plasma TVs growing to 10 million units in the 2008/09 business year from an estimated 2.7 million units this business year ending March 2005.

Schwartz of Sun on spurious patent litigation

The purpose of the patent system is to give an incentive for inventors of useful, novel, and nonobvious inventions to disclose publicly their work.

An issue in the software area is that many workers have not publicly disclosed their work and this has created some problems. For example, in the case of the amazon.com doubleclick patent, many workers said the patented material was obvious, but then in turn were hardpressed to come up with prior art.

Jonathan Schwartz of Sun to ZDnet news:

Litigation gone awry
Spurious patent litigation was a problem well before Sun settled with Kodak. It's been going on for years, and lately, it's steadily gotten much worse. Intellectual property is the foundation of global economies, and legitimate patents are crucial cauldrons in which sweat, brains and dollars can create value. Companies that acquire (often questionable) patents and later wield them against new market participants unleash a destructive force that stifles innovation and prevents participation--the polar opposite of the purpose for which patents were created.

Everybody suffers from the abuse of the judicial system and the detritus strewn around the market by spurious patent suits. My view is that we issue patents too freely, without sufficient regard to prior art or triviality. We need to raise the threshold for patent approval to prevent abuse of the system. This would ensure that we're safeguarding incentives and rewards for invention while reducing the legions of bad actors stifling competition.

America is at risk of letting cobwebs in our patent system ensnare real innovation, siphoning energy and effort that could otherwise be directed at progress for the planet while the bloodsuckers drain resources.

Resolution of Lentek IP dispute

from the Orlando Sentinel:

-->American Biophysics Corp. recently won an intellectual-property dispute with defunct Lentek International Inc. of Orlando, gaining control of Lentek's propane-powered mosquito traps.

Rhode Island-based American Biophysics and the International Trade Commission launched a patent-violation investigation into Lentek mosquito traps in 2003 while Lentek was in bankruptcy proceedings.

Last spring, the Rhode Island company entered a damage claim in U.S. Bankruptcy Court in Orlando alleging that Lentek violated its patents. Last month, as the result of a settlement, the bankruptcy court ordered the transfer of Lentek's patents, patent applications, trademarks, trademark registrations and trademark applications related to carbon-generating insect traps to American Biophysics.

The court also gave American Biophysics Lentek's inventory of mosquito traps. The 2,400 units were destroyed.

Lentek was liquidated in June. American Biophysics develops technology to thwart biting insects.<--

Phase change fabric technology in cars

from PR newswire

-->Developed for NASA by Triangle Research & Development, Outlast Technologies, Inc. acquired the patent rights for incorporating phase-change technology in fibers and fabrics in 1991. Since then, Outlast has developed applications for the consumer goods market and currently offers numerous products containing Smart Fabric Technology(TM) to the outdoor sports, casual apparel, footwear, bedding and accessories markets.

Shawmut Corporation, with headquarters in West Bridgewater, Massachusetts, is a premier provider of engineered soft composites and trim components to the automotive interiors market.

Outlast Technologies, Inc., based in Boulder, Colorado, is the worldwide leader in phase-change materials and applications. <--

Expiration of Kodak patents changing OLED landscape

The article in electronic business online mentions the basic patents of Kodak in organic light-emitting diodes, the work of Cambridge Display Technology, but does not mention the Bayh-Dole work developed through Princeton's Center for Photonic and Optoelectronic Materials (POEM) lab and Universal Display.

Princeton's efforts in the Bayh-Dole area were highlighted in the Trenton Times, p. B1, November 1, 2004, in an article "Putting pieces into place," by Andrew D. Smith. The article also mentioned the Princeton Institute for the Science and Technology of Materials. (PRISM)

from electronic business:

-->Competition is driven in part by the fact that the original patents protecting OLED IP are beginning to expire, opening the door to manufacturing without costly license fees. This has caused Kodak, which has one of the strongest OLED IP portfolios, to pursue more than a licensing revenue model. "With Kodak's fundamental patents starting to expire, the playing field will be wide open, with no more constraints," says Allen.

OLED displays have significant advantages over LCDs. OLEDs are made by placing organic film between two conductors. Electrical current is applied, causing emission of a bright light. Unlike the more widely used LCDs, OLED displays do not require backlighting. This means that an OLED panel is thinner than an LCD panel, requires less power, and weighs less. They're more durable and operate effectively in a broader range of temperatures. <--

It's interesting to note that Sculley of Kodak brought up the issue of most cited patents in the OLED area:

-->Although the technology has been around since the mid-1980s, OLEDs have taken time to gain traction, because the manufacturing process is difficult, especially for active-matrix OLEDs. Andrew Sculley, general manager of the display and components group at Kodak, believes that companies such as Sony, one of Kodak's many licensees, only recently began to get cost-effective yields of active-matrix OLEDs.

According to Allen, 13 of the 20 most cited OLED patents are Kodak's, and 2 have already expired. Sculley says Kodak's most important patents won't begin to expire until 2007. The IP licensing model remains intact, he says. But seeing the handwriting on the wall, Kodak began a manufacturing joint venture with Sanyo in 2001. The partners make active-matrix OLED displays, some of which are already in consumer products.<--

CHI research has asserted that the value of a patent can be measured by the number of times the patent is cited. This assertion has been questioned by a number of workers, including Nancy Lambert and Edlyn Simmons.

Lord Hoffmann's sea of interpretive uncertainty in Kirin-Amgen

Although there has been discussion of the rejection of the American doctrine of equivalents in the British Kirin-Amgen case, British discussion mentions the rejection by Lord Hoffman in Kirin-Amgen of Lord Hoffmann's earlier Protocol test. In Kirin-Amgen, Lord Hoffmann wrote: "No doubt there will be patent lawyers who are dismayed at the notion that the Protocol questions do not provide an answer in every case. They may feel cast adrift on a sea of interpretative uncertainty."

from thelawyer.com:

-->The man at the centre of this upheaval is Lord Hoff-mann, possibly the most influential person working in IP law in the UK. In 1989, Lord Hoffmann, then Mr Justice Hoffmann, set the standard that all patent lawyers have since followed – the Improver or Protocol test. Last week he disowned it in Kirin-Amgen v Aventis & Transkaryotic
Therapies (TKT).

In doing so, he brought UK patent law into line with our Continental cousins and, as he saw it, risked throwing lawyers into “a sea of interpretative uncertainty”.

While Lord Hoffmann was referring to the interpretation of particular patents, every patent lawyer in the land has a copy of his judgment on their desk, and it is their interpretations of this landmark decision that seem to be causing the most uncertainty.

Taylor Wessing partner Gary Moss advised Kirin-Amgen. Although he is obviously disappointed to have lost the case, he is really angry about the EU law principles underlying the judgment.

“What I found particularly disappointing is that the House found the claims invalid and in particular Claim 26 invalid,” says Moss. “They did so by adopting the jurisprudence of the European Patent Office without a great deal of further explanation. In doing so they appear to have set aside many years of jurisprudence of UK patents.

“Both Mr Justice Neuberger at first instance and Lord Justice Aldous in the Court of Appeal rejected the logic of the European Patent Office’s reasoning most strongly. The House of Lords appears to have now simply shrugged and said that we should follow Europe on this particular issue. I personally think that’s an enormous pity.”

Field Fisher Waterhouse partner Jonathan Radcliffe advised Sabaf on the previous week’s groundbreaking judgment in Sabaf v MFI & Ors. He agrees, but is less concerned. “What I think the House of Lords has done in Kirin-Amgen is firmly align UK law with the European Patent Office and European practice generally… There’s also a trend towards align-ment in the rejection of the product by process claim.”

For the uninitiated, the product by process claim is the argument which says that although the final product
is not new, the process of making it was new. In Europe you must have a new product.

“This has been a difference between the UK and the rest of Europe, which has been troubling some people for some time. We’re now in step with Europe, so that’s good,” says Bird & Bird partner David Wilson, who was representing Aventis and TKT.

(...)

The full text of Lord Hoffmann’s ‘sea of uncertainty’ quote in the Kirin-Amgen judgment reads: “No doubt there will be patent lawyers who are dismayed at the notion that the Protocol questions do not provide an answer in every case. They may feel cast adrift on a sea of interpretative uncertainty. But that is the fate of all who have to understand what people mean by using language. The Protocol questions are useful in many cases, but they are not a substitute for trying to understand what the person skilled in the art would have understood the patentee to mean by the language of the claim.”

Moss welcomes the death of the Protocol questions, but is concerned about the uncertainty. “The Protocol questions weren’t so highly regarded in the last few years anyway,” he says. “In some cases, they created as many problems as they were destined to solve. There was a tendency to elevate them to the level of statutes.”<--