Thursday, April 28, 2005

Mercury News interview with Microsoft's Brad Smith

from Mercury News, interview with Brad Smith of Microsoft:

Q How significant was your settlement with AOL Time Warner?

A The Time Warner agreement was very important. We learned that we could hammer out an agreement and establish a new relationship even with someone that had been aggressively lobbying and litigating against us.

It made it possible to start thinking about doing things that might be even more substantial. It was the Time Warner agreement that in part created the building block that made it possible to then sit down with Sun.

Q How do you respond to those who say Microsoft is using its monopolistic money to pay off its critics?

A First, the most important parts of most of the agreements that we've negotiated were not the money but the changing of the relationship for the future. (Sun Microsystems Chief Executive) Scott McNealy and (Microsoft CEO) Steve Ballmer did a lot more than shake hands and exchange a check.

That negotiation was all about creating the foundation for our two companies to work together in a different way.

Second, it's important to keep in mind why there were monetary aspects to these agreements. Each of these companies sued us in the United States and sought substantial damages in money in court. Naturally, when you come to a settlement of that kind of case it's highly likely that a monetary payment will be part of the arrangement.

Q Can you talk about why Microsoft thinks patent reform is important?

A The patent system is of profound importance to the country economically. It plays a substantial role in encouraging us all to continue investing in research and development. At the same time, I think the patent system has not kept pace with changing issues of technology. We see some weaknesses. . . . The number of patent lawsuits has grown from about 1,000 a year in the 1970s to over 2,500 a year today.

I think the law has tilted too heavily in favor of those who hold patents. They're able to sue for treble damages by proving what's called willfulness, which is applied as too low a standard today, in our view.

Q So what are you proposing?

A Improve the quality of patents in this country. That can be done by ensuring that the Patent and Trademark Office -- PTO, as it's called -- has the resources necessary to really scrutinize patent applications.

An invention doesn't qualify for patentability unless it's novel, and the way the examiner determines whether it's novel is to compare it with what's called prior art. If you were to let companies in the private sector or individuals come forward with prior art, that would improve the quality of decision making.

And then, third, there's what's called a post-grant opposition procedure. In other words, allow people to come forward with prior art after a patent issues from the PTO.

Q How much patent litigation is Microsoft involved with?

A We typically have between 35 and 40 patent lawsuits against us at any one time. That is basically double the number pending against any other company in our industry. Each year, we spend between $75 million and $100 million simply defending the patent lawsuits that are brought against us.

Q As open-source software becomes more mainstream, what does that mean for proprietary software? How has it changed the strategy of Microsoft?

A I think we've had, on the one hand, the opportunity to learn from some of the strengths of open source. We've focused on some community-oriented projects. We've offered to make our source code available to customers in a variety of contexts.

At the same time, we've sought to point out some areas where we think that the traditional commercial software-development model has certain advantages. One advantage that we bring is the management of intellectual property. We stand behind our products with our customers. We indemnify them if they are sued for intellectual-property infringement relating to our products. . . . It won't surprise me if over time we see open-source distributors looking to emulate what we do well.

Seiko sues over printer cartridges

from PCWorld:

Seiko Epson asserts that certain printer cartridges made by Arcor, of Nantes, France, and Multi-Union Trading, of Hong Kong, infringe on several of its cartridge-related patents. Seiko Epson, along with two U.S. affiliates, filed lawsuits against each of the companies in the U.S. District Court for the District of Oregon in Portland.

In both cases, Seiko Epson is asking the court to enjoin the companies from continued infringement. [contemplate the effects of proposed patent reform on this action.] It is also asking for payment equivalent to triple the damages it claims to have incurred, and for its legal costs.

The lawsuits come shortly after a federal judge issued a summary judgment that 23 of Multi-Union's cartridges from the initial complaint infringe on Seiko Epson's patents, according to Seiko Epson.

Printer makers such as Seiko Epson typically make most of their profits selling cartridges for their printers. Companies such as Arcor and Nantes sell replacement cartridges that typically cost less and carry less well known brands.

Levin to testify on patent reform before House on April 28

Talk of patent reform intensifies. It's not clear that the discussion is well thought out, but it is well orchestrated.

from Yale Daily:

Levin to testify before Congress
Levin to push for reforms in patent system

Staff Reporter

Today [April 28, 2005] in the nation's capital, Yale President Richard Levin will be speaking not as a representative of higher education but rather as a specialist in intellectual property rights when he goes before the Intellectual Property Subcommittee of the House Judiciary Committee. He delivered similar testimony to the Senate Judiciary Committee on Monday, April 25.

Levin honed his expertise in intellectual property rights and the patent system as a graduate student and professor at Yale. Joining University of Pennsylvania management professor Mark Myers, who co-chaired the National Research Council's comprehensive review of the U.S. patent system, Levin will call for reforms that he said will improve the quality and timeliness of patent decisions. Levin said the current patent system is overwhelmed by applications, especially in areas of new technology.

"We concluded that on the whole the patent system is working well and does not need fundamental revision," Levin said in his prepared statement before the Senate Monday. "Yet we did note some causes for concern."

To combat burgeoning patent litigation costs, the report recommended creating a proceeding for parties to directly contest patents granted by the federal government for up to nine months after the patent is issued [that is, an opposition proceeding], instead of delving into lengthy and expensive court proceedings. The procedure is designed to weed out poor quality patents early on.

"That's the big part of the reforms," said Jim Crowne, a spokesman for the American Intellectual Property Law Association, which endorsed most of the NRC's reforms. "If you had to wait until there was a hard dispute between the parties, the litigation costs would be enormous."

The report also called for the U.S. government to grant patents to the first party which files a patent, as opposed to the first-to-invent basis that is currently used. Levin said moving to the first-to-file system, which the rest of the world uses, would eliminate years of time-consuming legal discovery, depositions, and testimony that can stifle innovation. [only in the context of interferences, which happen infrequently.] Such a move would also put the United States in step with the rest of the world.

But Andrew Krauss, president of the Inventor's Alliance, an association of independent inventors based in Silicon Valley, said legislation that would move the U.S. patent system to a first-to-file standard would benefit large companies at the expense of individuals who cannot afford to patent every idea they might have.

"Innovation and the independent inventor are a lot of what America is founded on," Krauss said. "To change to a first-to-file system is to really suppress independent innovation, which is already suppressed enough in my opinion."

Levin's testimony today follows more than four years of research and collaboration he and Myers undertook with lawyers, economists, business leaders and inventors from around the world. The group began its deliberations with several divergent views but gradually reached consensus on several recommendations, Levin said.

"It's very gratifying to have pulled together a diverse group and see the work endorsed," he said.

Levin said his proposals, if passed into law, would not have a direct impact on Yale, but might eventually bode well for the University because it would create more investment opportunities for research companies.

"If the economy is more dynamic, then this is good for us," Levin said.

U.S. Rep. Lamar Smith '69, a Republican from Texas, has already drafted a bill that incorporates most of the NRC's reforms, Levin said.

from my talk at Stevenson on April 22:

In the AIPLA summary of the first "town meeting" on patent reform co-sponsored by the FTC, NAS/STEP, and AIPLA, there was no mention of evidence of a "patent quality" issue, but there was discussion of the use of opposition proceedings to correct the patent quality problem. From the summary:

--As introduced by AIPLA President Bill Rooklidge, the goal of the meetings is to find reforms that will improve the efficiency, promptness and quality of the patent system…. According to Bronwyn Hall, some argue that questionable patents have proliferated because of an overburdened PTO, a lack of experienced examiners in certain technologies, an insufficient prior art database, and an obviousness standard weakened by court decisions. The advantage of an open post-grant opposition system is that competitors are best able to demonstrate obviousness if it exists, Hall maintained. The disadvantage is that it could be too costly, too lengthy, and too burdensome on individual inventors, she added… The emphatic caveat from [Don] Martens, however, is that no such system could go forward without adequate PTO funding for new hires and added administration. He also stressed that the proposed opposition process is not intended as a substitute for litigation, but is only meant to supplement examination to address concerns about patent quality.--

Not everyone believes in the value of post-grant oppositions. In an article "Post-Grant Opposition: Building on Sand," Joseph Hosteny wrote:

--But one recent paper I have read, Prospects for Improving U.S. Patent Quality via Post-Grant Opposition, says that we should have a post-grant opposition proceeding, and offers as a justification the experience of European countries. But none of these countries has a constitution, which provides for resolution of civil disputes by jury trial. Their preference for using government agencies and bureaucrats is not consistent with the our Constitution and Bill of Rights, which restrain the government's role. Thus, the desire to emulate Europe is not sound reasoning.--

Hosteny suggested three difficulties if a post-grant opposition proceeding were adopted:

1. One is trusting an administrative agency with a new task when it is abundantly clear that that same agency is hobbled in completing the tasks it has now. The PTO just hasn't got the funds to do its first job, much less take on a second one.

2. Second what will happen to the lifetime of a patent with this additional procedure?

3. Third, what will happen to litigation? Will it become simpler because a patent has gone through a post-grant proceeding? Not likely.

Hosteny followed up with suggestions for what any (hypothetical) opposition should include.

1. All parties to an opposition should have a stake in the outcome.
2. Any opposer ought to be bound by the outcome with respect to validity and enforceability.
3. There should be no oppositions where the real party in interest is not revealed.
4. The patent owner should have the option to add new claims, and broader claims.
5. The life of the patent should be extended by the time consumed by any opposition.

Hosteny later made clear that we should not have any post-grant proceeding, and further indicated deficiencies in the current AIPLA proposal relative to earlier AIPLA proposals.

1. No amendment enlarging the scope of the claims shall be permitted in the opposition.
2. Statutory grounds in 102 and 112 were limited.
3. Re-examinations would continue to co-exist with post-grant oppositions.

Steven Ludwig noted that the ABA, AIPLA, BIO, FTC, and the NAS have all publicly stated their support of the establishment of a procedure for post-grant review, and Ludwig quoted Congressman Lamar Smith: "it is amazing to me that there is general agreement on the need for post-grant opposition." Of the estoppel issue, Ludwig suggested a compromise which would protect the patent owner from extended harassment due to continuing attacks while still encouraging third parties to request post-grant proceedings would be to limit the estoppel provision to apply only to opposition requests filed more than 9 months after the grant of the patent.

II. What to do about patent quality?

A. Quality according to Deming

Much of the recent patent reform discussion refers to the word "quality." No discussion of quality is complete without reference to the work of W. Edwards Deming. Consider some of the words of his famous 14 points:

Point 3--Cease dependence on inspection to achieve quality. Eliminate the need for inspection of a mass basis by building quality into the product in the first place.
Point 5--Improve constantly and forever the system of production and service, to improve quality and productivity, and thus constantly decrease costs.
Point 6--Institute training on the job.
Point 10--Eliminate slogans, exhortations, and targets for the work force asking for zero defects and new levels of productivity. Such exhortations only create adversarial relationships, as the bulk of the causes of low quality and low productivity belong to the system and thus lie beyond the power of the work force.
Point 11b--Eliminate management by numbers, numerical goals.
Point 13--Institute a vigorous program of education and self-improvement.
Point 14--Put everybody in the company to work to accomplish the transformation. The transformation is everybody's job.

Of government service (such as the PTO), Deming wrote:

--In most governmental services, there is no market to capture. In place of capture of the market, a governmental agency should deliver economically the service prescribed by law or regulation. The aim should be distinction in service. Continual improvement in government service would earn appreciation of the American public and would hold jobs in the service, and help industry create more jobs.--

Specifically, of the mail service, Deming asked a manager about mail sorters:

--How do you pay them? I asked. "Sort 15,000 pieces of mail per day. That is his job." The source of his problem is obvious. With this method of payment, there will never be improvement in sorting of mail, nor will costs of sorting mail decrease.--

Of relevance to the discussion of the patent grant rate discussion, Deming wrote about measures of productivity:

--Unfortunately, however, figures on productivity in the United States do not help to improve productivity in the United States. Measures of productivity are like statistics on accidents: they tell you all about the number of accidents in the home, on the road, and at the work place, but they do not tell you how to reduce the frequency of accidents.

On the other hand, an orderly study of productivity, to inquire whether any given activity is consistent with the aim of the organization, and what it is costing, can be very helpful to management.--

Deming also recognized the need to identify intellectual resources: "Companies take inventory of physical property, but they fail in taking inventory of knowledge."

B. Applying Deming's concepts to patent quality

Deming's concepts teach us to study the manufacturing process itself (here, the examination of patents) at steady-state to develop statistics to identify potential improvements to the system itself. Introducing new levels of inspection (e.g., an opposition process) is not the right step to take. We need information on how to reduce the frequency of "bad patents," not an additional layer to remove bad patents.

The system of examination of patents is more complex than the systems studied by Deming, which typically involved repetition of the same task to make the same product. Here, each incoming patent application purports to have claims directed to inventions which are novel (never before done) and nonobvious (while perhaps structurally similar to some past work, involving some change the motivation for which was not apparent to one of ordinary skill). The examination of each application is a new undertaking, involving the analysis of different facts. Further, with the number of applications increasing each year, we are not at steady state, so that the burden on each examiner is changing in time.

There is a relatively constant system of evaluating patentability, involving tests for utility, novelty, nonobviousness, written description, and enablement. When commentators talk about "bad patents," they are typically talking about ones involving claims which are not novel or obvious. The most direct way to address this is to have examiners well-trained in a given technology area with ready access to databases containing full descriptions of knowledge in that given technology area and with enough time to make well-reasoned comparisons of the claims of the application to the previous work. To the extent there are identified failures (supported by data) with the patent system, steps should be taken to correct the system.

Wednesday, April 27, 2005

FTC asks 11th Circuit to reconsider Schering ruling

from Reuters:

U.S. antitrust authorities on Friday, April 22, asked a federal appeals court to reconsider a recent ruling that reversed a finding that Schering-Plow Corp. illegally kept cheaper versions of its blood pressure drug K-Dur off the market.

The staff of the U.S. Federal Trade Commission filed a petition with the U.S. Court of Appeals for the 11th Circuit in Atlanta requesting that the full court review the case, the agency said.

A three-judge panel on March 8 rejected a 2003 FTC ruling that concluded Schering-Plough's patent settlements with two other companies amounted to pay-offs not to compete.

Desktop fusion reported in journal Nature

from a discussion by AP of an article to be published in Nature, Thursday, April 28:

In the UCLA experiment, scientists placed a tiny
crystal that can generate a strong electric
field into a vacuum chamber filled with
deuterium gas, a form of hydrogen capable of
fusion. Then the researchers activated the
crystal by heating it.

The resulting electric field created a beam of
charged deuterium atoms that struck a nearby
target, which was embedded with yet more
deuterium. When some of the deuterium atoms in
the beam collided with their counterparts in the
target, they fused.

Thursday, April 21, 2005

O'Connor, Breyer back in Merck v. Integra

It seems that the possible confusion about "which Merck" is involved in the case Merck v. Integra has been addressed. Justices Stephen Breyer and Sandra Day O'Connor, who had recused themselves in earlier parts of the case, did participate in oral argument on April 20, 2005.

As a fine point on the Merck "division" in World War I, the stock of the American component of the then German Merck was bought by a Merck family member who was an American citizen. What happened with Merck was different from what happened to Bayer and to Schering. It is true that Merck & Co. (makers of VIOXX) and Merck KGaA (the Merck of Merck v. Integra) are presently different entities.

-->Written by Tony Mauro-->

Two High Court Justices Un-Recuse From Key Patent Case

Tony Mauro
Legal Times

When oral arguments got underway at the Supreme Court Wednesday, April 20, 2005, in the key patent infringement case of Merck KgaA v. Integra Life Sciences I, Ltd., an odd question was on the minds of many of the lawyers and others in the courtroom: Why were all nine justices participating in the case?

Nine, of course, is the norm. But when the Court in January agreed to hear the case, Justices Stephen Breyer and Sandra Day O'Connor announced they took no part in the Court's action. The justices, as is their custom, did not say why they recused. But a quick glance at their financial disclosure forms seemed to reveal the answer: Both justices indicated last year that they owned stock in the pharmaceutical company Merck & Co. Case closed.

Or so it seemed -- until Wednesday, when O'Connor and Breyer remained on the bench as Chief Justice William Rehnquist announced the Merck case for oral argument. That was a clear sign that two justices had changed their minds about staying out of the case and rejoined as participants in the court's decisionmaking in Merck v. Integra -- an extremely rare occurrence.

O'Connor asked the first question, as is often the case, and she and Breyer were among the most active participants. Both, it appeared to many, seemed sympathetic to Merck, and their presence might, in fact, tip the decision toward Merck.

Were the justices cravenly trying to protect their financial interests by rejoining the case? No such scandal was brewing. It turns out that soon after the justices' recusal in January, Merck's lawyer in the case, E. Joshua Rosenkranz of New York City's Heller Ehrman White & McAuliffe, sent a letter to the clerk of the Supreme Court to "address a possible misunderstanding" about Merck's name and corporate structure.

Rosenkranz went on to say that while Merck & Co. -- the U.S. firm in which the justices owned stock -- and Merck KgaA -- the German firm that is the party in the case before the Court -- "share a common ancestry," they are now "entirely separate entities," and have been since 1917. The German company, he explained, owns worldwide rights to the Merck name except in North America. Both companies got their names from Heinrich Emanuel Merck, an early German industrialist, but the American subsidiary became separate after World War I.

A former clerk to the late Justice William Brennan Jr., Rosenkranz wrote delicately about the subject, noting that both justices owned stock in the American Merck and adding, "While the recusals may have been prompted by other circumstances, I wanted to be sure to alert the Court to this potential misunderstanding."

The January 13 letter did the trick. Rosenkranz confirmed late Wednesday that soon after his letter was circulated to the justices, he received word from the Court that Breyer and O'Connor were back in the case.

No formal announcement was made on the subject though, so some lawyers in the audience were surprised to see Breyer and O'Connor participating.

Edward Reines of Weil Gotschal & Manges, who wrote an amicus curiae brief in the case in opposition to Merck, said the reappearance of the two justices was a topic of conversation at a post-argument discussion he moderated for the Federal Circuit Bar Association. And Reines said the consensus was that both justices "seemed to be inclined" more toward Merck's view of the "safe harbor" provision of the 1984 Hatch-Waxman Act that allows drug companies to use drugs patented by other firms in their own research without fearing allegations of patent infringement.

Rosenkranz agreed that "coincidentally," the two justices who had recused previously "were the most critical" at Wednesday's oral argument of the ruling of the U.S. Court of Appeals for the Federal Circuit that Merck is seeking to overturn. But that was not why Rosenkranz was glad they rejoined the case, he said.

"We wanted a full court so we could have the benefit of all of their thinking," he said.

Discussion of patent reform on April 22, 2005

On April 22, 2005, there will be a discussion of patent reform at the WSPLA/OPLA joint meeting in Stevenson, WA.

Some comments on the House bill for patent reform:

Erik Stasik:

The creation of a new post issue opposition is also questionable. It is not clear to me that denying inventors review in the Federal courts is something that can or should be done.

My feeling is that it is better to create courts of specialists, rather than special courts.

As a practical matter having been involved in many, many oppositions in Europe it is not the panacea that Americans believe it is. Yes, inter partes opposition is better than US style re-examination, but it is far from a perfect solution. In may instances, opposition is a poor strategy choice.

See also:

State of nanotechnology patents ?

Lux Research has analyzed certain nanotechnology patents and concluded:

* Carbon nanotube patents look messy in electronics, but promising in
energy and healthcare and cosmetics. The common assumption that carbon
nanotube patents are both numerous and overlapping across all important
application categories is incorrect.
* Fullerenes look relatively unentangled, but crowded with abandoned
patents. The good news: Fullerenes show less entanglement than the
previous three categories. The bad news: Many patents issued may be
useless -- inventors have given up on a third of them by failing to pay
patent maintenance fees.
* Nanowire patents number few and seem distinct -- but Nanosys looms
large. Nanowire patents offer a good opportunity to license the most
important ones on an exclusive basis without worrying about IP
entanglement -- so good that start-up Nanosys has already attempted to
do it.

I can't say I agree on the conclusions about fullerenes, but that's for another day.
This post is written while on the road in Salem, Oregon.

Monday, April 18, 2005

No concern about getting the right science?

I was at a medical conference on April 17 and had an opportunity to discuss patent issues with some of the attendees.

One Ph.D. expressed concern that courts did not worry about getting the science correct when handing down decisions.

The recent non-precedential case of Sunny Fresh Foods v. Michael Foods and North Carolina State University is illustrative. Therein, the issue of whether realistic activation energies had been chosen(Arrhenius equation situation) was the crux of the science matter.

Saturday, April 16, 2005

Harvard Crimson on reprimand of Laurence Tribe

The Harvard Crimson discussed the "reprimand" of April 14 of Harvard Law School Professor Laurence Tribe in an article on April 15. Unmentioned was the status of the earlier request by students to adjust the Harvard policy on copying by students to conform with the (apparent) policy applied to Professor Tribe. If, hypothetically, Tribe were a student when doing the copying, he would have been in a lot of trouble. If, in reality, a student in 2005 did this type of copying, the student would be in a lot of trouble. This two-track approach will apparently persist at Harvard.

The Tribe matter had political overtones. It was the conservative Weekly Standard that exposed the copying. Tribe is an icon of liberals, and the book, “God Save This Honorable Court,” wherein the copying was fixed in tangible medium, was a liberal text. The plagiarism issue here was one of improper crediting of a source.

A different sort of problem occurs when legal academics write something that is simply wrong. In the intellectual property area, Lemley and Moore wrote, in a footnote in the Boston University Law Review, something related to Robert Clarke that both

--> was wrong, in attributing to Mr. Clarke an assumption that Mr. Clarke did not make
--> was hurtful, in the sense it attributed to Mr. Clarke an assumption that was manifestly stupid, thereby portraying Mr. Clarke in a false light and in a bad light.

Although the article of Lemley and Moore has been published for more than one year, nothing (apparently) has been done to correct the error. This is very sad.

Returning to the Tribe matter, one suspects that the incident will now fade into the shadows. Although, as Dean Velvel suggests, conservative columnists might have a field day, I don't think this story has legs. Maybe it ought to.

Derived from article by Daniel J. Hemel in Harvard Crimson, April 15, 2005:

The Weekly Standard’s Oct. 4, 2004 story prompted Harvard President Summers and Law School Dean Kagan to convene a three-member task force to investigate the plagiarism allegations against Tribe. One member, former University President Derek C. Bok, said yesterday that the task force met approximately a half dozen times last fall and issued a report to Summers and Kagan in December, 2004. The other task force members were former Dean of the Faculty Jeremy R. Knowles and Pforzheimer University Professor Sidney Verba ’53. University President Lawrence H. Summers and Law School Dean Elena Kagan, in a joint statement issued early in the afternoon of April 14, 2005 [more than three months after the report had been received], acknowledged that Tribe committed “a significant lapse in proper academic practice” in the composition of the 1985 book. But Summers and Kagan said they are “firmly convinced that the error was the product of inadvertence rather than intentionality.”

The statement from Summers and Kagan on April 14 did not divulge whether Tribe would face any disciplinary action in connection with the incident. “In line with usual University practice, we intend no further comment on the matter,” Summers and Kagan said. But Tribe’s assistant said yesterday that “there was no sanction or reprimand beyond the [University] statement.”

Also from the Hemel article:

Hobbes Professor of Cognition and Education Howard Gardner yesterday called for greater transparency from top Harvard officials, writing in an e-mail that the University statement on Tribe “leaves observers as well as those within the institution confused about what is and is not proper behavior, and what consequences follow from behavior deemed inappropriate.” In a brief phone conversation yesterday, Gardner declined to comment further.

The controversy over “God Save This Honorable Court” emerged from a Sept. 14 message that Tribe posted on the weblog of Massachusetts Law School Dean Lawrence R. Velvel, in which Tribe said the misattribution of sources by “writers, political office-seekers [and] judges” constituted “a phenomenon of some significance.”

That blog post prompted one reader to send an anonymous tip to the Standard drawing attention to the similarities between Tribe’s book and Abraham’s.

Velvel yesterday blasted Harvard’s response to the allegations against Tribe.

“I have enormous respect for [Tribe],” Velvel said in an interview yesterday. “I think he has done fine work for American society and I think he acted with great propriety in immediately fessing up to what happened instead of trying to dodge it.”

“Nonetheless, based on what I can gather from just hearing [the University’s statement] quickly once, I think Harvard’s action is shameful,” Velvel said.

“I think that both [Summers] and Kagan should be fired. To think that there is no punishment for an obvious serious admitted intellectual transgression is just terrible.”

He predicted that right-wing pundits “will have an absolute field day with this one.”

“The right wing’s attitude is not a reason to punish Tribe, however. The reason to punish Tribe is that what he did is horribly wrong,” Velvel said.

The number listed for Abraham in the University of Virginia Faculty Directory was not in service yesterday.

Mixed result in Biomet, Medtronic case

from CNN, through Reuters:

Orthopedic device maker Biomet Inc. said on April 14, 2005 that a U.S. District Court found that a new spinal implant made by rival Medtronic Inc. violates one of Biomet's patents. [Biomet wins, Medtronic loses.]

Biomet said the court had previously found that Medtronic's polyaxial screws used in spinal implants had violated a Biomet patent and the court issued an injunction against the sale of those products. Medtronic's redesigned versions of those products were also found to infringe the patent.

The court also ruled that Biomet's Cross C-Tek anterior cervical plate infringed two Medtronic patents, and that those two Medtronic patents are valid. The court ruled that Medtronic's Premier plate infringed a Cross anterior cervical plate patent, but that the patent was invalid because Medtronic invented its Premier plate before Cross invented its C-Tek plate. [Biomet loses, Medtronic wins.]

from the South Bend Tribune:

A federal district court in California ruled that Warsaw-based orthopedic product maker Biomet Inc. violated multiple patents held by rival Medtronic Inc., but upheld Biomet's patent in another case, the companies said Thursday in separate statements.

The court said the C-Tek plate made by Biomet violates two Minneapolis-based Medtronic patents. The plates are used to increase neck stability following cervical surgery.

Biomet said sales of the C-Tek plate account for less than 1 percent of its sales.

Biomet prevailed in a dispute over the design of spinal implant polyaxial screws, used to stabilize the spine and correct back disorders. Biomet said it will immediately request a permanent injunction against Medtronic's redesigned screws.

Both companies said they plan to appeal the rulings against them. Shares of Biomet, which are traded on the Nasdaq, rose 20 cents Thursday to close at $38.06.

Lilly wins Zyprexa case at district court level

Coverage by Jeff Swiatek in the Indianapolis Star noted that Lilly's U.S. patent 5,229,382, directed to the composition of matter of Zyprexa, weathered a 12-day trial and a stiff legal assault on six claims in federal district court in Indianapolis (before Judge Richard L. Young). Generic companies including Ivax, Dr. Reddy's and Teva had asserted during the trial last year that Lilly illegally double-patented Zyprexa (an issue that led to the demise of later patents on Prozac), misled the patent office in applying for the patent (inequitable conduct, which had been a widely reported charge in this particular case), and got a patent that was obvious at the time to the average drug researcher (obviousness under 35 USC 103). The day after Young's ruling (the ruling was on April 14, 2005), Lilly's stock price jumped $2.91 a share, closing at $58.07 on Friday, April 15.

Some of the quotes in Swiatek's piece attracted my attention:

With such a battle-tested case, the appeals court tends to be more reluctant to overturn a district court's opinion, according to experts.

"Typically, the hardest (case) to overturn (on appeal) is a decision that follows a full-blown trial, like this," said Nicholas Groombridge, a partner and patent expert at the New York law firm of Weil, Gotshal & Manges. "The court of appeals can be very reluctant to substitute its views" for a judge who presided at a lengthy trial.

One need only go back to the Apotex case on paroxetine to find a situation wherein the Federal Circuit was quite willing to substitute its views for those of Judge Posner (of the 7th Circuit, sitting by designation as the trial court judge). In fact, they substituted their views twice. There are plenty of other examples. And one recalls that the reversal rate at the CAFC is about 50%.

Lilly President Sidney Taurel noted: in drug patent cases, "there is no composition-of-matter patent that's been held up at the district court level and overturned on appeal." [One recalls that in the nabumetone [RELAFEN] case, the composition of matter claim of the '639 patent was found invalid both at the district court and appellate level.]

Groombridge also noted: Young's 222-page decision, which states repeatedly that the generic challengers "failed to prove by clear and convincing evidence" the Lilly patent is invalid, "is clearly a high-quality job." That makes it tougher to find appealable issues. "This judge clearly put a great deal of work into this." Groombridge also said the generic challengers will have to focus on just one or a few legal points in their appeal, because appeal briefs are limited to about 50 pages and oral arguments last just 15 minutes per side.

Gary D. Street, a Cincinnati-area patent attorney who's followed the Zyprexa case for Wall Street investment firm clients: The court has "two different factions, and one is kind of anti-patent and one is kind of pro- patentYou never know what the (three-judge) mix is going to be."

Friday, April 15, 2005

Myths in provisional patent applications

from Intellectual Property Today, Dec. 2002, Provisional Patent Application, Reality and Myth:

The lack of a requirement for a claim in a provisional application might appear more significant, at least on the surface. Nevertheless, even if one does not formally submit a set of claims, it is difficult to imagine being able to satisfy the written description and enablement requirements of § 112 without
knowing precisely what one intends to claim up to twelve months later upon filing a non-provisional application. n5 In this regard, the Court of Appeals for the Federal Circuit (CAFC) has stated the following in regard to satisfaction of the written description requirement of § 112:

. . . the applicant must also convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description and
inquiry' whatever is now claimed.


The USPTO's depiction of the provisional application as being
"quick" and "inexpensive" appears to have addressed concerns among many small businesses and academic institutions. Perhaps as a result, many applicants may have been lured
into believing that a minimal invention disclosure could secure the
filing date of a provisional application in a later-filed non-provisional application.

In fact, an article by Kowalski et al. published shortly after the
legislation leading to provisional applications took effect stated that universities believed the provisional application procedure would enable an inventor to submit a draft manuscript prior to publication. n36 According to these authors: "The provisional application, however has not proved to be the answer." n37

One of the comments expressed doubts that a provisional application
filed without a claim could ever contain a sufficient disclosure to provide the basis for a foreign or U.S. priority date. The response of the USPTO was that claims were not required, but could be filed in a provisional application if so desired, and be considered as part of the disclosure.

Harvard Law's Laurence Tribe reprimanded

from Associated Press, April 15, 2005:

Title: Harvard Law School reprimands professor

Text: Harvard University reproached law professor Laurence H. Tribe for failing to properly credit another author's work in a book published two decades ago.

President Lawrence Summers and Law School Dean Elena Kagan said they concluded that Tribe's error was unintentional after they reviewed a report on an investigation by former Harvard President Derek Bok and two other scholars.

The panel was appointed last fall after The Weekly Standard magazine pointed out similarities, including one exact 19-word passage, between his 1985 book "God Save This Honorable Court" and a 1974 book "Justices and Presidents" by Henry J. Abraham of the University of Virginia.

Tribe, a constitutional scholar who represented Al Gore in the 2000 Florida election dispute, acknowledged the mistake and apologized publicly and in a letter to Abraham. His book did not have footnotes but mentioned Abraham's in a bibliographic note.

Summers and Kagan said Thursday that the problem "related more to matters of phrasing than to fundamental ideas" but still represented "a significant lapse in proper academic practice."

"We have conveyed these conclusions and concerns to Professor Tribe, and now consider the matter closed," they said in a statement.

Tribe said in a statement: "I am gratified that the university's inquiry found no basis for accusations of dishonesty or of intellectual theft."

A call to Abraham was not immediately returned.

The accusations were part of a string of allegations of sloppy attribution against prominent scholars, including Tribe's Harvard colleague Charles J. Ogletree, who lifted a six-paragraph passage almost directly from another work.

Thursday, April 14, 2005

Provisionals without claims?

As a matter of ensuring support under 35 USC 112 P1 (written description), I file provisional applications with claims. As a philosophical matter, this exercise forces the inventor to think about what really is different in the present invention and write down the invention that the inventor possesses that did not exist before.

Recently, I learned that some attorneys, particularly at universities, believe that filing provisionals without claims is preferable.

For example, at,
we have text by Howard M. Eisenberg:

Some patent attorneys suggest, however, that the provisional application contain at least one claim. One reason for this is because the decision to file a continuation regular application is often made at the last moment, very close to the one year anniversary of the provisional application filing date. There is always the possibility that the applicant may neglect to add claims for the regular application. If the regular application is filed without any claims, it will not be entitled to a filing date. On the other hand, if the provisional application contains at least one claim, even if it is not a very good claim, the regular application will be entitled to its filing date. A set of new claims may always be added at some time in the future before the application is examined.
[LBE note: filing a nonprovisional application claiming priority to a provisional application is probably best not viewed as filing a continuation application under 35 USC 120. The above paragraph is simply wrong.]

Other patent attorneys believe that it is best to avoid having any claims in the provisional application. The reason for this is that usually any claim that exists in the provisional patent application will be changed when the application is filed as a regular, non-provisional application. There is concern that this changing of the claims when filing the regular application might be construed by a court as an amendment of the claims which, according to the recent ruling in Festo Corp. v. Shoketsu Kinzoku, 187 F.3d 1381, 56 U.S.P.Q.2d 1865 (2000), would severely limit the extent to which the claims could be broadened under the doctrine of equivalents.

Because the issue has not yet been litigated in a court, it is not at all certain that changing the claims during the filing of a regular from a provisional application would indeed be considered an amendment that would limit the scope of the doctrine of equivalents. However, until the issue has been cleared up, I concur that provisional applications are best filed without claims.

[LBE note: as of 2005, I don't believe anyone has ever asserted Festo estoppel because of a narrowing amendment between a nonprovisional and an earlier provisional. I doubt this will ever happen. "Claims" in a provisional are not claims presented for consideration to the USPTO and are never examined. How can one have narrowing for a reason related to patentability when the patentability of the initial "claim" is never assessed?]

Does anyone believe filing a provisional without claims is preferable to one with claims?

****UPDATE. 14 Sept 2005***

from eejd, 7 Sept 2005-->

The IP Counsel Blog discusses whether provisional patent applications should include claims:
In Claims in Provisionals, Russ [Krajec] advocates that provisional patent applications should be filed without claims. Russ' reasoning is that provisional applications filed with claims can only have a negative effect in view of prosecution history estoppel. . . .

I feel that it is prudent to include the broadest claims in the original application. If the validity of the patent is ever attacked, there is a record of the broadest claim in the application with the earliest filing date or priority date. At the risk of establishing a record for prosecution history estoppel, it is necessary to preserve a record for claim interpretation and to satisfy written description requirements.

LBE note. Krajec's reasoning is not persuasive. Hard to believe there would be estoppel arising from a provisional. If the use of the word "claims" bothers anyone, have a numbered list preceded by "I disclose." In a case wherein a provisional comes into play, the PTO is looking for written description support for priority. They are not looking for estoppel on claims.

Synopsys bombshell declarations in patent litigation

from EDN:

Magma Design Automation has been handed what appears to be a giant setback in defense of its patent litigation dispute with Synopsys.

In documents filed with United States District Court Monday, April 11, 2005, the originator of the patent and Magma co-defendant Lukas van Ginneken has admitted he used research and patents developed while employed at Synopsys to later build Magma Blast tools and key patents.

Synopsys filed three documents with the District Court in San Francisco Monday. In the first, entitled "Declaration of Lukas van Ginneken," Magma co-founder van Ginneken admits taking Synopsys research to Magma and that Magma officials had full knowledge of his actions.

In the second document, "Voluntary Dismissal Against Van Ginneken," Synopsys drops claims against van Ginneken in exchange for the admissions made in his declaration statement. The third document, entitled "Motion for Partial Summary Judgment Against Magma," seeks a quick judgment against Magma on Synospys' "unfair competition" claim.

"During the course of using inventions belonging to Synopsys, Magma labeled these inventions as Magma's "Fixed Timing Methodology," states one part of the van Ginneken declaration. "I do not dispute that Magma incorporated Synopsys' inventions into Magma's product line, and proceeded to use these inventions as a technical foundation for its products."

Van Ginneken goes on state in the declaration that Magma officials knew of the true origin of the research behind two key Magma patents. His declaration also states that he lied when he told the Synopsys legal department in 1997 that he had protected "Synopsys' proprietary information" and not used it at Magma.

"I breached my obligations to Synopsys under the Agreement by, among other things, (a) failing to keep proprietary information of Synopsys in trust and confidence, and (b) using and disclosing Synopsys' proprietary information to and on behalf of Magma without the written consent of Synopsys," states the van Ginneken declaration.

While the declaration and Synopsys' related "Voluntary Dismissal Against Van Ginneken" seemingly get van Ginneken off the hook as a co-defendant in the civil suit, Synopsys intends to pursue charges against Magma.

"With Dr. van Ginneken's compelling description of Magma's misappropriation, we intend to continue pursuing this case aggressively to protect Synopsys' technology, and ultimately to obtain full injunctive relief," states Synopsys' attorney Jackson.

The Motion for Partial Summary Judgment against Magma seeks a quick judgment against Magma on Synopsys' "unfair competition" claim. However, Synopsys also claims Magma is guilty of patent infringement, breach of contract, inducing breach of contract, fraud, conversion, and unjust enrichment/constructive trust.

Magma issued a statement responding to the Synopsys actions.

"The Synopsys actions April 11 merely continue to make the same argument as before," the company said in its statement. "Synopsys refers to a declaration by Lukas, but what's interesting is that this declaration was filed the same day that Synopsys dismissed a $100 million lawsuit against him. This doesn't change our position that Synopsys' claims have no merit."

Discussion of university patent policy in UCLA Bruin

The initial text discusses work by UCLA Professors Ben Wu and Eric Ting directed to a new bone regeneration technique. The article states that through UCLA's Office of Intellectual Property Administration, university faculty members are able to aggressively pursue patents for their research and potentially bring them to the market, where the creators hope they can make a difference in everyday lives.

***The article continues -->

The general idea of natural bone reconstruction has been seen before: In the 1960s, UCLA alumni Marshall Urist developed a similar method, which uses a protein growth factor to spur the healing of natural bone tissue. Ting said because "he didn't really patent it," Urist's method was adopted by businesses and became very expensive, subsequently reaching a limited scope of patients. The UC did not receive any royalties for the discovery.

Wu and Ting hope to make their new method less expensive by being a part of the company that licenses it. "We felt an obligation that an invention like this should be available to the general public," Ting said.

Both professors agree that the Office of Intellectual Property Administration has helped them come closer to realizing their dream.

The office manages the majority of patents at UCLA. Staffed by legal, business and science experts, it educates researchers in the patent process and supports them in transferring their new technology to the industry.

The office collects $14 million annually in gross royalties for the UC and doles out individual royalties to researchers. As per the UC patent policy, the inventor receives 35 percent of the royalty, while the department or laboratory receives 15 percent. The remaining portion goes to a general fund under the UC's control.

Not only does the office pay for a patent – which can be $25,000 for a U.S. patent alone – but it supplies a legal team to formulate its wording, which is important to prevent future patent infringement.

UCLA researchers sign the UC patent policy, in which they recognize that because their research is done through public laboratories, their patents are the property of the UC. The office at UCLA then can either license the patent to businesses to generate royalties, or it can grant the rights of the license to start-up companies like Bone Biologics Inc., which are expected to competitively use the license.

The office must review which patents will be supported on a case-by-case basis because they are so expensive. With advice from the faculty, it determines which patents are economically viable.

Ting expressed disappointment that the office must make choices in what patents it can fully back, noting that it is difficult to predict what patents will become economically viable. "A couple years later, they may really regret that they dropped (a) patent," Ting said.

"There is a rational source of dollars, not an unlimited source of dollars," said Kathryn Atchison, the vice provost of the office.

More on Ampex, in a word, US 4,821,121

from Business Week:

Acouple of years ago, Ampex Corp. (AEXCA ) looked like a long-fading technology pioneer finally slipping into oblivion. The Redwood City (Calif.) company, founded in 1944, proved itself one of Silicon Valley's greatest innovators in its early days. Among other things, it invented the commercial video recorder in 1956 [note: Sony and Ampex cross-licensed technology] and developed the first U.S. tape recorder in 1948. But Ampex lost its magic touch decades ago. A string of new ventures flopped. After losing money for years, Ampex was dumped from the American Stock Exchange at the end of 2003, with its stock at 68 cents.

Surprise, surprise -- Ampex is back. The forgotten innovator has one of the hottest stocks on earth, with the share price skyrocketing in the past year from $1 to $40. What happened? In a word, patents. Ampex dusted off a number of its patents and began filing lawsuits against a Who's Who of consumer-electronics giants, including Sony (SNE ), Sanyo Electric (SANYY ), and Eastman Kodak (EK ). Ampex' claim: It holds the intellectual-property rights to how digital images are displayed in nearly every digital camera, camcorder, and camera phone on the market.

Ampex' flurry of lawsuits is one example of the intensifying debate over intellectual-property rights in the U.S. As patent-infringement lawsuits have soared in recent years, critics have railed against what they call "patent terrorists" and "patent trolls," and complained that the litigation is a tax on innovation. "There's no socially useful purpose," says Ron E. Shulman, a lawyer at Palo Alto law firm Wilson Sonsini Goodrich & Rosati. Patent advocates disagree. They say patents are essential to protecting innovation and point out that many respected companies, including IBM, have been cashing in on them for years.

While Ampex has come under fire for its aggressive pursuit of royalties, there's no question its patents have become a gold mine. One patent covers the display of compressed digital images, individually or in a group of up to 16. Nearly every digital camera, and many other devices, let people view such thumbnails to help them navigate through a series of images quickly. Royalties from that broad patent helped Ampex turn a profit of $47.1 million in 2004 on revenues of $101.5 million, according to its preliminary financials, after losing money the five previous years.

A deal with Kodak could mean another rich payday. Kodak, which declined comment, was the top seller of digital cameras in the U.S. last year, with 21.4% of the market. J.M. Dutton & Associates, an El Dorado Hills (Calif.) research firm that charges Ampex and other companies it covers for research, estimates Ampex could bring in $275 million in royalty income over the next four years. Dutton's Richard W. West, the only analyst covering Ampex, has put a 12-month price target of $77 on the stock.

But a close examination of Ampex' financial and legal documents raises questions about how to predict the company's performance accurately. In its court filings, Ampex specifies only one patent that it claims has been infringed: U.S. Patent No. 4,821,121, typically referred to as the 121 patent. This is the patent that covers technology allowing people to view thumbnail images of photos rapidly. But the patent, granted in 1987, expires on Apr. 11, 2006. Bramson said in his presentation that that patent accounts for all the royalties Ampex is getting from digital camera sales.

Ampex says it holds more than 600 other patents, and royalties from those may be substantial in the future. The company says its other patents cover digital image processing, data compression, and image decoding, and those claims expire between 2012 and 2014. But it does not reveal which patents companies are licensing, beyond the 121 patent, and the specific terms of any agreements.

The company's lack of disclosure may run afoul of SEC rules. The commission requires companies to file a summary of commercial agreements at the time a deal is struck and the full agreement with its next quarterly statement, if the agreement is "material." There are exceptions to the rule, including measures to protect trade secrets. But experts are skeptical that something like the Sony deal, accounting for 40% of Ampex' revenues last year, would not have to be explained to investors. "More extensive disclosures may be required," says James R. Doty, a securities lawyer with the firm Baker Botts.

Can Ampex keep its stock soaring? Perhaps. But to do so, the company may have to give investors a closer look at its tightly guarded patent deals.

Ruling expected in Zyprexa case?

from MarketWatch:

According to a statement Wednesday, April 13, 2005, Lilly said that it anticipates a U.S. District Court in Indiana to rule in its favor by declaring its patents for Zyprexa are valid. Generics manufacturer Ivax Corp. had been seeking to have Lilly's patent position overturned in hopes of putting out a generic formulation of the billion-dollar drug.

Two other generics makers, Dr. Reddy's Labs and Teva Pharmaceuticals, have also sought to put out their own formulations.

Zyprexa, which is used to treat psychosis associated with mental illness, had 2004 sales of $4.8 billion. It is the world's fifth best-selling brand-name prescription drug, according to IMS Health, a complier of industry sales data.

"Lilly remains confident Zyprexa's compound patent is valid and the generic manufacturers' claims are without merit. Although the company cannot predict the outcome or make guarantees of success in this litigation, Lilly continues to expect to prevail," the company said in its statement.

But Indianapolis, Indiana-based Lilly also warned that a judgment against it could be highly damaging.

"An unfavorable outcome would have a material adverse impact on the company's consolidated results of operations, liquidity, and financial position," Lilly said.

Anti-patent discussion in ZDNet

There is some descriptive prose in ZDNet under the title "The patent poison spreads."

From the article:

Those whom the gods would destroy, they first make mad — or software developers. None but a madman would consider writing programs these days. The activity itself remains mostly harmless, but it's becoming increasingly impossible to hack through the mutated jungle of intellectual-property law without fear of being eaten by feral lawyers.


Thus, even under the GPL, open source development doesn't just enrich the free software community, it feeds back into more traditional business models. If you don't want it free, you're welcome to pay. Other open source licensing models are even more liberal — BSD imposes next to no restrictions on commercial or open use of code — if that's what you want.

Patents break this model. IBM has released hundreds of them to open source developers, which is a welcome commitment. But that means the code can never go into proprietary form: IBM would have to make its patents available to anyone to do anything for that to work, at which point the patent might as well not exist. Even with the best will in the world on all sides, patents are fundamentally incompatible with the essential traffic in ideas that keeps software progressing.

Without a wholesale reform of the law and the introduction of a protection regime designed to fit the unique nature of software development, we will lose the freedom to innovate. What that reform should be is open to debate: that it is needed, is not.

Alacritech gets injunction against Microsoft (Longhorn affected?)

In Alacritech v Microsoft, Alacritech won a prelimary injunction against Microsoft. See C 04 - 03284 JSW (ND Cal) by Jeffrey S. White, April 12, 2005.

Within the decision, the district court does cite to v., 239 F.3d 1343, 1350-51 (CAFC 2001) for the proposition that Microsoft, to defeat Alacritech's motion for injunction, merely needed to demonstrate a substantial question concerning either infringement or validity. A reply declaration by Dr. Kevin Almeroth, on behalf of Alacritech, was used to establish that none of Microsoft's cited prior art disclosed transferring a TCP connection, an element of claim 1 of US 6,987,868. Separately, the district court looked to the failure of others to develop the invention and evidence of appreciation by contemporaries to negate an obviousness attack. [note: one first looks to the prima facie case of obviousness (similarity and motivation) and only after evaluating the prima facie case does one look to secondary considerations, so the court's treatment is a bit abbreviated.]

Microsoft also attempted an ineligible subject matter attack under 35 USC 101. It apparently relied upon MPEP 2106 (IV)(B).

Microsoft also attempted an indefiniteness argument under 35 USC 112 P 2.

For the criteria for evaluating a preliminary injunction request, the district court cited to Polymer Technologies, 103 F.3d 970, 973 (CAFC 1996), not For burden of proof, the district court cited Nutrition 21 v. U.S., 930 F.2d 867, 869 (CAFC 1991).

There were 112 P 6 issues. The district court cited Envirco, 209 F.3d 1360 (CAFC 2000) and Lighting World, 382 F.3d 1354 (CAFC 2004).

from pcpro:

A judge has slapped an injunction on Microsoft to prevent it from using TCP technology slated for use in the next version of Windows, codenamed Longhorn, and in the Scalable Networking Pack for Windows Server 2003.
There are fears that the injunction may delay the release of Longhorn which is scheduled to appear next year.

In dispute is Microsoft's 'Chimney' TCP offload architecture which offloads the TCP protocol stack to a Network Interface Card to provide an improved network performance. US company Alacritech, which develops networking solutions, claims that 'Chimney' is based on Alacritech's SLIC Technology architecture based on two patents 6,427,171 and 6,987,868 relating to scalable networking called `Protocol Processing Stack for use with Intelligent Network Interface Device`.

Alacritech sued Microsoft in Federal District Court in August of last year. Now a US District Court has issued a temporary injunction preventing Microsoft from selling any product based on the Chimney technology.

Larry Boucher, president and CEO, Alacritech said, 'After Alacritech discovered that Microsoft Chimney is based on intellectual property that we developed, patented and own, we offered Microsoft a license. Microsoft rejected licensing terms that would be acceptable to us. We were forced to sue Microsoft to stop them from continuing to infringe, and inducing others to infringe, on our intellectual property rights. We are very pleased with the Court's decision in this matter.'

Alacritech, claims that it provided details of Dynamic TCP Offload architecture to Microsoft when the two companies met under a non-disclosure agreement in September 1998. Following the meeting, in 1999 Alacritech says it sent Microsoft a detailed document describing how its SLIC technology could work with Windows. Microsoft unveiled Chimney in 2003.

from channel register

Silicon Valley start-up Alacritech has won a preliminary injunction against Microsoft over the use of advanced networking technologies due to feature in Longhorn, the next version of Windows. The ruling, which is subject to appeal, temporarily blocks Microsoft from developing or selling systems based on the disputed technology.

Alacritech sued Microsoft in August 2004, alleging that Microsoft's existing and future operating systems containing the "Chimney" TCP offload architecture use Alacritech’s proprietary SLIC technology. The disputed code, designed to eliminate network processing bottlenecks, crops up in the Scalable Networking Pack for Windows Server 2003 as well as Longhorn. Alacritech argues that Microsoft's software violates two of its patents relating to scalable networking, US Patent No. 6,427,171 and US Patent No. 6,987,868, both entitled Protocol Processing Stack for use with Intelligent Network Interface Device.

A US District Court in San Francisco granted Alacritech's request for a preliminary injunction on April 5, 2005. Microsoft has 21 days to appeal.

Smucker's US 6,004,596 is under re-examination

Note that US 6,004,596 now assigned to Smucker underwent re-examination. See serial number 90/005,949 filed March 9, 2001 ( The date of final rejection in the re-examination was December 16, 2003. Smucker filed an appeal brief March 24, 2004. The examiner filed an answer to the appeal brief on March 23, 2005.

Separately, the re-exam on NTP US 5,436,960 is 90/006675. The re-exam requester: Research In Motion, Waterloo, Ontario,
Canada; c/o David L. Stewart, Allen, Dyer, Doppelt, Milbrath &
Gilchrist, Orlando, FL.

The re-exam on NTP US 5,438,611 is 90/006,676.

The re-exam on NTP US 5,479,472 is 90/006,677.

The re-exam on NTP US 5,625,670 is 90/006,678.

The re-exam on NTP US 5,631,946 is 90/006,679.

The re-exam on NTP US 5,819,172 is 90/006,680.

The re-exam on NTP US 6,067,451 is 90/006,681.

Monday, April 11, 2005

WSPLA/OPLA joint meeting April 22-24, 2005

Just as a heads up, I will be presenting a talk at the WSPLA/OPLA joint meeting on April 22. My prepared remarks comprise 8014 words and 73 footnotes.

Steve Lohr on IBM patent shift

reproduced in the International Herald-Tribune, from Steve Lohr of the New York Times:

So why has IBM shifted course recently, giving away some of the fruits of its research instead of charging others to use it? The answer is self-interest.

Diverging from conventional wisdom, the company has calculated that sharing technology can sometimes be more profitable than jealously guarding its rights on patents, copyrights and trade secrets. The moves by IBM, the largest supplier of information technology services and computers in the world, are being closely watched throughout the business world.

IBM made a broad gesture this year toward what it called a new era in how it controls intellectual property. It announced in January that it would make 500 patents - mainly for software code that manages electronic commerce, storage, image processing, data handling and Internet communications - freely available to others. And it pledged that more such moves would follow.

This month, the company said all of its future patent contributions to the largest standards group for electronic commerce on the Web, the Organization for the Advancement of Structured Information Standards, would be free.

IBM is at the forefront, but companies in industry after industry are also reconsidering their strategies on intellectual property: What do you share? What do you keep proprietary?

[LBE note, the answer, my friend, might be found in Henry Chesbrough, Open Innovation: The New Imperative for Creating and Profiting from Technology, Boston: Harvard University Press, 2003.]

The Internet, globalization and cost pressures are driving businesses to collaborate in the pursuit of higher productivity and profit, and to accelerate the pace of product development. That collaboration requires companies to share more technical information with corporate customers, suppliers and industry partners. As a result, specialists say, the terms of trade in intellectual property, and the boundary lines, are shifting.

"The business world today is engaged in a huge experiment in figuring out what different parts of intellectual property should be open and closed," said Steven Weber, director of the Institute of International Studies at the University of California at Berkeley. "The fate of many companies, and the strength of national economies, will depend on how the experiment turns out."

There is a sense of urgency to the intellectual property issue, IBM executives say, because government officials in the United States, Europe, China and elsewhere are expected to make crucial policy decisions in the next year or two.

IBM, not surprisingly, wants a "balanced" intellectual property policy intended to maintain incentives for inventors and to foster open technical standards so collaboration can flourish. It supports proposals in the United States to make software patents more difficult to obtain, hoping to help curb the patent-and-litigate frenzy.

The change at IBM began in May when its chief executive, Samuel Palmisano, told John Kelly, a senior vice president, to lead a team to reconsider how the company handles its intellectual property.

Kelly recalled his boss telling him, "This is a hugely important area, and I think we need to redirect our strategy and policy and practices." Palmisano, according to Kelly, added, "If any company can take the lead on this, it's us."

Kelly, leading a 12-person group, traveled, studied, brought in outside specialists, and by September concluded that more of IBM's homegrown ideas should be shared instead of being tightly held.

The shift, admittedly, is carefully calibrated. IBM is not forsaking its lucrative technology licensing business or pulling back on new patent filings. And the company is not giving away the technology for its mainframe computers, its proprietary database software and other complete products. Instead, it is freely contributing the technology building blocks that allow broader communication across industry networks.

Such moves do carry risk for IBM.
"When you open some of your technology, it forces you to run higher up that economic food chain in your business," said Jim Stallings, an IBM vice president for intellectual property and standards.

Another consideration is the need to keep intellectual property as both an offensive and a defensive weapon. The best shield against a patent infringement suit is often the threat that the target company may file a countersuit based on its own patent arsenal.

"The layer of technology that is open is going to steadily increase, but in going through this transition we're not going to be crazy," Kelly said. "This is like disarmament. You're not going to give away all your missiles as a first step."

Still, IBM's new strategy represents a response to a number of changes in the marketplace for ideas.

More and more innovation in business, company executives say, is occurring across cooperative information networks, which require open technical standards. The Internet and the Web stand as proof of the success of that model; their public standards make low-cost, global communications possible.

Companies in fields like health care, chemicals and car manufacturing are already working on standards for sharing more information. To create robust and widely used standards, companies have to make their own intellectual property - usually specialized software for handling information - available either for small licensing fees or free, as IBM pledged to do for the Internet e-commerce group. The potential payoff is that open standards will help the entire industry grow faster, and may even work to the advantage of the company making the contributions.

"If you open up your technology and reveal quickly, people will build on your stuff," said Eric von Hippel, a professor at the MIT Sloan School of Management and author of a new book, "Democratizing Innovation."

"It becomes more economically efficient to be open."


BusinessWeek interview with Shulman about Ampex/Kodak

Interview with Ron E. Shulman at

Q: Do you think Eastman Kodak (EK ), which Ampex is suing on patent infringement grounds, will settle?
A: Kodak is going to fight fiercely. If it has a future, it is in digital photography. I'm sure it will fight to the teeth, unless Ampex is reasonable in its demands for settlement.

Q: How do you determine royalties for a judgment?
A: The law lists a bunch of criteria for determining royalties. It is based on a "hypothetical deal" standard. In the electronics area, it's rare that you get more than a 10% royalty. Typically, it's 1% or 2% of sales. You should assume they are going after a royalty of 1% to 5%.

But it depends on what you decide is the royalty base. Is it the whole price, or part of the price? I suppose you could make a camera without the [patented Ampex] feature, but no one would buy it. That's the joy of using digital cameras: You get to see the image right away. Royalties may also include what are known as "convoid" sales. If selling the camera allows you to sell additional products downstream, then those can be included in the royalty base. That will certainly be explored by the plaintiff.

Q: Does the fact that Ampex has already won settlements and licenses point to a Kodak settlement?
A: Ampex will try and rely on that. [The past settlement history] is pretty persuasive stuff. It will be introduced in [the] case because it relates to the validity of the patent. It is some evidence of commercial success. And commercial success would be evidence of nonobviousness. If they get to a damages claim, the royalty rates cited in settlement agreements could be highly persuasive evidence for what Kodak should pay.

[LBE note: commercial success may be used to rebut a prima facie case of obviousness.]

Q: In Silicon Valley, how is Ampex viewed these days?
A: Ampex is basically a research shop. Ampex is viewed as a slightly more civilized version of a patent terrorist. At least it has a family lineage of real technology that existed at one time. People respected Ampex. It did real stuff. [Now] what it is doing is no different from what other patent trolls do.

Q: Is so-called patent trolling on the rise?
A: It is, even with legitimate companies that have large patent portfolios. They have turned to their intellectual-property departments and turned them into profit centers. Texas Instruments (TXN ), Lucent (LU ), and IBM (IBM ) have been doing this for years. Plus, the damage awards are huge. [The practice] has grown more vigorously over the past 10 years. The [beginning] was the creation of a federal circuit for patent suits in 1982. Patents are a powerful economic weapon. People sue left and right. The outgrowth of that is patent holding companies. They're like venture funds. They go around holding people up for lots of money.

Q: What is the cost to society?
A: Most people suing didn't do any of the invention. Money isn't going to the inventors. There's no socially useful purpose. It's a waste of resources. Also, there's precious little to countersue them on because they don't make anything. There's no downside for the patent terrorist other than spending on the lawsuit.

[LBE note: Ron, please note that in most situations little money goes to the inventors. Check out the patent awards procedure in places like IBM, Kodak, Exxon. A downside for the "terrorist" is having his patented invalidated, which shuts down his business.]

Q: Is there any way to curtail the lawsuits?
A: Not without legislation. That would be very difficult to do. Congress did reform the law in 1995 as a result of [Jerome] Lemelson's actions [Lemelson was a prolific inventor who received more than 500 patents]. He did nothing but file patent applications. He has the largest number of issued patents. He acquired patents in key areas of technology such as bar codes. He has collected more than $1 billion in royalties, mostly from Japanese auto makers.

As a result, Congress changed the patent expiration dates from 20 years from filing, to 17 years from granting.

Q: Who else could Ampex sue?
A: The major digital photography companies will be targeted. Computer companies could be targeted. I can't say for sure since I haven't reviewed the patent. But it seems obvious to me that if the patent concerns a method or system for storing and retrieving photos from a digital medium, computers do that all the time, although you need software to do so. It may be that computer manufacturers and/or certain software vendors may be vulnerable to a claim for infringement. [Ampex] can go after Motorola (MOT ), Nokia (NOK ), Samsung and all those guys. It's hard to sell a phone that doesn't have a camera

Patent reform: on incentives for disposals at the USPTO

In an article in 307 Science 1566 (March 11, 2005) [Patents on Human Genes], Jordan Paradise, Lori Andrews, and Timothy Holbrook of Chicago-Kent wrote:

The USPTO could also revamp financial incentives to promote decisions based on the quality of the patents rather than their quantity. Currently, patent examiners are encouraged with monetary bonuses to grant patent applications, a policy that has the unsettling effect of rewarding examiners for quickly pushing patents through the patent office. Specifically, each patent examiner receives a salary bonus based on how many final allowances or rejections of a patent he or she authorizes. Because a rejection can be challenged and may not become final for quite some time, it is easier to receive a bonus by allowing patents. (citing to Merges, Berk Tech L J, 14, 577 (1999)). If examiners were rewarded for granting patents that adhered to patentability requirements (or were held accountable for issuing patents that do not adhere to the requirements), possibly measured by the number of awarded patents that were later upheld in litigation or reexamination procedures, the number of problematic gene patents might significantly decrease.

There is the following response:

The issue of whether patent examiners are more easily rewarded for "pushing patents through the patent office" is a combination of myth, misunderstanding, and misinformation. Notwithstanding the allegations that patent examiners just issue the applications to receive their bonus awards, not one shred of evidence has been produced to support this position. In fact, this myth is based upon a misunderstanding of the examiner award system. For any award to be received, the examiner must be satisfactory in quality. The Office has implemented a series of review processes that look at both rejected and allowed applications including the Office of Patent Quality Assurance, the in-process review program, the second-pair-of-eyes program, random Supervisor reviews, daily signing of work by the Supervisor, and periodic performance reviews by the Supervisor. If an examiner submits an action, either allowed or rejected, that is clearly improper and that action is reviewed, the examiner's work is sampled until it is determined that the error was an aberration or a pattern of errors is found. Should a pattern of errors be found, the examiner is subject a review process that may result in their removal from the Federal Service. Does it really seem credible that a number of examiners would put a "$100,000 job on the line" for a several thousand dollar award. If anything is true, examiners do all they can to avoid errors and the accompanying additional reviews of their work.

Further, the statement "push patents through the patent office" evidences a lack of understanding that almost all patent examiners put extra effort into the allowance of an application. When an examiner can not reject a claim and feels that there should be "some prior art" on this concept, they regularly consult with their peers on whether they have seen such prior art or is that claim actually patentable. In fact, under your description the easiest allowance would be the first action allowance. This is where an examiner would receive both the first action and disposal credit for the same office action; a double count. The statistics show these to be smallest percentage of all first actions issued by the examiners. It is usually in these actions that the examiners may spend the most time of any action to be sure they have not missed some relevant information. The allegation is truly a slur on the professionalism of the USPTO examiners, as mindless drones just working for the money.

Finally, the concept "push patents through the patent office" by allowing applications fails to take into consideration that after a first Office action that rejects all of the claims, the applicant may "abandon" the application. Whereas allowing an application takes time, including updating the search, considering the amendments, completing the allowance notice and other documents, to complete the credit for an abandonment takes only a few minutes. Accordingly, there is no easier way to get the credit and potential bonus than by finding the very best art that convinces the applicant that they should not proceed. Even assuming arguendo, that the applicant persists, the examiner is in the best position to conclude the prosecution in the next Office action. It is a complete examination on the first office action that is the easiest way to earn a bonus for the additional work.

Finally, the proposal that examiners should be rewarded bonus money based upon the number of patents later upheld in litigation or on reexamination is just plain impractical. Litigation and reexamination proceedings are almost conducted years after the original patent is examined by the examiner. Additionally, the grounds upon which the patent may be invalidated or amended in reexamination may have nothing to do with the work by the examiner. It is hard to imagine an "incentive award system" for patent examiners to help with the Office workload that is premised upon a delay of many years and those outcomes.

[the response is not by LBE]

Sunday, April 10, 2005

New legislation on drug/patent interface, wild card patent extensions?

Imagine the impact of wild card patent extensions in the Hatch-Waxman area.

from Chris Mondics of the Philadelphia Inquirer:

Now, the prospect of another SARS-like outbreak, or a repeat of the 2001 anthrax attacks that left five Americans dead, is spurring efforts in the Senate to enact incentives for drug companies to develop medicines to protect against biological attacks and epidemics.

Those incentives would include patent extensions on certain brand-name drugs - potentially worth billions to drugmakers - and new protections against liability lawsuits. Sen. Judd Gregg (R., N.H.), Senate Majority Leader Bill Frist of Tennessee, and Sen. Rick Santorum (R., Pa.), all key Senate players, are sponsoring one bill. In the coming weeks, Sens. Joe Lieberman (D., Conn.), the former vice presidential candidate, and Orrin G. Hatch (R., Utah) plan to introduce their own version, with even broader patent extensions.

The useful patent life on a medicine is about 10 years. Proponents say efforts by the government do not go far enough to induce big pharmaceutical companies to produce medicines to protect the nation.

"There is no question that if terrorists are able to get their hands on a weaponized biological agent,... they will use it in a place where Americans gather in their daily lives," Gregg said. "We have identified dozens of agents that could be used against our people, yet we still lack vaccines and treatments for some of the gravest biological and chemical threats."

Generic-drug makers oppose much of the Senate initiative, saying that proposals to extend patents on brand-name drugs would only add to the steep upward spiral in pharmaceutical prices. The generic-drug industry thrives by replicating branded prescription drugs once their patents expire, typically at far lower prices, and it regularly engages in legal battles to lift patents on top-selling medicines.

"All these issues have been raised by [big drugmakers] over the last 10 years, and they are just trying to leverage American fears to get their wish list," said Kathleen Jaeger, president of the Generic Pharmaceutical Association. "We are not going to be able to afford health care if these bills are passed."

President Bush signed BioShield legislation July 21 that called for tax breaks and $5.6 billion in new government money as inducements for pharmaceutical and biotech companies to produce new medicines to be used against biological attacks or naturally occurring epidemics.

Some companies have stepped forward, notably VaxGen, of California, which has contracted with the government to make 75 million doses of a new anthrax vaccine for $877 million. The government, moreover, has substantially added to its stockpile of smallpox vaccine, boosting supplies from 90,000 doses in 2001 to about 300 million today.


Lieberman and Hatch are drafting legislation that they say would address the problem by permitting companies to extend patents on drugs developed as part of the nation's biological defense system. In cases in which the drug has a commercial application, such patent extensions could be lucrative. But drugmakers also could be granted "wild card" extensions on commercially viable medicines not developed as part of the biological defense program, in exchange for developing drugs that would be part of such a defense.

Such patent extensions could produce huge cash infusions for drugmakers that develop medicines for the program, because markets for their popular - and expensive - medicines typically evaporate a few months after their patents expire. That is when generic-drug makers market less expensive copies.

Saturday, April 09, 2005

Academic administrator: her presence gave me hives

from Science, volume 308, April 1, 2005, page 37-->

In a letter of 12 Nov 2004 from the Dean of the UCLA school of medicine to Sally Blower, the letter accused Blower of causing hives and increased blood pressure in two department administrators because she allegedly refused to leave their offices until security was summoned.

Blower does admit to sending "rude e-mails" to members of her departemtn but says she wouldn't have done so if they had responded to her inquiries.

Maybe after the hives problem is dealt with, academics can get around to dealing with faked research, conflicts of interest, and falsified footnotes in law reviews.

New law on inherent anticipation in SKB v Apotex?

In the past, inherent anticipation of a previously unrecognized item required that the relied upon art inevitably, invariably produce the claimed item. As Judge Newman wrote in Continental Can: Inherency, however, may not be established by probabilities or possibilities. In the new SKB v. Apotex decision of April 8, the evidence supporting inevitability arose from representations of the patentee-plaintiff. In trying to case a wide net for infringers, the patentee snagged himself. That which infringes, if later, anticipates, if earlier.

The absence of a requirement for "prior recognition" was already established. Judge Newman is right about the tension with Tilghman v. Proctor, but that bridge was already crossed. Judge Newman did not mention how the panel majority (Judge Rader writing the opinion) found inevitability, and hoisted SKB on its on petard.

This part of the panel opinion is apt to cause confusion, and enlargement of the scope of inherent anticipation.

Note that I had written of what became the April 2005 decision back in May 2003 in Lawrence B. Ebert, There's Always Something There to Remind You, IPT: "If these same minor amounts were found in a product that existed before the patent, then the patent claim should be found invalid." That is what happened.

Note also that I predicted Judge Posner's "lacking any commercial significance" read-in would be rejected, and it was rejected, twice in fact, in 2004 and in 2005. I also predicted the indefiniteness rejection would be rejected, and it was, twice.

Returning to the inherency issue, contemplate what Judge Newman wrote.

Dissenting in the en banc order (not in the panel, of which she was not a member), Judge Newman stated:

The district court's finding that it had not been established that
the hemihydrate was produced in 1975 is in accord with the evidence, and surely has not been shown to be clearly erroneous. There is no evidence to support the panel's current finding that the '196 patent "discloses in an enabling manner the production of the PHC hemihydrate." Maj op. at 20. The evidence before the
district court did not show that disclosure and enablement, and did not show that the hemihydrate was produced in 1975, even inherently and undetected. The discovery [LBE note: meaning recognition] of the hemihydrate a decade later, and the "seeding" of
subsequent production in this crystal form, does not provide retrospective knowledge of this then-unknown compound. The not-unique situation that the air of the manufacturing plant is now seeded with the hemihydrate crystal [LBE note: the ice-9 vision] form does not mean that this situation existed when the anhydrous product was discovered and the patent application thereon was filed.

Invalidity based on "anticipation," 35 U.S.C. § 102, requires that the identical invention was known or its existence would reasonably have been known [LBE note: when?] to a person of ordinary skill in the field of the invention--not that it might have lain hidden in minuscule amount, undetected, unsuspected, and
unknown. See In re Oelrich, 666 F.2d 578, 581, (CCPA 1981); Hansgirg v. Kemmer, 26 C.C.P.A. 937, 102 F.2d 212, 214 (CCPA 1939). The district court correctly found that there was not "clear and convincing evidence that the hemihydrate existed before
the critical date of the '723 patent," maj. op. at 23, and on this
finding the district court correctly ruled that there was not inherent anticipation.

As summarized in Continental Can Company USA v. Monsanto Company, 948 F.2d 1264, 1269 (Fed. Cir. 1991)[LBE note: written by Judge Newman], " The mere fact that a certain thing may result from a given set of circumstances is not sufficient." The theory of inherent anticipation serves to accommodate "situations where the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to
judges." Id.

The panel now holds that a product that existed in trace amounts,
although unknown and undetected and unisolated, is "inherently anticipated" and barred from the patent system after it is discovered. The patentability of antibiotics,
hormones, antibodies, and myriad other previously unknown or unisolated products would be called into question by this new ruling, giving rise to uncertainty as
to existing patents, as well as negation of searches for the beneficial components of existing materials. The breadth of the panel's theory of inherent anticipation contravenes long-established precedent. For example, in Tilghman v. Proctor, 102 U.S. 707, 26 L. Ed. 279 (1880), the Supreme Court
observed that it would be "absurd" to hold that a patent is anticipated because those skilled in the art later recognize that the discovery was "accidentally and unwittingly produced whilst the operators were in pursuit of other and
different results, without exciting attention and without its even
being known what was done or how it had been done." See also Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 66, 67 L. Ed. 523 (1923) ("Accidental results, not intended and not appreciated, do not constitute anticipation."). In In re
Seaborg, 51 C.C.P.A. 1109, 328 F.2d 996 (CCPA 1964), our predecessor
court rejected the "extrapolation" of the inherency theory to reach trace amounts of a nuclear isotope in a prior art process. See id. at 998-99 ("The record before replete with showings that the claimed product, if it was
produced in the Fermi process, was produced in such minuscule amounts and under such
conditions that its presence was undetectable.").

Only after a compound is identified does it become subject to
patenting; if its existence is not reasonably known to persons of skill in the field, its later discovery cannot be retrospectively "inherently anticipated."

Friday, April 08, 2005

Conflicts of interest. Prop 71. NIH


In 2001, President Bush limited federal funding to the 22 stem
cell lines in existence at the time, asserting that the destruction of embryos for stem-cell use meant taking human life.

"Scientists in states that do not fund stem cell research will be at a significant disadvantage," said Wise Young, director of the
neuroscience center at Rutgers University. "And many of them will be moving."

California, Wisconsin, Kansas, New Jersey, Maryland, and Massachusetts have addressed the issue of state funding.

California passed Prop 71 creating 3 billion in funding over 10 years. From Sacramento to San Diego, the state's major cities made their bids March 16, 2005 to become the hometown of the largest-ever state-funded research program, the California Institute for Regenerative Medicine.


Also on March 16, 2005, the Sacramento Democrat Ortiz and Sen. George Runner, R-Lancaster, introduced a constitutional amendment that would impose stricter conflict-of-interest rules on the oversight committee and its working groups. It would require that California receive royalties from state-funded stem-cell treatments and impose open meeting and open record act requirements on the working groups.

from the San Diego Union-Tribune:
But, as is the case with most initiatives, many voters did not read the fine print. Not discussed widely during the campaign was the fact that the institute would be governed by a 29-member board with no oversight from anyone.
The bonds would be authorized from the state treasury, and the institute would distribute the money. Language in the initiative also allows a number of decisions to be made behind closed doors.

That lack of legislative oversight and a few other concerns are
causing a delayed reaction. In February, two groups representing people who opposed Proposition 71 filed petitions with the state Supreme Court raising constitutional questions about the control of taxpayer funds and the power of the nonelected oversight board. (Members of the board are appointed by the governor, other constitutional officers, University of California
chancellors and others.) State Attorney General Bill Lockyer said last week that the institute likely will not be able to begin distributing grant money until the suits are decided.


Washington Post, April 2, 2005:

Agitation [at the NIH] has been fermenting since early February, when agency director Elias A. Zerhouni imposed the rules after a congressional committee found that about 120 NIH scientists had not disclosed outside consulting deals, as required. Less than a month later, the NIH acknowledged that most of the researchers had been unfairly accused because of agency clerical errors.

"A lot of these researchers really want to understand the
commercial side of their work," said Jerry Feigen, former director of the Macklin Center for Entrepreneurship at Montgomery College, who teaches a business class at NIH that features lectures by local venture investors.

"If the NIH wants to land the brightest brains, they have to come to grips with helping do-good researchers understand the commercial side of science," Feigen said. "I don't think there's anything wrong with that." [LBE note: Huh? Are brightest brains, do-good research and no commercial understanding all linked? Is "understanding the commercial side" a euphemism here?]

Agency officials said classes like Feigen's will continue and argue that concerns about the impact on private industry are somewhat exaggerated. Researchers can still work with companies as part of their official NIH duties, particularly under agreements in which each side provides resources to develop products.

And NIH employees will still be entitled to to $150,000 a year in royalties if companies license their discoveries and develop a product. MedImmune Inc., one of Maryland's most successful biotechs, developed Synagis, a billion-dollar product, this way.


"The new [conflict of interest] rules [at the NIH]imposed an insurmountable problem for me," said Battey, who has applied for the job of president of the new California Institute of Regenerative Medicine [of Prop. 71]. "I manage a family trust . . . which supports the education of my father's seven grandchildren, and it contains assets I'm told I 'd have to divest. That would cost a lot of money, and I can't do that to my family."

[Better look before you leap. CA may have some tough conflict rules too.]

Engineers, patent lawyers on software patents

from pcpro:

Software engineers were almost unanimous in their derision at attempts to define what constitutes technical contribution yet were equally unwilling to support a patent policy that didn't nail down precisely what and what isn't patentable within software. They said that no definition for technical contribution they had seen 'painted a bright line', between what is and is not patentable.

Yet many of the delegates we spoke to wanted protection for software they had written - they just didn't believe that there exists a definition for software patents that is robust enough to ensure that weak, overly broad in scope and shallow in substance patents, such as Amazon's 'one-click shopping' US patent, won't be granted in the UK or EU.

Richard Carter, a programmer for Bank of America, said that despite the benefits that patent protection offers, the other problems it brings with it mean he'd prefer to not have them at all.

Those problems pull in every direction. Attorneys want a broad definition that will not become redundant with the advent of new technologies. This gives large IT companies the prospect of filing rather tentative, adventurous patents which they can afford to fail in. But any that are granted are extremely powerful - hence the
consternation at the patent applications for things like different ways of pressing a button on a PDA. What's bad for the marketplace about this is that only corporations with large enough coffers can afford to play these games. [LBE note: not really true.]

Software engineers are of course painfully aware of this: they need very precise and detailed legislation that will allow them to assess whether what they are writing is patentable and whether it infringes other patents.

They need this because when they read about dubious patents being granted under the more lackadaisical US patent system they realise that with the best will in the world on the part of the UK and European patent offices, there are actually no safeguards to stop the same happening over here.

Not so, says the patent office. We are the safeguard to prevent us from following broad approach of the US. 'We realise that a patent is an incredibly powerful tool in the marketplace,' said Jeremy Philpott of the UK Patent Office. 'And we don't grant them lightly.'

And so the issue boils down to one of trust and expertise. Even with minutely detailed legislation on patents, is it realistic to expect a software engineer to make a legal judgement on the thousands of patents they could be infringing or whether they have 'invented' something patentable? Likewise, is it realistic to expect a patent attorney to be a technology expert at the same level as the engineer?

Even among the engineers present at the workshop, there were disputes over the patentability of some applications under examination, simply because of their various specialisations.

Asked how many patent examiners were experts in technology at the UK patent office, Philpott replied: 'Dozens'. But still the delegate wasn't satisfied and suggested the examiners post their CVs online so that the public could know how qualified they were to judge patent applications.

Perhaps the most hope we have that Europe's patent system won't follow in the broad wake of the US is the system itself. In the US, a patent examiner is a stepping stone job on the way to being an attorney. Philpott said that in the UK, it's a career taken much more seriously.

He said that a patent examiner studies an application for a day, sometimes longer. Conversely, as an indication of the attention given by its US counterparts, patent expert Greg Aharonian a few months ago offered some statistics from the US Patent Office for last year. Despite having a database of some 4mn samples through which to search for prior art, the average patent cited just two. 'In 10 years the [US] PTO has been unable to do anything to improve patent quality, especially in terms of handling non-patent prior art. Everything they have tried has been a failure.'