Tuesday, May 31, 2005

Retraction of scientific papers

One of the difficulties in retraction of erroneous papers is the policy of some journals to require agreement of all authors. That was the case with Science in the Schon affair. See Robert F. Service, Science, Vol. 298, pp. 13-14, Oct. 4, 2002. Around Nov. 2, 2002, AP mentioned Science had retracted 8 papers "at the request of his co-authors." [which would be a seeming violation of Science's requirement as to ALL authors] Nature retracted papers March 6, 2003, approximately six months after the fraud was documented.

In the Oct. 4 article, it was also suggested that Schon's work would no longer be cited. Three years later we see that suggestion was incorrect.

The Schon matter also brought up issues with peer review. Because peer review has come up in the context of Rebecca Eisenberg's suggestions to refine the obviousness inquiry in patent law, contemplate the following discussion, related to the Schon matter, in Fraud Shows Peer-Review Flaws by Eric Lerner in the Industrial Physicist:

The peer-review system is supposed to guarantee that published research is carried out in accordance with established scientific standards. Yet recently, an internal report from Lucent Technologies’ Bell Laboratories concluded that data in 16 published papers authored by researcher Hendrik Schön were fraudulent. The papers were reviewed and accepted by several prestigious scientific journals, including Nature, Science, Physical Review, and Applied Physics Letters. Yet, in many of the papers, the fraud was obvious, even to an untrained eye, with data repeated point-for-point and impossibly smooth or noise-free. All the papers passed through internal review at Bell Labs, one of the world’s foremost industrial research institutions, and the journal peer review system without raising alarms. The fraud was discovered only after journal readers started pointing it out.
(...)
Once the papers were submitted for publication, how did they get past so many sets of reviewers? Clearly, it was not the fault of one or two reviewers because of the many articles involved. Nor did editors ignore warnings from the reviewers. “After the story broke, we looked back over the reviewer reports,” says Monica Bradford, managing editor of Science, “but we did not find any clues that something was wrong.” Although it is common for journal reviewers to critically comment on a paper’s data and raise questions about noise levels and statistics, not one reviewer at any journal caught the fact that the data was impossibly good or copied from chart to chart.

Some in the scientific community think that the reviewers should not be blamed for missing the flaws in Schön’s papers. “Referees cannot determine if data is falsified, nor are they expected to,” argues Marc H. Brodsky, executive director of the American Institute of Physics, which publishes Applied Physics Letters. “That job belongs to the author’s institution, and the readers if they deem the results are important enough. A referee’s job is to see if the work is described well enough to be understood, that enough data is presented to document the authors’ points, that the results are physically plausible, and that enough information is given to try to reproduce the results if there is interest.”

But editors at leading journals take a broader view, and they admit that the reviewers were among those at fault. “Clearly, reviewers were less critical of the papers than they should have been, in part because the papers came from Batlogg, who had an excellent track record, and from Bell Labs, which has always done good work,” admits Karl Ziemelis, physical sciences editor at Nature. “In addition, although the results were spectacular, they were in keeping with the expectations of the community. If they had not been, or had they come from a completely unknown research group, they might have gotten closer scrutiny.” Thus, reviewers and editors as a group had a bias toward expected results from established researchers that blinded them to the problems in the data. [LBE note: one notes there is no discussion of the letter to the editor of Nature by Paul Solomon of IBM.]

The Schön case points to problems in the peer-review system on which considerable discussion has focused recently, and which affect aspects of science far more significant than the infrequent case of fraud. “There is absolutely no doubt that papers and grant proposals from established groups and high-prestige institutions get less severe review than they should,” comments Howard K. Birnbaum, former director of the Frederick Seitz Materials Research Laboratory of the University of Illinois at Urbana-Champaign. He recently criticized peer-review practices in grant awards in an article in Physics Today. It is not just a problem of fraud, he says. I and colleagues have seen sheer nonsense published in journals such as Physical Review Letters, papers with gaping methodological flaws from prestige institutions.

Because journals have a limited number of pages and government agencies have limited funds for research, too lenient reviews of the established and the orthodox can mean too severe reviews of relatively unknown scientists or novel ideas. The unorthodox can be frozen out, not only from the most visible publications but also from research funding. Not only does less-than-sound work get circulated, but also important, if maverick, work does not get done at all. The peer-review system's biases, highlighted in the Schon case, tend to enforce a herd instinct among scientists and impede the self-correcting nature of science. This is scarcely a new problem. As Samuel Pierpont Langley, president of the American Association for the Advancement of Science, wrote in 1889, the scientific community sometimes acts as a pack of hounds...where the louder-voiced bring many to follow them nearly as often in a wrong path as in a right one, where the entire pack even has been known to move off bodily on a false scent. [LBE note: one must recall the role of Langley, and of Langley's experiments, in the saga of the Wright Brothers.]

(...)
One way to encourage real collaborations rather than passive co-authoring is to have the responsibility of co-authors listed in the published paper -- for example, device fabrication by John Doe, experimental procedure by Jane Smith, data analysis by Tom Harold. Senior researchers would then have to take co-responsibility for specific aspects of an experiment, or remove their names from papers to which they contributed little.

None of these changes, however, directly addresses the bias of reviewers toward prestigious groups and accepted ideas. More drastic reforms aim at fundamental changes in the system of anonymous review. Blind review, for example, involves removing the authors' names from articles sent to reviewers, while open review requires reviewers to sign their names to reviews seen by authors.



See also M.J.G. Farthing, "Publish, and be damned...", the road to research misconduct.

Sigaba statement on patent issue

Of arguments that "patents hinder innovation," contemplate the press release below:

Sigaba, the leading provider of secure messaging solutions, announced on May 31, 2005 the next step in its aggressive
defense
against patent infringement claims that were held to have had no merit by both the Federal District Court in San Francisco and the Federal Appeals Court. Cleared of all charges, Sigaba continues to pursue justice while it supports and expands its customer base with award-winning secure messaging solutions.

A June 2005 trial date has been set for Sigaba's counterclaims against Mayfield Partners, a Northern California venture capital firm, and PostX(TM), a provider of ebusiness solutions. One claim, filed in April 2003, states
that Mayfield Partners and PostX conspired to restrain trade by filing unfounded patent claims against Sigaba to slow Sigaba in its market, a violation of the Sherman Act. The second claim involves similar accusations against PostX alone.

"Sigaba is innocent of the charge of violating PostX patents. That's a matter of law, and there should be no further concerns in the marketplace. We're focused on the pioneering and innovation that has brought success to Sigaba and to its customers, and we're working on exciting new solutions to be unveiled down the road. Meanwhile, we're moving forward with our counterclaims to resolve the damage done to Sigaba by those meritless claims
and erase any confusion caused by these bogus suits," said Robert E. Cook, executive chairman of Sigaba.

In September 2002, PostX filed a patent infringement suit against Sigaba, just days after Sigaba won the largest secure messaging contract in history. PostX then actively contacted customers and prospects in the secure document delivery market, warning them that it would be dangerous to do business with
Sigaba, as they could become implicated in the alleged patent infringement
. [LBE note: remember ALAM and Henry Ford, 100 years ago.]

Sigaba was cleared of all charges in November 2004 by the Federal Appeals Court in Washington, D.C., which affirmed unanimously a decision by the Federal Court in San Francisco that a trial was not necessary to determine that Sigaba did not violate PostX patents, as a matter of law and that there was no basis for disputing this.

"Although this unfounded litigation has been a distraction, Sigaba's commitment to its customers is alive and well, and we're continuing to deliver great solutions based on our award-winning, patented secure messaging technology. The market is robust, and we're proud to be serving a growing base of blue-chip clients including Bank of America, Fidelity Investments, New
York Life, Agilent, First Data, and Blue Cross," said Cook.

Reasons for inventing

Relevant to the article by Joseph Hosteny in the May 2005 issue of Intellectual Property Today, here is an excerpt from an article by Patricia L. Farnese, Patently Unreasonable: Reconsidering the Responsibility of Patentees in Today's Inventive Climate, 6 Tul. J. Tech. & Intell. Prop. 1 (2004).


People are drawn to invent for a number of reasons.


First, the instinct to invent is inherent in some people. Those possessing a creative mind derive great pleasure in devising ways and means of making life easier. These people invent tools, machines, and systems that are efficient and master the task at hand. As F.W. Taussig wrote, "the biographies
of inventors give abundant illustrations of the state of inward
happiness which comes from the exercise of the contriving bent." Similarly, an intellectual curiosity, possessed by some people, has resulted in significant inventions from mere accidents. Where others would have paid no attention to the outcomes of a chance interaction of previously unrelated items, others see a revelation. A
story involving Charles Goodyear serves as an excellent example of how invention can result from intellectual curiosity:

Standing before a stove in a store at Woburn, Mass., he was
explaining to some acquaintances the properties of a piece of sulphur-cured india-rubber which he held in his hand. They listened to him good-naturedly, but with evident incredulity, when suddenly he dropped the rubber on the stove, which was red
hot. His old clothes would have melted instantly from contact with such heat; but, to his surprise, this piece underwent no such change. In amazement he examined it, and found that while it had charred or shriveled like leather, it had not softened at all. The bystanders attached no importance to this phenomenon, but to him it was a revelation.

Other inventors may be motivated by the desire for esteem among their peers and public at large. To be the first to understand, to complete an impossible task, or to create an item that becomes indispensable garners great respect. It is for this reason that the receipt of a Nobel Prize is such an honor. [Recall the prize to Smalley and Kroto was for recognition that C60 had the structure of a truncated icosahedron, not for making C60 first.]

Hatch-Waxman background

The Hatch-Waxman Act provides a procedure for a generic drug company to challenge the patent of a proprietary company. If the proprietary company disagrees with the assertions of the generic, the proprietary company becomes the plaintiff in a patent litigation.

Cutting Edge released the following:

Patent litigation remains the most commonly used generic defense strategy among pharmaceutical companies. 71% of drug companies have used legal battles to defend their patents in the past three years, according to research from pharmaceutical business intelligence firm Cutting Edge Information.

The pharmaceutical industry faces a significant threat from generics companies who challenge existing patents and erode branded product sales. While patent defense constitutes a very costly strategy, failing to react may lead to a bleaker outcome. On average, branded drugs lose 15-30% of their market share when a first generic version reaches the market. Sales decline by as much as 75-90% when companies introduce subsequent generics.

Two views of patenting done by the University of California

In the story below, UC Patents Generate Millions Annually, we have a textbook account of how the Bayh-Dole Act should work.

In the Eolas case, 399 F.3d 1325, 73 U.S.P.Q.2D 1782
(CAFC 2005), we have a story of how Eolas, operating under a license from UC, obtained a $500 million plus decision against Microsoft. However, in that case, we have learned that the professor involved at UC was directly and explicitly informed, before application filing, of prior art in the form of the Viola browser by Wei, but failed to tell the Patent Office about it. Separately, we see the W3C complaining to the Patent Office about the Eolas patent, stating that there was nothing new in the patent.

In the case, Eolas didn't really transform anything into an economically viable product. The people being sued did that. Whether this case will be good public relations for UC, or bad, as for the University of Rochester in the COX-2 case, remains to be seen.

from UC Patents Generate Millions Annually
by Rossana Mannan

Research under the University of California system is able to generate significant amounts of revenue as a result of the UC’s ownership of patents, especially if the research can be transformed into economically viable products and technologies.



(...)
Many times, UC faculty, students and alumni establish companies whose products and services were developed because of research done at a UC campus. In the areas of communications, information technology and networking, one in six California research and development firms were founded by a UC scientist or engineer.

(...)
“Getting a patent so that no one can use or sell them without the permission of the university brings in revenue and is good for [public relations] for the school,” said Alvin Virar, a patent and licensing officer from the UCI Office of Technology Alliances.

The article presents some numbers:

In the 2003-2004 fiscal year, the UC received $93.2 million from agreements it made with companies to license its patents. In 2004, the UC system held a total of 424 active patents, with UCI holding 174 of them.

Seven percent of the research done in California takes place on UC campuses, which produce approximately 41,000 new Ph.D.s each year. In the 2000 fiscal year, UCI spent $10 million on information technology and engineering research and $88 million on research in the biological sciences.


Although there is a quote about patents as an index of quality of research, one suspects that publications are still the main currency of the academic realm:

“Patents are one, though not the only, way of measuring the quality, scientific breadth, reputation and public service [value] of research conducted by a public university,” said Trey Davis, director of special projects in the UC Office of the President.

There is a mention of outsourcing to foreign countries (offshoring):

“More and more companies are scaling back their research and development,” Virar said. “With the outsourcing of jobs to other countries, more innovation and technology are coming from [college] campuses.”

Actually, government support of research has been DIMINISHING relative to private support. [refer to data previously mentioned in IPBiz from Henry Chesbrough, Open Innovation: The New Imperative for Creating and Profiting from Technology, Boston: Harvard University Press, 2003.]

Monday, May 30, 2005

Do law review authors really care about changing the law?

The author below is discussing two law review articles (written as an assistant prof), one in Harvard Law Review, one in Yale. The Harvard Law Review, as you may remember, published a note about how the Patent Office granted 97% of incoming applications, pure fantasy.

Does the intent of a law review author control whether the law review article will change the law?

from isthatlegal, concerning legal writing:

About a decade later, I still think I was onto something in both pieces (especially in the inconsistent verdicts piece), but despite their highbrow pedigrees, the articles have had about as noticeable an impact on the law as liposuction on a sumo wrestler. And that is probably as it should be, because I really didn't care a wink about whether the law should change. The problems I was addressing in both pieces were just intellectual puzzles for me. That's why they look a bit empty to me in retrospect.

Red card for Microsoft?

from mathabanet through ZDnet:

It looks like more people are noticing the ridiculousness coming out of the patent system lately. ZDNet in the UK has spotted some of Microsoft's questionable patents that seem to keep showing up including a new one for looking up phone numbers on your mobile phone. The article puts it best: "It may be that nobody involved in that patent has ever seen, owned or operated a mobile phone. It may be that Microsoft's patent lawyers are genuinely unaware of the concept of prior art. It may be that Microsoft is gaming the system, taking advantage of patent office docility to create a legal minefield disguised with only the very faintest veneer of innovation." And this all comes from a company that claims it wants to reform the patent system. Maybe all of these patents are just being filed to prove their point? Either way, the ZDNet article concludes by suggesting that entities that repeatedly file frivolous patents be given a "red card" and be banned from taking part in the patent system. This sounds like a great idea, except for one tiny detail. The patent office still doesn't seem to think any of these patents are "frivolous." They just keep approving them, and leaving it for the courts to sort out down the road. No wonder lawyers love the patent system.

****
Microsoft has been criticized over a recent patent on XML (US 6,898,604)

from ZDNet:

The patent, which was granted by the US patent office on Tuesday, May 24, is for XML serialisation and deserialisation — the conversion of a programming object into an XML file and vice versa. It was criticised by software developers as it is a basic programming concept that is essential for applications using XML to share data.



But Microsoft denied that any of its patents are of low quality and claimed that its patents have been praised in research studies.



"As a result of our industry leading commitment to research and development, Microsoft maintains thousands of patents," said the spokesperson. "Studies routinely rank our innovations among the most significant across any industry. A study by the Massachusetts Institute of Technology in 2003, which provided an overall assessment of Microsoft’s intellectual property, found that Microsoft continues to develop relevant patents and gave us one of the highest scores on the list of technology companies in that category."



Microsoft did not provide more details on the MIT report, and didn't say why it believes the XML patent is innovative.



Various ZDNet UK readers were angered by the news that Microsoft had been granted a patent for XML serialisation. One reader pointed out that Microsoft should not have been allowed this patent as it is obvious.



"XML was born as a particular format for data storage. A programming object is made up of data. Where is the patentable 'innovation' in using XML for the purpose it's born for?" said one reader.



Software developer Roderick Klein laid the blame at the door of the US patent office. "It just seems people who review patents at patent offices seem to have no skill sets at all when it comes to IT... when you see the incredible amount of crap that gets approved," said Klein.

***
The first claim of the '604 patent:

A method for serializing an object instance to a serial format, the method comprising steps of:

generating a mapping between an arbitrary annotated source code file and a schema, the arbitrary annotated source code file containing at least one programming type that describes a shape of an object instance and the schema describing a format of a document having a serial format, the mapping defining a correspondence between the shape of the object instance and the format of the document having the serial format; and

converting an object instance corresponding to the arbitrary annotated source code to the serial format by converting at least one of a public property, a public field and a method parameter of the object instance to a document having the serial format based on the mapping.

The "background" contains the statement:

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




****
As an aside, here is an interesting Microsoft patent:


6,754,472 Method and apparatus for transmitting power and data using the human body

First claim:

A network of devices comprising:

a first device for generating a first electrical signal;

a second device including first circuitry requiring an electrical signal from an external source to operate, wherein the second device generates initialization information including at least power requirement information; and

a body of a living creature for coupling the first device to the second device and for conducting the electrical signal from the first device to the second device and the initialization information from the second device to the first device, wherein the first and second devices establish a master and a slave relationship there between.

And another
6,584,185 Telephone abstraction layer and system in a computer telephony system

first claim:
A computer-readable medium having computer-executable components, comprising a telephony component providing core telephony functions, said telephony component including a telephone abstraction layer which transmits abstract telephone control commands in response to operation of said core telephony functions.

Friday, May 27, 2005

Hosteny explaining US 6,206,000 on canine scuba

In the May 2005 issue of Intellectual Property Today (pp. 28-29), patent attorney Joseph Hosteny explains US 6,206,000 (Canine Scuba Diving Apparatus; application by Hosteny)in light of its appearance in the book "Patently Ridiculous," and thereby in a book review in the New York Times (March 21, 2005).

John Strausbaugh of the Times placed this patent in the category of "chindogu," (weird tools), contextually meaning a superfluous patent granted by the USPTO. Another example might be the swing patent or the sealed, crustless sandwich patent. On April 22, 2005 in Stevenson, Washington, Cecil Quillen argued that the USPTO granted too many patents, and this one might have been a poster child for Quillen's argument.

As such, it is worthwhile experience to see how Hosteny defends his exercise in application drafting within the IPT article, titled "In Favor of Brainstorming."

One caveat about his reference to the Wright Brothers. When the application of the Wright Brothers was drafted (incidentally, by the Wright Brothers themselves), they had NOT achieved powered flight (which occurred Dec. 17, 1903). The application, and subsequent patent, were directed to three-dimensional control of an aircraft, and that system worked pretty well. The Wrights believed once control was achieved everything else would easily follow.

[As an aside, there is a different mistake about the Wright Brothers in the National Academy of Sciences report, arising from a failure to recognize that the application was drafted before Dec. 17, 1903.]

Hosteny also includes the purported remark of the Commissioner of Patents in 1899: Everything that can be invented has been invented. One might want to check that one out a bit. Further, it is useful to note a parallel remark by a famous physicist made prior to era of quantum mechanics [A. A. Michelson popularized the idea that physicists have nothing left to do but determine the physical constants to another decimal place, but attributed this idea to a mysterious "eminent physicist." Physics Today, 22, no. 1: 9 (January 1969); "Max Planck's physics teacher famously advised him to take up the piano, as there was nothing left to do in physics but fill out a few more decimal places."]

Of Hosteny's reference to the 1899 remark, from Skeptical Inquirer:

This news story [about the alleged 1899 quote] surfaced in the fall of 1985, when full-page advertisements sponsored by the TRW Corporation appeared in a number of leading periodicals, including Harper's and Business Week.

These ads had as their theme "The Future Isn't What It Used to Be." They contained photographs of six individuals, ranging from a baseball player to a president of the United States, who had allegedly made wrong predictions. Along with such statements as "Sensible and responsible women do not want to vote," attributed to President Cleveland, and "There is no likelihood man can ever tap the power of the atom," attributed to physicist Robert Millikan, there is a prediction that was supposedly made by Commissioner of the U.S. Patent Office Charles H. Duell. The words attributed to him were: "Everything that can be invented has been invented." The date given was 1899.

Since I was certain that the quotation was spurious, I wrote to the TRW advertising manager to ask its source. In response to my inquiry, I received a letter referring me to two books, although I had specifically asked for the primary and nor secondary sources. The books were The Experts Speak, by Christopher Cerf and Victor Navasky, published in 1984 by Pantheon, and The Book of Facts and Fallacies, by Chris Morgan and David Langford, published in 1981 by St. Martin's Press.

(...)

The other book cited by the advertising manager of TRW, Inc., The Experts Speak, by Cerf and Navasky, offers a key to how myths are perpetuated. This volume, published three years after the Morgan and Langford work, contains the spurious Duell quote, "Everything that can be invented has been invented," and prints it as though it had formed part of the commissioner's 1899 report to President McKinley. However, unlike the earlier work, The Experts Speak contains source notes in the back. The source given reads as follows: "Charles H. Duell, quoted from Chris Morgan and David Langford, Facts and Fallacies (Exeter, England, Webb & Bower, 1981), p. 64." Unlikely as it is for the head of the U.S. Patent Office to have said something so silly, evidently it did not occur to Cerf and Navasky to question that statement. They simply copied it from the earlier book. One can expect that in the future there will be more copying because it is easier than checking the facts.

The irony is that the subtitle of The Experts Speak is "The Definitive Compendium of Authoritative Misinformation." One can only wonder how much more misinformation is contained in this nearly 400-page compendium. On the title page the book is described as a "joint project of the Nation magazine and the Institute of Expertology." Whatever this institute may be, on the theory that the Nation is a responsible publication, I wrote to Mr. Navasky, who is editor of that magazine and coauthor of the book, to ask if he could tell me where and when Commissioner Duell made the stupid statement attributed to him. I did not receive a reply.

http://www.findarticles.com/p/articles/mi_m2843/is_3_27/ai_100755224

***

The history of the 1899 "quote" is not unlike the history of the "97% of applications result in patents" story. The initial number of 97% was only a bound, which was stated to be the actual grant rate by, among others, the Harvard Law Review. The idea of an elevated grant rate is now imbedded in legal academic folklore.

***

Anyway, Hosteny's article has a great figure of a scuba-equipped dog.

Int. Prop. Today publishes article on offshoring patent drafting

At pages 38 and 39 of the May 2005 issue, Intellectual Property Today published "Offshoring Patent Drafting and Prosecution Services," by Alok Aggarwal, chairmain of EvalueServe, Inc.

The third paragraph states: To contain costs, many in-house IP divisions as well as stand-alone IP law-firms have already started outsourcing some of their work (e.g., drafting of figures, literature searches, prior art searches, and invalidation studies) to third parties within the United States and some even to other countries.

The fourth paragraph mentions: ...many companies are beginning to explore the potential of offshoring IP services to third parties, particularly those that are located in low-wage countries such as India.

Aggarwal estimates that there were 300 IP professionals in India in March 2005 providing offshore services, and estimates that the number will grow six-fold between 2005-2010.

The article does not mention potential issues in sending technology offshore involving export regulations such as EAR.

Laurence Tribe not doing second volume of Am Con Law

from Tony Mauro of Legal Times (May 27):

Now, with the nonpublication of the second volume, Tribe may make headlines again. Tribe's announcement came April 29 in a letter to Justice Stephen Breyer, who had asked him casually how he was coming on the second volume, which was scheduled to cover individual rights issues.

Tribe decided to write Breyer back. His "Dear Steve" letter and a 12-page elaboration will be published by Green Bag, Davies' law review at George Mason.

Tribe, 63, said neither personal factors nor ennui were at issue in his decision not to proceed. "It's not my health, which is fine," he wrote. "Or that I've lost interest in the questions the unpublished chapters would have discussed or the drive to pursue them doggedly."

***
Earlier, there had been discussion of ghost-writing.

Judge Posner had written:

So judges, politicians, businessmen, lawyers--and now it seems law professors--increasingly hire ghostwriters (whether they're called ghostwriters, law clerks, or research assistants) as specialists in writing

Thursday, May 26, 2005

MPEP 2144 not discussed in professors' amicus brief on obviousness

Another topic not discussed in the amicus brief of the 24 law professors concerning obviousness in KSR Inter. v. Teleflex is MPEP 2144:

RATIONALE MAY BE IN A REFERENCE, OR REASONED FROM COMMON KNOWLEDGE IN THE ART, SCIENTIFIC PRINCIPLES, ART- RECOGNIZED EQUIVALENTS, OR LEGAL PRECEDENT

The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). See also In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (discussion of reliance on legal precedent); In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (references do not have to explicitly suggest combining teachings); Ex parte Clapp, 227 USPQ 972 (Bd. Pat. App. & Inter. 1985) (examiner must present convincing line of reasoning supporting rejection); and Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993) (reliance on logic and sound scientific reasoning).

MPEP 2144, along with some other CAFC case law, offers a divergent view to the interpretation of In re Lee, 277 F.3d 1338, made by some of the professors. Lee has become a boogeyman somewhat analogous to the "97% of patent applications are granted" fantasy which underlies the patent quality discussion.

Fantasy as fact: two viewpoints

I had an opportunity to discuss the "fantasy as fact"/false footnotes in law reviews issue with two legal people, one a publisher and one an academic legal ethicist. The publisher could not believe that material known to be false would not be retracted immediately. The academic understood that it would not be retracted, and saw no ethical issue with the failure to retract. He had not heard about the Jan-Hendrik Schon affair.

Criticism of NAS patent reform proposal in IDEA

Dale L. Carlson et al. criticize the proposal of the National Academy of Sciences for patent reform in the paper "Patent Linchpin for the 21st Century -- Best Mode Revisited," 45 IDEA 267 (2005).

At pages 279-280: The NAS recommendation to remove best mode is based on two misperceptions:
1. that the cost of the best mode requirement exceeds the value
2. that best mode is an obstacle in international harmonization.

The NAS report is by Stephen A. Merrill, Richard C. Levin, and Mark B. Myers, and is entitled A Patent System for the 21st Century. I have criticized it for relying on a comparison of foreign grant rates to US grant rates to infer deficient quality in the US patent review process.

UPDATE:
The PromotetheProgress blog has a page on patent reform:

http://promotetheprogress.com/archives/2005/06/the_ptp_patent_1.html

Also, my law review articles in JIP discuss some of the patent reform proposals of the FTC and the NAS.

Wednesday, May 25, 2005

Biomet injunction against Medtronic

Biomet obtains an injunction against Medtronic, but the injunction is stayed.

from Business Week:

Medical device maker Medtronic Inc. said May 25, 2005 that a federal court issued an injunction against the company over polyaxial screws that infringed a patent held by orthopedic product maker Biomet Inc.

Medtronic said that the injunction for the screw products used to stabilize and correct back disorders has been stayed for 90 days and will take effect Aug. 22. The company said it asked an appeals court to extend the stay to ensure that patients and surgeons still have access to the devices.

The injunction, handed down by the U.S. District Court for the Central District of California, follows a ruling in April that found Medtronic's Sofamor Danek spinal products unit in violation of a patent held by Biomet unit Cross Medical Products Inc.

District court claim construction reversed in Mattox

We have another claim construction reversed in the non-precedential Mattor decision.

CAFC finds obviousness in In re Harris

Further undercutting the brief of the 24 law professors, the CAFC affirmed another finding of obviousness in In re Harris and Wahl.

The case concerns ranges, and explains Peterson, 315 F.3d 1325 (CAFC 2003).

This decision also cites In re Dillon, 919 F.2d 688 (CAFC 1990)[en banc].

The amicus brief of the 24 law professors concerns the case KSR International v. Teleflex.

Chisum: reforming patent law reform

Donald S. Chisum, Reforming Patent Law Reform, 4 J. Marshall Rev. Intell. Prop. L. 336 (2005).

Chisum suggests that Congress should reform the system for the better of all using neutral principles.

The paper is recent and at page 338 mentions a case reported "last week," which bears a date in footnote 15 of April 23, 2005. The paper includes references through April 2005, and footnote 6 mentions a site last visited May 19, 2005.

At page 339, there is mention of Smucker's patent US 6,004,596. Chisum rhetorically asks how the PTO could issue such a thing. However, Chisum does not mention that the claims of the '596 have been rejected in re-exam, or that the claims of two continuing applications were rejected by the PTO, with the rejection affirmed by the CAFC. [At page 342, Chisum makes a distinction between jam and jelly, seemingly overlooking the point that claim 1 covers either jam or jelly; the claim is directed to a sealed, crustless sandwich with a crimped edge, with at least one filling of an edible food. The specifics of this debate are somewhat academic, as the '596 is apt to be toast.]

At page 340, Chisum discusses patent trolls. He notes: "Faced with a competitor, the company could assert its own patent portfolio and reach a reasonable cross-licensing agreement. But a troll does not need a cross-license and therefore is uninterested in cross-licensing." Going back to the Wright Brothers, one recalls they were not interested in cross-licensing with Glenn Curtiss. They wanted to shut him down. Although the Wrights did make a product, they wanted royalties from their competitors, not deals. Further, third parties did play definitional games with what the product was [e.g., the Wright's did not win a Scientific American race, because their aircraft had "rails" rather than the required wheels; the Army later required pull propellors rather than the Wright's push.] One recalls the early days of radio. Several competitors each owned a piece of the technology of voice transmission through ac, but they never did come to a "reasonable cross-licensing agreement."

At page 341, Chisum introduces his first principle for reform: simplicity. Does the proposed change make the system simpler in operation? [Parenthetically, one notes oppositions do not; Chisum's paper does not appear to discuss oppositions/post-grant review.]

The second principle is zero-based budgeting.

The third principle is cost sensitivity.

The fourth principle is completeness and generality. Chisum faults the proposed Patent Bill for lack of completeness for not having a provision on a research exemption. He notes that some groups who have patents on research tools oppose such an exemption. Ironically, a group that holds patents on research tools is universities. In fact, a group of universities (headed by WARF) aligned with the patentee Integra, and against the "researcher" Merck, in Merck v. Integra, concerning the scope of 271(e)(1). No university group filed a brief on behalf of Merck. Furthermore, a research exemption is likely to be tricky in a Bayh-Dole world, wherein university groups are aligned with workers in the private sphere.

At page 344 and following, Chisum gets into some specific examples.

**UPDATE**

In September 2006, after patent reform has been stalled, we have a paper on "differential impact" by Sag (DePaul) and Rohde (Northwestern). The abstract seems to toss around the terms "good" and "bad" freely:

Congressional efforts to address the crisis of confidence in the U.S. patent system have failed up to the present day. If Congress is to have any hope of passing much needed legislative reform to the Patent Act, the supporters of patent reform will have to unite behind a streamlined set of proposals that directly address the most pressing and unambiguous defects of the current patent system. To that end, we have proposed applying a test of differential impact to enable Congress to prioritize those reforms which will discourage the acquisition and assertion of bad patents without unduly prejudicing the interests of the holders of good patents.

Is the Eolas/Berkeley patent good or bad? Is the Harvard/MIT patent asserted against Eli Lilly good or bad?

** In passing,

The patent reform conference at Berkeley in April 2004 began with remarks from Dean Designate Chris Edley: Boalt Hall School of Law, Mark Myers, NAS & Xerox Corporation
and Commissioner Mozelle Thompson, FTC

An industry panel included:

- Gary Griswold: AIPLA
- Robert Barr: CISCO
- Bart Eppenauer: Microsoft
- Sean Johnston: Genentech
- Jeffrey Kushan: Sidley Austin Brown & Wood & BIO
- Jay Monahan: eBay
- Ron Myrick: Finnegan, Henderson, Farabow, Garrett & Dunner
- Kulpreet Rana: Google
- Robert Sacoff: Pattishall, McAuliffe & ABA IP Section
- Michael Schallop: Symantec Corporation
- David Simon: Intel Corporation
- Herb Wamsley: Intellectual Property Owners

Presenting fantasy as fact

The plagiarism episode involving Laurence Tribe of Harvard Law School has pretty much died down. "Borrowing" by faculty members will be tolerated more than "borrowing" by students, at least at Harvard.

I came across the following text on the internet:

In the Goodwin controversy, Tribe suggested that presenting fantasy as fact was a terrible offense for an academic — worse, indeed, than plagiarism. In the Green Bag essay, published a year after his defense of Goodwin, he appears to have committed precisely that offense while also taking credit for the achievements of others (Chief Justice Burger and anyone who actually influenced him).

I would tend to agree that presenting fantasy as fact has the potential to do more damage than misrepresenting the source of a fact. Yet, law reviews seem to be quite willing to present fantasy as fact, and there is less discussion of this than of plagiarism issues.

For example, for the record, Robert Clarke never assumed "every continuation leads to a patent," and the assertion that he did is wrong, wrong, wrong. The conclusion from this error that the number of Quillen and Webster of 85% patent grant rate is the best we have is also wrong, wrong, wrong. To the extent that the patent reform debate is informed by artificially inflated patent grant rate numbers, it is wrong, wrong, wrong.

Marxism in Texas?

From the Texas Law Review, we have an exposition on Marxism and intellectual property, Dan Hunter, Culture War, 83 Tex. L. Rev. 1105 (2005).

from the article:
However, I suggest that copyright and patent reform - where commentators have actually been accused of Marxism - is
not where the Marxist revolution is taking place. Instead I locate that revolution elsewhere, most notably in the rise of open source production and dissemination of cultural content.

[And, yes, the author did thank Larry Lessig of Stanford.]

Law review article on patent trolls

We now have: Troll or no Troll? Policing Patent Usage with an Open
Post-Grant Review, 2005 Duke L. & Tech. Rev. 9.

Sadly, the article was obsolete by the time it appeared. It discussed JGR as a trolling event, when it in fact was not (see earlier post about Novell on IPBiz). From the article:

This type of enforcement--potentially a case of patent trolling--may have been JGR Acquisitions Inc.'s (JGR) goal when it purchased Commerce One's patent portfolio. Commerce One was founded in 1994 and its focus was on developing electronic commerce software applications.

The proposed remedy to trolling is somewhat silly:

P19 In order to prevent patent trolls from deterring innovation and
protect legitimate patent enforcers, an open post-grant review should be available as an alternative to costly litigation. Patent trolls should be unable to capitalize
on market uncertainty by allowing others to unknowingly develop
infringing technologies while waiting in the wings to subsequently appear and extract licensing fees. At the same time, as demonstrated in the previous section, a patentee should be able to sell his patent rights in certain situations and the
purchaser should be able to enforce the patentee's rights. The best way to achieve this balance is to introduce legislation requiring the PTO to conduct an open review of a patent whenever a patent is renewed or sold.

[The "open review" discussed by the FTC and NAS is an opposition proceeding within a certain time after the patent ISSUES.]

Common sense in obviousness: Lee, 277 F.3d 1338

In their haste to prepare the amicus brief for KSR Inter. v. Teleflex, the twenty-four law professors left two entries for the one case, In re Lee, 277 F.3d 1338, 61 U.S.P.Q.2D 1430 (CAFC 2002), in the list of authorities.

To further the discussion of obviousness, we discuss the Lee case in a bit more detail than did the 24 professors.

This was a case about combining references in an obviousness rejection. In not requiring motivation to combine the references, the Board did not follow the law of the CAFC. From the case:

However, perhaps recognizing that the examiner had provided insufficient justification to support combining the Nortrup and Thunderchopper references, the Board held, as stated
supra, that a "specific hint or suggestion" of motivation to combine
was not required
.


Also at issue was the adequacy of the reasoning:


For judicial review to be meaningfully achieved within these
strictures, the agency tribunal must present a full and reasoned explanation of its decision. The agency tribunal must set forth its findings and the grounds thereof, as supported by the agency record, and explain its application of the
law to the found facts.


The concept of "common sense" appears in the decision:

The case on which the Board relies for its departure from precedent,
In re Bozek, 57 C.C.P.A. 713, 416 F.2d 1385, 163 U.S.P.Q. (BNA) 545 (CCPA 1969), indeed mentions "common knowledge and common sense," the CCPA stating that the phrase was used by the Solicitor to support the Board's conclusion of obviousness based on evidence in the prior art. Bozek did not hold that common knowledge and common sense are a substitute for evidence, but only that they may be applied to analysis of the evidence. Bozek did not hold that objective analysis, proper authority, and reasoned findings can be omitted from Board decisions. Nor does Bozek, after thirty-two years of isolation, outweigh the dozens of rulings of the Federal Circuit and the Court of Customs and Patent Appeals that determination of patentability must be based on evidence. This court has remarked, in Smiths Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 U.S.P.Q.2D (BNA) 1415, 1421 (Fed. Cir.
1999), that Bozek's reference to common knowledge "does not in and of itself make it so" absent evidence of such knowledge.

The CAFC presented the heart of the problem:

Thus when they [examiner and Board] rely on what they assert to be general knowledge to negate patentability, that knowledge must be articulated and placed on the record. The failure to do so is
not consistent with either effective administrative procedure or
effective judicial review. The board cannot rely on conclusory statements when dealing with particular combinations of prior art and specific claims, but must set forth the rationale on which it relies.

Lee is cited in

Iron Grip Barbell v USA Sports, 392 F.3d 1317, 73 USPQ2d 1225 (CAFC 2004), district court's finding of obviousness affirmed. Iron Grip was NOT cited by the professors.

We turn first to a comparison between the prior art and the claimed
invention. In this inquiry, we are mindful of the repeated warnings of the Supreme Court and this court as to the danger of hindsight bias. See, e.g., Graham, 383 U.S. at 36 (consideration of secondary factors "serves to guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue" (internal quotations and
citations omitted)); In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) ("The very ease with which the invention can be understood may prompt one to fall victim to the insidious effect of a hindsight syndrome wherein that which only the invention taught is used against its teacher." (internal quotations omitted)). We note in this respect that the district court's use of an
"overall picture" and "common sense" test of obviousness falls squarely into the hindsight trap. See In re Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002).


Dan Burk and Mark Lemley mention Lee in Biotechnology's Uncertainty Principle, 54 Case W. Res. 691 (2004):

For an extremely strict statement of the legal standard on
combining references, see In re Lee, 277 F.3d 1338 (Fed. Cir. 2002); Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000).

Hall and Harhoff [19 Berkeley Tech. L.J. 989] also mention Lee:

A recent decision by the Court of Appeals for the Federal Circuit
creates still another reason for serious consideration of a nonjudicial process for post-issue validity challenges. In 2002, the Federal Circuit ruled that the USPTO had incorrectly rejected an application for obviousness, arguing that if an examiner rejects an application using "general knowledge," that knowledge
"must be articulated and placed on the record." n40

40. In re Lee, 277 F.3d 1338 (Fed. Cir. 2002). This decision
presumably makes it more difficult to reject such patents as U.S. Patent No. 6,368,227 (issued Apr. 9, 2002), the patent on a swinging method that uses a technique known by children for years, but not placed "on the record." This particular patent has been subject to a reexamination request of the U.S. Patent Commissioner, probably because of the publicity it received. NAS Study, supra note 3, at 39. The problem with patents like U.S. Patent No. 6,368,227 is not necessarily that they are enforceable in the courts, but that they clog the system and raise its total cost.


[The argument of Hall and Harhoff is silly. Lee was a case in which the CAFC reversed the Board. The CAFC would have the same authority to reverse the findings of the PTO in an opposition. An opposition procedure, contrary to Hall and Harhoff would not affect what was going on in Lee. Further, one notes that the "swing patent" was invalidated. Further, rejections of continuations of the sealed crustless sandwich of Smucker were also upheld. Proper evidence was presented.]
In their haste to prepare the amicus brief for KSR Inter. v. Teleflex, the twenty-four law professors left two entries for the one case, In re Lee, 277 F.3d 1338, 61 U.S.P.Q.2D 1430 (CAFC 2002), in the list of authorities.

To further the discussion of obviousness, we discuss the Lee case in a bit more detail than did the 24 professors.

This was a case about combining references in an obviousness rejection. In not requiring motivation to combine the references, the Board did not follow the law of the CAFC. From the case:

However, perhaps recognizing that the examiner had provided insufficient justification to support combining the Nortrup and Thunderchopper references, the Board held, as stated
supra, that a "specific hint or suggestion" of motivation to combine
was not required
.


Also at issue was the adequacy of the reasoning:


For judicial review to be meaningfully achieved within these
strictures, the agency tribunal must present a full and reasoned explanation of its decision. The agency tribunal must set forth its findings and the grounds thereof, as supported by the agency record, and explain its application of the
law to the found facts.


The concept of "common sense" appears in the decision:

The case on which the Board relies for its departure from precedent,
In re Bozek, 57 C.C.P.A. 713, 416 F.2d 1385, 163 U.S.P.Q. (BNA) 545 (CCPA 1969), indeed mentions "common knowledge and common sense," the CCPA stating that the phrase was used by the Solicitor to support the Board's conclusion of obviousness based on evidence in the prior art. Bozek did not hold that common knowledge and common sense are a substitute for evidence, but only that they may be applied to analysis of the evidence. Bozek did not hold that objective analysis, proper authority, and reasoned findings can be omitted from Board decisions. Nor does Bozek, after thirty-two years of isolation, outweigh the dozens of rulings of the Federal Circuit and the Court of Customs and Patent Appeals that determination of patentability must be based on evidence. This court has remarked, in Smiths Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 U.S.P.Q.2D (BNA) 1415, 1421 (Fed. Cir.
1999), that Bozek's reference to common knowledge "does not in and of itself make it so" absent evidence of such knowledge.

The CAFC presented the heart of the problem:

Thus when they [examiner and Board] rely on what they assert to be general knowledge to negate patentability, that knowledge must be articulated and placed on the record. The failure to do so is
not consistent with either effective administrative procedure or
effective judicial review. The board cannot rely on conclusory statements when dealing with particular combinations of prior art and specific claims, but must set forth the rationale on which it relies.

Lee is cited in

Iron Grip Barbell v USA Sports, 392 F.3d 1317, 73 USPQ2d 1225 (CAFC 2004), district court's finding of obviousness affirmed. Iron Grip was NOT cited by the professors.

We turn first to a comparison between the prior art and the claimed
invention. In this inquiry, we are mindful of the repeated warnings of the Supreme Court and this court as to the danger of hindsight bias. See, e.g., Graham, 383 U.S. at 36 (consideration of secondary factors "serves to guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue" (internal quotations and
citations omitted)); In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) ("The very ease with which the invention can be understood may prompt one to fall victim to the insidious effect of a hindsight syndrome wherein that which only the invention taught is used against its teacher." (internal quotations omitted)). We note in this respect that the district court's use of an
"overall picture" and "common sense" test of obviousness falls squarely into the hindsight trap. See In re Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002).


Dan Burk and Mark Lemley mention Lee in Biotechnology's Uncertainty Principle, 54 Case W. Res. 691 (2004):

For an extremely strict statement of the legal standard on
combining references, see In re Lee, 277 F.3d 1338 (Fed. Cir. 2002); Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000).

Hall and Harhoff [19 Berkeley Tech. L.J. 989] also mention Lee:

A recent decision by the Court of Appeals for the Federal Circuit
creates still another reason for serious consideration of a nonjudicial process for post-issue validity challenges. In 2002, the Federal Circuit ruled that the USPTO had incorrectly rejected an application for obviousness, arguing that if an examiner rejects an application using "general knowledge," that knowledge
"must be articulated and placed on the record." n40

40. In re Lee, 277 F.3d 1338 (Fed. Cir. 2002). This decision
presumably makes it more difficult to reject such patents as U.S. Patent No. 6,368,227 (issued Apr. 9, 2002), the patent on a swinging method that uses a technique known by children for years, but not placed "on the record." This particular patent has been subject to a reexamination request of the U.S. Patent Commissioner, probably because of the publicity it received. NAS Study, supra note 3, at 39. The problem with patents like U.S. Patent No. 6,368,227 is not necessarily that they are enforceable in the courts, but that they clog the system and raise its total cost.


[The argument of Hall and Harhoff is silly. Lee was a case in which the CAFC reversed the Board. The CAFC would have the same authority to reverse the findings of the PTO in an opposition. An opposition procedure, contrary to Hall and Harhoff would not affect what was going on in Lee. Further, one notes that the "swing patent" was invalidated. Further, rejections of continuations of the sealed crustless sandwich of Smucker were also upheld. Proper evidence was presented.]

Monday, May 23, 2005

Tri-Vision Electronics sues Best Buy

Harkening back to the days of Henry Ford, when ALAM would directly sue buyers of Ford's cars, Tri-Vision Electronics (holder of certain patent rights in the V-Chip) has sued Best Buy Canada, for selling products of Xiamen Overseas Chinese Electronic Company in Fujian Province in southeast China, which operates under several brand names including Xoceco and Prima Electronics.

From the New York Times:

The V-chip, or ViewControl, as it was originally known, allows parents to program televisions to block violent or other objectionable programming from their children based on either motion picture ratings or United States parental television guidelines that are transmitted along with most shows.

The United States and Canada require the technology to be included in all new television sets.

The process was invented in 1991 by Timothy D. Collings, who was then a professor of engineering at Simon Fraser University in British Columbia. Professor Collings subsequently received patents in North America and Europe.

He assigned those for commercial development to Tri-Vision, which makes set-top boxes and other devices for cable television companies.

That is when Tri-Vision took, as Mr. Eldon described it, "the next step" and demanded a license from Best Buy Canada, a wholly owned unit of the Best Buy Company, which operates stores under its own name as well as the Future Shop brand throughout most of Canada.

In its filing with the Federal Court of Canada, Tri-Vision asks for an order stopping Best Buy from selling Prima televisions, including those it now has in stock.

The company also seeks damages based on the profits generated by past sales of Primas.

C&E News wrong on open access journals

We have already seen the opposition of the American Chemical Society (ACS) to public databases, such as PubChem.

In an editorial entitled "More Socialized Science" (Chemical & Engineering News, [C&E News, page 5 (May 16, 2005)]), Rudy Baum attacks the "open access" movement in scientific publishing.

Baum asserts scientific information -- peer reviewed, edited, packaged, and archived as a journal -- costs a substantial amount of money to produce. He further notes that conducting research and publishing the results of the research are two separate activities that both involve costs. He asserts that open access shifts the costs of publishing research results from the users of scientific information (in most cases, other researchers, not the general public) to the researchers conducting the research in the form of page charges and submission charges. Baum also asserts this would give a free ride to the chemical industry, a major user of chemical literature but a relatively minor contributor to it.

Time has passed Mr. Baum by.

The costs to disseminate scientific information, whether in the form of databases (such as PubChem) or in the form of journals, have diminished. Journals have a relatively free ride: they don't pay the costs of research, they don't pay the authors for their works of authorship, and they don't pay the referees. The federal government does pay for research, in part in the form of grants from agencies such as the NIH, NSF, and DOE. The federal government expects the results of this publicly-financed research to be disseminated to the public. Yes, to everyone.

Seven years ago, in 1998, there was a debate about whether or not there would be a public database of US patents. There were private vendors of this information, but the services were somewhat costly. Journal subscriptions and use of private databases (such as CAS) are also somewhat costly. In 2005, there are private vendors that sell copies of US patents, and the services are not as costly as in 1998. Information is more accessible, both from the free database and from private vendors.

Baum asserts that industry would get a free ride. This statement has some problems. The bulk of funding for R&D in the US comes from industry, not from government. One can inspect "Sources of Funding" in Chesbrough's book "Open Innovation" (at page 27) and see that in 1998, the ratio of industry funding to government funding was 125,469/59,083. The last time government funding exceeded industry funding was in the early 1980's, more than twenty years ago.

Research results from industry are published, both in the scientific literature and in patents. Work on high-temperature oxide superconductors originated in industry (IBM), was published in journals, and led to a Nobel Prize. The first work on C60 was published by Exxon in 1984 in the Journal of Chemical Physics. Recall that the work of Jan-Hendrik Schon of Lucent was published in the peer-reviewed journals Science and Nature. Recall also it was fraudulent, and millions of dollars of public funds were wasted.

Baum also neglects to state that he, and the ACS, have a financial stake in the outcome of the debate over public databases and open-access journals. The ACS is in the database business (e.g., CAS) and in the journal business (e.g., JACS), and would be adversely affected financially if there were free databases that competed with CAS or open-access journals that competed with ACS journals. Thus, there is a conflict-of-interest.

The idea that peer-review is always a value-added experience can also be questioned. Editors and referees can have their own agenda. One example of this was in the touting (by, among others, Baum) of applications for fullerenes, when the applications were questionable, and there were even stability issues.

From Who's Kidding Whom? More Thoughts on Zurko and
the Finding of Facts, Intellectual Property Today, May 1999, related to the publication of the paper, “Oxidative Stability of Fullerenes”, J. Phys. Chem., 98, 3921 (1994):

There are a few further details to note. The underlying early belief that bulk fullerenes were stable to air/oxygen arose, in
part, from reports that fullerenes were found in soot. The "soot" in question was not that from a diesel engine, or combustor, but from controlled combustion experiments employing laminar (not mixed) flames with a substoichiometric amount of oxygen
(ie, not enough oxygen to form carbon dioxide from all
carbon) and/or not enough
time to react fully. The argument became: if
fullerenes are found in soot, they
must be stable to air. Although experiments conducted
on "real" soot from
processes designed to burn carbon did not show
fullerenes, these results were
generally not discussed. An exception was at the 1989
Carbon Conference at Penn
State (see photograph). Conventional wisdom,
nevertheless, became that
fullerenes were air-stable. Thus, when the
above-noted 1994 paper was first
submitted to the Journal of the American Chemical
Society, it was returned by
the editor without even being submitted to referees
.
After submission to The
Journal of Physical Chemistry, the referees insisted
that the level of oxygen
found in ambient, bulk fullerene arose, not from
oxidation chemistry, but from
adsorbed water or carbon dioxide. The experiments
done at 115C, which showed
that the oxygen level increased (and did not decrease
as expected for adsorbed
water or carbon dioxide on fullerene), allowed the
1994 paper to be published in
the face of then-disbelief that there was ambient
oxidation. While scientific
arguments worked with the editor of The Journal of
Physical Chemistry, nothing could be done with the
editor of C&E News n15, who pointed to higher
temperature
work in the paper and ignored the published low
temperature work n16 (a new
variant on the concept of "negative pregnant"). In
the final analysis, the
facts exist whether or not they are reported
accurately, and they will,
ultimately, be found. Carefully scrutinizing
fact-finding is good for business.

In fact, after the flurry of fullerene patents in the 1990's, we see fullerene patents lapsing (for failure to pay maintenance fees) at a rate in excess of that for patents at large. When a patent holder won't pay a few thousand dollars to keep the patent alive, one understands that the patent holder sees the patent as basically without value. Some people understood this in the 1990's, but Baum wasn't one of them.

Friday, May 20, 2005

New Microsoft patent obvious?

from Technewsworld:

According to the patent, "it is directed at a system and process for allowing a user to treat both incoming and outgoing e-mail addresses in the message preview pane as well as the full message window of an e-mail message program as objects or distinct entries."

Microsoft was awarded a patent this week for a "system and process for allowing a user to treat e-mail addresses as objects" -- a patent called "obvious and trivial" by one critic of the filing.

"The technique of applying object properties and methods to various data fields in a software product has been standard practice for several decades," software developer Richard S. Tallent, of Beaumont, Texas, told TechNewsWorld. "Doing so with an e-mail address is no different than doing so with a file, a Web address, a misspelled word, or any other common data."

Tallent, who works for ERM, a global environmental consulting firm, maintained that the new patent might entail a feature in a software program, but "an invention that deserves 17 years of protection from similar implementation by competing products -- absolutely not."

Bound by Legalities
Microsoft offers e-mail as an Internet service provide through MSN as well as online through Hotmail .

According to the patent, "it is directed at a system and process for allowing a user to treat both incoming and outgoing e-mail addresses in the message preview pane as well as the full message window of an e-mail message program as objects or distinct entries."

The system, it states, provides "easy manipulation of the e-mail addresses, such as allowing them to be added to a contact list, copied to the computer's clipboard, or double-clicked to open the related contact information for that e-mail address' sender."

"Hence, this system and method of addressing e-mail messages minimizes the number of operator actions required in order to address e-mail messages by facilitating the user in completing his or her contact database or address book," it said.

When asked to explain the patent in something other than "patentese," Microsoft Director of Intellectual Property Licensing David Kaefer responded, "Very few companies will actually describe to you in lay person's terms what's covered in a patent, and the reason is this: whatever I tell you today that's on the record can be used, if this patent is ever litigated, to confine what is meant or not meant by this patent."

"Often, I find people jumping to a conclusion that this is a foundational patent that everybody's going to have to have because we all send e-mail," he told TechNewsWorld. "Those people often don't have a full appreciation that this patent is limited to the specific way that this innovation accomplishes the desired outcome."

Dual Strategy
Asked if the Microsoft patent was a defense, one aimed at pre-empting other companies from patenting the process, Kaefer said that his company has a mixed strategy for its inventions.

He explained that Microsoft spends US$7 billion on R&D every year. Of the inventions resulting from that research, the most important are patented.

"For other things, we don't necessarily seek a patent, but we may want to publish what is known as prior art so that no one else can patent that particular invention," he said.

Typically, he continued, Microsoft will license technology on which it has patents.

"Some companies don't have that approach," he observed. "Some companies use patents to prevent people from using an invention."

"For us," he said, "our broad strategy as a company is to make our portfolio available for licensing."

However, Tallent questions whether there should be any patents on software.

Different World
"Patents in the software world are different from patents everywhere else," he said. "We're not building little machines. This is not the cotton gin."

"When you are describing computer software," he continued, "it really can get pretty complex real fast. And frankly, I don't think that the patent reviewers are qualified to determine whether these patents are non-obvious to someone who is in the industry."

Brigid Quinn, a spokesperson for the U.S. Patent Office, noted that if a party believes that a patent was issued in error, it can be challenged at any time during the patent's life.

"If there's prior art that was overlooked by the examiner, someone can submit it to us and we will do a reexamination of the patent if the prior art raises a substantial new question of patentability," she observed.

However, she said that the office issues 180,000 to 190,000 patents a year and it receives only about 400 requests for reexamination. "A lot of people find fault with our patents," she remarked, "but they never bring the evidence to us."

Tallent called for companies to deploy a patent trust strategy rather than a patent defense strategy.

Patent Trust
"Why doesn't someone set up a patent trust?" he asked. "A company could obtain a patent under the broken system that we have now then release that patent into the trust. Then any company could make full use of that patent."

"Then you've protected yourself from a company coming in and patenting it against you, but then you and everyone else is free to use it as you see fit," he said.

***
And frankly, I don't think that the patent reviewers are qualified to determine whether these patents are non-obvious to someone who is in the industry.".

****
Although the technewsworld article did not disclose the patent number, it is likely US 6,895,426 (issued May 17), entitled Addresses as objects for email messages, the first claim of which recites:

A computer-implemented process for allowing a user to manipulate an email address contained in the preview pane or full message window of an email message of an email program as an object, comprising using a computer to perform the following acts:

identifying an entry in the preview pane or full message window of an email message as an email address, said identifying comprising,

finding at least one field in the preview pane or full message window containing an email message header of the email message containing one or more email addresses, and

parsing at least one email address from the at least one field in the preview pane or full message window which contains one or more email addresses;

checking the email address against addresses in one or more contact databases to determine if it is contained in a contact database, wherein a contact database is a set of stored contacts and corresponding addresses, and wherein said checking comprises at least one of,

determining if the address corresponds to a single contact in the contact list,

determining if the address corresponds to a mailing list in the contact list,

determining if the address corresponds to a newsgroup address in the contact list,

determining if the address corresponds to an invalid email address or internet address,

determining if the address corresponds to a valid email address not found to match any addresses in the contact list, and if so,

ascertaining whether the user's computer is in correspondence with one or more servers,

if the user's computer is not in correspondence with said one or more servers,

appending an icon indicating to the user that more information is needed before sending the email message,

flagging the address such that an act of determining if the address corresponds to an address in the contact list of said one or more servers must be performed prior to sending an email message,

prompting the user to establish correspondence with said one or more servers, and

upon establishing correspondence with said one or more servers, determining if the address corresponds to an address in a contact list of at least one server;

marking the email address with an adjacently placed indicator; and

upon selection of the indicator by the user, allowing the user to manipulate the email address as an object.

The abstract states:

The present invention is directed at a system and process for allowing a user to treat email addresses as objects. This allows easy manipulation of the email addresses, such as allowing them to be added to a contact list, copied to the computer's clipboard, or double-clicked to open the related contact information for that email address sender. Email addresses are treated as objects in the message preview pane and full message windows of both incoming and outgoing email messages. A small icon is added to the text of each address. In a preferred embodiment, the icons will vary depending on the pedigree of the address. The invention is not limited to single addresses. Rather, an entry denoting a mailing list could also be treated as an object and a unique icon could be employed to indicate the nature of the entry. For outgoing messages, the pedigree of the address or list is determined by monitoring where the user obtained the address. For incoming messages, the message header is parsed and searched to find addresses that match the receiving user's address book. If no match is found, a generic address icon is added before the text of the address, while the system checks the email header against other address sources such as server lists. Once the address is marked with an appropriate icon the user can manipulate the address in various ways allowing the user to readily edit or add email addresses to their contact list. Additionally, the invention may include contextual menus to assist the user in this manipulation.

ACS on wrong side of PubChem dispute

The American Chemical Society (ACS) wants the government to shut
down the free database PubChem because it competes with the commercial Chemical Abstracts Service of the ACS. Although there is an issue of the government competing with a private entity
over the data, there is a separate issue that most of the data arose from federally-funded research, paid for by taxpayers rather than by private enterprise. Shouldn’t a government entity be able to
make available data obtained through public grants in the name of fostering technological advance?

The present debate reminds one of the now-distant arguments against a publicly available patent database. Recall the words of the New York Times on May 4, 1998:

An Internet pioneer who put data from the Securities and Exchange
Commission on line four years ago at no cost to computer users is now challenging the Federal Government to make the nation's patent and trademark data base freely available. He is threatening to undertake the project himself as a guerrilla effort to make the data publicly accessible if the Government fails to respond.

The challenge was in a letter sent last week to Vice President Al
Gore and Commerce Secretary William M. Daley by Carl Malamud, president of the Internet Multicasting Service, a nonprofit organization that has undertaken a variety of
Internet publishing efforts.

Mr. Malamud's crusade throws new light on a continuing dispute
between those who advocate widely distributing Government data bases that are created at taxpayer expense and the thriving private information industry that remarkets and resells the information to business customers and libraries.


***
Lest we forget, the USPTO opposed the idea of a database.
From the May 4, 1998 NYT -->
***


"The outcome with the Patent and Trademark Office was not as
successful," Mr. Malamud wrote in his letter. The agency, he said, refused to change its position.

Officials at the Patent and Trademark Office responded that the
agency was in a difficult position because it is self-financed and that making raw patent data available for wholesale public downloading would jeopardize the agency's existence.

Bruce Lehman, the Commissioner of the Patent and Trademark Office, said in a telephone interview that he did not have a philosophical quarrel with the idea
of making patent information more publicly available. He said his
agency had begun making some of its information available on its Web site. For example, it is now possible to retrieve the first page of any patent filed in the last 20 years and then request a paper copy of the entire patent document. [Weren't we lucky in 1998?]

*** Of the old IBM system-->

The issue, according to Mr. Malamud, is that Federal agencies have
been dragging their heels in an area that is vital to commerce and
technology innovation. He said that although I.B.M. has put patent data on line, its system is cumbersome and not widely used by competitors who fear that their searches might tip off I.B.M. to their current research.

"If you were an engineer at Sun Microsystems, you'd be crazy to do searches on the I.B.M. patent data base," he said.

Wednesday, May 18, 2005

CAFC on obviousness in Syntex v. Apotex

After the brief of 24 law professors on how the CAFC is lax on obviousness, we have another case where the the CAFC is strong on obviousness, Syntex v. Apotex.

I discuss other problematic aspects of the law professors' brief in the June 2005 issue of Intellectual Property Today [PATENT REFORM 2005: CAN YOU HEAR ME, MAJOR TOM?]

From Syntex v. Apotex, 2005 U.S. App. LEXIS 8863:

This court reviews for clear error the district court's
determination of the factual inquiries underlying obviousness, while it reviews de novo the legal conclusion that a claim is invalid as obvious. McNeil-PPC, Inc. v. L.Perrigo Co., 337 F.3d 1362, 1368 (Fed. Cir. 2003), cert. denied, 540 U.S. 1107, 157 L.
Ed. 2d 893, 124 S. Ct. 1068 (2004). The factual determinations relevant to the
obviousness inquiry include:
(1) the scope and content of the prior
art;
(2) the differences between the claimed invention and the prior art;
(3) the level of ordinary skill in the art; and
(4) secondary considerations, if any, such as
commercial success, unexpected results, copying, long-felt but
unresolved need, and the failure of others to develop the invention. Graham v. John Deere Co., 383 U.S. 1, 17-18, 15 L. Ed. 2d 545, 86 S. Ct. 684 (1966).

***
At trial, Apotex argued that based on the prior art, a person of
ordinary skill in the art would expect to succeed in stabilizing a formulation containing an NSAID and BAC with a nonionic surfactant. Contending that the formulation claimed in the '493 patent is just such a formulation, Apotex argued that it is legally obvious.
***
Further, the court was under the impression that, in the absence of evidence that those references teach away from combination, there was a failure of proof that there would have been any motivation by one of ordinary skill in the art to use octoxynol 40 in the claimed formulations.
***
Finally, we feel the district court should reconsider the significance of the commercial success of the patented formulation in light of our recent decision in Merck & Co. v. Teva
Pharms. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005).

***Of relevance to the brief of the law professors-->

What a reference teaches a person of ordinary skill is
not, as Syntex's expert appears to believe, limited to what a reference specifically "talks about" or what is specifically "mentioned" or "written" in the
reference.

Carlos Amado sues Microsoft

Part of the reason Microsoft is seeking patent reform is because of the numerous suits filed against it. Here's one.

from The Register:

Guatemalan inventor, Carlos Armando Amado, claims Microsoft is illegally using his software to transfer information between its spreadsheet products Excel and Access. He says he filed a patent in 1990 for software which lets users move data between Excel to Access via a spreadsheet. He tried to sell it to Microsoft two years later, according to Reuters.


The suit does not claim specific damages but lawyers told Reuters they would be asking for about $2 for every copy of the software sold, which equates to $500m. The case is being heard in the US District Court of Central California

Microsoft is also facing patent claims over Longhorn, the next version of Windows, from networking company Alacritech. It is also being sued by Forgent Networks which claims the software giant broke its JPEG picture compression patents

Adams sues Siemens, Dell, Sony over 3 patents

On May 12, 2005, Phillip M. Adams & Associates LLC sued Sony, Lenovo, Dell, MPC and Fujitsu Siemens over US 5,379,414; 5,983,002, and 6,401,222. There is another action against Gateway. HP and Compaq have taken licenses.

US 5,379,414 to Phillip M. Adams is entitled --Systems and methods for FDC error detection and prevention-- and the first claim recites

A method for detecting and preventing floppy diskette controller data transfer errors in computer systems having:

a central processing unit (CPU);

a system interrupt timer;

a floppy diskette, the floppy diskette having at least one sector for receiving multiple data bytes;

a floppy diskette controller (FDC) for controlling the transfer of data to the floppy diskette;

means associated with the FDC for providing a data request (DREQ) signal and a data acknowledge (DACK) signal, the DREQ signal being provided when data transfer is requested and the DACK signal being provided when data transfer is permitted; and

means for counting data bytes transferred to the floppy diskette, said counting means providing a data transfer byte count,

the method comprising the steps of:

determining if a requested computer system operation is a floppy diskette write operation;

reading the data transfer byte count provided by said counting means;

monitoring data byte transfers to the floppy diskette so as to determine when a last data byte is being transferred to a sector of the floppy diskette;

measuring time between the data request (DREQ) and data acknowledge (DACK) signals for said last data byte transfer to a sector of the floppy diskette; and

forcing an error condition if the measured time between said DREQ and DACK signals exceeds a specified value.

The first claim of US 5,983,002 recites:

An apparatus for detecting a defective floppy diskette controller, the apparatus comprising:

a processor executing detection executables effective to determine an underrun error undetected by a floppy diskette controller and effective to identify the floppy diskette controller as defective;

a memory device operably connected to the processor to store the detection executables and corresponding detection data;

a system clock operably connected to the processor to provide a time base;

a media drive comprising storage media for storing data;

the floppy diskette controller operably connected to the media drive to control formatting and storage of data on the storage media; and

a direct memory access controller operably connected to the floppy diskette controller and the memory device to control transfers of data between the memory device and the floppy diskette controller.



US 6,401,222 is a cip [co-pending application Ser. No. 08/729,172 filed on Oct. 11, 1996 now U.S. Pat. No. 5,983,002 for Defective Floppy Diskette Controller Detection Apparatus and Method.] and the first claim recites:

An apparatus for detecting a defective floppy diskette controller, the apparatus comprising:

a processor executing detection executables effective to determine an under run error undetected by a floppy diskette controller;

a memory device operably connected to the processor to store the detection executables and corresponding detection data;

a system clock operably connected to the processor to provide a time base;

a media drive comprising storage media for storing data formatted in sectors;

the floppy diskette controller operably connected to the media drive to control formatting and storage of data on the storage media; and

a memory controller operably connected with the floppy diskette controller for providing data to the floppy diskette controller.

Tuesday, May 17, 2005

A case finding obviousness

The recent amicus brief by 24 law school professors has given some attention to rejections for obviousness under 35 USC 103.

Merely for information, from a recent case wherein obviousness was found. [IN RE DANIEL S. FULTON and JAMES HUANG, 391 F.3d 1195, 73 U.S.P.Q.2D 1141 (CAFC 2004)]


Of the requirement for motivation/suggestion-->

"When a rejection depends on a combination of prior art references,
there must be some teaching, suggestion, or motivation to combine the references." In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). Stated another way, the prior art as a whole must "suggest the desirability" of the combination. In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992) (internal quotation omitted); Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000) ("Trade-offs often concern what is feasible, not what is, on balance, desirable.
Motivation to combine requires the latter." (emphasis added)). The source of the teaching, suggestion, or motivation may be "the nature of the problem," "the teachings of the pertinent references," or "the ordinary knowledge of those skilled in the art." In re Rouffet, 149 F.3d at 1355.

Appellants first argue that the Board's finding of a motivation to
combine lacks substantial evidence because the Board failed to demonstrate that the characteristics disclosed in Pope, hexagonal surfaces in a facing orientation, are preferred over other alternatives disclosed in the prior art. This argument
fails because our case law does not require that a particular
combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.
"The question
is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination," not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available. See In re Beattie, 974 F.2d at 1311
(internal quotation omitted; emphasis added). A case on point is In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994), in which we upheld the Board's decision to reject, on obviousness grounds, the claims of a patent application directed to one of two alternative resins disclosed in a prior art reference, even though the reference described the resin claimed by Gurley as "inferior." Far from requiring that a disclosed combination be preferred in the prior
art in order to be motivating, this court has held that "[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use" and the reference "teaches that epoxy is usable and has been used for Gurley's purpose."
Id. Thus, a finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed by the patent applicant is the preferred, or most desirable, combination.

[page 1201] In this case, the Board found that "Bowerman clearly suggests that cylindrical polygon shaped studs or projections other than those expressly described (square, rectangular, or triangular) may be employed to
provide sharp
edges which bite into artificial turf for good traction." Ex parte
Fulton, 2003
Pat. App. LEXIS 88 at *7. Bowerman thus provides a motivation to
combine its
teachings with other prior art references that disclose cylindrical
polygon
shapes other than squares, triangles, and rectangles. The Board
also found that Pope discloses a shoe sole with hexagonal surfaces, which is a cylindrical polygon-shaped surface, and a facing orientation. Finally, the Board found that no other prior art references taught away from the combination of Bowerman and Pope that it adopted. These secondary findings are sufficient to support a primary finding that the prior art as a whole suggests the desirability of the combination of Bowerman and Pope described by the Board.

Appellants disagree with the Board's finding that no prior art
references
taught away from the combination of Bowerman and Pope adopted by the
Board.
Appellants quote language from In re Gurley that "[a] reference may be
said to
teach away when a person of ordinary skill, upon reading the reference,
would be
discouraged from following the path set out in the reference, or would
be led in
a direction divergent from the path that was taken by the applicant."
27 F.3d at
553. Appellants argue that "the prior art disclosed alternatives to
each of the
claimed elements A [the perimeter], B [the shape of the surface], and C
[the
orientation of the surface]. Choosing one alternative
necessarily means rejecting the other, i.e., following a path that is 'in a divergent direction
from the path taken by the'" applicant. This interpretation of our case law fails. The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed in the '198 application. Indeed, in the case cited by appellants, In re
Gurley, we held that the invention claimed in the patent application
was unpatentable based primarily on a prior art reference that disclosed two alternatives, one of which was the claimed alternative. Accordingly, mere disclosure of alternative designs does not teach away.

Diamonds

Diamonds made through chemical vapor deposition typically contain hydrogen. AP has a story about "large" diamonds grown through CVD.

from AP:

Using a process called chemical vapor deposition (CVD), several groups have figured out how to make diamonds. But growing them over 3 carats has proved challenging.


"Our fabrication of 10-carat, half-inch, CVD diamonds is a major breakthrough," said Russell Hemley of the Carnegie Institution's Geophysical Laboratory.


The size is about five times what commercial diamond manufacturers can make using standard processes, Hemley and his colleagues said May 16, 2005.

Science in Kansas

from AP:

Instead, they [School Board] want to define it [science] as "a systematic method of continuing investigation," without specifying what kind of answer is being sought. The definition would appear in the introduction to the state's science standards.

The proposed definition has outraged many scientists, who are frustrated that students could be discussing supernatural explanations for natural phenomena in their science classes.

"It's a completely unscientific way of looking at the world," said Keith Miller, a Kansas State University geologist.

Statistics on Federal Circuit decisions

Gregory Wallace discusses the "case selection model" in a law review article (77 S. Cal. L. Rev. 1383):

Assuming that appellate review of claim construction is consistent
with Priest and Klein's case selection model predicting a 50% appellate affirmance rate, the 60% affirmance rate of claim constructions would not be extraordinary.
However, the Priest and Klein model does not appear to be a viable
model for appellate affirmance rates. n74 Instead of a 50% affirmance rate by appellate courts in the United States, the affirmance rate has consistently been around
80%. n75 For 2001 and 2002 the average affirmance rate for all the
Circuits of the United States Courts of Appeals [*1393] was 90.4%n76 and 90.5%, n77 respectively, based on the data collected by the Administrative Office of the United States Courts ("Administrative Office").

Likewise, the Administrative Office reported an affirmance rate of 84% for the Federal Circuit Court of Appeals in 2002. n78 In addition, an independent study of every patent case that
went to trial from 1983 to 1999 found that the overall affirmance rate by the Federal Circuit for all issues in patent cases was 78%. n79 These overwhelming statistics demonstrate that the case selection model is ineffective in predicting appellate affirmance rates.

Patent on pump for fuel cell -- US 6,699,021

The application for US 6,699,021 is a divisional of U.S. patent application Ser. No. 09/717,754, filed on Nov. 21, 2000, entitled PASSIVELY PUMPED LIQUID FEED FUEL CELL SYSTEM, which issued as U.S. Pat. No. 6,645,655 on Nov. 11, 2003.

All claims of the '021 patent are directed to a "fuel pump." The first claim of US '021 states:

A fuel pump for use in a fuel cell system comprising:

one or more inlets through which fuel is received from a fuel source;

a pumping chamber coupled to said one or more inlets;

a gas-driven actuator coupled to said pumping chamber and powered by a gas produced by an electrochemical reaction within a fuel cell, said gas-driven actuator being pivotally mounted on a base, and said pumping chamber is enclosed by said actuator, said base, and a pivoting element, and which said one or more inlets admit fuel and/or water or a fuel/water mixture to said pumping chamber when said actuator pivots, whereby the amount of gas produced is directly proportional to demand for power from said fuel cell; and

one or more outlets, coupled to said pumping chamber, through which fuel is driven from said pumping chamber to said fuel cell.

Dependent claim 6 gets into the realm of MEMS:

The fuel pump, as defined in claim 1, wherein said fuel pump is constructed using micro-electromechanical (MEMS) fabrication techniques.

None of the claims use the word "self-regulating."


from Fuel Cell Works:

U.S. Patent No. 6,699,021 is owned by MTI Micro Fuel Cells Inc., of Albany. This invention allows a fuel pump of a fuel cell to be self-regulating by utilizing carbon dioxide, which is a waste product of the the fuel cell, as a regulating mechanism.

MTI Micro, a subsidiary of Mechanical Technology Inc. of Latham, develops and manufactures micro-fuel cells for portable devices. These fuel cells are intended for use in powering hand-held electronic devices such as personal digital assistants and smart phones.

UPDATE. Sept. 23, 2005 -->

Manhattan Scientifics, a fuel cell alternative energy company, announced today that it has been issued a key patent in Korea. The patent, No. 0509573 "Surface Replica Fuel Cell For Micro Fuel Cell Electrical Power Pack," addresses key aspects of the company's micro fuel cell invention designed to power portable electronics such as cellular telephones.

The patent covers the placement of a flat planar fuel cell in a thin, scalable format to power portable devices such as cellular phones. This technology is unlike conventional fuel cells, which are stacked arrays. The patented design will enable economic use of thin, flexible layered materials when compared with the rigid, bolted, thick stack structure of conventional fuel cells.


Marvin Maslow, CEO of Manhattan Scientifics, said, "Though our micro fuel cell is not yet commercially feasible, we continue our effort toward commercialization and future revenue as a result of our ownership of protective patents. The patent is a result of work by micro fuel cell scientist Robert G. Hockaday."

Microsoft and Toshiba cross-license on software, consumer electronics

The trend to cross-license, rather than litigate, patents continues.

from Electronics Weekly:

Following last week’s agreement with Philips to link PCs and consumer electronics products, Microsoft has announced a patent cross-license with Toshiba covering PC software and digital consumer electronics technology.

Under the Philips deal, PCs would be made compatible with Nexperia-based consumer electronics products. Under the Toshiba deal, it is expected that PC software will be linked to Toshiba’s TVs and digital consumer products, giving Microsoft much greater input into the future direction of TV development.

Philips is to support Microsoft Windows Media Audio and Video and Windows Media Digital Rights Management 10 (DRM) technology in its Nexperia ICs for use in digital media receivers, personal video recorders, portable audio players, IP set-top boxes and video phones.

Both the Philips and Toshiba moves are in pursuit of the ambition shared by many in the high-tech industry to facilitate the connected home, involving the fusion of computer and consumer electronics