Tuesday, August 31, 2004

Another Liebel-Flarscheim case: Home Diagnostics v. LifeScan

In Home Diagnostics v. LifeScan (Aug. 31, 2004), Judge Randal Rader authored an opinion in the genre of Liebel-Flarscheim v. MedRad, 358 F.3d 898 (CAFC 2004): "the applicant’s choice to describe only a single embodiment does not mean that the patent clearly and unambiguously disavowed other embodiments."

The text in question pertained to the words "upon detection of a suitably stable endpoint" in the following claim part

(d) upon detection of a suitably stable endpoint, calculating said glucose concentration in said sample from one of said reflectance readings, without having determined the time at which the sample was initially applied to the matrix pad.

The district court judge had reached into the specification to limit this as if including: “at the expiration of a predetermined time period.” This limitation was rejected by the CAFC.

Further text by Judge Rader indirectly addresses the confusion of Quillen and Webster about continuing applications. Rader wrote:

>>A patentee may claim an invention broadly and expect enforcement of the full scope of that language absent a clear disavowal or contrary definition in the specification. Id. at 1325. The history of the ’162 patent illustrates that this applicant took this course. The ’162 patent is part of a family of patents that includes U.S. Patent Nos. 5,049,487 (the ’487 patent) and 5,843,692 (the ’692 patent). These patents stem from the same initial application and contain the same or essentially the same specifications. In place of a “suitably stable endpoint,” the ’487 patent claims recite a “predetermined time period.” ’487 patent, col. 22, l. 36. Similarly, the ’692 patent claims recite a “predetermined incubation period” rather than a “suitably stable endpoint.” ’692 patent, col. 23, l. 22. This progression, from “predetermined time period” to “predetermined incubation period” to “suitably stable endpoint,” shows that LifeScan purposefully sought in the ’162 patent claim scope broader than the predetermined timing method. Absent a clear disavowal or contrary definition in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language. <<

Because a given specification may support different claim language in different members of a patent family does not mean that all the claims of all the patents represent repeated attempts to claim the "same" invention. Here, the '162 patent had claims broader in scope than the claims in the other patents of the same patent family.

Judge Rader also used other patents to infer the meaning of the text in question, relying on principles expressed in Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003) and in Arthur A. Collins, Inc. v. N. Telecom, Ltd., 216 F.3d 1042, 1045 (Fed. Cir. 2000) (“When prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning.”).

Judge Rader wrote: "This determination is confirmed by using the contemporary understanding of a skilled artisan to guide an inquiry into dictionary meanings." This suggests that the understanding of the skilled artisan guides the inquiry into dictionary meanings (Texas Digital, 308 F.3d 1193), and not the other way around, as was done in the hydrosol case.

One suspects that several recent decisions (for example this case and the Innova case) are allowing different judges to express viewpoints relevant to the upcoming en banc review of the Texas Digital line of cases in the Phillips case.

InFocus sues 3M over US Patent No. 6,424,097

InFocus Corporation announced on August 31, 2004 that it filed a patent infringement lawsuit against 3M Company on August 27, 2004 in the United States District Court in Oregon. The infringment lawsuit alleges that certain 3M products fall within the scope of claims of US Patent No. 6,424,097, directed to a safety interlock device on front projector technology.

InFocus is seeking an injunction to prevent 3M from continuing to use InFocus patented technology, as well as seeking to obtain monetary damages resulting from patent infringement by products 3M has sold and continues to sell to its customers.

The first claim of the '097 patent reads as follows:

1. A safety interlock apparatus for an electrical device that includes a power supply and an electrical load, comprising:

a frame;

a DC power supply, a ballast power supply including a ballast control circuit and a ballast power circuit, and a lamp module configured for insertion into or removal from the frame, the ballast control circuit producing control signals for delivery to the ballast power circuit to control its operation and the lamp module configured for installation of a lamp;

a first electrical connection between the DC power supply and the ballast power supply, the first electrical connection including a relatively low voltage electrical connection supplying a relatively low voltage for control of the ballast power supply;

a second electrical connection between the lamp and the ballast power supply;

a switch positioned in operative association with the ballast power supply to provide an interruptible low voltage electrical connection that controls production of the control signals or their delivery to the ballast power circuit, the switch including a switch lever and having a first state in which the relatively low voltage electrical connection enables production and delivery of the control signals to and thereby enables power output from the ballast power circuit, and a second state in which the relatively low voltage electrical connection does not enable production and delivery of the control signals to and thereby disables power output from the ballast power circuit; and

a panel fixable to the frame and positioned to provide access to and sufficient clearance for the lamp module to facilitate its removal from the frame for lamp access, the panel having an actuator that is operable to actuate the switch from the first state to the second state when the panel is moved to open the frame, thereby disabling power output from the ballast power circuit to the lamp, and to contact the switch lever to actuate the switch from the second state to the first state when the panel is fixed to the frame.

To date, the '097 patent has been cited by no other U.S. patent.

InFocus has a number of other patents related to imaging. An ultimate application is to digital electronic cinema. Of current interest are multimedia systems driven by a personal computer.

For example, US 6,767,100 reads:

Projection systems have been used for many years to project motion pictures and still photographs onto screens for viewing. More recently, presentations using multimedia projection systems have become popular for conducting sales demonstrations, business meetings, and classroom instruction.

In a common operating mode, multimedia projection systems receive analog video signals from a personal computer ("PC"). The video signals may represent still, partial-, or full-motion display images of a type rendered by the PC. The analog video signals are typically converted in the projection system into digital video signals, and the signals are electronically conditioned and processed to control an image-forming device, such as a liquid crystal display ("LCD") or a digital micromirror display device ("MDD").

A popular type of multimedia projection system employs a broad spectrum light source and optical path components upstream and downstream of the image-forming device to project the image onto a display screen. An example of a MDD-based multimedia projector is the model LP420 manufactured by in Focus Systems, Inc., of Wilsonville, Oreg., the assignee of this application.

Significant effort has been invested into developing projectors producing bright, high-quality, color images that are also compact so that they can be portable. However, it is desirable to further decrease the size and weight of such projectors. Furthermore, conventional projectors, which use high pressure mercury arc lamps, have lamp lifetimes of roughly 2000 hours. It is desirable to use a light source with lifetime in excess of 10,000 hours so that the user need not worry about failure of the projector or the cost and effort of lamp replacement.

An alternative optical architecture is, therefore, desired that substantially decreases the size and weight of the projection system as compared with conventional projection systems and significantly enhances light source lifetime.

Also, US 6,719,429 mentions:

Brightness-reducing overfill of light valves, such as MDDs is a common problem that prior workers have toiled to solve. For example, U.S. Pat. No. 5,159,485 for SYSTEM AND METHOD FOR UNIFORMITY OF ILLUMINATION FOR TUNGSTEN LIGHT describes employing a tungsten lamp and an anamorphic optical system to illuminate an elongated, linear MDD array used for line-scanning a photo-sensitive drum in a printer. (Conventional anamorphic optical systems employ a lens or lenses having different focal lengths or magnification factors in perpendicular planes to the optical axis.) The anamorphic optical system receives a substantially rectangular light bundle from the tungsten lamp and squashes the light bundle in one axis so that the resulting squashed light bundle illuminates the elongated, linear MDD without substantial overfill. Unfortunately, employing a tungsten lamp without an integrator tunnel results in insufficient illumination uniformity and brightness for use in a multimedia projector.

Douglas Bourgeois, information chief at USPTO, leaving for Dept. of Interior

During his three year tenure at the US Patent Office, Bourgeois worked to bring the USPTO into the computer age, with an E-government initiative that has enabled online filing of patent applications and access to patent information (PAIR), as well as data sharing with international patent offices.

There are 3,800 patent examiners and the number of applications is increasing yearly: about 355,000 last year, compared with 278,000 five years ago. Even during the dot-com bust, the number of patent applications increased. The USPTO, under Bourgeois' direction, has deployed a storage area network [SAN] to support a massive online transaction database. The SAN lets the office provision storage capacity as needed to support increased online application processing and patent research. The Patent Office has also upgraded security policies and technology to meet federally mandated standards and has implemented an enterprise architecture to define how technology is developed and implemented.

There has been a lot of criticism of the USPTO for issuing patents on technology that is obvious. For example, Mark Lemley wrote the "rational ignorance" paper presuming that there were a number of patents that were wrongly issued, but that this did not matter, because few patents are ever licensed or litigated. A paper in the May 2003 issue of the Harvard Law Review talked about stopping the madness at the USPTO, and (wrongly) suggested that the USPTO was granting 97% of all applications submitted. There is currently much discussion of the Eolas/Berkeley browser patent which is undergoing reexamination. Yet, USPTO notes that it receives fewer than 400 re-examination requests annually despite issuing 3,500 patents weekly. Is legal academic research on the USPTO that accurate?

There also has been discussion of the "patent gap," a term used to indicate that the number of patent applications filed is growing faster than the number of patents issued. The current wait is sometimes estimated to be 27 months, although the wait does depend on technology area. If one is expressing the patent gap issue on a yearly basis, the delay is greater than a year, and patent applications are monotonically increasing, there will always be a patent gap.

From August 17, 2004:
Congressman Jim Moran will join Under Secretary of Commerce for Intellectual Property Jon Dudas in recognizing the outstanding efforts of the USPTO employees who have brought the agency’s electronic patent application processing system, called the Image File Wrapper (IFW) and Public PAIR (patent application and information retrieval) to fruition. The IFW/Public PAIR systems, major milestones in the USPTO’s e-government initiatives, replace paper files. IFW is now used by patent examiners to review applications, and is the official application file. Public PAIR enables anyone anywhere in the world, with the click of a mouse, to track the progress of a public patent application as it moves from publication to final disposition, and review documents in the official application file, including all decisions made by patent examiners and their reasons for making them.

Monday, August 30, 2004

More on Mark Lemley's "rational ignorance" at the Patent Office

Jay Kesan [formerly of Pennie & Edmonds LLP] and S. Ghosh have recently published a critique of the paper by Mark A. Lemley, "Rational Ignorance at the the Patent Office," 95 Nw. L. Rev. 1495 (2001). [see Dennis Crouch's "Patently Obvious" blog; the cite given for the Kesan/Ghosh paper is 40 Hous. L. Rev. 1219 (2004)]

As a additional observation, we had discussed "rational ignorance" a year ago in L.B. Ebert, "Good Night Gracie?", Intellectual Property Today, p. 26 (August 2003)[available LEXIS]. The pertinent parts of the article are as follows:

The focus of HLR-1 [116 Harv. L. Rev. 2164 (2003)] on "high cost patents" derived from an earlier law review article by Lemley which concluded that it was not worthwhile to invest more resources at the Patent Office for purposes of obtaining a more accurate examination result. EN6

EN6 Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U. L. Rev. 1495 (2001). As a passing observation, one notes that the law reviews tend to cite to other law reviews, and do not tend to cite to texts contained in journals such as Intellectual Property Today or Intellectual Property Law & Business.


Briefly, the Lemley article argues that because the overwhelming majority of patents are never litigated or licensed, it is cheaper for society to make detailed validity determinations only in those cases, rather than in investing additional resources in examining all applications. The article does not argue that there should be no examination, just no more money to enhance the present examination. In some sense, the argument is for the status quo, in that it did not favor less resources for examination (e.g., a registration system) or more resources for examination.

In all the various arguments, there was no discussion of the value of having a publicly-available assemblage of disclosed, written-down, documents on innovation, with claims nominally satisfying the requirements of the patent law, including 35 USC 101, 102, 103 and 112. EN7 Walterscheid argued that the primary objective of intellectual property laws is not to reward the inventor/author but to secure for the public the benefits of the inventions/creations, a proposal consonant with the Constitutional text "to promote the Progress of Science and useful Arts." EN8 Whether or not a patent is ever litigated or licensed, there is some value to the public in knowing that the disclosure of the document is accurate. Even if not used, a patent may serve as stepping stone to something else. Furthermore, the sorting operation done by the Patent Office does give an imprimatur of reliability, whether or not the issued patent is ever litigated or licensed. This is the locus of concerns of people such as Bob Park and David Voss with examination by the Patent Office. EN9 What may look like a silly idea, unpatented, gathers credibility when patented, and thus patenting can re-direct investment resources. When an error is made, cost can be imposed on society, even in the absence of litigation or licensing.

Endnote 7. While Lemley's invalidity concerns pertained more to prior art, one recalls the image of Albert Einstein at the Swiss patent office evaluating that the thing worked. The value of the enablement, written description, and utility for entries into the public knowledge storehouse should not be overlooked.

Endnote 8. Edward C. Walterscheid, "The Remarkable -- and Irrational -- Disparity Between the Patent Term and the Copyright Term," 83 JPTOS 233 (April 2001). See pages 239, 243-244, 259.

Endnote 9. See L. B. Ebert, "Obtaining Sure and Reliable Information," Int. Prop. Today (Aug. 2000); "Taking a Walk on the Wild Side?", Int. Prop. Today (Dec. 2002). Separately, see the discussion of "transistor for hearing aid" text in "Foreseeability in Patent Law," 16 Berkeley Tech. L. J. 1045 (2001) which appears in "Pioneering, Innovation and Festo Last Looks," Int. Prop. Today (June 2002) and in "Supreme Court Festo: Equivalents Still Limited," Int. Prop. Today (July 2002).

In the academic area, we review submissions to scientific journals, not because of commercial implications, n10 but because we want our storehouse of information to be sufficiently accurate that we can continue to move forward, rather than getting bogged down in evaluating inaccuracies of the past. As mentioned by Garfield in discussing the Hamilton papers, different journals have different impacts, with a relatively few prestigious journals having disproportionate impact; directionally (but not absolutely, see Jan Hendrik Schon. Separately, see retraction of fabricated and falsified research findings mentioned in Science, 2003, 300, 1657.), these prestigious journals may have a higher index of reliability than other journals, as well as presenting more ground-breaking results. Separately, different journals serve different functions. The availability of various journals allows a sorting function, with discrimination existing among several parameters (for example, some journals may have a role to present material which is "newer" than others; some may have more technical details than others; some may be written for a scientific generalist and some may be written for an expert in a narrow field). In the patent area, we have a "one size fits all" approach, wherein there is one patent system, and one general approach for evaluating patentability. Who can say how many hours should be spent on a given application to justify its entry into the (patent) storehouse of knowledge?

Endnote 10. However, one observes that publication in a prestigious journal can have commercial implications.

Certain text within the Lemley article about "attention to in-force patents" caught my eye: "If they [companies] think about the problem at all, most sophisticated companies strenuously avoid reading other companies' patents because they don't want to be charged with knowledge of the patent's existence." First, if true, such activity defeats the purpose of having patents. Second, this is not my experience with companies, who know about the patents of competitors and seek advice in the form of opinions. Third, this text is not necessarily in keeping with observations of other attorneys. EN11

Endnote 11. See John R. Wetherell, "Patent Infringement: the Role of Opinions of Counsel," available at www.devicelink.com. See also Edward G. Poplawski, "Effective Preparation of Patent Related Exculpatory Legal Opinions," available at www.sidley.com.

UPDATE: A copy of the Ghosh/Kesan paper may be obtained at
The paper apparently does not cite to the earlier work in Int. Prop. Today concerning "rational ignorance." We have a somewhat ironic situation about law review articles discussing ignorance at the USPTO, while the law reviews themselves are ignorant of published articles highly material to the topics they discuss.

Further, the Patent Office, in assessing whether or not a given patent application manifests the requirements of patentability, has limited resources and limited time to make a determination. Once the determination is made, either a dissatisfied applicant or a dissatified competitor has means to challenge the decision, and the analysis of the Patent Office is placed under scrutiny. Compare this to the world of law reviews, wherein after lengthy research with thorough access to LEXIS, authors can make false statements to support positions. In terms of procedure for correction, there is little chance that the offending law review will acknowledge mistakes and thereby warn readers of problems. A recent example of this sort of thing is given in

Saturday, August 28, 2004

Business concern about Lilly over outcome of Zyprexa litigation

from Reuters:

The biggest potential source of spread widening is an upcoming court decision that will determine whether Eli Lilly can keep the patent for its blockbuster schizophrenia drug, Zyprexa. The drug generates about a third of the company's sales.

Microsoft has 10,000 patent applications pending?

A story in InformationWeek suggests that Microsoft has 10,000 patent applications pending.

As posted below, Bill Gates had indicated on July 29, 2004 that Microsoft had 2,000 applications filed in fiscal 2004. Assuming that the number of filings in prior years were less than or equal to the filings in 2004, it is difficult to see how 10,000 applications are now pending, unless some of them are languishing at the Patent Office for a time longer than the three year average.

Raggett art was in Microsoft/Eolas litigation

There has been some discussion about whether or not the prior art cited in the filing under 37 CFR 1.501 by W3C was known previously by Microsoft. In fact, Raggett-I and Raggett-II were introduced in the Microsoft/Eolas litigation, as the brief of W3C (written by Pennie & Edmonds) clearly indicates:

While we understand that the submitted prior art was introduced during the course of the recent trial proceedings, the issue of whether it renders the '906 patent invalid was never considered.

The Winslow concept as to inventors negated as to Federal Appellate Judges

Most patent law courses mention Judge Rich's imagery in the case In re Winslow: the inventor with all the prior art hanging on his walls and available to him. Many patent law courses mention that Judge Rich later abandoned this viewpoint in Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453-54 (Fed. Cir. 1984):

[T]he courts, including our predecessor court as in Winslow, mentioned above, [In re Winslow, 365 F.2d 1017 (CCPA 1966) (Rich, J.)] decided cases on the basis of the axiom-the applicant (or patentee) is presumed to have knowledge of all material prior art-without giving the situation further thought. But a bad axiom is like a noxious weed, a thriving plant in the wrong place interfering with the growth of more desirable plants....
Since we believe that progress in legal thinking is not only possible but highly desirable when it simplifies such thinking, we believe the time has come to discontinue this particular fiction of the patent law. Congress has given us in § 103 a substitute for the former "requirement for invention," which gave rise to the presumption, and that substitute, being statutory, should be used exclusively. We hereby declare the presumption that the inventor has knowledge of all material prior art to be dead.

A curious analog of In re Winslow came up in a substantive due process case in the Third Circuit, with the dissent arguing that Federal appellate judges were up-to-date on case law, in this particular circumstance prior U.S. Supreme Court case law. The proposition lost by a 2-1 vote.

Enhanced patent scrutiny in China bad for Big Pharma?

Pfizer is "extremely disheartened" by the decision revoking the patent on Viagra in China and will appeal, the New York-based company said in Beijing. The patent remains in force during the appeal.

China's pharmaceutical industry had attracted $2 billion in investment in about 1,800 ventures by the start of 2004 according to the country's State Food and Drug Administration. Of the 25 leading multinationals, 20 are represented, including AstraZeneca, Roche Holding and Novartis.

According to Janice Mueller, an intellectual property professor now at the University of Pittsburgh, the patent lawsuits are a "healthy development" because they show Chinese companies are starting to play by global trade rules. She continued: "Rather than willfully infringe the patents, as Chinese firms have notoriously done in the past, these firms have mounted what appears to be a legal challenge. The U.S. wants other countries to play by our intellectual property rules; that seems to be exactly what is taking place here."

This analysis may be questioned. In two recent determinations, somewhat hypertechnical rules were applied, suggesting that patent protection in China may be weak.

The issue in the Viagra case was that Pfizer failed to prove in its Viagra application that a key ingredient, sildenafil, was the primary factor in preventing erectile disfunction. Pfizer's 20-year local patent for Viagra, granted in 1994, is in force pending the appeal.

In a different case on the drug Avandia, prior art in the form of a 1995 article in the U.S. Journal of Clinical Pharmacology showing that rosiglitazone, one of three patented ingredients in the drug, was used to show that the scientific knowledge was already in the public domain. (Avandia, which reduces the body's resistance to insulin, is priced at 90 yuan, or $11, for seven pills in Shanghai.
[In the U.S., one can obtain valid patent protection on a combination of KNOWN ingredients for a drug, provided the combination was not known.]

There is a chance that a perception by Big Pharma of weaker patent protection (in the form of easily obtained determinations of invalidity) may prompt overseas companies to reduce investment.

Wednesday, August 25, 2004

Federal Government Invokes False Claims Act to Recover Patent Royalties

Promega, acting as a private attorney general on behalf of Federal government has invoked the False Claims Act ("whistleblower statute") to recover patent royalties paid on a patent declared unenforceable through inequitable conduct.

From a press release from Promega on August 24, 2004:

Fourth Circuit Court of Appeals will decide the right of the United States to recover losses on payments made to Hoffmann-La Roche and its partner Applera Corporation on a key patent in molecular biology. A preliminary communication from the U.S. District Court in Virginia indicates that the case will be dismissed and today Promega announced it will appeal that determination. This allows the appellate court to resolve the issue of whether lies told to the U.S. Government in procuring the patent on Taq DNA Polymerase can be addressed under the False Claims Act.

The claim filed in Virginia seeks recovery of what could be hundreds of millions of dollars in wrongful payments for Taq DNA Polymerase by the Government to Hoffmann-La Roche and Applera. This action arose out of other litigation in which the Roche Taq patent was ruled unenforceable. The Federal Court for the Northern District of California ruled in 1999 and reaffirmed this past May that the patent for Taq could not be enforced against anyone because it had been obtained with a series of false material statements that were intentionally made to the United States Patent Office, which even included the fabrication of experimental data. Promega damage claims on its own behalf remain pending in California.

Monday, August 23, 2004

GSK beats Teva on Zofran; Dr. Reddy's case pending

On August 23, 2004, GlaxoSmithKline Plc stated that the U.S. district court in Delaware (Judge Gregory Sleet) had ruled in its favour in patent litigation with Israel's Teva Pharmaceuticals over anti-nausea drug Zofran.

Zofran, used to counteract nausea in cancer patients undergoing chemotherapy, is one of GSK's more important products and had sales of $327 million in the first quarter of 2004.

GSK still awaits a court decision in the district court of New Jersey on whether Indian generic drugmaker Dr. Reddy's Laboratories Ltd can make Zofran pursuant to the Hatch-Waxman Act. The closing arguments in NJ are expected in the next couple of months. One wonders why the two Zofran cases were not combined.

Eolas/Berkeley lose in second round of re-examination of browser patent

In the director-ordered reexamination of the Eolas browser patent which started in October 2003, there has been a first Office Action (rejecting all 10 claims as obvious under 35 USC 103), a response, and, in an action signed Aug. 15, 2004, a rejection of all 10 claims as obvious, once again. Because new grounds for part of the rejection were used, the examiner did not make this final, but announced that he intended that the next action would be treated as a final rejection.

A pdf file of the second Office Action is available at

I discussed earlier parts of the re-examination in Intellectual Property Today, "Be careful what you ask for," p. 32, April, 2004:

There has been a director-ordered re-examination (37 CFR 1.520) of the Eolas patent, US 5,838,906 (with claims encompassing a Web browser able to invoke external programs to display portions of a Web page that the browser cannot directly display itself),13 and an initial rejection of claims. In August 2003 the patent led to a
$ 521 million award against Microsoft. In 68% of all re-examinations, one or more patent claims are amended, and in 19% of re-examinations, all claims are canceled.14

Endnote 13. Two submissions under 37 CFR 1.501 were made in October 2003. That of the World Wide Web Consortium [W3C] may be viewed at http://www.w3.org/2003/10/301-filing.html. Therein, two electronic publications of Dave Raggett pertaining to HTML+ were submitted pursuant to M.P.E.P. § 2128, complete with claim charts, by the then-existent firm of Pennie & Edmonds LLP (the firm which represented Barnes & Noble against amazon.com's one-click patent, US 5,960,411; see L. B. Ebert, Int. Prop. Today, p.24 (July 2000)). The Office Action comprises rejections for obviousness over the admitted art and the art of the 501 filings (and for some claims over additional art); see http://www.technolawyer.com/ipmemes/eolasofficeaction.pdf.

Endnote 14. Barbara Rose, "Patent Ruling Threatens Award in Microsoft Case," Chicago Tribune, p. 1 (March 6, 2004).

Jeff Norman of Kirkland and Ellis had said of the rejection in the first Office Action that there was reason to believe the patent might not be upheld. "The good news here for the rest of the world -- other than Eolas -- is that the examiner has come up with some very strong reasons why the Eolas patent should be invalidated," he said.

In his finding, the patent office examiner referred to a "seminal" paper and a number of extensions to the HTML (Hypertext Markup Language) "embed" tag that suggest that the university's technology may have been previously implemented and is, therefore, not patentable, said Norman.

"I think the entire programming community has been scratching their heads and saying this embed tag has been around since the beginning of time," he said.

**However, the art and reasons in the first Office Action did not prevail in the face of the response of Eolas to the first Office Action, and new art and reasons were presented in the second Office Action in August.

Sunday, August 22, 2004

Review of drug industry book by Dr. Marcia Angell in Chicago Sun-Times

URL: http://www.suntimes.com/output/books/sho-sunday-angell22.html

From the review:

We've made a devil's bargain with the industry. Drug companies spend millions of dollars to research and develop new drugs. In exchange, we give them patents and exclusive marketing rights for a number of years. During this period, the manufacturer has a protected monopoly and can charge whatever the market will bear for its drug.

But rather than produce truly innovative medicines, the industry mostly makes me-too drugs. When Schering-Plough's patent on the allergy drug Claritin expired, it tried to switch consumers to its copycat drug, Clarinex. The active ingredient of Clarinex [Desloratadine] is the molecule that Claritin [Loratadine] turns into after it's swallowed.[NOTE: meaning that Claritin is what is called a prodrug; Clarinex is an active metabolite of Claritin. Fexofenadine (Allegra) is a metabolite of Seldane, just as desloratadine (Clarinex) is a metabolite of Claritin] It's essentially the same drug, but with a brand new patent. [NOTE: not really the "same" drug.] The same is true of the copycat heartburn drug Nexium, which replaced Prilosec after Prilosec's patent expired. [NOTE: Nexium is an enantiomer to Prilosec being a racemate (a mixture of enantiomers). Thus, "the same is NOT true. Prilosec and Nexium are not related as prodrug and metabolite. Chemically, they are the same drug.]

And Prozac Sarafem, approved for severe PMS, is the same drug and same dose as regular Prozac, "but priced three and a half times as high as generic Prozac at my local pharmacy," Angell writes. Of the 415 drugs approved by the FDA from 1998 to 2002, Angell writes, "only 14 percent were truly innovative." [NOTE: Yes, here they are the same drug, but used for different indications.]


The book review continues:

Angell developed her jaundiced view of the industry during 20 years as an editor at the New England Journal of Medicine, one of the world's premier medical journals. Fortunately she has left the medical journal jargon behind. Her prose is clear and readable, although she tends to repeat herself.

It's disappointing that Angell didn't include a chapter on the industry's relationship with medical journals, which publish influential studies that can make or break a drug. Angell surely had run-ins with drug companies that are forever trying to put their spin on journal articles. If so, she has decided to keep such disputes private.

The New England Journal and other journals have made modest attempts to reign in industry abuses by, for example, listing consulting fees, research grants and other financial ties authors have with drug companies. But while Angell sensibly argues that medical societies and FDA advisors should not accept industry funding, she does not suggest the same principle for medical journal authors.


The review concludes:

But while her revelations aren't new, Angell does an excellent job assembling them into a convincing case against Big Pharma. And she suggests some eminently sensible reforms, including these four:

1. The FDA should require that new drugs be "compared not just with placebos, but with old drugs for the same conditions."

2. The FDA needs more independence. For example, it should not be funded by industry user fees.

3. Drug trials should be sponsored, not by drug companies, but by a government Institute for Prescription Drug Trials.

4. Advertising drugs to consumers should be banned. "There is no way consumers can evaluate clinical claims in a thirty-second TV advertisement," Angell writes.


Of the relationship between the drug industry and medical journals, the Sun-Times review overlooked a prior event involving Angell as editor of the New England Journal of Medicine:

From the Los Angeles Times via the Baltimore Sun (24 February 2000)

One of the world's most influential medical journal has admitted to an extraordinary betrayal of its own ethics, saying that nearly half the drug reviews published since 1997 were written by researchers with undisclosed financial support from companies marketing the drugs.

The New England Journal of Medicine, in an unusual internal inquiry published in today's edition, found that 19 of about 40 drug therapy reviews violated its tough conflict-of-interest policy. The policy bars researchers with ties to pharmaceutical companies from writing reviews or editorials about company products.

Journal editors conducted the audit in response to reports last fall in the Los Angeles Times identifying eight drug therapy articles that broke the journal's conflict-of-interest rules. In a terse letter, the journal confirmed those findings and noted 11 additional articles that violated the policy.

"We regret our failure to apply our policy correctly," says the letter. It was signed by editor in chief Dr. Marcia Angell, deputy editor Dr. Robert Utiger, and the editor of the drug therapy reviews, Dr. Alastair J. J. Wood.

"We were careless," Angell said in an interview. The editorial staff has "heightened vigilance" to the problem and has implemented new disclosure policies to guard against it, she said.

"They set up an admirable policy, and it's a pity they didn't follow up on it," said Dr. Drummond Rennie, an editor at the Journal of the American Medical Association who has written on ethical dilemmas in publishing.

For a premier journal to err on a basic matter of editorial integrity raises questions about the quality of medical data in lesser publications. In fact, most medical journals would not consider the violations identified by the New England Journal to be a problem.

[Angell stepped down as Editor-in-Chief of the New England Journal of Medicine on June 30, 2000.]

Wednesday, August 18, 2004

Patent case on MOSFETS: a new story that's really old

In Power Mosfet v. Siemens (August 17, 2004), the Court of Appeals for the Federal Circuit affirmed the district court judgment that US Patent No. 5,216,275 of Power Mosfet was not infringed.

The decision contains discussion of basic semiconductor technology:

Semiconductor power devices control the flow of electricity through an electronic circuit. They are typically constructed of silicon, which, by itself, is not a very good conductor of electricity. Silicon’s conductivity, however, can be enhanced by a process known as doping. Doping adds impurities to the crystal structure of pure silicon and creates either a surplus or deficiency of free electrons in the silicon material. Both conditions enable the flow of current through the material. When doping results in a surplus of electrons, the material is described as “n-type” because it has a net negative charge. When the result is a deficiency of electrons (i.e., a surplus of “holes”) the material is described as “p-type” because it has a net positive charge. Within the n-type and p-type categories, the material may be further categorized as heavily doped (n+ or p+ regions) or lightly doped (n- or p- regions).
The semiconductor power device described in the ’275 patent is known as a MOSFET. A cross-section from a traditional MOSFET is reproduced above from figure 1 of the ’275 patent. The ’275 patent describes the fabrication process of the traditional MOSFET device as follows: an n- layer 5 is grown on an n+ substrate 4, followed by the growth of a p+ layer 3 on the top of the n- layer 5. The above-described process may also be performed with p-type materials substituted for the n-type materials, and n-type materials for the p-type. ’275 patent, col. 5, ll. 23-29. In the traditional MOSFET design, layer 5 consists of a single conductivity type, either n- or p-type.
Also shown in figure 1 are the electrical connections of the semiconductor device. The terminals labeled “S” are the “source” terminals, where a positive voltage source is connected to the device. The terminal labeled “D” is the “drain” terminal, where the negative voltage connection is made. Terminal “G” is the “gate” terminal, and controls the current flow or, simply put, turns the device on and off. When on, current flows from the source to drain and, when off, current flow is blocked. The ’275 patent refers to region 5 as the “voltage sustaining layer” because, when not conducting current, it sustains a voltage between the S and D terminals.
The on and off states of a MOSFET device are controlled by applying a voltage to the gate terminal. When applied, the gate voltage creates an electric field inside the device that manipulates the electrons in the doped silicon to create conducting channels for current through the silicon material. When the gate voltage is removed, the electrons return to their normal positions and the voltage sustaining layer again prevents current from flowing through the device.
Two characteristics of MOSFETs are relevant to understanding the invention disclosed by the ’275 patent. The “on-resistance” (“Ron”) of the device is the resistance of the conducting channel through the semiconductor material. The higher the on-resistance, the greater the power loss (and accompanying heat generation) resulting from the current flow through the device. The second characteristic is the “breakdown voltage” (“Vb”), which is the maximum voltage that the semiconductor device can sustain between its terminals. In traditional semiconductor devices, there is an exponential relationship between Vb and Ron. See ’275 patent, col. 1, ll. 29-31. Higher Vb values are a desirable characteristic in a semiconductor device, but the resulting benefit must be balanced against the corresponding undesirable increase in Ron values.
The invention of the ’275 patent is a design for a voltage sustaining layer that results in a new relationship between Vb and Ron. According to the ’275 patent, the new relationship allows lower Ron values without the same magnitude of accompanying loss in Vb that results in traditional semiconductor devices. Id. at col. 1, ll. 55-66.

Patent applications for the basic transistor inventions of Bell Laboratories were filed in 1948. Not fully appreciated is that some of the patent applications, particularly those related to FET technology, were rejected over patents to Lilienfeld in the 1930's. (J. E. Lilienfeld, US 1,745,175; filed Oct. 8, 1926; issued Jan. 28, 1930; also US 1,877,140; US 1,900,018). Basic FET technology was not implemented until the 1960's. Thus, although we are litigating MOSFET technology in 2004, the concept of a field effect transistor was described seventy five years earlier.

Monday, August 16, 2004

Acacia patents make New York Times on Aug. 16

The New York Times mentioned it had received a letter from Acacia, and also noted some of the contents of a letter to Johns Hopkins:


Johns Hopkins University received a letter last year from Acacia, which asked for what would amount to 2 percent of the university's revenues.

"Is it reasonable to even make this kind of request?" asked Wes Blakeslee, associate general counsel of Johns Hopkins University. "We are nonprofit institutions who are already worried about leaving a pack of people behind because education is too expensive. The idea of long distance learning is to make education more affordable."

Hopkins fired back a letter asking for more information but has not yet received a response. Acacia's new round of letters appears to have gone to small colleges, like Truckee Meadows Community College in Reno, Nev. The letters ask for about $5,000 a year in annual licensing fees.


The New York Times presented information suggesting the claims of the Acacia patents are valid:


Marc S. Kaufman, a patent lawyer with Nixon Peabody in Washington, who is not affiliated with the company, said that, at least on their faces, the patents appear to be extremely broad. "They are able to go after anybody who is streaming any kind of content over the Internet," he said.

But whether Acacia will prevail in the courts is another question, Mr. Kaufman said.


But a group of porn companies, led by HomeGrownVideo.com and represented by Fish & Richardson, a well-known intellectual property law firm, have banded together to fight Acacia. Their suit is pending in federal court in California and likely will not be resolved until next year.

Last year Technology Marketing magazine hired PatentRatings, a consulting firm in California, to independently analyze the strength of Acacia's patents, using a computer algorithm that compares patent claims. The company said that Acacia's patents were "very solid."
[The significance of an algorithm to "compare" patent claims, in the context of a validity investigation, remains to be seen.]


However, the New York Times also mentioned the results of an infringement case concerning the V-chip:


But those who are targets of Acacia's licensing program may take comfort in a recent victory handed to three companies - Sony, Sharp and Toshiba - who refused to pay any royalties to Acacia for its V-chip patent.

Last week, the United States Court of Appeals for the Federal Circuit in Washington, the nation's highest patent court, upheld a ruling that those television manufacturers do not infringe the V-chip patent and thus owe Acacia no royalties. The companies that have already paid Acacia $26 million in V-chip royalties, however, will receive no refund.


However, the relevance of this case on noninfringement of the V-chip to the current discussion of invalidity of the streaming video patents remains to be seen.

There are five patents involved in Acacia's streaming video licensing effort. The parent patent is US 5,132,992. There are three patents derived from continuation applications (US 5,253,275; US 5,550,863; 6,002,720) and one from a divisional application (US 6,144,702).

The first claim of the parent patent(US 5,132,992) is in "means plus function" format (35 USC 112 P6) and reads as follows:

1. A transmission system for providing information to be transmitted to remote locations, the transmission system comprising:

library means for storing items containing information;

identification encoding means for retrieving the information in the items from the library means and for assigning a unique identification code to the retrieved information;

conversion means, coupled to the identification encoding means, for placing the retrieved information into a predetermined format as formatted data;

ordering means, coupled to the conversion means, for placing the formatted data into a sequence of addressable data blocks;

compression means, coupled to the ordering means, for compressing the formatted and sequenced data blocks;

compressed data storing means, coupled to the data compression means, for storing as files the compressed, sequenced data blocks received from the data compression means with the unique identification code assigned by the identification encoding means; and

transmitter means, coupled to the compressed data storing means, for sending at least a portion of one of the files to one of the remote locations.

The first claim of the '275 patent (a continuation of application Ser. No. 07/637,562, filed Jan. 7, 1991 U.S. Pat. No. 5,132,992) reads as follows:

1. A transmission system for providing information to be transmitted to remote locations, the transmission system comprising:

library means for storing items containing information;

identification encoding means for retrieving the information in the items from the library means and for assigning a unique identification code to the retrieved information;

conversion means, coupled to the identification encoding means, for placing the retrieved information into a predetermined format as formatted data;

ordering means, coupled to the conversion means, for placing the formatted data into a sequence of addressable data blocks;

compression means, coupled to the ordering means, for compressing the formatted and sequenced data blocks;

compressed data storing means, coupled to the data compression means, for storing as files the compressed, sequenced data blocks received from the data compression means with the unique identification code assigned by the identification encoding means; and

transmitter means, coupled to the compressed data storing means, for sending at least a portion of one of the files to a reception system at a head end of a cable television system for subsequent transmission to one of the remote locations.

The second claim of the '275 patent is to a method:

2. A distribution method responsive to requests from a user identifying items in a transmission system containing information to be sent from the transmission system to receiving systems at remote locations, the method comprising the steps of:

storing, in the transmission system, information from items in a compressed data form, the information including an identification code and being placed into ordered data blocks;

sending a request, by the user to the transmission system, for at least a part of the stored information to be transmitted to a reception system associated with a receiving system at one of the remote locations selected by the user;

sending at least a portion of the stored information from the transmission system to the reception system;

receiving the sent information by the reception system;

storing a complete copy of the received information in the reception system; and

playing back the stored copy of the information from the reception system to the receiving system at the selected remote location at a time requested by the user.

The first claim of the '863 patent reads as follows:

1. A transmission system for providing information to be transmitted to remote locations, the transmission system comprising:

a plurality of library means for storing items containing information;

identification encoding means for retrieving the information in the items from the plurality of library means and for assigning a unique identification code to the retrieved information;

conversion means, coupled to the identification encoding means, for placing the retrieved information into a predetermined format as formatted data;

ordering means, coupled to the conversion means, for placing the formatted data into a sequence of addressable data blocks;

compression means, coupled to the ordering means, for compressing the formatted and sequenced data blocks;

compressed data storing means, coupled to the data compression means, for storing as files the compressed, sequenced data blocks received from the data compression means with the unique identification code assigned by the identification encoding means; and

transmitter means, coupled to the compressed data storing means, for sending at least a portion of one of the files to one of the remote locations.

The first claim of the '720 patent reads as follows:

1. A transmission system responsive to input from a user positioned at an accessing location for transmitting information to a premises selected by the user, the transmission system comprising:

a plurality of libraries for storing items containing information;

identification encoding means for retrieving the information in the items from the plurality of libraries and for assigning a unique identification code to the retrieved information;

conversion means, coupled to the identification encoding means, for placing the retrieved information into a predetermined format as formatted data; and

transmitter means, coupled to the conversion means, for transmitting the formatted data to the premises selected by the user, wherein the premises selected by the user is not limited to a predetermined user premises.

The '702 patent was prosecuted by a different law firm before a different examiner. Its priority chain is as follows:

This is a division of application Ser. No. 08/630,590, filed Apr. 10, 1996, which issued as U.S. Pat. No. 6,002,720, which is a continuation of application Ser. No. 08/133,982, filed Oct. 8, 1993, which issued as U.S. Pat. No. 5,550,863, which is a continuation of application Ser. No. 07/862,508, filed Apr. 2, 1992, which issued as U.S. Pat. No. 5,253,275, which is a continuation application of Ser. No. 07/637,562, filed Jan. 7, 1991, which issued as U.S. Pat. No. 5,132,992, which applications are hereby incorporated herein by reference.

The first claim of the '702 patent is as follows:

1. A communication system comprising:

a transmission system at a first location in data communication with a reception system at a second location, wherein said transmission system comprises

a sequence encoder,

an identification encoder, and

a compressed data library in data communication with said identification encoder,

wherein said identification encoder gives items in said compressed data library a unique identification code; and

wherein said reception system comprises

a transceiver in data communication with said transmission system,

a storage device in data communication with said transceiver,

user playback controls in data communication with said storage device,

a digital compressor in data communication with said storage device, and

a playback device in data communication with said digital decompressor.

As of August 17, 2004, the parent '992 patent had been cited by 192 US patents.

These patents which reference the '992 patent include 6,778,649 (issued Aug. 17; a continuation of Ser. No. 09/897,250, filed Jul. 3, 2001, which is a continuation of Ser. No. 09/595,521, filed Jun. 16, 2000 now U.S. Pat. No. 6,373,927, which is a continuation of Ser. No. 08/988,709, filed Dec. 11, 1997, issued as U.S. Pat. No. 6,128,374, which is a continuation of Ser. No. 08/419,199, filed Apr. 10, 1995, issued as U.S. Pat. No. 5,706,335); 6,738,978; 6,725,267; 6,674,960; 6,654,827; 6,640,145; 6,614,470; 6,560,651; 6,557,030; 6,549,942.

[Additional information may be obtained at http://www.streamingmedia.com/patent/]

Monday, August 02, 2004

Future Growth in PCs Will Be Outside the Domain of US Patent Law

from CNET:

The number of PC users is expected to hit or exceed 1 billion by 2010, up from around 660 million to 670 million today, fueled primarily by new adopters in developing nations such as China, Russia and India, according to analysts.

Hitting a billion [computers] in a few years appears inevitable. IDC estimates that there were 670 million PC users worldwide in 2003. A little more than a 152 million PCs will leave factories this year, and that tally is expected to grow over time. With about half of these going to new users, IDC believes that the PC user population will grow to 1.2 billion by the end of 2009, a 79 percent increase over six years.

Gartner says there were 631.8 million PC users at the end of 2003 and 661 million now. The number will hit 953 million at the end of 2008 and cross over the billion mark in 2009. While those are huge numbers on paper, the annual compound growth rate is about 8 percent, Gartner analyst George Schiffler said.

Prices, however, will increasingly become an issue as the user population expands. A low-end Windows PC costs about $350 without a monitor. That's just above the $340 per-capita income of Vietnam, according to statistics from that country's Can Tho University. Not all the new users will own their own system: Many will likely first learn through places like the PC baangs in South Korea.

"There is a remarkable reliance on cybercafes in many of the emerging markets, especially in Asia and Africa--and these are not the cybercafes as we imagine them, either. We are sometimes talking about just a battered old PC sitting on the sidewalk in a lane off a busy street," wrote Genevieve Bell, an anthropologist at Intel who has been researching PC use in Asia for the past few years. "At least 70 percent of the market in India and many other markets is still 'assembled PCs' that are built for a particular person."

Patent infringement Insurance and LINUX

Open Source Risk Management plans to offer a form of patent infringement insurance, valued up to $5 million in coverage for legal costs associated with patent and copyright claims, for an annual premium of about $150,000. The policy is available now, but won't take effect until January, 2005.

Possibly to enhance business prospects, Open Source Risk Management Inc. released the results of its study on August 2, 2004, the opening day of the LinuxWorld trade show in San Francisco. Patent attorney Dan Ravicher, senior counsel for the Free Software Foundation, which promotes the use of free software, conducted the research.

The study identified 283 software patents that could potentially be used to support claims against Linux, an open-source operating system that's distributed for free. Linux is the center of a pending multi-billion-dollar copyright infringement suit filed in 2003 by SCO Group Inc. against IBM.

Of those patents, a third are owned by companies that support the use of Linux and are unlikely to take legal action, Open Source Risk Management said. Those companies include Cisco Systems, Hewlett-Packard, IBM, Intel, Novell, Oracle, Red Hat, and Sony.

Of the remaining patents, however, 27 belong to Microsoft, which is an outspoken opponent of Linux. The rest belong to companies or individuals who would have little to lose in making legal threats against Linux users in the hopes of reaching lucrative settlements, Open Source Risk Management said.

Sunday, August 01, 2004

Busch report on Novartis/Berkeley research arrangement

Under the Bayh-Dole Act of 1980, a university may grant an exclusive or non-exclusive license to patents obtained with federal funding, subject to certain rights of the funding agency. The idea is that the university is to identify the best entity to commercialize the invention, with preference to be given to small, American companies. In the Novartis/Berkeley arrangment, Novartis was given the right of first refusal over inventions of an academic department, including those obtained with federal funds. In effect, the decision-making capacity about licensing resided with Novartis, not with Berkeley. Neither Novartis, nor the successor-in-interest, Syngenta, are small American companies.

I had written about the Novartis/Berkeley interaction in "Implicitly Zurko," Intellectual Property Today, p. 22 (July 1999), and in "The Things We Lean On Are Things That Don't Last," Intellectual Property Today (February 2003), both available on LEXIS.

A review by Michigan State University sociology Professor Lawrence Busch (who lead a group of 10 people at MSU) is scheduled for release on August 1, 2004.
[available: http://www.berkeley.edu/news/media/releases/2004/07/external_novartis_review.pdf]

It appears that the Busch report may have overlooked issues that I raised in my 1999 article.

From San Francisco Chronicle. Saturday, July 31, 2004.

BERKELEY/Probe of research pact at Cal released/While no harm was done, avoiding such deals in future urged
Charles Burress, Chronicle Staff Writer

UC Berkeley's $25 million deal with the giant Novartis drug company, a lightning-rod symbol of corporate sponsorship of university research, did not wreak the harm feared by critics, but such broad agreements should be avoided, according to a long-awaited independent review.
While the report found that the deal did not compromise research, it did find there was "little doubt" the pact played a role in another controversy that cast a cloud over the university -- the denial of tenure to Assistant Professor Ignacio Chapela, a vocal critic of the agreement.
"The greatest hopes of its supporters and the greatest fears of its detractors have not come to pass," notes the 188-page report written by Michigan State University sociology Professor Lawrence Busch. He led a team of 10 Michigan State researchers commissioned by the Berkeley faculty and funded by the Berkeley campus.
Supporters said at the time that the 1998 deal could generate
important licensing and patent breakthroughs, and provide much-needed funding at a time when public support for higher education was declining.
The study found Novartis did not license any research stemming from the pact. Funding for plant biology at Cal rose significantly under the contract, but the report found another biology department at Berkeley and one at Michigan without such a contract also saw significant income jumps during the same period.
The review, which took two years, is scheduled to be released
The five-year deal, which offered $25 million to Cal's Department of Plant and Microbial Biology for research and operations, drew heavy criticism from those who saw the university selling itself to commercial interests.
It played prominently in the "The Kept University," an article in the
March 2000 issue of Atlantic magazine.
The sponsor was Novartis' research arm, Novartis Agricultural
Discovery Institute, later taken over by Swiss-based Syngenta.
Novartis opened its databases to Berkeley and was given seats on the department's research-review committee and first rights to bid on
licensing research from the department -- even that sponsored by
government funds.
The report said the contract, which expired in November, was "not
far from the norm" for corporate-academic cooperation but for two key features:

--> the questionable first-access to research that Novartis didn't finance and
--> the involvement of an entire university department.

Some faculty members and graduate students within UC Berkeley's
College of Natural Resources, which includes the plant biology department, felt tainted by the association, and there is "little rationale" for such a department-wide approach, according the report.

The report recommends that Cal avoid such arrangements in the

Chapela, who chaired the College of Natural Resources' executive
committee, was a leading critic of the deal. The report details the
unusual process by which he lost his tenure bid despite a 32-1 vote in favor of tenure by his faculty colleagues in the environmental science,policy and management department and unanimous approval by a
five-member ad hoc tenure committee.
In a prepared statement, Executive Vice Chancellor and Provost Paul
Gray said the report "provides data to show that the (plant and microbial biology) department is healthier today than it was before the agreement was put into place." He noted an increase in funding from other sources
and a rise in graduate student applications.

Anne MacLachlan, a researcher for the Center for Studies in Higher
Education and the campus liaison to the study group at Michigan State, said she concurred with the report's conclusions, though she faulted it for some minor errors.
She also criticized the report for not placing greater emphasis on the secrecy surrounding the formation of the agreement, one reason "why the faculty was so angry" about it.
The report's conclusion that research and academic integrity was not contaminated echoed the results of an earlier internal review by the Office of the Vice Chancellor for Research released in January 2003. A June 2001 article in the Chronicle of Higher Education also reported that none of dozens of people interviewed could cite an instance of research compromised by the deal.