Thursday, September 30, 2004

Initial Office Action in reexamination of ' 517 FAT patent

There was an initial rejection of claims in the re-examination by the USPTO of one patent of Microsoft covering File Allocation Table (FAT) technology. The Public Patent Foundation had announced in April that it had submitted a request for a reexamination of Microsoft's US Patent No. 5,579,517.
(see A copy of the Office Action is available.

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

Microsoft's licensing program involves

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

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

Wednesday, September 29, 2004

Nanotech and silver antibacterial combine

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

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

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

Monday, September 27, 2004

Relatively small group of people deciding patent policy?

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

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

--> From Scientific American website, May 2004

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

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

[Book relies on patent grant statistics of Quillen and Webster, debunked in July 2004; see]

-->From "Greedy IP":

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

Yikes! They're on to us!


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

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

Pfizer to contest Chinese action on Viagra patent


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

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

Abandoned cars in Hamilton, NJ

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

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

Sunday, September 26, 2004

Boston Globe on EmCell's stem cell work

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

Text from Boston Globe:

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

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

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

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

Saturday, September 25, 2004

Forgent. JPEG. LizardTech.

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

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

UPDATE from pdfzone:

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

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

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

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

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

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

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

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

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


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


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

Applied Materials and Novellus Systems settle patent dispute

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

Friday, September 24, 2004

Changes coming in Wi-Fi?

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

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

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

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


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

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

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

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

----> from wifiplanet:

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

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

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

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

UPDATE: has posted a copy of the complaint in the PowerOasis/Wayport matter at

UPDATE from internetnews (Oct. 23, 2004):

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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


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

from Ben Charny at

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Thursday, September 23, 2004

Amicus briefs in Phillips

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

I notice that the brief of IP section of the ABA, filed Sept. 20, responded to Judge Rader's suggestion.

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

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

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

Of the hydrosol case:

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

Of the Rochester case:

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

"Perpetual motion" in data compression?

Roger Howorth writes:


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

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

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

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

Well good for Microsoft.

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

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

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


As comments to Roger's text, I note that

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

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

Wednesday, September 22, 2004

Automark attempts to profit from Help Americans Vote Act

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

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

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

PAIR and IFW at Patent Office

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

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

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

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

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

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


-->from text by Kevin Flynn:

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

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

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

How does this change the patent landscape?

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

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

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

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

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

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

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

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

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

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

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


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


on the plagiarism issue with Lawrence Tribe of the Harvard Law School

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

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

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

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

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


from "The Record" at Harvard Law

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

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

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

Tuesday, September 21, 2004

Improving patent quality with post-grant opposition?

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

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

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

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

The AIPLA proposal includes the following:

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

The AIPLA also noted:

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

Immersion wins patent verdict over Sony

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

Novartis files Hatch-Waxman suit against Teva over LOTREL

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

Monday, September 20, 2004

McDonald's loses MacTrademark case in Singapore

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

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

Bayh-Dole arrangement in nanotech/microfluidics

from Business Wire-->

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

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

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

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

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

--> About Dr. Roukes

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

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

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

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

--March 12, 1998---

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

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

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

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

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

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

Woolston on eBay litigation

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

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

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

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

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

Sunday, September 19, 2004

Alpharma and gabapentin

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

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

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

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

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

RFID. Intermec/Matrics disagreement a problem?

through ZDnet:

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

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

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

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

Friday, September 17, 2004

Warning about off-label prescriptions?

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

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

from the Washington Post-->

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

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

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

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

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

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

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

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

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

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

Appeal of Gemstar ITC case decided by CAFC

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

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

--> on disavowal of claim scope

**Gemstar wins

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

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

-->more dictionaries (Texas Digital; Phillips)

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

--> inventorship

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

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

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

--> John Ewen on Ewen:

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


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

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

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

[Now read the Ewen case...]

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

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

from a talk by Nobel Laureate Brian Josephson:

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

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

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


from physicstoday (Ludwik Kowalski):

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

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

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

Los Alamos National Lab to resume operations by end of September

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

from the Scientist:

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

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

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

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

Further to "substantial evidence" in patent cases

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

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

from Velander v. Garner (CAFC 2003):

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

Thursday, September 16, 2004

Three-dimensional self-assembly in nanotech?

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

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

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

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

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

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

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

Lawsuit involving Lipitor

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

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

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

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

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

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


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

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

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

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

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