Friday, December 31, 2004

Phillips to be heard Feb. 8, 2005

Phillips v. AWH to be heard by CAFC on Tuesday, February 8, 2005, 10:00 A.M., Courtroom 402.

Phillips v. AWH Corp.: dictionaries in litigation

The en banc review in Phillips v. AWH Corp., 376 F.3d 1382 (CAFC 2004), promises to give guidance on the mechanism for interpreting terms within a patent claim. One commentator stated that many patent law people expect that the CAFC will select dictionaries as the primary source for resolving claim construction disputes. The intrinsic evidence, which is the patent document and the associated file history, would control when no relevant dictionary definition
exists and when the intrinsic evidence clearly defines the disputed language. A different commentator stated: “ is not clear that the Federal Circuit, given the recent trend in its decisions to rely heavily on dictionaries, will use its en banc reconsideration of Phillips to diminish their use significantly. Indeed, none of the judges appears to be a vociferous opponent of dictionaries playing a major role. The judicial differences focus more on the relationship
between dictionary definitions and intrinsic evidence as sources for claim construction.”

The commentators are probably correct in predicting the survival of general purpose, conventional dictionaries in the interpretation of terms in patent claims. One does wonder if this is the right result or merely an artifice to streamline litigation. Is the court correct in determining that dictionaries give the ordinary meaning that would be attributed to claim terms by persons
skilled in the relevant art, or are dictionaries perhaps one of the last sources that a skilled artisan
would use to determine the ordinary meaning of claim terms? Perhaps, the court has improperly
translated the use of dictionaries as extrinsic evidence that may be used to aid "the court's
understanding of the patent" (or the understanding of non-technically trained litigators or legal
academics) to an imputed acceptance by persons of ordinary skill of the technical accuracy of
descriptions in conventional dictionaries. The language of patent documents is directed to one of
ordinary skill in the art, and that is the starting point for any inquiry. It is unlikely that definitions
in conventional dictionaries are explicitly contemplated in most patent applications or
prosecutions. Although courts, litigators, and academics might use dictionaries to get up to
speed for discussion, one should not substitute that exercise for the understanding of the term by
a person already trained in the art.

Contemplate some of the cases.


The Texas Digital case, 308 F.3d 1193 (CAFC 2002), elevated the status of dictionaries to
construe claim terms in suggesting that consulting intrinsic evidence prior to consulting a
dictionary "invites a violation of our precedent counseling against importing limitations into the
claims." In the Phillips case, the patentee argued unsuccessfully for a dictionary definition of the
word --baffle-- to give broader scope than that in the illustrated embodiments. Texas Digital
limited situations in which the intrinsic record would control, as, for example, if the intrinsic
record contains clear lexicography or disavowal of claim scope. Texas Digital, 308 F.3d at 1204;
additionally, the intrinsic record could be used to select among diverse dictionary definitions
(“the intrinsic record must always be consulted to identify which of the different possible
dictionary meanings of the claim terms in issue is most consistent with the use of the words by
the inventor,” Id. at 1203)


In Novartis v. Eon, 363 F.3d 1306 (CAFC 2004), the term –hydrosol– was not defined in the
specification. The patentee argued unsuccessfully for a dictionary definition of hydrosol: solid
particles dispersed in an aqueous medium. The patentee also invoked Liebel-Flarscheim v.
MedRad, 358 F.3d 898 (CAFC 2004) (holding that claim terms are given the full breadth of their
ordinary meaning unless a clear disavowal of scope is stated in the specification.) Nevertheless,
the majority limited the term --hydrosol-- to a medicinal preparation consisting of a dispersion of
solid particles in a liquid colloidal solution prepared outside the body. Part of the reasoning
underlying this definition involved importing a definition of the term –solution– into the term
hydrosol, even though a true aqueous solution (wherein the solute is dissolved in the solvent
water) is basically the antithesis of a colloidal dispersion (wherein the added material is not
dissolved in the surrounding water). The dissent noted that the majority’s interpretation required
the use of one particular dictionary, and did not flow from other dictionaries.


A definition in a conventional dictionary, which is more directed to brevity than to detail, is apt
to give broad scope to a claim term, and thus generally will be advocated by the patentee, as was
the case in Novartis and Phillips. The accused infringer will seek to narrow claim scope, by
limiting a term to the embodiments disclosed in the patent specification. In terms of the present
formalism, where there is no clear-cut surrender of claim scope (the case in Novartis), the court
will select a limiting definition from several available to conform to (perceived) limitations in the
specification. The arbitrariness of this is seen in Novartis.

The underlying tension arises from the disparity in the scope of embodiments in comparison to
the scope of the claims. A battleground can be the claim terms, as with Phillips, or it can be
written description or enablement, as with the Rochester COX-2 case.

The use of conventional dictionaries for claim terms is an expedient. In this approach, rather
than getting bogged down with testimony of conflicting experts or analyses of technical
documents beyond the scope of the training of the judges or of the litigators, the court relies on
the conventional dictionary to set an initial baseline against which the specification can be
measured. After that, litigation skill may matter. In the real technical world, one of ordinary skill
would probably define a term contextually in terms of a patent document, refer to technical
textbooks, treatises, and publications or ask another technical person long before the skilled
artisan would look to, or rely upon, Webster’s.

To reduce difficulties with claim terms, the patent applicant should present definitions and
examples in a non-limiting way. Rather than rely on dictionary roulette, the applicant should
make sure that a suitable baseline definition of key claim terms is within the specification. The
breadth of embodiments should be stressed, up to the point of intrusion on prior art or 112 issues.
In conjunction with Festo and Johnson & Johnston, if in prosecution an examiner presents a
more limiting definition than contemplated, appropriate steps should be taken.

[Submitted to Int. Prop. Today, Dec. 7, 2004]

The discussion about dictionaries, and separately the discussion about patent reform (by the FTC and the NAS), reminds one more of an academic debate than one about policies affecting business. I don't think that practitioners are much enamored of the use of general purpose dictionaries, anymore than the PTO is. The NAS report flitted from law review article to another without getting much input from anyone who actually does prosecution.

A column by Ellen Goodman in December 2004 started --I like the old maxim that academic politics are vicious because the stakes are so small.-- Oddly, the stakes aren't necessarily small for patents, but it does not look like we're getting into the real issues in the debate so far.

New pharma law takes effect in India in 2005

By presidential decree of this week, India met a World Trade Organization (WTO) commitment to recognize foreign patents from Jan. 1, 2005. The change will become law if ratified by parliament at its next session in February, 2005. The new rules do not apply to drugs patented before 1995. The new law has compulsory licensing provisions allowing the government to force patent-holders to grant licenses to local firms in case of national emergencies or for exporting medicine to countries facing public health emergencies, provisions permitted under the WTO and already utilized by some countries in the AIDS area.

India can remain a production center. India has more than 70 U.S.-approved manufacturing plants -- the most in the world outside the United States -- and can remain a production hub because of its cheap, skilled labour. GlaxoSmithKline has already signed a drug research partnership with Ranbaxy, India's top drug maker by sales [recall past patent fights].

Turmoil at AeroTelesis over license?

AeroTelesis is a California company whose technology is based on a standard known as Ultra Spectral Modulation, or USM. The company's Internet site compares USM to two standards that transmit mobile-phone calls today -- Code Division Multiple Access (CDMA) and Global System for Mobile (GSM) communications.

from the Bloomberg article:

-->The license covers patents for a design AeroTelesis is developing to send high-speed wireless phone calls, data and video -- a technology the company says on its Web site is ``core'' to the business. AeroTelesis valued the license at $2.7 million, or 96 percent of the company's assets as of Sept. 30.

Narayanan, 52, said he asked board members Christopher Cox and Gutierrez for copies of the company's license agreement and for an audited financial statement. They refused, he said. The men called a board meeting and asked Narayanan to resign, he said. When he refused, he said, ``they just voted me out.'' <--

Recall in 2003, Qualcomm charged that Texas Instruments violated a confidentiality agreement by disclosing key information about its business relationship in early May, 2003. About that time, Texas Instruments was making public its plans to manufacture and sell CDMA wireless phone chips.

Separately, Qualcomm and the Swedish Ericsson have been in a legal squabble over 3G (third generation) technical standards and alleged patent infringements since 1996. Ericcson's Global System for Mobile communications is a digital cellular system found in almost all of Europe, parts of Asia, and parts of North America, while Qualcomm's CDMA dominates in North America.

Thursday, December 30, 2004

Ranbaxy against Pfizer on Lipitor has a long article on the intellectual property activity at Ranbaxy.

Jay Deshmukh, vice president for intellectual property of New Delhi-based generic drugmaker Ranbaxy Laboratories Limited, plus William Zimmerman and Darrell Olson, partners at Irvine, Calif.-based Knobbe, Martens, Olson & Bear reviewed Pfizer's composition of matter patent on Lipitor and concluded that the main Lipitor patent does not cover the form of a key ingredient, atorvastatin, used in the drug. Ranbaxy alleges that Pfizer misrepresented that fact to the Patent and Trademark Office when it won an extension on the patent until 2010.<--

Although the article by Sue Reisinger mentioned Ranbaxy's litigation against GlaxoSmithKline over Ceftin, the article somehow failed to mention Ranbaxy's deal with GlaxoSmithKline.

Of the Ceftin matter, Reisinger wrote:

-->But the company [Ranbaxy] was at a crossroads about what it should do in the U.S. Should it wait until the drug went off patent before selling the generic? Or could it find a loophole in the patent and market a version of the drug that was close enough to it to be a generic, but different enough so that it wasn't covered by the Ceftin patent? Deshmukh thought Ranbaxy's product was unique enough that it could market its generic as soon as it was ready. He also knew that as soon as the company notified Glaxo of its plans, the drug giant was likely to sue to protect its patent, so Deshmukh quickly looked to make sure he had the right outside counsel to defend the company.

Ranbaxy had retained Proskauer Rose, the prominent New York-based firm, as its primary outside counsel when the company entered the U.S. market in the late 1990s. But Deshmukh wanted a firm that focused solely on IP. "I needed to shift [Ranbaxy] management from trying to save money [by avoiding litigation] to using the best lawyers money can buy [to litigate]. You either litigate fully or you don't litigate," he recalls. Caprariello says Deshmukh faced considerable opposition from Ranbaxy's R&D department over the law firm switch, but the lawyer persisted. That department, to which Deshmukh reported, was "comfortable" with Proskauer, says Caprariello. Going to trial over Ceftin, which ultimately cost Ranbaxy $5 million, was a commitment beyond anything the company had done before, Deshmukh says.

Charles Guttman, who leads Proskauer's IP practice, argued in vain that the firm's broad litigation experience shouldn't be tossed aside. "I had been working with other people there [at Ranbaxy], and Jay came in and made his decision," Guttman says. "What can I say? I wish him well."

Deshmukh first searched for a replacement for Proskauer on the East Coast, but he says that most of the top IP firms there were already on Big Pharma's payroll. So Deshmukh called his friend and protégé Zimmerman at Knobbe Martens, a large IP law firm out West.

Deshmukh's opening gambit against Glaxo started badly. After receiving Ranbaxy's letter, Glaxo sued in federal court and in early 2001 obtained a preliminary injunction that stopped Ranbaxy from going to market. (Glaxo declined to comment on the case.) The pressure on Deshmukh was intense. Zimmerman says, "It was our first case for Ranbaxy, and we had lost our first battle. He never told us, but we knew the substantial pressures on Jay to switch law firms. We sat down with him, and he decided to stick with us for an appeal." Deshmukh concedes that his job was on the line.

Four-and-a-half months later, the U.S. Court of Appeals for the Federal Circuit reversed the trial court's injunction, saying it saw little chance that Glaxo could prevail at trial. But that good news presented Deshmukh and his team with a new dilemma -- whether to launch the generic before the trial concluded, which would give Ranbaxy a head start. Launching early would carry no repercussions as long as Ranbaxy won at trial; but if it lost, under U.S. patent law Glaxo could seek treble damages for willful infringement.<--

One does note that going with an IP boutique (Knobbe) over a GP firm is against current conventional wisdom. Many IP boutiques have been gobbled up with attorneys ending up at GP firms (eg, the story of Pennie & Edmonds and Jones, Day).

Ranbaxy did win on Ceftin. The article noted:

Deshmukh was able to parlay that success in several ways. He moved from being the sole IP lawyer reporting to R&D, to global vice president of intellectual property, reporting directly to CEO Tempest. Deshmukh oversees four other lawyers in the U.S. and in Europe, as well as a large technical staff of patent and chemical experts in India. (Ranbaxy's New Delhi-based GC spot was unfilled at press time.) Deshmukh says that the company has now established a $100 million threshold of sales; Ranbaxy primarily will look to develop drugs with revenues above that amount. Now, Deshmukh says, "We [the IP department] are the engine that drives the company train."

As a separate matter, the Public Patent Foundation initiated a re-examination of Pfizer's 5,969,156 based upon prior art within 5,273,995 (Roth) and 5,686,104 (Mills). The claims in the '156 are to specific crystalline forms of Atorvastatin.


Google, IBM file applications for improved searches

Google's has filed a patent application for searching queries written in a different character-set or language from the target pages. (co-inventor Ghemawat). IBM has filed an application for creating a personalized search index based on a user's personal search term list - keywords known to be of interest to the user.

Wednesday, December 29, 2004

Stephens v. Tech International

The CAFC decision is nominally about exceptional case under 35 USC 285. However, it gets into the distinction (or lack thereof) between chromium trioxide and chromic acid.

On the issue of acid, the CAFC cites Merck v. Teva, 347 F.3d 1367 (CAFC 2003). However, a more pertinent issue here concerns the fact that chromium trioxide itself is a solid, comprising linear chains of tetrahedrally coordinated Cr(VI). Although there is no shortage of texts that equate "chromium trioxide" and "chromic acid," a more precise definition is along the lines:

Chromic Acid: an aqueous solution of chromium trioxide (CrO3) or a commercial solution containing chromic acid, dichromic acid (H2Cr2O7), or trichromic acid (H2Cr3O10).

Chromium trioxide itself contains no protons and is not a Bronsted acid. Its chemistry is modified by contact with acids (eg, acetic acid) or bases (eg, pyridine) but those modified forms should not be equated with chromium trioxide itself.

[My interest in chromium trioxide arises from a debate, now more than 50 years old, as to whether or not chromium trioxide itself intercalates graphite. There is no doubt that chromium trioxide in solution intercalates (although not as chromium trioxide), but there is much doubt that chromium trioxide itself (ie, the linear polymer, with only Cr(VI)) intercalates. There are patents for chromium trioxide "in" graphite as a battery cathode and as an organic oxidant. In the patent world, the emphasis is on providing a valid recipe to do something useful, and the issue of whether or not the scientific description is accurate does not come up. Recall also buckminsterfullerene (C60), the synthesis of which was described more than a year before the work of Smalley and Kroto. This issue is also present in the Stephens case. Whether or not chromium trioxide and chromic acid are the same (they really are NOT), they are different from chromates and dichromates.]

Einstein Centennial -- 2005

Einstein's first significant paper, on the photoelectric effect, was sent to the journal Annalen der Physik on March 17, 1905, three days after his 26th birthday.

In the photoelectric effect experiment, shining light on a metal plate can cause the ejection of electrons from the metal plate. To measure the properties of the ejected electrons, one introduces a second metal plate, and applies a voltage differential across the two plates. If one starts with zero voltage across the plates, then some current will flow when the light is turned on: electrons knocked off the "source" plate with any speed will eventually reach the "target" plate. But if one gradually increases the voltage difference (to impede electron transit) fewer and fewer electrons will make the journey, and, at some voltage, the current disappears. The voltage wherein the current disappears can be used to give a measure of the maxiumum kinetic energy of the ejected electron.

Experimental observations in the photoelectric effect are:

--> The energy of the electrons does NOT depend on the intensity of the light.
--> The electrons always appear AS SOON AS the light reaches the plate (though a feeble light produces only a few).
--> NO electrons are produced if the frequency of the light waves is below a critical value.

That is, as the brightness (intensity) of light incident on a metal surface increased, more electrons were ejected from the metal. However, the energy of the electrons depended only on the frequency of the light, not on the intensity of the light. Shining more intense light (even for example a laser light) would not increase the energy of the electrons. To explain this, Einstein proposed energy quanta, which both explained the photoelectric effect and avoided the so-called ultraviolet catastrophe.

-->The energy of the electrons does NOT depend on the intensity of the light.
Each electron absorbs only one photon at a time. If the absorbed energy is large enough to expel the electron from the metal, it leaves. If not, the electron dissipates its energy in collisions with nearby electrons and atoms before it can absorb another photon.

-->The electrons always appear AS SOON AS the light reaches the plate (though a feeble light produces only a few).
As soon as a single photon containing sufficient energy strikes the source plate, it will knock an electron free. There is no need to wait for multiple waves to build up enough energy.

-->NO electrons are produced if the frequency of the light waves is below a critical value (no matter what the intensity of the light is)

Since the energy of each photon is

E = hv

below some critical frequency v, no photon has enough energy to knock an electron free.

Moreover, Einstein's theory was able to make one very strong prediction: the maximum energy of ejected electrons should increase linearly with frequency of the applied light.

On May 11, 1905, Annalen received Einstein's paper on Brownian motion, and on June 30, 1905, the paper on special relativity. Thus, three significant papers were sent out in a little over three months. Einstein at the time was working at the Swiss Patent Office in Berne.

As a minor point, in the play Camping with Henry and Tom (by Mark St. Germain, nominally based in time around 1921), Thomas Edison mentions that he does not understand the photoelectric effect. However, Edison in 1883 discovered the "Edison effect" wherein electric current would flow from a light bulb filament to a positively charged metal plate inside the light bulb. Edison obtained a patent on using the "Edison effect" as a current measuring device; the flow of current was proportional to the incandescence of the bulb. More importantly, the "Edison effect" is the basis for the vacuum tube developed by Fleming and DeForest.
Fleming (who at one time worked for Edison) noted that the alternating current being applied to the bulb filament was leaving the tube (via the metal plate) as direct current. Such tube was called the Fleming Valve and its ability to rectify AC current was used in the Diode tubes that followed (and the same concept applies to silicon diodes today). DeForest recognized the opportunity for amplification and modified the tube so it could not only rectify AC current but also amplify it. The De Forest Audion (now triode) contained the filament and plate of the Fleming valve, but interposed between them was a zigzag wire called the grid. A small electric current applied to the grid would result in the proportionate flow of a much larger current from the filament to the plate- creating amplification.

The field effect transistor (FET) was developed by analogy to the diode and triode:

FET/(solid state rectifier) : triode/diode.

This analogy was recognized (and patented by) Lilienfeld approximately twenty years BEFORE Bell Labs developed the transistor.

Tuesday, December 28, 2004

IDG News on patents

from Marc Ferranti of IDG News on Dec. 28, 2004:

-->The turmoil over ratifying the European Union's patent directive has exposed the fear and confusion surrounding the concept of ownership of intellectual property. As originally proposed by the European Commission, the directive would allow software patents. But subsequent versions by the European Parliament were changed to disallow software patents, and just before the end of the year it became apparent that a vote in another legislative body, the Council of Ministers, would be postponed, apparently because political pressure had smashed a consensus about which version to ratify.

For the most part, large corporations are for patents and open source advocates and smaller companies, which have fewer resources to deal with patent issues, are against them. The issue, however, has even large American companies concerned. A loose consortium of large U.S. companies was reported to be seriously considering buying Web services patents auctioned off by bankrupt software company Commerce One, for example, in order to ward off potential legal problems.<--

Large companies are for increased predictability in business. That is why they generally ENDORSED the absolute bar of Festo (which curtailed patent rights), even though they are the ones that have the most patents. Further, in cases such as Eolas v. Microsoft, it is the big company that is the defendant. See also Acacia. The consortium of large companies did not buy the Commerce One patents; an entity about which there is little knowledge did buy the Commerce One patents (see earlier posts on IPBiz).

Monday, December 27, 2004

Meetings on patent reform in 2005

In February and March 2005, the Federal Trade Commission (FTC), the National Academy of Science's (NAS) Board on Science, Technology, and Economic Policy (STEP), and the American Intellectual Property Law Association (AIPLA) will co-sponsor a three-part series of town meetings on patent reform. The first three meetings will take place in San Jose, California, on February 18, 2005; Chicago, Illinois, on March 4, 2005; and Boston, Massachusetts, on March 18, 2005.

In the last two years, there has been much discussion of patent reform.

-->In October 2003, the FTC released its report entitled, “To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy,” available at

-->In 2004, the NAS's STEP Board released its report entitled, “A Patent System for the 21st Century,” available at A draft had been issued earlier in 2004. Within the section on --seven recommended changes--, the NAS suggests modification or elimination of litigation concerning willful infringement, best mode, and inequitable conduct.

-->The AIPLA has issued detailed responses to both reports; they are available at

Representatives from the FTC, the National Academies’ STEP Board, and the AIPLA will conduct the meetings, describe the various recommendations for patent reform, and moderate the audience-participation sessions. The sessions will include substantive discussion of several reform proposals:

Best Practices: First Inventor to File, Publication, and Related Reforms;

Post-Grant Review;

Litigation Reform: Willfulness, Inequitable Conduct, and Best Mode; and

Shields to Infringement Liability: Prior User Rights and Experimental Use Exception.

The full agenda, including schedules and a list of speakers is available on the FTC’s Web site at

Relevant to both FTC and NAS reform proposals, I have published an article PATENT GRANT RATES AT THE UNITED STATES PATENT AND TRADEMARK OFFICE which appears in 4 CHI-K. J. INTELL. PROP. 108 (2004)available at The NAS report by Stephen A. Merrill, Richard C. Levin, and Mark B. Myers, A Patent System for the 21st Century, was available in draft form at

The final version of the NAS report does differ from the draft form that was available in April 2004.

For example, in the section on "seven criteria for evaluating the patent system"
one has the text: "Acceptance rates by themselves ignore how claims are modified, nearly always by narrowing their scope, in the course of examination, surely a key determinant of quality. Moreover, rigor of examination is only one of several factors that may affect allowance rates. The fact is that the examination procedure, allowing an applicant multiple attempts to persuade a critical examiner to approve a patent (see Appendix A) is designed to yield a high "success" rate, at least for persistent applicants."

This text does resemble the old Chinese birth/gender problem. If some Chinese families decide to continue to have children until they obtain a male child (analogous to obtaining an issued patent), this strategy does NOT alter the percentage of male children, which remains at whatever the birth probability was (approximately 50/50). A strategy of insisting on a male child does NOT alter the resultant gender distribution. Similarly, if the patent office continues to apply the same criteria to each application, the fact that some applicants keep trying to obtain an issued patent DOES NOT YIELD a higher "success" rate.

There is also an interesting allusion to the Wright Brothers in the NAS report: "The first patent on a flying machine was issued to the Wright Brothers within 30 months of the flight at Kitty Hawk, North Carolina." A few comments are in order. The first patent issued to the Wright Brothers was NOT on a flying machine; it was for a method of three-dimensional control of flight. The application was made BEFORE the powered flight at Kitty Hawk. That is, the Wrights filed an application on March 23, 1903, written by themselves, for what ultimately became US 821,393; the application does not discuss powered flight, engines, or propellors. The first successful powered flight of the Wrights was on December 17, 1903, approximately nine months AFTER the application was filed. Thus, the NAS report is somewhat misleading in suggesting that the application was granted in less than 30 months; it was not. The NAS report is also somewhat misleading in suggesting the Wright Brothers' patent was to a powered flying machine; it was not. The main problem of the Wright Brothers with the patent system came AFTER the patent was issued. [See also L. B. Ebert, Festo, Foreseeability and the Wright Brothers, Intellectual Property Today, February 2004.]

Transgenic/Avner sue Allerca/Brodie over trade secrets to hypoallergenic cats

One company, Transgenic (principal David Avner) is suing another company Allerca (principal Brodie) over improper use of trade secrets to hypoallergenic cats. Avner had sought out Brodie for financial backing for his ideas, so this is an example of a funding deal gone bad. The case is complicated by the fact that the trade secrets are within U.S. patent applications, at least one of which is published, US application no 20030177512.

from MSNBC:

Transgenic claimed breach of a nondisclosure , non-use agreement, deceptive trade practices, misappropriation of trade secrets and tortious interference.

Plus, it asked for injunctive relief to prevent Allerca and Brodie from further disclosure of Transgenic's trade secrets, from taking any further deposits from the public, from competing with Transgenic, and from representing that it's entitled to the transgenic cat technology and patents.

The lawsuit said Highlands Ranch resident Avner, who's an emergency room physician, revealed trade secrets and proprietary information to Los Angeles resident Brodie because he viewed Brodie as a potential investor in Transgenic. Brodie signed a nondisclosure and non-use agreement in February 2004, the lawsuit said.

In that agreement, Brodie and Geneticas, of Miami, promised to not use the trade secrets for their own purposes, not compete with Transgenic Pets, and not disclose Transgenic Pets' trade secrets, including gene-suppression processes covered by Avner's patent applications in 1996, 1999 and 2000, the lawsuit said. <--

U.S. patent applications have been published since 2001. (Non-foreign filing applicants may request non-publication.) A review of the application database reveals no. 20030177512 (published September 18, 2003, prior to the non-use agreement of February 2004), which states:

->This application is a continuation of U.S. application Ser. No. 09/227,873, filed on Jan. 11, 1999, which in a continuation-in-part of U.S. application Ser. No. 08/657,905, filed on Jun. 7, 1996, which claims priority to provisional U.S. application Ser. No. 60/000,189, filed Jun. 13, 1995, each incorporated in its entirety by reference.<--

Thus, Avner filed a provisional in 1995, a non-provisional in 1996, a continuation-in-part in 1999, and a continuation 2002.

The abstract of the '512 application states:

A transgenic cat with a phenotype characterized by the substantial absence of the major cat allergen, Fel d I. The phenotype is conferred in the transgenic cat by disrupting the coding sequence of the target gene with a specialized construct. The phenotype of the transgenic cat is transmissible to its offspring.

The first four claims of the '512 application recite:

1. An isolated polynucleotide sequence encoding a disrupted Fel d I gene.

2. A sequence according to claim 1, wherein said Fel d I gene has been disrupted by sequence replacement.

3. A sequence according to claim 1, wherein said Fel d I gene has been disrupted by sequence insertion.

4. A sequence according to claim 1, wherein said Fel d I gene has been disrupted by deletion of all or a part of said Fel d I gene.

Claims 8-10 recite:

8. An embryonic cat stem cell comprising a sequence according to claim 1.

9. An embryonic cat stem cell comprising a vector according to claim 7.

10. A transgenic cat comprising a disrupted Fel d I gene.

The summary of the invention states:

[0006] This invention is a new alternative to traditional treatments for allergies. Rather than recommending avoidance or immuno-therapy, this invention eliminates the allergen at its source. In the case of the cat, sensitivity has been attributed to one major cat allergen (Fel d I) (Ohman, JACI, 1977). Using, newly developed gene targeting techniques it is possible to "knock-out" the Fel d I genes in an embryonic cell ie. Embryonic Stem (ES) Cells. These modified ES cells can then be introduced into a developing blastomere. During normal embryonic development the ES cells will then be incorporated into part of the germ line (Capecchi, Science, June 1989), (Robbins, Circulation Research, July 1993).

[0007] The resulting chimeric offspring will be heterozygous for the inactive Fel d I gene. When cross-bred with another heterozygous cat, one fourth of the progeny will be homozygous to the inactive Fel d I gene. These homozygous cats are major allergen free and are a revolutionary alternative to immuno-therapy for allergic cat owners (FIG. 1).

The various discussions in the '512 application are in the present verb tense, not in the past tense, suggesting that they may be prophetic, rather than examples actually carried out. Applications that rely on prophetic examples may issue as patents, but there can be issues of enablement under 35 USC 112, first paragraph.

This lawsuit illustrates the divergence between trade secrets and patents. The whole point about trade secrets is that one must keep them secret. Patent applications now are (generally) published, and once the information in an application is published, it cannot be considered a trade secret. If the application ISSUES as a patent, competitors whose product/process falls within the scope of issued claims may be liable both for pre-grant AND post-grant damages. HOWEVER, if the published application (or continuing applications therefrom) does/do not issue, the information therein is dedicated to the public. One suspects that information in a patent application published in Sept. 2003 would not be considered a trade secret (under, for example, the definition in the uniform code) in the context of an agreement signed in Feb. 2004.

Assuming (contrary to fact) that there were no applications in the Transgenic v. Allerca matter, Transgenic would face a tedious, lengthy legal battle in enforcing its trade secret rights, especially for a prophetic concept relying on analysis of the published literature. Thus, in some sense the Transgenic v. Allerca matter speaks to Judge Posner's comments about the relative value of trade secrets and patents, and is another example wherein trade secret rights are markedly inferior to rights that might be secured by patent.

Sunday, December 26, 2004

Johnson & Johnson beats Mylan over Levaquin

A Dec. 24 Reuters report noted the beneficial impact on the stock price of Daiichi concerning the win of Johnson & Johnson (J&J) over Mylan:

-->Daiichi Pharmaceutical surged 3.5 percent to 2,210 yen after it and partner Johnson and Johnson won a patent suit on antibiotic Levaquin, delaying until 2010 plans by Mylan Laboratories Inc. to sell a generic version of the drug.<--

DataTreasury: using the Acacia strategy against banks?

Jennifer Kingson in the Dec. 25 issue of the New York Times has an article discussing law suits brought by DataTreasury against various financial companies.

The Times article mentions that DataTreasury has only two patents, which describe a way to store and retrieve transaction records electronically. DataTreasury has sued about a dozen companies, including J. P. Morgan Chase & Company, the First Data Corporation, the biggest credit card processor; and the Electronic Data Systems Corporation. The Times article does not mention the patent numbers, but mentions the name Claudio Ballard.

The Time article notes that one company, Affiliated Computer, settled what it viewed as a nuisance lawsuit for an amount which may be $50,000. The Times article did not note that patent holders often make initial low cost settlements to bootstrap their way to settle with others for more money.

The Times article mentions the David vs. Goliath aspect of DataTreasury going after big institutions:

-->But because juries are not sympathetic to big corporations, it is easy for a company like DataTreasury to come across as a David battling a Goliath, said Mr. Bednarek, the lawyer and former patent examiner. "Banks are inviting targets, because they have a lot of money and they can make settlements that are within their noise level that it would be impossible for other groups to do," he said. DataTreasury is represented by Nix, Patterson & Roach of Daingerfield, Tex., a plaintiff's law firm best known for the $17 billion award it won for the state of Texas in tobacco litigation.<--

The Times article also mentions another litigation of this type:

-->LML Payments Systems, a small check processor in Vancouver, British Columbia, announced in late October that it had secured a 2006 trial date for a patent infringement lawsuit against four companies, including the TeleCheck division of First Data and the Nova Information Systems division of U.S. Bancorp.<--

The Times article repeats the canard that "business method" patents started with the 1998 State Street decision of the Court of Appeals for the Federal Circuit:

-->Although banks did not bother to patent these systems, others did, especially after a 1998 court ruling broadened the definition of a patent to include business methods and processes. At the time, the United States Patent and Trademark Office was swamped with technology-related applications, and knew very little about the processing of payments.<--

As many articles have pointed out, various business method patents long antedated the State Street decision.

Of the patents, claim 1 of US 5,910,988 to Claudio R. Ballard recites:

1. A system for central management, storage and report generation of remotely captured paper transactions from documents and receipts comprising:

one or more remote data access subsystems for capturing and sending paper transaction data and subsystem identification information comprising at least one imaging subsystem for capturing the documents and receipts and at least one data access controller for managing the capturing and sending of the transaction data;

at least one central data processing subsystem for processing, sending, verifying and storing the paper transaction data and the subsystem identification information comprising a management subsystem for managing the processing, sending and storing of the of the transaction data; and

at least one communication network for the transmission of the transaction data within and between said one or more data access subsystems and said at least one data processing subsystem, with the data access subsystem providing encrypted subsystem identification information and encrypted paper transaction data to the data processing subsystem.

Claim 26 recites:

A method for central management, storage and verification of remotely captured paper transactions from documents and receipts comprising the steps of:

capturing an image of the paper transaction data at one or more remote locations and sending a captured image of the paper transaction data;

managing the capturing and sending of the transaction data;

collecting, processing, sending and storing the transaction data at a central location;

managing the collecting, processing, sending and storing of the transaction data;

encrypting subsystem identification information and the transaction data; and

transmitting the transaction data and the subsystem identification information within and between the remote location(s) and the central location.

The abstract of the '988 patent states:

A system for remote data acquisition and centralized processing and storage is disclosed called the DataTreasury.TM. System. The DataTreasury.TM. System provides comprehensive support for the processing of documents and electronic data associated with different applications including sale, business, banking and general consumer transactions. The system retrieves transaction data at one or more remote Locations, encrypts the data, transmits the encrypted data to a central location, transforms the data to a usable form, performs identification verification using signature data and biometric data, generates informative reports from the data and transmits the informative reports to the remote location(s). The DataTreasury.TM. System has many advantageous features which work together to provide high performance, security, reliability, fault tolerance and low cost. First, the network architecture facilitates secure communication between the remote location(s) and the central processing facility. A dynamic address assignment algorithm performs load balancing among the system's servers for faster performance and higher utilization. Finally, a partitioning scheme improves the error correction process.

The filing firm was McGuire, Woods, Battle & Boothe LLP. As of December 26, 2004, the patent has been cited by 18 US patents.

One notes the divergence between what is emphasized in the abstract and what is in the above-noted claims. For example, the abstract mentions --system RETRIEVES transaction data at one or more remote Locations-- but claim 1 discusses remote systems--for capturing and SENDING paper transaction data and subsystem identification information-- and claim 26 states --collecting, processing, SENDING and storing the transaction data AT a central location--.

A second patent to Ballard is US 6,032,137, which contains the text: This application is a continuation in part of application Ser. No. 08/917,761 filed Aug. 27, 1997, now U.S. Pat. No. 5,910,988.

The first claims of the '137 patent recites:

A system for central management, storage and report generation of remotely captured paper transactions from checks comprising:

one or more remote data access subsystems for capturing and sending paper transaction data including a payer bank's routing number, a payer bank's routing information, a payer's account number, a payer's check, a payer bank's draft, a check amount, a payee bank's identification number, a payee bank's routing information, and a payee's account number, and further including subsystem identification information comprising at least one imaging subsystem for capturing the checks and at least one data access controller for managing the capturing and sending of the transaction data;

at least one central data processing subsystem for processing, sending, verifying and storing the paper transaction data and the subsystem identification information comprising a data management subsystem for managing the processing, sending and storing of the transaction data; and

at least one communication network for the transmission of the transaction data within and between said one or more data access subsystems and said at least one data processing subsystem, with the data access subsystem providing encrypted subsystem identification information and encrypted paper transaction data to the data processing subsystem.

The '137 patent has been cited by 15 US patents as of Dec. 26.

San Jose Mercury News questions patent policy

In an article on December 26, 2004, Paul Jacobs uses the story of Epogen to question aspects of U.S. patent policy. The news story is not unrelated to the Lemley/Moore article in the Boston University Law Review concerning "ending abuse" of patent continuations.

Part of the problem with the story is that the particular abuse ended for applications filed after 1995. The Jacobs' article does mention the change in the law [Effective June 8, 1995, Congress closed the loophole in patent law that allowed companies to splinter patents in order to extend their lives. Under the new law, all related patents expire 20 years from the date of application of the original patent.]

However, the Jacobs does not distinguish issues between DIVISIONAL applications and CONTINUATION applications; from the Jacobs' article:

In December 1983, the company [Amgen] filed its first patent application. But the filing proved to be a work in progress, the opening argument in a lengthy debate between patent office examiners and attorneys representing the company.

Producing Epogen, complained one examiner, didn't deserve a patent because ``only routine genetic engineering was involved.''

A leading protein researcher, unconnected to Amgen or its competitors, recently agreed with that assessment.

``There was nothing in it that was new except that it was Epo,'' said the researcher, Russell F. Doolittle of the University of California-San Diego.

But in the end, the patent examiners not only gave the company the patent protection it sought but extended it far beyond the usual 17 years that was allowed at the time.

In a key decision, the patent office allowed the company to divide its original application into a series of separate ``inventions,'' each with a patent life of 17 years after approval.

Critics say the idea was ridiculous. ``How many times can you invent the same product?'' said Jamie Love, who directs the non-profit Consumer Project on Technology.

However, John Doll, a top official with the U.S. Patent and Trademark Office, said that the practice of dividing applications into separate parts was permitted under the law. And swamped with applications, the office simply did not have the resources to deal with all the parts at once.<--

Divisional patent applications arise from restriction requirements made by the USPTO. The Patent Office is telling the patent applicant that there are separate inventions in the claims of an initial application and the Patent Office requires the separation of the initial claims into different applications, called divisionals. By statute (35 USC 121), the claims of the different divisionals are insulated from obviousness-type double-patenting rejections.

Divisional application practice was not eliminated by the change in the law in 1995. What did change is patent life. Any patent which issues from an application which claims priority to an earlier application has a lifetime of twenty years from the date of earliest application. Effectively, the change in the law created an incentive to file all related applications as soon as possible.

Continuation applications, unlike divisional applications, are not insulated from obviousness-type double-patenting rejections. A key case involving the denial of multiple patents for the "same" invention concerns Lilly's PROZAC.

Separately, one can file a later application without claiming priority. This avoids the issue of the 1995 change in law. HOWEVER, prior work in the area is available as prior art.

If someone wants to complain about multiple patents for the "same" invention, distinction has to be made between divisionals and continuations. In divisionals, the Patent Office is saying that the claims are for different inventions, and the Patent Office is responsible for errors in the assessment. In continuations, the applicant is saying the claims are for different inventions, and a competitor is free to challenge that assessment in court.

The confusion between DIVISIONAL and CONTINUATION applications also permeates the Quillen/Webster work. Although they argue that much burden would be removed from the PTO by eliminating all continuing applications (which include divisionals and continuations), they neglect to point out that it is the PTO (not the applicant) which creates the need for divisional applications. Further, they neglect to point out that the PTO gets added revenue from the divisionals created by restriction requirements AND that the burden of examining divisionals is less than examining unrelated applications.

Jacobs' article continues:

Amgen's original application ultimately resulted in seven patents. The first expired on Oct. 27, 2004. The others expire between 2012 and 2016 -- three decades after the initial discovery.

In contrast, Amgen's European patent for Epogen expired Dec. 12, swinging open the door to potential competitors who want to produce the drug in China and Eastern Europe.

Amgen contends it did not manipulate the U.S. system.

``Extending the patent life has not been part of our strategy and never has been,'' said Amgen spokesman Michael J. Beckerich. Instead, he points to delays caused by a five-year legal battle that pitted Amgen against a rival biotech company, Genetics Institute, over which company was the first to create a genetically engineered Epo.

The added years of patent life have meant a continuing bonanza for Amgen and its partner, Johnson & Johnson, which sells the same product as Procrit for treating anemia in cancer patients. Combined sales make it the second-biggest drug in the country.<--

Jacobs does bring up a different issue, that of FDA approval of generic "equivalents" of biotech products. This is a different problem from the "multiple patent" issue.

-->Even when biotech patents expire, companies have used the legal system to keep out generic competition.

The biotech and pharmaceutical industries argue that biotech drugs are different from other prescription drug products because they are difficult if not impossible to copy exactly. The companies are thus challenging the authority of the FDA to approve knock-off versions without requiring the same expensive and time-consuming testing required of the originals.

The result: A year after the patents expired on human growth hormone, one of the most expensive medications ever sold, there is still no generic version. The drug, used for treating short stature in children who don't make enough of the hormone themselves, costs as much as $30,000 for a year's supply.

Five companies, including Genentech of South San Francisco, are selling brand-name human growth hormone in the U.S. market -- a result of settlements of bitter patent disputes.

But there's little price competition among the brands, said Dr. Selna Kaplan, a University of California-San Francisco growth hormone researcher. ``You can shift from one to the other, but that doesn't help because they're all the same price,'' Kaplan said.

Recently it looked like that might change. Before he stepped down as FDA commissioner early this year, Dr. Mark McClellan said the agency was considering approval of generic versions of human growth hormone and two other major biotech drugs whose patents have expired, insulin and interferon.

But the biotech industry has deluged the agency with legal petitions to stop those plans.

Genentech's top lobbyist, Walter Moore, argues that there can be small but important differences in different versions of biotech drugs. He cites the example of Eprex, a genetically engineered version of Epo, manufactured and sold in Europe by Johnson & Johnson for treating kidney dialysis patients. A small change in the manufacturing process in 1998 has been linked to potentially deadly complications in 175 patients, who simply stopped making any red blood cells at all.

The generic drug industry says that such fears are unfounded.

``I believe there will have to be clinical trials. They just don't need to be that big,'' said Dr. Carole Ben-Maimon, president of Barr Research, a subsidiary of generic drug-maker Barr Laboratories.

The FDA has put off considering any biotech generics until it completes a series of public workshops on the subject, set to continue next year.

The final decision on how to move ahead could be affected by the current controversy over the safety of several non-biotech drugs, including Vioxx, the arthritis drug that was pulled from the market by manufacturer Merck because of a study showing that the drug increased the risk of heart attacks and strokes.

Going forward, the FDA may require the industry to provide more data or studies prior to product approval, said Kathleen Jaeger, chief executive of the Generic Pharmaceutical Association, which maintains that large-scale testing is unnecessary.

Unless generic versions of the biotech drugs are allowed into the market, Jaeger said, the companies producing the original brand-name products will continue to enjoy ``what no other industry has, which is an indefinite product monopoly.''<--

Friday, December 24, 2004

Anheuser-Busch v. Crown: another claim construction remand

In a non-precedential opinion (per Rule 47.6), the CAFC determined that Crown did not infringe the '987 patent BUT that there was a claim construction error as to Crown's '634 patent (thus, vacate and remand).

The case is about the "geometry of can ends" and is vaguely reminiscent of the 19th century Winans v. Denmead case on the "geometry of railroad cars."

Anheuser initiated suit, seeking a DJ of noninfringement as to Crown's '634 AND infringement as to Busch's '987 patent. Crown counterclaimed for the opposite. This case thus is also in the "be careful of what you wish for" category, because Anheuser, the litigation initiator, so far has ended up on the wrong end of both parts of the action.

As to the '634 patent, Crown contended that the district court erred in reading a "flat" chuck wall limitation into claim 1. The CAFC agreed, citing Dupont ( 849 F3d 1430 ) that where a specification does not require an extraneous limitation it should not be read into the claims. Further, because claim 1 was a product claim, the CAFC declined to read in a process limitation, citing Cordis v. Medtronic, 339 F3d 1352.

There was an argument by Busch about inventor testimony, which was also rejected by the CAFC, citing to Bell & Howell v. Altek, 132 F3d 701.

There was an issue of enablement. Underlying factual issues are reviewed for substantial evidence. 338 F3d 1368. The case Engel v. Lockformer, 946 F2d 1528 , was also cited. [Recall: "The enablement requirement is met if the description enables any mode of making and using the claimed invention." One embodiment can enable.]

from Bloomberg News:

-->Crown Holdings, maker of about one-fifth of the world's beverage cans, claims that the "Lid of the Future" by Anheuser-Busch and its Metal Container Corp. unit infringes on a patent owned by Crown and used for its "SuperEnd" beverage can.

The dispute centers on efforts in the can industry to save metal costs with a new beverage can end that uses less metal while maintaining its strength and allowing for stacking.

In March 2003, Crown Holdings Chief Executive Officer John Conway called SuperEnd the "new global benchmark for beverage ends," while Anheuser-Busch said its Lid of the Future was more cost-effective and energy-efficient. <--

Thursday, December 23, 2004

More on the toxicity of buckminsterfullerene

CHRISTINE EVANS-PUGHE, in an article "Small but deadly," reviews some of the issues with toxicity of buckyballs.

-->The first evidence came earlier this year when Eva Oberdorster, an American toxicologist at the Southern Methodist University in Dallas, published a study showing how, after two days of swimming in water containing buckyballs, largemouth bass fish suffered damage to the fat membranes in their brains. Their livers had responded as though there was a toxin present.

Now, scientists at Rice University, Houston, have pinpointed what could be the mechanism causing this damage. Rice's breakthrough study, published in the journal Nano Letters, is the first to look at the toxic effects on individual human cells exposed to fullerenes, and the first to indicate the cause. "People have shown there's a hazard, but this is the first work about how that hazard comes to be. It's important for the community to understand how, because then you can change it," says Kristen Kulinowski, the director of Rice's Centre for Biological and Environmental Nanotechnology.<--

The work does not seem to address the instability of buckminsterfullerene to oxygen. That is, unless properly protected from oxygen, buckminsterfullerene reacts with oxygen to make, initially C60O. The story of the reaction of C60 with fluorine (to attempt to form C60F60) is also an interesting one. Part of it involves Henry Selig, then at the Hebrew University of Jersusalem.

On the flip side of this is "A biologically effective fullerene (C-60) derivative with superoxide dismutase mimetic properties," Free Radic Biol Med, 2004;37(8):1191-1202)

Separately, Carbon Nanotechnologies Inc. (CNI) and C Sixty Inc. announced on Dec. 21, 2004 the completion of a merger of the two companies. C Sixty will operate as a wholly owned subsidiary of CNI. C Sixty has patents directed to biomedical uses of fullerenes and methods for modification and synthesis of these compounds.

Anticipation affirmed In re Crish

The In re Crish case decided by the CAFC has an interesting "been there done that" footnote. Footnote 1 basically says because of the many cases on the subject of molecular biology, familiarity with the language of molecular biology is presumed.

Patent applicant Crish lost on anticipation (35 USC 102(b)) based on articles that he authored/co-authored. In the context of a review of the PTO/Board, the CAFC noted a two step process in anticipation. First, determining whether the Board's construction was reasonable (the broadest reasonable construction under In re Morris, 127 F.3d 1048). Second, the factual finding of matching claimed elements to the prior art is reviewed for substantial evidence under In re Gartside, 203 F.3d 1305. Substantial evidence is relevant evidence that a reasonable mind might accept as adequate to support a conclusion. The CAFC also mentioned the "two inconsistent conclusions" language of Consolo, 383 US 607, 620 (1966).

In affirming, the CAFC did diverge from the Board in reasoning. The CAFC noted that the sequence is the IDENTITY of the gene, not one of its properties. The CAFC noted one cannot establish novelty by claiming the properties of a known material, citing among other cases Titanium Metals, 778 F2d 775. There was a debate about whether a certain feature was present in the prior art. Basically, the CAFC indicated if the inference of the PTO was reasonable, the evidence will compel the conclusion UNLESS applicant produces evidence to rebut the inference, citing Spada, 911 F.2d at 708, n.3.

Biovail sues Anchen and Abrika over Wellbutrin XL

On Dec. 22, 2004, Biovail Corp. stated it has filed suit against Anchen Pharmaceuticals in California and Abrika Pharmaceuticals in Florida after they sought approval through an ANDA under the Hatch-Waxman Act to market a generic version of Biovail's Wellbutrin XL anti-depression drug.

Biovail said it filed the suits on behalf of itself and SmithKline Beecham Corp.

Microsoft in Europe

Relevant to the discussion on Judge Posner's blog about the value of trade secrets, the fate of Microsoft in Europe gives another reason why Microsoft (and others) might be preferring patents to trade secrets.

The European Court of First Instance rejected Microsoft's appeal for suspension of punitive measures and the fine levied by Brussels in March, 2004 of 497 million euros remains.

-->Microsoft also must offer consumers in Europe a stripped down version of Windows without the built-in Media Player music and video software. It also was forced immediately to reveal secret software code to let competitors tailor their programs more easily to the operating system.<-- (from EUBusiness)

Provigil. Attenace. Nuvigil.

When a refreshing midday snooze isn't a possibility, some people are taking a medication described as "a nap in a pill" called Provigil (modafinil). Provigil is approved for sleep apnea, narcolepsy and shift work sleep disorder, but not for avoiding sleep. Cephalon's patents on Provigil last until 2014.

On December 22, 2004 Cephalon Inc. has asked the FDA to approve a version of its narcolepsy drug Provigil to be used to treat children with attention deficit hyperactivity disorder. The drug would be marketed as Attenace. If the Food and Drug Administration approves Attenace, Cephalon will receive a patent on the drug that lasts until 2020. Because Attenace is a different dose of modafinil than Provigil, the FDA treats it as a different drug.

In the context of continuing medical education (CME), lecturing doctors can answer questions about off-label uses, although they cannot initiate discussion of off-label uses. Thus, in the past, if someone asked about using modafinil for ADHD, the lecturing doctor could respond.

As noted elsewhere on IPBiz, Provigil is a racemate, and Nuvigil is a single enantiomer of the Provigil racemate.

Tuesday, December 21, 2004

Geron obtains another stem cell patent (US 6,833,269)

On Dec. 21, 2004, Geron Corp. reported that it received a U.S. stem cell patent for a technology that the company hopes could be used to develop a possible treatment for Parkinson's disease. Stock shares increased 7.6%. U.S. Patent No. 6,833,269 covers the production of human neural cells from human embryonic stem cells. Geron said the patent covers technology that can be used to produce dopaminergic neurons, or the dopamine-producing cells that are lost in Parkinson's disease.

Some of Geron's work has been with the University of Wisconsin (through WARF).

Microsoft cross-licenses with Citrex

In an agreement announced Dec. 21, 2004, Microsoft has extended a technology-sharing arrangement with Citrix Systems to include a five-year patent cross-licensing plan between the two companies. The deal also calls for Citrix to get access to the source code of Longhorn, the forthcoming version of Microsoft's Windows Server operating system, which is due out in 2007. This follows a cross-licensing deal between Microsoft and Autodesk [see earlier post on IPBiz].

The cross-licensing deal also confirms Microsoft's strategy of obtaining patents, and dealing through licensing, as distinct from using trade secrets. This has relevance to the discussion on Judge Posner's blog about the value of trade secrets. Microsoft values the patent approach to that of trade secrets.

No peer review required of toaster expert

In a design defect case involving a fire arising from a Pop-Tart in a Hamilton Beach toaster, Michael Wald, an EE with no toaster manufacturing experience and no special insight into the qualities of Pop-Tarts, has been qualified as an expert witness.

The judge wrote: "Wald's education and experience in electrical engineering and his experience determining the cause of electrical fires and mechanical malfunctions is sufficient foundation for him to testify as to the design of the toaster which may have resulted in a fire." The judge functioned in the "gatekeeping" role of the judiciary as required under Daubert v. Merrell Dow Pharmaceuticals, 509 US 579 (1993).

In his report, Wald stated that toasters generally have a strip made of two metals that bends when heated. At a certain temperature, the strip touches a rod, which closes the switch contacts and turns off the toaster. Wald said that as far as he can tell, every manufacturer except Hamilton Beach has something between the rod and the toasting chamber to prevent food debris from mucking up the works.

Hamilton Beach had argued that Wald is not an expert as defined under Rule 702 of the Federal Rules of Evidence.

The court disagreed, saying, "In this case, the testing that was performed by Wald was so specific to this situation that it is not reasonable to require that it have been subject to peer review, have a known or potential rate of error, or have general acceptance within the scientific community."

One recalls that in the Dash case on a patent application in the cold fusion area, the court did not require that the evidence relied on by the examiner be subject to peer review.

Agilent sues Elan Microelectronics over US 5,786,804 and 6,433,780

from a press release on Dec. 21, 2004:

Agilent Technologies Inc. has filed a lawsuit against Elan Microelectronics Corp. for patent infringement in the U.S. District Court for the Northern District of California. The lawsuit asserts that Elan infringes Agilent's U.S. Patent No. 5,786,804 and U.S. Patent No. 6,433,780 relating to optical mouse sensor technology. Agilent is seeking an injunction and money damages.

Agilent had previously filed a lawsuit against PixArt Imaging Inc. alleging that PixArt infringed Agilent's U.S. Patent No. 6,433,780, which relates to optical mouse sensor technology. In October 2004, the U.S. District Court for the Northern District of California granted a motion by Agilent to add two patents (U.S. Patents No. 5,686,720 and 5,786,804) to the pending patent infringement lawsuit against PixArt.

Monday, December 20, 2004

Settlement between Flo Healthcare Solutions and Jaco/Info Logix

There has been a settlement between Flo Healthcare Solutions and Jaco / Info Logix concerning litigation over U.S. Patents 6,493,220 and 6,721,178 in the medical workstation area.

Dean Velvel update on Harvard plagiarism

from Dean Velvel's blog, on Dec. 15, 2004, about plagiarism at Harvard:

-->So our flagship university, like the rest of American society, which it purports to lead by example, appears to be condoning dishonesty instead of punishing it in clear, public and no uncertain terms. Bravo President Summers. Bravo Dean Kagan. Your failure to act accords with the dishonesty that is rampant in society today. And the actions of a flagship should accord with those of the society it leads, shouldn’t they?

While Harvard apparently does little or nothing about the disclosed dishonesty of Ogletree and Tribe, other stories have come out about other dubious goings on in Cambridge. Someone anonymously emailed this blogger a new Harvard Crimson article about more plagiarism on the Charles. A Harvard scientist apparently plagiarized -- more or less like mad, one gathers -- in preparing a grant application. (Who can blame him? -- money was at stake, after all.) That scientist, however, is no longer at Harvard. Of course, his case was different from those of Tribe and Ogletree: he was in science, they are in law. In science, truth is the desideratum. In law one is trained to prevaricate, obfuscate and becloud, although, to paraphrase Tom Lehrer on plagiarism, please always to call it zealous advocacy.<--

Curiously, the episode of "Law & Order" on Saturday, Dec. 18, 2004, had a plotline on improper credit. The dead person was a medical researcher, who was killed via a patch of fentanyl/DMSO applied shortly before jumping into a swimming pool. An initial suspect was her research assistant, with the alledged motive being the removal of the assistant's name from a grant application. The research assistant, as was the case in the earlier episode with the law clerk whose work was plagiarized by the murdered judge, was not guilty of murder. However, in the Dec. 18 episode, the research assistant played a key role in the rest of the plot. He aided the police in conducting a (fabricated) experiment involving (eye movement) responses from a woman in a semi-vegetative state.

The Law & Order episode offers an interesting analysis of incentives. The assistant was punished (in having his name removed from the grant application) for telling the truth about the experiments. The assistant was rewarded (in helping the police) by misrepresenting the experiments. Dean Velvel's analysis of the incentives in the Tribe matter is correct. The unpleasant aspects of the event will be allowed to fade away. For better or worse, the matter will be largely forgotten. The same is true of the various false footnotes of intellectual property articles in recent law reviews.

Academic plagiarism has been getting some play elsewhere. An article by THOMAS BARTLETT and SCOTT SMALLWOOD entitled --Four Academic Plagiarists You've Never Heard Of: How Many More Are Out There?-- in the Chronicle of Higher Education obliquely refers to the Tribe matter: -->But over the last quarter-century, Mr. Carney has taken phrases, sentences, and even entire paragraphs from numerous authors without crediting them. A close examination of several of his papers and book chapters reveals that the professor has plagiarized both frequently and brazenly. Compared with what Mr. Carney has done, the highly publicized missteps of scholars like Harvard's Laurence H. Tribe and Charles J. Ogletree Jr. seem almost trivial.<--

The authors also noted: -->In one of the rare surveys conducted about plagiarism, two University of Alabama economists this year asked 1,200 of their colleagues if they believed their work had ever been stolen. A startling 40 percent answered yes. While not a random sample, the responses still represent hundreds of cases of alleged plagiarism.

Very few of them will ever be dragged into the sunlight. That's because academe often discourages victims from seeking justice, and when they do, tends to ignore their complaints -- a kind of scholarly "don't ask, don't tell" policy. "It's like cockroaches," says Peter Charles Hoffer, a University of Georgia historian and author of a recent book about academic fraud. "For every one you see on the kitchen floor, there are a hundred behind the stove."<--

THOMAS BARTLETT and SCOTT SMALLWOOD also discuss mentor vs. protege issues. -->The aura of mutual admiration began to fade in July 2003. That's when Mr. Kirk discovered that Mr. Arntzen had copied large portions of his paper without his permission. About one-third of Mr. Arntzen's article -- which was published as a chapter in the 2004 book Vaccines: Preventing Disease and Protecting Health -- was taken directly from Mr. Kirk's paper, which was published two years before in the book Genetically Modified Foods. The graduate student's paper was not cited, but Mr. Arntzen did mention Mr. Kirk among the dozen people he thanked in the acknowledgements.

Mr. Arntzen does not deny copying Mr. Kirk's paper. He says that he "did some cutting and pasting," and that the practice is common in scientific circles. (In fact, most of the passages not taken from Mr. Kirk's paper come from an article that Mr. Arntzen wrote with another Arizona State researcher.)

The professor wrote his chapter over one weekend, he says, adding that borrowing passages is a way to "conserve energy." He felt justified in doing so, he says, because Mr. Kirk is a member of his research team and members often share materials with each other. Mr. Arntzen also argues that because his paper was not a peer-reviewed article, the standards for plagiarism are different.<--

One wonders how the absence of peer review influences whether or not something is deemed plagiarized. Most law review articles are not peer reviewed, so does that mean plagiarism does not occur when the author "borrows" text from another? Separately, although Lemley wrote of "rational ignorance" in the Northwestern University Law Review, don't we also have "rational ignorance" on the part of his readers who accept, without analysis, false footnotes, like the comments about Clarke in the Lemley/Moore paper in the 2004 Boston University Law Review? Are law reviews, as they have existed in the past 50 years, on the verge of extinction? Contemplate the following.

****from ***

An article by Richard R. Orsinger (1996) for three year prediction:

On-line electronic law journals will begin to proliferate. [The Appellate Practice & Advocacy Section has an electronic Section Report at] E-journals will specialize in narrow areas. "The next decade could witness the end of the law review as we know it." Hibbitts, Bernard J., Last Writes? Re-Assessing the Law Review in the Age of Cyberspace,

from Hibbitts (1997):

The next decade could witness the end of the law review as we know it. At first glance, this contention might seem implausible - after all, the law review is the supreme institution of the contemporary American legal academy. Virtually all accredited law schools have one; quite a few have several. Law schools depend upon law reviews for publicity and prestige. Law professors depend upon law reviews for publication and promotion. Law students depend upon law reviews for education and employment.

[i.2] The law review, however, is hardly an inevitable institution. It emerged in the late nineteenth and early twentieth centuries as the product of the fortuitous interaction of academic circumstances and improvements in publishing technology. Today, new academic circumstances (not least among which is an increased professorial dissatisfaction with law reviews themselves) and new computer-mediated communications technologies (e.g. on-line services and the Internet) are coming together in a way that may soon lead to the demise of the familiar law review in favor of a more promising system of scholarly communication.

Yale's Fred Rodell made it plain that he had had enough. In his Virginia Law Review article "Goodbye to Law Reviews"59 (which in later years would ultimately, and perhaps ironically, become the most-cited law review article on law reviews) he declared that there were two problems with legal writing in general, and law review writing in particular: "One is its style. The other is its content"
Speaking from the bench of the United States Supreme Court in 1911, former commercial law journal editor Oliver Wendell Holmes Jr. dismissed law reviews in general as "the work of boys".

Under increasing pressure to write, many professors moreover lacked the time or the inclination to read others' submissions or give quality advice.151 In this context, the editorial process was left "in the hands of young people with little experience in evaluating legal skills, few standards by which to do so, natural naivete, and scant regard for the institutional future."

It is no accident that James Lindgren, whose interests run from law and sociology to legal history, has lately written that "in other parts of the academy, legal journals are considered a joke. Scholars elsewhere frequently can't believe that, for almost all our major academic journals, we let students without advanced degrees select manuscripts."
Sixth, law reviews have come in for more criticism as more law review writers have ceased writing about professional, doctrinal and local issues. In part, this development is a result of the just-discussed interdisciplinary turn. It is also, however, a product of the recent fall-off in the number of practitioners and judges - as opposed to law professors - writing for (or allowed to publish in) law reviews
One reform has entailed the formal or informal adoption of editorial policies more explicitly deferential to faculty authors: in 1994, for instance, the articles editors of the University of Chicago Law Review publicly promised to show "substantial deference", by which they meant that they would respect the author's "voice" and would give the author final say on whether suggested changes would be made.

The case for the self-publishing of legal scholarship on the Web is clear and strong. Law professors working at terminals with an Internet connection to the Web need not worry any more about whether the subject of a piece is too esoteric, too doctrinal, too complicated or even too impolitic for law review editors; we are free to write and publish on the topics of our choice. This freedom might give us a useful antidote to the substantive (conservative or "trendy") sameness of the reviews as they now exist. On the Web, we need not endure months of frustrating or embarrassing delay while our papers are judged, peer-reviewed, edited or printed in formal journals; we can disseminate our work instantly, as soon as we are satisfied with it. Our work can appear when we want it to, as opposed to when someone else's printing and publication schedule allows it to appear. On the Web, we are under no compulsion to tolerate the indignities and inaccuracies of line-editing: we can present our own work in our own terms, in our own "voice", in our own words, in our own ways. On the Web, we need not cater to the technologically- conservative expectations of peer-reviewers or even of editors themselves; on the Web, we can "push the envelope", constructing our presentations in what we regard as the most technologically-effective manner. On the Web, we need not turn our backs on our own work once it is printed, without the benefit of revision, correction or change; we can conveniently and immediately improve our own articles days, months or even years after initial publication, without going through an editorial middleman. On the Web, we can even save money: if the practice of Web self-publishing becomes sufficiently generalized, our institutions will no longer have to spend hundreds of thousands of dollars paying for both the publication of our own (print or electronic) law reviews and our subscriptions to the law reviews of others.

Sanofi-Aventis to get re-issue on Lovenox patent

from Reuters:

Sanofi-Aventis has clearance from the U.S. patent office to obtain reissue on a patent for Lovenox, an anti-thrombosis drug threatened by competition from generic versions, the world's third-largest drugmaker said on December 20, 2004.

Based on the United States Patent Office's decision, the "618" [5,389,618] patent of the blockbuster drug could be reissued towards the middle of 2005 in the United States, Sanofi-Aventis said.

The first claim of US '618 recites:

A heterogeneous intimate admixture of sulfated heparinic polysaccharides, such sulfated polysaccharides having a weight average molecular weight less than that of heparin and said admixture consisting essentially of from 9% to 20% of polysaccharide chains having a molecular weight less than 2,000 daltons from 5% to 20% of polysaccharide chains having a molecular weight greater than 8,000 daltons, and from 60-86% of polysaccharide chains having a molecular weight of between 2,000 and 8,000 daltons, the ratio between the weight average molecular weight and the number average molecular weight thereof ranging from 1.3 to 1.6 said admixture (i) exhibiting a bioavailability and antithrombotic activity greater than heparin and (ii) having an average molecular weight of between approximately 3,500 and 5,500 daltons.

The summary of invention of US '618 includes:

Accordingly, a major object of the present invention is the provision of novel combinatory immixtures of particular heparinic polysaccharide fractions, such novel immixtures being especially useful for the prophylaxis and treatment of acute thrombotic events/episodes.

Indeed, it has now surprisingly and unexpectedly been found that mixtures of both high and low molecular weight heparinic polysaccharides, nonetheless having an average molecular weight less than that of heparin, exhibit desirable balance of antithrombotic/anticoagulant activity. Contrary to the direction of the prior art, a certain fraction of relatively high molecular weight heparinic polysaccharides and a certain degree of heterogeneity are required to provide such balance of biological activity.

Cases citing Lemley/Moore BULR

Speaking of laches, District Court Judge JOHN R. TUNHEIM in Anchor Wall v. Rockwood Retaining Wall, 2004 U.S. Dist. LEXIS 18458 wrote of the Lemley/Moore article in the Boston University Law Review:

-->This doctrine has been used to combat what some commentators describe as a frequently "used and abused" practice of "continuation" applications.

See generally Mark A. Lemley and Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 64 (2004). [HN18] "Continuation" is the term used to describe an applicant's ability to get perpetual "bites at the apple" by resubmitting applications. Id. Continuations allow "applicants dissatisfied with the course of patent prosecution" to "abandon an application and file a continuation." Id. "Alternatively, a patentee can prosecute one or more patents to issue and also keep a continuation application on file, hoping to win a better patent from the PTO in the future." Id. Patentees control whether or not a patent issues, even if the PTO has approved the patent. Id. ("Even when the examiner concludes that an invention is patentable and issues a 'notice of allowance,' the patent applicant always retains the right to abandon the application that was deemed patentable and start the process over again."). "Applicants similarly manipulate the system by taking the patent awarded by the PTO, but also seeking additional or broader claims arising out of the same patent application." Id. (also discussing problems with continuation). n12

n12 These commentators believe that these practices constitute "abuse" of the continuation process. Other commentators no doubt believe that these practices are good for competition. There is no disagreement that the practices are allowed by the PTO.<--

The term "continuation" is not used to describe a patent applicant's ability to get perpetual "bites at the apple" by resubmitting applications. Under current law, the patent term is limited to 20 years from the date of filing of the earliest priority application. There is nothing "perpetual" about this. Further, if the applicant submitted the same claims in a later continuation application with no different argument, the applicant would get an immediate "final" rejection of the claims in the continuation application. Of "withdrawals from issue," one notes that they are not frequent and most typically occur because of newly uncovered prior art. Further, if an applicant merely wanted broader claims, the applicant would take allowance of the application with narrower claims (and file an application with broader claims), rather than abandon the application with narrower claims.

A different issue is with RCE's, which are different from the continuation applications discussed by Lemley and Moore. From an IP board:

-->My favorite was when I would get Examiners call me about my AF [after final] response and they would tell me some BS excuse that they can't allow the claims, but they would suggest an amendment. Then, if I agreed to the amendment, they would indicate that they were un-willing to enter the amendments after final, but if I filed an RCE, they could then examine the claims. And 9 times out of 10, the cases were allowed on a first action post RCE.<--

Later, the court mentions the BULR article again: See, e.g., Lemley and Moore, supra, at 65 (noting that "In the last ten years, [the courts] created an entirely new defense of prosecution laches." The authors later note, however, that prosecution laches is really a "revived" defense).

A different court addressed the prosecution laches issue in the case Biogen v. Trustees of Columbia University, 332 F. Supp. 2d 286 (D Mass 2004):

-->In the instant case, the '275 patent was issued twenty-two years after the application from which it derives was filed. There were several delays in the prosecution of the application. Columbia [University] has provided no evidence, or even argument, to explain why it took twenty-two years to obtain the '275 patent or to justify the delays in that process. n6 The timing of its issuance strongly suggests that Columbia deliberately delayed obtaining a patent that it always intended to secure in order to make it effective just as the other Axel patents expired and thus increase its commercial value by maximizing the period in which the public would have to pay Columbia royalties for the use of the Axel patents.<--

n6 "Analyzing the 2,224,379 patents that issued from 1976 through 2000, two commentators found that prosecution of these patents 'took an average of 2.47 years from the earliest claimed filing date to issuance date.'" Pls.' Mem. in Supp. of Mot. for Prelim. Injunction at 29 n.8 (quoting Mark A Lemley & Kimberly A Moore, "Ending Abuse of Patent Continuations," 84 B.U. L. Rev. 63, 71 (2004)).

The article "Ending Abuse of Patent Continuations" was not well-received by practitioners. Before the above-noted district courts had cited "Ending Abuse of Patent Continuations," there were comments as the following:

From a board:

+++>These people blew their credibilty with any competent patent attorney in the first few sentences:

>> One of the oddest things to an outsider about the United States patent system is that due to continuation practice it is impossible for the U.S. Patent and Trademark Office (PTO) ever to finally reject a patent application.


>> Continuation applications have led to abuse of the patent prosecution process.


>> They serve very little useful purpose

Wrong. Way wrong.

>> and what benefits they confer may be outweighed by their potential for mischief.


Nobody denies that Lemelson-type submarining is a problem. However, the courts have tools at their disposal to limit this problem out of existence, namely laches and inequitable conduct. Why do the authors blame the PTO, and the patent system in general, for the court system's failure to apply equitable doctrines in an adequate manner??<+++

+++>Perhaps I am missing something by only reading the abstract but, aside from the misleading premise that it is " ever finally reject an application", what is inherently bad about continuations that this author predicts that "The world would probably be a better place if they were abolished"?

In spite of an antagonistic attitude towards them from the beginning, I don't see a single reason recited that links continuations with any remotely negative societal, commercial, or personal ramification. <+++

Moreover, the article had been criticized in the legal literature.

The argument by Quillen/Webster and Lemley/Moore has been that continuing application practice (including continuations, continuations-in-part, divisionals) both diminishes patent quality (as manifested by an elevated grant rate) and consumes resources at the PTO for aggressive re-argumentation. Lemley/Moore asserted that there is no such thing as a final rejection at the PTO.

The idea that there is an elevated grant rate has been challenged, first by Robert Clarke. The article by Lemley and Moore in the Boston University Law Review misrepresented the work of Robert Clarke on patent grant rate. Contrary to what Lemley and Moore said, Clarke did not assume that every continuation application resulted in a patent. With this assertion of Lemley and Moore invalidated, there is nothing within the Lemley and Moore article to distinguish between the models of Clarke and those of Quillen/Webster and no justification for saying that the patent grant numbers of Quillen/Webster are the best we have. In fact, they are not.

An article on had the following "tip":

If you're interested in applying for a patent, contact your attorney to act promptly. You need to secure your rights and file continuation and divisional applications. Otherwise, you run the risk a court ruling involving the laches doctrine when you try to enforce the validity of the patent.

[As an aside, the problem with Lemelson was BECAUSE he filed lots of continuation and divisional applications. The perceived problem with Lemelson was that he waited long periods of time, and created so-called submarine patents. Under current law, this can no longer happen for applications filed after 1995. A separate perceived problem with Lemelson was that the later patent applications didn't really "cover" the later technology. Ironically, in the foreseeability test of Festo (535 US 722 (2002)), one allows equivalent patent protection to items that were NOT FORESEEABLE to one of ordinary skill at the time the amendment was made. That is, for patent applications that didn't teach the later technology.]

initial tip from

Tough IP fight between Arriva and AlphaMed

The technology concerns using alpha 1-antitrypsin, or AAT, for treating hereditary emphysema and studying AAT for the treatment of inflammatory ear disease and asthma. The fight has been severe.

from the East Bay Times:

Judge Paul Katz was unhappy with both sides.

"This court has deep concerns with respect to the conduct of the plaintiff, Dr. Allan Wachter, and with the respect to the conduct of the defendants, John Lezdey and Jarett Lezdey, throughout this litigation," Katz said, according to court transcripts. "This court has little doubt that the Wachters may have been threatened and that certain Lezdey properties may have been burglarized, but this court believes that both plaintiffs and defendants have such animosity toward one another, that they have deeply exaggerated their fears and the nature of their confrontations."


Saturday, December 18, 2004

James Gosling on the Kodak-Sun settlement

from ZD Net, quoting James Gosling, on the Kodak-Sun settlement conerning the Wang patents:

"You know this is one of these things where I shouldn't say too much other than that the whole case was a complete atrocity. One of these days we need to write up a pretty thorough account of what happened during the case, but it really opened up my eyes to patents and the American legal system... it was quite bizarre."

Anybody interested in writing up this saga?

Video game history: with and without patents

Jason McIsaac has a discussion of the first video game, stated to have been created in 1958 by William A. Higinbotham at Brookhaven National Labs.

-->The black-and-white game consisted of just two lines and a dot. The lines were shaped like an upside-down “T,” forming the net as though viewed from the side. The dot was the ball. The first video game was also the first multiplayer video game — two players bounced the ball back and forth over the net. No paddles or players were visible onscreen. And you had to keep score in your head, unlike the somewhat similar Pong, which wouldn’t be released for another 14 years.

To play, gamers were given a box with a knob and a button. The knob controlled the angle at which you returned your shot, and you pressed the button to hit the ball. The ball could even hit the net and bounce back. Later, Willie Higinbotham modified the game so that it had a larger display. He also added different levels of gravity. You could play a game “on the Moon,” where the ball would bounce higher because of the weaker gravity, or “on Jupiter,” where the ball appeared to be much heavier. Pretty sophisticated for 1958.<--

Willie Higinbotham did not file patents on the game, because he was a government employee and would achieve no direct benefit. [remember this theme in the history of radio patents, wherein one of the pioneers was an employee of the U.S. weather service and lost out big time?] Higinbotham did have US patents in other areas.

The first patent application for a video game was filed by Ralph Baer on January 15, 1968. PART of the first ever commercially available home videogame system did superficially resemble Higinbotham's game [but was developed by Baer] and was released to Magnavox dealers as the 'Odyssey' in May 1972. Of relevance to the Nichia blue LED saga, Baer offered the deal to RCA, and they turned it down.

Higinbotham did become involved in patent activity. When video games became big business in the late ‘70s and early ‘80s, several lawyers interviewed and took depositions from Willie Higinbotham, as the issue of who owned video game technology and who truly created Pong erupted between Atari and Magnavox. In July 1976, Magnavox offers Atari a settlement of a pending suit claiming that PONG violates several Magnavox Odyssey patents. For $700,000, Atari became a "prepaid licensee". Magnavox's generosity in consideration of Atari's fledgling size will work out as a coup for Atari. Soon, Atari grows substantially and retains rights to the patents as a prepaid licensee.

Some patents of Ralph H. Baer include 3,659,285 [Televison Gaming Apparatus], 3,728,480 [Television Gaming and Training Apparatus] , 3,737,566, 3,921,161, 3,993,761, RE28,598 and 4,034,990 [Interactive television gaming system, cited by 32 patents between 1977 and 2004]. Ralph Baer was at the independent inventors conference on August 21, 2004.

from an interview with Ralph Baer on gamerdad:

During the lawsuits, the opposition (Bally-Midway, Seeburg, etc) tried to make the judge believe that our circuits were analog and theirs were digital and hence they didn't fall under the Claims of our patents. The judges ruled otherwise and saw through this ploy in a hurry.

So forget analog computers as a means of playing home "video" games, except in the context of a demo in a lab environment where one or more analog computers were sitting around and one could temporarily borrow one for a "fun" ballistics demo (like Higginbotham's so-called tennis game).

After ten years of litigation in courts from Chicago to San Francisco we collected many tens of millions of dollars. I spent a great deal of time working with our lawyers and testifying in court. The outcomes of all of our lawsuits were completely successful (for our side) and the infringers uniformly had to cough up large sums of money. At the same time, we (Magnavox under the Sanders patents) had well over a hundred patent licensees all over the world in the mid-seventies and collected large amounts of license income from those licenses, also.

We won our lawsuits because our patents covered both what is termed "means plus function"...i.e. we showed in the patents and claimed the concepts of the interaction of machine controlled screen symbols (such as a ball) and player controlled symbols such as the player paddles ( the functions). We also showed how this interaction could be accomplished (the means). Any game made by a manufacturer that exhibited the type of interaction defined by our patents was found to be infringing...and the judges in Federal District Courts and in the Court of Appeals all saw it that way.

I/We did not see it but heard about the demo of the first Pong unit built by Alan Alcort about September of 1972. The minute we got wind of its existence, it was clear that there had to be some reason why a ping-pong arcade game (of all things) popped up from nowhere. It did not take long to find out that Nolan Bushnell and other Nutting Associates employees had signed the guest book at a Magnavox new-product demonstration at the Airport Marina in LA (on May the 26th, 1972 I believe) and that they (including Nolan Bushnell) had played the Odyssey ping-pong gamed hands-on there. Later denials by Bushnell and others in court or in depositions (or to the press) that playing the Odyssey ping-pong game had nothing to do with creating the Pong game were found less than credible by the courts and, in any event, defy logic and common sense. Bushnell's 1972 Computer Space game (being produced by Nutting Associates) was a commercial failure because it was too hard to play. When the visitors saw and played the Odyssey game, at least one light went on in Nolan Bushnell's head: Hey this is neat and easy to play! And secondly, somewhere along the line Bushnell recognized that there was such a thing as a consumer home game market (as introduced by the Odyssey game) and that 40 million homes are a slightly larger base for a new business than a few thousand arcades. And so Atari entered the home video game business in 1975 and made big success of it. But Odyssey had shown the way! With 360,00 games out there by early 1975, it was also a resounding success.