Sunday, July 31, 2005

Change in patent reexaminations at USPTO

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) has implemented new processes for handling reexamination proceedings to improve timeliness and quality. Prior to the new initiative, reexamination cases were assigned to examiners according to technology. Under the new initiative, 20 highly skilled primary examiners who have a full understanding of reexamination practice and relevant case law will concentrate solely on reexamination. The 20-examiner unit began operation earlier this week and all new requests for reexamination will be assigned to them. Using skilled examiners assigned to a single unit will enhance the quality and reduce the time of reexaminations by allowing the USPTO to monitor more effectively the reexamination operations.

<-- from PTO press release, July 29, 2005


Probably not unrelated to patent reform 2005. If re-examinations are timely and well done, the need for oppositions is diminished. How much added value is there to having depositions (and rebuttal depositions) above and beyond a good look at the prior art? Oppositions are probably not cost effective at the margin.

As a microcosm, look how befuddled the FTC and the NAS were over conflicting testimony over patent grant rate (ie, Quillen vs Clarke). If testimony could not help them to resolve an issue (what is the patent grant rate?), why should they recommend an opposition procedure to "help" the PTO? The experience of the FTC and the NAS over patent grant rate undermines their recommendations as to the utility of patent oppositions. [The failure to distinguish between Quillen and Clarke reminds one of the CBS News coverage of Joe Newman's perpetual motion machine. There was no one on the CBS Evening News to challenge Newman's claim. On the contrary, the report included endorsements from two "experts" who had examined Newman's Energy Machine. Roger Hastings, a boyish-looking Ph.D. physicist with the Sperry Corporation, declared, "It's possible his theory could be correct and that this could revolutionize society." Milton Everett, identified as an engineer with the Mississippi Department of Transportation, told viewers, "Joe's an original thinker. He's gone beyond what you can read in textbooks." Watching the CBS broadcast that evening, most viewers must have been left wondering how the Patent Office could be so certain Joe Newman was wrong.
(see, for example, Newman did not get a patent, although he did win a proceeding against the PTO. Note that CBS News covered Newman not once, but twice, in 1984 and in 1987. Returning to the "patent grant rate" story, neither the FTC nor the NAS came to a conclusion, and other academics continue to tout Quillen's 85% number.]

See also "Patent Reform 2005: Sound and Fury Signifying What?", New Jersey Law Journal, IP Supplement, July 18, 2005.

The Schacht/Thomas report of July 15 suugested that oppositions have been implemented in the US to a limited extent. If you believe re-exams are a limited form of opposition, this is true. Otherwise, it is not true. Re-exams can be requested anytime during the life of a patent. The proposed opposition cannot be requested anytime. About 40% of re-exams are initiated by the patentee; this has no parallel with the proposed opposition.
[One notes that the assertion of more limited form on page CRS-38 does not have a footnote to identify which commentators believe reexams to be a limited form of opposition. Since the assertion isn't true, this absence is not surprising.]

Separately, from the paper by Graham, Hall, Harhoff, and Mowery:

US re-examination procedure differs dramatically from the EPO opposition procedure in virtually all of its features.
Comparison of US re-examinations and EPO oppositions must be treated with great caution.

[Separately, note that European oppositions do not resolve validity issues any more rapidly than do re-examinations.]

The assertion on CRS-39 of the Schacht/Thomas report that many observers have called for oppositions cites the NAS study (A patent system for the 21st century) but neglects to cite those who have opposed oppositions, such as Joseph Hosteny and Cecil Quillen. How is this Congressional Research Service report for the Library of Congress balanced? It ignores valid, published criticisms of oppositions and presents only the point of view of the advocates of oppositions.

Part of the solution in patent reform has got to be to give the PTO enough resources to conduct thorough examinations of patent applications. Right now, an examiner has 10-20 hours of time to investigate something that allegedly is novel (never done before) and nonobvious (never occurred to the skilled artisan to do it, with a reasonable chance of success).

For comparison consider the foam issue at NASA: A NASA engineer who works on tank safety issues said other areas of foam shedding from the Discovery's tank were even more troubling than the PAL ramp loss, especially a divot that popped from the vicinity of the left-hand bipod strut, the spot that shed the foam that brought down the Columbia.

"We worked the hell out of that," said the engineer, who was given anonymity because he said disclosure of his name would jeopardize his career. The loss of foam from that spot after so much work to correct the problem, he went on, proves that the problem is still far more complex than NASA understands. [from John Schwartz of NY Times, July 31]

Google's Embedding advertisements in syndicated content

Google's US appl 20050165615 is entitled Embedding advertisements in syndicated content and has first claim

A method of generating information including targeted ads, the method comprising:
receiving information in a syndicated format;
receiving a first targeted ad from an automated ad server system; combining the first targeted ad with the received information to generate a set of response information which is also in a syndicated format.

Claim 38 states:

A method of generating information and at least one targeted ad in a syndicated content format for presentation to a user, the syndicated content format, the method comprising: receiving an feed responsive to a user request, said feed including a list of items, said list including for each item in the list a title and a URL; receiving at least one targeted ad selected using an automated selection technique to be presented to said user with said RSS feed; and combining the responsive feed and the at least one targeted ad to generate a set of response information in said syndicated content format.

Paragraph 6 mentions:

Search engines, such as Google for example, have enabled advertisers to target their ads so that they will be rendered with search results pages presented in HTML format. The targeted advertisements are selected in an automated manner so that they will be relevant, presumably, to the query that prompted the search results page. Other targeted advertising systems or those that target ads based on content (see, e.g., U.S. patent application Ser. No. 10/375,900 (incorporated herein by reference), titled "SERVING ADVERTISEMENTS BASED ON CONTENT," filed on Feb. 26, 2003 and listing Darrell Anderson, Paul Bucheit, Alex Carobus, Claire Cui, Jeffrey A. Dean, Georges R. Harik, Deepak Jindal, and Narayanan Shivakumar as inventors) may be designed to confront similar challenges, i.e., the selection of advertisements that are relevant to the user requested information in general, and related to the current user interest in particular.

Microsoft's "annotating" patent applications

US appl 20050160457 is entitled Annotating programs for automatic summary generations and has first claim

One or more computer readable media having stored thereon a plurality of instructions that, when executed by one or more processors, causes the one or more processors to perform acts including: receiving the audio portion of a sporting event; classifying a set of segments of the audio portion as excited speech; classifying a set of frame groupings as including baseball hits; combining the set of segments and the set of frame groupings to identify probabilities for each segment that the segment is an exciting segment; and saving an indication of the set of segments and the corresponding probabilities as meta data corresponding to the sporting event.

Note how "sporting event" shrinks into "baseball hits".

Claim 62:

62. A system comprising: a feature extractor to extract a plurality of audio features from programming content; an excited speech classification subsystem to identify, based on a sub-set of the audio features, a set of segments of the programming content and corresponding probabilities that the segments include excited speech; a baseball hit detection subsystem to identify, based on another sub-set of the audio features, a set of frame groupings of the programming content and corresponding probabilities that the frame groupings include baseball hits; and a probabilistic fusion subsystem to combine the probabilities that the segments include excited speech and the probabilities that the frame groupings include baseball hits, and to generate a probability that portions of the programming content are exciting based on the combination.

US appl 20050159956 is entitled Annotating programs for automatic summary generation and has first claim (claim 66):

A method for automatically summarizing a program, the method comprising: identifying a plurality of content-generic events from the audio of the program; identifying a plurality of content-specific events from the audio of the program; identifying portions of the program as a summary of the program based on the identified content-generic events and the identified content-specific events.

As to priority, this application claims the benefit of U.S. Provisional Application No. 60/153,730, filed Sep. 13, 1999, entitled "MPEG-7 Enhanced Multimedia Access" to Yong Rui, Jonathan Grudin, Anoop Gupta, and Liwei He, which is hereby incorporated by reference.

Hmm, the '956 application was filed March 4, 2005 (more than one year after 1999) and there are no other claims to priority.

Saturday, July 30, 2005

Interesting take on Merck v. Integra

from :

Patents do help innovation by providing incentives for investors to fund research and development (this necessary funding could be provided in other ways; for example, see "Medical Innovation Prize Fund: New Idea in Drug Development," in this issue). But patents also block innovation. A patent means that only one company in the world can develop an idea (absent corporate dealmaking, a very inefficient process that can delay medicines for years as lawyers and executives battle with other or just don't have time). Usually research ideas are simply dropped once patent issues come into view. Yet the company with the patent is unlikely to be the one with all the other patents needed, with the interest in pursuing the project, and with the best technical, financial, and human resources (including the nebulous but all-important personal chemistry and enthusiasm) to create a new treatment successfully. Therefore the best research and development that could be done is unlikely to happen at all. Patent gridlock could be the major, overlooked reason for the unexpected big drop in the ability of pharmaceutical companies to produce truly innovative new medicines, despite huge advances in basic biological knowledge and in research tools.

Several years ago an official at a major pharmaceutical corporation said that it could not research about 100 potential cancer treatments its scientists wanted to test, because it could not obtain the rights at all, or could not negotiate an affordable price. If one of the world's biggest companies could not handle this problem in its own central field of work, think of the obstacles others must face.

Price negotiation always includes the risk of no agreement, as parties dream big and then walk away if they don't get what they want. But medical patents can burn the future as well as the present, escalating a failed negotiation into a legal blockade to critical research and innovation everywhere in the world -- with life-and-death consequences for many who were never at the table.

Patent Gridlock -- A Perverse Economics of Scale?
Economists should examine the possibility that a patent system with universal reach may become much less useful and more harmful when its universe gets too large -- that gridlock develops because there are far more research projects that can be blocked by patents or forced into less productive channels, and far more patents and claims in existence to block them. The U.S. patent system may have worked fairly well until about mid 20th century; then large companies increasingly used patents for blocking, getting hundreds of patents and thousands of claims to keep rivals out of an area entirely even if they do not infringe, just by the risk and cost of litigation. The "golden age" of drug development about 50 years ago may have been a legacy of the previous environment before gridlock set in -- a small taste of what could have been possible with modern science, if it had not been choked off by a new golden age of overgrowth of patent rights and litigation.
Now that biological and pharmaceutical patents are enforced worldwide, have greatly increased in number, and have far more ongoing research to block, their damage to innovation may be much greater than their benefit. But this problem tends to remain invisible, because those involved are usually pledged to secrecy, and also are trying to work something out so that their projects can proceed at all, however unsatisfactorily.

Patents on the genetics of viruses or other naturally occurring disease mechanisms can be particular destructive in stopping research on new treatments, as happened recently with hepatitis C. Ownership of pieces of the heredity of human beings or human diseases creates barriers to entry that are infinite, by act of Congress or other government bodies. Tens of thousands of these pieces of exclusive ownership of nature (sometimes controlling whole human diseases) may have created a fatal gridlock that is blocking the translation of new knowledge into practical medical treatments.

If this analysis is correct, pharmaceutical and related patents could be killing more people than all the wars on Earth combined, by blocking the research and development of new medical treatments for diseases that kill far more people than wars. This problem sneaked up on the world, mainly because of a change in scale -- the sheer amount of both research and patent activity today, and their global reach, which dumps all patents into a single huge, universal pool, where each one can stop innovations anywhere. This possibility urgently needs expert and public attention.

Reducing Patent Gridlock
A June 2005 decision by the U.S. Supreme Court2 should reduce patent gridlock in certain cases. The court unanimously allowed patented drugs to be used in preclinical studies [LBE note: recall footnote 6; the Supreme Court presumed that the CAFC decision did allow preclinical studies] to develop new drugs (but not for basic scientific research) without permission of the patent holder. The court said that its decision did not address whether research tools could be used similarly. Surprisingly, large pharmaceutical companies tended to side with consumer groups like AARP to support this decision, while smaller biotech companies as well as research universities tended to be opposed (due to legitimate fears that big pharma might not need to pay them for using their work in developing research tools, which will never generate revenue by being sold to patients as drugs).
This unanimous Supreme Court decision seems to open the door [LBE note: hmm, isn't this backwards?] to well-crafted legislation to further relieve patent gridlock, while also allowing the development of research tools to be profitable. For example, a compulsory-licensing system could create a medical patent pool, allowing big pharma, universities, or anyone else doing medical research to make free use of a broad class of patents, in return for a royalty based on sales, when and if any products developed with those patents were sold. Then any company or other organization could use almost any technology for medical research, without the hassle, expense, and delay of patent negotiation. This would free the research process, make royalties more predictable, and pay for innovation at the time of product sales -- after the work has already proven itself, and when a revenue stream exists. Paying for rights as a percentage of sales (instead of as a large fixed cost) could also encourage low prices in poor countries -- distributing research costs more equitably and realistically.

Open-source projects could also conduct rights-free medical research and drug development under the same rules. If they never made sales they would never owe royalties on the patents they used. And their work could greatly increase the value of patents by finding and proving new uses for them, at no cost to their owners.

A less ambitious approach to open-source type development in pharmaceuticals (not suggesting any legal changes) was discussed last year in The Economist, generally favorably ("An Open-Source Shot in the Arm?" June 10, 2004). Here the idea was to move the collaboration that already works well in bioinformatics (such as in the human genome project, a clear example of successful sharing of data) further downstream, closer to the patient. For example, effective worldwide collaboration and data sharing might greatly increase the discovery of new uses for off-patent or otherwise unpatentable drugs. (Recently the common antibiotic doxycycline was found to be a major advance for treating filariasis [elephantiasis], one of the most common causes of disability worldwide -- by killing bacteria needed by the worms that cause the disease, leading to their eventual death.3) Online research projects could also organize volunteer and other contributions toward developing entirely new drugs for tropical and other neglected diseases (see the Tropical Disease Initiative).

An important article on Internet collaboration ("The Power of Us," Business Week, June 20, 2005, page 75-82) describes many examples of successful new business projects based on the work of many people throughout the world, often volunteers, made possible by widespread online communication. Open-source software development is just one of these.

This approach will surely be different in pharmaceuticals than in software, because the industries are so different. It may contribute greatly to some projects, by allowing research to proceed at full speed, without unworkable rights constraints. This is already happening, but only in a few areas so far, where some way can be found around the prevailing patent gridlock.

The current system of drug development is failing. The time for exploring new ideas and practices is now.

Friday, July 29, 2005

Another "nothing left to patent" shriek

The quote attributed to a former Commissioner of Patents was fake, but here's a real one.

from David Berlind, More patent absurdity threatens net commerce:

In case you missed it, it's cases like this one that motivated me to engage in a bit of satire over the entire patent fiasco. The point of it is that if we keep heading down this rathole, sooner or later, inventors won't be able to invent anything without infringing on a patent. All the patents will have been taken up. There will be nothing less [sic] to patent. And with all those patent holders putting the squeeze on everyone else like Woolsten is, the world will be a far less interesting, colorful, and lively place than it has the potential to be if innovation can truly flourish.

Yes, Berlind is talking about the litigation between MercExchange and eBay.

If there's nothing left to do in intellectual property, let's all move to Mumbai, or Bangalore, or ...

Senator Frist supporting bill to enlarge federal funding of stem cell research

According to the New York Times on July 29, Senate Republican leader, Bill Frist, has decided to support a bill to expand federal financing for embryonic stem cell research, which could push the bill closer to passage. [House version of the bill is sponsored by Representative Michael N. Castle, Republican of Delaware.]

Stem cells cannot be obtained without destroying human embryos, which opponents of the research say is tantamount to murder. "An embryo is nascent human life," Mr. Frist says in his speech for July 29, adding: "This position is consistent with my faith. But, to me, it isn't just a matter of faith. It's a fact of science."

Separately, if the federal government were to enhance funding for stem cell research, there would be impact on the various state-sponsored initiatives, which grew in the face of the earlier federal restrictions. The way intellectual property plays out is likely different between the state areas and the federal area (controlled by the Bayh-Dole Act).

Thursday, July 28, 2005

CAFC addresses on-sale bar: importance of customer awareness to prove experimentation

In Electromotive Div. of General Motors [GM] vs. Transportation Division of General Electric [GE], the CAFC re-visited the on-sale bar of Pfaff v. Wells Electronics, 525 US 55 (1998). Although the Supreme Court had suggested experimental use [by the patent applicant] was fairly straightforward, this case suggests otherwise.

At issue, was whether a commercial offer for sale had occurred.

Notice the CAFC states: "Few decisions address how to determine if a pre-critical date public use or sale is experimental... "

Here, the CAFC determines that a customer's awareness of the purported testing in the context of a sale is critical. This is consistent with In re Dybel, 524 F.2d 1393 (CCPA 1975).

For a determination of experimentation (and thus an avoidance of the on-sale bar), control and customer awareness ordinarily must be found.

Patent reform juggernaut slowing down?

According to IPO Daily News (July 28):

The House IP subcommittee has decided not to meet this week [i.e., Friday, July 29] to mark up and approve patent reform bill H.R. 2795. The subcommittee will revisit the bill when Congress returns from its summer recess after Labor Day.

Hmmm, perhaps some time will be available to read "Patent Reform 2005: Sound and Fury Signifying What?", New Jersey Law Journal, IP Supplement, pp. 16-17 (July 18, 2005).

Tuesday, July 26, 2005

PTO examiner arrested, removed in handcuffs

The newsletter of the Patent Office Professional Association [POPA] describes the incident in the June July 2005 newsletter

--> Separately, the newsletter also has a piece relevant to the
"patent quality" issue:

"Third Pair of Eyes" Quality Review

Patent supervisors in May informed examiners that the USPTO was immediately instituting a "third-pair-of-eyes" review of all allowances, due to an unacceptably high error rate in allowed applications corps-wide so far this year. Supervisors also told employees that if examiners show more than 31 additional patentability errors before the end of the fiscal year, the USPTO will fail to meet its own error goal.

The agency issued no written notice of this change and informed only some art units, not all.

The USPTO did not mandate that primary examiners perform the additional reviews of their colleagues' work, and instead is seeking "volunteers" for that service. Primary examiners need not volunteer, but supervisors are pressuring employees to do so, and the agency may give no additional time to perform these duties. If a supervisor directly assigns a primary examiner to conduct such reviews and/or to submit his or her allowances for review by another primary examiner, such a directive would need to be followed in order to avoid being insubordinate.

--> There is also a piece on patent reform:

On oppositions:
The legislation would allow the identity of the party funding the challenge, while known to the government, to remain secret from the public. Thus a company that is already using the patented process/product, and doesn't want to divulge that fact to the patent holder, can launch a challenge.

Small entities may be hit by a multitude of opposition proceedings that they can't afford. Some companies would be able to protect their financial interests by filing a multitude of opposition proceedings against smaller companies, forcing them to respond and effectively breaking their bankroll. The proposed law provides an element of protection by allowing the USPTO to determine if there's a substantial question of patentability, whether the patentee does or does not respond.

Post-grant opposition can create unacceptable risk for many inventors. For example, pharmaceutical companies' average cost for the development of a new product is $1-2 billion, a large part of which is invested after obtaining a patent. The companies need to ensure exclusivity to protect their investments. Getting socked with post-grant opposition proceedings can jeopardize these huge investments. The same holds true for university researchers and small companies that rely on venture capital investments.

Impact on PTO:

The proposed law says that panels of three administrative patent judges (APJs) will adjudicate the opposition proceedings. Even if a relatively small percentage of granted patents receive post-grant challenges, the USPTO will have to hire many more APJs to handle the workload.

In 2004, the USPTO issued approximately 180,000 patents. That number is likely to rise to more than 200,000 within the next two years. The European Patent Office (EPO), which already has post-grant opposition, receives an annual average of 4.4 percent of patents challenged after issuance. Applying that average to the USPTO would create more than 8,000 opposition proceedings per year in the near future. Even a 1 percent challenge rate would equal 2,000 proceedings.

One expert projected that each APJ would lead a panel and clear about 10 cases per year, in addition to sitting on others' panels as a second or third member. The USPTO would therefore need between 200 and 800 APJs to handle the workload. With 800, the USPTO APJ count would exceed the total number of federal district court judges.

The agency now employs approximately 55 APJs and would have to devote funds to hiring, training and managing them. This would prove an expensive expansion. If Congress appropriates no additional funds, the USPTO would need to move money from examination into adjudicating opposition proceedings. This could result in fewer examiners doing more work and cutting more corners on quality to make the production numbers, thereby creating a vicious cycle of poor quality.

While some think post-grant opposition is a solution to poor quality, the EPO's experience shows otherwise. In Europe, the number of challenges is not a function of the quality of the initial examination, but is based more on the competitiveness and the practices in the patent's particular art. Not all challengers come up with better prior art, just different art. Even with quality examination, some still may challenge a patent just for the sake of challenging, to try to knock down the other guy.

The patents for everyday items that have embarrassed the USPTO and raised the biggest fuss over quality represent few big economic interests. However, it's the patents that indeed affect major financial interests that tend to bring opposition. Many third parties don't even realize the economic impact of a patent for many months after issue. This naturally delays the challenge. As a result, if the two time windows for post-grant opposition are enacted, few may file during the first nine-month period, choosing the wait-and-see option instead.

While current examiners may view the additional hiring of APJs as an opportunity to advance into those jobs, the USPTO would likely hire more experienced patent attorneys for the positions.

Inequitable conduct

The proposed legislation takes the oversight of violations of the duty of candor—the obligation of an applicant to divulge all known prior art—from the courts, and places it before the USPTO. This will require an expensive expansion of the USPTO administration.

Prior duty-of-candor violations have resulted in the entire patent rendered unenforceable, even those claims that are otherwise valid. The proposed bill would require that one patent claim first be found invalid; then the patent would be referred to USPTO for a validity determination. To find the entire patent invalid, the USPTO would have to find that the fraud was the responsibility of the patent owner and that with the undisclosed prior art an examiner would have found the claims unpatentable.

What remains unclear is what happens when the patent is sold—the finding of fraud may not apply to the new patent owner. This proposed change would significantly reduce the likelihood of finding duty-of-candor violations, limit the amount of court system discovery, and possibly encourage applicants to risk withholding information. Many patent attorneys oppose the proposals to change the duty of candor rules.

Judge Ellis contested the bill's diminishing of the court's functions and the expansion of the role of the USPTO. "I'm very opposed to allowing district courts to refer things to an administrative proceeding," Ellis said, as stated in Drug Industry Daily. "That's the last thing in the world I would favor. All you're doing is creating another bureaucracy and another level of litigation. It troubles me a good bit. I think the provision even as written is not coherent."

Monday, July 25, 2005

Efforts against patent reform bill (HR 2795)

by Shawn Bullard of The Professional Inventors Alliance USA (

Disappointed that Congress is working against them to weaken America's intellectual property rights, the Professional Inventors Alliance USA ( ) has launched an aggressive lobbying campaign to ensure the recently drafted "Patent Reform Act of 2005" never makes it to the House Floor for a vote. The U.S. Senate has scheduled a Hearing for the bill on Tuesday, July 26 and the House of Representatives has scheduled a Markup on Thursday, July 28.

Sponsored by Congressman Lamar Smith of Texas, the chairman of the House Judiciary Subcommittee on Courts, the Internet and Intellectual Property, the bill, if passed, would dull America's intellectual edge, disadvantage the nation's small businesses, cost Americans jobs and stifle individual ingenuity, say many of the nation's top inventors.

"The bill would strip individuals of their constitutional rights and kill American invention," said Ron Riley, the organization's president. "It is unconscionable that a member of Congress would sponsor such a bill, but more importantly it is clearly unconstitutional."

The bill's most controversial provision advocates replacing the United State's current first-to-invent standard with the European first-to-file model. The first-to-file system would no longer reward American inventors for their original ideas, designs and years of hard work. Instead, large companies - even foreign companies - that somehow learn of an idea that was not theirs to begin with could file before the actual inventor and claim the patent rights.

"Many of my colleagues don't have the financial resources to prepare a patent application as quickly as IBM, Microsoft or Hewlett Packard, much less win the race to the Patent Office," said Riley. "Unlike European and Japanese patent systems, America's system works to reward the individual inventor."

During a series of national meetings sponsored by the Federal Trade Commission (FTC) several legal experts also questioned the constitutionality of not rewarding American's for their inventions. "Participants ... questioned whether a first-inventor-to-file system would be constitutional in light of the Constitution's requirement that Congress reward 'inventors,'" stated an FTC internal report dated May 23, 2005.

Recall "Patent Reform 2005: Sound and Fury Signifying What?" which appears on page 16 of the intellectual property supplement of the July 18, 2005 issue of the New Jersey Law Journal.

Microsoft's application relating to emoticons (US 20050156873)

A patent application by Microsoft, Custom emoticons, US Appl. No. 20050156873 (published July 21, 2005) has gathered some publicity.

Claim 1 recites:

1. A method, comprising:
selecting pixels to be used as an emoticon;
assigning a character sequence to the pixels; and
transmitting the character sequence to a destination to allow for reconstruction of the pixels at the destination.

from Red Herring:

Microsoft is garnering a lot of attention for filing for a patent on emoticons, the increasingly complex graphics that have become online shorthand for emotion.

“Microsoft has filed for a patent on the smiley face. No. Really,” wrote Pamela Jones of Groklaw, a popular blog devoted to issues surrounding open source litigation.

The patent application, which was made public [Thursday, July 21], actually addresses methods for speeding up the transfer of emoticons.

In Microsoft’s words, the patent would cover transmitting “character sequences representing the custom emoticons… in order to preserve performance of text messaging.”

Much of the frenzied outrage mistakenly assumed that the patent had already been awarded, and that it covered all aspects of emoticons. But patent experts were skeptical about the emoticon patent application’s merit.

Unhappy patent examiners?


Those who regard patent examiners' work as indispensable to the nation's prosperity say USPTO's problem in retaining examiners is troubling. Some attribute the exodus to a culture of poor employee/ manager relations that a recent Government Accountability Office report highlights. Others say the problems are deeper and won't be fixed without restructuring the agency and the standards for awarding patents.

"I don't think I've ever seen a time when, in a concentrated two- or three-week period, I've heard about as many people either having left or planning to leave as I have now," said Ronald Stern, president of the Patent Office Professional Association, the union representing patent examiners.

Stern said GAO's auditors correctly described patent examiners' views in the June 17 report, which states that USPTO faces three challenges that could undermine its efforts to retain a qualified workforce.

The auditors concluded that USPTO's workforce problems arise from the lack of an effective management strategy for communicating and collaborating with examiners, outdated assumptions about production quotas that managers use to reward examiners and a lack of mandatory continued technical training for patent examiners.

Jon Dudas, USPTO's director, responded to the report by promising to stay focused on workforce and process improvements at the agency. He agreed with GAO's auditors on the need to develop a formal plan to improve communications between employees and managers. Dudas also told the auditors he would supplement current training opportunities with a formal program to help patent examiners stay current on state-of-the-art technology in their fields.

Stern said that strained employee/manager relations at USPTO stem from managers who "don't respect the input and advice they get from their employees." A related cause is patent examiners' discontent with what they say are unreasonable production quotas that examiners must work overtime to meet. "This is a legal sweatshop here," Stern said. "The truth is we could do a better job with more time."

According to the auditors' report, managers concerned about reducing a sizable backlog of patent applications want patent examiners to do their jobs faster without additional time allowances, citing advances in automation at the agency.

Patent examiners gave GAO auditors reasons why they require more time to evaluate patent applications than the people who are now USPTO's managers needed in the past. The time examiners have to review a patent application has not increased since 1976, even though examiners have many more complex cases involving, for example, computing innovations and biotechnology, than they did then, Stern said.

"Those are harder cases," he said. "The amount of prior art that has to be searched has gotten greater. The number of pages of specifications that somebody has to read is greater. The number of claims that an employee has to consider is much larger than it used to be. Those things all make it take more time. What has really happened is that people have been forced to do the job faster, and as a consequence, they've been forced to cut corners."

Jason Schultz, a staff attorney at the Electronic Frontier Foundation who specializes in intellectual property issues, said the GAO report officially confirmed what he already knew about USPTO and its patent examiners.

Quillen's 85% grant rate number still quoted

The 85% grant rate number in the paper by Quillen et al. in the Federal Circuit Bar Journal (as well as the earlier 97% number) are based on bad math (the model allows a grant rate in excess of 100%) and bad legal assumptions (claims of a divisional application are NOT repeated attempts to claim the same subject matter of the parent). Nevertheless, the 85% number keeps coming up.

#1. In Kimberly Moore's paper Worthless Patents at footnote 5 (page 2):

But see Cecil D. Quillen et al. 12 Fed. Cir. B. J. 35, 38 (2002) (suggesting that the PTO issues over 85% of all applications that are filed [sic]).

[Kimberly Moore was the editor of the Federal Circuit Bar Journal at the time Quillen's papers were published. Moore later asserted that a paper by Clarke which criticized the work of Quillen incorrectly assumed that all continuation applications issued as patents. Clarke did not make this assumption.]

#2. In article in Boston Herald, July 24, 2005
[ ]:

Harvard Business School Professor Josh Lerner testified to a House subcommittee on intellectual property that all parties have an incentive to ``invest in abusing the system,'' for inventors are ``induced to make marginal applications by the likelihood of success'' - 85 percent of 350,000 annual applications will be approved. Holders of the many marginal patents can then use them to force others to pay royalties they shouldn't have to, or even to stay out of the field.

The book by Jaffe and Lerner relies on Quillen's numbers. A paper in the Harvard Law Review in 2003 treated the 97% number as if it were the grant rate.

Another district court claim construction reversed (Transonic)

In the non-precedential Transonic v Non-invasive Medical Technologies, the Federal Circuit reversed a district court claim construction as to the term "calculating." The patent at issue was US 5,685,989.

The CAFC cited US v. Telectronics, 857 F.2d 778, 783 (CAFC 1988) and Bai v. LL Wings, 160 F.3d 1350.

Festo even came up, and the district court was instructed to do a Festo analysis.

US 5,685,989 has been cited by 39 US patents. One of the cites is by Jerome Lemelson, 5,919,135.

It claims no priority.

The first claim recites:

A process for determining in an arterio-venous shunt blood flow in a cardiovascular circuit, comprising:

delivering blood from a circulating system outside the cardiovascular circuit into an upstream location in an arterio-venous shunt connected in the cardiovascular circuit and carrying a shunt blood flow;

mixing said delivered blood with said shunt blood flow;

removing a portion of the mixed blood from said arterio-venous shunt at a location in the shunt which is downstream from said upstream location and delivering the removed portion of mixed blood to the circulating system;

changing a selected blood parameter in blood flowing in said circulating system to produce a distinguishable blood characteristic in blood which is delivered to the arterio-venous shunt;

measuring the amount of distinguishable blood characteristic in said removed portion of mixed blood; and

calculating the rate of flow of said shunt blood flow in said arterio-venous shunt from said measured amount of distinguishable blood characteristic.

Monday, July 18, 2005

North American Container v. Plastipak: a big deal in the beverage container business

In North American Container v. Plastipak et al., the CAFC affirmed the district court as to the interpretation of the claim term "generally convex" but altered the interpretation of "re-entrant portion." The patent in question is Reissue 36,639, derived from US 5,072,841.

The re-issue in question retained the 18 originally-allowed claims, but added 14 broader claims. Protests about the new claims were filed under 37 CFR 1.291(a).

On August 3, 1999, NAC filed suit against thirty-seven (37) defendants.

Of the various issues, Plastipak cited Elekta, 214 F.3d 1302 (CAFC 2000)for the proposition that claim construction does not necessarily include all embodiments in the specification.

There was an issue of prosecution disclaimer, and the CAFC cited Omega, 334 F.3d 1314 (CAFC 2003). The CAFC also cited DuPont v. Phillips, 849 F.3d 1430 (CAFC 1988) [sic: 849 F.2d 1430] for the proposition that limitations of the spec should not be imported into the claims. Of the recapture rule, the CAFC cited In re Clement, 131 F.3d 1364 (CAFC 1997).

Of an issue of deference to the PTO, the CAFC noted: "the examiner's basis for denying the protests ... demonstrates the examiner's inattention to the rule against recapture."

Sunday, July 17, 2005

CAFC affirms obviousness in nonprecedential Battiston case

Claim 1 recited a "pan for use with a commode," with some other limitations.

The Board found obviousness in view of US 2,500,544, 5,343,573, and admitted prior art [APA].

Wednesday, July 13, 2005

Universities oppose aspects of patent reform

In my article "Patent Reform 2005: Sound and Fury Signifying What," I suggest that the proposed "first inventor to file" system might not be in the best interests of universities. The following article, posted today, confirms this.

By Matt Krupnick (posted July 13)


Congress is tinkering with new rules that could reinvent the U.S. patent system, which brings in millions of dollars per year to UC Berkeley and other research universities.

Under the proposed law, a patent would go to the first inventor to file an application, the criterion used in most of the world's patent systems. The current U.S. system rewards researchers who can prove that they were the first to invent a device or process.

University of California officials have lobbied against the reforms, saying the first-to-file proposal could lead to shoddy research as scientists rush to beat the competition. The new law also would favor wealthy companies over public universities with limited budgets, said Carol Mimura, executive director of UC Berkeley's Office of Technology Licensing.

"If it's simply a race to the patent office, then whoever has the fastest DNA sequencer could win," she said. "From a scientific standpoint, it just doesn't feel fair."

University-generated patents have boomed since 1981, when Congress allowed academic institutions to license and commercialize new technology. The changes spawned a revolution in university research, somewhat shifting faculty away from their traditional focus on simply publishing their results.

Open to simple process

Despite many universities' opposition to the new proposal, some say they would welcome the simpler patent process.

At private Stanford University, which produced 128 patents last year, officials say the proposal would save the school time and money. Institutions often have trouble defending patents against challengers who say they invented a product first, said Katharine Ku, director of Stanford's patent office.

"Frankly, academics do not keep very good notebooks, so we often lose these (challenges)," Ku said.

The 10-campus UC system, which produced 424 patents last year, has generated more inventions than any other U.S. university each of the past 11 years.

UC's 6,600 active patents earned the university more than $93 million in the 2003-04 fiscal year, officials said. The patent process, which often takes five years or more, is not nearly as lucrative for faculty, but they say it helps keep their research practical and timely.

"Getting involved in the patent process helps you understand how the business world works," said Moraga resident Richard Mathies, a UC Berkeley chemistry professor who has about 30 patents. "The more you interact with industry, the better you understand which technologies they need."

Rush on research

Although most inventions earn little or no income, the UC system earned at least $1 million per year from each of 10 inventions as of 2003. The system's most lucrative patent, a hepatitis B vaccine from UC San Francisco, brings in more than $20 million per year.

Other fruitful inventions include two different types of strawberry developed at UC Davis and the nicotine patch, from UCLA.

Some researchers are wary of having to rush to the patent office with half-developed ideas or the possibility that another person will beat them to a patent on which they have worked for years.

"It's easy to imagine how someone could get hurt," said Carlos Bustamante, a UC Berkeley biology and physics professor who helped invent an "optical tweezer" that can move individual molecules. "People in the university are primarily interested in research. We are not businessmen."

University officials say they are well aware their concerns about patent reforms are going to be outweighed by the needs of corporations that churn out thousands of inventions per year.

Large technology companies have lauded the bill as the best way to eliminate "patent trolls," companies that file for patents simply so they can sue others for infringement.

Intel Corp., which holds more than 10,000 U.S. patents and has another 10,000 in the approval process, has been stymied by patent trolls that "hold companies hostage," said Intel spokeswoman Jennifer Greeson. The company spends up to $20 million a year dealing with infringement lawsuits, she said.

"The impacts are that we are unable to proceed with patents," Greeson said.

The change is long overdue, said Rep. Lamar Smith, R-Texas, the bill's author.

"I think it's important to have a (better) patent system because that's what keeps our economy going," he said. "We are now laboring under outdated patent laws."

Push to ease effects

University officials from around the country have lobbied Congress to ease the bill's effects on higher education, but the task has been difficult.

"At the end of the day, I think industry's voice will carry much more weight than ours will," said Scott Sudduth, UC's assistant vice president for federal governmental relations in Washington, D.C. "While we are relatively major players, this is a much bigger issue for them."

Even academics who oppose the first-to-file proposal in principle say they relish the thought of clarifying the process.

The differences between the United States' system and those of Canada, Europe and Japan can make life rough on inventors, said Brad Gibson, a chemistry professor at UC San Francisco and Novato's Buck Institute.

"Sometimes we lose the U.S. rights but keep the European rights, and it becomes a big problem," he said. "Anything that would simplify these rules, even though there would be some detriments, certainly would be a big help."

The oddity in Phillips v. AWH

Several comments [in italics below] by Aslan Baghdadi in Legal Times in April 4 are worth considering in light of the July 12 decision.

Recall that it was the defense (AWH) that argued for the primacy of the specification in interpretation:

The defendant's attorney, Mark Fischer of the Boulder, Colo., office
of Faegre & Benson, clearly came prepared to answer all seven questions
propounded in the court's rehearing order, but was almost immediately interrupted
by Judge Michel, who asked him to respond to Manthei's arguments. Fischer
quickly answered by arguing his main theme -- that the specification must be
the primary source for claim construction
because the specification must be
examined to ascertain what the invention is, and the claims must not be construed
to cover something not within the scope of the invention.

NOTE: AWH who was pushing the specification-centric approach, which was basically adopted by the CAFC, but AWH lost the case!

The patentee, as frequently is the situation, was arguing for the broader, dictionary, plain meaning approach:

Carl Manthei of Boulder, Colo., pleaded Phillips' case with
conviction, arguing that the plain meaning of the term covers 90-degree
structures. He was questioned most sharply by Judge Alan Lourie, the
author of the vacated panel opinion. Lourie relied upon the fact that the patent
description only identifies (by numbering them in the drawings) certain
types of structures as "baffles," and all these structures are shown at angles
other than 90 degrees. Therefore, according to Lourie, structures mounted at 90
degrees cannot be "baffles," as that term is used.

Judges Clevenger and Dyk worked hardest at trying to answer the
narrow question here -- whether baffles can or cannot be set at a 90-degree
angle to the wall. And most observers believed that Manthei (for Phillips) succeeded in getting the answer he wanted to that question.

NOTE: The result on July 12, 2005 confirms this observation.

Given the broad range of questions, the 12 judges may well find it
difficult to agree on a specific algorithm for trial courts to follow in
construing claim terms. Instead, the Federal Circuit will likely rule that, while judges should read the specification and the prosecution history, and study the
appropriate dictionaries, they may do so in any order and use all the tools
available to them. Trial judges must do what seems reasonable under the particular
circumstances of the specific case.

[NOTE: use of dictionaries was de-emphasized.]

That said, the Federal Circuit will probably reverse the District
Court's claim construction rulings in this case and remand for further

[NOTE: right again.]

Wegner on Phillips (Feb. 28, 05)

from National Law Journal, February 28, 2005, Sean A. Passino, Stephen B. Maebius and Harold C. Wegner

On Phillips -->

In addition, claim construction basics will be reconsidered en banc.
Eleven of 12 judges of the Federal Circuit decided to revisit, review and/or
revise how a patent's claims are interpreted. Phillips v. AWH Corp., 376 F.3d 1382
[Fed. Cir. 2004] [en banc] [per curiam order]. This case is not as important
for its underlying facts as it is for its potential effect on the single most
valuable attribute of a patent, namely, the scope and meaning of its claims. In
fact, if all seven of the issues identified in the order were to be decided,
then the Phillips case would most likely overshadow in importance all previous
Federal Circuit opinions since at least Markman v. Westview Instruments Inc.,
52 F.3d 967 [Fed. Cir. 1995] [en banc], aff'd, 517 U.S. 370 [1996].

[Note: after the July 12 decision, this is not clear. The CAFC seemed to think that it is business as usual, as in Markman and in Innova, for example.]

Four of seven issues concern the interplay between both the role of
the patent's specification and the roles of dictionaries and similar
sources to interpret a claim term. Should one be used over the other? Should both
sources be used? And if so, in what order should they be used? Moreover, Judge
Randall R. Rader, in concurring with the order, solicited comments on whether
claims should be construed using "strictly algorithmic rules, e.g.,
specification first, dictionaries first, etc." or using "tools relevant in each
case," much like the interpretation of a contract or statute.

Three of seven issues concern, quite frankly, questions about what
should have been, by now, axioms of claim interpretation. What should be the
roles of the fact-finder and of expert testimony? How should one use the file
prosecution history of the application that produced the patent whose claims are
being interpreted? Will the prior art and/or the statutory requirements for
patentability affect the meaning of a claim term? Clearly, the potential impact
of this case could serve either to clarify or to stupefy the patent bar
in 2005, unless, of course, this case "continues a charade," as expressed by
then-Chief Circuit Judge Haldane Robert Mayer in a harsh dissent.


At oral argument below, infringer Merck had abandoned an
"experimental use" defense under classic case law because of a perception that Federal Circuit case law denied the existence of a nonstatutory "experimental use"
defense-although just five years earlier the court had said that "[t]he law has long
recognized the distinction between inventions put to experimental use and products
sold commercially." Pfaff v. Wells Electronics Inc., 525 U.S. 55, 64 [1998].

NOTE: The experimental use at issue in Pfaff pertained to activities by the patent applicant before patent grant. The experimental use that was at issue in the pre-1995 activities of Merck pertained to activities by a third party after patent grant.

Microsoft loses in AT&T v. Microsoft

Microsoft loses on an issue relating to 35 USC 271(f). Microsoft had invoked Pellegrini, 375 F.3d 1113 (CAFC 2004).

The decision contains the text: "possible loss of jobs in this country is not grounds for misinterpreting a statute", citing Griffin v. Oceanic Contractors, 458 US 564.

Enzo Biochem v. Gen-Probe

Enzo Biochem attempted to appeal a decision from SDNY, but the failure to have adjudicated the inequitable conduct claim led to dismissal of the appeal.

Goodenough case

Case involving US 5,910,382 (LiFePO4 and lithium batteries) and Prof. John B. Goodenough.

Result: NTT appeal goes to CA5.

Cites Christianson v. Colt, 486 U.S. 800 and Univ. of Colorado v. American Cyanamid, 196 F.3d 1366.

Star-Ledger: Able Labs fabricated test data

According to a report by George E. Jordan in the July 12 issue of the Newark Star-Ledger, Able Labs altered test data to cover up production of tens of thousands of tablets and capsules that did not meet FDA standards. The company "cut and pasted" computer files and swapped sample vials to eliminate evidence of weak or superpotent medications.

Separately, the Star-Ledger also reported on the fraud of Suprema Specialties, who wowed Wall Street by creating a carousel of fake invoices and shipments. Forbes Magazine called the Paterson, NJ-based company one of the country's best small companies and Fortune ranked it among the fastest growing.

That Forbes and Fortune were taken in by what amounted to a street-corner shell game reminds one of how the scientific journals Science and Nature were fooled by the fraudulent and basically-nonexistent work of Jan-Hendrik Schon of Lucent (Bell Labs).

The fraud of Suprema (and of officers Cocchiola and Venechanos) cost stockholders 700 million. In the case of Schon, there were hundreds of millions of dollars of funding to followup the fraudulent work.

More on Phillips v. AWH and dictionaries in claim construction

from an endnote in my article in Intellectual Property Today for August 2005:

In the en banc decision in Phillips on July 12, 2005, Phillips got a remand on the infringement issue, and a dictionary-centric interpretation of Texas Digital was questioned. Recall that the dissent in the first Phillips case argued that the Webster’s definition of baffle applied (Phillips, 363 F.3d at 1218-1219). Thus, in the end, one obtained the result of the dissent (district court decision overturned; Mr. Phillips gets another chance) but for (some) different reasons (emphasis on intrinsic evidence preferred over extrinsic evidence such as dictionaries). However, one recalls that the majority in the earlier decision had based its conclusion on intrinsic evidence: that the specification disclosed baffles only at angles other than 90 degrees, and thus that this was a "written description" issue. Phillips, 363 F.3d at 1214. This wasn’t a "dictionary case;" it was an "interpretation of the specification" case. Separately, of the "Ulysses S. Grant" issue, the en banc decision of July 12 acknowledged that it did not reach the 7th question of 376 F.3d 1382: is it appropriate for this court to accord deference to any aspect of trial court claim construction rulings?

from Bloomberg News:

Dictionaries Are Set Aside in Patent Suits

Inventors, not dictionaries, get to define the terms in patents
involved in lawsuits, a federal appeals court said in a ruling that sets guidelines for judges on how to interpret patents.

Dictionaries, encyclopedias and other reference books can be used only sparingly in patent trials, the United States Court of Appeals for the Federal Circuit in Washington said yesterday.
A judge must first look at the patent and the history of the
application when seeking to clarify its claims, the court ruled.
"To construe patent terms, you have to look at the document," said
Edward D. Manzo, a Chicago patent lawyer who submitted a brief in the case. "I'm happy we don't have to have a battle of dictionaries anymore."

The circuit court, which handles almost all patent appeals, has issued contradictory rulings in the last decade, including a 2002 decision that told judges to look to dictionaries first.

Judges' patent rulings are overturned at least a third of the time in cases where their rulings hinge on interpretations of so-called "claim terms."

Circuit Judge William C. Bryson, in an opinion for 9 of the 12 judges on the court, wrote that "The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent."

The ruling touches on every patent lawsuit, said David W. Long, a
patent lawyer who submitted a brief on behalf of the wireless industry.

The dispute before the court was over the word "baffle," used to
describe part of a wall for prisons that can deflect sound, heat and bullets. The patent owner, Edward H. Phillips, had accused the AWH Corporation of infringement and said a judge improperly dismissed the case after refusing to use the dictionary definition. [!!]

The majority sent the case back to the trial judge for reconsideration. Circuit judges Alan D. Lourie and Pauline Newman dissented on grounds that the trial judge had relied upon the correct standard.

Another judge, Haldane R. Mayer, veered from the majority opinion,
saying it did not resolve the broader issue of how much deference to give trial judges.

From January 2003 to February 2004, the circuit court modified judges' interpretations in 63 percent of the precedent-setting cases that relied on them, according to a study by the law firm Jenkens & Gilchrist. Not all of the cases were overturned.

Tuesday, July 12, 2005

Phillips v. AWH decided July 12; Phillips gets remand

The en banc CAFC rejected the arguments of AWH in favor of a restrictive definition of the word "baffles." The summary judgment of noninfringement was reversed.

The en banc CAFC decided not to address the issue of deference to the trial court on issues of claim construction, which leaves the ruling in Cybor intact.

At page 21 of the opinion, the CAFC began its discussion of Texas Digital. At page 23, the CAFC stated Texas Digital placed too much reliance on extrinsic sources such as dictionaries. That approach improperly restricts the role of the specification in claim construction. Elevating the dictionary to such prominence focuses the inquiry on the abstract meaning of words rather than on the meaning in context of the patent. At page 31, the CAFC reaffirmed the approach to claim construction in Vitronics, Markman, and Innova.

Opinion available:

I had pointed out here on August 31, 2004:

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

One sees Innova was indeed favorably cited in the en banc Phillips case.

More discussion of patent reform

My article on patent reform 2005, sound and fury signifying what? will be published in the July 18, 2005 issue of the New Jersey Law Journal.

Therein, I discuss some patent quality issues, the proposed patent opposition procedure, and the possible impact of "first inventor to file" on universities.

My earlier paper on patent reform in the June 2005 issue of Intellectual Property Today is available on the internet at

This discusses issues in innovation and the brief of the 24 law professors in KSR v. Teleflex. It even talks about buckminsterfullerene (aka buckyball, aka C60) in the context of Nobel-prize winning discovery vs. innovation vs. invention. It also talks about the patent quality issue of Quillen and Webster.

In re on descriptive marks, secondary meaning

The case In re presents a discussion of issues with generic and descriptive marks, and cites a number of useful earlier trademark cases, including Qualitex v. Jacobson, 514 US 159 (1995), In re Am. Fertility Society, 188 F.3d 1341 (CAFC 1999), and In re Oppedahl, 373 F.3d 1171 (CAFC 2004) and procedural cases, including In re Song Su Lee, 277 F.3d 1338 (CAFC 2002) and In re Thrift, 298 F.3d 1357 (CAFC 2002).

Here, the CAFC vacated as to generic but affirmed as to descriptive, lacking secondary meaning. There was a dissent on the latter point.

If you're looking to register a mark that is in the generic/descriptive range, this case is a helpful read.

Saturday, July 09, 2005

Spin control in aftermath of EU rejection of software patents

Keep in mind the arguments for "patent harmonization" which underlie current efforts in US patent reform. There is (and will be) no harmony as to software/business method patents between the US and Europe.

Even after the EU Parliament's rejection of a controversial directive, the war of words rages on between opponents and proponents of software patents. Anti-patent campaigners today criticized the lobbyists in the other camp for "excessive spin doctoring".

Hartmut Pilch, the president of the Foundation for a Free Information Infrastructure (FFII), cannot see why the proponents of software patents would truly welcome yesterday's outcome: "No matter what the others say, article 52 of the European Patent Convention is still in force, and it clearly disallows patents on computer software. Our opponents wanted to dilute that article by means of an EU directive, and the headway they made amounts to zero."

"After they just wasted many millions of Euros on lobbying and public relations, they now want to soothe their bosses and clients by denying their all-too-obvious defeat", said Florian Mueller, the founder of the campaign. "If I had spent so much money, I'd want to walk out of the shop with something more than a failed attempt to enshrine software patents in European statutory law. They could have had that for free any time."

The pro-patent efforts had reached major proportions. Free ice cream to more than 500 people was actually one of the minor expenses. Pro-patent organizations hosted events in the European Parliament and various capitals of Europe on an almost daily basis for three months. They produced various videos; hired a former president of the EP (Pat Cox) and several high-profile PR agencies; placed a large banner on the front of a building close to the EP; and they had dozens of full-time lobbyists -- a number of them high-paid lawyers -- stationed in Brussels for months. One of the leading pro-patent campaigners had made himself a name with a 30-million Euro campaign for gene patents.

[from businesswire]

Buckyballs, again

An article on nanotech, purportedly about patent problems with nanotubes, is illustrated with a buckyball (C60). Oh, well, ... If you can't tell the difference between a nanotube and a buckyball, you shouldn't be talking about nanotech patents.

But the situation is the reverse for carbon nanotubes, a leading candidate to be used in electronics as our ability to manipulate silicon reaches its limits [see "Supertubes," IEEE Spectrum, August 2004]. And that could turn the commercialization of carbon-nanotube electronics into a sticky mess. "If you pick up one of these patents, you're going to have to license a whole bunch of others in order to use the one that you've got," says Matthew Nordan, vice president of research at Lux Research. The best way for the industry to clear a path through the mess and get products out is cross-licensing, he says. And the best way to achieve this sort of arrangement is through organizations similar to the MPEG Licensing Authority, in Denver, Colo., a one-stop shop where consumer electronics companies can buy packages of digital coding licenses if they want to make, for example, a DVD player.

US 6,913,466 (Microsoft) on grooving and becoming a groover

From the abstract:

A system and methods are provided for training a trainee to analyze media, such as music, in order to recognize and assess the fundamental properties of any piece of media, such as a song or a segment of a song. The process includes an initial tutorial and a double grooving process.

From the background:

Classifying information that has subjectively perceived attributes or characteristics is difficult. When the information is one or more musical compositions, classification is complicated by the widely varying subjective perceptions of the musical compositions by different listeners. One listener may perceive a particular musical composition as "hauntingly beautiful" whereas another may perceive the same composition as "annoyingly twangy".

Accordingly, there is a need for an improved method of classifying information that is characterized by the convergence of subjective or perceptual analysis and DSP acoustical analysis criteria. With such a classification technique, it would be desirable to provide training to humans at the front end of the classification process in order to generate more uniform human classification of media. It would be further desirable to provide a system and method as a result of which an individual is trained to analyze media, such as songs, in order to recognize and assess the fundamental media properties of any piece of media. It would be still further desirable to utilize a playlist generating engine to dynamically produce playlist(s) suited to the above need for training individuals.

Here's the first claim:

A method for training a trainee to assign to a media entity at least one value corresponding to at least one fundamental property of a plurality of fundamental properties of the type of media entity via a computing device, comprising:

rendering definitional classification information to the trainee to educate the trainee as to the nature of said plurality of fundamental properties;

receiving by the computing devices at least one trainee-assigned value corresponding to said at least one fundamental property of the plurality of fundamental properties of the media entity after said rendering, said at least one trainee-assigned value equal in number to at least one expert-assigned value assigned to said at least one fundamental property of said plurality of fundamental properties of the media entity by at least one expert;

comparing by the computing device the at least one trainee-assigned value to the corresponding at least one expert-assigned value; and

determining based on said comparing a first group of said at least one fundamental property of the plurality of fundamental properties for which said trainee is qualified to code values for new media entities, wherein the media entities are one of song and song segments.

Detailed description:

The double grooving phase leverages the skills of the experts that defined the canonical set of classification terms to ensure that new listeners, even though exposed to the tutorial, appropriately recognize all fundamental musical properties. Thus, for specific song examples, a new listener matches results with the system experts within a degree of tolerance e.g., 90-95% accuracy. When a high enough degree of cross-listening consensus is reached, the new listener becomes a groover.

Grooving patent to Geoffrey R. Stanfield and Eric Bassman
US 6,913,466 issued July 5, 2005, filed August 21, 2001

This application is related by subject matter to commonly assigned U.S. Pat. No. 6,545,209, issued on a Apr. 8, 2003, entitle "Music content Characteristic Identification and Matching" and to the following commonly assigned U.S. Patent Applications: U.S. patent application Ser. No. 09/900,230, filed on Jul. 6, 2001, entitled "System and Method for the Automatic Transmission of New, High Affinity Media;" U.S. patent application Ser. No. 09/934,071, filed Aug. 20, 2001, entitled "Method and System for Providing Adaptive Media Property Classification;" U.S. patent application Ser. No. 09/900,059, filed Jul. 6, 2001, entitled "System and Methods for Providing Automatic Classification of Media Entities According to Consonance Properties;" U.S. patent application Ser. No. 09/935,349, filed Aug. 21, 2001, entitled "Systems and Methods for Providing Automatic Classification of Media Entities According to Sonic Properties;" U.S. patent application Ser. No. 09/905,345, filed Jul. 13, 2001, entitled "System and Method for Providing Automatic Classification of Media Entities According to Tempo Properties;" U.S. patent application Ser. No. 09/904,465, filed Jul. 13, 2001, entitled "System and Methods for Automatic DSP Processing;" U.S. patent application Ser. No. 09/905,011, filed Jul. 13, 2001, entitled "System and Method for Dynamic Playlist of Media;" U.S. patent application Ser. No. 09/942,509, filed Aug. 29, 2001, entitled "System and Method for Providing Automatic Classification of Media Entities According to Melodic Movement Properties;" and U.S. patent application Ser. No. 09/928,004, filed Aug. 10, 2001, entitled "System and Method for Audio Fingerprinting," the contents of which are hereby incorporated into this present application in their entirely.

Friday, July 08, 2005

Anything you blog can be held against you...

from the Chronicle of Higher Education:

What is it with job seekers who also write blogs? Our recent faculty search at Quaint Old College resulted in a number of bloggers among our semifinalists. Those candidates looked good enough on paper to merit a phone interview, after which they were still being seriously considered for an on-campus interview.

That's when the committee took a look at their online activity.

In some cases, a Google search of the candidate's name turned up his or her blog. Other candidates told us about their Web site, even making sure we had the URL so we wouldn't fail to find it. In one case, a candidate had mentioned it in the cover letter. We felt compelled to follow up in each of those instances, and it turned out to be every bit as eye-opening as a train wreck.

Don't get me wrong: Our initial thoughts about blogs were, if anything, positive. It was easy to imagine creative academics carrying their scholarly activity outside the classroom and the narrow audience of print publications into a new venue, one more widely available to the public and a tech-savvy student audience.

We wanted to hire somebody in our stack of finalists, so we gave the same -- or more -- benefit of the doubt to the bloggers as to the others in the pool.

A candidate's blog is more accessible to the search committee than most forms of scholarly output. It can be hard to lay your hands on an obscure journal or book chapter, but the applicant's blog comes up on any computer. Several members of our search committee found the sheer volume of blog entries daunting enough to quit after reading a few. Others persisted into what turned out, in some cases, to be the dank, dark depths of the blogger's tormented soul; in other cases, the far limits of techno-geekdom; and in one case, a cat better off left in the bag.

The pertinent question for bloggers is simply, Why? What is the purpose of broadcasting one's unfiltered thoughts to the whole wired world? It's not hard to imagine legitimate, constructive applications for such a forum. But it's also not hard to find examples of the worst kinds of uses.

A blog easily becomes a therapeutic outlet, a place to vent petty gripes and frustrations stemming from congested traffic, rude sales clerks, or unpleasant national news. It becomes an open diary or confessional booth, where inward thoughts are publicly aired.

Worst of all, for professional academics, it's a publishing medium with no vetting process, no review board, and no editor. The author is the sole judge of what constitutes publishable material, and the medium allows for instantaneous distribution. After wrapping up a juicy rant at 3 a.m., it only takes a few clicks to put it into global circulation.

We've all done it -- expressed that way-out-there opinion in a lecture we're giving, in cocktail party conversation, or in an e-mail message to a friend. There is a slight risk that the opinion might find its way to the wrong person's attention and embarrass us. Words said and e-mail messages sent cannot be retracted, but usually have a limited range. When placed on prominent display in a blog, however, all bets are off.

So, to the job seekers.

Professor Turbo Geek's blog had a presumptuous title that was easy to overlook, as we see plenty of cyberbravado these days in the online aliases and e-mail addresses of students and colleagues.

But the site quickly revealed that the true passion of said blogger's life was not academe at all, but the minutiae of software systems, server hardware, and other tech exotica. It's one thing to be proficient in Microsoft Office applications or HTML, but we can't afford to have our new hire ditching us to hang out in computer science after a few weeks on the job.

Professor Shrill ran a strictly personal blog, which, to the author's credit, scrupulously avoided comment about the writer's current job, coworkers, or place of employment. But it's best for job seekers to leave their personal lives mostly out of the interview process.

It would never occur to the committee to ask what a candidate thinks about certain people's choice of fashion or body adornment, which countries we should invade, what should be done to drivers who refuse to get out of the passing lane, what constitutes a real man, or how the recovery process from one's childhood traumas is going. But since the applicant elaborated on many topics like those, we were all ears. And we were a little concerned. It's not our place to make the recommendation, but we agreed a little therapy (of the offline variety) might be in order.

Finally we come to Professor Bagged Cat. He was among the finalists we brought to campus for an interview, which he royally bombed, so we were leaning against him anyway. But we were irritated to find out, late in the process, that he had misrepresented his research, ostensibly to make it seem more relevant to a hot issue in the news lately. For privacy reasons, I'm not going to go into the details, but we were dismayed to find a blog that made clear that the candidate's research was not as independent or relevant as he had made it seem.

We felt deceived by his overstatement of his academic expertise. In this case, it was not the candidate's own blog, but that of a boasting friend, that revealed the truth. The lesson? Be careful what you let a close associate's blog say about you. What that associate sees as complimentary may cast you in an unflattering light in the eyes of a search committee.

Job seekers who are also bloggers may have a tough road ahead, if our committee's experience is any indication.

You may think your blog is a harmless outlet. You may use the faulty logic of the blogger, "Oh, no one will see it anyway." Don't count on it. Even if you take your blog offline while job applications are active, Google and other search engines store cached data of their prior contents. So that cranky rant might still turn up.

The content of the blog may be less worrisome than the fact of the blog itself. Several committee members expressed concern that a blogger who joined our staff might air departmental dirty laundry (real or imagined) on the cyber clothesline for the world to see. Past good behavior is no guarantee against future lapses of professional decorum.

A colleague from a different university provides this cautionary tale: After graduation, a student goes to the far side of the world to teach English. Student sends delightful travelogue home via e-mail messages, and recipients encourage student to record rare experiences in a blog. A year passes and the blog turns into a detailed personal gripe session about the job, students, coworkers, and place of employment. It is discovered and devoured by students, coworkers, and place of employment. Shamed student turns for support to alma-mater faculty members, who read the blog and chastise student for lack of professionalism and for tainting alma mater's reputation. Student now seeks other job -- without letters of recommendation from current employer or alma mater.

Tuesday, July 05, 2005

Merges discusses patent grant rate issue


Paper on Ex parte Eggert on virtues of re-issue

Gruskin and Bird have a paper in the June 2005 issue of Intellectual Property Today on the significance of the case Ex parte Eggert, 67 USPQ2d 1716 (BPAI 2003) as to valuable aspects of re-issue.

US Court of Federal Claims says patent fee diversion all right

In Figueroa v. US, 2005 U.S. Claims LEXIS 170, the court addressed the constitutionality of fee diversion of patent fees from the USPTO and concluded:

Congress is entitled to great deference under the Necessary and
Proper Clause when it legislates under its Intellectual Property power. Any
intellectual property law Congress passes need only survive the limited scrutiny of
the rational basis test as to whether it promotes the progress of science
and the useful arts. Plaintiff may well be correct that the current patent fee
regime is misguided and creates the wrong incentives, but such policy
determinations are for Congress, and not the courts, to make.
Plaintiff has not carried his burden of showing that Congress has behaved irrationally.

Patent Reform 2005: Can You Hear Me, Major Tom?

My article, Patent Reform 2005: Can You Hear Me, Major Tom?, appears on pages 32-34 of the June 2005 issue of Intellectual Property Today.

Certain issues with the brief in KSR International v. Teleflex of the 24 law professors concerning the motivation requirement in obviousness are addressed.

US 6,887,152 on method for lottery game

Edward Stanek, president of the Iowa Lottery and one of two men who came up with the Powerball game in 1992, has patented an international jackpot game and a new lotto game that could some day be played in the United States.

Stanek and Powerball co-creator Steve Caputo, the former Oregon lottery official, have never received royalties from their invention of Powerball. The game has generated about 17 (B) billion in sales for lotteries nationwide in the past 14 years.

Stanek is well paid, however, as the nation's senior chief lottery official.

He decided last year not to take early retirement and the state gave him an 81-thousand dollar pay raise.

Stanek is now one of the state's higest paid employees, with an annual salary of 207-thousand dollars.

[from who-tv website]

***Of the patent -->


Claim 1:

In a lottery game to be played among a plurality of groups, the lottery game requiring payment of an entry fee by a player and a method of paying prizes, the prizes consisting of a jackpot and first and second subordinate prizes, the method comprising the steps of:

accumulating an individual group prize pool for each group participating in the lottery game from a first portion of the entry fee;

accumulating a super prize pool from a second portion of the entry fee;

paying the first subordinate prizes from individual group prize pools;

paying the jackpot and the second subordinate prizes from the super prize pool in one or more groups having a jackpot winner; and

creating a jackpot prize limit in one or more of the groups such that money in the super prize pool in excess of the jackpot prize limit is awarded as second subordinate prizes.

From "background":

Many different types of lottery games have been sold over the course of history in various jurisdictions. The "traditional" game has been sold for several hundred years. This game is based on the concept of a raffle. Generally, tickets are sold with unique numbers. The drawing mechanism is developed, often using balls, sometimes thousands of them, each with a unique number corresponding to a ticket. Other times individual digits for winning numbers are drawn from a series of machines. The drawings are held so that a large prize and subordinate prizes are paid according to the unique numbers drawn and delegated to a particular prize level. Sometimes subordinate prizes are paid for matching part but not all of the numbers as long as the digits being matched are a subset of the digits on the balls drawn in exact order.

Instant lottery tickets, also called scratch tickets, were invented in the second half of the 20th century. They utilize a secure printing medium with numbers or symbols covered by latex or some other material. The covering is scratched and players win prizes by adding up, lining up, or matching covered symbols. Various patents have been issued relative to the substrate, security precautions, symbol coverings, and play styles for these types of games. They now account for roughly half of lottery sales in North America.

Another type of lottery ticket is the pull-tab ticket. It utilizes layers of cardboard glued together, with one layer having a series of perforations to form tabs. As the tabs are pulled away from the ticket they reveal symbols underneath and matching various combinations of symbols leads to the winning of prizes.

The last category of lottery type games are generally referred to as lotto games and are based on the concept of picking numbers. These games usually involve players picking their own numbers or using a computer or some other mechanism to chose the numbers, in an attempt to match the numbers against those drawn by the lottery. The lotto concept was originally developed in Italy about 1580. It evolved from bets being placed on which candidates were chosen at random to serve in the senate. The betting was so popular among the citizenry that the incidence of the drawings was increased and the names of senators changed to numbers.

One of the most successful lotto type games in modem times is commonly known as pick 3. Players choose three digits from zero to nine. The lottery chooses three digits from zero to nine. If the player's numbers match the lottery's numbers in exact order, a top prize is won. Other betting variations can be made where a player chooses to match the two front digits, the two back digits, the first and last digit, or some combination of the above. The game was typically run manually and illegally by crime networks for generations in large cities in the United States. State lotteries began to offer the game and computerized it so that it could be played efficiently on daily basis. A similar game has been developed for matching four digits.

Another typical lotto game in the United States and much of the rest of the world involves establishing a field of numbers from one to X. A player chooses, say, six of these numbers. The lottery then draws six numbers and a top prize is won if all numbers match in any order. The odds of winning the top prize can be altered by making X a larger number. In doing so there will be fewer winners of the top prize, which allows lottery sellers to offer a large jackpot prize. The prize can further be enhanced if no winner is chosen in a particular drawing. The lottery is then able to bank part or all of the non-won prize money from a previous drawing and offer it as an incentive for sales in a subsequent drawing, by increasing the size of the jackpot. In typical lotto games of this nature, subordinate prizes are also awarded for the matching of five, four, or even three of the six numbers drawn in any order. A typical prize structure for a pick 6 out of 30 game is to pay the jackpot prize if all 6 matches are correct, the approximate average odds of which are 1:593,775; pay $100 if there are 5 matches, the approximate average odds of which are 1:4,124; pay $10 if there are 4 matches, the approximate average odds of which are 1:144; and provide a free play if there are 3 matches, the approximate average odds of which are 1:15. Of course, the allocation of prize money to be divided is subject to selection or design for each ticket sold.

Keno is a lottery game in which the house draws a number of balls, say, from a group or field of balls that is larger than the number of balls selected by a player, but any match between the balls selected by the player to the balls drawn by the house counts. Lotto games are actually a subset of keno games; in lotto games, the number of balls drawn by the house or lottery equals the number of balls picked by the player.

In contrast, higher prizes can be offered by establishing a matrix of different size. If a game is chosen where the goal is to match 6 of 49, then a typical prize structure may be to pay out $2,000,000 if there are 6 matches, having an approximate average number of prizes for each drawing of less than one; $65,816.40 if there are 5 matches and a match with a bonus number, having an approximate average numbers of prizes for each drawing of 8; $1,784.80 if there are 5 matches, having an approximate average numbers of prizes for each drawing of 236; $68.10 if there are 4 matches, having an approximate average numbers of prizes for each drawing of 11,857; and $10 if there are 3 matches, having an approximate average numbers of prizes for each drawing of 213,760. A variation of this game with smaller top prizes but better odds is a pick 5 game, a game involving matching five numbers by the player's choice in the drawing in any order. There is also a variation with seven numbers.

Another variation on this concept has emerged in the last decade, typically called "rolldown" in the United States. In a rolldown lotto game everything proceeds as in a typical pick six or pick five lotto game, as above, except that in the event that there is no jackpot winner, prize money that has not been won is allocated to smaller prizes rather than being banked to enhance subsequent jackpots. Therefore the lack of a jackpot winner provides money to enhance the size of the prizes for lower tier winners. A typical prize structure and relative occurrences for a pick 5 out of 55 rolldown game may be to pay the jackpot if all 5 numbers are matched, the probability of which is 1:3,478,761; pay $500 if 4 numbers are matched, the probability of which is 1:13,915; pay $10 if 3 numbers are matched, the probability of which is 1:284; and pay $1 if 2 numbers are matched, the probability of which is 1:18.

In some instances a bonus ball can be added to a lotto game to create a prize smaller than the jackpot prize but larger than any of the other prizes. So, for instance, in a pick six lotto game a player matches only five of the six numbers drawn by the lottery; however, the lottery has also drawn a seventh ball, the bonus ball, which if paired with any five of the six other numbers drawn by the lottery creates a prize intermediate between matching five and matching the six original balls drawn.

In the last decade a new high jackpot game was developed called Powerball® (Multi-State Lottery Association, West Des Moines, Iowa). It was emulated by the Big Game in the United States (now Mega Millions), by Powerball in Australia, and similar games introduced in other countries. Unlike lotto, where the player picks six balls from one to N drawn by the lottery, the player instead chooses five numbers from one to X, and one number from one to Y. The lottery then draws five numbers from one to X and one number from one to Y from separate drawing machines and prizes are awarded according to various matches. The Powerball® lottery game is a combination of two lotto games in one. Both games must be won to win the jackpot prize. It is also designed so that any player matching the single ball drawn from the one to Y device wins a prize. The concept has been extraordinarily successful. Table 1 lays out a prize structure applicable to a typical Powerball® lottery game.

Mediation in suit of Freedom Wireless vs. BCGI

On June 13, 2005, the presiding judge in the case in D. Mass. between Freedom Wireless and BCGI suspended the non-jury trial on inequitable conduct and ordered mediation between BCGI and the other co-defendants in the lawsuit and Freedom Wireless, Inc. In the event that the mediation is unsuccessful and the parties are unable to reach a settlement, the non-jury trial is currently scheduled to resume on July 14, 2005 and could last approximately one to two weeks after it commences.

Some patents assigned to Freedom Wireless:

Claim 1:
A method of cellular telecommunications, comprising the steps of:

(a) establishing a pre-paid subscriber account balance linked to a pre-determined cellular telephone number assigned to a subscriber;

(b) writing the established pre-paid subscriber account balance to a database;

(c) initiating a cellular telecommunications event, by a subscriber, by the subscriber entering a dialed call destination number and transmitting the dialed call destination number as a dialed number identification system (DNIS) code and transmitting an automated number identification code (ANI) uniquely identified with a subscriber's cellular radiotelephone;

(d) receiving the DNIS and ANI at a cellular switch, the cellular switch recognizing the ANI as belonging to a pre-paid subscriber;

(e) sending an off-hook signal from the cellular switch to a host computer;

(f) the host computer serially sending a first signal to the cellular switch to obtain the DNIS signal therefrom, receiving the first signal, sending a second signal to the cellular switch to obtain the ANI signal therefrom, and receiving the second signal at the host computer;

(g) establishing communication between the host computer and a remote server computer, the remote server computer being in communication with the subscriber database, and validating the ANI received from the cellular switch as belonging to a subscriber;

(h) validating existence of a pre-determined subscriber account balance in the subscriber database based upon the DNIS and the time of day of the telecommunications event;

(i) establishing communications between the host computer and a local exchange carrier to obtain an available telecommunications line and sending the DNIS only if an affirmative validation at step (h) occurs;

(j) checking for an off-hook condition at the DNIS destination and, upon occurrence thereof, decrementing the subscriber account balance at regular intervals during the telecommunications event until an on-hook condition exists as the DNIS destination; and

(k) disconnecting the telecommunications event at the host server upon occurrence of a negative validation at step (h) or an on-hook condition exists at step (j).

5,854,975 filed November 15, 1995, issued December 29, 1998
Claim 1:
A cellular telecommunications system, comprising, in combination:

(a) a plurality of cellular radiotelephones each having a predetermined subscriber telephone number;

(b) at least one local exchange carrier;

(c) at least one cellular carrier;

(d) at least one cellular switch in communication with at least one local exchange carrier;

(e) at least one host computer in communication with said at least one cellular switch;

(f) processing means resident in the cellular switch for receiving signals from both the at least one local exchange carrier and the cellular carrier and sending signals to both the at least one local exchange carrier and cellular carrier;

(g) processing means resident in the at least one host computer for accepting and evaluating a subscriber database comprising a plurality of records representing subscribers to the cellular telecommunications system and including pre-paid account balance information for each subscriber; and

(h) at least one prepaid calling card having an encrypted number which allows a set value of air time to be added to a prepaid subscriber account balance by entering the encrypted number into the prepaid subscriber's cellular radiotelephone.

6,236,851 is is a continuation of U.S. patent application Ser. No. 08/559,283, filed on Nov. 15, 1995, now U.S. Pat. No. 5,854,975 which is a continuation-in-part of U.S. Ser. No. 08/364,479 filed Dec. 23, 1994 U.S. Pat. No. 5,722,067. [firm: Fish & Richardson P.C. ]

Claim 1:
A method of increasing a level of credit in a user account in a preauthorized telecommunications service, the method comprising:

receiving information from a wireless communications device, the information comprising an identifier, and user-input, obtained from a vended medium, that represents a specific, predetermined level of credit;

routing the received information to a wireless service provider based on the identifier; and

modifying an account at the wireless service provider based on the user-input, wherein modification of the account comprises increasing a level of credit available for wireless telecommunications service by the predetermined level of credit.

from the Boston Globe:

Boston Communications Group Inc. [BCGI], a Bedford, MA wireless technology company, is fighting for its life. In May, a federal jury slapped BCGI with a $128 million judgment for infringing on a patent owned by a tiny Phoenix company that covers prepaid cellular calling plans. If upheld, the judgment, which is three times BCGI's market value, would almost certainly drive the 400-person company into bankruptcy.

BCGI is waging a long-shot battle to overturn the judgment, arguing it's a victim of an absurdly broad patent that never should have been issued.

Freedom Wireless, a four-person company, has never set up an actual business serving customers; it seeks royalties from companies like BCGI, Verizon Wireless, and Nextel Communications Inc. At the heart of Freedom's 1996 patent is the idea of using a computer to match a cellphone number with a database showing how many paid-up minutes the cellphone owner has, then deciding whether to complete a call.

BCGI gets sympathy from some top patent lawyers.

''Some of these claims are very, very broad," said Sarah Chapin Columbia, of Choate Hall & Stewart in Boston, which has no involvement in the BCGI case. Columbia, who reviewed the case at the request of the Globe, said the Freedom Wireless patent ''is a very good example of a very broad business-method-type patent of the type that would be very difficult to invalidate."

Joseph G. Hadzima Jr., a senior lecturer at the Massachusetts Institute of Technology who specializes in intellectual property issues, said: ''You're going to see more of these cases, and they are going to get worse. You've got more and more of what we call 'patent trolls' that go and acquire IP just for the purpose of suing people."

One reason intellectual property specialists are so leery of business-method patents: It is almost impossibly difficult to document the so-called prior art, or what already existed when an inventor came up with a purportedly new idea. Finding evidence that a thing never existed -- such as a chemical compound -- is, as a rule, considerably easier than proving no one ever had a method of doing something.

US Representative Howard Berman, a California Democrat who has for years tried to change the patent process, refuses to take a yes-or-no position on business-method patents. But Berman has said ''we must pay attention to those who raise concerns about whether business method patents are being issued for obvious inventions, or for inventions determined to be novel, based on inadequate information about prior inventions."

BCGI and Freedom lawyers are preparing to meet this week in hopes of negotiating an alternative to the $128 million judgment, but have reported no progress in preliminary two-party talks. BCGI is set to return to US District Judge Edward Harrington's courtroom next week to argue that the Freedom Wireless patent should be invalidated, because its owners knew about but failed to give the Patent Office evidence that others had thought of the idea.

Freedom denies the allegation, calling it a standard sore-loser legal gambit.

Before BCGI rolled out its technology in 1996, prepaid wireless calling plans either required people to dial an 800-style number and then enter the number they wanted to reach, or buy a special phone that had the equivalent of a timer built in to shut off service when they used up their minutes.

Freedom's lawyer, William C. Price of Los Angeles, said the trial proved that Freedom had a patentable idea that BCGI violated.

''The best minds in the industry hadn't figured out how to do it" before Freedom's two inventors filed their patent, Price said.

''Once you see what somebody invented," Price added, ''it's easy to say it looked obvious in hindsight."