Friday, February 29, 2008

Global reasons to oppose the current patent reform proposals

Note the article by Morten Messerschmidt which includes text:

Now, however, life science imitators worldwide and their lawyers are gearing up to exploit the provisions in the pending patent reform bill in Congress. For years, makers of generic medicines have been working to weaken the protection of patents worldwide. For instance, Indian producers of generic medicines have advocated provisions in trade agreements that would allow developing countries to break U.S. patents. Now, the Indian generics industry is preparing to take advantage of the proposed patent reform to attack American life science innovators on their own soil. As the general secretary of the Indian Pharmaceutical Alliance recently put it: "Seeking invalidation of patent is likely to be a part of the patent strategy that Indian generics companies may follow in the U.S."

It is important to remember that such a systematic attack on U.S. patents will not only hurt innovative companies in the United States. There will be a global fall-out given the large amount of foreign innovators that rely on the U.S. patent system to protect their intellectual property. Indeed, the patent system is a key pillar of American "soft power," earning goodwill for the United States among the best and the brightest minds around the world while frustrating imitators and their lawyers.

It is probably no coincidence that the top 15 foreign recipients of U.S. patents per capita constitute a virtual who's who of the most important U.S. allies around the world: Besides Taiwan, Japan and Israel, the list includes Australia, Canada, Denmark, Germany, the Netherlands, Singapore, South Korea and the United Kingdom. Only Hong Kong and traditionally neutral Finland, Sweden and Switzerland do not have a military alliance with the United States.

Do academics deal with plagiarism? The "White House plagiarism" story

IPBiz found text at the bottom of a story on White House plagiarism of interest:

[Jeffery] Hart, an author and former professor at Columbia and Dartmouth, said he received [Tim] Goeglein's e-mail apology Thursday [February 28, 2008].

"I told him I was flattered he'd used it. It doesn't damage him in my estimation at all. I'm glad he spread the word."

But Hart said he wasn't condoning plagiarism.

"If it came in an academic context, it'd have to be dealt with," he said, but he feels this situation is different. "I think stuff flies around on the Web, in journalism and so on."

IPBiz can only wonder if Hart followed the Poshard or Tribe academic plagiarism matters. We saw on February 24 how Tim Russert "dealt with" academic plagiarist Doris Kearns Goodwin.

Of some interest is the following from AP:

BULLETIN KILL: White House Plagiarism

1 hour ago


The short headline on Washington story White House-Plagiarism, which moved at 6:35 p.m. EST, has been killed. A presidential aide resigned, not Bush.

A kill is mandatory.

Make certain the short headline is not published.

Substitute stories have since been filed under the same slug with the correct short headline.

See also:


1 hour ago

WASHINGTON — Kill the short headline in BC-White House-Plagiarism, 9th Ld, which moved at 6:35 p.m. EST. A presidential aide resigned, not Bush.

The AP

The AP story is as follows:

Bush Aide Resigns Because of Plagiarism

By TERENCE HUNT – 2 hours ago

WASHINGTON (AP) — A White House official who serves as President Bush's middleman with conservatives and Christian groups has resigned after admitting to plagiarism. Twenty columns he wrote for an Indiana newspaper were determined to have material copied from other sources without attribution.

Timothy Goeglein, who has worked for Bush since 2001, acknowledged that he lifted material from a Dartmouth College publication and presented it as his own work in a column about education for The News-Sentinel in Fort Wayne, Ind.

The White House said Goeglein has apologized for not upholding the standards expected by the president. A White House statement says the president was disappointed to learn of the matter and was saddened for Goeglein and his family. It said Bush has long appreciated his service and knows him to be a good person who is committed to his country.

THIS IS A BREAKING NEWS UPDATE. Check back soon for further information. AP's earlier story is below.

A blogspot blog makes front page of The Trentonian on 29 Feb. 08

IPBiz notes that a certain blogspot blog (homonym of "chaos") made the front page of the 29 February 2008 issue of The Trentonian. Indeed, a picture from the blog made the cover. The content is too much for IPBiz, but the link above may work.

The article is by Rick Murray and Andria Carter. The text includes the words "bold invention."

More on the PubPat loss in the re-exam of WARF's US 7,029,913

The reporting of AP in the matter of the “action closing prosecution” for the re-examination of WARF's US 7,029,913 patent on stem cells was garbled:

The patent office said last year it was preparing to toss out all three patents but the Wisconsin Alumni Research Foundation, which holds the patents, appealed. This week's ruling is the first in the appeal process.

In the re-examination of all three WARF patents, there were FIRST OFFICE ACTIONS which produced claim rejections by the USPTO, for which a response was made. A response to an Office Action is NOT an appeal. This week's "action closing prosecution" is not the "first in the appeal process." The AP report is very confused.

The AP report also stated: "The battle is hardly over. We're in this for the long haul," said John Simpson of the California-based Foundation for Taxpayer and Consumer Rights, one of two groups fighting the patents. Neither the AP nor Simpson mentioned that within the 82 pages of USPTO analysis (total document 85 pages) the basic lines of argumentation of PubPat and FTCR were repudiated. The basic references relied upon by PubPat and FTCR were determined by the USPTO to be non-enabling. Thus, the use of these references were about as significant as citing Jules Verne as prior art against a functioning submarine. The declarations of Trounson, Loring, and Melton (which have relevance ONLY to the inter partes proceeding as to US 7,209,913) had no impact on the USPTO decision. At page 46, the USPTO noted: Declarants avowal of obviousness is conclusionary and based on hindsight analysis. In other words, the declarants merely said Thomson's work was "obvious" without backing up their statements.

PubPat and FTCR may in fact continue to harass WARF by dragging out this matter. However, their firepower, comprised of non-enabling (science fiction) references and conclusory declarations, won't get far.

LBE post at Chronicle of Higher Education:

The legal and factual determinations in the “action closing prosecution” for the re-examination of US 7,029,913 suggest that the ex parte challenges to the other two WARF patents will also fail. The key references brought up by PubPat were found to be non-enabling. Although PubPat and FTCR will likely continue their challenge, their loss at this point greatly lowers their likelihood of success on appeal. Separately, the USPTO attached no great weight to the declaration of Trounson, now the head of CIRM.

Further details are available at IPBiz and in my article touching on stem cell patents which appears in 88 JPTOS 239 (2006).

LBE comment at californiastemcellreport.

Also, U.S. patent office upholds WARF patent

See also earlier IPBiz post:
PubPat, FTCR lose in inter partes re-exam of WARF stem cell patent

See also Jacob Goldstein, As Stem Cell Patent Fight Lingers, Science Marches On, which mentions
Challenges to Human Embryonic Stem Cell Patents , but which does NOT mention 88 JPTOS 239 (2006). Of the line: The Public Patent Foundation argues the patents should be invalidated, and has won some legal battles in the larger war, IPBiz predicts that the re-exam battles won by PubPat will ALL shortly be undone as to claim rejections in ALL three patents.

Recall some text on a 15 April 2007 posting of californiastemcellreport:

"WARF’s executives are understandably unhappy about the patent office’s decision because they think they will lose money. But they could save an enormous amount of money, and gain a great deal of good will, by quietly dropping their claims to human embryonic stem cells and allowing the judgment of the patent office to stand. If they did this, they could be seen as a supporter, not an exploiter, of scientific research."

It's glib to talk about the result of an Office Action before the patentee had a chance to respond. Now that the patentee responded, and the claims of the '913 are patentable, perhaps it's time for the "requesters to quietly drop their assertions and allow the judgment of the patent office to stand." IPBiz suspects that the requesters will NOT accept the decision of patentability made by the USPTO. Keep in mind, while this drags on, the claims are valid and enforceable.

Thursday, February 28, 2008

Patents on smells, malodor counteractants

Chandler Burr of the New York Times wrote:

Similarly, the scent makers — Symrise of Holzminden, Germany; Givaudan of Geneva; International Flavors and Fragrances of New York; and Takasago of Tokyo — spend billions on research to find new smell molecules, patent them and sell them. The innovative scents of these “captives,” as the patented molecules are known, are crucial to enticing consumers to buy the 600 or so new perfumes introduced every year and appealing to buyers of other fragrant products like soaps and air fresheners.(...)Like Pfizer, Abbott Laboratories or Novartis, Givaudan’s annual report prominently lists its new patents: “Three new molecules were introduced to the perfumers’ palette in the first half of 2007. Zinarine, natural green and tomato leaf notes with aspects of mint, fig, hyacinth; petitgrain Paradisamide, a long-lasting, fresh tropical fruit note with nuances of grapefruit, rhubarb and cassis; and Florymoss, a floral, green, mossy note which blends well with floral fruity and spicy accords.”

US 7,078,570 (to Givaudan) is a patent relating to molecules with fragrance. The abstract states: The present invention relates to substituted cyclohexenes, to their use as well as to their preparation method. These compounds have powerful long lasting natural fruity grapefruit notes with minty and fresh green tonalities.

Within the '570 patent, one has:


Synthesis of 2,6-dimethyl-6-(3-methyl-but-2-enyl)-cyclo-hex-2-enone

Odor: fruity, grapefruit, minty, bergamot



Synthesis of 2,2,6-trimethyl-6-(3-methyl-but-2-enyl)-cyclohex-3-enone

Odor: grapefruit, sage, saffron, lavander [sic]




Odor: minty, rhubarb, agrestic


Synthesis of 2,6-dimethyl-6-(3-methyl-but-2-enyl)-cyclo-hex-2-enol

Odor: grapefruit, vetiver, rhubarb, rosy

**Note separately -->


TABLE-US-00004 Pink grapefruit flavor for a yoghurt parts per weight Ethanol 805.2 Nootkatone (nature identical BV) 4.8 Orange oil 7.8-fold Brazil 34.0 Juniper berry extract CO.sub.2 10.0 Orange essence oil 10-fold Brazil 47.0 Orange oil 5-fold Palestine 50.0 Grapefruit base 48.0 1,2,6-Trimethyl-6-(3-methyl-but-2-enyl)-cyclohex- 1.0 2-enol 1000.0

In this pink grapefruit flavor 1,2,6-trimethyl-6-(3-methyl-but-2-enyl)-cyclohex-2-enol increases freshness and harmonizes well with its fruity-hesperidic note. The compound gives volume and a more natural taste in a yoghurt.

US 7,332,462 (to Givaudan) notes:

Several approaches have been used to counteract malodors. These approaches include masking by superimposing the malodor with a pleasant stronger odor, cross-adaptation by blocking of the malodor olfactory receptors, suppression of the malodor by mixing with an ingredient that causes a negative deviation of Raoult's law, elimination of the malodor by chemical reaction, absorption of the malodor by a porous or cage-like structure, and avoidance of the formation of malodors by such routes as antimicrobials and enzyme inhibitors. All of these approaches are deficient, however, because they provide a perfumer with only limited options for malodor counteractants. Accordingly, there is still a need for additional and improved malodor counteractancy compositions.

It is known that fragrances may be designed to counteract malodors. The fragrance materials, which are most common to mask a malodor are those that contain a carbon-carbon double bond conjugated with one or more carbonyl groups. Aldehydes are the most commonly used materials of this class for malodor counteractancy, the most commonly used for deodorant properties are trimethyl hexanal, other alkyl aldehydes, benzaldehyde, and vanillin. For example, European Patent Application 0404470 discloses the use of fragrance materials with good malodor reduction efficacy, and European Patent Application 0545556 discloses mixtures of fragrance materials that mask malodors. The use of fragrance materials alone, however, may limit the types of fragrances a perfumer can create.

Other materials have also been shown to have malodor counteractancy (MOC) properties. Schleppnik, U.S. Pat. No. 4,622,221 ("Schleppnik '221") discloses the use of cyclohexyl alcohols and ester derivatives in room fresheners. Kulka, U.S. Pat. No. 3,074,891 discloses esters of alpha-, beta-unsaturated monocarboxylic acids as malodor counteractants. Kulka, U.S. Pat. No. 3,077,457 discloses fumaric acid esters as malodor counteractants. Schleppnik, U.S. Pat. No. 4,187,251 discloses alkyl cyclohexyl alkyl ketones as malodor counteractants. Schleppnik, U.S. Pat. No. 4,310,512 discloses the use of derivatives of acetic and propionic acids, and Schleppnik et al., U.S. Pat. No. 4,009,253 discloses the use of 4-cyclohexyl-4-methyl-2-pentanone as a malodor counteractant. These materials, however, are not capable of neutralizing all types of functional groups contained in malodor molecules. All of the U.S. patents discussed above are hereby incorporated by reference as if recited in full herein.


We have surprisingly found that certain aromatic unsaturated carboxylic esters wherein the unsaturation is conjugated to both the aromatic ring and the carbonyl group portion of the carboxylic ester counteract malodors. This malodor counteractancy effect is additive to that achieved by some classes of known malodor counteractancy, ingredients and, therefore, provides an additional advantage to e.g., perfumers who require low odor intensity or neutral odor malodor counteractancy compounds More surprisingly, these compounds may act synergistically with specific known MOC compounds.

As used herein, malodor counteractancy ("MOC") means the reduction of the perception of the offensiveness of a malodor or malodors to the human sense of smell. In the present invention, MOC is evaluated as set forth in the Examples. As used herein, a MOC effect is said to be "additive" when the malodor counteractancy effect of a MOC composition is equal to the sum of the malodor counteractancy effects of each MOC compound in the composition alone. An effect is said to be "synergistic" when the malodor counteractancy effect of a MOC composition is greater than the sum of the malodor counteractancy effects exhibited by each MOC compound in the composition alone.

The present invention provides a composition containing a compound or mixture of compounds having low odor intensity or neutral odor that counteracts malodors.

US 6,803,033 notes:

Absorbent materials are well known in the art to absorb moisture or malodors in products such as sanitary products, diapers, cat litter, air fresheners, and the like. Often mixtures of absorbents are used to obtain optimum performance with good odor control. For example, Brewer, U.S. Pat. No. 3,789,797 discloses an animal litter prepared from alfalfa, bentonite, and a binder for absorbing and neutralizing the odors of animal waste matter. Dickey, U.S. Pat. No. 4,519,340 discloses an absorbent composition for absorbing animal waste made from a mixture of natural absorbents such as corn stalks, wood shavings, hulls of cereal grain, and other components. Goodwin et al., U.S. Pat. No. 4,571,389 discloses an absorbent based on rice hull ash with multiabsorbent purposes. Karapasha et al., U.S. Pat. No. 5,306,487 discloses a particle composition for use with diapers and the like, which is based upon a high absorbent gelling material combined with odor-controlling materials such as zeolites, for example molecular sieve zeolites marketed under the trade name of ABSCENTS (Union Carbide Corporation and UOP), and activated carbon. Guarracino et al., U.S. Pat. No. 6,096,299 discloses an odor control material based upon a zeolite with a specific particle size. Neckernann, U.S. Pat. No. 3,816,577 discloses a cherry pit extract for deodorizing animal waste.

In absorbent products, it is also desirable to release a deodorant or a masking scent to maintain a pleasant smelling environment. In such products, fragrances are normally added directly to a particulate material or pre-mixed into an absorbent carrier. It is recognized that absorbers, especially those with high odor absorption capacity, may reduce the impact of fragrances if the fragrance is added directly to the absorber or premixed with, e.g., a zeolite.

One embodiment of the invention is a process for absorbing moisture and/or malodor, and providing a fragrance to the surrounding ambience. This process includes (a) providing a delivery vehicle containing an enrobement material, a fragrance, and a fixative, wherein the delivery vehicle is a free flowing powder; (b) combining the delivery vehicle with an absorbent material to form a mixture; and (c) contacting the mixture of (a) and (b) with a moisture and/or a malodor source.

Another embodiment of the invention is a fragranced delivery vehicle. This fragranced delivery vehicle includes a fragrance composition dispersed in a fixative and an enrobement material, wherein the fragrance composition, fixative, and enrobement material, when combined, form a free flowing powder.


In the present invention, the delivery vehicle is composed of a fixative and a fragrance that is enrobed in enrobement materials, i.e., powder materials that are capable of absorbing oleophilic fragrance materials to such an extent that the resultant mixture is a free flowing powder. In the present invention, the enrobement materials include for example, clays; silicas; celites; zeolites; metal salts, including for example, phosphates; cellulose, such as methyl cellulose; starches, carbonates, such as sodium bicarbonate; borates, such as sodium borate; sulfates such as sodium sulfate; water soluble polymers, borax; and mixtures thereof.

PubPat, FTCR lose in inter partes re-exam of WARF stem cell patent

The positions taken by PubPat (Ravicher) and FTCR (Simpson) as to U.S. Pat. 7,029,913 of WARF on stem cells were fundamentally repudiated by the USPTO in an "action closing prosecution" mailed on Feb. 25. WARF News reported on 28 Feb. 08:

The decision affects the patent for primate and human embryonic stem cells known as "913" (U.S. Pat. 7,029,913). The decision to uphold the patent is the first in a review process that began in October 2006, when the patent office agreed to re-examine the patents following challenges brought by the New York-based Public Patent Foundation and the California-based Foundation for Taxpayer and Consumer Rights. This patent follows a different process than the other two patents, known as "780" and "806" (U.S. Pats. 5,843,780 and 6,200,806), which are still pending.

IPBiz notes that this was the "inter partes" re-exam, wherein declarations were made by Trounson (now head of CIRM) and Loring [among others]. It is "obvious" that these declarations did NOT carry the day. The decisions in the "ex parte" re-exams remain to be made. HOWEVER, the factual and legal positions taken by the USPTO as to the '913 patent STRONGLY SUGGEST the challenges to the '780 and '806 patents will fail.

In the (nonfinal) "action closing prosecution" (85 pages) mailed to Ravicher on 25 Feb. 08 in 95/000154, the USPTO noted that claims 1-3 of the '913 patent are patentable.

Page 6 of the action explicitly notes that the grounds put forth by Dr. Jeanne Loring were NOT adopted.

Page 8 of the action finds that the Williams '065 patent is not an enabling reference, EXACTLY as earlier predicted by IPBiz. This is more fully developed in later parts of the action, including a strong statement repudiating the position of PubPat/FTCR/Loring at page 14.

Page 9 of the action conceded the inapplicability of In re Best.

Page 14 of the action acknowledges that Williams does not teach an all purpose recipe for isolating and culturing embryonic stem cells from all species. The examiner concludes strongly at page 16: "Consequently, the disclosure of Williams '065 cannot be viewed as enabling the isolation of any domestic animal, much less a preparation of human/primate ES cells."

Page 18 of the action states: "Cherny '94 establishes that the Willaims [sic: Williams] '065 patent is not enabling for isolating and maintaining primate/human ES cells in culture."

Page 20 of the action acknowledges undue experimentation was required. The word "hindsight" appears on page 20.

At page 22 of the action, the examiner accepts the patentee's "failure of others" argument.

At page 25, the examiner takes a position different from that either of the requester or the patentee.

The now famous 1994 Bongso reference shows up at page 33 of the action. At page 34, the examiner finds that Bongo failed to isolate and maintain a long term stem cell line without LiF. At page 35, the examiner notes: "Bongso did not achieve the critical element of the claimed invention," so now it is finally "Bedtime for Bongso" as to the 1994 reference applied to these claims.

Page 41 acknowledges that Williams does not support a prima facie case of obviousnesss.

At page 45, the examiner acknowledges that "public acclaim" is a secondary consideration.

At page 47, the examiner touches on the "interested" quality of some of the declarants, and specifically acknowledges that some of the declarants had their own applications with claims that read on ES cells.

At page 53, Justice Kennedy and the KSR decision are mentioned.

Pages 78-79 summarize the reasons for patentability.

See also various IPBiz posts, including

See also a write-up by Jacob Goldstein at Health Blog.

See also

Patent allowance rate 44% in fiscal 2007 [?]

In prepared testimony for an oversight hearing before the SUBCOMMITTEE ON COURTS, THE INTERNET AND INTELLECTUAL PROPERTY COMMITTEE ON THE JUDICIARY on 27 Feb. 08, USPTO Director Jon Dudas stated:

Mr. Chairman, as we look to the future, we will make every effort to improve on our
successful record in fiscal year 2007. Our patent examiners completed over 362,000
patent applications in 2007, the largest number ever, while maintaining for the second
year in a row an examination compliance rate1 of 96.5 percent, the highest in a quarter of
a century. The allowance rate for patents is currently 44%. This is in contrast to
allowance rates in excess of 70% just eight years ago.

IPBiz notes that it is not totally clear whether the 44% relates to fiscal 2007 [as does the 362,000 number]
or for some other time period. There is no doubt the allowance rate has been going down in
the last few years.

Dudas also noted: With full access to our fee collections, the USPTO hired 1,215 patent examiners in FY
2007. We plan to hire 1,200 patent examining professionals each year through 2013.

Of the attrition rate issue, Dudas did mention the GAO report and noted:

1. The USPTO's attrition rate is lower (8.5%) than the average attrition rate for
Federal workers (11.2%).
2. The average attrition rate for USPTO patent examiners with 0-3 years experience
is 15.5%. The average attrition rate for USPTO patent examiners with 3-30 years
experience is 3.95%.
3. The attrition rate of patent examiners with 0-3 years experience, though
measurably higher than the rest of the patent corps, appears to be well below the
attrition rate experienced by similarly situated entities hiring more than 1,000
engineers in a year.
4. Examiners with the highest production requirements have the lowest attrition
rates, and the examiners with the lowest production requirements have the highest
attrition rates. In fact, 70% of all work in FY 2007 was done by examiners with 3
or more years of experience who exceeded their production goals by an average
of 8% and had an average attrition rate of 3.95%.

Dudas discussed peer-to-patent:

On June 7, 2007, the USPTO released details of a pilot project that could help expedite
and improve the examination process in computer technologies. The Peer Review Pilot
gives technical experts in computer technology, for the first time, the opportunity to
submit annotated technical references relevant to the claims of a published patent
application before an examiner reviews it.
When patent examiners have the best information in front of them, they are more likely to
make the correct decision. Examiners, however, have a limited amount of time to find
and properly consider the most relevant information. This is particularly true in the
software-related technologies where code is not easily accessible and is often not dated or
well documented.
The pilot is a joint initiative with the Community Patent Review Project (CPRP),
organized by the New York Law School 's Institute for Information and Policy. The pilot
began on June 15, 2007, and runs for one year.
Technical experts in the computer arts registering with the CPRP website review and
submit information for up to 250 published patent applications. To ensure a broad cross
section of computer technology is reviewed, no more than 15 applications are allowed
from any one person or organization.

To date, 57 applications have been volunteered to participate in this pilot from over 15
different corporations and independent inventors. Over 170 pieces of prior art have been
submitted to the 45 applications that have published so far in the pilot.

--> Of post-grant review (opposition), Dudas said:

Consistent with USPTO recommendations, pending patent modernization legislation
includes provisions to establish new post-grant review procedures at the USPTO. The
provisions are intended to improve upon existing administrative reexamination
alternatives and provide a quicker, lower cost alternative to expensive litigation in
reviewing patent validity questions. Such procedures would complement rather than
displace ongoing quality-focused initiatives at USPTO.

The USPTO has suggested to Congress that the legislation, as currently drafted, be
revised to more closely align with the post-grant review proposal drafted by the USPTO.

The USPTO proposal and both pending bills establish a post-grant review procedure
under which any person may request the USPTO to cancel as unpatentable any claim of a
patent within 12 months after issue or reissue. While the House and Senate bills vary as
to a second window of opportunity for challenging a patent, the USPTO supports
establishment of a second window that would open for a period of six months after a
petitioner receives notice from a patent holder alleging infringement and shows
substantial economic impact.

[Text of prepared testimony]

See 2/27 post at PatentDocs: House Subcommittee Holds USPTO Oversight Hearing

Surfer plagiarism and rules for bloggers

An article about plagiarism by a columnist (on surfing) at the Ventura County (Calif.) Star included the text:

"We know the rules of usage are much looser online, particularly in the world of bloggers," Moore said in the Star article. "But our readers expect us to provide complete attribution when we use material from another source. This did not meet that standard and is a breach of our ethics."

[from article in Editor & Publisher titled: 'Ventura County Star' Cans Freelance Surfer Columnist For Plagiarism ]

IPBiz queries about ethical issues involved when law review articles cite to blogs instead of the primary source which is used by the blogs?

See IPBiz post: Citations of blogs by law reviews. See also

This secondary citation matter can quickly morph into a phantom citation issue, wherein urban legends are born. One example of this is Lemley's "transistors only for hearing aids" cite, which ultimately traces back to a short piece in the New York Times (including "Our Miss Brooks") which does NOT support Lemley's assertion.

Wednesday, February 27, 2008

Harris: "patent cost reduction via outsourcing"; "Patent Hall of Fame"

A sub-theme in the patent troll tracker/Rick Frenkel matter was Frenkel's discussion of the Scott Harris meltdown; Legal Week noted:

Niro had a contentious relationship with the anonymous blogger since a Troll Tracker post criticised Niro last year. After Niro filed a patent suit for a client against Google, Frenkel was among the first to report that Scott Harris, a Fish & Richardson partner based in San Diego, was listed as the inventor on the patent while his firm was also representing Google. Harris resigned shortly after.

Recall in court papers ("paragraph 9") surrounding the Harris matter:

Mr. Harris has been involved with teaching patent law to attorneys and
technologists. He has taught basic patent law for the Patent Resources Group and has presented a primer class on software patenting to more than 30 companies. He has been invited to present a class on patent cost reduction via outsourcing and teaches a one-hour class called “Patents for Kids” (a program designed to teach young people about intellectual property); both presentations take place throughout the country. Mr. Harris has been extensively quoted in national and local publications concerning issues involved with patent law and was named the top patent prosecuting attorney in the IP Law & Business “Patent Hall of Fame” in 2003.

Note separately Fish's response:

Fish & Richardson lacks sufficient information to form a belief as to the
truth of the allegations contained in paragraph 9, and therefore denies them.

Separately, Patently-O had written in October 2007: For its part, Fish & Richardson allegedly claims title to the Harris patent – which was apparently invented while Harris was working at Fish. Thus, the Harris matter has an issue similar to that which appeared before the CAFC in DDB v. MLB. The priorart blog has a timeline. The Chicago IP Litigation bloggives some detail on the various motions filed in the Harris / Fish matter.

An article by Jessie Seyfer in The Recorder on 19 Oct. 2007 touched on the "employment contract" issues:

Harris signed an employment contract, but it does not contain any clause devoted specifically to personal patent activity.

Nonetheless, Fish alleges Harris stepped over the broader ethical boundaries of the contract, like devoting his full "legal and business time to Fish & Richardson."

But Harris says his bosses all knew about his outside interest in patents. [IPBiz: reminds one of what Barstow said of his Schlumberger bosses in the DDB v. MLB matter.]

"I had told various people over the years that I was an inventor, and that I was doing these things," he said, adding that partners had to have seen the many plaques displaying his patents on his office's wall. "And nobody seemed to see the problem at any point. They're trying to characterize it now that I never went through formal channels. Fish had no formal channels."

Fish alleges that Harris used firm resources, including secretarial and paralegal personnel, to file as many as 25 patents while working as an attorney there.

A 2005 meeting at Loyola (LA) law school on Cost-Effective Patents gives a bio for Harris:

Scott Harris is a principal of Fish & Richardson. He is a member of the bar in California, Washington, D.C. and Pennsylvania. Harris was named to the Patent Hall of Fame by I.P. Law & Business, and he has a B.S. and a J.D. from George Washington University.

The October 2003 issue of IPLW has an article by Emily Friedlander titled The Write Stuff: The Patent Hall of Fame which includes the text:

-->As Merchant & Gould's Randall Hillson puts it: "An awful lot of IP is driven by inventors, but [IP strategy] is not an issue of whether something is a good invention. It's an issue of what's a good business investment."


Last July we sent out requests for nominations to 69 law firms. These firms had been named by Fortune 100 companies as primary prosecution firms in our survey, "Who Protects IP America," [July 2003]. Thirty firms submitted 44 nominations, and we selected ten Hall of Famers and five honorable mentions. We did not consider in-house lawyers or IP litigators who once did prosecution.<--

[IPBiz notes that the "patent hall of fame", which seems to derive from the one
article in 2003 is separately an interesting concept.]

See also

Legal Week on Patent Troll Tracker

Separately, on POPA, note February 2008 newsletter which discusses POPA's opposition to S.1145 on patent reform and gives details of the discussions on the current collective bargaining agreement.

Tuesday, February 26, 2008

Timothy Noah: too little, too late on "Meet the Press"?

On Tuesday, Feb. 26, 2008, Timothy Noah of Slate observed of plagiarist Doris Kearns Goodwin discussing plagiarism on Meet the Press (on Feb. 24):

Unbelievably, Russert failed to note (and Goodwin failed to remind him of) an important source of Goodwin's expertise on this topic: (...)

IPBiz had noted this irony on February 24: Russert lapses on "Meet the Press" on 24 Feb 08

Noah had text from Goodwin: They've all picked up language from one another. They're like an old couple that begins to look like each other at the end of their lives, and they've, they've probably listened to their colleagues on the debating trail more than they have their wives or their spouses. So in some ways it's good for the party to have the best lines that everybody in that party comes up with, the best ideas and patterns. (...) It's inevitable that those patterns are going to get in their heads. And you know, we can't make too much of this. This is the spoken word. It's different from the written word, and it becomes part of what's in there. As you said, there's not that much in their heads anymore that's coming in that's new. So all that's in there is what was there before.

See also signsonsandiego:

But Russert's loyalty to people with tarred pasts also extends to academic pals. I just got around to watching Sunday's "Meet the Press" last night and was flabbergasted to see that Russert had historian Doris Kearns Goodwin as his main commentator on the Obama-Clinton "plagiarism" flap.

On Feb. 26, Hillary mentioned Saturday Night Live (of Feb. 23) and suggested the press was coddling Obama.

Will certain IP professors get the Jarvik treatment?

After the flap about Dr. Robert Jarvik, one wonders if we will see a similar crack down on certain intellectual property professors billing themselves as "patent attorneys" when they are not in fact registered patent attorneys.

Cabilly patent faring poorly in re-examination

Reuters noted: Genentech Inc. said on Monday [25 Feb 08] the U.S. Patent and Trademark Office [USPTO] has rejected the validity of a key patent that governs the biotechnology company's method of producing some of its drugs. The Cabilly patent involves a method of producing antibodies and antibody fragments, a crucial step in the manufacture of biotechnology drugs.

See also

USPTO gives final rejection in re-exam of Cabilly patent, US 6,331,415

WSJ on Troll Tracker Frenkel

Stuart Weinburg discussed the unmasking of the patent troll tracker as Cisco's Rick Frenkel, including issues of corporate permission/corporate sponsorship.

Cisco spokesman John Noh said the blog represented the personal opinions and personal research of Mr. Frenkel and that Cisco didn't fund, edit or maintain it in any way.

"Many Cisco employees maintain personal blogs and their opinions do not necessarily represent that of Cisco's, and as long as those blogs do not violate our code of business conduct, Cisco does not interfere with their expression of free speech whatsoever," Mr. Noh said.

Mr. Noh said for now, it is up to Mr. Frenkel to decide if he wants to maintain the blog.

IPBiz notes that one can find different corporate viewpoints on employee blogs merely by viewing IPBiz.

Separately, of anonymity:

Joe Miller, professor at Lewis & Clark Law School in Portland, Ore., said he can appreciate why Mr. Frenkel might have wanted to maintain his anonymity. "I would appreciate why someone would conclude why people would not give the facts a fair hearing if they knew the facts are from a particular company," he said.

However, Mr. Miller added that anonymity also has a dark side, as it allows people to say scurrilous, baseless and offensive things about people without being held accountable.

Another dark side of patent reform is the lemming like behavior of certain intellectual property professors on patent reform, in which they adopt certain positions BECAUSE OF expressed positions of (identified) other people.

NetworkWorld notes: Cisco itself is very vocal in its fight for patent reform of what it describes as the "abuses" of the current patent system. According to a statement about patent reform on its Web site, Cisco states: "The patent litigation system today is unbalanced and patent speculators are exploiting the system's unfairness to coerce high settlements from productive companies. The patent litigation rules function less and less as a neutral system for resolving disputes, and instead encourage winner-take-all, jackpot-like strategies. These lawsuits rob our economy of billions of dollars that would otherwise be invested in jobs, innovation, consumer savings and shareholder value."

See also

Patent Troll Tracker is Cisco's Rick Frenkel


Note also the copied image at blogdimension.

In passing, ABC channel 2 IN Baltimore on Feb. 26 discussed the website I-doser, troll tracker both indulge
in simulated realities.

Note a comment at networkworld:

Cisco is obviously behind this whole thing. While Chandler spends time in Washington lobbying for a bill to maximize Cisco's gains from theft if IP, Frenkel spews his drivil to the IP community to arm his boss in Washington.

Why is it that Troll Tracker blasts non-practicing entities and the "troll jurisdictions" of Texas and Wisconsin, while Cisco uses the same jurisdictions for patent litigation.

In fact, according to its 10-K, the only IP litigation it deems material is the one IT intitiated in Texas!

At the same time, they are lobbying for the Reform Act which will preserve its ability to use Texas but take it away from those that don't make a product!

Patents stimulate only superficial research?

IPBiz found a Kinsella comment on patenthawk (re: Rick Frenkel) of interest and reproduces it here:

In fact, many studies have been done. None of them show that it's a net gain; most show that it's a net loss, or difficult to answer. See: my article There's No Such Thing as a Free Patent,; also
Kinsella, Revisiting Some Problems With Patents; Jonathan M. Barnett, Cultivating the Genetic Commons: Imperfect Patent Protection and the Network Model of Innovation, 37 U. San Diego L. Rev. 987, 1008 (2000) (“There is little determinative empirical evidence to settle theoretical speculation over the optimal scope and duration of patent protection.”) (citing D.J. Wright, “Optimal patent breadth and length with costly imitation,” 17 Intl. J. Industrial Org. 419, 426 (1999)); Robert P. Merges & Richard R. Nelson, “On the Complex Economics of Patent Scope,” 90 Colum. L. Rev. 839, 868-870 (1990) (stating that most economic models of patent scope and duration focus on the relation between breadth, duration, and incentives to innovate, without giving serious consideration to the social costs of greater duration and breadth in the form of retarded subsequent improvement)); Tom W. Bell, Prediction Markets for Promoting the Progress of Science and the Useful Arts, 14 G. Mason L. Rev. (2006) (“But [patents and copyrights] for the most part stimulate only superficial research in, and development of, the sciences and useful arts; copyrights and patents largely fail to inspire fundamental progress. … Patents and copyrights promote the progress of the sciences and useful arts only imperfectly. In particular, those statutory inventions do relatively little to promote fundamental research and development ….”); Thomas F. Cotter, “Introduction to IP Symposium,” 14 Fla. J. Int'l L. 147, 149 (2002) ("[E]mpirical studies fail to provide a firm answer to the question of how much of an incentive [to invent] is necessary or, more generally, how the benefits of patent protection compare to the costs."); Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Northwestern U. L. Rev. (2001), at p. 20 & n. 74 (“The patent system intentionally restricts competition in certain technologies to encourage innovation. Doing so imposes a social cost, though the judgment of the patent system is that this cost is outweighed by the benefit to innovation. … There is a great deal of literature attempting to assess whether that judgment is accurate or not, usually without success. George Priest complained years ago that there was virtually no useful economic evidence addressing the impact of intellectual property. … Fritz Machlup told Congress that economists had essentially no useful conclusions to draw on the nature of the patent system.”); Julie Turner, Note, “The Nonmanufacturing Patent Owner: Toward a Theory of Efficient Infringement,” 86 Cal. L. Rev. 179, 186-89 (1998) (Turner is dubious about the efficacy of the patent system as a means of inducing invention, and would argue against having a patent system if this were its only justification); F.A. Hayek, The Fatal Conceit: The Errors of Socialism (U. Chicago Press, 1989), p. 36 (“The difference between [copyrights and patents] and other kinds of property rights is this: while ownership of material goods guides the use of scarce means to their most important uses, in the case of immaterial goods such as literary productions and technological inventions the ability to produce them is also limited, yet once they have come into existence, they can be indefinitely multiplied and can be made scarce only by law in order to create an inducement to produce such ideas. Yet it is not obvious that such forced scarcity is the most effective way to stimulate the human creative process. I doubt whether there exists a single great work of literature which we would not possess had the author been unable to obtain an exclusive copyright for it; it seems to me that the case for copyright must rest almost entirely on the circumstance that such exceedingly useful works as encyclopedias, dictionaries, textbooks, and other works of reference could not be produced if, once they existed, they could freely be reproduced. … Similarly, recurrent re-examninations of the problem have not demonstrated that the obtainability of patents of invention actually enhances the flow of new technical knowledge rather than leading to wasteful concentration of research on problems whose solution in the near future can be foreseen and where, in consequence of the law, anyone who hits upon a solution a moment before the next gains the right to its exclusive use for a prolonged period”, citing Fritz Machlup, The Production and Distribution of Knowledge (1962))

***Of Hayek-->

Monday, February 25, 2008

IBM's patent app for "Method and structure for automated crediting to customers for waiting"

As IBM, Cisco, and Microsoft continue to "talk the talk" on patent quality, one observes another interesting patent application from the group: Method and structure for automated crediting to customers for waiting to IBM (published application 20080046385, application 11/492043).

The first claim is

A system for reducing customer dissatisfaction for waiting, said system comprising: a queue monitoring subsystem that detects an entry of a customer into a waiting queue;a reward computing subsystem that calculates a reward for the customer for being in the waiting queue; anda communication subsystem to communicate the reward to the customer,wherein at least one of said queue monitoring subsystem, said reward computing subsystem, and said communication subsystem is automated.

The inventors are Parijat Dube, Giuseppe A. Paleologo, and Laura Wynter.

IPBiz calls the reader's attention to the word "queue." More perceptive readers might remember US patent 6,329,919 titled System and method for providing reservations for restroom use (also to IBM but later withdrawn). The first claim of that patent was rather simple:

A method of providing reservations for restroom use, comprising:

receiving a reservation request from a user; and

notifying the user when the restroom is available for his or her use.

The summary of the '919 noted: In one embodiment, the system provides reservations for restroom use on airplane which improves airline safety by minimizing the time passengers spent standing in the aisles. Passengers on an airplane may submit a reservation request for using the restroom. The reservation system processes the requests and assigns a reservation number for each request. The system then notifies the passenger when a restroom becomes available for his or her use. IPBiz notes that a simpler solution to the "standing in the aisles" problem has been obtained.

Many patent reformers neglect to mention the '919, and those that do talk about the silly patent rarely mention it was to IBM. One wonders how frequently 20080046385 will be mentioned.

See also

IBM to put patent filings on-line, but does this really matter?

Factors to evaluate a patent in addition to citations ["The results of the comparisons reveal that an adverse conclusion might be drawn if a patent is estimated only based on citations."]

The broken patent system of Alex Chachkes: fact or fiction?
["Chachkes missed the standard "peanut butter and jelly" and swing patents, but he also missed IBM's "queue for airplane toilet" patent and "outsourcing" application."]

IBM withdraws business method patent on outsourcing of services

Microsoft "spyware" for monitoring activities?

Alan Murray of WSJ on bad patents
["There is a problem in the patent world, but it isn’t companies that don’t commercialize their own patents. Rather, it is bad patents. These days, too many are granted, too often for "inventions" that seem to the initiated to be as obvious as air-such as one patent granted in 2002, and later rescinded, for an online restroom-reservation system. [IPBiz note: Murray fails to mention that this patent was to IBM.]"]

Cacaphony missing some references?

It's clear that the "patent reformers" and incremental innovators are not walking the walk on patent reform.

Sunday, February 24, 2008

Law reviews citing blogs: good thing or bad thing?

Further to an IPBiz post [Do law schools promote a culture of copying?] and related to an ezine article Internet Publishing: Online Today, But What About Tomorrow Or Where Have You Gone, 406,302? :

one IPBiz reader wrote:

per law review citations to blogs:

A) Don't you think citing to blogs is dangerous, given they can
disappear from the web?? In a sense, a blog is a single volume of a
work at ONE library. If that library says "we don't want to shelve
anymore", the volume can disappear. HOWEVER, in the case of most law
reviews, I'll bet there is more than one copy, at more than one
institution-so it is difficult to lose the information. With a blog,
all can disappear in an instance (fire, computer crash, ....) even
without blogmaster intentions.

I'm willing to give citations to the web, if I am teaching a topic, but

I'd never cite such for a journal publication.

B) A) is an example of unintended consequences. Having information
your fingertips on line, means one never had to go to the
libraries have less demand to subscribe to paper journals, they move to

"on line journals" and Lexis/Nexus. The library now has "the past",
the "current" is in a much more insecure, not-long-lasting, volatile

Likewise, plagiarism is an unintended consequence of "copy-and-paste"

Separately, IPBiz notes another way of measuring significance might be
to count the number of times an article is copied on the web. Further,
extra points should be given when the copyist removes the original
author's name and substitutes his own.

Patent Troll Tracker is Cisco's Rick Frenkel

Rick Frenkel, Director, Intellectual Property at Cisco Systems, Inc. and law school grad of Loyola Marymount and registered patent attorney 47578, is the "patent troll tracker."

In the context of the WARF suit against Intel, Frenkel was quoted:

"The big issue we're seeing is that the number of patent lawsuits filed by entities that make no products is overwhelming," said Rick Frenkel, Cisco Systems' director of intellectual property.

Ten years ago, Cisco faced one or two patent infringement cases a year, mostly from competitors, Frenkel said. Now, it's sued about once a month by "entities" -- some with no connections to inventors -- that make money by licensing patents and suing companies for infringing on them, he said.

trolltracker.blogspot notes:

So now that it’s happened, let me introduce myself. My name is Rick Frenkel. I started in IP over 10 years ago, as a law clerk at Lyon & Lyon in Los Angeles. After a few years there as a law clerk and attorney, I litigated patent cases for several years at Irell & Manella. Two years ago I moved to the Valley and went in-house at Cisco. In my career, I have represented plaintiffs, defendants, large companies, small companies, individual inventors, universities, and everything in between. I currently work at Cisco.

trolltracker also notes:

Although my direct manager at Cisco knew I was writing the blog, the content was entirely my own, and nobody at Cisco ever wrote any content for me or made any attempts to edit me, nor was anyone up the chain above my direct manager aware that I was the author.

Cisco respects intellectual property, and indeed is one of the most innovative companies in the world. Our patent portfolio, consistently ranked as one of the tops in our field, is the result of numerous of hours spent by our hard-working engineers. Our research and development is significant; during the last fiscal year, Cisco spent over $4.5 billion in developing innovative new products and solutions. Cisco also has a culture of openness and transparency. Within Cisco, there are both company blogs, and also blogs by employees on their own time. This blog is in that tradition, and I am proud to be part of a terrific organization.

IPBiz adds, in the spirit of openness and transparency, that Cisco hosted a fundraiser for Senator Patrick Leahy, who is pushing S.1145 on patent reform.

Also in the spirit of openness and transparency, IPBiz notes a few of the multipatent families of Cisco:

US 7,334,229 [The application filed December 20, 2002, is a continuation of, claims priority to, and claims the benefit of the filing date of U.S. Utility patent application Ser. No. 09/239,499, filed Jan. 28, 1999, now U.S. Pat. No. 6,560,627 B1.]

US 7,334,119, Method, system, apparatus, and program product for temporary personalization of a computer terminal [This application is a continuation of and claims priority of U.S. patent application Ser. No. 10/626,367 entitled METHOD, SYSTEM, APPARATUS AND PROGRAM PRODUCT FOR TEMPORARY PERSONALIZATION OF A COMPUTER TERMINAL, filed by Gentil, et al. on Jul. 23, 2003, now U.S. Pat. No. 7,162,628, the entire contents of which are incorporated herein by reference as if originally set forth herein.]

US 7,334,035 Self modifying state graphs for quality of service classification [
This is a continuation of application Ser. No. 09/439,116 filed on Nov. 12, 1999 now U.S. Pat. No. 6,912,570]

US 7,333,437 [This application is a continuation of U.S. patent application Ser. No. 09/220,321 filed Dec. 24, 1998 now U.S. Pat. No. 6,507,563 by Gilbert D. Glick and entitled METHODS AND APPARATUS FOR CONTROLLING CONGESTION WITHIN DIVERSE PROTOCOL STACKS. That application is incorporated herein by reference in its entirety and for all purposes.]

US 7,333,432 [This application claims benefit as a Continuation-in-part of prior application Ser. No. 10/076,258, of Dror Koren and Gil Sheinfeld ("Koren"), filed Feb. 12, 2002, the entire contents of which are hereby incorporated by reference as if fully set forth herein, under 35 U.S.C. .sctn.120.]

US 7,328,274 [This application is a continuation of U.S. patent application Ser. No. 10/256,787, entitled "Quality of Service in a Gateway" by Shujin Zhang and Tianji Jiang, filed on Sep. 26, 2002, now U.S. Pat. No. 7,130,917.]

first claim: An apparatus comprising: a host object data structure definer configured to define a host object data structure corresponding uniquely to a user when a user logs in, said host object data structure having a provisioning scheme indicating a limit on traffic sent to or from said user; and a traffic discarder coupled to said host object data structure definer and configured to discard traffic sent to or from said user that exceeds said limit.

[The product of one of the most innovative companies in the world?]

In a post Lawyer 2 Lawyer Internet Radio Trolls the Patent Blogs, there was no mention of IPBiz posts on the Frenkel matter.
Not a very effective job of trolling by J. Craig Williams.

Health Net loses on "health insurance cancellation" case

When Health Net learned Bates had cancer, and dropped her in January 2004, Bates was stuck with more than $129,000 in medical bills and was forced to stop chemotherapy for several months until she found a charity to pay for it.

The private arbitration judge (Judge Sam Cianchetti, a retired Los Angeles County Superior Court judge ) wrote:

"Health Net was primarily concerned with and considered its own financial interests and gave little, if any, consideration and concern for the interests of the insured,

The LA Times noted:

At the arbitration hearing, internal company documents were disclosed showing that Health Net had paid employee bonuses for meeting a cancellation quota and for the amount of money saved.

"It's difficult to imagine a policy more reprehensible than tying bonuses to encourage the rescission of health insurance that keeps the public well and alive," the judge wrote.

Russert lapses on "Meet the Press" on 24 Feb 08

Interviewing (now-declared presidential candidate) Ralph Nader on 24 February, Tim Russert suggested that Nader might be perceived as a Wendell Wilkie, repeatedly running hopeless presidential campaigns. Later in the show, Russert acknowledged he meant to say Harold Stassen. Continuing to screw up, Russert later spoke of "Samuel" Blaine losing the nomination to Hayes [in 1876].

James G. Blaine did lose the Republican nomination in 1876. Blaine was introduced to the convention by Robert Ingersoll. Ingersoll had used a speech style in which the speaker says: "I see....", later used by Franklin D. Roosevelt. Ingersoll wrote:

"I see a world where thrones have crumbled and where kings are dust. The aristocracy of idleness has perished from the earth.

"I see a world without a slave. Man at last is free. Nature's forces have by Science been enslaved. Lightning and light, wind and wave, frost and flame, and all the secret, subtle powers of earth and air are the tireless toilers for the human race.

"I see a world at peace, adorned with every form of art, with music's myriad voices thrilled, while lips are rich with words of love and truth; -- a world in which no exile sighs, no prisoner mourns; -- a world on which the gibbet's shadow does not fall; -- a world where labor reaps its full reward; where work and worth go hand in hand; where the poor girl trying to win bread with the needle -- the needle that has been called 'the asp for the breast of the poor,' -- is not driven to the desperate choice of crime or death, of suicide or shame.

"I see a world without the beggar's outstretched palm, the miser's heartless, stony stare, the piteous wail of want, the livid lips of lies, the cruel eyes of scorn.

"I see a race without disease of flesh or brain, -- shapely and fair, -- the married harmony of form and function, -- and, as I look, life lengthens, joy deepens, love canopies the earth; and over all, in the great dome, shines the eternal star of human hope."

For himself, he said that when he struck the balance, this life had been to him worth living. This was optimism.

Nader himself did not appear sharp. His rapidly delivered responses appeared well-rehearsed (and canned), but when he got off track, he fumbled as in referring to the once-Florida Secretary of State as Katherine Bush. Stassen at least was funny in his self-deprecation. Unless Nader polishes up his approach to delivering his message, he is well on his way to becoming an unpleasant anachronism.

Of "canned lines," the Meet the Press panel got into the Obama / Clinton plagiarism polemic. Kind of funny that Doris Kearns
Goodwin of the panel, a known plagiarist, was discussing plagiarism of others. There was a line about an old couple who begin to look like each other and evolve into one another. Russert used his "patented" clip technique to show similarities between speeches of Hillary and, prior to her, Bill and the former North Carolina Senator (you know, the plaintiff's lawyer).
The panel pointed out that the candidates had no time to read or to think, and sort of just ended up copying one another.
Gee, that sounds like intellectual property professors discussing patent reform!

One panelist pointed out that Clinton's plagiarism attack was a specific tactic to address Obama's perceived general advantage on the authenticity front. IPBiz notes the plagiarism charge won't get any traction.

See also

from IPFrontline:

One can find similar statements, critical of the patent system, in various law review articles, and one can find similar text in the book Innovation and Its Discontents. Nevertheless, one patent attorney wrote: "The critics consist of a tightly knit group of university professors and non-patent attorneys who are critical of the patent system and who favor weakening patent rights. The critics publish countless articles every year and repeatedly cite to one another's work, if not simply to repeat it or provide a synopsis thereof in a different venue, which gives the impression that there are numerous opinions consistently critical of the patent system. This coterie of most frequently published patent critics is so insular and close-knit that no effective independent review of their work is likely."
Footnote 1 of the article cites the Jaffe/Lerner book and states "most articles critical of the patent system published since this book [2004] represent synopses of the book in one form or another." [See Patrick Doody, The Patent System is Not Broken, 18 Intellectual Property & Technology Law Journal 10 (December 2006)].

There is merit to the suggestion that the group of legal academics who criticize the patent system are close knit and not entirely imaginative in their analyses. It is also correct that the publications of some accept the conclusions of the Jaffe/Lerner book as a given (for example, 59 SMU L. Rev. 1717).

Blackboard wins over Desire2Learn in ED Texas

On Feb. 22, 2008, a jury in ED Texas (Lufkin) handed Blackboard a win over Desire2Learn in a patent infringement suit. Desire2Learn, which has its headquarters in Kitchener, Ontario argued invalidity and unenforceability (inequitable conduct).

One commenter at Chronicle of Higher Education wrote:

I work in the elearning group at a large university that uses Blackboard. During the past few years Blackboard has turned into a bully. Innovation and customer service have reached a low point. Now that Blackboard has won the lawsuit, it will only get worse. Next week our group will choose a new LMS to replace Blackboard for the Fall semester.

See also: [The patent in question is 6,988,138.]

Saturday, February 23, 2008

Footnoting a personal conversation?

With respect to an earlier IPBiz post titled
Do law schools promote a culture of copying?
, please note the following text from the Volokh Conspiracy:

People sometime ask whether it's proper to cite blogs in a law review article. A few thoughts:

1. Crediting Ideas, Big or Small: Not only is it proper to cite blogs to credit them for their ideas -- it's mandatory, if an observation in your article was borrowed from someone else's blog post, or even just if the blogger had the original observation first. That's the same rule as when you borrow from a law review article, an op-ed, or even a personal conversation.

2. But Check with the Author: It's true that blog posts are often less thought-through than articles or op-eds. (They're also unedited, but many op-eds aren't substantially edited by editors, and certainly not by editors who have knowledge of the law; yet op-eds are certainly citable.) It therefore makes sense to check with the author before citing the post, in case the author wants to elaborate on it, or even recant it in some measure -- it's not necessary, but it can be helpful.

3. Supporting Authority: If, however, you're making an assertion that you want to rely on without proving yourself, and therefore want to cite supporting authority for it -- as opposed to giving credit to the originator of an idea, or referring to a particular counterargument that was seems to be present only in a blog post -- then you should cite a law review article or a book. Those are the sources that are more likely to be the more thought-through and detailed expositions of the argument.

4. Factual Assertions: Finally, you should not cite blog posts for specific facts quoted or paraphrased by those blog posts, whether they are facts about cases, statutes, social science data, or whatever else. Find, read, quote, and cite the original source instead. But of course that's true not just as to blog posts but also as to articles, books, and other sources -- if they are quoting or paraphrasing another source, you should go to the original. Don't let the intermediate source's errors and oversimplifications become your errors and oversimplifications.

Citations of blogs by law reviews

IPBiz has been fascinated by the discussion on the frequency of citation by law review articles of blogs. See for example TheRaceToTheBottom and Orin Kerr/Volokh Conspiracy . One comment on racetothebottom was of interest: I agree with Geoff that it would be interesting to see break-out citations to substantive legal issues beyond blogging. IPBiz was interested to see "how" blogs were being cited in law review articles, and studied some cites to Patently-O. A short list follows.

1. Andrew Beckerman-Rodau, 89 J. Pat. & Trademark Off. Soc'y 631 (2007)

Text in which footnote appears: A jury found that Vonage infringed three of Verizon's patents.
Footnote 129: Verizon v. Vonage, Patently-O Blog, April 12, 2007, (last visited July 19, 2007).

2. Blake B. Greene, 22 Berkeley Tech. L.J. 155 (2007)
Text in which footnote appears: Additionally, and more importantly, the Federal Circuit structured its equivalence analysis to illustrate a new limiting principle on the doctrine of equivalents. [speaking of Bicon v. Straumann, 441 F.3d 995]
Footnote 209: Cf. Posting of Thomas Fairhall to Patently-O Patent Law Blog, Federal Circuit Further Limits Doctrine of Equivalents under "Specific Exclusion" Principle, (Apr. 2, 2006) ("The Court [sic] invoked a new exclusion principle essentially foreclosing coverage under the Doctrine [sic] [of Equivalents] in cases where a claim contains a detailed recitation of structure ... ."). The blog seems to focus more on the "specific exclusion principle" as a doctrine as opposed to the adoption of a "new exclusion principle" created where a claim contains a detailed recitation of structure.

3. Michael Saunders, 22 Berkeley Tech. L.J. 215 (2007)
Text in which footnote appears: some commentators claimed that it would "likely change the face of patent litigation." [speaking of Phillips v. AWH]
Footnote 2: De Novo Claim Construction, Posting of Dennis Crouch to Patently-O: Patent Law Blog, (Jul. 22, 2004).

4. Thomas F. Cotter, 22 Berkeley Tech. L.J. 855 (2007)

Text in which footnote appears: It therefore came as little surprise to many observers when in a recent administrative law decision, Ex parte Lundgren, n80 the USPTO's Board of Patent Appeals and Interferences put to rest the technological arts exception.
Footnote 81: See Patent Law Blog (Patently-O), BPAI "Informative' Opinion on Business Method Patents, (Feb. 16, 2007);

5. Virginia Zaunbrecher, 21 Berkeley Tech. L.J. 33 (2006)
Text in which footnote appears: Using this reasoning the court concluded that the golden masters encoding the software were "components" for the purposes of 271(f) and therefore, Microsoft was liable for the infringing devices [p. 44] made overseas from the golden masters.
Footnote 81: Microsoft's liability was contingent on the validity of the patent, which was litigated separately. On September 27, 2005, the PTO reissued the patent. See Eolas v. Microsoft: Patent Set to Reissue, Patently-O, microso.html (Sept. 28, 2005).

6. Jennifer Lane, 21 Berkeley Tech. L.J. 59 (2006)
Text in which footnote appears: The U.S. Patent and Trademark Office continues its re-examination of NTP's asserted patents. n83 Meanwhile, the Supreme Court denied RIM's petition for certiorari. n84
Footnotes 83 and 84:
N83. NTP v. RIM in Hands of District Court, Patently-O, uscore;in_ha.html (Oct. 23, 2005). The U.S. patent office has issued initial rejections in the re-examination proceedings of all NTP patents in question. These rejections have yet to be made final. The district court has refused to stay proceedings pending the final result of the Patent Office's re-examination. See BlackBerry Patent Settlement Found Unenforceable - Stay of Injunction Denied, Patently-O (Nov. 30, 2005),
n84. See Supreme Court Denies RIM's BlackBerry Appeal, Patently-O (Jan. 23, 2006), _d.html.

7. Brief republished in 21 Berkeley Tech. L.J. 999 (2006)

With the exception of changing the format to fit the Journal's format, this Brief has been reproduced as it was filed with the United States Court of Appeals for the Federal Circuit. Other eBay v. MercExchange amici briefs are available at Review: EBay v. MercExchange Amici Briefs, Patently-O, (Jan. 31, 2006).

8. Katherine J. Strandburg, Gabor Csardi, Jan Tobochnik, Peter Erdi & Laszlo Zalanyi, 21 Berkeley Tech. L.J. 1293(2006)

Footnote 85: See KSR Int'l Co. v. Teleflex, Inc., 126 S. Ct. 2965 (2006) (No. 04-1350); see also Dennis Crouch, Supreme Court: Current Test of Obviousness is "Gobbledygook", Patently-O, Nov. 29, 2006, and associated linked documents, including amicus briefs taking a variety of positions regarding the "suggestion test" issue.

9. MARGO A. BAGLEY, 47 B.C. L. Rev 217 (2006)
Text in which footnote appears: This focus on the specification suggests inventors and practitioners would do well to place more emphasis on drafting a good disclosure that includes claims, a practice that may not be the norm for most TTOs with numerous early-stage invention disclosures and a limited prosecution budget.
Footnote 144: See Posting of Dennis Crouch, Including Claims in Provisional Patent Applications?, to Patently-O: Patent Law Blog, (Sept. 16, 2005). Even if no claims are included in the application, the following advice from Dennis Crouch, a patent attorney and blogger, seems apt:
In the wake of Phillips v. AWH, it has become even more important to ensure that a patent's specification accurately describes the meaning of the associated claim terms. This task is all but impossible in the absence of any claim terms to describe. Thus, it is important to draft at least a few model claims with the provisional application.

[IPBiz notes that William B. Slate in 85 J. Pat. & Trademark Off. Soc'y 219 (2003) wrote: As will be discussed below, the lack of a claim requirement does not necessarily negate the reasons for applicants to include claims. (...) The presence of attorney-crafted claims may add the necessary objective generic terms, numerical ranges, etc. needed for meaningful claim coverage and not typically present in the client-provided materials. If the same claims are repeated in the nonprovisional application and ultimately issue in a patent, the entitlement of that patent to the effective filing date of the provisional application is all but unquestionable.
IPBiz also notes that IRVING N. FEIT AND LAUREN T. EMR wrote in Intellectual Property Today in December 2002: it is difficult to imagine being able to satisfy the written description and enablement requirements of § 112 without knowing precisely what one intends to claim up to twelve months later upon filing a non-provisional application. NOTE that BOTH of the above papers were cited by ODED HECHT, Extensive Use of Provisional Patent Applications in University Settings, IPT (June 2006), although NEITHER were cited in Bagley's 2006 article. See also LBE in IPT, p. 5 (Sept. 2002). ]

10. Samuel P. Jordan, 2007 B.Y.U.L. Rev. 55 (2007)
Text in which footnote appears: There is good reason to believe that Pfizer's action was in direct response to panel announcement.
Footnote 22: In Apotex, the issue related to whether the filing of an Abbreviated New Drug Application (ANDA) by itself creates a reasonable apprehension of suit. In an earlier case, Teva Pharmaceuticals USA v. Pfizer, Inc., the Federal Circuit had held that it does not. 395 F.3d 1324 (Fed. Cir. 2005). Judge Mayer, who dissented in Teva, was assigned to the Apotex panel, a sign that perhaps the Teva holding was insecure. The covenant not to sue was entered into after the panel was announced. Dennis Crouch, Appeals Court Dismisses Apotex Case Against Pfizer's Quinapril Patent, Patently-O, Apr. 11, 2005, court d.html; Dennis Crouch, CAFC Judge Mayer: "Maybe Posting Paneling Is a Very, Very Bad Thing," Patently-O, Mar. 14, 2005, judges que.html [hereinafter Crouch, CAFC Judge Mayer].

11. David Gulbransen, 20 CBA Record 36 (2006)
Firms are also in the blog game. Patently-O ( is an extremely popular patent law site authored by Dennis Crouch of McDonnell Doehnen Hubert & Berghoff LLP.

12. 20 CBA Record 41 (2006)

Patently-O: Patent Law Blog
Patent attorney Dennis Crouch with McDonnell Boehnen Hulbert & Berghoff LLP posts about developments in patent prosecution and litigation in one of the most popular patent blogs on the Web.

13. Scott A. Turk, 6 Chi.-Kent J. Intell. Prop. 43 (2006)

Text in which footnote appears: The United States Government, American Intellectual Property Law Association, IBM, and Intellectual Property Law Association of Chicago briefs all pushed to have dictionaries in a more subordinate role.
Footnote 161: See Dennis Crouch, Patently-O: Patent Law Blog -- Phillips v. AWH: The Amicus Briefs (September 23, 2004).

14. Amy L. Landers, 84 Denv. U.L. Rev. 199 (2006)
Text in which footnote appears: Although the term has been characterized as too vague, n10 overly broad, n11 and "used unfairly to deride" patentees, n12 the phrase patent troll is always used in the pejorative and contrary to how a healthy patent system should operate.
Footnote 11: See Dennis Crouch, What is a Patent Troll?, PATENTLY-O, May 12, 2006, (excluding from the definition of "patent troll" those entities who do research and development).

See also

Do law schools promote a culture of copying?

There is discussion of the Clinton / Obama "plagiarism" pico-event at the Huffington Post by JAMES HEFFERNAN .

One commenter wrote:

Barak Obama not only graduated from a top law school, he taught at one for a time. Do you think, if a student tried to excuse not attributing the pivotal section of a paper by saying his friend had written it and recommended he use it also, that Professor Obama would find that acceptable?

IPBiz notes that both Obama and Hillary Clinton graduated from top law schools. IPBiz also remembers what Dershowitz said about the culture of copying in the legal area when he defended the copying done by Laurence Tribe. The whole gist of legal analysis is to take from the past to determine present issues. The tendency to copy is understandable. Further, lawyers tend to copy from the text which most closely supports the position they advocate, rather than from the first text, from the most thorough text, or from the most objective text.

One unfortunate fall-out from this politicizing of plagiarism is that it gives an excuse to those who try to defend real incidents of plagiarism, such as that of Poshard. Copying in speeches is one thing (recall Lincoln's "House Divided" speech) but copying in one's Ph.D. thesis is an entirely different matter.

On the Obama front, there has been some discussion of a thesis written by Obama's wife at Princeton University, when she was an undergraduate named Michelle LaVaughn Robinson. According to politico, the thesis has been "temporarily withdrawn" from Princeton's library until after this year's presidential election in November.

The 1985 text includes: "I have found that at Princeton, no matter how liberal and open-minded some of my white professors and classmates try to be toward me, I sometimes feel like a visitor on campus; as if I really don't belong. Regardless of the circumstances underwhich I interact with whites at Princeton, it often seems as if, to them, I will always be black first and a student second."

Politico also writes: Media officers at the prestigious university were similarly unhelpful, claiming it is "not unusual" for a thesis to be restricted and refusing to discuss "the academic work of alumni."

Thus, the 2008 political season spans "too much disclosure" (copying) to "too little disclosure" (restricting access to a thesis).

As to schools, in the above, we have spanned Harvard, Yale, and Princeton.
For completeness, Obama attended Occidental College in Los Angeles, California for two years, then transferred to Columbia University from which he obtained his B.A. in 1983. John McCain graduated from the Naval Academy.

Obama did get his JD in 1991 from Harvard Law. [In passing, stem cell research was one of the debated topics during Obama's campaign for Senate.]

On punishing plagiarizers and falsifiers

The nanopolitan blog had a Feb. 23 post titled Punishing the plagiarizers and falsifiers which began with the Chiranjeevi issue (popularized by C&E News), worked through the Gunasekera and Constantine matters and brought up the Mashelkar situation.

The blog did not mention the Poshard matter at Southern Illinois University [SIU], or the various plagiarisms at Harvard University, all of which fall in the general ambit of the blog's remark: "plagiarizers don't lose their jobs; they receive a public reprimand, and perhaps a demotion." The blog did not mention the Merrill matter at the University of Missouri, wherein the accused "plagiarizer" did lose his "job," but wherein the plagiarizer, a former journalistm professor, had plenty of defenders.

The nanopolitan blog did distinguish plagiarism from the more serious problem of falsification: Chiranjeevi has been accused of other crimes that are a lot more serious than plagiarism: fabrication and falsification. How are fabricators and falsifiers punished elsewhere? Ironically, one notes that back in February 1990, when C&E News published something that was false, C&E News twisted and turned, but would not admit the falsity. [See Carbon, Volume 33, Issue 7, 1995, Pages 1007-1010.] There, of course, was no punishment. The person that wrote the false statement is now editor. The nanopolitan blog did mention Schon and Hwang, but one recalls that the journals who published the false work were NOT quick to address problems. The problem with Hwang's second paper was first dismissed as an inadvertent mix-up of photos.

Recall also that the Stanford Law Review never corrected the false statement that Gary Boone invented the integrated circuit.

See also

Friday, February 22, 2008

Icospirals remembered

Note the book by Peter John Frederich Harris on carbon nanotubes. In addition to the linked
page, note also "The icospiral model of combustion soot," Carbon, Volume 31, Issue 1, 1993,
Pages 239-240.

[LBE bets Harris did NOT cite LBE's note to Chemistry & Industry, p. 814 (Oct. 16, 1995)]

See also book review, Science of fullerenes and carbon nanotubes which
appeared in Carbon, Volume 35, Issue 3, 1997, Pages 437-438.

On-sale bar found in Atlanta Attachment

The case worked through Pfaff v. Wells Elecs, Inc., 525 U.S. 55, 67, 199 S.Ct. 304, 311-12 (1998) [An invention is barred under 102(b) when it was both the subject of a commercial offer for sale before the critical date and ready for patenting at the time of the offer. ]

Relevant law included: An invention is reduced to practice when it works for its intended
purpose. Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 997 (Fed.
Cir. 2007) (citing Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000)). An invention
is said to work for its intended purpose when there is a demonstration of its workability
or utility. Id. (citing Fujikawa v. Wattanasin, 93 F.3d 1559, 1563 (Fed. Cir. 1996)).

The concurring opinion of Judge Prost, joined by Judge Dyk, began: I write separately, however, to
point out the confusion in our caselaw regarding the applicability of the experimental use
doctrine to the two prong test for the on-sale bar.

Aristocrat v. Multimedia on Player Operable Lottery Machine

The nonprecedential Aristocrat v. Multimedia brings up issues of indefiniteness and means-plus-function. Charles A. Bird, a non-patent attorney, represented Multimedia, who lost.

U.S. Patent 4,817,951 of Aristocrat, titled “Player Operable Lottery Machine Having Display Means Displaying Combinations of Game Result Indicia,” which describes and claims a machine similar to a slot machine that provides a paperless version of an instant lottery was at stake and had been invalidated for indefiniteness by CD Cal. Multimedia had won a motion for summary judgment arguing that claim 1 was invalid for indefiniteness because the specification of the patent failed to disclose
structure corresponding to several of the means-plus-function limitations

Of relevant law: “Claim construction of a means-plus-function limitation includes two steps.
First, the court must determine the claimed function.
Second, the court must identify the corresponding structure in the written description of the patent that performs that
function.” Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006) .

The problem with the analysis of CD Cal: We conclude that genuine issues of material fact exist concerning whether one
skilled in the art of computer programming would identify structure in the specification
associated with the various asserted claim limitations, thereby precluding summary
judgment, and we thus reverse the district court’s summary judgment order.

Some relevant cases:

For example, in In re Dossel, 115 F.3d 942, 946-47 (Fed. Cir. 1997), we concluded that although the specification did not use the “magic word ‘computer,’” a general or special purpose computer was clearly the structure intended to “receive[] digital data, perform[] complex mathematical computations and output[] the results to a display.”

Multimedia seemingly urges that WMS Gaming, Inc. v. International Game Technology,
184 F.3d 1339 (Fed. Cir. 1999), stands for the rule that when a general purpose
microprocessor or computer is the structure corresponding to a recited function, a specific algorithm for performing that function must be disclosed in order to avoid
indefiniteness, and, by extension, a specific random number algorithm must be
disclosed here. WMS Gaming, however, does not require that a particular algorithm be
identified if the selection of the algorithm or group of algorithms needed to perform the
function in question would be readily apparent to a person of skill in the art.

Columbia Teachers College: no rules governing plagiarism?

On February 21, the New York Times reported that Columbia Teachers College had determined there were “numerous instances in which Madonna G. Constantine used others’ work without attribution in papers she published in academic journals over the past five years.” The college said Dr. Constantine was being penalized, but did not say what the penalty was. A spokeswoman for the college, Marcia Horowitz, said Teachers College did not have set rules governing plagiarism or how it should be punished.

Those who recall the Laurence Tribe affair might recall a similar vagueness from Harvard about what penalty Tribe faced for
his admitted plagiarism.

The New York Times also noted: In 2006, the chairman of Dr. Constantine’s department, Suniya S. Luthar, passed along to administrators complaints that Dr. Constantine had unfairly used portions of writings by a junior colleague, Christine Yeh, as well as a number of students, Dr. Luthar said in an interview. Teachers College eventually asked Hughes Hubbard & Reed, a law firm, to investigate.

The New York Times article did not offer an explanation for how the academic journals did NOT notice the asserted plagiarism.

The blog Guardienne of the Tomes has a post Down and Dirty: Plagiarism which includes the line

That's right, plagiarizing, the bugaboo of librarians and professors everywhere who are attempting to educate students on the proper way to give credit to others for their hard work and original ideas.

As IPBiz has noted, plagiarism is bad, but getting the facts wrong is worse. Contemplate the failure to cite check in Law Library Journal. From IPFrontline:

In a paper titled "Peer to Peer Meets the World of Legal Information: Encountering a New Paradigm," 99 Law Libr. J. 365 (related to a symposium concerning the thoughts of Robert C. Berring), authors Ethan Katsh and Beth Noveck wrote in paragraph 8:

In their recent book, Innovation and Its Discontents, [FN5] Adam Jaffe and Josh Lerner document many patents that are anything but novel and nonobvious, such as patent number 6,368,227 for "Method of Swinging on a Swing" awarded to a five-year-old boy (subsequently cancelled). [FN6] Or patent number 6,574,645, a patent on a method for drafting a patent. [FN7] The patent awarded to Smucker's for the crustless peanut butter and jelly sandwich is, by now, legendary. [FN8] Jaffe and Lerner describe a patent sought for expirationless options thirty years after economists won the Nobel Prize for the same idea. [FN9]

The problem is that Jaffe and Lerner did not talk about US 6,574,645 in Innovation and Its Discontents, as alleged in the Law Library Journal article. But nobody bothered to check.

Patent reform. Leahy/Hatch credibility on the line.

CNNMoney notes of patent reform:

There are four major areas of disagreement between the industry groups.

These include changing how damages are awarded in patent infringement cases, the ability to challenge a patent's legitimacy, penalties for those who provide inaccurate or false information to the U.S. Patent and Trademark office and limiting the jurisdictions where patent challenges can be made.

Those familiar with the negotiations say that substantial progress has been made on all the disputed parts of the bill but damages for patent infringement, the most contentious remaining issue.

"The most difficult issue to try and get resolution on is damages," said Gary Griswold, chairman of the Coalition for 21st Century Patent Reform. "We are concerned there will be a reduction in the size of damages that can be awarded."

The story begins:

A renewed push by two veteran U.S. senators [Leahy, Hatch] could revive legislation aimed at overhauling the U.S. patent system, months after some had given the bill up for dead.

PointOfLaw writes:

The next few weeks will be critical to the legislation, which the House passed in September. Although much of the discussion has focused on the different perspectives and concerns that the high tech and the biotech/pharma industries have about the legislation, the fact remains that the patent litigation system is broken. Congress should make every effort to fix it by writing into this legislation reasonable formulas for damage awards and venue rules that discourage forum-shopping. ...

Not a word about post-grant review [opposition].

CNET merely presented irrational raving:

The sooner we have a valid system for awarding patents, the better. As it stands right now all a person has to do to get a patent is to file the patent application and pay the fees. The patent will be granted without any scrutiny.

A patent should be almost impossible to obtain. Only the most novel ideas deserve patent protection. Obvious, trivial, and incremental ideas should be discarded from patent consideration.

IPBiz notes that the CNET post seems to suffer from belief in the Quillen/Webster (alleged) grant rate of 97%. The current grant rate is slightly over 50%. [54% in fiscal 2006] See also Patently-O.

Of the grant rate matter, IPBiz notes text attributed to Hal Wegner:

While empiricists quibble over whether the U.S. allowance rate is somewhere near 70 % or even higher than 90 %, it is clear that in any event the American system with its wide variety of quality and training and other factors is letting out far, far too many patents of questionable merit.


Statutory Reform – Focus on the Key Issue, the Post-Grant "Second Window": Manifestly, the single most pressing need for patent reformthat dwarfs everything else is establishment of an efficient, tight inter partes post-grant review under a "second window" system to permit a challenge at any time in the life of the patent.

Unless and until this reform takes place the patent community is whistling in the dark about patent reform.

Looking back a little, one notes:

For example, within an article titled PANEL I: KSR V. TELEFLEX: THE NONOBVIOUSNESS REQUIREMENT OF PATENTABILITY (17 Fordham Intell. Prop. Media & Ent. L. J. 875 (2007)), Professor John R. Thomas states:

As you know, right now the U.S. Patent Office claims a roughly seventy percent grant rate. [FN80] But, in fact, that is an Enron-style accounting statistic, because what that really counts is the number of final rejections that come out every year.

Hmm, where did the symbolism of Enron come from?

If one looks at the second paper of Quillen and Webster (wherein the 97% grant figure is "qualified", 12 Fed. Cir. B.J. 35) there is text:

Numerous authors have addressed the problem of USPTO quality. referencing among other papers Harold C. Wegner, Enronesque Patent Bookkeeping: Two-For-One Continuation Double Counting and American Patent Flooding (June 14, 2002) (unpublished manuscript, on file with author at Foley & Lardner).

This paper, seemingly existing only in a footnote of Quillen and Webster, otherwise lives a Sikahema existence, apart from the "reference by imagery" of John R. Thomas.

Guaranteed access to the ephemeral?

Echoing an earlier theme, California state senators Kuehl (D-Santa Monica) and George Runner of Antelope Valley have introduced a bill to maintain "the public’s trust [in CIRM] by identifying ways to increase public accountability and reduce conflicts of interest."

According to californiastemcellreport, Kuehl said the bill would:

"...require that grantees and licensees submit for CIRM's approval plans that will afford uninsured Californians access to drugs and cell therapies resulting from CIRM-funded research. The bill also ensures that publicly funded programs get the best prices for stem cell therapies and drugs by requiring grantees and licensees to sell them to publicly funded programs at a price that does not exceed one of the benchmark prices in Cal-Rx, the state’s prescription drug discount program."

IPBiz asks: what stem cell therapies resulting from CIRM-funded research? Fighting for uninsured Californians sounds good but is it merely fighting for access to that which is unlikely to exist. There is no therapeutic spaceship following directly behind the CIRM comet.

See Ad campaign for California's Proposition 71 as a bait and switch?

On inventions developed on the employee's own time

One commenter to the DDB v. MLB post on Patently-O had written:

How about Illinois for a different view (I understand California has a similar statute but I do not have a reference to it. An interesting note on this statute is that patent lawyers I have asked about this are unaware of and cannot locate this statute but good friend who is a "generalist" found it in under five minutes when I asked him as it is part of the miscellaneous property statutes in Illinois)

Page 104 of The Complete Guide to Securing Your Own U.S. Patent by Jamaine Burrell discusses the issue. However, note that Burrell, who has written "complete guides" for currency investing and for investing in real estate liens, is NOT a patent attorney.

IPBiz notes an example at Guy Kawasaki's blog in the form of commentary by Fred Greguras:

Working completely outside of an employer’s premises and not using an employer’s trade secrets or other resources may not be enough to avoid a taint on your technology and intellectual property (“IP”) for the new business. Investors will examine the creation of IP very carefully in such a situation as they don’t want to buy into a law suit. While California law favors employee mobility it also protects employers in Labor Code Section 2870 which is part of most employee invention assignment and confidentiality agreements you sign before you begin employment with a company.

Basically, 2870 states that an employee owns an invention that he/she developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or result from any work performed by the employee for the employer.

The taint to the new business can come from the founder who is trying to continue work with his/her current employer while trying to create technology and IP for a new business or from a consultant who is “moonlighting” from a business in the same space. Some business sectors such as EDA software are notorious for litigation against departed employees who try to start a new business in the same space.

Greguras is neither a generalist nor a registered patent attorney. His bio notes: Mr. Greguras focuses on strategic legal issues for software, semiconductor-related and life sciences companies. His practice includes start-up issues and financings in both domestic and international transactions. He has represented a wide range of companies in financing, M&A, licensing and other commercial transactions, from privately held start-ups to publicly traded companies. He has also been a venture capitalist and a general counsel and CFO for a startup.

Separately, Scott Edward Walker writes:

If any employees are hired by the company, they should be required to execute two documents: (i) an offer letter agreement and (ii) a confidentiality and IP/invention assignment agreement. The offer letter agreement will set forth all of the employee's respective rights and obligations, including position, compensation (including stock options and/or other incentive compensation), benefits and, most importantly, whether the relationship is “at will.” The confidentiality and IP/invention assignment agreement is designed to prevent disclosure of the company's trade secrets and other confidential information and to ensure that any IP developed by the employee is legally owned by the company. (Note: under California Labor Code Section 2870 , an employer may not require an employee to assign rights in an invention that the employee developed entirely on his/her own time without using the employer's equipment, supplies, facilities or trade secret information except for those inventions that either: (i) relate at the time of conception or reduction to practice of the invention to the employer's business, or actual or demonstrably anticipated research or development of the employer; or (ii) result from any work performed by the employee for the employer.) Non-competition provisions may also be appropriate; however, such provisions are unenforceable in California other than in the context of the sale of a business -- though California courts will generally enforce contractual provisions that prohibit employees from soliciting the company's employees, provided that such provisions are reasonable (i.e., not overbroad) in scope and duration. Moreover, it would be prudent for the company to create an employment manual setting forth the company's policies (including with respect to equal opportunity/non-discrimination and sexual harassment) and establishing the parameters of the employer-employee relationship

Note previous discussion of the Patently-O post which appears on the IPBiz post: More on the DDB Case

In DDB v. MLB, the issue is how close the four patent applications filed by Barstow while he was employed by Schlumberger are
to the work of Schlumberger. The district court in DDB v. MLB placed those applications (which became patents) far closer the CAFC seemed to. To bring this issue around to Poshard and Wendler and SIU, contemplate words written by Peter Gregory on self-plagiarism:

Maybe work is different for university people, but I think those words belong to his former employer. For example, I can steal from my former employer by using documents I wrote or inventions I patented while I was there, that is how employment works. Just because you aren't sued doesn't mean it isn't wrong.