August 28, 2008 by thomason.

This IP blog took to cyberspace in August, two years ago.  Now, after 150 posts and 350,000 visits by readers, I’m closing it down.  I’ll still read every CAFC case, and take in most every IP case that I can find {thanks PACER}.  My conclusion, though, is that the ’space’ occupied by IP blawgers is overcrowded and filled with repetition.  While I haven’t found a blog like mine, there are a bunch that are more widely read.

My thought to close down was sped forward when I got an offer to teach an IP 2.0 law class at my alma mater.  The effort I’ve put into reading and writing about IP on this blawg will be better devoted to teaching. 

The thought I had at the beginning of this blawging experience was ‘why would anyone find what I think of interest, especially when I’m ripping into the CAFC.’  Never got that one answered.  Still, there’d be 20,000 visits per month, which I too never figured out.

It’s been fun, and it is fun, but better to stop before it’s not fun.  Thanks, thanks, thanks to everyone who read my blawg, to all those who sent me comments, and to anyone who cares about the somewhat sad state of affairs concerning the acquisition, value and protection of patents.

pax

Posted in Uncategorized | Comments Off

August 13, 2008 by thomason.

Not since the Sixth Circuit decided Mike’s Train House v. Lionel LLC, around Xmas/Hannukah 2006, has the notion of grown-ups, wearing judges’ robes, arguing over how to run model railroads, come into mind. Until now, with the CAFC’s ruling in Jacobsen v. Katzer, 8/13/2008 (a month that celebrates no holidays).

Jacobsen writes software to run your model train. (Yes, Virginia, examine the box for a ’software not included’ caveat). Access to downloadable files of Jacobsen’s copyrighted programs is granted subject to an “Artistic License,” which is modeled after a Creative Commons or GPU license. A competitor downloaded software owned by Jacobsen, then incorporated it into their competing product.

The district court framed the issues presented by a preliminay injunction motion as whether noncompliance with the Artistic License terms was a breach of license, or an infringement of a copyright to the work. The Circuits are not aligned on what differentiates a license breach from a copyright infringement claim, and this decision by the CAFC does not add to the jurisprudence - but they called it “precedential” anyway.

The conundrum is that a license, governed by state contract law, may set conditions or limitations, which when not followed, create a cause of action for copyright infringement. However, none of those conditions are statutorily defined as infringing conduct per se. The license could require that each use include a “prominent notice” that the author of the work is a ‘flat-out genius’ and if that was omitted, then all the presumptions and remedies allowed by the copyright statute come into play. Judge Hochberg, sitting by designation, split the territory into “[C]ovenants and conditions [that] limit the scope of the license …[which] are governed by copyright law,” as distinct from mere “covenants, by contrast, [that] are governed by contract law.” Such semantic distinctions about intangible rights, are well, intangible too.

The variations of covenants viz. conditions, which are not “mere” covenants, amply prove the need for a clearer state of the law. If a condition, or covenant, does not promote a goal or policy of the copyright law, then it should not be the basis for a copyright cause of action. Conditions or covenants that serve business or philistine goals should not provoke a copyright infringement action, but only recourse to a contact case for damage to that business interest. Consider the Bobbs-Merrill decision, 100 years ago by our Supreme Court, where the covenant required resale price maintenance, “No dealer is licensed to sell it at a less price“. Resale price maintenance is really not what the drafters of the Copyright Clause intended to protect. In this Jacobsen decision, the CAFC views the conditions in the Artistic License as keyed to the original author gaining the value from derivative works, i.e., values “vital to enabl[ing] the copyright holder to ..benefit from the work of downstream users.” Later, the panel observed that the conditions in the license ”support the right to exclude,” which again, is a goal or policy served by the Copyright Act.

The CAFC rested at ease with a “mere” semantic distinction between contract and copyright claims, unencumbered by any policy or statutory goal being served. Instead, the subtext of the panel’s opinion is that creative collaboration and the open licensing that supports that are just plain “good.” Whither the statute, or the goals of copyright that it serves?

Posted in Copyright | 3 Comments »

July 27, 2008 by thomason.

Many proposals for patent reform legislation suggest changes to the inequitable conduct defense. One recurring proposal is to require that the defense spring from information material enough to get the a patent rejected or granted.  Just checking the wrong box on a form, even intentionally, would not be material enough.  Withholding or mischaracterizing prior art, or information about a statutory bar, would be enough for a patent to be declared unenforceable. Those notions of patent reform, though, remain simply notions.

Malfeasance, which may be immaterial to a patent having being granted, is now enough to render it unenforceable.  Perhaps Applied Materials v Multimetrixs (N.D. Cal. 7/22/2008) is such a case or controversy. After an inventor signs a declaration, the PTO rules require no further signature by that inventor (provided he signed a power of attorney).  The Multimetrixs’ inventors did not sign a power, at the outset, and so, they continued to sign filings.  After notice of allowance, the application went abandoned.  Before allowance, one of the named inventors had died.  His signature on his inventors’ declaration was original, but then, was forged on filings made posthumously.  An attorney was hired, and he dealt with the abandonment issue. In the later suit, Applied alleged its engineers, not Multimetrixs, were the true inventors. Applied sought a correction of inventorship, and Multimetrixs counterclaimed for infringement.  The judge declared Multimetrixs’ patent unenforceable, but made no declaration about inventorship.

In the garden-variety case, the applicant withholds prior art or a prior sale, or makes arguments favoring patentability that were contrary to the truth or to other known information.  In this case, the Judge stated that the applicant’s “misrepresentations did not relate to patentability,” and that it was “irrelevant that [the late] David Marguiles’ signature may nor have been required” on the later-filed prosecution.  Seems like a good case for discussion of meaningful patent reform.

The decision lacks the step of “balancing” the materiality and the intent.  The forgery plainly was intentional, but there was not much in the materiality bucket to balance that.  In place of that analytical step, the Judge hits hard on the lack of credibility of the applicants-cum-forgers.  The opinion even recites the ‘other bad acts’ evidence abpout one of the named inventor’s conviction for “selling freon for meth[] and for money laundering,” and added for emphasis, that it was for “selling four times the amount of freon necessary to satisfy the meth[] needs of the entire California Bay Area for a year.”  That’s plainly pertinent to credibility, but the fact of forging the dead inventor’s signature was never really in doubt.  What was missing was materiality, not more evidence of intent.  The applicant’s conduct cannot be condoned, but either the patent is valid, and the inventorship is correct, or it is invalid or derives from a false claim of inventorship.  That what is material, not how much freon the applicant sold. 

Note: the author had a past, attorney-client relation with Applied, but has no knowledge of any aspect of this lawsuit other than what is set out in the recent court opinion.

Posted in Patents - Legislation, Patents - Federal Circuit | Comments Off

July 21, 2008 by thomason.

A first read of Muniauction v. Thomson left a bewilderment - was this the worst CAFC decision of 2008, or one of the worse patents in a 2008 appeal.  Such thoughts continued, until the complete fog thinned to a thin veil of haze.  It’s a candidate for both awards.  Not that I aver any understanding of bond auction methodology, but within a broad frame of reference it’s an auction of instruments with price parameters.  To reinvent to patent that as a internet based business method would require some obvious dancing down by State Street Bank.  Then, for exemplary work in the field of de novo appeal judging, the panel chooses to disagree with the Examiner, the patentee, the jury and the district judge.  No real rules of law are necessary, it was a race to a result, because post-KSR and post-J. Michel’s speaking tour, bad patents need to be smote from the rolls over at the USPTO.

Jurors did not find clear and convincing evidence of invalidity, and the district judge found that that evidence of secondary considerations was substantial enough to sustain the jury’s verdict.  The CAFC felt, had they been out of their robes, and in their civvies sitting as jurors, they would have seen the obviousness of the subject matter and the error of that district judge’s ways.

The claim interpretation apparently was not disputed, but it whipsawed the patentee.  The judge construed an “automatic computation” step, and extended that to hold that this step did not need to be performed on the platform on which the auction was conducted.  In the prior art, this computational element was off-board, that is, it might be done on the bidder’s computer, then uploaded to the auction.   By one translation, that meant this element was not present in the primary reference.  Could it there then be evidence of obviousness that was clear and convincing?

Free of any requirement for a teaching suggestion or motivation to combine, the CAFC takes the patent grant down.  This decision, and its reliance on the earlier Leapfrog Enterprises case, signal a death knell to methods of doing business, which were known, then adapted to an internet or networked environment.

Again, this patent may not have been strong, nor the invention altogether novel, but for an appellate court to invalidate based on its view of a evidence that perhaps was a preponderance, shows the power of the CAFC to do as it thinks right.  It is not a court of review, it is a de novo court.

Posted in Patents - Federal Circuit | Comments Off

June 30, 2008 by thomason.

The protection of visual and artistic works is the stock and trade of the Register of Copyrights. These works do not have to aesthically pleasing or critically acclaimed, only original. The 10th Circuit’s recent decision in Meshwerks, Inc. v. Toyota has kept me perplexed through the weekend. In the end, the panel relies on caselaw about whether photos embody copyrightable originality, to decide that 3D digital models of a car body are not copyrightable, but are simply such perfect copies as to lack minimal originality. Trying to extend that logic seems to lead to a rule that superrealistic depicitions lack originality, but that imperfect representations have earmarks of originality that make those copyrightable.

The ruling is grounded on the premise that a photo includes the elements of shot “angle, lighting, shadow, reflection, and background,” which differs from photo to photo. A perfect 3D model created from actual measurements of an object has “stripped away all lighting, angle, perspective, and ‘other ingredients’ associated with an original expression.” That suggests that added content makes a work more copyrightable, but that does not actually answer the question of whether a “stripped away” image, or some other minimalist work, embodies originality or not.

Meshwerks was hired to create (?) wire model 3D drawings of the Totoya body, in digital form, for advertising use. The wire frame depictions can be manipulated, shadowed, colored, etc., and then inserted into ads, which offers a more flexible than a photoshoot, but yields comparable quality images. Using sensing devices moving all over the exterior of the car, a digital image was developed in 3D using modeling software. The finished image appears as a series of wires or frames forming the shape of the car body. Again, with a keystroke, the exterior color and other features can be added, which converts the wire frame image into a picture of the car. That simplicity combined with perfection was enough for the 10th Circuit to deem the 3D images as unoriginal, and uncopyrightable as visual works. The suit was driven by the fact that the images had been licensed for a single ad campaign, but those later were used again, and were given to a competing company to use for similar projects.

There are several threads running off this decision, both in copyright law and perceptions about originality. The case holds that the images are not copyrightable, but presumably, those had been registered as visual works. An alternative might have been to copyright the set of instructions that drove a PC to the result of generating those specific 3D images. The Copyright Office might have accepted the code as a copyrightable “set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result,” i.e., desired 3D images. On the aesthetic issues, consider this. The visual works of Frederic Remington or Norman Rockwell are loved because they so closely capture our view of ‘the original’ subject of the works. It is not that such depictions of a cowboy or a horse, or of events typical of Americana, are original or never before seen; it is just the opposite, that it, they are so exact in matching what we see with what we’ve seen that we view these artists’ works as unique, exact and truthful to perceived reality. If one were to pose live models in exactly the same way as seen in a Remington painting, then would a photo or drawing of that have enough ‘minimal originality’ to be copyrightable, or would it be so similar as to lack originality?

Posted in Copyright | Comments Off

June 25, 2008 by thomason.

In a non-precedential show of its power, the CAFC reversed de novo in another case involving a JMOL motion reviewed under Ninth Circuit law. In today’s ruling in Heuft v. IDC, the panel finds a prosecution disclaimer in a parent patent, applies that to claims later issued from a divisional, then rules in toto on infringement, even the 112P6 issue that was not in the record. What need is there for district courts?

Maybe its just happenstance that the Heuft decision follows reversals of JMOL rulings by the CAFC applying the Pavao v. Pagay (9th Cir.) precedent. Prior reversals include the CAFC decisions in CollegeNet, Wechsler and Callicrate (the castration tools case). What none of these rulings illuminate is what cases will be decided, fully and finally, on appeal, and what cases the CAFC will decide in part with other issues remanded for further consideration. When the record is complete, and a correct claims interpretation made in the district court or CAFC, then the case should be decided in toto. That’s perhaps why the leading case on this point is captioned SeaChange. In Heuft, the lower court trial never considered 112P6 equivalents, but the CAFC went the extra kilometer, and ruled that the accused apparatus never could be “structurally equivalent” to the claims as construed (that is, as narrowed on appeal by prosecution disclaimer of the parent claims).

Guess that the function, way, result inquiries were unworthy of further consideration. Finding prosection disclaimer, then extending it to related patents, deciding issues not presented to the jury, and reversing on the law and facts in a patent case by applying a regional circuit case that affirmed a JMOL ruling in a civil rights case, alogether strikes this observer as strongarming results.

Posted in Patents - Federal Circuit | Comments Off

June 13, 2008 by thomason.

There’s a lot to think about on a Friday - do I have charcoal, will it rain, how come I’m still working on Monday’s work, what the numbers on my paycheck mean - oh, and that it is the 13th.  For all those lucky birds who were born on Friday the 13th, what can you tell us about how that rolls you along the tao of life.

This 13 thing infects decisive aspects of CAFC rulings.  Probably one of the more empiric IP blawgers could insert a chart here that statisticizes how many district court rulings are affirmed because of the intervention of a #13 circumstance.  Consider:

A CAFC panel, or at least two of them, troubled over the statute of limitations issues because it had been “thirteen years after the first patent was issued” when “Schlumberger reportedly represented …that Schlumberger owns the Barstow inventions.” DDB Technologies, L.L.C. v. MLB Advanced Media, L.P., (Fed. Cir. Feb.13, 2008).

Patent geeks find no reason to doubt that “the Lemelson patents occupied the “top thirteen positions” for the longest prosecutions from 1914 to 2001.” Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 422 F.3d 1378 (Fed. Cir. 2005).

Almost for certain it was not a random decision that the U.S. government “began requiring [V-chip] functionality in television sets thirteen inches or larger.” Sony Electronics, Inc. v. Guardian Media Technologies, Ltd., 497 F.3d 1271 (Fed. Cir. 2007).

It too was notable that the CAFC, in sanctioning a troll-to-be, seized upon that infringement complaint in Eon-Net LP v. Flagstar Bancorp, (Fed. Cir. Sept. 27, 2007) being “virtually identical” to thirteen other complaints “filed against parties with greatly disparate business operations.”

It is no wonder that a “thirteen-day jury trial” was needed to navigate around the alleged infringement of a claim construed to encompass “an array of microphones” arrayed around your skullcase. Medtronic Navigation, Inc. v. BrainLAB Medizinische Computersysteme GmbH, (Fed. Cir. February 7, 2007).

Certainly, one of refined taste for the bubbly {me} has no need for “applying the thirteen factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), without deference” to negate a likelihood of confusion between a flute of Veuve Clicquot, the finest champagne of all, and some kid-sip marked Veuve Royale sparkling wine. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed. Cir. 2005).

Some think these cases were decided on CAFC precedent, but there too is the deci-trio cum detritus theory of random order selection - chart please.  If your CAFC case gets a docket number that includes the #13, then wonder, ‘is it a sign?’

Posted in Patents - Federal Circuit | Comments Off

June 4, 2008 by thomason.

June is off with a CAFC case in which the same counsel that prosecuted the patent argued for a non-literal interpretation of the issued claims.  If the client thinks that the patent you prosecuted will protect against infringement, then when you are asked ‘does it cover this,’ you may wonder how Markman would interpret the saying, ‘in a pickle.’  In Helmsderfer v. Bobrick Washroom, the fascinating market for baby-changing stations is at issue, and specifically, the embodiments of anti-vandalism stations.  That’s those things on the wall in airport restrooms where you set your laptop case while you’re downloading.

The patentee, through counsel, had claimed that an element was “partially hidden from view.”  Apparently, the accused element was totally hidden, but the patentee, through counsel, argued that to be hidden totally is also to be hidden partially.  That’d be completely partially - you know, like totally, dude.

You may’ve read many cases on claim differentiation, but this one is not the usual independent/dependent application of the doctrine.  Here, the patentee in other, non-litigated claims used the modifiers, “at least” and “generally.”  So, the CAFC applied differentiation to conclude that if you meant that the element was ‘at least partially’ hidden, then you would have so claimed it - you did not, and it will not be interpreted as if done. 

When the CAFC invoked claim differentiation to interpret claimed terms based on terms in other, non-litigated claims, the patentee in a move reminicent of Spy v. Spy, rejoined that the CAFC’s resulting interpretion was contrary to its oft-stated proscription against interpretations that end up not covering the preferred embodiment.  So, in a further Spy v. Spy manuver, the CAFC retreated within an appellate wall that kept it from determining whether any other, non-litigated claims might cover the preferred embodiment.  That closed the circle, which started with the CAFC looking at the other, non-litigated claims when applying claim differentiation, then refusing (like Lot’s Wife) to look there again.  Ah, to have the unfettered whim of de novo review - it’s so liberating and it makes everything come out the way you wish it to.

The point of this, and a recent post, is that you can convince your client that the patent he obtained from your prosecution will provide all the needed protection, but you may be unable to convince a court of that point.

Posted in Patents - Federal Circuit | Comments Off

May 30, 2008 by thomason.

When a deadline is missed or a requirement passes without response, learned patent counsel file a petition seeking relief. Experience with petitions has shown that the contentions that often fail are: blaming the USPTO or claiming that it contributed to the problem, arguing against the unfairness, or expressing surprise or dismay about the situation. The more effective approach is to unsheath one’s sword, then fall forward upon it. Blame thyself, grovel, perhaps do some self-flaggellation - never deny, admit admit - that you’re to blame. If you don’t, then the Petition likely gets denied, and then you’re really stuck.

Consider the malpractice suit, Landmark Screens v. Morgan Lewis, 5:08CV2581 (N.D. Cal.). The PTO, in its increasingly common effort to get additional filing fees, issued a restriction requirement. Counsel divided out claims to be filed as a second application, but failed to include the original spec, and used an out-fo-date form for incorporating the earlier application by reference. The first application issued before the notice of missing parts went out. The incompleteness of the divisional filing prevented it from being accorded a filing date, and the issuance of the earlier application meant no application with the earliest filing date was pending.

The Morgan Lewis attorney filed a petition, which relied largely on the “I” defenses: intent, interests of justice, and indicia of completeness. The petition was not accompanied by an affidavit, or an explanation accepting blame.  The petition was denied, and the filing date lost.  That argument in the petition about the USPTO taking 10 months to send out the notice of incompleteness was acknowledged to be “unfortunate,” but that did “not shift responsibility” (or the misfortune) to the PTO. Same too with the ‘intention’ and ‘indicia’ contentions - “The applicant must be ‘vigilant and active’ in complying with” patent prosecution requirements. That translates to: accept blame, call yourself negligent or non-vigilant.

The countervailing concern is that signing an affidavit that admits screwing up could invite a malpractice claim. But then, if the petition is denied, such a claim is to be expected. If the petition is granted, however, then it’s only client comforting time or a public relations issue, instead of facing up to a client’s publicly-filed complaint.

Posted in Uncategorized | Comments Off

May 28, 2008 by thomason.

Take an unscientific sample (1 month of CAFC rulings), sum how many times attorneys who prosecuted the application also presented the case in court, and draw nebulous conclusions therefrom (and before the month is over).

In May, there were 13 decisions where the attorneys named on the issued patents could be compared with those listed as counsel of record (in others, the attorney or firm went unnamed on the patent). Also, there was reason to put aside those cases where the litigant was an assignee of the patent/s, since that made it less likely that the prosecuting attorney still had a client relationship with the litigant. In the remaining ten cases, there were three where the same attorneys prosecuted the patent and litigated the infringement case. That the figure was over a quarter of the sample was surprising.

When the District Judge or CAFC is interpreting the claims based on the intrinsic evidence, i.e., the work of the attorney now litigating the patent case, there must be occasions where counsel advocates, but does so based on first-hand knowledge. What did an amendment or argument mean, or what was the applicant’s intent; what happened when the examiner was interviewed; what prior art was known but not disclosed, etc. Seems like a difficult task, and one that involves putting one’s own work between the crosshairs of the lawsuit and the client’s best interests.

In today’s ruling in Cat Tech v. Tubemaster, the CAFC titles a section “Semantic Antics” to describe one claim interpretation argument. Another passage calls a construction argument “strained” to the point that it “renders an important claim limitation …fundamentally meaningless.” Understanding your own wordsmithing is easy, but getting an accused infringer or a court to understand it in the way you had hoped for is less than easy.

Posted in Patents - Federal Circuit | Comments Off