By Jason Rantanen
Congratulations to my colleague at the University of Nebraska College of Law, Dr. A. Christal Sheppard, who I understand has been selected as the first Director of the PTO’s Detroit satellite office. From her biography at the College of Law:
Dr. Sheppard began her career as a scientist earning a M.S. and Ph.D. in Cellular and Molecular Biology from the University of Michigan. After receiving a J.D. from Cornell University Law School and interning with Judge Rader at the Court of Appeals for the Federal Circuit and the Executive Office of the President’s Office of Science and Technology Policy, she was a practicing attorney at the law firm of Foley & Lardner earning extensive experience in patent prosecution, client patent counseling and ligation. She then served in the Office of the General Counsel of the United States International Trade Commission working on Section 337 matters, arguing before the United States Court of Appeals for the Federal Circuit. In 2005, Dr. Sheppard also completed Harvard University’s John F. Kennedy School of Government’s Executive Education for Senior Managers in Government program.
Her successful career in intellectual property law and policy included her tenure as Chief Counsel on Patents and Trademarks for the United States House of Representatives Committee on the Judiciary where she was integral in many endeavors including the Leahy-Smith America Invents Act, the most comprehensive change to this nation’s intellectual property laws in over 60 years.
Off topic: Does anyone have any thoughts on the USPTO’s new eligibility examples?
link to uspto.gov
Yes, they’re incomprehensible.
This claim is allowed (page 7, which is a pre-Alice case by the way):
1. A computer-implemented method for halftoning a gray scale image, comprising the steps of:
generating, with a processor, a blue noise mask by encoding changes in pixel values across a plurality of blue noise filtered dot profiles at varying gray levels;
storing the blue noise mask in a first memory location;
receiving a gray scale image and storing the gray scale image in a second memory location;
comparing, with a processor on a pixel-by-pixel basis, each pixel of the gray scale image to a threshold number in the corresponding position of the blue noise mask to produce a binary image array; and
converting the binary image array to a halftoned image.
This claim is not allowed (page 14, post-Alice, I believe):
10. A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising:
generating first data for describing a device dependent transformation of color information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions;
generating second data for describing a device dependent transformation of spatial information content of the image in said evidence independent color space through use of spatial stimuli and device response characteristic functions; and
combining said first and second data into the device profile.
I find little difference between these. They’re both mathematical and concern image processing. What is it about claim 1 that makes it patent eligible? To me, claim 1 seems mathematical, without any actual output. I would find it ineligible under Alice.
[…] Dr. Sheppard Selected as Director of USPTO’s Detroit Office […]
OT, but Ned – what do you think of this:
link to abajournal.com
I find it hard to believe that the issue of whether the government can take personal property without adequate compensation is a case of first impression at this late date in our country’s history? See below.
From Seymour v. Osborne, 78 US 516 link to scholar.google.com:
“Inventions secured by letters patent are property in the holder of the patent, and as such are as much entitled to protection as any other property, consisting of a franchise, during the term for which the franchise or the exclusive right is granted.
Letters patent are not to be regarded as monopolies, created by the executive authority at the expense and to the prejudice of all the community except the persons therein named as patentees, but as public franchises granted to the inventors of new and useful improvements for the purpose of securing to them, as such inventors, for the limited term therein mentioned, the exclusive right and liberty to make and use and vend to others to be used their own inventions, as tending to promote the progress of science and the useful arts, and as matter of compensation to the inventors for their labor, toil, and expense in making the inventions, and reducing the same to practice for the public benefit, as contemplated by the Constitution and sanctioned by the laws of Congress.”
On the precise point at issue, see James v. Cambell, 104 US 356 link to scholar.google.com:
“That the government of the United States when it grants 358*358 letters-patent for a new invention or discovery in the arts, confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser, we have no doubt.
…
The government of the United States, as well as the citizen, is subject to the Constitution; and when it grants a patent the grantee is entitled to it as a matter of right, and does not receive it, as was originally supposed to be the case in England, as a matter of grace and favor.
…
But the mode of obtaining compensation from the United States for the use of an invention, where such use has not been by the consent of the patentee, has never been specifically provided for by any statute. The most proper forum for such a claim is the Court of Claims, if that court has the requisite jurisdiction.”
Thanks Ned.
If a possibility, will you be submitting a Friend(s) of the Court brief?
Anon, perhaps.
But for a good read on the principal attack on the constitutionality of IPRs, read my brief in Federal Circuit appeal No. 15-1091, MCM Portfolio LLC v. Hewlett-Packard, docket entry 20.
thanks for circulating
It would be fascinating to watch the Supreme Court declare government regulation of crop prices unconstitutional because crop set-asides are “takings.”
It might cause some heads to explode in the faux-“libertarian” branch of the Republican party which routinely ignores farm subsidies when they endlessly whine about “big government” and its interference with their precious (and imaginary) “free” market.
But my heart truly bleeds for these poor, poor “little guys”:
Under petitioners’ new “Lassen Vineyards” opera-tions, they packed raisins that they owned and produced in their Raisin Valley Farms operation, and also packed, for a fee, raisins produced and owned by more than 60 other farmers. Petitioners’ facilities processed more than three million pounds of raisins during the 2002-2003 and 2003-2004 crop years. Petitioners owned only 27.4% of the raisins they processed in 2002-2003, and owned no more than 12.3% of the raisins they processed in 2003-2004.
The Department of Agriculture repeatedly informed petitioners that they would still be subject to the reserve-pool requirement under their new arrangement. Among other things, the Department notified petitioners that “[m]ore than half of the recognized handlers on the RAC Raisin Packer list are also producers of raisins,” who have “their own production brought to their plant” but nonetheless comply with the reserve-pool require-ment. Petitioners “expressly disregarded” the Department’s advice and proceeded to pack raisins without “hold[ing] any raisins in re-serve in respect to any of the raisins * * * received from and packed for growers during the 2002-2003 and 2003-2004 crop years.” Petitioners thus apparently sold their raisins at a price supported by the reserve-pool requirements that their competitors observed but they themselves did not.
It sure does sound like somebody is “taking” something here. LOL. This country’s “libertarians” never cease to amuse.
MM, if you are right then I think the article may be misleading about the question presented. The article seems to suggest that the issue was whether the taking of person property was, like the taking of real property, subject to just compensation. They way you address the issue is quite a bit different: whether set asides are a taking in the first place.
I’m sure she is an excellent choice. On a related note, can anyone explain how the satellite offices benefit applicants? I have no objection to them at all, particularly given telecommuting by examiners. However, given that applications are not (to my knowledge) assigned to examiners based on the location of the applicant, I have never understood the claims that these satellite offices somehow benefit patent applicants.
Larger pool of talent for the PTO?
It’s supposed to afford you with the opportunity to go to a satellite office in person and use our teleconferencing tools to communicate with the examiner live by video no matter which office (including a home office, for hotelers) he or she works from. You can decide for yourself whether this benefits you or not.
A more indirect benefit is that examiners can now live in areas with a somewhat lower cost of living and still make the same amount of money they would make working in Alexandria, which could attract talent. Consider it hazard pay for having to live and/or work in Detroit.
I either conduct telephone interviews or personal interviews — have no desire for teleconferencing. So if a client and I have a stack of cases to personally interview we may have to fly all around the country to do so?
So if a client and I have a stack of cases to personally interview we may have to fly all around the country to do so?
Or you can drive. Or even walk depending on where you live.
But the entire universe is no longer in DC. That’s a good thing.
It’s funny to hear your heart bleed about having to trouble, however. After all, you’ve been soooo diligent over the years complaining here about defendants being dragged into the Banana Republic of Texas.
having to trouble
“Travel”
Examiners could already live in areas with lower costs of living. You do two years in Alexandria and then you can live anywhere in the lower 48 through the PTO’s telework program. These satellite offices don’t help any current examiners because there are only a few transfers allowed, the rest of the limited number of people in each satellite office must be hired locally.
Frankly, they’re a huge waste of PTO resources (staffing, overhead, etc.) that was thought up years before the PTO instituted the telework/hotelling program, but Congress looked at it as a source of jobs/pork to bring home to their constituents so they’ve made it law that the satellite offices must exist.
“so they’ve made it law that the satellite offices must exist”
Ahhhh – an interesting point and one that ties in my OT post at 4 – in a tangential manner.
If in fact there is a “takings” problem – or other constitutional infirmity with the America Invents Act – and given the fact that Congress explicitly rejected the ability to have separability of items in that act (the sink or swim, take it ALL or leave it, chaebol ‘too big to fail’ gambit); that law that dictates regional offices (other than Detroit, which was instituted under a separate measure) would also be revoked.
Would the monies already spent provide any legal cover? (no)
Would the monies already spent provide any cover at all? (yes, but merely the aforementioned chaebol effect)
It appears to this avid student of history and law that Congress knowingly embraced the very real possibility of the sinking of the “unsinkable” ship AIA, and ig nored the fact that the “sailing lanes” were known to have the very real risk of ice bergs at the same time that it was decided to cram more passengers aboard than the number of lifeboats could sustain.
(the tune of “My Heart Will Go On” plays in the background)
link to youtube.com
(for your audio enjoyment)
as i understand it, the video conference interviews are now considered to be “in person” and that there is no mechanism to force hoteling examiners to return to the pto main campus to conduct a real in person interview.
i personally fail see what in person interviews add in 99.99999% of the cases over a telephone interview. the .00001% largely reserved for the showing of prototypes or physical examples (is this common, at all?).
i see in person interviews to be largely a marketing gimmick of NoVa law firms to demonstrate how they are better positioned to provide this client “service.”
i personally fail see what in person interviews add in 99.99999% of the cases over a telephone interview
I think it’s a universal business understanding that meeting people in person helps solidify the relationship and makes that relationship more “productive”.
It’s one thing to whine over the phone that the client really, really, really needs the patent. It’s another thing for the examiner to see your puppy dog eyes while doing so, especially if you’re worth looking at.
the showing of prototypes or physical examples (is this common, at all?)
As always, it depends. In the chemical and related arts, it’s very rare to produce some kind of physical example of the invention for an interview. In these arts, I agree that there is little value to an in-person interview over a webcam teleconference – it just makes people travel and dress up.
On a side note, I have a gut feeling that the people most frequently interested in having an in-person interview are the same ones who extol the incredible, mind-shattering value of their computery inventions.
“gut feeling that the people most frequently interested in having an in-person interview are the same ones who extol the incredible, mind-shattering value of their computery inventions.”
Be careful of those “gut feelings.”
Here, your “gut feelings” do more to showcase your bias and lack of critical thinking, as those selfsame “computery inventions” are exactly the type that do NOT need that “in-person” effect / quite the contrary, these are the types that remove the “in person” effect.
But thanks for weakening your statements by revealing your gut bias.
On a related note, can anyone explain how the satellite offices benefit applicants?
Some attorneys/agents rely heavily on in-person Interviews and every so often an in-person Interview or presentation can save everybody some time. In those instances, a great deal of time and money can be saved by a conveniently located satellite office.
Similarly, any other sort of transaction that could theoretically be smoothed by a person-to-person meeting or that necessarily involves the submission or acquisition of a physical document/object is more convenient if the transacting venue is local.
You missed there Malcolm, as the point if the question alludes to the fact that there is no mechanism for aligning you and that local office for any such in person interview.
there is no mechanism for aligning you and that local office for any such in person interview.
True enough, as far as I can tell (but there could be a mysterious ultra-secret initiative at the office working to better align applicants with geographically appropriate examiners).
But, at least for people who aren’t residing on the East Coast, there is much improved chance for such alignment when there are more satellite offices.
There’s also the “public interview room” option for video-conferencing that might appeal to some.
I saw the teleconferencing option in the prior comment from Apotu, did you see the counterpoint from Fish Sticks?
Also, I find it difficult to believe that “teleconferencing” in even any small part could offset even a fraction of the cost of these regional facilities. Even pro se inventors have much much cheaper local teleconference facility options.
Examiners also have WebEx so they could do a teleconference with an applicant while the applicant is sitting in their own office, and the applicant wouldn’t have to travel to the regional office to do exactly the same thing only in a specially designated “teleconference room”.
Exactly.
So…
We have had two propositions for the value of regional offices proposed (teleconferencing and lower wage locales) and both of those have had their legs knocked out from beneath them.
We also have the pertinent question as to what exactly the regional director is responsible for (Question at post 2.2), for which I am eagerly awaiting a good answer to.
Pouring over the press releases available on the USPTO’s website, the rationale given is that these offices provide “effective engagement”
But the word “effective” must be determined not only by the reward of another channel of engagement, but must include a measure of the costs of that channel.
It simply does not bear scrutiny in this modern age that a local physical presence is required for increasing effective engagement.
The money spent on these programs would be MUCH better spent on improving actual examination capabilities.
(I would also note that the two year wait for outside of DC telework placement seems excessive, and probably could be replaced with some sort of objective skills-based test – and by objective, I explicitly do NOT mean a “pass a numbers quota” type of test)
face to face interviews are more productive, I find.
face to face interviews are more productive, I find.
I think that goes without saying.
It’s not worth the cost for most clients. But for some “stakeholders” it’s worth a regular trip across the country. Certainly worth a trip across the street, a half hour bus/train trip, or a two hour drive.
yeah the teleconference room option is pretty silly.
when hoteling came out, stakeholders (mostly the NoVa residing ones), fought hard to retain examiner’s physical presence on the NoVa campus as 1) without that presence, those firm’s marketing angle with their clients loses some value and they could lose market share, and 2) some players recognized that there was a strategic benefit to being able to “force” an examiner to travel back to the office (especially where such a “forcing” results in non-agency reimbursed costs).
the agency quickly saw through this and created this teleconferencing option as a sort of handout to local firms (“see, you can still have an excuse to come to campus! we have a room for you!”).
Does it make sense to have some dedicated physical room where you can point a camera attached to a computer in the year of our lord 2015? no, of course not. its as silly as providing a complimentary phone for attorneys to use in a special telephone room because they do not have phone service at their office. but due to the power of the NoVa firms, the office felt that they needed to provide *something*.
so now we have these new campuses fully equipped with the PTO equivalent of a vestigial tail, all because certain special interests threw a fit.
I was thinking about this last week when I was at a conference in Colorado. The Denver-based patent attorney speaking was explaining the strategic benefits of using examiner-interviews, but never once suggested that the Denver PTO office aided in that effort.
Just curious – what were the proffered strategic benefits?
If I remove the pork barrel effects, I cannot see any improvement (looking at both benefit and cost) in engagement effectiveness.
Would not the appointment of such a valued resource as Dr. Sheppard be put to better use in some other way?
…continuing with the ‘pork’ analogy, does Dr. Sheppard’s skill set include the ability to sew silk purses out of sows’ ears?
The only actual benefit that I can gather from the press releases is that Federal dollars will be plowed into these chosen specific areas, thus adding a “reward” to areas of existing concentration of “innovation intelligencia” – but I just do not see how this helps going forward, as surely the “promotion” effect of such a reward system is not on the table. No one is talking about continuing to reward additional regional pockets with more influx of Federal largess.
Further – as noted – none of this Federal influx is actually geared to improving the actual examination processes.
Simply put, not spending the funds on improving that which most needs improving is poor management. And here, the rather evident pork barrel nature of “infuse Federal spending” in this locale” just does not seem to be justified.
At least I have not seen a compelling justification yet. I am open to hearing more.
the rather evident pork barrel nature of “infuse Federal spending” in this locale” just does not seem to be justified.
Detroit was hit hard by the Great Recession and could use the jobs.
There’s your justification.
Are you willing to use that “logic” for every place that was hit hard by the recession?
Do you even get the tie to “pork barrel” politics?
No one is talking about continuing to reward additional regional pockets with more influx of Federal largess.
Really?
I’m all for more satellite offices.
How many more?
(And let’s also remember that this form of tax – innovation tax at that – and spend does ZERO to actually improving the most critical aspect in need of improvement: actual examination.
Typically, most reasonable people do not advocate such pork barrel wastefulness.
How many more? (And let’s also remember that this form of tax
*click*
Yawn.
Zero and again – Malcolm the Zero.
The “classic” *click* Yawn.
And we see the capability of Malcolm to engage in a dialogue.
Good question, MM.
What is the point of satellite offices except to benefit applicants? If point is to benefit local communities, or better, politicians, say so. Then the PTO becomes one more political graft opportunity, ala, military contracts/bases.
“Then the PTO becomes one more political graft opportunity, ala, military contracts/bases.”
This was the conclusion I came to when they first announced these offices. A nice side benefit for the pto though is that it buys it more political allies when budget time rolls around. Every new location adds a couple of friendly congressmen. As I understand it, Michigan fought very hard for the Detroit office – sorta doubt their reps are suddenly going to push for cuts to the pto’s budget which could endanger that office in the future.
Also these satellite offices provide some hope in shaking up the power both in marketing and otherwise that firms with a NoVa presence have. Now whole new groups of law firms can sell themselves as being “just down the road/up the block” and “eating at the same cafeteria as the examiners” and other of the same to clients.
Now I am sure that some of you will say that not all clients care about such things… But I hope we can agree that some clients certainly do care about such things. Which is why there is a not so subtle IP law firm presence adjacent to and near the NoVa PTO campus.
In the long run this could shake things up a little.
In the long run this could shake things up a little.
There’s going to be a lot of “shaking up.”
And a whole lot more whining from you-know-who.
Thank goodness I’ve built up an extraordinary tolerance over the past few years, having listened to some of the silliest and most self-absorbed people on earth complain that the sky is falling for ten years straight because it’s getting harder to make a billion dollars off some junky “do it on a computer” claim dreamt up at the office Xmas party with the managing partner’s wife.
i dont think people realize the extent to which there is a culture of “soft-influence” at the pto, and how much it influences operations and policy.
if you really cant get rid of it (which may be the unfortunate reality), i would like to at least see the influence be diluted by new players.
these offices *could* potentially do that, if the pto actually uses them. if they are merely a secretary, a local director that chooses the upholstry schemes/puts in repair requests to the landlord, and a handful of examiners with no association to each other who are merely waiting to hotel somewhere else… It probably wont do that. if the pto moves whole art units and their associated SPEs to these new locations and makes these viable little social ecospheres unto themselves, well this may become over time a game changer on the influence front. but, im not holding my breath.
B-b-b-but if you don’t accept the social engineering of the federal government plowing tax dollars – innovation tax dollars at that – into (highly) selected particular (or is it porkticular) locations with ZERO focus on actually improving examination, then you are Malcolm’s enemy.
Go figure.
Excellent choice.
I agree.
Does anyone know what the job of “Director of a PTO Satellite Office” actually entails? It looks like a resume building de minimis position. Examiners in the satellite offices report to their “home” SPEs in Alexandria, who in turn report to their TC Directors, also in Alexandria.
Congratulations to Dr. Sheppard! I am pleased to see anyone with a scientific doctorate appointed to ANY position at the USPTO, even if it is a satellite office in Detroit. I would be even happier if Dr. Sheppard (a molecular biologist and attorney) had been appointed to run the San Jose office, which is located not only in Silicon Valley, but also the San Francisco BioBay. Yes, we call it that, at least in the names of many biotech/pharma-oriented professional organizations. My hope is that running a satellite office may be a stepping stone to running the whole show someday.
Congratulations, Dr. Sheppard!
Comments are closed.