The following is a guest post by Professor Samuel F. Ernst of Chapman University’s Dale E. Fowler School of Law. I asked Prof. Ernst to add his insight to the Helferich case and how it relates to his interesting 2014 article on Contracting Around Exhaustion. — Dennis
* * * * *
by Samuel F. Ernst
Under the “first sale” or “exhaustion” doctrine, when a patent holder authorizes another party to sell a patented item, the patent holder’s right to exclude with respect to that item is exhausted, and the patent holder cannot pursue the licensed device down the stream of commerce to restrict subsequent parties from using the device for its intended purpose. “[W]hen the machine passes to the hands of the purchaser, it is no longer within the limits of the monopoly. It passes outside of it, and is no longer under the protection of the Act of Congress.” Bloomer v. McQuewan, 55 U.S. 539, 549 (1852). The Federal Circuit’s panel opinion in Helferich Patent Licensing v. NYTimes and JCPenney (Fed. Cir. 2015) imposes a wholly novel restriction on the exhaustion doctrine by holding that the doctrine only protects “authorized acquirers” of a device. Exhaustion no longer adheres in the licensed device itself as it moves in the stream of commerce. Hence, although Helferich authorized the cell phone industry to sell handsets that practice its patents – indisputably a “first sale” – the exhaustion doctrine did not prevent Helferich from pursuing the New York Times and other content providers for infringement based on the delivery of messages and content to those cell phones. The new “authorized acquirer” requirement directly carves out of the exhaustion doctrine protection for the very third party downstream uses of a licensed device that the doctrine is intended to protect. The panel opinion is directly contrary to Supreme Court precedent and represents a fundamental misunderstanding of one of the core purposes of the exhaustion doctrine. As I point out in my recent article, Patent Exhaustion for the Exhausted Defendant: Should Parties be able to Contract Around Exhaustion in Settling Patent Litigation?, 2014 U. Ill. J.L. Tech. & Pol’y 445 (2014), the exhaustion doctrine promotes the policy against servitudes attaching to goods in commerce in restraint of the free trade and use of those goods. Exhaustion is intended to prevent a situation where a patent holder can “send its machines forth into the channels of trade of the country subject to conditions as to use or royalty to be paid, to be imposed thereafter at the discretion of the patent owner.” Motion Picture Patents Co. v. Universal Film Manufacturing Co., 243 U.S. 502, 518 (1917).
Helferich Patent Licensing LLP owns a portfolio of more than fifty patents related to mobile communications devices and the provision of media and content to such devices. Helferich sold a license to its patents “to what, at least at one time constituted most – we may assume all – of the manufacturers of mobile handsets for sale in the United States,” according to the Federal Circuit. Helferich thereby authorized cell phone manufacturers to make phones that practice its patents and send them out into the stream of commerce. But after brokering these licenses, Helferich sought to pursue the phones down the stream of commerce. It sued the New York Times and other content providers for infringing their patents by alerting cell phone users in a certain fashion that content is available for download on the devices. Helferich’s licenses to cell phone makers contain various carve-outs and exceptions, according to the Federal Circuit, including a recitation of claims that would not be infringed by a handset manufacturer (but are nonetheless licensed), and a disclaimer of any grant of rights to content providers to practice Helferich’s patents. Under current law, it is uncertain whether such provisions are sufficient to “contract around” exhaustion or if they are ineffective “post-sale restrictions.” This is a topic I scrutinize in detail in Patent Exhaustion for the Exhausted Defendant, and which could have been a narrower basis for reversing (or affirming) the district court’s grant of summary judgment. But the Federal Circuit does not address the relevance of these license provisions to the exhaustion doctrine, saying only that there can be no claim of implied license due to these provisions.
Instead, the court bases it reversal of summary judgment on the broad and novel pronouncement that patent exhaustion only shields an “authorized acquirer” from liability, and does not follow the licensed device down the stream of commerce to protect all users of the device for its intended purpose. The court states, “[t]he doctrine has never applied unless, at a minimum, the patentee’s allegations of infringement, whether direct or indirect, entail infringement of the asserted claims by authorized acquirers.” Exhaustion only applies as to these “certain persons,” and does not exhaust the patent holder’s rights in the device itself. Hence, although there was indisputably an authorized first sale of the devices, the New York Times and other defendants were not “authorized acquirers” of the patented devices. Indeed these defendants never acquired the devices at all; they merely sent messages to consumers who happened to be using the devices. For this reason, the court held, the defendants were not relieved from liability by the fact that Helferich had exhausted its patent rights in the licensed cell phones. The court concludes that it will not “expand” the exhaustion doctrine “to hold that authorized sales to persons practicing the handset claims exhaust the patentee’s rights to enforce the asserted content claims against different persons.” Helferich is free to pursue the devices down the stream of commerce.
Contrary to the panel’s pronouncements, the exhaustion doctrine has frequently applied to shield from liability persons who were not “authorized acquirers” of the licensed devices. That is the very purpose of the exhaustion doctrine – to shield licensed devices from infringement claims as they move down the stream of commerce. Hence, in Quanta Computer v. LG Electronics, 553 U.S. 617 (2008), LGE authorized Intel to make and sell microprocessors that practiced LGE’s method claims, but prohibited third parties from purchasing the microprocessor for use in combination with non-Intel parts. LGE sued Quanta for using the licensed microprocessors under the theory that Quanta was not authorized to use the parts in Quanta computers. The Supreme Court held that LGE’s patent rights in the microprocessors were exhausted as to downstream users, whether “authorized” or not, because “[o]n LGE’s theory, although Intel is authorized to sell a completed computer system that practices the LGE Patents, any downstream purchasers of the system could nonetheless be liable for patent infringement.” 553 U.S. at 630. This, said the Court, would be contrary to the longstanding principle that “once lawfully made and sold, there is no restriction on [the licensed product’s] use to be implied for the benefit of the patentee.” Id. (quoting Adams v. Burke, 84 U.S. 453, 457 (1873)) (emphasis in original).
A case very close to the facts of Helferich is Motion Picture Patents v. Universal Film, 243 U.S. 502 (1917). The patentee in that case granted a third party a license to manufacture and sell its patented film projectors, but inserted a provision in the license provision stating that the projectors could only be used to display certain films. When Universal Film supplied to the purchaser of a licensed projector films that were not authorized for use on the machine, Motion Picture Patents sued Universal for patent infringement. The Court held that Motion Picture’s patent rights in the projectors were exhausted by their authorized sale. Motion Picture could not thereafter sue a third party, Universal, for a use of the machine that it believed constituted patent infringement, anymore than Helferich can sue the New York Times for the use of cellular phones in a way that it believes infringes its patents. This is because the cell phones, like the film projectors at issue in Motion Picture Patents, are licensed, and Helferich’s patent rights in those phones are thereby exhausted. Most critically, Universal, like the New York Times, was not an “authorized acquirer” of the patented projectors; like the New York Times, Universal had not acquired the licensed items at all. Patent exhaustion adheres in the patented device, not in “certain persons” who are authorized to use the device.
A primary reason why patent exhaustion liberates the patented device from infringement claims (and not “certain persons”) is to promote the policy against restraints on alienation. In Kirtsaeng v. John Wiley & Sons, 133 S.Ct. 1351 (a copyright case), the Supreme Court recognized that the “[t]he ‘first sale’ doctrine is a common-law doctrine with an impeccable historic pedigree.” The Court grounded the doctrine in “the common law’s refusal to permit restraints on alienation of chattels.” In Lifescan Scotland v. Shasta Technologies (Fed. Cir. 2013), the Federal Circuit extended this analysis to the patent exhaustion context. The court concluded that if patent exhaustion is easily evaded, “consumers’ reasonable expectations regarding their private property would be significantly eroded.” Hence, a rule restricting the protections of patent exhaustion to “authorized acquirers,” rather than grounding it in the licensed device, threatens to impose a servitude on devices as they pass down the stream of commerce. In this case, Helferich licensed the making and selling of cell phones for their intended purposes, including consumers receiving notifications and content from content providers such as the New York Times. Now Helferich seeks to extract an additional royalty from content providers for sending those notifications and content to the licensed cell phones. The Federal Circuit’s new “authorized acquirer” exhaustion restriction thereby improperly allows a patentee to “send its machine forth into the channels of trade of the country subject to conditions as to use or royalty to be paid, to be imposed thereafter at the discretion of such patent owner. The patent law furnishes no warrant for such a practice, and the cost, inconvenience, and annoyance to the public which the opposite conclusion would occasion forbid it.” Motion Pictures Patent Co., 243 U.S. at 518.
“Contrary to the panel’s pronouncements, the exhaustion doctrine has frequently applied to shield from liability persons who were not “authorized acquirers” of the licensed devices. That is the very purpose of the exhaustion doctrine – to shield licensed devices from infringement claims as they move down the stream of commerce.”
Great point. Great article. I think Professor Ernst hits the nail on the head: “Patent exhaustion adheres in the patented device, not in “certain persons” who are authorized to use the device.”
Austin, I think the result depended on the patents that covered the content providers.
From the case: “Specifically, once there has been an authorized sale of a
patented item, that sale “ ‘confers on the purchaser, or
any subsequent owner, ‘the right to use [or] sell’ the thing
as he sees fit.” Id. at 1766 (quoting United States v.
Univis Lens Co., 316 U.S. 241, 249–50 (1942)).”
Austin, (and Ned and Prof. Ernst)
The point being missed here, the assumption being glossed over is that more than one patent was at play, that the scope of patent protection of the device was NOT co-existent and perfectly matching with the scope of patent protection from a separate method patent.
The Professor’s hypothosis falls apart once that assumption is thrust into the spotlight.
Earlier today someone commented:
“Prior to joining the Fowler School of Law in 2013, Professor Ernst was a partner at the international law firm of Covington & Burling in San Francisco, practicing intellectual property, commercial, and appellate litigation.” Those are the lawyers that are leading the NYT “defense group” against Helferich, and that created the unprecedented exhaustion defense so soundly defeated in this opinion. Perhaps that point of bias should have been made by Patenlyo and Professor Ernst before publishing”
While I don’t agree with making characterizations, I also do not see the question implicit here as being trivial.
Wouldn’t a brief statement of identification/disclaimer have been appropriate under the circumstances?
I am unconvinced by this article’s insistence that the Helferich opinion’s “authorized acquirer” requirement is a “wholly novel restriction.”
As the article notes, “The [Helferich] court states, ‘[t]he doctrine has never applied unless, at a minimum, the patentee’s allegations of infringement, whether direct or indirect, entail infringement of the asserted claims by authorized acquirers.'”
Then the article states: “Contrary to the panel’s pronouncements, the exhaustion doctrine has frequently applied to shield from liability persons who were not ‘authorized acquirers’ of the licensed devices. That is the very purpose of the exhaustion doctrine – to shield licensed devices from infringement claims as they move down the stream of commerce. Hence, in Quanta . . . .”
But Quanta was an authorized acquirer of the microprocessors, as it purchased them from Intel, who the patentee had authorized to sell. The theory of exhaustion was that these microprocessors, of which Quanta was an authorized acquirer, substantially embodied the inventive aspects of the patent.
The better argument in this article is based on Motion Picture Patents. But I remain unconvinced because this article neglects to rebut the way in which the Helferich opinion deals with this case. In footnote one, the opinion explains that it uses “authorized acquirer” to include “those who acquire possession and operational control, as by lease,” from one with authorized title. This applies to the Prague defendant in Motion Picture Patents, who “acquired the machine as part of the equipment of the leased playhouse.” 243 U.S. at 507. The other defendant, Universal, was alleged to be infringing “by supplying films for use upon the machine.” Helferich reasonably interprets this as an allegation of “indirect infringement by a supplier of film to the operator based on the operator’s direct infringement by use of the film.” Op. at 19. Thus the patentee’s allegation of infringement in Motion Picture Patents “entail infringement of the asserted claims by authorized acquirers . . . . because they are the ones allegedly committing the direct infringement required by the indirect infringement charged against other parties.” Op. at 18-19.
As such, it seems to me that Motion Picture Patents also squares with the principles discerned in Helferich.
I agree. I think Helferich just stands for the unremarkable proposition that exhaustion applies only when there’s a license of some sort, express or implied, and otherwise does not apply. Device manufacturers had a license. Purchasers of devices had an implied license to use the devices. NY Times did not have a license, express or implied, to run infringing software on those devices. None of the cases cited by Prof. Ernst are on point. If I understand correctly, by the logic of Prof. Ernst, NY Times is exonerated if their software is running on a device licensed under Helferich’s apparatus claim, but not if it’s running on some other device. I think a court would find that argument hard to swallow.
Or perhaps Prof. Ernst is arguing that NY Times is exonerated even if their software is running on unlicensed devices, so long as one licensed device is running the software?
I see no evidence that handset owners have been deprived of their licensed right to send and receive content between handsets, the use of “airplane mode” or any other licensed handset features.
Had the NYTs used Licensed Handsets to distribute their content we likely would not be having this conversation. However, it seems the NYTs found a more economical method using networked servers to distribute their content without the use of Licensed Handsets – Go figure.
Here is an interesting early Fed. Cir. decision where method claims for the tire recapping use of sold tire recapping apparatus were held not to be exhausted: 750 F.2d 903, 223 U.S.P.Q. 982, BANDAG, INC., v. AL BOLSER’S TIRE STORES, INC., Nov. 8, 1984.
Prof Ernst has not addressed what seems to me is the most salient question; Ned has brushed it.
What is it that is exhausted under the exhaustion doctrine?
Is it enforcement of rights in the “patent” (as a whole), or the claims (or some subset thereof), or the “inventive concept?”
If it’s the claims, as it almost certainly is b/c only claims can be enforced, then the term should not be “patent exhaustion” but “claim exhaustion.”
As I understand this case, distinct claim sets claimed a manufacture (handset) and a process, and CAFC is splitting the baby between these two types of claims as to exhaustion, and their reason is that the license split the baby.
Ned quotes the CAFC opinion:
Sounds like the examiner failed to enter a restriction requirement, thus properly splitting the baby during examination instead of litigation. If there are really two inventions, then how can the patent be valid under the one-invention-per-patent doctrine? Well . . . it’s because of the “may” in 35 USC 121:
Because of that “may” I don’t believe one can challenge the failure of an examiner to require restriction, or the validity of a patent that claims two inventions. At least I can’t remember having heard of a patent being invalidated for claiming more than one invention. But I don’t know this side of the case law well.
Ideally, the patent as a whole would be invalidated for claiming two inventions, and then there would be no exhaustion issue and we would have an intact (but dead) baby.
BB: As I understand this case, distinct claim sets claimed a manufacture (handset) and a process,
The exemplary “handset” claim presented on pages 7-8 of the opinion is, in fact, a method claim that fails to recite the term “hand”, “set”, or “handset” and is not, in fact, limited to the use of devices that require the use of anybody’s hand.
Surprise!
Quotes on handset do not hide the dust kicking and dissembling by Malcolm on this case.
Eight years and running of America’s leading source of something other than actual patent law.
Well Babel, there do appear to be a number of restriction requirements entered in the course of prosecution. E.g., 7155241:
“This application is a divisional of U.S. patent application Ser. No. 09/688,321, filed on Oct. 13, 2000 now U.S. Pat. No. 7,003,304, which is a divisional of U.S. patent application Ser. No. 08/934,143, filed on Sep. 19, 1997 (Now U.S. Pat. No. 6,233,430). ” link to google.com
But the spec is not all that long. The invention is a paging system where the a notification that a message is ready is sent to the pager, and the message held for later access. It is that simple.
“FIELD OF THE INVENTION
The present invention relates generally to paging transceivers and methods for selectively acting on messages and, more particularly, to paging transceivers and methods for selectively retrieving messages.”
Can a patentee split up which claims? Can he tell the licensee that he can make the invention in claim 1, but not the invention in claim 4?
Surely, right?
J, this is a very good question, indeed.
Here are a few data points:
1. Ownership of a patent cannot be divided by claim.
2. Regardless of how many claims are infringed, there can only be one royalty per patent. I would think, but I do not know, that this principle should extend to other patents that claim the same invention — obviousness-type double patenting. Anyone aware of any case law?
3. There is an assumption in 1-2, that only one invention is patented in a patent regardless of the claims.
4. It would follow that exhaustion is by patent, not by claim.
If all the above is true, a license to any claim is a license to the patent.
You conflate infringement and damages (back end) with what can be licensed (front end).
Obviously, license agreements can be far more carefully crafted than merely “whole patent” let alone, whole portfolio.
Your logic falls apart as you assume too much, and assume a logical bilateralism that is just not there.
(also, as I pointed out earlier, the fact that a portfolio is involved seems to be being glossed over – there simply is more than one patent in play here)
I’m not sure, this is not a trick question, I sincerely don’t know the answer. I think it might be patent misuse.
Ned:
Thanks, that’s what I thought. So it really makes little difference whether or not there should have been a restriction on the claims during examination.
To Babbel’s point, then, you can view it has patent exhaustion, claim exhaustion, or whatever, it is a distinction without a difference.
Not so. Read the case – the judges give you clues.
So much for that “one invention, one patent” idea, then.
Here is a hypothetical. If patentee licenses out a patent to company A claims 1-3, and company B wants to provide equipment to A to use those claims, but then company B by providing equipment infringes claim 4.
Should company B be sued for infringement?
Let’s make your hypo more like this case:
Change claim 4 to be claim 1 of a different patent (same family).
How does that affect your view, J?
If you are stuck with wanting one patent in your hypo, let’s then say that claim 4 is the result of a broadening reissue undertaken within two years, but the license to A was drafted and executed immediately upon first patent grant and NOT adjusted for the reissue.
I’m sorry for being away, I hope you have a chance to continue the discussion.
I’ll answer your hypos (which I must say, you didn’t do for mine). In the first, I’ll say that having it in a different patent changes my view of it entirely. But I insist that we keep it to the facts of the case, because they are in fact in the same patent.
As for the second hypo, it looks like the licensee has a broader right than when it was first licensed. Congratulations to him! But I don’t see where the patentee fits in on this…
Re: ..”how it relates to his interesting 2014 article on Contracting Around Exhaustion.”
Isn’t that what occurred in this case?
The far more important point: you can’t “contract around” patent ineligibility issues, i.e., you can’t license a patent on a so-called “handset” (even it’s actually an ineligible method claim) and then sue the licensee for using the handset to communicate certain kinds of “content.”
That’s because you can’t use patents to protect information even if you use some fancy schmancy sooper techno hoohaw terms to describe the general class of information or the specific information “content” that you are trying to protect.
The system is off the rails if neither the PTO or the judiciary can spot this problem a mile away and pull the plug on the claims. And that’s where we are.
I agree with y6u MM, except I’m not sure if the PTO can be blamed here. Sure, there could have been a restriction. But its not the examining core’s fault that the Federal Circuit missed it.
That’s why I asked the other day if judges can invalidate claims/patents sua sponte: apparently when that DOES happen, Mr. Quinn et al. lose their minds about due process.
If something is manifestly unlawful to the eyes of the judge, then there is no due process argument, is there? I mean, if the judge is lawfully seated and has jurisdiction etc.?
link to ipwatchdog.com
Without getting into the PTO invalidating claims because they never should have issued the patent in the first place, the PTO doesn’t rule on things like patent exhaustion, do they?
MM: >>to protect information even if you use some fancy schmancy sooper techno hoohaw terms to describe
Another attempt at thread hi-jacking by the gistman. No one little mm is protecting “information”.
You know, if you do have any good points, they are masked by your intentional misstatements and constant blasting of propaganda.
No one little mm is protecting “information”.
Perhaps it’s impossible to explain this to you but let’s try again for the billionth time:
Old communication technology for receiving, storing and transmitting information exists. It’s old. That technology includes computers and it includes wireless devices and mobile wireless devices.
A patent on a method for using such old technology (or, worse, a method claim disguised as a device claim using weasel words) which is distinguished from the old technology by the recitation of some kind of information being received, stored and/or transmitted (e.g., “alerting the user that a notification message has been received”) is effectively a patent on the recited information, at least from the perspective of someone who owns the old technology.
This is easy stuff. It was easy before Prometheus v. Mayo and it’s easy now. What’s hard is realizing that you aren’t actually entitled to something that you’ve taken for granted for far too long a time.
Old technology exists for making new molecules. Any molecule can now be made. Ergo, all molecules are now ineligible under 101.
Old technology exists for making car. Ergo, all technology for cars is now ineligible for making cars.
Software has structure. Claims define solutions for people of skill in the art.
Information processing defines new machines.
You are saying that all information processing is ineligible. It is not. And you are trying to extend Prometheus to something it is not. Prometheus does not hold information processing is ineligible.
The other thing about MM’s never ending propaganda is he is making an equivalence between the Prometheus Law of Nature and all information. The propaganda never ends.
“never ending propaganda”
Absolutely correct.
It is the internet-style shouting down; a relentless repetition (no matter what the thread topic) of the same script which perpetually ig nores the valid counterpoints raised and put on the table for discussion.
Drive-by monologues versus actual intellectually honest dialogues.
Eight years and running.
Again, you fail to understand that “new information” can cause the old device to behave in a way that it never has before, which causes the device to perform a novel method.
By way of example, assume that a claim is directed to a UE and that the state of the art teaches that synchronous data transfer is the only known method of transmitting data across a cellular network.
Through programming, the device can now asynchronously transmit data in batches reducing bandwidth usage in peak hours. Again, no device prior to it had ever been programmed to asynchronously transmit data in batches in off peak hours.
How is this not a patent eligible method?
you fail to understand that “new information” can cause the old device to behave in a way that it never has befor
Information is useful! Logic is useful!
Yes, folks, it’s true.
Utterly beside the point. Is it worth the effort to try to force BB to define the phrase <> so that we can understand the awesome distinction he’s making between this eligible “new information/logic” and all the other ineligible “new information/logic”? I doubt it.
Through programming
You mean software? Yes, software makes computers do stuff. Or to be more accurate, software written for a particular subclass of computer running a particular operating system can make that particular subclass of computer do stuff.
So go ahead and recite in your claim the actual software that actually works rather than the abstract idea of some software that satisfies your “new computer” functional fantasy. Better yet, provide maybe ten examples of software that works on ten of the most relevant operating systems and then you’ll have even more coverage.
You don’t deserve a patent for merely describing a function performed by a generic device (e.g., a programmable computer) that does “what no device prior to it” does. You need to describe the new device in objective structural terms otherwise you are effectively patenting the new functionality. New functionalities aren’t eligible subject matter.
Need?
Objective physical terms?
Just.
Not.
So.
Once again you make an issue by trying to force one optional manner of writing a claim to be something that it is not.
See Frederico and the Act of 1952. See In re Orthokinetics – not even a software case – for an example of other optional – and FULLY legal – manners of claiming.
See also (using the term coined by Prof. Crouch himself) the Vast Middle Ground of patents – fully sanctioned by law – that are not PURELY functional and are not TOTALLY in the mind.
And please try not to dissemble and obscure the difference between the thought of software and software itself.
This is yet another example of patent law being wildly out of step with both expectations and reality. Patent exhaustion should be simple and predictable.
I’d argue for a simpler test: is it an infringement for the licensed person that “sold” the item downstream to do the same thing with respect to the same device. If the answer is the answer is “it is not an infringement,” then the sale is protected by the first sale doctrine against all such claims. If the answer is “yes, the seller would be liable for infringement,” then downstream “infringers” are not protected.
In this case, if the manufacturers were to stand in the shoes of the NYT, would the acts of the manufacturers be licensed?
I can’t really tell from this analysis.
Here’s one of the licensed “handset” claims described in the case. Note that this “handset” claim is, in fact, a method claim! It’s anybody’s guess why on earth this nomenclature was adopted by any party but it certainly doesn’t help anyone trying to understand the decision.
7. A method of operating a wireless communication device in a communication system that includes a plurality of information storage systems, and a mobile radiotelephone network comprising:
receiving a notification message from the mobile radiotelephone network, the notification message including
(a) a system identifier identifying a particular one of the plurality of information storage systems and (b) a message identifier identifying information that is stored in at least one of the plurality of information storage systems and which information is intended for a user of the wireless communication device; alerting the user that the notification message has been received; receiving input from the user specifying an action to delete, forward, or reply to be performed on the information corresponding
to the notification message; and
transmitting via a mobile radiotelephone network, to the information storage system identified by the system identifier, an action identifier corresponding to the action specified by the user;
alerting the user that the action specified by the user has been completed.
This method is nothing more than a huge pile of ineligible garbage. There is no new “technology” descried here. The claim is a transparent effort to prevent users of old communication technology from using that technology for its intended purpose: to communicate information — information that is quintessentially ineligible for patent protection.
When is a judge on the Federal Circuit going to step up and put an end to this ridiculous nonsense? We all know what happens when judges keep looking the other way and try to pretend that the system wasn’t completely hacked and corrupted by Rich and Company. The insanity is eating up the system like a cancer and at this late date your head needs to be buried deep in the sand not to see that.
MM, I’m not certain this kind on messaging system is a violation of 101. It is rather much link a hyperlink, which when that was invented by Apple, revolutionized communications generally.
this kind on messaging system
What “kind” of “messaging” “system” do you mean? Use English and describe the novel structure of this “system” for everybody.
It is rather much link a hyperlink
Whatever that’s supposed to mean. “Hyperlinks” aren’t eligible subject matter and they never were.
when that was invented by Apple
When “what” was “invented” by Apple?
revolutionized communications generally.
Lots of ideas are “revolutionary” and are found useful by huge numbers of people. But what exactly was this “revolutionary” “idea” that Apple allegedly “invented” (in a vacuum, apparently).
From Wiki:
The term “hyperlink” was coined in 1965 (or possibly 1964) by Ted Nelson at the start of Project Xanadu. Nelson had been inspired by “As We May Think”, a popular 1945 essay by Vannevar Bush. In the essay, Bush described a microfilm-based machine (the Memex) in which one could link any two pages of information into a “trail” of related information, and then scroll back and forth among pages in a trail as if they were on a single microfilm reel.
In a series of books and articles published from 1964 through 1980, Nelson transposed Bush’s concept of automated cross-referencing into the computer context, made it applicable to specific text strings rather than whole pages, generalized it from a local desk-sized machine to a theoretical proprietary worldwide computer network, and advocated the creation of such a network.
The fact that anyone could come here with a straight face and compare the junk claims at issue here with some other entirely bogus “revolutionary” non-invention of Apple’s is just further proof of the incredibly sad mess that our patent system is in because some greedy lawyers insisted — in spite of the long noses on their faces — that patents were necessary to promote progress in the development of software.
One massive dump of canards and trite rhetoric.
Y
A
W
N
I thought British Telecom invented the hyperlink:
link to theregister.co.uk
It sued the New York Times and other content providers for infringing their patents by alerting cell phone users in a certain fashion that content is available for download on the devices.
This lawsuit is less of a problem with the “exhaustion” doctrine” and more of “patent system completely off the rails” problem. Exhaustion is just one inevitable issue that arises when a troll is asserting reams of junk patents against an industry.
The Federal Circuit: defendants have identified no basis in the specification or prosecution history for concluding that, for the asserted content claims, the patented advance over prior art lay in the handsets
What, pray tell, is the “patented advance” recited in the licensed claims which covers the sooper dooper techno awesome apparati (aka “handsets”) sold by the defendants?
MM, what is the patentable advance or, better, was is the patented advance appears to be at issue? The Professors seems clear that is is the signaling technique between a content provider and the remote user. I share is views to the brief extent I reviewed the case.
On it motion for rehearing, the NY Times needs to hammer home that the sole novel feature in the claims is this signaling technique with citations to the record to support that view. It appeared to me that its briefs on appeal were deficient on this point.
I am somewhat motivated to take a deeper look into this case.
The canard of PON…
Yes, anon, but the Feds seemed receptive to the idea that there was only one invention here regardless of the number of patents.
They just wanted the Times to prove it.
I invite you to read the case again, as nowhere is there any such reception by the court here for what you propose.
Quite in fact, they say the opposite.
MM, what is the patentable advance or, better, was is the patented advance appears to be at issue?
The patentable advance in at least one of the so-called “handset” claims is communicating certain kinds of ineligible information using an old telecom network (who knows what was in the other
The so-called “content” claims cover communicating certain kinds of ineligible information using an old telecom network.
Ignoring the incredibly eligibility issues that leap up and punch you in face, it looks to me that one could certainly practice the so-called “content” claims being asserted in this case without infringing at least the one particular so-called “handset” claim that was reproduced in the decision.
But the real problem — and the problem that isn’t going away regardless of what the Federal Circuit or anybody else does with the so-called “exhaustion doctrine” — is that you can’t use patents to protect “new” information stored and communicated on old technology. That’s all the analysis that was needed here and the fact that we’re even discussing exhaustion demonstrates once again how completely the lowest form of innovators have hijacked and broken the patent system.
MM, I don’t think adding conventional elements to the claims so that they become either handset claims or content manager claims, if the only invention is the signaling technique.
Also, to me, all this sounds just like a hyperlink. When that was invented, it truly revolutionized computers and the internet. I am not convinced that such messaging is not an improvement in computer systems generally.
Ned: I don’t think adding conventional elements to the claims so that they become either handset claims or content manager claims, if the only invention is the signaling technique.
There’s something missing from your statement here. I can’t parse it.
Also, the “signalling technique” here is using an old device to receive and transmit and store information — exactly what those devices were designed to do. There is no patent-eligible “inventing” taking place when those “techniques” are applied to “new” information.
When you stray off the reservation, you end up in the weeds. If you don’t have a previously undescribed physical transformation of matter or a new structure recited for your wonderful “system” or apparatus, you’re very, very, very likely holding a piece of worthless paper.
When the information processsing “arts” finally grow up, this will all seem seem so obvious in retrospect. But people struggle with it now because they’re too invested in the status quo.
MM, if the invention is sending a message that provides the address of a larger message that might be accessed for a period of time, then one can make the claims pager centric or message generator centric at the stroke of a pen.
Thereafter, adding conventional elements, as appear in pagers or message generation systems, should not change the substance of the invention. It changes only the scope of the claims, not the nature of the invention.
The position in this article is hardly surprising: “Prior to joining the Fowler School of Law in 2013, Professor Ernst was a partner at the international law firm of Covington & Burling in San Francisco, practicing intellectual property, commercial, and appellate litigation.” Those are the lawyers that are leading the NYT “defense group” against Helferich, and that created the unprecedented exhaustion defense so soundly defeated in this opinion. Perhaps that point of bias should have been made by Patenlyo and Professor Ernst before publishing such a shallow review of the opinion. Leaving out that obvious bias affects the credibility of both PatentlyO and Professor Ernst.
Leaving out that obvious bias affects the credibility of both PatentlyO and Professor Ernst.
Just so we’re all clear about what you’re asserting here: a professor or any other commentator who previously worked for law firm X is “obviously biased” towards clients of that firm and that “bias” should be disclosed.
What’s your evidence for this “obvious bias”?
Speaking for myself and a few other attorneys I know, I have zero love (or less) for most of the clients of firms where I previously worked (and that was true while I was working at those firms). It seems reasonable to assume that many professors left their previous employment because they were not terribly enthusiastic about the clients they were working for.
“I have zero love (or less) for most of the clients of firms where I previously worked”
Yes, that is pretty obvious in your self-h@t red and gen er al loath1ng for the patent profession.
(please please please get into a line of work in which you can believe in the work product)
please please please get into a line of work in which you can believe in the work product
Because “anon” really really really believes in the “work product” of Rich Lawyers Who Push Paper, LLC.
That’s an odd mischaracterization – work product that protects my clients interests is vastly different than your attempted spin here.
Malcolm being duplicitous – go figure.
The good professor does not address the issue of Morgan Envelope and the separate patents on the content providers — except indirectly. He does so here:
“In this case, Helferich licensed the making and selling of cell phones for their intended purposes, including consumers receiving notifications and content from content providers such as the New York Times. Now Helferich seeks to extract an additional royalty from content providers for sending those notifications and content to the licensed cell phones.”
The claims in the cell phone patents and the content patents seem to cover the same invention on a first blush reading — something the Federal Circuit panel seems to dispute:
“Here, if the inquiry compares handset
claims and content claims, we cannot find that either set
wholly contains the invention found in the other. Each
has its own inventiveness, as the cases come to us.
As we have noted, defendants have not contended or
shown that all of the asserted content claims contemplate
handset users’ use of handset features that bring them
within the handset claims. Even aside from the fact that
some of the handset claims claim features such as selective
enablement and disablement of acknowledgement
signals (what has been called “airplane mode”), see J.A.
2260–69, we cannot rule out inventiveness in the handset
claims apart from the content claims. Conversely, asserted
content claims claim operations performed or systems
run by content providers, such as updating content,
making it inaccessible after a time, and sending provider crafted
content identifications. Handsets, and in particular
handsets meeting the limitations of handset claims, do
not perform those functions. And defendants have identified
no basis in the specification or prosecution history for
concluding that, for the asserted content claims, the
patented advance over prior art lay in the handsets.”
But if one compares the claims in the patents, the same novel features do seem to appear in each, with the only difference between the two set of claims being in the apparent addition of the conventional and routine to one set or the other.
These are factual disputes that should be handled by the district court in the first instance — and a remand might be appropriate.
There does appear to be a foundational assumption by the author that the “intended use” of the device and the separate methods claims are NOT patentably distinct.
If this is an unwarranted assumption, then the (Ivory) Tower crumbles.
Patent Exhaustion has an object, the thing for which the patent has become “exhausted” after sale…. that only means the sold object no longer can be held to infringe.
Not that magically the patent (and other claims art that) cannot be infringed by other things interacting with the object.
Exactly Anon2,
There is a predominant thrust to the Author’s unstated premise that the entire family of different patents all rise and fall together with the first sale of the device.
I think that such an assumption is indeed (perhaps critically) defective. After all, we all know that after two years, patent claims cannot be widened in scope to cover unclaimed inventions in an application. The mere fact alone then that a single application spawns a family of patents cannot so assume a de facto “only one invention present” foundation.
The tower does appear to have been built on shifting sands.
“the same novel feature”
Ned, you are doing that “Gist”-anti-Diehr PON thing again…
Whatever would you do if someone pointed out that many valid claims do not have a PON (in a single novel element) at all? Your lovely canard quickly bites the dust). Remember: the novelty for which you attempt to use PON is the claim as a whole. Your insistence on ig noring the prior art elements in the application of that particular section of law does not survive the words (no matter how furiously the SC attempts to obfuscate) of the SC themselves.
Of course, the logic being wrecked here can be symbolized by the meme of my big box of electrons, protons, and neutrons…
Of course, the logic being wrecked here can be symbolized by the meme of my big box of electrons, protons, and neutrons…
All that is “symbolized” by your “big box” is your inability to articulate a coherent argument.
But keep trying! It’s fun to watch and, as we all know, you’ve had zero success protecting your favorite class of junk patents with your “big box of electrons.”. That is also “symbolic” of something. Can you guess what that might be?
The argument is very articulate – and very simple – and also, a simple and logical extension of the arguments put forth by the anti-patent crowds.
Just like(exactly like) how you run away whenever I ask if you are ready to be intellectually honest and discuss your b@nal pet theory which reduces to nothing more than you cannot patent conglomerations of unrelated elements (not the chemical kind of elements).
Funny – you are quick to attempt the same pathet1c shoutdowns, and just as quick to run from any meaningful questions put to you.
Go figure.
The argument is very articulate – and very simple
And yet you just can’t spit it out.
Go figure.
Another bad spin job with Malcolm depending on his Vinnie Barbarino lack of understanding to project an inability that just is not there.
Shall I find a second grader to connect the dots for you (again)?