Guest Post: Digital Information at the Border

Guest post by Sapna Kumar.  Prof. Kumar is an Associate Professor at the University of Houston Law Center, where she teaches patents and administrative law. She has written extensively about the ITC. Her most recent article, Regulating Digital Trade, discusses the ClearCorrect decision at length and is available here (http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2586740).

Next week, the Federal Circuit will hear oral arguments for ClearCorrect Operating, LLC v. International Trade Commission. It will decide whether the International Trade Commission’s (ITC’s) jurisdiction extends to digital information. Much is at stake.

Background

The ITC has jurisdiction over infringing “articles” that are imported into the country, under § 337 of the Tariff Act. Patent holders use the ITC because it can grant exclusion orders that block infringing goods from entering the country and are enforced by Customs and Border Patrol at ports of entry. The ITC can also issue cease-and-desist orders.

As discussed in an earlier post, the technology at issue involves plastic dental aligners. Align Technology’s (Align’s) patents cover methods of making aligners by generating the digital data sets for the aligners and then using the data to make the aligners, generally through 3D printing. ClearCorrect found what it thought was a clever way to circumvent the patent: patients were seen in Houston (where digital scans were made of the patients’ teeth), but a Pakistani counterpart created digital models of the patients’ teeth and created digital treatment plans. These data sets were uploaded to a Houston server; ClearCorrect then used 3D printers in Houston to create physical models of the patient’s teeth, and used the models to create the aligners.

Align argues that the digital data sets are “articles,” and claims that §337 was triggered when the data was uploaded to the Houston server. In April 2014, a majority of the ITC Commissioners agreed, interpreting the term “articles” to include digital information. Although the majority conceded that the ITC doesn’t have the power to exclude digital information from the U.S., it did order ClearCorrect to cease and desist importing data sets. Commissioner Johanson vigorously dissented, maintaining that Congress failed to delegate power to the ITC to remedy the importation of digital information.

Problems and Pitfalls

On the surface, the ITC’s decision seems like the right one—ClearCorrect was clearly trying to circumvent Align’s patents. But this case raises difficult questions regarding the scope of the agency’s authority. The core of the ITC’s jurisdiction is in rem, meaning that its jurisdiction isn’t over people, but rather, the articles themselves. In rem jurisdiction has been found to exist over intangible property such as domain names. In several domain name cases, courts emphasized the fact that in rem jurisdiction was appropriate because the court could exercise exclusive control over the property at issue. But nobody can control digital information in the abstract, making in rem jurisdiction a poor fit.

Even if in rem jurisdiction exists, there is still a question of what the term “articles” means. Here, the ITC’s statutory analysis is weak. It ignores Congress’s use of restrictive terms such as “goods” in the Tariff Act’s legislative history. More importantly, the ITC fails to address how Congress could have intended the ITC to have power over intangible articles in 1930 when the ITC lacked cease-and-desist authority until 1974.

But it gets worse. The ITC claims that the Supreme Court’s decision in International News Service v. Associated Press is relevant because it involved newspaper articles that were transmitted by telegraph, disregarding the fact that the case involved a different statute and an entirely different type of article. It also attempts to interpret “articles” in light of the Driver’s Privacy Protection Act, which was passed more than 60 years after the original Tariff Act. Going forward, the Federal Circuit should consider providing guidance to the ITC on how to engage in proper statutory interpretation.

This appeal is being closely watched. After the Sony Hack, a leaked memo emerged showing that the Motion Picture Association of America (MPAA) wants the ITC to order internet service providers to block customer access to websites with pirated content. To do this, the MPAA needs the ITC to have jurisdiction over infringing digital information. Given that there is no “digital border,” this also raises questions regarding when information has entered the country and links up to issues from Suprema, Inc. v. International Trade Commission regarding when § 337 is triggered.

Furthermore, this appeal will require the Federal Circuit to grapple with the issue of proper standard of review for ITC decisions. Because the ITC was interpreting the ambiguous term “articles” during formal adjudication, it is potentially eligible for strong deference under the Supreme Court’s Chevron U.S.A. v. Natural Resources Defense Council decision. Yet, the Federal Circuit has historically resisted applying Chevron deference to ITC patent decisions.

No matter how the Federal Circuit rules, its decision will not be the final word on digital trade regulation. One attempt has already been made to expand the ITC’s jurisdiction through legislation, and more attempts will likely follow.

101 thoughts on “Guest Post: Digital Information at the Border

  1. 9

    Swear to god that you really really really have to try to purposefully be as vapid as Malcolm and make as many posts as ungrounded in actual law based on some Belieb system that software just must be per se patent ineligible.

    Nonstop ignoring of the principles already established which is nothing more than an Internet style shout down of dissembling mischaracterizations of the actual issues to be discussed.

    Great ecosystem Prof.

    No really, nine years and running of this relentless C R P has to take a certain level of effort that should be “rewarded.”

    /off sardonic bemusement

    1. 9.1

      actual law

      It appears that is “anon” is still digging that “actual” hole to “actual” China.

      Funny stuff.

      1. 9.1.1

        Any time you want to bring up a real legal or factual point, or better yet, respond in an inte11ectually honest manner, Malcolm, us Folks** will all be shocked.

        **does not include the mindless echo club.

        1. 9.1.1.1

          It’s ironic because as bad as he is, you’re worse.

          You’re more hypocritical than the people you accuse of the same.

          1. 9.1.1.1.1

            Except not.

            You mistake the brilliance that I exhibit by being able to wield both law and facts as well as return the ad hominem. I am not worse – because I do not spin and mischaracterize what others say and do. I am not worse because I actually do take the counter points offered and discuss them.

            I “get” that you don’t like the fact that I do this and do this well, but that’s a “you” problem now, isn’t it?

            1. 9.1.1.1.1.1

              the brilliance that I exhibit

              Pretty sure it’s time to get those meds of yours recalibrated, Billy.

  2. 8

    I know there’s some confused people out there who think that 3-D printing is a “game changer” and the game needs to be rigged in favor of patentees (again — because it’s difficult for some people to learn the lesson the first time).

    Does anybody believe that 3-D printers be more useful to people if there are a million patents — written in functional language, of course — protecting millions of classes of objects (or data files describing those objects) that can be printed using the printer? How about patents describing where those specific data files are stored (“password protected!” <–wowee zowee techno!)? How about patents describing the legal status of those data files or the databases in which they are stored ("copyrighted"<- wowee zowee techno!)?

    Serious questions.

    1. 8.1

      Apparently, you never had braces as a child. To me, these invisible braces are a godsend. They’re worth every penny, even if there are more pennies because of patents.

      If you think it’s so easy to do this, go ahead and make your own template for invisible liners for teeth and correct alignment of your teeth. Please post the result.

      We’re not talking about a patent tr oll here, who just bought patents. We’re talking about a real company with a real innovation. (I won’t make any comment about the case at issue, since I haven’t analyzed it; I’m just commenting on MM’s obsessive “everything that uses software can’t and shouldn’t be patented” idealism.) The patent system should cover this company’s invention.

      If you want all software patents abolished, then provide a case to the Supreme Court so that they can abolish those. This way, the three-party system can do its job, and Congress can step in if they desire to. The way it is now, the Alice decision is so poorly written no one can ascertain what’s patentable and what’s not. That does not let the three-party system work.

      1. 8.1.1

        PB: Apparently, you never had braces as a child. To me, these invisible braces are a godsend

        Cue up the Amish song and dance. You guys really never cease to amuse, PB.

        The patent system should cover this company’s invention.

        Great argument! LOL

      2. 8.1.2

        If you want all software patents abolished, then provide a case to the Supreme Court so that they can abolish those.

        Oh that will happen all by itself in due course, PB. I don’t need to do a darn thing except watch your cohorts assert increasingly ridiculous patents. Haven’t you been paying attention?

        1. 8.1.2.1

          Your “not doing” anything of merit is widely recognized.

          (that’s not a good thing)

  3. 7

    Has anyone noticed a severe drop in the “innovation” of “new signals” since the Nutjen case was decided?

    Me neither.

    1. 7.2

      Really? What new signals are you hearing?

      Are you wearing the tin foil hat the Doctor gave you?

  4. 6

    he ITC has jurisdiction over infringing “articles” that are imported into the country, under § 337 of the Tariff Act. …. Align argues that the digital data sets are “articles,” and claims that §337 was triggered when the data was uploaded to the Houston server

    Describing someone’s teeth over the phone would also constitute importation of an infringing “article” according to the patentee’s bizarre theory.

    It’s hilarious to see the usual crowd defending this sort of desperate nonsense but we’ve grown to expect that, haven’t we? Because …. 3-D printing! Ooooh, it’s so shiny. How can anyone deny a patent that involves 3-D printing unless they’re Amish or something?

    LOL

  5. 5

    In the best Magritte tones:

    Ceci n’est pas une pipe.

    Electrons versus “information.”
    Electrons, protons and neutrons versus “information.”
    DNA versus “information.”

    Is this where I insert that [shrug]…?

    1. 5.1

      s this where I insert that [shrug]…?

      You might as well do a backflip, too, and light your shoes on fire since you appear more interested in dada-esque games than making sense.

      [shrugs]

      1. 5.1.1

        The ITC has jurisdiction over infringing “articles” that are imported into the country, under § 337 of the Tariff Act. …. Align argues that the digital data sets are “articles,” and claims that §337 was triggered when the data was uploaded to the Houston server

        Describing someone’s teeth over the phone would also constitute importation of an infringing “article” according to the patentee’s bizarre theory.

        It’s hilarious to see the usual crowd defending this sort of desperate nonsense but we’ve grown to expect that, haven’t we? Because …. 3-D printing! Ooooh, it’s so shiny. How can anyone deny a patent that involves 3-D printing unless they’re Amish or something?

        LOL

        1. 5.1.1.1

          Nice spin, but pretty sure that the digital data sets – as understood by a Person Having Skill In The Art and informed by the specification has zero overlap with your purposeful preposterousness.

          Maybe try to have a real conversation without being an arse sometime…

          1. 5.1.1.1.1

            the digital data sets – as understood by a Person Having Skill In The Art

            … are still just data. Nice try, though.

            1. 5.1.1.1.1.1

              Is that like (just like) lines on a measuring cup, or numbers on a hat band…?

              Because, you know, you have volunteered an admission as to knowing and understanding the law…

              What a chump.

  6. 4

    Miriam-Webster defines “article” as inter alia:

    a thing or person of a particular and distinctive kind or class.

    The same authority defines “thing” as inter alia:

    1
    a : a matter of concern

    2
    b : a product of work or activity

    3
    a : a separate and distinct individual quality, fact, idea, or usually entity
    4
    b : whatever may be possessed or owned or be the object of a right

    5
    : an object or entity not precisely designated or capable of being designated
    7
    c : a piece of news or information

    Clearly the subject digital data set is a matter of concern, a product of work or activity and may be possessed or owned or be the object of a right. Accordingly, the digital data set is encompassed by the definition of a thing. Therefore, the digital data set is “an article.”

    1. 4.1

      Thanks, Les.

      Of course, winking at somone during a skype call would also be considered an “article” according to this “analysis.” And Congress didn’t expressly exclude winking! Therefore, we must all pretend to be born yesterday or else words have no meaning.

      1. 4.1.1

        I don’t think so. A wink might be an article as a product of activity, but I don’t think the act of winking falls withing the definition of an article.

        1. 4.1.1.1

          A wink might be an article as a product of activity, but I don’t think the act of winking falls withing the definition of an article.

          Super nuanced stuff here! Pedantry at its finest.

          1. 4.1.1.1.1

            No. Plane and straight forward. That was my point. There is no great mystery here. There is very little to debate. Words DO have meaning. In this case, I posted them.

            1. 4.1.1.1.1.1

              LOL. Okay, Mr. Deepthought.

              “I don’t think the act of winking falls withing the definition of an article.”

              “I don’t think the act of uploading falls withing the definition of an article.”

              Deep, deep stuff.

              1. 4.1.1.1.1.1.1

                Right. Uploading is not an article. However, in at least some cases, the item uploaded is.

                1. Of course Deep Thinkin’ Les is unwilling to complete his circle of pedantry for everyone. He found the energy to make his sooper deep point that “the act of winking” is not an “article”. And he recognizes that the “act of uploading” is therefore not an “article” either. But somehow he just can’t wrap his deep thinkin’ brain around the fact that his definition of “article” includes a wink communicated over skype by the act of winking.

                  That’s too difficult for him, somehow. So mysterious. Anyone surprised?

                  I’m not.

                2. Yes. Winks are articles. However, as noted by B.S. the Poet Laureate of the Garden State, they are fleeting and transient signals, not to mention ancient. So, you needn’t worry. Winks will not be patented.

                  “Glory days
                  Well they’ll pass you by, glory days
                  In the wink of a young girl’s eye, glory days
                  Glory days”

                  ——B.S.

                3. Yes. Winks are articles.

                  Ah, yes. Now we are getting serious! Winks are “articles” according to Very Serious Deep Thinkin’ Les, a master of statutory interpretation.

                  they are fleeting and transient signals

                  Not if you download that “fleeting” information to your hardrive. Heck, you could even draw a picture of the wink to help you remember the information.

                  not to mention ancient

                  Descriptions of teeth are ancient, too, Les. But you knew that already.

                  More deep stuff coming! Federal judges just love it when folks like Les get all up in their faces with these super serious arguments. It’s true! Just listen to the oral arguments sometime and you can hear the judges practically cheering when desperate patentees start playing Les’ word games.

                4. ” a majority of the ITC Commissioners agreed, interpreting the term “articles” to include digital information. ”

                  Which bringssss ussss baaaack to doooe

                5. Which bringssss ussss baaaack

                  Maybe you’d forgotten what the thread was about, Les (a mistake by the ITC that won’t be permitted to stand).

                  I certainly hadn’t.

                  But in case anyone else needs to be “brought back”, here’s the take home: you can’t use patents to protect information or punish people for using conventional tools to acquire or disseminate information.

                  Take it to the bank. To the extent you are telling clients that the opposite is true, you are doing those clients a great disservice. Of course you still get their money so, hey, it’s all good. That’s what the Big Q and Kevin are always sayin’. And everyone loves lawyers, after all.

                  LOL

                6. Nice.

                  Now move the goal posts back and remember that the existing claim as a whole doctrine eliminates your overstated pet theory (which merely reduces to the banal “you cannot have mere aggregation claims” – totally without ANY elements being your precious “information” ramblings.

                  What a chump.

                7. ITC must be wrong, bellows the Red Queen, but the purposeful ignorance of any understanding of physics imbued in in re Nuitjen is “just fine” with Malcolm….

                  What a putz

    2. 4.2

      Les, a signal cannot be an article under controlling Federal Circuit law. Did the ITC even address this?

      1. 4.2.1

        Unless I missed a memo Ned, the Fed. Cir. has a problem with TRANSIENT signals and lies to say they are not manufactures. I respectfully submit that these dental data sets, residing on non-transient computer readable media as they are used to make customized teeth relocation devices are not transient.

        As far as I know, the data service carrier (whom might have handled related transient signals) is not being accused of with contributory infringement.

        I have no idea if the ITC addressed it or not. If they didn’t and get called on it, they can copy and paste that, free of charge.

      2. 4.2.2

        No doubt, Les, customs can embargo CRMs. Would and order to that effect satisfy you?

        1. 4.2.2.1

          No Ned, it wouldn’t. You can’t walk down half the sidewalks in New York City without someone trying to sell you something that is under a customs embargo.

          Are you saying that when Transporter Technology is perfected you will be happy to allow the importation of patented articles against the will of the patent owner as long as the articles cross the boarder as transient transporter signals via the transporter?

          link to npr.org

          1. 4.2.2.1.1

            Now you are complaining about policing the border, something the government does not do well.

            But that is beside the point I was trying to make. Assume for the sake of this argument that the government is perfect, and it misses nothing at the border, nothing.

            Would a exclusion order against CRMs be satisfactory when, as we all know, the digital files are downloaded directly from a server located on some island that has no treaty relationships with the US? (Think Brazil, a country that has no extradiction treaties and where one might even today find war criminals of various flavors hiding out under assumed identities.)

            1. 4.2.2.1.1.1

              No Ned. For the reason I further indicated.

              Are you saying that when Transporter Technology is perfected you will be happy to allow the importation of patented articles against the will of the patent owner as long as the articles cross the boarder as transient transporter signals via the transporter?

              link to npr.org

              1. 4.2.2.1.1.1.1

                Les, good point about transporter technology. Why even have borders?

                I have a solution: Declare the US government to have world jurisdiction so that we don’t need import regulations, and infringements can be directly addressed by US courts, and where court order are enforced by US marshals with I Corps backup, just in case.

                Then we have to deal with the pesky moon, asteroid and martian colonies that soon will exist. US will have to extend enforcement activities to space using a new space marshal organization and, again, with US Space Corp support as required.

                Is that a plan?

                See any possible holes? Any?

              2. 4.2.2.1.1.1.2

                Les: when Transporter Technology is perfected

                Super serious stuff, folks. Pay attention!

                1. If you had followed the link, you would have seen that it is. Researchers are currently doing it for individual atoms.
                  Combine that with the 3D printing technology you love so much…
                  …only a matter of time….

                1. Les,

                  Why are you surprised, Les? He ran away before when you cornered him on ineligible elements of a claim – I think it was pieces of wood, iirc.

  7. 3

    electrons, just like groups of electrons, protons and neutrons, are “physical matter” in that “traditional” sense.

    The thing about traditional zombies is that they aren’t very smart and they move really, really slow. I guess we should be grateful for that.

    1. 3.1

      “Traditional Zombies?”

      What about “mind-numbed-robots?”

      or

      “Nattering nabobs of negativism?”

      or

      “Hopeless, hysterical hypochondriacs of history.”

      1. 3.1.1

        With whom you align says far more about you Ned than what you realize

        (that’s not a good thing – for you)

        1. 3.1.1.1

          With whom you align says far more about you Ned than what you realize

          The Big Q is going to be performing magic tricks at “anon’s” birthday party, Ned. And you’re not invited! So there.

          LOL

          1. 3.1.1.1.1

            What is it with you and your obsession with Quinn? The guy doesn’t even post here.

            Great job Prof – now you have Malcolm maligning Dr. Noonan as well.

            Malcolm, how is your battle of transperancies coming along?

        2. 3.1.1.2

          anon, the problem you have is that you agree with me at times. How does that make you feel?

          1. 3.1.1.2.1

            Rather Ned, you agree with me at times.

            I don’t put much stock into it really – given your well known malady of thinking that things that happen to align with your viewpoint must be the stuff of Einsteins.

            Any “alignment” you want to point to has no causality with my views or reasoning.

            You really don’t carry the impact (in a positive way) that you think you do.

            1. 3.1.1.2.1.1

              Rather Ned, you agree with me at times.

              Totally different from “anon” agreeing with Ned!

              Wow.

              1. 3.1.1.2.1.1.1

                Actually, it very much does Malcolm – for at least the difference that may exist as to the reasoning behind any agreement to a particular point.

                But you just wanted to be an arse with your comment, so….

          1. 3.1.1.3.1

            I don’t think you resolve any issue.

            You just monologue to your Windmill Ho and ignore all the counterpoints that are simply “inconvenient.”

            I will give you this though: at least you attempt to use the law as support.

            You fail miserably, but you attempt – which is far more, far far far far far more than what Malcolm typically does.

  8. 2

    One major underlying problem here is that the patents in question are obvious and/or ineligible junk. The PTO may be utterly clueless when it comes to examining patents that recite 3-D printing (soooper doooper techno! time to pretend we were born yesterday!) but the CAFC lately seems to be finding its legs after years of crawling around like an infant after a piece of tinsel.

    You can’t use patents to protect data. If your patent protects data, or if the manner in which you are asserting your patent prevents data from being transmitted using only conventional technology, then your patent is ineligible. This is fundamental stuff. The Supremes understand this plainly and I believe most of the CAFC does as well. The fact that the PTO is still infested with short-sighted know-nothing termites isn’t going to change a thing at the end of the day.

    Here’s the rub:

    The ITC has jurisdiction over infringing “articles” that are imported into the country, under § 337 of the Tariff Act. …. Align argues that the digital data sets are “articles,” and claims that §337 was triggered when the data was uploaded to the Houston server

    Everybody following this? Someone overseas uploaded information — information — to a server and somehow that act is illegal because some junk patent — a patent that should never have been granted and any halfway decent patent lawyer could tank in two seconds — recites a use for the information.

    The passage from the ITC’s appeal brief says it all (unintentionally):

    In any event, should Congress have intended the uniquely narrow section 337 result sought by the Internet Association, Congress could have written uniquely narrow language for the Commission in section 337(a)(1)(B)(i), which it did not.

    Try to believe it: the ITC’s argument is that if Congress in 1930 (or in any of the dozens of amendments since then) had intended the terms “article” and “material” and “product” in 337 to exclude information (?!) used in the course of practicing a patent, then Congress should have said so! Left unsaid is that it is the height of pedantry to suggest that those terms include information in the first place and there is no evidence anywhere that Congress believed that the communication of patent-related information itself was a problem addressable by 337 or any other statute.

    In light of the old adage that “bad facts make bad law” the CAFC’s best bet here would be to save everybody time and find the claims obvious, wash its collective hands and wait until some other desperate party with a valid, eligible patent covering a data file (good luck!) comes before it and tries to make Align’s crummy arguments.

    Fyi, a quick Google search for “align section 337 appeal brief” will readily pull up pdfs of the appeal briefs of the ITC, Clear Correct and the Internet Association. Align’s brief is probably floating out there somewhere.

      1. 2.1.1

        MM, one can induce infringement using words. Why not digital files?

        For starters, there is a huge difference between the sorts of words that constitute “inducing infringement” and a data file disclosing structural coordinates. This case is even worse, of course, because not only is the data file itself plainly ineligible for patenting, the structure described by the file is also ineligible for patenting!

        Consider: patents describe patented objects. If I broadcast over the Internet a data file that describes an embodiment of a patented claim (e.g., a picture taken from the patent), can that act be considered an act of direct or indirect patent infringement? Of course not.

        The bottom line is that you can not use a patent to claim de facto ownership of a structural description of one of my body parts or, for that matter, any other object. If you wave your patent around suggesting that you’ve done such a thing, then you’re either admitting that your patent is ineligible junk or you’re just mistaken. It’s remarkable that such a proposition even needs to be addressed. Most of the blame rests at the feet of the PTO which has proven itself utterly incompetent when it comes to screening out junk patents like the patent at issue here.

        Are there even worse patents out there involving 3-D printing? You better believe there are. And the PTO continues to issue them. That’s right: the same PTO that is soooooooo hard on all those poor, poor “innovators” out there.

    1. 2.2

      Could you explain why this is “ineligible junk”?

      US patent 6,471,511:

      1. A computer-implemented method for segmenting an orthodontic treatment path into segments, comprising: for each tooth in a set of teeth, receiving a tooth path for the motion of the tooth from an initial position to a final position; calculating a segmentation of the aggregate tooth paths into a plurality of treatment segments so that each tooth’s motion within a segment stays within threshold limits of linear and rotational translation; and generating a plurality of appliances, at least one or more appliances for each treatment segment, wherein the appliances comprise polymeric shells having cavities and wherein the cavities of successive shells have different geometries shaped to receive and resiliently reposition the teeth from one arrangement to a successive arrangement.

      How about this one?

      US Patent 6,217,325:

      1. A method for producing a digital data set representing a final tooth arrangement, said method comprising:

      providing an initial digital data set representing an initial tooth arrangement;

      presenting a visual image based on the initial data set;

      manipulating the visual image to reposition individual teeth in the visual image;

      producing a final digital data set representing the final tooth arrangement with repositioned teeth as observed in the image; and

      producing a plurality of intermediate digital data sets representing a series of successive tooth arrangements progressing from the initial tooth arrangement to the final tooth arrangement.

      Please let us know why these are invalid junk.

      1. 2.2.1

        Before I explain anything to you, Bob, I want you to tell everyone when you were born, where you born, whether you lived under a rock your entire life, whether you have teeth, whether you know anybody who has teeth, and, lastly, what knowledge you have of the history of (1) dentistry and (2) computers prior to the 21st century.

        Bottom line: I don’t feel like wasting my time walking you to the water if you never learned how to drink.

      2. 2.2.2

        PB, the only arguably thing new in the claim is this:

        “calculating a segmentation of the aggregate tooth paths into a plurality of treatment segments so that each tooth’s motion within a segment stays within threshold limits of linear and rotational translation; ”

        Before we move on to 101, lets see if I infringe if I, a dentist, use my calculator to calculate for a given tooth in a brace I am build a tooth motion of .5mm?

          1. 2.2.2.2.1

            It is the COMBINATION of elements that is claimed and patented.

            “OMG I was born yesterday and haven’t been paying attention to patent law for five years so I’m going to repeat my zombie script ad nauseum.”

            It’d be funny if it weren’t so sad.

          2. 2.2.2.2.2

            Les, assume I do all other elements in the claim — that assumption was implicit in question. I now make it explicit.

            The element that I do not know about is this:

            “calculating a segmentation of the aggregate tooth paths into a plurality of treatment segments so that each tooth’s motion within a segment stays within threshold limits of linear and rotational translation; ”

            Assume the total path is 1 mm. The threshold limits are 0.7mm and 0.5 degrees rotation. For sake of argument, the path calculated provides for no tooth rotation.

            Do I infringe if I use a hand held calculator to compute the motion of a particular tooth, and the answer for that tooth is 0.5mm?

            Does the answer to the question change if I do not use a calculator but simply choose 0.5mm?

              1. 2.2.2.2.2.2.1

                I see from your answers is that the calculation is irrelevant to whether one infringes — and yet is it a claim limitation.

                Now consider that you have to prove the calculation limitation.

                What do you have to prove to prove that I do the claimed calculation — that I got to a particular result. If so, then it makes no difference what the calculation is. Anything calculation will do. Is this the right answer?

                1. No. My answer is yes the calculation is relevant. If you just guess 0.5 mm, no harm no foul.

                2. “What do you have to prove to prove that I do the claimed calculation?”

                  I have to prove that you calculate a segmentation of the aggregate tooth paths into a plurality of treatment segments so that each tooth’s motion within a segment stays within threshold limits of linear and rotational translation;

                  As I understand it, this involves multiple equations and multiple unknowns. Sounds like it involves finite element analysis of a system where a force applied between teeth 3 and 4 has a bearing on the force between teeth 4 and 5 and through the chain of the braces and other paths between teeth 17 and 18. Apparently, the set of equations can have multiple solutions depending the desired tolerance (plus or minus a perfect result). Hence the threshold limits.

                  So… I gotta prove you did something like that.

                3. Les: I have to prove that you calculate a segmentation of the aggregate tooth paths into a plurality of treatment segments so that each tooth’s motion within a segment stays within threshold limits of linear and rotational translation;

                  As I understand it, this involves multiple equations and multiple unknowns. Sounds like it involves finite element analysis of a system where a force applied between teeth 3 and 4 has a bearing on the force between teeth 4 and 5 and through the chain of the braces and other paths between teeth 17 and 18. Apparently, the set of equations can have multiple solutions depending the desired tolerance (plus or minus a perfect result). Hence the threshold limits.)

                  Les, where are you getting his from — the specification? If so, you have just read the math, the formula disclosed in the specification into the claim. Why did you do that? 112(f). Some other reason?

                  Now, if all that had been in the claim — the relationship between one tooth and the next and some overall limits, and a particular formula, I would agree that the claim would have defined an invention. I just do not see any of that there. The claim just says calculate, stay with some limits on tooth motion, but does not say what the calculation is. I think this is why you initially said that if the motion was with the limits regardless of calculation, one infringed.

                  So either one reads a particular formula into the claims or the claims cover all or even no calculation so long as the result is achieved. That is what I grasp from your conclusions.

                  Anyway, before we go farther, what is your justification for reading specific formulae into the claim?

                4. No Ned –

                  I didn’t read the specification. I don’t even know that patent number. I just read the claim language and figured out what it meant.

                  “a segmentation of the aggregate tooth paths into a plurality of treatment segments ”

                  Just pause for a second and think about what aggregate tooth paths are.

                  Then what would a segmentation of those mean?

                  What are treatment segments?

                  Remember, claims are to be interpreted by those of skill in the art.

                  Not random members of the anti software patent crowd.

              2. 2.2.2.2.2.2.2

                OK, Les, then the result in a particular tooth is not proof of infringement, right? This has to be compared to adjacent teeth and some aggregate?

                OK, then. I am a dentist. I have historically made braces such that the amount of movement, tooth to tooth is within a threshold. I might even make a calculation to determine the best movement for a tooth.

                Depending on the choice of threshold, I might infringe or I might not infringe. Is the claim definite?

                1. Not seeing your point, Ned.

                  How is your question different than any and all patent infringement questions, no matter the claim?

                2. Ned –

                  As long as you do your traditional tooth to tooth calculation you are in the clear.

                  Your not calculating a segmentation of the aggregate tooth paths into a plurality of treatment segments.

                  As near as I can tell from your posts and questions, you don’t even appreciate the difference between your calculation and the calculation recited in the claims. You are in no danger of infringing.

  9. 1

    The issue also is whether the ITC jurisdiction extends to inducement infringement, does it not? The digital model is simply information, not a component of a patented machine or a material used in a process, and it is used to make the 3D printed aligners after “importation.” That is inducement – which the Federal Circuit is also considering en banc.

    Assuming jurisdiction, exactly how will customs enforce?

    1. 1.1

      Ned–There is no inducement issue on appeal–the ALJ opinion found no inducement and Align didn’t petition the Commission for review of that issue (see FN 54 of the Commission Opinion). ClearCorrect did appeal the Commission’s finding of contributory infringement for ClearCorrect Pakistan.

      The issue of enforcement is an interesting one. Customs can only seize tangible goods that enter at a port. So it is not possible for the ITC to issue an exclusion order for digital information. Instead, the ITC is relying on its cease-and-desist authority, which it has had since 1974.

      1. 1.1.1

        Sapna, well then, the issue is the same issue, is it not? A digital transmission is not within any stretch of the imagination a component of a machine, or a material used in a process.

        Same issue.

        There can be no contributory infringement. What is the ITC smoking?

    2. 1.2

      Good question. Since the Fed. Cir. has held that signals per se are not patentable, how can this incoming digital data itself be infringing?

      1. 1.2.1

        And why are Beauregard claims still seemingly patentable in light of the Fed. Circuit case holding signals per se not patentable? To the extent that a Beauregard claim covers data on a medium, the data being carried via some state of the medium (such as being magnetized or not magnetized, a pit or no pit, a charge or no charge, etc.), are Beauregard claims not attempting to capture signals per se?

        1. 1.2.1.1

          I think that you know the difference between “attempt to capture” and the signal…

          Quite in fact, the “signal” is not the end item, now is it? (Nor was it ever – another blow to that asinine decision, btw)

      2. 1.2.2

        Since the Fed. Cir. has held that signals per se are not patentable, how can this incoming digital data itself be infringing?

        Because the term “article” as used in 337 includes intangible information. How do we know that? The dictionary, friends. And Congress didn’t expressly exclude it (who can explain that failure? be sure to keep your head buried in the sand before you answer). So goes the ITC’s super compelling argument. It has a familiar ring to it, doesn’t it?

      3. 1.2.3

        One small problem there Paul – digital is not a signal per se – electrons, just like groups of electrons, protons and neutrons, are “physical matter” in that “traditional” sense.

        So while you are absolutely right as to controlling law, it only goes to show how that particular decision is so completely asinine and an affront to anyone that understands even basic physics.

      4. 1.2.4

        I think you are referring to “transient” signals. Arguably, a data set on a hard drive is not “transient.”

        1. 1.2.4.1

          But was not the importation here by transient signals? Probably by modulated laser light beams over fiber optics cables?

          1. 1.2.4.1.1

            A question that reflects more on the asinine result of that particular case, eh Paul?

            Where do you stand if in fact the importation was NOT by an electromagnetic wave?

            Are electrons removed from the “physical” to suit the ideological ends?

            And perhaps better yet, is the transformation within the States from a non-protected wave into a physical form an act of ifringement (making) that is protected – and using just a teeny bit of critical thinking – this be so regardless of the actual varying content so long as the functional relatedness is captured in that making?

            Like it or not “folks” things like lines (on a measuring cup) or numbers (on a magic hat band) carry patent weight.

            This is because of the basics that includes understanding what patents were meant to protect.

            Digital goods are still very much goods – they still very much fall into the in rem category.

            As the author here points out, consider the implication of holding otherwise: digital goods have no protection.

            Just watch the Mickey Mouse syndrome kick in.

            1. 1.2.4.1.1.1

              Where do you stand if in fact the importation was NOT by an electromagnetic wave?

              Right. Because if the description of someone’s teeth was written on a piece of paper then the description is no longer information.

              Sure. That makes a lot of sense.

              1. 1.2.4.1.1.1.1

                If that piece of paper was functionally related – absolutely.

                But you already knew that (because you have volunteered an admission against interests on that very item).

                In the best Homer Simpson tones:

                D’Oh!

                (Damm, your blunder paints you as the arse, doesn’t it?)

            2. 1.2.4.1.1.2

              consider the implication of holding otherwise: digital goods have no protection.

              That’s not the implication of the holding. Nice try, though!

              1. 1.2.4.1.1.2.1

                As you are attempting to portray the matter, that very much is the implication.

                Or are you against copyright next, because copyright can block the importation of those pieces of paper, and (gasp) block information…

                You really need to up your game, man.

          2. 1.2.4.1.2

            Perhaps. But once imported, the data sets presumably resided in a less transient manner on a hard drive or other “non-transient” computer readable medium.

Comments are closed.