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.
when considering things digital, one may take a moment for an amusing aside:
link to vox.com
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
actual law
It appears that is “anon” is still digging that “actual” hole to “actual” China.
Funny stuff.
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.
It’s ironic because as bad as he is, you’re worse.
You’re more hypocritical than the people you accuse of the same.
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?
the brilliance that I exhibit
Pretty sure it’s time to get those meds of yours recalibrated, Billy.
Who is this Billy?
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.
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.
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
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?
Your “not doing” anything of merit is widely recognized.
(that’s not a good thing)
Has anyone noticed a severe drop in the “innovation” of “new signals” since the Nutjen case was decided?
Me neither.
Maybe all the signal innovation is occuring in Europe.
LOL
Really? What new signals are you hearing?
Are you wearing the tin foil hat the Doctor gave you?
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
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]…?
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]
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
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…
the digital data sets – as understood by a Person Having Skill In The Art
… are still just data. Nice try, though.
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.
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.”
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.
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.
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.
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.
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.
Right. Uploading is not an article. However, in at least some cases, the item uploaded is.
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.
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.
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.
” a majority of the ITC Commissioners agreed, interpreting the term “articles” to include digital information. ”
Which bringssss ussss baaaack to doooe
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
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.
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
Les, a signal cannot be an article under controlling Federal Circuit law. Did the ITC even address this?
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.
No doubt, Les, customs can embargo CRMs. Would and order to that effect satisfy you?
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
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.)
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
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?
Les: when Transporter Technology is perfected
Super serious stuff, folks. Pay attention!
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….
You didn’t really answer my question Ned.
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.
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.
“Traditional Zombies?”
What about “mind-numbed-robots?”
or
“Nattering nabobs of negativism?”
or
“Hopeless, hysterical hypochondriacs of history.”
With whom you align says far more about you Ned than what you realize
(that’s not a good thing – for you)
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
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?
anon, the problem you have is that you agree with me at times. How does that make you feel?
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.
Rather Ned, you agree with me at times.
Totally different from “anon” agreeing with Ned!
Wow.
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….
By the way, MM and I do not always agree on every issue.
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.
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.
MM, one can induce infringement using words. Why not digital files?
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.
You are really way out there in the weeds on your “description” obsession….
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.
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.
Y-y-y-you just don’t understand…
What a chump.
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?