By Dennis Crouch
In ClearCorrect v. ITC and Align Tech, the Federal Circuit reversed the ITC’s prior determination – holding instead that the Commission’s jurisdiction over the importation of “articles that infringe” does not extend to the “electronic transmission of digital data”. Rather, the court holds that the Section 337 of the Tariff Act is limited to “material things” as used in common parlance (i.e., beyond an “electron’s invariant mass” that may be associated with a digital transmission).
The opinion by the court was filed by Chief Judge Prost, although not strictly a majority opinion. Judge O’Malley joined in the holding that the ITC lacks jurisdiction over the case, but wrote a concurring opinion that differed as to issues of administrative law deference. Judge Newman wrote in dissent – arguing that the decision guts the future of Section 337 cases.
This is a 3D printer case involving teeth aligners. In this case, the accused infringer’s has a four-step process:
- Make a physical model of a US patient’s teeth;
- Use a 3D scanner to digitally recreate the patient’s initial tooth arrangement;
- Transmit the digital file to Pakistan where workers digitally determine a final tooth placement and generate the set of sequential aligners (digital files) to reach that result;
- Transmit the digital files of the aligners to the US; and
- Print the aligners out with a 3D printer and given to the patients.
Align alleged violation based upon a set of seven different patents, including U.S. Patent No. 6,217,325.
19 U.S.C. § 1337(a)(1)(B) provides the USITC with authority to take action against the the “importation … of articles that (i) infringe a valid and enforceable U.S. patent.” The only importation here was the set of digital 3d blueprints, but the USITC found that a digital article counts as an article and thus within the ambit of USITC authority.
The three opinions can roughly be characterized as follows:
Chief Judge Prost: Since Congress delegated authority to the USITC to resolve any ambiguity in Section 337, then the court must give deference to agency interpretations. However, there is no ambiguity about the definition of “articles” in that it should be interpreted to mean “material things” – and thus no reason to move to Chevron step two. Still, under a step-two analysis, the agency’s interpretation is unreasonable and not a permissible construction.
Judge O’Malley: This is an attempt by the USITC to regulate the Internet – an area over which it has no authority and thus need not be given deference.
Judge Newman: The ITC is designed to regulate unfair competition coming from foreign sources – that is what is going on here and should be within the agency’s authority.
= = = = =
The case had potential major importance in the copyright realm. The ITC also has jurisdiction to act against importation of articles that infringe US copyrights. Allowing the ITC to take action against digital importers would create a heyday for copyright owners going after foreign streamers – especially because the USITC procedures are designed to handle the situation where the defendant is abroad.
= = = = =
One thing to keep in mind is that the USITC’s jurisdiction is entirely duplicative of the federal district courts – it is simply an alternative (friendly) jurisdiction when the accused infringement involves the importation of articles. Here, the parallel lawsuit against ClearCorrect is still pending in the Southern District of Texas. That case has been stayed since 2012 pending the outcome of the USITC investigation.
Ned Said:
“Thus a manufacture is vendible article, not being machinery.”
To which I say, signals are vendible (Blu-Ray disks, HBO) and I would argue that they are not machinery.
Les, vendible and vendible article are not congruent.
Ned,
Your reply is simply not sufficient by any measure.
So let me repeat what I last left you with:
Ned,
You keep on saying “vendible” as if that help you.
It does not.
AND PLEASE – your attempt at being coy as to what is not included is shameful.
Useful Arts – as I have told you a gazilion times.
Article means thing Ned. Signals are things.
Les, you play word games.
Lets see:
Signals are things
Things are articles
Signals are articles
That is your proof?
The premise is wrong. Withing the law, an article is a physical object. In contrast, while a signal may be physical, it is hardly an object.
Premise?
Ned, it is abundantly clear that you are the one playing word games here.
No matter the ITC mandate, the patent mandate is clear.
Except to those who wish to insert their “philosophy” to over ride the plain fact that software is a manufacture solely intended as a machine component.
Solely.
Show me someone who denies this reality, and I will show you someone who does not understand what software is.
” Withing the law, an article is a physical object.”
I have seen this allegation before. But never any citation. Sometimes people or courts refer to physical articles. However, I have only seen that when someone is trying to spin the meaning of some earlier writing.
For example, see this summary of Bilski (which is congruent with my recollection of the actual ruling) from Wikipedia:
“Second, the court turned to transformation of articles from one thing or state to another. What is an “article”? Benson had made it clear that tanning hides, smelting ores, and vulcanizing rubber were all instances of transforming articles. This corresponded to the transformation test as the PTO and some amici curiae articulated it: one physical substance is transformed into a second physical substance. But what of electronic signals and electronically manipulated data? Or even more abstract constructs such as legal obligations, which the Bilski case involved? No Supreme Court precedents addressed such entities.
Some Federal Circuit decisions, however, had held some transformations of signals and data patent-eligible. For example, the Abele decision approved a dependent claim to a method transforming X-ray attenuation data produced in a X-Y field by an X-ray tomographic scanner to an image of body organs and bones —”
Data is an article…..
link to en.wikipedia.org
Do not confuse methods of producing signal with signals.
Do not confuse apparatus that produce signals with signals.
Don’t confuse discussion of “What is an “article”? ” with discussion of methods and apparatuses.
Just that you cited cases involving methods and apparatus to support your view on manufactures.
Ned,let’s see your definition of ‘manufacture.’
(hint: vendible does NOT help you)
Manufacture: a vendible object made by man, not a machine or a composition of matter.
“Just that you cited cases involving methods and apparatus to support your view on manufactures.”
No Ned. I cited a case discussing the meaning of “article” to support my view of “article.”
Ned,
You missed this in your hurry to respond:
(hint: vendible does NOT help you)
Les, from your post, ” Abele decision approved a dependent claim to a method transforming X-ray attenuation data…”
Yes Ned, and?
Word games Ned? I’m pretty sure that’s week one from Logic 101.
Anyway, my position is slightly different:
Article means thing.
A signal is a thing.
A bit is a thing.
Signals and bits are articles.
A bit is value.
A signal is information unless limited to something physical, like an Electromagnetic wave. But when so limited, a signal comprises a state of the electromagnetic wave.
An article is a physical object.
No Ned. An article is a thing. Signals are things. Bits are things. Even the court in Bilski understood that. Transformation of x-ray DATA is transformation of an article sufficient to satisfy the machine or transformation test.
Data is information, not an article.
Transformation of x-ray DATA is transformation of an article sufficient to satisfy the machine or transformation test.
Ned,
As I pointed out (way below at post 1.1.4), here is a paragraph from the good Professor’s write-up:
“The case had potential major importance in the copyright realm. The ITC also has jurisdiction to act against importation of articles that infringe US copyrights. Allowing the ITC to take action against digital importers would create a heyday for copyright owners going after foreign streamers – especially because the USITC procedures are designed to handle the situation where the defendant is abroad.”
IF – for argument’s sake, we take your view of “articles” as being ONLY the “hard goods” type of thing, why then are there not an ample number of bootleg/p1rates setting up just off shores (in international waters even) and engaging in the (rather profitable) business of shipping in the “bits”….?
Do you “all of a sudden” take a different view for copyright “articles”…?
anon, there are ways to deal with pirates on the high seas. We would merely have to further define piracy on the high seas to include copyright piracy — closing the loop so-to-speak, between the colloquial and the legal.
Once copyright piracy practiced on the high seas was high seas piracy, the remedy is criminal. The navy is called in, the pirates arrested or shot as they attempt escape, and then imprisoned for the rest of their lives.
Now, the next time you take a cruise, tell your daughter not to commit copyright piracy on the high seas lest she go to jail.
link to en.wikipedia.org
Ned,
You quite missed the point here: that “article” as you would have it, creates and REWARDS such new pirates….
Since such operations are not “really” dealing with “articles.”
I think the Chief Judge did an admirable job of statutory construction … looking at the big picture and construing the statute as a whole to make it consistent.
Which brings me to Achates.
How this same jurist could have written both opinions is inexplicable.
To review, the court held that 314(d) barred appeals of 315(b) decisions from an appeal of a final decision. 314(d) expressly bars appeals of institution decisions made under “this section.” The court held, based on St. Jude, that this barred appeals of 315(b) decisions from a final decision despite 315(b) not being within 314.
The court did not discuss or apparently even consider the structure of 314 as a whole or the IPR chapter as a whole. 314(a) requires that there be no institution unless the petition demonstrates a reasonable likelihood of success with respect to patentability. 315 bars institutions under a variety of circumstances related to patent infringement or validity lawsuits.
But 314 itself declares that institution decisions are made “under this chapter.” 314(b). This is entirely inconsistent with the idea that the 314(d) bar on appeals extends beyond 314 to include decisions made under 315.
But the Chief wrote Achates. One begins to wonder if there is one Chief for one case and a different Chief for a different case, depending on factors that are not discussed.
Different clerks?
I had the same thought.
Y.L. and J., not a chance.
315(b) appeal not a mandamus, dismissed.
“CLICK-TO-CALL TECHNOLOGIES, LP v. ORACLE CORPORATION
link to cafc.uscourts.gov
“Second, although CTC claims that it has petitioned
for mandamus relief, there is no mandamus petition
pending before us. There are three conditions that must
be met before a writ of mandamus can issue: (1) the
petitioner must “have no other adequate means to attain”
the desired relief;” (2) the petitioner must demonstrate a
“clear and indisputable” right to the writ; and (3) the
court “must be satisfied that the writ is appropriate under
the circumstances.” Cheney v. United States Dist. Court,
542 U.S. 367, 380-81 (2004) (internal citations and quotation
marks omitted). In its reply brief, CTC argues in the
alternative that it “has a clear and indisputable right to
issuance of a writ of mandamus because the Board ignored
the plain language of § 315(b) by exercising jurisdiction
over this case.” Appellant Reply Br. 11. We conclude that CTC’s cursory allegations in the alternative
are insufficient to permit the court to meaningfully consider
the issue at this time.
For the foregoing reasons, we dismiss CTC’s appeal
for lack of jurisdiction.”
Does anyone see what is afoot here yet? A systematic denial of justice.
Maybe Director Lee can take the two minutes to improve “patent quality” by informing Examiners that every claim reciting only the following steps is obvious:
1. Gather information about a thing.
2. Determine if thing can be improved
3. Use logic to “automatically” determine what needs to be done
4. Transmit information (e.g., 3-D printer file or any other information) embodying the determination in 3.
Of course, adding a step 5 reciting “actually improving the thing according to said information” doesn’t affect the conclusion.
I wonder how much generic junk of this sort has already been granted. My guess is quite a bit.
MM, “Obvious?” Well, if KSR stands for anything, there has to be a functional improvement in something otherwise eligible for the subject matter not to be obvious.
But, if the claimed subject matter does not improve a machine, manufacture or a composition, or involve a process for making one of these, or using one of these to produce a new or improved physical result, are not we talking about 101?
“in something otherwise eligible”
That’s not the law, Ned.
Further, your attempt here at defining process is ALSO not the law.
Same C R P, yet another thread.
Your arrogance knows no bounds.
In a world that knows only metal/wire braces, why would the claimed method have been obvious? Simply because you declare it so?
In a world that knows only metal/wire braces
People were using catgut to close gaps in teeth thousands of years ago so it’s likely that your “world” never existed. Also this:
link to archwired.com
“As far back as 1945, orthodontists realized that a sequence of removable plastic appliances could move teeth toward a predetermined result. Some orthodontists even made simple plastic “aligner trays” in their offices for minor adjustments.”
Throw in 3-D imaging technology (known to be capable and useful for imaging anything), the use of logic as understood by skilled dentists, and any well-known technology capable of manufacturing a simple apparatus (e.g., robotics, 3-D printing) and that’s it.
It isn’t “inventing” to take someone else’s apparatus, e.g., a 3-D printer, and say “3-D print this”. Nor does folding in some baloney about “identify a thing that needs repair or replacement and then 3-D print it.” Nor does folding in some baloney about “take a picture of that broken thing and use logic to figure out what you need to fix it.” Nor does folding in baloney about “transmitting information that you figured out with logic.”
It’s the inability (I’m being generous here) of our PTO to see through the mindless games being played by free-riding patent applicants that’s pretty much fubar’d the patent system for everybody. There’s an easy way to take a giant step towards fixing the system but it’s not clear that humankind can abide the shrieking and mewling of the aggrieved “stakeholders” (aka The Most Important People Ever) when that step is taken.
Awesome video demonstrating 3-D printing with calcified whip cream.
link to youtube.com
I suggest viewers take note of the publish date of that YouTube video.
Woah. They should have a dozen patents on that. It’s amazing. All those items printed from nothing but whipped cream!
In terms of the actual idea of using different “plates” (or whatever these are called) and being able to manufacture them, that I believe was a stroke of genius well deserving of patents. MM just doesn’t like anything that gets transmitted, anything done with computers, anything on the Internet, etc.
I believe was a stroke of genius
Tell everyone who the “genius” was who “invented” the idea of using a sequential series of devices to straighten teeth. Surely he/she is immortalized in the Orthodontics Hall of Fame.
MM just doesn’t like anything that gets transmitted, anything done with computers, anything on the Internet, etc.
It’s not about “liking.” It’s about recognizing systemwide incompetence when you see it. The popular alternative, of course, is to pretend that electronic signals and connected computers were “invented” in 1990 and it took ten years after that for “genius” patent attorneys at their annual Christmas party to figure out their utility.
[…] already wrote about the holding in yesterday’s ClearCorrect decision – transmission of an electronic communication cannot be considered importation of an […]
Can you support that with some citation or analysis? This is the first I’ve heard of what would be a significant change in the law, if it were correct.
It’s actually amusing to see folks here making arguments against this decision that depend entirely on the even worse decisions that directly led to proliferation of junk patents like the one asserted here.
Ridiculous nonsense like people suggesting that the ITC “seize signals” or seize dentist’s computers or answering machines because of some patent-ineligible information stored on them is just one of the many reasons that information and logic patents need to be expunged from our system system with extreme prejudice.
So Align cannot use the ITC to stop the importation of the single missing process step, but under Akamai, ClearCorrect could be found to be a 271(a) direct infringer by outsourcing under contract the missing method step, and receiving the results back to complete the patented method. As such, with Akamai, Align has non-ITC actions against ClearCorrect that it may not have believed it had under the pre-Akamai narrowly interpreted single entity rule.
Lloyd, ClearConnect LLC was deemed to be a direct infringer.
This case is not so much about providing a remedy against ClearConnect, but about whether the ITC was granted authority by Congress to regulate the Internet.
stop the importation of the single missing process step,
It’s impossible to import a process step.
MM, you are one of the few voices of reason here.
It is possible to import an article necessary to performing a process step.
But that article cannot be a signal.
Traditionally, in rem jurisdiction, has been over “things.”
Also for all the talk about science here, no mention of quantum mechanics, which is curious. You cannot seize an electron because you can’t know where it is at a given time.
You’re focus is on what kind of container the articles are sent in, rather than the fact that the articles are sent.
Neither you, nor anyone else, has addressed the hypos comparing a CD physically imported with a CD physically configured by a foreign-source signal. Let’s try a fourth time and see if _anyone_ can provide an answer.
Suppose I head north for a few hours, and one foot south of the Canadian border I set up a CD stamper (and just for kicks, right next to a U.S. Customs station). My buddy one foot north of border connects a wire from Canada to my CD stamper. Firm F in China sends a signal through that wire to my CD stamper, which uses content of the signal to stamp a thousand copies of a CD, which infringes a U.S. patent. Firm F also ships a thousand copies of the CD across the same border where they are inspected at the Customs station. The content of stamped and shipped CDs are identical and infringe the same U.S. patent.
I’m just offering a CD-stamping service. I don’t monitor what my stamping machine stamps or who buys the fabricated CDs. It’s an open service for anyone to pay for and stamp their own CDs. So let’s suppose I have no infringement liability, just like the ignorant shipping service has no liability for delivering the imported CDs.
For what practical reason should Customs to be able to seize the shipped CDs, but not the stamped CDs? Both sets of CDs are in the same situation that section 337 is intended to address.
There’s more. My CD business is so successful I set up a 3D-printing service. Firm F transmits the model for a patented shoe-horn which is printed by the 3D printer. I have no clue, I just let people pay to use my 3D printer from overseas. Firm F and I count dollars and juggle dictionaries. Customs twiddles its thumbs. The patentee waits 5 years for a tenuous infringement action to work its way through the federal courts.
Not that it’s relevant, and maybe I’m old fashioned, but opting to enable this kind of activity seems a bit … un-patriotic.
Neither you, nor anyone else, has addressed the hypos
Here’s some advice for you and your clients: take your CD patent and line your birdcage with it.
1) customs can seize the wire that you laid across the border under Suprema
2) why are you even set up right near the customs station? Seems like you are rigging the hypo to get the answer you want.
1) Then change it to a microwave radio link.
2) That is the purpose of a hypo. It’s proof by example. If an example fits the rule and the result is absurd, then the rule is absurd.
Yea but an absurd premise makes for an absurd result as well. I’ll improve your hypo.
Instead of a radio link there is one person on one side of the border with a computer and somebody on the other side of the border with another computer. Person a emails an
“Lawya”
Your flippant posts lack – even by my permissive standards.
Here, you seek to “improve” but absolutely F A I L to do so.
Elsewhere, you question the physics, but then exhibit a surprising lack of understanding of even basic physics (the uncertainty principle applies to exact knowledge of either location or speed, and exact knowledge of neither is required in the macroscopic world that would pertain.
Hey, I don’t mind your irreverence, but try to provide a cogent piece while being irreverent.
Whoops didn’t finish. Was typing on phone.
Instead of a radio link there is one person on one side of the border with a computer and somebody on the other side of the border with another computer.
1) Person A on Canadian side emails a song illegally to person B on the US side. Person B downloads it.
2) A mails B an illegally burnt CD. Customs seizes it.
The difference is jurisdiction. Again, customs has ‘in rem’ jurisdiction’
Where does customs get its jurisdiction from in example 1?
Anon. The point is that customs has “in rem” jurisdiction and that you cannot seize an electron because you can’t even identify its location in space at a given time.
I don’t quite understand what is irreverent or flippant about that.
I do “get” the point you want to make about “in rem.”
The point though is that your errors shine through regardless.
What were my errors in particular?
You mean besides the specific ones I directly mentioned here?
Anon. I sincerely don’t know what you are talking about sorry.
That’s a “you ” problem.
There are things that I just cannot fix.
(and you should be sorry)
Wow. Ok anon.
US patent law does not deal with electromagnetic transmission logically or consistently.
link to vjolt.net
Are solitons manufactures? They are predicted mathematically but do not occur “naturally”.
link to en.wikipedia.org
Usually legal issues associated with transmission of information across international borders is a matter for the ITU and the international telecommunications regime.
JM: US patent law does not deal with electromagnetic transmission logically or consistently.
Electronic transmissions themselves are not eligible for patenting. There’s nothing “illogical” about that. Start from that fundamental fact about the system and work outwards and you’ll discover that the US patent system is relatively consistent (at least when compared to, e.g., its treatment of patents on logic).
You did not read the article. The original Morse decision rejected a claim directed to the concept of electromagnetic transmission of information. The PTO has expanded that decision to reject patent claims directed to objects that are arguably manufactures.
Note that Maxwell’s Equations had not even been discovered when Morse was decided and that classical electromagnetic theory in comparison with quantum field theory is itself a very deficient understanding of the physical phenomena, about which the PTO and the US Courts make some extremely ignorant and false assertions.
Please read the article to which I linked. It is quite thorough on the inadequacy of the treatment of electromagnetic phenomena is US patent law.
link to vjolt.net
What do Maxwell’s equations have to do with legal decision making in practice?
Electronic transmissions are not patent eligible for policy reasons. The law is not a science.
Please read O’Reilly v. Morse 56 U.S. 62 (1853), 35 U.S. Code § 101, and In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007) along with Patentable Subject Matter and explain how CAFC is rejecting patentability of electromagnetic transmissions for matters of policy and not for matters of misunderstood physics.
Also explain whether solitons, which are certainly a lot more palpable and non-transitory than a good number of patent-eligible materials, should have been patent-eligible when they were first manufactured.
JM: CAFC is rejecting patentability of electromagnetic transmissions for matters of policy
So. What.
explain whether solitons, which are certainly a lot more palpable and non-transitory than a good number of patent-eligible materials, should have been patent-eligible when they were first manufactured./i>
And people complain that I have too much time on my hands.
The time on your hands is not the complaint.
It is the spew that you indulge yourself in with that time – THAT is the complaint.
Although couched at a 101 case, Morse is probably better considered a 112 case under mean plus function limited to the structure of the specification case – post codification of 112.
IWT, perhaps the Supremes are couching Morse in 101 to avoid 112(f). They
really, really, really, really, really, and one more time, really
want claims expressed so broadly as to encompass all future methods, means or ways of achieving the invention declared
I N V A L I D.
Hallibuton was (and is) no joke to the Supreme Court because Halliburton simply reiterated Morse.