- Next Monday (December 7, 2009) at 2:00 P.M. in Room 201, the Federal Circuit will hear en banc arguments in the case of Ariad Pharmaceutical v. Eli Lilly. The case questions whether Section 112 of the Patent Act creates a written description requirement that is separate and distinct from the enablement requirement. An audio version of the oral arguments is expected to be available that same day. [Calendar]
- PATracer reports on the pending Federal Circuit case of Kawasaki v. Bombadier. In that case, Kawasaki had sued to enforce the terms of a settlement agreement. Rather than enforcing the agreement, Judge Folsom of the E.D. Tex. dismissed the lawsuit – holding that his court lacked subject matter jurisdiction over what had become a contract dispute. In the 1994 case of Kokkonen v. Guardian Life, the Supreme Court held that unless incorporated into a court order, disputes over a settlement agreement must stand on its own jurisdictional feet. [LINK]
- Eriq Gardner asks Can a Science-Fiction Movie Infringe a Tech-patent? His question is prompted by a lawsuit where – you guessed it – a patentee (Carl Burnett & his company Global Findability) has sued Summit Entertainment for making/distributing the Nicholas Cage film entitled “Knowing” in which Cage is portrayed as acting like he is using an allegedly infringing geo-locator. The complaint was filed by the Cahn Samuels firm in Federal Court in Washington DC. In the movie setup, the geo-locating technology is based on information provided in 1958 (and rediscovered in 2008). If pretending to be an infringer is actionable, this reconstructed history may also render the patent obvious… The movie was critically panned, but Cage’s star power still helped bring in almost $80 million in box office revenues.
- Global Findability’s patent is actually quite interesting. It focuses on a mechanism that converts latitude, longitude, & altitude readings into a “single discrete all-natural number.” I.e., one number to uniquely identify a position anywhere (relative to the earth). [LINK]
The president should use stimulus money to provide additional resources to the PTO to help it become more efficient and to reduce its backlog.
One example would be to hire more appeals board judges.
on a completely different topic, Google Scholar now lets us search case law. Google SideWiki permits google toolbar users to add our comments to a “sidebar” next to any particular case. For example, it’s possible to gloss on particular paragraphs of precedential patent cases.
this tool has the potential to open-source commentary for which we presently rely upon a select few academics.
The articles and comments misrepresent the complaint. They imply that the film is being sued for script portraying the invention. But the complaint and patent could read on the process of making the patent.
I have not and I doubt anyone writing on this blog has carefully read the patent and attempted to see how these claims might apply to the film. What bothers me is sweeping statements made about patents from people who are completely ignorant of what the patent says and what the claims cover.
Speaking of trolls, I found a picture of you Mooney:
Put some clothes on will ya?
By idiots for idiots Mooney.
Go ahead – cry out another blustery response to me.
Speaking of crying trolls, I noticed today that even Judge Newman got involved in some troll spanking of the kind that will leave a serious mark.
Now you’ve got another reason to cry, Caveman.
No cryin’ here…
Like I said, by idiots – for idiots. And I couldn’t think of a better poster boy than you Mooney.
Of course you’re also the guy that thinks that everything is obvious crap, that “comprised of” is OK, and that stuff “reads on” claims.
Sloppy, just plain sloppy – and wrong.
Anonymous asked, “Has it occured to anyone that this lawsuit may be less about… (infringement … during filming) and more about firing a “warning shot” to anyone that would try to employ the allegedly infringing activities shown in the movie?”
Has it occurred to you that your scenario is prima facie evidence of a sanctionable frivilous suit? A federal district court is not an advertising medium.
Patent Troll – a derogatory term used by idiots in an attempt to influence idiots
It’s okay, Caveman. You can cry. Just let the tears flow. We won’t hold it against you.
Re: “I think the “written description of the invention” prong of Section 112, p.1, was initially placed in the statute at a time when there were no claims in order to distinguish what the inventor invented from what was old. See. the Evans v. Eaton case from 1822. It then and presumably now had nothing to do with enablement.”
Precisely why a modern patent application with ORIGINALLY FILED claims [or other spec description] of an invention should NOT have any “written description of the invention” problem as long as the Subsequent claims are not for a different invention only incidentally or very narrowly disclosed in a spec. example with no suggestion that it was broadly novel or inventive.
I dunno Mooney, that hypothetical was set forth like , oh, a law professor.
For the CAFC to schedule oral argument just a few weeks after the briefing closes, in an en banc case with numerous amicus briefs that it solicited, suggests a recipe for hasty pudding. There’s a ton of precedent that would have to be overruled to answer the 1st en banc question in the negative; indeed, some answers to the 2nd question would put a lot of precedent in question.
The mystery is that the CAFC could follow precedent, uphold/refine the 112,1 req’mts, but then reverse the panel decision. Ariad could have argued against a written description req’mt, but then win reversal of the panel decision that favored Lilly.
MM, I like your analogy. Funny. It does show though that a real problem with a patent that calculates a new number that has meaning is infringement.
Patent Troll – a derogatory term used by idiots in an attempt to influence idiots
You know this must be a legitimate case, because Mooney is trying so hard to shoot is down…
“Not true”
Keep telling yourself that as you, and your hackneyed use of the word “troll,” fade from significance, like a stale baboon fart.
Fun thread today, folks. Let’s have more like this one and less of the ones where you snark like bad-tempered adolescents.
Can your principal place of business be a UPS Store if you’re not UPS? And is that sufficient for the local District Court to have jurisdiction even if the other party is elsewhere?
More food for thought: let’s say the USPTO grants me a patent on a method of generating a number, wherein the number corresponds uniquely to a living human. It’s called the Living Human Number, or LHN and it has 15 digits. The LHN is calculated from data including date and time of birth, coordinates of birth, full name, and weight at birth. All this disclosed in the spec, of course, and well-claimed to include the use of a computer for calculating the number.
One day I see a person wearing a shirt that says “I’m 838,383,393,290,183.” Knowing only the name of the shirt manufacturer and **nothing more**, who can I successfully sue (assume the patent is valid)?
Part B: Assume that I know that someone in China is calculating LHNs and sending the numbers to a shirt manufacturer in the US.
Part C: Assume that I know that someone is just making up 15 digit numbers randomly and putting them on shirts for laughs.
Part D: Assume that the number on the shirt has only 14 digits.
Has it occured to anyone that this lawsuit may be less about whether inducement is occuring (or whether direct infringement occurred during filming) and more about firing a “warning shot” to anyone that would try to employ the allegedly infringing activities shown in the movie?
You mean filing the lawsuit might really be just a method for advertising the existence of the patent? Sort of like when a fading celebrity exposes herself in public to get some attention? If that’s what you mean, yes, the possibility has probably occurred to someone but the chances are slim that it’s the judge handling the case.
“I think the “written description of the invention” prong of Section 112, p.1, was initially placed in the statute at a time when there were no claims in order to distinguish what the inventor invented from what was old.”
Ned,
A very astute observation about the history utility claims in the 19th Century. These old-style utility claims looked very much like modern-day design claims (e.g., “the device substantially as shown and described.”) In other words, the patent specification took on even greater significance in the old days. Again, good comment.
Has it occured to anyone that this lawsuit may be less about whether inducement is occuring (or whether direct infringement occurred during filming) and more about firing a “warning shot” to anyone that would try to employ the allegedly infringing activities shown in the movie?
Let’s say Carol Burnett owns a US patent on a method of generating a number from data received by a probe stuck in Tim Conway’s navel. While in Europe attending a gathering of the Tim Conway European Fanclub, Tim Conway is filmed with a probe in his navel connected to a device that displays a number. Tim Conway loves the movie and signs any rights he might have in the movie to MaxDrei.
MaxDrei sends a copy of the video to me in the United States and I immediately recognize its entertainment value. With MaxDrei’s approval, I start selling copies of the video.
The next day I receive letter from Carol Burnett telling me that I’m infringing her patent. The question is: can I sue Carol Burnett for the costs of the surgery to repair my stomach muscles that were torn from laughing so hard at her letter?
“You have to be careful while doing that. I haven’t exactly seen a whole ton of caselaw or any definitive statements on these kinds of limitations. If you know of some let me know.”
Yes, you have to be very careful. This is an example of what MPEP 2111.04 is trying to address. However, I’ve only seen examiners apply this section correctly a few times. Note that the MPEP cites Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), which said that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.'”
You do have to look at the WHOLE claim, very carefully, to apply this. In the claim 9 discussed above, none of the part of the claim I mentioned seems to have any bearing on the practice of the method. Instead, it simply tells you what the result is good for. It’s not limiting.
It does not seem to me that the movie would infringe the patent
unless they make, use, sell, offer to sell, or import
the actual patented item.
Would a similar situation exist if someone does a computer
simulation on a patented item. They are not actually using the patented
item. I would say in that case, there is still no infringement. E.g. simulating
a drug is certainly not making it, using it, selling it, offering it for sell,
or importing it.
Is the movie a product produced using an infringing process which is subsequently imported into DC
By that logic, if an actor treated himself off the set with a patented “optimized treatment regimen” so that he could get out of bed and appear in the movie, the movie could also be a product “produced using an infringing process.”
That would be an insane reading of 271(g), in my humble opinion.
As always, this gets us back to the usual questions, e.g., what are the odds that during the making of ANY movie someone involved in the movie is infringing one of the thousands of crappy computer-implemented claims that the PTO has issued and continues to issue? Close to 100%, I imagine.
Now consider: Joe Schmoe certainly sent bulk emails out in the past on behalf of his company. If that crappy email patent in the previous thread was valid, would the company Joe works for be infringing the patent each time they sold a product that was co-produced with the assistance of a contact established by one of Joe’s emails? The trolls don’t need to answer this because we know that their greed knows no bounds and obscures their ability to reason. So let’s allow the second year law students who’ve taken an introductory IP class take a swing at this softball. Read the question carefully, kids.
EG and Paul, “adequate description” seems more akin to the problem of claim 8 in O’Reilly v. Morse. It generally arises from functional claiming and involves whether the description enables one to make and use everything claimed. I think the “written description of the invention” prong of Section 112, p.1, was initially placed in the statute at a time when there were no claims in order to distinguish what the inventor invented from what was old. See. the Evans v. Eaton cased from 1822. It then andd presumably now had nothing to do with enablement.
What may happen therefor is the Feds may limit the written description of invention requirement of Section 112, p.1 to what the Supremes always said it was and not to what it has become in the Fed. Cir. This may require Ariad to win.
“Everything from “for identification of …” on can be ignored (as a non-limiting statement of intent)”
You have to be careful while doing that. I haven’t exactly seen a whole ton of caselaw or any definitive statements on these kinds of limitations. If you know of some let me know.
“9. A geospatial information processing method comprising: converting latitude and longitude geographic degree, minutes, and seconds (DMS) coordinate alphanumeric representations or decimal equivalent geographic coordinate alphanumeric representations and altitude alphanumeric representations into individual discrete all-natural number geographic coordinate and measurement representations; and concatenating the individual discrete all-natural number geographic coordinate and measurement representations into a single discrete all-natural number geospatial coordinate measurement representation for identification of a geospatial positional location at, below, or above earth’s surface allowing a user to geospatially reference entities or objects based on the identified geospatial positional location and point identification.”
Seriously, doesn’t this “information processing method” have serious 101 problems, even pre-Bilski? Everything from “for identification of …” on can be ignored (as a non-limiting statement of intent) while everything before is simply a (rather straightforward) manipulation of pure numbers. Does the particular informational content of the numbers, which has no real bearing on the method itself, really take this out of the realm of an abstract idea?
>>What is it with you and men’s underwear Mooney?
Baboons envy humans and their underwear.
“Claim 9 infringed in D.C.? Explain how it’s plausible”
Maybe under 271(g)?
Is the movie a product produced using an infringing process which is subsequently imported into DC and sold? Still seems a bit far fetched, but maybe a little less laughable than a garden variety infringement.
CaveChange: As it turns out there is method claim 9 of the patent where Cage’s portrayed use of a geo-locator could plausibly be more accurately described as an alleged infringing practice of the claimed method steps.
Claim 9 infringed in D.C.? Explain how it’s plausible.
Only “trolls” use the word “troll”
Not true. But of course you know that already.
So let’s say he was infringing…what could the damages possibly be? Did people stop buying their patented device after seeing the movie?
Summit entertainment should counter claim in quantum meruit for the fair market value of a product placement in a movie. That would more than offset the damages.
Wow:
Who could have imagined taking two intersecting lines and associating an unique identfier to the intersection point. Hmmmm let me think . . . . “O”, “O” I know : maybe Rene Descartes in the 17th Century. link to en.wikipedia.org
“…in which Cage is portrayed as acting like he is using an allegedly infringing geo-locator…”
Fairly cavalier description of the likely basis of the case I would say. As it turns out there is method claim 9 of the patent where Cage’s portrayed use of a geo-locator could plausibly be more accurately described as an alleged infringing practice of the claimed method steps.
Next thing you know, baboons like Mooney will be clamoring for the Jon Lovitz honorary “Your honor I was just ACTING like I was infringing” defense to infringement.
“gets his underwear knotted up…”
What is it with you and men’s underwear Mooney?
Someone named “Dale B. Halling” gets his underwear knotted up over at Eriq Gardner’s site:
In this case, it is possible that the movie used the technology of the patent in question to create scenes related to satellite images. Reading patents and interpreting the claims is hard work.
Yes, Dale, well I did read the claims and they cover a “method” for generating a number and a “recorder” thing. There are no claims that could be construed to cover “scenes” or “images” or “movies” or “celluloid film” or “computer-readable media wherein said media encodes a film”. And the complaint alleges that infringement occurred in the District of Columbia.
The movie was filmed in Melbourne, Australia. Undoubtedly the special effects were done in California or Australia and not in D.C.
Paul,
Thanks for agreeing with me on what is likely to happen in the Ariad case. I’m fairly confident that the en banc Federal Circuit will rule that there is a separate and distinct “written description” requirement (there won’t be unanimity on this point as at least Judge Linn and I believe also Judge Rader don’t accept a separate and distinct “written description” requirement).
What is likely to cause some diverging views is what does the “written description” requirement mean. Like you, I view it from the “what did the inventor(s) actually possess/invent?” standpoint. (BTW, my dad was an interference specialist, so I got grounded early in what this means in the interference context.) But the problem has been in the biotech area (especially biotech subject matter defined in terms of functionality), starting with the University of California v. Eli Lilly case, where the “written description” requirement began to include another component which I called (after the Enzo Biochem v. Gen-Probe case) the “adequate description” prong: was the invention “adequately described” in the specification so that one skilled in the art would know what it is? In fact, those in the biotech field feel discriminated against in how the “written description” requirement appears to be applied differently to the biotech claims.
Judge Lourie has certainly been the biggest advocate of the “adequate description” prong in the biotech area. My problem is with how Judge Lourie applies the standard of review to “written description” issues. “Written description” is considered a question of fact (unlike “enablement” which is considered a question of law). That means the standard of appellate review for “written description” should be the “clearly erroneous” or “substantial evidence” standard. But Judge Lourie, in practice, treats the issue of “written description” as if it was “de novo,” i.e., a question of law standard.
Anyway, it will be interesting to hear what happens at the oral argument on Monday.
“Can a Science-Fiction Movie Infringe a Tech-patent?”
I’d say the better question is can a patent claim be anticipated by something from a science fiction movie…
Mooney, there is nothing humble about you, you are an arrogant baboon – you should be sanctioned for your perennial snarkiness and tiresome use of the ever increasingly cliche word “troll.”
Only “trolls” use the word “troll” – and baboons apparently.
As to Arid, Eric W. Guttag recently blogged: “..Ariad Pharmaceuticals v. Eli Lilly is about to ponder two questions: (1) is there a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. §112?; and (2) if there is, what does it mean? My answer to the first question is an emphatic “yes”, unless you want to overrule the 1996 case of In re Alton which clearly says that the “written description” requirement is ”distinct from the enablement and best mode requirements.” My answer to the second question is that the “written description” requirement fixes what the inventor(s) actually demonstrated and considered their invention to be at the time the patent application was filed (also known as the “what did the inventor(s) actually possess?” view).”
P.S. I agree, also since that has been the law in interference practice, for good reasons, and also because it seems to be compelled by the first two commas in §112. Likewise, it would be consistent with the interpretive doctrine against rendering specific language in statutes superfluous.
a patentee (Carl Burnett & his company Global Findability) has sued Summit Entertainment for making/distributing the Nicholas Cage film entitled “Knowing” in which Cage is portrayed as acting like he is using an allegedly infringing geo-locator
I’d humbly suggest that the plaintiff should be sanctioned for filing this lawsuit. Bigtime. The court needs to send a message to the wannabe trolls (the first of many that need to be sent and should have been sent a long time ago).
I mean, what’s next, are the pharma trolls are going to sue Miramax for the “treatment optimization” procedure that Meryl Streep’s doctor uses when he treats her on-screen “cancer”?
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