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Todays Posts: -
New Contributing Author: Jason Rantanen
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My friend Jason Rantanen has agreed to become a contributing author on Patently-O for the next few months. He’ll be posting case reviews and other notes about once each week. Jason and I were classmates at the University of Chicago School of Law. Before law school, Jason earned degrees in both Biology (Brown) and History (Brown, Chicago). He clerked for Judge Bryson on the Federal Circuit and litigated IP disputes at the Munger Tolles firm in San Francisco. This summer, Jason started on an academic path as a Visiting Scholar at UC Hastings School of Law. He may not want this shared, but Jason is also married to a patent attorney.
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Posts written by Jason will bear his name.
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Media Queue v. Netflix:
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I recently posted on the push by Netflix for a legal shift that would allow successful defendants greater access to recover attorney fees. [Link] Nick Gross, the inventor and patent attorney at the heart of the lawsuit has now posted an article on his blog where he addreses “certain false statements and mischaracterizations raised by Netflix.” [Link] Nick Gross’s post provides an interesting history — especially regarding pre-litigation activities between the companies.
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Mud, I and the other commenters are not disagreeing with your statement that the Netflix customers must do something to create the recited rules. But Netflix alone can directly infringe the claim under 35 USC 271(a), and the customers do not have to be joined in litigation. That is, nobody is being sued for contributory infringement under 35 USC 271(c), because the claim itself is infringed by Netflix’s actions with the rules.
Thanks, Mud. I only went off what you posted. You did not post step c or the wherein clause.
BTW, I think the whole ideas of user configurable options is a good one, including queue replenishment.
Claim construer might need to read a bit more carefully.
For claim 1. (and the remaining base claims of the patented procedure:
” c. sending an electronic notification to the subscriber with said computer in response to an affirmative determination under step (b) that such notification is necessary based on said set of notification rules;
wherein said set of notification rules and/or set of queue replenishment control rules include a user configurable option with a first choice to automatically trigger a modification of the subscriber rental queue, and a second choice which does not trigger a modification of the subscriber rental queue;
further comprising said subscriber selecting one of said first choice or second choice to automatically trigger or not trigger a modification to said subscriber rental queue.”
Netflix customers dictate the outcome of the procedure (which isn’t a product in the first place) such that the behavior can be equivalent to the Netflix prior art.
Every claim suffers from the inescapable problem that each and every step of any allegedly infringing activity is able to be declined by the customer. The “automatic queue replenishment” step of claim 13 at suit, for instance, is capable of being precluded by the customer’s construction of “automatic” “notification rules” that prevent the carrying out one or more of steps c through f of the invented procedure. In particular, the threshold level of annoyance directed toward the customer is never disclosed to be equal to a constant value (and is necessarily set by the threshold tolerance of the customer to be dunned by the merchant to rent a copy of “Ishtar” once again). There are more important difficulties with the claimset, but there’s no doubt that careful construction of the claims will point them out to you.
Ned – agree with you 100%. I can’t decide if there’s infringement either way, but I do think the court unduly limited the authorization limitation. I strongly disagree with commenter “Mud” that this limitation requires third party action to directly infringe the claim. MUD = Megwhitman Under Disguise? I kid…
Malcolm, your “comments” regarding obviousness are well-taken as non-sequiturs at this point, since no 103 invalidity denfense has been raised.
Hi Ned.
You forgot to read the WD.
link to google.com
Review the “background” section and the “summary of the invention”.
Queue stuffing and surcharges for undesirable recommendations that automagically appear at your door along with an invoice will enhance anyone’s business.
This is what has made the “no I don’t want to be a subscriber any more because you send me these junk selections of the month whether I want them or not” book club so successful.
Let’s see.
From claim 1,
“a. defining a set of notification rules for the subscriber rental queue, which notification rules are authorized by the subscriber;”
From the point of the single actor, this claim seems to require defining a set of notification rules for a subscriber queue. Now, what rules are these? The particular notification rules previously authorized by the buyer.
I have not studied prosecution history or the patent. This is only my 10000 foot read on the claim language.
Now, if this is all old (and I think I have heard that before somewhere) then I would further think the notification rules would be what kind of notifications are sent by Netflix to the subscriber and under what conditions.
From my understanding of the facts of Netflix service, the subscriber can ask for regular notification, notification of queue additions by a friend, facebook recommendations, and delayed service due to vacations and the like. All of these could constitute, in my view, notifications and be responsive to notification rules authorized by the subscriber.
Now, I really do not understand why the court construction added all the other requirements concerning menus, etc, to the “authorization” limitation. Clearly those are in the preferred embodiment, but they are not in the claim. I think the claim construction seem to violate Phillips by incorporatin subject matter from the specification into the claim, but there may be a good reason for the incorporation that I am not aware of. But it seems unusual — and wrong.
But, as I see it, the claim does not require as an element an authorization by the subscriber, only that the notification rules be applied to subscriber queue.
If this is the case, there is but one actor in the claim to this point.
I have no idea about the balance of the claim, but I am surprised at this point that the PO lost on this element.
Netflix has its own junky “method of doing an online rental business” patent that uses them new-fangled computars thingies and teh intartubes.
AND ITS HUGELY SUCCESSFUL SO IT MUST BE NON-OBVIORS!!!!#$!
The only thing more appalling than reading those claims is knowing that the PTO issues more of this pure crrrpola every week.
1. A method of electronically notifying someone when something happens, including the steps of:
a. defining a set of rules for when someone is notified, wherein said someone defines some of the rules;
b. monitoring something and notifying said someone in accordance with the defined rules.
“B-b-but Examiner, my rules re-re-late to m-m-movie r-r-rentals!!!!!”
Continuing in part the above:
The 100% mortality rates observed subsequent to the practice of administering compound X, annoyingly enough made without silicates, has been shown to be reduced to less than 46% mortality by the method of administering of silicated compound X, a newly “discovered” compound.
Will I have to license both the patient killer method patent and the not-so-patient-killing method patent or can I skip the patient-killer method entirely?
Will the patient-killer patentee be able to collect in the 46% of the cases where the outcome is arguably identical to the outcome of its procedure?
Patent Law 101, in defense of a junk method patent claim that can’t begin to be operated on absent the input of an arms length customer of a rental service says:
“That is not a correct restatement of contributory infringement. You would be correct only if there was a recited step of “authorizing, by a subscriber,. . .” in the claim; there’s not. The recited methods require only handling/acting based on previously-authorized rules.”
Absent the prior “authorization” no rules are established and the procedure isn’t carried out, since all other steps are the prior art of the Netflix business with the exception of “replenishing” a rental queue with selections that the customer hasn’t made (presumably “Gigli” and “Ishtar” would suddenly appear at the top of one’s rental queue). Whether “user experience” is enhanced by having “Clippy” navigate Susie Sixpack through a round of equally unappealing options or be doomed to submit to some default automated annoyance rules that spams recommendations for duds that are otherwise unrentable (if not downright toxic) when all she wants to do is get the second season Barney DVD for little Giselle Sixpack’s entertainment is irrelevant anyway, since Netflix doesn’t use MediaQueue’s method. Apparently, neither do Netflix’ users.
*******
“For example, if I have a method of treatment claim reciting “administering compound X, which is made without silicates, . . . ” the administering party does not have to make compound X to directly infringe the claim.”
If there’s nothing compellingly novel about the “administering”, then you’re unlikely to even get started. All the better for you.
>>>>>
For example, a patient is administered compound X, which irrelevantly enough is made without silicates….
The patient dies.
What percentage of the outcome does the patentee get?
link to google.com
All procedural claims in dependent form.
“1. A method of electronically notifying a subscriber to a content provider of activity in a subscriber rental queue associated with the subscriber, including the steps of:
a. defining a set of notification rules for the subscriber rental queue, which notification rules are authorized by the subscriber;
b. monitoring the subscriber rental queue with a computer in accordance with said set of notification rules and a separate set of queue replenishment control rules authorized by the subscriber so that said computer can determine if a composition should be altered through additions of playable media titles and/or ordering of playable media titles in the subscriber rental queue should be altered;”
“13. A method of electronically notifying a subscriber to a content provider of activity in a subscriber rental queue associated with the subscriber, including the steps of:
a. defining a set of notification rules for the subscriber rental queue, which notification rules are authorized by the subscriber;
b. monitoring the subscriber rental queue with a computer in accordance with said set of notification rules and a separate set of queue replenishment control rules authorized by the subscriber so that said computer can determine if a composition of such rental queue should be altered through additions of playable media titles and/or ordering of playable media titles in the subscriber rental queue should be altered;
wherein said queue replenishment control rules include a trigger event to be used in determining when said subscriber rental queue should be modified, and said trigger event is based on a quantity of playable media items remaining in the subscriber rental queue;”
“13. A method of electronically notifying a subscriber to a content provider of activity in a subscriber rental queue associated with the subscriber, including the steps of:
a. defining a set of notification rules for the subscriber rental queue, which notification rules are authorized by the subscriber;
b. monitoring the subscriber rental queue with a computer in accordance with said set of notification rules and a separate set of queue replenishment control rules authorized by the subscriber so that said computer can determine if a composition of such rental queue should be altered through additions of playable media titles and/or ordering of playable media titles in the subscriber rental queue should be altered;
wherein said queue replenishment control rules include a trigger event to be used in determining when said subscriber rental queue should be modified, and said trigger event is based on a quantity of playable media items remaining in the subscriber rental queue;”
“13. A method of electronically notifying a subscriber to a content provider of activity in a subscriber rental queue associated with the subscriber, including the steps of:
a. defining a set of notification rules for the subscriber rental queue, which notification rules are authorized by the subscriber;
b. monitoring the subscriber rental queue with a computer in accordance with said set of notification rules and a separate set of queue replenishment control rules authorized by the subscriber so that said computer can determine if a composition of such rental queue should be altered through additions of playable media titles and/or ordering of playable media titles in the subscriber rental queue should be altered;
wherein said queue replenishment control rules include a trigger event to be used in determining when said subscriber rental queue should be modified, and said trigger event is based on a quantity of playable media items remaining in the subscriber rental queue;”
An “authorize” = no definite action taken.
link to docfiles.justia.com
Even without any “interactive user authorization” the patentee argued infringement.
Note particularly Page 19 through 23, there the patentee argues infringement independent of the “authorized by the user” step which gave adequate novelty to the unenforceable claims to gain the grant of patent, useless as it is outside the scope of the patentees non-existent “rental business system”.
After taking all of the plaintiff’s statements in the light most favorable to their validity, Judge Illston concludes:
In light of the Court’s construction of the term “authorized by the subscriber” to mean “elected
by the subscriber after the subscriber is presented with a choice among multiple options,” the Court
finds that a subscriber’s accepting Netflix’s overall Terms of Use does not satisfy the “authorization”
element required by the ’243 patent claims. Plaintiff argues that in accepting the Terms of Use,
subscribers are in fact given a choice of either opting to use Netflix’s services or opting not to use
Netflix’s services. However, someone who chooses not to accept the Terms of Use would not be a
“subscriber” of Netflix’s services. Accordingly, the Court finds that a subscriber’s acceptance of
Netflix’s Terms of Use does not constitute “defining a set of notification rules for the subscriber rental
queue . . . authorized by the subscriber” as recited in claims 13 and 23.
(Pages 19 and 20)
“According to the Court’s construction of the claim terms, “notification rules” must govern the
transmittal of notifications about the subscriber’s rental queue status. Since plaintiff has presented no
evidence that the accused features of Netflix’s system control notifications about the status of the
subscriber’s rental queue, the Court finds that none of the Netflix features relied upon by plaintiff
constitute “notification rules” as recited in claims 13 and 23.”
(Page 20)
“Claims 13 and 23 both require “authorization” of the queue replenishment control rules, and as
noted above, the mere acceptance of Netflix’s Terms of Use does not constitute the subscriber’s
“authorization” of the rules within the context of the claims at issue.
replenishment control rules” must govern whether to automatically add media titles to the subscriber’s
rental queue, and the terms of use cited by plaintiff do not satisfy this requirement because they merely
control the modification of the queues, not automatic addition to the queues. Therefore, the Court finds
that the portions of the Terms of Use cited by plaintiff do not constitute “queue replenishment control
rules” as recited in claims 13 and 23.”
(Page 22)
“As noted above, “queue replenishment control rules” within the context of claims 13 and 23 must
govern whether to automatically add media titles to the subscriber’s rental queue, and plaintiff has not
presented any evidence that the subscription plans govern the automatic addition of media titles to the
subscriber’s rental queue.8 Therefore, the Court finds that Netflix’s Subscription Plans do not constitute
“queue replenishment control rules” as recited in claims 13 and 23.”
(Page 23)
Netflix has its own junky “method of doing an online rental business” patent that uses them new-fangled computars thingies and teh intartubes. On the other hand, they actually run an online media rental business by meatspace delivery.
Next we turn to “Patent Law 101”.
Hey Mud, could you post at least one claim here and so that we might better understand the single-actor issue in this case?
“the Netflix and Blockbuster entities are not the sole practitioners of the procedure. That’s simply a fact defined in the claims themselves when “authorized by the subscriber” is a condition for the practice of the method”
That is not a correct restatement of contributory infringement. You would be correct only if there was a recited step of “authorizing, by a subscriber,. . .” in the claim; there’s not. The recited methods require only handling/acting based on previously-authorized rules. For example, if I have a method of treatment claim reciting “administering compound X, which is made without silicates, . . . ” the administering party does not have to make compound X to directly infringe the claim.
‘I think the judge screwed up the construction of “authorized,”‘
If the “authorization” is a step of the procedure carried out by the customer, MediaQeue was out of luck anyway.
The conspiracy alleged, even if actually carried out by individual members of the public, to collude with Netflix or Blockbuster to select ways in which they would treat “media availability notifications” or whatever gobbeldygook the learned patentee wishes to have “invented” is an entirely legal conspiracy. The fact that Judge Illston, taking the evidence presented by the plaintiff in the most favorable light possible found that the conspiracy was effected in a manner entirely at odds with the defined procedure (whether supported or enabled within the WD of the “system and method” or not).
Construe as one might, the Netflix and Blockbuster entities are not the sole practitioners of the procedure. That’s simply a fact defined in the claims themselves when “authorized by the subscriber” is a condition for the practice of the method. For a handy reference you might peruse this:
link to patentlyo.com
I read the decision too. I don’t think it’s “clean and clear.”
I think the judge screwed up the construction of “authorized,” and I’m not convinced that “replenishment rules” must govern addition of titles to the queue, as opposed to reordering (although the prosecution history makes me think the judge got replenishment rules correct with respect to 2/3 of the ind claims).
So I’m not sure if this is the best vehicle by which to turn up the heat on plaintiffs. I get a slimy feeling about both parties though.
link to docs.justia.com
MediaQueue lost clean and clear.
When you write a “process” patent you *must* write your claim set to single out your target and your target exclusively.
You *must* ensure that the target actually carries out each and every step in the procedure you’re claiming on the basis of your flimsy and vague description of some crudely described computer network based system that “automagically” makes all kinds of things happen.
Netflix and Blockbuster being so uncooperative as to not carry out all the steps of the claimed procedures is only icing on the cake. If it were actually necessary for the end-user of the service to interact with some “mediaqueue selector” to “authorize” “notification rules” there would no longer have been a single actor carrying out each and every step of the procedure.
Next time Nic wants to drop a note in the suggestion box he could save a lot of time effort and money by just doing that instead of launching a lawsuit over procedures that aren’t carried out and can’t be restricted by patent law anyway.
Customers are going to do what they do, and you simply can’t patent that.
Paul, do you have any views on the judicial remedy for fraud on the patent office committed by a hostile “licensee” during subsequent litigation against that licensee?
Paul, I just read the Netflix brief (or most of it). What appears to have happened is that the court entered summary judgment based upon a stipulation by the PO that if the claims were construed as requested by Netflix, there would be no infringement. That appears to be what happened.
The REAL question is whether the PO ever had a case for infringement given its proposed claim construction. It appears the parties each won some points on claim construction, so that it does not appear all that likely that the POs proposed claim construction was so far afield as to be a sham.
Netflix spends very little in its brief arguing whether the PO had any case given its view of claim construction, but that is the ONLY point that is even relevant to this situation in my view.
The main brief also repeats that the accused Netflix features were in use prior to the filing date of the patent. This kind of statement is highly prejudicial, in my view, in that it is blatantly contrary to law. I why they continue to argue this point on appeal is amazing.
6, I don’t get it? That case is a mess. It got an affirmation-in-part, with some claims allowable, some not. Is the pronouncement that “coupled to” doesn’t mean “directly coupled to” something new? I’ve always assumed this.
The firm has a funny name tho.
>>When is the Bilski decision coming out?
>>Posted by: Malcolm Mooney
It came out. You lost. You locked yourself in your aunt’s basement with a few bottles of jack. Glad to see you back. Take a shower. Have some breakfast. It’s a new world.
Don’t forget this gem
link to des.uspto.gov
Don’t forget this gem
link to des.uspto.gov
Apology for the off-topic, but it looks like Board decisions “incorporating” the SCOTUS Bilski decision have begun:
App #10/643,306 / Appeal #2009-006599.
When is the Bilski decision coming out?
LOL – I get it now – My hero only mentions me in light of the “boy named Sue” context – not actually believing that I be bad – only wanting me to be tough.
Oh, IANAE be right – but not in how Maxie thinks.
The man (IANAE) be a genius!
Ok, I almost never comment, but IANAE’s comment was cute and accurate.
So if Mr. and Mrs. Jason have kids, will they be “continuations”?
Continuations-in-part, because of the new matter added, and the later date of conception.
And you don’t even want to know how high the maintenance fees are at 11.5 years.
So if Mr. and Mrs. Jason have kids, will they be “continuations”?
See, IANAE was right again, when he urged that “better results” would come if one were to mention ping. And Cy, I only wrote that it reminded me, not that the “misplaced modifier” (thanks for that terminology) was the same grammatical construction. I still think I’m right but I can’t explain why. Perhaps that’s because the last time I was learning English grammar was about 50 years ago.
“substitute “ping”.”
Hey now hero o mine – no need to be lingering that animosity for when the Bilski opinion hit ya between the eyes and had you dazed for awhiles.
And he said: “Son, this world is rough
And if a man’s gonna make it, he’s gotta be tough
And I knew I wouldn’t be there to help ya along.
So I give ya that name and I said goodbye
I knew you’d have to get tough or die
And it’s the name that helped to make you strong.”
The inventor’s posted article strongly suggests that Netflix might have avoided this litigation [for less cost than this litigation?] by significantly different conduct in their licensing negotiations with the inventor. However, any alleged misrepresentations about that in their request for en banc review should not be relevant to what should be the only relevant legal issue here. Namely, did the present patent owner proceed with their patent litigation after no longer having any reasonable basis for infringement of three different elements of the claims, or not, and, if so, should that allow a defendant to collect attorney fees?
Are you telling me that this is grammatically incorrect?
Yes.
Try “Max won’t admit it, but patent law is not his strongest subject.” Or for better results, substitute “ping”.
“As a valued customer, we want to tell you about….”
Ah, but that’s a misplaced modifier. We don’t have that problem with the lobster sentence, do we?
Try this one: He won’t admit it, but patent law is not Max’s strongest subject. Are you telling me that this is grammatically incorrect?
Thank you to Dennis for having me guest-post for a few months. I’ll try to do my best to provide accurate – but brief – case summaries for your reading pleasure. I will periodically interject some of my own thoughts, but I’ll try to limit those comments. Initially I’ll be focused on catching up on some of the backlog, and I’ll note the approximate date of the case where appropriate.
To provide a quick end to the debate – my wife is indeed an attorney (a patent litigator, in fact). Obviously, none of my opinions should be imputed to her.
Is it pretty clear that “she” refers to the subject “lobster” and not the object “Susan”?
Yes. And equally clear that the sentence is grammatically defective because the author meant the pronoun to refer to Susan, and because “lobster” is plural.
To me it is unambiguous that the gas-causing lobster is female.
As to the object named “Susan”, under the rules of English grammar, it could just as well be a “boy named Sue”.
Reminds me of the embarrassing opening gambit in all those letters from firms trying to sell you something:
“As a valued customer, we want to tell you about….”
For Jason, of course. Patent attorneys never seem to think anything should be rejected.
Nicely done.
Only because in this day and age people are abandoning all grammatical conventions thanks to texting and Twitter. It’s pretty clear that “he” refers to the subject “Jason” and not the object “a patent attorney”.
Which convention is that, exactly? How about: “She may not want this shared, but lobster gives Susan gas.” Is it pretty clear that “she” refers to the subject “lobster” and not the object “Susan”?
For whom?
For Jason, of course. Patent attorneys never seem to think anything should be rejected.
ambiguous in this day and age.
Only because in this day and age people are abandoning all grammatical conventions thanks to texting and Twitter. It’s pretty clear that “he” refers to the subject “Jason” and not the object “a patent attorney”.
Now, if you read it together with “he may not want this shared”, and the lack of any gender-specific pronoun for the attorney, you might have a solid basis for some unfounded speculation.
Oh, the unbearable shame.
For whom?
I might also note that that the “he” in the sentence “He may not want this shared, but Jason is also married to a patent attorney” is ambiguous in this day and age.
Not that there’s anything wrong with that.
“He may not want this shared, but Jason is also married to a patent attorney.”
Oh, the unbearable shame.
Comments are closed.