Considering the Value of Patents in African Countries

Patent

The following is a guest post from South African patent attorney Ralph van Niekerk of Von Seidels

Like all IP rights, patents are territorial and if you want to stop a competitor from practicing an invention in a particular country, you need to have a patent there.

Given the global world we live in, successful inventions tend to be adopted widely and used in many countries. This is a fortunate position for patent holders, who can often protect their competitive global position by filing patents in only a few key countries in which patent rights are respected and enforceable.  If a competitor is not able to practice the invention in those markets, the feasibility of doing so in the rest of the world is limited.

For many patent holders, protecting their inventions internationally does not extend much beyond the IP5: China, the United States, Japan, South Korea and Europe. The following graph of patent applications at the top ten offices shows that patent filings drop off very quickly outside of the IP5:

Source: World Intellectual Property Indicators 2017, published by the World Intellectual Property Organization (WIPO)

Given the picture above, is there much value in having patents in other countries in the world? In particular, is there any real value in having patents in Africa, and especially in some of the smaller African countries?

As a South African patent attorney, I am frequently asked a version of this question by clients overseas. Since a patent is a right to exclude others from practicing the invention, I am quizzed as to what the patent litigation landscape is like in Africa and how easily a patent can be enforced against a competitor. Patent litigation in Africa is rare outside of South Africa, however, and objective measures of the strength of enforcement may not be available in many African countries.

But does the fact that a patent gives you the right to bring legal action against a competitor mean that the patent has no value to you unless you plan to enforce it? The answer is a resounding “no”. There are several good reasons to have a patent in African countries even if you never plan to enforce it there. I would go so far as to say that there are even good reasons to have a patent in a country in which enforcement options are limited to non-existent.

Royalty rates and exchange control

Many African countries have strict exchange control requirements that govern the flow of capital into and out of their economies. For a global company doing business in Africa, expatriating profits made from their African operations may not be a simple matter. Local officials may carefully scrutinise cross-border licence agreements and query the royalty rates charged.

Transfer pricing principles must be applied when supplies are made between related entities within a corporate group structure. In particular, when royalties are paid by a local subsidiary to a foreign parent company, the royalty charged must be aligned with what would be charged on an arms-length basis between unrelated parties.

A granted patent held by a parent company in a country of a local subsidiary can be powerful evidence that the technology being licensed is unique and justifies a higher royalty rate to be paid to the parent company. A local patent can be very useful in convincing exchange control authorities of this fact.

Tender processes

If the patented invention is one that will be used by government authorities, a local patent can help avoid what would otherwise be a competitive tender process.

I recently saw an example of this when the City of Cape Town asked my client for evidence that its water filtration system was patented. We provided details of the patent and the City issued my client with a letter confirming that they were the sole supplier of the system. The City did not go through the usual rigmarole of issuing a tender for competitive bids and this resulted in a valuable contract renewal for my client.

Local patents can therefore enable government contracts to be obtained more easily and on more favourable terms for products and services covered by the patent. To obtain single-supplier procurement and avoid an open tender, a patent may be very beneficial indeed.

Competition law liability (Antitrust)

While some countries in Africa may have weak enforcement of IP rights, the same is not true of their competition laws. African competition law regulators are effective in many countries and fines of up to 10% of a company’s turnover may be awarded. In South Africa, amendments to the Competition Act are in the pipeline that would see penalties increase to up to 25% of turnover for second offences.

A patent can justify commercial arrangements that would otherwise be anti-competitive. For example, tying arrangements are situations where a company agrees to supply a first product to another company, on condition that the other company also buy a second product from them. Such arrangements are usually seen as anti-competitive, but if both products are the subject of patent protection and are bundled as part of the same licence this will usually not be a problem. Similarly, boycotting a competitor by refusing to sell them a product may be anti-competitive unless the product is the subject of a local IP right in which case it is the supplier’s prerogative to whom to sell it. If a firm is dominant and has market power, charging an excessive price for a product or service or refusing to grant access to an “essential facility” may also be anti-competitive unless that product, service or facility is covered by an IP right.

South Africa’s Competition Act provides, in section 10(4), that, “A firm may apply to the Competition Commission to exempt from the application of this Chapter an agreement or practice, or category of agreements or practices, that relates to the exercise of intellectual property rights, including a right acquired or protected in terms of … the Patents Act”. An application for exemption under this provision is only available based on a local, South African patent. Similar considerations would apply in other African countries.

As a shield to potential competition law liability, patents in African countries can therefore be extremely valuable.

Tax benefits

Some African countries offer tax benefits to encourage local research and development. For example, section 11D of South Africa’s Income Tax Act provides an incentive for conducting R&D in South Africa. The incentive is by way of enhanced tax deductibility of up to 150% for qualifying expenditure incurred in respect of R&D. South African patents may be used to bolster an application made under section 11D, as the definition for R&D includes:

systematic investigative or experimental activities of which the result is uncertain for purpose of discovering non-obvious scientific/technical knowledge, or creating an invention, a registerable design, a computer program (as defined in the relevant IP legislation) or knowledge essential to the use of such invention, design or computer program; or developing or significantly improving any qualifying invention, design, computer program or knowledge if such development or improvement relates to any new or improved function or improvement of performance, reliability or quality. [My emphasis]

So for any patents that relate to developments that occurred at least partially in South Africa, having registered IP rights like patents helps demonstrate that the R&D activities fell within this definition. It is expected that other African countries will also adopt similar progressive measures in future to stimulate local R&D.

Conclusion

A narrow view of patents sees their function as only their ability to exclude competitors, so as to enable the patent owner to either exclusively practice the invention or license it to others.

This article has explored four other good reasons for having patents that may be even more valuable to a patent owner than the right to exclude. None of these reasons involves the quality of the local courts or available enforcement mechanisms, and should be taken into account when deciding where patent protection may be valuable.

Patently-O Bits and Bytes by Juvan Bonni

Patent

Recent Headlines in the IP World:

Source: WIPO

Commentary and Journal Articles:

New Job Postings on Patently-O:

USPTO to get Back its Fee Setting Authority

Patent

by Dennis Crouch

The SUCCESS Act (HR 6758) has now passed through both the House and Senate and will very likely be signed into law by President Donald Trump within the next couple of weeks.

The key aspect of the bill is extension of USPTO fee setting authority that ended in September 2018 (7 years after AIA enactment).  Under the new law, USPTO will retain authority to set its own fee structure until September 2026 (15 years from AIA enactment).

Section 10(i)(2) of the Leahy-Smith America Invents Act (Public Law 112–29; 125 Stat. 319; 35 U.S.C. 41 note) is amended by striking “7-year” and inserting “15-year”.

Under the law, the USPTO Director has authority to “set or adjust by rule any fee established, authorized, or charged under [either the Patent Act or the Trade Mark Act] for any services performed by or materials furnished by the Office.”  The one caveat is that the fee structure must be designed “only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents (in the case of patent fees) and trademarks (in the case of trademark fees), including administrative costs of the Office with respect to such patent or trademark fees (as the case may be).”

The “SUCCESS Act” portion of the legislation is an acronym for the “Study of Underrepresented Classes Chasing Engineering and Science Success Act of 2018” and begins with the following findings:

  1. Patents and other forms of intellectual property are important engines of innovation, invention, and economic growth.
  2. Many innovative small businesses, which create over 20 percent of the total number of new jobs created in the United States each year, depend on patent protections to commercialize new technologies.
  3. Universities and their industry partners also rely on patent protections to transfer innovative new technologies from the laboratory or classroom to commercial use.
  4. Recent studies have shown that there is a significant gap in the number of patents applied for and obtained by women and minorities.

In addition, the legislation includes the following “sense of Congress”:

It is the sense of Congress that the United States has the responsibility to work with the private sector to close the gap in the number of patents applied for and obtained by women and minorities to harness the maximum innovative potential and continue to promote United States leadership in the global economy.

The legislation does not actually do anything but does require the PTO Director along with the SBA Administrator to conduct a study that:

  1. Identifies publicly available data on the number of patents annually applied for and obtained by, and the benefits of increasing the number of patents applied for and obtained by women, minorities, and veterans and small businesses owned by women, minorities, and veterans; and
  2. provides legislative recommendations for how to— (A) promote the participation of women, minorities, and veterans in entrepreneurship activities; and (B) increase the number of women, minorities, and veterans who apply for and obtain patents.

Within 1 year, the PTO Director will provide a report to Congress on the results.

Music Modernization Act of 2018 Signed Into Law by President Trump

Patent

Guest Alert by Eric Moran.  Mr. Moran is a partner at McDonnell Boehnen Hulbert & Berghoff LLP and Chair of the firm’s Trademark, Unfair Competition, Advertising Law & Copyright Practice Group. (His office used to also be right next to mine at the firm).  This post was originally distributed via MBHB snippets. — DC

On October 11, 2018, President Donald Trump signed into law the Orrin G. Hatch–Bob Goodlatte Music Modernization Act (“the Act”), which will significantly modernize copyright law to account for the digital delivery of content. The bill, as updated and passed unanimously by the Senate and then the House, revises the Copyright Act (17 U.S.C. § 115) in several major ways.

Title I of the Act, “Musical Works Modernization Act,” streamlines mechanical royalties for digitally distributed music by allowing streaming services to pay a mechanical licensing collective (“MLC”) for a blanket license to stream copyrighted material. The MLC has a board of directors of 14 voting members and 3 non-voting members, with 10 voting members being representatives of music publishers, while 4 voting members being professional songwriters. The MLC is responsible for a number of activities under the Act, including:

  • the administration of blanket licenses;
  • the collection and distribution of royalties from digital music providers to songwriters and publishers;
  • the identification of copyrighted material embodied in sound recordings, locating the copyright owners of such material, and administration of a process by which copyright owners can claim such ownership; and
  • assisting with setting of royalty rates and terms.

Helpful to copyright holders, the Act provides a mechanism for royalty rates to be raised to reflect fair market rates and terms—to account for changes in the market. And helpful to streaming services, the Act protects streaming services from infringement lawsuits for past infringements.

Title II of the Act, “Classics Protection and Access Act,” attempts to provide owners of pre-1972 sound recordings with copyright protection. Before this Act, pre-1972 sound recordings were not covered under U.S. copyright law (owners instead needed to rely on state and/or common law for protection). This Act brings pre-1972 sound recordings partially within federal copyright law by (i) providing federal remedies for unauthorized use of pre-1972 sound recordings for 95 or more years after first publication (which time may be extended depending on the year of first publication), (ii) providing a statutory licensing scheme for some digital streaming services, and (iii) providing a means of lawful, fair use of such recordings.

Title III of the Act, “Allocation for Music Producers Act” or the “AMP Act,” provides a means by which music producers can receive a portion of royalties distributed under the statutory license provided under section 114 of the Copyright Act.

The full text of the Act can be found here.

 

PTAB: “Dwell Time” Ranking is “Internet-Centric” and Therefore Patent Eligible

Patent

In its pending Application No. 12/814,020, eBay is attempting to patent a list of listings ranked by “dwell time” — the “elapsed amount of time one or more users view a page describing the listing.”

The examiner originally rejected the claims as improperly directed toward an abstract idea.  On appeal, however, the PTAB has reversed finding that “dwell time” is a uniquely “internet-centric challenge” and the claimed solution is  “is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” quoting DDR Holdings.  The PTAB particularly noted that “dwell time” is not merely “some business practice known from the pre-Internet world” that was claimed by simply saying “perform it on the Internet.”

[DwellTimePTABDecision]

Claim 18 below is representative.

18. A method comprising:

identifying a plurality of listings stored in a … database as search results;

determining, using a processor, a respective dwell time associated with each [listing], the dwell time based on an elapsed amount of time one or more users view a page describing the listing, and the dwell time associated with a likelihood of a transaction occurring with respect to the listing; and

ranking the listings … based at least in part on the respective dwell time ….

PROBLEM — Although there is probably a way to salvage this invention on eligibility grounds, the PTAB is clearly wrong that “DWELL TIME” is an internet specific phenom.  Apparently, none of these PTAB judges have worked in retail sales.

= = = =

I’ll note here that the chart above is described as follows: “FIG. 1 is a graph of a likelihood of a transaction occurring based on dwell time at a ‘view item’ page.”  This chart appears fairly problematic in this case if – as I suspect – the chart is actually a prophetic example – even though not identified as such.  Not a huge deal – except that the entire patent turns on the function of “dwell time.”  If I were prosecuting this patent, I would make sure the PTO is made aware of the source of data (or absence thereof) for forming this figure).

Patenting a Spreadsheet

Patent

This week’s decision in DET v. GOOGLE focuses on patent eligibility of a muti-sheet spreadsheet displayed with notebook tabs.  The case is reminiscent of a 2014 Patently-O post by Howard Skaist written in the still roiling wake of Alice and Mayo.  In his post, Skaist considered ways that the inventor of VisiCalc (Dan Bricklin) might have claimed the computerized spreadsheet he first created in 1979.

Alice Corp. and Patent Claiming: A Simple Example

Skaist’s claims (proposed as thought experiments):

1. A method comprising: implementing a spreadsheet on a computer.

2. A method comprising:

generating and displaying a matrix of cells comprising an electronic spreadsheet on a computer, said electronic spreadsheet to implement on said computer one or more user-specified mathematical operations in which one or more operands for said one or more user-specified mathematical operations are to be entered in particular cells of said matrix and results of performing said one or more user-specified mathematical operations on said one or more operands are to be displayed in other particular cells of said matrix; and

displaying on said computer, in said particular cells and in said particular other cells, after said one or more operands are entered, said one or more operands and said results of performing said one or more user-specified mathematical operations on said one or more operands, respectively.

3. The method of claim 1, wherein said results of performing said one or more user-specified mathematical operations on said one or more operands comprise one or more operands of one or more other user-specified mathematical operations either with or without displaying said one or more operands of said one or more other user-specified mathematical operations in cells of said matrix.

In some pre-Bilski writing, Dan Bricklin explained why he didn’t actually try to patent the spreadsheet.  His basic answer — the invention was made in the wake of Flook and pre-Diehr — software wasn’t patentable at the time.  “If I invented the spreadsheet today, of course I would file for a patent. That’s the law of the land…today.”

Final Rule Package: Phillips Standard to be Used by PTAB in IPR Claim Construction

Patent

by Dennis Crouch

The USPTO’s Final Rule Package on Inter Partes Review Claim Construction is set to publish in the Federal Register on October 11, 2018.  Up to now, the PTAB has been using the USPTO “broadest reasonable interpretation” standard to interpret challenged patent claims.  Under the new rule, the PTAB will now rely upon the PHOSITA standard more traditionally used for issued patents as articulated by in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) and further developed in later cases. This new rule will apply in IPR, PGR, and CBM proceedings.  The new rule also indicates that prior claim constructions by a court or USITC “will be considered.”  This final rule is essentially unchanged from the proposed rule found in the May 2018 NPRM.  Timing: The new claim construction applies to cases involving “petitions filed on or after the effective date of the final rule, which is November 13, 2018.”

[Final Rules 2018-22006]

The change will make it incrementally harder to challenge patents in IPR proceedings — and so there may be some rush to file prior to the November 13, 2018 deadline.  However, studies have not really found BRI as applied by the PTAB to be broader than court construction.  The different standard has led the various tribunals to disregard and ignore the parallel decisions in other fora. I have supported this rule change — with the hope that it will to more respect between the judicial tribunals,  fewer seemingly inconsistent opinions, and a quicker resolution of issues in constested patent cases.

The USPTO received 374 comments on the proposal — including two from me.    My comments generally supported the proposal but did suggest that the approach be modified to do an even better job of ensuring harmonization and respect for prior decisions.

Next step: I would also propose using the Phillips standard during regular ex parte prosecution.

Tabbed Spreadsheet — Patent Eligible

Patent

by Dennis Crouch

Data Engine Techs. LLC v. Google LLC (Fed. Cir. 2018)

D.Delaware Judge Stark dismissed DET’s case on the pleadings — holding that the Borland/DET spreadsheet-tab patent claims were directed to abstract ideas.  On appeal, the Federal Circuit has partially reversed — finding that some of the claims are directed toward “specific improved method for navigating through complex three-dimensional electronic spreadsheets” and thus are patent eligible. The decision here is authored by Judge STOLL and joined by Judges REYNA and BRYSON.

The patents at issue here basically cover the use of tabs in a spreadsheet document. You might be thinking – “WHAT I’VE BEEN USING TABS FOR 25 YEARS” — at least that is what I was thinking.  The thing is that DET’s patents were invented by folks at Borland Software — maker of Quattro Pro — and claim priority back to 1992. BOOM! Microsoft came out with its tabbed version of Excel in 1993 following Borland’s release. Back then I used Quattro Pro – and tabs were awesome.  The case here is against Google for its tabbed sheets.

As you’ll see below, the claims include a “notebook tab” — and that feature seems to be the key for patent eligibility.  This aspect of the decision makes it fairly questionable.

I’ll note that this case may well fit into the IP case-books as a companion to the 1996 Supreme Court case on spreadsheet menu copyright. Lotus Dev. Corp. v. Borland Int’l, Inc., 516 U.S. 233 (1996).

One framework for looking at this decision is by comparing Claims 1 and 3 of DET’s U.S. Patent No. 6,282,551.  According to the Federal Circuit, Independent Claim 1 is unpatentable, while dependent Claim 3 is good to go.

Claim 1 is directed to a method of organizing a “three-dimensional spreadsheet” (i.e., multi-tabbed).  However, claim 1 does not particularly claim the notebook tabs — that limitation is added to claim 3.

1. In an electronic spreadsheet … a method for organizing [a] three-dimensional spreadsheet comprising:

[Partition into tabs:] partitioning [a] plurality of cells into a plurality of two-dimensional cell matrices so that each of the … cell matrices can be presented to a user as a spreadsheet page;

[Name each tab:] associating each of the cell matrices with a user-settable page identifier …;

[Cells referencing other tabs:] creating in a first cell of a first page at least one formula referencing a second cell of a second page said formula including the user-settable page identifier for the second page; and

[Saving the tabs in files:] storing said first and second pages of the plurality of cell matrices such that they appear to the user as being stored within a single file.

3. The method of claim 1, further comprising:

associating the plurality of cell matrices  with a notebook identifier, whereby information stored in a first plurality of cell matrices may be referenced from a second plurality of cell matrices.

The court explained the problem with Claim 1 as follows:

We conclude that under Alice step one, [claim 1] is directed to the abstract idea of identifying and storing electronic spreadsheet pages. . . . [The claim] generically recites “associating each of the cell matrices with a user-settable page identifier” and does not recite the specific implementation of a notebook tab interface. Claim 1 of the ’551 patent is therefore not limited to [a] specific technical solution and improvement in electronic spreadsheet functionality . . . Instead, claim 1 of the ’551 patent covers any means for identifying electronic spreadsheet pages.

By implication, Claim 3 is patent eligible because it includes the limitation that the cell matrices (pages) are associated with notebook identifier (a tab).   I personally don’t see how claim 3 adds “something more” in a specific enough manner to transform the claim 1 into a patent eligible invention.

In its eligibility determination, the court spends most of its time focused on claim 12 of U.S. Patent No. 5,590,259.  Claim 12 is a different story than claims 1 and 3 above and does appear to cross a threshold from generically claiming aspects of an invention to very specifically zeroing in on how the user interface operates at a detailed functional level:

12. [A] computer-implemented method of representing a three-dimensional spreadsheet on a screen display, the method comprising:

displaying … a first spreadsheet page from a plurality of spreadsheet pages, …;

while displaying said first spreadsheet page, displaying a row of [user-settable] spreadsheet page identifiers along one side … each … being displayed as an image of a notebook tab … and indicating a single respective spreadsheet page…;

receiving user input … in response to selection with an input device of a spreadsheet page identifier for said second spreadsheet page;

[responsively] displaying said second spreadsheet page … in a manner so as to obscure said first spreadsheet page from display while continuing to display at least a portion of said row of spreadsheet page identifiers; and

receiving user input for entering a formula in a cell on said second spreadsheet page, said formula including a cell reference to a particular cell on another of said spreadsheet pages having a particular spreadsheet page identifier comprising at least one user-supplied identifying character, said cell reference comprising said at least one user-supplied identifying character for said particular spreadsheet page identifier together with said column identifier and said row identifier for said particular cell.

In reviewing this claim, the court explains:

When considered as a whole, and in light of the specification, representative claim 12 of the ’259 patent is not directed to an abstract idea. Rather, the claim is directed to a specific method for navigating through three-dimensional electronic spreadsheets. The method provides a specific solution to then-existing technological problems in computers and prior art electronic spreadsheets. The specification teaches that prior art computer spreadsheets were not user friendly. . . .

The Tab Patents solved this known technological problem in computers in a particular way—by providing a highly intuitive, user-friendly interface with familiar notebook tabs for navigating the three-dimensional worksheet environment…. The invention was applauded by the industry for improving computers’ functionality as a tool able to instantly access all parts of complex three-dimensional electronic spreadsheets. Numerous contemporaneous articles attributed the improved three-dimensional spreadsheets’ success to its notebook tab feature.

Representative claim 12 recites precisely this technical solution and improvement in computer spreadsheet functionality. The claim recites specific steps detailing the method of navigating through spreadsheet pages within a three-dimensional spreadsheet environment using notebook tabs. . . . The claimed method does not recite the idea of navigating through spreadsheet pages using buttons or a generic method of labeling and organizing spreadsheets. Rather, the claims require a specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers.

There is lots more to think about with this case, but this is enough for one post.

The Role of Objective Indicia in Non-Obviousness Doctrine

Patent,

The following is a guest post by Lauren Vincent who is currently a 3L at the University of Missouri School of Law.  Vincent is the Editor-in-Chief of the Missouri Law Review. – DC

ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365 (Fed. Cir. 2018)

Facts and Holding

ZUP, LLC v. Nash Manufacturing, Inc. involves two competitor businesses in the water recreational device industry. ZUP, LLC (“ZUP”) brought its wakeboarding invention, the “ZUP Board,” to market in 2012. ZUP’s U.S. Patent No. 8,292,681 covers the board itself and a method of riding the board in which a rider simultaneously uses side-by-side handles and side-by-side foot bindings to help maneuver between various riding positions. This transition is shown in the figures below.


In 2014, Nash Manufacturing, Inc. (“Nash”) brought its wakeboarding invention, the “Versa Board,” to market. The Versa Board had several holes on the top surface of the board that allowed users to attach handles or foot bindings in various configurations, but Nash warned its users against having the handles attached to the board while standing. If a user theoretically ignored Nash’s warnings, the user could attach the handles and foot bindings in a configuration that paralleled the method of riding that ZUP described in the ZUP Board patent.

ZUP filed an infringement claim against Nash. Nash counterclaimed, seeking a declaration of non-infringement and invalidity on obviousness grounds. ZUP presented evidence of secondary considerations to the district court. However the district court found the claims obvious in light of a combination of six prior patents involving water recreational boards. Images of some of the prior art patents are shown below.


The Majority

In a split decision, the Federal Circuit affirmed the district court’s holding that the ZUP Board patent claims were invalid as obvious under § 103(a) because a person of ordinary skill in the art would have had a motivation to combine the prior art references in the method it claimed and further held that the district court properly evaluated ZUP’s evidence of secondary considerations. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) and Graham v. John Deere Co., 383 U.S. 1 (1966).

The Federal Circuit agreed with the district court’s conclusion that the ZUP Board patent merely identified known elements from prior patents (food bindings, handles etc.) and combined them. Further, the Federal Circuit agreed with the district court that ZUP’s purpose in so combining (helping riders maneuver between positions by focusing on rider stability) had been a longstanding goal of the prior patents – a goal predictably shared by many inventors in the industry. The Federal Circuit further concluded that because ZUP presented only minimal evidence of secondary considerations, ZUP did not “overcome” the strong showing of obviousness established by application of the other three Graham factors to the facts of the case. Chief Judge Prost authored the majority opinion that was joined by Judge Lourie.

The Dissent

Writing in dissent, Judge Newman argued that the obviousness determination was improper because the prior patents never suggested the specific wakeboard modifications claimed by ZUP. Judge Newman further maintained that the majority effectively treated the fourth Graham factor – secondary considerations — as one that should only be considered in rebuttal. By requiring that the fourth factor “overcome” the others, Judge Newman contended that the majority engaged in improper judicial hindsight.

 

Sam Halabi on International Intellectual Property Shelters

Patent

My University of Missouri Law School colleague Prof. Sam Halabi‘s new book is getting increased action – with a multi-part online symposium by the Yale Journal on Regulation.  The Cambridge University Press book is titled Intellectual Property and the New International Economic Order: Oligopoly, Regulation, and Wealth Redistribution in the Global Knowledge Economy.

The book expands upon Halabi’s prior work in the context of International Intellectual Property Shelters — these are exceptions to IP protection requirements found in a wide variety of international treaties and agreements.  In the book, Halabi extends his prior analysis and considers the basic questions of how to make intellectual property work well for the least developed nations.

The key contribution that Halibi puts forward here is the grouping together of the variety of exceptions and shelters; aggregating them as a whole canvas; and identifying them as a key aspect of transnational trade regulation.  His work is interesting because of its optimism in describing the success that developing nations have seen in establishing these shelters.  An important element of his analysis is in the recognition that, although international trade regulations might be negotiated at a nation-to-nation level, private firms play an important role in their outcome — and can also be substantially regulated by the outcomes.

Read more from the symposium:

 

Patently-O Bits and Bytes by Juvan Bonni

Bits and Bytes, Patent

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Method of Locating Product Information

Patent

The Federal Circuit has issued its R.36 Affirmance Without Opinion in the eligibility dispute: Product Association Tech. v. Clique Media Group (Fed. Cir. 2018).  In the case, C.D. Cal Judge Wu dismissed the case on the pleadings under R.12(b)(6) — finding that the claims of U.S. Patent 6,154,738 invalid as a matter of law on subject matter eligibility grounds.  In particular, the court found that the claims are directed to the abstract idea of “locating and sending product information in response to a request” and fail to include anything beyond the excluded idea sufficient to transform the claims into a patent-eligible invention.  I’ll note here that I believe the invention is the brain child of retired patent attorney Charles Call, and is part of a family of five patents.

Claim 1 is reproduced below

1. The method for disseminating product information via the Internet which comprises, in combination, the steps of:

establishing a cross-referencing resource connected to the Internet which includes a database containing a plurality of cross-references, each of said cross-references specifying the correspondence between a group of one or more universal product code values and the Internet address of a source of information which describes the products designated by said group of one or more code values,

transmitting via the Internet a Web page containing at least one hyperlink including a reference to separately stored information, said reference including a particular universal product code value that uniquely designates a selected product,

employing a Web browser program to receive said Web page and display said Web page to a user,

further employing said Web browser to respond to the activation of said hyperlink by said user by transmitting a first request message to said cross-referencing resource, said first request message containing at least a portion of said particular universal product code value,

processing said first request message at said cross-referencing resource by referring to said database to identify the particular Internet address which corresponds to said particular universal product code value and returning a redirection message to said Web browser which contains said particular Internet address;

employing said Web browser to automatically respond to said redirection message by transmitting a second request message to said particular Internet address;

employing a Web server connected to the Internet at said particular Internet address to respond to said second request message by returning product information describing said selected product to said Web browser, and

employing said Web browser program to automatically display said product information from said Web server to said user.

Michael Meade: Finding your Genius

Patent

by Dennis Crouch

Michael Meade is a fascinating story teller and mythologist as well as author of the 2016 book The Genius Myth.  In the book, Meade recognizes that there is no single heroic act or idea that is going to save humanity or even set us on the ‘right’ trajectory.  Rather, Meade sees genius as a potential aspect of every person — and that distributed innovation and creation is going to be necessary for any true improvements in our global existence.  He writes:

The question becomes not whether or not you are a genius, but in what way does genius appear in you and how might it contribute to your well-being and at the same time benefit the world around you.

The US patent system fits this approach in some ways — one reason why we have 10,000,000+ patents is that the standard for patentability is low enough so that many many individuals experience sufficient genius.  The problem though is that the hoops, tricks, and costs leave the patent system as an insider game not accessible to the vast majority are locked-out.

The question in my mind is how our system for promoting innovation can help to encourage a broader awakening of genius?

 

R.36: PTO’s Failure to Explain Affirmed without Explanation

Patent

by Dennis Crouch

LG v. Iancu, stems from an obviousness determination by the PTAB in its IPR of LG’s U.S. Patent No. 7,664,971.  On appeal, LG argued that the PTAB had failed to explain its decision as required by the Administrative Procedures Act.  In a silent commentary on the current state of patent law, the Federal Circuit has affirmed the PTAB decision without issuing any opinion or explanation for judgment.

The ’971 patent claims both an apparatus and method for controlling power to the cores of a multi-core processor.  In its decision, the board gave an explanation for rejecting claim 1 (the apparatus), but not for the method claim 9.

In oral arguments, Judge Hughes Chen noted how the patentee had intentionally focused on procedure rather than merits — since LG doesn’t really have an argument for why claim 9 is different.  That merits conclusion may have driven the decision here.

In IPR cases, the duty is on the PTAB to justify its cancellation of each claim.  In Securus, the Federal Circuit actually faced a similar situation and came to the opposite conclusion.  In particular, in that case, the patentee did not independently argue patentability of several of the dependent claims, and so the Board simply held them invalid along with the rest. On appeal, the Federal Circuit reversed — holding that the Board must articulate a reason for every claim being cancelled.

Here, the Board failed to articulate any reasoning for reaching its decision as to these claims. While the Board need not expound upon its reasoning in great detail in all cases … it must provide some reasoned basis for finding the claims obvious in order to permit meaningful review by this court.

One difficulty for LG in this case is that that the Securus decision is nonprecedential — thus this new panel is not bound to follow that decision. And, perhaps the court is looking to preserve its internal stability by issuing this decision without judgment.  Of course, that is an improper use of R.36 no-opinion-judgments that are only permitted by Federal Circuit rule when an explanatory opinion “would have no precedential value.”  Here, rejecting or modifying the analysis of a prior Federal Circuit decision fits the bill of precedential value.

 

Athena Diagnostics v. Mayo

Patent

The following are really more notes for myself rather than an article or essay – DC

The pending appeal in ATHENA DIAGNOSTICS, INC. v. MAYO COLLABORATIVE SERVICES, LLC is quite interesting.  As in Mayo v. Prometheus, the district court dismissed Athena’s medical diagnostic methods as directed toward laws of nature.  The case is now on appeal, and Athena’s attorneys have argued that this case is different.  In addition to the party briefs, several amici have also filed.  Oral arguments were held on October 4, 2018 — and involved a thoughtful discussion by Judges Lourie, Newman, and Stoll as well as White & Case Fenwick attorney Adam Gahtan (representing Athena and Oxford) and Fish & Richardson attorney Jonathan E. Singer (representing Mayo). [mp3].   Judge Lourie’s comment about the technology here is that the claims cover “medical research rather than product development.”

Claim 7 is at issue in the case. The claim is directed to a diagnostic method :

1. A method for diagnosing neurotransmission … disorders related to muscle specific tyrosine kinase (MuSK) in a mammal comprising:

the step of detecting in a bodily fluid of said mammal autoantibodies to an epitope of MuSK.

7. A method according to claim 1, comprising:

contacting MuSK . . . having a suitable label thereon, with said bodily fluid,

immunoprecipitating any antibody/MuSK complex . . . from said bodily fluid and

monitoring for said label on any of said antibody/MuSK complex …

wherein the presence of said label is indicative of said mammal is suffering from said neurotransmission or developmental disorder related to MuSK.

Note – Gahtan has jumped from White & Case to Fenwick.

Thin Food and Thin People: CORN THINS are merely descriptive and perhaps generic

Patent

by Dennis Crouch

I previously wrote about the Real Foods v. Frito Lay case in a post titled Federal Circuit and Sealed Opinions. Now, the court has unsealed its decision focusing on trademark rights in CORN THINS and RICE THINS.  Frito-Lay opposed the registrations and the Trademark Trial & Appeal Board (TTAB) agreed — finding the marks “merely descriptive” and without “acquired distinctiveness.”

Generic terms — common names of a descriptive class — cannot be registered as trademarks.  Other descriptive marks can be registered — but only once they acquire distinctiveness. 15 U.S.C. § 1052(f).  Proof of distinctiveness is not required for terms that are suggestive (rather than descriptive) of a class, nor is it required of arbitrary or fanciful marks.

Real Foods sells food products that look a lot like rice cakes, but calls them CORN THINS and RICE THINS. As the name suggests/describes, these are thinner than traditional rice cakes.

Image result for corn thins

I have personally purchased these before.  Interesting story – I remember being confused since the name of the product seemed descriptive and so did the name of the company (Real Foods).  I thought – maybe this is one of the store-branded generic product.  But, they tasted good and the products now have acquired secondary meaning in the eye of this consumer. 

The level of descriptiveness is an issue of fact when decided by the TTAB and thus reviewed for substantial evidence – a low standard of review.  On appeal, the Federal Circuit found that the TTAB had sufficient evidence to find the marks highly descriptive.  The products are made of corn and rice respectively and are comparatively thin (when compared with traditional cakes).   There are also lots of other thins on the market – “Herb Rice Thins,” “Baked Potato Thins,” “FalaFel Thins,”
“Pita Thins,” and “Wheat Thins.” (Some images below).

One argument here is that the “thin” bit is only a little bit about the cracker itself — the double entendre is to suggest that these will also help keep your body thin.  Besides being mis-descriptive, the court cited to evidence that “thins” has been on lots of high calorie food “even chocolate-coated pretzels”

Based upon the evidence, a court could reasonably conclude that the sly-health suggestion “would not attach in the eyes of a consumer.”  Under the substantial evidence standard, this reasonableness is enough to pass muster on appeal.

Substantial evidence also supported the conclusion that the marks had not acquired distinctiveness. In a pool of respondents limited to “only purchasers and prospective
purchasers of crispbreads/crispbread slices,” less than 6% associated the mark primarily with Real Foods.

Not only did Real Foods lose its appeal — on remand, the Federal Circuit ordered the TTAB to consider whether these marks are actually generic.

 

 

Does Patent Eligibility Vary over Time? HP v. Berkheimer at the Supreme Court

Patent

by Dennis Crouch

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) is in my list of top-ten patent cases for 2018.  In the decision, Judge Moore vacated a lower court summary judgment ruling on eligibility — holding that a “genuine issue of material fact” as to whether the claims are directed toward a transformative inventive concept rather than merely a “well-understood, routine, and conventional” application of an abstract idea.  Thus, the decision gave some amount of respect to the traditional procedures associated with providing facts.  Practically, this means that is should be more difficult to challenge patent eligibility on the pleadings or on summary judgment. Likewise, it means that examiners must do a bit more work to ‘prove’ the lack of eligibility.

Now, HP has petitioned the United States Supreme Court on the fundamental law-fact divide:

Whether patent eligibility is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent.

HP Inc., v. Steven E. Berkheimer, Supreme Court Docket No. 18-415 (2018).

A key claim of HP’s brief is that “patent eligibility does not change over time with the state of the art.”  The focus, according to HP is “analysis of the type of discovery sought to be patented.”  I totally agree that HP’s suggestion here should be the law — eligibility need not enter into the question of novelty and non-obviousness.  The difficulty is how to deal with the the Supreme Court’s focus on “whether the claims disclose an inventive concept” as step two of the eligibility analysis framework.

[Read the Petition]

An important aspect of this case is to consider whether HP is something of a wolf in sheep’s clothing. Although HP clearly does not want to be liable to Mr. Berkheimer, HP also may be examining its portfolio that includes tens-of-thousands of patents — many of which have questionable eligibility.

= = = =
In its decision, the Federal Circuit confirmed that claim 1-3 and 9 are ineligible, but that underlying facts are required to determine whether 4-7 are ineligible. U.S. Patent No. 7,447,713.

1. A method of archiving an item in a computer processing system comprising:

presenting the item to a parser;

parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;

evaluating the object structures in accordance with object structures previously stored in an archive;

presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.

2. The method as in claim 1 wherein the respective structure can be manually edited after being presented for reconciliation.

3. The method as in claim 1 which includes, before the parsing step, converting an input item to a standardized format for input to the parser.

4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy. (more…)

Patenting Exception to Non-Disclosure Agreement

Patent

by Dennis Crouch

Soarus L.L.C. v. Bolson Materials Int’l Corp., 2018 U.S. App. LEXIS 27802 (7th Cir. Oct 1, 2018).

This 7th Circuit decision stems a nondisclosure agreement – titled a “secrecy declaration — between Soarus and Bolson Materials.  Soarus was a G-Polymer distributer (for Nippon Synthetic) and Bolson was looking to begin acquiring and using G-Polymer in connection with developing a new 3D printing process.  Problems arose, though when Bolson filed for patent protection on a 3D printing process it developed using G-Polymer. The court explains:

Shortly after executing the NDA, Bolson filed a provisional patent for the 3D printing process it developed using G-Polymer. The filing resulted in Bolson receiving U.S. Patent No. 8,404,171 . . . Soarus later claimed that Bolson’s application for the ‘171 Patent revealed confidential information about G-Polymer, in violation of the NDA. Litigation ultimately ensued in the Northern District of Illinois.

The district court sided with the defendant on summary judgment — holding that the NDA authorized use of the confidential information for patent filings. On appeal, the Seventh Circuit has affirmed.

[Read the SecrecyAgreementAmended]

The two-page NDA includes broad restrictions against disclosure of confidential information.  However, there are two particular provisions relating to the filing of patent applications:

6. Bolson shall not file any application for a patent or other intellectual property using any piece of Confidential Information or the results of the Evaluation without prior written consent of Nippon.

10. Notwithstanding Article 6 hereof, Bolson is free to patent and protect any new applications using G-Polymer® in the specific area of Fused Deposition Method Rapid Prototyping Equipment and Methods.

In reading the provision here, the district court construed the language of paragraph 10 as an exception that gave Bolston the right to “freely patent and protect new applications of GPolymer in the specified 3D printing process” without being confined to the confidentiality restrictions of the NDA.

On appeal, the Seventh Circuit reviewed the contract interpretation de novo under Illinois law but arrived at the same result.

Soarus argued that paragraph 10 is simply making it possible for Bolson to patent its 3D printing inventions — but was not intended as also a blanket release of all confidentiality requirements associated with the filing.

Soarus contends that no reasonable company would seek to protect the confidentiality around a new product by entering into an agreement that permitted a counterparty to disclose those confidences in a public filing with the U.S. Patent Office.

The courts, disagreed with Soarus — finding that the language was clear.

[I]f Soarus was right about the meaning of paragraph 10, there was no reason to create an exception with respect to paragraph 6: the parties instead could (and should) have stated in clear and precise terms, as Soarus would now have it, that Bolson was free to patent and protect the new 3D printing method so long as doing so did not disclose confidential information without the consent of Soarus.

Since the language is clear, the standard contract interpretation process precludes the court from giving substantial or controlling weight to the commercial purposes of the agreement.

Affirmed.

 

 

 

Crouch’s Supreme Court Patent Law Update

Patent

by Dennis Crouch

The Supreme Court is now open for business for its 2018-2019 Calendar.  The only pending patent case before the court is Helsinn v. Teva, which focuses on the meaning of “on sale ” in the Section 102 of the Patent Act as revised by the 2011 America Invents Act.  When do pre-filing sales count as prior art — what level of public disclosure is necessary?

CVSG: On October 1, the Supreme Court asked for the views of the U.S. Government in the case of RPX v. ChanBond — Whether a party that asks for review of a patent has standing to appeal the U.S. Patent and Trademark Office’s final ruling on that review to the U.S. Court of Appeals for the Federal Circuit.

Early in the term, the court regularly denies a host of petitions that had accumulated over the summer as part of its “long conference.”  The court has now done that with about 16 patent case denials out of the gate, including a few cases that I found interesting, including:

  • Smartflash LLC v. Samsung Electronics America, Inc. et al., No. 18-189 (PTAB judges as principal officers; retroactive CBM reviews)
  • Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 17-1616 (litigation misconduct and inequitable conduct).
  • Bombardier Recreational Products Inc., et al. v. Arctic Cat Inc., No. 17-1645 (does the “should have known” standard for willful infringement under Seagatemeet the “intentional or knowing” requirement set forth in Halo v. Pulse).
  • Integrated Technological Systems, Inc. v. First Internet Bank of Indiana, No. 17-1590 (“Does 35 U.S.C. § 282 allow for challenges to a patent’s validity based on patent eligibility under 35 U.S.C. § 101?”).
  • Leon Stambler v. Mastercard International Inc., No. 17-1140 (Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent and Trademark Office violates 35 U.S.C. § 144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.).

Supreme Court 2018 — Pending Cases for September Conference

RPX (CVSG mentioned above) is the only case from the initial September conference that was not denied on the first round.

The next upcoming conference is October 5, 2018 and the court is scheduled to consider two cert petitions in patent cases:

  • Advanced Audio Devices, LLC v. HTC Corporation, et al., No. 18-183 (Whether an IPR against patents filed before enactment of the AIA violates the Takings Clause of the 5th Amendment to the U.S. Constitution.?)
  • Alexsam, Inc. v. Wildcard Systems, Inc., et al., No. 17-1483 (when does a breach of patent license case get to Federal Court?)

Both of these cases would interesting to see before the court.