• Mohawks appeal PTAB denial of Sovereign Immunity defense

    The appellants are appealing from a series of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) where the Board made the controversial decision to deny motions to dismiss the IPRs on a sovereign immunity defense raised by the St. Regis tribe. On appeal, St. Regis and Allergan asks the Federal Circuit to determine whether the PTAB erred either in holding that tribal immunity does not apply to IPR proceedings and in deciding that Allergan was the “effective patent…

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  • US To Weaken Post-Grant Patent Reviews

    Government agencies do not ordinarily relinquish power easily, or without a struggle. But these are not ordinary times in the USA. Trump appointees have pushed a variety of federal agencies – including Interior, EPA, and HUD – to surrender much of their powers. Yesterday, the USPTO joined that list, when it announced proposed new regulations that would weaken the agency’s review of existing patents.

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  • Federal Circuit Treatment of Inherency Arguments Aimed at Method of Treatment Patent Claims

    This article examines Federal Circuit case law analyzing validity challenges to method of treatment patent claims where the claims at issue are alleged to recite an inherent property of a method or molecule taught in the prior art. While Federal Circuit case law challenging method of treatment claims on inherent anticipation grounds is generally globally consistent and reasonably straightforward, the court’s inherent obviousness case law is less so.

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  • Federal Circuit Treatment of Inherency Arguments Aimed at Method of Treatment Patent Claims

    This article examines Federal Circuit case law analyzing validity challenges to method of treatment patent claims where the claims at issue are alleged to recite an inherent property of a method or molecule taught in the prior art. While Federal Circuit case law challenging method of treatment claims on inherent anticipation grounds is generally globally consistent and reasonably straightforward, the court’s inherent obviousness case law is less so.

    The post Federal Circuit Treatment of…

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  • IPBC 2018 to Focus on Creating and Harnessing IP Value

    How do you create – how do you harness that value and how do you turn it into something that is meaningful for the people that own the intellectual property? We have sessions looking at specific industries, so we’re looking at things like semiconductors and the rise of artificial intelligence. We’re looking at how big data can be used to harness IP value. We’ve got two really interesting sessions that I’m looking forward to where we’re putting different scenarios to panels of chief IP…

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  • Patent Board extends software per se, printed matter doctrines to reject computer-readable media (CRM) claims


    Takeaway: Bucking decades of settled precedent and USPTO guidance, the Patent Board rejected claims reciting computer-readable media (CRM) as subject-matter ineligible software per se and printed matter, even as it reversed Alice rejections of the same claims.

    Note: This is the second of two posts covering the same PTAB decision.  For the other, see “IBM wins reversal of Alice rejections for targeted ad delivery at airports“.

    Details:

    Ex parte Musial

    Appeal No. 2017-001164; Application No. 13/396,177; Tech. Center 3600
    Decided: Apr. 30, 2018

    Inventors for IBM filed an application relating to “a computer implemented method, data processing
    system, and computer program product for . . . distributing advertisements to receptive audiences”, and more specifically captive audiences sitting in airport terminals waiting to board their flights, or aboard airplanes waiting to take off or deboard.  The Board reproduced rejected independent claim 14 as representative:

    14.     A computer program product for selecting an advertisement, the computer program product comprising:
             a computer readable non-transitory medium having computer readable program code stored thereon, the computer readable program code comprising:
                      program instructions to receive a first check-in corresponding to at least one person, wherein the first check-in is a indication of presence relative to an airport gate servicing a flight and the first check-in is received from a kiosk;
                      program instructions to receive a second check-in to form an aggregation of people, wherein the second check-in is a indication of presence relative to the airport gate servicing the flight;
                      program instructions to characterize the aggregation based on cumulative characteristics selected of at least one vital statistic of each person checking-in to form an aggregated population characteristic;
                      program instructions to receive flight details concerning the flight, wherein the flight details comprise a flight destination, and the advertisement concerns a service provider at the flight destination;
                      program instructions to select at least one advertisement based on the aggregated population characteristic and the flight details, in response to the second check-in;
                      program instructions to receive a check-out of at least one person, wherein the check-out comprises reading an identifier of an at least one person who departs;
                      program instructions to select at least one advertisement based on the aggregated population characteristic;
                      program instructions to second characterize the aggregation based on the cumulative characteristics to form a second cumulative characteristic based on the aggregation without at least one vital statistic corresponding to the at least one person who departs, wherein the program instructions to select at least one advertisement based on the aggregated population characteristic perform to select the at least one advertisement is based on the second cumulative characteristic;
                      program instructions to select at least one advertisement based on the second cumulative characteristic, and a destination of the flight details, wherein the destination is stated within the at least one advertisement;
                      program instructions to dispatch the at least one advertisement; and
                      program instructions to detect presence of a service vehicle associated with a flight near and outside an aircraft associated with the flight, wherein the detecting presence relies on at least one global positioning satellite (GPS) signal received at the service vehicle and reported as location data to the hardware processor, wherein program instructions to dispatch comprises instructions to dispatch the at least one advertisement to the service vehicle for rendering and such dispatching is responsive to detecting presence of the service vehicle.

    (Emphasis added.)  The examiner rejected the claims as subject-matter ineligible under the Alice framework and its judicially-made exceptions to 35 U.S.C. § 101, but the Board reversed those rejections, and entered new grounds of rejection, finding the claims to be subject-matter ineligible as “directed to software per se and, thus, are not within one of the four classes of statutory subject matter”, and also as “a mere arrangement of ‘printed matter’ and merely claiming the content of ‘printed’ information.”

    My two cents:

    There are a couple of ways to read this surprising decision, but either interpretation leads to the conclusion of egregious Board error.  In the first and more generous interpretation of what happened in Musial‘s new grounds, the Board got distracted by the description in the specification and overlooked the limitations of the claims.  This would explain why the Board devotes ink to two long footnotes (notes 4 and 5) quoting portions of the specification allegedly supportive of a software per se interpretation, including, among other selections, language providing that “one or more embodiments may take the form of . . . an entirely software embodiment.”  Although specification language may be used to construe or define claim terms, it would be an obvious misapplication of the law if the Board looked to the specification to override and effectively delete limiting language in the claims, in this case, the language specifying that the computer program product comprised a computer readable non-transitory medium having computer readable program code stored thereon.  Recitation of computer-readable media (specified as non-transitory in compliance with the prohibition of claiming transitory signals per se, as discussed in In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)) is generally sufficient to avoid a software per se rejection, as discussed below.

    The theory that the Board simply got distracted by spec language is also difficult to reconcile with the Board’s express finding that “the ‘computer readable non-transitory medium’ as claimed . . . also does not exclude it being software [per se].”  Except that it does; see, e.g., MPEP § 2111.05(III); Ex parte Kouznetsov, No. 2007-3470 (B.P.A.I. June 30, 2008).  The Board makes this conclusory declaration without any reasoning or citation to established law.  Indeed, the Board’s decision goes against established law, the MPEP, and published USPTO guidance.  Thus, the second reading of the Board’s decision is that it was made in ignorance.

    The Board’s new grounds of rejection cannot be reconciled with the ultimate outcome of the trilogy of mid-’90s Federal Circuit cases of In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994), In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), and In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995), of which discussion can be found in the journal article by Vincent Chiapetta, Patentability of Computer Software Instruction as an ‘Article of Manufacture”: Software as Such as The Right Stuff, 17 J. Marshall J. Computer & Info. L. 89 (1998).  These cases culminated in the February 1996 USPTO Examination Guidelines for Computer-Related Inventions.  These guidelines state, with regard to functional descriptive matter (of which software per se is one form):

       [C]omputer programs claimed as computer listings per se, i.e., the descriptions or expressions of the programs, are not physical “things,” nor are they statutory processes, as they are not “acts” being performed.  Such claimed computer programs do not define any structural and functional interrelationships between the computer program and other claimed aspects of the invention which permit the computer program’s functionality to be realized.  In contrast, a claimed computer-readable medium encoded with a computer program defines structural and functional interrelationships between the computer program and the medium which permit the computer program’s functionality to be realized, and is thus statutory.  Accordingly, it is important to distinguish claims that define descriptive material per se from claims that define statutory inventions.
       Computer programs are often recited as part of a claim.  Office personnel should determine whether the computer program is being claimed as part of an otherwise statutory manufacture or machine.  In such a case, the claim remains statutory irrespective of the fact that a computer program is included in the claim.  The same result occurs when a computer program is used in a computerized process where the computer executes the instructions set forth in the computer program.  Only when the claimed invention taken as a whole is directed to a mere program listing, i.e., to only its description or expression, is it descriptive material per se and hence non-statutory.

    (Emphases added.)  These guidelines were published after Beauregard, wherein the USPTO finally ceded the issue and recognized that claims reciting software embodied on a tangible medium constituted patent-eligible subject matter.  The ’90s trilogy led to the evolution of the distinction between functional and non-functional descriptive matter; even as late as Beauregard, software, despite being functional, was being rejected under the printed matter doctrine.  As the Federal Circuit found earlier in Lowry, “the printed matter cases have no factual relevance where ‘the invention as defined by the claims  requires that the information be processed not by the mind but by a machine, the computer.'”  32 F.3d at 1583 (citing In re Bernhart, 417 F.2d 1395, 1399 (C.C.P.A. 1969), having an identical holding) (emphasis in original).  Lowry’s claim 1 read as follows:

    1.      A memory for storing data for access by an application program being executed on a data processing system, comprising:
             a data structure stored in said memory, said data structure including information resident in a database used by said application program and including:
                      a plurality of attribute data objects stored in said memory, each of said  attribute data objects containing different information from said database;
                      a single holder attribute data object for each of said attribute data objects, each of said holder attribute data objects being one of said plurality of attribute data objects, a being-held relationship existing between each attribute data object and its holder attribute data object, and each of said attribute data objects having a being-held relationship with only a single other attribute data object, thereby establishing a hierarchy of said plurality of attribute data objects;
                      a referent attribute data object for at least one of said attribute data objects, said referent attribute data object being nonhierarchically related to a holder attribute data object for the same at least one of said attribute data objects and also being one of said plurality of attribute data objects, attribute data objects for which there exist only holder attribute data objects being called element data objects, and attribute data objects for which there also exist referent attribute data objects being called relation data objects; and
                      an apex data object stored in said memory and having no being-held relationship with any of said attribute data objects, however, at least one of said attribute data objects having a being-held relationship with said apex data object.

    (Emphasis added.)  With regard to this broadest claim, the Federal Circuit concluded:

    More than mere abstractions, the [claimed] data structures are specific electrical or magnetic structural elements in memory. . . . [They] provide tangible benefits: data stored in accordance with the claimed data structures are more easily accessed, stored and erased. . . . [They] are physical entities that provide increased efficiency in computer operation.  They are not printed matter.  The Board is not at liberty to ignore such limitations.

    Id. at 1583-84.  In other words, Lowry’s claims related to the physical organization imparted to the data in the memory, and not data in the abstract.  Id. at 1583.

    In Beauregard, the solicitor didn’t even bother to defend the Board’s affirmance of the examiner’s rejection of computer program product claims as printed matter.  The solicitor averred before the Federal Circuit “that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101″.  The CAFC appeal was withdrawn without a fight, and the February 1996 Guidelines were issued a few months later.  Although § 101 law has evolved considerably since the time of the February 1996 Guidelines, particularly with the Supreme Court’s decisions in Bilski, Mayo, and Alice, that evolution is not pertinent since the Board found the claims not to be ineligible under the framework that evolved from those cases.

    It’s also notable that the Board made the software per se new grounds of rejection despite the claims being amended, immediately prior to appeal, specifically to recite the “computer readable non-transitory medium” by examiner request and with examiner assurance, in an interview, that such language constitutes the preferred phrasing.

    As alluded to above, the Board’s rejection of the claims under the “printed matter” doctrine (or what is modernly and more accurately termed “nonfunctional descriptive matter” doctrine) is as flawed as the rejection of the claims as software per se.  As explained in the “informative” Board decision of Ex parte Mathias, No. 2005-1851, 84 USPQ2d 1276, 1278-79 (B.P.A.I. Aug. 10, 2005),

    [c]ommon situations involving nonfunctional descriptive material are:
    - a computer-readable storage medium that differs from the prior art solely with respect to nonfunctional descriptive material, such as music or a literary work, encoded on the medium,
    - a computer that differs from the prior art solely with respect to nonfunctional descriptive material that cannot alter how the machine functions (i.e., the descriptive material does not reconfigure the computer), or
    - a process that differs from the prior art only with respect to nonfunctional descriptive material that cannot alter how the process steps are to be performed to achieve the utility of the invention

    None of these scenarios are applicable here in Musial.  The Board in the present case cites to In re DiStefano, 808 F.3d 845 (Fed. Cir. 2015), in support of its finding that the claimed CRM computer program product constitutes printed matter, but DiStefano does not support the Board’s conclusion; on the contrary, the CAFC in DiStefano vacated a Board finding that web assets amounted to printed matter.  “The common thread amongst all” printed matter cases, the reviewing court explained, “is that printed matter must be matter claimed for what it communicates”, and the content of the information was not being claimed in DiStefano.  In re Miller, 418 F.2d 1392 (C.C.P.A. 1969), also cited by the Board in the present case, likewise was a court reversal of a Board decision of unpatentability, and fails to support the Board’s contention that the CRM claims are printed matter.

    It is, of course, not correct to say that the nonfunctional descriptive matter doctrine never applies to software claims.  When the doctrine is properly applied, an isolated feature at the point of novelty is shown to be descriptive rather than functional.  Mathias presents the classic case, wherein, in a claim directed to an “on-screen icon”, the recited sporting event icon was “non-functional descriptive material [that] cannot lend patentability to an invention that would have otherwise been anticipated by the prior art.”  As a sampling of representative cases, one can point to, e.g., Ex parte Curry, No. 2005-0509, 84 USPQ2d 1272 (B.P.A.I. June 30, 2005); Ex parte Nehls, No. 2007-1823, 88 USPQ2d 1883, 1887-89 (B.P.A.I. Jan. 28, 2008) (precedential); Ex parte Kerr, No. 2009-013183 (P.T.A.B. Dec. 26, 2012); Ex parte Okamoto, No. 2012-000836 (P.T.A.B. Jan. 23, 2013); Ex parte Gooch, No. 2010-008687 (P.T.A.B. July 26, 2013); Ex parte Sen, No. 2011-006544 (P.T.A.B. Dec. 23, 2013); Ex parte Sharma, No. 2010-011909 (PT.A.B. June 7, 2013).  However, the Board in Musial fails to explain how any of these cases are relevant or how the point-of-novelty feature (if any single one can be pointed to) amounts to matter that is purely nonfunctional and descriptive.  Consequently, the rejection of the claims as printed matter is misplaced.

    Generally, when the Board suspects a new reason for unpatentability but would prefer not to do the heavy lifting of demonstrating it with reasoned explanation in its opinion, the Board notes the potential new grounds, as in a footnote, by way of suggestion to the examiner to inquire into such grounds upon return of the application to the examiner’s jurisdiction.  The Board did not do that in this case, and instead made rejections inconsistent with the law in this area.

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  • Patent Board extends software per se, printed matter doctrines to reject computer-readable media (CRM) claims


    Takeaway: Bucking decades of settled precedent and USPTO guidance, the Patent Board rejected claims reciting computer-readable media (CRM) as subject-matter ineligible software per se and printed matter, even as it reversed Alice rejections of the same claims.

    Note: This is the second of two posts covering the same PTAB decision.  For the other, see “IBM wins reversal of Alice rejections for targeted ad delivery at airports“.

    Details:

    Ex parte Musial

    Appeal No. 2017-001164; Application No. 13/396,177; Tech. Center 3600
    Decided: Apr. 30, 2018

    Inventors for IBM filed an application relating to “a computer implemented method, data processing
    system, and computer program product for . . . distributing advertisements to receptive audiences”, and more specifically captive audiences sitting in airport terminals waiting to board their flights, or aboard airplanes waiting to take off or deboard.  The Board reproduced rejected independent claim 14 as representative:

    14.     A computer program product for selecting an advertisement, the computer program product comprising:
             a computer readable non-transitory medium having computer readable program code stored thereon, the computer readable program code comprising:
                      program instructions to receive a first check-in corresponding to at least one person, wherein the first check-in is a indication of presence relative to an airport gate servicing a flight and the first check-in is received from a kiosk;
                      program instructions to receive a second check-in to form an aggregation of people, wherein the second check-in is a indication of presence relative to the airport gate servicing the flight;
                      program instructions to characterize the aggregation based on cumulative characteristics selected of at least one vital statistic of each person checking-in to form an aggregated population characteristic;
                      program instructions to receive flight details concerning the flight, wherein the flight details comprise a flight destination, and the advertisement concerns a service provider at the flight destination;
                      program instructions to select at least one advertisement based on the aggregated population characteristic and the flight details, in response to the second check-in;
                      program instructions to receive a check-out of at least one person, wherein the check-out comprises reading an identifier of an at least one person who departs;
                      program instructions to select at least one advertisement based on the aggregated population characteristic;
                      program instructions to second characterize the aggregation based on the cumulative characteristics to form a second cumulative characteristic based on the aggregation without at least one vital statistic corresponding to the at least one person who departs, wherein the program instructions to select at least one advertisement based on the aggregated population characteristic perform to select the at least one advertisement is based on the second cumulative characteristic;
                      program instructions to select at least one advertisement based on the second cumulative characteristic, and a destination of the flight details, wherein the destination is stated within the at least one advertisement;
                      program instructions to dispatch the at least one advertisement; and
                      program instructions to detect presence of a service vehicle associated with a flight near and outside an aircraft associated with the flight, wherein the detecting presence relies on at least one global positioning satellite (GPS) signal received at the service vehicle and reported as location data to the hardware processor, wherein program instructions to dispatch comprises instructions to dispatch the at least one advertisement to the service vehicle for rendering and such dispatching is responsive to detecting presence of the service vehicle.

    (Emphasis added.)  The examiner rejected the claims as subject-matter ineligible under the Alice framework and its judicially-made exceptions to 35 U.S.C. § 101, but the Board reversed those rejections, and entered new grounds of rejection, finding the claims to be subject-matter ineligible as “directed to software per se and, thus, are not within one of the four classes of statutory subject matter”, and also as “a mere arrangement of ‘printed matter’ and merely claiming the content of ‘printed’ information.”

    My two cents:

    There are a couple of ways to read this surprising decision, but either interpretation leads to the conclusion of egregious Board error.  In the first and more generous interpretation of what happened in Musial‘s new grounds, the Board got distracted by the description in the specification and overlooked the limitations of the claims.  This would explain why the Board devotes ink to two long footnotes (notes 4 and 5) quoting portions of the specification allegedly supportive of a software per se interpretation, including, among other selections, language providing that “one or more embodiments may take the form of . . . an entirely software embodiment.”  Although specification language may be used to construe or define claim terms, it would be an obvious misapplication of the law if the Board looked to the specification to override and effectively delete limiting language in the claims, in this case, the language specifying that the computer program product comprised a computer readable non-transitory medium having computer readable program code stored thereon.  Recitation of computer-readable media (specified as non-transitory in compliance with the prohibition of claiming transitory signals per se, as discussed in In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)) is generally sufficient to avoid a software per se rejection, as discussed below.

    The theory that the Board simply got distracted by spec language is also difficult to reconcile with the Board’s express finding that “the ‘computer readable non-transitory medium’ as claimed . . . also does not exclude it being software [per se].”  Except that it does; see, e.g., MPEP § 2111.05(III); Ex parte Kouznetsov, No. 2007-3470 (B.P.A.I. June 30, 2008).  The Board makes this conclusory declaration without any reasoning or citation to established law.  Indeed, the Board’s decision goes against established law, the MPEP, and published USPTO guidance.  Thus, the second reading of the Board’s decision is that it was made in ignorance.

    The Board’s new grounds of rejection cannot be reconciled with the ultimate outcome of the trilogy of mid-’90s Federal Circuit cases of In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994), In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), and In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995), of which discussion can be found in the journal article by Vincent Chiapetta, Patentability of Computer Software Instruction as an ‘Article of Manufacture”: Software as Such as The Right Stuff, 17 J. Marshall J. Computer & Info. L. 89 (1998).  These cases culminated in the February 1996 USPTO Examination Guidelines for Computer-Related Inventions.  These guidelines state, with regard to functional descriptive matter (of which software per se is one form):

       [C]omputer programs claimed as computer listings per se, i.e., the descriptions or expressions of the programs, are not physical “things,” nor are they statutory processes, as they are not “acts” being performed.  Such claimed computer programs do not define any structural and functional interrelationships between the computer program and other claimed aspects of the invention which permit the computer program’s functionality to be realized.  In contrast, a claimed computer-readable medium encoded with a computer program defines structural and functional interrelationships between the computer program and the medium which permit the computer program’s functionality to be realized, and is thus statutory.  Accordingly, it is important to distinguish claims that define descriptive material per se from claims that define statutory inventions.
       Computer programs are often recited as part of a claim.  Office personnel should determine whether the computer program is being claimed as part of an otherwise statutory manufacture or machine.  In such a case, the claim remains statutory irrespective of the fact that a computer program is included in the claim.  The same result occurs when a computer program is used in a computerized process where the computer executes the instructions set forth in the computer program.  Only when the claimed invention taken as a whole is directed to a mere program listing, i.e., to only its description or expression, is it descriptive material per se and hence non-statutory.

    (Emphases added.)  These guidelines were published after Beauregard, wherein the USPTO finally ceded the issue and recognized that claims reciting software embodied on a tangible medium constituted patent-eligible subject matter.  The ’90s trilogy led to the evolution of the distinction between functional and non-functional descriptive matter; even as late as Beauregard, software, despite being functional, was being rejected under the printed matter doctrine.  As the Federal Circuit found earlier in Lowry, “the printed matter cases have no factual relevance where ‘the invention as defined by the claims  requires that the information be processed not by the mind but by a machine, the computer.'”  32 F.3d at 1583 (citing In re Bernhart, 417 F.2d 1395, 1399 (C.C.P.A. 1969), having an identical holding) (emphasis in original).  Lowry’s claim 1 read as follows:

    1.      A memory for storing data for access by an application program being executed on a data processing system, comprising:
             a data structure stored in said memory, said data structure including information resident in a database used by said application program and including:
                      a plurality of attribute data objects stored in said memory, each of said  attribute data objects containing different information from said database;
                      a single holder attribute data object for each of said attribute data objects, each of said holder attribute data objects being one of said plurality of attribute data objects, a being-held relationship existing between each attribute data object and its holder attribute data object, and each of said attribute data objects having a being-held relationship with only a single other attribute data object, thereby establishing a hierarchy of said plurality of attribute data objects;
                      a referent attribute data object for at least one of said attribute data objects, said referent attribute data object being nonhierarchically related to a holder attribute data object for the same at least one of said attribute data objects and also being one of said plurality of attribute data objects, attribute data objects for which there exist only holder attribute data objects being called element data objects, and attribute data objects for which there also exist referent attribute data objects being called relation data objects; and
                      an apex data object stored in said memory and having no being-held relationship with any of said attribute data objects, however, at least one of said attribute data objects having a being-held relationship with said apex data object.

    (Emphasis added.)  With regard to this broadest claim, the Federal Circuit concluded:

    More than mere abstractions, the [claimed] data structures are specific electrical or magnetic structural elements in memory. . . . [They] provide tangible benefits: data stored in accordance with the claimed data structures are more easily accessed, stored and erased. . . . [They] are physical entities that provide increased efficiency in computer operation.  They are not printed matter.  The Board is not at liberty to ignore such limitations.

    Id. at 1583-84.  In other words, Lowry’s claims related to the physical organization imparted to the data in the memory, and not data in the abstract.  Id. at 1583.

    In Beauregard, the solicitor didn’t even bother to defend the Board’s affirmance of the examiner’s rejection of computer program product claims as printed matter.  The solicitor averred before the Federal Circuit “that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101″.  The CAFC appeal was withdrawn without a fight, and the February 1996 Guidelines were issued a few months later.  Although § 101 law has evolved considerably since the time of the February 1996 Guidelines, particularly with the Supreme Court’s decisions in Bilski, Mayo, and Alice, that evolution is not pertinent since the Board found the claims not to be ineligible under the framework that evolved from those cases.

    It’s also notable that the Board made the software per se new grounds of rejection despite the claims being amended, immediately prior to appeal, specifically to recite the “computer readable non-transitory medium” by examiner request and with examiner assurance, in an interview, that such language constitutes the preferred phrasing.

    As alluded to above, the Board’s rejection of the claims under the “printed matter” doctrine (or what is modernly and more accurately termed “nonfunctional descriptive matter” doctrine) is as flawed as the rejection of the claims as software per se.  As explained in the “informative” Board decision of Ex parte Mathias, No. 2005-1851, 84 USPQ2d 1276, 1278-79 (B.P.A.I. Aug. 10, 2005),

    [c]ommon situations involving nonfunctional descriptive material are:
    - a computer-readable storage medium that differs from the prior art solely with respect to nonfunctional descriptive material, such as music or a literary work, encoded on the medium,
    - a computer that differs from the prior art solely with respect to nonfunctional descriptive material that cannot alter how the machine functions (i.e., the descriptive material does not reconfigure the computer), or
    - a process that differs from the prior art only with respect to nonfunctional descriptive material that cannot alter how the process steps are to be performed to achieve the utility of the invention

    None of these scenarios are applicable here in Musial.  The Board in the present case cites to In re DiStefano, 808 F.3d 845 (Fed. Cir. 2015), in support of its finding that the claimed CRM computer program product constitutes printed matter, but DiStefano does not support the Board’s conclusion; on the contrary, the CAFC in DiStefano vacated a Board finding that web assets amounted to printed matter.  “The common thread amongst all” printed matter cases, the reviewing court explained, “is that printed matter must be matter claimed for what it communicates”, and the content of the information was not being claimed in DiStefano.  In re Miller, 418 F.2d 1392 (C.C.P.A. 1969), also cited by the Board in the present case, likewise was a court reversal of a Board decision of unpatentability, and fails to support the Board’s contention that the CRM claims are printed matter.

    It is, of course, not correct to say that the nonfunctional descriptive matter doctrine never applies to software claims.  When the doctrine is properly applied, an isolated feature at the point of novelty is shown to be descriptive rather than functional.  Mathias presents the classic case, wherein, in a claim directed to an “on-screen icon”, the recited sporting event icon was “non-functional descriptive material [that] cannot lend patentability to an invention that would have otherwise been anticipated by the prior art.”  As a sampling of representative cases, one can point to, e.g., Ex parte Curry, No. 2005-0509, 84 USPQ2d 1272 (B.P.A.I. June 30, 2005); Ex parte Nehls, No. 2007-1823, 88 USPQ2d 1883, 1887-89 (B.P.A.I. Jan. 28, 2008) (precedential); Ex parte Kerr, No. 2009-013183 (P.T.A.B. Dec. 26, 2012); Ex parte Okamoto, No. 2012-000836 (P.T.A.B. Jan. 23, 2013); Ex parte Gooch, No. 2010-008687 (P.T.A.B. July 26, 2013); Ex parte Sen, No. 2011-006544 (P.T.A.B. Dec. 23, 2013); Ex parte Sharma, No. 2010-011909 (PT.A.B. June 7, 2013).  However, the Board in Musial fails to explain how any of these cases are relevant or how the point-of-novelty feature (if any single one can be pointed to) amounts to matter that is purely nonfunctional and descriptive.  Consequently, the rejection of the claims as printed matter is misplaced.

    Generally, when the Board suspects a new reason for unpatentability but would prefer not to do the heavy lifting of demonstrating it with reasoned explanation in its opinion, the Board notes the potential new grounds, as in a footnote, by way of suggestion to the examiner to inquire into such grounds upon return of the application to the examiner’s jurisdiction.  The Board did not do that in this case, and instead made rejections inconsistent with the law in this area.

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  • IBM wins reversal of Alice rejections for targeted ad delivery at airports


    Takeaway: Finding, under step two of the Alice analysis, the rejected claims to recite an advancement to the technology for delivering targeted advertising, the Patent Board reversed § 101 rejections of claims directed to delivery of targeting advertising in airports.

    Note: This is the first of two posts covering the same PTAB decision.  For the other, seePatent Board extends software per se, printed matter doctrines to reject computer-readable media (CRM) claims“.

    Details:


    Ex parte Musial

    Appeal No. 2017-001164; Application No. 13/396,177; Tech. Center 3600
    Decided: Apr. 30, 2018

    Inventors for IBM filed an application relating to “a computer implemented method, data processing
    system, and computer program product for . . . distributing advertisements to receptive audiences”, and more specifically captive audiences sitting in airport terminals waiting to board their flights, or aboard airplanes waiting to take off or deboard.  The Board reproduced rejected independent claim 14 as representative:

    14.     A computer program product for selecting an advertisement, the computer program product comprising:
             a computer readable non-transitory medium having computer readable program code stored thereon, the computer readable program code comprising:
                      program instructions to receive a first check-in corresponding to at least one person, wherein the first check-in is a indication of presence relative to an airport gate servicing a flight and the first check-in is received from a kiosk;
                      program instructions to receive a second check-in to form an aggregation of people, wherein the second check-in is a indication of presence relative to the airport gate servicing the flight;
                      program instructions to characterize the aggregation based on cumulative characteristics selected of at least one vital statistic of each person checking-in to form an aggregated population characteristic;
                      program instructions to receive flight details concerning the flight, wherein the flight details comprise a flight destination, and the advertisement concerns a service provider at the flight destination;
                      program instructions to select at least one advertisement based on the aggregated population characteristic and the flight details, in response to the second check-in;
                      program instructions to receive a check-out of at least one person, wherein the check-out comprises reading an identifier of an at least one person who departs;
                      program instructions to select at least one advertisement based on the aggregated population characteristic;
                      program instructions to second characterize the aggregation based on the cumulative characteristics to form a second cumulative characteristic based on the aggregation without at least one vital statistic corresponding to the at least one person who departs, wherein the program instructions to select at least one advertisement based on the aggregated population characteristic perform to select the at least one advertisement is based on the second cumulative characteristic;
                      program instructions to select at least one advertisement based on the second cumulative characteristic, and a destination of the flight details, wherein the destination is stated within the at least one advertisement;
                      program instructions to dispatch the at least one advertisement; and
                      program instructions to detect presence of a service vehicle associated with a flight near and outside an aircraft associated with the flight, wherein the detecting presence relies on at least one global positioning satellite (GPS) signal received at the service vehicle and reported as location data to the hardware processor, wherein program instructions to dispatch comprises instructions to dispatch the at least one advertisement to the service vehicle for rendering and such dispatching is responsive to detecting presence of the service vehicle.

    (Emphasis added.)  The Board summarized the claim as computer program products for distributing advertisements to an aggregation of people in an airport, using a service vehicle associated with a flight for which the people have checked-in, where such service vehicles can include fuel trucks, food and beverage delivery trucks, and baggage handling equipment.

    The examiner rejected the claims under § 101 as being directed to ineligible subject matter, specifically, the abstract idea of “displaying advertisements based on an aggregation of people which falls into the category of . . . a method of organizing human activities, . . . [and] an idea of itself.”  Under step two of the Alice analysis, the examiner found the claim to offer “no more than the recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry.”

    The applicants argued that by placing its display apparatus on a service vehicle like a fuel truck, and detecting the presence of the vehicle near an airplane to display the selected ad, the computer program product permits useful information to reach its users within the airplane, which was unique and inventive:

    [A] number of heterogeneous links between disparate machines and people occur, in some cases, in an ad hoc basis, to form a network that allows communication that would be impossible or difficult otherwise.  In other words, a conventional approach would be to use extra machinery within the aircraft.  But because aircraft need to be maintained when such machinery breaks, and weight is a factor in aircraft fuel efficiency, the more complex computer program product and supporting devices are necessary.

    In an advisory action, the examiner “disagree[d]” that the claims presented significantly more than an abstract idea: “[T]here appears to only be an electronic device that runs/performs/executes the abstract idea manipulation. . . . [The asserted] improvements described by Applicant are not actual improvements to the technology.”  The applicants filed a pre-appeal request, relying solely on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), but were told to take it to the Board.

    The examiner argued, on appeal, that the service vehicle amounted to a kiosk, and that “[t]he claimed kiosk and GPS are electronic devices that run/perform/execute the abstract idea manipulation.  These claimed devices perform the same functionality that they would normally perform and do not lend themselves to any type of unconventional processing.”  Rejecting the idea that the claims improved any technology, the examiner found that the

    claims seek to address a problem that existed and continues to exist outside of the realm of the technology associated with the additionally recited elements (targeted advertising).  The proposed solution is one that could have been implemented directly by a human performing analogous functions by hand and/or with the assistance of a general purpose computer applied to facilitate the functions at a high level of generality or with the assistance of additional elements performing well-known, conventional functions.

    The appellants’ reply brief complained that the examiner failed to explain

    how dispatching an advertisement for rendering at a service vehicle would be conventional given that passengers/users who have checked-in/checked-out are not even on or in that service vehicle.  A fair characterization would be that to render such advertisements (or even the mere dispatching of advertisements) to such a vehicle runs counter to the notion that passenger/users should be entertained/informed within the aircraft.  Rather, such an approach, as described in the claim limitations, is odd, counter-intuitive and unconventional. . . . [An] unconventional feature is the feature of bringing destination related information to the eyes of network-stranded occupants of an aircraftwhich is unheard ofgiven the frequent admonitions of flight crews to turn all connected devices to a disconnected state. . . . Certainly, it is unconventional to dispatch and/or render material for an audience on a vehicle that the audience does not even occupy. Accordingly, again, the Office again fails to consider the synergy of the claim combination, and incorrectly states that the ordered combination adds nothing.

    Citing to the holding in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
    1341, 1349-50 (Fed. Cir. 2016), that “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces,” the Board found that, contrary to the examiner’s allegations, “[t]he ordered combination of Appellants’ steps thus recites an advancement to the technology for delivering targeted advertising.”  Reversing the examiner, the Board found:

    [T]he ordered combination of steps in claims 14 and 21 is directed to a specific technological solution to a specific problem pertaining to targeted advertising, namely the problem of assessing receptiveness to various advertisements and then advertising to changing captive audiences in airport areas where network access may be limited or constrained. . . . Therefore, claims 14 and 21 include “additional features” that ensure the claims are “more than a drafting effort designed to monopolize [an abstract idea].” Alice, 134 S. Ct. at 2357.

    My two cents: 

    As noted in the Board’s decision, targeted advertising claims have repeatedly been found to amount to unpatentable abstract ideas.  Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015); Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016); ); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir. 2014); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007 (C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015); OpenTV, Inc. v. Netflix Inc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014).

    But there’s a lot going on in the claims at issue, and the examiner’s analysis was little more than conclusory.  The examiner failed to contradict that the claims involved a number of interactive elements that inventively combined to produce what the applicants referred to as a “creepy” effect of seeing an evidently targeted ad on a vehicle out an airplane window.  As such, the Board was able to find that the claims amounted to “something more” than an attempt at monopolizing “displaying advertisements based on an aggregation of people”, which was the abstract idea to which the examiner found the claims to be directed.  The examiner declined to consider that targeted advertising was a technology that could be improved and was, in fact, improved by the claims.

    Although the examiner’s analysis was deficient, it was all too typical of rejections made under Alice.  The extent of the analysis in many rejections is still limited to whether claims include non-computing elements “[o]nce the abstract idea is removed”, as went the examiner’s reasoning in the advisory action.  Even when such elements are present, examiners typically dismiss them as “insignificant extrasolution activity”, making it difficult to draft and defend even inventive claims without having to go to the Board.

    So, the Board got it right in reversing the Alice rejections, if for no other reason than that the examiner failed to set forth a prima facie case of ineligibility under the Alice framework.  But right about here is where the decision in this case takes a left turn into the Twilight Zone, in a twist so surprising that it’s worth devoting a whole other blog post to analyzing: although the claims clear Alice, they’re still ineligible under § 101 as software per se and printed matter!  (No way!  Yes, way!  No, actually, no way.)

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  • Guest Post: Taking Admiration too far?

    Afro-IP’s 2000th post touches on the interesting question of cultural appropriation. This opinion* is expressed by the CEO of Proudly South African Eustace Mashimbye (pictured below), whose organisation stresses the need to buy local to create local growth, and draws on recent examples of cultures increasingly being used to promote goods of others, without compensation. Let us know your thoughts especially in the light of traditional knowledge legislation in your country by emailing us here.

    Taking Admiration too far?
    They say there’s no such thing as a new idea, and that can go for the melody of a song, a novel’s storyline, or a fashion design. Proudly South African recently came out in defence of Laduma Ngxokolo in his case against retailer Zara when a range of socks that bore a striking resemblance to his Khanyisa cardigan design appeared in their stores. Zara subsequently discontinued sale of the socks, but stopped short of an apology, promising only ‘an internal investigation’.

    The issue raises many interesting questions around cultural appropriation (or misappropriation), inspiration and copy catting. When is it OK for a company to take inspiration from a cultural group and use it in their music, textile design or whatever their narrative or medium is? Doesn’t it happen all the time? Can only an Italian open a pizza/pasta restaurant? Can only a Scotsman wear tartan? Was it OK for Louis Vuitton to use the Basotho blanket as inspiration for a garment that carried a R33 000 price tag? Is it OK for Dr, as she is now, Esther Mahlangu to replicate Ndebele designs and paint New York streets with them? Was it OK for Laduma to take inspiration from Xhosa culture for the patterns on his cardigans in the first place?
    It is also said that imitation is the best form of flattery but when is admiration taken too far? Product development and evolution is a fact of life, but begs even more questions. Did Taxify copy Uber, or have they differentiated their product significantly enough other than on price? And what about the world of pharmaceuticals with the immediate entry into the market of generics when a drug licence expires? I heard for the first time a couple of weeks ago about drug ‘cloning’ – this is when the original drug manufacturer clones their product, replicates the packaging exactly but alters the name slightly, in order to retain a share of the generic market for their own drug.
    It can be argued that licence expiry gives everyone a chance at accessing a lucrative
    market, once the drug manufacturer has recuped the costs of research and development. Perhaps this business model should be adopted in other sectors. It makes it important for companies or original idea holders to register their trade mark, copyright their idea and establish their rights to their intellectual property. Registering a cultural emblem is one option for ethnic groups such as the Basotho to ensure cultural preservation of a design or artefact, but this may not translate into real protection in the commercial market place.
    If we are to bring ethics into the issue of appropriation, for me the difference between Louis Vuitton’s use of Basotho cultural elements and MaXhosa by Laduma and even Mam’ Esther’s use of Ndebele designs is that the Basotho people did not benefit from LV’s sales in any way, whereas both Mam’ Esther and Laduma are using inspiration from their OWN cultures to create their artworks. In particular in Ngxokolo’s case, we know that his value chain in terms of local procurement has integrity and is ethical. The wool for his garments comes from Eastern Cape farmers, even though he could buy it more cheaply from overseas.
    In researching this piece, I found another great example of ethical use of an ethnic group’s culture and this was by Brazilian luxury brand, Osklen whose Spring 2016 collection used symbols and references from the Amazonia Ashaninka tribe. In exchange for the use of Ashaninka elements in their designs, Osklen gave royalties from the collection to the tribe who also got a platform to raise awareness about their struggle to protect their land against illegal loggers. Now that’s a proper collaboration and engagement with someone whose original work or property you admire.
    Susan Scafidi, founder of the Fashion Law Institute and author of Who Owns Culture: Appropriation and Authenticity in American Law, says , “designing with both inspiration and respect for other cultures in mind is a challenge that actually requires more creativity and transformative vision than just copying someone else’s culture and claiming it as your own.” and we would echo this.
    We believe that Zara simply plagiarised a pattern by a fashion designer who in this case happens to be South African. Laduma is fighting his own legal case in this regard, but our gripe against Zara goes further. We are calling them out on 0% local South African content in their stores, even though they’re happy to ‘admire’ Laduma’s cardigan, put it on a pair of socks, call it their own and make money from it.
    As for a song, this week I’ve chosen ‘ Izinja’ . Did Mapaputsi admire, copy or appropriate Baha Men’s Who Let the Dogs Out? You decide!

    *This article is also published as an Opinion in BusinessReport and reproduced on request. Links and pics sourced by Afro-IP.


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  • Considerations for Canna-Patent Owners and Applicants in Light of Insys Development Co. v. GW Pharma Ltd.

    By George “Trey” Lyons, III, Nicole Grimm, and Brett Scott — For companies in the cannabis industry seeking to protect their innovations, patent protection is typically available for cannabis-related inventions (including the plant itself), just like it is for any other invention—they just have to be new, useful, and nonobvious. Many canna-patent owners understand and are concerned with the uncertainty they currently face in U.S. courts for enforcing their rights on a potential infringer—namely whether U.S. courts will enforce these patents given that cannabis is still federally classified as a controlled substance. But to date there have been no cannabis-related…

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  • Introducing IPRs as the De Facto Administrative Claim Construction (ACC) Procedure

    Introducing IPRs as the De Facto Administrative Claim Construction (ACC) Procedure

    by Dennis Crouch

    Several years ago, I proposed an Administrative Claim Construction Procedure (ACC)— allowing a patentee or third party to request a claim-construction by the USPTO.  The process would be much like an Inter Partes Review (IPR) proceeding – although my proposal would end the proceedings before actually analyzing whether the prior art reads upon the claims.

    The combination of (1) the USPTO’s new proposed court-like claim-construction for IPRs and (2) the Supreme Court’s SAS decision collectively provides some opportunity for a de facto administrative claim construction procedure.  It is likely that a substantial portion of IPR participants will now be focused as much on claim construction as on the underlying validity arguments themselves.  Although this is already going on to some extent, once the courts and PTO apply the same standard of law, PTAB claim construction determinations could then be taken as decided issues of law (or at least highly persuasive authority) handed back for the stayed (or upcoming) district court litigation.

    In his first major action as USPTO Director, Andrei Iancu has proposed modifying the approach to claim construction that the Patent Trial and Appeal Board (PTAB) applies in IPR proceedings (as well as PRG and CBM proceedings). 

    Continue reading Introducing IPRs as the De Facto Administrative Claim Construction (ACC) Procedure at Patently-O.

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  • ~する機能

                            目次はこちら

    ~する機能

    (V-ing FUNCTION)
    $$ On the present invention design it no longer has a sealing function as it has combustion gas both above and below it. …

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  • Federal Circuit Affirms Royalty, Denial of Fees

    In its nonprecedential opinion in Chrimar Holding Co. v. ALE USA Inc., the court, in an opinion authored by Judge Taranto and joined by Chief Judge Prost and Jude Wallach, affirmed an award of reasonable royalties as well as the denial of the plaintiff’s attorneys’ fees.  The case involved four patents which (according to the plaintiff) are essential to the IEE’s “Power over Ethernet (PoE) 802.3af standard (ratified in 2003) and 802.3at amendments to the IEEE PoE 802.3 standard (ratified in 2009)” (p.3).  In 2015, Chrimar filed suit against ALE in the E.D. Texas, and ALE asserted “defenses of, inter alia, noninfringement, invalidity (including anticipation, obviousness, lack of enablement, lack of sufficient written description, and lack of proper inventorship), unenforceability based on unclean hands and inequitable conduct, prosecution laches, equitable estoppel, waiver, and implied license. ALE also asserted counterclaims of, inter alia, breach of contract with the IEEE (with ALE as a third-party beneficiary), fraud, and violation of section 2 of the Sherman Act, as well as declaratory judgment counterclaims corresponding to several of ALE’s affirmative defenses” (p.5).  ALE stipulated to infringement in accordance with the district court’s claim construction orders, and a jury trial was held on damages and on some of ALE’s defenses and counterclaims, ALE eventually having withdrawn the majority of its defenses and its antitrust counterclaim.  The jury returned a verdict for Chrimar in the amount of $324,558.34 and rejected ALE’s defenses and counterclaims; the district court nevertheless denied Chrimar’s motion for fees.
    On appeal, ALE challenged three of the district court’s claim constructions.  The Federal Circuit affirms as to two of them and reverses as to the other.  As a result, it affirms the infringement of three of the patents, and vacates and remands for further proceedings on infringement as to the remaining one.  Nevertheless, the court concludes that this result
    does not call for a new trial on damages. ALE did not ask for a new trial on damages based on our adoption of its construction of “adapted.” . . . And a new trial on damages is not warranted on that basis. Chrimar’s technical expert Dr. Vijay Madisetti testified that all four patents “cover the PSE [power sourcing equipment] and the PD [power device] aspects of classification, detection, and controlling the power,” J.A. 5892—a proposition that ALE agrees with on appeal, ALE Br. 8. Dr. Madisetti also testified that the smallest saleable patent-practicing units are ALE’s power sourcing equipment, which infringe the ’760 and ’838 patents, and ALE’s power devices, which infringe the ’012, ’107, and ’760 patents, J.A. 5921—a proposition ALE does not dispute on appeal. Given the (affirmed) judgment of infringement of the ’107 and ’760 patents, the absence of an infringement judgment on the ’012 patent is immaterial to damages because any damages that would result from the alleged infringement of the ’012 patent also results from the infringement of the ’107 and ’760 patents” (pp. 16-17).

    That seems a bit counterintuitive, if the ’012 patent covers a distinct invention and is essential in fact, though I suppose it’s possible; and for present purposes I’m not going to devote time to comparing the claims in suit of all four patents to see how they differ from one another or otherwise trying to get to the root of this. 
    Anyway, moving on to “ALE’s independent arguments directed to damages,” the court rejects ALE’s challenges to the testimony of Chrimar’s damages expert, namely that he “(1) relied on licenses not comparable to the hypothetical negotiation for the present case; (2) did not adequately separate the value of patented features from the value of standardization and the value of nonpatented features; and (3) prejudicially referred to ALE’s total net revenue and profit” (pp. 17-21).  Finally, the court rejects ALE’s challenge to the district judge’s jury instruction on fraud, and affirms the denial of fees:
    Chrimar’s argument relies chiefly on the ground that ALE pressed a large number of defenses and counterclaims for years, only to drop most of them (e.g., concerning antitrust, inequitable conduct, and some invalidity grounds) late in the litigation, even during trial. Chrimar does not meaningfully show that those dropped claims were objectively meritless. It focuses on the contention that ALE never truly intended to try them. 

    The district court did not abuse its discretion in making what here was a case-specific judgment that it was distinctively well-positioned to make. The court denied summary judgment as to a number of the claims ALE later dropped, allowing them to proceed. And the court determined that ALE’s litigation decisions fell within the range of ordinary practices involving the narrowing of claims for trial (pp. 25-26).

    One final note:  the PTAB has found all the claims in suit to be invalid, and appeals are either pending or expected (see p.6 n.1), so all of the above discussion could wind up being irrelevant anyway.
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