As new technologies have pervaded society, with more to come, policymaking has become a difficult exercise. Rules established before those game-changing technologies might be outdated. A session at the World Trade Organization Public Forum last week lo…Continue Reading ...
The European Patent Office today announced the appointment of three new vice-presidents, related to patent granting, legal and international affairs, and corporate services. The appointees come from Germany, the United Kingdom, and Austria.Continue Reading ...
Another case related to (alleged) bad effects from the use of gadolinium contrast agents in MRI, as for example to seek activelesions in multiple sclerosis.Case No.3:18-cv-491, in the United States District Court for the Western District of North Carol…Continue Reading ...
On September 7, 2018, the government filed a petition for writ of certiorari in the case relating to Eric Brunetti’s clothing brand, called FUCT. Although Brunetti has marketed various apparel under the FUCT mark since the early 1990s, the application at issue in this case was filed in 2011. The examiner rejected the application under Section 2(a), finding that FUCT “is the past tense of F*CK,” and “is scandalous because it is disparaging and  total[ly] vulgar.” The Trademark Trial and Appeal…
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The digital revolution has transformed the way trade is taking place. The share of goods like CDs, books and newspaper is dropping in terms of global trade volume, pushed down by digital goods. In that context, intellectual property rights are also inc…Continue Reading ...
District Judge Stefan Underhill of the District of Connecticut issued a ruling on cross-motions for summary judgment in a copyright case involving the cult horror film Friday the 13th. Judge Underhill’s ruling determined that Victor Miller, the screenwriter who wrote the script for the movie, did not produce the script as a work made for hire, thus preserving his ability to claim ownership of the copyright for the script.
The post Judge Rules That Script for “Friday the 13th” Was…
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In Roche Molecular Systems, Inc. v. Cepheid, the Federal Circuit affirmed the summary judgment decision of the U.S. District Court for the Northern District of California that held nucleotide primer claims and detection method claims invalid under 35 USC § 101. This decision may be at odds with USPTO guidance that claims directed to a method of…… Continue reading this entryContinue Reading ...
By Kevin E. Noonan — One of the limitations of our judicial system is that it is inefficient in overcoming error. This drawback is most pronounced at the Federal Circuit, where precedential decisions can only be overcome by en banc reconsiderations, w…Continue Reading ...
The issues in the Roche case were :101
The only issues on appeal are whether the aforementioned
primer claims and the method claims of the ’723
patent are patent-ineligible within the meaning of § 101.
Section 101 provides that “[w]hoever invents or discovers
any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.” 35 U.S.C.
§ 101. There are certain exceptions to this provision: laws
of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice Corp. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014) (collecting cases).
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Appellant Roche Molecular Systems, Inc. (“Roche”)
owns U.S. Patent No. 5,643,723 (“the ’723 patent”), titled
“Detection of a Genetic Locus Encoding Resistance to
Rifampin in Microbacterial Cultures and in Clinical
Specimens.” The United States District Court for the
Northern District of California found that the asserted
claims of the ’723 patent are directed to patent-ineligible
subject matter and are therefore invalid under 35 U.S.C.
§ 101. Roche appeals from a grant of summary judgment
of invalidity. We affirm.
From the opinion:
Data Engine Technologies LLC (“DET”) appeals the
district court’s entry of judgment on the pleadings holding
that the asserted claims of DET’s U.S. Patent
Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146 are
ineligible under 35 U.S.C. § 101. The district court held
that the asserted claims are directed to abstract ideas and
fail to provide an inventive concept. We conclude that,
with the exception of claim 1 of the ’551 patent, the asserted
claims of the ’259, ’545, and ’551 patents (“Tab
Patents”) are directed to patent-eligible subject matter.
These claims are not abstract, but rather are directed to a
specific improved method for navigating through complex
three-dimensional electronic spreadsheets. We agree,
however, that the asserted claims of the ’146 patent,
reciting methods for tracking changes to data in spreadsheets,
are directed to the abstract idea of collecting,
recognizing, and storing changed information. After a
searching review, we find nothing in these claims that
provides an inventive concept sufficient to render the
claims patent eligible. Accordingly, we affirm-in-part,
reverse-in-part, and remand.
QuatroPro is mentioned:
Although these spreadsheet interfaces have become
ubiquitous, Quattro Pro, the first commercial embodiment
of the claimed invention, was highly acclaimed as having
revolutionized three-dimensional electronic spreadsheets.
During prosecution, DET submitted contemporaneous
articles showing the state of the art at the time of the
invention and evidencing the significance of the claimed
methods to spreadsheet technology. For example, PC
World, a leading computer magazine, published a frontpage
article, “Quattro Pro for Windows: The Ultimate 3-D
Spreadsheet.” J.A. 981. The article reflected the industry’s
view that “keeping large, complex worksheet projects
organized, manageable, and reliable ha[d] long been a
major concern for serious spreadsheet users” and that
existing spreadsheets had “data and results hidden all
over the place.” J.A. 982. The article touts the claimed
notebook-tabbed spreadsheet interface as a solution to
that problem, explaining that it “makes developing nifty
applications far easier for the average spreadsheet user,
and [that] intelligent command organization makes
navigation efficient.” Id. PC World published another
cover story naming Quattro Pro “The Best of 1992,” again
lauding it as “the first spreadsheet to make threedimensional
modeling an accessible, useful analytic tool.”
J.A. 1007. The article stated that “[o]ne of the keys to the
product’s success is a notebook metaphor, in which each
worksheet page can be assigned a descriptive name and
users can navigate through the set by clicking on page
Of the ‘146 patent:
Google filed a motion for judgment on the pleadings
under Federal Rule of Civil Procedure 12(c), arguing that
the asserted claims of the Tab Patents and the ’146 patent
are directed to patent-ineligible subject matter under
§ 101. The district court granted the motion with respect
to the Tab Patents, concluding that representative
claim 12 of the ’259 patent is “directed to the abstract idea
of using notebook-type tabs to label and organize spreadsheets.”
District Court Op., 211 F. Supp. 3d at 678. The
district court also agreed with Google that claim 12 “is
directed to an abstract idea that humans have commonly
performed entirely in their minds, with the aid of columnar
pads and writing instruments.” Id. at 679. The
district court held that the remaining limitations of
claim 12 fail to recite an inventive concept. Id.
Of the ‘259 patent:
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 threedimensional
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. They required users
to “master many complex and arbitrary operations.”
’259 patent col. 2 ll. 28–29. Users had to search through
complex menu systems to find appropriate commands to
execute simple computer tasks, which required users to
memorize frequently needed commands. Id. at col. 2
ll. 29–45. This was burdensome and hindered a user’s
ability to find or access the many commands and features
available in prior art computer spreadsheets, undercutting
the effectiveness of the computer as a means to
review and edit a spreadsheet. Id. at col. 2 ll. 45–56. This
was particularly true for three-dimensional spreadsheets,
which allowed users to build spreadsheet workspaces
consisting of multiple two-dimensional spreadsheets,
further increasing the complexity of using and navigating
between multiple spreadsheets. Id. at col. 2 l. 66–col. 3
Note footnote 2:
The district court declined to consider the articles
included in the prosecution history, relying only on the
pleadings and the patents attached to DET’s complaint.
District Court Op., 211 F. Supp. 3d at 681 n.4. On a
motion for judgment on the pleadings, however, the court
may consider “matters of public record.” Cf. Bruni v. City
of Pittsburgh, 824 F.3d 353, 360 (3d Cir. 2016) (quoting
Pension Benefit Guar. Corp. v. White Consol. Indus., Inc.,
998 F.2d 1192, 1196 (3d Cir. 1993)). Prosecution histories
constitute public records. See Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 951, 957 (Fed. Cir.
2000) (“The prosecution history constitutes a public
record . . . .”); see 37 C.F.R. § 1.11(a) (“The specification,
drawings, and all papers to the file of: [a] published
application; a patent; or a statutory invention registration
are open to inspection by the public . . . .”). We consider
this evidence relevant in our de novo review because it is
part of the Tab Patents’ prosecution histories and was
relied on in DET’s opposition to Google’s Rule 12(c) motion.
Google avers that humans have long used tabs to organize
information. It cites tabbed notebooks, binder
dividers, file folders, and sticky Post-it notes as wellknown
examples of organizing information using tabs.
We agree that tabs existed outside the context of electronic
spreadsheets prior to the claimed invention. It is not
enough, however, to merely trace the invention to some
real-world analogy. The eligibility question is not whether
anyone has ever used tabs to organize information.
That question is reserved for §§ 102 and 103. The question
of abstraction is whether the claim is “directed to” the
abstract idea itself. Id. We must consider the claim as a
whole to determine whether the claim is directed to an
abstract idea or something more. Google fails to appreciate
the functional improvement achieved by the specifically
recited notebook tabs in the claimed methods. The
notebook appearance of the tabs was specifically chosen
by the inventors because it is easily identified by users.
The tabs are not merely labeled buttons or other generic
icons. DET has disclaimed as much. See Oral
Arg. at 11:03–47. Rather, the notebook tabs are specific
structures within the three-dimensional spreadsheet
environment that allow a user to avoid the burdensome
task of navigating through spreadsheets in separate
windows using arbitrary commands
The American Chemical Society (and Elsevier) filed suit in the federal District Court of Maryland on 2 October 2018 asserting copyright infringement by the German entity ResearchGate.
There are a variety of issues.
As a condition of publishing, the American Chemical Society [“ACS”] requires authors to execute an assignment of copyright. Sometimes, authors will modify the agreement to allow use for “advertising” the authors or the institutions of the authors. Sometimes, authors, who do not modify, are not fully aware of the restrictions imposed by the standard ACS form. ResearchGate apparently gets some of its copies from websites into which authors have posted copies of their articles.
As to publication requirements on papers arising from federally-funded research, note the policy impacting papers arising through funding by
the National Science Foundation [NSF]:
NSF’s policy on public access to copyrighted material (Public Access Policy) reflects the Foundation’s commitment to making certain that, to the extent possible, the American public, industry and the scientific community have access to the results of Federally funded scientific research. Pursuant to this policy, grantees must ensure that articles in peer-reviewed scholarly journals and papers in juried conference proceedings:
are deposited in a public access compliant repository (as identified in the Public Access Policy);
are available for download, reading, and analysis within 12 months of publication;
possess a minimum set of machine-readable metadata elements as described in the Public Access Policy; and
are reported in annual and final reports with a persistent identifier.
Either the final printed version or the final peer-reviewed manuscript is acceptable for deposit. NSF’s Public Access Policy applies to awards, funded in whole or in part, as a result of proposals submitted, or due, on or after January 25, 2016. NSF’s Public Access Policy may be viewed at: http://www.nsf.gov/news/special_reports/public_access/index.jsp.
If the ACS policy sounds vaguely familiar, look back to a post on IPBiz in the year 2006:
Journal publication, pubmedcentral and the ACS , including the text:
In context, Nally is complaining about posting of scientists’ final, peer-reviewed articles on an internet website (pubmedcentral) within 12 months AFTER publication in the journal.
I could not help thinking about Dan Hunter’s article, Walled Gardens, 62 Wash & Lee L. Rev. 607, which complained about the requirement of some law reviews that articles which had been pre-published on an internet website to be removed from the website BEFORE publication in the journal.
The common theme is the perceived undesirability, by the journals, of information being made available on the internet. The noncommon theme is the timing. The SCIENCE journals have the expectation of presenting the information FIRST, and worry about the impact of later publication. The LAW journals do not care that the information has been presented somewhere else first, but don’t want someone to access the information (presented elsewhere first) AFTER they decide to publish it LATER.
See also the 2004 post
American Chemical Society suing Google over google scholar?
$$ To help understanding of the invention, various specific embodiments thereof will now be described by way of example and with referenc…
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Concerned by the ever-increasing influx of counterfeit and pirated goods into Europe, European Union member states on 9 October backed a new customs action plan for 2018-2022. The first step will be a roadmap for implementation from the European Commis…Continue Reading ...
The United States Patent and Trademark Office (USPTO) has published a final rule in the Federal Register changing the claim construction standard applied during inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review proceedings before the Patent Trial and Appeal Board (PTAB). This final rule replaces the broadest reasonable interpretation standard the USPTO has used to interpret claims since AIA administrative trial proceedings came online effective…
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To determine the meaning of FRAND is surely one of the most difficult questions in patent law. In this regard, copyright law has addressed similar questions regarding the licensing of mass uses. Moreover, section 23 of the Patent Law already offers in its valuation model the possibility of drawing FRAND declarations into the patent licensing system. This should be accomplished, however, in the context of an action for rate-setting and dispute resolution. The following contribution offers some preliminary ideas.
In case you’re not familiar with the aforementioned article 23, here is a translation of it from WIPO’s website:
(1) Where a patent applicant or the person entered in the Register as the proprietor of the patent (section 30 (1)) declares to the German Patent and Trade Mark Office in writing that he is willing to allow anyone to use the invention in return for equitable remuneration, the annual renewal fees due in respect of the patent following receipt of the declaration shall be reduced to one half. The declaration shall be recorded in the Register and published in the Patent Gazette (Patentblatt).
(2) The declaration shall be inadmissible as long as there is an entry in the Register regarding the grant of an exclusive licence (section 30 (4)) or an application is pending before the German Patent and Trade Mark Office for such entry to be made.
(3) Any person who, subsequent to the declaration being entered, wishes to use the invention shall inform the proprietor of the patent of his intention. The information shall be deemed to have been effected if it has been dispatched by registered letter to the person entered in the Register as the proprietor of the patent or to his registered representative or the person authorised to accept service (section 25). The information shall indicate how the invention is to be used. Subsequent to the information, the informing party shall be entitled to effect use in the manner he has indicated. He shall be obliged, after the expiry of each calendar quarter, to inform the proprietor of the patent of the use effected and to pay the remuneration for that use. If he does not fulfil this obligation in due time, the person registered as proprietor of the patent may set him a reasonable extension of time for payment and, following expiry without the obligation being fulfilled, may prohibit further use of the invention.
(4) The remuneration shall be fixed by the Patent Division upon the written request of a party. Sections 46, 47 and 62 shall apply mutatis mutandis to the procedure. The request may be directed against more than one party. When fixing the amount of the remuneration the German Patent and Trade Mark Office may make an order requiring the party opposing the request to bear the costs of the procedure in whole or in part.
(5) After the expiry of a period of one year following the last fixing of remuneration, any party affected thereby may apply for its adjustment if in the meantime circumstances have arisen or become known which make the remuneration fixed appear obviously inappropriate. In other respects, subsection (4) shall apply mutatis mutandis.
(6) Where the declaration is made in respect of an application, the provisions of subsections (1) to (5) shall apply mutatis mutandis.
(7) The declaration may be withdrawn in writing vis-à-vis the German Patent and Trade Mark Office at any time, as long as the proprietor of the patent has not been informed of any intention to use the invention. The withdrawal shall take effect when it is filed. The sum by which the annual renewal fees have been reduced shall be paid within one month of the withdrawal of the declaration. If the difference is not paid within the time limit specified in the third sentence, it may still be paid together with the surcharge for late payment before the expiry of a period of a further four months.
The U.K. has a similar “license of right” provision in section 46 of its patent law. Anyway, Drs. Schaffer and Cychowski argue that something along these lines could be used to determine FRAND rates. If I understand correctly, the proposal would be for SEP owners to establish voluntary agents (analogous to collective rights organizations in copyright) to grant nonexclusive licenses on a standard-wide basis. The authors recognize that for such a proposal to work, there would have to be a critical mass of owners willing to participate.
2. Maximilian Haedicke has published an article titled Vorlagepflichten und Schutz vetraulicher Informationen im Patentverletzungsprozess (“Submission requirements and protection of confidential information in patent infringement proceedings”) in the June 2018 issue of Mitteilungen der deutschen Patentanwälten (pp. 249-55). Here is the abstract (again, my translation):
Recently, interest has intensified surrounding the question of how to protect confidential information in patent infringement proceedings. Comprehensive legal means for the protection of secret information are not in place. Nevertheless, it is important to achieve a balance among the protection of litigants, especially their right to a legal hearing, the claim to access to justice, and also the public interest in transparent jurisprudence and legal development. This essay is intended to discuss, under what conditions potentially confidential information is introduced in patent litigation, whether it is adequately protected, and what improvements should be considered.
3. Michael Nieder has published an article titled SEP-Lizenzen-ein Fall für die Gesamtgläubigerschaft? (“SEP Licenses: A Case for Joint Creditorship?”), in the July 2018 issue of GRUR (pp. 666-70). Here is the abstract in my translation:
In SEP proceedings the FRAND license plays a prominent role. Different answers have been proposed to the question of how to avoid overburdening implementers with royalty payments when there are a large number of claimants. The author proposes the use of rules for joint creditorship for resolving the accumulated license claims of SEP owners up to the aggregate royalty burden.
If I’m understanding correctly, the procedure the author envisions, based on sections 428 and 430 of the BGB (the German Civil Code), strikes me as functionally somewhat similar to the proposal made a couple of years ago by Bartlett and Contreras for resolving FRAND disputes through use of interpleader.