Wednesday, June 29, 2011

EFF's Comments to the Patent Office Regarding Reexamination Procedures

Today the Electronic Frontier Foundation sent comments to the U.S. Patent and Trademark Office regarding the PTO's proposed revised rules for conducting patent reexaminations.  It's encouraging that the PTO is seeking to improve this important process for challenging issued patents, and asked the public to submit comments.  EFF's blog post about its comments, which I helped write, is here.

UPDATE:  The PTO has a web page with links to all the public comments, including EFF's.  

Monday, June 27, 2011

Monday Morning Links

Several funnies today:

Commercial of the day -- can you figure out the product before you see it?

Don't worry, I won't pay attention to THIS.  Or else this would be the last humor post. 

Tuesday, June 21, 2011

EFF Files Amicus Brief in Golan v. Holder

Today the EFF filed an amicus brief in Golan v. Holder, a case that will be argued before the Supreme Court this fall.  Golan is challenging the constitutionality of a statute that gave copyright protection to certain foreign works that had been in the public domain.  I co-authored the brief, which EFF filed on behalf of the Internet Archive and other libraries and digital repositories.  EFF's case page is here.

Monday, June 20, 2011

Is the Supreme Court Going to Revisit Bilski?

Today the Supreme Court granted cert in Prometheus Labs v. Mayo (captioned Mayo Collaborative Services v. Prometheus Laboratories, Inc. at the Supreme Court).

By way of background, the case involves the issue of whether an invention is eligible for a patent under
35 U.S.C. §101.  In a case called In re Bilski, the Federal Circuit had adopted a "machine-or-transformation test" to judge patentability: a patent applicant "may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article."  The Supreme Court granted review of this case, and in Bilski v. Kappos, held that the Federal Circuit test was too strict, making it easier to obtain patents and finding that §101 was less restrictive than the Federal Circuit's view.

The Federal Circuit had twice held that Prometheus' asserted medical treatment claims were patentable subject matter in view of both Bilski decisions.  After the first Federal Circuit decision so held, the Supreme Court had previously granted cert, and vacated and remanded so the Federal Circuit could reconsider the case in view of the Supreme Court's Bilski opinion.  The Federal Circuit then held the claims patentable again.

Putting aside any personal views about what the scope of 35 U.S.C. §101 should be, I had thought that (1) the Federal Circuit having initially ruled the Prometheus claims patentable in view of its strict Bilski test, there was no reason for the Supreme Court to grant cert and remand; (2) in view of the Supreme Court's less strict Bilski test (that is, a much more expansive view of patentable subject matter than the Federal Circuit test), it was a foregone conclusion that the Federal Circuit would again find the claims patentable, which it did; and (3) there was therefore no need for the Supreme Court to grant cert.

However, now the Supreme Court will review this case on the merits.  Are they going to revisit Bilski?

Here is a representative claim of the Prometheus patents:
1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8x10^8 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8x10^8 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

The issue presented in the case is as follows:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.

Monday, June 13, 2011

Patent Application of the Day

Someone filed a patent application on "Godly Powers."  Here are claims 1-3:

1. Godly powers are being used on planet Earth. For example, technology (i.e. Electronic and Medical) is being assisted by godly powers throughout the planet. Godly powers could be used prior, during, and after godly product/procedure. For example; Before--in the making of a device, like a micro-processor chip. During--in the operation of a device, like an inkjet printer cartridge. Afterwards--like gradual scar removal from breast implant surgery. A magician might perform magic before, during, and after, for any given trick ("illusion").

2. There is a plan governing our existence and actions--God's plan.

3. Christopher Anthony Roller is the godly entity powering Earth with godly powers as stated in claim 1.

Good news:  I checked the PTO's public PAIR database, and following (surprise!) a rejection of this application on every ground imaginable, it has been abandoned.  Great work, PTO!

Thursday, June 9, 2011

"Everything Great About YouTube"

All of YouTube's greatest hits, in one convenient video.

Supreme Court Affirms High Standard of Proving Patents Invalid

Sadly, today the Supreme Court affirmed the Federal Circuit in Microsoft Corp. v. i4i Limited Partnership.  My previous posts about the case are here, here, here, here and here

The Court affirmed the Federal Circuit's rule that patents must be proven invalid by clear and convincing evidence.  The Court did say that in circumstances where the evidence before the jury was not before the Patent Office, "a jury instruction on the effect of new evidence can, and when requested, most often should be given."  Slip opinion at 17-18.  Thus, "[w]hen warranted, the jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent."  The Federal Circuit's decision in z4 Technologies, Inc. v. Microsoft Corp., 507 F. 3d 1340, 1354-55 (Fed. Cir. 2007) had rejected a similar instruction, and is now probably incorrect.

Patently-O's discussion is here.  UPDATE:  Here are posts by EFF, Techdirt, and Peter Zura.

Tuesday, June 7, 2011

Today is National Llama Day!

Well, not really.  But you can still try using llama font.

Monday, June 6, 2011

Cloud Computing Explained

Supreme Court Decision on Patent Assignments and Federal Contractors

Today the Supreme Court decided Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc.  The Court held that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.  The Court thus affirmed the Federal Circuit's holding that Roche held title to the patents in suit because of a written agreement a Stanford researcher had signed with Cetus (Roche's predecessor), and that Stanford did not acquire title under the Bayh-Dole Act.

This makes two rare Supreme Court affirmances of the Federal Circuit in one week (although Global-Tech was only an affirmance in the result, not the reasoning).

UPDATE:  Here's Patently-O's discussion of the case.