Monday, February 25, 2008

Wide Claims Need Wide Disclosure

feb 13 2008 Hal Wegner of Foley and Lardner reports:

Today in Sitrick v. Dreamworks, LLC., __ F.3d __ (CAFC 2008)(Moore,J.), a
panel affirmed a trial court judgment of invalidity for want of enablement
under 35 USC 112, 1, because although the claimed method relating to
integrating a user's audio signal or visual image in a pre-existing video
game or movie was enabled for videogames, there was no enablement shown
for all aspects of the generic invention, viz., movies were not enabled:
"The full scope of the claimed invention must be enabled. ...  A patentee
who chooses broad claim language must make sure the broad claims are fully

Sitrick v. Dreamworks represents a continuation of a trend over the past
fifteen years in the post-Markey era to restrict the scope of generic
coverage of inventions.

Thanks to:

1b Uncommon
20. - 127

Sunday, February 24, 2008

Restaurants fight over patents

During the week of June 28, 2007, the New York Times' front page,
has an article on the growing IP lawsuits amongst restaurant owners,
in particular, patent, trademark and
trade secret lawsuits.

First - restaurants (along with cafes [i.e., Starbucks], and specific-food
stores [i.e. Dunkin Donuts]) are big business, especially chains and
specialty venues.  Like other businesses, they have their methods and
processes - recipes; their articles of manufacture - food items and
cooking equipment; system architectures - well, architectures; and
financial business methods.  There are over 1000 patents dealing with
restaurants and recipes.  And rightly so because all of these categories
fall within traditional boundaries of patentability.  Indeed, this area
of technology has its components:

   U.S. Patent 7,153,531
   Food component

   1. A food component in particulate form comprising: at least about
   50 wt. % of a bulking agent; and about 24 to 33 wt. % of a
   triacyiglycerol component having a melting point of about 100 to F.; wherein the food component has a water activity of
   no more than about 0.4; and the particulates have a sensory hardness
   value of at least about 6 and comprise an inner layer having a
   monolayer value at C. of no more than about 1.0 wt. %.

or a recent patent to Kraft:

   U.S. Patent 7,226,629
   Microwaveable grilled cheese and meat sandwiches and method of

   1. A microwaveable grilled cheese sandwich comprising toasted bread
   and cheese, the cheese being coated on all of its surfaces with an
   edible moisture barrier, the edible moisture barrier composition
   comprising from 1 to 35 weight percent of an edible microparticulated
   high melting lipid having a melting point of C. or higher
   and a volume average particle size of less than 10 microns; .....

That there are not more such patents is a reflection of the reticience of
patent lawyers to be more aggressive in helping such businesses learn more
about patents to then seek more patent protection. (Yes, what I really mean
is buy more copies of my book, "Patenting Art and Entertainment", and pass
them out to potential clients :-)  Amongst other reasons for such forms of
patents is that none of the above categories - methods, articles, systems
- belong anywhere within ten million miles of the copyright system, despite
the lies copyright lawyers use to pull such categories into the domain (it
is engineeringly obscene for extremely functional architectural plans to
be subject to copyright).

Which is why more architectural and food-related businesses are seeking
patent protection.  But here is the artistic-equivalence argument that
goes unspoken.  Everything related to food is part of the culinary, as
much a branch of the arts as any other branch.  If all of the culinary
arts are patentable, including articles of manufacture, why not all of
the areas of art?  There is no logic to some forms of art being partially
patentable (music, movies, etc. - no patents for articles of manufacture,
only method patents) while other forms of art are fully patentable (food,
sculpture, mostly anything 3D-ish) including articles of manufacture.
It is not justifiable within art theory, within science or engineering,
and within most patent caselaw.  So I argue that patent lawyers should be
more aggressive in bringing protection for all of the arts under the rubric
of what all of the arts are becoming - large engineered manufacturing

Back to the New York Times article.  It first starts out with a lawsuit
just filed in the federal district court in Manhattan by Rebecca Charles,
owner of the Pearl Oyster Bar in the West Village.  She is suing her
former chef, Ed McFarland, co-owner of Ed's Lobster Bar in SoHo.  The
article is not clear the exact IP types being asserted, but at least one
count involves a trade secret theft of Ms. Charles' recipe for a Caeser
salad which Mr. McFarland is now selling as "Ed's Caesar".  Ms. Charles
claims he got the idea from her to use coddled eggs and English muffin
croutons.  Also, it looks like there are some trade-dress charges as
well - paint colors, use of wheat-straw backed chairs, etc.

But she admits she got many of her ideas from earlier sources, for
example, that part of the design of her place was inspired by the Swan
Oyster Depot in San Francisco, and that the salad recipe was learned
from a long-gone Los Angeles restaurant.  Without a confidientality
argeement, though, she might find it hard to assert these complaints
in court, especially since McFarland is arguing back that he has his
own architectural and recipe designs and methods.

While many chefs are resistant to bringing more law into their kitchens
(partly because no one has ever explained the main facets of IP law to
them), others are embracing the patent system.  A quote from one
lawyer summarizes this well:

   Charles Valauskas, a lawyer in Chicago who represents a number
   of restaurants and chefs in intellectual property matters,
   called their discovery of intellectual property "long overdue"
   and attributed it to greater competition as well as the high
   cost of opening a restaurant.

   "Now the stakes are so high", he said.  "The average restaurant
   can be millions of dollars.  If I were an investor, I'd want to
   do something to make sure my investment is protected."

Sounds like the software industry in the 1990s.  As software became more
lucrative, the financial stakes higher, the inadequacies of copyright
more obvious, software patents took off, as business method patents are

   One of Mr. Valauskas's clients, Homaro Cantu, has applied for
   patents on a number of his culinary inventions, like a method
   for printing pictures of food on flavored, edible paper.  Mr.
   Cantu also makes his cooks sign a nondisclosure agreement before
   they so much as boil water at Moto, his restaurant in Chicago.

So are all aspects of all forms of art patentable, if most aspects of
most areas are already patentable?  Does Baker v. Selden, State Street
and Lundgren, and other decisions open up more areas of art and
entertainment to patenting?  As science and engineering extends more
and more into the design and production of art and entertainment,
treating a music rif no different than a transistor, should more areas
of art be brought into the patent system?  Will detailed descriptions
of new artistic methods and articles of manufacture help progress the
arts by facilitating technology transfer to the general public?  Is
the printed matter doctrine obsolete.  Is it unethical for the PTO to
assert a non-functional descriptive matter doctrine, when it doesn't
define "functional" or know anything about the sciences of the arts?
Yes, No, who knows?

What is strange is the general silence at patent law conferences and in
patent law journals, and at entertainment law conferences and in
entertainment law journals, to all of these questions.  Patents are
pending on movie plots, a potentially revolutionary development.  Yet
you would never know of this possibility of you go to these types of
forums.  And there are hundreds of thousands of unpublished pending
patent applications.  Who knows what boundaries are being pushed in some
of these applications.  Room for tons of speculation.  But silence.
Grow up folks (except those of you who are saying nothing publicly
because you are too busy helping your clients file patents in these

Monday, February 11, 2008

Top Five Reasons Not To Patent


Patent lawyer Dennis Fernandez, in an opinion piece for BioITWorld
http:// com/groups/staff/portlets/expert-comment/,
seriously or sarcastically or lamentably sums up a possible outcome
of business class warfare in the U.S. in the form of the castration
of the U.S. patent system:

   1.  There is no longer any guarantee of exclusive patent protection
       (eBay v. MercExchange kills injunctions)

   2.  There is no longer current assurance of reliable patent licensing
       (MedImmune v. Genentech)

   3.  An inventor cannot seek patent protection for "merely a
       combination of old elements)
       (the nonsense of KSR - I would have titled #3 differently:
       "Obviousness is now as vague as idea/expression")

   4.  Increased damages are now extremely difficult to sanction
       against willful infringers
       (In re Seagate)

   5.  The situation is only getting worse for patent proponents.
       (continuation rules changes, apportioned damages)

His conclusion: "Without adequate reform returning rights to patent owners,
the practice of applying for U.S. patents may soon no longer be worthwhile."
But are his comments inappropriate in this industry forum?  A PATNEWS
lawyer reader comments:

   He's either a liar or a fool (and that's a non-exclusive "or"). Each
   of the cited cases had very specific fact situations that are not
   present in every business situation (especially KSR and Medimmune).
   Just because it's no longer the land rush of the past decade or so
   doesn't mean that it's time to return to the days of ignoring patents
   entirely. Getting a patent still has real value if you have a real
   invention. (So much for Fernandez' clients, I suppose.)

   Frankly, I find it unprofessional and unethical for an attorney to
   make such hyperbolic statements to the public.

Yeah, as unprofessional and unethical as the KSR decision.

Sunday, February 3, 2008

Math Complex Enough To Be Patentable

In the 19 October 2007 issue of Science magazine, U. Vermont mathematics
professor published an article: "Mathematics and Complex Systems", with this

    Contemporary researchers strive to understand complex physical
    phenomena that involve many constituents, may be influenced by
    numerous forces, and many exhibit unexpected or emergent
    behavior.  Often such "complex systems" are macroscopic
    manifestations of other systems that exhibit their own
    complex behavior and obey more elemental laws.

The phenomena he is referring to all belong to technical, and therefore
patentable fields, such as electronics, chemistry, biology, etc.  But
he goes on:

    This article proposes that areas of mathematics, even ones based
    on simple axiomatic foundations, have discernible layers,
    entirely unexpected "macroscopic" outcomes ...

therefore, unpredictable, and thus pure math is KSR patentable,
even if KSR is semantic nonsense.

    ... and both mathematical and physical ramifications profoundly
    beyond their historical beginnings.  In a larger sense, the
    study of mathematics itself, which is increasingly surpassing
    the capacity of researchers to verify "by hand", may be the
    ultimate complex system.

Yes, and more - the ultimate complex PATENTABLE system.  From his
talking about mathematical systems in general:

    Evidently, complex systems may evolve from [mathematical] structures
    according to very elementary rules or transition laws; the
    seemingly "deterministic" nature of such foundations may belie their
    ultimate intricacy and unpredictability ...

Note: and unpredictable systems are KSR-patentable, even if KSR is
semantic nonsense.

    ... A combination of technical depth and breadth of relevance
    should be essential facets of any complex system.  Moreover,
    each should have "layers" of depth that are reasonably discernible
    to experts, even if there may be some disagreement about the
    precise nature of this term or where the "bonudaries" of the
    layers lie.  There should be some cross-fertilization of ideas,
    outcomes, and motivations spanning the layers (even if
    practitioners work primarily in only one layer).

That is, mathematics is a technical field as well, mathematical results
being technical results.

Thanks to these for support:

1b Uncommon

Friday, February 1, 2008


ANTIGUA CAN PIRATE OVER $20 MILLION OF AMERICAN MOVIES AND MUSIC The World Trade Organization recently ruled that the United States is wrongly preventing its citizens from using foreign Internet gambling sites. Antigua and Barbados, homes to many Internet gambling ventures, claimed billions of dollars in damages, but Antigua was only awarded $21 million in damages (a calculation based on potential revenues). The interesting part is that instead of having the U.S. government write a check for the $21 million, the WTO gave Antigua permission to violate American copyright laws by illegally distributing $21 million worth of music, movies and software products. Which will generate all sorts of new lawsuits ("That Britney Spears video is worth $20 dollars - No, it's worth 2 cents"....). Of course, what one hand grants, the other threatens to take away, with the U.S. government issuing a stern warning to Antigua to not do any such authorized infringing while talks continue. A bit of advice for the U.S. government. "Might makes Right" is a great policy as long your Might is the Mightiest. Thus, you might want to imagine a world one day where the new Might, say China/Venezuela/Dubai team up and offer all American movies, music and software for free from their servers. Heck, with the oil profits they already have because of joke American energy (R&D) policies, they could probably buy up the rights and legally give it away for free.