IP and Innovation: Are we heading for Star Trek or Star Wars as Science Fiction becomes Science Fact?

Technology today would have seemed like science fiction to people fifty years ago.  In fact, wireless Bluetooth earpieces, handheld smartphones and tablet computers all appear ripped from science fictions novels, movies and television programs for the 1950’s and 60’s.  Recently NASA’s Ames Research Center reported its progress in creating a real-life tricorder, a device known well to Star Trek aficionados, which detects the health conditions of a patient (as well as detecting other things).  While the tricorder of Star Trek only collected data and perhaps generated a diagnosis, today our “real” technology includes innovations in which human made devices are acting like humans, generating “their” own IP content. For example, the IBM supercomputer WATSON has been tasked to analyze medical databases, patient records, journal articles, etc., to identify disease conditions, create new medical diagnostic tools, and identify new therapeutic treatments.

As more and more technologies that once were science fiction are now becoming reality, we look at how IP laws can deal with futuristic technology today.   While our technology continues to evolve we ask whether IP laws with their genesis in the Industrial Age are sufficient to to deal with technology of today and of the future.

On Friday October 17, at the 2014 ITechLaw Conference in Paris, Joren De Wachter and I will lead a discussion to explore these issues.  We will explore:

·               Who or what can create Intellectual Property?
·               Can devices, software, etc., create Intellectual Property?  If so, “who” owns the IP?  The owner of the machine? The operator of the machine? The inventor of the machine?
·               Can/should IP rights apply to inventions or creations made by machines?
·               If one interacts with a computer game, and the “game” generates IP content, who owns that content?  The gamer?  The game platform creator?
·               Are current IP laws and associated rights and restrictions adequate to cover emerging technologies?
·               What are the IP rights / limitations of third parties who implement technological innovations?

After the presentation and discussion, OP-IP will summarize the insights and remarks of the participants. 

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

Patented Tobacco Plant Genetically Engineered to Produce Antibodies Against Ebola gets Boost to Treat Dr. Kent Brantly and Nancy Writebol

Dr. Kent Brantly and Nancy Writebol, infected with Ebola, are being treated at Emory University hospital with an experimental cocktail of antibodies which target the deadly virus.  But these antibodies are not just any antibodies; they were synthesized and harvested from tobacco plants that scientists genetically engineered to produce antibodies against Ebola.


A team of scientists has worked for around twenty years on uses of plant-based therapeutics for the prevention and treatment of disease.  In August of 2013, U.S. Patent No. 8,513,397 ("Mason, et al.") entitled, DNA replicon system for high-level rapid production of vaccines and monoclonal antibody therapeutics in plants, issued on the technology which was initially filed as a patent application in 2008.  The potentially life-saving treatment remains in the experimental stages.  However, the novel antibody treatment got a boost last week when Branty and Writebol became infected with Ebola.  The dire conditions of Dr. Kent Brantly and Nancy Writebol led to the use of the still experimental patented technology.

While the treatment remains experimental and more testing is required before the cocktail of antibodies will be approved for treatment of Ebola, the tragedy of the outbreak and Brantly and Writebol becoming infected themselves has fast-tracked this treatment for Ebola and may result in similar antibody therapies to treat other infection diseases.

Sources:

Ebola Vaccine Antibodies Are Made in Tobacco Plants

Ebola vaccine pioneer joked about use of genetically engineered virus to cull human population

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

Aereo's Online Streaming Broadcast TV Caught Between a Rock and a Hard Place

The U.S. Copyright Office has denied Aereo's request to pay compulsory licensing fees to retransmit broadcast television signals over the Internet, as cable provides pay to retransmit over coaxial cable lines.  A denial letter dated July 16, 2014 sent to Aereo explains the U.S. Copyright's position, essentially saying that Aereo is not a cable service provider, and therefore, not eligible for paying the compulsory license (a.k.a. statutory license) to authorize it to retransmit the broadcast television programs. 

This rejection puts Aereo between a rock and a hard place.  In June, the U.S. Supreme Court (ABC et al. v. Aereo) determined that Aereo's streaming broadcast content over the Internet was a violation of the U.S. Copyright laws, in part, based on the Court finding similarities between Aereo's service and that of cable service providers.  The Court reasoned that Congress intended to regulate the "type of service" that Aereo was providing, citing the compulsory licensing provisions of the U.S. Copyright Act, 17 U.S.C. § 111 (§111)  Regrettably for Aereo, the U.S. Copyright Office does not find §111 covers Internet re-transmission. Therefore, Aereo, for now, cannot pay the statutory license fee to become an authorized retransmitter of broadcast television content.

For a more complete discussion on ABC et al. v. Aereo see...

• Supreme Court finds Aereo's Emerging Online Streaming Technology Hits Copyright Infringement Bullseye; and
• Slings and Aereos of Outrageous Fortune: Supreme Court Rules that Aereo Infringes

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

GPS (Guidance for Patent-eligible Subject matter) to Direct the U.S. Patent Office in view of Alice Corp. v. CLS Bank Int'l and the USPTO Preliminary Instructions

The U.S. Patent Office ("USPTO") has issued an APB, via a Fed. Reg. "Request for Comments...", to assist it in its unenviable task of developing new examination guidelines for its Examining Corps to guide them in evaluating patent application claims for patent-eligible subject matter under 35 U.S.C. § 101.   The challenge for the U.S. Patent Office is to establish advice for its Examiners when many commentators believe that the unanimous U.S. Supreme Court opinion in Alice Corp. v. CLS Bank Int’l failed to provide adequate instruction for one to evaluate whether a patent claim is directed to patent eligible subject matter.  See e.g. High court ruling leaves open questions on software patent eligibility (Virginia Lawyers Weekly,  Kimberly Atkins, June 24, 2014); and EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection.  Fulfilling our civic duty, we at OP-IP pick up the gauntlet and provide our own GPS (Guidance for Patent-eligible Subject matter) in view of Alice Corp. and the USPTO's June 25, 2014 Preliminary Instructions (in view of Alice Corp.) to provide direction to Examiners to locate patent eligible subject matter, and in particular, computer-implemented methods and systems.

Very Brief Historical Background...

The Alice Corp. decision extended its two-step process for evaluation patent-eligible subject matter of patent claims directed to laws of nature, natural phenomena and abstract ideas of biotechnology patents to also include computer-implemented methods and systems.   

Step 1: Is the patent claim directed to one of the three patent ineligible concepts of Laws of Nature, Natural Phenomena or an Abstract Idea, (“LNA”)?  If no, then the patent claim does not raise a § 101 issue.  If yes, then step 2.

Step 2: If the claim is directed to a LNA, does the claim put meaningful limitations on the LNA and/or apply the LNA in a way that limits the LNA, e.g. does the patent claim recites a meaningful application of the LNA so that the claim is not merely the LNA performed in a computer environment,  and thereby claims less than the LNA, itself?

GPS to Locate Patent Eligible Subject Matter (e.g. computer-implemented methods/systems)...

Step 1 Guidance: (identifying if a claim is directed to LNA)

• It is incumbent upon the USPTO to define "abstract idea" so that Examiners can faithfully do the analysis of Step 1. Although the Alice Corp. Court did not deem it necessary to define "abstract," based on its conclusion that there was consensus that the claims at issue were directed to an abstract idea (stating “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case”), Examiners need guidance on how to evaluate whether claims that they examine are directed to an abstract idea.  To do this, one must have a useful definition of "abstract" to apply.  Mere examples of claims not patent eligible under § 101, citing U.S. Supreme Court precedent is insufficient and inadequate for guiding Examiners to determine whether a patent claim is directed to an abstract idea under the analysis of Step 1. 
• Alice Corp. did not adopt the Solicitor General's definition of an abstract claim, namely “a claim that is not directed to a concrete innovation in technology, science, or the industrial arts…abstract in the sense that it is not a concrete innovation in the traditional realm of patent law”.    Although Ruth Bader Ginsberg requested the Solicitor General give his definition of an abstract concept during Oral Arguments (page 53, lines 2-13), the Supreme Court has yet to adopt a definition of "abstract idea", "abstract concept" or "abstract claim."
• Alice Corp. did hint that if a claim were directed to innovation in technology or improve a computer's function, the claim may be patent eligible under § 101.  
• One admonition is that a patent claim (including computer-implemented method/system) does not necessarily have to be an improvement of another technology or improve the function of a computer, to be patent eligible under § 101.
• The dictionary definitions of "abstract"....

1. Abstract according to Merriam-Webster...

• disassociated from any specific instance;
• expressing a quality apart from an object {the word poem is concrete, poetry is abstract}; and 
• relating to or involving general ideas or qualities rather than specific people, objects, or actions of art: expressing ideas and emotions by using elements such as colors and lines; and without attempting to create a realistic picture.

      2. Abstract according to Oxford Dictionary...

• existing in thought or as an idea but not having a physical or concrete existence;
•  not based on a particular instance; theoretical; and
•  ...denoting an idea, quality, or state rather than a concrete object: {abstract words like truth or equality};.

• The KEY to determining whether a patent claim is not Abstract is whether the patent claim recites a specific, concrete instance or application.  Specific, concrete applications or specific instances are NOT abstract, per the definition of abstract by Merriam-Webster and Oxford Dictionary (see above).

 Examples of Abstract ideas / Concepts and Examples of NOT Abstract Ideas

• Poetry is abstract, a poem (a concrete example or instance) is NOT abstract (Merriam-Webster).
• Gaming or the idea of playing games is abstract, but performing the concrete, discrete steps of a game, following a set of rules (i.e. a concrete example or embodiment of a specific game) is NOT abstract (as a poem is the non-abstract embodiment of the abstract idea/concept of a poem.  (see e.g. Merriam-Webster).
• Patent claims only reciting fundamental economic principles are abstract in view of Alice Corp. but claims reciting specific instances of a "new" financial transaction may be not abstract.
• Other NOT abstract examples are specific embodiments and concrete, specific instances including working examples which incorporate and form an invention.

Step 2 Guidance: (determining whether a claim, directed to LNA, recites an application of the LNA)

• Examples of applications of an LNA patent eligible under § 101 include computer code or software (operable on a computer) which is directed to improving / enhancing the function of a computer including, but not limited to...

1. database management
2. user interface
3. optimization of computer searching
4. updating user profiles
5. data compression,
6. biometric identification, and
7. encryption.

• Other examples of applications of an LNA patent eligible under § 101 include methods or systems performing steps in a game, following a defined, claimed rule set, producing a determined claimed result, e.g. winners and losers, using the established, claimed rule set. 

 For more background information of the Alice Corp. v. CLS Bank Int’l, please see our other articles:

1. U.S. Patent Examining Corps Sending Computer-implemented Method and System Patent Applications to Apocryphal § 101 Death Panel
2. EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection 
3. US Supreme Court Finds Computer Implemented Method and System Claims Directed to “Fundamental Economic Practice” is a patent-ineligible Abstract Idea
4. Eyewitness Insights on Arguments Heard by the U.S. Supreme Court on the Patentability of Computer Implemented Methods
5. “Déjà vu all over again…

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

U.S. Patent Examining Corps Sending Computer-implemented Method and System Patent Applications to Apocryphal § 101 Death Panel

Many U.S. Examiners (e.g. Examiners in Art Unit 3600) feel obligated to now reject computer-implemented methods and systems as failing to meet the 35 U.S.C. § 101 (patent eligibility subject matter requirement) in view of the U.S. Supreme Court decision in Alice Corp. v. CLS Bank Int’l.  For example, U.S. Patent Office Art Unit 3600 has assembled a panel of examiners to review pending computer-implemented method and system patent applications to determine whether their patent claims raise patent ineligibility issues under § 101 in view of  Alice Corp.  Citing the "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS Bank" (hereinafter "Preliminary Instructions") issued June 25, 2014, many Examiners are now asserting that claims which previously would have met the subject matter patent eligibility requirements under § 101, now fail Alice Corp's two-step test for patent eligibility.  The Examiners' rational is that computer-implemented method claims are directed to an "abstract idea" (e.g. "organizing human activities") and the computer-implemented "abstract idea" does not improving another technology or improving the function of the computer itself.  

The two step test articulated in Alice Corp is:

Step 1: Is the patent claim directed to one of the three patent ineligible concepts of Laws of Nature, Natural Phenomena or an Abstract Idea, (“LNA”)?  If no, then the patent claim does not raise a § 101 issue.  If yes, then step 2.

Step 2: If the claim is directed to a LNA, does the claim put meaningful limitations on the LNA and/or apply the LNA in a way that limits the LNA, e.g. does the patent claim recites a meaningful application of the LNA so that the claim is not merely the LNA performed in a computer environment,  and thereby claims less than the LNA, itself?

Under Step 1, the Preliminary Instructions, provides a non-exhaustive list of "abstract ideas" including fundamental economic practices, certain methods of organizing human activities, an idea of itself, and mathematical relationships/formulas.

Under Step 2, the "Preliminary Instructions" provides a non-exhaustive, non-exclusive, non-limiting list of examples of how a computer-implemented "abstract idea" can be patent eligible including improving another technology, improving the function of the computer itself, and putting a meaningful limitation on the abstract idea to a particular technical environment.

Based on multiple personal examples, some Examiners feel that they must reject patent claims based on the "Preliminary Instructions" forcing them to find that the subject "method" (implemented via a computer) is an organizing human activity, thus satisfying Step 1, and then move on to Step 2.  Under Step 2, the Examiners then assert that the "Preliminary Instructions" require the "abstract claims" to be computer-implemented to improve another technology or the function of the computer itself in order to find the claim patent eligible under § 101.

The apparent trend of the Examiners to reject computer-implemented claims as failing to meet the requirements of § 101 in view of Alice Corp. v. CLS Bank Int’l is not surprising.  Post-Bilski (machine or transformation criteria is one test for patent eligibility) but Pre-Alice Corp, many Examiners required some recitation of a physical computer or processor in many software and business method claims in order to find the method claims were patent eligible under §101.  Essentially, Examiners would assume that a software method claim would fail Step 1, i.e. the method was abstract, a law of nature or natural phenomena.  But, if the Examiners determined that the software method claim was sufficiently computer-implemented, the Examiners would allow the claim under § 101.  In this way, Examiners never had to deal with determining whether the underlining software method was an "abstract idea".  

Under Bilski and the US Patent Office prior examination guidelines, computer implementation of a method and a computer system performing the method, in most cases, were considered patent eligible under § 101.  Alice Corp. has changed this calculus.  Under Alice Corp, mere computer implementation of a method (e.g. software) deemed "abstract"/"an abstract idea" is not sufficient to satisfy §101.  Unfortunately, Alice Corps', 'I know an abstract idea when I see it' analysis of a patent claim and failure to define an "abstract idea" does not provide the Examining corps much advice on a proper test to use to determine when a method is directed to an abstract idea.  

            For more background information of the Alice Corp. v. CLS Bank Int’l, please see our other articles/posts:

1. EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection
2. “Supreme Court Finds Computer Implemented Method and System Claims patent-ineligible as directed to the abstract idea of a "Fundamental Economic Practice."
3.  “Eyewitness Insights on Arguments Heard by the U.S. Supreme Court on the Patentability of Computer Implemented Methods.”
4. OP-IP blog post, “Déjà vu all over again…

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

Supreme Court says, "'No, You CANNOT Hear Me Now!' Let Alone Search my Cellphone Unless you get a Warrant" in RILEY v. CALIFORNIA

An unanimous U.S. Supreme Court determined that police officers must get a warrant to search a suspect's cellphone, absent an exigent circumstance.  The Court, taking Riley v. Cal  and U.S. v. Wurie together, found that officers searches of suspects' respective cellphones, without a warrant violated the suspects' Fourth Amendment Constitutional rights against "unreasonable searches and seizures."

I know what most regulars to OP-IP are thinking; what does this have to do with intellectual property law and technology and more importantly, what this guy know about criminal law and/or constitutional law?  Although I may not be a criminal defense attorney or prosecutor, and I did not even stay at a Holiday Inn Express last night, I did take Criminal Procedure with Susan W. Brenner and Constitution Law with the legendary Allen Sultan (the virtual Forrest Gump of law professors) at the University of Dayton School of Law.  And, I interned at the City of Dayton Prosecutor's Office the summer after my first year of law school.  Clearly, I am eminently qualified to speak on this topic.  More importantly, based on my association with the International Technology Law Association (ITechLaw), I was asked by the National Newspaper Publishers Association (NNPA) (also known as the Black Press of America) to opine on these Supreme Court decisions for one of its upcoming articles.  Accordingly, since I was already familiar with these cases, I decided to write about them here.


So, why did the U.S. Supreme Court determine that officers must first secure a search warrant before looking through a suspect's cellphone?  The Court first acknowledged that the Fourth Amendment gives us the right against unreasonable searches and seizures and emphasized that the "ultimate touchstone" of the Fourth Amendment is "reasonableness" of the search.  Then, the Court looked to what was being searched, namely modern cellphones, including smart phones, such as an Apple iPhone 5S (shown above).  The Court found that the pervasiveness of cellphone use, their immense computing power and voluminous amounts of data (including personal information) that is stored in their 16 gig up to 64 gig all weigh against the reasonableness in allowing searches without a warrant.  Further, the Court recognized that many smart phones are linked to cloud storage services meaning that a search may include even more information.  Taken as a whole, the Court found the warrantless search to be unreasonable.

The Court dismissed the government's position for why it should not need to seek a warrant first, namely that evidence on the smart phone could be permanently lost if the smart phone's data could be remotely wiped or the locked-down.  The Court address these concerns by saying that a smart phone could be preserved from remote wiping by turning the phone off or using technology to block remote wiping and lock-down wireless signals.

Finally, the Court said that if there is a real concern that evidence might be lost, a warrantless search would be permitted under one of the exigent circumstance exceptions.

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

Supreme Court finds Aereo's Emerging Online Streaming Technology Hits Copyright Infringement Bullseye

The U.S. Supreme Court ruled that Aereo infringes over-the-air broadcasters' copyrights through Aereo's unauthorized rebroadcast of the broadcasters' content, rejecting Aereo's argument that its ingenious technology is in full compliance with the U.S. Copyright laws (ABC et al. v. Aereo). Aereo's technology includes individual, dime-size antennae, one for each subscriber to its service, from which Aereo streams over-the-air broadcast television programs to its subscribers. The U.S. Supreme Court determined that Aereo's streaming content (i.e. transmission) is a "public performance" in violation of the broadcasters' exclusive rights. 


Aereo had contented that (1) it does not control what programs are transmitted so "Aereo", itself does not "perform" anything.  Further, Aereo had contented that its transmission was not a "public performance" since a single individual receives a single transmission of content, and thus, each transmission is "private" and not public.  Aereo had analogized its service to a modern version of an old school rabbit ears antenna connected to a television, but instead of rabbit ears, it uses a single dime size antenna and instead of
copper wires, it uses the Internet.

The broadcasters contend that Aereo's service is no different than cable service providers and therefore, should be governed by the same rules that applies to them, namely, Aereo must pay licensing fees to re-broadcast the content or be subject to copyright infringement. 

The Supreme Court agreed with the broadcasters and disagreed with Aereo's two contentions.  Looking at the intent, purpose and history of the U.S. Copyright Act, and § 111, in particular, (provisions for compulsory licensing of community antenna television (CATV)), the Court found that "an entity that engages in actives like Aereo's performs."  The Court also found that the performance was public, by not recognizing a difference between (a) multiple, single transmissions to respective individuals and (b) a single transmission to multiple individuals.
 
For a more in-depth analysis of the Aereo decision, please see the article entitled, "Slings and Aereos of Outrageous Fortune: Supreme Court Rules that Aereo Infringes by Alexandra MacKay and Mari-Elise Taube, of Stites & Harbison, PLLC, as well as future posts here, at OP-IP.

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com