On October 7th, 2010 I gave a lecture to the University at Buffalo IEEE Chapter. Instead of talking about it, you can watch for yourself.

Not much has been happening in the courts and industry this week in IP Law, but it has been a busy week for me. There have been a number of freelance web design jobs coming my way that are proving to be a bit of a challenge. I'm happy to have some income coming in, but the big challenge will be juggling all the responsibilities. 

This past week I have had some work done on my shoulder. The bright side is that I should have full mobility for the upcoming ski season. The downside is that I only have one hand to type with! There's some good cases that I'm excited to write about, so expect some posts soon.

In the closing days of March, the US District Court for the Southern District of New York handed down a ruling that helps clear up the emerging area of genetic patents. Their solution? You can't have them. Composition claims on isolated DNA sequences and method claims on the use of those sequences for diagnosing breast and ovarian cancer fail to qualify as patentable subject matter under 35 U.S.C. 101.

The court, in good form, avoided the topic of First Amendment Law that the plaintiff alleged was breached when the USPTO granted a patent regarding two genes used for Breast Cancer screening. Judge Sweet was persuaded that an “isolated” gene is no different from a gene in its natural environment of the body.In Diamond v. Chakrabarty, the Court held that products of nature can be patentable if the inventor makes a change to that product of nature such that it becomes markedly different.

The Court found that DNA possesses unique characteristics that distinguish it from traditional chemical compounds that change readily when isolated and purified.   Those unique qualities, both structural and functional, are identifiable in DNA’s naturally occurring state and do not change into something markedly different when DNA is removed from the body, according to the Court. If that was the case, the DNA would serve the same utility for testing.

It should be noted that this is just the first court of impression and that a number of appeals will likely follow, however Judge Sweet made a good decision (his idea of writing a 156 page opinion however, is terrible). We toe a dangerous line when we try to patent certain portions of DNA. The DNA itself is naturally existing - we're born with it - perhaps not the exact copy but one similar enough to provide a similar function. The USPTO has granted patents before that isolated certain naturally existing compounds, but only because the invention took steps to transform and isolate this chemical into a pure form.

DNA inside the body, and DNA outside the body are exactly the same - nothing occurs that makes them markedly different. Not only was this decision sound patent law, but smart policy as well. To hold a lengthy monopoly on the very material that provides instructions to the human body seems offensive.

The ruling seems to have had a negligible result on the biotechnology market. One article from the New York Times stated:

But the industry is already moving to a period of somewhat less dependence on DNA patents for its sustenance. Diagnostic laboratories, for instance, are shifting from testing individual genes to testing multiple genes or even a person’s entire genome. When hundreds or thousands of genes are being tested at once, patents on each individual gene can become a hindrance to innovation rather than a spur. 

It seems that other industries are competing very well without the benefit of a patent.

There is thriving competition in areas like testing for mutations that cause cystic fibrosis or Huntington’s disease, even though no company has exclusivity. “It’s quite demonstrable that in the diagnostic area, one does not need gene patents in order to see robust development of these tests,” [Dr. Evans] said.

The cure for the whole industry (and our better health) might be to take two aspirin and call in the morning. It seems the industry can thrive and continue to enable generativity without the crutch of a DNA patents.

As for that call in the morning, lawyers are anxiously waiting upon the court to resolve In re Bilski (which Judge Sweet relied on heavily) to see how it will apply to this case.

Recently I had the opportunity to attend the University at Buffalo's annual Inventors and Entrepreneurs Reception. It was great to be a part of this event and to hear about all of the fascinating and useful patents, inventions and licensing agreements that the University has created this year.

It's refreshing to see that UB continues to create and innovate in such way that directly benefits society. What's interesting to note is the rather high success rate of the University's Tech Transfer Office (STOR) of converting disclosures into licensed patents. We estimate that over half of the disclosures that are pursued blossom into a profitable venture. Compare that to the national average of 2-3% and you can see the high quality of work that is performed in house.

Here are a few links to the event:
http://galleries.buffalonews.com/photo.php?gname=gallery_1268705109.txt&item=9
http://www.wivb.com/dpp/news/education/Inventors-and-entrepreneurs-gather-at-UB

I have been very busy lately with finals, the holidays and...skiing but I wanted to share an article that Sun/Oracle wrote about the School of Dental Medicine that highlights what I do during the week.

http://www.sun.com/customers/software/sdm_buffalo.xml

Working on this project has been a blast and it's nice to know that technology is actively increasing the health of Western New York.

If there's one thing that any good patent lawyer should know about, it's the upcoming Supreme Court review of In re Bilski. Last week, the Supreme Court heard oral arguments on the case (Bilski v. Kappos, Fed. Cir., No. 2008-964, 11/9/09.) and they had some interesting things to say.

Bilski Before
But let's step back for a bit and figure out what In re Bilski is all about. The Bilski patent application involves a business method for hedging risks in commodity trading. Business method patents (and likewise software patents) have always been on thin ice as far as eligibility goes. Legal theorists often struggle to explain why business methods should receive patent protection, essentially since they are discovered or mathematical in nature. However, the door was blown open with the resolution of State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). In re Bilski has, so far, has had a chilling effect such patents and reiterated the "machine-or-transformation test", but fell short of categorically denying software and business method patents.

The machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies to be considered for patenting only if it (1) is implemented with a particular machine, that is, one specifically devised and adapted to carry out the process in a way that is not conventional and is not trivial; or else (2) transforms an article from one thing or state to another. On the other hand, the court refused to adopt a test that barred business methods, under that rubric, from patent-eligibility. The court noted that while the machine-or-transformation test was the applicable test,  but stated that there could be cases where a claim that fails the machine-or-transformation test is nonetheless patent-eligible subject matter. The court also stated (foreshadowed?) that future developments may alter the standing or the application of the test.

Bilski Now
Although oral arguments are hardly indicative of the stance the court might take, they shed some interesting light on the proceedings. From reading the transcripts, it seems that the justices questioned the basic justifications of providing a business method patent like Bilski's. In fact, Justice Ginsburg asked about an estate plan, about a way of teaching antitrust law, a method of resisting corporate takeover,  tax avoidance methods and if they should be granted patents. (The oral arguments are a fascinating read, see here for more detail: http://www.aipla.org/Content/ContentGroups/About_AIPLA1/AIPLA_Reports/20098/SCtOralArg.pdf). Justice Sotomayor was notably vocal about the social justification of these patents and asked how they would be expected to draw the line between Bilski's application and one for a method on speed dating.

Still, the justices left a lot of wiggle room open in their questions, and almost seemed to get some of the core issues confused (after all, these men and women don't see patent cases often). Justice Roberts asked if the State Street patent would pass the Federal Circuit’s machine or transformation test.  Stewart tried to explain that the State Street patent was directed to a machine rather than a process, and thus the en banc Bilski test would not apply. But the Justices appeared to confuse the State Street “means plus function” machine claim with a claim to a process implemented by a machine.  Justice Roberts persisted in his questions about the significance of the machine in the process, asking if the use of a simple calculator could convert a process from eligible to ineligible.

At this point it seems that the justices agree with the idea that Bilski's application is not patentable, but are struggling with where to draw the line and how to interpret the Constitution's Article I, Section 8, Clause 8. It will be interesting to see what the Court decides on this case and believe me when I say the whole world is watching. Thousands of patents could be rendered invalid by this decision leaving owners with a nice (and now worthless) piece of paper. But hey, at least their methods will still work - and they just might be able to work for everyone.

I would have never guessed that people actually bought Ringtones (how hard is it to just put an mp3 on your phone?), but Juniper Research claimed that the market at one point was a $1 billion industry. Yes, $1 billion dollars worth of loud, low fidelity noise that alerts a user for an incoming phone call and is supposed to be silenced as soon as possible.

Anyways, with a new and profitable market emerging it was only a matter of time before the hemorrhaging recording industry tried to grab a share of their business. Their argument? Transmitting these Ringtones to a mobile phone constituted a public performance, just like transmitting a song through radio waves to multiple receivers does.

It's really not a bad argument, but it immediately falls apart if you've ever used a mobile phone and a radio. The court in In re Application of Cellco Partnership, d/b/a/ Verizon Wireless agrees.

The issue does not involve the conventional meaning of “public performance” contained the statute’s first definition, but rather second definition of the term:

to transmit or otherwise communicate a performance … by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

The court then reasoned that when a user downloaded a Ringtone, the coded transmission is transmitted to a single phone, not all of them. A more interesting question might be what happens when a Ringtone is played in public, say during that movie I payed way too much money to see in the theatre. Wouldn't this constitute a public performance? Who should be liable for the royalties there? The owner of the phone, the seller of the Ringtone, the caller for causing the ringtone to be played? 

At this point, I would argue for a fair use exception, that the copyrighted material has been truncated (both in quality and length) and liability should not be attached. Until then, lets be satisfied with a more...sophisticated use of these Ringtones.

Today's post just goes to show how pervasive Intellectual Property Law has become in our culture.

The Sporting News - Superfans Can Count as Celebrities?

The right of publicity is generally defined as an individual's right to control and profit from the commercial use of his/her name, likeness and persona, which shall be referred to in this article as the "individual's identity". Protecting the individual from the loss of commercial value resulting from the unauthorized appropriation of an individual's identity for commercial purposes is the principle purpose of this body of law.

Video games have come a long way from the days of Tecmo Bowl (Image Courtesy of Kotaku)

Through the past few weeks I've been formatting submitted articles for the Buffalo Intellectual Property Law Journal. After having finished with the drafts, I can comfortably say that the Executive Publications Editor position is:

1. The most difficult and time consuming position on the journal
2. The quality gatekeeper for the final product
3. Incredibly rewarding and reveals how to write a good IP article

What makes the job so difficult is the highly technical nature that Intellectual Property articles must explain. Working as an engineer, and teaching a course on Technical Communications, I fully understand the difficulty of translating technical jargon and data into prose. All too often, authors simply try too hard and over complicate an issue that could best be described in a graph or figure.

The best articles think outside the "Law Journal" box and use non-text to clarify their points.

Of course, this makes my job that much more difficult. Pictures, graphs and charts are rare in legal journals (although I did use the AIPLA Quarterly Journal as an example). Pleasantly, I have the lattitude to format these items in such a way to make it most accessible to the reader.

As an author, I need to take more risks with the way I present information. Digital distribution allows my document to contain hyperlinks to audio, video and supporting information. A picture can really be worth a thousand words, and takes only a fraction of the time to digest.

Now, time to work on that article of my own...