Tuesday, January 10, 2017

BJHS Special Issue on Patents

The December 2016 issue of the British Journal for the History of Science is a special issue titled Owning Health: Medicine and Anglo-American Patent Cultures, and reading through it has had the odd effect of making me simultaneously more disgusted with, and hopeful for, the U.S. patent system. The disgust is for the law as it is, as taking a historical view brings into sharp relief how inappropriate it is for cases like Association for Molecular Pathology v. Myriad Genetics, Mayo v. Prometheus and Alice v. CLS to graft 19th century anti-patent sentiment onto 21st century research and development. The hope is for the law as it is likely to be, as history also illustrates that the pressures which lead people to seek patent protection are deep-rooted and can ultimately sway even the most vociferous patent critics.

As it happens, I'm a firm believer in the much less quotable corollary to the saying "those who do not learn history are doomed to repeat it" - i.e., "those who do not learn history make the rules, and so we are all doomed to repeat it, but that repetition can be made less onerous by learning history so you have some idea of what comes next." Accordingly, throughout the month I'll be blogging the individual articles from the December 2016 BJHS special issue, I'll be blogging the individual articles from the December 2016 special issue, addressing not only what they say about the past, but also what I think they can tell us about the future.

Wednesday, November 30, 2016

One thing website operators MUST do under new DMCA rule

My colleague Melissa Kern wrote an advisory about the copyright office's final rule regarding designating a DMCA agent. I thought it was important enough to repost (with permission) here.

Beginning December 1, 2016, the Copyright Office is rolling out its new online filing system for designating an agent to receive notices of copyright infringement. Website operators and other online service providers who store user content must submit new designated agent information electronically before the deadline to continue to take advantage of the Digital Millennium Copyright Act’s (DMCA’s) safe harbor from copyright infringement liability.

The new online filing system replaces the interim, paper-based system that had been used since the DMCA was first enacted in 1998. Under the old system, service providers could designate agents by sending in paper forms to the Copyright Office, which the Copyright Office then scanned and publicly posted in its directory of agents. Previous filings made under the old, paper-based system will continue to meet the DMCA’s requirements until they are phased out on December 31, 2017.

In connection with its new online filing system, the Copyright Office has issued its Final Rule relating to designating an agent with the Copyright Office. Highlights are as follows:

  • Beginning December 1, 2016, the Copyright Office will no longer accept paper agent designations. All new filings must be made electronically using the online filing system.
  • All service providers who have previously filed with the U.S. Copyright Office for DMCA safe-harbor protection under the old, paper-based system will have until December 31, 2017 to refile using the online filing system or lose the safe harbor protection. To do this, the service provider, or its designee, must establish an account that will be used to log into the system and register.
  • The DMCA filings will expire every three years, so they will need to be renewed. The Copyright Office’s new system will send out email reminders.
  • Filing fees are significantly lower ($6 per entity). There is no limit to the number of alternative names, URLs, service names, software names, and other commonly used names that can be listed on a service provider’s filing for this fee. All alternative names that the public would be likely to use to search for the service provider’s designated agent must be provided. However, separate legal entities must file separately and are not considered alternative names.
  • The designated agent does not have to be a natural person. Service providers now have the option to designate a specific person (e.g., Jane Doe), specific position or title of an individual (e.g., Copyright Manager), a department within the service provider’s organization or within a third-party entity (e.g., Copyright Compliance Department), or the service provider or third-party entity generally (e.g., ACME Takedown Service).
  • The designated agent’s physical mail address, telephone number and email address must be provided to the Copyright Office, and a designated agent may now provide a post office box to be displayed as its physical address. However, in a nod to technological obsolescence, a fax number is no longer required.

Melissa's original advisory can be found here.

Photo credit from Flikr.com.

Thursday, November 17, 2016

One Weird Trick to Beat Alice Rejections (Examiners HATE This)

Alice v. CLS Bank has had a tremendous impact on how the patent office treats applications for business method inventions. Indeed, since the Supreme Court’s decision in Alice, the allowance rate for class 705 (Data Processing: Financial, Business Practice, Management, or Cost/Price Determination) dropped from a pre-Alice high of 31.2% in 2013, to 23.5% in 2014, 9.4% in 2015, and 4.7% in 2016. In a previous article I explained that one way to try and deal with this was to avoid claims which described something which sounded like a business method, even if doing so meant that the claims had to be somewhat vague. However, that may not be possible in all cases, and so the question becomes what to do when you’ve already been pigeonholed as a business method and need to overcome a rejection based on Alice.

The allowance rate statistics for class 705 reflect how difficult it is for a patent applicant to overcome an Alice rejection, but a close reading of the Federal Circuit’s opinion in Enfish, LLC v. Microsoft Corporation suggests a way forward. In that case, the Federal Circuit reversed a determination that a claim was directed to ineligible subject matter because “the district court oversimplified the self-referential component of the claims and downplayed the invention’s benefits.” However, the “self-referential component” wasn’t explicitly recited in the claim in question. Instead, it was incorporated as part of the supporting structure for a “means for configuring” that the claim actually did recite. Given that how a claim’s limitations should be treated when determining what it is “directed to” is often a point of contention when analyzing subject matter eligibility, the fact that means + function limitations are required by statute to be construed as covering the supporting structure described in the specification and its equivalents could provide a useful tool for responding to Alice rejections.

So can using means + function language in this way actually overcome Alice rejections? Yes, but examiners hate it. In one example from my practice, we were able to overcome an Alice rejection using a pre-appeal brief by pointing out that the rejection relied on improperly interpreting a software implemented means + function limitation as simply “a computer configured to perform processes.” Unfortunately, rather than this leading to the application being allowed, the result was that prosecution was re-opened with an 89 page long office action that attacked the means + function language at length for (allegedly) being both indefinite and not properly supported. Ultimately, we were able to overcome those rejections as well, but it required submission of a declaration walking through the corresponding structure in the specification and explaining how it would be understood by one of ordinary skill in the art. I believe the fact that we got the rejections in the first place and had to make such a submission to overcome them reflects a significant level discomfort on the part of the examiner (which I believe is much less the exception than the rule within the PTO) with software implemented means plus function limitations. Nevertheless, despite the fact that it might require dealing with an unfamiliar mode of analysis, if you’re faced with an Alice rejection, means + function language might just be the one weird trick you need to get a patent.

For a version of this post with supporting citations, see here.

Thursday, October 27, 2016

What's happened to software inventions? Five unexpected facts that will change how you see patent eligibility.

The third quarter of 2016 was a busy one for the Federal Circuit when it comes to subject matter eligibility – with Federal Circuit issuing more opinions addressing Alice in 3Q2016 than it had in the preceding three calendar quarters combined. After such a flurry of activity, it seems reasonable to wonder what remains of what we thought we knew about subject matter eligibility, especially since there seems to be some controversy even within the Federal Circuit itself. However, after looking at the cases the Federal Circuit has decided since Alice, I concluded that there are at least five things we now know about subject matter eligibility, starting with…

5. The name of the game is no longer the claim
Judge Giles Rich (about whom more later) famously stated that “the name of the game is the claim.” While the accuracy of that aphorism may have been arguable in the past, it has been effectively abjured in the Federal Circuit’s subject matter eligibility jurisprudence. Regardless of the ultimate conclusion, the Federal Circuit has turned time and again to the remainder of the specification when evaluating eligibility. Of course, that’s not to say that the claims are completely irrelevant to the subject matter eligibility determination. The Federal Circuit still at least ostensibly considers claim language when applying § 101, and their recent decisions have illustrated that…

4. It’s better for a claim to be vague than to describe something that sounds familiar or like a business method
What do you get for describing an invention as one which bases the management of records on rules rather than one which uses rules in patient record management? The answer is ten times more likely to get a patent, since “policy, rule-based management of records, files and documents” is included in class 707 (database and file management or data structures) while “patient record management” is included in class 705 (financial, business practice, management, or cost/price determination), and as of writing, the allowance rates for those classes are, respectively, 42.1% and 4.7%. There’s a similar difference between describing an invention as a way for organizing data, and as a way of organizing a particular type of data that a judge is likely to be familiar with – i.e., pictures. The former type of description is arguably covered by the holding that a model for organizing data in a database isn’t an abstract idea, while the latter type of description would result in an invention being deemed ineligible because organizing a specific type of data which is likely to be familiar to a judge – i.e., pictures – is an abstract idea. This is a big change from the days when vague claims would have hurt the chances for a patent to be upheld or issued, but that’s not the only change that’s stemmed from our current subject matter eligibility jurisprudence because…

3. Subject matter eligibility is exorcising the ghost of Judge Rich
Until the current line of subject matter eligibility cases, the impact of Judge Giles Rich on the patent law was undeniable. He was one of the architects of the 1952 patent act, and authored the decisions which established that patent eligibility hinged on the presence of a “useful, concrete and tangible result” and formally ended the practice of treating business methods as per se unpatentable. However, the current subject matter eligibility cases are directly undoing Judge Rich’s legal changes. This is somewhat ironic, since during the oral arguments for Bilski v. Kappos, Justice Stevens professed to admire Judge Rich, and asked if he had written anything on what methods should be patentable. Nevertheless, current subject matter eligibility jurisprudence rejects Judge Rich’s subject matter eligibility decisions in State Street and Alappat, and the necessity of identifying an “inventive concept” to establish a claim’s eligibility has reintroduced an amorphous “invention” requirement that Judge Rich had specifically criticized and that the 1952 act had sought to eliminate. You might imagine that the courts wouldn’t be undoing the life’s work of a hugely influential and well-respected figure in patent law unless there was a good reason, but you’d be wrong because …

2. There is no reason for what we’re doing
In Alice, the Supreme Court explained that the reason for treating certain subject matter as ineligible is to avoid pre-emption. However, current subject matter eligibility jurisprudence is clearly not limited to only invalidating claims where necessary to avoid preemption. Some opinions have also hinted at policy-based reasons for aggressively policing subject matter eligibility – e.g., that certain classes of patents, like those claiming the use of a computer to perform well-known business methods, don’t protect real innovation and therefore should be eliminated – which may be closer to the truth for why the law has developed as it has. However, other rules – such as the rule that simply performing a known business process in a particular commonplace technical environment is obvious – were already in place before we started focusing on eligibility, and could have been used to eliminate non-innovative patents without having to create an entirely new body subject matter eligibility law. Of course, it’s possible that some opinions’ inclusion of dismissive references to the “draftsman’s art,” or warning against the “in terrorem power of patent trolls” may reflect a distrust of patent attorneys and a desire to protect innovators from the cost and difficulty of dealing with them. However, if we’re trying to do is protect innovators, aggressively policing subject matter eligibility makes no sense because …

1. We’ve been down this road before, and the end result will be to transfer resources to attorneys while making patents more opaque
This isn’t the first time courts have tried to issue new rules to rein in what they see as an out of control patent system. Claim construction is treated as a matter of law because the Federal Circuit saw juries as being unpredictable and wanted to minimize their role in patent cases as a matter of policy. The result was to increase expense to patent litigants by making claim construction into a separate trial within a trial in virtually all cases, and to make patents more difficult/expensive to prepare and interpret by spawning rules such as that saying what the invention is or what features are important could result in narrow protection. Indeed, this isn’t even the first time aggressive policing of subject matter eligibility has been used to try and limit the patenting of software. In the 1960s, the patent office strongly opposed the patenting of software, and issued guidance that computer programming was unpatentable. The result was that the nascent software industry didn’t stop trying to get patents, but instead started describing their patents as being directed to something other than software. Is there any evidence that the current aggressive policing of subject matter eligibility will have similar effects? Well, we already know that, like treating claim construction as a matter of law, it’s generated a new kind of trial within a trial – the subject matter eligibility determination – which patent litigants have to go through and pay their attorneys to handle. We also know that aggressive policing of subject matter eligibility hasn’t stopped the number of patent application filings from increasing year over year for each of the past five years, but that it has resulted in recommendations to omit features – like a high-level summary or a discussion of economic benefits – that could otherwise make patents easier to read and understand. While we can’t be certain that history will repeat itself, if you think that policing subject matter eligibility will necessarily make the patent system easier, cheaper, or more efficient, or even that policing subject matter eligibility makes sense when evaluated on its own terms, may want to consider this history as a reason to change how they think of subject matter eligibility. For a version of this article with supporting citations, see here.

Tuesday, June 28, 2011

Can't Prohibit Sale of Violent Games

In this 7-2 opinion, the Supreme Court has struck down a California ban on sales of violent video games to minors. The result isn't at all surprising, though I'm guessing it will come as a shock to people like Roger "video games can never be art" Ebert. A few choice passages:

“‘From 1791 to the present,’ . . . the First Amendment has ‘permitted restrictions upon the content of speech in a few limited areas,’ and has never ‘include[d] a freedom to disregard these traditional limitations.’” United States v. Stevens, 559 U. S. ___, ___ (2010) (slip op., at 5) (quoting R. A. V. v. St. Paul, 505 U. S. 377, 382–383 (1992)). These limited areas—such as obscenity, Roth v. United States, 354 U. S. 476, 483 (1957), incitement, Brandenburg v. Ohio, 395 U. S. 444, 447–449 (1969) (per curiam), and fighting words, Chaplinsky v. New Hampshire, 315 U. S. 568, 572 (1942)—represent “well-defined and narrowly limited classes of speech, the prevention and punishment of which have never been thought to raise any Constitutional problem,” id., at 571–572.

NOTE: the above passage doesn't break any new ground. I just love it when the Supreme Court explains that the obscenity exception is well-defined and narrowly limited.

JUSTICE ALITO has done considerable independent research to identify, see post, at 14–15, nn. 13–18, video games in which “the violence is astounding,” post, at 14.

Yeah, researching...that's what he was doing...researching...

[in a footnote addressing studies purporting to link violent behavior and violent video games] 7One study, for example, found that children who had just finished playing violent video games were more likely to fill in the blank letter in “explo_e” with a “d” (so that it reads “explode”) than with an “r” (“explore”). App. 496, 506 (internal quotation marks omitted). The prevention of this phenomenon, which might have been anticipated with common sense, is not a compelling state interest.

Finally, another choice Scalia quote eviscerating California's purported rationale for the law:

California claims that the Act is justified in aid of pa-rental authority: By requiring that the purchase of violent video games can be made only by adults, the Act ensures that parents can decide what games are appropriate. At the outset, we note our doubts that punishing third partiesfor conveying protected speech to children just in casetheir parents disapprove of that speech is a proper gov-ernmental means of aiding parental authority. Accepting that position would largely vitiate the rule that “only inrelatively narrow and well-defined circumstances may government bar public dissemination of protected materi-als to [minors].” Erznoznik, 422 U. S., at 212–213.

All in all, a decision I agree with, and a nice way to end the term.

Friday, April 22, 2011

Root Cause of Privacy Furor: EULAs

People really care about the fact that their smartphones gather location data. It reached the frontpage of MSNBC.com with this article. It also inspired a flood of righteous indignation from Washington. From the article:

Why were Apple consumers never affirmatively informed of the collection and retention of their location data in this manner? Why did Apple not seek affirmative consent before doing so?

-Al Franken (D-Minn)

Collecting, storing and disclosing a consumer's location for commercial purposes without their express permission is unacceptable and would violate current law. That's why I am requesting responses to these questions to better understand Apple’s data collection and storage policies to make certain sensitive information can't be left behind for others to follow.

-Edward Markey (D-Mass)

It seems surprising that a large company like Apple wouldn't have tried to get consent from users to collect this location information, especially since it's so trivial to include it in the EULA which everyone agrees to anyway.

Oh, wait... (from the iPhone EULA, updated 5/8/09, available here)

(b) Location Data. Apple and its partners and licensees may provide certain services through your iPhone that rely upon location information. To provide these services, where available, Apple and its partners and licensees may transmit, collect, maintain, process and use your location data, including the real-time geographic location of your iPhone. The location data collected by Apple is collected in a form that does not personally identify you and may be used by Apple and its partners and licensees to provide location-based products and services. By using any location-based services on your iPhone, you agree and consent to Apple's and its partners' and licensees' transmission, collection, maintenance, processing and use of your location data to provide such products and services. You may withdraw this consent at any time by not using the location-based features or by turning off the Location Services setting on your iPhone. Not using these features will not impact the non location-based functionality of your iPhone. When using third party applications or services on the iPhone that use or provide locaiton data, you are subject to and should review such third party's terms and privacy policy on use of location data by such third party applications or services.

(emphasis in original)

I wonder how many of those Senators read the EULA before pontificating about Apple not getting consent for collecting location data. I wonder how many consumers who have privacy concerns about their location actually read the EULA before agreeing to it. My guess is that the answer to both questions is none. That isn't to say that there isn't a real problem. After all, I think there is a big conflict between EULAs and privacy, and that that conflict is a matter of significant public concern.

But unless there's more to the story than is currently being reported, the problem isn't that people's privacy rights have been violated, it's that they were inadvertently thrown away.

Wednesday, April 13, 2011

Data privacy legislation introduced

Per Wired.com, Senators Kerry and McCain have proposed legislation that would give web users the right not to be tracked while on line (the text of the bill can be found here). While this sounds like a step forward for consumer privacy, the legislation has not been well received by privacy advocates. According to the article:

The ACLU and others would prefer what is being touted as a “universal opt-out” in which consumers could one-stop shop and end all tracking by using a national registry of sorts. The Federal Trade Commission suggested such legislation in December.

“Consumers need strong baseline safeguards to protect them from the sophisticated data profiling and targeting practices that are now rampant online and with mobile devices. We cannot support the bill at this time,” Consumer Watchdog, Center for Digital Democracy, Consumer Action Privacy Rights Clearinghouse and Privacy Times wrote McCain and Kerry on Tuesday.

While I have concerns about the proposed legislation, I don't know that I agree with the sentiments expressed by quoted advocacy organizations. True, the bill could do more for privacy. However, the U.S. has generally been slow to enact laws protecting privacy, so letting the perfect be the enemy of the good in this case doesn't seem to make sense. Also, the bill (at least as proposed) does do more than prevent tracking. For example, for example, section 101 requires the FTC to make rules requiring covered entities to establish security measures to protect the data they do collect and section 202(A)(4) requires the FTC to make rules enabling individuals to correct information stored about them. There are also provisions requiring covered entities to design their products with privacy in mind (section 103) and to minimize the data they collect (section 301). These are all potentially helpful provisions, and the fact that they weren't mentioned indicates to me that the bill might not be getting all the credit it deserves.

With that having been said, I do have two problems with the bill that (if anyone were interested in my opinion) would stop me from supporting it. First, as mentioned in the Wired article, it preempts potentially more stringent state laws (section 405). This is a significant problem, as states are generally well ahead of the federal government on privacy issues. Second, it specifically states that it does not create any kind of private right of action (section 406). This is also a significant issue, since giving people the right to sue would likely result in much more vigorous enforcement of the law than simply relying on the FTC.

The bottom line for me is that, while the legislation includes a number of privacy protective features, its incompatibility with stronger state laws, as well as its lack of a private right of action mean that, if passed, it probably wouldn't help (and might even hurt) consumer privacy rights.