Intellectual Property Directions

In “Why Can’t the English [teach their children how to speak]?” Henry Higgins observes that the French don’t care what they say “as long as they pronounce it properly”. So too, when it comes to copyrights it seems it doesn’t matter if the content has any value… as long as you use your own words. No matter that the works in question “exemplify the sorts of training programs that serve as fodder for sardonic workplace humor that has given rise to the popular television show The Office and the movie Office Space. They are aggressively vapid — hundreds of pages filled with generalizations, platitudes, and observations of the obvious.”, they still deserve copyright protection.

In a recent court case that might best be called a marketing Pyrrhic victory, the consultants at Situation Management Systems overturned their earlier loss in a copyright battle to protect their “aggressively vapid” but copyrighted training manuals. In a nutshell, two former employees set up a competing consulting business for which they produced 3 training manuals, running to hundreds of pages of copy, in a matter of weeks. Not surprisingly the manuals bore certain similarities to the SMS’s manuals - after all, these employees had worked on the originals.

In the original decision, the judge apparently misapplied two key infringement considerations when he dismissed SMS’s suit. But in doing so he lambasted the quality of the material in the manuals, pointing out what many engineers I know already feel about consultants - that consultants often provide cookie cutter solutions that include nothing actionable.

The Appeals Court clarified the tests for what material is subject to copyrighting and what constitutes infringement. First, the material you want to copyright must be original to you. But original in this context only means that you did not copy the tangible expression of the material from other sources. You are perfectly free to see a photograph of Hancock tower from across the Charles River and hike over to Cambridge to capture a similar image. Artistically unoriginal, copyrightably original.

Second, while a process or idea is NOT copyrightable, the expression of the idea or process is. In the present case, for example, the process (or steps) that a individual can take to gain consensus for a new idea within an organization is not, per se, subject to copyright, but the way you describe those steps, the words you use, certainly are. The “business methods patent” controversy at least in part comes about because of this copyright limitation - but let’s not go there now.

Because the judge in the original case erroneously threw out most of SMS’s material as not subject to copyright before ruling on infringement, the Appeals Court has overturned his non-infringement decision and sent the case back down.

SMS is now in the situation of going back to court to say, like Henry Higgins’s French, “our manuals may be filled with platitudes… but the expression of those platitudes is ours alone.” Even if they win an infringement ruling this time around I don’t think any of their marketing materials are going to point to this victory.

Sheri Qualters reports in the National Law Journal on Monday that Judge Nancy Gertner dismissed defendant Joel Tenenbaum’s counterclaim argument that the record industry’s lawsuits to stop parties downloading and distributing copyrighted works is an “abuse of process”.

Tenenbaum’s argument, apparently, was that the RIAA campaign is focused at students and other young people who cannot afford attorneys. In particular, of course, Tenenbaum feels cases like his are using a sledgehammer to swat flies in order to strike fear in whole population of individuals unable to defend themselves.

Unfortunately for Tenenbaum, the judge is reported to have stated: “Abuse of process, as the cause of action is defined, does not turn on the identity of the defendants, their ability to hire an attorney, nor their inclination to settle the claims against them.” …  ”Congress has handed the Plaintiffs a massive hammer to combat copyright infringement, and they have chosen to use it. That choice, whether wise or unwise, does not amount to an abuse of process.

While there are many problems with our current patent system, one area that I would like changed is what types of processes qualify as patentable subject matter. As we know, the patentability of software and business methods is fraught with controversy these days. I’d like to throw what I call end-user methods into the mix as well.

My inclination is to look at the purported purpose of the patent system – to reward inventors who help improve society by sharing their inventions – and see which types of processes/methods achieve that purpose. Although it’s not important in this “if I were King” exercise, I like to think this approach harkens back to the Constitutional underpinnings of our patent system, where it is written that Congress can reward inventors for the purpose of “promot[ing] the progress of science and the useful arts”.

Note that the Constitution doesn’t say anything about promoting better business decisions or controlling the actions of individuals who can, with their own heads and hands, engage in an activity.
So how do software, business methods, and end-user methods fit in?

Software: When held up to the template of “Science and the useful arts” clearly some software qualifies and some does not, just as some hardware is patentable and some is not. Thus, I put software into the patentable subject matter category and leave to the examination process what happens to individual applications.

Business Methods: To me, the idea of a “business method” patent is an abhorrence. Transacting business better, faster, cheaper, or whatever is not beneficial to society; it only helps the businessperson make more money. One-click checkout, calculating hedge fund portfolio mixes, etc. are not science nor are they part of the “useful arts” (again, keeping in mind that I am king).  Note that the question isn’t “is this a process”, “is it implemented on a machine”, or “does it transform something”? No, the question is what is the purpose of the process/method; if the purpose is to transact business then it’s not patentable in my book.

End-User Methods: As I’ve discussed in an earlier blog, end-user methods are, generally, processes that don’t “make” anything and that are often performed by the person gaining the benefit of the performance (viz., the end user).  Many of the most laughable patents of recent years are for end-user methods: the method of exercising a cat with a laser pointer and the method of swinging on a swing come to mind.

While those examples are laughable, other end-user method patents cover more serious processes, such as medical procedures. Often these latter patents are a back door way for companies to secure markets for a medical device that otherwise did not qualify for a patent.

There is one more set of “method” claims that I would severely limit. These are methods of doing X, where X is really just using an apparatus, often already claimed in the patent. These method claims are, like the medical procedure patents mentioned above, nothing more than an attempt to provide patent protection for an apparatus that might not be otherwise protected.

Key tip-off words in these claims are “providing” (a such and such piece of equipment), “collecting/recording” (data or information), and “processing” (the data). Steps such as these in a method claim are simply ways to pad out what is really intended: “a method of doing X comprising the step of operating the apparatus described in the patent”. Since that one-step method claim would never be allowed, patent attorneys game the system by breaking the operation of the apparatus down into insignificant steps. They might as well include plugging it in.

That’s what I would do if I were King. How about you?

Lawyers and judges are not known for their comedic prowess, but when the appeal before the court involves the slippery topic of, uh, “sexual devices”, at least one honorable justice couldn’t hold back; the opinion in Ritchie v. Vast Resources is laced with tongue in cheek humor, if you’ll pardon the expression.

While I suggest you read the short opinion yourself, here are a few selected comments:

Both firms produce what the parties call “sex aids” but are colloquially referred to as “sex toys.” A more perspicuous term is “sexual devices,” by analogy to “medical devices.” The analogy lies in the fact that, like many medical devices (thermometers for example), what we are calling sexual devices are intended to be inserted into bodily orifices, albeit for a different purpose.

The patent claims a “sexual aid…fabricated of a generally lubricious glass-based material” [...] By “lubricious”—a word whose primary meaning, appropriate for a sexual device, is “lecherous”—the patent means only “slippery,” which is the secondary meaning of the word.

Nevertheless, though the plaintiffs’ invention is useful (setting aside any qualms that one might have about sexual devices in general), it is not patentable if it would have been “obvious,” not of course to the average person but to a person having the relevant technical skills.

Jay Leno and David Letterman watch out - apparently there’s a judge with an eye for your job.