Intellectual Property Directions

Crank up the music! Turn on the camcorder! And turn your kids loose on the dance floor! YouTube is safe again for you to post those simply adorable videos of your child stumbling his or her way through Purple Rain. Yes, Universal Music, the same company that made you afraid to go in the water with “Jaws” and set out to make YouTube a scary place too, has been given a second dope slap by the Electronic Freedom Foundation and District Court Judge Jeremy Fogel.

The case started a couple of years ago when Universal, trolling the internet, uncovered a significant violation of their copyright in a 29 second video of Stephanie Lenz’s baby “dancing” to a Prince song. Swinging into action immediately to fight this threat, Universal relied on the Digital Millennium Copyright Act to sent a take down order to YouTube.

Luckily the EFF took up Ms Lenz’s case. According to Zusha Elinson on Law.com,

The Electronic Frontier Foundation sued Universal on behalf of Lenz in 2008, arguing that the music company’s lawyers should have taken a moment to consider whether Lenz had a fair-use right to post the clip before firing off a takedown notice to YouTube. YouTube removed the video, but restored it six weeks later when Lenz filed a counternotice.

In the most recent action, Judge Fogel ruled that Ms Lenz can recover some level of damages. Quite reasonably, the EFF asked for damages to make real a deterrent for copyright holders who abuse the takedown process of the DMCA. Universal, of course, argued that Ms Lenz should only be allowed to recover financial damages caused by their overzealous application of copyright (which of course are essentially zero) rather than to receive compensation for the violation of her right to post the video. The judge agreed, writing;

Requiring a plaintiff who can make such a showing to demonstrate in addition not only that she suffered damages but also that those damages were economic and substantial would vitiate the deterrent effect of the statute.

Now we wait to see what damages are assessed. But in the meantime, it’s safe to go back in the water.

Since Valentine’s day is behind us, is it okay to speak of a relationship gone bad? A “divorce” that has ended up in patent court some 12 years after the patent issued? Can you really enforce a patent 12 years after the supposed infringement started or is this just a “lovers’ quarrel” taken too far?

Hassan Kunbargi started investigating the chemistry of cement at a graduate student in 1984. Edward Rice, owner of CTS Cement Manufacturing, became aware of Kunbargi’s work and sought an adjunct faculty position at UCLA so that he could serve as Kunbargi’s advisor. Rice hired Kunbargi to work at CTS in 1985. After that, both men worked for another company, Fibermesh.

In 1989, after demonstrating the invention disclosed in a patent application to Rice, something in the relationship apparentlyy turned sour and Kunbargi ceased working for Rice. In September 1990 the patent was allowed and Kunbargi received the ’556 patent, entitled “Very Early Setting High Strength Early Cement.”

Fast forward to 2002. Upon the issuance of his third patent, Kunargi sued Rice for, among other things, patent infringement and theft of trade secrets. This case bounced around the courts with motions on both sides being considered at one time or another. [including Kunbargi's motion to disqualify Rice's counsel, who had been listed on a power of attorney as entitled to prosecute a patent application on an invention by Rice and Kunbargi when they had both worked for Fibermesh!].

Among other defenses, Rice turned to the doctrine of laches - that is, the idea that if you fail to act within a reasonable period of time you lose your rights under the law. The concept, like most aspects of patent law, is an attempt to enforce fairness. If you believe someone is infringing your patent, it is considered unfair for you to wait until the other party has invested in the technology and built up a large business before enforcing your patent. The District Court agreed with Rice that 12 years was too long and declared the patent unenforcable against Rice in a summary judgement [viz., without a trial].

According to the court, Kunbargi should have known of his infringement claim because of his history of working on cement mixtures with, and then having a falling out with, Rice, and because of his prior affiliation with CTS. The court found that, because Kunbargi had demonstrated his invention to Rice before the ’556 patent issued, Kunbargi was on “inquiry notice” at the time the patent issued.

The appeals court (the CAFC) disagreed. It said:

CTS does not dispute that [Kunbargi] could not have tested CTS’s product for the presence of soluble anhydrite. Without access to CTS’s internal procedures, Kunbargi could not have investigated CTS’s methods to determine infringement. Even Kunbargi’s hiring of a private investigator led to no conclusive result that CTS’s products infringed the ’556 patent. An infringer does not escape liability merely by infringing in secret. [Kunbargi] could only have asserted infringement of the ’556 patent upon a reasonable belief that CTS infringed all of the limitations of the claims, including the limitation requiring soluble anhydrite.

The CAFC therefore reversed the summary judgement and sent the question of laches back for trial. The CAFC pointed out that, for laches to apply, the only time that counts is the time after the patent holder should have had a reasonable basis to believe infringement is taking place.

Keeping a low profile while you infringe, even if you are successful for many years, will not get you off the hook for infringement. And knowingly allowing someone to infringe in order to build up your settlement (or get revenge in a relationship gone bad) may leave you holding an empty purse.

We’ve all hear the expression that a lawyer who acts as his own counsel has a fool for a client; well apparently that applies to doctors as well. Dr. Richard Lister, a psychologist, “invented” a new method of playing golf and filed for a copyright on a manuscript describing the method (essentially allowing golfers to use a tee for all shots from the fairways or rough) on July 4, 1994 under the misapprehension that the copyrighted document would protect his invention. That was foolish mistake number 1. Since he used an attorney to file for the copyright I’m assuming he did not explain clearly why he wanted the copyright.

More than 2 years later (8/96), after getting clued in that a patent, not a copyright, is needed to protect an invention, he filed a patent application on this method of playing golf. This was foolish mistake number 2, since it was unlikely that the patent would ever issue and perhaps even more importantly it was unlikely that any organization would start running Tee Golf Tournaments, leaving him to enforce his patent by chasing individual golf foursomes around the course to see if they use tees on the fairways.

Unsurprisingly, Dr. Lister has been unsuccessful these past 13 years in getting a patent issued; nevertheless he continues to spend money pursuing his dream. By my count, foolish mistake number 3. There have been several rounds of rejections and two appeals to the Board of Patent Appeals. He has just won a Pyrrhic victory in the Court of Appeals for the Federal Circuit (CAFC) wherein the Court vacated the PTO’s latest (2003) rejection, issued on January 31, 2003, in which “the examiner rejected the only independent as anticipated by his own, copyrighted manuscript. In the examiner’s view, the manuscript was sufficiently publicly accessible to be a printed publication because an interested researcher would have been able to find it by searching the Copyright Office’s catalog by title.” Since the CAFC ruled in his favor on very narrow grounds, Dr Lister will now probably continue his windmill-tilting pursuit of his patent.

The decision teaches us some important lessons about prior publication of our inventions and the use of the provisional application process to avoid the pitfall Dr. Lister has apparently just avoided. The key logic behind the “prior publication” bar to getting a patent is “… that once an invention is in the public domain, it is no longer patentable by anyone.”, even the inventor. However, in order to qualify as a printed publication a reference “must have been sufficiently accessible to the public interested in the art.” A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”

Since “sufficiently”, “reasonable” and “interested” are subjective terms, each case must be considered individually and in context. In this case, Dr Lister’s manuscript was available to read in Washington but the Copyright office’s catalog is only searchable by author and firstfirst word of the title, so the CAFC ruled that one could not find this method of playing golf by searching on “advanced”, the first word of the manuscript’s title.

So what are some other examples?

• A thesis in a library, not yet cataloged or shelved is NOT accessible.
• A thesis in a library cataloged by student’s name and shelved is NOT accessible in a meaningful way.
• A document available at a single, perhaps distant location (viz., the copyright office)  IS accessible.
• A document (e.g., in a collection) available for perusal but not copying is available if the subject is easily understood.
• A document in a private, controlled collection is NOT accessible.
• A poster presentation at a conference is a prior publication if the conference has “interested” persons attending and the content of the poster is easily understood and remembered by viewers.
• A document is a prior publication even if it can be proven that no one actually looked at it.
• A purely oral presentation is almost certainly NOT a prior publication.
• Slides presented along with an oral presentation are a toss up (particularly with the ready availability of digital cameras).

The bottom line, of course, is that any material you are going to let out of your direct control may, as the Miranda warning goes, be used against you in a (patent) court. To avoid any question of prior publication, I advise people to file their documents or slides as a provisional application, understanding of course, that the ONLY “protection” this gives you is protection against a rejection based on prior public disclosure of whatever is in the document. Also, this meager protection is lost unless a regular application is filed within the year.

In my last post I mentioned how your patent attorney might be leaving time bombs in your patent application and used the example of inserting paraphrases of your claims as a summary description of your invention. Another example is the failure to check inventorship after amending claims during prosecution or when filing a continuation or continuation-in-part application.

The patent office  - well, really the court - is pretty picky about getting the proper inventors listed on the patent. Why? Because society believes that granting you a patent is giving you a valuable asset in exchange for revealing the secrets of your invention. If you weren’t an inventor, you shouldn’t be getting that valuable asset; if you left an inventor off, you are effectively stealing the asset from that inventor.

Determining who’s an inventor is often an overlooked step during final patent application preparation and prosecution. To be listed as an inventor you are supposed to have made an “inventive” contribution” to at least one claim. But that’s one claim as listed in the issued patent, not what you hoped to get when you filed! All of the claim “negotiation” that goes on between your attorney and the examiner can affect who is properly listed as an inventor. If your attorney doesn’t check back with you, just listen for the tick-tick-tick of a time bomb.

Things get worse when you file a continuation (or continuation-in-part) application. Many times on these applications you see the list of inventors repeated again and again, even years after the original filing. Such a list, particularly with a CIP (where new material has been added to support the new claims) should be a red flag to warn you of a possible hidden problem.

Note that a defective inventor list sometimes can be corrected if you show no ill-intent, but do you really want to get into that matter in the middle of an infringement suit? And that’s where it’s going to show up, or in a re-examination, since the patent examiner does NOT check inventorship; he or she only cares that the invention is patentable, not who invented it.