12:01 Tuesday

BPAI Reverses 101 Rejection... but...

Today's biggest 101 story isn't any patent that issued (though I was teased by U.S. Patent No. 7,526,446 to Algorithmics International on "System and methods for valuing and managing the risk of credit instrument portfolios" for things like credit default swaps.  They wisely filed only system claims, no methods, in 2002.  And is there even a market for these swaps anymore?)  Instead, we look to the BPAI's decision of Ex parte Duvaut.  [Since I expect Leigh Martinson will be covering this story more fully on his BPAI Watchdog blog, I'll just give the upshot without much commentary.]

Here's claim 1, rejected under 101 by the Examiner:

The first thing you notice..okay the SECOND thing you notice, after that blob of formula in the middle, is that this is a system claim, not a method.  But we know that examiners and the BPAI aren't reading Bilski / Nuijten / Comiskey so narrowly, and that system and Beauregard claims are no longer immune.

The BPAI did some interesting things here.  First, it read the "DSL communications system" of the preamble as limiting, since that gave life and meaning otherwise absent from the claim.  Second, it found that the specification gave structure to that system, so that it encompassed a statutory machine under 101.  Then it analyzed under Alappat whether the claim preempted the entire use of an abstract idea.  In concluding it did not, the Board said:

The recited communications system is a particular machine that transmits data on a digital subscriber line The claimed machine is, therefore, tailored to DSL applications. Moreover, the recited DSL communications system is programmed or configured to provide a PSD mask for spectral shaping a DBM mode downstream transmission defined by a specific equation (FF 2). Thus, the recited DSL communication system is not a general purpose computer but a particular or special purpose machine. See Alappat, 33 F.3d at 1545. When considering claim 1 as a whole, as Appellants argue (App. Br. 6 and 10), claim 1 recites more than a mathematical algorithm and is directed to a patent-eligible machine under 35 U.S.C. § 101. 

Who'da thunk it.  Looks like great stuff for practitioners arguing 101 rejections.

But not so fast.  The Board got slick and determined that this claim is a means-plus-function claim under 112/6, despite it not using typical "means for" language.  And the spec, said the Board, does not enable everything within the scope of the claim.  It is thus an improper "single means" claim, and invalid as not enabled under 112/1.  Ouch.  Additionally, the claim fails under the precedential Miyazaki decision since it contains "purely functional" language.  More ouch.

When you finish scratching your heads, answer this Hobson's choice: if you had your choice of rejections to fight, which would you choose: Non-statutory subject matter or enablement?

Core Competencies

I don't mean to single out IBM, really, but it's sometimes hard not to.  After all, when you are consistently the #1 patent filer, you're going to get noticed.  And when you appear to be the #1 filer of accelerated examination applications, your're going to get noticed by folks like me who look for those things.  So this one that came up today caught my eye, though not for 101 issues -- it appears to be quite, um, clean.

Instead, this patent reminded me of a sign in a pizza place near where I grew up that always gave us a chuckle: "Banks sell no pizza; We cash no checks." 

U.S. Patent No. 7,524,380 Energy efficient dishwashing Filed: July 31, 2008 Assignee: IBM 1. A method for controlling a dishwasher in a energy efficient manner, the method comprising: sensing weight, volume, and location of items disposed in each of a plurality of compartments of the dishwasher, said sensing being accomplished via a plurality sensors disposed in each of said plurality of compartments, wherein said sensing occurs prior to a start of a washing cycle and drying cycle, wherein said sensing further includes sensing at least one of electrical conductivity and transparency of a cleaning solution used in the dishwasher; communicating sensed data from said sensors to a controller; calculating a desired length of time for said washing cycle and said drying cycle based on said sensed data, and calculating a desirable amount of said cleaning solution to be used in each of said plurality of compartments based on said sensed data, said cleaning solution including at least water and detergent, wherein said calculating further includes calculating for a desired temperature, detergent, and detergent ratio of said cleaning solution based on said sensed data; implementing said washing cycle and said drying cycle for said length of said time, wherein a smaller sensing of said weight and said volume results in a shorter amount of time than would be spent based on a larger sensing of said weight and said volume; commanding said dishwasher to direct said amount of said water and said detergent to each compartment of said plurality of compartments, wherein any of said plurality of compartments sensed to include fewer or none of said items will receive less of said water and detergent than any of said plurality of compartments sensed to include more of said items; transmitting efficiency data from said controller to a medium viewable by a user, said efficiency data being based on said calculating, said implementing, said commanding, and said sensing of said weight, said volume, and said location of said items, wherein said transmitting includes suggesting movement of some of said items from one of said compartments to another of said compartments based on said sensing of said location of said items in said compartments, wherein said efficiency data includes a predicted cost for said implementing and said commanding; connecting said controller to an internal or external internet network and transmitting said efficiency data to a computing resource connected to said internet network, wherein said computing resource is said medium viewable by said user; minimizing usage of electrical energy and said water via said implementing, said commanding, and said transmitting; and  transmitting dishwasher control commands implemented by said user from said computing resource to said controller.

Commentary: Since when is IBM in the dishwasher business?  Kind of like Microsoft's recent agriculture patent, I suppose.  There was also a patent to erstwhile Lehman Brothers on a "Method and system for analyzing commuting routes" in 2007 that remarkably issued in under seven months (and with some of the least formal drawings ever -- see Fig. 6), but even that one appears to have been developed and used in-house for Lehman's employees. (Barclays owns the patent now. I hope this patent's traffic analysis performs better than Lehman's market analysis did.)  I somehow doubt that IBM's engineers were in the company kitchen eating lunch when they just decided to design a better dishwasher controller.  But I could be wrong.

Hard to know the stories behind these outliers, but I'd be curious.

The Sport of the Patent

It's finally breaking 70 degrees in Chicago today, and leading into a weekend, no less.  I expect many of us will be in the park, playing catch or just enjoying the weather.  But for those of you who just can't leave the patent world behind while you recreate, here's some food for thought.

We all know that baseball is America's pastime, and we all know that sports have become big business.  So let's ask: what sport has been the subject of the most patents?  A simple proxy is to search the USPTO database for all utility patents with titles containing the sport's name:

Interesting.  That's a "4" for Jai-alai, by the way. Tennis actually nudges out baseball (though including "softball" pushes it over).  And as of this week, Football and Basketball are tied with exactly 800 patents apiece.

But there's one sport missing from the chart above... hmm...:

Holy cow! 14,510 patents!  That's about 50% more than these other sports combined. Is golf really that much more popular in the marketplace than anything else?  Or does it have more technological underpinnings that allow for innovation?  Perhaps it's all those frisbee golf/disc golf patents. (Not.  There's 18). [4/25/09 UPDATE: These numbers are for utility patents only.  There are an additional 4,900 design patents for golf.]

And what about over time?  If we track the number of golf patents issued each year, we see an unsurprising correlation:

Go figure.  There are a couple of noteworthy points.  First, as you'd expect, tracking all patents issued over time also roughly matches the stock market and the economy. 

But Golf seems to be an even tighter fit:

In other words, starting in around 1983, golf "patent market share" grew significantly and.. could it possibly be... actually led Wall Street by a few years??  That would seem strange, considering that these are patent issuances, not application filings.. and you'd think there would be more interest in golf after the market goes up, not before. If anything there should be a lag effect.

I don't consider myself a statistician, and these results are less than scientific.  But I'd be intereted in your theories.

So please think about it as you hit the tees or shoot hoops or (my fave) watch the Stanley Cup playoffs this weekend, and let me know what you come up with.  And if you'd like to play with the underlying data yourself, shoot me a note and I'll pass it along.

[UPDATE: 4/26/2009 - Just found this nice blog: http://www.golf-patents.com/ about Golf IP issues, by patent attorney David Dawsey.  Now how many other sports have their own patent blog?

[UPDATE 2: 4/26/2009 - There another one: http://www.patentlygolf.com/ ]

Jaywalking across the 101

Jay Walker knows patents.  The Connecticut entrepreneur, best known for creating priceline.com, is listed as an inventor on over 350 issued patents, and a few hundred more published applications.  A sizable portion of these are squarely within Class 705; if you actively prosecute e-commerce business method patents, there's a good chance one of his applications or patents has been cited as prior art against you.  Walker created an invention think-tank company, Walker Digital, to "incubate" these ideas and businesses based on them.  Apparently those businesses, and a couple hundred million dollars in licensing deals, have done well enough for Walker to amass a small fortune, including a pretty amazing library in his home.

Walker has been in the business method game from the start, and for that he's been the subject of controversy.  He was outspoken with excitement a decade ago after the State Street and AT&T decisions, and he has written the USPTO with his opinions on ways to improve the patent process.  Some have speculated as to how much value the Walker Digital portfolio may have lost in light of the Bilski decision last fall.  The extent to which this may be true is not clear, though priceline.com apparently felt it necessary to mention the case in the "Risks" section of its recently-filed 10-K.

What we do know, however, is that Walker Digital today was issued a patent that has a story worth telling.

Key terms are in bold.

U.S. Patent No. 7,523,045  Method and apparatus for a cryptographically assisted commercial network system designed to facilitate and support expert-based commerce Assignee: Walker Digital, LLC 1. A computer implemented expert matching method for managing communications between an expert and an end user, comprising:  receiving a first expert qualification corresponding to a first expert;  selecting a second expert that has a second expert qualification, the second expert qualification being higher than the first expert qualification;  transmitting the first expert qualification to the second expert; and  receiving a signal from the second expert that indicates approval of the first expert qualification.

Commentary: Take out the words "computer implemented" and the only possible Bilski machine is that "signal", which won't cut it (it's not even statutory subject matter itself, per Nuijten).  And there's no transformation, either.  The Notice of Allowance came in February 2009, well after Bilski had been soaked up by the examining corps, particularly in the 3600 TC and class 705.  Moreover, this claim actually made it through the BPAI in October 2008, two days before the Bilski decision. [Does anyone know why the decision is not available on the BPAI FOIA site? It's in the patent's IFW...]

So what happened here?  For starters, know that this patent has the longest prosecution of any patent to issue today, filed in July 1998.  First office action (of seven total) came nearly 10 years ago, in August 1999.  By about OA #3, the Examiner -- the same one throughout the entire prosecution, amazingly -- decided to get kind of cute.  Instead of finding a reference that taught the disclosed steps, he pointed to internal patent examination procedure.  For example, a prosecution may include a primary examiner who is a first expert, and who in turn consults his SPE (a more highly experienced expert), etc.  In later office actions, the Examiner actually cited the MPEP directly as codifying this "procedure."

And that's what went up to the BPAI in October 2008: an application with an examiner's cutesy rejection where the MPEP itself was the only cited prior art against the claims.  The Board wasted little time in calling the Examiner's scenario "no more than a speculative hypothetical situation, rather than evidence of anticipation."  It continued, "More critically, the Examiner's rejection is over the MPEP, not the business practices within which the MPEP is used."  Because the MPEP itself did not describe the claimed steps, there was no prima facie case of anticipation.  Reversed. (There is a 103 reversal, as well, with respect to other claims.) 

That still doesn't explain why there was no sua sponte 101 rejection, as we've seen many times in the last few months (101 was never raised during prosecution).  My guess is that the Board felt it was important to do some public smacking here (fresh in my mind is the Passover seder's story of the 'wicked son,' who asks a smart alec question for which we are instructed to "hit him in his teeth").  They didn't want to soften the blow with another rejection, turning the previous rejection into "harmless error".  Thus the rebuked Examiner, with tail between his legs, allowed the claims to issue in February. [Question: could he have raised Bilski at that point, even if he wanted to? Or were his hands tied with the current record?]

So Walker appears to be the recipient of a gift from the BPAI, who chose to remain silent on 101 in order to teach a lesson.  Had their decision come a week later, post-Bilski, this may not have been so easy for the Board to do.

The practitioner's takeaway practice tip: if faced with an examiner too smart for his own good, (and we've all faced them...), it's worth pushing up the ladder.

[4/23/09 Postscript: The parent of this patent, U.S. Patent No. 5,862,223, was one of several patents singled out by Judge Mayer in his Bilski dissent as examples that "Patents granted in the wake of State Street have ranged from the somewhat ridiculous to the truly absurd."  (Slip op. at 12).  Another Walker patent, 6,119,099, also appears in that list.]

Drafted by Beavis?

I typically don't enjoy this type of humor.  Really.  However, my almost-5-year-old daughter has recently discovered endless joy in displaying her tush to the family while singing and dancing to an accompanying original composition ("The Butt Song"), so I couldn't help from laughing when I saw the title of this patent that issued today:

U.S. Patent No. 7,520,681:

Butt coupling structure and method of photonic quantum ring hole emitter.

Heh heh... He said "ring hole"...

The Chicago Way

Better late than never, here are a few claims to consider from this week's issuances.  We'll stay close to home and give two from local companies. 

Key terms are in bold.

U.S. Patent No. 7,519,554 Processing binary options in future exchange clearing Assignee: Chicago Mercantile Exchange Inc. 1. A method of processing binary options comprising:  (a) defining an electronic book instrument for a corresponding binary option as a standard option on a non-tradeable cash-settled underlying futures contract;  (b) assigning an expiration date for the electronic book instrument after the expiration of the binary option;  (c) defining the non-tradeable underlying future maturity date after the expiration date for the binary option;  (d) determining whether the binary option expired in the money;  (e) for each expired binary option position, electronically transmitting a liquidating transfer transaction to an electronic futures contract clearing system;  (f) for each expired binary option that cleared in the money, creating a transaction for the corresponding electronic book instrument, the electronic book instrument having a price being one currency unit less than the final value of an underlying statistical value for the expired binary options; and  (g) after the expiration of the binary option, clearing the electronic book instrument on the electronic futures contract clearing system.

Commentary: Here is one of the better examples I've seen for how to pass the Bilski test.  This claim was originally rejected in fall 2008 under 101 for failing the machine or transformation test.  Without substantive amendment and just after the Bilski decision, the applicant successfully argued that the electronic futures contract clearing system was "clearly an apparatus or machine."  That sufficed: allowed and issued.  And probably no Festo problem (there was just an amendment to fix a typo.)

Note that the specification devotes a figure and several paragraphs describing this system in terms of both hardware and functionality. That's helpful.  In actuality, the figure is for an "exchange system", and it is not immediately apparent that this is is the same "clearing system" in the claim, but I'll let that slide.  In any event, it has become increasingly clear to me that perhaps the best approach to satisfying Bilski is to give a specific name to a system or server, use it in the claim, and define it with text and figures in the spec. And, while a "fanciful" name is nice for trademarks, better to use something descriptive here ("registration server", "cattle information server", etc.)

---

Here's a claim that's not as good on the 101 front, from a company with recently planted Chicago roots:

U.S. Patent No. 7,519,445 Method and apparatus for determining a solution group of parts in an assembly Assignee: Boeing Company 1. A method for determining a solution group of relevant parts among a plurality of parts in an assembly; said solution group being related with at least one target part of said plurality of parts; each respective part of said plurality of parts being identified by a respective part-containing volume and a respective locus; each said respective locus being identified with respect to a common origin; the method comprising the steps of:    (a) identifying said respective part-containing volume of each respective said at least one target part;  (b) including each said respective part-containing volume of each respective said at least one target part as part of a target-containing volume for said at least one target part;  (c) identifying each respective part-containing volume for each said relevant part; each said relevant part being identified by a respective part-containing volume having a predetermined relationship with respect to said target-containing volume; and  (d) assigning said relevant part to said solution group.

Commentary: Set aside for a moment that, without reading the spec, you may have little idea of this claim's subject matter.  Just note that there no bold terms in there.  The examiner didn't raise 101 in the July 2008 office action and apparently didn't think to revisit the issue when allowing the claim in January 2009.  It's clear from the spec that this method is intended to be performed by a computer, but there's nothing at all in the claim to suggest it.  Even if there was, it's not clear such a computer would be particular.  Here is the associated figure of the patent "illustrating the apparatus of the present invention:"

Particular enough for you?

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Finally, let's take a look at one from a newcomer to the Bilski Watch:

U.S. Patent No. 7,519,180 Method and apparatus for copy protection Assignee: Apple, Inc. 1. A method of copy protecting a content comprising:   encoding a watermark in the content, wherein the watermark is not discernible by a recipient of the content, the watermark being indicative of a copy protection status of the content, wherein the watermark further indicates a level to which the content may be copied, and wherein the copy protection status of the content indicated by the watermark does not allow the recipient to record the content unless the recipient possesses a permission key that matches the watermark;  transmitting the content with the encoded watermark to the recipient; and  transmitting the permission key to the recipient, wherein the permission key is a variable permission key that varies over the transmission of the content and the encoded watermark such that more than one permission key is required to record the content and the encoded watermark, thereby allowing the recipient to record the content.

Commentary: So here's the question.  If this passes the "machine" prong, (as it almost certainly would, if better drafted -- the specification makes clear the method is performed by various encoders, extractors, demodulators and transmitters) where is that machine in the claim?  But I'd be more interested to hear if anyone could make an argument this passes the "transformation" prong.  Assuming "content" is a transformable article (which it may be under Abele), is it really transformed under Bilski if the transformation (adding a watermark) is "not discernible?"

Patenting the Business of Patents

My post from a few weeks ago on Syracuse University's patent on a method for valuing intellectual property "refreshed my recollection" of a topic I'd considered a while back.  Although it is clear that there has been a recent growth in the secondary market for patents (see, e.g., holding companies such as Acacia, or exchanges such as OceanTomo), perhaps less known is that this secondary market is actually generating its own IP, too.  At least 14 patents are known to exist that are directed to valuing or marketing intellectual property:

7,493,262	Method for valuing intellectual property
7,386,460	System and method for developing and implementing intellectual property marketing
7,346,545	Method and system for payment of intellectual property royalties by interposed sponsor on behalf of consumer over a telecommunications network
7,346,518	System and method for determining the marketability of intellectual property assets
7,315,836	Method for obtaining and allocating investment income based on the capitalization of intellectual property
7,292,994	System and method for establishing value and financing of intellectual property
7,272,572	Method and system for facilitating the transfer of intellectual property
7,269,566	Method for obtaining and allocating investment income based on the capitalization of intellectual property
7,228,288	Method of repeatedly securitizing intellectual property assets and facilitating investments therein
7,216,100	Method for obtaining and allocating investment income based on the capitalization of intellectual property
7,188,069	Method for valuing intellectual property
6,959,280	Method of protecting against a change in value of intellectual property, and product providing such protection
6,330,547	Method and apparatus for establishing and enhancing the creditworthiness of intellectual property
6,018,714	Method of protecting against a change in value of intellectual property, and product providing such protection

A sign of the times: 11 of the 14 issued in the last two and a half years.

Note that this list does not include several other IP-related patents, such as a few dozen that relate to maintaining an inventory of IP assets, or R & D (e.g., allocating resources for IP development) or patent prosecution (e.g., tracking annuity payments).  These 15 are just the ones I'm aware of that specifically target the patent transactional marketplace.  Of course, the irony here is that, by patenting these methods, this secondary market in some ways becomes a primary market, as well.  Another way of thinking of it is that the non-practicing entities who are often involved in the valuations and exchanges of IP covered by these patents may now actually be practicing entities with respect to some of those patents.

There is something beautiful in the recursion here, particularly with the Escherian thought of trying to value or transfer one of these patents by the very methods it teaches. Cool.  Would such a patent then become "auto-claiming?" or "Self-descriptive?" [and to you logicians out there, if every patent is either 'self-descriptive' or 'non-self-descriptive' then what about a patent claiming "a method of transacting IP using at least one unpatented technique"?]

The main player in this space appears to be a St. Louis-based outfit called TEQ Development, with lead inventor Douglas R. Elliott.  Mr. Elliott appears to have been involved with Ocean Tomo through its S\LB Partners private equity fund.  He is listed as inventor on six published applications, four of which have issued and are in the list above.  Other players, based on recently published applications, are Ocean Tomo (e.g., U.S. Pub. 2009/0024513 and 2008/0243642) and Detroit-based e-IP (U.S. Pubs. 2009/0024486 and 2009/0024534).  An interesting application comes out of Connecticut to the Ipie Mae Corporation on securitizing IP assets (U.S. Pub. 2008/0201209).  (I won't comment on how the claims of these apps may be affected by Bilski.  It ain't pretty.)

One has to wonder if these patents collectively can be used as a proxy to indicate the total value of the burgeoning IP transactional marketplace.  For example, the amount for which these IP-related patents may be licensed or sold is probably a good indicator of, say, how much money is expected to pass through at the next IP auction.  On the other hand, based on reports from recent auctions, the patent market bubble may have burst along with the rest of the financial services industry. (Hat tip: Peter Zura).

From a policy perspective, there does seem to be a fundamental problem, however.  (Yes, I am going against my general avoidance of commenting on normative policy here.)  To the extent that these patents may artificially limit a patent owner's ability to sell his property, it would run somewhat counter to one of the underlying principles of the patent system, namely the opportunity for an inventor to obtain value for his invention.  This is different from the situation when, for example, Hootman's patent on a buggy whip lost value because of an industry improvement like, say, the automobile.  Instead, this says that although the underlying invention may be just as valuable to the end user, the value of the patent is worth less because it cannot be sold at a particular kind of auction/securitized/valuated in a certain way/etc.  It's as if the PTO jacked up issue fees by a few bucks, and diverted the difference to a handful of auction operators and fund managers.

I’m all for at least some barriers to entry at the PTO – it’s an easy out for some of the cold calls I get from quacky garage inventors (no offense intended there; I've had several entrepreneurial clients who have been great).  But it doesn’t feel quite right when the barrier is put up by a third party with the PTO’s blessing.  Just my thoughts.

More Bard's Tale

For those who were intrigued by my post last week on the 35 year patent battle between C.R. Bard and W.L. Gore, there is a concise, high-level summary on the AmLaw Daily from Thursday.  Sounds like my hunches about the case's complexity weren't even close.  Some highlights:

• Total damages will probably exceed $600 million
• File wrapper is 10 feet high
• 30-year old perjury confession 

You can read the rest for yourself.  I'll wait for the novel to get more details. 

A Wild Ride on the 101

Speaking of old patents, there were two more pre-GATT patents issued today: U.S. Patent Nos. 7,514,397 (Trimeris) and  7,514,083 (University of Melbourne).  Neither appear to have particularly interesting prosecution histories.

On the flip side, IBM again has several Accelerated Exam patents today, using their single method claim technique that we’ve seen before.  Two of them sound pretty interesting: U.S. Patent No. 7,516,220 “Method and system for detecting and deterring robot access of web-based interfaces by using minimum expected human response time” – perhaps the PTO can use this instead of that darned reCAPTCHA; and U.S. Patent No. 7,515,899 “Distributed grid computing method utilizing processing cycles of mobile phones”.  [Didn't Bale do something like this in the Dark Knight? Could Batman be prior art?  Filmed partly in my office building, btw.]

But there is one patent that issued today that is not quite old enough, from 1995.  It is our first triple loser:

U.S. Patent No. 7,516,172 Method for finding quotient in a digital system Assignee: United Microelectronics Corp. Filed: August 2, 1995 1. In a system for digital information processing, said system having a memory, a method for generating data representative of a quotient Q=a.sub.0a.sub.1a.sub.2 . . . a.sub.b from data representative of a divisor Y=y.sub.1y.sub.2 . . . y.sub.n and data representative of a dividend X=x.sub.1x.sub.2 . . . x.sub.a, comprising the steps of: (a) aligning the first non-zero bit of X with the first non-zero digit of Y; (b) defining a signed-digit partial remainder series R.sub.i where R.sub.0=Y, a first sign series of the partial remainder S.sub.i where S.sub.0=0, a second sign series of the partial remainder S.sub.ri, a quotient bit series a.sub.i, and a counter i beginning from zero; (c) subtracting X from R.sub.i which yields next signed-digit partial remainder R.sub.i+1; (d) setting the sign of R.sub.i+1 to S.sub.ri+1; (e) setting the result of exclusive-OR of S.sub.i and S.sub.ri+1 to the true sign of the next remainder S.sub.i+1; (f) setting a.sub.i to 1 if S.sub.i+1=0 or R.sub.i+1=0; (g) setting a.sub.i to 0 if S.sub.i+1=1; (h) inverting the signs of all digits of R.sub.i+1 if S.sub.i+1=1; (i) shift R.sub.i+1 left by one bit; (j) adding 1 to i; (k) repeating steps (c) to (j) until i reaches a predetermined value or R.sub.i+1=0; and  (l) storing in said memory as said data representative of a quotient, a quotient resulting from step (k).

Let’s begin with Loser Reason #1: the filing date.  Because this patent wasn’t filed 8 weeks earlier, it will  expire 20 years from its priority date -- 2014 -- rather than 17 years from today.  That’s 12 years of term that just vanished.  (Actually, the patent will get 4.5 years tacked on due to a BPAI decision... see below)  Worse, there’s no apparent reason why this application couldn’t have been filed by June 7 – it was a continuation from a January 1994 application.

Loser Reason #2:  The patent was allowed in 2002.  So even with the post-GATT filing date, this application sat an extra seven years after it was allowed because of an alleged error with the PTO not sending the NOA to the new attorneys.  Two petitions later, the abandonment was withdrawn and the patent issued.

Loser Reason #3: Bilski and the method roller coaster.  This is a slam dunk under the Machine or Transformation test.  But this patent's story is fascinating because it spans and discusses a good chunk of the law that the Federal Circuit discusses in Bilski.  Note that this was a pre-State Street case.  The Examiner wasted no time (only about 7 months) to reject the claims under 101 citing the Freeman-Walter-Abele test.  The briefing argues over Alappat.  By the time the case was eventually ruled upon by the BPAI, State Street had been decided.  The Board reversed the Examiner under that test (note: PAIR mistakenly says this 8-15-2001 affirmed the examiner). 

But wait, there's more.  The Examiner requested reconsideration of the BPAI decision.  While I know this practice of requesting reconsideration is common when an applicant loses an appeal (though I've never seen a successful request), I have to admit I was unaware that an Examiner could do this, too.  Who knew?  It's pretty rare, apparently.  This cost about nine months of unrecoverable patent term (because this app was filed before 2000, Patent Term Adjustment is not available; only Patent Term Extension.  Yes, for you non-practitioners, these terms are actually different things. Never confuse PTE with PTA...reminds me of this discussion).

How about that for a triple-whammy?

One more patent to discuss today, an unlikely candidate:

U.S. Patent No. 7,513,005 Washing method for a dishwasher, and dishwasher for carrying out such method Assignee: BSH Bosch und Siemens Hausgersete GmbH 1. A method for washing and drying items in a dishwasher, comprising:  executing a washing program during which a washing liquid is applied to the items in the dishwasher; and  following completion of the washing program, executing a drying program such that, in response to both an interruption of the drying program resulting in the dishwasher no longer being in a program run state and a thereafter following restoration of the dishwasher to its program run state, a parameter value is measured and, in a first given circumstance, the drying program is resumed if a selected one of a predetermined deviation and an absence of the predetermined deviation from a nominal value is detected and, in a second given circumstance, a fresh cycle of a washing program and a drying program is initiated if the other of the predetermined deviation and the absence of the predetermined deviation is detected.

Some questions for the crowd:  What if it is a "general purpose" dishwasher?  Would that be a "particular" machine?  Is it particular simply because it manipulates tangible articles from a statutory class? And does it even do that?  Isn't what's being claimed the program that controls the washing, and not the washing itself?  And do you think this passes the transformation test, too (from dirty to clean; wet to dry)?

Wait! Don't throw that thing out!

To anyone who has read my earlier posts, my fascination with "old" patents (i.e., patents with very long prosecution histories) won’t come as news.  Often these old inventions, despite getting a fresh 17 year monopoly when they issue, may have lost much of their latent value through obsolescence (if that secrecy order is eventually removed, the thing probably is not so important anymore...), or perhaps changes in law (think Bilski, or regulatory changes affecting applicability).  But this week we were given about 371 million reminders why some of these old inventions really do matter.  That’s the number of dollars W.L. Gore must pay C.R. Bard for infringing U.S. Patent No. 6,436,135, after the Court (D. Ariz.) doubled the jury’s award.

Take a close look at the filing date – it’s not a misprint. 1974.  And the patent issued in 2002 after an epic prosecution battle that included a 15 year interference.  (Only the transaction history is available on PAIR.  I imagine the file wrapper is ginormous)  So we’re already at 35 years, and I’d be shocked if it ended here.  Can you imagine taking a case as a first-year associate, and to have that case with you the rest of your career?  Without knowing much more than this (and I really do not know much more than this), I would bet that there’s a movie script or two lurking in there.  I'd be curious to hear some war stories from any of the presumably dozens of attorneys who must have been involved in this patent's 28 year prosecution.

There’s another factoid about the ‘135 patent, but I’ll save it for a future date.  And I should have another post coming later today reviewing some of today’s issuances.