12:01 Tuesday

Patenting the Virtual World: Webkinz

There's few situations more embarrassing than when your six-year old son figures out that you were playing his video game the night before.  Okay, maybe when your wife stumbles upon you after midnight playing your son's video game...  Alas, I admit to suffering both of these shames last summer when I became fascinated with my children's Webkinz.

For those of you with kids between 5ish and 10ish(?), I don't have to explain.  For the rest of you, Webkinz are Beanie Babies meets Tamagotchi meets facebook (kind of).  In the "real world", you spend a few bucks and get a cute cat/hippo/gorilla/kangaroo/pterodactyl/etc. animal to cuddle.  Inside the toy's package is a code that is then entered into a website to unlock a "virtual" version of your animal.  In the virtual world, you feed and take care of your pet, and earn "kinzcash" by playing games.  The cash can be spent on things like room decorations, food, or gifts that you can "send" to your networked friends.  It's pretty wholesome stuff, not expensive, and the commercialization factor, while present, isn't off the charts (though there is temptation to buy "real" clothing accessories, which come with their own codes, to then see those garments magically appear on the virtual version).  And there is one small, though real 'hook' to your wallet: your registration on the site is good for a year, extendible by... buying and registering another Webkinz.  But for under $10, it's well worth it.

Of course, what I found most intriguing was that there are several patent numbers that appear on the Webkinz website.  Last week, Howard Ganz, creator of Webkinz and grandson of the family-owned company's founder, was granted his sixth Webkinz patent.

U.S. Patent No. 7,604,525 System and method for toy adoption and marketing Assignee: Ganz (Woodbridge, Ontario, Canada) Filed: January 22, 2009 Issued: October 20, 2009 9. A method that provides a virtual world presentation comprising: registering a toy; using a computer system for providing a website associated with the toy, said website having a user account associated with said registering of the toy; in response to and subsequent to said registering, using the computer system for displaying a virtual replica of the toy representing said toy on said website, wherein said virtual replica of said toy is manipulated by a user accessing the website via the user account; in response to said and subsequent to said registering, using the computer system for granting access to the user by way of the user account to at least a subset of features on the website in connection with the virtual replica of the toy; and in response to said and subsequent to said registering, using the computer system to facilitate caring for the virtual replica of the toy presented in the virtual world presentation, wherein said caring for the virtual replica of the toy comprises, and maintaining both of a health and happiness of the replica of the toy via a plurality of maintenance activities, which include all of feeding the toy, shopping for the toy, and playing with the toy, and taking the virtual replica of the toy to a virtual health and welfare facility, wherein playing with the toy comprises participating in an activity on the website in combination with another virtual replica of another toy appearing on the website that is controlled by another user via another user computer over a communication network, wherein an appearance of the virtual replica of the toy is animated using video components for the animation, said animation being used during participation in the activity on the website in combination with the another virtual replica of another toy.

Commentary:  There was an Examiner's Amendment that deleted a clause in the last element, leaving a difficult parsing job (the [, and] before "maintaining" probably should have gone).  We can ignore that for now, in light of all the other good things to discuss here.

• Accelerated Examination.  Ganz's first patent was from an application filed in 2004.  That same application has served as the parent for all of his patents.  Of course, the AE program wasn't around until 2006, and Ganz has now taken full advantage in this continuation patent.  Notably, this patent has five earlier-filed sibling applications that are still pending.  And Ganz unsuccessfuly tried AE on a couple of these, getting petitions denied.  This time they got it right.
  

• Bilski Guidelines. In June 2009, the examiner hit Ganz with a 101 rejection: "As explained in the Interim Guidelines in view of In re Bilski, the first step in determining whether a claim recites patent eligible subject matter is to determine whether the claim falls within one of the four statutory categories..."  That sounds fine, and it is certainly in line with the current Guidelines published in August 2009. (In fact, this same Examiner just rejected a related Ganz application under 101--in October 2009--with exactly the same language.)  But to my knowledge, in June there were no post-Bilski 101 guidelines other than John Love's January 7, 2009 memo, which was silent as to particular steps, and only referred examiners back to MPEP 2106 for specifics.  Was there another, unpublicized set of Interim Guidelines adopted before August?  My guess is that the August guidelines were available and in use for a couple months before going public.

• Machine? Transformation? Both?  To overcome the 101 rejection, Ganz amended the claims, partly as marked above, with several references to computer systems and stressing the linkage between real and virtual worlds (e.g., there was an element reciting a "virtual adoption process" that was subsequently removed by the examiner).  Ganz argued this satisfied not only Bilski's machine prong, but its transformation prong, as well, following Bilski's nod to Abele: "A transformation of raw data into a particular visual depiction of a physical object on a display is sufficient" to satisfy the transformation test, argued Ganz.  

That's not so clear here however. The visual depiction in Webkinz is really a generic animation of "a" Webkinz toy, and not necessary your Webkinz toy.  That is, the same graphic used on the website to display your Gecko is also used for the thousand other kids' Geckos out there.  That's quite different from the x-ray data of Abele, which really was derived from an actual physical article.  So does this virtual image really "particularly" depict a physical object?  It's unclear.  And we don't know if this argument succeeded for Ganz: the examiner allowed the claims without any 101 discussion.

• Scott C. Harris? Yes, the same Scott Harris of Fish/Google fame and who argued the In re Ferguson paradigm non-shifting case appears to have been involved here.  You won't find his signature on any of the papers, but the Examiner notes an August interview with Harris in the Notice of Allowance, where Harris authorized an Examiner's Amendment.  Sure enough, PAIR reveals that Harris is now associated as an attorney of record on this application, working with the Cleveland-based Pearne & Gordon firm.

• Claim strategies.  It's worth looking at the claims in the other Ganz patents.  For example, the parent, U.S. Patent No. 7,534,157, claims the physical toy as an apparatus, but all the elements are directed to the computer ("A toy for utilizing a computer system for providing a virtual world to a user of said toy, the computer system comprising:...").  Sister Patent No. 7,425,169 includes method claims from the perspective of the end user's actions ("A method comprising: first using a first registration code obtained from purchasing a first toy, to access a website;...").  Other patents in the portfolio cover variations on the method claims. Having different claiming approaches like these allows for a wide scope of overlapping claim coverage, and for potential infringement under both direct and indirect theories.

[UPDATE 10/26/09: See comment below on the "transformation" question in light of last week's Ex parte Gardiner decision.]

Army Had Received Two Previous Dead Patents

It gets worse...

It turns out there is more to the story of U.S. Patent No. 7,604,811, the Army patent that issued this week with an expiration date in 2004.  Incredibly, the '811 patent is the third pre-expired patent to issue from this same chain.

As explained in the previous post, the '811 patent claims priority back to 06/590,308, which was filed March 16, 1984.  The '308 application served as a priority basis for many other issued patents, including:

• U.S. Patent No. 6,844,010, filed July 18, 2000; issued January 18, 2005.

• U.S. Patent No. RE40,786, issued June 23, 2009 as a reissue of U.S. Patent 5,762,965, which was filed February 9, 1996.
  

Thus, both of these patents also expired in March 2004, which was prior to their issuance by 10 months and 5 years, respectively.

The facts here show that the '811 fiasco was no fluke. As was done with the '811 prosecution, while prosecuting the '010 patent the Army similarly filed a terminal disclaimer to circumvent a double-patenting rejection. In April 2004.  A month after the patent's expiration date.  (Another note on '811 -- it almost was saved with 550 days of Patent Term Adjustment, except there was over 600 days of patentee delay that offset it)

And like the '811 prosecution, the '786 reissue proceedings included substantial argument after the March 2004 expiration date (i.e., nine amendments and an RCE).

If that's not enough, there is also this piece of bad news for the Army: contrary to what I supposed in the previous post, you cannot use a reissue patent to delete a priority claim in order increase the patent's term.  MPEP 1405 makes this quite clear ("[term] cannot be extended through the filing of a reissue"), as does the language of 35 USC 251, which only allows a reissued patent for "the unexpired part of the term of the original patent."  In other words, there does not appear to be any way to resurrect these patents, even if they don't rely on any subject matter disclosed in the 1984 application.

Simply unbelievable.

[10/22 7:44PM UPDATE: There's more: the Army paid the four-year maintenance fee on the '010 patent in February 2008.  Should the PTO give a refund?]

Be All You Can't Be: Army Patent Ambushed by Friendly Fire

You may recall the brouhaha back in the Reagan era when it was discovered that the Navy had purchased some very expensive ($600) toilet seats.

I remember comedian Emo Phillips around that time joking about his letter to the IRS, noting that the value of the paper clip he’d used to attach his check should cover any deficiency in his return, based on Pentagon spending figures.

Today, it appears the Army may have bought some much more pricey toilet paper to match the Navy’s purchase.  How?  By obtaining a patent that expired five years before its issuance.

Here's the relevant excerpts from the patent’s face:

U.S. Patent No. 7,604,811 Oral-intestinal vaccines against diseases caused by enteropathic organisms using antigens encapsulated within biodegradable-biocompatible microspheres Assignee: The United States of America as represented by the Secretary of the Army Issued: October 20, 2009  Filed: December 10, 1996 Continuation of application No. 08/396,986…which is a continuation in-part of application No. 06/590,308, filed on Mar. 16, 1984, now abandoned…

Because this application was filed after June 8, 1995, its term is 20 years from the filing date of the earliest reference specifically referred to for a priority claim: March 16, 1984.  In other words, this patent that issued today actually expired March 16, 2004 – five and half years ago.  35 U.S.C. Section 154(a)(2).

    "But maybe there is Patent Term Adjustment available…" Nope. The application was filed prior to May 29, 2000.  Nothing there.

    "But maybe there is Patent Term Extension available under 37 CFR 1.701…" Nope. There was no interference, secrecy order, or appellate review.  And even if it were available, it could only extend up to five years – to March 2009.

    "But maybe there is an extension pending FDA approval of the vaccine under Section 156…" Nope.  That would also be a maximum extension of five years under Section 156.

This patent is DOA.  If anyone has a good explanation as to why prosecution of this patent was pursued, please share.  (And note that if your answer is "to get the app published," there were other, less burdensome routes available, such as voluntary publication under 1.221.)

So let's see where your tax dollars went over the last five years in pursuing this stillborn:

• Four responses to non-final office actions
• Three responses to final rejections, including two RCEs
• Two Examiner interviews
• One terminal disclaimer filed
• One notice of appeal
• One appeal brief
• One petition to correct priority
• One issue fee payment

That's over $5,700 just in PTO fees.  In this case, those fees are effectively a shifting of government funds from one entity to another.  But it’s hardly an efficient use of resources.  And I wouldn't be at all surprised if the Army spent three times this amount for the attorney's corresponding time.

And of course, there are several interesting and crazy twists:

• First, you did read that list correctly.  The applicant filed a TERMINAL DISCLAIMER in May 2006 – a year after the patent had already expired –to obviate a double patenting rejection.  That's like a baseball team staging a press conference to announce it's not exercising the option to keep the player who retired the year before.

• Second, the Army filed a petition in October 2007 to correct the priority claim to get around an obviousness rejection.  The cited art was a PCT publication from overlapping inventors, and the petition corrected the priority claim to include the underlying 1991 U.S. application of that PCT app.  That is a different app from the fatal 1984 application. But the petition clearly includes the chain going all the way back to the 1984 application, which appeared as a priority document in today’s patent app as originally filed.  In other words, if it wasn’t apparent up to that point (hard to imagine), the Army filed a petition two years ago which on its face evidenced that any resulting patent would not be entitled to any term.

• Third, and perhaps most interesting, the priority claim to the 1984 reference may not have been even necessary.  In the last of the final rejections, the Examiner noted explicitly that the 1984 application "do[es] not teach the specific CFA/I peptides employed in the vaccine and method of the instant claims.  Accordingly, the priority date of the instant application is the filing date of its immediate parent, U.S. Patent Application 08/396,986, filed 3/01/95."

This raises a question: if an application is a continuation-in-part and none of its claims are supported by the ancestor application, should its term be determined by the date of that ancestor app? (Set aside that it makes no sense to file such a C-I-P…)  I don’t think so.  The language of the statute is clear that it is the “specific reference” to the earlier app that determines a patent’s term.  Indeed, the Army could have disclaimed priority to the 1984 application and removed that specific reference.  See MPEP 201.11 III(G) (which amazingly anticipated this type of post-GATT situation).  But it looks like now they’d need to get it reissued. And the Army would probably be estopped from disclaiming priority earlier than April 1991, the date of the underlying PCT application.  Would it take less than a year and a half to push a reissue through? And it doesn't feel right that the Army should serendipitously benefit from the examiner's unsolicited priority statement, either.

• Lastly, and true to form with common perception of government efficiency, care to guess what the Army did prior this patent's issuance?  That's right: it filed a continuation application.  

Sure, it's not Charmin.  But really, how abrasive do you think that official U.S. Patent is?  I'll trade you a couple paper clips for it...

Death is no obstacle: Another patent for Lemelson

Jerome Lemelson died almost exactly 12 years ago, and today he received yet another patent. This one is the fourth -- and last -- in a chain of continuations going back only to 1996.  That's forty years less priority than his immediately previous issuance, U.S. Patent No. 7,343,660. Notably, today's patent was submitted with a request for non-publication. Also notable is that Lemelson's patent attorney is a co-inventor.

According to his foundation's website, Lemelson submitted about 40 patent applications in the year before he died. If their progeny were submitted with similar NPRs, we still would have no idea if we've seen the last of them.  We do know that Lemelson now has 48 patents that were applied for after his death.

Of course, the value of these submarines is shrinking daily in a post-GATT world, where term is measured from filing rather than issue date.  And there is that doctrine of prosecution laches that Lemelson famously helped revive.

But today's patent still has about 6.5 years of term left. I'm not aware of any facial recognition systems like this in current vehicles, yet I'd think that six years of potential damages would be more than enough to make litigation worthwhile if another sub from Lemelson's final fleet were to surface in the right waters... We'll have to wait and see.

Claim 1 is presented below.

U.S. Patent No. 7,602,947 Facial-recognition vehicle security system Inventors: Jerome H. Lemelson & Louis J. Hoffman 1. A security system for a movable vehicle provided with an enabling system, the security system comprising:  (a) an electronic camera positioned to scan at least a portion of the face of a person located at the driver's station of the vehicle and structured to produce image signals;  (b) an electronic facial-recognition system responsive to the image signals and controllably coupled to the enabling system; and  (c) an electronic storage device coupled to the facial-recognition system to store a set of image signals, such that the facial-recognition system activates the enabling system only if signals representative of select characteristics of the scanned face of the person derived from the image signals produced on the camera's output match a member of a set of signals stored in the electronic storage device, each member representative of select characteristics of the scanned face of an authorized operator.

My hut's better than your hut: Patenting the Sukkah

It's been over two weeks since my last post -- a long hiatus for 12:01.  The lag is partly attributable to workplace demands and converging deadlines.  While blogging is fun and often related to my work, it doesn't extinguish client fires.  And, of course, it's not billable.  Such is the life of the lawyer-blogger.

But another factor in my delay is the passing of several Jewish holidays in recent weeks.  Rosh Hashana and Yom Kippur get plenty of press.  Less so, the holiday ending this weekend: Sukkot (aka "Feast of Tabernacles"). And, of importance to this blog, Sukkot is the holiday for Jewish patent attorneys.

Why?  Because Jewish law (halacha) requires that one build a temporary dwelling -- a sukkah -- for the holiday of Sukkot.  And it's not just "custom" to build some general kind of hut:  there are particular requirements of what constitutes a legal sukkah: height, roof materials, walls, etc.  An entire chapter of a Babylonian Talmud tractate is devoted to the subject.

While there are definite rules for a kosher sukkah, there is also a tremendous amount of creative space in which to satisfy those rules.  Thus, Sukkot gives the opportunity to design and build -- and that means the opportunity to innovate.  For example, my sukkah is recessed in a garden level patio, with a frame made of 2 inch PVC pipe (inspired by Tinkertoys), and each year I try to make one improvement, Jepson style.  I've also heard of more than one geodesic dome sukkah.  And of course, there are a variety of pre-fab sukkah kits.

I've noted past examples of religiously oriented patents.  But most of those patents are tangential to the performance of a ritual, and thus do not claim aspects central to the ritual act itself (e.g., the Rakat counter, the Christmas tree stand (issued this week), or the novelty Shofar alarm clock).  But when the required ritual is actually to BUILD a structure... well, for me it's like being commanded to play with Legos.

There are at least seven issued patents on inventions contemplating embodiments clearly relating to a sukkah:

7,017,311 Panel for modular construction

6,024,153 Retractable Sukkah awning

5,884,647 Folding structure

5,638,645 Skyhatch

4,677,797 Knockdown housing structure

4,676,039 Quick assembly and knockdown building structure

4,584,801 Temporary building structure

 

Two others are intriguing because on their face they appear to be directed to self-erecting tents: 5,645,096 and 5,407,291.  But these patents mark the instructions and website for a "popup" sukkah.  Takes a matter of seconds to assemble.  Cool.

As with any patent for religious rituals, you have to question just how big the market really is, and if it is worthwhile to pursue patent protection.  But for bragging rights in the synagogue, it's tough to beat "My sukkah is patented -- is yours?"