Technically Legal

Yesterday, Myriad Genetics expressed their disappointment and announced their plans to appeal Monday’s ruling which invalidated seven patents related to BRCA1 and BRCA2 genes and diagnostic testing for breast and ovarian cancer.

Given the highly contentious nature of patents related to human genetic material, it’s not really surprising that Myriad plans to appeal.  I would even expect this litigation to be drawn out over the next several years–potentially to the point of Supreme Court review.

Another thing to keep in mind is that because these patents involve claims over methods of diagnostic processes (which arguably consist of mental steps) and gene isolation techniques, these types of patents may be subject to the Bilski case, which is still pending before the Supreme Court.  The highly anticipated Bilski ruling is expected in the coming months.

Keep in mind we’ll be covering this case on this week’s podcast!

Comments Off Posted in: Commentary on March 31, 2010

After nearly three years of litigation in ACLU v. Myriad Genetics, the Southern District of New York issued a landmark ruling today in favor of the ACLU and declared several human gene patents to be invalid.

The patents claimed ownership to methods and materials related to the isolation of BRCA1 and BRCA2, which are part of the tumor suppressor gene family in humans.  The patents further claim ownership over methods of comparing these genes to healthy genes for the purposes of detecting abnormalities or genetic mutations in DNA sequences .  A skilled clinician can then determine the presence of breast and ovarian cancer, or if a person has a strong likelihood of developing those cancers in their lifetime (somewhere around 70%, if memory serves).

Collectively, Myriad owns or has the exclusive rights to seven patents which deal with the DNA sequencing of BRCA1 and BRCA2 genes.  The effect from this ownership, the ACLU argues, is that Myriad Genetics owns a legal monopoly on all diagnostic processes, which hurts women’s public health at large and restricts cancer research and development.

We’ve yet to read the lengthy 152-page court ruling (read it here at the New York Times), but we’ll get through it over the next several days.   In the meantime, you can also find multiple articles on the ruling circulating in the media, including:  TechDirt, LATimes, Newsweek, Wired

Make no mistake, this is a huge case and a highly significant ruling.  Stayed tuned. We’ll cover it on our next podcast with detailed analysis.

1 Comment Posted in: Commentary, Links on March 29, 2010

On December 22, 2009, the Federal Circuit ruled all issues on appeal in favor of i4i.  The Federal Circuit reestablished the effective date of the injunction to January 11, 2010.  Microsoft is left with few avenues in terms of the litigation.  They can appeal to the Federal Circuit (again) and ask for a rehearing en banc.  Another viable option maybe to appeal the Circuit court’s ruling to the Supreme Court.  Finally, they can always wait and see what happens will the Bilski case, which was argued before SCOTUS earlier this fall, and hope the ruling affects the underlying validity of i4i’s patent (not an attractive option).

We covered the first part of this saga on our podcast back in August.  In short, i4i Limited Partnership sued the 800 lb gorilla, Microsoft, for patent infringement based on its Patent # 5,787,449.  The patent claims “a system and method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations.”   The target of i4i’s litigation was Microsoft’s XML document editing software which is integrated into Microsoft Word (primarily affecting Word 2003 and 2007).   More specifically, i4i claimed Microsoft willfully infringed the ’449 patent.  After a jury found Microsoft guilty of infringement, the district court awarded i4i $200M for the infringement, an additional $40M because the infringement was willful, and pre- and post-judgment interest.  Ouch.

Here’s the kicker though.  In August, i4i filed a post-judgment motion seeking to permanently enjoin Microsoft from supporting, using, or selling editions of MS Word that contained the infringing technology.  The motion was granted; and, Microsoft was dealt a serious blow to the gut.  This sparked a fury of speculation in the blogopshere and media as everyone tried to figure out the fate of MS Word.  As you might imagine, Microsoft did not lay down in defeat– instead they filed an emergency motion to stay the injunction.  The stay was granted and Microsoft filed an appeal before the Federal Circuit challenging the ruling, arguing the District Judge erroneously construed a claim– in  lay-speak, Microsoft argued that the Judge incorrectly applied meaning to a portion of the invention which made the patent broader than what was actually claimed.  Additionally, Microsoft argued that the patent should be invalidated and injunction lifted through other precedent (KSR and EBAY) and pandered about with some other evidentiary arguments that occurred during the trial.

Most importantly, the injunction became effective this week, and Microsoft was forced to comply with it. Since the appellate decision, sources are reporting that Microsoft has indeed made changes to the software to comply with the ruling.  The changes will apparently allow Microsoft to continue selling versions of Word without violating the injunction.  Fear not!  Word is here to stay– in some form.  No word yet if it is technically feasible for Microsoft to redevelop the XML editor in a way which prevents them from violating the ’449 patent.  However, I suspect Microsoft will do something to reincorporate the lost XML functionality back into future versions of Word.

Something that I have not seen covered on other blogs is how this injunction is affecting Microsoft’s corporate clients.  I’ve already received  a handful of phone calls from friends and even a family member asking about the Federal Circuit’s ruling.  Each of these people are employed at the executive or senior executive levels of Fortune 500 companies and all expressed concern about how the ruling was going to affect their company’s future revenue streams.  Undoubtedly, a large number of companies who develop products that depend on certain functionality (like XML manipulation) or proprietary file formats (DOCX and DOCM come to mind) might have just been hurt in a previously unanticipated way.  Depending on what Microsoft changes, this might end up being the focus of more lawsuits from large corporate licensees.  On a brighter note, maybe the litigation will turn around the economy? <kidding>

Stay tuned for more updates.  I’m sure they are coming.

Comments Off Posted in: Commentary on January 14, 2010

This afternoon I came across Martin Goetz’s guest article on the patent law blog Patently-O.  As a long-time software developer and recipient of the first software patent issued, Goetz provides an interesting perspective on the ongoing software patent issue presently before the Supreme Court.

As lawyers, we’ve been trained to think from the legal perspective.  This sometimes contrasts sharply with the laymen understanding of why particular laws exist and why they function as they do.  In the last couple years, I can recount multiple watercooler conversations with non-lawyers, including software engineers and corporate executives,  who have difficulty understanding the unique problem of patenting software inventions under the current standard imposed by the Federal Circuit (the “machine or transformation test“) and the close relationship to non-patentable abstract ideas.

Often, their frustrations can be simplified to: “it’s mine, I developed it with my own ingenuity and the sweat of my own brow, no one else has done it, therefore I merit a patent and the exclusive rights afforded under the law like other inventions.”  While each of these factors are among the recognized reasons in favor of issuing patents, they fail to address the precise problem found in the boundaries of non-patentable inventions and patentable subject matter when applied to software inventions.

Of course, not every layman’s justification I’ve heard falls short of addressing the problem.  In fact,  Goetz’s article confronts several core issues in the debate with a perspective based on development experience.  Though his article does not describe the legal problems, it attacks the notion that software is an abstract principle or idea through a variety of analogies and thoughtful descriptions of enterprise software development.  He notes that the similarities of software development to hardware development process and other physical items of manufacture which are clearly within the realm of patentable inventions.  Interestingly, Goetz also describes software as being closer to a machine than a mere abstract principle when one considers the amount of R&D, workmanship, problem solving, and necessary infrastructure required to achieve a functional high-technology product.

Overall, I appreciated the perspective from a seasoned practitioner in the trenches and recommend the read, especially if you already have a good grasp of the legal principles before the Supreme Court.   Though many of his arguments are compelling on certain points, the Supreme Court will likely focus on many of the nuanced patent principles in addition to other counterbalancing factors in their final decision.

Comments Off Posted in: Commentary, Links on December 2, 2009

Today, the Supreme Court hears arguments on the Bilski case.

While you can’t (yet) listen to a live stream of the arguments, the transcript is here.

In the meanwhile, here’s a smattering of news and analysis, courtesy of Google News. If you’re in the mood for something more incisive, take a look at Gene Quinn’s analysis of Bilski.

UPDATE 3:00 PM: SCOTUS Blog has the first post about the Bilski argument. In short, no one on the Court supported Bilski’s patent, but whether the Court will address software patents is up in the air.

UPDATE 6:40 PM: The post now has links to the transcript above, and here.

Comments Off Posted in: Links on November 9, 2009

Several websites (see here, here and here)  have recently commented on the Google patent search portal, which was granted a patent (D599,372) this last Tuesday.  The application had been pending since 2004 and claims ownership over the design elements of the search page.  As with most Google search portals, the Google Patents page has 28 words or less—total.  Aside from  minimalist design, the patent only lays claim to its iconic  query field along with the two buttons “Search” and “I’m Feeling Lucky” as well as the typical hyperlinked text on a Google page.  In fact, the design claimed is the 2004 Google Patent page, but it differs little from its current state today.  Also, the Google logo is specifically disclaimed from the design.

What is most notable about this patent is not the audacity of the Mountainview company to claim these very basic portions of their webpage.  It’s that the vast majority of patents that are issued today are “utility patents,” which claim inventive ownership to products, processes, machines, compositions of matter, and manufacture.  Instead, this is a design patent, not a utility patent.

Design patents differ significantly from their cousins in the patent world.  As noted above, the utility patent covers a range of inventions that are encompassed in Section 101 under the Patent Act.  A utility patent protects the functional features of an invention, including use of the invention and method of functionality.  Design patents can be found under Section 171 of the Act and are described as “any new, original, and ornamental design for an article of manufacture.”  The most significant difference is that a design patent will only protect the ornamental features of a design, not any of its functional aspects.  Note, however, that a single invention can be the subject of both separate design and utility patents.

Unlike utility patents—which can have several claims—a design patent has only one claim: the drawings.  The protection afford focuses on the “visual appearance as a whole” claimed within the design patent with emphasis on “the visual impression it creates.” See Elmer v. ICC Fabricating, Inc. 67 F.3d 1571, 1577 (Fed. Cir. 1995), Durling v. Spectrum Furniture Co., 191 F.3d 100, 104-05 (Fed. Cir. 1996).  If an owner of a design patent were to enforce her rights via an infringement lawsuit, the court generally applies two tests to compare the two designs: the ordinary observer test and the point of novelty test.  In order to succeed, a plaintiff bears the burden of showing that both tests are satisfied.

The Supreme Court has explained the novelty test as the following:  “[I]if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”  Gorham v. White, 81 U.S. (14 Wall.) 511, 528 (1871).  The more modern point of novelty test requires that the “accused design appropriates the novelty which distinguishes the patented design from the prior art.”  See Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984).

Typically,  it is challenging to win design patent infringement cases because of the difficulty to meet the above tests.  The designs must be very similar to one another.  Hence, this is why people shouldn’t jump to the conclusion that search engines with similar interfaces are in immediate trouble just because the Google patent was issued this week.

Design patents do play an important role in the intellectual property world.  They pick up where copyright law might leave off.  Since copyright can be used to cover certain design features (any original expression fixed in a tangible medium) it would be a likely source of protection for elements on webpages.   However, copyright does not protect the “functional aspects” of a work.  Since certain elements on a webpage are arguably functional (think nearly any of the code or click feature design), there would be parts of a search engine interface that are not protected.  Design patents allow for the ornamental features of these functional designs to be protected.  So, maybe it’s not such a surprise, nor audacious, that Google opted to protect these elements by way of patent.

1 Comment Posted in: Commentary on September 4, 2009