Archive for June, 2010

Kappos: US Economic Security Depends on National IP Strategy

Friday, June 4th, 2010

Isn’t it refreshing when someone in a leadership position in our Government actually acknowledges for a change that intellectual property protection is important to American business, and even our national securityFor an inspiring read (assuming you aren’t currently being sued by an NPE) visit this link on IP Watchdog, which posted a report on David Kappos’ speach to the Center for American Progress on June 2:  http://www.ipwatchdog.com/2010/06/02/kappos-us-economic-security-depends-on-national-ip-strategy/id=10861/

My thanks to Gene Quinn for his reporting on the speech.

Data: Is it Real or is it Abstract? Part II

Thursday, June 3rd, 2010

In my posting of May 29 I took up the inquiry of the nature of “data,” and in particular whether it was “real” (i.e. physical) or “abstract” and consequently either inside or outside the realm of patent protection.  My thinking in that posting didn’t get much beyond observing that data was most definitely “real” in its physical embodiment in a computing system being processed, for if it can be processed by a machine, it can’t be ether.

The term “data,” however, has more than one meaning.  As used to describe data in a computer, it refers to what I call “real data” or “physical data.”  As used in other contexts, it often refers to the abstract notion of data.  For example one dictionary defines data as either: “a collection of facts from which conclusions may be drawn” or “an item of factual information derived from measurement or research.”  This form of data I will call “abstract data.”

Let me also observe that often, in conversation or in writing, there is no effort to distinguish between the notion of abstract data or physical data that is an embodiment of the abstract data.  I think this lack of clear differentiation between the two realms of data certainly does not help in analyzing subject matter eligibility.

The remainder of this post I am going to use to review the decision in In re Warmerdam, 3 F.3d 1354 (Fed. Cir. 1994), from the perspective of the notion of real vs. abstract data.  Warmerdam involved an appeal for the USPTO to the Federal Circuit regarding an application directed to a method and apparatus for controlling the motion of objects and machines, such as robotic machines, to avoid collision with other moving or fixed objects.  The prior art taught that collision avoidance operations can be simplified by assuming that the objects are larger and more regularly shaped than they actually are. This can be done by treating the object as if it were a circle or sphere (called a “bubble”) of sufficient size to enclose the object, and by assuming that any motion that impinges upon the circle would produce a collision.  Warmerdam’s invention claimed a further refinement of prior art bubble systems in which the determination of the boundary position was refined by replacing the spherical bubble zone with a set of smaller, more refined bubble zones.  The claims at issue were as follows:

1. A method for generating a data structure which represents the shape of [sic] physical object in a position and/or motion control machine as a hierarchy of bubbles, comprising the steps of:

   first locating the medial axis of the object and

   then creating a hierarchy of bubbles on the medial axis.

Claims 2-4 recite both top-down and bottom-up procedures for creating the bubble hierarchy. Claim 2 is directed to the top-down procedure:

2. The method of Claim 1 wherein the step of creating the hierarchy comprises a top-down procedure of:

   first placing a root bubble which is centered at the center of gravity of the object and has a radius equal to the maximum distance from the center of gravity to the contour of the object;

   next, if the medial axis has a plurality of branch lines, placing a plurality of first successive bubbles each of which encompasses a distinct part of the object which is described by one of said branch lines; and

   then successively dividing each line of the medial axis into two new line parts and placing a pair of next successive bubbles each of which encompasses a distinct part of the object which is described by one of said new line parts.

Claims 3-4, by contrast, are directed to the bottom-up procedure for creating the bubble hierarchy:

3. The method of Claim 1 wherein the step of creating the hierarchy comprises a bottom-up procedure of:

   first representing the medial axis as [sic] large plurality of discrete points;

   next placing the centers of a plurality of lowest level bubbles at said discrete points, where the radius of each bubble is equal to the minimum distance from the corresponding <31 USPQ2d 1757> center point to the contour of the object; and

   then successively creating new bubbles by merging the smallest bubble remaining with its smallest neighbor(s) to create a new bubble and repeating this step until only one root bubble remains.

4. The method of Claim 3 wherein two old bubbles are merged to yield a new bubble in accordance with the formulas: [Formulas omitted.] <3 F.3d 1358>

   wherein r1 and r2 are the radii of the old bubbles, j is the distance between the centers of the old bubbles (x1,y1,z1) and (x2,y2,z2) are the coordinates of the center of the old bubbles, r ‘ is the radius of the new bubbles, and (x ‘,y ‘,z ‘) are the coordinates of the center of the new bubble.

Claim 5 is directed to a machine:

5. A machine having a memory which contains data representing a bubble hierarchy generated by the method of any of Claims 1 through 4.

Claim 6 is directed to a data structure:

6. A data structure generated by the method of any of Claims 1 through 4.

The court found with respect to claim 1 that the steps of “locating” a medial axis, and “creating” a bubble hierarchy “describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic “abstract idea,” and therefore not statutory under Section 101.

On the other hand, the Federal Circuit found claim 5 patentable:  “Claim 5 is for a machine, and is clearly patentable subject matter” over the objections of the USPTO Board of Appeals that the grounds it was indefinite under 35 U.S.C. Section 112, second paragraph. The Federal Circuit, however, found that claim 5 satisfied the Amgen test: “It covers any machine (presumably including a known computer) having a memory which contains any data representing a bubble hierarchy determined by any of the methods of claims 1-4.” As pointed out by the court, the Board considered claim 5 to leave unclear and unexplained how a memory is made or produced by the steps of generating recited in claims 1 through 4: “The broad exercise of geometrically representing the shape of an object with a hierarchy of bubbles on the <31 USPQ2d 1760> medial axis of the object as recited in claim 1 simply does not produce a memory or data in memory  . . .”  The court rebuffed this position:

“We are not persuaded. The ideas expressed in claims 1 through 4 are well known mathematical constructs, and lend themselves to manipulation through known computer technology. There has been no showing that one skilled in the art would have any particular difficulty in determining whether a machine having a memory containing data representing a bubble hierarchy is or is not within the scope of claim 5. The Board’s point, that the claim leaves unclear the technique of how the memory is configured with the data, has no bearing on this issue. The claim plainly covers all such techniques. Whether such a programmed machine is new, useful, unobvious, or otherwise patentable is not at issue in this appeal, and we express no opinion thereon. Accordingly, we conclude the Board erred in sustaining the rejection of claim 5 for indefiniteness.”

As to claim 6, however, the court came to the opposite conclusion in supporting the Board’s rejection: 

 ”The Commissioner is correct. … While the term “data structure” is nowhere defined in Warmerdam’s application, it is clear from its use in the specification that it refers to the ideas reflected in the process of making a bubble hierarchy.8 In IEEE Standard Computer <3 F.3d 1362> Dictionary (1991), the phrase “data structure” is defined as “ [a] physical or logical relationship among data elements, designed to support specific data manipulation functions.” (Emphasis added). Since the “data structure” of claim 6 is nothing more than another way of describing the manipulation of ideas contained in claims 1-4, it suffers from the same fatal defect they do.

Warmerdam’s reliance on Bradley, 607 F.2d 807, 202 USPQ 480 (CCPA 1979), is misplaced. The “data structure” at issue in that case was a physical, interconnected arrangement of hardware and thus embraced by the term “machine”. Id. at 812-13, 202 USPQ at 486. The same cannot be said of the data structure that is at issue in this case. Contrary to Warmerdam’s assertion, the phrase does not imply a physical arrangement of the contents of a memory. Thus, Bradley is inapposite.”

The above quoted passage from In re Warmerdam supports the notion that the concept of data and data structures can exist both as disembodied abstract ideas or as embodied physical implementations, one falling outside and other inside Section 101.  I think the court got it right in this case.

So, practicioners would be well advised to keep in mind what form of data they are talking about, and stick to reinforcing that they are discussing physical forms of data if that is the result they are looking for.  In future postings I will examine the notion of abstract vs. real data again, and provide more insight on how to avoid the pitfalls of confusing what the abstract with the real.  In addition, we will dive back in again on the notion of data representing “real” or purely “abstract” entities, and how that has played out in past decisions or may play out in future decisions.

USPTO to Propose New Three Track Examination System — FINALLY!

Thursday, June 3rd, 2010

Today the Wall Street Journal reported that the U.S. Patent & Trademark Office will propose a three-track patent examination system to allow patent applicants to pay an additional fee “to jump to the front of the line and receive expedited reviews.”  According to the article, the USPTO has not decided how much expedited processing would cost.  The middle track of the three-track system would be similar to the current examination system.  “The slowest track would allow companies and inventors to pay a smaller fee and essentially park their applications for up to 30 months before patent examination begins.”

This option was essentially available under the old rules by filing a petition to make special.  The previous USPTO administration then made the requirements to petition so onerous that it was all but unavailable to applicants.  Hats off again to Director Kappos and Commissioner Stoll.  A little common sense goes a long way.

Are New Zealand Software Patents Going the Way of the Dodo Bird?

Wednesday, June 2nd, 2010

While the EPO Board of Appeals was busy repelling an obstensible attempt to roll back patent protection for software in Europe (see my May 30 posting) the anti-sotware-patent forces were busy at work in New Zealand.  According to a recent account, a bill pending to update the New Zealand patent statute has now been amended to contain a provision to essentially bar patent protection for software.  The bill does contain however an exception, allowing patents for software “embedded” in a device.  Also, I understand that if you have a software patent currently pending in New Zealand it will not be affected by the proposed change in software patent eligibility — i.e. pending and issued patents will be grandfathered in.

Jim Hallenbeck (Schwegman, Lundberg & Woessner, PA – jhallenbeck@slwip.com), who has been following the developments, reports that efforts are under way by some New Zealand software companies to block or modify this proposed provision.