One month after our last check into Oracle Corporation, IPWatchdog is back to see how the database management system developer has been faring at the U.S. Patent & Trademark Office. Along with database management, the technology developer is also involved with the innovation of enterprise resource planning, supply chain management and customer relationship software.

Many of the recent patent applications filed by Oracle and published by the USPTO showcase the company’s focus on providing software business solutions. These patent applications seek protections for improvements to enterprise software, including voice control and more efficient upgrades for enterprise planning and management software. Another application lays out a system of smart allocation for resources within a supply chain.

Oracle is also involved with efficiency upgrades to enterprise software, especially those that would benefit small businesses. Another patent application filed by Oracle would improve the reaction time for queries registered within a Model-View-Controller online database application. An official patent awarded to Oracle this month provides a better deployment model for small firms who manufacture and sell software applications.

While the Supreme Court has done away with the “useful, concrete and tangible result” test from State Street Bank v. Signature Financial, in Bilski v. Kappos, 8 out of 9 Justices (i.e., everyone except Justice Scalia) signed onto an opinion that recognized that the patent claims in State Street displayed patent eligible subject matter. Indeed, the dissenters in Bilski specifically acknowledged that the claims at issue in State Street did not deal with processes, but dealt with machines. See Footnote 40 of the Steven’s dissent.

The import of this is that machines are specifically patent eligible subject matter, so if the claims of State Street are to machines then claims that are similarly configured would also be directed to machines and therefore patent eligible. So if the systems claims at issue in CLS Bank v. Alice Corp. are configured similarly to those that now stand invalid that would mean that Judges Lourie, Dyk, Prost, Reyna and Wallach have ignored the Supreme Court. Any fair comparison of the claims, as shown below, demonstrates this rather conclusively.

Similarly, the United States Supreme Court famously ruled in Diamond v. Diehr, that the United States Patent and Trademark Office inappropriately rejected claims to a computerized process for molding raw, uncured synthetic rubber into cured precision products. Ultimately, thanks to the decision of the Supreme Court the inventors, Diehr and Lutton, received U.S. Patent No. 4,344,142. If the claims in Diamond v. Diehr are similar to those that now stand invalid that would be further proof the Federal Circuit as a whole has ignored the Supreme Court.

By now most are likely already familiar with the unfortunate reality that the United States Court of Appeals for the Federal Circuit issued a non-decision in CLS Bank v. Alice Corporation on Friday, May 10, 2013. There were 10 judges who heard the case en banc, with 7 of the 10 finding that the method claims and computer-readable medium claims were not patent eligible. While there may be reasonable room for a difference of opinion relative to those claims, it was the system claims that specifically and clearly recited tangible structure that has thrown the patent law of software into such disarray. 5 Judges would have found that the systems claims were patent ineligible (Judges Lourie, Dyk, Prost, Reyna and Wallach), and 5 Judges would have found the systems claims were patentable subject matter (Chief Judge Rader, Judges Newman, Moore, Linn and O’Malley). For more see Federal Circuit Nightmare in CLS Bank and 5 CAFC Judges Say Computer Patentable, Not Software and Did the CAFC Ignore the Supreme Court in CLS Bank?

Today, however, I want to write about one of the more bizarre passages I have ever seen in any decision, and then pose an almost unthinkable question: Is IBM’s Watson still patent eligible in the view of Judges Lourie, Dyk, Prost, Reyna and Wallach?

First, let’s start with the passage. Judge Lourie, who was joined by Judges Dyk, Prost, Reyna and Wallach, actually wrote: “At its most basic, a computer is just a calculator capable of performing mental steps faster than a human could. Unless the claims require a computer to perform operations that are not merely accelerated calculations, a computer does not itself confer patent eligibility.”

UPDATED 5/12/2013 at 3:31pm

In what can only fairly be characterized as utterly ridiculous, 5 of the 10 judges on the Federal Circuit to hear CLS Bank v. Alice Corporation en banc would find that claims that satisfy the machine-or-transformation test are not patentable. While I think it is inappropriate to find the systems claims patent ineligible that isn’t what makes the decision utterly ridiculous. The decision is an embarrassment because 5 other judges would have found the systems claims patent eligible. Thus, we have an even split of opinion at the Federal Circuit.

The Federal Circuit decision in CLS Bank v. Alice Corp. is now being horribly mischaracterized in the media, which will now only further complicate the matter in the court of public opinion. This decision offers no precedent whatsoever regarding systems claims because it was a tie. Alice Corporation loses the systems claims not because that is the law of the land announced by the Federal Circuit, but rather because a single district court judge determined that the systems claims were patent ineligible. Had that same district court judge found the systems claims patent eligible then Alice would have prevailed.

In other words, the Federal Circuit is essentially abdicating its authority relative to whether systems claims are patentable to the district courts and presumably also to the Patent Trial and Appeals Board at the United States Patent and Trademark Office. Whatever the district court or PTAB does is just fine. Well, not quite.

UPDATED: 2:07pm ET

Well, the United States Court of Appeals for the Federal Circuit sort of decided CLS Bank v. Alice Corporation earlier today. Truthfully, all the important questions that we thought might be answered remain completely and totally unanswered because there were only 10 judges who sat on the en banc tribunal and no more than 5 judges signed on to any one opinion.

The only thing we know is this — the Federal Circuit issued an extraordinarily brief per curiam decision, which stated:

Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101. An equally divided court affirms the district court’s holding that the asserted system claims are not directed to eligible subject matter under that statute.

Thus, all of the asserted claims are not patent eligible. At the moment I am completely flabbergasted and don’t know what to say.

Senator Birch Bayh (right) with then Staffer Joe Allen (left) in a Bayh-Dole Act hearing in 1980.

Really? I find it impossible to believe that a magazine that purports to be a journal of technology commercialization would publish the complete and utter nonsense that I read this morning.

Newsflash… Bayh-Dole is objectively positive and has been extraordinarily successful in its mission. The FACTS are overwhelming. Anyone who suggests Bayh-Dole is anything other than successful beyond anyone’s wildest dreams is simply not being honest and is ignoring factual evidence. Indeed, detractors frequently make arguments that fly directly in the face of facts. Many believe they simply lie or make up what they are saying to forward their own agenda.

One of the central policy issues injected into the current case of AMP v. Myriad Genetics is whether the BRCA patents are good for innovation and ultimately for patients.  Specifically, ACLU and PubPat allege that the patents have hindered research, blocked innovation, and harmed patient access to BRCA testing.  No matter how many times these allegations are repeated, all available evidence shows concerns over research and innovation to be unfounded.  More importantly, two natural experiments give us an opportunity to evaluate actual patient access to testing, the ultimate measure of whether the patents are doing their job of incentivizing delivery of new technology to the public.  Both of these experiments show that exclusive licensing of strong “gene patents” not only does not harm patient access to quality testing, but is instead vital to it.

In the impassioned words of Linda Bruzzone, a Lynch syndrome mutation carrier and head of Lynch Syndrome International:  “Many of us with Lynch Syndrome wish there had been a patent in place for us. It would have protected us and perhaps protected the lives of our loved ones.”  L. Bruzzone, Oral Comments at USPTO Public Roundtable on Genetic Diagnostic Testing (January 10, 2013).

International Business Machines Corporation of Armonk, NY, is a technology development and consultant agency that provides information technology for business solutions. IBM is a huge player in the world of technology research and development, and the company currently has the distinction of being awarded the most U.S. patents every year for the past 20 years, according to business publication Bloomberg. These factors make IBM a major focus for IPWatchdog, as we continue our regular series of following U.S. Patent & Trademark Office publications regarding American technology firms. See Companies We Follow. 

Within the past month, many IBM patent applications published by the USPTO show a desire to improve multimedia experiences on many computer devices. Patent applications filed by IBM include systems for improving secure access of licensed content and another providing a more viewer-responsive experience for watching live events.

IBM is still heavily involved with the development of business applications for computer systems. To that end, the company has filed patent applications for a system of capturing the workflow process of an employee accessing project software. Another application creates a visualization of temporal event data to aid in medical diagnostic processes. One official patent awarded to IBM protects a system of providing feedback to publishers from their subscribers.

Complete file histories courtesy of The Patent Box.

The Intellectual Property Owners Education Foundation currently has an open Call for Nominations for the 40th Annual Inventor of the Year Award. Nominations are due by May 15, 2013, and the winner (and the nominators) will be honored on Monday, December 10, 2013, in Washington, D.C. at a gala event. Last year the awards ceremony was attended by approximately 300 people, with the event being held in the old Patent Office building in Washington, DC, which is now home to the Smithsonian American Art Museum and the National Portrait Gallery. In my opinion, the IPO Inventor of the Year award ceremony is one of the best events our industry hosts, and one I look forward to every year.

The purpose of the award is to increase public awareness of inventors and how they benefit the nation’s economy and our quality of life.  To accomplish this goal the IPO Inventor of the Year Award recognizes the most outstanding recent inventor (or inventors in the case of joint invention). Thus, nominations are being solicited from independent inventors, as well as inventors employed in industry, universities, and government. While some of the material you may have read indicates that the invention must be U.S. centric, inventions originating outside the U.S. are eligible for the award.

If you do decide to nominate someone keep in mind the invention must be of recent vintage. This is not a lifetime achievement award as would be the case with the Inventors Hall of Fame, for example.

Microsoft Corporation, headquartered in Redmond, WA, is an American leader in developing and manufacturing computer services products, including Microsoft Office document software suites and Microsoft Windows operating systems. As a leader in the computer services market, Microsoft is a regular each week at the U.S. Patent & Trademark Office. This week, we return to see what the Washington State-based technology juggernaut has been up to lately.

As always, many patent applications show Microsoft’s focus on improving their software for business applications. Different Microsoft patent applications this week provide for systems of sharing meeting notes within office software, mapping identities to keep important business documents secure as well as using serious games to identify talent within an organization.

Other USPTO documents of note show that the computer developer is also trying to reach beyond this market. Another patent application would protect a system of creating digital memorabilia for events. Also, one patent awarded to Microsoft protects a system of identifying different users on a touchscreen.

Complete file histories courtesy of The Patent Box.

Mehmet Oz, M.D. is taking the fight to the scam operators who have been duping the public using his good and extremely popular name. Indeed, the two-time Emmy Award-winning, nationally syndicated daytime series The Dr. Oz Show is launching an aggressive campaign to stop illegal use of the Dr. Oz name, image and show. This campaign dubbed “IT’S NOT ME,” began Monday, May 6, 2013.

As you may be aware, over the past several years the Internet has become overrun with advertisements featuring one or another product allegedly endorsed by Dr. Oz. On Monday Dr. Oz told viewers that he endorses none of these and he is going to fight to take back his name.

“Today I am taking back my name and protecting my viewers from people I consider dangerous, who try to mislead you into buying products I don’t endorse,” Dr. Oz told the audience. “Anything you see on this show is part of a conversation I am having with you about your health. We are always transparent about our trusted, official partnerships and a full list of these partners is available on our website.”

Design patents have been making the news.  Last summer, Apple’s $1.05 billion verdict against Samsung was famously based, in part, on the finding that Samsung infringed Apple’s rounded-rectangle and edge-to-edge glass designs.  Since then, Yamaha, Thule, Oakley, Nike and Spanx, to name just a few, have litigated in the U.S. over the design of headphones, ski racks, sunglasses, footwear and women’s undergarments.  And just last month, former head of the USPTO, David Kappos, published an OpEd piece describing design as “the new frontier of intellectual property.”

Nothing has fundamentally changed about the nature of design patents.  The first US design patent was granted in 1842.  The Statue of Liberty, Coke bottle, Volkswagen Beatle, Stealth Bomber and Star Wars’ Yoda are all protected by design patents.  Design patents have long played an important role in consumer electronics, automotive, apparel, jewelry, packaging and other industries.

But industrial design is becoming increasingly important, Mr. Kappos explains, because the increasing functionality of man-made devices brings with it increasing complexity, so innovative companies are constantly seeking superior designs, a convergence of form and function that helps make the complex simple and sets their companies apart; and protecting such designs is critical.

The National Press Photographers Association (NPPA) recently announced that it is joining the other cast of characters who have filed a class action complaint against Google, claiming (as the other plaintiffs have) that Google’s “Google Book Search” program violates the copyrights of several photographers and visual artists. The other plaintiffs include individuals Leif Skoogfors, Al Satterwhite, Morton Beebe, Ed Kashi, John Schmelzer, Simms Taback and Gail Kuenstler Living Trust, Leland Bobbe, John Francis Ficara and David Moser, and associations The American Society of Media Photographers, the Graphic Artists Guild, the Picture Archive Council of America, the North American Nature Photography Association, the Professional Photographers of America, and American Photographic Artists.

So what brought on this class action suit in the first place?  Well, it would seem that whenever someone conducts a search using the Google Books program, that search brings up images that are contained in both books and periodicals–images that are copyright protected. And apparently, this isn’t the first time Google Books has been under fire in litigation–even the writers of some of the books and periodicals that come up when using the search have also claimed copyright infringement.

On March 25, 2013, I spoke on the record with Eric Gould Bear (left) about all things software, from designing software, to drafting patent applications to litigating. Bear is a successful inventor with over 100 patents and patent applications to his name and a testifying expert witness. He has worked with numerous Fortune 500 companies and has a unique perspective of expert, creator and fan of those who innovate in the software space.

In Part I of our interview, titled Designing Into the Path of Disruptive Technology, we discussed the journey from ideas to designs that establish a technology platform. In Part II, titled Software Patents: Drafting for Litigation and a Global Economy, we discussed (among other things) the unfortunate reality that the top technology innovators simply won’t listen to licensing overtures unless they are first sued. In the final segment, Part III, which appears below, we conclude our discussion of litigation, discuss working with patent examiners and then end with a discussion relating to the reality that an engineering mentality is very different from an experience design mentality, at least relative to development of software.

Saeilo Enterprises, Inc. (Saeilo), current maker of the Thompson machine gun, sometimes referred to as a “Tommy gun,” recently filed a lawsuit claiming trademark infringement against liquor company, Alphonse Capone Enterprises, Inc. (Capone).  At issue is the fact that Capone has been selling a new brand of vodka under the Tommy Guns name in a 19-inch bottle that is shaped like a Tommy gun.

In 1994, Kahr Arms (Kahr), a division of Saeilo Enterprises, Inc., was formed and five years later in 1999, Kahr bought Auto-Ordinance, the original manufacturer of the well-known Tommy Gun firearm. Additionally, Saeilo also owns the TOMMY GUN trademark for firearms, and the trademark has been used constantly since 1920.  The company is also the owner of a separate TOMMY GUN trademark that covers clothing.

The Complaint

The complaint, which was filed in Illinois, specifically alleges that Capone, an Illinois corporation, did not have authorization to use the Tommy Gun trademarks on alcoholic beverages that carry a reproduction of the Tommy Gun marks. Additionally, Saeilo claims that Capone’s infringement not only violates federal trademark law, but also Illinois state law and common law.