Today’s Supreme Court ruling against Aereo proves that even the younger Justices don’t “get it”. What is really ironic is that the over-the-air broadcasters will find this a Pyrrhic victory. The Aereo service is used by people who don’t own TV’s (except to use as display devices for their computers, e.g., Netflix) and don’t subscribe to cable – broadcasters (particularly the local stations) have just cut off their best hope for capturing these eyeballs.

And who are these people? The younger generation. Neither of my daughters (~30 years old) have TV’s and, except for special events (e.g., World Cup) have little interest in getting cable. They certainly would not pay for cable to get their over-the-air local stations.

Over the air TV is becoming the Republican party of content delivery – its audience is growing older every day.

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It is easy to focus on a story when it hits the airwaves but it is also important to follow it to its conclusion. If you remember, Tenenbaum downloaded and distributed over 5000 songs before finally being sued. He lost his case and was hit with a $675,000 fine.

As reported by McDermott Will & Emery:

“Following the lead of other courts addressing statutory penalties for illegal music downloading, the U.S. Court of Appeals for the First Circuit upheld a $675,000 fine for downloading and distributing 30 songs.  Sony BMG Music Entertainment  v. Tenenbaum, Case No. 12-2146 (1st Cir., June 25, 2013) (Howard, J.).”

They continue:

The 1st Circuit examined the purpose of the Copyright Act’s statutory damages and Tenenbaum’s behavior to determine if $675,000 met Williams’standard for constitutionality.  The 1st Circuit found that in 1999 Congress increased the Copyright Act’s minimum and maximum statutory awards specifically because of new technologies allowing illegal music downloading.  The record companies presented evidence that Tenenbaum’s activities had led to the loss of value of its copyrights and reduced its income and profits—precisely the harm Congress foresaw.  The Court went on to find that Tenenbaum’s conduct was egregious—he pirated thousands of songs for a number of years despite numerous warnings.  The Court held that “much of this behavior was exactly what Congress was trying to deter when it amended the Copyright Act.”  The 1st Circuit rejected Tenenbaum’s argument that the damages award had to be tied to the actual injury he caused, relying on Williams to find that the damages were imposed for a violation of the law and did not need to be proportional to the harm caused by the offender.

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“Indicate precisely what you mean to say…”

Good advice for letting someone know you’ll still need them when they’re 64. And also good advice when writing up patent specifications. Consider what happened to Clyde Nason when he tried to patent a miniature pump. The heart of the device is a loop of shape memory alloy (SMA) that engages one tooth of a “gear”, as shown in the figure below.  As the SMA is cycled back and forth through it’s transition temperature the loop alternately pulls on the engaged tooth, rotating the “gear”, and extends to engage the next tooth.


SMA motor

So what went wrong?

The examiner went searching for pumps that were driven by SMA material and for rotary gears driven by SMA material and was able to find prior art in both those areas. Voila – Nason’s invention is “obvious” since you can combine these two to get an SMA-driven-gear driven pump, right? Wrong, since, among other reasons, the gear driven by SMA in the prior art was actually a linear rack that rotated a pinion gear…not really applicable to using SMA to directly rotate a gear.

Happily, the Patent Board of Appeals ultimately threw out the examiner’s rejection but could Nason have avoided the extra expense of a appeal?

It’s always hard to predict what motivates an examiner to go off the deep end and make obviousness rejections that make no sense, but the one thing I always like to keep in mind is that YOU are the expert in your particular invention and the EXAMINER doesn’t have the time to dig deeply into your invention…and, frankly, is likely to be a POSITA (Person of Ordinary Skill In The Art) at best. Thus, it is incumbent on you, the expert, to teach the ordinarily skilled examiner about your invention. And the best way to do that is, IMHO, is to be as precise and unambiguous as you can in preparing your patent specification.

In Nason’s case, his choice of the word “gear” to describe the round item with teeth in his pump was a mistake. It is not a gear, it is a ratchet or cogwheel. And the loop of SMA is acting as the pawl to ratchet the wheel around. Had Nason called it a cogwheel and described the action of the SMA as a pawl I expect the examiner would not have searched for gears driven by SMA material. Of course, the real problem here is the appalling (no aural pun intended) lack of mechanical understanding of the examiner, but nevertheless your goal is to get your patent allowed and that is best accomplished by realizing that YOU should lead the patent examiner by the nose, if necessary, to the proper understanding of your invention vis-a-vis the prior art.

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But, apparently, only Monsanto can make Roundup Ready® soybeans. In a decision that is good for patent holders but which stretches the meaning of “making” almost to the breaking point, the Supreme Court ruled that selecting seed that has certain properties is an act of patent infringement. Essentially the Court added a layer of intent (to infringe) over the normal actions of a farmer in growing a crop and retaining a portion of that crop as seed for the next year.

The basics of the case are straightforward. Farmer Bowman purchased soybeans of unknown “parentage” from the local grain elevator. Although those soybeans were meant for consumption, Bowman instead planted them, treated his fields with Roundup weed and grass killer, and harvested the beans from the plants that survived. These harvested beans were then planted again in the spring, and the cycle repeated until Bowman had enough Roundup resistance plants to make a crop.

Had Bowman purchased the Roundup Ready® seed soybeans from Monsanto he would have been required to sign an agreement that he would not retain any of his crop as seed for the next year, but having “found” seeds that were Roundup resistant Bowman argued that he was under no constraint. Needless to say, Monsanto felt differently.

Bowman’s main argument was “patent exhaustion“, the doctrine that says a patentee’s rights to control the sale and use of his invention ends after the first sale. Thus, Monsanto could control by license the terms under which farmers could buy the seeds (including prohibiting them from retaining seed for planting next year) BUT it could not control his use of the soybeans he purchased legally from the original purchasing farmer. Bowman argued that part of the normal use of a soybean is to grow new soybeans and that the sale and use of those new soybeans was outside of the patentee’s control, except through a separate license agreement (which he was not required to sign).

The Supreme Court’s ruling seems based on two principles. First, that growing a soybean plant and harvesting the crop should be considered “making” a soybean, in this case a patented soybean, in the context of the patent law. And secondly the Court seemed to suggest that Bowman was infringing the patent because he intended to end up with a Roundup resistant crop. While I will grant that the latter is probably true I find it hard to find someone guilty of patent infringement based on perceived intent.

As to the former principle, as Joyce Kilmer wrote, only God can make a tree. It seems to me that, intent aside, each of the steps that Bowman took falls within the normal farming operation – buying seed of unknown source, planting and nurturing the crop, fertilizing and applying weeding control, and saving some or all of the crop for next year’s seed. There were no extraordinary steps, no genetic testing for Roundup Ready DNA. In fact, I do not know whether Bowman ever knew he actually had the Roundup Ready soybeans; perhaps he had just luckily stumbled upon a natural genetic mutation that conferred Roundup resistance.

McDermott Will & Emery report in their IP Update, Vol. 16, No. 5, that the Court explicitly indicated that their ruling should not be applied broadly to other self-replicating inventions, particularly where the alleged infringer has less involvement in the reproduction of successive generations of the item. Nevertheless, I see trouble brewing. Biofuel producing microbes must replicate to do their job. What happens when some escape “into the wild” and are collected to make unlicensed biofuel?

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