Intellectual Property Directions

During the Cold War era, the United States and Soviet Union engaged in a game of nuclear chicken called MAD, Mutual Assured Destruction. Essentially the doctrine said that the two superpowers realized that each had such large nuclear stockpiles that any preemptive attack would be tantamount to suicide. For smaller nations, the implicit threat was that a first strike would be assured destruction for them, without the “mutual” part. In the IP world, we call MAD a “defensive patent strategy”. With an appropriately designed, strong patent portfolio, anyone who tries to sue you for infringement is probably infringing your patents, so you both stand down and don’t actually end up in court.

Happily, the Cold War is over and MAD is gone too (at least as a stated policy). However, on April 17 Twitter posted their new “Inventor’s Patent Agreement” which is really not much more than a statement that they will utilize a purely defensive patent strategy. Their blog post suggests that they are eschewing offensively asserting their patents against alleged infringers because they don’t want to stifle innovation; in reality, given their dominance in their social media niche, NOT going after alleged infringing competitors unless sued for infringement gives them a license to steal any small competitor’s ideas without much cost to their business.

How so? First let’s posit that in the short text message space – or whatever tweets are – Twitter has a first mover advantage so large as to become nearly impossible to unseat. Unlike hardware or software products, social media products have a tipping point or critical mass after which competition is almost useless. Unlike hardware products, where what coffee maker I use has almost no effect on your choice of a Kurig or Mr. Coffee, your choice of social media tools  is very much affected by what social media I use… or more to the point, what social media most people you know use. If you “short message”, you tweet; if you want to share your life, you use Facebook.

Second, let’s posit that anyone trying to out-twitter Twitter is likely to infringe some Twitter patent, even as they perhaps add some interesting feature on top of Twitter’s IP. And if they don’t infringe, they probably come close enough that it would not be a frivolous suit if Twitter sued.

SO, what do you do if you are Twitter and a startup, Quacker, has developed a novel and interesting addition to tweeting? Do you pull out your patent suite and use it offensively (and look like an ogre)? NO, you copy their novel and interesting addition, taking away any competitive advantage it might have given little Quacker before more than a handful of tweeters become quackers.

And what if the interesting addition is patented by Quacker? You don’t care(!) since if they try to sue you then, well, your Inventor’s Patent Agreement says you’ll only use the patents “defensively” to deflect patent suits. Out come all those defensive patents which just happen to be able to crush Quacker, so they’ll cross-license with you…but you’re “paying” with the patents you were letting them infringe for free anyway.

The bottom line for Twitter is that they have turned potential competitors (innovators) into an unpaid R&D source. By letting them infringe, Twitter loses very little because of the critical mass nature of social media; by copying the innovators’ innovations, Twitter removes any competitive advantage the potential competitor might have developed; by having a “defensive” strategy, Twitter can position itself as a “good guy” even as it holds its WMD’s over the heads of the little guys.

The lesson for the rest of us… if you are not in the social media space, think twice about forswearing the offensive use of your patent portfolio since your customers are unlikely to have “brand loyalty” if your competitors have a better/faster/cheaper product. And if you are in the social media space, well, don’t try to compete with Twitter unless you are very, very good.

The story of Prometheus proves that bringing good things to mankind may not always have a good payback. In case you forgot, the Greek Titan Prometheus stole fire from Zeus and gave it to us mere mortals. Zeus punished him for his crime by having him bound to a rock while a great eagle ate his liver every day only to have it grow back to be eaten again the next day. While Prometheus the Titan’s crime might have been clear, not so with Prometheus Laboratories, whose patent on certain diagnostic blood tests might or might not have been patentable.

Prometheus Labs has had its patent eaten and regrown at least twice. However, with a Supreme Court ruling it seems the cycle is finally over (at least for Prometheus). For the rest of us, the Supreme Court’s invalidity ruling for Prometheus raises significant questions about the value of investing in certain types of research activities.

To put the case in a nutshell, Prometheus discovered/observed/researched that the lowest effective dose of a particular class of drug could be determined by the level of its metabolite (the product that remains after the drug is broken down by the body) measured in the blood. Their patent claim(s) essentially said “administer the drug to a patient and determine from a blood test if the metabolite is within the desired range”. From the perspective of the Supreme Court, these claims were nothing more than a statement of a law of nature (that the body produces the metabolite in proportion to how effectively it uses the administered drug) along with the instruction to observe nature in action. And, since laws of nature are not patentable, Prometheus lost the right to keep others from selling competing test kits. Note that the test kits were not patented, just the use of the kits to guide doctors in determining the proper dosage.

This ruling is important to the rest of us because the basis for invalidity was that the invention was ruled “not patentable subject matter”. To the Supreme Court the patent was the equivalent of saying “put more wood on the fire if you’re cold, break the fire apart if you are too hot.” Basic law of nature; more fuel equals hotter fire, less fuel equals cooler fire.

But this perspective is flawed, since it presumes that coming up with the acceptable range of the measurement has no inventive, patentable value. But saying that the acceptable range has no patentable value is really an issue of obviousness – just like knowing when to throw wood on Prometheus’s gift to man is obvious. The Supreme Court said “we don’t care how hard it is to come up with the right limits to make this a medically valid test. The Constitutional directive to reward inventors and discoverers of advances to the useful arts will not be applied to tests like this“.

We all may suffer from this ruling. How many research dollars will flow into medical tests that are simple to perform but whose diagnostic value comes from knowing how to interpret the results?

The validity of Prometheus’s patent should have been determined by obviousness, not by subject matter. If measuring the single metabolite in a hundred patients was all that was needed, then maybe it’s obvious. If figuring out which metabolite to measure, out of a hundred in the blood stream, was required, well, maybe not so obvious.

How about your company – how much of your value comes from a key bit of hard won knowledge? Are you the next company to have your liver eaten?

What does my daughter’s blog post of a raspberry goat cheese brownie recipe have in common with getting a valid patent? Too many calories? No, but her recipe (invention) was based (an advance in the state of the art), with attribution, from another source (prior art). So too with many inventions; in fact most patents are granted on improvements on existing technologies and are not total new, world-changing technologies. And it is left to the patent examiner, or maybe a court, to determine if the invention is anticipated or or obvious in light of the prior art.

One truly fuzzy area are inventions that  involve ranges of one or more parameter values (bake for 45 to 55 minutes?); often the prior art will describe a very broad parameter range while your invention claims a narrower sub-range (bake for 50 minutes) or a range that is just outside the prior art range (bake for 55 to 60 minutes). In such cases you must be very careful to point out in your specification the considerations that make your invention novel and non-obvious.

In a recent Court of Appeals decision - ClearValue, Inc. v. Pearl River Polymers, Inc. – ClearValue tried in vain to claim that their process, which applied to  ”water of raw alkalinity less than or equal to 50 ppm” was NOT anticipated by a prior patent that applied to water of raw alkalinity of “up to 150 ppm”. To bolster its argument, ClearValue pointed to a previous case (“Atofina”) decided by the Court in which the prior art described a process that operated from 100 ° C to 500 ° C but the new, claimed reaction operated in a range between 330° C and 450° C.

The Court rejected ClearValue’s argument by pointing out several differences between the prior case and this one. First, although both new inventions operated inside the prior art’s broad range, ClearValue was claiming a full 33% of the prior art range whereas in Atofina the new claim covered at most 20% of the prior art range and preferably only 12.5%.

Second, and more importantly, in Atofina’s specification they showed that the claimed temperture range [between 330° C and 450° C,” and more preferably at a temperature between 350-400 °C] was critical to the reaction and that the reaction did not work at below 300°C. ClearValue could  not argue that their 50 ppm maximum limitation was “critical,” or that the claimed method works differently at different points within the prior art range of 150 ppm or less.

Finally, the real nail in ClearValue’s argument is that the prior art actually gave an example using a raw alkalinity of 60-70 ppm, showing that ClearValue’s 50 ppm limitation had no relationship to the operation of the process.

The take away from ClearValue’s situation is that it is important to explain in your specification why your narrower or adjacent parameter range makes a difference - demonstrate, for example, that the process or apparatus performs differently at different points within the prior art’s broad range. And the narrower your critical operating range is, relative to the prior art’s range, the better off you are. And if you can demonstrate that your version of the process or apparatus doesn’t perform as expected outside your narrow range you can argue that the prior art could not have enabled your invention in its broad range.

How long is a string? One of the basic rules of patent claims is that they “must particularly point out and distinctly claim the invention.” So when a client of mine showed me US Patent 6337083 with wildly indefinite claims and wanted to know why he couldn’t make similar open-ended claims, I could only advise two things: first, getting a patent with unenforceable claims is a waste of money and second, that patent was issued in the “bad old days” when the patent examiners messed up in totally different ways than they do today!

The “invention” in the patent is supposed to be a “method” of taking a pill that makes it easier to swallow. The “method” is to take the pill with a substitute for water – the substitute having a number of physical properties that help sweep the pill off your tongue and down your throat.  So far, so good. If an inventor has developed a unique, specific liquid, or a unique, identifiable class of liquids that indeed makes getting a pill down easier, he or she should be able to get a patent on this “composition” so he or she can control who can make, sell, use, etc.

Unfortunately, the inventor doesn’t have a definable invention. Claim 1 reads:

1. An oral delivery composition for facilitating the swallowing of a solid object by a user, the oral delivery composition comprising:

a mixture of a base liquid and at least one additive, wherein the at least one additive is selected and is present in the oral delivery composition in a sufficient concentration such that the oral delivery composition has the following properties:

(1) a density that is greater than the density of the base liquid,
(2) a surface tension that is less than the surface tension of the base liquid,
(3) a viscosity that is greater than the viscosity of the base liquid,
(4) a wettability that is greater that the wettability of the base liquid,
(5) a lubricity that is greater than the lubricity of the base liquid, and
(6) a lower interfacial tension than the interfacial tension of the base liquid,

such that when the oral delivery composition and the solid object are administered together to a user and swallowed, the solid object is less likely to become lodged or stuck on tongue, throat, palate or esophageal surfaces of the user, in comparison to when the base liquid and the solid object are administered together and swallowed. [Emphasis added]

So what is wrong here? Plenty! Each of the bold-face statements is indefinite: that is, I don’t know where the limits are. What are the properties of a liquid that makes it a base liquid? If we look to the specification to see if it is defined there we find that “It is preferred that the base liquid …  be water, although any [emphasis added] other consumable liquid can be used.” So if I mix something with water and have a consumable liquid, isn’t it a “base liquid” since every consumable liquid qualifies! But if I mixed something into the water, wasn’t that “a mixture of a base liquid and at least one additive”? How do I know which mixtures are making the invention and which are just making new base liquids?

Then, of course, we get to properties 1 through 6. Each property is an unlimited comparative – “greater than … the base liquid”, “less than…the base liquid”, “lower … than the base liquid”. I need to know how much lower, greater, or “less than” will get me into infringing territory. Imagine driving down a road and seeing a sign “No Trespassing – somewhere behind this sign is private property, keep out”. So, if I have the additive and I make a mixture of with 1 microgram of additive to a gallon of water, have I infringed? Surely even the 1 microgram of additive modifies the six properties in the same direction as a  few grams would. And how about the other extreme – suppose I add a kilogram of additive?

Finally, there’s the “less likely to become lodged” – I’m sure you’ve got the picture by now. How much less likely does the inventor think the performance of my composition must be before it infringes (and how do you measure that probability?) I expect the inventor included this performance “test” as a way to justify his lack of specificity of the measurable properties (1) – (6).

This claim and the other independent claims are indefinite, I expect, because the inventor had observed a swallowing phenomenon (that certain thickened liquids made taking pills easier) but didn’t really have a specific and unique invention… so instead he tried to claim everything. Unfortunately, he who claims everything, claims nothing. If you read the specification, you’ll see three example “compositions”. Of the 6 properties the invention is supposed to have, the inventor only measures viscosity. We have no reason to believe that the other 5 specified properties are even met. Basically he’s demonstrating that he can make a thicken liquid.

And if you need more proof that the inventor is trying to claim everything, his first example “composition” is Jello (prepared per package directions) with “two MYLANTA Gas Geltab Dose Maximum Strength tablets” mixed in. The Mylanta, I believe, was included to prevent the Jello from gelling (“The result[ing mixture] was …  was not gelatinous but more viscous than water”).

I’d suggest that if you make a “composition” by using fresh pineapple juice to prepare a package of Jello (fresh pineapple will keep gelatin from setting), the inventor will have a hard time suing you for infringement – but remember, I don’t give legal advice! And if you are tempted to make your attorney file similarly indefinite claims, go take two aspirin (with a non-infringing composition) and call me in the morning.