Posts Tagged “method claims”

While there are many problems with our current patent system, one area that I would like changed is what types of processes qualify as patentable subject matter. As we know, the patentability of software and business methods is fraught with controversy these days. I’d like to throw what I call end-user methods into the mix as well.

My inclination is to look at the purported purpose of the patent system – to reward inventors who help improve society by sharing their inventions – and see which types of processes/methods achieve that purpose. Although it’s not important in this “if I were King” exercise, I like to think this approach harkens back to the Constitutional underpinnings of our patent system, where it is written that Congress can reward inventors for the purpose of “promot[ing] the progress of science and the useful arts”.

Note that the Constitution doesn’t say anything about promoting better business decisions or controlling the actions of individuals who can, with their own heads and hands, engage in an activity.
So how do software, business methods, and end-user methods fit in?

Software: When held up to the template of “Science and the useful arts” clearly some software qualifies and some does not, just as some hardware is patentable and some is not. Thus, I put software into the patentable subject matter category and leave to the examination process what happens to individual applications.

Business Methods: To me, the idea of a “business method” patent is an abhorrence. Transacting business better, faster, cheaper, or whatever is not beneficial to society; it only helps the businessperson make more money. One-click checkout, calculating hedge fund portfolio mixes, etc. are not science nor are they part of the “useful arts” (again, keeping in mind that I am king).  Note that the question isn’t “is this a process”, “is it implemented on a machine”, or “does it transform something”? No, the question is what is the purpose of the process/method; if the purpose is to transact business then it’s not patentable in my book.

End-User Methods: As I’ve discussed in an earlier blog, end-user methods are, generally, processes that don’t “make” anything and that are often performed by the person gaining the benefit of the performance (viz., the end user).  Many of the most laughable patents of recent years are for end-user methods: the method of exercising a cat with a laser pointer and the method of swinging on a swing come to mind.

While those examples are laughable, other end-user method patents cover more serious processes, such as medical procedures. Often these latter patents are a back door way for companies to secure markets for a medical device that otherwise did not qualify for a patent.

There is one more set of “method” claims that I would severely limit. These are methods of doing X, where X is really just using an apparatus, often already claimed in the patent. These method claims are, like the medical procedure patents mentioned above, nothing more than an attempt to provide patent protection for an apparatus that might not be otherwise protected.

Key tip-off words in these claims are “providing” (a such and such piece of equipment), “collecting/recording” (data or information), and “processing” (the data). Steps such as these in a method claim are simply ways to pad out what is really intended: “a method of doing X comprising the step of operating the apparatus described in the patent”. Since that one-step method claim would never be allowed, patent attorneys game the system by breaking the operation of the apparatus down into insignificant steps. They might as well include plugging it in.

That’s what I would do if I were King. How about you?

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If you are like me and maybe 28, 999,999 other US sports fans, you probably were watching the men’s marathon the other night from Beijing. Through the miracle of HDTV you could see the look of exhaustion on the faces of all but the very top finishers. Like most of the runners, patents get exhausted too.

Just as a runner’s legs get exhausted when their owner tries to push them too far, so too a patent is exhausted when the owner tries to claim rights beyond the first sale of the patented invention. In a June 2008 decision, the Supreme Court extended this concept even further, explicitly extending it to methods claims as well as apparatus claims.

The basic concept of patent exhaustion is straight forward; if you, the patent owner, authorize the sale of a product incorporating your patented invention, you no longer have control of the further use or sale of that product. While there are complicating details, the logic of the doctrine is clear; once you’ve gain the benefit of your patent “monopoly” by selling the patented product you’re not allowed to double-dip by, for example, collecting another royalty when your customer resells your product as part of his product.

The particular case involved LG Electronics patents that had been licensed to Intel, who in turn made chipsets that were sold to Quanta Computer. LG had stipulated in its license to Intel that the chipsets were NOT to be combined with non-Intel parts and required Intel to inform chipset buyers of that requirement, which they did. However, LG did not require Intel to explicitly license each purchase with that restriction.

When Quanta combined the Intel chipsets with non-Intel parts, LG sued Quanta. The case progressed through both district court and the CAFC, ending up in the Supreme Court. That Court decided that, by virtue of its license to Intel, LG had authorized the sale of the chipsets to Quanta and that the principle of patent exhaustion applied to both the apparatus and the methods claims in LG’s patents. That the lower courts had felt the principle did NOT apply to the methods claims is hard to understand; however, the Supreme Court has now said explicitly that it does apply.

So if your goal is to have your patent go the extra mile for you, you will have to write explicit licenses to cover your expectations covering the secondary sales and uses of your patent, both apparatus claims and method claims.

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Yes, “methods” are patentable subject matter. And yes, there are many processes that clearly deserve patent protection. But I sure wish the CAFC or Supreme Court would drive a stake through the heart of one class of methods patents and put a stop to the madness. These methods claims cover what I call end-user processes. In many cases this type of patent claim is used as a back door way to get market protection for an apparatus that could not be patented on its own; as such it is a subversion of the goals and intentions of our patent system.

I discussed an example of an end-user process patent in the post Is suing your customers a good idea? The patent in question had only one independent claim which described a medical procedure that could be performed with the assignee’s unpatentable apparatus – or anyone else’s equivalent apparatus. The medical procedure is surely a process or a method of doing something, but is it really in society’s interest to issue patents on a series of steps or activities performed by individuals without any patentable apparatus? Certainly there is a qualitative difference between inventing a better, faster, or cheaper manufacturing process whereby your company can produce a more competitive widget and “inventing” an activity that requires nothing more than human skills (including, perhaps, the skill of manipulating existing equipment) that you or your company does not actually practice and that is practiced by people who might never be your customers.

Our patent system is supposed to be a deal between society and the inventor. We (society) grant a limited time monopoly to the inventor in exchange for the inventor teaching us the non-obvious details of his or her novel invention. Implicit in this deal is an assumption that “non-obvious” and “novel” are somehow universally understood and demonstrable. The problem with end-user processes is that the tests of obviousness and novelty break down.

We test for obviousness and novelty by looking at what has gone before and what other workers in area would typically do. But unlike a process used in manufacture, end-user processes are usually performed by individuals, not organizations, so the motivation to record how activities are performed is low. Do you think your plumber records any “tricks of the trade” he uses for potential patenting? No, a master plumber passes these techniques to apprentices by demonstration. The patent examiner has no insight into this “database”. Only in court can experts testify about what is or is not common practice and by then the anti-competitive damage has already been inflicted on society.

Who files patent applications for end-user processes? All of us! Unfortunately it has become more or less standard practice to file methods claims along with one’s apparatus claims with the clear hope of getting de facto protection for the apparatus even if the apparatus claims are rejected during examination, disallowed later at trial or designed around by our competitors.

The de facto protection occurs when potential manufacturers of competing but non-infringing hardware decide not to enter the market out of fears be being liable for contributory or induced infringement of the methods claims. While the benefit to the inventor of this situation is clear, do we as a society really feel this is a good idea? Do we really want to give an inventor a patent monopoly on an unpatentable apparatus? And what can we do about it?

 

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I was watching a re-run of an old Julia Child show the other day, the one where she demonstrated a method of opening oysters using the pointed end of a “church key” can opener, when it struck me that perhaps Julia should have filed a patent application for “A method of accessing Crassostrea virginica” before taping the show. Then she could have sued any of us who didn’t buy her cookbook!

I was prompted to these thoughts by a patent I read last week. The only independent claim was for a method for performing a particular medical procedure (tracheal intubation). The related apparatus claims had been rejected so the medical device manufacturer was effectively making its potential customers – the doctors who perform this procedure – infringers, hoping to scare off other device manufacturers who could be sued as inducing infringement with their competing apparatuses.

This patent raised two questions in my mind; first, in the global sense, is this type of end-user-method what the Constitution’s framers envisioned as a discovery whose protection would “promote science and the useful arts” and, second, in the narrow sense, is it a good idea to make your customers infringers if they prefer someone else’s product over your (unpatentable) product?

Answering the second question, I think not. Any short term gains you might achieve are likely to create hard feelings in the long run and predispose your customers to buy other products from your competitors. In the particular situation I was looking at, the un-patentable apparatus has non-infringing uses so the competitors can and will be selling the apparatus to doctors quite innocently. Just like Julia’s church key.

The competitors will not have to induce infringement since the doctors are going to figure it out all by themselves. How? Any advertising by the patent holder to sell its apparatus to perform the patented method will inherently make it clear that anybody’s apparatus will work just fine. The competitors don’t have to say a word.

So having spent thousands of dollars for this patent (they seemed to have dropped their European applications after the search report found “no inventive step” for either the apparatus or the method) the patent holder now only has its customers to sue for infringement – something I assume neither they nor Julia would be silly enough to do.

 

 

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