End of Semester Course Reflection

It is the final IEOR 190G assignment. As I celebrate the coming end of “homework-cramming” Friday nights, I also begin to already miss the “haha” moments of silly patents, of the slide to unlock;  and the “ I wish I knew more” moments of Samsung-Apple patent war, of the patent trolls, and etc.   

This course have been valuable in two ways. First, it helps me to build a foundation for understanding Intellectual Property Laws, particularly in  patent laws. We begin the course with looking at Top Ten Inventions. Through which we learned the importance of inventions and the notion that all inventions were essentially rebuilding from the previous inventions. These concepts provide a context through which we learn the Patent Laws. Then, we learned about basics of the Patent law by reading the actual patents. Two ideas that were emphasized are “non-obviousness” and “novelty,”  which are standards that play critical roles in  determining whether patents can be granted. Having gained the basic conceptual knowledges of the patent laws, we began explore patent marketization and issues such as patent trolls. This class studies patents from multi-perspectives without digging too deep into the technicalities. Overall, I am satisfied with the contents for this class and I think they provided me with a basis for understanding all issues regarding patents when these issues show in news or works.

Aside from the patent knowledges gained, this course has also helped me to grow personally. First,  I learned how to work with vague questions. In my past learnings, particularly in science or math courses, I have always been asked specific questions that have decided answers. Consequently, I get easily frustrated when the question is vague. Through taking this course, I practiced formulating questions to answer for my weekly blog. I think this skill is important because once I get out of school, I will have less and less specific questions. Instead, I will need the skills to figure out what’s important to answer. Second, I really don’t like speaking in front of camera. I probably would have never uploaded videos if I did not need to. This course has pushed me to try something new.

IEOR 190G has been one of the most rewarding classes that I have taken at Cal. Yes, there are pains, especially during the Friday nights. But looking back, it has been a fun journey of Patent Law learning and personal growth.

Collaborative Learning with Social Media

Internet community expand at an incredible speed everyday. For most people, the internet seems merely a “read-only” place. It seems more like an invitation to consume than an invitation to participate. The distance between the user and the the information given through the internet is so great that sometimes we don’t even know what the program we are using for. For example, most of us see Facebook as a place to make friends, but Facebook is probably thinking of how to monetize its users’ social profiles. Similarly, internet disrupts education from the perspective of a consumer than to the content provider. Most people use internet to find information. In contrast, very few individuals write about what he/she knows and distribute information. I learned how to use Google in the elementary school, but have not written a blog or made a video until having taken this course.

The danger of living in a “read-only” world is that we become passive learners who take information as are given. But Internet, unlike traditional libraries, involves participants behind scene and can be much more. This course has taught me that the internet community is not a “read-only” place. Instead, it is “read-write” community. Every blog post assignment involves reading information online, reflecting and writing, and the posts being evaluated with comments. This cycle creates a vibrant peer to peer cultures of learning. More importantly, this culture will foster the creation of an independent learner, a learner who can adapt to changing contexts by engaging the internet community, a learner who can confidently navigate through the jungle of the Internet.

American Invents Act II

In the previous blog, I talked about what America Invents Act (AIA) entails and also the perceived benefits of AIA. In this blog, I will discuss some of the controversies around AIA.

What are the disadvantages of AIA?  It has been argued that this gives more benefits to the big guy. Why? Because filing patent is very expensive. The big chuck of the cost comes from having a good lawyer to draft the application. Big companies can afford to apply for more patents, and more quickly. On contrary, if you are a small startup with insufficient funds, you simply can’t file patent for every invention or every trivial modifications of the invention. It is suggested that this in term puts the startup at more disadvantaged position because for most startups, their value lies in possessing popular inventions.

Does AIA surely give more benefits to the big guys? I argue that it is not necessary the case. Larger company does more money. But they also have more people creating more inventions everyday. Under the previous system, as long as the big companies invent more, they have claim over more. But with the new system, it is possible that the pace at which they apply for the patents do not follow the pace at which they invent.  On contrary, smaller companies are more agile in identifying which innovations worth patenting and can consequently act quickly to take steps to protect these patents.

America Invents Acts I

Thanks Kasznik for the lecture on “The Role Of Intellectual Property As a Strategic Business Asset” given last Friday. Of the discussions, one topic that I found interesting is America Invents Act (AIA). Kasznik showed a graph on “Patent Litigation across the past 5 years.” The graph shows that patent litigation rose sharply from 2010 to 2013, and declined from 2013 to 2014. Interestingly, AIA went into effect on 2013, the time at which number of patent litigation declined.

Is AIA responsible for reducing the patent litigation? To answer this question, we need to first understand what AIA entails. AIA is a United States federal statute that was passed by Congress and singed into law on September 16, 2001. Its central provision is changing U.S. patent system from “first to invent” to “first inventor to file.” “First to invent” means inventors don’t have to rush to patent office to file for invention because even if someone filed before you do, as long as you have kept lab notebooks and prove that you are the first inventor, you will still get the patent.  “First to file,” on the other hand, means inventors need to race to file their patents as soon as possible because many people do come up with similar inventions and whether you can get the patent depends on when you file for patent.

What are the benefits of AIA? First, AIA aligns the U.S patent system with the international patent system. Second, the act adds greater predictability to determining who has priority to an invention. The switch to “fist to file” modifies the definition of what prior work can be used to deny a patent. By setting a clear boundary of who has patent ownership, the new system reduces litigations on fighting whose invention notebook dated earlier.  

Kirby Ferguson on IP

Kirby Ferguson’s insightful talk on remix challenges the logics behind the patent laws. Using examples that ranges from music to technology, he points out that everything is remix.  In other words, everything is built upon what were previously available. However, the American copyright and patent laws run counter to this notion by giving “property” rights to innovators. Kirby’s talk reminds me of the first assignment that we did for this class. First assignment Top Ten Inventions emphasizes the same theme that everything is a remix. Ubiquitously used wheels and nails provide cases in point. Imagine how much we would need to pay for an iPhone if Apple is required to pay license fees for every component it did not invent itself. 

To challenge the logics behind patent laws is not to say that patent laws are without merit. Some inventions such as medicine development require huge capital investments. If a new medicine is allowed to be freely copied, then everyone will want to free ride and the medicine industry will stagnate. However, if every piece of medicine is patented, then it just increases the inventing cost for the future inventors. When this cost accumulates, it creates a huge entry barrier and can also stagnate the medicine industry. People in the legal field are still searching for the right mix of polices to protect and at same time encourage invention. For such search to be successful, these people need to recognize the nature of all invention is remixing.

Jahanna Blackley on IP

Johanna Blakley gave a very interesting Ted Talk on Lessons From Fashion’s Free Culture. She used fashion industry as an example to challenge some of the common conceptions of IP protections. For one, more protection does not necessarily correlate with higher gross sales. To support her observation, she showed a graph with gross sales across different industries. Interestingly, the gross sales for low I.P protection industries such as fashion and food are much higher that of ones with high protection industries such as book and film. While these differences are probably exaggerated due to different cost and profit calculations for respective industries, I think she nonetheless provides insightful analysis on how low IP protection in fact pushed the designers to innovate more.

Johanna’s search for underlying logic behind things that are copyright protected and those that are not is similarly thought provoking. Two important aspects she found are 1) artistic objects deserve protection and utilitarian objects do not; and 2) idea that needs to freely circulate has no protection while physically fixed expression of an idea do have protection. She has correctly pointed out that in the modern world the boundary between what’s artistic and utilitarian is blurring and the advancement of technologies put everything on digital files. As technology becomes more integrated to our daily lives and works, copyright industry will face unprecedented challenge as many of the current IP laws are defined by physically objects. It is time to revise these IP laws.

Silly Patent #2: High-Five Machine (US 5356330)

In this blog, I consider the economic ramifications for granting patents to inventions that may be novel but very obvious. 

The High-Five Machine is an apparatus, which “allows a user to simulate a ‘high-five’ in celebration of a positive event, thereby providing the user with a convenient outlet for the release of excitement.” The motivation is the observation that people watching sport event along can’t have high-fives. The mechanism is to use moldable plastic or rubber material in shape of an average size human hand to provide a pivotable, self-righting hand-arm configuration for simulating a “high five” when struck by the hand of a user.

The mechanisms of how this High-Five Machine works is very standardized and it should be obvious to person skilled in part, mechanics in this case. However, this patent demonstrates that patent is not all about high-level techniques or new discoveries, it can also include reassembling of previous artisanship with a little bit of creativity.  If the High-Five Machine offers the same excitement outlet as that of human, it could make a lot of money for the inventor. On the other hand, if the inventor charges a very high price for this product, it produces unfair monopoly since the inventor really did not need to do much.

Silly Patent#1: Animal Ear Protectors (US 4233942)

This invention is a device that functions as a protection for animal’s ears from being soiled by the food while the animal is eating. The motivation for this invention is the observation that animals’ hair often gets in contact with food while they eat. Hence, the inventor aims design a device that prevents such contact and at same time is comfortable for the animal to use. The basic mechanism for the device is a tubular shaped plastic sheet that can be opened and closed to allow easy insertion of the animal ear. The ear protectors and animal’s ears are held away from the head of the animal by two straps, one passing above, and one below the head of the animal.

This patent was granted in 1980, and it demonstrates the flaw of the obviousness test. In general, an invention is not obvious if the invention is not obvious to a “person having ordinary skill in art.” The non-obviousness test used in the 1980 is teaching-suggestion-motivation test. This test requires that there be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to fail the non-obviousness test. In 1980, the Internet has not been invented and mass media is not as pervasive as today. Since the use of animal ear protector is trivial, it is unlikely that such method has been formally documented even if the method has been used by some people at home. Additionally, the animal ear protector should be obvious to person skilled in art since horsetail braiding, commonly practice for a long time, has the same effect of separating tail from the horseback. 

Patent Troll #3: Podcasting invented in 2009?

Adam Carolla is a comedian TV personality and was dragged into a software war. He was sued by Personal Audio over infringing a patent the company was granted on March 2009. The patent in question is called a “system for disseminating media content representing episodes in a serialized sequence.” When Personal Audio sued Carolla, it focused on claim 31 of the patent: apparatus for disseminating a series of episodes represented by media files via the Internet as said episodes become available. In other words, Personal Audio is claiming the ownership of the podcast industry, because what claimed in patent can essentially be seen as the definition for “podcast.” Interestingly, Carolla started podcasting in February 23^rd 2009, before the patent was actually issued.  The case was eventually settled between two parties and the settlement is confidential. It is likely that Carolla paid nothing to the Personal Audio. However, we do know that Carolla spent about $675,000 defending the case.

Carolla’s settlement demonstrates the ugliness of the U.S. patent legal system. The motivation of the patent system is to encourage innovation by rewarding innovators a monopoly power for a period of time since inventing is costly and risky. After all, if a medical company’s years of research and investments into developing a new drug that cures cancer can be instantly copied by another medical company once the product succeeds, the first medical company wouldn’t have engaged in the development at all.  However, when a patent is granted over broad and abstract ideas such as the idea of “podcast,” they do more harm than good. This case demonstrates that the problem of “Patent trolls” is serious.  Personal Audio and other patent trolls have a simple business model: collect broad patents that appear to cover some part of an industry, and then they sue everyone, hoping that most companies will choose to pay a settlement over the hassle and cost of lawsuits. 

All in all, we should have legal systems to protect inventors who have put in the hard work to bring to market products that do matter and do better people’s lives. However, in light of patent troll problems, I think other criterions such whether the patent owner is using the patent or/and if the “infringer” is using the patent in a way that threatens the patent owner’s business interest should be considered in verdict decision of whether the infringement has occurred and damage calculation.  

Patent Troll #2: Software Patenting

On June 19, 2014, the Supreme Court ruled on Alice Corporation Pty. Ltd. V.CLS Bank International case that Alice Corp’s patent fails to transform abstract idea into a patent-eligible invention under section 101 of Patent Act and is therefore invalid. This case is important because it sends out a clear message that using a computer to implement an abstract idea does not make that invention eligible for a patent.

Alice Corp. owns patent on a process of verifying payments on a computer.  The company claims it has a patent on using a computer to confirm a financial transaction and says anyone using a computer process to do this should pay the company a fee. CLS Bank, which settles foreign exchange transactions challenged this patent. The U.S Supreme court unanimously sided with CLS. This ruling invalidated a significant number of patents, generally called “software patents”, that are misapplied in the first place.

To understand why this ruling is significant to reduce the impact of patent trolls requires understanding why many software patents are in fact trivial. Software patents differ from other patents in that many software inventions are merely translating practical everyday functions into the computer programs. Some of these practical everyday functions include budget planning or putting items on shopping cart. If the inventors were allowed to claim credit for these overly broad or/and abstract ideas, platform entrepreneurs who enter the game later will have hefty fees to pay. The court's decision effectively prevent the patent system to over-reward easy ideas and generate needless costs on people who do the real work of transforming practical everyday functions into viable platform economy.

Patent Troll #1 Startup Fightback

In this blog, I study patent litigation between Life360 and Advanced Ground Information System (AGIS). Life360 is a Startup company aimed at helping family members to stay connected to each other. It is a mobile-based social network that heavily uses location-sharing applications. AGIS is a military contractor, software developer, and technology company. AGIS has a system called LifeRing, which uses GPS-based location technology and existing cellular communication networks to enable its users to exchange location, heading, speeding and other information with other members of their group, and see each other’s locations superimposed onto onscreen maps and satellite images.

AGIS filed a lawsuit against Life360 in the Southern District of Florida. The patent in question is U.S. patent 7031728, which was filed in 2004. It covers “a cellular PDA communication system for allowing a plurality of cellular phone users to monitor each other’s location and status, to initiate cellular phone calls by touching a symbol on the display.” Both Life360 and AGIS depend on location-based reporting and communication technology, and the question is whether they merely have similar functions or in fact have similar functions based on the same technology developed by AGIS. The Jury sided with Life360 after Life360 spent over $100,000 in assembling all of the prior art to demonstrate that they did not use anything in the disputed patent. 

This case received a lot of attention in the tech community because of Life360’s CEO, Chris Hull’s unswerving attitude in refusing to settle with what he sees as “patent troll.” He claimed that AGIS had no employees on LinkedIn, and a waterfront mansion in Florida as the corporate headquarters. Additionally he advocated start-ups to fight back against patent troll by sharing resources with other victims. He also offered free legal help for other victims sued by patent troll. This case is important because Chris Hull has shown an example of how a start-up can fight against patent trolls.

Obviousness by Robert Green Sterne

The following is a link to the video by Robert Green Sterne
https://youtu.be/k4PbnA99ev4

Robert Greene Sterne, editor-in-chief of Patent Office Litigation and founding director at intellectual property law firm Sterne, Kessler, Goldstein& Fox PLLC talks about the importance of obviousness within patent laws and in the context of newly formed (2012) patent trial and appeal board. In the video, he explains the definition of obviousness in the legal terms and the role that obviousness plays. He predicts that the issue of obviousness will be a central theme in the new contestant proceedings. In other words, the proceedings will second-guess the invention on whether there is enough innovation. He recognizes obviousness is a tricky issue and educates the viewers on procedures by which the inventor should take to make sure his inventions meets “non-obviousness” requirement as best it could. 

Understanding Obviousness: Different Test Standards

For an invention to be patentable, it must meet the requirement of “non-obviousness.” In the general term, an invention is not obvious if the invention is not obvious to a “person having ordinary skill in art.” But is there a systematic way in which we can check the obviousness of the patents? Luckily, there are two tests that are generally used in the United States to check the obviousness of an invention and I will briefly introduce these two tests to bring into perspective what are the general expectations for meeting the “non-obviousness” requirement and how the court makes its decision when disputes occur.

The first test is Teaching-suggestion-motivation test. This requires that there be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. To illustrate how this works, I will use the arm-chair example we discussed in class. If there is a prior patent on the arm table and as well as on the chair, the invention of arm-chair will not be considered obvious unless there is a suggestion from prior publications that the arm-table and arm-chair could be combined.  This sets a very high hurdle for obviousness determination because it cannot be possible for prior inventors to list all possible combinations of their inventions. To take this example to extreme, if Alice has invented a wooden pencil, Angela else has invented the red color paint, and there is no prior suggestion that these two inventions can be combined, Bob’s invention of red pencil (painting the wooden pencil with red paint) would in fact pass the “non-obviousness” test.

Another test commonly used is Graham factors. According to the Wikipedia, Graham factors held that obviousness should be determined by looking at: 1. the scope and content of the prior art;2. the level of ordinary skill in the art; 3. the differences between the claimed invention and the prior art; and 4. objective evidence of nonobviousness.  In addition, the court outlined examples of factors that show “objective evidence of nonobviousness.” They are: 1. commercial success; 2. long-felt but unsolved needs; and 3. failure of others. The Graham factors are more flexible than the Teaching suggesting-motivation test, but unfortunately they are also much more arbitrary. In fact, I think “Obviousness” is inherently an arbitrary concept just as the idea of patent itself. Thomas Jefferson promoted patent laws on utilitarian economic concern of promoting technological innovation. Ultimately, it all comes to the judge’s decision on whether an invention deserves to be recognized.

Patents on Cup-Sleeves

Discussed below are eight patents on cup-sleeves:  

A Thermal Coffee Cup

US 2661889; Priority date Jul 20, 1948

A thermal coffee cup is also an invention for insulating a user’s hand from a hot beverage cup. The motivation and background is to provide a combined holder and coffee cup which is of simple construction, inexpensive to manufacture, easy to assemble, and easy for users to use. The technology is to design an insulating jacket, which is provided with a corrugated lining to receive a cup-like container. This patent claims an insulated container jacket which comprises an outer frusto conical-shaped sleeves and an inner corrugated lining.

Sleeve construction for improved paperboard cup insulation

US 6152363; May 3, 1999

This invention is a sleeve with hot-melt glue dots that improves the insulating characterizes of a paperboard cup to the same level of common polystyrene cups. The motivation is to design a lightweight sleeve cut from a single blank, adds an air-gap layer, and preserves a smooth outside-sleeve surface for printing. The technology is to add plurality of air-gap means rigidly attached to the first side of the sleeve. There are total of five claims that include the sleeve construction components and structure.

Insulating Sleeve

US 63433735 B1; Priority date May 4, 2000

Insulating Sleeve is an improved sleeve for insulating a user’s hand from a hot beverage cup. The background and motivation for this invention is to find an inexpensive, biodegradable and adequate insulation for the user’s hand from the temperature of a liquid contained in a cup to replace the more commonly used Styrofoam, which is bad for the environment and the corrugated paperboard, which doesn’t provide sufficient insulation. The technology and idea is to design two wings or ridges that are placed away from the cup sidewall by a spacer element to provide the person with gripping not in contact with the cup. There are total of fifteen claims for the two sleeve portions angled away from the sidewall, location of the sleeve portions, structure, where it is used, and how it can be made.

Thermal Sleeve, Method for Manufacturing a Thermal sleeve, and Combination Cup and Thermal Sleeve

US 8251277 B1, Priority date Apr 15, 2005

Thermal Sleeve, as the name suggests, is an invention to provide a thermal insulation. The technology is to use a creped paper in the form of a laminate to design a product with a first end, a second end, a first cup opening, and a second cup opening, and an adhesive holding the first end and the second end together to form a wrap around a cup. There are thirteen associated claims that include composition and structure of the said sleeve, and different combinations of the said sleeve with variety of cups in different materials.  

Beverage cup sleeving system and method

US20080078824 A1; Priority date (?) Aug 23, 2006

The invention is beverage sleeve comprising a layer of elastomer. This design is motivated by the desire to provide an insulating cup sleeve that is effective when wetted, effective against extremely high and low temperatures, is reusable and easily manufactured. The technology is to use the elastomeric and fabric composite sleeve as insulating material. There are total of twenty patents comprising the insulating system, cup protector components, and insulating ring configuration.

Temperature-indicating sleeve and related container

US 8118189 B1; Priority date Dec 15, 2006

Temperature-indicating sleeve and container is an invention with visible temperature indicator in or on the sidewall of the container to indicate the temperature of the contents inside the container. The motivation and background is the observation that when hot items such as coffee and tea in insulated containers are purchased for immediate consumption, consumers generally can’t tell if the item is too hot to consume. Thus, carelessness can easily lead to scald or burn the mouth, lips, or other parts of the body if spilled. The technology is a sleeve with a visually observable temperature indicator on or in the sleeve wall. The temperature indicator is calibrated according to the known insulating property of the container. There are eighteen associated claims for this invention. Claims one through seventeen include the basic components and composition arrangement of the sleeve and container. Claim eighteen is a method of manufacturing such product.

Protective Sleeve

US 20100019023; Priority date (?) July 25, 2008

This is another invention of protective sleeve that aims to provide insulation from user’s hand and the temperature of the container. The uniqueness of the sleeve is the arc-shape. According to the inventor, the arch shape reduce sheet material as compare to sleeves without an arc shape, and more efficient to manufacture than sleeves which adapt to the shape of a conical cup by the expansion of slits, notches and honeycomb structure. There are total of twenty claims, which include basic structure of the sleeve, method for forming such sleeve, and the corresponding sheet material.

Hot and Cold Cup Sleeve

US 20140151385; Priority date(?) Feb 6, 2014

This is one of the newer inventions on sleeve that aims to insulate hand from the container’s temperature. This invention is motivated by the observation that hot cup sleeves do not work well for the cold drinks because cold drink gathers moisture and cold cup sleeves are bulky. With the goal of designing an inexpensive, thin, single-use sleeve for hot/cold beverage, the designer invented a light weighted product with three layers. The inner layer is water absorbent to prevent condensation from dripping onto the table and the outer layer is made of non-woven synthetic fabric to keep hands dry. These two layers are connected with polyethylene film. There are total of twelve associated claims that include the components of the sleeves, the materials, and functionalities of the components.