This past semester at CodeX has offered me an array of experiences: first as a law student, but also as an engineer, a tourist, and a legal technologist. Codex is the Stanford Center for Legal Informatics, bringing together law students, lawyers, entrepreneurs, technologists and software developers to explore and advance applications of technology to legal systems. As a law student with a background in software development, CodeX offered me a unique opportunity to combine my past experience with my education at Osgoode.

The main focus of my placement at CodeX was to assist in the design and development of the . The Index is an open source database that tracks a broad spectrum of innovative legal tech companies. These companies represent an incoming wave of disruption to the legal industry, although the degree of disruption is not yet clear.

In the Bay Area, disruption is a consistent theme that goes hand-in-hand with entrepreneurship. In 2011, Silicon Valley trailblazer Marc Andreessen declared that “”, arguing that we are in the middle of a dramatic shift where software companies are poised to disrupt and dominate established markets. In the 6 years since, we have seen his predictions to come true many times over.

Uber’s disruption of the , Airbnb’s disruption of the , Netflix’s disruption of the television and and Amazon’s disruption of both online and brick-and-mortar all evidence the truth in Andreessen’s argument. There is also an emerging consensus about the reasons why this disruption is so prevalent now: minimal barriers to entry for software start-ups, wide public adoption of broadband Internet and mobile phones, the numbers of software developers and data scientists graduated each year, the inherently data-focussed approach used in software, and finally the maturity of software development processes to quickly and robustly build quality applications.

Legal tech has faced its share of headwinds, but also huge potential. In the words of my Stanford advisor Dr. Roland Vogl “The reality has not matched the rhetoric”. While there are some players who are broadly successful (legal service providers such as LegalZoom, Avvo and RocketLawyer are examples of this), the adoption of legal tech has its own share of unique challenges and has struggled to find the critical mass required to trigger its broad adoption. The potential of legal technology is more efficient practice, higher quality service delivery for clients, and improved access to justice with new delivery methods and lower costs.

Many of the successful established legal tech companies so far operate as so-called document and process automation, assisting their customers with streamlining practice management and document drafting. Newer legal tech start-ups however are applying data analytics and machine learning technologies to areas of the law. These new applications offer the ability to assist lawyers in assessing risk and decision making, and in some cases making decisions themselves.

Two start-ups who visited CodeX during my placement were and Each offers predictive analytics for lawmakers and lawyers. The former offers real-time prediction of the success of proposed legislation, and the latter predicts of outcomes of court and tribunal cases. The predictive capacity of these services offers major value for lawyers in representing the interests of their clients. These services are also among the first, and there will be many more technologies to come offering predictive capabilities in other fields.

This semester has given me the opportunity to see what law could be, and how it may change. The future may hold incremental changes in practice or even broad paradigm shifts in the practice itself. It’s reassuring to know that there are institutions like CodeX considering the benefits and the consequences of innovative changes in the legal profession.

Paul Blizzard is a JD Candidate at Osgoode Hall Law School and was enrolled in Osgoode’s Intellectual Property Law and Technology Intensive Program. As part of the program requirements, students were asked to write a reflective blog on their internship experience.

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These��questions were��posed��on February 25th when Osgoode Hall Law School in collaboration with the University of Toronto, Faculty of Law, held ���Ա貹������SODRAC, a symposium aimed at unpacking the myriad of issues covered in the 2015 Supreme Court case , [SODRAC].

���Ա貹������SODRAC was organized by Osgoode Associate Dean and University of Toronto Professor . The symposium��covered three main topics from the case: Technological Neutrality, Reproduction Rights, and Mandatory Tariffs.

The parties in this case include the appellant CBC, and respondent SODRAC. CBC, Canada’s national broadcaster, is responsible for the creation of many television programs and movies.��SODRAC is a french-language collective society in Quebec within the statutory definition found in of the Act.��The facts revolve��around��incidental copies made by��CBC during the video editing and broadcast preparation process. These are referred to as ‘broadcast-incidental’ copies.

Interveners on the case included Howard P. Knopf and David Lametti from the Centre for Intellectual Property Policy and Ariel Katz, David Fewer and Jeremy de Beer from the Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic, Casey M. Chisick, Peter J. Henein and Eric Mayzel from the Canadian Musical Reproduction Rights Agency Ltd., the Canadian Music Publishers Association and the International Confederation of Music Publishers, and Barry B. Sookman and Daniel G. C. Glover from Music Canada, the International Federation of the Phonographic Industry, the Canadian Council of Music Industry Associations, the Canadian Independent Music Association and Association québécoise de l'industrie du disque, du spectacle et de la vidéo.

Licensing for musical works often uses a 'through to the viewer' model, where synchronization (copies created during editing of the work), broadcast-incidental (copies created during broadcasting of the work) and distribution-incidental (copies created during the distribution of the work) licenses are bundled together. This was not the case with the licensing scheme used by SODRAC.

CBC argues that broadcast incidental copies are the result of technological efficiency and it would contravene the Principle of Tech Neutrality to compensate SODRAC for ephemeral copies of their repertoire whose use has nothing to do with copyright holders' legitimate interests.�� SODRAC argues they are entitled by the Act (and by the decision in the 1990 case ����Bishop]) to remuneration for the ephemeral copies.

The first panel of the day discussed the emerging principle of technological neutrality in Copyright. The panel was chaired by Professor Giuseppina D’Agostino, and included Craig, Dean Gregory Hagen (University of Calgary), Professor Cameron Hutchinson (University of Alberta), and Richard Pfohl (General Counsel, Music Canada).

Craig surveyed the spectrum of case law that includes three different types of neutrality: Media neutrality at one end and a purposive approach to neutrality at the other.�� This spectrum reflects the fact that prior to SODRAC there was not a clear consensus on the spirit and the content of the principle of technological neutrality. Jurisprudence on this principle stems from two main cases: 1990's Bishop and��2012's����[ESA v SOCAN]. Justice McLachlin (as she was), writing for the court in Bishop,��held that s 3(1) of the Act did not include the right to make "ephemeral" recordings for the purpose of facilitating broadcasting. This meant that licensing was required for both synchronization copies of works and incidental copies.

At the conservative end of the spectrum, the interpretation of media neutrality was introduced in 2006 in����[Robertson]. In that��case, neutrality meant that the Act continued to apply in different types of media, and that actions undertaken when using a new technology should be reviewed rather than the technologies net effect. This position is echoed in Justice Rothstein's dissent in ESA.

In the middle of the spectrum is the functional equivalence approach found in .��In this case, Justice Abella explains that technological neutrality "seeks to have the Copyright Act applied in a way that operates consistently, regardless of the form of media involved, or its technological sophistication."

The purposive approach to neutrality was introduced by Justices Abella and Moldaver writing for��the majority in��ESA. This case represented a major evolution in the interpretation of the Act, and Technological Neutrality, demonstrated by the following quote:

"[5] ... The principle of technological neutrality is reflected in s 3(1) of the Act, which describes a right to produce or reproduce a work “in any material form whatever”. In our view, there is no practical difference between buying a durable copy of the work in a store, receiving a copy in the mail, or downloading an identical copy using the Internet. The Internet is simply a technological taxi that delivers a durable copy of the same work to the end user. "

The underlying technological neutrality issue in SODRAC is the statutory interpretation of the Act, and the Court's refusal to displace the ordinary meaning of the text. The modern Canadian approach to statutory interpretation is Driedger's Modern Principle, as identified in ����Rizzo].

Specifically, the question is when principles of interpretation (such as the principle of technological neutrality) can displace the ordinary meaning of a statute. This is argued in SODRAC at ]. Exceptions exist in the Act for ephemeral/incidental copying under and .��However, CBC's incidental copying did not fall under them. Based on the legislative history, including failed lobbying by broadcasters to , the majority concluded that it was not possible to displace the ordinary meaning of the Act.��Panelist Greg��Hagan argued��that the majority's interpretation missed the point made in Rizzo at ], which��held that the ordinary meaning could��be displaced if it led��to an unreasonable and/or absurd outcome.

The principle of technological neutrality in statutory interpretation makes it clear that functionally equivalent technologies (in this case the delivery of television and movie programming using a digital content management system versus an analog one) should be treated equally by the Act.�� As broadcasters increasingly deliver their content digitally, SODRAC is problematic because it offers a potential disincentive for the use of these innovative technologies.�� As it stands, there is a good case to make for parliament to expand the incidental copying exceptions under and to avoid this absurd outcome and continue to encourage innovation in media delivery.

Paul Blizzard is a JD Candidate at Osgoode Hall Law School.��Twitter: .

The post Shifting technological neutrality into reverse: UNPACK SODRAC appeared first on IPOsgoode.

For the uninitiated: a hackathon is an event where designers, developers, and industry stakeholders form teams and work together to prototype solutions to a specific common problem. Hackathons are competitive, and teams must pitch their prototype to a panel of judges. Participants of the orphan works hackathon gave updates during the day using the hashtag.

For this event, IPOsgoode brought together minds from across the creative community, law, engineering, and academia to design solutions to the orphan works issue. Orphan works are those works protected by copyright but whose��rights-holder is unidentifiable, or cannot be located and contacted. Many creators--including authors, historians and��documentarians--face challenges to��use orphan��works in their own creations. This challenge represents a market failure, since creators are willing to secure licences for the works but do not or cannot because the expense of identifying and/or finding the authors is��too high. This leaves many unique and valuable works out of historical works or other downstream creative works that might re-use them.

Canada currently has a supplemental licensing regime for orphan works under . However, this scheme does little to assist the due-diligence challenge faced by��creators when��attempting to use orphan works. To earn a licence, a due-diligence search must be conducted; but, it may be��a futile and fruitless��search��for something non-existent. Furthermore, many Canadian archives do not have digitized collections and due-diligence searches must be conducted by hand, or using a network of personal connections.�� Orphan works��was an ideal hackathon problem, having��numerous dimensions (legal, technological, policy, scalability) and��stakeholders, as well as the availability of international solutions for comparison, and the potential for many open-ended solutions.

One solution that was reviewed during the event was the UK Intellectual Property Office (IPO) and . This tool asks users a series of questions about the work, its intended use and then creates and prices a statutory license.�� This allows a streamlined way for users to incorporate potentially orphaned works into their own creations.

Participants of the hackathon included representatives of the IPO along with the Canadian Copyright Board, Canadian Heritage, Canadian Intellectual Property Office, US Copyright Office, and the Lassonde School of Engineering. Leadership on the design process was provided by , a fellow at Stanford Law School’s Centre on the Legal Profession and a lecturer at .

The first day and a half of the event was��dedicated to finding the scope of the problem. Midway through day two, the event shifted from��analysis to��creative problem solving and solution design. And, at the end of day two, solutions to the problem were pitched to an esteemed panel of judges including Justice Roger Hughes of the Federal Court.

The final day of the event focused on building functional demonstrations of the solution in action, a business plan, and a budget.�� Ideas and designs from the first day were updated based on feedback using an iterative process. As a participant, this was the most��exciting moment��of the hackathon,��as��the focus on��"what can we make to solve the problem" became��"what are the hurdles we face in making this demo into a living thing".

The demonstration��of Orphan hunter��(pictured above) won the hackathon's best prototype.��The app, a tongue-in-cheek design using��a gamified bounty system��incentivizing individuals to complete due-diligence searches won over the judges after a strong iteration (and fully functional demo) on the second day. Credit goes to Jordan Fine, Mark Harris Evans, Zorn Pink, Mark Kohras, and John Lee. Their solution included a professionally made demo explaining how someone might use Orphan Hunter.

Paul Blizzard is a JD Candidate at Osgoode Hall Law School.��Twitter: .

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The United States Patent and Trademarks Office (USPTO) has released an updated set of Eligibility Examination Guidelines to provide guidance to examiners on when to reject claimed inventions as ineligible abstract ideas. These guidelines give a sense of what computer-implemented subject matter the USPTO considers to be ineligible for patent protection.

Developing guidelines was difficult for the USPTO as the courts have provided little explanation of when patent claims are invalid for defining ineligible abstract ideas, or even what abstract idea means, and the USPTO lacks the authority to craft its own definitions. The USPTO is largely limited to telling examiners that patent claims cover abstract ideas if they cover subject matter that is similar to what the courts have determined to be abstract ideas. Given the absence of general concepts or principles for identifying the kinds of abstract ideas that are not eligible for patent protection, practitioners and applicants need to be aware of all of the Federal Circuit and Supreme Court case law on patent subject matter eligibility, and to craft patent claims with arguments in mind as to why the subject matter covered by the claims is materially different from subject matter determined to be ineligible in any of this case law.

The original 2014 Interim Guidance on Patent Subject Matter Eligibility¹ document (“the Guidance”) defines steps to be taken by an Examiner to assess subject matter eligibility.�� Steps 2A and 2B apply the two-part analysis from Alice² and Mayo³.��In step 2A the Examiner determines whether the claim is directed to a statutory exception to patent protection: a law of nature, natural phenomenon or an abstract idea.��If not, then the claim is eligible for protection (although the Examiner must still determine whether the claim meets the other requirements for patentability, such as novelty and non-obviousness).��If the claim is directed to a law of nature, natural phenomenon or an abstract idea, then step 2B applies and the Examiner determines whether the claim as a whole represents “significantly more”.�� Claims that do not cover significantly more than a law of nature, natural phenomenon or abstract idea are ineligible for patent protection and are to be rejected under 35 U.S.C. § 101.

The posting of the Guidance in 2014 provoked much comment and criticism, some critics alleging that under the Guidance virtually nothing was eligible for patent protection. The July 2015 Update on Subject Matter Eligibility⁴, (“the Update”) responds to these comments and criticism.

The Update provides an updated set of subject matter examples, and also divides the case law into different categories of abstract ideas, which are useful both as a credible attempt to organize the case law, and to provide insight into the USPTO’s perspective on this case law and arguments they may find persuasive.�� It also provides reassurance that the USPTO is addressing criticism that under the current rules post-Alice⁵ there is not a clear path forward for software patent applications because of the difficulties encountered with subject matter objections. The Update makes it clear that examiners should not determine a claimed concept to be an abstract idea unless the claimed concept is similar to at least one concept that either the Federal Circuit or the Supreme Court have identified as an abstract idea. In other words, applicants should be able to avoid having their claims rejected, at least in the USPTO, on subject matter eligibility grounds by defining concepts in the claims that differ sufficiently from claim concepts invalidated on these grounds by the Federal Circuit or the Supreme Court.

Of course, much will depend on how aggressive and creative examiners are in determining that claimed concepts they are considering are similar to a concept determined to be an abstract idea by the courts. Further, the Update makes it clear that this determination of similarity does not require evidence: examiners can ground such a rejection by merely explaining, clearly and specifically, why the claimed concepts are similar to concepts determined to be abstract ideas by the courts, and are thus ineligible for patent protection.

New Examples

In the Update, several new examples are provided in addition to those found in the original Guidance document and include:

21. ��Transmission of Stock Quote Data – modeled after the claims at issue in Google Inc. v. Simpleair, Inc.⁶, (Claim 1 ineligible, Claim 2 eligible).
22. ��Graphical User Interface for Meal Planning – based on Dietgoal Innovations LLC v. Bravo Media LLC⁷ (Claim 2 ineligible).
23. ��Graphical User Interface for Relocating Obscured Textual Information (Claims 1,4 eligible, Claims 2-3 ineligible).
24. ��Alerting System for a Catalytic Chemical Process --�� based on Parker v. Flook⁸ (Claim 1 ineligible).
25. ��Temperature Control of Rubber Molding --�� based on Diamond v. Diehr⁹ (Claims 1-2 eligible).�� Claim 1 is the actual claim 1 from Diamond v. Diehr, Claim 2 is a hypothetical claim in the form of computerized instructions.
26. ��Exhaust Gas Recirculation in an Internal Combustion Engine – based on technology from U.S. Pat. 5,533,489 (Claim 1 eligible).
27. ��A method of loading System Software (BIOS) into a computer – based on technology from U.S. Pat. 5,230,052 (Claim 15 eligible).

In each example, the Update evaluates the hypothetical claims based on steps 2A and 2B, and discusses how an Examiner might determine patent eligibility for patent claims covering an analogous technology.

Example #25 – Diamond v Diehr

An interesting example in the Update is #25, since it introduces hypothetical claims modeled after the technology in the 1981 case Diamond v. Diehr, 450 U.S. 175 (1981).�� This case dealt with a patent involving a computerized process controlling a rubber molding press.��The invention offered significant advantages over the prior art at the time, as it enabled in situ temperature monitoring and automatic recalculation of the optimal cure time.��This calculation involved using the temperature inputs and the Arrhenius equation, long used to calculate the cure time of rubber molding processes.

The reasoning in the Update for Diamond v Diehr differs from the reasoning provided by the Supreme Court. In the 1981 decision, the Supreme Court obliquely refers to the machine or transformation test in determining subject matter eligibility:

“A mathematical formula, as such, is not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U. S. 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U. S. 584 (1978). Similarly, insignificant post-solution activity will not transform an unpatentable principle into a patentable process. ��To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection. On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101. Because we do not view respondents' claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals.”¹⁰

In example #25, according to the Update, Claim 1 from Diamond v. Diehr involves a repeated calculation of the Arrhenius equation, a mathematical relationship held to be representative of a law of nature, and therefore Step 2A is met. Next, analyzing the claim as a whole using the Guidelines, the combination of steps taken together amount to significantly more than just the abstract idea of the Arrhenius equation (Step 2B). ��Thus, claim 1 in Diamond v Diehr is patent eligible, satisfying the “significantly more” step of the test.

The USPTO may have seen fit to rewrite the justification for this case to bring it into accord with the Alice framework.��The Court in Diamond v Diehr determined that the structure claimed, considered as a whole, was the kind of structure and performed the kind of function the patent laws were designed to protect. In making this determination, the Court refers to the machine or transformation test to establish the patentability of the claimed invention. However, after the decision of the Supreme Court in Bilski, the machine or transformation test is no longer the definitive test, although it remains a helpful indicator of subject matter eligibility.

Categories of abstract ideas outside the scope of patentable subject matter

The US courts have provided little explanation of when and why patent claims are invalid for covering abstract ideas.��Since the USPTO lacks the authority to create its own definitions, and it is difficult, perhaps impossible, to discern principles from the case law, the USPTO has instead focused its efforts on helping examiners to determine if the concepts defined in claims are similar to what the courts have determined to be abstract ideas, and are thus invalid.��The Guidelines and Update construct several different categories of ineligible abstract ideas based on the case law.�� Each category covers many different examples, taken from the case law, of concepts defined in patent claims that have been invalidated by either the Federal Circuit or the Supreme Court as abstract ideas. Clearly, patent applicants should do whatever they can to define their inventions using claim language and concepts that fall outside these categories.

These categories are the closest the USPTO gets to general concepts or principles for subject matter eligibility. These categories include the set of “judicial descriptors” associated with software based subject matter that has been identified by precedent in the Federal Circuit and the Supreme Court as patent ineligible, including

1. “Fundamental economic practices” including concepts dealing with the economy and commerce including contracts, legal obligations and business relations.
   1. Mitigating settlement risk -- Alice¹¹.
   2. Mitigating hedging risk -- Bilski¹².
2. “Certain methods of organizing human activity” including concepts dealing with personal and intrapersonal activities including relationships, transactions involving people, social activities and behaviour.
   1. Managing human behaviour, specifically meal planning -- Dietgoal¹³.
   2. Advertising, marketing and sales – Ultramercial¹⁴.
3. “An idea ‘of itself’” i.e. an idea standing on its own including a bare concept, plan or scheme, and
   1. Methods of comparing data that could be done mentally -- Cybersource¹⁵.
   2. Concepts relating to organizing, storing, and transmitting information – Cyberfone¹⁶.
4. “Mathematical relationships/formulas” including algorithms, mathematical relationships, formulae and calculations.
   1. Converting binary coded decimal values to pure binary values -- Benson¹⁷.
   2. A mathematical formula for hedging – Bilski¹⁸.

It is difficult to find recent cases where software related patents have survived subject matter eligibility analysis by the Federal Circuit or the Supreme Court. Given the numerous examples of ineligible subject matter in the Update and Guidelines combined with the rejection statistics¹⁹ from the USPTO and invalidation statistics²⁰ at the Federal Circuit, it is reasonable to ask whether any claims have recently survived challenge on subject matter eligibility grounds. ��One example outside of the scope of software subject matter is Myriad²¹, where the Supreme Court allowed claims for complementary DNA.

While the Supreme Court invalidated all of the claims in both Bilski and Alice; there is one case related to software subject matter that has survived scrutiny, at least at the level of the Federal Circuit:�� DDR Holdings v Hotels.com²².

DDR Holdings v Hotels.com²³

The Guidelines discuss this case. This is the first Court of Appeal for the Federal Circuit case to uphold the validity of a software subject matter patent since Alice.�� In this patent, the claims were directed to managing the look and feel of an e-commerce website to provide “store within a store” functionality.

The claims in DDR covered a software solution to a problem, which, according to the judgment but not the dissent, was unique to the internet.��The claims dealt with the problem of retaining website visitors at an ecommerce site and offered a solution anchored in software that addressed a challenge unique to the web.�� Specifically, in the prior art a user clicking on an advertisement would be taken away from the host website to the advertising merchant. The claimed invention involves presenting a hybrid page generated by the host website to include a composite of the host website and advertising merchant’s product information. The decision was based, at least in part, on the grounds that the claimed concept lacked a non-technological analog.

Takeaways

When drafting new applications for software-based inventions, it is important to keep in mind the judicial descriptors of ineligible subject matter, and to draft the claims to avoid categorization under any of these judicial descriptors if at all possible.��However, it is also important to keep in mind that this area of law is in flux, and will almost certainly see significant change over the next few years.��In particular, the categories of ineligible subject matter constructed by the USPTO may evolve or grow in number over the next few years as more cases are decided. Eventually, as the courts grapple with more and more cases, clear principles may start to emerge from the present chaos. One day, it may again be possible to rely on general principles to distinguish patent eligible subject matter from ineligible subject matter. At present, that day seems far distant, and for the foreseeable future it will be even more important to keep up-to-date on the latest Federal Circuit and Supreme Court precedent, mostly to know what kinds of subject matter to avoid claiming, but also to keep an eye out for the occasional beacons of hope, such as a DDR.

��is a partner,��lawyer and patent agent in��Bereskin & Parr's Patent Group in the Mississauga��Region. He��is active with the Intellectual Property Institute of Canada (IPIC) and has contributed extensively to patent education in Canada. is a JD candidate at Osgoode Hall School and was a summer student in��Bereskin & Parr's��in��Toronto.��Twitter: .

The post The View Ahead for Software Patent Applications: USPTO Releases Update to Guidance on Patent Subject Matter Eligibility appeared first on IPOsgoode.

It is very important to provide adequate disclosure when using “means-plus-function” claims in a U.S. patent, particularly in the field of software. “Means-plus-function” claims include elements that are defined in a functional (as opposed to structural) manner, such as “means for tying a shoe”, and can be useful as long as they are carefully prepared. In particular, “means” claims require the disclosure of specific structural examples in the body of the patent that are used to interpret the functional elements.¹

One further issue is that this requirement is often confused with the requirement that the patent include enabling disclosure.²��Enabling disclosure generally relates to whether an individual of ordinary skill in the art (i.e., a suitable engineer or programmer) could make or use the invention. On the other hand, providing adequate disclosure of corresponding structures is important, even where such structures may be routine, since this is necessary to ensure the claim is not indefinite.

The Genesis of Means-Plus-Function Claims

Means plus function claims have an interesting history. At the turn of the 20th century, functional claiming using “means” language was widely accepted. For example, the Wright brothers’ patent for a FLYING MACHINE claimed “means for simultaneously moving the lateral portions [of a wing] into different angular relations” and “means whereby said rudder is caused to present to the wind that side thereof...”³

In 1946, however, the U.S. Supreme Court grounded functional claiming in a case called Halliburton Oil v. Walker⁴, where the invention related to locating the surface of oil in a well using echolocation. In Haliburton, the Court found the patent to be indefinite since there was no disclosure of how the patent actually performed the claimed function. Means language that related to a desired function could not be used at the point of novelty in a claim.⁵

Congress responded in 1952 with legislative changes that specifically allowed patentees to use “means” language to claim a function. These claims, however, would not cover the entire function itself, but rather only the specific structures that accomplished this function and which were discussed in the patent.��This restriction was intended to deny overbroad claim language, and leave open the possibility of competitive innovation (i.e., different structures that can accomplish the same function).

The recent case of Eon Corp v. AT&T⁶ reminds us that this requirement continues today in software patents that use means-plus function claims. In Eon, the Federal Circuit upheld a finding of invalidity related to a software patent that allowed a television to perform actions such as impulse buying, audience voting, and sorting shows by theme. The Court reviewed the requirements with respect to structure and enablement of software “means-plus-function” patents, including discussing two important earlier decisions: Katz⁷ and Aristocrat.⁸

A “general purpose computer” is not enough…

In the Aristocrat decision, the Federal Circuit had previously explained that the mere disclosure of a “general purpose computer” was insufficient to satisfy the disclosure requirements of means claims. The appellant in Aristocrat manufactured and sold gaming machines, and held a patent⁹ that disclosed a gambling game for a slot machine where players define their own winning combinations. Claim 1 recited “game control means” but the patent disclosed only a “general purpose computer” for performing this function, and in particular did not disclose the algorithm used to control play. The court held that:

“…Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to "the corresponding structure, material, or acts" that perform the function, as required [by the statute]...”

On the other hand, the Court explained that when an algorithm is disclosed that performs the claimed functions, even though that algorithm may be running on a general purpose computer, that computer becomes, in effect, a special purpose computer¹⁰ that will satisfy the statutory requirements for means claims.

…unless the claimed functions are “basic operations”

Following Artistocrat, the Court recognized an important exception in Katz. In this case, the appellant owned several patents that dealt with telephone processing and interactive call conferencing systems. The Court explained that a general purpose computer could provide sufficient structure to support a means-plus-function claim provided that the function is coextensive with the ordinary capabilities of the general purpose computer. In Katz, this was taken to include basic operations such as “processing”, “receiving”, and “storing”. Hence, the claims were not indefinite even though a specific algorithm was not disclosed, since a general purpose computer does not need special programming to perform these particular operations.

Eon Corp v. AT&T

In Eon, the appellant tried to argue that a general purpose computer could provide structure sufficient to satisfy the requirements for “means” claims so long as an ordinary person skilled in the art would know how to implement the invention. The Federal Circuit disagreed, explaining that the appellant had confused the requirement for enabling disclosure with the requirements related to means-plus-function claims. Whether or not a skilled programmer or engineer could understand how to build the invention was not relevant, since their knowledge could not be imported into the specification to provide structure for the means claims. Moreover, Eon’s attempt to rely on the Katz exception because the claimed functions were “simple to implement” was fruitless, as the Court explained that “…“special programming” does not denote a level of complexity.” Hence, Eon was unable to convince the Federal Circuit to “fill in the gaps” in the disclosure and overturn the finding of invalidity.

The Eon decision serves as a useful reminder about the need to be careful when using “means plus function” claims in U.S. patent applications, even in a software case where the specific functions that are claimed seem simple. With Aristocrats and Katz in mind, it is important to recall the distinction between enabling disclosure and scope-limiting disclosure. Moreover, while the narrow Katz exception does exists for functionality that is co-extensive with the “general-purpose computer”, in most cases a more detailed disclosure of an algorithm will be required for enforceable claims to exist in the United States.

Interestingly, the situation is slightly different here in Canada, as we do not have a comparable statutory requirement for “means” claims. Indeed, “means” claims are commonly used here, and our examination guidelines explain that they can be supported either by a description of the types of means contemplated, or by knowledge that would be obvious to a person skilled in the art.¹¹ Hence, Eon would likely have been much more successful in Canada with its “simple to implement” arguments.

¹��.
² Under .
³ U.S. Patent No. issued May 22, 1906.
⁴��Halliburton Oil Well Cementing Co. v. Walker (1946) 329 US 1 [Halliburton].
⁵��See In re Donaldson (16 F.3d 1189 (Fed. Cir. 1994) (en banc))
⁶��Eon Corp v. AT&T (2015) D.Del. No. 1:13-cv-00910-RGA [Eon].
⁷��In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011) [Katz].
⁸ Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) [Aristocrat].
⁹ U.S. Patent , issued July 25, 2000.
¹⁰ Citing WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) [WMS Gaming]
¹¹ See : “In order for a means statement to be properly supported, the description must describe what types of means are contemplated by the inventor unless this would be obvious to the person skilled in the art in view of their common general knowledge.”

��is a partner in��Bereskin & Parr's Patent Group in the Waterloo Region and is is Vice-Chair of the Intellectual Property Institute of Canada's (IPIC) Information Technology Committee. is a JD candidate at Osgoode Hall School and was a summer student in��Bereskin & Parr's��in��Toronto.��Twitter: .

The post Means for Invalidating a Patent: Lessons from the Eon Corp v. AT&T Decision appeared first on IPOsgoode.

(image used with permission)

The title of the book Information Doesn't Want to Be Free is a twist on the famous quote by Stewart Brand (founder of The , and the ).

"On the one hand, information wants to be expensive, because it's so valuable.�� The right information in the right place just changes your life.�� On the other hand, information wants to be free, because the cost of getting it out is getting lower and lower all the time.�� So you have these two fighting against each other." -- Stewart Brand

Doctorow's main theme throughout is the use of DRM (or Digital Locks, as he says), and its implications for content creators such as musicians and writers.�� DRM has historically been sold as a means to limit copying and aims to provide a measure of protection for copyright owners.�� The history of the use of DRM is littered with many failed attempts at digital copying restrictions including DVDs (), HD-DVDs (), the restricted formats for ebooks including epubs and Amazon's Kindle, and gaming consoles including the various iterations of Sony's Playstation and Microsoft's Xbox (although DRM on purpose built hardware has fared better lately).�� Given how easily and extensively these DRM systems have been compromised, Doctorow considers why they are even used at all.�� The positive benefit of copy restrictions by the use of DRM comes with many serious negative side effects including the inability of users to format shift, incompatibility with devices and alternative operating systems (ask a Linux user), the cost of the added system complexity, and the cost when platforms become obsolete (ask any Zune user).�� Principally though, the problem is that these copy protections have failed at their main goal: piracy prevention.

So if these copy protections have failed so spectacularly at preventing illegal copies being made of media and are inconvenient to users, why are they still used so prevalently?�� The answer is offered next in Doctorow's discussion of the role of Amazon and Apple as the content intermediaries.�� The function that DRM accomplishes quite efficiently is platform lock-in, both for content publishers and for end-users.�� End-users, especially ones with large content libraries, are unable to legally shift their purchases and are faced with either purchasing content again on other services or not switching.�� Having a "captive" audience shifts leverage away from the content creators to the intermediary, a lesson played out recently with the .

"If you're a publisher, label, or studio, the answer is simple:�� don't let companies sell your goods with digital locks on them.�� And if a company refuses to sell your goods unless they can put their locks on your products?�� Well, you can be pretty sure that those locks aren't there for your benefit." -- Cory Doctorow

One of the newer methods of copyright enforcement has been through the use of notice and notice, and notice and takedown systems.�� Canada added a notice and notice system in the changes to the Copyright act that were passed in the , that came into effect this year on January 1.�� These systems allow rights holders to send notices to ISPs, who then send them on to (potentially) infringing users.���� This system is a step forward, since it is a better balance between rights holders and users.�� Notice and notice however is not popular with publishers because it requires them to scour the internet for infringing content, and then pay for someone to send notices to each offending user.�� It also opens the door to abuse by parties sending false takedown messages for content that is not infringing as a method of silencing criticism.

Doctorow also discusses the more aggressive forms of enforcement found in the�� (ACTA), the (SOPA) and the (PIPA) that were defeated by a large public outcry.�� The ideas found in these two proposals continue in the ongoing negotiations of the (TPP).�� These agreements double down on DRM protections, and attempt to introduce intermediate liability for internet providers (from ISPs, to search engines, to other service providers) by giving the ability to the entertainment industry to control vital components of the internet (including DNS providers) to block pirate sites.�� This approach threatens the nature of the internet itself as a open system.

Information Doesn't Want to Be Free is a great book for content creators and IP wonks alike.�� Cory Doctorow provides several solid recommendations for Copyright reform and does a great job setting down the reality of the entertainment industry and its challenges.�� It stands in contrast to other more academic literature such as Blayne Haggart's , that has a heavy policy driven approach. ��Copyfight��provides an understanding of how Copyright laws have developed from national and multinational pressures.�� Doctorow's title argues from the bottom up, from the perspective of a content creator writing to his peers.����Information Doesn't Want to be Free would be an ideal title for prospective or current artists or writers to explain the intricacies of copyright and enable them to plan the distribution of their content strategically.

A free podcast of the first chapter read by none other than Wil Wheaton .

Paul Blizzard is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.��

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NVIDIA is a graphics chip manufacturer based in Santa Clara, California.�� Since 1993 they have been responsible for many innovations in Graphical Processing Unit (GPU) design that have made sweeping changes in the way graphics can be processed on PCs.��These improvements��have been revolutionary in many industries such as smartphone design, video gaming, medical imaging, and computer generated imagery and special effects.

When building its smart phones,��Samsung incorporates GPU chips that it has either designed in house or obtained��from Qualcomm, Inc. NVIDIA alleges that the two companies are violating its patents by using the technology without a licence.��The alleged patent infringement in the case refers to the Adreno GPUs used in Qualcomm's Snapdragon processors, and the PowerVR and Mali GPUs used in Samsung's Exynos processors.

NVIDIA's ITC complaint refers to seven of its patents:�� US Patent Nos. ("the '488 Patent") -- "Transform, lighting and rasterization system embodied on a single semiconductor platform", ("the '667 Patent") -- "Single semiconductor graphics platform system and method with skinning, swizzling and masking capabilities", ("the '685 Patent") -- "Programmable graphics processor for multithreaded execution of programs", ("the '913 Patent") -- "Method and apparatus for multithreaded processing of data in a programmable graphics processor", ("the '063 Patent") -- "Rendering pipeline", ("the '140 Patent") -- "System, method and article of manufacture for a programmable vertex processing model with instruction set", and ("the '372 Patent") -- "System, method and article of manufacture for shadow mapping".

What is interesting and distinguishing from the����case, is the fact that��NVIDIA is not filing a civil suit but is instead��asking the ITC to commence an investigation.��The is a favourable venue because of its speed:�� the ITC usually responds within 30 calendar days of a filing, can provisionally accept motions for temporary relief within 35 days, and typically wraps up proceedings for a case in about a year.�� The complaint is also under section 337, which enables the ITC to conduct investigations into unfair practices in imports. Under section 337, the primary remedy at the agency's disposal is an exclusion order that prohibits the importation of the infringing goods into the Unites States.�� Furthermore, and more importantly for Qualcomm, the ITC can issue exclusion orders that affect downstream products, meaning that potentially��any smartphone using Qualcomm's Snapdragon processors (which include the Adreno GPU) could potentially be blocked from importation.�� This appears to be the most damaging part of the filing, as the Snapdragon is used not only in Samsung smartphones, but also those made by LG, Asus, Sony, Sharp, and Nokia.

The ITC first claimed these downstream rights in .�� In that investigation, the ITC identified several factors determining the balance of downstream remedies:

"In performing this balancing, the Commission may consider such matters as the value of the infringing articles compared to the value of the downstream products in which they are incorporated, the identity of the manufacturer of the downstream products ( hare, the downstream products manufactured by the party found to have committed the unfair act, or by third parties), the incremental value to complainant of the exclusion of downstream products, the incremental detriment to respondents of such exclusion, the burdens imposed on third parties resulting from exclusion of downstream products, the availability of alternative downstream products which do not contain the infringing articles, the likelihood that imported downstream products actually contain the infringing articles and are thereby subject to exclusion, the opportunity for evasion of an exclusion order which does not include downstream products, the enforceability of an order by Customs" -- at page 207

For Samsung, this remedy would be crippling; its handsets represent a of the smartphone market in 2013. Google and the android ecosystem would also be affected, ��as the Snapdragon is a very popular processor used by many of the various android manufacturers.

Will the showdown turn to the courts? Based on the amount of damages awarded to��Apple in their suit against Samsung, one might think to answer that question in the affirmative.��Apple v. Samsung was a personal fight however; Steve Jobs was famously (and acrimoniously) "I'm going to destroy Android, because it's a stolen product. I'm willing to go thermonuclear war on this." and "I will spend my last dying breath if I need to, and I will spend every penny of Apple's $40 billion [£25bn] in the bank, to right this wrong". Due to the venue the plaintiff has chosen, it's far more likely��that NVIDIA will pursue a negotiated settlement.��Alternatively, this investigation may serve to position NVIDIA��for a future iPad and iPhone licensing deal with Apple; this is not a far reach considering it currently provides GPUs for several of the company's Mac desktop and laptop products.

Paul Blizzard is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.��

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