Tuesday, March 12, 2013

Canada's purposive proposal

moneyA couple of years ago I covered the decision of the Canadian Federal Court of Appeal involving Amazon.com and the company's 'one-click' patent application. Click here for my post and here for a copy of Canada (Attorney General) v. Amazon.com, Inc. et al., 2011 FCA 328 (F.C.A.).

As a result of the decision, the Canadian Intellectual Property Office (CIPO) has put in place a new approach for computer-implemented inventions that appears to be an improvement over the previous approach.

Purposive construction

The Court at [63] directed the Commissioner to undertake a purposive construction of the claims, 'with a mind open to the possibility that a novel business method may be an essential element of a valid patent claim', rather than the whole invention.

A purposive construction, said the Court at [43], will address patent claims that:
'may be expressed in language that is deliberately or inadvertently deceptive. Thus, for example, what appears on its face to be a claim for an "art" or a "process" may, on a proper construction, be a claim for a mathematical formula and therefore not patentable subject matter'.
Patent applicants and their professional advisors are clearly a sneaky bunch.

The Patent Office that listens

In this part of the world it is often a little hard to distinguish between public consultation on the one hand and being told what is going to happen on the other.

By contrast the Canadian Intellectual Property Office has announced that it is 'clarifying' its position on assessment of patentable subject matter. The proposed office practice regarding inventive concept will not be adopted as official practice as a result of feedback from public consultation.

From now on the official position is that the assessment of whether claimed subject matter is statutory subject matter will be based on the essential elements of the claim as determined by a purposive construction of the claim.

Practice guidelines

The recently issued Exam Memo PN2013-02 outlines practice guidelines that will assist the examiner to perform a purposive construction of the claims.

1) A fair, balanced and informed approach

Examiners will now consider
'the specification as a whole as read through the eyes of the person skilled in the art, against the background of the common general knowledge in the field or fields relevant to the invention at the time the application became available to the public.'
2) Identify the problem and solution

Examiners are told that
'the problem the inventors set out to address and its proposed solution should be found in the description ... and not by reference to the closest prior art.'
3) The application as a whole

Claim construction cannot be determined solely on the basis of a literal reading of the claims. It will be necessary for examiners to consider the application as a whole. A claim-based analysis 'does not mean that the Commissioner cannot ask or determine what the inventor has actually invented, or what the inventor claims to have invented'.

4) Which elements of the claim solve the identified problem

The practice guidelines introduce the notion that some element or combination of elements defined in the claim must provide an 'inventive solution'. An examiner is entitled to define the essential elements in the claims and conclude that a claim either omits an essential element or includes non-essential or superfluous elements.

5) Focus on one solution to a problem

The guidelines recognise that an invention is an element or a combination of elements that provide(s) a solution to a problem. If there are solutions to more than one problem then there is more than one invention. Examiners should focus on one solution to a problem where a claim includes solutions to more than one.

Further steps

The general view is that the new purposive approach is an improvement over the former inventive concept approach. However, with any new approach there will be some initial uncertainty about how the test will be applied in specific cases. I suspect there will be some fertile ground for argument on the identification of essential and non-essential elements within a patent claim.

Photo courtesy of author ambert under Creative Commons licence.

Saturday, March 9, 2013

Rembrandt clicks the Dislike button

dislike buttonRembrandt Social Media is taking Facebook to task over Facebook's use of its wall, timeline, news feed and like buttons.

This case has all the right elements to become a media darling. It involves a deceased inventor, a patent troll, a household brand, a household icon, and software patents. What else could you ask for?

Rembrandt filed a complaint for patent infringement last month in the United States District Court for the Eastern District of Virginia. The defendants named are Facebook and AddThis.

The Patents

United States Patent 6,415,316 (the '316 patent) describes and claims technology that gives ordinary people the ability to create and use what the inventor calls a personal diary.

Using the system, people are able to collect personal information and third-party content, organise the information chronologically on a personalised web page, and share the information with a selected group of people through the use of user-settable privacy levels.

Just like Facebook's wall, timeline and news feed.

United States Patent 6,289,362 describes and claims technology that enables the automatic transfer of third-party content from a content-provider's website to the user's personal diary page.

Just like Facebook's share or like buttons on most websites, including this one.

The ’316 and ’362 patents issued in 2001 and 2002. The inventor Van Der Meer passed away in 2004. Title to the patents passed to Van Der Meer’s family sometime in 2004. The family assigned the patents to Rembrandt, a company describing itself as 'work[ing] together to help inventors and patent owners, who often do not have the requisite capital or expertise, enforce their rights against companies that use their inventions without paying for them'.

Count I

Rembrandt says that Facebook infringes claims 1, 6, 17 and 28 of the '316 patent. Claim 1 for example reads as follows:
1. A method of organizing information for display, comprising:
sending from a diary server to a user system, a diary program capable of being executed by a browser in the user system;
sending diary information from the diary server to the user system, the information comprising content data including an associated time, a page design to specify the presentation of the content data, and configuration information for controlling behavior of a cohesive diary page, the configuration information including privacy level information;
assembling the cohesive diary page by dynamically combining the content data and the page design in accordance with the configuration information for the cohesive diary page to be displayed by the diary program running in the browser;
receiving by the diary server at least one request for at least one change concerning the diary information, from the diary program in the user system; and
sending, by the diary server to the user system, new diary information for changing the cohesive diary page.
Rembrandt says that actions such as sending program code, content, page design templates and privacy level information to the end user's browser, assembling the page for display, allowing the user to request changes in content information and sending that updated content information to the user infringes at least one of the '316 patent claims.

Facebook has probably been doing this in one form or another since 2003 with its wall, timeline and news feed.

Counts II and III

Rembrandt says that Facebook infringes claim 7 of the '362 patent. Claim 7 reads as follows:
7. A computer system comprising:
third party memory storing a transfer script that generates a request for a transfer applet from server memory;
server memory storing an AUA database from which personalized web pages are constructed and a transfer applet for establishing a communications link between a client browser and the server memory; and
a client browser coupled to the third party memory and to the server memory for executing the transfer script and the transfer applet to transfer an AUA to an AUA database stored in the server memory, the AUA identifying a location of a content object and including an annotation authored by a content provider for controlling an aspect of a presentation of the object.
Facebook encourages the use of its 'share' or 'like' buttons on third party websites by distributing program code (the Facebook transfer script) that allows web site operators to implement these features on their sites.

When a user clicks the Facebook 'like' or 'share' button on a website, the Facebook transfer script interfaces with the Facebook website causing additional code (the Facebook transfer applet) to execute in the user's browser. The Facebook transfer applet transfers content from the third party website to the user's Facebook diary.

The Facebook Like button has only been around since 2009, but that little thumbs up sign seems to be everywhere. It's a great little earner for Facebook. The Like button allows Facebook to track the interests of its users. Facebook collects data on individuals and then sells targeted ad space that makes use of it.

Rembrandt says that providing technology that allows an end user to 'like' or 'share' content and transfer an annotated universal address for the content to the user's Facebook page.

What now

Rembrandt has asked for a jury trial on all issues appropriately triable by a jury. The company has asked for a permanent injunction which, if successful, would effectively shut down Facebook. I can't see how Facebook could significantly change its wall, timeline and news feed and still keep its users happy.

However, Facebook fans need not worry. An injunction is unlikely to happen and is not even desired by Rembrandt. The company has asked for damages (money) for infringements past, present and future in lieu of an injunction. In fact, there is a request for treble damages as a result of wilful infringement.

I don't have a sense of the importance of this lawsuit yet. Is it going to be a game changer? Or is it going to be just another one of the many lawsuits Facebook has faced in the last decade? I'm pretty sure it is going to be a media darling.

It will certainly be an interesting case to watch.

Photo courtesy of author Sean MacEntee under Creative Commons licence.

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