The value of a company’s patent portfolio can be increased significantly if the portfolio strategically uses continuing applications (i.e., continuation, divisional, and continuation-in-part applications) to extract valuable protection from disclosures having early priority dates.  Such a portfolio can include multiple patents having claims of varying scope but still covering the desired market, thereby bolstering the company’s exclusivity to that market.  Even if a competitor is able to get around the claims of one of the patents (e.g., by designing around or by successfully challenging the validity of these claims), the other patents provide additional hurdles to be surmounted by the competitor before being able to access the company’s market.  In addition, these multiple patents can provide value by summing to a wider scope of protection (e.g., including multiple forms of the product and various subassemblies that occur at various stages of manufacture) than any single patent provides.

Further value can be provided by keeping at least one continuing patent application pending at the USPTO, the patent application having an early priority date and disclosing subject matter which supports additional claims covering the desired market.  Such a pending patent application can be used to strategically respond to the activity of competitors so as to fortify the company’s exclusivity to the market.  For example, upon discovering that its competitor has bypassed the existing defenses by designing its product around the company’s issued patents, the company can potentially use a pending patent application to pursue additional claims that cover the competitor’s product, effectively filling the breach in the company’s patent protection.  For another example, if its competitor is able to successfully challenge the validity of the claims of a patent (either in a court proceeding or in a post-grant proceeding at the USPTO), the company can potentially use a pending patent application to pursue other claims which do not suffer from the same vulnerability as do the claims of the challenged patent.

FIG OF 175 PATENTAn example of such use of continuing patent applications is provided by the family of patents based on U.S. Patent No. 6,600,175 filed in 1996 and now owned by Cree Inc.  The claims of the ‘175 patent are directed to solid-state white-light emitters and displays, in particular, various configurations of devices that use blue light-emitting diodes and fluorescent or phosphorescent materials which absorb the blue light and re-emit light at longer wavelengths which sum to form white light.

Key claims of the ’175 patent were the subject of a validity challenge in an ex parte reexamination at the USPTO.  This post-grant proceeding was initiated by an unknown entity (likely a competitor of Cree’s seeking to enter the white-light emitter market) by presenting the USPTO with (i) references that pre-dated the filing date of the ‘175 patent and (ii) a rationale supporting the conclusion that the claims of the ‘175 patent are invalid (i.e., the USPTO was wrong to issue the ‘175 patent in view of these references).  This ex parte reexamination was successful in getting the USPTO to decide that that key claims of the ‘175 patent were invalid, and this ruling was recently affirmed by the Federal Circuit (In re Cree, Case No. 2015-1365, March 21, 2016).  Cree had been suing Kingbright Electronics Co., SunLED Corp., and Harvatek Corp. for infringement of the ‘175 patent, but after this ruling of invalidity of the key claims of the ‘175 patent, these cases have been terminated by stipulated dismissals.

While this result was bad news for Cree, the company’s strategic use of continuing patent applications likely mitigates the damage done by allowing Cree to maintain valuable exclusivity despite the loss of the invalidated claims of the ‘175 patent.  The portfolio includes multiple other U.S. patents with differing claims that cover aspects of the white-light emitter market, e.g., U.S. Pat. Nos. 7,615,795, 7,943,945, 8,502,247, 8,659,034, 8,860,058, and 8,963,182.  These patents were filed at various times between 2003 and 2013 as either continuations or divisionals (i.e., applications with the same disclosure as that of the ‘175 patent and claiming priority to the ‘175 patent), so each of these continuing applications has the 1996 filing date of the ‘175 patent as its priority date. VENN

These six patents and the ‘175 patent can be denoted pictorially by circles of various sizes and areas of overlap as shown in the figure on the right.  (Note that this figure is helpful to demonstrate the value of such a portfolio, but the circles should not be relied upon as a representation of the actual breadth of scope or overlap among the various patents of this particular portfolio.)  In addition, for the purpose of this discussion, a supposed high-value area of protection (e.g., Cree’s market in such devices) is denoted in this figure as a black dot.

This high-value area of protection is covered by multiple patents: the ‘175, ‘795, ‘945, and ‘247 patents, illustrating the value of strategically having multiple patents with claims covering Cree’s market.  If the ‘175 patent were the only one covering this market, the ruling of invalidity of the key claims of the ‘175 patent (denoted by having a red dashed circle represent the ‘175 patent) would have left this valuable market open to access by Cree’s competitors.  However, while the ruling of invalidity of the ‘175 patent claims means that exclusivity may be lost in various other areas, the high-value area is still covered by the other three patents.  To gain access to this valuable market, Cree’s competitor must either successfully challenge the validity of the key claims of each of the ‘795, ‘945, and ‘247 patents or design around these key claims.  Such validity challenges are actually currently underway: there are three ex parte reexaminations of the ‘945 patent pending or under appeal, as is one ex parte reexamination of the ‘795 patent and one ex parte reexamination of the ‘247 patent (denoted by red solid circles representing each of the ‘795, ‘945, and ‘247 patents).

Cree’s portfolio also includes a continuing patent application (U.S. Pat. Appl. No. 12/131,119, filed in 2008) that is currently pending at the USPTO with the early 1996 priority date of the ‘175 patent and which presumably discloses subject matter supporting additional claims covering Cree’s market.  The ‘119 application is denoted in the figure by the solid green circle which encompasses the high-value area of protection.  Since the ‘119 application is pending at the USPTO, Cree is able to modify and/or add to the pending claims, and even to file additional continuing applications, to further pursue protection of this high-value area.  Cree can do so in a strategic manner that takes into account the competitor’s efforts to design around these patents, the arguments of invalidity asserted against the other patents of the portfolio during post-grant proceedings or infringement litigations, and any prior references that are subsequently found.  Such efforts can result in claims that are more narrow than others in the portfolio, but which are more focused on the competitor’s products and more resilient to challenges of validity.

While Cree is a large company with a large patent portfolio, these concepts can be applied equally well to the portfolios of small startups looking either to protect their market niche or to make themselves more attractive to potential acquirers or investors.  Carrying out such a portfolio strategy for a smaller startup has to be performed within the constraint of the concomitant smaller budget, but the summed strength provided by multiple patents covering the startup’s core technology and the flexibility in responding to competitor’s actions provided by having at least one pending patent application can reap dividends upon exit by justifying a higher valuation of the startup.


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Diehr in the Headlights

deer3Since last year’s decision in Alice v. CLS Bank by the Supreme Court, the number of patents for computer-based inventions that have been struck down by challenges of their eligibility for patent protection has skyrocketed.  While “business method” patents (patents describing methods of doing business using computers) have borne the brunt of these challenges, patents utilizing computers in more technical fields have been invalidated as well.  As a result of the high rate of decisions of patent ineligibility, it’s understandable if an owner of a patent on a computer-based invention facing such a challenge looks like a “deer in the headlights.”  However, as discussed below, the Supreme Court cases prior to Alice, particularly Diamond v. Diehr (1981), can provide helpful guidance in navigating the realm of patent-eligibility for computer-based inventions in technological fields such as photonics.

Alice is the latest in a series of Supreme Court cases spanning more than 40 years regarding the patent eligibility of computer-based inventions.  The Court in Alice considered the eligibility for patenting for a computer-based business method for mitigating risk of non-performance of financial obligations, and laid out a two-part test to determine whether a computer-based invention is patent-eligible.  First, is the claimed invention directed to an abstract idea? If so, does the claimed invention include “something more” that transforms the abstract idea into something that is patent-eligible?  Without this “something more,” a claimed invention is directed to an abstract idea and is not eligible for patenting.

The Alice ruling has been criticized by some in the patent community as not providing sufficient guidance for its application to other situations, particularly with regard to inventions that, while not business methods, are made possible by the use of computers.  For example, while it laid out the two-pronged test described above, the Alice Court explicitly declined to define an “abstract idea” and only gave limited guidance on what would constitute “something more” that would make the claimed invention eligible for patenting, resulting in uncertainty as to the line between patent eligibility and ineligibility.

Beyond the lack of rigorous guidelines in Alice, there is significant consternation in the patent community regarding the application of the Alice framework by the lower courts.  To date, since the Alice decision, the overwhelming majority of patents challenged in district courts have been deemed to be patent-ineligible (36 out of 47).  Some of these cases dealt with computer-based inventions that were not “business methods,” instead directed to computer-based technologies such as information management or computer-aided system design.  With patent eligibility being a threshold issue, district courts are disposing of many patent infringement cases by granting summary judgment motions for patent ineligibility early in the case and by granting motions to dismiss on the pleadings.  Also, since the America Invents Act (AIA) was enacted, existing patents can now be invalidated using relatively new avenues for post-grant challenges at the Patent Trial and Appeal Board that did not exist previously.  These challenges based on patent eligibility are proving to be highly efficacious in invalidating the patents at issue, in a manner that is more cost-efficient than litigation.

This bias towards ineligibility is not new.  For example, in all but one of the pre-Alice computer-based invention cases at the Supreme Court since the 1970s, the Court found the computer-based inventions at issue to be ineligible for patenting.  The basis for each of these ineligibility rulings was that the computer-based invention was directed to an abstract idea (for example, a mathematical formula or algorithm), which is not eligible for patenting as a judicial exception to the broad statutory definition of patent-eligible subject matter of “any new and useful process, machine, manufacture, or composition of matter.”  These rulings set out various rules and tests for determining whether a computer-based invention was patent-eligible, each of which had the effect of constraining the ambit of patent eligibility.

The one pre-Alice Supreme Court case that found the computer-based invention at issue to be patent-eligible was Diamond v. Diehr (1981).  The Court in Alice cited the ruling in Diehr favorably as an example of an improvement in an existing technological process that constitutes “something more” sufficient to make a claimed invention patent-eligible.  In addition, the guidelines being used at the USPTO to evaluate the patent eligibility of the applications being examined since Alice also use Diehr as a primary example of a computer-based invention that is patent-eligible.  For those seeking guidance on how to pursue patents for computer-based inventions in this post-Alice world, a revisit to Diehr can be instructive.

The invention in Diehr was a computer-based method for controlling a rubber-molding press using a well-known formula for calculating chemical reaction rates based on temperature (the Arrhenius equation).  Claim 1 recited the invention as:

1.            A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:

providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,

initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,

constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,

constantly providing the computer with the temperature (Z),

repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is ln(v)=CZ+x where v is the total required cure time,

repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and

opening the press automatically when a said comparison indicates completion of curing.

The claimed invention therefore included continually receiving readings of the mold cavity temperature and the elapsed time since closing the molding press, using the computer to repetitively calculate the total required cure time of the rubber based on the continually-received temperature readings using the Arrhenius equation and to repetitively compare the calculated and elapsed times, and opening the molding press automatically when the elapsed time matches the calculated required cure time.

Considering the claimed invention as a whole, the Court in Diehr held that while the claimed method utilized a mathematical formula, it included a transformation and reduction of an article (raw, uncured rubber) to a different state or thing (cured rubber).  Also, the Court noted that the claimed invention did not pre-empt the use of the equation in all practical applications, being only directed to the particular application of curing synthetic rubber including the steps of installing rubber in the press, closing the mold, constantly determining the internal temperature of the mold, constantly recalculating the cure time, and automatically opening the mold at the proper time.

In its discussion of the “something more” prong, the Court in Alice explained that while the claimed invention in Diehr employed a well-known mathematical equation, “it used that equation in a process designed to solve a technological problem in ‘conventional industry practice.’”  The Alice Court cited the steps of “constantly determining the temperature,” “constantly providing the computer with the temperature,” and repeatedly recalculating the remaining cure time (using the equation) as transforming the process into an inventive application of the equation.  In contrast, the Alice Court further explained, the claims at issue in Alice amounted to “nothing significantly more than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer,” so they did not meet the standard of Diehr.

However, not all technical uses of a mathematical algorithm will be sufficient for patent eligibility.  Another Supreme Court case, Parker v. Flook (1978) can help to understand what is sufficient to be “something more” as in Diehr.  In Flook, the claimed invention was a method of setting alarm limits using a particular formula to control a catalytic chemical process (which at first blush seems to be in a similar technical field as is Diehr’s method of controlling chemical reactions within a rubber-molding press).  Flook’s Claim 1 recited the invention as:

1.            A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of B0 + K wherein B0 is the current alarm base and K is a predetermined alarm offset which comprises:

(1)  Determining the present value of said process variable, said present value being defined as PVL;

(2) Determining a new alarm base, B1, using the following equation:

B1 = B0 (1.0 –F) + PVL(F)

where F is a predetermined number greater than zero and less than 1.0;

(3) Determining an updated alarm limit which is defined as B1+K; and thereafter

(4) Adjusting said alarm limit to said updated alarm limit value.

The method of Flook was deemed to not be patent-eligible subject matter.  As the majority in Diehr explained, the method of Flook merely laid out a procedure for using a formula for adjusting a number (i.e., an alarm limit) without reciting the chemical processes at work, the monitoring of process variables, or the means for setting off an alarm.  As such, the Court saw Flook as seeking to patent a mathematical formula, while Diehr was seeking to patent a process for curing synthetic rubber.  The fact that the claimed invention in Flook was specific to a particular technical environment or that it performed the insignificant post-solution activity of adjusting the alarm was not enough to transform the unpatentable principle into a patentable process.

Using the analysis of Alice, while both Flook and Diehr were both directed to an abstract idea used in a technological field, Diehr’s inclusion of acts of continually measuring internal temperature and continually recalculating the cure time in the claim, as well as the transformation of raw rubber into cured rubber, provided the “something more” that made the claim patent-eligible.  If Diehr had not recited these acts in the claim, for example, only reciting providing data, calculating a value based on this data using the Arrhenius equation, and opening the press automatically, Diehr would have fallen for the same reasons as Flook.

One way perhaps to articulate the difference between Diehr and Flook is that the patentable method of Diehr achieves a result that would not have been possible without the computer.  For example, the cured rubber produced using Diehr’s process was presumably of higher quality by virtue of the claimed invention as compared to cured rubber produced without the constant temperature readings and the constant recalculations that the computer made possible.  In contrast, the unpatentable method of Flook set an alarm limit for a chemical process, but the computer was merely the means for calculating the new alarm limit and did not achieve a result that would not have been possible without the computer.  For example, the new alarm limit calculated using Flook’s process was not any better than an alarm limit calculated using other means.  The new alarm limit may have been achieved faster or more reliably using a computer, but these are attributes of a generic computer as a calculating machine and do not amount to “something more” under the Alice framework.

Revisiting these earlier Supreme Court cases, particularly Diehr, in the context of the patent eligibility framework of Alice, makes it clear that even in technological fields, patent eligibility will not rely on the use of the computer alone.  Besides being directed to an improvement in a technological field, to provide the “something more,” the computer-based invention should recite a use of the computer in a manner that results in an improvement in a technical field beyond mere automation, for example by achieving a result that would not have been achievable without the computer.  The closer to Diehr that a patent applicant can recite the computer-based invention, the higher likelihood of success in obtaining the patent and having the patent withstand post-grant patent eligibility challenges.


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You can’t get anything you want at Alice’s Restaurant

“Alice’s Restaurant” is a light-hearted, 18-minute-long, anti-war folk song from the 1960s by Arlo Guthrie that has been played on AM and FM radio during each Thanksgiving holiday over the past 40+ years.  The chorus includes the repeated line: “You can get anything you want at Alice’s Restaurant.”

Well, this Thanksgiving season, the Federal Circuit has issued a decision in Ultramercial, Inc. v. Hulu LLC, which applies the U.S. Supreme Court’s recent ruling in Alice Corp. v. CLS Bank Int’l to a computer-based method and reaffirms that when it comes to patenting computer-based subject matter, you can’t get anything you want [at Alice’s Restaurant].

In Alice, the Supreme Court ruled that a computer-based method of exchanging financial obligations between two parties to mitigate risk of non-performance by one of the parties was ineligible for patenting.  Using a two-part test for patentable subject matter, the Court in Alice found that (i) the claimed method was directed to the abstract idea of “use of a third party to mitigate settlement risk,” and (ii) by merely using generic computer implementation to apply this abstract idea, the claims did not include anything that transformed the patent-ineligible abstract idea into something that is patent-eligible.  The rationale for not allowing patents on abstract ideas (as well as on laws of nature or natural phenomena) is to avoid pre-emption, where the patent would effectively pre-empt or grant a monopoly over the abstract idea, which would impede innovation.

While the subject matter at issue in Alice was a so-called business method, the two-part test for eligible subject matter is applicable to all computer-implemented inventions.  The Alice decision does not describe exactly what is an abstract idea (“We need not labor to delimit the precise contours of the ‘abstract idea’ category”) and only gives limited guidance on what is the “something more” that transmutes abstract ideas into patent-eligible gold.

Thus, it falls to the lower federal courts (the Federal Circuit and the district courts) to develop case law that elucidates these concepts by applying them to other situations.  In initial subsequent rulings, defendants accused of infringement of computer-based patents have been generally successful in using the Alice two-part test to invalidate the patents they are accused of infringing for being patent-ineligible.  Patent applicants and their attorneys see the strong efficacy in such arguments and are hungry for any guidance for navigating their way through the Alice two-part test to improve the likelihood that their computer-based technology is found to be patent-eligible.

In its recent Ultramercial ruling issued earlier this month, the Federal Circuit applied the Alice patent eligibility test to claims directed to a computer-based method for distributing copyrighted material over the Internet to consumers who, in exchange for watching an advertisement, are given access to the copyrighted content.  In finding that the claims are ineligible for patenting, the Ultramercial court provided some additional data points on how the Alice test is to be applied.

Computer-based claims will likely be deemed to be directed to an abstract idea

With regard to the first prong of the Alice test, the Ultramercial court agreed with the lower court that the claims are directed to an abstract idea, namely, the use of “advertisement as an exchange or currency.”  The court stated that while the claims at issue included some features “such as ‘consulting an activity log’ [that] add a degree of particularity,” “the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content,” even though these features may be novel or non-routine.  In other words, while the claims were narrower than the broad abstract idea (thereby avoiding total pre-emption of the abstract idea), these features were insufficient to avoid the claims being deemed to be directed to the abstract idea.

As a practical matter, when it comes to certain computer-implemented methods (e.g., in applications such as financial services or organizing human activities), it’s relatively easy to characterize many of the steps as describing an abstract idea.  Such methods are generally performed by conventional, generic computers, perhaps utilizing the ubiquitous Internet (as in Ultramercial), and such features have been insufficient to avoid the fate of being an abstract idea.  Claims that can be characterized as improving a technological process (e.g., improving the operation of the computer system itself) will have the best likelihood of patent eligibility, so to the extent possible, claims should be drafted with this goal in mind and existing claims should be argued to be so directed.  However, in some fields, this will be difficult to do, so such computer-based claims are likely to be found to be directed to an abstract idea.

Patent eligibility will depend on whether the claims include a transmogrifying “something more”

The battle of patent eligibility will more often be waged on the field of whether the claims recite “something more” that transforms the abstract idea to something that is patent-eligiible, the second prong of the Alice test.

Under this second prong, the Ultramercial court looked to whether the claims do “significantly more than simply describe the abstract method” by evaluating “whether the claims contain an ‘inventive concept’ to ‘transform’ the claimed abstract idea into patent-eligible subject matter.” Looking to the rationale of avoiding pre-emption of the abstract idea by the claims at issue, the court explains that to be patent-eligible, a claim that recites an abstract idea must include additional features to avoid monopolization of the abstract idea, but these additional features have to be more than “well-understood, routine, conventional activity.”

Here the court concluded that the claims did not include such additional features to provide the transformation into patent-eligible subject matter.  The court again pointed out that “[t]he majority of [the] steps comprise the abstract concept of offering media content in exchange for viewing an advertisement.”  The other steps, such as updating an activity log, were dismissed as being merely routine, conventional, specified at a high level of generality, or insignificant data-gathering steps.

Notably, the court acknowledged that some of the claimed steps had not previously been employed in the field of distributing copyright material over the Internet, but stated that this “was not enough—standing alone—to confer patent eligibility.”  Thus, the court characterized these steps as being routine, whether or not they had previously been used in the relevant field.  Apparently, determining whether there is “something more” does not ride on the novelty of the various steps.

Instead, the court focused on the technological nature of these steps, which included citing the “machine-or-transformation” test as providing a “useful clue” regarding the “something more.”  Under this test, a method claim is eligible for patenting if (i) it is implemented by a particular machine in a non-conventional or non-trivial manner, or (ii) it transforms an article from one state to another.  For a number of years, this “machine-or-transformation” test had been relied upon by the Federal Circuit as the definitive measure of whether a claim was patent-eligible or not, until the Supreme Court’s ruling in Bilski in 2008 held that the test was not the sole test of patent eligibility.  Applying this test to the claims in Ultramercial, the Federal Circuit held that the claims were not tied to a particular novel machine (generic computers and the Internet were not sufficient) and that the claims did not transform any article to a different state or thing.  Therefore, the court held that the claims failed the “machine-or-transformation” test, providing a further reason for finding a lack of “something more.”

It’s likely that the “machine-or-transformation” analysis will continue to be used as a substantive indication of patent eligibility.  While the Ultramercial court characterized its use of the “machine-or-transformation” test as merely a clue towards patent eligibility, as will future courts to avoid running afoul of Bilski, litigants and patent applicants should expect that the test will continue to be used by courts and the USPTO as strong evidence of patent eligibility or ineligibility.

You can’t always get what you want.  But if you try sometimes, you might find, you get what you need.

The ramifications of the Alice decision are still being fleshed out by the federal courts and the USPTO, with the Ultramercial decision being the latest data point from the Federal Circuit.  The best likelihood for patent eligibility of computer-implemented methods going to claims that have technological features that can be characterized as being transformative of the underlying abstract ideas to concrete, tangible inventions.  Referring to another 1960s song, by narrowing the scope of such claims by strategically including such technological features, patent applicants may find that while they can’t get anything they want, “[they] can get what [they] need.”

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Posted by on November 25, 2014 in patent law


Patents of the 2014 Nobel Laureates in Physics

The United Nations has deemed the coming year to be the “International Year of Light and Light-Based Technologies” in an effort to raise global awareness about the role optical technologies play in the development of society and providing solutions to global challenges in energy, education, agriculture and health.   It is therefore fitting that the recently-announced 2014 Nobel Prize in Physics was awarded to three inventors of the blue light-emitting diode (LED): Isamu Akasaki, Hiroshi Amano, and Shuji Nakamura.  As described by the Royal Society of Sweden, these three Nobel Laureates “are rewarded for having invented a new energy-efficient and environment-friendly light source” which can be used in combination with red and green LEDs to produce white light lamps that are long-lasting and energy-efficient.

Each of these researchers has been a prolific inventor.  To date, Prof. Nakamura is listed as an inventor or co-inventor on 171 U.S. patents, and Profs. Akasaki and Amano are listed on 53 and 65 U.S. patents, respectively, with 35 of these patents listing both of them.

I thought it would be interesting to look at a couple of their earliest patents dealing with the GaN-based semiconductor devices that are the basis for their Nobel-winning work on blue LEDs.


U.S. Pat. No. 5,122,845, issued in 1992, is the first U.S. patent that included both Profs. Akasaki and Amano (along with others) as co-inventors.  The patent describes a sapphire wafer and an AlN buffer layer formed on the sapphire surface, which can serve as a substrate for subsequent growth of a high-quality, single crystalline layer of AlxGa1-xN with sufficiently few defects to be used in a blue LED.

I found it interesting that the patent not only explicitly covers the resulting blue LED structure of the (sapphire wafer) + (AlN buffer layer) + (light-emitting AlxGa1-xN layer), but also covers the intermediate structure of (sapphire wafer) + (AlN buffer layer) that exists before the light-emitting layer is deposited.  This patent is a good example of strategic claiming by focusing at least some of the claims on intermediate structures that include the inventive concept.  The underlying discovery in this case seems to be how to form a buffer layer that facilitates growth of a light-emitting layer with desirable morphology.  Since it is conceivable that the intermediate structure might be fabricated and sold to other entities to grow their own desired subsequent layers, having claims directed to the intermediate structure provides protection for this potential revenue stream.










In 1996, while working for Nichia Corp, Prof. Nakamura was awarded U.S. Pat. No. 5,578,839 for a GaN-based double heterostructure device that included a light-emitting, impurity-doped layer of InxGa1-xN sandwiched between an n-type GaN clad layer and a p-type GaN clad layer, all grown using metal-organic chemical vapor deposition (MOCVD) on an undoped buffer layer on a sapphire substrate (e.g., the intermediate structure of the Akasaki and Amano patent described above).  The wavelength emitted by the InxGa1-xN is dependent on the level of doping, with x = 0.14-0.15 yielding blue light.

For his pioneering work on blue LEDs and blue semiconductor lasers, which resulted in hundreds of millions of dollars in sales for Nichia, Prof. Nakamura received only nominal compensation, which was the standard at the time in Japanese companies.  For example, for one patent he received a paltry $180 from the company.  In 2001, Prof. Nakamura sued Nichia in Tokyo District Court and in 2004, the court awarded him $180 million, stating that “the invention was a totally rare example of a world-class invention achieved by the inventor’s individual ability and unique ideas in a poor research environment at a small company.”  The ruling helped pave the way for more adequate compensation to corporate innovators in Japan.  After Nichia appealed the decision, the case was settled in 2005 with Nichia paying Prof. Nakamura $8.1 million.  Prof. Nakamura is now a tenured professor at University of California at Santa Barbara.


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Patenting Hi-Tech Software: Do More Than Manipulate Information

Recently, the Federal Circuit ruled on a software patent case that illustrates an application of last month’s U.S. Supreme Court decision in Alice v. CLS Bank on the patent eligibility of software in high-tech industries outside the financial services sector, including optics and photonics.    us5970479_fig1

The decision in Alice was acutely anticipated in the high-tech community because of its potential effect on the ability to patent software.  While the patents at issue were directed specifically to methods of using computers to carry out settlement risk mitigation in financial transactions and the computers so used, the broad question presented by the patentee Alice Corp. was whether computer-implemented inventions (e.g., software and computers running the software) in general are patentable subject matter under U.S. law.

While the Court did not directly address this broad question, the Court’s unanimous decision explained that to be eligible for patenting, such inventions had to be more than just an abstract idea or a generic computer applying the abstract idea.  The Court laid out a two-step test for a court to evaluate whether an invention is eligible for patenting.  This test was first enunciated by the Court in Mayo v. Prometheus, a 2012 case which found that a particular method of optimizing therapeutic efficacy of a drug was not eligible for patenting since it was merely an application of a law of nature using conventional steps.  Under this test, a court must first determine whether the patent claims are directed to a patent-ineligible concept (e.g., an abstract idea, a natural phenomenon, or a law of nature).  If so, the court must then determine whether the elements of the patent claims, considered both individually and as an ordered combination, transform the nature of the claim into something that is patent-eligible.

The Court applied this test to the patents at issue, and found that (i) the claims were directed to the abstract idea of “intermediated settlement,” which the Court said was “a fundamental economic practice long prevalent in our system of commerce” and (ii) the claims merely applied this abstract idea using a generic computer, and such conventional application did not transform the nature of the claims.  As a result, the patents were ruled invalid for being directed to patent-ineligible subject matter.

The claims in Alice were directed to the financial services industry, but those of us involved with high-tech industries cannot take solace in this fact to think that our software inventions are not subject to this test as well.  To illustrate, a recent Federal Circuit’s application of the two-part test of Alice and Mayo shows how we can expect it to be applied to all types of computer-implemented inventions.

us6128415_fig1In Digitech Image Tech. v. Electronics for Imaging, Inc. (EFI), the patent being asserted was originally issued to Polaroid Corp. in 2000 and after Polaroid’s bankruptcy in 2001 subsequently ended up in the hands of Digitech, a subsidiary of the non-practicing entity Acacia Research Corp.  In this case, Digitech was asserting the patent against EFI as well as EFI’s customers and various on-line retailers.  The claims of the patent were directed to “a device profile” which can be used to characterize and correct for distortions of an image’s color and spatial properties introduced by components of a digital image reproduction system, and a method of generating such a device profile.  Digitech was appealing the decision by the district court that all the claims were invalid for being directed to patent-ineligible subject matter.


The Federal Circuit affirmed the district court’s ruling that the “device profile” was merely information in the form of “a collection of numerical data that lacks a physical component or physical manifestation.” For example, as shown on the right, Claim 1 recites that the device profile comprises “first data” regarding the color information of the image and “second data” regarding the spatial information of the image.  Since the claims were directed to information in its non-tangible form, these claims were deemed invalid for not falling within the categories of patent-eligible subject matter under U.S. law (a “process, machine, manufacture, or composition of matter”).


With regard to the claims to the method of generating the device profile, the Federal Circuit applied the two-part test of Alice and Mayo and affirmed the district court here as well.  First, the court found that the method claims were directed to an abstract idea because they described “a process of organizing information through mathematical correlations and [are] not tied to a specific structure or machine.”  For example, as shown on the right, Claim 10 recites that the process comprises taking two data sets and combining them into a single data set, namely the device profile.  Therefore, the claim recites “an ineligible abstract process of gathering and combining data that does not require input from a physical device.”  The court then found that the method claims did not include anything further that would transform the nature of the claims into something that is patent-eligible.  For example, the court held that there was nothing in the claims that expressly tied the method to an image processor.  While the preamble of the claim mentions that the device profile can be used with a digital image reproduction system, the court found that this was merely an intended use of the device profile that did not limit the scope of the claim.  Therefore, the method claims recite “a process that merely employs mathematical algorithms to manipulate existing information to generate additional information” which is an abstract idea that is not patent-eligible.

As illustrated by the Digitech case, applicants and patentees in high-tech industries outside the financial services industry should make sure that their method claims are able to traverse the two-part test for patent-eligible subject matter.  Both the Alice ruling and the Digitech ruling confirm that merely reciting an abstract idea does not doom a claim to patent ineligibility.  However, such method claims must be more than the conventional application of the abstract idea.

To be considered patent eligible, a claim to a computer-implemented process should recite more than merely “a process that employs mathematical algorithms to manipulate existing information to generate additional information.”  Even if such information or data represent physical parameters or variables, or even if such a manipulation of data had never been done before, it is possible that the claim would be deemed patent-ineligible for being directed to “a process of organizing information through mathematical correlations [that] is not tied to a specific structure or machine,” as in Digitech.

For example, explicitly reciting the acquisition of input data from the physical world (e.g., measuring a parameter using a sensor) may be helpful to tie the process to a specific structure or machine and to transform the nature of the computer-implemented process into “something that is patent-eligible.”  This is especially true if such measurements are not made conventionally.  As another example, explicitly using the resultant data in making a determination or in controlling a mechanism may also provide the additional elements that transform the nature of the claim from the abstract realm into the patent-eligible physical realm.  Such use can be an improvement to the physical system being utilized, including the functioning of the computer itself.  However, such recited use should be more than merely applying the resultant data on a computer, particularly if the process can be performed by a generic computer.


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Google’s glucose-sensing contact lenses: An informative case study in protecting innovation

Hand holding - zoomed inGoogle recently announced on its blog that its “Google-X” laboratory is testing a prototype “smart” contact lens that includes a miniaturized electronic sensor designed to measure glucose level in the wearer’s tears.  I thought it’d be interesting to review the relevant patents to see how the company has protected its interest in this innovation.  What I found was an instructive example of how to protect innovations that have been developed over the course of years.  The following discussion lists five lessons from Google’s example that can be emulated by start-ups as well as more mature companies. Read the rest of this entry »

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Posted by on January 20, 2014 in medical, mems, patent law, vision


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Hollow-core waveguide for high power lasers; Raydiance’s U.S. Pat. No. 8,554,037

Raydiance Inc. of Petaluma, CA received U.S. Patent No. 8,554,037 on October 8, 2013 for a hybrid waveguide with a hollow core having outer solid-web regions that are filled with gas to provide specific light transport characteristics for transmitting ultra-short, high-power laser pulses.

US8554037_fig5     US8554037_claim1

According to the ‘037 patent, conventional solid core and cladding waveguides are not suitable for transporting high-energy and ultra-short pulse width laser beams (e.g., greater than 0.1 joule per square centimeter, shorter than 10 picoseconds) due to light-induced distortions and damage to the waveguide.  While a hollow core waveguide can be less sensitive to such powerful laser beams, conventional hollow core waveguides (e.g., Bragg fibers and photonic bandgap fibers) require particular materials and fabrication techniques, and have stringent dimensional constraints.  The ‘037 patent discloses a hybrid waveguide having a multiple-region hollow core with a gas-filled center region and multiple gas-filled outer regions within a surrounding solid web material.  The gas species, pressures, and geometric distributions of the gases filling the center region and the outer regions are selected to tailor the refractive indices of these regions to provide the desired optical propagation.

According to the company’s website, Raydiance markets femtosecond lasers for precision micro-machining applications that can cut structures in metals, polymers, glass and other materials by laser ablation without introducing thermal damage to the remaining material.  The website also includes a few videos that show their lasers in action (one of which shows a laser machining the company logo in the head of a match without the match igniting), and a blog on laser-based precision manufacturing.


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Free-space optical coupling using a reflective beveled surface; Intel’s U.S. Pat. No. 8,530,818

Intel Corp. of Santa Clara, CA was awarded U.S. Patent No. 8,530,818 on September 10, 2013 for an optical coupler compatible with a wide range of optical signal wavelengths.

     US8530818_claim1     US8530818_fig4

According to the ‘818 patent, the high optical absorption of planar silicon waveguides at smaller wavelengths (e.g., 850 nm) restricts their use to longer wavelengths (e.g., 1350 nm) where the optical absorption is much less (by about 8.5 orders of magnitude).  However, to achieve high bandwidth performance at these longer wavelengths, the use of normal incidence photodetectors (NIPDs) has required small active areas and difficult-to-achieve alignment precision among the various optical components.  The ‘818 patent discloses an optical coupler that avoids using planar silicon waveguides, instead using a reflector die with an optical-quality facet that reflects optical signals propagating in free space to an underlying NIPD and alignment grooves that precisely position the reflector die relative to the NIPD.

Over the past decade, Intel’s silicon photonics research group has been working on the components needed to replace existing systems using electrical signals with high-speed optical networking systems that have the potential of providing data transmission rates greater than 1 Terabit per second.  As explained in this company video, Intel has developed an integrated silicon photonics module that achieves 100 Gigabits per second (100Gbps) by utilizing hybrid silicon lasers, modulators, waveguides, and detectors and that is fabricated using standard CMOS wafer fab techniques.  At the upcoming 2014 SPIE Photonics West conference, Intel’s Dr. Mario J. Paniccia, Intel Fellow and general manager of its Silicon Photonics Operations Organization (and co-inventor of the ‘818 patent), will be among the panelists discussing the state of “Silicon Photonics and Photonic Integrated Circuits.”

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Posted by on September 30, 2013 in optical network, pic


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Optics for sorting spermatozoa; Sexing Technologies’ U.S. Pat. No. 8,502,976

Here’s an application of optics that I didn’t know existed: sex sorting of semen for artificial insemination. That is the motivation behind U.S. Patent No. 8,502,976 which was awarded on August 6, 2013 to Inguram LLC (dba Sexing Technologies) of Navasota, TX for its “UV Diode Laser Excitation in Flow Cytometry” invention.

                 US8502976_fig2          US8502976_claim1

The ‘976 patent describes a use of flow cytometry in which a pulsed stream of liquid containing suspended  sperm cells is irradiated by a laser beam at a wavelength chosen to cause fluorescence, e.g., by a fluorochrome dye bound to the genetic material.

According to the ‘976 patent, “[b]ecause X-chromosome bearing spermatozoa contain more DNA than Y-chromosome bearing spermatozoa, the X-chromosome bearing spermatozoa can bind a greater amount of fluorochrome than Y-chromosome bearing spermatozoa.”  Depending on the measured amount of fluorescence emitted by a droplet, the droplet can be deflected (e.g., by applying a charge on the droplet and then having the droplet fall through an electric field) into one selected container or another.  For cattle, the difference in DNA is only 3.8%, but that is enough to distinguish X-chromosome bearing cells (for producing cows) from Y-chromosome bearing cells (for producing bulls).  According to the company’s website, “[t]he sorting technique is proven to be routinely 93% gender accurate,” and the purified sperm can then be frozen for later artificial insemination.

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Posted by on September 23, 2013 in detector, fluorescence, laser, medical, sorting


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Plenoptic photography by a smartphone; Pelican Imaging’s U.S. Pat. No. 8,514,491

Pelican Imaging Corp. of Mountain View, CA was awarded U.S. Pat. No. 8,514,491 on August 20, 2013 for its “Lens Stack Array.”



As described by the ‘491 patent, the lens stack array includes multiple optical channels spaced from one another, each channel containing an aperture, a lens, and a spectral filter, with some of the lenses having different surfaces based on the specific spectral band of light passed by the spectral filter of the optical channel. The lens stack array can be used in a plenoptic or light-field camera.  In my previous blogpost, I described how such cameras produce images that can be post-processed to achieve various effects, such as focusing on different parts of the imaged scene.

Pelican Imaging has developed a 4×4 array camera which the company touts as “a smart camera for your smartphone.”  A video shows the capabilities of such a system, for example, allowing the user to select a subject to refocus on, to have multiple focal points, and to combine images.  Pelican Imaging has grabbed the attention, and investments from Nokia, Qualcomm, and Panasonic.  Recently, the company demonstrated its technology’s capabilities in 3D imaging and video capture at the Qualcomm Uplinq™ 2013 Mobile Developers Conference.  For example, another company video shows that the technology can potentially be used with a 3D printer to create copies of a photographed subject.  According to an Engadget article, Pelican Imaging’s CEO, Chris Pickett, confirmed that the company’s camera technology is scheduled to be included in at least one new smartphone in 2014.

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Posted by on September 16, 2013 in imaging, plenoptic


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