Advertising Image v. Multimedia Object

We have been digging around in the multimedia space lately looking at patent applicatons. This is always a fun place to wander around while watching episodes of Entourage on your IPhone or having a YouTube window open with Michael Jackson videos or laughing babies going.

The multimedia patent world aligns with two of our favorite patent portfolios. The MPEG-LA suite of patents - where the titans of the multimedia revolution cross-licensed all of their patents and battle it out in the marketplace; and the Multimedia Patent Trust's holdings; a small but formidable collection of nine patents that includes six in the MPEG space and three in the speech space. Our favorite in the MPT collection is the Netravali patent 4,383,272 which has to do with updating pixels to distinguish moving areas of a picture. From a 50,000 foot view, only compressing the parts of the picture that change to save space. A lot of people think this is a seminal invention in the evolution of HDTV. The patent applications we look at here are made possible by the techiques defined by Mr. Netravali and his co-inventor John D. Robbins.

The first thing we did when we started looking at the patent applications was to define multimedia. One of the sources we were working with defined it as "a transmission that combines media of communication - text, and graphics and sound, etc." That seemed clear enough - if it has pictures, text, and makes noise it's multimedia. No requirement for movement.

One of the published patents we came across in the multimedia space was 10/112,519 - Method and System for Providing Intelligent Advertisement Placement in a Motion Picture. The application describes an invention for embedding advertisements into motion picture content using personalized data. The individual inventors describe a process for swapping out objects in the motion picture with advertising images based on personalize data. I get Diet Coke, you get Mountain Dew, if you're in Louisville, Kentucky or Jeffersonville, Indiana you get Big Red - America's #1 Red Soda. (A shout out to our friends at the Census Bureau.)

Throughout the application the inventors use the phrase "motion picture". So, what's a motion picture? According to the web and the old school paper dictionary, a motion picture is a "movie," a form of entertainment that enacts a story by sound and a sequence of images giving the illusion of continuous movement. Another definition says a motion picture is a length of film with or without recorded sound bearing a sequence of images creating the illusion of movement. OK. So, a movie is a motion picture? It depends. Merriam-Webster says it's a series of pictures projected on a screen in rapid succession with objects shown in successive positions slightly changed to produce the optical effect of a continuous picture in which the objects move. This application was filed in March 2002 and is a continuation in part of an application filed in January 2000.

Fast forward to July of 2006 when patent application number 11/486,683 - System for Creating Dynamically Personalized Media was filed. The inventors describe a multi-media object management system to manage the delivery of product placements in a multi-media program. They describe modifying the content in which the multi-media object locations that can be brokered are replaced with content defined by advertisers based on demographics or other user attributes. The patent teaches a multi-media object location comprising "a spatial and temporal site." (What??) The specification talks about selling the multi-media object locations to advertisers. We like the figures. Nice, easy to understand pictures. The application seems a little heavy with obscure vocabulary no doubt added to help insure the widest possible coverage if and when a patent is granted.

Time for a little clarity. Is a multi-media object an advertising image or is it some precursor thing where you place an advertisig image? What about this spatial and temporal thing? Is this the space where the advertising image goes and an event that takes place over time kind of like the guy drinking the soda in the picture above? You have to ask yourself what words will the examiner use to do their own prior art search? What will the phrase multimedia object return? A multimedia object comes from the world of object oriented programming, MPEG, and the graphics world.

One application discusses product placement, the other discusses advertising. Isn't product placement advertising? Yep. Product placement is defined as an advertising technique used by companies to subtly promote their products; a form of advertising where branded goods or services are placed in context usually devoid of ads, such as movies, the story line of television shows or news programs. (We were good until the news programs part, notice all the anchors tweet from their Macs.)

This is a vocabulary conundrum. But you have to ask yourself, what is the impact of the word choices of the inventors? Will the choice of words in the claims and description of the invention make a difference? What happens when these applications hit USPTO? USPTO has to figure out what to do with the patent applications and which examiners are going to look at them. Should you expect that the content would drive them to the same class?

The motion picture advertising patent is classified in class 725/34. (In case you are wondering, the first boldfaced class on a published patent application is the Primary classification and drives which Group Art Unit at PTO is going to examine your patent application.) The multi-media object product placement patent shows class 705/14 as the the primary class.

Which means?

The two independent inventors who wrote about motion pictures and advertising had their patent classified in class 725/34 a class for interactive video distribution systems, PROGRAM, MESSAGE, OR COMMERCIAL INSERTION OR SUBSTITUTION: Subject matter comprising means or steps for inserting or substituting a video program or other information beyond the control of a viewer, television, for operator interfaces for video sequencing or editing specific to individual user or household: subject matter comprising means or steps for conveying user-specific data. JACKPOT!!

705/14 falls under Data processing: Financial, Business Practice, Management, or Cost/Price Determination - Distribution and redemption of coupon, or inventive or promotion programs. The class definition says, "Note - A display or advertising system is included herein." A display or advertising system? Perplexing - is this a method, a business practice, a process - I guess we'll see.

Patent classification remains an illusive art and USPTO changes its mind along the way but sometimes plain language works best at getting your patent where you want it to go. The examiners are probably happy to have something that helps them find the invention in the blur of words. We have a motion picture where we replace images with advertising images selected based on characteristics of the viewer. Then we have a multi-media object consisting of a spatial or temporal site. The space and time continuum - isn't that what movies are? As another testament to the art of a well crafted patent application. The independent inventors in the motion picture advertising application started their claims by saying: "What is claimed is:" The multi-media object inventors started their claims with: "What is new and desired to be protected by Letters Patent of the United States is."

There is something to be said for clarity and simplicity of language.

The Devil in the Details - Wind Edition

Our quest to find the patent numbers associated with the GE v. Mitsubishi wind turbine investigation at the International Trade Commission continues.

In our earlier post we noted that the 337 investigation covered three patents. One issued in 1992, one issued in 2005, and one in 2008. After trolling the internet and making a few calls, we learned that the 2005 patent is likely 6,924,565 - Continuous Reactive Power Suport for Wind Turbine Generators. The patent issued on August 2, 2005 was cited in older procedural ITC documents about the investigation.

There are two curious items about this patent.

The first is that it appears that GE never got the first named inventor, Thomas A. Wilkins to assign his rights to the invention to GE. The USPTO assignment database page for this patent shows all the other inventors but doesn't show assignment by Mr. Wilkins. This is now in the squabble between GE and Mitsubishi in what appears to be a clean up your paperwork action. The devil is in the detail and in the paperwork.

The second is one of the non-patent prior art citations. The patent cites the following:

Tom Wind, "Wind Turbines Offer New Voltage Control Feature," Power Engineering, September 1999, pp 1-2. Enron Wind Webpage, pp 1-2, wind.enron.com

The Enron link is no more and the link Power Engineering didn't yield the article but we learned that Mr. Wind has a wide range of information on the wind industry on the internet.

Mr. Wind is with Wind Utility Consulting in Jefferson, Iowa. A company name that reflects both the principal and the expertise.

Prior art takes many interesting turns.

Celebrity Watch - Information Edition

For those of you who, from time to time, engage in a little electronic celebrity stalking we bring your Celebrity Watch Information Edition. We suggest you try the FBI's Electronic Freedom of Information Acts (EFOIA) electronic reading room.

The FBI's electronic reading room is where the FBI posts frequently requested information sought under the Freedom of Information Act. For you celebrity stalkers, the reading room features the links to the files they have assembled on "Famous People". Its luminaries include Elvis, Frank Sinatra, Desi Arnez, John Lennon, and Gene Autry among others. Malcolm X is listed as "Little, Malcolm X." There are files on Albert Einstein, Henry Ford, Dr. Martin Luther King, and John Steinbeck.

If you are looking for additional entertainment, check out the Unusual Phenomena listings for Project Blue Book, their investigation into UFOs, and, Animal Mutations. (Perhaps concern about discovering exactly when pigs would fly.)

For a while, the Elvis file was the most frequent FOIA subject in the entire Federal Government. The FBI saved a lot of money when it posted the file online rather then sending out hard copies to people FOIAing his record.

Electronic reading rooms and FOIA are the gateways to amazing amounts of scientific and technical information. Most federal agencies have electronic reading rooms on their website that include most frequently requested information and the actual EFOIA form. A well written FOIA request can be the gateway to tracking down high quality prior art and inventive activity information.

Roll Up Your Windows

From the Ridiculous Intellectual Property Enforcements Catalog we bring you "Roll Up Your Windows."

The American Society of Composers, Authors, and Publishers (ASCAP) filed a suit against AT&T asseting that RINGTONES QUALIFY AS A PUBLIC PERFORMANCE under the Copyright Act. What is ridiculous about this is that the mobile operators have already agreed to and are paying royalties on the ringtones that they sell to subscribers. Now they want the mobile operators to pay when the phone rings in pubic.

According to a press release from the Electronic Frontier Foundation (eff.org), ASCAP argues that phone carriers must pay additional royalties of face legal liability for contributing to what they claim is cell phone user's copyright infringement. Fred von Lohmann, an EFF Senior Intellectual Property Attorney added, "Are the millions of people who have bought ringtones breaking the law if they forget to silence their phones in a restaurant? Under the reasoning from ASCAP, it would be a copy right violation for you to play your car radio with the window down."

It would be a nice thing to silence the cell phones in restaurants (and elevators, and Starbucks, and at the hair place) but it's hardly the ringtones that are annoying. But for now we may need to roll up those windows while this ridiculous claim proceeds or risk delivering a public performance with our cell phone ring tones.

Prior Art Conundrum

Digital scientific literature is accelerating inventive activity and faster development of emerging technology.

There aren't enough subject matter experts to find prior art for new and emerging technology.

This is the new prior art conundrum. This is why being able to get to the right information is becoming so important.

Photomosaic Images, and Excellent Prior Art

We have come to love the art of excellent prior art. Finding really good prior art is one of those serendipitous search moments. Just doing a prior art search makes you smarter but when you find an elegant, amazing piece of prior art it's great. The best prior art quests tend to be part of invalidity efforts with big money, big principles, or both at stake. The one we discuss here is a big principle example.

A refresher on what USPTO says about prior art:

Under 35 U.S.C. 102(b) states: "A person shall be entitled to a patent unless -- (b) the invention was patented or disclosed in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States."

Excellent prior art was found by the people at Public Patent (PubPat) Foundation at Benjamin N. Cardozo School of Law; a not-for-profit legal services organization whose mission is to protect freedom in the patent system. PubPat.org says that they represent the public's interest against undeserved patents and unsound patent policy. We are nonpartisan about their mission but impressed by their finely honed prior art skills.

In September of 2008, Pubpat asked USPTO to re-examine a patent for photomosaic images (6,137,498) The patent was filed in October 27, 1997 based on a provisional application dated January 2, 1997. The patent was granted in October 24, 2000. The reexamination appears to have triggered when the inventor, Robert Silvers of Cambridge, Mass. was sending cease and desist letters and asserting his patent against individuals, small businesses, and against the GIMP open source software program. On June 11th, 2009, PubPat received a copy of the USPTO Office Action invalidating 41 of the 63 claims including all of the independent claims. While the fight isn't totally over, this was a major victory.

What was the primary piece of prior art cited in the USPTO Office Action? The cover of the "Being Double Digital, The Media Lab at 10" November 1995 issue of WIRED magazine. The cover featured a photomosaic portrait of Nicolas Negroponte. This piece of prior art was actually created by Mr. Silvers himself. A piece of art previously submitted to USPTO.

To add to the sublime nature of this particular piece of prior art is the fact that Mr. Silvers' bio cites the Media Lab under his educational credits. Mr. Silvers published a paper titled "Mosaics: Putting Pictures in their Place". The paper was submitted to the Program in Media Arts and Sciences, School of Architecture and Planning as part of the requirements for a Degree of Master of Science in Media Arts and Sciences at the Massachusetts Institute of Technology (MIT) That paper, published in 1996. The document itself states "In 1994, he entered the Media Laboratory at Massachusetts Institute of Technology in Cambridge. The very institution that the WIRED magazine profiled in the November 1995 issue that was used to invalidate Mr. Silver's patent. It's interesting that Mr. Silver's own work is not cited on the patent document.

Mr. Silver passes the patent number test. Mr. Silvers' web site includes his patent number on the bottom of every page. Perhaps Mr. Silver will need to modify his website now.

Where Are The Patent Numbers? - Windustry Edition

Today we add the latest installment in our Eschew IP Obfuscation campaign. We look at recent events in the emerging "Windustry" - the US wind market.

On May 11th, Susan Decker of Bloomberg.com reported that General Electric had asked the U.S. International Trade Commission (ITC) to block Mitsubishi Heavy Industries from importing rival equipment into the United States claiming that it misappropriated three of GE's patents. "Turbines made by Mitsubishi, Japan's largest heavy machinery maker, infringe three patents..." Ok, three patents, which ones?


The article goes on and adds, "Today's wind turbines use different technology, than covered by the GE patents, Mitsubishi lawyer Roger Taylor told the judge. "GE is forced to twist and contort the meaning of its patents to prove infringement." GE says Mitsubishi is infringing, Mitsubishi says not so fast, this is a stretch. We also learn, the ITC acts as a third party arguing on behalf of the public, and has taken the position that there was no violation of GE's patent rights. When did that happen?

On June 10th, the Lexology business intelligence newsletter included a post from Joanna Boag-Thompson of Sherpherd & Wedderburn LLP citing, "GE is the proprietor of three patents which relate to variable speed turbines. Ms. Boag-Thompson notes that GE alleges that the turbines sold by Mitsubishi infringe GE's patents and therefore that Mitsubishi's import of turbines should be blocked. Further in the post she notes that, "An initial ruling is set to be issued by the ITC on 7 August. The initial ruling will be issued by one judge (Carl Charneski) and, once the initial ruling has been issued, the full US ITC then has until 7 December to complete its investigation and either modify, accept or reject the initial ruling. Any order to block imports could, however, ultimately be overturned by the US trade representative Ron Kirk for policy reasons."

The articles report that GE got into the wind turbine market in 2002 after buying the wind turbine assets out of bankruptcy from Enron Corporation. GE had about $6 Billion in global sales of wind turbines in 2008. Mitsubishi's web site says, "Since the 1980s, Misubishi has pioneered the development of high-efficiency wind turbines." Still no details on the patents, GE's so Mitsubishi's, we press on.

Greenstockscentral.com notes in their coverage notes that the three patents asserted by GE were issued in 1992, 2005, and 2008, and are related to variable speed turbines that adjust to insure there is a consistent power being supplied to the electrical grid without damaging the machines and to deal with periods where there is low voltage on the grid, such as a during a power outage. Greenstockscentral.com's info apparently came from National Wind Watch. They point back to Susan Becker at Bloomberg.com. Still no patent numbers. But at least we have some kind of clue to the age of the patents.

But, if GE only got into the wind turbine business in 2002, where did the 1992 patent come from? Enron? Was GE doing R&D work in that area but wasn't selling products. Why are these innovations important? Were their licensing discussions that broke down, are there other infringement matters that are underway? How did the ITC staff make it's decision so quickly? Or at least it looks like it was quick given the information available on the ITC investigation. So the information quest continues. Find the source documents, the complaint to the ITC.

The case is In the Matter of Certain Variable Speed Wind Turbines and Components Thereof, 337-641, U.S. International Trade Commission.

A 337 Investigation is a trade remedy investigation involving claims regarding intellectual property rights including allegations of patent infringement by imported goods. This is a particularly onerous process because a finding that imported goods are infringing a US patent stops the goods at the border. Immigration and Customs Enforcement get an order from the judge and stops the products from entering the US. This is a "we're not messing around" kind of move. If you are on the wrong side of one of these actions, it's a very big problem especially when your dealing with products as expensive as a wind turbine.

Next stop, the ITC website. After a circuitous hunt riddled with dead links and curiously misleading information perhaps designed for the Intellectual Property Cognescenti, we find that public documents are in something called EDIS. To get to the public documents requires creating a user ID.

(Information police: this user ID sign up form includes a list of states NOT in alphabetical order. Strangely disorienting. Does the ITC not know how to alphabetize? Then there's the security question, "What city was your mother/father born in?" Which one? Mother's city, Father's city, does the slash indicate they want both with a slash? Does the ITC assume everyone's parents were born in the same city? But I digress.)

After the get a user ID drill and logging into EDIS, we get to the search screen which takes us to the investigation screen, which then tells us the investigation is confidential and we can't see the documents. So the public document portal doesn't contain public documents after all. We move on but still don't know what EDIS stands for...Electronic Docket Information System? Who knows.

This is kind of perturbing, We can see how keeping the trade secrets of how GE implemented the inventions disclosed in its patents might be confidential but what about the the patent numbers? Come on. But we learn that the investigation number is now 337-TA-641.

This is just too hard.

How about checking the GE site next? Very nice web site, plenty of big brother stuff about how the smart grid will monitor our electricity so that we'll all be doing laundry at 2am but nothing on the web site about the wind turbine infringement. On its R&D GE page says, "GE became the first organization in history to be assigned its 50,000th patent. GE achieved this historic milestone in 1978, the year of the company's centennial. And, they have 36,000 technologists, impressive. Nice R&D blog, "From Edison's Desk" on what GE is up to including the Smart Grid work in Miami. GE gets the new media thing - YouTube Video created by GE put on YouTube and then linked into their blog.

Note to self, add GE.com to list of prior art search locations. Still no patent numbers.

More hunting. According to a news report four of the world's top wind turbine manufacturers are GE Energy, Gamesa, Siemens, and Vestas and they are worried about a tax credit that is about to expire. Vestas has some nice patents. Gamesa is a Spanish company, apparently a smaller player. Only GE manufacturer's wind turbines in the US according to a review of a George Mason University feasiblity study of the Pickens Plan to move to replace natural gas consumption in energy production with wind energy. No mention of Mitsubishi though. Still no patent numbers.

With more hunting we do learn from the Department of Energy that the US has the fastest growing market for wind. In 2007 we eclipsed Germany in Incremental Wind Capacity and are second only to Germany in Cummulative Wind Capacity. (Information police...does this make any sense. Germany's is smaller then the US in population, and land mass. What this says to me is we don't have much wind yet.) Turns out that Maryland, home of the Coronado Group, isn't represented in the "Windustry".

Then we find some interesting business data, courtesy of SC for Green blog scforgreen.com. "Wind turbine imports from Europe and Asia rose from $60 million in 2004 to $2.5 billion in 2008, according to Customs data reviewed by McClatchy Newspapers. Imports of other equipment usually, but not always, used for wind power production also increased in the same period. The value of AC generators and towers, for instance, jumped from $84 million to $1.6 billion." Exponential growth on the import front. Significant market expansion on the import front. Could be bad for business if you are GE. Still no patent numbers.

So, here's what we have so far:

• GE thinks Mitsubishi misappropriated the technology disclosed in three of its patents.
• Mitsubishi thinks GE is stretching their old technology patents to address current products. But if one of the patents was issued in 2008 how old could it be. Is this a blame it on USPTO moment?
  
• The ITC is investigating and has already made a decision sometime or other that they don't think GE's patent rights are being violated. We have no idea how they came to this decision or when.
  
• The three GE patents are of the 1992, 2005, and 2008 vintage.
• The US eclipsed Germany in the amount of incremental wind capacity but since Germany is considerably smaller and has less people, and we can assume less energy requirements, we don't really know what this means.
• Imports of wind turbines and their parts have grown exponentially over the last five years.
• Round one of the decision at ITC comes August 7th.
• Boone Pickens, Jeff Immelt, and others are anxious to build wind based energy generation capacity.
  

What we don't know -

• WHAT ARE THE PATENT NUMBERS?
  
• Why do these inventions matter?
• When do these patents expire?
• Are any of the other competitors using GE's technology, did they license it?
  
• Why is finding out this stuff so hard?
  

So, I give up for today. I'm going to see if I can find the patent numbers for this ITC action before the case gets decided in August. Stay tuned.