Boston ERISA Law Blog

Posted By Stephen D. Rosenberg In ERISA Seminars and other Resources
0 Comments
Permalink |

Here at this blog, we are all about being a modern media company, as you can tell from all the pop-ups and the banner ads you encounter when you come here to read the latest posts. Synergy, and book serialization and cross-marketing and all those other business page buzzwords - that’s what we’re about here.

Now I will take a minute and pull my tongue out of my cheek, and move onto one cross-marketing opportunity that I have agreed to, because it benefits the readers of this blog and involves what promises to be an outstanding educational opportunity. The American Conference Institute is hosting what looks to be a very broad and in-depth examination of current hot topics in ERISA litigation next October in New York, and this blog has signed on as a media sponsor. As per our continuing non-commercial status, no money in it for us, but it gives readers of this blog an opportunity for a substantial discount if they register in the next couple of weeks for the seminar. Just use my name and tell them I sent you. Just kidding - the actual information and manner of laying claim to the discount is right here.

The brochure for the conference itself can be found here. I signed on as a media sponsor for the same reason I think readers may be interested in the seminar, which is that the list of topics reads like a table of contents for the blog; thus, light dawned over Marblehead here and I realized if you read this blog regularly, you would probably be interested in the subjects being addressed at the conference. Beyond that, you will see the speaker list (here comes the pun) speaks for itself.

Posted By Stephen D. Rosenberg In Intellectual Property Litigation
0 Comments
Permalink |

Oops. I was so busy Friday litigating two different ERISA cases that I plum forgot to post the latest episode of our semi-serialization of Robert Plotkin’s book on automated inventing and its impact on patent law, The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business. Anyway, better late than never, so here is the next installment.

Automated Inventing: Should Wishes be Patentable?

In my previous entry, I explained that you could view a human engineer who uses "artificial invention" technology to create a design for a new product as being analogous to an Aladdin who creates a new product by making a wish to a genie, as follows:

Human Inventor --> Wish --> Artificial Invention Technology --> Wish Come True (Product Design)

Based on the history of the patent system, we should expect that people will start filing patent applications for everything in this diagram that comes after the human inventor, namely the wish, the artificial invention technology, and the resulting product design. (In The Genie in the Machine I provide examples of patent applications which have already been filed -- and granted -- on the latter two of these three.) If we want patent law to grant such patents only when doing so will promote innovation, we need to make sure that the legal rules for patentability produce the right outcomes when applied to such patent applications.

First, consider wishes. What exactly do I mean by a "wish"? It is any description of a problem, written in a language that artificial invention software can understand, that the software can use to create a design for a product that solves the problem. For example, if you want to design a frame for an automobile that is as aerodynamic as an existing frame, but weighs 10% less, your wish might describe the aerodynamic requirements of the frame and its maximum weight. Some kinds of artificial invention software can use such a description to generate potential new car frame designs and -- using a simulator -- evaluate how well they match up to the requirements specified in your wish. The software then eliminates designs which fared poorly and modifies designs which performed well, in an attempt to produce even better designs. It then evaluates the new designs based on the criteria specified by your wish. It might repeat this process hundreds of times in an attempt to produce a product design -- what I have been calling the "wish come true" -- which satisfies your wish as closely as possible.

It may seem strange even to ask whether wishes should be patentable. Yet the kinds of wishes I am talking about are similar in some ways to traditional computer programs. Artificial wishes are a combination of instructions and data, written and stored in a physical form that can be processed automatically by a computer to perform a useful function. Therefore many, if not all, of the reasons that traditional software has been subject to patent protection also apply to artificial wishes.

Yet patent protection for software has remained highly controversial for almost 50 years. One reason is that computer programs are more "abstract" in some sense than cotton gins and other traditional nuts-and-bolts machines. Artificial wishes can be even more abstract than traditional programs. Therefore, to the extent that granting overly abstract patent claims can impede innovation, we need to be even more concerned about granting patents for artificial wishes.

We shouldn't, however, throw the baby out with the bathwater. Just as significant advances in software should be entitled to patent protection, even if the patents covering such software are relatively abstract, so too should new and useful artificial wishes be entitled to patent protection, so long as the legal requirements for patentability are applied with particular care to such patents. We should only grant a patent on an artificial wish if such a wish is truly new, useful, and nonobvious (the three fundamental requirements for patentability), if the specification of the patent describes how to use the wish in combination with artificial invention technology to produce new products, and if the patent's claims are written clearly.

I explain why this is the right solution in much more detail in The Genie in the Machine, where I also explain why artificial invention technology itself should be patentable. In my next, and final, blog entry I will explain why computer-generated inventions -- what I have been calling the "wish come true" -- should be patentable, and why it will be particularly tricky to apply patent law's "nonobviousness" standard to such inventions.

Posted By Stephen D. Rosenberg In Health Insurance , Massachusetts Health Care Reform Act , Preemption
0 Comments
Permalink |

File this, I suppose, in the department of inevitable events - lawyers representing the restaurant industry have filed to have the Supreme Court review the Ninth Circuit ruling finding that the San Francisco pay or play ordinance is not preempted by ERISA. This is one of those instances where you can bet how the case will come out the same day the Court announces whether it will hear the case; if it does, the statute is going to be found preempted and the Ninth Circuit overruled, for reasons I referenced in passing here.

I do have a reason for posting on this, beyond wanting to get on board early with a prediction for the outcome (even Paul Secunda, back in his days as the Workplace Prof, would never have called a case before it was even accepted for hearing!), and that is this quote from the restaurant group’s lawyer, courtesy of the National Law Journal:

"One of the most important issues that we are debating in the country today is how health care is to be provided," said Jeff Tanenbaum, chairman of the labor and employment group in the San Francisco office of Nixon Peabody, who represents the Golden Gate Restaurant Association, which filed the petition on June 5. Golden Gate Restaurant Association v. City and County of San Francisco, No. 08-1515.

"This case comes down at a time when that debate is the focus of tremendous attention at the federal level. It is an issue that needs to be addressed at the federal level," he said.
 

I have said it time and time again on this blog, that ERISA preemption serves the admirable, even if perhaps inadvertent, role of forcing health care to be tackled at the only level it can be adequately addressed, the federal one, and not at the level of state governments, which simply don’t have the resources to pull it off, as this article here reminds us yet again (and this one too). I am happy to hear someone else say it as well.

Posted By Stephen D. Rosenberg In Intellectual Property Litigation , Patent Infringement
0 Comments
Permalink |

Last week, we commenced our (quasi-) serialization of Robert Plotkin's book, The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business.  Here, as promised, is part 2 in the series.

Automated Inventing: The Challenge for Patent Law

As I explained in my previous entry, increasingly powerful computer software is being used to automate the process of inventing. Since such software takes a wide variety of forms, I use the term "artificial invention technology" to refer to all of it. Patent law was originally developed in a time when all inventing was performed manually. Now, however, patent law must be ready to deal with attempts to patent artificial invention technology and the inventions it produces.

In my book, The Genie in the Machine, I explain how patent law can be updated to face this challenge. To give a flavor of how patent law needs to be reformed, let me start by explaining the meaning of the book's title. You can view a computer that is equipped with artificial invention software as a kind of artificial genie. A human inventor can provide such a computer with an abstract description of a problem that he or she wants to solve -- such as creating a toothbrush that can whiten teeth more efficiently than previous toothbrushes. This description, which must be written in a language that the artificial genie can understand, is like a wish for a better toothbrush. The artificial invention software (i.e., the genie) uses this artificial wish to create a computer model of an improved toothbrush -- the wish come true. In some cases, the product itself can be manufactured automatically based on the digital design.

In short, the basic pattern described above can be represented by the following simple diagram:

Human Inventor --> Wish --> Artificial Invention Technology --> Wish Come True (Product Design)

This exposes very clearly the questions that patent law must be prepared to answer, namely whether -- and under which circumstances -- each of the following should be patentable:

- Artificial "wishes" (the input that a human inventor provides to artificial invention technology to create a new product design)
- Artificial invention technology (the computer hardware and software that can create new product designs automatically)
- Wishes come true (product designs created using artificial invention technology)

In my next blog entry I will give a flavor for how patent law can be updated to answer these questions.

Posted By Stephen D. Rosenberg In People are Talking . . .
0 Comments
Permalink |

. . . is what my colleague Eric Brodie calls this article, in which I am interviewed about the pros and cons of legal blogging.
 

Posted By Stephen D. Rosenberg In Patent Infringement
0 Comments
Permalink |

I have always maintained a digressions section of the blog, down in the corner of the left hand side of the blog, for the purpose of allowing me to talk about areas of my practice - like intellectual property litigation - other than those listed in the title of the blog; its also there to give me space for subjects that are of interest to me but of only tangential relation to the subjects of either the blog or my practice, such as the financial underpinnings of the Massachusetts Health Care Reform Act.

This time around I have decided to make use of my editorial prerogatives and the digressions section of the blog to welcome my first ever guest blogger, Robert Plotkin. Longtime readers may remember other references to Robert in patent related blog entries; Robert is a long time patent lawyer who specializes, in particular, in patent protection for computer technology, and was named a "Go-To Law Firm for Leading Technology Companies" by American Lawyer Media in 2008.

Stanford University Press has just published Robert’s new book, The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business, and the ideas behind it - the manner in which such automated inventing strays from and thus may impact the paradigms under which we understand patent prosecution and patent law - fascinate me. The Boston ERISA and Insurance Litigation blog, despite its massive advertising revenue (place tongue firmly in cheek while reading that line), lost the bidding for serialization rights for the book, so I asked Robert if he would write a series of blog posts detailing the issues covered by the book. Robert agreed, and I plan to run them every Friday for the next few weeks. Note that Robert’s blog on automated inventing, by the way, can be found here.

Here’s the first of the series:

Automatic Product Design and Its Impact on Patent Law

Inventors have long been using software to help them design new products. For example, computer-aided design (CAD) software enables engineers to draw three-dimensional models of the components of an automobile engine, and even to "connect" those components together to see how they will interact without needing to build physical prototypes.

Few people are aware that software now exists which can not only display product designs which have been drawn by a human engineer, but also create such designs itself. In addition, today's latest "artificial invention" software can simulate the operation of a new product -- such as an automobile engine -- evaluate its performance, and then refine the product design repeatedly to improve the end product. One example of such software -- Stephen Thaler's "Creativity Machine" -- has been called "Thomas Edison in a box." In my book, The Genie in the Machine, I describe the history of such technology and provide many real-world examples of the products it has been used to create -- everything from toothbrushes to antennas to the nosecone on the Japanese bullet train.

Artificial invention technology has the potential to enable us to create better products more quickly and inexpensively than ever before. Such software often produces designs that surprise expert human inventors, because software lacks the blindspots and prejudices that can stop human engineers from pursuing pathways that are fruitful but which contradict conventional wisdom. Businesses are already using invention automation software -- including evolutionary algorithms and artificial neural networks -- to slash their research and development costs.

Patent law has yet to grapple with the implications of computer-automated inventing. Yet it must do so if patent law is to continue promoting innovation. In my next blog entry, I will point out some of the challenges that artificial invention technology poses for patent law.

Posted By Stephen D. Rosenberg In Health Insurance , Massachusetts Health Care Reform Act
0 Comments
Permalink |

Maybe of what not to do.

I couldn’t let this go by without noting it - he has a Nobel after all and I, well, I have a sixth man award from a high school basketball team. Paul Krugman on health care reform:

Without an effective public option, the Obama health care reform will be simply a national version of the health care reform in Massachusetts: a system that is a lot better than nothing but has done little to address the fundamental problem of a fragmented system, and as a result has done little to control rising health care costs.

I think I have read that description of the Massachusetts act before. No, wait, I think I wrote it.

Posted By Stephen D. Rosenberg In Coverage Litigation
0 Comments
Permalink |

Just too funny not to post this today, even though this was supposed to be a post-free Friday while I finish up a brief. Randy Maniloff of White and Williams has done a (mock) thorough piece of opposition research into the new Supreme Court nominee and discovered, somewhat apparently to his shock, that her rulings reflect a consistent trend of finding in favor of insurers, rather than insureds, on coverage and bad faith issues that have come before her. His piece detailing this is here.

My take? The decisions and quotes Randy highlights reflect a focus by the judge on the specific facts of the cases and on the details of specific insurance coverage doctrines, rather than a looser approach of relying on easy maxims that tend to add up to nothing more than the tie goes to the runner, which in this area means the insured, such as “ambiguous provisions must be construed against the insurance company.” When you focus on the facts of the cases and the details of this area of the law, you don’t end up with any sort of an insured oriented bias, and instead you often find that the insurer’s decision is upheld because the insurer used that same focus in the first instance in making its own decision with regard to coverage.

Kudos to Randy, for again using humor to shed some light into the dark corners of insurance coverage law, this time, whether intentionally or not, on the extent to which judicial approach affects the outcome of coverage cases.

Thanks to Point of Law for passing his piece along.

Posted By Stephen D. Rosenberg In Health Insurance , Massachusetts Health Care Reform Act , Preemption
0 Comments
Permalink |

Well, I have argued more than once on these electronic pages that ERISA preemption, rather than being the whipping boy of choice for people who advocate state level health insurance mandates, should be understood as a key element in bringing about any type of effective change to the health insurance system. Why is that? Because ERISA preemption forbids the states from enacting health insurance reform statues since states cannot enact them without either deliberately or unavoidably rejiggering employer provided - and thus ERISA governed - health plans, meaning that any real change from the current employer provided (and voluntary) health insurance system can only take place on a national level. And why is this in turn good? Because states are kidding themselves if they think that they can, financially, pull off reform of the system on their own, as this article here demonstrates yet again. Although buried behind the praise for the fact that the state reform has increased access by decreasing the numbers of uninsured, the article notes that affordability problems have arisen, which cannot “be blamed on the state's overhaul, but on a much larger and troubling national trend [which is that] [h]ealthcare costs, in general, are increasing faster than inflation.” The city of San Francisco, or the Commonwealth of Massachusetts, cannot solve that problem, and they can’t fund it on their own, either. It’s a national problem, and one that ERISA preemption demands be handled nationally.

Posted By Stephen D. Rosenberg In Fiduciaries
0 Comments
Permalink |

Kevin O’Keefe, the lawyer turned blogging evangelist behind the company that hosts this blog, told me when I was picking a topic for my blog that I should choose a subject where there was plentiful source material to work from on a day in, day out basis. They were oddly prophetic words, in that not too long after launching the blog, fiduciary litigation and concerns exploded, generating a seemingly endless stream of cases and business developments to blog about. Excessive fees, company stock declines, subprime meltdowns, the rise of ERISA as the new securities class actions - all of these issues that I have covered extensively here really exploded after the launch of this blog.

There is so much information and activity going on out there now in this area that it is always good to have other bloggers, the more knowledgeable the better, likewise chiming in on developments in this area, and few are more knowledgeable than long time ERISA blogger B. Janell Grenier, who has just launched a separate blog dedicated to developments concerning the law governing fiduciary status titled the ERISA Fiduciary Guidebook (A Work in Progress). Her new blog captured, for instance, a recent Massachusetts federal court decision that I didn’t cover, involving some of the issues raised by an employer who becomes delinquent in making plan contributions.