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Innovation Diversity and IP Strategy

How can IP strategy be deployed to take advantage of the diverse forms of

innovation? Can protection encompassing a broader range of innovation
forms present opportunities to mitigate against design around, and changes
in patent law? These and other challenging questions are typical of what the
GA State IP Think Tank recently pondered in Atlanta GA while working on IP
strategy development.

[side-bar on the GSIPTT with quotes and thoughts from the leadership – not
written yet…]

Innovation is the Successful Commercialization of Invention:

If you were to ask ten people in main street what innovation means to them,
you will most likely get ten different answers. The term is spoken so
carelessly and so often these days that it’s meaning has become quite dilute.
However, as recognized by BusinessDictionary.com, from a business
perspective, it’s important to distinguish true innovation from invention, and
from idea creation [2]. First, any patent attorney worth their salt will tell you
that an invention has two parts: an idea, and a way to reduce the idea to
practice [1]. If that invention is then successfully commercialized, then it
becomes an innovation [2, 2a].

Innovation leader Dr. Lisa C. King [3], Vice President of Consumer and
Market Insights, American Standard Brands Inc. points out that for business
innovation, three things have to be true:

• successful = people or the market had to want it or respond to it

• commercialization = had to make money or save money or in some other
way generate value
• invention = there had to be newness, either to the product or service
benefits delivered or to the experience.

This definition is consistent with other industry innovation leaders’ definitions,

BusinessDictionary.com [4], as well as the US legislation relating to the
definition of Trade Secrets [2a].

To take an invention to an innovation requires prior knowledge of unmet

customer needs, successful scale-up to commercialization, marketing or
customer education, and distribution. So, while invention is necessary for
innovation, most inventions – and most ideas for that matter – never become
innovations. If it’s not successfully commercialized, then it’s not an
innovation, and if it’s not reduced to practice, then it was only ever just an
idea that was never tested.

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Invention = Idea & Reduction to Practice;

Innovation = Invention & Successful Commercialization.

Types of Innovation:
The introduction of new commercial products and services with new or
enhanced features is perhaps the most obvious form of innovation. However,
most practitioners and innovation experts acknowledge many other forms of
innovation. For instance, Deloitte Development concluded that there are
indeed ten types of innovation spanning the product value chain and the
customer experience [5]. Interestingly, only two of those ten were centric to
the product offering (viz., the Product System, and the Product
Performance.)

Indeed, four out of ten types relate to the internal business systems of the
innovating organization. These systems are typically hidden from direct
observation however may be leveraged for value with judicious IP strategy:

Profit Model – How is value realized

Network – How you connect with other organizations to build value

Structure – How talent and assets are organized and aligned

Process – How you use unique methods to do your work.

Another four relate to the end-user experience and user access and include
the customer-facing enterprise business systems, viz.:

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Service - How you support and amplify the value of your offerings

Channel – How you deliver your offerings to customers and users

Brand – How you represent your offerings and business

Customer Engagement – How you foster compelling interactions

Ten types of innovation – Proposed by Deloitte Development [5]

Four Configuration Innovations, shown in Blue

(Additional examples: Dell, Seibel, GE)

Two Offering Innovations, shown in Orange

(Additional examples: Intel, Apple, Amazon)

Four Consumer Experience innovations, shown in Red.

(Additional examples Lexus, Apple, Uber, & Lyft)

If innovation were a luxury cruise liner, then the “configuration” would be the
engines, the propeller, the galley, and navigation systems. The “offering”
would be the destination and the planned activities, and the consumer
“experience” would be the relaxed feeling, the suntan, smell of salty air, and
the feeling of being rested and refreshed.

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Innovation and IP strategy

Given the breadth of innovation types, how does an IP practitioner craft an IP

strategy that contemplates more than just a physical product or the
performance of the product? A good IP strategy contemplates protecting all
ten forms of innovation, including the customer experience, the business
model, product construction, and performance, and the supply chain –
although not always using patent protection.

Patenting the Business Processes

To help ground the Think Tank to begin working on IP strategy that spans
the diverse forms of innovation, I had the pleasure of breakfast with fellow
think-tank member, and one of Georgia’s top IP strategists, Jeff Kuester Esq.
of Awake IP and Partner at Taylor English Duma. Jeff talked passionately
about the evolution of what is and what might not be patentable from the
perspective of circuit and supreme court rulings. In particular, Jeff gave a
wonderfully informative primer on some of the some key patent cases heard
before the supreme court, including Biliski [6], Myriad [7], and Alice [8].
These cases all significantly impacted the patentability of methods innovation,
including business methods. Referring back to the Deloitte model, these
would mostly fall into the “Profit Model”, “Network”, “Structure”, and
“Process” aspects of commercialization.

The Myriad v. Molecular Pathology and Mayo v. Promethius decisions marked

a shift in USPTO practices, and began to reframe and restrict what methods
could be patented. Utah enterprise Myriad Genetics Inc. isolated several
genetic sequences that, if detected in a human, indicated an inherited
genetic pre-disposition to certain forms of breast and ovarian cancer. Myriad
filed patents on the gene base-pair sequence that they had invested heavily
in isolating, and received patents for them. Myriad’s patents were challenged
in court [7].

At around the same time, a method patent central to the Mayo vs.
Promethius case [REF 12] was also being considered by the US supreme
court. The Promethius case conclusion was that the method of giving a drug
to a patient, measuring the concentration of drug metabolites, and then
making a decision as to whether to increase or decrease the dose of the drug,
was not patentable subject matter. Later decisions regarding the Myriad
Genetics Inc.’s patents continued this trend of restricting what is patentable
from a method perspective. Myriad’s gene sequence patents were
invalidated when the US Supreme court ruled that a DNA sequence is a
naturally occurring product of nature, and therefore cannot be patented,
even after isolation. The court argued that no novel methods were claimed
with respect to searching and identifying the naturally occurring base pair
sequences, and that it was not patentable to just test for those genes using

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already known methods.

Evidently, it was the Statestreet Bank case [9] that first opened the door to
the patentability of software and business methods. Since then, the strength
of most business methods patents has been eroded significantly. Section
101 of USC Title 35 (statutory subject matter) defines what can be patented,
before the 102 Novelty and 103 Non-Obviousness requirements are
examined. Statutory matter includes Machines, Processes, and Manufactured
Articles [REF 10].

At first, the federal circuit court ruled in Biliski vs. Coppers that patented
material could only be patentable subject matter if it met the “Machine or
Transformation” test [REF 13]. The supreme court then modified the circuit
court ruling, effectively removing the term “only” from the “Machine or
Transformation” test, thereby cracking the door open once again to allow
some but not all business method patents to be upheld.

However, when ruling in Alice v. CLS Bank [REF 14], the supreme court
contemplated the patentability of an abstract idea, in addition to the machine
or transformation test of Biliski. The court ruled that only business methods
that go further than patenting just an “abstract idea” are patentable.
However, the definition of “abstract idea” is left open ended, leaving us to
imagine where the line could be drawn between an abstract idea and it’s
implementation. Indeed, statutory matter patent invalidations have
skyrocketed in the US since the ruling [15].

Jeff summarized the overall state of the business methods patent issue (at
least in the US) by saying that if the patent is directed at a method of
conducting commerce in some way or other, then it’s unlikely to be
patentable under today’s standards. For this reason, perhaps innovation
classed in the first four innovation categories could be best protected by
Trade Secret [2a].

Thus, referring back to the Deloitte model, the IP strategy for protecting the
first four types of innovation ought perhaps to be focused on maintaining the
secrecy of these commercial business methods. From a corporate security
standpoint, a trade secret audit is recommended to identify security
vulnerabilities and improve process integrity. Such a review should include:
review of employee agreements, exit interview procedures for employees
who are leaving, codification, documentation and docketing of kept trade
secrets, understanding who has visibility to which processes, among other
things.

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Patenting observer experiences:

Particularly interesting are IP strategies directed at protecting the consumer

experience. While patent attorneys may correctly point out that under
Section 101 of USC Title 35, Statutory Subject Matter (or in other words, “is
the subject patentable material?”) technically it is not possible to patent an
experience. It should, however, be possible to patent a series of quantized
measurements that may directly correspond to a unique human (consumer)
experience. Indeed, we found examples of such issued patents.

Visual Human (Consumer) Experiences:

Being the primary sense, human vision has been researched extensively. An
hypothesis for the neuro-physiology of color vision was proposed by Elliot
Adams in 1923 [18], who suggested that humans experience color in terms
of the difference between pairs of opposing colors. This boiled down to Red-
Green, Yellow-Blue, and White-Black. This, coupled with direct physical
measurements of the electrical responses of the red, green, and blue light-
sensitive retinal cells formed a mathematical platform that eventually led to
the generation of the L*a*b* Idealized Uniform Color space by the
Committee Internationale de l’Éclairage in 1976 [20].

Later mathematical refinements to the model corrected most of the non-

uniformity, and solid state instrumentation has brought the colorimeter into
the budgetary reach of most organizations who might need one. Provided
that the lighting and viewing conditions are carefully controlled, every human
color sensation may now be accurately specified using three numbers.
Referring to Fig. 1, the Cartesian color space is defined in terms of a set of
three complimentary colors arranged on orthogonal axes. L* denotes a
“luminosity” axis, with L*=0 for pure black color, L*=50 as a mid-gray, and
L*=100 for a pure white. a* and b* designate red-green and yellow-blue
axes of the space respectively (there is after all no such color as a “reddish
green”, nor a “yellowish blue”…) The closer the color to the center of the
space, the less desaturated it is said to be -- or in other words, the more
gray it contains. For instance, an orange color is more saturated than a
brown color, so, the brown color would be located closer to the L* axis, while
the brighter orange would be located closer to the edge of the sphere.

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CIE 1976 L*a*b* idealized uniform color space.

As color is merely a sensation, and NOT a property of light, there are always
multiple ways to induce the same color sensation experience. For instance,
the blue color of the sky is produced as a result of atmospheric light
scattering - but the same color sensation may also be induced by a television
screen, a cinema projector, by a painting on canvas, or an ink jet printer.

For this reason, patenting a specific color specification is much more powerful
than patenting a recipe to make a color because the specification relates to
the sensation, and not the recipe. For instance, let’s say I have a recipe for
an army-khaki color, comprising mixing a brown pigment and a dark green
pigment in specific ratios. If I patented that recipe, then one possible design
around could be to mix specific ratios of yellow with cyan and magenta
pigments together to make a matching color.

Procter & Gamble’s USPN 8163132 [22] incorporates color physics and
numerical L*a*b* color specification (“color coordinates” mapped onto the 3-
dimensional red-green, yellow-blue, and light-dark axes) to describe the
coloristic relationship between the various decorative marks on a product.
The patent teaches that adding one or more spot colors to a four-color
printing press used for printing paper towels increases the range of printed
colors that can be made. This patent is of additional interest, as, not only
does it effectively protect a visual consumer experience, it also appears to

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claim a negative condition. The claims of the patent appear to define the
scope as the condition in which the numerical color coordinates of decorative
indicia DON’T conform to a specific mathematical relationship – that
relationship basically being determined by the theoretical range of color
sensations that would be possible if only CMYK process colors were used.

Another example from the Proctor & Gamble company, USPN 8220632 [23]
describes a packaged consumer product article, wherein the package includes
a transparent window with specific gloss and transparency. Once again, the
focus of this patent is to provide dimensionable proxies to the human visual
experience, viz. the “shiny-ness” of the packaging, and the ease with which a
product located within a packaging can be identified.

Visual psychology, as well as the way in which consumers assimilate

information is studied in depth by consumer products companies. As the
mathematical models of visual phenomena have evolved, opportunities to
effectively exclude others from producing products with specific visual
attributes have emerged.

Kimberly-Clark patent 5286543 [24] was an early example of an innovative

claim construction that included a description of a visual impression,
protecting the differentiating features of premium products. ‘543 relates to
an article component containing a registered, complete graphic that may be
incorporated on an absorbent article. That is, the graphic (let’s say for
example the graphic is a smiling face) is placed in a specific area of the
article. The alternative to this premium visual impression is that the graphic
repeats continuously, and there is a good chance that some of the images
will be bisected by a cut as the article is assembled. This represents a
cleaver way to maintain the top-tier product impression above and beyond
patenting the method by which the articles are assembled.

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Kimberly-Clark USPN 5286543 on graphics placement.

Similar to visual sensations, patenting a product configuration on a shelf also

presents an innovative way to keep your competitor’s patent teams up late
at night: USPN 6648864 and 6763944 to Proctor and Gamble [25, 26]
describe a specific configuration of a range of their products on the store
shelf. The patent teaches that the organization of the products on the shelf
allows the shopping consumer to easily find consecutive absorbent products
as the infant grows from a baby through to a toddler and a child. Interesting,
because in doing so, they have potentially found a way to protect the
shopper’s experience in the retail store,

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USPN 6648864 on “ordered arrays of products.” (imagine a store shelf…)

Calphalon (owned by Newell Rubbermaid) is the only company known to

produce and sell kitchen knives with blade length indication on the butt, and
here is why: Newell Rubbermaid patent 7228632 [27] effectively protects an
arrangement of knife products that indicate the length of each knife on the
butt. The insight is that the consumer cannot tell which knife is which
without first pulling it from the wood block and looking at it. The clever
patent attorney has effectively prosecuted the protection of a consumer
experience of the knives kept in a knife-block that could otherwise have been
induced using a number of methods vs. an individual article.

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And, where would a paper on Innovation be without at least one Apple

example? Indeed, Apple’s patent attorneys have been looking to protect the
look and feel of their products, as well as the inner workings. USPN 8111505
relates to a laptop computer outer casing [28], and claims that: “…the
seamless housing shaped to create an appearance of a single continuous
shape with the movable top cover is closed…”

Before we depart from our discussion on visual human experiences, let’s also
consider the judicious use of design patents as part of an IP strategy to

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protect the human “experience” innovation types. If I’ve heard it once, I’ve
heard it a dozen times that design patents are not a strong form of IP
protection. I challenge that position, and there are several court cases with
awarded damages that indicate the contrary. Indeed automotive
manufacturing companies successfully leveraged a design patent strategy to
protect various aspects of their cars (e.g. tail and headlights, front grill, the
wing mirror) from imported non-OEM aftermarket replacements so
successfully that legislation is now working it’s way through congress to limit
the lifetime of certain automotive parts design patents from 17 to 2.5 years
[29]. Samsung recently paid out over one billion US dollars to Apple for
infringement of a series of design and utility patents relating to their iPhone:
The location of the button, the edge of the phone, the rounded square
shapes of the icons were all protected by design patents. [30]. When
judiciously deployed, design patents confer a valuable right to exclude others.

Alfactory - Taste and Smell

What about patenting a consumer’s taste sensation? Composition of matter

patents claiming compounds with certain taste properties abound. Taste-
masking of pharmaceuticals is also easily found, for instance USPN 9233105
to Adare Pharmaceuticals [31] that specifies a formulation that is not bitter
tasting due to the inclusion of an additive. The claim is notable in that it is
qualitative vs. quantitative.

However, just as color sensations can be induced in a number of different

ways, it occurs to us that taste sensations may also be contrived using
various combinations of different ingredients.

Indeed, searching issued US patents that claimed a numerical

correspondence to a particular taste sensation did not turn anything up.
However, the groundwork of relating numerically measurable physical
phenomena to organoleptic sensation attributes is well underway, laying a
foundation for future patents directed at protecting specific taste sensations
(that is, the human consumer experience.) Senomyx Inc. in La Jolla CA
appears to be a significant contributor to this patent landscape of “bitter”
[32], “umami” (meaty taste) [33], and “Sweet” [35] taste sensations. Other
players include the Coca-Cola Company. Like Senomyx, Coca-Cola patent
US9128079 [36] describes cell lines that express certain measurable compounds
within the cell when it is in the presence of bitter tasting materials. Anjinomoto
Co. was recently awarded a patent relating to a method for screening a salty
taste modulating substance by monitoring the concentration of marker proteins
expressed by certain cells when they are exposed to the food [34].

If the taste technology trajectory is analogous to visual sensation technology

trajectory, then we might see taste patents that relate to foods that induce
certain numerical concentration ranges of indicator compounds, just as we do
with visual phenomena that can be measured. Could these patents form a

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foundation of knowledge that can be used to patent-protect taste sensations?

Here is how it could work: We make a special new gravy and want to patent
protect the recipe. We could specify the quantity ranges of certain
ingredients – caramelized onion, celery, salt, tomatoes, Worcestershire sauce,
meat juices or vegetable stock, and a blend of herbs. Alternatively, perhaps
we can add a drop of gravy to patented biological systems, and then
measure the concentration of biomarkers expressed in response. In that way,
we can relate a series of concentration ranges of measurable indicator
compounds that have already been related to the salt, sour, sweet, bitter,
and umami sensations through organoleptic mapping. As there are likely
several ways to induce a similar taste sensation, then the latter approach
may be more powerful – and cause more headaches for our gravy
competitors.

Diagram showing how Refs. 32-36 could potentially be used analyze the
taste of gravy, then output a marker concentration, which could then be used
in a patent claim.)

Clearly, much additional effort, testing, and expense is needed to pursue a

patent with claims such as this – however, The advantages of this approach
can be numerous: First, it raises the bar technically out of the realm of
simply a mixture of flavors and into a biological system characterization that
relates to the flavor sensation. Second, sophistication is required to design
around the resultant patent. Third, whereas a gravy recipe could be reverse

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engineered to taste very similar to our gravy recipe, as a proxy to the

resultant taste sensation is patented vs. the recipe it would not matter so
much that the recipe is different – the unique taste signature is what is
protected, not the recipe.

Tactile Sensations:

Most semi-durable contemporary manufactured articles incorporate molded

thermoplastic resin as part of the design. The finish of the plastic has a
strong bearing on how the article feels to the user when touched, as well as
the durability, wash-down ability and mar resistance. A contradiction arises
when manufacturers attempt to use materials that feel “soft” to touch vs. are
hard and durable, in that softer polymers (which are more comfortable to
handle) may be more prone to wear and tear than their harder cousins.

Surprisingly, the human tactile sensation can be fooled by surface micro-

texture. Nissan Motors has researched the surface factors that correspond to
“soft” or “hard”, “rough” or “smooth”, “warm” or “cool”, and “moist” or “dry”
sensations when touched and or stroked by the hand [37]. They report that
the closer the softness of a material to the softness of the human finger pad,
the softer the material will feel. In fact, we can measure softness in terms of
it’s antonym hardness with an instrument called a durometer. A similar
sensation is achieved when the surface contact area between a finger pad
and the material is larger for a given contact pressure. In addition, Nissan
Motors teaches that “moist” sensations arise when liquids penetrate deep in
the fingerprint microscopic valleys at low contact pressure. Thus if the
surface relief at a microscopic level allows greater ingress of the material into
the depths of the fingerprint relief, then the material will feel moist to touch.

Those are both tactile responses to the placement of a digit onto the surface
of material. When stroking a surface, Nissan reports that the closer the
surface texture is to a human fingerprint in roughness, the more
“comfortable” it feels.

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As a result of these studies, Nissan are able to manufacture hard-wearing

plastics with proprietary finishing that produce the tactile illusion of feeling
“soft” and “warm”. Although their processes are kept as Trade Secrets, their
USPN 7070221 [42] teaches the production of an arm-rest containing tactile
materials. These materials are used in the automotive products, and have
been offered in the past for license in non-competitive fields of use.

Other auto manufacturers are also able to generate tactile sensations. The
chemical and coatings supplier BASF presented methods for increasing the
tactile acceptability of hard molded plastics using an in-mold coating method
[39] presumably covered by their patent [40], which they claim is being used
in BMW MySetta. A laser is used to engrave the desired micro-structure into
the surface of a silicone matrix before application of a poly(urethane) coating
[41].

Other automotive manufacturers and parts suppliers have also successfully

patented ways to generate tactile sensations through the judicious use of
both hardness and chemical composition. USPN 5298306 [43] (to Molmec),
and USPN 5968431 [44] (Chrysler), and USPN 6180212 [45] (Visteon) are all
examples that teach ranges of durometer readings (along with other
mechanical / chemical properties) that correspond to the human tactile
sensation of “soft” as they relate to internal car door handles.
USPAP 20120196065 teaches a slightly different approach to invoking a “soft”
tactile response applied to a film. Etsani Inc. characterize a protective film
for use on touchscreens, and specify that in order to produce a “soft” feel,
the protective layer should have a compressible depth between two

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parameters, when a specified force is applied [46].

Aural Sensations:

Despite the known mathematical relationships between the notes in a

harmonic tune or chord vs. a dissonance (or perhaps, in light of the Myriad
ruling and because of the potentially “naturally occurring” mathematical
relationship between the notes) no patents were identified that related to a
specific combination of sound frequencies or melodies. This makes sense, as
historically, musical IP has been protected by copyright. However, auditory
sensations have been trade-marked, for instance the Apple® and the
Windows® characteristic startup noises. Musical and harmonic relationships
aside, sound has also been the subject of scrutiny in the automotive industry.
A review of automotive industry US patents does indeed include patent
claims that relate to designs of car doors that close without excessive noise,
to Mitsui, Toyota, and General Motors [47-49]. While these are definitely
examples of how the human experience can potentially be protected, it
seems that there could be future opportunity to fully characterize sound and
noise, in terms of volume, frequency distribution, harmonic content, timbre,
waveform, etc.

Conclusion:

While it can be tricky, there are several benefits to patenting in the human
(customer) experience innovation space. First, it raises the barrier to
competition. The degree of sophistication needed to develop test protocols
and carry out the testing and confirmation is higher than that required to
patent a product configuration. The design of experiment and testing that
will illuminate measurable physical attributes that relate specifically to end
user experience requires scientific training and discipline. It’s this step that
moves the consumer experience outside of the “abstract idea” and into an
area that is more patentable under section 101. Access to specialist
instrumentation and trained operators may also be needed. In addition, the
degree of technical sophistication needed to interpret the claims and product
attributes, as well as to communicate with the USPTO is also higher.

Second, it provides a more diverse protection plan. With the devastation of

many software and business method patent estates since Biliski and Alice, we
have to wonder what other steps could have been enacted to mitigate the
value lost. Could a more holistic IP strategy have been deployed to protect
the human experience resulting from software code execution, in addition to
the software code methodology? Would such a policy have mitigated the
value impact of the Alice Corp. ruling? Certainly food for thought.

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