Patent Basics IV - The Parts of a Patent, and a Baby's Butt

Patent Basics IV

(This is the fourth post in my series on Patent Basics; the first three posts can be found here, here, and here. My previous series on Trademark Basics has been consolidated on my website at www.kdtalcott.com. Future "basics" series will cover copyrights and trade secrets.)

The Parts of a Patent

If you've done your prior art search and are still feel your idea is worth protecting, it's worth knowing a bit about the geography of the patent application. A patent has a number of sections, each of which has a specific purpose. While there's no need to memorize each and every one of these, it will be helpful to have some understanding of what the main sections are and why they're there. This will allow you to communicate more effectively with your patent counsel (or the Patent Office, if you're taking the task on yourself).

There are four main parts to every patent application. They end up appearing in the issued patent; take a look at one example here. (This patent is one of my favorite examples of a patent. It happens to be for a method and kit for painting using the posterior of an infant. That's correct: someone patented the idea of painting using a baby's butt. Depending on your situation (budding inventor or patent professional), that should either be cause for hope or despair. At any rate, given that we're focusing on structure there's no reason not to have a bit of fun along the way.)

The Cover Page

The first page of the patent is a busy place, with a number of categories of information that many people ignore, but which are in fact very useful for those who are searching for prior art, looking for particular types of patents, or wanting a quick synopsis of what the patent is supposed to cover.

The cover page information includes (in order) the name of the patent and its inventors; filing date information (so we can figure out when the term expires); any official adjustments that have been made to that term; information about any related patent applications; various categories of classification information that the Patent Office uses to help organize the millions of patents in its records (very helpful for searching for prior art); a list of other patents and prior art that the examiner considered during the examination of the application; the abstract (a one-paragraph summary of what the patent covers); and a representative drawing from the patent.

The Drawings

Most every patent includes one or more drawings. In the case of our baby butt patent, the first drawing (Fig. 1) provides us with an example of the fine art that one can create using a baby's rear end in place of a brush. The numbers you see on the drawing tie in to the written description of the invention in the Specification, and allow the reader to follow along while the Specification describes the drawing.

The second page of drawings (Figs.2 and 3) are flowcharts. (Note the three-step method for painting using a baby's rear: (1) prepare background media; (2) dip; and (3) stamp. Good thing we have that flowchart.) A flowchart is a very common way of visually displaying the method described in the Specification. Again, numbers on the flowchart will tie in to the description in the Specification.

Figures 4, 5, and 6 are more conventional drawings, these of the baby butt paint kit. (And you do need a kit to guide you through the intricate baby butt painting method.) Again, numbers tie the drawing to the description in the Specification.

The Specification

The Specification immediately follows the Drawings. Patent lawyers being the uber-hipsters that we are, we typically refer to this as “the Spec.” (While I will let you in on these trade secrets from time to time, I'll never reveal the secret handshake.)

The Specification is perhaps the most accessible part of the patent. It is written in narrative form, and should teach the invention to a person “of ordinary skill in the art.” When the art is microbiology, there are relatively few people who are “of ordinary skill in the art.” When the art is painting using parts of the human body, as in our example, all of us probably are of ordinary skill in the art.

The subsections of the Specification of the baby butt painting patent are typical, and help satisfy the legal requirements for a patent. The Field of the Invention describes the technical field covered by the invention. The Background of the Invention is meant to do just what it says: explain what the background is of the invention, and will explain the problem that the invention was designed to overcome. In our example, the problem was the fact that “there is no known kit available, or method associated therewith, to assist in creating a remembrance that results in a fine art end product which is not easily recognized as merely a remembrance.”

The Summary of the Invention provides a short description of what is included in the product or method described in the Specification. And the Brief Description of the Drawings will list each drawing and provide a short summary of what is shown in each.

The meat of the Specification is the Detailed Description of the Preferred Embodiment of the Invention. This is an extended narrative that should explain how the invention works, and should use and reference each of the drawings at one or more points. The “preferred embodiment” is typically the one that best reflects the new and hopefully patentable properties of the invention. In our example, the patent splits its description between about a paragraph and a half that describes the preferred embodiment of painting with a baby's hiney, and roughly three full columns describing the preferred embodiment of the kit for doing so. That is probably because there are only so many ways that one can paint using an infant's posterior in place of a brush, but many ways that one could configure a painting kit.

Often the Specification will also describe other embodiments of the invention. These may be ones that were invented during the development process, but were considered to be less favorable than the preferred embodiment. It is sometimes helpful to describe these so that they can be protected by the patent as well. This can broaden the coverage of the patent, making it harder for competitors to copy the idea by making slight variations on the method.

The Claims

The claims are the most difficult part of the patent for the non-lawyer to understand. They're also the most important part of the patent, because the claims are what define the invention. Everything up to the claims has been explanation and elaboration – but in the end, it is the claim set that courts look at when they make infringement determinations.

The two types of claims are independent claims – which stand on their own – and dependent claims, which feed off of and relate to independent claims. In our example, claim 1 is an independent claim:

1.A method of painting using the posterior of an infant, said method comprising the acts of:

providing a background media;

providing a paint supply;

dipping the posterior of the infant in said paint supply;

stamping the posterior on said background media to create stamping prints.

More about this in a bit. Claim 2 is a dependent claim:

2.A method as defined in claim 1, wherein:

said dipping and said stamping steps are repeated in sequence.

Claim 2 builds on claim 1, and everything that is in claim 1 is considered to be part of claim 2.

You may hear the word “limitations” used in connection with claims. Limitations are important part of a claim; consider them like ingredients in a recipe – if you leave one out, then arguably you're not making the same dish. In our claim 1, the limitations follow the words “comprising the acts of.” So if we dip another part of our baby in the paint (say the top of the head, being careful of the soft spot) and stamp that part on the background media, then we arguably are not practicing the patented invention. (Please note that this is greatly simplifying the process of reading claims and applying them to our potentially infringing method of painting with a baby.)

Knowing what goes into your patent application will help you communicate with your attorney about it, and will give you a better understanding of what is going on throughout the prosecution process. The next post in this series will outline the patent application process.

Patent Basics III - Prior Art

(This is the third post in my series on Patent Basics; the first two posts can be found here and here. My previous series on Trademark Basics has been consolidated on my website at www.kdtalcott.com. Future "basics" series will cover copyrights and trade secrets.)

What is “Prior Art,” and Why Should I Look for It?

Patents are only awarded for inventions that are “novel” -- in other words, new. You won't be able to get a patent for the light bulb unless your version of the light bulb is an improvement over all of the other light bulbs that have ever been invented and disclosed in some way to the public. Those earlier versions of the light bulb are part of the “prior art.”

Inventors have an obligation to tell the Patent Office about any prior art that they're aware of that may relate to their inventions. But that of course is not the main reason for conducting a search to find possible prior art before you file your patent application. There are a number of more practical reasons for doing so.

Prior Art Search Benefits

• A prior art search will help you figure out whether your invention is truly 'novel.' Why spend thousands of dollars on a patent application for an invention that someone else has already thought of?
• A prior art search may help you refine and improve your invention. “Stand on the shoulders of giants,” so to speak, and see what others have done. Their work may inspire you to improve on your original idea.
• A prior art search will show you what you may need to 'design around.' Since you can't patent what's already been invented, you may have to develop a different way of doing what your invention does in order to avoid infringing an existing patent. A workable design-around can be valuable if the owner of the prior art patent refuses to license their invention on reasonable terms. A design-around can then become a cost-effective way to compete with a product or process that is protected by such a prior art patent.
• A prior art search will help you understand whether your invention is a significant improvement over existing inventions, or an incremental advance. In either case, that information will help you decide whether it is worth investing in the patent application for your idea. An incremental advance that overcomes a significant marketing or operational problem that exists with the prior art, for example, may be very valuable. On the other hand, if your idea does not add much value to the existing invention, you may decide to invest your money elsewhere.

How to Conduct the Prior Art Search

There are services that will conduct a prior art search for you, of course for a fee. The quality of these searches can vary widely, and often depend on how much you spend. One thing that I explain to every client is that nobody will conduct as thorough a prior art search as someone who is accused of patent infringement. In other words, a prior art search that is paid for by an inventor, and may cost hundreds of dollars, will not be as thorough as one conducted by an accused infringer that stands to lose millions of dollars in a patent infringement suit.

That's a fact that patent owners simply need to accept. A reasonably-priced, reasonably-thorough prior art search is likely to provide a good indication of existing, similar inventions that are out there. But it cannot be considered to be definitive.

The patent search services tend to be very adept at searching U.S. Patent Office records, which in many cases are an excellent source of prior art. Existing patents and published patent applications are likely to form the bulk of the results of most prior art searches from such a firm. If your invention is one that is in a 'traditional' line of inventions – in other words, not a business method – then a Patent Office-focused search may be sufficient.

If, however, the invention is in a new field of science or technology, or is a business method invention, you should make sure that the prior art search goes beyond the Patent Office, and includes areas where publicly-available information about the particular field of endeavor is likely to be found. This includes the Internet, but can also include key university libraries as well as foreign-based information sources.

In some cases – mainly in areas where the inventor is at the cutting edge of the technology – the inventor may be an excellent source of prior art. In any case, it's always a good idea to check with the inventor to find out what information he or she has about the existing state of the technology and other inventions that may be out there.

Where to Search

If you want to do some or all of your prior art searching yourself, here are some good places to start. Of course Google or some other comprehensive search engine is first, provided you are adept at crafting searches that will yield enough relevant 'hits.' Google also has its own patent search engine, available at http://www.google.com/patents, that is a great help insofar as it goes. Clicking on the “Advanced Search” option opens up a detailed search menu that you can use to help narrow down your search results. I have found, however, that Google Patents is not kept up to date, and many recently-issued patents and recently-published applications are not included in the scope of its search, making this otherwise excellent search tool something that is ultimately unreliable for prior art searching.

There is, of course, the United States Patent Office website at www.uspto.gov. The main page will give you a link to the Search section, where you will quickly learn that the PTO is not exactly on the forefront of intelligent search technology. Still the information is there, and if you know something about a particular inventor or company whose work may be part of the prior art, a PTO search may be an efficient way to see what they've patented. If you really want to dive in to the nitty-gritty of how to search using the PTO's patent classification system and other similar tools, you can look at what the PTO tells its examiners about searching prior art here: http://www.uspto.gov/web/offices/pac/mpep/documents/0900_904_02.htm .

Finally, don't forget that a foreign patent or invention disclosure can also be prior art. There are a number of databases where you can conduct a search of foreign patents. The World Intellectual Property Organization provides a short guide to some of them here: http://www.wipo.int/sme/en/documents/prior_art.html#P72_8069 .

Some sort of a prior art search is an important part of the application process for any patent application. Whether your resources permit you to hire a search firm, or you conduct the search yourself, if you move forward with a patent application a prior art search will be a good investment.

The next post in this series will cover the difference between provisional and non-provisional applications, and the basic structure of the patent application.

Design Patent Infringement Analysis and the Fubar

Design patents are an often-overlooked corner of intellectual property law. While they pretty much do exactly what they say – protect designs – it can be hard sometimes to separate the protected design from the underlying patent.

The Federal Circuit recently decided a design patent infringement case – Richardson v. Stanley Works – that provides a useful tutorial into how courts should perform a design patent infringement analysis. It also highlights how far from intuitive such an analysis is, which can make it difficult for those who are not intellectual property law specialists to understand.

The product at issue: the Fubar. A multi-tool device sold by defendant Stanley, the Fubar is an angry-looking hunk of metal that combines a hammer, pry bar, and open-jaw grabbing thingy into a single product:

(Yes, I know what “fubar” means. I presume the folks at Stanley do as well, and named it hoping that it would appeal to the type of consumer who knows what “fubar” means. At any rate, the product has achieved some success, having been included by Popular Science in its “Best of What's New” listing back in 2006.)

The Fubar was protected by a design patent owned by Stanley. The plaintiff Richardson had secured his own earlier design patent for a similar-looking device that he called the Stepclaw. (As far as I know, "stepclaw" has no other meaning.) It too included a hammer, a pry bar, and an open-jaw grabbing thingy in a single product:

Richardson sued for infringement, and the district court decided after a bench trial that Stanley did not infringe. In so doing, the district court distinguished “the ornamental aspects from the functional aspects of Richardson’s design and then determined that an ordinary observer, after discounting the functional elements of Richardson’s design, would not be deceived into thinking that any of the Fubar tools were the same as Richardson’s Stepclaw.” It concluded that “the overall visual effect of the Fubar was not substantially similar to that of the Stepclaw,” so that the Stanley product did not infringe.

The Federal Circuit affirmed. It noted that it was proper for the district court to factor out the functional elements of Richardson's design; in this case, tool handle, the hammer head, the pry bar, and the open jaw. The shape and location of these features, the court held, were dictated by the functional requirements of the tool. Factoring out those functional features presumably left only the ornamental elements of Richardson's design.

As you can see, once you remove the tool handle, the hammer head, the pry bar, and the open jaw from these products, there is not a lot that is left. The Federal Circuit so noted as it analyzed the Fubar's ornamental features, applying the “ordinary observer” test set forth in its Egyptian Goddess decision:

"Each of the Fubar tools has a streamlined visual theme that runs throughout the design including elements such as a tapered hammer-head, a streamlined crow-bar, a triangular neck with rounded surfaces, and a smoothly contoured handled. In a side-by-side comparison with the ’167 patent design, the overall effect of this streamlined theme makes the Fubar tools significantly different from Richardson’s design. Overall, the accused products clearly have a more rounded appearance and fewer blunt edges than the patented design."

The ironic thing about the “ordinary observer” test is that it can be difficult for the “ordinary observer” to apply. Most ordinary people do not distill out functional elements from design elements when looking at products. The decision in this case merely underscores how difficult it can be to evaluate design patent infringement claims.

Patent Basics II - Do I Have to Keep My Invention Confidential?

(This is the second post in my series on Patent Basics; the first post can be found here. My previous series on Trademark Basics has been consolidated on my website at www.kdtalcott.com. Future "basics" series will cover copyrights and trade secrets.)

Do I Have to Keep my Invention Confidential?

Paying attention to some basic points can help you make sure that you don't lose your patent rights even before you file your application. This post will cover the importance of knowing when to disclose your invention, and appreciating what consequences follow from doing so.

Disclosing Your Idea

In the United States you have one year from the date you first disclose or sell your invention to the public before you have to file your patent application. If you fail to file within this time period, the parts of your idea that were disclosed to the public become part of the “public domain” and can be used by anybody for free. This applies to sales as well, presuming that the sale of the product puts the workings of the invention in the hands of the purchaser.

Our world is increasingly interconnected, however. If you anticipate that you will want to apply for patent protection outside of the U.S., then the public disclosure or sale of your invention takes on much greater significance. That's because in order to secure a patent in most other countries, you need to have your patent application on file before you disclose your idea to the public.

What “Public Disclosure” Means

What constitutes a “public” disclosure of an invention is not always clear. There are some general guidelines that will help you figure out when you might be getting close to doing so.

Disclosure generally involves revealing enough of the workings of the invention so that people who work in the technical field of the invention can figure out how it works. Enclosing a mechanical invention in a proverbial “black box” to hide its inner workings is thus one way to reveal what an invention does without revealing how it does it (though if there is enough in the way of description of how the invention works to teach someone what's going on inside the box, then the black box will do little good). A sale of a product that includes the invention will also be considered a disclosure, since the purchaser can take the product apart and “reverse engineer” it.

Any recorded description of the invention that can be accessed by the relevant members of the public risks being considered a public disclosure. This includes white papers, advertisements, video and audio recordings, thesis papers, abstracts, trade show exhibits, and the like. Oral disclosure only is more of a gray area, though it's generally a good idea to avoid gray areas wherever possible.

Who is “The Public”?

The relevant members of the public can be a smaller group than the public at large. For example, if you work in a particular industry and your invention relates specifically to that industry, and you disclose your invention at an industry group meeting, that may very well be considered a public disclosure even though the general public did not attend that meeting.

But My Investors Want to Know What's Going On

One way to disclose your invention without risking patentability is to disclose it only to people who have agreed to keep it confidential. That is often necessary when dealing with investors and customers, who want to know what you're working on even while you're still developing it. The courts have generally agreed that if you require people to sign a meaningful confidentiality agreement before you disclose your invention to them, it will help protect you from tripping up on the public disclosure issue. You have to make sure, of course, that you otherwise treat the invention as confidential, at least until your first patent application has been filed.

Procedures Can Help

Your employees should be aware of the importance of the disclosure issue. It is a good idea to have in place some written procedures for dealing with the invention process. Many companies have invention disclosure forms that are completed by employees who believe they have invented something. These forms are forwarded to an individual or a committee responsible for making decisions about which inventions the company should seek to protect by way of a patent. These procedures and forms can all reiterate how important it is to treat each invention as company confidential information unless advised otherwise.

Employee Assignments

The mention of employees brings to mind the concept of the invention assignment. Patents in the U.S. are filed in the names of the individual inventors, not their employer. Most companies have invention assignment requirements in place, preferably in the form of a written agreement that each employee (or each technical employee) signs when joining the company. These agreements typically assign the entire invention to the employer, and allow the employer to advise the Patent Office of the assignment so that the patent application moves forward in the name of the company. Both the application and the patent then belong to the company.

These assignment agreements can also impose a confidentiality requirement on the employee. Even if the employee ignores the obligation and discloses the invention to the public, a court may take note of the confidentiality agreement and any company confidentiality policy and rule that the unauthorized disclosure was not a “public disclosure” that would hurt the invention's ability to be patented.

Your patent counsel can help you put together a set of policies and agreements that, if followed, will help you make sure you don't lose the opportunity to patent an invention because of a public disclosure problem.

The next Patent Basics post will discuss the importance of the “prior art search,” and will explain why even a comprehensive prior art search is rarely a sure thing.

Patent Basics I

(This is the first in a series of posts that are going to focus on the basics of Patent law. I recently completed a similar series on Trademark law, and will cover Copyright and Trade Secret law in the future. These are directed at non-lawyers as well as lawyers who don't practice intellectual property law, and will be consolidated on my website at www.kdtalcott.com.)

“You ought to patent that idea!”

We've all heard that dozens of times before, but perhaps never thought about what it really meant. Today's post will cover the basics about patents; what they are and what they do. Future posts will cover the patent application process, and what you can do with your patent once you have it.

The Patent Grant

A patent is a license granted by the government. In the case of the United States, the Constitution gives the government the power to grant patents; specifically, “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries.” So a patent gives the patent owner the exclusive right to practice the patented invention for a limited period of time.

Part and parcel of that “exclusive Right,” of course, is the right to exclude others from practicing the patented invention for the duration of the patent. Similarly, the patent owner has the right to permit others to use the invention – that's typically known as a patent license.

What Can be Patented?

There are two main categories of patents: Utility and Design. This post will focus on Utility Patents, and a later post will cover Design Patents.

What the Patent Statute Allows

While there is a continuing debate about the outer limits of what can be patented, there are some basic guidelines that apply to the vast majority of the situations that most of us will encounter. The first issue is whether the invention falls within the categories of things that the law allows to be patented. These include a “process, machine, manufacture, or composition of matter.” A “process” is like a formula, or a set of instructions for making or doing something. It is the category is the one that is used to identify so-called “business method” patents, which is one type of idea that many people argue should not be patentable.

A “machine” is, well, a machine. A “manufacture” is something that is made, but it can cover a lot of other things as well. And a “composition of matter” can be a chemical, a biological invention, or a new material.

Something Useful

A patentable invention is one that is “useful.” It accomplishes some meaningful task or achieves a meaningful result. That may be plowing a field, pinning a broken bone together, changing the chemical makeup of a fluid, or making a decision about how best to invest a sum of money. This separates a patentable idea from a creative idea. Writings, works of art, musical compositions, and the like are typically not considered to be patentable, but can often be protected by copyright. (Copyright will be covered in future posts.)

Something Novel

A patentable invention is “novel,” or new. It is one that no one has invented before. In the United States, that means that the person who first conceives of the invention and “reduces it to practice” – makes it work – will be entitled to a patent for that invention. In other countries, the first person who files the application for the patent for an invention gets the patent. While the US may move to that system in the future, for now it remains a “first to invent” country rather than a “first to file” country.

Something Not Obvious

A patentable invention is not “obvious.” It is one that someone who is familiar with the subject matter wouldn't consider to be an obvious combination of existing inventions. (The actual standard is “one of ordinary skill in the art,” meaning that this hypothetical person has to have some skill in the particular technical field of the invention.) As you can imagine, this is one area where people often have differing views. One person may believe that adding an on/off switch to an extension cord is an idea that should be patentable, while another could consider that to be an obvious combination of two existing inventions: the extension cord and the on/off switch.

Next up . . .

In future posts, we'll dive more deeply into the patent process. The next post will discuss how not to lose your patent rights even before you acquire them.

Federal Circuit Holds Sport Memorabilia Trading Card Patents Obvious

In a case that illustrates the malleable nature of the obviousness standard in patent law, the Federal Circuit recently held that a sports memorabilia trading card that embeds an authentic piece of memorabilia was an obvious extension of the prior art, and invalidated the underlying patents on those grounds.

These now-popular types of trading cards will embed an authentic piece of a player's jersey as part of the card, and typically sell for a premium price as a result.

The case, Media Technologies Licensing, LLC v. The Upper Deck Company, et al., was decided on March 1, 2010. Judges Mayer and Lourie were the majority, with Judge Mayer writing the opinion. Judge Rader dissented. The patents at issue were 5,803,501 and 6,142,532.

What prior art invalidated this invention? As Judge Rader pointed out in a well-reasoned dissent, none of the prior art references were "remotely related to the sport trading card industry," though a number of the patents' claims were. One piece of prior art was a diamond attached to a picture of Marilyn Monroe; the diamond, Judge Rader pointed out, had not been cut into "pieces" as taught by the patent. The second piece of prior art was a piece of a bedsheet attached to a piece of stationery that purported to authenticate it as having been slept on by a one of the Beatles (though Judge Rader noted that the defendants had admitted the item was a fake). The third was a holy card depicting a friar and attaching a piece of his cloak. The final item was a greeting card that attached a piece of blue jean fabric that referenced James Dean, though there was no dispute that the fabric had not been worn by the late Mr. Dean. No sports-related prior art was included.

The majority's opinion is a good example of result-based reasoning. It twists and turns through the various arguments posed by the plaintiff to reach what appears to be a foregone conclusion. It provides little in the way of guidance either to inventors or businesses looking for ways to avoid infringing existing patents.

Judge Rader appeared to recognize this in his dissent when he noted: "Relying on wholly irrelevant prior art and ignoring significant objective indicia of non-obviousness, this court substitutes its judgment on patentability for that of a jury. Lurking just beneath the surface of this court’s blindness to the underlying facts supporting non-obviousness is a bias against non-technical arts."

If you're going to read the short majority opinion, do take a few more minutes to read Judge Rader's dissent.

When is an Inventor not an Inventor?

In Nartron Corp. v. Schukra U.S.A., Inc., the Federal Circuit considered the standards for adding an alleged co-inventor to an existing patent. The case serves as a reminder that the simple fact that more than one person contributes to a development project does not mean that every member of the project should be a named inventor on patents that issue as a result.

Schukra makes lumbar support systems for automobile seats. Schukra contracted with Nartron for Nartron to design a control system that would allow existing car seats to massage undoubtedly grateful passengers. A Schukra employee, one Benson, provided the Nartron project team with the idea of an "extender for a lumbar support adjustor" that eventually found its way in to a third-level dependent claim in US Patent 6,049,748. Benson was not one of the named inventors on the patent.

Nartron designed the control system, secured the '748 patent, and eventually sued Schukra and a Schukra supplier for patent infringement. The supplier co-defendant raised the issue of whether Benson was an inventor who should have been named on the patent and also joined as a plaintiff to the infringement suit; since Benson was a Schukra employee and contributed to the invention as such, this would have made it difficult for Nartron to sue Schukra (as well as the supplier).

The district court agreed with the co-defendant, and granted its motion to dismiss, holding that Benson was a co-inventor of the '748 patent based on his conception of the "extender element" of that patent's multi-dependent claim 11. Nartron appealed.

The Federal Circuit reviewed Benson's contribution to the invention disclosed in the '748 patent, and reversed, concluding that "[a]ny contribution Benson made to the invention in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor."

Several things contributed to this finding. First, Benson's contribution of "the extender for a lumbar support adjustor" was "insignificant when measured against the full dimension of the invention of claim 11," not only because it was in the prior art, but also because it was already part of existing car seats. In that sense, Benson's suggestion "amounted to the exercise of ordinary skill in the art."

Second, the focus of the '748 patent was not so much on the structure of the seat (of which Benson's extender was a physical part), but on the control module that operates the seat.

Finally, the complete invention of claim 11 included all of the features of claims 1, 5, and 6, from which that claim depended. The court noted that Benson would not necessarily achieve the status of co-inventor simply by contributing the idea expressed in claim 11 if he did not contribute to any of claims 1, 5, or 6.

The takeaway: Take a careful look at who contributed to the invention that is to be patented and what their respective contributions were; not every project team member is necessarily an inventor. Those who merely suggest obivious applications for the team's inventions may not be entitled to be co-inventors.

Patent Infringement Finding Does Not Equal Lanham Act Violation

A recent Federal Circuit case highlights the contrast between claims of patent infringement and violation of the Lanham Act.

In Baden Sports, Inc. v. Molten USA, Inc., Baden Sports patented a padded basketball that it marketed as containing “cushion control technology.” It sued Molten USA in the Western District of Washington for patent infringement arising out of Molten’s sales of basketballs containing “dual-cushion technology.”

Baden later amended its complaint to add claims that Molten’s advertising of its dual-cushion basketballs violated Section 43 of the Lanham Act, in particular because Molten’s ads for its basketballs had used the terms “proprietary,” “exclusive,” and “innovative.” The district court granted Baden's motion for summary judgment on its patent infringement claims.

The district court dismissed Baden’s Section 43 claims relating to Molten’s use of “proprietary” and “exclusive” because those terms suggested that Molten had invented the technology and were precluded by the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp. It allowed the claims concerning Molten's use of the term “innovative” to go to trial, however, reasoning that it could relate to the “nature, characteristics, or qualities of the basketballs themselves.”

At trial, the jury found in Baden’s favor on the false advertising claim. It awarded Baden a relatively modest $38,031 for patent infringement and a whopping $8,054,579 for intentional false advertising. Molten moved for a JMOL and a new trial; both were denied.

Because this was a patent case, the Federal Circuit caught the appeal, but applied the law of the 9th Circuit on non-patent issues. It analyzed the Section 43(a) issues in two stages, and concluded that “Section 43(a) of the Lanham Act does not create liability from Molten’s advertisements because those advertisements do not concern the ‘origin of goods,’ to which section 43(a)(1)(A) is directed, nor do they concern the ‘nature, characteristics, [or] qualities’ of the goods, which is what Ninth Circuit law has interpreted Section 43(a)(1)(B) to address.”

The Federal Circuit pointed out that there was nothing in the record to show that Molten’s advertising suggested that Molten was not the source of the infringing basketballs that it was marketing. Accordingly, there was no claim under Section 43(a)(1)(A).

As for Molten’s claim that its basketballs were “innovative,” the Federal Circuit noted that “[n]o physical or functional attributes of the basketballs are implied by Molten’s advertisements. ‘Innovative’ only indicates, at most, that is manufacturer created something new, or that the product is new, irrespective of who created it.” Accordingly, there was no claim under Section 43(a)(1)(B) either.

The court noted that there were a number of other arguments that could have been advanced in support of Baden’s false advertising claims, but that the arguments had not been pursued at trial.

Takeaway: Be careful how you present Lanham Act claims arising out of patent infringement allegations. An patent infringer is not automatically liable for Lanham Act false advertising; such a finding will require its own set of carefully-developed proofs.

The Register Confuses Utility and Design Patents

It surprises me how often even industry publications get IP wrong. A case in point: The Register, the well-respected, often irreverent, but definitely tech-savvy website issuing mainly out of the UK today published a piece poking fun at Apple for patenting (and the PTO for issuing) what appears to be a power adapter for what used to be known as an automobile cigarette lighter (now known in PC-speak as a 12-volt power port).

The Register noted that "the device is so substantially similar to a standar automotive 12-volt power plug . . . that the penetrating intelligence of the US Patent and Trademark Office would surely not grant a patent for it if that were, indeed, its sole purpose. After all, the USPTO defines a patent - or, more specifically, a utility patent, as 'a new, useful, and nonobvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof." The post then went on to speculate as to what other possible uses the "power connector" could be put to.

The problem? The patent number -- D585,375 -- clearly signifies that the patent is a design patent, not a utility patent.

I might be more forgiving if the mistake had been made by a general-interest publication, but The Register holds itself out as "Biting the Hand that Feeds IT" and should know better.

Federal Circuit Revises In re Comiskey (again), Recants 101 Determination

Today the Federal Circuit issued a curious revised opinion in In re Comiskey, an appeal of a Board of Patent Appeals and Interferences decision affirming an examiner's rejection of Mr. Comiskey's patent claims.

What's curious, of course, is not the fact of the revision, but what was revised: where the original opinion had stated that certain of Comiskey's claims described "patentable subject matter under §101," the revised opinion deleted that discussion and instead remanded the claims to the PTO for that question to be addressed "in the first instance."

The bulk of the revised opinion is very similar to the original, in that it affirms the rejection of two independent and a number of dependent claims as not claiming patentable subject matter because they attempted "to patent the use of human intelligence" and described "an allegedly novel way of requiring and conducting an arbitration."

The original opinion then went on to consider two additional independent claims and 29 dependent claims, declared that they "claim patentable subject matter under §101," and remanded the case to the PTO for a consideration of whether the remanded claims are obvious.

In the revised opinion, however, the Federal Circuit removed this entire section discussing these additional claims, and replaced it with a paragraph remanding them to the PTO for the question of patentability under §101 to be considered "in the first instance."

So in the span of 13 days, 31 claims went from enjoying the imprimatur of "claim[ing] patentable subject matter under §101" to worrying in the uncertainty of a remand so that same issue could be "addressed in the first instance by the PTO."

What makes this change so very curious is the court's discussion at the beginning of the opinion. Mr. Comiskey had initially argued that the Federal Circuit lacked the power to consider §101 as a ground for rejection because that ground was not relied on by the BPAI. The court explained that the question of whether the claims were invalid for failure to claim statutory subject matter was "a question of law which we review without deference," and so was a ground that the court had the power to raise. (This reasoning is somewhat tortured, and has come under attack.) The court also noted that raising and resolving the §101 issue made sense where it "'would be wasteful to send' the case back to the agency for a determination as to patentable subject matter."

The court did acknowledge that in some cases, it would not be appropriate for the appellate court to raise and resolve the patentability issue sua sponte, for example where there were additional factual determinations needed that had not been made by the BPAI. In its revised opinion, however, it did not direct the PTO to make any such factual determinations, nor did in indicate that the lack of such facts prevented the Federal Circuit from making its own determination of whether the additional claims satisfied §101 in the same manner as it had no problem doing with the first set of claims.

As a final curiousity, this was a Bilksi-free opinion, perhaps because this is the second/third go-round for this opinion, which vacated the court's 2007 pre-Bilski opinion.

Good Discussion on Invention and Education

Woody Norris is a serial inventor. In this TED Talk, he discusses one of his recent inventions -- an "acoustic cannon" -- as well as his thoughts on the connection between invention and education.



TED is a great source of interesting discussions on all sorts of topics. It's fun to listen to Norris take the invention at the core of his talk and riff on its many potential applications.

UK IPO Opens Two New Patent Search Databases

The UK Intellectual Property Office has introduced two new searchable databases that could be helpful to companies doing business there.

The first is a database of expired patents; useful because calculating terms from issue dates is a cumbersome and often inaccurate way of determining whether a patent is in force (for example, if maintenance fees aren't paid, the invention could enter the public domain well before its apparent expiration date).

The second database lists patents that are available for a "License of Right," a form of compulsory license available in the UK where the patent holder agrees to make the patent available for license at a reasonable royalty, and the UK IPO acts as the arbiter of last resort in the event the parties are not able to come to terms.

The search interface is simple -- very Google-like, with a single search box -- and the test searches that I ran executed very quickly. Not at all like what the USPTO forces us to work with.

Fed Circuit Pending Patent Appeals Increase Slightly

The Administrative Office of the United States Courts has posted its latest set of judicial statistics. For the year ending March 31, 2008, the number of pending cases being considered by the Federal Circuit declined by about 20%, from 1201 to 975. Most of that decline, however, is accounted for by a decrease in appeals coming from the Court of Appeals for Veterans Claims.

Pending cases originating out of District Courts -- most of which would be patent-related -- increased from 317 to 336, while cases coming from the PTO declined a bit, from 39 to 34.

View the table here; for more appeal stats for other courts, look here.

Webinar -- Protecting Your Intellectual Property

On February 12, I am participating in a webinar titled "Protecting Your Intellectual Property." It's a "basics" type of presentation; if you read this blog and others like it, you probably know most of what we'll be talking about. However, please feel free to register or suggest it to friends or colleagues who would like a quick overview of the area.

Document Destruction Leads to Unenforceability Ruling in Patent Dispute

A dozen Rambus patents have been declared unenforceable against Micron in a long (going on nine-year) patent dispute in the District of Delaware. The reason: the destruction by Rambus of documents as part of its record retention/destruction policy that the district court (Judge Robinson, D. Del.) held were relevant to Micron's patent misuse, antitrust, and unfair competition defenses.

The 33-page opinion went into some detail about Rambus's long-simmering plan to exploit its patent resources, and determined that "litigation was reasonably foreseeable" by "no later than December 1998." Further, "because the document retention policy was discussed and adopted within the context of Rambus' litigation strategy, the court finds that Rambus knew, or should have known, that a general implementation of the policy was inappropriate because the documents destroyed would become material at some point in the future." Accordingly, the court ruled that "any documents purged" from December 1998 forward "are deemed to have been intentionally destroyed, i.e., destroyed in bad faith."

Had Micron only attacked the Rambus patents on their merits, however, the outcome might have been different. In a footnote, the court noted that "defenses that do not seem likely to depend from evidence internal to Rambus include those of anticipation and obviousness, since prior art references (by definition) must be publicly available. Likewise the written description requirement involves an objective review of the patent. . ." The defenses of unenforceability due to patent misuse, violation of the antitrust and unfair competition laws, and inequitable conduct, however, "are defenses that are illuminated by evidence of a non-public nature, e.g., by internal Rambus documents" -- the documents that were no longer available.

The court concluded that given the "clear and convincing" "showing of bad faith," Micron's "showing of prejudice can be proportionally less." Because the documents that were destroyed included "innumerable documents relating to all aspects of Rambus' business," and in view of "Rambus' litigation conduct" (which the court termed "obstructive at best, misleading at worst"), the "very integrity of the litigation process has been impugned."

There are several points (at least) to take away from this remarkable decision:

- Be careful how you implement or change record retention policies. The court found that Rambus's policy was litigation-driven; while in the opinion it appears that the original policy followed on the heels of a recommendation made in a Kroll Ontrack security audit, Rambus's litigation counsel was involved in the decision to implement it. Had the policy come from the corporate side of Rambus, or as a result of a business-oriented decision to clean out a growing accumulation of old files, the outcome might have been different.

- Make sure those responsible for prosecuting patents are aware of what those responsible for enforcing patents have planned. Another factor that hurt Rambus was the order to clean out patent prosecution files, which happened after the December 1998 "litigation was foreseeable" date.

- Be very careful about the extent and enforcement of a litigation hold. Rambus introduced a litigation hold as a result of the Micron dispute in December of 1999, but a year later disposed of "as many of 480 boxes of Rambus materials in connection with an office move."

- Tell your lawyers about your plans to shred. "Rambus employees, in several instances, did not inform outside counsel of the Rambus shred days."

- If the ruling stands, companies embarking on aggressive patent licensing programs may need to keep a much broader range of documents than companies that are trying to keep competitors out of a given market. If courts are going to assume that among the "reasonably foreseeable" litigation issues arising out of licensing negotiations include business issues such as patent misuse, antitrust, and unfair competition, then companies will need to keep documents that bear on such issues. Given the wide-ranging nature of civil discovery in the U.S., this could be a significant burden.

Declaratory Judgment Jurisdiction Still Has its Limits

Contrary to popular belief, there are limits on the scope of declaratory injunction subject matter jurisdiction despite the Supreme Court's broad interpretation of the standard in MedImmune v. Genentech.

For instance, if the patent holder never contacts you at all -- let alone alleges you infringe, or even just sends one of those über-bland letters that brings its patent to your attention -- your DJ action is probably going to be difficult to maintain.

That's the message delivered by Panavise Products, Inc. v. National Products, Inc., a January 6, 2009 non-precedential opinion from the Federal Circuit. Panavise and National each manufacture suction cup mounting devices; National is the assignee of U.S. Patent 6,666,420. National had actively pursued a number of alleged infringers of the '402 patent, but had never contacted Panavise concerning the patent or any Panavise product.

Panavise nonetheless filed a DJ action, alleging that Panavise sold a "potentially infringing" product; that "upon information and belief," National had seen the product at a trade show; and that National had sued other parties for infringing the '420 patent as well as other patents.

The Federal Circuit upheld the trial court's grant of National's motion to dismiss for lack of subject matter jurisdiction. National, the court noted, had attacked the factual allegations in Panavise's complaint that National had seen the Panavise product at the trade show, so that the allegations in Panavise's complaint were not controlling. This "placed the burden on Panavise to demonstrate facts sufficient to support its contention regarding the court's jurisdiction."

Panavise failed to meet this burden: "there is nothing 'definite and concrete,' and nothing 'real and substantial,' as Panavise has never presented any evidence and proof to support its allegation."

The Federal Circuit was careful to point out that it did not mean to say "that the lack of direct pre-complaint communication between a patentee and a declaratory judgment plaintiff by itself is sufficient to defeat subject matter jurisdiction." In this case, however, National's only other actions were its earlier lawsuits against other defendants concerning different products, and Panavise did not make a showing that its product was similar to any of those products.

While it denied National's motion for sanctions, the panel did take pains to note that "the appeal can be viewed as very weak from both a factual and a legal standpoint," and that it "approaches wasting the court's time and unduly delaying more deserving litigants."

Takeaway point: there are limits to the breadth of declaratory judgment jurisdiction even after MedImmune. In the absence of a direct communication from the patent holder, a DJ plaintiff will need to show something else -- in this case, perhaps, a showing that the Panavise product was structurally similar to other products accused by National in the past.

Fed Circuit Rains on ED Texas Patent Suit Parade

The Federal Circuit's recent decision in In re TS Tech USA Corporation is going to make it more difficult for out-of-Texas patent holders with few connections to that forum to sue U.S. infringers there. Difficult, that is, where the strongest connection to Texas is that infringing product ended up there.

In TS Tech, the plaintiff was a Delaware corporation with a principal place of business in Michigan; the defendants were two Ohio corporations (with Ohio PPOBs), and a Canadian corporation. The patent infringement lawsuit was filed in the Eastern District of Texas, where the district court denied the defendants' motion for a change of venue (to Ohio). The district court found that the inconvenience to parties and witnesses was outweighed by the "deference" entitled to the plaintiff's choice of forum.

The defendants took the question straight to the Federal Circuit via a writ of mandamus, which ratcheted up the standard of review from the "abuse of discretion" standard applicable to ordinary appeals to the higher "'clear' abuse of discretion" that "produced a 'patently erroneous result'" standard applicable to mandamus cases.

While the Federal Circuit noted that district court was correct in its evaluation of several "neutral" factors, it ruled that there were "several key errors" that together combined to meet the "clear abuse of discretion producing a clearly erroneous result" standard. In particular:

- the district court "ignored" the Fifth Circuit's "100-mile rule," requiring that the court consider "[w]hen the distance between an existing venue . . . and a proposed venue . . . is more than 100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional distance to be traveled." Here, witnesses were identified in Michigan, Ohio, and Canada, making the proposed Ohio venue materially (900 miles) more convenient than the existing Texan one.

- the district court treated the plaintiff's choice of forum as a "factor" against transfer, instead of merely according it "deference." This seems to be a rather fine point, but at a minimum expect to see future district courts explaining how they have given "deference" to plaintiff's forum choice without weighing it as a "factor" in the venue analysis.

- despite the fact that the "vast majority of physical and documentary evidence" was located in Ohio, Michigan, and Canada, and that none of the evidence was in Texas, the district court incorrectly treated the location of the evidence as a "neutral" factor because many of the documents were in electronic form. The Federal Circuit pointed out that, given that all of the physical evidence was "far more conveniently located near the Ohio venue," this factor should have been weighted in favor of transfer.

- the public interest did not favor the Texas forum, since allegedly infringing product was sold nationwide. As a result, the "citizens of the Eastern District of Texas have no more or less of a meaningful connection to this case than any other venue."

- finally, in an effort to justify its decision that this was a "clear abuse of discretion," the Federal Circuit compared the TS Tech case with the Fifth Circuit's most recent leading venue case, In re Volkswagen of Am., Inc., and after listing the factors from that case that favored the same finding (including that the district court "glossed over the fact that not a single relevant factor favored the plaintiff's chosen venue") stated that "the district court's errors here are essentially identical." (Ouch.)

While TS Tech is not going to preclude use of the Eastern District of Texas as a popular forum for patent infringement cases, it will make things more difficult for plaintiffs that cannot show an obvious connection to the forum. Expect to see patent plaintiffs add as defendants ED Tx-based parties in the distribution chain in an effort to bulk up the relevance of the forum to something more than "some infringing products ended up there."

Patentable? Wolf Poster Used to Herd Sheep

1. A method for herding sheep, the method comprising

a. collecting a plurality of sheep in a defined area;

b. determining a single direction in which to herd said sheep;

c. positioning at a point approximately 180 degrees from said single direction an image of a wolf of sufficient size to be visible to the most distant of said plurality of sheep;

d. moving said image of a wolf in said single direction in which said plurality of sheep are to be herded

This, would satisfy the Bilski "machine-or-transformation" test, of course, because it "transforms" a milling plurality of sheep into a focused, directed herd.

New Supplementary Search Feature for PCT Patent Applications

From IPKat comes this update that may be of interest to those filing foreign patent applications via the Patent Cooperation Treaty. As of January 1, 2009, WIPO will implement a new "supplementary international search" (or "SIS") service to all applicants. The point of the SIS is to offer a second layer of search above and beyond that provided by the applicant's usual searching authority. See the WIPO announcement here.

Practically speaking, the SIS will probably be commissioned by applicants to be run in a language different than that of the initial search. Initially, only three searching authorities will offer the SIS: Russia, Sweden, and Norway, but WIPO anticipate adding "at least three more" in 2009 and 2010.

While this may seem like a really bad time to be adding an additional expense to foreign patent filings, if used properly the SIS could end up saving applicants money by unearthing prior art for key applications while there is still time to deal with it during prosecution.

New Proposed Patent Jury Instructions -- comments wanted

From Patently-O comes this note that a committee formed at the request of Federal Circuit Chief Judge Paul. R. Michel has released a set of Model Patent Jury Instructions for public review and comment. I/P Updates reports that comments are due by February 1, 2009.

This appears to be a project that is spearheaded by the Intellectual Property Owners Association. While not an "official" committee in the sense that it is endorsed by a particular court, the resulting instructions are comprehensive and well-thought-out. While any set of jury instructions will ideally be closely tailored to the facts and issues of the case at hand, the draft model set provides a useful review of patent law concepts expressed in a way that is designed to be understood by lay jurors. You can access the proposed instructions here.