The Puget Patent Blog


Posted Monday, April 18, 2011.

Just a couple of updates this morning for topics on which I have previously written…

The United States Supreme Court is hearing oral arguments this morning in the Microsoft v i4i case. The issue in this case is whether the burden of proof to show patent invalidity from “clear and convincing evidence” to “preponderance of the evidence.” And if the burden should be lowered, in what cases should it be lowered? For example, should it be lowered when the defendant raises prior art which was not considered by the examiner?

The result of this case is important for all inventors, since it goes directly to the value of a patent. A patent which has a presumption of validity which can only be invalidated through clear and convincing evidence is a more valuable patent than one which could be invalidated through a lower standard of proof.

The second update for today regards the America Invents Act of 2011, which last week was approved by the House Judiciary Committee with all of the major provisions from the Senate act intact. First to File is still there, along with provisions permitting the PTO to keep all of the fees it collects rather than seeing some diverted for other government use. The bill now moves to the full House for further consideration.

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America Invents Act of 2011 Introduced in the House

Posted Wednesday, April 6, 2011.

Following passage last month of the America Invents Act of 2011 in the U.S. Senate (Senate Bill S.23), a companion bill was introduced in the House of Representatives last week.

The House version of the bill is slightly different from the Senate bill. The major initiatives, first-to-file among them, are intact. The bill is in committee and it is too early to predict whether passage is a sure thing.

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Will a competitor be able to get around my patent?

Posted Wednesday, March 30, 2011.

A question I am asked often is, “once I have the patent, will a competitor be able to get around it by copying the invention with just a modest change so that they no longer infringe?”

For example, if I have a patent on a table, and the patent claims recite that the table legs are joined to the surface by nails, can somebody make a table and defeat an infringement claim by joining the legs to the surface with screws?

One proactive way to defeat this would be to change the patent claim to recite that the leg is joined to the surface with a fastener, and then in the specification state that appropriate fasteners may be nails, screws, or other such implements. But after the fact, if we claim nails, can somebody just switch to screws and not be liable for infringement?

Probably not. Since the mid-nineteenth century, the courts have recognized a “Doctrine of Equivalents”. The rationale is that patent law would be very weak if it were so easily defeated, to the extent that inventors would lose their incentive to innovate.

If it is clear to a jury that the alleged infringing design “performs substantially the same function in substantially the same way to obtain the same result,” then it infringes the patent under the Doctrine of Equivalents. In our table example, joining the table leg with a screw most likely meets this test, so even if our patent recited nails and a competitor made their table with screws, they will likely be held liable for infringement even though our patent says nothing about screws.

Who determines whether the substituted design element is substantially the same? This comes back to the Person Having Ordinary Skill In The Art (“PHOSITA”). If a PHOSITA would recognize the substitution as one of just two interchangeable parts, then it is substantially the same. That is why this is a jury question. There will likely be testimony as to what a person skilled in the art would or would not recognize as being interchangeable, and a jury makes the credibility determination as to which side’s assertion about what a PHOSITA would know is more likely.

The Doctrine of Equivalents helps assure strong patent rights, by ensuring a competitor can’t pirate a patented invention by making some insignificant change that gets the device legally outside of what is literally claimed, while retaining the essence of the patented invention. In most instances a competitor won’t be able to get around your patent because a court would invoke the Doctrine of Equivalents to find infringement.

Litigation is expensive, however, so the best solution is to employ a skilled patent drafter with the skills to protect your invention such that it is difficult for a copier to find an insignificant change to make that isn’t already covered by the patent.

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The Reason for Patents

Posted Wednesday, March 23, 2011.

The most basic definition of a patent is an exchange between an inventor and the government representing the people.

The inventor has something of value that is needed by the people. That thing of value is the knowledge to construct something innovative that doesn’t currently exist. The government, representing the people, wants to elicit that knowledge from the inventor so that everyone can have access to the innovation.

An inventor may not be so willing to just give up the knowledge gained through hard work, however. This isn’t apparent with all inventions, but consider a formula, such as the recipe for Coca-Cola, invented by John Pemberton in 1886. Rather than tell us how to make the soft drink, Dr. Pemberton decided to keep the recipe a secret so that only he could make it and profit from the invention. The result? The formula for Coke is a “trade secret”. Rather than the recipe being in the public domain, where it could be commoditized and sold inexpensively, instead there is only one source for Coca-Cola which keeps the price artificially high.

Instead, Dr. Pemberton could have sought a patent for his invention from the government. In exchange for a disclosure of the formula, the U.S. might have awarded Dr. Pemberton the exclusive right - a monopoly - to make Coca-Cola for a period of 17 years. But at the end of that period, the rights would pass into the public domain, meaning that anybody could make and sell the product.

Another invention at about the same time was the common breakfast cereal, Shredded Wheat, invented in 1893. A patent was applied and granted for the machinery that made Shredded Wheat biscuits for the cereal. The manufacturer enjoyed a monopoly on the sale of Shredded Wheat, after which time the rights to manufacturer the cereal passed into the public domain. (That’s not all - in a landmark trademark case, the right to the name “Shredded Wheat” was held to have passed into the public domain at the same time.) Today, you’ll see multiple makers of cereal called Shredded Wheat at the grocery store, but there’s only one Coca-Cola. The difference? The Shredded Wheat company got a patent, enjoyed their monopoly, and now anyone can make it. But Coca-Cola was and continues to be held as a trade secret, so only the Coca-Cola company can make it (or license it to bottlers, as the case may be).

This illustrates the basic bargain embodied in a patent. In exchange for the inventor telling us how to make the invention, so that we can all benefit from the knowledge and work that went into the new finding, the inventor is granted a time-limited exclusive right to “practice the invention” (in other words, to make it, sell it, use it, etc.). This basic concept informs several tenets of patent law. For example:

  • It is in the interest of the government to get the knowledge into the public’s hands as quickly as possible. To facilitate that, the government forces inventors to apply for their patents within one year of public disclosure or sale. Otherwise, the right to a patent monopoly is lost. An inventor can’t extend the monopoly period by selling the product until a competitor also figures out how to make the product, and then filing for a patent on the invention.

  • If a central part of the exchange is the inventor’s knowledge about how to make the invention, then that information has to be disclosed in the application in sufficient detail to allow the rest of us to do so. Patent applications can be rejected for lack of specificity. How much detail is required? In general, a person having ordinary skill in the art must be able to use the information disclosed in the application to practice the invention. There’s even an acronym here that patent practitioners throw around: “PHOSITA”. If a PHOSITA would understand how to make the invention after reading the contents of a patent if it were to issue, then there is sufficient content in the application.

As an inventor, if there’s an aspect of patent law that seems unfair or hard to understand, always go back to the basic bargain between the inventor and the U.S. government: the monopoly rights in exchange for the rest of us receiving information about how to make and use the invention. Remember, as an inventor, you don’t get awarded a monopoly just for being clever and innovative. You are giving something to your country, but in order for that to be a fair exchange, you have to be giving something of value to receive a monopoly. That means something that nobody has ever invented, and a disclosure of it in sufficient detail that we can all eventually have it.

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What can Monk teach you about patent law?

Posted Tuesday, March 15, 2011.

Also titled “can you patent something that is considered immoral?”

My fiancee and I were watching a rerun of the TV show Monk last week. It was an episode from Season 4, with Jeffrey Donovan of Burn Notice guest-starring as an astronaut. As with all episodes of Monk, a murder had been committed. Here, the astronaut was the prime suspect. Trouble was, at the time the coroner suspected the victim died, the astronaut was in space.

It seemed like a pretty good alibi until Detective Monk figured out that the astronaut had heavily drugged the victim before he left and then propped her up in a homebuilt machine that carried out her killing a few days later, while he was in space. The gory details are not necessary for this blog, but my first thought upon seeing the “assassination machine” was “he won’t be able to get a patent for that invention!”

Perhaps that means I think about patent law too much of the time, but it’s true: the Supreme Court has ruled that assassination machines are not patentable subject matter. I have very few (ok, no) clients that are interested in patenting such an awful thing, fortunately, but is it possible to get a patent for something of questionable moral value? In most cases, provided the invention has some utility to someone, the answer is yes.

The leading case on this question is Juicy Whip, Inc. v. Orange Bang, Inc. (I’m not making this up). The product in question was a drink dispenser, of the type that has a clear container at the top in which there is liquid and a blending apparatus, so that it looks like your drink is being mixed and is ready to be dispensed. (If you’ve seen an Orange Julius store at the mall, you know what I am talking about.) In reality, the container at the top of the machine in which the orange liquid is swirling around is a decoy. Your drink is really being dispensed and mixed from a box that is hidden under the counter, just as with a soda-fountain dispenser.

The reason for the decoy is that there is something visually appealing about the juice swirling around in the container, but if that were the real juice, the container would need to be emptied and cleaned regularly and that’s too much effort. The decoy lets the consumer believe he or she is seeing the actual juice, but in reality it’s going to get mixed like a conventional fountain soda.

So the company holding the patent sued another maker of beverage dispensers for infringement. The defendant argued the original patent was invalid so they shouldn’t be liable for infringement. That’s a common defense in an infringement suit, but what is unusual is that the defendant argued the reason the patent should be invalid is because the subject matter of the patent is basically deceiving consumers. Isn’t that immoral? And if so, why should the government grant a patent on immoral subject matter? The interesting part of this defense is that the defendant is basically saying, “hey, we’re doing something immoral.”

In any event, the Court of Appeals for the Federal Circuit (the Federal appellate court charged with hearing all appeals related to patents, regardless of geography) held that the key question is one of utility, not morality. The subject matter of the patent is in fact legal, even if it is questionable whether it is moral, and since there is something useful about not having to clean the dispenser it has sufficient utility for a patent.

So where is the line where something of questionable morality becomes unpatentable? It is shifting with time. For example, at one time gambling devices weren’t patentable subject matter because gambling was seen to be immoral, but you could get a patent on a new and novel slot machine today provided it met all the other requirements for patentabililty such as utility (making money for a casino, in this case).

But “…inventions that are injurious to the well-being, good policy, or sound morals of society…” are unpatentable, including “a new invention to poison people, or to promote debauchery, or to facilitate private assassination.” (This language is from Lowell v. Lewis, a case from 1817.)

So, astronaut resembling Jeffrey Donovan, your assassination machine was clever, but not clever enough to fool Detective Monk, and definitely not eligible for a patent.

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