Jackson's Hand Shield Dispenser and Disposal System, developed over three years, is designed to prevent users of public restrooms from contracting germs that live on doorknobs.
A dispenser supplies a chemically treated sanitary tissue used to cover the doorknob when someone is exiting. On the other side of the door is a vacuum tube that will accept the used tissue and discard it safely in a locked container.
Monday, January 31, 2005
The prior art at issue, referred to as the "Lunar News articles," were a series of articles published in 1996 that recommended weekly doses (as opposed to daily doses) of alendronate (a biophosphate compound) to treat osteoporosis.
Both the articles and the '329 patent focused on GI problems that occur with daily dosing and the amount of the dose. The Federal Circuit found that the only difference between the articles and the '329 patent was the recommended dosage amount:
For the Lunar News articles to render claims 23 and 37 obvious, the district court need only have found a suggestion or motivation to modify the dosages from those in the articles to those in the claims. But as noted above, Merck’s own inventors admit the difference in dosing amount is obvious. (internal citations omitted).
The district court also had problems with the probative value of the Lunar Articles, because they were not peer reviewed and not authored by someone of skill in the art. The Federal Circuit countered, disagreeing with both views:
Although these indicia of reliability – whether a study is peer-reviewed, and the credentials of the author – properly go to weight when the trial court has not excluded evidence as unreliable and irrelevant, the district court’s reliance on these factors to distinguish Merck’s claimed invention is, again, misplaced. First, as noted above, these factors provide no relevant distinction between the articles and the claimed invention because the '329 patent also fails to explain how its higher dosing would overcome these dose-related side-effects. Second, as explained below the district court’s finding the author of the Lunar News articles not skilled in the relevant art is inconsistent with the court’s own definition of the relevant art.
The Federal Circuit finally addressed secondary considerations – evidence of (1) commercial success, and (2) some causal relation or “nexus” between an invention and commercial success of a product embodying that invention can be probative of whether an invention was nonobvious. (The thinking being that if it is commercially successful, someone else probably had tried to invent it earlier and failed). However, the Court found that Fosamax's commercial success had minimal probative value:
Although commercial success might generally support a conclusion that Merck’s claimed invention was non-obvious in relation to what came before in the marketplace, the question at bar is narrower. It is whether the claimed invention is non-obvious in relation to the ideas set forth in the Lunar News articles. Financial success is not significantly probative of that question in this case because others were legally barred from commercially testing the Lunar News ideas. Dr. Mazess, for example, could not put his ideas to practice in 1996 – he could only exhort Merck to try it. They did.
Why were others barred from testing out the ideas? Because Merck had another patent and an exclusive license through the FDA.
Friday, January 28, 2005
- The Federal Circuit invalidated on obviousness grounds the patent for the once-a-week version of Merck's Fosamax, which dominates the market for osteoporosis drugs. Under the ruling, generic competition could begin as soon as early 2008, instead of 2018. Article available here.
- An interesting article on toilet technology, and a new plunger on the market.
- And for the tennis fans, Auto-Ref Inc., owner of technology designed to bring more accuracy to the game of tennis, announced today from the Australian Open that it has received the U.S. patent 6,816,185 for "System and Method for Judging Boundary Lines."
Tuesday, January 25, 2005
Riverwood owned the '789 and '361 patents, each which were improvements on the '806 patent, which was also owned by Riverwood. He sued Jones for infringing the '789 and '361 patents, but Jones alleged that both patents were invalid in light of the prior art '806 patent because (1) Riverwood included the '806 patent as "prior art" in the Information Disclosure Statement (IDS) for the '361 and '789 patents, which constituted an admission; and 2) there were different named inventors on the '806 patents and the later two patents, with only one inventor in common for all three
Note: In a patent application, the prior art references listed in the IDS constitute the closest art of which the applicant is aware of relating to the invention in the application. The application then discloses and claims an invention over this prior art. Prior art may arise from § 102 or from admissions of the parties.
The Federal Circuit found that the '806 patent was not statutory prior art under § 103. While noting that in In Re Nomiya, the CCPA held that "a statement by an applicant during prosecution identifying certain matter not the work of the inventor as "prior art" is an admission that the matter is prior art," the Federal Circuit held that "that doctrine is inapplicable when the subject matter at issue is the inventor's own work," and " a patentee should not be "punished" for being as inclusive as possible and referencing his own work in an IDS." In particular,
[T]here is an important distinction between the situation where the inventor improves upon his own invention and the situation where he improves upon the invention of another. In the former situation, where the inventor continues to improve upon his own work product, his foundational work product should not, without a statutory basis, be treated as prior art solely because he admits knowledge of his own work. It is common sense that an inventor, regardless of an admission, has knowledge of his own work. (quoting Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 223 USPQ 1168, 1172 (Fed. Cir. 1984).
Monday, January 24, 2005
Companies around the world have filed-applications for 1 million international patents since the system began in 1978, according to the United Nations agency for intellectual property. U.S. companies lead in the number of applications, filing 205,286 since 2000, said Samar Shamoon, spokeswoman for the World Intellectual Property Organization. Japan is in second place with 72,891, followed by-Germany with 70,513, Britain at 25,916 and France with 24,278.
The WIPO web site provides more information.
Typically, company [Invent-Tech] officials counter that inventors’ contracts do not include guidance in seeking or obtaining a patent. “As you may know, Invent-Tech is a marketing and development company which does not give patent advice,” company legal [c]oordinator Leslie Hecker wrote to the patent office in response to a complaint.
The L.A. Daily News has a similar article about the difficulties (and often huge cash layout) new inventors face.
And yet another article about new inventors, direct from State College, PA. Was there something in the water yesterday?
Biometric payments leader BioPay®, LLC today announced that it has filed suit against Solidus Networks, Inc. d/b/a Pay By Touch, and Indivos Corporation in the U.S. District Court for the District of Delaware. BioPay's lawsuit, filed January 18, 2005, involves patents on the use of biometric technology in point-of-sale transactions. BioPay asks the court to declare patents held by Pay By Touch to be invalid and also asks the court to declare that BioPay has not infringed on Pay By Touch's patents.
Thursday, January 20, 2005
Pretrial stipulation interpretation
Grant of summary judgment
Denial of a motion for JMOL
On sale bar -- question of law, reviewed de novo, based on underlying facts, reviewed for clear error
Obviousness -- question of law, reviewed de novo, based on underlying facts, reviewed for clear error.
Factual findings in bench trials.
Exceptional nature of a case
All issues with factual components
Section 112 requirements
Factual findings in jury trials
Abuse of Discretion
Grant or denial of preliminary injunction
Exclusion of evidence
Denial of a motion for new trial
Denial of motion for JNOV/JMOL
Wednesday, January 19, 2005
The invention? Corset springs. If you are confused, refer to the date of this decision. This case dealt with the "public use" bar. It was not called § 102(b) then, but same thing, except back then, the "public use" bar was two years before the filing date, not one year, as it is currently. (With the changing times came more of a push to get people into the Patent Office, apparently.) In both 1855 and 1858, our happy inventor gave the corset springs to a young lady, who used them, then replaced them when they became worn out. The corset springs were hidden within the corset, which were of course hidden underneath the young lady's clothing, so no one actually saw the corset springs. The inventor did not apply for a patent for the corset springs until 1866. The Supreme Court found that he had "slept on his rights" for too long – providing the young lady with the corset springs constituted a public use.
This case is important for several reasons:
First, to constitute public use, the invention need not be actually used in public.
Second, whether the use of an invention is public or private does not depend on the number of people who know of its use. The Supreme Court stated:
"If an inventor, having made his device, gives or sells it to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy, and it is so used, such use is public, even though the use and knowledge of the use may be confined to one person."
Finally, "some inventions are by their very character only capable of being used where they cannot be seen or observed by the public eye…Nevertheless, if its inventor sells a machine of which his invention forms a part, and allows it to be used without restriction of any kind, the use is a public one."
The technology here? School bus mirrors, in particular, an oval elliptical mirror. Rosco argued that six of the patent claims had been "known or used by others in the United States prior to the invention date," and introduced as evidence a mirror of its own. The district court found this argument persuasive and found those claims invalid under § 102(a). Rosco also argued that three of the claims were obvious under § 103, but the district court disagreed, stating that Rosco had failed to present a motivation to combine the prior art references.
On appeal, the Federal Circuit focused on the standard of proof required. For anticipation (one prior art reference meets every claim limitation), that standard is clear and convincing evidence. To meet this standard, testimonial evidence of invalidity must be corroborated by documentary, physical, or circumstantial evidence, or the oral testimony of someone other than an alleged inventor or interested party. In Rosco's case, its co-owners both testified about anticipation. While the district court found Rosco's mirror to be sufficient corroboration for this testimony, the Federal Circuit disagreed. Furthermore, the Federal Circuit found that Rosco's patent expert's testimony was not corroborating because his testimony was based on what one of the co-owners had told him, he was not skilled in the art, and he had no independent judgment. Finally, the Federal Circuit found the district court's visual inspection of the mirror to be insufficient, because the district court is not skilled in the art, and no scientific measurements were done. Thus, Rosco had not proven anticipation by clear and convincing evidence.
The Federal Circuit agreed with the district court in that Rosco had failed to prove obviousness because it did not point to any motivation to combine the prior references.
Tuesday, January 18, 2005
And somewhat related to patentability, and the issue of first inventorship.
I'm also currently reading Innovation and Its Discontents: How Our Broken Patent System is Endangering Innovation and Progress and What to Do About It, by Adam B. Jaffe and Josh Lerner. I'll post my thoughts on it when I finish. Not only does it have the longest title I’ve ever seen (and I thought A Heartbreaking Work of Staggering Genius was bad), but it’s a fairly dry read, even for a patent lawyer. Please note that if you click on any of the above links, you will have the option of using the infamous Amazon "One-Click" patent if you choose to buy.
This case dealt with interpretation of § 102(b), the "on sale" bar. The critical date in this case was November 12, 1991. Group One contacted Hallmark on June 24, 1991, stating "We have developed a machine which can curl and shred ribbon so that Hallmark can produce the product you see enclosed--a bag of already curled and shredded ribbon.... We could provide the machine and/or the technology and work on a license/royalty basis." Hallmark expressed some interest, and the parties continued their correspondence. However, as tends to happen, Hallmark eventually decided to create their own ribbon curling machine and gave Group One the blow-off. Group One predictably sued Hallmark for patent infringement, and Hallmark countered with the "on sale" bar.
The main issue was whether the communications that occurred between Group One and Hallmark in June 1991 constituted a "commercial offer for sale" under the first prong of the Pfaff test. The Federal Circuit held that the offer sale must meet the level for an offer for sale in the contract sense, stating: "Applying established concepts of contract law, rather than some more amorphous test, implements the broad goal of Pfaff, which, in replacing this court's "totality of the circumstances" test with more precise requirements, was to bring greater certainty to the analysis of the on-sale bar." Additionally, "Because of the importance of having a uniform national rule regarding the on-sale bar, we hold that the question of whether an invention is the subject of a commercial offer for sale is a matter of Federal Circuit law, to be analyzed under the law of contracts as generally understood." In so holding, the Federal Circuit directed courts to look to the Uniform Commercial Code or the Restatement of Contracts "to define whether…a communication or series of communications rises to the level of a commercial offer for sale." The Federal Circuit reversed, finding that the communications between Group One and Hallmark did not constitute an offer for sale.
For an update on what happened later on, click here.
This case covers interpretation of § 102(b), which prevents a patent from issuing when the invention was described in a printed publication anywhere in the world before the critical date.
Klopfenstein filed for a patent for methods of preparing foods comprising extruded soy cotyledon fiber on October 30, 2000, making the critical date October 30, 1999. In October 1998, he presented a printed slide presentation at a meeting, which disclosed every claim limitation of the invention disclosed in the patent application. The presentation was pasted on posterboard and displayed continuously for the two and a half days of the meeting. In November 1998, the same presentation was on display for less than a day at Kansas State University. At the presentations, there was no disclaimer or notice to the intended audience to prohibit note-taking or copying of the presentation. Finally, no copies of the presentation were disseminated at either presentation, and the presentation was never catalogued or indexed in any library or database.
The issue was whether the presentation was a printed publication under § 102(b). The Federal Circuit first noted that "public accessibility" is the main criteria for § 102(b), and then, since the presentation had never been indexed or distributed to the public, applied a test based on factors including (1) the length of time the display was exhibited; (2) the expertise of the target audience; (3) whether there were expectations that the material would not be copied; and (4) the ease with which the materials could have been copied. The Court subsequently found that the presentation was sufficiently "publicly accessible" to count as a printed publication under § 102(b).
In a footnote, the Court noted that an entirely oral presentation that included no slides or copies of the presentation would not be a “printed publication,” nor would an oral presentation that included a "transient display of slides."
Sunday, January 16, 2005
What do you need to know about this case? The facts are unimportant because this is the case where the Supreme Court established how to establish obviousness. You'll see this test quite often in the future around here. The factual inquiries for obviousness under 35 U.S.C. § 103 are:
(1) Determine the scope and content of the prior art;
(2) Ascertain the differences between the prior art and the claims in issue;
(3) Resolve the level of ordinary skill in the pertinent art; and
(4) Evaluate any objective evidence of nonobviousness (i.e., "secondary considerations"). Courts have considered the following secondary considerations in determining obviousness; (1) the invention's commercial success, (2) long felt but unresolved needs, (3) the failure of others, (4) skepticism by experts, (5) praise by others, (6) teaching away by others, (7) recognition of a problem, (8) copying of the invention by competitors, and (9) other relevant factors.
This case involved interpretation of 35 U.S.C. § 102(b), which states that no one can patent an invention that was “on sale” in this country more than one year before filing the patent application. Prior to the critical date (one year before the filing date), Pfaff sent a sketch of his concept of a new computer chip socket to Texas Instruments, who placed an order for the sockets. At that time, Pfaff had not made and tested a prototype of his invention – in fact, no actual socket was even made until after the critical date. He subsequently sued Wells Electronics for infringement of the patent, and they counterclaimed that his patent was invalid because of the on-sale bar.
A unanimous Supreme Court provided two requirements for when the on-sale bar will apply: (1) when there is a commercial offer for sale; and (2) when the invention is ready for patenting. An invention that is “ready for patenting” has either been reduced to practice before the critical date, or “prior to the critical date[,] the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.” Why did the Court come to this conclusion? First, because the word “invention” in the Patent Act refers to conception of the invention, not to a physical embodiment of the idea. Second, because an invention may be patented before it is reduced to practice. In Pfaff’s case, the drawings he sent to Texas Instruments before the critical date fulfilled the “ready for patenting” requirement, and he had accepted a purchase order, fulfilling the “commercial offer for sale” requirement. Thus, Pfaff was out of luck.
In creating a “ready for patenting” requirement, the Supreme Court may have inadvertently created more uncertainty for inventors. In the future we will examine how the Federal Circuit has applied both the “commercial offer for sale” and “ready for patenting” requirements since Pfaff.
Saturday, January 15, 2005
Chakrabarty created a genetically engineered bacterium that was capable of breaking down multiple components of crude oil, and believed to be a significant step towards the treatment of oil spills. Both the patent examiner and the Board of Patent Appeals rejected claims to the bacteria itself under the conclusion that living things were not patentable subject matter under 35 U.S.C. § 101. The Court of Customs and Patent Appeals reversed, and then it was the Supreme Court’s turn.
In a 5-to-4 decision, the Supreme Court explained that while natural laws, physical phenomena, abstract ideas, and newly discovered minerals or plants are not patentable, a live, artificially-engineered microorganism is. Ultimately, the Supreme Court held that creating a bacterium not found anywhere in nature "having a distinctive name, character [and] use" constitutes a patentable, nonnatural "manufacture" or "composition of matter" under Section 101. The Court ruled on narrow grounds – the primary concern was the man-made bacterium’s ability to break down crude oil, making it useful.
Friday, January 14, 2005
Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation because it produces “a useful, concrete and tangible result”—a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades. (Emphasis added).
Whether the patent's claims are too broad to be patentable is not to be judged under § 101, but rather under §§ 102, 103 and 112. Assuming the above statement to be correct, it has nothing to do with whether what is claimed is statutory subject matter.
The State Street claims were directed to machines, although in dicta, the Federal Circuit indicated that for patentability purposes, it did not matter whether the claim was directed to a machine or a process. Still, some uncertainty remained as to whether the Federal Circuit would actually apply the same analysis to a § 101 challenge of a process patent.
AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999)
The State Street and AT&T decisions opened the door to providing patent protection for methods of doing business on the Internet, as long as they have a “useful, concrete, and tangible result.”
The Patent Act describes these as follows:
35 U.S.C. § 101 deals with utility/subject matter, and seems fairly basic: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore…”
35 U.S.C. § 102 deals with novelty, and is more complicated. Novelty deals with a single prior art reference that teaches all of the elements of the claimed invention. Furthermore, the Patent Office does not like it when people sit back and don’t file for a patent, so there are time requirements that can kill novelty.
102(a) says that if there is public knowledge or use by others in the United States, or a publication or patent issued anywhere in the world prior to the date of invention, the invention is not novel.
102(b) says that if there is a patent obtained or a publication anywhere in the world more than one year before the critical date (filing date), or if there is a public sale or use anywhere in the United States more than one year before the critical date (filing date), the invention is not novel.
102(c) says that if the inventor intentionally abandons the invention, it is not novel.
102(d) says that if the inventor files an application in a foreign country for the same invention more than 12 months before an application was filed in the United States (six months for design patents), and the foreign patent issued before the United States patent was filed, the invention is not novel.
102(e) creates “secret” prior art. Because patent applications are kept secret, there may be prior art out there by another person that you are not aware of when you file a patent application. When the patent is published or issued, it acts retroactively as prior art. This is a complicated area, so I’ll leave it at that for now.
102(f) says that if the “inventor” did not invent the invention, it is not novel.
102(g) creates a category of prior art when the same invention is made by another who did not abandon, suppress, or conceal the invention. Usually this leads to an interference, whereby the first inventor is determined.
35 U.S.C. § 103 deals with obviousness. Basically, if your invention is obvious to one of skill in the art, you can’t get a patent. For example, if some invents a red chair and gets a patent on it, you would not be able to get a patent for a blue chair because it would be obvious. That’s a very basic example, but you get the idea. This section differs from section 102 in that you can combine multiple prior art references to prove an invention is obvious.
So when does this come up? In general, either (1) when the patent is being examined (or re-examined) by the Patent Office, or (2) during litigation. In litigation, typically if you bring an infringement suit against someone else, they will counterclaim that your patent is invalid under section 102 or 103.
The U.S. Patent and Trademark Office offers a great glossary of patent terms.
This is all subject to change -- we'll see where it goes from here!