The Patentability Blog

Expedited Patent Examination

2010-06-03T13:30:00.000-05:00

Here's a great idea:

U.S. Patent and Trademark Office chief David Kappos is proposing a new three-track system for patent applications that would allow applicants to pay an undisclosed amount on top of the standard $1,090 filing fee to jump to the front of the line for expedited reviews.

But will everyone do it? Full article from the Wall Street Journal here.

ATM Inventor Dies

2010-05-20T09:45:00.001-05:00

John Sheppard-Baron, who is credited with inventing the ATM machine, has died. This article from the Chicago Tribune has his obituary. And oh, how times have changed with the ATM:

The first automated teller machine, or ATM, was installed at a branch of Barclays in a north London suburb on June 27, 1967. (An earlier mechanical device was installed at a New York bank in 1939, but it was soon dismantled when customers showed no interest.)

Instead of plastic bank cards, Shepherd-Barron's machine used special checks that were chemically coded. Customers placed the checks in a drawer, and after a personal identification number (PIN) was entered, a second drawer would spring open with a 10-pound note.

Inventors - Clorox Wants You!

2010-05-11T20:58:00.000-05:00

It appears that Clorox is seeking "new ideas for products that help consumers reduce the spread of bacteria, fungi and viruses that can cause illness. If a product concept is chosen through this campaign, the inventor will receive a $2,500 advance and other compensation based on sales."

However, "While submissions need not be limited to traditional home cleaning categories, Clorox is not interested in new ideas for personal care products, pharmaceutical drugs, or medical devices."

Full contest rules are available here.

Deadline is July 5, 2010, so get inventing!

Chester Carlson - The Copy Machine

2010-05-11T20:48:00.000-05:00

I can't believe I've neglected to rave about the book Copies in Seconds, by David Owen. I came across this book on Amazon a few years back, in my search for a good non-fiction read. (And for some reason, I like reading about inventors and companies.) This one talks about the struggle of Chester Carlson to get anyone to pay attention to his wonderful invention, which we all know as xerography. Photocopies. This is a fascinating book and it reads like fiction. (Meaning, it is a very easy read, and maybe even a good beach read for you this summer!)

I was reminded of this book because I came across this article from the Contra Costa Times, which is also about Chester Carlson. In part:

The first year of the Great Depression was a lousy time for finding jobs - even for a Caltech graduate. He went to New York where he accepted relatively menial office jobs at which he often was called upon to copy information, either by hand or using a highly inefficient photographic process.

From these tedious exercises grew the idea that an image could be transferred electrically to paper via a charged powder, or toner.

He patented his process called xerography - "dry printing" - in 1937 and offered the concept to IBM in 1940. Nobody seemed much interested.

I added the Amazon link so you can see the cover of the book, but I have no idea why this book is so expensive. You can probably find a copy on eBay for cheap, or through one of the used sellers on Amazon. If you have any good inventor book suggestions for me, please let me know in the comments!

Battle of the Experts

2010-05-04T14:11:00.001-05:00

Althought non-precedential, B-K Lighting, Inc. v. Fresno Valves & Castings, Inc. (Case No. 2008-1537, April 28, 2010, Federal Circuit Court of Appeals) provides a good reminder what constitutes a factual issue for purposes of summary judgment.

In this case, at issue was whether certain claims for a lighting mount were obvious in light of the prior art:

“The question of obviousness was focused on the differences between the combination of these prior art devices and claims 3, 12, 15, 18, 19, 21, and 22 of the '084 patent, and in particular whether the Hydrel 7100 disclosed frictional pivoting. On appeal, B-K Lighting principally asserts that claims 3, 12, 15, 18, 19, 21, and 22 would not have been obvious because the Hydrel device did not disclose frictional pivoting.”

The parties’ experts submitted opposing declarations on summary judgment as to whether the Hydrel device disclosed frictional pivoting. The district court disregarded the patentee’s expert’s opinion and granted summary judgment on nonobviousness.

The Federal Circuit vacated, finding that:

“The district court disregarded Pratt's declaration, calling it "conclusory" and "factually unsupported." Summary Judgment Order, slip. op. at 31-32. It is not clear, however, why the court found Pratt's declaration any more conclusory than Dornfeld's. Both experts based their opinions on the same data sheets for the Hydrel 7100. This conflict in expert declarations regarding whether the Hydrel 7100 disclosed frictional pivoting created a genuine issue of material fact that made summary judgment inappropriate. See, e.g., Metro. Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330, 1338-39 (Fed. Cir. 2008); Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1351-52 (Fed. Cir. 2000); Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1338-39 (Fed. Cir. 2000); Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Because the conflicting testimony of the parties' experts regarding whether the Hydrel 7100 disclosed frictional pivoting created a genuine issue of material fact, we vacate the district court's judgment of invalidity for claims 3, 12, 15, 18, 19, 21, and 22 of the '084 patent.”

How to Get an Innovative Razor to Market

2010-04-28T21:08:00.000-05:00

It can be difficult for a small time inventor to compete against a big corporation in order to break into the market. The New York Times has this article about the approach taken by the ShaveMate inventors to get shelf space among giants like Gillette and Shick. In part:

After years of research and development, engineering and patent work, the brothers took their razors to the military in 2002 because they had heard that soldiers in Iraq and Afghanistan were dry shaving. That first product was rugged and featured two blades, with the shaving cream in the handle. The military became a repeat customer.

Still, the Tomassettis found American retailers reluctant to take shelf space from Gillette and Schick. Store managers encouraged the brothers to improve their product — add more blades, they suggested. So the Tomassettis did. With six blades, ShaveMate offers one more in-line blade than its competitors, and it is the only all-in-one razor on the market with shaving cream in the handle.

An interesting read, and a creative approach.

Museum Exhibits Inventions that Have Changed Our Lives

2010-04-26T14:12:00.000-05:00

If you live anywhere near the Polk County Historical Museum in Bartow, FL, you might want to check out their new exhibit (which runs through the end of June) on 20th century inventions that have changed our lives. The exhibit appears to highlight such inventions as the gas mask, Life Savers, a graphophone, the radio, Bakelite plastic, the tape dispenser, Band-Aids, ballpoint pens, and many others. You can find an article about the exhibit here.

Secondary Considerations – Litigation Induced Licenses?

2010-04-25T18:09:00.000-05:00

One of the secondary considerations to rebut obviousness is the acquiescence of others in the industry, often shown through licensing the patented invention. Presumably, a competitor does not act against his or her own economic interests (i.e., by paying a licensing fee) unless convinced of the validity of the patent.

Does it matter if the licenses are the result of litigation or the threat of litigation? Recently in the Eastern District of Texas, the district court denied defendants’ motion in limine to exclude litigation induced licenses. The plaintiff intended to introduce them not only for evidence of secondary considerations, but for damages as well. The court stated: “Defendants’ concerns about the reliability of litigation-related licenses are better direct to weight, not admissibility.” See Datatreasury Corporation v. Wells Fargo & Company et al., 2-06-cv-00072 (TXED March 4, 2010, Order) (Folsom, J.), available here.

Presumption of Validity - Does it Matter Anymore?

2010-04-22T16:48:00.000-05:00

35 U.S.C. 282 says it: “A patent shall be presumed valid…The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” This presumption of validity was codified in the 1952 Patent Act. The Federal Circuit has in varying cases described the purpose of establishing the presumption. See, Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1574 (Fed. Cir. 1992) (“[The] presumption is based in part on the expertise of patent examiners presumed to have done their job.”) and Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1569 (Fed. Cir. 1996) (“The presumption of validity is based on the presumption of administrative correctness of actions of the agency charged with examination of patentability.”)

The Federal Circuit has long established that the burden to overcome the presumption of validity is clear and convincing evidence. “Clear and convincing” generally means highly probable or reasonably certain. Prior to formation of the Federal Circuit in 1982, the burden of proof necessary to rebut varied among the various Circuit Courts – some courts used a “preponderance of the evidence,” some used “substantial evidence,” and some used “clear and convincing evidence.” The Supreme Court has never directly addressed the issue of the proof required to rebut the presumption.

Why do I bring this up? At page 104 of the Association for Molecular Pathology opinion, Judge Sweet had this to say: “While Congress has created a presumption of validity for issued patents, approximately 40% of patents challenged in the courts have been found invalid, indicating that this presumption is far from absolute.”

While it may be fair to say that many patents are (rightly or wrongly) invalidated in litigation, is it fair to simply blow off the statutory presumption of validity? More importantly, the majority of the cases relied upon by Judge Sweet issued prior to the codification of Section 282, and prior to the formation of the Federal Circuit, which established once and for all that the burden to rebut was “clear and convincing.” Are Judges held to a higher burden of proof now to invalidate than pre 1952 and/or pre 1982? And should that be taken into consideration when relying upon older cases to invalidate a patent?

Association for Molecular Pathology v. USPTO - The Case Law

2010-04-21T21:38:00.000-05:00

For the moment, speaking solely to the “isolated DNA” claims and argument, let’s take a look at Judge Sweet’s analysis.

Let’s look at the case law he mainly relied upon:

American Wood-Paper Co. v. The Fibre Disintegrating Co., 90 U.S. (23 Wall.) 566 (1874)

Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293 (1884)

Ex Parte Latimer, 1889 Dec. Comm’r Pat. 123 (1889)

Gen. Elec. Co. v. De Forest Radio Co., 28 F.2d 641 (3rd Cir. 1928)

American Fruit Growers, Inc. v. Brodgex Co., 283 U.S. 1 (1931) (rejects Myriad’s argument that this case was decided on novelty grounds)

In Re Mardin, 47 F.2d 957 (C.C.P.A. 1931)

In Re Merz, 97 F.2d 599 (C.C.P.A. 1935)

Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) (rejects Myriad’s argument that this case was decided on an obviousness determination)

Diamond v. Chakrabarty, 447 U.S. 303 (1980)

JEM Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124 (2001)

Two things jump out at me when looking at these cases. First, there is not a single Federal Circuit Court of Appeals case in the list. Granted, there are two C.C.P.A. cases from the 1930s, but given that the Federal Circuit is pretty much the holy grail when it comes to patent law, I find it hard to believe that there was nothing worth citing (dicta or otherwise) in any Federal Circuit case on this issue addressing gene patents. Has the Federal Circuit really never commented on this issue? I'll do some research on that. As I said in my post below, biotech patents aren't an area I generally deal with, so I don't know the answer to this question off the top of my head.

The second thing that jumps out at me is that the majority of these cases are extremely old. What’s amusing about that is that Judge Sweet specifically cites to and points to part of Judge Rich’s discussion of the 101 analysis from In Re Bergy, 596 F.2d 952 (C.C.P.A. 1979), in particular Judge Rich's statement that “statements in the older [pre 1952] cases must be handled with care lest the terms used in their reasoning clash with the reformed technology of the present statute; lack of meticulous care may lead to distorted legal conclusions.” Yet, Judge Sweet’s analysis relies upon eight cases decided prior to the Patent Act of 1952. Do these cases even apply anymore, given the changes in patent law over the past 100 years? Is it clear that these cases all dealt with 101 and not novelty or obviousness? Another issue I'll take a look at.

Let’s move on to the cases he distinguished, and why:

In Re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) (distinguished because it dealt with obviousness of the biological product claims)

In Re O’Farrell, 853 F.2d 894 (Fed. Cir. 1988) (distinguished because it dealt with obviousness of the biological product claims)

Merck & Co., Inc. v. Olin Mathieson Chem. Corp., 253 F.2d 156 (4th Cir.) (the purified product was “more than a mere advance in the degree of purity of a known product”)

In re Bergstrom, 427 F.2d 1394 (C.C.P.A. 1970) (distinguished because it presented issues of novelty)

In re Kratz, 592 F.2d 1169 (C.C.P.A. 1979) (distinguished because it presented issues of novelty)

Parke –Davis & Co. v. H.K. Mulford Co., 189 F.2d 95 (S.D.N.Y. 1911) (distinguished because it dealt with novelty)

All of these cases except for one were distinguished on the basis that they did not address 101 issues, but instead were dealing with 102 and 103 issues. One thing I do remember from law school and dealing with 101 (since it really rarely comes up as an issue in litigation) is that sometimes it is difficult to tell on what basis a patent is invalidated in the older cases, as Judge Rich pointed out. Interesting, though, that Judge Sweet had no problem making this determination in the case law that didn't support his position. I’ll withhold any opinion on this issue until I have a chance to look at these cases.

Judge Sweet v. the USPTO

2010-04-21T21:21:00.000-05:00

I’ve been working my way through the massive 156 page opinion in Association for Molecular Pathology v. USPTO, where – in case you’ve been living under a rock – Judge Sweet of the Southern District of New York ruled that gene patents are invalid under Section 101.

The writing was on the wall in this opinion by page 63, whereupon Judge Sweet spent 11 pages discussion the policy implications of gene patents – a discussion heavily weighted in favor of why gene patents are bad.

I’ll admit up front that I don’t generally deal with biotech patents, so I’m not familiar with some of the cases cited by Judge Sweet other than, of course, Chakrabarty. What bothers me is that this decision does not in any way convince me that he is right and the Patent Office is wrong for issuing gene patents; his decision seems based more on policy and less on the law. Judge Sweet appears to state his own interpretation of the cases, while ignoring the interpretation that the USPTO has discussed in its examination guidelines. I dug up the January 5, 2001 utility patent examination guidelines, which discuss gene patents. Judge Sweet dismisses these guidelines in one fell swoop (pp. 103-104), and does not even attempt to explain the disparity between his position and that of the USPTO. Does he have to? No, I guess not. But certainly some mention of the diparity or support for his interpretation would have been nice. While the word of the Patent Office is not law, and technically Judge Sweet doesn’t need to give it any deference, the logic and conclusion of this opinion do not seem to indicate that he even realized the enormity and impact of what he was saying.

For example, at pages 114-116, Judge Sweet dismisses the Parke-Davis case (slamming Judge Hand in footnote 46), stating essentially that it wasn’t relevant because it dealt with novelty. Here’s what the Patent Office said about the case in the 2001 examination guidelines:

Patenting compositions or compounds isolated from nature follows well-established principles, and is not a new practice. For example, Louis Pasteur received U.S. Patent 141,072 in 1873, claiming `[y]east, free from organic germs of disease, as an article of manufacture.' Another example is an early patent for adrenaline. In a decision finding the patent valid, the court explained that compounds isolated from nature are patentable: `even if it were merely an extracted product without change, there is no rule that such products are not patentable. Takamine was the first to make it [adrenaline] available for any use by removing it from the other gland-tissue in which it was found, and, while it is of course possible logically to call this a purification of the principle, it became for every practical purpose a new thing commercially and therapeutically. That was a good ground for a patent.' Parke-Davis & Co. v. H. K. Mulford Co., 189 F. 95, 103 (S.D.N.Y. 1911) (J. Learned Hand).

The Patent Office goes on to discuss the Bergstrom case (also rejected by Judge Sweet because it dealt with novelty) in a similar manner:

In a more recent case dealing with the prostaglandins PGE2 and PGE3, extracted from human or animal prostate glands, a patent examiner had rejected the claims, reasoning that `inasmuch as the `claimed compounds are naturally occurring' * * * they therefore `are not 1new' within the connotation of the patent statute.'' In re Bergstrom, 427 F.2d 1394, 1397, 166 USPQ 256, 259 (CCPA 1970). The Court reversed the Patent Office and explained the error: `what appellants claimMpure PGE2 and PGE3Mis not `naturally occurring.' Those compounds, as far as the record establishes, do not exist in nature in pure form, and appellants have neither merely discovered, nor claimed sufficiently broadly to encompass, what has previously existed in fact in nature's storehouse, albeit unknown, or what has previously been known to exist.' Id. at 1401, 166 USPQ at 261-62. Like other chemical compounds, DNA molecules are eligible for patents when isolated from their natural state and purified or when synthesized in a laboratory from chemical starting materials.

Judge Sweet also gives short shrift to any responsibility by Congress to legislate such a massive change in the current process at page 105. The Patent Office had this to say in the 2001 examination guidelines:

Congress adopted the current statute defining patentable subject matter (35 U.S.C. 101) in 1952. The legislative history indicates that Congress intended `anything under the sun that is made by man' to be eligible for patenting. S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952). The Supreme Court interprets the statute to cover a `nonnaturally occurring manufacture or composition of matter-a product of human ingenuity.' Diamond v. Chakrabarty, 447 U.S. 303, 309, 206 USPQ 193, 197 (1980). Thus, the intent of Congress with regard to patent eligibility for chemical compounds has already been determined: DNA compounds having naturally occurring sequences are eligible for patenting when isolated from their natural state and purified, and when the application meets the statutory criteria for patentability.

Note that at page 110, fn. 43 Judge Sweet refers to the “anything under the sun that is made by man” quote as “misleading.”

Something else is odd. Here is one of the claims at issue: “an isolated DNA coding for a BRCA1 polypeptide, said polypeptide having the amino acid sequence set forth in SEQ ID NO:2.”

Here is an example claim from the MPEP, Section 803.4: “an isolated and purified DNA fragment comprising DNA having at least 95% identity to a DNA sequence selected from SEQ ID Nos. 1-1,000.”

Pretty similar format, no?

More comments to come…

Bilski v Kappos

2010-04-21T10:06:00.000-05:00

Since the big Bilski decision is expected very soon, I'm going to hold off on my personal analysis of all this hoopla for the moment. I just wanted to point you to this wonderful page by Awaken IP, which includes links to basically every commentary, blog post, brief, transcript, and argument ever filed for and against Bilski.

A Turing Machine

2010-04-20T23:38:00.000-05:00

Here's an interesting site, provided by someone who attempted to build a Turing Machine. Wikipedia describes a Turing Machine as a theoretical device that manipulates symbols contained on a strip of tape, described by Alan Turing in 1937. So, what do you think, as we all anxiously await the Supreme Court's Bilski decision -- should a Turing Machine be patentable subject matter?

FM Radio Inventor

2010-04-20T23:17:00.000-05:00

Edwin Armstrong, inventor of the FM radio, who tragically committed suicide in 1954, gets some attention from the New York Times. An archivist at Columbia University is working to organize his papers and materials. Their blog, documenting the progress is available here.

25 Inventions that Will Improve Your Life

2010-04-20T23:10:00.000-05:00

Reader's Digest has published a neat slideshow on -- you guessed it -- 25 Inventions that Will Improve Your Life. While not all of them are likely patentable, it's still a fun article. Available here.

Four Years Later....

2010-04-20T22:59:00.003-05:00

Well, I'm happy to report that I made partner at my firm. I suppose maybe working toward that was more important than trying to run around and keep up this blog. I'm afraid that I somewhat lost focus.

But now, things are a bit different for me.

Now more than ever blogs are such a useful form of getting information about the wonderful world of patent law.

So, here's to getting this thing going again, and boy have I missed a lot around here between KSR, Bilski and many other cases that have come down and events that have happened. Hopefully you'll stick with me. I'm just happy I managed to remember my login and password for this account!

Cheers!

IP Hall of Fame

2006-03-16T21:56:00.000-06:00

is now online here. Among the first inductees are Thomas Edison (duh), Victor Hugo, and Thomas Jefferson.

Patent Auctions

2006-03-03T11:43:00.000-06:00

Is this the wave of the future?

Chicago-based Ocean Tomo, a patent consulting firm that includes Ross Perot as an investor, will put on the auction block approximately 400 patents applicable to semiconductors, RFID (radio frequency identification), wireless communications, automotive technology, food, energy and the Internet. The patents will be grouped in 68 blocks ranging in estimated value from $100,000 to more than $5 million.

The Blackberry Case

2006-03-02T18:03:00.000-06:00

In case you are behind the times, here is a very nice summary of the Blackberry litigation, courtesy of IEEE Spectrum Online.

A Little Seed History

2006-03-02T17:55:00.000-06:00

The Delta Farm Press provides this fascinating article on seed history in the U.S., including the Patent Plant Act.

With those events, the only thing remaining to get the seed industry going was legal protection. “The first federal law aimed at protecting agricultural intellectual property was the Plant Patent Act (PPA) of 1930. At the time that passed, and in the understanding of science of the day, it was believed that plants couldn’t be patented.
***
So when the PPA was passed it was limited to asexually-reproducing plants (those that reproduce by cutting or grafting). It wasn’t until 1970 that the Plant Variety Protection Act (PVPA) was passed basically to fill a gap left by the PPA. The Plant Variety Protection Act was aimed at sexually-reproducing plants and it granted patent-like protection to them.

More recently, utility patents were granted for living organisms and plants. The Supreme Court has confirmed that with advancements in technology plants and living organisms can be patented.

No Technological Arts Criteria

2006-03-02T17:46:00.000-06:00

Here's a nice article from Canada discussing some recent USPTO decisions, and further criteria for patentable subject matter. In part,

Two developments in the United States may mean that it will be easier to patent business methods, software and similar types of inventions. In Ex parte Lundgren, the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences ruled that U.S. law does not require that an invention meet a "technological arts" criterion in order to be patented. USPTO then released a set of interim guidelines for USPTO examiners to use in evaluating inventions. The guidelines require that an invention accomplish a "practical application" in order to be patentable. These developments appear to broaden the scope of patentable subject matter, although the subject matter must still meet the stringent "novelty" and "obviousness" standards in the United States.

The High Media Patent

2006-03-01T16:43:00.000-06:00

Another overbroad patent, perhaps? This article from Information Week describes the lay of the land on a patent which lovingly enough was granted on Valentine's Day:

A patent has been granted to a relatively unknown California Web-design firm for an invention its creator says covers the design and creation of most rich-media applications used over the Internet. The patent holder, Balthaser Online Inc., says it could license nearly any rich-media Internet application across a broad range of devices and networks.

Potentially tens of thousands of businesses--not only software makers employing its business processes but companies offering rich-media on their Websites--could be subject to licensing fees when they use rich-media technology over the Internet.

***

The patent, No. 7,000,180 or 180 for short, is entitled Methods, Systems, And Processes For The Design And Creation Of Rich-Media Applications Via The Internet. It contains 83 claims that encompass a wide range of rich-media Net application methods, systems, and processes.

Overload at the USPTO

2006-03-01T16:38:00.000-06:00

This PC World article reiterates yet again the...lack of quality, shall we say, in some recently granted patents, and the reasons behind it:

The patent office faces a perfect storm: According to USPTO commissioner John Doll, the greatest number of new patent applications are for business processes or computer hardware and software innovations. And the former is one of the most difficult types of patent to evaluate.

"We do not have the ability to examine all the new cases that are being filed, and that's especially true in the high-tech areas," Doll says. The USPTO started 2005 with a backlog of 500,000 new patent applications, and ended the year with a backlog of nearly 600,000.

Examiners are supposed to evaluate applications against "prior art"--similar, earlier inventions. But in areas like software, "it's impossible for everyone to have their hands on every relevant piece of art" in the given time, says Kappos.

Thanks for the Whip Cream

2006-03-01T16:30:00.000-06:00

Robert Rich, inventor of frozen non-dairy topping, died on February 15th, aged 92. His obituary is an fun read into an area of food I never thought much about:

Few revolutions have been made with a hand-beater. But Mr Rich's was one. Before he began to experiment with flaking and precipitating soyabeans, whipped cream was a hit-or-miss affair. It would not keep, especially in the humid South. Nor would it freeze. Over-beating produced a buttery mess, and ambitious decorations sank gradually into gloop. To top it all, in wartime, heavy whipping cream was a banned substance. All available milk was needed fresh for the people, or dried and condensed for the troops. To dream of an éclair or a cream puff, even of a modest dollop nestling a cherry or topping off a sundae, was close to a traitorous act.

The Next American Idol?

2006-03-01T16:21:00.000-06:00

It seems that Simon Cowell is up to his old tricks, with a new show airing on ABC on March 16 called "AMERICAN INVENTOR, The Greatest Search For America´s Next Big Invention." It is described as:

AMERICAN INVENTOR, the embodiment of the ultimate American dream, will uncover the hottest new product and make one struggling inventor´s dream come true. With one million dollars at stake, AMERICAN INVENTOR will celebrate the best in homespun American ingenuity.

I'm a huge reality TV fan, and think this could prove to be interesting. Article here.

I'm Back!

2006-03-01T16:19:00.000-06:00

After a much too long hiatus, months of traveling all over the country for depositions, and much too much litigation, I am happy to announce that The Patentability Blog is back.

Stay tuned.

Breathing Underwater

2005-06-06T12:06:00.000-05:00

This article discusses a cool new invention for all you scuba divers out there...

Future Inventors of America

2005-05-21T22:45:00.000-05:00

Kids invention competition in San Diego:

I like this one:

Flip-flops were augmented with a cardboard shield in the front to keep out dirt and sand.

But here's the full scoop:

"Inventions go as simple as a button on your clothes to more complicated than an atomic submarine," said Martin Teachworth, a physics teacher at La Jolla High School. He organized students to staff the two-day display of projects, held Wednesday and yesterday in the Scottish Rite Center in Mission Valley. About 10 percent of all entries come from La Jolla High. This was the 19th year of the event. It began after Jo Anne Schaper, then a science teacher in the San Diego Unified School District, heard a presentation by the U.S. Patent and Trademark Office lamenting that fewer Americans were getting patents compared with foreigners and urging efforts to stir students' interest. Schaper persuaded the district to let her start the competition.

The 104 Year Old Patent Attorney

2005-05-21T22:42:00.000-05:00

Article here:

This weekend, The Franklin Pierce Law Center in Concord, N.H., will award C. Yardley Chittick, the nation's oldest patent attorney, with an honorary degree.

Apologies

2005-04-20T21:32:00.000-05:00

Things have been a little hectic and busy in my IP litigation world lately -- I'll hopefully get back to posting more regularly sometime soon, so keep checking back!

No Crustless PB&J For You!

2005-04-12T23:51:00.000-05:00

The Federal Circuit came through. Smuckers' method for crustless PB&J is not patentable. Article here, and in part:

The U.S. Court of Appeals for the Federal Circuit on Friday rejected an effort by J.M. Smucker Co. to patent its process for making pocket-size peanut butter and jelly pastries called "Uncrustables."

The Patent Review Process

2005-04-12T23:46:00.000-05:00

Is it flawed?

The USPTO says no.

Who Invented Baseball?

2005-04-12T23:41:00.000-05:00

This article from The Saratogian ponders the issue. In part:

In 1907, a special baseball commission recognized Doubleday as baseball's founder based on the testimony of a boyhood friend named Abner Graves. 'It's all part of American mythology and folklore, like Paul Bunyan and John Henry,' said Jim Gates, library director at the National Baseball of Fame & Museum in Cooperstown. 'But folklore is an important part of the American story.'

PB&J Crustless Sandwiches

2005-04-06T23:25:00.000-05:00

The argument happened yesterday in front of the Federal Circuit. Is this patentable? Should the patent really be extended? We shall see. The USPTO said no way.

Google Google Google

2005-04-06T23:23:00.000-05:00

Google's latest patent, a "Information Retrieval Based on Historical Data" is analyzed here at the SEO Blog. In part:

Google is in the midst of sweeping changes to the way it operates as a search engine. As a matter of fact, it isn't really a search engine in the fine sense of the word anymore. It isn't really a portal either. It is more of an institution, the ultimate private-public partnership. Calling itself a media-company, Google is now a multi-faceted information and multi-media delivery system that is accessed primarily through its well-known interface found at www.google.com .

Tivo's Patent Portfolio

2005-04-06T23:18:00.000-05:00

I want Tivo. Desperately. But I haven't gotten it yet. I guess the main reason is that I'm afraid if I get it I will never leave my house again...

But Tivo's patent portfolio is ridiculous. See this article. In part:

The DVR pioneer has been amassing a patent portfolio to boost its licensing business and fend off new entrants to the DVR market. However, TiVo hasn't yet been able to turn its intellectual property into significant financial success.

Early last month, TiVo was granted five patents from the U.S. Patent and Trademark Office. The company has 76 patents, with 106 still pending.

Jurassic Park

2005-03-29T23:51:00.000-06:00

This article states:

The US Patent Office issued Patent # 6,872,552, "A Method of Reconstituting nucleic Acid Molecules" today to Burt D. Ensley, Ph.D, Chairman of MatrixDesign, and CEO of DermaPlus, Inc. The patent covers methods for recovering and reconstituting genes from "degraded" DNA samples, and could allow scientists to reassemble everything from prehistoric, extinct animals to unsolved crime scenes.

****
By reconstituting nucleic acid molecules that have been degraded but still contain useful information scientists at MatrixDesign are able to create a template from which to multiply the genetic material. That process is repeated until the genetic material is substantially representative -- at microscopic levels -- of the species from which the degraded sample was obtained.

Is eBay Safe?

2005-03-29T23:48:00.000-06:00

Hmm...this article indicates that things might not be going well for MercExchange in re-exam. But again, who knows what the real story is until all is said and done.

March Madness! Patenting Sports Moves

2005-03-29T23:38:00.000-06:00

Can you patent a sports move? What about Michael Jordan's slam dunk, Pete Sampras's serve, or Tiger Woods' swing? After all, wouldn't this be a great advantage for certain athletes? If Sampras had patented his serve, where would Andy Roddick be right now? And for every little Mary or John out there who tries to duplicate what their favorite sports celebrity does, a patent infringement complaint could land on their doorstep. Or a touchdown or slam dunk in the big game could be forfeited due to patent infringement.

The quick answer is sure, why not patent a sports move? If a sports move meets the patentability requirements of utility, novelty, and nonobviousness, then why shouldn't it get patent protection?

The longer answer is maybe and is it really necessary? There is a surprising amount of debate on the issue. After all, a sports move would be a process, procedure, or method correct? If it is useful, novel, and nonobvious, then it should qualify for patent protection, correct? Then why aren't they? Or, why hasn't this caught on? It is not unknown for a sports move to gain patent protection. Dick Fosbury, the first person to go over a high jump bar backwards revolutionized the sport of high jumping, although he was laughed at at the time. Now all high jumpers use his method. It wasn't patented, but in retrospect is was a big deal at the time. Imagine if it had been patented. Where would the high jump be today? Imagine if Michael Jordan had patented his slam dunk. Conversely, Nolan Ryan did receive a patent on his pitch, describing his pitch in excrutiating detail in his patent application.

The biggest place where sports moves see problems is the nonobvious requirement. Many people have slam dunked a basketball, so why is Michael Jordan's method so special? Many people have swung a golf club and won the Masters, so why is Tiger Woods' swing so special? And again, many people have served a 120+ mile per hour serve in tennis, so why is Pete Sampras' serve so special? Each of these examples show methods that have been improved upon in some way, to make them better than what existed before. Obvious? Maybe.

The other big problem is the time related statutory bar requirements for patentability. Public use is a big one. You can't practice your "move" in front of your teammates or that's public use. That might create some problems. Athletes would have to make sure and file that patent application pretty quickly so they don't lose their chance at patentability. Is patentability really the first thing on their minds? Doubtful.

Then, of course, there are the policy reasons behind not patenting sports moves. Is athletics really advanced by receiving patent protection for specific sports moves? For example, how do you enforce a sports moves patent? How do you get lost profits or reasonable royalties from the use of a sports move? How do you prove that "but for" the use of your move, the other player would not have achieved their financial success? How can you prove with any certainty the value of the loss of a game? How do you prove irreparable harm? And who would own the patent? The athlete (an employee of the team?) or the team? And is this really the focus of sports teams?

And what about the public? The public thrives on competition in their sports teams, New York Yankees aside. If one team has a patent on a great slam dunk or passing play, then what of competition? Part of the excitement of sports is seeing teams come up with new plays and new ways of playing the game, and seeing other teams catch on to it and improve the process. Wouldn't patenting sports moves hinder that and ruin it for the public?

At any rate, I don't know the answer. I'm against patenting sports moves, but it is an interesting question to ponder.

And a series of law review articles on this topic:

Kukkonen, C A Be a Good Sport and Refrain from using my Patented Putt: Intellectual Property Protection for Sports related Movements (1998)80 J. Pat. & Trademark Off. Soc'y 808.

Smith, J A It’s Your Move- No its Not!: The Application of Application of Patent Law to Sports Moves (2000) U. Colo. L. Rev. 1051.

Weber, L J Something in the Way She Moves: The Case foe Applying Copyright Protection to Sports Moves (2000) 23 Colum.-VLA J.L. & Arts 315.

Patent Chronicles

2005-03-24T21:28:00.000-06:00

Patent Chronicles is a great blog focusing on software and business method patents and authored by a prior art searcher. Check it out!

Edited: Authored by a current prior art searcher! My bad.

Top Universities Receiving Patents

2005-03-22T21:11:00.000-06:00

The USPTO released a list of the top universities receiving patents:

The Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the top 10 U.S. universities receiving the most patents during calendar year 2004. Listed below are the 10 universities receiving the most patents for inventions in 2004, along with their 2003 ranking. The University of California tops the list for the 11th consecutive year.

Full press release here.

Patent Trolls?

2005-03-22T21:06:00.000-06:00

This article, discussing the recent conference titled "Patent Trolls and Patent Property Rights" begins:

Intel Corp's David Simon, chief patent counsel for the world's biggest computer chipmaker, recalls when he used to get only about five letters a year from people accusing Intel of patent infringement and demanding cash.

That was back in 1997. Now the Santa Clara, California-based company gets that many letters in a week, Simon said in an interview.

He even received one from the owner of a patent for a drill used to make a hacksaw blade.

The Impossibility of Patents

2005-03-22T21:03:00.000-06:00

This article from InformationWeek begins:

Either patents are the first line of defense for the garage-based inventor, or they're tools of the ruling class intended to block innovation and maintain lucrative monopolies. Either the U.S. Patent and Trademark Office is spinning wildly out of control, or it's stretching to meet the demands of a changing business landscape. Both sides of the argument have their adherents, and both are simplistic and flawed. Patents are a fact of business life, one that many companies have to come to terms with, whether it's through litigation, settlement, or something as drastic as what eBay may be facing--a change in business model. True to form, Microsoft wants to be both patent powerhouse and arbiter of change.

Among other things, the recent eBay lawsuit is discussed.

Top Patent Prosecution Firms

2005-03-22T21:01:00.000-06:00

Article and rankings here:

PatentRatings, LLC, a leading patent research and rating service, today released its annual list of the top U.S. patent law firms for 2004. The rankings are based on PatentRatings' proprietary IPQ(TM) patent quality scoring system, which has been proven in blind studies to have statistically significant correlation to patent quality and potential value.

The Helicopter

2005-03-18T21:13:00.000-06:00

The inventor of the helicopter's son gave a speech at Utah Valley State College on Wednesday, where he discussed the invention of the helicopter. An article about the speech is located here, and in part, the article states:

Throughout it all, he explained the role his father played.

"There's a secret to this that the birds have been trying to teach us for a million years," he quoted his father concerning the invention of helicopters. "It is far more intelligent to stop and then land than it is to land and then try to stop."

Sikorsky's father was a Russian-born scientist who started the idea of the helicopter as a student in Paris. After building his first two models in 1909, and failing to get either one off the ground, Igor Sikorsky turned his attention to fixed-wing aircraft.

*****

It wasn't until 1939, 30 years after his first attempt, Igor Sikorsky made the worlds' first successful helicopter.

"Anything, anything that one man can imagine, other men will later make true," Sikorsky said, quoting his father.

African American Inventors

2005-03-17T18:51:00.000-06:00

I found a fairly recent book (released last April) discussing the role of black inventors, called The Inventive Spirit of African Americans: Patented Ingenuity, by Patricia Carter Sluby, an ex patent examiner.

Here is an article about the book. In part, the article states:

Ms. Sluby's book grew out of her job as an examiner at the U.S. Patent and Trademark Office. After being asked by an administrator there to put together a list of African American inventors, she began searching back through history for names. She was surprised by what she found.

"The African American inventor has invented in every subject any other person has invented in," Ms. Sluby says. "From agriculture to games to computers, they have turned around industries, bringing us a better level of living."

Design Patents

2005-03-16T21:23:00.000-06:00

Although the requirements for design patents differ from that for utility patents, and aren't as common in litigation, no patentability blog would be complete without at least a mention of these types of patents. I've found some articles that discuss the basics:

The USPTO FAQ About Design Patents:

In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics.

Design Patents, from BitLaw:

An application for a design patent is much simpler than that for a utility patent. The specification is short and follows a predefined form. Only one claim is permitted, and it also must follow a specific form. The drawings in a design patent are similar to those in a utility patent, except that design patent drawings are created to show the ornamental features of the invention rather than its utilitarian aspects.

What Are Design Patents and When Are they Useful, from the Journal of the Minerals, Metals, and Materials Society -- (note that this is a 1993 article, but it still provides some good information on design patents):

A design patent may be issued for ornamental configuration, surface decoration, or both. It must be issued for an article, however. It is also important that the design be repeatable. For example, in a case where a company had a unique method for applying a decorative coating to wallpaper to create a cloudy appearance, a design patent was refused. The basis for the refusal was that the design was not repeatable. Protecting all designs created by the process would have essentially protected the decorating method itself. Methods cannot be protected by design patents.

You've Seen the Commercials

2005-03-16T21:09:00.000-06:00

And likely you recognize the tagline "I believe in inventing things that work." These words are spoken by James Dyson, who developed the bagless vacuum cleaner. And I tell you what, I know what he's talking about when he pulls out that dusty, dirty filter from one of his competitor's vacuum cleaners during the commercial. I desperately need a Dyson.

At any rate, if you build it, they will come, apparently. Here is an article about his success.

Blame Canada!

2005-03-15T22:42:00.000-06:00

Just kidding.

But here's a blog you might want to check out:

Now, Why Didn't I Think of That? A patent, trade-mark, and copyright blog, by Sander Gelsing.

A Sticky Alternate Method

2005-03-15T22:20:00.000-06:00

Here is an interesting article about a recent lawsuit 3M filed and lost, regarding its famous Post-it Notes patent. What's interesting about it is not the verdict (at least for this particular blog), but the covenant not to sue that 3M had agreed to in 1987, and the basis for it:

3M had promised not to sue Barton Nelson back in 1987. As long as Barton Nelson didn't change the way it put adhesive on custom-printed, semi-sticky promotional products, 3M wouldn't ask a court to decide whether Barton Nelson's products violated 3M's Post-it Note patent.

Both companies' notes can be easily unstuck from an adding machine or typewriter and restuck to a file folder, but each creates the "repositional" effect by a different method.

3M's adhesive contains microspheres that prevent Post-it Notes from sticking too firmly to a surface. Barton Nelson created its adhesive, CFO Bart Nelson said, and applies it in small globs with a textured roller.

"It was an aggressive adhesive, but the small-spaced dots and islands made it repositional," Nelson said.

Another Amazon Patent Controversy

2005-03-15T22:04:00.000-06:00

Folks, Amazon just can't win. First the infamous "one-click patent" and now an uproar of negativity and accusations surrounding their new patent, which is "a system and method of determining the age of an item recipient, such a gift recipient." Again, we can see that the USPTO's focus is utility, novelty, and non-obvious -- not possible social or moral implications of a patent.

According to this article:

[Karen Coyle, a spokesperson for Computer Professionals for Social Responsibility] explained that the system outlined in the patent allows Amazon to track the age-appropriateness of gifts to a recipient over time in order to make suggestions for future gifts.

Gathering information about children for an online retailer like Amazon can be dicey because that practice is regulated by federal law, the Children's Online Privacy and Protection Act, or COPPA.

"That law states that you cannot gather personal identification information about a child without a parent's permission," Coyle said. "It looks like there's a good chance that if they were to implement this patent, which they claim they haven't, that they could come up against U.S. law."

Software Patents = Telegraph?

2005-03-15T21:55:00.000-06:00

Phil Albert, a LinuxInsider columnist and partner at Townsend & Townsend and Crew LLP raises an interesting analogy on the software patent debate in this article:

Another way to frame the debate is to look at a relevant example from history: the Pony Express. The Pony Express was started in 1860. Teams of fast and daring horseback riders carried mail and packages across the U.S. within 10 days, which at the time was a remarkable achievement.

Unfortunately for the Pony Express riders, 18 months later Samuel Morse launched the telegraph. The telegraph was a creatively disruptive innovation, leading to even more amazing inventions such as the telephone and the Internet. The advent of the telegraph meant that the Pony Express became obsolete and all of its workers lost their jobs.

Should the telegraph have been put on hold because of its negative impact on the Pony Express?

Some Light Laser Reading

2005-03-14T14:59:00.000-06:00

In light of Charles Townes' recent $1.5 million dollar prize, a couple of books on laser technology:

First, How the Laser Happened: Adventures of a Scientist by Charles H. Townes:

In How the Laser Happened, Nobel laureate Charles Townes provides a highly personal look at some of the leading events in twentieth-century physics. Townes was inventor of the maser, of which the laser is one example; an originator of spectroscopy using microwaves; and a pioneer in the study of gas clouds in galaxies and around stars. Throughout his career he has also been deeply engaged with issues outside of academic research.

And another viewpoint, Laser: The Inventor, the Nobel Laureate, and the Thirty-Year Patent War, by Nick Taylor:

In his latest effort, the prolific Taylor (John Glenn; In Hitler's Shadow) recounts the compelling life of Gordon Gould, a young scientist who hit upon how to build a laser in 1957. Over the 30 years he spent fighting for the patent, he neither finished his Ph.D. nor attended conferences to raise his scientific credibility. During that time, he butted up against Charles Townes, who won the Nobel Prize in physics for discovering the "optical maser," as he called it, even though courts later ruled against the U.S. patent office, arguing that Townes's original design wouldn't have worked.(Under U.S. patent law, an inventor need not reach the patent office first to claim a patent, but only show priority in writing down an idea that can be realized by someone skilled in that field. Gould fortunately had had his original notebook notarized.)

Plant Patents

2005-03-09T21:23:00.000-06:00

Everything you ever wanted to know (well, the basics, anyway) about plant patents:

Questions and Answers About Plant Patents from Christie, Parker & Hale:

A plant patent is a grant by the government to an inventor (or his heirs or assigns) who has "invented" or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. This grant gives the plant patent owner the right to exclude others from asexually reproducing the plant or selling or using the plant so reproduced. The purpose of plant patents is to provide incentive for achievement in plant breeding, gardening, and horticulture.

General Info About 35 U.S.C. 161: Plant Patents from FindLaw:

This publication provides a basic and understandable overview of plant patents. It will help prospective plant patent applicants to:
Identify what types of plants are patentable under the provisions of 35 U.S.C. 161.
Present the legal requirements for attaining a plant patent in terms which can be understood by attorneys, plant breeders, growers and gardeners.
Present the formal requirements of an application for plant patents.
Assist in gathering and organizing sufficient information for preparation of a plant patent application.
Summarize the typical steps which are performed by the Patent and Trademark Office.
Indicate where further information can be attained.

Frequently Asked Questions from PlantPatent.com:

A plant patent relates to a living plant which as a product of nature obviously cannot be "made" or "manufactured." In a utility patent (regular patent), the grant confers "the right to exclude others from making, using, or selling" the invention; in a plant patent, the grant confers "the right to exclude others from asexually reproducing the plant or selling or using the plant so reproduced, and parts thereof, as described above.

Cavity Filling Toothpaste

2005-03-09T21:09:00.000-06:00

Millions of people around the world who hate going to the dentist are cheering right now...Japanese inventors have developed a cavity filling toothpaste:

A toothpaste has been developed that can rapidly and seamlessly fix little cavities without need for drilling.

Dental paste of synthetic tooth enamel could revolutionise treatment of tiny early lesions, says the study published today in the journal Nature by Dr Kazue Yamagishi, of the FAP Dental Institute, Tokyo.

More Software Patent Controversy

2005-03-09T21:01:00.000-06:00

Over at the O'Reilly Misinformation Weblog, Bruce A. Epstein posts his thoughts on this article, relating to software patents in the EU. It begins:

Like almost everything I've read on the web in regard to patents, the preceding article is full of inaccuracies and opinion masquerading as fact. Let's not throw the baby out with the bath water. A poorly implemented patent system is bad (agreed!). But the solution is to improve the patent system, not simply discard software patents. (Disclaimer: I have a patent pending on some online collaborative database software that I've designed. The patent wouldn't cover all databases or online collaboration. It is more narrow than that, but the details aren't important for the purposes of this discussion.)

Amazon: Wrap Dolls in Pink

2005-03-09T15:12:00.000-06:00

Gifts such as dolls should be wrapped in pink paper. Whether it is obvious or not, Amazon now holds the patent on the idea.

Amazon.com has been granted a U.S. patent on "Methods and systems of assisting users in purchasing items," including the use of gift-buying habits to determine the age, gender and birthday of gift recipients, according to a filing Tuesday with the U.S. Patent and Trademark Office.

Articles here and here.

Da Vinci's Inventions

2005-03-09T10:05:00.000-06:00

Working models of 62 of Leonardo Da Vinci's inventions are on display at the Vienna Art Centre until May 29. Article here.

History of the USPTO

2005-03-06T22:12:00.000-06:00

Here is an article titled "A History of the United States Patent Office," by Jason O. Watson. In part:

After several revisions and additions, various elements of both Hamilton's and Jefferson's bills resulted in the Patent Act of 1793. This Act formally created a Patent Board, comprised of the Secretary of State, Attorney General, and Secretary of War. The responsibility of the issuance of patents belonged to the Department of State (at the time under Jefferson). A patent would be issued if two-thirds of the Patent Board determined the invention as "sufficiently useful and important."11 Oftentimes the various cabinet members were not experts in any specific art or scientific field. Likewise, many were not familiar with science and technology in general (Jefferson, of course, was an exception). These men often had other pressing duties that they were occupied with. As a result, many patents were issued that perhaps should not have been while other worthy patent applications were neglected.

Funny how things change...

Pop Quiz!

2005-03-06T22:03:00.000-06:00

How much do you know about patents? Here's a patent pop quiz, from Brown & Michaels. It's a tough one, but the answers include lots of fun patent trivia.

Who Invented Television?

2005-03-06T21:50:00.000-06:00

A hotly contested issue! Could it be one invidual, two, or a combination of them both? According to this article:

The credit as to who was the inventor of modern television really comes down to two different people in two different places both working on the same problem at about the same time: Vladimir Kosma Zworykin, a Russian-born American inventor working for Westinghouse, and Philo Taylor Farnsworth, a privately backed farm boy from the state of Utah.

“Zworykin had a patent, but Farnsworth had a picture…”

And here's another article:

Some historians have gone so far as to suggest that Farnsworth and Zworykin should be regarded as "co-inventors." But that conclusion ignores Zworykin's 1930 visit to Farnsworth's lab, where many witnesses heard Zworykin say "I wish that I might have invented it." Moreover, it ignores the conclusion of the patent office, in its 1935 decision in Interference #64,027, which states quite clearly "priority of invention awarded to Farnsworth."
****
But close examination of the stories beneath the written record reveals a far more compelling story: In fact, there was one inventor of electronic television. Video as we now know it first took root in the mind of Philo T. Farnsworth when he was fourteen years old, and he was the first to successfully demonstrate the principle, in his lab in San Francisco on September 7, 1927. If you need to fix a date on which television was invented, that's the date.

And Speaking of Thomas Edison...

2005-03-06T21:38:00.000-06:00

Did he really invent everything we think he invented? Some people don't think so. Full article here.

“He was a thief — a pirate,” alleges Walt Zaczeck, a historian in Niagara Falls, N.Y.
Zaczeck believes that Edison took credit for many inventions his lab workers found first. “He hired people to work for him and he would use their ideas and then get patents for them,” Zaczeck said. “And that’s why he’s considered a great inventor?"

*****

At 59, Tesla was informed that he was to be awarded the Nobel Prize for Physics along with Thomas Edison. Edison refused to share his award with Tesla, and the award was given to another scientist.

The Light Bulb

2005-03-06T21:34:00.000-06:00

Here is an article titled "Ten Things You May Not Know About Lightbulbs." Number one on the list?

1. The incandescent light bulb was first patented by Joseph Swan in New Castle, England, then by Thomas A. Edison in 1879. Most historians believe that Edison perfected the light bulb, but that he didn’t invent it.

Did Bell Really Invent the Telephon?

2005-03-06T21:30:00.000-06:00

Alexander Graham Bell v. Elisha Gray. This article discusses just how close the patent race was for invention of the telephone. In part:

Presumably, Bell’s device as described in his patent application would not have operated properly whereas Gray’s design as presented in his caveat would have been successful. (Given his reluctance to file a patent application, Bell might have realized the problem with his design.) Moreover, Bell’s first successful transmission of a human voice on March 9, 1876, relied on the use of acid as a liquid transmitter, similar to the transmitter envisioned by Gray but not included in Bell’s patent application.

Bell was awarded the patent rights to the telephone, partly because of the differences between a patent application and a caveat, and the corresponding conviction that he was the first to invent the device. The U.S. patent system awards those who are first-to-invent and not those who are first-to-file, and so Bell’s victory was not simply the result of an earlier filing time. And Bell also was the first to successfully demonstrate his invention.

What Kids Want to Invent

2005-03-03T16:54:00.000-06:00

This is kind of a cute article from The Flint Journal, where kids discuss what they would like to invent. Although there may be some patentability issues with many of these inventions, it's a humorous read. The top picks seem to be money, homework, and chores machines/robots, but there are some gems:

Sarah Doty, 7 I would invent a bird that makes my bed and does my chores.

Jaycie Montney, 8 My invention is Popsicle's that don't melt. Take juices and put it in liquid nitrogen. It will last for a week and a half, or more.

Andrea Clark, 6 I'd like to invent a big bouncy bubble. That has a door that goes into it, and it has a lock on the inside. The lock is so you don't fall out. It would bounce really high!

Chelsea Schwerin, 8 Wow! I'm an inventor! If I could invent something, I would invent a friend detector. I would invent it so that if you needed a friend, you could go to places and figure out which people are nice and which are mean and find a friend.

Ta'Nia Barnes, 11 I would like to invent a machine that would stop people from killing people and a machine that would help everybody have an education and a job.

Timothy Waite, 7 If I invented a machine, it would turn us small. I could buy me and everyone toys. I like toys.

Derrick Miller, 12 I'd like to invent a machine that would make cool clothes. The clothes would not only be cool but awesome, too.

Nick Bednark, 7 If I could build an invention, I would rebuild the Titanic. It would be 100 times thicker than last time. It would have a two-way radio and 100 lifeboats. Workers on my Titanic would be trained to go in the lifeboats. There would also be motors on the lifeboats.

Adam Bartholomew, 7 I would invent a toy that had the head of a toy camel. Also, it would have the body of a toy army man. Also, the toy would have the legs and tail of a Siberian tiger.

Wade Tinnin, 11 I'd like to invent a machine that makes hamsters. It will make hamsters so my mom will let me get one. She said I have to buy it myself. So if I had a hamster machine, I could get one for free.

Is This The Same Re-exam?

2005-03-03T16:44:00.000-06:00

I suppose it all depends on how you spin it. Can you determine who really "lost" in this re-exam?

Visto, whose patent was challenged, announced:

Visto Corporation, a leading global provider of secure push email, today announced that the United States Patent & Trademark Office has upheld a majority of the claims contained within Visto's U.S. Patent No. 6,085,192 in the re-examination of that patent requested by Seven Networks, Inc. After considering Seven's request and assessing the merits of the patent, the Patent Office determined in its first office action that at least 15 of the patent's 25 claims are valid. This includes the claims at issue in Visto's ongoing patent infringement litigation against Seven in federal district court in Marshall, Texas.

And Seven, the opposing party announced:

Today, SEVEN announced that the United States Patent and Trademark Office ("PTO") rejected the base claims of Visto Corporation's US Patent 6,085,192. After conducting its review, the PTO found that all of the independent claims of the '192 Patent were unpatentable in view of prior art references asserted by SEVEN.

The Lone Inventor

2005-02-28T21:35:00.000-06:00

This article from Fortune discusses the trend of companies looking outward to entrepreneurs and inventors for their innovation needs:

Corporations have outsourced a fraction of their R&D for years, but today their dependence on entrepreneurs for innovation is unprecedented. During the past three years P&G has cut in-house R&D spending from 4.5% of sales to 3.5%, while increasing the share of ideas and products it gets outside the company to 35% from 20%; its goal for the process, called Connect and Develop, is 50%.

Apple Macintosh Inventor Dies

2005-02-28T21:32:00.000-06:00

This article from PC Pro discusses the life of Jeff Raskin, who is credited with inventing the Mac for Apple:

Raskin became a strident critic of Apple and Mac OS X in particular. In an interview with MacUser last year, he said, 'Mac OS X, from a user's point of view, has become a morass of obscure detail. Increasingly, we are sent to Terminal to find some piece of data or do some task, and users have to become Unix hackers. The software is bloated, under-documented, and constraining to developers. The old GUI has not scaled well, and Apple tries to fix it by adding, and adding, and adding instead of
rethinking. It is gone from insanely great to insanely gross.'

Intermittent Windshield Wiper Inventor Dies

2005-02-28T21:28:00.000-06:00

This article from the Washington Post discusses the life and court battles of Robert Kearns, inventor of the intermittent windshield wiper:

From a basement in Detroit, where he devised his invention, to Gaithersburg, where he moved in the 1970s, Kearns carried his lonely fight all the way to the Supreme Court, one man against the might of the industrial world and a patent system he believed had let him down.

Inhibiting Innovation?

2005-02-28T21:25:00.000-06:00

This commentary from Tech News World questions whether software and genetic patents are actually inhibiting innovation:

The question arises, if a company can crack the genetic makeup of rice and patent it, control its use and for all intents and purposes, own it, what then will happen with all these patents on human genes? Will it mean that in being born, we are infringing on a number of patents -- using the genetic code without a license?

Offer for Sale Must Be For the Patented Invention

2005-02-28T21:12:00.000-06:00

Spartan Corp. v. United States, No. 03-5169, Federal Circuit, February 28, 2005

In this case, the Federal Circuit reiterated the requirements of a "commercial offer for sale" (the first prong of the Pfaff test) under the on-sale bar:

While the Supreme Court has not explained what is necessary for a "commercial offer for sale," we have held that two elements are necessary. Namely, a court must find that (1) there was a "commercial offer"; and (2) that offer was for the patented invention. Scaltech, Inc. v. Retec/Tetra, L.L.C., 269 F.3d 1321, 1328 (Fed. Cir. 2001). (emphasis added).

Here, Spartan had submitted an Engineering Change Proposal prior to the critical date. Interestingly, both parties had agreed that was was submitted in the ECP was not the patented invention. There was no evidence that Spartan had offered for sale anything other than what was listed in the ECP. Because the subject matter of the offer for sale must anticipate the claimed invention, the Federal Circuit reversed and found that 102(b) had not been violated because it failed the first prong of the Pfaff test.

Tesla: Master of Lightning

2005-02-24T21:51:00.000-06:00

This article from Popular Mechanics discusses:

A visionary genius with more than 700 worldwide patents to his name, Nikola Tesla (1856-1943) was one of the greatest inventors of the 20th century. He was also one of history's most controversial and misunderstood scientists. So much so, Tesla has taken on an almost mythical status as a cult hero, and is the focus of conspiracy theorists.

Apparently there was a special on PBS about his life tonight, but since I'm a little late on the uptake today, let's hope it gets aired again.

(Right now there is an annoying ad on the Popular Mechanics web site with a buzzing fly, so if you click the link above, you might want to have the sound off in case the ad is there to stay.)

And a "teaser" article about Tesla from Scientific American.com. You have to be a member to read the entire article, published in their March 2005 issue.

If you still can't get enough, here is the Encyclopedia.com entry on Tesla, which includes many more links.

Edited to Add: Here's a link to titles and numbers of all Tesla's patents from Jim Bieberich.

Gene Patents

2005-02-24T21:30:00.000-06:00

Here are some articles discussing the history, the good, and the bad about gene patents.

From The Human Genome Project, Genetics and Patenting.

From The Duke Law & Technology Review, The Fate of Gene Patents Under the New Utility Guidelines.

From Genetic Engineering News, Gene Patent Guidelines "Magna Carta" of BioTechnology.

From the English Discourse web site, The Gene Patent Question: Who Really Owns Their Body?

From The Stanford Report, Issues Surrounding Gene Patenting.

More on Software Patents

2005-02-24T11:19:00.000-06:00

Here is a site with a lot of links, papers, and articles relating to software patents, including The Letters of Thomas Jefferson stating no patents on ideas. Most of the views and articles linked here are opposed to software patents, so I'm going to see what I can find in support of software patents. Strangely enough, it seems like most people hate them, or those who don't mind them aren't passionate enough about it to create entire web sites about the issue.

Edited to Add: I just found a very nice (and fairly long) discussion of the debate on software patents at Answers.com, which includes the varying positions out there on software patents.

Need to Find a Patent?

2005-02-23T22:16:00.000-06:00

This is an wonderful link, which allows you to easily search for patents (and patent stuff) all over the world. Put it in your Favorites! Thanks to Bill Heinze at I/P Updates for the heads up.

The Amazon One-Click Patent

2005-02-23T21:54:00.000-06:00

I don't need to write about this infamous patent, because enough has already been said about it. After all, whenever anyone brings up software patents, this is the first one mentioned to show the outrage (!) at allowing these types of patents.

However, in my random Internet searchings this evening, I discovered that Tim O'Reilly's web site offers a nice archive of history (and controversy), including interviews with Jeff Bezos, of this Amaz(ing) patent.

Cure for the Red Tide?

2005-02-23T21:31:00.000-06:00

Backyard inventor Bob Rigby says he's found what scientists have been looking for for a half century: a chemical to control red tide, the algae that release toxins, killing fish and aggravating breathing problems in humans. Rigby won't divulge the formula for his secret potion, which he said kills the algae without harming fish or other marine life.

Article here.

eSpeed's Patent Fails Written Description

2005-02-23T21:24:00.000-06:00

Cantor Fitzgerald LP's patent for electronic bond trading, the subject of an infringement lawsuit with ICAP Plc, isn't valid, a jury ruled.

The federal court jury in Wilmington, Delaware, made the decision after 15 hours of deliberations following a two-week trial, saying that Cantor ``failed to provide adequate written description'' of the technology.

Articles here and here.

What Did You Search Before?

2005-02-23T21:14:00.000-06:00

Amazon subsidiary A9 had a patent application published yesterday by the USPTO:

On Tuesday, the United States Patent & Trademark Office published the Amazon.com subsidiary's patent application No. 2005003380. "Server architecture and methods for persistently storing and serving event data," filed in July 2003, describes A9's method of personalizing search results by including an individual's past searches and other behavior. The same application is on file in the European Union.

Full article here.

Patent and Trademark Institute of America

2005-02-17T21:54:00.000-06:00

Looks similar to Invent-Tech. Another inventor is having problems:

Steinberger said companies like PTI tell people what they want to hear and leave the truth to the fine print.

Bozeman's fine print read "The portfolio does not provide patent protection or any legal or patent advice." And "no promise or guarantee that the inventor will receive any profits, success, results or financial gain."

The Monopoly Machine

2005-02-17T13:36:00.000-06:00

An interesting read:

In our last column, Attorney Bruce Epperson described how Colonel Albert Pope, the "Rockefeller of Bicycles" manuvered in 1878 to acquire all the significant patents covering the basic features of the bicycle, including Pierre Lallement's 1866 "Improvement in Velocipedes," the first bicycle patent in the United States. This Week, in Part 2 of "The Monopoly Machine" we look at how the Colonel tried to use those patents to create a monopoly over the entire bicycle industry.

Diamond v. Chakrabarty and the Recent Human-Hybrid patent application

2005-02-16T17:21:00.000-06:00

In light of the Patent Office's decision, it is interesting to review some of the Supreme Court's language in the Diamond v. Chakrabarty case, where the Court held that a living organisms was patentable under 35 U.S.C. § 101. While the Patent Office rejected the monkey-human hybrid combination as being "too human" (and in fact stated in 1987 that it would draw the line at humans), it set forth no legal basis for doing so. Remember, "anything under the sun made by man" can be patented.

In Chakrabarty, the Supreme Court stated that it was Congress's place to legislate on moral issues and the Court's place to establish whether or not an invention fulfilled the requirements of the Patent Act:

To buttress his argument, the petitioner, with the support of amicus, points to grave risks that may be generated by research endeavors such as respondent’s. The briefs present a gruesome parade of horribles.

****

These arguments are forcefully, even passionately, presented; they remind us that, at times, human ingenuity seems unable to control fully the forces it creates — that with Hamlet, it is sometimes better “to bear those ills we have than fly to others that we know not of.”

It is argued that this Court should weigh these potential hazards in considering whether respondent’s invention is patentable subject matter under § 101. We disagree.

****

What is more important is that we are without competence to entertain these arguments — either to brush them aside as fantasies generated by fear of the unknown, or to act on them. The choice we are urged to make is a matter of high policy for resolution within the legislative process after the kind of investigation, examination, and study that legislative bodies can provide and courts cannot. That process involves the balancing of competing values and interests, which in our democratic system is the business of elected representatives. Whatever their validity, the contentions now pressed on us should be addressed to the political branches of the Government, the Congress and the Executive, and not to the courts.

****

Congress is free to amend § 101 so as to exclude from patent protection organisms produced by genetic engineering. …. Or it may chose to craft a statute specifically designed for such living things. But, until Congress takes such action, this Court must construe the language of § 101 as it is. The language of that section fairly embraces respondent’s invention.

In reading what the Supreme Court wrote twenty five years ago, it begs the question – what is different today? Shouldn't Congress be dealing with this, and not the USPTO? After all, if the monkey-human hybrid is useful, novel, and non-obvious, it meets the requirements for patentability as laid out by Congress. Is it really the USPTO's place to make moral judgments on what should be patentable subject matter?

Chimeras

2005-02-16T16:36:00.000-06:00

I have to admit that I am fascinated by the idea of chimeras. The very ghoulishness of it makes me want to read all I can about it -- the moral issues, the ethical issues, and the science issues. The USPTO's recent rejection of a patent on an animal-human hybrid caused me to want to do a bit of reading on the subject. Here's a sampling of some of the great articles out there about this topic:

Gods and Monsters:

ON APRIL FOOLS' DAY 1998, within hours of reading U.S. patent application No. 08/993,564, the Honorable Bruce Lehman did something no other commissioner of patents had done in the 200-year history of America's oldest government agency. He stepped before a cluster of microphones and announced that the patent would never be approved. No half-human "monsters" would be patented, Lehman declared angrily, or any other "immoral inventions."

Of Mice, Men, and In-Between:

In Minnesota, pigs are being born with human blood in their veins.
In Nevada, there are sheep whose livers and hearts are largely human.

In California, mice peer from their cages with human brain cells firing inside their skulls.

These are not outcasts from "The Island of Dr. Moreau," the 1896 novel by H.G. Wells in which a rogue doctor develops creatures that are part animal and part human. They are real creations of real scientists, stretching the boundaries of stem cell research.

Animal-Human Hybrids Spark Controversy:

But creating human-animal chimeras—named after a monster in Greek mythology that had a lion's head, goat's body, and serpent's tail—has raised troubling questions: What new subhuman combination should be produced and for what purpose? At what point would it be considered human? And what rights, if any, should it have?

There are currently no U.S. federal laws that address these issues.

What Is Too Human?:

Nevertheless, mixing human and animal genes and cells does pose some moral conundrums. First, consider the possibility of crossbreeding humans with other primates. There is some evidence that such mixing might succeed. Researcher J. Michael Bedford reported in 1977 that human sperm could penetrate the protective outer membranes of gibbon eggs. So far, from what we know, no one has attempted to create a human/chimpanzee hybrid. But would that be wrong?

Oliver The Mutant Chimp:

A chimpanzee named Oliver has stumped and astonished scientists for nearly twenty years. He is physiologically unusual, with a lack of hair on his chest and head, and a jawline and ears that are shaped differently from normal chimps. But more notably, Oliver very much acts human. Way too human.

102(e) Flowchart

2005-02-16T15:53:00.000-06:00

Thanks to Stephen Nipper over at The Invent Blog, for pointing out this great resource from the USPTO for determining 35 U.S.C. § 102(e) dates.

American Idol for Entrepreneurs

2005-02-16T11:21:00.000-06:00

Home shopping channel QVC Inc. spent one day this week at the Hyatt Regency Orlando interviewing more than 500 inventors who were vying for the chance to debut their products on television. Full article here.

Learn to Deal With Software Patents

2005-02-16T11:16:00.000-06:00

HP's VP of Linux speaks out on software patents:

"At the end of the day, software patents are a way of life. To ignore them is a little bit naive," Martin Fink, HP's vice president of Linux, said here at the LinuxWorld Conference and Expo. It's fine to object to software patents, but it's foolhardy not to try to acquire them, he said.

"Refusing to patent one's ideas is leaving oneself exposed for absolutely no good reason," Fink said. "For some, (getting patents) may seem like selling out. You can comfort yourself that it's what you do with the patent that matters, not the fact that you have one."

"Too Human" Hybrid

2005-02-14T10:38:00.000-06:00

A New York scientist’s seven-year effort to win a patent on a laboratory-conceived creature that is part human and part animal ended in failure Friday, closing a historic and somewhat ghoulish chapter in American intellectual-property law.

Creepy...

Valium!

2005-02-14T10:37:00.000-06:00

The inventor of Valium has been inducted into the National Inventors Hall of Fame.

Experimental Use

2005-02-14T10:35:00.000-06:00

Lisle Corp. v. A.J. Manufacturing Co., No. 04-1275, -1346, Federal Circuit (February 11, 2005), affirmed.

The district court denied A.J.'s motion for judgment as a matter of law after a jury found the '776 patent was not shown to be invalid for public use.

The determination of whether a patent is invalid for public use is a question of law reviewed de novo, but questions of disputed facts that support that determination are reviewed for substantial evidence after a jury trial.

The facts are as follows: The patent relates to an inner tie rod tool. On or about December 12, 1989, Lisle delivered a prototype tool to four different automobile repair shops in Omaha, Nebraska. Lisle did not receive any payment for the tools, nor did he require any of the mechanics to enter into a formal confidentiality agreement. The application leading to the '776 patent was filed on June 26, 1992, over thirty months later. A.J. alleged that this constituted public use under § 102(b). The jury found that the use was experimental.

The Federal Circuit agreed that A.J.'s motion for JMOL should be denied. First, substantial evidence supported the jury's finding in favor of Lisle on the question of experimental use. The coinventor of the patent had testified that : (1) he needed to know how well the wrench disc would fit on the inner tie rod socket and whether the prototype tool would fit in the confined location of the tie rod in different automobile models; (2) company protocol was to contact the mechanics every two to four weeks for feedback; (3) the design was modified in response to comments from the mechanics; (3) Lisle had a prior working relationship with the mechanics, who knew the tool was being given to them for experimental purposes. The jury also saw "General Meeting Reports" which gave updates on the status of the tie rod tool project.

More on Invent-Tech

2005-02-06T23:07:00.000-06:00

Yet another article about Invent-Tech. In part:

Complaints about Invent-Tech, which was founded in 1996, are on the FTC's Web listing of "frequently requested records." A Tuskegee resident wrote in an FTC filing that the company "lied about my disclosure document filed to u.s. patent office and all they wanted was money so i got real curious about there services."

The resident stated in the filing that he paid Invent-Tech $900 through a money order but that the company had asked for $30,000.

The patent office also lists five complaints from Invent-Tech customers.

So You Wanna Patent Something?

2005-02-04T16:18:00.000-06:00

In the same vein as the How Patents Work post below, here is the So You Wanna folks' interpretation of getting a patent:

So You Wanna Patent Something?

A Coke and a Smile With Your Cell Phone

2005-02-04T14:52:00.000-06:00

According to this article,

U.S. consumers may soon be able to use their cellular phones to buy Cokes at vending machines now that the Coca-Cola Co. has won a patent for vending machine payments via cell phones and PDAs, according to ePaynews.com, an online electronic commerce news service.

The Tragedy of Publication

2005-02-04T10:44:00.000-06:00

Sometimes the patent laws really can screw up your day. Again we see the importance of contemporaneous recognition and appreciation. From this article:

Unfortunately, the best of these cancer-fighting compounds cannot be patented and developed by a pharmaceutical company, because it was published before the discovery of its incredible potential.

In 1997, John Huffman, a Clemson faculty member for 45 years who has led this research at the school for 20 years, created a compound and named it with his initials, JWH-133. He then published it in a 1998 edition of Bioorganic and Medicinal Chemistry, not realizing the possibility of a revolutionary drug coming from the compound.

Contemporaneous Recognition and Appreciation

2005-02-03T11:47:00.000-06:00

ISCO International, Inc. v. Conductus, Inc., No. 04-1007, 1008, Federal Circuit, February 3, 2005, non-precedential, affirmed

A jury found that the asserted claims of ISCO's '215 patent, which was directed to a receiver front end for a cellular base station, to be invalid and not infringed. Following the trial, ISCO filed a motion for judgment as a matter of law, which was denied. This appeal followed.

To begin, the Federal Circuit reminded all of us just how difficult it is to get a jury verdict overturned. On appeal from a judgment denying a motion for judgment as a matter of law, the Court need only find that the jury's findings are supported by substantial evidence – in other words, the Federal Circuit has to find that no reasonable juror could have reached such a result in order to reverse. Uphill climb? You bet.

ISCO argued that (1) the jury was not entitled to consider the ARPA report as prior art; and (2) the jury could not have reasonably reached its conclusion of obviousness based on the evidence presented at trial.

This ARPA report was released in February 1995. ISCO vigorously argued that it was not prior art because ISCO's conception date was December 1994, and submitted drafts of a proposal created in December 1994 in support. However, the Court agreed that the draft did not show conception of the invention – there was no "definite and permanent idea" of a "complete" invention. Conspicuously absent was the appreciation of an automatic bypass circuit:

“It is well-settled that conception . . . cannot be established nunc pro tunc. There must be contemporaneous recognition and appreciation of the invention represented by the [claims].” Breen v. Henshaw, 472 F.2d 1398, 1401 (CCPA 1973). Because ISCO’s predecessor failed to appreciate certain inventive features at the time of the alleged conception, ISCO cannot rely on a later recognition of those features to retroactively cure an incomplete conception.

Regarding the jury's obviousness finding, ISCO argued that the ARPA reference did not suggest a motivation to modify its teachings to achieve the claimed invention. The Federal Circuit ixnayed that argument:

"However, the suggestion or motivation to modify a reference may be derived from the knowledge of those skilled in the art or from the nature of the problem to be solved. Considerable evidence was presented at trial of the knowledge of a skilled artisan in the relevant art and the nature of the problem, from which the jury could have reasonably discerned a motivation to modify the ARPA report to obtain the invention of claim 10."

Next, ISCO argued that another prior art reference was non-analogous prior art because it was directed to military, not cellular applications. However, ISCO was caught with their foot in their mouth when the Federal Circuit noted that the aforementioned December 1994 draft proposal referred to both civilian and military communications systems.

In short, the Federal Circuit affirmed.

The Ball Point Pen

2005-02-02T09:57:00.000-06:00

Here's an article about the inventor of the ball point pen, which was patented in 1888. In part, the article says:

He only made a few of his pens, but a display ad was designed, probably for use in newspapers. It shows diagrams of "Loud's Rolling-Pointed Fountain Marker", mentioning him as the inventor and sole proprietor. But he didn't sell many, and the patent was allowed to lapse. Here's the patent information:

"Weymouth, Mass. (No. 392,046). This patent described a pen having a spheroidal marking point capable of revolving in all directions which was held down by three smaller anti-friction balls, themselves held down by a flaired spring-loaded rod. A threaded cap at the end of the pen could be removed to recharge the pen with ink. The patent described the invention as being especially useful for the marking of rough surfaces such as wooden or paper boxes, coarse wrapping paper and other surfaces where the ordinary nib of a fountain pen could not be used because it would split, spatter or catch."

What Are Secondary Considerations?

2005-02-01T20:37:00.000-06:00

In the Merck case this last week, we saw the Federal Circuit pretty much ignore evidence of commercial success in invalidating the Fosamax Patent. However, when all else fails, secondary considerations (or objective evidence) can often be used to overcome an obviousness rejection or challenge under § 103. Some examples of secondary considerations are:

(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

To the courts, all of the above can help establish that an invention is not obvious. Why? Logically it makes sense. If you look at all of the above factors, establishing any one of those things can help infer that the invention is not obvious. After all, for example, if an invention will bring commercial success, or if there is a need for it, or if there is praise by others, then it stands to reason that others may have tried to develop the invention, but failed. The same goes for copying by competitors – why wouldn’t they just design around it if it were that obvious? Hence, the inference of nonobviousness. However, as we saw in the Merck case, proving one of these factors is sometimes not dispositive, especially when proving commercial success of the invention.

Note that secondary considerations cannot be used to overcome a § 102 rejection or challenge.

Outboard Motors

2005-02-01T20:11:00.000-06:00

Not many people associate Detroit with the outboard motor, but that is indeed where it was invented in 1905. Here is an article detailing the history of the outboard motor. And the first one will be on display at Cobo Hall next weekend:

Parts of that first outboard motor are in Detroit. The fuel tank, tiller, chain drive and prop are missing, but the Curtiss motor that powered it is in the Dossin Museum on Belle Isle.

And at the Grosse Ile Historical Society's Depot Museum, there is a photo showing how the original chain-driven outboard looked as it leaned against the Waterman dock 100 years ago.

That motor will be the centerpiece of an exhibit of antique outboard motors -- including a complete, gear-driven Waterman as well as motors by Sears, Chris-Craft and a Detroit firm called Caille -- at the Detroit Boat Show Feb. 12-20 at Cobo Hall, said John Polacsek, the Dossin Museum's curator.

The Pop Top Can

2005-02-01T20:04:00.000-06:00

Here's a link to an interesting article about the inventor of the pop top can, which we are all very familiar with. In part, the article states:

Their first customer, Pittsburgh Brewing Co., maker of Iron City Beer, ordered 100,000 can ends in 1962. Iron City's sales soared 400 percent in the next six months, recalled Terry Fraze, former chairman of his father's company. Beer and beverage makers started beating a path to Dayton.

Bartenders hated the sharp edges of the earliest version, according to Terry Fraze, and inverted the cans to open them with traditional "church key" openers. In 1965, his father came up with a ring-pull version that caused less bloodshed. Next came one with a dimpled ring to prevent its use to jam parking meters and, in the '70s, a now-mandatory nonremovable ring, which reduced litter.

Hand Shield Dispenser and Disposal System

2005-01-31T18:09:00.000-06:00

What is it with me and bathroom related patents lately? However, this invention is something I would like to see. From the article:

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.

Commercial Success When Others Are Legally Barred

2005-01-31T18:00:00.000-06:00

Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., no. 04-1005, Fed. Cir. January 28, 2005

Merck owns the '329 patent, which teaches a method of treating and preventing osteoperosis through less than daily (i.e. weekly) administration of biophosphonate compounds and is marketed under the name Fosamax. Teva asserted that the patent was obvious under 35 U.S.C. § 103. The '329 patent was filed on August 14, 1998.

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.