Under Mayo v. Prometheus, the U.S. Supreme Court reiterated that the machine or transformation test is merely a clue.  Eligibility of patent protection does not turn on the machine or transformation test.  Rather, the US Supreme Court provided the following analytical framework to determine whether a claimed invention is eligible for patent protection.  The preliminary assumption is that all inventions to a certain degree rely on one or more fundamental laws of nature.  However, the claim must not be too broad so as to preempt the use of a natural law of nature.  The claims must be examined so as determine whether those elements or combination of elements other than the fundamental law of nature contain an inventive concept.

In Mayo, the claim language which was determined to be ineligible for patent protection is instructive on applying this analytical framework.  In particular, the invention in Mayo was related to a drug which was metabolized differently by different people.  As a result, a single strength for the general population was effective for some but not everyone.  The invention contemplated utilizing a diagnostic test to determine how the particular patient metabolized the drug and altering the prescription based on the results of the diagnostic test.  The claims recited the specific ranges of the diagnostic test which indicated when the prescription should be increased or decreased.  It appears that the Court recognized the specific ranges as being a natural law of nature, or in other words, a description of how the body metabolized a particular drug.

In the prior art, all aspects of the claimed method were known except for the specific ranges.  In analyzing whether the claimed invention was eligible for patent protection, the Supreme Court compared the prior art to the claimed invention without regard the particular ranges and held that no inventive concept was being claimed.  All steps in the claimed method were well known in the prior art.  Hence, the invention was not eligible for patent protection.

The opinion also instructed against including as patent eligible an invention merely because the claimed invention is limited to a particular technological environment or included an insignificant post solution activity.

In response to the Mayo decision, it is important that one have a clear definition of the invention and provide a layered approach to drafting a patent application.  A broad claim should still be included and that might be rejected as being ineligible for patent protection.  However, other claims specifically focusing on the steps and not the basic law of nature should be included.  Patent applications should still be drafted as broad as possible but it should be layered until the specific embodiment disclosed by the inventor is disclosed in the patent application.  This is especially true for method claims and those claims which appear to be directed to a known causal relationship, rule of thumb or other mere discovery.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

A non publication request is a request by the patent applicant to not publish a non provisional patent application.  By default, every non provisional patent application is published 18 months after the filing date of the patent application.  The non publication request prevents the publication.

Benefit of publication

The benefit of publication is that the patentee may seek past damages for infringement that occurred prior to issuance of the patent and after the publication of the patent application.  The caveat is that the claims in the published patent application must survive examination substantially unchanged and mature into a patent.  Some patent applications do pass through examination without amendment.  However, most claims are amended during prosecution.  As such, most patentees would not be able to take advantage of this rule.

Provisional patent application

A provisional patent application is not published unless a corresponding follow-on non-provisional patent application is filed claiming priority back to the provisional patent application.  If so, the 18 month time period is calculated from the filing date of the provisional patent application.

Design v. utility patent applications

Design patent applications are never published until they mature into a patent.  The above guidelines are application only to utility patent applications.

Request for early publication

A request for early publication may also be filed with or anytime after filing of the non provisional patent application to take advantage of the provisional damages discussed above.

Downside to filing the non publication request

The downside to filing the non publication request is that you must have the intent not to seek patent protection in foreign countries.   If you are unsure whether you want to file for foreign patent protection, you cannot file the non-publication request.  If you do file the non-publication request, can you change your mind later?  See answer below.

Upside to filing the non publication request

The upside to filing the non publication request is that others cannot review your patent application or the prosecution file history until and if a patent matures from the patent application.  Products can be marketed as patent pending for as long as the patent application remains pending.  Competitors cannot review the status of the examination of your patent application.  This is extremely useful especially if the prosecution of the patent application is not proceeding favorably for you.

Changing your mind

If you change your mind in the future, a rescission of the non publication request may be made.  Please keep in mind that during litigation, opposing counsel will explore this issue to determine whether you ever had the intent to seek foreign patent protection but merely filed the non publication request to keep your options open.  This could affect the cost of future litigation and the validity of your patent application.

Timing for filing the non publication request

The non publication request, if filed, must be filed with the filing of the patent application.  If the non publication request is not filed with the patent application, then the patent application will publish in due course.  If you wish to maintain the secrecy of your patent application until it matures into a patent, the only other option is to abandon the first original patent application and refile provided that this is still an option.  Another downside for abandoning and refiling is that intervening prior art could be cited against your patent application during examination.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

Background of means plus function limitations

A means plus function limitation is a claiming strategy that follows the format of the word MEANS plus a stated FUNCTION.  On its face, it appears very broad.  One would think that a means for fastening would encompass everything known to man that would allow one to fasten two objects.  However, this couldn’t be further from the truth.  In fact, this claim only covers the structure disclosed in the specification and clearly linked to the function stated in the means plus function limitation.  To ensure proper use of a means plus function limitation, one would have to expressly state in the specification that there is a particular function and a particular component of a widget performs such function.  Anything less would leave open the possibility that the claim could be held invalid for being indefinite as was the case for the case discussed below.

Explanation of Ex Parte Adelman

In Ex Parte Adelman, the inventor used the phrase “means for designating a plurality of members as participants in an online business community.”  To perform the analysis, you look for the stated function.  In this case, the stated function is – designating.  You then look to the specification to see what structure, if any, is disclosed in the specification that might perform the designating function.  Thereafter, you must see if such structure is linked to performing the function.  In this case, the inventor pointed to various portions of the specification that allegedly disclosed the structure that performed the function.  The Board of Patent Appeals and Interferences (BPAI) disagreed.  They held that the claim is for a computer enabled means plus function limitation, there must be some form of algorithm corresponding to the function.  The portions of the specification pointed out by the inventors disclosed generic computerized databases, but no algorithm corresponding to the designating function.  Because the specification disclosed no structure to perform the claimed function, the BPAI held that the claim was invalid for being indefinite.

Patent drafting tip

Given the heightened requirement to properly claim an invention as means plus function, the patent application must be drafted with the end in mind.  The claims should be drafted first which many patent attorney do already, then as you draft the patent application, there must be a discussion of a function and the corresponding structure or algorithm that performs the function. This is a bit like working backward but it is necessary for proper drafting of the specification.

Not always broader

The means plus function limitation isn’t always broader even though it might sound very broad on its face.  Let’s take a simple example.  If one claims a means for fastening parts A and B and discloses a nut and bolt in the specification, then this means plus function limitation would cover these things plus their equivalents.  Most likely, it wouldn’t cover an adhesive or magnetic connection or welding because these types of connections are so different.

Now, let’s say that we claim just a “fastener”.  If this is construed normally, then it would potentially include the nut and bolt and probably include the magnetic fastener.  It may even potentially include adhesives and welding.

Making an end run around Festo

Many years back, the seminal Festo case was decided by the United States Supreme Court.  The essence of the case held that if an amendment was made to narrow a claim then such limitation cannot be broadened by the Doctrine of Equivalents.

A basic patent law discussion is necessary at this point.  Infringement can be found if the accused device incorporates all of the limitations of the claim.  If so, this is known as literal infringement.  However, even if the accused device does not incorporate all of the limitations of the claim, infringement can still be found under the Doctrine of Equivalents if the differences are only insubstantial.  Hence, the Festo case held that the infringement analysis does not proceed to the second step or the Doctrine of Equivalents step for the narrowing limitation.  It is not broadened under the Doctrine of Equivalents.

The claim construction for means plus function limitations is a bit different.  No enlargement is given to the claim under the Doctrine of Equivalents.  Rather, the statute which controls how one interprets a means plus function limitation folds equivalents into the literal infringement step.  The statute says that the means plus function shall include the structure disclosed in the specification and equivalents.  Hence, if an amendment to a claim is made, it could conceivably be made in the means plus function format to potentially narrow the limitation but still have some form of equivalents available.

Let’s take our fastener example.  If a claim to a fastener is rejected but you believe that you can obtain allowance for a nut and bolt, then what are the possible ways to claim this to obtain the broadest protection.  If you claim just a nut and bolt, then you are limited to a nut and bolt and exclude other forms of fastening.  If you claim a means for fastening, then you obtain protection for the nut and bolt version plus its equivalents.

Claim strategy when multiple embodiments are disclosed

The breadth of the means plus function limitation is construed as being directed to all of the embodiments disclosed in the specification that are sufficiently linked to the function recited in the means plus function limitation.

If you have multiple embodiments, then it could be significantly less expensive to include one means plus function limitation than to include multiple independent claims in an attempt to cover each of the embodiments.  For example, if you disclose a nut and bolt, welding, adhesives, rivets, etc., you can claim all of these embodiments by using a means for fastening limitation instead of having to recite each one individually. Regardless, the means plus function claim should not be the sole claim but should be layered in with other claims that do not use the means plus function limitation.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

Since the 1940’s, the courts recognized the inherent unfairness of changing the claim scope of an issued patent through post issuance procedures and then suing another who had relied on the issued claims in the original patent in preparing to compete.  For example, if a patent was directed to an automobile having four wheel but later amended to a car having three wheels, then the court would not penalize a third party that built or prepared to build the three wheel car during the time period that the patentee and the Patent Office fixed any defects in the patent.  This is known as intervening rights.  The patent is supposed to serve a public notice function and competitors are allowed to rely on the notice that the originally issued patent provided in deciding what is and isn’t protected by the patent so that they can design around the issued patent, if possible.

Marine Polymer v. Hemcon history

Marine Polymer v. Hemcon was recently decided by a partial panel of the Federal Circuit regarding intervening rights.  The Federal Circuit previously held that any change to the claims, whether it was made express in the language of the claims or implied through arguments made during reexamination of the patent, was sufficient to give rise to intervening rights to the defendant.  The Federal Circuit decided to review the case again en banc, meaning that all judges at the Federal Circuit reviewed the decision of the partial panel.

Analysis

The en banc decision of the Federal Circuit is straight forward.  They looked to the language of the statute providing for intervening rights during reexamination and held that intervening rights arise only for “amended and new” claims as recited in the statute.  The opinion construed “amended” as limited to express changes in the claims but not including any changes to the scope of the claims that might have been made through arguments.  Since the claims at issue in Marine Polymer were never expressly amended and were not newly added, the en banc decision held that no intervening rights arose even though scope of the claims or the meanings of the terms in the claims had changed during reexamination.

Claims can change scope by expressly amending a claim such as from “four” to “three”.  Alternatively, in certain instances, the scope of claims can be altered by argument.  For example, if you argue that X is not included in a term, then the courts will hold you to your statement. It is a bit more difficult to argue that four should be construed as meaning three but it would be easier to say that “biocompatibility” could be construed as “no reaction” even though the specification of the patent contemplated that biocompatibility may include “a small amount of reaction”.  This was the case in Marine Polymer.

In Marine Polymer, the patent at issue was reexamined and rejected.  The patentee argued that biocompatibility should be construed as meaning “no reaction” in order to get around a prior art reference even though the claims had to be construed as including a small amount of reaction due to common claim construction principles. The examiner was convinced by the patentee’s argument and the patent successfully came out of reexamination without any formal express changes to the claims.

The en banc panel of the Federal Circuit was split equally on the issue of whether intervening rights arose when reexamination did not result in a formal express amendment to the claims but did result in a substantive change in claim scope.  The dissent argued that the majority ignored the legislative intent of the intervening rights statute for reexaminations and used a mechanical approach to interpret the statute.

Tips during reexamination

At one level, this case provides straightforward rules and tips for intervening rights for reexamination proceedings.  In reexamination, do not make express claim amendments.  Argue, argue and argue some more until you can convince the examiner that he/she should adopt the meaning of the term as you define it to avoid prior art.

Reexamination or reissue

On a different level, the same rules for reexamination as held in this case do not apply to reissue procedures.  35 USC 252 which governs the effects of a reissue patent does not have the operative “amended or new” language that 35 USC 307 specifies for reexamination.  For reissue patents, if you make a substantive change whether it is expressed or not and whether or not it was made purely by arguments, intervening rights will attach for the defendant.  As such, it is more important than ever to consider the pros and cons of filing a reissue or a reexamination, at least to the extent that you might have the choice.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The uspto.gov website provides two different databases.  One for issued patents and one for published patent applications.  Some published patents applications mature into a patent but some do not.  Hence, the published patent application database and issued patent database have redundant data set.  The bigger problem is that they are not coextensive.  Hence, depending on the type of search you are conducting, you have to search both the databases. This is inconvenient and multiplies the work load by two.

Freepatentsonline.com has developed its own proprietary database which is close to but not exactly the same as the databases at the USPTO website.  Non-USPTO databases will not be identical to the Patent Office databases because of the manual filtering done by PTO personnel of the raw data.  There are differences but I believe that they are generally minor.  The benefit of freepatentsonline.com is that you can search both the published patent application database and the patent database at the same time eliminating redundant search results.

Another database that I use is Google Patents.  Be sure to use the Advanced Patent Search function.  Otherwise, the search results may be a bit too numerous to cover efficiently.

Other online patent search websites:
Getthepatent.com is convenient because you can enter in a list of patents in bulk and retrieve the PDFs of the patent documents faster than freepatentsonline.com which you would have to enter in one by one.  By the way, if you are retrieving single patents, freepatentsonline.com has a good interface.

Cobaltip.com (developed by the same company as freepatentsonline.com) provides do-it-yourself patent searching but is a pay to use site.  It has some unique features such as filtering instead of keyword searching.  You can also obtain information on particular companies and gain insight as to what types of inventions they are seeking patent protection for.

Archpatent.com which is similar to cobaltip.com is a free website for now.  In my opinion archpatent.com has fewer options than cobaltip.com but may be sufficient for your needs.  Both cobaltip.com and archpatent.com are worth investigating.

You may also be interested in foreign patent databases for WIPO and Europe.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

In American Piledriver v. Geoquip and Bay Machinery, the patentee (Piledriver) sued two different entities (Geoquip and Bay Machinery) in two different venues or courts for patent infringement.  Both courts construed the patent claims but both Courts defined the same terms differently.  Nonetheless, both Courts came to the same conclusion that the defendants did not infringe Piledriver’s patent.  Hence, the difficulty in predicting the outcome of patent litigation.  Piledriver appealed.

In order to understand the holding of the case and possible strategies in writing patent applications, it is important to understand the patented technology, the claim language at issue and the design around employed by the defendants.

PATENTED TECHNOLOGY:

The invention relates to a vibratory pile driver.  Vibration and weight of the pile drive the piles into the ground.  The prior art utilized a pair of eccentrically weighted cylinders either intergral with the gear or connected to a gear.  The rotational axes of the eccentric weights are horizontally lined up and rotated in opposite directions to remove any horizontal movement caused by rotation of the cylinders.  Only the vertical movement is left.  It is easier to understand operation of the invention by reviewing Figures 1 and 3 below.

CLAIM LANGUAGE:

The claims required an eccentric weight portion.  Based on the consistent use of the terminology in the claims, the specification and the prosecution history, the court affirmed the definition of the term adopted by the Virginia court.  In particular, the Virginia Court defined the term “eccentric weight portion” to mean “that portion of the counterweight that extends forward or rearward from the front or back face of the gear portion such that it shifts the center of gravity radially outward from the gear’s rotational axis.” (emphasis added).  The eccentric weight portion is shown in Figure 3 above.

Design around:

The accused infringing device is shown below.  As can be seen, the weight which vibrates the gear is embedded within the gear itself.  The eccentric weight does not extend forward or rearward.

PATENT DRAFTING TIPS:

Based on this case, in drafting a patent application, the drafter should consider the alternative design arounds and include them into the patent application if possible.  Most reputable patent attorneys will include alternative embodiments.  A balanced approach must be employed since adding too many different embodiments may unreasonably increase the cost of the patent application.  However, if there is a purpose for adding various alternative embodiments exist, then they should be added.

The claim language also needs to be crafted so as to be broad enough to encompass those potential alternative design arounds.  This is sometimes hard to do since you are called upon to look into the future.  More importantly, even if the potential alternative design arounds are less optimal than the present invention, it may be beneficial to include the less desireable embodiment in the patent application.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

Our mission is to create a unique investment community of successful business and professional leaders that identifies promising start-up ventures and provides the capital and counsel necessary for success.

(Q1) Does the Pasadena Angels provide funding for all types of businesses regardless of the industry or their vertical market?  Do the investors have a preference for a particular type of business such as mobile applications, medical devices, biotechnology, etc.? 

The group provides financing for many different types of companies. However, the vast majority of the companies we’ve backed—and probably all but two—have had some sort of technology orientation. We typically don’t do service-oriented businesses, pure content (digital or print), restaurants or retail establishments.

Because the backgrounds of our 100+ members are very diverse and cover many different areas of technology,  we tend to cover  a very broad spectrum—including life sciences, software, internet/web 2.0, chips and semiconductors, mobile, and digital media. At the end of the day we’re not biased toward any particular types of businesses, just early-stage, local Southern California companies that have the potential to produce favorable (i.e., venture-like) investment returns.

(Q2) On your website, it says that $25 million dollars has been provided to over 65 companies.  This comes out to an average of $384,615.38 per company.  Can you let us know the max and min range of the funding that the angel investors are willing to invest?  What is the preferred range?

Although our typical investment range per round is $300k to $1m, we don’t have any preferred amount. For each investment opportunity, we tend to consider the company on its own merits and do some thorough liquidity planning to determine the optimal amount to invest. In a couple of cases we’ve had very capital efficient enterprises in the Internet space that required only $200k to get to breakeven. Alternatively, we had another company that I was involved with where we raised $10m and co-invested with two Venture Capital firms. By the way, and as of today we’re probably closer to $30 million and over 70 companies.

(Q3)  In addition to monetary funding, your blog post also highlights the importance of assembling the right team?  Is it better for the company to assemble the right team before pitching the company?  Alternatively, will the investors help to assemble the right team?

There’s really a two-part answer to this question, depending on how you define the term ‘right team.’  If you’re referring to having all of the positions filled, that’s not important when approaching the Pasadena Angels. What’s more important is that you thought through what skill sets and experience are required to get your venture to the next level and have identified the critical hires. Since many of the Pasadena Angels members have extensive networks, we can help fill those slots post-investment.

On the topic of ‘right team’, one of the problems we frequently see with early stage companies is having too big a team and/or the wrong backgrounds. For example, I’ve lost track of the number of companies that have come to us for funding that have a CEO, COO, CFO, CTO, VP of Sales, Chief Architect even before they have a product or revenue. For a company at that stage, that’s way too many people. The other thing we sometimes see are people that aren’t a good fit and were given positions because they are a relative, old college roommate, investor, etc. If you’re feeling inclined to do this, please base your hiring on what’s optimal for your company and stage—and not based on who you enjoy working with or who you owe a favor to.

(Q4)  I can imagine that founders have strong willed personalities and do not want to give up control of the company.  What types of checks and balances do the investors require to ensure that the investment isn’t squandered?  Do they get a seat on the board, etc.? 

A couple of years ago there was an interesting article in the Harvard Business Review called the Founder’s Dilemma. In this paper the authors divided founders and entrepreneurs into two categories—those that want to be rich and the ones that want to be king. Based on experience, we typically invest in those that want to get ‘rich’, since the ‘kings’ often don’t care about building successful companies and are more focused on how much control they can exert.

In our experience as Angel investors since 2000, this is a pretty accurate description of the two types of personalities we invariably encounter among startup founders. If a founder is so consumed and pre-occupied with control, then they’re probably not a good fit for the Pasadena Angels and are probably a ‘king.’

With respect to the checks and balances, those tend to be unique to each company. However, some of the common ones include board approval of the annual budget, restrictions on taking on more debt or equity investment without board or shareholder approval. In many instances, we’ve taken board seats. However, the decision to do (or not do) that is based on the specific needs of the company at the time of financing.

(Q5) Great post on The Truth About Early Stage Pre-Money Valuations.  The post describes the various factors used to estimate the value of a company for the investor.  Is there a mathematical formula that can help the company arrive at a general ballpark max or min value?  For example, can you peg the minimum value of a company as a multiple of current gross sales or profit?  Are there any other useful formula to estimate value?

For a startup with no, or minimal revenue, the valuation metrics such as multiples or discounted cash flow don’t really apply. At this stage determining valuation tends to be part art and science. One very rough way to calculate valuation is to determine the exit valuation and time horizon and that investors are seeking a 10x return. Based on those numbers, you can then work your way back to the present time (incorporating option pool activity and subsequent funding rounds where dilution will often occur) to determine rough valuation. One of the pitfalls we often see from founders when they do this calculation is that they assume their company will exit via an IPO at a Google- or Facebook-like valuation, which isn’t realistic. The other rule of thumb you can use is to look at valuations for comparable companies (i.e., same sector and stage) that are being funded by VCs and Angels. Some of the other factors that can also influence valuation are strength of the IP, dollars invested to date, founder’s track record (e.g., have they returned money to investors in past ventures), and meaningful customers and/or partnerships with high signal value companies.

Should you have any further questions, please feel free to contact Joe Platnick at the Pasadena Angels or me at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The Patent Office and Congress has responded to the patent user community.  Many people were complaining that the examination process took too long.  It currently takes about 2 to 3 years before your patent application is examined by the Patent Office.  In years past, the Patent Office has given preferential treatment in special circumstances such as when the inventor is over 65 years old or if the invention is directed to an area of technology that the government might have a higher interest in (e.g., green tech pilot program).  Other programs were created to expedite examination such as the Accelerated Examination program.  In response, Congress through the recently enacted America Invents Act has authorized Prioritized Examination.  Put simply, the patent application pays a fee ($4,800 for large entity and half that for a small entity) to obtain either a final rejection or approval within about 12 months after filing of a patent application or a request for continued examination.

Patent Prosecution Highway

On a related note to Prioritized Examination, the USPTO also allows expedited examination when an applicant files a patent application in two or more countries.  For domestic clients, this works to expedite examination in foreign countries.  For foreign applicants, this works to expedite examination here in the United States.  Here is how it works.  When an applicant files a patent application in two different countries and the country of first filing allows one of the claims, then the applicant may ask the country of second filing to expedite examination based on the allowed claim in the country of first filing.  This is called the patent prosecution highway (PPH).  Here is a report on the current state of the PPH.

USPTO Website Gets a Facelift

The United States Patent and Trademark Office has reorganized the look of its website.  Personally, I like you.  Check it out at uspto.gov.

USPTO Satellite Office

The Patent Office user community (i.e., inventors and businesses) has complained of the length of the time it takes for the Patent Office to examine a patent application after filing. Generally, it takes about 24 to 30 months to obtain a first Office Action on the merits from the filing date of a non-provisional patent application.  Part of the reason for the long wait is that the USPTO (United States Patent and Trademark Office) has only one location in Alexandria, Virginia.  This makes it difficult to hire and retain qualified personnel since employees must either live or move near to the Patent Office in Virginia.  The recent enactment of the America Invents Act authorizes the USPTO to set up satellite patent offices throughout the United States closer to the user community and also to hire and retain qualified personnel.

The first satellite Patent Office will be located in Detroit, Michigan.  The USPTO plans on opening at least two more satellite offices in the next three years.  You can propose your city by submitting comments to the USPTO.

Propose Rulemaking in Response to AIA

The USPTO has begun implementing various provisions mandated by the recently enacted America Invents Act.  As part of the rule making process, the USPTO has published proposed rules in the Federal Register.  You may comment on the proposed rules by forwarding any comments to the email address listed in the following links to the Federal Register.  The proposed rules relate to:

• Inventor’s oath and declaration
• Third party submission of prior art in a patent application
• Citation of prior art in a patent file
• OED Statute of Limitations

Required Reports under America Invents Act

The America Invents Act expanded prior user rights greatly.  Prior user rights is a defense that can be raised by defendants that have chosen to use a product or implement a method secretly instead of seeking patent protection.  Here is the Patent Office’s report of the new expanded prior user rights.

You can also find the USPTO’s report on international patent protection from the small business perspective.  You can read through pages 1-3 to get a good overview of the report.

America Invents Act Roadshow

The USPTO announced a series of cross-country roadshows to discuss AIA-related proposed rules.

To get a patent, an inventor must satisfy the written description requirement.  This is accomplished through the preparation of a patent application which describes the invention and shows any drawings if necessary for the understanding of the invention.  To satisfy the written description requirement, the discussion of the invention must correspond to the claims.  Otherwise, the claims will be deemed invalid for failing to satisfy the written description requirement.

Present Invention

The invention at issue in the following case reduces the amount of aluminum (i.e, metal usage) in a soda can.  Crown Packaging v. Ball Metal.  <insert link to case>.  The soda can has a can body and a can end which is attached to the can body.  The patent application describes two different areas which can be modified to reduce the amount of aluminum used compared to prior art cans.  These two areas are the chuck wall 24 and the reinforcing bead 25.  The present invention increased the angle of the chuck wall 24 and narrowed a width of the reinforcing bead 25 compared to the prior art cans.  See comparison of present invention and prior art cans below.

Written Description Issue

The claims of the patents at issue had broad claims directed to one of the features but not both.  In particular, the independent claims were broadly written so as to be directly only to the large angle chuck wall 24 regardless of the width of the reinforcing bead.  The defendant (Ball Metal) argued that the claim did not satisfy the written description requirement because the specification did not describe an embodiment that was directed only to the large angle chuck wall 24 but instead always discussed the invention in relation to both the large angle of the chuck wall 24 and the narrow reinforcing bead 25.  The district court agreed but on appeal the Federal Circuit reversed.

Inspection of structure of claim set saves the day

The Federal Circuit reversed based on its review of the specification and the structure of the claim set of the patent application.  With respect to the specification, the Federal Circuit stated that “Nowhere does the specification teach that metal saving can only be achieved by increasing the chuck wall angle along with narrowing the reinforcing bead.”  (emphasis added).  With respect to the claim structure, the Federal circuit noted that the original independent claims were directed to the chuck wall angle without reference to the narrow reinforcing bead and that the narrow reinforcing bead limitation was added as a dependent claim.  The claims show that the applicant had in mind the invention as claimed, namely, a large angle chuck wall regardless of the size of the reinforcing bead.  Hence, the written description requirement was met by implying such reading through the context of the text and the drawings of the patent application.

Present case distinguished from three prior cases

Furthermore, Ball Metal (defendant) argued that the patent did not satisfy the written description requirement for the same reasons discussed in relation to three prior cases, namely, Tronzo v. Biomet, LizardTech and ICU Med. v. Alaris Med. Sys.  The Federal Circuit distinguished these cases with the instant case by stating that the patents at issue in these cases unambiguously limited the scope of the invention.  In Tronzo, the patent application discussed a feature as being an extremely important aspect.  LizardTech described only one specific method for solving one particular problem.  In the patent at issue in the current litigation, the patentee (Crown) described at least two different ways of solving the problem of metal usage.  In ICU Medical, the patent application described a feature as necessary.

Divided court

A three panel judge decided the current case.  The majority made up by Newman (Circuit Judge) and Whyte (Circuit Judge) reversed the District Court’s decision.  However, Dyk (Circuit Judge) dissented from the majority opinion.  Dyk opined that the patent application failed to satisfy the written description requirement because it failed to explicitly describe the large angle chuck wall regardless of the width of the reinforcing bead width.

Patent drafting strategy

Although not required by the majority, it is recommended to make explicit statements of aspects which are considered to be implied by the text of the patent application with the goal of trying to avoid litigation. Accordingly, the patent drafting strategy is to meet the higher standard put forth by the dissent and if anything is missing from the patent application, rely on the reasoning put forth by the majority.  For example, a brief paragraph that states that elements 1, 2 and 3 may be practiced in any combination with each other or individually may be made explicitly in the patent application to explain that the inventor contemplates the following combinations 1 and 2, 1 and 3, 2 and 3, or 1, 2 or 3 individually.  Oftentimes, this is the area which is deficient in patent applications prepared by laypersons.  The simple rule is to try to make explicit things that are implicit in the text.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

History of the term

Use requirement

Hybrid patent trolls

Patent Freedom

Patent assertion entities

Troll patent

Compensation

Fuzzy patents

Change the rules, don’t name call

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.