Aggregate Data is Not Enough to Show Domestic Industry in a Section 337 Proceeding.

In Zircon v. ITC, [2022-1649] (May 8, 2024), the Federal Circuit Court affirmed the ITC determination of no violation of section 337. The case involved U.S. Patent Nos. 6,989,662, 8,604,771, and 9,475,185, on electronic stud finders.

To establish a section 337violation, Zircon was required to show that “an industry in the United States, relating to the articles protected by the patent . . . exists or is in the process of being established.” 19 U.S.C. § 1337(a)(2). This is referred to as the “domestic industry” requirement. The ALJ found that the economic prong of the domestic industry requirement was not satisfied with respect to any of the asserted patents. The Commission upheld the ALJ’s determination that there was no violation of section 337, for two independent reasons. First, with respect to the domestic industry requirement, the Commission affirmed the ALJ’s determination that Zircon had not satisfied the economic prong of that requirement. Second, the Commission found each of the claims of the ’662, ’771, and ’185 patents that were before the Commission were either invalid or not infringed.

To meet the domestic injury requirement, a complainant can show that, “with respect to the articles protected by the patent,” there is “(A) significant investment in plant and equipment; (B) significant employment of labor or cap-ital; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing.” 19 U.S.C. § 1337(a)(3)(A)–(C). That provision is referred to as the “economic prong” of the domestic industry requirement.

Zircon has relied on evidence of its cumulative expenditures on all 53 of its domestic industry products to argue that its investments in plant and equipment, labor or capital, and/or research and development have been significant or substantial. Zircon had acknowledged, however, that not all 53 products prac-tice all three of the asserted patents. Rather, Zircon’s evidence showed that of the 53 products, 14 practice all three of the asserted patents; 21 practice both the ’771 and ’185 patent; 16 practice only the ’662 patent; and two practice only the ’771 patent. Zircon did not allocate its expenditures on its 53 stud finder products separately with respect to each of its products or each of the asserted patents. The Commission found that Zircon’s failure to do such an allocation precluded the Commission from evaluating the significance of Zircon’s investments with respect to each asserted patent.

On appeal, Zircon argued that the Commission erred by requiring a patent-by-patent breakdown of its investments and that, in doing so, the Commission departed from its “flexible, market-oriented approach to domestic industry” in Certain Wireless Devices with 3G and/or 4G Capabilities & Com-ponents Thereof, Inv. No. 337-TA-868, USITC Pub. 4475, Initial Determination at 413 (July 29, 2013).

The Federal Circuit found the ITC actions were consistent with Federal Circuit precedent, noting that it has held that where a party seeks to rely upon research and development activities, it must show that those activities the complainant must show that those activities “pertain to products that are covered by the patent that is being asserted.” The Federal Circuit explained that “[i]n cases in which all the domestic industry products practice all the asserted patents, it follows from the language of section 337 and our case law that the complainant could satisfy the economic prong as to all asserted patents based on the entire product group. But in cases in which the complainant’s products or groups of products each practice different patents, the complainant would need to establish separate domestic industries for each of those different groups of products.”

Zircon further argued that in a case such as this one, the Commission’s analysis should proceed on the basis that there is a single industry which exploits the patents. But the Federal Circuit distinguished ZIrcon’s precedent because Zircon sought to aggregate were not all protected by the same patent or patents. The Federal Circuit noted that Zircon might have been able to show the substantial or significant investment requirement was met by its investment in the 14 products that practice all three asserted patents, but Zircon provided no way for the Commission to assess the significance of Zircon’s investment in that product group because Zircon presented its investments in the aggregate for all 53 products, which practiced multiple different combinations of patents.

Because it upheld the Commission’s ruling on the domestic industry issue, the Federal Circuit said it was unnecessary for it to reach Zircon’s challenges to the Commission’s infringement and invalidity rulings.

Posted in ITC

Exemplary Claiming, Not Exemplary Claims

When drafting claims it is permissible to use exemplary language (“for example” or “such as”). According to MPEP 2173.05(d) use of such language “does not by itself render the claim indefinite,” although the section then rattles off five examples where exemplary language was found to be indefinite. Even if exemplary language is permissible, is it a good idea?

Modern patents occasionally issue with claims containing exemplary language. Consider claim 14 of U.S. Patent No. 11972683:

14. The tracking arrangement as claimed in claim 13, wherein the “cooperative awareness message <CAM>” has the following vehicle-specific, vehicle-characteristic message parameters: type of different vehicles belonging to the road users, for example bus, automobile, motorcycle, etc., in the group; time stamp of vehicles belonging to the road users in the group should be close in terms of time; position of different vehicles belonging to the road users in the group should be adjacent; direction of vehicles belonging to the road users in the group should be the same; speed of vehicles belonging to the road users in the group should be comparable; length of different vehicles belonging to the road users is used as a group identifying feature; width of different vehicles belonging to the road users is used as a group identifying feature; issuing authority of the cryptographic certificates for the signature of the status messages; certificate hierarchy for validating the certificate for the signature of the status messages; repetition rate of the change of the parameters.

What do the examples do for this claim? Does the absence of “trucks” is the list affect the meaning of “type of different vehicles”?

What about claim 11 of U.S. Patent No. 11965836:

11. The detection assembly as claimed in claim 10, wherein the matrix array of light-emitting diodes is made of a longitudinal succession of strips of LED tape which are secured, for example glued, transversely to the inner surface.

Does “glued” affect the meaning of “secured”? There is a presumption that every word in a claim is to be given meaning, so what does “glued” for claim 11.

Then there are claims structured like claim 13 of U.S. Patent No. 11965415:

13. The method as claimed in claim 1, wherein the injected current comprises an alternating current signal having a frequency of 1 Hz or lower, for example 0.5 Hz or lower, or 0.25 Hz or lower.

Does the claim cover all frequencies below 1Hz? What is the significance of 0.5 Hz? Of 0.25 Hz?

While claims can include exemplary language, it may not result in exemplary claims.

Cinco de Mayo, Dos Mil Veinticuatro

Cinco de Mayo, also known as Battle of Puebla Day, is a holiday celebrating the date of the Mexican Army’s May 5, 1862, victory over France at the Battle of Puebla during the Franco-Mexican War. Although hostilities continued for five more years, General Ignacio Zaragoza success represented a great symbolic victory for the Mexican government and bolstered the resistance movement.

A minor holiday in Mexico, it is more widely celebrated in the United States, and most U.S. celebrations feature margaritas. Like most things involving tequila, the origin of the margarita is unclear. Some claim that the margarita is a variation of the brandy daisy, remade with tequila instead of brandy. Others claim that the margarita was invented in 1938 by Carlos “Danny” Herrera the Rancho La Gloria restaurant in Baja California. Still other claims that the margarita was in 1938 by a bartender in honor of Mexican showgirl Rita de la Rosa. Still others claims that it was invented in Ensenada, Baja California, in 1941 by bartender Don Carlos Orozco. There are also claims that the margarita was first mixed in Juárez, Chihuahua, at Tommy’s Place Bar on July 4, 1942, by Francisco “Pancho” Morales.

Whatever its origins, margaritas are a popular cocktail, and the drink of choice on Cinco de Mayo, so it is not surprising that a bit of technology has been developed around the margarita.


U.S. Patent No. D743217 protects the appearance of a margarite tool:

U.S. Patent No. D566452 protects the appearance of a Margarita Maker:


U.S. Patent No. 11,033,131 protects the glass for serving a bottle of beer:

U.S. Patent No. similarly protects a device for serving a margarita with a bottle of beer:

U.S. Patent No. D540120 protects the appearance of a Margarita Glass:

U.S. Patent No. D454758 also protects the appearance of a Margarita Glass:

U.S. Patent No. D453093 also protects the appearance of a Margarita Glass:

U.S. Patent No. 5842590 protects a Nestable Margarita Glass Apparatus and Method:

Margarita-Themed Products

U.S. Patent No. D545005 protects the appearance of a Margarita-styled Bird Feeder:

May the 4th be wIth You

Happy Star Wars Day. What better way for a patent lawyer to celebrate than with a collection of Star Wars patents?


  • D254080 Toy Spacecraft (X-Wing Fighter)
  • D254081 Toy Spacecraft (TIE Fighter)
  • D257160 Aerial Toy (Landspeeder)
  • D265668 Toy Space Vehicle (Twin-Pod Cloud Car)
  • D266777 Toy Vehicle (AT-AT)
  • D267025 Toy Space Vehicle (Snowspeeder)
  • D268192 Toy Space Vehicle (Rebel Transport)
  • D268200 Toy Space Vehicle (TIE Bomber) –
  • D268773 Toy Space Vehicle
  • D271780 Toy Space Vehicle (Rebel Medical Frigate)
  • D277116 Toy Vehicle (Imperial Shuttle)
  • D277120 Toy Vehicle (Tatooine Skiff)
  • D277200 Toy Spacecraft (A-Wing)
  • D277201 Toy Spacecraft (B-Wing)
  • D277398 Toy Vehicle (Speeder Bike)
  • D277493 Toy Vehicle (Sail Barge)



  • D256485 Toy Sword (Light Sabre))
  • D259578 Toy Helmet (Helmet)
  • 10065127 Sword Device with Retractable, Internally Illuminated Bllade

April 22, 2024, The 55th Earth Day

The first Earth Day was April 22, 1970, it was not until 20 years later, that the impact of Earth Day was recorded in the U.S. Patent collection. In U.S. Patent No. 5090559, issued in 1992 on Reusable Garment Bags for Dry Cleaning, acknowledged that ” ‘Earth day,’ citizen activist groups, scientists and a large number of television documentaries and public information and service programs have all increased public awareness of [issues with disposable bags.”

In 1997, U.S. Patent No. 5601204 on a Tank Vault With Sealed Liner, noted:

Since the 1970s, the world, and in particular, the United States, has been concerned with the environment and the contamination of that environment, including the earth’s soil, its atmosphere and its water. The first Earth Day in 1970 resulted in the eventual creation of the Environmental Protection Agency by the United States Congress.

Since the 1970s, the world, and in particular, the United States, has been concerned with the environment and the contamination of that environment, including the earth’s soil, its atmosphere and its water. The first Earth Day in 1970 resulted in the eventual creation of the Environmental Protection Agency by the United States Congress.

U.S. Patent No. 5595114 issued in 1996 on a Simulated Musical Rainmaker, which it described as “a perfect toy to celebrate Earth Day, which is slowly becoming an important holiday in the calendar year.”

U.S Patent No. D407127 issued on a baseball with an Earth Day logo:

U.S. Patent No. 7560822 issued in 2009 on an Educational Electrical Generation Kit that is “sturdily and durably configured, particularly since it may be used in crowded environments with children present (e.g., in schools, science fairs, Earth Day events, open houses at utility companies, museums, etc.).”

U.S. Patent Nos. 8870061 issued in 2014 and 9302818 issued in 2016 disclose a Reusable Envelope, which the patents indicate is particularly adapted for Earth Day mailings.

U.S. Patent No. 10107029, issued in 2018, commented that “forty years after capturing the imagination of many people during the first observance of Earth Day, America’s recycling revolution is getting mixed reviews.” While the patent noted that “140 million Americans recycle—more than vote in national elections,” we can certainly do better, and as the 55th Earth Day approaches, hopefully, we will.  

Total Eclipse of the Sun on April 8

Several inventors have addressed the problem of safely watching a total eclipse of the sun. One of the earliest is U.S. Patent No. 548868, which issued October 29, 1895, on an Apparatus for Observing Eclipses:

This patent is long ago expired, so feel free to adapt for your use on April 8, A more modern device is disclosed in U.S. Patent No. 9123285, which provides a Transparent Display Device and Transparency Adjustment Method Thereof, which explains:

U.S. Patent No. 11438494 on a Device for Viewing and Imaging the Sune and Solar Phenomena, the augments a user’s smartphone:

U.S. Patent No. 10103768 provides a Mobile Device Casing that includes a filter 304 for photographing solar eclipses:

U.S. Patent No. 11536947 on a Tunable Window System for a Vehicle, that can adapt to “local conditions (e.g., solar eclipse). 

Solar eclipses have inspired some to make games, like U.S. Patent No. 5678823 on a Total Solar Eclipse Game of Skill:

Others have named plants after solar eclipses, as in U.S. Patent No. PP23647:

The technology is there to have a safe viewing experience. Enjoy the April 8 solar eclipse.

April Showers

April is known for spring rains, and fortunately for us, inventors have our backs with umbrellas of all kinds. An all-time favorite is the combination umbrella/lightning rod in U.S. Patent No. 4,447,847, which only issued after the inventor, Drulard, successfully appealed the Examiner rejection that the invention lacked utility:

Inventors have provided protection for infants, U.S. Patent No. 849055 provides an umbrella mount for a stroller:

and the aged, U.S. Patent No. 10285893 provides an umbrella mount for a walker:

Even pets are covred (literally). U.S. Patent No. 6871616 provides a pet umbrella:

Inventors have protected us during all of our daily activities. U.S. Patent No. 8556141 provides a backpack with an umbrella:

U.S. Patent No. 639634 provides a bike with an umbrella:

U.S. Patent No. 5609321 provides a golf cart with an umbrella:

U.S. Patent No. 10952487 provides an umbrella for hands-free drinking:

U.S. Patent No. 7967274 provides an umbrella for getting in and out of a car:

U,S, Patent No. D664761 provides an umbrella for watching sports:

Inventors have provided us umbrellas that protect our phones. U.S. Patent No. D822370 protects a cell phone mount for an umbrella::

So, when April showers may come your way, remember that they bring the patents that issue in May (and the rest of the year).

Patently Easter

One of the earliest references to Easter in the patent collection is U.S. Patent No. 1,234,939 on a Carrier for Eggs, which issued July 31, 1917. (The earliest reference was just a few months in April 1917, on a perpetual calendar.

U.S. Patent No. 1,269,169 issued nearly a year later on a Carton “adapted to contain candy Easter eggs.”

On July 13, 2020, U.S. Patent No. 1,356,658 issued on an Advertising Specialty with an Easter theme:

U.S. Patent No. 1,484,796 issued February 26, 1924, on an Egg Laying Toy:

U.S. Patent No. D64293 issued March 18, 1924, on a Candy Easter Egg:

U.S. Patent No. D64292 issued the same day on another Candy Easter Egg:

U.S. Patent No. D64291 issued on another Candy Easter Egg:

U.S. Patent No. D64,290 issued on another Candy Easter Egg:

And U.S. Patent No. D64289 issued on a Candy Easter Egg:

Finally (for this post) U.S. Patent No. 1,516,718 issued on a Novelty Toy in “the shape of an Easter egg” and we are only up to 1924.

Merely Because a Technology is Known, Does Not Mean There Was a Motivation to Use It

In Virtek Vision International ULC v. Assembly Guidance Systems, Inc., [2022-1998, 2022-2022] (March 27, 2024), the Federal Circuit reversed the PTAB determination that certain claims of U.S. Patent No. 10,052,734 were unpatentable, and affirmed the determination that other claims of the ‘734 patent had not been shown to be unpatentable.

The ’734 patent discloses an improved method for aligning a laser projector with respect to
a work surface. On appeal, Virtek argued the Board’s findings that a skilled artisan would have been motivated to combine the references were not supported by substantial evidence, and the Federal Circuit agreed.

The Federal Circuit said that it does not suffice to meet the motivation to combine requirement to recognize that two alternative arrangements (such as an angular direction system using a single camera and a 3D coordinate system using two cameras) were both known in the art.

These disclosures, however, do not provide any reason why a skilled artisan would use 3D coordinates instead of angular directions in a system. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only
could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).

The Federal Circuit said that the mere fact that possible arrangements existed
in the prior art does not provide a reason that a skilled artisan would have substituted the one-camera angular direction system in one prior art system with the two-camera 3D coordinate system disclosed in another. The Court noted that there was no argument in the petition regarding why a skilled artisan would make this substitution—other than that the two different coordinate systems were “known to be used.” The petition did not argue that the references articulates any reason to substitute one for another or any advantages that would flow from doing so, and neither did Petitioner’s expert articulate any reason why a skilled artisan would combine these references.

The Federal Circuit said that KSR did not do away with the requirement that there must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention. The Federal Circuit said that there was no argument about common sense in the petition or in the expert’s declaration. There was no evidence that there are a finite number of identified, predictable solutions. There was no evidence of a design need or market pressure. In short, this case involved nothing other than an assertion that because two coordinate systems were disclosed in a prior art reference and were therefore “known,” that satisfies the motivation to combine analysis. That is an error as a matter of law. It does not suffice to simply be known. A reason for combining must exist.

Failure to Give Jury Instruction on Objective Indicia After Evidence Was Presented Was Error Requiring a New Trial

In Inline Plastics Corp. v. Lacerta Group, LLC, [2022-1954, 2022-2295] (Fed. Cir. 2024), the Federal Circuit affirmed the judgment of non-infringement, but vacated the jury determination of invalidity because of an error in jury instructions on the objective indicia of nonobviousness.

The case involved U.S. Patent Nos. 7,118,003; 7,073,680; 9,630,756; 8,795,580; and 9,527,640, which describe and claim tamper resistant and tamper evident containers,

On the invalidity issue, the Federal Circuit rejected the argument that the references were “cumulative” of PTO-considered references, pointing out that Inline cites no authority that
precludes a successful obviousness challenge that rests on PTO-considered references.

The Federal Circuit also rejected the argument that there was no legally sufficient evidence of the motivation to combine references. The Federal Circuit said that it has consistently stated that a court or examiner may find a motivation to combine prior art references
in the nature of the problem to be solved” and that “[t]his form of motivation to combine evidence is particularly relevant with simpler mechanical technologies. Further, the Federal Circuit it has recognized that some cases involve technologies and prior art that are simple enough that no expert testimony is needed” regarding a motivation to combine.

Finally, the Federal Circuit rejected Inline’s argument that Lacerta’s challenge must fail because it did not rebut or even address Inline’s objective- indicia evidence. The Court said that is has never held that the challenger must present its own testimony on objective indicia or else the patentee’s evidence must be credited, much less must be credited as dispositive of the obviousness issue.

As to the jury instruction on objective-indicia, the Federal Circuit agreed that the instruction was legal error. The Federal Circuit noted that Inline presented evidence of industry praise for its products, as well as evidence for additional objective indicia, such as copying and licensing. The Court said that this evidence, taken together, called for an instruction, if properly requested, on the objective indicia to which the evidence pertains, so that the jury
could assess its weight as objective indicia and—where the jury was asked for the bottom-line answer on obviousness— in relation to the prima facie case. However, the district court
did not give such an instruction.

The error in the objective-indicia instruction here was not harmless (whether under Federal Circuit or First Circuit law). We cannot say that a proper instruction would have made no difference to a reasonable jury regarding invalidity.