On April 29, 2008, U.S. Patent No. 7,366,979 issued to Steven Spielberg and Samuel Gustman on a Method and Apparatus for Annotating a Document. Yes — that Steven Spielberg.
Category Archives: Uncategorized
An Illuminating Discussion About Design Patents
Design patents protect the aesthetic appearance of a product or portion of the product. The aesthetic appearance is affected by a number of things, including whether the product is illuminated. However, how does one capture in the USPTO’s preferred black and white line drawings that fact that some or all of the design is illuminated? Pretty much the way you would think. Take, for example, U.S. Patent No. D688245 on a Contoured Mouse, which illustrates illumination with a burst of radiating dashed lines:
the patent explains that the “dash-dot-dash lines shown in Fig 8 represent the illumination at the finger wheel and these lines form no part of the claimed design.” This same technique was used in U.S. Patent No. D688,664, also on a contoured mouse.
Discover Financial Service used a similar technique to illustrate an illuminated portion on their Discover Card in U.S. Patent No. D685419:
The patent explaining that “The circle is the boundary of the illuminated portion. The radiating lines illustrate the glow of the illumination.” Radiating lines were also used to indicate illumination on an MR scanner in U.S. Patent No. D682,026:
Still other examples include: an electronic data module with illuminated region in U.S. Patent No. D670696:
An illuminated cup rim in U.S. Patent No. D670419:
Illumination can be claimed in a design patent, it is simply a matter of illustrating the illumination in the drawings, and describing the drawings properly.
April 28 Patent of the Day
On April 28, 1992, U.S. Patent No. 5,107,620 issued to Richard E. Mahan on an Electrified Table Cloth. The table cloth had a mini electric fence to keep crawling insects from joining the picnic.
Principles of Equity: Denying Inventors their Constitutionally Promised Exclusivity
Article I, Section 8, Clause 8 of the United States Constitution, empowers the United States Congress:
To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
However, the patent laws enacted by Congress don’t always provide what the Constitution intended. In Texas Advanced Optoelectrionic Solutions, Inc, v. Intersil Corp., [4:08-CV-451] the district court recently denied the plaintiff patent owner’s motion for a permanent injunction,finding a lack of irreparable harm. The Court relied upon the fact that the patent owner “viewed a reasonable royalty as sufficient compensation for the Defendant’s past infringement,” The Court then ordered the parties:
to negotiate a royalty rate to address any future harm to the Plaintiff for the remaining life of the ‘981 patent. Such supplemental damages shall be for sales in the Unite States of products found to infringe the Plaintiff’s patent from March 2014 until the expiration of the patent. The parties shall have 30 days from the entry of this order to negotiate a royalty rate. If the parties require additional time, they may so move the court. If the parties are unable to successfully negotiate a royalty rate, the Plaintiff may move the court to impose an ongoing royalty rate.
The case arose when, after entering a confidentiality agreement to explore a possible business relationship, Intersil misappropriated TAOS’ trade secrets, and wilffully infringed TAOS’ patent. Despite Intersil’s bad conduct, and the fact the parties were actually competing in the marketplace, the Constitution’s promise of exclusivity is denied on principles of equity.
April 20 Patent of the Day
On April 20, 1837, Erastus B. Bigelow, received Patent No. 169 on a loom, for making carpets.
It is Error to Ignore Functional Structures Entirely in a Design Patent Construction
In Sport Dimension, Inc. v. The Coleman Company, [2015-1553] (April 19. 2016) the Federal Circuit vacated the stipulated judgment of non-infringement of U.S. Patent No. D623,714 on a personal flotation device, and remanded for further proceedings consistent with the correct claim construction.
The district court adopted Sport Dimension’s proposed claim construction:
The ornamental design for a personal flotation device, as shown and described in Figures 1–8, except the left and right armband, and the side torso tapering, which are functional and not ornamental.
This construction eliminates several features of Coleman’s claimed design, specifically the armbands and the side torso tapering. The Federal Circuit observed that “[w]ords cannot easily describe ornamental designs.” The Federal Circuit said that a design patent’s claim is thus often better represented by illustrations than a written claim construction, and that a detailed verbal claim constructions increases “the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole.
However the Federal Circuit has often “blessed “claim constructions that helped the fact finder distinguish between those features of the claimed design that are ornamental and those that are purely functional, because where a design contains both functional and nonfunctional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.
In OddzOn, Richardson, and Ethicon, the Federal Circuit construed design patent claims so as to assist a finder of fact in distinguishing between functional and ornamental features, but in no case did it entirely eliminate a structural element from the claimed ornamental design, even though that element also served a functional purpose. Even though the Federal Circuit agreed that certain elements of the design serve a useful purpose, it rejected the district court’s ultimate claim construction because it eliminated the functions structures from the claim entirely.
The Federal Circuit said that because of the design’s many functional elements and its minimal ornamentation, the overall claim scope of the claim is accordingly narrow. However the Federal Circuit offered no further guidance on the proper construction.
Equitable Estoppel Stops NPE From Asserting Patents that its Assignor Failed to Assert
In High Point SARL v. Sprint Nextel Corporation, [2015-1298] (April 5, 2016), the Federal Circuit affirmed summary judgment that equitable estoppel and laches preclude prosecution of High Point’s claims for infringement of United States Patent Nos. 5,195,090, 5,195,091, 5,305,308, and 5,184,347. High Point is an NPE that acquired the patents from successors of AT&T and Lucent.
The Federal Circuit held that the district court did not abuse its discretion
in determining that equitable estoppel precludes High Point from bringing this case against Defendants. The Court said that three elements must be established for equitable estoppel to bar a patentee’s suit:
- the patentee, through misleading conduct (or
silence), leads the alleged infringer to reasonably
infer that the patentee does not intend to enforce
its patent against the alleged infringer; - the alleged infringer relies on that conduct; and
- the alleged infringer will be materially prejudiced if
the patentee is allowed to proceed with its claim.
The Federal Circuit concluded that High Point’s predecessors’ misleading course of conduct caused Sprint to reasonably infer that they would not assert the patents-in-suit while Sprint purchased unlicensed infrastructure to build its network. The Court said that misleading conduct occurs when the alleged infringer is aware of the patentee or its patents, and knows or can reasonably infer that the patentee has own of the allegedly infringing activities for some time. The Federal Circuit said that the evidence showed both silence and active conduct.
The Federal Circuit also agreed with the district court that Sprint detrimentally relied upon the inaction of High Point’s predecessors.
Finally, the Federal Circuit agreed with the district court that Sprint were prejudiced by the delay, both economically because of continued investment in the accused technology, and through loss of evidence over time.
The effect of equitable estoppel is “a license to use the invention that extends throughout the life of the patent.”
Invalidity Determination Would Not Apply to Reexamination Claims That Did not Exist at Time of Judgment
In Cardpool, Inc. v. Plastic Jungle, Inc., [2014-1562] (April 5, 2016) the Federal Circuit affirmed the district court’s denial of vacatur, because the denial was within the district court’s discretion and also because the premise of the motion was both speculative and inaccurate.
The parties’ jointly requested vacatur was that all of the Cardpool patent claims had been replaced on reexamination, and that Plastic Jungle was no longer conducting the accused infringing activities.
The Federal Circuit, applying Ninth Circuit law, said that a district court’s denial of a Rule 60(b) motion is reviewed for abuse of discretion, and found that it was not an abuse of discretion to preserve its original decision, which was limited to the claims and grounds that existed at the time. The Federal Circuit further found that the premise of the motion was both speculative and inaccurate: the district court’s final judgment as to an original group of claims does not automatically render that judgment res judicata as to new claims granted upon reexamination. The Federal Circuit distinguished Aspex, noting that for res judicata to apply, it is necessary that the claim either was asserted, or could have been asserted, in the prior action. If the claim did not exist at the time of the
earlier action, it could not have been asserted in that action and is not barred by res judicata. A prior judgment cannot be given the effect of extinguishing claims which
did not even then exist and which could not possibly have been sued upon in the previous case. The Federal Circuit said that the issue of validity of the reexamined claims remains to be addressed in any future proceeding, and found that the district court did not abuse its discretion refusing to vacate the judgment as to the original claims.
April 2 Patent of the Day
On April 2, 1946, U.S. Patent No. 2,397,657 was issued to Robert H, Goddard for a Control Mechanism for Rocket Apparatus.
Estoppel Does Not Apply to Uninstituted Grounds in an IPR
In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., [2015-1116, -1119] (March 23, 2016), the Federal Circuit affirmed in part, vacated-in-part, and remanded the USPTO’s final written decision regarding claims 1-21 of U.S. Patent No. 7,806,360 relating to “creels” for supplying yarn and other stranded materials to a manufacturing process.
Shaw challenged the Board’s institution decision that refused to consider one of the proffered grounds of unpatentability as redundant. The Federal Circuit noted that the Board did not consider the substance of the cited reference, or compare it to the other cited art, nor did the Board make specific findings that the grounds overlapped or even involved overlapping arguments. Instead the Board merely denied the ground as redundant. While pointing out that it may not agree with the Board’s handling of the Petition, or that the Board’s handling was more efficient, the Federal Circuit said it had no authority to review the Board’s decision not to institute. Shaw persisted and requested a writ of mandamus, but the Federal Circuit found that Shaw had not shown it was entitled this extraordinary remedy, rejecting the Shaw’s argument that it had no other adequate means to attain the desired relief, because it would be estopped to raise the redundant grounds that the Board refused to hear.
The Federal Circuit held that §315(e) would not estop Shaw from re-raising the redundant grounds in either the PTO or the district courts. The Federal Circuit said that both parts of § 315(e) create estoppel for arguments “on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” Shaw raised the redundant ground in its petition for IPR, but the PTO denied the petition as to that ground, thus no IPR was instituted on that ground, and the IPR does not begin until it is instituted.
This language does not appear to be limited to grounds that are not instituted for redundancy, and thus would also apply to grounds that the Board finds did not meet the or the “likelihood of success” and the more rigorous “more likely than not” standards of IPR and PGR proceedings.
It is conceivable that the Federal Circuit could later distinguish between grounds rejected on their merits and grounds merely found redundant, but their holding that there is no estoppel on grounds that are not instituted appears straight-forward and unambiguous. Thus a petitioner may be able to preserve grounds by mentioning them, but not adequately supporting them, the resulting denial of institution protecting the petitioner from any estoppel effects.
Finally, the Federal Circuit held that it lacked authority to review the Board’s decision that the petition was not barred pursuant to 35 U.S.C. §315(b). Leaving the Board’s curious rule that a complaint served but later dismissed does not count as a complaint, completely unreviewable.