5 Star Background, 1 Star Patent

As we have said several times, the Background in a patent application is trap for unwary, and in general the less said the better.

U.S. Patent No. 8,356,419 has an interesting take on the Background, relying on consumer reviews of the prior art:

Whether in the applicant’s own words or in the adopted words of consumer reviews, criticisms of the prior art can have a limiting effect on claim scope, because why would the inventor want to claim something that he or she criticized or believe in adequate?

It is unlikely that a Background section has ever worked to the benefit of a patent applicant, but there are multiple examples of where the Background has disadvantaged the applicant, whether through “admitted prior art” or limitation of the claims through criticism of the prior art.

The lesson remains, the less said, the better.

Easter Lore and a Drafting Lesson

You never know what tidbit you will pick up reading a patent. For example, U.S. Patent No. 6,325,691, on a Packaged Toy, is full of fun facts about the origins of Easter Traditions:

The Background of the Invention of a patent is fraught with peril for the patent drafter. First of all, you probably should use “the invention” in the heading. Define the Field of the Invention too broadly, and you invite the application of prior art that otherwise would be non-analogous. Say too much about the prior art, and you create admitted prior art. Criticize aspects of the prior art unrelated to the invention, and you may have disclaimed them. The ‘691 patent avoided most of these problems by simply recounting fun facts about Easter Traditions.

For example, did you know that in “Europe it was believed that eggs laid on Good Friday, if kept for a hundred years, would have their yolks turned into diamonds”? ‘691 Patent, Col. 1, ll. 15-17.

Did you know that the tradition of coloring Easter eggs came from the Crusades? ‘691 Patent, Col. 1, ll. 20-22.

What do you know about the history of the White House Egg Roll? It all started back on the lawn of the Capital, during the Andrew Johnson administration:

‘691 Patent, Col. 1, ll. 20-22. The ‘691 managed to avoid most of the problems that can arise from the Background Section. Happy accident, or cleverly hatched plan?

When Your Background Dooms The Invention

37 CFR 1.77(b)(7) suggests that a patent application should include a “Background of the Invention.”  However, the Background of the Invention  can cause trouble if the drafter is not careful.

The Background of the Invention, sometimes called the “fairy tale” by older practitioners (there are number of examples where the background actually contains the fairy tale beginning “once upon a time”– see U.S. Patent Nos. 7,715,960, 7,207,929, 5,537,417 and 4,206,568), not surprisingly sets for the background information and often identifies the problem(s) solved by the invention.

One of the greatest (although not necessarily the best) “backgrounds” in a U.S. patent is found in U.S. Patent No. 4,646,382 on a Lottery Ticket Scraper, where the background ties the subject ticket scraper to the rise of civilization from primitive cultures:

In contract, the best background is probably one that says as little as possible.  A background prepared after the invention (and they all are) can tend to make the invention look obvious, describing the problems of the prior art in such a way that the inventor’s solution almost seems obvious.  This appears to be the case in the Federal Circuit’s recent decision in Intercontinental Great Brands LLC v. Kellogg North American Co., discussed here, where the identification of the problem to be solved in background formed a part of the overall obviousness determination.

The Background of U.S. Patent No. 5,156,594 was used against the patent owner in Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1447 (Fed. Cir. 2001), where criticisms of the prior art were used to narrow the claims.

In preparing the background of a patent application,

  • Discuss problems of “some” prior devices, rather than “all” prior art.
  • Avoid describing the problems of the prior art in a way that makes the invention seem like the obvious extension of the prior art.

If You Can’t Say Anything Nice About the Prior Art, Don’t Say Anything at All

It turns out that Mom was right when she said: “If you can’t say anything nice about someone, don’t say anything at all.”  Criticism of the prior art can limit the scope of your claims.  In UltimatePointer, LLC v. Nintendo Co., 816 F.3d 816 [118 USPQ2d 1125, 1130] (Fed. Cir. 2016), the Federal Circuit found that the patentee’s disparagement of indirect pointing devices supported the conclusion that such devices were not encompassed by “pointing device” in the claim.  The Federal Circuit said that “the repeated criticism of indirect pointing” clearly pointed to the conclusion that the “handheld device” in the claims is limited to a direct-pointing device.

The lesson is to not disparage any feature of the prior art that might be incorporated into a device that you would want to claim infringes your claims.   You are free to disparage problems of the prior art that are eliminated by the claimed invention.  However, if you disparage the prior art, and the accused infringer’s product suffers from the same problem you criticized, then the accused product may not be found to infringe your claims.  And Mom would say, “it serves you right.”


And in the Alternative . . .

The older among us have “unlearned” the prohibition of the word “or” in patent claims, and have reasoned that if “or” is acceptable, its cousin “and/or” is acceptable in patent claims as well.  A few years ago, the USPTO confirmed this in Ex Parte Gross, App. 11/565/441, (PTAB 2014).  Mr. Gross claimed:

forming a website collective whose members include a plurality of different websites characterized by a common parameter including at least one of a common content topic, and/or a common contractual arrangement.

The Examiner took exception to “and/or” rejecting the claim as indefinite.  The Board of Appeals reversed the Examiner, agreeing with Mr. Gross that “‘and/or’ covers embodiments having element A alone, element B alone, or elements A and B taken together.”  The Board did add that the preferred verbiage” would be “at least one of A and B” and not “at least one of A an/or B.”

Thus “and/or” in a claim is not necessarily indefinite, but it is not the preferred way to write a claim.

An Animated Review of Design Patents

Design patents protect the appearance of articles of manufacture, and this includes articles of manufacture whose appearance changes over time.  In particular, animated displays on computers and other electronic devices can be protected with a design patent.  The drawings of are a series of still images of the animated design, showing the progression, somewhat like a “flip book.”  Thus, U.S. Patent No. D698,363 protects a spinning design by showing for sequential images:



The patent explains:






U.S. Patent No. D706,806 shows another on-screen animation in two figures:






The patent explains:


U.S. Patent No. D612,861 shows an animated screen transition over seven images, four of which are shown below:












The patent describes the figures:




It is pretty well known that icons can be protected with design patents, however we continue to adhere to the fiction that it is not the icon we are protecting, but the substrate decorated with the icon that we are protection.  U.S. Patent No. D697,530 illustrates one technique for protecting an icon that could appear on both a computer display and a printed display:



The icon on the computer screen is simply shown with a dashed border separating the icon from the rest of the screen, which is not depicted.  The icon on the printed matter is shown within its own border, and with a slightly different dashed border separating the icon form the rest of the printed material on which it is depicted.

A Plea for a Charitable and Common-Sensical Claim Construction

All manner of boiler plate can be found in patent applications and issued patents, placed there by applicants and their counsel hoping to influence the future construction of their specification and claims, but the language in U.S. Patent No. 8,047,178, requests a “charitable and common-sensical” claim construction.  Unfortunately, that’s probably too much to ask for.


If You Can’t Say Something Nice . . .

In Bamberg v. Dalvey, [2015-1548] (March 9, 2016), the Federal Circuit affirmed the PTAB’s decision in an appeal from a consolidated interference proceeding refusing to allow the claims of four patent applications because the specification failed to meet the written description requirement of 35 U.S.C. § 112.  The involved claims disclose a method for the transfer of printed images onto dark colored textiles by ironing over a specialty transfer paper. The transfer paper generally contains: (1) a removable substrate coated with silicon, (2) a hot-melt adhesive, (3) a white layer, and (4) an ink-receptive layer.  During the interference proceeding, Dalvey alleged that Bamberg’s claims were unpatentable for lack of written description, because the claims recite a white layer that melts at a wide range of temperatures, while Bamberg’s specification discloses a white layer that does not melt at ironing temperatures (i.e., below 220°C).

The Federal Circuit agreed that the contested claims are properly construed to encompass a white layer that melts above and below 220°C, and thus Bamberg’s specification must also support a white layer that melts above and below 220°C to satisfy the written description requirement.  The Federal Circuit concluded that substantial evidence supports the Board’s determination that Bamberg’s specification fails to meet the written description requirement.  Bamberg’s specification stated that the white layer “comprises or is composed of permanently elastic plastics which are non-fusible at ironing temperatures (i.e. up to about 220°C) and which are filled with white pigments—also non-fusible (up to about 220°C),” and that the “elastic plastics must not melt at ironing temperatures in order not to provide with the adhesive layer . . . an undesired mixture with impaired (adhesive and covering) properties.”  The Federal Circuit found that Bamberg did not possess a white layer that melts below 220°C because it specifically distinguished white layers that melt below 220°C as producing an “undesired” result.  This criticism effectively limited the scope of the disclosure.

In patents, as in life, Mom was right:  If you can’t say something nice about the prior art, don’t say anything at all.  Otherwise, your criticism may be treated as a disclaimer of claim scope.

A Defined Numerical Parameter Can Still Be Indefinite, If It’s Not Clear How to Measure It

In The Dow Chemical Co. v. Nova Chemicals Corporation (Canada), [2014-1431, 2014-1462] (August 28, 2015) the Federal Circuit applied the change of law exception to reject Dow’s bid for supplemental damages for infringements occurring after the original judgment — the change of law being the change of the standard of indefiniteness resulting from the Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).

The Federal Circuit found that its original decision would have been different under the new Nautilus standard.  The claims at issue require “a slope of strain hardening coefficient greater than or equal to 1.3.”  The patent explained that the slope of strain hardening
coefficient was a new Dow construct not previously known in the prior art, and is calculated by a given formula from the slope of strain hardening curve.  However, it turns out that the strain hardening curve is in fact curve, meaning it does not have a single slope.  .Nova complained that the patent fails to teach where and how the slope of strain hardening should be measured.  The Federal Circuit found that there were four ways to measure the slope, and that each of these four methods may produce different results, and because the methods do not always produce the same results, the method chosen
for calculating the slope of strain hardening could affect whether or not a given product infringes the claims.

Under Nautilus a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty,those skilled in the art about the scope of the invention.  The Federal Circuit held that “the required guidance is not provided by the claims, specification, and prosecution history.”  The Federal Circuit said that a claim term is indefinite if it “leave[s] the skilled artisan to consult the ‘unpredictable vagaries of any one person’s opinion.’” The Federal Circuit concluded that the claims here are invalid as indefinite, and the award of supplemental damages must be reversed.

While measured parameters with numerical values at first appear to be definite, patent drafters must be clear about how those parameters are measured — at least where the value can vary depending upon the method used.