Monthly Archives: October 2024

October 30, 2024

Posted on by

On October 30, 1888, John J. Loud a patent attorney and occasional inventor received U.S. Patent No. 392,046 on one of the first ball point pens.

This pen was not a commercial success, but others soon followed. None were very successful until Laszlo Biro’s ball point pen design, which received U.S. Patent No. 2,390,636 in 1945:

Ss influential was Biro’s design, that 79 years later ball point pens are called “Biros” in many parts of the world. In 1945 Milton Reynolds, an American businessman from Chicago, visited Argentina where Biros were being manufactured and bought some of Bíró’s pens. Reynolds returned to the U.S., and changing the design slightly to avoid Biro’s patent, and the “Reynold’s Rocket” went on sale at Gimbels on October 29, 1945. Initial sales were brisque, but ink leaks soon quelled the popularity of the pen.

The next big entrant on the ball point pen market was the Frawley Corporation, whose pen received U.S. Patent No. 2,734,484 on February 14, 1956:

The king of ball point pens, at least in the U.S., was Marcel Louis Michel Antoine Bich, who Bic pens were synonymous with ball point pens in the 1960’s and 1970’s. Bich received two design patents on ball point pen designs U.S. Patent Nos. D2024527 and D218492:

Bich also saw Biro’s pens in Argentina during World War II, and in 1944, licensed Biro’s design. Between 1949 and 1950, Bich’s design team at Société PPA designed the familiar Bic Crystal, which he launched in Europe in in December 1950,and in 1959 brought the pen to the American Market.

IIn September 2006, the Bic Cristal was named the best selling pen in the world after the 100 billionth was sold.

October 29, 2024

Posted on by

On October 29, 1872, James A. Risdon received U.S. Patent 132,602 on an improved windmill entitled Wind-wheel:

Until the 1870’s windmills were made of wood, the only metal being bolts and other small parts. Risdon’s “Iron Turbine” was the first all metal windwill, and appeared on the market in 1876. A few years later,

Henry H. Beville, patented (U.S. Patent No. 226265) another all-metal design in 1880:

Beville was a traveling salesman for a farm implement company in Indiana. He licensed the “Iron Duke” for manufacture and sale, making a substantial profit on his invention.

October 28, 2024

Posted on by

On October 28, 2003, Mason McMullin, Robert Bell, and Mark See obtained U,S, Patent No. 6,637,447 on the BEERBRELLA:

This was not the first attempt to shade a beverage. U.S. Patent No. 5,058,757 is on a Beverage Insulator with Retractable Shader:

U.S. Patent No. 5,115,939 protects a Insulated Beverage Container that features an umbrella:

U.S. Patent No. 5,186,196 protects a Beverage Shader with a pivoting umbrella:

October 27, 2024

Posted on by

Oon October 27, 1936, Gustav Bucky and Albert Einstein (yes, THAT Albert Einstein) received U.S. Patent No. 2,058,562 on a Light Intensity Self Adjusting Camera:

This was not Albert’s first experience with patents. In addition to being a patent examiner in the Swiss Patent Office (imagine trying to convince him that some invention was not obvious), he earlier patented a refrigeration system (U.S. Patent No. 1,781,541, with Leo Szilard:

October 26, 2024

Posted on by

On October 26, 1909, Frank G. Daggett and Edward G. Slinghart received U.S. Patent No. 938125 on a Hair Growing Device:

The patent explains “[a]s is well known, a fruitful source of loss of hair is the lack of ventilation or circulation of air within hats. The warmth of the head soon heats
the air within the hat and the presence of this warm air in contact with the scalp
causes the hair to lose its vitality and to fall out.”

The device comprises comprises “a receptacle having perforations therein and provided with means for attaching the receptacle to the body or crown of the hat, together with a sack or container for material in a dry or powdered form capable, when heated or moistened of evolving oxygen.” “In operation, the warmth and moisture of the head heats and moistens the air confined within the hat and gradually evolves oxygen from the ingredients contained within the sack.”

October 25, 2024

Posted on by

On October 25, 1966, U.S. Patent No. 3,280,710 issued to James O. Kuhn on a Corn Popper.

This corn popper was specially adapted for use with the Easy-Bake Oven that Kuhn also invented:

U.S. Patent No. 3,368,063 issued to Kuhn on February 6, 1968, on the Easy Bake Oven itself.

Kenner introduced the Easy Bake Oven on November 4, 1963. Originally available in yellow or turquoise, and powered by two 100 watt lightbulbs. The toy has morphed considerably over the years, with chaging designs and colors. The lightbulb heat source was eliminated in 2011, on fears that incadescent bulbs would become unavailable. The current version of the Easy Bake Oven, sold by Hasbro, resembles a microwave.

The Easy Bake Oven was inducted into the National Toy Hall of Fame in 2006

Infringement Claim under D-O-E Doomed by Lack of Specificity and Completeness of Expert Testimony

Posted on by

In Nextstep, Inc., v. Comcast Cable Communications, LLC, [2022-1815, 2022-2005, 2022-2113](October 24, 2024), the Federal Circuit affirmed the construction of the claim term VoIP, and the district’s court’s grant of judgment as a matter of law that there was no infringement under the doctrine of equivalents.

The appeal involved U.S. Patent No. 8,280,009 directed to a “digital butler” that controls consumer electronics based on audio data, which the jury found was not literally infringed, but was infringed under the doctrine of equivalents.  However, the district court set aside the jury verdict and granted judgment of non-infringement as a matter of law, finding the evidentiary record inadequate to support infringement under the doctrine of equivalents.  The district court primarily reasoned that the testimony of NexStep’s expert, Dr. Ted Selker, was too conclusory to sustain the verdict. Describing portions of Dr. Selker’s testimony as “word salad,” the district court concluded that Dr. Selker’s testimony lacked the specificity and analysis required by Federal Circuit precedent.  Among other things, the district court concluded that Dr. Selker failed to identify specific components in the accused products and failed to offer a reasoned basis for concluding that those specific components were equivalent to the relevant claim limitations.

At trial, the parties’ dispute focused heavily on the “single action” limitation in the claims. Comcast argued that the multiple actions—the several user button presses— required as a predicate to using any of the three troubleshooting tools meant that the My Account App did not infringe. NexStep focused its infringement theory on the view that a series of steps, when taken together, can be appropriately described as a single action.  The jury returned a verdict of no literal infringement, rejecting NexStep’s view that the series of user steps needed for each of the accused tools amounted to “a single action”) but found infringement under the doctrine of equivalents.

The Federal Circuit noted that patentees typically seek to prove infringement under the doctrine of equivalents in one of two ways.  One way, often referred to as the function-way-result test, asks “whether the accused product performs ‘substantially the same function in substantially the same way to obtain the same result.’” The other way asks whether “differences between the claimed invention and the accused device or process are ‘insubstantial.’”  However the test is phrased, courts must employ “special vigilance” to avoid overbroad applications of the doctrine of equivalents, because when applied to broadly, the

doctrine of equivalents conflicts with the definitional and public-notice functions of the statutory claiming requirement.  Thus, the Federal Circuit has imposed specific evidentiary requirements necessary to prove infringement under the doctrine of equivalents: First, proof under the doctrine of equivalents must be on a limitation-by-limitation basis.  Second, the evidence of equivalents must be from the perspective of someone skilled in the art, for example through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art.  Third, specificity and completeness of proof is crucial, there must be particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device.

After quoting a little more than a page of testimony, which it said was the only testimony it was aware of in which NexStep asserted infringement under the doctrine of equivalents, the Federal Circuit said that NexStep had to prove—with particularized testimony and linking argument—that the elements of the accused arrangement were substantially the same as the elements of the claimed arrangement.  The Federal Circuit noted that Dr. Selker’s testimony never identified a particular element or elements in the My Account App as being equivalent to the “single action” limitation.  The Federal Circuit concluded that Dr. Selker’s testimony simply does

not include a particularized identification of what elements in the accused device are equivalent to the claimed limitation.  The Federal Circuit said that the failure to explicitly identify the alleged equivalent is fatal to NexStep’s doctrine of equivalents theory.

Resolving the Licensing of Standards-Essential Patents Dispositive Over Infringement Issues

Posted on by

In Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., [2024-1515] (October 24, 2024), the Federal Circuit reversed and remanded the denial of an injunction against foreign infringement suits over standards essential patents, because resolving the licensing issue was dispositive of the infringement issue.

Lenovo and Ericsson had, for some time, attempted to agree on a global cross-license to SEPs of the other, which would include Ericsson’s 5G SEP.  When an agreement could not be reached, they resorted to litigation in and out of the United States.   Lenovo moved the district court to enter an antisuit injunction prohibiting Ericsson from, among other things, enforcing injunctions it obtained in Colombia and Brazil.  The district court denied the injunction using the framework from the Ninth Circuit’s opinion in Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012), which first determines that the parties and issues are the same in both the domestic and foreign suits, and the domestic suit must be dispositive of the foreign action to be enjoined.  Second, the domestic court considers whether at least one of the antisuit-injunction factors applies, including “whether the foreign litigation would (1) frustrate a policy of the forum issuing the [antisuit] injunction; (2) be vexatious or oppressive; (3) threaten the issuing court’s in rem or quasi in rem jurisdiction; or (4) where the proceedings prejudice other equitable consideration[s].” Finally, the domestic court considers the antisuit injunction’s impact on comity.

The district court concluded that the case before it was not dispositive of the foreign action, and it therefore denied the requested antisuit injunction without reaching the second and third parts of the analysis.  On appeal from that decision, the key dispute is whether the US suit is dispositive of the Colombian and Brazilian actions that were sought to be enjoined.  The Federal Circuit concluded that the US suit was dispositive of the Colombian and Brazilian actions.

Lenovo argued that Ericsson’s FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs. Thus, the “dispositive” requirement is met, because whether Ericsson has complied with its good-faith-negotiating obligation is an  issue that (1) is before the district court—both via Ericsson’s claims and Lenovo’s counterclaims Lenovo maintains that Ericsson’s FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs. Thus, in Lenovo’s view, the “dispositive” requirement is met, because whether Ericsson has complied with its good-faith-negotiating obligation is an issue that (1) is before the district court—both via Ericsson’s claims and Lenovo’s counterclaims; and (2) will, if decided in Lenovo’s favor (i.e., that Ericsson has not so complied), dictate the impropriety of Ericsson’s pursuing SEP-based injunctive relief.

Ericsson argued that the district court correctly concluded that, to meet the “dispositive” requirement, the instant suit must necessarily result in a global cross-license between the parties.

The Federal Circuit said that Ericsson and the district court got it wrong: Ericsson’s and the district court’s interpretation of what it takes to meet the “dispositive” requirement rests on a misunderstanding of Microsoft. The Federal Circuit saw nothing in the Microsoft district opinion that treated as “critical” the fact that the suit before it would result in a license. The court articulated the issues to be determined as both “whether Motorola may seek injunctive relief against Microsoft with respect to its [SEPs]” and “in the event Microsoft is entitled to a [worldwide RAND] license, what the RAND terms are for such a license.”  The Federal Circuit said that this was also true of the 9th Circuit’s opinion, noting that the discussion of the “dispositive” requirement focused on how Motorola’s RAND commitment affected its ability to seek SEP-based injunctive relief.

The Federal Circuit said that with this misunderstanding corrected, Microsoft leads to the rejection of Ericsson’s arguments regarding what it takes to meet the “dispositive” requirement. As to Ericsson’s argument that the domestic suit should resolve not just an injunction, but instead the entire foreign proceeding (e.g., by resulting in a license), that was not necessary in Microsoft.

October 24, 2024

Posted on by

On October 24, 1876, U.S. Patent No. 183725 issued to Seth E. Thomas (son and namesake of the founder of Seth Thomas & Sons clock making enterprise) on an Improvement in Clock-Cases.

The case was particularly adapted for the now familiar back-winding alarm clock. There were alarm clocks before this (and the patent indicates that “[t]he works need involve no novelty”). Levi Hutchins is credited with one of the first U.S. alarm clocks in 1787. The alarm on this clock had a preset time that could not be changed. U.S. Patent No. X7154 from 1832 on an Alarm Bell, For Time Pieces, Alarm Clock discloses a bell for an alarm clock. U.S. Patent No. 1956 from 1841 mentions the “common alarm clock.” U.S. Patent No. 9123 from 1852 is the first U.S. on an alarm clock per se.

October 23, 2024

Posted on by

On October 23, 1956, Harry W. Coover, Jr., was awarded U.S. Patent No. 2,768,109, on Alcohol-Catalyzed alpha-Cyanoacrylate Adhesive Compositions:

This patent was assigned to Eastman Kodak Company, which began selling Coover’s adhesive under the brand SUPER GLUE in 1958.

Coover received his B.S. from Hobart College and his M.S. and Ph.D. from Cornell University. Coover, and received more than 460 patents.