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What is a Provisional Application’s Prior Art Date?

By Stephen B. Schott

dreamstime_xs_49801971Provisional applications have a filing date and a publication date. How do you decide which date to use as prior art when using a provisional to invalidate or challenge a patent claim? Enter the Federal Circuit’s recent Dynamic Drinkware v. National Graphics decision.

Claiming Priority to a Provisional Patent Application

The law that governs a priority claim to a provisional patent application is a monster to parse but boils down to this: A nonprovisional patent application is entitled to its provisional application’s filing date if the nonprovisional application:

(1) was filed within 12 months of the provisional filing, and
(2) claims subject matter described in the provisional.

Of course, Congress wrote this out in an endearingly more complicated way.

35 U.S.C. 119 Benefit of earlier filing date; right of priority.

(e)
(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.
(2) A provisional application filed under section 111(b) may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.
(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional 2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.

As a practical matter, the USPTO only checks if the nonprovisional application’s filing date is within 12 months of the provisional’s—it rarely checks whether the provisional application provides a written description of what is claimed in the nonprovisional. The USPTO leaves that task for the time when another party challenges a priority date in post-grant proceedings or litigation.

The Complication of Using a Provisional as Prior Art

The Dynamic Drinkware case brings up a wrinkle: When and how can a provisional application be used as prior art?

National Graphics Lenticular Lens ExplanationDynamic Drinkware cited a patent called the Raymond patent as prior art against a National Graphics ‘196 patent involving lenticular lenses. The Raymond patent could only effectively be used as prior art against the ‘196 patent by going back to Raymond’s provisional filing date. FN1

As background to the non-patent attorney, provisional patent applications are not available to the public until a nonprovisional that claims priority to them publishes. Because of this provisional application unavailability, provisionals cannot be used as prior art against another patent or application until publication of the priority-claiming nonprovisional.

In this case, the Federal Circuit faced the question of whether the Raymond provisional could be used as prior art as of the provisional filing date against the ‘196 patent and took a route not seen before to answering “no.” The Federal Circuit adopted a two-step inquiry about whether the Raymond provisional application (on its filing date) was prior art to the ‘196 patent: (1) Determine whether the Raymond provisional provided written description to the Raymond patent claims and thus whether the Raymond patent had a proper priority claim, and (2) compare the provisional application disclosure to the ‘196 patent claims to determine invalidity (this second step was not necessary in this case).

In the first step, the Federal Circuit determined whether the Raymond provisional application had a written description that supported the Raymond patent claims. This inquiry looks to 35 USC 112’s requirement that “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” In comparing the Raymond patent claims with the Raymond provisional, the Federal Circuit found no such support existed. The court then concluded that the Raymond patent was undeserving of its provisional priority filing date.

That the Raymond patent was undeserving of its priority claim is not a point of particular interest for practitioners but the Federal Circuit’s conclusion based on it may be. The court went on to conclude the following: “A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.” This conclusion has created some confusion in patent circles  and needs the following insert to be exactly proper: “A provisional application’s effectiveness as prior art [as of the provisional’s filing date] depends on its written description support for the claims of the issued patent of which it was a provisional.” The reason for the insert there is that the moment a provisional becomes publicly available, that is, on the nonprovisional publication or grant date, the provisional application becomes potential prior art on that publication—not its own filing—date.

The Federal Circuit supports my revision because it did not care about whether the Raymond provisional showed every element in the ‘196 patent:

Dynamic failed to compare the claims of the Raymond patent to the disclosure in the Raymond provisional application. A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1. In re Wertheim, 646 F.2d 527, 537 (CCPA 1981). As Dynamic acknowledges, it provided charts to the Board comparing the claims of the ’196 patent to the disclosure of the Raymond patent and claim 1 of the ’196 patent to the disclosure of the Raymond provisional application. See, e.g., Appellant’s Br. at 22. Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. That was Dynamic’s burden.

This case will be fodder for future patent law class exams. Sorry in advance, law students.

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FN1: Only a patent practitioner would care to read this footnote. There is a little more to this because this is a Pre-American Invents Act case. The actual date conflict was between the Raymond provisional date and the ‘196 patent’s “reduction to practice” date.

Can You Get an International Trademark? The Madrid Protocol

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott

dreamstime_s_33927980If you have valuable intellectual property, you may want international protection. For your patents, you can file an application under the Patent Cooperation Treaty or with the European Patent Office. For trademarks, you will want to consider a filing under the Madrid Protocol.

The Madrid Protocol permits a trademark owner to use their registered trademark or a pending application in their home country as a basis to request registration of the mark in one of the Madrid Protocol countries.

Here is a short summary of the requirements and prosecution steps for a trademark filing under the Madrid Protocol.

Madrid Protocol Filing Requirements

(1) The applicant must have a registered mark or application in its home country.
(2) The applied-for mark in the International Application must be identical to the home country mark.
(3) The goods in the International Application and home country application/registration must be identical.
(4) The goods identified in the International Application must be the same as the goods in the home country application/registration.
(5) The named owner of the International Application must be the same named owner of the home application/registration.
(6) Of course, the applicant must pay appropriate fees.

Madrid Protocol Trademark Prosecution
Here’s a simplified flowchart of how the Madrid Protocol works:

Slide2

Applicants will want to note the following:
– Application is filed with the World Intellectual Property Organization (WIPO).
– If the application meets all formal requirements, WIPO grants international registration and forwards a request to all the country trademark offices designated by the applicant.
– Each country identified by an applicant will review the application in its own trademark office and grant or deny registration according to its own laws.
– Applicant can claim priority to the home country application if filed within 6 months of the home country filing.
– Applicant will save substantial money if there are no office actions issued against the mark (applicants may not have to engage attorneys in each country).
– Applicants cannot amend the drawing in an image mark during prosecution.
– Applicants cannot broaden the good/services beyond what was described in the home country application.
– Applicants cannot take any time extensions.

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The Happy Birthday Song, Batmobile, and Copyright Law

By Stephen B. Schott

Copyright law doesn’t change a lot but a pair of interesting cases came out recently involving some pop culture.

The Happy Birthday Song

dreamstime_s_17627706Are you one of those people who hears a story that sounds too interesting or curious to be true and just assumes it’s an urban legend? Do you hear a tall tale and immediately run it through Snopes? Me too. And the old “Happy Birthday” copyright tale definitely has the feel of an urban legend. It usually goes something like this:

“Did you know that every time someone plays Happy Birthday, they have to pay the guy who wrote it a dollar? And if they use it in a movie, they have to pay him a million dollars? It’s true. You can look it up.”

Ran that one through Snopes and you’ll get an article titled “HAPPY BIRTHDAY, WE’LL SUE” and an indication that the song is copyright protected. But a recent case changed that.

Good Morning to You Productions, owned by Jennifer Nelson, was working on a documentary about the song’s history when Warner/Chappell Music attempted to charge her $1,500 for the song’s use. Nelson argued the song is not protected by copyright and filed a class action lawsuit.

Federal Judge George King traced the copyright in the song. It started in 1893 when a school teacher named Patty Hill wrote a song with her sister. The song was called “Good Morning to You” and you can imagine the tune that goes along with it. The sisters gave their copyright to the Summy Company that published it in a song book.

At some point in the early 1900s, people started using the Hill sisters’ melody under the now-common “Happy Birthday” lyrics. No one knows who wrote these lyrics but in 1935, Summy Co. received a copyright for a version of the happy birthday song with the happy birthday lyrics.

Warner/Chappell acquired the rights to the copyright in 1998. Since then, the Happy Birthday copyright has generated $2 million annually in licensing fees. (Warner/Chappell donates a portion of these fees to a charity chosen by the Hill family.)

Considering Nelson’s case, Judge King ruled that “The Hill sisters gave Summy Co. the rights to the melody, and the rights to the piano arrangements based on the melody, but never any rights to the lyrics” and concluded that the copyright in the Happy Birthday lyrics was thus invalid.

Warner/Chappell can appeal the case so you can’t start using the song royalty-free in your blockbuster movie yet.

The Batmobile Lost Its Wheel

I would be happy with this for my car:

melfalc

But if you want to really trick out your wheels, you should go to Mark Towle’s Gotham Garage. The Gotham Garage recently got a court-induced makeover, however, and can’t offer any more Batmobile retrofits.

1941-pre-batmobile

(c) DC Comics 1941

The Batmobile’s history dates back to 1941, when it first appeared in a Batman comic book as a red car sporting a bat-shaped hood ornament. Since its introduction, it’s been Batman’s primary ride when he’s on the ground, making appearances in comic books, TV shows, and movies.

DC Comics, which owns the IP around Batman, sued Gotham Towle for copyright infringement in 2011, and the Ninth Circuit Court of Appeals recently held that the Batmobile is indeed a “character” protectable under copyright law.

The court held that the Batmobile “has varied in appearance over the years,” but it has certain identifying features such as (1) serving as Batman’s primary vehicle, (2) having features that give it a a bat-like appearance, (3) it is a vehicle that stands ready “to leap into action to assist Batman in his fight against Gotham’s most dangerous villains” (I can’t make these quotes up), and (4) hi-tech weapons and gadgets. The court concluded that these features render the Batmobile a “sufficiently distinctive” element of the overall Batman universe that is protectable under copyright law, and Towle’s Batmobile replicas infringed DC Comic’s copyrights in it.

In closing, the court quoted the caped crusader himself : “As Batman so sagely told Robin, ‘In our well-ordered society, protection of private property is essential.’”

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Prop Head Reads: What is Life: How Chemistry Becomes Biology

By Stephen B. Schott

41xeCImG44L._SX317_BO1,204,203,200_What is Life: How Chemistry Becomes Biology

Addy Pross

My friend Manoj recently said, “In 5 billion years, an atom learned to talk.”

This observation begs the question: How did the atom learn to talk? How did non-life become life?

Pross sets out to answer this question and in so doing addresses many obstacles, the largest of which is Newton’s second law of thermodynamics. If you’re unfamiliar with the second law of thermodynamics, it states that “In any cyclic process, the entropy will either increase or remain the same.” Some simplify it to state that ordered things tend towards chaotic over time and its inverse: Things that are chaotic will not tend towards order.

Take your kitchen. At some time, it is ordered: Every glass in the cupboard, every plate in its place. Over time, this ordered state (low entropy) will give way to more chaotic state (high entropy), where the plates have moved, cups shifted—and that’s even if your kids don’t move them around. Another way to think about the state of entropy in your kitchen is that there are only a few ways that it can be set up in an orderly way, while there are an infinite number of ways it can be in a chaotic state. Thus, there is a really small chance of a low entropy ordered state.

And yet living organisms are like the clean kitchen: Ordered and arrived at from an earth of 5 billion years ago that was a bundle of happy chaotic atoms. What would motivate, drive, or otherwise suddenly bring order to these atoms, swimming against the tide of the second law of thermodynamics, which is immutable in other contexts?

dreamstime_s_58460123Pross’s theory is that life is a natural consequence of the second law. Remember that the second law of thermodynamics permits low entropy ordered states, however improbable they may be. And what’s more, some of these low entropy ordered states may be highly persistent.

Pross discusses the example of certain chemical replicators. RNA, for example, is a nonliving complex chemical compound with an incredible property: It can create copies of itself. What’s more, in creating these copies, it also creates RNA variants of itself. Some of those RNA variants are better at replicating than the original, and thus may replicate faster and cause the original RNA copies to disappear over time, leaving the RNA variants as the stable form of RNA.

What does RNA, this nonliving chemical do? Replicate, vary, compete, and stabilize. It evolves.

Evolution into something highly replicable and stable may thus be a natural manifestation of chemistry. And from this it is Pross’s theory that one of the natural steps in chemistry is that nonliving chemicals can form replicable and stable chemicals that we call life.

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How To Tell Someone to Stop Infringing Without Getting Sued

By Stephen B. Schott
An Article in Schott, PC’s IP Law for Startups Series

dreamstime_xs_4693108Dear Dr. Jones,

It has recently come to my attention that your product, the Gadgetron, may infringe our client’s [patents, trademarks, copyright]. In order to avoid a costly lawsuit, during which you would have to pay large sums of money and which could result in the loss of your business, my client is willing to offer you a nonexclusive license under the attached terms. If you execute the license and send the payment mentioned in section 4, we will consider this matter closed…

No one wants to receive a cease and desist letter like this and few people are all that excited about sending them. But if you send a cease and desist letter, it’s good to know the risks and how to craft one to avoid getting yourself hauled into court before you’re ready.

Sue me? No, I’ll sue you [for punitive damages you’re giving me]

It may seem unfair that someone who is infringing your intellectual property could sue you—but the Declaratory Judgment Act allows a party to bring an action for non-infringement or invalidity when “a case of actual controversy” exists between parties. The rationale is that the accuser should be allowed to clear their name and the declaratory judgment action (or DJ action as they are often called) allows a person accused of infringing to do just that.

The accused infringer has at least two advantages in a DJ action: (1) The DJ action allows the accused infringer to pick the court most convenient or advantageous to it, and (2) The accused infringer is suddenly on the front foot and may take the accuser by surprise.

What can you write in your cease and desist letter to avoid a DJ action?

If you own IP and want to send a cease and desist letter but avoid a DJ action, you must tread carefully: The courts have set a low threshold for what constitutes enough conduct to invite a DJ action. The Supreme Court’s Medimmune DJ test asks whether “the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” That’s a mush-mouth full of dependent clauses but the critical language is whether the accuser’s conduct creates “sufficient immediacy and reality” about a legal controversy. In layman’s terms: Are you afraid that you might get sued?

The courts have left a few breadcrumbs signaling how to avoid writing a letter that gives rise to a DJ action. The Supreme Court left a helpful hint in Medimmune:

[A] communication from a patent owner to another party, merely identifying its patent and the other party’s product line, without more, cannot establish adverse legal interests between the parties.

The Federal Circuit gave another helpful piece of advice when it advised that an accuser may avoid a DJ action if it conducted pre-filing discussions under a confidentiality agreement, since discussions under such an agreement would be inadmissible. (3M Company v Avery Denison Corp.)

Thus, a letter written something like this could well avoid creating a “sufficient immediacy and reality” of a threat:

Dear CEO,

Our client is the owner of US Patent 6,332,840. While reviewing your website, we recently came across your product, the Awesome Toy.

We would like to discuss the patent and this product line and suggest that doing so would be best done under a confidentiality agreement [the confidentiality agreement should include a clause prohibiting either party from filing a lawsuit during some term—see Biomet, Inc. v. Bonutti Skeletal Innovations, LLC.], attached hereto. Please let us know if this is acceptable by returning the signed agreement to us, and we will countersign it and arrange a time to discuss this further.

Sincerely,

Matlock

Even a toothless letter like this might not avoid a DJ action because whether a case or controversy exists is decided on a case-by-case basis. But the above letter follows courts’ specific advice on how to craft a letter to avoid a declaratory judgment lawsuit, namely:

Cease and Desist Letter Ingredients to Avoid a DJ Action
(1) It identifies a patent and a product line, without accusation of infringement.
(2) It includes a nondisclosure agreement, which would mean that any conduct after the nondisclosure agreement’s signing (and during its term), such as a specific allegation of infringement, would not be admissible to support a DJ action.
(3) It might include a provision to specifically not sue for a period of time.

A letter that includes these may be safe to send, although I can’t say it enough: The bar for a DJ action is low and each case is decided on its own set of facts.

How low is the threshold to support a DJ action? Oh, it’s low alright.

dreamstime_xs_51369762Take the case of Hewlett-Packard Company v. Acceleron LLC as a warning when crafting your cease and desist letters.

On September 14, 2007, Acceleron sent a letter to HP identifying its patent and certain products of HP. So far, so good under Medimmune. Acceleron also requested an agreement that “all information exchanged between the parties will not be used for any litigation purposes whatsoever…or [that it] otherwise created any actual case or controversy regarding the enclosed patent.” Acceleron gave a two-week deadline for reply but did not specify what it would do if HP failed to respond.

On October 1, 2007, HP responded and suggested that it would not file a DJ action for 120 days in exchange for Acceleron agreeing not to file any action against HP during the 120 days.

On October 5, 2007, Acceleron responded with its own letter arguing that HP had no basis for a DJ action and again requested that HP respond within 2 weeks—again without threat of what it would do if HP failed to respond. Acceleron appears to be trying hard to avoid the DJ action in these letters, nevertheless, on October 17, 2007 HP filed a declaratory judgment action for non-infringement and invalidity of Acceleron’s patent.

Weighing all the facts, the court held that “it was not unreasonable for HP to interpret Acceleron’s letters as implicitly asserting its rights under [its] patent.” According to the court, Acceleron’s conduct permitted HP’s right to bring the DJ action:

  • Acceleron asserted that a patent is “relevant” to the other party’s specific product line
  • Acceleron imposed a “short deadline” for a response
  • Acceleron insisted that HP not file suit
  • Accelerant ignored HP’s request to not sue for 120 days
  • Acceleron is a licensing entity (i.e., a patent troll)

As was suggested in Medimmune, the Federal Circuit noted that “a communication from a patent owner to another party, merely identifying its patent and the other party’s product line, without more, cannot establish adverse legal interests between the parties,” which supports the guidance that the toothless letter proposed above may avoid a DJ action.

What to do if you don’t want to write the toothless letter

dreamstime_xs_32521830If you don’t want to write the nonthreatening letter above but also don’t want your accuser to choose the forum in which to file a DJ action, you can file your own lawsuit first in the forum of your choosing. You don’t have to serve your complaint immediately, so if the accused infringer files a DJ action after your filing but before your filing expires, you will be in a lawsuit, but at least in a forum of your choosing.

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© Davisales | Dreamstime.comIndiana Jones Caricature Photo

Prop Head Reads: The Martian and A Brief History of Time

by Stephen B. Schott
(You can view my non-prop-head book thoughts here)

martianThe Martian

by Andy Weir
(The Martian started as a personal blog writing project for Weir and its evolution from blog to book to a soon-to-be movie starring Matt Damon is a great story in itself.)

You know the scene in Apollo 13 where a bunch of engineers at NASA are locked in a room with a box of the supplies available to the astronauts and have 7 hours to figure out how to fix the filter or the astronauts die?

Well, there are generally two kinds of people. Those who have no connection to to the scene except a vague memory of it and those who think that scene is the best part of the movie.

If you’re in the latter camp, you will love this book.

Engineers and scientists usually don’t make for great novel heroes. To make them exciting, they get a Hollywood makeover and a flying tin suit that shoots lasers. And a supermodel girlfriend. But this book does the engineer hero justice: Showing off our hero’s wits (stranded alone on Mars) and those of the people back on Earth trying to help him stay alive.

The Martian (Mark Watney) approaches each of his many challenges with an engineer’s ingenuity and even if you can’t follow all the science, you’ll appreciate his mind and attitude. If his unfailing problem solving seems a little hard to believe at times, watch an action hero dodge automatic weapon fire in an action movie and tell me which is the greater exaggeration.

A gripping original.

hawkingA Brief History of Time

by Stephen Hawking

This was my 3rd attempt at this book. I finished it this time. I have to ask myself on your behalf, dear reader, “Why would you give 5 stars to a book that you could barely comprehend and could not finish 2 other times?” First, I’ll start from the premise that I have to take on some faith: Hawking knows what he’s talking about. Working from that premise, I felt reassured and on comfortable ground as he reviewed quantum mechanics, the uncertainty principle, strong and weak forces, and lots of the Einsteinian stuff that it has taken me years to absorb (and that I was better at when I could do all the math).

Second, building from those premises that I am comfortable with, Hawking helped me move the ball forward on the idea of multidimensional space, the event horizon (I finally get this, thanks to Hawking), the concept of time and the Big Bang, the stability of the universe, and the time arrows he discusses towards the end.

But man, there’s some stuff that still escapes me, all these years after first studying them even when I still had the big math muscles. (1) There’s much around black holes I still don’t get. Hawking is the Mr. Miyagi of black holes in the physics world but he can talk all day about spherical black holes, spinning black holes, etc., and whoosh, right over my head. (2) The idea of imaginary time and the sum of histories. I understand the latter a little bit mostly because I remember the math that describes them that made the universe explicable, but conceptually outside the math I really don’t grasp these even a little. (3) Really, again I have to deal with virtual particles and spins? Whoosh again.

This book is not for the faint of heart. If you want a shorter and more accessible trip through physics, try Feynman’s Six Easy Pieces and Six Not So Easy Pieces books. Both are incredible and not as dense. The former explores Newtonian physics (anyone can get those concepts), the latter Einsteinian theories and quantum mechanics, which require a deeper preparedness.

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Federal Circuit Broadens Application of 35 USC 112(f)

By Stephen B. Schott

Federal-Circuit-cafcUS courts interpret patent claims written in a specific way under a special claim interpretation statute. Claims written in this way include “means plus function” elements that courts interpret under 35 USC 112(f) (often referred to as 35 USC 112(6)).

Most patent practitioners in the US avoid means plus function style claims but they are common in other parts of the world, particularly Europe, and thus sometimes make it into US applications that originate overseas. Further, means plus function claims can be found when a court reads a claim as not explicitly invoking the means plus function statute.

A recent Federal Circuit en banc case shed some light on identifying means plus function cases.

Interpreting Means Plus Function Claims

The statute that governs means plus function claim interpretation reads as follows:

Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Such a claim element might read like this:

“release means for retaining the guide in the charged position.”

A court interpreting such a claim follows 35 USC 112(f) above and first identifies the claimed function and then looks to the patent specification for the structure that performs this function. From the patent owner’s perspective, this method of claim interpretation is potentially problematic for two reasons: (1) If the specification fails to show a corresponding structure, a court will consider that the means plus function term is indefinite and the claim is invalid, or (2) The structure in the specification often provides a narrower interpretation of a claim element than the patent owner would want.

Thus in the US, many patent drafters try to avoid means plus function claims. Dennis Crouch at Patently O has charted an ongoing decline in the number of claims that use means plus function language (and interestingly the number of patents using language that is functional but lacks the magic “means” word has increased.)

Unclear Claims May Be Interpreted as Means Plus Function Claims

The Federal Circuit’s en banc Richard A. Williamson v. Citrix Online, LLC opinion may make it a little more challenging to avoid interpretation under the means plus function statute.

In the claim at issue, the element that the Federal Circuit scrutinized to determine if it was written in means plus form was this:

a distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.

If the claim had been written as a “distributed learning control means for receiving…” its interpretation as a means plus function would be clear. But because the claim used the word “module,” the issue arose as to whether the court should apply 35 USC 112(f).

dreamstime_xs_2123998The court reviewed its precedent and in particular, a line of cases that held that where a claim does not use “means,” there is a “strong” presumption that 35 USC 112(f) does not apply. It rejected this “strong” presumption and adopted a slightly broader view of when 35 USC 112(f) applies:

The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Greenberg, 91 F.3d at 1583. When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Watts, 232 F.3d at 880. The converse presumption remains unaffected: “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.” Personalized Media, 161 F.3d at 703.

The court found that the limitation was subject to interpretation as a means-plus-function limitation. As noted above, these means-plus-function limitations require disclosure in the patent specification of adequate “corresponding structure” to perform the claimed function. The court found that the specification failed to disclose this structure and held the patent invalid.

The takeaway is that if a claim drafter wants to avoid the means plus function claim interpretation rules, they should draft claims that steer further from any linguistic construction that is similar to the traditional means plus function language.

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Practical Topic: Systems of Personal Organization

By Stephen B. Schott

dreamstime_s_16832059You know when you have a thread hanging from a sweater. You give it a tug hoping it will snap off. But it doesn’t. So you pull a little more. Then a little more.  It will snap…it will snap… and you keep pulling…but deep down you know this sweater disassembly cannot be good. Before long your persistence at pulling the thread results in a ruined sweater.

This thread pulling, according to David Allen, the author of the best-selling book Getting Things Done, happens in your mind, too. It’s like this: Have you ever gone through your mental to-do list, just picking at one item in your mind? That thing you haven’t done leads to thinking of another, and another, and another—and before long you are undone with anxiety over not only the things you remember, but all the other things you know you’re forgetting.

Take it a step further. I graduated from school more than 20 years ago. But still, a few times a year, I have the dream that I’m showing up for class and there’s a test that I somehow forgot about. I never wrote down the test date, never studied. It’s a terrible feeling and I wake up a bundle of nerves. More than two decades after my last class, this nightmare still holds power over me, and it’s a shared, recurrent nightmare among people who attended school. The nightmare of the forgotten task.

In some way, everyone relates to one or both of these stories. It’s part of our shared human anxiety. An anthropologist might link it back to an evolution where Caveman Ug forgets to bring his spear while out picking berries and gets attacked by a hungry lion. Anxious thread-pulling Ugs lived. Carefree non-thread-pulling Ugs died. And that’s why we’re a mess. Whatever the evolutionary basis, this problem of the “to-do list anxiety” is one we share.

The problem with To-Do List Anxiety, however, is that it no longer keeps us alive. In a modern world, it leaves us neurotic and anxious. Given its long history, you might think that humanity’s best minds have come up with a way to address To-Do List Anxiety, right?

Looking at some of our earliest written forms of moral code and psychological guidance, I cannot find any guidance on this topic in the Christian Bible, Jewish Torah, Muslim Koran, or an admittedly limited reading of Hindu texts. Buddhism most clearly articulates what the others mention about finding peace of mind and spirit. In Buddhism, a practitioner finds peace of mind through quiet meditation. The other religions offer versions of meditation in prayer and ritual. Which is all completely excellent…but as I sit on my meditation mat in the morning, the emails are piling up, my voicemail overflows, and my meditative peace is only a calm between an assault of things to do.

dreamstime_xs_50654310As someone seeking to maintain some semblance of that spiritual calm in the face of this to-do list assault, I have made a long study of personal organization systems. It’s kind of an obsession. In this study, I’ve read books, watched videos, attended seminars, and observed other people’s systems. Oh yes. I know your system. You probably fall into one of the following categories.

TYPICAL ORGANIZATIONAL SYSTEMS (NOT RECOMMENDED)

  1. The bound journal person. You carry a bound journal and you know it gives a level of confidence to the people around you. In a meeting, other people see you with the journal and think, “Ah, that fellow inspires great confidence. He’s organized. He will get things done.” But here’s my further observation: In my life, I have never once seen you refer back to one of these bound journals beyond a day later than the meeting. Seriously: How practical is it to go through your journal trying to find a single page from 8 months ago? And what way is it to organize your to-do lists? If you fill one of these books (something I’ve rarely seen), will you carry volumes of journals with you everywhere for future reference?

Style: 7
Effectiveness: 3
Recommended for: Captain of an ocean-going ship

  1. The post-it person. If you’re at wodreamstime_xs_47922230rk, look to your right. Look to your left. There are people all around who, just like you, are using post-it notes to keep track of tasks. And the notes end up stuck to your computer monitor looking like a seashell picture frame of neurosis. The notes also end up on handbags, doors, steering wheels, bathroom mirrors. All over. Take a long look at the computer monitor and ask yourself: Do you ever take down the notes? Can those notes travel with you? What focus can you maintain when all around you are notes shouting, “Pick-up dinner,” “Dentist appointment at 9am,” and “Call mom about yoga.”

Style: 0
Effectiveness: 6
Recommended for: Owners of 3M stock

  1. The get organized app of the day person. I love you. I relate to you. When it comes to self-improvement apps, I am a model of self-experimentation so I relate to you trying the new “Get organized” app du jour. But your phone is constantly beeping and reminding you of things. You carry this app everywhere. But. Yes there’s a but. It hurts but you know this is true. One week later. Maybe 3 days later, your app sits on your phone unused. It’s still reminding you of all the things you’re not doing. But those things were due 3 weeks ago. Every phone buzz is a reminder that you are a complete organizational failure.

Style: 4
Effectiveness: 6
Recommended for: Teenagers who love video games

  1. The “I keep it all in my head” person. You have a mind like a steel trap. You sort it cleanly and neatly in your head and systematically prioritize everything and get it done on time. You are age 5 or under.  Your “To-Do” Anxiety is limited to: (1) Need food, (2) need fun, and (3) need sleep.

Style: 10
Effectiveness: 10
Recommended for: 4 year olds and supernatural beings

IMPROVED ORGANIZATIONAL SYSTEMS (RECOMMENDED)

After studying and reading over 20 years, I can recommend only two systems, and I use a hybrid of them. It’s better if you check them out and decide which one works better for you.

System One: The Franklin Planner and Seven Habits of Highly Effective People

51toHpibB3L._SX258_BO1,204,203,200_Stephen R. Covey wrote one of the best-selling books of all time: The Seven Habits of Highly Effective People. For a long time, the title turned me off. It sounded like a study of rich business owners. But it’s not. It’s an effective manual for how to lead a purpose-driven life. He presents a system that helps a person define their own personal mission and beliefs in a Personal Mission Statement, and then helps people identify and achieve goals that follow their personal mission.

Covey’s 7 habits essential for living a principled and fulfilling life are the following:

Independent habits

  1. Be proactive.
  2. Begin with the end in mind. Focus on your goals and work towards them.
  3. Put first things first.

Interdependent habits

  1. Think win-win. This is all about finding ways to work with others that benefit both sides.
  2. Seek first to understand, then be understood. Use your empathy and listen.
  3. Synergize. Find the strengths of those around you and create teams that can achieve remarkable success.

Continuous improvements

  1. Sharpen the saw. Balance and renew your energy and mind.

In conjunction with the book, Covey created a tool: The Franklin Planner, named for Benjamin Franklin, one of the originators of self-improvement and time management in the Covey style. From 1996 until about a year ago, I faithfully carried a Franklin Planner. It’s a daily planner but with sections organized to help implement the seven habits, and to use it properly requires a little training. It’s 100 times better than the plain bound journal.

Bottom line. Covey’s system is for someone who wants to control more than their “to-do” list and is willing to embark on a mission to make their life more meaningful. Done right, his method not only helps you get things done but also helps you live a more fulfilled life. The downside is its lack of technology incorporation. In an era of endless technology, carrying around a planner can seem a little old-fashioned. That said, it’s not as distracting in meetings and there’s something rewarding about using pen and paper.

System Two: Getting Things Done (GTD)

GTDCover4About 5 years ago, I finally read Getting Things Done by David Allen. I was entrenched in the Franklin/Covey system at the time and skeptical about an entire book dedicated to just dealing with your list of “to-do” items. My skeptical and Franklin Covey cult-trained mind asked, “How will this align with my core principles?” At the same time, I was getting 140 emails for work daily and my “to-do” list always seemed like an impossible-to-scale mountain.

To climb the insurmountable To-Do list mountain, the initial step in the GTD system is the one that resonates with most people. The very first thing you are supposed to do is set aside some time and find a quiet place with sheets of blank paper and a pen. Then…data dump all of your tasks onto the papers. Write down everything you can think of that you have to and want to do. All the things you’re waiting for from others. Long-term tasks. Short-term tasks. Allen provides many prompts to help you get it all out. Just write and write and write until you can’t think of another thing you need to do that is not on that list.

Pause for a moment in this article and imagine that. Imagine you’ve just written out everything you currently need to do. There’s a record of it. You don’t have to wonder about all the things you’re overlooking. It’s captured somewhere. Does that sound appealing? Does peace of mind spring forth from easing up on the worried windmills of your mind? I’ll bet it does.

The remainder of the GTD system is a workflow for organizing and processing this list and additions to it. The GTD system fits in well with many software systems (like Outlook and Gmail), and has a superb and free implementation in Evernote (so it’s on your phone, laptop, and cloud) called The Secret Weapon.

Bottom line. The GTD system is great but incredibly complicated to implement. The Secret Weapon simplifies GTD and provides a technology that puts it to its best use.

WHAT DO I DO?

I use The Secret Weapon’s implementation of GTD within Evernote in conjunction with The Seven Habits to drive my priorities. In meetings, I carry a Livescribe notebook and use their proprietary pen to take notes, which then automatically transfer into Evernote. I do this to avoid looking at a screen while talking to people. My system is not for everyone but one, both, or your own combination of these tools and systems will help you feel more organized and fulfilled. Whatever you do, stop pulling threads.

If you have questions, contact me.

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Fitting Software Claims Into Statutory Categories

By Stephen B. Schott

uscodesuppMost patents and applications directed at software frame the claims in terms of processes. This is a safe choice because the US Code that defines patentable subject matter limits the number of categories for what is patentable:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Software, unless it has specific ties to machines, generally falls within the “process” category, if claimed properly. The Federal Circuit elaborated on this in Allvoice Developments US, LLC v. Microsoft Corp. where it decided that certain software claims were not patentable subject matter because they did not fall into one of the above categories.

The patent claims at issue

Specifically, the court considered these two claims:

A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different computer-related applications, the universal speech-recognition interface comprising:
input means for receiving speech-recognition data including recognised words;
output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text; and
audio playback means for playing audio data associated with the recognised words.

A speech-recognition interface that enables operative coupling of a speech-recognition engine to a computer-related application, the interface comprising:
input means for receiving speech-recognition data including recognised words;
output means for outputting the recognised words into a computer-related application to allow processing of the recognised words as input text, including changing positions of the recognized words; and
means, independent of the computer-related application, for determining positions of the recognized words in the computer-related application.

The analysis under Section 101: Are the claims directed to a process, machine, article of manufacture, or composition of matter?

Without much analysis, the court merely stated that the claims were not directed to a process, then considered the other categories: “To be considered a machine under section 101, the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.” Similarly, “[t]o qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles.”

The court reached this conclusion over the argument from the patent owner “that the claimed software must necessarily be in a machine readable, physical state in order to exist, and that the district court therefore should have concluded that these claims are directed to [an article of] manufacture, one of the four categories of patentable inventions.”

The Federal Circuit responded to this by following its own precedent that “instructions, data, or information alone, absent a tangible medium, is not [an article of] manufacture.”

Nonprecedential Opinion

Daffy_DuckThe Federal Circuit can make any opinion nonprecedential, which means that the court considers the opinion to “not add significantly to the body of law.” While parties may cite nonprecedential decisions before the court, the court “will not give one of its own nonprecedential dispositions the effect of binding precedent.” In short, the court doesn’t have to follow the decision, or as Daffy Duck might say (in an exercise that I’ve just discovered is called shm-reduplication), “Rules shmules.”

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Client buzz: Check out The Bee Book

By Stephen B. Schott

The Bee Book is a beautiful book by Matthew Holbein and Emily Brooks of The Foliage Library, one of our clients who fulfills our mission to make the world a better place, one idea at a time.

Here’s their Kickstarter The Bee Book Campaign and related video.

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