She indicated that the practice of the law firm, Winstead, of making limited copies of articles owned by Wiley & Sons, the American Institute of Physics, and Blackwell Publishing Ltd. for use associated with patent prosecution before the USPTO is protected by fair use under current U.S. copyright law. The law suit was filed against Winstead in April 2012.

Attorneys and law firm staff do not infringe the copyrights protecting scientific articles. Making copies and reviewing the literature for use in patent applications is acceptable. The law firm is not obligated to buy a license. Sending copies of the articles to the U.S. Patent and Trademark Office as prior art is also acceptable fair use.

Winstead argued that law firms do not directly profit from incidental copying, whether on paper or digitally, of articles its attorneys review while working on patent prosecutions, and then in turn, bill their clients for the time spent reading these copied articles. Winstead successfully convinced the judge that it could not be held liable for alleged “intermediate profit” earned by billing for time spent reading the unlicensed copies.

Judge Lynn called it “unimaginable” that a lawyer would be required to strip down a government document like a USPTO response to an office action to remove a copyrighted article before sending it to a client.

The USPTO has intervened in the three 2012 lawsuits addressing this issue. In this case, the USPTO told Judge Lynn its view is that Winstead’s activities fall “comfortably within” the right to make incidental and necessary copies.

Judge Lynn said she would write an opinion detailing her analysis of the fair-use factors. The judge did not rule as to violation of copyright when a firm sends articles to other nations’ patent offices. However, she cautioned that if the other countries have a similar patent process to that of the U.S. whereby applicants are required to submit evidence of prior art, she would likely find such copying also to be a fair use of the copyrighted scientific articles.

Procedurally, Biosig sued Vancouver, Wash.-based Nautilus for patent infringement in 2004 based on its U.S. Patent No. 5,337,753. The ’753 patent covered a device that can give a reading on a person’s heart rate while on a stationary bike, treadmill or other cardio machine.

In turn, Nautilus filed a request with the U.S. Patent and Trademark Office (USPTO) to re-examine the patent. Nautilus argued that the invention was not novel and the claims had already been disclosed in prior written references. Both parties voluntarily dismissed the litigation while the USPTO reviewed the patent. In June 2010, the office ruled for Biosig and found the claims were patentable – the claims survived unamended.

The ’753 patent is directed to a heart rate monitor that purports to improve upon the prior art by effectively eliminating noise signals during the process of detecting a user’s heart rate. ’753 patent col. 1 ll. 5–10. In relevant part, claim 1 recites as follows:

1. A heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures, comprising;
an elongate member;
electronic circuitry including a difference amplifier having a first input terminal of a first polarity and a second input terminal of a second polarity opposite to said first polarity;
said elongate member comprising a first half and a second half;
a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other;
a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other . . .

After the re-exam proceedings, on 8 October 2010, Biosig re-instituted a patent infringement action against Nautilus. On 11 August 2011, the district court conducted a Markman hearing, and on 29 September 2011, issued its order construing certain disputed claim terms.  The order included a construction of the disputed term, “spaced relationship.” According to the Federal Circuit, “the district court nonetheless determined that ‘space relationship’ was ambiguous, and therefore, found Biosig’s contentions pertaining to this term unpersuasive,” and cited to J.A. 1391:15–21 (August 11, 2011 Markman Hearing).

On 10 November 2011, Nautilus moved under Federal Rule of Civil Procedure 56 seeking
summary judgment on invalidity for indefiniteness. The district court granted Nautilus’s motion, holding that the ’753 patent’s “spaced relationship” term as recited in claim 1 was indefinite as a matter of law. Summ. J. Hr’g Tr. 51:21–52:1. The district judge pointed out that the patent failed to give any specific measurement, such as which fingers each electrode should correspond to on each hand, or indicate whether the spacing should be the same on both handles. The spacial relationship, he said, wasn’t “distinctly and particularly claimed.”

On appeal, the Federal Circuit reasons that the disputed term “spaced relationship” does not suffer from indefiniteness. Because the term was amenable to construction, “indefiniteness here would require a showing that a person of ordinary skill would find ‘spaced relationship’ to be insolubly ambiguous—that it fails to provide sufficient clarity delineating the bounds of the claim to one skilled in the art.” The court further reasoned that “a skilled artisan would find such boundaries provided in the intrinsic evidence . . . .”

According to current U.S. patent law, 35 U.S.C. § 112, ¶ 2, requires that the specification of a patent “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” However, according to case law, a claim is indefinite only when it is “not amenable to
construction” or “insolubly ambiguous.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (internal quotations and citations omitted).

In this case, in reference to the issued patent, the Federal Circuit found that the language of the specification and the diagrams showing where the electrodes should be “are telling and provide sufficient clarity” to avoid a finding of indefiniteness. The Federal Circuit reasoned that the explanation of how the heart monitor functioned gave enough of a sense of what “spaced relationship” meant. Even if the term, taken alone, was imprecise, its parameters were limited by virtue of the fact that the electrodes could only be so far apart and still work.  The Federal Circuit further reasoned that “[t]he claimed apparatus has inherent parameters where the ‘spaced relationship’ cannot be larger than the width of a user’s hand.”

General principles of claim construction apply when determining indefiniteness. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332–33 (Fed. Cir. 2010). The Federal Circuit reminded us that courts should primarily consider the intrinsic evidence consisting of the claim language, the specification, and the prosecution history. In addition, similar to claim construction, courts may consider certain extrinsic evidence in resolving disputes regarding indefiniteness. Exxon Research & Eng’g Co., 265 F.3d at 1376 (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)); see also Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119-20 (Fed. Cir. 2002) (recognizing that guidance as to measurement of a term of degree can come from the intrinsic record or from the knowledge of a person of ordinary skill in the art).

The Federal Circuit reminded us that “If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which
reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.” Exxon Research & Eng’g Co., 265 F.3d at 1375.

The Federal Circuit further reasoned that “inquiries as to the size of the users’ hands, placement of fingers, and the ‘composition of the handle’ may be relevant, if at all, to
issues that relate to enablement under § 112, ¶ 1, not indefiniteness under § 112, ¶ 2, because they are directed to the operability of varying embodiments of the claimed
heart rate monitor, not to the precision of the claims at issue.” The Federal Circuit concluded that the “district court viewed ‘spaced relationship’ in a vacuum by choosing to turn a blind eye to the functional aspects of claim 1.”

There are a few lessons from this opinion. Patent writers need to put as much detail in the specification as possible. In this case, the abundant figures and description were persuasive to imply intrinsic evidence and perhaps will lead the trial court to consider some extrinsic evidence. Further, the claims should sufficiently explain the relationships between the various parts of the claimed invention. Finally, this opinion shows that claims may be written in a variety of ways and still be upheld and enforceable. Writing several sets of apparatus claims is best.

ELECTRIC DEVICE
Abstract
An electronic device comprising a processor 4 and a connector 2 for connecting an external device to the electronic device. The connector has a plurality of electrical contacts 23-27 at least one of which 23 is connected to the processor 4. The processor 4 is arranged to monitor the status of a first electrical contact 23 and to determine the type of external device connected to the connector 2 in dependence on the status of the first electrical contact 23.

Titles

MPEP 606 and 37 C.F.R. 1.72(a) address the proper content of the title for a patent application. In part, 37 C.F.R. 1.72(a) states,”[t]he title of the invention . . . must be as short and specific as possible.” The MPEP instructs that a “title should be brief but technically accurate and descriptive and should contain fewer than 500 characters.” The words “improved,” “improvement,” and the articles “a,” “an,” and “the” should not be included as the first word of the title of the invention. In fact, the articles “will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.”

The MPEP states that where the “title is not descriptive of the invention claimed, the examiner should require the substitution of a new title that is clearly indicative of the invention to which the claims are directed,” (emphasis added). Thus, applicants and patent practitioners should not try to obscure their invention – and frustrate the intent of the patent system – by giving readers worthless titles. In my opinion, the title of US Pat. Pub. No. 2002/0125893 is not sufficiently descriptive and should be changed.

Abstracts

MPEP 608.01(b) and 37 C.F.R. 1.72(b) address the Abstract of the Disclosure for patent applications. In part, 37 C.F.R. 1.72(b) states that an abstract “may not exceed 150 words in length,” and that “[t]he purpose of the abstract is to enable the United States Patent and Trademark Office [USPTO] and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure,” (emphasis added).

MPEP 608.01(b) further states that the “examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification.” It further states that, “[u]pon passing the application to issue, the examiner should make certain that the abstract is an adequate and clear statement of the contents of the disclosure,” (emphasis added).

MPEP 608.01(b)(B) states, “[t]he content of a patent abstract should be such as to enable the reader thereof, regardless of his or her degree of familiarity with patent documents, to determine quickly from a cursory inspection of the nature and gist of the technical disclosure” and “should include that which is new in the art to which the invention pertains,” (emphasis added).

MPEP 608.01(b)(B) gives further advice:

• A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains.
• If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure.
• If the patent is in the nature of an improvement in old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement.
• In certain patents, particularly those for compounds and compositions, wherein the process for making and/or the use thereof are not obvious, the abstract should set forth a process for making and/or a use thereof.
• If the new technical disclosure involves modifications or alternatives, the abstract should mention by way of example the preferred modification or alternative.
• The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
• Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps. Extensive mechanical and design details of apparatus should not be given.

In my opinion, the abstract of US Pat. Pub. No. 2002/0125893 (shown above) fails to conform to the intent and specific counsel provided in the MPEP. There should be at least some description of the applicability of the invention. After reading this abstract, I am left to guess about the novelty of a “processor . . . [that] monitor[s] the status of a first electrical contact . . . and to determine[s] the type of [an] external device.”

Thus, adequate care should be taken when writing titles and abstracts for the benefit of all who read patents and patent applications.

Current Version of Prior Art (before 16 March 2013)

• information that is “known or used by others” before an invention is conceived
• prior art includes only public uses or sales that have occurred within the U.S.
• prior U.S. patents and published applications are prior art as of the earliest filing date within the U.S.

New Version of Prior Art (after 16 March 2013)

• prior art includes any information that is “otherwise available to the public” before the filing date.
• prior art includes public uses or sales anywhere in the world.
• prior U.S. patents and published applications are prior art as of the earliest effective filing date anywhere in the world.

It is time to start adapting our thinking, at least when considering filing U.S. patent applications.

One recent Federal Circuit case decided 21 November 2005 presented an issue of first impression – the propriety of having a method step in a system claim. IPXL Holdings, L.L.C. v. Amazon.com, Inc. (PDF) is the decision from an appeal from the Eastern District of Virginia (appeal no. 2005-1009). IPXL sued Amazon, alleging that Amazon’s “1-click system” infringed claims 1, 2, 9, 15 and 25 of U.S. Patent No. 6,149,055.

The district court found that claim 25 was indefinite under 35 U.S.C. § 112, second paragraph, because claim 25 attempted to claim both a system and a method for using that system. Section 112, paragraph 2, requires that the claims of a patent “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” Claims 1, 2 and 25 are shown here.

1. An electronic financial transaction system for executing financial transactions, the transactions being characterized by a transaction type and a plurality of transaction parameters, the system comprising:
a central controller;
a communications network;
a terminal device selectively connectable to the central controller through the communications network, the terminal device comprising:
a processor;
a display connected to the processor;
an input mechanism for providing input to the processor;
the system further comprising means for storing user defined transaction information, the transaction information comprising at least one of user defined transactions and user defined transaction parameters;
the processor causing the display to display on a single screen stored transaction information;

the input mechanism enabling a user to use the displayed transaction information to execute a financial transaction or to enter selections to specify one or more transaction parameters.

 

2. The system of claim 1 wherein the system predicts transaction information that a user of the terminal will desire based on stored data for that user.

 

25. The system of claim 2 wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters. (emphasis added)

As the court reasoned, it is unclear whether infringement of claim 25 occurs when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction. The court held that claim 25 recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and therefore claim 25 must be invalid under 35 U.S.C. § 112, paragraph 2.

According to the court, the rule to avoid claiming both a method and a system at the same time is “well recognized and has been incorporated into the U.S. Patent Office’s Manual of Patent Examination Procedure” (MPEP) at § 2173.05(p)(II) (1999) (“A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph.”)

The lesson for both inventor and patent attorney is to carefully and fully avoid including steps or actions to be taken in a system or device claim.

The arbitration provision was found in the page found at the TOU link in the footer of the Zappos.com website. The provision purportedly bound all users of the website merely when the users accessed and used the Zappos.com website. This was Amazon’s argument (Zappos is now owned by Amazon). As observed by the court, few users actually read these pages. In ruling against Zappos, the court reasoned that the Internet has not changed the basic requirements of a contract. Contract law indicates that no agreement exists where there is no affirmative showing of acceptance of basic terms of the contract. A website user that never requires some indication or manifestation of assent has not bound the user to the contract . A party cannot assent to terms of which it has no knowledge or constructive notice, and an inconspicuous hyperlink does not provide sufficient notice of legally binding terms of use. Because the plaintiffs did not assent to the terms, no contract existed, and it would be unfair to compel the website users to arbitrate according to the terms of the TOU.

Many similar cases have come out the same way, cases about “browse wrap” terms of use or terms of service agreements.

The Zappos “contract” was deemed not legally binding. Many of its provisions including risk management provisions, disclaimer of warranties, waiver of consequential damages, reduced statute of limitations, restricting class actions in arbitration, et al., were deemed void. This is a huge lesson to all companies that employ websites. Since the Zappos TOU was thrown out, the use of the Zappos.com website will now be governed by default contract laws.

Avoiding this outcome is surprisingly simple. Website operators can implement clickthrough agreements, not browsewraps, and they should remove clauses that allow the website operators to unilaterally amend the contract.

One way to implement clickthrough is to have shoppers, at check out with their shopping cart, require an extra checkbox that says, “by making your purchase, you agree to the Zappos terms of use,” or the like. Sounds easy. It would have saved lots of money for Zappos. Companies should listen to their lawyers.

After being sued by Bruckelmyer, defendant Ground Heaters filed a motion for summary judgment of invalidity of plaintiff’s two U.S. patents based on, inter alia, figures 3 and 4 of an application that was filed in Canada. The Canadian application eventually issued as Canadian Patent 1,158,119 about 13 years before the applications of plaintiff were filed in the U.S. patent office. During prosecution of the ’119 application, figures 3 and 4 were canceled and were not included in the issued Canadian patent. Plaintiff Bruckelmyer agreed that if figures 3 and 4 of the ’119 application were legally “publicly available,” then the teachings of these figures would “anticipate” the claims of his two U.S. patents.

Similar to the two patents of the plaintiff, the ’119 patent stated that the “primary object of this invention is to provide an improved method of applying heat to fresh concrete which has been placed in pre-constructed formwork during extreme cold weather.” The court stated that this language of the ’119 patent disclosed the same use contemplated by the methods claimed in Bruckelmyer’s patents. This and other language was “a roadmap to the application file,” and “a person of ordinary skill in the art interested in the subject matter of the patents in suit and exercising reasonable diligence would have been able to locate the ’119 application.” The court affirmed the ruling of invalidating plaintiff’s two patents based on figures 3 and 4 of the ’119 Canadian patent application even though figures 3 and 4 were not published in the ’119 patent.

Judge Linn dissented and opined that, “it is not entirely sound to view the issued . . . patent as a roadmap to the underlying file history.” He further reasons that the printed text of an issued patent “is not necessarily looked to as a summary or index of the underlying file history,” and that “the text of an issued patent does not generally serve to guide researchers to the file history for a more expansive disclosure of the described invention.”

LESSON: patent searches need to include, and researchers need to take into account, the file history of patents and patent applications that describe highly relevant technology. Patentability searches sometimes need to take into account more than just what is easily available.

(1) they did not physically work together or at the same time,
(2) each did not make the same type or amount of contribution, or
(3) each did not make a contribution to the subject matter of every claim of the patent. (emphasis added)

It is possible that different claims of an application or patent may have different dates of inventions even though the patent covers only one independent and distinct invention within the meaning of 35 U.S.C. 121. When necessary, the U.S. Patent and Trademark Office or a court may inquire of the patent applicant or owner concerning the inventors and the invention dates for the subject matter of the various claims.

For joint inventors, 37 C.F.R. 1.45(c) states that if “multiple inventors are named in a nonprovisional [patent] application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116.”

Therefore, it is handy to have each of the inventors associate his or hername with each of the claims that he or she believes reflects his or her contribution to the invention. One method for recording this type of information is to create a two-column claim chart with an entire claim or claim phrase on one side, and a space for one or more inventor names on the other. Then, many months after filing the application, it is easy to make a determination regarding dropping an inventor when claims are amended during prosecution.

• discoveries;
• scientific
• theories and mathematical methods;
• proposals concerning solely the outward appearance of manufactured articles and intended to satisfy aesthetic requirements;
• rules and methods of games and for intellectual or business activity;
• computer programs; and
• ideas on presentation of information.

So, patent practitioners are advised to very carefully draft patent claims and patent applications when working with computer-related inventions when seeking patents in Russia.

D504,889 (PDF document);
D593,087 (PDF document);
D604,305 (PDF document); and
D618,677 (PDF document).

Here are some important points to consider.

• Utility patents protect structural and functional aspects of an invention; design patents protect the aesthetic features. A design patent is granted to cover the ornamental design of an object that has both ornamental and practical aspects.
• An invention may be entitled to both a utility patent and a design patent since a utility patent protects the structure of an article and the way it is used and works; a design patent protects the way an article looks.
• Design patents have only one “claim,” and protection essentially extends to the design shown in the design patent drawings.
• The drawings or figures typically can be more detailed than in a utility application as they often show more views of the invention.
• Because design patent applications don’t require a detailed written specification like a utility patent application, design patents can be less costly to prepare and file.
• Similarly, design patents are typically less costly to prosecute or push through the Patent Office. Design patent applications have an allowance rate of about 90% over the recent past, compared to utility patent allowance rates of under 50%.
• More than half of design patent applications are pending for less than a year, with the average pendency being about 16 months. Average pendency of utility patent applications is somewhere between 28-48 months depending on the art unit.
• One can quickly obtain a design patent to coincide with a product rollout, whereas a utility patent might not issue until years after the useful life of the product has expired. Thus, a design patent can provide some protection while waiting for a utility patent to issue.
• One can use a “patent pending” designation immediately after filing of a utility or design patent application, which can act as a marketing tool and deterrent, although the designation provides no actual protection until the patent issues.
• U.S. design patents can be a valuable business asset if used properly.  The problem is that most businesses and many patent professionals do not understand how to properly prepare an application for a design patent to provide the broadest protection for a design.
• A portfolio of design patents is inexpensive as compared with building a portfolio of utility patents.  The scope of protection provided by design patents can be expanded by careful creation of the figures and the description thereof.
• As soon as the aspects of a “look” for a new product come together, an application for a design patent application should be submitted.  Not only should applications for design patents be submitted on commercial designs, but also should be submitted on designs put aside for future development and discarded designs that may be of value to others.
• Since 2008, developments in case law (precedents declared as part of opinions from judges and courts) are enhancing the value of design patents and giving more protection to the look, styling and visual appeal of new products.
• With the ruling in Egyptian Goddess (Fed. Cir. 2008), it is now easier to establish infringement. Since the Federal Circuit adopted a modified “ordinary observer” test as the sole test for design patent infringement, design patents can provide more protection because infringement is more easily proven.
  • The opinion – penned by Judge Bryson – rejects the “point of novelty” test as a requirement to prove infringement of a design patent. Instead, the judges agree that the 1871 Gorham “ordinary observer” test is the “sole test for determining whether a design patent has been infringed.”
  • The Egyptian Goddess holding led to the Federal Circuit’s subsequent decision in International Seaway v. Walgreens. Recognizing the symmetry between the law of infringement and the law of anticipation (meaning a patent is invalid because someone else created the invention first), the court concluded that a design under the new “ordinary observer” standard is anticipated (and therefore invalid) if a product incorporating that design was in existence prior to the filing of the patent application. This decision makes design patents somewhat more difficult to acquire and thus even more valuable once obtained.

• Design patents are presumed to be valid, and an infringer has to overcome a heavy burden to invalidate the patent. Injunctions are also relatively easy to obtain because no technical expertise is needed, and a judge can decide whether the accused design is substantially the same in overall appearance. This chance for immediate relief makes the design patent an important addition to a product’s intellectual property (IP) portfolio.
• In 1994, 11,000 design patents were issued in the United States, according to the U.S. Patent and Trademark Office’s database. In 2011, the USPTO issued almost double that number: 21,356.
• In 2001, for example, Apple was issued 10 design patents and Samsung was issued eight. In 2011, Apple was issue 123 and Samsung was issued 333. And in 2012, projections show that Apple is on track to be issued about 160 design patents, and Samsung (which makes many more products than Apple), about 500.
• The potential for huge damages awards is one reason for the new focus. Design patents have a unique remedy. Whereas infringement of a utility patent allows a patentee to recoup only those profits associated with the patented feature—not the entire profit from the sale of the infringed product—infringement of a design patent allows the patentee to recoup the total profit without apportionment – with some adjustments for the ability of a company to meet the demand for the products.
• Little flexibility is available for defendants in the design patent damages statute.
• It is possible to obtain overlapping coverage from copyrights, trademarks/trade dress and design patents on the same product. An example of overlapping coverage can be seen in the Google, Inc. design patent drawing.
  • Google has obtained a copyright on its home screen and logo for its search engine (designated by the © symbol) and is using one or more elements as a trademark (as seen from the ™ symbol). Notice that the word “GOOGLE” is written in dashed (ghost) lines. This means that the word is not an “essential” feature of the design. Thus, even if a would-be infringer substitutes its own company name in a similar layout, it still would infringe the design patent and the copyright. Also, logos and shapes may serve as a trademark because they identify the source of goods, and the creative/design aspects may be protected by copyright or design patent.
• Design patents, copyrights, trademarks and trade dress all require different elements to prove unlawful copying or imitation. Just as a criminal may be charged with multiple crimes for the same deed, companies may allege multiple types of infringement for the same act.