Issue 9 

Dec 2001

In this Issue


Patent Strike ForceSM

He's making a list, checking it twice....

Interesting Patents

The Chri$tma$ $pirit is alive and well!

IP Links

IP Glossary


This is the ninth issue of Directions, a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. This month's issue, in the holiday spirit, discusses what Santa may bring you if you've been naughty . Please share this newsletter (see copyright notice below) and to provide feedback by e-mail to:

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Patent Strike ForceSM

He's making a list, checking it twice.....

Over the years I've learned there are certain people you don't want to mess with. They each have a set of rules and they all check to see if you've been bad or good (so be good for goodness sake). These list makers include Santa Claus, the IRS, and the Patent Office. This month we see why GFI, Inc. got a lump of coal in its patent stocking.

Most inventors realize that the Patent Office has a set of rules intended to only give the patent "monopoly" to individuals who can be properly called the inventor(s) of some item. Many of these rules place a burden of self-disclosure on the applicant, in a manner similar to the way (and for the same basic reason as) the IRS expects us to report our own income. Neither the IRS agent or the Patent Examiner can know our business as well as we do. One of the PTO rules requires the applicant to disclose all the relevant background material of which he is aware, even after filing the application. Those disclosures allow the Patent Examiner to judge how independently the applicant has developed his or her invention.

Unlike the IRS, which does audits to keep us honest, or Santa, who knows when you've been bad or good, the Patent Office does not enforce its rules itself. The enforcement mechanism ultimately is left to the courts when the validity of a patent is called into question. In a case just decided recently, GFI, a furniture manufacturer, ran into problems when it tried to enforce its patent (US 5,064,244) against Parkhill Furniture.

The background for the case makes you wonder why GFI even bothered. In January of 1991 GFI filed an application for a patent on a sectional sofa in which a pair of reclining seats is separated by a fixed console, built into which are the controls for the reclining seats. As was revealed during at least one of the three (!) trials on this matter, during the prosecution of the ’244 patent, GFI entered discussions with Walter Durling, a furniture designer from Mississippi who designed and built a loveseat-like unit consisting of two recliners joined by a middle console.  Durling filed a patent application on this design two months before the ’244 patent application was filed.  The discussions between GFI and Durling centered on extracting information from Durling regarding his conception and reduction to practice of the design.  The application did not specify the location of the recliner controls, but Sproule, the named inventor of the ’244 patent, saw a model of the Durling furniture in late October or early November of 1990 that had console-mounted controls.  Durling offered to exchange his conception information for similar information about the conception and reduction to practice of the invention underlying the ’244 patent; GFI refused. Needless to say, GFI also did not pass on to the Patent Examiner any information about these discussions.

When the court learned about this behavior, it was favorably inclined to find in favor of Parkhill, which had defended itself by claiming inequitable conduct on the part of GFI. To prevail on its defense of inequitable conduct, Franklin had to prove by clear and convincing evidence that GFI both withheld material information from the PTO, and that there was intent to deceive the PTO. The Appeals Court says that "determining inequitable conduct entails a two-step analysis:  first, a determination of whether the withheld reference meets a threshold level of materiality and intent to mislead, and second, a weighing of the materiality and intent in light of all the circumstances to determine whether the applicant's conduct is so culpable that the patent should be unenforceable."

GFI could not deny the facts of the case (that they knew about Durling's loveseat), so their arguments were  (1) the withheld information was not material and (2) there was no proof of deceptive intent. The District Court rejected these arguments and was upheld by the Appeals Court. As the Appeals Court said: "GFI argues that Durling cannot be material because it is not prior art.  That is not the law, and, even if it were, the very essence of the discussions between GFI and Durling were motivated by an effort to determine priority ... it was incumbent on GFI to disclose the potential priority conflict to the examiner and not to unilaterally make a determination.." 

The Court then looked at the intent to deceive. It felt strongly that withholding the Durling references could only demonstrate deception.  It pointed out that it had previously held deceptive intent when a patentee withheld references and then made arguments for patentability that could not have been made had the references been disclosed.  In this case, GFI specifically distinguished its invention from the references it did disclose, by arguing that none of them had console-mounted controls, This despite Sproule’s prior knowledge that Durling had built a model with center-mounted recliner controls prior to the filing of the ’244 patent application. Thus, while no single factor or combination of factors can be said always to require an inference of intent to mislead, a patentee facing a high level of materiality and clear proof that it knew or should have known of that materiality, can expect to find it difficult to establish "subjective good faith" sufficient to prevent the drawing of an inference of intent to mislead. 

There are many lessons to be learned from this case.

  • Don't think the rules don't apply to you - your attorney will be more than happy to explain your duties to you. Pay attention. GFI's attorney testified about his conversations with the inventor regarding the duty of disclosure and the various items of prior art Sproule had told him about.

  • Don't apply your (self-interested) judgment when applying the rules - The court clearly does not believe that an applicant is a fair judge of what "...a reasonable examiner would be substantially likely to consider important..." It will never hurt you to err on the side of sending too many references.

  • Try to avoid shooting yourself in the foot - Have a long talk with your attorney before filing a patent infringement suit. Although an issued patent has the presumption of validity you want to make sure your hands are clean from all forms of inequitable conduct before running up those legal bills.

Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc serves as an interface between companies and their legal counsel.

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Interesting Patents
The Chri$tma$ $pirit is alive and well!.

Here are excerpts from a couple of recent patents that are pure gifts from the Patent Office and that show how many ways there are to make a buck off Christmas:

Surely no home can live without this "festive" means to store and display photos!

US 6,325,419 Issued Dec 4, 2001 Substantially stocking-shaped photo album and method therefor

A substantially stocking-shaped photograph album and method therefor, comprising a base portion, at least one substantially stocking-shaped leaf coupled to the base portion, and at least one sleeve coupled to the substantially stocking-shaped leaf, wherein the sleeve is dimensioned to receive a photograph in order to provide a way to store and display photographs in a festive photo album. Preferably, an audio device can be activated to play a melody while viewing the pictures

Photo albums have often been used as a way to store photographs. The photograph album allows the user to place many photographs in an organized fashion. Although the pictures in a photo album can obviously be viewed, picture frames are often preferred when the primary goal is to display the photograph as opposed to merely storing it. However, picture frames, although capable of displaying photos, generally do not offer the ability to store large quantities of photographs.

The holiday season is a time when friends and family are interested in displaying many photos. Christmas time is an especially festive period when many people come together. This time, which is often spent indoors because of the weather as well as a desire to spend quality time with one another, is an ideal time for displaying photos of friends and family.

It is often the case, however, that when a person has many photographs that he or she wishes to display there is no cost-effective way to display all of the photos. Using many picture frames is not only costly but also takes up a lot of space. Putting the photos in an album often means giving up on displaying them for all to see. Some people attempt to solve this problem by leaving a photo album open, thus using it for both storage and display. However, this solution requires a great deal of counter space, which often makes it impractical.

A need therefore existed for a photo album designed for the holiday season, which is also capable of both storing and displaying photographs in a space-saving, festive and attention drawing manner

US 6,320,327 Issued Nov 20, 2001 Remotely controlled revolving illuminated musical Christmas tree stand

Tell me, how many people sit across the room and wish to remotely control the lights, music, and rotation of their Christmas trees? Besides, there's no means to keep the cord for the lights from wrapping around the tree!

Abstract A reversible revolving, illuminated, musical and speaking Christmas tree stand that is remotely controlled. The stand rotatably supports an artificial or natural Christmas tree, other decorative trees or other devices supported for rotational movement about a generally vertical axis. The stand includes a structure for reversibly rotatably, supportingly engaging a tree or other device, a structure for illuminating the tree or other device and a structure for producing musical renditions, songs or the like relating to the tree or other device and an infrared remote control by which all functions of the stand can be independently controlled without approaching the tree. The stand has a housing shaped and configured to carry out the theme or symbolism of the tree or other device.

The present invention generally relates to a reversible revolving illuminated musical and speaking Christmas tree stand and more specifically to a remotely controlled stand of this type. The stand is adapted to rotatably support an artificial or natural Christmas tree, other decorative trees or other devices for reversible rotational movement about a generally vertical axis. The stand includes a structure for supportingly engaging the tree or other device, structure for illuminating the tree or other device and an audio device for producing a musical rendition, song or the like relating to the tree or other device and a remote control by which all functions of the stand can be independently controlled at a distance from the stand. The stand has a housing shaped and configured to carry out the theme or symbolism of the tree or other device. The remote control includes an infrared transmitter which is preferably hand held and the stand includes an infrared signal receiver to control the functions in accordance with the infrared control device.

The remotely controlled, illuminated, musical and speaking Christmas tree stand of the present invention comprises a hollow housing of generally star shaped configuration. The tree stand includes an upwardly and inwardly tapering peripheral wall having a substantially flat closed and removable bottom which can rest upon a supporting surface. The stand further includes structure at its upper end for clampingly engaging a Christmas tree, a drive mechanism for reversibly rotating the Christmas tree, a mechanism providing electrical energy to decorative light bulbs on the tree and an audio device for producing music, song and/or vocal message traditionally associated with the Christmas season.

In accordance with the present invention, the stand is provided with an infrared control signal receiver either on the housing or extended from the housing which receives infrared signals transmitted from a portable battery powered control device. The portable control device is provided with manually controlled switches to selectively and independently energize the lights on the tree, selectively and reversibly rotate the tree and selectively operate the audio device. This enables operation and control of the functional capabilities of the stand from a remote location by utilizing the portable infrared control device in a manner well known in the art of remote controlling various appliances such as television and the like.

Accordingly, it is an object of the present invention to provide a stand for a Christmas tree or similar device utilizing components that enable the tree or other device to be reversibly rotated about a vertical axis, that enable decorative lights on the tree or other device to be energized when rotating or when stationary and that actuate an audio device for producing music or songs relating to the Christmas season, or that relate to other decorative devices supported by the stand. All functional operations of the stand are controlled by a remote infrared control device that transmits signals to an infrared signal receiver either on the stand or located adjacent to and connected to the stand to facilitate operation of all functions of the stand from a remote location.

Another object of the invention is to provide a remote control for a Christmas tree or other device as set forth in the preceding object in which the remote control device provides an infrared signal to the receiver associated with the stand for independently controlling each of the functions, operating selected multiple functions and simultaneous operation of all functions from a remote location.

A further object of the invention is to provide a remotely controlled, illuminated, musical revolving Christmas tree stand which stably supports a natural or artificial Christmas tree and is simple, safe and dependable in operation, and relatively inexpensive to manufacture, maintain and operate.

Still another object of the invention is to provide a Christmas tree stand having a star shaped configuration in green or other color or colors to conform with the symbolism of the tree and the Christmas season.

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IP Links
US Patent office Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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IP Glossary

Industry's Best Glossary

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