Intellectual Property Directions

Have you ever noticed that the cooked meats at the deli – the whole turkey breast, the roast beef, the ham – are often cooked in a mesh sleeve that makes the surface of the meat have a windowpane check pattern? The same pattern you’d have if you were pressed against an oversized window screen. If you were in the meat packing business, would you consider a way to lock the intersecting threads of the mesh obvious?

If you’ve filed a patent application anytime in the recent past you’ve probably been smacked by an “obviousness” rejection of some or all of your claims. Obviousness used to be much less of a problem – so much less that it seemed that every trivial “invention” was getting a patent.

But, like any pendulum, this situation did a 100% about face after the Supreme Court’s KSR ruling. Within that ruling the patent examiners, and the district courts, apparently, found the “common sense” rule. That is, even if they could not find a direct link between some prior art and the current application, they could now appeal to common sense to justify an obviousness rejection or invalidity ruling. How do you fight common sense?

The problem is that common sense makes a lot more sense in hindsight. Every trail looks obvious once someone has marked it for you. Luckily for Marcus and Neil Mintz, inventors of a new “meat encasement” stockinette, the Court of Appeals (CAFC) reversed the District Court’s invalid-as-obvious decision by pointing to that Court’s hindsight errors.

A patent claim is invalid as obvious “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” This definition requires an understanding of the level of ordinary skill in the art and a review of any objective evidence of nonobviousness. To determine the level of skill in the art the court will look at: the type of problems encountered in the art; prior art solutions to those problems; rapidity of  innovation in the art; sophistication of the technology; and educational level of active workers in the field.”

In this case, the prior art, the problems giving rise to the invention, and the invention itself featured the “meat encasement” art. The district court, however, said the person of ordinary skill would have familiarity with the knitting art but no familiarity with the meat encasing art! Entirely omitting the meat encasement art, according to the CAFC, led the validity search astray.

Additionally, the CAFC said the district court made a clear error in its unsubstantiated reliance on “a common sense view” to hold that it would have been “obvious to try” a locking engagement (to make the stockinette). “Common sense”, the CAFC said, is a shorthand label for knowledge so basic that it certainly lies within the skill set of an ordinary artisan. But of course the basic knowledge (common sense) of a knitting artisan is likely to be different from the basic knowledge in the possession of a meat encasement artisan.

The district court also used the invention to define the problem that the invention solves; that is, hindsight. Often the inventive contribution lies in defining the problem in a new revelatory way. In this case, the question was NOT about how to lock the grid of the stockinette in place but rather whether a person of ordinary skill in the meat encasement arts, at the time of the invention, would have recognized the adherence problem recognized by the inventors and found it obvious to produce the meat encasement structure that included the locking stitch in the open mesh stockinette.

Technical advance, often occurs through incremental steps. These marginal advances in retrospect may seem deceptively simple, particularly when retracing the path already blazed by the inventor. Where the invention is less technologically complex, it is particularly important to ward against falling into the forbidden use of hindsight. Simply because the technology can be easily understood does not mean it is obvious at the time of invention. In fact, objective consideration of simple technology is often the most difficult because, once the problem and solution appear together in the patent disclosure, the advance seems self-evident.

Many of my clients who are engineers fall into this trap and resist filing for a patent – they forget that having already solved a problem is always going to make it look obvious in hindsight. The important question to ask, however, is will this “obvious” solution provide your company with a sustainable competitive advantage in your markets?

A case decided by the Board of Patent Appeals and Interferences, discussed in the All Things Pros blog,  is a poster child for what’s wrong with how the patent prosecution system has evolved. Patents were supposed to reward inventors for sharing their innovations with society so that the state of the art was advanced. Instead, too many patents are merely new, with no innovation of value to speak of.

The patent examination process, leaving aside the poor embodiment we have, is inherently limited by “fairness” to avoid, as far as possible, subjective judgments – the very judgments required to determine if the invention described in an application has value to society. The closest the examination process comes to making the “value” judgment is the determination of obviousness. Non-obviousness is a necessary but not sufficient condition for value.

If an invention is obvious, then the inventor has not brought any unique value to us. And we all know how impossibly difficult it is to make an objective determination of the inherently subjective “obviousness” standard! Imagine if the examiners were charged with determining if an invention had “enough” value to society, if it advanced the state of the art “enough”, if it was innovative “enough”, to allow the inventor to control its use for nearly two decades.

In response to this inherent limitation in the examination process, “clever” patent attorneys now write claims for not-valuable-to-society inventions to exploit this flaw and collect fees from their clients fighting office actions that use obviousness rejections as the only tool to reject the new but non-innovative inventions.

In the case at hand, does anyone really think that specifying that it is a sales rep from the company who physically accesses a memory interface to update a point-of-sale display device brings value to society? Surely, if these two coupled limitations are the only things that makes this device patentable, then it does not deserve a patent.

Would you be more likely to buy a package of sports cards – you know, like you used to get with Fleer bubble gum – if there was a chance it included a splinter of Ted “Splendid Splinter” Williams’ baseball bat and a certification that it was authentic? Well, would you?

How about a trading card with a piece of someone’s uniform? More importantly, would you grant a patent to the first person to attached a piece of an article of authenticated memorabilia to a trading card? The USPTO did.

Although I don’t understand the business model, there appears to be a big business in sports cards these days - sans bubble gum. Manufacturers insert a limited number of special items into the card packages as an enticement to sell more cards. These special items include “signature cards” “rookie redemption cards” and now “memorabilia cards”.

At the end of 1994, Adrian Gluck filed for and ultimately was issued a patent for a “memorabilia card” comprising:

a substrate in the form of a card and having an image surface,

the image surface including a background image and a foreground image, and wherein the foregoing image is of a famous figure,

a piece of a memorabilia item being adhered to the card adjacent to where an image of the actual item normally would appear, and

the card including a certificate attesting to the authenticity of the item.

Further, the patent claims defined one example of a memorabilia item as being:

a first member, and

a portion, but not the entirety, of an authentic memorabilia item used by a popular sport or entertainment personality or during a memorable event, said portion attached to said first member wherein the authentic item is a baseball bat, and said portion comprises a tiny piece of wood taken from that bat.

A typical memorabilia card is shown in this link.

Mr. Gluck sold his rights to Media Technologies Licensing, LLC who, in 2001, sued Upper Deck Co., a major producer of sports cards, for infringement. The District Court granted summary judgment to Upper Deck, but the Court of Appeals for the Federal Circuit (CAFC) reversed on procedural grounds. Upper Deck then asked the PTO to re-examine the patent, which it did, affirming Gluck’s patent’s validity. The District Court then performed claim construction and issued a summary judgment that the patent was not anticipated but was obvious. Media Tech appealed to the CAFC. The CAFC, in a 2-1 split, upheld the obviousness decision.

The whole discussion in the CAFC’s opinion is bothersome to me. The courts, when discussing obviousness, are forced to put a glossy coat of objective argument on the inherently subjective question. They are forced to work from the prior art in evidence rather than their innate knowledge of what an average person knows.

It should be clear to everyone involved that it did not take any “aha” moment, any inspired inventive spark, to “invent” the trading-card-with-bat-splinter. In creating a trading card with a piece of a memorabilia object, Mr. Gluck perhaps realized that P.T. Barnum was right but he sure didn’t come up with anything that “promote[s] the Progress of Science and useful Arts“; at best he came up with a method of promoting the sale of sports trading cards; a business method, perhaps.

And in fact his strongest defense against obviousness was that all the experts in the field didn’t expect it to “work”, meaning they didn’t expect commercial success. But commercial success is, at best, a secondary indication of non-obviousness and cannot overcome the weight of many primary indicators.

So the courts have now, twice, given an obviousness dope slap to the PTO which twice said this was a valid patent. Perhaps Mr. Gluck and Media Technologies will realize that this patent wasn’t ready for the big leagues.

I’m not much of a seamstress, so I can’t testify to how many stitches are saved by repairing a tear as soon as it happens, but I do know that investing in a prior art search can easily save you from wasting ten or more times as much on an application for an un-patentable invention. And the ROI can be much much greater if prior art search saves you from infringing someone’s broad but not widely known patent.

In the past couple of weeks I’ve had essentially identical discussions with two clients. In both cases my clients had the foresight (okay, at my urging) to have me do a prior art search to see what was out there BEFORE we started pulling together patent disclosure to send to the patent attorney. In both cases I discovered some prior art that would have made getting a patent difficult at best and, if allowed, would have been quite limited in scope. In both cases we concluded that the business value of such a limited patent, three of four years from now, did not justify the investment today.

 When should you initiate a prior art search? The different circumstances of my two clients may help you make that decision. One client – Client “X” – recognized a need in the marketplace, identified a solution and was hoping to develop a product to meet that need. He asked me to take a quick look at the patent prior art, since he wanted to feel comfortable that he had the freedom to build the type of device he imagined, and a second, deeper look to see if there was prior art of any sort that would limit his ability to obtain a reasonably broad patent to protect his market. The good news/bad news is that I found a recently published patent application that disclosed most, if not all, of what he wanted to do. Whether or not that application ever turns into a patent, its prior publication meant that my client would not be able to get a patent to protect his device and he dropped the project (and the patent work for me!). Bad news: no product and no patent; good news: saving the cost of filing a patent application that would probably never give him a return on investment.

The second client – Client “Y” – had already developed a novel image processing approach as an off-shoot of his main business thrust. He wanted to get a patent on the invention to increase its potential licensing value, since he does not need the invention in his core business. Again, as a preliminary step to preparing a patent disclosure, I did a prior art search, extending the search beyond the areas for which Client “Y” had developed the technology. Again the good news/bad news is that I uncovered a large collection of academic papers that disclosed perhaps 95% of my client’s approach. Together we decided that, at best, we might be able to get a narrow patent covering that last 5%; that competitors could probably work around that 5% anyway; and that it would be a long and painful fight with the examiner to surmount the certain-to-come obviousness objection. And of course we would not know if the patent would issue for 3 years or more. And the whole of the invention would be made public. So we decided that he would be better off pursuing license agreements based on keeping his approach as a trade secret. At least he saved the cost of trying to obtain the patent.

So are you like these clients – willing and wanting to invest in a prior art search to save an order of magnitude more money if the patent would not make sense? Or are you doing so well that you’ll throw money down the drain?