Intellectual Property Directions

Is “shape” claimable?

Every so often a client wants to get a patent that includes “shape” as at least one of the claims. In one case the item in question was a printed circuit card shaped to fit the non-rectangular boundaries of his equipment’s housing. At the other extreme, consider a surgical or dental tool shaped to perform a specialized function. How about you – is everything you make a simple rectangular solid or is there a [claimable] shape in your future?

Of course, no one knows for sure what the patent examiner will or will not allow, but from experience we can make some good guesses. We all know that an invention must be novel and non-obvious to be patentable. In addition, many people seem to forget, an invention must be useful. So the first question to ask about your “shape” claim is whether the particular shape is needed to make your invention work – if not, maybe you should think about filing a design patent, which covers purely ornamental aspects of an invention. Think about a Mickey Mouse watch or clock, where the hands of the clock are Mickey’s arms and hands. Do the shapes of the watch hands make a difference for telling the time? No. So getting a utility patent on the shape of the watch hands would be hard to imagine.

Well then, how about the printed circuit card shaped to fit the non-rectangular boundaries of the equipment housing. It’s not ornamental. But again, the circuit card is identical to millions of other circuit cards, except for its outer periphery. So again, probably no allowable claim. In this case the examiner would probably reject the claim as an obvious design choice (to shape the circuit board to fit the space available).

At the other end of the “shape-claim” spectrum are those inventions wherein the “shape” is what is new and is what makes the invention perform its function; for example, in a new dental tool the shape of the tool is what make the tool novel and non-obvious. In these cases the “shape” in question can usually be defined very precisely: a probe made from 1 millimeter stainless steel wire, having a first 45 degree bend 4 millimeters from its distal end, etc. etc.

Finally, there are the inventions that are based on shape, but only loosely. Patent claims are supposed to “particularly point[ing] out and distinctly claim[ing] the subject matter which the applicant regards as his or her invention.” Claims that are fuzzy are rejected as indefinite. So what happens when you invention depends on its shape…but not in a hard and fast way. Assuming you can develop a mathematical formula describing the ideal shape, how do you describe how closely a competitor’s product must match that ideal shape to still be infringing; after all, you can’t claim the entire world. If you write a broad claim it may/will be rejected as indefinite; if you write a narrow claim your competitors can easily avoid infringement.

So shape up! Consult with your IP professionals to figure out if your shape-based claims are worth pursuing.

I know we are just past the holiday period – you know, peace on earth and good will toward men – but a couple of recent office actions have me convinced that patent examiners are anything but men of good will. How do they annoy me… let me count the ways I’ve seen in blogs etc.:

1) rejecting a claim with a “bouyant” flap because a similar flap in the prior art was a hydrofoil and therefor rose toward the surface [uh...only when moved through the water!]

2) rejecting a claim with a “translationally stationary” scanning element because a prior art scanner, which moved across the surface of an object, disclosed “a translational stationary scan mechanism with respect to said surface” – wait for it now – “in the vertical direction”. [Emphasis added]

3) rejecting a claim with a remote [microwave] imaging element because “as a radar guy” he thought the system doing the imaging OF the remote element.

4) rejecting an invention with removable legs because, the examiner stated,“the legs of [the prior art reference] are capable of being removed, even if it requires a blow torch.” [Emphasis added.]

5) Rejection of an invention that involved flexible padding because, again, with enough force even a steel plate is flexible. [Emphasis added.]

6) Rejection of a processing system that used a browser applet because the examiner equated the client-server relationship to a terminal on a mainframe.

The good news is that these dumb rejections are (generally) overcome…

The bad news is that overcoming them costs you, the inventor, money. Either in extended examination costs (i.e., having to have your attorney file an “RCE”, a request for continued examination) or by going before the patent office’s board of appeals.

In any case, these stupid examiner tricks are the result of bad management at the PTO, where examiners are not judged by the quality of their examinations (as measured at least in part by the validity of their office actions).

I was recently proofreading a document for one of my daughters  - in a technical field outside my expertise. In one sense that made it easier – I didn’t have to make a judgement about whether her positions were correct. On the other hand, since some of the sentences were phased as “terms of art” and some of the words had specialized meaning in the argot of her field, I was occasionally left scratching my head. Of course, all I had to do was highlight it and let my daughter decide if it was okay. When it comes to writing patent specifications and claims, perhaps we need to define what argot means!

What a word or phrase means in a patent specification or claim can also be of critical importance to a patent applicant or patent owner. There are two related rules about word meanings: the inventor can be his own lexicographer and words are generally assumed to have their ordinary dictionary meanings. And the meaning of a word in a claim can make all the difference between infringement and non-infringement. During an infringement suit, ultimately it is the judge, during claim construction, who ultimately decides what the word means.

The other time word meanings are argued is during examination, when you are getting your claims allowed. Karen Hazzah, in a recent blog post, discusses the value of having contemporaneous dictionary definitions for important terms in your claims. That is, when you present a dictionary definition (or, maybe, an on-line definition from a web site) it is important to show that the definition existed on or before your filing date.

Karen is most interested in how the Board of Patent Appeals (the board that adjudicates disagreements between the applicant and the examiner) operates, so her examples are from that Board’s rulings… but when you make your case on claim construction to a judge, similar principles are likely to prevail. Karen points out a couple of rulings to make her point:

[The Applicant's] citation lacks a date to ensure that it reflects knowledge as of the time of their invention.
Ex parte Hyland, BPAI 2011.

However, both the Examiner and Appellants failed to provide corresponding dates indicating that such definitions come from dictionaries that precede the effective filing data of the present patent application. We therefore decline to adopt the respective dictionary definitions offered by the Examiner and Appellants.
Ex parte Raith, BPAI 2012. See also Ex parte Hicks, BPAI 2011 and Ex parte Moran, BPAI 2011.

What’s interesting is that the Board is equal handed, throwing out the examiner’s definition in the second ruling along with the Appellants’.

Karen’s advice, directed at Board hearings, is to make sure your definitions are dated, and dated at least contemporaneously with your filing. Of course, Board hearings are relatively soon after filing, compared to claim construction during an infringement suit. Finding a dictionary definition from, say, ten years earlier to satisfy a judge is a bigger problem.

In working with clients on their patent disclosures I try to finesse this problem by weaving potentially important definitions into the text of the specification and making sure the patent attorney uses those terms in the claims. I have seen a few other attorneys actually include a glossary in the patent specification, which may be effective but strikes me as very clumsy.

The important thing is to take advantage of your right to be your own lexicographer by including definitions of what you want a word to mean… even if the word at first seems so common as to not need a definition. The definition that is so familiar to you may be argued by an opposing attorney to be exceptional and not used by a “POSITA” (person of ordinary skill in the art). If the judge bites, your claim just got turned around. So, one way or the other, get your definition built into your specification.

“Here, take a bite of the apple” No, no, Snow White, don’t do it.

Inducement. It even sounds evil. Well inducing infringement isn’t very nice either. And now, after a recent court ruling, it’s harder to get away with.

Inducing infringement is just what it sounds like. You don’t actually infringe someone’s patent… you are just the enabler who makes it easy for someone else “do the crime”. For example, maybe you sell an almost complete device…and tell your customers where to get the missing parts and how to install them to make an infringing system.

A more typical induced infringement in today’s internet age involves so-called methods patents. To directly infringe a method claim, the infringer must perform each and every step described in the claim.

Up to now, if you had a web-based app that leaves it up to users to perform some of the steps to complete the method while you perform the remaining steps on your server, you essentially dodged the infringement bullet. The rule was that one party had to perform ALL the steps, or at least one party had to control the people performing all the steps (in other words, you couldn’t just contract out some of the steps and get out from under the infringement cloud). The users of a web site are not being agents – they’re not being controlled by the company who has the site. So there is no direct infringement. And if there is no direct infringement, the logic went, there cannot be inducement to infringe (after all, if no one infringed, then “no one” was induced to infringe).

With the Court of Appeals for the Federal Circuit’s ruling in Akaimai v. Limelight last week, that last bit of logic goes away. Basically the Court ruling said what was obvious on the face of it; infringement is taking place, just not under the control of one entity, so if that entity sets up the opportunity for innocent users to perform the final steps that complete the infringement, the company should be held liable for inducing infringement in the sense that were it not for the actions of the company, no infringement would have taken place.

According to Hamilton, Brook, Smith and Reynolds, the ruling says “inducing acts include causing, urging, encouraging, or aiding one or more steps of a claimed method to be performed”. Ultimately, of course, a judge and jury will have to figure out exactly where that line between innocent behavior and inducement lies. It’s very much like the question of when does a police sting turn into entrapment – but I expect it will be a lot more clear cut when a company sets up a web site where a user logs in and “finishes” the infringement. That would be a lot like the police holding and aiming the weapon that is used to commit a crime.

In any case, although this ruling is very favorable to patent holders with method claims, I would still advise working very hard to write your method claims from the perspective of having one entity perform all the steps, even if it sounds contorted. After all, we could probably nail that wicked witch with a claim to the steps of “offering a heroine a portion of a poison apple” and “allowing a heroine to bite said poison apple”.