Posts Tagged “defending patents”

Greg Aharonian of the Internet Patent News Service (patnews@ns1.patenting-art.com) wrote yesterday about a CEO of a reasonably sized technology company who asked of/lamented to his patent attorney about the futility/waste/high-risk of seeking and asserting patents. Here, in a slightly edited form, is that lament.

1. We file a patent application and eventually get it allowed ($5000 to $10000 plus)

2. We sue someone and are subjected to a Markman analysis, which redefines claims and may change the meaning of the words.

  • How can we prevent this from having a significant effect during the patent prosecution?
  • This process redefines the patent claims to mean something different than what we intended.
  • Can we be so specific in the patent specification that removes any latitude from the judge in interpreting the claim language? Define every word in the claim in the specification?

3. Then the claims can be put up for reexamination which seems to disallow most if not all of the claims and takes years to resolve.

  • It is outrageous that you go through the process of getting a patent and assume that it is valid and then after years and extreme expense some idiot in the USPTO says “oh sorry but my colleague should not have allowed the patent”!

4. The patent’s validity is then challenged.

  • How do we prevent our patents from being declared invalid by some non-scientific judge?

5. How do we file a patent that eliminates these and other problems assuming that infringement is taking place?

  • How do we do this at the earliest point in the process?

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These are great questions to discuss with your patent attorney during the patent prosecution process, which is the earliest point in the process where these issues can be forestalled. As a general rule, I suggest instructing him or her to:

  • Do a reasonable prior art search (including non-patent prior art). Re-examinations kill patents when new prior art results in an obviousness or anticipation problem.
  • Don’t try to be too “cute” with the “patentese”. Writing in straight forward language limits misinterpretation.
  • Don’t try to obscure the invention with circumlocutions (see above point). The purpose of the patent specification is to teach; hold up our end of the deal. We’ll live with fact that our competitor understands our invention if it means our patent is strong.
  • Write claims that match the breadth of our invention. And write the specification to match the claim wording.

You patent attorney may object; don’t be intimidated or find someone who can be your interface with the patent attorney.

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After working hard to get your trade show booth ready, walking into the show and seeing a competitor displaying an infringing (in your opinion) product must be enough to make your blood boil. For Theresa Miale it was just too much to contain so she confronted her competitor, the Campbell Pet Company (CPC). Now she finds she has to defend her patent on their home turf, at additional cost and inconvenience.

Ms. Miale’s problems started  when she participated in the trade show component of a Seattle convention of veterinarians, demonstrating and selling her pet stretcher products, used for transporting injured pets. At the show she observed the products of CPC and felt they infringed one or both of her US patents. Not content to simply gather data on CPC’s products and ask her attorney to send an appropriate warning letter, Ms Miale (and her mother!) apparently

confronted several of Campbell’s employees who were attending the convention and accused them of infringing the Miale patents. According to the Campbell employees, Ms. Miale said that she had contacted her patent attorney and threatened Campbell with patent litigation, stating that patent attorneys and litigation were expensive. The Campbell employees further alleged that the convention manager told them that Ms. Miale and her mother had asked that the Campbell display be removed from the convention because it infringed Ms. Miale’s patents, but that the convention manager had declined to do so on the ground that she was not qualified to evaluate a claim of patent infringement. The Campbell employees also alleged that a customer informed them that Ms. Miale and her mother were “bad mouthing” Campbell and its products to Campbell’s customers, and referred to Campbell as “copiers of their patent.”

After the trade show, Ty-Lift (Ms. Miale’s California based company) sent a letter to CPC claiming infringement, to which CPC responded by filing the for the “standard” declaratory judgement of non-infringement and and invalidity in its home court, the Western District of Washington. Needless to say, Ty-Lift moved to dismiss CPC’s suit on the basis that the Washington court did not have jurisdiction over a California entity that did very little business in Washington.

To make a long story short, Ty-Lift would have prevailed and been able to defend its IP rights in California had only Ms. Miale been able to let the legal system take its normal course. As the Court of Appeals for the Federal Circuit said:

“[p]rinciples of fair play and substantial justice afford a patentee sufficient latitude to inform others of its patent rights without subjecting itself to jurisdiction in a foreign forum.” and that “the sending of an infringement letter, without more, is insufficient to satisfy the requirements of due process when exercising jurisdiction over an out-of-state patentee.”

But instead, perhaps spurred on by an overly protective mother hen,

… Ms. Miale’s actions [were] more than attempts to inform Campbell of suspected infringement. … Ms. Miale attempted to have Campbell’s allegedly infringing products removed from the convention and … told Campbell’s customers that Campbell’s products were infringing. Of critical importance to the issue of personal jurisdiction, Ms. Miale’s attempts at “extra-judicial patent enforcement” were targeted at Campbell’s business activities in Washington… Those efforts go beyond simply informing the accused infringer of the patentee’s allegations of infringement.

So, before you try to do your own “extra-judicial patent enforcement” you’d best pick up your cell and phone home, or at least phone your patent attorney and ask him or her to handle the matter for you.

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Many people question the value of pursuing patent protection for small to mid-sized companies.  They point to the expense of obtaining a patent and the even bigger expense of suing an infringer to defend your patent. Earlier this week it was announced that iRobot was awarded a $286 million Army contract that had originally been awarded to a competitor. Why the turn around – a recently filed patent infringement suit convinced the Army not to deal with the competitor. Do you  have any doubt that the cost of the patent is more than covered by the profit on $286 million in revenue? Or even the cost of their ~50 US patent portfolio?

 Admittedly iRobot is now well past the small to mid-sized company stage with revenue approaching $200 million. But it was not that long ago that iRobot was in that category (FY2000 iRobot Revenue est. $15 million) and at that point in their corporate development they had the foresight to be building their patent portfolio (the earliest iRobot application was filed in 1999; presumably they now own patents previously assigned to other entities).

The bottom line is that while many companies file for (and often are awarded) the wrong patents based on misguided perceptions, a company that understands what a patent can and cannot do for them, that can differentiate between a junk patent and a real patent, can reap a significant return on their patent investment.

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