Intellectual Property Directions

In April I mentioned that there was a constitutional challenge facing the PTO; that many of the Board of Patent Appeals and Interferences decisions might be nullified because many of the administrative judges sitting on that panel were, arguably, appointed unconstitutionally.

Apparently Congress and the President think they can wave a magic wand and retroactively make unconstitutional appointments okay. Wilmer-Hale reports:

On August 12, 2008, President Bush signed into law a statute intended to fix a perceived constitutional flaw in a 1999 statute governing the appointment of administrative law judges… Both the 2008 statutory fix and the 1999 statute raise constitutional questions of potential significance to those relying on BPAI or TTAB decisions issued over the past several years.

Wilmer-Hale further explains that the statue has 3 major provisions: first, giving the Secretary of Commerce the authority to appoint the administrative judges; second, giving the S of C the right to retroactively appoint a judge who had been appointed [arguably unconstitutionally] by the Director of the USPTO, effective on the date of the Director’s action - essentially waving a magic wand to make the unconstitutional appointments suddenly constitutional AND the decisions of the past 10 years valid; third, adding explicitly that the judges were de facto acting as judges and therefore their rulings can be accepted as valid (essentially because everyone at the time accepted the rulings as valid and it would be chaotic to go back and retry every case, given that the results would be the same, just with a now constitutionally appointed judge).

Don’t you wish you could solve your problems so easily! BTW, the 2nd and 3rd major provisions of this statute will probably also be challenged, so the PTO has only won this round.

In Oz, everyone except Dorothy ignored the man behind the curtain. In your patent, ignoring the means by which you implement various claimed functions can leave you without a heart, a brain, courage … or a valid patent. To have a valid patent you must, in effect, prove that you have actually developed a working invention.

“Means-plus-function” [MPF] claims are attractive to many inventors because they have a broader scope, at least in the sense that they cover the function and not the specific hardware implementation for performing that function:”control means for automatically operating said valves”. But when you include MPF claims you must take care that you describe in your specification some structure, some mechanism, some explicit embodiment by which the claimed function is performed. If you don’t include this structure your claims may be deemed invalid for indefiniteness. The risk for many of us is being too close to the technology. What is a given for us may be inadequate to the patent legal process.

In a recent CAFC appeal, Biomedino LLC tried to defend their MPF claim based on a box labeled “Control” in a figure and the statement in the specification that ”[the process] may be controlled automatically by known differential pressure, valving and control equipment”. In the Court’s mind this case begged the question of whether

“…sufficient corresponding structure [is] disclosed when the specification simply recites that a claimed function can be performed by known methods or using known equipment where prior art of record and the testimony of experts suggests that known methods and equipment exists?” [emphasis added]

Answering this question in the negative, the Court pointed out that the law requires the specification to actually disclose at least one way for the function to be accomplished and not leave it to the assumed knowledge of the archetypal person-of-skill-in-the-art.

Many inventors fall into this trap these days when it seems every device is controlled by embedded processors. While software can certainly be the means by which a function is performed, simply referring to “software” is not an adequate description of how you are performing a given function. Yes, it’s probably true that someone could write the software to perform the function, but unless you give more details of what’s inside the software “box” you are likely to find your patent invalidated.

Groucho Marx said, “If we had some eggs we could have eggs and ham, if we had some ham.” The CAFC said, “If you have some functions you can have some means-plus-function claims, if you actually have some means”.

Technical Editor Paul Rako of EDN (formerly Electronics Design News) recently posted a blog entitled File Your Own Patents. It’s really more of a meta-post since it is only announcing an upcoming article. It starts:

My IC designer buddy Don Sauer already has something like 40 patents, mostly when he worked at National Semiconductor. Now he is working up an article for me on how to do it cheap.

Mr. Sauer’s how-to solution, apparently, is to skip the patent attorney and file it yourself. To that I say, well, hogwash. Actually, what I said in a comment to the blog was:

I will grant you that a reasonably intelligent person can certainly file a patent application pro se; anyone who can read with comprehension can do most knowledge work. However, the suggestion that one should file pro se begs two questions; are you ready (and interested enough) to invest the time to become knowledgeable in patent law and procedure to do it as well as an attorney or patent agent AND how are you accounting for the opportunity cost of the time spent (both the learning time, which can be amortized over many patents but which is an on-going investment as the law/rules change, and the time prosecuting the patent).

If the answer to the first question is NO, then we all know about GIGO. And if the answer to the second question is “Duh” or “I do it on my own time” then I suggest you haven’t thought this through.

After being a senior R&D engineer for 25 years I decided I was interested enough in IP and now have my own company acting as a part-time, outsourced Director of Intellectual Property. Most of my clients would prefer to spend their time (and their subordinates’ time) working on the invention itself and to hire someone - myself, a patent agent, or, heaven forbid, an attorney - to translate the engineering into a patent application. I would suggest this route is more cost effective for a company than to divert engineering talent to a task for which they are not trained.

I bought a new car recently and it came with a wide-angle backup camera - a safety feature that shows what’s behind you when you are in reverse. In a patent infringement suit the “reverse Doctrine of Equivalents” [rDoC]may provide you some safety… but don’t count on it.

“What?”, you say, “There’s a reverse doctrine of equivalents?”

Yup, and by a reverse logic that the Red Queen would love the reverse doctrine of equivalents says that you can be literally infringing a patent without being an infringer. To take a case example, last week the Court of Appeals for the Federal Circuit handed down a decision in the case of Roche v. Apotex (a generic drug manufacturer). In that case Apotex wanted to essentially duplicate one of Roche’s pharmaceuticals and called upon this doctrine to fend off a summary judgment of infringement.

The “normal” DoE extends the scope of a patent beyond the literal bounds defined in the claims. The idea is to prevent an infringer from making insubstantial changes or unforeseeable minor improvements in the invention as a way to avoid infringement. For example, replacing a circuit originally built with descrete transistors with one containing an IC would probably be considered an infringing equivalent.

The reverse DoE, on the other hand, contracts the scope of a patent to allow a literally infringer to escape sanctions. The idea is to prevent a patentee from extending the reach of the claims beyond the fair scope of the invention. According to the Supreme Court:

[W]here a device is so far changed in principle from a patented article that it performs the same or similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the [reverse] doctrine of equivalents may be used to restrict the claim and defeat the patentee’s action for infringement.

 For example, two devices may measure the same signal and apply computer signal processing to determine some property of the source. But if one device is looking for amplitude variations while the other is looking for frequency variations, the accused infringer might have opportunity to apply the rDoE by arguing that the principle of operation is different and that the same function (determination of source property) is performed in a substantially different way (frequency analysis rather than amplitude analysis).

But before you get excited, note that the CAFC said:

The reverse doctrine of equivalents is rarely applied, and this court has never affirmed a finding of non-infringement under the reverse doctrine of equivalents. [emphsis added]

 So, just like looking in my backup camera, objects (or favorable patent rulings) may be closer than they appear.