Our Own Oddities

For fifty years between 1940 and 1990, The St. Louis Post Dispatch had a section in its comics pages titled Our Own Oddities, featuring unusual things from around the St. Louis metropolitan area. There are a number of patent “oddities,” and while they may not be as astounding as a Nixon-shaped potato they are nonetheless cataloged below.

The First Patent

The first patent, as most patent attorneys know, was issued to Samuel Hopkins on July 31, 1790, on a method of making potash and pearlash. However U.S. Patent No. 1 issued to J. Ruggles on July 13, 1836, when it finally occurred to someone in the Patent Office to start numbering these things. Approximated 10,000 unnumbered patents, often call the X-series of patents were issued prior to U.S. Patent No. 1.

U.S. Patent No. 1, issued July 13, 1836

First Patent to a Female Inventor

The first patent to issue to a female inventors is believed to be one of the aforementioned X-series patents, No. 1041X on Weaving Straw with Silk Thread, issued to Mary Kies on May 5, 1809.

First Patent to an African-American Inventor

The first patent to issue to an African-American is believed to be one of the aforementioned X-series patents, No. 3306X on Dry Scouring of Clothes, issued to Thomas L. Jennings on March 3, 1821.

Only Patent to a President

The only patent issued to a president is U.S. Patent No. 6,469 on a Manner of Bouying Vessels, issued to Abraham Lincoln on May 22, 1849.

U.S. Patent No. 6,469, issued to Abraham Lincoln

Shortest Patent Claim

The scope of a patent is defined by its claims, and there are a number of two-word patent claims, including Glenn Seaborg’s U.S. Patent No. 3,156,523, issued November 10, 1964, claiming: “1.  Element 95,” and his U.S. Patent No. 3,164,462, issued December 15, 1964, claiming “1.  Element 96.”

However there are in fact several patents with a one-word claim, including Lloyd H. Conover’s U.S. Patent No. 2,699,054, issued January 11, 1955, whose claim 2 simply recites “Tetracycline.” For another example, check out claims 12-19 of U.S. Patent No. 3,775,489.

Longest Patent Claim

Among the longest patent claims is one found in U.S. Patent No. 6,953,802, Beta-Amino Acid Derivatives-Inhibitors of Leukocyte Adhesion Mediated by VLA-4, it contains over 17,000 words, spanning from column 59, line 27 to column 101, line 30.

Most Claims in an Application

The record for most claims in an application is US Published Application No. 20030173072 for Forming Openings in a Hydrocarbon Containing Formation Using Magnetic Tracking. As published it contained 8,958 claims, issuing as U.S. Patent No. 6,991,045 with a more modest but still impressive 90 claims.

Most Claims in a Patent

The record for most claims in a patent is U.S. Patent No. 6,684,189 Apparatus and Method Using Front-end Network Gateways and Search Criteria for Efficient Quoting at a Remote Location, with 887. Runners up are U.S. Patent No. 5,095,054 for Polymer Compositions Containing Destructurized Starch, with just 868 claims, and U.S. Patent No. 7,096,160 System and Method for Measuring and Monitoring Wireless Network Performance in Campus and Indoor Environments, with a paltry 803 claims.

Longest Patent Application

The longest patent application is U.S. Patent Application No. US20070224201A1 for Compositions and Methods for the Diagnosis and Treatment of Tumor with 7,154 pages.

Longest Patent

The longest patent is U.S. Patent No. 6,314,440 for Pseudo Random Number Generator, with 3333 pages, 3272 of which are drawings). Slightly shorter, but much wordier is U.S. Patent No. 5,146,591 has more than one million words on 3071 pages.

Shortest Patent

U.S. Patent No. 5,081,154 for Metroprolol Succinate is one half page long (about 70 lines).

Most Drawings in an Application

U.S. Patent Application No. 20070224201A1 has 6881 sheets of drawings.

Shortest Patent Term

U.S. Patent Nos. 6,211,625; 6,211,619; 6,198,228;  6,144,445; 7,604,811 (and others) had a term of “0” — each expired before it issued!

Longest Patent Term

U.S. Patent No. 6,436,135, was filed in 1974, and issued in 2002, and thus won’t expire until this year (2019), 45 years after it was filed.

Most Co-Inventors

U.S. Patent Nos. 7,013,469 and 7,017,162 for Application Program Interface for Network Software Platform have 51 coinventors. 

Strangest Patent Number

The U.S. has issued several “fractional” patents, including U.S. Patent No. 126 ½ on February 11, 1837, and U.S. Patent No. 3,262,124 ½ on July 19, 1966.

Most Popular

U.S. Patent No. 4,723,129 has been cited in 2,372 subsequent patents.

Most Prior Art

U.S. Patent No. 9.535,563 cites 7800 references; U.S. Patent No. 8,612,159 on Analyte Monitoring Device and Methods of Use cites 3,594 items of prior art on 32 pages.

Largest Patent Family

U.S. Patent No. 5,095,054 has 380 family members.

Longest Inventor Name

U.S. Patent No. 7,531,342 names Osterhaus Albertus Dominicus Marcellinus Erasmus as inventor with 44 characters in his name.

Most Enigmatic Title

U.S. Application 20020174863 is entitled “Unknown”

Simplest Drawing

U.S. Patent No. 448,647 issued March 24, 1891, on a Tooth Pick.

A Patent on Games? No Dice.

In In re Marco Guldenaar Holding B.V., [2017-2465](December 28, 2018), the Federal Circuit affirmed the decision of the PTAB affirming the rejection of claims 1–3, 5, 7–14, 16–18, and 23–30 of U.S. Patent Application No. 13/078,196 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter.

The application, entitled “Casino Game and a Set of Six-Face Cubic Colored Dice,” relates to dice games intended to be played in gambling casinos, in
which a participant attempts to achieve a particular winning combination of subsets of the dice.

The Examiner concluded that the claims were directed to the abstract idea of “rules for playing a game,” which fell within the realm of “methods of organizing human activities.” The examiner also
concluded that the claims were unpatentable for obviousness over U.S. Patent No. 4,247,114 over matters old and well known to dice games, applying the printed matter doctrine. The Board affirmed both rejections.

The Federal Circuit found its decision in In re Smith, 815 F.3d 816 (Fed. Cir. 2016), where it found a method of conducting a wagering game using a
deck of playing cards was drawn to an abstract idea, to be “highly instructive.” In the present case, as in In re Smith, the claims were directed to a method of conducting a wagering game, but using dice instead of cards. with the probabilities based on dice rather than on cards.

The Federal Circuit agreed with Applicant/Appellant that the USPTO’s category of unpatentable subject matter “methods of organizing human activities” can be confusing and potentially misused, but where the decision further articulates a more refined characterization of the abstract idea (e.g., “rules for playing games”), there was no error in also observing that the claimed abstract idea is one type of method of organizing human activity.

The Federal Circuit said that abstract ideas, including a set of rules for a game, may be patent-eligible if the claims contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. On appeal, Applicant/Appellant contended that the specifically-claimed dice that have markings on one, two, or three die faces are not conventional and their recitation in the claims amounts to “significantly more” than the abstract idea. The Federal Circuit said that the markings on Appellant’s dice constituted printed matter, as pointed out by the Board, and this court has generally found printed matter to fall outside the scope of §101.

Specifically, the Federal Circuit said that each die’s marking or lack of marking communicates information to participants indicating whether the
player has won or lost a wager, similar to the markings on a typical die or a deck of cards. Accordingly, the recited claim limitations are directed to information. Additionally, the Federal Circuit observed that the printed indicia on each die are not functionally related to the substrate of the dice.

The Federal Circuit also rejected rejected applicant’s argument that the claimed method of playing a dice game cannot be an abstract idea because it recites a physical game with physical steps. The Federal Circuit said that the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps.

The Federal Circuit concluded that because the only arguably unconventional aspect of the recited method of playing a dice game is printed matter, which falls outside the scope of § 101, the rejected
claims did not recite an “inventive concept” sufficient to “transform” the claimed subject matter into a patent eligible application of the abstract idea.

Posted in 101

The “State” of Embodiments in Design Patents

U.S. Patent No.  D824219 issued on July 31, 2018 on a “Coaster State Bottle Opener.”  This patent is interesting because it has 52 embodiments that are depicted in 260 Figures, featuring every state on its own coaster/bottle opener.

The multiple embodiments in U.S. Patent No. D824219
allow you to assemble a lovely coast collection featuring Harness, Dickey locations!

Applicants are of course entitled to present as many embodiments as they wish in a design patent application.  MPEP 1504.05 states that “[m]ore than one embodiment of a design may be protected by a single claim. However, such embodiments may be presented only if they involve a single inventive concept according to the obviousness-type double patenting practice for designs.”  If the embodiments do not involve a single inventive concept, the the Office will issue a restriction requirement, which can present a risk for the applicant, and discussed below.  The MPEP sets out a two part test for determining whether embodiments involve a single inventive concept:

(A) the embodiments must have overall appearances with basically the same design characteristics; and (B) the differences between the embodiments must be insufficient to patentably distinguish one design from the other.

MPEP 1504.05

The presentation of multiple embodiments has the effect of broadening the scope of the claim, because the single design patent claim only covers the elements common to all of the embodiments. This is great from an infringement standpoint, but it also makes the design patent more vulnerable to a validity attack.

As mentioned above, restriction requirements can present difficulties for design patent applicants.  If the applicant does not file a divisional application for each restricted embodiment, the applicant could be dedicating the non-pursued embodiments to the the public.  This was the case in  Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, (Fed. Cir. 2014), where the Federal Circuit held that when subject matter is surrendered during prosecution of a design patent (such as by acceding to a restriction requirement), prosecution history estoppel prevents the patentee from “recapturing in an infringement action the very subject matter surrendered as a condition of receiving the patent.” e claimed invention. 


In Pacific Coast Marine, during prosecution of the patent in suit (D689782) the Examiner identified five separate embodiments, but the applicant protected only two, leaving the other three embodiments unprotected.

Just because one can include multiple embodiments in a design application does not mean it is always a good idea.  Thought should be given to whether the same protection can be achieved through a single embodiment with unimportant details shown in dashed lines (and thus excluded from the scope of the claims), and/or whether multiple applications would would provide better protection (albeit at a higher cost).  Multiple embodiments can complicate both validity and infringement determinations.

Exceptional Does Not Mean “Wrong” — Otherwise Every Case Would be Exceptional

In Spineology Inc. v. Wright Medical Technology, Inc., [2018-1276] (December 14, 2018), the Federal Circuit affirmed the denial of Wright Medical Technology, Inc.’s motion for attorney fees under 35 U.S.C. § 285, finding no abuse of discretion.

The district court issued a claim construction order in, acknowledging that the parties disputed construction of the term “body,” but it declined to
adopt either party’s construction. Wright and Spineology then filed cross-motions for summary judgment on infringement.  Recognizing the alleged infringement depended on how “body” was construed, the district court
construed “body” consistent with Wright’s noninfringement position and granted Wright’s motion.  Wright then moved for attorney fees, arguing Spineology’s proposed construction of “body,” its damages theories, and its litigation conduct rendered this case “exceptional” under § 285. The district court denied the motion, determining that, while ultimately the court rejected Spineology’s proposed construction, it was not so meritless as to render the case exceptional.  It similarly determined the arguments
made by Spineology to support its damages theory were not so meritless as to render the case exceptional.  The district court concluded that n]othing about this case stands out from others with respect to the substantive strength of Spineology’s litigating position or the manner in which
the case was litigated.

The Federal Circuit agreed with the district court that, while Spineology’s proposed construction of “body” was ultimately rejected at summary judgment, the attempt was not so meritless as to render the case exceptional.  The Federal Circuit stressed that a party’s position ultimately need not be correct for them not to standout.   The Federal Circuit noted that Wright was hardly in a position to complain about Spineology’s continuing to pursue a construction not adopted by the district court in the claim construction order, since the district court declined to adopt Wright’s proposed construction as well.

Even though the case was resolved in summary judgment, Wright complained about Spineology’s damages theory,.  While conceding that perhaps Spineology’s damages theories would not have prevailed, the Federal Circuit said “a strong or even correct litigating position is not the standard by which we assess exceptionality.”

The Federal Circuit noted that Wright was asking the court to basically decide the damages issues mooted by summary judgment in order to determine whether it ought to obtain attorney fees for the entire litigation. The Federal Circuit refused to do so — it will not force the district court, on a motion for attorney fees, to conduct the trial it never had, and the Federal Circuit declined to conduct the trial in the first instance.

The bottom line is exceptional  does not mean “wrong” — otherwise every case would be exceptional.

Window into the Past

Patents can be an interesting window into the past.  For example on December 14, 1937, U.S. Patent No. D107425 issued to Wallace K. Harrison and J. Andre Fouilhoux on a model of an architectural unit.

The design is of the Trylon, Perisphere, and Helicline that became the central symbol of the 1939 New York World’s Fair, reproduced by the millions on a wide range of promotional materials.   and serving as the fairground’s focal point.  The structures were razed and scrapped after the closing of the fair, and their materials repurposed into World War II armaments, but the image and the optimism for the future they were intended to convey, persist in the records of the USPTO.

 

Collateral Estoppel Exposes the Failure to have Legitimate Plan B

In Virtnex Inc. v. Apple, Inc., [2017-2490, 2017-2494] (December 10, 2018) the Federal Circuit affirmed the PTAB that claims 1–11, 14–25, and 28–30 of U.S. Patent No. 8,504,696 were unpatentable as obvious., noting that VirnetX was collaterally estopped from relitigating the threshold issue of whether prior art reference was a printed publication and because VirnetX did not preserve the only remaining issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the America Invents Act.

During the pendency of VirnetX’s appeal, the Federal Circuit summarily affirmed seven final written decisions between VirnetX Inc. and Apple in which the Board found that RFC 2401 was a printed publication.  The Federal Circuit said that Rule 36 summary dispositions could be the basis collateral estoppel, and that the only issue was whether the printed publication issue was necessary or essential to the judgment in the prior cases.  The Federal Circuit held that it was.

VirnetX also argued that it preserved in its opening brief the issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the AIA, pointing to a single paragraph in its Opening Brief, filed prior to the Supreme Court’s decision in Oil States.  The Federal Circuit said that this paragraph raised the specific question later decided in Oil States, and under a very generous reading, the paragraph also arguably raises a general challenge under the Seventh Amendment, but it in no way provides any arguments specifically preserving the retroactivity issue.

The Federal Circuit concluded that VirnetX did not preserve the issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the AIA and that, therefore, the conclusion that VirnetX was collaterally estopped from raising the printed
publication issue resolved all other issues in the appeal.  The Federal Circuit affirmed.

The lesson, of course, is to correctly predict the future and simply preserve the issues you will need.  Virtnex can hardly be faulted for not preserving the issue, when they had a more substantive issue before it, buy it always pays to have a legitimate Plan B.

Normal Double Patenting Rules Don’t Apply When the Patents Straddle the URAA

In Novaritis Pharmaceuticals Corporation v. Breckenridge Pharmaceutical Inc., [2017-2173, 2017-2175, 2017-2176, 2017-2178, 2017-2179, 2017-2180, 2017-2182, 2017-2183, 2017-2184] (December 7, 2018), the Federal Circuit reversed the district court, determining that the law of obviousness-type double patenting does not require a patent owner to cut down the earlier-filed, but later expiring, patent’s statutorily-granted 17-year term so that it expires at the same time as the later-filed, but earlier expiring patent, whose patent term is governed under an intervening statutory scheme of 20 years from that patent’s earliest effective filing date.

Applying  Gilead Sciences, Inc. v. Natco Pharma Ltd., which held that a later-filed but earlier-expiring patent can serve as a double patenting reference for an earlier-filed but later-expiring patent, the district court found U.S. Patent No. 6,440,990 to be a proper double patenting reference for the earlier filed U.S. Patent No. 5,665,772, which had a longer term because of a change in the statutory term.

The Federal Circuit said that Gilead addressed a question that was not applicable in the present case — in Gilead, the Federal Circuit concluded that, where both patents are post- URAA, a patent that issues after but expires before another patent can qualify as a double patenting reference
against the earlier-issuing, but later-expiring patent.  In contrast, in the present case Novartis owns one pre-URAA patent (the ’772 patent) and one post-URAA patent (the ’990 patent), and the 17-year term granted to the ’772 patent does not pose the unjustified time extension problem that was the case for the invalidated patent in Gilead.


[T]he present facts do not give rise to similar patent prosecution gamesmanship because the ’772 patent expires after the ’990 patent only due to happenstance of an intervening change in patent term law. Both the ’772 and the ’990 patents share the same effective filing date of
September 24, 1993. If they had been both pre-URAA patents, the ’990 patent would have expired on the same day as the ’772 patent by operation of the terminal disclaimer Novartis filed on the ’990 patent, tying its expiration date to that of the ’772 patent. And if they had been
both post-URAA patents, then they would have also both expired on the same day. Thus, the current situation does not raise any of the problems identified in our prior obviousness-type double patenting cases. At the time the ’772 patent issued, it cannot be said that Novartis improperly
captured unjustified patent term. The ’990 patent had not yet issued, and the ’772 patent, as a pre-URAA patent, was confined to a 17-year patent term.

The Federal Circuit concluded that in this particular situation where we have an earlier filed, earlier-issued, pre-URAA patent that expires after
the later-filed, later-issued, post-URAA patent due to a change in statutory patent term law, it would not invalidate the challenged pre-URAA patent by finding the post-URAA patent to be a proper obviousness-type double
patenting reference.

Petitioner is Entitle to Remedy Against Defaulting ITC Respondents

In Laerdal Medical Corp. v. ITC, [2017-2445] (December 7, 2018), the Federal Circuit reversed the ITC’s denial of remedies against defaulting respondents because Laerdal failed to properly plead its trade dress claim.

, [2017-2445] (December 7, 2018), the Federal Circuit reversed the ITC’s denial of remedies against defaulting respondents because Laerdal failed to properly plead its trade dress claim.

The Commission concluded that, even when the pleaded facts were presumed true, Laerdal failed to show that any of the defaulting respondents violated § 1337 with respect to the alleged trade dresses and copyrights.  Specifically, the Commission found that Laerdal failed to plead sufficiently (1) that it suffered the requisite harm, (2) the specific elements that constitute its trade dresses, and (3) that its trade dresses were not functional.

Thus, despite approving the ALJ’s initial determination finding all respondents in default and despite requesting supplemental briefing solely related to the appropriate remedy, the Commission issued Laerdal
no relief on those claims or against any of the respondents named in those claims.  Laerdal appeals the Commission’s termination of its trade dress claims, contending the Commission acted in violation of § 1337(g)(1) by terminating the investigation and issuing no relief for its trade dress claims against defaulting respondents.

19 U.S.C. § 1337(g)(1) provides that in the event of a default, the Commission shall presume the facts alleged in the complaint to be true and shall, upon request, issue an exclusion from entry or a cease and desist
order, or both.  The Federal Circuit concluded that statute, on its face, unambiguously requires the Commission to grant relief against defaulting respondents, subject only to public interest concerns, if all prerequisites of § 1337(g)(1) are satisfied. The statute’s plain text, surrounding context, purpose, and legislative history, as well as the Commission’s own
prior decisions, supported this conclusion.

 

Posted in ITC