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.

Federal Circuit Remands WesternGeco’s Damaged Damages Case

In WesternGeco L.L.C., v. Ion Geophysical Corporation, [2013-1527, 2014-1121, 2014-1526, 2014-1528](January 11, 2019), the Federal Circuit, on remand from the Supreme Court, remanded to the district court.

The Supreme Court held that WesternGeco’s damages award for lost profits was a permissible domestic application of 35 U.S.C. § 284,” reversing the Federal Circuit.

But the Supreme Court did not decide other challenges to the lost profits award. In light of the Supreme Court’s decision and the intervening invalidation of four of the five

asserted patent claims that could support the lost profits award, the Federal Circuit remanded the case to the district court.

Anticipation is the Epitome of Obviousness

In Realtime Data, LLC, v. Iancu, [2018-1154] (January 10, 2019), the Federal Circuit affirmed the PTAB’s determination that claims 1–4, 8, 14–17, 21, and 28 of U.S. Patent No. 6,597,812 on systems and methods for providing lossless data compression and decompression would have been obvious over the prior art.

Realtime made two primary arguments on appeal: (1) that the Board erred in its determination that a person of ordinary skill in the art would have been motivated to combine the teachings of O’Brien and Nelson; and (2) that the Board erred by failing to construe the “maintaining a dictionary” limitation and in finding that O’Brien disclosed the “maintaining a dictionary” limitation.

HP’s primary argument to the Board was that all of the elements of claims 1–4, 8, and 28 were disclosed in O’Brien, a single reference, and it relied on Nelson simply to demonstrate that a person of ordinary skill in the art would have understood that the string compression disclosed in O’Brien was, in fact, a type of dictionary encoder, the terminology used in the ’812 patent.  HP alternatively argued that that Nelson disclosed at least some of the elements in the claims at issue.  Because the Board agreed that all of the claim elements could be found in O’Brient alone, the the Board was not required to make any finding regarding a motivation to combine.  Had the Board relied upon HP’s alternative argument, it would have been required to demonstrate a sufficient motivation to combine the two references.

While Realtime argues that the use of O’Brien as a single anticipatory reference would have been more properly raised under §102, the Federal Circuit said that it is well settled that “a disclosure that anticipates under § 102 also renders the claim invalid under §103, for ‘anticipation is the epitome of obviousness.’”

The Federal Circuit said that in any event, even if the Board were required to make a finding regarding a motivation to combine O’Brien with Nelson, its finding in this case is supported by substantial evidence.  The Federal Circuit noted that a motivation to combine may be found “explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.”

On the issue of whether the Board erred in finding that O’Brien disclosed the “maintaining a dictionary” limitation in independent claim 1, Realtime argued that the Board erroneously failed to construe the term “maintaining a dictionary” to include the requirement that the dictionary be retained during the entirety of the data compression unless and until the number of entries in the dictionary exceeds a predetermined threshold, in which case the dictionary is reset.  While the words of a claim are generally given their ordinary and customary meaning, a claim term is read not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.  These claim construction principles are important even in an inter partes review proceeding like this one, in which the claims were properly given the “broadest reasonable interpretation” consistent with the specification.

The Federal Circuit said that the Board’s interpretation was supported by both the claim language itself and the specification. While the term “maintaining a dictionary” is not defined, claim 4 lends meaning to the phrase, and directly mimics the specification.  Realtime argued that because the claim recited “comprising” the Board erred by limiting the definition of “maintaining a dictionary.”  The Federal Circuit rejected, this argument pointing out that the word “comprising” does not mean that the claim can be read to require additional unstated elements, only that adding other elements to the device or method is not incompatible with the claim.

The Federal Circuit concluded that the Board did not err in concluding that the claims would have been obvious in view of a single reference, and that the Board did not err in finding that O’Brien disclosed the “maintaining a dictionary” limitation in independent claim 1, and therefore affirmed the Board.

PTAB Reconsideration Did Not Violate Due Process

In AC Technologies S.A., v. Amazon.com, Inc., [2018-1433] (January 9, 2019) the Federal Circuit affirmed the Final Written Decision of the PTAB ruling certain claims of AC Technologies S.A.’s U.S. Patent No. 7,904,680 unpatentable. AC complained that the Board, on reconsideration, invalidated claims based on a ground of unpatentability raised in their petition but not addressed in the original Final Written Decision, arguing that the Board exceeded its authority and deprived it of fair process by belatedly considering this ground.

The Federal Circuit disagreed, noting that precedent mandated that the Board consider all grounds of unpatentability raised in an instituted petition. The Board complied with due process, and AC did not persuade it that the Board erred in either its claim construction or its ultimate conclusions of unpatentability.  The Petition contained three grounds, Ground 1 alleged unpatentability giving the claims, and in particular, the term “computer unit” a narrow construction.  Grounds 2 and 3 asserted unpatentability over the same reference, giving “computer unit” a broader construction.

The Board invalidated claims based upon Grounds 1 and 2, but not three.  When the inconsistency was pointed out on request for rehearing, the Board address Ground 3.  The Federal Circuit said that no due process violation occurred here. As AC admits, after the Board decided to accept Amazon’s rehearing request and consider Ground 3, it permitted AC to take discovery and submit additional briefing and evidence on that ground. The Federal Circuit noted that alhough AC did not receive a hearing specific to Ground 3, it never requested one. Had AC desired a hearing, it should have made a request before the Board.

Posted in IPR

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.