BLIP: Blogging Patents

Mr. Ohman responded to yesterday's posting, expressing concerns as to the accuracy of its content. In an email message to me, he said that his design patent was amended because the USPTO simply asked him to choose one design of the three he originally filed, that he was not "forced" to amend his claims, and that the Patent Office did not refuse anything. See Yesterday's Posting. He also stated that he felt the information in yesterday's posting to be defamatory and libel. It was certainly not the intent of the posting to cause any hurt feelings. But, the discussion of the prosecution of Mr. Ohman's patent-in-suit is factually accurate. To make the record on this site clear and complete, I've prepared the following summary of the prosecution history of the design patent that Mr. Ohman asserted in his lawsuit against the Lance Armstrong Foundation.

The entire prosecution history can be viewed by those interested in the details on the PTO website. USPTO Public Pair Portal. The record shows that on 2/21/2007, the Patent Office did reject the then-pending claim to a pet collar with the LIVESTRONG marking, citing to evidence of LAF's prior use of the design on its web-site. The record also shows that in response to this rejection, the applicant cancelled two figures and renumberd one so as to claim the BARKSTRONG marking instead of the LIVESTRONG marking.

The only patent that Mr. Ohlman's complaint alleges has been infringed is United States Design Patent No. D556,389. Mr. Ohman filed the original application that gave rise to this patent on July 6, 2005. The application number was 29/233,646. In the application, he tried to obtain claims to pet collars with three different marks: Fig. 1 - LIVESTRONG; Fig. 2 - BARKSTRONG; and Fig. 3 PURRSTRONG.

On 12/1/2006, the Patent Office issued a restriction requirement. A restriction requirement requires the applicant to select one invention for one patent, and, if he wishes to pursue other inventions, to pay additional application fees for processing those inventions. On 12/12/2006, Mr. Ohman elected to pursue Group I, which was the design using the phrase LIVESTRONG.

On 2/21/2007, the Patent Office issued a rejection to the claim. Page 3 of the rejection states "[t]he claim is rejected under 35 U.S.C. 103(a) as being unpatentable over the "LIVESTRONG" logo depicted on the Lance Armstrong Foundation website as of May 6, 2004.

On 5/21/2007, in response to the rejection by the Patent Office, the applicant submitted an amendment, in which he cancelled the LIVESTRONG and PURRSTRONG drawings from the application, and changed "FIG. 2" for BARKSTRONG to "FIG. 1." The applicant's stated reason for this change was that "[t]he Office Action objected to the specification, claim, and drawings due to informalities." See Response at 5. The response made no mention of the pending 103 rejection.

The claim to the BARKSTRONG design was then allowed. On 10/2/2007, before the patent issued, Mr. Ohman appears to have filed two continuing applications, numbered 29/292,189 and 29/292,189.

In his comment to yesterday's post, Mr. Ohman notes that there is "no mention or claim of the divisional patent (LIVESTRONG) in this suit." Technically, that statement is true. The only patent asserted in the lawsuit Mr. Ohman filed against the Lance Armstrong Foundation is the one claiming the "BARKSTRONG" design. The two continuing applications filed on 10/2/2007, presumably one of which is the divisional application referred to by Mr. Ohman, have not issued as patents and are not currently available to the public. However, Mr. Ohman's reference to a "divisional patent (LIVESTRONG)" implies that he is presently seeking to obtain a design patent for the "LIVESTRONG" design. Because no such patent has issued, there is of course no such patent at issue in Mr. Ohman's current lawsuit.

In an apparent retaliatory lawsuit, Chris Ohman has sued the Lance Armstrong Foundation ("LAF") for infringing a design patent to its "BARKSTRONG" dog collar design. In his complaint, filed in the Northern District of Oklahoma last week, Mr. Ohman claims to own patent rights to the use of the LAF's signature LIVESTRONG mark on pet collars , and accuses "LIVESTRONG" pet collars sold by the LAF of infringement. The lawsuit appears extremely questionable in light of the fact that the Patent Office expressly denied Mr. Ohman design patent protection for collars with the word "LIVESTRONG " printed on them because of prior art found on none other than LAF 's own website.

The dispute between Mr. Ohman and the LAF appears to have begun in June, 2005 when Mr. Ohman began selling yellow pet collars with the markings BARKSTRONG and PURRSTRONG. Last September, to prevent dilution of its Trademark, LAF filed suit against Ohman in the Western District of Texas. According to the Texas complaint filed by the LAF, Mr. Ohman approached the LAF in July of 2005, a few weeks after filing a design patent application that, if granted, would give Ohman a patent on the use of LAF's signature LIVESTRONG mark for dog collars. Mr. Ohman's tactic did not work, and no license was granted. Meanwhile, the Patent Office refused to grant Ohman a patent with the LIVESTRONG mark, and, as shown below, Ohman was forced to remove it from his proposed drawings.

Undeterred, Mr. Ohman filed a lawsuit that, when scrutinized by the Court, may well raise concerns. Stay tuned for the continuing battle to see whose collars are the strongest.

A patent is a deal with the U.S. government. In exchange for elevating the knowledge of the public in general by publishing a description of an invention, the government gives, in return, a "monopoly."

But the monopoly in the patent world is a different animal than what most would consider a true monopoly. When most people think about a monopoly, they think of the ability of one person or company to assert dominance in a certain market by being the only seller of a product. That is not the case in the patent world. A patent does not guarantee any dominance in any market whatsoever; in fact, it does not even give the patent holder the right to make the patented product at all.

While seemingly counterintuitive, this is the way the patent system has to work because of the nature of patentable inventions. Sir Isaac Newton, arguably one of the greatest scientists and inventors of all time, perfectly but unintentionally characterized the patent system when he said, "If I have seen further it is by standing on ye shoulders of Giants."

... Read more

The Federal Circuit's recent decision in Aristocrat Technologies will require software patent drafters to take more care to describe the algorithms covered by their software--or risk patent invalidity. (See Aristocrat Technologies.) The court held that expert testimony that a programmer would know how to write code to perform a given function cannot supplement an incomplete patent disclosure when software claims are written using "mean-plus-function" format. Means-plus-function format means that something is claimed by the function it performs rather than by a specific structure--for example, a means-plus-function claim might recite a "means for fastening paper together" as opposed to a "paper clip." Software claims written in means-plus-function form are invalid unless the specification discloses an algorithm that performs the function stated in the claims.

Because many software patents fail to describe the necessary algorithms, the Aristocrat case will likely result in more software patent claims being invalidated by the courts (at least those written in means-plus-function format) and should encourage patent practitioners to include more details in their specifications. Though the algorithm need not be spelled out in detail, patent practitioners would do well to make sure that their software patents discloses algorithms.

The problem of unreadable software claims
In light of the "algorithm rule", one might ask why a patentee would ever write a software patent using "means-plus-function" language in the first place. One reason has to do with the difficulty patent drafters face writing claims that cover software.

Patent claims are a linguistic nightmare, a fact that tends to be all the more true for software inventions. Part of the reason is that no matter how complex the invention may be, every patent claim is written in one long run-on sentence. Though not required by Congress, Patent Office procedure insists that patent claims be written in single-sentence form. (See MPEP Sec. 608.01(m).) In the only case to challenge the one-sentence rule, the court sided with the Patent Office. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). By its very nature, software tends to be a complex series of steps, often iterative and interrelated--which makes it hard to describe precisely in a single sentence.

For example, if a software invention included a mortgage calculator with a routine for calculating compound interest, one way to claim the subroutine would be to detail the steps of the algorithm: (1) receiving the principal, interest rate, compounding period, and term of the loan; (2) applying the compound interest formula to determine the amount to be paid; (3) determining the number of payments in the payment period; and (4) dividing the amount to be paid by the number of payments to determine the size of each payment. Writing this out, along with the other aspects of the program that presumably made it patentable, in a single sentence, all but guarantees unreadable prose.

The use of means-plus-function claims in software
One solution that patent lawyers sometimes use is to write claims using the means-plus-function format. Rather than detail all the steps performed by the computer program, the patent drafter recites a "means for calculating compound interest." This kind of patent shorthand makes the claim much easier to read. But, there is an important catch. Claims written in means-plus function language do not cover every means for performing the recited function. Instead, by statute, they are limited to the structure disclosed in the specification that is clearly linked to performing the function, and to equivalent structures. (See 35 USC § 112, ¶ 6) In the world of software, this means the claims are limited to the algorithm or algorithms disclosed in the patent, and equivalents thereto.

The problem arises if the patent never mentions the general steps that a computer would follow to calculate interest. There is no doubt that a skilled programmer could write a mortgage interest calculator, perhaps as a subroutine, perhaps as an object, perhaps as a lookup table. There could be many ways to write such a program, all within the expected ability of an undergraduate computer student. But, that's not the issue. If the patent claim recites a "means for calculating compound interest," then the patent must disclose an algorithm that is clearly linked to calculating compound interest.

One alternative is simply not to use means-plus-function claim language, and to find a different solution to the claim drafting challenge. But even so, it still makes sense to disclose some specific algorithms in the patent. Patents and the form of their claims often evolve during the years before they issue from the Patent Office. It will generally be good practice to err on the side of additional disclosure up front to provide support for the claims as they evolve.

The goal of BLIP is to keep the non-patent lawyer apprised of recent developments in the world of intellectual property law. This post is not directed toward that goal. Today's post is devoted to raising awareness about the patent law with the coolest title: "Inventions in outer space."

The collection of laws that govern patents can be found in Title 35 of the U.S. Code. Anyone having any familiarity with patent laws knows about sections 101-103 of 35 U.S.C.--these sections deal with what is patentable and how you judge if a patent is in fact novel or not obvious. But unbeknownst even to most practicing patent lawyers is that two sections later--in section 105--Congress has enacted a law specifically directed to extraterrestrial patents:

... Read more

"How can we possibly infringe this patent--we're just doing what people have done for years." This familiar refrain is what's known in the patent law as the practicing the prior art defense. But, other than a narrowly defined exception for business methods, the "practicing the prior art defense" has been squarely rejected by the courts. See Tate Access Floors Inc. v. Interface Arch. Res. Inc., 279 F.3d 1357 (Fed. Cir. 2002). Why do the courts reject such a seemingly reasonable argument?

To begin with, the fact that one is practicing the prior art doesn't prove they're not also doing something that infringes. For example, if I design and build a car that uses a gasoline engine and has LED headlights, I'm practicing the prior-art inventions of Daimler and Benz for a gas-powered automobile. If a patent holder claiming to have invented the combination of LED headlights sues me, the fact that I'm practicing the prior art makes no difference. The real question is, do the patent claims cover the use of LED headlights on an automobile--and does my car infringe those claims. An infringement analysis is determined by comparing the claims of the patent to my device, "not by comparing the accused device to the prior art."

What people really mean when they say they are practicing the prior art is that they are not doing anything new. In other words, if the patent claims cover what they are doing, then they must be invalid because they read on the prior art. So why does it matter whether the issue is infringement or validity?

The answer lies in the burden of proof in patent cases. To prove infringement, a patent owner must convince a jury that, in light of all the evidence, it is more likely than not that the defendant infringes. At trial, the jury will see the patent and the accused product, and will hear testimony from experts on both sides of the case to inform its decision. Jurors realize that most of the witnesses they hear from have some bias in the case, so they rely on their judgment to decide which side is telling the truth. On the other hand, when the validity of the patent is challenged, the jury is asked to question the judgment of the Patent Office--which the jury knows is unbiased. To prove invalidity, the defendant must prove by the much higher "clear and convincing evidence" standard that the patent is invalid. In other words, the jury must decide that the Patent Office clearly made a mistake.

During the past 12 months, the U.S. Patent office issued approximately 182,000 utility patents containing millions of patent claims. Many of them are very likely invalid. But, they are all presumed valid until proven otherwise. Given the choice between convincing a jury that the U.S. government got it wrong in any particular case and proving that the plaintiff has it wrong, most of us would rather take on the plaintiff, which is why lawyers and their clients continue to argue the "practicing the prior art" defense.

Maybe you are of a sufficient vintage to remember the game show Let's Make a Deal. But have you ever thought about the similarities between that show and the U.S. patent system?

In the game show, contestants would have to pay a price (a wallet containing $500) to see what was behind door No. 3 (maybe a live goat; maybe a brand new faux wood-paneled station wagon). Similarly, in the U.S. Patent and Trademark Office, the government pays a price (allowing a unique brand of monopoly) to see what is in envelope No. 3 (your invention). The analogy may seem far-fetched, but the basic premise is the same: that is, paying a price to see what is otherwise concealed. And even in the realm of patent law, sometimes the government ends up with...a goat.

Fortunately, unlike the game show, there are several ways the USPTO can get out of the deal even after the envelope is opened and the invention disclosed. To be worthy of a patent, the invention must be new, useful, and non-obvious. While the "new" and "non-obvious" requirements normally get most of the attention, the USPTO and the U.S. Court of Appeals for patent cases (the Federal Circuit) have taken a somewhat surprising approach in the past couple of months to back out of deals with potential patentees--rejecting patent applications on the basis of usefulness. In other words, the Federal Circuit has been deciding that certain classes of inventions just aren't patentable.

What is really creating a buzz in the patent world is that the USPTO and the Federal Circuit have recently addressed an almost decade-old class of patents that has developed a reputation as the runt of the litter as far as patents go--business method patents. Love them or hate them, the Federal Circuit's 1998 decision in the State Street Bank case has been widely interpreted to allow for the patenting of new and novel business methods. Since that case, the USPTO has been inundated with business method patent applications and, more specifically, software applications. The question is, will this trend continue?

... Read more