Anticipate This!™ | Patent and Trademark Law Blog

Bennett Regulator Guards, Inc. v. Canadian Meter Company, Inc., et al.

Posted in Opinion Commentary by Jake Ward on June 19, 2006

(Fed. Cir. 2006, 05-1425), non-precedential 

The CAFC vacated a grant of summary judgement by the district court (N.D. Ohio), finding that there was a genuine issue of material fact as to the public nature of testing of the accused product, as well as a genuine issue of material fact as to whether knowledge of the product was accessible to the public, prior to invention of the subject matter of Bennett's U.S. Pat. No. 5,810,029.

The technology at issue was Meter's "Splash Guard," a device that keeps water from splashing onto the screen of a gas regulator, and freezing in cold conditions.  The majority held that testimony that the regulatory testing of the product may have been "proprietary" raised a genuine issue of material fact as to the public nature of the testing.  Additionally, the majority held that while letters to potential customers regarding the accused product may indicate intent to publicize the product, they do not establish that technical knowledge of the product was made public.  "One can publicize that a new product exists while still keeping an enabling disclosure of the structure and function of the product secret."

In his dissenting opinion, Judge Mayer details additional facts relevant to the analysis.  Regarding the letters, a technical sketch had been provided.  Further, during sales tours, samples of the device along with a letter stating "please advise of further requirements and customer feedback," were distributed to American gas companies.  Thus, corroborated testimony showed that Meter disclosed the structure and function of its device in the United States, constituting invalidating knowledge available to the public.

A Fulbright Scholar to China

Posted in General Commentary by Jake Ward on June 16, 2006

Prof. Llewellyn Gibbons, coordinator of the IP Certificate program at the University of Toledo College of Law, has recently received a Fulbright grant to study intellectual property law in China. 

Llew has previously supplied excellent guidance to students planning to pursue careers in IP law.  As a particular example, Llew provided great suggestions during my own independent research into Chinese IP Law.  See Review of Chinese IP Law.  I genuinely expect that Llew will make good use of the Fulbright as he explores IP issues in China (and in particular how the Chinese government is addressing Internet regulation, e-commerce, and (non)enforcement of intellectual property rights).

Congratulations Llew, and good luck in China at the Zhongnan University of Economics and Law!

Just what do you think you’re rejecting, Dave?

Posted in Science and Technology by Jake Ward on June 15, 2006


Have you heard of the Invention Machine?  Through a novel use of genetic algorithms, a computer (or rather a series of computers and computer programs) has now generated an invention deemed patentable by the USPTO.  In fact, according to this article in Popular Science, a patent issued on January 25, 2005 on an invention generated by the Invention Machine (apparently U.S. Pat. No. 6,847,851).  Listed on the face of this patent as inventor and assignee was John Koza, the inventor of the Invention Machine.

Aside from the philosophical question of whether a machine can truly “conceive” an invention, there is the legal question of whether there is an actual “inventor” under U.S. law if a machine generates the invention?  The law presently requires that the applicant for a patent be the inventor (a “person” and not, e.g., a corporation) and that all persons contributing to the conception of the claimed invention be named as inventors.  See MPEP 2137.01.  If the only human involvement is the entering of raw data and technical parameters into the Invention Machine, has there truly been a conception by an inventor? 

According to the above article, the Examiner had no idea that he was looking at the intellectual property of a computer.  If he had, however, he might have had an opportunity to consider the novelty issues associated with naming the Invention Machine’s inventor as the applicant.  “A person shall be entitled to a patent unless . . . he did not himself invent the subject matter sought to be patented.” 35 U.S.C. § 102(f) (emphasis added).  Can it be said that the inventor of a machine that generates inventions will “conceive” every invention that the machine turns out?  Or, is the Invention Machine nothing more than a complex tool, akin to a ruler or a calculator, that inventors use daily in making technological advances? 

On another note, does this situation also pose a potential solution to the present workload crisis at the USPTO?  If machines can be inventors, can machines also be Examiners?  You heard it here first!

Primos, Inc. v. Hunter’s Specialties, Inc., et al.

Posted in Opinion Commentary by Jake Ward on June 14, 2006

(Fed Cir. 2006, 05-1001

Primos had filed suit in 2001 against Hunter’s Specialties for infringement of two of Primos’s “game call” patents.  On appeal from the District Court for the Northern District of Iowa, the CAFC affirmed the construction of the term “engaging” in finding literal infringement of U.S. Pat. No. 5,520,567 (the ‘567 patent), and also found infringement of U.S. Pat. No. 5,415,578 (the ‘578 patent) under the doctrine of equivalents. 

The relevant claim in the ‘578 patent recited “. . . a second roof-of-mouth engaging portion extending upwardly from the frame . . . .”  The relevant claim in the ‘567 patent recited “. . . a plate having a length, the plate extending generally upward from the frame . . . .”  The accused device sold by Hunter’s was a diaphragm mouth call device having a dome (not a plate) extending above a membrane.


They Invented What? (No. 4)

Posted in They Invented What? by Jake Ward on June 14, 2006

U.S. Pat. No. 5,058,833: Spaceship to harness radiations in interstellar flights


What I claim is:

1. A craft for flight in the atmosphere or space, comprising a cylindrical body having a front end and a rear end, propulsion means positioned in said rear end, and a propeller mounted about a shaft extending from said front end, said propeller being rotatable about and independent of said shaft.


Phillips v. AWH Corporation, et al.

Posted in Opinion Commentary by Jake Ward on June 8, 2006

The specification necessarily informs the proper construction of the claims.

(Fed. Cir. 2005, 03-1269)

The CAFC vacated an earlier judgement by a panel of the court, and granted a rehearing en banc.  Phillips had invented modular, steel-shell panels that may be welded to form vandalism-resistant walls.  Claim 1 of the Phillips patent recites “further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls.” 

Phillips alleged trade secret misappropriation and patent infringement. The infringement issue revolved around the meaning of the term “baffles.”  In particular, the district court had previously ruled that the “baffles,” as construed in light of the specification, must extend inward at an oblique or acute angle to the wall face.  Under this construction, Phillips could not prove infringement.


Comment on Opinion Commentary

Posted in General Commentary by Jake Ward on June 8, 2006

This blog is meant to, among other things, provide commentary on IP-related cases, old and new.  In contrast, there are many other patent blogs that focus almost exclusively on recent opinions.  I intend to post commentary on opinions that interest me as a practitioner, regardless of whether they issued today or 40 years ago.

Thus, I hope you enjoy the following post regarding Phillips v. AWH Corporation ,et al. . . . a semi-recent opinion (2005), and one that is very relevant to today's practice.

They Invented What? (No. 3)

Posted in They Invented What? by Jake Ward on June 7, 2006

U.S. Pat. No. 5,553,327:  Hat made from cardboard beverage container and method of making the same


We claim:

1. A method of making a hat, comprising the steps of:

(a) cutting a plurality of hat elements from cardboard product container material including graphics disposed on an exterior surface thereof, wherein the cutting step comprises the steps of:

     (1) cutting a brim, first and second side members, first and second connecting members and a top member from the material according to predetermined patterns, wherein the side members include top, bottom, front and rear edges; and

     (2) forming an aperture in the brim; and

(b) assembling the hat elements to form a hat, wherein the graphics printed on the exterior surface of the container material are disposed on visible exterior surfaces of the hat, and wherein the assembly step includes the steps of:

     (1) joining bottom edges of the first and second side members to the brim such that the side members circumscribe the aperture in the brim;

     (2) joining opposing front and rear edges of the first and second side members together by overlapping the front and rear edges with the first and second connecting members, respectively; and

     (3) joining the top member to the first and second side members proximate top edges thereof.