Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 14)

Posted in They Invented What? by Jake Ward on August 30, 2006

U.S. Pat. No. 4,805,654:  Motor vehicle sunshields and sunshield making methods.


I claim:

1. A sun shield for automobiles comprising: a main rod, one end portion of which has a joint fixed thereon, the rod having three runners slidably sleeved thereon, said runners herein being referred to as first runner, second runner and third runner according to their position relative to the joint, between the joint and the second runner having locking means mounted on the rod for detachably locking the first runner; a plurality of main ribs radially extended from the axis of the main rod, each main rib being assembled from at least two sub-units which are slidably and stretchably telescoped on one another, one end of each main rib being hinged in said joint, the other end of the same herein being referred to as free end; a plurality of auxiliary ribs correspondingly mounted with the main ribs, one end of each auxiliary rib being hinged in said first runner, the other end of the same being hinged in a corresponding main rib; at least three legs isometrically extended from the axis of said main rod, one end of each leg being hinged in said second runner, the other end of the same having a sucker hinged thereon; at least three supporting ribs correspondingly mounted with the legs, one end of each supporting rib being hinged in said third runner, the other end of the same being hinged in the corresponding leg; and a flexible cloth disposed over the main ribs which is fixed at its periphery to the free ends of said main ribs, the size of said cloth being capable of entirely covering the main ribs while the main ribs are in a stretched state.

2. A sun shield as claimed in claim 1, wherein each sucker comprises a suction mat adapted to adhere to the roof surface of an automobile, a retrievable rod, one end of which is fixed in the central portion of the mat, and a grip attached in the other end of the retrievable rod for pulling the central portion of the mat by means of the retrievable rod.

3. A sun shield as claimed in claim 1, wherein each sucker comprises a magnet by which the sun shield can be made to attract to the roof of a car.

4. A sun shield as claimed in claim 1, wherein the main rod comprises an upper portion which is assembled with said main ribs and said auxiliary ribs, and a lower portion which is assembled with said legs and said supporting ribs, said lower portion being formed as a hollow post and said upper portion being slidably telescoped within the lower portion.

Dow’s Trade Secrets Sold to China?

Posted in General Commentary by Jake Ward on August 29, 2006

According to this Reuters article, U.S. authorities have recently arrested David Liu, a former Dow R&D employee of 27 years (retired), and charged him with attempting to sell stolen trade secrets to Chinese companies.  It is further alleged that Liu later hired Dow Chemical employees to prepare a detailed engineering package to sell to prospective Chinese buyers.

The secrets Liu allegedly was trying to sell were connected to Dow´s Tyrin-brand chlorinated polyethylene business. Tyrin is used primarily as an impact modifier in vinyl and PVC, as well as general rubber applications.  Tyrin applications include automotive and industrial hoses, electrical cable jackets, vinyl siding and window framing.  See Dow website.

The Uniform Trade Secrets Act (UTSA) defines a “trade secret” as information, including a formula, pattern, compilation, program device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. 

When used properly, trade secrets can be a valuable means of protecting intellectual property.

Note:  David Liu has been charged with 15 counts, including eight counts of wire fraud. If convicted, he could face a total of 300 years in jail and a maximum fine of $9.75 million. 

Your Grantable Ticket, Please?

Posted in Practice Commentary by Jake Ward on August 29, 2006

As of August 25, 2006, the USPTO has established procedures under which the examination of a patent application may be accelerated.  See USPTO Website, Accelerated Examination. Under these procedures the USPTO will advance an application out of turn for examination if the applicant files a grantable petition to make special. 

In brief, to qualify for the new accelerated examination program, applicant must do the following:

1. Submit a petition to make special and a fee (where appropriate);
2. File a request with respect to an application filed under 37 CFR 1.111(a);
3. File an application via the EFS or EFS-Web; also all follow-on submissions;
4. File a complete application complying with 37 CFR 1.51;
5. File 3 or fewer independent claims and no more than 20 total claims;
6. File an application for a single invention or agree to elect without traverse a single invention for examination;
7. Agree to an interview with the examiner to discuss any outstanding issues arising in the examination process;
8. Conduct a pre-examination search; and
9. Provide an accelerated examination support document.

As I stated in my post “All Aboard the USPTO Express?,” I believe this program is an interesting proposition.  It certainly remains to be seen whether this new procedure will be accepted by practitioners and/or have any appreciable impact on USPTO backlog.

USPTO Five-Year Plan

Posted in General Commentary, Practice Commentary by Jake Ward on August 29, 2006

The USPTO has recently announced the release of a DRAFT Five-Year plan for “Continued World Leadership in IP Protection and Policy.” The roadmap was made available for public comment.  See press release.

With respect to patents, the proposals are aimed at ensuring quality and timeliness in the patent review process. Broad goals are outlined, e.g. programs to define and improve “quality,” determining acceptable time frames for prosecution, hiring, training and retaining highly skilled patent examiners, abolishing the one-size fits all examination system, focusing examination on the claimed invention, and leveraging state-of-the-art information technology.  Specifically enumerated initiatives proposed for meeting said goals include:

          1.) hiring at least 1,000 patent examiners annually for the next five years;
          2.) possibly establishing regional offices;
          3.) creating partnerships with universities;
          4.) offering retention bonuses and new monetary awards to patent examiners for meeting goals; and
          5.) maximizing the potential of state-of-the-art electronic tools.

These are lofty goals, and the USPTO certainly has its work cut out for it when it comes to reforming the system.  The USPTO should be applauded for taking the task on . . . and it will be interesting to watch what changes will be adopted (and, more importantly, whether those changes actually improve the quality of patents issued). 

I wonder, does “state-of-the-art electronic tools” include the Examining Machine?

Patent Trolls and Definitions Thereof.

Posted in General Commentary by Jake Ward on August 28, 2006

As defined by Wikipedia (arbitrary and capricious?), the term “patent troll” is a derogatory term used to describe a patent owner, frequently a small company which enforces patent rights against accused infringers, but does not manufacture products or supply services based on the patents in question.  A patent troll may represent an entity which performs research or manufactures products incorporating the patented technology, though the troll itself does not. Patent trolls focus their business on the enforcement of intellectual property rights.

Aside from the derogative connotation the term is given, I dislike the Wikipedia definition.  Something is missing.  Are patent trolls, as defined, really all that bad? 

By definition, the patent right is a right to exclude others from making, using and selling the patented invention for the term of the patent.  In a sense, the patent is a contract with the government to a limited monopoly negative right on the technology, which is provided in exchange for full disclosure to the public.  If a full disclosure has truly been made, i.e., if the troll has held up its end of the bargain, hasn’t the troll every right to do with the intellectual property as the troll sees fit? 

Rather than having the definition focus exclusively on the behavior of patent trolls, I believe a more pertinent characteristic is the quality of a troll’s patents.  Isn’t the disgust associated with the term more related to the enforcement of questionable patents, the enforcement of which can result in exorbitant licensing fees and/or the inhibition of technological developments?  Would the general public really be that upset if the patent being enforced was unquestionably (or at least reasonably) valid? 

I believe the definition of “patent troll” (Wikipedia or otherwise) should be further limited by requiring that the patent also be of “reasonably questionable validity” .. . . in addition to focusing on the behavior of the alleged troll. 

How do you think the term “patent troll” should be defined?

Flexsys 6PPD Suit to Proceed in District Court (N.D. Ohio)

Posted in Litigation Commentary by Jake Ward on August 27, 2006

According to the Rubber & Plastics News (subscription required), the U.S. District Court for the Northern District of Ohio has recently allowed Flexsys America L.P. to proceed with a $20 million patent infringement lawsuit against Chinese chemical producer Sinorgchem Co.; its U.S. distributor, Akron-based Sovereign Chemical Co.; South Korean tire maker Kumho Tire Co. Inc.; and its U.S. subsidiary, Kumho Tire U.S.A. Inc.  The district court case had originally been stayed while a companion case was pending before the U.S. International Trade Commission (ITC).

Flexsys asserted in the ITC complaint that the above parties infringed on Flexsys’ U.S. Pat. Nos. 5,117,063 (the 063 patent), 5,608,111 (the 111 patent) and 6,140,538 (the 538 patent) related to N-(1,3-dimethylbutyl)-N’-phenyl-p-phenylenediamine (“6PPD”).  This chemical is a rubber antidegradant found in most tires sold in the United States.

On July 13, the ITC ruled that Sinorgchem violated Flexsys patents drawn to methods of manufacturing 6PPD and a precursor feedstock, 4-ADPA.  The ITC further ruled that Sovereign infringed by selling Sinorgchem’s versions of those products in the U.S.

Notably, the ITC exonerated Kumho, but Flexsys kept the tire maker and its U.S. arm in the lawsuit, stating the issues in the suit were different from those in the ITC case.

The limited exclusion order by the ITC may be viewed here:  Investigation No. 337-TA-533.

JW Note:  As a former rubber compounder in the tire industry (and thus being very familiar with 6PPD), I found this article to be of great interest . . . at the crossroads of my legal and technical expertise.  It will be interesting to watch how this case develops!

Meade Instruments v. Yamcon

Posted in Opinion Commentary by Jake Ward on August 27, 2006

Directional Arrows Provided by the Accused Device Were Not “Data” Within the Meaning of the Claims. 

(Fed.Cir. 2006, 05-1555), non-precedential

The District Court (C.D. Cal.) granted summary judgement for Yamcon under a holding of non-infringement of Meade U.S. Pat. No. 5,311,203 (the 203 patent).  On appeal, the CAFC upheld the claim construction of the district court and the finding of non-infringement of the 203 patent.

The 203 patent technology relates to a handheld device for locating and identifying visible celestial objects.  The accused Yamcon product (the “Skyscout”) is also a handheld device with an eyepiece to see a portion of the sky.  The Yamcon device also has a find mode with directional arrows for finding objects.  Notably, the display screen of the device is situated on one side and not in the user’s field of view.

In particular, Meade challenged the construction of term “data” and the requirement that the data be “simultaneously presented to the user as the user observes the field of view” and “be  provided to the user . . . in real-time as the user observes the field of view of the apparatus.” 

With respect to the “data” term, the CAFC held that the specification made it clear that the term referred to a predetermined set of data entered into the device’s database and “not merely to an abstract bit of data in the broadest sense of the term.”   Thus, the directional arrows provided by the Yamcon device in find mode were not the “data” of the 203 patent.

The CAFC also held that the Yamcon device lacked the “simultaneity” feature of the 203 patent claims.  Because one using the Yamcon device would have to look to the side screen, the data is not presented or provided to the user at the same time as the user observes the field of view.  Regardless of the claim differentation argument made by Meade (narrower dependent claims drawn to real-time displays), the broadest scope that can be construed for the claims at issue does not encompass the Yamcom device.

On this basis, the CAFC concluded that the Yamcom device does not infringe the 203 patent and the summary judgment was upheld.  Affirmed.

Fuji Photo Film Co., LTD. v. Benun, et al.

Posted in Opinion Commentary by Jake Ward on August 27, 2006

General Exclusion Order by the ITC Does Not Alter a District Court’s Authority to Enjoin Importation of Products Subject to the Order.

(Fed. Cir. 2006, 05-1445)

On appeal from the District Court (D.N.J) where a preliminary injunction was issued, Ribi Tech challenged the issuance on the theory that the district court lacks jurisdiction to enjoin importation of products already subject to a general exclusion order by the International Trade Commission (ITC).  Specifically, Ribi Tech argued that the International Trade Court has exclusive jurisdiction over matters relating to such goods. 

The allegedly infringing products were LFFPs or disposable cameras.  Benun et al. produced and imported a large number of LFFPs, many of which were seized under a general exclusion order by the ITC and barred from import at the request of Fuji Film.

The CAFC noted that a patentee can bring suit both in a district court and in the ITC against  an alleged infringer who is importing an allegedly infringing product.  With respect to ITC suits, 28 U.S.C. Section 1581(a) further states that “[t]he Court of International Trade shall have exclusive jurisdiction of any civil action commenced to contest the denial of a protest [of seizure of goods under general exclusion order].”  However, the CAFC states that even though this section provides exclusive jurisdiction for actions commenced to contest the denial of a protest, Fuji’s complaint is not such an action.  Also, “duplication of litigation efforts is simply not relevant to the jurisdictional inquiry.”

Accordingly, the CAFC held that the district court properly asserted jurisdiction and affirmed the preliminary injunction.