Anticipate This!™ | Patent and Trademark Law Blog

Kim v. Conagra Foods, Inc.

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

“Surrender” Under the Recapture Rule Requires That the Purpose of the Traverse Was to Overcome Prior Art and Secure a Patent.

(Fed. Cir. 2006, 05-1414)

Kim’s lawsuit originally asserted that ConAgra induced infringement of the claims through requiring licensees of “Healthy Choice®” to use ConAgra’s allegedly infringing recipes.  On appeal to the CAFC, Kim challenged the district court’s judgment of noninfringment of her U.S. Patent No. Re. 36,355 (the 355 patent).  Also, ConAgra cross-appealed the judgment that the patent claims are valid.  The CAFC affirmed both judgments of the district court.

The technology at issue relates to oxidizing agents used in breadmaking.  Kim had patented a replacement for potassium bromate.  Incidentally, the FDA had been encouraging the bread industry to find a replacment since potassium bromate was believed by the FDA to be carcinogenic.  Hmmm .  . . tasty.

The relevant 355 claims recited a replacer composition consisting essentially of ascorbic acid, food acid, flour and, in one claim, yeast.  Also of major importance to this suit, the relevant claims were added during reissue of the 355 patent. 

(A)  Recapture Rule and Validity:

After affirming the district court’s construction of the claim term “potassium bromate replacer composition,” the CAFC considered whether Kim improperly recaptured material surrendered during prosecution of her original patent?  During prosecution, Kim had changed to a “consisting essentially of” transition from a “comprising” transition.  She had also added a phosphate limitation.  Upon reissue, Kim added broader claims not requiring phosphate.  ConAgra argued that the addition of phosphate in the original prosecution was a surrender of non-phosphate claims.

Although a patentee may broaden the scope of a patent during reissue to include subject matter that had been erroneously excluded, the patentee is prevented from regaining subject matter that was surrendered in an effort to obtain allowance of the original claims.  In determining whether “surrender” of subject matter has occurred, the proper inquiry is whether an objective observer viewing the prosecution history would conclude that the purpose of an amendment or argument was to overcome prior art and secure the patent?

Under this standard, the CAFC held the prosecution history indicated that the addition of the phosphate limitation was not patentably significant.  The rejections during prosecution were instead overcome by modifying the transition phrase to read “consisting essentially of.”  The changes in food acid ranges were also not made to overcome a rejection.  Thus, Kim did not improperly broaden her claims and recapture “surrendered “subject matter.

The court also noted substantial evidence supporting the jury’s verdict that the claims were not anticipated or obvious.  For this further reason, the CAFC held the claims valid.   

(B)  Noninfringment:

Next, in finding the claims non-infringed, the court found that ConAgras products contained additional ingredients beyond those recited in Kim’s “consisting essentially of” claims.  “[W]ith respect to a ‘consisting essentially of’ claim, there is no infringement where the accused product contains additional, unclaimed ingredients that materially affect the basic and novel properties of the invention.”  Noninfringement was found because no relevant evidence was provided that showed the additional ingredients would not materially affect pertinent properties of the bread.  The testimony of Kim was not sufficient, as her conclusory statements were not based on the accused products themselves. 

Because direct infringement was not found, the CAFC avoided addressing whether there was the intent necessary for a finding of inducement.   “A finding of inducement requires both an underlying instance of direct infringement and a requisite showing of intent.” 

Accordingly, the district court’s judgments were affirmed in all respects.

They Invented What? (No. 18)

Posted in They Invented What? by Jake Ward on September 27, 2006

U.S. Pat. No. 4,233,942:  Animal ear protectors. 


I claim:

1.  A device for protecting animal ears comprising:

     a pair of generally tubular protectors each of which is formed of a sheet of self-biasing material which in their free state tend to form themselves into said generally tubular protectors;

     each of said protectors being longitudinally openable to allow easy insertion of one of said animal ears; and

     positioning means for flexibly joining one end of one protector in spaced apart relationship with one end of the other protector and for securing said device to the head of said animal such that the longitudinal axis of each protector and a portion of each ear of said animal, are held generally horizontally and approximately perpendicularly to the head of said animal whereby the ends of said animal ears are separated by a distance greater than the width of the head of said animal.

KSR International Co. v. Teleflex, Inc., et al. – The Merit Briefs

Posted in Opinion Commentary by Jake Ward on September 26, 2006

I’ve taken longer than I had hoped to get around to the KSR v. Teleflex merit briefs.  However, Patently-O has compiled a very nice list of the first round of briefs, along with some summaries and commentary by D. Crouch.   Check it out here.

Incidentally, the question presented by Petitioner KSR is as follows:

Whether the Federal Circuit erred in holding that a claimed invention cannot be held “obvious,” and thus unpatentable under 35 U.S.C. sec. 103(a), in the absence of some proven ”teaching, suggestion or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed?

As I get to these briefs, I’ll post any thoughts or comments I might have.  Enjoy!

Some Finer Points Regarding Trade Secret Law (No. 2)

Posted in Practice Commentary by Jake Ward on September 20, 2006

JW Note:  This discussion is continued from an earlier post on the relationship between patent law and trade secret law. 

An invention held by an inventor as a trade secret can, under certain circumstances, prevent the inventor from later patenting the invention.

Under §102(b) of the U.S. patent laws, there are several distinct bars to patentability that relate to activity or disclosure more than one year prior to the date of an application (the “critical date”).  One such bar is known as “public use.”  Another is known as the “on-sale” bar.  See MPEP 2133.03.  Thus, a person is entitled to a patent unless the invention was in public use or on sale in the U.S. more than one year prior to the date of application.

First, and most obvious, the display or sale of a “trade secret” invention is considered to be a public use.  This holds true even if the trade secret invention is hidden as a component of a larger machine or article.  See MPEP 2133.03(a).  Thus, display or sale of a trade secret invention (whether the trade secret is apparent or not) acts as a bar if the application for patent is filed after the critical date.

Second, and I think the more interesting scenario, a secret process used to produce a commercialized product can bar patentability of the process.  For instance, a secret process used to make a product is “public” if the details of the process are ascertainable by inspection or analysis (reverse-engineering) of the product that is sold or displayed.  See MPEP 2133.03(a)(II)(C).

But Jake, you might say, what if the process cannot be reverse-engineered from the product?  Is it in public use even though the trade secret process itself is not being sold and (in typical manufacturing settings, at least) is not accessible to the public? Well, for some important policy reasons stated herein, the courts have held that practice of such a trade secret process is also “public use” under the meaning of §102(b).

A recent case highlighting this point was Invitrogen Corp. v. Biocrest Manufacturing, L.P., et al. (04-1273, Fed. Cir. 2005).  In this case, the issue was whether a patented process claim was invalid under the public use bar of §102(b), where no product produced thereby was commercially exploited?  The patented Invitrogen process was secretly used for development purposes more than one year prior to the critical date, but was not used to produce commercialized products.  In reversing a finding of invalidity, the CAFC reiterated the following standard: 

[I]t is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting;  he must content himself with either secrecy or [a patent].  (Emphasis added).

It should be noted that the CAFC also articulated an important exception to this standard.  A trade secret process will not be deemed “publicly used” where there is no commercial exploitation.  In this case, the fact that Invitrogen secretly used the patented process but did not sell products made with the process meant that there was no public use bar to patentability.  Use of the trade secret process to develop future products internally did not rise to the level of “commercial exploitation.”

As stated above, public policy dictates these standards.  The purpose of the public use and on-sale bars is to encourage prompt or timely disclosure of new inventions to the public via patents.  Also, an inventor should not be allowed to exploit the exclusivity or monopoly granted for a patented invention substantially beyond the period authorized by statute. 

Accordingly, if a product produced by a trade secret process is commercially exploited (e.g. given or sold to another), the trade secret process is deemed “publicly used” within the meaning of §102(b) and cannot be patented once the critical date has passed.

They Invented What? (No. 17)

Posted in They Invented What? by Jake Ward on September 20, 2006

U.S. Pat. No. 5,175,571:  Glasses with subliminal message.


The embodiments of the invention in which an exclusive property or privilege is claimed are defined as follows:

1. A pair of subliminal imaging spectacles adapted to be worn on the head, in front of the eyes, and comprising:

a pair of lenses adapted to be located in front of the eyes of the subject,

and, a pair of subliminal message images on said respective ones of said pair of lenses said message images covering a predetermined area in front of each eye and located upwardly of the normal line of sight, and spaced apart a predetermined distance whereby to take advantage of the stereoscopic effect of human vision thereby effectively causing said two images to merge as one.

2. A pair of subliminal imaging spectacles as claimed in claim 1 wherein said glasses comprise sunglasses having tinted lenses.

3. A pair of subliminal imaging spectacles as claimed in claim 1, wherein said message means are printed on a transparent medium, and are adhesively bonded to said lenses.

4. A pair of subliminal imaging spectacles as claimed in claim 1 wherein said message images are printed directly on respective ones of said pair of lenses.

5. A pair of subliminal imaging spectacles as claimed in claim 1, wherein said lenses comprise transparent panel means, located above the normal line of sight, suitable for use by persons not requiring glasses.

6. A pair of subliminal imaging spectacles as claimed in claim 1 including attachment means for attaching said spectacles to the head.

7. A pair of subliminal imaging spectacles as claimed in claim 1 wherein said spectacles include a head band.

Some Finer Points Regarding Trade Secret Law (No. 1)

Posted in Practice Commentary by Jake Ward on September 15, 2006

There are a number of factors to be considered in deciding how to protect an invention.  For instance, trade secret protection may be preferred if the technology is not patentable (e.g., lack of novelty) but still of value commercially.  Additionally, if the technology is difficult to reverse-engineer, holding the technology as a trade secret might provide longer protection than would be afforded by patenting (20 year term versus a potentially infinite term – Coca-Cola, anyone?). 

On the other hand, patents protect a technology regardless of whether someone else independently develops or reverse-engineers it.  Also, patents tend to have more value commercially, from both an investment and a licensing standpoint, owing to the definiteness of the patent term and the rights afforded by a patent (enforcable against infringers, etc.).

In addition, below is one of the finer points of trade secret (TS) law (and possibly one of the more commonly misunderstood points) that should be considered in choosing which IP strategy to employ:

Holding an invention as a trade secret does not prevent someone else from patenting the invention. 

That is, a TS that could otherwise have been patented cannot be used as prior art against a third-party applicant/patentee.  The authority behind this is § 102(g) of the U.S. patent laws, which states:  “A person shall be entitled to a patent unless . . . before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.” (emphasis added).  The act of keeping an invention as a TS is a concealement of said invention that prevents a first inventor from blocking a third-party attempt to patent the technology. 

But Jake, you might say, what about § 102(a)?  Surely this section, which prevents patenting technology previously known or used by others in this country, prohibits patenting of a TS technology by a third party of?  Well, at first blush you might think this assertion is correct.  However, the “known or used” phrase of § 102(a) has been interpreted by the courts to mean knowledge or a use which is accessible to the public. Carella v. Starlight Archery, 804 F.2d 135, 231 USPQ 644 (Fed. Cir. 1986). Furthermore, knowledge or use is accessible to the public if there has been no deliberate attempt to keep it secret. W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983). See also MPEP 2132.  Accordingly, as trade secrets are by their very definition “not public,” they also cannot be used as prior art under § 102(a).

The danger that TS technology might be independently developed and patented by a competitor should be seriously assessed before committing to a trade secret strategy.  TS technology (unless it really isn’t secret) cannot be used as prior art to invalidate the patent of a later inventor/patentee.  This facet of the law may be somewhat counterintuitive, but practitioners and inventors alike should be aware of this risk.  Otherwise, one might easily become an infringer through practice of an invention that one was the first to invent!

JW Note:  I believe that the contrast between patents and trade secrets is ripe for discussion and that some points (the ones I find interesting, at least) deserve independent time and consideration.  Therefore, I’ve decided to break the post into at least three sections. 

Finer points of trade secret law to be discussed in upcoming posts are as follows:

  • Does holding an invention trade secret prevent the inventor from later patenting the invention?
  • Is an ex-employee required under the law to maintain the secrecy of a former employer’s trade secrets?
  • Trade secret topic suggestions by you, my loyal readers?  Feel free to post your comments, and I will run with it if it piques my interest.

Stay tuned!

They Invented What? (No. 16)

Posted in They Invented What? by Jake Ward on September 13, 2006

U.S. Pat. No. 5,443,036:  Method of exercising a cat.


What is claimed is:

1. A method of inducing aerobic exercise in an unrestrained cat comprising the steps of: (a) directing an intense coherent beam of invisible light produced by a hand-held laser apparatus to produce a bright highly-focused pattern of light at the intersection of the beam and an opaque surface, said pattern being of visual interest to a cat; and (b) selectively redirecting said beam out of the cat’s immediate reach to induce said cat to run and chase said beam and pattern of light around an exercise area.

2. The method of claim 1 wherein said bright pattern of light is small in area relative to a paw of the cat.

3. The method of claim 1 wherein said beam remains invisible between said laser and said opaque surface until impinging on said opaque surface.

4. The method of claim 1 wherein step (b) includes sweeping said beam at an angular speed to cause said pattern to move along said opaque surface at a speed in the range of five to twenty-five feet per second.

Emergence of Traditional Knowledge (TK) Protection?

Posted in Practice Commentary by Jake Ward on September 11, 2006

According to this recent post at the Pierce Law IP News Blog, Brazil is presently spearheading a global movement to obtain international protection for natural genetic resources.  Another word for such indigenous resources is traditional knowledge (or “TK” for short). 

TK protection is a relatively new area being explored in the arena of intellectual property law.  Proponents of recognizing TK are generally nations that have a high degree of biodiversity and which are the most likely to benefit from this potentially new form of intellectual property protection. 

In the U.S., TK is generally viewed as a backlash to international (read U.S.) enforcement of patent rights when researchers go to remote places (for instance the Amazon Basin of Brazil) and collect exotic animal and plant species.  These species are then analyzed for useful characteristics, and in some instances the resultant technology is patented. 

The primary argument for TK is that such research benefits the companies that sponsor the research but very little benefit is reaped by those who had traditional knowledge relating to the species and who were responsible for creating, refining and using this knowledge. The theory is that the creators and holders of the traditional knowledge should be entitled to benefit from it. 

Traditional knowledge is typically developed over many generations, and therefore such knowledge is not novel or inventive . . . and therefore not covered by traditional patent rights.  It is important to note, therefore, that TK protects the core material from which a patent arises.  Essentially, TK protection extends to the potential commercial opportunities associated with a TK resource.  Such resources can include knowledge about a country’s biodiversity, the applied uses and applications of biological resources, and the prevalent local practices. 

Although TK has yet to become a mainstream intellectual property right, TK concepts are being taken seriously today, and practitioners should be aware of the potential emergence of such laws in many countries.

JW Note:  For further information on TK developments, I suggest reviewing the WIPO TK website.