Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 37)

Posted in They Invented What? by Jake Ward on February 28, 2007

U.S. Pat. No. 5,769,724: Human free-flight catapult.

JW Note:  Reference numeral 7 in the below figure points to the “human rider.”  I’ll stick with roller coasters, thank you.



An amusement ride for catapulting a human rider, enclosed within a capsule, into the air in much the same fashion as ancient armies would hurl large boulders over the walls of castles. The ride provides many of the sensations and thrills encountered by fighter pilots launching from the decks of aircraft carriers without the requirement for flight training or the associated dangers. The ride essentially consists of a siege type catapult and a releasably connected launch pod. When in the launch position, a release mechanism is triggered by the operator and the rider is catapulted into the air at a physiologically safe rate of acceleration along a predictable free-flight arc. When an acceptable elevation is reached, the rider is separated from the capsule and gently brought back to earth using an automatically deploying parachute or similar device. An alternate embodiment envisions the use of a similar device to project a conveyance vehicle along a horizontal track similar to a stone skipping across the water.


1. A catapult amusement ride comprising:
          a base divided into a drive support area at a first end, a conveyance support area at a second opposite end, and a pivot post support area located between said first and second ends;
          a pivot post having a first end attached to said base;
          a lever beam rotatably attached to said pivot post at a distal second end;
          an attachment point between said pivot post and said lever beam which divides said lever beam into a drive segment and a conveyance segment;
          a plurality of bungee/shock cords attached between the drive segment of said lever and the drive support area of said base;
          a conveyance vehicle attached to the end of said conveyance segment and resting on the said conveyance support area of said base during a pre-launch configuration;
          a triggered locking assembly attached to said base between said pivot post support area and said conveyance support area of said base;
          wherein when said lever device is held by said trigger locking assembly and, upon release of said lever by said trigger locking assembly, said bungee/shock cords pull on said drive segment of said lever causing said conveyance vehicle to be projected into the air by said conveyance segment along a predictable trajectory.

2. A catapult amusement ride as set forth in claim 1, wherein said base is the flatbed trailer of a truck.

3. A catapult amusement ride as set forth in claim 1, wherein said conveyance vehicle will accommodate one or more passengers.

4. A catapult amusement ride as set forth in claim 1, wherein said conveyance vehicle will accommodate two passengers.


The Truth is Out There: X-Patents.

Posted in General Commentary by Jake Ward on February 26, 2007

 X1 seal

X-Patents are all the patents issued by the United States Patent and Trademark Office from July 1790 to July 1836.  The X-patents were burned in a fire in December 1836.  Ironically, the X-patents were in temporary storage at the time while a more modern and fireproof headquarters was under construction. There was also a fire station right next door, but it was in the winter and in the frigid early morning hours the volunteer firefighters discovered their leather hoses were cracked and a pump did not work.  

No copies or rosters of the X-patents were maintained by the government at the time, leaving only the inventors’ copies to reconstruct the collection.  Roughly 10,000 X-patents are believed to have issued, but only about 2,800 have been recovered.   Following the 1836 fire, the present serial numbering system was instituted, with U.S. Pat. No. 1 issuing on July 13, 1836 (to a J. Ruggles for “Traction Wheels”).

X-1, the first U.S. patent, was issued to Samuel Hopkins on July 31, 1790.  The patent was drawn to a process of making potash.  Potash is an impure form of potassium carbonate, mixed with other postassium salts, and is an ingredient used in fertilizer.  The patent was signed by President George Washington, Attorney General Edmund Randolph, and Secretary of State Thomas Jefferson.

A digital image of an existing copy of the X-1 patent may be viewed at the USPTO database here.  The original copy is in the collections of the Chicago Historical Society.

JW Note:  A little historical food-for-thought to start off the week.  Enjoy.

Holy Invention, Batman!

Posted in Science and Technology by Jake Ward on February 23, 2007



According to this article at CNN, inventor Nate Ball is the 2007 Lemelson-MIT Student Prize winner for his invention of the “ATLAS Powered Rope Ascender.”  The invention is a portable device that can raise more than 250 pounds at 10 feet per second, giving rescuers, emergency personnel and soldiers faster and more controllable climbing capabilities.  In 2004, Ball founded Atlas Devices, LLC with three other mechanical engineering students at MIT to develop and commercialize the device.  The U.S. Army recently awarded funding for their invention.

As stated by Ball, “It’s neat to be able to create a real-life engineering solution that has the actual functionality described in the fantastic situations you see on Batman, and with James Bond.”

U.S. Pat. App. Pub. No. 20060273293, titled “Powered rope ascender and portable rope pulling device,” is assigned to Atlas Devices and published December 7, 2006.

Microsoft v. AT&T: Notable Quotes from the Oral Arguments.

Posted in Litigation Commentary by Jake Ward on February 22, 2007

Per usual, we will preface our thoughts with the following disclaimer:  “It is generally a futile effort to predict how the Supreme Court will rule on any given issue.”  That being said, we think it was clear the Justices were concerned about the effects on the reach of U.S. patent law if AT&T were to prevail.  The technology at issue also appeared to perplex the Justices at times, as much of the arguments appeared to focus on the Justices’ attempt to wrap their minds around the technical aspects of the AT&T patent.  Interestingly, although the questions presented have been narrowly framed to determine the appropriate meaning of the terms “component” and “supplied from the United States” within Section 271(f)(1), the issue of whether software itself is patentable appeared to be at the forefront of the Justices’ thoughts. 

Below are some quotes that we found of particular interest:

Transcript at page 9.

JUSTICE KENNEDY: But I still would like to know your position. The golden disk is or is not a component?
MR. OLSON (ON BEHALF OF PETITIONER): It is not a component — 

Transcript at page 12.

JUSTICE KENNEDY: That seems odd. I mean, Microsoft doesn’t say please buy our disk because it’s the prettiest disk in the business.
MR. OLSON: Justice Kennedy –
JUSTICE KENNEDY: It says buy our program because the program means something. 

Transcript at page 21.

MR. JOSEFFER (ON BEHALF OF THE UNITED STATES AS AMICUS CURIAE SUPPORTING THE PETITIONER): The United States view — I’m not sure exactly how much we disagree on this — but the United States view is that, for example, a blank disk is not a component of this invention because you don’t need a blank disk to practice this invention. The — the actual component is the physical substantiation, the physical copy of the software that’s inserted into a computer and if you get a disk –
JUSTICE SOUTER: In other words, the disk plus the — plus the coded instructions. 

Transcript at page 22.

JUSTICE BREYER: I take it that we are operating under the assumption that software is patentable? We have never held that in this Court, have we?

Transcript at page 34.

JUSTICE SOUTER: Why doesn’t that get you right back to the point that Justice Breyer was making? [MR. WAXMAN is] saying, I think, in essence if you send a blueprint — this is like a blueprint. It tells, it tells a machine which may be in Europe how to put the object code on other disks or on hard drives. The machine in Europe is following instructions just the way an artisan would follow a blueprint. 

Transcript at page 39.

JUSTICE SOUTER: It is an object that has coded onto it, transferred to it in a readable way, those commands. But it’s an object, isn’t it?
MR. WAXMAN (ON BEHALF OF RESPONDENT): Well, it’s not necessarily an object. I don’t know whether you would call a stream of photons that is constantly repeated under the Atlantic Ocean an object.

Transcript at page 40.

JUSTICE SCALIA: I hope we can continue calling it the golden disk. It has a certain Scheherazade quality that really adds a lot of interest to this case. (Laughter.)

Transcript at page 43.

JUSTICE BREYER: But I then would be quite frightened of deciding for [AT&T]and discovering that all over the world there are vast numbers of inventions that really can be thought of in the same way that you’re thinking of this one, and suddenly all kinds of transmissions of information themselves and alone become components. So I’m asking you, is there any outside the computer field analogous instance where the transmission of information has itself been viewed as the transmission of a component?

Transcript at page 53.

JUSTICE BREYER: You’re right, Justice Ginsburg, that the court of appeals for the Federal Circuit thought it was bringing this statute up to date and it even said so. We are making an extension of the statute to keep up to date with the technology. That is not for courts to do.

They Invented What? (No. 36)

Posted in They Invented What? by Jake Ward on February 21, 2007

U.S. Pat. No. 4,639,236Toy vehicle and launcher.



This invention relates to a toy in general and in specific to a novel toy into which a simulated explosive charge is placed to propel the toy from the charge.

It is known in the art of toy design to provide various simulated events which stimulate the imagination of the user. Such would include simulated rocket launchers for example, or simulated guns which make noise or flash light. It would also include, for example, toy planes or autos which separate into pieces under simulated crash conditions. The present invention adds a different dimension to simulated or imaginary activity in that it creates the fanciful impression that the vehicle is being blasted on its way by an explosive charge.


1. A toy comprising:
     (a) a toy vehicle having formed therein an opening at the rear of the vehicle;
          (1) a spring positioned within the vehicle and compressible therein;
     (b) a launcher comprising a weighted group of simulated dynamite sticks, sized to be received within said opening in said vehicle, the group containing release means for releasable engagement with said vehicle;
     (c) actuator means for actuating the release means to engage and hold the group of dynamite sticks within the vehicle and to hold the spring in a compressed position, and to release the same and permit said spring to return to its uncompressed condition;
     (d) wherein said launcher and actuator means are spaced apart and are connected only by an actuator cable adapted to cause said release means to release said vehicle from said launcher on actuation of said release means.

Microsoft v. AT&T: Argument Transcripts

Posted in Litigation Commentary by Jake Ward on February 21, 2007

The link to the transcript for the February 21st oral arguments before the SCOTUS in Microsoft Corp. v. AT&T Corp. can be found here

Any thoughts?  Discussion to follow!

The Patent “Shop Right”.

Posted in Practice Commentary by Mike Dockins on February 20, 2007

A “shop right” is a common law right of an employer to use an invention patented by one or more of its employees without liability for infringement.

Surprisingly, the “shop right” has yet to be codified and remains open to interpretation by the courts, though it is a topic to be addressed. The immense body of case law suggests that not all courts agree on the doctrinal basis for “shop rights”, and therefore not all courts agree on the particular set of circumstances necessary to create a “shop right”.

The courts are equally split regarding the doctrinal basis. Half of the courts find that “shop rights” are based in the principles of fairness and equity, that is fairness entitles an employer to a royalty-free license to use a patented invention without liability for infringement because the employer’s time, facilities, etc. were used. The other half of the courts find that “shop rights” are based in the theory of equitable estoppel, that is, the consent or acquiescence of an employee to the use of a patented invention by the employer generates a royalty-free license.

Though the difference in the doctrinal basis is significant, the outcome generally is not. In most instances either doctrinal basis yields the same result. Tantamount in the determination of finding a “shop right” are the typical factors the courts use. Such factors include (but are not limited to):

–Contractual nature of the relationship between the employer and employee;
–Whether the employee consented to the employer’s use of the invention;
–Whether the the employed induced, acquiesced in, or assisted the employer in use of the invention;
–Whether the employer financed an invention by providing wages, materials, tools, and a work place; and
–Employee’s consent, acquiescence, inducement, or assistance to the employer in using the patented invention without demanding compensation or other notices of restriction.

In short, the doctrinal basis a particular court uses in its “shop right” analysis is less important than the facts of the case that yield the factors the court will consider; “shop right” cases are very fact-driven and dependent.

Below are a list of sources for additional reading on “shop rights”, including some significant cases:

Gill v. U.S., 160 U.S. 426 (1896).
U.S. v. Dubilier Condenser Corp., 289 U.S. 178 (1933).
Lariscey v. U.S., 949 F.2d 1137 (Fed.Cir. 1991).
McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576 (Fed.Cir. 1993).
P. Rosenberg, Patent Law Fundamentals, sec. 11.04, 11-20. –C.T. Dreschler, Annotation, Application and Effect of “Shop Right Rule” or License Giving Employer Limited Rights in Employee’s Inventions and Discoveries, 61 ALR2d 356 (1958).

Microsoft Corp. v. AT&T Corp.: USSC Hearings Scheduled for Wednesday, February 21st.

Posted in Litigation Commentary by Jake Ward on February 20, 2007

As reported at MSN/Money, the Supreme Court on Wednesday will hear oral arguments in a case that could test the global reach of U.S. patent law.  The dispute centers on 35 U.S.C. § 271(f)(1), aimed at preventing companies from circumventing U.S. patent law by shipping “components” overseas for assembly.  The case tests whether software is such a “component” and whether creating copies of software overseas from a master disk shipped from the U.S. is covered by § 271(f)(1).

Specifically, the background and questions presented before the USSC have been articulated as follows:

Title 35 U.S.C. § 271(f)(1) provides that it is an act of direct patent infringement to “suppl[y]. . . from the United States . . . components of a patented invention . . . in such manner as to actively induce the combination of such components outside of the United States.”

In this case, AT&T Corp. alleges that when Microsoft Corporation’s Windows software is installed on a personal computer, the programmed computer infringes AT&T’s patent for a “Digital Speech Coder” system. AT&T sought damages not only for each Windows-based computer made or sold in the United States, but also, under Section 271(f)(1), for each computer made and sold abroad. Extending Section 271(f)—and consequently, the extraterritorial application of U.S. patent law—the Federal Circuit held that Microsoft infringed under Section 271(f)(1) when it exported master versions of its Windows software code to foreign computer manufacturers, who then copied the software code and installed the duplicate versions on foreign-manufactured computers that were sold only to foreign consumers.

The questions presented are:

(1) Whether digital software code—an intangible sequence of “1’s” and “0’s”—may be considered a “component[] of a patented invention” within the meaning of Section 271(f)(1); and, if so,

(2) Whether copies of such a “component[]” made in a foreign country are “supplie[d] . . . from the United States.”