patent strategies
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PATENT STRATEGIES: TOOLS FOR SECURING PATENT RIGHTS FROM INVENTION TO PRODUCT LAUNCH
Larry L. HustonJulie A. McConihay
June 11, 2021
PATENT STRATEGIES:ROADMAP
Value Add
Toolkit Patent Types Patent Filing Tiers Marketable Consumer Benefit Moments of Truth Written Patent Strategy
Patent Filing Campaign Leveraging Different Claim Types
Combination vs. Sub-Combination, Parametric, Method, Means Plus Function
Leveraging Utility and Design Patents Scope of Disclosure – Narrow vs. Broad
Example - Swiffer ® Launch through improvement patents
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PATENT STRATEGIES:Value Add
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How do Patents Add Value to Your Client’s Business?
Generate
Income:
Licensing or sale of patent assets and commercialization of patent protected products or services can significantly improve a client’s market share or raise its profit margins.
Enhance Image:
Patent markings enhance the image of products or services.
Patent assets can enhance the value or worth of your client’s company in the eyes of investors or financial institutions.
Raise
Value:
Patent assets may significantly raise the value of your client’s enterprise in the event of a sale or merger or acquisition.
BUILDING A
PATENT WALL
Offensive
Defensive
Upstream Technology
Downstream Technology
Attract:
Investors, Purchasers & Partners
Client’s Innovation
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Patent StrategyToolkit
PATENT TYPES
▪U.S. 1,2
▪Utility Patents▪Design Patents▪Plant Patents
▪ International (PCT & Hague)▪Utility Patents3
▪ Industrial Design Registrations4
▪Foreign Domestic ▪Utility Patents, Design Registrations,
Utility Model Registrations5
PATENT FILING TIERS
▪Create tiers that distinguish between patent filing patterns based upon one or more factors
▪Tiers can change over the lifetime of a given patent application or patent
▪Tiers can change over the lifetime of a technology, product or service
▪Patent filing tiers should vary from client to client
PATENT FILING TIERS
▪Four FactorsFactor 1 - Business need for exclusivityFactor 2 - Quality of patent protectionFactor 3 - Enforceability Factor 4 - Initial and long-term costs
PATENT FILING TIERS
▪Four FactorsFactor 1 - Business need for exclusivity
Factor 2 - Quality of patent protection
Factor 3 - Enforceability
Factor 4 - Initial and long-term cost
PATENT FILING TIERS
▪Four FactorsFactor 1 - Business need for exclusivity
▪ Client’s countries of manufacture, use, sale, offer for sale or import
▪ Competitor’s countries of manufacture, use, sale, offer for sale or import
Tier 1
Tier 2
Tier 3
EXAMPLE: Filing Tiers
Broadest filing pattern
Moderate filing pattern
Narrowest filing pattern
Numberof
Countries
Numberof
Patent Filings
PATENT FILING TIERS
▪Four FactorsFactor 1 - Business need for exclusivityFactor 2 - Quality of patent protectionFactor 3 - Enforceability Factor 4 - Initial and long-term costs
Quality of Patent Protection: MARKETABLE CONSUMER BENEFIT
▪What are the benefits that your client wants to deliver to consumers?
▪What technology delivers the benefits?
▪Whether/how patents can provide your client with exclusivity to that technology?
▪Can competitors deliver similar MCB using a different technology?
Example: MCB Analysis
▪What are the benefits that your client wants to deliver to consumers?
A device that can remove stubborn marks from multiple surfaces without damaging them
▪What technology delivers the benefits?Melamine sponge
▪Whether and how patents can provide your client with exclusivity to that technology?
Melamine foam has been used as insulation for decades
▪Can competitors deliver similar MCB using a different technology?
They can use the same technology
Conclusion:
Advise client to consider method claims and/or focus on IP relating to branding
Example: MCB Analysis
▪ What are the benefits that your client wants to deliver to consumers?
Cold water wash of laundry in a unit dose form
▪ What technology delivers the benefits?New cold water - soluble film that encloses a liquid laundry formulation
▪ Whether and how patents can provide your client with exclusivity to that technology?
No cold-water soluble film known to remain stable when enclosing liquid
▪ Can competitors deliver similar MCB using a different technology?
They can use known films that are not as cold water soluble or shelf-stable when enclosing liquid – which would result in an inferior product/consumer benefit
Conclusion:
Advise client to pursue patents aggressively
PATENT FILING TIERS
▪Four FactorsFactor 2 - Quality of IP protection
▪ World Intellectual Property Indicators6
▪ Quality Control7,8
▪ Industry Specific Statistics9
PATENT FILING TIERS
▪Four FactorsFactor 1 - Business need for exclusivityFactor 2 - Quality of patent protectionFactor 3 - EnforceabilityFactor 4 - Initial and long-term costs
PATENT FILING TIERS
▪Four FactorsFactor 3 – Enforceability
▪ Local patent courts▪ Strength of governmental
controls▪ Whether non-practicing entities
can enforce▪ Cost of enforcement (home court
advantage)
PATENT FILING TIERS
▪Four FactorsFactor 1 - Business need for exclusivityFactor 2 - Quality of patent protectionFactor 3 - Enforceability Factor 4 - Initial and long-term costs
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Filing Patents:A Case Study in Costs
US Only
US and Canada (CA)
US, CA, Europe (Validation in France (FR), Germany (DE) & United Kingdom (UK))
TIER 3
TIER 2
TIER 1
Tier 1
Tier 2
Tier 3
EXAMPLE: Filing Tiers
Broadest filing pattern
Moderate filing pattern
Narrowest filing pattern
Numberof
Countries
TIER 3:
US Only
TIER 2:
US & CA
$22,905 +$16,335
$39,240
TIER 1:
US, CA, EP $22,905
+$16,335$39,240
+
$17,947
$57,187
TIER 1:
EP Validation
France
$22,905 +$16,335
$39,240
+$17,947
$57,187
TIER 1:
EP Validation
FRANCE$14,449
GERMANY$24,014
UK$13,027
Grand Total = $108,677 TIER 1:
BOTTOM LINE
$2,716,925
PERIODIC PORTFOLIO REVIEW▪Business Goals
▪ Change in Focus▪ Change in Clients▪ Change in Competition
▪Patent Filing & Prosecution▪ Scope of Claims▪ Chances of Success
▪Budget▪ Abandon▪ Sell/Buy▪ License in or out
TIER 1:
EP Validation
FRANCE$14,449
GERMANY$24,014
UK$13,027
Grand Total = $108,677 TIER 1:
BOTTOM LINE
Tier 1
Tier 2
Tier 3
EXAMPLE –Filing Tiers
Broadest filing pattern
Moderate filing pattern
Narrowest filing pattern
Numberof
Countries
MOMENTS OF TRUTH (MOT)
0 MOT Advertising
1st MOT Reason to Win at the Point of Purchase
2nd MOT Reason to Win Repeat Customers
3rd MOT Social media
MOMENTS OF TRUTH (MOT)
0 MOT Advertising
1st MOT Reason to Win at the Point of Purchase
2nd MOT Reason to Win Repeat Consumers
3rd MOT Social media
1st MOT - Reason to Win at the Point of Purchase
▪Design Patents
2nd MOT - Reason to Win Repeat Consumers
▪Design Patents
▪Utility Patents
WRITTEN PATENT STRATEGY▪Living, Breathing Document
▪Content:▪ Describes what is new and desirable about
the technology or product/service in terms of FMOT, SMOT or both
▪ Assessment of patentability ▪ Anticipated exclusivity – Indexing System▪Anticipated competitive response▪ Project timeline▪ Responsibility
▪ Indicates who is responsible for execution of each part of the strategy
WRITTEN PATENT STRATEGY▪Single Owner:
▪ Responsible for overall process
▪ Understands and summarizes the prior art
▪ Drafts patent strategy document
▪ Participates in internal strategy meetings at various stages in product development with key stakeholders
▪ Coordinates execution of the patent strategy
▪ Calls out outages vs. objectives
▪ Devises plan to eliminate gaps
▪ Keeps decisionmakers informed and aligned
WRITTEN PATENT STRATEGY▪Patent Attorney:
▪Provides legal perspective to shape entire strategy, including:
▪ Providing any needed legal opinions (be careful not to waive privilege)
▪ Identifying anticipated exclusivity to deliver marketable consumer benefit
▪ Editing for responsible writing
▪ Filing and prosecuting patent applications
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PATENT STRATEGIES:Patent Filing Campaign
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What is your client trying to accomplish?
What is the benefit to the customer/consumer/end user?
What is the benefit of the new manufacturing process/machine that achieves the same end result as the current process/machine?
Can this benefit be extended generically to other executions?
For Example – Protecting a Composition
Improved Dentifrice
Technical Approach:
Use of Submicron calcium
Particles?
Marketable Consumer Benefit: Remineralization of
Teeth
Limit to a powdered dentifrice or would a suspension oral rinse work?
For Example – Protecting a Pharma Composition
Serotonin Inhibitors
Technical Approach:
Activating receptor
antagonists?
Marketable Consumer Benefit: Treating Disease
Limit to a serotonin reuptake inhibitor or could serotonin storage and release also treat hepatitis?
For Example – Protecting an Electrical Apparatus
Transforming an Image From Pixel Domain to Frequency
Domain
Technical Approach:
Are you thinking about discrete cosine transform?
Marketable Consumer Benefit: Reducing file size for easier
transfer
Limited to two-dimensional data sets or could you use plural transform blocks to minimize overhead information?
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Leveraging DifferentClaim Types
Combination and Subcombination
MPEP 806.05(a) A combination is an organization of which a subcombination or element is a part.
Subcombination
Stop critical parts at vendor loading dock. Your client may not know every competitor to which a vendor sells.
Consider: PI ADVANCED MATERIALS CO., LTD. v Kaneka Corp., 2021 U.S. App. LEXIS 7775 (Fed. Cir. 2021)(nonprecedential)
1. A polyimide film produced by a continuous process, whereinwhen a coefficient of linear expansion A … represented byequation A=1+{(b−a)/(b+a)}×2 … is in the range of 1.13 to 3.00 ….
Polyimide film —> copper laminator —> circuit boardmanufacturer —> module maker —> manufacturer ofmobile phones
Oral Argument: Kaneka had 90 - 95% of the relevant film market.
PI could not prove that the film was imported by Kaneka.Summary Judgment of non-infringement for Kaneka affirmed onappeal.
Combination -Damages
KEY POINTS:
▪Since 1884, Damages Relate Only to the
Patented Invention
▪Reasonable Royalty Damages Under Georgia
Pacific Factor 13
▪Lost Profit Damages Under Panduit Factor 1
Combination -Damages
Plaintiff “must in every case give evidence … apportion[ing] … damages
between the patented feature and the unpatented features, and such
evidence must be reliable and tangible, and not conjectural or
speculative.” Garretson v Clark, 111 U.S. 120, 121 (1884).
Or else the plaintiff “must show, by equally reliable and satisfactory
evidence, that the profits and damages are to be calculated on the
whole machine, for the reason that the entire value … is properly and
legally attributable to the patented feature.” Id.
“[T]he smallest salable patent-practicing unit principle provides that,
where a damages model apportions from a royalty base, the model
should use the smallest salable patent-practicing unit as the base.”
Scientific v. Cisco Sys., Inc., 809 F.3d 1295, 1302 (Fed. Cir. 2015)(internal
citation omitted).
Licensing
“[W]here multi-component products are involved … the ultimate
combination of royalty base and royalty rate must reflect the
value attributable to the infringing features of the product and
no more.” VirnetX, Inc. v Cisco Systems, Inc., 767 F.3d 1308, 1326
(Fed. Cir. 2014).
“When the accused infringing products have both patented and
unpainted features … a jury must ultimately ‘apportion the
defendant profits and the patentee’s damages between the
patented feature and the unpatented features.’” Ericsson v D-
Link Sys., 773 F.3d 1201, 1226 (Fed. Cir. 2014).
Standard Essential Patents(SEPs)
“[T]he patented feature must be apportioned from all of the
unpatented features reflected in the standard … the patentee’s
royalty must be premised on the value of the patented feature,
not any value added by the standard’s adoption of the patented
technology … to ensure that the royalty award is based upon the
incremental value that the patented invention adds to the
product, not to the value added by standardization….” Ericsson v
D-Link Sys., 773 F.3d 1201,1232 (Fed. Cir. 2014).
“[D]amages awards for SEPs must be premised on … the asserted
patent's value resulting not from the value added by the
standard's widespread adoption, but only from the technology's
superiority.”
Commonwealth Sci. & Indus. Organization v Cisco Sys., 809 F.3d
1295, 1304 (Fed. Cir. 2015)(citing Ericsson at 1233).
The Apportionment Rule
The Rule Also Applies to Design Patents
“[T]he term ‘article of manufacture’ is broad
enough to embrace both a product sold to a
consumer and a component of that product,
whether sold separately or not. … [R]eading
‘article of manufacture’ … to cover only an end
product … gives too narrow a meaning to the
phrase.” Samsung Elecs. Co. v. Apple Inc., 137 S.
Ct. 429, 436 (2016).
Design Example
35 U.S.C. 289
Nordock, Inc. v. Systems, Inc., 2017 U.S. Dist. LEXIS 192413 (2017). Design Pat. D579,754 claims a Lip and Hinge Plate for a dock Leveler.
All components of the dock leveler must function together
for it to perform its intended purpose. … But that does not
mean that it is not a system of conceptually distinct
components…. The design element is relevant only to the
lip and hinge plate; it has no relevance to any other
component of the dock leveler. Id. at 20.
Combination andSubcombination
Consider Including Both Combination and
Subcombination…
and Expect to be Restricted
MPEP 806.05(c) The inventions are distinct if it can be shown
that a combination as claimed:
(A) does not require the particulars of the
subcombination as claimed for patentability (to show
novelty and unobviousness), and
(B) the subcombination can be shown to have utility
either by itself or in another materially different
combination.
Parametric
Parametric
Parametric -Watchout
Doctrine of InherencyI. SOMETHING WHICH IS OLD DOES NOT BECOME
PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY
"[T]he discovery of a previously unappreciated property of a prior
art composition, or of a scientific explanation for the prior art’s
functioning, does not render the old composition patentably new
to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999).
Parametric -Watchout
Doctrine of Inherency
MPEP 2112
"The inherent teaching of a prior art reference,
a question of fact, arises both in the context of
anticipation and obviousness." In re Napier, 55
F.3d 610, 613(Fed. Cir. 1995).
Parametric -Watchout
Doctrine of InherencyII. INHERENT FEATURE NEED NOT BE RECOGNIZED AT THE
TIME OF THE INVENTION
There is no requirement that a person of ordinary skill in the art
would have recognized the inherent disclosure at the time of
invention, but only that the subject matter is in fact inherent in
the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339
F.3d 1373, 1377 (Fed. Cir. 2003).
Parametric -Watchout
Doctrine of InherencyIII. A REJECTION UNDER 35 U.S.C. 102 AND 103 CAN BE MADE
WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL
EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT
CHARACTERISTIC
Where applicant claims a composition in terms of a function,
property or characteristic and the composition of the prior art is
the same as that of the claim the examiner may make a rejection
under both 35 USC 102 and 103 In re Best, 562 F.2d 1252, 1255 n.4
(CCPA 1977).
Parametric –Burden Shifting
Doctrine of InherencyV. ONCE A REFERENCE TEACHING PRODUCT APPEARINGTO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASISOF A REJECTION, AND THE EXAMINER PRESENTSEVIDENCE OR REASONING TO SHOW INHERENCY, THEBURDEN OF PRODUCTION SHIFTS TO THE APPLICANT
The PTO can require an applicant to prove that the prior artproducts do not necessarily or inherently possess thecharacteristics the invention. In re Best, 562 F.2d 1252, 1255(CCPA 1977) (footnote and citation omitted).
Parametric -Rebuttal
Doctrine of InherencyIV. EXAMINER MUST PROVIDE RATIONALE OR EVIDENCE TO SHOWINHERENCY
"In relying upon the theory of inherency, the examiner must provide abasis in fact and/or technical reasoning to reasonably support thedetermination that the allegedly inherent characteristic necessarilyflows from the teachings of the applied prior art." Ex parte Levy, 17USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original).
The fact that a certain result or characteristic may occur or be present inthe prior art is not sufficient to establish the inherency of that result orcharacteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (reversedrejection because inherency was based on what would result due tooptimization of conditions, not what was necessarily present in the priorart).
Other Rejections to Watchout For
MPEP 2131.01.I A specific example in the prior art which is within a claimed range anticipates the range.
MPEP 2144.05.IIn the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Rebuttal:A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985).
Parametric -112(b) Compliance
“[A] patent is invalid for indefiniteness if its claims,
read in light of the specification delineating the
patent, and the prosecution history, fail to inform,
with reasonable certainty, those skilled in the art
about the scope of the invention.” Nautilus, Inc. v.
Biosig Instruments, 572 US 898 (2014).
Parametric –At the EPO
“For inventions characterised by parameters, it is
necessary that ‘those parameters can be clearly and
reliably determined either by indications in the
description or by objective procedures which are usual
in the art.’” Guidelines for Examination in the
European Patent Office, Part F, Chapter IV, 4.11
The claims define the matter for which protection is
sought and they shall be clear and concise. Article 84
EPC.
Parametric –At the EPO
Don’t Leave Out the Test Method
In T1851/06 the claims related to a composite material with a
specified pore diameter, but the specification did not indicate
how this was to be measured. In the absence of a standard
method for the characterization of porous substances, the pore
diameter was not considered to be clearly defined.
Make the Test Method ConsistentIn when a full protocol is provided, problems can arise if the
method does not produce a consistent result. E.g., where the
mean aspect ratio determined from fifty particles it was
considered not to reliably characterize a product consisting of
thousands of particles.
Parametric –Receive a Boost in U.S.
Parametric Claims Received a Boost From Raytheon Techs.
Corp. v. GE, 2021, U.S. App. LEXIS 10961 (Fed. Cir. 2021)
Raytheon 9,695,751
Claim 1. A gas turbine engine comprising:
a fan…;
a compressor section;
a combuster…;
a turbine…;
a power density at Sea Level Takeoff greater than or equal to 1.5
lbf/in3 and less than or equal to 5.5 lbf/in3 and defined as thrust in
lbf measured by a volume of the turbine section in in3 measured
be- tween an inlet of a first turbine vane in said second turbine to
an exit of a last rotating airfoil stage in said fan drive turbine.
Parametric –Receive a Boost in U.S.
PTAB held prior art to Knip disclosed the power density limitation,
therefore claims were unpatentable as obvious.
Federal Circuit reversed “[R]ather than determining whether Knip
enabled a skilled artisan to make and use the claimed invention, …
the Board focused only on ‘whether [a skilled artisan] is provided
with sufficient parameters in Knip to determine, without undue
experimentation, a power density . . . .’” (internal citations omitted)
“… Raytheon’s unrebutted evidence that Knip fails to enable a
skilled artisan to physically make Knip’s advanced engine is
conclusive.”
Court did not credit GE’s computer modeling. Knip was found to be
nonenabling and a skilled artisan could not produce the claimed
power density. Reversed.
Method
Method Claims 35 USC 271(g)
Whoever without authority imports into the United
States or offers to sell, sells, or uses within the United
States a product which is made by a process patented
in the United States shall be liable as an infringer ….
A method claim is directly infringed when someone
practices every step of the patented method. Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348,
1359 (Fed. Cir. 2009).
Method –Example
Travel Sentry Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir.
2017)
Making available a combination lock for consumers, a key lock
for the luggage screening entity, or LSE, and an identification
structure known to the LSE;
marketing the lock such that the consumers would know that
the lock can be opened by the LSE;
informing the LSE that there would be an identification
structure; and
having the LSE act pursuant to an agreement to use their
provided master key to open locks, if necessary.
Note - method claim works with any lock.
Method –Example
Syngenta Crop Protection, LLC v. Willowood LLC, et al., 944 F.3d
1344, (Fed. Cir. 2019)(cert denied 2020).
“[T]he acts that give rise to liability under § 271(g) are the importation, offer for
sale, sale, or 35 use within this country of a product that was made by a process
patented in the United States. … whether that process is practiced by a single
entity is immaterial to the infringement analysis under that section.”
“[W]e reject Willowood’s argument that the Supreme Court’s Limelight decision
requires us to apply the single-entity rule to§ 271(g)….
[I]nfringement liability under § 271(g) is not predicated on direct infringement
of the patented process, and we will ‘not read into the patent laws limitations
and conditions which the legislature has not expressed.’” (Internal citation
omitted).
We hold that in light of the plain language of the statute, the broader context
of the statutory scheme as a whole, and the legislative history, § 271(g) does
not require a single entity to perform all of the steps of a patented process for
infringement liability to arise from the importation into the United States or
offer to sell, sale, or use within the United States of a product made by a process
patented in the United States.
Means Plus Function
Method Claims 35 USC 112(f)
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, ….. and such
claim shall be construed to cover the corresponding
structure, material, or acts described in the
specification and equivalents thereof.
Williamson v Citrix 792 F.3d 1339 (Fed. Cir. 2015).
Means Plus Function
Where we all learned the word ‘nonce.’
The standard is whether the words of a patent claim are
understood by persons of ordinary skill in the art to have a
sufficiently definite meaning as the name for structure.
The first step in construing a means-plus function claim is to
“identify the claimed function.” After identifying the function,
then “determine what structure, if any, disclosed in the
specification corresponds to the claimed function.” Williamson,
792 F.3d at 1351.
if the patentee fails to disclose adequate corresponding structure,
the claim is indefinite. Williamson at 1352.
Means Plus Function
Another watchout
“[S]tructure disclosed in the specification is corresponding
structure only if the specification or prosecution history clearly
links or associates that structure to the function recited in the
claim.” Sony Corp. v. Iancu, 924 F.3d 1235, 1239 (Fed. Cir. 2019)
(citation omitted).
“Applicants are free to invoke § 112 ¶ 6 for a claim term nested in
a method claim.”, LTD. 2020-1646, 2020-1656 (Fed. Rain
Computing, Inc. v. Samsung Electronics Co. (Fed. Cir. Mar. 2, 2021).
Means Plus Function
When to Use
When you are trying to limit number of claims - claiming all the
possible permutations can be costly. Using means-plus-function
claims to have the claim scope as broad as the disclosure can be a
very good strategy. But 112(f) claims should not be the primary
claims.
Recite structure in dependent claims. N. Am. Vaccine, Inc. v. Am.
Cyanamid Co., 7 F.3d 1571, 1577 (Fed. Cir. 1993) “The dependent
claim tail cannot wag the independent claim dog.”`
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Leveraging Utility and Design Patents
Design and Utility Patents
Can you pair design and utility patents?
Design and Utility Patents
Can you pair design and utility patents?
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Patent Disclosure: Broad and Narrow
Broad Disclosure
Issues
Enlarges body of the prior art, making it more difficult for
others to follow
Enlarges Claim Scope
Edgewell Personal Care Brands v Munchkin, Inc., 989 F.3d
1358 (Fed. Cir. 2021).
Broad Disclosure: Example
Issues
US 88994201. A cassette for packing at least one disposable object, comprising:
an annular receptacle including an annular wall delimiting a central opening …
wherein the annular receptacle includes a clearance in a bottom portion of the central opening, the clearance extending continuously from the annular wall and radially outward of a downward projection of the annular wall, the clearance delimiting a portion of the volume having a reduced width relative to a portion of the volume above the clearance. (Emphasis added).
Broad Disclosure: Example
OutcomeThe district court determined that a “clearance” required space aftercassette installation and construed clearance as the space around thatremains upon insertion. The district court concluded here was no spaceand granted summary judgment of non-infringement.
Federal Circuit found three embodiments which suggest there could beno space after insertion:(1) the clearance space would be filled by a complimentary structure inthe pail itself.(2) the flange 44’ defines an interference member of frustoconical shape(3) the holder 26 features an interfering member 70 that has a shape thatis complementary to that of the cassette 30 with the chamfer clearance41.
The clearance limitation is satisfied when the cassette itself isconstructed with a clearance. The claim does not require a clearance afterinsertion; in fact, such a requirement would be at odds with many of thedisclosed embodiments and is simply not required by the claims.
Federal Circuit vacated the district court’s grant of summary judgment ofnoninfringement of the ’420 patent and remanded.
Watchout: Disclosure Dedication
Under the disclosure-dedication rule, subject matter disclosed by
a patentee, but not claimed, is considered dedicated to the
public. The reason for the doctrine is that members of the public
reading a disclosure of particular subject matter are entitled,
absent a claim to it, to assume that it is not patented and
therefore dedicated to the public … Subject matter is considered
disclosed when a skilled artisan “can understand the unclaimed
disclosed teaching upon reading the written description. PSC
Comput. Prod., Inc. v. Foxconn Int’l, Inc., 355 F.3d 1353, 1360 (Fed.
Cir. 2004).
Watchout: Disclosure Dedication
Material Example
Johnson Johnston Assoc v. R.E. Serv, 285 F.3d 1046, 1055 (Fed. Cir.
2002)(en banc).
US 5,153,050 claimed a component for use in manufacturing
circuit boards comprising a sheet of aluminum which constitutes
a discardable element….
Defendant used a steel substrate. Plaintiff claimed infringement
by DOE.
Watchout: Disclosure Dedication
Material Example (continued)
The Federal Circuit held “the patent specifically limited the claims
to "a sheet of aluminum" and "the aluminum sheet." The
specification of the '050 patent, however, reads: "While
aluminum is currently the preferred material for the substrate,
other metals, such as stainless steel or nickel alloys may be used.
“Having disclosed without claiming the steel substrates,
Johnston cannot now invoke the doctrine of equivalents … to
cover the disclosed but unclaimed steel substrate. To the extent
that YBM Magnex conflicts with this holding, this en banc court
now overrules that case.” Id.
Watchout: Disclosure Dedication
Chemical Example
Tanabe Seiyaku Co. v. U.S. Intl. Trade Comm., 109 F.3d 726 (Fed.
Cir. 1997).
US 4438035 claimed a method for preparing a benzothiazepine
derivative by condensing a compound in a solvent selected from
acetone, lower alkyl acetate, a mixture of acetone and water and
a mixture of lower alkyl acetate and water…
Acetone (CH3-CO-CH3) is a species of the genus lower alkyl
ketone.
Accused process used butanone (CH3-CH2-CO-CH3), which is also a
lower alkyl ketone.
Watchout: Disclosure Dedication
Chemical Example (continued)
Held: Butanone is not an equivalent of acetone. If patentee
claimed a lower alkyl acetate, he could also claim a lower alkyl
ketone. No equivalence.
Rule: reciting a narrow chemical species in a claim, when use of a
broader chemical genus including the species is foreseeable, will
exclude compounds falling within the genus other than the
species
Watchout: Disclosure Dedication
When to Use a Narrow Disclosure
▪ If you will continue research which may lead to
subsequent filings.
▪ If you don’t want to tip future directions for R&D.
▪ If you are worried about Disclosure Dedication.
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EXAMPLE – Swiffer®
0 -Advertising
Protection at the point when a client or consumer is deciding what to buy
0 -Advertising
Protection at the point when a client or consumer is deciding what to buy
0 -Advertising
Protection at the point when a client or consumer is deciding what to buy
0 -Advertising
Protection at the point when a client or consumer is deciding what to buy
1 – First Moment of Truth
Protecting the
Reason to Win
at the point of
purchase
1 – First Moment of Truth
Protecting the Reason to Win at the point of purchase
2 – Second Moment of Truth
Refill model for repeat purchase
“Swiffer-esque” motion
Easily accessible dirt bin
Protecting the Reason for Repeat Purchase
Focus on marketable consumer benefit
2 – Second Moment of TruthProtecting the Reason for Repeat Purchase
Focus on marketable consumer benefit
2 – Second Moment of Truth (cont.)
A) Legacy Design Patents:Refill Sheets to Protect Refill Model
Protecting the Reason for Repeat Purchase
Sheet
DesignD662,325
Sheet Sub-Combinations
D630,859D650,993
2 – Second Moment of Truth (cont.)
A) Legacy Utility Patents:Refill SheetsUS 6,561,354, US 6,797,357, US 6,936,330, US
8,536,074 and US 9,005,733
Legacy patents claim:
1) sheet texture
2) oil/wax coating
Protecting the Reason for Repeat Purchase
2 – Second Moment of Truth (cont.)
A) Legacy Utility Patents:Sheet RetainersUS 6,305,046, US 6,484,346 and US 6,651,290
Legacy patents claim:
1) retainers with one large prong and plural
smaller prongs
2) circle at proximal end for stress relief
Protecting the Reason for Repeat Purchase
2 – Second Moment of Truth (cont.)
B) New Utility Patents: “Swiffer-esque” motion
Protecting the Reason for Repeat Purchase
Focus on consumer benefit, cost savings, advertising
Closest Prior Art. BISSELL US 7013528
2 – Second Moment of Truth (cont.)
Protecting the Reason for Repeat Purchase
Focus on consumer benefit, cost savings, advertising
US 8,910,340
A foot for a floor cleaning device and being able to
receive a handle pivotally attached thereto, said foot being
movable on a floor and comprising: … one wheel, and
only one wheel, disposed in said foot and rotating in
response to movement of said foot on a floor, an
axially rotatable beater bar with at least one blade
extending radially outwardly therefrom, said beater bar
rotating in response to rotation of said wheel; .…
A device for cleaning a floor, said device comprising:
an elongate handle, a foot … pivotally connected to said
handle,… an axially rotatable beater bar … rotating in
response to movement of said foot on said floor,
said foot further consisting of one wheel, said wheel
being operably connected to said beater bar to cause
rotation thereof when said wheel rolls on a floor, said
wheel having a width of less than 10 mm.
2 – Second Moment of Truth (cont.)
Protecting the Reason for Repeat Purchase
Focus on consumer benefit, cost savings, advertising
A device for cleaning a floor, said device comprising
A foot, … one wheel, and only one wheel, disposed in
said foot … two axially rotatable beater bars operably
connected to said wheel, one said beater bar being on
each side of said wheel, …
US 9661968
A device for cleaning a hard surface, said device
comprising: a foot, … said foot further comprising a
plurality of wheels, … said plurality of wheels having a
width of less than 10 mm between centerlines of said
wheels.
A device for cleaning a floor, said device comprising …
a sole plate for removably receiving a disposable floor
sheet thereon,
… at least one castor and/or roller ball mounted on said
sole plate for contact with a floor .…
2 – Second Moment of Truth (cont.)
B) New Utility Patents: Dirt Bin Accessible From the TopUS 8,910,340
A foot for a floor cleaning device … and comprising:
a housing …an axially rotatable beater bar with at least one blade extending radially outwardly therefrom, … anda dirt bin disposed in said housing and in communication with said beater bar to receive debris therefrom and being accessible through the top of said housing.
US 9661968
A foot for a floor cleaning device and being able to receive a handle pivotally attached thereto, said foot being movable on a floor and comprising:a housing …an axially rotatable beater bar …; anda dirt bin disposed in said housing and in communication with said beater bar to receive debris therefrom and being removable through the top of said housing, said dirt bin having an inclined ramp fixedly mounted thereto and juxtaposed with said beater bar.
Protecting the Reason for Repeat Purchase
Focus on consumer benefit, cost savings, advertising
2 – Second Moment of Truth (cont.)
B) New Utility Patents: Basic ConfigurationUS 99744423
A foot for a cleaning device, … comprising:
a housing, and a sole plate removably joined to said housing, said sole plate
being able to removably receive a disposable cleaning sheet thereon
without attachment of the cleaning sheet to said housing, said sole plate
being movable about a pivot axis between an open position for servicing of
the cleaning sheet and a closed position for cleaning tasks….
A device for cleaning a floor, … comprising… a housing and a sole plate for
removably receiving a disposable floor sheet, said sole plate and said housing
being articulably joined together, said sole plate comprising a head and a panel
joined thereto, … each of said head and said panel having at least one
gripper thereon to removably receive a portion of a cleaning sheet in said
gripper.
A foot for cleaning a floor, … comprising: a housing, a sole plate …
comprising a head and a panel joined thereto,… and further comprising at
least one gripper being disposed on said interior face of said panel, to
removably receive a cleaning sheet in said gripper for mounting to said sole
plate without attaching said sheet to said housing.
Protecting the Reason for Repeat Purchase
Focus on consumer benefit, cost savings, advertising
2 – Second Moment of Truth (cont.)
B) New Utility Patents: Improvements – Upgraded Sheet RetainersUS 9,408,518
A retainer in combination with a rigid, pivotable sole plate of a floor cleaning device …
comprising: at least one finger, … and a flexible barrier juxtaposed with said at leastone finger and being juxtaposed with said second face of said pivotable sole plate of
said floor cleaning device and being exposed when a cleaning sheet is not attachedto said pivotable sole plate, said flexible barrier deforming relative to said rigid pivotablesole plate upon contact with said finger, when said finger is deflected to contact said
barrier.
A retainer in combination with a rigid, pivotable sole plate of a floor cleaning device …comprising: at least one cantilevered finger and a barrier being spaced apart and defininga cavity having no intervening component therebetween … whereby upon contact with
said finger said barrier deflects relative to said rigid pivotable sole plate in responsethereto, thereby providing a signal to a user attaching a cleaning sheet to said floor
cleaningdevice.
A retainer, in combination with a rigid, pivotable sole plate of a floor cleaning device …
comprising: a flexible barrier; at least one cantilevered finger being bendable in a firstdirection towards said barrier to thereby attach a cleaning sheet to said first face of
said pivotable sole plate .…
Protecting the Reason for Repeat Purchase
Focus on consumer benefit, cost savings, advertising
2 – Second Moment of Truth (cont.)
Improvements – Manufacturing Tolerances
US 9,408,516
A foot for a cleaning device, … comprising:
a housing for holding an axially rotatable beater bar in a portion
thereof and having a lip defining an edge of said portion,
a sole plate being able to removably receive a disposable
cleaning sheet thereon …
said sole plate having a distal edge proximate said lip, said lip and
said distal edge defining a gap therebetween, said gap ranging from
about −7 mm to about +5 mm.
Protecting the Reason for Repeat Purchase
Focus on consumer benefit, cost savings, advertising
2 – Second Moment of Truth (cont.)
Protecting the Reason for Repeat Purchase
Focus on consumer benefit, cost savings, advertising
A device for cleaning a floor, … comprising: …
a foot, … having a housing and a sole plate… said sole plate
and said housing being articulably joined together, said sole
plate comprising a head and a panel joined thereto, … said
housing having … [a] beater bar cooperating with a lip disposed
on said housing to propel debris towards a dirt bin, said panel
having a distal edge proximate said lip and spaced therefrom by
a gap, said gap ranging from about −7 mm to about +5 mm.
A foot for a cleaning device, said foot having a longitudinal
centerline, a front, a rear longitudinally opposed thereto, and two
opposed sides connecting said front and said rear, and being
movable on a surface, said foot comprising: a housing holding an
axially rotatable beater bar in a portion thereof and having a lip
defining a rearward edge of said portion, a sole plate … said sole
plate being able to removably receive a disposable cleaning
sheet thereon without attachment of the cleaning sheet to
said housing … having a distal edge proximate said lip, said lip
and said distal edge defining a gap therebetween, said gap
ranging from about −7 mm to about +5 mm.
2 – Second Moment of Truth (cont.)
Protecting the Reason for Repeat Purchase
Focus on consumer benefit, cost savings, advertising
C) Trade Secret Protection
Protection for:
(1) test method used to determine
pickup efficacy
(2) consumer research for evaluating
product desirability
REFERENCES
1. Primer on US Patent Basics: https://www.uspto.gov/patents
2. General Information about US Plant Patents: https://www.uspto.gov/patents/basics/types-patent-applications/general-information-about-35-usc-161#heading-2
3. Primer on the International IP System: https://www.wipo.int/portal/en/index.html
4. Hague – International Design System: https://www.wipo.int/hague/en/
5. Primer on Utility Model Registrations from WIPO: https://www.wipo.int/patents/en/topics/utility_models.html
6. Publications: World Intellectual Property Indicators (WIPI): https://www.wipo.int/publications/en/series/index.jsp?id=37
7. USPTO Quality Metrics: https://www.uspto.gov/patents/initiatives/quality-metrics-1#step1
8. IP Australia Quality Management: https://www.ipaustralia.gov.au/about-us/doing-business-us/quality-management
9. OECD: https://www.oecd.org/sti/inno/intellectual-property-statistics-and-analysis.htm
Larry L. Hustonlarry.huston@us.af.milOffice: (937) 904 -5762
Julie A. McConihayjmcconihay@fbtlaw.comOffice: (513) 872-9752
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