Turkey Day Inventions

It is the day after Thanksgiving and I am taking a much needed break from all my various on-going projects. However, while assisting in the kitchen with a variety of Thanksgiving sous-chef duties, I couldn't help but remark at all the inventions that were making my life easier. I decided to think of some of the kitchen inventions that a Pilgrim would have traded a shipment of Belt-buckle hats for.



A hand cranked apple peeler, corer and slicer patented in 1893 (PN # 508,137) would have saved Pilgrims countless man-hours. Giving them more time during the day to pray, not dance, and contemplate their terrifying existence at the edge of the world.


The mixing stand. (PN #2,390,742) No stranger to the denizens of wedding registries the world over, the mixing stand would have saved "Goody" Housewife countless hours of effort and the associated repetitive strain injuries of mashing all manner of root, tuber and vegetable. First patented in 1939, the mixing stand was licensed to A.F. Dormeyer Mfg Co. under the trade-name "Mix-Rite". This "striking" stand-mixer would have freed up plenty of time for Pilgrims to contemplate the high-rate of infant mortality, "Consumption" and vitamin-deficiency related illness endemic to the populace.

The Mechanical Refrigerator (PN # 2,089,851). Also patented in the late 1930's, this invention described the use of fluid (namely Freon) expansion to provide the cooling mechanism to preserve foods. Something that would have aided the Pilgrims greatly. Nothing says pointless effort like spending 3 days to prepare a feast and having most of the left-overs spoil in half that time.




Antibiotics (numerous patents). While not necessarily Thanksgiving specific inventions, Pilgrims would have traded all the muskets and bibles they had for a few doses of modern-day broad spectrum anti-biotic. The accepted statistic is that there were 7 graves dug for every new house built in the early settlement period. Most of these were deaths do to disease and infant mortality, both of which modern medical science has made great strides in minimizing. That is what we should really be thankful for.

[G|A]

Google V. THE WORLD

Recently Google announced that its Scholar web-based search service would begin providing access to Federal and State legal opinions. Above the Law correctly notes that this could be the opening shot of a war that ends with the destruction of the Lex-West-Bloom legal search gatekeepers. While Google is a force to be reckoned with in everything from browsers, search engines (and patent search too), operating systems, phone services, e-mail, word processing and a ton of other things, I am not sure that Scholar will cause the total collapse of the big three.....today.

Using Scholar, I searched for Graham v. John Deere Co. to see what sort of results the service provided. Google gives you two options, to read the case (with highlighted keywords, that were part of your search) and to see how the case was cited. This second option is where Google has a bit more work to do. One of the essential features of the big 3 is the key cite, shepherdize, precedence identifies that let you know if you are barking up the wrong (and no longer good) legal tree. Scholar gives dozens of links and text snippets showing where the originating document was cited in subsequent documents, but does not comment on whether or not there was agreement, comment or dissent. Most importantly, it does not tell you if the case is good law.

Until Google gets the ability to show precedence and some legal analysis about the context of the case, I don't think any small law practitioners should be canceling their Lexis / West accounts anytime soon. However, this is Google, so assuming that they are not already working on a smooth integrated solution to this would be folly. Google database engineers are some of the best computer scientist that money can buy, and it would be prudent to bet that world of legal search is about to get a lot more competitive.

[GA]

New Feature

In the course of assisting a client with a trademark matter, I began thinking about all the decisions that eventually brought this client to my attention. While the hows and whys of the pertinent legal matter should always take precedence, I began to ask the client about their general impression of intellectual property law. More importantly, I began asking about what it meant to them before it became a focus of a dispute.

I think many practitioners fail to understand that the general public is largely aware of intellectual property concepts, but don't always know the best way to take advantage of the rights that our system provides. Much like in health care, IP practice focuses a lot of its time on preventable issues, that were never prevented.

I decided to get some data on what intellectual property producers think about IP, especially before it becomes something that is knocking on the front door of their livelihood. Issues like why producers opt for cheap invention services, why people fail to get federal copyrights or file for trademarks. My assumptions led me to believe, again like health care, that is was an issue of money. The capital outlay for preventative legal actions was seen as a waste of money, while remedial legal actions were undertaken as a option of last resort. In my interviews, I found this to be generally correct, however, there is a vista of thoughts, emotions and pre-conceptions that go into producer decisions.

In the coming weeks, there will be a new feature which will relate some of my interviews with designers, programmers, inventors and other producers of intellectual property. Hopefully to convey their impressions of our field and how those impressions influence their work, their decisions to hire attorneys, and their decisions to take action against other producers. Through these interviews, IP practitioners can learn as much about the people we seek to help as they learn about our field.

These posts will be labeled [Producer Profiles].

[GA]

Stanford v. Roche (Fed. Cir. 2009)

Stanford v. Roche (Fed. Cir. 2009) 08-1509r.pdf (PDF via www.patentlyo.com).

Using federal NIH funding, Stanford scientists developed and patented a method of using PCR to measure HIV virus concentration in blood plasma. The development was done in partnership with the PCR maker Cetus. The Cetus PCR business was later purchased by Roche, and Stanford subsequently offered to license the patent rights to Roche (for a substantial royalty). After negotiations stalled, Stanford sued Roche for patent infringement. Roche claims that it has ownership rights or - at least - shop rights to the patents based on its acquisition of Cetus's PCR assets. The district court (N.D. Cal.) rejected Roche's claim of rights, but did find the patents invalid as obvious (on summary judgment).

The Fed. Cir. made a number of findings about the nature of Roche's defense as well as the validity of the patent itself. What I found interesting was the discussion on assignment of rights.

Roche provides some interesting practice notes for both the small litigator as well as the patent prosecutor. In fact, small law firms which combine both (such as my own) would do well to study Roche for all the practical morsels of legal knowledge that the Fed. Cir. is serving up. Roche is a good example of the conventional wisdom that the "little things" end up being a big litigated issue. In Roche that "little thing" was the often over-looked portion of client / new matter application intake, the assignment. Assignment intake and filing are generally a routine matter, something that takes a back seat to IDSs and application drafting. However, Roche shows the importance of not only a) making sure that the client provides the full scope of information for the assignment in take form, but b) that the practitioner ask some follow up questions to make sure that the client is not "on notice" about rights transfers, and if they are "on notice", that suitable steps be taken to resolve the assignment issues.

As a first issue the Fed. Cir. reaffirmed that contractual issues surrounding assignments of patents are intimately tied into issues of standing, and hence, are subject matter ripe for federal review. As a more practical matter, Roche brings to light is something that every employment / contract agreement drafter should be aware. The assignment between the inventor and Stanford and the Inventor and Roche (by way Cetus) determined the order of the transfer of ownership rights, even though the temporal order and the transfer order of relationships was reversed.

The Fed. Cir. held:


Recordation of Rights: Patent ownership regularly transfers without the new owner recording the assignment with the USPTO. Recordation is not required, but it does offer some benefits. Notably, where two entities both claim ownership (as there are in this case), a second assignee can hold title if it records first.

A [prior] assignment . . . shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage. 35 U.S.C. 261.

One caveat in the statute is that the subsequent assignee must be a bona fide purchaser - i.e., take "without notice" and pay "valuable consideration." Here, the Federal Circuit found that Stanford was at least on inquiry notice of the relationship between the inventor and Cetus and the potential for a rights transfer.

Here, the inventor "agreed to assigned" to assign his patent rights to Stanford. Roche at 11. The Court interpreted this as requiring a subsequent written instrument in order to effect the transfer.

This is in contrast to the Cetus transfer which stated "do hereby assign", which effected a present assignment of the future invention without requirement of a subsequent additional written instrument. Roche at 12,

The lesson learned by Stanford and its attorneys is to make sure that if a recordation of the assignment is taking place at the time desired by the parties. To do this, you must insure that the proper terms of art are being used to effect immediate transfer.

Conversely, if immediate transfer is not desired, we now have several Fed Cir decisions that will allow for a proper time-line of assignments to be drafted.

I think a lot of licensees and contractual drafters are going to be copying and pasting "do here by assign" on to all of their new drafts.

(GA)

Martek Biosciences V. Lexicographer

Martek v. Nutrinova presents an interesting case for the burgeoning lexicographer. The term at issue is "animal" and the question is whether or not Humans are covered by said term. The majority held that an applicant, when they have not expressly defined limits to a term (i.e. animals = all animals -humans and kittens), there is no inherent exclusion to members of the term. (If you claim "Rock Bands" then "Creed" is coverd by that disclosure. Arguments before the CAFC that "Creed is christian Rock, Not rock rock" will get you nowhere, since you never limited Rock Bands to "good rock bands").

The majority goes on to point out that regardless of if the preferred embodiments in the specification appear to limit the definition, preferred embodiments are just subsections that have been highlighted for the overall disclosure, and not limiting on the overall specification.

Judge Rader dissents, finding that the totality of the specification should be used to determine if there is a inherent limitation in the lexicographer's definition. Specifically, the usage of the term "raised" with respect to animal made it so the term animal could never apply to people.

Brief aside: Rader here is making a moral / western civilization post modern argument that would not exist 200 years ago. While it is true that Humans are not raised (in the same manner as livestock) at the moment, it was not always the case. The Chattel Slavery system was designed to treat people as live stock, and it is possible that this specific invention would have been useful to someone who wanted to raise Omega-3 intensive individuals. While I agree with Rader's assertions that the term raised makes the definition of Human suspect, I am not a huge fan of using moral arguments to craft borders on the term.


Regardless of the whether Rader and the dissent is correct, the case provides a helpful bit of practical drafting guidelines. It makes sense, if you are going to be you own lexicographer, to put the broadest definition possible in your specification. However, if the broad reading needs some specific tweaking, that tweaking should be done in the preferred embodiments, and not in the general specification. In Martek's case, the reference to raised animals could have been placed in a preferred embodiment clause that spoke directly to the raising of animals. In this way the argument would not have rested on if "raised" modified "animal", but if perferred embodiments can limit general disclosurs. (one is settled law, and one was up for interpertation).

I have often remarked that I draft applications starting with the specification, but always draft the preferred embodiments last. Doing it this way, it is possible to pick out some of the areas that are going to give you problems down with the Examiner, and hopefully shore them up.

Willian H. Conner Inn of Court

On April 15, 2008, I had the great honor of participating in a Moot Appellate Court presentation for William H. Conner Inn of Court. The Conner Inn of Court presented the continuing saga of the Wright v. Curtis patent dispute. The program called for an Appellate level oral argument by both sides, including standard rebuttals and even a Sur Rebuttal. The participants, themes, and analysis will be discussed in depth in a future post. Stay tuned.