35 USC 287: Marking inventions

Remember to mark your products!

To avoid damaging your patent rights, mark your products with patent numbers. The law covers devices but not methods, so marking software is a bit tricky.

You probably have noticed that some products are marked with the word “patent” and a list of patent numbers. These are usually written in small type somewhere on the product or on its packaging. If you (as a patent holder) are planning to start producing your own patented products, what happens if you don’t include this marking?

Because it is hard to tell what is and isn’t patented, Congress passed the 35 USC 287 statute (Federal law) to protect the public from accidental patent infringement. The law holds that absent such marking, your ability to recover past damages from an infringer can be very limited.  For example, past damages may only extend back to the time that you first sent a notice letter to the infringer. This law also covers your patent licensees (who often forget such markings) as well, so remember this for license negotiations.  Otherwise, your licensee could end up damaging your rights.

Although traditionally actual patent numbers had to be marked on the product, a few years ago it became OK to just use “virtual marking”. Here, just marking “patent or pat”, followed by a publically accessible web page address, is enough.  Virtual marking has advantages, but make sure the web page is actually “up”.

To prevent inadvertent loss of rights, it may seem safer to always err on the side of marking, but don’t overdo it.  There is a different law, 35 USC 292, designed to protect the public against false patent marking. So the general rule of thumb is to try to provide adequate patent notice, but avoid being deceptive.

35 USC 287 has some “bugs” and “features”

Bugs: Untended consequence — the law somewhat favors patent trolls. A patent holder who doesn’t produce anything (and hence has nothing to mark) can still recover past damages from up to six years earlier.

Features: Because it is hard to affix a mark to a method, 35 USC 287 generally doesn’t apply to methods patents.

But what about software and software implemented inventions? Software patents often contain a mixture of methods claims and device claims. However, software typically runs on (or is stored in) some sort of physical object. So is software covered by 35 USC 287 or not?  If so, what to mark, and how to mark it? What about websites and apps?

The courts have not been consistent here, and the law is still evolving. However, a fair number of court cases have required marking. It is safest to assume that patent marking is likely required, and then examine legal aspects as they apply to the specifics of your situation.

Thales patent eligibility ruling

HMD display
Not the Thales Head Mounted Display!

A recent Federal Circuit case, Thales Visionix Inc. v United States, continues the process of restoring sanity to the ongoing “Alice” patent eligibility mess.

As previously discussed, since the Supreme Court’s 2014 “Alice” decision, patent law has been burdened with an unworkable “is it abstract?” test for patent eligibility. This test is similar to a medieval test to determine witches:  Step 1:determine if the test subject is a witch abstract”;  Step 2:if so, does the witch float? is there something more?”

The Federal Circuit, charged with cleaning up patent law, has been slowly chipping away at this nonsense. In two earlier cases (Enfish and Rapid Litigation), the Federal Circuit established at least a few reasonable step 1 rules (such as read the entire claim), and now we have another.

Thales Visionix had a patent on a motion-tracking Head Mounted Display (HMD).  This patent claimed a HMD arrangement of inertial sensors and signal processing elements, used in the F-35 fighter jet. Any enemy pilot blown up by this HMD system might not consider this to be “abstract”, but a lower US court was not so easily impressed. They used their own “Alice: it’s abstract” weapon to shot down the HMD patent.

In the absence of rules (the Supreme Court thoughtfully declined to provide any), lower courts have often used a type of “guilt by association” logic, where if a given patent claim has some elements in common with another claim previously ruled to be abstract, then that claim is also abstract. The lower court argued that the Thales patent claims were abstract because the claims allegedly “used mathematical equations (previously determined to be abstract) for determining the relative position of a moving object to a moving reference frame”.

However the Federal Circuit disagreed.  They determined that just because a claim contains a patent ineligible (abstract) concept (e.g. mathematical equations) does not mean that the entire claim is (step 1) “abstract.” Rather, the question is if the patent ineligible concept (math, natural law) is being used to improve some other technique. If so, then the claim as a whole is not abstract. This is similar to their earlier, more biotech-focused, ruling in the Rapid Litigation case.

So as a medieval logic analogy, just because a woman has a cat does not automatically mean that the woman is a witch, if the cat is unusually good at catching mice. If improved mouse catching can be shown, the step 1 conclusion is that the woman is not a witch. There is no need to go on and subject the poor woman to a step 2 “witch float” test.  This is good, because there is a high casualty rate at step 2.

Patent claim charts

Patent claim chart, with one row not matching
Patent claim chart, with one row not matching

Think that someone is infringing on your patent?  Worried you are infringing, or want to show a patent reads on prior art?  Analyze with patent claim charts.

The basic idea behind a patent claim chart is to first break a given patent claim down into a series of smaller sections, and then to determine if each smaller section matches a corresponding aspect of a target of interest. This target may be a potentially infringing product or service, another patent, or even a public domain product or service (to try to show that a patent may be invalid).

Patent claim charts usually follow a row and column table format.  One column contains various sections from a claim of interest, spread out over a number of rows.  Another column contains various aspects of a target of interest, also spread out over a number of rows.  Rows containing sections from the claim column are compared with rows containing aspects from the target column.

If can be shown that every row from the claim column exactly matches up to one or more rows from the target column, then this suggests that claim does describe the target. Note, however, that although every claim row must match with a target row, there is usually no reverse requirement that every target row match-up with a claim row.

Sounds simple, but the devil is in the details.  Since patent claim charts are often part of an adversarial process, each side may feel under pressure to “slant” their claim charts in a way that favors their particular position.

Claim charts can be slanted in many ways.  One of the most common ways is to write the chart in a way that skips over important details, often by not breaking the claim down into small enough sections.

Some of the comparisons may not be accurate.  Also, remember that individual claim terms can sometimes be misleading because they may have been defined in the text of the patent application (or during prosecution), in a somewhat unexpected way.

So read and write claim charts with caution and skepticism.  Don’t use sloppy claim charts to initiate any legal action.  Of course, don’t blindly accept claim charts from others without doing your own independent analysis.

Halo and reckless infringement

The Halo decision
The Halo decision

The Halo decision; and how to avoid court-ordered punitive damages for culpable patent infringement (recklessly infringing known patents)

One problem that both startups and established corporations face is what to do in situations where their product might infringe on someone else’s patent.  If the corporation ends up in court, and a judge determines that the infringement was somehow unusually extreme (e.g. egregious), then the judge may punish the offender by awarding up to three times actual damages (punitive damages). This can severely damage or destroy the infringer.

But what is “unusually extreme”?  Is it when an engineer is worried about a particular patent, or a competitor sends a warning letter, but the company proceeds anyway?  How close does the product have to match the patent?

The law has been going back and forth on this.  Earlier the rules were strict. Then the rules became so lax that punitive damages were hardly ever awarded. Now, in the June 2016 case of Halo Electronics v. Pulse Electronics, SCOTUS (Supreme Court of the United States) has clarified that the rules are somewhat in-between these two extremes.

In the Halo decision, SCOTUS clarified that what is relevant is “culpability”, which in essence is the state of mind of the person (actor) at the time of the conduct.  In a corporate setting, this is likely the state of mind of the decision makers at the time they either decided to launch the product, or decided to keep selling in the face of some knowledge of infringement.

In particular, the issue is one of acting recklessly (not like a normal person) and/or with willful misconduct while knowing that there was a patent infringement issue.  The court can determine this if the majority of the evidence supports this conclusion (i.e. preponderance of the evidence standard).

Getting advice of legal counsel:

Earlier, when the rules were strict, the courts, in essence, created a duty to get the advice of legal counsel before acting. However later, when the rules were lax, there was not much of a need for this.  Courts in this era set the threshold for punitive damages so high that such damages were almost never awarded.

Now, with the present rules, the situation is in-between.  Failure to get the advice of legal counsel does not automatically prove that a company acted recklessly. However getting advice before acting (e.g. launching a product) can help prove lack of recklessness. Timely advice can help establish that the company acted with normal caution, thus hopefully avoiding punitive damages.  But note that there is a timing issue:  the legal standard is the state of the mind at the time of the (infringing) conduct. SCOTUS is not impressed by legal arguments concocted afterwards.

Reviving abandoned patents

The reanimation of dead patents!
The reanimation of dead patents!

Have an accidentally abandoned US patent or patent application?  These can often be revived if you promptly file a USPTO petition for revival.

It just so happens that your friend here is only mostly dead. There’s a big difference between mostly dead and all dead.” Miracle Max, “The Princess Bride”.

The USPTO declares both patents and patent applications to be “abandoned” for various reasons. Patents are usually declared abandoned for failure to pay maintenance fees. Patent applications are usually declared abandoned for failure to respond to USPTO office communications (and pay any needed fees) within the time stated on the office action.

Don’t despair.  Many of these are initially only “mostly dead”, rather than “all dead”, and can be revived by promptly filing a petition to “revive”, paying the appropriate revival fee (and other fees due), and generally fixing whatever other problem caused the abandonment in the first place.

The key word here is “prompt”.  Here, the USPTO attempts to distinguish between “unintentional abandonment” and “intentional abandonment”.  As you might imagine, this can be a rather subjective determination that can often be decided by the length of the delay and explanations of the circumstances.

A determination of “intentional abandonment” means that the patent is legally now “all dead”, which is why it is important to act promptly.

The issue of what is “unintentionally abandoned” is a tricky gray area in patent law. Although often a form statement such as, “the entire delay was unintentional” will suffice, the longer the delay, the more that this strains credibility, and the greater the chance that additional explanation will be required/and or the petition to revive may be denied.

The general rule is thus that you should try to initiate the revival actions as quickly as possible.  Fortunately, this is “quick” by legal standards, rather than “quick” by video gamer standards.

As a very rough and informal rule of thumb, which you should not rely upon, petitions filed within about six months of abandonment often have a good chance of succeeding. Petitions filed up to two years after abandonment can often also work (although the risk of rejection may increase). Even after two years or more, a petition to revive may be accepted, but here the situation does become more problematic. The petitions office may require more of an explanation for the delay, and the chances that the petition will be denied can be substantially greater.

Note that “expired” patents – patents that have died because their full patent term (often 20 years from the filing date) is up, are “all dead”.  They cannot be revived.

Sending Alice to Planet Blue

Planet Blue -- Neptune perhaps?
Planet Blue — Neptune perhaps?

Forget “patent invalid because abstract”, the Planet Blue decision finds the real issue is preemption, and non-preemptive software claims are not abstract.

As previously discussed, in recent years the Supreme Court (SCOTUS) issued a series of confused rulings such as the “Alice” and “Mayo” decisions.  SCOTUS ruled that “abstract” inventions were not patentable, but didn’t define “abstract”, thus making the issue very subjective and bringing much confusion to software and biotech patents.

Fortunately, perhaps realizing that they did more harm than good, SCOTUS has recently started to decline further cases of this type.  They are apparently now leaving it to the Federal Circuit (the court right below SCOTUS) to clean things up.

Over the past few months, the Federal Circuit has initiated a number of damage control efforts, including their “Enfish”, “Bascom”, and “Rapid Litigation” decisions.  Now with another case, “Mcro, Inc. v. Bandi Namco Games, we have still more damage control. (Mcro calls itself “Planet Blue”, so we will call this the “Planet Blue” decision.)

The “Planet Blue” patent involved some improved methods of lip synchronization for animated cartoons, and their claims covered some novel but general rules to do this.  A lower court had originally invalidated these as being abstract, but the Federal Circuit reversed and said that the claims were OK.

As per their earlier Enfish decision, the Federal Circuit did not simply assume that software is “abstract” (under Alice step 1).  Instead, they asked the broader question, why is “abstract” a problem anyway?  As they interpreted it, “The concern underlying the exceptions to § 101 is not tangibility, but preemption.”  [Emphasis added]

Some history about patents and “preemption”: Back in1853 Samuel Morse, inventor of the telegraph, tried to get a claim for the use of electromagnetism for any method of printing characters or signs. However, this particular claim omitted any other details. The 1853 SCOTUS said “no”, because claims where “it matters not by what process or machinery the result is accomplished” (e.g. are preemptive) are not going to be allowed.

In Planet Blue, the Federal Circuit (possibly giving up on the more recent rulings as being hopelessly confused), has essentially gone back to the 1853 Morse case for some coherent guidance.  The Federal Circuit ruled that with regards to the Planet Blue claims, “The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice… Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.” In other words, this passes Alice “step 1”, and you get a free “get out of abstract patent eligibility rejections” card.

The big win here is that “preemption” is a more objective issue, and by changing the analysis from “abstract” to “preemption”, we remove a lot of randomness from the patent process. To me, this looks like an important ruling, and good news for software patents, biotech patents, and indeed all types of patents.

Writing patent claims

A patent claim is like a jigsaw puzzle piece
A patent claim is like a jigsaw puzzle piece

Writing patent claims is analogous to describing multidimensional jigsaw puzzle pieces using words.  Your claims have to fit in the spaces between prior art.

Patent claims are the most important part of a patent because the claims are legally enforceable.  Claims are also the trickiest part because they have to follow many rules.  Claims should describe your invention, not read on the prior art, and not be obvious variations on prior art. Claims should also be precise enough that others can clearly determine what it is that you are claiming.

Like a jigsaw puzzle:  As a useful analogy, consider each patent claim to be somewhat like a multidimensional jigsaw puzzle piece. Each claim should be written using words and clauses that, in addition to describing your invention, “bend in” to avoid prior art, and “bend out” when there is no prior art.

From the patent examiner’s standpoint, he or she is looking at your claims in the context of the other prior art (the other pieces). The examiner is determining if each of your particular claim “pieces” is fitting nicely into the holes between prior art, or if they are hitting the other prior art “pieces”.  If there is overlap, the examiner will, at a minimum, want you to make your claims “bend in more” to avoid that prior art.  Part of the process of writing patent applications is to try to anticipate where this might happen and to write the patent in a way that gives you more options to “bend in” and “bend out” during the patent examination process.

There is one big difference between jigsaw puzzles and patent claims, however.  In jigsaw puzzles, although the different pieces can’t overlap, the gap between the different pieces can be made very small.  Think of this gap as the area where, given that one piece is “bending in“, it is “obvious” that the other piece must “bend out“.

Unlike jigsaw puzzles, examiners often require that this “gap” be big enough so that the shape of your jigsaw puzzle piece (claim) is not immediately obvious in view of the shape of the neighboring pieces.  In fact, a big part of the patent examination process is negotiating the extent of this gap, and how best to amend the claims accordingly.

Patents and national security

Spike, logo of national security satellite NROL61

Filing a patent with national security implications? Check your filing receipt for a foreign filing authorization before filing outside the US.

After you file a US patent application, the USPTO will send you a filing receipt. On page two of this receipt, you will usually find the words: “If Required, Foreign Filing License Granted: [date]”.

What does this mean? Welcome to the interesting rules involving patents and national security.

Under the Invention Secrecy Act of 1951, the US government has the right to classify patent applications that, in the opinion of the USPTO, may pose a threat to the security of the US. In effect, the USPTO subjects every new patent application to at least a cursory security review. Think of it as a patent application TSA (airport style) inspection.

The vast majority of all applications will pass through the security review quickly, and those that pass will get the “Foreign Filing License Granted” clearance. But occasionally, something catches the interest of the national security review staff. For example, I can pretty much guarantee that a patent application for “Improved methods for detecting stealth aircraft” will get a very careful national security review!

What if you are planning to also file your invention outside the US? Doing a foreign patent filing without proper advance approval is much like trying to jump a TSA line. Folks get excited, and unfortunate things may happen. At a minimum, you could easily lose the US patent rights on your invention.

The amount of security review can vary depending upon world events. For example, after 9/11, it appears as if an unusually large amount of scrutiny took place. Scrutiny may also vary according to what areas of technology are considered sensitive at any given time.

So the take-home lesson, which is particularly relevant for US inventors of patent applications with potential dual-purpose civilian/military uses, is to look for that “Foreign Filing License Granted” small print before filing outside the US. Alternatively, if there has been a delay, file a PCT application through the USPTO, rather than filing directly outside the US.

Patent demand letters

Frustrated patent troll
Frustrated patent troll

Patent demand letters are stressful.  Before responding or ignoring, evaluate infringement, patent prosecution history, ownership, and litigation history.

Has your startup received a “demand” letter asserting that you are infringing on a patent?  Although real infringement of valid patents does occur, and some of these letters are legitimate, many demand letters are sent in less than 100% good faith. The sender may be betting that the startup will settle quickly to avoid litigation costs, regardless of the actual merits of the situation.

Don’t immediately contact the sender, and don’t ignore the letter either.  Instead, calm down and evaluate the facts, preferably with the help of a patent attorney.  Is there a plausible infringement problem or not?  How to tell the difference?  A few common methods are discussed below.

To start, get: 1) a copy of the issued patents discussed in the demand letter, 2) the USPTO prosecution history of these patents, and 3) information about the allegedly infringing product.  If the letter doesn’t provide actual issued patent numbers, or if the letter only cites patent application numbers, the probability that the letter is bogus becomes higher.

Look at the independent claims for each patent (claim 1 is not always the broadest claim), and see if your allegedly infringing product infringes the entire wording of any independent claim. If so, look at the relevant dependent claims for more detail. If the letter argues contributory infringement, combine your product with the other accused product for this analysis, and check if your marketing literature is promoting this combination.

The patent prosecution history for the patents in question, usually downloadable from the USPTO, can be very relevant. This history will often reference if the patent has been used in litigation before; if the patent has been reevaluated by either reexamination or the Patent Trial and Appeal Board (PTAB); and if the patent applicant had to make significant concessions during the patent prosecution history.

The patent’s USPTO assignment records can be used to better understand the relationship between the sender and the actual patent owner of record. This is often obfuscated. What is this relationship, and is the purported patent owner the real patent owner?

If there is a history of litigation, check it out. Patent litigation usually takes place in Federal Courts.  This is usually available through PACER (Public Access to Court Electronic Records) and a number of other sources. Has the patent owner been filing a lot of lawsuits and then settling before the court reaches a decision, or does the patent owner usually win?

There are many other issues that can be explored as well, but this type of information can help you and your attorney better evaluate what your next steps should be.

Rapid Litigation: Biotech patent win

Cleaning up a legal mess
Rapid Litigation v Cellzdirect: Federal Circuit cleaning up a patent mess

In Rapid Litigation v Cellzdirect, the Federal Circuit has further cleaned up the patent eligibility mess caused by SCOTUS’s Alice and Mayo decisions.

In 2012 and 2014, the Supreme Court (SCOTUS), which wanted to invalidate a few pesky financial and medical diagnostics patents, decided to use legal “nuclear weapons” rather than legal “fly swatters“.  The SCOTUS legal nuclear weapons were the now infamous two-step “abstract material” patent eligibility test.  Step 1 of this test is summarized below:

Step 1) Determine if the patent is directed to “abstract” subject material.  If not then congratulations, the patent passes this test and is patent eligible.  

SCOTUS refused to define “abstract material”. This allowed the USPTO and the lower courts to run amok and start randomly invalidating patents. This, in turn, started to damage US biotech and software startups, which need patents to get funding, as well as for protection from larger competitors.

The Federal Circuit, one step below SCOTUS, and charged with cleaning-up patent law, waited several years for SCOTUS to correct itself, to no avail.  However, their recent (mid-2016) series of patent eligibility decisions, first Enfish, then Bascom, now Rapid Litigation (Celsis) v Cellzdirect suggest that the Federal Circuit is now getting serious about damage control.

“Abstract” is just as undefined for biotech as it is for software, but for biotech, it seems have more of a “natural law-ish” flavor.  Arguably a technologically illiterate approach since everything involves natural laws, but alas SCOTUS has no STEM majors.

Fortunately, some Federal Circuit judges are STEM majors, and they have the power to do at least some damage control by providing official interpretations/clarifications of SCOTUS decisions. Here they clarified that in step 1, “directed to” is not the same thing as “involving”.

The patent in this case, 7,604,929, was about an improved method of freeze storing liver cells (cryopreservation of hepatocytes).  Before the patent, everyone in the field believed that freezing damages living cells, and that multiple freeze-thaw cycles should be avoided.  The inventors discovered that some hepatocytes were resistant to this problem, and used this discovery to invent an improved hepatocyte cryopreservation method.  This method first freeze-thawed the cells, then used a density gradient to select for the freezing resistant cells, and then refroze these resistant cells again, producing very freeze resistant hepatocytes.

An earlier court had ruled this patent invalid by arguing that discovering that some hepatocytes could survive multiple freeze-thaw cycles involved a “law of nature”. However, the Federal Circuit pointed out that “involved” isn’t enough grounds to invalidate a patent, because the ‘929 methods also claimed other steps, such as using density gradients.  So “directed to” is more than just “involves“.

This Federal Circuit decision makes it harder to invalidate biotech patents, at least in the most common cases where the claims also have other steps in addition to the “natural law” steps.  The fact that the ‘929 claims were relatively simple helps to further clarify the legal issues.