PATENT STRATEGIES

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.

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

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

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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

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

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

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 -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).

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).

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).

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

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

between 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.

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).

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.

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.

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.

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

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

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

DesignD662,325

Sheet Sub-Combinations

D630,859D650,993

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

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

B) New Utility Patents: “Swiffer-esque” motion

Focus on consumer benefit, cost savings, advertising

Closest Prior Art. BISSELL US 7013528

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.

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 .…

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.

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.

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 .…

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.

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.

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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