Blog Archives
Thermal protection system for air/space vehicles; Arrowhead Products Corp.; U.S. Pat. No. 8,056,862
U.S. Patent No. 8,056,862, issued on November 15, 2011 to Arrowhead Products Corp. of Los Alamitos, CA, discloses a system to fasten ceramic heat-protection panels to the surface of an air or space vehicle.
According to the ’862 patent, air or space vehicles can benefit from having thermally protective structures to handle the high temperatures caused by friction between the vehicle’s outer surfaces and the surrounding atmosphere. For example, NASA’s space shuttles were equipped with heat resistant and thermally insulating protective tiles or panels. However, the adhesive attachment system used by the space shuttles were “plagued by recurring problems of reliability and excessive cost.” Alternative thermal protection structures have used mechanical fasteners and standoffs that attach the thermally protective tiles or panels to the outside of the vehicle, but vehicles using such systems are vulnerable to the extreme heat if any of the tiles or panels are dislodged or displaced. The ’862 patent discloses a system of latches and fusable plugs “which provides the economy and efficiency of metal fastener or standoff fabrication with the ease of repair and replacement of protective tiles and panels while safely maintaining a smooth substantially continuous thermal protection surface.”
The ’862 patent was issued only about 17 months after being filed with the USPTO. This relatively rapid turnaround by the USPTO to issuance is likely due to the application receiving expedited examination by virtue of one of the inventors being at least 65 years of age. Under a USPTO program, a patent application can be filed with a “Petition to Make Special” if the application satisfies one of a series of criteria, one of which is based on an inventor’s age or health. Once the petition is granted, the application is given special treatment with regard to the speed at which it is examined, though the same standards of patentability still apply. As the ’862 patent exemplifies, such petitions can be a useful way to get a U.S. patent in hand sooner rather than later.
According to its website, Arrowhead Products was founded in 1937 and has a long history in developing and marketing ducting systems, particularly in the fields of commercial, military, and space vehicles. The company’s website does not describe any products that are related to the claimed invention of the ’862 patent, so the thermally protective system may still be in development, or perhaps was developed for a particular customer under its engineering services. According to the USPTO database, the ’862 patent is Arrowhead’s fourth U.S. patent.
Kitchen glove design; Duncan Kitchen Grips; U.S. Design Pat. No. D647,252
U.S. Design Patent No. D647,252, issued on October 18, 2011 to Duncan Kitchen Grips of Tustin, CA, discloses a design for a kitchen glove.
According to its website, the raised nub surface texture of Duncan’s kitchen gloves provide various advantages, such as “more insulation between the hand and the heat source” and ”a better, safer, non-slip grip.” In addition, its material is water-repellent, flexible, stain resistant, and non-porous (so it is resistant to bacteria buildup).
As a design patent, the ’252 patent only covers the decorative, non-functional aspects of the design shown in the figures of the patent. Therefore, it doesn’t cover the raised nub surface texture itself, which is a functional feature of the glove, but it does cover the particular design or pattern of nubs that are shown in the figures. Also, the protected design does not include the zig-zag stitching along the outside edge of the glove, or the “KG” insignias all over the glove, since these features are shown with dashed lines in the figures of the ’252 patent.
In early 2009, Duncan Kitchen Grips was acquired by Browne & Co. of Ontario, Canada. According to the USPTO database, Duncan owns five U.S. design patents, all issued in 2011, for various designs of kitchen mitts, gloves, and trivets.
Anti-slip mount for flat panel video display; Premier Mounts; U.S. Pat. No. 8,035,757
U.S. Patent No. 8,035,757, issued on October 11, 2011 to Premier Mounts of Anaheim, CA, discloses an anti-slip system for mounting a flat panel video screen on a wall.
According to the ’757 patent, existing mounting system are prone to over-torquing of the mounting screws and shearing of the mounting holes in the flat panel video screen being mounted to the wall. In addition, there is no standardization of the mounting holes across the various models, so general mounting systems use slots in the mounting brackets, but these slots can allow slippage if not correctly tightened. Dedicated mounting systems designed for particular brands of screens are available, but these dedicated systems do not generally provide the desired level of flexibility in how to adjust or align the screen on the wall. The ’757 patent discloses a mounting system that “does not suffer from the drawbacks” of over-torquing or shearing, and can be used to adjustably mount and align various models of flat panel video screens.
According to its website, Premier Mounts was founded in 1977 “as an audiovisual manufacturer’s representative and within three years, began to fill a gap in the A/V marketplace by creating its own durable, high-quality mounts and carts.” The company “developed one of the first after-market plasma-display mounts …, and holds many patents for ground breaking features that have become the standard for mounting products.” The company has announced that the ’757 patent is directed to its Griplate™ mounting system. According to the USPTO database, Premier Mounts owns eight U.S. patents, three of which were issued in 2011.
Premier Mounts was able to use the “first to invent” aspect of U.S. patent law to get the USPTO to issue the ’757 patent. The USPTO had initially rejected Premier’s application (under 35 U.S.C. § 102(e)) based on a published U.S. patent application that was (i) filed before Premier’s application was filed, but was (ii) published after Premier’s application was filed. Premier was successful in explaining to the USPTO, using an affidavit by the inventor, that the company had actually invented its mounting system before the U.S. filing date of the cited publication. Thus, while Premier was not the “first to file” its patent application at the USPTO, it was the “first to invent,” so the cited publication could not be used in the rejection.
Modifications that are part of the “America Invents Act” recently enacted into law will be changing the U.S. patent laws from a “first to invent” regime to a “first inventor to file” regime. Under the new laws, scheduled to be effective March 16, 2013, Premier’s earlier invention date would not overcome the fact that the company was second to file its patent application. In other words, after the March 2013 effective date, the fact that the applicant was not the first to file its patent application can prevent the application from issuing as a U.S. patent. The ’757 patent is therefore a good example of the heightened importance of filing your patent application as early as possible.
U.S. patents awarded to Orange County companies increased by 14% in 2011
A review of the statistics of U.S. patents awarded by the USPTO to entities in Orange County shows that, in 2011, Orange County experienced success that significantly outpaced the small increase in the total number of U.S. patents granted by the USPTO during the year.
Orange County entities were awarded 2709 U.S. patents in 2011, an increase of about 14% over the total for 2010. For comparison, this success occurred in a year in which the total number of U.S. patents granted by the USPTO only increased by about 1.35%. Orange County’s patents represent about 1.1% of the total number of U.S. patents (246,698) granted by the USPTO in 2011.
About 9% of these Orange County patents were design patents, which is nearly the same as the percentage of design patents awarded overall by the USPTO. Historically, this percentage represents a slight decrease from Orange County’s 10-12% in the previous four years.
The eight OC companies awarded the highest numbers of U.S. patents in 2011 had the following numbers of U.S. patents and percentages (as compared to their 2010 results):
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Broadcom: 1074; +24%
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Allergan: 133; +27%
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Western Digital: 86; +28%
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AMO: 75; +83%
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Edwards Lifesciences: 40; +33%
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Newport Media: 38; +90%
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Masimo: 36; +125%
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QLogic: 34; -11%
Other OC companies that had a prolific 2011 in patents were Beckman Coulter (29), GP Medical (27), Conexant (26), Oakley (24), BSH Home Appliance (23), Applied Medical (22), and Emulex (22). These 15 companies represent about 62% of the U.S. patents granted to Orange County in 2011.
My firm, Knobbe Martens, had a successful year for our Orange County clients, obtaining 276 U.S. patents for our more than 80 Orange County clients, across a wide range of technical areas. This number of OC patents represents an increase of about +37% over 2010.
Online information on local “brick-and-mortar” shopping; Local.com; U.S. Pat. No. 8,032,427
U.S. Patent No. 8,032,427, issued on October 4, 2011 to Local.com of Irvine, CA, discloses a system for providing local shopping information.
According to the ’427 patent, previously-existing web-based shopping comparison services, in response to a user’s typing a product’s model number, would provide a list of online retailers that offer the product for sale, along with information regarding their prices. Other web-based services would allow users to locate local “brick and mortar” retailers that sell certain types of goods (e.g., electronics), but would not provide pricing or availability information of the local retailers for the specific product being sought. However, the ’427 patent describes a web-based method and system for allowing users to find a desired product at a “brick and mortar” store in the user’s geographic area along with ”pricing information, information on how far each retailer is from the search origin, product images and other product information, and promotional information.” In a press release, Local.com explains that the ’427 patent was acquired by the company via its purchase of Krillion, Inc., a location-based shopping data aggregator, in April 2011 for $3.5 million in cash.
According to its website, Local.com is “a leading online local media company [that] enables brick-and mortar businesses to connect with online customers using a variety of digital marketing products.” A recent corporate presentation states that Local.com’s customers include “about 30 million consumers per month looking for products and services locally,” “over 31,000 local merchants wanting to advertise to those consumers,” and “over 100 channel partners that help [Local.com] to reach merchants and consumers.” The presentation also explains that “over half of [Local.com's] traffic is the ‘Soccer Mom’ demographic,” that is “aged between 25-45 with one child or more at home,” “controls significant portion of the household purse strings,” and “typically spends 80% of that money within 20 miles of home.”
According to the company’s 2010 Annual Report, as of March 2011, Local.com owned seven U.S. patents. The ’427 patent brings the company’s total to date to eight U.S. patents.
Satellite communication network; STM Networks, Inc.; U.S. Pat. No. 8,032,073
U.S. Patent No. 8,032,073, issued on October 4, 2011 to STM Networks, Inc. of Irvine, CA, discloses a satellite communication method between a slave station and more than one gateway station.
According to the ’073 patent, satellite communication networks can provide two-way communication (e.g., data, voice, and/or video) between a primary location and a variety of remote locations (e.g., businesses, homes, remote villages or towns), and can be particularly useful where the infrastructure for other types of telecommunication does not exist. However, existing network systems only allow communication between a single ”master” station and the many “slave” stations of the network. The ’073 patent describes a system and method for allowing multiple master stations to communicate with the slave stations of the network via a geosynchronous satellite using time-division multiplexing (TDM) or time-division multiple access (TDMA) communication schemes, thereby providing flexibility under various circumstances.
According to its website, STM Networks is “one of the largest privately held satellite product and communication engineering companies today” with a presence in over 50 countries. A company video describes the company’s main lines of business: turnkey satellite network systems, rural cellular GSM solutions, and managed services and system integration.
According to the USPTO database, the ’073 patent is STM Networks’ first U.S. patent.
Synchronized digital in-flight entertainment system; Thales Avionics, Inc.; U.S. Pat. No. 8,027,560
U.S. Patent No. 8,027,560, issued on September 27, 2011 to Thales Avionics, Inc. of Irvine, CA, discloses a system and method for presenting digital audiovisual signals in an in-flight entertainment system to a large number of video monitors and speakers in a synchronized manner.
According to the ’560 patent, conventional analog technology for transmitting material on an in-flight entertainment (IFE) system can present analog audiovideo signals to the various speakers/screens in the aircraft that are “typically synchronized to within microseconds.” It’s desirable to move to digital technology to take advantage of its improved resolution, but the encoding/decoding involved causes issues with synchronizing the various speakers/screens. The ’560 patent discloses a system and method that uses decoders that correct for the different effects in digital systems that contribute to the non-synchronous displays.
According to its website, Thales Group is a global company in 50 countries and with 68,000 employees, dealing with technologies in aerospace, defense, security, and transportation. The Thales Avionics group in Irvine, touted as “the fastest growing IFE company in the world,” is dedicated to developing IFE systems and is described as being “built on entrepreneurial spirit, hard work and the joy of accomplishment.”
According to the USPTO database, Thales Avionics in Irvine has received three U.S. patents in 2011, including the ’560 patent.
Disinfecting confined spaces using iodine; BioLargo Life Technologies, Inc.; U.S. Pat. No. 8,021,610
U.S. Patent No. 8,021,610, issued on September 20, 2011 to BioLargo Life Technologies, Inc. of Irvine, CA, discloses a process to reduce microbial content in a confined area.
The claims of the ’610 patent are directed to a process for disinfecting confined areas (e.g., vehicle cabs and seats, dishwashers, refrigerators, freezers, and liquid circulation systems) using two or more particulate reagents that react in the presence of water to form molecular iodine. At least one of the particulate reagents has a coating that prevents more than 5% of the reagents to react under exposure to atmospheric moisture for twelve hours. Water is added to the reagents while in the confined area, and the iodine is allowed to “reduce microbial content within the confined area and throughout the enviroment of the confined area.”
The specification of the ’610 patent describes many other applications and configurations for using iodine for reducing microbial activity. For example, the sole figure of the ’610 patent (shown above) is a diaper (for which BioLargo received U.S. Pat. No. 7,867,510 earlier this year) in which particulate reagents can be combined in the presence of water to “generat[e] gaseous molecular iodine within the carrier in sufficient concentration to act as a microbicide.” Other applications described by the ’610 patent include sterilization of surgical instruments and treatment of wastewater and contaminated soil.
According to its website, BioLargo’s CupriDyne™ technology combines “micronutrient salts with liquid from any source to deliver free-iodine on demand, in controlled dosages, in order to balance efficacy of performance with concerns about toxicity.” The company’s first product, “Odor-No-More” is designed for use in the animal health industry (e.g., for animal bedding, cat litter, facilities and equipment wash), and is demonstrated in a YouTube video. The company’s 2010 Annual Report explains that BioLargo is seeking opportunities in the oil and gas industry (to treat wastewater from “fracking”) and in the food processing industry as well.
According to the USPTO database, BioLargo owns five U.S. patents, including the ’610 patent.
Front-end circuit for RF transceiver; RFaxis, Inc.; U.S. Pat. No. 8,019,289
U.S. Patent No. 8,019,289, issued on September 13, 2011 to RFaxis, Inc. of Irvine, CA, discloses a circuit for coupling an antenna to a transceiver for wireless communication systems.
In the context of wireless communications, a radio-frequency (RF) transceiver “encodes the digital data to a baseband signal and modulates the baseband signal with an RF carrier signal,” which is then transmitted by an antenna. When the RF carrier signal is received by another antenna connected to another RF transceiver, “the transceiver down-converts the RF signal, demodulates the baseband signal, and decodes the digital data represented by the baseband signal.” According to the ’289 patent, a conventional RF transceiver typically includes an RF switch structure that connects the antenna either to an output of a power amplifier (when transmitting signals) or to an input of a low noise amplifier (when receiving transmitted signals). Such RF switch structures are intended to “prevent interference during the transition between transmission and reception,” but “[i]nterrelated performance, fabrication, and cost issues have necessitated the fabrication of the RF switch on a different substrate than the substrate of the power amplifier and the low noise amplifier.”
Because the RF switch can be a significant constraint on the design of the transceiver, the ’289 patent discloses a front-end circuit configuration which avoids using such RF switches while providing “sufficient transmitter output and receiver sensitivity for time-domain duplex applications.” By eliminating the RF switches, the front-end circuit disclosed by the ’289 patent can “be fabricated on a single die with common transistor structures.”
According to its website, RFaxis “is a fabless semiconductor company focused on innovative, next-generation RF solutions for the wireless connectivity and celluar mobility markets,” and “is home to the world’s first RF Front-end Integrated Circuit (RFeIC).” The website further explains that the company’s RFeIC architecture integrates the power amplifier, low noise amplifier, and other circuitry into “a true single-chip, single-die, BiCMOS device.” Earlier this year, RFaxis’ “RFX2402 Single-Chip Single-Die Silicon RFeIC“ was named the winning innovative product of the 2011 TechAmerica Orange County High-Tech Innovation Award in the semiconductor category.
The ’289 patent resulted from one of six patent applications that were filed nearly concurrently with one another. RFaxis filed a first patent application on March 26, 2009, and the next day filed five continuation applications that all claimed priority to the first patent application. Generally, applicants file such multiple concurrent applications in instances where there are a large number of claims to be pursued, and the excess claim fees that would otherwise be due are larger than the cost of filing separate applications. Another reason can be to pursue different sets of claims that are directed to patentably distinct inventions, but are based on the same specification. Since a patent application is supposed to only be directed to a single invention, having multiple claim sets directed to patentably distinct inventions can be the basis for the USPTO requiring that claims to all but one of these inventions be removed. These removed claims can then be pursued in one or more separate patent applications.
The ’289 patent is the first of the set of six applications to be granted, and it was allowed in a “first action allowance.” The other four continuations and the first patent application are all still pending at the USPTO. According to the USPTO database, the ’289 patent is RFaxis’ first U.S. patent, and the company was recently issued two more U.S. patents (U.S. Pat. Nos. 8,073,400 and 8,073,401) resulting from two other patent applications.
Anastomosis for treating COPD; Rox Medical, Inc.; U.S. Pat. No. 8,016,782
U.S. Patent No. 8,016,782, issued on September 9, 2011 to Rox Medical, Inc. of San Clemente, CA, discloses a method for providing oxygenated blood to venous circulation.
Chronic obstructive pulmonary disease (COPD), encompassing chronic bronchitis and emphysema, is a common form of lung disease. While smoking is the leading cause of COPD, it can also be caused by exposure to certain gases or fumes, exposure to heavy amounts of secondhand smoke and pollution, and frequent use of cooking fire without adequate ventilation. There is not a cure to COPD, but according to the ’782 patent, the present standard of care is oxygen therapy, by which the patient supplements their breathing with extra oxygen (e.g., from a pressurized gas cylinder). Such sources of oxygen can be cumbersome, and the ’782 patent discloses a method for providing oxygenated blood to the patient’s venous system by creating an end-to-side anastomosis between the a source of the patient’s oxygenated arterial blood (e.g., artery, aorta, left chamber of the heart) and the patient’s Inferior Vena Cava or Superior Vena Cava.
According to its website, Rox Medical is “an early phase medical device company” that has developed a device that “creates a passage between an artery and a vein in the pelvic region which redirects oxygen rich blood back to the lungs of severe COPD patients.” The company’s “Anastomotic Coupler System (ACS)” is currently undergoing clinical trials, and is not currently available in the U.S.
To directly infringe a patented method (under 35 U.S.C. 271(a)), an entity must perform all the steps of the patented method, and for claim drafting strategy, it is important to consider who is actually expected to be performing these various steps. Ideally, if a patentee plans to use its patent to protect its market, the company would prefer to do so by suing its competitors for direct infringement. For example, a claim to a method of making a particular device would be expected to be infringed by competitors making a device similar or identical to the patentee’s device. Also, because it is generally easier to prove direct infringement of claims directed to a device, and such claims are expected to be infringed by a company’s competitors, device claims are preferable for a robust patent portfolio, particularly for medical device companies.
However, the claims of the patent may not be written in a way that the competitor is the entity performing all the steps of the patented method. For example, for methods of using the product, the claims might be written so that the steps are instead performed by the patentee’s customers or potential customers. To assert such a claim, the patentee would have to sue these customers, which is generally not a palatable option.
There are other theories of infringement that can be used to sue competitors using such claims. For inducement of infringement (under 35 U.S.C. 271(b)), a competitor must be shown to have actively induced another entity (e.g., the customer) to directly infringe a patent. For contributory infringement (under 35 U.S.C. 271(c)), the competitor must be shown to have offered to sell, sold, or imported a component that is especially made or adapted for infringing use and that is not suitable for substantial noninfringing use. These other versions of infringement necessarily require that some entity directly infringe the patent. They also include other facts that must be proven beyond the requirements of direct infringement, so they are generally less desirable to assert than direct infringement.
The claims of the ’782 patent are all directed to “a method of providing oxygenated blood to the venous circulation of a patient,” and all of the steps of this method are potentially performed by hospitals and surgeons, presumably Rox Medical’s customers. To sue its competitors for inducement of infringement or contributory infringement, Rox Medical would have to show that direct infringement of the ’782 patent occurred (e.g., by the hospital or surgeon) and that the competitors satisfied the other conditions for these forms of infringement.
According to the USPTO database, Rox Medical has three other U.S. patents, only one of which has device claims that might be directly infringed by a competitor. The company also has other pending U.S. patent applications, hopefully for the company, for pursuing additional claims that would be directly infringed by the company’s competitors.
Laser system with multiple-pass pump beam; Apollo Instruments; U.S. Pat. No. 8,014,433
U.S. Patent No. 8,014,433, issued on September 6, 2011 to Apollo Instruments of Irvine, CA, discloses a laser system with multiple spherical mirrors that pass a pump light beam multiple times between the mirrors.
According to the ’433 patent, the power of a laser beam can be increased by increasing the number of passes of the pump light through the lasing material. However, in existing systems, the number of passes is limited by the size and number of mirrors used to direct the pump light, as well as the complexity of the mechanical system used to support the many mirrors. The ’433 patent discloses a system and method that avoids the problems of other systems to direct the pump light through the lasing material many times by using a pair of optically-coupled imaging systems with non-coincident optical axes.
According to its website, Apollo Instruments manufactures and sells fiber-coupled laser diodes, fiber lasers, and other laser systems that ”press the limit of today’s power and brightness levels together with superior performance.” The website also explains that with the company’s “superior pumping source, fiber lasers delivering more than 300W in a high quality beam (TEM00) have been conveniently realized.”
The ’433 patent provides a lesson in the value of having a patent attorney prepare a patent application and represent the applicant before the USPTO. Apollo had first filed a patent application that one of the inventors prepared back in 2005. The USPTO allows inventors to prepare and file their own application and represent themselves before the USPTO (the Latin phrase is “pro se,” which means “on one’s own behalf”). However, the USPTO does not relax its rules regarding requirements for such applications. Even if it wanted to give a break to such pro se applicants, the USPTO is not permitted to apply the patent laws differently to different groups of applicants. Given the complexity of U.S. patent laws and the potential for destroying the possibility for obtaining patent protection, the aphorism that “a physician who treats himself has a fool for a patient” has a corollary in inventors serving as their own patent attorney/agent.
Upon reviewing Apollo’s first application in 2007, the USPTO found that it did not conform to the various requirements with regard to the information provided and the format in which this information is given. The application was rejected on a whole series of bases, both substantive and formality-based, and the USPTO noted that “applicant is unfamiliar with patent prosecution procedure” and advised him to seek out the services of a registered patent attorney or agent to prosecute the application. While the USPTO cannot aid in selecting a particular attorney/agent, it does provide a list on its website: www.uspto.gov.
After receiving this rejection, Apollo Instruments wisely retained a patent attorney, who was able to cure the format issues raised by the USPTO, but he was unable to convince the examiner to withdraw the substantive rejections. Apollo appeared to be interested in appealing the examiner’s decision to the Board of Patent Appeals and Interferences, but instead decided to file a continuation-in-part application in 2008, which resulted in the ’433 patent.
According to the USPTO database, Apollo Instruments owns seven U.S. patents, including the ’433 patent.
Data parsing security system; Security First Corp.; U.S. Pat. No. 8,009,830
U.S. Patent No. 8,009,830, issued on August 30, 2011 to Security First Corp. of Rancho Santa Margarita, CA, discloses a cryptographic system for computer security applications.
According to the ’830 patent, existing cryptographic systems for computer data are potentially more secure than login/password systems, but they are still susceptable to being compromised. For example, in public-key systems, a public key is known to everyone and a private key is issued only to the individual user; one key is used for encoding and the other for decoding. The security of such systems is only maintained as long as the private key remains private. However, a user might store the private key on a system where the only protection is a login/password, so the actual security is only as good as the login/password security (even if the login/password is biometric data). In other situations, the user might save the private key on a computer that is subject to periodic archiving or backup, thus creating multiple copies of the private key, increasing the probability of disclosure.
The ’830 patent discloses a cryptographic security system that is more user-independent, and can be used to support mobile applications. The system includes parsing, splitting, or separating the data to be secured, either before encryption or after, and both the parsing and the encryption can be repeated multiple times. The parsed and encrypted portions are transmitted separately to the remote locations, where the data can be restored once they are received.
According to its website, Security First’s “SecureParser® based solutions provide a homogeneous way to protect and control access to all data, whether at rest or in motion across heterogeneous systems.” One area in which Security First’s technology can be used is in cloud computing. The website goes on to explain that its patented technique of using cryptographic splitting “fundamentally transforms security by making data protection, integrity, and availability inherent in the data itself for as long as it exists,” and “provides a transformation of the data that is completely transparent to the user and user applications, and can be seamlessly applied throughout the enterprise.”
Recently, Security First and IBM announced a joint development agreement under which the two companies “will combine Security First’s patented cryptographic data-splitting technology with the highly parallelized hardware acceleration capabilities of IBM’s wire speed processor technology.” The agreement is “aimed at delivering increased performance, security, and high data availability to storage and cloud-based computing customers.”
According to the USPTO database, Security First owns six U.S. patents, including the ’830 patent.
Connector for high-definition multimedia systems; Luxi Electronics Corp.; U.S. Pat. No. 8,002,572
U.S. Patent No. 8,002,572, issued on August 23, 2011 to Luxi Electronics Corp. of Irvine, CA, discloses an electrical connector for high definition multimedia interface (HDMI) systems.
According to the ’572 patent, installation of HDMI cables with existing male cable connectors or plugs requires separating the many cable wires (e.g., 19) from one another and preparing each one for soldering or crimping to the corresponding terminal of the cable connector. This labor-intensive installation results in reduced productivity and reliability. Also, HDMI cables are relatively thick, so the forces and torques on an installed plug by its cable can be substantial, causing existing solder-free HDMI plugs to be prone to loosening over time from the female connector to which they are mated. The ’572 patent discloses an HDMI cable connector with strain-relief tabs and wire holder halves that compress and non-reversibly lock together onto the cable without adhesive, so that its termination pins make electrical contact with the cable wires.
According to its website, Luxi Electronics Corp. is “a manufacturer of audio video products for consumer and professional markets.” The company’s website provides a white paper entitled “The Art (and Science) of HDMI Cables,” which explains the benefits of its DIY™ cable connectors, which appear to conform to the description in the ’572 patent. According to the USPTO database, th e’572 is Luxi Electronics’ first U.S. patent.
Each of the independent claims of the ’572 patent (see, e.g., Claim 3, above) include a relatively long list of features, each of which must be in an accused device in order for the device to be infringing. For example, to infringe Claim 3, a competitor’s product must have the top shell, bottom shell, insulating connector core, set of top and bottom terminal pins, top wire holder, and bottom wire holder, all with the attributes as recited in Claim 3. If the accused product omits even just one of these features or attributes, then the product would not infringe Claim 3.
For this reason, generally, a claim with such a large number of features or attributes (i.e., a narrower claim) is thought to be less desirable than a claim with fewer features or attributes (i.e., a broader claim). After all, to avoid infringement, all the competitor needs to do is to omit just one of the recited features in its product.
However, narrow claims can be an important component in a company’s overall patent portfolio. For example, even a narrow claim that covers the competitor’s product can provide value by forcing the competitor to redesign its product and to retool its manufacturing process. Also, if a narrow claim covers an industry standard, it may not be practical for competitors to sell or use non-infringing products. A narrower claim can also be less susecptible to a challenge of invalidity. Practically speaking, in some cases, while broader claims might be preferable, the crowdedness of the prior art makes such broader claims more difficult to get allowed by the USPTO, so an applicant may first seek out the “lower hanging fruit” of a narrower claim, opting to continue the pursuit of the broader claim in a continuation application.
Since the claims as originally filed had a relatively narrow scope (being fairly similar to the issued claims of the ’572 patent), presumably Luxi Electronics was aware of the considerations regarding narrowness. The company has filed a continuation application (U.S. Pat. Appl. Publ. No. 2011-0256756A1) to pursue additional claims, some of which currently have fewer features than do the independent claims of the ’572 patent.
Artificial nails with application tabs; Pacific World Corp.; U.S. Pat. No. 7,997,283
U.S. Patent No. 7,997,283, issued on August 16, 2011 to Pacific World Corp. of Lake Forest, CA, discloses a pre-formed artificial nail with an application tab to facilitate placement onto the user’s natural nail.
According to the ’283 patent, preformed, artificial fingernails can be difficult to position correctly. It can be difficult to grasp the artificial nail, especially for shorter artificial nails (e.g., nail tips). Also, there is limited time to position the artificial nail before the adhesive begins to set. The ’283 patent discloses an artificial nail with an application tab configured to be easily grasped and easily severed from the artificial nail once it is in the desired position.
Pacific World markets Nail Duets™ artificial nails that they have described as being “constructed in accordance with aspects of the claims” of the ’283 patent.
I thought it was interesting that before the examiner even reviewed the patent application, Pacific World submitted physical samples of its Nail Duets™ artificial nails, as well as physical samples of a competitor’s nails. Historically, it used to be required that a patent application include a working model of the invention, but under current law, such models are rarely submitted unless necessary to demonstrate patentability. A week after submitting the samples, Pacific World’s patent attorney had a phone conversation with the examiner, during which they discussed a 2004 reference that Pacific World provided to the examiner under its duty to disclose information relevant to patentability.
Unfortunately, despite the phone call and despite having the samples to inspect, the examiner rejected all the claims, citing the 2004 publication as the primary reference that made the invention unpatentable in her view. Pacific World’s patent attorney made two subsequent attempts at convincing the examiner otherwise by submitting claim amendments and rebuttal arguments, but her attempts were unsuccessful.
In their third attempt, one of the inventors joined with her patent attorney to visit the patent examiner at the USPTO in Alexandria, VA to demonstrate and discuss the invention. This personal interview was successful in convincing the examiner that the invention was not merely a rearrangement of parts that were found in the prior art, but was the result of the inventors’ realization that a previously-unrecognized problem existed and that the invention was the result of their development of a remedy to this problem. The ’283 patent subsequently issued.
The ’283 patent is a good example of the power of conducting an in-person interview with the examiner to explain the invention and its differences from the prior art. I find that it’s often easier to be persuasive in a personal interview, rather than over the phone or through a written argument. It is also true that the discussion during an interview, whether in-person or by phone, can have a measure of informal give-and-take between the applicant’s patent attorney and the examiner, with generally only a brief summary of the conversation being placed on the record. Contrast this with a written response in which everything is made of record (generally, less in the record is good for the patentee since everything on the record could be used to narrow the interpretation of the claims if they are ever asserted against a potential infringer). There’s also the added benefit of presenting a human face for the examiner to associate with the application, especially if the inventor comes along, as occurred for the ’283 patent.
Pacific World is now pursuing additional claims in a continuation application that claims priority to the ’283 patent. After multiple rejections, they recently conducted another in-person interview with the examiner, providing samples of the prior art, again attempting to convince the examiner. We’ll have to wait and see if they are successful.
Piezoresistive acceleration sensor; Endevco Corp.; U.S. Pat. No. 7,987,716
U.S. Patent No. 7,987,716, issued on August 2, 2011 to Endevco Corporation of San Juan Capistrano, CA, discloses a piezoresistive MEMS acceleration sensor.
Piezoresistive materials respond to applied mechanical stress by changing their resistivity. Such materials can be used to create sensors of acceleration, pressure, or other phenomena by configuring the piezoresistive material to be stressed in response to the phenomenon. For example, in a microelectromechanical system (MEMS), the piezoresistive material can be coupled to a mass that moves when the system undergoes acceleration, thereby applying a stress to the piezoresistive material. Knowing the amount of resistive change for a given amount of stress, the acceleration can be measured by monitoring the resistance of the material.
The ’716 patent discloses an acceleration sensor on a semiconductor substrate (e.g., Si or SiC) having two unbalanced and suspended masses that are flexibly coupled together and that are coupled to a quartet of piezoresistive elements in such a way as to measure acceleration-produced rotation of the masses about axes of the piezoresitive elements.
According to its website, Endevco (now called “Meggitt Sensing Systems”) is a subsidiary of Meggitt PLC, a British-based engineering company, and is “the world’s leading designer and manufacturer of dynamic instrumentation for vibration, shock and pressure measurements.” Their sensors have been used for “impact monitoring of NASA’s space shuttle, automotive crash and crush safety testing, in-flight gas turbine vibration monitoring, and activity monitoring in pacemakers.” The company website includes a number of videos which show its acceleration sensors in action.
According to the USPTO database, Endevco has been granted 22 U.S. patents, with the ’716 patent being the company’s first in 2011.
Air gap cover; Evriholder Products, Inc.; U.S. Design Pat. No. D642,243
U.S. Design Patent No. D642,243, issued on July 26, 2011 to Evriholder Products, Inc. of Anaheim, CA, discloses a design for a cover that fits over a sink’s air gap.
The air gap of a kitchen sink prevents potentially dirty water from backflowing into and contaminating the clean water line and the dishwasher. They often appear as a cylindrical protrusion near the back of the sink. According to the company’s website, Evriholder markets the SinkSation™ air gap cover which “fits over the air gap cover on your kitchen sink to hold sponges, soap, and flowers” and “turns otherwise ugly plumbing into functional storage space.” As seen above, the photos from Evriholder’s website show that the SinkSation™ air gap cover appears to conform to the design of the ’243 patent.
Evriholder Products is “a family owned business founded in 1995 … to manufacture and market a small line of tie and belt organizers” and which grew to develop a wide range of products for kitchen, bath, cleaning, and storage that are licensed to many different household-familiar brands. The company’s website states that it “develops 30 to 50 new products a year” and highlights examples such as the goldfish-shaped goldfish cracker container for Pepperidge Farm and sandwich crust cutters that divide sandwiches into kid-fun shapes. In an online interview earlier this year, Evriholder’s CEO, Gary Seehoff, describes how the company got started and describes some of the aspects of distribution, manufacturing, and other issues of interest to inventors.
According to the USPTO database, Evriholder owns 27 U.S. patents to date, all of which are design patents, and 11 of which were received in 2011.
Modular virtual city game; Adrenalin Gaming, Inc.; U.S. Pat. 7,980,913
U.S. Patent No. 7,980,913, issued on July 19, 2011 to Adrenalin Gaming, Inc., discloses a game system that simulates the operations of a city.
The ’013 patent discloses an interactive game designed to teach and entertain children about “the responsibilities that face adults in everyday life” and to “enable[] children, at a young age, to appreciate and respect the day-to-day efforts of their parents.” The game is a modular system for constructing a virtual city using a plurality of connectable members that snap together and form the city foundation, upon which the buildings are affixed and linked to the central controller. The city can include people, vehicles, and various buildings (e.g., homes, businesses, bank, city hall, firestation). The system includes a controller (e.g., in city hall) with one or more processors to control various features of the city (e.g., traffic lights, emergency conditions such as smoke indicating a fire).
According to its website, Adrenalin Gaming was founded in 2001 and is directed towards “the conceptual development of various slot machines and table games.” The instructional children’s game disclosed by the ’913 patent seems to be quite different from the company’s focus on gambling games, but according to the company’s Facebook page, Adrenalin Gaming is planning on introducing a line of family and adult board games in 2012.
The USPTO database shows that Adrenalin Gaming has five U.S. patents, including the ’913 patent.
Stem cell growth medium, California Stem Cell, Inc.; U.S. Pat. No. 7,977,096
U.S Patent No. 7,977,096, issued on July 12, 2011 to California Stem Cell, Inc. of Irvine, CA, discloses a growth medium for stem cells.
Stem cells are unspecified cells that are capable of dividing and renewing themselves over long periods of time. In addition, stem cells can undergo differentiation whereby they are used by an adult organism to generate replacement cells for the specialized cells of heart, lung, nerve, and other tissues lost through normal wear and tear, injury, or disease (such specialized cells do not normally reproduce themselves). During development of the organism, embryonic stem cells undergo differentiation to serve as the basis for the organism’s specialized tissues.
Stem cells are seen as having significant promise in the treatment of numerous maladies due to their unique regenerative abilities. According to the ’096 patent, growth of stem cells is typically performed in a base medium supplemented with serum or serum replacement. Such a media formulation is intended to be sufficient to sustain conditions for cell survival or proliferation for a desired period of time without the differentiation that converts the stem cells into cells of specialized tissue. The ’096 patent describes a media formulation for culturing human embryonic stem cells without substantial differentiation.
According to its website, California Stem Cell, Inc. (CSC) is a privately held company, founded in 2005, “to catalyze the efficient development of human therapies based on human embryonic stem cells” by producing and supplying human stem cell lines using processes that are “scalable, efficient and highly reproducible … at a fraction of the cost of conventional cells manufacturing.” The website includes numerous videos of CSC’s Board Chairman, Dr. Hans Keirstead, describing the importance of various milestones in the development of stem-cell-based therapies.
Last year, CSC submitted an Investigational New Drug application to the Food and Drug Administration (FDA) for approval of a Phase I clinical study for a stem-cell-based therapy of spinal muscular atrophy (SMA), and the company is working on providing additional animal study results to the FDA to further ensure safety.
The ’096 patent is CSC’s first U.S. patent, according to the USPTO database.
Motorcycle securing system; Moto Cinch, Inc.; U.S. Pat. No. 7,976,254
U.S. Patent No. 7,976,254, issued on July 12, 2011 to Moto Cinch, Inc. of Newport Beach, CA, discloses an anchoring system for motocycles or all-terrain vehicles to a flatbed for transport.
The ’254 patent describes that tie-down straps are often ineffective and time-consuming for securing motorcycles and all-terrain vehicles for transportation on a flatbed. The ’254 patent discloses an assembly that when secured to each side of the vehicle, compresses the shock absorber and inhibits the vehicle’s movement during transport.
According to the company’s website, the “Moto Cinch” is a patented cam action system” that avoids “the headaches associated with traditional tie-downs and the amount of time it takes to carefully secure your motorcycle while eliminating stresses on forks, seals and springs that could affect performance.” A video on the website shows how the Moto Cinch operates by attaching to the bike’s footpegs and pulls the bike down into a secured position using a cammed lever.
The ’254 patent is the company’s first U.S. patent, according to the USPTO database.
Padlock retail display packaging; Hampton Products Int’l Corp.; U.S. Pat. No. 7,971,714
U.S. Patent No. 7,971,714, issued on July 5, 2011 to Hampton Products Int’l Corp. of Foothill Ranch, CA, discloses a package for displaying a padlock for retail sale.
Conventional “clam shell” packaging can be difficult to open, since it can be tough to cut the clear, pre-formed plastic and to pull the two halves apart. In fact, according to the ’714 patent, over 6,000 Americans per year visit the emergency room due to “clam shell” opening-related injuries. In addition, such “clam shells” don’t generally permit the consumer to touch the product sealed within prior to purchase, thereby making it harder for the consumer to determine if the product is to their liking. (I admit that I wouldn’t have thought that touching a padlock is an important consideration in a consumer’s decision to purchase.)
The ’714 patent discloses a package having a ridged card that mates with a back plate and has an aperture which contains the padlock. The package provides access for the consumer to touch the padlock without removing it from the package, and that is easier to open to remove the padlock. According to its website, Hampton Products manufactures “a wide range of residential hardware, lighting and travel security products” with “innovative, high quality designs.” So far in 2011, Hampton Products has received three U.S. patents, including the ’714 patent.
The USPTO issued the ’714 patent rather quickly, about 15 months after the patent application was filed. A review of the application’s file history shows that the patent attorney conducted an interview with the examiner in February 2011, and the application was allowed soon afterwards in a “first action allowance.” I find that such interviews, either by telephone or in person, are a helpful tool for getting quick allowances (as appears to have occurred for the ’714 patent) and keeping costs as low as possible. Instead of throwing paper back and forth between me and the USPTO, such interviews can cut to the chase, with the examiner explaining why he/she thinks the claims are not patentable, and I can refute these arguments, explaining the differences between the invention and the cited prior art references.
In some instances, particularly for complicated technologies, I find it helpful to bring the inventor along with me for the interview. I have the inventor explain the details of the technology, and I then explain how the features the inventor described are manifested in the claim language and are not shown in the prior art. Examiners are accustomed to talking with patent attorneys, but they are generally impressed when they get a chance to meet with the inventor; I think because it signals to the examiner that the invention is important (at least important enough for the inventor to come to discuss it). Also, having the inventor participate in the interview puts a human face to the application. At the same time, most examiners will not look kindly on an inventor that just pontificates, rambles, is belligerent, or goes off-topic. That is why I spend time with the inventor prior to the interview to explain exactly what they should discuss and how to discuss it. I also want to ensure that they are mindful of the hints that I give them during the interview (e.g., kicks under the table) when I think they have gone off-track. When done well, I have seen interviews conducted with the inventor turn a dubious examiner into a convert.
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