Outdoors IP

Monday, December 2, 2019

Audi's Snow and Ice Obstacle Avoidance Patent Application Gets Stuck atthe USPTO

The IP Bloggers December 02, 2019

In order to enjoy outdoor activities, sometimes you need to drive your vehicle through some difficult terrain. And while driver-less cars are still not quite here, Audi has developed some driver assistance tools to help navigate the vehicle by determining a friction coefficient of a surface navigable area to maneuver the vehicle away from non-navigable areas.  The non-navigable areas address not only road friction, but also obstacles that may be present on the road. Audi filed a US patent application on the concept in 2015, but had to face numerous “obviousness” rejections. An appeal was eventually taken and the decision was just issued by the USPTO Patent Trial and Appeal Board (PTAB).  

Audi claimed that their approach was inventive because it was able to exclude portion of the road that the vehicle was allowed to navigate using its unique approach. The appeals judges disagreed, and pointed out one of the main problems with Audi’s position was that the Audi did not explain why someone could not simply follow the combination of references set forth by the Examiner.  From the appeal decision, the PTAB explains:

The ordinarily skilled artisan, being “a person of ordinary creativity, not an automaton,” would be able to fit the teachings of the cited references together like pieces of a puzzle to predictably result in a vehicle system determining the friction coefficient for a road surface to thereby steer the vehicle away from a detected insurmountable obstacle, as well as to maneuver the vehicle in conformance with the calculated coefficient for the navigable road surface. Id. at 420–21. Because Appellant has not demonstrated that the Examiner’s proffered combination would have been “uniquely challenging or difficult for one of ordinary skill in the art,” we agree with the Examiner that the proposed modification would have been within the purview of the ordinarily skilled artisan. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).

Unfortunately it is common for examiners to find the various claimed elements in isolation, and then allege it would be obvious to combine them and reach the claimed solution. One way to rebut such arguments is for the patent application to explain some unique challenges addressed by the claimed combination, and to explain why one skilled in the art would have had difficulty following prior approaches. While Audi’s appeal brief tried to point out that the combination would not actually lead to the claimed elements, it did not specifically point out any challenge in doing so.  Once the court found the cited references did actually possess each of the claimed elements, it was then easy for them to reach the final conclusion of obviousness. 

Makani : Utilizing Patent Filings As Strategy

The IP Bloggers September 05, 2019

Makani is developing some very interesting technology - power generating kites. They are also utilizing patent filings as an integral part of their strategy to protect and grow their business. They were recently awarded US 10,379,546, which is part of a family of patent filings claiming priority back to a provision patent application (Ser. No. 62/260,246) filed Nov. 25, 2015. Makani is taking advantage of the continuation practice in the US, which is a key tool for early developers of technology to maximize their intellectual property position.

The ‘546 application claims an interesting control strategy for asynchronous flight pattern optimization of multiple kites coupled to a common ground station.  The control system generates a respective flight path for each of the kites operating in crosswind flight, where each kite generates electrical energy over time in a periodic profile out of phase with respect to the other kite. 

FIG. 3B, reproduced below, from the patent application illustrates an example of a kite transitioning from hover flight to crosswind flight. As explained in the patent application, the asynchronous flight pattern may be determined such that the power profile of each kite is out of phase with respect to the power profile of the other kite so that the peak cumulative power flow into the ground power unit may be decreased, and the cumulative power profile may be substantially regular.

Whether we will see power generation farms using these amazing kites is still “up in the air”, but it is great to see such an innovative company taking advantage of strategic patent filings.  

Strategy Read more

Wednesday, August 28, 2019

Why do words you think are clear become unclear in patent law?

The IP Bloggers August 28, 2019

Engineers understand that words have meanings. But as engineers, seeing the world through eyes that appreciate order and use context to derive clarity of meaning, the word games played by patent examiners can be frustrating.

Colt recently was forced to appeal examiner rejections based on word games that occur with surprising frequency at the US Patent Office. One of Colt’s patent applications was for systems and methods of providing information between one or more different battlefield participants. Specifically, the invention provided a sensor pack coupled to the at least one rifle accessory carrier that included a first sensor for determining a bearing of the rifle, a second sensor for determining an acceleration of the rifle and a rate gyroscope. 

The patent examiner used a classic word-game approach where they take words out of context, re-interpret them using generic definitions of the terms to means something much more generic than in reality, and then reject the application using that overly-broad interpretation. Here, the patent examiner asserted that the prior art reference having an inclinometer was capable of use for determining a bearing of a rifle. While this is impractical from an engineering point of view, the examiner reasoned that "a bearing sensor is something that determines a direction[,] and an inclinometer broadly and reasonably determines a direction." 

Of course this was nonsense, but Colt was forced through a years-long appeal. Colt argued that "a bearing sensor must measure a direction. This is DIFFERENT than an inclination. In short, teaching an inclinometer does not teach the claimed bearing sensor." Colt cited Merriam-Webster dictionary that defines an inclinometer as 'an instrument for indicating the inclination to the horizontal of an axis' and defines a bearing as 'the situation or horizontal direction of one point with respect to another or to the compass" (citing https://www.merriam-webster.com/dictionary). This was on top of the situation where Colt’s own application made clear that the example of its sensor 220 was merely one capable of determining a bearing of firearm such as a compass or part of a GPS device.  At no time did Colt argue that their bearing sensor was so broad as to include an inclinometer. 

The Board summarized the situation as follows:

Even assuming, arguendo, that an inclinometer is something that determines a direction in a very broad sense (i.e., inclination being a direction in a vertical plane), we are not convinced that one of ordinary skill in the art would consider Lupher's inclinometer 750 a sensor for determining a bearing (i.e., a direction in a horizontal plane, such as determined by a compass). In other words, finding a sensor that simply determines "a direction" is not sufficient; the claim does not recite merely a "direction sensor." Moreover, the Examiner does not point to any evidence of record to support the position that Lupher's inclinometer 750 and/or other motion detection circuitry 756 would be capable of determining a bearing. See Final Act. 3; Ans. 9.

In short, the Examiner's interpretation of the disputed "sensor for determining a bearing," recited in claims 12 and 16, as reading on Lupher's inclinometer 750 and/or other motion detection circuitry 756 is unreasonably broad, such that the rejection based upon this claim construction is in error. In particular, the Examiner has not established a finding supported by a preponderance of the evidence that Lupher, as relied upon in the rejection presented, discloses this disputed limitation.

While Colt was successful on this argument, it took great effort to persist and Colt ultimately lost their appeal on other grounds - as the examiner only needs to win one argument to sustain a rejection, even if they have numerous other improper rejection. The case was Serial No. 14/998,214.

Cobalt Snatches Defeat From the Jaws of Victory in Boat Step Patent Case

The IP Bloggers June 04, 2019

Companies use patents to protect their innovative designs because those designs take significant investment and time, and provide a competitive advantage and differentiator in the marketplace. However, making sure that the patent actually covers the concept and easy “design arounds” is where the rubber hits the road. 

This issue is illustrated in the running dispute between Sea Ray (Brunswick) and Cobalt Boats. The patent (US 8,375,880) relates to a boat step (see FIG. 3 from the patent reproduced below).

The patent required rotation of the step of 180 Degrees. The Sea Ray product only rotated slightly less that that.  From the Appeal Court’s opinion, we learn this as follows:

Under our construction of the “180 degrees” limitation, Brunswick’s swim step literally infringes only if it is capable of rotating at least 180 degrees. It is undisputed that Brunswick’s accused swim step is not capable of rotating 180 degrees. Uncontroverted testimony at trial established that the maximum rotation of Brunswick’s swim step is be-tween 172 and 179 degrees and that the hinges on the swim step have a “very rigid stop” that prevents any rotation beyond that, J.A. 2887. Cobalt’s own expert testified that he measured the amount of rotation of the accused swim step and determined that it was “within a couple tenths of a de-gree of 177.” JA 2441.

Below is a picture of a Sea Ray step from Boattest.com, which seems to be the product at issue in this case: 

While Cobalt originally won the infringement trial, the Court of Appeals reversed the decision and found no infringement. While the evidence showed the alleged infringing product rotated around 177 degrees, that was not 180 as required by the patent. The court specifically noted that the patent owner did not use the phrase “about 180 degrees” which would have provided some wiggle room.

Companies need to be careful in ensuring that their patent counsel is integrated into their business and understands the competitive market place so that patent strategies can be aligned with the company’s direction. 

Diversity in Patent Drafting

The IP Bloggers May 27, 2019

My Thanksgivings growing up were potluck-style, my family bringing traditional Persian foods, my aunt’s family bringing traditional Filipino foods, and everyone doing their best imitation on traditional Thanksgiving dishes. I’ve found that using a similar mindset can greatly improve patent drafting and prosecution. Unlike a more traditional patent law firm model where applications in a specific field are drafted by an individual who only works in that field, I’ve been exposed to different approaches with patent technology specialists having diverse backgrounds working with experienced attorneys who practice in a wide range of technologies.  

Why can this be advantageous?

Patent drafting inevitably requires some amount of learning. Inventions are, by definition, new and anyone other than the inventors is not an expert. Traditional firms might think it is beneficial to assign these inventions only to attorneys and/or agents considered experts in a particular field that seems closest to the new invention. However, they bring their own preconceived notions and experiences in a narrow field which may result in a tunnel-view of the problem and technical solution of the invention. When I work with a team having diverse backgrounds to prepare a new patent application, past experiences are used to deepen and broaden the scope of an invention and the scope of the description, thereby setting up the application to enable a diverse range of arguments in support of patentability. Interdisciplinary review ensures that the traditional aspects of the invention are described while strengthening the patent application as different eyes with different backgrounds learn the invention and provide their own spin.

From a legal standpoint, USPTO guidelines are continuously changing, further requiring attorneys and agents to, again, learn and adapt. My experience working in a collaborative team-based environment helps understand these changes from different points of view. For example, by being included in monthly continued legal learning events which include analysis of recent cases, I can get a better feel for the direction the USPTO is going and then adapt drafting strategies today for the USPTO guidelines changes of tomorrow.

The structure and strategy of a collaborative approach enables technical team members and legal team members to maximize their individual skills and the resulting patent application is more of a melting pot of these ideas due to the collaborative approach.  Collaboration occurs not only during the searching, evaluation  and drafting phases, but is also carried through during prosecution affording not only more robust patent applications with a smorgasbord of concepts with varying scope, but better ideas for developing a range of options to respond to Office action rejections by the USPTO. Inclusion of these types of diverse strategies in each patent application increases a client’s stronghold around technology, and builds a stronger and higher quality patent portfolio.

Controversy in the World of High End Bikinis

The IP Bloggers April 22, 2019

The small, independent retailer taking on a global corporation is often portrayed as a feel-good, David vs. Goliath theme in news reports and movies alike.  Hence, the story of Kiini versus Victoria’s Secret may spark an automatic sense of favor towards the underdog.  After all, the bikini company, Kiini, was formed by a young entrepreneur who, at the time, was bouncing between jobs and struggling to find her career path, ultimately finding her niche in the high-end, luxury market.  Fortunately, she was well-advised to seek copyright protection for her product, a crocheted bikini.  Not long after the launch party for the Kiini bikini, the bikini soared in popularity, spurring various alleged knockoffs.  Most notably, Victoria’s Secret began selling a bikini that was suspiciously similar to the Kiini bikini, the Kiini version shown on the left below and the Victoria’s Secret set on the right:

Givner, Ariel. “Kiini, Victoria’s Secret Settle Swimsuit Infringement Lawsuit”. Photograph: http://www.thefashionlaw.com/home/kiini-victorias-secret-settle-swimsuit-infringement-lawsuit

Kiini proceeded to sue Victoria’s secret for copyright infringement as well as claiming trade dress protection. According to the Lanham Act, trade dress protection is obtained without formal registration with the USPTO, stating that:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which

(A) is likely to cause confusion, or to cause mistake, or to deceive [...] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act.

Ultimately, Victoria’s Secret pulled the bikini line and settled with Kiini.  Kiini continues to produce swimwear priced at upwards of $280 per set.  

In an interesting twist, however, it has come to light in a New York Times article, that the founder of Kiini bikinis ultimately derived her idea for her distinctive bikini from a woman in Brazil, selling her hand-made bikini sets to tourists on the beaches of Trancoso. She has made her living selling these bikinis since 1998 and is known in the area as the “bikini lady”. Her bikini top is shown below on the left and the Kiini top is shown on the right. 

Jens Mortensen for the New York Times; https://www.nytimes.com/2018/12/20/business/kiini-bikini-lawsuit-ipek-irgit-solange-ferrarini.html?searchResultPosition=3

These revelations emerged after Kiini’s lawyers sent a cease and desist letter to Neiman Marcus, who sells a crocheted swimsuit under the Platinum brand. After some sleuthing and some inside information from a disgruntled former colleague of Kiini’s founder, the woman in Brazil, Solange Ferrarini, was located and a deal was struck that compensates her with an annual fee and includes her name in the swimwear branding.

After determining that the bikini that the founder of Kiini used as a prototype was indeed a bikini bought from Ms. Ferrarini, based on habit of writing her name along the elastic of each bikini she crochets, the tables were turned.  Kiini and Kiini’s founder were sued on behalf of Ms. Ferrari, for unfair business practices.  Kiini withdrew its case against Neiman Marcus and as of the writing of the New York Times articles, the case against Kiini is ongoing.  

Ultimately, Kiini had a major, milestone moment in driving Victoria’s Secret to come to a settlement but it will be interesting to see how justice is served when it turns out David is an imposter.  

Prior Art Searching: Reviewing the Landscape

The IP Bloggers April 10, 2019

In this blog post series, you have learned a litany of techniques for conducting an effective and efficient preliminary search of the prior art. In this final post, you will see how to take a step back and conduct an assessment of the prior art landscape, which may ultimately prove crucial to the initial stages of brainstorming. However, in contrast to the prior art searching described in the last few posts, landscape reviews are not focused on individual publications. Rather, they contextualize larger datasets composed of several hundred, or thousand, publications.

There are several dimensions by which you may gain a broad understanding of the prior art landscape pertaining to your invention, such as publication trends over time, or applicants, jurisdictions, CPC subclasses, etc. with the most publications.  Due to the particular utility of the interface provided by The Lens patent search engine in regards to landscape reviews, all examples in this post will derive from there.

After providing The Lens with the original search query from the previous posts in this series, (electric) (unicycle), you can utilize the dropdown tabs on the left side of the results page to better understand the larger trends.

As a first example, clicking on the “Applicants” tab reveals the top ten most prolific applicants in the dataset, along with the total number of publications for each applicant. In this case, two companies, Google and Waymo, dominate the landscape, having published 381 (~30%) of the 1273 publications found.

As a second example, clicking on the “Jurisdictions” tab will similarly bring up the top jurisdictions. The US overwhelmingly dominates in this example, where 916 (~72%) of the 1273 publications found were published.

As a third example, on the right side of the results page, a plot titled “Publications by Year” is automatically generated, where you may view publication trends over time. Hovering over a given data point will generate an inset with further information (as shown below for the year 2017).

Because of the drastic increase in filed patent applications in recent years, it is often more useful to restrict results to the last few years. This also allows you to determine which companies are actively pursuing patents. To restrict the publication date to the last ten years, select the “Date Range” tab, and fill in the appropriate fields.

Filtering subsets of results by CPC subclass can further help you see which inventions are being developed by which companies, or what space the most recent publications cover.  For example, selecting “Google Inc” from the “Applicants” tab will return those 242 publications filed by Google.

Then by clicking on the “Classifications” tab, you can view the top CPC subclasses for the results.  A plurality of publications (83) filed by Google are classified under G05D1/0088.

By hovering over a CPC subclass of interest, a yellow info icon will appear (as shown above, to the right of G05D1/0088).  Selecting this will generate an inset with information concerning the given CPC subclass.  In this case, you can determine that G05D1/088 is directed to inventions using artificial intelligence in automatic navigation systems.

Finally, for pursuing more extensive, tailored analyses, an “Export Results” option is provided near the top of the results page.

One last word of caution: there are numerous technical and legal pitfalls which fall outside of the scope of this blog post series and are left for an experienced attorney or agent.  These search techniques are merely provided to facilitate the brainstorming and preparation of your disclosure.  Always remember to rely on your legal counsel for the last word on substantive reviews of the prior art.