Invention Times
April 2013
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/ LETTER FROM THE
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/ PATENT TROLLS
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/ LEGAL CORNER
VICE PRESIDENT
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/ ENGINNERING CORNER,
ISSUED PATENTS
LETTER FROM THE VICE PRESIDENT
Welcome to Patently Brilliant!
Along with the new changes in patent law that went into effect in March,
InventSAI has rebranded to Patently Brilliant to better position itself for
the new law moving forward. The driving force behind the change was
regarding the SAI in InventSAI that stands for “Small Entity American Inventors.”
Neil Montgomery
Vice President of
Sales & Marketing
Small Entity previously represented our core customer base, and was a
term used by the U.S. Patent & Trademark Office to provide discounts to
individual inventors and small companies. The change in patent law has
created a new type of classification called “Micro Entity” inventors that more
accurately reflect the majority of inventors that contact us looking for help.
With many of our clients residing outside of the United States and
plans for international expansion, the name InventSAI we felt was
becoming outdated, and would cause too much confusion. We feel the
Patently Brilliant name capitalizes on our strength of having in-house,
licensed patent professionals performing work on our clients’ inventions.
In addition to this important change, we have added and improved a lot of
features on the ForSalebyInventor.com website.
We have
upgraded our software and backend database that improves the
overall look and feel of the products and websites as well as allows
us to more efficiently communicate with our industry connections.
As a result of these enhancements, we have improved our success
rate at securing licensing agreements for our clients.
Thanks for
reading, and we appreciate the opportunity to serve you and your invention.
Best regards,
Neil Montgomery
Montgomery IP Associates
VP Sales & Marketing
WWW.MONTGOMERYIP.COM
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PATENT TROLLS & PRIVATEERING
By Robert E. Montgomery, President
Although it is the mission of Montgomery Patent & Design to keep their inventor client out
of court, the so-called “Patent Trolls” are everywhere. In 2012, 56% of the patent lawsuits
were directly linked to the Patent Trolls, also known in more polite circles as
“Non-Practicing Entities.”
So what are Patent Trolls? They are similar to the ugly troll characters in children stories
that live under bridges and threaten all who dare to cross. The equally ugly Patent Trolls are
companies who own patents not to produce products, but strictly for the purpose of extorting
money from companies that actually make and sell products.
The Patent Trolls buy patents from companies that are going out of business, or from
companies that have decided not to pursue further product development. Instead of using
the patents to make something worthwhile, they use the legal system to force dubious
payment demands from productive companies. The practice is seen by many for what it
really is - extortion.
The practice of trolling first reared its ugly head in the early 1990s. A famous
1994 industrial film entitled “The Patents Video” warned of trolls lurking in the
mossy undergrowth looking for patent licensing revenue from their
dubious claims. Later, at the turn of the millennium, a lawyer with the
micro-chip maker Intel popularized the “Patent Troll” term. He was so
frustrated with low merit patent infringement suits, totaling $15-billion, by
companies that never attempted to bring a single microchip to market. The
scheme was to make it less expensive for legitimate companies just to pay off
the Trolls.
Another frustrating practice is “Patent Privateering.” This happens when a
company arms a third-party Patent Troll with patent rights with the sole
purpose of bringing nuisance suits against a competitor. These patents are
generally newer and hence more valuable to companies manufacturing
products from them. The Privateering scheme works like this: Company A
gives a Patent Troll a book of patents after first taking a license for their exclusive use of the patents, then the Patent
Troll goes after an honest competitor attempting to tie them up in court, extract money, and provide a business
distraction. The current Smartphone war amongst Apple, Samsung, HTC, Nokia and Google is a perfect example.
It is sad to witness how patents that were always intended to protect the creative rights of
inventors and to promote the creative spirit, are turning into weapons to be used in business.
Patent Trolling and Privateering are not legitimate cases of inventors protecting their
intellectual property rights; but rather, the unsavory practices of extortion and the slowing of
innovation.
As always, the ultimate loser is you and me, the consumer. The consumer loses with higher
product prices having the cost of litigation and payments to Trolls factored in. The consumer
also loses with delays in product development as patent rights are litigated. On a positive
note, many large companies are recently signing on to support legislation to stop Patent Trolls
and Privateers.
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WWW.MONTGOMERYIP.COM
LEGAL CORNER
By Jason Camillo, Patent Attorney
I received a utility patent, so why is my invention infringing?
The legal test for whether invention-1 infringes on invention-2 is
whether invention-1 contains elements identical or equivalent to
each claimed element of invention-2.
If invention-1 contains elements identical to invention-2, then there
is literal infringement.
If invention-1 contains elements equivalent to invention-2 then the Doctrine of Equivalents applies. This is
analogous to the legal concept of obviousness, but it is analyzed in a much different way. Under the
Doctrine of Equivalents, equivalence is determined by either:
(1) the function-way-result test, or
the accused product infringes if it performs substantially the same function, in substantially the
same way, and with substantially the same result
(2) the insubstantial differences test
an element in the accused device is equivalent to a claim limitation if the only differences between
the two are insubstantial
“If I have a patent that means that the elements of my claimed invention are not equivalent to another
patent, thus cannot infringe on another’s patent, right”?...
ANSWER: No.
“If my patent is found to be infringing, does that invalidate my patent”?...
ANSWER: No.
The reasoning for these answers is articulated in the
following court case: Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, 637 F.3d 1269
(Fed. Cir. 2011). There are four reasons why the answers to the above questions are counter to what one
might think.
1. Equivalence (infringement) occurs where differences between a patented invention and a
suspected infringing invention are insubstantial. Obviousness (invalidating) occurs where the
combinations/modifications making up the differences are deemed to be obvious to one skilled in
the art.
2. Equivalence is determined at the time of the alleged infringement, whereas obviousness is
determined at the time the claimed invention was made.
3. The burden of proof in an infringement case is measured by a preponderance of the evidence,
which is a lower standard than that of invalidating an issued patent having a burden of proof of clear
and convincing evidence.
4. The scope of a claim of an infringing patent can cover a broad range, but if the actual
infringement occurs only within a specific section of that range, then it will not invalidate the entire
patent.
Keep in mind that the above principles of law only regard utility patents. Design patents are analyzed
differently. Furthermore, much of this law is case law, which varies from one Federal District/Circuit to
another.
WWW.MONTGOMERYIP.COM
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ENGINEERING CORNER
By Cletus A. Schill, Engineer
You can’t get something for nothing. Many of us have
heard this solemn wisdom uttered by an elderly
relative or acquaintance. With only passing
attention it appeared as simply something that would
have been said at the time.
However, as inventors we should be aware that what
is perceived to be a benefit derived from a device is
not achieved without some cost. Many times an
inventor has determined to wring more power, or
more work from an engine, or a motor, or even a
battery, without properly analyzing the repercussions. While it may be true that a gear reduction will reduce
the running speed of a machine, and result in a corresponding increase in that machine’s ability to exert
force; it is also true that every time two gears meet, or two pulleys turn a belt, some power is lost to friction
and heat.
Rechargeable batteries that are required to give their last available electron in an application have a
shortened life because of deep cycling. Electric motors that are run at, or near, their peak output start
to build up heat which distorts the laminations in the iron core around which the wires are wound. This
changes the magnetic field of the motor, and consequently the power output, exacerbating itself in a
downward spiral leading only to the early demise of the motor.
So, as a word of caution, be mindful of the not so obvious costs because you can’t break even.
ISSUED PATENTS
The following patents have been issued to clients of Montgomery Patent & Design from March 26 - April 23. Seven
digit patent numbers indicate utility patents, while six digit numbers preceeded by a D indicate design
patents. Patents are officially issued every Tuesday.
8,424,895
8,424,639
D679,920
D679,649
D679,647
D679,479
8,413,687
8,413,265
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Portable auxiliary jack stand for two-wheeled
vehciles
Collapsible tree stand with dolly
Swivel shepherd hook
Vehicle traction mat
Vehicle center console cover
Animal-shaped swaddling blanket
Insulated sewer vent cover
Glove with retractable ice pick
D679,115 Infant crib and storage unit
8,410,921 Vehicle gate status indicator
8,408,652 Adjustable foot rest
8,407,936 Plant belt system
D678,814 Christmas ornament with motorcycle motif
D678,758 Self-sinking screw
8,403,517 Luminescent golf ball recharging apparatus
8,403,156 Canister organizer
WWW.MONTGOMERYIP.COM