Hansen IP Law Offering IP Law Seminars on the Basics of Patent and Trademark Law  


November 2013, Bloomfield Hills, MI - Hansen IP Law is pleased to announce that it is offering seminars on the basics of patent and trademark law to interested companies. Many small and mid-size companies cannot afford full time in-house intellectual property attorneys to watch out for intellectual property issues when developing and launching products or dealing with third parties, such as vendors, customers, and contractors. Especially for these companies, it can be very beneficial for key management and technical personnel to develop enough of an understanding of intellectual property law to spot issues as they arise in the course of their daily business activities. Through these complimentary seminars, the firm hopes to provide current and future clients with the tools to spot such issues. For more information, contact Steve Hansen at 248 599 9184 or srh@hanseniplaw.com.

Are Your Competitors Gaining On You? - Monitoring Competitor Patent Activities


How aware are you of your competitor's patenting activities? Are they seeking patents that could impact your development of future product lines in your technology area? Are they moving into new technologies that could be game-changers? Are new players entering your space?
One way to gain some insight into your competitor's activities is to monitor their patenting activities. Patent applications are published 18 months after filing, and they can provide valuable insights into the competitive landscape and may give you a heads-up before new products hit the market. An awareness of your competitor's patenting activities may also enable you to proactively take steps to prevent damaging patents from issuing or seeking their revocation if they do.


There are a number of different strategies that can be used to watch your competitors. One strategy is to conduct periodic searches or set up watch alerts for published applications that the U.S. Patent and Trademark Office classifies in the same patent classes as your technologies. For example, let's say your company makes implantable cardiac defibrillators. Under the Patent Office's classification scheme, your patents will likely be classified under Class 607 (Surgery: Light, Thermal and Electrical Application) and in subclass 5 (cardioverting/defibrillating). A search of all issued U.S. patents in this class reveals that 82 of them were issued in 2013 to a variety of companies including, Medtronic, Cameron Health, ZOLL Medical, Qualcomm, and others.

A search of published applications in this class indicates that 38 of them were published in 2013. Many of the applications identify the company to which they are assigned. Some companies take steps to avoid having their name appear on published applications. In such cases, additional work may need to be done to determine the companies with which individual applications are associated. However, the identity of the companies can often be determined based on the name or location of the inventors or using the USPTO assignment database. In addition to using the USPTO's patent classes, searches can also be conducted based on key inventors and specific terms appearing in the specification and/or claims.


What can you do with this information? Here are a few possibilities:


1. Look at your own pending applications and see if you can add claims that may block your competitors in the areas identified by their published applications.


2. Design around the claims your competitors are seeking and head off infringement problems before they have the opportunity to develop.


3. Conduct prior art searches and submit prior art to the Patent Office using the "Pre-Issuance Submission" provisions of the America Invents Act (AIA).


4. Continue to monitor the progress of the competitor applications and use the Post Grant Review, Inter Partes Review, or Ex Parte Reexamination procedures provided by the Patent Office for challenging patents. We discussed these various options in a previous blog post: http://hanseniplaw.com/strategies-for-leveraging-the-america-invents-act%E2%80%99s-tools-for-challenging-patents.


If your main concern involves patenting outside of the U.S., some of these strategies may also be useful depending on the circumstances.
New Federal Circuit Opinion Suggests Strategies for Using the Written Description Requirement to Invalidate Broad Patent Claims


In an earlier newsletter and blog post(http://hanseniplaw.com/what-limitations-are-there-on-the-breadth-of-otherwise-novel-and-non-obvious-patent-claims/we addressed the question of whether and to what extent U.S. law limits the breadth of patent claims that are otherwise novel and non-obvious. As we explained, both the Written Description and Enablement requirements of U.S. patent law may limit claim scope even if the prior art does not. On October 29 the Court of Appeals for the Federal Circuit issued an opinion in Synthes USA, LLC, et al. v. Spinal Kinetics, Inc. holding that the Synthes' spinal implant claims were invalid under the Written Description requirement because they recited a "third plate including a plurality of openings" while the originally-filed application described only "circumferential grooves." In other words, the specification described only a specific type of opening ("grooves") and a specific location on the claimed third plate ("the circumference"). The Federal Circuit affirmed a jury verdict of invalidity under the written description requirement because the claims covered all types of openings and locations for placing them on the claimed third plates while the specification was far narrower.


"Black letter" patent law includes many competing principles that are in tension with one another, as this case illustrates. Under the rules applicable to interpreting claim language, claims are not to be limited to a preferred embodiment, even if it is the only embodiment in the specification. However, in order to satisfy the written description requirement (and be valid) a patent must convey to those skilled in the art that the inventor had possession of the claimed invention, not merely the disclosed embodiments. This tension begs the question of how you determine whether claims that are broader than the specification embodiments are nevertheless valid under the written description requirement.


Addressing this tension is a place where good, creative lawyering is key. The Synthes decision provides a nice example of this. The first thing the decision reveals is that characterizing and framing the issue is critical. In this case, the accused infringer argued that the claims covered any type of opening located anywhere on the third plate. Based on this characterization, the accused infringer developed expert and factual testimony showing the various challenges that would arise using different types of openings located at different places on the "third plate." In particular, the accused infringer relied on evidence of how it arrived at its opening style and placement location to show how these features affected the intended use of the product and to show how much work it took to arrive at the final design. The Federal Circuit held that this evidence was sufficient to show that one skilled in the art would not have understood that the inventors were in possession of an implant that included any type of opening located anywhere on the third plate simply by disclosing a single embodiment with grooves located around the circumference.


The Synthes case reveals a few key strategy points for using the written description requirement to attack broad claims that are supported by a narrow disclosure:  


1. Characterize the nature of the breadth relative to the disclosed embodiments.


2.  Consult with experts and technical personnel to identify a set of alternative, undisclosed embodiments that would be embraced by the broad claim language.


3.  Determine the impact of the various alternative embodiments on the intended use of the claimed invention and the nature of any work or modifications that might be required to make them work.


4.  Take appropriate discovery of the patent holder to further develop 1-3.


5.  Based on 1-4, develop the argument as to why one skilled in the art would not have been presumed to have been in possession of the broad claim asserted by the patent holder based on the patent's narrower embodiments.


Many of the patent cases filed in the U.S. involve claims that are significantly broader than the disclosed embodiments. In some cases, it may not be possible to find prior art to invalidate the patent claims based on a lack of novelty or obviousness. Thus, the written description requirement and/or the enablement requirement can provide a critical avenue for attacking the validity of such patents. 

In This Issue
Are Your Competitors Gaining On You? - Monitoring Competitor Patent Activities
Attorney Spotlight
For more information about Steve Hansen, click here.  
Interested in learning more about IP Law?
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About Hansen IP Law PLLC
Hansen IP Law is an intellectual property law firm that provides "Big Law" caliber services using a small firm platform.  Although based in suburban Detroit, we represent clients throughout the United States and abroad. We do not operate on a leveraged model.  Each of our clients is represented by an experienced intellectual property attorney with over a decade of "Big Law" experience, including as a partner in Los Angeles and Detroit firms. Unlike many firms of our size, we have substantial patent litigation experience in courts throughout the United States, which allows us to strategically strengthen your intellectual property portfolio.  For more information, please contact Steve Hansen at 248 504 4849 or srh@hanseniplaw.com. You can also visit us on the web at www.hanseniplaw.com.