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(Message started by: blended on Aug 1st, 2007, 10:14pm)

Title: Combining patents
Post by blended on Aug 1st, 2007, 10:14pm
Dear James,

I am currently building a website and I just found out that one of my competitors has recently been awarded a patent for a similar business process/model.

My questions are as follows:

1.  Say Company A has patented Process 1 and Company B has patented Process 2, can Company C come along and combine the processes 1 + 2 and claim it as Process 3?

2.  If I as a new company decide to build a website using Company C's patented Process 3 as a model, is it possible to defend a patent infringement case by claiming that Process 3 patented by Company C is invalid because it combines two existing patents?

Hope that was clear.

Thank you in advance.


Title: Re: Combining patents
Post by MrSnuggles on Aug 1st, 2007, 10:40pm
1.  Maybe.  If Company C can overcome the obviousness rejection that is bound to be in their way during prosecution.  However, assuming that Process 3, a combination of Processes 1 and 2, is novel and non-obvious, then yes, Company C might be able to obtain a patent.

2.  Your defense would not be that Process 3 is a combination of two existing patents.  There are many patents out there that are combinations built on other patents and prior art.  A proper defense may be that the patent for Process 3 is invalid because (1) it is not novel, (2) it is obvious in light of Process 1 and Process 2, (3) your product does not literally infringe the claims, (4) your product does not infringe under the Doctrine of Equivalents, (5) you invented it before the patent holder, (6) there was an ethical violation by the practitioner during the prosecution of the patent, (7) you own the patent (this is a fun one that some companies use after seeking out an un-named inventor and getting the un-named inventor to assign their rights to the defendent/claimed infringer), (8) the patent holder gave up scope during prosecution (prosecution history estoppel), or other legal basis.

I'll note now that I am a prosecutor, not a litigator, so take my response with a grain of salt.

Title: Re: Combining patents
Post by JimIvey on Aug 2nd, 2007, 12:24pm
Assuming I'm the "James" referred to, I think Mr. Snuggles got it right, mostly.  I'd focus on his defenses (1)-(3).  (5) only works if you've also filed your own application for a patent.  Closely related to that is proving that you or they or someone described Process 3 in a printed publication or publicly used Process 3 prior to Company C's invention or a year before their application's filing date or offered Process 3 for sale a year prior to the filing date.  

I guess that's covered by Mr. Snuggles's (1).  I'd also note that Mr. Snuggles's (2) isn't limited to Process 1 and Process 2 but can include any event/item that qualifies for (1) in the manner described above.

One last thing to note:  issued patents enjoy a presumption of validity, so challenging validity is more risky than showing you don't infringe the claims of Company C's patent.

Regards.

Title: Re: Combining patents
Post by blended on Aug 2nd, 2007, 12:36pm
Thank you both for your replies.

In light of the recent KSR vs Teleflex case, what are your opinions about the increased chances of challenging the validity of issued patents for business processes?

Title: Re: Combining patents
Post by JimIvey on Aug 2nd, 2007, 12:49pm

on 08/02/07 at 12:36:31, blended wrote:
In light of the recent KSR vs Teleflex case, what are your opinions about the increased chances of challenging the validity of issued patents for business processes?

From what I understand, the punditry agrees that the chances of successful challenge are increased, but none will say by how much.  My perception is that the amount of increase in those chances is rather modest.  That case really hasn't affected my practice at all.

Regards.

Title: Re: Combining patents
Post by Isaac on Aug 2nd, 2007, 2:37pm

on 08/02/07 at 12:49:52, JimIvey wrote:
From what I understand, the punditry agrees that the chances of successful challenge are increased, but none will say by how much. My perception is that the amount of increase in those chances is rather modest. That case really hasn't affected my practice at all.

Regards.


I think things have changed a bit more than Jim does.  The patent office put out some interim guidelines, but recently indicated that they'd sent some revised guidelines to OMB and plan to conduct training of the Examining Corp once the guidelines are rubber stamped (er, I mean approved).  

I attended a PLI presentation yesterday in which some recent BPAI appeals decisions relying on KSR were discussed.   I think you can get an impression of how things are likely to evolve from looking at those.

My own impression is that the impact is likely to vary significantly depending on the details of your practice.  If you were working at a corporation that was in the habit of filing a patent application everytime somebody made a clever change on the production line, I think examiners will find it easier to reject claims to those kinds of inventions.   I think overcoming such rejections will require more evidence as opposed to argument than prosecutors are accustomed to using.

On the other hand, if your clients are more selective about filing and aren't working in crowded fields, you might find a lesser impact.

My personal impression about KSR is that it's mostly about how difficult it ought to be to prove obviousness.  The Supreme Court wants to see more claims rejected at the patent office and found invalid on summary judgment rather than at trial and has lower the required showing by the trier of fact significantly.

Title: Re: Combining patents
Post by JimIvey on Aug 2nd, 2007, 6:20pm

on 08/02/07 at 14:37:19, Isaac wrote:
My own impression is that the impact is likely to vary significantly depending on the details of your practice.  If you were working at a corporation that was in the habit of filing a patent application everytime somebody made a clever change on the production line, I think examiners will find it easier to reject claims to those kinds of inventions.   I think overcoming such rejections will require more evidence as opposed to argument than prosecutors are accustomed to using.

That's a good point.  I don't do that type of work anymore (patent everything that moves and some things that just lie there).  I agree that type of work will be harder to get through the PTO.

As I posted elsewhere earlier, I didn't rely on the specific details of the TSM test that KSR explicitly did away with.  So, Iike I said, my practice won't change.  I described more details about that in another topic somewhere.

By the way, is there a convenient link to find BPAI decisions using KSR, Isaac?  I'd be interested to look those over.

Regards.

Title: Re: Combining patents
Post by PA on Aug 2nd, 2007, 10:59pm
Here's a few recent precedential cases that discuss KSR.

uspto[.]gov[/]web[/]offices[/]dcom[/]bpai[/]prec[/]fd070820[.]pdf

uspto[.]gov[/]web[/]offices[/]dcom[/]bpai[/]prec[/]fd071925[.]pdf

uspto[.]gov[/]web[/]offices[/]dcom[/]bpai[/]prec[/]fd070819[.]pdf


Title: Re: Combining patents
Post by JimIvey on Aug 3rd, 2007, 1:06am
Thanks.  Here are the links to save others the hassle of editing out the brackets.

http://www.uspto.gov/web/offices/dcom/bpai/prec/fd070820.pdf
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071925.pdf
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd070819.pdf

Regards.



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