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12 “The court said the specification need not contain ‘an express statement of criticality of an element’ to be determined ‘essential to the invention claimed in the original patent.’”
Source: CAFC opinion
The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential opinion holding that the reissue claims relating to a patent for a floating grill owned by Float‘N’Grill LLC (FNG) were not directed to the original invention and therefore were properly rejected by the U.S. Patent and Trademark Office (USPTO).
U.S. Patent No. 9,771,132 is titled “Floating Apparatus for Supporting a Grill” and as issued in September, 2017. After issuance, FNG filed a reissue application for additional claims that were rejected by first the examiner and then the Patent Trial and Appeal Board (PTAB). The original claims required a “plurality of magnets” to which “a flattened bottom side of a portable outdoor grill is removably securable,” while the reissue claims “more generically call for the removable securing of a grill to the float apparatus,” according to the CAFC’s opinion.
The examiner and later the PTAB rejected the claims as failing to satisfy the “original patent requirement” of 35 U.S.C. § 251 because the original patent did not indicate the plurality of magnets as an optional feature of the invention.
On appeal, the CAFC explained that U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals, Corp. articulates the standard for satisfying this requirement. In that case, the U.S. Supreme Court determined that the addition of water to improve the efficiency of a certain reaction was not optional in the original specification and said that “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” The CAFC then detailed its own precedent upholding this analysis.
Under that standard, the court said the reissue claims here do not meet the original patent requirement. The court explained:
“As the Board found, the plurality of magnets component of the support structure here is an essential part of the invention as it is the only disclosed structure for performing the necessary task of removably and safely securing the grill to the float apparatus. This conclusion is bolstered by the immutable fact that magnets are unique in facilitating the attachment of members merely by contact, as contrasted to nuts and bolts and other conventional fasteners that typically require multiple parts and more than one hand to assemble. Not only does the specification lack any disclosure or suggestion of an alternative fastener, but the one fastener disclosed is unlike any alternative that might even be considered.”
While FNG argued the plurality of magnets was a “non-essential embodiment of the original patent,” the court said the specification need not contain “an express statement of criticality of an element” to be determined “essential to the invention claimed in the original patent.” Further, “whether ordinary artisans could replace the disclosed magnet mechanism with some other undisclosed mechanism to achieve a similar removably securable functionality, is inapposite,” said the court. The CAFC also distinguished the present case from Revolution Eyewear v. Aspex Eyewear, Inc. and In re Rasmussen, which FNG argued held “that if the original specification would have supported the reissue claim omitting the limitation, then the original patent requirement is satisfied.” The court said those cases were analyzed in the context of written description and not the original patent requirement. The court thus affirmed the PTAB’s holding.
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Join the Discussion
12 comments so far.
F22strike
July 15, 2023 01:00 pmHere is a link to the UPSTO decision excluding Tarley G. Stevenson, Reg. No. 72,618, from practice before the USPTO in patent, trademark and other non-patent matters. It recites details regarding her representation of clients referred to her law firm by InventHelp.
https://foiadocuments.uspto.gov/oed/D2019-12_Stevenson_Initial_Decision_issued_12_13_19.pdf
Curious
July 14, 2023 07:36 pmThe application that led to the grant of this patent was apparently drafted and prosecuted by a very inexperienced patent attorney who had no supervision.
Look at the name of the attorney. Perform a search using the attorney’s name. Look at the allegations made against the attorney during a disciplinary proceeding. From those allegations, identify how the attorney got her clients. Be totally unsurprised afterwards.
F22strike
July 14, 2023 12:21 pmI took a brief look that US Patent No. 9, 771,132. The application that led to the grant of this patent was apparently drafted and prosecuted by a very inexperienced patent attorney who had no supervision. He may have also been hamstrung by quoting a fee that was too low to cover drafting a well-written patent application.
The examiner could have rejected Claim 1 for obviousness over applicants’ admitted prior art (AAPA) since the BACKGROUND OF THE INVENTION section largely mirrors that claim. That section should be very short, basically a single general statement describing the field of the invention.
The SUMMARY OF THE INVENTION SECTION should essentially be a multi-sentence very of the broadest independent claim, as filed.
Claim 1 of the ‘132 patent is what we used to refer to in the patent business as a “picture claim.” IMO, the ‘132 patent is essentially a vanity patent and has no commercial value. The floating grills that are sold that embody the illustrated mechanical design could legally bear this patent number. However, anyone thinking of manufacturing and selling a similar floating grill could easily avoid infringing Claim 1 by implementing any of the following design changes:
1) use a round or oval float;
2) use an inflatable float made of a non-buoyant material;
3) use a round or oval grill support;
4) use non-magnetic means to attached the grill to the grill support, e.g., machine screws and nuts; or
5) leave out the cup holders.
The patent attorney should have had the inventors brain-storm as many alternate embodiments as possible. These preferred embodiment and the alternate embodiments should have been illustrated and described in the patent application in great detail along with many potential modifications for the various components.
Also, the attorney should almost never issue a US patent without twenty total claims, three of which are independent, assuming this number of claims is still covered by the basic USPTO claim fee.
Addy
July 14, 2023 09:04 am@Curious
Agree that the inventor was not well served by their patent counsel, and this is a story we see time and again. There was an article here written earlier this week (https://ipwatchdog.com/2023/07/10/using-ai-give-inventors-leg-big-tech/id=163229/) that claims:
“Fact: The PTAB invalidates 84% of patents reviewed
Fact: The invalidated patents cannot all be bad patents”
Are there really that many patent counsels that don’t serve their clients well? I would say yes.
Some of these are as you say – inventor service companies preying on ignorant inventors, many are counsels with the best of intentions thinking they know what they’re doing but in reality do not. Either way, inventors are choosing counsel when they have zero ability to do it reasonably well.
Is this the fault of the inventors or the “system”? Not all patent counsels (or any professional, for that matter) are created equal, and patent applications are exceptionally difficult to write and prosecute well (i.e., so that the issued patent survives litigation).
From the posts here and other popular patent-focused blogs, the blame is pointed at the courts, PTAB, and CAFC. While those entities are not perfect, they generally do a decent job with what they’re given. However, what they’re given is frequently quite poor work product. I don’t see many (any) posts or comments pointing to the patent practitioners who created the work product to begin with. I also see no resources designed to help inventors choose the right counsel.
Curious
July 13, 2023 06:09 pmThis is a very good example of why inventors are boycotting the USPTO. There is no benefit to the inventor, only ruinous cost.
Josh — while I think the Board/Federal Circuit got it wrong, I believe the underlying problem here falls on companies that prey upon inventors and obtain (IMHO) lousy representation for them. Just look at the patent application that was filed.
Not A Whiner
July 13, 2023 04:01 pmY’all are mad b/c the original, poorly drafted patent issued in 2017 and subsequent IP counsel tried to make lemonade with that lemon by filing a a petition for reissue a full year later in 2018.
The patentability analysis – obviousness, written description, etc. – would have been the proper course if the new claims were filed in a continuation application in 2017 before the parent granted, all without application of the original patent doctrine. (Note, the Examiner considered those issues, too, in the reissue examination.)
Alas, that isn’t the timeline or the case. Subsequent IP counsel made a valiant effort – just review the file histories – but the playing field changed once the original patent granted.
Josh Malone
July 13, 2023 01:07 pmObviousness should go both ways. If an embodiment is obvious from the inventor’s disclosure he should be allowed to claim it.
Josh Malone
July 13, 2023 01:05 pmThis is a very good example of why inventors are boycotting the USPTO. There is no benefit to the inventor, only ruinous cost.
KenF
July 13, 2023 11:10 am“The court said those cases were analyzed in the context of written description and not the original patent requirement.” WTF?! Are these two concepts not inherently intertwined/interrelated? Are we not entertained?! What BS…..
Curious
July 13, 2023 11:05 amThis conclusion is bolstered by the immutable fact that magnets are unique in facilitating the attachment of members merely by contact, as contrasted to nuts and bolts and other conventional fasteners that typically require multiple parts and more than one hand to assemble. … Not only does the specification lack any disclosure or suggestion of an alternative fastener, but the one fastener disclosed is unlike any alternative that might even be considered.
This is the problem when you have a legal field that requires specialized technological knowledge in order to understand the facts. While Linn is a EE and Cunningham is a Chem-E, neither of them are mechanical engineers. Prost has no known technical background (and her decisions reflect that lack of knowledge, IMHO).
Anyway, it took me a half-a-second to recognize that this so-called “immutable fact” is not, in fact, a fact. Hook and loop material (e.g., Velcro) meets these characteristics. There is a material made by 3M (Dual Lock) that works very similar to hook and loop material and is capable of attachment merely by contact.
This decision is also emblematic of the Federal Circuit’s attitude these days (and when I say “these days” that time period spans well over a decade) — which is to screw inventors in every way possible. They set traps for the unwary.
I did a little digging after I looked at the patent that was issued as I initially thought that the application was filed without the help of an attorney. I was wrong so I had to find out more about this attorney who wrote an application that looked like an amateur wrote it. It didn’t take me long to figure out how the inventors got screwed from the very beginning. I won’t get into the gory details, but it appears that the attorney who filed the patent has been disciplined by the USPTO for other issues.
Anyway, my best guess is that the inventors hired one of these ‘inventor help’ companies that one sees advertised from time to time and they put the inventors in touch with this patent attorney. The patent attorney then wrote a picture claim with one of the shortest specifications I ever seen.
The Federal Circuit SHOULD have immediately recognized how the inventors were screwed over by the system and the inventors were (by the filing of the reissue) attempting to fix badly-drafted claims. However, the Federal Circuit did what they have done for a long time now which is to screw the inventors over (yet again). Truly, it is shameful that the current patent system and patent legal system is set up to make it harder for unsophisticated inventors — not easier.
The Federal Circuit should be embarrassed.
PeteMoss
July 13, 2023 10:48 amBut the FNG patent disclosure includes fasteners other than magnets: Loom Co. v. Higgins, 105 U.S. 580, 585 (1881): “The loom itself was old. Every part of it was familiar to every loom manufacturer and to every weaver…With this mass of previous knowledge and nomenclature in their minds (as we must suppose it to have been), the language, the explanations, the drawings, and the claims of Webster’s patent must have been perfectly intelligible to them. When an astronomer reports that a comet is to be seen with the telescope in the constellation of Auriga, in so many degrees of declination, and so many hours and minutes of right ascension, it is all Greek to the unskilled in science; but other astronomers will instantly direct their telescopes to the very point in the heavens where the stranger has made his entrance into our system. They understand the language of their brother scientist. If a mechanical engineer invents an improvement on any of the appendages of a steam-engine, such as the valve-gear, the condenser, the steam-chest, the walking-beam, the parallel motion, or what not, he is not obliged, in order to make himself understood, to describe the engine, nor the particular appendage to which the improvement refers, nor its mode of connection with the principal machine. These are already familiar to others skilled in that kind of machinery. He may begin at the point where his invention begins, and describe what he has made that is new, and what it replaces of the old. That which is common and well known is as if it were written out in the patent and delineated in the drawings.”
Pro Say
July 12, 2023 08:03 pm“is inapposite”
Um, you mean like your wild, ignores SCOTUS, innovation-crippled, patent-law-swallowed, off-the-rails expansion of ineligibility?
You mean like your disgusting, shameful mistreatment of the Honorable Judge Newman?
You mean like that kind of inapposite?