Patentlyo Bits and Bytes by Anthony McCain

8 thoughts on “Patentlyo Bits and Bytes by Anthony McCain”

1. 3

   What say you, fuzzy britches?

   The Patent Litigation thread up and vanished.
2. 2

   Some interesting oral arguments today.

   link to cafc.uscourts.gov

   Circut Check v. QXQ
   Lourie, Dyk and Moore

   Circuit Check obtained a million+ dollar jury verdict but the district court (William Griesbach, E.D.Wisconsin) tossed the verdict out, agreeing with the defendant that no reasonably jury could find the asserted claims non-obvious.

   The district court judge’s order can be found here: https://www.docketalarm.com/cases/Wisconsin_Eastern_District_Court/1–12-cv-01211/Circuit_Check_Inc_v._QXQ_Inc/

   The Order is, as some might say, a “tour de force” example of a jurist eloquently blasting through the dust that patentee’s tend to kick up when arguing that their claims represent a non-obvious innovation. In particular, Judge Griesbach does a great job of dismantling the patentee’s attempts to (1) invent “long felt needs” where none existed and (2) ignore common sense and the eons of art relevant to the broad field of placing marks on things. KSR is key here, and Griesbach understands perfectly what the Supremes were talking about.

   Anybody looking to invalidate a patent — particularly one of the myriad obvious “do it on a computer” claims floating out there — should pay close attention to the structure of Griesbach’s arguments (regardless of what the Federal Circuit does).

   Representative claim (7592796):

   1. An indicator interface plate configured to provide readily visible identification of predetermined holes, the plate comprising:

   a surface including a plurality of holes having visually discernable markings to allow a user to visually determine which of said plurality of holes are to be populated, wherein said plurality of holes have a first predetermined indicia covering the surface surrounding said plurality of holes, the plate further comprising:

   a second removable indicia overlying said first predetermined indicia, said
   second indicia being different from said first predetermined indicia, wherein said second indicia is removed from areas of said plate adjacent each of said predetermined holes, and wherein said predetermined holes are visually identifiable to a user by the appearance of the first indicia.

   In plain English, this an “interface indicator plate” (old in the art) modified by (1) painting it entirely and (2) removing the paint around the holes so you can see where the holes are.

   Choice quotes:

   QxQ is not making claims about what only someone with ordinary skill in the field of circuit board testers would know (which would likely require expert testimony); it is instead suggesting that anyone with little or no technical background would have recognized what the patents at issue here disclose. Because this is a “common sense” kind of case, Circuit Check’s arguments fall flat. No doubt it is true that primitive rock carvings are not technically pertinent to the “field” of circuit testers, and that one skilled in the art would probably not have thought about such carvings when designing an alignment plate. Similarly, witnesses credibly testified that Prussian blue dye had not been used on alignment plates. But that misses the point. QxQ’s argument is not that the method used in rock carvings is “prior art” to this particular invention, but that the method is so universal and obvious and ancient that it was known even by cavemen, and thus any layman using common sense would understand that an alignment plate could be marked using that method. In short, the ability to mark something by coating it and then removing some material was part of the toolbox not just of those skilled in the art of circuit board testing but of pretty much anyone who would ever have occasion to design an industrial product.…

   There was little actual evidence that the industry was struggling to solve the kind of problem that was crying out for a solution. It is true that the industry used other marking methods during that time period, but that does not mean companies were demanding a solution to any kind of marking problem. … In fact, the evidence was to the contrary. Others in the industry do not use Circuit Check’s patented method and continue to use the other marking methods or none at all … Similarly, many customers continue to use testers marked in the traditional ways without apparent problem, and QxQ notes that its own sales have not been hurt since it stopped using the patented method. This suggests that even now, the invention is not addressing a long-felt need. In fact, given how simple the solution was, the fact that it took more than a decade to arrive at a solution speaks volumes about how limited the problem may have been in the first place….

   the patent instructs that, in the preferred embodiment, it is important to find a paint that adheres well: “[A] paint which adheres well . . . should be chosen and tested.” It is hard to imagine a recommendation more obvious than that. If there is any surprising result here, it is simply that “Mr. Staggert found a paint that bonded with the plastic of the interface plate.” (ECF No. 118 at 30.) But because the Plaintiff does not have a patent on “choosing a paint,” Plaintiff’s argument is off the mark. For “unexpected results” to be a meaningful gauge of obviousness, we would need evidence that the patented invention itself led to such results, not that the discovery of a pre-existing product, used in a single embodiment, was unexpected….

   On the one hand, Plaintiff is touting its invention as innovative because it required extensive testing to discover the proper paint to use, but on the other hand the patent itself teaches that the user should select and test a paint that “adheres well” — the very thing Plaintiff now claims is innovative. This means that the essence of the alleged ingenuity of the paint discovery is not even disclosed in the patent.

   Good stuff.
   1. 2.1

      MM, recall in Bikski that one of the indicia of Abstract was that the technique being claimed was old and notorious. Alice required that some real improvement in technology be claimed to provide a patentable application.

      This might case might sound in 102/103, but it also fits quite well into the new 101 where notoriously old techniques are applied in a new context.
      1. 2.1.1

         This was not a 101 case, nor should it have been decided on that basis.

         The references to “old and notorious” in Alice are (or will certainly be) dicta at the end of the day. The important holding in Alice is not that only “notorious” abstractions (i.e., information processing methods, including methods for content-labeling and content-categorizing and methods for communicating information distinguished from the prior art only on the basis of the status/content of the information) remain ineligible even when “computerized”. The important holding in Alice is that any old abstraction in the prior art remains ineligible after “computerization.”

         Take it to the bank.
         1. 2.1.1.1

            MM, I don’t think the SC has been exactly clear on what it means by Abstract. They keep citing the Rubber-Tip pencil case, a case that had nothing to do with information processing but did have something to do with a notoriously old technique.
            1. 2.1.1.1.1

               ^^^ collision of competing canards and curse-aids
   2. 2.2

      Similarly, witnesses credibly testified that Prussian blue dye had not been used on alignment plates.

      LOL.
3. 1

   Eric Goldman: Is Wrapping Flowers In Burlap Functional?

   This is a great article about a really lame lawsuit.

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