by Dennis Crouch
Andrew Davis is an ophthalmologist in Bellevue. In his spare time he invents canine communication devices and treat dispensers. Figure 9 below comes from his US9723813 (2012 priority date).
You can buy something similar from Amazon – the Furbo dog camera.
DoggyPhone has sued Tomofun (maker of Furbo) for patent infringement. DoggyPhone LLC v. Tomofun, LLC., 19-cv-1901 (W.D. Wa. 2022). Tomofun petitioned for inter partes review (IPR) on five separate grounds. However, the PTAB denied institution, after finding that the asserted prior art failed to teach all of the claimed elements in the proper combination. (IPR2021-00260 DoggyPhone). The district court had stayed litigation pending outcome of the IPR. Now though the case is up and running again with jury trial set for January 2023.
The district court just issued claim construction, refusing to find any of the claim terms indefinite and giving all terms their ‘plain and ordinary meaning.’
= = = =
Asserted claim 7
7. A system for communicating with a pet, comprising:
a treat bin;
a food dispenser that dispenses treats from the treat bin;
an audio device;
a delivery module that: receives a treat delivery command; and in response to the received treat delivery command: dispenses via the food dispenser at least one treat from the treat bin; plays via audio device an audio signal that notifies the pet of availability of a treat; and receives input from the pet; and
a control that transmits to the delivery module a treat delivery command,
wherein the system: in response to a first communication command received from a user, transmits to the delivery module the treat delivery command; plays at least one of live audio or video received from the user of a remote client device; and transmits to the remote client device at least one of live audio or video of the pet, wherein the system begins transmission to the remote client device of at least one of the audio or video of the pet in response to input from the pet.
anon, the jetsons did not magically transform from fiction to non-fiction because we now actually have robots.
either way, you seem to now concede that a work that is fiction when published can indeed be prior art, if it is later enabled by after developed technoology. of course the relevant date is the date at which point it was enabled. (If a flux capacitor is ever invented, Back to the Future may become prior art for using that flux capacitor in a time machine. Relevant date would be date the flux capacitor is created. Back to the Future, would of course, still be a work of fiction.)
???
“anon, the jetsons did not magically transform from fiction to non-fiction because we now actually have robots.
either way, you seem to now concede that a work that is fiction when published can indeed be prior art, if it is later enabled by after developed technoology”
You are off on both of these.
I am the one pointing out that fiction cannot become non-fiction (and tied to that, that elements that ARE fiction cannot become prior art).
I concede nothing of the sort that you are suggesting.
The thread initiated by comment # 1 is interesting on the question whether a reference D1, published on date X, and hopelessly non-enabled at that date, can deprive of novelty a claim having date Y, a date 50 years later than date X.
I read that one assesses as of date Y what D1 enables and that this is not controversial. That surprises me, given that it is established case law of England that the relevant date is X, not Y.
What is the reasoning of the US courts, so powerful that it renders the issue (X or Y) not even interesting enough to discuss?
Caution: put the obviousness issue out of your minds. That’s irrelevant. No dispute about the date. Y. Of course. The interesting issue is with a novelty attack based exclusively on D1, published 50 years earlier and on its publication date hopelessly non-enabling (SF for example).
I’d suggest footnote 5 here, noting that a non-enabled prior art can become enabled after publication due to after-developed technology. link to cafc.uscourts.gov
“Comcast presents an example where a prior art reference that was not enabled at the time of the publication became enabled at a later date through advances in technology […]”
With the caution that while the CAFC suggests post-publication enablement of prior art (and once enabled, should be available for 102), it is technically dicta as it discusses 103 (obviousness). Not completely clear if it technically such rejection would be a single reference 103 (obviousness) or 102 (novelty).
Max, so say you have a book written in 1965, and first published in 1970, becomes enabled in 2000 due to technology, and then is republished with a new cover art in 2022 (which is quite common in the publishing world), you are saying the republication would be useful for novelty but not the 1970 version that says exactly the same thing?
SO “The jetsons blu ray edition” (released 2015) is good for novelty purposes but not the original jetsons, even though they are substantively exactly the same? Its an interesting thought experiment (that will never come up at least in the US, where there is little reason to pursue 102 when 103 is available)
Good question, but I am not persuaded that there is a problem.
You could say that every “publication” is “re-published” every time it is accessed from a website. The English courts cling to the principle that a disclosure (D1) is assessed (for novelty) as of its (first) publication date with the logic that, otherwise, its “disclosure” increases with time, whereby its prejudicial effect on novelty is greater for patent applications filed long after the publication date of D1 than those filed shortly after the publication date of D1. The disclosure of D1 ought to be something constant and fixed, not something that depends on the filing date of the claim against which it is applied.
In In re Wiggins, 488 F.2d 538, 543 (C.C.P.A. 1973), the appellant’s application was filed in 1966, while the claims were rejected over an article published in 1957. Everyone agreed that the 1957 article named certain compounds within the appellant’s claim scope, but did not teach how to make those compounds. However, it was also stipulated that a patent published in 1959 enabled the making of the compounds named in the 1957 article.
Wiggins’ application—with its 1966 filing date—was rejected as anticipated by the 1957 article. The court overturned that rejection, writing that “[t]he mere naming of a compound in a reference, without more, cannot constitute a description of the compound, particularly when, as in this case, the evidence of record suggests that a method suitable for its preparation was not developed until a date later than that of the reference.” In other words, the court there seems to indicate if the reference was not enabling as of its publication, then it lacks force for defeating novelty.
Raytheon v. GE was not decided en banc, so it had no power to overturn the rule from Wiggins. I agree that a reference can make obvious where it is not enabled as of its publication date, but becomes enabled before the challenged-claims’ filing date. For novelty purposes, however, Wiggins tells that the asserted reference must be enabled as of its publication date.
The file wrappers at the EPO provide interesting material, and would appear to fly in the face of any here who suppose the claimed technology to be hopelessly obvious.
EP 2854517 is granted and was not opposed. The claims in Divisional EP 3620047 have already satisfied the EPO for patentability over the art.
Two thoughts occur:
1. Do any of these claims in Europe read on to Furbo? Perhaps they are all too narrow.
2. If any technology is simple enough for a jury trial, it’s this dog-directed stuff, isn’t it?
I’ve always thought that “jury of one’s peers” could mean more than just any old citizen.
Especially in a non-criminal context and double especially in highly technical disputes and triply especially in disputes where a peer judgement is the statutory measure of the dispute itself.
In other words, IPR institutions and obviousness verdicts should be rendered by a jury of PHOSITA. It could be done electronically and include dozens of jurors if needed.
You do realize that PHOSITA is a legal fiction to which no actual real person has the capabilities, right?
Off-topic – but well worth it, as EFF is brutally brought to the woodshed:
link to patentdocs.org
Michael Borella inhaling his own f a r t s! In a woodshed!
Really impressive.
Color me shocked – shocked I tell you – that you would side with EFF.
Thanks for the tip. I like Michael Borella’s articles. He does a nice job.
Lucky for the inventor the infringer’s firm gave the case to a junior attorney who hadn’t done cocktails with the PTAB judges yet.
Note that since this was a denial of an IPR not an IPR decision, it does not meet the 35 U.S.C. 315 (e)(2) IPR estoppel requirement “that [it] results in a final written decision under section 318(a)”
I would be interested in an informed comment on how much that situation affects litigation these days?
But I wonder if the defendant’s best option with this claim is to avoid infringement by turning off the “in response to” in the claim’s “wherein the system begins transmission to the remote client device of at least one of the audio or video of the pet in response to input from the pet” and instead requires normal operator [not dog] remote control of the tv camera?
Seems incredibly obvious. Where’s the optional robot hand (remote controlled, with sensors!) that pats the animal on the head after the treat is eaten?
Can you find anything similar in 2012? Anything?
As a dog owner, I think this is beyond brilliant.
Both baby monitors and pet treat dispenser systems were available in 2012.
I’ll also leave this for you to browse: link to core77.com
The novelty, to the extent it exists here, is gonna be in the edges, like “playing an audio sound” to let the pet know there is food coming, or in activating the video after sensing the dog bark (although, again, baby monitors had been doing this for ages).
prophet/MM:
You have An obligation to let us know your real name and the law firm that you are with, as well as telling each of your IP clients of your disdain for patents, since otherwise you are committing fraud. This information should be made known to all of your firm’s clients to warn them that they are not getting the service they expect to receive due to your hatred of the patent system.
I care not for his real name — everything else you state I agree with.
Please state the elements of fraud and explain your super deep reasoning to Dennis Crouch’s friends in the enlightened meth labs of the ozarks.
I’m not MM, and I’m not sure where your vitriol is coming from.
BobM asked for “anything similar in 2012” to a camera enabled remote pet treat dispenser. I linked to a post from 2008 titled “iPhone-enabled dogcam and remote treat dispenser”. We certainly agree these are “similar”, right?
Then I guessed the novelty the PTAB found was probably in playing an audio sound before dispensing a treat. I was right about that, which you can confirm by reviewing the IPR petition decision. Did I defraud anyone yet? Did I say anything wrong yet?
Do you think playing a sound before giving a dog a treat was novel in 2012?
Just because you think the patent system is broken against patentees doesnt mean you think every patent is good, right?
“and I’m not sure where your vitriol is coming from.”
whose “vitriol” are you asking about?
You may be new here, prntscprntsc, but Malcolm (and Malcolm’s vitriol) is most definitely not, as he preceded me by at least 8 years.
He started out as Malcolm Mooney, shortened it to Malcolm, and shortened that to MM during a 15 year stretch of utter cognitive dissonance of being ANTI-patent.
Just at about his 15 year anniversary, he disappeared for about 14 months (even sparking rumors of his demise).
Upon his return (and to us regulars, his stench/style is rather easy to pick out), he tried a number of monikers before settling in on The Prophet.
It’s not the first time he’s used multiple monikers, even as he himself labeled such multiple use as “THE WORST THING EVER” – and at the same time he was pulling that very stunt over at PatentDocs — until I nailed him for doing so.
If in your newness, you are puzzled by the vigor of PL’s callout – it is only because you lack understanding of the context of WHY that callout was made (and why that callout is very much justified).
Just went and read the IPR. Indeed, the novelty the board found was in playing an audio signal to let the dog know a treat was coming.
Ringing a bell to let a dog know he is getting a treat. Novel. In 2012. “Beyond brilliant.”
Pavlovian?
I could swear that The Jetson’s dog, Astro, had something similar. That’s 40 plus year old prior art right there.
Really?
You think going for a fictional thing ought to work?
When I was an Examiner, the Patent Academy instructors taught us that the Dick Tracy cartoon from the 1930s was prior art for a two-way radio worn in the style of a wristwatch. Prior art comes from all sorts of places. One can argue that the original Buck Rogers stories from the 1920s disclosed online commerce and Zoom conferencing. All at a very high level, of course, but disclosed nonetheless.
“ All at a very high level, of course, but disclosed nonetheless.”
In stark contrast to these super technical and detailed claims. Lol
Malcolm – I “get” that your tendency is to only write exacting picture claims (of negligible value), but even you should be aware that the it is the disclosure portion of the specification — as opposed to the claim section — that ANY such “super technical and detail” belongs, eh?
The specifics most definitely belong in the claims when the generalities were disclosed in the prior art.
Move the goalposts back.
What you (appear) to be really whining about is P00r examination – the central as you hurry to blame the patent holder.
Patent academy instructors were wrong.
I know, go figure, right?
They weren’t wrong.
Yes, Malcolm, yes they were.
We’ve been over this.
Science fiction is not prior art (the word “fiction” gives it away).
This is different than the fact that — generally speaking — good science fiction will include non-fiction elements (these non-fiction elements MAY serve as prior art). But equally as generally, if you are going to go for those non-fiction items, better non-fiction prior art is available.
The fiction potions are NEVER prior art.
Period.
Well, if you have case law stating that descriptions in fictional works are never prior art, then please provide case citations.
Don’t have them at my fingers, but the “magic words” are “they are good for what they actually teach.”
In patent patience, this has a most definitely NOT what they merely”disclose.”
Beyond that, I trust that you understand what the term “fiction” means.
Another hint for you: remember that “teaching” includes enabled.
Remember that as you circle back to that definition of “fiction.”
A reference is good for what it teaches. To go back to my original example, two-way radios existed in the age of the Dick Tracy cartoon strip. They just were not small enough to be mounted on a wristwatch band.
So, if someone claimed a two-way radio mounted on a wristband, then the Dick Tracy cartoon provides sufficient grounds for rejection as it showed a two-way radio mounted on a wristband, and that would have been enablement enough for the POSITA who understood how two-way radios work because, at the very least, the claim is obvious in view of the Dick Tracy cartoon. While the image of someone attaching a 1930s size two-way radio and lugging it around on a wristband is ludicrous, I’ve seen worse from Examiners that they got away with.
“Under § 103, however, a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein. […] On remand, the district court should reconsider obviousness with respect to Sugimoto, but should do so without reference to whether Sugimoto is enabled, as enablement of the prior art is not a requirement to prove invalidity under § 103.”
(note the use of “disclosed” and not “teach” or whatever you are trying to argue).
Amgen v. Hoescht link to scholar.google.com
(Of course as a whole, OOSA has to have reasonable expectation of success, etc. which requires as a whole there is enablement, but individual references do not need to be enabled and are good for whatever they “disclose” for obviousness purposes).
Also, the Jetsons would even be available as *anticipating* prior art reference (102) provided that:
(1) The jetsons disclosed a (at the time fictional) robotic dog feeder; and
(2) as of 2012, a POSITA could have made the disclosed robotic dog feeder.
This is uncontroversial stuff. The “enablement” test for prior art is at the time of the later invention, not at time of publication of prior art. Something can be non-enabled as of publication but enabled as of a later invention date. This should not be controversial here.
There is some serious “getting-it-wrong” from ipguy and prntscprntsc here.
For all that it teaches — AT the date of that item —never becomes effective for later developments that may enable what — AT the date of that item — is fiction.
The date that CAN be used is the OTHER date of whatever OTHER thing that has developed that may provide an enabled NON-FICTION item.
(that ‘expectation of success’ IS the same thing as recognized that the item is NO LONGER fiction)
I mean I never said anything about the date at which fictional art would become effective as prior art— which is obviously the date at which enablement/reasonable expectation of success occurs—so I have no clue why you say “I got that wrong.”
Anyway you seem to agree the jetsons can be prior art for a 2012 invention, which is what started this whole thing…
Ipguy is spot on about that cartoon being a valid reference backed up by the knowledge of a person of ordinary skill. However, what’s good at the USPTO may not work in a district court.
This is the fraud that I am taking about,
Prophet, as you basically see nothing as patentable and always seem to think that a patent application is obvious . Now, do you tell your clients about me your jaundiced views about what you consider to be patentable or not? I doubt it; rather , my guess is that you eagerly take their money and draft a patent application for them that you feel deep inside is dumb/super obvious.
Comments are closed.