Illusion Systems

Mike Brister is a theme park designer and I love his 2022 patent directed to a “vanishing illusion system.”  U.S. Patent No. 11,235,258 .

The basic idea is that a portion of the glass is reflective while other portions are transparent. But, the room on the other side is a mirror-image room–identical except that for the person trying to see himself in the mirror. A higher tech-version involves moving the mirror/transparent portions for various effects.

Patent examiner issued a first-action allowance on the following claim:

1. A system for generating a vanishing illusion, the system comprising: a first room; a second room, wherein the second room mirrors the first room; a wall separating the first room from the second room, wherein the wall comprises: a transition glass comprising a mirrored portion and a transparent portion; and a frame through which the transition glass is configured to move; and an actuator configured to move the transition glass with respect to the frame such that the mirrored portion is in alignment or out of alignment relative to the frame based on a trigger or a condition being met.

= = = =

Query: If an illusionist had used something similar to fool audiences in public performances, would it be prior art?

You can find a great post on magical patents from Leopoldo Belda Soriano on his blog: Magical Patents.

MAGICAL PATENTS (When magic is patented)

21 thoughts on “Illusion Systems

  1. 7

    I realize that this is not really responsive to the call of Prof. Crouch’s question, but query whether a magic trick is actually “useful” within the definition of the first statutory requirement for patentability. I realize that one can find granted patents on magic tricks, but I am not aware of any actually surviving a validity challenge when enforced. I am not really all that certain that—if this patent were enforced—it could survive a challenge on utility grounds, regardless of the prior art situation.

    1. 7.1

      Entertainment is a use.

      1. 7.1.1

        In that case, could the producers of The Usual Suspects have patented the movie if they had filed on it before the cinematic release? It was novel and non-obvious.

      2. 7.1.2

        Greg (“Dozens”) ployed the same argument awhile back against games.

        On the other hand, a case that was heard in the courts was one involving a “fake” display (for a beverage vendor as I recall). Certainly, the utility there was met — which serves to remind all that utility is supposed to be a Very Low Bar.

        1. 7.1.2.1

          Low indeed. One Asst. Commissioner of Patents once commented [informally] that if a patented item can serve as a paperweight it meets the 101 “useful”[utility] requirement.
          There have been many thousands of patents on games and toys, some also successfully litigated.

          1. 7.1.2.1.1

            Does “successfully litigated” mean that the patents were held valid and infringed? If so, can you cite the example(s) that you have in mind?

        2. 7.1.2.2

          It was Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir. 1999)

          1. 7.1.2.2.1

            Thank you – yes, that’s exactly the case I had in mind.

  2. 6

    “If an illusionist had used something similar to fool audiences in public performances, would it be prior art?”

    Why wouldn’t it be? Is the question actually whether it would be anticipating prior art? If so, I’d say no. The performances teach the illusion but not the mechanism for the illusion.

    1. 6.1

      I agree, the question-as-posed misses the interesting bit. 35 USC 102(a)(1) defines prior art as content that was “in public use.” The hypothetical assumes “public performances.” It seems very difficult to argue that a “public performance” is not a “public use” under 102(a)(1).

      The more interesting question is certainly whether it would be invalidating prior art. Per Comment 3, we then get into questions of enablement (for anticipation) or what a POSITA would view as being taught or suggested by the performance (for obviousness).

      As comment 3 notes, the question of estoppel/Metalizing engineering also seems related at first, though I’m not sure they would apply given that the hypo assumes a difference in parties.

  3. 5

    if the illusionist charged money the invention was on sale = prior art. Just my gut instinct

    1. 5.1

      Does selling tickets to a moving picture show create an on sale bar to a claim covering the projector used to display the moving pictures?

    2. 5.2

      The issue here is 102 “public use” not “on sale.” The subject device is not on sale here.

  4. 4

    Ha! The CAFC could make this patent disappear in a magician second.

    Poof! Now you see it, now you don’t!

  5. 3

    For further confusion on this issue of commercial prior “public use” that does not disclose enablement see MPEP 2152.02(c):
    “Under pre-AIA 35 U.S.C. 102(b), the uses of an invention before the patent’s critical date that constitute a “public use” fall into two categories: the use either “(1) was accessible to the public; or (2) was commercially exploited.” [N.B. the “or”] See American Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 1267, 85 USPQ2d 1683, 1685 (Fed. Cir. 2008) and MPEP § 2133.03(a). Whether a use is a pre-AIA 35 U.S.C. 102(b) public use also depends on who is making the use of the invention. “[W]hen an asserted prior use is not that of the applicant, [pre-AIA 35 U.S.C.] 102(b) is not a bar when that prior use or knowledge is not available to the public.” See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371, 47 USPQ2d 1363, 1366 (Fed. Cir. 1998). In other words, a use by a third party who did not obtain the invention from the inventor named in the application or patent is an invalidating use under pre-AIA 35 U.S.C. 102(b) only if it falls into the first category: That the use was accessible to the public. See MPEP § 2133.03(a), subsection II.C. On the other hand, “an inventor’s own prior commercial use, albeit kept secret, may constitute a public use or sale under [pre-AIA 35 U.S.C.] 102(b), barring him from obtaining a patent.” See Woodland Trust, 148 F.3d at 1370, 47 USPQ2d at 1366 and MPEP § 2133.03(a), subsection II.A. Also, an inventor creates a public use bar under pre-AIA 35 U.S.C. 102(b) when the inventor shows the invention to, or allows it to be used by, another person who is “under no limitation, restriction, or obligation of confidentiality” to the inventor. See American Seating, 514 F.3d at 1267 and MPEP § 2133.03(a), subsection II.B. Further, under pre-AIA 35 U.S.C. 102(a), “in order to invalidate a patent based on prior knowledge or use” by another in this country prior to the patent’s priority date, “that knowledge or use must have been available to the public.” See Woodland Trust, 148 F.3d at 1370, 47 USPQ2d at 1366 and MPEP § 2132, subsection I. Patent-defeating “use,” under pre-AIA 35 U.S.C. 102(a) includes only that “use which is accessible to the public.” See id. (quoting Carella v. Starlight Archery, 804 F.2d 135, 139, 231 USPQ 644, 646 (Fed. Cir. 1986)). As discussed previously, public use under AIA 35 U.S.C. 102(a)(1) is limited to those uses that are available to the public. The public use provision of AIA 35 U.S.C. 102(a)(1) thus has the same substantive scope, with respect to uses by either the inventor or a third party, as public uses under pre-AIA 35 U.S.C. 102(b) by unrelated third parties or others under pre-AIA 35 U.S.C. 102(a).

    1. 3.1

      For further confusion throw in Learned Hand’s Metalizing Engineering doctrine, adopted by the Fed. Cir., and the debate over whether the AIA somehow rejected it or not. But, that doctrines usual fact situation is about products commercially made by a secret process and commercially sold for a long time where the products themselves do not disclose the secret process. Also, that doctrine is a personal estoppel against late patenting of the secret process, NOT 102 prior art.

      1. 3.1.1

        Now, after all that, note that if a magician let any of the people carrying around this big magic device, including its packers and shippers, look at it without having signed a confidentiality agreement, that may trigger “public use?”

  6. 2

    I agree. A magic trick would not be publicly documented showing claim elements. Those would be a trade secret.

    1. 2.1

      Good point – a magic trick so “evident” as to enable itself from what is shown would not be a trick worth protecting in the first place.

      It is the very essence of “how the heck did that happen” that brings the value to any particular magic trick.

  7. 1

    Considering how magicians generally take the secrets of their best tricks to the grave with them, how could you prove that a prior performance of a trick was prior art? That definitely presents an interesting conundrum.

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