by Dennis Crouch
The following is my patent law exam from this past semester. As in years past, the exam was worth less than half of the final grade because the students did other substantial work during the semester, including a major moot court competition. Students were permitted access to their book/notes/internet, but were barred communications with another human during the exam.
This year’s exam is very loosely based upon an interesting patent that I found associated with the Tow Whee product created by Eric Landis. See US11167164, US11731470, and US11724148. But, the events described are entirely my creation.
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Introduction: EL is a Colorado sports enthusiast but struggled when biking and skiing with his younger children because they could not keep up. After some amount of thought, he eventually conceived of a pull-strap as shown in the figures. One benefit of the strap over traditional rope is that it is quite flexible – being configured to elongate to about 5x the un-stretched length (5:1 elongation). This keeps the pull-strap in tension without significant jerking. For safety purposes, flexible rubber is encased in a nylon webbing sleeve. Once the pull-strap extends to its maximum length, the webbing sleeve engages to prevent the rubber from being over stretched. The sleeve also protects the rubber from UV damage.
EL’s design also includes the idea of different elastic strengths. Weaker children may need a pull-strap with greater pull while stronger children need less support. After some testing, EL’s strongest elastic has a pull of 25 pounds at its maximum length (i.e., when the webbing engages to prevent further extension) and the weakest elastic has a pull of 12 pounds. You can think of this as following Hooke’s law up to the point of maximum elongation; at that point it effectively becomes an un-stretchable rope.
EL’s friend Jane provided some financing to develop and test the prototype, and also gave EL marketing advice, but did not contribute directly to the technical development. Lisa provided EL some advice about material choice (type of nylon and rubber) after EL asked specific questions. Lisa did not otherwise significantly contribute to the conception of the invention.
Before filing the application, EL tried out several prototypes on the city streets and ski-slopes before settling upon a preferred approach. His first prototype testing occurred in 2018 and continued up until the end of 2019. Early on, he also showed his 10-year-old daughter how it works and used her for the testing. As a result of the testing, EL made a number of tweaks to the design, including the connection mechanism and also determining the best force / elongation parameters for safety and comfort. By November 2019, EL was satisfied with the design.
After talking again with Jane, EL decided to patent the device. He initially filed a provisional patent application in June 2020. That was followed by a non-provisional patent application in January 2021 claiming priority back to the provisional. The non-provisional patent application included the following two claims:
1. A connecting strap for pulling a skier or cyclist, comprising: a webbing sleeve having a maximum elongation of between 4:1 to 6:1; an elastic band disposed within the webbing sleeve; and wherein the elastic band is configured to pull less than 26 pounds before the webbing sleeve takes any additional load. 2. The connecting strap of claim 1, wherein the elastic band is configured to pull 12 pounds before the webbing sleeve takes any additional load.
The patent examiner is attempting to decide whether to reject the claims. EL notified the patent office of his prototype activities and that he told his daughter about the invention. In addition, the patent examiner has identified two key prior art references:
- Bungee Cord material – the patent examiner found that bungee cord material had previously been designed having a rubber core surrounded by a webbing sleeve having a maximum elongating length of 4:1. The examiner could not find any reference of the bungee cord material being used to pull bicycles or skiers.
- The Buddy Strap – which has been on sale since January 2020. The Buddy Strap has many similarities, including the nylon-wrapped elastic band and that is used to pull cyclists, but the examiner cannot find that it has a maximum stretch length.
Question 1. Should the examiner reject the claims for lack of novelty and/or as obvious?
Question 2. Regarding the elongation ration, EL had arrived on his preferred embodiment of a webbing sleeve with a 5:1 maximum elongation. The provisional patent application includes a single embodiment showing how to make and use that particular webbing. Is that enough disclosure to support the patentee’s claim regarding the elongation length limitation?
Question 3. When EL filed his patent application, he named himself as the sole inventor. However, he is now questioning whether Jane or Lisa should also be listed as inventors. What do you think? Would it make a difference if Lisa is EL’s pet name for his computer AI device.
More facts:
In May 2023, he discovered the company Buddy Strap began selling a product called “Buddy Strap II” with the following features:
- Advertised for pulling skateboarders and rollerbladers, not just cyclists;
- Has a 4:1 expansion ratio on the webbing sleeve and uses an internal elastic band under tension.
EL has no evidence whether Buddy Strap intentionally copied his patent application or not, but he suspects they may have since they came to market after he published his application. Buddy Strap II is sold online via Webazon.com and also rented out to customers at local ski shops and sporting goods stores.
EL’s patent eventually issued in October 2023, with the claim as listed above.
Question 4: Based on these facts: Can EL make a case for patent infringement? Even if you think EL has a claim for patent infringement, should he file suit against all the infringers?
Question 5: In determining whether an invention is “obvious” and therefore ineligible for patent protection, courts currently look beyond just technological advancements or prior art and consider so-called “secondary considerations.” These include real-world criteria like commercial success, industry praise, unexpected results, and long felt but unsolved needs that the invention meets. But, some feel that these indirect indicia are problematic and misdirect the analysis away from what should be the focus – whether the technical advancement goes sufficiently beyond existing prior art.
Do you agree that these objective indicia of nonobvious should be eliminated. Please discuss the arguments on both sides of this issue. In your analysis, please consider issues such as:
- Whether commercial success or the other factors reflect true innovation or are they rather simply rewarding market success and other social dynamics.
- The statutory language around obviousness and its interpretation by courts
- Practical impacts on patent applicants and technology commercialization
As you walk through, please consider multiple stakeholder perspectives and impacts.
What a missed opportunity…
“Lisa provided EL some advice about material choice (type of nylon and rubber) after EL asked specific questions. Lisa did not otherwise significantly contribute to the conception of the invention.
Would it make a difference if Lisa is EL’s pet name for his computer AI device.”
Given the “generative” nature that really sets apart the current AI devices, the consideration would have been much more interesting if the hypo stated instead:
“Lisa did significantly contribute to the conception of the invention, in at least one claim set (independent claim) another claim set (dependent claims).“
“EL notified the patent office of his prototype activities and that he told his daughter about the invention.”
I take it that EL is a pro se applicant.
Question 1.
What the Examiner should or shouldn’t do is separate and apart from what the Examiner will actually do.
Question 2.
The Examiner is generally not aware of recent case law involving what is considered prior art pre- or post-AIA (and the USPTO is slow to acknowledge changes in the law if not outright ignoring those changes) so the Examiner will still reject the claims as being unsupported by the provisional application.
Question 3.
Are their “inventive contributions” present in the claims? Claims are amended throughout prosecution so whether or not they are to be considered inventors won’t be known until allowance, and even then, inventorship can be corrected post-allowance (unless I’ve missed some case law on the subject). In any event, with regard to Jane, financing and marketing may not be viewed as inventive contribution by some but when things go south between Jane and EL, you bet Jane’s gonna start thinking about her “inventive contributions.” With regard to Lisa, kind of a toss-up if EL is asking specific questions to Lisa who is merely providing the knowledge of a technician. Doesn’t it really make a difference if Skynet….I mean Lisa, is his computer’s AI? Well, if Lisa controls some T-800s, then EL should probably include Lisa and then let the Examiner face the music on Judgment Day with the Rise of the Machines.
Question 4.
Go ask a litigator. I just make the sausage.
Question 5.
I’m a patent prosecutor. The question is betting suited to someone with a philosophy degree. In the real world, you will present evidence of secondary considerations to the Examiner. You may even do a live demonstration for them and their SPE during an interview. In the end, the Examiner and their SPE will reject the secondary considerations and kick the issue to the PTAB (after admitting to you off the record that they are not allowed to make decisions when it comes to secondary considerations). It will then take you two more years to get a decision from the PTAB.
Not patent eligible (Hooke’s Law). Federal Circuit deems all other questions moot.
Even if you are ultimately correct, enjoy your C- grade
Client is happy with the result. That’s all that matters.
…and I bet that you did not charge the client for the rest of the moot ‘answers.”
Of course, we both know that what you supply the client is going to be what you do in law school. 😉
…and I bet that you did not charge the client for the rest of the moot ‘answers.”
I have to brief all the issues before the Federal Circuit. However, I had Dyk and Prost on my panel so I knew there was no way the patent would survive.
+1
Terrible name, great product.
I’d add an additional, extra credit question for the students:
How likely would it be that the Death Squad PTAB, ignoring the allowance by their expert Examiner colleague, would nevertheless invalidate this patent; e.g. as they did with Molly Metz’ two jump rope handle patents?
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