Patent Law Blog (Patently-O)

Patently-O Scholars

There are a couple of interesting new patent papers:

Linguistics and Claim Construction by Kristen Osenga (available here).  

Professor Osenga explores linguistic theory for truths that can be applied to claim construction.  She writes about five particular “notions” that could be used to make claim construction more consistent:

1) every reader, including a judge, possesses a mental lexicon with a common sense (or conventional) understanding of word meaning which is a point from which to start when interpreting claims;

2) there is an appropriate place for dictionary usage, which is to inform the judge’s common sense understanding about a word where he has none;

3) patent claims have their own grammar which must inform the syntactical and contextual analysis, but may also skew the reader’s common understanding that was obtained either from a mental lexicon or from a dictionary;

4) regardless of the common sense understanding, the PHOSITA must be returned to the analysis and changes made to the law to effectuate the return of the PHOSITA; and

5) extensive resort to the specification and prosecution history to divine the patentee’s intent is inappropriate.

Patent Metrics: The Mismeasure of Innovation in the Biotech Patent Debate by David Adelman and Kathryn DeAngelis (available here).

Adelman and DeAngelis have written what they claim to be “the first comprehensive empirical study of biotechnology patents.”  Their conclusions — there is little evidence that the rise in biotechnology patenting is adversely affecting innovation. The pair also provides a general criticism of “the current enthusiasm for empirical” at the expense of exploring “the obvious complexity of innovative processes.”

CAFC: Gross Negligence Does Not Constitute Inequitable Conduct

M. Eagles Tool v. Fisher Tooling (Fed. Cir. 2006, 05–1224).

On summary judgment, the district court found that Fisher’s patent was unenforceable due to inequitable conduct.  Specifically, the court found that a device that the patentee had been selling for twenty years contained many of the same components present in the patented invention and thus would have been material to the examiner’s analysis.  It was also undisputed that the inventors were familiar with the prior-art device.

On appeal, the CAFC took an opportunity to caution against overzealous findings of inequitable conduct:

Although it is not impermissible to grant summary judgment of inequitable conduct, this court "urges caution" in making an inequitable conduct determination at the summary judgment stage.

Here, the patentee took the position that “even if the failure to disclose the [prior art] constituted gross negligence, that cannot be the sole basis for finding an intent to deceive.”  The CAFC agreed.

The district court’s finding of inequitable conduct . . . essentially amounted to a finding of strict liability for nondisclosure. Such is not the law. Even if there were evidence of gross negligence in nondisclosure, which was not found, that would not necessarily constitute inequitable conduct.

Reversed.

Website: Comprehensive Intellectual Property Law Book Reviews

James Hawes is an intellectual property attorney with more than 40 years experience in all aspects of IP.  For many years, Hawes has been at the forefront of IP practice — he has been the President of the National Inventors Hall of Fame, the Los Angeles Intellectual Property Law Assn., and on the Board of the AIPLA. Hawes also has four books published by West (including our Patent Application Practice, 2nd ed.). Now, through HSC Press, Hawes has developed a new website called IP Law Book Reviews. From the Press Release:

IP Law Book Reviews is a compilation of all currently published Intellectual Property books for practicing IP attorneys. At present there are more than 170 IP books cited and reviewed on the website. Each review includes the cost of the book, its updating frequency and update costs, actual or projected, as well as a candid, descriptive review of the book, often comparing it to other similar books and discussing its suitability for use by practicing IP attorneys.

Until now collecting all currently published IP books on a particular topic has been a real challenge. Many, but not all, IP book publishers mail flyers describing some of their books. Some also call IP attorneys from time to time. A Google search on the internet turns up a lot of IP books. But until IP Law Book Reviews there has not been a single compilation of all IP books now being published. In addition, few publishers give complete information about their books. Often they are described in sort of a generic marketing language. IP Law Book Reviews describes the coverage of each book reviewed in a way IP attorneys will welcome, and compares the book to other, similar books. It also gives the basic purchase and update costs for the book, and has a link to the publisher to expedite purchasing the book.

Check out the site – www.IPlawbookreviews.com. Take a look at your favorite IP books, and submit your own review if you like. The publisher welcomes all user reviews, and says that many will be included to give other IP attorneys a well-rounded description of the books reviewed.

If you are a publisher of IP books, check out the site to make sure your books are there and that what is said about them is accurate. Also, the publisher welcomes advertising and alliances with others in the IP field.

Supreme Court Asked To Determine Extraterritorial Scope of U.S. Patent Laws

Microsoft has given the Supreme Court its third opportunity in as many years to tackle the Federal Circuit’s controversial interpretation of 35 U.S.C. 271(f). That statute allows a U.S. patentee to collect damages for foreign sales of a patented invention based on the export of one or more of its components.  The statute has been extended to the export of software code (AT&T, Eolas) as well as to the export of elements used in a patented method (Union Carbide).

In Microsoft v. AT&T, the software giant has asked the Court to answer:

1. Whether digital software code . . . may be considered a “component[] of a patented invention” within the meaning of Section 271(f)(1); and
2. Whether copies of such a component made in a foreign country are “supplie[d] . . . from the United States.”

Here, Microsoft’s software code was generated in the U.S. and then shipped abroad where copies were generated.  AT&T claims (and courts have thus far agreed) that sales of those foreign copies infringe the U.S. patent and create liability.  If it stands, this case could have far-reaching effects in the fields of biotechnology (DNA/cell replication) as well as foreign piracy (shipping product from the U.S. to reverse engineer and copy in a foreign country).

From a business perspective, this interpretation of the statute gives business executives another reason to send software jobs overseas.  If the component was not exported from the U.S., there will be no damages under 271(f).

Important recent 271(f) cases:

• NTP v. Research in Motion, (271(f) “component” would rarely if ever apply to method claims).
• AT&T v. Microsoft, 414 F.3d 1366 (Fed. Cir. 2005) (271(f) “component” applies to method claims and software being sold abroad);
• Eolas v. Microsoft, 399 F.3d 1325 (Fed. Cir. 2005) (271(f) “component” applies to method claims and software);
• Pellegrini v. Analog Devices, 375 F.3d 1113 (Fed. Cir. 2004) (271(f) “component” does not cover export of plans/instructions of patented item to be manufactured abroad);
• Bayer v. Housey Pharms, 340 F.3d 1367 (Fed. Cir. 2003) (271(g) “component” does not apply to importation of ‘intangible information’).

Documents:

• File Attachment: Microsoft Petition for Certiorari (1540 KB) (Thanks to Hal Wegner for providing a copy).

Product-by-Process Patent Must be Directed to New Product

SmithKline Beecham v. Apotex (Fed. Cir. 2006, 04–1522).

SmithKline’s U.S. Patent No. 6,113,944 is directed to paroxetine (Paxil) made through an allegedly novel process (product-by-process). In 1998, Apotex filed its ANDA and paragraph IV certification asserting that the patent was invalid — thus provoking action from SmithKline.

On summary judgment, the district court found the patent invalid as anticipated by prior knowledge of paroxetine. Specifically, the lower court determined that the claimed process steps were not limiting.  Thus, any prior disclosure of the end-product was anticipating.

Product-by-Process: On appeal, the CAFC affirmed, finding that product-by-process claims cannot recapture the end-product from the public domain.

[O]nce a product is fully disclosed in the art, future claims to that same product are precluded, even if that product is claimed as made by a new process.

This rule of law follows the MPEP, which states that:

[Even] though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.

MPEP § 2113 (8th ed., Rev. 2, May 2004) (quoting In re Thorpe, 777 F.2d at 698).

Differences from Prior-Art Product: In a footnote, SmithKline’s attorneys noted that the product made through the claimed process is actually different (lacked a pink hue and did not contain spherical granules).  The district court ignored these differences because they were “not required by the patent claims or specification.” 

However, the appellate panel the differences at least interesting — “If those product-by-process claims produced a different product than that disclosed by the [prior art], there would be an argument that the [prior art] disclosure did not anticipate.” In the end, the panel refused to consider the issue because it was only raised in a footnote:

This footnote is the only statement that even approaches a substantive argument on novelty in the entire Argument section of SmithKline’s opening brief. . . . We find that these mere statements of disagreement with the district court as to the existence of factual disputes do not amount to a developed argument. . . . Further, arguments raised in footnotes are not preserved.

Invalidity affirmed.

PTO Rule Change: Reexamination Filing Date

On February 23, 2006, the USPTO published a rule change titled “Clarification of Filing Date Requirement for Ex Parte and Inter Partes Reexamination Proceedings.”  The rules are being revised to specifically require that requests for reexams must “meet all the applicable statutory requirements before a filing date is accorded to the request.”  The rule change will be effective March 27, 2006, although comments will be accepted until April 24, 2006.

According to 37 C.F.R. 1.510(b), a request for reexamination must include the following parts:

(1) A statement pointing out each substantial new question of patentability based on prior patents and printed publications.

(2) An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which reexamination is requested. If appropriate the party requesting reexamination may also point out how claims distinguish over cited prior art.

(3) A copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2) of this section accompanied by an English language translation of all the necessary and pertinent parts of any non-English language patent or printed publication.

(4) A copy of the entire patent including the front face, drawings, and specification/claims (in double column format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of a sheet of paper.

(5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office.

USPTO NEWS: Changes to private PAIR and electronic filing

The USPTO unveiled yesterday a revised version of private PAIR (PAIR 6.0). A highlight of the updated system includes a direct login feature that allows access to Private PAIR through a web browser window, rather than having to access through USPTO Direct. In theory, this would allow one to access PAIR from a remote computer as long as he or she has copied their EPF file to that particular computer. Another noted feature is an estimated date for issuance of a first Office action. This is intended to save practitioners from having to make status inquiries to the Office by mail.

A replay of yesterday's USPTO presentation can be viewed at: http://webex.client.ninesystems.com/uspto

Also announced in yesterday's presentation, but not in detail, is a new electronic filing system that will allow applicants to file electronically using PDF files. This electronic filing system is scheduled for a March 17 release. The program will also provide nearly instantaneous verification and validation of applications, an option to pay fees by deposit account charge, and a printable filing receipt which will have the same force as an Express Mail filing receipt and stamped postcard. The PTO should have more information on the new electronic filing system in the coming weeks.

NOTE: This USPTO News Update was written by Christopher Singer.  Chris has a PhD in bio-inorganic chemistry from Northwestern University and is a patent attorney at MBHB.  [Singer Bio]

NTP v. RIM -- Pending Injunction

February 24, 2006 is a big day in the ongoing NTP v. RIM BlackBerry dispute. The District Court may issue its decision on an injunction at the scheduled hearing.  NTP’s patents continue to be rejected at the PTO, but the PTO’s decision may be found worthless until it is eventually made final.

News Reports:

• NTP, RIM exchange final barbs
• Day of Reckoning in BlackBerry Courtroom Drama
• RIM Injunction Unlikely? Think Again
• NTP stirs up more drama with RIM
• NTP's existing settlement terms unacceptable: RIM
• Patent office issues final rejection of NTP patent

Quotes from the articles:

• “Research In Motion Ltd. will probably be ordered to halt most of its U.S. BlackBerry e-mail service after a judge hears arguments today on a proposed shutdown.” Bloomberg News
• “In my 30 years of practice, I've never seen an accused infringer take a harder line in the face of a potential injunction that could cripple its business,” San Diego patent attorney John Benassi
• “The least likely thing to happen is that at 5 p.m. Friday (today) everybody's BlackBerry is going to get shut off.” Scott Creasman, Powell Goldstein
• “[Judge Spencer is] quick to make up his mind.” Jim Stuckey (Former clerk).
• “There are no legal reasons why the judge shouldn’t [grant the injunction].” Richard Kelly, Oblon Spivak.
• “If its software design-around was really a satisfactory option and plainly does not infringe, I believe they would have distributed it months ago.” George Wheeler, McAndrews Held Malloy.
• “The judge does not appear phased by the [PTO’s] reexamination of the patents, and is not giving in to the government's efforts to slow the process on hardship grounds.” Douglas Miro

Supreme Court to Determine Licensee's Right to Sue for Declaratory Judgment of Invalidity or NonInfringement

MedImmune v. Genentech* (Supreme Court 2006).

The Supreme Court has granted certiorari to determine when a patent licensee in good standing can challenge the validity of a patent.  In two separate opinions, the CAFC dismissed MedImmune’s cases — holding that a licensee has no standing to sue for declaratory judgment because it is not under threat of being sued for patent infringement.

This issue harks back to the 1969 Lear v. Adkins case that limited the ability of a licensee to sign-away its right to later challenge the validity of a licensed patent.  In Lear, the High Court found that the public’s interest in invalidating bad patents was strong enough to warrant a limit on the licensee’s ability to give up its future right to challenge validity. 

The question presented is:

Does Article III’s grant of jurisdiction of “all Cases . . . arising under . . . the Laws of the United States,” implemented in the “actual controversy” requirement of the Declaratory Judgment Act, 28 U.S.C. 2201(a), require a patent licensee to refuse to pay royalties and commit material breach of the license agreement before suing to declare the patent invalid, unenforceable or not infringed?

* A second petition MedImmune v. Centocor is also pending before the Court with the parallel question of: 

Does the “actual controversy” requirement of the Declaratory Judgment Act, 28 U.S.C. 2201(a) require a material breach of a license agreement by a licensee prior to suit for declaratory relief for patent infringement, invalidity, or unenforceability?

Documents:

• MedImmune’s Genentech Petition (6509 KB)
• MedImmune’s Centocor Petition
• Centocor’s Opposition to Certiori
• MedImmune’s Centocor Reply

Links:

• CAFC Decision in MedImmune v. Genentech;
• CAFC Decision in MedImmune v. Centocor;
• Lear v. Adkins;
• Professor Miller’s comments.

New IP Blogs

Link: The Intellectual Property Owners Association (IPO) is one of the most powerful and respected IP association. Marc Adler, president of the IPO has started a blog with the goal of providing a discussion forum for the IP community.

Link: The IP Institute at the University of Richmond Law School has started the “Richmond IP Blog” (beta) and appears to be focused primarily on tech-copyright issues.

Link: Mark Reichel, an associate at Ice Miller has started his “Daily Dose of IP.”

 

 

Design Patents: References are Properly Combined in Point of Novelty Test Without Motivation

Lawman Armor v. Winner Int’l (Fed. Cir. 2006, 05–1253).

To show infringement, a design patent holder must satisfy two separate tests: (a) the ‘ordinary observer’ test and (b) the ‘point of novelty’ test.

The "ordinary observer" test requires comparison of the two designs from the viewpoint of the ordinary observer to "determine whether the patented design as a whole is substantially the same as the accused design." 

Under the "point of novelty" test, a court must determine whether "the accused device . . . appropriate[s] the novelty in the patented device which distinguishes it from the prior art."

Regarding points of novelty — Lawman pointed to eight specific points of novelty of its patented design for the sliding hook portion of a vehicle lock. On summary judgment, the district court found that all eight points of novelty could be found in a combination of prior art references.  As a consequence, the lower court ruled that the patent was not infringed.

Lawman appealed, arguing that there was no suggestion to combine the references in the art.  The CAFC, however, affirmed, finding that, for the point of novelty test, multiple references can be combined without any prior suggestion or motivation for doing so.

What Lawman’s contention comes down to is that the D’621 patent contains a ninth "point of novelty," namely, the combination in a single design of the eight non-novel "points of novelty" it embodies. This argument is inconsistent with, and would seriously undermine, the rationale of the "points of novelty" test.

Supreme Court Denies Phillips v. AWH Petition for Certiorari

Phillips v. AWH Corp. (Supreme Court).

The Supreme Court has denied AWH’s bid for certiorari on the question of whether “all aspects of a district court’s patent claim construction may be reviewed de novo on appeal.”  That single rule of law has often been cited as the primary reason for the unusually high reversal rate of patent cases.

• Phillips v. AWH on petition for certiorari;
• Phillips v. AWH petition briefing complete.

President's Day Patent

Abraham Lincoln is the only U.S. President to have received a patent.  His invention involved inflatable air chambers on a boat to help float the boat through low water or over sandbars.

Book Review: Math You Can't Use

Math You Can’t Use
by Ben Klemens

$19 from Amazon

Klemens is a scholar, but doesn’t really write like one — rather he tells a story and wraps the story around his argument.  His bottom line argument is that software should not be patentable. Here are some of his arguments:

1) Software is simply math (Church-Turing thesis) and math is not patentable.  His conclusion — that software should therefore be unpatentable — strikes me as odd.  Klemens leads us down the parade of horribles of granting 15 years of exclusivity to mathematical algorithms.  The bad results are (a) mathematicians being forced to pay royalties when a patent is valuable and (b) the Church-Turing thesis itself being patented.

2) The PTO is bad at granting patents and therefore should not grant software patents.

3) Patents only work well in industries with a few major players.  The software industry is decentralized (with lots of small players) and therefore should not be covered by patents. . .

Of course, Klemens may gain more traction with his explanation of how aggressive patent enforcement could kill the internet as a whole.

Notes:

• Grawklaw review;
• Read Chapter 6 for free.

J. Newman: Inequitable Conduct Charges Again on the Rise

Ferring v. Barr Labs (Fed. Cir. 2006).

The Ferring decision seems to have again expanded the scope of inequitable conduct in patent cases.  In a twenty-page dissent, Judge Newman took issue with this expansion.

I agree with J. Newman that inequitable conduct is “a serious charge” that should not be taken lightly. In the past, the defense has been “grossly misused . . . with inequitable conduct charged in almost every case in litigation.”  Certainly, these charges do nothing to help the current popular distrust of the patent system.

After the CAFC decision in Kingsdown v. Hollister (requiring objective evidence of material misconduct + intent to deceive), charges of inequitable conduct were pushed to the background and taken-out of many cases. However, in this decision, Newman sees a revival:

My colleagues on this panel have regressed to that benighted era, rejecting the efforts of Kingsdown to bring objectivity to charges of inequitable conduct, instead reviving the culture of attack on inventor rights and attorney reputations based on inference and innuendo. My colleagues, endorsing several novel and unsupportable presumptions of wrongdoing, do injury to the reasonable practice of patent solicitation, even as they defy the rules of summary judgment.

Here, Newman argues, the panel has found materiality based on a “should have known ” standard:

The panel majority, steeped in adverse inferences, holds that good faith is irrelevant and presumes bad faith. Thus the court resurrects the plague of the past, ignoring the Kingsdown requirements of clear and convincing evidence of a misrepresentation or omission material to patentability, made intentionally and for the purpose of deception. I respectfully, but urgently, dissent.

Links:

• Ferring v. Barr Opinion
• Patently-O Discussion of Ferring Majority Decision

PTO Requests Model of Warp Drive Invention

The Worsley-Twist warp drive does not depend upon traditional emissions of matter to create thrust.  Rather, the drive creates a change in the curvature of the space-time continuum — thus allowing travel by warping space-time.  Worsley & Twist patent application recently suffered another setback. The Examiner has now requested a working model:

Applicant is required to furnish a model of the instant invention. 35 U.S.C. 114. See Also 37 C.F.R. 1.91.

Among other rejections, the Examiner has asserted a rejection under 35 U.S.C. 101 for lack of utility — finding that the invention is inoperable.

Links:

• U.S. Pub. No. 2003–0114313;
• Earlier Discussion on Patently-O;
• Prosecution File History (25 MB).

More Interesting Patent Applications (From Keith Nagel)

• U.S. Pub. No. / Title
• 2005-110500 DEVICE FOR EXCHANGING TRANSMISSION AND RECEPTION OF FUTURE INFORMATION OF MULTI-WORLD IN-BETWEEN PAST
• 2005-102494 GRAVITY CONTROL TIME MACHINE UTILIZING ACCELERATED MOTION TO WHICH GENERAL THEORY OF RELATIVITY IS APPLIED
• 2005-101509 ULSI COMPRISING BINARY-NOTATION-SYSTEM ELEMENT FOR RETURNING ELEMENTARY PARTICLE OR ATOM TO PAST
• 2004-197727 GENERATOR USING CASIMIR POWER SUCH THAT TWO METAL PLATES PARALLELLY PLACED IN SLIGHTLY SPACED RELATION IN VACUUM ATTRACT EACH OTHER
• 2004-135253 APPARATUS FOR IRRADIATING EXCESS DIMENSION WITH GRAVITATIONAL WAVE USING BRANEWORLD THEORY IN BINARY NUMBER SYSTEM, TRANSMITTING-RECEIVING AND DECODING INFORMATION THEREFROM
• 2004-080981 APPARATUS FOR RAPIDLY ROTATING SMALL-SIZED ROD WITH ACCELERATOR TO FORM SINGULAR POINT, TO GENERATE CTL, TO PLACE FUTURE INFORMATION OBJECT THEREON AND TO SEND IT TO PAST
• 2004-032821 TRANSMITTER/RECEIVER TO PAST BY BINARY NOTATION SCALE OF FUTURE INFORMATION USING QUANTUM MECHANICS FOR RETURNING ELEMENTAL PARTICLE TO THE PAST
• 2003-198642 DEVICE FOR TRANSMITTING FUTURE INFORMATION TO PAST BY INTEGRATING LEFT ELECTRON INTO MORSE SIGNAL SYSTEM BY USING INFORMATION TRANSMITTING SPEED ZERO SECOND OF SPIN OF ELECTRON BLEW OFF RIGHT AND LEFT
• 2001-326969 FUTURE INFORMATION PAST TRANSMISSION/RECEPTION DOCUMENTING MACHINE UTILIZING LASER PULSE

Patentee Must Disclose Affiliations of Declarants

Ferring v. Barr Labs. (Fed. Cir. 2006).

By Grantland Drutchas

Ferring is a rather interesting CAFC decision on inequitable conduct. The CAFC affirmed summary judgment of inequitable conduct based solely on the applicant's failure to disclose that individuals who submitted declarations in support of the patentability of the claims had affiliations with the assignee of the application.

One of the declarants was an employee of the assignee, one was a paid consultant; but the third was simply a researcher (presumably a clinician) whose employer had assisted with some clinical studies for the assignee and received some funding for those clinical studies from the assignee. The CAFC found the failure to disclose each of these relationships was material.

The appellate panel also held that an inference of intent can be found when the patentee fails to show a "credible explanation" for the patentee's deception of the PTO. Importantly, the Court found that the patent holder has the burden to prove the credible explanation. Simply arguing plausible or possible explanations for the deception is not enough to rebut an inference of intent to deceive.

Grant Drutchas, a founding partner of MBHB, has nearly 20 years of experience in the practice of intellectual property law, with a particular emphasis on litigation, licensing, and client counseling.

Patent Cases in the Northern District of Illinois

This morning I conducted a quick study to determine some case outcomes here in the Northern District of Illinois.  Since 2000, 933 patent cases have been filed here and 783 of those have closed. The following table breaks down the number of patent cases filed by year and, of those, how many have been closed.

* as of 2/16/2006.

Using the data from patent cases filed in 2000, I then created the following table to show how long each case took to close.  About 8% of the cases were disposed of within a month of filing.

The following table shows that most patent cases are closed before the one-year mark, and 75% are done before two years have gone by.

Cite as Dennis Crouch, Patent Cases in the Northern District of Illinois, Patently-O, February 16, 2006, available at http://patentlyo.com.

Appellate Procedure: No Cross-Claims for Winning Party on Winning Issues

Nautilus v. ICON (Fed. Cir. 2006, 05–1577o).

ICON won on summary judgment.  On appeal, ICON filed a cross-appeal requesting review of several claim construction rulings in the event the CAFC reversed the lower court’s ruling. However, the appellate panel refused to hear ICON’s arguments for new claim construction because ICON won below:

a party who prevails on noninfringement has no right to file a ‘conditional’ cross-appeal to introduce new arguments or challenge a claim construction, but may simply assert alternative grounds in the record for affirming the judgment.

In dissent, Judge Newman essentially argued that the practical nature of claim construction appeals should allow all claim construction issues to be reviewed at one time.

The burden on the district court and the parties, requiring them to conduct a trial on un-reviewed claim constructions, when objections have been raised and are ripe for review, is an entirely unnecessary burden.

 

Knorr-Bremse does not Preclude Inference of Reckless Behavior for Failure to Obtain Opinion

Golden Blount v. Robert H. Peterson Co. (Fed. Cir. 2006, 04–1609).  

Opinions of Counsel: This case holds that Knorr-Bremse does not prevent a court from finding that a defendant was at least reckless by obtaining an oral noninfringement opinion but failing to obtain a written opinion.  Rather, Knorr-Bremse only precludes an inference that an undisclosed written opinion would have been negative.

Damages: The defendant here was on the hook for contributory infringement — actual infringement occurred when customers assembled the fireplaces.  On damages, the CAFC partially reversed the lower court’s ruling.  The appellate panel found that lost-profit damages must be reduced by any products that were returned to the defendant without being opened by the customer — because in those cases the underlying direct infringement never occurred.

 Links:

• Golden Blount I (Fed. Cir. 2004).
• Knorr-Bremse (Fed. Cir. 2004) (en banc).

Filed Briefs:

• Appellant Brief
• Appellee Brief
• Appendix One
• Appendix Two
• Appendix Three
• Appendix Four
• Appendix Five
• Appendix Six
• Appendix Seven
• Reply Brief

Court Reverses Claim Construction that Placed "Too Much Emphasis on the Ordinary Meaning"

Curtiss-Wright Flow Control Corp. v. Velan, Inc. (Feb. 15, 2006: 05-1373)

By Peter Zura

Velan appealed the lower court's grant of a preliminary injunction in part over the construction of the term "adjustable" in the claimed feature reciting "an adjustable dynamic, live loaded seat coupled to said main body."

In the preliminary injunction order, the trial court concluded that the bias force on the live loaded seat could be changed in a manner that is "not limited by any time, place, manner or means of adjustment." In reaching this conclusion, the trial court relied on the ordinary meaning of "adjustable" to be "capable of making a change to something or capable of being changed." The trial court refrained from further narrowing the term, alleging that claim differentiation prohibited the court from doing so, and also alleged that further limitations would impermissibly narrow the claim to the structure of the preferred embodiment.

The Federal Circuit, while commending the lower court's restraint, disagreed. After applying a Phillips analysis to the claims in light of the specification, the Federal Circuit concluded that the disclosure defined the term "adjustable" to mean that the dynamic, live loaded seat can be adjusted while the de-heading system is in use.

Furthermore, the Federal Circuit reasoned that the district court’s construction of "adjustable" rendered that limitation nearly meaningless:

This court finds it difficult, if not impossible, to imagine any mechanical device that is not "adjustable," under the ordinary meaning of that term adopted by the district court. Almost any mechanical device undergoes change (for instance, when dismantled to replace worn parts) when no consideration is given to the "time, place, manner, or means of adjustment."

Thus, while the district court may have been correct that a device encompassed by claim 14 of the ’714 patent need not have an adjustment mechanism, it went too far in completely eliminating any constraints on the "adjustable" limitation. Moreover, the district court’s construction actually creates a redundancy: if "adjustable" means adjustable at any time and in any way, it is hard to imagine any meaning for the term because without limitations on time or manner of adjustment, all structures are "adjustable."

Regarding the issue of claim differentiation between independent claims, the Federal Circuit provided that two considerations generally govern this claim construction tool when applied to two independent claims:

(1) claim differentiation takes on relevance in the context of a claim construction that would render additional, or different, language in another independent claim superfluous; and

(2) claim differentiation "can not broaden claims beyond their correct scope.

Finding that both of these considerations weighed against the district court's construction, the preliminary injunction was vacated and the case was remanded.

(Published with permission)

Court Upholds Dual Patent/Copyright Protection for Software

Aharonian v. Gonzales (N.D.Cal. 2006).

Although he operates primarily through an e-mail list rather than through a website, Greg Aharonian is the honorary trailblazer for today’s intellectual property law blogs (including Patently-O).  He is also an activist.

In a lawsuit filed against the U.S. Government, Aharonian requested a declaratory judgment that copyright law cannot be applied to sourcecode.

Specifically, Aharonian hopes to build a powerful database of sourcecode to be used as a prior art repository — but does not want to be held liable for copyright infringement.  In a challenge to the statute, Aharonian argued that computer code is entirely made up of “algorithms” and “data structures,” both of which are uncopyrightable “ideas” or “processes” and additionally that the vague language of the Copyright Act is insufficient to support sourcecode copyrights. (And raised other arguments).

Standing: With any DJ action, there is often a question of standing. Here Aharonian was able to show that he was suffering a specific economic harm under the law (inability to build his database) and that economic harm, according to the court, was sufficient to establish standing.

This is not to say that all allegations of economic harm related to copyright law will be sufficient to meet the constitutional requirements for standing. For example, the mere assertion of a desire to copy, with no showing of an actual past or future business practice or actual economic benefit from copying, would not suffice. Here, however, plaintiff has an existing business which involves searching for potentially copyrighted prior art, and he has made a credible argument that incorporating (i.e. copying) such material into an automated search tool would result in additional profits.

Software as Math: The Aharonian machine will apparently transform computer code into a standardized logic framework and store that framework.  The court used that pont to avoid addressing the question head-on:

It would be unwise indeed for this court to make sweeping general pronouncements about the nature of software or the relationship between patent and copyright law, particularly where making such a pronouncement would have no clear effect on plaintiff’s ability to create his proposed database.

The court did take pains to distinguish patent and copyright cases — thus predicting their conclusion that both forms of protection are available for software:

A declaration that software consists entirely of “ideas”—data structures and algorithms—has no bearing on the applicability of copyright law to software source code, which, like all copyrightable material, is a particular written expression of ideas. . . . In sum, if plaintiff copies source code that is protected by copyright law, he infringes the copyright regardless of whether the ideas underlying the source code are patentable. Conversely, if plaintiff independently creates software that is functionally identical to other software, he does not infringe any copyright on the other software’s source code, even if his independently created source code is nearly identical to the copyrighted source code.

Vague Statute: On the issues of vagueness, the court essentially found that prior controlling precedent had interpreted the scope of the statute — leaving no room for the district court to hold otherwise.

Dismissed. The case is now on appeal.

Links:

• Link: Website dedicated to the lawsuit.

Happy Valentine's Day

Blogging Law and Blogging for Lawyers

I would like to invite you to the upcoming conference on Blog Law and Blogging for Lawyers to be held April 20–21 in San Francisco. LINK.

I am very excited to be the co-chair of the conference, which is the first comprehensive CLE to look at blogging both as a marketing tool for attorneys and as a legal area.  My co-chair Cathy Kirkman of Wilson Sonsini is a great attorney and full of ideas in this area.

Sample Topics:

• Legal gray areas arising from the proliferation of Web logs
• The future of blogging -- a passing fad or here to stay?
• The extent to which bloggers qualify for the First Amendment protections afforded to journalists
• Content ownership and syndication issues
• Employment issues arising from blogging within corporations
• The latest in blogging technology, including audio and video feeds
• How to set up a blog for your law firm or make your current blog more effective
• How blogs differ from regular Web sites in generating traffic -- and business -- for your firm
• Ethics questions surrounding the blog as a law firm marketing tool
• PLUS an on-the-ground report from several law firm bloggers

We have been lucky with the help of Law Seminars International (LSI) to put together an amazing faculty and the peer group of bloggers and attending attorneys will make this a very special event. 

Feel free to contact me with any questions.
Dennis Crouch

Conference Links:

• Seminar Agenda and Registration
• Co-Chair Cathy Kirkman’s Blog 
• Speaker Denise Howell’s Blog
• Speaker Professor Ray Nimmer’s Blog
• Speaker Bennet Koren’s Hurricane Law Blog
• Speaker Uli Widmaier
• Speaker Terry Gross
• Speaker Kurt Opsahl of the EFF
• Speaker Marc Martin
• Speaker Bruce Johnson
• Speaker Raymond Hixson
• Speaker Page Mailliard
• Speaker Lauren Gelman of Stanford Law
• Speaker Glenn Otis Brown from Google
• Speaker Rick Danis of Yahoo
• Speaker Mia Garlick of Creative Commons
• Speaker Professor Rory Little (Ethics)
• Speaker Professor David Hricik (Ethics)
• Speaker Kevin O’Keefe of LexBlog
• Speaker Jennifer Collins of law.com
• Speaker Gregory Kopta

Other Links:

• Link: Kevin O’Keefe discusses the conference
• Link: Kevin Heller focuses on the conference is a clear sign that the “Big Law” players have arrived in the world of legal blogging.
• Link: Denise Howell blinks.
  

CAFC Explains Materiality Standard for Inequitable Conduct

Digital Control (DCI) v. Charles Machine Works (aka DitchWitch) (Fed. Cir. 2006).

By Mark Chael,

DCI appealed the lower courts’ decision that its patents were unenforceable for inequitable conduct. DCI’s three asserted patents involve Horizontal Directional Drilling, which enables the creation of horizontal holes in the ground through with utility lines can be placed by allowing a worker to locate and/or orient the boring tool as it moves through the ground.

The district court previously awarded partial summary judgment to DitchWitch finding that there was no genuine issue of material fact that misstatements and omissions made by the inventor during prosecution of the patents were material. After a bench trial, the lower court held that the misstatements and omissions were made with intent to deceive and the level of materiality and inference of intent were both high. Thus, the lower court held that the patents were unenforceable.

The CAFC, however, held there were genuine issue of material fact regarding the materiality of the inventor’s failure to disclose prior art. The CAFC thus vacated the district court’s ruling that the patents were unenforceable and remanded for further proceedings regarding the materiality of the failure to disclose prior art.

Before reviewing the lower court’s determination that DitchWitch was entitled to summary judgment on the issue of materiality, the CAFC addressed the proper standard for determining whether a misstatement by omission is material. What follows in the text of the opinion is a comprehensive, yet succinct, summary of the development and current standing of the law of inequitable conduct and material misrepresentation, in view of the Patent Office’s amendment of Rule 56 (duty of candor and good faith / duty of disclosure). This panel followed the "reasonable examiner" materiality standard of old Rule 56, which "new Rule 56 was not intended to replace or supplant."

Dr. Mark Chael’s prior research in biochemistry, molecular biology, and cellular biology make him well equipped to understand the intricacies involved in biotech and pharmaceutical patents. He is an associate at the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff in Chicago.

Links:

Read the opinion.

Patently-O TidBits

1) Continuation Practice: Matt Buchanan at Promote-The-Progress has posted slides from the PTO’s town-hall meeting.

2) APLF: Patent Judges Panel in Des Moines: The Association of Patent Law Firms (APLF) is pleased to present a discussion of patent litigation featuring a distinguished panel of judges.  Titled “Impressions and Observations of Patent Trial and Markman Hearings,” the event will be held March 9 from 12-1:30 p.m. at Drake University Law School in Des Moines.  For reservations and information on payment options, please visit http://media.aplf.org/conferences/drakeroundtable.php.

3) Chicago Bar Assn: On March 1st, 2006, I will be at a CBA Young Lawyers luncheon talking about blogging and blog-law with fellow weblog author Evan Brown.

4) Patent Law Symposium: Northwestern’s Journal of Technology will hold its first symposium: “Patent Litigation in the 21st Century” on February 24, 2006 at its downtown campus. Featured Speakers include Professor Matthew Sag, Peter Zura, Ken Withers, and Hal Wegner. Link.

(via www.thehughpage.com).

Neither Poetry nor Bankruptcy Avoids Patent Infringement Damages

Hazelquist v. Guchi Moochie and Mr. Yamaguchi. (Fed. Cir. 2006).

It is now my dream to cite this case in open court:

DDC: “Your Honor, I would refer you to Guchi Moochi and Mr. Yamaguchi for controlling precedent.”
Court: “Quite compelling argument you have Counselor.”
Opposing Counsel: “Foiled again!”

To cite Guchi Moochi, you need a bankruptcy situation, and to be asking the court to collect post-bankruptcy damages:

DDC: “Under Guchi Moochi and Mr. Yamaguchi, although a discharge in bankruptcy operates as an injunction against a plaintiff asserting a claim for a cause of action that arose before the date of bankruptcy discharge, it does not act as an injunction against a plaintiff asserting a claim for a cause of action that arose after the date of bankruptcy discharge.”

Etc.:

• Read the case: Link
• cite as Dennis Crouch, Neither Poetry nor Bankruptcy Avoids Patent Infringement Damages, Patently-O, February 9, 2006, at http://www.patentlyo.com.

Non-Resident Alien Patent Attorneys and Agents are Entitled to Limited Recognition but not Full Registration

Catherine Lacavera v. Jon W. Dudas (Fed. Cir. 2006).

By Baltazar Gomez, Ph.D.

The Court of Appeals for the Federal Circuit affirmed the judgment of the District Court for the District of Columbia that the USPTO’s decision to grant Catherine Lacavera only limited recognition was consistent with the PTO’s regulations, did not exceed the statutory authority, and did not deny Lacavera equal protection.

 

Lacavera, a Canadian citizen and nonimmigrant alien, was authorized to work in the United States as an attorney to prepare and prosecute patent applications. Upon passing the patent examination, Lacavera was granted limited recognition because of the legal restrictions imposed by her immigration visa. After failing to convince the PTO to grant her full registration, Lacavera filed suit in the district court under the Administrative Procedure Act (5 U.S.C. §§702-706). The trial court denied Lacavera’s motion for summary judgment and granted summary judgment in favor of the PTO.

 

The PTO has statutory authority to regulate attorney practice under 35 U.S.C. § 2(b)(2)(D). From this general authority, the PTO formulated rules to govern the recognition of attorneys under 37 C.F.R. §§10.6, 10.7 and 10.9. (now 37 C.F.R. §§11.6, 11.7 and 11.9).  Regarding an alien, the rules state that an alien “may be registered” provided that registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States.  For nonimmigrant aliens, the PTO has interpreted the rules to dictate that nonimmigrant aliens are not registered upon passing the patent examination, but rather are entitled to “limited recognition” status that allows an alien to practice before the PTO, but confines their activities to those authorized by the United States Bureau of Citizenship and Immigration Services.

 

In her appeal, Lacavera contended that the PTO’s decision to deny her full registration was an abuse of discretion because it was improper to find that full registration was inconsistent with the legal restrictions of her visa. The CAFC disagreed, reasoning that the PTO’s decision to grant limited recognition is a reasonable interpretation of the rules in view of Lacavera’s visa restrictions that would be inconsistent with full registration. Lacavera also argued that the PTO exceeded the authority granted by statute by taking into account visa restrictions when determining whether or not to grant full registration. The CAFC noted that the PTO has broad statutory authority to govern the recognition and conduct of attorneys.  The CAFC further noted that although the statute is silent as to whether the PTO may consider visa restrictions, the statute states that the PTO may require applicants to show that they have the necessary qualifications. Thus, the CAFC concluded that it was reasonable for the PTO to enact rules that limit an alien’s ability to practice to those activities in which the alien may lawfully engage as being necessary qualification. As to whether Lacavera was denied equal protection, the CAFC concluded that she suffered no individual equal protection violation because Lacavera offered no evidence that she was treated unequally as compared to other aliens with visa restrictions.

 

Note: Dr. Baltazar Gomez is a scientific advisor at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched retrovirology as a PostDoc at Cornell University.

Non-Inventors Sloppy Lab Notebook Cannot Corroborate Reduction to Practice

Medichem v. Rolabo (Fed. Cir. 2006).

The parties here are sparing over rights to a novel process for making loratadine, the active ingredient of Claratin®. Rolabo filed its patent application first, but Medichem reduced to practice prior to that filing. 

Interference-in-fact: In order to proceed with an interference, the case must satisfy a two-way test — i.e., each disclosure, when considered as prior art, must at least render the other’s claims obvious.  Here some prior art taught away from adding a particular compound, while others suggested the addition.  The CAFC determined that in such a case, obviousness could be found because “the prior art, viewed as a whole, [teaches] that the addition of a tertiary amine sometimes works to improve the yield.” 

Priority: The later-filed case has the burden of establishing priority by a preponderance of the evidence. Here, the late-filer, Medichem, asserted an actual reduction to practice that occurred prior to Rolabo’s patent filing.  Proof of reduction to practice requires (1) an actual embodiment meeting all the claimed limitations; (2) showing that the invention would work; and (3) corroboration evidence to show (1) and (2).

On appeal, the CAFC found that Medichem failed to provide the necessary corroboration evidence under part (3) above — reversing the lower court’s decision. In its decision, the appellate panel found, as a matter of law, that a non-inventor’s lab notebook was insufficient corroboration evidence where the non-inventor did not testify at trial or otherwise attest to the notebook’s authenticity and where the notebook had not been signed and dated in accordance with good lab practices.

Given the facts of this case, [the noninventor's] notebook should therefore not be accorded much corroborative value. In view of the minimal corroborative value of the inventors’ notebooks and the limited value of the NMR spectrum, we conclude that the evidence, evaluated as a whole under the rule of reason, is insufficient as a matter of law to corroborate Medichem’s reduction to practice.

Notes:

• Interestingly, a parallel interference was also conducted by the BPAI — resolving the issue in favor of Rolabo. Stampa v. Jackson, 65 U.S.P.Q.2d 1942 (B.P.A.I. 2002).
• Read the decision.

 

 

 

CAFC: Diligence Easier to Prove than Conception

Brown v. Barbacid (Fed. Cir. 2006).

Both Brown and Barbacid claim to have invented a method for inhibiting cell growth control factors (farnesyl transferase). The effective filing dates at the PTO were April 18, 1990 and May 8, 1990 respectively.

In an interference proceeding, the PTO’s BPAI found that Brown had the earlier conception date, but that the early date was moot because Brown had “failed to provide corroborated evidence of diligence” in reducing the invention to practice.

Under 35 USC 102(g), the party that is the first to conceive of an invention is entitled to a patent over a later inventor — so long as the early inventor “exercised reasonable diligence from a time before the other party’s conception date to his own reduction to practice date.”

The CAFC found the time-line in this case as follows:

November 15, 1989 — Brown conception
March 6, 1990 — Barbacid conception and reduction to practice
April 18, 1990 — Brown constructive reduction to practice
May 8, 1990 — Barbacid constructive reduction to practice

Thus, in order to ensure priority over Barbacid, Brown must show continual diligence from before March 6 to April 18.  Furthermore, evidence is required to corroborate claims of diligence. However, such evidence can come from a variety of sources and is generally less rigorous to prove than conception.

The basic inquiry is whether, on all of the evidence, there was reasonably continuing activity to reduce the invention to practice. There is no rule requiring a specific kind of activity in determining whether the applicant was reasonably diligent in proceeding toward an actual or constructive reduction to practice.

Here, the BPAI refused to find diligence, and specifically found that the researcher’s laboratory notebook to be too cryptic to provide useful evidence. The appellate panel disagreed, finding that the evidence should be considered as viewed by persons skilled in the art. Specifically, there is no need to “reproduce on each page a statement of the larger research purpose” of the experiment because “this purpose may reasonably be shown in the various declarations.”

Links:

• CAFC Opinion

Beware of Overshooting the Mark Set by Phillips v. AWH

Varco v. Pason Systems (Fed. Cir. 2006).

In a case involving oil and gas drilling equipment, the district court refused to grant the patentee a preliminary injunction.  Varco appealed claim construction.

Specifically, because the specification states that selected regulators 200-203 must be manually calibrated before use, the district court concluded the “selecting” step recited in the asserted claim requires manual calibration.

On appeal, the CAFC determined that the court’s construction was too narrow — and that it had impermissibly imported limitations into the claims.  In its decision, the appellate panel pointed to the preamble of the claim that indicated that it was a method for “automatically” regulating the drilling equipment.  Based on this and other tidbits pulled from the prosecution history, the court found that manual calibration was not required.

Vacated.

Note: This case brings home a point I made in my talk at the AIPLA winter meeting last week.  Specifically, courts should be wary of overshooting the instructions of Phillips. Notably, even though claims are interpreted in light of the specification, special care should be taken to avoid importing limitations from the claims.

Noonan's Corner: Changes to Continuation and Examination Practice

From the desk of Kevin Noonan

On February 1, 2006, the U.S. Patent and Trademark Office sponsored a "Townhall Meeting" at the Northwestern University Law School. The meeting was attended by practitioners, patent counsel and corporate executives, and presentations were made by John Doll, Commissioner of Patents, and James Toupin, General Counsel of the Patent and Trademark Office.

The topic was the proposed changes in U.S. patent practice relating to "continuation" applications, which are applications that have been examined without obtaining an allowance (for at least some of the claims), and that are re-submitted to the Office for further examination. These types of applications arise either as the result of patent prosecution strategy by the applicant (who elects to cancel non-allowed claims to have other claims grant, and retain the right to pursue the non-allowed claims in the continuation application), or as the result of unwillingness by the Office to allow claims in an application (where further prosecution is needed to amend claims or present arguments or evidence of patentability). Also included under this definition are requests for continued examination, which are not new filings but rather permit continued prosecution of non-allowed claims in an application.

The proposed changes are dramatic and depart heavily from current practice. Most draconian in effect is to limit the number of continuation applications to one as of right, and to require an applicant who wants an additional continuation to show by petition that the amendments, evidence or argument could not have been previously submitted. This requirement would eliminate the opportunity for strategic decisions to cancel certain non-allowed claims to obtain other claims deemed allowable by the Office. The Examples provided by the Office also make clear that most applicants would be precluded from filing more than one continuation.

Misleading prophetic examples only marginally relevant to materiality in inequitable conduct review

Purdue Pharma L.P. v. Endo Pharms. Inc. (Fed. Cir. 2006).

In a dramatic reversal of fortune, the Federal Circuit has reversed itself and the district court findings that Purdue’s Oxycontin patents-in-suit were unenforceable due to inequitable conduct that occurred during prosecution of the patents.

The district court found that Purdue repeatedly referred to its "surprising discovery" during prosecution, but did not inform the PTO that the "discovery" was based on "insight" without "scientific proof."  In its initial decision, the Federal Circuit determined that the district court did not error in finding the two elements of inequitable conduct: materiality and intent.

On rehearing, the same three-member panel of Judges Gajarsa, Plager, and Linn came to a new conclusion — vacating the holding of inequitable conduct. 

The panel began by reviewing the law of inequitable conduct:

Applicants for patents have a duty to prosecute patents in the PTO with candor and good faith, including a duty to disclose information known to the applicants to be material to patentability. A breach of this duty may constitute inequitable conduct, which can arise from an affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive or mislead the PTO.  A party asserting that a patent is unenforceable due to inequitable conduct must prove materiality and intent by clear and convincing evidence. Once threshold findings of materiality and intent are established, the trial court must weigh them to determine whether the equities warrant a conclusion that inequitable conduct occurred.

The court applies a “careful balance:”

[W]hen the misrepresentation or withheld information is highly material, a lesser quantum of proof is needed to establish the requisite intent. In contrast, the less material the information, the greater the proof must be.

Regarding materiality, the CAFC agreed with the district court that “Purdue’s actions met a threshold level of materiality.” However, the panel found that the “level of materiality [was] not especially high” — thus requiring solid proof to establish intent. The trial court, however failed to “properly consider the [low] level of materiality.” 

Based on the lack of evidence intent presented in the trial court’s opinion, the CAFC vacated with instructions to reconsider the evidence of intent based on a low level of materiality.

Links:

• Purdue Pharma Decision
• Purdue Pharma Order
• Original Decision

 

Hamlet, on filing a response with the USPTO

Angela Horne is a patent agent at Quine IP Law Group.  As can be seen from her prose below, she is also a talented Shakespearean.  In this Scene, young Hamlet is debating his next course of action:

To file, or not to file (today): that is the question
Whether 'tis easier on the budget to file
The current draft without further extension;
Or instead, to take more time to review,
And by reviewing, further revise the arguments...
To file, to wait for the Examiner to review
At last; and by calling before two months is up, forestall
The heart-ache and the thousand muttered curses
That a Final Office Action is heir to. 'Tis a consummation
Devoutly to be wish'd.
To file the response, to follow up with a call;
To call, perchance to get the case allowed: aye, there's the rub;
For in that Notice of Allowance, what claims to next pursue
When we have the current claim set allowed, 
Must give us pause...

Ms. Horne’s prose also reminds me of the Roach Trap patent application that was filed in the mid 1800’s by D. Breed of Washington DC.

To all those whom it may concern:
By this description, you may learn
That I, D. Breed, a District man,
Have made invention of a plan,
Both new and useful, of a trap
For catching roaches while you nap.

In setting forth my new invention,
Of first importance I would mention
My trap's a novel earthen cup
Outside of which the roach creeps up
And, jumping in to eat molasses,
The well glazed mouth he ne'er repasses.

In drawings, figures one and two
Show simple forms, yet something new;
The first has rough outside or way;
The next, an inclined path at A.
The central stem (in dots you see),
Is crowned with bowl like half a pea,

To hold molasses, say a drop,
And smoothly glazed from base to top.
But this is no essential thing:
Without it, the roaches spring.
If in the bottom of the cup
You place the sweet whereon they sup.

The figure three shows a form unique
Of which in highest praise I speak;
'Tis glaze on in and outer sides,
Except between the handle strides
Where creep the roachies up a track
Without fear of sliding back.

In figure four, at B, a spout
Is made, to wash dead roaches out;
This form is glazed entire within,
also the mouth up to the brim
but on the outer side, all round,
No trace of glazing can be found.

In five and six, a septum, C,
Cuts full two thirds the cup from three,
The smaller part has open door
At letter D, close to the floor,
And inclined way to top of cup
Where Mr. Roach with cane walked up;

Nor needs his wife or child his hand
To reach the highest brink and stand,
A little trip is balance hung
May o'er the mouth of cup be swung;
But that, an almost useless thing,
To save expense, away I fling.

Of varied traps, with spiral walk
And sundry forms, I yet might talk --
Of clay or other mortar made
To suit the fancy or the trade:
Forms now conceived, yet not revealed,
That sleeping lie to fancy's field.

From this description,you may make
Whatever form you choose to take,
From figure one to six, made part
Of this to aid the potter's art,
I recommend said figure three
Of porcelain, like cup for tea.

Claim

As manufacture new, I claim
Said pottery trap, or porcelain.