A couple observations:
1. The link set forth above is to a published patent application, NOT an issued patent. It is quite possible that no patent has yet issued from this application and there is a possibility none ever will (it also may be the cases that one already has issued, but you would think that pk would then have put the actual issued patent on his site -- you can check to see if a patent has issued from this application with a search on the USPTO website):
2. The scope of a patent's coverage is in general set forth in the claims -- it is unwise to rely soley on a reading of the title of a patent or the abstract when trying to discern either relevant prior art or potential infringement (it is perhaps interesting to note, for example, that the word "resistor" does not appear until claim 7 -- which "depends from" claim 6 which in turn depends from claim 1 -- thus potentially providing an argument that claim 1 does not even require a "resistor");
3. Prior art may be set forth as noted above -- in fact, pk and his attorneys are/were under an obligation to identify to the patent examiner, all material relevant prior art of which they were aware -- otherwise there might be an argument that if identification of such art had been withheld with intent to deceive, that any patent that would issue from the application (and potentially even "related" patents) would be "unenforceable" due to "inequitable conduct". The claims published in the application are generally unlikely to have survived prosecution without some sort of amendment (in fact, some people believe that if you have filed an application that includes claims that need not be amended for allowance, you have not claimed the full range of coverage that you could have obtained). Thus, normally, one needs to wait for the issued patent to understand the full scope of coverage of a patent for both validity and infringement purposes;
4. the standard relating to validity of a patent in light of a sale, offer for sale, or public use by the inventor prior to filing of the application generally relates to 35 U.S.C. Section 102(b) -- in general, the activity that would trigger such a "statutory bar" to patentability applies to events more than one year prior to the filing date -- interesting issues in patent actions may sometimes center around (as just a few of the potential examples examples) the timing of the "publication" of documents (for example articles, datasheets, catalogs, etc.), whether and when relevant devices were shown at trade shows and underwhat circumstances, whether samples were otherwise shown or given out without, for example, secrecy or NDA-type agreements and, for example, whether relevant devices were offered for sale before the critical date. There are a wealth of potential pitfalls for the unaware -- it is always prudent to obtain the advice of competent counsel on these types of issues/activities.
For companies where IP is essentially a central asset, I suspect that the fees are not a crucial issue. The filing of numerous claims initially may be a useful albeit expensive technique particularly when done in conjunctions with an extensive specification. But if the patent is worth fighting in court about, filing fees and prosecution fees might well represent a tiny fraction of the cost of enforcement. A more extensive specification (carefully tailored away from potentially claim scope limiting examples) could potentially allow for a larger family of continuations that would allow for claims in light of developments in potentially infringing devices/processes. There are other potential benefits.
Claims as filed sometimes may not have all the characteristics one might expect in a filing aimed at providing the best tools in the eyes of a litigator for assertion in an infringement action (for example, perhaps, in the order and type of claims as filed). The attorneys that prosecute patents often focus on prosecution and are not the attorneys that litigate patent actions -- prosecutors might focus more on getting claims allowed rather than in tailoring the process to the best advantage in a patent infringement action.
Well, I guess it's once again time to give that old IRS code another run for the "hurts the head" money! [img]/ubbthreads/images/graemlins/sick.gif[/img] [img]/ubbthreads/images/graemlins/grin.gif[/img] (BTW, a friend of mine once referred to studying the IRS code as akin to being a rat -- in a very large maze -- looking for an awfully small piece of cheese...) [img]/ubbthreads/images/graemlins/banghead.gif[/img]
The process of determining what a claim means or "claim construction" normally requires a careful examination of not just the claim language itself, but also of what is known as "intrinsic evidence". Normally this examination includes looking at the record of the proceedings before the patent office relating to the patent (known as "the prosecution history"), perhaps the prosecution history, or related patents, the specification and the text of other claims. Courts may in some instances also consult experts or other "extrinsic evidence" of the meaning of claim terms. The terms are often read as one of "ordinary skill in the art" would understand them -- that is, "circuit" might mean something very different to a designer of exercise equipment than to an electrician with 10 years on the job, and that electricians reading could well differ from that of a PhD in Computer Science working on interprocessor communications in a supercomputer. The inventor, however, may in certain circumstances "be his own lexicographer" or give his or her own meaning to specific terms. A number of criteria must be satisfied for that to happen.
Claim construction can be a highly counterintuitive exercise -- there are decisions by Federal District Courts which have found, for example, that the terms "a", "an" and "one" can each mean "one or more." It is thus concievable that under the right circumstances, in the right court, with the right facts, that if I say " I have a flashlight with one bulb," that some courts might allow that to include the case where the light has perhaps three bulbs. In fact, courts sometimes can't agree on how a claim should be interpreted -- the Court of Appeals for the Federal Circuit -- the appellate court hearing all appeals on patent actions coming from the district court reportedly reverses at least some part of the lower court's ruling on the meaning of patent claims in somewhere around 40 percent of the cases.
Thus, it is not usually an useful exercise to try to discern the meaning of claims merely from a reading ofthe claims in isolation. Moreover, here, as noted above, there is apparently no issued patent as yet, and therefore no complete prosecution history (or even final claims, for that matter) to examine in order to make an interpretation.
Secondly, including a detailed drawing and/or description of the entire device in which a component believed to be patentable appears is not a particularly unusual action in the prosecution of a patent and there can be many reasons for doing so, although there is certainly too little information available to discern precisely why the application here has the drawings it does. An attorney prosecuting a patent might include a description of an entire device in detail including the drawings if, for example, more than one patented invention is believed to be part of the device and the attorney belived it would perhaps be advantageous to use a single specification with drawings for a number of patents. There are examples of computer patents where numerous different US patents on various aspects of a computer system share an identical specification and drawings. Filing claims with a detailed description of a device of which the patented invention is a component might perhaps be done in the belief that it would help when there is a statutory bar date coming up and the inventor wants to file something before the bar date. Also, a patent normally should allow one of ordinary skill in the art to "practice the invention without undue experimentation." Moreover, the applicant normally is required to identify the "best mode" of practicing the invention known -- some patent prosecutors may believe that providing a detailed description and drawings of a specific device helps in fulfilling these requirements. The prosecuting attorney might also belive that having a detailed description of a particular device in all its glory may help if the applicant wants to be able to file claims after the initial filing that are perhaps more tailored to a competitor's anticipated or actual allegedly infringing device. And there are other reasons/justifications, good, bad and maybe even ugly...
Aspirin, ibuprophen or acetaminophen anyone? [img]/ubbthreads/images/graemlins/eek.gif[/img]
Patents are easily disputed and tossed out, I know of one case where some technician's lab book was used to have the case thrown out of court...
IMHO, many patents now days don't really pass the test of obvious to someone experienced in the field (or however it is worded), and many seem to be sought as a way to stall competitors through litigation, to the point of the big boy burying the small guy in legal fees and forcing them out of business, even before the subject at hand is actually resolved.
This sort of thing reminds me alot of Apple vs. Franklin Ace or MagLite vs. xxx, that has gotten the ire of folks around here.
Just look at the Amazon patents - "one-click ordering" and "affiliate programs" - for examples of patents whose sole intent is to hobble competitors (in Amazon's case, Barnes & Noble), not protect legitimate innovations.
cy, Stingray, underdog -- thanks for your kind words.
Patents are sought for a very wide range of reasons by individuals and both small and large companies. Some apparently seek patents as validation of their own creativity, etc. For some companies, a patent portfolio reprents an asset that they can point to, to add value to the company. A patent portfolio might be used by a small company in the belief that it provides protection against larger companies who have patents and might accuse them of infringement -- the smaller company can in response to an infringememt claim point to its own patents and offer a cross license. Large companies maintain portfolios for the same reasons. This does not, however, provide much protection against infringement claims from patent holders who do not themselves manufacture or are not otherwise susceptible of infringement claims themselves.
Patents cost money not only to prosecute, but also to enforce. An action in a Federal District court can cost millions of dollars for each side of an infringement action. There is also a potential for an expensive appeal -- because the rate of claim constructions being overturned is so high, some believe that if you lose in the district court on a claim construction, you almost have a new clear shot in the Federal Circuit to get the District Court overturned on appeal.
Part of this belief may be because claim construction is "a matter of law". Normally, the appellate court must pay great deference to the findings of fact a jury in a District Court, but because claim construction is not a fact issue for the jury (the district court judge interprets thew claims) the District Court findingson vlaim construction are generally afforded nodeference and the claim construction issues are decided "de novo" by the Federal Circuit. This, some belive, provides a second bite at the apple of claim construction, with what they believe is a very high, reportedly around 40 percent, chance of reversing what was found below.
The pressures on each side in a patent action in the Federa Courts can be very high, particularly if both sides are manufacturers. For both sides there is the cost of litigation. Attorneys can cost $600 per hour and few patent cases do not have a team of attorneys working on them. Patent cases often involve large numbers of documents, lab notebooks, catalogs, accointing records, meeting minutes, and a whole lot more are potentially discoverable. There are often a relatively large number of witnesses including, in most cases, at least two expert wotnesses *infringement and damages) who themselves may cost as much as the attorney or more (damages experts, for example, often have a stable of their own assistants who review and digest the reams of damages related documents). Each expert must according to the Federal Rules produce an expert report which can be another source of cost. Witnesses must have their depositions taken, sometimes far away from the location of the court. Many of the most reputable patent litigators are located in major cities -- New York, Chicago, San Franciso/Palo Alto, etc. -- and "local counsel" must often be hired as well as regular litigation counsel (the rules of most, if not all, Federal District Courts require the involvement of an attorney admitted to practice in that court's district -- cocounsel admitted in other Federal Districts may the be moved "pro haec" to practice for limited purposes in the district). Patent actions often take longer than most other actions (there are exceptions -- the "Rocket Docket" in the Eastern District of Virginia, the Northern District of California's rules expediting patent actions filed there, proceedings in the International Trade Commision Court, etc.) and it is not unheard of for patent cases to take 5 years to get to verdict. It is also not unheard of (although unusual) for certain types of actions to have budgets in excess of $5 million per year. So the process can be expensive and time consuming.
Moreover, patent lawsuits can be disruptive to businesses. If for example, your R&D department is comprised of just a few indivuduals and these people were involved in the patent application process, as coinventors, etc., then you can expect that they will have to spend siginficant time finding documents, being prepared for and providing deposition (and perhaps trial) testimony, and perhaps have their honesty and/or integrity put into question be opposing counsel. Management faces similar issues and face devoting time to making decisions regarding the litigation and worrying about those decisions. This can divert the company from gmaintaining or rowing a business normally. And they have a significant asset at stake, the patent, which could be found invalid or unenforceable.
For the accused infringer, many of the pressures are the same, except that they face the potential for large monetary damages and, if the patent term has not expired, an injuction preventing them from making, using, selling, or offering for sale the infringing devices. If the product is cor to the companies business, this can truly be a bet the company proposition.
Small companies may not have the resources to participate on either side of a litigation. A larger company with the resources may have the advantage of being able to pursue such an action. This can happen on either side as patent holder or as potential infringer. As it can be in other aspects of business, it can be an advantage to have large amounts of assets to devote to patent issues.
And there's more....
Think of the "technician's notebook" example above. As a hypothetical we can trace the patyth of a similar document/notebook in a hypothetical action. It is likey that with such documents the accused infringr would have had to ask for the notebook formally in what are called "document requests" pursuantr to Rule 26 of the Federal Rules of Civil Procedure. The patentholder would perhaps have responded formally and made objections, and there may have to have been a "motion to compek" production of such a notebook. The notebook would have to copied, and given "Bates Numbers" identifying each page. Because notebooks rarely contain information about only the information relevant to the cases and often contain other often sensitive proprietary information that the company does not want its competitors to see, it could well have been re-reviewed word by word and proprietary information "redacted" (masked or otherwise removed). There may well have been a fight about the redactions being overbroad and an attempt to hide relevant information. The question of validity generally requires a claim construction. This usually takes place after a hearing with the teams of lawyers putting on what some have termed a "mini-case" to the Judge, sometimes complete with expert and other testimony and various (and often expensive) "demonstrative exhibits". Some firms even construct elaborate animastions just for the hearing. You can imagine what all this costs. The notebook's information was then likely presented in the context of a "summary judgment" motion of invalidity or unenforceability. Resaerching, drafting and finalizing these motions is perhaps the most attorney time consuming episode in a case short of trial preparation and can involve hundreds of attorney hours. The other side would have responded with a time consuming Opposition Motion and then the moving party could and almost certainly would have put in a Reply". If the motion succeeded on the baisis of a notebook, there may weel be an appeal to the Federal Circuit.... $$$$!!! With the great cost to companies in terms of dollars and other resorces, it may be valuable for a company to look at a potential infringement action not as a matter of right/wrong, or a vehicle for punishing an accussed, but as a cold dollars and cents business decision. Likewise for the accussed infringer -- what makes most sense from a business perspective informed by the counsel of one's competent, able and experienced legal counsel.
There are other means of testing the validity of patents outside of a full scale litigation in a Federal District court. As an example, there is a process called a reexamination, that allows parties to test the validity of claims of an issued patent by making a submission to the USPTO (because patents undergo the prosecution proceeding before the USPTO, issued patents are given a "presumption of validity" which means that in proceedings, for example in the Federal District Courts, the burden on proving invalidity lies,in general, on the party alleging invalidity and invalidity must be, in general, proved by a hogher threshold, clear and convincing evidence, as opposed, for example "preponderance of evidence".) In the "olden days" the PTO and the patent holder would then engage in a ppreocess akin to that of the original prosecution sometimes with the claims being amended, etc. This process after the initial filing was ex parte, i.e. only the applicant and the PTO participating. There was a belief among some that the process rarely resultewd in the patent being "thrown out," and the "presumption of validity" would, in some sense, be strengthened in subsequent court actions. The process has been changed recently to included an "inter partes" reexamination in which third parties participate in the examinination process subsequent to the initial filing. The cost is that such a third party participant's ability to contest the validity of the reexamined patent in court is highly circumscribed after participation in such a reexamination. "There is, at this time, little information available on what sort of results inter partes reexaminations actually produce.
The Amazon patent type of applications fall into the "methods of doing business" category. Perhaps because of the intense scrutiny these types of patents have received in the press, the United States Pastent and Trademark Office ("USPTO") has revised the proceedure foor examining these patents, in a way that appears intended to make it much more difficult for these applications to result in issued patents (more sets of eyes at the USPTO must see the application and more senior level personnel must appove, etc).
I guess this is what they call "thread drift".