Should Patents Have Background and Summary Sections?

Greg Aharonian's recent PATNEWS newsletter mentions that he is reviewing the book Drafting Patents for Litigation and Licensing, edited by Bradley Wright of Banner & Witcoff. A chapter in that book led Greg to raise the question about whether inventors and patent owners are helped in any way by including background and summary sections in patents. Greg mentions that numerous risks that can arise when prior art is improperly discussed or when statements in the background or summary sections are imported by judges as unwanted limitations in claims. With all the risks, and with no legal requirement to include such sections, why do it?

It's a fair question and perhaps patents will be more successful if unnecessary sections are left out, but there's another perspective to consider.

Greg is not alone, and in fact is thinking along lines of Irving Kayton et al. at PRG who have been advocating barebones approaches to skirt the numerous pitfalls from judges and courts. (I really enjoyed the "Drafting and Crafting Winning Patents" course I took from them several years ago where they introduced their minimalist concepts.) Skipping the background and summary makes a lot of sense with those concerns in mind. However, the chance of a judge abusing your issued patent is minuscule, and in fact is ZERO if it doesn't get past the Examiner. In light of KSR, I would argue (and do so argue in the book Conquering Innovation Fatigue from John Wiley & Sons, 2009) that it is valuable to build some storytelling into the patent to help the examiner avoid the temptation of applying hindsight to the invention and, when possible, to help the Examiner see that the invention involved more than just conventional problem solving to deal with known problems in standard ways.

Sometimes the key to a brilliant invention is discovering what the real problem was. Once understood, the solution may seem "obvious" and straightforward, and if the patent just presents the solution, the nonobvious nature of it may be lost upon the examiner. Examiners are people who will be most helpful in advancing patents when they get the story and have their imagination captured, and that is what can be done in the background and summary. Tell a story to advance your nonobviousness position, but do be cautious about discussing prior art and avoid listing benefits or "objects" of the invention which can certainly haunt you in future litigation. But when there isn't much of a story that needs to be told, skipping the background altogether might be wise.

Another consideration is the benefits of helping others besides judges appreciate and understand the invention. This might include members of a jury as well as potential licensees or business partners. Again, the storytelling role of the background can add value to the patent.

Storytelling: it's what marketing is, and patents need to be drafted with marketing insights and plans in mind for both long-term and immediate success.

The Miazaki Case: Raising the Bar for Definiteness in Patent Claims

A senior patent examiner at the USPTO in a phone interview recently stressed the precedential BPAI case, Ex parte Miyazaki, Appeal No. 2007-3300 (BPAI 2008). In this interesting case, the Board had trouble with the language in this claim:

1. A large printer comprising:
a paper feeding unit operable to feed at least one roll of paper, at least one substantially flat sheet of paper and at least one stiff carton, the paper feeding unit being located at a height that enables a user, who is approximately 170 cm tall, standing in front of the printer to execute the paper feeding process including replacement of the roll paper and setting at least one of the sheet of
paper and the stiff carton;

a printing unit located below the paper feeding unit;

a discharged paper stacking unit located below the printing unit; and

a paper feeding path extending in a substantially straight line from the paper feeding unit to the discharged paper stacking unit via the printing unit.

The claim tried to describe a relationship between a person of average height and elements of the printer, but the Board found that there were infinite possibilities in the actual structures described. Where was the person standing - on a platform, for example? And where was the printer - on the floor, or on a table, or what? Given the uncertainty, there is certainly an argument that the claim is indefinite and thus invalid.

However, the Board did more than simply identify the indefinite nature of the claim. They went much further in giving a new standard for finding a claim indefinite under Section 112, paragraph 2. Woodcock Washburn LLP notes the problem in their client alert, "BPAI Expands Definiteness Requirement During Patent Prosecution in Ex parte Miyazaki":

On November 19, 2008 the Board of Patent Appeals and Interferences (Board) announced in the above captioned case that “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, slip op. at 11-12....

The mischief created by the Board in this case is not whether the claim is or is not indefinite under the statute but, rather, it is found in the Board’s broad holding regarding the application of 35 U.S.C. § 112, second paragraph. Many claim limitations are amenable to two or more reasonable constructions as that is what gives a patent claim breadth. If the Board’s holding is taken at face value, we can expect a flood of rejections of claim terms as being indefinite under the statute.

It may be increasingly important to review claim language carefully and make sure that at least some claims avoid multiple interpretations in ways that could fall under Ex parte Miyazaki. Naturally, almost every limitation of every claim has gray areas that could be interpreted in multiple ways. I hope reason will prevail in the quest for definiteness in claim language.

Inventions from the Fox Valley (Fox Cities) of Wisconsin

As a proud resident of Appleton, Wisconsin in the beautiful Fox Valley, I'm happy to report that this area has a surprisingly rich history of invention and innovation. In fact, the Fox Valley is one of the most patent-rich parts of the Midwest, largely due to the intense patenting activities of consumer products companies like Kimberly-Clark Corp. (which usually gets more patents each year than MIT!) and Georgia-Pacific.

Here is a small sampling of the innovations that have come from this region with a population under 200,000 people (Appleton, the largest city in the Valley, has just 75,000).

• Carbonless paper and a host of innovations related to microcapsules applied to paper. Appleton Paper helped lead the way, developing the coating processes that allowed microcapsules to be applied to paper at high speed without crushing them. Recently Procter & Gamble licensed Appleton's encapsulation technology to apply long-lasting fragrance in microcapsules to laundry via Downy laundry sheets. Numerous innovative applications remain to be developed.



• Cellucotton or creped tissue paper: the absorbent paper wadding material used as a wound dressing and then as the basis for Kotex feminine care products, invented by Ernst Mahler of Kimberly-Clark Corporation. This also led to Kleenex facial tissue and numerous related innovations, including anti-viral tissue, many innovations in processing and packaging, and eventually soft uncreped tissue (with about 50 patents protecting this significant advance in technology, the basis now for several leading products).



• High performance disposable diapers were invented in the Fox Valley. Key innovations include the use of superabsorbent polymers to increase absorbency and a variety of structures for reducing leakage and improving comfort.



• In April of 1969, Dr. Lawson Winton cloned the world's first test-tube tree, a triploid quaking aspen, at the Institute of Paper Chemistry. Genetic engineering of trees is now the basis for some of the world’s largest suppliers of renewable fiber, such as Fibria of Brazil.



• Appleton was home to the first electric street car. The first electric street cars began operating in Appleton on August 16, 1886. Appleton was also the first community in the nation to have electric street cars. They ran until 1930. Sources: Wisconsin Historical Society and http://www.apl.org/history/firsts.html.



• Appleton made history for having the first buildings in the world with electric lighting from hydroelectric power. From http://www.apl.org/history/firsts.html: “On the evening of Saturday, September 30, 1882, Appleton Paper and Pulp Company, the Vulcan Paper Company, and the Hearthstone (home of H. J. Rogers), became the first buildings in the world lighted by electricity generated from the Edison hydroelectric central station.”



• Inverter power sources for arc welders from Miller Electric. See http://www.millerwelds.com/about/1988.html. Miller Electric has been the source of many significant innovation in arc welding, including the world's first engine-driven inverter. See http://www.millerwelds.com/about/1998.html.



• The Fox Valley is home of many significant advances in packaging for microwave-heated foods, such as US Pat. No. 4,861,958, “Packaging Container for Microwave Popcorn Popping,” by Tim Bohrer (Neenah, WI), Tom Pawlowski (Neenah), and Richard Brown (Appleton, WI) of Fort James Corp., now Georgia-Pacific. This was part of a series of patents for “microwave susceptor” technology that allowed a portion of the package to heat up to properly deliver heat to the food being cooked. They were part of the Fox Valley team that developed the first microwavable popcorn package which insured that more kernels would pop and that the package would expand to accommodate the popped corn. The invention was a huge success selling over a billion units per year in North America. The technology was expanded using chemical deactivation technology which resulted in patented processes for products used by Kraft, Heinz Ore-Ida, ConAgra, and others.



• LiveYearbook (http://www.liveyearbook.com/). This is a startup company that is inventing new ways to provide long-lasting, dynamic yearbooks at low cost for schools and organizations. They were the first IT company and first Northeastern WI company to win the Governor’s Business Prize Award (2010). The programming for this concept is being done here in the Fox Valley.



• The famous enMotion® paper towel dispenser, the one that automatically delivers towel by waving your hands in front of it, was developed in Neenah by a Georgia-Pacific team.



• A variety of papermaking advances have their origins in the valley, including Georgia Pacific's foam-based tissue forming technology that was commercialized in France and novel fabrics for papermaking from Kimberly-Clark, Appleton Wire (now Albany International), and Asten Johnson. The famous Crecent Former, used worldwide for making tissue, was a local innovation from Kimberly-Clark. Also, dryer bars--the rods used in rotating steam-filled driers to enhance heat transfer in drying tissue and paper around the world--were invented in the Valley at Kimberly-Clark Corp. and have saved vast amounts of energy over the years. The Pulmac Classifier for detecting "stickies"--polymer junk that can interfere with papermaking--was also developed in the Valley.



• Some of the most valuable advances in nonwoven textiles and fabrics came from Fox Valley inventors working for Kimberly-Clark Corp. This includes the foundation for many of the laminated fabrics that are used in medical gowns and other health care products, the soft webs used in diapers and many other products, stretchable nonwovens, and polymer-paper fiber composites.

If you would like to see other inventions from this region featured, let me know.

PCT Fees to Drop in September

The IP Factor reports that PCT filing fees are dropping in September. About a 15% reduction. Nice! May US fees start moving downward as well--wishful thinking.

Patent Reform and Medical Innovation: There Are Reasons To Be Concerned

One of the constant challenges in crafting policy and law is to avoid unintentional consequences. This cannot be done by living in an ivory tower. When it comes to the business world in particular, there is a need for careful communication with small business owners and entrepreneurs to understand what they are facing and what they might face in light of proposed changes. When it comes to some of the proposals for patent reform, the need to listen to the "voice of the innovator" becomes particularly great. Unfortunately, there is sometimes a human tendency to listen to the voice of one's own staff and the voice of major contributors rather than the voice of the many who will be affected.

What will proposed patent reform legislation do for the economy? I hope there will be careful hearings and investigations into that matter, far more than the efforts so far. Consider the medical industry, an area where innovation can have tremendous impact not only on the economy but directly on human lives. Will changes in patent laws hinder innovation and weaken the industry? Whatever changes we make, let's hope they will strengthen this vital area.

The magazine Medical Innovation and Business recently devoted an entire issue to the challenges of patent reform. The lead article, "Patent Reform: Effects On Medical Innovation Businesses" by Renee Kaswan, David Boundy, and Ron Katznelson, speaks in strident tones about the scope of the problem:

We, as the editors of this special issue, are deeply concerned that the Patent Reform Act will severely harm medical and small company innovation. As an academic researcher who invented a blockbuster drug, Restasis®, a patent lawyer who has helped small companies and their investors, and an inventor/entrepreneur who founded and raised investment capital for two start-up companies based on patentable inventions, we have seen how the robust American patent system enables new, innovative companies to secure investment funding and to negotiate with strategic partners. We have seen how patents enable entrepreneurs and researchers to turn raw ideas into useful products. A strong patent system benefits patients and helps the economy grow by giving companies the competitive position and incentives they need to get new pharmaceuticals, medical devices and procedures into the technology pipeline. Innovators can invest in R&D, testing and FDA approval because patents allow investors to recoup their investments in these staggeringly expensive activities. We are very concerned that the Patent Reform Act undercuts the entire idea-to-product pipeline by weakening the investment value of patents in several ways that selectively impact the most innovative companies. If Congress gets Patent Reform wrong, products characterized by high development costs and low production costs, typical in medical innovation, will die in the lab. The capital investment necessary to get ideas to market will simply dry up, and be diverted to companies that don't need patents to attenuate risk.

Some of the many articles in the issue include:

• "Venture Capital - The Buck Stops Where?" by Gary Lauder


• "What Is A Bad Patent? 1" by Patrick Doody


• "Patent Reform's Weakened Grace Period: Its Effects On Startups, Small Companies, University Spin-Offs And Medical Innovators" by David E. Boundy and Matthew Marquardt


• "Post-Grant Review-Our Next Nightmare? VC Perspective" by John Neis


• "Patent Reforms Must Focus On The U.S. Patent Office" by Ron D. Katznelson, Ph.D.

Good Reminder from Paul Jones: The Hidden Costs of "Free" Grant Money for Innovators

I'm happy to announce that Paul Jones, an attorney and highly connected champion of innovation with lots of experience helping startups, now has his own blog where he posts about innovation, startups, and the like. One post that caught my eye is "Grant Money: When “Free” is not “Free”." He discusses the temptation to pursue government grants to help a new business, and points out the downsides to taking the free money. He scores several good points. Be sure to read it. In conclusion, he says this:

Now I am not suggesting that grants shouldn’t be part of a good start-up’s financial model. But the financial model should serve the needs of the business and it’s investors, not the needs of grant writers. So by all means, use grants – sparingly – to establish credibility. And, if from time to time you run across a grant opportunity that actually dovetails nicely with your real business needs and timing, by all means go for it. But if you ever find yourself thinking that getting grants is what your business is all about – well, don’t tell that to your investors.

Wise words. Thanks, Paul!

Bed Metrics and Unintended Productivity Losses

One of the constant challenges in innovation, a topic we address in Conquering Innovation Fatigue, is finding the right metrics to encourage meaningful innovation. The problem is that poor metrics can lead to all sorts of unintended bad behaviors that can waste resources or even squelch real innovation. If you measure and reward innovation primarily based on the number of patents a group files, you may gets lots of patents--and lots of legal fees and wasted time, including internecine rivalries as groups try to keep others in the corporation from sharing in the credit for patent filings. One must have a variety of metrics and must constantly scrutinize their impact and application to keep the behaviors they engender aligned with the objectives of the corporation.

To bring the problems with weak metrics down to earth, let me share an example from a Midwest grocery store chain, as reported to me by one of their employees. Upper management imposed challenging goals for cashier productivity as measured in terms of IPM - Items Per Minute - a measure of how rapidly a cashier scans and processes items as customers check out. Naturally, for good customer satisfaction and good ROI on cashier salaries, the Corporation should want high IPM, right? Sure, but there are unintended consequences arising from the way the metrics are determined. The problem comes from the use of "terminal secure mode." Terminal secure mode is intended to essentially shut down a cashier's terminal when a terminal is not in use or the cashier is momentarily away. But it also provides a slick way to game the system and get better statistics, for when the terminal is secured, the clock stops ticking. Thus, local management in at least one store has urged all cashiers to use terminal secure mode frequently. If you have to pause for any reason - helping with bagging, etc. - they are told to use terminal secure mode to stop the clock. This requires two keyboard actions to initiate, and then further actions to bring the terminal back up, all resulting in lost time. But even worse, going into terminal secure mode nullifies the credit card scan that the customer may already have done to prepare for payment, so the puzzled customer finds that they have to scan their card again for payment, causing delay and irritation. Time is lost, customers are annoyed, productivity is lower, and the in-store experience deteriorates, but IPM stats look good and management is happy. Counterproductive metrics. So easy to do.

Always scrutinize your innovation metrics (and all other metrics) for unintended consequences and for alignment of behaviors and incentives with corporate goals. It's something that Innovationedge can help you with today. Give us a call!