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Brief context

  • I'm in the early stages of product development, pre-prototype. (Subtext: definitely no funds available for a legal opinion. I'll cross that bridge when it becomes feasible; for now, I'm just looking for a better understanding how prior art is generally interpreted in cases like this one.)
  • Bad news: there is an unexpired US patent that covers my concept (most claims are relevant and not easily designed around).
  • Good news (probably): I've found a few instances of prior art that support strong arguments that the patent is invalid on grounds of not being novel (my own non-lawyerly opinion of course). However, the patent is not a carbon copy of the prior art so there's a bit of room for interpretation.
  • The company does not appear to be practicing the patent anymore (nor are there any other companies doing so), so I don't see a need to go out of my way to invalidate it, but I'm doing a bit of homework now in case at some point in the future, the patent holder makes a fuss.
  • (I recognize that to show invalidity you have to show "that the patent is invalid by clear and convincing evidence, a substantially greater burden" than proving infringement https://chicagounbound.uchicago.edu/cgi/viewcontent.cgi?article=5529&context=journal_articles)
  • (I'll keep this post focused on an issue regarding one instance of prior art; I'll make another post on a different issue regarding another instance of prior art.)

Rather than citing the patent or prior art here, I'll lay out the key issue in general terms.

  • I've found a patent (from the 1910s, in case that's relevant), call it Patent A.
  • Patent A's claims describe the apparatus in the unexpired patent, call it Patent B. This is thanks to the broad wording of the claims of Patent A, which do not specify the number of wheels on each axle.
  • Patent B describes an apparatus with one wheel on each axle.
  • The specification of Patent A, however, describes an apparatus with a pair of wheels on each axle. This description makes reference to the drawing which shows "the preferred embodiment".
  • Though A's specification does not explicitly refer to alternative embodiments with different numbers of wheels, it does not in any way state that the preferred embodiment is the only possible one.
  • (Note: Patent A is not cited in Patent B or its examination.)

It's not clear to me how A's claims would most likely be interpreted.

According to this article http://www.ipbrief.net/wp-content/uploads/2012/10/IPB_Nilforoush.pdf "If the specification describes an embodiment as being its “best mode,” or only describes a single embodiment, the claim should not necessarily be limited to this embodiment, unless other factors suggest there is an implied disavowal of claim scope."

That sounds encouraging for a broad reading of Patent A; but the article discusses different approaches to interpreting claims: "When a court emphasizes “interpreting the claims in view of the specification,” the result is a more liberal use of the specification. Under this approach, the court focuses more on the rule that the specification provides context for the claims, rather than the rule that limitations from the specification should not be read into the claims. ... When the emphasis is on avoiding “improperly reading limitations from the specification into the claims,” the court tries to rely strictly on the claims themselves while minimizing reliance on the written description or other evidence. This approach places more emphasis on the rule that the claims define the scope of the patent right and emphasizes giving claim terms their ordinary and customary meaning, while placing less emphasis on the notion that the specification provides the context for the claims."

Adding to my uncertainty, the MPEP https://www.uspto.gov/web/offices/pac/mpep/s2111.html says that "Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record."

How would Patent A likely be interpreted? My sense (and my hope) is that Patent A should be interpreted for everything it contains, including its broad claims, which describe an apparatus with an unspecified number of wheels per axle (not sure if there's a better word to use here, but you get the idea: it could be 1, 2, whatever wheels per axle).

Do I have the right reading here, or am I missing something? Would this be the most likely interpretation of Patent A (in a scenario where it became necessary to argue that Patent B is invalid)? Or are there additional considerations?

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Bad news: there is an unexpired US patent that covers my concept (most claims are relevant and not easily designed around).

There may be more than that one patent

I've found a few instances of prior art that support strong arguments that the patent is invalid on grounds of not being novel

Via Public PAIR you can look up the entire history of the back-and-forth between the applicant and the office if you haven't done that yet.

The company does not appear to be practicing the patent anymore

Of course there is not any requirement to "practice the patent". The fact that they do not make it and have not licensed it might make it a reasonable chance they would license it to you. If they are really getting nothing now, you might get it exclusively for a small royalty and an option to get it exclusively.

I recognize that to show invalidity you have to show "that the patent is invalid by clear and convincing evidence, a substantially greater burden" than proving infringement

The article you cite is way, way out of date. Under the 2012 AIA law there is a way to invalidate patents by the PTAB via an IPR. It is much less expensive than a full out infringement trial but still expensive.

This is thanks to the broad wording of the claims of Patent A, which do not specify the number of wheels on each axle.

For the purposes of invaliding prior art, claims are not an issue at all. Prior art is looked at for what it "teaches". Anything published, anywhere in the world, in any form, can be prior art. Not just older patents. If the specification explains how to make something with four axles and how to make something with two axles and the claims claim something with a plurality of axles, the document, as a whole, does not teach how to make something with 17 axles.

Patented claims are not given the broadest reasonable interpretation during court proceedings involving infringement and validity, and can be interpreted based on a fully developed prosecution record.

True, but unrelated to how patent A is looked at in terms of prior art.

Prior art only anticipates (shows lack of novelty) a claim when a single implementation taught in the prior art has all of the elements in the claim. Obviousness is shown when a prior art base reverence has most/many of the elements of the claim and other prior art references convincing fill in the other elements and/or interconnection of elements.

  • Thanks, George. A followup question: you said "For the purposes of invaliding prior art, claims are not an issue at all. Prior art is looked at for what it "teaches"". If I read that correctly, a patent "teaches" both what's in its specification and what's in its claims; so in the case I described, the claims of Patent A teach an apparatus with an unspecified number of wheels per axle. Is that correct? – user1 Apr 4 at 0:41
  • Briefly responding to a few other things: (1) I'm pretty confident there are no other relevant patents following a pretty exhaustive search, but good point nonetheless. (2) Definitely, one of the first things I did was dig into the records on Public PAIR. (3) Re: IPR, I'm aware of that as an option but also think it's a bridge that I would only try crossing when it becomes feasible/necessary. – user1 Apr 4 at 0:52
  • Whatever is in a document can be part of what it teaches, of course. However, claims do not usually explain something that was not otherwise explained in the spec. Rather than explain or describe, they define. – George White Apr 4 at 1:44

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