TEN THINGS PLASTICS ENGINEERS SHOULD KNOW
ABOUT INTELLECTUAL PROPERTY
Steven J. Grossman, Ph.D., Jeffrey T. Placker and Beth A. Filip
Grossman, Tucker, Perreault, & Pfleger, PLLC
Manchester, NH
Abstract
Intellectual property law has had a number of somewhat remarkable changes in recent years. For
example, the scope and enforceability of patents in the United States has been modified with respect to
what might be considered an “equivalent” to a claimed invention. The role of judges and juries in
ascertaining the scope of a patent has been dramatically altered. This paper will identify these new and
important changes in the law of intellectual property and how such issues should be considered by the
community of plastics engineers.
Discussion
Over the past decade, a number of important legal decisions have been handed down which have
altered the playing field of intellectual property. While certainly, these decisions apply to technology
sectors outside plastics engineering, the world of plastics technology has traditionally relied heavily on
intellectual property protection in the form of patents, trade secrets, trademarks and copyright.
Intellectual property therefore emerges as a relatively dynamic field of law, and while perhaps not
commonly viewed in such light in the technology sector, changes in intellectual property law can be
significant, with potentially broad-sweeping implications. Or, stated another way, while Congress and the
Supreme Court do not regularly weigh-in on intellectual property issues, when they do, it typically leads to
many important and critical considerations for the practicing plastics engineer. And most importantly, one
does not need a degree in law to comprehend such decisions when maneuvering within the plastics
industry.
This paper therefore seeks to highlight some of the more significant changes, over the past ten years, that
have occurred in the field of intellectual property. Additionally, a few hypothetical examples are offered to
illustrate how such changes might impact the way the plastics engineer may now seek to exploit intellectual
property law to their own particular advantage.
Patents
1. Provisional Applications. U.S. patent law now provides that inventors may file what is known as
a "provisional" application. A provisional application need only include a specification text, a drawing if
necessary for understanding of the invention, and a nominal fee. The provisional application will not be
examined for patentability. However, within one year of filing, the provisional application may then be
relied upon to file a formal (non-provisional) application, which then must include claims directed at the
subject invention. One particular advantage of provisional applications is that it typically provides a less
expensive opportunity to quickly secure a filing date, and if, after one year, the decision is reached that the
technology is no longer of patentable interest, the application can be abandoned while remaining
confidential to the applicant.
2.
What Should Be Disclosed When Applying For A Patent? In order to obtain a patent, at the
time of filing it is necessary for an inventor to disclose their best mode of carrying out their invention.
Therefore, inventors cannot conceal the best method of practicing their invention, or what may sometimes
be identified as their preferred embodiments. However, in Teleflex, Inc. v. Ficosa, the appeals court found
that the best mode requirement does NOT extend to production details, including equipment for making the
product, available materials, relationships with suppliers or customer requirements. Best mode also does
NOT extend to routine details apparent to one of ordinary skill in the art.
3.
Who Interprets Patents? In a now famous 1996 decision of the Supreme Court, in Markman v.
West-view Instruments, it was held that the construction of a patent, including legal and technical terms, is
for the court (judge) to decide. Prior to such time, patent construction was handled by a jury, who settled
the meaning of ambiguous terms based upon witness testimony, expert opinion, etc. Some of the rationale
offered by the Supreme Court was that patent construction requires specialized training and that the judge
would be more likely to provide a proper interpretation than the jury. In addition, the Court suggested that
interpretation by the judge, as opposed to a jury, would lead to more uniformity in treatment of patents.
It is clear then that a critical audience for one's patent (aside from one's competitors) will now be a judge,
who will be called upon to interpret disputed patent terms. This has led to what many refer to as "Markman
Hearings" where each party advances their respective case for a certain desired interpretation. As you
might imagine, once a disputed term in a patent is interpreted, the issue of infringement may become rather
straight-forward.
4.
How Are Patents Interpreted? Since Markman, there have been many important rulings on this
question. To a first degree, a long line of cases now hold that evidence "intrinsic" to the patent, particularly
the claim wording and patent specification itself are the primary source for determining claim meaning. In
addition, a court will typically consider the prosecution history, which is the record made between the
applicant and the examiner at the USPTO. Remarkably, however, in a case now on appeal, a decision is
scheduled on the question as to what role dictionaries may be relied upon to interpret a claim term. This
case has drawn a great deal of "amicus briefs" which are arguments of unrelated third parties urging for a
particular outcome.
5.
What If The Claims Of The Patent Do Not Cover Subject Matter In The Specification? In
2002 it was held that the claim of a specific device or combination, and an omission to claim other devices
or combinations apparent on the face of the patent, amount to a dedication to the public of that which is not
claimed. As you might expect, it can be argued that there is a risk now in filing unnecessarily long and
unnecessarily detailed specifications, as it might create the possibility that you have inadvertently provided
your competitors with a free "design-around" of your patented technology.
6.
What Would Be A Good Example Of An Infringement Suit Which Illustrates The Critical
Importance Of Claim Drafting? In Chef America v. Lamb, the issue before the court was the meaning of
the words "heating the resulting batter-coated dough to a temperature in the range of 400 degrees F to 850
degrees F." The patent holder argued that the requirement "heating to" should be understood as "heating
at" and was therefore satisfied when the oven temperature was set to 400-800o F. The accused argued that
the requirement "heating to" meant that the batter itself had to reach a temperature of 400-800o F. The
patent holder responded and pointed out that if the batter was heated to a temperature of 400-800o F, the
batter would be unusable and the intent of the invention would not be achieved. The court held for the
accused, indicating that it would not redraft claims to make them operational or functional. Lesson: watch
your prepositions when drafting/reviewing patent claims.
7.
What Happens To The Scope Of A Patent If, During Examination, A Claim Is Amended
And Narrowed? Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. highlights the importance of
narrowing amendments in claim interpretation. In this case the court created the presumption that the entire
territory between the original claim limitation and the amended claim limitation is surrendered. To
overcome the presumption the patent holder must demonstrate, among other things, that either the
equivalent would have been unforeseeable at the time of the amendment. For example, assume a claim is
directed at blending two polymers. Then, assume the claim is amended to recite blending by extrusion
compounding. Assuming that blending by injection molding was a foreseeable alternative at the time of the
amendment, blending by injection molding may not be viewed as an equivalent of the claimed invention.
Lesson: when amending a claim before the USPTO, make certain to consider those foreseeable alternatives
that may be available to accomplish a particular result.
8.
Can The Construction Of A Patent Term Require A Showing Of Intent By The Accused To
Accomplish A Particular Task? In a recent case likely to be of direct interest to plastic engineers, the
issue before the court was the meaning of the phrase: "injection a quantity of first plastic into the first mold
cavity so that the plastic follows...a first predetermined general direction." The patent holder argued that
"predetermined general direction" meant a direction predetermined by the shape of the mold cavity. The
district court, however, held that "predetermined" required intent and foreknowledge in the fixing of the
plastic flow direction. On appeal, the appellate court pointed out that the patent holder had failed to
preserve its objection to such ruling of the lower court, and that the patent holder had elected to limit its
claim with a scienter (intent) requirement and was required to demonstrate foreknowledge of flow direction
to prove infringement. Accordingly, while traditionally, patent infringement is established without regard
to the intent, in this case, intent was found relevant.
Trade Marks and Trade Dress
9. What Protection Is Available When Unregistered Product Designs Are Infringed?
Unregistered trade dress or product designs may be protected by §43(a) of the Trademark Act of 1946.
§43(a) only provides that the feature, for which protection is sought, must not be functional; thus little
guidance is given for when the feature may be protected. In Wal-Mart Stores, Inc. v. Samara Brothers,
Inc., the Supreme Court determined that in order to show that a product design is distinctive, and therefore
protectable, it is necessary to show that secondary meaning has been acquired by the product. In other
words, it is necessary to show that consumers have come to identify the product design with the source of
the product.
10.
Can Trade Dress Protection Be Obtained For Functional Features? In 2001 the Supreme
Court held that trade dress protection cannot be obtained for functional features of a device. A feature is
considered functional if "it is essential to the use or purpose of the device or if it affects the cost or quality
of the device." When a utility patent has been issued for a feature, there may be a strong evidentiary
inference that the feature is functional. This consideration should be of particular importance when
considering how to protect one's product design.
Summary
Intellectual property law remains relatively dynamic. In recent years various changes in the law of
intellectual property is likely to have a significant effect on how companies may secure the best protection
available for technology. The ten points noted above highlight a portion of major decisions that arguably
will influence the strategy in maximizing the value and scope of an intellectual property portfolio.