Young Innovators Begin Patent Filing for Robot Invention

Tuesday, October 31, 2017

The United States Patent and Trademark Office can be a tricky area to navigate if you are not familiar with its proceedings. When a team of young inventors and their mentors approached us at Preti Flaherty to help begin the process for a patent application, we were excited to lend a hand.

Pro Bono Case Helps Team of Students

This unique pro bono case had me meet a team of students ranging from grades four to six. The team and their coaches took a road trip from New Hampshire to our Intellectual Property office in downtown Boston, where they presented their First Lego League project in front of me and my colleagues.

If you are not familiar with First Lego League, it encourages elementary and middle school students around the world to research a real-world problem (ex. food safety, energy, or recycling), and challenges them to come up with a solution by encouraging them to design, build, and program a robot. Not any easy feat to accomplish between homework, family time, and play time. 

The Technical Difficulties!

We are not at liberty to share the details of team The Technical Difficulties!’ inner workings, but I can say they have selflessly chosen to focus on a robot that will help the world of the blind and their faithful seeing-eye dogs. 

I have enjoyed the process of advising and guiding the team through the beginning of their patent filing journey by filing a Provisional Patent Application for the invention. Disclosure: a provisional patent application allows you to file without a formal patent claim, oath or declaration, or any information disclosure statement. After filing the Provisional Patent Application, the team took another trip to Boston so that we could discuss how best to continue their journey.

All of us here at Preti Flaherty look forward to seeing where their IP journey takes them from here.

Patents as a Technology and Marketing Resource

Monday, October 16, 2017

Several types of patent searches are known for identifying patents and published patent applications of potential interest. One type of search, often called a novelty search, is employed to identify prior issued patents and published patent applications relating to a particular concept or idea in an effort to assess patentability of the concept. Another type of search, often known as an infringement or freedom to operate search, is conducted in an effort to identify patents the claims of which may present infringement questions with respect to an intended product.

Patents and published applications are sometimes overlooked as a general technology resource for purposes of product development and market research. The quest for such patents and published applications, sometimes known as a state-of-the-art search, serves the purpose of gaining a general knowledge of the patent landscape in respect to a particular area or field of technology rather than just a specific concept. Such a search can be conducted for the subject matter of interest and also for names of known inventors and owners of relevant technology. Some patents often contain a background section that traces the patent history of prior related technology, which can reveal additional information of potential relevance.

Patents and published applications are readily accessible via the website of the United States Patent and Trademark Office (USPTO) and via the websites of other countries or jurisdictions, such as the European Patent Office (EPO). Patent information is also available via commercial sites, such as Google Patents.

Patents and published applications identified from such searching activity can assist in defining:

  • what companies are in the field 
  • what technologies may be in use
  • the product space of interest
  • areas of patent concentration
  • competing technologies
  • opportunities for product differentiation 
  • areas for further market and product investigation
  • technologies that present infringement risks

Information collected from such patent investigations can prove to be of value in determining a product and market development path, whether a product concept is distinguishable from what is known and possibly patentable, and what the competitive picture may be. Such investigations may also illuminate the need for more specific patent searching to assess risks of infringement of a particular product implementation.

The scope of this type of patent investigation can vary to suit particular purposes and budget. For example, the investigation may be limited in geographic scope to cover only the United States or other countries of interest, and may vary in technological scope to suit specific circumstances. The investigation may also be conducted in stages depending on results from a prior stage, and may extend to non-patent information such as can be obtained on the web and other sources.

It is therefore useful to remember that product development and market research projects can often benefit from the information and knowledge gained by the identification and review of relevant data.

Your Business May Be Infringing on a Patent. What Should You Do?

Wednesday, September 27, 2017

What should your company do if it becomes aware of a patent having claims that appear to be relevant to one of its products or receives a cease and desist letter charging infringement?

Enhanced Damage Awards and Awards of Attorney’s Fees in Patent Cases

When a suit for patent infringement is filed, in the event of an adverse judgment, an infringer may be subject to permanent injunction that precludes further infringement and an order to pay the patent owner money damages to compensate for the infringement.

In certain circumstances, the courts have the discretion to increase the amount of the damage award. Under the patent laws “the court may increase the damages up to three times the amount found or assessed.” The damages are enhanced in circumstances where the infringement is said to be “willful.” Additionally, “[t]he court in exceptional cases may award reasonable attorney’s fees to the prevailing party.” A finding that the infringement is willful and that the case is exceptional often go hand in hand. These provisions pose substantial risks in the event a court finds that the accused party infringes the asserted patent(s) and that the infringement was willful or that the case was exceptional since the multiplication of the damages and the patent owner’s attorney fees can involve large sums.

The Evolution of the Law of Willful Infringement

A historical perspective is useful in understanding how the courts have dealt with claims that an infringement was willful.

In 1983, the U.S. Court of Appeals for the Federal Circuit (CAFC) in Underwater Devices v. Morrison-Knudsen Co., held that where “a potential infringer has actual notice of another’s patent rights, he has an affirmative duty to exercise due care to determine whether or not he is infringing. . . . Such an affirmative duty includes, inter alia, the duty to seek and obtain competent legal advice from counsel before the initiation of possible infringing activity.” The 1983 decision of the CAFC was in response to “widespread disregard of patent rights” that was perceived to be “undermining the national innovation incentive.”

The Underwater Devices Court stated that where a defendant, in good faith, relied on a competent opinion of counsel that concluded there was no infringement or that the relevant patent claims were invalid, the opinion would serve as a defense to a charge of willful infringement. Thus, as of the 1983 timeframe, in response to a cease and desist letter charging infringement, the accused infringer was well advised to obtain an opinion of counsel that concluded that there was no infringement or that the asserted claims were invalid if counsel could provide such an opinion. To satisfy the requirement that the opinion be viewed as a “competent opinion of counsel” such opinions usually would involve a thorough analysis of the claims, the patent specification, the Patent Office file history and any relevant prior art.

Competent opinions of counsel routinely served as a defense to charges that an infringement was willful and that a case was exceptional so as to justify increased damages and an award of attorney fees.

The CAFC revisited the law of willful infringement in 2007 in In re Seagate Technology, LLC. In the Seagate case, the Court held that “to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” The Seagate Court thus equated “willfulness” to reckless behavior; i.e. a reckless disregard to the patent owner’s rights, and expressly abandoned the duty of due care requirement along with the associated affirmative obligation to obtain an opinion of counsel enunciated in the Underwater Devices case. As a consequence of the Seagate decision, it became more difficult for patent owners to obtain enhanced damage awards and parties charged with infringement were more reluctant to seek opinions of counsel and incur the costs associated therewith. Instead, when charged with infringement, parties often asserted that their conduct was not objectively reckless based on internally generated theories or theories developed during the litigation. With the Seagate decision, the pendulum had swung in favor of parties accused of infringement and enhanced damage awards were more difficult to obtain.

In 2016, the Supreme Court, in Halo Electronics, Inc. v. Pulse Electronics, Inc., considered the requirements for a finding of willful infringement. As a result of this decision, the pendulum once again swung in favor of the patent owner. The Halo Court stated that the Seagate test reflected “a sound recognition that enhanced damages are generally appropriate ... only in egregious cases” but that the Seagate test was unduly rigid and “impermissibly encumbers” the discretion granted to the district courts. The Supreme Court in Halo equated willfulness with egregious conduct without setting forth a more explicit standard and explained that “[a] patent infringer's subjective willfulness, whether intentional or knowing, may warrant enhanced damages, without regard to whether his infringement was objectively reckless.” The Halo Court also rejected the requirement that willfulness be proved by clear and convincing evidence as had been the standard of proof applied for decades and held that “the statute at issue supplied no basis for imposing a heightened standard.” Thus, post Halo, patent owners may satisfy their burden of proof for a finding of willful infringement by showing egregious behavior by the infringer with proof by a preponderance of the evidence rather than by the heightened clear and convincing evidence standard. Left open for interpretation was what actually constitutes egregious behavior. Given this context, following the Halo decision, opinions of counsel appear once again to take on greater importance as is it less likely that an accused infringer, having sought and obtained a competent opinion of counsel as to non-infringement or invalidity, would be found to have engaged in egregious behavior so as to justify enhanced damages.


As a result of the Halo decision, in response to receipt of an assertion that a product infringes another’s patent rights, or upon recognition that the claims of an issued patent could potentially be relevant to a company’s business, the matter be referred to patent counsel to assess the patent claims with respect to their applicability and/or validity. Patent counsel may then consider whether, given the circumstances, an opinion of counsel can or should be provided. The costs associated with the preparation of such an opinion are typically far less than the additional amount payable to a patent owner should enhanced damages or attorney fees be awarded following an adverse judgment.

Some Foreign Activities Can Result in Liability for Patent Infringement Under US Patent Law

Tuesday, September 6, 2016

It is generally known that one who manufactures, uses, sells or offers to sell a product in the US or that practices a process in the US that is covered by one or more claims of a US patent is liable for patent infringement under US law.  Less well known is that certain activities involving activities outside of the US can give rise to a cause of action for patent infringement.

(1)       Importing a product manufactured by a patented process

Under US law one who imports into the US or offers to sell, sells or uses within the US, a product made by a process patented in the US is liable for patent infringement even if the process is practiced outside of the US.  35 U.S.C. 271 (g).  Thus, one cannot avoid claims to a patented process simply by making a product in accordance with the patented process overseas.

(2)       Importing unpatented components of a patented invention from a foreign supplier for use is an infringement in the US

A recent court case considered the authority of the US International Trade Commission (USITC) to issue exclusion orders barring importation of goods where the subject goods did not infringe as of the time of importation but were used by the importer to directly infringe a US patent at the inducement of the foreign supplier of the goods.  Section 337 of the Tariff Act of 1930 authorizes the USITC to investigate allegations of unfair trade acts in the importation of articles that infringe a valid United States patent.  19 U.S.C. § 1337(b)(1).  The Court of Appeals for the Federal Circuit (CAFC) recently held that the USITC has the authority under Section 337 of the Tariff Act to issue an exclusion order blocking the importation of products that do not directly infringe at the time of importation into the US where the foreign seller was inducing a direct infringement by the importer. The Court held that this position was reasonable because it was consistent with the mandate of the USITC to “safeguard United States commercial interests at the border” even absent a direct infringement at the border.  Suprema, Inc. et al. v. International Trade Commission et al., 2012-1170 at 26-27 (Fed. Cir. August 10, 2015). 

(3)       Exporting unpatented components of a patented invention for combination outside the US

Under US law Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.   35 USC 271 (f) (1). 

Assume a US manufacturer within the US exports one or more components of an invention that is the subject of a US patent.  If the US manufacturer instructs the customer to combine the one or more components so as to produce a product that would infringe the US patent if the product were made in the US, the US manufacturer is liable for infringement even though the patented invention was never made in the US. 

(4)       Exporting unpatented non-staple articles from the US constitutes an infringement of a US patent if the articles are intended to be combined outside of the US in a manner that would infringe a US patent if the combination occurred in the US

Under US law, Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.  35 271 (f) (2).

Under this statute, a party can be liable for contributory infringement if the party is exporting a non-staple article of commerce that is intended for use in a product covered by a US patent even if the component, per se, is not covered by any claims of a US patent.  The party exporting the unpatented component will be liable  if the unpatented component is specifically adapted for use in a product covered by a US patent. Contributory infringement may be found  even if the combination of the unpatented component with other components to form the patented invention occurs outside of the United States. 

(5)       An offers for sale anywhere in the world may constitute an act of infringement if the product is ultimately to be used in or delivered to the US

An offer to sell a product that would infringe a US patent constitutes an act of patent infringement under US law.  In a recent decision, the Court of Appeals for the Federal Circuit held that, for purposes of infringement, an actionable offer to sell occurs when a company makes an offer outside of the US to sell a product that will ultimately be used in or delivered to the US. The act of offering the product covered by one or more claims of a US patent which was planned to be delivered to the United States was held to constitute the infringing act.

As noted above, there are exceptions to the general rule that the reach of a US patent ends at the US border.  It is therefore important to be aware that certain acts that occur in foreign countries can be actionable under US patent law.  Additionally, certain acts in the US that do not amount to a direct infringement can still be actionable if coupled with overseas activity that would constitute an infringement of a US patent if the activity occurred in the US. When questions arise regarding the applicability of US patents to foreign activities it is generally advisable to consult a specialist that deals with such matters.

Blog authored by Vic Lebovici, a member of Preti Flaherty's IP Practice Group.  

Software Inventions See More Help in Bascom Decision

Thursday, July 21, 2016

Since the Supreme Court decided Alice Corp. v. CLS Bank International, patent examiners and the courts have been working to better define patent eligibility. Following closely on the heels of their Enfish, LLC, v. Microsoft Corporation decision, the Federal Circuit provides more guidance on whether software qualified as patentable subject matter with Bascom Global Internet Services, Inc., v. AT&T Mobility LLC. Taken together, Enfish and Bascom indicate the future for software patents is not nearly as bleak as originally predicted when Alice was decided.

Bascom reiterated the two-step test – asking first if the patent is directed to patent- ineligible content and, if so, then asking whether additional elements transform the nature of the claim into a patent-eligible application. The Federal Circuit determined that Bascom was indeed directed to patent-ineligible content. However, on the second step, the court decided that the claims included an inventive concept that can be found in the “non-conventional and non-generic arrangement of known, conventional pieces” transforming the nature of the claims into a patent-eligible application.

The claims in this case were directed to filtering Internet content. The prior art taught two different types of filtering possible at either a local device or on a server. While these types of filtering were known, the system in Bascom enabled the personalized filtering seen on a local device to be performed on a server. By reciting specific details of where the filtering was performed, Bascom was determined to cover a specific, discrete implementation and thus not “preempt all ways of filtering content”. Accordingly, this new arrangement was sufficient for the court to find the claims patent-eligible.

Procedurally, this case was decided on a motion to dismiss during the earliest stages of the case, even before discovery or claim construction. As such, the Federal Circuit construed the facts in favor of Bascom when making their decision to uphold the validity of the patent at this time. In contrast, a recent trend in patent-eligibility decisions has developed where patents are found invalid at the onset of the case. While this trend has been heralded as an efficient means to dispense with dubious claims by ‘patent trolls’ in order to avoid the costs of litigation, it has also been criticized for sidestepping important patent analysis which could help answer the patent-eligibility questions.

The courts are beginning to establish a fuller picture of what qualifies as patent-eligible subject matter in the wake of Alice. Bascom continues with this trend by providing advice with particular relevance for software applications. This helps give inventors and their attorneys the tools they need to draft acceptable claims in order to receive the appropriate examination by the United State Patent and Trademark Office and the proper deference in the courts for the patents that will ultimately issue.


Monday, May 23, 2016

The courts have long been attempting to establish an appropriate framework with which to handle software-based inventions. Even before the Supreme Court decision in Alice Corp. v. CLS Bank International numerous tests have been created to determine whether software qualified as patentable subject matter. Since Alice patent examiners and courts have stumbled over determining what makes a claim an abstract idea ineligible for patenting often at the detriment of software-based inventions. With Enfish, LLC, v. Microsoft Corporation the Federal Circuit has provided guidance to help patent software methods.

Enfish reiterates the Supreme Court’s stance from Alice and acknowledges that some improvements in computer-related technology are “undoubtedly not abstract.” The Federal Circuit then stated that software can make “non-abstract improvements to computer technology just as hardware improvements can.” This highlights Enfish’s focus on improvements to computer functionality regardless to whether the improvement is due to hardware or software. Thus, software-based inventions may be found as patentable even when able to run on a general-purpose computer.

The decision also serves as a caution when determining whether a claim is abstract idea. Warning that too high a level of abstraction can become “untethered from the language of the claims” Enfish concedes that an extreme abstraction can render any invention unpatentable.

Enfish also stresses the importance of the teachings in the patent’s specification. Looking to the disclosure the Federal Circuit found support for the allegations that the claims provided improvements to computer technology. Additionally, the disclosure served to guide the level of abstraction used to decide if the claims qualified as patentable subject matter.

With this decision the Federal Circuit has provided some guidance that inventors can use to ensure their software based-inventions are examined with the proper analysis. Drafting a patent application using the lessons from Enfish will help avoid some of the pitfalls that have threatened to engulf all software-based inventions. As the courts continue to recognize the patentability of software inventors within this technological area can be reassured that their inventions may be granted the appropriate examination by the United State Patent and Trademark Office (at least with regards to technological improvements to computer functionality).

Introducing a New Product? Should a Freedom to Operate Study Be Undertaken?

Wednesday, May 18, 2016

When developing a new product, companies will frequently engage counsel to perform a “freedom to operate” study in an effort to identify patents that might raise a risk of patent infringement following the introduction of the product. While there is nothing fundamentally wrong with this approach, there are pros and cons associated with the decision to proceed with such a study that are frequently not considered. What should be done if you find a patent or pending application that includes claims that might cover the product? Would the company have been better off had it not engaged counsel to perform the study initially?

The Law of Willful Infringement
As a prelude to this discussion, it is important to understand the laws applicable to willful infringement. If one manufactures uses or sells an infringing product with knowledge of the infringement, they can be liable for willful infringement under the patent laws. A party is liable for willful infringement if the patent owner demonstrates that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. If willful infringement is found, the patent laws provide that the infringer can be liable for up to treble damages and the patentee’s attorney’s fees.

The Pros:

If one or more issued patents are located that would cover the design of the product under development, it may be possible to redesign the product in a manner so as to avoid the infringement. Avoidance of a potential lawsuit for patent infringement is certainly desirable provided that a redesigned product can be manufactured and sold at a competitive price and that a redesigned product can provide the features desired in the marketplace.

If no issued patents are located as a result of a freedom to operate study that disclose or suggest the design of the new product, such may be informative of opportunities to obtain patent protection on the new design and offer guidance as to the scope of protection that may be available should a patent application be filed.

The Cons:

Not all freedom to operate studies have happy endings. What if a patent is located that contains claims that apply to the product under development and a viable product cannot be produced without violating the claims of the patent. If the non-infringing product cannot be designed that provides the desired features, or cannot be produced in a way that is commercially viable for reasons of cost, the company has several options. One option would be to inquire of the patent owner whether a license is available and on what terms. If a license in not available or is not available on reasonable terms, proceeding with a product introduction poses a heightened risk that a suit for infringement will be initiated by the patent owner. A second option would be to abandon the product introduction. This decision may involve substantial losses of investment in the product development, depending on how far along the product development has progressed. A third option would be to proceed with the product introduction and assume the risk that the patent owner may take notice and initiate a suit for patent infringement. If a court determines that a product infringes a patent, that the infringer had knowledge of the patent, and that the infringer’s conduct was “objectively reckless” the court may hold the infringer liable for willful infringement. In such a case, the patent owner could be awarded up to treble damages and its attorney’s fees associated with the pursuit of the litigation.

If a product is introduced and a suit for patent infringement follows, the infringement could be held to be willful as noted above if the conduct of the infringer is determined to be objectively reckless. Although it is not required that an opinion of counsel be obtained to counter a charge of willful infringement, a competent opinion of patent counsel concluding that a product does not infringe or, that any relevant patent claims are invalid, will generally serve as a defense to a charge of willful infringement. When such an opinion is obtained, the continued sale of the accused product during litigation is seldom considered to be objectively reckless. The preparation of a competent opinion of counsel requires study of the patent and its prosecution history and the preparation of such an opinion can involve substantial legal costs.

If a party chooses to sell a product with knowledge of a patent and chooses not to obtain an opinion of counsel, a court will determine whether the sale of the product was objectively reasonable or objectively reckless based on the specific facts in the case. It should be noted that an opinion of counsel does not serve as a defense to a charge of infringement, only a defense to a charge that the infringement was willful.

If a freedom to operate search results in the identification of a published patent application with claims that, if issued, would cover the product under development another issue is raised. The application that was identified in the search may never issue as a patent and, if it does issue, the claims may not resemble those that existed in the published application or in the public records of the U.S. Patent and Trademark Office. Thus, a company developing a product must decide how to proceed in a period of uncertainty regarding claim coverage that may ultimately be obtained.

In such a circumstance does one shut down the development of the product, defer the project or continue the development with the recognition that the product would infringe if the patent issues with existing claims? While one can study the progress of a given patent prosecution if the prosecution is available in the public records of the U.S. Patent and Trademark Office, it would require a crystal ball to determine the scope of protection that would ultimately be granted. Unfortunately, the correct decision to many of the questions raised can only be determined in hindsight and must be based on an educated guess as to what patent coverage may ultimately be achieved.

If a freedom to operate search had not been performed and there was no knowledge of the patent in advance of the introduction of the product to the marketplace and the filing of suit by a patent owner, it is more difficult to sustain a claim for willful infringement. Of course, it this path is followed, following the filing of a suit for patent infringement, the company is faced with a decision of whether to discontinue the product, attempt to settle the dispute or contest the assertion in a litigation.


There are perfectly good and valid reasons for performing freedom to operate studies. If a study is to be conducted, it is generally advisable that it be undertaken before substantial sums have been invested in product development.

It should be recognized however, that is often unknowable whether a patent owner will become aware of a product that enters the marketplace, whether the patent owner would view the product as constituting an infringement should it become aware of the product, whether the patent would ever be asserted by the patent owner even after becoming aware of the product or, if a license would be available upon reasonable terms. Of course, it is considerably more likely that the introduction of a product will become known to a competitor. The ultimate decision whether to commission a freedom to operate study and what to do if such a study is performed, relates to ones tolerance for risk and an understanding of the ramifications that flow from such a course of action. Before a company engages patent counsel to perform a freedom to operate study, it is therefore worthwhile to discuss with counsel what the company plans to do with the search results since, once the search has been performed, if relevant issued patents are located as a result of the search, the specter of willful infringement is out of the bag.