Invalidating a patent directed to physical laws

[Polinomial]

I'm an attorney trying to invalidate a patent that I believe is directed to patent-ineligible subject matter. It's been an interesting exercise, and I'd love to hear other ideas/suggestions/etc. on how to approach it.

At a high level, the patent claims certain structures with a certain desirable property. The patent discloses two methods of generating these structures with this property. The thing is, people have been using those two methods to create these structures with this property well before the patent came out -- people weren't sure why these two methods produced the desired property, but they did. The patentee's contribution was to figure out the physics behind why the two methods generated the desirable property in these structures.

He then worked the "why" into his patent claim to overcome the Patent & Trademark Office's objections that his "invention" was not new. Essentially, the patentee discovered that these two methods had certain effects on the structures at the atomic level, and these atomic-level effects were what gave rise to the desired property. He thus claimed structures (1) created by one of these two methods (2) with the desirable property that (3) exhibited the particular atomic arrangement which he discovered was causing the desirable property. The "novelty" of his invention therefore lies entirely in (3), but I do not think that is a proper basis for patentable subject matter.

The patent is extremely dense, however, and I would like a simple analogy to help the judge see the rationale without getting bogged down in the technical details. One analogy I've been kicking around: electrical engineers in the 1800s designed useful devices like the telegraph without actually understanding the physics of why the devices worked -- why electricity does what it does -- until years later when Maxwell came along. And Maxwell's discoveries, while groundbreaking, are not patentable.

Any other ideas of cases where people made (or did) something that worked without fully understanding why until years later when physicists figured it out? Any other thoughts or suggestions generally? Thanks!

 

[jedishrfu]

This is very general description and its hard to comment on what you've written. Clearly you don't want to give away the patent for fear the inventor will discover your query and possible line of attack.

Since his "why" wasn't peer reviewed its probably not common knowledge that could be brought up in the manner that you are hoping as in Maxwell's laws.

He's taught us something new with his "why" and that is perhaps why the patent office has granted him the patent.

Since all patents are based on physical principles I think its a stretch to say that his "why" is invalid based on that.

Also you didn't mention why your client wants to invalidate it which one can only guess is to not to pay the inventor for his/her idea.

In any event, I think you best tactic is to find prior art specific to this invention that the judge can clearly see means the patent was awarded in error.

We are not lawyers here and this is my opinion on the spotty and generic facts you have given us.

You might find some help in looking at gene patents where companies were claiming all manner of curative possibilities for some promising gene. Finally the US Supreme Court ruled that human genome patents are invalid.

https://www.theguardian.com/law/2013/jun/13/supreme-court-genes-patent-dna

Also in India there were cases of pharma companies swooping into patent folk medicine and blocking local companies from manufacturing it. Finally the Indian govt had to compile a book of folk remedies to cite in these cases to block the patent.

https://www.theguardian.com/world/2009/feb/22/india-protect-traditional-medicines

 

[A.T.]

I'm an attorney trying to invalidate a patent that I believe is directed to patent-ineligible subject matter. It's been an interesting exercise, and I'd love to hear other ideas/suggestions/etc. on how to approach it.

This is a physics forum, not a patent law forum. Do you want to discuss the physical validity of the explanation in the patent?

 

[Bystander]

You may want to review case law surrounding "supercritical fluid extraction(s);" (SCFE), I'm not familiar with the bottom line on that topic, or if it's been resolved yet, but it should give you a feeling for "legal principles of physical principles."

 

[Dale]

He's taught us something new with his "why"

Yes, but teaching something new is not grounds for a patent. A patent is an invention, not a discovery. Physical laws and mathematical equations are specifically not patentable.

 

[Polinomial]

This is very general description and its hard to comment on what you've written. Clearly you don't want to give away the patent for fear the inventor will discover your query and possible line of attack.

I don't mind revealing the patent: it's U.S. Patent No. 7,128,988. I didn't give the specific patent number because I doubt it'd be useful for purposes of this analysis. The "structure" is essentially magnetic bcc(110) films epitaxially grown on a fcc(111) substrate. The "desirable property" is for the bcc(110) film to exhibit uniaxial magnetic anisotropy. The two methods disclosed for inducing uniaxial anisotropy in the bcc(110) film are: (1) deposition/growth of the bcc(110) material in the presence of an external magnetic field, the magnetic field pointing in the direction of the desired magnetic easy axis; and (2) deposition/growth of the bcc(110) material at an angle relative to the substrate -- the uniaxial anisotropy of the film produced in this way has its easy axis parallel to the direction of the inclination of the incident vapor. These two techniques for inducing uniaxial anisotropy in magnetic films were well-known prior to the patent; the patentee merely proposed an explanation for why they worked. The patent goes into more detail about the how and why, but as I say, I doubt the precise details are useful for purposes of this narrow issue.

Since his "why" wasn't peer reviewed its probably not common knowledge that could be brought up in the manner that you are hoping as in Maxwell's laws.

He's taught us something new with his "why" and that is perhaps why the patent office has granted him the patent.

Since all patents are based on physical principles I think its a stretch to say that his "why" is invalid based on that.

I appreciate that all patents are in some sense based on physical principles. Based on my understanding of United States patent law, however, I do think there's a cognizable theory for invalidity (based on patent-ineligible subject matter) in this case.

Also you didn't mention why your client wants to invalidate it which one can only guess is to not to pay the inventor for his/her idea.

In any event, I think you best tactic is to find prior art specific to this invention that the judge can clearly see means the patent was awarded in error.

We are not lawyers here and this is my opinion on the spotty and generic facts you have given us.

I appreciate that. Without going into detail, we have a number of other defenses, but I was really hoping to limit the discussion here to this one narrow, discrete issue. Thanks.

 

[pug]

what about "people have been using wood for fire for thousands of years. Just because someone discovers the chemical structure of wood and the process of combustion with oxygen doesn't make the use of wood for fire patent-able.

 

[jedishrfu]

what about "people have been using wood for fire for thousands of years. Just because someone discovers the chemical structure of wood and the process of combustion with oxygen doesn't make the use of wood for fire patent-able.

However, should someone discover the properties of how fire works (chemistry) and then uses that knowledge to construct manmade burnable materials then that might be patentable. The inventor has taught us something new and so we reward him with a patent so that he may benefit from his hard won knowledge and not have to worry about being scooped by a competitor. Its too common nowadays for this to happen.

The most famous that I can recall was an inventor of a self adjusting wrench that was sold by Sears until Sears found a Chinese company to make a
knock-off of it.

http://abcnews.go.com/US/MadeInAmer...aims-sears-stole-idea-china/story?id=17720122

In this case, Sears claims prior art with an idea they said came from the 1950's which may be what kills the inventor's patent. I haven't heard the outcome yet but its been four years so maybe it was settled out of court quietly.

And an earlier one where Sears took the idea and ran with it without the inventor getting anything in return:

http://articles.latimes.com/1986-07-14/business/fi-19337_1_wrench-case

 

[jedishrfu]

Yes, but teaching something new is not grounds for a patent. A patent is an invention, not a discovery. Physical laws and mathematical equations are specifically not patentable.

I think you understood my quote out of context. For the Patent Office to grant the patent they determined that it is patentable, novel and unique. In essence it has taught them something they didn't know something they didn't see in prior inventions or items in use today or in the past (ie its novelty). Yes, physical laws would be out of the question unless someone discovered something that was based on an as yet undiscovered law, in some specific manner then it might get through but I have no knowledge of an invention that has.

The laser is one where a paper was published on the physical process of lasing. An inventor designed on paper a laser, produced a detailed notebook of possible uses and then asked the US Govt for funding to develop it. The US Govt classified it and the inventor was stuck. Some years later another inventor actually builds one, gets the patent and the royalties from its use. The first inventor sues saying the US Govt prevented him from pursuing his idea and so the question became who invented the laser?

http://www.intellectualventureslab.com/invent/a-story-of-invention-the-laser

https://www.aip.org/history/exhibits/laser/sections/whoinvented.html

Inventor councils often use this notion of "teaching you something you didn't know" as grounds for deciding its novelty and uniqueness. Basically the idea must not be obvious to "someone skill in the art". The council then does a deep search to see if anyone else has described it and if not submit it to the Patent Office who will do the same due diligence often rejecting it and having you defend it until they decide yes its novel and unique. Sometimes it requires you to change your application to get around someone else's invention which limits its scope but is still worthwhile to patent. It get very complicated.

 

[jedishrfu]

These two techniques for inducing uniaxial anisotropy in magnetic films were well-known prior to the patent; the patentee merely proposed an explanation for why they worked.

This then means you need to provide prior art and show that he's not done anything different in his patent. You will need an expert witness to testify and explain that this technique is known to "those skilled in the art" and is nothing novel or unique.

 

[Vanadium 50]

First, this is the first time I have seen a lawyer ask for technical advice on an online forum. Everything here is discoverable - it's not work product.

Second, an explanation is not patentable. Full stop. A process can be patented, but if this process has been used in the past, it's prior art. If looking at existing materials someone came up with a general rule that leads to a new process for new materials, that's different. Besides, where is the reduction to practice?

 

[jedishrfu]

To be clear the OP said its a "why" that he added to the patent, perhaps framing the discussion to what the OP wants to hear. However, the patent office may have seen something more than just an explanation in what he wrote to award a patent.

It might be useful to have @Greg Bernhardt chime in here as he has some expertise in his pocket that might help.

 

[Fervent Freyja]

Also you didn't mention why your client wants to invalidate it which one can only guess is to not to pay the inventor for his/her idea.

Clients, you mean: "Toshiba Corporation, Toshiba America Information Systems, Inc., Toshiba America Electronic Components, Inc., and Toshiba of Canada, Ltd. (collectively “Toshiba”), Headway Technologies, Inc., SAE Magnetics (H.K.) Ltd., TDK Philippines Corporation, and Petitioner TDK are the real parties-in-interest."

vs.

Lambeth Magnetic Structures, LLC, the patent owner, which I assume is one person- that's a messed up position. Would the client(s) be able to produce their end-goal on the matter without the patent owners contribution?

Something to do with data storage, I think.