Aquarist and Intellectual Patent Attorney, Mike Clifford, sat down again with GBD to go over the basics of Patents and help answer some questions and rumors that have been passing around in regards to the Orbitec v PFO case. For any attorney time is money, and we thank Mike for taking the time to help [...]
Aquarist and Intellectual Patent Attorney, Mike Clifford, sat down again with GBD to go over the basics of Patents and help answer some questions and rumors that have been passing around in regards to the Orbitec v PFO case. For any attorney time is money, and we thank Mike for taking the time to help create a simple, but informative Q&A on patents.
In case you missed Part 1 of this Patents 101 series, you can find it here: Patents 101 | Benefits, Faults, & Recourse.
Disclaimer: The following is provided for informational purposes and should not be relied on as legal advice. If you have a patent-related question, you should contact an attorney.
Part 2
Q: I’ve heard you can “get around” a patent by manufacturing a product abroad and that U.S. patents don’t affect foreign companies, is this true?
A: I’ve seen a lot of misinformation spread on this topic on blogs and message boards, probably more than any other aspect of patent law. As far as U.S. aquarists are concerned, the answer is no, you can’t get around a patent by manufacturing abroad and foreign companies are not immune to U.S. patents. The confusion likely arises, because the general rule is that U.S. patents are only enforceable with U.S. borders. However, because patent laws prohibit the making, using, and selling a patented invention, you could manufacture a product abroad, but as soon as you sell it in the U.S., you are liable for infringement. And while it may be difficult to actually get a foreign corporation into court, there have to be U.S. importers, distributers, retailers, etc., are just as easy to file suit against as any U.S. company. So the practical effect is that if a product is sold in the U.S., and you have a patent covering the product, you can prevent its sale in the U.S., regardless of whether the product is built in China or Hong Kong or made by a Taiwanese company. Thus, the concept that a patent can hurt a U.S. company, while leaving competing foreign companies untouched – which for some reason seems to have become “common knowledge” on the forums and blogs – is simply false.
Q: Is it possible that Orbitec could use its patent to eliminate LED lighting for aquariums?
Anything is possible, but in reality, it is very unlikely. The fact is that Orbitec’s patent is not worth anything if no one makes LED fixtures — either Orbitec profits by selling LED fixtures, or Orbitec licenses the patent to someone who will sell LED fixtures. It is in Orbitec’s interest to work out a license with someone, and to charge a fee that will allow the company to stay in business and make a profit. Otherwise they are out a business partner, and their patent just sits there and rots. And as the old saying goes, something is better than nothing. Now this is all assuming, of course, that the patent is not invalidated (an issue I’m not going to comment on one way or the other, but which is discussed generally in Part I).
Q: So what do you think will happen?
I’m not going to comment on whether or not the patent is valid, or whether I think PFO (or other LED manufacturer’s) infringe the Orbitec patent. I will make some comments on the future of LED lighting. I don’t think it will go away (at least not for long). This is based only on speculation, but my guess is that Orbitec may have licensed or is in negotiations to license its patent to a company in the industry or a company about to enter the industry. Given its area of business, I think it’s doubtful Orbitec itself will make LED fixtures (although you never know), but they won’t just let the patent sit there, they will figure out a way to monetize it by licensing it, which means if we don’t have Solaris fixtures, its still likely we’ll have LED fixtures available from someone.
Q: So if I wanted to look at a patent and evaluate what it covers, where should I start?
The first thing to understand is what a patent is. It is a common misconception that a patent gives you a right to make your invention, but this is not the case. A patent gives you the right to exclude. That is, you can prevent others from making it. In fact, even with a patent, you may not have the right to make your invention. For example, if you get a patent on a downdraft skimmer with bells and whistles, but someone else already has a patent on a downdraft skimmer with just bells, you can prevent others from making your skimmer, but you’ll need to get a license from the other patent-holder to actually make your skimmer with bells and whistles.
So now you need to know how to evaluate a patent, so I’ll give you the basics (you should of course contact an attorney for a full evaluation if you yourself have a patent issue – there are many subtleties that simply can’t be fully explained in a brief overview). As an example, we’ll look at Ecotech’s patent that covers features of its Vortech pumps.
The scope of a patent (i.e., what it covers) is defined by the claims. The claims are the numbered passages found at the end of a published patent document. There are two types of claims: (1) independent claims, which usually start with “A …” (see Figure 1 below), and (2) dependent claims, which usually start with “The …” (see Figure 2 below). Independent claims define the bare minimum of features that are required for a product to infringe the patent. To provide an analogy, independent claims define the property lines of the piece of intellectual “real estate” that your patent is the deed to. Dependent claims provide additional limitations, and thus are narrower in scope. Thus, if your goal is to figure out what a patent covers, you generally start with the independent claims.
Figure 1 – Independent Claim from Ecotech’s Patent
Figure 2 – Dependent Claim from Ecotech’s Patent
Q: So what do the claims mean?
That is often a difficult question, and is usually the single biggest issue in any patent litigation. The standard is that claims mean what one of average skill in the art (i.e. in the field of the invention) would understand the claims to mean in light of numerous factors, such as the words of the claims themselves, the patent document as a whole, the prosecution history of the patent (i.e., the back-and-forth rejections, responses, and claim amendments with the patent office) the entirety of the existing knowledge base in the art (other patents, scholarly or non-scholarly publications, etc.), and the general knowledge of those skilled in the art. As you can imagine, this allows for much interpretation and arguing. If you want to get a general feel for what the claims cover, a good place to start is the rest of the patent document, which can help shed light on the meaning of the claims. The prosecution history is also helpful, and the prosecution histories for recent patents are available online here. The rest of the considerations are so expansive, I really can’t go into them here.
While you can make an educated guess as to the exact meaning of the claims, the meaning of the claims are ultimately decided by the court when a patent is litigated. Specifically, the Court decides the meaning of the claims in what is known as a Markman or Claim Construction hearing. In a Markman hearing, both sides propose and argue for definitions of various claim terms. The Plaintiff generally argues for definitions that cover the product accused of infringing, while the Defendant argues for definitions that cause the patent to be invalidated or don’t cover their accused product. Based on these arguments, the court defines the claims. Often, after the Markman hearing, it becomes clear that the claims as defined, favor one party or the other and the case will settle.
Q: So what if I want to play detective and try to find something that invalidates a patent?
Again, there are many subtleties I can’t cover, so speak to an attorney if you are evaluating a patent for anything more than your own amusement. The basic analysis is to turn again to the claims (which as explained above, are ultimately defined by the Court), starting with the independent claims. A claim is invalidated if every feature of the claim is disclosed or made obvious by a prior art reference. There is a complex set of rules defining what exactly qualifies as “prior art” that I will not go into here. So if you think you’ve found a reference that discloses the features of a patent, be aware that it still needs to be evaluated to determine if it qualifies as prior art.
For more information on the Orbitec LED Patent:
- Orbital Technologies Hurting PFO and Aquarium Industry – Are LEDs Even an Option?
- Orbitec President Releases Statement in Response to Negative Press.
