“In 2019, non-inventors are again dominating the legislative process, including some of the very individuals that successfully advocated for the harmful decisions and policies of years past.”
One of the more dramatic moments in my $20 million dollar patent brawl occurred in the pivotal preliminary injunction hearing at the courthouse in downtown Tyler, Texas. I learned that Walmart was coming to monitor the proceedings. I think they were curious to meet the crazy inventor who dared to sue the largest retailer on the planet.
The proposal on the table was that I dismiss the suit with prejudice (i.e., drop the suit and waive all my rights) or else Walmart would never buy another product from my exclusive licensee, Zuru—no balloons, no robotic fish, no dart guns. Distraught, I hid in a side room and didn’t show for the meeting where my lawyers had advised me to capitulate. Curiosity heightened; the Walmart attorney unexpectedly suspended all demands and invited me to sit down and explain my point of view.
I pointed to the infringing spiral-faced Battle Balloons and told her they were selling my invention without permission, thereby harming me and my family. The Walmart attorney was flummoxed and suggested that I didn’t understand how the patent system worked and was overreaching. Here I was claiming to have invented this apparatus that looked different than mine. It had a spiral face and mine was flat.
This is the problem with our patent system; it is run by people who don’t understand invention. Think about it, we have to use this bizarre legal document not only to describe our discovery but to describe the boundaries of it. For inventors, there are no boundaries—why would we stop applying and extending our discoveries? We do our best to describe it, but in the end, non-inventors write and interpret the laws that determine our rights.
If it was not self-evident to the Walmart attorney that they were using my patented technology, how could they judge complex technologies? This illustration is representative of the vast majority of the hundreds of non-inventors I have encountered in this industry, in particular litigators, administrative patent judges, corporate counsel, and lobbyists. Inventors are hard to understand, and the industry has increasingly marginalized our perspectives and contributions.
Non-Inventors Struggle to Explain an Invention
I followed the rules and worked diligently to use non-inventor language to explain my invention. When the USPTO examiner proposed that I claim a “plurality of holes extending through a planar face of the housing”, it took me no more than two seconds to conceive of several ways to avoid infringing such a claim—a curved face or a stepped face. So, I negotiated to eliminate “planar” from the claim, so that I would obtain patent protection for any shape of face.
Several months later, I reached out to one of the premier patent firms in Dallas to help draft some claims for another application. They suggested claiming a “plurality of holes positioned in a common face of the housing that opposes the inlet”. That one took me 10 seconds to design around—just place a bend in the housing so the holes do not oppose the inlet.
These are examples of non-inventors failing to accurately describe an invention in words, and for a very simple technology. It is true of every patent to some degree – words cannot fully describe the essence of an invention. But once a patent is issued, the actual invention doesn’t matter, only the word in claims. And non-inventors are very good at arguing incessantly over the meaning of those words.
Word Games Imperil the Rights of the Inventor
It is easy to describe an invention to another inventor or a colleague in your field, but super hard to put it into claims that the USPTO, lawyers, and judges will deem acceptable. In fact, it is impossible. You might pass examination, but the judges do not always agree with the examiner, and the PTAB almost never does. Even if you are right, it will cost you tens of millions of dollars and years to prove it.
Eventually, I learned how to write my own claims and spent close to 1,000 hours writing claims and negotiating with the USPTO. They ultimately allowed seven patents, while forcing me to appeal one of them, which is still pending.
It is not easy. Section 112 of the Patent Act is especially onerous. It requires that:
(a) In General.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
(b) Conclusion.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
This is a good law as written; it is part of the bargain. You have to actually teach others in your field how to make your invention and you must clearly define the boundaries. No secret recipes or science fiction.
But there is a catch. You only get one chance because you cannot go back and amend your specification. If you leave out one little detail, even if it is obvious, you cannot ever patent it. Your competitors are free to use your invention as long as they add in that one little thing you left out. For instance, my first application only covered liquid-filled balloons. Luckily, I caught that and quickly filed a follow up application that covered gas-filled balloons before going public. Whew.
Second catch. The America Invents Act (AIA) changed from first-to-invent to first-to-file. So, the inventor has to rush to file before someone else does, which means: 1) you overlook some details in your application, and 2) you haven’t worked out all the different variations yet. Inventors always leave out some details, especially the ones that are presumed or readily inferred. That is a field day for the lawyers and PTAB pseudo-judges that come along later to attack your patent. Even if you don’t leave out details, they will make up arguments to say you did.
According to the Constitution, the patent system is for “securing to inventors the exclusive right to their discoveries”. But it is impossible to secure our rights in the current patent system. There are too many— endless actually—legal technicalities that can be exploited by non-inventors.
In my case, they attacked me and my patents dozens of ways: I checked the wrong box, my invention was obvious, I changed my application after filing, I falsely claimed to have a patent before it issued, I tortiously interfered with their business, I didn’t describe my invention properly, etc.
Under Section 112 alone, they came up with at least five different accusations:
- no one knows when a balloon is substantially filled with water
- my application did not specify that the tubes could be flexible
- a connecting force not less than the weight of the balloon would cause the balloons to crawl up the tube
- it is not clear how hard one must shake to cause the balloons to detach
- my application did not show the balloons touching each other because bowling pins appear to be touching but are not really
Some of these were close calls and I lost several decisions in the PTAB. As a result, I nearly lost all my patent rights. This went on for years. Every day, the rights to my invention were in jeopardy from the ceaseless attacks and nonsensical arguments.
But it makes perfect sense to most non-inventors, including litigators, bureaucrats, and lobbyists. If I wanted the rights to a spiral housing why didn’t I put that in my application? Why didn’t I claim a balloon that detaches when filled with precisely 500 grams of water? If I wanted protection for flexible tubes, I should have used the word “flexible” in my original application. If the balloons touch each other while they are being filled, I should just say so.
Under the influence of non-inventors, the statutes, the rules, and the case law have become unmoored from the concept of securing to inventors the exclusive rights to our discoveries.
How Inventors Were Alienated
This struggle to get inventors to explain their inventions in the vernacular of non-inventors began in 1836, when Congress being requiring the inventor to write out claims to define the limits of the invention. In 1952, Congress added Section 112 quoted above, demanding more clarity than in the past. In 1996, the Supreme Court handed down the Markman decision requiring judges to determine the meaning of the words in the claims. In 2014, the Supreme Court demanded even more clarity in the Nautilus decision.
While this was going on, non-inventors were advocating and imposing a host of other obstacles on inventors. The Ebay, KSR, and Alice decisions by the Supreme Court denigrated the contributions and rights of inventors, and it was non-inventors who drove the AIA, with its inventor-crushing Patent Trial and Appeal Board (PTAB). To most non-inventors this all seems reasonable; they believe inventors should just follow the rules and speak the same language as everyone else. Inventors have been alienated from our own patent system.
In 2019, non-inventors are again dominating the legislative process, including some of the very individuals that successfully advocated for the harmful decisions and policies of years past.
They think they know what is best for inventors. Their latest idea is to amend Section 112 to prohibit functional language in patent claims. The rumor is that some influential non-inventors have decided this is such a worthy cause that they have persuaded lawmakers to immediately introduce it as legislation.
I and hundreds of inventors have written and spoken to lawmakers about the unintended consequences of past laws like the AIA and beseeched them to introduce legislation to restore protections for inventors. We have documented over many years the damage and cost to small businesses and the economy. No one will help.
Yet, when the very same non-inventors that drafted the terrible laws from the past show up in 2019 with this shiny new proposal to eliminate functional language, it is immediately adopted.
The problems with this proposal are:
1) there is no evidence of a problem with functional claiming,
2) it has not been studied or debated, and
3) it would make it virtually impossible for an inventor to write a claim to cover his invention. Prohibiting an inventor from using functional language is like requiring a PhD candidate to write a thesis using only two-syllable words. It is impossible to communicate accurately.
As I mentioned earlier, Section 112 is already very strict and difficult for inventors to meet. But non-inventors do not see this. Under this new proposal, they think we should just describe each and every element of our invention using structure rather than function.
An inventor uses terms like hinge, lever, fastener, carriage, guide, voltage regulator, comparator, amplifier, transducer, low pass filter, transmitter. But under the proposed changes to Section 112, these words would not pass muster, or at the very least would foster a legal dispute.
Congress Should Listen to Inventors
The non-inventors I have spoken to about this concern shrug it off. They say: 1) some of those terms could be considered structure; 2) you could argue doctrine of equivalents; or 3) you could draft your claims using more precise words.
We have a system today where inventors have virtually no chance of enforcing their patent rights due to extreme cost and complexity, yet these non-inventors propose to add another layer of complexity and dispute! Why does Congress keep listening to these same non-inventors with half-baked ideas for laws?
Inventors are here to help. Over a thousand have signed the Inventor Rights Resolution. We are in every state and every district. We will do our part to teach Congress what we do and what it takes to protect our inventions and attract capital to spur innovation. Be patient with us and try to understand us. Don’t patronize us and allow non-inventors to decide what is good for us.