Congress Must Work to Understand the Language of Inventors

By Josh Malone
June 27, 2019

“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.”

The Bunch O’ Balloons patent: System and Method for Filling Containers with Fluids

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.

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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:

  1. no one knows when a balloon is substantially filled with water
  2. my application did not specify that the tubes could be flexible
  3. a connecting force not less than the weight of the balloon would cause the balloons to crawl up the tube
  4. it is not clear how hard one must shake to cause the balloons to detach
  5. 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.

 

The Author

Josh Malone

Josh Malone quit his corporate job in 2006 to take his shot at the American (Inventor’s) Dream. Eight years later, savings depleted and orthodontics and college unfunded, he took one last swing before trudging back to the corporate world. And hit the homerun with Bunch O Balloons. His solution to the 63 year old problem of filling and tying water balloons instantly became the number one selling spring/summer toy. It was just as quickly knocked off resulting in a patent litigation now totaling 6 patents, 5 patent suits, 5 PTAB petitions/trials, 4 preliminary injunctions, and 8 appeals at the Federal Circuit. He is currently a Fellow with US Inventor working to restore the patent system.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 26 Comments comments. Join the discussion.

  1. R.I.P patent rights June 27, 2019 7:19 pm

    Companies like Google and Apple do not want to pay licensing fees to patent holders they have come up with a way to create laws where they can avoid paying and keeping all the profits to them selves. When you donate hundreds of millions to the Republicans and Democrats it’s funny how all the patent laws favor infringers right and they salt the wound by calling you a patent troll. Corporatocracy at its most evil state with no one to stop them.

  2. Paul Morinville June 27, 2019 11:40 pm

    Exactly.

  3. Valuationguy June 28, 2019 8:34 am

    Bravo….now if only our Congress critters would stop drooling over Silicon Valley’s PAC money long enough to actually read and understand your very good article.

    VG

  4. Jonathan R Stroud June 28, 2019 9:10 am

    Saw a whole aisle display of your stuff at Walmart on vacation, snapped a pic and thought of you. Nice work!

  5. PTO-Indentured June 28, 2019 11:29 am

    Patent law imperiling payola at a corporation cost of candy, to money-compromised politicians needs to die in the same way radio song playlist swaying payola to money-compromised DJs did.

    End patent-imperiling payola.

    Bring on full tilt the clarity of, reasonableness of, and well-proven need and timeliness of “securing to inventors the exclusive right to their discoveries”.

    Read the Manual

    Congress! Stop the intentional cash-infused obscuring of this US constitutional right, clearly indoctrinated in ‘The Manual’ you have all sworn to uphold. Show us now there is still some semblence of a will to manage with proprietary the spirit of the right intended, versus the many wrongs accepted tainted money has inflicted

  6. PTO-Indentured June 28, 2019 11:33 am

    Saw a whole end display of your products at Costco on vacation. It brought a smile to my face. Well done!

  7. Joachim C Martillo June 28, 2019 11:38 am

    Doesn’t the sword of the dilemma cut both ways? Inventors also need the language of legislators, lawyers, and judges. It’s the sea in which we inventors swim.

  8. Pro Say June 28, 2019 1:44 pm

    A tour de force exposition Josh.

    I previously signed the petition, am eager to meet with — and have Priority Mailed — my area legislators, and gladly made an investment for all of us inventors with a $250 donation to US Inventor.

    Please join me everyone.

    We either all stand together … or we will all surely fall apart.

  9. jack June 28, 2019 2:29 pm

    I just finished looking at video interview with German businessman explaining how he is using EU ‘registered designs” and EU patents to protect his business. How he goes with police to Trade show to monitor and confiscate Chinese copies of his products. This guy was so calm and sure of himself I could not believe comparing with the Chaos and drama present among inventors in US. Of course he can count on his government looking for his/theirs best interest.
    In US I just wonder how the Supreme court judges can so stupid damaging private property rights the very base of the capitalism. Their arguments overriding rights of individual in the name of society greater good is direct from playbook of dictators I had opportunity to see in Eastern/central Europe before the fall of the Communism. The most amazing for me is how everything (court judges included) falls in line to serve the big tech. In my every contact with “law” in US there is always present some schmuck disregarding his own dignity to serve some crooked friends

  10. B June 28, 2019 3:22 pm

    @ Josh Aren’t your inventions merely directed to the abstract idea of filling balloons? /sarc

    @ Jack “The most amazing for me is how everything (court judges included) falls in line to serve the big tech.”

    Funny about that.

  11. Joachim Martillo June 28, 2019 3:26 pm

    Just out of curiosity would

    “plurality of holes extending through the 2 dimensional bounded manifold forming a face of the housing”

    have worked instead of

    “plurality of holes extending through a planar face of the housing”?

    I sometimes experiment with using highly precise but also highly general mathematics or physics language in a claim.

  12. Night Writer June 28, 2019 5:01 pm

    >>>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.

    This is exactly right. And I have written claims that have had to go through the wringer with big corporations in order for the big corporation I work for to be able to license the claims. I worked with the inventor on one set of claims who sounds like you. He kept telling me no those could be designed around. I am sure without functional language we could never had written the claims and I am sure that if the functional language was limited to the structures disclosed in the specification and their equivalents that the specification would have had to have been 20,000+ pages. The claims were to a famous electronic game. The claims held up, but only have many iterations with the inventor who, by the way, was a Ph.D. in physics from one of the top universities.

    Also, Josh, I am sure that Walmart had had some great lawyers make the best arguments for non-infringement and that is what you heard. The Walmart attorney almost assuredly knew that you had a great argument for infringement.

  13. Jeff Hardin June 28, 2019 5:01 pm

    As Josh says here, there is no evidence of a problem with functional claiming. I was not aware that the SCOTUS-created Section 101 problem has anything to do with 112, so why are changes to 112 being introduced into the debate to solve 101?

    Congress, when you listen to input, don’t forget history, and be wise with what you consider to be factual, and to whom you listen. Recall, Director Iancu, after a decade of damage to the small inventor, has finally called out the patent troll narrative for what it is: a fairy tale. Yet Congress passed the AIA in 2011 on that fairy tale preached by big tech, and now small inventors cannot receive contingency representation to defend their rights at the PTAB as a result. Pay attention if these same characters who pushed the troll narrative are now making a 112 push. Tread lightly on valuing the input of these non-inventors. I, an inventor, will gladly sit with you at the table to discuss. I did request to testify on 101, but was not allowed.

    At all three of the Section 101 hearings, stakeholders have expressed approval for the draft language for 101, but they expressed concern on the draft of Section 112 and 100.

    My suggestion for you Congress is to 1) keep 112 as it is currently written in the statute, 2) clean up the draft on 100(k) — the outstanding issues with “any field of technology” and “through human intervention”– and 3) fix only 101 and abrogate previous cases, as the draft has done.

    If you want to touch 112(f), first show me evidence of the current statute being a problem.

  14. Pro Say June 28, 2019 6:37 pm

    Joachim — did you ever post a proposed claim for the Villenas’ patent; using your claiming approach?

    Sorry; I don’t recall in which of IPW’s article’s comments you said you’d provide one.

    Thanks.

  15. Joachim Martillo June 28, 2019 9:26 pm

    I am a little behind on the Appellate Brief. If I can focus, I should be able to write some proposed claims around the 4th.

  16. Joachim Martillo June 29, 2019 5:56 am

    I have seen cases where a functional limitation is used as a basis to challenge a claim because the inventor is alleged not to have possession of an embodiment of the invention that he is claiming. If the Doctrine of Equivalents is directly written into a modified version of 35 U.S. Code §?112, the Committee’s proposed change might make it harder to challenge such a patent claim.

    I would not confine the change to paragraph (f). Paragraph (a) is hideous, and some modifications to 35 U.S. Code §?100 would need to be added.

    Here are my proposed modifications to § 112.

    [All the proposed changes to Title 35 can be found in Fixing the US Patent System (Part I): Title 35 Changes.]

    (a) In General. —
    The specification shall contain a written description both of the invention and also of the manner and process of both making and also using it.
    (1) The written description must demonstrate sufficiency, clarity, conciseness, and exactitude. This demonstration is a matter of fact,
    (2) The written description must demonstrate enablement of person skilled in the art both to make and also to use the invention. This demonstration is a matter of law after there has been factual determination.
    (3) The written description must demonstration of possession of any variant of the invention claimed in subsection (b). This demonstration is a matter of fact.
    (A) Possession in a predictable art is demonstrated by preponderance of the evidence.
    (B) Possession in an unpredictable art is demonstrated by clear and convincing evidence.

    (f) Functional Claim Elements. —
    An element in a claim expressed as a specified function without the recital of structure, material, or set of acts in support thereof shall be construed to cover the corresponding structure, material, or set of acts described in the specification and equivalents thereof
    (1) inasmuch as equivalent structure, material, or set of acts substitutes for said element without changing the function of said element or
    (2) unless the specified function is a praxis or a standard either in the art of the invention or in a related art.

  17. Joachim Martillo June 29, 2019 8:19 am

    I cleaned up the above proposed § 112 changes in Title 35 Changes

  18. Night Writer June 30, 2019 1:08 pm

    >>(3) The written description must demonstration of possession of any variant of the invention claimed in subsection (b). This demonstration is a matter of fact.
    (A) Possession in a predictable art is demonstrated by preponderance of the evidence.
    (B) Possession in an unpredictable art is demonstrated by clear and convincing evidence.

    This is just more b**cr**. How about starting for how a person skilled in the relevant art would interpret functional claim language. Period. Full stop.

  19. Night Writer June 30, 2019 1:18 pm

    I would flip this around and say that anyone that is trying to interpret a functional claim term in anyway other than how a person skilled in the art would is intellectually dishonest and doing it because they have an agenda.

    There is absolutely no excuse for this latest battle where the anti-patent judicial activists try to burn the patent system down with 112. There are so many misrepresentations being about “functional language” that it is a good indication of the complete lack of integrity of professors and many attorneys within the patent practice.

    There are a lot of bad actors in our society and they have no qualms about fabricating nonsense to try and get their way. Zero integrity. Zero regard for ethics or morality.

    Lemley is the Wall Street for patents.

  20. Night Writer June 30, 2019 8:04 pm

    And—again—in the fields I work in information process/EE and mechanical, there are often hundreds of different ways of solving a problem. The issue is how a person skilled in the art could construe the claims in view of the specification. A person skilled in the art, for example, would know hundreds of ways to find a differential voltage. I may only disclose two or three (or even none). A functional element to a differential voltage should include all the embodiments known.

    Etc. I think my argument is clear to anyone that cares to understand it.

  21. Concerned July 1, 2019 4:32 am

    Congrats Josh! You are an inspiration to many inventors.

    Night Writer @19 regarding bad actors. On another thread it was reported that only 83% felt it was wrong that SCOTUS added words to s101 law.

    Deep down we know judges are not supposed to make law, therefore, is 17% the de facto “bad actor” barometer?

  22. Night Writer July 1, 2019 8:51 am

    Joachim Martillo has a post that was deleted that takes away the context of my posts.

    @21 Concerned. I am sure it is more complicated in that many people probably don’t understand the situation or simply rely on authority etc.

    The bottom line is simple: the claims should be interpreted how a person of ordinary skill in the art would interpret them in view of the specification at the time of the invention. Attempts to change this are by people that want to burn the patent system down.

    Any other language or way of construing the claims brings in a personal bias–an opinion of what some judge thinks of the claims. It is the same thing as words like “something more” or “inventive concept.” They aren’t words of the structure of the invention, but opinions of the judges about what they think of the overall invention. They are not law but equity.

    And again–scope of enablement is the only scope of claims that makes any sense. If the scope is less, then an embodiment is enabled that is not covered by the claims and thus the claims are easily avoided.

    This is all very simple. There is nothing complex about this at all. (The only twist is that if someone invents something within the scope of the claims that is non-obvious, then there needs to be away for them to get protection. LazardTEch talks about this.)

  23. Anon July 1, 2019 10:10 am

    Night Writer @22,

    There are multiple threads with similar topics – perhaps JM’s post is merely on another thread.

  24. Randy Landreneau July 1, 2019 10:58 am

    I’m trying to wrap my mind around “a connecting force not less than the weight of the balloon would cause the balloons to crawl up the tube.” That makes as much sense as the same individuals behind the disastrous America Invents Act being allowed to be intimately involved in the latest proposal. Letting the same folks influence the process will only lead to further destruction. Our elected officials must recognize this and do what is right for America.

  25. J July 1, 2019 4:30 pm

    “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.”

    That second sentence is not true. A competitor can avoid infringement only by removing one of your claimed features, not by adding another feature.

  26. Night Writer July 2, 2019 8:54 am

    @25>>That second sentence is not true. A competitor can avoid infringement only by removing one of your claimed features, not by adding another feature.

    I think what he means by this is if you leave out one embodiment of the invention from the scope of the claims, then it is easy to design around. The examples in the article speak of limitations in the claims that are not needed for the invention.

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