Patent suit not good for US Prius imports

[RodJo]

Originally Posted by qbee42

At the present time it is very easy to get a "bad" patent; one that should never have been issued. The patent office is handing them out like Cracker Jack prizes. At the same time, a small company with a great idea has little chance of protecting it with a patent, as the burden of defense belongs to the patent holder. Most small companies can be spent into bankruptcy by any large corporation.

Granted, the documentation of the prior art in software areas is not as great as in other areas, but that really isn't the fault of the patent system. And it is getting better and more software techniques are published. In most other areas, the prior art is pretty well knowable.

The burden of defense actually falls on the infringer (the defendant). Yes, patent litigation can be expensive and time consuming for both parties, but many small companies do quite well against large corporations (Paice v. Toyota being one example) and can usually make financial arrangements to pay for it. The unexpected consequence is often the time sucked away from the people, which can cause a small company to have problems.

Originally Posted by qbee42

In addition, laws haven't kept up with technology. Many of our legal tools are like using a buggy whip on the space shuttle.

Example?

[RodJo]

Originally Posted by Mike Dimmick

Unlike copyrights*, patents have a limited life, and they cost fees every year to renew them; those fees increase the longer you have the patent. TRW did patent, but that patent has long expired.

That true in many countries, but not the US. In the US, only 3 payments are paid after issuance (4th, 8th, and 12th year). Those fees are meant to encourage the release of patent rights in patents are the owner desides isn't worth the $1-4k fee.

Patents are meant to involve an 'inventive step', some non-obvious extension to the prior art that makes a distinct improvement on it. The judgement of obviousness is very weak. It's supposed to be non-obvious to a skilled practitioner of the art. Most descriptions I see, in the software field, were very obvious, trivial, anticipated by documentation of the prior art, or so constrained by the problem that the choices of solution were so limited as to be no choice at all.

Actually, the obvious test has recently changed to make it harder to obtain a patent.

It's usually hard to judge, as an engineer, if there is a definite improvement because the patent is couched in patent-lawyer-ese, not in any language that the engineer can understand.

Then it was written by a poor patent attorney, IMHO. A patent must be written so it can be understood, not only by an engineer, but also by the 65-year-old handyman on the jury.

The whole system is broken. It was meant to be a public repository of solutions so that we didn't have to keep reinventing the same thing time and again, and instead spend time and resources on making real progress, with the inventors modestly compensated for revealing their secrets. The prospect of triple damages for 'wilful' infringement in fact causes lawyers to advise engineers not to read patents (not that we can read them): if you have viewed the patent, a verdict of wilful infringement is likely even if your opinion was that the patent did not cover your product.

The patent system was set up to be an incentive to innovate. The engineers should not be making those opinions.

I'm really not sure how to fix it. The first thing we do, let's kill all the lawyers. No, wait, that was Shakespeare. We need to get rid of the legalese. It must be intelligible to people skilled in the art. You need a jury of such people to determine whether there is an inventive step in there. (This may be hard to do; often the jury would be competitors of the inventor.) Maybe set out the royalty schedule in statute so people can't be held to ransom. Independent invention does not get an award to the first to file: if you can show you invented the same thing independently, it nullifies the whole patent as it clearly was obvious.

Again, find a patent attorney that understand and explain the invention to others. In the US you must be the first to invent, in other countries you just have to be the first to file.

* Copyrights are supposed to expire, but the idiot politicians keep extending it retroactively every time Mickey Mouse gets close to being out of copyright.

I agree! Again big business getting what they want.

By the way, the system in Japan is a whole other story. Let's just say that I don't feel too sorry for Toyota.

[DeadPhish]

I read the brief explanation and it appears that it's the PSD that is at the center of the suit. It's the device that melds the various power inputs that Paice is contesting if I'm not mistaken.

[DeadPhish]

In the ITC case the plaintiff has to show that 'its market' is being damaged by the imports. I was involved with this during the 80s and 90s when in the steel industry.

The ITC found that most of the steel being filed against didn't damage the market for the domestic steel industry. They threw most of the cases out.

Paice is contending that it does have a market here for it's patented Power Split Device or whatever it calls it. Whether it does or not is subject to arguments and then a decision by the ITC if it ever goes that far.

[Shawn Clark]

Originally Posted by qbee42

Our intellectual property laws are seriously messed up. The whole patent system needs an overhaul.

Especially pharma...

[RodJo]

Originally Posted by DeadPhish

In the ITC case the plaintiff has to show that 'its market' is being damaged by the imports.

...

Paice is contending that it does have a market here for it's patented Power Split Device or whatever it calls it. Whether it does or not is subject to arguments and then a decision by the ITC if it ever goes that far.

It's been 15 years or so since I've been involved in an ITC action, but the standards vary depending on the basis of the complaint. A patent infringement is treated differently than say unfair competition or dumping dispute. For patent infringement, the ITC would have jurisdiction if Paice can show that the patents are being used in an existing industry or if such an industry is being established. Paice would have an existing industry if it can show:

significant investment in plant and equipment;
significant employment of labor or capital; or
substantial investment in its exploitation, including engineering, research and development, or licensing.

What I suspect, but I could be wrong, is that Paice has licensed it patents to a US auto company. The auto company would have more of an interest in halting imports and may even be directing and ultimately paying for the ITC action. I'm sure more details will become available in the coming days.

[hampdenwireless]

Unless I am mistaken, the patent does not go too much longer. It was filed in 1992.

Its quite detailed and an interesting read. I think that much of this patent could be invalidated due to prior art. As long as its known, previous use of the patent claims by others (and not patented of course) makes that part of the patent invalid, and large sections of it were done in the 1970's and of course some in the early 1900's.



Hybrid electric vehicle - Google Patent Search

[RodJo]

Originally Posted by hampdenwireless

Unless I am mistaken, the patent does not go too much longer. It was filed in 1992.

Its quite detailed and an interesting read. I think that much of this patent could be invalidated due to prior art. As long as its known, previous use of the patent claims by others (and not patented of course) makes that part of the patent invalid, and large sections of it were done in the 1970's and of course some in the early 1900's.



Hybrid electric vehicle - Google Patent Search

Yes, that patent should expire in September of 2012 but Paice could also be asserting newer patents.

Assuming Paice is asserting the same patent claims against the Gen 3 Prius, then Toyota has already had its opportunity to invalidate the patent and failed. It would be bound by that result and wouldn't get a do-over. The ITC would simply look to see if the Gen 3 Prius also infringes those same claims.

Now if other patent claims are at issue that were not previously litigated, then that's a different story.

[RodJo]

Originally Posted by RodJo

Yes, that patent should expire in September of 2012 but Paice could also be asserting newer patents.

Assuming Paice is asserting the same patent claims against the Gen 3 Prius, then Toyota has already had its opportunity to invalidate the patent and failed. It would be bound by that result and wouldn't get a do-over. The ITC would simply look to see if the Gen 3 Prius also infringes those same claims.

Now if other patent claims are at issue that were not previously litigated, then that's a different story.

The claims (numbered paragraphs at the end of the patent (if you're viewing the PDF)) in US 5,343,970 to look at are 11 and 39 (which is 32+38+39 read together). They define the legal invention found infringed by the Gen 2 Prius.

[hill]

Originally Posted by Mike Dimmick

Unlike copyrights*, patents have a limited life, and they cost fees every year to renew them; those fees increase the longer you have the patent. TRW did patent, but that patent has long expired.

Patents are meant to involve an 'inventive step', some non-obvious extension to the prior art that makes a distinct improvement on it. The judgement of obviousness is very weak. It's supposed to be non-obvious to a skilled practitioner of the art. Most descriptions I see, in the software field, were very obvious, trivial, anticipated by documentation of the prior art, or so constrained by the problem that the choices of solution were so limited as to be no choice at all.

It's usually hard to judge, as an engineer, if there is a definite improvement because the patent is couched in patent-lawyer-ese, not in any language that the engineer can understand.

. . . . . . . . . . snip

In order to sit for the patent attorney exam in the U.S. one not only has to be an attorney, one has to be an engineer too. A couple decades back when I sat for the (regular) bar, the patent exam was open book (a HUGE book) ... and the 1st time success rate was only about 15% ... not 15% of the shlomoes walking the streets ... rather 15% of the folks w/ law & engineering degrees ... many from schools I could have only dreamed about going to. One of my chemical engineer buddies tried the patent exam, then gave up and went into family law. Yet, you don't even have to be an attorney OR an engineer, to file your own patent.


That said, my father-in-law (retired electrical engineer) has several patents that he did himself. One of these was for solar water heating valve solenoid designs. I understand basic electronics enough so that when he had to defend this patent, just a short explanation was enough to get others like me up to speed in no time at all. Sure, some designs are extremely complex, but the very nature of patent litigation requires litigants to be able to help a jury understand the difference between the opponents.

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