One of the most common defenses to patent infringement is that the asserted patent is invalid. The reasons for invalidity regularly range from lack of utility, to incorrect inventorship, and even to fraud (as I’ve recently written about). Often, the defendant asserts that the patent is invalid for lack of novelty or non-obviousness–pointing to some piece of evidence that the defendant says conclusively shows that the invention was already in the public domain before the plaintiff even applied for the patent. That evidence is called invalidating “prior art.”

Prior art can spell the unexpected demise of an otherwise valid patent, and it comes in many forms. For several decades, published prior art (not to be confused with prior art in the form of prior uses or sales) consisted of already-existing patents (and applications), trade journals, drawings, articles, websites, standards, whitepapers, etc. But Congress expanded the scope of published prior art dramatically in passing the America Invents Act in 2012. Whereas before prior art consisted merely of “printed publications,” post-AIA, prior art also encompasses things that are “otherwise available to the public.”

The larger–and more modern–universe of possible published prior art is easy to imagine. For example, prior art references are no longer limited to traditional publications and documentary evidence. Instead, additional forms of multimedia come into play–which is fitting in today’s multimedia-packed times. Videos, movies, broadcasts, and recordings all now qualify as prior art, so long as they are available to the public.

But despite this expansion, litigants have not yet fully taken advantage of the change. There have been a few recent uses of video as prior art, such as the iconic iPhone keynote speech made by the late Steve Jobs demonstrating a technology described in an Apple patent. Ironically, in commenting on the “bounce-back” effect that was the subject of the patent, Steve Jobs stated, “boy have we patented it.” But Apple failed to patent it fast enough after the speech.

https://youtu.be/-3gw1XddJuc?t=29m7s

Samsung used clips from Stanley Kubrick’s 2001: A Space Odyssey to argue that Apple’s design patent for the shape of a tablet was invalidating prior art.

Apple really seems to be taking the brunt of video prior art challenges.

Just one week ago, a Federal district judge in the Northern District of Florida addressed–apparently for the first time–whether a YouTube video could constitute prior art. The court, in HVLPO2, LLC v. Oxygen Frog, LLC, 4:16-CV-336 (MW/CAS) (Dkt. No. 133), held that a YouTube video can constitute prior art and that YouTube videos are “sufficiently accessible to the public interested in the art.” Not exactly a groundbreaking finding to someone of my generation, who grew up with YouTube and the internet. Indeed, the USPTO’s own training guides (slide 15) specifically state that YouTube videos are a perfectly acceptable form of prior art. The USPTO has stated that videos qualified prior to the AIA, but there is conflicting authority.

The plaintiff in HVLPO2 had argued that the particular YouTube video in question was uploaded on a random account, so no one interested in the art would have found it. The court pushed back in eccentric fashion, stating:

It appears that Plaintiff is unfamiliar with how YouTube works. A familiar user would know that you don’t need to search for a particular channel to watch the videos uploaded on it. For example, if you want to watch a video of a cat skateboarding, you can search “cat skateboarding”; you don’t need to know that it might have been “CatLady83” who uploaded the video you end up watching.

The court held that the YouTube video in question appeared within the first 20 videos when using appropriate search terms on the site. “Surely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the ‘reasonable diligence’ that the law expects of a hypothetical prior art subject.” I couldn’t agree more, and I recommend this fun cat skateboarding video:

But even though most YouTube videos are generally accessible, not all are available to the public. For example, YouTube videos may be “private” or “unlisted,” potentially removing them from the “otherwise available to the public” category or at least undermining the argument for their accessibility. Thus, as even the court in HVLPO2 noted, the defendant still has to prove the existence of public access to the video prior to the applicable date. This can be accomplished by proffering screenshots of the video in the browser and evidence of that video’s publication date (which is disclosed on the YouTube website and many other video sharing platforms).

Besides the above, there are few other examples of videos (online or otherwise) being used as prior art. This is probably due in part to the current difficulty of searching the vast amount of video and audio–as opposed to text, for example–available on the internet. But as computer learning gets better and better, I expect audiovisual prior art will play a bigger role in both patent prosecution and litigation, so long as that prior art is “otherwise available to the public.”

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This is a common question among many new inventors. To be patentable, an invention must be novel and non-obvious in view of the “prior art.” Prior art includes prior filed patents, patent applications, and other public materials. A patententability search, or prior art search, can give the inventor an idea of what the prior art landscape looks like. If performed before filing an application in the Patent Office, a patentability search can provide an inventor with direction as to how to potentially overcome the prior art, or in some cases can even suggest that an invention may not be patentable. However, a search can be costly and does not provide a definite answer as to patentability. Inventors should keep some important considerations in mind when deciding if a search is right for their situation.

What does a prior art search cover?

A patent search can range in depth from a quick Google search to a professional, global search performed by a patent search company and reviewed by an attorney. The scope of a search may depend on the inventor’s knowledge of the field of invention, the breadth of the invention, and cost considerations.

Notably, a patent search can include not just patents and patent applications, but also non-patent literature, such as trade journals and research papers. Any type of public document—even a blog post—can be citable prior art against a patent application.

A comprehensive prior art search should search for not only the same invention, but similar inventions and inventions in other fields of endeavor.

Doesn’t the Patent Office perform a search?

Yes, but only after the application is written and filed. As part of the application process for seeking patent protection, the U.S. Patent Office will perform its own search and cite results as rendering the application anticipated (not novel) or obvious.

An independent patentability search can help an inventor make decisions before the application is written and filed.

What does a prior art search NOT cover?

This, generally, is the catch with any patent search.

First is an issue of dates in the slow-moving Patent Office. When a patent application is filed, it does not become publicly accessible (i.e., it won’t turn up in a prior art search) for 18 months. But, at any point during that 18-month period, another inventor might file a new application. The earlier application will be prior art to the later application, even though the earlier application was unpublished when the later application was filed. Thus, any search effectively has an 18-month “black hole” in which the patent applications most recently filed in the Patent Office are undiscoverable. Generally, this may only be a problem when inventions relate to cutting-edge improvements and new technologies.

Secondly, prior art searches are, by nature, subjective. Whether the search is performed via Google, on the USPTO website, or in a global patentability database, the search results are only as good as the particular search terms used. This can be problematic because, when the Patent Office performs its own search after the application is filed, the Office may find and cite references that were not necessarily discovered by the inventor’s earlier search.

Do I have to tell the Patent Office what I found?

Yes, inventors and their attorneys/agents have a duty to disclose to the Patent Office information that is “material to patentability” with respect to a patent application. In practice, this means that an inventor has a duty to disclose the art that results from a patentability search.

Can I do my own prior art search?

Of course. There are many resources to help guide inventors in performing prior art searches. However, for the reasons described above, any search has its limitations and it is still advisable to have a patent attorney or agent review the results.

It thus becomes clear that the decision to perform a prior art search requires consideration of many factors, and is unique to each situation.  A prior art search can help an inventor make key decisions before filing a patent application, but a favorable search is no guarantee of patentability.

 

Fantasy Live Role Playing Characters, Hardenstein 2014

Live Action Role Playing (LARP or LARPing) usually involves Renaissance Festival worthy costumes, foam medieval weapons, and an intense dedication to not breaking character.  I can’t say I’ve ever had the privilege of participating in a LARP event, but I also can’t say I’d turn down the opportunity.

A different kind of battle—the intellectual property kind—is being fought over the sale of some foam LARPing arrows.  Jordan Gwyther, a church pastor who sells LARPing equipment on the side, is being sued by the proverbial Goliath, Global Archery Products, Inc.  Jordan Gwyther owns LARPing.org and UpshotArrows.com, both of which offer foam tipped arrows for sale to LARPing enthusiasts.  Gwyther doesn’t manufacture the arrows; he imports and sells them.  Global Archery initially sued for patent infringement, trademark infringement, false advertising, and unfair competition.

The patent infringement claims relate to Global Archery’s two U.S. utility patents, each entitled “Non-Lethal Arrow.” The patents were granted in 2013 and 2015.

Here are some images from Global Archery’s patents:

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The scope of a utility patent, however, is defined by it numbered “claims.”  Claim 1 of one of the patents, for example, is directed to:

A non-lethal arrow, comprising:

a shaft; and

a foam tip assembly connected with an end of the shaft, wherein said foam tip assembly comprises a tip connector having a foam tip overmolded to at least a portion of the tip connector such that said foam tip is securely attached to said tip connector.

And here are some of Gwyther’s arrows accused of infringing the Global Archery patents:

IDV-03005_1_IDV-02002

At least upon first glance, there are surely some similarities here.

Gwyther responded to the lawsuit by launching a GoFundMe page with this video, asking the LARP community for help.  In the video, Gwyther claims that if Global Archery succeeds in its lawsuit against him, they will likely succeed in suing other foam arrow distributors and effectively end LARP archery in the U.S.

Global Archery motioned the court for a temporary restraining order and preliminary injunction to remove the video, stating the video led to “hateful phone calls, emails, and [social media] posts.”  Global Archery’s efforts at a so-called “gag order” did not sit well with the LARP community or the more general online community.  As a result, tech company Newegg joined in the fight, calling Global Archery a patent troll, and offering $10,000 and the proceeds from some anti-patent troll t-shirts to Gwyther’s cause.

Newegg_Anti_Troll_Shirt
Newegg states, “Proceeds from the sale of this shirt will be used to support Mr. Gwyther’s legal defense fund.”

But is Global Archery really a patent troll?  There are a few ways to define a patent troll.  Usually, the term is used to refer to a non-practicing entity—a company that owns patents for the purpose of collecting license fees and/or settlement money.  Non-practicing entities do not actually make, use, or sell the things their patents cover.  That definition does not seem to apply to Global Archery, however, since it is a company directly involved in various forms of archery, even if it does not market directly to the LARP community.  Other times, “patent troll” is used to refer to a patent holder using its patents to assert overly broad and even baseless claims against others in order to collect settlement checks.  This definition, too, seems inapplicable given the apparent similarities between the patent claim language and Gwyther’s arrows.  Perhaps a more broad definition of a patent troll is simply a large company that enforces its patent rights against smaller companies?

Patent troll or not, the patent claims were recently dropped.  Gwyther cited a German patent, predating Global Archery’s patents, as invalidating prior art.  Here are a couple images from the German prior art patent:

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After reviewing the German patent, Global Archery voluntarily dismissed the patent infringement claims against Gwyther.  According to the online file histories, neither of Global Archery’s two patents received much push back from the U.S. Patent Office prior to allowance.  Apparently, Global Archery decided it would be safer to drop the patent infringement claims against Gwyther than be forced to defend the novelty and non-obviousness of its patents.

Invalidity is a frequent offensive strategy to combat patent infringement claims, and Gwyther did well to bring in the German patent.  Gwyther won the battle, it seems, but the war rages on.  It will take something stronger than foam arrows to defeat the remaining trademark, false advertising, and unfair competition claims asserted in the suit.