Kaufhold & Dix Patent Law

Space travel has become increasingly privatized. Businesses grow more reliant on satellites and companies make more aspirational efforts to develop space tourism and recover natural resources from asteroids and other space objects.?These developments raise important questions as companies seek to protect technologies used in space. One example of the commercial desirability of space is semiconductor research and manufacturing.?Earth’s gravity provides obstacles to manipulating the nanoscale materials used in semiconductors.?The stable micro-gravity of low-orbit satellites provide a uniquely suited environment for the semiconductor industry to research, develop, and perhaps even manufacture semiconductors entirely in space.?This is especially true given the plummeting costs in transporting materials from Earth’s surface into orbit.?The cost per kilogram to launch into low orbit was $5,600 in 2016, and that has fallen to under $1000 in recent years.?Compare that figure to the cost to ship 1 kg of chocolates from Venice, Italy, to Palo Alto, California, which is about $200 according to NASA.?It is therefore altogether possible that transportation costs to send materials into low orbit will be substantially similar to terrestrial shipping costs in the near future.?Several private companies have already announced plans for the establishment of commercial space stations for just these sorts of purposes. The stage is set for IP disputes to arise concerning commercial activities in space.?IP law is substantially territorial in nature; a patent obtained in the U.S., for example, will allow the patentholder to exempt others from making, using, or selling the patented invention in the U.S.?Disputes will hinge on which jurisdiction a commercial space station falls under, and companies will likely seek clarity in the law as to how jurisdiction will be determined. The little known 1990 Inventions in Outer Space Act mandates that any invention made, used or sold in outer space on a space object or component thereof under the jurisdiction or control of the US shall be considered to be made, used or sold within the US for the purposes of patent infringement.?But jurisdiction might not be clear-cut.?While nationality might be determined by formal registration of a commercial space station through the Outer Space Treaty or the Convention on Registration of Objects Launched into Outer Space, courts might take a more wholistic analysis.?Precedent from maritime law may intervene to complicate jurisdiction.?In 2018, the Federal Circuit stated that a ship’s flag does not transform a ship into terra firma of the country whose flag she flies. Space is becoming more populated by commercial interests, and IP disputes are likely to arise concerning the jurisdiction of space objects in the coming years.?Cases arising from patents covering semiconductors are likely to lead the way, which favor the stability of micro-gravity environments for manufacturing purposes.

As promised, we're back with part two of our review of Illumina v. Ariosa (Fed. Cir. 2020) The patents in this case included claim language that specified physical processes which changed the composition of the originally extracted sample, resulting in a DNA fraction that is different from the naturally occurring fraction.?Therefore, the Court found that the inventors were exploiting a discovery of the natural phenomena in a patent-eligible method for preparation of a DNA fraction.?The inventors did more than simply observing the presence of the natural phenomenon that cffDNA tends to be shorter than maternal cell-free DNA.?They exploited that natural phenomenon to create a patentable invention. In contrast to the Ariosa case from part 13, the claims were directed to more than just the correlation between a DNA fragment’s size and its tendency to be either fetal or maternal.?In fact, that correlation was not even mentioned in the claims.?These claims included more substantively operative steps than the Ariosa case, which merely claimed “amplifying” the cffDNA before detecting it, subjecting it to a test, or analyzing it.?The Court went on to state that even the “analyzing” step of these Illumina claims was distinguishable from the “analyzing” step of the Ariosa claims because the Illumina claims analyzed something entirely different from the natural phenomenon which was discovered. The lesson here was that, while an isolated, naturally-occurring gene is not eligible for patent protection, an innovative process for isolating that naturally-occurring gene may be patented.?And, although the separation techniques recited in the claims were well-known and conventional, those techniques were used in unconventional ways to arrive at a patent eligible method, particularly when combined with unconventional thresholds (namely, the human-engineered size limitations.) Come back next week as we continue our review! In the meantime, schedule a consultation with our friendly patent attorneys to learn more about protecting your own inventions. #linkinbio #patents #innovation #iplaw

In part 16 of patent eligibility series, we continued to focus on “natural phenomenon” cases by reviewing Illumina, Inv. V. Ariosa Diagnostics, Inc., 967 F.3d 1319 (Fed. Cir. 2020).?Claims for method of separating fetal DNA from maternal DNA were held patent eligible. This case represents a great contrast to the Ariosa case we discussed in part 13.?Accordingly, this will be a two-part post, so be sure to come back tomorrow! In the meantime, schedule a consultation with our friendly patent attorneys to learn more about protecting your own inventions. #linkinbio #innovation #patents Here, the inventors built on the natural phenomena discovered by Sequenom, namely, that cffDNA is naturally found in the maternal bloodstream.?The patents in this case identified a problem related to that discovery, which was that, generally, over 90% of extracellular DNA comes from the mother and that there was no way to distinguish and separate the relatively tiny amount of fetal DNA from the much larger amount of material DNA. The inventors discovered that fetal cell-free DNA tended, on average, to be shorter than maternal cell-free DNA.?Based on that discovery, the patents claimed methods of selectively removing the longer DNA strands to create samples that were enriched with the fetal DNA.?The claims specified the sizes of the DNA fragments which would be removed and the laboratory techniques which were used for the removal process. The court was careful to explicitly state that this was neither a diagnostic case (which is unpatentable) nor a method of treatment case (which is patentable).?Instead, the court classified it as a method of preparation case.?The Court went on to find that the claims were directed to methods for preparing a fraction (or sample) of cell-free DNA that is enriched in fetal DNA, making the claims patent eligible under Step 1 of Alice. Because the size distributions of fetal and maternal cell-free DNA overlap each other, the Court held that the claimed size restrictions were human-engineered parameters that optimized the amount of maternal DNA that was removed from the mixture and the amount of fetal DNA that remained in the mixture to create an improved end product that was more useful for genetic testing than the naturally occurring blood sample which was originally extracted.

Previously we discussed known companies that blossomed from small businesses established with patented inventions, and benefits of building a business through use of patents.?The following provides information as to strategies known to maximize the value of patents in business. 1. Building a Patent Portfolio Rather than relying on a single patent, small businesses can build a portfolio of related patents. This not only strengthens their market position but also creates multiple streams of revenue through licensing or sale of different technologies. A patent portfolio also makes the business more attractive to investors and potential acquirers. 2. Early Market Penetration? Given the limited time of exclusivity, small businesses should focus on penetrating the market as quickly as possible after obtaining a patent. Speed to market ensures that the business can establish brand recognition and customer loyalty before competitors can challenge their dominance. 3. Exploring Licensing Models? For businesses with patented technologies that have broad applications across industries, licensing can be a lucrative option. By partnering with larger companies, small businesses can scale without needing to invest heavily in manufacturing or marketing infrastructure. Small businesses built on patented inventions have the potential to drive innovation and achieve significant market success. Patents offer legal protection, a competitive edge, and opportunities for growth through licensing and partnerships. However, these businesses must navigate challenges such as high costs and patent enforcement. By adopting strategic approaches—such as building patent portfolios, penetrating the market quickly, and exploring licensing opportunities—small businesses can maximize the value of their patented inventions and contribute meaningfully to industry and economic development. Ultimately, a patent is not just a legal document; it is a tool that, when leveraged effectively, can be the foundation for lasting business success.

Previously, we discussed how patented inventions helped to establish small companies that then blossomed into larger, well known companies.?Establishing and building a business can be daunting and time consuming.?However, the payoff can be substantial, including financial gains, being your own boss, providing for your own family, providing work opportunities for others to provide for their families, and generating opportunities to for growth and stability in your local community.?Patents can assist in the establishment and growth of new businesses through the following: 1. Competitive Advantage? A patent gives a business a legally backed monopoly on its invention for a limited time. This period of exclusivity allows small businesses to capitalize on their innovation without worrying about competitors copying their idea. It can lead to market dominance, enabling a business to scale before others can catch up. 2. Increased Market Value? Patents increase the perceived value of a company. Investors and acquirers look favorably upon businesses with a robust portfolio of patents because they represent a tangible asset that can be leveraged for future growth. In many cases, the patents themselves become critical in negotiations for funding, partnerships, or acquisitions. 3. Licensing Opportunities? Small businesses with patented technologies can also explore licensing opportunities. Instead of manufacturing and selling products themselves, companies can license their patents to larger firms, generating a steady stream of passive income. This strategy is especially useful for small businesses that may lack the resources to mass-produce their products but have innovative technologies with broader applications. 4. Attracting Strategic Partnerships? Patented inventions make small businesses more attractive to strategic partners. Larger companies, particularly in industries like pharmaceuticals, technology, and manufacturing, often seek out small businesses with patented innovations for collaborations. These partnerships can lead to co-development projects, distribution deals, and access to new markets. In the future we will address strategies for maximizing the value of patents.? In the meantime, schedule your free consult with one of our friendly attorneys to work out a strategy for leveraging patents for your own small business #linkinbio #innovation #iplaw #patents #trademarks

So, if you noticed the title your initial thought is if there are any poker related patents.?There are, but this isn't what I'm focusing on here.?In speaking with people new to patents I have often used poker to help explain how getting a patent can have value for an inventor.?A few years back, poker was gaining in popularity and it seemed it could be difficult to flip through the television channels without finding some poker tournament.?So, many people could relate it.?Whether you watched or played poker yourself really doesn't matter, as long as you are willing to accept that you can't play poker if you don't have any chips. This is a bit of digression, but legend has it that the invention of the poker chip is what allowed poker to gain much more widespread popularity, and allowed it to move beyond appeal to ne'er do wells, scallywags, and those who are just naturally inclined to take risks.?But many find it too stressful and don't get real enjoyment out of risky behavior, particularly when real money is involved.?Some of those will never gamble at all.?However, between the scallywags and the chronically risk averse are those who find it too stressful to put real money in, but are content to purchase and potentially lose chips.?Mentally, the money is already spent getting the chips, so there is nothing more to really lose and only money to be gained if you can collect more chips.?I couldn't swear to this being an absolute, but it rings true. But getting back to the main point, it makes sense that you need chips to play.?How does that relate to patent protection??I would ask you to consider owning patent rights as being similar to having chips for the game of trying to profit from your invention.?Say you invent an improvement to an existing product.?Maybe that existing product is patented by Company X which means you can't make or sell your improved version without permission from Company X.?Without chips, i.e. a patent on your invention, you aren't in the game of making and selling your invention.?You may have to sit and watch while Company X makes and sells your invention because you can't stop them.?But if you do have your chips, i.e. the patent for your improvement, Company X can't make or sell your invention without your permission.?In that case, if no agreement can be reached, there is no game at all.?But you both have your chips, and if there is a market for your invention, there is incentive for both you and Company X to reach an agreement so that your product can be sold.?This is where the poker analogy admittedly fails because unlike poker, everyone can win.?In fact, it is to the benefit of both you and Company X that you each profit sufficiently to keep the game going. Schedule a free consult to learn more about gathering your "chips" for the game of profiting from your inventions #linkinbio #innovation #patents

Small businesses are a significant driving force in the global economy. For startups and entrepreneurs, patented inventions can serve as a foundation for success, offering both a competitive edge and legal protection. Building a business on a patented invention brings unique opportunities and challenges, but when executed strategically, it can lead to significant growth and innovation. The Role of Patents in Small Business Success A patent grants an inventor exclusive rights to their invention, typically for 20 years. This legal protection prevents others from making, using, or selling the invention without permission. For small businesses, this exclusivity is critical, as it offers a period of market dominance and the ability to establish a strong brand before competitors can enter the space. Patents also serve as valuable assets that can attract investors. Venture capitalists and angel investors are more likely to support a startup if its core product is protected by a patent. The intellectual property (IP) adds a layer of security for investors, knowing that the business has legal control over its unique offerings. In many cases, the IP itself becomes a crucial part of the company's valuation. Examples of Small Businesses Built on Patented Inventions 1. Dyson Ltd: One of the most notable examples of a small business scaling through a patented invention is Dyson, founded by James Dyson in the late 1980s. His patented cyclonic vacuum technology disrupted the vacuum cleaner industry, and the company grew rapidly. The initial patent protection allowed Dyson to establish a foothold in the market and build a global brand without direct competition. 2. Ring (formerly Doorbot): Jamie Siminoff’s patented video doorbell technology became the foundation of his company, Ring. The business initially struggled to gain traction, but with a patented product and a growing demand for smart home devices, Ring eventually became a success. It was later acquired by Amazon for over $1 billion, showcasing how a patented invention can lead to large-scale business success. How have you noticed the impact that patents can have on a growing business?

In a recent preliminary injunction hearing, Illinois Tamale Co. Inc., doing business as Iltaco, argued that the Little Caesars “Crazy Puffs” product and registered trademark is too confusingly similar to Iltaco’s trademarks of “Pizza Puffs” which it has used for 50 years to refer to their own handheld pizza product with a dough casing filled with pizza toppings.?Iltaco also registered a trademark for the more general term “Puff” in 2021 when used for, among other things, “dough-enrobed foods consisting of a dough-based wrapper with fillings consisting primarily of meats, poultry, vegetables and cheese.”?Little Caesars’s description of its product as “4 handheld pizza puffs” in its advertisements and the more pervasive use of “Puff” was therefore called into question. Iltaco put forward an argument which claimed that Little Caesars’s advertising causes a form of confusion called initial interest confusion in which an improper use of a trademark attracts potential customers to consider products or services provided by the infringer.?This type of confusion is essentially a sort of bait-and-switch, where the infringer uses a trademark that many consumers may be familiar with only to provide a different product or service than what was expected.?Even if the confusion is resolved before the sale is completed, the infringer takes advantage of the goodwill developed in the trademark in order to attract potential buyers. Little Caesars has significant equity in trademarks for their “crazy” food products, including “Crazy Bread,” “Crazy Sauce,” and the “Crazy Calzony.”?The company’s chief marketing officer testified that the term “Crazy Puffs” was selected to capitalize on that equity.?Little Caesar’s defended their use of “pizza puff” by asserting fair use, which is a defense that allows use of a mark when used in good faith and in a descriptive manner. To defend against claims of infringement for the use of the more encompassing term “Puff,” Little Caesars argued that the term has become generic over time.?Genericization may occur to a trademark when the public uses the trademark as a generic term for an entire class of products or services and the trademark owner fails to take appropriate steps to prevent such use.?The result is a loss of trademark rights for the trademark owner.?Examples of once-trademarked terms which have become genericized are thermos, trampoline, aspirin, and escalator.?Some trademarks are often used in generic ways but currently maintain legal protection, such as “Velcro,” “Kleenex,” and “Band-Aid.” The outcome of the “Crazy Puffs” case remains to be seen.?But perhaps Little Caesars could have avoided a lawsuit if it had conducted market research beforehand to determine whether their newest product name was already protected.

It’s Halloween season!?Did you know that some costumes are patented??Some are! For example, US patent 6,904,612 discloses a Halloween costume that can accommodate changes and weather, keeping the user at a comfortable temperature during their celebrations.?The costume includes a plush fabric that is designed to resemble a character.?An insulative material covers at least a portion of the plush fabric, and another portion of the costume is made from a venting material.?The functional benefits of constructing the costume with the plush fabric, the insulative material, and the venting material help regulate the temperature of the user, allowing this inventor to obtain a utility patent. But, some inventors may prefer a design patent for protecting their costumes.?Design patents can protect unique and original designs that are not functional aspects of the costume.?For example, a design patent could not protect the functionality of the various layers of material of the ‘612 patent but could protect the particular design of such a costume. US patent D994,271 discloses a costume that disguises the user as a cow.?The drawings show a jumpsuit, with a zipper extending down the front.?An udder is positioned on the front of the costume, over the abdomen area.?A hood is attached to the jumpsuit, and the jumpsuit is covered in patches specifically designed to mimic the spotted pattern of a Holstein cow.?Each of these design elements are covered by the design patent. Is your Halloween costume patented? To learn more about patents, trademarks, and other intellectual property matters, contact our offices to schedule a free consultation with one of our frighteningly friendly attorneys. #linkinbio #halloween #costumes #iplaw #patents

In part 15 of our series reviewing patent eligibility cases, we looked at Cleveland Clinic Foundation v. True Health Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017).?Claims made to a testing process for determining the risk of cardiovascular disease were ineligible for patent protection. When an artery is damaged or inflamed, the body releases a certain enzyme known as MPO. MPO release is an early symptom of cardiovascular disease and can indicate a patient’s risk of heart disease.?Cleveland Clinic owned some patents disclosing methods for detecting MPO and correlating the results to cardiovascular risk.?When those patents were filed, it was already known that MPO could be detected in the blood, but those methods yielded results that were not predictive of cardiovascular disease.?Cleveland Clinic’s patent claimed ways to detect MPO in the patient’s blood, and to correlate that to the risk of cardiovascular disease. The patents disclosed using standard methods to detect MPO and modifying existing testing kits to use different cut-offs, sensitivities, and instructions for characterizing the risk of heart disease.?Cleveland Clinic also used well-known statistical methods to compile data and create a control value for MPO activity. Patient samples were compared to the control value to determine risk. True Health performed its own MPO testing.?Cleveland clinic sued, asserting that True Health’s MPO testing infringed their patents.?In Alice Step One, the Federal Circuit found that the claims were directed to multistep methods for observing the law of nature that MPO correlates to cardiovascular disease.?The specification noted that the claims were based on the discovery of that correlation, and did not purport to alter the naturally-occurring MPO levels in any way.?Without any human intervention, the claims were held to be directed to the natural phenomenon of the relationship between MPO levels and cardiovascular disease. ? In Alice Step Two, the Court noted that the claims included a determining step for analyzing the MPO levels using standard techniques.?A comparing step evaluated the MPO levels in light of the control value.?Nothing in the claims transformed the natural phenomenon into a patent-eligible invention because the lab techniques and statistical methods were routine and conventional. In CellzDirect, which we analyzed a few weeks ago, the claims used the natural ability of liver cells to survive multiple freeze-thaw cycles, improving existing preservation methods.?Here, the claims didn't disclose any technological advances and were limited only to conventional detection and comparison methods. The Court concluded that even groundbreaking discoveries could fall short of statutory patentable subject matter. Come back next week as we continue our review! In the meantime, schedule an appointment with one of our friendly attorneys to learn more about patenting your own inventions! #linkinbio #innovations #patentlaw