WHEN CONSIDERING PATENTING YOUR INNOVATIONS, CONSIDER THE VALUE OF THE INNOVATION, NOT ITS COMPLEXITY

A recent victory for a Carlson, Gaskey & Olds client reaffirms the point that even seemingly simple inventions, including inventions supported in large part by relative dimensions, can be patentable and very valuable.

A few years ago, a United States District Court judge granted summary judgment against a CGO client who alleged infringement of one of its patents. The judge found the patent was not infringed as a matter of law.

CGO lawyers briefed the issue of infringement to the Court of Appeals for the Federal Circuit, and argued the issues before the Court. Last fall, the CAFC reversed the District Court judge, and reinstated much of the infringement claim. See Research Plastics v. Federal Packaging, 421 F.3d 1290 (Fed. Cir. 2005).

The CAFC decision included a claim interpretation that left little doubt the patent was infringed, and thus all that remained for trial was the issue of validity. After a one week trial on validity, CGO lawyers convinced the jury that the patent is valid. As seen in the illustration below, the patent relates to a small plastic rib formed in the interior of a plastic caulking tube. The rib provides an air escape feature at the end of the tube. The rib is element 38, but it is shown in the drawing much larger than it is in practice. The actual rib is, in fact, so small that it is hard to see. The patent was found to be valid even over prior caulking tubes with air escape features that were very similar. In large part, the patentability was based upon the relatively small size of the rib.

A lesson from this victory is reaffirmation that companies and inventors should not discount innovations simply because they may seem obvious, or they may relate to aspects such as relative dimensions that might seem non-inventive. Instead, a company should always look to the apparent value of the innovation and whether it provides a competitive advantage, regardless of its apparent simplicity.

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