Last month, the Supreme Court upheld California’s
“three strikes and you’re out”
law for convicted felons. That case was particularly
difficult because the guy got caught stealing about
$400 worth of golf clubs, yet this third conviction
landed him a harsh 25 year prison sentence.
In contrast to criminal law, the government doesn’t
always keep count of the number of strikes against
an inventor. Because their behavior is inherently
less harmful than crime, inventors have lots of
chances to lock up protection on an invention.
About a decade ago, two Wisconsin smelt fisherman
came up with an idea. Fast growing to 7-8 inches,
smelt swim around the Great Lakes region. One way
to catch smelt is by ice fishing. In the winter,
some folks prefer going to the mall while others
trudge off to fish on the ice.
Sun or snow, fishing is one of those inspirational
hobbies. When the fish are biting, ahhhhh, life
is soooo good. If they aren’t, fishermen have
lots of time on their hands and tend to dream up
new ideas. There are lots and lots and lots of fishing
inventions.
These two fishermen became concerned with zebra
mussels. Like smelt, zebra mussels are nonnative
to the Great Lakes. Unlike smelt, they don’t
provide hours of pleasure. Instead, the mussels
are like huge barnacles, growing everywhere, fouling
everything. They proliferate at the fabled speed
of rabbits, crowding out other species by taking
up all of the good underwater real estate and devouring
the food.
Their invention uses an acoustic generator tuned
to a particular frequency. The thing vibrates loudly
underwater and fatally breaks the shell of any nearby
zebra mussel. The principle is akin to an opera
singer singing so loud and pure that the wine glass
shatters.
Something else that probably works is dynamite,
where you get one loud BOOM! A few ice fishermen
have been known to use Alfred Nobel’s invention
to both break the ice and float a few fish.
For the two inventors, strikes one and two came
from the Patent Examiner and the Appeal Board that
backed the Examiner’s decision of unpatentability.
The Examiner’s decision was based on earlier
patents and research. One patent told how to kill
zebra mussels using acoustics… sounds close
right? Well yes, but the inventors argued, unsuccessfully,
that their invention used an oscillator, while the
earlier inventions used a plasma sparker to make
the acoustic noise.
Their next at bat was somewhat unusual. Instead
of appealing to a circuit court, the inventors essentially
asked for a new trial in federal district court.
By doing so, new evidence can be introduced. There’s
also the fact that the Patent Office loves to complain
about how much it costs to examine patents and how
little money it actually has. So it’s a bet
that in a trial the Patent Office might not put
up a stiff fight.
Except… the tactic backfired. The Patent Office
found some new evidence of its own, a German research
paper that detailed the same invention. The government
attorney also dynamited the inventors’ new
evidence through some questioning of the witness.
Thus, the trial court threw the third strike. Not
only that, the trial court tried to have one of
the inventors, a lawyer representing himself, ejected
from the game for filing a smelty motion.
The fourth strike came at the appellate court level.
The inventors said that the German paper was in
a foreign language than neither one understood.
As in criminal cases, where ignorance of the law
in no defense, in patent cases, ignorance of a foreign
language does not make an old invention patentable.
Striking out in patents doesn’t mean that
the invention is dead. The inventors just can’t
keep others from copying it.
One wonders about the commercial potential of the
noise maker invention. If the US Navy catches flak
due to its sonar disturbing the whales in the big
oceans, there’s bound to be some non-zebra
animal that hates the noise. So, not even counting
the Patent Office, the strikeout may come from environmental
regulations.
***
A few months ago, this column reported on the Victoria’s
Secret case, where a Kentucky novelty shop had adopted
the name “Victor’s Secret”. Victoria’s
Secret sued and won, although not on the question
of trademark infringement. Instead, the lower courts
held that Victor’s Secret diluted the value
of the Victoria’s Secret mark.
The Supreme Court slapped the briefs of Victoria’s
Secret, ruling that its evidence of dilution was
too threadbare. The ruling is significant because
it establishes that to show infringement of a trademark,
the owner need only show a probability of such,
while to show dilution, actual dilution is required.
Imagine trying to prove that a coin will come up
heads when tossed. The probability of heads is easier
to prove than the actuality. Unless the two sides
settle their differences, the case returns to a
lower court. Originally Published in the Fort Worth Businss Press |
