no special rules for pro se patentees
[in pre-launch status, as we search for a shlep team — can you contribute?]
David Crouch at Patently-O reported yesterday (Sept. 20, 2006) on the recent decision in Kim v. Conagra Foods (Fed. Cir, No, 15-1414, 2006). Crouch notes “Here’s another case where technicalities of the patent system apparently trapped an unsuspecting patentee,” and quotes the federal appellate court:
“[W]e reject Kim’s position that she should be treated differently from other patentees because she was pro se during some parts of the prosecution.”
Yoon Ja Kim had applied pro se and received a patent on a combination of ascorbic acid and food acid that could serve the purpose of potassium bromate (a feared carcinogenic) in bread-making. She sued ConAgra, asserting that “Healthy Choice” brand breads infringed on her patent. Although it was not defined in the specification, the appellate court found the preamble term “potassium bromate replacer” used in her claim to be limiting to the extent that any infringing composition must “perform essentially the same function in the production of that bread as would potassium bromate.” Apparently, a more astute patentee (or attorney therefor) might have described or defined the patent composition in a manner that did not have the limitation found by the court. The dissenting judge said Kim was acting as “her own lexicographer” in defining the term “potassium bromate replacer” and the court should not have included the functional limitation.
Your shlep editor has no patent law expertise and does not have an opinion on whether Conagra infringed upon Kim’s patent. The appellate court was certainly correct, however, that there shouldn’t be a different standard when deciding limitations on a patent (or the “surrender” issue presented in this case) merely because the patentee had appeared pro se in the process of obtaining the patent. The public shouldn’t have to be worried that a patent might be infringed more easily merely because a pro se patentee will be given more leeway and protection. Perhaps longtime patent lawyer Crouch could offer a professorially-objective opinion, however, on whether a typical lawyer handling Kim’s patent application and reissue would have been likely to avoid the limitation that scuttled her case. Also, would self-help material like David Pressman’s Patent It Yourself have guided a reasonably diligent and competent patent applicant through the maze successfully?
Yoon Ja Kim
November 7, 2006 @ 2:03 pm
November 7, 2006
To: http://blogs.law.harvard.edu/shlep/2006/09/21/no-special-rules-for-pro-se-patentees/
On September 20, 2006, the Patent Hawk website posted its opinion about enforcing Yoon Ja Kim’s patent, RE36,355, against ConAgra Foods, Inc. Kim subsequently e-mailed Patent Hawk her comments and Kim’s letter to Mr. Steven Nelson, CEO of American Association of Cereal Chemists. Patent Hawk then created a new blog, “Still Rising,” that included her comments and letter at http://www.patenthawk.com/blog/archives/2006/10/still_rising.html on October 29, 2006.
In summary, Kim’s bromate replacer comprising ascorbic acid and food acid performs essentially the same function as potassium bromate in the manufacture of yeast-leavened bread. Kim conducted baking tests with different food acids on dough development of gluten proteins during dough production, and crumb grain and texture in finished bread characteristics. Her investigative test results together with other published results revealed that unclaimed ingredients used in bread production do not materially affect the basic and novel properties of her invention. In fact, ConAgra obtained the desirable dough properties and specific loaf volumes of the marketable 7-Grain, Whole Grain, and Natural breads using her potassium bromate replacer I (i.e., ascorbic acid and tartaric acid or acetic acid of Example 1 in the ‘355 patent), but not xylanase enzyme. Thus, ConAgra’s Healthy Choice bread mixes are infringing on claims 5 and 10 of Kim’s patent.
Yoon Ja Kim
November 8, 2006 @ 12:30 pm
November 8, 2006
To: David Giacalone
Recapturing Kim’s potassium bromate replacer I (one) was briefly discussed under “Reissue of U.S. Patent No. 5,510,129 (the ‘129 Patent)”, when I e-mailed my comments and letter to Patent Hawk.
After discussing Dawn’s case with Charles Riggs, Jr., Kim found that the ‘129 patent has a defect because Kim’s core invention (i.e., potassium bromate replacer I) comprising ascorbic acid and food acid is not covered by claims 1-3. Thus, on May 14, 1996, Kim filed a reissue of the ‘129 patent, covering both potassium bromate replacers I and II. Reviewing “a list of supporting documents” submitted by Kim convinced the reissue examiner that Kim does not deliberately cancel claims 23-29 to obtain the ‘129 patent or not rewrite the written description and claims to avoid prior art. Most of all, the claims submitted to International Application published by PCT are exactly the same as U.S. PTO, allowing to recapture potassium bromate replacer I.