Bike-Offs

Bike OffsWe’ve covered a number of patents this year that seem awfully obvious to those of us who are more than 10 years old. Next up, a thwarted effort to get a patent that covers brackets for mounting bicycles to vehicles…

The Federal Circuit said “no way.”

In re Stephen J. Gough, No. 2011-1343 (Fed. Cir. Dec. 9, 2011) (Judges Prost, Clevenger, and Reyna) (nonprecedential)

Mr. Gough appealed the Board of Patent Appeals and Interference’s (BPAI) final rejection of his patent application claiming bike wheel brackets, a method for attaching them to vehicles, and the parts on vehicles that attach mounted bike brackets and racks.

Interestingly, the patent application disclosure foretold the prior art issues the applicant would encounter in the Patent Office and the Federal Circuit:

Wheel mounting brackets are not new, nor are carts, wagons and wheelbarrows. . . . No prior wheel mounting bracket facilitated the simple detachable mounting of various common bicycle wheels of various different sizes on a wide variety of vehicle structures and frames!

The problem is that there is prior art that describes mounting brackets that can be adjusted for different vehicles and bikes.

The Patent and Trademark Office (PTO) examiner rejected some of the claims as anticipated by a Greenberg patent that discloses carts with brackets attached to the cart frame to permit the mounting and demounting of bike wheels to the cart.

Additionally, all of the claims were rejected as obvious over that patent alone, or in conjunction with a Burkholder article that covers a garden cart made of wood that includes bicycle wheels. This garden cart uses a pair of brackets as axle supports that are secured to the cart fender walls and cart side and attach the bicycle wheels to the cart. When the open-ended slot brackets in the Greenberg patent are swapped with the Burkholder brackets, the BPAI concluded that this combination covered all of Gough’s application claims and made them unpatentable.

As an aside, here’s a fun website that teaches you how to make carts with bicycle wheels. It’s an in vogue engineering project:

The Federal Circuit concluded that Gough’s patent application claims would have been obvious to a person of ordinary skill in the art. It also dismissed his argument that the BPAI failed to consider his evidence of secondary considerations of nonobviousness.

Here’s another interesting part of the opinion: the court agreed with the BPAI that minor design variations recited in the dependent claims—such as the use of large diameter bicycle wheels—would have been obvious. That is, the court didn’t require a specific reference that described all the additional limitations present in the dependent claims. It doesn’t explain that the BPAI found this as a matter of fact, so it seems the court considered it to be a legal question.

I find this position dangerous, because a court can essentially decide that particular aspects of a patent claim are known in an industry without receiving testimony or supporting documentation to that effect. It’s a dangerous way to strike down patent claims, and it is a process that can be abused. While this technology strikes me as very simple and well covered by the industry, the next technology and set of claims that a court applies this standard to may not be so cut and dry.

If you want to read the Gough opinion, here it is.

An Order “Stopping the Press”

The Federal Circuit’s been issuing a lot of orders lately that extend the deadlines for filings briefs, allow parties to switch or add counsel, and dismiss appeals after the parties settle. These types of orders aren’t unusual.

But recently, the court delayed execution of a provision of a permanent injunction that required BPPower, Inc. to recall infringing battery diagnostics products from users and offer cash refunds to them for the recalled products. I’d call this a creative injunction provision. The court also granted BPPower’s motion to stay a $1.2M judgment for attorneys fees, costs, and prejudgment interest, but only until it receives Midtronics response to the motions.

This case will be an interesting one to watch as it moves forward at the Federal Circuit—the court may extend the stays or it may decide to let the injunction and payment requirements go into effect while it hears BPPower’s appeal. (Practice tip: the court didn’t seem to appreciate BPPower’s motion for “immediate action,” so perhaps future motions for expedited consideration/review should use different language.)

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