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Inventor Sees Red, Evergreen Invention

Inventor Sees Red Trying to Evergreen His Invention

Green technology is hot. And where there’s heat, there are patents. This case is the latest chapter in one patent attorney’s nearly 20-year attempt to patent hybrid cars. Let’s see how that worked out for him…

In re Gardner, No. 2011–1310 (Fed. Cir. Nov. 14, 2011) (Chief Judge Rader and Judges Plager and Dyk) (nonprecedential) (per curiam)

This case looks like a simple opinion about obviousness, but there’s actually a bit of backstory. Conrad Gardner first received a patent on hybrid cars back in 1994. (He’s a patent attorney and a former examiner at the U.S. Patent & Trademark Office.) Since then, he’s filed one continuation after another to extend the life of his patents.

A continuation uses the same specification as the previous application, so it can’t have any new subject matter in it. The trick is that to get more patent life, the claims have to be different. If they’re the same claims, that’s double patenting and you’ll be required to give up any additional patent term. Trying to extend the life of your patent this way is generally known as “evergreening.”

Even though Gardner received his original patent in 1994, there wasn’t much of an industry for hybrid cars yet; he probably wouldn’t have made much licensing the patents back then. So he waited until 2008 and the spread of cars like the Toyota Prius. That’s when he sued Toyota for infringing one of his earlier patents on hybrid cars. Unfortunately for him, he lost.

He didn’t give up, though. This latest application has very broad claims, probably because Gardner had used up the other subject matter in his earlier patents. The independent claim had just two elements:

1. In combination in the method of operating a hybrid motor vehicle having an electric motor and an internal combustion engine:

a. causing a fast charge-discharge battery to power the electric motor in response to a logic control circuit, said logic control circuit responsive to vehicle speed and accelerator pedal information; and,

b. transferring power output into electric power conserved in a fast charge-discharge battery when the internal combustion engine continues to run.

It looks like Gardner won’t get to try again with this version. The PTO rejected this claim using a fast charge-discharge battery that was described in Gardner’s own application, combined with a patent for a hybrid car from 1987. Gardner tried to argue that the two wouldn’t work together, but the Federal Circuit wasn’t buying it.

Gardner also tried to argue that his invention was a pioneer invention, so it couldn’t be obvious. As support, Gardner argued that his original patents had been cited many times and there was a long-felt need in the industry for an extended range hybrid car. Gardner also submitted a letter from a professor describing Gardner’s original patents as “very intriguing.” The problem is that none of these things had anything to do with the current application. So, the court agreed with the PTO that Gardner wasn’t able to overcome the obviousness rejections.

This case shows the risks of trying to evergreen your patents while waiting for an industry to grow enough to sue. At some point, you run out of material to claim, and all that’s left are overly broad claims that won’t get through.

You can read the opinion on the Federal Circuit’s website.