Sunday, September 25, 2005

Bryant still winning patent fight against Caterpillar

On September 22, 2005, a U.S. Patent and Trademark Office examiner declared for the second time that most of the claims for which Caterpillar was awarded a patent last year were not patentable because they were anticipated or obvious over WO 98/02653 to Clyde Bryant of Alpharetta, Georgia, now 78.

At stake in the patent fight are the rights to an idea that Caterpillar has used to sell more than 200,000 of its award-winning "ACERT" diesel engines.

Bryant's challenge, in the form of a request for a reexamination of the Caterpillar patent, resulted in a declaration by examiner Thomas Moulis in December 2004 (see earlier post on IPBiz) that the bulk of Caterpillar's claims had already been described by Bryant's patent and others.

In the next phase of the Paten Office's reexamination procedure, Caterpillar argued that its patent should not be withdrawn and submitted statements from experts who said Bryant's invention too vague to have merited a patent. Bryant's lawyers then responded to the Caterpillar arguments and brought in statements from their own experts.

Caterpillar now has 30 days to decide whether to contest Moulis' Sept. 22 Office Action, which was virtually identical to the December finding. It can also appeal to the Court of Appeals for the Federal Circuit.

In a bit of sublime irony, the Intellectual Property Owners [IPO] Association named the two Caterpillar engineers national "inventors of the year" last year for work relating to ACERT. And, the IPO recently presented results of a survey suggesting that there was a perceived lack of quality in US patents, as discussed in this blog, ip-updates, and elsewhere. Nevertheless, the IPO presented an award to inventors for something that had, in part, already been invented. Perhaps there is a lack of quality in the IPO award presentation process? In any event, the episode illustrates some of the subjective quality in the analysis of technology and the difficulty of the task of the USPTO in granting, or not granting, patents. As another point, Jan-Hendrik Schon had been the recipient of numerous scientific awards, even though the underlying work was demonstrated to be fraudulent. For example, Technology Review gave Dr. Schon a TR100/2002 award, reported within the June 2002 issue, even as the fraud was becoming known. [See for example "Walking on Sunshine?", Intellectual Property Today, November 2002.] Technology Review is an MIT enterprise. Although the PTO does make some mistakes in the patent granting process, it is clear that other bodies are also making significant errors in technology assessment. [Caterpillar engineers Jim Weber and Scott Leman were presented the 2004 Inventors of the Year Award from the Intellectual Property Owners Association in recognition of the ACERT engine.]

One difference is that the PTO corrects its mistakes, whereas some of the other bodies ignore previously made mistakes. In the realm of the patent grant rate discussion (Quillen Webster Clarke), errors about "what Clarke assumed" and the correlative consequences of the errors have not been corrected by the relevant law professors and law review. Thus, false arguments are made, not corrected, and bodies such as the FTC and the NAS rely on the false arguments to recommend policy changes. The PTO, unlike law reviews, has and uses a policy to correct errors.

These and related issues are explored in "Things are not always what they seem," Intellectual Property Today, October 2005 issue (for AIPLA meeting).

**Information on the re-examination**

--> Pertaining to US 6,651,618
Action closing prosecution (non-final) 09-22-2005
Claims 1-17 are rejected.
Specifically, claims 1-5, 8, 10, 12-13 and 16-17 are anticipated under 102(b) by Bryant, WO 98/02653. Other claims obvious over Bryant in view of Obert or Khair.
Of the anticipation rejection, the examiner adopted the argument of the third party requestor, except for claim 3.

To date, the '618 patent has been cited by six US patents. All six citing patents are assigned to Caterpillar. No entity other than Caterpillar has cited the '618 patent.

--> Pertaining to US 6,688,280
Action closing prosecution (non-final) 09-22-2005
Claims 1-16 and 21-33 are rejected.
Claims 1-6, 10, and 21-33 are anticipated by Bryant, WO 98/02653.

To date, the '280 has been cited within four (4) US patents, each assigned to Caterpillar. No entity other than Caterpillar has cited the '280 patent.

**UPDATE. from Today's Trucking Online. 3 October 2005 -->

Cat first introduced ACERT as its solution in meeting an Environmental Protection Agency mandate to significantly reduce NOx and PM emissions from diesel engines in 2002. The move to go to ACERT was considered controversial at the time since all other major engine manufacturers elected to meet the standard with exhaust gas recirculation (EGR).

In order to meet even tougher 2007 standards, Cat stayed with ACERT but also incorporated a form of EGR, where exhaust gas is drawn from downstream of the diesel particulate filter and returned to the engine upstream of the twin turbos and aftercooler.


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