Wednesday, June 15, 2011

Lodsys: Hints from the '078 File History

A patent's file history can provide interesting admissions from the applicant about the limitations of the claims. The admissions in the '078 file history could be problematic for Lodsys' current assertions.

During prosecution of the Abelow '078 patent now asserted by Lodsys, an Office Action issued containing a 102(e) rejection based on Kaplan, US 5,237,157. Briefly, the Kaplan '157 disclosed a jukebox that elicited feedback from the user about particular CDs loaded within.


Screen shot 2011 06 15 at 9 11 01 PMScreen shot 2011 06 15 at 9 10 15 PM

Figures from the Kaplan '157. Feedback is solicited about the CDs, not the jukebox. Abelow's attorney said that kept Kaplan from anticipating the Abelow '078 claims.


Inventor Dan Abelow's attorney said the Kaplan '157 did not anticipate Abelow's claims, meaning Kaplan did not disclose every element of Abelow's claims. His attorney made the following distinction:

"In addition, if the Examiner for the sake of argument considers music kiosks in Kaplan to be "units of a commodity," one still would not have arrived at the claimed invention since a kiosk user-interface in Kaplan allows a user to rate music CDs but is not configured to elicit from a user information about the user's perception of the kiosk."

Abelow '078 File History, Arguments of Attorney Michael V. Messinger, 9/29/2005 (emphasis added)


So, we know from Mr. Messinger's arguments on behalf of Mr. Abelow that a distinguishing feature of the '078 is that information about the "unit of a commodity" itself is elicited, not information about what is loaded within. Thus, the '078 is limited to things like, perhaps, a fax machine that elicits information from the user about the fax machine itself. Conveniently, the Abelow '078 patent has a picture of precisely that.

Screen shot 2011 05 31 at 11 03 07 PM

Figure 2 of the Abelow '078 patent asserted by Lodsys

In view of this limitation, for a system of iPads to meet the limitations of claim 1 of the '078, each iPad would need to be configured to elicit information from the user about the iPad itself, not the about an app or about something else. In the case of a ForSee survey, the survey computer would need to be eliciting information about the survey computer itself, not about a different web site or about sneakers.

This narrowed interpretation of the claims by the prosecuting attorney is no surprise. The attorney was explaining what the claims actually say.  Unfortunately, Lodsys now seems to be saying something quite different.


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