K2 Wins Summary Judgment in Wide Short Ski Case

Some of you may remember an earlier post of mine about this case. Individual inventor, Paul Nelson, sued K2 on claims involving U.S. Patent No. 5,603,522 covering a "Wide Short Ski." The specification was drawn to a shaped ski having a range of dimensions in length, side-cut radius, shovel width, and tail width. The claims at issue (added in a CIP) were for much narrower ranges than what was disclosed in the parent application's specification. K2 moved for partial summary judgment, arguing that these claims (the ones added in a CIP) were not supported by the parent application, an argument setting up a motion for summary judgment of invalidity under 35 USC Section 102, because the claims at issue were not entitled to priority filing for failure to satisfy the written description requirement.

Well, inventor Nelson did not go quietly after losing partial summary judgment on the written description issue, claiming that any sales made before his newly adjusted critical date were "experimental." After hearing oral argument on Monday, Judge Lasnik issued an order rejecting contentions of experimentation and directing the clerk to enter judgment in favor of K2.

From Judge Lasnik's order:

Plaintiff and his wife assert, without even attempting to address each sale individually, that all of the transactions during this period were part of a "testing and evaluation" program. Decl. of Paul Nelson at ¶ 5; Decl. of Coni Nelson at ¶ 4. The contemporaneous evidence does not support these statements, and "the expression by an inventor of his subjective intent to experiment, particularly after institution of litigation, is generally of minimal value." Lough, 86 F.3d at 1122. A series of newspaper articles written between December 1992 and February 1993 shows that plaintiff was actively marketing the MAX F/X for consumer use during the 1992-93 ski season.[footnote omitted] According to the articles, plaintiff received orders from eight Western Washington stores, was taking orders from individual skiers, and was working toward manufacturing twenty pairs of skis per week. In the December 30, 1992, article, readers were invited to order their own pair of MAX F/X skis by calling the phone number provided. There is no indication that plaintiff was seeking "testers" for the skis or was conducting experiments before making his invention available to the public. Rather, his statements to the reporters and the existence of the articles themselves show a concerted effort to bring the invention to market immediately. Ms. Nelson’s sales notes support this conclusion. They show that plaintiff was trying to convince a number of ski shops around the country to carry the MAX F/X. If an outright sale was not in the offing, plaintiff would agree to a consignment, demonstration, or loan of some sort to give people a chance to try the wide short ski. None of the notes suggests that plaintiff intended to retain control of the skis after sale or that the shops or end-users would be required to do any tests or experiments with the skis.

Sales of the "no strings attached" variety are almost never "experimental." I've written about these types of sales and how they can turn into ruinous events for companies trying to raise capital to fund ongoing product development. If you are interested, follow this link to my article first published in IP Law and Business last year titled "Holding Back the Clock: Confusion about the On-Sale bar Continues to Cost Companies the Right to Patent their Inventions."

K2 Wins Partial Summary Judgment in Wide Short Ski Case

Inventor Paul Nelson sued K2 for infringement of his US Patent No. 5,603,522 covering a "Wide Short Ski." The specification was drawn to a shaped ski having a range of dimensions in length, side-cut radius, shovel width, and tail width. The claims at issue (added in a CIP) were for much narrower ranges than what was disclosed in the parent application's specification. K2 moved for partial summary judgment, arguing that these claims (the ones added in a CIP) were not supported by the parent application, an argument setting up a motion for summary judgment of invalidity under 35 USC Section 102, because the claims at issue were not entitled to priority filing for failure to satisfy the written description requirement.

From Judge Lasnik's order:

The narrowing of the length and width ranges is significant: more than half of the combinations described in the parent application are excluded from the claimed invention. It is not clear how one skilled in the art of ski design could identify the measurements that were of special interest to the inventor. The 1992 application does not disclose the precise ranges later claimed, nor does it contain descriptive terms that would lead to the claimed ranges.

In a footnote, the Order states that the written description bar has potentially been raised "to a height that may be insurmountable for many inventors." In support of this gloomy outlook for the future, Judge Lasnik cites Judge Learned Hand's decision in Eng'g Dev. Labs v. Radio Corp. of Am., 153 F.2d 523, 526-27 (2nd Cir. 1946), where the distinguished jurist said that meeting the written description requirement was "an impossible task" encouraging "that surfeit of verbiage [in patent claims] which has for long been the curse of patent practice and has done much to discredit it."

Let's see what happens next. Perhaps an appeal? Settlement? My personal view is that the viability of this decision on appeal depends greatly on the make up of the reviewing panel at the CAFC. Decisions on the written description requirement from the CAFC have been rightly criticized as "opaque to the point of obscuring other areas of . . . [patent] law."


K2%20Nelson%20Order%20Granting%20MPSJ.pdf

Claims Construction Order in Wide, Short Ski Case against K2

Judge Lasnik recently construed claims for US Patent No. 5,603,522 for a "Wide, Short Ski." The case is one for infringement brought by inventor Paul Nelson against K2 Corporation. The parties disputed six claim terms from independent claim 1. Not surprisingly, the patent here uses words of approximation, like "about" and "approximately" to describe some numerical measurement ranges. Using the prosecution history as support, Judge Lasnik ruled that these words will be constituted to provide a +/- 3% range from the claimed measurements. This will set the boundary for a determination of literal infringement.

One interesting snippet from this Order is that Judge Lasnik all but ignored evidence from a patent attorney as to what these words ought to mean, saying "Absent evidence that [the patent attorney] is one skilled in the art of designing and/or manufacturing skis, his opinion regarding the proper interpretation of the claim terms is not useful to the Court." (citing Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed. Cir. 2005) (quoting Phillips, 415 F.3d at 1318).


NelsonvK2claimsconstruction.pdf