When Super Soaker Got Sued by a Totally Lame Squirt Gun

Transcript

This transcript was generated automatically and may contain errors — the audio is the record.

0:00:00 Clip: Thank you.

0:00:03 Jenessa: This one just because how did a squirt gun become turned into a 10 million dollar defamation lawsuit and the earliest cases that from 1881, and it does what a typical corset does, which is, you your waist in and yeah your boobs up I don't know but

0:00:21 Thomas: This is a corset what does it do sure insides out Hello and welcome to Opening Arguments. This is episode 1266. I'm Thomas Smith. That over there is real life attorney Jenessa. How are you doing?

0:00:43 Jenessa: Am doing good. I'm going to move the balloon I just discovered under my desk before it makes an audio nightmare for you every time I kick it.

0:00:53 Thomas: Balloon? You don't even have kids. What is happening? A birthday? A congratulations for recent news?

0:00:56 Jenessa: I like, okay. Like over a month ago, I had like the minorest of surgeries and Dan got me like flowers and balloons and, and then we never got rid of the balloons and they've just been slowly drifting around the house.

0:01:12 Thomas: What about the cat?

0:01:14 Jenessa: Oh, the cat hates it.

0:01:15 Thomas: Oh, the cats, my cats usually kill them or something.

0:01:19 Jenessa: He's just terrified of this ghost that's floating around the House.

0:01:24 Thomas: Well, good times. Yeah. What are we going going to be talking about today

0:01:28 Jenessa: Today I've got for you, um, some nice, cheerful, ridiculous behavior from people in patent cases. I, uh, went back to my patents textbook and pulled out some of my favorites and it's a good way to learn some concepts. Uh, they're in the textbook for a reason, but they're also silly, very silly. And I love that. Yes.

0:01:48 Thomas: We getting wackiness who doesn't love some wackiness I'm excited all right well I can't wait to get to it we might as well take our first break uh support the show get the goodies patreon.com/law we'll take a break and then we'll get some wackiness all right some some whimsy some some wackyness what do you want to to start.

0:02:12 Jenessa: Yeah. Start with the first important concept here is the idea of public use. That basically, if you want to patent something, it has to have been pretty much a secret until until you file the patent.

0:02:29 Thomas: Sense.

0:02:30 Jenessa: Is a one year grace period. So like, especially for the little guy, you're like, oh, look at my invention. Got about a year. Well, you've got exactly a year from the timestamp where we figure out this went into public use, public sale, public availability to get that filing in. But what you can't do is like, Oh, I'm going to invent it. I'm I'm going to publicize it, I'm going to start selling it, and then I'm gonna wait until a competitor shows up, and then I gonna patent it. Patent's giving you a 20 -year monopoly on this thing. You can't extend it by waiting and waiting and waiting and then filing.

0:03:09 Thomas: I see. It wasn't just that I forgot to do it because I have ADHD. Okay. So people are trying to actually gamify the system a little bit or game the system a littlebit.

0:03:18 Jenessa: This is preventing that. Yeah. Are for things that are new, not for something that is newly being being competed with. So the earliest cases that challenged what exactly does that mean is from 1881, and it involves a corset.

0:03:37 Thomas: Oh give me some contraptions. Oh okay. I was gonna say I was excited for some contractions. I love me some contractions. There's a great great era and I think there's a famous quote from it who knows if it's real where someone's like everything that can be invented has been invented it was like 1897 or something you know because like the contraption era and they're just like we've done everything contraption wise we can do there's no further contraptions but this is a corset what does it do sure smash your insides out

0:04:02 Jenessa: It does what a typical corset does, which is, you your waist in and yeah hold your boobs up I don't know but apparently according to this man he had been hearing from his wife and other women that um boning in it the steels would break so he said I am going to invent a better corset they call it a spring yes they call Call it a spring. I don't think it's a literal coiled spring. I think this must be 1800s lingo because it seems to be just a flexible rod. But there's something he did to these steels to make them more flexible, more elastic. And he's going to want to patent it. But there is a problem that many years he is going to uh them to this woman yeah

0:04:22 Thomas: There must be a better way called a spring hmm interesting to his wife or something and she just wore him too long

0:05:04 Jenessa: The witness and her friend were complaining of the breaking corset steals so he gave them to them to test out and then they have them in their corsets and you know the the cloth on the corset wears out so they pull them out and put those those fancy better steels into a new corset and they have uh talked about it they have shown it to other people and so the question becomes is this a public use because it's in a corset which is almost definitionally private it

0:05:38 Thomas: That's kind of private yeah especially back then my word really

0:05:44 Jenessa: Feels quite private in the 1800s of all things. Question for our decision is whether this testimony shows a public use within the meaning of the statute. And the majority opinion will ultimately say yes because the issue is not

0:06:00 Thomas: What was she doing with that there's gonna be a surprise witness that's like she was flashing or something she had an affair and I don't know something cool right

0:06:10 Jenessa: They're going to say listen yes it is not literally in the public eye these people were not you know walking around in just a corset but you weren't testing it at this point for years and years it had gone on with no new innovation It's not like you were like, oh, let me try a different material. Oh, that one broke on you. Let me try it like this. We're long past that stage. And you didn't ask them to keep it a secret. So it's not the same as, you know, if your internal employees know about something and you keep a trade secret on it, that's different. You for a very long time if you want to. We

0:06:48 Thomas: Because you can still be in r &d for a while oh man this is killer this guy got punished by being a good partner and a husband men's rights

0:07:02 Jenessa: Men's rights to invent a corset

0:07:04 Thomas: When are men gonna get yeah a fair shake that's what I want to know

0:07:09 Jenessa: Say if you're giving it to somebody and let you're saying you do whatever you want with it you're not putting any restrictions or secrecy uh inventor Senter slept on his rights for 11 years.

0:07:22 Thomas: Slept with his rights but I don't know.

0:07:26 Jenessa: I do appreciate, though, the dissent. I have a hard time disagreeing. There's just two sentences that nail it, really. A private use with consent, which could lead to no copy or reproduction of the machine, which taught the nature of the invention to no one but the party to whom such consent was given, which left the public at large as ignorant of this as it was before the author's discovery, was no abandonment to the public, and did not defeat his claim for a patent.

0:07:54 Thomas: I'm on that guy's side. Yeah

0:08:02 Jenessa: Spring inserted in a single pair of corsets and used by only one woman, covered by her outer clothing, and in a position always withheld from public observation, conservation is a public use of that piece of steel. I am at a loss to know the line between a private and a public Use.

0:08:22 Thomas: I mean that's a good argument what but you don't ultimately what do you think I mean ultimately it lost obviously but

0:08:29 Jenessa: Well, a little part of me I have, I discover my notes from years ago in the binding of the book, where I said that, nature of the invention was taught to no one. And I'm like, well nobody but the woman wearing it who, do we think the woman could not have stolen the invention on the basis of having looked at it in 1800s?

0:08:49 Thomas: But she didn't is it is it about whether someone could or whether someone did

0:08:51 Jenessa: To be fair, she did not. Should be about whether someone could.

0:08:57 Thomas: That's what the rule is supposed to be okay all

0:08:59 Jenessa: Yeah, yeah. Hypothetically, it's, we don't wait for somebody to actually start competing with your product. It's the idea that you have put it out there into the world and And somebody could start competing with your product, could take it.

0:09:13 Thomas: Sure I see that argument then So then in that sense, maybe the answer to this dissent, which seems very reasonable, is public is not necessarily about like, is it in public? It's more like whether you're like if you were testing it within the company, that would be a certain kind of thing. But if someone's wearing it, who's not really a part of the business venture, is that more the public private distinction they're going for?

0:09:36 Jenessa: Pretty much today the rule is generally going to be if it's internal, if you're still in R &D, if the only people who know about it are either part of the inventing or you're like, hey, you're here to test a product. You sign this nondisclosure agreement. That's fine. That's private. The second you are doing it in your front lawn for everybody to look at, you are selling it to people, you are talking about it on television, that's public. Is quite broad it were in your private home but like showing it to all kinds of people all the time and not you know telling them like oh this is a secret don't tell anybody it very quickly becomes public in the sense used used in these statutes according to the court. Maybe disagree with that interpretation, but that's the interpretation the court's been taking for quite some time now, since the 1800s.

0:10:38 Thomas: Right, so that's an interesting one. I like that. Any other, what's next in contraption law?

0:10:43 Jenessa: Have talked briefly about this before, but I wanted to get into it a bit deeper. A rule about inventors. Have to write down all of the inventors on the application. So if you and I invented something together, I could not just apply for the patent by myself. I have to put you on it as well, or it is invalid, the whole application um there was a question raised in 2022 uh an ai be listed as the inventor so this is thaler viva doll uh man stephen thaler wrote up the whole patent application but but did not list himself as the inventor. The only inventor listed for these two patents was DABIS, Device for the Autonomous Bootstrapping of Unified Science.

0:11:04 Thomas: Makes sense. Wow. Oh, yeah, yeah. Yeah, that's right. Sure.

0:11:39 Jenessa: Some sort of AI program is the inventor, and there were two patent applications. The first was a neural flame, and the second was a fractal container. I Yeah, I tried to find the actual applications themselves and I could not find them. It's yeah, it sounds like a load of nonsense to me. What that even mean? I'm not quite sure.

0:11:54 Thomas: Sounds like nothing.

0:12:13 Jenessa: Um the name of a patent is not going to be an advertising technique like a fancy brand name it's going to just really blandly describe what the thing is so what the hell a neural flame is I don't know and I should have some idea what you're talking about from the patent name uh probably nonsense to begin with, but we're going to get stopped right at step one because an inventor does, in fact, have to be a human. Judge will say not need to ponder metaphysical matters about

0:12:13 Thomas: Who knows? Right yeah good times

0:12:52 Jenessa: Whether, hypothetically, could an AI be an inventor? I, the judge, am not going to worry about that question because we have a very simple legal answer the right the law says inventors are individuals and the patent act has not defined an individual uh but we have in general at the supreme court said what an individual is and that is a human being there's also I did not even know this the dictionary act is a federal law that apparently defines a whole bunch of words and it gives us individual to be a person so could to be fair also be a corporation but it can't be well

0:13:40 Thomas: You snuck okay now I think ai should be back in all

0:13:44 Jenessa: So it can be a human person uh corporations are a bunch bunch of people. But a computer just on its

0:13:54 Thomas: So I need to get my ai agent to own a company first and then then I can get it on the list okay

0:13:55 Jenessa: Own? Well, to be fair, on patent applications, a company cannot be listed. That's already been established. You list all the humans. And then usually if you work at a big company, it's already in your employment contract that what will happen is you are obligated to assign your rights in the patent to the company afterward. But when they initially write the application, you know, if you worked for Google, Google didn't invent that, you did. And so the humans who invented it go on the patent application. And then afterwards, you Know, it provided it was falls within your employment contract, whatever it is that you did, you're going to give the patent rights to Google, but you're gonna have to be involved in that process. Says so uh no no your ai did not in fact invent I suspect if we had gone the next step and looked at those patents also you didn't invent anything anyway it sounds oh

0:14:57 Thomas: Also, they sucked. That's gotta be the funniest thing about patent laws. Just how many dumb patents there are.

0:15:03 Jenessa: Boy there's uh dan's favorite to show me is the patent for the um centrifugal baby delivery device have you seen that one.

0:15:11 Thomas: Yeah, I probably, and also it's very descriptive.

0:15:18 Jenessa: I probably don't need to say more. It's descriptive in and of itself. There's only something.

0:15:23 Thomas: I think it would work personally. I think people are giving it a bad rap. I Think, I think, I Think it would absolutely work.

0:15:26 Jenessa: I mean, all the methods we've tried, it couldn't get much more barbaric. So why not? So inventors must be humans, and that does not include your artificial intelligence program that you have made up for purposes of filing your patent. If he'd just written himself on there, well, you might have had to have a conversation about whether he invented it or he would have to know what on earth this thing does to begin with.

0:15:59 Thomas: Who would? I missed a second. I missed the word.

0:16:01 Jenessa: Man, Thaler, who created this AI program, which then allegedly invented things, he didn't put his own name name as an inventor. And perhaps if he had, he could have solved this problem, but he would have to personally know how it works. So if your AI program tells you, I've invented something, you can't file it with your name on it unless you can tell me, what is it?

0:16:11 Thomas: Well, yeah, yeah. I push enter on this AI prompt and then it does the thing. That's how it works.

0:16:33 Jenessa: Yeah, I think that's the problem a lot of people will run into if they try to go that route.

0:16:41 Jenessa: I'm going to send you a picture. You tell me what you think we may have a patent for here.

0:16:49 Thomas: I can't wait. Guess this dumb contraption. Let's see. Oh, we got a blaster. We got it. We got a Star Wars blaster we got. Boy, am I? Is it? Is it a real guess? OK, it's got a triggering system. The back looks like almost like a, um, like a syringe type thing. And then the front looks like, like it's vaguely gun -like or, or I'm just too American. I don't know. I'm not sure. Well, I don'T have scale. I DON'T know how big this thing is.

0:17:20 Thomas: That's, that's, you know, but it looks like the blaster, it looked, oh man, there's a specific, it looks like the noisy cricket from, no, something from men in black. I dunno, a squirt gun. I, I dunno.

0:17:19 Jenessa: All right, yeah. Oh, Thomas, you're nailing it. So, give you the claim one description from the patent. Toy comprising an elongated housing, having a chamber therein for a liquid, a pump, including a piston, having an exposed rod, and extending rearwardly of said toy, facilitating manual operation for building up an appreciable amount of pressure in said said chamber, for ejecting, yep, ejecting a stream of liquid therefrom, an appreciable distance substantially forwardly of said toy, and means for controlling the ejection.

0:18:02 Thomas: It's a squurt gun, baby. Maybe. All right. Are they required to be written this annoyingly or is that just they like to do that for fun?

0:18:22 Jenessa: My god, that is a fantastic question. Temptation is to say absolutely not. Why does it have to be written this way this is ridiculous I think it makes it harder rather than easier to I hadn't given you the diagram would you have any idea what I was talking about I don't think so maybe it's

0:18:40 Thomas: I might have, but just because, you know, maybe if I hadn't been prompted at all, I don't know. It's close.

0:18:48 Jenessa: Messy for sure and I just don't know who this is helping. The purpose of a patent, it is good to use the technical jargon when it comes to like a piece or some engineering. You know, if you're going to say I used this particular type of microchip, like you want to use that word making clear what exactly you did and did not invent. Is an important part of what's going to come up in this case, the idea of claim construction. A patent, you've got one or more claims. Technically, there's no real upper limit. When you pass a certain number of claims, they're going to charge you more money for filing this giant thing. So you're going to limit it. Of the claim is then going to have elements underneath it. So if I were to, let's say I made some office chair, I would say a chair chair comprising a back and a cushion to sit on and a means of adjusting the cushion and roller wheels on the bottom. And that's like my big claim for an office chair.

0:20:10 Thomas: I'm so sorry to tell you. I think they already have those. Jenessa, yeah, I

0:20:13 Jenessa: This is probably taken. I'm going to guess this one is not going to work.

0:20:16 Thomas: Hate to break it to you. Try again.

0:20:19 Jenessa: So an important part of patents is novelty it does have to be novel something new and it can't be obvious so even if technically you have a novel combination of things if it was obvious to put them together like that it's not going to work um something about the way I described this offer's chair was in fact novel and non -obvious. That's how you do it. And you could also have claims underneath that that are like, okay, let's say I said it had a very super comfy cushion. I could claim the cushion separately and say, here's what's so special about the cushion or here's, what's special about it. I don't know. I'm not sure. I mean, what's, so special that the wheels that makes them not squeak when you roll across the floor. And I could claim those separately and if I do it right that could mean if you took those same wheels that I special invented and stuck them on a table you would still infringe my chair patent because really it was a claim for an office chair with some wheels but also it was the claim for the wheels so want to go through and break out all these pieces right so on the one hand when when you write this up, you do want to say like, well, there's a piston and a rod and a this and a that, and you want to use that jargon. But like, did you really have to say ejecting a stream

0:21:44 Jenessa: Of liquid there from? Yeah.

0:21:44 Thomas: An appreciable distance. Yeah, it's

0:21:46 Jenessa: Like who's that for? You know, this case, this cases from 1993. Yes. Yes.

0:21:47 Thomas: Very weird. When was this one done? This is an actual case from this. Okay. Yeah.

0:21:58 Jenessa: Was really perfect that you immediately went to Blaster because this case is about the super soaker.

0:22:05 Thomas: We go. Legendary. Anything ever deserved a patent, it is that. Yeah everywhere

0:22:11 Jenessa: So you -changing for the childhoods of those of us who grew up in the 90s and early 2000s. These were everywhere.

0:22:19 Thomas: Where I was because I didn't get anything from my parents so I was gonna say life -changing in the sense that it gave me a different thing to want that I didn'T have and the commercials you know so that's also a commercial kid toy commercials were just freaking amazing back then gosh so good

0:22:35 Jenessa: My God, they were. Everything looked like, I must have this immediately. They were really good at that.

0:22:40 Thomas: It was insane so what's the case what's what's uh what's the controversy here hmm

0:22:47 Jenessa: Here's what happens. Defendants, Alan Amron and Talk To Me Products, Inc., TTMP throughout the rest of the case, they had a patent on the water gun I described to you. They're going to call it the 129 patent because it's got a big long number but we usually refer to the patent by the last three numbers so they have this patent they're uh of just sitting on for uh water gun that among other things it's Gotlike it light that goes like like with the water. So it almost produces like a laser effect and noises that go with it. It does sound cool, right? Because of that, there are 35 claims in that patent for

0:23:26 Thomas: Pretty cool I gotta get me one oh

0:23:37 Jenessa: All the bits and pieces.

0:23:37 Thomas: That's kind of a lot lot yeah

0:23:39 Jenessa: It is, for a water gun, it feels like a lot, right. 28 of the 35 are about the electrical components that make the light and the noise and that has absolutely nothing to do with the super soaker. So we're going to ignore those ones. That's going to leave us with seven of them. And Inc. is apparently the company that makes super soakers. Didn't know that. LaramIE is going to say, okay, claim number 28 in the patent relates to a puppet valve mechanism for controlling the flow of water. And we use a pinch trigger so that one's also irrelevant get rid of that we've got six left claims number one five ten eleven twelve and sixteen that's what we're really disputing they're

0:24:29 Thomas: Sorry I I might have missed it so so when super soaker came out that was it like this already existed on the books kind of thing ah okay had

0:24:37 Jenessa: Ttmp had this patent for their special water gun with all the lights and sounds and everything. That

0:24:44 Thomas: They been making it or is it just like they were still you know in the oh okay I like

0:24:47 Jenessa: Is not clear to me, to be honest. They obtained the patent by assignment from a guy named Gary Esposito, the inventor. They ever make them? I am not clear on that.

0:24:54 Thomas: Bought it or huh

0:25:03 Jenessa: Love this. The background of the invention in that patent, and ttmps says children of all ages especially boys through the years have exhibited a fascination for water lights and noise and the subject invention deals with these factors embodied in a toy simulating a pistol yeah

0:25:02 Thomas: Yeah and guns yeah Yeah, I think it was more of the guns that, for some reason, we're obsessed with.

0:25:29 Jenessa: You know it's interesting too because um this is like in the preamble part, it's not literally in the claim where you describe what the invention is. But every time you describe more and more specificity, you limit yourself a little bit. Soon as somebody's like, ours is the girly one for girls, you might avoid infringement that way if you're careful enough about it. When you make these claims, if you make it too Like the office chair I described. Obviously, I'm not going to get my patent because to whatever extent it's too like vague to patent in the first place, it's almost certainly not novel, obvious, already patented by somebody else. Like it's not going going to work, right? If you make it too specific, it's really easy for someone else to get around it.

0:26:21 Thomas: Right, to make like a similar thing, but not technically be infringing.

0:26:26 Jenessa: Exactly. So if I describe mine in extreme detail, including details that are not relevant, details that aren't the most important part, I'm going to accidentally limit myself. This is where you hire the patent attorney. The patent attorney is the person who is the the expert at like, important is it to you really that it includes a piston of that size? Does that actually affect how cool your invention is? No, take it out because somebody else will put in a piston that's a little bigger and try to claim they didn't infringe on your patent.

0:27:01 Thomas: And then you have piston envy.

0:27:04 Jenessa: Oh no. Oh, what have I done? Gets even more specific than that. So if you write, my is for a desk consisting of A, B, and C. That's considered a closed claim. So if you made something that was A ,B ,C, and D, I didn't claim that. You're not infringing. If I said a desk comprising ABC, yes, I am dead serious. That's an open claim. So if you did ABCD, you are infringing on my patent. I didn't limit myself to just ABC. Bc oh

0:27:30 Thomas: My god, are you serious? Do like that it at least makes you use the proper use of comprising or whatever. It's like it's always counterintuitive I think that's one that we're losing it's going to be one of those ones that everyone's decided is different and so the word changes which is fine because I always get this one wrong anyway but yeah it's not comprised of or whatever it's like yeah it'S that weird usage yeah

0:27:58 Jenessa: Yeah truly every time I talk about this I have to look it up I can't remember which one's which so is that specific the language you use a blank consisting of comprising whatever word you use right there affects whether this is closed or open whether somebody just adding a little extra nub on the thing can get away with that or not. So does really help to hire a patent attorney who knows all of these things and can help you.

0:28:34 Thomas: I think what you're saying is that lawyers have justified having jobs really they're like no you gotta say the exact magic word and you you don't know what what those magic words are we could change them tomorrow so you gotta hire one of us smart oh

0:28:39 Jenessa: Possibly that. It's only going to get worse because then what we've decided, okay, they wrote a couch consisting of this this this and this a cushion oh you know it's got arms whatever we have decided that that concept claim construction deciding what it is exactly that you did and didn't claim that's a legal question for the judge not a fact question forthe jury which I would say is a legal Because, of course, that's a fact question. Like, is.

0:29:25 Thomas: Okay well guess except once you get sort of like contracts I know that that's where you have a lot of the ones where you don't let the jury decide and I think it's because the law is so freaking arcane and specific that it's like you would probably get different rulings all over the place if it was juries and then you wouldn't you wouldn'T be able to rely on it I actually kind of think that maybe makes sense if the law is this weird you know no

0:29:47 Jenessa: Absolutely the logic of it. They have analogized it to contracts where judges have the specialized knowledge to know on planet would we expect a jury to actually treat consisting of and comprising as different. Like, that's not no, they're not going to do that. Having a judge interpret this first, it's turned into a whole thing, though, because then you have to have before the trial, you have what they call a Markman hearing where you're getting the judge to interpret all these words for you. And it's going to create a jury instruction about, well, okay, so we already say it means this and this and this and that. But we're going to have experts testify to explain to the judge, because a judge is not an expert in chemistry or water guns or car engineering.

0:30:41 Thomas: Is like ah jokes on you I am and he squirts him right away just like keep this all the time

0:30:47 Jenessa: A piece in here where the judge says, furthermore, having examined Super Soaker 20, all I can picture, just shooting at his clerks with the water gun.

0:30:53 Thomas: Took it out for a spin yeah yeah bailiff take that gun right there see

0:31:05 Jenessa: In this one, they made the actual product available to the judge to examine it. But some extent, the judge can do that, but they're not going to be able to be like, I am the judge and also the expert on like a technical expert, you know.

0:31:06 Thomas: If you can hit me yeah yeah

0:31:20 Jenessa: So we've got a battle of the experts and like a mini trial happening before the actual trial. And really, it's the most important part, because if you can limit with a jury instruction all of these things, really what's going to happen is you're going to eliminate so many possibilities that before trial, you're gonna say, let's now sit down for a settlement negotiation. Now that we have limited ourselves to three out of the 47 claims are in dispute or are even available for the jury to dispute about, and they can only dispute about it to this extent, now

0:31:20 Thomas: Yeah

0:32:00 Jenessa: Let's argue about how much money your thing is really worth to me. So people invest a ton of time and money and lawyers into these hearings in front of the judge. So it's like on a logical level, it makes total sense. I don't want the jury of people who are not legal experts and not experts in this technical thing trying to figure out what the object does and what my language in the patent meant. But instead we're just having these giant trials anyway and it's gotten like some people have argued it's become like unworkable but mean these companies have a ton of money so what do they care I guess yes okay so what happened to our super soaker indeed we have uh claims claims that are sitting here in this patent from TTMP. And they're saying that Laramie, the super soaker, infringes on our patent. And so, you know, really what they're going to say is you need to pay us. You need to license this patent right from us in order to keep selling your super soaker. And Laramie is going to do is move for partial summary judgment. They're going to get the judge to say, do some claim construction for us. We do not literally infringe on claim one, and we do not infringe by equivalence on claim 10.

0:32:45 Thomas: What happened with the super soaker which

0:33:33 Jenessa: So there's four claims we're not even been going to talk about. One is almost always the big one, the whole invention, the water gun, the desk, the car, whatever. Infringement means you claimed ABC and I made something that has ABC. You did the open claim construction, if I made ABCD, I'm also infringing on your patent. But if you claimed ABC and I did ABD, I do not literally infringe on your patent. That's why really important to think about not framing it too narrowly because I will very intentionally do ABD instead of ABC to avoid that. Don't put the color in there. It's not functionally relevant. Don'T let me paint it a different color and get away with this. So claim one the whole gun where they're going to say no the super soaker is just fine the judge says having examined the super soccer uh is different in a really important way one of the things in claim one that was a piece I read to you that giant description that's very of technical nonsensical language but one part of it was an elongated housing having a chamber therein for

0:33:33 Thomas: Were those ones

0:34:57 Jenessa: Liquid what

0:34:59 Thomas: The the textbook patented literally super soker tank the kind of the thing where actually the reservoir right yeah

0:35:02 Jenessa: Well so special about a super soaker the external water reservoir that's what made it special, the detachable external water reservoir. And the TTMP patent was a chamber therein for

0:35:11 Thomas: That's what I'm saying ah get wrecked losers get because this super soaker thing rules and it's the best thing about it. That's justice right there.

0:35:28 Jenessa: It really was.

0:35:30 Thomas: I love the idea of this. This should be a kid's movie. And the judge is just like, totally like this thing freaking rules. It's like, you did, yours sucks. It doesn't have this chamber thing. How do my fellow judges even become intimidated by the amount of water I have in my reservoir with yours? No way.

0:35:39 Jenessa: I hear the music swell as the judge picks it up and realizes is this does rule. This is different.

0:35:56 Thomas: Yeah, it's true. Yeah, totally does. Make a good product. I mean, so many of these cases must be really boring and stupid, but this one probably got to be a little bit of fun. I think they should have agreed to like, all right, also just for fun, loser gets firing squatted by the winner's guns. Like just, I mean why not, whatever, like just for Fun.

0:36:17 Jenessa: I mean, truly, arguably, what you are saying here is ours is meaningfully different. And like how fun it is, kids are picking ours over the other ones. That would tell you it is uniquely better than the other one, right?

0:36:31 Thomas: I don't even know the other one. That's why I was curious if anyone had made it. And if they did, hypothetically, I'm curious with a case like this where So I don't know, based on the dates and I'm just guessing like super zokers were established at this point. Right. It's not like they just came out.

0:36:50 Jenessa: This lawsuit suit is in 93 the decision is in 93 I

0:36:54 Thomas: OK. Yeah, I'm pretty sure they were out before that. But I could be wrong.

0:36:58 Jenessa: They gotta have a Wikipedia don't they yeah

0:37:00 Thomas: But let's say, OK, hypothetically, I'M just curious about something. Let's say they were out at what point does it matter and maybe never if it's like well okay sure maybe if you technically infringed on something but like mainly it's the friggin marketing the super soaker marketing that's really selling these units that's why they're flying off the shelves does that factor in at all yeah

0:37:21 Jenessa: Let's it was like just identical definitely not you can't say well we just marketed better the whole point is yeah and you stole my thing like you owe me for it

0:37:29 Thomas: That makes sense right it's not a defense to to be like yeah I stole your thing and sold it better than you did and made more money off of your product yeah good point good point yeah

0:37:46 Jenessa: A lot of small time inventors are really relying on the idea that they're going to invent something, they're going to get a patent, and they are almost certainly not going to go into their own manufacturing. They're going license it to an existing company. License or assign, sell the whole thing to an consisting company that, your average small -time inventor just does not have the capacity to take these things to market.

0:38:09 Thomas: They're working on that wood chopping machine with the the steam and the whatever and beauty and the beast that's what most of them are doing and then they're gonna take it to uh uh I mean it's unclear where he's gonna go when he gets unfortunately kidnapped by the beast um is very quickly forgotten by bell you You know, like that relationship starts with a kidnapping of her dad, you know, not talked about enough anyway, back on topic. Oh my God.

0:38:18 Jenessa: I forgot all about that. All about his little inventor's subplot until like you're awakening old

0:38:40 Thomas: How could you forget that?

0:38:40 Jenessa: Memories for me.

0:38:42 Thomas: We look, we don't have time for this diversion, but we'll talk. We'll talk offline. Okay. When you have a discussion about your memory for Beauty and the Beast, one of my favorite Disney Okay.

0:38:47 Jenessa: All right. We're back. Yes.

0:38:52 Thomas: So the judge is like, this thing's totally radical, dude, dudes, your thing sucks. Sucks so yeah and the elongated tank thing is a meaningfully you know that is a meaningfully important part of the product like it's pretty it is pretty distinctive that's right to convenience tactical

0:39:07 Jenessa: Detachable tank where you just pop that thing off, fill it up. And it's huge. It's a ton of water. The convenience of it When you claimed A, B, C, D, E, F, and I have this other thing that is not in there that is completely different. You said a chamber therein. Mine is a chamber on the back that pops. Exactly. Exactly. It's not a match. And not only is it not a match, it is just a wildly different not a match. It's not, like, superficially different. It's completely different. It's functionally different. It is useful. You know, for patent stuff, we don't just care about, like. Oh, well, it's a little different. It's all about function and inventiveness. Right. And, like this is a meaningful improvement.

0:39:15 Thomas: Reload they're out yeah right because I have to imagine it's like you can't just steal someone's product then slap a different color sticker on it you know that doesn't work either it's got to be there's got be reasons that it's different. Okay. So gathering or you've thrown a lot of super soaker stuff at me. Maybe I'm missing it. I'm gathered then. So literal infringement is going to be differentiated from, I'm guessing, a different type that's more derivative or something.

0:40:25 Jenessa: Yeah. So that's what you're getting at at the end there is infringement by equivalence. And essentially what you have to show is the accused product has the substantial equivalent of every limitation or element of a patent claim. So it's exactly what you are talking about that looked at what I have and you made minor tweaks so that it doesn't literally infringe. Like I technically, if I go check the boxes, you don't have the exact same thing, but I mean, you obviously have the same thing, right? You didn't do anything innovative or different. You just slapped a different sticker on it. You adjust. If you just change the size of the piston. And that doesn't actually mean anything. You just did it to avoid infringement only.

0:41:16 Thomas: Because you were jealous of the size of my piston. Yeah.

0:41:20 Jenessa: That is a way to kind of solve this problem that somebody accidentally got way too specific in a way that was like not important or meaningful. You want to try to avoid that because you don't want to have to rely on this less protective thing. You don't want to ask a judge to be like isn't it substantially equivalent though it's a harder case to make but you can still win it if you can say look they made this little tweak we all know what they're doing right and essentially that's what the judge is going to say um TTMP wrote their whole patent, claim 1 is the whole water gun, claim 10, when they're getting more specific about certain parts that they want to make sure they claim, they said, a tank in the barrel for a liquid. When

0:41:41 Thomas: Okay a little bit of a harder case. Sure.

0:42:12 Jenessa: Super soaker made their detachable tank once again it's not substantially equivalent exactly it is different it is meaningful

0:42:18 Thomas: Yeah, it ruled. Fooled. Yeah. Yeah, so that, oh wait, so are you saying that kind of also worked for that one? So that was both the reason why they didn't have literal infringement and this metaphorical infringement or whatever the other thing is, derivative of something?

0:42:34 Jenessa: Yeah so claim one the whole gun they miss one element of it and that is enough to not infringe on the whole thing when we get to claim 10 this really specific thing, a tank in the barrel for liquid. Have We a tank full of liquid, but it's not in the barrels. And you can say, all right, well, obviously that means it's not literal infringement, but TTMP will say it's infringement by equivalence. It's close enough, isn't it? And the judge says, no, it's a dramatic improvement over this. What What you have is a traditional design for a water gun. Like,

0:42:38 Thomas: Mm-huh, okay. Got yesterday's water gun, you fools. What am I gonna, what am I going to take this to my next water gun fight in the chambers it's not gonna work I'll be laughed out of the chambers out of my judge's chambers

0:43:25 Jenessa: Yeah. So this turns into the judge saying, for claim one, Super Soaker did not infringe. For claim 10, they did not infringe. As a matter of law, partial summary judgment dismissed. Dismissed you do have five claims left five eleven twelve and sixteen which they didn't move for here um which I can't quite put my finger on what was happening there I suspect it might be those were a closer question and either we weren't ready to make the emotion, or maybe we wanted to get to a jury first.

0:43:48 Thomas: Oh like move to try to have the judge do I could be totally imagining things but strategically maybe you want to have something in case you lose so that you still have bargaining power to be like all right we lost on that but we still have these other claims they're probably going to be great so So pay us money.

0:44:21 Jenessa: If they had to, if they had either, TTMP had won Claim 1, or even had to go, was able to go to trial on Claim 1, which is the entire concept of a water gun, basically. Super Soaker is screwed. They either have to license from them basically the whole patent or they have to stop selling super soakers, which they are not going to do.

0:44:45 Thomas: Over my dead freaking body.

0:44:49 Jenessa: Instead, when we limit ourselves to four out of 35 claims in that patent, which might have been more minor things, super soaker is going to be able to pull them to the negotiating table and say, hey, listen, I could just go to my water gun and change those things. Let's say it was something special about the trigger. I can go do a traditional trigger and maybe my gun won't be as good, but it'll still be good. Now, you would still owe past damages. You're not going to just get away with it. But going forward, I do things to get myself out of this in a way that I would not be able to if claim one was on the table right the whole gun so

0:45:33 Thomas: So I was taking it from the standpoint of the other company. So who decided that these claims weren't up for grabs? These other, these four remaining.

0:45:42 Jenessa: Of this decision in 93 those four remaining were still up for grabs

0:45:47 Thomas: Who made the decision to not put them before this radical judge? This totally awesome, bodacious judge.

0:45:52 Jenessa: Well so this is a motion for partial summary judgment by laramie super soaker so

0:46:00 Thomas: By Super Soaker. Oh, okay. Okay. So that's why, that's what I'm misunderstanding. Cause I was approaching it from the other way. Gotcha.

0:46:07 Jenessa: Has moved for partial summary judgment, meaning I want part of this case dismissed and they got it, but they left four on the table, which

0:46:17 Thomas: Maybe so. So then that's why you're saying like, maybe they, they felt that would be too risky or they're closer calls or something. Yeah, okay.

0:46:23 Jenessa: Possibly, these might have been the easiest, like we don't need to pay experts to prove this. Like, these are obvious on their face, and we can get this one through really quick and maybe then go to the negotiating table. There's a lot of possibilities. They get those ones. They're always you're going to be able to keep selling your thing and just owe the person money. Like, they very rarely will actually put out an injunction to stop people from selling stuff. Duff. Really hard to say, I don't want this company to be able to use my patent. You're more often than not going to be like almost forced into a licensing deal. But don't worry, you're going to get past damages and all the future licensing. You might get triple damages if they were doing something really bad in the process. Supposed to be just a business transaction and you shouldn't be, you know, too worried about it.

0:47:16 Thomas: Of like with the contract law where it's like, they're not, they usually, they are not trying to punish. They're usually trying to just make people whole and they're not going to like, it's probably better for capitalism if it's you're still selling stuff. And then I think what, what usually happens is people don't want to work for free. So they're usually like all right screw that never mind or if they can come up with a deal but okay so

0:47:33 Jenessa: And especially thinking about inventions and patents, like, the point is not to patent it and hoard it and make it so no one can use it. The point is to license it or assign it or sell it yourself, you

0:47:47 Thomas: Right super soaker company wins basically they won all those claims nice

0:47:52 Jenessa: Yeah, they won part of it, and what I end up finding is three years later later in 96, not only have they later gone on to win on everything, they're not infringing at all. They have also won a $10 million defamation lawsuit. So it's defamation, defamation and tortious interference with the contract. So what happened was during this whole process, uh Amaran, which I have yet to figure out this guy's relationship to the whole thing and t to me products inc ttmp they had been going to the competitors and saying hey they're infringing on our product we're gonna win this big lawsuit we're going to stop them from selling super soakers you should stop working with them like

0:48:11 Thomas: Wow holy crap this total victory here I was gonna say maybe like target or something is it like companies

0:48:51 Jenessa: Toys r us stop stocking the product like super cannot do that so jury finds for laramie on all counts and assessed 10 million dollars in compensatory damages It

0:48:51 Thomas: That were gonna stock the yeah something like that yeah no can do on that that's a no-no wow that's a lot of squirt guns

0:49:10 Jenessa: Is quite a lot of squirt guns that the defamation and infringing on trademark and telling people to cut your contract with them and threatening people. Ball and was upheld on an appeal at the federal circuit the I find interesting here is they lost in the district court and alan amrin appealed to the federal circuit but ttmp did not they chose not to join the action as a company I

0:49:44 Thomas: Oh interesting huh oh oh maybe so because he's like the one on the hook because he was maybe personally bad mouthing

0:49:51 Jenessa: It's possible it was jointly and severally against them both so hypothetically it could be enforced against in practice you'd probably mostly enforce against the company because I have to assume he doesn't have 10 million in his bank account maybe I'm wrong about that

0:50:06 Thomas: Well and it could be a thing so so they've been on the same side of the thing obviously and jointly and severally liable maybe the company was like look this is we're not going to spend more money don't throw good super soaker money after bad like we're we're We're we're not going to win this thing. But maybe that guy was like, oh, no, I'm going to I'm going to keep defending my name. But he still lost. OK, just that I'm just guessing. But it's at least do I have like the kind of the overall thing, right?

0:50:28 Jenessa: I you are correct that companies make financial decisions about like we're done here and this uh human individual was like I'm gonna fight this to the death and keep making it worse yeah this one just because how did a squirt gun turn into a 10 million dollar defamation lawsuit and I'm sure the patent lawsuit was even more expensive so times Good times in patent land.

0:50:45 Thomas: And he died. Yeah, times. Wow. That's fun. It's because like it's also such a delightful product. I'm sure you'll tell me eventually that, oh, no, the super soaker makers, they have, you know, child labor in whatever. Fine. OK, everything sucks under capitalism. I get it. But for now, let me enjoy this. It's a delightful product beloved by children everywhere. And they they successfully defended their intellectual property. I like it.

0:51:29 Jenessa: I have been told the inventor, Air Force and NASA engineer Lonnie Johnson, I've been told he does like Reddit AMAs and Reddit... He does Reddit a...

0:51:38 Thomas: Mms amasia he fights anyone on literal fights this guy rules he keeps getting better and better that's

0:51:54 Jenessa: God I've been told he does Reddit AMAs and is a very interesting and kind person um I can't verify any of this but

0:52:01 Thomas: That's awesome the good guy right or the or the okay not

0:52:06 Jenessa: He's he's the good guy the guy who invented the super soaker seems to be a chill dude. So I love this one.

0:52:08 Thomas: The yeah gotcha yeah nice uh that was super fun hey just in time for summer super soaker law everybody I want to go I want to buy one right now of

0:52:20 Jenessa: I wonder if they're still in the market. They

0:52:24 Thomas: Course They are, you're kidding me it's a legend I'm pretty sure my kids might have. I don't. I actually don't think I bought. I think Lydia might have bought them squirt guns iconic I'm looking it up iconic brand of pressurized water gun invented in 1989 by NASA engineer Lonnie Johnson. Well, that rules. I love this. Good times.

0:52:26 Jenessa: Gotta be, right? I all this litigation, you got to imagine they're getting all the value out of it humanly possible.

0:52:50 Thomas: Right. Well, that was super fun. Thanks, Jenessa. And good. I, in my opinion, I'm not looking up anything else. No one tell me the good guys won the good guy's one and the bad bad guy loss. That's just, I'm going la la la. I'm not listening.

0:53:02 Jenessa: Perfect

0:53:09 Clip: This has been Opening Arguments, produced by Thomas and Lydia Smith, with editing help from Peter Baird. The intro is by Thomas Smith. This outro is by Matt Cameron. Support the show at patreon .com slash law. Contact us through Patreon or openarguments at gmail .com. Make sure to follow our blue sky at OpenArgs. But most of all, please share the show. Thanks for listening.

0:53:42 Thomas: A lot of squirt guns

0:53:45 Jenessa: Your boobs up I don't know but