Inoperability, SAWS, and Superconductivity: Patents and LK-99
The story of LK-99 interacts with the patent world thanks to a 2019 patent application and illustrates a rarely-encountered aspect of the patent system
In the beginning, there was 35 U.S.C. § 101, and it said that patents are to be awarded to anyone who “invents or discovers any new and useful process.” Notice the conditions: that the process must be new and it must be useful. As a patent practitioner, typically one will encounter issues with that first requirement, which is further laid out in §§ 102-103, or novelty and nonobviousness; in fact, 103 rejections are the most common reason for an office action. Yet, that other requirement, utility, must still be met. This raises the question: what does it mean to be useful? And who decides?
The question has recently emerged with LK-99. Last summer, a Korean team claimed to have invented a superconductor using nearly-discarded knowledge with some vague connection to the USSR. It was catnip for the internet: there was interpersonal drama between the inventors, there was a grainy video, and the methodology was supposedly simple to reproduce. This week, it is back in the news with indications that multiple labs had potentially demonstrated superconductivity of a modified version of LK-99 and that some of the original Korean team will be presenting their newly updated material, PCPOSOS, at the American Physical Society.
But before all that, something interesting happened: some of the scientists applied for a patent. This patent is an opportunity to review inoperatiblity, a rare but important issue for patent applications.
Cutting through with SAWS
In 2023, USPTO anticipates that when the final tally comes in there will have been 694,600, and on average it takes about 32 months to receive a a patent. Within those applications is, as one may imagine, some junk. There are multiple ways a patent can be junk. For example, one may try to patent a new use for an old invention, which is not patentable (under normal circumstances). There are a number of other ways that the patent office tries to reject patents in a categorical manner, like subject matter eligibility, which has only expanded in a post Mayo/Alice world. One potential avenue available to USPTO is inoperability. That is, if the invention doesn’t work, in theory, USPTO should reject the application. In fact, in Lear v. Atkins (1969), the Supreme Court recognized that spurious patents must be able to be challenged to promote “full and free competition” in the marketplace of ideas, and the Federal Circuit acknowledged in In re Harwood (1968) that inoperability is a valid grounds for rejection.
In practice, that is not quite how it works. Patents are frequently issued that are fakes, fictions, mistakes, impossible, or even fraudulent. In one damning example, a Korean professor was found to have falsified some of his data; his company continued to prosecute patents based on that research and even had one issued. The reason is that courts have set the bar for inoperability almost impossibly high. In Brooktree Corp. v. Advanced Micro Devices (1992), “totally incapable of achieving a useful result.” In E.I. du Pont De Nemours and Co. v. Berkley and Co. (1968), the 8th Circuit made clear that even “a small degree of utility is sufficient,” even if some of the embodiments are ridiculous or the claimed results are only partially achieved. In other words, USPTO has to be basically certain the invention is completely useless.
There is another avenue, however. In In re Citron (1963), the Federal Circuit did allow a rejection when the result was “incredible in the light of the knowledge of the art.” This is more or less identical to the “speculative at best” standard recognized in In re Sichert (1977). So we have a new standard: incredibility. Although the UPSTO guidelines say that these should be used sparingly, when they have an opportunity to reject for incredible or speculative uses, they will take it. That said, they are quite rare. USPTO pegged these “outlandish” patents at 0.4% of applications per year. They are the types of things like time machines, which are so comically impossible that WIPO uses them as an example of patents without utility.
Some patents are a rare constellation of likely impossible, or at least very hard, yet also attracting a lot of interest. Time machines are of course an example, but others include perpetual motion machines. USPTO greatly tries to discourage these applications. For perpetual motion machines, 37 C.F.R. § 1.91 clarifies that they require applicants to jump through the extra, expensive hoop of providing a working model. For ridiculous categories, they used to have a program called SAWS that flagged outrageous patents for extra scrutiny (the program has since been renamed the “Enhanced Patent Quality Initiative”). SAWS provided guidelines to each tech unit as to which inventions required extra scrutiny. One of them was…room temperature superconductors.
So what does this mean for LK-99, PCOSOS, and its successors? Mostly that patent offices will view the claims with extreme skepticism. For most practitioners, they will likely not receive inventors with inoperatiblity issues. But it is worth noting that, particularly in biotech, there has been academic talk about what to do about experiments that don’t replicate (or are never even conducted) that form the basis for patent applications. Just as subject matter eligibility wasn’t a concern until it was, it only takes one major precedent for this to become something to think about. So superconductivity and SAWS may make for fun dinner party conversation, but be aware, because it may be coming to your practice.
Weekly Novelties
Notable news items
Masimo earned another win against Apple when a judge granted a stay while Apple’s patents undergo a challenge at PTAB (Law360)
In a true mistake made for the ages, the judge in Zest Labs v. Walmart, which resulted in a $115 million verdict against Walmart for patent infringement, was ordered to undergo a new trial. When Zest sent over its attorney fees for Walmart to cover, they discovered in the billing that Zest had notice that Walmart was going to file the patents in question before the application was in. This is an incredible self-own (Arkansas Business)
China’s foreign minister celebrated its 30th anniversary as a signatory to the PCT by emphasizing its commitment to IP protection (ECNS)
Latter-day litigation
DexCom, Inc. v. Abbott Diabetes Care, Inc., 2023-1795 (Fed. Cir. January 3, 2024): In the first precedential decision of the year, the Federal Circuit held that Abbot, which competes with DexCom in the continuous glucose monitoring market, rejected preliminary injunction during the course of Abbot’s IPR proceeding, in part because DexCom waited six months to file for injunctive relief, which made the “irreparable harm” factor of the eBay standard seem not credible
Hyper Ice Inc. v. Therabody, Inc., 1:24-cv-00004 (D.Del.): Hyper Ice, which produces the Hypervolt and is the main competitor of Theragun, filed a patent infringement suit
Thaler v. Comptroller-General of Patents, Designs and Trademarks (United Kingdom, Dec. 20, 2022): The Supreme Court of the United Kingdom unanimously held that an AI cannot be an inventor on a patent application. Expect more to come (and more for us to say on this topic at Nonobvious)
Gripping Gazette entries
US 2023/0415827 A1: Rivian, an electric automaker, filed a patent for a tire storage device that can also store additional items like a first aid kit
US 11,861,255 B1: Jony Ive designed a system for EyeSight, a Vision Pro feature, that was evidently more expressive than what Apple actually debuted. Take a look at the images, which are interesting and quite fun
US 11252883 B2: A patent for a novel, beautiful flower with unique orange and yellow color tones
Eventful expirations
US 6,668,379 B2: A baseball mitt with extra protection for ultra-fast balls
US 6,668,394 B2: A convertible couch bed, but for pets
US 6,668,448 B2: A method for aligning layers in certain types of electrical devices, like ultrasounds