> Waymo, which originally said that two Lidar patents were infringed, on Friday in an amended complaint added a third patent. It also said that Uber infringed unpatented trade secrets, such as parameters and measurements for the light beam used in Lidar.
Are these trade secrets related to the patents? And if so, is Google risking having their patents invalidated by admitting they left out the best mode?
I'm not a lawyer, but I will note that when I've patented things in the past, I usually discover better things in the years after the original patent is filed. These better things might be a new "best mode", and I might patent them or keep them as a trade secret. My lawyer says that's fine.
Trade secrets and patents are roughly each others opposite. A patent is something you disclose to stake a claim in order to either license the tech or to use it in some other strategic way. A trade secret is something your company knows, does not disclose and guards as much as possible from becoming public knowledge (for instance, through NDA's with those employees that will be given access to that knowledge).
Examples of each:
- patent: Dyson's patent on their vacuum cleaner technology
- trade secret: The formulation of Coca Cola
So no, they are not related at all, and this does not risk Google having their patents invalidated.
Your example seems a little contrived. Obviously the formula for Coca Cola isn't the best mode for a vacuum cleaner.
My point was that if their trade secret is also the best mode for the patent, then seemingly that puts them at risk for violating the best mode requirement and having their patents revoked, depending on when they were filed.
It's not as if a patent will contain the full implementation details and of course corporations will use whatever tools we give them to protect their business interests and if that means leaving out a bunch of numbers from a patent application if the application will stand on it's own merits then you will see them do so.
Patent law is not always the most intuitive thing and it works in ways that tech people usually do not readily comprehend because to them many things are 'obvious' that are not obvious to a patent examiner or someone 'skilled in the art'.
And many times the software people are right (especially when it comes to software), and just as many times they are wrong or simply confused by the jargon surrounding patents.
The 'best mode' is not a requirement for a patent at all, you either have something patentable, or you do not. If it stands the test of time (other paying their license fees, you winning court cases against parties infringing) then it was a strong patent. If you come up with a better mode later on that's fine and need not be disclosed.
Whether or not a patent was the very best patent that you could have taken out is - as far as I know - not of any material impact to your chances of winning such cases.
But what I do know is this: in some places breaking NDA's and spreading trade secrets around is a very dumb thing to do so if Google can make that claim stick the other party has a serious extra problem.
The patents will be dealt with on their own, regardless of any 'modes'.
Ideally this should all be disclosed, including future improvements but it's been a long time since patents were used for their original intended purpose anyway, these days it is probably best to think of them as weaponized IP.
>It's not as if a patent will contain the full implementation details
Forgive me for my ignorance, but isn't this exactly what a patent is intended for? An inventor discloses how the invention works, and is given a monopoly in exchange. If the patent doesn't give the details of how something works, then why should society pay the inventor for it by granting a monopoly over it?
Have a look at your typical modern patent application (a granted one) and see if you can rebuild the apparatus based on what is disclosed.
Yes, in theory all the (critical) details are there but in practice this only works in simpler, for instance mostly mechanical patents.
Patents that are broader, for instance to patent some principle may give an illustration and enough info that if you're skilled in the art that you may re-implement it but you're definitely not going to get working schematics and blueprints to work off.
The situation is a bit better than with most scientific papers but not that much better.
As an existence proof: the infamous apple "rounded corners" patent[0] that was granted in 2012 is based entirely on design merits. There is nothing in the patent about details of manufacture from what I can tell. IANAL.
There is/was laws about not fully disclosing everything when filing a patent. The whole point of the system (originally at least) was to encourage sharing ideas by granting inventors limited exclusivity. That said, I think some of the "best mode" of operation provisions were stripped recently.
That's because they are so easy to get around anyway. Who says you even knew about that 'best mode' when you filed and without a compulsion to disclose later improvements the patent would stand.
That has a critical and hard to prove caveat: that at the time of the filing it was known what that 'best mode' was. And since parameters (such as the ones under discussion) are subject to change that could be very difficult, it involves the 'state of mind of the inventor at the time of filing'.
So, since 2012 this is now a requirement.
I've found two examples of this successfully used in litigation, they are referenced here:
It was a requirement before the Leahy-Smith America Invents Act, which is what is meant by "pre-AIA". You stated that "'best mode' is not a requirement for a patent at all" which was incorrect pre-AIA and remains incorrect in the AIA era. Disclosure of best mode remains a statutory requirement, even though it now lacks enforcement.
Your citation is of MPEP 2165, which is what I had referenced earlier. Thank you for sharing a direct link for others to review.
Broadly (and without asserting the accuracy or factual correctness of anything I say), I'm guessing it goes like:
The patent describes the method of using Lidar in the context of a self-driving car.
The trade secret details which frequency/frequencies of light are most effective, perhaps including which work better under what kinds of inclement conditions.
In 2011, Congress passed sweeping patent law legislation, called the America Invents Act (AIA). The AIA changed many aspects of U.S. patent law, including the consequences of failing to disclose in your patent application the “best mode” you are aware of for practicing the invention. Traditionally, if you failed to disclose the best mode in your patent application, then that could be grounds for invalidating the resulting patent. The AIA changed this; no longer can patents be invalidated for failing to include the best mode. The AIA, however, did not change the basic legal requirement that inventors and patent applicants must disclose the best mode in their patent applications. In effect, the AIA left untouched the best mode requirement, but eliminated the punishment, or at least the main punishment, for failing to comply with the requirement.
Would this mean that, while you will not get punished for not disclosing the best mode, you can not call it a trade secret either (since you were expected to disclose it in the first place)?
True story, I've shared here before: many years ago, a co-worker had to run home for some reason in the middle of the afternoon. On his way home, a woman jaywalked in front of his Escalade on a street with a posted 40mph limit. (He wasn't driving that fast, because he was still accelerating away from the stop light.) He hit her, watched her head bounce off the hood of his vehicle, and her go flying to land in a heap a few dozen feet in front of him.
He called 911, and, because there was a fire station like half a block away, the medics were on scene immediately, and the police shortly after. The policewoman who took his statement thanked him when she was done with that, and said, "Now, if you'll excuse me, sir, I'm going to go write her a ticket."
He responded, "Do you have to? She's already had a bad enough day."
She stopped, looked him in the eye for an uncomfortably long moment, and said, "Sir, you want me to write her this ticket..."
Are these trade secrets related to the patents? And if so, is Google risking having their patents invalidated by admitting they left out the best mode?