Can Automated Patent Searching take the heat out of a laser patent dispute against Levi and Gap?

As reported in the World Intellectual Property Review, fashion icons Levi Strauss and Gap have been accussed in a Texan court of infringing a patent owned by Icon Laser Solutions, a limited liability company in Texas. The patent itself is US5567207, filed in 1994 for a Method for marking and fading textiles with lasers, and claiming in its first claim:

1. A method for color fading, dyed textile materials with a laser, comprising the steps of:
– placing under a laser beam a dyed textile material; and
– scanning the laser beam generated by the laser with a selected set of parameters to fade the dye of the textile material to replicate a uniformly faded textile or a stone washed, acid washed or acid ball washed textile.

But is this patent valid? This of course will depend on the prior art for this patent. The patent examiner for this patent cited seven prior art documents, but are there more relevant patents? Interestingly, the applicant discussed six of these patents in the specification, but concluded: 

Unlike the above patents, the present invention uses an environmentally safe method for marking, fading and treating textile fabrics with a laser without the need for conventional washing methods, wet dyes, or excessive amounts of water.

Finding relevant patents is an ideal question for our newly developed service, Automated Patent Searching. This process uses the broader citation network to search for patents not previously cited, but which could be relevant to the patent in question – and which may be missed by conventional patent searching.

The resulting report can be downloaded here. Besides ranking the seven known backward citationsby similarity, we also rank 50 uncited prior art documents. A quick review of the title suggested that US4589884 Process for heat treating textile substrates to give colored pattern could be relevant. This was filed in 1985 by Milliken Research Corporation and published in 1986, some 8 years before the Icon patent.

Among other disclosures, this document discloses:

This invention relates to a process for dyeing textile substrates in a pattern configuration. In one embodiment thereof, this invention relates to a process for simultaneously dyeing and thermally modifying components of a textile substrate in a pattern configuration

It should be understood that any suitable method for applying sufficient heat to the substrate to fix the desired quantity of dye as well as generate thermally induced modifications to the substrate may be used in connection with this invention. For example, a laser of the appropriate type may be modulated according to pattern information and scanned over the surface of the substrate to induce fixation of the dye and, optionally, fiber shrinkage, fusing, etc., in a desired pattern configuration

Does this disclose the Icon patent? There are arguments for and against – with the latter including that the Milliken patent uses the laser to fix the dye, as opposed to fading a fixed dye. Similarly the Icon patent claims the use of the laser to replicate a uniformly faded textile or a stone washed, acid washed or acid ball washed textile – but some might say that this fake fading is simply a type of ‘pattern’.

This raises the question of what patents were cited against the Icon patent. The Automated Search Report ranks each of the seven backward citation patents in order of suggested similarity, and five of these are listed in the table below

So unlike some previous case studies, we have not been able to find prior art that is directly relevant to the novelty of the patent being reviewed. Regardless, this case study highlights another benefit of this type of analysis, namely that it can be used to understand the general patent landscape close to the patent of interest. And indeed this is the single biggest reason why clients have requested Automated Search Reports, so that they can quickly understand this landscape.

And in many cases, understanding the landscape could also help to frame arguments about whether a patented invention is inventive (or not) over the prior art – which will be helped in this case as the Milliken patent had not been previously cited, and so could be potentially used as the basis for a rexamination for the Icon patent.

Want to research the similarity landscape of your own patent?

Just $500 and about one working day will buy you any of the three types of reports: 

• Prior Art Finder search report (Automated search for earlier patents)
• Licensee Finder (Automated search for later patents)
• Similar patent search (Automated search for both earlier and later patents) 

Select any of the above for a patent of your choosing. Please contact us to discuss your requirement further

Read more