Netcraft Corp v. eBay and PayPal (Fed. Cir. 2008)
Netcraft sued eBay and PayPal for infringement of its patents that cover an “internet billing method.” During claim construction, the Western District of Wisconsin found that the limitation of “providing a communications link through equipment of the third party” requires that an infringer “provid[e] customers with internet access.” Of course, eBay and PayPal do not provide internet access.
On appeal, the Federal Circuit affirmed the claim construction and summary judgment of non-infringement.
Three reasons why the claim was narrowly construed:
- In many cases, claim construction issues are won or lost in the process of defining which “term” is going to be construed. The patentee argued that the term “communications link” was broadly written and amenable to broad construction. The defendants argued that the element in question was actually the entire process of “providing a communications link through the equipment of the third party.” That entire process is more amenable to a narrow interpretation.”
- The patentee did not help its cause by adding the “communications link” to the claims during prosecution. The term is not used anywhere in the specification – consequently, the patentee had little ammunition for arguing for a broad interpretation.
- The specification declares several “objects of the present invention,” including providing internet access. Also, the abstract includes a statement regarding an “agreement between an Internet access provider and a customer.” And, there is no specific language indicating that these statements are directed at “alternative embodiments.” [Note here, a distinction between alternative embodiments and optional functions.]
Affirmed.
John Roethel said:
“Another Finally: don’t use terms in the claims that are not in the spec. Remember that the claims set out what the APPLICANT regards as his invention, not what his attorney regards as his invention.”
I do not agree 100% with “don’t use terms in the claims that are not in the spec.” If a claim recites “a RAM chip”, and that same language is used in the spec, then there is a clear path indicating that RAM chip is, well, a RAM chip. On the other hand, if the claim recites “a memory part”, and such language is not used in the spec, then there is room to argue a broader meaning than a RAM chip. Philips v AWH can fairly be read to suggest that when the inventor uses the same language the inventor intends the claims be closely aligned/interpreted with the examples in the spec, versus when the inventor uses different language the inventor intends the claims not be tied to the examples in the spec. In short, if you want to prevent the court from reading limitations from spec into the claim, it probably behooves the draftsperson to use different language in the claims and spec.
I would go so far as to say that the PTO, in their infinite benevolence, acknowledges that if there is an application then there is an invention and even if there isn’t an application yet there may be an invention…
Lionel — so essentially you agree with me?
Curious,
I do not see the use of the word”invention” or a discussion of prior art ever being required and I would counsel against using either anywhere. But provisionals do have to have a clear statement of what the invention is to survive 112. Even when I have been given an immediate deadline and I am basically submitting a research paper with any necessary drawings, I always included a spectrum of claims from the narrowest to the broadest which I believed possible to patent. If I had a week, I would draft a whole written description w/drawings.
the “of which they are a part” is a one way street – no?
ducksworth,
Important to understand that claims cannot be read in vacuum but always in light of spec of which they are a part. Read AWH v. Phillips.
AllSeeingStye: “if there are claims and an issued patent, there is an invention. No judge can change that.”
Normally I’d agree with you, but Gentry Gallery had claims didn’t it now? The claims were interpreted absurdly narrow because the court zeroed in on something besides the claims (surprise). You’re deluding yourself if you think a court couldn’t do the same in the opposite manner, i.e., fail to zero in on anything (or zero in on the prior art) while still ignoring the claims.
“Right, until some judge somewhere has trouble understanding what a specification says and rules that since the patentee didn’t mention an “invention” then there isn’t one.”
Mooney, er, I mean “duckworth,” face it, if there are claims and an issued patent, there is an invention. No judge can change that.
How ignorant are you?
“Kayton isn’t the be all and end all of patent prosecution. ”
He knows a heckuva a lot more than you Mooney, er, I mean “duckworth.”
Its always easy to spot someone trying to push a lame deconstructionist agenda when they start disparaging people in the field who actually know what they’re doing.
Leopold: “For what it’s worth, claim narrowing is not always a bad thing.”s
[insert crickets chirping]
“…Storage Technology Corp. v Cisco Systems Inc., 66 USPQ 2d 1545 at 1553 (Fed. Cir. 2003) [where the Court expressly relied on the fact that a particular term was used in a subtitled “Summary of the Invention” specification paragraph to render that term (which was only in the claim preamble) an express claim limitation].”
And if the section had been titled simply “Summary,” then the term (which was in the claim) would not have been an express claim limitation? Hmmm…
For what it’s worth, claim narrowing is not always a bad thing. Anybody tracking cases in which a claim is saved from invalidity because it was clear that “the invention” was different than the prior art?
Re the request for CAFC claim-narrowing decisions based at least in part on the patent using the word “invention” in the specification, see, e.g., C. R.Bard Inc. v. U.S. Surgical Corp; No. 04-1135, (Fed. Cir. 2004); Modine Mfg. Co. v. United States Int’l Trade Commission, 75 F.3d 1545, 1551(Fed. Cir. 1996); Storage Technology Corp. v Cisco Systems Inc., 66 USPQ 2d 1545 at 1553 (Fed. Cir. 2003) [where the Court expressly relied on the fact that a particular term was used in a subtitled “Summary of the Invention” specification paragraph to render that term (which was only in the claim preamble) an express claim limitation]. Also, SciMed Life Systems Inc. v. Advanced Cardiovascular Systems, Inc. (Fed. Cir. 11/14/01) and Gaus v. Conair Corp. 70 USPQ2d 1380 at 1384 (Fed. Cir. 2004)
Re: “My guess is that the federal circuit will decide that provisional applications which have no claims, which don’t use the word “invention”, which do not have abstracts or summaries or discuss the prior art, will not have [112] ‘written description’ support for regular applications.”
Interestingly, our EPO/German associates warned us of that right from get-go of U.S. provisional applications.
—-
P.S. Another reason not to use “objects of the invention” is that it can lose an interference, by making it harder to prove a complete actual reduction to practice.
+1 to what duckworth and step_back said regarding the use of “invention”.
“Finally, I have again reverted to writing the claims first. I then copy and paste the claim language into the spec with appropriate massaging so as to make it readable in the context of a spec. This gives me the antecedent basis for the claim language.”
This is brilliant.
Jr.Pat.Esq.
I can think of three right off the top of my head, but there are probably many more if you research it:
1) Gentry Gallery (often considered the seminal case for this proposition)
2) SciMed
3) Tronzo v. Biomet
It goes a bit too far to say that the word “invention” should never be used in the spec. Rather, you don’t want to say what “the invention” is or is not. When you say “an embodiment in accordance with the invention” you are not necessarily narrowing the definition of “the invention” itself. However, if you were to say in one way or another that an “essential” objective of the invention is X, Y and Z, that’s a problem.
‘There’s an incredibly easy way to avoid any such problems: never, ever, EVER use the term “invention” in your patent application. EVER. There is never a reason for it.’
Right, until some judge somewhere has trouble understanding what a specification says and rules that since the patentee didn’t mention an “invention” then there isn’t one.
Kayton isn’t the be all and end all of patent prosecution. You’ve got to use your own noodle. It’s perfectly fine to use the word “invention” to aid understanding and even possible to use it in an entirely non-limiting way.
Banishing the word completely is knee-jerk and may come back to haunt you.
jrpatentesq –
“The invention” is dangerous, at least during prosecution. Just one case that I happen to have handy:
Pods, Inc. v. Porta Stor, Inc.
link to fedcir.gov
Pods, in some part, got stuck with a limiting definition of “carrier frame” to be rectangular because, during prosecution they said, “Applicants’ invention is . . . a singular rectangular-shaped frame.”
There were other reasons for the Court to come to this limiting term definition. But, as my mom used to say, “don’t look for trouble.” As a prosecutor, it’s just prudent to avoid stating “the invention.”
PAL
The magic word INVENTION.
“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”
I was taught in the 70’s that each claim is a separate INVENTION. Thirty years later, I have no reason to question that teaching. However, over the years I have quit using “objects”, “features” and “advantages”; I have quit using the word “invention” in the spec.
In my humble opinion, there is “disclosure” (which includes the original claims) and then there are “claims” with each claim being an invention.
Finally, I have again reverted to writing the claims first. I then copy and paste the claim language into the spec with appropriate massaging so as to make it readable in the context of a spec. This gives me the antecedent basis for the claim language (which is particularly helpful for the Appeal Brief requirement of pointing out in the spec where each claim element appears).
Another Finally: don’t use terms in the claims that are not in the spec. Remember that the claims set out what the APPLICANT regards as his invention, not what his attorney regards as his invention.
David Stein wrote:
“There’s an incredibly easy way to avoid any such problems: never, ever, EVER use the term “invention” in your patent application. EVER. There is never a reason for it.”
I just had a conversation with a colleague yesterday about the use of the word “invention” in the specification of a patent application. Although both of us knew that the term should be avoided, neither could point to specific case law to support the practice.
Can anyone point to a case or two? Thanks
Because the “equipment of the third party” adds another narrowing feature to the claim. Without the details of the file history, glib speculation is useless.
Its like arguing with your girlfriend when neither of you can remember exactly what happened.
Like I said, Mooney must be an absolute joy to live/work with.
Did everyone catch this?
“Defendants submit that, during prosecution of the ’008 Patent, Netcraft sought claims with the limitation “providing a communications link over the Internet,” J.A. 1247 (emphasis added), but the Examiner rejected these claims in light of the prior art, J.A. 1253. Then, the Examiner allowed the claims after Netcraft changed the limitation to “providing a communications link through equipment of the third party.” J.A. 1266 (emphasis added).”
What was the Examiner smoking? What patentable difference could possibly exist between “providing a communications link over the Internet” versus “providing a communications link through equipment of the 3rd party” ? What difference does it make who owns the fricking link?
Once again: Examiners in these “high tech” art units shame the PTO. Truly pathetic.
My guess is that the federal circuit will decide that provisional applications which have no claims, which don’t use the word “invention”, which do not have abstracts or summaries or discuss the prior art, will not have the written description support for regular applications.
How can one figure out what the invention was in the provisional application?
(This should make a good topic for a paper by one of your students, Dennis.)
So Malcolm, what would ya say, ya do here?
..whatever it is, that you do
“When a claim requires that the practitioner “provides” something, it’s a good sign that the claim is crap.”
This is about the most arbitrary thing I’ve ever read. The word p0mp0us-ign0rant-pr1ck comes to mind.
I’m sure you would be a joy to work with.
When a post is signed “Malcolm Mooney” it’s a sure sign that what precedes it is a steaming dirty mess of crap. You forgot “doo doo.”
BTW, you don’t know dick about patent law.
S wrote:
“The reason why you were taught not to use ‘objects of THE invention’ is because it invokes a ‘written description’ limitation on the invention.”
True. Generally, any time a patent makes a statement about “the invention,” it will be construed as strictly limiting of the entire patent – even for stuff that’s not in the claims.
There’s an incredibly easy way to avoid any such problems: never, ever, EVER use the term “invention” in your patent application. EVER. There is never a reason for it.
If you want to refer generally to your inventor’s way of solving a problem, refer to the “techniques discussed herein” or “these concepts” or similar language. If you want to refer to the techniques your written description teaches, refer to “this disclosure” or “this application.”
And ALWAYS use open-ended language: “these techniques may include… an exemplary implementation of this disclosure comprises…”
– David Stein
The more interesting question is how and why did legalistic hoohaw like “object of the invention” come into such widespread use in the first place? I assume it reflects the language in a statute written by some fancyaxx lawyer trying to sound as archaic and lofty as possible.
Paul and S,
Statements about the “objects” of the claimed invention have long been a “no-no.” The reason I was originally given for not using them was that UK patent law said that if one of the “objects” wasn’t achieved by the claimed invention, that could cause the patent to be declared invalid, I believe for “inoperativeness.” (And given that the US spect was usually the same as the UK spec, along came the “object” statements with it.) Today, there are many other ways to describe the utility/benefits/advantages of the claimed invention without using “object” statements. Also, this particular patent could have benefited from defining this claim term in the specification to include communication systems beyond just those involving the Internet.
“It amazes me that ancient spec writing practices persist long after they should have disapeared by attention to legal developments”
This is because there are a lot of ancient patent prosecutors and newbie agents out there who know dick about case law and couldn’t tell you the holding of a Federal Circuit opinion if you double underlined it for them. The biggest laughs are when you see them citing some CCPA case from 1973 to support a claim of such unforgiveable scope that it would be worthless even if some drunk Examiner allowed it.
Paul,
The reason why you were taught not to use “objects of THE invention” is because it invokes a “written description” limitation on the invention. See generally the Gentry Gallery case.
This was another written description case.
I remember being told never to use the specification format “Objects of the Invention” in any specification, and why, way back when I was a clueless associate in the late bronze age. Also, the CAFC has repeatedly made referring to anything in the spec as “the invention” very dangerous for several years now. It amazes me that ancient spec writing practices persist long after they should have disapeared by attention to legal developments. [Not even to mention the incredible numbers of “means function” main claims still being filed long after the CAFC began clearly interpreting them very narrowly.]
Why worry about prosecution 6?
If I’m not mistaken, the option to re-exam in light of the new question of patentability (choose any original prior art item) due to the combination of Ex parte Miyazaki and in Re Swanson is available regardless of prosecution.
And just for fun, we can check to see if Bilski has any light to shine on this matter.
A case where a spanking new 112 2nd would have been good during prosecution?
🙂
When a claim requires that the practitioner “provides” something, it’s a good sign that the claim is crap.
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