October 2017

Most Cited Federal Circuit Decisions 2014-2017

  1. DDR Holdings, LLC v. Hotels.com, L.P., 2014 773 F.3d 1245 (Fed. Cir. 2014) (eligibility)
  2. Ultramercial, Inc. v. Hulu, LLC, 2014 772 F.3d 709 (Fed. Cir. 2014) (eligibility)
  3. Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (eligibility)
  4. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (eligibility)
  5. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (means-plus-function)
  6. OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (eligibility)
  7. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (eligibility)
  8. Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (eligibility)
  9. Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014) (several issues, including means-plus-function)
  10. In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015) (PTAB procedures; affirmed by SCOTUS)
  11. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) (indefiniteness)
  12. Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015) (eligibility)

The list above provides the most cited Federal Circuit patent decisions that have been issued by the Court since January 1, 2014.  You’ll note that 8 of the top 12 are eligibility cases with three others essentially focusing on MPF/Indefiniteness issues.




Claiming Active Systems but Distinguishing IPXL

MasterMine v. Microsoft (Fed. Cir. 2017)

On appeal here, the Federal Circuit has reversed a lower court indefiniteness finding — holding that the claims were not improperly simultaneously directed to both an apparatus and a method of using the apparatus.  In my view, the decision here continues the Federal Circuit’s implicit rejection of the Supreme Court’s Nautilus decision.

I have reproduced a substantial portion of disputed claim 8 of U.S. Patent No. 7,945,850 below.  You’ll note the claim is directed to a “system” but then includes a number of limitations that appear to require action. Notably, at points the claim uses standard “adapted to” language (“reporting module … is adapted to … examine a schema”) but elsewhere seemingly requires actual actions (“wherein the reporting module … displays a list of the report … presents a set of user-selectable database fields …  receives from the user a selection … and generates a database query”).

In IPXL, the Federal Circuit rejected a similar claim – finding it indefinite under 35 U.S.C. 112 since it was  “unclear whether infringement . . . occurs when one creates a[n infringing] system, or whether infringement occurs when the user actually uses [the system in an infringing manner].”   The claim in IPXL likewise was directed to a “system” with certain input means, but then required that “the user uses the input means” to accomplish some result.

The district court relied upon IPXL in holding MasterMine claim was directed to an apparatus, but required a series of steps to be performed — and, as a result was indefinite.

On appeal, the Federal Circuit rejected the district court’s indefiniteness analysis – holding instead that “these claims are simply apparatus claims with proper functional language.”  In distinguishing IPXL, the court writes:

Though claim 8 includes active verbs—presents, receives, and generates—these verbs represent permissible functional language used to describe capabilities of the “reporting module.” . . . These claims are also distinguishable from those at issue in IPXL Holdings and Katz, as the claims here do not claim activities performed by the user.

In reaching the decision here, the court cited three additional post-IPXL decisions with similar results: MEC, HTC, and UltimatePointer. As here, the court found in those decisions that the recited verb-forms should be read as capability limitations rather than requirements for action.

Although the Supreme Court did not particularly address the mixed-claim-type issue in Nautilus (2014)(a post-IPXL decision) the court lowered the standard for invalidating a claim on indefiniteness grounds.  Prior to Nautilus, claims would only be invalidated if the the claim scope was “insolubly ambiguous”; now, claims are invalid if they fail to define the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).  A major failing of the decision here (as well as the prior UltimatePointer decision) is to review the issue in light of Nautilus.

Disputed Claim 8:

8. A system comprising:

a database adapted to store customer relationship management (CRM) records containing CRM data;

a programmable processor adapted to execute a CRM software application and a spreadsheet software application;

a reporting module installed within the CRM software application …

wherein the reporting module … is adapted to … examine a schema …

wherein the reporting module … displays a list of the report …

wherein the reporting module … presents a set of user-selectable database fields …  receives from the user a selection … and generates a database query …

wherein the reporting module invokes the spreadsheet software …

wherein, in response, the spreadsheet software application generates the pivot table …

Note — the federal circuit also affirmed a narrow claim construction.  On remand, the district court will need to determine whether the newly validated claims are infringed.


RedditThe U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) will hold its first ever “Ask Me Anything” (AMA) on Reddit. Every October since 2011, the USPTO has shared some of the weird and wonderful intellectual property found in the deepest and darkest corners of our 200+ year old archives. This Halloween, join the agency’s social media team for an AMA all about #CreepyIP — from how it began, to the magic of searching for old patents and trademarks, to the types of invention artwork that give us nightmares.

WHO:              The United States Patent and Trademark Office
WHAT:           Reddit “Ask Me Anything” Celebrating Creepy IP
WHEN:          Tuesday, October 31, 2017 9:30 AM ET-11:00 AM ET
WHERE:         Reddit (https://www.reddit.com/r/IAmA/)

No automatic alt text available.

Patent Law Moot Court: Myriad in Light of Mayo

As part of my patent law class every year I hold a moot court competition. This year we are doing a mock-appeal based upon Judge Huff’s decision in Natural Alternatives International, Inc. v. Creative Compounds, LLC, 2017 WL 3877808 (S.D. Cal. Sept 5, 2017) [case file link].

In her decision, Judge Huff granted Plaintiffs Rule 12(c) motions for judgment on the pleadings – ruling that all claims of the five asserted patents were invalid for claiming ineligible subject matter under 35 U.S.C. § 101.

A few of the claims at issue:

34. A human dietary supplement for increasing human muscle tissue strength comprising

a mixture of creatine, a carbohydrate and free amino acid beta-alanine that is not part of a dipeptide, polypeptide or an oligopeptide,

wherein the human dietary supplement does not contain a free amino acid L-histidine,

wherein the free amino acid beta-alanine is in an amount that is from 0.4 g to 16.0 g per daily dose,

wherein the amount increases the muscle tissue strength in the human, and

wherein the human dietary supplement is formulated for one or more doses per day for at least 14 days.

Claim 34 of the U.S. Patent No. RE45,947.

6. A composition, comprising:

glycine; and

a) an amino acid selected from the group consisting of a beta-alanine, an ester of a beta-alanine, and an amide of a beta-alanine, or

b) a di-peptide selected from the group consisting of a beta-alanine di-peptide and a beta-alanylhistidine di-peptide;

wherein the composition is a dietary supplement or a sports drink; and

wherein the dietary supplement or sports drink is a supplement for humans.

Claim 6 of U.S. Patent No. 7,504,376 (Note, claim 6 is a dependent claim, and I have reformulated it in independent form by incorporating elements of the parent claims).

1. A method of increasing anaerobic working capacity in a human subject, the method comprising:

a) providing to the human subject an amount of an amino acid to blood or blood plasma effective to increase beta-alanylhistidine dipeptide synthesis in the tissue, wherein said amino acid is at least one of:

i) beta-alanine that is not part of a dipeptide, polypeptide or oligopeptide;

ii) an ester of beta-alanine that is not part of a dipeptide, polypeptide or oligopeptide; or

iii) an amide of beta-alanine that is not part of a dipeptide, polypeptide or oligopeptide; and

b) exposing the tissue to the blood or blood plasma, whereby the concentration of beta-alanylhistidine is increased in the tissue,
wherein the amino acid is provided through a dietary supplement.

Claim 1 of U.S. Patent No. 8,470,865.


Important in her decision is that the approach to eligibility of products-of-nature is: Myriad in light of Mayo.  How would you argue this case?

Sovereign Immunity: Does Sovereign Immunity Protect a State Against Charges of Stealing Invention Ownership?

by Dennis Crouch

Ali v. Carnegie Institution of Washington and the University of Massachusetts (Supreme Court 2017)

Sovereign Immunity protectionism continues to be an important topic in the patent law community.  Although the biggest news this year has been the debate over immunity claimed by Tribal Nations owning patent rights, the actual major players in the area are states and state run public universities who hold so many patents.

This case involves Mussa Ali who was a graduate student at UMass working with Dr. Craig Mello on mRNA inhibitors.  Mellow was awarded the nobel prize (along with Dr. Andrew Fire of Carnegie) stemming from their research in this area and obtained a collection of patents that are co-owned between UMass and Carnegie.


Ali was not listed as an inventor of any of the patents and that alleged exclusion is the basis of the lawsuit filed under 35 U.S.C. § 256.

The problem for Ali – UMass is a wing of the State of Massachusetts, and the 11th Amendment provides US States immunity from being sued in Federal Court. That approach was affirmatively stated by the Supreme Court in Florida Prepaid Postsecondary striking down the Patent Remedy Act which was designed to hold States liable for patent infringement. An element of its decision though, was that “Congress identified no pattern of…constitutional violations.”  Of course times have changed since then.  In Xechem, Judge Newman wrote in concurrence to recognize “an increasing urgency, as the States enter the private competitive arena governed by the laws of intellectual property, to establish fair relationships and just recourse.”

In Ali’s case, UMass was dismissed as a party on immunity, and then the still-pending suit against Carnegie was also dismissed since UMass was an indispensable party under FRCP R.19.  That decision was affirmed on appeal.  Because of federal preemption, Ali is also barred from filing suit in Massachusetts state court to resolve his claim of inventorship and equitable-ownership rights.

The new petition for writ of certiorari asks the following questions:

1. At what point do patent-owning States waive their sovereign immunity when they voluntarily participate in the patent system?

2. If Eleventh Amendment sovereign immunity is extended to allow patent-owning states to escape suits under § 256, how is this not a taking from wrongfully omitted inventors and a violation of due process of law under the Fourteenth Amendment?

3. Carnegie is a private entity and does not have Eleventh Amendment sovereign immunity. If a State is allowed to essentially extend its sovereign immunity privilege to a private entity who co-owns a patent, how is this not a State granting a privileged status to select citizens and violative of the equal protection clause of the Fourteenth Amendment?

4. 35 U.S.C. § 256 … was specifically enacted to provide a judicial mechanism to correct inventorship in patents. Can Eleventh Amendment sovereign immunity subjugate Congress’ express power under Art. 1, Sec. 8?

[Ali Petition]

Important issues here that have the potential of extending our discussion of the rights of inventors and the role of governmental players in the marketplace.

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Moving Forward: I would recommend that faculty and student groups consider this issue as you develop and negotiate your employment agreement with the University.

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11th Amendment, Constitution of United States of America

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.

PatentlyO Bits and Bytes by Anthony McCain

Get a Job doing Patent Law                  

AIA Trials – Study Query

I have seen lots of information regarding situations where the PTAB found challenged claims obvious during an IPR despite a contrary position by a district court.  My query is whether there are examples (and perhaps statistics) on flip-side – perhaps where PTAB refused to grant an IPR petition but then the claims were invalidated in court on the same grounds?


Looking-Back: TC Heartland; Waiver; and a Change in the Law

In re Yahoo (Fed. Cir. 2017)

The Federal Circuit has ordered briefing in Yahoo’s petition for writ of mandamus on the issue of venue.  The E.D.N.Y. denied Yahoo’s motion to dismiss, holding (on oral decision): (1) that Yahoo had waived its right to challenge venue; and (2) that TC Heartland did not change the law (since Fourco has been the controlling law all along).  Note here, the second point – change in law – is important because it can excuse prior waiver.  Under Second Circuit law: “[A] party cannot be deemed to have waived objections or defenses which were not known to be available at the time they could first have been made.” Holzsager v. Valley Hosp., 646 F.2d 792 (2d Cir. 1981).  In my view, a major problem with Yahoo’s ‘lack of knowledge’ problem was that by the time their answer was due (January 2017), TC Heartland was already pending before the Supreme Court.

Note, on the merits, the plaintiffs (AlmondNet, et. al) apparently admitted that venue would be improper – but for the waiver.

[Petition for Mandamus With Appendix]

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The case involves U.S. Patent Nos. 7,822,639; 7,979,307; 8,244,574; 8,244,582; 8,244,586; 8,494,904; 8,671,139; 8,677,398; 8,775,249; and 8,959,146.

Patent examiner specialization

After reading their recent article, I asked Cesare Righi and Timothy Simcoe to write this explanatory guest-post for Patently-O.  My basic take-away is that USPTO Tech-Centers differ substantially in their internal levels of tech-homogeneity — making the classification system useful for Chemistry, but not really useful for Computer-related combination inventions.  –Dennis

Guest Post by Cesare Righi and Timothy Simcoe 

A growing body of research shows that individual examiners at the USPTO produce systematically different outcomes along important dimensions such as the grant rate, claim narrowing and time to dispose an application.[1] This creates a difficult trade-off for the USPTO. One approach to “fairness” would be to give each application, and therefore each applicant, the same chance of getting a particular examiner. On the other hand, the quality and efficiency of the examination process are likely to benefit when examiners specialize in particular areas.

In a new working paper, we measure technological specialization by patent examiners within different art-units at the USPTO, and study the impacts of specialization on the examination process. Our research was partly motivated by several recent studies that assume applications are randomly assigned to examiners (within art-unit-years) in order to estimate the causal impact of granting a patent. We show that a core premise behind the statistical approach used in those papers is wrong.

We find significant heterogeneity across technology centers in terms of specialization, and show that more specialized examiners are also “tougher”. The data for our analysis come from all published original utility patent applications filed between November 29, 2000 (enactment of the American Inventor’s Protection Act of 1999) and the end of year 2012. Our main results are illustrated in the figure below.

The blue bars show how often we can reject the hypothesis that the primary USPC subclass of applications filed in a given year and examined by a given art unit are randomly allocated across examiners within the given technology center. This measure of specialization reveals far more clustering by technology in the Life Sciences and Chemistry areas, than in Computers and Communications. For technology centers 2100 and 2400, the random matching assumption appears plausible. One explanation of the pattern in Figure 1 is that computer examiners are generalists, at least relative to the rest of the examiner corps. An alternative story is that the USPC classification does a better job of measuring real technical distinctions outside of the computing technology centers.

Figure 1: Percentage of tests rejecting random assignment by technology center.


For each technology center, the graph reports the percentage of Multinomial Tests of Agglomeration and Dispersion (MTAD) that reject the null hypothesis of random allocation within art-unit-year of applications to examiners in favor of agglomeration at the 1% significance level. Please see the paper for details on these tests.

The red bars in Figure 1 show a similar pattern of specialization for individual assignees – applicants are not randomly distributed across examiners, particularly in the Chemistry area. This pattern may be driven by technical specialization. When we examine assignee agglomeration within technological subclasses, the evidence of examiner specialization becomes weaker, although we still find some within the Chemistry and Biotechnology tech centers. Reassuringly, our analysis found no evidence that some examiners handle more applications that are particularly important (with large “families”) or broad (having a short first independent claim). To study how examiner specialization is related to examination outcomes, we created a measure based on the share of applications (in a particular year) having the same primary USPC subclass. The table below shows that as examiners’ workload is increasingly concentrated within a few subclasses, they have a lower allowance rate and produce larger increases in the length of the first claim (although the latter effect is not large). More specialized examiners also take slightly longer to process the application. The natural interpretation of these findings is that specialized examiners can more easily identify relevant prior art.

Table 1: Relationship between examiner specialization and examination outcomes.


The table reports the coefficients and the standard errors (in parentheses) of ordinary least square regressions on a sample of observations at the art-unit-year-examiner level. For each application “share apps in same subclass” is the share of other applications examined by the same examiner within the same art-unit-year that have the same subclass of the focal application. To produce these estimates, we standardize “share apps in same subclass”, as well as “words added to 1st ind. claim” and “days from docketing to disposal”, and average all variables at the art-unit-year-examiner level. Please see the paper for details on sample and analysis.

To summarize, we find a significant degree of technological specialization among patent examiners working in the same art-unit. This specialization is less pronounced in some of the computer-related technology centers. We found no evidence that examiners specialize in handling important or controversial applications. And it seems that specialization is associated with a more stringent examination process, perhaps because it allows examiners to more easily identify relevant prior art.

In closing, we note that all of our research is enabled by the increased transparency and data availability made possible through the efforts of the Office of the Chief Economist of the USPTO. We thank them and hope these efforts will lead to more research on the production and the impact of patents.

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The paper shortly described in this post is available on the websites of the Social Science Research Network and the National Bureau of Economic Research.

About Cesare Righi: Cesare is a Postdoctoral Associate at Boston University, School of Law, Technology & Policy Research Initiative.

About Timothy Simcoe: Timothy is an Associate Professor of Strategy & Innovation at Boston University, Questrom School of Business, and a Research Associate with the Productivity, Innovation, and Entrepreneurship Program of the National Bureau of Economic Research.

[1]  This research includes Cockburn, Kortum & Lerner 2002; Farre-Mensa, Hegde & Ljungqvist 2016; Frakes & Wasserman 2017; Kuhn & Thompson 2017; Lemley & Sampat 2012, Sampat & Williams 2015.

Oil States Briefing: Linking AIA Trials to Reexaminations

Amici briefs supporting AIA Trials and Inter Partes Review are beginning to be filed.   The first brief in is filed by John Vandenberg’s team at Klarquist representing SAP, Gilead, Nautilus, and others.  The Brief presents a reexamination linkage and slippery-slope argument in two forms: (1) killing inter partes review will also kill reexaminations; and (2) pre-AIA patentees ‘consented’ to reexamination and that should be seen as consent to inter partes review.

Vandenberg writes:

Since 1980, the Patent Office has issued more than 10,000 reexamination certificates canceling, amending, adding, or confirming claims of issued patents. Inter partes review is substantively identical to reexamination, enforcing the same patentability conditions and issuing the same certificates canceling, amending, adding or confirming claims. Like reexamination, inter partes review is a rational condition the Legislature has imposed to maintain a patent, pursuant to its Constitutional authority to grant patents “for limited Times” to promote the useful Arts.

Since 1980, every patent applicant has consented to the substance of this reexamination as a maintenance condition for each granted patent. . . . Petitioner obtained its patent before 2011. But, like every other patent applicant since December 12, 1980, Petitioner consented to reexamination as a condition for maintaining its patent. Petitioner knew that the patent it sought would be subject to a reexamination request by anyone in the world at any time, including the Commissioner (now Director) of Patents, potentially leading to early cancellation of the patent. And, as noted, the substance of that reexamination to which it consented, is identical to inter partes review.

[16-712 bsac SAP America, Inc., et al.]

I am sympathetic to the arguments here – especially if narrowed to focus solely on inter partes reexamination.  A key caveat though is that the Supreme Court has never ruled that inter partes reexaminations are a proper exercise of administrative power.

Oil States: Government Explains Its Position – A Patent is not Property but Merely a Limited Franchise

Responsive merits briefs have been filed in Oil States v. Greene’s Energy:

The Government presents the question as follows:

Whether inter partes review comports with Article III and the Seventh Amendment.

Rather than seeing a patent right as property, the Government brief identifies patents as simply “revocable privileges” or “governmentally-conferred franchises” whose creation are not associated with any natural right of an inventor but instead are simply tools of public policy designed to “benefit the public by providing an incentive to innovate.”

For the government and patent challengers, it is important to distinguish patents on inventions from traditional “land patents” since those may not be revoked administratively.  According to the government, the distinguishing point is that the government previously owned title to land, but patent rights are a government creation:

The government in issuing a patent [for invention] does not (as with a land patent) convey title to something it previously owned, but instead grants a limited franchise whose scope and contours are wholly defined by the government itself.

Regarding the 7th Amendment challenge – the Government writes that the 7th amendment right does not apply to situations where resolution of a conflict is properly assigned to an administrative (non-Article-III) resolution.

As Greene’s Energy writes – and all parties appear to agree: “The nature of U.S. patent rights … is at the core of the constitutional question before the Court.”    What I think may be the decisive is buried in Greene’s FN4: “At the very least, patents are quasi-private rights, that is, ‘statutory entitlements * * * bestowed by the government on individuals.'”  quoting B & B Hardware v. Hargis Indus., 135 S. Ct. 1293 (2015) (Thomas concurring in trademark context).

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I’ll note here that to make its policy-case that there are too many patent applications for the PTO to properly handle, the Government perpetuated the USPTO’s false statement that “In 2015, the USPTO received more than 600,000 applications—more than three times as many as it had received two decades earlier.”  That statement includes 273,000 192,000 requests for continued examination (RCEs) as “applications.”

Ex parte McAward – Testing Claims for Indefiniteness

In the following essay, Dr. David Longo discusses the PTAB’s indefiniteness decision in Ex parte McAward. The decision is important because it was recently made precedential by the Board. – DC

Guest Post by David M. Longo[i]

We have a statutory provision that requires “one or more claims particularly pointing out and distinctly claiming the subject matter” regarded as the invention.  35 U.S.C. § 112(b) (pre-AIA § 112, ¶2).  But how do we determine what constitutes “particularly pointing out and distinctly claiming”?  And how do we apply it consistently, regardless of whether we are in the midst of patent prosecution, litigation, or in one of the post-grant proceedings established under the AIA?  Unfortunately, the answers are not clear.

We typically refer to § 112(b) as constituting the “definiteness requirement,” the “definiteness command,” or the “definiteness standard.”  See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2128-2130 (U.S. 2014).  And, we refer to a claim that does not satisfy § 112(b) as being “indefinite” or “invalid for indefiniteness.”  See Interval Licensing, LLC v. AOL, Inc., 766 F.3d 1364, 1369-1372 (Fed. Cir., 2014).  However, as Judge Plager explained in his concurring opinion in In re Packard, “as a matter of legal terminology there is, under current law, no statutory reference to a definiteness requirement, nor a statutory provision that invalidates a patent or a patent claim for “indefiniteness”,” whether under § 112 or its predecessor, 35 U.S.C. § 33.  In re Packard, 751 F.3d 1307, 1319 (Fed. Cir., 2014).  Rather, the concept of definiteness/indefiniteness is a “judicially crafted law … regarding the standard for clarity of claims in an issued patent” in view of “the overriding policy considerations that claims must unambiguously define any invention over the prior art, and provide notice to the public….” Id., 751 F.3d at 1307, citing to Brooks v. Fiske, 56 U.S. 212 (U.S. 1853).

Before we can assess the “definiteness” of a claim, we must first attempt to interpret/construe the claim language.  Over time, more than one approach emerged for doing so, depending on whether the claims at issue were under examination or whether they were already patented.

On the one hand, the USPTO’s approach is that “[d]uring patent examination, the pending claims must be “given their broadest reasonable interpretation [“BRI”] consistent with the specification”” as they would be interpreted by a person of ordinary skill in the art.  M.P.E.P. § 2111 (emphasis added), citing to Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005, en banc).  BRI also applies to unexpired patent claims in an inter partes review (IPR) proceeding (affirmed by the U.S. Supreme Court in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S. 2016)), and in a post-grant review (PGR) proceeding (although this issue is being appealed to the Federal Circuit in Tinnus Enterprises, LLC v. Telebrands Corp., Appeal No. 2017-1726).

On the other hand, in litigation, “the basic principles of claim construction” provide “that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention….”  In re Packard, 751 F.3d at 1317, quoting from Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005, en banc).

So, “[c]laim definiteness is intertwined with claim construction, and the broadest-reasonable-interpretation (BRI) standard used by the USPTO differs from the Phillips claim construction standard used during patent litigation in the federal courts.”  Tinnus Enterprises, LLC v. Telebrands Corp., Appeal No. 2017-1726, USPTO Brief at p. 13.  [TinnusTelebrandsPTOBrief] According to the USPTO, the U.S. Supreme Court approved of the difference in standards used:  “we cannot find unreasonable the Patent Office’s decision to prefer a degree of inconsistency in the standards used between the courts and the agency, rather than among agency proceedings.”  Cuozzo, 136 S. Ct. at 2146.

After interpreting/construing the claim language, the USPTO’s approach to assessing “definiteness” “requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.”  M.P.E.P. § 2173.02.  “The essential inquiry pertaining to this requirement is whether the claims set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity.”  Id., § 2173.02(II).  The USPTO acknowledges that making such a determination after applying a BRI “may effectively result in a lower threshold for ambiguity than a court’s determination.”  Id., § 2173.02(I), citing to In re Packard, 751 F.3d at 1323-24.  The USPTO reasons that “[t]he lower threshold is … applied because the patent record is in development and not fixed during examination, and the agency does not rely on it for interpreting claims.”  Id., § 2173.02(I), citing to In re Packard, 751 F.3d at 1325 (Plager’s concurrence).

In contrast, a court’s approach to assessing “definiteness” in litigation “require[s] that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”  Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (U.S. 2014) (emphasis added).  Here, the court may avail itself of the benefit of a completed and fixed prosecution history.

Note that both approaches have the word “reasonable” in common.  It appears, though, that the concept of what is considered “reasonable” is expanding as a function of time—along with the rest of the universe but without knowledge of a patent-equivalent to the Hubble constant.  We sense this expansion, and it gives us agita as we attempt to make sense of seemingly conflicting guidance from the USPTO, the Federal Circuit, and the U.S. Supreme Court.

Perhaps being sensitive to our collective anxiety, the USPTO went to great lengths to explain its approach in sustaining an indefiniteness rejection under § 112, ¶ 2 (pre-AIA) in Ex parte McAward (Appeal No. 2015-006416, Aug. 25, 2017, precedential).  (Four days later, in its brief intervening in Tinnus, the USPTO went to similar lengths to argue that its approach is also ideally suited for assessing indefiniteness during PGR.)  Or, perhaps it viewed the facts of Ex parte McAward as a textbook example of why the USPTO’s “lower threshold for ambiguity” is ideally suited for assessing whether claims “set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity” during the examination process.  M.P.E.P. § 2173.02(II).

In Ex parte McAward, the USPTO acknowledged that the BRI “standard differs from the claim interpretation standard used during patent litigation….”  Ex parte McAward, p. 7.  According to the PTAB, this is of no consequence, because the distinction was condoned in Cuozzo, and because “[i]t would be inconsistent with the role assigned to the [USPTO] in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid.”  Id., at 7-8 (internal citation omitted).  According to the USPTO, when BRI is applied in the interactive environment of prosecution to resolve ambiguities, it “naturally results in an approach to resolving questions of compliance with§ 112 that fundamentally differs from a court’s approach to indefiniteness.”  Id., at 8 (emphasis in original).

The USPTO’s main point in Ex parte McAward is essentially that the “different approaches to indefiniteness before the [USPTO] and the courts stem not from divergent interpretations of § 112, but from the distinct roles that the [USPTO] and the courts play in the patent system.”  Id. (emphasis added).  In McAward, the Board asserted that its “lower threshold” approach to claim interpretation during examination “makes good sense,” precisely because “an applicant may freely amend claims” in response to broadly interpreted claims.  Id., citing to Plager’s concurrence in In re Packard, 751 F.3d at 1325.  The Board contrasted this with a court’s approach in litigation, where there is presumption of validity, “simple amendments are impossible, the full prosecution record is available, and courts endeavor to adopt saving constructions.”  Id., at 9, citing to In re Swanson, 540 F.3d 1368, 1377-78 (Fed. Cir. 2008).

Extending this to “definiteness,” the Board acknowledged that “reasonable certainty” governs the “definiteness command” of § 112(b) for claims in issued patents.  Id., citing to Nautilus, 134 S.Ct. 2120, 2129.  But the Board asserted that Nautilus does not “mandate a change in the [USPTO]’s approach to indefiniteness in patent-examination matters in which … claims are interpreted under the broadest reasonable interpretation standard and an opportunity to amend the claims is afforded.”  Id., citing to Plager’s concurrence in In re Packard, 751 F.3d at 1323-1324.  According to the Board, the USPTO is also “justified in using a lower threshold for indefiniteness.”  Id., at 10, quoting the USPTO’s Brief as Amicus Curiae Supporting Respondent in Nautilus.  And, a court “should be particularly loath to disturb the settled distinction that the [USPTO] and the courts have recognized between the pre-and post-issuance contexts….”  Id. at 11 (internal citation omitted).

The Board then applied “the approach for assessing indefiniteness approved by the Federal Circuit in Packard, i.e., [a] claim is indefinite when it contains words or phrases whose meaning is unclear”  Id. (internal citations omitted).  Absent a “satisfactory response” from the applicant, “the USPTO can properly reject [a] claim as failing to meet the statutory requirements of § 112(b)” when “the language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention….”  Id. (internal citations omitted).  According to the Board, § 112 requires “that claims be written in clear and unambiguous terms,” which “necessarily invokes some standard of reasonable precision in the use of language in the context of the circumstances.”  Id., at 12, citing to In re Packard, 751 F.3d at 1313 (emphasis added).

The Board considered the claims in Ex parte McAward within this framework.  The claim language at issue in the § 112 ¶2 (pre-AIA) rejection was “wherein the water detector is configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption.”  The Board rightly called this claim language “unusual,” in that the claim does not further define the water detector’s structure or function, and instead “attempts to further define the water detector’s structure by the skill level required to install the water detector.”  Id.  The Board determined that the claim language “fails to provide adequate clarity to the required structure because the skill level of “an untrained installer or a homeowner” is ambiguous and vague, and thus, the meaning of a structure configured to be “reliably installed” by such an installer is unclear.”  Id.

It is worth mentioning that the applicant added this recitation and others by amendment in an attempt to overcome two separate anticipation rejections under 35 U.S.C. § 102(b), and a § 103(a) rejection.  The amendment language initially also included a requirement that the “plumber” be a “licensed professional plumber,” and that the “electrician” be a “licensed electrician.”  The applicant argued that the prior art reference “does not disclose the context” of the amended feature, and that it “does not do the same or any similar thing as that of the claimed invention.”  Applicant’s Amendment of Mar. 14, 2014, p. 7.  Of course, the Examiner responded with a 35 U.S.C. § 112 ¶2 rejection, asserting that the

limitation is unclear and indefinite since the claim language does not provide any structure to the apparatus or system that would allow it to be “configured” to function as described in the claims; as such one having ordinary skill in the art cannot determine the metes and bounds of the claimed subject matter.  Furthermore the limitations of “to not require the services of a licensed professional” can potentially be in violation of a region’s building and electrical codes and laws depending where the claimed invention could be potentially used.  The examiner suggests deleting these limitations since it does not appear to add patentable weight to the claim language other than explain that the device or system can be “easily installed”.  Office Action of May 30, 2014, pp. 3-4.

The Examiner’s rejection closely tracked the guidance in M.P.E.P. § 2173.02(II) and (III).  Yet there were several rounds of prosecution before the Appeal.  It is worth noting that an Examiner interview likely could have helped to clarify each side’s position early in the process and perhaps avoided some of the problems in this case.  See M.P.E.P. § 2173.02(III)(D), encouraging Examiners to initiate an interview to discuss BRI and definiteness, “potentially eliminating the need for the examiner to resort to making a rejection under [§] 112(b).”

On Appeal, the Board rejected the applicant’s argument that “the claims are directed to the simple, straightforward concept of a ‘do-it-yourself’ device installed by an amateur,” because the Specification did not “provide support for this definition.”  Ex parte McAward at 12-13.  Such a distinction “is insufficient to provide clarity to the claim language [requiring] the water detector to be configured to be “reliably installed” by the [homeowner].  A person having ordinary skill in the art would appreciate that a “homeowner” can encompass a wide range of people of all skill levels.  As such, the claim suffers from general vagueness and ambiguity.”  Id. at 13.  Even assuming the applicant’s “proffered understanding to be correct, the claim language of the “configured” limitation, when read in light of the Specification, fails to further clearly define the structure encompassed by the limitation.”  Id.  Therefore, because the applicant “failed to provide a satisfactory response that apprises us of error in the Examiner’s rejection,” the Board sustained the § 112 ¶2 rejection of the claims as being indefinite.  Id. at 15-16.

Lower threshold or not, I do not think that many would argue that the Board demanded unreasonable precision in its approach to the indefiniteness analysis in this case.  Such a clear case makes it easy for us to nod in agreement with the outcome.  It also makes it easy for the Board to argue that this case is a perfect example of why the USPTO’s “lower threshold for ambiguity” is ideally suited for assessing whether claims “set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity” during the examination process.  M.P.E.P. § 2173.02(II).  But it does not bring us any closer to addressing the perceived expansion of what is considered “reasonable” regarding “broadest reasonable interpretation,” “reasonable degree of clarity and particularity,” “reasonable certainty,” and “reasonable precision.”  Without some patent-equivalent to the Hubble constant, we continue to live with our agita.

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[i]  David M. Longo is a partner at Oblon McClelland Maier & Neustadt LLP.  This post represents the thoughts and opinions of the author alone and not those of his firm.  It is intended to convey general information only and should not be construed as a legal opinion or as legal advice.

Means-Plus-Function: Lack of disclosed structure also fails written description (and nullifies priority claim)

Uniloc v. Sega (Fed. Cir. 2017) (non-precedential)

Uniloc’s U.S. Patent No. 5,490,216 claims priority to two Australian provisional patent applications.  However, the ‘216 patent also includes some amount of new matter.

The ‘216 patent covers a software registration system that uses a particular algorithm at the game-system to create to create a ‘local’ unique ID. The same algorithm is also run on the registration-server to create a ‘remote’ unique ID.  If the IDs match then the software license is confirmed.

The algorithm is claimed as a “unique ID generating means” and the PTAB identified only one algorithm in the patent specification to serve as the ‘structure’ for the means-plus-function construction.

The algorithm, in this embodiment, combines by addition the serial number 50 with the software product name 64 and customer information 65 and previous user identification 22 to provide registration number 66


Since that algorithm was not disclosed in the provisional filings, the PTAB found that the patent at issue was not entitled to the priority claim.  And, without that priority date, intervening prior art invalidated the claims at issue.

On appeal, the patentee argued that the PTAB applied an incorrect standard for determining priority.  Notably, priority is not based upon whether a means-plus-function claim is properly drafted under 35 U.S.C. 112p6.  Rather, under 35 U.S.C. 120, a priority claim is proper  so long as the provisional applications disclose the invention as required by “the first paragraph of section 112.”

According to the patentee, 112p6 demands a narrow ‘myopic’ quest in search for specific structure.  On the other hand, the 112p1 priority quest asks whether the prior filings ‘reasonably convey … possession’  Ariad.

On appeal, the Federal Circuit rejected the patentee’s argument – holding that for means-plus-function claims, the priority analysis does boil down to the search for specific structure — noting that the original disclosure must “describe the invention, with all its claimed limitations.”  Lockwood.  Since nothing in the provisional applications was sufficient to support the “structure” requirement of 112p6, the priority claim also failed.

Although the Federal Circuit does not state this expressly, the holding here is basically that, in addition to being indefinite, a patent claim also fails written description when it includes a means-plus-function limitation without disclosing a specific structural embodiment that performs the claimed function.

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This is a case where no sufficient structure (here, algorithm) was disclosed in the priority documents; I wonder what would be the result if one structure was disclosed priority document, but more were added in the non-provisional application.


Receiving a Sequence of Symbols

I am somewhat amazed by Google’s New Patent No. US 9633013 B2; Claim 1 below:

1. A computer-implemented method comprising:

receiving a sequence of symbols that have been optically captured from a rendered document;

determining that the sequence of symbols includes a particular symbol, word, or phrase that has been mapped to one or more actions;

selecting an action from the one or more actions; and

transmitting an instruction to a document management system to perform the selected action.

In addition to its gaping abstract idea problems, the patent claims priority to a collection of more than one hundred (100) provisional patent applications – 2004 priority date.

Despite this application being filed in 2016 and issued in 2017, the claims were never rejected on eligibility grounds – or on any grounds other than obviousness-type-double-patenting.  The notice of allowance explains:

The prior art of the record fail to teach or suggest singly and/or in combination a system and computer implemented method which provides for receiving a sequence of symbols that have been optically captured from a rendered document, determining that the sequence of symbols includes a particular symbol, word, or phrase that has been mapped to one or more actions, selecting an action from the one or more actions, and transmitting an instruction to a document management system to perform the selected action as prescribed for in the claimed invention.

I’ll also note here that the patent appears to be co-owned by Google and the widow of named inventor, Martin King.  More claims continue to be filed in the family, including pending APN 15/462,309, which has also been rejected only on one ground – obviousness type double patenting – without any consideration for Alice/Mayo.   The first claim of the ‘309 patent soon-to-issue is as follows (written as Claim 20):


Venue in Multi-District States

by Dennis Crouch

One post-Heartland topic of some interest is the question of proper venue in multi-district states such as Illinois, which has a northern, central, and southern district.

District vs State: The patent venue statute states that a “civil action for patent infringement may be brought in the judicial district where the defendant resides…” 28 U.S.C. 1400(b).  In TC Heartland the Supreme Court held that “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.”  TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017).

The problem: TC Heartland defines residence at the state level, but 1400(b) requires a district-by-district focus — “the judicial district where the defendant resides.”

In Missouri, for instance, we have an Eastern and Western District with our state capitol Jefferson City (home of the corporate registration database) situated on the Western side.  Does a Missouri corporation reside in the W.D. since that is the true birthing site of the legal corporation?; Rather does the company reside solely in the district of its HQ?; What if the company is merely registered in Missouri, but no longer operates here?; What about 1391(d)’s focus on the district of “most significant contacts”?


The most compelling case-in-point is likely Stonite Products Co. v. Melvin Lloyd Co., 315 U.S. 561 (1942).  In Stonite the Supreme Court was interpreting a prior version of 1400(b), but confirmed that “an inhabitant of the Eastern District of Pennsylvania” could not be sued in the “in the Western District of that State” without a “regular and established place of business” in that western district.  A problem with Stonite is its cryptic language and that the prior statute used the word “inhabitant” instead of “resident.”

In the one post-Heartland decision on the subject, E.D. Tex. Judge Gilstrap disagreed with the Supreme Court’s Stonite decision – holding instead that “a domestic corporation resides in the state of its incorporation and if that state contains more than one judicial district, the corporate defendant resides in each such judicial district for venue purposes.” Diem LLC v. BigCommerce, Inc., 6:17-CV-00186, 2017 WL 3187473, at *2–3 (E.D. Tex. July 26, 2017). Distinguishing Stonite, Judge Gilstrap wrote that the particular issue was not actually before the court in Stonite but rather, “The only question presented … is whether Section 48 of the Judicial Code … is the sole provision governing the venue of patent infringement litigation.” Stonite. Gilstrap writes: 

This Court … sees no basis to impose an additional requirement, neither present in the statute nor discussed by the Supreme Court in TC Heartland, absent a clear directive to do so.

Diem (2017).

There are at least a handful of pre-Federal-Circuit court decisions as well.  Perhaps most on-point is Action Communication Systems, Inc. v. Datapoint Corp., 426 F.Supp. 973 (N.D. Tex. 1977), which disagrees with Judge Gilstrap’s decision – holding instead that under § 1400(b) a defendant resides “only in the judicial district where its principal place of business is located.” See also Samsonite Corp. v. Tex. Imperial Am., Inc., No. 3-81-1038-H, 1982 WL 52203 (N.D. Tex. Apr. 15, 1982); Sterling Drug Inc. v. Intermedics, Inc., No. A-82-CA-578, 1986 WL 15561 (W.D. Tex. Aug. 6, 1986); Cal. Irr. Servs., Inc. v. Bartron Corp., 654 F. Supp. 1 (N.D. Cal. 1985); Hydro-Clear Corp. v. Aer-O-Flo Corp., 317 F. Supp. 1317 (N.D. Ohio 1970).

A number of old decisions also support Gilstrap’s position: B.W.B. Controls, Inc. v. C.S.E. Automation Eng’g, 587 F. Supp. 1027 (W.D. La. 1984) (Under 1400(b), “venue is proper under section 1400(b), in any judicial district in its state of incorporation”; expressly refusing to follow Action Comm.); Brynes v. Jetnet Corp., No. CV-84-0-661, 1986 WL 15148 (D. Neb. June 2, 1986); Hansa Med. Prods., Inc. v. Bivona, Inc., 1987 WL 14496 (S.D. Ind. Jan. 14, 1987) (“Although there is some split of authority, as a general rule, a corporate defendant resides in all districts of the state in which it is incorporated.”).  Note here that the case law creates a substantial amount of confusing jumping back and forth between residence definitions in 1400 and 1391.

Finally, I’ll note here that 28 U.S.C. 1391(d) does address this situation –

Residency of Corporations in States With Multiple Districts.— [I]n a State which has more than one judicial district and in which a defendant that is a corporation is subject to personal jurisdiction at the time an action is commenced, such corporation shall be deemed to reside in any district in that State within which its contacts would be sufficient to subject it to personal jurisdiction if that district were a separate State, and, if there is no such district, the corporation shall be deemed to reside in the district within which it has the most significant contacts.

The problem with applying this statute is that the whole point of TC Heartland was to focus attention on the patent venue statute and away from these more general definitions.

Standard Patent Size


by Dennis Crouch

The chart above might take a couple of minutes to digest, but the main point is that, while the median patent has remained relatively unchanged, patents are becoming more uniform in size.

The chart above shows the number of claims per patent for three groups of patents – those issued in 2007, 2012, and 2017 (through 10/16/17).  For each group, the chart provides a size-strata based upon the number of claims found in each patent and a relative percentage.  Thus, in 2007 about 27% of patents issued with 1 to 9 claims; in 2017 that figure has dropped to 20%.  Similarly, in 2007 about 30% of patents issued with 21 or more claims; in 2017 that figure has dropped to 18%.  That decrease at the extremes of claim count size has been replaced by a bulge in the middle – patents with 10 to 20 claims (especially those with exactly 20 claims).

This graphical representation is akin to a measure of variance or standard deviation.  As expected, the standard deviation has also dropped during this time as shown by the chart below:


This second chart reports both the average claim count and the standard deviation for each year of utility patent issuance.  Note that the average claim count has dropped slightly (especially since 2011) while the standard deviation has decreased substantially each year.

Causes: It is easy to postulate on the causes for the changes here.  First up is USPTO Fees.  Starting in 2004, the USPTO substantially increased the cost of filing patents with >20 claims or >3 independent claims.  This led to a substantial decrease in “jumbo” patents with many patent claims. Today, it is quite a bit cheaper (w/r/t USPTO fees) to file two patent applications with 20-claims (3 independent) each rather than one application with 40-claims (6 independent).

Evidence Based Prosecution II: Independent and Dependent Claims

In addition to USPTO fees, the market for patent prosecution has shifted significantly to patents-as-a-commodity with recognized usual costs.  The fixed-cost approach means that a change from the usual 20-claim standard will involve a heightened level of review and approval — something many outside counsel avoid.  Often, the fixed-cost agreement includes the particular number of claims to be drafted.  This reasoning can also be combined with the continued increase in the proportion of foreign-originated patents – many foreign applicants enter the US system with a smaller claim-set (based upon high foreign fees for jumbo claims).

Finally, we should recognize that independent inventors are a smaller proportion of patent applicants than ever before – as is the proportion of applicants that file without the advice of a patent attorney.  The very-small claim sets tend to come from these groups of independent inventors and those who do-it-yourself.

Some folks believe that restriction practice is also to blame here, but I have not thus-far found a significant increase in restriction requirements during this time.  (Percentage of applications filed as divisionals is down during this time period).

Good or Bad?: Perhaps a question for a different post, but the standardization has some important benefits: reducing transaction costs between applicant and attorney and facilitating better management of patent examiners.  The lower number of claims may also make it easier for third parties to understand the scope of what is claimed — however this is only true if the ‘extra’ claims are not simply being replaced by an ‘extra’ patent.