Tag Archives: Written Description

35 U.S.C. 112 SPECIFICATION. (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

Guest Post by Prof. Collins – Williamson v. Citrix Online: And Now Comes the Difficult Part

Guest post by Professor Kevin Emerson Collins, Professor of Law at Washington University Law School. 

In its en banc decision in Williamson v. Citrix Online, the Federal Circuit held that there is no “strong” presumption that functional claim limitations that do not use the term “means” are not subject to the rules of means-plus-function claim construction laid out in section 112(f). There is still a presumption that claims that do not employ the term “means” are not means-plus-function claims, as Jason Rantanen explains in his earlier PatentlyO post on Williamson, but, in theory, this only requires the patent challenger to satisfy a more-likely-than-not burden of persuasion.

I understand Williamson to shift Federal Circuit case law on two distinct axes at the same time. First, as a matter of substance, it makes broad, functionally defined claims more difficult to obtain. The scope-narrowing rules of 112(f) now apply to a larger number of functionally defined limitations: a limitation that not employ the term “means” should now be governed by 112(f) whenever it “fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Second, as a matter of form, Williamson makes patent law less rule-like and more standard-like. Courts may no longer use the rule-like, strong presumption that 112(f) does not apply when functional limitations do not employ the term “means.” Rather, whenever prompted to do so by a patent challenger, they must scrutinize the claim language on a case-by-case basis to see if it recites a sufficient quantum of structure in order to determine whether section 112(f) applies.

In my opinion, all things being equal, the substantive shift discussed above is a positive development. Unbridled functional claims over-reward an inventor and impose undue costs on society.[i] The strong presumption that functional claim limitations not using “means” avoided the scope-narrowing rules of 112(f) made such functional claims too easy to obtain. However, there is more work to be done to fully effectuate this substantive shift. For example, it is far from clear that the Federal Circuit will ever apply 112(f) to a method claim, despite the express mention of “step for” claims in the text of the statute. So, patentees can perform an end-run around Williamson and obtain broad, functionally defined claims simply by seeking a method claim rather than a product claim—a tactic that is particularly useful in the software arts where claims can be easily transformed from systems to methods and back again.

Nevertheless, being in a charitable mood, let’s assume all of the loopholes get closed and that all claims reciting “function without reciting sufficient structure for performing that function” are really subject to 112(f) after Williamson. It is at this point that we have to roll up our sleeves and begin the truly hard part of the work that is needed to reform functional software patents.

Bringing 112(f) to bear on software patents is tricky because the statute depends on a dichotomy between structure and function that simply does not exist in the software arts as a matter of fact. Although there is unquestionably a gray area, the structural and functional properties of a technology in the mechanical arts are, at their core, ontologically distinct to a philosopher and intuitively distinct to the rest of us. The description “coiled spring” denotes structure; the description “capable of generating kinetic energy when jostled” denotes function. However, this distinction vanishes in the software arts: most software inventions are function all the way down.[ii] Software is a powerful technology precisely because a programmer can remain ignorant of the physical, structural properties of a computer while specifying the functions that the software performs. Software functionality is therefore like a never-ending set of nested Russian dolls: you open up one more general functional description to look for structure, and all you find is another, more specific functional description. Patent law can, and does, identify an “algorithm” for performing a function as structure for legal purposes in a software claim, but it is importantly only metaphorical structure. An algorithm is a series of more specific steps for performing a more general function, but each of the steps in an algorithm is, in turn, specified only in functional terms. What is an algorithm as the term is used in patent law? It is a functional description of a software program that is specific enough that we are willing as a matter of patent policy to treat it like we treat a structural description in other arts. That is, the function-structure distinction in software is not a difference of kind but a difference of degree. Structure in the law of software patents is a legal fiction that has been manufactured to achieve patent policy goals.

The true challenge post-Williamson will therefore be identifying the level of specificity at which a functional description should count as metaphorical structure. Michael Risch alludes to this problem in his blog post on Williamson when he asked “[H]ow much structure is enough?” However, I think that a question precedent to Risch’s question is both more difficult and fundamental, namely “When is there any structure at all?” What level of specificity in a functional description counts as metaphorical structure?

To date, the Federal Circuit has answered this question with another layer of formalism that Williamson does not touch: any functional description in the specification that is more specific than the functional description in claims is likely to be metaphorical structure and thus an algorithm. This rule makes no sense from a policy perspective because the level of generality specified in a claim is often arbitrary. If a claim recites function A and the specification recites algorithmic steps 1, 2, and 3 for function A, a valid claim encompasses steps 1, 2, and 3 and their equivalents. However, if the claim were to directly recite functions 1, 2, and 3 (which are identical to steps 1, 2, and 3) without a more specific set of algorithms for those functions in the specification, then the claim is invalid for indefiniteness.[iii] The Federal Circuit’s approach to identifying algorithms is more like ducking the important question than providing an answer to it.

To be honest, I still waffle in my opinion on how hard the challenge of assessing the validity and permissible scope of functional software claims will be after Williamson. Some days, the problem seems difficult but tractable (although maybe not by an Article III court). Perhaps what we need to do is get patent lawyers, software engineers, and economists around a table. Perhaps they can articulate clear guidelines identifying a level of specificity at which functional software claims should be upheld, i.e., a level that identifies an algorithm and thus metaphorical structure. But, on other days, I’m less convinced that there is a tractable solution. Maybe the difference between a functional description of software and a software algorithm is like the difference between ideas from expression in copyright law, given that both differences are based on a levels-of-generality problem. Maybe therefore “[n]obody has ever been able to fix that boundary, and nobody ever can.”[iv] While the amount of uncertainty that follows from the idea/expression dichotomy may be acceptable in copyright law, the same amount of uncertainty in a function/algorithmic-step dichotomy in the law of software patents may not be.

In sum, although I believe that Williamson shifts the substantive reach of patent protection in the right direction, the costs of the inextricably linked shift toward a standard and away from a rule may, or may not, turn out to be too much to bear. If they are too much, then the need for a more rule-like patent regime will force us to choose doctrine that is either quite over-protective (e.g., that returns to the pre-Williamson strong presumption) or quite under-protective (e.g., that eliminates pure software patents altogether) as a substantive matter. Yet, despite the existence of these many possible futures, at least one thing is clear in the immediate aftermath of Williamson: the hard work of reforming functional software patents can now begin.

[i] The normative argument here is more complicated than is often presumed. For my take on why functional claiming should not be allowed, see Kevin Emerson Collins, Patent Law’s Functionality Malfunction and the Problem of Overbroad, Functional Software Patents, 90 Wash U. L. Rev. 1399, 1411–24 (2013).

[ii] To be clear, software only works because a programmed computer has certain physical, structural properties. But, the physical, structural properties of the programmed hardware are irrelevant to the definition of what constitutes a software invention. For more on what it means to say software is “function all the way down,” or to call software a purely functional technology, see id. at 1440–43.

[iii] Id. at 1463–67.

[iv] Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930).

Williamson v. Citrix: En Banc Opinion on § 112, para. 6

By Jason Rantanen

Richard A. Williamson v. Citrix Online, LLC (Fed. Cir. 2015) Download Opinion
Panel: Moore, Linn (author), and Reyna.  Part II.C.1. decided by the court en banc.
Judge Reyna concurred as to the conclusion of indefiniteness, but maintained his dissent as to a claim construction issue decided by the panel.  Judge Newman dissented as to Part II.C.1.

In the original panel opinion in Williamson v. Citrix (discussed here), the majority held that the use of the word “module” does not invoke the means-plus-function language of 35 U.S.C. § 112, para. 6, and thus the claim was not indefinite under the Federal Circuit’s § 112, para. 6 precedent.  In reaching that conclusion, the majority held that because the claim did not use the word “means,” there was a “strong” presumption that § 112, para. 6 does not apply.  Citrix sought en banc review.  (Disclosure: I joined an amicus brief encouraging the court to grant en banc review due to the intra-circuit split on this issue).

This morning the Federal Circuit withdrew the earlier opinion and substituted a new one, with an en banc section addressing the means-plus-function issue.  The en banc court reversed the precedent creating a “strong” presumption,  holding that the standard is “whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”  Slip Op. p. 16.  If the words of the claim do not meet that standard, § 112, para. 6 (now § 112(f)) applies.

35 U.S.C. § 112, para. 6 states:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.

Although there is a presumption based on the presence or absence of the word “means,” that presumption is rebuttable:

In making the assessment of whether the limitation in question is a means-plus-function term subject to the strictures of § 112, para. 6, our cases have emphasized that the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.

Id. at 14. Under Federal Circuit precedent from the 1990’s, “the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite[] sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.”  Id. (citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000).

Subsequent cases raised that presumption first to a “strong” one (Lighting World), then to a “strong one that is not readily overcome” (Inventio), and then to an even higher bar: “[w]hen the claim drafter has not signaled his intent to invoke § 112, ¶ 6 by using the term ‘means,’ we are unwilling to apply that provision without a showing that the limitation essentially is devoid of anything that can be construed as structure” (Flo Healthcare Solutions) (emphasis added by court).

The court considered this heightened standard and eliminated it:

Our consideration of this case has led us to conclude that such a heightened burden is unjustified and that we should abandon characterizing as “strong” the presumption that a limitation lacking the word “means” is not subject to § 112, para. 6. That characterization is unwarranted, is uncertain in meaning and application, and has the inappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale. It has shifted the balance struck by Congress in passing § 112, para. 6 and has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute. Henceforth, we will apply the presumption as we have done prior to Lighting World, without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as “strong.” We also overrule the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”

The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Greenberg, 91 F.3d at 1583. When a claim term lacks the word “means,” the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.” Watts, 232 F.3d at 880. The converse presumption remains unaffected: “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies.” Personalized Media, 161 F.3d at 703.

Applying the pre-Lighting World standard, the court concluded that the term “distributed learning control module” was governed by § 112, para. 6.  That term is part of a larger passage that is “in a format consistent with traditional means-plus-function limitations.  It replaces the term ‘means’ with the term ‘module’ and recites three functions performed by the ‘distributed learning control module.'” Slip Op. at 17.  That term – module – is “a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para 6.”  Id. “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id.  And here, “the word ‘module’ does not provide any indication of structure because it sets forth the same black box recitation of structure for providing the same specified function as if the term ‘means’ had been used.”  Id. at 19.  Nor was there any other evidence that indicated that the term recited sufficiently definite structure.

The consequence of concluding that § 112, para. 6 applies was that the court moved to the second step of the means-plus-function construction: looking to the specification for corresponding structure.  Because the specification did not disclose adequate corresponding structure, the claim was indefinite.

Judge Reyna concurred in the conclusion reached by the court en banc, but expressed concern that the court’s approach sidesteps “underlying fundamental issues involving the development of functional claiming law since 1952 when 35 U.S.C. § 112, paragraph 6 was passed.”  Concurrence at 3-4.  Judge Reyna also dissented as to a claim construction issue decided by the panel.

Judge Newman dissented from the en banc ruling in Section II.C.1.  In Judge Newman’ view, the result of the court’s decision is clear: “additional uncertainty of the patent grant, confusion in its interpretation, invitation to litigation, and disincentive to patent based innovation.”

Update: Prof. Risch offers his thoughts on Williamson on the Written Description blog: http://writtendescription.blogspot.com/2015/06/the-past-and-future-of-functional.html

Grace Period Restoration Act of 2015

In the move to a first-to-file patent system, the U.S. narrowed its pre-filing grace period previously codified under 35 U.S.C. 102(b)(2010).  The new law enacted as part of the Leahy-Smith America Invents Act (AIA) continues to permit a one-year grace period but limits the scope of coverage only to a pre-filing “disclosure . . . of a claimed invention” (A) “made by the inventor or joint inventor or by another who obtained the subject matter directly or indirectly from the inventor” or (B) made subsequent to an (A) disclosure.  35 U.S.C. §102(b)(1)(A) and (B)(2015).  There are a number of questions up for interpretation regarding the AIA grace period. Examples: Does the grace period apply when the inventor’s initial disclosure is slightly different than the invention being claimed? Does the grace period apply when a third party publishes a modified version of the inventor’s original disclosure?

The proposed Grace Period Restoration Act of 2015 (H.R. 1791 / S. 926) is designed to “correct the drafting problem in the Leahy-Smith America Invents Act relating to the grace period.”  In particular, the bill would add a new section 102(b)(3) that creates a stronger first-to-disclose system.

The general hypothetical setup here is that we have a pending patent application or perhaps an issued patent (the claimed invention) that is being challenged based upon prior art whose effective date is less than one year before that of the claimed invention in question.  Pre-AIA, the applicant might be able to negate the that reference by showing prior-invention through a process often termed “swearing behind” the asserted art. However, under a first-to-file system, invention-date is no longer directly relevant.

The proposed AIA-amendment here would allow the patentee to negate the prior art so long as the claimed invention had been previously – but still within the one-year timeline – “publicly disclosed in a printed publication by a covered person in a manner that satisfies the relevant section 112(a) requirements.”

Thus, if the inventor (1) first discloses the invention in a way that satisfies the enablement and written description requirements of section 112(a) and (2) subsequently files the patent application within one-year of the disclosure; then the inventor will be immunized against any prior art whose effective date follows that disclosure.  To be clear here, the immunizing would require “public disclosure in a printed publication” and could either be done by an inventor or someone who obtained the information an inventor (either directly or indirectly).

The proposed language:

102(b)(3)(b) PUBLIC DISCLOSURE.—A disclosure by any person shall not be prior art to a claimed invention under subsection (a) or section 103 if

(i) the disclosure is made under subsection (a)(1) or effectively filed under subsection (a)(2) 1 year or less before the effective filing date of the claimed invention; and

(ii) before the disclosure described in clause (i) is made or filed, and 1 year or less before the effective filing date of the claimed invention, the claimed invention is publicly disclosed in a printed publication by a covered person in a manner that satisfies the relevant section 112(a) requirements.

Here, I have only excerpted the most relevant portions of the statutory proposal. In his remarks, Professor Hal Wegner has identified the proposed amendment as largely serving the purpose of “expand[ing] the definition of novelty under 35 U.S.C. 102 to roughly 1200 words, an unreasonable mass of verbiage that the sponsors couldn’t figure out.”

As proposed, the new grace period definition serves as a layer in addition to the grace period already available under 102(b).  The grace period already in existence is narrower in some ways but broader in others.  For instance, the triggering initial public disclosure need have been disclosed in a printed publication.

Time will tell whether the proposal has legs. It it does, I hope that we will first see a less cumbersome rewrite.

Docket Error Loses AT&T’s $40 Million Appeal

by Dennis Crouch

The Federal Circuit decision in Two-Way Media focuses on a narrow issue of appellate deadlines – with a 2-1 majority concluding that AT&T cannot recover from missing its deadline for filing a notice to appeal following resolution of the defendant’s post-verdict motions.

AT&T had apparently relied upon the court’s PACER/ECF docket and email notification that had incorrectly labeled the Court’s final order (JMOL denial) as a decision on a motion to seal even though the underlying PDF documents clearly denied the JMOL motions.  According to the appellate panel – that reliance was insufficient to excuse the delay.

The case is a cautionary tale warning against over reliance upon PACER/PAIR in docketing due-dates and particularly against automated docketing systems or docketing departments that rely primarily upon document headers to populate their information. Rather, the court writes here that “it is the responsibility of every attorney to read the substance of each order received from the court and that it is not sufficient to rely on the email notifications received from the electronic filing system.”

In the lawsuit, a jury found that AT&T infringed Two-Way Media’s U.S. Patent Nos. 5,778,187 and 5,983,005 under the doctrine of equivalents and that the asserted patent claims were neither anticipated or obvious.  The result then was a $27.5 million reasonable royalty verdict raised to about $40 million with interest.

= = = = =

The rules of appellate procedure provide that a notice of appeal must be filed within 30 days of the final judgment.  Fed R. App. Proc. 4(a)(1).  Here, that timeline was triggered with the Judge’s November 22, 2013 docketing of its orders denying JMOL.  However, AT&T claims that it did not have actual notice of the decisions until January 15, 2014 — well past the 30-day period.  AT&T quickly filed a motion with the district court to extend/reopen the appeal period pursuant to Federal Rules of Appellate Procedure 4(a)(5) and (6). Those provisions provide for “extending” the appeal period if “the party shows excusable neglect or good cause,” F.R.A.P. R. 4(a)(5)(A)(i), or “reopening” the appeal period when “the moving party did not receive notice … of the entry of the judgment.”  The district court denied that motion and the Federal Circuit has now affirmed – holding that the lower court’s decision was within its proper discretion.

The following is the Federal Circuit’s write-up on the district court findings:

In considering AT&T’s motion under Rule 4(a)(5), the court found that the AT&T had failed to show good cause or excusable neglect. Although the [Notices of Electronic Filing] communicated an arguably incomplete description of the orders, the district court noted that even a total lack of notice would not be enough, standing alone, to justify extending the time for filing an appeal. The court concluded that it is the responsibility of every attorney to read the substance of each order received from the court and that it is not sufficient to rely on the email notifications received from the electronic filing system. The court explained that the NEFs were sent to 18 attorneys at the two firms representing AT&T. The court further noted that assistants at those firms actually downloaded copies of all of the orders onto the firms’ internal systems. Finally, the court pointed to the fact that, on that same day, the court also issued orders denying the unsealed JMOL motion and entering a bill of costs—both of which produced accurately labeled NEFs. The district court therefore refused to extend the appeal period under Rule 4(a)(5). . . .

After concluding that AT&T’s neglect was not excusable, the court turned to AT&T’s request for relief under Rule 4(a)(6). . . . Here, the district court found that AT&T did receive notice of the entry of judgment when it received and downloaded those judgments from the electronic docket and that TWM would be prejudiced by the reopening of the appeal period, rendering Rule 4(a)(6) inapplicable.

On appeal, the Federal Circuit affirmed this reasoning.  Thus, no appeal and AT&T must pay the $40 million.

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The majority here was written by Judge O’Malley who has the tendency to give deference to district court judgments and be a stickler for following the rules of procedure.  Judge Dyk wrote in dissent – arguing that AT&T had proven its case of not receiving notice because the docket listing was incorrect.



Guest Post: The Layered Patent System

Guest post by Michael Risch, Professor of Law, Villanova University School of Law.  Professor Risch also recently joined the Written Description blog as a regular author.  The full article, forthcoming in the Iowa Law Review, is available here.

This follows my last guest post about my article A Generation of Patent Litigation and is the third in my Patent Troll Myths series of studies of the ten most litigious NPEs from 2000-2010. To recap, I gathered data on 1313 randomly selected patent cases distributed over a 25 year period in roughly the same proportion as the 917 cases filed by the most litigious NPEs over the same time period. The number of cases grew substantially starting in 2004. This led to 792 nonNPE patents versus 352 NPE patents, which indicates that the NPEs asserted the more patents per case. This article expands on the last one by looking at the technology categories for each patent as well as the initial source of the patent that wound up in litigation.

The results of my analysis confirmed much of what we already knew, but the data allowed me to demonstrate it. In short, patent litigation is a complex system made up of at least three layers: inventors and their assignees, patent plaintiffs, and technology. There are surely more layers, like defendants and licensees, but these three layers have some of the most relevance to patent quality. The problem is that most of our discourse examines one—or maybe a second—layer at a time, but rarely all three. Thus, we have NPEs versus producers, software versus pharma, individuals versus corporations. We rarely have data that includes all three of these layers in one place. When they are included, they are usually considered control variables rather than additional explanatory measures.

This study seeks the interconnection between the layers. I’ll give a few examples in this post, but there is a lot more detail in the paper.

Consider, for example, initial assignees. Both the random plaintiffs and the most litigious NPEs obtained a majority of their patents from product companies. And a substantial percentage of those companies were public for both groups (though about twice as many for the random plaintiffs). But not all product companies are created equal. Among the random companies, the initial assignees were bigger, better funded by venture and stock market investors, had more employees, and earned greater sales.

What does this mean? Any quality differences we might see between the NPEs and random plaintiffs might relate to the size and types of companies obtaining those patents. It also means that the technologies we see the NPEs enforcing might be the types of technologies that require less investment.

In fact, we do see different types of technologies. The following table shows the top five patent classes for each group with a comparison to the percentage held by the other group. The differences are stark. The paper shows the top 13 categories, and shows that 66% of the NPE patents are in the top 13 classes, while only 30% of the random group’s patents are in the top 13 classes.

Top NonNPE Classes Top NPE Classes
Class   NonNPE NPE Class   NonNPE NPE
514 Drug 4.17% 0.28% 379 Telephonic Comm. 2.40% 17.05%
362 Illumination 4.17% 0.28% 360 Mag. Info. Storage 0.00% 8.24%
348 Television 3.66% 6.53% 705 Fin. Bus. Meth. 1.01% 6.82%
424 Drug 3.54% 0.00% 348 Television 3.66% 6.53%
349 Liquid Crystal 2.53% 0.00% 709 Data Process. Trans. 1.89% 4.55%


When we break down by technology and by plaintiff type (two different layers), we see differences that weren’t apparent before. The graphs below show two categories, e-commerce, which has higher invalidation rates, and electric circuits, which has lower.


In electronic commerce, the nonNPE group saw no challenges – at all. Among the litigious NPEs, however, nearly half of the patents were challenged. When there was a decision on the merits, patents were completely invalidated about half as often as they were held valid. But much of the time, challenges were denied or pending at dismissal.

For electric circuits, however, patents were challenged at about the same rate. But this time it was the nonNPE group that was more likely to reach a decision on the merits – with validation more than twice as much as invalidation when there was a decision on the merits, but also a decision on the merits almost three-fourths of the time. Among the litigious NPE group, however, all of the challenges were denied or pending at settlement, and none went through to final judgment.

These are just two technology categories. The paper compares several others, including optics, chemistry, and medical instruments. It also considers results for different types of software (and for non-software).

As a final test, I ran a series of regressions to test the likelihood that a patent would be adjudicated to have any invalid claim. The full model is presented in the paper, but a few of findings stood out.

First, patents coming from failed startups had the highest correlation with invalidity, regardless of who enforced the patent.

Second, patents left unassigned at issuance were more likely to be invalidated whether asserted by either group (though individual obtained patents fared better when asserted by the random plaintiffs). However, the same was not true of patents assigned to inventor-owned companies. The data does not allow a causal inference, but there appears to be something about inventors starting their own companies that improves validity outcomes later.

Third, once source of the patent and type of plaintiff is controlled for, invalidity differences appear for only some types of technology. This is consistent with the graph I show above, but more rigorous. Thus, for example, cryptography patents are invalidated about one-third as often when we consider the source of the patent and type of plaintiff as compared to just looking at the average cryptography patent without patentee/plaintiff type. On the other hand, optics patents are invalidated at about the same rate, whether or not we consider the source or plaintiff type.

Fourth, these findings continue for software. Though software patents are, on average, invalidated more often than other patents (a finding consistent with other studies), when the type of patentee and plaintiff is considered, whether the patent covers software is no longer statistically significant.

This last point is ultimately the point of the article. When we consider all of the layers of the system rather than just the averages on any one layer, the picture gets far more complex. My data can’t answer every question, of course. After all, I only studied the most litigious NPEs. But even this sample shows the complexity. There’s much more I could write, but I’m out of space. The full article is here if you are interested in reading more.

Fenner v. Cellco: Judge Newman Speaks on Claim Construction

By Jason Rantanen

Fenner Investments, Ltd. v. Cellco Partnership (Fed. Cir. 2015) Download Fenner v Cellco
Panel: Newman (author), Schall, Hughes

In Fenner v. Cellco Partnership, Judge Newman adds another voice to the chorus of Federal Circuit judges reading Teva v. Sandoz as having little effect on the court’s routine review of district court claim constructions.  Here, the panel affirms the district court’s construction of the term “personal identification number” under what appears to be a de novo standard of review   Frustratingly, the opinion never states which standard of review it is applying either generally or to any given issue, but I read all of the issues it addresses as either consisting of intrinsic evidence or going to the “ultimate question” of claim construction.

Judge Newman’s Articulation of the Post-Teva standard of review.  The appellate analysis begins with the established reading of Teva as reinforcing a largely de novo standard of review for claim construction:

 We review de novo the ultimate question of the proper construction of patent claims and the evidence intrinsic to the patent. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015); id. (“[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo.”). The district court’s determination of subsidiary facts based on extrinsic evidence is reviewed for clear error. Id. at 835, 841.

After noting that the appellant’s argument rested on a plain meaning versus the specification & prosecution history tension, the opinion summarizes the claim construction process:

The terms used in patent claims are not construed in the abstract, but in the context in which the term was presented and used by the patentee, as it would have been understood by a person of ordinary skill in the field of the invention on reading the patent documents. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013) (“[A] term’s ordinary meaning must be considered in the context of all the intrinsic evidence, including the claims, specification, and prosecution history.”). Thus, a claim receives the meaning it would have to persons in the field of the invention, when read and understood in light of the entire specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1317 (Fed. Cir. 2005) (en banc). Any explanation, elaboration, or qualification presented by the inventor during patent examination is relevant, for the role of claim construction is to “capture the scope of the actual invention” that is disclosed, described, and patented. Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011).

In this articulation of the process, both the specification and the prosecution history play an important role.  But Judge Newman does not stop with this summary; she digs into the meaning of claim construction itself:

Words are symbols, linguistic embodiments of information sought to be communicated, and, as such, can be imperfect at representing their subject. The Supreme Court recently observed this challenge to patent claim interpretation, stating in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128-29 (2014), that “the definiteness requirement must take into account the inherent limitations of language,” and that clarity is required although “recognizing that absolute precision is unattainable.” When the disputed words describe technology, the terse usage of patent claims often requires “construction” in order to define and establish the legal right. Judicial “construction” of patent claims aims to state the boundaries of the patented subject matter, not to change that which was invented.

Beginning with the written description issue, the opinion concludes that the district court used that portion of the patent properly:

The foundation of judicial claim construction is the “written description” in the specification. The patent statute requires that the claims “particularly point[] out
and distinctly claim[] the subject matter” that the applicant regards as the invention. 35 U.S.C. §112(b). The district court appropriately consulted the description in the ’706 specification “for the purpose of better understanding the meaning of the claim.” White v. Dunbar, 119 U.S. 47, 51 (1886).

The prosecution history further bolstered the district court’s construction even though the examiner did not appear to have relied upon the relevant statements by the applicant in granting the patent:

Fenner argues that these purportedly limiting statements he made during prosecution do not limit the claims, arguing that the statements and the limitations discussed were not the basis for grant of the patent. However, the interested public has the right to rely on the inventor’s statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (“[A] patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation.”); Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1462 (Fed. Cir. 1998) (“The fact that an examiner placed no reliance on an applicant’s statement distinguishing prior art does not mean that the statement is inconsequential for purposes of claim construction.”)

The court also rejected the appellant’s arguments based on interoperability (concluding that the district court’s construction did not render the claim inoperable) and claim differentiation:

Although claim differentiation is a useful analytic tool, it cannot enlarge the meaning of a claim beyond that which is supported by the patent documents, or relieve any claim of limitations imposed by the prosecution history. See, e.g., Retractable Techs., 653 F.3d at 1305 (“[A]ny presumption created by the doctrine of claim differentiation ‘will be overcome by a contrary construction dictated by the written description or prosecution history.’” (quoting Seachange Int’l, Inc. v. C-COR, Inc.,413 F.3d 1361, 1369 (Fed. Cir. 2005))); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1302 (Fed. Cir. 1999) (“[T]he doctrine of claim differentiation does not serve to broaden claims beyond their meaning in light of the specification, and does not override clear statements of scope in the specification and the prosecution history.” (citation omitted)).




In re Papst Licensing: Federal Circuit Speaks on Claim Construction

By Jason Rantanen

In re Papst Licensing Digital Camera Patent Litigation (Fed. Cir. 2015) (Download In re Papst)
Panel: Taranto (author), Schall, Chen

In its first precedential opinion addressing claim construction after Teva v. Sandoz, a panel of Judges Taranto, Schall and Chen take the approach that it is business at usual for the court—at least, as long as only intrinsic evidence is involved.

The most significant aspect of this opinion is the relationship between this appeal and Teva.  Here, the district court heard from the parties’ experts on the technical background, but “declined to admit expert testimony or to rely on an expert declaration from Papst, stating that ‘the intrinsic evidence—the claims, the specification, and the prosecution history—provide the full record necessary for claims construction.”  Slip Op. at 7.  Given this posture, the Federal Circuit comfortably applied a de novo standard of review.  From the opinion:

We review the grant of summary judgment of noninfringement de novo, applying the same standard used by the district court. See Bender v. Dudas, 490 F.3d 1361, 1366 (Fed. Cir. 2007). The infringement inquiry, which asks if an accused device contains every claim limitation or its equivalent, Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997), depends on the proper construction of the claims. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). In this case, we review the district court’s claim constructions de novo, because intrinsic evidence fully determines the proper constructions. See Teva Pharm. U.S.A. Inc. v. Sandoz, Inc., 135 S. Ct. 831, 840–42 (2015). As we have noted, the district court relied only on the intrinsic record, not on any testimony about skilled artisans’ understandings of claim terms in the relevant field, and neither party challenges that approach.

Slip Op. at 8.  Operating within this framework, the court drew upon its “familiar approach to claim construction”:

“We generally give words of a claim their ordinary meaning in the context of the claim and the whole patent document; the specification particularly, but also the prosecution history, informs the determination of claim meaning in context, including by resolving ambiguities; and even if the meaning is plain on the face of the claim language, the patentee can, by acting with sufficient clarity, disclaim such a plain meaning or prescribe a special definition.”…We apply, in particular, the principle that “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.”

Slip Op. at 9-10 (internal citations omitted).  Using that approach, the Federal Circuit reversed all of the district court’s claim constructions at issue.

While this appeal appears to involve Teva‘s paradigmatic scenario in which de novo review is appropriate, future appeals are less likely to offer such a relatively simple posture.   Rather, the expectation is that district judges will seek to insulate themselves from review by relying upon evidence that the Supreme Court said is due deferential review.  This increasing reliance on extrinsic evidence by district courts will result in appeals that intertwine the intrinsic with the extrinic.  That said, the above sections of the opinion suggest to me that the court is probably going to focus its review on the intrinsic evidence first and, if that is clear, will decide the appeal on that ground alone.

There’s another layer of complexity going on here that relates to the starting meaning* of words.  In Teva, the Court observed that:

Construction of written instruments often presents a “question solely of law,” at least when the words in those instruments are “used in their ordinary meaning.”…But sometimes, say when a written instrument uses “technical words or phrases not commonly understood,” id., at 292, those words may give rise to a factual dispute. If so, extrinsic evidence may help to “establish a usage of trade or locality.” []. And in that circumstance, the “determination of the matter of fact” will “preced[e]” the “function of construction.”…This factual determination, like all other factual determinations, must be reviewed for clear error.

Teva v. Sandoz at 5-6 (internal citations omitted).  A tension that emerges from this passage is the tension between “ordinary meaning” and “technical words or phrases not commonly understood.”  The latter, the Court’s opinion states, may be due deference; but when “ordinary meaning” is involved, it is a “question solely of law.”

Here, the claim construction did require some discussion of the ordinary meaning of words.  At issue was the meaning of the claim term “virtual files,” which the district court construed as meaning “files that appear to be but are not physically stored; rather, they are constructed or derived from existing data when their contents are requested by an application program so that they appear to exist as files from the point of view of the host device.”  Slip Op. at 21.  This construction, in the district court’s eyes, limited “the “virtual files” of the “virtual file system” to files “not physically stored on the interface device,” whose content is data “originating from the data transmit/receive device.”  Id.

In reversing the district court’s construction, the Federal Circuit began with its —not the district court’s—ordinary meaning.   “‘Virtual’ conveys some kind of as if action, one thing emulating another; the term was prominently used that way in the computer field at the time of the inventions here.  See CardSoft v. Verifone, Inc., 769 F.3d 1114, 1117–18 (Fed. Cir. 2014) (discussing Java Virtual Machine in patent dating to 1998).”  Slip Op. at 22.  With this meaning as the starting point, the CAFC concluded that the patent identifies this emulation as not turning “on whether data in a ‘virtual file’ is physically located in the interface device or a data device when the host seeks it.”  Id.

The district court, however, relied on a different source for its starting meaning:

The 1993 New IEEE Dictionary defined the term similarly to the construction proposed by the Camera Manufacturers. In the context of a “virtual record,” “virtual” was defined as: “a record that appears to be but is not physically stored; rather, it is constructed or derived from existing data when its contents are requested by an application program….The Court adopts the definition from the New IEEE Dictionary as the most clear and pertinent….”

In re Papst Licensing GmbH & Co. KG Litig., 670 F. Supp. 2d 16, 60 (D.D.C. 2009).  It’s unclear why the Federal Circuit didn’t address the district judge’s choice of starting meaning, substituting its own with no explanation of why.  It’s also not clear to me that the different starting point really matters for the ultimate issue of whether the claim term excludes files stored on the interface device.  But this kind of dispute, where a district judge relied on an extrinsic source for its starting point when construing a claim term, seems to be one that parties will try to make hay with in future appeals on claim construction.

*I’m using “starting meaning” to refer to the meaning that the party construing the claim term begins with; it may or may not be the “ordinary meaning.”  For some words, that may be our individual “mental lexicons,” as Kristen Osenga has described ; for other words, those meanings may come about when we look up the word in a dictionary.  For court opinions on claim constructions, the court will sometimes, but not always, state what it’s using as the starting meaning for a term.  Here, the Federal Circuit started with its meaning from the cited case, while the district court began from the point of the IEEE dictionary and the OED.

Teva v. Sandoz: Partial Deference in Claim Construction

by Dennis Crouch

As President Clinton taught, the meaning of words is always up for debate.  In the patent realm, actual claim scope often depends upon the particular meaning given to the individual words and terms.  We have seen that claim construction can vary widely – easily flipping the outcome of cases.  Litigators know the construction is only ‘probabilistic’ until decided by the court.  And, district courts know that their decisions are likely to be overturned – at least partially because claim construction is a question of law reviewed de novo and without deference on appeal

In Teva v. Sandoz, the US Supreme Court has changed the litigation game – holding that factual conclusions that underpin claim construction rulings must be reviewed for “clear error” – i.e., given substantial deference on appeal.

Up-to-now, many litigants have not worried much about the fact/law divide because all aspects of a claim construction decision were to be reviewed de novo in the eventual appeal.  More-so, district court litigants have likely shaded toward arguments asking for legal conclusion because those conclusions do not require the same level of evidentiary support as factual conclusions.  I expect for (some) litigants and district courts to shift their behavior and focus much more on evidentiary aspects of the case — such as the understanding of a person having ordinary skill in the art at the time of the patent.  The traditional approach is for plaintiffs to focus more on facts so that the case will end if they win at the district court level and for defendants to focus more on legal issues that – in case of a loss – are more easily appealable. Thus, on balance, the outcome here likely favors patentees as compared to the prior full de novo review system.

Under the new rule, determinations regarding evidence “intrinsic to the patent” will continue to be reviewed de novo on appeal. This intrinsic evidence includes both the patent document and the prosecution history of record.  The change, is that conclusions regarding other evidence considered – so called “extrinsic evidence” – are subject to the ordinary fact-finding rules of court and will be reviewed with deference on appeal.  Finally, the Supreme Court was also clear that application of the extrinsic evidence to the patent-in-question will also be seen as an issue of law reviewed de novo.

A major open question is the extent that the decision here modifies the standard approach to claim construction that has been explained by the Federal Circuit in Phillips v. AWH Corp – namely the rule that extrinsic evidence is of secondary importance and perhaps should not be considered absent ambiguity in the intrinsic evidence.  In my view, that approach is contrary to the rule that the interpretation should be based upon the contemporary understanding of a person having ordinary skill in the art.

At the prosecution level there is a bit of a logical conundrum – parties that present factual evidence during prosecution may get the USPTO to make factual conclusions and agree with that construction. However, if the case later goes into litigation that evidence and those conclusions will be seen as purely intrinsic evidence and thus given no deference in a Federal Circuit appeal.  It will be interesting to see how this works on a contemporary basis for the administrative post-issuance review proceedings where any testimony or extrinsic evidence presented instantly becomes part of the prosecution history record.

The 7-2 majority opinion was penned by Justice Breyer and joined by Chief Justice Roberts and Justices Scalia, Kennedy, Ginsburg, Sotomayor, and Kagen. Justice Thomas wrote in dissent an was joined by Justice Alito.

Statute vs Contract: In his dissenting opinion, Justice Thomas drew an analogy between claim construction and statutory construction and found that neither involve “finding of facts” even when conclusions are drawn from extrinsic evidence.  At least at a rhetoric level, this argument makes tremendous sense – the word “patent” itself references a publicly documented grant by a sovereign – something that seems awfully close to a statute.  Replying to the dissent, Justice Breyer argues for stare decisis — pointing to the fact that the Court already ruled in Markman that claim construction can have “evidentiary underpinnings.”  Rather, the majority links claim construction to that of a deed or contract where factual conclusions are sometimes needed.

Federal Circuit Exceptionalism: A theme running through most recent Supreme Court patent cases is that, when applicable, common-law patent doctrines should follow the common law approach rather than some specialized patent rule. Here, one aspect of the majority opinion is that the process of patent claim construction should look like the process of construing a deed or contract.  As Professor Ouellette wrote this morning: “Today’s opinion joins a long line of Supreme Court decisions rebuking the Federal Circuit for patent law exceptionalism.”  Of course, the link to deeds and contracts only goes so-far because with claim construction we’re not really looking to figure out what the patentee intended by the words but rather what is the proper public understanding of the words (as J. Scalia noted). Nevertheless, it will be interesting to see how district courts fare with that analogy and the extent to which the Federal Circuit is accepting.

Cybor No Longer Subject to Challenge: The Federal Circuit’s decision in Cybor has long been subject to renewed efforts for en-banc review. This happened most recently in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp. (Fed. Cir. 2014) (En banc).  Although the Supreme Court here modified Cybor and Lighting Ballast, it also foreclosed future challenges to increase the level of deference. Rather, the Court is clear in Teva that – apart from factual conclusions regarding extrinsic evidence – that no deference should be given on appeal.


Masking the Problem of Claim Ambiguity: My problem with the decision is that giving deference on appellate review only masks the major problem that claim scope is not well understood until decided by a court. Claim scope should be clearly understood at the time of issuance rather than years later following an expensive litigation effort.

Guest Post by Prof. Chiang: A Response to Hrdy and Picozzi

Professor Tun-Jen Chiang is an Associate Professor of Law at the George Mason University School of Law.  Below, he responds to Camilla Hrdy and Ben Picozzi’s commentary on The Interpretation-Construction Distinction in Patent Law.  As with the previous two posts in this series, the real name policy applies to comments on this post. 

Thanks to Jason and Dennis for inviting me to post, and to Jason for the extremely flattering introduction. I should make clear at the outset that I am only speaking for myself, not my coauthor, on this blog, though of course the article represents our joint views.

A brief recap for those who have not read (or only skimmed) the article. The article’s primary claim is conceptual. The claim is that in making decisions pursuant to text, courts necessarily engage in a two-step process: (1) they read the text and try to discern its linguistic meaning, i.e. the meaning of the language, qua language, to members of the intended audience, and (2) they determine the legal effect of the text by rendering a decision. We call the former “interpretation” and the latter “construction.” The key point is that linguistic meaning and legal effect are not always the same, and therefore uncertainty over the legal scope of patent claims does not necessarily arise because of linguistic ambiguity.

A couple of clarifications at the outset. The first is that our definition of “construction” is simply giving text a legal effect—it does not care whether that legal effect is consistent with statute, precedent, and text or not. Camilla’s articulation (where judges “‘construe’ the claims according to their normative beliefs about what the claims’ legal effect should be”) potentially gives the impression that we define construction as only when judges act as super-regulators who engage in free-floating first-order policy analysis. This is not correct. Even the most restrained judge who makes decisions strictly in accordance with statute, precedent, and/or claim text engages in construction, because his decisions necessarily give the claim text a legal effect.

Second, our claim is conceptual, not normative. Our claim is not that interpretation is good or that construction is bad; our claim is that both are intrinsic to the activity of claim analysis, so there is really no “good” or “bad” about the matter. And because our claim is conceptual, our doctrinal prescriptions are very limited. We do not opine, for example, whether courts should give more or less weight to dictionaries, or specifications, or anything else.

The sum is that we are not trying to push a textualist or plain meaning agenda, and we are not trying to suggest that judges who engage in construction are judicial activists who ought to be impeached. Our goal is to simply provide more clarity in analysis and a better diagnosis for what ails patent claims. Specifically, we argue that the uncertainty in patent claims is not caused by linguistic ambiguity, but by methodological disagreement among judges about whether to construe claims according to the patentee’s actual inventive contribution, or instead according to the linguistic meaning of claim text written by the patentee (which is likely to be broader than the real invention).

It is at this point that Hrdy and Picozzi’s response comes in. Hrdy and Picozzi agree with us that methodological disagreement, rather than linguistic ambiguity, underlies disagreements over claim construction. But, they argue, the root source of methodological disagreement in patent law is more narrow than in other areas of law. That is, according to Hrdy and Picozzi, in areas such as constitutional law, “judges are relatively free to interpret and construct the text based on their prior beliefs about which policy outcomes or which form of interpretive methodology (e.g., textualism or anti-textualism) is superior.” But in patent law, they argue, judges are constrained by the Patent Act, and so disagreements over claim construction do not stem from free-floating beliefs about desirable policy outcomes, but instead are tethered to more mundane and legalistic disagreements about the proper statutory construction of the disclosure requirements of 35 U.S.C. § 112. In particular, they argue that “judges’ approaches to claim construction closely followed—and were likely influenced by—their constructions of section 112(a)’s written description requirement and section 112(b)’s definiteness requirement.”

It might perhaps surprise Hrdy and Picozzi to discover that I agree that judges’ approaches to claim construction largely parallel, and are likely influenced by, their positions on § 112. Yet I do not think this defeats my argument. As an initial matter, I would note that, even if Hrdy and Picozzi are correct that disagreements over claim construction stem from narrow legalistic disagreements about the proper understanding of § 112, that would not contradict the core claims of the article—the basic point that disputes about claim analysis are mostly disputes about legal methodology rather than linguistic meaning would still stand. In that sense Hrdy and Picozzi’s argument is less a refutation and more in the nature of a follow-on contribution. But I also think there is a deeper disagreement: Implicit in Hrdy and Picozzi’s con-law-is-different argument seems to be the contention that disagreements about § 112 are not based on beliefs about desirable policy but instead are narrow, mundane, and legalistic debates unencumbered by ideological priors. I think this contention is flawed and that their evidence is more consistent with an alternative hypothesis, namely that judges show a consistent pattern across several doctrinally-distinct issues—claim construction, § 112(a), § 112(b)—because they are influenced by their underlying beliefs about desirable policy (specifically, beliefs about desirable patent scope) in all of them. Judges who favor broad patents tend to construe claims broadly and read § 112 narrowly; judges who favor narrow patents tend to do the opposite. Rather than proving that patent law is not like con law, I submit that the Hrdy and Picozzi’s evidence tends to show that it is.


Guest Post by Camilla Hrdy on The Interpretation-Construction Distinction in Patent Law

Camilla Hrdy is the Center for Technology, Innovation & Competition Fellow at the University of Pennsylvania Law School and a Visiting Fellow at the Yale Law School Information Society Project.  Below, she comments on The Interpretation-Construction Distinction in Patent Law by Professors Chiang and Solum. The “real name” rule applies to comments on this post.

Uncertainty and unpredictability in claim construction outcomes is one of the most important problems in patent litigation today. But patent law isn’t the only context in which judges struggle to determine the meaning of legal texts. In a recent article in the Yale Law Journal, The Interpretation-Construction Distinction in Patent Law, T.J. Chiang and Lawrence Solum argue that construing a patent is no different from any other form of legal analysis performed by judges, whether in constitutional law, statutory law, or contract law. As in these contexts, judges proceed in two distinct stages when determining the legal meaning of a patent’s claims. First, they “interpret” the claims’ linguistic meaning. Second, they “construe” the claims according to their normative beliefs about what the claims’ legal effect should be. According to Chiang and Solum, uncertainty in claim construction outcomes is caused mainly by judges’ disagreements in the “construction” phase, not the “interpretation” phase. In other words, judges disagree over policy, not language.

In a response in the Yale Law Journal Forum, Ben Picozzi and I argue that the “interpretation-construction distinction” does not fully capture how judges construe patent claims because it does not take into account the difference between the statutory context in which claim construction occurs and the constitutional context in which the interpretation-construction distinction evolved. In constitutional analysis, judges are relatively free to interpret and construct the text based on their prior beliefs about which policy outcomes or which form of interpretive methodology (e.g., textualism or anti-textualism) is superior. In contrast, when judges construe the terms of a patent, they must do so in light of the requirements of the Patent Act – in particular, 35 U.S.C. § 112. Section 112 imposes several requirements for minimum disclosure and definiteness. If a patent does not meet these requirements, judges are obligated to find it invalid under one of several doctrines.

We agree with Chiang and Solum, as well as other commentators such as Thomas Krause and Heather Auyang, that significant policy disagreements underlie judges’ divergent views on the legal meaning of patent claims, and that one of the major debates is whether claims should be interpreted broadly, according to how a patentee wrote them, or narrowly, according to what the judge finds to be the “real invention.” But in our view, these debates are based on judges’ disagreements over the precise levels of disclosure and definiteness that section 112 requires. Simply put, what Chiang and Solum call “claim construction” versus “claim interpretation” is actually statutory construction. In our response, we analyze the major claim construction cases that Chiang and Solum use as examples of their theory and show that in each of these examples, the judges’ disagreement over the meaning of the claims at issue was motivated by their disagreement over the meaning of the statute. Specifically, judges’ approaches to claim construction closely followed—and were likely influenced by—their constructions of section 112(a)’s written description requirement and section 112(b)’s definiteness requirement.

Our disagreement with Chiang and Solum is not just theoretical. It is highly relevant for the Supreme Court’s upcoming decision in Teva v. Sandoz, where the Court will decide what standard the Federal Circuit must apply in reviewing district courts’ claim construction decisions. Is claim construction a purely legal question that must be reviewed de novo? Or should at least some aspects of claim construction be reviewed under the more deferential “clear error” standard ordinarily applied to district courts’ factual findings? Most commentators—and the Solicitor General—argue that many issues that arise in claim construction, such as expert testimony on the level of ordinary skill in the art, are factual issues that should be reviewed deferentially. Chiang and Solum disagree, arguing that claim construction should be treated as a question of law and reviewed without deference. The reason they give for their somewhat unusual stance is their view that many important disputes over claim meaning involve construction, not interpretation of claims. If district courts were free to engage in construction without significant oversight from courts of appeal, this would increase, not reduce, uncertainty in outcomes, with “hundreds of district court judges across the nation each following their own individually preferred methodologies in the individual cases that come before them.”

We agree with Chiang and Solum’s conclusion that some purely legal questions underlie judicial disagreements over the meaning of patent claims and that many of these questions are in need of appellate review. But this is because they are questions of statutory construction. Judges disagree over issues like the contours of section 112’s disclosure and claim definiteness requirements, and consequently disagree over the proper construction of claims.

On this view, granting deference to district courts with respect to questions that do not involve statutory construction would not necessarily increase uncertainty and disuniformity in claim construction outcomes. Moreover, even if the Federal Circuit must review many facets of district courts’ claim construction decisions under the more deferential clear error standard, the Federal Circuit could still do much to increase certainty by resolving a number of outstanding statutory debates. For instance, does section 112(a), which the Federal Circuit has held contains a separate written description requirement, also require claims to be construed according to what the inventor “actually invented,” as Judge Lourie and other members of the court have suggested in several claim construction decisions? Does section 112(b), as construed by the Supreme Court in Nautilus v. Biosig, require courts to review more expert evidence in order to determine whether a patent’s claims would inform those skilled in the art “with reasonable certainty” about the scope of the invention?

If the Federal Circuit or the Supreme Court cannot resolve such issues, then Congress should amend the statute to provide greater clarity. This is how patent law has historically progressed and, we believe, is how lawmaking should work within a well-functioning statutory framework. Chiang and Solum’s analysis is a good start, but it doesn’t take this framework into account. Doing so would lead to conclusions that are less pessimistic and more complete.

What Makes a Proper “Error” for a Reissue Application?

Hoyt Fleming v Escort (Fed. Cir. 2014)

The GPS patents in suit are Fleming’s Reissue Nos. RE39,038 and RE40,653.  Although several of the asserted claims were found invalid due to Escort’s prior invention, some of the claims were found both infringed and not invalid.

Part of the appeal involves the question of whether reissue was proper.  Under Section 251 of the Patent Act, a reissue must be based upon an “error” in the original.  Reissues granted where there was no “error” can be invalidated for improper reissue.  Thus, the dividing line between error and no-error is important.  Here, the court repeats is prior precedent that errors include both slips of the pen errors as well as those arising from a deficient understanding of law or fact.  However, a drafting choice is not an error simply because it is later regretted.

Fleming apparently drafted the original patent claims from his perspective as a computer programmer rather and that led to him not appreciating the full scope of his patentable invention.  In the appeal, the Federal Circuit agreed with the patentee that this is “a classic reason that qualifies as error” under the reissue statute.

It identifies a deficient understanding of some combination of fact and law bearing on the meaning of claim language, the inventions disclosed in the written description, and how particular language does or does not map onto products or processes that could be claimed under section 251 consistent with the written description.

One important factor in why Fleming wanted the reissue was to capture later developments in the marketplace that were disclosed in the application but not captured in the original claims. Although that appears akin to ‘regret’ rather than original error, the Federal Circuit ruled that the market reason for the change will not disqualify an otherwise proper reissue.

[T]he fact that it was marketplace developments that prompted Fleming to reassess his issued claims and to see their deficiencies, does not alter the qualifying character of the reason for reissue. Erroneous understandings of the written description or claims are just that, regardless of what triggered the recognition of error in those understandings.

Verdict Affirmed.

Issue Preclusion in Relation to a Larger Patent Portfolio

By Dennis Crouch

One risk of claim construction is potential for inconsistent judgments between different district court judges who each are required to construe disputed claim terms.  In e.Digital v. Futurwei (Huawei), the district court cut this knot by applying the doctrine of collateral estoppel (issue preclusion) to preclude the patentee from seeking a construction that varied from that of a prior court.  On appeal, the Federal Circuit has largely affirmed — however, the appellate panel rejected the notion that collateral estoppel applies to the construction of identical terms found in a second asserted patent since that second-patent was not at issue in the prior case and had material differences. [Read the Court Decision]

Due process generally requires Courts to allow parties a chance to make their case. However, the doctrine of collateral estoppel blocks parties from re-litigating issues that had already been finally decided.  Generally, the issue being precluded must have been actually litigated by the party being precluded and necessarily decided as part of a valid final judgment.  Because claim construction is an interlocutory decision and subject to modification, preclusion does not kick-in until a final judgment is awarded.

Here, a prior Colorado Court construed the terms of e.Digital’s U.S. Patent Nos. 5,491,774. The ‘774 patent covers a handheld audio recorder/player. All of the asserted claims require  “a flash memory module which operates as the sole memory of the received processed sound electrical signals” (sole memory limitation).  The patentee argued that this sole-memory-limitation should not rule-out the use of microprocessors that also require RAM to operate.  The Colorado district court disagreed and held that the claims excluded any device with RAM. Under the arguably narrow construction it was clear that the accused infringers did not actually infringe and the parties stipulated to a dismissal of the case.

In the present action against Huawei, e.Digital asserted both the ‘774 patent and Patent No. 5,839,108.  Although the ‘108 patent is not an official ‘family member’ (e.g., not a continuation, CIP, or divisional), it does cover the same basic device and includes the identical sole memory limitation.

On appeal, the Federal Circuit found that, despite the identical limitation, it was improper for the district court to rely on issue preclusion to bar the patentee from litigating construction of the sole memory limitation term with respect to the ‘108 patent.

The ’108 patent . . . presents a separate claim construction issue. The ’108 patent is not related to the ’774 patent, but does disclose a purported improvement to the ’774 patent. While the ’108 patent may incorporate by reference the ’774 patent as prior art, it does not change the fact that the patents are not related. The ’108 patent discloses a separate invention, includes a distinct prosecution history, and is supported by a different written description—including Figures 3 and 4 which clearly depict RAM. These distinctions reinforce the well understood notion that claims of unrelated patents must be construed separately. Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1211 (Fed. Cir. 2002) (citing Abbott Labs. v. Dey, L.P., 287 F.3d 1097, 1104 (Fed. Cir. 2002)) (explaining that a claim of an unrelated patent “sheds no light on” the claims of the patent in suit). Because the asserted patents are not related, the ’108 patent requires a new claim construction inquiry and the court therefore erred in applying collateral estoppel to the ‘108 patent.

The holding here is partially based upon the fact that the two patents are not formally related according to the rules of priority.  However, the court added – in dicta – that issue preclusion might not apply even if they had been related.

To be clear, our decision that collateral estoppel cannot apply to the construction of a claim in one patent based on a previous claim construction of an unrelated patent is not an invitation to assume the opposite is always justified. That is, a court cannot impose collateral estoppel to bar a claim construction dispute solely because the patents are related. Each case requires a determination that each of the requirements for collateral estoppel are met, including that the issue previously decided is
identical to the one sought to be litigated. A continuation-in-part, for instance, may disclose new matter that could materially impact the interpretation of a claim, and therefore require a new claim construction inquiry.

The point here is that issues involving a related but previously un-asserted patent ‘might’ be subject to issue preclusion based upon whether the new patent requires consideration of arguments and facts that are distinct from the already issued patent.

Going forward, this case offers some considerations for patent portfolio management both at the filing/prosecution stages as well as the assertion stage.  This case, coupled with other prior Federal Circuit decisions provide value in splitting-up larger patents into smaller component patents and in potentially holding-back some patents from initial rounds of litigation.

Reissue Patent with Shifted Claim Focus Invalid: Not “clearly and unequivocally disclose[d] … as a separate invention.”

by Dennis Crouch

In Antares Pharma v. Medac Phama (Fed. Cir. 2014), the court has invalidated Antares’ reissue patent no. RE44,846 — finding that the reissued claims fail to comply with the “original patent” requirement of 35 U.S.C. 251.  This “original patent” requirement is roughly equivalent to both the written description requirement and the prohibition on new matter — all three basically require that the original patent specification disclose the particular invention now being claimed. Here, however, the court takes the requirement a major step further — indicating that the requirement is only satisfied if the newly claimed invention was described as the invention in the original disclosure.  The leading Supreme Court case on the topic is US Industrial Chem v. Carbide & Carbon Chem, 315 U.S. 668 (1942).  In that case, the Supreme Court held the asserted reissue invalid because claimed solution no longer required water even though the original specification had at least hinted that water was optional.  There, the court held that reissued claims must be “the same invention described and claimed and intended to be secured by the original patent.”   Under the Federal Circuit’s interpretation here, the requirement is that new or amended claims are only valid if the original specification “clearly and unequivocally disclose[s] the newly claimed invention as a separate invention.”  Going forward the biggest question is whether this requirement will also be extended to the written description requirement and new matter limitations.

Section 251 of the Patent Act creates the reissue process that allows a patentee to seek correction of errors in an original patent.  In the process, the patentee can broaden its patent scope, but only if the reissue application is filed within two-years of the original patent issuance. Further, a reissue application may not “recapture” scope that was surrendered during the original prosecution in order to obtain allowance nor may the reissue claim an invention that was not fully and expressly disclosed in the original written description.

Here, the patent covers the seeming torture device of a needle-assisted jet injector.  Soon after patent issuance, however, the patentee sought a reissue that removed the “jet injector” limitation and focused on novel safety features that were not originally claimed. The court writes:

The original specification here does not adequately disclose the later-claimed safety features to meet the Industrial Chemicals standard. The specification discussed only one invention: a particular class of jet injectors. . . . Although safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification. Rather, the safety features were serially mentioned as part of the broader conversation: how to build the patented jet injection device.  . . . Nowhere does the specification disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention. This does not meet the original patent requirement under § 251.

Based upon this failure, the patented claims are invalid for violating the original patent requirement of Section 251.

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This is an interesting and important case with regard to reissue applications and it may have important implications for the written description requirement as well.

A few limited remarks:

I should note first that the Federal Circuit here failed to explain how failure of the original patent requirement is a proper validity defense under 35 U.S.C. 282. [Update – I apologize, but I failed to express the point was thinking.  My basic point was that validity challenges for improper reissue are expressly stated in the statute while subject-matter challenges are not there.]

Second, the posture of this case is interesting – the patentee was appealing a denial of preliminary injunction. However, rather than simply affirming the denial (based upon likely invalidity), the Federal Circuit here ruled conclusively that the claims are invalid as a matter of law.

Finally, as alluded-to, this case appears poised to reach well beyond its reissue context and impact the entire population of patents under the context of the written description requirement.  Here, the court indicated that the standard from Industrial chemicals is “analogous to the written description requirement.”  Going forward, the USPTO may well begin limiting applications that shift claim focus under this newly revived doctrine.

Opinion by Judge Dyk, joined by Judges Reyna and Taranto.

The Vast Middle Ground of Hybrid Functional Claim Elements

FunctionalClaimsby Dennis Crouch

In Robert Bosch v. Snap-On (Fed. Cir. 2014), the Federal Circuit has held that two different claim elements “lack sufficiently definite structure” that must be interpreted under 35 U.S.C. 112(f) as means-plus-function elements and, because corresponding structures were not sufficiently disclosed in the patent document (as required by 112(f)), the associated claims were held invalid as indefinite.  Here the claim elements in question are a ‘program recognition device’ that plugs into a car motor to see if its control software is out of date and also a ‘program loading device’ that updates the control software if necessary.  U.S. Patent No. 6,782,313.

Functional claim limitations are in vogue.  Part of the reason is that the current generation of computer-focused engineers have been trained in an object oriented approach that discusses solutions more in terms of results than in detailed algorithmic steps.  That approach makes it easier to create new tools and devices by relying upon the building blocks created by others.  But, the carryover to patent law remains somewhat tenuous.

Functional claim terms also offer a mechanism for achieving broader claim coverage and claim coverage that is more aligned with the scope of potential competitor activities and follow-on innovation.  The use of functional language for that purpose has a century-long history in U.S. patent law and has been much debated at all levels, including the U.S. Supreme Court.

When the Supreme Court discussed the topic in its landmark 1946 decision of Halliburton v. Walker, the Court described functional claim terms as those that focus on results – “what it will do” – and not on the actual physical implementation.  In Halliburton, the court held:

A claim which describes the most crucial element in a “new” combination in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination, is invalid.

Id. The result in Halliburton was that the claim was found invalid under as indefinite because the functional language there (an “echo receiving means”) did not provide sufficient notice of the scope of patent rights.

The Patent Act of 1952 left intact a strong definiteness requirement but overturned Halliburton by enacting what is now known as 35 U.S.C. 112(f).  That provision expressly allows for an element to be claimed as a “means” for performing a “specified function” but without actually specifying the physical characteristics of how it works.  However, 112(f) has an important and significant limitation that cabins-in the scope of any such means limitation to only cover corresponding embodiments described in the patent document, and their equivalents.

(f) Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

A second limitation on 112(f) is the court interpretation that purely functional claim elements that are not physically described in the specification are deemed indefinite and the corresponding claim invalid.

US patent attorneys have taken notice of these legal limits on means-plus-function claiming and have largely abandoned the form. Twenty years ago, most patents included claim terms written in means-plus-function form. Today, that figure is under 5%.  But the strategy for many does not eschew functional claim elements, but rather to integrate functional limitations together with structural limitations with the result being broadly defined claim elements that avoids the limitations of 112(f).

The Big Middle Ground

Partially Functional Elements: The rules are clear for claim elements written in purely functional terms  such as a ‘means for communicating’ without any claimed physicality. However, there exists a vast middle-ground for claim limitations that include some functionality and some physicality.  These might include a ‘circuit for communicating’ or – as in the recent Bosch Case – a ‘program recognition device.’

In Robert Bosch v. Snap-On (Fed. Cir. 2014), the Federal Circuit has affirmed a lower court determination that two different functional claim elements are indefinite and thus that the associated claims are invalid.  The patents relate a motor vehicle software-update tool.  The claims include a ‘program recognition device’ that plugs into the motor control unit to see if the software is out of date and also a ‘program loading device’ that plugs into the motor control unit to upload new software. Easy enough.    But, the specification includes no diagrams and no real structural detail about these ‘devices.’

The Federal Circuit has a fairly straightforward algorithmic approach to functional claims elements. The first step it to determine whether the element qualifies as “functional” and, if so, interpret the limitation under the rubric of Section 112(f).  For the court, a functional claim element is one recites a functional limitation without “reciting sufficient structure for performing that function” or that fails to “recite sufficiently definite structure.” EnOcean GmbH v. Face Int’l Corp., 742 F.3d 955 (Fed. Cir. 2014). The court also uses a linguistic shortcut — claim elements drafted in the form “means for [performing a specified function]” are also presumed to be functional.   Similarly, elements that do not use the word “means” are presumed to be structural.  Importantly, Federal Circuit precedent indicate that these presumptions are “strong.” See Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004).

Here, although the terms were not claimed in “means” form, the court found that they lacked structure and therefore were functional.  In walking through its analysis, the court first looked at the claim words ‘program recognition device’ and ‘program loading device’ and found no structure other than the ‘nonce’ word device.  Then, looking at the specification, the court found:

[The] ‘313 patent’s specification does not contain a single reference to the structure of the “program recognition device” itself; all of the proffered citations from the specification merely explain its function. For example, the statement that the external diagnostic tester is “equipped” with the “program recognition device” that “querie[s] and recognize[s]” program versions in the control unit is nothing more than a functional description. This passage is devoid of structure. Likewise, the passage that explains how the external diagnostic tester uses the “program recognition device” to automatically check which program version is currently on the control unit only describes the connection of the external diagnostic tester to the control unit in the vehicle. The specification is, therefore, also silent about any interaction between the “program recognition device” and other components of the system, including the external diagnostic tester. Contrary to what Bosch contends, the specification does not teach how the “program recognition device” receives and processes signals, as the words “signal” and “process” are not even in the specification. . . .

Because the claim terms lack structure, the court determined that they fall under the rules of 112(f) [112p].

The claim terms, construed in light of the specification, fail to provide sufficiently definite structure to one of skill in the art. The claim terms “program recognition device” and “program loading device” invoke § 112, ¶ 6.

The problem for Bosch in this case is that the same analysis of the specification above also supports the conclusion that the claimed function lacks structural description in the specification. And, as a result, the court found the claims invalid as indefinite.

Since we have concluded that both claim terms invoke § 112, ¶ 6, we now must attempt to construe the terms by identifying the “corresponding structure … described in the specification” to which the claim term will be limited. Welker Bearing Co., 550 F.3d at 1097. “If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed.Cir.2007). On this point, however, little needs to be said. Bosch did not argue to this court that, even if the claim language at issue is within § 112, ¶ 6, the language is definite because the specification sufficiently discloses corresponding structure. See Appellant’s Br. 51–52. And we also see no such disclosure.

Indeed, as already discussed in Part III.B, in the limited number of instances that the specification even mentions these claim terms, it offers no further guidance about their structures. Therefore, we conclude that “program recognition device” and “program loading device” are indefinite. Since these terms are found in the only independent claim of the ‘313 patent, we conclude that all claims in the ‘313 patent are invalid.

An important element of the court’s analysis here is that it is all seen as a question of law reviewed de novo on appeal. Thus, although the appellate panel largely agreed with the lower court’s original decision in this case, that decision was given no deference in the analysis. Further, the strong presumption of validity requiring clear and convincing evidence was also entirely ignored here because that evidentiary requirement is directed toward questions of fact not questions of law.

A second important and interesting element of the court’s decision here is that it does not cite the Supreme Court’s most recent foray into indefiniteness – Nautilus v. BioSig (2014) (requiring reasonable certainty).  Likewise, the court did not cite Halliburton. In fact, the court has not cited Halliburton for almost 20 years and it has never cited the case other than to criticize the decision or indicate that it has been legislatively overruled by 112(f).

The case here is also in tension with those cited above: EnOceanLighting World, and Inventio. however, the court here took steps to distinguish those cases based upon the ‘fact’ that Bosch’s patent application failed to provide structure in the specification to guide one skilled in the art in understanding the ‘device’ limitation.  In the other cited cases, the specification included examples and diagrams sufficient to transform the seeming ‘nonce’ words into ones with structural meaning.

What will be interesting here will be to see whether this case is the beginning of a movement in a new direction.  This case’s path to the Supreme Court is most likely if the Federal Circuit first grants an en banc rehearing request.

Allison, Lemley & Schwartz on Patent Litigation

By Jason Rantanen

In 1998, John Allison and Mark Lemley published a groundbreaking empirical study of patent litigation, Empirical Evidence on the Validity of Litigated Patents.  Allison and Lemley’s focus in that article was on written, final validity decisions by either district courts or the Federal Circuit from 1989 through 1996.  The basic study design philosophy was to look at patent case outcomes; that is, what was the final outcome for patents that were litigated.  That study is still widely cited.

Working with Dave Schwartz, Allison and Lemley recently completed an updated (and much expanded) version of their 1998 study.  The results of that study are being published in several articles, but the one that links most closely with the earlier study is Understanding the Realities of Modern Patent Litigation.

Their undertaking in this project is truly quite impressive.  The authors expanded their scope to all available decisions (not just those that were published in the U.S.P.Q., as in the earlier study) for utility patent infringement suits filed in 2008 and 2009, and personally coded the relevant case information from the docket sheets, district court opinions, briefs, and Federal Circuit decisions for hundreds of cases.  As in the earlier study, the record unit they used were patent cases, with only final decisions for a given patent being counted; in other words, where there was more than one decision in a case, they reported the last final decision on the validity of the patent.  Thus, if there was a final Federal Circuit decision, it superceded a previous district court decision; if there was a remand and subsequent final decision by the district court, it superceded the Federal Circuit ruling, and so on.  Within this set of cases, Schwartz and Lemley coded information about the cases while Allison coded patent-specific information.

Study Findings

The vast majority of patent cases still settle: Out of the roughly 5,000 patent infringement suits filed in 2008 and 2009, only 290 patents went to trial.  All together, less than 10% of the patent suits filed in these years resulted in any merits decision (that is, a summary judgment ruling or trial).  The remainder settled before that point (although, the authors note, there are a small number of cases still pending that may add another 2-3% to the number of suits resulting in a merits decision).

More indefiniteness challenges: One notably change from the 1998 study was the dramatically grater number of indefiniteness challenges.  Out of the 555 summary judgment motions brought on validity issues by either the patent challenger or the patent holder, 176 decided summary judgment motions involved the issue of indefiniteness, a dramatic increase from the 1998 study.  And the authors observed a less substantial, but still noticeable, increase in summary judgment decisions based on patentable subject matter (26), a category that has likely continued to experience growth.  For context, there were 149 decided summary judgment motions on obviousness and 154 on anticipation.

Many arrows in the challenger’s quiver: In terms of the success rates on motions for summary judgment of invalidity, challengers tended to lose on individual issues: with the exception of patentable subject matter challenges, the percentage of successful summary judgment motions of invalidity was 20% or below for each individual issue (102, 103, indefiniteness, enablement, written description).  But, the overall rate of invalidation on summary judgment was 30% and the overall rate at which patent challengers successfully won on invalidity was 42%.  This is an example of what Lemley has called the “fractioning” of patent law; that is, the idea that a patentee must win every issue in a case while the accused infringer must prevail on only one issue; a particular challenge with patent law and its multiple grounds for invalidation.

Overall, patent challengers tend to win: Overall, patent holders tended not to win in cases that went to a definite merits resolution.  Overall, patentees won only about 26% of the time (164/636 definitive merits rulings).  In addition to invalidity, patent holders lost on frequently-brought motions for summary judgment of noninfringement 54% of the time (257/473) and infrequently obtained summary judgment on more rarely-brought motions for summary judgment of infringement (41/128).  Thus, although patentees had a fairly high success rate at trial (winning on 59% of patents when juries made the decision and 64% when the bench did), the 1-2 punch of summary judgment followed by trial meant that most patent cases that went to judicial resolution were resolved in favor of the patent challenger.

I’ve only covered some of the data presented in the paper and barely scratched the surface of the authors’ analysis.  If you’re interested in reading more, the article can be downloaded directly from the Texas Law Review’s website or via ssrn: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2442451 

The New Role for Post Grant Review Proceedings (PGR)

by Dennis Crouch

It has now been just over 18-months since we started filing patent applications under the new first-to-file patent system mandated by the America Invents Act (AIA) of 2011.  And, slowly but surely, FTF patents are now beginning to issue.  Those new patents also bring us into a new era of Post-Grant-Review-Proceedings (PGR).

My expectation is that PGR will quickly prove itself as an incredibly powerful tool for challenging patents. Importantly, PGR proceedings allow a third party to challenge the validity of a patent on any of the validity grounds that could be raised in court as a defense under 35 U.S.C. 282 – these include novelty, obviousness, written description, enablement, indefiniteness, utility, and subject matter eligibility. This list represents a major expansion of challenge-justifications over inter partes review (IPR) proceedings or reexaminations. These same doctrines have already been available for covered-business-method review (CBM) proceedings and have been used successfully if only on a narrow class of patents (those covering financial business methods).

Two recent PGR proceedings have been filed.  In one case, LaRose Indus. has challenged Patent No. 8,684,420 that covers the popular children’s “Rainbow Loom.”  Although the patent claims a 2010 priority date, the particular application was filed as a continuation in July 2013 and, at least according to the petitioner, added new mater to the claims at that point.  The second case PGR case involves Patent No. 8,598,291 that covers a liquid formulation of a particular nausea control drug used by chemotherapy patients. The petition argues that the claims fail the requirements of written description, enablement, and definiteness.

The most important limitation on the PGR process is the relatively short 9-month window for filing a PGR petition. Namely, the petition must be filed within 9-months of the patent issuance.  This puts some pressure on parties to monitor competitor patents and patent families.  It also provides patent owners at least some incentive to hold-off asserting their patent until after that window has closed (unless the patentee would welcome the review).  I suspect that the set-up in the LaRose Rainbow Loom market will be fairly common. The patentee (Choon) had previously sued LaRose on a previous patent and so LaRose has been closely monitoring the continuation applications.

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In thinking about how soon the AIA cases will come on-board, I created the chart below. The chart provides some information on the timing of patent issuance — showing the percentage of patents issued with 18-months of filing and 36-months of filing respectively.  A big caveat for this particular chart is that it looks at the actual application filing date and does not consider the priority date that will typically control whether a patent will be examined under the AIA. Thus, even at the three-year date (March 2015), I would expect that significantly less than half of the recently issued patents would be FTF patents.

You’ll note the trend beginning in FY2011 of issuing more patents more quickly.  I largely attribute the change to two initiatives pushed by David Kappos during his term as PTO Director that resulted in (1) more funding to hire more examiners; and (2) a greater allowance rate.  Those factors have continued through the succeeding interim leadership terms of Terry Rea, Peggy Focarino, and now  Michelle Lee.


Interval Licensing v. AOL: Post-Nautilus Indefiniteness

By Jason Rantanen

Interval Licensing LLC v. AOL, Inc. (Fed. Cir. 2014) Interval v AOL
Panel: Taranto and Chen (author)*

One of the most frequent criticisms of Nautilius v. Biosig is that it simply provides a  general standard (Section 112 ¶2 requires 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” ) and fails to offer any substantive discussion of what this meant.  In this post-Nautilius opinion affirming the district court’s ruling of indefiniteness, Judge Chen provides some of that guidance when it comes to words of degree.

Background. Interval owns the two patents-in-suit, Nos. 6,034,652 and 6,788,314, that claim priority back to 1996.  These patents are directed to a system that “acquires data from a content provider, schedules the display of the content data, generates images from the content data, and then displays the images on a device.”  The system does not simply initiate images on the display device, however.  Rather, almost all of the asserted claims state that the images are displayed “in an unobtrusive manner that does not distract a user.”  The idea is that the images will occupy the peripheral attention of a person in the vicinity of the display device while not interfering with their primary interaction with the device.  The main issue on appeal was whether this “unobtrusive manner” language was indefinite.

Representative claim 1 of the ‘314 patent (with emphasis added):

1. A method for engaging the peripheral attention of a person in the vicinity of a display device, comprising the steps of:
providing one or more sets of content data to a content display system associated with the display device and located entirely in the same physical location as the display device;
providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data; and
auditing the display of sets of content data by the content display system;
wherein the one or more sets of content data are selected from a plurality of sets of content data, each set being provided by an associated content provider, wherein each associated content provider is located in a different physical location than at least one other content provider and each content provider provides its content data to the content display system independently of each other content provider and without the content data being aggregated at a common physical location remote from the content display system prior to being provided to the content display system, and wherein for each set the respective content provider may provide scheduling instructions tailored to the set of content data to control at least one of the duration, sequencing, and timing of the display of said image or images generated from the set of content data.

Interval sued AOL, Apple, Google, and Yahoo for infringement.  In its claim construction order, the district court held the “in an unobtrusive manner” language indefinite under the pre-Nautilius standard, thus rendering invalid most of the asserted claims.  (The parties stipulated to noninfringement of the remaining claims based on the court’s claim construction).  Interval appealed.

Indefiniteness.  Under Nautilus, “[a] claim fails to satisfy [the Section 112, 2] requirement and is thus invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.'”  Slip Op. at 10, quoting Nautilus.  However, there is more to the inquiry than just this general statement.  Here, the term at issue was a term of degree.  That, by itself, was not fatal:

We do not understand the Supreme Court to have implied in Nautilus, and we do not hold today, that terms of degree are inherently indefinite.  Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention….As the Supreme Court recognized in Nautilus, “absolute precision” in claim language is ‘unattainable.'”

Slip Op. at 11 (internal citations omitted).  But meaningful boundaries – which Judge Chen indicates must be objective – are necessary; that one might identify some standard for measuring claim scope does not mean the claims meet the § 112 requirement:

Although absolute or mathematical precision is not required, it is not enough, as some of the language in our prior cases may have suggested, to identify “some standard for measuring the scope of the phrase….The Supreme Court explained that a patent does not satisfy the definiteness requirement of § 112 merely because “a court can ascribe some meaning to a patent’s claims.”  Nautilus, 134 S. Ct. at 2130. The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.

Id. at 12 (internal citations omitted).  Here, no such no such “objective boundaries” for those of skill in the art are provided in the patent:

The patents’ “unobtrusive manner” phrase is highly subjective and, on its face, provides little guidance to one of skill in the art….Although the patented invention is a system that displays content, the claim language offers no objective indication of the manner in which content images are to be displayed to the user. As the district court observed, “whether something distracts a user from his primary interaction depends on the preferences of the particular user and the circumstances under which any single user interacts with the display.”

The lack of objective boundaries in the claim language is particularly troubling in light of the patents’ command to read “the term ‘image’ . . . broadly to mean any sensory stimulus that is produced from the set of content data,” including sounds and video. ’652 patent, 6:60–64. The patents contemplate a variety of stimuli that could impact different users in different ways.  As we have explained, a term of degree fails to provide sufficient notice of its scope if it depends “on the unpredictable vagaries of any one person’s opinion.”

Id. at 13.  Nor did the written description provide the necessary guidance.  “Where, as here, we are faced with a “purely subjective” claim phrase, we must look to the written description for guidance.”  Id. But Interval’s principal argument, that “unobtrusive manner” is defined through its relationship to the “wallpaper” embodiment, thus informing those of skill in the art that “unobtrusive” has only a spatial meaning in the context of the patents, failed because the link was not clear: other portions of the specification suggest that the phrase may also be tied to the “screen saver” embodiment.  The specification is “at best muddled, leaving one unsure of whether the “unobtrusive manner” phrase has temporal dimensions as well as spatial dimensions.”  And it’s secondary argument, that the court must adopt a “narrow example” from the specification, failed because the “narrow example” from the specification was just that: an example, not a definition.  The patent drafter used the term “e.g.” (“exempli gratia”), which in English usage means “for example.”  If the drafter had instead used words of definition, such as “i.e.” (“id est” which in English usage means “that is”), it might have helped provide the necessary clarity.  Nor was one example sufficient here: “With this lone example, a skilled artisan is still left to wonder what other forms of display are unobtrusive and non-distracting. What if a displayed image takes up 20% of the screen space occupied by the primary application with which the user is interacting? Is the image unobtrusive? The specification offers no indication, thus leaving the skilled artisan to consult the “unpredictable vagaries of any one person’s opinion.”  Slip Op. at 18 (quoting Datamize).

Claim Construction/Noninfringement.  The Federal Circuit revised the claim construction of two terms in the four claims of the ‘652 patent that did not contain the “unobtrusive manner” language, vacated the district court’s judgment of noninfringement as to these claims, and remanded for further proceedings.

Nonobviousness: Not at issue here.  Are these patents obvious?  That’s a different question.  After the suit commenced, two of the defendants initiated an ex parte reexamination against the ‘652 patent and a third initiated an inter partes reexamination against the ‘314 patent.  While the examiners found the asserted claims of the patents to be patentable over the cited prior art,the PTAB reversed the decision on the ‘314 patent during the appeal in this case and held that all the claims of that patent were obvious, anticipated, or both.  The Federal Circuit opinion notes that Interval indicated that it will appeal that decision.

Judge Mayer Raises 101 When Not In Issue: Other Panelists Don’t

I am sure Dennis will do his usual full and grand treatment, but this one is sort of the counter-punch to Ultramercial. In I/P Engine, Inc. v. AOL Inc. (Fed. Cir. Aug. 15, 2014) (per curiam), the court split on whether the claims were properly found by the jury to have been not obvious, with Judge Chen dissenting on that point and the per curiam opinion reversing the finding of no invalidity. (The other panel members were Judge Wallach and Judge Mayer).

Recall that in Ultramercial the court emphasized that 101 was seemingly a defense, and so evidence was needed and the usual presumption of validity applied, and so on.  Here, Judge Mayer seemed to take precisely the opposite tact, though it’s not quite clear.  In addition to writing at length about what he perceives the “technological arts” test to mean and require, he wrote:

The Supreme Court has dictated that the subject mat- ter eligibility analysis must precede the obviousness inquiry. Flook, 437 U.S. at 593 (“The obligation to determine what type of discovery is sought to be patented” so as to determine whether it falls within the ambit of sec- tion 101 “must precede the determination of whether that discovery is, in fact, new or obvious.”); Bilski, 130 S. Ct. at 3225 (explaining that the issue of whether claims are directed to statutory subject matter is “a threshold test”); see also In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (“Only if the requirements of § 101 are satisfied is the inventor allowed to pass through to the other requirements for patentability, such as novelty under § 102 and . . . non-obviousness under § 103.” (citations and internal quotation marks omitted)). To fail to address at the very outset whether claims meet the strictures of section 101 is to put the cart before the horse. Until it is determined that claimed subject matter is even eligible for patent protection, a court has no warrant to consider subordinate validity issues such as non-obviousness under 35 U.S.C. § 103 or adequate written description under 35 U.S.C. § 112.

From a practical perspective, there are clear advantages to addressing section 101’s requirements at the outset of litigation. Patent eligibility issues can often be resolved without lengthy claim construction, and an early determination that the subject matter of asserted claims is patent ineligible can spare both litigants and courts years of needless litigation. To the extent that certain classes of claims—such as claims on methods of doing business—are deemed presumptively patent ineligible, moreover, the United States Patent and Trademark Office will have more resources to devote to expeditiously processing applications which disclose truly important advances in science and technology.

Even more fundamentally, the power to issue patents is not unbounded. To the contrary, the constitutional grant of authority “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries,” U.S. Const. art. I, § 8, cl. 8, “is both a grant of power and a limitation,” Graham v. John Deere Co., 383 U.S. 1, 5 (1966); see Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989). Section 101’s vital role—a role that sections 103 and 112 “are not equipped” to take on, Mayo, 132 S. Ct. at 1304— is to insure that patent protection promotes, rather than impedes, scientific progress and technological innovation. A robust application of section 101 ensures that the nation’s patent laws remain tethered to their constitutional moorings.

I am guessing we’ll see another en banc case soon…

Specification describes machine with sensors – Can you omit the sensor limitation in the claims?

By Dennis Crouch

ScriptPro v. Innovation Associates (Fed. Cir. 2014)

Kansas district court Judge Carlos Murguia found ScriptPro’s patent claims invalid under 35 U.S.C. §112 for lacking written description. See U.S. Patent No. 6,910,601. That holding has been reversed by a unanimous Federal Circuit panel that included Judges Taranto (Author), Bryson, and Hughes.

Although the technology at issue here is largely mechanical (a pill collating machine), the case is akin to a genus-species debate and also relates closely to the ‘essential element‘ pseudo-doctrine of Gentry Gallery.

Here, all of the examples of the patented collating machine include a set of sensors used to determine whether a particular holding area is full. Further, the specification suggests that – even at its broadest – the invention includes the sensors: “[T]he present invention broadly includes . . . a plurality of sensors.” However, the claims do not include sensor limitations – with the result being that machines both with and without the sensors could be seen as infringing. Seeing that discrepancy between the specification and the claims, the district court ruled that the original written description does not show that the inventor possessed a collating machine that operated without the sensors and thus that the claims covering machines sans sensors fail the written description test. Judge Murguia wrote:

Based on the record before it, the court concludes that no reasonable jury could find that the inventors were in possession of a collating unit that operated without sensors. Innovation is therefore entitled to summary judgment on its claim of invalidity as to all challenged claims.

On appeal, the Federal Circuit has reversed – finding that summary judgment was improper.

It is common, and often permissible, for particular claims to pick out a subset of the full range of described features, omitting others. A specification can adequately communicate to a skilled artisan that the patentee invented not just the combination of all identified features but combinations of only some of those features (subcombinations)—which may achieve stated purposes even without omitted features.

. . . There is no sufficiently clear language in the specification that limits the invention to a collating unit with the (slotchecking) sensors. And considering what the specification does say, and what ScriptPro highlights as a central purpose of the claimed advance in technology [keeping track of open slots – a function that does not require the sensors], it cannot be said as a matter of law that claims 1, 2, 4, and 8 have a scope incommensurate with what is described as the invention. . . . The term “broadly” qualifies the assertion of inclusion [and] suggests that exceptions are allowed to the assertion of what occurs most (perhaps even almost all) of the time.

Readers will note that, while the court begins with a suggestion that written description requires that the patent document affirmatively convey invention of sub-combination, the actual approach looks more to whether the patent document affirmatively denies the subcombinations.

Here, the court thought it important – although not determinative – that the original application as filed included the non-sensor claims. Thus, this is not an example of an ex post attempt to expand scope that is most common in written description cases.

When a specification is ambiguous about which of several features are stand-alone inventions, the original claims can help resolve the ambiguity, though even original claims may be insufficient as descriptions or be insufficiently supported by the rest of the specification.

The notion is that original claims are part of the specification and thus relevant. However, they are also potentially inadequate (as we learned in Ariad and LizardTech).

Not a Summary Judgment Question: One lens for considering this case by recognizing that the failure of written description is a factual question to be decided by a jury. Although it may not ultimately win on the issue, the patentee presented a factual argument supported by expert testimony regarding what a person of skill in the art would have recognized based upon reading the specification. What the court here ruled is that that presentation of evidence by the patentee was sufficient to defeat the defendant’s summary judgment motion of invalidity. We may eventually see a jury verdict in this case — ~10 years after the lawsuit was originally filed.

Supreme Court Patent Cases Per Decade

The Chart below is an update of one I published earlier this year. The new chart adds in a couple of extra cases that I had previously not included and also takes account of the Supreme Court’s spate of decisions this term, including Alice v. CLS Bank (subject matter eligibility); Nautilus v. Biosig (indefiniteness); Limelight v. Akamai (divided infringement for inducement); Highmark v. Allcare (attorney fee awards in exceptional cases); Octane Fitness v. Icon Health & Fitness (attorney fee awards in exceptional cases); and Medtronic v. Boston Scientific (burden of proving infringement always falls on patentee even in licensee DJ actions). Readers should also note that the decade of 2010’s is not yet ½ completed and the Court has already granted writ of certiorari in one pending action: Teva v. Sandoz (standard of appellate review for factual findings that serve as the underpinnings for claim construction). We can expect that the trend will continue over the next several years with special focus on the new rules and procedures stemming from the America Invents Act of 2011. Note – my list largely agrees with Prof Ouellette’s