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.

Trading Technologies v. Open E Cry: Doctrinal Formalism in Patent Law

Patent,

By Jason Rantanen

Trading Technologies International, Inc. v. Open E Cry, LLC (Fed. Cir. 2013) Download Trading Tech v Open E Cry
Panel: Lourie (author), Plager, Benson (District Judge)

The traditional – and certainly most widely held – view in patent law is to view its issues as formally distinct doctrines; crystalline pillars supporting the temple.  This view emphasizes the formal distinction between patent law doctrines and rejects attempts to cross between them.  Each doctrine is an independent whole.  Trading Technologies v. Open E Cry exemplifies this view.  (It's worth noting that this opinion notwithstanding, some of the most successful patent litigators that I've met have succeeded by rejecting the formality of doctrines and building their litigation strategy around the intersticial spaces between the doctines.)

Trading Technology ("TT") owns a series of related patents generally pertaining to software for electronic trading on a commodities exchange.  The four patents at issue in this appeal claim priority based on an application that ultimately issued as Patent No. 6,772,132.  In an earlier appeal, Trading Technologies International, Inc. v. eSpeed, Inc., 595 F.3d 1340 (Fed. Cir. 2010), the Federal Circuit considered the correct construction of claims of the '132 patent that required a graphical user interface having a "static" display of market price information.  In eSpeed, the Federal Circuit held that "static," as used in the claims of the ’132 patents, "required a price column that moves only in response to a manual re-centering command."  In reaching this result, eSpeed concluded (among other things) that:

“[t]he inventors’ own specification strongly suggests that the claimed re-centering feature is manual” because the written description “only discusse[d] manual re-centering commands” and referred to “the present invention” as including a manual one-click re-centering feature.

While the earlier litigation was pending, TT filed the applications that matured into the patents involved in this suit. In those applications, TT introduced new claims that lacked the term "static" in any form.  As a result, three of the new patents had identical written descriptions to the '132 patent but claims that differed in one key way: they did not include "static" limitations.  (In the fourth patent TT pursued the strategy of filing a continuation-in-part; the result was that TT was able to add new disclosures). 

TT filed multiple actions based on this second round of patents. The district court consolidated the actions and subsequently grand summary judgment of invalidity of the four  new patents based on lack of adequate written description under 35 U.S.C. § 112(a).  The district court based its ruling on the earlier eSpeed opinion, concluding that eSpeed required holding the claims invalid for lack of written description. The Federal Circuit summarized the district court's action as follows:

According to the district court, eSpeed’s construction of “static” in the ’132 and ’304 patents turned “on the premise that the invention described in the specification was limited to static price axes that move only with manual re-centering.” Id. at 1045. Because the ’411 patent’s claims lacked that term and therefore appeared to cover displays with automatic re-centering, the district court concluded that any decision upholding those broader claims as supported by the same written description “would be at odds with the Federal Circuit’s binding findings in the eSpeed Decision.” Id. In granting the Defendants’ motion for summary judgment, the district court expressly declined to evaluate the parties’ evidence or make its own findings on the merits because the court determined “as a matter of law that the eSpeed Decision controls.”

Slip Op. at 12.  On appeal, the Federal Circuit rejected this reasoning, reversing the grant of summary judgment and remanding for further proceedings.  The court based its conclusion on the formal distinction between the doctrines of claim construction and written description, a distinction that it explained in detail:

Despite their similarities, however, claim construction and the written description requirement are separate issues that serve distinct purposes.

In construing claims, a court seeks to discern the meaning of a particular term used in one or more claims of a patent, based, inter alia, on evidence drawn from the specification, the surrounding claim language, the prosecution history, and relevant extrinsic sources….While guided by the specification, the focus of claim construction remains on defining a discrete claim term to better ascertain the boundaries of a claim. In contrast, the written description analysis considers the bounds of the specification itself. The written description requirement prevents patentees from claiming more than they have actually invented and disclosed to the public, as measured by the written description of the invention provided with their patent applications.

This case illustrates the distinction. In eSpeed, we were called upon to evaluate the proper construction of “static,” a term used in the claims of the ’132 and ’304 patents. Accordingly, we considered the evidence relevant to a proper reading of that term, starting with those patents’ common written description. eSpeed, 595 F.3d at 1353–55. Noting that the patents referred to one-click centering as part of the invention and did not discuss automatic re-centering, we concluded that the specification “strongly suggests” that a “static” price column would require manual re-centering. Id. at 1353–54. And even though the patents described price columns that “do not normally change positions unless a re-centering command is received,” ’132 patent col. 7 ll. 46–48 (emphasis added), we concluded that “the inventors jettisoned the word ‘normally’ during prosecution” by limiting the term “static” in response to an indefiniteness rejection, eSpeed, 595 F.3d at 1354. In sum, we concluded that the disputed claim term should be limited to require a manual re- centering command in the claims of the ’132 and ’304 patents.

But our decision in eSpeed did not thereby determine whether the same written description would also support different claims drawn to a non-“static” display. In particular, we did not make “findings regarding the specification . . . that are dispositive” as to the present written description challenge. See Summary Judgment Order, 852 F. Supp. 2d at 1044. On the contrary, we merely determined the best construction for a single disputed claim term, a term that is absent from the claims of the ’411, ’768, and ’374 patents now before us. That analysis did not require us to pass on the outer limits of the pa- tents’ written description, nor did we endeavor to do so. In fact, our prior examination of that written description did not even settle the limited claim construction issue then facing the court, see eSpeed, 595 F.3d at 1353–54 (concluding that the specification “strongly suggests” that the claimed re-centering feature is manual), much less conclusively find that the same written description could never support any claim to a display with a non-“static” price axis.

Slip Op. at 17-18.

Prosecution History Estoppel: The court also reversed grant of summary judgment of prosecution history estoppel, concluding that statements made in connection with the earlier '132 patent did not extend through to the subsequent patents in the same lineage in this case.  "Prosecution history estoppel can extend from a parent application to subsequent patents in the same lineage, Elkay, 192 F.3d at 981, as can a prosecution disclaimer, Omega Eng’g, 334 F.3d at 1333–34. But “arguments made in a related application do not automatically apply to different claims in a separate application.” Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1139 (Fed. Cir. 2003)….In this case, the intrinsic record specific to the ’055 patent distinguishes eSpeed and compels a different result." Slip Op. at 24.

Disclosure: Several years ago, Dennis represented Trading Technologies in a previous case at the District Court level. That said, we haven't talked about the substance of these cases.

Judge Rader’s Obviousness Tutorial: Including the Conclusion that Older Prior Art is Less Credible and a Restatement that Objective Indicia of Nonobviousness Play a Critical Role

Obviousness, Patent, , , , , , ,

By Dennis Crouch

Leo Pharmaceutical Products, Ltd. v. Rea, 2013 WL 4054937 (Fed. Cir. 2013)

In a pre-AIA filing, Galderma challenged Leo’s U.S. Patent No. 6,753,013 in an inter partes reexamination before the USPTO’s now renamed Board of Patent Appeals. The patent claims a “storage stable and non-aqueous” pharmaceutical composition used to treat skin conditions such as psoriasis. Prior to the invention, it was well known that a combination of Vitamin-D along with a corticosteroid could form the basis of an effective treatment. However, no one had been able to manufacture a storage stable form of the combination. This was especially challenging because the stable forms of the active ingredients prefer different pH levels. To achieve the storage stable results, Leo added a solvent to the mixture. The claim identifies the solvent in a markush group that likely includes thousands of potential compounds. During the reexamination, Leo also added the particular limitation that “said pharmaceutical composition is storage stable and non-aqueous.”

In reviewing the case, the Board first construed these new terms “storage stable” and “non-aqueous” and then found the patent invalid as obvious over the prior art. On appeal, the Federal Circuit has reversed.

Claim Construction: The Federal Circuit continues, for the time being, to give no deference to PTO claim construction decisions. Here, the term “storage stable” was difficult to construe because it was never used during prosecution of the original patent application and only added during reexamination. However, the patent does discuss the composition’s “ability to resist degradation” according to test results presented in the specification and the PTO accepted that definition as proper. Noting that one of ordinary skill “would have reasonably looked to the described stability test as defining what was meant by ‘storage stable.'” On appeal, the Federal Circuit rejected that definition as impermissibly narrow and that instead allowed a broader definition. Although not elucidated by the opinion, the patentee is walking a fine line with this amendment between (1) having a sufficiently broad patent and (2) improperly adding new matter to the claims in violation of the written description requirement.

Obviousness: This decision may become a somewhat important obviousness case for patentees. The Board found the patent claims obvious in light of a combination of three prior art references. The Board basically found that it would have been obvious for someone of skill in the art to take the prior art combination of Vitamin-D and corticosteroids and add in the claimed solvent in order to achieve storage stability.

On appeal, the Federal Circuit faulted the Board for failing to give credence to the patentee’s identification of the problem (that a stable form should be designed). The prior art did not particularly recognize the problem but rather “either discouraged combining vitamin D analogs and corticosteroids … or attempted the combination without recognizing or solving the storage stability problems.” Leo also presented evidence that, at the time of the invention, researchers were being “warned that vitamin D should not be combined with other drugs requiring a low pH ( e.g., corticosteroids).”

[T]he record shows no reason for one of ordinary skill in the art to attempt to improve upon either Dikstein or Serup using Turi. The ordinary artisan would first have needed to recognize the problem, i.e., that the formulations disclosed in Dikstein and Serup were not storage stable. To discover this problem, the ordinary artisan would have needed to spend several months running storage stability tests Only after recognizing the existence of the problem would an artisan then turn to the prior art and attempt to develop a new formulation for storage stability. If these discoveries and advances were routine and relatively easy, the record would undoubtedly have shown that some ordinary artisan would have achieved this invention within months of Dikstein or Serup. Instead this invention does not appear for more than a decade.

Now, the Federal Circuit’s language here obviously includes some amount of doublespeak or could perhaps be described as slicing the bologna awfully thin since according to the court, researchers (1) recognized that vitamin D could not be stably combined with low pH drugs such as corticosteroids but (2) did not recognize that vitamin-D could not be stably combined with corticosteroids.

Old Prior Art: In the discussion, Judge Rader uses an interesting between-the-lines or perhaps behind-the-scenes analysis of the prior art:

First, the Board found motivation to combine Dikstein or Serup with Turi because one of ordinary skill would have used vitamin D to solve the well-known side effects of steroid treatment. However, combining Turi and vitamin D to address the side effects of a steroid treatment is only straightforward in hindsight. Turi was publicly available in the prior art for twenty-two years before the ′013 patent was filed, yet there is no evidence that anyone sought to improve Turi with vitamin D. According to the record, even when Serup published the well-known side effects of steroid-induced atrophy in 1994, no one—including Serup—sought to improve Turi by adding vitamin D to Turi’s corticosteroid composition. Serup even targeted the precise side effects that the Board believed would have motivated the addition of a vitamin D analog to Turi’s corticosteroid composition, yet Serup did not seek to improve Turi by adding vitamin D. . . .

The elapsed time between the prior art and the ′013 patent’s filing date evinces that the ′013 patent’s claimed invention was not obvious to try. Indeed this considerable time lapse suggests instead that the Board only traverses the obstacles to this inventive enterprise with a resort to hindsight. It took over a decade—after Dikstein’s disclosure of the benefits of combining vitamin D and corticosteroid treatments into one formulation—for Dikstein’s formulations to be tested for storage stability. And, until the advancement made by the inventors of the ′013 patent, no one had proposed a new formulation that would be storage stable. The problem was not known, the possible approaches to solving the problem were not known or finite, and the solution was not predictable. Therefore, the claimed invention would not have been obvious to try to one of ordinary skill in the art. Indeed ordinary artisans would not have thought to try at all because they would not have recognized the problem.

Under Judge Rader’s point of view here, older prior art should be seen as less credible in the obviousness analysis. The logic obvious improvements would have happened quickly and the long time span between improvements suggest that the improvement was not an obvious one. This logic is bolstered in cases such as this where research is ongoing in the area and a market has already developed.

Although the patentee claimed a wide variety of solvents, the Federal Circuit also found that there were many more potential solvents available to try and the PTO did not offer specific reasons why the ones selected would have been particularly obvious to try.

In addition, the Board found that a person of ordinary skill in the art would have been capable of selecting the correct formulation from available alternatives. Specifically, the Board found more than eight different classes of additives ( e.g., diluents, buffers, thickeners, lubricants). The Board also found more than ten different categories of composition forms ( e.g., liniments, lotions, applicants, oil-in-water or water-in-oil emulsions such as creams, ointments, pastes, or gels). “Based on these broad and general disclosures,” the Board reasoned that an artisan would have been able to “mak[e] choices about what ingredients to include, and which to exclude” in formulating a composition with a vitamin D analog and steroid. To the contrary, the breadth of these choices and the numerous combinations indicate that these disclosures would not have rendered the claimed invention obvious to try. See Rolls–Royce PLC v. United Techs. Corp., 603 F.3d 1325, 1339 (Fed.Cir.2010) (claimed invention was not obvious to try because the prior art disclosed a “broad selection of choices for further investigation”). . . . .

This court and obviousness law in general recognizes an important distinction between combining known options into “a finite number of identified, predictable solutions,” KSR, and ” ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result,” Cyclobenzaprine, quoting Kubin. While the record shows that, as early as 1995, the prior art indicated that both vitamin D analogs and corticosteroids were effective treatments for psoriasis, that same prior art gave no direction as to which of the many possible combination choices were likely to be successful. Instead, the prior art consistently taught away from combining vitamin D analogs and corticosteroids.

One important feature of PTO decision making is that Board conclusions of fact only require substantial evidence to be affirmed on appeal. Here, the Federal Circuit avoided that issue by indicating that all of its decisions were based upon the Board failure to properly apply the law to those facts. “In this case, however, with no material factual disputes, this court cannot share the Board’s analysis and application of the law to those facts.”

Objective Indicia of Non-Obviousness: Judge Rader writes:

The court now turns to the Board’s analysis of the objective indicia of nonobviousness. The Board reasoned that “the strong case of obviousness outweighs the experimental evidence and testimony about the advantages of the claimed composition.” Contrary to the Board’s conclusion, this court finds the objective indicia, in concert with the entire obviousness analysis, present a compelling case of nonobviousness. In fact, the objective indicia of nonobviousness highlight that the Board’s analysis regarding the combination of Serup or Dikstein with Turi was colored by hindsight.

Whether before the Board or a court, this court has emphasized that consideration of the objective indicia is part of the whole obviousness analysis, not just an afterthought. … When an applicant appeals an examiner’s objection to the patentability of an application’s claims for obviousness, the PTO necessarily has the burden to establish a prima facie case of obviousness which the applicant then rebuts. However, during inter partes reexamination, the Board is reviewing evidence of obviousness—including objective indicia—submitted by two adversarial parties for the claims of an issued patent. Thus, the Board should give the objective indicia its proper weight and place in the obviousness analysis, and not treat objective indicia of nonobviousness as an afterthought.

Objective indicia of nonobviousness play a critical role in the obviousness analysis. They are “not just a cumulative or confirmatory part of the obviousness calculus but constitute[ ] independent evidence of nonobviousness.” Ortho–McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed.Cir.2008). This case illustrates a good reason for considering objective indicia as a critical piece of the obviousness analysis: Objective indicia “can be the most probative evidence of nonobviousness in the record, and enables the court to avert the trap of hindsight.” Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed.Cir.2010) (internal quotation marks omitted). Here, the objective indicia of nonobviousness are crucial in avoiding the trap of hindsight when reviewing, what otherwise seems like, a combination of known elements.

Unexpected results are useful to show the “improved properties provided by the claimed compositions are much greater than would have been predicted.” See In re Soni, 54 F.3d 746, 751 (Fed.Cir.1995) (internal quotation marks omitted). This record shows “extensive experimental evidence” of unexpected results that contradict the Board’s obviousness finding. J.A. 14. The Board concluded that the “unexpected results” claimed by Leo Pharmaceuticals were not surprising or unexpected. J.A. 19. However, substantial evidence does not support the Board’s conclusion.

During reexamination, the inventors of the ′013 patent submitted test results that analyzed the Dikstein and Serup formulations. The inventors found that the formulations disclosed by Dikstein and Serup result in significant degradation of the vitamin D analog and corticosteroid. See J.A. 1041–46 (testing formulations in Serup); J.A. 1625–27, 2152–2154 (testing formulations in Dikstein). The inventors also tested an improvement of Serup using Turi, by replacing Serup’s solvent with POP–15–SE, and still found significant degradation of the corticosteroid component. See J.A. 1045–46. These test results are a strong indication that the ′013 patent’s combination of known elements yields more than just predictable results.

In addition to evidence of unexpected results, Leo Pharmaceuticals provided other objective indicia of non-obviousness. For example, the commercial success of Leo Pharmaceutical’s Taclonex® ointment is a testament to the improved properties of the ′013 patent’s claimed invention. Taclonex® is the first FDA-approved drug to combine vitamin D and corticosteroids into a single formulation for topical application. While FDA approval is not determinative of nonobviousness, it can be relevant in evaluating the objective indicia of nonobviousness. See Knoll Pharm. Co., Inc. v. Teva. Pharm. USA, Inc., 367 F.3d 1381, 1385 (Fed.Cir.2004). Here, FDA approval highlights that Leo Pharmaceutical’s formulation is truly storage stable, something that the prior art formulations did not achieve.

The record also shows evidence of long felt but unsolved need, i.e., the need for a single formulation to treat psoriasis. The length of the intervening time between the publication dates of the prior art and the claimed invention can also qualify as an objective indicator of nonobviousness. See Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1376–77 (Fed.Cir.2000). Here, the researchers were aware of the benefits of using both vitamin D and corticosteroids in the treatment of psoriasis as early as 1986. See, e.g., Dikstein col. 1, ll. 9–16. And Turi, upon which the Board relied to make its case, issued in 1978. Yet, it was not until the ′013 patent’s filing in 2000— twenty-two years after Turi and fourteen years after Dikstein-that the solution to the long felt but unsolved need for a combined treatment of vitamin D and corticosteroid was created. The intervening time between the prior art’s teaching of the components and the eventual preparation of a successful composition speaks volumes to the nonobviousness of the ′013 patent.

Here, the objective indicia—taken in sum—are the most “probative evidence of nonobviousness … enabl[ing] the court to avert the trap of hindsight.” Crocs, Inc., 598 F.3d at 1310. Viewed through the lens of the objective indicia, as opposed to the hindsight lens used by the Board, the ′013 patent would not have been not obvious over Turi in combination with Dikstein or Serup. Therefore, this court reverses the Board’s obviousness determination.

SkinMedica v. Histogen

Patent, , ,

By Jason Rantanen

SkinMedica Inc. v. Histogen Inc. (Fed. Cir. 2013) Download SkinMedica v Histogen
Panel: Rader (dissenting), Clevenger, Prost (author)

SkinMedica owns Patents No. 6,372,494 and 7,118,746, which relate to methods for producing pharmaceutical compositions containing "novel conditioned cell culture medium compositions,…[and] uses for the[m]."  A conditioned cell culture medium is an artificial environment that supplies the components necessary to meet the nutritional needs of the growing cells.  The conditioned medium at issue here also included extracellular proteins that, according to the patentees, may be useful for treating skin conditions such as wrinkles, frown lines, etc. 

The written descriptions of the '494 and '746 patents explain that a novel and important aspect of their invention is the difference between growing cells in two-dimensions and growing cells in three-dimensions. 

Claim 1 of the '494 patent:

1. A method of making a composition comprising:

(a) culturing fibroblast cells in three-dimensions in a cell culture medium sufficient to meet the nutritional needs required to grow the cells in vitro until the cell culture medium contains a desired level of extracellular products so that a conditioned medium is formed;

(b) removing the conditioned medium from the cultured cells; and

(c) combining the conditioned medium with a pharmaceutically acceptable carrier to form the composition.

(emphasis added by court).  At issue was the phrase "culturing…cells in three-dimensions."  The district court construed this phrase to mean "growing…cells in three dimensions (excluding growing in monolayers or on microcarrier beads."  Following claim construction, the district courted summary judgment of noninfringement for Histogen as it was undisputed that Histogen grew its cells on microcarrier beads. 

Limits on Ordinary Meaning: On appeal, the Federal Circuit affirmed the district court's claim construction. The court first agreed with SkinMedica that "the ordinary meaning of “culturing . . . cells in three-dimensions” would reach the use of beads."  However,

If the specification reveals “a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.”…. And if the specification reveals “an intentional disclaimer, or disavowal, of claim scope by the inventor,” the scope of the claim, “as expressed in the specification, is regarded as dispositive.”
Slip Op. at 13 (citations omitted).  An  high hurdle applies when dealing with implied rather than express redefinition, as an "implied redefinition must be so clear that it equates to an explicit one."  Id. at 29, quoting Thorner v. Sony Computer, 669 F.3d 1362, 1368 (Fed. Cir. 2012).  Here, according to the majority, the inventors did precisely that for "culturing…cells in three dimenations":

In the written description, the patentees plainly and repeatedly distinguished culturing with beads from culturing in three-dimensions. They expressly defined the use of beads as culturing in two-dimensions. And they avoided anticipatory prior art during prosecution by asserting that the conditioned medium produced by two-dimensional cultures was inferior and chemically distinct from the conditioned medium produced by three-dimensional cultures. Because none of the evidence called to our attention by SkinMedica would reasonably lead to a different reading of the intrinsic evidence, we find that the inventors clearly redefined the scope of “culturing . . . cells in three dimensions” by disclaiming the use of beads—which would otherwise be included in the ordi- nary meaning of that phrase.

Id. at 15.  In support of this conclusion, the majority opinion walks through a lengthy discussion of the text of the specification and prosecution history, addressing language such as "beads, as opposed to cells grown in three dimensions and the use of "i.e."  The result was a disavowal of beads from the scope of the claim term at issue:

"In sum, although the inventors never explicitly redefined three-dimensional cultures to exclude the use of beads, their implicit disclaimer of culturing with beads here was even “so clear that it equates to an explicit one. Without fail, each time the inventors referenced culturing with beads in the specification, they unambiguously distinguished that culture method from culturing in three-dimensions."

Id. at 27. 

Incorporation by Reference: One of SkinMedica's counter arguments was that the written description incorporated a voluminous technical treatise, Cell & Tissue Culture: Laboratory Procedures ("Doyle") in its entirety and that Doyle describes three-dimensional culturing with beads.  Among the majority's bases for rejecting SkinMedica's argument was the lack of any specific reference to Doyle:

Third, even if we assume that the passage from Doyle discusses what one of ordinary skill in the art might understand to be three-dimensional culturing with beads, the inventors’ general citation of Doyle does not indicate any reliance on that particular passage to define “culturing in three-dimensions” and to abandon the otherwise clear disclaimer of beads in the specification. When discussing cell culture methods, the patentees make the following reference to Doyle:

The cells may be cultured in any manner known in the art including in monolayer, beads or in three-dimensions and by any means . . . . Methods of cell and tissue culturing are well known in the art, and are described, for example, in [Doyle], supra; Freshney (1987), Culture of Animal Cells: A Manual of Basic Techniques, infra.

’494 patent col. 10 ll. 2–6.

It is clear from that passage that the inventors did not refer to Doyle in order to define what they meant by “three-dimensional culturing” in their patent. They did not indicate their reference to Doyle was for that purpose; nor did they even refer with any detailed particularity to the passages in Doyle that, according to SkinMedica, may have discussed three-dimensional culturing with beads. When the inventors wanted to use Doyle to explain the potential scope of terms they used, they did so specifically….We see no reason for such a non-specific reference to trump the clear disclaimer in the specification of culturing with beads.

Slip Op. at 35-36. 

Judge Rader's Dissent: Writing in dissent, Judge Rader disagreed that the patentee had met the "heavy presumption" in favor of the ordinary meaning of claim language.  Central to Judge Rader's opinion was the distinction between growing cells "on beads" and growing cells in three-dimensions using beads.  

Deference battle? Judge Rader's dissent also relied on testimony by SkinMedica's technical expert, Dr. Salomon.  The majority agreed with district court's decision to give Dr. Salomon's testimony "no weight"; in Judge Rader's eyes, "Dr. Salomon's testimony, when viewed as a whole, deserves great weight and respect."  Slip Op. at 47. 

Working out the Kinks in Post-Issuance Reviews: Versata v. SAP

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By Dennis Crouch

The Versata saga provides an important case history showing the power of the new post-grant review procedures before the USPTO and the Office’s seeming new power to operate without fear of judicial review. However, over the next year the Federal Circuit will have its opportunity to review the PTAB’s controversial decisions.

= = = = =

Versata’s hierarchical pricing engine software had strong sales in the mid 1990’s, that ended when SAP and others added the component to their product line – an extra add-on was no longer needed. SAP indicated that its software replaced the need for Versata’s add-on and actively discouraged customers from using Versata.

Versata’s In-Court Victories: Versata eventually sued SAP in 2007 and won a first jury verdict and then a second jury verdict (finding that SAP’s “patch” did not cure the infringement) with a $300 million + damage award. That final decision was later affirmed on appeal.

Petition for Post-Grant Review of Covered Business Method: Meanwhile, following the district court’s second finding of infringement (but prior conclusion of the aforementioned appeal), SAP filed a petition for Post Grant Review available to “Covered Business Methods” as part of the America Invents Act. SAP had clearly been anxious to use this approach and filed the PGR petition at its first opportunity on September 16, 2012 (the first day such petitions were allowed). CBM2012-0001.

If you remember, post-grant review (including CBM review) allows for challenge on “any ground that could be raised under paragraph (2) or (3) of section 282 (b) (relating to invalidity of the patent or any claim).” This has been interpreted by the PTO to include validity challenges raised under 35 U.S.C. § 101, 102, 103, or 112. But see Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure?

SAP’s petition challenged the patent claims as (1) directed toward unpatentable subject matter under §101; (2) lacking written description; (3) indefinite; and anticipated.

USPTO Grants Petition for Post Grant Review: In a January 2013 order, the USPTO’s Patent Trial & Appeal Board (PTAB) granted the petition after finding that the challenged claims are “more likely than not unpatentable.” In particular, the PTAB allowed the challenge to move forward on the Section 101 and 102 grounds.

The PTAB made two additional important rulings:

What is a Covered Business Method?: First, the Board ruled that the ‘350 patent claims qualified as covered-business-methods because the claims are directed to a method for the “management of a financial product or service” and are not “technological inventions.” The PTO’s working definition of “technological” is rather unhelpful in that it simply asks whether the claim recites a new “technological feature” or “solves a technical problem using a technical solution.” Relevant claims of the patent (U.S. Patent No. 6,553,350) are shown below (claims 17 and 26). And, you will note that the method claim 17 does not recite any steps that could not be done with pencil and paper.

Issue Preclusion / Collateral Estoppel Does Not Apply: The ordinary rule in federal courts is that preclusion applies following final judgment by a district court. The fact that an appeal is pending does not impact the finality of the district court judgment unless & until the appellate court takes some action. In Pharmacia, the Federal Circuit wrote that the “vast weight of case law” supports the notion that a judgment should be given its full preclusive effect even when an appeal is pending. Pharmacia & Upjohn Co. v. Mylan Pharm., 170 F.3d 1373 (Fed. Cir. 1999). Here, Versata argued that the PTO should follow that general rule and since SAP already had a full and fair opportunity to challenge the patent validity and had lost its federal lawsuit resulting in final judgment. The PTAB rejected Versata’s argument finding instead that it would would not respect any final judgment subject to a pending appeal to the Federal Circuit.

As the final judgment in the related Versata v. SAP litigation is currently on appeal to the Federal Circuit, we hold that the district court’s judgment is not sufficiently firm to be accorded conclusive effect for purposes of 37 C.F.R. 42.302 as it is still subject to reversal or amendment.

On this issue, it is interesting to note that the appeal brief filed by SAP did not challenge district court’s validity finding. Thus, although the district court decision in general could have been rejected on appeal (it wasn’t), there was simple no chance even in January 2013 that the appellate panel was going to opine on patent validity issues.

At this point, in January 2013, the PTAB was beginning its review of the ‘350 patent’s validity and, in parallel the Federal Circuit was considering SAP’s appeal that focused on noninfringement and remedy arguments.

No Challenge to PTO Decision to Grant Post-Issuance Review Petition: Versata also opened a third-front – filing suit in Virginia district court to overturn the PTO’s decision to grant the post-issuance review petition. In a recent decision, the Virginia court rejected that request in Versata Development v. Rea (as Director of USPTO) and SAP AG, 2013 WL 4014649 (E.D. Va. 2013) (no subject matter jurisdiction). The AIA indicates that the PTO’s determination of whether or not to institute post-grant proceedings are “final and nonappealable.” 35 U.S.C. 324. Versata argued that “nonappealable” in the statute should be seen as merely limiting direct appeals to the Federal Circuit and that its request for review was akin to a “civil action” under 35 U.S.C. 145 and not an “appeal.” Bolstering that argument is the language of 35 U.S.C. 329 and 141 that define appeal in post-issuance proceedings as appeals to the Federal Circuit. However, the district court rejected Versata’s argument and held that the court lacked jurisdiction under the statute and that, in any case, the decision to grant the review was only an interlocutory decision. It is unclear, but Versata may appeal this decision soon. [As an aside, the language of the district court opinion suggests that petition is denied

Federal Circuit Decision (Largely) Affirms Lower Court: The next event in this long saga came in May 2013 when the Federal Circuit affirmed the district court’s determination of infringement and the damages award. The only modification of the judgment was to ask the lower court to be more particular in injoining infringement without injoining sales of SAP products in general.

PTAB Final Judgment: The following month in June 2013, the PTAB came out with its final ruling holding that the patent claims are invalid under 35 U.S.C. §101 as unpatentably abstract. This decision obviously temporally follows both the district court decision and that of the Federal Circuit. Yet, the PTAB found itself to differ on both claim construction and validity.

In particular, the PTAB determined that it would apply the “broadest reasonable interpretation” (BRI) standard to claim construction during post-issuance proceedings even though the terms had already been construed by the district court in a final judgment. The PTO’s rational is that (1) it is not bound by the district court judgment since “appeals from this proceeding are exclusively the Federal Circuit rather than to district courts” and that (2) the patentee’s ability to amend claims during review suggests that BRI should apply.

In the 101 analysis, the panel found that the claimed method of determining a price using product group hierarchies was a “disembodied concept” capable of being performed mentally, on paper, or on a general purpose computer. The PTO final judgment did not substantially revisit the issues of preclusion or whether the PTO has standing to challenge the patent under Section 101.

At the PTAB, the current status is that the Board is considering a rehearing request by Versata with the primary new focus being on the Federal Circuit’s Ultramercial decision. Versata again raised the contention that §101 is not a permissible ground for post grant review. Versata writes “Because § 101 is not a condition for patentability, much less specified as such as required by 35 U.S.C. § 282(b)(2), it is not reviewable in a post-grant review (or CBM review).”

All these issues are likely to come to a head as the case is appealed to the Federal Circuit over the next year.

= = = = =

Claims at Issue:

17. A method for determining a price of a product offered to a purchasing organization comprising: arranging a hierarchy of organizational groups comprising a plurality of branches such that an organizational group below a higher organizational group in each of the branches is a subset of the higher organizational group; arranging a hierarchy of product groups comprising a plurality of branches such that a product group below a higher product group in each of the branches in a subset of the higher product group; storing pricing information in a data source, wherein the pricing information is associated, with (i) a pricing type, (ii) the organizational groups, and (iii) the product groups; retrieving applicable pricing information corresponding to the product, the purchasing organization, each product group above the product group in each branch of the hierarchy of product groups in which the product is a member, and each organizational group above the purchasing organization in each branch of the hierarchy of organizational groups in which the purchasing organization is a member; sorting the pricing information according to the pricing types, the product, the purchasing organization, the hierarchy of product groups, and the hierarchy of organizational groups; eliminating any of the pricing information that is less restrictive; and determining the product price using the sorted pricing information.

26. A computer readable storage media comprising: computer instructions to implement the method of claim 17.

Judge Plager: Construe Ambiguous Terms Against the Drafter

Patent,

3M Innovative Properties Companies v. Tredegar Corp (Fed. Cir. 2013)

In 2009, 3M filed sued – alleging that Tredegar’s elastomeric laminates (used for diaper waistbands) infringed four 3M patents. U.S. Patent Nos. 5,501,679; 5,5691,034, 5,468,428, and 5,344,691. After claim construction, District Court Judge Donovan Frank 3M stipulated to a finding of non-infringement. The appeal focuses on construction of the asserted claims.

In its decision, the Federal Circuit panel issued three different opinions – each offering different notions on the correct construction of the various claim terms and each offering some disagreement with Judge Frank’s initial opinion.

The most interesting opinion of the four is Judge Plager’s concurring opinion that focuses on the intentional ambiguity inserted into the claims by 3M. Judge Plager argues that courts should begin to apply the contract doctrine of contra proferentem and construe ambiguous terms against the drafter (i.e., the patent holder). Judge Plager writes:

I appreciate that there are four different patents involved, and that the particular technology for manufacturing the product is quite detailed, although the products themselves are fairly basic—the material at issue is used for example in diapers. Nevertheless, when claims are larded with terms such as “substantially,” “preferentially,” and “relatively,” and when it takes four judges and some seventy pages of densely written opinions to find meaning in these terms, there is considerable evidence of a failure by the claim drafters to be clear and precise, and, beyond that, of a shortcoming in the patent examination process that permits claims to be so drafted.

Sometimes such ambiguity is the result of sloppy drafting, and sometimes it appears that claims are drafted with a degree of indefiniteness so as to leave room to later argue for a broad interpretation designed to capture later-developed competition. The problem is exacerbatedwhen, as here, there is a conflicting or indeterminate written description and prosecution history with regard to the claim terms at issue. Claim construction then becomes a game of crystal ball gazing, not resolved until this court’s gaze is announced.

The particular claim construction issue that divides the three appellate judges provides a perfect example of the problem. The claim term, “continuous microtextured skin layer,” truly is perplexing. Does “continuous” apply to the microtexturing, the skin layer, or both? Does it mean the microtexturing is everywhere (except perhaps for manufacturing flaws), or can it cover only a part of the skin layer as long as that part is continuous? Relying on the Chicago Manual of Style, 3M argues that “continuous” and “microtextured” are adjectives that separately modify “skin layer,” and thus, the claim term does not require that the microtexturing itself be continuous. According to 3M, if the applicant wanted “continuous” to modify “microtextured,” the applicant would have used the adverb “continuously.”

3M makes an interesting argument to be sure. But the argument creates its own grammatical problems. For example, there is no comma between “continuous” and “microtextured.” And the Chicago Manual of Style also tells us that adjectives that separately modify a noun are generally separated by a comma, unless of course the second adjective is a unit with the noun being modified (which would favor Tredegar’s construction). The Chicago Manual of Style § 6.33 (16th ed. 2010). The applicant seems to have understood this comma concept, and in fact used it when referring in the written description to a “continuous, deeply textured, microstructured surface.” ‘034 patent, col.15 ll.2-3. But the nuances of comma usage, like 3M’s adverb argument, seem to me a tenuous foundation for an entire claim construction on which substantial liabilities may rest. See United States v. Palmer, 16 U.S. 610, 638, 4 L. Ed. 471 (1818) (noting that “the use of the comma is exceedingly arbitrary and indefinite”); United States v. Ron Pair Enterprises, Inc., 489 U.S. 235, 249, 109 S. Ct. 1026, 1035, 103 L. Ed. 2d 290 (1989) (characterizing a comma as a “capricious bit of punctuation”) (internal quotation marks omitted).

Much like the claim’s grammar, the written description provides little help deciphering the meaning of the disputed term. Certainly, the ‘034 patent has a lot of disclosure: nearly 30 columns of it. The patent has 33 different examples, 16 tables, and 24 figures. The patent’s problem does not lie in the quantity of its disclosure; it lies in the disclosure’s relevance to the language used in the claims.

The applicant knew or should have known that the claim term “continuous microtextured skin layer” was highly relevant to the patented technology. The applicant wrote the term nine times in the first eight claims. Strangely, however, the disclosure does not reflect this relevance. “Continuous microtextured skin layer” does not appear one single time in the written description. The written description provides no discussion of “continuous microtextured skin layer,” no definition. Language resembling the claim term appears here and there, but mutated versions of claim terms often confuse more than they elucidate.

While ultimately I have voted to join Judge Reyna for the reasons I explain shortly, Judge O’Malley in her dissent-in-part makes an argument for the opposite construction based on the prosecution history. The argument is not without merit, although again, I do not find the prosecution history a shining example of clarity.

Cases like this—claim construction issues such as this one—may well deserve application of a principle analogous to the contract doctrine of contra proferentem. See Williston on Contracts § 32:12 (4th ed.). When a term is ambiguous, a crystal ball matter, the ambiguity should be construed against the draftsman. (Or better yet, the claim should simply be invalidated as indefinite, though our court has not seen fit to go there as yet.)

Without labeling it as such, we have already used this principle to construe claims for compliance with 35 U.S.C. § 112. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996) (“Where there is an equal choice between a broader and a narrower meaning of a claim, and there is an enabling disclosure that indicates that the applicant is at least entitled to a claim having the narrower meaning, we consider the notice function of the claim to be best served by adopting the narrower meaning.”); see also A Theory of Claim Interpretation, 14 Harv. J.L. & Tech. 1, 81 (2000).

The contra proferentem principle would require the applicant to draft clear claims, using simple, direct sentences, proper grammar, and definitions in the written description where appropriate. It harmonizes with the notice function of patent law. It would result in applicants—and prospective patentees—investing more resources on the front end, during drafting, and less resources on the remedial end, during litigation. Better drafting of patent applications can only improve the efficiency of the patent system by clearly delineating a patentee’s property rights, thereby reducing wasteful and unnecessary litigation.

Specifically in this case, when I gaze in my crystal ball, I see, in addition to the verbal jousting, a district judge who struggled at length to make sense of the claims, and I see a patentee (more correctly a patent applicant) who had the last clear chance—infringement is after all a tort—to avoid this kind of unnecessary claim construction game. My crystal ball tells me to vote against the patentee’s construction of “continuous microtextured skin layer” and in favor of a competitor who should not have the risk of guessing wrong about what a claim term could possibly mean.

Judge Plager’s solution is gets to the heart of the matter – claim construction is problematic because patents and patent claims are so often drafted in ways that hide the invention rather elucidate the inventor’s contribution.

Merging Burdens on Motions at Law in Patent Invalidity Cases

Patent

By Dennis Crouch

Novozymes A/S v. DuPont Nutrition Biosciences (Fed. Cir. 2013) involved an interesting issue of the weight a judge should give to a jury decision on JNOV. In the case, a jury rejected the accused infringer's written description invalidity argument. However, in a post-verdict judgment the district court judge determined the patent claims invalid as a matter of law, notwithstanding the jury verdict. The law ordinarily requires that jury decisions be given some amount of deference and factual determinations by a jury (such as the written description inquiry) should only be overturned by a judge when not supported by substantial evidence. Some courts rephrase this test as requiring a verdict be "clearly erroneous" before a court may overturn that verdict and, as such, a court cannot merely substitute its own judgment.

The logical confusion in this case stems from the rule that patent invalidity must be proven with clear and convincing evidence. Thus, the court's JNOV decision ruled that: the jury verdict (finding DuPont failed to present clear and convincing evidence of invalidity) was clearly erroneous. My question is whether these two requirements actually merge in this situation. I.e., can the court overturn the jury's non-invalidity verdict if it finds clear and convincing evidence that the patent is invalid? Or instead, must the court apply some standard that is even higher than clear-and-convincing evidence before overturning the jury verdict. Neither of these solutions seem appropriate, although in the appellate court case the majority (Judges SCHALL and BRYSON) chose the prior while the dissent (Chief Judge RADER) chose the latter.

Written Description: Showing “Possession” of a Negative Limitation

Patent

By Dennis Crouch

In re Bimeda Research & Development (Fed. Cir. 2013)

Bovine mastitis is udderly problematic. Since so many folks now want to buy antibiotic free milk, dairy owners are looking for new ways to address the issue. Bimeda's patent relates to one solution that can be used during a "dry period" – typically prior to a cow giving birth. See U.S. Patent No. 6,506,400. The offered solution essentially involves painting-on a waxy physical barrier to protect the mammary teat canal during the dry period. These seals are not new, but Bimeda's revolution is that its seals do not include any antiinfectives. In 2009, a competitor (Merial Ltd., a Sanofi compani) filed an ex parte reexamination request.

During reexamination, Bimeda added several new claims including a new limitation that the physical barrier seal is made of "an acriflavine-free" formulation. Acriflavine is well known to folks skilled in the art as a treatment for mastitis. However, the original specification does not mention acriflavine. The result is that the PTO Board found the claim unpatentable for failing to comply with the written description requirement of 35 U.S.C. 112. On appeal, the Federal Circuit affirms.

The original patent application must disclose the invention being claimed – otherwise the claim fails the written description requirement and is unpatentable. Written description issues arise most often when a patentee changes claim language during prosecution (as here) and adds new limitations in order to avoid prior art. Written description is often seen as a "technicality" requirement because it applies even when the added limitation would have been easy for someone of skill in the art to add without further instructions in the application specification. The point of the requirement is to make sure that patents are only granted to cover subject matter actually invented.

Here, Bimeda argued that it should be able to add the acriflavine-free limitation because (1) acriflavine is an antiinfective and the application described formulations that were antiinfective free and, the exemplary embodiment (Example 1) described a formulation that was acriflavine-free. Now, to be clear, the example did not spell out that the formulation was "acriflavine-free." Rather, acriflavine was simply not in the list of ingredients.

On appeal the Federal Circuit reviewed the factual question of written description for substantial evidence. Thus, the PTO wins if it can show more a mere scintilla of evidence in support of its findings. The court easily found sufficient evidence.

In this case, the Board found, inter alia, that claim 32 failed the written description requirement because the disclosure did not "describe[] a formulation excluding a specific species of the anti-infective genus, while permitting others to be present." On appeal, Bimeda counters this finding by arguing that the disclosure broadly claims a teat seal formulation utilizing a physical barrier, yet does not expressly exclude any particular antiinfective agents. Bimeda interprets this as tacit indifference to the presence or absence of specific antiinfectives, and contends that the disclosure therefore supports a claim which excludes one particular antiinfective (such as acriflavine) but permits the use of others (such as antibiotics).

Substantial evidence supports the Board's contrary interpretation because the disclosure is generally inconsistent with a formulation which, like claim 32, excludes acriflavine but could include antibiotics.

Judge Clevenger drafted the opinion for the court. Chief Judge Rader also filed a short concurring opinion noting that the usual catchphrase of "possession" is not the correct way to think about written description. In particular, according to Rader, possession makes no sense here where the focus is on a negative limitation. He writes that "the Board places the patentee into a Catch-22: to satisfy written description, the patentee must show possession of something it specifically claims it does not possess." Here, Judge Rader suggested an important element in this case is the fact that Acriflavine is a "well-known species of antiinfective that [has] been used in teat seals to treat bovine mastitis for over 75 years." Along these lines, it makes sense that you could later claim a "wheat-free" bread invention based upon a disclosed bread recipe that includes a list of ingredients for making the bread and where wheat is missing from the ingredient list. Of course

Integration Analysis Dooms Patent’s Written Description

Patent

By Dennis Crouch    

Novozymes A/S v. DuPont Nutrition Biosciences (Fed. Cir. 2013)

At trial, the jury sided with the patentee Novozymes on the issue of validity – finding that DuPont had failed to prove “by clear and convincing evidence that any one or more of the claims are invalid because the application filed on November 16, 2000 . . . does not contain an adequate written description.” Following the verdict, however, the district court judge rejected the jury verdict and instead held that, as a matter of law, the claims lacked written description support. On appeal, the Federal Circuit now affirms – finding that no reasonable jury could find the patent valid.

The written description requirement of 35 U.S.C. § 112(a) mandates that a patent application’s written description must ‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’ Vas-Cath. The requirement questions whether the inventor was in possession of the claimed invention at the time the patent application was filed.

In this case, Claim 1 of the invention is directed to an alpha-amylase enzyme variant with a 90%+ sequence identity to BSG alpha-amylase, an amino acid substitution at serine 239, and increased thermostability at pH 4.5, 90°C, and 5 ppm calcium. The enzyme is used to make ethanol.

The original patent application describes each element of the claimed invention. However, the application does not particularly identify this particular combination of limitations. Rather, the application lists BSG along with six other types of alpha-amylase; lists the 239 position mutation along with 32 other potential mutation positions; and indicates broader ranges for thermostability of 4.5-5 pH and 85-95°C. U.S. Patent No. 7,713,723.

In considering whether the description was sufficient, the Federal Circuit considered the claimed invention “as a integrated whole” rather than merely element by element:

While the 2000 application provides formal textual support for each individual limitation recited in the claims of the ‘723 patent, it nowhere describes the actual functioning, thermostable alpha-amylase variants that those limitations together define. Taking each claim—as we must—as an integrated whole rather than as a collection of independent limitations, one searches the 2000 application in vain for the disclosure of even a single species that falls within the claims or for any “blaze marks” that would lead an ordinarily skilled investigator toward such a species among a slew of competing possibilities.

The court makes clear here that written description is not satisfied merely by ensuring that each individual claim limitation is disclosed in the original disclosure. Rather, the written description requires disclosure of the patented claim as a whole.

Although strongly worded, this case is one in a spectrum of written description cases and thus only incrementally moves the law.

The majority opinion was written by Judge Schall. Chief Judge Rader wrote in dissent – arguing that substantial evidence supported the jury verdict.

Patent Troll Panel at Yale Law School

Patent, ,

Guest post by Lisa Larrimore Ouellette, Postdoctoral Associate in Law and Thomson Reuters Fellow, Yale Law School Information Society Project

Last month I moderated a panel discussion hosted by the Information Society Project at Yale Law School on what are variously (and ambiguously) called patent-assertion entities (PAEs), non-practicing entities (NPEs), or patent trolls (video here). These entities have attracted significant recent attention: they are the target of a GAO report required by the AIA (now nearly eight months overdue), a DOJ/FTC workshop (which may lead to subpoenas), and the proposed SHIELD Act (mandating fee-shifting for some losing NPEs). But several panelists at Yale argued that this focus on trolls is misplaced.

Professor Michael Risch (Villanova), described his finding in Patent Troll Myths that the patents enforced by trolls look “basically like the patents you see in the rest of the world.” NPEs drive up product costs by suing operating companies over what are sometimes weak patents—but so do operating companies, and if this a problem, any solution should target both. He said his views are nicely illustrated by the case of Innovatio targeting thousands of Wi-Fi end users:

My first thought upon hearing about these folks was “the gall of these people, to think that they invented wireless LANs.” [But] it turns out they got all their patents from Broadcom. You know what? Broadcom did invent wireless LANs, along with a bunch of other people … It’s unclear whether [Innovatio is] doing bad things by going after these end users, I don’t know. But the question I have is, would it be so much better if Broadcom were doing this? I don’t think so. … A lot of [NPE] patents come from people who have spent money developing them, real research dollars, which is the exact kind of thing we have patents for. … We have to do something about the behavior, and not the owner.

Christina Mulligan (Yale ISP Fellow, starting as a professor this fall at Georgia Law) countered that extreme trolling behavior—in which the patent is simply hidden “in a submarine-like way” until an operating company independently invents and commercializes—is necessarily harmful because society gains nothing from the patent. This problem could be alleviated with an independent invention defense, or with solutions more directly targeting trolls (including private solutions such as Colleen Chien’s proposed patent litigation insurance for small companies, which Mulligan thinks might “starve the [troll] beast”). Professor Tun-Jen Chiang (George Mason) agreed that trolls often assert normatively unjustified patents, and noted that the same problem can exist when an operating company holds the patent. The problem of legally valid but negative-net-welfare patents is not an NPE problem—it is a systemic problem. NPEs simply make enforcement of such patents more effective, but “if we are going to a bad destination I don’t want to get there faster.” And even though the problem is broader than NPEs, in the absence of real patent reform, a narrower solution that targets NPEs might be “a second-best solution.”

Manny Schecter (IBM Chief Patent Counsel) disagreed, arguing that reforms that target particular business strategies (or particular technologies) are a mistake. But that doesn’t mean that NPEs are not causing an enormous shift in the patent landscape. IBM has been the top annual US patentee for the past 20 years and licenses its IP “to the tune of a billion dollars a year,” but it has only brought litigation to enforce its patents “once or twice a decade.” NPEs are now driving a “dramatic increase” in the amount of patent litigation (most of which does not affect IBM because it is no longer in the consumer electronics space). This isn’t necessarily bad, but it is definitely changing the dynamic—because legal departments are “overwhelmed,” NPEs “can impede the ability of the genuine competitors from enforcing their patents.” Still, an independent invention defense like Mulligan suggests would be a “mistake” because it would create an incentive to not look at patents and to reinvent the wheel. “Some of the academics here will say, ‘Well, studies show people don’t look at patents to figure out what others are doing.’ … Don’t believe it.” [Note from Lisa: I agree!] Instead of focusing on NPEs, “to the extent we can do anything to improve the patent system’s certainty and clarity, we should be doing that … Removing some of those uncertainties from the system will in turn take away a tool that is in fact sometimes leveraged in the very types of litigation we are talking about here.”

Nathan Kelley (PTO Deputy Solicitor) described two such PTO initiatives to improve the patent system’s clarity: First, improving ownership information in PTO databases from the current “antiquated system of recording” so that people know who owns patents throughout their lifecycle and “who is the controlling entity behind accusations of infringement.” Second, working during prosecution to make sure claims have “understandable scope,” which is “particularly problematic when it comes to functional claiming … a problem that arises more frequently—I think it’s fair to say—in the NPE world and the software world.” He specifically mentioned Mark Lemley’s work on how § 112(f) needs to be applied more rigorously, and said they are working on having examiners specify on the record whether they think claims trigger § 112(f) or not. But he agreed that specifically targeting NPEs is a mistake:

We have history in our country of making our patent laws technology neutral, and maybe even business-model neutral as well. And to extent that we want to step away from that, and start to make laws that discriminate either on technology or on the business entity asserting the rights, we’re going to cause some problems, and we’re going to some extent devalue patents that already are there. … If we tip the balance against patentees, inevitably we are going to lower the incentive factor. And whether that’s a good thing or not I guess is something we’ll continue to debate.

The debate about patent trolls thus really seems to be a debate about the patent system. None of the panelists seemed to believe that patent assertion by NPEs is per se a problem—if there is a problem, it is that normatively unjustified patents are disproportionately asserted by trolls (though trolls also assert “good” patents, and “bad” patents do not exclusively belong to trolls). How you feel about trolls will depend on how prevalent you think those “bad” patents are—where “bad” means that the patent has negative net social welfare, even though it might be completely legally valid—a question that is frustratingly hard to resolve empirically. In the meantime, the best we might be able to do is improve patent clarity and certainty, a goal that is hard to argue against (though some have tried). Unfortunately, given current divisions on the Federal Circuit, improving clarity is sometimes easier said than done.

PatCon 3: Posner/Epstein Debate on the Patent System

Patent, , , , , ,

Continuing to liveblog from PatCon 3.  I'll continue updating this post throughout the debate. 

A Debate About the Patent System

The Honorable Judge Richard Posner of the United States Court of Appeals for the Seventh Circuit
Professor Richard Epstein, Laurence A. Tisch Professor of Law, New York University School of Law, and James Parker Hall Distinguished Service Professor Emeritus of Law and Senior Lecturer, University of Chicago Law School

Moderated by Olivia Luk of Niro, Haller & Niro

For another perspective on this debate, check out Lisa Larrimore Ouellette's post over at Written Description.

(more…)

Liveblogging PatCon 3: A Conversation with Industry

Patent, , , ,

By Jason Rantanen

Today I'll be liveblogging from PatCon 3.  For those who are interested, the substance will be after the break.  I'm told that video recordings will be available for the plenary presentations.

A conversation with industry

Jim Trusell – Chief IP counsel at BP
Karen Nelson – attorney at AbbVie 
Jon Wood – Chief IP Counsel at Bridgestone
Paul Rodriguez – Chief IP Counsel at RR Donnelly
Stephen Auten – Cozen O'Conner (moderator)

(more…)

The Federal Circuit Table of Authorities

Patent, ,

By Dennis Crouch

For the following list I parsed through all precedential patent related opinions at the Federal Circuit for the past three years. The resulting list are the fifteen most frequently cited cases in Federal Circuit patent decisions:

  1. Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
  2. Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc)
  3. KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398 (2007)
  4. Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)
  5. Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986)
  6. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)
  7. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc)
  8. Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009)
  9. Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc)
  10. ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368 (Fed. Cir. 2009)
  11. Bilski v. Kappos, 130 S.Ct. 3218 (2010)
  12. In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000)
  13. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007)
  14. In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc)
  15. Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (Fed. Cir. 2008)

For cases decided within the past year, the only new entrant on the list is Microsoft Corp. v. i4i Ltd. Partnership, 131 S.Ct. 2238 (2011)

In re Owens (Guest Post by Prof. Sarah Burstein)

Patent, , ,

Guest post by Sarah Burstein, Associate Professor of Law at the University of Oklahoma College of Law.  Professor Burstein will be speaking at Stanford's conference on Design Patents in the Modern World next week. – Jason

In re Owens (Fed. Cir. Mar. 26, 2013) Download 12-1261
Panel:  Prost (author), Moore, Wallach

Earlier this week, the Federal Circuit issued its opinion in In re Owens. (For prior Patently-O coverage of this case, see here.)

In this case, the Federal Circuit affirmed the PTO’s rejection of U.S. Design Patent Application No. 29/253,172. The ’172 application claimed the following design:

Owens 1

The ’172 application was a continuation of—and claimed priority based on—U.S. Design Patent Application No. 29/219,709 (which issued as U.S. Des. Patent No. 531,515). The ’709 application claimed the following design:

Owens 2

In design patents, broken lines can be used to show: (1) unclaimed “environmental” matter (often, though not always, shown with dotted lines); or (2) unclaimed boundaries (often shown using dot-dashed lines). According to the MPEP, an “[a]pplicant may choose to define the bounds of a claimed design with broken lines when the boundary does not exist in reality in the article embodying the design. It would be understood that the claimed design extends to the boundary but does not include the boundary.”

So, essentially, the ’172 application broadened the original claim by changing a number of solid lines to dotted lines. Importantly, though, this was not the problem in Owens. (Indeed, the Federal Circuit went so far as to say in dicta that these types of dotted disclaimer lines “do not implicate § 120.” Whether that blanket statement really fits with the logic of the rest of the opinion is an issue for another day.)

The problem was the addition of the dot-dashed boundary line on the front panel. The examiner found no evidence that Owens possessed that “trapezoidal region” (as the Federal Circuit called it) at the time of the original application. Therefore, the application was rejected for failure to comply with 35 U.S.C. § 112, ¶ 1 and as “obvious in view of the earlier-sold bottles.” The Board affirmed.

On appeal, Owens argued, among other things, that the continuation application did not add new matter because all of the portions of the claimed partial design (including the trapezoidal area on the front panel) were “clearly visible” in the parent application. In support of this argument, Owens relied on In re Daniels.

In Daniels, the Federal Circuit held that a continuation application that claimed the design shown below on the right was entitled to the priority date of its parent application, which claimed the design shown below on the left:

Owens 3

But the Federal Circuit distinguished Daniels, stating that:

The patentee in Daniels did not introduce any new unclaimed lines, he removed an entire design element. It does not follow from Daniels that an applicant, having been granted a claim to a particular design element, may proceed to subdivide that element in subsequent continuations however he pleases.

According to the court, “the question for written description purposes [in this case] is whether a skilled artisan would recognize upon reading the parent’s disclosure that the trapezoidal top portion of the front panel might be claimed separately from the remainder of that area.” The Federal Circuit concluded that the Board’s finding on that factual issue was “supported by substantial evidence because the parent disclosure does not distinguish the now-claimed top trapezoidal portion of the panel from the rest of the pentagon in any way.”

The court did not stop there, though. It went on to answer “a question raised implicitly in Owens’s appeal and explicitly in amicus briefing—whether, and under what circumstances, Owens could introduce an unclaimed boundary line on his center-front panel” without running afoul of the written description requirement. Section § 1503.02 of the MPEP currently provides that:

Where no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter. Any broken line boundary other than a straight broken line may constitute new matter . . . .

The Federal Circuit rejected this rule, noting that if Owens had simply placed the boundary line at the widest point of the front panel, “the resulting claim would suffer from the same written description problems as the ’172 application.”

So what are applicants supposed to do going forward? According to the Federal Circuit, “the best advice for future applicants was presented in the PTO’s brief, which argued that unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure.”

Notably, this rule is—as the PTO admitted at oral argument—a break from (at least some) past PTO practice. For example, as Method Products, Inc. pointed out in its amicus brief, the PTO allowed all of the following claims for a humidifier design:

Owens 4

If nothing else, this case makes it clear that the PTO needs to provide greater guidance on the written description requirement and, in particular, on the use of unclaimed boundary lines. Hopefully, the PTO will do so soon.

 

 

Reverse Payments at the Supreme Court

Patent, ,

FTC v. Actavis (Supreme Court 2013) /media/docs/2013/03/12-416.pdf

The Supreme Court today heard oral arguments in the reverse-payment pharmaceutical case of FTC v. Actavis. The FTC is asking the court to rule that it is impermissible for a pharmaceutical company to pay a potential competitor to stay out of the market – even when shrouded as a patent litigation settlement. This case stems from the Hatch-Waxman Act that encourages a generic manufacturer to step forward and challenge a patentee’s patent rights. In a number of cases, branded manufacturers have offered various incentives to the first-filing generic to end its challenge. These are termed “reverse payments” because the patentee is offering the incentive (money) rather than the usual patent infringement case where the patentee is expecting to be paid.

The FTC challenged a settlement between Solvay and Actavis where Solvay paid around $30 million per year to generic companies to keep generic versions of Androgel off the market.

The question asked by the cert petitions:

Whether reverse-payment agreements are per se lawful unless the underlying patent litigation was a sham or the patent was obtained by fraud (as the court below held), or instead are presumptively anticompetitive and unlawful (as the Third Circuit has held).

The following are a few notes from oral arguments. USDOJ Deputy Solicitor Malcolm Stewart began with the government’s basic premise:

MR STEWART: As a general matter, a payment from one business to another in exchange for the recipient’s agreement not to compete is an paradigmatic antitrust trust violation. . . . Reverse payments to settle Hatch-Waxman suits are objectionable for the same reasons that payments not to compete are generally objectionable. They subvert the competitive process by giving generic manufacturers an incentive to accept a share of their rival’s monopoly profits as a substitute for actual competition. . . . [T]he point here is that the money is being given as a substitute for earning profits in a competitive marketplace.

Some think of patent law as an exception to antitrust law and a number of courts have basically exempted would be collusive or anticompetitive conduct because the activity was conducted under the a patent shield. Justice Scalia focused on this point:

JUSTICE SCALIA: Mr. Stewart, do you have a case in which the patentee acting within the scope of the patent has nonetheless been held liable under the antitrust laws for something that it’s done acting within the scope of the patent?

MR. STEWART: Yes, if you adopt Respondent’s conception of what it means to act within the scope of the patent. And let me explain. When the Respondents say that the restrictions at issue here are within the scope of the patent, what they mean is that the goods that are being restricted are arguably encompassed by the patent and the restriction doesn’t extend past the date when the patent expires.

That’s all they mean. And if that were the exclusive test, the defendants in Masonite, in New Wrinkle, in Line Material, they would all have been off the hook, because all of those cases involved restrictions on trade in patented goods during the period that the patent was in effect, and yet, the Court found antitrust liability in each of these.

Answering that same question in his presentation, Jeff Weinberger disagreed:

MR. WEINBERGER: The answer to that question is no. All of the cases that have found violations of the antitrust laws based on a patent-based restraint do so because the object of the agreement, the restraint that’s being achieved in the agreement, is beyond the scope that could be legitimately achieved with a patent.

The incentive for a patentee to pay a generic challenger to keep off the market is at least partially governed by the chance that the patentee would lose the infringement litigation.  At its core, this case should really about whether antitrust officials should take-into account the fact that a patent is likely-invalid or not-infringed when judging anticompetitive behavior.  However, neither party supports that approach:

MR. WEINBERGER: The patent g[ives] the patent holder the legal right to exclude. So unless there’s a reason, there’s some reason to believe that it couldn’t reasonably assert that patent, it’s entitled to monopoly profits for the whole duration of the patent.

…

[Earlier] JUSTICE KENNEDY: And one way [to judge anticompetitive behavior] is to assess the validity or the strength of the infringement case?

MR. STEWART: We would say that that’s not a way

JUSTICE KENNEDY: That’s my concern, is your test is the same for a very weak patent as a very strong patent. That doesn’t make a lot of sense.

MR. STEWART: Well, [our proposed] test is whether there has been a payment that would tend to skew the parties’ choice of an entry date, that would tend to provide an incentive … for the generic to agree to an entry date later than the one that it would otherwise insist on. Now, it probably is the case that our test would have greater practical import in cases where the parties perceive the patent to be [invalid].

JUSTICE KENNEDY: Why wouldn’t that determination itself reflect the strength or weakness of the patent so that the market forces take that into account?

MR. STEWART: [unable to give a direct answer]

…

MR. WEINBERGER: I think our patent system depends upon the notion that you don’t evaluate from the perspective of the antitrust laws a patent restraint based upon whether you could have proved in a litigation that that patent was infringed.

. . .

JUSTICE SCALIA: You can’t possibly figure it out, can you, without assessing the strength of the patent? … And to say you can consider every other factor other than the strength of the patent is to leave out the the elephant in the room.

MR. WEINBERGER: I agree with that, Justice Scalia. I don’t think that an alternative test — the only alternative test that could be fashioned that would — that would make sense is one based on strength of the patent. But there are so many reasons that that is an undesirable result that I — I don’t think it’s the way this Court should go.

Justice Breyer was also clearly frustrated with the FTC’s proposed “overcomplicated” test as well as with the patentee’s insistence that reasonable invalidity and non-infringement arguments be ignored in the antitrust analysis.

MR. WEINBERGER: I’ve obviously given a lot of thought to whether there is any kind of an intermediary test that works, and I don’t believe there is.

As per his usual Justice Scalia found some amount of fault with Congress as well:

JUSTICE SCALIA: I have the feeling that what happened is that Hatch-Waxman made a mistake. It did not foresee that it would produce this kind of payment. And in order to rectify the mistake the FTC comes in and brings in a new interpretation of antitrust law that did not exist before, just to make up for the mistake that Hatch-Waxman made, even though Congress has tried to cover its tracks in later amendments, right, which -which deter these, these — these payments? . . . So, why should we overturn understood antitrust laws just to — just to patch up a mistake that Hatch-Waxman made?

In the end, the basic question for decision seems to be whether or not to presume that a reverse payment is anticompetitive. With Justice Alito’s recusal, I’m looking for a 4-4 tie that would simply reinforce the current circuit split.

More from Lyle Denniston and Lisa Larrimore Ouellette.

Figures in Design Patents

Patent, ,

By Dennis Crouch

The chart above shows a histogram of the number of figures included in a set of 90,000 US design patents issued over the past several years. The median number of figures is 7 and the average is 7.3 figures. The typical seven views are typically six orthogonal views and one perspective view. Designs with only one figure are typically surface treatments or screen icons. Microsoft’s recent GUI Design Patent No. D675,221 is shown to the right and appears to show an mapping interface for zooming in and out. In utility patents, the figures are used to flesh-out the disclosure and ensure that the requirements of written description and enablement are met. In design patents, the figures have the additional importance of defining the scope of the patent claim. In that vein, each additional figure may add additional limitations to the scope of coverage.

When does the Written Description Requirement Limit Amendments to Design Patent Drawings

Patent, ,

By Dennis Crouch

In re Owens (Fed. Cir. 2013) (decision pending)

In 2006, P&G obtained a design patent for its Crest brand mouthwash bottle. D531,515. Before that patent issued, the company filed a continuation application and eventually amended the drawings to use ghost-lines (dashed lines) for most of the bottle design and solid design lines for only a small portion of the bottle surface.

In the figures below, the drawing on the left is the design drawing originally filed in the specification and issued in the D'515 patent. The drawing on the right is found in the continuation and the subject of this appeal. In design patents, the drawings are of critical importance because the single allowable design patent claim typically ties the scope of enforceable right to the drawings. Here, for instance, in the D'515 design patent P&G claims "the ornamental design for a bottle, as shown and described."

Now, for claim purposes, ghosted lines have essentially no meaning and are given no weight. Thus, the continuation below claims a portion of the bottle base. The focus of the litigation is on the front portion of the bottle that previously claimed an inverted irregular pentagon and now appears to be limited to only the upper portion of that pentagon in a roughly trapezoidal shape. The base of the trapezoid is ghosted, but the drawing does claim the surface up to the ghosted line. In the photo of the Crest bottle to the right, you can see the inverted pentagon design is created by a label sticker.

During prosecution, the PTO rejected P&G's continuation application — concluding that the new claim (as shown in the drawing) did not satisfy the written description requirement of 35 U.S.C. § 112(a). In other words, it is not apparent from the originally filed specification that that the inventor was at that time in possession of the invention as now claimed. P&G's argument is that the area being claimed was already disclosed in the original application and that is literally true. The PTO responds, however, that the original application did disclose a break-point for the trapezoidal area now being claimed. In other words, nothing in the original application indicates that the portion now claimed could itself be a design. The PTO has proposed a rule it feels is administrable: applicants can amend claims by "ghosting" solid lines and vice-versa, but applicants cannot further partition areas or define new portions without running afoul of the written description requirement.

Design patents are largely governed by the same rules as utility patents. This is often unfortunate because the policy goals supporting many of the (utility) patent rules do not map well to the world of design rights. Designs are, for the most part, being used as an additional layer of trademark (trade dress) protection rather than as an incentive to invest in the invention of new designs. This case fits that mold well. But, it is the patent laws that we follow.

In thinking about the written description requirement, a good beginning approach is to try to first uncover the best analogy to utility patent doctrine. One analogy might be to subgenus & subrange claims. Utility patents regularly disclose and claim concentration level ranges, such as "concentration of cardiolipin is between 0.02 and 0.04%." When impinging prior art is discovered, one solution is to amend the claim scope to narrow the claims – perhaps to change the concentration to "between 0.02 and 0.03%." However, the written description requirements limits an applicant's ability to make this narrowing amendment unless there is some evidence that the applicant had (at the time of the application filing date) possession of the invention with the narrower range as well. For these points, the M.P.E.P. cites In re Smith, 458 F.2d 1389 (CCPA 1972) (a subgenus is not necessarily described by a genus encompassing it and a species upon which it reads) and In re Lukach, 442 F.2d 967 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range). Of course, the amendment by P&G in the present case is not a narrowing amendment but rather might better be seen as a broadening amendment – of course, broader and narrower in design patent law is somewhat difficult to define. The written description requirement is also used to invalidate claims that have been broadened by eliminating claim limitations. Such cases include ICU Medical v. Alaris Medical System (Fed. Cir. 2009) and the often maligned Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) (claims to a sectional sofa comprising, inter alia, a console and a control means were held invalid for failing to satisfy the written description requirement where the claims were broadened by removing the location of the control means). See also MPEP § 2172.01.

All-in-all, the PTO's position makes sense to me – that nothing in the new original application suggests the claim limit as suggested by P&G. Design patent claims are considered "as a whole" and refocusing only on a small portion of a design can dramatically alter the impact and overall feel of the design. In the ordinary doctrine of patent law, such a potentially dramatic change in claim scope is only allowed if the original disclosure evidences that the inventor possessed the refocused invention at the time of filing. It is reasonable here to say that Owens did not possess that new invention as now claimed. Here, we should be keen to recognize that the written description requirement is separate and distinct from the enablement requirement – even though both arise from the same statutory phrase in Section 112. Here, there is no question that the enablement requirement is met.

The kicker for the PTO in this case is that written description is a question of fact and PTO determinations on questions of fact are given substantial deference on review by the PTO. There is hardly any question in my mind that the PTO's position passes that low threshold.

The case was recently argued before Judges Prost, Moore, and Wallach. This panel is interesting because of Judge Moore's famous pre-nomination article on the problems of patent continuations. This case arises out of a continuation. P&G wants to claim priority back to the original filing date because the original patent had already been out for more than a year by the time that the amended claims were introduced in the continuation. Thus, if it cannot claim priority then its original work will serve as prior art to block this later patent from issuing. A decision is expected later this spring.

In the trade dress world, this mess would not make such a difference because we don't worry about prior art but rather priority in the marketplace. But again, in the US, design patent rights are squarely within the pigeon hole of patent law.

Related articles
Guest Post by Sarah Burstein: Apple v. Samsung
Mark-Up and Commentary on the Patent Law Treaties Implementation Act of 2012
Moving Away from Beauty as a Factor in Design Patent Validity

What can Patent Applicants do to Improve Patent Quality?

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By Dennis Crouch

Patent “quality” has many different meanings. The primary focus of the PTO under Director Dave Kappos is on the timely issuance of “right sized,” valid patents. I would add an additional important focus of ensuring that the scope and coverage of each patent is relatively easy to determine. These measures of patent quality fit within broader goals of the patent system — incentivizing innovation and disclosure of those innovations within a competitive marketplace. The patent rules are intended work as something of a feedback system at varying levels of granularity, guiding innovators and applicants in ways that hopefully push us toward those ultimate goals.

I tend to model the patenting process is something of a negotiation between the PTO an the patent applicant. The PTO possesses the authority to grant or deny patent applications, but every word found in the patent is written or approved by the patent applicant. Obviously, the patent applicant’s role in this process is deep and substantial. A patent’s conception begins with words drafted by the patent applicant, not the examiner; amendments are made by the patent applicant, not the examiner, and, after approval by the patent examiner, is the patent applicant must approve the final issuance of a patent (with the payment of a fee).

For many years, I have argued that meaningful change in the state of patent law and patent quality could be implemented in incentives that push applicants toward filing quality patent applications – claiming valid subject matter and drafting claims with well-defined scope. The USPTO agrees and has now published a notice on its project to “focus[] on potential practices that applicants can employ at the drafting stage of a patent application in order to facilitate examination and bring more certainty to the scope of issued patents.” Email comments to QualityApplications_Comments@uspto.gov by March 15, 2013.

The PTO’s current ideas on this front focus on ways to clarify the meaning of terms used in the claims and the resulting scope of the claims. Some of the initial ideas presented are traditional define-your-terms notions while others suggest that new mechanisms of information connectivity may offer solutions.

On these fronts, the PTO lists the following ideas and requests comments:

  1. Clarifying the Scope of the Claims
    1. Presenting claims in a multi-part format by way of a standardized template that places each claim component in separate, clearly marked, and designated fields. For instance, a template may facilitate drafting and review of claims by separately delineating each claim component into separate fields for the preamble, transitional phrase, and each particular claim limitation.
    2. Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart or the standardized template described above. This practice could be particularly beneficial where claims are amended or where a continuing application (continuation, divisional, continuation-in-part) is filed.
    3. Indicating whether examples in the specification are intended to be limiting or merely illustrative.
    4. Identifying whether the claim preamble is intended to be a limitation on claim scope.
    5. Expressly identifying clauses within particular claim limitations for which the inventor intends to invoke 35 U.S.C. 112(f) and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified 35 U.S.C. 112(f) claim limitations.
    6. Using textual and graphical notation systems known in the art to disclose algorithms in support of computer-implemented claim limitations, such as C-like pseudo-code or XML-like schemas for textual notation and Unified Modeling Language (UML) for graphical notation.
  2. Clarifying the Meaning of Claim Terms in the Specification
    1. Indicating whether terms of degree—such as substantially, approximately, about, essentially—have a lay or technical meaning and explaining the scope of such terms.
    2. Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to certain technologies, such as software.
    3. Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms.

As we all move forward with this process (over the years…), I am confident that we will begin to think of patents less and less like “documents” that printed and read, but more like digital information maps that provides a network of information about inventions. Part of this potential comes from linking claim terms to descriptions found elsewhere and direct mark-up that ties original text to post application changes and notations.

None of these changes would make patent quality easy – but they would likely help move us in the right direction.

Means Plus Function Claiming

Patent,

by Dennis Crouch

 

PatentlyO201

The chart above shows the percentage of published non-provisional patent applications that include the term "means for" at least once in the claimset. Although not the only way of doing so, "means for" is traditionally used by patent attorneys to invoke the doctrine known as means-plus-function claiming allowed under 35 U.S.C. 112p6. [Soon to be renumbered 35 U.S.C. 112(f)].  As the chart shows, the percentage of applications that include at least one means-plus-function term is well under 10% and seemingly in continued decline. A decade ago, about 1/4 of all applications included this type of claim. 

Section 112(f) states: 

(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.

Under the statute, a term claimed in means-plus-function format will be construed to cover the corresponding structure that is described in the specification and equivalents thereof.  Thus, for a claim recites a "means for fastening," the first step in understanding the scope of that claim is to look in the patent specification to see whether any structural component has been described.  If so, then the means-plus-function term will be construed to cover that structure and its equivalents.  Thus, in our fastenting example, if the specification discusses glue as a way to fasten two objects to gether, then the "means for fastening" will be interpreted as covering glue and its equivalents.  One reason why means-plus-function claims have fallen out of favor is that this actual scope given to the means claim is quite narrow, while a different term such as "a fastener" might be given a broader scope.  If there is no corresponding structure given in the specification, then the means-plus-function term will be considered indefinite and the associated claim invalid or unpatentable.  

The idea behind means-plus-function claims is that it is often much easier and more straightforward to claim a means for doing something rather than listing (in a claim) all the possible ways of accomplishing the task.  The strong limitations on the claim scope stemming from an MPF term stems from Supreme Court cases such as O'Reilly v. Morse, 56 U.S. 62 (1853). In that case, Morse (inventor of the telegraph) attempted to claim any use of electromagnetism for sending signals over a distance. Morse made clear in his claim that he intended to not be limited "to the specific machinery or parts of machinery described in the foregoing specification and claims."  In deciding the case, the Supreme Court held that to be patentable, the legal claim must be more directly tied to the practical application and implementation of the idea. The restrictions on the interpretation of means-plus-function terms help ensure that those claims are tied to particular structures and thus will not run afoul of Morse or other similar doctrines. 

Because of these restrictions on means-plus-function terms, Professor Mark Lemley has suggested that courts begin to interpret software claim terms as being written in means-plus-function format.  [Link].  In all likelihood this would severely limit the scope of many software related patents and would also lead many of them to be invalidated under MPF-indefiniteness. 

Related articles
Means-Plus-Function: Invalid as Indefinite
The Frequency of Means-Plus-Function Claims
BPAI: First Decide Indefiniteness, then Subject Matter Eligibility
Flowchart Insuficient Structure to Define Sofware Means-Plus-Function Limitation
An Examination of Software Patents