Patent Enforceability: Increasing the Odds

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Patent EnforceabilityIncreasing the Odds

• Prosecution Strategies to Maximize Protection and
  to Avoid Future Challenges and Invalidation
• Presented
• Part II Prosecution Inequitable Conduct
  Issues
• Strafford Publications
• October 26, 2006

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Table of Contents

• I. Brief Summary of Claim Interpretation
  Doctrine of Equivalents
• II. Importance of Prior Art Searching
• III. Application Practice to Avoid Future
  Challenges and Invalidation
• A. Background of the Invention
• B. Summary of the Invention
• C. Brief Description of the Drawings
• D. Detailed Description of Example Embodiments
• E. The Claims
• F. Abstract
• IV. Amendment Practice to Avoid Estoppels
• A. 35 U.S.C. 102
• B. 35 U.S.C. 103
• Consider all claim limitations
• Address claim as a whole
• C. Amendments
• V. Best Practices
• A. Examiners Interview
• B. Continuation Applications
• C. Reissue

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I. Brief Summary of Claim Interpretation
Doctrine of Equivalents

• Claim Interpretation Phillips v. AWH Corp., 75
  USPQ2d 1321 (Fed. Cir. 2005)
• Claims must be interpreted in light of the claims
  themselves, the specification, and the
  prosecution history, i.e., intrinsic evidence
• Ordinary meaning of a claim term is its meaning
  to a person skilled in the art at the time of the
  invention, after reading the claim term both in
  the context of the particular claim and the
  context of the entire patent, including the
  specification and prosecution history
• Extrinsic evidence, i.e., expert and inventor
  testimony, dictionaries, treaties and technical
  reference, may be used for an understanding of
  commonly used words or the underlying technology,
  but not for claim language interpretation and
  cannot contradict intrinsic evidence

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Phillips v. AWH Corp. Revisit

• Original Case U.S. Patent No. 4,677,798 relates
  to modular, steel-shell panels that can be welded
  together to form vandalism-resistant walls. The
  panels are useful in building prisons because
  they are load-bearing and impact-resistant, while
  insulating against fire and noise
• Claim recites means disposed inside the shell
  for increasing its load bearing capacity
  comprising internal steel baffles extending
  inwardly from the steel shell walls
• Meaning of term baffles is in dispute
• Ordinary meaning according to the dictionary of
  the term baffles is very broad - Something
  which deflects, checks or otherwise regulates
  flow
• Intrinsic Evidence
• Baffles are used to deflect bullets, thus must
  have angles at other than 900 angle to deflect
  bullets
• Other functions of baffles are also described,
  including providing structural support for one
  of the walls, shown in FIG. 4 and FIG. 6 and
  providing for overlapping and interlocking to
  produce substantially an intermediate barrier
  wall between the opposite wall faces, and thus,
  creating small compartments that can be filled
  with either sound/thermal insulation or
  rock/gravel to stop projectile, shown in FIG. 7
• Dependent claims 2 and 17 further define that
  the baffles are disposed at angles for
  deflecting projectiles such as bullets that
  penetrate the outer shell
• Dependent claim 6 further provides an additional
  requirement for the baffles as being interlocked
  to form an intermediate barrier
• Decision
• In view of the multiple functions to be served by
  the baffles as described in the specification
  and the application of the doctrine of claim
  differentiation, the term baffles need not be
  read restrictively to require that baffles must
  be used to deflect bullets and, thus, must have
  angles at other than 90 degrees angle

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I. Brief Summary of Claim Interpretation
Doctrine of Equivalents

• B. Doctrine of Equivalents
• Traditional Function-Way-Result Test Whether
  the accused device or process performs
  substantially the same function in substantially
  the same way to accomplish substantially the same
  results as the patented invention
• Current Test Whether there are insubstantial
  differences between the claimed invention and
  the accused device or process.
• What constitute Insubstantial differences?
• - Proof that the accused device or process
  performs substantially the same function in
  substantially the same way to
  accomplish substantially the same results as the
  patented invention (traditional
  function-way-result test)
• - Proof of known interchangeability between
  elements
• - Proof of copying
• - Proof of designing around (substantial
  differences)

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I. Brief Summary of Claim Interpretation
Doctrine of Equivalents

• Prosecution History Estoppel
• Precludes a patent holder from asserting the
  doctrine of equivalents to cover subject matter
  surrendered during prosecution of the patent
  application. Festo Corp. v. Shoketsu Kinzoku
  Kogyo Kabushiki Co.
• - An amendment that narrows the scope of a claim
  for any reason related to the statutory
  requirements for a patent would give rise to
  prosecution history estoppel with respect to the
  amended claimed element.
• - A presumption exists that prosecution history
  estoppel bars all equivalents however, the
  patentee may rebut the presumption if
• (1) Equivalent may have been unforeseeable at
  the time of the patent application
• (2) Narrowing amendment bears no more than a
  tangential relationship to the equivalent or
• (3) One could not reasonably be expected to
  have drafted a claim that would have literally
  encompassed the alleged equivalent
• As a result, a rebuttable presumption of
  prosecution history estoppel is created when
  there is a narrowing amendment made to satisfy a
  statutory requirement for patentability, for
  example, under 35 U.S.C. 101 (statutory subject
  matter and utility), 102 (anticipation), 103
  (obviousness), 112-1st paragraph (lack of
  written description, enablement, and best mode),
  112-2nd paragraph (lack of definiteness),
  112-4th paragraph (claim differentiation and
  claim dependencies), 112-5th paragraph (improper
  multiple dependent claims)

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I. Brief Summary of Claim Interpretation
Doctrine of Equivalents

• Prosecution History Estoppel
• Exceptions
• Dedication In Johnson Johnson Assocs. Inc.
  v. R.E. Serv. Co., 285 F.3d 1046 (Fed. Cir.
  2002), the Federal Circuit held that the subject
  matter disclosed but not claimed would be deemed
  dedicated to the public, and that the patent
  holder would be estopped from invoking the
  doctrine of equivalents (DOE) to recapture such
  dedicated subject matter
• Foreseeable Alternatives In Sage Products v.
  Devon Indus., 126 F.3d 1420, 1428 (Fed. Cir.
  1997), the Federal Circuit made clear that claim
  limitations cannot be expanded under the Doctrine
  of Equivalents to cover foreseeable equivalents.
  Therefore, under Sage Products, a patent holder
  can capture newly developed, unforeseeable
  technologies as equivalents under the doctrine of
  equivalents (DOE), but not foreseeable ones,
  which the patent prosecutor must exhaust in the
  course of preparing the specification

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I. Brief Summary of Claim Interpretation
Doctrine of Equivalents

• Means Plus Function Claims under 35 USC 112,
  6th paragraph
• Test Whether a single means in the accused
  device or process is identical or structural
  equivalent to the means disclosed in the patent
  specification to perform the identical function
  of the claim element. See Lockheed Martin Corp.
  v. Space Sys./Loral, Inc., 324 F.3d 1308
• The function must be identical otherwise, there
  is no equivalence under 112, 6 element. As a
  result of such a strict application of 112, 6
  equivalence, means plus function claims have
  been traditionally discouraged in favor of claims
  using a more generic language to perform an
  intended function
• However, in view of significant restrictions
  imposed by Festo regarding the doctrine of
  equivalents (DOE), means plus function language
  have been recently promoted as an alternate tool
  to define the disclosed invention in order to
  maximize patent protection for patents

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I. Brief Summary of Claim Interpretation
Doctrine of Equivalents

• E. Federal Circuit Decisions
• Rule 1 Reading limitations from specification
  into claims, unless persuaded otherwise
• Example 1 Wang Laboratories v. American
  Online, Inc., 197 F.3d 1377
• - Specification character-based protocols and
  bit-mapped protocols known to display
  alphanumeric characters in frames. Only
  character-based frames described in embodiments
• - Claim used the word frames repeatedly,
  but not limited frames to character-based frames
• - Accused system used bit-mapped frames
• - No infringement
• Example 2 SciMed Life Systems, Inc., v.
  Advanced Cardiovascular Systems, Inc., 242 F.3d
  1337
• - Specification preferred use of a coaxial
  lumen catheter (lumen-within-a-lumen) design,
  consisting of two annular (concentric) and
  cylindrical catheters directed by a guide wire
  through an artery in which an inflatable balloon
  is placed at the distal end of the inner catheter
  (lumen) to relieve blockages
• - Claim Dual lumens, but does not specify the
  arrangement of lumens
• - Accused device used a dual lumen (side by
  side) design
• - No infringement

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I. Brief Summary of Claim Interpretation
Doctrine of Equivalents

• E. Federal Circuit Decisions
• Rule 2 Invalidating claims that are too broad
  for disclosure, unless persuaded otherwise
• Example 1 Gentry Gallery, Inc., v. Berkline
  Corporation, 45 U.S.P.Q.2d 1498
• - Specification only described a specific
  embodiment in which the control means is
  specifically located on fixed console disposed
  between two reclining seats (recliners)
• - Claim referred to the control means
  without expressly requiring such control means
  to be located on the fixed console disposed
  between two reclining seats (recliners)
• - Accused sofas used center set back that
  folds down to provide table top between adjacent
  recliners
• - Literal infringement However, claims are
  invalid for failing to meet written description
  requirement under 35 USC 112, 1st paragraph,
  even though claims read literally on the
  embodiment disclosed in the specification and
  drawings
• - Narrow disclosure will limit claim scope.
  Patentee could have easily provide alternative
  options for the location of such control means
  relative to the console but did not

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I. Brief Summary of Claim Interpretation
Doctrine of Equivalents

• E. Federal Circuit Decisions
• Rule 2 Invalidating claims that are too broad
  for disclosure, unless persuaded otherwise
• Example 2 Tronzo v. Biomet, 156 F.3d 1154
• - Tronzo invented artificial hip socket/cup for
  implant
• - Parent patent No. 4,734,262 described and
  claimed only conical hip cup
• - CIP patent No. 4,681,589 added embodiments
  with other shapes with claims defining generic
  hip cup without limitations on shape of cup
• - Intervening prior art British publication
  of Tronzos parent application more than 1 year
  before filing CIP
• - Accused hip cup (Biomet) used a
  hemispherical, finned cup
• - Literal infringement However, claims are
  invalid for failing to meet written description
  requirement under 35 USC 112, 1st paragraph, and
  therefore, not entitled to parents filing date,
  even though CIP claims literally read on parent
  embodiment and accused embodiment.

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I. Brief Summary of Claim Interpretation
Doctrine of Equivalents

• E. Federal Circuit Decisions
• Rule 3 Invalidating claims that are not
  technical accurate
• Example 1 Chef America, Inc., Lamb-Weston,
  Inc., 358 F.3d 1371
• - Chef America invented a process of producing
  a dough product
• - Specification described how a batter-coated
  dough is baked in a suitable oven at a
  temperature in the range of about 4000F to 8500F
  for a period of time ranging from about 10 s to 5
  minutes
• - Claim required heating the batter-coated
  dough to a temperature of about 4000F which
  would have burned the dough, resulting in an
  unusable product
• - No infringement, since patentee could have
  easily written to reflect a correct claim
  construction. It is the job of the patentee, and
  not the court, to write patents carefully and
  consistently

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II. Importance of Prior Art Searching

• A. Conduct careful prior art searching
• (1) Avoid waste of time, money and research
  efforts to invent something that is not new,
  useful or non-obvious
• (2) Reduce risks that an invalidating reference
  will be uncovered during litigation
• (3) Reduce risks of estoppels (Festo) or
  disclaimer
• B. Never characterize prior art in IDS

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III. Application Practice to Avoid Future
Challenges and Invalidation

• Background of the Invention (Not required under
  MPEP and 37 CFR 1.73)
• Disadvantages
• (1) Can be used as admissions of prior art
• (2) Can be used to limit claim construction or
  to show disclaimer of claim scope
• Advantages
• (1) Can effectively set up the story of the
  invention, i.e., the environment of the
  invention, and the long-felt need
• (2) Can support the patentability of claims
• - Keep the Background of the Invention section
  short and broadly worded
• Discuss only what you want to overcome
• - Avoid discussion of prior art references
• File IDS, rather characterizing prior art to
  avoid disclaimer of claim scope
• - Avoid discussion of disadvantages of other
  embodiments to distinguish the invention as
  infringers may use the other embodiments to avoid
  infringement. See Wireless Agents LLC v. Sony
  Ericsson, 2006 U.S. App. LEXIS 18933 (Fed. Cir.
  July 2006)

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III. Application Practice to Avoid Future
Challenges and Invalidation

• Example Wireless Agents LLC v. Sony Ericsson,
  2006 U.S. App. LEXIS 18933 (Fed. Cir. July 2006)
• - Background of the Invention Discussed
  extensively disadvantages of a standard 12-digit
  keypad used in mobile phones
• - Claim Defined an alphanumeric keyboard
• - Accused device (Sony) Used a standard
  12-digit keypad
• - No infringement, since the Background of the
  Invention section made clear that the invention
  does not include a 12-digit keypad, even though
  the claims literally read on the accused device
• Note boilerplate language such as various
  modifications of the disclosed embodiments as
  well as alternative embodiments of the invention
  will become apparent to persons skilled in the
  art cannot save the disclaimer of claim scope in
  the Background of the Invention section

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III. Application Practice to Avoid Future
Challenges and Invalidation

• B. Summary of the Invention (Not required under
  MPEP and 37 CFR 1.73)
• Can be used to limit claim construction.
  However, if carefully drafted, invention can be
  broadly described in terms that are easily
  understood, and can provide clear support for
  claims.
• Examples
• - Common phrase according to the present
  invention can be used to limit the claim scope.
  Alternative language such as according to an
  aspect or example embodiment of the present
  invention should be considered for broader scope
• - Avoid using objects, desires, purposes,
  critical elements or preferred embodiment of
  the invention or equivalents
• Gentry Gallery control means on fixed
  console were noted as an object of invention
• - Avoid using must, necessary, imperative
  and required for the invention

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III. Application Practice to Avoid Future
Challenges and Invalidation

• Brief Description of the Drawings (Required under
  MPEP and CFR)
• - No harm, but avoid using legal jargon or
  limiting wordings in description of the
  embodiments, such as preferred embodiment
• Detailed Description of Example Embodiments
  (Required under MPEP and CFR)
• - Cannot rely on doctrine of equivalents (DOE)
• - Disclose multiple embodiments, and list as
  many alternative embodiments of the invention as
  practicable to support broad claims
• Single embodiment specifications reduce
  claim scope, see Gentry Gallery
• - Include language that other embodiments
  possible
• - Describe multiple uses of element(s) of the
  invention to support broad claim construction,
  see Phillips v. AWH Corp
• - Disclose all foreseeable alternatives or
  modifications of the invention or elements of the
  invention, see Sage Products
• - Describe how invention might be implemented
  differently as the technology advances. For
  example, the functionality provided by a discrete
  component may be integrated into a host processor
  in the future
• - Define terms accurately but broadly be your
  own lexicographer if necessary

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III. Application Practice to Avoid Future
Challenges and Invalidation

• Detailed Description of Example Embodiments
  (Required under MPEP and CFR)
• - Boilerplate Example
• While there have been illustrated and described
  what are considered to be example embodiments of
  the present invention, it will be understood by
  those skilled in the art and as technology
  develops that various changes and modifications
  may be made, and equivalents may be substituted
  for elements thereof without departing from the
  true scope of the present invention. Many
  modifications may be made to adapt the teachings
  of the present invention to a particular
  situation without departing from the scope
  thereof. For example, the system shown in FIG.
  ___ is merely one example in which ___ according
  to the present invention can be used. However,
  such a system can be adapted to provide ____.
  Accordingly, it is intended, therefore, that the
  present invention not be limited to the various
  example embodiments disclosed, but that the
  present invention includes all embodiments
  falling within the scope of the appended claims.
• Generally, most boilerplate languages are
  meaningless and cannot be used to enlarge claim
  scope. See Wireless Agents LLC v. Sony Ericsson.
  However, if broad examples are provided in
  conjunction the boilerplate example as described
  above, broad claim construction may be possible

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III. Application Practice to Avoid Future
Challenges and Invalidation

• The Claims (less is more)
• - Choose words to have broadest meaning
• Use words that are understood by a lay
  person without reference to the specification
• - Define feature that distinguishes over prior
  art in the broadest possible terms
• Eliminate unnecessary words or limitations
• Combine several elements or steps into a
  single general element or step
• - Use as few adjectives as possible, see PSC
  Computer Products v. Foxconn International Inc.,
  Ltd., 69 USPQ2d 1460 (Fed. Cir. 2004) (disclosing
  plastic clips in a heat sink assembly, but
  claiming only metal clips is deemed to have
  dedicated plastic to public)
• Example of non-means claims
• elongated, resilient metal strap
• elongated strap (unnecessary adjective
  removed)
• Example of means-plus-function claims
• elongated, resilient metal strap means
• strap means (unnecessary adjective removed)
• - Include means-plus-function claims,
  particularly in view of significant restrictions
  imposed by Festo and Johnson Johnson (such
  means would have covered PSC)

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III. Application Practice to Avoid Future
Challenges and Invalidation

• The Claims
• - Avoid using verb tenses which would require
  the claimed device to be in operation for
  infringement to occur. In general, use of the
  word to before the verb solves this problem
  (e.g., use to store rather than for storing
  or stores)
• - Add depending claims
• Use theory of claim differentiation to
  broaden independent claim
• - Draft claims to cover the specifics of the
  commercial embodiments and all equivalents
  disclosed in the specification, including as many
  foreseeable alternatives or modifications of the
  disclosed invention or elements as possible.
• Subject matter disclosed but not claimed in
  a patent application will be dedicated to the
  public, see Johnson v. Johnson Sage Products
• - Target claims to the right entity (e.g.,
  manufacturer, retailer and end user) or acts of
  infringement
• - Be aware of using the phrase at least one of
  A, B, and C, see Superguide Corp. v. DirecTV
  Enterprises, Inc., 69 USPQ2d 1865 (where contrary
  to common practice to claim one, but not all, of
  A, B, and C, the Federal Circuit noted that the
  plain meaning of that phrase is to require all
  items in the list, not one or more of these
  items)
• The Abstract
• - Discuss example embodiments of the invention,
  rather than the invention

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IV. Amendment Practice to Avoid Estoppels

• A. 35 USC 102 Anticipation
• - Avoid characterizing the invention
• - Avoid making unnecessary amendments/arguments
• - Attack rejection but avoid addressing the
  invention. For example, contrary to the
  Examiners assertion, the cited reference 999
  does not disclose element X. As a result, there
  is no anticipation under 35 USC 102

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IV. Amendment Practice to Avoid Estoppels

• B. 35 USC 103 Obviousness
• - Avoid characterizing the invention
• - Avoid making unnecessary amendments/arguments
• - Attack rejection but avoid addressing the
  invention
• 1. Challenge the Examiners factual
  assertions
• 2. Challenge if there is a basis in the art
  for combining or modifying references to arrive
  at the claimed invention
• 3. Even if there is a basis for the
  combination, references are not properly
  combinable or modifiable if their intended
  function is destroyed or rendered inoperable
• 4. All claim limitations must be considered,
  especially when missing from prior art must
  address claim as a whole hindsight problems
• 5. Prior art does not teach or address the
  problem or its source as solely identified by
  Applicant
• 6. Prior art teaches away

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IV. Amendment Practice to Avoid Estoppels

• Amendments
• - Avoid making any amendments, if possible
• - Always argue in very clear detail the reason
  for any amendment that is not related to
  patentability, i.e., statutory provisions under
  35 U.S.C. 101, 102, 103 or 112
• - If a claim needs to be amended because of
  101, 102, 103 or 112, cut and paste claim from
  dependent claims rather than clearly amend, and
  argue patentability of amended claims forcefully

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V. Best Practices

• Examiners Interview Make every effort to
  interview the Examiner so as to minimize file
  history estoppels, since lengthy arguments in a
  detailed amendment or response to an office
  action can be made virtually record-free in an
  interview
• Reissue Consider Reissue to broaden the scope
  of claims (within 2 years) to create literal
  infringement of a newly developed product of
  competitors
• Continuation Applications Consider Continuation
  Application to capture subject matter disclosed
  but has not been claimed, see Johnson Johnson.
  For important cases, always keep a continuing
  application pending in the USPTO. Note see
  recent proposed changes to continuation practice
  by USPTO
• Continuing applications should be regarded as a
  bridge until a potential infringer is found
• When a potential infringer is found, file another
  continuation application, if necessary, with a
  petition to make special and include claims that
  will capture the actual infringer under literal
  infringement