Indefiniteness and Best Mode Patent Law Sept. 9, 2010

¶ 1 Written Description of Claimed Invention Disclosure/Enablement, § 112 ¶ 1 Enablement of one skilled in the art without undue experimentation of: how to make how to use ¶ 1 Best Mode contemplated by inventor ¶ 2,6 Claims - definiteness

U.S.C. § 112: ¶ 1 Disclosure/Enablement, § 112 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 of carrying out his invention.

U.S.C. § 112: ¶ 2 Definiteness, § 112 The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his [or her] invention.

Orthokinetics v. Safety Travel Chairs Page 328

United States Patent RE30,867 Gaffney February 16, 1982 Travel chair The front wheel assembly of a wheel chair is dimensioned so that it will easily pass through the space between the seat of an automobile and the doorframe thereof. The rear wheel assembly is retractable upwardly under the seat portion to a position which permits the seat portion and the retracted rear wheel assembly to be set upon the automobile seat. The wheel chair and the person seated therein may be easily placed on the automobile seat and removed therefrom while the person remains seated in the wheel chair. Inventors: Gaffney; Edward J. (Pewaukee, WI) Assignee: Orthokinetics, Incorporated (Waukesha, WI) Appl. No.: Filed: March 31, 1980

Orthokinetics – Claim 1 1. In a wheel chair having a seat portion, a front leg portion, and a rear wheel assembly, the improvement wherein said front leg portion is so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof whereby said front leg is placed in support relation to the automobile....

Orthokinetics holding The phrase “so dimensioned” is as accurate as the subject matter permits, automobiles being of various sizes. As long as those of ordinary skill in the art realized that the dimensions could be easily obtained, § 112, 2d ¶ requires nothing more. The patent law does not require that all possible lengths corresponding to the spaces in hundreds of different automobiles be listed in the patent, let alone that they be listed in the claims.

Definiteness Orthokinetics standard –Viewed from perspective of one skilled in the art Varies by field –Distinguish spec from claims “Enable” claims in spec Definiteness a matter of claim drafting

Ortho – cont’d Notice function is key Uncertainty for competitors is a concern But: claim drafting must be tested by standards in the relevant field

Standard Oil Co. v. American Cyanamid Co. – p. 332 “The process for hydrolyzing a nitrile... comprising contacting said n itrile with water... in the presence of copper ion, said copper ion being at least partially soluble in water, the nitrile or in both water and nitrile and said copper ion being composed of copper in a combined valence state of Cu° + Cu+, Cu° + Cu++, or Cu° + Cu+ + Cu++”

Definitness issue No standard definition of “partially soluble” in (1) the spec, or (2) the art, the relevant field

“Slightly soluble” Defined in the art; but not specifically related to the phrase “partially soluble”

Although Dr. Greene “had the right, and the skill and background, to have defined the term,” she chose not to; thus the term “is too vague to particularly point out and distinctly claim the subject matter which [the patentee] claims as [her] invention,” and the patent is invalid. -- p. 333

Special problem: approximate claim language “About” “Approximately”

Halliburton v. M-I LLC 514 F.3d 1244 January 25, 2008 (Fed Cir)

1. A method for conducting a drilling operation in a subterranean formation using a fragile gel drilling fluid comprising: (a) an invert emulsion base; (b) one or more thinners; (c) one or more emulsifiers; and (d) one or more weighting agents, wherein said operation includes running casing in a borehole.

Spec: A “fragile gel” as used herein is a “gel” that is easily disrupted or thinned, and that liquifies or becomes less gel-like and more liquid-like under stress, such as caused by moving the fluid, but which quickly returns to a gel when the movement or other stress is alleviated or removed, such as when circulation of the fluid is stopped, as for example when drilling is stopped.

The “fragileness” of the “fragile gels” of the present invention contributes to the unique and surprising behavior and advantages of the present invention.

While patentees are allowed to claim their inventions broadly, they must do so in a way that distinctly identifies the boundaries of their claims. The fluids of the ’832 invention may provide less resistance to shear (i.e., break more quickly) than the prior art fluids, but the degree of improved speed remains ambiguous. Thus, it is unclear whether a person of ordinary skill in the art would have interpreted this claim as having an upper bound of fragility.

“[I]t seems clear that the patent drafter could have provided more specifics in this case, either with quantitative metrics as to how quickly the gel must break (time to break at given conditions) and how strong the gel must be (strength at given conditions), or with sufficient examples of fragile gels of the invention to show which such fluids fell within the scope of the claims.”

See also... Young v. Lumenis Inc., 83 USPQ2d 1191 (Fed. Cir. 2007), 83 USPQ2d 1191 (Fed Cir 2007)

Claims for method of declawing cat using laser surgery, which require forming circumferential incision in epidermis “near the edge of the ungual crest of the claw,” are not rendered indefinite by use of term “near,” since “near,” as used in claims, is not insolubly ambiguous and does not depart from its ordinary and customary meaning of “close to or at” edge of ungual crest.

Descriptions and figures in specification convey understanding that phrase “near the edge of the ungual crest” means close to or at most at the distal [i.e., far] edge of the epidermis, since use of “near,”as opposed to precise numerical measurement, is appropriate in view of fact that term describes location on animal, and size of appendage and amount of skin required to be incised will vary from one animal to another based on size.

New Aggresiveness in Software Claims

Datamize v. Plumtree, 417 F.3d 1342 (Fed Cir 2005) Federal Circuit invalidated claim to designing “aesthetically pleasing” user interface

417 F.3d at 1349 “Merely understanding that “aesthetically pleasing” relates to the look and feel of interface screens, or more specifically to the aggregate layout of elements on interface screens, fails to provide one of ordinary skill in the art with any way to determine whether an interface screen is “aesthetically pleasing. ”

Aristocrat Tech. v. Int’l Game Tech., 521 F.3d 1328 (Fed Cir. 2008) Invention allowed user to select winning combination in slot machines Held: claim including “control means” for allowing user selection, without disclosure of algorithm or details, was indefinite under section 112 par. 2

“1. A gaming machine having display means arranged to display a plurality of symbols in a display format having an array of n rows and m columns of symbol positions, game control means arranged to control images displayed on the display means,....

Minimal spec Mentions “game control means” only two times, besides the claims Only embodiment shown is a “general purpose computer or microprocessor”

521 F.3d at 1333 In cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor. The point of the requirement that the patentee disclose particular structure in the specification and that the scope of the patent claims be limited to that structure and its equivalents is to avoid pure functional claiming.

521 F.3d at 1338 Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed.... It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a “special purpose computer programmed to perform the disclosed algorithm.”

See also Finisar Corporation v. The DirectTV Group, 523 F.3d 1323 (Fed. Cir., April 18, 2008).

Blackboard, Inc. v. Desire2Learn, Inc. 574 F.3d 1371 Fed. Cir

An [sic] method for providing online education method [sic] for a community of users in a network based system comprising the steps of: a. establishing that each user is capable of having redefined [sic: “predefined”] characteristics indicative of multiple predetermined roles in the system and each role providing a level of access to and control of a plurality of course files;

b. establishing a course to be offered online, comprising i. generating a set of course files for use with teaching a course; ii. transferring the course files to a server computer for storage; and iii. allowing access to and control of the course files according to the established roles for the users according to step (a);

c. providing a predetermined level of access and control over the network to the course files to users with an established role as a student user enrolled in the course; and d. providing a predetermined level of access and control over the network to the course files to users with an established role other than a student user enrolled in the course.

Blackboard‘s broadest claim (claim 1) includes several means-plus-function clauses, including a "means for assigning a level of access and control."

Before the district court, Blackboard asserted that the structure that performs the recited “means for assigning” function is “a server computer with an access control manager and equivalents thereof.” On appeal, Blackboard again argues that the structure that performs that recited function is the server computer's software feature known as the “access control manager” or “ACM.” The entirety of the description of the access control manager in the specification is contained in a single paragraph, which reads as follows:

Access control manager 151 creates an access control list (ACL) for one or more subsystems in response to a request from a subsystem to have its resources protected through adherence to an ACL. Education support system 100 provides multiple levels of access restrictions to enable different types of users to effectively interact with the system (e.g. access web pages, upload or download files, view grade information) while preserving confidentiality of information.

Fed. Cir. Opinion, 574 F.3d at 1383 "[W]hat the patent calls the 'access control manager' is simply an abstraction that describes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed."

The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users' predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the "corresponding structure" to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function. – 574 F. 3d at 1385

But see... IP Innovation, LLC v. Red Hat, Inc., 2009 WL (E.D.Tex. Aug 10, 2009) – distinguishing Blackboard, and holding that disclosure of actual program code is NOT required to meet definiteness requirement

Best Mode

U.S.C. § 112: ¶ 1 Disclosure/Enablement, § 112 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 of carrying out his invention.

Best mode contemplated by inventor Not all inventors contemplate a best mode Only if you do are you required to disclose

Chemcast Corp v Arco Industries Page 343

United States Patent 4,081,879 Rubright April 4, 1978 Sealing member An improved sealing member utilizable as a plug button or grommet is disclosed. An annular locking portion made of a rigid material is integrally bonded to a flexible elastomeric body...

The rigid annular shaped portion of the sealing member has a tapered shape and is slightly larger than the opening in which the sealing member is to be positioned; the member has to be tilted or cocked in order to be inserted in place. Once the rigid annular locking portion is inserted beyond the opening, the sealing member is securely held and locked in place by the outer edge of the annular portion.

Inventors: Rubright; Phillip L. (Berkley, MI) Assignee: Chemcast Corporation (Detroit, MI) Appl. No.: Filed: January 28, 1976

From Chemcast Spec. The annular locking portion 12 of the sealing member 10 is preferably comprised of a rigid castable material, such as a castable resinous material, either a thermoplastic or thermosetting resin, or any mixtures thereof, for example, polyurethane or polyvinyl chloride. The portion 12 also should be made of a material that is sufficiently hard and rigid so that it cannot be radially compressed, such as when it is inserted in the opening 19 in the panel 20. Materials having a durometer hardness reading of 70 Shore A or harder are suitable in this regard.

Chemcast - holding Rubright knew that Reynosol had developed R specifically for Chemcast and had expended several months and many hundred man-hours in doing so. Because Chemcast used only R-4467, because certain characteristics of the grommet material were claimed elements of the ’879 invention, and because Rubright himself did not know the formula, composition, or method of manufacture of R-4467, section 112 obligated Rubright to disclose the specific supplier and trade name of his preferred material.

Best Mode updated High Concrete Structures v. New Enterprise Stone and Lime (Fed. Cir. July 29, 2004). On appeal from a district court’s summary judgment based on failure to comply with the best mode requirement, the Federal Circuit (Newman, Mayer, Clevenger) reversed and remanded.

Source: w.typepad.co m/patent/2004 /07/federal_cir cuit_3.html

High Concrete sued New Enterprise for infringement of its patent on “double- tees” for adjusting the orientation of bulky cargo. (U.S. Patent No. 5,947,665). On defendants’ motion, the district court held the patent invalid for “failing to disclose that the inventors' preferred mode of practicing the invention was to use the crane to tilt the loaded frame at the time that the crane loaded the cargo onto the frame.”

The Federal Circuit reversed: Deliberate concealment is not charged. The best mode requirement of §112 is not violated by unintentional omission of information that would be readily known to persons in the field of the invention … Known ways of performing a known operation cannot be deemed intentionally concealed absent evidence of intent to deliberately withhold that information.

Patent Reform: Eliminate Best Mode: HR 1908 SEC. 13. BEST MODE REQUIREMENT. [Amend] Section 282(b): (3) Invalidity of the patent or any claim in suit for failure to comply with— (A) any requirement of section 112 of this title, other than the requirement that the specification shall set forth the best mode contemplated by the inventor of carrying out his invention;