November 29, 2010
Bloomberg Law Reports
By Ming-Tao Yang; E. Robert Yoches
Authored by Ming-Tao Yang and E. Robert Yoches
In the world of intellectual property, few things cause as much disappointment as a company seeing its patent claims become toothless because of an error in claim drafting. To learn from others' mistakes, we examine cases in which courts have given claims unduly narrow interpretations or rendered them invalid because the claim drafters did not appreciate the implications of their choice of claim structure or terms. We present certain lessons from prosecution mistakes in the form of criminal statutes to define proscribed activities. The penalties for violating these statutes are loss of or restrictions on rights to exclude.
Using open-ended or vague terms may be punishable by loss of claim scope
Some patent attorneys and agents believe that the best way to protect innovative inventions is to use terms the specification does not use or define, and that do not have a plain or ordinary meaning. This belief stems from the days before Markman v. Westview Instruments, Inc.,1 when juries decided infringement, and savvy litigators could prove infringement by molding vague claims to suit their purposes.
Markman, however, gave judges the exclusive authority to interpret claims, and the Federal Circuit2 reviews those interpretations de novo.3 If they follow the rigorous procedure the Federal Circuit has set for claim interpretation, courts should critically examine the patents' specifications and prosecution histories to interpret claim terms that have no footing in the patent or are vague. The result is often a very narrow interpretation of those claim terms.
For example, in Sinorgchem Co., Shandong v. International Trade Commission,4 the patentee claimed a method for producing a chemical compound using a reaction "in the presence of a suitable base and controlled amount of protic material."5 The patentee argued that "controlled amount" meant a range of protic material that would not vitiate the purpose of the reaction, but Sinorgchem argued that "controlled amount" meant "up to about 4% water,"6 which excluded the Sinorgchem process that used 10-15% of water.7
Finding no "well-accepted meaning in the field of chemistry" for the term, the court examined "the specification as the single best guide to the meaning of a disputed term,"8 which contains an embodiment having "an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O."9 The court took the narrow reading despite the fact that (1) the abbreviation "e.g." (for example), not "i.e." (that is), preceded the 4% limitation, and (2) the specification contained another example that used more than 4% water. Although the patentee may have intended "controlled amount" to encompass a broad range, using the open-ended term "controlled amount" led to a narrow reading. To avoid giving the courts the opportunity to confine claims to the embodiments from the specification, the patentee needed to explain the purpose of "controlled amount" in the claims. Pause Technology LLC v. TiVo, Inc.10 involved another term, "predetermined duration," which also received a narrow construction. The patentee claimed a video-recording device that allows a user to pause, rewind, and forward a live television program, and part of the device has "a variable delay circular storage buffer for storing . . . digital input signal values . . . received during the immediately preceding time intervals of predetermined duration."11 The patentee argued that "time interval of predetermined duration" meant a range of time intervals because the specification taught varying data compression ratios; TiVo argued the phrase meant a "fixed duration. . . . specified prior to operation [or recording]."12
The Federal Circuit sided with TiVo because it asserted "predetermined" must carry significance in the claim, and because the written description explained that "a fixed duration . . .of prior recorded signals are recorded in the memory subsystem 5 at all times."13 The specification explicitly describes "fixing the time interval for recording before recording begins,"14 and the patentee explained during prosecution the advantages of using a "specified interval" and "eliminat[ing] a specific drawback of prior art devices . . . whereby recording is stopped when the capacity of the storage medium . . .is reached."15 Because TiVo's devices recorded signals during an interval between 31 and 37 minutes due to the varying levels of compression, the Court found no infringement.16 Once again, the patentee chose a term, "predetermined," that it did not define or explain in the specification or claims. The Court limited the term to a preferred embodiment, much to the chagrin of the patentee.
A good way to remember this rule is by adapting the Miranda warnings. If you use a vague or undefined term, the specification can and will be used against you.
It is possible to overcorrect the problem of using undefined terms by using terms that are too specific and apply only to one technology. This happened in Wavetronix v. EIS Electronic Integrated Systems,17 where the patentee claimed a method for automatically defining traffic lanes using a "probability density function estimation" (PDFE).18 The Federal Circuit limited the term to its well-understood mathematical meaning of an estimation using "a finite data set large enough to approximate a function of a continuous variable"19 and involving "comparisons across lanes using 'peaks' and 'valleys.'"20 The accused devices used a compilation of data that was too coarse to qualify as a PDFE and that performed no probabilistic analysis to search for peaks and valleys in a histogram.21
The outcome in Wavetronix was acceptable if the inventor truly did not believe the invention extended beyond the PDFE. If, however, the use of the term PDFE was not critical to the invention, the claim drafter should have used a more descriptive and broader term, and identified PDFE in a dependent claim.
Drafting method claims with steps that can be performed outside the United States is punishable by a finding of noninfringement
In NTP, Inc. v. Research In Motion, Ltd.,22 the patentee asserted infringement against a method that involved steps that took place in Canada. Citing Roberts Dairy Co. v. United States,23 the Federal Circuit explained that, "it is well established that a patent for a method or process is not infringed unless all steps or stages of the claimed process are utilized."24 In Zoltek Corp. v. United States,25 the Federal Circuit repeated this rule, finding no infringement of a claim, because a step took place outside the United States.
To avoid this crime, draft several claims that only have a few steps likely to be performed at the same location, and place the other steps in the preamble. If the steps in the preamble are necessary to distinguish the art, then draft the claims to ensure the preamble will be limiting. In this way, the drafter can increase the likelihood of having claims that read on infringing activity that occurs just in the United States.
Drafting method claims with steps that can be performed by multiple actors is punishable by a finding of noninfringement
In BMC Resources, Inc. v. Paymentech L.P.,26 the claims required the collective action of a cardholder, bank, payment services provider, and debit networks. Paymentech acted as an intermediary, processing transactions for financial institutions as a third party in the PIN-less debit payment method of BMC. The Federal Circuit found no infringement because "for process patent or method patent claims, infringement occurs when a party performs all of the steps of the process,"27 and Paymentech did not perform all the steps or control their performance. "Courts faced with a divided infringement theory have . . .refused to find liability where one party did not control or direct each step of the patented process."28 A defendant can only be liable for "vicarious liability" (liability for another's actions) if it "controlled the conduct of the acting party."29
Although acknowledging "that the standard requiring control or direction for a finding of joint infringement may in some circumstances allow parties to enter into arms-length agreements to avoid infringement,"30 the Federal Circuit refused to extend protection in such arms-length transactions for fear of rendering indirect infringement (under 35 U.S.C. §271(b) and §271(c)) purposeless in light of the additional requirement of specific intent in those sections.31 Instead, the court suggested structuring claims to "feature[] references to a single party's supplying or receiving each element of the claimed process."32
The same result ensued in Golden Hour Data Systems, Inc. v. emsCharts, Inc.33 Golden Hour's claims covered the operation of an emergency-medical-service computer system that integrated "dispatch, clinical services, and billing data."34 The accused infringers, emsCharts and Softtech, provided programs that coordinated information concerning clinical services/billing and dispatch, respectively, and not only formed a strategic partnership that allowed their two programs to work together, but sold the two programs as a unit.35 Golden Hour accused emsCharts and Softtech of jointly infringing its method claims, but lost. The Federal Circuit affirmed the district court's grant of JMOL of no infringement because of "insufficient evidence of control or direction by emsCharts or Softtech (or vice versa) to find joint infringement."36 Although the result raises questions, the best way to avoid the possibility of such a result is to draft the claims as the Federal Circuit directed, with fewer steps directed to the actions of one party (i.e., unitary claims), and with the limitations of other steps in the preamble. This requires more claims, but it is the only way to ensure maximum coverage.
Overuse of means-plus-function claims is punishable by severely limited claim scope
The United States patent laws allow a patentee to express an element "as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof."37 In exchange for the ease in drafting claims with these elements, a patent with a claim having means-plus-function elements suffers limited claim scope because "such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."38 Therefore, claims with "means-plus-function" elements can be quite narrow since they are tied to the disclosed embodiments.
For example, in Welker Bearing, Co. v. PHD, Inc.,39 a claim recited "a mechanism for moving said finger along a straight line into and out of said locating pin perpendicular to said axis A in response to said rectilinear movement of said locating pin," which the court found to be controlled by 35 U.S.C. §112, ¶ 6.40 The corresponding structure in the specification had a rotating central post as the mechanism for extending the fingers of the pin. The accused product, however, lacked this structure, or an equivalent, so the court found it did not infringe the claim with that limitation.41
The Court explained, however, that the outcome might have been different if the patentee had drafted the claim differently, for example to recite: "a finger displacement mechanism, a lateral projection/retraction mechanism, or even a clamping finger actuator."42 Thus, the court was cautioning patent drafters away from §112, ¶ 6, because of its inherent dangers. We would be wise to heed the warning.
In Hearing Components, Inc. v. Shure Inc.,43 the patentee narrowly escaped the same fate. The disputed claim included means for attaching a foam sleeve to an earpiece and recited "a connecting portion having . . . (iii) means on said exterior surface for disposably attaching the duct of the sleeve to said connecting portion . . .[of the earpiece]."44 The corresponding structure from the specification included "screw threads, a ball-and-socket attachment, a layer of adhesive, and their equivalents."45 The district court found no infringement because the accused device did not have a layer of adhesive cement and instead used interference or friction fit to maintain the disposable sleeve in place.46 On appeal, the Federal Circuit disagreed, finding that Shure's device and the frictional means of attachment was equivalent to the disclosed screw threads or ball-and-socket attachment,47 because "the only 'positive attachment' provided by an adhesive, which the [district] court found to be a corresponding structure, is increased friction."48 The patentee could have reduced the need for the Federal Circuit life preserver, however, by avoiding means-plus-function claiming altogether.
If you define an element of a software invention using means-plus-function language, and do not disclose a corresponding algorithm different from the function, the court will take your patent claim away from you.
The Federal Circuit permits the use of means-plus-function elements to define software elements, but requires the corresponding structure for such elements to be an algorithm that performs the recited function.49 Describing the functions or the results of an algorithm, however, does not qualify as sufficient disclosure of an algorithm. Therefore, in Aristocrat Technologies Australia Pty Ltd. v. International Game Technology,50 the Federal Circuit found a claim indefinite under 35 U.S.C. §112, ¶2, because the specification lacked sufficient corresponding structure for the term "game control means being arranged to pay a prize when a predetermined combination of symbols is displayed in a predetermined arrangement of symbol positions selected by a player." The patentee argued that the term itself implicitly disclosed an algorithm, but the Federal Circuit dismissed that language and other examples the patentee cited as simply describing the function itself or the result of the function, not an algorithm.51
The disclosed algorithm must be different from and more detailed than the claimed function. Thus, in Finisar Corp. v. DirecTV Group, Inc.,52 although a claimed "database editing means" performed very detailed functions of "generating a hierarchically arranged set of indices for referencing data in said information database, including distinct indices for referencing distinct portions thereof," and "embedding said indices in said information database,"53 the corresponding "algorithm" in the specification was identical to the function, and the court found the claims indefinite.54
Moreover, the disclosure of the algorithm must be explicit, which differentiates this issue from one of enablement. Therefore, in Net MoneyIN, Inc. v. VeriSign, Inc.,55 the Federal Circuit rejected the patentee's argument that a reference to a "bank computer" provided to a person of ordinary skill sufficient structure to support the function of "generating an authorization indicia in response to queries containing a customer account number and amount." Regardless of the understanding of such a person, the specification had no algorithm to perform the corresponding function.56 The court also rejected the patentee's argument that "a person skilled in the art would know that such a computer would be programmed to compare account data and amount data to those data structures and generate an authorization indicia if credit were available," because "obviousness" was not the proper test to determine compliance with the written-description requirement.57
Perhaps the starkest example of this rule is Encyclopedia Britannica, Inc. v. Alpine Electronics, Inc.,58 which addressed a claim with ten means-plus-function elements. The court found no specific algorithms for the two most detailed elements, "means for providing access to . . . related information" and "means for retrieving . . . textual information and interrelated graphical information," despite the fact that the functions were so specific that it would be difficult to imagine an algorithm that could be more detailed than the recited functions.59
The sheer number of patents that have fallen victim to this rule demonstrates the lack of awareness of this requirement. To avoid the sentence of invalidity, therefore, a patent drafter should not use means-plus-function language to define a software element unless the patent discloses an algorithm that is different from, and preferably narrower than, the recited function.
Companies can avoid these crimes and seek meaningful claim coverage by drafting their claims wisely and with a focus on the infringers and activities to be targeted. Careful claim-drafting requires avoiding open-ended or vague terms as well as narrow technical terms. It also requires drafting method claims to cover the independent activities of a single actor in the United States, and either avoiding means-plus-function elements or treating them extremely carefully.
1 517 U.S. 370 (1996).
2 United States Court of Appeals for the Federal Circuit has the exclusive appellate jurisdiction over the appeal of all patent cases. 28 U.S.C. § 1295.
3 Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en banc).
4 511 F.3d 1132 (Fed. Cir. 2008).
5 Id. at 1134.
6 Id. at 1134-5.
7 Id.
8 Id. at 1136 (citing Philips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)) (internal quotations omitted).
9 Id. at 1140.
10 419 F.3d 1326 (Fed. Cir. 2005).
11 Id. at 1327.
12 Id. at 1334.
13 Id. (emphasis added).
14 Id. at 1334 (internal quotations omitted) (emphasis original).
15 Id. at 1335.
16 Id. at 1336.
17 573 F.3d 1343, 1359 (Fed. Cir. 2009).
18 Id. at 1347.
19 Id. at 1358.
20 Id. at 1359.
21 Id.
22 418 F.3d 1282 (Fed. Cir. 2005).
23 530 F.2d 1342, 1354 (Ct. Cl. 1976).
24 418 F.3d at 1317–18 (granted, Roberts is a pretty obscure case to cite for a "well-established" principle).
25 442 F.3d 1345, 1350 (Fed. Cir. 2006).
26 498 F.3d 1373 (Fed. Cir. 2007).
27 Id. at 1379.
28 Id. at 1380.
29 Id. at 1379.
30 Id. at 1381.
31 Id.
32 Id.
33 614 F.3d 1367 (Fed. Cir. 2010).
34 Id. at 1369.
35 Id. at 1371.
36 Id. at 1373 (internal quotations omitted).
37 35 U.S.C. §112, ¶ 6. ("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.")
38 Id.
39 550 F.3d 1090 (Fed. Cir. 2008).
40 Id. at 1094-95.
41 Id. at 1100.
42 Id. at 1097 (internal quotations omitted).
43 600 F.3d 1357 (Fed. Cir. 2010).
44 Id. at 1361 (emphasis omitted).
45 Id. at 1370.
46 Id. at 1364.
47 Id.
48 Id. at 1370.
49 WMS Gaming Inc. v. International Game Technology, 184 F.3d 1339, 1349 (Fed. Cir. 1999).
50 521 F.3d 1328 (Fed. Cir. 2008).
51 Id. at 1335.
52 523 F.3d 1323 (Fed. Cir. 2008).
53 Id. at 1329 (emphasis omitted).
54 Id. at 1340-41.
55 545 F.3d 1359 (Fed. Cir. 2008).
56 Id. at 1365.
57 Id. at 1366–67; see also Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009) (emphasizing the need for this rule to avoid functional claiming that would cover all means of performing the recited function).
58 355 Fed. App'x. 389 (Fed. Cir. 2009).
59 Id. at 392-395; see also, Brown v. Baylor Healthcare System, 2010 BL 102183 (Fed. Cir. May 7, 2010) (finding invalid claims with means-plus-function elements that did not correspond to an algorithm different from the recited function, even though the patentee had accepted a suggestion from the patent examiner).
©Bloomberg Finance L.P. 2010. Originally published by Bloomberg Finance L.P. Reprinted by permission. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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