Patent Enforceability: Increasing the Odds

1. Patent Enforceability:Increasing 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

3. 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

4. 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

5. 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)

6. 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)

7. 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

8. 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

9. 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

10. 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

11. 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 Tronzo�s 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 parent�s filing date, even though CIP claims literally read on parent embodiment and accused embodiment.

12. 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

13. 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

14. 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)

15. 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

16. 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

17. 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

18. 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

19. 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)

20. 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�

21. 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 Examiner�s assertion, the cited reference �999 does not disclose element X. As a result, there is no anticipation under 35 USC �102

22. 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 Examiner�s 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

23. 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

24. V. Best Practices Examiner�s 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