Indefiniteness and Best Mode

1. Indefiniteness and Best Mode Patent Law Sept. 13, 2004

2. “Impersonating an Historian, eh??”

3. Disclosure/Enablement, § 112 ¶ 1Written Descriptionof Claimed Invention ¶ 1Enablementof one skilled in the art without undue experimentation of: • how to make • how to use ¶ 1Best Modecontemplated by inventor ¶ 2,6Claims- definiteness

4. Disclosure/Enablement, § 112 U.S.C. § 112: ¶ 1 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 thebest modecontemplated by the inventor of carrying out his invention.

5. Definiteness, § 112 U.S.C. § 112: ¶ 2 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.

6. Orthokinetics v. Safety Travel Chairs Page 327

7. 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.: 135602Filed: March 31, 1980

9. 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 . . . .

10. 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.

11. 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

12. 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

13. Orthokinetics – related points • JNOV motion: Federal Circuit and “aggressive” district court review • Fact vs law not very important • Juries like patentees; Federal Circuit likes patent validity and infringement!

14. BJ SERVICES COMPANY, Plaintiff-Appellee,v.HALLIBURTON ENERGY SERVICES, INC., 338 F.3d 1368 (FC 2003) 5. A method of fracturing a subterranean formation, comprising the steps of: blending together an aqueous fluid and a hydratable polymer to form a base fluid, wherein the hydratable polymer is a guar polymer having carboxymethyl substituents and a C* value of about 0.06 percent by weight;

15. Halliburton further argued that because "about 0.06" was not defined by the '855 patent, one of ordinary skill in the art could not make and use the invention. As discussed above, one of skill in the art would have known how to measure C*; the question is whether one of skill in the art, having done the experiments to calculate C*, would have known if the result that he reached was "about 0.06."

16. BJ Services argues that the term "about" is intended to encompass the range of experimental error that occurs in any measurement and that one of skill in the art would readily understand the range that "about 0.06" was intended to include. To that end, it presented the experimental results obtained by its expert, all of which were slightly above or below 0.06 for an average of 0.0596. . . . We conclude that substantial evidence supports the jury's finding that the '855 patent was not invalid for indefiniteness or lack of enablement.

17. Claim term “surrender value protected investment credits” has reasonably discernible meaning, and therefore is not indefinite, even though entire term is not defined in patent or industry publications, since individual components of phrase have well-recognized meanings to those of skill in art (Bancorp Services LLC v. Hartford Life Insurance Co., CA FC, 3/1/04) .

18. Chemcast Corp v Arco Industries Page 343

19. 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 . . .

20. 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.

21. Inventors: Rubright; Phillip L. (Berkley, MI) Assignee: Chemcast Corporation (Detroit, MI) Appl. No.: 653268Filed: January 28, 1976

23. 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.

24. Chemcast - holding Rubright knew that Reynosol had developed R-4467 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.

25. 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.

26. Source: http://patentlaw.typepad.com/patent/2004/07/federal_circuit_3.html

27. 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 appellate panel 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.