Intellectual Property Directions

In a seeming paradox, in the magic world of patent filings it is possible to “enable” your invention - that is, explain to someone of skill in your field how to make or use your invention - and yet not fully meet the written description requirement for obtaining a patent (or at least patent coverage for all aspects of your invention). Orlando Lopez, a partner at Burns & Levinson, was kind enough to provide an example where this was an issue:

In a 1971 case again involving chemical subject matter, the court expressly stated that “it is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.” [**15] In re DiLeone, 58 C.C.P.A. 925, 436 F.2d 1404, 1405, 168 U.S.P.Q. (BNA) 592, 593 (1971). As an example, the court posited the situation “where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.”

Admittedly it is rarely the case, but it certainly shows an internal, logical inconsistancy. It seems to me, in this case, that compounds B and C, being enabled for one skilled in the art, should at least be covered by the doctrine of equivalents, assuming the patent was covering a process for making A.

Similarly, I would expect that a separate patent application for compounds B and C, made by this process, would be tossed out as either anticipated or obvious in light of the patent in this case.

In the same vein, had the enabling description for making compound A in this patent been presented in a journal more than a year before filing, would compounds B and C run into the prior disclosure bar? Seems to me it all needs to hang together.

And it certainly will depend on what the patent specification in question is actually trying to cover. If I come up with a new paint in which oxidized metallic flakes provide some new and beneficial property and enable the process of incorporating the flakes uniformly, but I only describe red paint based on iron (known to look red), should my patent bar someone from using oxidized copper flakes to make green paint? I would think/hope it would!

[This example begs another question - could someone else get a patent on the green paint that I enabled but didn't describe? Admittedly it would be dominated by my patent, but it would bar me from making green paint.]

Greg Aharonian of the Internet Patent News Service (patnews@ns1.patenting-art.com) wrote yesterday about a CEO of a reasonably sized technology company who asked of/lamented to his patent attorney about the futility/waste/high-risk of seeking and asserting patents. Here, in a slightly edited form, is that lament.

1. We file a patent application and eventually get it allowed ($5000 to $10000 plus)

2. We sue someone and are subjected to a Markman analysis, which redefines claims and may change the meaning of the words.

• How can we prevent this from having a significant effect during the patent prosecution?
• This process redefines the patent claims to mean something different than what we intended.
• Can we be so specific in the patent specification that removes any latitude from the judge in interpreting the claim language? Define every word in the claim in the specification?

3. Then the claims can be put up for reexamination which seems to disallow most if not all of the claims and takes years to resolve.

• It is outrageous that you go through the process of getting a patent and assume that it is valid and then after years and extreme expense some idiot in the USPTO says “oh sorry but my colleague should not have allowed the patent”!

4. The patent’s validity is then challenged.

• How do we prevent our patents from being declared invalid by some non-scientific judge?

5. How do we file a patent that eliminates these and other problems assuming that infringement is taking place?

• How do we do this at the earliest point in the process?

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These are great questions to discuss with your patent attorney during the patent prosecution process, which is the earliest point in the process where these issues can be forestalled. As a general rule, I suggest instructing him or her to:

• Do a reasonable prior art search (including non-patent prior art). Re-examinations kill patents when new prior art results in an obviousness or anticipation problem.
• Don’t try to be too “cute” with the “patentese”. Writing in straight forward language limits misinterpretation.
• Don’t try to obscure the invention with circumlocutions (see above point). The purpose of the patent specification is to teach; hold up our end of the deal. We’ll live with fact that our competitor understands our invention if it means our patent is strong.
• Write claims that match the breadth of our invention. And write the specification to match the claim wording.

You patent attorney may object; don’t be intimidated or find someone who can be your interface with the patent attorney.

Many colleges and universities are back in session now so it only seems fitting to talk about the lesson that Blackboard, Inc. learned last month. Blackboard provides internet/intranet based education-support systems. For example, Universities use Blackboard for professors to post course material, collect assignments and report grades. Recently they sued Desire2Learn for patent infringement over the different roles a user can have with a single login. What Blackboard learned was that they had not fulfilled the teaching role required of them to have a valid patent claim.

If you enroll in “IP101″ at the school of patenting, one of the first things you’ll learn is that a patent is supposed to be a teaching document. I’ve always advocated that you think of the patent system like a contract in which society and the inventor exchange quid pro quo. In return for controlling the use and sale of the invention described in the claims, you, the inventor, must teach society the details of your invention in the specification.

In the case of Blackboard, they claimed, among other items:

“…a server computer… comprising:
…
means for assigning a level of access to and control of each data file based on a user of the system’s predetermined role in a course;
…

The problem for them was their teaching of the “means” for assigning a level of access etc. Both in the specification and in testimony in court, Blackboard essentially said that any hardware or software that assigns levels of access is the “structure” for providing the function. The Court has ruled before, and did so again here, that making a general reference to, say, a general purpose computer with appropriate programming does not provide an adequate description of how to make the invention.

The court noted:

“[t]he 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.” … Without so limiting a claim, we noted, “the patentee has not paid the price but is attempting to claim in functional terms unbounded by any reference to structure in the specification.”

Teaching how to make or use your invention in definite terms is always a requirement, but it is particularly true for computer based inventions. Blackboard argued that putting together their “access control manager” was well known to someone of ordinary skill in the art, and so it is, but the court pointed out that the question was not one of enablement but of definiteness: “The question before [the court] 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.”

The lesson here is to take your role as teacher seriously and explain the details of your invention carefully to avoid becoming a teacher wearing an invalidity dunce cap.

Even IP novices know that they are not supposed to make public disclosures of their inventions before filing an application. But do they know what a public disclosure really is? Often prospective clients ask me to sign Non-Disclosure Agreements and while I’m happy to do so, I also tell them it’s not really required and at best gives them the chance to try to squeeze blood from a stone (me!).

In a recent infringement suit (Cordis v. Boston Scientific) the Court of Appeals reinforced this position. The inventor of the stent in question, Dr. Palmaz, was a resident in 1980 when he prepared a 10 page monograph describing his work. He gave copies of the paper to approximately six of his teachers at an oral presentation of his work to these physicians and several other colleagues. Palmaz later gave copies of the monograph to two companies (Vascor, Inc., and Shiley, Inc.) while attempting to commercialize his stent technology. Neither company signed an agreement requiring confidentiality, and the Shiley agreement specifically stated that Shiley “shall not be committed to keep secret any idea or material submitted.”

Three years later he revised the monograph and gave it to a technician and to the University of Texas as part of a research proposal when he joined the faculty there. Clearly none of these releases were covered by an explicit non-disclosure agreement.

The court noted that the dictum that:

A document is publicly accessible if it “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.”

really goes to the question of whether an interested party could easily obtain the information if they wanted to. In the case of documents in a library, for example, the court would look to how effectively the library’s indexing system points the general public to the document.

In this case the documents were not available to the general public but they were given to interested and skilled-in-the-art parties without an explicit, legally binding NDA. The Court in the past has

recognized the importance of “preserv[ing] the incentive for inventors to participate in academic presentations or discussions” by noting that professional norms may support expectations of confidentiality.

and in this case both the academic norms and the norms of commercial behavior would lead the inventor to believe confidentiality would be observed.

It is well known that certain large companies (IBM) and most venture capital firms will not sign NDAs. As the court recognizes in this decision, many entities, particularly those with deep pockets, decline to sign NDAs because they stand to lose so much if an inadvertent disclosure occurs, not because they intend to violate the discloser’s confidence.

So yes, get NDAs signed and yes, I sign NDAs for my clients; but no, don’t panic if you can’t get one signed. Cordis was able to keep its patent even if Dr. Palmaz didn’t explicitly keep his secrets secret. And maybe that’s our secret.