Intellectual Property Directions

In the World Series, errors can hurt you; at the PTO, apparently, errors don’t count, at least so it seems from a recent court decision. In the case, a patent applicant was able to resurrect its application from abandonment even though the governing statute appeared to prohibit it. When an alleged infringer claimed the patent was invalid because of this improper revival the court said “improper revival…may not be raised as a defense in an action involving the validity or infringement of a patent.” Thus, the patentee got to keep the benefit of the PTO procedural error.

In this particular case, Aristocrat Technologies Australia  (ATA) missed its national filing fee deadline here in the US. Although deemed abandoned by statute, Aristocrat convinced the PTO to revive the application, saying the missed payment was “unintentional”. The statute only allows revival if the missed payment was “unavoidable”. Aristocrat later sued International Game Technologies (ITG) for infringement.

ITG successfully defended itself in district court on the basis that the application had been improperly revived from abandonment. However, on appeal to the Federal Circuit (CAFC), ATA won a reversal.

The CAFC ruled that such a procedural error at the PTO was not one of the statutory grounds for an infringement defense and to allow such a defense would open a floodgate of infringers fine-tooth-combing through PTO actions that have nothing to do with the merits of the case, looking for non-substantive errors on which to get off the infringement hook.

The CAFC pointed out that this ruling was not in contradiction to a 1995 ruling [Quantum Corp. v. Rodime, PLC] that also involved a PTO error, where it said that the statutory list of defenses was non-exclusive. The difference between that ruling (where they declared the patent invalid) and this one (where they said the patent was still valid) is the nature of the PTO errors.

In this case, Aristocrat got no benefit from missing the payment date but in Quantum the patentee was improperly allowed to broaden the scope of its claims during reexamination. Had the patent not been declared invalid, other patentees might try to broaden their claims during reexamination on the off chance the PTO would err again. Clearly broadening a patent’s claims is a substantive error.

The message from the Court to alleged infringers is that nobody likes a tattle tale. PTO errors that don’t affect the substance of your infringement will not be listened to. Only point out PTO errors that effect the substance of the case.

So, like the customer who gets to keep the little extra change a clerk hands him, Aristocrat got to keep its patent because the PTO didn’t catch their own error in time.

Conventional wisdom dictates “Make your claims as broad as possible” but some inventors and their attorneys seem to forget that, broad or narrow, the claims have to define the invention you have, not the invention you wish you had. In a recent case, Liebel-Flarsheim Company overplayed their hand by filing (and getting) overly broad claims, made a losing bet by suing Medrad for infringing, and capped it all off by doubling down with an appeal in which their patent was ruled infringed but invalid.

Liebel’s invention was a fluid injector with a pressure jacket to contain the high pressures involved. At some point in the prosecution of their patent application someone got the bright idea that they could get broader protection by leaving out some of the limitations in their claims (a truth); they removed all references in the claims to the pressure jacket. The patent examiner allowed the claims.

The patent examiner did them no favor. When Liebel sued Medrad, they first lost the claims construction battle (the judge decided that the claims required the pressure jacket) but then won the appeals battle (the CAFC said NO pressure jacket was required). Based on the new claims construction, the district court concluded that Liebel’s patent was infringed (by the jacketless Medrad device) but that the claims were invalid because Liebel had failed to comply with the written description and enablement requirements!

This conclusion was to be expected - Liebel had never successfully made a jacketless system; their engineers testified that the use of a jacket was not a mere design option and that one of skill in the art would not know how to make a jacketless system; the specification described jacketless systems as “impractical“; the inventors had tried unsuccessfully to produce a jacketless system and that it was “too risky” to pursue further.

Yet, in spite of this understanding of the limits of the invention, in spite of having filed all claims with the limitation of a pressure jacket, Liebel and its patent attorney decided to delete these limitations from the claims and get a patent on the invention they wish they had invented.

Although I put most of the blame on Liebel’s patent attorneys, I also blame the patent examiner for allowing claims for which there was little or no support in the specification - no matter how loudly the patent attorneys cried.

Remember, to paraphrase Don Rumsfeld, you have to go to the patent office with the invention you have, not the invention you want.

In Oz, everyone except Dorothy ignored the man behind the curtain. In your patent, ignoring the means by which you implement various claimed functions can leave you without a heart, a brain, courage … or a valid patent. To have a valid patent you must, in effect, prove that you have actually developed a working invention.

“Means-plus-function” [MPF] claims are attractive to many inventors because they have a broader scope, at least in the sense that they cover the function and not the specific hardware implementation for performing that function:”control means for automatically operating said valves”. But when you include MPF claims you must take care that you describe in your specification some structure, some mechanism, some explicit embodiment by which the claimed function is performed. If you don’t include this structure your claims may be deemed invalid for indefiniteness. The risk for many of us is being too close to the technology. What is a given for us may be inadequate to the patent legal process.

In a recent CAFC appeal, Biomedino LLC tried to defend their MPF claim based on a box labeled “Control” in a figure and the statement in the specification that ”[the process] may be controlled automatically by known differential pressure, valving and control equipment”. In the Court’s mind this case begged the question of whether

“…sufficient corresponding structure [is] disclosed when the specification simply recites that a claimed function can be performed by known methods or using known equipment where prior art of record and the testimony of experts suggests that known methods and equipment exists?” [emphasis added]

Answering this question in the negative, the Court pointed out that the law requires the specification to actually disclose at least one way for the function to be accomplished and not leave it to the assumed knowledge of the archetypal person-of-skill-in-the-art.

Many inventors fall into this trap these days when it seems every device is controlled by embedded processors. While software can certainly be the means by which a function is performed, simply referring to “software” is not an adequate description of how you are performing a given function. Yes, it’s probably true that someone could write the software to perform the function, but unless you give more details of what’s inside the software “box” you are likely to find your patent invalidated.

Groucho Marx said, “If we had some eggs we could have eggs and ham, if we had some ham.” The CAFC said, “If you have some functions you can have some means-plus-function claims, if you actually have some means”.

The only way to add substantive material to your patent application is to file a Continuation-In-Part and many people believe a CIP “inherits” the priority date of the parent. It does… up to a point. When a claim is based in whole or in part on the new material added in the CIP, the priority date for that claim will be the filing date of the CIP. PowerOasis, a company that tried to sue T-Mobile for infringement, found out that out the hard way. Not only did they lose the infringement battle, but the bulk of their claims were declared invalid as having been on public sale more than a year before PowerOasis’s CIP was filed.

PowerOasis’s initial patent covered a “vending machine” for supplying either or both 110V power and telecommunications access to travelers. Their invention was a solution for all those businessmen sitting on the floor at airports, just to be near an outlet, or balancing laptops next to “dataphones” (payphones with dataports). Basically they designed a box with a switched power outlet and a switched telephone line (for your dial-up modem), where the switches were controlled by a payment mechanism. And their original patent reflected this vending machine model. Over the next few years they filed a number of continuation/CIP applications through which they convinced the PTO, through some verbal jujitsu that I find incredible, to allow the elements of their “vending machine” to be distributed over a wide area and to include configurations identical to an ISP operating internet hot spots.

At some point, PowerOasis decided that anyone “vending” access to the internet on a pay-as-you-go basis was infringing their patents. An obvious big fish was T-Mobile. They had just one minor problem; It is undisputed that more than a year prior to filing the CIP that covered the allegedly infringing systems, T-Mobile’s MobileStar Network contained all of the same features that form the basis of PowerOasis’s allegation that the T-Mobile HotSpot Network infringed its patents.

PowerOasis tried to avoid summary judgment by pointing out that their issued CIP patent had a presumption of validity and that in any case the priority date for the CIP could be traced back to their original patent’s filing date.

The Court of Appeals for the Federal Circuit, CAFC, tossed out both these arguments. Firstly, the Court said, the presumption of validity afforded an issued patent only extends to material evaluated by the PTO. Prior public use, for example, is not usually investigated by the PTO. Thus, the Court said, the burden of proof (that their patent was valid) fell on PowerOasis’s shoulders, not on T-Mobile (to prove it invalid).

Secondly, the Court reinforced what we already knew; each claim has a priority date that corresponds to when the supporting specification material is filed. The dependent claims in the CIP that described the alleged T-Mobile infringement were based on the new material added in the CIP and could not rely on the filing date of the original patent.

Herein lies the difference between a continuation and a continuation-in-part. In a continuation application, no (substantive) new material is allowed so the added claims can all share the priority of the original application. In a CIP, new material may be added so each claim must be examined to see when it’s supporting material was filed; a CIP claim is given a priority date corresponding to the filing date of its supporting material.

While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.

To take any other position opens the patent system to the grossly unfair practice of writing CIP claims that turn your competitors into infringers after the fact.