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.]

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.

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”.