Intellectual Property Directions

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. 

In drafting your claims it is so tempting to take that extra bite out of the apple. You know you want to get a patent issued to stake out market territory and you know what your product goals are. With a public release date looming your patent attorney says you’ve got to file now. Surely it will all be working soon. So what do you file: an application for what you have or an application for what you plan to have?

A Court of Appeals for the Federal Circuit decision from last summer confirmed what you already knew: an invention without enablement is not a [patentable] invention. Align Technologies, the company behind Invisalign® braces, was sued by Ormco Corp. for allegedly infringing a series of patents relating to computer-aided design and manufacture of custom orthodontic appliances.

Ormco’s patent claims seemed to cover the Invisalign system. However, during claim construction (a determination by the judge of exactly what the claims mean) Ormco was told that their claims only covered a process in which final treatment positions are automatically determined (viz., by computer software) whereas the Invisalign system uses “skilled operators” to determine the final positions of the teeth. The judge issued a summary judgement of non-infringement. If that were not bad enough for Ormco, the patent was also declared invalid for lack of enablement.

 How did Ormco wind up with no infringer to sue and no valid patent? Trying to reconstruct the back story, I think this is what happened. Ormco was trying to develop a fully automated system but had a market-ready orthodontic system even without that final computerized step. Anticipating success, they applied for their patent.

At the same time their patent attorneys were doing what is generally accepted to be the best strategy - they filed the broadest claims possible, claims that did not include the limitation of the computerized step. Claims that were ultimately allowed.

Once Ormco was successfully in the marketplace I suspect they gave up on, or at least greatly reduced, their efforts to get the computerized aspect of the system working; after all, dentists were probably just as happy to see a system that required their skilled intervention.

All was well until the Court looked at the specification and the prosecution history and determined that the broad allowed claims must actually be construed as narrowed by requiring a fully automatic process. Apparently, in the specification and history, it was clear that the inventors’ primary basis for distinguishing their invention from the prior art was its high level of automation.

Then, when one of the inventors testified that:

• Ormco had never attempted to create a computerized system that automatically determined tooth positions without human decision making;
• The manual override had been used on all of the approximately forty cases treated using the Insignia product;
• It was a goal to have the software generate final tooth positions that would not require use of the override, [but] variations in human anatomy had prevented the attainment of that goal; and
• [He] was also unsure if the problems due to variations in human anatomy could be overcome,

the invalidity for lack of enablement case was sealed. As the court concluded:

If an inventor attempts but fails to enable his invention in a commercial product that purports to be an embodiment of the patented invention, that is strong evidence that the patent specification lacks enablement.

So if you are still making adjustments in your invention when your patent gets filed, be aware that your lack of enablement may let your infringers take a bite out of your market.

Wilmer Hale reported today that:

Briefs for summary judgment are due on December 20, 2007, as are amicus curiae briefs. Oppositions are due on January 22, 2008, and rebuttals on February 1, 2008. A summary judgment hearing is scheduled for February 8, 2008. On October 31, 2007, Judge James Cacheris granted a preliminary injunction preventing the USPTO from implementing the changes in the Claims and Continuations Final Rule on November 1, 2007, until the case could be heard on its merits. Thus, the new rules will not take effect at least until mid-February 2008, and it remains to be seen if the proposed “continuation rules” will be modified further.