Intellectual Property Directions

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.

Technical Editor Paul Rako of EDN (formerly Electronics Design News) recently posted a blog entitled File Your Own Patents. It’s really more of a meta-post since it is only announcing an upcoming article. It starts:

My IC designer buddy Don Sauer already has something like 40 patents, mostly when he worked at National Semiconductor. Now he is working up an article for me on how to do it cheap.

Mr. Sauer’s how-to solution, apparently, is to skip the patent attorney and file it yourself. To that I say, well, hogwash. Actually, what I said in a comment to the blog was:

I will grant you that a reasonably intelligent person can certainly file a patent application pro se; anyone who can read with comprehension can do most knowledge work. However, the suggestion that one should file pro se begs two questions; are you ready (and interested enough) to invest the time to become knowledgeable in patent law and procedure to do it as well as an attorney or patent agent AND how are you accounting for the opportunity cost of the time spent (both the learning time, which can be amortized over many patents but which is an on-going investment as the law/rules change, and the time prosecuting the patent).

If the answer to the first question is NO, then we all know about GIGO. And if the answer to the second question is “Duh” or “I do it on my own time” then I suggest you haven’t thought this through.

After being a senior R&D engineer for 25 years I decided I was interested enough in IP and now have my own company acting as a part-time, outsourced Director of Intellectual Property. Most of my clients would prefer to spend their time (and their subordinates’ time) working on the invention itself and to hire someone - myself, a patent agent, or, heaven forbid, an attorney - to translate the engineering into a patent application. I would suggest this route is more cost effective for a company than to divert engineering talent to a task for which they are not trained.

Yes, “methods” are patentable subject matter. And yes, there are many processes that clearly deserve patent protection. But I sure wish the CAFC or Supreme Court would drive a stake through the heart of one class of methods patents and put a stop to the madness. These methods claims cover what I call end-user processes. In many cases this type of patent claim is used as a back door way to get market protection for an apparatus that could not be patented on its own; as such it is a subversion of the goals and intentions of our patent system.

I discussed an example of an end-user process patent in the post Is suing your customers a good idea? The patent in question had only one independent claim which described a medical procedure that could be performed with the assignee’s unpatentable apparatus - or anyone else’s equivalent apparatus. The medical procedure is surely a process or a method of doing something, but is it really in society’s interest to issue patents on a series of steps or activities performed by individuals without any patentable apparatus? Certainly there is a qualitative difference between inventing a better, faster, or cheaper manufacturing process whereby your company can produce a more competitive widget and “inventing” an activity that requires nothing more than human skills (including, perhaps, the skill of manipulating existing equipment) that you or your company does not actually practice and that is practiced by people who might never be your customers.

Our patent system is supposed to be a deal between society and the inventor. We (society) grant a limited time monopoly to the inventor in exchange for the inventor teaching us the non-obvious details of his or her novel invention. Implicit in this deal is an assumption that “non-obvious” and “novel” are somehow universally understood and demonstrable. The problem with end-user processes is that the tests of obviousness and novelty break down.

We test for obviousness and novelty by looking at what has gone before and what other workers in area would typically do. But unlike a process used in manufacture, end-user processes are usually performed by individuals, not organizations, so the motivation to record how activities are performed is low. Do you think your plumber records any “tricks of the trade” he uses for potential patenting? No, a master plumber passes these techniques to apprentices by demonstration. The patent examiner has no insight into this “database”. Only in court can experts testify about what is or is not common practice and by then the anti-competitive damage has already been inflicted on society.

Who files patent applications for end-user processes? All of us! Unfortunately it has become more or less standard practice to file methods claims along with one’s apparatus claims with the clear hope of getting de facto protection for the apparatus even if the apparatus claims are rejected during examination, disallowed later at trial or designed around by our competitors.

The de facto protection occurs when potential manufacturers of competing but non-infringing hardware decide not to enter the market out of fears be being liable for contributory or induced infringement of the methods claims. While the benefit to the inventor of this situation is clear, do we as a society really feel this is a good idea? Do we really want to give an inventor a patent monopoly on an unpatentable apparatus? And what can we do about it?

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.