GERUNDTOLOGY

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§112(f) allows a patent applicant to claim an element by the function it performs, however functionally claimed elements using §112(f) are limited to what is disclosed in the specification and equivalents.  The classic form of a 112(f) claim element is:

means for + [GERUND]

for example “means for fastening.”  However, many prosecutors, attempting to free themselves from the bounds of the structures disclosed in their specifications, attempt to claim an element by the function it performs.]

However, it is not possible to write a truly functional claim that avoids 112(f).  A claim element that does not use the word “means” is presumed to not invoke §112(f), but if it fails to recite “sufficiently definite structure” or recites “function without reciting sufficient structure for performing that function,” then that element will nevertheless be construed under 112(f).  The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.  Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346 [115 USPQ2d 1105] (Fed. Cir. 2015).

If the functional term is found to have  a sufficiently definite meaning as the name for structure, the prosecutor has succeeded in broadly claiming the invention, while if it is not found to have a sufficiently definite structural meaning, then 112(f) applies, whether or not that is what the prosecutor intended.

While converting the gerund “fastening” in the example above, to “fastener” would seem to be safe, one cannot be completely certain that the selected term conveys a sufficiently definite structural meaning. See Advanced Ground Info. Sys., Inc. v. Life360, Inc., 119 USPQ2d 1526 (Fed. Cir. 2016)(symbol generator) ; Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, [116 USPQ2d 1144, 1148] (Fed. Cir. 2015)(compliance mechanism); Williamson v. Citrix Online, LLC, 792 F.3d 1339 [115 USPQ2d 1105, 1112 (Fed. Cir. 2015) (distributed learning control module). Thus, whenever a claim element is named functionally, the prosecutor should make sure that specification broadly discloses corresponding structure, in case the courts decide to construe the element under 112(f).

 

 

Stripped of Excess Verbiage, Claim Directed to Streaming Out-of-Region Media to Cell Phones in an Abstract Idea

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In Affinity Labs of Texas, LLC v. DirecTV, LLC, [2015-1845, 2015-1846, 2015-1847, 2015-1848] (September 23, 2016), the Federal Circuit affirmed the dismissal of the Complaint for patent infringement for failure to state a claim, because U.S. Patent
No. 7,970,379 was directed to an abstract idea.  The patent was directed to to streaming regional broadcast signals to cellular telephones located outside the region served by the regional broadcaster.

The Federal Circuit began with the “abstract idea” stage of the two-stage framework device by the Supreme Court to determine patentability under Section 101.  The “abstract idea” stage requires focus on the claimed advance over the prior art to determine if the “claim’s character as a whole” is directed to excluded subject matter.

The Federal Circuit said that the concept of providing out-of-region access to regional
broadcast content is an abstract idea, as that term is used in the section 101 context. It is a broad and familiar concept concerning information distribution that is untethered to any specific or concrete way of implementing it.  The Federal Circuit further noted that rhere is nothing in the claims directed to how to implement out-of-region broadcasting on a cellular telephone. Rather, the claims were drawn to the idea
itself.

The Federal Circuit noted that the claims were limited to cellphones, but merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.  The Federal Circuit further noted that the idea underlying the inventions in this case was akin to the ideas underlying the claims in several of this court’s recent cases.  Although the technology at issue differed from that involved in TLI and Ultramercial, the Federal Circuit found the analysis of the “abstract idea” step in those cases instructive, as the patent involves the conveyance and manipulation of information using wireless communication and computer technology.

The Federal Circuit distinguished DDR Holdings as requiring doing something to a web
page, not simply doing something on a web page.  The patent in suit was not directed to a technological problem, it claims the general concept of out-of-region delivery of
broadcast content through the use of conventional devices, without offering any technological means of effecting that concept.  The Federal Circuit also distinguished Enfish as related to an improvement to computer functionality itself, while the claims in the patent in suit were not directed to an improvement in cellular telephones but simply to the use of cellular telephones as tools in the aid of a process focused on an abstract idea.

As to the second stage of the analysis, the Federal Circuit found no “inventive concept” that transforms the abstract idea of out-of-region delivery of regional broadcasting into a patent-eligible application of that abstract idea. The Federal Circuit said that the claim simply recites the use of generic features of cellular telephones, such as a storage medium and a graphical user interface, as well as routine functions, such as transmitting and receiving signals, to implement the underlying idea, and that was not enough.

 

 

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Structural Element Does Not Make Method Claims Indefinite

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In Cox Communications, Inc. v. Sprint Communication Company LP, [2016-1013] (September 23, 2016), the Federal Circuit reversed the district court’s determination that the asserted claims of U.S. Patent Nos. 6,452,932; 6,463,052; 6,633,561; 7,286,561; 6,298,064; and 6,473,429 were not invalid for indefiniteness.

The parties agreed that “processing system” is not a means-plus-function
term, and confined its review to whether “processing system” renders the asserted patents indefinite under 35 U.S.C. § 112, ¶ 2.  The Federal Circuit found that the claim term “processing system” does not prevent the claims, read in light of the specification and the prosecution history, from informing those skilled in the art about the scope of the invention with reasonable certainty.

The Federal Circuit noted that the  case presented a peculiar scenario because the disputed term, “processing system,” plays no discernable role in defining the scope of the claims. The Court noted that all of the asserted claims are method claims, and
the point of novelty resides with the steps of these methods, not with the machine that performs them. The Federal Cricuit pointed out that if the words “processing system” were removed from the claims, therein meaning would not discernably change.  The Federal Circuit reasoned that if “processing system” does not discernably alter the
scope of the claims, it is difficult to see how this term would prevent the claims from serving their notice function under § 112, ¶ 2.

The Federal Circuit said that the common practice of focusing on individual terms is a “helpful tool,” but ultimately indefiniteness under § 112, ¶ 2 must ultimately turn on whether the “claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The Federal Circuit found that “processing system”
does not prevent the claims from doing just that.

Function Claim Language Shows That Claims are Directed to Abstract Idea, Not a Concrete Technical Innovation

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In Affinity Labs of Texas v. Amazon.com, Inc., [2015-2080] (September 23, 2016) the Federal Circuit affirmed judgment on the pleadings that U.S. Patent No. 8,688,085 on a System and Method to Communicate Targeted Information was directed to unpatentable subject matter.

The Federal Circuit found that the district court’s conclusion was consistent with its
approach to the “abstract idea” step in prior cases, including In re TLI Communications LLC Patent Litigation, which involved a patent on a method for uploading digital images from a cellular telephone to a server, which would then classify and store the images.  The Federal Circuit further found that the idea of the ‘085 patent was “even broader and more abstract” than the idea in Ultramercial, where a process of allowing
a consumer to receive copyrighted media in exchange for watching a selected advertisement was found to be an abstract idea.

The Federal Circuit rejected the argument that ’085 patent embodied a concrete
technological innovation, noting the purely functional nature of the claim, which confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.  The Federal Circuit said that claims thus do not go beyond stating the relevant functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.

The Federal Circuit concluded that In sum, the ‘085 patent was not directed to the
solution of a “technological problem,” nor was it directed to an improvement in computer or network functionality.  It claims the general concept of streaming user-selected content to a portable device. The addition of basic user customization features to the interface did not alter the abstract nature of the claims and does not add an inventive component that renders the claims patentable.

 

It was Error Not to Consider Secondary Considerations, But They Wouldn’t Have Made a Difference

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In ClassCo, Inc. v. Apple, Inc., [2015-1853] (September 22, 2016), the Federal Circuit affirmed a PTAB decision affirming an Examiner’s rejection of claims to a call-screening
system that verbally announces a caller’s identity before the call is connected.as obvious under 35 USC 103.

The Federal Circuit rejected the reexam applicant’s that the combination of references was inconsistent with KSR, noting:

Contrary to ClassCo’s argument, KSR does not require that a combination only unite old elements without changing their respective functions. KSR, 550 U.S. at 416. Instead, KSR teaches that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. And it explains that the ordinary artisan recognizes “that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. The rationale of KSR does not support ClassCo’s theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.

The Federal Circuit concluded that the Board properly applied a flexible approach mandated by KSR.

The Federal Circuit did find that the Board erred in dismissing some of the objective evidence of non-obviousness, noting that it has previously explained that “when secondary considerations are present, though they are not always dispositive,
it is error not to consider them.”  The Federal Circuit said that a determination of whether a patent claim is invalid as obvious under § 103 requires consideration of all four Graham factors, and it is error to reach a conclusion of obviousness until all those factors are considered.

However, the Federal Circuit found that the Board correctly determined that much of the evidence deserved no weight because it did not have a nexus to the merits of the claimed invention.  However as to some of the evidence there was a nexus.  The Federal Circuit explained that nexus depends on whether the claims are commensurate in scope with the secondary considerations.  The Federal Circuit noted that dependent claims contained the touted features, and that it was reasonable to assume that the underlying independent claim includes these features.  Even though the indepdent claims encompassed other embodiments as well, the Federal Circuit further noted that it has not required a patentee to produce objective evidence of nonobviousness for every potential embodiment of the claim. A patent applicant ‘need not sell every conceivable embodiment of the claims in order to rely upon objective
indicia of nonobviousness.

However, despite finding error in the Board’s according no weight to the evidence of secondary considerations, the Federal Circuit found no error in the Board’s ultimate conclusion of obviousness.  The Federal Circuit said that the value that the evidence of secondary consideratons possesses in establishing nonobviousness is “not strong” in comparison to the findings and evidence regarding the prior art under the first three
Graham factors.

 

Ten Ways to Get Less Than You Claim

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There are a number of ways that a patent applicant can end up with less than the patent applicant appeared to claim:

No. 10 Disclaiming claim scope during prosecution of the application.  However, this disclaimer must be clear and unmistakable.  Omega Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003).

No. 9 Distinguishing the prior art.  See, SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187 [108 U.S.P.Q.2d 1001] (Fed. Cir. 2013)(excluding the use of beads from the claimed three dimensional culturing based upon statements distinguishing the prior art).

No. 8 Criticizing the prior art.  See, Chicago Board Options Exchange Inc. v. International Securities Exchange LLC, 677 F3d 1361 [102 USPQ2d 1683] (Fed. Cir. 2012)(limiting scope of claims based upon characterization of prior art as “antiquated,” and having “inherent inadequacies,” and “deficiencies.”); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 [58 USPQ2d 1059] (Fed. Cir. 2001)(limiting claims to “coaxial lumen configuration” based, in part, criticisms of the dual lumen prior art in the Background Of the Invention.); Astrazeneca AB v. Mutual Pharmaceutical Co., 72 USPQ2d 1726 [72 USPQ2d 1726, 1730] (Fed. Cir. 2004)(limiting the meaning of solubilizer because of criticisms of prior art).

No. 7 Identifying “Objects” of the Invention.  See, The Gentry Gallery Inc. v. The Berkline Corp., 45 USPQ2d 1498 (Fed. 1998)(liming the location of controls so that the claimed invention meets the objects).

No. 6 Failing to describe more than one embodiment.  See, Wang Laboratories, Inc. v. America Online Inc., 197 F3d 1377 [53 USPQ 1161] (Fed. Cir. 1999)(determining that the claims were properly limited to the “only embodiment described.”); General American Transportation Corp. v. Cryo-Trans, Inc., 93 F.3d 766, 770, 772, [39 USPQ2d 1801, 1803, 1805-06] (Fed.Cir. 1996)(limiting the claims to the disclosure which was “not just the preferred embodiment of the invention; it is the only one described”); Watts v. XL Systems Inc., 232 F3d 877, 56 USPQ2d 1836 (Fed. Cir. 2000)(limiting sealingly connected because the specification “ only describes one method in which ‘tapered external threads [are] dimensioned’ to achieve the sealing connection.”); Modine Mfg. Co. v. United States Int’l Trade Comm’n, 75 F.3d 1545, 1551 [37 USPQ2d 1609, 1612] (Fed. Cir. 1996)(claimed limited to disclosed embodiment because “when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.”).

No. 5 Using i.e. instead of e.g.  See Edwards Lifesciences LLC v. Cook Inc., 582 F3d 1322 [92 USPQ2d 1599] (Fed. Cir. 2009)(limiting the construction of the term malleable, because “the specification’s use of “i.e.” signals an intent to define the word to which it refers.”); see, also, Abbott Laboratories v. Novopharm Ltd., 323 F3d 1324 [66 USPQ2d 1200] (Fed. Cir. 2003).

No. 4 Incorporating definitions or limitations “by reference.”  X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358 [111 USPQ2d 1607, 1610 (Fed. Cir. 2014)(claims limited by statements incorporated by reference).

No. 3 Failing to Identify described matter as “preferred.”  See Honeywell International Inc. v. ITT Industries Inc., 452 F3d 1312 [79 USPQ2d 1294, 1299] (Fed. Cir. 2006)( limiting “fuel injection system component” to a fuel filter because a fuel filter was not merely discussed as a preferred embodiment); see, also, Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328 [56 USPQ2d 1208](Fed. Cir. 2000)(Claims limited to use of citric acid where “preferably” language separated by a comma, and thus did not apply.).

No. 2 Use of unnecessarily narrow language.  For example “very important” (Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 [78 USPQ2d 1786, 1788] (Fed. Cir. 2006)(limiting claims because of “very important” feature described in specification.)); “important feature,” (SafeTCare Manufacturing Inc. v. Tele-Made Inc., 497 F3d 1262 [83 USPQ2d 1618] (Fed. Cir. 2007)(limiting claims because of an “important feature of the present invention” described in specification).);  “critical,” (harmacia & Upjohn Co. v. Mylan Pharm., Inc., 182 F.3d 1373 [50 USPQ2d 1033, 1037] (Fed. Cir. 1999)(limiting the claims because the specification indicated that “the use of spray-dried lactose is a critical feature of the present invention.”).) “necessary,” (Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 [78 USPQ2d 1417, 1421](Fed. Cir. 2006)(Statement in specification that “it is necessary to have a catalyst to have a catalyst containing solely chromium” limited claims).); “solely,” (Atofina v. Great Lakes Chemical Corp 441 F.3d 991 [78 USPQ2d 1417, 1421]( (Fed. Cir. 2006) (Statement in specification that “it is necessary to have a catalyst to have a catalyst containing solely chromium” limited claims).); “essential,” (X2Y Attenuators v. ITC, [110 USPQ2d 1707, 1610] (Fed. Cir. July 7, 2014)(limiting claims to sandwich configuration because of description in specification that the sandwich configuration is “an essential element among all embodiments”).)  “requires,” (Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 [81 USPQ2d 1545, 1549] (Fed. Cir. 2007)(limiting the claims because of a statement in the specification that successful manufacture “requires” a particular step).);  and “universal” (X2Y Attenuators v. ITC, [110 USPQ2d 1707, 1610] (Fed. Cir. July 7, 2014)(limiting claims to sandwich configuration because of description in specification that the sandwich configuration is a “feature [] universal to all the embodiments”).)

No. 1 Describing “the invention” rather than embodiments of the invention.  See, Honeywell International Inc. v. ITT Industries Inc., 452 F3d 1312 [79 USPQ2d 1294, 1299] (Fed. Cir. 2006)(limiting “fuel injection system component” to a fuel filter because at least four times the specification described it as “this invention” or “the present invention”); Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021 [113 USPQ2d 1859, 1862] (Fed. Cir. 2015)(noting that “the present invention includes …” or “the present invention is …” or “all embodiments of the present invention are ….” limits the claims); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1447 [58 USPQ2d 1059] (Fed. Cir. 2001)( limiting claims to “coaxial lumen configuration” based, in part, on description of “the invention” and “the present invention.”); Watts v. XL Sys., Inc., 232 F.3d 877 [56 USPQ2d 1836, 1840] (Fed. Cir. 2000)(limiting claims to use of misaligned taper angles based on description of “the present invention”); Astrazeneca AB v. Mutual Pharmaceutical Co., 384 F.3d 1333 [72 USPQ2d 1726, 1730] (Fed. Cir. 2004)(limiting claims to solubilizers suitable according to the invention).

Federal Circuit Remands Issue of Enhanced Damages for Determination Whether This was an Egregious Case of Misconduct Beyond Typical Infringement

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In WesternGeco LLC v. Ion Geophysical Corp., [2013-1527, 2014-1121, 2014-1526] (September 21, 2016), the Federal Circuit, on remand from the Supreme Court after Halo Electronics, Inc. v. Pulse Electronics, Inc., vacated the district court’s judgment with respect to enhanced damages, but reinstated its earlier opinion and judgment in all other respects.

The district court found that WesternGeco prevailed on the subjective prong of the two-part In re Seagate test, but not the objective prong, and denied enhanced damages for willful infringement.  The Supreme Court removed the objective prong in Halo, so the Federal Circuit vacated and remanded the case for the district court to address enhanced damages under the new standard set forth in Halo, giving district courts greater discretion in awarding enhanced damages in cases where the defendant’s infringement was egregious, cases “typified by willful misconduct.”

The Federal Circuit said that the principal problem the Supreme Court had with with
Seagate’s two-part test was that it requires a finding of objective recklessness in every case before district courts may award enhanced damages: “The subjective willfulness
of a patent infringer, intentional or knowing, may warrant enhanced damages, without regard to whether his infringement was objectively reckless.”

If willfulness is established, the question of enhanced damages must be left to the district court’s discretion.  However, nothing says that enhanced damages must follow a finding of egregious misconduct. As with any exercise of discretion, courts should continue to take into account the particular circumstances of each case in deciding whether to award damages, and in what amount. Section 284 permits district courts to exercise their discretion in a manner free from the inelastic constraints of the Seagate test.

The Federal Circuit said that after Halo, the objective reasonableness of the accused
infringer’s positions can still be relevant for the district court to consider when exercising its discretion.  The Federal Circuit noted that the Supreme Court itself has said that district courts should exercise their discretion, taking into account the particular circumstances of each case,” and consider all relevant factors in determining whether to award enhanced damages.

The Federal Circuit said that on remand the district court must review the sufficiency of the evidence of willfulness as a predicate to any award of enhanced damages, mindful of Halo’s replacement of Seagate’s clear-and-convincing evidence standard with the “preponderance of the evidence standard.”  Then the district court must consider whether enhanced damages should be awarded, and specifically whether the infringement constituted an egregious case of misconduct beyond typical infringement meriting enhanced damages under § 284 and, if so, the appropriate extent of the enhancement.

 

Inherent Disclosure is Sufficient to Support a Priority Claim

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In Yeda Research v. Abbott GmbH. [2015-1662] (September 20, 2016), the Federal Circuit affirmed the district court’s decision that U.S. Patent No. 5,344,915 was entitled to priority of its parent application, and thus was not invalid.

The issue before the Federal Circuit was the legal standard for written description support. The Federal Circuit said that in order for the claims of the patent to benefit from the parent application’s filing date, the claimed invention must be disclosed by the parent application in a way that clearly allows a person of ordinary skill to recognize that the inventor invented what is claimed and possessed the claimed subject matter at the date of filing.  The Federal Circuit turned to the doctrine of inherent disclosure: Under the doctrine of inherent disclosure, when a specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as adequate written description to support a subsequent patent application that explicitly recites the
invention’s inherent properties.

It was undisputed that the later-claimed protein with the same partial N-terminus sequence and additional traits disclosed in the parent application.  The Federal Circuit concluded that the application inherently discloses the remaining amino acids in the N-terminus sequence of TBP-II and serves as adequate written description support for the patent claiming TBP-II. The Federal Circuit said that it is not necessary for an application to disclose a protein’s complete N-terminus sequence in order to provide an adequate written description.

 

Backgrounds — The Less Said the Better

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Prosecutors are repeatedly being told by the Federal Circuit, and we are gradually learning, that the less said on the Background the better.  Whether it is by admitted prior art, criticisms of the prior art that work a disclaimer, or objects of the invention that limit the scope of the claims, backgrounds can do more harm than good.  Usually the less said the better.

The Background of U.S. Patent No. 8,007,204 is one that might be improved by brevity, although its problem — irony — is not as fatal as those listed above.  The ‘204 Patent is directed to a Floating Structure for Support of Mixed Use Facilities.  One of the problems of the prior art identified in the background are the restrictions of intellectual property laws:

8007204

The solution is a floating structure in the middle of the ocean, protected, of course, by patent issued by a land-based society.

8007204-2

 

Substantial Evidence Supported Infringement of Limitations That Did Not Need Construction

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In Lifenet Health v. Lifecell Corporation, [2015-1549](September 16, 2016) the Federal Circuit affirmed the district court’s judgment that the claims of U.S. Patent No. 6,569,200 on plasticized soft tissue grafts suitable for transplantation into humans were not invalid and were infringed.

At issue was the claim language that the “one or more plasticizers are not removed
from said internal matrix of said plasticized soft tissue graft prior to transplantation into a human.”  This language was added during prosecution to distinguish over prior art where the introduced plasticizers were removed before implantation.  The accused product instructed users to soak the grafts in saline which would remove as much as 50% of the plasticizers.

The district court found that no further claim construction was needed.  Lifecell argued that the district court failed to resolve a legal dispute regarding the scope of the claim, however the Federal Circuit found that Lifecell did not properly raise the issue.  Lifecell wanted the jury to be instructed that removal of any plasticizer from any part of the graft was enough to avoid infringement, which the Federal Circuit found was not only an argument about degree of removal, but also an argument about from where the pasticizer is not to be removed.  Regarding degree, Lifecell did get the interpretation  and instruction it wanted.  Regarding location, Lifecell failed to properly raise an issue of what “internal matrix” meant .

Examining the record, the Federal Circuit found that there was substantial evidence to support the jury’s determination that plasticizer is not removed “from the internal matrix” of the accused tissue grafts before transplantation.

The Federal Circuit went on to reject Lifecell’s arguments based on joint infringement, finding that the limitations were not steps that needed to be performed, but limitations on the structure.  Similarly, the Federal Circuit rejected the argument that the claim contained mixed method and apparatus limitations.