Prosecutor’s Tool Box 2017

Patent prosecutors navigate complex USPTO rules and seemingly esoteric examinational requirements to procure patent rights. In doing so, it is easy to lose sight of the fact that the Manual of Patent Examining Procedure (MPEP) does not have the full force and effect of law. Nevertheless, patent examiners (rarely trained lawyers) adhere to their interpretation of the Manual requirements. To budge examiners off of entrenched, legal positions, savvy prosecutors will keep a trained eye on the Federal Circuit for help.

2017 provided several decisions of immediate value to patent prosecutors. Continue Reading 2017 CAFC Guidance for Patent Prosecutors

User Activities vs. User-Driven, Hardware Function

Every so often a decision comes out of the Federal Circuit that has immediate value for patent prosecutors. Yesterday’s decision in Mastermine Software, Inc. v. Microsoft Corp., is one such case.

In Mastermine, the Court considered the extent to which user-initiated methodology of a Customer Relations Management (CRM) system may be recited in system claims. The district court found certain claims of the patents-in-suit (7,945,850 & 8,429,518), indefinite for improperly claiming two different subject-matter classes citing IPXL Holdings, L.L.C. v., Inc., 430 F.3d 1377(here).  The Federal Circuit reversed.

In its reversal, the Federal Circuit provided helpful guidance to patent prosecutors on how to claim user-driven hardware features in the first instance, as well as how to impress upon a patent examiner that functional language of such claims does not cross the line to reciting a separate statutory class. Continue Reading Patent Prosecutor’s Toolbox: Claiming User Functionality

Common USPTO Debate Clarified by New Precedential Decision Ex parte Schulhauser

A common debate at the PTO in recent years at both the examination and Board level has been the appropriate treatment of a claimed condition precedent.  That is, if a claim recites that certain functionality only occurs on certain conditions, does that alternate functionality constrain the broadest reasonable scope of the claim?  

In Ex parte Schulhauser (here) the Board makes clear that the answer to this question may depend on whether or not the claim is presented in a method or apparatus claim format.

In the case of a method claim, the failure to meet a condition precedent means that corresponding conditional steps recited in the claim need not be performed.  So, the broadest reasonable interpretation of such a claim cannot include steps that are not required in all scenarios.  On the other hand, where the same claimed functionality is recited as part of a computer implemented apparatus claim, the Board explains:

The broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur. This interpretation of the system claim differs from the method claim because the structure (i.e., a processor programmed to perform an algorithm for carrying out the recited function should the recited condition be met) is present in the system regardless of whether the condition is met and the function is actually performed.

While the computer implemented apparatus in this instance was presented as a means-plus-function feature (necessarily requiring an algorithm for structural support) structure presented as “configured to” or “programmed to” implement such conditional functionality would presumably enjoy the same analysis.  

This decision may prove especially helpful to patent prosecutors as it is not uncommon for examiners to confuse the above method/apparatus distinctions.

Justice Dept. Brief Highlights Flaws of Cuozzo BRI Dispute

This past Wednesday the U.S. Department of Justice filed its Respondent Brief in Cuozzo Speed v. Lee. (here)   Amicus filings in support of the Respondent are due to be filed by March 30th.

In its brief, the government emphasizes that limited amendment options have long been a staple of USPTO post grant proceedings such as patent interference and patent reexamination, thus, BRI is just as applicable in Inter Partes Review (IPR) as it is in these other proceedings.  Also pointed out is that IPR includes many mechanisms that are different from litigation (hence it is not a surrogate) — not the least of which are the ability to amend claims and a lower evidentiary standard — and that, in any event, the PTO was given rule making authority for such interstitial matters as claim construction used during IPR.  

On the topic of the appeal bar, the government focuses on matters of statutory construction.

It would seem to me that the second issue (appeal bar) is the more likely candidate for modification by the Court.

Failure to Focus Means Plus Function Debate in Patent Reexamination

Last week in In re Avid Identification Systems Inc., the CAFC affirmed the USPTO’s rejection of certain claims of U.S. Patent 5,499,017 in ex parte patent reexamination. Of particular note in the appeal was the proper construction of  “means for storing.” The Patentee argued that the “means for storing” language invoked 35 U.S.C. § 112 6th paragraph (now known as 35 U.S.C. § 112(f)), and as such, required particular structure of the specification. The USPTO took the position that, since this claim construction position was not seasonably raised in the briefing to the PTAB, nor was the required claim mapping presented in the opening brief as required by 37 C.F.R. § 41.37(c)(1)(v), that the argument was waived for purposes of appeal.

In a stinging dissent, Judge Clevenger found the PTAB’s practice to be “random” as it relates to the proper examination of means-plus-function (MPF) claims. He was particularly disappointed that the PTO chose to “hide behind” 37 C.F.R. § 41.37(c)(1)(v), labeling such behavior a public detriment. (decision here)

The fact pattern in Avid is troubling on many levels. Not only is such a practice a public detriment as to predictability, but interpreting MPF claims to have a broader scope is arguably an ultra vires action in the context of patent reexamination. And, above all else, a simple rule change would avoid most such issues from reaching the appellate level.

As explained by Judge Clevenger,

The term “a means for permanently storing data” is undeniably a means-plus-function limitation. The question in this case is whether the Patent Office (“PTO”) may use an unaltered broadest reasonable interpretation standard in examining means-plus-function claims, or if these claims must always be interpreted in accordance with 35 U.S.C. § 112, ¶ 6. The answer is easy. 35 U.S.C. § 112, our en banc decision In re Donaldson, the Manual of Patent Examining Procedure (“MPEP”), and past PTO practice are all in agreement: under § 112, ¶ 6, “the broadest reasonable interpretation that an examiner may give means-plus-function language is that statutorily mandated in paragraph six.” In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1189) (en banc).

(emphasis added)

Judge Clevenger highlighted the impact on the public in adopting a broader read of such a claim, explaining:

In this case, the Examiner allowed claim 13 without explicitly interpreting the claim under § 112, ¶ 6. Meanwhile, a district court found that there was no support in the specification for the limitation “means for decoding a password…” in the same claim. Allflex USA Inc., v. AVID Identification Systems, Inc., Case No. 5:06-cv-1109, ECF No. 469 at 15 (C.D.Ca. Feb. 17, 2010) (Claim Construction Order). Had the Examiner properly considered the requirement that the specification disclose structure corresponding to the “means” claimed, this inconsistent result could have been avoided.

The danger in ignoring the required construction is clear. That is to say, the public would undoubtedly follow the guidance of Donaldson in interpreting such a text book MPF element, perhaps believing themselves free of liability based on such an analysis. Thereafter, the scope of the claim may be treated in patent reexamination quite differently; lending weight to a Patentee assertion of a broader scope. Yet, broadening of an originally issued claim is precluded by statute in patent reexamination. 35 U.S.C. § 305. I am not sure the PTO can ignore such a fundamental issue of claim construction without running afoul of 305.

In this case it may be that the Patentee deliberately ignored the requirement of Rule 41.37 during appeal, preferring a broader interpretation for infringement purposes. Once losing at the PTAB, the interpretation was switched to the narrower read at the time of rehearing in an attempt to save the patent. It is entirely understandable that the PTO would choose to deny this argument so late in the game. The fault lies not with the PTAB, but in allowing such claims to be presented in a request for patent reexamination in the first instance without a counterpart rule akin to 41.37. This oversight was corrected for the new post grant trial proceedings of the AIA, which require such a mapping in the petition. In this case, the reexamination requester provided no such mapping or explanation as to the “means for” language. As a result, the issue was raised for the first time in the request for rehearing.

While means plus function claiming has fallen in popularity in recent years, many older patents are now the subject to patent reexamination. Also, it appears the USPTO is attempting to encourage means-plus-function claim drafting for software related patents. This problem is ongoing and not at all insignificant.

As I have suggested previously, a simple rule requiring the same claim mapping from patent reexamination requests as required on appeal (and now, the new post grant petitions) would focus the issue at the outset of the process. The majority in Avid noted that the presumption triggered by the “means for” language is only triggered when raised by the Patentee, yet, it is also a presumption relied upon by the public.

Functional Claim Drafting Practices Considered by USPTO

Despite public misconceptions to the contrary, software is not patentable. Of course, aspects of software, or “software related” patents exist in which an otherwise statutory apparatus or product is claimed that includes computer implemented functionality. In an effort to enhance the “quality” of these software related patents, the USPTO issued a notice last Thursday in the Federal Register entitled: Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software Related Patents.

The Notice “sets forth several topics to begin the Software Partnership discussion. The first topic relates to how to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language.”

Reading through the tea leaves, the USPTO appears quite interested in exploring means-plus-function claiming with the software community. Since this style of claiming directly links the disclosed structure of the patent specification (algorithmic in the case of computer implemented features), it may be that the Office is proposing to rein in the scope of software claims by requiring the more narrow claim type. Thus, the “enhancement in quality” may result in future software related patents becoming more difficult to assert based on their narrower scope. To this end, the USPTO proposed the following talking points for the upcoming roundtable:

The USPTO seeks comments on how to more effectively ensure that the boundaries of a claim are clear so that the public can understand what subject matter is protected by the patent claim and the patent examiner can identify and apply the most pertinent prior art. Specifically, comments are sought on the following questions. It is requested that, where possible, specific claim examples and supporting disclosure be provided to illustrate the points made.

1. When means-plus-function style claiming under 35 U.S.C. 112(f) is used in software-related claims, indefinite claims can be divided into two distinct groups: claims where the specification discloses no corresponding structure; and claims where the specification discloses structure but that structure is inadequate. In order to specify adequate structure and comply with 35 U.S.C. 112(b), an algorithm must be expressed in sufficient detail to provide means to accomplish the claimed function. In general, are the requirements of 35 U.S.C. 112(b) for providing corresponding structure to perform the claimed function typically being complied with by applicants and are such requirements being applied properly during examination? In particular:

(a) Do supporting disclosures adequately define any structure corresponding to the claimed function?

(b) If some structure is provided, what should constitute sufficient ‘structural’ support?

(c) What level of detail of algorithm should be required to meet the sufficient structure requirement?

2. In software-related claims that do not invoke 35 U.S.C. 112(f) but do recite functional language, what would constitute sufficient definiteness under 35 U.S.C. 112(b) in order for the claim boundaries to be clear? In particular:

(a) Is it necessary for the claim element to also recite structure sufficiently specific for performing the function?

(b) If not, what structural disclosure is necessary in the specification to clearly link that structure to the recited function and to ensure that the bounds of the invention are sufficiently demarcated?

3. Should claims that recite a computer for performing certain functions or configured to perform certain functions be treated as invoking 35 U.S.C. 112(f) although the elements are not set forth in conventional means-plus- function format?

The Software Partnership roundtable events are scheduled for February 27th in New York City, and February 12th in Silicon Valley. Written comments will be accepted until March 15th 2013.


Specification Crucial in Proper BRI Analysis

It is well established that the USPTO applies a broadest reasonable claim interpretation to patent applications and patents subject to post issuance proceedings. The abbreviation “BRI” is often used as a short hand reference to the full claim interpretation standard, which is the broadest reasonable interpretation in light of the specification, from the perspective of one skilled in the relevant art. (MPEP 2111)

Unfortunately, the shorthand notation “BRI” is often mistaken as the standard. That is to say, the proper test is not simply a “broadest reasonable interpretation” of claims in a linguistic sense. Rather, the broadest reasonable interpretation of the claims that is consistent with the specification of the subject application or patent. While it is true that limitations from a patent specification may not be imported to the claims, the USPTO often times confuses this prohibition with the required consideration of the specification in a proper BRI analysis.

In 2010, the CAFC cautioned the USPTO on reading claims independent of a patent specification during patent reexamination in In re Suitco Surface (CAFC 2010). Earlier this week, the agency was reversed again, due to the guidance of the patent specification in In re Abbott Diabetes Care Inc. (here)

In Abbott, the parties’ primary dispute centered on whether the broadest reasonable construction of “electrochemical sensor” would embrace a sensor including external cables and wires connecting the sensor to its control unit. The USPTO found that the BRI included such wired sensors, the CAFC reversed, explaining:

We agree with Abbott that the Board’s construction of “electrochemical sensor” is unreasonable and inconsistent with the language of the claims and the specification.   .  .

Here, the specification contains only disparaging remarks with respect to the external cables and wires of the prior-art sensors . . .In fact, the primary purpose of the invention was to provide “a small, compact device that can operate the sensor and provide signals to an analyzer without substantially restricting the movements and activities of the patient.”   . . .

Even more to the point, every embodiment disclosed in the specification shows an electrochemical sensor without external cables or wires.  Indeed, the only mention of a sensor with external cables or wires in Abbott’s patents is a single statement addressing the primary deficiency of the prior art.

(emphasis added)

InconsistencyA successful reexamination from a defendant perspective does not always result in an overt claim change or cancellation. In other words, even where claims are confirmed, statements in the reexamination record that are inconsistent with arguments made in a concurrent litigation may provide key evidence necessary to prevail during a Markman hearing, or offer new, non-infringement positions to defendants.

Late last month, in Kilopass Technology Inc., v. Sidense Corp (NDCA), the Court cited to seemingly inconsistent statements made by a Patentee during the patent reexamination Continue Reading Perceived Patent Reexamination Misstep Haunts Plaintiff

Inability to Properly Examine Means-Plus-Function Claims in Patent Reexamination Creates Perplexing Result

Unlike most claims in patent reexamination, means-plus-function claims may not be properly accorded a broadest reasonable claim interpretation. Instead, as outlined by MPEP 21812183, the structure and acts described in the underlying patent specification embody the statutorily mandated scope. That is to say, the structure described in the patent specification as linked to the claimed function is essentially incorporated into the claim. Absent this analysis of the specification for structural support, there can be no structural limits to the claim by which to properly compare the prior art. See MPEP 2183 (C)

Yet, for improperly supported, originally issued means-plus-function claims, a rejection pursuant to 35 U.S.C. § 112 2nd paragraph is not possible in patent reexamination. This is because such a rejection would not be based on “patents and printed publications” as mandated by the patent reexamination statutes. In other words, where a means-plus-function claim examined in patent reexamination lacks any structural support in the patent specification, the USPTO is unable to properly examine the claim. (See my 2010 post on this “Tale of Two Statutes” here)

In a decision last week, the Board of Patent Appeals & Interferences (BPAI) was faced with this statutory conundrum in the inter partes patent reexamination of U.S. Patent 6,446,045. (decision here) The ‘045 Patent is owned by Function Media L.L.C. and is currently asserted against Google Inc. (on appeal to the CAFC).

In the reexamination of the ‘045 Patent all claims were rejected in view of applied art.  However, as the BPAI found the means-plus-function claims unsupported, all of the outstanding rejections were reversed as speculative. Taking the estoppel of inter partes patent reexamination into account (35 U.S.C. § 315), did Google win or lose?

Claim 1 of the ‘045 Patent is representative and recites:

1. A method of using a network of computers to contract for, facilitate and control the creating and publishing of presentations, by a seller, to a plurality of media venues owned or controlled by other than the seller, comprising:

a) providing a media database having a list of available media venues;

b) providing means for applying corresponding guidelines of the media venues;

c) providing means for transmitting said presentations to a selected media venue of the media venues;

d) providing means for a seller to select the media venues; and

e) providing means for the seller to input information;

whereby the seller may select one or more of the media venues, create a presentation that complies with said guidelines of the media venues selected, and transmit the presentation to the selected media venues for publication.

(emphasis added)

The BPAI found that none of the above emphasized means-plus-function elements were supported by the ‘045 Patent specification stating,

[W]e find the claim to be fatally ambiguous. The remedy for this sort of ambiguity is not to read limitations in from the Specification (which is not possible in this case anyway) or to read the claim broadly, as the Examiner attempts, but rather to reject the claim as indefinite.      .     .     .     .

For that reason, if this were a patent application or a claim amended during reexamination, we would enter a new ground of rejection under 37 C.F.R. § 41.50(b) on the basis of 35 U.S.C. § 112, second paragraph, and not reach the rejections under 35 U.S.C. §§ 102 and 103, since they would necessarily be based on speculative assumptions as to the meaning and scope of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).

However, in the present case, it would be pointless to enter a new ground of rejection on the basis of indefiniteness because such rejections are beyond the scope of reexamination for issued claims, and as such, the Examiner would be barred by rule from enforcing the rejection. 37 C.F.R. § 1.906(c). Yet, without a discernable claim construction, an anticipation or obviousness analysis cannot be performed since the constructs of 35 U.S.C.§ 112, sixth paragraph, require us to construe the claim “to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112(6). “[T]he ‘broadest reasonable interpretation’ that an examiner may give means-plus-function [or step-plus function] language is that statutorily mandated in paragraph six.” See In Re Donaldson Co. Inc., 16 F.3d at 1194-95.

Consequently, we find that proper disposition of this appeal is to reverse the speculative prior art rejections of record without prejudice to its reinstitution if the patent owner files an amendment or reissue application to cure the indefiniteness. While we understand this disposition leaves a critical issue with the claims unresolved, we cannot ignore the fact that paragraph six does not absolve an applicant or appellant from complying with the remaining paragraphs of 35 U.S.C. § 112. See In Re Donaldson Co. Inc., 16 F.3d at 1195; (citing In re Lundberg, 244 F.2d at 547-48, 113 USPQ at 534 (CCPA 1957)).

(emphasis added)

In the per curiam decision, the Board reversed the outstanding art rejections; typically a clear loss for a patent challenger. Yet, while the Board did reverse all rejections, and did not enter a 112 rejection per se, it very clearly memorialized its fact finding in this regard…but to what end?

The ‘045 Patent is separately on appeal to the CAFC from the parallel district court action. Generally, evidence of an as yet incomplete reexamination would not typically be considered by the Court, and is not yet “final” to trigger estoppel.  Still, there is at least some argument that Congress had envisioned fact based estoppel to be an aspect of inter partes patent reexamination in AIPA 4607. (an uncodified provision). Likewise, even absent a legislative intention, the CAFC is free to take official notice of such a noteworthy result.

With the fact finding clearly evident in the BPAI decision as to deficient 112 support, it is likely that the Patent Owner will be appealing a reversal of all rejections…strange.

MPF Claim Interpretation Required to Initiate New AIA Proceedings

In past posts I have pointed out that in analyzing requests for patent reexamination, Examiner’s are trained to apply a Broadest Reasonable Interpretation (BRI) to patented claims. Unfortunately, over emphasis upon this standard ignores the fact that the scope of certain patent claims are defined by 35 U.S.C. § 112, 6th paragraph, and may not be interpreted in this manner, namely—“means/step-plus-function” claims.

In my experience, the USPTO will almost always grant a reexamination request for MPF claims by applying an improper BRI analysis of the recited function alone. In fact, I have never seen a Request denied for failure to provide the necessary structural mapping between the specification and MPF claims. Of course, such a mapping is expressly required when appealing a rejection to the Board of Patent Appeals & Interferences (BPAI).

As a result, Patentees will often argue for proper claim interpretation under 112 6th paragraph throughout the reexamination, only convincing the Board as to the proper interpretation of the MPF claims years later. Likewise, by not forcing the issue at the time of the Request, Patentees may only resort to arguing 112 6th at the appeal stage (after failing to distinguish art under the BRI standard); either situation is a waste of Office resources. One such case of a Patentee changing course was illustrated yesterday in Ex Parte EON Corp. IP Holdings LLC. In reversing the examiner’s rejection, the Board held:

To the extent that the Examiner responds to arguments in the Appeal Brief, the Examiner finds Appellant’s interpretation of the “facilities for” limitation to be unduly narrow, and that interpreting those limitations to involve set-up and response associated with a broadcast and acknowledge mechanism “is not required to reasonably interpret the claims” (Ans. 8). However, as we find those limitations to be means-plus-function limitations, that is exactly what we must do, as discussed below.

Perhaps recognizing this trouble spot, the USPTO has proposed that such mappings be included in petitions for the new PGR and IPR proceedings of the America Invents Act.

To this end, IPR Rule 42.104 (3) requires:

Where the claim to be construed contains a means-plus function or step-plus-function limitation as permitted under 35 U.S.C. 112, sixth paragraph, the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function;

PGR provides the same requirement in Rule 42.204(3).

Going forward, due to their narrower scope, MPF claims  may become an increasingly valued hedge against post grant USPTO patent challenges.