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.
Continue Reading PTAB Clarifies Weight of Claimed Condition Precedent

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

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.
Continue Reading PTO Scolded for Lax Patent Reexamination Practices

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:
Continue Reading USPTO to Require Means Plus Function Claims for Software Related Patents?

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)
Continue Reading CAFC Again Reverses USPTO on BRI Claim Interpretation

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?

Continue Reading BPAI Reversal of All Rejections Dooms Patent in Reexamination

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.
Continue Reading Post Grant Petitions to More Closely Scrutinize Means Plus Function Claims

Disclaimer Results in Reversal of $56 Million Dollar Damage Award

As previously discussed, the CAFC has agreed to reconsider Marine Polymer Technologies, Inc. v. HemCon, Inc. (here) en banc. The Court will reconsider whether or not intervening rights are created for a claim that is not literally amended in a post grant proceeding by a change in verbiage, but instead, by operation of prosecution disclaimer on the part of the Patentee. (earlier post here)

Interestingly, last week the Court considered a somewhat similar circumstance of claims that were confirmed in patent reexamination without amendment in Krippelz v. Ford Motor Company (here).
Continue Reading CAFC Again Considers Patent Reexamination Disclaimer