Indefiniteness and Best Mode

1. Indefiniteness and Best Mode Patent Law Sept. 15, 2011

2. Disclosure/Enablement, § 112 ¶ 1Written Descriptionof Claimed Invention ¶ 1Enablementof one skilled in the art without undue experimentation of: • how to make • how to use ¶ 1Best Modecontemplated by inventor ¶ 2,6Claims- definiteness

3. Disclosure/Enablement, § 112 U.S.C. § 112: ¶ 1 The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

4. Definiteness, § 112 U.S.C. § 112: ¶ 2 The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his [or her] invention.

5. End of Best Mode as a Litigation Defense • Currently, a PTO examiner may reject a patent application for failure to state the best mode; AND best mode may be pleaded as a defense in litigation • Beginning on the date of enactment of the Leahy-Smith AIA, best mode can no longer be raised as a invalidity defense. • However, withholding of best mode information still seems to be a potential ground for and inequitable conduct/unenforceability defense.

6. Amendment to 35 USC 182 ‘‘(3) Invalidity of the patent or any claim in suit for failure to comply with— ‘‘(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable;

7. Orthokinetics v. Safety Travel Chairs Page 337, 5th ed.

8. United States Patent RE30,867 Gaffney February 16, 1982 Travel chair The front wheel assembly of a wheel chair is dimensioned so that it will easily pass through the space between the seat of an automobile and the doorframe thereof. The rear wheel assembly is retractable upwardly under the seat portion to a position which permits the seat portion and the retracted rear wheel assembly to be set upon the automobile seat. The wheel chair and the person seated therein may be easily placed on the automobile seat and removed therefrom while the person remains seated in the wheel chair. • Inventors: Gaffney; Edward J. (Pewaukee, WI) Assignee: Orthokinetics, Incorporated (Waukesha, WI) Appl. No.: 135602Filed: March 31, 1980

10. Orthokinetics – Claim 1 1. In a wheel chair having a seat portion, a front leg portion, and a rear wheel assembly, the improvement wherein said front leg portion is so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof whereby said front leg is placed in support relation to the automobile . . . .

11. Orthokinetics holding The phrase “so dimensioned” is as accurate as the subject matter permits, automobiles being of various sizes. As long as those of ordinary skill in the art realized that the dimensions could be easily obtained, § 112, 2d ¶ requires nothing more. The patent law does not require that all possible lengths corresponding to the spaces in hundreds of different automobiles be listed in the patent, let alone that they be listed in the claims.

12. Definiteness • Orthokinetics standard • Viewed from perspective of one skilled in the art • Varies by field • Distinguish spec from claims • “Enable” claims in spec • Definiteness a matter of claim drafting

13. Ortho – cont’d • Notice function is key • Uncertainty for competitors is a concern • But: claim drafting must be tested by standards in the relevant field

14. Standard Oil Co. v. American Cyanamid Co. – p. 341 “The process for hydrolyzing a nitrile . . . comprising contacting said n itrile with water . . . in the presence of copper ion, said copper ion being at least partially soluble in water, the nitrile or in both water and nitrile and saidcopper ion being composed of copper in a combined valence state of Cu° + Cu+, Cu° + Cu++, or Cu° + Cu+ + Cu++”

15. Definitness issue • No standard definition of “partially soluble” in (1) the spec, or (2) the art, the relevant field

16. “Slightly soluble” • Defined in the art; but not specifically related to the phrase “partially soluble”

17. Although Dr. Greene “had the right, and the skill and background, to have defined the term,” she chose not to; thus the term “is too vague to particularly point out and distinctly claim the subject matter which [the patentee] claims as [her] invention,” and the patent is invalid. -- p. 342

18. Indefiniteness: what is “insolubly ambiguous”? • Some cases are generous in construing claims – wide room to take account of understanding of one skilled in the art, and of context • Example: Energizer Holdings, Inc. v. International Trade Commission, 435 F.3d 1366 (Fed. Cir. 2006) – book p. 343

19. Antecedent basis 1. An electrochemical cell comprising an alkaline electrolyte, a cathode …, and an anode gel comprised of …, wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and said zinc anode has . . . .

20. 2nd problem • Limitation for zinc anode is apparently tied to test conditions, but is stated as a limitation for each and every anode in operation • Can the court fill in its “common sense understanding” of what the drafter was trying to achieve with the limitation?

21. Common sense? Skill in the art? “[T]he issue here is not correction of error, but understanding of what the claim covers. When the meaning of the claim would reasonably be understood by persons of ordinary skill when read in light of the specification, the claim is not subject to invalidity upon departure from the protocol of “antecedent basis.” – casebook 5th ed. 343-44

22. BUT compare: • Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 • Claim limitation “heating the resulting batter-coated dough to a temperature in the range of about 400 to 800 F.”

23. Special problem: approximate claim language • “About” • “Approximately”

24. Halliburton v. M-I LLC • 514 F.3d 1244 • January 25, 2008 (Fed Cir)

26. 1. A method for conducting a drilling operation in a subterranean formation using a fragile gel drilling fluid comprising: (a) an invert emulsion base; (b) one or more thinners; (c) one or more emulsifiers; and (d) one or more weighting agents, wherein said operation includes running casing in a borehole.

27. Spec: A “fragile gel” as used herein is a “gel” that is easily disrupted or thinned, and that liquifies or becomes less gel-like and more liquid-like under stress, such as caused by moving the fluid, but which quickly returns to a gel when the movement or other stress is alleviated or removed, such as when circulation of the fluid is stopped, as for example when drilling is stopped.

28. The “fragileness” of the “fragile gels” of the present invention contributes to the unique and surprising behavior and advantages of the present invention.

29. While patentees are allowed to claim their inventions broadly, they must do so in a way that distinctly identifies the boundaries of their claims. The fluids of the ’832 invention may provide less resistance to shear (i.e., break more quickly) than the prior art fluids, but the degree of improved speed remains ambiguous. Thus, it is unclear whether a person of ordinary skill in the art would have interpreted this claim as having an upper bound of fragility.

30. “[I]t seems clear that the patent drafter could have provided more specifics in this case, either with quantitative metrics as to how quickly the gel must break (time to break at given conditions) and how strong the gel must be (strength at given conditions), or with sufficient examples of fragile gels of the invention to show which such fluids fell within the scope of the claims.”

31. See also . . . Young v. Lumenis Inc., 83 USPQ2d 1191 (Fed. Cir. 2007), 83 USPQ2d 1191 (Fed Cir 2007)

37. Claims for method of declawing cat using laser surgery, which require forming circumferential incision in epidermis “near the edge of the ungual crest of the claw,” are not rendered indefinite by use of term “near,” since “near,” as used in claims, is not insolubly ambiguous and does not depart from its ordinary and customary meaning of “close to or at” edge of ungual crest.

38. Descriptions and figures in specification convey understanding that phrase “near the edge of the ungual crest” means close to or at most at the distal [i.e., far] edge of the epidermis, since use of “near,”as opposed to precise numerical measurement, is appropriate in view of fact that term describes location on animal, and size of appendage and amount of skin required to be incised will vary from one animal to another based on size.

39. New Aggresiveness in Software Claims

40. Datamize v. Plumtree, 417 F.3d 1342 (Fed Cir 2005) • Federal Circuit invalidated claim to designing “aesthetically pleasing” user interface

43. 417 F.3d at 1349 “Merely understanding that “aesthetically pleasing” relates to the look and feel of interface screens, or more specifically to the aggregate layout of elements on interface screens, fails to provide one of ordinary skill in the art with any way to determine whether an interface screen is “aesthetically pleasing.”

44. Aristocrat Tech. v. Int’l Game Tech., 521 F.3d 1328 (Fed Cir. 2008) Invention allowed user to select winning combination in slot machines Held: claim including “control means” for allowing user selection, without disclosure of algorithm or details, was indefinite under section 112 par. 2

45. “1. A gaming machine having display means arranged to display a plurality of symbols in a display format having an array of n rows and m columns of symbol positions, game control means arranged to control images displayed on the display means, . . . .

46. Minimal spec • Mentions “game control means” only two times, besides the claims • Only embodiment shown is a “general purpose computer or microprocessor”

47. 521 F.3d at 1333 In cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor. The point of the requirement that the patentee disclose particular structure in the specification and that the scope of the patent claims be limited to that structure and its equivalents is to avoid pure functional claiming.

48. 521 F.3d at 1338 Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed . . . . It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a “special purpose computer programmed to perform the disclosed algorithm.”

49. See also • Finisar Corporation v. The DirectTV Group, 523 F.3d 1323 (Fed. Cir., April 18, 2008).

50. Blackboard, Inc. v. Desire2Learn, Inc.574 F.3d 1371Fed. Cir. 2009.