What do Contingent Fee Lawyers Look for When Considering Specification Based Defenses?
As discussed in my prior post, What do Contingent Fee Lawyers Look for When Considering Validity During Due Diligence?, patent lawyers must consider the question of specification based defenses under 35 USC 112 when evaluating a case for contingent fee representation. This is because a patent claim is invalid if it is not supported and enabled by the disclosure.
Patent owners looking for contingent fee representation may stretch the limits of their disclosure with overly specific narrow claims or write very broad claims to maximize infringement arguments. However, in both cases, the claims may become vulnerable for not being supported or enabled by the original disclosure. Furthermore, the use of functional claim language and the invocation of "means plus function" language in an attempt to write ambiguous or broad claims will cause additional issues that make the case difficult to take on a contingent fee basis.
The best contingent fee case will have many issued Patent claims, but among them, there should be a narrowly crafted claim with clear language that corresponds directly with the alleged infringement. The best "contingent fee" claims will also be unquestionably supported and enabled by the specification and be free of "means plus function" language.
35 USC 112(a): The Written Description and Enablement of the Invention. The written description requirement and enablement requirements are separate and distinct. See, e.g., Koito Mfg. v. Turn-Key Tech., 381 F3d 1142 (discussing enablement and written description separately).
"To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. … An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention." MPEP 2163. The originally filed claims are part of the specification and therefore may be the claim but also the enabling disclosure for the claim. Id. However, to the extent claims are added in a continuation after the original filing, they must be supported by the initial filing.
For enablement, the invention defined by the claims of the patent must be described in the specification with enough specificity and detail to enable a person of ordinary skill in the art to make and use the invention. See MPEP 2164. The initial disclosure does not need to be so detailed as to “enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338, 68 USPQ2d 1940, 1944 (Fed. Cir. 2003). However, the written description must enable a person of ordinary skill in the art at the time of the invention to make and use the claimed invention without "undue experimentation." See MPEP 2164.01. "The fact that experimentation may be complex does not necessarily make it undue if the art typically engages in such experimentation." Id. Factors for determining whether "experimentation" is "undue" are discussed by the Federal Circuit in the case In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). If this analysis becomes relevant during the consideration of a matter, it is likely not well suited for a contingent fee arrangement.
Furthermore, with respect to computer-implemented inventions, one should also consider the USPTO's recent guidance on "Examining Computer-Implemented Functional Claim Limitation for Compliance with 35 U.S.C. 112." ("Jan. 2019 112 Guidance"). As noted in the guidance, one issue that frequently arises with claims to computer-implemented inventions is that the claims and specification may appear to merely state that a computer operates to achieve a desired result without specifying how that desired result is achieved. In such instances, there will be arguments and a possibility that the claim is invalid for failure to meet the written description and enablement requirements.
The USPTO's Jan. 2019 112 Guidance cites Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671 (Fed. Cir. 2015). In that case, the Federal Circuit emphasized that “[t]he written description requirement is not met if the specification merely describes a ‘desired result.’” According to the Jan. 2019 112 Guidance:
In order to satisfy the written description requirement set forth in 35 U.S.C. § 112(a), the specification must describe the claimed invention in sufficient detail such that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing. For instance, the specification must provide a sufficient description of an invention, not an indication of a result that one might achieve. The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Information that is well known in the art need not be described in detail in the specification. However, sufficient information must be provided to show that the inventor had possession of the invention as claimed. See MPEP § 2163, subsection II(A)(2).
Id. at 16. When evaluating computer-implemented software-related claims for validity during due diligence, the lawyer should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. The Jan. 2019 112 Guidance states:
It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682-83. If the specification does not provide a disclosure of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result, a rejection under 35 U.S.C. § 112(a) for lack of written description must be made. See MPEP § 2161.01, subsection I.
Id. at 19. As to enablement, the specification does not need to disclose everything necessary to practice the invention and does not need to spell out every possible combination of components for every claim that is ultimately filed. Id. at 21. However, one cannot enable the novel aspects of an invention by later relying on knowledge of a person of skill in the art at the time of the invention. Id.
Therefore, when evaluating a claim for a contingent fee matter with respect to the written description and enablement requirement, there should be little question as to whether the inventor had possession of the claimed invention at the time of filing. Furthermore, for computer-implemented claims, unless a claim element is known in the art and not a novel feature of the invention, there should be clear support (preferably in the form of textual process description, flow chart, or algorithm) for any claim limitations that may be described as functional.
35 USC 112(b): The Inventor Must Particularly Point out and Distinctly Claim the Invention. The MPEP describes the subjective and objective requirements of 35 USC 112(b) in Section 2171 and Section 2173. In short, the claims must be directed to what an inventor believes the invention to be (a subjective requirement based on the inventor's mindset), and the claims must be drafted to define the metes and bounds of the subject matter (an objective requirement because it "is evaluated in the context of whether the scope of the claim is clear to a hypothetical person possessing the ordinary level of skill in the pertinent art."). See MPEP 2171.
The MPEP further reminds patent applicants of their ability to distinctly claim their invention during prosecution to remove any ambiguity:
During prosecution, the applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. The claim places the public on notice of the scope of the patentee’s right to exclude. See, e.g., Johnson & Johnston Assoc. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1052, 62 USPQ2d 1225, 1228 (Fed. Cir. 2002) (en banc). As the Federal Circuit stated in Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008):
We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.
A decision on whether a claim is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. … [I]t is important to analyze claim terms in view of the application’s specification from the perspective of those skilled in the relevant art since a particular term used in one patent or application may not have the same meaning when used in a different application. Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1318, 74 USPQ2d 1184, 1188 (Fed. Cir. 2005).
See MPEP 2173. Therefore, the best possible claims for a contingent fee matter are clearly written with unambiguous language that is supported and enabled by the specification. Given that the patent drafter is in the best position to resolve any issues with ambiguity, the importance of continuation applications is again emphasized. With a continuation application pending, a patent owner has the opportunity to continually fix issues that arise regarding ambiguity with claims.
35 USC 112(f): Means Plus Function Limitations. Avoid claims that contain "means plus function" language (e.g., "means for computing a threshold value") in contingent fee patent matters. A claim limitation is presumed to invoke 35 USC 112(f) if it explicitly uses the term "means" and includes functional language. See, e.g., Jan. 2019 112 Guidance at 6. This presumption is overcome if the claim language also contains structure required to perform the recited function. Id. A claim that does not use the word "means" will trigger the presumption that 35 USC 112(f) does not apply; however, if the language does not contain specific structure sufficient to perform the recited function then the claim may still be found to be a "means plus function" claim. Id. at 7.
"Means plus function" claims under 35 USC 112(f) are subject to additional analysis and presumptions to determine claim scope. The additional analysis will cost the lawyer time and expense with the risk that the claim scope is more limited than if it were not considered to be a "means plus function" claim. The broadest reasonable interpretation (BRI) of a "means plus function" claim "is the structure, material, or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure, material or act." Id. at 9 (citing MPEP 2181). On the other hand, the BRI given to a non-"means plus function" claim "is its plain meaning unless limited by a special definition or disavowal of claim scope set forth in the specification which must be clear and unmistakable." Id. at 10.
In short, a contingent fee matter should not rely on claims subject to 35 USC 112(f). These types of claims can increase the risk and cost for a patent owner during enforcement.
What about the best mode requirement? In the past, there was also a "best mode" requirement. In order for a patent to be valid, the written description had to contain the inventor's preferred embodiment of the invention at the time the patent was filed. However, this requirement for validity was removed in the America Invents Act. See MPEP 2165. Accordingly, this is no longer a concern for evaluating a potential contingent fee matter.
Conclusion. Specification-based defenses must be considered during the due diligence process. This is especially important for computer-implemented inventions in light of the USPTO's Jan. 2019 Guidance. For efficiency, the analysis should start with and focus on "the best" contingent fee claims which should be a narrowly crafted claim with clear language. These claims should be unquestionably supported and enabled by the specification and be free of "means plus function" language.
In the next post, I will discuss claim support charts, a tool that can be used to analyze whether a claim is supported by the original specification. In addition, the claims should clearly correspond to the alleged infringement. In later posts, we will build on the claim support chart to create a claim infringement chart to evaluate the quality of the infringement case.