In almost every U.S. patent suit, the patentee’s
counsel considers how the case could have been facilitated had the patent at
issue been drafted and prosecuted differently.
These
considerations demonstrate that patents should be drafted and prosecuted
with an eye toward the possibility of litigation. There have been several
landmark decisions in patent cases that directly impact patent prosecution.
This article analyzes some of those decisions in chronological order to provide
suggestions for a patent prosecutor in drafting or prosecuting a patent
application.
·
The term
“invention” should be cautiously used in the description section of the
specification and during prosecution.
The implementation protected
by a patent is set forth in the claims. Prosecutors have traditionally
used the term “invention” in the specification and during prosecution to
highlight aspects of the claimed implementation. In 2007, the Federal
Circuit, however, noted in Verizon v. Vonage that “[w]hen a patent … describes the features of the present
invention as a whole, this description limits the scope of the invention.”
As the scope of the patent is well understood to be
defined by the claims, this Federal Circuit ruling indicates that the use of
the term “invention,” even when used in the specification or during
prosecution, can narrow the scope of the claims. To avoid the issue of
whether each disclosed “invention” limits the claims during a possible
infringement suit, prosecutors should typically avoid use of the tem
“invention” throughout drafting and prosecution.
·
The path of
attaining an end result should be described in the specification.
Subsequently, in 2010, the
Federal Circuit ruled in Ariad v. Lilly that: (a) 35 U.S.C. §112 requires the written description requirement
in that section to be separate from the enablement requirement therein, and (b)
the description in the patent application satisfies the written description
requirement when “the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” The Court indicated that a
patent that merely describes a desired outcome instead of showing to a skilled
artisan how that outcome can be achieved does not satisfy the written
description requirement.
This decision highlights the importance of presenting
in the application the path taken to reach an outcome instead of merely
presenting the outcome. While drafting applications in the biotechnology
arena, prosecutors may benefit by not only mentioning, for example, molecules
capable of performing a functionality but also supporting those claims in the
specification with examples, which can be working or “prophetic,” of performing
that functionality or supporting those claims with a description of how the
claimed molecules are synthesized to perform the functionality. This
holding is extendible to other areas as well.
For instance, in drafting
applications in the software space, prosecutors should consider not only
mentioning, for example, a black-box computer configured to achieve an end result,
as approved in some traditional patents, but also additionally specifying how
that black-box functions to attain the end result.
·
The claimed
invention should be sufficiently described in the application to teach a layman
how to reproduce that invention.
On June 2, 2014, the U.S.
Supreme Court held in Nautilus v. Biosig that “a patent is invalid for indefiniteness if its 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 Court also indicated that “a patent must be
precise enough to afford clear notice of what is claimed, thereby ‘appris[ing]
the public of what is still open to them.’” This is the evenhanded result
because a patent provides a patentee with monopoly over a claimed territory;
this monopoly is a property right; and “like any property right, its boundaries
should be clear” (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.).
In light of this ruling, prosecutors should describe
the claimed invention in sufficient detail in the specification to teach a
layman how to reproduce the claimed invention. For example, in an
application directed to an engine, prosecutors should consider disclosing all
aspects of the engine, including those well understood by a skilled artisan.
Even though the legal test for indefiniteness does not require that a layman be
able to reproduce the invention—the test only requires that one of ordinary
skill in the art can reproduce it—having this layman constraint is favorable
because enabling a layman to reproduce the invention ensures that a skilled
artisan can reproduce it as well. This can prevent a party trying to
invalidate the patent from successfully asserting that a skilled artisan has a
low level of skill and thus cannot reproduce the claimed invention.
·
Business methods
performed by computing systems should be described with a detailed level of
computational granularity.
Subsequently, on June 19,
2014, the U.S. Supreme Court ruled in Alice v. CLS Bank that a claim is invalid when it is: (1) directed to patent-ineligible
subject matter such as a law of nature, a natural phenomenon, or an abstract
idea, and (2) fails to recite something significantly more that can transform
the patent-ineligible concept to a patent-eligible concept. Notably, the
Court stated that a “mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.”
The disputed patent in Alice was directed to intermediated settlement,
which the Court deemed as abstract for being “a fundamental economic practice”
(quoting Bilski v. Kappos).
This ruling has perplexed many, because: (a) although the Court
considered fundamental economic practice to be an abstract concept, the Court
did not provide an exhaustive list of all areas that should be deemed abstract;
and (b) the Court did not provide clear details on what should be considered
“significantly more.” To address these two issues, the U.S.
Patent and
Trademark Office (“PTO”) published several examination guidance and
training documents with
examples of abstract concepts, non-abstract concepts, and limitations that
qualify as “significantly more.” Despite the PTO’s efforts, in many
instances PTO examiners and applicants still disagree as to whether pending
claims satisfy the above-referred limitations.
To avoid such disagreements, prosecutors drafting
applications directed to business methods can benefit by presenting
implementations with a detailed level of computational granularity. The
prosecutors can elucidate on, for example, structural details of computational
architecture, architectural components involved, distinct manners in which
those components function, and how and why those components perform in the
distinct manners. These details can enable the prosecutor to argue that
these details describe improvements to the functioning of the computer (which
is one of the limitations qualifying the subject matter as “significantly
more”), thereby rendering the claimed concept as “significantly more” and thus
patent-eligible even if the claim is assumed by the PTO examiner to be
abstract.
·
Claims should be
drafted from the perspective of a single actor (e.g., a computing
server) rather than multiple actors (e.g., a computing server and a
third party).
In August 2015, the Federal
Circuit ruled in Akamai v. Limelight that an alleged infringer may infringe even where a step recited in
the claim is employed by a third party, such as a customer of the alleged
infringer. This ruling was a reversal of the Court’s previous decision where the Court had found that the alleged infringer did not infringe
when one step of the claim was performed by the customer. The Court
reversed its judgment because evidence showed that “[the alleged infringer]’s
customers do not merely take [the alleged infringer]’s guidance and act
independently on their own. Rather, [the alleged infringer] establishes
the manner and timing of its customers’ performance so that customers can only
avail themselves of the service upon their performance of the method steps.”
A patent may therefore be infringed by an alleged
infringer even where a third party associated with that alleged infringer
performs some claimed steps, but only when the third party is under the alleged
infringer’s guidance. A prosecutor should accordingly not include in the
claims a step performed by a party not under the patentee’s guidance. A
more risk-averse prosecution strategy is to present each claim from the perspective
of a single actor characterizing the tangible element (for example, a
processor) intended to be protected by the patentee, thereby eliminating the
concern of whether the party performing a claimed step is under the patentee’s
guidance.
·
Conclusion
The suggestions above can help a prosecutor draft and
prosecute applications that, once patented, are strong enforcement weapons and,
at the same time, present a reduced risk of being successfully challenged for
invalidity.
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