Euclid Chemical Co. v. Vector Corrosion Tech., 561 F.3d 1340 (Fed. Cir., 2009)
A patent assignment assigning all continuation applications was ambiguous to a previously issued continuation patent not specifically identified in the assignment.
Practice Pointers:
Most patent assignments and licenses include listed patent applications and/or issued patents and a catchall clause to include related patent applications and patents, such as “any and all divisional applications, continuations, and continuations in part…” In Euclid, the court found for an assignment that listed a specific issued patent and several specific patent applications, that the standard clause for all continuation applications is not clear as to whether the assignment covers already issued continuation patents. The court looked at the assignment clause that covered a “issued US patent” (singular) as conflicting with the catchall continuation clause thus making the assignment ambiguous as to whether the unlisted issued continuation patent is assigned. This case shows that practitioners must be careful in drafting even routine clauses, consider the facts and to be clear as to which applications and patents are to be included and excluded.
The patent in issue was the No. 6,217,742 (the "'742 CIP patent") patent that was a "continuation-in-part of application No. 09/236,731, filed on Jan. 25, 1999, now Pat. No. 6,033,553 ....". The '742 CIP patent issued on April 17, 2001—before the date of the December 20, 2001 assignment. Id. at [45].
A simple time line is:
1) Parent 553 patent issues (patent-in-suit)
2) CIP 742 patent issues
3) Assignment executed - assigns parent issued 553 patent and all continuations.. (But did not expressly include the CIP 742 patent number).
Court held the assignment of the CIP patent was ambiguous. Under Ohio state law “where a contract is ambiguous, a court may consider extrinsic evidence to ascertain the parties' intent..” The court remanded the case to the district court to determine whether the assignment, interpreted in light of the extrinsic evidence, transferred ownership of the CIP patent.
Practice tip: Make sure all issued patent numbers are included in assignments and assignment is clear. Need to carefully check even routine clauses and consider facts. Check for grammatical consistency (e.g., singular vs. plural). If a continuation application or continuation issued patent is not intended to be assigned, then write that in the assignment.
Here is the assignment (Bold added)
I, JACK BENNETT, [address], in consideration for $25,000.00 and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged do hereby sell and assign to VECTOR CORROSION TECHNOLOGIES LTD. [address] all my interest in the United States, Canada and in all other countries in and to my US, Canadian, and European applications for patents and issued U.S. patent, namely:
1. Issued U.S. Patent 6,033,553. ….. 2. US Application No. 08/839,292 filed on April 17, 1997, 3. US Application No. 08/731,248, filed on October 11, 1996 (now abandoned), 4. EPO Application No. 99122342.1, filed November 9, 1999, and 5. Canadian Application No. 2288630, filed November 8, 1999,
any and all divisional applications, continuations, and continuations in part together with the entire right, title and interest in and to said applications, and to all divisional applications, continuations, and continuations in part thereof, the right to claim priority therefrom under the International Convention, and any and all Letters Patent which may issue or be reissued for said invention to the full end of the term for which each said Letters Patent may be granted; and hereby authorize the ….
Below are relevant excepts from the opinion. (emphasis added)
When confronted with an issue of contractual interpretation, the role of a court is to give effect to the intent of the parties to the agreement. We examine the [contract] as a whole and presume that the intent of the parties is reflected in the language used in the [contract]. We look to the plain and ordinary meaning of the language used in the [contract] unless another meaning is clearly apparent from the contents of the [contract]. When the language of a written contract is clear, a court may look no further than the writing itself to find the intent of the parties. As a matter of law, a contract is unambiguous if it can be given a definite legal meaning. On the other hand, where a contract is ambiguous, a court may consider extrinsic evidence to ascertain the parties' intent.... …. We disagree with the district court that the Assignment unambiguously transferred ownership of the '742 patent to Vector. The district court was correct that the language of the Assignment purports to convey "US Patent 6,033,553" and "any and all divisional applications, continuations, and continuations in part." Euclid, slip op. at 4. The district court was also correct that the '742 patent is a continuation-in-part of the '553 patent, as the Related U.S. Application Data on the face of the '742 patent makes clear. Id. at 6; see also '742 patent at [63]. The Assignment, however, also includes language that suggests that it was not intended to effect an assignment of the '742 patent. In particular, the Assignment specifically assigns all interest in and to the inventor's "US, Canadian, and European applications for patents and issued U.S. patent." Notably, this language refers to "applications"—plural—but "issued U.S. patent"—singular. Had the assignee intended, through the assignment of "continuations in part" to assign other issued U.S. patents, it would be expected that the Assignment would have said that the inventor was assigning his "issued U.S. patents"— plural—and even recited the patent number of the issued '742 patent. At bottom, we cannot give the Assignment a "definite legal meaning." Westfield, 797 N.E.2d at 1261. Under one reasonable interpretation, the Assignment includes the '742 patent, because it issued from a continuation-in-part of the '553 patent. But under another reasonable interpretation, the Assignment excludes the '742 patent, because it was an already issued patent, not an application, at the time of the assignment. We therefore conclude that the Assignment is susceptible to at least two reasonable interpretations and is therefore ambiguous under Ohio law. See Potti, 938 F.2d at 647. Extrinsic evidence therefore should have been considered to ascertain the parties' intent. See Westfield, 797 N.E.2d at 1261. In its brief on appeal, Euclid argues that substantial extrinsic evidence supports its view that the Assignment did not include the '742 patent. Specifically, Euclid points to evidence concerning Vector's recording of the assignment of the '553 patent but not the '742 patent, the inventor's payment of maintenance fees and attempted licensing negotiations after the date of the Assignment, and the subsequent execution of a different assignment by the inventor. Vector, however, has not yet had the opportunity or the obligation to challenge Euclid's extrinsic evidence or to bring forward its own evidence of intent. We therefore remand to the district court to allow that court to determine in the first instance—either through a subsequent motion for summary judgment, or at trial— whether the Assignment, interpreted in light of relevant extrinsic evidence, transferred ownership of the '742 patent to Vector.
When confronted with an issue of contractual interpretation, the role of a court is to give effect to the intent of the parties to the agreement. We examine the [contract] as a whole and presume that the intent of the parties is reflected in the language used in the [contract]. We look to the plain and ordinary meaning of the language used in the [contract] unless another meaning is clearly apparent from the contents of the [contract]. When the language of a written contract is clear, a court may look no further than the writing itself to find the intent of the parties. As a matter of law, a contract is unambiguous if it can be given a definite legal meaning.
On the other hand, where a contract is ambiguous, a court may consider extrinsic evidence to ascertain the parties' intent....
…. We disagree with the district court that the Assignment unambiguously transferred ownership of the '742 patent to Vector. The district court was correct that the language of the Assignment purports to convey "US Patent 6,033,553" and "any and all divisional applications, continuations, and continuations in part." Euclid, slip op. at 4. The district court was also correct that the '742 patent is a continuation-in-part of the '553 patent, as the Related U.S. Application Data on the face of the '742 patent makes clear. Id. at 6; see also '742 patent at [63].
The Assignment, however, also includes language that suggests that it was not intended to effect an assignment of the '742 patent. In particular, the Assignment specifically assigns all interest in and to the inventor's "US, Canadian, and European applications for patents and issued U.S. patent." Notably, this language refers to "applications"—plural—but "issued U.S. patent"—singular. Had the assignee intended, through the assignment of "continuations in part" to assign other issued U.S. patents, it would be expected that the Assignment would have said that the inventor was assigning his "issued U.S. patents"— plural—and even recited the patent number of the issued '742 patent.
At bottom, we cannot give the Assignment a "definite legal meaning." Westfield, 797 N.E.2d at 1261. Under one reasonable interpretation, the Assignment includes the '742 patent, because it issued from a continuation-in-part of the '553 patent. But under another reasonable interpretation, the Assignment excludes the '742 patent, because it was an already issued patent, not an application, at the time of the assignment. We therefore conclude that the Assignment is susceptible to at least two reasonable interpretations and is therefore ambiguous under Ohio law. See Potti, 938 F.2d at 647. Extrinsic evidence therefore should have been considered to ascertain the parties' intent. See Westfield, 797 N.E.2d at 1261.
In its brief on appeal, Euclid argues that substantial extrinsic evidence supports its view that the Assignment did not include the '742 patent. Specifically, Euclid points to evidence concerning Vector's recording of the assignment of the '553 patent but not the '742 patent, the inventor's payment of maintenance fees and attempted licensing negotiations after the date of the Assignment, and the subsequent execution of a different assignment by the inventor. Vector, however, has not yet had the opportunity or the obligation to challenge Euclid's extrinsic evidence or to bring forward its own evidence of intent. We therefore remand to the district court to allow that court to determine in the first instance—either through a subsequent motion for summary judgment, or at trial— whether the Assignment, interpreted in light of relevant extrinsic evidence, transferred ownership of the '742 patent to Vector.
Opinion http://www.cafc.uscourts.gov/opinions/08-1170.pdf
The PUBPAT as published free claim construction dictionaries with claim term definitions from patent court cases.
On March 1, 2010, the Public Patent Foundation, Inc. ("PUBPAT") (at the Benjamin N. Cardozo School of Law) announced that Dr. David Garrod, PUBPAT's Senior Litigation Counsel, has decided to release his groundbreaking claim construction dictionaries free of charge through PUBPAT's web site. They are available for immediate download as PDF files using the following link: http://www.pubpat.org/garrodglossariesreleased.htm
There are three Glossaries of Judicial Claim constructions:
Electronics, Computer and Business Method Arts
Mechanical, Electro-Mechanical and Medical Devices Arts
Chemical, Pharmaceutical and Biotechnology Arts
“Each of the released volumes covers district and appellate court decisions in the indicated subject areas, starting with the Federal Circuit's 1995 Markman decision and running through the end of 2009. Content appears in an easy-to-read dictionary format, indexed by the exact claim language construed. Because the usefulness of any particular construction depends critically on the reason that the court adopted the construction in question (e.g., was it "plain meaning" or a definition in the patent), each entry is endnote-linked to the relevant decisional text, with the portions of the full-text that define the particular construction highlighted for easy reference.”
See Public Patent Foundation, Inc. ("PUBPAT") ‘http://www.pubpat.org/garrodglossariesreleased.htm
I found this info on the “Gray on Claims” blog
http://www.grayonclaims.com/home/2010/3/4/public-patent-foundation-releases-free-claim-construction-di.html
TRADING TECHNOLOGIES INTERNATIONAL, INC., v ESPEED, INC., 2008-1392, -1393, –1422 (Fed. Cir. Feb. 25, 2010)
One issue in TTI v Espeed was whether the provisional patent application provided support (112P1 - adequate written description) for a broader claim in the regular patent application that claimed priority back to the provisional application. The provisional application describes only one species while the regular application claimed a broader genus. “ The provisional application never refers to a “single action of a user input device,” but instead refers solely to “a single click of a computer mouse.”” Op. p. 28. The Court found the record contained substantial evidence to support the jury’s verdict that the provisional application’s written description was adequate.
The provisional application distinguished between order entries performed in a single action and multiple-step actions. “Moreover, the parties’ experts did not dispute that one of ordinary skill in the art would have known about other forms of “single action” such as a double-click or pressing a key.” Op. p. 32.
Below are relevant sections from the opinion.
Excerpts of Claim 1 of the '304 patent:
A method for displaying market information relating to and facilitating trading of a commodity ….. , the method comprising: dynamically displaying a first indicator in one of a plurality of locations in a bid display region, ……; and
A method for displaying market information relating to and facilitating trading of a commodity ….. , the method comprising:
dynamically displaying a first indicator in one of a plurality of locations in a bid display region, ……; and
in response to a selection of a particular location of the order entry region by a single action of a user input device, setting a plurality of parameters for a trade order relating to the commodity and sending the trade order to the electronic exchange.
Regarding claim interpretation, the opinion stated:
The district court construed "single action of a user input device" to mean "an action by a user within a short period of time that may comprise one or more clicks of a mouse button or other input device." Trading Techs., 2006 U.S. Dist. LEXIS 80153, at *11. In this context, the word "an action" means one user action. An action may include multiple sub-elements as long as the user views all sub-elements as one user action (e.g., double-click comprising of two single-clicks is "an action"). The invention is different from prior art inventions that required a trader to click on multiple locations before submitting the order. The district court's construction correctly sets objective boundaries by distinguishing the invention from multiple-action systems found in the prior art.
The court presents the legal standard as:
Claims enjoy the earlier filing date only if the provisional application provided adequate written description under 35 U.S.C. § 112, ¶ 1. New Railhead Mfg. v. Vermeer Mfg., 298 F.3d 1290, 1294 (Fed. Cir. 2002). The "prior application itself must describe an invention . . . in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought." Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997). Therefore, the provisional application must describe the invention in such a way that one of ordinary skill in the art "would understand that the genus that is being claimed has been invented, not just the species of a genus." Carnegie Mellon Univ. v. Hoffman-La Roche, Inc., 541 F.3d 1115, 1124 (Fed. Cir. 2008).
The court held :
Turning to the merits, the record shows substantial evidence to support the jury's verdict that the provisional application's written description was adequate. TT's expert, Craig Pirrong explained that the provisional application distinguished between order entries performed in a single action and multiple-step actions. He did not distinguish a single-click from other types of single actions. Therefore, one of ordinary skill in the art could read the provisional application to encompass any single actions.
Moreover, the parties' experts did not dispute that one of ordinary skill in the art would have known about other forms of "single action" such as a double-click or pressing a key. Considering the undisputed knowledge of those skilled in the art, disclosure of a species in this case provides sufficient written description support for a later filed claim directed to a very similar and understandable genus. Accordingly, the patents-in-suit are entitled to claim priority to the provisional application.
The patents asserted were U.S. 6,766,304 and 6,772,132.
Opinion: http://www.cafc.uscourts.gov/opinions/08-1392.pdf
The Federal Judicial Center published a “Patent Case Management Judicial Guide” that is intended to be a guide for district judges. This provides a good overview of the trial process from the judge’s point of view. Chapter 11 is a primer on patent law. The guide is free and available online here as a pdf.
The guide is described as:
A comprehensive, user-friendly, and practical judicial guide for managing patent cases. ….. In addition, patent cases often entail distinctive and difficult discovery issues, extensive use of experts, and particularly complex dispositive and pretrial motion practice. The authors surveyed federal judges and describe their approaches and best practices for these and other aspects of patent case management.
The following link is to the Federal Judicial Center publication in PDF format.
Link or download
“Patent Case Management Judicial Guide” by Peter S. Menell; Lynn Pasahow; James Pooley; Matthew Powers - 2009, 650 pages.
For more info see:
http://www.fjc.gov/public/pdf.nsf/lookup/patent01.pdf/$file/patent01.pdf
http://www.fjc.gov/
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1328659
This edition of the bi-monthly World Intellectual Property Organization (WIPO) magazine discuses international IP ligation costs.
The table of contents is below:
See http://www.wipo.int/wipo_magazine/en/2010/01/
The USPTO published a memo (dated 1/27/10) by Director Kappos suggesting that applicants can overcome 101 rejections for computer readable media claims by amending the claims to to add the limitation “non-transitory" to the media. This is for cases where specification supports a viable “non-transitory” embodiment.
Below is an excerpt from the meme (emphasis added).
A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. $ I01 by adding the limitation "non-transitory" to the claim. Cf. Animals –Patentability, 110770) Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g.,Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998). (Emphasis added.)
Here is a link to the memo. http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf
For reference below is a link to the 2008 USPTO revised written description training materials.
http://www.uspto.gov/web/menu/written.pdf
I found out about the memo from the All Things Pros blog who found it on the IP Spotlight blog.
In a change that could have a significant impact on US patent prosecution and patent quality, the USPTO implemented changes to the “count system”- the time and measurement system examiners are paid and measured on. This effects how much time an examiner will spend on a task and how much she is rewarded for an outcome.
From the press release:
The count system is the methodology for determining the amount of time in which a patent examiner is expected to complete a patent examination and the credit that is given for each stage of an examination. These changes, announced in conjunction with the Patent Office Professional Association (POPA), the union that represents patent examiners, place emphasis on complete and thorough initial examination, and are expected to decrease redundancy and encourage quicker resolution of issues in the patent application process. The new count system should result in earlier identification of patentable subject matter, which will benefit applicants while enabling the USPTO to function more efficiently. (See count system press release at http://www.uspto.gov/news/pr/2009/09_19.jsp.)
It addresses the following areas of change: Improved working conditions: The revised count system provides incentives to encourage examiners to do a high-quality first action, and shifts resources from a focus on examiner recertification to front-end quality improvements. This change in incentives will ultimately encourage examiners to dispose of applications more quickly. More time for examiners: The changes will give examiners more time overall, more time for a first action on the merits, and time for examiner-initiated interviews, while decreasing credits on requests for continued examination (RCEs) and providing consistent credits for transferred or inherited amendments. Process changes: These changes will increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems.
It addresses the following areas of change:
For an in-depth analysis see the Task Force Proposal 2009-09-30
http://www.uspto.gov/web/offices/ac/ahrpa/opa/documents/briefing_for_corps-final_draft-093009-external-jrb.pdf
Press Release : http://www.uspto.gov/news/pr/2010/10_08.jsp
The USPTO Launched the “Inventors Eye”, a new bi0monthly electronic publication. Inventors Eye is for and about America’s independent and small entity inventor community.
The Inventors Eye will cover tips on working with the USPTO; events, organizations and meetings of interest to the community; issues that impact independent and small entity inventors; and stories about successful inventors.
The Feb 2010 issues contents:
Patent ReformAn Open Letter Protect Your Innovation: Avoid ScamsBy Ronald Jaicks : Office of the Solicitor Spark of Genius: The Spiral Eye NeedleBy John Calvert : Inventors Assistance Center AdviceDo Your Homework EventsWhere Independent Inventors Meet NetworkOrganizations for Inventors
Patent ReformAn Open Letter
Protect Your Innovation: Avoid ScamsBy Ronald Jaicks : Office of the Solicitor
Spark of Genius: The Spiral Eye NeedleBy John Calvert : Inventors Assistance Center
AdviceDo Your Homework
EventsWhere Independent Inventors Meet
NetworkOrganizations for Inventors
Click here to subscribe to Inventors Eye.
See http://www.uspto.gov/inventorseye/
SEB S.B., and T-Fal v. Montgomery Ward & Co., 2009-1099, -1108, –1119 (Fed. Cir. 2010)
Section 271(a) makes it an act of infringement to “without authority make[], use[],offer[] to sell, or sell[] any patented invention, within the United States.” Op. p. 20.
Pentalapha (accused infringer) “sold these deep fryers to its three customers free on board Hong Kong or mainland China. “Free on board,” or “f.o.b.,” is a “method of shipment whereby goods are delivered at a designated location, usually a transportation depot, at which legal title and thus the risk of loss passes from seller to buyer.” Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353, 1358 n.1 (Fed. Cir. 2008).” Op. p. 4.
Pentalpha argued that the sale occurred overseas because the products were delivered to the buyers f.o.b. Hong Kong or China.
This court has “rejected the notion that simply because goods were shipped f.o.b., the location of the ‘sale’ for the purposes of § 271 must be the location from which the goods were shipped.” Lightcubes, 523 F.3d at 1370. Op. p. 21.
The court ruled that the affixing of US trademarks, US electrical fittings, US destination, and intended US retail destinations were sufficient for the jury to find that the sales were within the US.
Other than the f.o.b. terms in the invoices presented to the jury, the record shows that Pentalpha intended to sell its deep fryers directly into the United States. Pentalpha itself affixed the American trademarks of Sunbeam, Montgomery Ward, and Fingerhut to the deep fryers, and it manufactured the deep fryers with North American electrical fittings. Moreover, the invoices between Pentalpha and the three U.S. companies all In sum, this court does not perceive any fundamental error with the jury instructions in light of the record evidence. Op. p. 21.
Case involves many other interesting issues
US 4,995,312 Patent at issue: http://www.google.com/patents/about?id=XN0pAAAAEBAJ&dq=4,995,312
Opinion: http://www.cafc.uscourts.gov/opinions/09-1099.pdf
In Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282, No. 07-1400, –1406, (Fed. Cir. May 19, 2009), the Federal Circuit held that “process terms in product-by-process claims serve as limitations in determining infringement.” That is a product-by process claim is interpreted as a process claim for determining infringement and that a product-by process claim is not infringed by products made using non-claimed processes. With this decision, the court settled a long standing split in the court’s precedents. This case appears to reduce the value of product-by process claims.
The court adopted the rule from Atlantic Thermoplastics Co., Inc. v. Faytex Corp., 970 F.2d 834 (Fed. Cir. 1992) which “construed product-by-process claims as limited by the process. Id. at 846-7.” The court expressly overruled the Scripps Clinic & Research Foundation v. Genetech, Inc., 927 F.2d 1565 (Fed. Cir. 1991) holding that process terms are not considered claim limitations for determining infringement.
From a policy viewpoint, product-by process claims developed from a need to enable a patentee to claim a patentable product that could not be defined, measured or characterized other than by the process by which it is made. The court’s majority appears to think that with modern technology, that most products can be described by structure or composition and that claiming a product by it’s process is not needed and is detrimental.
The claims at issue from U.S. Patent No. 4,935,507 (the '507 patent) were: (Emphasis added)
2. Crystalline 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-vinyl-3-cephem-4-carboxylic acid (syn isomer) which is obtainable by acidifying a solution containing 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-vinyl-3-cephem-4-carboxylic acid (syn isomer) at room temperature or under warming.
3. Crystalline substance of claim 2, wherein a solution containing 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-vinyl-3-cephem-4-carboxylic acid (syn isomer) is an aqueous solution of an alkali metal salt of said compound. 4. Crystalline substance of claim 3, wherein the acidifying of the solution is carried out at the temperature from room temperature to 40.degree. C. at the pH from 1 to 4.
3. Crystalline substance of claim 2, wherein a solution containing 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-vinyl-3-cephem-4-carboxylic acid (syn isomer) is an aqueous solution of an alkali metal salt of said compound.
4. Crystalline substance of claim 3, wherein the acidifying of the solution is carried out at the temperature from room temperature to 40.degree. C. at the pH from 1 to 4.
The court held that Claim 2, “which is obtainable by” to be a product-by process claim.
The dissenting opinions raise many interesting issues.
Note: that the USPTO evaluates the patentability of product-by process claims only by the structure implied by the steps, not by the process limitations. See MPEP 2113.
The Abbott labs ruling has wide ramifications for patent practitioners, applicants, and potential infringers of product by process claim patents. Patentee’s should be try to obtain product claims and realize that process limitations in product by process claims can be avoided by potential infringers by using a different process. It is best to avoid product-by process claims unless the product can not be distinguished prior prior art using structure/composition. Applicants with pending applications should evaluate whether additional claims types or applications should be prosecuted. Parties accused of infringement of only product-by process claims can consider the process limitation and also consider changing their process to a process not claimed in the product-by process claims.
The BPAI created a new 2 prong test which conforms with the CAFC's Bilski test, for patentable subject matter under 35 USC 101 for a machine (or article of manufacture) that involves a mathematical algorithm. The Opinion issued in August 2009, but was made precedential in December 2009.
To be patentable subject matter, the claim must meet both tests:
(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)? and (2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”
and
The Board applied this test to Gutta's claims and rejected them.
Appellants invented a method, system, and article of manufacture for identifying a mean item from a group of items. The method and system separate the items into clusters, computes the variance of the cluster, and selects a mean item. The article of manufacture’s code embodied on computer readable medium also performs these steps.
Independent claims 1, 14, 19, and 20 are reproduced below:
1. A method for identifying one or more mean items for a plurality of items, J, each of the items having a symbolic value of a symbolic attribute, the method comprising:
computing a variance of the symbolic values of the plurality of items relative to the symbolic value of each of the items; and
selecting at least one mean item that has the symbolic value that minimizes the variance.
14. A system for identifying one or more mean items for a plurality of items, J, each of the items having at least one symbolic attribute having a symbolic value, the system comprising:
19. An article of manufacture for identifying one or more mean items for a plurality of items, J, each of the items having at least one symbolic attribute having a symbolic value, comprising:
a computer readable medium having computer readable [program] code embodied thereon, the computer readable program code comprising:
20. A system for identifying one or more mean items for a plurality of items, J, each of the items having at least one symbolic attribute having a symbolic value, the system comprising: means for computing a variance of the symbolic values of the plurality of items relative to the symbolic value of each of the items; and means for selecting at least one item that has the symbolic value that minimizes the variance.
35 U.S.C. § 101 (2002). “[A]n applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article” into a different state or thing. Bilski, 545 F.3d at 961; see also Benson, 409 U.S. at 70.
35 U.S.C. § 101 (2002).
“[A]n applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article” into a different state or thing. Bilski, 545 F.3d at 961; see also Benson, 409 U.S. at 70.
Applying the 1st prong - Machine Prong, the board found the method claim is not tied to any machine and therefore fails the 1st prong. Applying the 2nd prong - transformation, the board found that " the claims variance and mean are derived from abstract ideas (i.e., symbolic values), neither the variance nor the mean are physical objects or represent physical objects." Op. p. 11.
The board applied the New 2 prong test :
(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)? (2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”
(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?
(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”
Applying the 1st prong - real world use -, the board found that "claim 14 fails to recite any tangible practical application in which the mathematical algorithm is applied that result in a real-world use. " Op. p. 20
Applying the 2nd prong - limited use- , the board found the calculations of the variance and selection o f the mean are abstract ideas. Therefore the claim preempts all practical applications and fails the second prong. OP. p. 21.
The Board stated:
Since the steps recited in claim 19 are identical to the functions found in claim 14, we refer to our previous discussion of claim 14 and conclude that claim 19 similarly fails to recite the application of a mathematical algorithm to a tangible practical application that results in a real-world use. Second, using the same rationale applied to claim 14, claim 19 encompasses substantially all practical applications of the mathematical algorithm (e.g., computer applications) in substantially all fields of use. Therefore, our statutory subject matter analysis of combination claim 14 is equally applicable to sub-combination claim 19. We therefore conclude that the article of manufacture or machine recited in claim 19 is not patent-eligible under § 101.
Since the steps recited in claim 19 are identical to the functions found in claim 14, we refer to our previous discussion of claim 14 and conclude that claim 19 similarly fails to recite the application of a mathematical algorithm to a tangible practical application that results in a real-world use.
Second, using the same rationale applied to claim 14, claim 19 encompasses substantially all practical applications of the mathematical algorithm (e.g., computer applications) in substantially all fields of use. Therefore, our statutory subject matter analysis of combination claim 14 is equally applicable to sub-combination claim 19. We therefore conclude that the article of manufacture or machine recited in claim 19 is not patent-eligible under § 101.
The board applied 112P6, 112P2 and several Fed. Cases Including Aristocrat v. ITG 521 F.3d 1328 (Fed. Cir 2008), to Claim 20 system claim with Mean-Plus-Function elements. The board found the claim indefinite because no structure was disclosed to program a computer to perform the function.
New BPAI 2 prong test which conforms with the CAFC's Bilski test, for patentable subject matter under 35 USC 101 for a machine (or article of manufacture) that involves a mathematical algorithm.
To be valid, the claim must meet both tests:
§ Ex parte Catlin, Appeal No. 2007-3072 (BPAI February 3, 2009)
Rule of Law: Means plus function limitation is indefinite where specification fails to disclose algorithm for programming general purpose computer to perform specified function. 35 USC 112P6, 35 USC 112P2, Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).
The second precedential opinion in 2009 involving software related Means-Plus-Function claims with insufficient algorithm/structure (112P6). See Ex Parte Rodriguez. The case cites the following Fed. Cir. cases involving 112P6: Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), Finisar Corp. v. DirecTVGroup, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008) and Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008).
The BPAI raised new grounds of rejection for indefiniteness 112P2 for claims with Means-Plus-Function element (112P6) where no algorithm was disclosed in the specification.
The second precedential opinion in 2009 involving software related Means-Plus-Function claims with insufficient algorithm/structure (112P6). See Ex Parte Rodriguez.
Representative claim 1
1. A method for implementing an on-line incentive system, said method comprising the steps of:
providing, at a merchant's web site, means for a consumer to participate in an earning activity to earn value from a merchant; and transferring value from said merchant to said consumer for participation in said earning activity, if said consumer qualifies, without re-directing said consumer away from said merchant's web site, whereby said consumer's focus of activity remains at said merchant's web site.
Analysis: The Board found the “ means for” was the merchant's web site and incentive program. The Board found that the spec provide no algorithm for the function in the claims:
It is clear from the claims that the erchant's web site is merely the location, through which the software that enables the consumer to participate in the earning activity and earn value, is provided. The Specification does not provide, however, an algorithm by which the consumer is able to participate in an earning activity and earn value (Fact 2). Op p. 10-11.
It is clear from the claims that the erchant's web site is merely the location, through which the software that enables the consumer to participate in the earning activity and earn value, is provided. The Specification does not provide, however, an algorithm by which the consumer is able to participate in an earning activity and earn value (Fact 2).
Op p. 10-11.
The board also found only examples of an “incentive program” but no algorithms.
The court held:
The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the functions recited in the means elements contained in the first step of claims 1, 9, and 20 so as to render the claims definite. Accordingly, claims 1, 9, and 20, and claims 2-8, 11- 19, and 2 1-25 depending therefrom, are unpatentable under 5 112, second paragraph, as indefinite. Aristocrat, 521 F.3d at 35 U.S.C. 1333.
TIP: This case illustrates the importance of disclosing algorithm in software related Means-plus-function (MPF) claims. Also, the importance of including a variety of claim types with include non-MPF and MPF elements.
Related links
http://www.wipo.int/pctdb/images4/PCT-PAGES/2000/152000/00021008/00021008.pdf
Definiteness (112P2), MPF 112P6, software
In the precedential opinion Ex parte Rodriguez, Appeal No. 2008-000693 (BPAI October 1, 2009), the USPTO’s BPIA found claims invalid under 35 USC 112P2 indefiniteness by applying the following significant rules:
Under 35 USC 112P6 and 112P2, Means-Plus-Function (MPF) software apparatus claims require an Algorithm (to program the computer to perform the function claimed) and Apparatus claims for a computer programmed to perform a function, that do not contain sufficient algorithm are in interpreted and analyzed as Means-Plus Function (MPF) claims under 35 USC 112P6.
Rodriguez’s Patent application involved programs for computer chip and circuit design and layout. (Title: Automated random verification of complex and structurally-variable systems). The application included 4 types of claims: apparatus (non-MPF), MPF apparatus, method and computer readable media. The Spec. describes the flowcharts that map to claim elements (MPF and non-MPF). The spec also states that “appropriate software coding can readily be prepared by skill programmers”.
Apparatus claim 1:
1. An apparatus comprising: •a system configuration generator configured to generate a random system configuration file of a structurally variable and complex system; •a system builder configured to (i) build a system level netlist and (ii) generate system parameters in response to said random system configuration file; and •a simulation verification environment configured to verify said structurally variable and complex system in response to said system level netlist, wherein said simulation verification environment is configured to provide automatic random verification of said structurally variable and complex system in response to said random system configuration file. * NOTE: claim maps to fig 1 flow chart
1. An apparatus comprising:
•a system configuration generator configured to generate a random system configuration file of a structurally variable and complex system;
•a system builder configured to (i) build a system level netlist and (ii) generate system parameters in response to said random system configuration file; and
•a simulation verification environment configured to verify said structurally variable and complex system in response to said system level netlist, wherein said simulation verification environment is configured to provide automatic random verification of said structurally variable and complex system in response to said random system configuration file.
* NOTE: claim maps to fig 1 flow chart
Means-Plus-Function patent claim 10 was like Claim 1 with “means for” replacing – configured to—.
Method claim 11:
11. A method for automated random verification of structurally variable and complex systems, comprising the steps of: (A) generating a random system configuration file of said system; (B) generating one or more parameters of said system in response to said random system configuration file; (C) generating a system level netlist of said system in response to said random system configuration file; (D) verifying one or more target modules with said system in response to said system level netlist; and (E) automatically and randomly adjusting step (D) in response to said random system configuration file.
11. A method for automated random verification of structurally variable and complex systems, comprising the steps of:
(A) generating a random system configuration file of said system;
(B) generating one or more parameters of said system in response to said random system configuration file;
(C) generating a system level netlist of said system in response to said random system configuration file;
(D) verifying one or more target modules with said system in response to said system level netlist; and
(E) automatically and randomly adjusting step (D) in response to said random system configuration file.
“configured for” construed as 112P6 Means-Plus-function element - For apparatus claim 1, the board found that the 112P6 applied to apparatus claims (e.g., Claim 1) that did not used “mean for” language because the claim element recites a function without sufficient structure to perform the function. Op. p. 14.
•Board looked at “system configuration generator”… “system builder” in “configured for” claims (C1)– to see whether they had any structure
–General and subject specific dictionaries and Prior art patents but found no structure that supports the claimed functions
–Spec also no description to inform POSITA the meaning of terms.
•Ruling – claim elements are verbal constructs not recognized as the name of a structure
Therefore the Claims using “configured for” are MPF.
Means-plus-function claims rejected because no algorithm in Spec. - The BPAI examined Claims 1 and 10 (4 M+F elements) and found no corresponding algorithms.
In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to provide automated random verification of complex and structurally variable systems. .. •Similar to the "appropriate programming" discussed in Aristocrat, 521 F.3d at 1334, Appellants merely indicate that "[a]ppropriate software coding can readily be prepared by skilled programmers" (FF 12).
In particular, the Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to provide automated random verification of complex and structurally variable systems. ..
•Similar to the "appropriate programming" discussed in Aristocrat, 521 F.3d at 1334, Appellants merely indicate that "[a]ppropriate software coding can readily be prepared by skilled programmers" (FF 12).
The board cited Aristocrat to note that “[T]he corresponding structure for a 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Board cited an example in Aristocrat, that a mere reference to using "appropriate programming" imposed no limitation whatever on the structure corresponding to the functions. Aristocrat v. IGT, 521 F.3d 1328, (2007-1419) (Fed. Cir. 2008) is a recent leading case on Mean-plus-function claims in software programs implemented on processors/apparatus.
The Board found 4 Means-plus-function elements in Claims 1 and 10 and also found no algorithms in the spec to support the MPF functions. Therefore the Board held the claims invalid under 112P2 for being indefinite.
112 P2 – lack of Enablement - The BPIA also rejected the Method claims and the computer readable media claim (that depended from the parent method claim 11 were rejected under the Wand test for lack of enablement for undue experimentation. An over simplification of the reasoning is that the claims were so broad and the spec gave no examples, the board found that it would take too much experimentation.
Rodriguez – Conclusions for Means-plus-Function claims involving software
This BPAI precedential decision puts applicants on notice that for apparatus claims including software the BPAI intends to:
• Apply Aristocrat’s holding for MPF claims for 112 P2 indefiniteness and
•Review purely functional claim elements to see if they are MPF claims under 112P6 and comply with 112 P1 enablement and 112P2 definiteness.
A lesson is that applicants with Means-plus-function claims should provide sufficient algorithm.
The USPTO posted the announcement below
Wyeth v. Kappos On January 7, 2010, the Federal Circuit issued a decision in Wyeth v. Kappos, No. 2009-1120, regarding the calculation of patent term adjustments under 35 U.S.C. 154(b). The Federal Circuit’s decision rejects the USPTO’s interpretation of the “overlap” limitation in Section 154(b)(2)(A). The Solicitor General will determine whether to seek further review of this decision. Pending that determination, the USPTO is in the process of changing the manner it will calculate patent term adjustments under Section 154(b) to conform with the Federal Circuit’s decision. Applicants and Patent Owners dissatisfied with a patent term adjustment determination by the agency are reminded of the requirement to seek review of that determination within 180 days of patent issuance and the time periods set in the implementing regulations. See 35 USC 154(b)(4) and 37 CFR 1.705.
On January 7, 2010, the Federal Circuit issued a decision in Wyeth v. Kappos, No. 2009-1120, regarding the calculation of patent term adjustments under 35 U.S.C. 154(b). The Federal Circuit’s decision rejects the USPTO’s interpretation of the “overlap” limitation in Section 154(b)(2)(A).
emphasis added
http://www.uspto.gov/patents/announce/wyeth_v_kappos.jsp
Note that the Justice department will determine whether to appeal.
*** Also, the USPTO reminded Patent owners that you have 180 days after issue to seek a review to see if you are entitled to additional PTE.
Today, about 50% of US patent granted are eligible for patent term extension (PTE). However, most patent applications expire before their 20 year life for non-payment of maintenance fees. In certain industries, such as pharmaceutical, patents are very valuable at the end of their life and days can mean millions of dollars of revenue.
Link to Wyeth decision.
www.cafc.uscourts.gov/opinions/09-1120.pdf