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.
David Kappos announced on his public Blog, (March 30,2010) that only the Chief Judge and his staff will conduct a compliance review of appeal briefs at the time of filing. This new process eliminates 2 layers of review; the examiner and the Patent Appeal Center. This should reduce processing time and yield more uniform decisions on formalities compliance.
To further reduce the number of noncompliant appeal briefs, the Chief Judge has posted on the USPTO website the “Top Eight Reasons Appeal Briefs are Non-Compliant”—which applicants should read closely to avoid the common mistakes that result in defective briefs and delays.
Blog post is here http://www.uspto.gov/blog/director/entry/streamlining_the_appeals_process_and
Ariad Pharmaceuticals, Inc. v. Eli Lilly (Fed. Cir. March 22, 2010) (En Banc Decision)
The Federal Circuit reaffirmed that § 112, first paragraph, contains a written description requirement separate from enablement. The court reversed the district court’s denial of JMOL and held the asserted claims of the ’516 patent invalid for failure to meet the statutory written description requirement.
Opinion: www.cafc.uscourts.gov/opinions/08-1248.pdf
patent in suit http://www.google.com/patents?vid=USPAT6410516
Overview from the opinion:
Ariad Pharmaceuticals, Inc., et al, Massachusetts Institute of Technology, theWhitehead Institute for Biomedical Research, and the President and Fellows of HarvardCollege (collectively, “Ariad”) brought suit against Eli Lilly & Company (“Lilly”) in theUnited States District Court for the District of Massachusetts, alleging infringement ofU.S. Patent 6,410,516 (“the ’516 patent”). After trial, at which a jury found infringement,but found none of the asserted claims invalid, a panel of this court reversed the districtcourt’s denial of Lilly’s motion for judgment as a matter of law (“JMOL”) and held theasserted claims invalid for lack of written description. Ariad Pharms., Inc. v. Eli Lilly &Co., 560 F.3d 1366 (Fed. Cir. 2009).Ariad petitioned for rehearing en banc, challenging this court’s interpretation of35 U.S.C. § 112, first paragraph, as containing a separate written descriptionrequirement. Because of the importance of the issue, we granted Ariad’s petition anddirected the parties to address whether § 112, first paragraph, contains a writtendescription requirement separate from the enablement requirement and, if so, the scopeand purpose of that requirement. We now reaffirm that § 112, first paragraph, containsa written description requirement separate from enablement, and we again reverse thedistrict court’s denial of JMOL and hold the asserted claims of the ’516 patent invalid forfailure to meet the statutory written description requirement.
Below are some sections of the opinion.
The asserted claims, rewritten to include the claims fromwhich they depend, are as follows:
80. [A method for modifying effects of external influences on a eukaryoticcell, which external influences induce NF-κB-mediated intracellularsignaling, the method comprising altering NF-κB activity in the cells suchthat NF-κB-mediated effects of external influences are modified, whereinNF-κB activity in the cell is reduced] wherein reducing NF-κB activitycomprises reducing binding of NF-κB to NF-κB recognition sites on geneswhich are transcriptionally regulated by NF-κB. 95. [A method for reducing, in eukaryotic cells, the level of expression ofgenes which are activated by extracellular influences which induce NF-κB-mediated intracellular signaling, the method comprising reducing NF-κBactivity in the cells such that expression of said genes is reduced], carried 144. [A method for reducing bacterial lipopolysaccharide-inducedexpression of cytokines in mammalian cells, which method comprisesreducing NF-κB activity in the cells so as to reduce bacteriallipopolysaccharide-induced expression of said cytokines in the cells]wherein reducing NF-κB activity comprises reducing binding of NF-κB toNF-κB recognition sites on genes which are transcriptionally regulated byNF-κB. 145. [A method for reducing bacterial lipopolysaccharide-inducedexpression of cytokines in mammalian cells, which method comprisesreducing NF-κB activity in the cells so as to reduce bacteriallipopolysaccharide-induced expression of said cytokines in the cells],carried out on human cells.
80. [A method for modifying effects of external influences on a eukaryoticcell, which external influences induce NF-κB-mediated intracellularsignaling, the method comprising altering NF-κB activity in the cells suchthat NF-κB-mediated effects of external influences are modified, whereinNF-κB activity in the cell is reduced] wherein reducing NF-κB activitycomprises reducing binding of NF-κB to NF-κB recognition sites on geneswhich are transcriptionally regulated by NF-κB.
95. [A method for reducing, in eukaryotic cells, the level of expression ofgenes which are activated by extracellular influences which induce NF-κB-mediated intracellular signaling, the method comprising reducing NF-κBactivity in the cells such that expression of said genes is reduced], carried
144. [A method for reducing bacterial lipopolysaccharide-inducedexpression of cytokines in mammalian cells, which method comprisesreducing NF-κB activity in the cells so as to reduce bacteriallipopolysaccharide-induced expression of said cytokines in the cells]wherein reducing NF-κB activity comprises reducing binding of NF-κB toNF-κB recognition sites on genes which are transcriptionally regulated byNF-κB.
145. [A method for reducing bacterial lipopolysaccharide-inducedexpression of cytokines in mammalian cells, which method comprisesreducing NF-κB activity in the cells so as to reduce bacteriallipopolysaccharide-induced expression of said cytokines in the cells],carried out on human cells.
The claims are thus genus claims, encompassing the use of all substances that achievethe desired result of reducing the binding of NF-κB to NF-κB recognition sites.Furthermore, the claims, although amended during prosecution, use language thatcorresponds to language present in the priority application. Specifically, the assertedclaims recite methods of reducing NF-κB activity, and more specifically reducing bindingof NF-κB to NF-κB recognition sites, in cells in response to external influences likebacterial lipopolysaccharides. The specification filed on April 21, 1989, similarly recitesthe desired goal of reducing NF-κB activity and binding to NF-κB recognition sites incells in response to such external influences. See ’516 patent col.3 l.59–col.4 l.19;col.31 l.65–col.32 l.11; see also id. at col.2 ll.54-59. The specification also hypothesizesthree types of molecules with the potential to reduce NF-кB activity in cells: decoy,dominantly interfering, and specific inhibitor molecules. Id. at col.37 l.43–col.38 l.22.
The Court stated the following with respect to whether originally filed claims met the written description requirement:
Although many original claims will satisfy the written description requirement, certain claims may not. For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus. Recognizing this, we held in Eli Lilly that an adequate written description of aclaimed genus requires more than a generic statement of an invention’s boundaries.119 F.3d at 1568. The patent at issue in Eli Lilly claimed a broad genus of cDNAspurporting to encode many different insulin molecules, and we held that its genericclaim language to “vertebrate insulin cDNA” or “mammalian insulin cDNA” failed todescribe the claimed genus because it did not distinguish the genus from othermaterials in any way except by function, i.e., by what the genes do, and thus provided“only a definition of a useful result rather than a definition of what achieves that result.”Id.We held that a sufficient description of a genus instead requires the disclosure ofeither a representative number of species falling within the scope of the genus orstructural features common to the members of the genus so that one of skill in the artcan “visualize or recognize” the members of the genus. Id. at 1568-69. We explainedthat an adequate written description requires a precise definition, such as by structure,formula, chemical name, physical properties, or other properties, of species fallingwithin the genus sufficient to distinguish the genus from other materials. Id. at 1568(quoting Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993)). We have also held thatfunctional claim language can meet the written description requirement when the art hasestablished a correlation between structure and function. See Enzo, 323 F.3d at 964(quoting 66 Fed. Reg. 1099 (Jan. 5, 2001)). But merely drawing a fence around theouter limits of a purported genus is not an adequate substitute for describing a variety ofmaterials constituting the genus and showing that one has invented a genus and notjust a species.
Although many original claims will satisfy the written description requirement, certain claims may not. For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.
Recognizing this, we held in Eli Lilly that an adequate written description of aclaimed genus requires more than a generic statement of an invention’s boundaries.119 F.3d at 1568. The patent at issue in Eli Lilly claimed a broad genus of cDNAspurporting to encode many different insulin molecules, and we held that its genericclaim language to “vertebrate insulin cDNA” or “mammalian insulin cDNA” failed todescribe the claimed genus because it did not distinguish the genus from othermaterials in any way except by function, i.e., by what the genes do, and thus provided“only a definition of a useful result rather than a definition of what achieves that result.”Id.We held that a sufficient description of a genus instead requires the disclosure ofeither a representative number of species falling within the scope of the genus orstructural features common to the members of the genus so that one of skill in the artcan “visualize or recognize” the members of the genus. Id. at 1568-69. We explainedthat an adequate written description requires a precise definition, such as by structure,formula, chemical name, physical properties, or other properties, of species fallingwithin the genus sufficient to distinguish the genus from other materials. Id. at 1568(quoting Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993)). We have also held thatfunctional claim language can meet the written description requirement when the art hasestablished a correlation between structure and function. See Enzo, 323 F.3d at 964(quoting 66 Fed. Reg. 1099 (Jan. 5, 2001)). But merely drawing a fence around theouter limits of a purported genus is not an adequate substitute for describing a variety ofmaterials constituting the genus and showing that one has invented a genus and notjust a species.
Slip. Op. at 20 -21.
Written Description standard:
Since its inception, this court has consistently held that § 112, first paragraph,contains a written description requirement separate from enablement, and we havearticulated a “fairly uniform standard,” which we now affirm. Vas-Cath Inc. v. Mahurkar,935 F.2d 1555, 1562-63 (Fed. Cir. 1991). Specifically, the description must “clearlyallow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Id. at 1563 (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). Inother words, the test for sufficiency is whether the disclosure of the application reliedupon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Id. (quoting Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)); see also In re Kaslow, 707 F.2d1366, 1375 (Fed. Cir. 1983).
Op at 23. (Bold added)
Standard for Written description: “possession as shown in the disclosure” Op. at 24.
Thus, “possession as shown in the disclosure” is a more completeformulation. Yet whatever the specific articulation, the test requires an objective inquiryinto the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.
Guidance for meeting the written description requirement:
There are, however, a few broad principles that hold true across all cases. Wehave made clear that the written description requirement does not demand eitherexamples or an actual reduction to practice; a constructive reduction to practice that in adefinite way identifies the claimed invention can satisfy the written descriptionrequirement. Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366-67 (Fed. Cir. 2006).Conversely, we have repeatedly stated that actual “possession” or reduction to practiceoutside of the specification is not enough. Rather, as stated above, it is the specification itself that must demonstrate possession. requirement does not demand any particular form of disclosure, Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997).
Op at 25. (Bold added)
No “Super enablement” standard for Chemical and Biotech. Op. at 26
The court evaluated the patent for compliance to the written description:
In accordance with Rochester, the ’516 patent must adequately describe theclaimed methods for reducing NF-κB activity, including adequate description of themolecules that Ariad admits are necessary to perform the methods. The specification ofthe ’516 patent hypothesizes three classes of molecules potentially capable of reducing NF-κB activity: specific inhibitors, dominantly interfering molecules, and decoymolecules.We review the specification’s disclosure of each in turn to determine whether there is substantial evidence to support the jury’s verdict that the written description evidenced that the inventor possessed the claimed invention.
After reviewing the spec for support:
Whatever thin thread of support a jury might find in the decoy-moleculehypothetical simply cannot bear the weight of the vast scope of these generic claims.See LizardTech, 424 F.3d at 1345 (holding that “[a]fter reading the patent, a person ofskill in the art would not understand” the patentee to have invented a generic methodwhere the patent only disclosed one embodiment of it); Reiffin, 214 F.3d at 1345-46 (noting that the “scope of the right to exclude” must not “overreach the scope of theinventor’s contribution to the field of art as described in the patent specification”); Fiers,984 F.2d at 1171 (“Claiming all DNA[s] that achieve a result without defining whatmeans will do so is not in compliance with the description requirement; it is an attemptto preempt the future before it has arrived.”); cf. Carnegie Mellon, 541 F.3d at 1126(holding that the narrow description of the E. coli polA gene did not adequately supporta broad claim to the gene from any bacterial source). Here, the specification at bestdescribes decoy molecule structures and hypothesizes with no accompanyingdescription that they could be used to reduce NF-κB activity. Yet the asserted claimsare far broader. We therefore conclude that the jury lacked substantial evidence for itsverdict that the asserted claims were supported by adequate written description, andthus hold the asserted claims invalid. (Op. at 37)
Conclusion:
For the foregoing reasons, we hold that the asserted claims of the ’516 patent are invalid for lack of written description, and we do not address the other validity issues that were before the panel.
Michael Marrin & Etch-It, Inc. v. Jeffrey Griffin & Claudia Griffin, No. 2009-1031 (Fed. Cir. Mar. 22, 2010).
The district court found the asserted patent was invalid under 102(b) as anticipated by several patents. The district court did not treat the asserted claims’ preamble as a limitation because the preamble only was an intended use and the patentee did not demonstrate a clear reliance on the preamble during prosecution. With this claim construction, the district court found several patents that anticipated the structures in the asserted claims. The patentee appealed and the Federal Circuit affirmed.
The patentee conceived of the idea of using a scratch-off label to mark beverage containers and cups so that attendees of a gathering or party could keep track of their beverage cups. Figs from Patent 5154448 are shown below.
Claim 1 of the patent, which is representative of the four disputed claims, reads as follows: (Bold added)
1. A scratch-off label for permitting a user to write thereon without the use of a marking implement, comprising:a permanent base having a colored near side which is normally visible to the user and having a far side; anda coating of scratch-off non-transparent material having a color which contrasts with the color of the near side of the permanent base, which coating is applied directly onto the near side of the permanent base with sufficient thickness so as to obscure the color of the permanent base, and which when scratched off reveals the color of the near side of the permanent base.
The Griffins acknowledge that the prior art disclosed scratch-off devices. However, the Griffins contend that the prior art did not disclose the ability of a user of a scratch-off device to write without the use of a marking implement, which was disclosed in the preamble to the claims of the ’448 patent.
The Federal Circuit agreed with the district court ruling “that the “for permitting” language in the preamble was not a claim limitation based on its findings that (1) the preamble language added in the amendment only added a statement of a purpose or an intended use for the invention, and (2) the patentee did not demonstrate clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art. Marrin, 2008 U.S. Dist. LEXIS, at *2, 7.”
For apparatus claims, such as those in the ’448 patent, generally patentability “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
The court compares the asserted Griffins claim with US 4241943 (Malinovitz) a card for showing parking times that has a similar structure (scratch off to reveal underlying layer). See US 4241943 (Malinovitz) fig 1 below.
Below is the "feature” chart the court used to anticipate Griffins with Malinovitz.
The court found the patent invalid as anticipated.
Judge Newman, in the dissent, offers reasons that the preable’s intended use should be a limitation for an apparatus claim.
Precedent establishes that the preamble limits the claims when it distinguishes the use of the claimed article from the prior art, see Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1323-24 (Fed. Cir. 2009), as well as when it contains language that is essential to the description of the invention, see In re Bulloch, 604 F.2d 1362, 1365 (CCPA 1979)
Practice pointer – An Apparatus claim must be distinguished from the prior art apparatuses by a difference in structure, not intended use or purpose. If you wish to claim a new use for a known apparatus, a method claim can be used.
Opinion http://www.cafc.uscourts.gov/opinions/09-1031.pdf
Related Cases
Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
http://caselaw.lp.findlaw.com/data2/circs/fed/081479p.pdf
Cardiac Pacemakers v. St. Jude Medical, 2007-1296, –1347, (Fed. Cir 2009) The Federal Circuit, en banc, held that Section 271(f) does not encompass devices, supplied outside the US, that may be used to perform a patented method.
35 USC 271 defines Patent infringement. Section 271(f) is meant to prevent parties from avoiding infringement by shipping a patented device in smaller components and then assembling the components overseas. Section 271(f) creates a cause of action for infringement for supplying components of a patented invention for assembly outside the US.
In the case, St. Jude shipped Implantable cardioverter defibillators overseas. The patentee Cardiac had a method claim to administer a particular shock sequence using the defibillator. The patentee Cardiac argued St. Jude infringed under 271(f) where St. Jude shipped defibillator overseas that then were used to perform the patentee’s method.
The Federal Circuit, en banc, held that Section 271(f) does not encompass devices, supplied outside the US, that may be used to perform a patented method.
Federal Circuit limited the subject matter reach of 35 U.S.C. § 271(f), holding that the statute does not apply to methods or device that may be used to practice the claimed method outside of the US.
(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. (2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
The court found that “supplied” to mean the physical transfer of an object. Therefore, the court reasoned “because one cannot supply the step of a method, Section 271(f) cannot apply to method or process patents.”
For many patent holders, where both device claims and method claims can be included in issued patents, this case will not have much effect. However, for technologies where only method claims are available, this case can limit export damages (enforcement outside the US). Biotech companies who make products, such as diagnostic kits or assays that can only be claimed as methods will not be able to use section 271(f) for extraterritorial enforcement.
For software and internet companies, the Cardiac decision appears to be consistent with the NTP, Inc. V. Research in Motion, Ltd, 418 F.3d. 1282, (Fed. Cir. 2005). The NTP court held that Section 271(f) does not apply where RIM supplied BlackBerry handheld devices to customers in the United States, and use of those devices (in concert with a relay of the Blackberry network located in Canada) would infringe NTP’s patented method if all steps were performed in the United States. Id. at 1321.
Practice pointer – try to include many claim types (e.g,. device, method and manufacture) and write claims from the perspective a (one) potential infringer.
Opinion http://www.cafc.uscourts.gov/opinions/07-1296.pdf
On March 2, 2010, at the Biotechnology/ Chemical/ Pharmaceutical Customer Partnership meeting at the USPTO, Blaine Copenheaver, ( SPE, TC1600) gave a presentation on the USTPO’s Green Technology Petition Pilot. This pilot will advance “out of turn of the initial examination” certain “green Technology” applications. The pilot started 12/8/2009 and will run for 1 year and is limited to the first 3000 granted petitions. So far about 800 patent application petitions received.
Below is an outline of the presentation;
1. Authority and Overview: resources / overview 2. Petition Requirement: common errors and tips 3. Petition Review: process, statistics, examples 4. Future
The presentation can be downloaded here http://www.cabic.com/bcp/030210/BCopenheaver_GT.ppt
Materials for the entire meeting can be found at http://www.cabic.com/bcp/
Here is a link to past meetingshttp://www.uspto.gov/patents/init_events/bcp/index.jsp
keywords: clean technology, sustainability, uspto, renewable energy
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