Indefiniteness and Best Mode
Patent Law
Sept. 15, 2011
Disclosure/Enablement, § 112
¶ 1 Written Description of Claimed Invention
¶ 1 Enablement of one skilled in the art
without undue experimentation of:
• how to make
• how to use
¶ 1 Best Mode contemplated by inventor
¶ 2,6 Claims - definiteness
Disclosure/Enablement, § 112
U.S.C. § 112: ¶ 1
The specification shall contain a written description of
the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms
as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to
make and use the same, and shall set forth the best
mode contemplated by the inventor of carrying out his
invention.
Definiteness, § 112
U.S.C. § 112: ¶ 2
The specification shall conclude
with one or more claims
particularly pointing out and
distinctly claiming the subject
matter which the applicant regards
as his [or her] invention.
End of Best Mode as a Litigation
Defense
• Currently, a PTO examiner may reject a
patent application for failure to state the
best mode; AND best mode may be pleaded
as a defense in litigation
• Beginning on the date of enactment of the
Leahy-Smith AIA, best mode can no longer
be raised as a invalidity defense.
• However, withholding of best mode
information still seems to be a potential
ground for and inequitable
conduct/unenforceability defense.
Amendment to 35 USC 182
‘‘(3) Invalidity of the patent or any claim
in suit for failure to comply with—
‘‘(A) any requirement of section 112,
except that the failure to disclose the
best mode shall not be a basis on which
any claim of a patent may be canceled
or held invalid or otherwise
unenforceable;
Orthokinetics v. Safety Travel
Chairs
Page 337, 5th ed.
• United States Patent RE30,867 Gaffney February
16, 1982 Travel chair
The front wheel assembly of a wheel chair is
dimensioned so that it will easily pass through the
space between the seat of an automobile and the
doorframe thereof. The rear wheel assembly is
retractable upwardly under the seat portion to a
position which permits the seat portion and the
retracted rear wheel assembly to be set upon the
automobile seat. The wheel chair and the person
seated therein may be easily placed on the
automobile seat and removed therefrom while the
person remains seated in the wheel chair.
• Inventors: Gaffney; Edward J. (Pewaukee, WI)
Assignee: Orthokinetics, Incorporated (Waukesha,
WI) Appl. No.: 135602Filed: March 31, 1980
Orthokinetics – Claim 1
1. In
a wheel chair having a seat portion, a
front leg portion, and a rear wheel
assembly, the improvement wherein said
front leg portion is so dimensioned as to
be insertable through the space between
the doorframe of an automobile and one
of the seats thereof whereby said front leg
is placed in support relation to the
automobile . . . .
Orthokinetics holding
The phrase “so dimensioned” is as accurate as the
subject matter permits, automobiles being of
various sizes. As long as those of ordinary skill in
the art realized that the dimensions could be easily
obtained, § 112, 2d ¶ requires nothing more. The
patent law does not require that all possible
lengths corresponding to the spaces in hundreds of
different automobiles be listed in the patent, let
alone that they be listed in the claims.
Definiteness
• Orthokinetics standard
– Viewed from perspective of one
skilled in the art
• Varies by field
– Distinguish spec from claims
• “Enable” claims in spec
• Definiteness a matter of claim
drafting
Ortho – cont’d
• Notice function is key
• Uncertainty for competitors is a
concern
• But: claim drafting must be tested
by standards in the relevant field
Standard Oil Co. v. American
Cyanamid Co. – p. 341
“The process for hydrolyzing a nitrile . . .
comprising contacting said n itrile with
water . . . in the presence of copper ion, said
copper ion being at least partially soluble in
water, the nitrile or in both water and nitrile
and said copper ion being composed of
copper in a combined valence state of Cu°
+ Cu+, Cu° + Cu++, or Cu° + Cu+ +
Definitness issue
• No standard definition of
“partially soluble” in (1) the
spec, or (2) the art, the
relevant field
“Slightly soluble”
• Defined in the art; but not
specifically related to the
phrase “partially soluble”
Although Dr. Greene “had the right,
and the skill and background, to
have defined the term,” she chose
not to; thus the term “is too vague
to particularly point out and
distinctly claim the subject matter
which [the patentee] claims as
[her] invention,” and the patent is
invalid. -- p. 342
Indefiniteness: what is
“insolubly ambiguous”?
• Some cases are generous in construing
claims – wide room to take account of
understanding of one skilled in the art,
and of context
• Example: Energizer Holdings, Inc. v.
International Trade Commission, 435
F.3d 1366 (Fed. Cir. 2006) – book p. 343
Antecedent basis
1. An electrochemical cell comprising
an alkaline electrolyte, a cathode …,
and an anode gel comprised of …,
wherein the cell contains less than 50
parts of mercury per million parts
by weight of the cell and said zinc
anode has . . . .
nd
2
problem
• Limitation for zinc anode is apparently
tied to test conditions, but is stated as a
limitation for each and every anode in
operation
• Can the court fill in its “common sense
understanding” of what the drafter was
trying to achieve with the limitation?
Common sense? Skill in the
art?
“[T]he issue here is not correction of error, but
understanding of what the claim covers.
When the meaning of the claim would
reasonably be understood by persons of
ordinary skill when read in light of the
specification, the claim is not subject to
invalidity upon departure from the protocol
of “antecedent basis.” – casebook 5th ed. 34344
BUT compare:
• Chef America, Inc. v. Lamb-Weston, Inc.,
358 F.3d 1371, 1372
• Claim limitation “heating the resulting
batter-coated dough to a temperature in
the range of about 400 to 800 F.”
Special problem: approximate
claim language
• “About”
• “Approximately”
Halliburton v. M-I LLC
• 514 F.3d 1244
• January 25, 2008 (Fed Cir)
1. A method for conducting a drilling
operation in a subterranean formation
using a fragile gel drilling fluid
comprising:
(a) an invert emulsion base;
(b) one or more thinners;
(c) one or more emulsifiers; and
(d) one or more weighting agents, wherein
said operation includes running casing
in a borehole.
Spec: A “fragile gel” as used herein is a
“gel” that is easily disrupted or thinned,
and that liquifies or becomes less gel-like
and more liquid-like under stress, such
as caused by moving the fluid, but which
quickly returns to a gel when the
movement or other stress is alleviated or
removed, such as when circulation of the
fluid is stopped, as for example when
drilling is stopped.
The “fragileness” of the
“fragile gels” of the present
invention contributes to the
unique and surprising
behavior and advantages of
the present invention.
While patentees are allowed to claim their
inventions broadly, they must do so in a way
that distinctly identifies the boundaries of
their claims. The fluids of the ’832 invention
may provide less resistance to shear (i.e.,
break more quickly) than the prior art fluids,
but the degree of improved speed remains
ambiguous. Thus, it is unclear whether a
person of ordinary skill in the art would have
interpreted this claim as having an upper
bound of fragility.
“[I]t seems clear that the patent drafter
could have provided more specifics in
this case, either with quantitative metrics
as to how quickly the gel must break
(time to break at given conditions) and
how strong the gel must be (strength at
given conditions), or with sufficient
examples of fragile gels of the invention
to show which such fluids fell within the
scope of the claims.”
See also . . .
Young v. Lumenis Inc., 83
USPQ2d 1191 (Fed. Cir.
2007), 83 USPQ2d 1191
(Fed Cir 2007)
Claims for method of declawing cat using
laser surgery, which require forming
circumferential incision in epidermis
“near the edge of the ungual crest of the
claw,” are not rendered indefinite by use
of term “near,” since “near,” as used in
claims, is not insolubly ambiguous and
does not depart from its ordinary and
customary meaning of “close to or at”
edge of ungual crest.
Descriptions and figures in specification convey
understanding that phrase “near the edge of
the ungual crest” means close to or at most at
the distal [i.e., far] edge of the epidermis, since
use of “near,”as opposed to precise numerical
measurement, is appropriate in view of fact
that term describes location on animal, and size
of appendage and amount of skin required to
be incised will vary from one animal to another
based on size.
New Aggresiveness in Software
Claims
Datamize v. Plumtree, 417 F.3d
1342 (Fed Cir 2005)
• Federal Circuit invalidated
claim to designing
“aesthetically pleasing” user
interface
417 F.3d at 1349
“Merely understanding that
“aesthetically pleasing” relates to the
look and feel of interface screens, or
more specifically to the aggregate
layout of elements on interface
screens, fails to provide one of
ordinary skill in the art with any way
to determine whether an interface
screen is “aesthetically pleasing.”
Aristocrat Tech. v. Int’l Game
Tech., 521 F.3d 1328 (Fed Cir.
2008)
Invention allowed user to select winning
combination in slot machines
Held: claim including “control means” for
allowing user selection, without
disclosure of algorithm or details, was
indefinite under section 112 par. 2
“1. A gaming machine having display
means arranged to display a plurality
of symbols in a display format having
an array of n rows and m columns of
symbol positions, game control means
arranged to control images displayed
on the display means, . . . .
Minimal spec
• Mentions “game control means” only two
times, besides the claims
• Only embodiment shown is a “general
purpose computer or microprocessor”
521 F.3d at 1333
In cases involving a computer-implemented
invention in which the inventor has invoked
means-plus-function claiming, this court has
consistently required that the structure disclosed
in the specification be more than simply a general
purpose computer or microprocessor. The point
of the requirement that the patentee disclose
particular structure in the specification and that
the scope of the patent claims be limited to that
structure and its equivalents is to avoid pure
functional claiming.
521 F.3d at 1338
Aristocrat was not required to produce a
listing of source code or a highly detailed
description of the algorithm to be used to
achieve the claimed . . . . It was required,
however, to at least disclose the algorithm
that transforms the general purpose
microprocessor to a “special purpose
computer programmed to perform the
disclosed algorithm.”
See also
• Finisar Corporation v. The DirectTV
Group, 523 F.3d 1323 (Fed. Cir., April 18,
2008).
Blackboard, Inc. v.
Desire2Learn, Inc.
574 F.3d 1371
Fed. Cir. 2009.
An [sic] method for providing online
education method [sic] for a community
of users in a network based system
comprising the steps of:
a. establishing that each user is capable of
having redefined [sic: “predefined”]
characteristics indicative of multiple
predetermined roles in the system and
each role providing a level of access to
and control of a plurality of course files;
b. establishing a course to be offered online,
comprising
i. generating a set of course files for use with
teaching a course;
ii. transferring the course files to a server
computer for storage; and
iii. allowing access to and control of the course
files according to the established roles for the
users according to step (a);
c. providing a predetermined level of
access and control over the network to
the course files to users with an
established role as a student user
enrolled in the course; and
d. providing a predetermined level of
access and control over the network to
the course files to users with an
established role other than a student
user enrolled in the course.
• Blackboard‘s broadest claim
(claim 1) includes several
means-plus-function clauses,
including a "means for
assigning a level of access and
control."
Before the district court, Blackboard asserted that
the structure that performs the recited “means
for assigning” function is “a server computer
with an access control manager and equivalents
thereof.” On appeal, Blackboard again argues
that the structure that performs that recited
function is the server computer's software
feature known as the “access control manager”
or “ACM.” The entirety of the description of
the access control manager in the specification
is contained in a single paragraph, which reads
as follows:
Access control manager 151 creates an access
control list (ACL) for one or more
subsystems in response to a request from a
subsystem to have its resources protected
through adherence to an ACL. Education
support system 100 provides multiple levels
of access restrictions to enable different
types of users to effectively interact with the
system (e.g. access web pages, upload or
download files, view grade information)
while preserving confidentiality of
information.
Fed. Cir. Opinion, 574 F.3d at
1383
"[W]hat the patent calls the 'access control
manager' is simply an abstraction that
describes the function of controlling access to
course materials, which is performed by
some undefined component of the system.
The ACM is essentially a black box that
performs a recited function. But how it does
so is left undisclosed."
The fact that an ordinarily skilled artisan might
be able to design a program to create an
access control list based on the system users'
predetermined roles goes to enablement. The
question before us is whether the specification
contains a sufficiently precise description of
the "corresponding structure" to satisfy
section 112, paragraph 6, not whether a
person of skill in the art could devise some
means to carry out the recited function. – 574
F. 3d at 1385
But see . . .
IP Innovation, LLC v. Red Hat, Inc., 2009
WL 2460982 (E.D.Tex. Aug 10, 2009) –
distinguishing Blackboard, and holding
that disclosure of actual program code is
NOT required to meet definiteness
requirement
Best Mode
Disclosure/Enablement, § 112
U.S.C. § 112: ¶ 1
The specification shall contain a written description of
the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms
as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to
make and use the same, and shall set forth the best
mode contemplated by the inventor of carrying out his
invention.
Best mode contemplated by
inventor
• Not all inventors contemplate a best
mode
• Only if you do are you required to
disclose
Chemcast Corp v Arco Industries
Page 343
United States Patent 4,081,879 Rubright
April 4, 1978 Sealing member
An improved sealing member
utilizable as a plug button or
grommet is disclosed. An
annular locking portion made
of a rigid material is
integrally bonded to a
flexible elastomeric body . . .
The rigid annular shaped portion of the
sealing member has a tapered shape
and is slightly larger than the opening
in which the sealing member is to be
positioned; the member has to be
tilted or cocked in order to be inserted
in place. Once the rigid annular
locking portion is inserted beyond the
opening, the sealing member is
securely held and locked in place by
the outer edge of the annular portion.
• Inventors: Rubright; Phillip L.
(Berkley, MI) Assignee: Chemcast
Corporation (Detroit, MI) Appl.
No.: 653268 Filed: January 28,
1976
From Chemcast Spec.
The annular locking portion 12 of the sealing member
10 is preferably comprised of a rigid castable
material, such as a castable resinous material, either
a thermoplastic or thermosetting resin, or any
mixtures thereof, for example, polyurethane or
polyvinyl chloride. The portion 12 also should be
made of a material that is sufficiently hard and
rigid so that it cannot be radially compressed, such
as when it is inserted in the opening 19 in the panel
20. Materials having a durometer hardness reading
of 70 Shore A or harder are suitable in this regard.
Chemcast - holding
Rubright knew that Reynosol had developed R4467 specifically for Chemcast and had
expended several months and many hundred
man-hours in doing so. Because Chemcast used
only R-4467, because certain characteristics of
the grommet material were claimed elements of
the ’879 invention, and because Rubright
himself did not know the formula, composition,
or method of manufacture of R-4467, section
112 obligated Rubright to disclose the specific
supplier and trade name of his preferred
material.
Best Mode updated
• High Concrete Structures v. New
Enterprise Stone and Lime (Fed. Cir. July
29, 2004).
• On appeal from a district court’s
summary judgment based on failure to
comply with the best mode requirement,
the Federal Circuit (Newman, Mayer,
Clevenger) reversed and remanded.
Source:
http://patentla
w.typepad.co
m/patent/2004
/07/federal_cir
cuit_3.html
High Concrete sued New Enterprise for
infringement of its patent on “doubletees” for adjusting the orientation of
bulky cargo. (U.S. Patent No. 5,947,665).
On defendants’ motion, the district court
held the patent invalid for “failing to
disclose that the inventors' preferred
mode of practicing the invention was to
use the crane to tilt the loaded frame at
the time that the crane loaded the cargo
onto the frame.”
The Federal Circuit reversed:
Deliberate concealment is not charged. The best
mode requirement of §112 is not violated by
unintentional omission of information that
would be readily known to persons in the field
of the invention … Known ways of performing
a known operation cannot be deemed
intentionally concealed absent evidence of
intent to deliberately withhold that
information.
Patent Reform: Eliminate Best
Mode: HR 1908
SEC. 13. BEST MODE REQUIREMENT.
[Amend] Section 282(b):
(3) Invalidity of the patent or any claim in suit
for failure to comply with—
(A) any requirement of section 112 of this
title, other than the requirement that the
specification shall set forth the best mode
contemplated by the inventor of carrying
out his invention;