Drafting the Best Possible Claims
Andrew J. Dillon
I'll have grounds
More relative than this—the claim's the thing
Wherein I'll catch the conscience of the King.
Hamlet Act 2, scene 2,
Conduct the Best Possible Search
• Don’t limit the search to a narrow area
– KSR states: “When a work is available in one field
of endeavor, design incentives and other market
forces can prompt variations of it, either in the
same field or a different one…”
• All communications with search firms should
be oral
– Pre-filing search reports are discoverable
The Best Possible Search
• Enhances Validity
– When the closest prior art is considered by the
Examiner PTO statistics show 75% of patents were
held valid at trial
• Lengthens Term
– Shortened prosecution equals a lengthened term
A Broad Spectrum of Claim Scope
• Best Possible Situation
– The broadest claim is literally infringed
• If previously undiscovered prior art forms the
basis for a rejection of the broadest claim:
– Hopefully the next narrower independent claim is
also literally infringed because the Doctrine of
Equivalents has been severely curtailed after Festo
Submit the Broadest Allowable Claim
Upon Filing
• Broad claims added during prosecution may
lack written description support
– Gentry Gallery, Tronzo and Toro Co. v. Ariens all
found later submitted claims invalid for lack of
written description support
– Original claims in the predictable arts are said to
be “self-supporting” in that they constitute their
own written description
Submit the Broadest Allowable Claim
• Consider the following factors:
– Potential alternative solutions
– Alternate environments in which the “invention”
may be employed
– Alternate components
– Expected technological evolution
– Competitor technologies
Variations and Alternate Embodiments
• Establish equivalency arguments in your
specification by:
– Clearly define the function to be accomplished
– Clearly define the desired result
• Carefully list alternatives within the
specification
– If you overreach and the prior art shows one of
your alternatives, it is too late to argue that one of
your listed alternatives is not really an alternative
Avoid “Patent Profanity”
• Do not refer to “the invention” or “the present
invention”
• Do not recite “advantages of the invention”
• Do not recite “essential” “required” “critical”
“necessary” “important” “advantageous”
“beneficial” “desirable” “”preferred” or
“disadvantages of the prior art”
Avoid Patent Profanity
• Any of the above recitations can give rise to an
impression that an element or feature is
considered essential, provoking:
– A finding by a judge or examiner that claims which
do not recite that element are not patentable or
invalid for failure to meet the written description
requirement
– A risk that a judge will read that feature into
claims that do not recite that feature under the
guise of “claim interpretation”
Avoid Patent Profanity
• For example:
– In Honeywell v. ITT Industries the court
interpreted “fuel injection system component” as
being limited to a “fuel filter” based upon a
written description that referred to the fuel filter
as “the present invention”
Illustrate Multiple Embodiments
• The CAFC will narrowly interpret claims by
importing limitations from the specification
under the guise of “claim interpretation”
because the specification, as drafted,
disclosed only a single embodiment, element
or feature
• For example:
Illustrate Multiple Embodiments
– Wang Laboratories v. America Online
• “frame” and “information frame” were interpreted as
limited to character based protocols, excluding bitmapped protocols because “[t]he only embodiment
described in the ‘669 patent the character-based
protocol”
– Watts v. XL Systems
• a “sealingly connected” threaded pipe joint was limited
to structures utilizing misaligned taper angles” because
the Court found “The specification does not explicitly
discuss an embodiment without misaligned taper
angles…”
Never Ever Draft Jepson Format Claims
• “ In a device comprising elements A, B, C and
D the improvement comprising element D
being D’ ”
• Why not use a Jepson Format claim?
• Jepson Format claims are at a substantial
disadvantage during both prosecution and
enforcement.
Never Ever Draft Jepson Format Claims
• During Prosecution:
– The entire structure recited in the Jepson Format
preamble (Elements A, B, C and D) is presumed to
be in the public domain before the invention of
the applicant.
– Consequently, the use of a Jepson Format
preamble constitutes an admission that every
element contained therein is prior art
Never Ever Draft Jepson Format Claims
• Examples:
– Pentec v. Graphic Controls…”a preamble is
impliedly admitted to be prior art when a Jepson
claim is used…”
– In re Fout…”the implied admission that the Jepson
format preamble of Claim 1 describes prior art has
not been overcome…”
Never Ever Draft Jepson Format Claims
• Can the presumption be overcome?
– Yes, MPEP §2129 III notes that the “implication
may be overcome where the applicant gives
another credible reason for drafting the claim in
Jepson format”
– The literature is not replete with examples of
successfully overcoming that presumption
– Why put your client in that hole?
Never Ever Draft Jepson Format Claims
• Consequences of that presumption:
– Examiners can and will issue an unobviousness
rejection based solely upon the applicant’s own
preamble
– Courts will find a patent invalid over a
combination of the preamble in combination with
a single reference disclosing a variation of element
D (In re Fout 675 F.2d 297 (CCPA 1982))
Never Ever Draft Jepson Format Claims
• During Enforcement
– In a Jepson Format claim the claim body relies on
the preamble for antecedent basis
– The preamble of a Jepson Format claim is always
considered a limitation, see Rowe v. Dror 112 F.3d
473 (Fed Cir 1997) which held:
• “the claim itself, the so-called ‘Jepson’ form, suggests
the structural importance of the recitations found in
the preamble.”
Never Ever Draft Jepson Format Claims
• Consequently
– During prosecution every element in the preamble
is admitted prior art, and
– During enforcement the absence of one of those
elements results in a finding of noninfringement
• Never Ever Draft Jepson Format Claims
Who is the Infringer?
• The general rule is that direct infringement
occurs when a single actor performs each and
every element of an asserted claim:
– Fromson v. Advance Offset Plate, Inc 720 F.2d
1565 (Fed Cir 1985) No direct infringement where
a manufacturer performed the first step and the
customer performed the second step
– BMC Resources, Inc v. Paymentech, LP 498 F.3d
1373 (Fed Cir 2007) You must show control or
direction of a third party to find joint infringement
Who is the Infringer?
• Preferably draft a claim that is infringed by a
single party
• Address client/server issues by claiming
actions or reactions which occur solely at the
server or at the client or “in response to”
certain activities at the other end
• Draft multiple sets of claims directed to each
possible infringer within a system
Who is the Infringer?
• There is hope on the horizon
• In Centillion Data Sys., LLC v. Quest
Communications International, Inc (Fed Cir Jan
20, 2011) the court addressed direct
infringement of a system claim where a single
actor was not in possession of all of the
claimed system elements, including server
side elements and client side elements
Who is the Infringer?
• The court in Centillion held that the customer
“puts the system as a whole into service, i.e.
controls the system and obtains benefit from
it.” Reasoning that “[b]y causing the system as
a whole to perform [server-side] processing
and obtaining the benefit of the result, the
customer has ‘used’ the system under [35
U.S.C. § 271(a).”
Thank you