As the Internet of Things (IoT) develops, there is an increasing need to “sense” changes in the atmospherics which surround semiconductors. In other words, the working chips must get smarter and smarter and have feel! Some of that AI feel in chips is being supplied by sensing chips – the layered structure of wafers of semiconductor material which can “sense” changes in the environment it is measuring or into which it is placed. Gas sensors are particularly important and patent applications for these devices are on the upswing internationally, with Sony and Samsung leading the way. See Relecura article at http://tinyurl.com/ybrojuq2
Edaphic Scientific describes a gas sensor’s performance as follows: “Semiconductor gas sensors rely on a gas coming into contact with a metal oxide surface and then undergoing either oxidation or reduction. The absorption or desorption of the gas on the metal oxide changes either the conductivity or resistivity from a known baseline value. This change in conductivity or resistivity can be measured with electronic circuitry. Usually the change in conductivity or resistivity is a linear and proportional relationship with gas concentration. Therefore, a simple calibration equation can be established between resistivity/conductivity change and gas concentration.” http://tinyurl.com/y6ufz7vx
The IoT relies on smarter and smarter technology as it governs many things around us. Products will have this smarter and smarter technology and converting “sensing” into electronic circuitry will likely have a positive impact on performance, but will present new challenges as products fail and cause damage to person or property. How deep a dive will be required in products liability litigation for example when a “sensor chip” fails to sense. Sensor chips have been around for a while, but they are becoming tremendously sophisticated and integral to the virtual world in which we operate.
Walmart has applied for a Drone Pollinator presented in the recently published application as “Systems and Methods for Pollinating Crops Via Unmanned Vehicles.” Here is Application # US2018/0065749 A1 at this link from FreshPatents.com: http://images2.freshpatents.com/pdf/US20180065749A1.pdf
The PTO App abstract describes essentially the same process used by Bees, and scientists at Walmart, Harvard and many other institutions have been working to create an efficient way to pollinate many of the plants from which we get our food during the last two decades of declining bee populations. Here is a good article from Science Alert detailing and linking to some of the efforts to create a drone pollinator:http://tinyurl.com/y93a7z7y
Here is a photo of the Harvard latest edition drone “RoboBee” which allegedly cannot yet be remotely controlled. The Walmart patent claims such an ability. We will follow.
Posted by Henry M. Sneath, Esq. at HoustonHarbaugh, P.C. in Pittsburgh, Pa.
Magistrate Judge Jeffrey J. Keyes from the U.S. District Court for the District of Minnesota issued an important report and recommendation affirming the ability of patent attorneys to use copyrighted articles during patent prosecution (e.g., to submit them to the USPTO to fulfill disclosure requirements) as fair use.
In American Institute of Physics, et al. v. Schwegman Lundberg & Woessner, P.A. (No. 12-cv-00528), various publishers sued a law firm that had copied their copyrighted scientific articles in order to assess whether the articles were prior art and, if they were, sent copies to the USPTO to fulfill its obligation to disclose prior art. The publishers originally argued that any use by the law firm of these articles without payment constituted copyright infringement. However, they dropped their claims as to the firm’s (1) making copies to be sent to the USPTO, (2) sending copies to the USPTO, and (3) retaining one copy for its files. They continued their infringement claims as to the downloading of the articles, making other copies that existed in the firm’s files, and distributing the copies to its clients or others in the firm. The law firm argued that none of these actions infringed because of the fair use exception.
THE COURT’S DECISION
In assessing the applicability of the fair use defense, a court must consider (1) the purpose and character of the accused infringer’s use, (2) the nature of the copyrighted work, (3) the amount of used, and (4) the effect of the copying on the relevant market.
The Court determined that the nature and purpose of the firm’s use was different from that of the publishers. The publishers publish the works for the betterment of science and to allow other scientists to test and validate the authors’ findings. In contrast, the firm used the articles to satisfy a legal requirement of disclosure to assist the USPTO in determining whether an invention was new and novel. The Court further found that the intended audience for the two parties was different and did not overlap. The publishers’ audience was scientists, students, libraries, etc., whereas the firm’s audience was the USPTO and lawyers in the firm.
The Court also considered the nature of the articles to slightly favor the law firm. Because the articles were primarily factual and informational in nature, they fell a bit further from the creative types of expression more strongly protected by copyright law.
The Court looked at the amount of use and also concluded that, despite the copying of the entire article, this factor also favored the law firm. In order to satisfy its obligation of disclosure, the firm had to use the entire article. Thus, its entire use was consistent with its allowed purpose.
Finally, the Court looked to whether there were any other factors that might favor either party. It concluded that the law firm’s use was consistent with the overriding Constitutional basis for both the patent and copyright laws, which is to promote the progress of the science and useful arts. Such copying ultimately furthered this objective and the public good by assisting the USPTO in weeding out improper patents.
Ultimately, in weighing all of the factors, the Court concluded that the law firm’s use of the copyrighted articles was fair use and not copyright infringement.
Earlier this month, the Federal Circuit issued its long-awaited en banc opinion on the patentability of software in CLS Bank International v. Alice Corporation Pty. Ltd., No. 2011-1301. In an ironic twist, the result is something more akin to Alice in Wonderland than the clear guidance patent practitioners were hoping for. The Federal Circuit issued a 135-page decision comprised of separate written opinions by Judges Lourie, Rader, Moore, Newman, and Linn, as well as an “Additional Reflection” by Chief Judge Rader, none of which commanded a majority. The end result was a one-paragraph per curiam opinion in which a majority of the Court determined that the particular method and computer-readable media claims were not directed to patent eligible subject matter (for different reasons) and an equally-divided Court affirmed by default the District Court’s holding that the system claims were not patent eligible.
The Claims at Issue
Alice Corp. owned four patents relating to a computerized trading platform used for conducting financial transactions in which a third party acts as an intermediary to assure the first and second parties that they will both perform. If one of the parties cannot perform, the transaction is not completed and neither side risks non-performance of the other.
The patents contained method, computer-readable media, and system claims, all of which involved software aspects.
Judge Lourie’s Opinion
Judge Lourie, joined by Judges Dyk, Prost, Reyna, and Wallach, would have held that all of the claims were not directed to patent-eligible subject matter under 35 U.S.C. § 101.
The statute contains four eligible classes of inventions:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. § 101. He noted that the statute is to be interpreted broadly, but is also limited by three judicially-created exceptions that are not patent eligible: laws of nature, natural phenomena, and abstract ideas.
In determining whether something is patent eligible, Judge Lourie set forth a two-step process: (1) is the claimed invention a process, machine, manufacture, or composition of matter, and, if so, (2) does it fall within one of the three judicially-created exceptions? He acknowledged that this determination is easier said than done.
To determine whether it falls within any of the exceptions, courts are to answer two more questions: (1) does the claim pose any risk of preempting an abstract idea, and, if so, (2) are there substantive limitations that narrow, confine, or otherwise tie down the claim so that it does not preempt the full abstract idea?
Turning to the claims at issue, Judge Lourie broke them down into the “gist” of the invention and what, at heart, it was trying to claim. He concluded that all of the claims were attempting to claim the abstract idea of facilitating a trade through a third-party intermediary. In his opinion, none of the additional claim language provided any meaningful limitation on the claims.
Chief Judge Rader’s OPinion
Chief Judge Rader, joined in full by Judge Moore and in part by Judges Linn and O’Malley, would have held that the system claims are patent eligible, but the method and media claims are not (Judges Linn and O’Malley would have held that all the claims are patent eligible).
Chief Judge Rader focused on the judicially-created exceptions to § 101. Courts must determine whether a claim includes meaningful limitations that restrict the claim to an application, rather than claiming an abstract idea. Claims are not meaningfully limited where it describes an abstract idea and simply adds “apply it” or if its purported limitations cover all possible ways to achieve the result.
A claim is meaningfully limited if it requires a particular machine to implement it or a particular transformation or where it adds limitations that are essential to the invention. “At bottom, where the claim is tied to a computer in such a way that the computer plays a meaningful role in the performance of the claimed invention, and the claim does not pre-empt virtually all uses of an underlying abstract idea, the claim is patent eligible.”
Chief Judge Rader cautioned that the patent-eligibility inquiry is different and distinct from other statutory requirements, such as non-obviousness, novelty, and enablement. Whether something is obvious is irrelevant to whether it is directed to patent-eligible subject matter. He also confirmed that the standard for proving a violation of § 101 is by clear and convincing evidence.
Taking this all together, he found that the system claims were directed to patent eligible subject matter—the claims recited a machine that performed specific transactions that was not a disembodied concept. However, the method and media claims he found to claim only an abstract concept.
Judge Moore’s Opinion
Judge Moore, joined by Judges Rader, Linn, and O’Malley, wrote to express her concern that Judge Lourie’s view would signal the end of all software patents as we know them. She believed that the five judges ignored precedent and have left the Court “irreconcilably fractured.” She called for the Supreme Court to step in and resolve the issue.
She would have held that the system claims are directed to patent-eligible subject matter, as they include limitations relating to hardware and software, and were not limited to abstract ideas.
Judge Newman’s Opinion
Judge Newman, writing for herself, believed that the Court was overanalyzing the requirements of § 101. She stated that the inquiry should be simple and straightforward—does the invention fall within one of the four types of inventions allowed? If so, the patent-eligibility analysis ends and the other requirements for patentability kick in to determine whether a patent should be granted.
She also wrote to explicitly confirm that study and experimental use is not patent infringement. She was concerned that too many commentators were wrongly stating that patents would prevent individuals from conducting research or evaluating patented inventions.
Experimental use—such as experiments to (1) improve or build on patented subject matter, (2) compare patented subject matter with alternatives, (3) understand its mechanism, and (4) find new applications or modifications—is not infringement, regardless of whether it is for scientific knowledge or commercial potential.
Judge Linn’s Opinion
Judge Linn, joined by Judge O’Malley, would have found all of the claims to be directed to patent-eligible subject matter.
First Judge Linn was concerned that no claim construction was ever done in this case. The parties did agree that all of the claims required a computer to implement them. Having created this explicit tie to a machine, the claims were not directed to an abstract idea. He had grave concerns that the Court was rewriting the claims and ignoring limitations in order to distill down some essence of the claim, which he believed was improper.
Chief Judge Rader’s “Additional Reflections”
Chief Judge Rader also wrote some official “additional reflections,” which is highly unusual. He reflected on how the positions of the Judges have changed over the last 25 years, even though § 101 has not changed at all in that time period. He also reflected on the chaos of this opinion before concluding that “When all else fails, consult the statute!”
COnclusions—What to Make of All of This?
As a practical matter, this decision provides no precedential value. No rationale was able garner a majority of the Court. What it does signal is that the Federal Circuit cannot, at this, decide what to do with software patents. Five of the Judges (Lourie, Dyk, Prost, Reyna, and Wallach) appear hostile to software patents, while the other five (Rader, Moore, Linn, O’Malley, and Newman) are more receptive. Truly, one’s panel draw could be outcome determinative on appeals involving software patents.
Given the chaos, one could reasonably expect that the Supreme Court will have to step in and provide some clarity. Although, given its track record, even if it does grant cert on this case, it still might not provide clear guidance.
For some other, interesting views on this decision, see our friends at IPWatchdog (here, here, here, and here) and Patently-O (here).
On April 15, Thomson Reuters published a very interesting article that should be read by attorneys who represent clients in preparing and filing patent applications. The article can be found here. The article reports that at least three cases have been filed by publishers and copyright holders of scientific, technology and medical journals (American Institute of Physics and John Wiley & Sons Ltd.) against law firms for using copyrighted materials as part of the patent application process. The law firms have been accused of “wrongly using copyrighted works to promote their business interests.” In particular, the article reports that the plaintiffs are not complaining about copies being submitted to the USPTO, but rather, they are objecting to the fact that law firms made and kept additional copies of the copyrighted materials. The law firms have responded by arguing that, inter alia, copies made during the course of the representation constitute fair use. We will continue to monitor these cases.
While most people are familiar with patents for inventions, many do not realize that an individual can obtain a patent on new kinds of plants. In In re Walter F. Beineke, the Federal Circuit had to address what kinds of plants (in this case, trees) are eligible for patent protection. In a unanimous decision authored by Circuit Judge Dyk, the Court concluded that the applicant (Walter Beineke) was not entitled to a patent for white oak trees he discovered.
Beineke, a Professor Emeritus of Forestry and Natural Resources at Purdue University, discovered two large, hundred-year-old white oak trees in another’s front yard that appeared to display superior genetic traits than those of other white oaks (excellent timber quality and a strong central stem tendency). Beineke planted acorns from each of the trees and confirmed the superior traits of the trees. After years of studying these trees, he applied for plant patents on both trees.
The United States Patent and Trademark Office rejected his applications, finding that the trees were found in an uncultivated state, which was affirmed by the Board of Patent Appeals and Interferences, finding that there was no evidence that the trees had been planted by a person. Beineke appealed, and the Federal Circuit affirmed the rejections, although for a slightly different reason.
The case centered around the proper interpretation of 35 U.S.C. § 161, which allows the Patent Office to issue plant patents to anyone who:
invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state . . . .
The question was what level of human involvement is necessary to obtain a plant patent. Beineke argued that no human involvement is necessary, while the Patent Office argued that humans must play some role in the creation of the plant.
The Federal Circuit traced the history of the Patent Act, starting with the 1930 Act, which allowed plant patents. The Court noted that the statute and the courts applying it recognized that plant patents could not be granted for simply discovering a plant. There had to be some “exercise of the inventive faculty.”
In short, the provisions of the original 1930 Act, incorporated in the present plant patent statute, provided patent protection to only those plants (e.g., sports, mutants, and hybrids) that were created as a result of plant breeding or other agricultural and horticultural efforts and that were created by the inventor, that is, the one applying for the patent.
The Court then considered what effect, if any, the 1954 amendments had on the Plant Patent Act. One of the primary purposes of the amendments was to overrule a prior court decision and allow plant patents for newly found seedlings that were the result of human activity.
Taking all of this together, the Court found that Beineke was not entitled to a plant patent on either white oak tree. The Court concluded that Beineke discovered the white oaks by chance and that he could not demonstrate that the trees were the result of his (or anyone else’s) creative efforts. Given that the trees were over 100 years old when Beineke found them, they were also not “newly found seedlings” within the scope of the 1954 amendments.
Having made these determinations, the Court declined to address what is meant by “found in an uncultivated state” for purposes of § 161, leaving that question for another day and another case.
In Kappos v. Hyatt, 566 U.S. ___ (2012), decided on April 18, 2012, a unanimous Supreme Court affirmed a Federal Circuit decision that (a) a patent applicant faces no limitations on their ability to introduce new evidence in a Section 145 (35 U.S.C. § 145) proceeding beyond those already in place in the Federal Rules of Evidence and the Federal Rules of Civil Procedure, (b) the district court must take de novo factual findings of both new evidence presented on a disputed question of fact and the administrative record before the PTO, and (c) the district court may consider what weight to afford any new evidence taking into account whether the applicant had an opportunity to present the new evidence before the PTO.
In this case, Gilbert Hyatt (Respondent) filed a patent application that included 117 claims. The PTO’s patent examiner denied each of the claims for lack of an adequate written description pursuant to 35 U.S.C. § 112. Hyatt appealed the decision to the Board of Patent Appeals and Inferences (Board), and after receiving approval of 38 claims, Hyatt filed a Section 145 action in federal district court against the Director of the PTO (Petitioner). In support of his position that the patent application included an adequate written description, Hyatt included a written declaration with his submission to the district court setting forth the portions of the patent specification that, in his opinion, supported the claims that were deemed unpatentable by the Board. The district court refused to consider the declaration on the grounds that applicants are precluded from presenting new issues, at least in the absence of some reason of justice put forward for failure to present the issue to the PTO. The district court then applied a deferential substantial evidence standard under the Administrative Procedure Act (APA) in reviewing only the PTO’s administrative record and subsequently granted summary judgment to the Director.
Hyatt appealed to the Federal Circuit, and a divided panel affirmed the district court’s decision that the APA imposed restrictions on the admission of new evidence in a Section 145 proceeding and that the district court’s review is not wholly de novo. The Federal Circuit granted rehearing en banc and vacated the grant of summary judgment. The Supreme Court granted certiorari following the ruling from the en banc court. The Director argued before the Supreme Court that a district court should admit new evidence in a Section 145 action only if the proponent of the evidence had no reasonable opportunity to present the evidence to the PTO in the first instance. Also, the Director argued that, when new evidence is introduced, the district court should overturn the PTO’s factual findings only if the new evidence clearly establishes that the agency committed error in its findings.
The Supreme Court began its analysis of the Director’s arguments by first reviewing the text of Section 145: “An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director . . . . The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Board, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law.” The Supreme Court concluded that the plain text neither imposes unique evidentiary limits in district court proceedings nor establishes a heightened standard of review for factual findings by the PTO.
The Supreme Court next considered the Director’s argument that the statute should be read in light of traditional principles of administrative law under the APA. The Director argued that (a) the district court should defer to the PTO’s factual findings and (b) in line with the traditional rule that a party first must exhaust administrative remedies, the district court should consider new evidence only if the party did not have an opportunity to present the evidence to the PTO. The Supreme Court disagreed with the Director’s positions. First, the Director conceded that Section 145 proceedings are not limited in the same manner as judicial review of an agency decision under the APA, which is typically limited to the administrative record. The Supreme Court noted that the PTO cannot account for evidence that was not presented, and as a result, the district court must make its own findings de novo. Also, the Supreme Court determined that administrative exhaustion does not apply to Section 145 because, while administrative exhaustion avoids premature interruption of the administrative process, the PTO’s process is complete by the time a Section 145 proceeding occurs.
The Supreme Court then analyzed the evidentiary and procedural rules in effect at the time when Congress enacted Section 145 in 1952. The Supreme Court traced the history of Section 145 back to the 1836 Act, which established the Patent Office, and noted that the specific language in Section 145 originated in the 1870 Act. According to the Supreme Court, in 1878, the relevant provision of the 1870 Act was codified by Congress as Revised Statute § 4915 (R.S. 4915), which served as the immediate predecessor to Section 145. The parties agreed that R.S. 4915 and judicial interpretations of that statute provided the foundation for the understanding of Section 145. The Supreme Court analyzed the two primary cases describing the nature of R.S. 4915, and concluded that Congress intended that applicants would be free to introduce new evidence in Section 145 proceedings subject to the rules applicable to all civil actions and that, where new evidence is presented to the district court, a de novo finding would be necessary.
Finally, in agreeing with the Federal Circuit that the district court may decide what weight to afford an applicant’s newly admitted evidence, the Supreme Court noted that the proper means for the district court to accord respect to decisions of the PTO would be through the court’s broad discretion over the weight to be given to such new evidence in Section 145 proceedings.
What constitutes patentable subject matter under 35 U.S.C. § 101 has been a topic of keen interest, especially since the Supreme Court issued its decision in Bilski v. Kappos, 130 S. Ct. 3218 (2010) that rejected the Federal Circuit’s machine-or-transformation test. On Tuesday, the Federal Circuit further clarified what can be patented, affirming a rejection under § 101 of a claim for detecting fraud in credit card transactions over the internet. Written by Judge Dyk, the unanimous decision in CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) found that claims involving mental processes that can performed by the human mind are not patent eligible.
The Underlying Claims
Two claims were at issue in CyberSource. They both involved a method for detecting fraud in credit card transactions over the internet by looking at the customer’s IP address. The claims were very broad with no specific algorithms for identifying fraud claimed.
The first was a method claim with no linkage to any physical structures:
3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:
obtaining information about other transactions that have utilized an Internet address that is identified with the [ ] credit card transaction;
constructing a map of credit card numbers based upon the other transactions and;
utilizing the map of credit card numbers to determine if the credit card transaction is valid.
The second was a “Beauregard claim,” which is a claim to a computer readable medium containing programing instructions regarding a particular process:
2. A computer readable medium containing program instructionsfor detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:
obtaining credit card information relating to the transactions from the consumer; and
verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent,
wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,
wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;
[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;
[b] constructing a map of credit card numbers based upon the other transactions; and
[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.
Claim 3 Is an Unpatentable Abstract Mental Process
The Federal Circuit found that the method of claim 3 was nothing more than an abstract mental process. While the Supreme Court in Bilski rejected the machine-or-transformation test as the sole test of patentability under § 101, the Federal Circuit began its analysis there. It found that the claim recited no machines and did not perform any transformations. Following Bilski, it considered whether the claim was nonetheless patent eligible. It concluded that it was not because the claim recites a mental process, which is unpatentable under the Supreme Court’s decision in Gottschalk v. Benson, 409 U.S. 63, 67 (1972). Here, all of the steps of claim 3 could be performed by the human mind using a pen and paper. The Court suggested that if claim 3 had recited a more complex algorithm that could not have been performed easily using pen and paper, the result may have been different.
Thus, claim 3’s steps can all be performed in the human mind. Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101. Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental method steps as part of a process containing non-mental steps, but rather because computational methods which can be performed entirely in the human mind are the types of methods that embody the “basic tools of scientific and technological work” that are free to all men and reserved exclusively to none.
Claim 2 Is Also an Unpatentable Abstract Mental Process
Claim 2 required a slightly different analysis. It basically recited the same method as in claim 3, but it tied it to a computer readable medium. The question was whether tying it to this structure created a machine that was patent eligible under § 101. The Federal Circuit concluded that it was not sufficient because the underlying invention was the method, not a manufacture for storing computer-readable information. To be patent eligible, the machine “must impose meaningful limits on the claim’s scope,” so the “the incidental use of a computer to perform the mental process of claim 3 does not impose a sufficiently meaningful limit on the claim’s scope.” Thus, claim 2 (like claim 3) was not patent eligible under § 101.
The Federal Circuit Is Looking Carefully at Software/Method Claims
Inventors seeking to patent computer software or method claims should consider this decision carefully. If the claims simply recite steps that a human could perform with pen and paper, there is a real chance that the claim might not be eligible for patenting. Merely adding a limitation requiring a computer to perform the steps may not be sufficient to overcome this problem. Courts can look behind the words of the claim to determine what the underlying invention is and whether the use of a computer is meaningful. As always, careful claim drafting is very important if an inventor wants to obtain and enforce his or her patent.
In the CBT Flint Partners, LLC v. Return Path, Inc.decision last week (No. 2010-1202, -1203), the Federal Circuit considered when a court can rewrite a claim during litigation to fix mistakes in drafting. The Court concluded that a district court has the authority to rewrite claims to correct obvious errors even if there are multiple ways to “fix” the claim, as long as all the possible solutions leave the claim with the same scope and meaning.
The Claim at Issue
The patent at issue in CBT Flint involved an e-mail spam filtering system. One of the claim limitations required a computer to detect and analyze an e-mail. The patent drafters forgot the word “and” between these words, which led to problems. The claim at issue (with the problematic term highlighted) read:
13. An apparatus for determining whether a sending party sending an electronic mail communication directed to an intended receiving party is an authorized sending party, the apparatus comprising:
a computer in communication with a network, the computer being programmed to detect analyze the electronic mail communication sent by the sending party to determine whether or not the sending party is an authorized sending party or an unauthorized sending party, and wherein authorized sending parties are parties for whom an agreement to pay an advertising fee in return for allowing an electronic mail communication sent by the sending party to be forwarded over the network to an electronic mail address associated with the in-tended receiving party has been made.
The district court determined that there were three possible ways to fix this problem—(1) remove the word “detect”; (2) remove the word “analyze”; or (3) add the word “and” between the words “detect” and “analyze.” Because it felt that it was debatable which solution should be used, it concluded it lacked the authority to rewrite the claim. Thus, it found the claim indefinite under 35 U.S.C. § 112, ¶ 2 and granted summary judgment in favor of the defendant. The Federal Circuit reversed.
Case Law History for Rewriting Claims
The Federal Circuit noted that courts have long had the power to fix obvious drafting mistakes, citing to the Supreme Court’s decision in I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 442 (1926). The Court further noted that it held in Novo Industries L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003) that“[a] district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.”
The Court determined that the district court erred because the three alternative solutions it was considering were not meaningfully different when viewed from the perspective of one skilled in the art. The concepts of “detecting” and “analyzing” were implicit in the rest of the claim, even if one of these terms was explicitly deleted. Thus, the scope and meaning of the claim were the same regardless of which solution the district court could have adopted. In these situations, the district court does have the authority to fix this kind of obvious mistake.
Practice Pointers and Takeaways From This Case
While this case suggests that courts are willing to bail out patentees and fix mistakes in claims during litigation, patentees should not rely on courts fixing their problems for them. In this particular case, the Federal Circuit found that the three possible solutions were all functionally identical. That will not always be the case, and, it is far more likely it will not be the case.
Obviously, the best practice is not to make mistakes in the first place, but that is often easier said than done. Patentees should be especially vigilant about reviewing the claims during prosecution to make sure that there are no mistakes. In addition, patentees should make sure to review the final, published version from the Patent Office, as mistakes sometimes do happen in the printing process. If a mistake happens after issuance, there are mechanisms to correct a patent (e.g., a certificate of correction). Finally, if a patentee is going to sue on a patent, it is especially important to review the patent again to make sure there are no mistakes. Don’t count on the court to bail you out!
The other takeaway from this case from the defense viewpoint is that courts may be more reluctant to find claims indefinite for obvious mistakes or typographic errors. Significant errors are still likely to doom patent claims, but it is not prudent to count on minor errors sinking them, too.
The bottom line with minor mistakes is that neither side should be confident in how a court will react. It may fix them, but it may not. And how a court will act likely depends on some very specific facts.
When drafting a patent, there are a number of factors that a patent attorney needs to consider. I saw this post on the PresumptionofValidity blog that nicely summarizes some of them in a checklist form. With a little bit of planning before you file the application, you can avoid a number of costly and sometimes fatal mistakes. It’s well worth the read (as are a number of other articles on the blog).
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