Patent applications should be thorough
and complete before they're filed with the PTO.
Editor's Note: This article originally was published
in the April 12, 1999 edition of Legal Times
"Rex Rappaport, can I help you?"
"Glad that I finally got hold of you. My name's Harry Hurry, and I'm interested in protecting my company's technology with patents," Harry said. "I'm looking for a bid and a timetable. If you know your stuff, you can do it fast."
"Well," Rex began, "there have been significant changes in the patent laws over the last few years which . . ."
Harry interrupted, "Yeah, yeah, I know how this works: Get the broad scope or rough outline of the patent down, and almost anything can get `fixed' later at trial . . ."
Now it was Rex's turn to interrupt.
"That's not quite true anymore. In fact, there have been significant developments in the case law in order to ensure predictability and remove the uncertainties of juries, patent interpretation, etc. These decisions place a premium on correctly drafting the patent document in the first instance. The courts are no longer so forgiving to poorly drafted patent documents. Indeed, they're getting a bit snappish."
"Ohhhh, I didn't know. Tell me more."
So Rex began building his case:
In Markman v. Westview Instruments, Inc., 116 S. Ct. 1384, 38 U.S.P.Q.2d 1461 (1996), the Supreme Court significantly reduced jury participation in patent cases. The Court held that the practice of having juries interpret the patent document was no longer valid; rather, interpreting the patent document, including the breadth of protection provided by same, was properly done by the judge. The Court was quite clear:
The question here is whether the interpretation of a so-called patent claim, the portion of the patent document that defines the scope of the patentee's rights, is a matter of law reserved entirely for the court, or . . . [whether] a jury [should] determine the meaning of any disputed term of art about which expert testimony is offered. We hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.
That decision wasn't necessarily good news for patent holders. Juries can be generous about less-than-perfect patent documents and claims, whereas judges are likely to hew to a stricter or more legalistic interpretation of the actual language.
Markman was only the beginning of the bad news for patent holders. In the years since, the U.S. Court of Appeals for the Federal Circuit has, slowly but surely, been confining the scope of patent protection fairly closely--and arguably too closely--to the patent document. For example, in Lockwood v. American Airlines, Inc., 107 F.3d 1565, 41 U.S.P.Q.2d 1961 (Fed. Cir. 1997), the court held that a patent document disclosing a television set with a keypad, connected to a central computer with a videodisc player, did not (surprisingly) support patent claims directed to an individual terminal containing a videodisc player. In the end, the patent holder may have lost because of a poorly drafted patent application. According to the Federal Circuit:
It is the disclosures of the applications that count. . . . [The patent] extends only to that which is disclosed. While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification.
In another decision, Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 U.S.P.Q.2d 1829 (Fed. Cir. 1998), the Federal Circuit held that a disclosure for a conical-shaped prosthesis did not provide a written description for a hemispherically shaped prosthesis. One would think that these arguably evident modifications would or should have been covered by the patent. Not so, said the court.
In yet another decision, The Gentry Gallery, Inc. v. The Berkline Corporation, 134 F.3d 1473, 45 U.S.P.Q.2d 1498 (Fed. Cir. 1998), the court stated that a narrowly drafted patent specification will result in narrow patent protection. Gentry's patent involved a low-tech unit of a sectional sofa in which two reclining seats faced in the same direction. A console was placed between the two recliners and included controls for those recliners. The patent application described the controls as being located "on" the console. Gentry attempted to have the patent claims interpreted (or, rather, stretched) to cover the situation where the controls were not located on the console.
In concluding that this interpretation was not supported by the original patent application, the Federal Circuit stated:
In this case, the original disclosure clearly identifies the console as the only possible location for the controls. . . . [C]laims may be no broader than the supporting disclosure, and therefore a narrow disclosure will limit claim breadth. Here, [Gentry's] disclosure unambiguously limited the location of the controls to the console. Accordingly, the district court clearly erred in finding that he was entitled to claims in which the recliner controls are not located on the console.
All these Federal Circuit decisions demonstrate that a properly drafted patent application is essential. Otherwise, the patent document may seriously limit the scope of patent protection.
CLEARER IS BETTER
And it is not just a too narrowly drafted patent application that can spell trouble later. If the patent application or prosecution history is unclear as to the scope of protection being asserted, the Federal Circuit has interpreted the patent claims narrowly. For example, in Athletic Alternatives Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 37 U.S.P.Q.2d 1365 (Fed. Cir. 1996), the court narrowly interpreted the word "between" in the patent claims because they were unclear as to its definition. According to the Federal Circuit:
Were we to allow [Athletic Alternatives Inc.] successfully to assert the broader of the two senses of ``between'` against Prince, we would undermine the fair notice function of the requirement that the patentee distinctly claim the subject matter disclosed in the patent from which he can exclude others temporarily. Where there is an equal choice between a broader and a narrower meaning of a claim, and there is an enabling disclosure that indicates that the applicant is at least entitled to a claim having the narrower meaning, we consider the notice function of the claim to be best served by adopting the narrower meaning.
Similarly, in Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 47 U.S.P.Q.2d 1418 (Fed. Cir. 1998), the court stated:
Because the applicant has the burden to "particularly point out and distinctly claim the subject matter which the applicant regards as his invention," 35 U.S.C. ' 112, 6 2 (1994), if the claim is susceptible to a broader and a narrower meaning, and the narrower one is clearly supported by the intrinsic evidence while the broader one raises questions of enablement under ' 112, 6 1, we will adopt the narrower of the two.
If these decisions did not put enough pressure on the patent attorney to draft a document that is neither narrow in scope and nor unclear in asserting a broad interpretation, there is yet another rule that has emerged with respect to what are commonly known as means-plus-function claims (as well as step-plus-function claims).
In B. Braun Medical, Inc. v. Abbott Laboratories, 124 F.3d 1419, 43 U.S.P.Q.2d 1896 (Fed. Cir. 1997), the court imposed an additional requirement for the patent specification if means-plus-function claims are to be found appropriate:
Section 112, paragraph 6 states that a means-plus-function claim "shall be construed to cover the corresponding structure . . . described in the specification." We hold that, pursuant to this provision, structure disclosed in the specification is "corresponding" structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing ' 112, 6 6.
Thus, a patent specification that fails to adequately link the means to structure in the specification will be considered deficient. (The one bit of good news for patent holders is that the vitality of this rule is arguable, particularly since there is no statutory requirement that the specification provide this "linking" information.)
LIMITING PRESUMPTION
If all these decisions were not enough, the Supreme Court in Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 117 S. Ct. 1040, 41 U.S.P.Q.2d 1865 (1997) created a presumption of prosecution history estoppel, in which presumption can be used to limit the scope of the doctrine of equivalents. The Court held that patent claim amendments are assumed to create estoppels, unless the record clearly indicates that such amendments were not made to overcome the prior art. The Court reasoned:
We think the better rule is to place the burden on the patent-holder to establish the reason for an amendment required during patent prosecution. . . . Where no explanation is established, however, the court should presume that the [Patent and Trademark Office] had a substantial reason related to patentability for including the limiting element added by amendment. In those circumstances, prosecution history estoppel would bar the application of the doctrine of equivalents as to that element.
Finally, mistakes made during prosecution will not be forgiven or corrected in litigation later. For example, if the inventor fails to appreciate the full scope of his invention and unnecessarily limits the patent during prosecution, he will not be able to later to broaden the scope in subsequent litigation. As the Federal Circuit explained in Bai v. L & L Wings, Inc., 160 F.3d 1350, 48 U.S.P.Q.2d 1674, 1675 (Fed. Cir. 1998):
Bai also argues that the amendment could not have been made to overcome prior art because it was not necessary to overcome the prior art rejection. We disagree. It is now too late in the game . . . When an applicant disagrees with the examiner's prior art rejection and fails to prevail by argument, he has two choices: either to amend the claim or to appeal the rejection. He may not both make the amendment and then challenge its necessity in a subsequent infringement action on the allowed claim. Bai made his choice and amended the claim. A patentee does not have a second chance to relitigate the merits of a prior art rejection that caused an amendment to be made to gain allowance of the claims.
The Federal Circuit has acknowledged that this may raise the cost of patent prosecution. In Sage Products Inc. v. Devon Industries Inc., 126 F.3d 1420, 44 U.S.P.Q.2d 1103, 1109 (Fed. Cir. 1997), for example, the court reasoned:
If Sage desired broad patent protection for any container that performed a function similar to its claimed container, it could have sought claims with fewer structural encumbrances. Had Sage done so, then the Patent and Trademark Office (PTO) could have fulfilled its statutory role in helping to ensure that exclusive rights issue only to those who have, in fact, contributed something new, useful, and unobvious. Instead, Sage left the [PTO] with manifestly limited claims that it now seeks to expand through the doctrine of equivalents. However, as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure. . . .
This court recognizes that such reasoning places a premium on forethought in patent drafting. Indeed this premium may lead to higher costs of patent prosecution. However, the alternative rule -- allowing broad play for the doctrine of equivalents to encompass foreseeable variations, not just of a claim element, but of a patent claim -- also leads to higher costs. Society at large would bear these latter costs in the form of virtual foreclosure of competitive activity within the penumbra of each issued patent claim. . . . Given a choice of imposing the higher costs of careful prosecution on patentees, or imposing the costs of foreclosed business activity on the public at large, this court believes the costs are properly imposed on the group best positioned to determine whether or not a particular invention warrants investment at a higher level, that is, the patentees.
THINK AHEAD
What should a careful patent holder do? The key words are "a premium on forethought." In the last few years, the Federal Circuit has made the point repeatedly that patent applications must be drafted correctly in the first instance.
In other words, the patent application should include or describe any and all technical alternatives to the invention. Proper attention must also be given to the appropriate scope of patent claims before the application is filed to ensure that there is sufficient technical description to support the claims.
During prosecution, the prior art should be closely analyzed. Unnecessary arguments and/or claim amendments must be avoided, lest the ultimately granted patent claims be too narrow. And the appropriate variety of patent claims, from broad to narrow in scope, must be provided.
". . . Any questions?" Rex asked.
"No, I don't think so. The point is: Before any patent application is filed and during prosecution, my lawyer and I need to engage in a lot of hard and creative thought," Harry recapped. "If I'm not careful, I could get stuck with a lemon!"