Transcript Materials

Patent Profanity
Jerry Suva, Baker Botts LLP
© 2015
Oh #$@#$ !
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What are dirty patent words and where do they come from?
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"Means" - Williamson v. Citrix and a host of new dirty words
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Negative claim language - "no" or "not"
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"Invention"
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Optional claim language - "if"
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Words of necessity and importance - "must"
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Unachievable Words - "optimal"
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Words of admission - "obvious", "prior art", etc.
Patent Profanity: Dirty Words I Ought Not Say
Words that cause unintended consequences to
the scope and validity of the patent claims.
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Context Matters!
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Who says it is profanity?
 "Because I say so"
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Who says it is profanity?
 "Because I was trained that way"
 Examiner
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Why is it profanity?
 "Because I was trained that way"
 Examiner
 Opposing counsel
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Who says it is profanity?
 "Because I was trained that way"
 Examiner
 Opposing counsel
 Case law
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"Means"
 Signal for limiting claims to means-plus-function
construction
 Means-plus-function claims
 Perhaps valuable
 Functional language
 When unintentional, nearly always terrible
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Means-Plus-Function Limitations
 Purely functional claim limitation
 "means for ______ing"
 E.g., "detecting means for identifying a malware component in a file"
 Governed by 35 USC § 112(f)
 An element…
 may be expressed as a means or step for performing a specified
function
 without the recital of structure…and
 such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.
 Pre-AIA: 35 USC § 112, sixth paragraph
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http://patentlyo.com/patent/2013/01/means-plus-function-claiming.html
Before Williamson v. Citrix
 If claim does not recite "means for _____ing"
  "strong [presumption] that is not readily overcome" that
the claim is not means-plus-function
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Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed.Cir. 2004)
 Exception: "nonce" words that do not connote sufficient
structure to one of skill
 Overwhelmingly,
 No "means for ____ing"  no MPF
 "Means for ____ing"  MPF
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Williamson v. Citrix
 Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir.
2015) (en banc)
 No more "strong" presumption of no-MPF
 Just a "regular" presumption
 Standard:
 "Whether the words of the claim are understood by persons
of ordinary skill in the art to have a sufficiently definite
meaning as the name for structure."
 MPF if claim fails to
 "recite sufficiently definite structure", or
 "recites function without reciting sufficient structure for
performing that function."
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Williamson v. Citrix (cont.) (non-en banc)
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Term at issue - “distributed learning control module”
 No well understood structural meaning in the field
 "module" is a nonce word: a generic black box, a replacement for "means"
  MPF
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Terms specifically identified as triggering MPF:
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module
mechanism
element
device
Williamson v. Citrix (cont.) (non-en banc)

Term at issue - “distributed learning control module”
 No well understood structural meaning in the field
 "module" is a nonce word: a generic black box, a replacement for "means"
  MPF
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Terms specifically identified as triggering MPF:
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module
mechanism
element
device
DIRTY WORDS
Considerations - Whether MPF (dirty words)?
[prefix] [Nonce] [configured to do stuff with other stuff]
 The whole claim limitation must be considered
 Nonce
 Prefix
 distributed learning control module
 Later structural elements, if any
 distributed learning control module for/including __________
 In Williamson:
"distributed learning control module for receiving communications
transmitted between the presenter and the audience member
computer systems and for relaying the communications to an
intended receiving computer system and for coordinating the
operation of the streaming data module.”
was MPF.
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Considerations - Whether MPF? (cont.)
 Inputs and outputs
 How does the candidate "nonce" interact with other components in
the claims?
 More detailed interaction  more likely not a "nonce"
 May be sufficient to impart structure as recited
 Extrinsic evidence
 Proof of use of term and/or prefix for those skilled in the art
 Dictionaries, expert testimony, other patents
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Example Terms Triggering MPF (Dirty Words)
Williamson decision
 module
 mechanism
 element
 device
Pre-Williamson decisions
 means
 widget
 system
 assembly
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Post-Williamson decisions
 system for detecting
failure…
 control device
 processing device
 communication device
 video recording device
 packetization module
 echo cancellation module
 coupling mechanism
 microphone interpretation
mechanism
 introducer
Example Terms Not Triggering MPF Post-Williamson
Not a dirty word - Post-Williamson decisions
 selector component
 adapter component
 integration component
 processor
 code
 computer-readable medium
 instructions
 circuit
 telecommunications interface module
 Cf. echo cancellation module, packetization module
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Eliminating Dirty Words in view of Williamson
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Do not say "means" unless you specifically want MPF
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Do not use the MPF Dirty Words, or add structure around them
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Possible alternatives:
 Circuit
 But see PTAB case
 Instructions
 Software interface
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Draft method figures, explain your algorithms
Negative Limitations - Just Say No?
 "A car that is not blue"
All Cars
Blue
Cars
 "Not including a blue car"
Universe
Blue
Cars
diagrams not to scale
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Negative Limitations - Just Say No?
 MPEP 2173.05(i) - They are ok!
 "The current view of the courts is that there is nothing inherently
ambiguous or uncertain about a negative limitation. So long as the
boundaries of the patent protection sought are set forth definitely, albeit
negatively, the claim complies with the requirements of 35 U.S.C.
112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Some older cases
were critical of negative limitations because they tended to define the
invention in terms of what it was not, rather than pointing out the
invention."
 Examples
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“R is an alkenyl radical other than 2-butenyl and 2,4-pentadienyl”
 Dirty words - indefinite under older case
 In re Schechter, 205 F.2d 185, 98 USPQ 144 (CCPA 1953).
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“incapable of forming a dye with said oxidized developing agent”
 Allowed - definite
 In re Wakefield, 422 F.2d 897, 899, 904, 164 USPQ 636, 638, 641 (CCPA 1970)
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Negative Limitations - Recast "no" or "not"
 "not forwarding the received packet"
 "dropping the received packet"
 "ignoring the received packet"
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"The Invention"
 Does "invention" or "the present invention" limit
the claims?
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"The Invention"
 Dirty word: "Whan a patent thus describes the features of the
‘present invention’ as a whole, this description limits the scope of
the invention."
 Verizon Service Corp. v. Vonage Holdings Corp., 503 F.3d 1295,
1308 (Fed. Cir. 2007)
 Not a dirty word: "[W]e have found that use of the phrase
“present invention” or “this invention” is not always so limiting,
such as where the references to a certain limitation as being the
“invention” are not uniform, or where other portions of the
intrinsic evidence do not support applying the limitation to the
entire patent."
 Absolute Software, Inv. v. Stealth Signal, Inc., 659 F. 3d 1121,
1136-1137 (Fed. Cir. 2011) (internal citations omitted)
 Why risk it? Little upside for using "invention"
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Optional Claim Language - "If"
 MPEP 2111.04: "Claim scope is not limited by claim language
that suggests or makes optional but does not require steps to be
performed…"
 "adapted to"
 "wherein"
 "whereby"
 each determined by the specific facts of the case
 Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005)
 Griffin v. Bertina, 283 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir.
2002)
 Applicable to "if X then Y"?
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Optional Claim Language - "If" - Recast
 "if X then Y"
 "determine X"
 "based on a determination of X, doing Y"
 What about "if X then Y; if ~X then Z"?
 What about "when X, do Y"?
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Words of Importance, Necessity, and Absolutes
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"is" ?
"must"
"need"
"necessary"
"only"
"required"
"always"
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"essential"
"key"
"critical"
"never"
"important"
"every"
"all"
Unachievable Words
 "optimize"
 "minimize"
 "maximize"
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Words of Admission
 "obvious"
 "prior art"
 "known"
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