Drafting the Best Possible Claims

Andrew J. Dillon

I'll have groundsMore relative than this—the claim's the thingWherein 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 bit-mapped 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