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Indefiniteness and Best Mode


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Title: Indefiniteness and Best Mode

Indefiniteness and Best Mode
  • Patent Law
  • Sept. 15, 2011

1 Written Description of Claimed Invention
Disclosure/Enablement, 112
1 Enablement of one skilled in the art without
undue experimentation of
how to make
how to use
1 Best Mode contemplated by inventor
2,6 Claims - definiteness
U.S.C. 112 1
Disclosure/Enablement, 112
The specification shall contain a written
description of the invention, and of the manner
and process of making and using it, in such full,
clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains,
or with which it is most nearly connected, to
make and use the same, and shall set forth the
best mode contemplated by the inventor of
carrying out his invention.
U.S.C. 112 2
Definiteness, 112
The specification shall conclude with one or more
claims particularly pointing out and distinctly
claiming the subject matter which the applicant
regards as his or her invention.
End of Best Mode as a Litigation Defense
  • Currently, a PTO examiner may reject a patent
    application for failure to state the best mode
    AND best mode may be pleaded as a defense in
  • Beginning on the date of enactment of the
    Leahy-Smith AIA, best mode can no longer be
    raised as a invalidity defense.
  • However, withholding of best mode information
    still seems to be a potential ground for and
    inequitable conduct/unenforceability defense.

Amendment to 35 USC 182
  • (3) Invalidity of the patent or any claim in
    suit for failure to comply with
  • (A) any requirement of section 112, except that
    the failure to disclose the best mode shall not
    be a basis on which any claim of a patent may be
    canceled or held invalid or otherwise

Orthokinetics v. Safety Travel Chairs
  • Page 337, 5th ed.

  • United States Patent RE30,867 Gaffney February
    16, 1982 Travel chair The front wheel assembly
    of a wheel chair is dimensioned so that it will
    easily pass through the space between the seat of
    an automobile and the doorframe thereof. The rear
    wheel assembly is retractable upwardly under the
    seat portion to a position which permits the seat
    portion and the retracted rear wheel assembly to
    be set upon the automobile seat. The wheel chair
    and the person seated therein may be easily
    placed on the automobile seat and removed
    therefrom while the person remains seated in the
    wheel chair.
  • Inventors Gaffney Edward J. (Pewaukee, WI)
    Assignee Orthokinetics, Incorporated (Waukesha,
    WI) Appl. No. 135602Filed March 31, 1980

(No Transcript)
  • Orthokinetics Claim 1
  • 1. In a wheel chair having a seat portion, a
    front leg portion, and a rear wheel assembly, the
    improvement wherein said front leg portion is so
    dimensioned as to be insertable through the space
    between the doorframe of an automobile and one of
    the seats thereof whereby said front leg is
    placed in support relation to the automobile . .
    . .

Orthokinetics holding
  • The phrase so dimensioned is as accurate as the
    subject matter permits, automobiles being of
    various sizes. As long as those of ordinary skill
    in the art realized that the dimensions could be
    easily obtained, 112, 2d requires nothing
    more. The patent law does not require that all
    possible lengths corresponding to the spaces in
    hundreds of different automobiles be listed in
    the patent, let alone that they be listed in the

  • Orthokinetics standard
  • Viewed from perspective of one skilled in the art
  • Varies by field
  • Distinguish spec from claims
  • Enable claims in spec
  • Definiteness a matter of claim drafting

Ortho contd
  • Notice function is key
  • Uncertainty for competitors is a concern
  • But claim drafting must be tested by standards
    in the relevant field

Standard Oil Co. v. American Cyanamid Co. p. 341
  • The process for hydrolyzing a nitrile . . .
    comprising contacting said n itrile with water .
    . . in the presence of copper ion, said copper
    ion being at least partially soluble in water,
    the nitrile or in both water and nitrile and said
    copper ion being composed of copper in a combined
    valence state of Cu Cu, Cu Cu, or Cu
    Cu Cu

Definitness issue
  • No standard definition of partially soluble in
    (1) the spec, or (2) the art, the relevant field

Slightly soluble
  • Defined in the art but not specifically related
    to the phrase partially soluble

  • Although Dr. Greene had the right, and the skill
    and background, to have defined the term, she
    chose not to thus the term is too vague to
    particularly point out and distinctly claim the
    subject matter which the patentee claims as
    her invention, and the patent is invalid.
    -- p. 342

Indefiniteness what is insolubly ambiguous?
  • Some cases are generous in construing claims
    wide room to take account of understanding of one
    skilled in the art, and of context
  • Example Energizer Holdings, Inc. v.
    International Trade Commission, 435 F.3d 1366
    (Fed. Cir. 2006) book p. 343

Antecedent basis
  • 1. An electrochemical cell comprising an alkaline
    electrolyte, a cathode , and an anode gel
    comprised of , wherein the cell contains less
    than 50 parts of mercury per million parts by
    weight of the cell and said zinc anode has . . . .

2nd problem
  • Limitation for zinc anode is apparently tied to
    test conditions, but is stated as a limitation
    for each and every anode in operation
  • Can the court fill in its common sense
    understanding of what the drafter was trying to
    achieve with the limitation?

Common sense? Skill in the art?
  • The issue here is not correction of error,
    but understanding of what the claim covers. When
    the meaning of the claim would reasonably be
    understood by persons of ordinary skill when
    read in light of the speci?cation, the claim is
    not subject to invalidity upon departure from
    the protocol of antecedent basis. casebook
    5th ed. 343-44

BUT compare
  • Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d
    1371, 1372
  • Claim limitation heating the resulting
    batter-coated dough to a temperature in the range
    of about 400 to 800 F.

Special problem approximate claim language
  • About
  • Approximately

Halliburton v. M-I LLC
  • 514 F.3d 1244
  • January 25, 2008 (Fed Cir)

(No Transcript)
  • 1. A method for conducting a drilling operation
    in a subterranean formation using a fragile gel
    drilling fluid comprising
  • (a) an invert emulsion base
  • (b) one or more thinners
  • (c) one or more emulsifiers and
  • (d) one or more weighting agents, wherein said
    operation includes running casing in a borehole.

  • Spec A fragile gel as used herein is a gel
    that is easily disrupted or thinned, and that
    liquifies or becomes less gel-like and more
    liquid-like under stress, such as caused by
    moving the fluid, but which quickly returns to a
    gel when the movement or other stress is
    alleviated or removed, such as when circulation
    of the fluid is stopped, as for example when
    drilling is stopped.

  • The fragileness of the fragile gels of the
    present invention contributes to the unique and
    surprising behavior and advantages of the present

  • While patentees are allowed to claim their
    inventions broadly, they must do so in a way that
    distinctly identifies the boundaries of their
    claims. The fluids of the 832 invention may
    provide less resistance to shear (i.e., break
    more quickly) than the prior art fluids, but the
    degree of improved speed remains ambiguous. Thus,
    it is unclear whether a person of ordinary skill
    in the art would have interpreted this claim as
    having an upper bound of fragility.

  • It seems clear that the patent drafter could
    have provided more specifics in this case, either
    with quantitative metrics as to how quickly the
    gel must break (time to break at given
    conditions) and how strong the gel must be
    (strength at given conditions), or with
    sufficient examples of fragile gels of the
    invention to show which such fluids fell within
    the scope of the claims.

See also . . .
  • Young v. Lumenis Inc., 83 USPQ2d 1191 (Fed. Cir.
    2007), 83 USPQ2d 1191 (Fed Cir 2007)

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  • Claims for method of declawing cat using laser
    surgery, which require forming circumferential
    incision in epidermis near the edge of the
    ungual crest of the claw, are not rendered
    indefinite by use of term near, since near,
    as used in claims, is not insolubly ambiguous and
    does not depart from its ordinary and customary
    meaning of close to or at edge of ungual crest.

  • Descriptions and figures in specification convey
    understanding that phrase near the edge of the
    ungual crest means close to or at most at the
    distal i.e., far edge of the epidermis, since
    use of near,as opposed to precise numerical
    measurement, is appropriate in view of fact that
    term describes location on animal, and size of
    appendage and amount of skin required to be
    incised will vary from one animal to another
    based on size.

New Aggresiveness in Software Claims
Datamize v. Plumtree, 417 F.3d 1342 (Fed Cir 2005)
  • Federal Circuit invalidated claim to designing
    aesthetically pleasing user interface

(No Transcript)
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417 F.3d at 1349
  • Merely understanding that aesthetically
    pleasing relates to the look and feel of
    interface screens, or more specifically to the
    aggregate layout of elements on interface
    screens, fails to provide one of ordinary skill
    in the art with any way to determine whether an
    interface screen is aesthetically pleasing.

Aristocrat Tech. v. Intl Game Tech., 521 F.3d
1328 (Fed Cir. 2008)
  • Invention allowed user to select winning
    combination in slot machines
  • Held claim including control means for
    allowing user selection, without disclosure of
    algorithm or details, was indefinite under
    section 112 par. 2

  • 1. A gaming machine having display means
    arranged to display a plurality of symbols in a
    display format having an array of n rows and m
    columns of symbol positions, game control means
    arranged to control images displayed on the
    display means, . . . .

Minimal spec
  • Mentions game control means only two times,
    besides the claims
  • Only embodiment shown is a general purpose
    computer or microprocessor

521 F.3d at 1333
  • In cases involving a computer-implemented
    invention in which the inventor has invoked
    means-plus-function claiming, this court has
    consistently required that the structure
    disclosed in the specification be more than
    simply a general purpose computer or
    microprocessor. The point of the requirement that
    the patentee disclose particular structure in the
    specification and that the scope of the patent
    claims be limited to that structure and its
    equivalents is to avoid pure functional claiming.

521 F.3d at 1338
  • Aristocrat was not required to produce a listing
    of source code or a highly detailed description
    of the algorithm to be used to achieve the
    claimed . . . . It was required, however, to at
    least disclose the algorithm that transforms the
    general purpose microprocessor to a special
    purpose computer programmed to perform the
    disclosed algorithm.

See also
  • Finisar Corporation v. The DirectTV Group, 523
    F.3d 1323 (Fed. Cir., April 18, 2008).

  • Blackboard, Inc. v. Desire2Learn, Inc.574 F.3d
    1371Fed. Cir. 2009.

  • An sic method for providing online education
    method sic for a community of users in a
    network based system comprising the steps of
  • a. establishing that each user is capable of
    having redefined sic predefined
    characteristics indicative of multiple
    predetermined roles in the system and each role
    providing a level of access to and control of a
    plurality of course files

  • b. establishing a course to be offered online,
  • i. generating a set of course files for use with
    teaching a courseii. transferring the course
    files to a server computer for storage andiii.
    allowing access to and control of the course
    files according to the established roles for the
    users according to step (a)

  • c. providing a predetermined level of access and
    control over the network to the course files to
    users with an established role as a student user
    enrolled in the course and
  • d. providing a predetermined level of access and
    control over the network to the course files to
    users with an established role other than a
    student user enrolled in the course.

  • Blackboards broadest claim (claim 1) includes
    several means-plus-function clauses, including a
    "means for assigning a level of access and

  • Before the district court, Blackboard asserted
    that the structure that performs the recited
    means for assigning function is a server
    computer with an access control manager and
    equivalents thereof. On appeal, Blackboard again
    argues that the structure that performs that
    recited function is the server computer's
    software feature known as the access control
    manager or ACM. The entirety of the
    description of the access control manager in the
    specification is contained in a single paragraph,
    which reads as follows

  • Access control manager 151 creates an access
    control list (ACL) for one or more subsystems in
    response to a request from a subsystem to have
    its resources protected through adherence to an
    ACL. Education support system 100 provides
    multiple levels of access restrictions to enable
    different types of users to effectively interact
    with the system (e.g. access web pages, upload or
    download files, view grade information) while
    preserving confidentiality of information.

Fed. Cir. Opinion, 574 F.3d at 1383
  • "What the patent calls the 'access control
    manager' is simply an abstraction that describes
    the function of controlling access to course
    materials, which is performed by some undefined
    component of the system. The ACM is essentially a
    black box that performs a recited function. But
    how it does so is left undisclosed."

  • The fact that an ordinarily skilled artisan might
    be able to design a program to create an access
    control list based on the system users'
    predetermined roles goes to enablement. The
    question before us is whether the specification
    contains a sufficiently precise description of
    the "corresponding structure" to satisfy section
    112, paragraph 6, not whether a person of skill
    in the art could devise some means to carry out
    the recited function. 574 F. 3d at 1385

But see . . .
  • IP Innovation, LLC v. Red Hat, Inc., 2009 WL
    2460982 (E.D.Tex. Aug 10, 2009) distinguishing
    Blackboard, and holding that disclosure of actual
    program code is NOT required to meet definiteness

Best Mode
U.S.C. 112 1
Disclosure/Enablement, 112
The specification shall contain a written
description of the invention, and of the manner
and process of making and using it, in such full,
clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains,
or with which it is most nearly connected, to
make and use the same, and shall set forth the
best mode contemplated by the inventor of
carrying out his invention.
Best mode contemplated by inventor
  • Not all inventors contemplate a best mode
  • Only if you do are you required to disclose

Chemcast Corp v Arco Industries
  • Page 343

  • United States Patent 4,081,879 Rubright April 4,
    1978 Sealing member
  • An improved sealing member utilizable as a plug
    button or grommet is disclosed. An annular
    locking portion made of a rigid material is
    integrally bonded to a flexible elastomeric body
    . . .

(No Transcript)
  • The rigid annular shaped portion of the sealing
    member has a tapered shape and is slightly larger
    than the opening in which the sealing member is
    to be positioned the member has to be tilted or
    cocked in order to be inserted in place. Once the
    rigid annular locking portion is inserted beyond
    the opening, the sealing member is securely held
    and locked in place by the outer edge of the
    annular portion.

  • Inventors Rubright Phillip L. (Berkley, MI)
    Assignee Chemcast Corporation (Detroit, MI)
    Appl. No. 653268 Filed January 28, 1976

(No Transcript)
(No Transcript)
From Chemcast Spec.
  • The annular locking portion 12 of the sealing
    member 10 is preferably comprised of a rigid
    castable material, such as a castable resinous
    material, either a thermoplastic or thermosetting
    resin, or any mixtures thereof, for example,
    polyurethane or polyvinyl chloride. The portion
    12 also should be made of a material that is
    sufficiently hard and rigid so that it cannot be
    radially compressed, such as when it is inserted
    in the opening 19 in the panel 20. Materials
    having a durometer hardness reading of 70 Shore A
    or harder are suitable in this regard.

Chemcast - holding
  • Rubright knew that Reynosol had developed R-4467
    specifically for Chemcast and had expended
    several months and many hundred man-hours in
    doing so. Because Chemcast used only R-4467,
    because certain characteristics of the grommet
    material were claimed elements of the 879
    invention, and because Rubright himself did not
    know the formula, composition, or method of
    manufacture of R-4467, section 112 obligated
    Rubright to disclose the specific supplier and
    trade name of his preferred material.

Best Mode updated
  • High Concrete Structures v. New Enterprise Stone
    and Lime (Fed. Cir. July 29, 2004).
  • On appeal from a district courts summary
    judgment based on failure to comply with the best
    mode requirement, the Federal Circuit (Newman,
    Mayer, Clevenger) reversed and remanded.

Source http//
  • High Concrete sued New Enterprise for
    infringement of its patent on double-tees for
    adjusting the orientation of bulky cargo. (U.S.
    Patent No. 5,947,665). On defendants motion, the
    district court held the patent invalid for
    failing to disclose that the inventors'
    preferred mode of practicing the invention was to
    use the crane to tilt the loaded frame at the
    time that the crane loaded the cargo onto the

  • The Federal Circuit reversed
  • Deliberate concealment is not charged. The best
    mode requirement of 112 is not violated by
    unintentional omission of information that would
    be readily known to persons in the field of the
    invention Known ways of performing a known
    operation cannot be deemed intentionally
    concealed absent evidence of intent to
    deliberately withhold that information.

Patent Reform Eliminate Best Mode HR 1908
  • Amend Section 282(b)
  • (3) Invalidity of the patent or any claim in suit
    for failure to comply with
  • (A) any requirement of section 112 of this title,
    other than the requirement that the specification
    shall set forth the best mode contemplated by the
    inventor of carrying out his invention