Indefiniteness and Best Mode

1. Indefiniteness and Best Mode Patent Law Sept. 9, 2010

2. Disclosure/Enablement, § 112 ¶ 1Written Descriptionof Claimed Invention ¶ 1Enablementof one skilled in the art without undue experimentation of: • how to make • how to use ¶ 1Best Modecontemplated by inventor ¶ 2,6Claims- definiteness

3. Disclosure/Enablement, § 112 U.S.C. § 112: ¶ 1 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.

4. Definiteness, § 112 U.S.C. § 112: ¶ 2 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.

5. Orthokinetics v. Safety Travel Chairs Page 328

6. 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

8. 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 . . . .

9. 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 claims.

10. Definiteness • 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

11. Ortho – cont’d • Notice function is key • Uncertainty for competitors is a concern • But: claim drafting must be tested by standards in the relevant field

12. Standard Oil Co. v. American Cyanamid Co. – p. 332 “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 saidcopper ion being composed of copper in a combined valence state of Cu° + Cu+, Cu° + Cu++, or Cu° + Cu+ + Cu++”

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

14. “Slightly soluble” • Defined in the art; but not specifically related to the phrase “partially soluble”

15. 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. 333

16. Special problem: approximate claim language • “About” • “Approximately”

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

19. 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.

20. 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.

21. The “fragileness” of the “fragile gels” of the present invention contributes to the unique and surprising behavior and advantages of the present invention.

22. 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.

23. “[I]t 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.”

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

30. 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.

31. 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.

32. New Aggresiveness in Software Claims

33. Datamize v. Plumtree, 417 F.3d 1342 (Fed Cir 2005) • Federal Circuit invalidated claim to designing “aesthetically pleasing” user interface

36. 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.”

37. Aristocrat Tech. v. Int’l 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

38. “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, . . . .

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

40. 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.

41. 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.”

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

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

44. 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;

45. b. establishing a course to be offered online, comprising i. generating a set of course files for use with teaching a course;ii. 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);

46. 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.

47. Blackboard‘s broadest claim (claim 1) includes several means-plus-function clauses, including a "means for assigning a level of access and control."

48. 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:

49. 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.

50. Fed. Cir. Opinion, 574 F.3d at 1383 "[W]hat 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."