Post on 02-Dec-2021
Trolls vs Pirates and the
Battle over Patent Quality
Dennis Crouch
Tremendous Change
in the
Patent System
Incentive for Ambiguity
One of the greatest problems of the current patent system is the incentive to write patents and patent claims that obscure the “invention” and the legal scope of the patent.
Costs of Ambiguity
•Both Justice and Efficiency Concerns
•Hiding Invalid Patents •Costly Information
Means-Plus-Function Claim Language
35 U.S.C. § 112(f)
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, [HOWEVER] such claim shall be construed to cover [ONLY] the corresponding structure, material, or acts described in the specification and equivalents thereof.
O'Reilly v. Morse, 56 U.S. 62 (1854)
The Telegraph Patent Case
History
Morse: [I Claim] the use of the motive
power of the electric or galvanic current, [without] limiting
myself to the specific machinery..
New Model
Means for A
Means for B
Means for D
Wright Brothers Patent
means whereby said rudder is caused to present
to the wind …the smaller angle of incidence
Halliburton v. Walker 329 U.S. 1 (1946)
A claim which describes the most crucial element in a "new" combination in terms of what it will do,
rather than in terms of its own physical characteristics or its arrangement in the new combination,
is invalid as a violation of [the indefiniteness requirement]
Means-Plus-Function Claim Language
35 U.S.C. § 112(f)
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof,
[HOWEVER] such claim shall be construed to cover [ONLY] the corresponding structure, material, or acts described in the specification and equivalents thereof.
Narrower in Appearance but Broader in Construction
From: Means for calculating a risk variable To: Instructions for calculating a risk variable
Morse: [I Claim] the use of the motive
power of the electric or galvanic current, [without] limiting
myself to the specific machinery..
Shrinking Power of MPF
Means for A
Means for B
Means for D
Non-Means
Function
Non-Means
Function
Non-Means
Function
Computer Related Claims
Williamson v. Citrix (2015)
• Eliminating strong presumption surrounding the “means” term.
Policy Grounds
Too Broad
– Preemption
– Enablement / WD
– Did not invent that breadth
Fuzzy Boundaries
– Impacts risk averse parties
– Gums-up market
– Rewards non-invention
• Trolls vs. Pirates: Pick your Boogieman
• Cuozzo v. Lee:
–Potential for Linking PTO to Courts
–Administrative Advisory Claim Construction
Giving Meaning to the Claims •Another indefiniteness case: Nautilus (2014)
– Reasonably Certain standard
– On remand, CAFC Found “Spaced Relationship” reasonably certain.
•USPTO Remains Focused on applying the “Broadest Reasonable Interpretation” (New Training for Examiners)
•Quality Initiative has new focus on making details “of record”
26
In re Packard (Fed. Cir. 2014)
Holding:
We conclude that, when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b).
Indefiniteness Hurdles
InsolublyAmbiguous
ReasonablyCertain
PTO Prima FacieCase based on
BRI