©2011 haynes and boone, llp 1 functional language in claims david o’dell haynes and boone llp...

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©2011 Haynes and Boone, LLP

Functional Language in Claims

David O’Dell Haynes and Boone LLP

[email protected]

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© 2011 Haynes and Boone, LLP

Agenda

• Claim Preambles• Means plus function• Product by process• Software/circuit

functionality

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Preamble

• Does it limit the claim?– Case by case determination (MPEP 2111.02)

• When is it a limitation?– When it is “necessary to give life, meaning,

and vitality” to a claim

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Is the Preamble a Limitation?

• Limits the structure of the claim – yes– Any terminology in the preamble that limits the structure of

the claimed invention must be treated as a claim limitation.– Elements in the preamble appear in the body of the claim.

• Purpose or intended use – no– If the body of a claim fully and intrinsically sets forth all of

the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction

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Preamble

• Examples:– “A surgical drill comprising:”

• Does the claim recite any structure or operation directed to surgery?

• Or, does the claim only recite a motor and chuck?

– “For use in cellular communications, a device for connecting two components, comprising:”• Does claim body recite cellular-based

structure?• Or, is this a mechanical connector?

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Preamble

• However– Functional language in a claim

preamble can help to get your application into a proper art unit• But, KSR allows examiners to consider art

in different fields of endeavor

– Also, a new use for an old device may be patentable• Must rebut prima facie obviousness

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Preambles

• Takeaways – Consider a short preamble

• Examiners ignore them for patentability• Infringers argue them for non-infringement

– If you cite elements in the preamble, reference them in the body of the claim

– Some elements in the preamble may be helpful for classification or other reasons

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Means Plus Function (MPF)

35 USC 112, para 6• 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, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

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– What is an “equivalent”?• performs the identical function “in substantially

the same way, with substantially the same result.” General Protecht Group, Inc. v. ITC (2010)

– Carrying out a function magnetically is NOT equivalent to carrying it out mechanically as a matter of law

• If an alternative exists at the time the patent was filed, but it was not disclosed in the spec, then the alternative may not be an “equivalent.”

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• Takeaways – Consider using non-MPF claims– MPF claims can be helpful if your

specification has many embodiments.• Give many examples of different

structures in the specification

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Product-by-Process

– What is a “product-by-process” claim?• Product is defined at least in part in terms

of the method or process by which the product is made

– Example 1: a device made by the process of claim x.

– Example 2: a trench formed by a high-pressure water excavation process

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Product-by-Process

– What is not a “product-by-process” claim?• Intended use of a device

– Discussed previously with preambles

• A process that is actually a structural limitation.

– Example 3: an extruded layer.

• A function of a claim element.– Example 4: a computer for calculating x.– (This will be discussed in the following section.)

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Product-by-Process

– Do the process elements in product-by-process claims serve as limitations?•The answer depends on the

situation

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Product-by-Process

– Consider the following four cases:• In re Thorpe, 777 F.2d 695 (Fed Cir 1985)• Atlantic Thermoplastics v. Faytex Corp.,

970 F.2d 834 (Fed Cir 1992)• Abbot Labs v. Sandoz, 566 F.3d 1282

(Fed Cir. 2009, en banc)• Amgen v. F. Hoffmann-La Roche, 580

F.3e 1340 (Fed Cir 2009)

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Product-by-Process

In re Thorpe (Fed Cir. 1985)– Pertains to patent prosecution– “The patentability of a product does not

depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”

– Cited in current version of MPEP 2113

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Product-by-Process

Atlantic Thermoplastics (Fed Cir. 1992)– Pertains to infringement– “process terms in product-by-process claims

serve as limitations, in determining infringement.”

– Contradicted earlier case, Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565 (Fed. Cir. 1991)(“the correct reading of product-by-process claims is that they are not limited to product prepared by the process set forth in the claims.”)

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Product-by-Process

Abbot Labs v. Sandoz (Fed Cir. 2009)– Pertains to infringement– En banc, attempts to resolve differences

between Atlantic and Scripps.– “process terms in product-by-process claims

serve as limitations in determining infringement.” citing Atlantic.

• Note that Judge Rader wrote both Atlantic and Abbot.

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Product-by-Process

Amgen v. F. Hoffman (Fed Cir. 2009)– Pertains to validity before the court– when “determining validity of a product-by-

process claim, the focus is on the product and not on the process of making it.”

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Product-by-Process

Amgen v. F. Hoffman (Fed Cir. 2009)– (continued)– The Court discusses Atlantic, but appears to be

following Thorpe.– This violates the axiom: “claims must be

interpreted and given the same meaning for purposes of both validity and infringement analysis.” Amazon.com v. Barnes andNoble.com, 239 F.3d 1343 (Fed. Cir. 2001)

– Note, this axiom does not apply to treating claims differently before the PTO and the court. See, e.g., In re Swanson

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– Patentability Before the PTO – No (rebuttable)• “Even though product-by-process claims are

limited by and defined by the process, determination of patentability is based on the product itself. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” MPEP 2113

• Burden to overcome rejection shifts to patentee.

Are Product-by-Process Terms Limitations?

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– Infringement Before the Court - Yes• “[P]rocess terms in product-by-process

claims serve as limitations in determining infringement.” Abbot Labs, citing Atlantic.


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– Validity Before the Court - Maybe• According to Amgen, they are not.• However, it still seems that one can

argue that claims should be interpreted consistently for validity and infringement


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Product-by-Process

– Summary:•Patentability before the PTO: No

(rebuttable)•Infringement before a court: Yes•Validity before a court: Maybe

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Product-by-Process

– Takeaways • Product-by-process claims seem to get

the worst of all worlds– It is harder to obtain a patent. – It is harder to show infringement.– They may or may not help the patentee

uphold the validity of the claim in court

• Therefore, avoid drafting product-by-process claims if possible

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Additional Case of Interest

Ex parte Rodriguez, (BPAI 2009) Claim 1:

An apparatus comprising:a system configuration generator configured

to generate a random system configuration file of a structurally variable and complex system;a system builder configured to (i) build a

system level netlist and (ii) generate system parameters in response to said random system configuration file; and …

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Claim 1 (continued) a system verification environment

configured to verify said structurally variable and complex system in response to said system level netlist, wherein said simulation verification environment is configured to provide automatic random verification of said structurally variable and complex system in response to said random system configuration file.

Ex parte Rodriguez

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Board ruled: All claim elements were means

plus function. (e.g., “a system configuration

generator configured to generate a random system configuration file of a structurally variable and complex system”)

Ex parte Rodriguez

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Ex parte RodriguezThe means plus function claim elements were rejected because there was no structure (algorithm) in the specification (indefinite and non-enabling)

•Spec had a high-level flow chart, but did not list any source code•Spec stated a POSA would know

“appropriate programming” to implement the invention.

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Ex parte Rodriguez

BPAI stated: “In particular, the specification does not disclose any specific algorithm that could be implemented on a general purpose computer to provide [the claimed function].”

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Ex parte RodriguezBPAI further stated:

•“[F]unctional limitations must be commensurate with the scope of the supporting disclosure.”•“As such, the specification may not

enable the full scope of the functional language of the claim without undue experimentation.”

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Ex parte RodriguezTakeaways: – In software/circuit patents, be careful to support the claim functions in spec

• software algorithms• flow charts or source code• circuit diagrams

– Be careful for unintended MPF claims. – Understand that functional language can be very broad.

©2011 haynes and boone, llp 1 functional language in claims david o’dell haynes and boone llp...

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