Federal Circuit ("CAFC") Affirms Description is Separate from Enablement in Patent Specification

In an en banc, 9-2 decision, the CAFC, affirmed that Section 112, first Paragraph of 35 U.S.C. requires that a a patent specification not only describe the manner of making and using a claimed invention, but also separately requires a written description of the claimed invention.  Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., Fed. Cir., No. 2008-1248, 3/22/2010.

The court emphasized that if Congress had intended enablement to be the sole description requirement of section 112, first paragraph, the statute would have been written differently.  Furthermore, the rationale for a patent grant is a quid pro quo exchange between the inventor and the US Government.

The court found that a "vague functional description and an invitation for further research does not constitute a written description of a specific inhibitor."  Slip Op. at page 33.

This case illustrates the hazards of rushing, too soon to file a patent application in a rapidly developing technology.  If the application is filed too soon, before sufficient disclosure is available to support the claims, the validity of the claims could be challenged successfully.  On the other hand, the application should still be filed as soon as possible to avoid a priority of invention contest at the US Patent and Trademark Office.

This case arose in the context of the pharmaceutical technologies where some applications are filed before specific examples are available to support species (dependant) claims.  The impact of this case is not limited to pharmaceuticals however.  Many Internet, business method patents were filed with specifications that lacked in depth details concerning the claimed subject matter or some of the claims.  The validity of many of the business method patents claims may now be at risk.

Workflow may Pickup at US Patent and Trademark Office by the Third or Fourth Quarter of this Year

The workflow at the US Patent and Trademark Office ("USPTO") has slowed down dramatically over the past couple of years.  First Office Actions, which historically issued within 12-18 months after filing a new patent application are now taking over two years.  Even though the delays are added to the patent life under the American Inventors' Protection Act, the delay creates problems for inventors and patent owners because they do not know know the extent of the patentability of their inventions until the USPTO issues an opinion on patentability or when a patent actually issues.

In an effort to speed up the slow turning gears at the USPTO, a hiring campaign in underway.  The hiring is targeting people who either have patent examining experience or experience working in the Intellectual Property field and who have the skills necessary to examine patent applications.  The recent announcement drew in over 4,000 applications.  The USPTO has published a schedule that describes when decisions should be made on who will be hired from the large bank of applicants.  According to the schedule, individuals who are hired could start work as early as May 10th, June 7th or July 6th, 2010.

This is all potentially great news to the patent community and to inventors and invention owners.  We will all benefit when the USPTO returns to a reasonably paced workflow.

Social Networking Patents Emerge from US Patent and Trademark Office (“USPTO”)

Amazon, Google and Facebook have each recently been granted US Patents for social networking related patents.  Each of the patents have issued in the wake of the important case of In re Bilske, 545 F.3d 943 (Fed. Cir. Oct. 30, 2008), cert. Granted sub nom. Bilski v. Doll, 129 S. Ct. 2735 (June 1, 2009) (No. 08-964), renamed Bilski v. Kappos, No. 08-964.  A decision on the Bilske case is expected sometime this spring. 

The issue in the Bilske case involves what test or set of criteria governs the determination of whether a claim to a process is patentable under 35 USC § 101.  Specifically, the questions now before the US Supreme Court are:

1.      1.   [w]hether the Federal Circuit erred by holding that a ‘process’ must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (‘machine-or-transformation’ test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for ‘any new and useful process beyond excluding patents for ‘laws of nature, physical phenomena, and abstract ideas’,” and

2.       2. “[w]hether the Federal Circuit's ‘machine-or-transformation’ test for patent eligibility…contradicts the clear Congressional intent that patents protect ‘method[s] of doing or conducting business.’ 35 U.S.C. § 273.” See Bilski v. Kappos, No. 08-964 (June 1, 2009) at  http://origin.www.supremecourtus.gov/qp/08-00964qp.pdf.

US Patent 7,606,725 (“the Amazon patent”) issued October 20, 2009 for a networked computer system that provides various services for assisting users in locating, and sharing information with other users.  The system provides a user interface through which users can establish contact relationships with other users. The system also provides functionality for users to identify contacts of their respective contacts. For example, in one embodiment, each respective user can conduct a search of contacts of the respective user. The search may be limited in scope to users that satisfy one or more particular search criteria, such as users that reside in a particular region or are affiliated with a particular group.

US Patent 7,668,832 (“the Google patent”) issued February 23, 2010 for a computer-implemented method of determining and using geolocation information to target advertisements, determine scoring and pricing information about the advertisements.

US Patent 7,669,123 (“the Facebook patent”) issued February 23, 2010 for generating news items regarding activities associated with a user of a social network environment and attaching an informational link associated with at least one of the activities, to at least one of the news items, as well as limiting access to the news items to a predetermined set of viewers and assigning an order to the news items. The method further may further include displaying the news items in the assigned order to at least one viewing user of the predetermined set of viewers and dynamically limiting the number of news items displayed.

The US Supreme Court decision could render the validity in doubt of many business method patents, including the Amazon, Google and Facebook patents.  

The US Patent and Trademark Office issued Interim PatentSubject Matter Eligibility Examination Instructions on August 24, 2009 after the CAFC Bilske decision.  In the examples provided, example claim 5 is determined to be eligible subject matter because comparing is performed using a microprocessor, whereas example claim 6 is not eligible subject matter even though it provides method steps that include sorting, ranking and comparing, but does not explicitly state using a microprocessor.  Based on this criteria, the Facebook patent may be at risk because the only reference to a computer is in the second paragraph, “storing the plurality of activities in a computer…”  The Amazon and Google patents by comparison, do satisfy the criteria by performing transformational processes by a computer.

Business method patents will be front and center soon after the US Supreme Court issues its ruling and there will be plenty at stake.

US Patent and Trademark Office (“USPTO”) issues guidelines for Computer Readable Media

The USPTO has suggested amending any claim that is drawn to a computer readable media that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 USC § 101 by adding the limitation “non transitory” to the claim.  The Notice isavailable here.

The suggestion follows the case of In Re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), in which signals were claimed that were watermarked.  That is, the original signals were manipulated so as to imbed the signal with additional data.  Because patent claims during examination at the USPTO are interpreted as broadly as possible, if claims are not limited to being non-transitory, the USPTO will reject them as being non-patentable subject matter.

The only situation where the suggested amendment could raise issues of new matter, is when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment.

Federal Circuit Equates Specific Intent with Deliberate Indifference for Inducement to Infringe a Patent

IN SEB S.A. and T-FAL Corporation v. Montgomery Ward et al., the Court of Appeals for the Federal Circuit (“CAFC”) considered the appeal of a host of issues concerning the infringement of US Patent 4,995,312 (“the ‘312 patent”) relating to a jury verdict and the district court’s post-trial rulings. The ‘312 covered deep fryers having a metal pan surrounded by an air cavity that sits within a plastic material housing that can be ordinary-grade plastic that does not have high heat resistance.

Pentalpha was one of three named defendants. The other two defendants, Montgomery Ward and Global-Tech Appliances were buying deep fryers from Pentalpha that were accused of infringing the ‘312 patent. In addition to questions of claim construction and infringement, the Court had to consider on appeal whether Pentalpha acted with sufficient intent to be liable for inducement to infringe the ‘312 patent by Montgomery Ward and Global-Tech Appliances.

The CAFC first cited its precedent that inducement requires a showing of “specific intent to encourage another’s infringement” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 699 (Fed. Cir. 2008) (quoting DSU Medical, 471 F.3d at 1306). But the CAFC then relied upon Crawford-EL v. Britton, 951 F.2d 1314, 1318 (D.C. Cir. 1991) for the proposition that “specific intent” in the civil context is not so narrow as to allow an accused wrongdoer to actively disregard a known risk that an element of the offense exists. And further, specific intent is equated to deliberate indifference.

Based on the facts of the case, the CAFC found that even though the SEB had not produced direct evidence that Pentalpha SEB acted with deliberate indifference based on the following:

It had purchased an SEB deep fryer in Hong Kong and copying all but the cosmetics.

It failed to inform its patent counsel that it copied the SEB deep fryer when it requested a freedom to operate search opinion.

Its Its president, John Sham, was well versed in the U.S. patent system and understood SEB to be cognizant of patent rights as well. Sham testified that he was the named inventor on 29 U.S. patents and that Pentalpha and SEB had an earlier business relationship that involved one of Pentalpha’s patented steamer products.

The CAFC also noted that the case did not “purport to establish the outer limits of the type of knowledge needed for inducement” A patentee may only need to show, as the Insituform case suggests, constructive knowledge with persuasive evidence of disregard for clear patent markings may be enough.

BLACK MAIL refused for Lack of Proof of Bone Fide Intent to Use the Mark

Research in Motion Limited ("RIM"), well known owner of the BLACKBERRY mark, opposed the registration of the mark BLACK MAIL by the NBOR Corporation ("NBOR"). Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 to application Serial No. 77090059 filed on January 24, 2007.

Applicant filed the mark BLACK MAIL for: "computer software for facilitating interactive communication, namely, chat, electronic mail, voice, instant messages, text transfer, multi-media transfer, live collaboration, motion pictures, and sound over a global computer information network and other networks"

RIM opposed the registration of BLACK MAIL on two grounds,

• likelihood of confusion with its mark BLACKBERRY under 15 USC § 1052(d); and
  
• lack of a bone fide intent to use the mark in commerce.
  

The Trademark Trial and Appeal Board ("TTAB") did not reach the issue of likelihood of confusion because it found that NBOR could not establish by a preponderance of the evidence that it had a bone fide intent to use BLACK MAIL in commerce.

The TTAB listed the following as what NBOR did not provide to prove a bone fide intent to use the mark:

• it has not offered any goods or services for sale under the involved mark;
  
• the mark has not been used and no plans have been made as to how the mark may be used;
  
• there is no projected date of first use in commerce;
  
• no channels of trade have been formulated or planned for the future;
  
• the classes of consumers and geographic areas of sales have not yet been determined;
  
• applicant has not undertaken any market studies, surveys, or focus groups; and
  
• no documents exist regarding plans for expansion and growth of the product and service lines under the mark.
  

NBOR had previously filed two trademark applications for the same mark and both applications were abandoned because no Statements of Use were filed. NBOR's argued that its previously filed applications and twenty-three letters or emails to its attorney relating to the present and applications a bone fide intent to use the mark. The TTAB rejected its argument:

Evidence bearing on bona fide intent is "objective" in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant's testimony as to its subjective state of mind. That is, Congress did not intend the issue to be resolved simply by an officer of applicant later testifying, "Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future."

J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19:14 (4th ed. 2009).

This case provides a reminder that a trademark application under Section 1(b) of the Lanham requires objective documentation of a bone fide intent to use the mark no later than the beginning of the opposition period and objective steps should be taken to use the mark at the time the application is filed.

CAFC Expands Ruling to Leave Open Question of Abandoned versus Dedicated to the Public

The Court of Appeals for the Federal Circuit (“CAFC”) found the District Court for the Southern District of New York erred in its claim construction of critical claim terms in Shindler Elevator Corp. et al. v. Otis ElevatorCompany,  2009-1146 (CAFC, January 15, 2010).  As a result, the District Court’s summary judgment of non-infringement by Otis of US Patent 5,689,094 (“the ‘094 patent”) ruling was vacated.   The accused elevator control system was installed at 7 World Trade Center in New York City.

The ‘094 patent includes two independent claims, both of which include the disputed terms at issue:   “information transmitter” and “recognition device”.

In Fig. 2, the recognition devices 5 mounted in access areas 33 and 34. When a passenger 35 is recognized in access area 33, an elevator is dispatched, and a display device 18, which is mounted above the elevator door and/or at an input device 19, tells the passenger which elevator to take. A proposed destination floor is announced acoustically or is displayed visually on display device 18. If the passenger wishes to change his destination floor, he may do so manually at input device 19.

Claim 1 is representative of the asserted claims and includes the disputed claim elements “information transmitter” (and “recognition device”. 

1. An elevator installation having a plurality of elevators comprising:

a recognition device for recognizing elevator calls entered at an entry location by an information transmitter carried by an elevator user, initializing the entry location as a starting floor of a journey;

a control device receiving the recognized elevator call and allocating an elevator to respond to the elevator call, through a predetermined allocating algorithm;

a call acknowledging device comprising one of a display device and an acoustic device to acknowledge recognition of the elevator call and to communicate a proposed destination floor to the elevator user;

the recognition device, mounted in the access area in the vicinity of the elevators and spatially located away from elevator doors, actuating the information transmitter and comprising a unit that independently reads data transmitted from the information transmitter carried by the elevator user and a storage device coupled between the unit and the control device;

the recognition device one of transmitting proposed destination floor data, based upon the data transmitted from the information transmitter, to the control device, and, transmitting elevator user specific data,  based upon individual features of the elevator user stored in the storage device, to the control device.

The District Court’s Claim Construction:

The district court construed “information transmitter” to mean “a device that communicates with a recognition device via electromagnetic waves, after being actuated by that recognition device, without requiring any sort of personal action by the passenger.”  It construed “recognition device” to mean “a device that actuates and reads data transmitted by an information transmitter without requiring any sort of personal action by the passenger.” Id. In the claim construction order, the district court declined to specify the particular kind of “personal action” prohibited under its construction, but stated that it “rules out, not just standing in front of the recognition device, or inputting data into the information transmitter by hand, but any and all types of personal action by the passenger.”

The district court issued its summary judgment ruling on November 17, 2008. Although it had previously said that “any and all types of personal action” were prohibited under its construction, the district court refined its understanding of “personal action” on summary judgment to expressly permit “walking into the monitored area.”

The CAFC Claim Construction and Analysis:

The CAFC majority held that the District Court’s claim construction was too narrow and construed the claims to allow the user to take “personal action” to the extent that he or she brings the “information transmitter” within range of the “recognition device”.

The majority relied upon the claim language, the specification and the file prosecution history to construe the claims.

Claim Language:

The majority found that in claim 1, the term “information transmitter” itself suggests that the transmitter is a thing, separate and apart from an “elevator user”, which transmits information. The claim also provides that “elevator calls [are] entered at an entry location by an information transmitter.” Thus, at least with regard to the transmission of information and the entry of calls, it is the information transmitter—not the elevator user—that performs these tasks.

Carrying a transmitter is thus a type of “personal action” that is expressly required in the claims. The majority held that nowhere does claim 1 limit the act of carrying to any specific manner of carrying.

Claim 7 depends from claim 1 and adds the phrase “wherein the recognition device reads a key having a code.”  Because a user would need to use his hands to bring the transmitter key within range of the recognition device to unlock the door, or to clock in or out of work, these types of personal action are implicitly permitted in claim 7 and, by extension, in claim 1.

Specification:

The phrase “personal action” is used only once in the specification, in the following sentence:

The advantages achieved by the invention reside in the fact that the desired journey destination is communicated automatically to the elevator control by [(1)] the information transmitters carried by the elevator users or by [(2)] the recognition of features of the elevator users without any personal action being required by the passenger.

The majority supports the broad reading of personal action, because a passenger would need to place his hand on the optical recognition device for it to read his fingerprints, this cannot be the “personal action” to which the sentence refers.

Prosecution History:

The majority interpreted the prosecution where it describes the invention as operating “automatically, contactlessly, and independently of the orientation of the information transmitter” as modification actions that take place only after the passenger has brought the transmitter within range of the recognition device—specifically, the actuation of the transmitter, the entry of call commands, and the selection of a destination floor.  The majority therefore concluded that applicants’ statement during the prosecution did not constitute a “clear and unmistakable” disavowal of personal action for the limited purpose of bringing the transmitter within range of the recognition device. Instead, the majority read the prosecution history in this case “as support for the construction already discerned from the claim language and confirmed by the written description.” citing 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1365 (Fed. Cir. 2008).

Dissent:

The dissent agrees that the “without requiring any sort of personal action” construction imposed by the district judge unduly limited the scope of the claims.  Dependent claim 7 contemplates using a key (or a card swipe) to enter the building and at the same time transmitting the user’s elevator data.  In other words, the device would be “hands-free” and “automatic” even though the user has to take elaborate action to bring the device within range.

The specification and prosecution history make no such distinction, and consistently emphasize the hands-free and automatic nature of the device without regard to whether it is in range or not.

The majority disputes the dissent’s position in footnote 2, stating that “The embodiment was not “abandoned,” it simply was never claimed in the application that led to this particular patent.” 2009-1146 at page 11, fn 2. 

That raises the question of how does abandoned compare with the well established rule that disclosed, but unclaimed matter is dedicated to the public. Johnson & Johnston Associates, Inc. v. R.E. Service Co., Nos. 99-1076, -1179, -1180, 2002 WL 466547 (Fed. Cir. Mar. 28, 2002) (en banc) (per curiam).   There were no divisional patent applications filed from this application that resulted in the ‘094 patent, so according to Johnson & Johnson, the embodiment was dedicated to the public.  This case leaves open the question:  what is the difference between “abandonment” and “dedication to the public”?