Patently Strategic Podcast: CAFC Chronicles

The distinction between getting declare building proper and getting it unsuitable is the distinction between a sound patent and an invalid patent – and probably the distinction between hundreds of thousands of {dollars} awarded from infringement choices vs. ending up with a nugatory piece of paper. On this month’s podcast episode, we’re speaking about pricey tales of declare building fails. That is the ultimate episode in a three-part collection targeted on the basics of patent claims and declare building. Part one mentioned the fundamentals of claims and declare methods. Part two laid down the necessities round declare building. This last episode within the arc is a really sensible software of all of it, explored by means of three illustrative U.S. Court docket of Appeals for the Federal Circuit (CAFC) patent instances which can be chock-full of actionable declare drafting insights.

Episode Overview: Pricey Tales of Declare Development Fails

Dr. David Jackrel, President of Jackrel Consulting, leads a dialogue into three real-world functions for patent declare building, as examined and determined upon by the CAFC. That is the best courtroom within the land below the Supreme Court docket for dealing with mental property disputes – and establishes a lot of the authorized precedent the patent world has to go on … for higher and for worse. The panel dissects the claims for every case, discusses the courtroom’s evaluation, and gives ideas and methods for more practical declare drafting in mild of the strengths and weaknesses of the litigated patents.

These instances spotlight some severe potential pitfalls in declare building and illustrate that when deciphering claims, the plain language of the claims and the written description each matter. Due to this fact, declare building requires an in depth consideration of the specification along with cautious inspection of the declare language itself.

If the Specification Says So…

In Michael Kaufman v. Microsoft Corp. (Fed. Cir. 2022), Kaufman sued Microsoft for infringement and was awarded $7M in damages. Each events appealed, and the infringement was affirmed by the Fed. Cir. The declare preamble contained the phrase “computerized” however the physique of the declare didn’t, and the courtroom discovered that the declare language permitted some human actions.

The claims additionally contained an inventory of modes with the conjunction “and,” nonetheless, the courtroom discovered that, on this particular case, the phrase “and” can embrace “or.” The Fed. Cir. famous that the specification repeatedly used the phrase “and” in ways in which clearly included “or.” You didn’t misinterpret that. For instance, the Fed. Cir. wrote that “the only embodiment described” in one of many patents didn’t embrace the entire claimed processes, and “thus we consider the declare language with a powerful presumption that it encompasses the state of affairs the place a mode show integrates some, however not all, of the enumerated processes.”

Plain Declare Language and Written Description

In Best Medical International (BMI) v. Elekta Inc (Fed. Cir. 2022), BMI owns patent US 6,393,096 (‘096) which has a 1999 precedence date. The PTAB discovered ‘096 unpatentable in two inter partes opinions, stating that an individual having abnormal talent within the artwork (PHOSITA) would have had pc programming expertise. “Petitioner Elekta Inc.’s knowledgeable had that have; Patent Proprietor Greatest Medical Worldwide Inc.’s (BMI) didn’t.” The CAFC dismissed the attraction of declare 1 (lack of jurisdiction) and affirmed all different thought-about claims as apparent after contemplating the related Graham components.

The Graham components included stating that “a pc” and “the pc” might be a set of computer systems, “based mostly on the plain declare language and the written description.” The Fed, Cir. additionally clarified that claims aren’t restricted to their most well-liked embodiments. On this case, the claimed phrase “conformality management components” was decided to not essentially be “mathematically outlined parameters,” because the mathematically outlined limitation didn’t seem within the claims, solely in an embodiment described within the specification.

Incorporation by Reference of A into B Does Not Convert Invention A into Invention B

In Finjan LLC v. ESET LLC (Fed. Cir. 2022), the asserted patents have been a part of a household of patents directed to methods and strategies for detecting pc viruses in a “Downloadable.” The district courtroom discovered the asserted patents indefinite based mostly on the phrase “small” as used within the courtroom’s building of a “Downloadable.” The Fed. Cir. reversed the district courtroom’s declare building, vacated the choice of indefiniteness, and remanded for additional proceedings based mostly on the brand new declare building.

On this case, the district courtroom used a definition from an earlier software within the declare building, however the CAFC clarified that the “use of a restrictive time period in an earlier software doesn’t reinstate that time period in a later patent that purposely deletes the time period, even when the sooner patent is integrated by reference.”

Patent High quality Collection Preview

It’s inconceivable to overstate the importance of those ideas by way of crafting beneficial, assertable, and defendable intellectual property rights. A lot in order that whereas this episode marks the ultimate installment of our focus immediately on claims, within the coming months, we will likely be constructing on the framework laid down by this arc to go a lot deeper and wider on what it means to create high quality patents and the way the choices you’re making now may play out later, not simply in Article 3 courts just like the CAFC, but additionally in venues just like the PTAB and International Trade Commission when asserting or defending your claimed property rights.

Dialogue Panel

Dave is joined right this moment by our all the time distinctive group of IP specialists together with:

Mossoff Minute: Value Management Mania

On this month’s Mossoff Minute, Professor Adam Mossoff discusses the ill-advised value management mania presently sweeping the globe and its predictable impacts on free markets and innovation if we proceed down the present path we’re precariously strolling. We’re additionally publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok (for now …).

Hiring Announcement

We’re additionally excited to announce that with this episode, we’re launching functions for 2 new roles at Aurora! Do you need to work the place you need, whenever you need, with a great team, on cutting-edge improvements, and even get the chance to affix us on this podcast? In fact you do, so try the small print beneath! These are salaried, totally distant positions with versatile work weeks and advantages. In a time when so many employers are calling their workforce again into the workplace for hybrid setups, there’s no higher time to totally break the workplace chains and be part of a staff that has been and all the time will likely be totally distributed.

Associated Listening and Studying

To additional discover the matters mentioned, see the next past episodes and assets: