Indefiniteness and Best Mode
Patent Law
Feb. 5, 2008
Sitrick v. Dreamworks
• 2007-1174 (Fed Cir, Feb 1, 2008)
The technology at issue involves integrating a
user’s audio signal or visual image into a preexisting video game or movie. Sitrick is an
individual inventor and owner of U.S. Patent
Nos. 5,553,864 (the ’864 patent) and 6,425,825
(the ’825 patent). The Defendants produce and
distribute DVDs of various movies, some of
which include the allegedly infringing product,
known as “ReVoice Studio.” The ReVoice
Studio feature allows users to combine their
own voice with pre-existing video images
stored on the DVD.
The ’864 patent states that the system
“provides an environment whereby a
user can create a video or other image . . .
and whereby the user created image . . .
can be communicated and integrated into
the audiovisual presentation, and game
play of a video game.” ’864 patent col.1
ll.54-62. The ’825 patent states that
“[t]his invention relates to predefined
video and audiovisual presentations such
as movies and video games.”
Claim 56 of the ’864 patent and all asserted
claims of the ’825 patent require
“integration” or “substitution” of a visual
or audio “user image” in place of a “predefined image,” “pre-defined character
image,” or “character function” within a
“presentation.” The patents describe this
“integration” or “substitution” as being
performed by an “Intercept Adapter
Interface System” (IAIS) . . . .
Sitrick did not enable the full scope of the
asserted claims. Defendants showed with clear
and convincing evidence that one skilled in the
art could not take the disclosure in the
specification with respect to substitution or
integration of user images in video games and
substitute a user image for a pre-existing
character image in movies without undue
experimentation. Defendants supported their
motion for summary judgment of invalidity by
reference to the teachings of the specifications
and the opinions of their two experts.
Disclosure/Enablement, § 112
¶ 1 Written Description of Claimed Invention
¶ 1 Enablement of one skilled in the art
without undue experimentation of:
• how to make
• how to use
¶ 1 Best Mode contemplated by inventor
¶ 2,6 Claims - definiteness
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.
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.
Orthokinetics v. Safety Travel
Chairs
Page 328
• 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
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 . . . .
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.
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
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
Orthokinetics – related points
• JNOV motion: Federal Circuit and
“aggressive” district court review
– Fact vs law not very important
• Juries like patentees; Federal Circuit
likes patent validity and infringement!
Halliburton v. M-I LLC
• No. 2007-1149
• January 25, 2008 (Fed Cir)
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.
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. The
“fragileness” of the “fragile gels” of the
present invention contributes to the unique
and surprising behavior and advantages of
the present invention.
The district court found that this
graph did not delineate the bounds
of the invention because both prior
art fluids and fluids of the invention
exhibit the same shape curves (the
curves of the 12.1 SF, 12.65
ACCOLADE, and 15.6
ACCOLADE fluids all fall directly
back on themselves). Halliburton,
456 F. Supp. 2d at 820.
The primary difference between these
fluids is the height of the curves (i.e., the
strength of the gels formed), but the
district court found that Halliburton
had produced no evidence of “precisely
how high the vertical leg of a fluid’s Lshaped curve must reach—i.e., how
‘strong’ a gel must be—for that fluid to
exhibit ‘fragile gel behavior.’” Id.
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.
Additional problem …
• Functional claims: may be
hard to make definite
• “Fragile gel” defined: (1)
rapid transition, gel to
liquid; (2) gel suspends
drill cuttings
Slip op. at 17
“[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.”
Special problem: approximate
claim language
• “About”
• “Approximately”
BJ SERVICES COMPANY, PlaintiffAppellee,
v.
HALLIBURTON, INC.,
338 F.3d 1368 (FC 2003)
5. A method of fracturing a subterranean formation,
comprising the steps of:
blending together an aqueous fluid and a hydratable
polymer to form a base fluid, wherein the
hydratable polymer is a guar polymer having
carboxymethyl substituents and a C* value of
about 0.06 percent by weight;
Halliburton further argued that because
"about 0.06" was not defined by the '855
patent, one of ordinary skill in the art
could not make and use the invention.
As discussed above, one of skill in the art
would have known how to measure C*;
the question is whether one of skill in the
art, having done the experiments to
calculate C*, would have known if the
result that he reached was "about 0.06."
BJ Services argues that the term "about" is
intended to encompass the range of
experimental error that occurs in any
measurement and that one of skill in the art
would readily understand the range that "about
0.06" was intended to include. To that end, it
presented the experimental results obtained by
its expert, all of which were slightly above or
below 0.06 for an average of 0.0596. . . . We
conclude that substantial evidence supports the
jury's finding that the '855 patent was not invalid
for indefiniteness or lack of enablement.
See also . . .
Young v. Lumenis Inc., 83
USPQ2d 1191 (Fed. Cir.
2007), 83 USPQ2d 1191
(Fed Cir 2007)
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.
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 edge of 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.
Best Mode
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.
United States Patent 4,081,879 Rubright
April 4, 1978 Sealing member
An improved sealing member
utilizable as a plug button or
grommet is disclosed. An
annular locking portion made
of a rigid material is
integrally bonded to a
flexible elastomeric body . . .
The rigid annular shaped portion of the
sealing member has a tapered shape
and is slightly larger than the opening
in which the sealing member is to be
positioned; the member has to be
tilted or cocked in order to be inserted
in place. Once the rigid annular
locking portion is inserted beyond the
opening, the sealing member is
securely held and locked in place by
the outer edge of the annular portion.
• Inventors: Rubright; Phillip L.
(Berkley, MI) Assignee: Chemcast
Corporation (Detroit, MI) Appl.
No.: 653268 Filed: January 28,
1976
From Chemcast Spec.
The annular locking portion 12 of the sealing member
10 is preferably comprised of a rigid castable
material, such as a castable resinous material, either
a thermoplastic or thermosetting resin, or any
mixtures thereof, for example, polyurethane or
polyvinyl chloride. The portion 12 also should be
made of a material that is sufficiently hard and
rigid so that it cannot be radially compressed, such
as when it is inserted in the opening 19 in the panel
20. Materials having a durometer hardness reading
of 70 Shore A or harder are suitable in this regard.
Chemcast - holding
Rubright knew that Reynosol had developed R4467 specifically for Chemcast and had
expended several months and many hundred
man-hours in doing so. Because Chemcast used
only R-4467, because certain characteristics of
the grommet material were claimed elements of
the ’879 invention, and because Rubright
himself did not know the formula, composition,
or method of manufacture of R-4467, section
112 obligated Rubright to disclose the specific
supplier and trade name of his preferred
material.
Best Mode updated
• High Concrete Structures v. New
Enterprise Stone and Lime (Fed. Cir. July
29, 2004).
• On appeal from a district court’s
summary judgment based on failure to
comply with the best mode requirement,
the Federal Circuit (Newman, Mayer,
Clevenger) reversed and remanded.
High Concrete sued New Enterprise for
infringement of its patent on “doubletees” for adjusting the orientation of
bulky cargo. (U.S. Patent No. 5,947,665).
On defendants’ motion, the district court
held the patent invalid for “failing to
disclose that the inventors' preferred
mode of practicing the invention was to
use the crane to tilt the loaded frame at
the time that the crane loaded the cargo
onto the frame.”
The Federal Circuit reversed:
Deliberate concealment is not charged. The best
mode requirement of §112 is not violated by
unintentional omission of information that
would be readily known to persons in the field
of the invention … Known ways of performing
a known operation cannot be deemed
intentionally concealed absent evidence of
intent to deliberately withhold that
information.
Patent Reform: Eliminate Best
Mode: HR 1908
SEC. 13. BEST MODE REQUIREMENT.
[Amend] Section 282(b):
(3) Invalidity of the patent or any claim in suit
for failure to comply with—
(A) any requirement of section 112 of this
title, other than the requirement that the
specification shall set forth the best mode
contemplated by the inventor of carrying
out his invention;