US Claim Drafting
Christopher J. Palermo
23 May 2006
Hickman Palermo Truong & Becker LLP
Intellectual Property Law
San Jose, California
www.hptb-law.com
Overview
• Phillips v. AWH Corp., CAFC, July 12, 2005,
www.fedcir.gov/opinions/03-1269.pdf
• The specification, prosecution history, and other
“intrinsic evidence,” control claim interpretation
• Dictionary definitions, trade usage, expert
opinions, and other “extrinsic evidence” are not
considered except in the absence of resolution
based on intrinsic evidence
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The Landscape Since Phillips
• Federal Circuit has issued about 15 opinions that
address claim interpretation
• 90% have cited Phillips and relied upon it to
resolve claim interpretation issues.
• The court very recently said that Phillips “stressed
the dominance of the specification”
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Five Rules Based on Recent Cases
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Five Rules Based on Recent Cases
• Beware of limitations in the drawings.
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Ncube Corp. v. Seachange Int’l
• Claims recited an “upstream manager” of a server
• Drawings showed arrows 124, 126 with
arrowheads on one end
• Claim dispute: whether data can go “down” from
the upstream manager
• Held, “upstream” and the arrow do not limit data
movement to one direction: “The specification
describes only one embodiment, and also
expresses divergence …”
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Five Rules Based on Recent Cases
• Beware of limitations in the drawings. Use no
arrowheads, or arrowheads on both ends.
• Do not mix method steps into apparatus claims.
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IPLX Holdings v. Amazon.com
• “The system of claim 2 [including an input means]
wherein the predicted transaction information
comprises X and Y, and the user uses the input
means to either change the predicted transaction
information or accept the displayed X and Y.”
• A seller of the apparatus would not know from the
claim whether it might also be liable for
contributory infringement because a buyer later
performs the method
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IPLX Holdings v. Amazon.com
• Recite structure instead
• “The system of claim 2 [including an input means]
wherein the predicted transaction information
comprises X and Y, and wherein the input
means comprises means for receiving user
input indicating either a change to the predicted
transaction information or user input indicating
acceptance of the displayed X and Y.”
• Full discussion: CIPA Journal, January 2006
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Five Rules Based on Recent Cases
• Beware of limitations in the drawings. Use no
arrowheads, or arrowheads on both ends.
• Do not mix method steps into apparatus claims.
All “mixed” claims are now suspect.
• If separate parts of a process could be
implemented in separate countries, use system or
apparatus claims instead.
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NTP, Inc. v. Research in Motion Ltd.
• Claims to an electronic mail system reciting
equipment located in the US and a relay in Canada
are infringed by US users
– “infringing use of a claimed system occurs in the place
at which the system as a whole is put into service”—
i.e., the end user’s location
• Claims to a process implemented with the same
equipment and relay are not infringed
– All steps of the method must be performed in the US
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Five Rules Based on Recent Cases
• Beware of limitations in the drawings. Use no
arrowheads, or arrowheads on both ends.
• Do not mix method steps into apparatus claims.
All “mixed” claims are now suspect.
• If separate parts of a process could be
implemented in separate countries, use system or
apparatus claims instead.
• If specification discloses one embodiment, claim
cannot be broader than that embodiment
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Lizardtech, Inc. v. Earth Resource
Mapping, Inc.
• Specification describes one way for compressing
digital images by using a seamless discrete
wavelet transform (DWT).
• Claim 21 covers all DWTs—does not recite
“seamless”
• “The trouble with allowing claim 21 to cover all
ways of performing DWT-based compression
processes that lead to a seamless DWT is that
there is no support for such a broad claim in the
specification.”
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Lizardtech, Inc. v. Earth Resource
Mapping, Inc.
• Public policy and the notice function of claims:
• Inventor will not be given claim scope far greater
than what a skilled artisan would understand the
inventor to possess or greater than what is enabled
• While a claim can use a broad term to encompass
2 or more embodiments given in the specification,
when only 1 way is disclosed the use of broader
terms may lead to invalidity
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Five Rules Based on Recent Cases
• Beware of limitations in the drawings. Use no arrowheads,
or arrowheads on both ends.
• Do not mix method steps into apparatus claims. All
“mixed” claims are now suspect.
• If separate parts of a process could be implemented in
separate countries, use system or apparatus claims instead.
• If specification discloses one embodiment, claim cannot be
broader than that embodiment
• A concretely expansive specification may expand the scope
of an unintentionally narrow claim
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Lava Trading, Inc. v. Sonic Trading
• A data processing method for providing trading
information to traders in a security or commodity from
two or more alternative trading systems, comprising the
steps of: receiving order book information from each
participating alternative trading system in order book
information protocols native to the particular alternative
trading system; converting the information to a common
system order book protocol; integrating the order book
information from each alternative trading system into a
single order book; distributing the combined order book
to the traders in the common system order book protocol;
and displaying said combined order book to the traders
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Lava Trading, Inc. v. Sonic Trading
• Specification described displaying only a subset of
the combined information
• The claim preamble recited “a security or
commodity,” suggesting fewer than all
• Potentially problematic claim was saved by an
expansive specification with several different
examples
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Nystrom v. Trex Co. Inc.
• Claim: “A board for use in constructing a flooring surface
for exterior use, said board having …”
• Specification exclusively described boards cut from wood
logs and addressed problems of water penetration into
wood. Drawings show “grain”
• Trex made plastic resin-based synthetic boards not cut
from logs
• Potentially problematic claim was not saved by inventor’s
failure in the specification to identify synthetic lumber as
an alternative
• Last paragraph of specification was “boilerplate”
broadening language—ignored
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Five Rules Based on Recent Cases
• Beware of limitations in the drawings. Use no arrowheads,
or arrowheads on both ends.
• Do not mix method steps into apparatus claims. All
“mixed” claims are now suspect.
• If separate parts of a process could be implemented in
separate countries, use system or apparatus claims instead.
• If specification discloses one embodiment, claim cannot be
broader than that embodiment
• Sprinkle the specification with creative, possible
alternatives beyond what the inventor presently
contemplates
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Claim Examples
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Thank you
Christopher J. Palermo
Hickman Palermo Truong & Becker LLP
2055 Gateway Place Suite 550
San Jose, CA 95110
408.414.1202
[email protected]
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