The Disclosure Revolution is an ongoing process that has transformed patent law over the last couple of decades. While courts continue to say, “The claims define the invention,” decision after decision rewrites broad claim terms to conform to the scope of disclosure. A single embodiment once served as an example supporting enabled claims bounded only by the prior art; now, a single embodiment signals the inventor’s intend to limit the invention to the embodiment itself, rather than to claim terms. These ideas are set out in detail in the book Rules of Patent Drafting: Guidelines from the Federal Circuit Case Law, excerpted in IPWatchdog at Joseph Root on Patent Claim Drafting .
This process has continued apace during 2014. This piece rounds up some Federal Circuit cases that illustrate the highlights.
Bilski to the Rescue
This was the year that the Supreme Court said to the Federal Circuit “Are you listening?” Alice Corp. v CLS Bank Int’l, 573 U.S. ___ (2014). Instead of a pithy single word, however, the Court said, “Not enough.” Mr. Justice Thomas, writing for a unanimous Court, gave us a two-part test, starting with whether the claim at issue defines an “abstract idea.” The analytical process to be applied is apparently left to the litigator as an exercise, as the opinion simply says “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” (Slip op at 12). The meat of the analysis lies in the second step, where the court concluded that “the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.” (Slip op at 14). On this language hangs the validity of hundreds of thousands of software patents granted over the last 15 years.
The Federal Circuit attempted to come to grips with the Alice analysis in Ultramercial, Inc. v. Hulu, LLC , 2010-1544 (Fed. Cir. Nov. 14, 2014). Can you remember the new Federal Circuit test to identify non-eligible inventions? Neither does anyone else. In the end, the court simply set out the results: the claims at issue “have no particular concrete or tangible form” but merely embody an idea, and those claims “simply instruct the practitioner to implement the abstract idea with routine, conventional activity.” Such language provides little guidance to the practitioner trying to craft a valid patent.
Later in the year, the court reached an opposite conclusion in DDR Holdings, LLC v. Hotels.Com, LP, 2013-1505 (Fed. Cir. Dec. 5, 2014), dealing with methods for processing a webpage to generate a hybrid page that combines selected product information with the look and feel of the original webpage. These methods were patent-eligible because
they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
Slip op. at 19. Again, the court provided little to no guidance to the practitioner.
Odd as it seems, the best chance at grappling with the abstract idea question seems to lie in the notion of ignoring, Alice altogether in favor of Bilski. Indeed, the DDR court discussed Bilski at some length, though it focused primarily on the idea that simply implementing an abstract idea on a machine did not create patent eligibility. The court stopped short, however. Although it did note that not every machine implementation presents an “inventive concept,” it did not go on to explain how one could establish patentability by focusing on the inventive concept.
Returning to Bilski, and then continuing back to earlier Supreme Court cases of Flook and Diehr, one notes that patentable computer-implemented inventions are characterized by the solution of the technical problem. That problem must be set out clearly in the disclosure, and the solution must be explained in some detail. Where specific algorithms are required, those algorithms should be identified. The answer to the Alice problem can best be found by ignoring that decision altogether and returning to basic principles. If the patent disclosure satisfies both Diehr and Bilski, one can draft claims that pass muster under Section 101.
When we first saw Bilski, it looked threatening and ominous. In the end, that case more resembles the sage advice, “Keep your friends close and your enemies closer.”
Farewell to the System by Process Claim
One principle that did emerge clearly from the Alice decision was the non-eligibility of system claims that simply recite hardware performing the steps of method claims. Those types of claims have been a staple of the practitioner’s art for some time, appearing in large numbers of computer-implemented patents. Everyone knew that having both system claims and method claims was a good idea, presented some difficulty because they but software-oriented inventions concentrated innovation in the process steps, rather than containing innovative hardware.
The solution could be called a “system by process claim,” in that the system drew its novelty from the associated process steps. Often, these claims recited “computer-readable media” containing computer code that recited the applicable steps. Another format for such claims addressed a system “adapted to” perform the process steps.
In either event, the Court concluded that “the system claims are no different from the method claims and substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.” Slip op at 19. Any innovation here stems from the draftsman’s art, not from the inventor. Thus, the system claims stand or fall with the method claims.
It will undoubtedly be difficult for many practitioners to accept the notion that a patent application will be better off with fewer claim formats. The Alice decision seems remarkably clear on this point, however, and thus it is probably time to say, “Hasta la vista, baby” to the system by process claim.
Alice was only half of a one-two combination delivered by the Supreme Court, however. Since 2001, the standard for measuring definiteness was whether the claim was “insolubly ambiguous,” in the language of Exxon Research and Engineering Co. v. U.S., 265 F.3d 1371 (Fed. Cir. 2001). In Nautilus, Inc. v. Biosig Instr., Inc., 13-369 (June 2, 2014), a unanimous Court substituted a new formulation, asking whether the claims, “viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”
The invention under analysis concerned heart rate monitors employed on exercise machines. A claim in suit included the term “spaced relationship,” indicating a distance between the common electrode and live electrode in each electrode pair. The district court had granted summary judgment of invalidity on definiteness grounds because the term “spaced relationship” did not allow a person of ordinary skill in the art to determine an appropriate spacing between the electrodes. The Federal Circuit reversed and remanded, reasoning that the specification enabled one to establish maximum and minimum spacing, which, together with other evidence, allowed a person of ordinary skill to design a functioning device by varying design parameters. Thus, the term was both “amenable to construction” and not “insolubly ambiguous.”
The Court’s rationale was not kind to the Federal Circuit:
In resolving Nautilus’ definiteness challenge, the Federal Circuit asked whether the  patent’s claims were “amenable to construction” or “insolubly ambiguous.” Those formulations can breed lower court confusion, for they lack the precision §112, ¶2 demands. It cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that rendering a claim “insolubly ambiguous” would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging “zone of uncertainty,” against which this Court has warned…
But although this Court does not “micromanag[e] the Federal Circuit’s particular word choice” in applying patent-law doctrines, we must ensure that the Federal Circuit’s test is at least “probative of the essential inquiry.” Falling short in that regard, the expressions “insolubly ambiguous” and “amenable to construction” permeate the Federal Circuit’s recent decisions concerning §112, ¶ 2’s requirement. We agree with Nautilus and its amici that such terminology can leave courts and the patent bar at sea without a reliable compass.
Slip op. at 12-13.
This test has yet to be applied in a meaningful way. In one instance, Augme Techs., Inc. v. Yahoo! Inc., 2013-1121 (Jun. 20, 2014), the patent at issue dealt with webpage functionality, and the parties differed over the construction of the term “”receiving, by an ingest server, the unique identifier to the digital content.” The court merely recited the “reasonable certainty” language set out above, adding only that the limitation at issue was “clear on its face and unquestionably meets the standard.”
One cannot at present forecast the shape of future litigation of definiteness issues. One can say with certainty that the two standards differ markedly. While it sounds eminently reasonable, the new terminology unquestionably narrows the bounds of definiteness. Because any determination of definiteness loops back to the specification, however, the drafter remains in control of her own fate. Definitions, definitions, definitions – a term plainly and concretely defined must ultimately pass muster as having “reasonable certainty.” Following that advice would prevent a practitioner from hearing a judge conclude, “You keep using that word. I do not think it means what you think it means.”
Means-Plus-Function — Close Only Counts in Horseshoes and Hand Grenades
Means-Plus-Function claims have certainly fallen out of fashion. The cause of that decline, however, may relate more to an inability to apply the standard for drafting those claims than it does to any complexity of the law. Computer-implemented means-plus-function claims have encountered particular problems meeting the general requirement that a means-plus-function claim must be supported by disclosure that clearly links the claimed function to definite structure. Where the claim addressed computer software, the required structure was clearly and algorithm set out in computer code. A question arose, however, whether the algorithm must be expressly identified, or whether it could be simply attributed to one of ordinary the skill in the art. That question was answered in Aristocrat Techs. v. Int’l. Game Techs., 521 F.3d 1328 (Fed. Cir. 2008) which held that simply referring to “appropriate programming” did not adequately disclose the structure. The court carefully distinguished between the enablement requirement of § 112, ¶ 1 and the disclosure requirement of § 112 ¶ 6. Rather than asking whether one of ordinary skill in the art could make and use the invention in light of the disclosure, the court explained the question at hand was whether sufficient structural detail had been disclosed. The court held that a means-plus-function claim must at least disclose the algorithm that transforms the general purpose microcomputer to a specialized machine performing the stated function.
The patent in Triton Tech v. Nintendo, 753 F.3d 1375 (Fed. Cir. 2014), almost met that standard. The technology involved an input device for a computer, specifically an input device that senses and reports motion in three dimensions. A claim limitation recited “integrator means associated with said input device for integrating said acceleration signals over time to produce velocity signals,” which the specification is disclosed as being accomplished by “numerical integration.” That statement, however, did not identify an algorithm so much as a class of possible algorithms that could be employed to reach this result. Disclosure of such a class did not limit the scope of the claim to the required corresponding structure. Thus, the claim was held indefinite.
One can understand the practitioner’s problem here. Identifying the particular algorithm used for a given function would probably require detailed consultation with the inventors. That sort of time investment is often not available during the latter stages of patent drafting, and one can see why drafter would fall back on tried and true language referring to the skill of those in the art. That temptation must be avoided, however. Otherwise, one is going to find oneself at the wrong end of a comparison with prior art, along the lines of “You call that an algorithm? That’s not an algorithm. This is an algorithm.”
Patent Profanity — Potty Mouth Doesn’t Pay
After all the lectures, seminars, and articles about patent profanity, one would expect modern examples to be about as scarce as pay telephones. This is a gift that keeps on giving, however, with the latest example occurring in X2Y Attenuators, LLC v. ITC, 2013-1340 (Fed. Cir. Jul. 7, 2014). The subject matter addressed structures for reducing electromagnetic interference in electrical circuits, and the claims set out various electrodes. In the course of discussing these electrodes, the specification characterized a “center common conductive pathway electrode” as “essential,” further noting that this electrode was an “essential element among all embodiments or connotations of the invention.” That language, the court said, amounted to “a clear and unmistakable disavowal of claim scope.” Slip op. at 8. Once again, loose language winds up costing the patentee dearly.
Among the things that one just cannot do in the modern day and age include referring to “the invention,” characterizing the invention as a whole, and referring to elements as “essential” or “required.” When one makes any of those statements, the patentee will be taken exactly at his word. One can ease up to these concepts where really necessary, but never go over the line. As set out in Rule 14, “Bend the line, don’t break it.”
Inequitable conduct – Still Possible to Violate the Rule
After long years of struggling under standards of inequitable conduct that often rendered patents unenforceable for mere negligent acts, one might suppose that the clear-cut reform of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) would eradicate such litigation. After all, the new standards required “but for” materiality and a specific intent to deceive the PTO. Murphy is alleged to have said, “If something can go wrong, it will,” and the validity of that statement was proved in American Calcar, Inc. v. American Honda Motor Co., 2013-1061 (Fed. Cir. Sep 26, 2014).
The patent here involved a computerized navigation system for vehicles. During the development of the system, the person responsible for preparing the patent application operated one of the defendant’s automobiles equipped with a navigation system, and he also photographed the components of the system and its operator manual. The automobile and its navigation system was disclosed as prior art, but the manual and the photographs were withheld from the PTO. The infringement defendant maintained that the withheld documents contained operational details of the navigation system that were included in claims.
The District Court undertook a thorough analysis, employing the correct standards. As to materiality, that court found that both the withheld art and the patent in suit delivered information, through an interactive display screen, to provide information to the driver. Given those identities, it was specifically held that the PTO would not have allowed the claims in suit headed known about the withheld reference – “but for” materiality.
Turning to intent, the person who prepared the patent application fully appreciated the importance of the withheld information. He testified to his knowledge of that fact, and indeed, figures from the operator manual were included in the patent application. The District Court found that the single reasonable inference based on these facts was that the information was deliberately withheld from the PTO.
Both portions of the Therasense test having been satisfied, the patent was held unenforceable.
The basic advice to disclose all information in one’s possession certainly would have saved this patent. One can celebrate the achievement of reasonable standards to gauge inequitable conduct, but one must also remember that it is still possible to violate those standards. Looking back at the time when inequitable conduct was branded a plague in the profession, we can appreciate and enjoy the progress that has been made. At least, the latest casenotes longer make us say, “I see dead patents.”
Overall, 2014 will likely be remembered primarily for Alice and its eventual progeny. In addition to its impact on the law per se, the economic effects may prove enormous. An entire segment of the patent community stands vulnerable to a slowdown, or shutdown, of patenting activity in the business methods and software fields. Other areas, including definiteness, will feel the effects of 2014, but in a far more incremental fashion.
I will return in early 2015 to look at the year ahead and to think about methods for coping with the year past. In the meantime, have a great holiday!