The Power of Plain English Patent Claims

The dramatic ending of Ridley Scott’s 1991 crime drama, Thelma & Louise, is oft cited as an analogy for the thin line between patent claims being narrow enough to withstand validity challenges but broad enough to maintain infringement value. This tension frames a dance between parties throughout litigation in large part because claim terms are generally not written in ordinary English and need to be translated.

But what if we drafted claims with litigation in mind? What if we drafted patents for the people reading and interpreting them rather than suffering unnecessary linguistic sacrifices during prosecution to appease examiners who are just trying to do their jobs?

Leveraging my own experience driving this sort of approach at MONKEYmedia, Inc., let’s look at the company’s family of “BodyNav” patents as a case study — where the language across 12 patents in a single continuity lineage evolved significantly over the course of 12 years, from highly technical towards easy-to-understand plain English.

Instead of experiencing examiner challenges as annoying or frustrating, MONKEYmedia’s patent agent, Dr. Gareth Sampson of KHMR&G led us to view examiner challenges as valuable strategic input to help the inventors reflect deeply on the actual meanings intended and lean into refinements using plain English.

What can an examiner’s apparent misunderstandings tell us about the future interpretation risks we might face during enforcement? This approach not only lowers blood pressure during prosecution by keeping us humble, curious and appreciative, but it amplifies claim clarity and can even broaden applicability. Furthermore, focusing on simplicity provides strength and durability in litigation by preemptively defusing Markman misinterpretation risks and serving up claims that jurors can understand without wrinkling their brows. This proactive evolution underscores the importance of an iterative approach to drafting, the critical value of ongoing examiner engagement, and the strategic advantages gained through progressively simplified yet robust claim language.

The foundational provisional application, filed on June 29, 2012, provided an exceptionally comprehensive and flexible specification, fortified by an extensive set of figures and an explicit inventor lexicon. These elements proved crucial in enabling numerous continuation patents across a diverse range of technological domains, including virtual reality (VR), augmented reality (AR), drone piloting and advanced hearing aid technologies. The foresight embedded in this initial drafting laid a versatile groundwork that facilitated significant technological articulation and adaptation over subsequent years.

Initially issued patents, such as U.S. Patent 9,612,627, reflected an approach characteristic of many first-generation patent claims: detailed, highly technical and explicitly descriptive. Such claims meticulously enumerated the precise interactions between individual sensors, processors and user actions. Although thorough and protective in intent, this initial approach inadvertently introduced interpretative complexity, potentially limiting both claim breadth and enforceability. As a result, the earliest claims required careful study to be correctly understood; potentially inviting linguistic gamesmanship by accused infringers.

Recognizing these inherent limitations, the inventors – myself, Rachel Strickland and James McKee – undertook a deliberate and ongoing refinement process, closely collaborating with Dr. Sampson. The evolution of claim language was driven by invaluable feedback from U.S. Patent and Trademark Office (USPTO) examiners, who instinctively pressed inventors to narrow their claims. But instead of narrowing, the team sought to clarify and simplify. These interactions, rooted in constructive dialogue around cited prior art, played a fundamental role in shifting the claim drafting approach toward greater readability.

In my opinion, approaching examiners with humility and gratitude is like a magic key to unlocking our ability to see inventions the ways others – such as opposing counsel – may interpret them. They show us points of view that we may not have considered and readings that differ from our best intentions. They help us break out of myopic beliefs about the “obvious” meaning of our own writing. Who wouldn’t want to be shown important opportunities to tidy up claim language before Markman? From a business standpoint, it’s a no brainer.

An early turning point involved examiner-cited prior art that necessitated a careful reassessment of the claims’ foundational elements. Initially, claims detailed a multitude of sensors and explicit processor instructions with extensive, precise terminology. However, through ongoing examiner engagement, it became evident that such granularity was not always beneficial. Indeed, the exhaustive enumeration of components and detailed stepwise processes not only created interpretive challenges but also risked unintentionally constraining the claims’ scope.

In response, the drafting approach gradually shifted towards more general language, capturing core inventive concepts without limiting the claims’ broader applicability. For instance, early claims explicitly described sensor types such as accelerometers, gyroscopes and magnetometers, often coupled with intricate algorithms describing user interactions in detail. Over time, these detailed specifications evolved into simpler, broader and more strategically general descriptions, emphasizing functional outcomes rather than explicit technical minutiae.

U.S. Patent 11,969,666 (“Head-mounted Display for Navigating Virtual and Augmented Reality”) notably exemplifies this refined approach in its Claim 1:

Contrasting sharply with earlier, more cumbersome language, this claim succinctly communicates the invention’s core functionality without unnecessary complexity. The directness and simplicity of language employed here not only enhances readability but significantly broadens the claim’s practical enforceability across multiple applications and industries.

This clarity and adaptability allowed for seamless transitions from the original handheld VR embodiments. A lateral approach to diversifying the patent family’s claims also enabled the inventive concepts to be applied to analogous technological contexts, such as augmented reality and first-person view (FPV) drone piloting.

The flexibility inherent in clearly articulated, strategically generalized claims was instrumental in bridging vastly different usage landscapes. This capability demonstrates the advantage of writing claims focused on utility and performance rather than specific hardware under the hood.

An even more striking example of this evolved drafting strategy is seen in the claims of recently issued U.S. Patent 12,383,844 (“Hands-free Audio Control Device”). Claim 1 of this patent demonstrated perhaps unprecedented brevity and directness:

This claim embodies the strategic endpoint of the long-term drafting refinement process. It is a claim reduced to its most essential and enforceable core, free from the interpretive complexity associated with earlier claims. Such concise drafting sets a new standard for clarity in patent claims, illustrating that brevity, when carefully employed, can lead to easier infringement reads and practical robustness.

The Core Principles of Plain English Patents

The trajectory of the “BodyNav” patent family underscores several essential principles for patent drafting excellence. First, precision through simplicity emphasizes that clear, straightforward claims enhance both interpretability and enforceability. Second, enforceability through clarity recognizes that overly detailed descriptions can inadvertently constrain a claim’s practical applicability. Third, adaptability through targeted breadth highlights the importance of drafting claims broad enough to accommodate technological evolution while retaining sufficient specificity to withstand legal scrutiny.

Moreover, open-minded engagement amongst inventors, patent prosecutors and examiners demonstrates how constructive interview dialogue can contribute significantly to the quality and strategic value of patent claims. The intellectual interplay between inventors and their IP prosecution firm further exemplifies the importance of collaborative synergy, combining technical expertise with legal insights to produce patent claims of lasting value.

Additional articles featuring Eric Bear on IPWatchdog:

“Designing Into the Path of Disruptive Technology: An Interview with Software Expert Eric Gould Bear”

“Software Patents: Drafting for Litigation and a Global Economy”

“Software Patents: The Engineer vs. Designer Perspective”

“False Distinctions Between Hardware and Software Patents are Not the Answer”

“Prelude to SCOTUS Oral Arguments in Alice v. CLS Bank: A Software Conversation with Eric Gould Bear”

“Prelude to SCOTUS Oral Arguments in Alice v. CLS Bank, Part 2”

“Prelude to SCOTUS Oral Arguments in Alice v. CLS Bank, Part 3”