Posts Tagged: "written description"

Mentor Graphics v. Synopsys: Affirmed-in-Part, Reversed-in-Part, Vacated-in-Part, and Remanded

Various Synopsys parties and EVE-USA, Inc. (collectively “Synopsys”) sued Mentor Graphics, seeking a declaration that Mentor’s ’376, ’531, and ’176 patents were invalid and not infringed. Mentor counterclaimed for willful infringement of those three patents, and also asserted infringement of two more (the ’526 and ’109 patents). The court consolidated the case with another involving a fourth patent owned by Mentor (the ’882 patent)… A jury does not have to further apportion lost profits to patented features of a larger product after applying the Panduit factors, which implicitly incorporate apportionment into the lost profit award. Claim preclusion applies when a claim was asserted, or could have been asserted, in a prior action. It does not bar allegations that did not exist at the time of the earlier action.

Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application

One big mistake inventors make is they will go on page after page in their draft patent application about how they came up with the idea for the invention, what the market for the invention is and how they plan on tapping into that market. None of that is appropriate for a patent application. Various pieces, perhaps even all of it, would be appropriate for a business plan. So the first thing inventors need to understand and really internally appreciate is that a patent is NOT a business plan. If you are going to attempt to raise money to pursue your business objectives you will undoubtedly need a business plan and attaching a well drafted and previously filed patent application as an appendix can be useful at times, but a business plan and a patent application play very different roles.

Patent Drafting: Define terms when drafting patent applications, be your own lexicographer

Being your own lexicographer means is that you who can define your invention using whatever terms you choose, and after attributing pretty much whatever meaning you want to give to the terms you use. Indeed you get to define the terms you use so long as any special meaning you assign to any particular term is clearly set forth in the specification. It is true that the ordinary plain meaning of the terms as would be understood by one of skill in the relevant technology field will be applied if you do not provide your own definitions, but leaving nothing to chance is generally a good idea. It is an absolute prerequisite if you are using a term that has multiple possible meanings, or if you are referring only to a certain subset of what the term generally means or could mean.

The Best Mode Requirement: Not disclosing preferences in a patent application still a big mistake

The best mode requirement still exists, although the America Invents Act (AIA) has largely removed any consequences for failing to disclose the inventor’s best mode, which means the current state of the law is at best a bit murky. But why would you ever want to file a patent application that does not disclose something that you prefer or regard as better? The goal of filing a patent application has to be to completely disclose your invention with as much detail and description as possible, paying particular attention to alternatives and variations. So while you may be able to get away with not disclosing any preferences doing so would likely be a tragic mistake.

Patent Drafting: Learning from common patent application mistakes

One of the biggest mistakes I see inventors make is they spend too much time talking about what the invention does and very little time explaining what the invention is and how it operates to deliver the functionality being described. Many inventors also make the mistake of only very generally describing their invention. If that is you then you are already light on specifics, which is extremely dangerous in and of itself. But the other problem I want to discuss is the flip side of the coin. It is important to be specific, but not just specific.

Patent Drafting: Distinctly identifying the invention in exact terms

In short, a concise description of an invention is an inadequate description of an invention, period. The goal has to be to provide a full, clear, exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants protection to cover. Even knowing what the legal standard is for the description that must be present in a patent application does not ensure that those without training will be able to satisfy the requirement. The blame for this goes to the way most people describe things as they engage in ordinary, everyday communications.

Patent Drafting: Understanding the Specification of the Invention

This so-called adequate description requirement pertains to the level of description that must be included in the ”specification,” which is most typically defined as that part of the patent application that is not a drawing figure and is not a claim. This is the most common definition for the term “specification” because if and when you need to amend an application there are three separate sections for an amendment, one for amendments to the specification, another for amendments to the claims, and a third for amendments to the drawings. When you get to the point of the process where you will need to amend the application (which goes beyond the scope of this article) you will amend anything that is not a claim and not a drawing under amendments to the specification.

Tricks & Tips to Describe an Invention in a Patent Application

One excellent way to make sure you are including an appropriately detailed description that treats a variety of variations and alternatives is to have many professional patent drawings. You should then describe what each drawing shows. The quickest way to explain what you want to do is by way of example. The popular children’s song “Skeleton Bones” explains how all the bones in the body are connected. The leg bone is connected to the knee bone, which is connected to the thigh bone, which is in turn connected to the back bone, which is connected to the neck and so on. Notice that this is a very general overview of how the bones in the body are connected. This is a good first step, but there is a lot more that can and should be written.

Negative Claim Limitations Do Not Have a Higher Written Description Standard

The Federal Circuit held that the written description requirement is met for negative claim limitations where the specification simply describes alternatives. In other words, the “reason to exclude” required by Santarus can be met without discussion of advantages of exclusion or disadvantages of inclusion. Further, alternative elements need not be explicitly described as alternatives, so long as the specification conveys to a person of skill in the art that those elements are, in fact, alternative or optional. Negative limitations are only unsupported where the specification provides no examples or suggestions that such limitations are alternative or optional.

CAFC Cautions Against Limiting Invention to One Embodiment in the Specification

Imaginal appealed, arguing that the district court improperly construed the disputed claim language, because: because it: (1) ignored the written description and claim language; (2) relied too heavily on general purpose dictionary definitions; and (3) improperly excluded a preferred embodiment. The Federal Circuit disagreed. It held that nothing in the patent claims or specification restricted the vision guidance system to only one particular system that is excluded from the claims (“without”). Accordingly, the Federal Circuit affirmed.

Patenting business methods and software still requires concrete and tangible descriptions

The key to obtaining a software patent is to thoroughly describe the system and processes from a technological level. As to Judge Chen explained in DDR Holdings, in order for software patent claims to be patent eligible they must 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.” To be patent eligible claims to software must be “rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Of course, this patent eligible example of software patent claims is extremely relevant for business methods because a naked business method is no longer patent eligible. To have a realistic chance of being patented business methods must be tied to a particular compute technology in a meaningful and substantial way. Said another way, the business method really needs to be performed by and through a concrete and tangible system, where the system and processes are painstakingly described.

A Patent Drafting Checklist

Drafters need to think both outside and inside the claims. Outside thinking aims to make the court’s task easier by providing claim terms amenable to straightforward, simple claim construction. Preferably, at least, the key terms are expressly defined, or at least explained through demonstration. Inside thinking takes up the question whether the claim construction supports the patentee’s or owner’s intention, as manifested in the claims and specification. By the time a drafter is “experienced,” she has been exposed to considerable instruction on claim drafting. Claim construction rules, claim drafting principles, claim drafting strategy—the endless seminar. Yet, the Federal Circuit regularly lectures the patent bar on its drafting practices. The difficulty is that among all of our construction rules and strategic principles, we have lost sight of clarity and precision. We need to refocus on basic principles. Indeed, we’re going to need a bigger boat.

Patent Application Drafting: Ambiguity and Assumptions are the Enemy

Explaining the function of the invention is helpful, but only explaining something in terms of function leaves many questions unanswered because it is not terribly descriptive. For example, assume you are unfamiliar with a couch. If I were to try and describe a couch by explaining that you sit on it to watch TV, would that bring to mind a couch? It might, but it might also bring to mind a chair (of various sorts), a recliner or perhaps a love seat. Maybe even a bar stool. Notice also that when describing the couch for sitting we are leaving out lying on the couch. If I were to describe the couch structurally, however, the reader would be able to understand that you could sit on it or lay on it. The description would also easily distinguish the couch from a bar stool or chair. Thus, describing function can be helpful to get the reader thinking in the right direction, but normally it does not bring the reader all the way to an unambiguous understanding.

Patent Drafting: The Detailed Description Should Include Multiple Embodiments or Examples

Along with their ABC’s and multiplication tables, patent lawyers learn two basic principles. First, claims define the invention. Second, a court should not read limitations from a single embodiment into the claims, absent a demonstrated clear intention by the patentee to do so. Don’t believe them. When the Federal Circuit brings up the principle that one should not import the limitations of a single embodiment into a broader claim, expect the opinion to show how, under the particular, specifically limited facts of the present case, the inventor actually intended to limit the claims to the disclosed embodiment.

Patent Drafting: Top 5 Critical Things to Remember

Many times inventors fail to adequately describe their inventions because the invention is obvious to them, and they think it will be equally obvious to others. The law, however, requires that a patent application explain the invention to someone who is not already familiar with the invention. One of the best way to do this is to explain it like a child explains things when doing a show and tell at school. Children explain everything in excruciating detail, no matter how obvious. Kids do this when they describe things because they have no idea what the person listening knows, and to them it is new and interesting so they explain everything with tremendous detail (whether you want to hear it or not). That is exactly what you need to do in the application. Explain your invention with so much detail that you will bore the knowledgeable reader to death.