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 pre-existing 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 “pre-defined 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.

¶ 1 Written Description of Claimed Invention

Disclosure/Enablement, § 112

¶ 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

U.S.C. § 112: ¶ 1

Disclosure/Enablement, § 112

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.

U.S.C. § 112: ¶ 2

Definiteness, § 112

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 L-shaped 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, Plaintiff-Appellee,

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

U.S.C. § 112: ¶ 1

Disclosure/Enablement, § 112

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 R-4467 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 “double-tees” 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;