Trolls vs Pirates and the

Battle over Patent Quality

Dennis Crouch

Tremendous Change

in the

Patent System

Incentive for Ambiguity

One of the greatest problems of the current patent system is the incentive to write patents and patent claims that obscure the “invention” and the legal scope of the patent.

Costs of Ambiguity

•Both Justice and Efficiency Concerns

•Hiding Invalid Patents •Costly Information

Means-Plus-Function Claim Language

35 U.S.C. § 112(f)

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, [HOWEVER] such claim shall be construed to cover [ONLY] the corresponding structure, material, or acts described in the specification and equivalents thereof.

O'Reilly v. Morse, 56 U.S. 62 (1854)

The Telegraph Patent Case

History

Morse: [I Claim] the use of the motive

power of the electric or galvanic current, [without] limiting

myself to the specific machinery..

New Model

Means for A

Means for B

Means for D

Wright Brothers Patent

means whereby said rudder is caused to present

to the wind …the smaller angle of incidence

Halliburton v. Walker 329 U.S. 1 (1946)

A claim which describes the most crucial element in a "new" combination in terms of what it will do,

rather than in terms of its own physical characteristics or its arrangement in the new combination,

is invalid as a violation of [the indefiniteness requirement]

Means-Plus-Function Claim Language

35 U.S.C. § 112(f)

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof,

[HOWEVER] such claim shall be construed to cover [ONLY] the corresponding structure, material, or acts described in the specification and equivalents thereof.

Narrower in Appearance but Broader in Construction

From: Means for calculating a risk variable To: Instructions for calculating a risk variable

Morse: [I Claim] the use of the motive

power of the electric or galvanic current, [without] limiting

myself to the specific machinery..

Shrinking Power of MPF

Means for A

Means for B

Means for D

Non-Means

Function

Non-Means

Function

Non-Means

Function

Computer Related Claims

Williamson v. Citrix (2015)

• Eliminating strong presumption surrounding the “means” term.

Policy Grounds

Too Broad

– Preemption

– Enablement / WD

– Did not invent that breadth

Fuzzy Boundaries

– Impacts risk averse parties

– Gums-up market

– Rewards non-invention

• Trolls vs. Pirates: Pick your Boogieman

• Cuozzo v. Lee:

–Potential for Linking PTO to Courts

–Administrative Advisory Claim Construction

Giving Meaning to the Claims •Another indefiniteness case: Nautilus (2014)

– Reasonably Certain standard

– On remand, CAFC Found “Spaced Relationship” reasonably certain.

•USPTO Remains Focused on applying the “Broadest Reasonable Interpretation” (New Training for Examiners)

•Quality Initiative has new focus on making details “of record”

26

In re Packard (Fed. Cir. 2014)

Holding:

We conclude that, when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b).

Indefiniteness Hurdles

InsolublyAmbiguous

ReasonablyCertain

PTO Prima FacieCase based on

BRI