Jerry Suva, Baker Botts LLP Patent Profanity Jerry Suva, Baker Botts LLP

Oh #$@#$ ! What are dirty patent words and where do they come from? "Means" - Williamson v. Citrix and a host of new dirty words Negative claim language - "no" or "not" "Invention" Optional claim language - "if" Words of necessity and importance - "must" Unachievable Words - "optimal" Words of admission - "obvious", "prior art", etc.

Patent Profanity: Dirty Words I Ought Not Say Words that cause unintended consequences to the scope and validity of the patent claims.

Context Matters! Homograph-homynyms

Who says it is profanity? "Because I say so"

Who says it is profanity? "Because I was trained that way" Examiner

Why is it profanity? "Because I was trained that way" Examiner Opposing counsel

Who says it is profanity? "Because I was trained that way" Examiner Opposing counsel Case law

"Means" Signal for limiting claims to means-plus-function construction Means-plus-function claims Perhaps valuable Functional language When unintentional, nearly always terrible

Means-Plus-Function Limitations Purely functional claim limitation "means for ______ing" E.g., "detecting means for identifying a malware component in a file" Governed by 35 USC § 112(f) An element… may be expressed as a means or step for performing a specified function without the recital of structure…and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Pre-AIA: 35 USC § 112, sixth paragraph

http://patentlyo.com/patent/2013/01/means-plus-function-claiming.html

Before Williamson v. Citrix If claim does not recite "means for _____ing"  "strong [presumption] that is not readily overcome" that the claim is not means-plus-function Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed.Cir. 2004) Exception: "nonce" words that do not connote sufficient structure to one of skill Overwhelmingly, No "means for ____ing"  no MPF "Means for ____ing"  MPF

Williamson v. Citrix Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc) No more "strong" presumption of no-MPF Just a "regular" presumption Standard: "Whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." MPF if claim fails to "recite sufficiently definite structure", or "recites function without reciting sufficient structure for performing that function."

Williamson v. Citrix (cont.) (non-en banc) Term at issue - “distributed learning control module” No well understood structural meaning in the field "module" is a nonce word: a generic black box, a replacement for "means"  MPF Terms specifically identified as triggering MPF: module mechanism element device

Williamson v. Citrix (cont.) (non-en banc) Term at issue - “distributed learning control module” No well understood structural meaning in the field "module" is a nonce word: a generic black box, a replacement for "means"  MPF Terms specifically identified as triggering MPF: module mechanism element device DIRTY WORDS

Considerations - Whether MPF (dirty words)? [prefix] [Nonce] [configured to do stuff with other stuff] The whole claim limitation must be considered Nonce Prefix distributed learning control module Later structural elements, if any distributed learning control module for/including __________ In Williamson: "distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.” was MPF.

Considerations - Whether MPF? (cont.) Inputs and outputs How does the candidate "nonce" interact with other components in the claims? More detailed interaction  more likely not a "nonce" May be sufficient to impart structure as recited Extrinsic evidence Proof of use of term and/or prefix for those skilled in the art Dictionaries, expert testimony, other patents

Example Terms Triggering MPF (Dirty Words) Williamson decision module mechanism element device Pre-Williamson decisions means widget system assembly Post-Williamson decisions system for detecting failure… control device processing device communication device video recording device packetization module echo cancellation module coupling mechanism microphone interpretation mechanism introducer

Example Terms Not Triggering MPF Post-Williamson Not a dirty word - Post-Williamson decisions selector component adapter component integration component processor code computer-readable medium instructions circuit telecommunications interface module Cf. echo cancellation module, packetization module

Eliminating Dirty Words in view of Williamson Do not say "means" unless you specifically want MPF Do not use the MPF Dirty Words, or add structure around them Possible alternatives: Circuit But see PTAB case Instructions Software interface Draft method figures, explain your algorithms

Negative Limitations - Just Say No? "A car that is not blue" "Not including a blue car" diagrams not to scale All Cars Blue Cars Universe Blue Cars

Negative Limitations - Just Say No? MPEP 2173.05(i) - They are ok!  "The current view of the courts is that there is nothing inherently ambiguous or uncertain about a negative limitation. So long as the boundaries of the patent protection sought are set forth definitely, albeit negatively, the claim complies with the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Some older cases were critical of negative limitations because they tended to define the invention in terms of what it was not, rather than pointing out the invention." Examples  “R is an alkenyl radical other than 2-butenyl and 2,4-pentadienyl” Dirty words - indefinite under older case In re Schechter, 205 F.2d 185, 98 USPQ 144 (CCPA 1953).  “incapable of forming a dye with said oxidized developing agent”  Allowed - definite In re Wakefield, 422 F.2d 897, 899, 904, 164 USPQ 636, 638, 641 (CCPA 1970)

Negative Limitations - Recast "no" or "not" "not forwarding the received packet" "dropping the received packet" "ignoring the received packet"

"The Invention" Does "invention" or "the present invention" limit the claims?

"The Invention" Dirty word: "Whan a patent thus describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention." Verizon Service Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) Not a dirty word: "[W]e have found that use of the phrase “present invention” or “this invention” is not always so limiting, such as where the references to a certain limitation as being the “invention” are not uniform, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent." Absolute Software, Inv. v. Stealth Signal, Inc., 659 F. 3d 1121, 1136-1137 (Fed. Cir. 2011) (internal citations omitted) Why risk it? Little upside for using "invention"

Optional Claim Language - "If" MPEP 2111.04: "Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed…" "adapted to" "wherein" "whereby" each determined by the specific facts of the case Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005) Griffin v. Bertina, 283 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)  Applicable to "if X then Y"?

Optional Claim Language - "If" - Recast "if X then Y" "determine X" "based on a determination of X, doing Y" What about "if X then Y; if ~X then Z"? What about "when X, do Y"?

Words of Importance, Necessity, and Absolutes "is" ? "must" "need" "necessary" "only" "required" "always" "essential" "key" "critical" "never" "important" "every" "all"

Unachievable Words "optimize" "minimize" "maximize"

Words of Admission "obvious" "prior art" "known"