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

2. 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.

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

4. Context Matters!
Homograph-homynyms

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

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

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

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

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

10. 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

12. 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

13. 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."

14. 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

15. 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

16. 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.

17. 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

18. 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

19. 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

20. 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

21. 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

22. Negative Limitations - Just Say No?
MPEP (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)

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

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

25. "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, (Fed. Cir. 2011) (internal citations omitted)
Why risk it? Little upside for using "invention"

26. Optional Claim Language - "If"
MPEP : "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"?

27. 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"?

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

29. Unachievable Words
"optimize"
"minimize"
"maximize"

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