1. ©2011 Haynes and Boone, LLP 1 Functional Language in Claims David O’Dell Haynes and Boone LLP David.ODell@haynesboone.com 867-8510

2. © 2011 Haynes and Boone, LLP 2 Agenda Claim Preambles Means plus function Product by process Software/circuit functionality

3. © 2011 Haynes and Boone, LLP 3 Preamble Does it limit the claim? –Case by case determination (MPEP 2111.02) When is it a limitation? –When it is “ necessary to give life, meaning, and vitality ” to a claim

4. © 2011 Haynes and Boone, LLP 4 Is the Preamble a Limitation? Limits the structure of the claim – yes –Any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation. –Elements in the preamble appear in the body of the claim. Purpose or intended use – no –If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction

5. © 2011 Haynes and Boone, LLP 5 Preamble Examples: –“ A surgical drill comprising: ” Does the claim recite any structure or operation directed to surgery? Or, does the claim only recite a motor and chuck? –“ For use in cellular communications, a device for connecting two components, comprising: ” Does claim body recite cellular-based structure? Or, is this a mechanical connector?

6. © 2011 Haynes and Boone, LLP 6 Preamble However –Functional language in a claim preamble can help to get your application into a proper art unit But, KSR allows examiners to consider art in different fields of endeavor –Also, a new use for an old device may be patentable Must rebut prima facie obviousness

7. © 2011 Haynes and Boone, LLP 7 Preambles Takeaways –Consider a short preamble Examiners ignore them for patentability Infringers argue them for non-infringement –If you cite elements in the preamble, reference them in the body of the claim –Some elements in the preamble may be helpful for classification or other reasons

8. © 2011 Haynes and Boone, LLP 8 Means Plus Function (MPF) 35 USC 112, para 6 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, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

9. © 2011 Haynes and Boone, LLP 9 Means Plus Function (MPF) –What is an “ equivalent ” ? performs the identical function “in substantially the same way, with substantially the same result.” General Protecht Group, Inc. v. ITC (2010) –Carrying out a function magnetically is NOT equivalent to carrying it out mechanically as a matter of law If an alternative exists at the time the patent was filed, but it was not disclosed in the spec, then the alternative may not be an “equivalent.”

10. © 2011 Haynes and Boone, LLP 10 Means Plus Function (MPF) Takeaways –Consider using non-MPF claims –MPF claims can be helpful if your specification has many embodiments. Give many examples of different structures in the specification

11. © 2011 Haynes and Boone, LLP 11 Product-by-Process –What is a “ product-by-process ” claim? Product is defined at least in part in terms of the method or process by which the product is made –Example 1: a device made by the process of claim x. –Example 2: a trench formed by a high-pressure water excavation process

12. © 2011 Haynes and Boone, LLP 12 Product-by-Process –What is not a “ product-by-process ” claim? Intended use of a device –Discussed previously with preambles A process that is actually a structural limitation. –Example 3: an extruded layer. A function of a claim element. –Example 4: a computer for calculating x. –(This will be discussed in the following section.)

13. © 2011 Haynes and Boone, LLP 13 Product-by-Process –Do the process elements in product- by-process claims serve as limitations? The answer depends on the situation

14. © 2011 Haynes and Boone, LLP 14 Product-by-Process –Consider the following four cases: In re Thorpe, 777 F.2d 695 (Fed Cir 1985) Atlantic Thermoplastics v. Faytex Corp., 970 F.2d 834 (Fed Cir 1992) Abbot Labs v. Sandoz, 566 F.3d 1282 (Fed Cir. 2009, en banc) Amgen v. F. Hoffmann-La Roche, 580 F.3e 1340 (Fed Cir 2009)

15. © 2011 Haynes and Boone, LLP 15 Product-by-Process In re Thorpe (Fed Cir. 1985) –Pertains to patent prosecution –“The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” –Cited in current version of MPEP 2113

16. © 2011 Haynes and Boone, LLP 16 Product-by-Process Atlantic Thermoplastics (Fed Cir. 1992) –Pertains to infringement –“process terms in product-by-process claims serve as limitations, in determining infringement.” –Contradicted earlier case, Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565 (Fed. Cir. 1991)(“the correct reading of product-by-process claims is that they are not limited to product prepared by the process set forth in the claims.”)

17. © 2011 Haynes and Boone, LLP 17 Product-by-Process Abbot Labs v. Sandoz (Fed Cir. 2009) –Pertains to infringement –En banc, attempts to resolve differences between Atlantic and Scripps. –“process terms in product-by-process claims serve as limitations in determining infringement.” citing Atlantic. Note that Judge Rader wrote both Atlantic and Abbot.

18. © 2011 Haynes and Boone, LLP 18 Product-by-Process Amgen v. F. Hoffman (Fed Cir. 2009) –Pertains to validity before the court –when “determining validity of a product-by-process claim, the focus is on the product and not on the process of making it.”

19. © 2011 Haynes and Boone, LLP 19 Product-by-Process Amgen v. F. Hoffman (Fed Cir. 2009) –(continued) –The Court discusses Atlantic, but appears to be following Thorpe. –This violates the axiom: “claims must be interpreted and given the same meaning for purposes of both validity and infringement analysis.” Amazon.com v. Barnes andNoble.com, 239 F.3d 1343 (Fed. Cir. 2001) –Note, this axiom does not apply to treating claims differently before the PTO and the court. See, e.g., In re Swanson

20. © 2011 Haynes and Boone, LLP 20 –Patentability Before the PTO – No (rebuttable) “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” MPEP 2113 Burden to overcome rejection shifts to patentee. Are Product-by-Process Terms Limitations?

21. © 2011 Haynes and Boone, LLP 21 –Infringement Before the Court - Yes “[P]rocess terms in product-by-process claims serve as limitations in determining infringement.” Abbot Labs, citing Atlantic. Are Product-by-Process Terms Limitations?

22. © 2011 Haynes and Boone, LLP 22 –Validity Before the Court - Maybe According to Amgen, they are not. However, it still seems that one can argue that claims should be interpreted consistently for validity and infringement Are Product-by-Process Terms Limitations?

23. © 2011 Haynes and Boone, LLP 23 Product-by-Process –Summary: Patentability before the PTO: No (rebuttable) Infringement before a court: Yes Validity before a court: Maybe

24. © 2011 Haynes and Boone, LLP 24 Product-by-Process –Takeaways Product-by-process claims seem to get the worst of all worlds –It is harder to obtain a patent. –It is harder to show infringement. –They may or may not help the patentee uphold the validity of the claim in court Therefore, avoid drafting product-by-process claims if possible

25. © 2011 Haynes and Boone, LLP 25 Additional Case of Interest Ex parte Rodriguez, (BPAI 2009) Claim 1: An apparatus comprising: a system configuration generator configured to generate a random system configuration file of a structurally variable and complex system; a system builder configured to (i) build a system level netlist and (ii) generate system parameters in response to said random system configuration file; and …

26. © 2011 Haynes and Boone, LLP 26 Claim 1 (continued) a system verification environment configured to verify said structurally variable and complex system in response to said system level netlist, wherein said simulation verification environment is configured to provide automatic random verification of said structurally variable and complex system in response to said random system configuration file. Ex parte Rodriguez

27. © 2011 Haynes and Boone, LLP 27 Board ruled: All claim elements were means plus function. (e.g., “ a system configuration generator configured to generate a random system configuration file of a structurally variable and complex system”) Ex parte Rodriguez

28. © 2011 Haynes and Boone, LLP 28 Ex parte Rodriguez The means plus function claim elements were rejected because there was no structure (algorithm) in the specification (indefinite and non- enabling) Spec had a high-level flow chart, but did not list any source code Spec stated a POSA would know “ appropriate programming ” to implement the invention.

29. © 2011 Haynes and Boone, LLP 29 Ex parte Rodriguez BPAI stated: “In particular, the specification does not disclose any specific algorithm that could be implemented on a general purpose computer to provide [the claimed function].”

30. © 2011 Haynes and Boone, LLP 30 Ex parte Rodriguez BPAI further stated: “ [F]unctional limitations must be commensurate with the scope of the supporting disclosure. ” “ As such, the specification may not enable the full scope of the functional language of the claim without undue experimentation. ”

31. © 2011 Haynes and Boone, LLP 31 Ex parte Rodriguez Takeaways: –In software/circuit patents, be careful to support the claim functions in spec software algorithms flow charts or source code circuit diagrams –Be careful for unintended MPF claims. –Understand that functional language can be very broad.

32. ©2011 Haynes and Boone, LLP 32 Thank you David O’Dell Haynes and Boone LLP David.ODell@haynesboone.com 867-8510