Claim Drafting Tips post-Biosig and Williamson Stephen S

Claim Drafting Tips post-Biosig and Williamson Stephen S. Wentsler IP Practice in Japan Committee Pre-Meeting October 20, 2015 Serving the Creative and Legal Communities © AIPLA 2015

Indefiniteness 2 © AIPLA 2015

Biosig Instruments, Inc. v. Nautilus, Inc. 715 F. 3 d 891 (April 26, 2013) 3 © AIPLA 2015

Electrodes “in spaced relationship with each other” ? ? ? 4 © AIPLA 2015

35 U. S. C. § 112(b) Conclusion – The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or joint inventor regards as the invention. 5 © AIPLA 2015

Rule– Claim features are definite if they are “amenable to construction” and not “insolubly ambiguous” Application – Definite since spacing can’t be greater than width of hand or so small as to effectively merge the electrodes together 6 © AIPLA 2015

Nautilus, Inc. v. Biosig Instruments, Inc. 134 S. Ct. 2120 (June 2, 2014) 7 © AIPLA 2015

Supreme Court Overrules Federal Circuit § Vacated Federal Circuit decision and remanded § “Amenable to Construction” and “Insolubly Ambiguous” standards overruled o S. Ct. – These standards lack the precision that § 112 demands 8 © AIPLA 2015

Supreme Court Establishes New Rule § A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention 9 © AIPLA 2015

Supreme Court Reaffirms Principles § Definiteness is to be evaluated from the perspective of a person skilled in the relevant art § Claims are to be read in light of the patent’s specification and prosecution history § Definiteness is to be measured as of the time of the patent application 10 © AIPLA 2015

Biosig Instruments, Inc. v. Nautilus, Inc. 783 F. 3 d 1374 (April 27, 2015) 11 © AIPLA 2015

Federal Circuit Again Finds Claims Definite § Even after applying the new S. Ct. test, the claims were again found definite. § The phrase “spaced relationship” does not render the claims indefinite under 35 U. S. C. § 112(b) 12 © AIPLA 2015

Post Biosig Cases Interval Licensing v. AOL, 766 F. 3 d 1364 o September 10, 2014 § Display system selectively Displays in “an unobtrusive manner that does not distract a user” § Held claim terms indefinite 13 © AIPLA 2015

Interval Licensing v. AOL, 766 F. 3 d 1364 o September 10, 2014 § Rational for holding o Focused on whether one skilled in the art would find reasonable certainty in light of the specification and prosecution history o Highly subjective terms may be found indefinite – must provide objective boundaries for those skilled in the art o Just one example in the specification did not provide skilled artisan with clear notice of what was claimed 14 © AIPLA 2015

DDR Holdings, LLC v. Hotels. com o , 773 F. 3 d 1245, December 5, 2014 § Claims recited “look and feel” § Held claim terms definite § Rational: o Evidence of sufficiently objective meaning in the art o Specification description consistent with meaning in the art 15 © AIPLA 2015

Eidos Display, LLC v. AU Optronics Corp. o , 779 F. 3 d 1360, March 10, 2015 § Claims recited “a contact hole for source wiring and gate wiring connection terminals” § Held claim term definite § Rational: o Intrinsic evidence alone sufficient so extrinsic evidence “immaterial to the outcome” 16 © AIPLA 2015

Teva Pharms. USA, Inc. v. Sandoz, Inc. o 789 F. 3 d 1335, June 18, 2015 § Claims recited “molecular weight” § Held claim term indefinite § Rational: o Specification and prosecution history did not provide one of ordinary skill in the art with reasonable certainty on the meaning of “molecular weight” o Peak average molecular weight (Mp)? o Number average molecular weight (Mn)? o Weight average molecular weight (Mw)? 17 © AIPLA 2015

Dow Chem. Co. v. Nova Chems. Corp. o 2015 U. S. App. LEXIS 15191, August 28, 2015 § Claims recited “a slope of strain hardening coefficient” § Held claim term indefinite § Rational: o Specification and prosecution history did not provide method of determining slope o Four different methods were possible with different results 18 © AIPLA 2015

Claim drafting tips in light of Biosig § Each claim term should find antecedent basis in the specification § Consider whether claim term should be discussed to clearly inform one of ordinary skill in the art the meaning of the term. § Give examples of what the term means. § Consider avoiding open-ended meanings for terms in the specification. 19 © AIPLA 2015

Claim drafting tips in light of Biosig § Avoid highly subjective terms in the claims § If subjective terms are used, provide objective boundaries in the specification 20 © AIPLA 2015

Claim drafting tips in light of Biosig § If a term is calculated, the specification should clearly indicate the procedure for calculating, particularly if there are multiple ways of calculating that provide different results § If a property is being claimed, make sure the correct term of art is used and described in the specification 21 © AIPLA 2015

Means-Plus-Function 22 © AIPLA 2015

Williamson v. Citrix Online, LLC, 792 F. 3 d 1339 (June 16, 2015) Claims recite “distributed learning control module” Question 1: Does 35 U. S. C. § 112, para. 6 [now 112(f)] apply? § Court held yes 23 © AIPLA 2015

Williamson v. Citrix Online, LLC, 792 F. 3 d 1339 (June 16, 2015) Question 2: Does the specification provide adequate corresponding structure to perform all of the claimed functions? § Court held no, claim invalid for indefiniteness 24 © AIPLA 2015

35 U. S. C. § 112(f) Element in Claim for a Combination. — 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. 25 © AIPLA 2015

Now Williamson holds § No longer strong presumption that 112(f) does not apply when the word “means” is not used § The standard is 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. 26 © AIPLA 2015

Now Williamson holds § When a claim term lacks the word “means, ” the presumption can be overcome and 112(f) applies if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing the function. ” 27 © AIPLA 2015

Application to “distributed learning control module” § “means” merely replaced with “nonce” word “module” § Prefix “distributed learning control” does not have sufficient structure 28 © AIPLA 2015

Media Rights v. Capital One, 2015 U. S. App. LEXIS 15767 (Sept. 4, 2015) Claims recite “compliance mechanism” Question 1: Does 35 U. S. C. § 112, para. 6 [now 112(f)] apply? § Court held yes 29 © AIPLA 2015

Media Rights v. Capital One, 2015 U. S. App. LEXIS 15767 (Sept. 4, 2015) Question 2: Does the specification provide adequate corresponding structure to perform the function? § Court held no, claim invalid for indefiniteness 30 © AIPLA 2015

Claim drafting tips in light of Williamson § Avoid “nonce” words that do not involve sufficiently definite structure o Module o Mechanism o Element o Device 31 © AIPLA 2015

Claim drafting tips in light of Williamson § Avoid Prefix that appears functional without structure o Not as good – q Lighting device – means for lighting o Maybe better – q 32 Electrical light– means for electrical? © AIPLA 2015

Claim drafting tips in light of Williamson § Try to add some structure o Not as good – q Fluid dispensing device – means for dispensing fluid o Maybe better – q Fluid dispenser – means for fluid? o Maybe even better q 33 Fluid dispenser including a fluid port © AIPLA 2015

Claim drafting tips in light of Williamson § Support in the specification o Use example structures to perform the function o Carefully draft the specification to avoid indefinite claims if terms are found to invoke 112(f) 34 © AIPLA 2015

Thanks for your attention! Questions? Stephen S. Wentsler LLC 7443 Center Street Mentor, Ohio 44060 tel +1 (440) 290 -4507 swentsler@wentsler. com www. wentsler. com 35 © AIPLA 2015