By now, you are probably aware of the numerous patent law changes made under the America Invents Act. If you are involved in patent application preparation and/or prosecution, you are probably also aware of the recent tendencies of Examiners to (rightly or wrongly) interpret claim terms under 35 U.S.C. 112, sixth paragraph. One trend that you may not be aware of from 2013, however, is the growing number of Appeals involving computer related claims where the Patent Trial and Appeals Board (PTAB) issued one or more new grounds of rejection under 35 U.S.C. § 112.
This page contains a consolidated list of all recently denied petitions, organized in reverse chronological order by date of certiorari petition. Universal Lighting Technologies, Inc. v. Lighting Ballast Control LLC, No. 15-893Question Presented:This petition presents the following important and unsettled question of federal patent law on the rules governing construction of patent claims:When and how can expert testimony or other extrinsic evidence be used to avoid the construction of a patent claim otherwise dictated by the patent's intrinsic record, including in particular to avoid the restrictions imposed by 35 U.S.C. §112 ¶ 6 on functional claiming?Cert. petition filed 1/11/16, waiver of respondent Lighting Ballast Control LLC filed 1/13/16, conference 2/19/16.
Supplemental Examination has been in place for a few years now, (see Nyshadham, Burgy, Murphy, Lewis, and Irving, “AIA Supplemental Examination Nuts and Bolts: Get it in Your Toolbox and Don’t Leave Home Without It,” AIA Prosecution First blog post June 3, 2019) and it is interesting to see how some patent owners have used it and what results the procedure has provided. In Santos, Bosch, Leiman, Barker, Ward, Lewis, and Irving, “A Tale of Two Supplemental Examinations: Part 1: Unraveling Confusion,” June 6, 2019, we looked at a Supplemental Examination request filed by a patent owner to address issues relating to 35 U.S.C. §112. We discuss here in Part 2 a Supplemental Examination request filed by a patent owner to address an inadvertent failure to cite prior art during original prosecution.Failure to cite prior art may be important because, according to 37 C.F.R. § 1.
Because algorithms are inherently functional in nature, software patent claims are frequently written using functional, as opposed to structural, terms. In many cases, software claims recite vague sounding “units” or “modules” to carry out steps of the algorithm.Consequently, software claims are often subject to the means-plus-function guidelines set forth in 35 U.S.C. §112(f), which require that the specification describes structure to perform the claimed function. Although a computer-implemented algorithm is necessarily executed using structural parts—e.g., a microprocessor, a memory, etc.—a description of such parts in the specification, on its own, may not suffice as the structure needed to satisfy 35 U.S.C. §112(f) and protect the claims from indefiniteness.What is Means-Plus-Function?
The Court found that the Board improperly conflated the two steps of the means-plus-function analysis. In short, the Board erroneously held “that the specification’s disclosure of corresponding structure demonstrates that the alleged means-plus-function term is sufficiently definite so as to not invoke 35 U.S.C. § 112, ¶ 6.” See MTD Prods.
On January 4, 2019, the United States Patent and Trademark Office (USPTO) announced new guidelines for “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112.” These guidelines, published in the Federal Register on January 7, 2019, take immediate effect and apply to all pending applications and issued patents.While nothing in these guidelines appears to alter the current framework for analyzing computer-implemented means-plus-function claim terms, the guidelines nonetheless provide both patent prosecutors and patent litigators with a helpful reminder of certain additional considerations encountered when a patent claims software or other computer-implemented function.
For these reasons, the PTAB found that Petitioner met the burden to demonstrate the reasonable likelihood to prevail with regard to at least one of the challenged claims.Practice Take-AwayThis case illustrates how a priority challenge based on a lack of written description can transform itself into an attack on patentability in an IPR proceeding. Written description issues often find their way into IPR proceedings when the parties have disputes over the priority date of a challenged claim or of an alleged reference.The PTAB sanctioned this practice because “there was a difference between compliance with the requirements of 35 U.S.C. § 112 and assessing the earliest priority date for a claim.” SAP America, Inc. v. Pi-Net Int’l, Inc., No.
Patent practitioners, inventors, in-house counsel, and patent examiners alike have been clamoring for more guidance on computer-implemented functional claim limitations invoking § 112(f) since the Federal Circuit’s en banc Williamson v. Citrix decision in 2015. To help answer some of those pleas, the U.S. Patent and Trademark Office (USPTO) published a Federal Register notice on January 7, 2019 to address issues under 35 USC § 112. In the most recent Patent Quality Chat on June 11, 2019, Jeffrey West, Senior Legal Advisor, and Bob Bahr, Deputy Commissioner for Patent Examination Policy, spoke on this topic in a presentation entitled “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112,” highlights of which are provided in this article.
104(d)(2) setting forth specific factual statements and an explanation to support the examiner’s position. The division of Step 2A of the Alice/Mayo test into two prongs appears to indicate that the PTO is trying to teach the examiners to engage in more critical analysis of whether a § 101 rejection is warranted and thereby decrease the number of § 101 rejections.Guidelines for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 USC 112 The Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 USC 112 guidelines consist of two parts. Part I focuses on claim interpretation under 35 USC § 112(f) and compliance with the definiteness requirement of 35 USC § 112(b).
Lastly, the claim concentrated on by the Federal Circuit was a means-plus-function claim. The lower court interpreted the “means for configuring” language of the claim under 35 U.S.C. § 112 ¶ 6, importing a four-step algorithm into the claim. In so doing, the lower court introduced, into the claims, the specific improvements over the prior art.