Is the U.S. Adopting an "Essential Element" Test for

Patent Validity?

David J. Thibodeau Jr.April 2009

35 USC §112

(¶1) The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same,

and shall set forth the best mode contemplated by the inventor of carrying out his invention.

35 USC §112

(¶2) The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention…..

(¶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.

The law prior to July 2005

Spectra Physics v. Coherent (Fed. Cir. 1987) "If the claimed invention pertains to an art where the

results are predictable, e.g., mechanical or electrical versus chemical, a broad claim can be enabled by the disclosure of a single embodiment and

is not invalid simply because it reads on another embodiment“

The law prior to July 2005

Northern Telecom v. Datapoint (Fed. Cir. 1990)

“Where the claimed invention is not in the details of the program, but in the claimed combination of method steps,

the fact that many designs for the software are possible or whether each programmer would work out the details in an identical way is not relevant“

The law prior to July 2005

S3 Inc. v. nVidia (Fed. Cir. 2001)

"The purpose of the claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant….

“A claim is not indefinite simply because it is hard to

understand"

The Law circa 2005

Philips v. AWH (Fed. Cir. 2005)

A claim term is read not only in the context of the particular claim in which it appears, but in the context of the entire patent, including the specification.

The fact that the written description .. sets forth multiple

objectives should not be read restrictively so as to require that the [claim] ... serve all of the [stated] objectives.

Lizard Tech (October 2005)

Lizard Tech1. A method for selectively viewing areas of an image at multiple

resolutions … comprising the steps of: … performing on a computer one or more discrete wavelet

transformation (DWT)-based compression processes over each said tile image data Tij(x,y) in a selected sequence to output each said Tij(x,y) as a succession of DWT coefficients . . . ;

maintaining updated sums of said DWT coefficients from said discrete tile image Tij(x,y) to form a seamless DWT of said I(x,y)

21. A method comprising the steps of: performing one or more discrete wavelet transformation (DWT)-

based compression processes on each said tile image data T.sub.ij (x,y) in a selected sequence to output each said discrete tile image data T.sub.ij (x,y) as a succession of DWT coefficients …

selecting a viewing set … to be viewed at a desired resolution.

Lizard Tech Lourie, Michel and Newman (majority opinion): "[The c]laims must be interpreted, in light of the written

description, but not beyond it, because otherwise they would be interpreted to cover inventions or aspects of an invention that have not been disclosed. Claims are not necessarily limited to preferred embodiments, but, if there are no other embodiments, and no other disclosure, then they may be so limited."

Rader and Gajarsa (in dissent): “This court’s written description jurisprudence has become

opaque to the point of obscuring other areas of the law.” 

Lizard TechObservation

Although the specification need only include enough detail to convince a person of skill in the art that the inventor possessed the invention,

one cannot always support broad claim language by describing only a single embodiment.

Automotive Tech v. BMW et al.

Automotive TechA side impact crash sensor for a vehicle having front and rear

wheels, said sensor comprising: (a) a housing; (b) a mass within said housing movable relative to said housing

in response to accelerations of said housing; (c) means responsive to the motion of said mass upon

acceleration of said housing in excess of a predetermined threshold value, for initiating an occupant protection apparatus; and

(d) means for mounting said housing onto at least one of a side door of the vehicle … between the centers of the front and rear wheels.

Automotive Tech

District Court (trial level): "Markman" hearing construed the means clause to include both mechanical and electronic sensors

CAFC: "Under the district court’s construction, however, that full scope must be enabled… The specification’s enablement of one mode of practicing the invention (the mechanical sensor) was not sufficient to satisfy the enablement requirement for a broader claim directed to all types of sensors"

Automotive Tech Observations:

One way to avoid this problem – draft the specification accordingly

Claims in “means plus function” format are not a panacea

Neither are broad claims !

ICU Medical v. Alaris Medical

ICU Medical A medical valve comprising: a body including an internal cavity … having an

opening sufficiently large to receive a delivery end of a medical implement which transfers fluid through said delivery end;

a resilient seal which is adapted to be moved into a compressed state upon insertion of the medical implement into said opening …

[[[a spike having a tip and a passageway with a hole that allows fluid to flow through said passageway]]]

ICU Medical

SUMMARY OF THE INVENTION

The valve of this invention has several features …

The first feature of this invention is that the valve has a body including wall structure defining an internal cavity …. The second feature is [a] spike [that] has a tip with at least one hole located at or near the tip, and a passageway in communication with the hole that allows fluid to flow.

Ex Parte Miyazaki

"if a claim is amenable to two or more plausible constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention …

Conclusions and drafting tips

The CAFC does not have an “essential elements” test

BUT

obtaining broad claim coverage requires careful consideration of what the invention truly is, with precisely described alternate embodiments.

Conclusions and drafting tips

- Means claims, while (a) newly important and (b) having the potential to avoid this issue, are not a panacea

- Avoid statements in the specification and during prosecution such as “The invention is X….” or "It is essential that Y", etc.

- Ambiguities (or even multiple plausible interpretations) of claim terms may lead to invalidity – more than before

For the litigators

Expect accused infringers to try invalidating a claim under 112 ¶1 when

- patentee obtains a broad Markman ruling - accused device encompass any "embodiments" not explicitly disclosed in the specification - a claim element is eliminated during prosecution - a feature is described in the specification as being “the invention” “important” “essential” etc. regardless of what the claims actually say

Case citations / further reading"Written Description Training Materials", U.S. Patent Office, March 2008 see:

www.uspto.gov/web/menu/written.pdfAriad v. Eli Lilly (Fed. Cir. 2008-1248, decided April 3, 2009)Automotive Technologies v. BMW et al., 501 F.3d. 1274 (Fed. Cir. 2007)Ex Parte Miyazaki, 89 U.S.P.Q.2D (BNA) 1207 (Bd. Pat. App. Int. 2009)ICU Medical v. Alaris Medical (Fed. Cir. 2008-1077 decided March 13, 2009)Liebel-Flarsheim v. Medrad, 481 F3d 1371 (Fed. Cir. 2007)Lizard Tech v. Earth Resources Mapping, 424 F.3d 1336 (Fed. Cir. 2005)Northern Telecom v. Datapoint, 908 F.2d 931 (Fed. Cir. 1990) cert. denied, 498 U.S. 920 (1990)Philips v. AWH Corp. 415 F.2d 1303 (Fed. Cir. 2005)S3 Inc. v. nVidia, 259 F.3d 1364 (Fed. Cir. 2001)Spectra Physics v. Coherent, 827 F.2d 1524 (Fed. Cir. 1987)