Case law on swear-behind declarations (Part II)

This is Part II in a series explaining what the BPAI considers to be a sufficient § 1.131 (swear behind) declaration. Part I (here) explained that to show actual reduction or conception, a § 1.131 declaration should tie the supporting documents to the claims. The BPAI decisions covered in Part I offered only general guidance on how to do this. Today I'll examine some decisions that are more helpful in explaining where the Applicant went wrong.

The general rule is that the evidence must show either conception of, or actual reduction to practice of, the claimed invention.

Actual reduction to practice requires proof of a physical embodiment or performance of a process that includes all limitations of the claims. See UMC Elecs. Co. v. U.S., 816 F.2d 647, 652 (Fed. Cir. 1987)
Conception is “the formation, in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is to be thereafter to be applied in practice.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985).  

More specifically: 

Vague and general statements in broad terms about what the exhibits describe along with a general assertion that the exhibits describe a reduction to practice "amounts essentially to mere pleading, unsupported by proof or a showing of facts" and, thus, does not satisfy the requirements of  37 CFR 1.131(b). In re Borkowski, 505 F.2d 713 (CCPA 1974). Applicant must give a clear explanation of the exhibits pointing out exactly what facts are established and relied on by applicant. 505 F.2d at 718-19.

The Board has consistently read In re Borkowski to require a mapping between the exhibits and the claims.

In Ex parte Mittleman, the Board criticized the insufficient declaration in some detail. The claims at issue were directed to a towable piece of luggage with an inventive handle. In addition to the handle, the claims also recited “a piece of baggage” and “at least one wheel connected to the piece of baggage, said wheel having a wheel rotation axis.” The exhibits to the declaration included CAD drawings and photographs of the handle. The Board explained that the declaration was insufficient because the claimed baggage and wheel were not in the drawings or in the photograph.

The Board then explained that simply providing drawings and/or photographs that included the claimed features is not enough, because the Appellants must also provide a mapping between information in the exhibits and claim limitations.

Even were we to accept as true that the computer-aided rendering accurately corresponds to every feature of the handle prototype, this statement fails to map the information in the affidavits to the claim limitations. In particular, not every feature of the prototype described by the named inventors is labeled in the computer-aided rendering. For example, the computer-aided rendering does not have the following items labeled so that they correspond to the description of the handle prototype: the handle, the handle grip, the hollow stem, or the intermediate member (Facts 15.d, 15.h). Further, neither the description of the prototype, nor the labels on the computer-aided rendering correspond to every limitation of the claims. For example, neither the prototype description nor the computer-aided rendering identify a telescoping arm portion such as recited in independent claim 1. Like the appellants in Borkowski, Appellants here have not sufficiently explained the contents of the exhibits. More specifically, Appellants have not mapped the features of the handle prototype to the claim limitations. Absent a clear explanation, Appellants’ affidavits are of little assistance in enabling us to determine if there had been an actual reduction to practice.
(Ex parte Mittleman.)

In Ex parte Draper, the Board noted the absence of a mapping between the declaration and the claims:

Here, Appellant provides no discussion in the Declaration explaining how the “LinkFinder.h” header file2 shown in Exhibit A describes the claimed invention. (FF 3). We find the submitted Exhibit A comment description merely reveals the declaration for a “ClinkFinder” class that processes a data stream against a set of parsing rules that further calls a specified “ClinkProcessor” to process each link identified by the parsing rules. (Declaration, Exhibit A, page 1) (FF 4). Therefore, we find Appellant’s proffered Exhibit A source code merely shows possession of the recited “parsing [of] one or more data objects of the data structure,” in the context of finding links. (Claim 1). In particular, we find Appellant’s Declaration does not show or explain how the “object access interface” recited in claim 1 has been reduced to practice. Likewise, we find Appellant’s Declaration fails to show or explain how the data elements that are identified and combined to “obtain one or more hyperlink addresses” have been reduced to practice. (See claim 1).

Additional guidance for the proper contents of a swear-behind can be found in decisions in which the Board found that the declaration was sufficient to prove conception. Some of these decisions specifically note a correspondence between the claims and the relied-upon documents.

For example, in Ex parte Cafar, the Examiner found the declaration ineffective to show conception because one of the claims included "a flat straightener," yet the drawings submitted with the declaration did not illustrate this feature. The Board disagreed, stating that "[e]ach limitation of claim 5 is described in the invention disclosure, including an express statement of a 'flat straightener'."
However, other Board decisions involve a declaration which does not specifically tie the disclosure to specific claim elements, yet the Board nonetheless approved of the swear-behind. In some of them, the Board made a (conclusory) finding of fact that the declaration and/or documents do establish conception. (Ex parte McDysan, the 37-page invention disclosure document was found to be "a description of Appellants’ invention as set forth in the subject application"; Ex parte Li, the 20-page invention disclosure document "established proof of conception."

In at least one decision where the approved-of declaration did not mention claim elements (Ex parte Cho), the Board reviewed the disclosure and made significant findings of fact on the record. The disclosure described the invention as follows: “[b]y adding multiple, repeating, numbers as a memory location for phone/pager numbers, users can easily associate someone’s numbers (office, home, cell, pager, etc.) into one set of memory locations (i.e. 5, 55, 555, 5555, etc.)” The declaration in Cho merely stated that the "claimed subject matter of the referenced patent application was the subject of a written disclosure [attached]." The Board nonetheless found that the declaration was sufficient to show conception because the subject matter of certain claims was "at least reasonably suggested in [the disclosure document]. Specifically, the invention disclosure document discusses storing various numbers—namely a cell phone number, a home number, an office number, and a pager number—to distinct memory locations (FF 9-10). These stored numbers, in our view, reasonably support the broader recitation of stored information or addresses."

Other Board decisions emphasize the importance of clearly explaining which facts are relied on for reduction, conception, and/or diligence. In Ex parte O'Connell, the Board noted that "[a]t best, Appellants’ Declaration evidences a 'conception' date of the invention prior to Li’s effective date. However, Appellants have not provided any evidence to support the due diligence requirement." And in Ex parte Vo, the Board chastised the Applicant for a confusing declaration that did not properly distinguish between reduction, conception and diligence:

The Rule 131 Declaration does not explainwhether Appellant is asserting (1) a reduction to practice prior to the effective date of the reference to be antedated and/or (2) conception of the invention prior to that date coupled with the requsite diligence. Instead, the Rule 131 Declaration asserts that Appellant “made the invention described and claimed in [Appellant’s] application prior to April 26, 2001." ...
Because the Rule 131 Declaration, e-mails, and letter fail to assert that the claimed method was performed prior to the [relevant date] as required to establish an actual reduction to practice prior to that date, the Examiner was correct to consider whether the evidence instead establishes conception prior to that date coupled with the requisite diligence. ...
[However, ] Appellant makes only the following arguments, which are germane to conception rather than diligence. (Emphasis added.)

This concludes my discussion of what the BPAI requires to show either conception or actual reduction to practice in a § 1.131 declaration. Part III will discuss diligence, which is the second part of what's  required when you choose to show conception rather than actual reduction to practice.

Change in PTO procedure: BPAI, not Examiner, will determine if brief is compliant

PTO Director Kappos announced on his blog (here) a change in PTO procedure: the Board of Patent Appeals and Interferences will now have responsibility for determining whether an Appeal Brief is compliant or non-compliant. Details can found in the Federal Register (here).

The new procedure, which goes into effect March 30, 2010, is a big change from existing procedure, whereby an Appeal Brief went to the Examiner first  Under the new procedure, the Examiner won't see the Appeal Brief until the BPAI has checked it for compliance with 37 C.F.R 41.37. A memo to the Examining Corps (here) which announced this new procedure provides additional information, and indicates that a brief with "only minor informalities that do not affect the BPAI panel's ability to render a decision" will be accepted.

I think this new procedure is great news for all parties. First of all, Examiners can spend more time examining and less time dealing with formalities. But I see a more important ramification. Now that compliance will be determined by a small subset of BPAI personnel rather than a large number of Examiners, we should start to see some consistency in what does and doesn't constitute a compliant Appeal Brief.

I say this because it wasn't the nit-picky requirements that I found maddening. After all, the CFR itself dictates a lot of specifics about what an appeal brief must look like. If it's in the rules, you can expect to be required to get that right. No, what I found maddening was that what worked in one Brief didn't work in another. The Examiners and Legal Instrument Examiners were very inconsistent in applying the rules.

Statistics on how often BPAI finds swear-behind declaration sufficient

Yesterday I mentioned a new post on PatentlyO discussing some pro's and cons of swear-behind practice. More relevant stuff at PatentlyO: a new post (here) with statistics showing how often BPAI finds swear-behind declaration sufficient. You should read the entire post, but here's the highlight:

BPAI rejected the attempt to antedate in 77% (56) of these decisions, accepted the attempt to antedate in 22% (16), and partially accepted and partially rejected the attempt to antedate in 1% (1).

With such long odds, should any practitioner even try a swear-behind?

I'll agree this looks discouraging at first glance. But I read quite a few decisions while doing research for my blog, and I found that a lot of swear-behinds were not just insufficient, they came nowhere close.

When I say "nowhere close", I'm talking about declarations that said "here's an invention disclosure form showing we invented before the reference date and here's a few emails between inventors and attorneys showing diligence". If you read the first post in my swear-behind series (here), you'll see that what's really required is an explanation of how the facts show reduction to practice and diligence, not just conclusory statements.

So until I know how many of the 77% were declarations were full of conclusory statements, I won't interpret this statistic as "it's impossible to get a swear-behind accepted at the Board." Instead, I'll say "don't take your case to the Board unless your swear-behind meets the requirements set out by the case law."

Effect of arguing claims as a group on prosecution estoppel

Takeaway: Arguing claims as a group can be risky, inviting the court to find that those arguments apply to all claims in the group, even when the claim language differs. But in Seachange International, Inc. v. NCube Corp., 115 F.Supp.2d 473 (D.Del. 2000), the court declined to do so. The Applicant's careful phrasing of the argument, along with differences in claim language, helped the court reach the conclusion that "a member of the public reviewing the entire intrinsic record would be aware that the statements made by the applicant in the relevant portions of the prosecution history could not pertain to claim 37."

More Details: The application included several independent claims which used different language. Claim 37 referred to "through a network for data communications" while claim 1 used the more specific language "point-to-point two way channel interconnection." (Emphasis added.)

The Examiner grouped claims 1 and 37 together in rejecting the claims under § 103. The Applicant argued these claims as a group, using claim 1 as an example to distinguish over the references:

Applicant's claim 1 recites a method in which ... processor systems are interconnected using a point-to-point two-way channel interconnection with each one of the other processor systems. That is, any one processor system can communicate directly with any one of the other processor systems.

However, the Applicant did attempt to avoid having the arguments used wholesale against all claims in the group despite differences in claim language:

Applicant submits that with respect to each group of claims that certain of the claims in the group add further patentably distinct features to the invention and thus are further patentably distinct over the applied references. For simplicity, however, Applicant will in general treat a single claim as being representative of the group of claims but reserves its right to later argue that additional ones of the claims are patentably distinct over the combination of references.

When the patent was asserted, the accused infringer attempted to invoke prosecution history disclaimer to limit the claimed "network" of claim 37 to a network of directly connected processors, based on the "direct communication" argument made during prosecution. Specifically, the accused infringer argued that "the applicant limited the scope of claim 37 to its argument over claim 1 by grouping claim 37 with claim 1 and using claim 1 as illustrative of all claims in the group."

The court disagreed, finding on balance that "a member of the public reviewing the entire intrinsic record would be aware that the statements made by the applicant in the relevant portions of the prosecution history could not pertain to claim 37." The court relied on several factors for its finding:

First, the plain language of claim 1 and claim 37 indicates that claim 37 is broader in scope. Second, the file wrapper clearly indicates that claim 37 (application claim 40) was added to more fully cover the invention. Third, it was the examiner who originally grouped the claims. The applicant clearly indicated that its response was drafted with similar grouped arguments in an effort to achieve simplicity. Moreover, the applicant expressly stated that it believed that the individual claims were patentable independent of claim 1, and that the applicant reserved its rights in that respect. Finally, the arguments made in response to the rejection clearly addressed the subject matter of claim 1 both in substance and nomenclature.

My two cents: When the differences between my independent claims are as great as they are here, I typically argue separately. I doubt I'll change my practice based on this one district court decision. But the next time I do argue as a group, I'll probably add some boilerplate like that used here.

Pro's and cons of swear-behind declarations

Recently I began a series about swear-behind declarations. (First post is here.) My series of posts will focus on how to draft a swear-behind that the BPAI finds sufficient, in terms of explaining how the facts show reduction to practice and/or diligence, rather than making conclusory statements.

A new post (here) at Patently-O discusses the pro's and cons of swear-behind declarations. The new post is the fifth in a series discussing the results of a practitioner survey about the use of swear-behind declarations. Lots of interesting statistics about how often swear-behinds are used, and in what technologies.

Does submitting a product brochure risk prosecution history estoppel?

In an ideal world, you want to help the Examiner to understand the invention, so that you can quickly obtain a patent on the inventive features. But the reality is that the Examiner is not the only one you're prosecuting in front of. The doctrines of prosecution history disclaimer and prosecution history estoppel give an accused infringer ammunition to attempt to limit the scope of the claims. Thus, many patent prosecutors are very careful when making arguments that distinguish the claims from the prior art.

That's why I was surprised to see a response in which the Applicant submitted a product brochure to the Examiner and made the following statement:

    First, in order to aid in the Examiner's better understanding of the present invention, enclosed herewith are brochures of the "Voyager" electronic device which depicts the technical features and advantages of the present invention.

When I ran across this file history, here's what occurred to me: could an accused infringer attempt to construe the claims to include these features from the brochure? Product brochures are often full of details and product advantages — two things that I don't want to be read into the claims. I don't think that a court should, or even would, read such features into the claims. But why give the accused infringer something to argue about?

I note that the practitioner did limit the actual arguments to the claim language, rather than arguing outside the claims, so that might reduce the risk. But I'd think very carefully before submitting a product brochure to help distinguish over the art.

Swear-behind declarations (Part I)

Takeaway: BPAI case law shows that a declaration simply stating that the invention was conceived or reduced to practice is not enough for a § 1.131 (swear-behind) declaration, even when coupled with exhibits. The declaration should explain how the attested facts show actual reduction to practice, and/or conception plus diligence, of the the claimed invention.

This is the first in a series of posts explaining what makes a sufficient § 1.131 declaration. Though I'm using BPAI cases to examine the issue, courts handle the analysis in the same way. In fact, the BPAI usually cites to Federal Circuit cases on this subject. So this information should be helpful in drafting swear-behind declarations that stand up in litigation.

I'll start with actual reduction and conception, then later I'll cover diligence. Today's post provides an overview of cases in which the § 1.131 declaration was found insufficient to antedate a reference.

Most of the decisions which find a declaration to be insufficient criticize the Applicant for not tying the swear-behind declaration to specific claim elements. It seems clear that a conclusory statement along the lines of "the exhibits show that the claimed invention was conceived before the critical date" is not enough.

Ex parte Sagar: The criticism in Sagar is typical:

[T]he Declaration does not address the limitations of the claims. Likewise, the evidence filed along with the Declaration does not address the limitation of the claims. It is not clear what features the “invention” referred to in the Declaration and evidence includes. As such the Declaration and evidence does not establish possession of every feature recited in the claim.
(Emphasis added.)

Ex parte Molander: The declaration stated that conception was evidenced by an invention disclosure "which describes the invention described and claimed in the subject application." The Board found the declaration insufficient because it "does not explain how Exhibit A, which is an Invention Disclosure Form, proves conception of each claim limitation."

Ex parte Draper: The declaration stated that the inventor "conceived of a system including each of the elements of my currently-pending claims." The Board found that the declaration insufficient because it "does not state what was done and how it relates to the claim elements. The declaration does not state with any specificity what was conceived or what was reduced to practice and how."

Ex parte Daniels: The Board characterized the sworn statement that the claimed invention was actually reduced to practice as a "bald assertion" and further noted that:

[T]he Appellants failed to point to the specific information [in the project planning and design documents] on which they rely to establish conception. Neither the '131 affidavit nor the arguments in the Brief establish facts sufficient to tie the information found in the charts and diagrams of the project documents to the claim limitations ... As such, the attached project documents are of little assistance in enabling the Patent Office to judge whether there was conception of the invention prior to the effective date of the prior art ... (Emphasis added.)

In at least one case (Ex parte Sharma), the declaration did not tie the disclosure to the claim language, but the Board nonetheless examined the supporting documents and performed some significant fact finding. In Sharma, the Board concluded that the declaration did not show conception because the supporting document (an invention disclosure) was missing eight claim limitations.

And in another decision (Ex parte NTP) the Board criticized the Applicant for too much information because this resulted in a confusing declaration. The declaration purported to be an element-by-element analysis, but the Board found this to be a "scavenger hunt":

NTP does not directly identify and explain the evidence which would show the conception and/or reduction to practice of the particular claim element. Indeed, NTP does not even separately address conception and actual reduction to practice. Rather it directs us to its proposed findings of fact, designated by “DF,” which in turn directs us to its exhibits and/or other proposed facts. The exhibits often direct us to still other exhibits. We are left to sort through NTP’s submissions to figure out the relevance of the documents and testimony. (Emphasis added.)

These BPAI decisions offer only general guidance about how to tie the supporting documents to the claims. The next post in this series will examine a few decisions that are more helpful in explaining where the Applicant went wrong.

Ex parte Frye (precedential): BPAI does not give deference to Examiner findings

Takeaway: On appeal to the BPAI, is the Examiner presumed to be correct, such that the Appellant has the burden to show error in the Examiner's position? Or does the Board review de novo, and weigh both sides using the arguments and evidence or record? The new precedential decision Ex parte Frye answers the question: the Board does not give deference to positions taken by the Examiner. Frye also explicitly states that the Board's de novo review is only of those issues specifically challenged by the Appellant in the Appeal Brief / Reply Brief.

More details: Only a few decisions a year are designated as precedential, but this one is particularly unusual, because PTO Director Kappos and Deputy Director Barner actually joined in the opinion. Kappos also posted about Frye on his blog (here). PatentlyO also covered Frye (here).

Kappos doesn't spin this as new law. Instead, his blog post says that the decision merely "clarifies the Board’s longstanding practice." But I read a lot of BPAI decisions, and Frye seems to me to be a huge change. Most of the decisions that I've read in the past year require the Appellant to demonstrate Examiner error, which suggests that indeed, the Board is giving deference to the Examiner findings. As support for this proposition, the Board generally quotes In re Kahn:

Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

Before Frye, prominent patent commentator Hal Wegner of Foley & Lardner had written about the Board's reliance on the "reversible error standard" issue. Wegner came to the conclusion that Kahn does  not support a presumption of Examiner correctness. See Wegner's article (here) in the IP Frontline newsletter.

How to respond when the Examiner says "cannot show nonobviousness by attacking references individually"

In my practice, the most common type of § 103 rejection is one in which the Examiner alleges that specific elements are taught by Reference #1, and other elements are taught by Reference #2. In response to this type of rejection, I argue by explaining why each of those references does not teach what the Examiner alleges.

In such a case, I don't "argue the combination" because the Examiner hasn't relied on the combination to teach any particular element. In the situation I'm describing, the Examiner has instead relied on the combination only for combining individual elements, each of which is allegedly taught by a single reference. [See my previous posts (here and here) about a less common type of rejection in which the Examiner does actually rely on the combination for teaching a particular element.]

When I write a response like this, I almost always see boilerplate from the Examiner that says:

One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). 

I usually ignore this rejoinder. I tried a few times to explain that I'm only attacking the references "individually" because that's how the Examiner used them. But that didn't get anywhere, so now I don't bother, except maybe in an Appeal Brief.

Up to now, I haven't seen see this issue — how to deal with "can't attack individually" — discussed elsewhere. But I found a new post (here) at The Patent Prospector blog that does.

The Patent Prospector guest post, written by John M. DeBoer, agrees with my basic position — that you don't need to address the combination unless the Examiner actually relies on it. Better yet, John goes farther, explaining that In re Keller is applicable only to a specific fact situation, and is not applicable to the general case as used by many Examiners. If you spend a lot of your time doing prosecution, you should read John's Patent Prospector post. The comment thread for that post is worth reading too.

Claimed "without interruption" same as absence of teaching of interruption (Ex parte McGrath)

Ex parte McGrath
(Appeal 2008-3485;  App. No. 10/419,121; Tech. Center 2100)
Decided: February 3, 2009

McGrath discloses a microprocessor which implements a particular instruction. The representative claim on appeal was a method which included the step "executing a security initialization instruction." The claim further described the instruction as causing specific transmitting and retrieving actions, and further stated "the security initialization instruction is a single instruction including a plurality of atomically executed microcode components."

The reference used for anticipation disclosed a microprocessor instruction related to security, and the Board found that this instruction performed the claimed transmitting and retrieving actions. The Board then used what I think is strained reasoning to find that the instruction in the reference was atomically executed as claimed.

Ellison discloses the execution of a series of steps in a specified order and does not disclose that the execution of any of the steps in the series is interrupted by other processes. Therefore, construing the term “atomic” broadly but reasonably and in light of the Specification, which discloses that “to execute atomically refers to executing to completion in a specified order without interruption” (Spec. 12, ll. 17-18), we agree with the Examiner that Ellison discloses executing the iso_init instruction that causes the execution of a series of steps to completion in a specified order without disclosure of any interruption (i.e., “atomic”).
(Ex parte McGrath, p. 9, emphasis added.)

So the Board says that because the reference did *not* mention that interruptions *could occur* during the instruction, this means the reference implicitly taught that interruptions *could not occur*.

Since when is an ABSENCE of teaching NOT X the same as TEACHING X? Maybe this makes sense if a reference is expected to teach everything. In that case, the fact that something is not mentioned becomes important. But references do not say everything. Patents in particular have good reasons for leaving out lots of stuff. So I don't think it's proper, as a general rule, to draw an inference about the absence of a teaching in a patent reference. And I think the Board's reasoning is ridiculously strained.

The only thing worse than this reasoning is that the Board ignored a statement in the reference about interruptability of instructions from which a strong inference could be drawn. Specifically, the reference listed particular instructions as non-interruptible – and did not include the iso_init instruction relied on by the Examiner in this list! In the Appeal Brief, the Appellant pointed out the logical inference: that a POSITA would not understand the iso_init instruction to be non-interruptible, since it wasn't in the list. The Reply Brief also rebutted the Answer's alternative explanation of this teaching. And the Board said nothing at all about this important argument.

In my opinion, the Appellant had the better argument. But regardless of which side was more persuasive, it's incomprehensible to me that the Board didn't bring this up, and instead relied on an absence of a teaching that iso_init was interruptible as implying that iso_init was non-interruptible (as claimed).

Two "circuitry" elements not infringed by processor performing both functions

Takeaway: Unique Concepts, Inc. v. Brown, 939 F.2d 1558 (Fed. Cir. 1991) holds that there is no literal infringement where the patent in suit claims two elements and the accused device has only one element performing both functions. Applying this holding to a software context, a district court found that a claim including two separate "circuitry" elements is not literally infringed by a single processor performing both functions, even though "circuitry" was interpreted to cover the processor. Kernius v. International Electronics, Inc., 2007 WL 1040571 (D.Md., 2007).

More details: In an earlier post (here), I discussed the claim construction opinion for this same infringement suit. Several independent claims included "circuitry" elements: "call progress detector circuitry for detecting [a first or second call waiting signal];" and "circuitry to recognize a first signal [indicative of the first or second call waiting signal." As noted in my earlier post, the District Court construed the term "circuitry" in both elements to include software-based implementations, i.e., a processor performing the claimed function.

The accused device ("Catch-a-Call") implemented both the detecting and the recognizing functions with code executing on a processor. On Summary Judgment, the court found that the Catch-a-Call did not literally infringe because it "uses a single element - an Atmel brand microprocessor running a software program developed by [the manufacturer defendant] ... while the [patent in suit] claims two discrete elements to accomplish these functions."

The court further explained that this situation does not preclude a finding of infringement through the doctrine of equivalents, citing to Eagle Comtronics, Inc. v. Arrow Comm'n Lab's, 305 F.3d 1030, 1317 (Fed. Cir.2002). However, in this particular case the Plaintiff only asserted doctrine of equivalents for one of the disputed means, and did not even develop particularized evidence during discovery with respect to the other.

My two cents: Using one element instead of two to perform a function is precisely why we have the Doctrine of Equivalents. I'm no expert on the function-way-result test, but my gut feeling is that an accused infringer using one processor instead of two would be covered by Doctrine of Equivalents. I have no idea why the patentee did not pursue a Doctrine of Equivalents theory.

That said, I'm not so sure the one-is-different-than-two rule from Unique Concepts is appropriate in the software context. The reasoning used by Unique Concepts was that A and B must be construed differently than A and A, because otherwise reciting both types (A and B) is redundant. That makes sense when A and B are "linear border piece" and "right angle piece" — A and B really are different. But I think Kernius is really a case of A ("circuitry") and A ("circuitry"), not A ("circuitry for X") and B ("circuitry for Y").

Under Kernius, do you need five claim permutations to get literal coverage of a software implementation of functions A, B, and C?

1. first processor doing A, B, and C;
2. first processor doing A and B and second processor doing C; 
3. first processor doing A and second processor doing B and C;
4. first processor doing A and C and second processor doing B;
5. first processor doing A, second processor doing B, and third processor doing C;

Ex parte Tanaka on appeal at the Federal Circuit

Recently I posted (here) about Ex parte Tanaka, the precedential BPAI decision that held that reissue is not proper for adding dependent claims when issued claims remain in the application, since merely adding new dependents is not a "defect" that is curable by reissue.
  
According to this post at RFCExpress, Ex parte Tanaka is being appealed to the Federal Circuit.

Claim to "circuitry" covers software implementation of same function

Takeaway: Kernius v. International Electronics, Inc., 2007 WL 1040571 (D.Md., 2007), which is a claim construction opinion, found that a claim to "circuitry" performing a specific function did cover a software implementation of the same function, because the specification clearly stated that this function was performed by a programmed microcontroller. Under these facts, the Court found that the patentees had acted as their own lexicographer to redefine the ordinary meaning of "circuitry."

More Details: The patent in suit was U.S. 6,628,771. Several independent claims included the following element: "circuitry to recognize a first signal with a duty cycle or cadence coupled with frequency and level indication of a call waiting SAS signal." During claim construction, the parties focused on whether or not "circuitry" included " 'software based implementations', e.g., programmable microcontrollers."

After examining two Federal Circuit decisions which involved the term "circuitry" (Linear Tech. and Abacus Software), the Court found that neither addressed this precise issue. The Court decided that even if "circuitry" wouldn't usually be understood by a POSITA to cover software based implementations, it was in this case. Here, the specification clearly described the function of the claimed "circuitry to recognize" as being performed by a microcontroller, and more specifically by a programmed microcontroller.

[T]he principal function of [microcontroller 412] is to receive call progress signals, specifically for the preferred embodiment of the present invention, it is the call progress signal (SAS) alerting signals for CW and DCW.
[T]he microcontroller 412 is programmed with timing algorithms, which provide the flexibility for recognition of CW and a plurality of DCW signals.

The Court also noted that interpreting circuitry so as to exclude a microcontroller would exclude the preferred embodiment. A claim construction which excludes the preferred embodiment requires evidentiary support (Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)), and there was no such evidence presented here.

In summary, the Court found that the patentees had, through the written description and prosecution history, redefined "circuitry" to cover a microprocessor or microcontroller programmed to perform the claimed function.

My two cents: A mere footnote in the decision also noted that the spec contained broad language suggesting that "circuitry" covered software implementations: “[W]hile the disclosed embodiments of the present invention utilize programmed processors, and special-purpose integrated circuits, and digital processors these devices can be implemented using discrete devices, or any analog or hybrid counterpart of any of these devices." Since the Court put this in a footnote, and focused mostly on the other stuff mentioned above, I'm not sure that this broad language alone would be enough to move software into the area of coverage.

Presumably the patent drafter was focused on covering a software implementation, since the only embodiment described in detail was a software implementation. If so, calling it "circuitry" is a really odd way to go about it. By doing so, the patentee virtually guaranteed a fight with any defendant that used software to implement the function – which is exactly what happened here. Why not write a claim that more clearly covers the preferred embodiment?

On the other hand, maybe the patent drafter found a really clever way to cover both a hardware implementation and a software implementation with a single element. You might think means-plus-function is the perfect technique to do just do this, but it's not. Invoking § 112 ¶ 6 in the software realm heightens the disclosure requirement considerably. Imagine that instead of simply saying something like "suitable structures for fastening include a screw, a rivet, and a bolt," you had to explain in some detail how each of these items worked in order to claim "means for fastening." That's what the Federal Circuit requires when the structure performing the function is a processor: disclosure of a specific algorithm for each claimed function. (See Aristrocrat v. IGT.)

The patentee won an important victory at claim construction, since the accused infringer's device did use software. But you'll see in a future post that the patentee lost the war on infringement.

BPAI determines that reference's X teaches claimed "pseudo-X" (Ex parte Martinez)

Takeaway: In Ex parte Martinez, the Board agreed with the Examiner that generating a "nonmaskable interupt" was anticipated by the reference's generating a "nonmaskable pseudo interrupt." The Appellant argued that a "pseudo interrupt" was not the same as an actual interrupt, since "pseudo" means "fake". But the Board said that since the reference's "pseudo interrupt" caused the processor to operate in the same manner as an actual interrupt, it was irrelevant that the reference referred to the interrupt as "pseudo".

More Details:
Ex parte Martinez
(Appeal 2009-002619, Appl. No. 10/781,477, Tech. Center 2100)
Decided: February 22, 2010

The independent claim at issue was directed to a method of reporting computer reboots, and the feature at issue was "generating at least one non-maskable interrupt signal." The Examiner took the position that the feature was taught by this sentence in the reference: "Test equipment is connected to the processor-to-bus bridge through a three pin serial port, the test equipment able to set a bit in the critical interrupt register for requesting the nonmaskable pseudo-interrupt." (Emphasis added.) In the Appeal Brief, the Appellant argued that the rejection was improper because the reference "unequivocally states that nonmaskable interrupts are not used." The Appellant then referred to a dictionary definition of "pseudo" to show that the meaning was "false or counterfeit; fake." Though the Appellant didn't make the argument explicit, I think the implicit argument was this: "a fake X isn't the same as an X."

How did the Examiner get around this "fake interrupt isn't the same as an interrupt" reasoning? In short, by showing that the pseudo NMI in the reference operated exactly the same as a POSITA understood an actual NMI to operate. Namely, that the pseudo NMI transferred control to an interrupt routine and could not be disabled (masked) by the processor's interrupt disable instruction.

The Board summarily adopted the Examiner's reasoning:

We agree with the Examiner that "[t]he fact that Murthy called these non-maskable interrupts non maskable pseudo interrupt[s] is irrelevant . . . because an interrupt when implemented is an interrupt whether it is called pseudo or something else." (Answer 16.) "In other words, a result of implementing interrupts or pseudo interrupts within a processor is the same. The result is to call an exception, and execute an exception routine . . . ."(Id.)

I actually agree wholeheartedly with the Board's decision. [Disclaimer: I happen to know a lot about this particular area of technology, because I used to be a software developer and have a lot of experience with interrupts. It's possible that this colors my thinking here.]

The way I see it, "nonmaskable interrupt" could be understood in two ways. One, as a functional description. This is how the Examiner interpreted it: an NMI transfers control to an interrupt routine and cannot be disabled (masked) by the processor's interrupt disable instruction. The other interpretation is structural: an NMI is the signal that is connected to the processor's NMI pin.

If you choose to claim only function, then any implementation of that function will anticipate. To distinguish function, you must show that the claimed function operates differently than the reference's function. Here, the Appellant should prevail if he could show that the pseudo NMI did not transfer control to an interrupt routine, or that the pseudo NMI could be masked. But what doesn't matter is that the reference calls the function something else, or uses different words to describe it – if a POSITA would understand the reference to teach that function, it anticipates.

Here, it seems like the Appellant could have claimed some structure along with the function, something like "generating an non-maskable interrupt signal connected to the NMI input line of a processor." Because the reference explicitly taught that the pseudo NMI was connected to a different processor input, that claim would have distinguished over the reference.

I realize there may be good reasons to avoid claiming structure, perhaps reasons related to infringement. In my mind, that's the toughest part of claim drafting: coming up with claims that get over the art and are still infringed.

Patent prosecution resources: free claim construction dictionary through PUBPAT

PUBPAT is a non-profit organizaton affiliated with the Benjamin N. Cardozo School of Law. PUBPAT's mission is "to protect freedom in the patent system." PUBPAT announced that it is making several claim construction dictionaries available in PDF form. See the press release here for the download links.

If you ever want to know how a particular claim term has been interpreted in litigation, this is the resource to use. For example, the term "coupled" appears over 30 times in PUBPAT's dictionary, and you can see not only the construction used by the court, but also the relevant text of the decision.

I downloaded the Electronics, Computer and Business Methods dictionary and gave it a quick test drive. Be aware that each dictionary is about 50 megabytes in size, so I recommend downloading to local storage rather than trying to interact with the PDF over the Internet. The PDF contains hyperlinks for each letter of the alphabet, so you can find a word quickly by jumping to its first letter, and browsing from there. Or you can use the PDF search feature, but this will take several minutes because of the huge number of pages (over 4000). I wanted to study the chunk of pages discussing a particular term, and was admittedly disappointed to find out that the Print functionality, and even Copy to Clipboard functionality, of the PDF has been disabled. But you can hardly blame the author or PUBPAT for reducing the feature set of a free resource.

I think PUBPAT did us a great service. The next time I can't choose between two words when drafting a claim, I'll probably use the PUBPAT dictionary.

Case law you can use: functional equivalent not enough for anticipation

Takeaway: When structure is claimed, a reference used for anticipation must disclose the claimed structure, not merely a structure that performs the same function. See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965).

I first came across the "no functional equivalents" doctrine in the Appellant's brief for a mechanical case, Ex parte Konstant. One of the claim elements at issue in Konstant was a "flange ... with the entire upper width that defines an upper support for at least one cross bar." Citing to a dictionary, the Examiner asserted that a flange was "a projection used for strength or attachment," then asserted that "the 'steps' or 'lips' of [the reference] perform this function." The Appellant cited Suzuki v. Richardson for the proposition "for anticipation, 'almost' is not enough; there is no such thing as 'anticipation by equivalents'."

I thought it was an interesting argument, though the Board in Konstant didn't mention the doctrine and instead reversed on other grounds. (Namely, it's improper for Examiner to rely on the same structure to disclose two separate claimed elements; see my Ex parte Konstant post here).

I was excited to see the BPAI using what seems to be the same "no functional equivalents" doctrine in Ex parte Kershaw. I found out about this decision on the Florida Patent Lawyer blog. You should read Mike Terry's post (here) for the details, but here's my take on it. The Appellant claimed a memory management unit, and the Board found that the Examiner's reliance on software components that perform memory management was misplaced since the claimed unit was a structure (i.e., hardware):

[T]he Examiner appears to be relying on certain memory management function performed by various software components in Ledebohm (e.g., Driver Program 136, and/or Resource Manager 138). (See FF2.) We agree that Ledebohm is directed to performing management functions. However, we note that functional equivalence is not enough to show anticipation of a structural component (such as the claimed memory management unit). See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965) (“the functional equivalent is not enough to be a full anticipation of the specific device claimed by appellant.”)
(Ex parte Kershaw, p. 8.)

While most of the applications I work on involve a lot of function rather than structure, when I do have a structural element I'm definitely going to watch out for an opportunity to apply In re Ruskin.

BPAI requirements for Examiner consideration of declarations

Takeaway: If you submit evidence during prosecution and the Examiner dismisses the evidence without a proper explanation or even ignores it outright, consider an appeal. Although an Examiner is allowed to be unpersuaded by evidence presented by an Applicant, evidence must nonetheless be given proper consideration. Evidence often takes the form of a § 1.132 declaration, though it can also include information in the specification itself — but evidence is something other than mere attorney argument.

Here is a sample of BPAI decisions finding the Examiner did not properly consider the evidence.

Ex parte Malone: The claims in Malone were directed to a lamp housing including a substrate and a conductive layer of a specified thickness. The Applicant submitted a § 1.132 declaration discussing each of the references used the obviousness rejection and explaining why the claimed subject matter was not obvious in view of specific teachings in each reference. In the Advisory Action, the Examiner found that the declaration was insufficient to overcome the rejections because it stated only conclusions. In the Appeal Brief, the Applicant argued that the declaration did not state only conclusions, but instead explained in detail why a POSITA would not understand the prior art to teach or suggest the claim elements at issue. The Board chastised the Examiner for a "largely dismissive" response to the Applicant's § 1.132 declaration which presented evidence of non-obviousness. The Board then reversed the obviousness rejection "since the Examiner did not properly consider the submitted evidence."

Ex parte Rapp: The claims in Rapp were directed to a food product. The Applicant submitted a § 1.132 declaration as evidence of long-felt need and commercial success. The Examiner's Answer did acknowledge that the Appellant had presented rebuttal evidence, but then stated: "However, the claimed composition and process has been shown and would have been obvious to make such a product as shown above." The Examiner's treatment of the declaration led the Board to reverse the obviousness rejection, characterizing the Examiner's response to the declaration as "largely dismissive."

Ex parte Ramdsen: In this chemical case, the evidence took the form of experimental results in the Appellant's specification. The Appellant used this data as evidence of unexpected results, rebutting the Examiner's prima facie case of obviousness. The Examiner did not comment on the evidence in the Advisory Action or Examiner's Answer. The Board reversed the obviousness rejection because "the Examiner has provided no statement that this evidence has been considered, much less identified reasons as to why the Examiner believes that the evidence of obviousness when considered anew in light of all of the Appellants’ evidence of nonobviousness weighs in favor of obviousness."

Ex parte Donnelly Corp.: The claim element at issue in this case was an adhesive compound. To rebut a prima facie case of obviousness, the Appellant submitted several § 1.132 declarations as evidence of unexpected results and commercial success. The Examiner's Answer acknowledged the declarations then went on to state "Appellant did not show unexpected results over silicone resins." The Answer also criticized the evidence as not being commensurate in scope with the claims. The Board reversed the rejection because the Examiner did not explain why the evidence was insufficient:

[T]he Examiner states that Appellant did not show unexpected results over silicone resins. But this conclusory statement does not explain why the relied-upon evidence, which included test results comparing epoxy resin with silicone resin, is insufficient. The Examiner further argues that the evidence must be commensurate in scope with the claims. Again, however, it was incumbent upon the Examiner to explain, in a meaningful way, why the evidence offered in support of nonobviousness was not sufficient to reasonably support the scope of the claims. Indeed, it is not entirely clear from the Examiner’s position what additional experimentation would have been necessary to address the Examiner’s concerns. In a similar fashion, the Examiner dismissed Appellant’s evidence offered in support of commercial success without any meaningful discussion based on facts. Thus, the actual bases for the Examiner’s perceived deficiencies in the evidence are left to speculation.
(Ex parte Donnelly Corp, pp. 1415.)