Guest Post: A Cautionary Tale Relating to Use of Declarations Under 37 C.F.R. § 1.132

[Guest Post by Tracey Harrach, a registered patent attorney at Maschoff Gilmore & Israelsen. Tracey's practice includes all aspects of trademark and patent prosecution. She practices in a variety of technology areas, including: chemical formulations, processes, and syntheses; semiconductor processing and fabrication; biotechnology; and material science.]

Takeaway:  In a post-Therasense decision, a district court granted summary judgment on inequitable conduct stemming from declarations submitted in a reexamination proceeding (Reexam Control No. 90/010,874). Therefore, before submitting a declaration to the PTO, ensure: (1) any past or present financial relationships between the declarant and the patentee are fully disclosed, (2) declarations are provided only by individuals having skill in the relevant art, and (3) representations relating to distinctions over prior art are based on the personal knowledge of the declarant. (Caron et al. v. QuicKutz, Inc., 2:09-cv-02600-NVW (D.Ariz. Nov. 13, 2012.)

Details:

Declarations can provide an expeditious way to advance prosecution; however, declarations may also be fertile ground for charges of inequitable conduct.  While Therasense has significantly raised the bar for a party asserting inequitable conduct based on the patentee’s failure to submit a prior art reference, Therasense recognizes an exception to the “but-for” standard of materiality in connection with the filing of a “false affidavit.”  Therasense, Inc. v. Becton, Dickinson & Company, 649 F.3d 1276, 1292-93 (Fed. Cir. 2011).

A scathing opinion entered by the District Court in Arizona provides a reminder of the dangers associated with the use of declarations in practice before the PTO.  In Caron et al. v. QuicKutz, Inc., Case No. 2:09-cv-02600-NVW, the Court granted summary judgment of unenforceability due to inequitable conduct relating to U.S. Patent No. 7,469,634.  The Court identified three separate acts of inequitable conduct involving declarations submitted to the PTO by the plaintiffs. 

First, the Court found that plaintiffs committed inequitable conduct by submitting three declarations under 37 C.F.R. § 1.132 by individuals who had undisclosed prior financial relationships with the plaintiffs.  Order, at page 15.  See Declarations under 37 C.F.R. § 1.132 submitted on July 5, 2011 in Reexam. Control No. 90/010,874 (available on Public PAIR).  These declarations were submitted by the plaintiffs in order to establish that the plaintiffs’ products were unique in the marketplace.  Specifically, the plaintiffs argued to the PTO that “each declarant identifies that these die features and benefits are novel in their opinion and have never been commercialized in the scrapbooking industry before Spellbinders introduced this invention.”  See Office Action Response dated July 5, 2011, submitted in Reexam. 90/010,874.

The Court cited Ferring B.V. v. Barr Laboratories, Inc. for the proposition that “the inventor must disclose the known relationships and affiliations of the declarants so that those interests can be considered in weighing the declarations.”  437 F.3d 1181, 1187 (Fed. Cir. 2006).  The Court rejected the plaintiffs’ arguments that the prior relationships were minimal, and accordingly, did not need to be disclosed.  Specifically, the Court found:

Although Plaintiffs contend that the compensation each received was minimal, the evidence shows a basis for possible bias by each declarant. Clear and convincing evidence shows each declarant had motivation to provide an opinion favorable to Plaintiffs’ patent application. The PTO was deprived of evidence that it needed to determine the weight it should give to the declarations….
Order, at page 15.

This issue can be avoided by directly communicating to a declarant the importance of full disclosure of prior and current relationships and ensuring that those relationships are clearly recited in the declaration.  The PTO does not prohibit submission of declarations by declarants with relationships with the patentee.  On the contrary, the Federal Circuit explained in Ferring:

In coming to this conclusion, we fully recognize that inventors often consult their colleagues or other persons skilled in the art whom they have met during the course of their professional life. Accordingly, when an inventor is asked to provide supportive declarations to the PTO, it may be completely natural for the inventor to recommend, and even contact, his own colleagues or people who are, or who have been, affiliated with his employer and to submit declarations from such people. Nothing in this opinion should be read as discouraging such practice. Rather, at least where the objectivity of the declarant is an issue in the prosecution, the inventor must disclose the known relationships and affiliations of the declarants so that those interests can be considered in weighing the declarations.
437 F.3d at 1194-95.

Second, the Court found that the plaintiffs committed inequitable conduct by submitting declarations from two individuals who based their declarations solely on experience with the plaintiffs’ product as end users.  Order, at pages 14-15.  The Court found “[h]ad the PTO known that [the declarants] did not have professional experience in the relevant industry, it would have given little or no weight to their opinions, particularly regarding the novelty of Spellbinders’ dies.”  Id., at page 15.  In reaching this conclusion, the Court noted the plaintiffs’ representation that the declarations were provided by individuals with “experience in the arts and crafts and scrapbooking industry that are familiar in some way with the [plaintiffs’ products].”  Id., at page 14.  The Court found that the two individuals “[b]oth provided opinions using technical language that implied professional experience in the relevant industry rather than merely experience as a customer….”  Id. 

A practical way to avoid this issue is to have a declarant prepare his or her own declaration and to include in the declaration a description of the declarant’s relevant experience. This approach ensures that the language used by the declarant is commensurate with the declarant’s experience.  Further, by relying on the declarant to describe his or her qualifications, the PTO will have relevant information available to gauge the declarant’s competence to reach the conclusions recited in the declaration.

Third, the Court found that the submission of a declaration by the inventor and one of the plaintiffs, Jeff Caron, constituted “an affirmative act of egregious misconduct” due to unfounded and unsupported characterizations in the declaration of the prior art reference upon which the PTO relied.  Id., at page 21.  The declaration in question was filed by the Plaintiffs on October 24, 2011, in Reexam. 90/010,874, and purported to describe the teachings of International Publication No. WO 03/016035. The Court found that the declarant lacked personal knowledge relating to the assertions made in his affidavit.

The Court’s finding that the declaration constituted “an affirmative act of egregious misconduct” was based upon a finding that the declaration “misrepresented that it conveyed information that the declarant knew to be true and was submitted to the PTO with the misrepresentation that the declarant had firsthand knowledge about the subject of the declaration.”  Id.  The Court also found that Mr. Caron’s deposition testimony was inconsistent with his declaration.  According to the Court, “his deposition testimony was more than evasive; it was false or misleading. If his deposition testimony was true and responsive, then his 2011 representations to the PTO are, at the least, misleading.”  Id., at page 20.

A similar scenario could plausibly occur when an attorney, and not the declarant, formulates the content of the declaration and presents the finished declaration to a declarant for signature.  In such a scenario, the declarant may not take the time to fully understand an argument prepared by the attorney, believing that the attorney’s understanding is sufficient.  As noted by the Court, however, declarations must be based on declarant’s personal knowledge.  In other words, it may not be sufficient to merely have sound technical arguments.  Rather, the arguments must be sound and the arguments must be based on personal knowledge of the declarant.  Again, this issue may be avoided by having a declarant prepare his or her own declaration. 

Inconsistent use of claim terms in specification

Takeaway: Is there ever a good reason to use claim terms inconsistently in the spec? For example, to say "power" when you mean "voltage"? I'm not sure the drafter/prosecutor of the patent in today's district court case planned it that way, but this inconsistent usage gave the patentee a chance at claims that read on the accused infringer when a straightforward reading would probably fail.

Details:
Symbol Technologies, Inc. v. Janam Tech. LLC
605 F.Supp.2d 618 (D.Del. 2009)
Civil Action No. 08-340-JJF

The claim term at issue was "power." The method claim recited:

7. A method for facilitating power shutdown protocol of a computing device, comprising the steps of:
... using a seconary cell as a backup portable power supply;
using a boost circuit to increase the power of the secondary cell ...

In the field of electronics, "power" is a term of art, with a specific meaning: voltage multiplied by current. The accused infringer advocated for this construction, but the patentee wanted a more informal definition of power: voltage.  According to the patentee, a POSITA would understand that the inventors intended for "power" to mean "voltage" because the specification did not explicitly adopt the ordinary meaning, and the specification also used the two terms loosely and interchangeably.

A magistrate judge originally assigned to do claim construction adopted the patentee's interpretation. But when the accused infringer objected, the court reversed and adopted the plain and ordinary meaning to a POSITA: voltage multiplied by current.

The court found that the spec neither explicitly adopted nor explicitly rejected the ordinary meaning, and the patentee's own expert admitted that some portions of the spec did use the ordinary meaning. The court also rejected the idea that "power" and "voltage" were used interchangeably in the spec. As support for this argument, the patentee pointed to various passages that described the power supply circuit solely in terms of volts (e.g., "5 volt power supply circuit"). But the court found that other portions of the spec clarified this usage by describing the circuit in terms of a combination of power and voltage (e.g. "steady 5 volt DC [direct current] power"). Thus, the spec when read as a whole consistently referred to the circuit's power output as a combination of both voltage and current.

My two cents: Is there something to be said for using terms inconsistently in your spec? Perhaps if you do this creatively and carefully, it gives you more options later in arguing claim construction. It didn't help the patentee in this case, but that alone doesn't make it a bad idea. After all, the patentee did convince the magistrate judge, and it's entirely possible that a different district court judge would have agreed.

As a patent prosecutor rather than litigator, I'm inclined to be consistent rather than inconsistent. When I'm drafting a spec and find that inventors have used terms inconsistently, I try to figure out what the inventors really meant in each instance, then I make my usage consistent. But perhaps a litigator would prefer a spec that was somewhat inconsistent and thus gave more leeway in claim construction. I'm guessing the patentee here wouldn't have had a case of infringement at all under the ordinary meaning of power, and that's why the patentee came up with this creative line of argument.

I haven't fully thought through this, so I'm not ready to advocate for intentional inconsistency in how claim terms are used in the spec. But I do think it's a valuable exercise to occasionally take off the prosecutor hat and put on the litigator hat.

Claims with ambiguous relationships between elements

Takeaway: Many claims include entities with more than one instance ("a plurality of widgets"). When the claim involves relationships between multiple entities with multiple instances, getting the claim language right can be challenging. For example, suppose the claim includes a plurality of widgets, a plurality of wikis, and links between the two. Without careful thought, the claim is likely to be ambiguous about whether a link exists between each widget-wiki pair, or between one particular widget and multiple wikis. In fact, such claims might even read on one link between the two groups, rather than links between particular widget-wiki pairs. Today's district court case shows how this sort of ambiguity gives parties something to argue about in a claim construction dispute.

Details: 
Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., et al.,
C.A. No. 08-309-JJF-LPS
(D. Del. Dec. 18, 2009)

The claims at issue were directed to power converters. One of the limitations at issue was a controller that generated a discharge-time signal by "multisampling a voltage signal ... during an off-time of said switching signal." On its face, the limitation is ambiguous:

• multiple samples during each off-time?
• one sample during each off-time, with multiple off-times resulting in multiple samples?

The patentee argued for the first interpretation, while the accused infringer advocated for the second. [Because the patentee's is a narrower construction, I'm guessing that the broad construction leaves the claim vulnerable to an invalidity challenge.]

In support of the broad interpretation, the accused infringer relied on the basic claim construction principle "A means one or more." Thus, by using "AN off-time" the claim covers taking samples during more than one off time, which results in multiple samples. The accused infringer also relied on portions of the spec which show a comparator that uses only one sample per cycle to determine when the transformer has been discharged.

The patentee argued that "the claimed circuit could not perform its desired function if it operated in the manner required by [the accused infringer]". Specifically, the claimed discharge time signal results from taking multiple samples until the last one is different enough from the previous one to indicate the end of the discharge time. The patentee countered the accused infringer's comparator argument too. While agreeing that the comparator holds one sample per cycle, the patentee explained that precisely which sample is held by the comparator is determined by taking multiple samples during a single cycle.

The court adopted the patentee's construction. "While the claim language itself is ambiguous, the specification demonstrates that the voltage signal is sampled at least two times for each of the switching signal's off-times in order fo the correct sample to be generated ... There is no teaching as to how the circuit would operate if the voltage signal and discharge time were sampled only once during an off-time."

My two cents: I think the judge reached the right answer here. But I also think that the wording of the claim gave the losing side ammunition to argue. When possible, I'd rather have a claim that more clearly expresses the nature of the sample-cycle relationship so that going to the spec isn't necessary.

How about:

multisampling a voltage signal within each of a plurality of off-time cycles of said switching signal.

OK, "each" is a very limiting word, so I'll try to avoid it, while still reducing the ambiguity about multiple-across-all-cycles vs. multiple-in-a-single cycle.

How about:

multisampling a voltage signal within at least some of a plurality of off-time cycles of said witching signal.

I doubt my claim is bullet-proof, but I think it improves on capturing the feature asserted by the patentee.

Monec v. Apple: maybe the iPhone's display isn't small after all

Looking back: Earlier I posted (here) about Apple's victory against holding company Monec. Apple won summary judgment of non-infringement in the Eastern District of Virginia before discovery even began. The claims require a display dimensioned to display a "normal size" book page, while the iPhone's display is only 2" x 3". Apple won primarily on arguments characterizing the claims to require a "relatively large display," and that no reasonable person could understand the iPhone display to be "relatively large."

Interesting Postscript: Monec didn't give up easily, and appears to be positioning itself for another run at Apple based on new evidence. Monec says Apple's own advertisements contradict Apple's earlier position that no reasonable person could understand the iPhone display to be relatively large. 

The parties settled the suit and filed a joint motion to vacate the district court's earlier judgment. In arguing for vacatur, Monec pointed to various pieces of new evidence. Monec introduced an Apple advertisement describing the iPhone screen as "large." Monec also offered new evidence — an Apple patent — that the phrase “relatively large” would be understood as comparing the display area to the device as a whole, rather than as an absolute dimension.

The court did vacate the judgment, which means that collateral estoppel will not apply, and Monec is free to relitigate against Apple.

It's obvious why Monec would want the judgment vacated: though no Markman hearing was held, Monec was on the losing end of whatever "claim construction" was present in the judgment. But how could vacatur benefit Apple?

According to the joint motion, vacatur would avoid the possibility of judicial estoppel in whatever future patent litigations that Apple might bring against parties infringing on its various touch-screen patents.

In litigating its touch-screen patents, Apple might want the freedom to argue that the i-product screens are large, or at least not small. Yet Apple urged, and the Monec v. Apple court ruled, that the i-product displays are "small," allowing a future Apple adversary to estop Apple from making  arguments about screen size that run counter to Apple's previous position. But the district court's vacatur of the Monec v. Apple judgment removes the possibility of this judicial estoppel issue, thus benefiting Apple.

Apple wins non-infringement before claim construction

Takeaway: If the visible features of your accused infringing device are far enough outside a claim on its face, can you file a motion for non-infringement before claim construction? It worked for Apple, who successfully argued that "[a]ny claim construction that [patentee] might advance to attempt to cover the iPhone would render [the size limitation] both meaningless and indefinite."

Details: Back in March 2009, the Swiss holding company Monec filed a lawsuit against Apple in the Eastern District of Virginia, alleging that the iPhone infringes Monec patent U.S. 6,335,678.

Early in the case — not just before claim construction, but before any discovery other than mandated initial disclosures  — Apple filed a motion for summary judgment of non-infringement. Apple's motion first stated that these two facts are undisputed:

• The claims recite a “display [with] dimensions such that one page of a book can be displayed at a normal size”.
• The display in the Apple iPhone is 2" x3".

Apple then contended that no claim construction was necessary because "[a]ny claim construction that Monec might advance to attempt to cover the iPhone would render [the size limitation] both meaningless and indefinite."

Monec opposed Apple's motion with an affidavit from an expert, asserting that books are printed in many of different sizes, and that there is no normal size for a book page.

Apple's unconventional strategy worked: the court granted summary judgment for Apple.

Monec immediately appealed to the Federal circuit on a number of grounds. Monec's statement of issues to be raised on appeal included whether the court improperly decided a disputed question of material fact, by ignoring Monec's uncontroverted expert affidavit. Another issue for appeal was whether the district court held what amounted to an impromptu Markman hearing during oral arguments on Apple's motion, thus denying Monec notice and opportunity to conduct discovery.

Thanks to the Federal Circuit's mediation process, a settlement was reached before oral arguments before the Federal Circuit were scheduled.

If you're interested in the case, you can find a number of posts about it in the Monec v. Apple section of the Williams Mullen Rocket Docket IP Litigation blog.

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.

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;

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.

Reference may be material if even not prior art

Takeaway: A reminder from a district court: even when the filing date of a reference is after the effective filing date of the application being prosecuted, that reference may nonetheless be material and thus implicated in the Rule 56 duty of disclosure.

This issue came up in Leviton Mfg Co., Inc. v. Shangai Mehaio Elec., 613 F.Supp.2d 670 (D. Md. 2009), a typical patent infringement suit with an inequitable conduct counterclaim. The trial judge did find inequitable conduct, and given the judge's findings of fact, I'm not surprised. The prosecuting attorney failed to disclose another patent application  — one with different inventors yet nearly identical claims. The trial court found that such a scenario raised questions about (1) the inventorship of the '766 patent; (2) whether the specification of the '766 patent supported its claims; and (3) the possibility of double patenting.

All this sounds like sketchy behavior which might indeed merit a charge of inequitable conduct. But more important was the point made by the court when the patentee tried to argue that the other application wasn't material because it wasn't prior art. The court in Leviton pointed out that Federal Circuit case law makes it clear that information may be material under Rule 56 even when it's not prior art, because a prior art rejection isn't the only relevant issue during prosecution. Other issues such as inventorship, double patenting, and enablement must be considered when determining whether or not a particular piece of information triggers the Rule 56 duty of disclosure. 

What if the bad Leviton facts (same claims, different inventors) weren't present? What if the only question on duty to disclose was "could the reference be used as prior art?" A simple analysis might be: "Since the effective filing date of my app predates the effective filing date of the reference, the reference is not prior art, so no need to disclose."

The Leviton court seemed to suggest that this is the wrong analysis. The court noted that the MPEP directs the Examiner to look at the actual filing date of an application-in-prosecution, not its effective filing date:

Plainly, the Germain application is material even though it was filed subsequent to the effective filing date of the '766 Patent. Patent examiners are required to "search all applications based on the actual U.S. filing date of the application rather than on the filing date of any parent U.S. application for which benefit is claimed. Examiners should cite of interest all material prior art having an effective filing date after the filing date of the U.S. parent application but before the actual filing date of the application being examined." Manual of Patent Examination Procedure § 707.05, Examiner Note (emphasis added). The '766 application's effective filing date is August 20, 1999 because it claims priority to its parent application's filing date. The '766 application was actually filed on April 19, 2004, after the Germain application was filed. The Germain application was material prior art because its effective filing date is after the filing date of the '766's parent application but before the '766's actual filing date.
(Leviton, 613 F.Supp.2d 670, 682, emphasis in original.)

I didn't find any other inequitable conduct cases in which the court suggested that the actual filing date of the application-in-prosecution should be used to make the is-prior-art determination. Even so, it may be worth considering this next time you're looking at filing an IDS.