Section 112 as a limit on claim breadth

[ChrisWhewell]

You hit it - one has to be cautious against whom they assert their patent, basis 112, lest they lose it all.  Right or wrong, that's the way it can turn out.  An inherent weakness that may lead to this is that inventors usually only have one aspect in mind when making a disclosure, and the written disclosures provided by inventors I've heard about, and many I've seen, are quite scant.  I've written 40 pages based on a 2 page disclosure many times, and cherish those good inventors who provide the detailed ones - the old school American types who got a PhD when it meant something and knew what the he77 they were doing.  Some of the new guys are brilliant also, just rarer in my experiences.  If practitioners weren't inherently limited in their abilities on each case by the quality, breadth and depth of the disclosures they receive, things might be different.  An inventor may disclose video games only at the time up to filing, but then later when a party comes along applying it to movies some may find it hard to not say yes, that's my invention, under a belief of potential gain.  I recall an instance of a polywhatzit coating being applied to pickup truck beds for durability.  The patent mentioned a few other uses but not railcars (choo-choo type).  Another inventor filed a spec and was awarded a patent on a railcar having a polywhatzit coating; the earlier case was cited during prosecution !  Amazing.  Had the first guy just put in one sentence........  And you're right, it can all come down to one sentence, most visible in hindsight.   I don't think its on the practitioner when presented with polywhatzit being applied, to come up with a list of all possible end uses if the inventor has already specified their utility - UNLESS - the inventor hires the practitioner to invent (very rare).  Practitioners typically try to broaden claims as much as reasonably possible (see my post on non-art based overbroad rejection from the grand poo bah earlier).   Does a cell phone billing scheme based on service interval nuances, etc., have utility in other areas ?   If it does and you tell the CEO you're dealing with about claiming the method as applicable to internet bandwidth usage and he says his company's not interested in that, then what ?  Convince him that he's wrong ?   Be nice...   Of course he's wrong.  He should listen to everything you say, even if it means shelling out payola for another 100 hours for research, writing and filing because having those other end uses described and enabled often turns out to be worth more than the rem they sought to protect in the first place.   Upon explaining that, a substantial number appear overloaded, wanting to just get back on point or do anything necessary to relieve the pain you are causing them with these un-solicited alternates, the remainder being more receptive to creative use of the IP system.  A fellow I've gotten to know a bit and spoke with recently related he had worked with Jack Graham, the guy who wrote and prosecuted the Kilby integrated circuit patent.  Jack told him that he should never let a patent issue without filing a continuation, unless he was sure he knew what the invention really was.  What ?  How could anyone even file a spec without knowing what "the invention" is ?  I think a lot of times, the inventors themselves don't fully appreciate what the invention really is, and that ties into your games and movies scenario.  Telling an inventor they don't know what their invention is, is probably not a wise blurb too early on in the relationship.  I always try to get more time with inventors, but many seem to make themselves scarce.   I do have some clients however with whom I "hang out" with.  We always talk about cases, scenarios, schemes,  plots, what the competition has on file, strategies to fubar them, etc. and those clients are the ones who do the best - those who spend the most time communicating with their best friends - the patent folk.   With an appropriate budget, time and coordination and a creative mind, a knowledgeable practitioner can achieve business goals that even the best marketing managers cannot.  Yet most companies lack the structure and relationships internally to cognicize it, many employees further being reluctant to even make tiny ripples, perceiving they might threaten continued receipt of Friday's paycheck, which when extended to Groupthink levels causes slow erosion of the entitiy's competitiveness. Good evening.

[JimIvey]

(in a whisper):  Pssst.  Chris.  Paragraphs.....

[khazzah]

Isaac said:
>Your statement is true for correct as far as it goes and for some definition of
>covered.  But enablement does not mean literally describing every possible
>embodiment within the scope of the claims.  For one thing, you are not required
>to disclose the details of things known in the art.  So giving example an example
>of a sort and allowing that others can be used is probably enough to enable
>claims that encompass other known sorting techniques.

Agreed. That's what I was tried to get at by mentioning the spec *as understood by a posita*. And my earlier statement "you have enabled -- just by mentioning SORT -- any species of SORT that is understood to a POSITA to be a SORT" is in perfect agreement with what you just said.

Isaac also said:
>That's quite a bit different from not describing every possible sorting algorithm.

[in response to my comment about Sitrick vs. Dreamworks, where the asserted claims were construed as covering both movies and video games, and the claim was found invalid because the spec didn't enable the movie embodiment.]

Nah, I never said every possible sorting algorithm needs to be described. I said you need to say very little because positas understand sorts.

As you pointed out, enablement requires enough information to allow the POSITA to implement without undue experimentation. What makes the Sitrick case different than the sort hypo is the background knowledge of a posita. Positas know a lot about sorting, so no undue experimentation is needed even with minimal disclosure is required. Apparently a posita didn't know how to take the principles that Sitrick disclosed in the context of video game and apply them to the different context of movies.

I don't think we're in disagreement here either.

[khazzah]

Jim Ivey said:
>So, going back to the Dreamworks case, the heart, gist, essence of the invention
>applied to both video games and movies and the inventor didn't realize it applied
>to movies, so the claim is invalid.  So, the claims is invalid and therefor covers
>neither movies nor video games, all because the inventor didn't fully realize that
>the same innovation could be applied to another technology.

That's not the way I understand the case. What you've described is what I understand to be the Written Description requirement -- that the inventor did not *possess* a movie embodiment, even though he possessed a video game environment.

I think WD is meant to prevent the problem you brought up: to prevent a patent from being "asserted where it really shouldn't be".

As I understand it, WD is also theoretically separate from enablement. That is, theoretically, there are a set of facts where the teachings of the spec are applicable to movies (so no enablement problem), and yet the spec showed that the inventors were thinking of video games, but not of movies. Thus, a WD problem without an Enablment problem.

That's the theory, as I understand it. In reality, the Federal Circuit case law I've read shows that the same facts are usually implicated in both WD and Enablement analysis.

Caveat: As Chris pointed out, 112 1st is a hot topic in biotech, and I know nothing about those areas or how those statutes are applied in those areas. For all I know, "invalid for Enablement while valid for WD", or its converse, makes perfect sense for biotech.

>So, the claims is invalid and therefor covers neither movies nor video games,
>[because inventors didn't realize what they invented.]

Yeah, this part seems unfair...that you lose your entire claim, not just the embodiment you stretched to cover. But I suppose the only way around that would be...what...to say that a claim is invalid under this particular [broad] claim construction? That doesn't seem to make sense.

[JimIvey]

Yeah, this part seems unfair...that you lose your entire claim, not just the embodiment you stretched to cover. But I suppose the only way around that would be...what...to say that a claim is invalid under this particular [broad] claim construction? That doesn't seem to make sense.

My solution: reverse doctrine of equivalents.  Yeah, the claim literally covers this but it should --> no infringement.  The claim remains valid and enforceable in the context of video games (in this example).

At the same time, I'm not even sure that RDoE ought to apply.  Imagine this scenario....

---

DREAMWORKS:  Hey, look at this patent.  It's so cool!  And, I think we can use that technology in our CGI.  Let's do it!!

INVENTOR/ASSIGNEE:  Hey, Dreamworks is using our technology in their CGI!  Can they do that despite my/our patent?!  I/We never thought about that application of our technology, but it works pretty much the same way and they shouldn't be able to do that without us!

---

Who wins?  Who ought to win?

How about in this situation?  I loan you a painting I found in my attic.  Nothing special about it.  You find that there's a long lost Van Gogh behind the canvas.  Can you tear out the Van Gogh and keep it and give the other painting back to me?  I had no idea the Van Gogh was there, so I'm no worse off than I thought I was. 

I can't explain why, but something in my gut tells me that's horribly wrong.  I think the same applies to those who make technological contributions that are greater than the contributor realized at the time.

Regards.

[ChrisWhewell]

-- that the inventor did not *possess* a movie embodiment, even though he possessed a video game environment.

Looks like a touchstone almost.  Nine-tenths of the law might be whether the inventor was in possession of that which he was trying to assert against others.  No possession, no assertions.

Nice analogy Jim, with the VanGogh.

[dablueman]

Well, this is getting a bit off-topic, but....

I'll admit ignorance, but don't movies use some skinning, for example to show dirt and oil stains on the hull of ship?  Or do they model oil stains individually? 

And, don't video games use some ray tracing?  Yeah, they do it once for each polygon to get general luminance information before applying the skin, but they do it that once, don't they?, for each polygon on each frame.

And, there are also varying degrees of each in various instances.  My daughter still loves The Backyardigans, and that is very obviously skinned -- and not nearly as well as even simple video games these days.  Wii games look more realistic.

My experience in developing in this area is very, very old.  Left it for law school in 1988.

One last observation, my very quick scan of the opinion didn't reveal much about infringement, only invalidity.  Is it possible that Dreamworks didn't have strong arguments for non-infringement?  Is it possible that Dreamworks was, in fact, applying the technique(s) claimed and enabled, albeit in a different context? 

I'll admit some ignorance too because I've never developed video games and it's not the art I examine (I won't say which one I do because I prefer to stay anonymous so I can be blunt and say what I think). However, ray tracing for movies takes many, many iterations for each frame that takes a long time even with large parallel systems so that they are photo-realistic. I wouldn't be shocked to find out some ray tracing happens with the modern gaming systems and dedicated processors, but to my knowledge it's still done mainly with skins.

As far as the discussion is going, I think if there isn't 102/103 prior art on the claim then it should be held valid regardless of whether the inventor envisioned the invention's use in a different way. I'm not in the chemical field, but if I invent xxxxx and it turns out it can be used to treat cancer my "broad" claims for the formulation shouldn't be invalidated just because I didn't think it treats cancer. An invention is an invention, it shouldn't matter how you use it (i.e. intended use).

[JimIvey]

-- that the inventor did not *possess* a movie embodiment, even though he possessed a video game environment.

Looks like a touchstone almost.  Nine-tenths of the law might be whether the inventor was in possession of that which he was trying to assert against others.  No possession, no assertions.

Nice analogy Jim, with the VanGogh.

First, possession isn't 9/10ths of the law.  Don't know where that came from, but it's wrong.  You learn that in the first week of property law class in law school. 

Second, in this particular case, the patent owner is (was), in fact, in possession of a patent that covers a technique applicable (as claimed) to both movies and video games.  Now, the patent owner is in possession of a nice piece of paper that conveys no rights whatsoever.

Going back to my Van Gogh analogy, suppose I sue you after seeing the Van Gogh hanging in your house and the court says that, since I didn't know the Van Gogh was there, you get to keep the Van Gogh and I also have to give you the other picture, too.  Since I didn't understand the full value of the original painting (with the Van Gogh included), I can't keep any part of it.

That's what invalidity under Section 112 means -- no patent (well, more precisely, no claim).  Note that Dreamworks is now free to implement the claimed invention in video games exactly as described and claimed.

That law only makes sense if you hate all patents and want any "gotcha" you can get to eliminate them.

Regards.

[ChrisWhewell]

off the cuff - Its maxim that jurisdiction in rem depends solely on physical control of the res by the sovereign exercising jurisdiction.  To the extent physical control equates with possession, I think that makes possession weigh rather heavily in many instances.  An alleged property owner can only successfully assert a trespass against others, when the alleged owner was actually in possession of the property at the time they supposedly perfected their claim, including particular clear and distinct definition of the boundaries.   If the northern boundary of a land patent is indefinite, does that frustrate the entire claim, or does the claimant still have claim to the area upon which they built their dwelling ?  If they've been living in it a while and have possession and no others can come forth to challenge legal or equitable title to the turf on which the dwelling is built, their current and past possession may weigh heavily in their being able to remain in possession. 

If my patented cat-skinning process also turns out to be excellent for skinning catfish but I didn't mention that use in my spec., I doubt I can assert it against the fishermen, since I did not make a showing I was in possession of using it to skin catfish.  I'd call the other guy's use, a new use of a known process under sec. 101, possibly patentable itself. 

I'm not content with the notion that the whole claim should be invalidated because the northern boundary is indefinite, but I can't offer any alternative.   What should the court do , remand the patent to the PTO ?  It can't because within the meaning of the spec, the claim was definite at the time.  The problem arose when the claimant attempted to assert their boundary was more north than it actually was.  If my neighbor claims an additional 10 feet along our property line and I successfully challenge, he doesn't lose all claim to his land.  Seems like that should be applied to patent boundaries, but how could the court draw the line ?

 

[Isaac]

Second, in this particular case, the patent owner is (was), in fact, in possession of a patent that covers a technique applicable (as claimed) to both movies and video games.  Now, the patent owner is in possession of a nice piece of paper that conveys no rights whatsoever.

This is actually what the debate centers around.  Exactly what needs to be on that paper in order to establish possession of the technique that the alleged infringer is using?  I understand your take on things, but the serendipitious rights to the Van Gogh argument is only persuasive to the extent you agree that the patentee has done enough to establish rights to the technique.  

I'll admit that I too find the invalidation aspect overly harsh.  Even if you don't own the Van Gogh, does that mean you don't even get to keep the velvet Elvis?  On the other hand, the patentee has insisted that the scope of his claims do include the Van Gogh.  Maybe patentee can go through a reissue to capture what he's entitled to.

[JimIvey]

My point about the Van Gogh is that, sometimes, people give more than they realize.  Why not reward it?  The whole, "Ah ha!  He had no idea the very same technique would achieve the very same result in the very same way in CGI in movies!  Let's take advantage of that!" is repugnant to me.  Ironically, if the patentee had limited the claim to video games, he might have covered movies by the DoE.  Is it okay to take money from my wallet if I don't realize it's there?  Since when do property rights hinge on the property owner knowing they have those rights?

As for in rem jurisdiction, that doesn't apply at all to patents since the locus of patents is the entirety of the US.  From what I recall from so many years ago, it doesn't apply well to personal property like a painting either as the locus is easily changed.  It applies, if at all anymore, mostly to real property.

Do we tell the inventor of the transistor that her/his contribution doesn't apply to integrated circuits because they didn't know it could be used that way?  or computers, memory, digital televisions?  Would we have any of these things without the transistor?  Okay, yeah, we'd have computers that required one or more full rooms and maybe only 5 in the world, but not like we have now.  I understand any patents on the fundamental transistor have long since expired, but transistors were probably used during the terms of those patents in many ways not anticipated by the inventors.  So, under this rule of "gotcha!" if the inventor didn't see every use of her contribution, not only do those patents not cover such uses but they're all invalid?!?!

That's just ridiculous.  I see no policy as to why such a rule should exist.  Inventors should receive compensation for the full value of what they contribute, not merely the value they perceive at the time, before any market or technological research is done to reveal such things.

Regards.

[khazzah]

DREAMWORKS:  Hey, look at this patent.  It's so cool!  And, I think we can use that technology in our CGI.  Let's do it!!

INVENTOR/ASSIGNEE:  Hey, Dreamworks is using our technology in their CGI!  Can they do that despite my/our patent?!  I/We never thought about that application of our technology, but it works pretty much the same way and they shouldn't be able to do that without us!
---
Who wins?  Who ought to win?

I note that your hypo says "works pretty much the same way for movies", which implies no problem with Enablement ("make and use").

But in the Dreamworks case, the problem was Enablement. The Court found that the patentee's disclosure didn't teach how to use the technology for movies. Paraphrasing from the opinion:

[The claims at issue] require substitution of a visual or audio “user image” in place of a “pre-defined image”. The patents describe a IAIS component which performs this function by intercepting address signals coming from the video game apparatus and going to the game card or storage card. The district court found that the patents do not explain how the IAIS would function outside of a video game. Unlike video games, “movies do not employ discrete address and control signals, or any other means for requesting separate image segments to be assembled into the character or the overall image."

I think -- and don't recall anyone here disagreeing -- that the Enablement requirement makes perfect sense: in return for a monopoly, you must describe how to make, use, and sell. I do think there is some disagreement here on which embodiments this requirement should apply to.

The unfairness aspect that Jim brings up implicates the Written Description requirement. If the Sitrick-like Inventor describes a technique that is applicable to movies as well as videogames (ergo, he enabled the full scope), then [Jim says] Inventor SHOULD be able to sue an infringer who applies the technique to movies -- EVEN IF somehow the spec did not indicate that he "possessed" the movie embodiment.

I don't think these sorts of unfair fact patterns [Enable=Yes and W.D.=No] come up very often.

[khazzah]

transistors were probably used during the terms of those patents in many ways not anticipated by the inventors.  So, under this rule of "gotcha!" if the inventor didn't see every use of her contribution, not only do those patents not cover such uses but they're all invalid?!?!

Now I think maybe you're going too far. A claim that is literally to a transistor covers all uses of the transistor, so we're not talking about invalidating all claims that cover new uses.

I think I agree with you on this narrower statement: it's unfair to invalidate functional claims that are applied to a different area/application, simply because the inventor didn't appreciate other applications of that function.

That said, I'm not sure how widespread this danger is. My sense is that functional claims are successfully asserted all the time against applications of that function which the inventor didn't directly contemplate. [The bigger danger in these cases is usually prior art invalidation due to the broad claim construction necessary to capture the not-originally-contemplated infringer. ]

[ChrisWhewell]

The inventor of the triode vacuum tube could have claimed the device, which article claims would presumably include a cathode heater, it being an essential element.  In an alternate strategy, a broader claim could be devised to include some structural elements could be recited in a claim with functional language to the effect of "configured to provide a controlled a second current of varying amplitude responsive to a first varying-amplitude input current".   In the latter, such a claim could be construed by some as reading on a later-invented transistor.  But clearly the triode inventor DeForest did not invent the transistor of Moray.  A rule 11 reasonable inquiry ought cause one to carefully scrutinize of the contents of the triode patent spec, and some might conclude that it shouldn't be asserted against the transistor, while others believe that it might could be (East Texas lingo).  Maybe those who choose to file suit proceed on the belief that there is a good faith argument for the modification, extension or reversal of existing law - sometimes they're right, sometimes not.  The big takeaway I see is what most already know, the the outcome is dependent on how one states the claim.   In patents, its kind of cool that inventors have two opportunities to formulate a claim - while patent prosecution is open, and again later at suit.  cheers to all.

[JimIvey]

I think the unfairness is applicable to both enablement and the written description requirement.

The law is well-established that enablement requires only enablement of one embodiment of the claimed invention.  However, sometimes it requires more.  I don't understand why sometimes it requires more and how this is fair.  I also don't understand what "more" is needed.

Going back to my earlier example, I claiming "sorting" and only describe a bubble sort.  Someone noted that I didn't need to describe known sorts because they're known and therefore enabled.  Does that same logic apply to sorting mechanisms invented later?  Why or why not?  Suppose a nifty new sorting technology is developed years later.  I didn't enable that.  Let's assume for the sake of argument it's my invention (that involves sorting).  Did I enable the use of my technology with that new sort substituted for the bubble sort?  Certainly not at the time of filing, but I may have enabled the use of that new nifty sort for my particular application.  I intentionally left the manner of sorting out of the claim.  It was my intention that my claimed invention was usable with any sorting method.

The notion that the particular embodiment of the accused device/method must have been enabled by the original disclosure has been denounced by the Federal Circuit (though I forget which case -- might even be Festo).  Yet, this notion seems to live in the crevices of these other, muddy lines of reasoning.

And, I don't think it's too far to say that, since the original transistor patent probably didn't explain how to make transistors in an integrated circuit that, under this very same reasoning, those patents shouldn't cover integrated circuits and -- to the extent claims read on ICs -- those claims should be invalidated for one reason or another under Section 112, paragraph 1.  I don't believe anyone reasonably believes such a result is proper, yet I don't see how the reasoning of the cases that suggest that Section 112, paragraph 1 requires the breadth of the claims to not extend beyond the application of the technology as appreciated and described by the inventor(s) could reach a different result.  

And, if a rule of law reaches a clearly wrong result, I believe that rule of law should be discarded -- or at least fixed.  In the context of transistors and ICs, I think their respective inventions were far enough apart that direct enforcement of transistor patents on early ICs just never came up -- please forgive my ignorance on this and my laziness in not looking those dates up.  If ICs came into existence during enforceability of early transistor patents, we might have better law in this area.  As it is, I suppose we can all just hope technological advances in our respective technologies are slow enough that new uses of our inventions don't exceed our imaginations too much.

One last observation here:  the harsh result is really on the practitioners as much as their clients.  I'm pretty good at extrapolating uses beyond what the inventor might actually appreciate -- or at least asking about utility of an innovation outside the particular context of the client.  I've seen many patents written by people who weren't as good -- at least in the particular context of the patent(s) in question.  I know of very few professions that are so open to hind-sight second guessing by just about every body.  The demands of the profession are amazing -- almost requiring clairvoyance, in my opinion.  When looking over Dudas's proposed rule changes that never took effect, I observed that one would have to be a minor deity to practice patent law in the US.  These little nit-picks like "You didn't say 'movies'!!  HA!!  No patents for you!!" are just too much.

I think 102/103 provide plenty of limits on claim breadth.  112 provides limits on how you can narrow your claims to still achieve non-obviousness.  If you can't find some middle ground that satisfies 102, 103, and 112, then no patent.  And, yes, I'm aware of 101 -- but that's merely properly casting the innovation, mostly.  And, 112 is no pansy -- it's the toughest in the world with the "best mode" requirement alone.  I think that works well.  Why muck it up with requirements that you foresee each and every use others might make of your enabled, non-obvious technology?

Okay, almost late enough to get a beer and chill....  <end of rant>

Regards.