Are you expecting the Patent Office to reject your broadly worded patent claims? Imagine your pleasant surprise when you receive a notice of allowance. However, in a patent suit alleging these broad claims, can the claims deliver? Chris Harkins of Brinks Hofer Gilson & Lione discusses how to avoid patent claims errors. He writes:
“In Halliburton Energy Services, Inc. v. M-I LLC, the assignee of a patent relating to oil field drilling fluids that comprised fragile gels brought an infringement suit against a competitor and argued for the broadest possible construction. In the end, the assignee left with an invalid patent.”
The Federal Circuit explained that section 112 paragraph 2 [of the patent statute] requires that scope of the claims be sufficiently definite to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent. Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims. Also, a claim term must have proper antecedent basis where such basis is not otherwise present by implication or the meaning is not readily ascertainable. A common thread in the indefiniteness analysis is that claims are insolubly ambiguous or not amenable to construction (and, therefore, invalid) when a person of ordinary skill in the art could not discern the boundaries of the claim based on the claim language, the specification, and the prosecution history, as well as her knowledge of the relevant art area.
. . . .
The preferred embodiments of the invention were only covered by dependent claims--but the term fragile gel as used in the independent claims were neither limited to those embodiments nor objectively supported by the specification. Even if a claim terms definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into a meaningfully precise claim scope. The specification did not provide competitors with an objective way of determining the scope of the claims, did not place any limit on the scope of what was invented beyond the prior art, and might cover not only that which it invented that was superior to the prior art, but also all future improvements. Enforcing the broadest possible construction could retard innovation because cautious competitors may steer too far around that which Halliburton actually invented, neglecting improvements that otherwise might be made.
. . . .
On the heels of . . . [Halliburton], the Federal Circuit decided Sitrick v. Dreamworks, LLC, where the patentee asserted claims that were construed to integrate audio signals or video images into a pre-existing video game--and also movies. In the end, the patent was held invalid as not being enabled as to pre-existing movies.
“Under the enablement requirement of section 112 paragraph 1, one of ordinary skill in the art must, after reading the specification, be able to practice the claimed invention without undue experimentation. Significantly, the Federal Circuit stressed the importance of supporting all claim limitations in the specification: [sic]”
(footnotes omitted)