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Patent Prosecution 1/25/2009 4:27:35 PM EST Harkins on Tips for Enriching a Patent Specification: It Could Mean the Difference Between Valid and Invalid Claims Counsel, Brinks Hofer Gilson & Lione
To obtain claims that include the fewest possible limitations, some patent attorneys draft broadly worded claims. However, the validity of such claims has been dealt a huge blow by the Federal Circuit, which is setting a trend of invalidating overly broad claims when the specification is not at least commensurate with the claims’ breadth. In this Commentary, Christopher A. Harkins debunks the misconceived prosecution strategy that favors broadly drafted patent claims without saying much in the specification and exposes an ill-advised litigation strategy that presses a broad claim construction. He writes:
In its 2008 decision in Halliburton Energy Services, Inc. v. M-I LLC, [514 F.3d 1244 (Fed. Cir. 2008)] the Federal Circuit followed the trend toward a more stringent definiteness standard, insisting that the specification contain a preferred embodiment for the broadest construction of each limitation. 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, but in the end, the assignee left with an invalid patent.
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As the Federal Circuit has observed, the specification must teach how to make and use the claimed invention without undue experimentation. The question of whether a disclosure requires undue experimentation is a question of law for the court. The Federal Circuit considers the following exemplary list of factors: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. The focus is on the disclosure, however, and [the] Federal Circuit has demonstrated a decreasing willingness to rely upon ordinary skill in the art to fill in gaps of a disclosure . . . .
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The enablement analysis begins with the disclosure set forth in the specification. The analysis often asks the question, how is this claim term (as construed) accomplished in the specification? Oftentimes, a working example is disclosed in the patent. Since the asserted claim in Sitrick [v. Dreamworks, LLC, 516 F.3d 993 (Fed. Cir. 2008)] was construed to include both video games and movies, the specification needed to teach both, but did not. The enablement analysis may also include consideration of the vantage point from one of ordinary skill in the art. In Sitrick, however, the experts failed to explain, verify, or demonstrate any specifics, except in conclusory and unsupported manners, of how the patent encompassed the entire scope of the broadest claim as construed by the court. Consequently, all asserted claims were invalid as not enabled.
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To ensure that the patent properly claims their invention, applicants give their trust to the patent practitioner, because claims of patents have become highly technical in many respects as the result of special doctrines relating to the proper form and scope of claims that have been developed by the courts and the Patent Office. The claims, however, do not stand alone, but are part of a fully integrated written instrument. To ensure the claims have proper antecedent basis and that the specification supports the claimed invention, the patent practitioner might verify the application or issued patent with the PatentOptimizer service by LexisNexis.
(footnotes omitted)
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