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To read comments to this article, go here
Comments to USPTO on How to Improve Patent Applications: Red Hat's & Morrison & Foerster's ~pj
Sunday, April 21 2013 @ 08:49 PM EDT

The USPTO has been asking the public to respond to a series of questions with suggestions on improving patents. It is aware that the technical community isn't happy with the way patents are being issued, particularly software patents. You are familiar with some of the USPTO's questions, because we at Groklaw responded to two of them, topic 1 on how to improve software patents, regarding functional language, and topic 2, suggestions for future topics for discussion.

There are now comments publicly available on the USPTO's website responding to a third question also, this one about improving patent applications. It has some suggestions for consideration regarding clarifying the scope of claims and the meanings of claim terms in specifications. I thought you'd like to see what Red Hat and Morrison & Foerster [PDFs] had to say. These days Morrison & Foerster seems to find its firm representing the old guard in the smartphone patent wars, and of course Red Hat reliably upholds the interests of the new guys on the block, Open Source. Red Hat points out to the PTO, quoting Tim O'Reilly, that were it not for Open Source, there'd be no Google, Twitter, Facebook, or Amazon:

As one seasoned observer has noted, many best-known brands (like Twitter, Facebook, Amazon, and Google) “were built on a foundation of open source software, and wouldn't exist without the ... [open standards and protocols of the] Internet and the world wide web, Linux, and the cornucopia of open source tools and languages that made the fertile soup from which today's tech innovation sprang.”
That hopefully will help the PTO to realize that catering only to the old guard would be damaging. Open Source is now mainstream, and that means the USPTO's old way of doing things with respect to patents -- particularly software patents -- needs to be adjusted to accommodate the new. Happily, the USPTO seems to realize this, and so while Red Hat thinks some changes require changes in law, it commends them for this effort, the Software Partnership:
Nonetheless, we see a clear nexus between the growing thicket of software patents and abusive patent litigation, so we support and encourage the PTO’s Partnership, its systematic examination of the issues identified in the Federal Register Notice, and its efforts at improving quality. Indeed, we believe the agency should accelerate and expand these important initiatives.
Tactfully, it indicates that there are more problems to be addressed that the PTO has yet to identify.

Jump To Groklaw Comments

"The dense landscape of low quality software patents directly affects innovation," Red Hat writes, and that's serious. The Department of Defense uses Open Source, for one thing, and the Navy's nuclear submarines run on it. Open Source software needs to be protected from the misuse of such poor quality software patents, because Open Source software is important to everyone:
The benefits of this collaborative innovation model do not flow to just one company; rather, the fruits of the work are available throughout the economy and empower many technology products and sectors.

For example, in the Defense sector, open source software is driving more agile and rapid technology deployment on the battlefield2, and powers the operating system of the U.S. Navy nuclear submarine fleet. It is the technology that sustains weather forecasting, drives space exploration3, and was crucial to recent mission successes such as Mars Curiosity rover, which provided ‘big data’ results as widely available as possible.4

Reflecting the Administration’s ‘Open Innovation’ agenda5, www.whitehouse.gov utilizes open source software. The Administration actively encourages “using and contributing back to open source software as a way of making it easier for the government to share data, improve tools and services, and return value to taxpayers.”6

Stock exchanges around the world prefer open source software; indeed, most worldwide trading volume runs on Linux.7 Various consumer products rely on open source software, including mobile phones, wireless routers and automotive software.8 BIND (Berkeley Internet Name Domain) widely implements the Domain Name System (DNS) protocols, part of the core Internet standards, and is open source software.9

Open source has also revolutionized enterprise IT architecture and economics. Ten years ago, a startup would have spent precious investment capital on infrastructure and Web software. Today, open source software reduces or eliminates the friction of starting a new venture, since “open-source infrastructure software is free and the Web hosting account might go for $5 a month."

You know how we've sometimes complained that patents are too vague, that applicants should be required to define their terms with greater specificity, so they don't need to be litigated later in courtrooms? Well, that's what one of the PTO's questions is all about. But there's much more.

Red Hat combines its responses to all three questions into one comment, and Morrison & Foerster responds to the one about improving patent applications only. I did a table for myself to try to figure out where Red Hat and Morrison & Foerster agree and where they don't about improving patent applications, because parsing out what was just about that one topic was complicated. On the Red Hat side, it was complicated because they were answering three questions at once; on Morrison & Foerster's side, it was complicated because they rephrased the questions. It seemed there was a lot of agreement, though, which became more clear after I did the table, and I'll share the comparative table with you.

There were significant differences, though. While Red Hat agrees with the USPTO that applicants should have to provide algrorithms, Morrison & Foerster rearranges the questions and thereby skips some of them, without it being obvious as it would be if they'd simply listed each question and then answered it, number by number. But when I did the table, I could see that's one question it smoothly doesn't answer or even mention. In fact, its letter never uses the word at all. They agree, they write, with "most" of the PTO's suggestions, but evidently not that's not one of them.

Red Hat, by contrast, says if applicants followed all of the USPTO's suggestions, not only would patent applications improve overnight, it alone would help the public to determine the scope of patent claims. And vagueness is precisely the problem with software patents, Red Hat says, adding that after a lot of experience dealing with litigation, it has come to believe that litigants specifically choose poor quality patents to use, precisely because they are so vague:

In fact, in our experience, aggressors intentionally choose patents having unclear claim scope for assertion because they can make money from the confusion and risk that follow from the lack of clarity.
We at Groklaw have been painfully aware that when courts use standard, general-use dictionaries to define software terms, they don't always get things right from a technical standpoint. And that's another question the PTO asked -- should there be a default dictionary? Both agree applicants should have to specify a dictionary definition, and if none exists that they be required to provide a specific definition themselves. But Red Hat takes it one step further, regarding software patents specifically:
Library of common terms related to software-related patents. We believe the PTO should initiate an effort, with industry, to develop a library of common terms related to software-related patents. Further discussions of this topic would have merit. Our initial view is that such an effort could be useful, if: (1) the effort is open and transparent, and the public may comment on its work product; (2) it is driven by technical software expertise; and (3) the process and outcome includes and reflects diverse software publishers, developers and users.
That one change would be a tremendous step forward.

Here are some links to all the contents, so you can jump to whatever interests you most, or first.

[USPTO's Questions,   Red Hat's Comments
Morrison & Foerster's Comments,   Table]

USPTO's Questions:

The specific questions [PDF] published in the Federal Register in January on improving patent applications were these:

II. Topics for Public Comment

The USPTO is seeking input on whether the following practices should be used by applicants during the preparation of an application to place the application in a better condition for examination. When patent applications are filed in the best possible condition for examination, examiners can better focus the examination on substantive patentability issues. Specifically, the USPTO is seeking input on whether adoption of the following practices by applicants early in the process would assist the public in determining the scope of claims as well as the meaning of claim terms in the specification after a patent is granted.

A. Clarifying the Scope of the Claims

The boundaries of patent protected subject matter should be clearly delineated and the scope of each claim made clear on filing of a patent application to facilitate examination and the publishing and patenting of claims that best serve the public notice function. In this regard, the USPTO is seeking public comment on advantages and disadvantages of applicants employing the following practices when preparing their patent applications:

1. Presenting claims in a multi-part format by way of a standardized template that places each claim component in separate, clearly marked, and designated fields. For instance, a template may facilitate drafting and review of claims by separately delineating each claim component into separate fields for the preamble, transitional phrase, and each particular claim limitation.

2. Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart or the standardized template described above. This practice could be particularly beneficial where claims are amended or where a continuing application (continuation, divisional, continuation-in-part) is filed.

3. Indicating whether examples in the specification are intended to be limiting or merely illustrative.

4. Identifying whether the claim preamble is intended to be a limitation on claim scope.

5. Expressly identifying clauses within particular claim limitations for which the inventor intends to invoke 35 U.S.C. 112(f) and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified 35 U.S.C. 112(f) claim limitations.1

6. Using textual and graphical notation systems known in the art to disclose algorithms in support of computer-implemented claim limitations, such as C-like pseudo-code or XML-like schemas for textual notation and Unified Modeling Language (UML) for graphical notation.

B. Clarifying the Meaning of Claim Terms in the Specification

The best source for determining the meaning of a claim term is the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1315–16 (Fed. Cir. 2005). The specification should clearly define the claim language so that the scope of each claim can readily be determined, ensuring the public notice function of the patent claims is best served. In this regard, the USPTO is seeking public comments on advantages and disadvantages of applicants employing the following practices when preparing their patent applications:

1. Indicating whether terms of degree—such as substantially, approximately, about, essentially—have a lay or technical meaning and explaining the scope of such terms.

2. Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to certain technologies, such as software.

3. Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms.

_______
1 35 U.S.C. 112(f) replaces 35 U.S.C. 112, ¶ 6 as the section of the statute pertaining to means-plus-function limitations for applications filed on or after September 16, 2012. See Leahy-Smith America Invents Act, Pub. L. 112–29, § 4(c)(6), 125 Stat. 284, 296 (2011).

Red Hat's Comments:

Here's how Red Hat responded to those questions:

From: Patrick McBride
Sent: Monday, April 15, 2013 5:37 PMKbrL To: QualityApplications_Comments
Cc: Mark Bohannon; Robert Tiller; Melanie Chernoff
Subject: Fwd: Red Hat Response to PTO Request for Comments on Partnership for Enhancement of Quality of Software-Related Patents/Preparation of Patent Applications

Forwarding to "QualityApplications_Comments@uspto.gov"

Dear Ms. Rao and Mr. Sked:

Please find attached the comments of Red Hat, Inc., in response to the above referenced PTO Requests for Comments.

If you have trouble opening the document, or need additional information, don't hesitate to contact us.

Best, Mark

************

This is a Message from:

Mark Bohannon
Vice President, Corporate Affairs & Global Public Policy
Red Hat, Inc.
Desk: [phone]
Mobile: [phone]
[email]

Response of

Red Hat, Inc.

to the Requests for Comments regarding

Partnership for Enhancement of Quality of Software-Related Patents

published by the U.S. Patent and Trademark Office (“PTO”) on

January 3, 2013

and

Preparation of Patent Applications

published by the PTO on January 15, 2013

Red Hat, Inc. appreciates the opportunity to respond to the Requests for Comments in the above referenced matters. We have combined our response to both items in this submission. We also appreciated the opportunity to speak at the New York City Roundtable on February 27.

Red Hat is the world's leading provider of open source software solutions, using a community-powered approach to deliver reliable and high-performing cloud, Linux, middleware, storage and virtualization technologies. An S&P 500 index member, Red Hat provides high-quality, secure and affordable technology solutions that are found throughout mission-critical systems in the financial, transportation, telecommunications and government (civilian and defense) sectors and in enterprises around the United States and the world. In September 2012, Red Hat was recognized as one of the world's most innovative companies.1

1

The 'Collaborative Innovation' Model: Open Source Software is
Mainstream

Collaborating through upstream software development projects is at the heart of the economic and business model that is driving the growing recognition that open source is the most effective way to develop software. Open source software vendors leverage the work done by innovative, vibrant open source communities (e.g., Linux, Jboss.org, OpenStack, Gluster, and KVM), allowing customers to take advantage of the work of many companies and individual developers. This collaborative model differs from the traditional proprietary software vendors' model where research and development are largely accomplished entirely by the vendors’ employees.

In our case, Red Hat works with thousands of developers, only some of whom are our employees, who together contribute code and other work to upstream communities. Red Hat employees are among the key maintainers of, and contributors to, many of those communities. We find strength in the many people who contribute to - and the varied corporate and academic entities that sponsor - the open source projects that are our partners. The benefits of this collaborative innovation model do not flow to just one company; rather, the fruits of the work are available throughout the economy and empower many technology products and sectors.

For example, in the Defense sector, open source software is driving more agile and rapid technology deployment on the battlefield2, and powers the operating system of the U.S. Navy nuclear submarine fleet. It is the technology that sustains weather forecasting, drives space exploration3, and was crucial to recent mission successes such as Mars Curiosity rover, which provided ‘big data’ results as widely available as possible.4

Reflecting the Administration’s ‘Open Innovation’ agenda5, www.whitehouse.gov utilizes open source software. The Administration actively encourages “using and contributing back to open source software as a way of making it easier for the government to share data, improve tools and services, and return value to taxpayers.”6

Stock exchanges around the world prefer open source software; indeed, most worldwide trading volume runs on Linux.7 Various consumer products rely on open

2

source software, including mobile phones, wireless routers and automotive software.8 BIND (Berkeley Internet Name Domain) widely implements the Domain Name System (DNS) protocols, part of the core Internet standards, and is open source software.9

Open source has also revolutionized enterprise IT architecture and economics. Ten years ago, a startup would have spent precious investment capital on infrastructure and Web software. Today, open source software reduces or eliminates the friction of starting a new venture, since “open-source infrastructure software is free and the Web hosting account might go for $5 a month." 10 As one seasoned observer has noted, many best-known brands (like Twitter, Facebook, Amazon, and Google) “were built on a foundation of open source software, and wouldn't exist without the ... [open standards and protocols of the] Internet and the world wide web, Linux, and the cornucopia of open source tools and languages that made the fertile soup from which today's tech innovation sprang.”11

The Patent Challenge

We commend the PTO for focusing on the issues surrounding software-related patents. As a growing and successful software development model, open source software, as well as companies like Red Hat that create jobs and value by providing mission-critical solutions using open source software, are harmed by unclear, overly broad software patents, and confront abusive litigation often based on such patents.

For some industries, especially software, a single commercial product can touch “dozens, hundreds, or even thousands of patents.”12 Companies in these sectors confront a particularly daunting “web of overlapping intellectual property rights that [they] must hack [their] way through in order to actually commercialize new technology.”13 “Much of this ... results from the nature of the technology; computer hardware and software contain an incredibly large number of incremental innovations .... [and] as more and more patents issue on incremental inventions, firms seek more and more patents”14 to use as defensive bargaining chips.

3

The dense landscape of low quality software patents directly affects innovation. As former Federal Trade Commission Chairman Jon Leibowitz succinctly put it, “Poor patent quality tips the balance between exclusivity and competition. Unclear scope and poor notice hurts innovation.”15 It also adversely affects day-to-day business conduct and strategies. For example, the current situation has made it largely impractical for the software sector to utilize traditional approaches, found in other sectors, for assessing patent issues before releasing products.

Even more troubling, it has aggravated litigation abuses. For example, software patents are disproportionately the subject of patent litigation16, with most patent defendants sued over a software patent, many of which are vague, overbroad and invalid. More seriously, the percentage of such defendants is 82% when “patent assertion entities”17 bring litigation. Their abusive practices oftentimes involve “weak or poorly-granted patents ... [or] claim[s of] ownership over basic ideas.”18

Topics for Which the
PTO is Requesting Written Comments

Red Hat agrees with the PTO’s assessment that “software-related patents pose unique challenges from both an examination and an enforcement perspective,” and appreciates its recognition that “one of the most significant issues with software inventions is identifying the scope of coverage of the patent claims.”19 The PTO has appropriately stated that when defining software patent boundaries, and in contrast to other fields (such as computer hardware), “software by its nature is operation-based and is typically embodied in the form of rules, operations, algorithms or the like.”

4

We think key issues related to software-related patents (some of which the PTO has identified) likely require changes in law.20 Nonetheless, we see a clear nexus between the growing thicket of software patents and abusive patent litigation, so we support and encourage the PTO’s Partnership, its systematic examination of the issues identified in the Federal Register Notice, and its efforts at improving quality. Indeed, we believe the agency should accelerate and expand these important initiatives.

Topic 1: Establishing Clear Boundaries
for Claims That Use Functional Language

Red Hat considers this topic area one of special significance that warrants measurably improving the application and examination process. We have years of experience challenging abusive patent aggressors, and strategically reviewing third party patents that menace our business, partners, and customers. Along the way, we have concluded that the scope of coverage for the typical software patent today is difficult to judge without expensive litigation. In fact, in our experience, aggressors intentionally choose patents having unclear claim scope for assertion because they can make money from the confusion and risk that follow from the lack of clarity.

With our experiences in mind, and in response to the PTO's first Topic 1 question, our answer is that applicants typically do not comply with the requirements of 35 U.S.C. 112(b) for providing corresponding structure to perform the claimed function in a claim invoking 35 U.S.C. 112(f). Similarly, in our experience, examiners do not apply such requirements properly. If applicants did routinely comply with such requirements, and examiners routinely applied such requirements properly, we would not see the flood of unclear patents so prevalent in our industry.

We also think, responding to the PTO's second Topic 1 question, that the law should require that applicants support claims with non-112(f) functional limitations with disclosed structure sufficient to perform the recited functions. How can one determine the bounds of such a functional limitation without an example of structure that performs the function? Such disclosure would aid our efforts to discern the bounds of the software patents we review.

The answers to both these questions turn on whether the applicant is “particularly pointing out and distinctly claiming”21 the actual invention (known as the “definiteness

5

test”). Examiners should apply this check rigorously to the structure and acts described in the applicant’s specification for performing the function. The natural result of more rigorous application of the definiteness test should be that applicants are required to:
  • Disclose working software code22 for claim elements that can be implemented using software;
  • Disclose details about the cooperation or interaction among claim elements;
  • Limit claimed subject matter to the actual invention; and
  • Exclude subject matter beyond the actual invention that is merely desirable to the inventor as a royalty base.

The PTO's third Topic 1 question relates to the treatment under 35 U.S.C. 112(f) of claims directed to computers performing certain functions and containing elements that are not set forth in typical means-plus-function format. In Red Hat’s experience, such claims are the frequent subject of applicants’ overreaching, and are particularly difficult to view as clearly bound. Accordingly, such claims should be met by default treatment under 35 U.S.C. 112(f) and particularly strict interpreting of disclosure obligations for corresponding structures and acts. This disclosure should involve divulging working software code for programming the claimed computer.

Topic 2: Future Discussion Topics for
the Software Partnership

As it develops the Software Partnership, the PTO's Roundtables and outreach to date have been important initial steps for the agency and its teams in understanding the issues faced by the software sector and the issues surrounding software-related patents. We encourage the PTO to use the Partnership to engage on the issues facing the sector and on the unique qualities of software-related patents it has identified.

Among some possible areas for future work and discussion:

Meaningful quality metrics for software-related patents. As the PTO continues focusing on “delivering high-quality patents”23, the agency should measure

6

progress transparently and effectively. One suggestion for an effective quality measurement comes from an observation by then-Director Kappos that, in the PTO’s initial nine-month assessment of its first comprehensive guidelines for review of claim clarity, the agency found that Section 112 rejections increased 20+ percent.24 We view increases in such rejections as an important step toward increased patent quality.

The PTO has also noted it has “reached out to experts in the software industry to provide technical training to our patent examiners, so they are up to date on the latest developments.”25 We commend that step. To ensure the fullest array of software expertise is available, the PTO should expand this outreach to assure the broadest input and updates.

Library of common terms related to software-related patents. We believe the PTO should initiate an effort, with industry, to develop a library of common terms related to software-related patents. Further discussions of this topic would have merit. Our initial view is that such an effort could be useful, if: (1) the effort is open and transparent, and the public may comment on its work product; (2) it is driven by technical software expertise; and (3) the process and outcome includes and reflects diverse software publishers, developers and users.

Topic 3:
Preparation of Patent Applications

Red Hat endorses the practices described in the PTO's supplemental Request for Comments.26 Applicants should use the elaborated practices when preparing applications to better position the applications for examination. This, in turn, will assist the public in determining the scope of patent claims issuing from the applications.

Our comments on the practices identified by the PTO follow:

Practice II.A.1, Presenting Claims in a Standardized Template. This practice would be a constructive step for applicants in preparing their applications. Post-issuance confusion about a matter as simple as the parts of a claim reflects poorly on patent quality and can be avoided using this well-conceived idea.27

7

Practice II.A.2, Identifying Claim Support in the Specification using a Claim Chart or Standardized Template. Red Hat endorses this practice as well. It would help clarify claim scope and enforce a heretofore-unseen level of rigor on examination of claim support. As a corollary to this practice, we recommend the PTO update its Guidelines, and instruct examiners to consider only material identified in such a manner when examining claims under Section 112.

Practices II.A.3 and II.A.4, Indicating Whether Examples and Preambles Limit the Claims. Requiring the applicant to so indicate in a patent application and directing examiners to state their understanding of same when examining the application could further clarify claims and be a constructive step in achieving the PTO’s quality objectives. In reviewing this practice, the PTO should consider the following additional elements:

  • The applicant should also indicate whether the order of steps in a method or process claim are intended to be limiting; and
  • Similarly, the applicant should indicate whether functional statements in claims - such as limitations beginning with “whereby,” “whereat,” “such as,” “such that,” “so that,” “wherein,” and the like – are intended to be limiting.

Practice II.A.5, Identifying Means or Step Plus Function Clauses and Corresponding Structure, Material, or Acts. Red Hat endorses this practice too, since the current practice treats software-related patent applications differently from applications in other arts. Without a clear statement from the applicant, the examiner should state either that no 112(f) clauses are present, or identify such clauses and their corresponding structure, material, and acts in the specification. To augment the practice, we also encourage the PTO, through its Guidelines or the Manual of Patent Examining Procedure, to stress with examiners the importance of examining for the less commonly recognized step-plus-function claims as well as the more commonly recognized means-plus-function claims.

Practice II.A.6, Using Notation Systems to Disclose Supporting Algorithms. We recommend the PTO adopt this practice also, since using a known system to disclose an algorithm would clarify the bounds of the claims supported by the disclosure. We encourage the PTO to define such systems broadly, along with examples, while avoiding limiting such systems to particularly known systems, such as UML.

Practice II.B.1, Indicating Whether Terms of Degree have a Lay or Technical Meaning. We endorse this practice, because confusion often arises in determining claim scope due to ill-defined terms of degree. Further, we believe examiners should think broadly about what constitutes a term of degree. For example, we believe the term “remote” - commonly used in patents involving networked

8

computers to define server computers and client computers – is, in such a context, a term of degree. Examiners should insist that applicants explain the scope of the term and whether it has a lay or technical meaning.

Practices II.B.2 and II.B.3, Including a Glossary of Ambiguous, Distinctive, and Specialized Terms and Designating a Default Dictionary. These practices could help reform the application process. To make these meaningful, applicants should identify in the background portion of the specification a publicly available dictionary that defines claim terms. If the dictionary does not define a claim term, the applicant should do so in the detailed description portion of the specification, but only by referring to the dictionary. The PTO should reject claims containing terms not defined in such a manner as indefinite, or at least should subject such claims to much greater scrutiny regarding definiteness.

*********

For further information or to answer any questions the PTO may have, please contact:

Patrick McBride
Director, Patent Attorney – Global
Red Hat, Inc.
[phone, email]

Mark Bohannon
Vice President, Corporate Affairs &
Global Public Policy
[phone, email]

________
1 Forbes, “The World’s Most Innovative Companies”, Sept. 2012, found at: http://www.forbes.com/ innovative-companies/list/.

2 Open Technology within DoD, Intel Systems” April 7, 2007), found at http://archive09.linux.com/feed/61302. Brigadier General Nickolas G. Justice, U.S. Army (ret.) “When we rolled into Baghdad, we did it using open source.”

3 SpaceX lessons learned”, http://lwn.net/Articles/540368/.

4 NASA achieves data goals for Mars rover with open source software”, 22 Oct 2012, found at: http:// opensource.com/life/12/10/NASA-achieves-data-goals-Mars -rover-open-source-software.

5 An Open Innovation Toolbox”, posted February 14, 2012, found at: http://www.whitehouse.gov/blog/ 2012/02/14/open-innovation-toolbox.

6 http:// www.whitehouse.gov/developers.

7 http:// www.ict-summit.jp/2011/pdf/0614am_Mr.Jim_Whitehurst.pdf.

8 See, e.g., http:// www.genivi.org/.

9 https://www.isc.org/software/bind.

10 The Blessings of Open Source for Small Business,” posted 26-07-2012, found at: http://h30565.www3.hp.com/t5/Feature-Articles/ The-Blessings-of-Open-Source-for-Small-Business/ba-p/5684.

11 Tim O’Reilly, “The Clothesline Paradox: How Sharing Economies Create Value”, OSCON, July 18, 2012, found at: http://www.slideshare.net/timoreilly/ the-clothesline-paradox-and-the-sharing-economy-pdf-with- notes-13685423.

12 Federal Trade Commission, TO PROMOTE INNOVATION: THE PROPER BALANCE OF COMPETITION AND PATENT LAW AND POLICY , 2003, pg. 6. (“FTC 2003 Report”).

13 Carl Shapiro, Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting, in 1 INNOVATION POLICY AND THE ECONOMY 120 (Adam Jaffe et al. eds., 2001).

14 FTC 2003 Report, pg. 6. See, also Judge Richard Posner: “[The software industry]is a progressive, dynamic industry rife with invention. But the conditions that make patent protection essential in the pharmaceutical industry are absent. Nowadays most software innovation is incremental, created by teams of software engineers at modest cost, and also ephemeral—most software inventions are quickly superseded. Software innovation tends to be piecemeal ... so that a software device ... may have tens of thousands, even hundreds of thousands, of separate components (bits of software code or bits of hardware), each one arguably patentable.” (Sept 2012), found at: http:// www.becker-posner-blog.com/2012/09/do-patent-and-copyright -law-restrict-competition-and-creativity-excessively-posner.html.

15 Opening Remarks at the FTC’s Patent Assertion Entity Workshop , December 10, 2012 , found at: http://www.ftc.gov/ speeches/leibowitz/121210paeworkshop.pdf.

16 Colleen V. Chien and Aashish R. Karkhanis, Functional Claiming and Software Patents, Presentation to the 12 February 2013 Software PTO Roundtable, February 12, 2013, found at: http://papers.ssrn.com/sol3/papers.cfm? abstract_id=2215867&download=yes##.

17 See Federal Trade Commission, THE EVOLVING IP MARKETPLACE: ALIGNING PATENT NOTICE AND REMEDIES WITH COMPETITION , March 2011 (“FTC 2011 Report”), pg. 51: “The business model of PAEs focuses on purchasing and asserting patents against manufacturers already using the technology, rather than developing and transferring technology.”

18 Statement of Judiciary Committee Chairman Bob Goodlatte before the Subcommittee on Courts, Intellectual Property and the Internet, Hearing on Abusive Patent Litigation: The Impact on American Innovation & Jobs, and Potential Solutions, March 14, 2013, found at: http:// judiciary.house.gov/news/2013/Statement%20Abusive%20Patent%20Litigation.html.

19 78 Federal Register 292, January 3, 2013.

20 See, for example, our amicus briefs in cases such as Bilski (http://www.redhat.com/f/pdf/ rh-supreme-court-brief.pdf); Global-Tech (http:// www.redhat.com/f/pdf/Global-Tech-Amicus-Brief-Weil.pdf); CLS Bank (http://www.patentlyo.com/files/ cls.google.pdf); Ultramercial (https://www.eff.org/ sites/default/files/FINAL_ULTRAMERCIAL_ISO_CERT.pdf); and i4i (http://www.redhat.com/f/pdf/ amicus-brief-2011-02-02.pdf).

21 35 U.S.C. 112(b).

22 Proprietary software vendors may complain about a requirement to disclose source code, but source code disclosure is a routine matter when defining the bounds of other forms of coverage, such as copyright - a form of protection such vendors regularly avail themselves of.

23 Statement of David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office before the Committee on the Judiciary, U.S. House of Representatives, “Implementation of the Leahy-Smith America Invents Act” (May 16, 2012 ), found at: http://www.uspto.gov/ news/speeches/2012/kappos_AIA_testimony.jsp.

24 Keynote Address of Under Secretary of Commerce for IP & Director of the USPTO David Kappos at the Center for American Progress forum oh “High Tech Patents”, November 20, 2012, found at: http://www.uspto.gov/news/speeches/ 2012/kappos_CAP.jsp.

25 Ibid.

26 78 Federal Register 2960-2961, January 15, 2013.

27 We believe the PTO should adopt a similar practice in prior art rejections. An examiner could directly map the prior art against the claim limitations using the claim template supplied by the applicant or one modified for the purpose by the examiner to clearly identify each limitation as present or absent in the prior art.

9

Red Hat's comments were signed by Patrick McBride, who some of you old-timers at Groklaw will remember from the SCO saga, when he was at the time at Novell. I'm glad to see he's now at Red Hat. Also, it's signed by Mark Bohannon, Vice President, Corporate Affairs & Global Public Policy at Red Hat, Inc.

Morrison & Foerster's Comments:

And here's Morrison & Foerster's response, only to the question raised about improving patent applications, signed by Jason R. Bartlett and Michael A. Jacobs, the latter currently representing Apple, of course, against Samsung and who was also on the Oracle team against Google but who during the SCO saga represented Novell. I know. But lawyers pretty much represent the folks who hire them. If you were in a debate team in college, it's kind of like that, where you get an assignment to defend a certain point of view, even if you don't necessarily personally hold it. I am not suggesting what Mr. Jacobs' views are or are not. I'm speaking in general, that lawyers can represent either side in any litigation in their speciality with ease, even if they might enjoy representing one side more than the other personally:

[Morrison & Foerster logo]

March 15, 2013

The Honorable Teresa Stanek Rea
Acting Under Secretary of Commerce for Intellectual Property and
Acting Director of the United States Patent and Trademark Office
Mail Stop Comments – Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Attention: Nicole D. Haines, Legal Advisor

Via email

Re: Comments on Preparation of Patent Applications 78 Fed. Reg. 2960 (January 15,
2013)

Dear Ms. Rea:

We write in response to the Request for Comments on Preparation of Patent Applications published at 78 Fed. Reg. 2960 on January 15, 2013. We appreciate the opportunity to comment.

The perspective we offer below is based on our combined experience as intellectual property litigators representing patentees and accused infringers in federal courts throughout the United States, the International Trade Commission, and private arbitral fora. Our comments may not reflect the views of our colleagues or clients.

We applaud the efforts of the Patent and Trademark Office to clarify the scope and meaning of patent claims. Many of the proposals in the Request appear to be common sense, “low hanging fruit” opportunities to promote consistency of interpretation and reduce the expense of patent litigation while not unduly burdening applicants or examiners.

Hon. T. Rea
March 15, 2013
Page Two

Identifying whether the claim preamble is intended to be a limitation on claim scope and presenting claims in a multi-part format to identify the preamble, transitional phrase, and claim limitations.

We support these proposals. A simple check box filled at the time of application could sidestep one of the more imponderable questions of claim construction. This proposal has the additional merit of not upsetting the expectations of owners of existing patents. Distinguishing the preamble, transitional phrase, and the body is also helpful because it would remove any doubt about the language to which the check box choice would apply.

The question of whether the preamble is limiting can in some instances be case dispositive. Yet, in our experience, claims are not interpreted until fairly late in litigation. Some jurisdictions do not construe terms until dispositive motions are filed. Furthermore, we observe courts limiting (sometimes quite strictly) the number of claim terms that will be construed. It would be of considerable benefit to the parties to know from the start whether the preamble is a limitation.

Currently there is no “litmus test” to determine whether a preamble is limiting. Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). As a general rule preambles are not limiting, but may be limiting if they give “life, meaning and vitality” to the claim or define the “essence of the invention.” Id.; Griffin v. Bertina, 285 F.3d 1029, 1033 (Fed. Cir. 2002). A preamble that provides an antecedent basis for subsequent limitations may be limiting. Catalina, 289 F.3d at 808. But a preamble merely “extolling the benefits or features” of the invention is not. Id. at 809. Neither is a preamble that defines the context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir 2003).

As many commentators have noted, these rules can be difficult to apply. In Marrin v. Griffin, for instance, a divided Federal Circuit panel affirmed a district court’s judgment of invalidity after finding that the preamble “scratch-off label for permitting a user to write thereon without the use of a marking implement” was a non-limiting statement of purpose. 599 F.3d 1290, 1295 (Fed. Cir. 2010). The dissent criticized the majority for “delete[ing] material limitations in the claim because they appear in the preamble” and then “constru[ing] the claims contrary to the deleted limitations so as to broaden the claims into invalidity.” Id. at 1296. In another recent case, the Federal Circuit reversed the Board of Patent Appeals and Interferences’ finding that “for verifying the accuracy of logical-to-physical mapping software” was a non-limiting “statement of intended purpose.” In re Jasinski, 2013 U.S. App. LEXIS 3219 (Fed. Cir., Feb. 15, 2013). The Federal Circuit agreed with the patent applicant that the preamble was “the essence of the invention.”

Hon. T. Rea
March 15, 2013
Page Three

Marrin and In re Jasinski have in common that the patentees were championing narrower constructions of their patents by treating their preambles as limitations. It is hard to see why a patentee who wishes to narrow his or her claim should not be allowed to do so (at least during prosecution). Oddly, if the examiner in In re Jasinski had accepted the applicant’s argument that the preamble was limiting, that would have made it so. Clear reliance on a preamble during prosecution can distinguish a claimed invention from the prior art and render the preamble a claim limitation. Catalina, 289 F.3d at 808-809.

One thread in the Federal Circuit’s preamble cases appears to be that the patentee’s intent controls when that intent is made plain in prosecution. Thus, in Marrin the majority indicated that it would have found the preamble to be limiting if the patentees had relied on it in prosecution. 599 F.3d at 1294. The majority found, to the contrary, that the patentees “did not consider the writing use for their claimed invention as being patentably significant.” Id. Similarly, preambles of claims written in Jepson form are generally considered to be limiting because the patentee’s “choice” of the Jepson form “evidences the [patentee’s] intention ‘to use the preamble to define, in part, the structural elements of his claimed invention.’” Epcon Gas Sys’, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1029 (Fed. Cir. 2002).

Providing a check box would allow an applicant to show clearly whether he or she considers the preamble to be “patentably significant.” Doing so is more equitable and logical than relying on the examiner’s rejections to force the patentee (sometimes) to make a clear choice.

Should the patent office require applicants to state their intent to treat the preamble as patentably significant, then it makes a great deal of sense to ask the applicant also to visually distinguish the preamble from the transitional phrase and the remaining body of the claim. That would help the public understand which claim language is and is not considered to be limiting.

We perceive few disadvantages. There are only two scenarios to consider. First, the applicant could designate the preamble as limiting. If the applicant’s choice is consistent with existing law then the claims are clearer but not changed. Furthermore, expressly assigning “patentable significance” to a preamble would make it a limitation under the rules applied in Marrin and other cases. In case of doubt, the examiner could require the applicant to amend his or her claim to restate the preamble limitations in the body of the claim. If the preamble limitations are already part of the claim, it is hard to see why it would harm the applicant to add them again.

In the other scenario, the applicant does not designate the preamble as limiting. Here again, if the choice is consistent with existing law then the claims are made clearer but not changed.

Hon. T. Rea
March 15, 2013
Page Four

If the choice is contrary to law as the examiner understands it, then the examiner can request that the applicant delete the potentially limiting preamble language to remove any doubt. Would it harm the applicant to delete non-limiting claim language? We do not see why it would. Of course, if there is prior art that is overcome only by the preamble, then the claim can be rejected on that basis.

Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart, particularly when a continuing application is filed.

Litigating the priority date of claims of continuation-in-part patents is a logistical challenge. The issue turns in part on whether the parent application contained an adequate written description. That is a question of fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). It is therefore often necessary to present the amendment history to the trier of fact by preparing “redline” documents showing the changes. Redlines prepared for litigation are not self-authenticating, however, and they may require the testimony of a sponsoring witness to be presented as evidence in court.

Requiring applicants to prepare a chart or other document specifically identifying the alleged support in parent applications would ameliorate this problem. Such a document would provide a common point of reference for the parties and their experts to use in presenting their arguments to the trier of fact. In the case of a continuation-in-part having multiple parent applications, moreover, such a chart may help clarify which of several priority dates are alleged to apply to each claim.

The chart would not need to be exhaustive to be useful. If the applicant can show adequate support for each claim then it is irrelevant that there may be more support elsewhere in the priority specification. To the contrary, requiring identification of all possible support in the priority application(s) may make the exercise less useful. Applicants may fear that their claims will be read in light of only those portions of the specification specifically identified as corresponding support rather than the specification as a whole. That may lead applicants to chart unnecessarily broad swaths of disclosure, thus somewhat diminishing the clarity achieved through the exercise.

Expressly identifying 35 U.S.C. 112(f) clauses and corresponding disclosure.

Applicants can create a strong presumption that section 112(f) applies by using “means for” claim language. It is unlikely that any skilled claim drafter would choose “means for” language if he or she did not intend to invoke the section 112(f). Moreover, as Professor Dennis Crouch has documented, means-plus-function claiming has been in long-term

Hon. T. Rea
March 15, 2013
Page Five

decline, recently approaching 5% of non-provisional patent applications.1 Applicants are obviously quite cognizant of the impact of choosing means-plus-function claim language. There is no additional burden placed upon them, therefore, by requiring that they state expressly that they intend to invoke section 112(f).

Requiring applicants simultaneously to identify the disclosure corresponding to the section 112(f) claim would assist the public in understanding the patent and reduce litigation costs. The corresponding disclosure defines the scope of a section 112(f) claim. As such, that disclosure should be clearly defined at the same time all other claims are defined – during prosecution, not after litigation arises. In our experience, litigating what specific part of the disclosure corresponds to the claims can be particularly burdensome. The analysis is highly fact dependent and uncertain. In many circumstances the identification of corresponding disclosure can be case dispositive, and is therefore hotly contested.

What happens if an applicant does not expressly invoke section 112(f) but nevertheless writes his or her claim in functional language? We believe that this proposal need not address that knotty problem. Focusing again on the “low hanging fruit,” we believe that it is worth putting in place procedures to clarify the relatively small percentage of patent claims that intentionally invoke section 112(f). Other functional claims may continue to be interpreted under existing law, imperfect as it may be.

Indicating whether examples in the specification are intended to be limiting or merely illustrative.

In our view, this proposal is less likely to be helpful than others in the Request for Comment. Most patent drafters are already careful to characterize examples as non-limiting embodiments. Drafters who intend to limit a claim in accordance with a specific example may do so using claim language.

The proposed rule may generate more confusion than clarity. It would require the public to look for limitations in body of the specification as well as the claims. It is also unclear whether any examples identified as “limiting” would limit all claims or just those claims to which the examples are found to pertain. Another question is whether an applicant could rely on limiting specification examples to overcome prior art. If so, can the examiner still reject the claims and require that the limitations of the examples be incorporated into the claims? On the other hand, if the applicant cannot rely on limiting specification examples to overcome prior art, then what incentive does the applicant have to designate any example as limiting?

_________
1 http://www.patentlyo.com/patent/2013/01/means-plus-function-claiming.html

Hon. T. Rea
March 15, 2013
Page Six

Examples are not always discretely presented in the specification. Identifying which specification text constitutes an “example” may not be straightforward. Examiners may have to scrutinize specifications to ensure that all examples have been identified and labeled, thus adding to their burden.

Designating, at the time of filing the application, a default dictionary or dictionaries to be used in ascertaining the meaning of the claim terms and including in the specification a glossary of terms.

We support requiring applicants to identify default dictionaries when possible. Doing so should impose a minimal burden on applicants who are likely already familiar with dictionaries in their field of invention, if they exist. “It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter.” MPEP § 2173.

Designating a dictionary at the time of filing would promote precision and reduce the burden of litigation. As discussed above, courts may construe only a limited number of claim terms fairly late in litigation. A designated dictionary could reduce the number of terms requiring construction and make the scope of the claims clearer from the outset. We also note that because litigation may not arise until many years after the patent application is filed, it is sometimes difficult to discover what dictionaries persons of skill in the art were using during the relevant time. Having a clear historical record would be very helpful.

A single dictionary may not align perfectly with the applicant’s use of language. Accordingly, it would be particularly useful for applicants to define any specific terms that are not covered in the dictionary or that are defined in a way that is inconsistent with the applicant’s intent. Applicants now often use formal definitions in specifications. See, e.g., U.S. Application No. 20130003179 A1 (defining “difference in refractive index in all direction,” “nano-scale,” “nano-structured,” and “plasma.”). Such definitions could be examined for definiteness during prosecution.

We strongly support the PTO’s efforts to use improved examination procedures to minimize unnecessary disputes over patent scope. For the reasons discussed above, we agree with many of the PTO’s proposals.

Hon. T. Rea
March 15, 2013
Page Seven

Sincerely,

/s/ Michael A. Jacobs

Michael A. Jacobs

/s/ Jason R. Bartlett

Jason R. Bartlett

Comparative Table:

And here's a table, with Red Hat's answers on the left and Morrison & Foerster's on the right, and because the latter was a bit more verbose in the beginning, you have to scroll down to read Red Hat's first response. I've placed the question being responded to above each response, in italics, and I certainly hope it's helpful, because it was a lot of work. If you see things I've missed or errors, let me know and I'll perfect it:

Red Hat Morrison & Foerster
A.1. Presenting claims in a multi-part format by way of a standardized template that places each claim component in separate, clearly marked, and designated fields. For instance, a template may facilitate drafting and review of claims by separately delineating each claim component into separate fields for the preamble, transitional phrase, and each particular claim limitation.

A.2. Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart or the standardized template described above. This practice could be particularly beneficial where claims are amended or where a continuing application (continuation, divisional, continuation-in-part) is filed.

Practice II.A.2, Identifying Claim Support in the Specification using a Claim Chart or Standardized Template. Red Hat endorses this practice as well. It would help clarify claim scope and enforce a heretofore-unseen level of rigor on examination of claim support. As a corollary to this practice, we recommend the PTO update its Guidelines, and instruct examiners to consider only material identified in such a manner when examining claims under Section 112.

A.1. Presenting claims in a multi-part format by way of a standardized template that places each claim component in separate, clearly marked, and designated fields. For instance, a template may facilitate drafting and review of claims by separately delineating each claim component into separate fields for the preamble, transitional phrase, and each particular claim limitation.

A.2. Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart or the standardized template described above. This practice could be particularly beneficial where claims are amended or where a continuing application (continuation, divisional, continuation-in-part) is filed.

Identifying whether the claim preamble is intended to be a limitation on claim scope and presenting claims in a multi-part format to identify the preamble, transitional phrase, and claim limitations.

We support these proposals. A simple check box filled at the time of application could sidestep one of the more imponderable questions of claim construction. This proposal has the additional merit of not upsetting the expectations of owners of existing patents. Distinguishing the preamble, transitional phrase, and the body is also helpful because it would remove any doubt about the language to which the check box choice would apply.

The question of whether the preamble is limiting can in some instances be case dispositive. Yet, in our experience, claims are not interpreted until fairly late in litigation. Some jurisdictions do not construe terms until dispositive motions are filed. Furthermore, we observe courts limiting (sometimes quite strictly) the number of claim terms that will be construed. It would be of considerable benefit to the parties to know from the start whether the preamble is a limitation.

Currently there is no “litmus test” to determine whether a preamble is limiting. Catalina Mkt’g Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). As a general rule preambles are not limiting, but may be limiting if they give “life, meaning and vitality” to the claim or define the “essence of the invention.” Id.; Griffin v. Bertina, 285 F.3d 1029, 1033 (Fed. Cir. 2002). A preamble that provides an antecedent basis for subsequent limitations may be limiting. Catalina, 289 F.3d at 808. But a preamble merely “extolling the benefits or features” of the invention is not. Id. at 809. Neither is a preamble that defines the context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir 2003).

As many commentators have noted, these rules can be difficult to apply. In Marrin v. Griffin, for instance, a divided Federal Circuit panel affirmed a district court’s judgment of invalidity after finding that the preamble “scratch-off label for permitting a user to write thereon without the use of a marking implement” was a non-limiting statement of purpose. 599 F.3d 1290, 1295 (Fed. Cir. 2010). The dissent criticized the majority for “delete[ing] material limitations in the claim because they appear in the preamble” and then “constru[ing] the claims contrary to the deleted limitations so as to broaden the claims into invalidity.” Id. at 1296. In another recent case, the Federal Circuit reversed the Board of Patent Appeals and Interferences’ finding that “for verifying the accuracy of logical-to-physical mapping software” was a non-limiting “statement of intended purpose.” In re Jasinski, 2013 U.S. App. LEXIS 3219 (Fed. Cir., Feb. 15, 2013). The Federal Circuit agreed with the patent applicant that the preamble was “the essence of the invention.”

Marrin and In re Jasinski have in common that the patentees were championing narrower constructions of their patents by treating their preambles as limitations. It is hard to see why a patentee who wishes to narrow his or her claim should not be allowed to do so (at least during prosecution). Oddly, if the examiner in In re Jasinski had accepted the applicant’s argument that the preamble was limiting, that would have made it so. Clear reliance on a preamble during prosecution can distinguish a claimed invention from the prior art and render the preamble a claim limitation. Catalina, 289 F.3d at 808-809.

One thread in the Federal Circuit’s preamble cases appears to be that the patentee’s intent controls when that intent is made plain in prosecution. Thus, in Marrin the majority indicated that it would have found the preamble to be limiting if the patentees had relied on it in prosecution. 599 F.3d at 1294. The majority found, to the contrary, that the patentees “did not consider the writing use for their claimed invention as being patentably significant.” Id. Similarly, preambles of claims written in Jepson form are generally considered to be limiting because the patentee’s “choice” of the Jepson form “evidences the [patentee’s] intention ‘to use the preamble to define, in part, the structural elements of his claimed invention.’” Epcon Gas Sys’, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1029 (Fed. Cir. 2002).

Providing a check box would allow an applicant to show clearly whether he or she considers the preamble to be “patentably significant.” Doing so is more equitable and logical than relying on the examiner’s rejections to force the patentee (sometimes) to make a clear choice.

Should the patent office require applicants to state their intent to treat the preamble as patentably significant, then it makes a great deal of sense to ask the applicant also to visually distinguish the preamble from the transitional phrase and the remaining body of the claim. That would help the public understand which claim language is and is not considered to be limiting.

We perceive few disadvantages. There are only two scenarios to consider. First, the applicant could designate the preamble as limiting. If the applicant’s choice is consistent with existing law then the claims are clearer but not changed. Furthermore, expressly assigning “patentable significance” to a preamble would make it a limitation under the rules applied in Marrin and other cases. In case of doubt, the examiner could require the applicant to amend his or her claim to restate the preamble limitations in the body of the claim. If the preamble limitations are already part of the claim, it is hard to see why it would harm the applicant to add them again.

In the other scenario, the applicant does not designate the preamble as limiting. Here again, if the choice is consistent with existing law then the claims are made clearer but not changed.

If the choice is contrary to law as the examiner understands it, then the examiner can request that the applicant delete the potentially limiting preamble language to remove any doubt. Would it harm the applicant to delete non-limiting claim language? We do not see why it would. Of course, if there is prior art that is overcome only by the preamble, then the claim can be rejected on that basis.

Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart, particularly when a continuing application is filed.

Litigating the priority date of claims of continuation-in-part patents is a logistical challenge. The issue turns in part on whether the parent application contained an adequate written description. That is a question of fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). It is therefore often necessary to present the amendment history to the trier of fact by preparing “redline” documents showing the changes. Redlines prepared for litigation are not self-authenticating, however, and they may require the testimony of a sponsoring witness to be presented as evidence in court.

Requiring applicants to prepare a chart or other document specifically identifying the alleged support in parent applications would ameliorate this problem. Such a document would provide a common point of reference for the parties and their experts to use in presenting their arguments to the trier of fact. In the case of a continuation-in-part having multiple parent applications, moreover, such a chart may help clarify which of several priority dates are alleged to apply to each claim.

The chart would not need to be exhaustive to be useful. If the applicant can show adequate support for each claim then it is irrelevant that there may be more support elsewhere in the priority specification. To the contrary, requiring identification of all possible support in the priority application(s) may make the exercise less useful. Applicants may fear that their claims will be read in light of only those portions of the specification specifically identified as corresponding support rather than the specification as a whole. That may lead applicants to chart unnecessarily broad swaths of disclosure, thus somewhat diminishing the clarity achieved through the exercise.

A.3. Indicating whether examples in the specification are intended to be limiting or merely illustrative.

A.4. Identifying whether the claim preamble is intended to be a limitation on claim scope.

Practices II.A.3 and II.A.4, Indicating Whether Examples and Preambles Limit the Claims. Requiring the applicant to so indicate in a patent application and directing examiners to state their understanding of same when examining the application could further clarify claims and be a constructive step in achieving the PTO’s quality objectives. In reviewing this practice, the PTO should consider the following additional elements:

  • The applicant should also indicate whether the order of steps in a method or process claim are intended to be limiting; and
  • Similarly, the applicant should indicate whether functional statements in claims - such as limitations beginning with “whereby,” “whereat,” “such as,” “such that,” “so that,” “wherein,” and the like – are intended to be limiting.
A.3. Indicating whether examples in the specification are intended to be limiting or merely illustrative.

A.4. Identifying whether the claim preamble is intended to be a limitation on claim scope.

Indicating whether examples in the specification are intended to be limiting or merely illustrative.

In our view, this proposal is less likely to be helpful than others in the Request for Comment. Most patent drafters are already careful to characterize examples as non-limiting embodiments. Drafters who intend to limit a claim in accordance with a specific example may do so using claim language.

The proposed rule may generate more confusion than clarity. It would require the public to look for limitations in body of the specification as well as the claims. It is also unclear whether any examples identified as “limiting” would limit all claims or just those claims to which the examples are found to pertain. Another question is whether an applicant could rely on limiting specification examples to overcome prior art. If so, can the examiner still reject the claims and require that the limitations of the examples be incorporated into the claims? On the other hand, if the applicant cannot rely on limiting specification examples to overcome prior art, then what incentive does the applicant have to designate any example as limiting?

A.5. Expressly identifying clauses within particular claim limitations for which the inventor intends to invoke 35 U.S.C. 112(f) and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified 35 U.S.C. 112(f) claim limitations.

Practice II.A.5, Identifying Means or Step Plus Function Clauses and Corresponding Structure, Material, or Acts. Red Hat endorses this practice too, since the current practice treats software-related patent applications differently from applications in other arts. Without a clear statement from the applicant, the examiner should state either that no 112(f) clauses are present, or identify such clauses and their corresponding structure, material, and acts in the specification. To augment the practice, we also encourage the PTO, through its Guidelines or the Manual of Patent Examining Procedure, to stress with examiners the importance of examining for the less commonly recognized step-plus-function claims as well as the more commonly recognized means-plus-function claims.

A.5. Expressly identifying clauses within particular claim limitations for which the inventor intends to invoke 35 U.S.C. 112(f) and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified 35 U.S.C. 112(f) claim limitations.

Expressly identifying 35 U.S.C. 112(f) clauses and corresponding disclosure.

Applicants can create a strong presumption that section 112(f) applies by using “means for” claim language. It is unlikely that any skilled claim drafter would choose “means for” language if he or she did not intend to invoke the section 112(f). Moreover, as Professor Dennis Crouch has documented, means-plus-function claiming has been in long-term decline, recently approaching 5% of non-provisional patent applications.1 Applicants are obviously quite cognizant of the impact of choosing means-plus-function claim language. There is no additional burden placed upon them, therefore, by requiring that they state expressly that they intend to invoke section 112(f).

Requiring applicants simultaneously to identify the disclosure corresponding to the section 112(f) claim would assist the public in understanding the patent and reduce litigation costs. The corresponding disclosure defines the scope of a section 112(f) claim. As such, that disclosure should be clearly defined at the same time all other claims are defined – during prosecution, not after litigation arises. In our experience, litigating what specific part of the disclosure corresponds to the claims can be particularly burdensome. The analysis is highly fact dependent and uncertain. In many circumstances the identification of corresponding disclosure can be case dispositive, and is therefore hotly contested.

What happens if an applicant does not expressly invoke section 112(f) but nevertheless writes his or her claim in functional language? We believe that this proposal need not address that knotty problem. Focusing again on the “low hanging fruit,” we believe that it is worth putting in place procedures to clarify the relatively small percentage of patent claims that intentionally invoke section 112(f). Other functional claims may continue to be interpreted under existing law, imperfect as it may be.

________
1 http://www.patentlyo.com/patent/2013/01/means-plus-function-claiming.html

A.6. Using textual and graphical notation systems known in the art to disclose algorithms in support of computer-implemented claim limitations, such as C-like pseudo-code or XML-like schemas for textual notation and Unified Modeling Language (UML) for graphical notation.

Practice II.A.6, Using Notation Systems to Disclose Supporting Algorithms. We recommend the PTO adopt this practice also, since using a known system to disclose an algorithm would clarify the bounds of the claims supported by the disclosure. We encourage the PTO to define such systems broadly, along with examples, while avoiding limiting such systems to particularly known systems, such as UML.

A.6. Using textual and graphical notation systems known in the art to disclose algorithms in support of computer-implemented claim limitations, such as C-like pseudo-code or XML-like schemas for textual notation and Unified Modeling Language (UML) for graphical notation.

[PJ: No comment on this.]

B. 1. Indicating whether terms of degree—such as substantially, approximately, about, essentially—have a lay or technical meaning and explaining the scope of such terms.

Practice II.B.1, Indicating Whether Terms of Degree have a Lay or Technical Meaning. We endorse this practice, because confusion often arises in determining claim scope due to ill-defined terms of degree. Further, we believe examiners should think broadly about what constitutes a term of degree. For example, we believe the term “remote” - commonly used in patents involving networked computers to define server computers and client computers – is, in such a context, a term of degree. Examiners should insist that applicants explain the scope of the term and whether it has a lay or technical meaning.

B. 1. Indicating whether terms of degree—such as substantially, approximately, about, essentially—have a lay or technical meaning and explaining the scope of such terms.

[PJ: No comment on this.]

B.2. Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to certain technologies, such as software.

B.3. Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms.

Practices II.B.2 and II.B.3, Including a Glossary of Ambiguous, Distinctive, and Specialized Terms and Designating a Default Dictionary. These practices could help reform the application process. To make these meaningful, applicants should identify in the background portion of the specification a publicly available dictionary that defines claim terms. If the dictionary does not define a claim term, the applicant should do so in the detailed description portion of the specification, but only by referring to the dictionary. The PTO should reject claims containing terms not defined in such a manner as indefinite, or at least should subject such claims to much greater scrutiny regarding definiteness.

B.2. Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to certain technologies, such as software.

B.3. Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms.

Designating, at the time of filing the application, a default dictionary or dictionaries to be used in ascertaining the meaning of the claim terms and including in the specification a glossary of terms.

We support requiring applicants to identify default dictionaries when possible. Doing so should impose a minimal burden on applicants who are likely already familiar with dictionaries in their field of invention, if they exist. “It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter.” MPEP § 2173.

Designating a dictionary at the time of filing would promote precision and reduce the burden of litigation. As discussed above, courts may construe only a limited number of claim terms fairly late in litigation. A designated dictionary could reduce the number of terms requiring construction and make the scope of the claims clearer from the outset. We also note that because litigation may not arise until many years after the patent application is filed, it is sometimes difficult to discover what dictionaries persons of skill in the art were using during the relevant time. Having a clear historical record would be very helpful.

A single dictionary may not align perfectly with the applicant’s use of language. Accordingly, it would be particularly useful for applicants to define any specific terms that are not covered in the dictionary or that are defined in a way that is inconsistent with the applicant’s intent. Applicants now often use formal definitions in specifications. See, e.g., U.S. Application No. 20130003179 A1 (defining “difference in refractive index in all direction,” “nano-scale,” “nano-structured,” and “plasma.”). Such definitions could be examined for definiteness during prosecution.


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