In August of 2005, the PTO revised the MPEP to include a new section 2111.04. This new section of the MPEP addressed the language “adapted to.” While the new section of the MPEP cited case law for other phrases, such as “whereby” clauses, no legal support was cited in regard to the “adapted to” language. Eight years and six revisions of the MPEP later, no legal support has yet been cited. Section 2111.04 is reproduced below:
2111.04 “Adapted to,” “Adapted for,” “Wherein,” and “Whereby” Clauses [R-9]
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. > See, e.g., Griffin v. Bertina, 283 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. Cir. 2002)(finding that a “wherein” clause limited a process claim where the clause gave “meaning and purpose to the manipulative steps”). < In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a “‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. However, the court noted (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’” Id.
It is worth noting that in the recent case of Broadcom Corporation v. EMULEX CORPORATION, No. 2012-1309 (Fed. Cir. Oct. 7, 2013) an “adapted to” phrase was at issue in the appeal. The claim at issue was claim 8 which recited:
8. A communication device configured to receive multiple serial data signals, comprising:
a master timing generator adapted to generate a master timing signal;
multiple receive-lanes each configured to receive an associated one of the multiple serial data signals, each receive-lane including
a phase interpolator adapted to produce a sampling signal having an interpolated phase, and
a data path adapted to sample and quantize the associated serial data signal in accordance with the sampling signal; and
an interpolator control module coupled to each receive-lane, the interpolator control module being adapted to cause the phase interpolator in each receive-lane to rotate the interpolated phase of the sampling signal in the receive-lane at a rate corresponding to a frequency offset between the sampling signal and the serial data signal associated with the receive-lane so as to reduce the frequency offset between the sampling signal and the serial data signal.
The court in Broadcom noted that the determination of infringement at the district court level had turned on a particular limit in claim 8 — a closer look at claim 8 reveals that the language at issue was actually part of an “adapted to” claim. The Federal Circuit stated:
At trial, the district court found that, at bottom, infringement turned on whether the accused products “reduced the offset between the sampling signal and the data signal all of the time or only some of the time.” J.A. 35. Importantly, the district court found that Emulex’s expert, Dr. Nikolic, conceded that the accused device “reduced the offset at least some of the time.” J.A. 640; see Oral Argument at 1:19-1:48, Broadcom Corp. v. Emulex Corp., No. 2012-1309, available at http:// www.cafc.uscourts.gov/oral-argument-recordings/12-1309/ all. It is well settled that an accused device that “sometimes, but not always, embodies a claim[] nonetheless infringes.” Bell Commc’n Research, Inc. v. Vitalink Commc’n Corp., 55 F.3d 615, 622-23 (Fed. Cir. 1995). Accordingly, this court affirms the district court’s grant of JMOL that Emulex’s accused products infringed the ‘150 patent and denial of Emulex’s JMOL of noninfringement.
Thus, the Federal Circuit affirmed the finding of infringement based on language appearing in an “adapted to” limitation.
Incidentally, this past week the US Patent Office issued at least 500 patents that include “adapted to” in one or more claims.
While some examiners at the PTO push back on the limiting effect of “configured to” or “capable of” claim language in apparatus claims and other examiners do not, the Federal Circuit typically treats such language as limiting during litigation. The recent oral argument of Bally Technologies, Inc. v. Business Intelligence Systems Solutions, Inc., App. No. 2013-1131 (Fed. Cir. Nov. 8, 2013) not only highlights that the Federal Circuit treats such language as limiting but it also raises some questions about apparatus claims that recite a claim element as “configured to [achieve a particular result].”
The Federal Circuit panel merely issued a Rule 36 judgment.; however, you can review the relevant district court order [here] for more background. An example of a claim at issue in the case was claim 1 of the ‘367 patent:
1. A data visualization system comprising . . . a contour generator configured to generate and display one or more contour lines at least partly around each data point or group of data points, each contour line representing data values that are less than the data value[] of the data point[] around which the contour line is displayed.
The relevant discussion concerning the “configured to” language is available [here].
Some of the questions raised were:
1) Does use of the phrase “configured to [produce a particular result]” in an apparatus claim require that the result be produced every time the apparatus is used rather than just some of the time?
2) Does the case law that addresses claims using the phrase “capable of” apply to claims that recite “configured to?” For example, does the Finjan case apply to “configured to” claims.
At one point during the oral argument, the appellant mentioned a district court case from August concerning Versata. Apparently the judge in that case treated “configured to” language and “capable of” language differently. I wasn’t able to locate a link to the Versata opinion.
For an interesting discussion of functional claiming from a prosecution perspective see “Functional Claiming and Functional Disclosure,” 6th Annual Advanced Patent Law Institute, January 20-21, 2011, Alexandria, VA by Bradley L. Wright [Link].
There are some interesting patent law conferences scheduled for the upcoming months — although they’re all a bit geographically counterintuitive:
Berkeley/Stanford 14th Annual Advanced Patent Law Institute, December 12th and 13th in East Palo Alto, California [Link].
UT Law 9th Annual Advanced Patent Law Institute, January 23rd and 24th in Alexandria, Virginia [Link].
University of Akron Naples Mid-Winter Patent Law Experts Conference, February 11th, 2014 in Naples, Florida [Link].
In the recent oral argument of Finn v. Rea, App. No. 2012-1635 (Fed. Cir. Oct. 16, 2013) a panel of the Federal Circuit once again dealt with a written description issue. The panel confronted the tension in the court’s case law between cases like In re Huston, 308 F.3d 1267, 1277 (Fed. Cir.2002) which states that for written description:
“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed” (citing Lockwood v. American Airlines, 107 F.3d at 1571-72 (Fed. Cir. 1997)
and cases like Nazomi Communications, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed.Cir.2005) which was cited by the court in Philips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005)(en banc) and noted that for purposes of claim construction claims may embrace “different subject matter than is illustrated in the specific embodiments in the specification.”
Judge Taranto framed the question this way [Listen], while Judge Prost asked where the line should be drawn in this way [Listen].
Judge Taranto also noted that in the past he had tried to think of written description by asking whether the difference between what was originally described and what is now claimed raises any non-trivial technical issues that somebody would have to solve: [Listen].
You can listen to the entire oral argument here: [Listen].
You can read the court’s Rule 36 Judgment here: [Read].
The Supreme Court has now released the audio from the oral argument that took place earlier this week in Medtronic, Inc. v. Boston Scientific Corp. You can listen to the audio [here].
The Supreme Court of the United States heard oral argument today in the case of Medtronic, Inc. v. Boston Scientific Corp. You can review the transcript of the oral argument here: [Transcript].
In the recent oral argument of Laube v. Rea, a panel of the Federal Circuit was trying to determine whether a patent specification had the degree of specificity required to satisfy the written description requirement for a claim that was not disclosed as a single embodiment in the specification. The claim at issue required a “spring clip” which was illustrated in one embodiment and a “side plate” which was illustrated in a different embodiment. The panel wanted to know what degree of specificity short of an in haec verba description would satisfy the written description standard. [Listen]
The patent owner noted that the specification included standard boilerplate language that indicated pieces could be mixed and matched. I found it curious that the panel seemed willing to discount that boilerplate language due to the fact that such language appears in most patents: [Listen].
Having identified an interesting issue with respect to written description and having noted that the Federal Circuit’s decisions don’t necessarily provide a coherent and useful test to resolve the issue at hand, the panel promptly issued a Rule 36 judgment: [Opinion].
You can listen to the entire oral argument here: [Oral Argument].
At the beginning of each Supreme Court term, the Court releases the recordings of the announcements of Court decisions from the previous term. Here is the announcement from back in June of the decision in Ass’n for Molecular Pathology v. Myriad, 133 S. Ct. 2107 (2013): [Listen].
Patent prosecutors are familiar with MPEP sections 2143.01 (V) and 2143.01(VI). Those sections recite:
2143.01 (V.) THE PROPOSED MODIFICATION CANNOT RENDER THE PRIOR ART UNSATISFACTORY FOR ITS INTENDED PURPOSE
If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) (Claimed device was a blood filter assembly for use during medical procedures wherein both the inlet and outlet for the blood were located at the bottom end of the filter assembly, and wherein a gas vent was present at the top of the filter assembly. The prior art reference taught a liquid strainer for removing dirt and water from gasoline and other light oils wherein the inlet and outlet were at the top of the device, and wherein a pet-cock (stopcock) was located at the bottom of the device for periodically removing the collected dirt and water. The reference further taught that the separation is assisted by gravity. The Board concluded the claims were prima facie obvious, reasoning that it would have been obvious to turn the reference device upside down. The court reversed, finding that if the prior art device was turned upside down it would be inoperable for its intended purpose because the gasoline to be filtered would be trapped at the top, the water and heavier oils sought to be separated would flow out of the outlet instead of the purified gasoline, and the screen would become clogged.).
“Although statements limiting the function or capability of a prior art device require fair consideration, simplicity of the prior art is rarely a characteristic that weighs against obviousness of a more complicated device with added function.” In re Dance, 160 F.3d 1339, 1344, 48 USPQ2d 1635, 1638 (Fed. Cir. 1998) (Court held that claimed catheter for removing obstruction in blood vessels would have been obvious in view of a first reference which taught all of the claimed elements except for a “means for recovering fluid and debris” in combination with a second reference describing a catheter including that means. The court agreed that the first reference, which stressed simplicity of structure and taught emulsification of the debris, did not teach away from the addition of a channel for the recovery of the debris.).
2143.01 (VI.) THE PROPOSED MODIFICATION CANNOT CHANGE THE PRINCIPLE OF OPERATION OF A REFERENCE
If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959) (Claims were directed to an oil seal comprising a bore engaging portion with outwardly biased resilient spring fingers inserted in a resilient sealing member. The primary reference relied upon in a rejection based on a combination of references disclosed an oil seal wherein the bore engaging portion was reinforced by a cylindrical sheet metal casing. Patentee taught the device required rigidity for operation, whereas the claimed invention required resiliency. The court reversed the rejection holding the “suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principle under which the [primary reference] construction was designed to operate.” 270 F.2d at 813, 123 USPQ at 352.).
Surprisingly, the issues of (1) whether a proposed combination of references renders one of the references inoperable for its intended purpose and (2) whether a proposed combination of references changes the principle of operation of a reference don’t arise that often at oral argument at the Federal Circuit. In the recent Rambus v. Rea case, however, these issues were discussed. You can listen to the discussion here: [Listen].
You can listen to the entire oral argument here: [Oral Argument].
You can read the court’s opinion here: [Opinion].