NUMERICAL LIMITS, ENABLEMENT AND CLAIM SCOPE

TROUBLE ABOVE AND BELOW

AIPLA

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AIPLA MID-WINTER INSTITUTEIP PRACTICE IN JAPAN COMMITTEE PRE-MEETING TAMPA,

FLORIDAJAN 29-30, 2012

NANDA ALAPATIWOMBLE CARLYLE, TYSONS CORNER, VA

NALAPATI@WCSR.COM

General ProblemNumerical Limits, Enablement and Claim

ScopeExamples of one-sided numerical limits in claims:

“such that the surface roughness is less than Ra = 0.2 nm”“causes a change in absorption at 545 nm that is greater than 25%”other key words:

“at least”, “at most”, “no less than”, “no greater than”, etc.

Questions:What scope do you get?What enablement issues are there?How do you avoid trouble?

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Ancient History on Numerical Limitations and Enablement

In re Fisher (CCPA 1970)• Claim: An ACTH preparation containing at least 1.0 IU of ACTH

per mg and (other ingredients)• Disclosure: Method of making preparation; examples 1.11 to 2.30

IU• Prior Art – 0.5 IU per mg• CCPA – 112, 1 enablement issue: • 35 USC 112,1 “requires that the scope of the claims must bear a reasonable correlation to the scope

of enablement provided by the specification to persons of ordinary skill in the art”• “In cases involving predictable factors, such as mechanical or electrical elements, a single

embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws”

• In cases involving unpredictable factors, such as most chemical reactions and physiological activity, the scope of enablement obviously varies inversely with the degree of unpredictability of the factors involved.

• Here, enablement only up to 2.3 IU, so a claim stating “at least 1.0 IU is not enabled

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Ancient History on Numerical Limitations and Adequate Written Description

In re Wertheim (CCPA 1976) (instant coffee)

Original Swiss Specification:range of "25%- 60%” coffee solids, prior to foamingspecific examples of "36%" and "50%."

Claims on filing US application: claim 1 - "at least 35%“claim 2 - between "25%- 60%”

CCPA: ADW has to do with “possession of invention”"at least" has no upper limit and causes the claim to read literally on embodiments

outside the "25% to 60%" range, no ADWa limitation to "between 35% and 60%" meets ADW requirement.

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More Recent History on Enablement and Claim Construction (1)

Liebel-Flarsheim v. Medrad (I) – (Fed. Cir. 2004)During prosecution, Patentee removes claimed “jacket” after seeing D’s syringeSpecification only shows ‘jacketed” syringesDt. Ct. construes claims to require jacket & grants D’s SJ motion on non-infringementFed Cir reverses & remands – claims say nothing about a jacket; we’re not saying anything about whether the claims are enabled

Liebel-Flarsheim v. Medrad (II) – (Fed. Cir. 2004)Dt. Ct. says claims are not enabledFed Cir Affirms

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Even More Recent History on Enablement and

Claim Construction (2)Automotive Tech v. (every car mfg & airbag sensor mfg) (Fed. Cir. 2007)

Technology: sensors for side impact crash used to trigger a side airbag Disclosure: detailed design of mechanical sensors & mentions electronic Claims: MPF – “means responsive to motion…:Claim Construction:

Patentee: MPF -- claim element covers both kinds of sensorsDt. Ct. – Agreed

Defendant Delphi files SJ on 112,1 enablement invalidityPatentee – okay if only one kind of sensor is enabledDt. Ct. -- must enable full scope of claim; electronic sensor not

enabledFed Cir: Affirms; claims are invalid under 112,1 for lack of enablement

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One More Data Point on Claim Construction

Gillette v. Energizer Holdings (Fed. Cir. 2005)Accused device: Razor with four blades (Energizer’s quattro”)Gillette’s patent

• Razor comprising a “group of three blades”• Quattro has group of three blades + another blade

Fed Cir agrees with Gillette – “comprising” is open-endedN.B. – Gillette did NOT raise issue of enablement (may not mattered anyway)

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Magsil v. Hitachi 687 F.3d 1377 (Fed Cir 2012)

USP 5,629,922 – Electron Tunneling Device Using Ferromagnetic Thin

Films

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USP 5,629,922 – (cont’d)

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USP 5,629,922 – (cont’d)

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USP 5,629,922 – (cont’d)

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USP 5,629,922 – (cont’d)

Claim 1. A device forming a junction having a resistance comprising:

a first electrode having a first magnetization direction,

a second electrode having a second magnetization direction, and

an electrical insulator between the first and the second electrodes, wherein

applying a small magnitude of electromagnetic energy to the junction reverses at least one of the magnetization directions and causes a change in the resistance by at least 10% at room temperature.

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‘922 Patent Disclosure and File History

Prior art- Best Improvement was 2.6 %

Examples- Best example was 11.8%

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‘922 Litigation (1)

Patentee “wins” claim construction- Dt. Ct - No upper bound on scope of claim re: resistance

change

Inventor Discovery- We had no idea how to reach 100% change in resistance

at the time of the invention- But, even 604% (one accused product) or even 1000%

change is within scope of claims- (In reality it took 12 years before 100% resistance

change was realized)

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‘922 Litigation (2)

Defendant’s Argument- Look what the inventors said!- Claim invalid under 112,1; see In re Fisher

Patentee’s Argument- This is an open ended claim “at least 10%”; “comprising”

language- See Gillette v. Energizer Holdings

Dt. Ct.- Invalid under 112,1 for lacking enablement

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‘922 Litigation (3)

Fed Cir Affirms Dt. Ct. “The named inventors were not able to achieve even a 20% change a year after filing the application in 1995, and 604% junctions were not achieved until 2008.”

“[t]his field of art has advanced vastly after the filing of the claimed invention. The specification containing these broad claims, however, does not contain sufficient disclosure to present even a remote possibility that an ordinarily skilled artisan could have achieved the modern dimensions of this art. Thus, the specification (only) enabled a marginal advance over the prior art”

Claiming open-ended numerical limitations is not the same as open-ended “comprising” claims which encompass additional elements (as in Energizer”)

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Lessons for Patentees

You can get a broad claim allowed, but Fed Cir will require enablement of what you have claimed

Consider dependent claims with ranges- e.g. – “wherein the change is between 10% and 12%, nested ranges

Consider alternative independent claims with practical functional limitations (be sure to put in Adequate Written Description)

- e.g. “…changes the resistance by an amount sufficient to be reliably detectable and not within a margin of measurement error.”

Do Not Fall into Claim Construction/Enablement Trap- Stick to language of claim- Properly prepare your witnesses

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Lessons for Defendants

Scenario -- Your device, product method has numerical limitation well beyond examples in patent

- May be multidimensional w/multiple numerical ranges, e.g., density > x and hardness > y

Keep in mind that claimed numerical value may be a ceiling- e.g., if claim says “having a surface roughness Ra < 2 nm; maybe you

achieved a surface roughness Ra < 0.1 nm using different technology Build the Claim Construction /Enablement Trap Inventor & Expert Discovery

- See what they feel is encompassed by the numerical limitation- N.B./Caution – Fed Cir. has sais that inventor’s opinion on 112,1 issues

is to be given little weight

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Conclusion

• Fed Cir is NOT amused by Patentee “overclaiming” or unreasonably expanding scope of numerical limitation

• Patentees need to be careful what they ask for during prosecution and later during claim construction

• May be okay to argue that claim is very broad in licensing negotiation; but not okay in litigation

• Defendants should always check to see if the claimed numerical limitation provides a foundation for a 112, 1 Affirmative Defense or Counterclaim

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The End

Questions?Thoughts?

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