Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility? Williamson v. Citrix Online Makes One Wonder: Part 2 of a 2 Part Series – Possible Strategies
By Michael Stein, Stein IP LLC
September 2, 2015
This is part 2 of a 2 part series addressing the growing use of 112, 6th and 2nd paragraphs to invalidate claims in the USPTO and the courts, and what the standards are for implementation and application of these sections of 35 USC. Part 2 explores possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.
So, what is a patent attorney to do when faced with the difficult task of preparing a new patent application, whether from scratch or based upon foreign priority, and hopes to avoid either having limitations interpreted as being means plus function limitations under 112, 6th paragraph or being declared indefinite under 112, 2nd paragraph (remember, for the purposes of this article, the pre-AIA references to the 35 USC are being used for the sake of simplicity, but the same holds true under post-AIA situations since the language of the relevant sections has not changed)?
The following are some tips which I believe will increase the chances of running into problems with 112, 6th paragraph and 112, 2nd paragraph, and also hopefully 101 as well. One important consideration is that the specification as originally filed be as detailed, complete and definite as possible, since one cannot amend the specification significantly after filing to overcome any claims rejections. There is no magic language that can be used as a safe harbor, as the USPTO has clearly indicated in their webinars on 101 (and thus by extension to 112). So here it goes, in no particular order.
- In describing the invention, try to avoid using words like “device,” “computing element,” “unit,” “portion,” or even “for …ing” as examiners and courts are increasingly unpredictable in their applications of § 112, 6th paragraph analysis, more frequently treating such words as “nonce” words. Instead of saying “processing unit” or “processing module,” simple recite a “processor,” for example
- Use “configured to” or “adapted to” if the structure is questionable. Such language assists in making an argument that the limitation has structure and is not purely functional.
- Integrate structural limitations with the functional limitations in the claims. Sometimes a little more in the claim, to provide some real structure will actually broaden the scope of your claim since the people performing claim construction will not have to go to the specification to determine the breadth and scope of the disclosed structure and its equivalents. Once a claim constructor goes to the specification, it is very difficult to limit the extent to which the specification is relied upon and the owner of the patent does not want to be limited to only the specific embodiments disclosed in the specification when asserting infringement.
- Be careful about language like “determining,” “calculating,” “comparing,” etc., with no explanation as to what parameters are being used and how these activities are being accomplished. Provide specific examples in the specification where possible and practicable to clearly explain the algorithm being used. See, for example, Ibormeith IP v. Mercedes-Benz, 732 F.3d 1376 (Fed. Cir. 2013) where the court held that there was not sufficient structure for “computational means for weighting the operational model according to the time of deay.. and for deriving, from the weighted mode, driver or operator sleepiness condition and producing an output determined thereby”, when a description of an algorithm that places no limitations on how values are calculated, combined, or weighted is insufficient to make the bounds of the claim understandable.
- For the drawings, do not use simplistic line charts (e.g., a box with a few smaller boxes inside to represent a computer) or flow charts, but use complex and layered charts. Provide a detailed hardware diagram, and flowcharts showing the specifics of what is happening. Relate the hardware to the functionality, such as what gets passed and from where to where. For algorithms, consider having separate diagrams showing the distinct operations of each step in the most general flowchart(s), so that even if the most basic algorithm is determined to be a means plus function limitation, one can argue that the more detailed diagrams and corresponding description provide sufficient structure, and one can also argue that the more detailed diagrams and corresponding description are not merely abstract ideas with nothing more should a 101 rejection be raised.
I have no doubt that there are many other techniques to address the growing use of 112, 6ht and 2nd paragraphs, and different people have different viewpoints. Not even the judges on the en banc Federal Circuit all agreed when 112, 6th should be used, and in what manner, with the dissent indicating that it will be very difficult in the future to assess the scope of claims in the future based upon the majority’s reasoning. If they cannot agree, then it cannot be so simple for us practitioners. We can only do what we feel is best for our clients.
If you have any other techniques to avoid limitations being interpreted as means plus function under 112, 6th paragraph, or to ensure that there is sufficient structure in the specification under 112, 2nd paragraph, please let us know.