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Case B
Writing the Specification Without Providing Sufficient Support for the Claims
(If you think from the title that the message here centers on the enablement issue (35 USC § 112, first paragraph), read on. The issue here is so subtle that even the very experienced examiner for the case was caught off-guard.)
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The invention was a new automated teller machine (ATM), one of the components being the mechanism to receive an ATM card from a customer and then later to return it. As this component by itself was well known, the patent attorney in drafting the claim to the ATM referred to this component simply as a “means for receiving and returning an ATM card.” U.S. patent law requires that a specification of a patent indicate how to make the claimed invention. Accordingly, the patent attorney wrote in the specification that known mechanisms of this sort can be used. In the schematic of the ATM, he depicted this element as a simple box in the drawings. Indeed, this description provides enough detail as to how to make the invention, and the examiner allowed the application.
Later, when suing a competitor for patent infringement, the competitor’s attorney argued that the claims did not adequately specify which type of mechanism constitutes a “means for receiving and returning an ATM card.” There was no way to know whether the competitor’s receiving and return means was a type that should be covered by the claims.
Due to the “means for …”-type of text used to describe the mechanism, the court looked closely how the specification described the mechanism. Although the specification fulfilled the requirement to provide enough information to indicate which mechanisms might be used as the “means for receiving and returning an ATM card,” there is another requirement of patent law: claim definiteness. Read on:
Merely indicating (even correctly) that commercial mechanisms may be used and depicting the mechanism as a box in the drawings does not fulfill the requirement to clearly indicate the boundary of the claim coverage. That is, out of all the known mechanisms that could be used for the stated purpose, there was no way of knowing which mechanisms were covered by the claim and which were not.
Because boundaries of the claim were not clear, the court held the claim invalid as indefinite. As a result, the competitor was free to continue exploiting the invention without payment of royalties to the inventor.
Later, when suing a competitor for patent infringement, the competitor’s attorney argued that the claims did not adequately specify which type of mechanism constitutes a “means for receiving and returning an ATM card.” There was no way to know whether the competitor’s receiving and return means was a type that should be covered by the claims.
Due to the “means for …”-type of text used to describe the mechanism, the court looked closely how the specification described the mechanism. Although the specification fulfilled the requirement to provide enough information to indicate which mechanisms might be used as the “means for receiving and returning an ATM card,” there is another requirement of patent law: claim definiteness. Read on:
Merely indicating (even correctly) that commercial mechanisms may be used and depicting the mechanism as a box in the drawings does not fulfill the requirement to clearly indicate the boundary of the claim coverage. That is, out of all the known mechanisms that could be used for the stated purpose, there was no way of knowing which mechanisms were covered by the claim and which were not.
Because boundaries of the claim were not clear, the court held the claim invalid as indefinite. As a result, the competitor was free to continue exploiting the invention without payment of royalties to the inventor.
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This example comes from a
court opinion, which I had to study for a while, to really understand why the court
invalidated the asserted claim. A
court’s rationale is not always quickly understood by others, but I invest the
effort to understand so that I can advise my clients appropriately.
If it interests you to also learn from the mistakes of others, I welcome you to contact me. After a brief telephone discussion, we can decide whether it would be worthwhile to meet to discuss if your claims might be at risk of invalidation. If necessary, we could then discuss how to correct the problems before it is too late.
If it interests you to also learn from the mistakes of others, I welcome you to contact me. After a brief telephone discussion, we can decide whether it would be worthwhile to meet to discuss if your claims might be at risk of invalidation. If necessary, we could then discuss how to correct the problems before it is too late.