The Federal Circuit upheld the invalidity of claims of U.S. Patent No. 7,003,500 under 35 U.S.C. § 112, 1st paragraph (pre-America Invents Act) for failure to provide an adequate written description of patent claim terms added by amendment well after the original patent application was filed. Driessen v. Sony Music Entertainment, No. 2015-2050 (Fed. Cir. Feb 10, 2016) (per curiam). The court also upheld the invalidity for indefiniteness of the certain means-plus-function claim terms under 35 U.S.C. § 112, 2nd paragraph. Although the Court designated its decision, which rejected the appeal of pro se plaintiffs, non-precedential, the decision nonetheless provides lessons for patent drafters.
Claim 10 of the ’500 patent recited in part:
A method of merchandise transfer on a computer network comprising at least one buyer computer on a network for operation by a user desiring to buy at least one product and at least one selling computer on said network operating for a purpose to sell said product, the method comprising the steps of:
. . .
sending a payment message as a response to said in person transaction either directly or through other computers on said network to said selling computer on said network;
causing an authorization message to be created on said selling computer in or as a result of said payment message that comprises at least said specification of said product and authentication based on cryptographic key(s), said selling computer being programmed to receive said authorization message for verification of said authentication;
. . .
At issue were the terms “selling computer,” “payment message,” and “authorization message,” these terms having been “added . . . by amendment more than four years after filing the original application that became the ’500 patent.” Two other patents-in-suit, with “virtually the same specification,” also included claims that used these terms.
The Court noted that “the terms ‘selling computer,’ ‘payment message,’ and ‘authorization message’ are not present anywhere in the specification or original provisional application.” Further, the Court rejected the patentee’s argument “that because the words ‘payment,’ ‘message,’ ‘authorization,’ and ‘computer’ appear individually numerous times in the specification, adequate written description for the terms ‘selling computer,’ ‘payment message,’ and ‘authorization message’ is provided.” The court explained that “this argument misunderstands the written description requirement.” Merely showing that these words were present in the Specification in isolation was insufficient to show that the patentee had possession of the “selling computer,” “payment message,” and “authorization message,” at the time the application was filed. Nor were these concepts, as the district court correctly noted, implicitly present in the Specification’s disclosure of “the distinct concepts of ‘secure web transactions’ and ‘public key infrastructure.’”
As noted above, the Court also held that certain means-plus-function claim terms were unsupported in the Specification, and thus rendered the claims indefinite. Indefiniteness of means-plus-function claim terms has been covered elsewhere on this blog, especially with regard to last years case of Williamson v. Citrix Online, LLC.
The lessons for a patent drafter and prosecutor may seem clear, but are worth repeating. Simply because an examiner does not issue a new matter rejection under 35 U.S.C. § 112 when claim terms are added by amendment does not mean that a court (or the PTAB) will later agree that the new claim terms are not new matter. One way to avoid this problem may be to explain in remarks accompanying amendments how the new claim terms are supported in the Specification, which many, but not all, practitioners often do. This accomplishes several things. First, it forces the prosecutor to consider the adequacy of support for claim amendments. Second, it at least implicitly suggests that the patent examiner has blessed the applicant’s explanation of support. And third, you will provide a road map for litigators trying to enforce your patent. To this last point, many practitioners, understandably, want to avoid providing this roadmap, and possibly limiting statements, to anyone who might attack a patent, and you will have to weigh this tradeoff.