One Method Feature in Apparatus Claim Destroys Validity
Rembrandt Data Technologies, LP v. AOL LLC et al., No. 08-cv-1009 (E.D. Va., August 2, 2009, order) (B. Lee)
Notorious NPE Rembrandt sued AOL and a host of other companies over patents relating to dial-up modem technology. At the summary judgment phase, defendants moved the court to find that one of the claims was invalid under section 112 on the grounds that it is "fatally flawed" for mixing a method and apparatus claim in relevant part, the claim reads:
A data transmitting device for transmitting signals corresponding to an incoming stream of bits, comprising:
first buffer means for . . .
fractional encoding means for . . .
second buffer means for . . .
trellis encoding means for trellis encoding the frames from said second
buffer means; and
transmitting the trellis encoded frames.
Both parties admitted that the claim contained an error. However, Rembrandt relied in part on the Fed. Cir. ruling that "[a] district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification; and (2) the prosecution history does not suggest a different interpretation of the claims." Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003).
Rembrandt argued the claim should be edited to change "transmitting the trellis encoded frames" to "a transmitter section for transmitting the trellis encoded frames." According to Rembrandt, the edit is justified "because the error is so plain and known by anyone in the field there can be no question that the claim as written includes an obvious error."
Defendants argued that the proposed edit "would significantly alter the meaning of one element, changing it from a method step to an apparatus step. This is beyond the ordinary types of corrections allowed by courts . . . there is no evidence to support Rembrandt's assertion that a 'typographical' error occurred. The application claim . . . issued in the identical form as the applicants submitted it to the Patent Office. [The claim], therefore, was invalid from [the] day the application was filed."
The district court agreed with the defendants:
Rembrandt has failed to demonstrate that the language at issue is anything other than what it submitted to the Patent and Trademark Office. Edits by district courts are generally made in instances where the change is extremely minor and/or obvious. This is neither. The impact of the change proposed by Rembrandt would have a colossal effect, and is far from minor or obvious. The Court therefore grants Canon's Motion for Summary Judgment with respect to the '236 claim based on the invalidity of the claims stemming from the mixture of apparatus and method claims because it would be improper for the Court to undertake the revision proposed by Rembrandt as it is not minor, obvious, free from reasonable debate or evident from the prosecution history.
Read/download the order here (link).
NOTE: There was also an interesting issue regarding infringement, where the accused modems were capable of operating in an infringing manner, but middleware prevented them from doing so during normal operation. The district court followed the Federal Circuit's Telemac Cellular ruling to hold that "the fact that an accused 'device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement.'"
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I've been saying and saying and saying "do not mix your claim types".
It was clearly a mistake in the claims. What do you not get about that?
That "mistake" shows up all the time lately. What do you not get about that?
It isn't a mistake, it is a result of the careless drafting practices that pervade your profession at the moment and cause your brethern to intentionally submit such nonsense.
6 sounds like our President when he learns something new, "Like I've always said... blah, blah."
Well, at least he has learned this one thing, even if he is a little later than most. He is correct. And a mistake in the claims (like this) means the claims are invalid under 35 USC 112 any way you slice it.
(Attorneys who rely on the presumption of validity to rectify their claim mistakes are like the managers of GM who rely on bailouts - if you can't produce, posture!)
Careless claim drafting, and careless allowance - the epitome of a large segment of the patent system in the U.S. today.
P.S. A good (quick, cheap) way to determine if a claim error is just a "mistake" which can be corrected without reissue/reexam: can it be corrected by Certificate of Correction? If yes, that's prima facie evidence of a mistake that does not impact claim validity (and the claim will thereafter be construed in light of the Certificate of Correction without penalty). Attorneys have been known to try to change claim scope (or material claim errors) by CoC - but the PTO has agency guidelines in place to prevent such material changes by CoC.
This was an obvious drafting mistake "transmitting the trellis encoded frames" clearly was mean to be "transmitting means for transmitting the trellis encoded frames".
It is very common to draft a method claim and turn it into means claims by merely rewording the action term into means for and leaving the rest of the claim the same. I'm sure a review of all the filed claim would show such a pattern.
The inventor should have had affidavits subimitted (or testimony presented) from patent drafters as to how patent claims are written.
"transmitting means"
No it didn't - see claims 7 and 8 which recites, "said transmitting section". So obviously the drafting mistake was not as clear as you thought. :-)
When a patent has an error, there are legal avenues to correct it... rather than trying to assert a patent with an error.
"It isn't a mistake, it is a result of the careless drafting practices that pervade your profession at the moment and cause your brethern to intentionally submit such nonsense."
And the allowance of the claim was a mistake that is a result of the careless examination practices of your profession and cause your brethren to intentionally allow such nonsense.
If you think drafting claims is so easy, feel free to abandon the comfy confines of yo' gubment job and come on out into the real world.
You know what they say: those who can...
"It is very common to draft a method claim and turn it into means claims by merely rewording the action term into means for and leaving the rest of the claim the same."
Funny enough that's kinda what I was thinking might have happened.
That bs needs to stop. And here is as good a reason as any for it to.
6
"And the allowance of the claim was a mistake that is a result of the careless examination practices of your profession and cause your brethren to intentionally allow such nonsense."
I agree.
On the other hand, wouldn't it be awesome if they had the foresight to allow it just so it would result in this fiasco?
Examiners don't "know" this kind of "lawl". Or at least very few do.
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