For the unwary, there are traps that can exist in drafting patent application. Five traps relate to inventorship, best mode disclosure, distinctly claiming, in light of the specification, and dependent claims.

1. DRAFTING PATENT APPLICATIONS TO AVOID LITIGATION TRAPS
Michael A. Shimokaji
OVERVIEW
0* DIVERGENT GOALS OF PROSECUTION & LITIGATION
OVERVIEW
1* TRAP #1 - INVENTORSHIP
2* TRAP #2 – BEST MODE DISCLOSURE
3* TRAP #3 – DISTINCLY CLAIMING
4* TRAP #4 – IN LIGHT OF SPECIFICATION
5* TRAP #5 – DEPENDENT CLAIMS

2. DIVERGENT GOALS OF PROSECUTION AND LITIGATION
6* What Works for One Does Not Always Work for the Other
7* Divergent goals create litigation traps for the patent prosecutor
8* Prosecution Goals
9* Litigation Goals
DIVERGENT GOALS OF PROSECUTION AND LITIGATION
10* Prosecution Goals
11* Cost may be of primary importance
12* Minimize inventor burden
13* Read the prior art narrowly
14* Client receives patent

3. DIVERGENT GOALS OF PROSECUTION AND LITIGATION
15* Plaintiff’s Litigation Goals
16* Cost is secondary
17* Construe the prior art narrowly
18* Construe the claims broadly
19* Find validity and infringement
DIVERGENT GOALS OF PROSECUTION AND LITIGATION
20* Defendant’s Litigation Goals
21* Cost is secondary
22* Construe the prior art broadly
23* Construe the claims narrowly
24* Find invalidity and non-infringement

4. TRAP #1 - INVENTORSHIP
25* Is it Simply Who is Listed on the Invention Record?
26* 35 U.S.C. Section 116 requirements
27* Internal collaborative work
28* External collaborative work
TRAP #1 - INVENTORSHIP
29* 35 U.S.C. Section 116 Requirements
30* “When an invention is made by two or more persons jointly, they
SHALL apply for patent jointly”
TRAP #1 - INVENTORSHIP
31* 35 U.S.C. Section 116 Requirements

5. 32* May apply jointly even though
(1) they did not physically work together or at the same time
(2) each did not make the same type or amount of contribution, or
(3) each did not make a contribution to every patent claim
TRAP #1 - INVENTORSHIP
33* 35 U.S.C. Section 116 Requirements
34* “Determining ‘inventorship’ is nothing more than determining who
conceived the subject matter at issue.” Sewall v. Walters, 21 F.3d 411,
416 (Fed. Cir. 1994)
TRAP #1 - INVENTORSHIP
35* 35 U.S.C. Section 116 Requirements
36* “Conception exists when a definite and permanent idea of an
operative invention, including every feature of the subject matter sought
to be patented, is known.” Sewell at 415

6. TRAP #1 - INVENTORSHIP
37* 35 U.S.C. Section 116 Requirements
38* Conception is complete when one of ordinary skill in the art could
construct the apparatus without unduly extensive research or
experimentation.” Sewell at 415
TRAP #1 - INVENTORSHIP
39* What Can Happen During Prosecution
40* Internal Collaborative Work
41* External Collaborative Work
TRAP #1 - INVENTORSHIP
42* Internal Collaborative Work

7. 43* Desire to recognize all team members
44* Invention record is filled out by engineers
TRAP #1 - INVENTORSHIP
45* External Collaborative Work
46* Each company wants to be recognized as the primary contributor
47* Each company wants their team member to be the lead inventor
named on the patent
48* Each company wants the maximum numbers of inventors
representing their respective company
TRAP #1 - INVENTORSHIP
49* What Can Happen in Litigation
50* Who was improperly named
51* Who was omitted

8. TRAP #1 - INVENTORSHIP
52* How to Avoid Trap #1
53* At completion of patent application
54* Prepare claim/inventor chart
55* Confirm contribution to at least one claim
TRAP #2 – BEST MODE
56* Best Mode According to the Invention Record?
57* 35 U.S.C. Section 112 ¶ 1 requirements
58* Obscuring the best mode

9. TRAP #2 – BEST MODE
59* 35 U.S.C. Section 112 ¶1 Requirements
60* patent must “set forth the best mode contemplated by the inventor
of carrying out his invention”
TRAP #2 – BEST MODE
61* Best Mode Section 112 ¶1 Requirements
62* first of two prong inquiry
63* whether, at the time the inventor filed his patent application, he
knew of a mode of practicing his claimed invention that he considered to
be better than any other. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d
923, 927-28 (Fed. Cir. 1990)

10. TRAP #2 – BEST MODE
64* Best Mode Section 112 ¶1 Requirements
65* second of two prong inquiry
66* is the disclosure adequate to enable one skilled in the art to
practice the best mode or, in other words, has the inventor ‘concealed’ his
preferred mode from the ‘public’. Chemcast
TRAP #2 – BEST MODE
67* What Can Happen During Prosecution
68* Obscuring the best mode
69* Best mode in invention disclosure versus patent application
TRAP #2 – BEST MODE

11. 70* Obscuring the Best Mode
71* Intentional concealment is not required to violate the best mode
requirement. United States Gypsum Co. v. National Gypsum Co., 74 3d
1209, 1215 (Fed. Cir. 1996)
72* Disclosing only a useful mode to hide the best mode
TRAP #2 – BEST MODE
73* Best Mode in Written Disclosure Versus Application
74* Best mode determined at time of filing. Eli Lilly & Co. v. Barr Labs.,
Inc., 251 F.3d 955, 963 (Fed. Cir. 2001)
75* Improvements made during application preparation
TRAP #2 – BEST MODE
76* What Can Happen in Litigation
77* What experimental details omitted

12. 78* What experimental results omitted
TRAP #2 – BEST MODE
79* How to Avoid Trap #2
80* At completion of patent application
81* Identify points of novelty in claims
82* Confirm best mode disclosure in specification against novelty
TRAP #3 – DISTINCTLY CLAIMING
83* Claiming Broadly or Making it Indefinite
84* 35 U.S.C. Section 112 ¶ 2 requirements
85* Words in claims versus specification

13. TRAP #3 – DISTINCTLY CLAIMING
86* 35 U.S.C. Section 112 ¶ 2 Requirements
87* “one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention”
13
TRAP #3 – DISTINCTLY CLAIMING
88* 35 U.S.C. Section 112 ¶ 2 Requirements
89* Indefinitenes “depends on whether those skilled in the art would
understand the scope of the claim when the claim is read in light of the
specification" Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d
1374, 1378 (Fed. Cir. 1999)

14. TRAP #3 – DISTINCTLY CLAIMING
90* 35 U.S.C. Section 112 ¶ 2 Requirements
91* Claim terms are presumed to have the ordinary and customary
meanings attributed to them by those of ordinary skill in the art. Sunrace
Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302 (Fed. Cir. 2003)
TRAP #3 – DISTINCTLY CLAIMING
92* 35 U.S.C. Section 112 ¶ 2 Requirements
93* If a disputed term has “no previous meaning to those of ordinary
skill in the prior art, its meaning, then, must be found (elsewhere) in the
patent.” J.T. Eatn & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1570
(Fed. Cir. 1997)
TRAP #3 – DISTINCTLY CLAIMING
94* 35 U.S.C. Section 112 ¶ 2 Requirements

15. 95* Difficult issue of claim construction does make claim indefinite;
there is no requirement that claims be plain on their face. Morton Int’l v.
Cardinal Chemical Co., 5 F.3d 1464 (Fed. Cir. 1993)
TRAP #3 – DISTINCTLY CLAIMING
96* What Can Happen During Prosecution
97* Words in Claims versus Specification
TRAP #3 – DISTINCTLY CLAIMING
98* Words in Claims versus Specification
99* Same words
100* Different words

16. TRAP #3 – DISTINCTLY CLAIMING
101* Same Words in Claims & Specification
102* “Digital detector” is not indefinite when defined in specification.
Personalized Media Communications, LLC v. U.S. Int'l Trade Comm'n,
161 F.3d 696 (Fed. Cir. 1998)
TRAP #3 – DISTINCTLY CLAIMING
103* Different Words in Claims & Specification
104* Step of “comparing” not explained in specification and indefinite.
Union Pac. Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684,
692 (Fed. Cir. 2001)
TRAP #3 – DISTINCTLY CLAIMING
105* Different Words in Claims & Specification
106* Another view - rejected defense of indefiniteness where claim term
“original unidentified mass” not in specification but described in
prosecution history. ALL Dental Prodx v. Advantage Dental Products, 309.
F.3d 774, 779 (Fed. Cir. 2002)

17. TRAP #3 – DISTINCTLY CLAIMING
107* What Can Happen in Litigation
108* Pick a dictionary to put spin on “ordinary meaning”
109* Pick an expert to put spin on “term of art”
TRAP #3 – DISTINCTLY CLAIMING
110* How to Avoid Trap #3
111* Consistent use of words in claims and specification
112* Define words that represent points of novelty
TRAP #4 – LIMITATION OF SPECIFICATION
113* Claims Read in Light of the Specification

18. 114* “The problem is to interpret claims 'in view of the specification'
without unnecessarily importing limitations from the specification into the
claims.”E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003)
TRAP #4 – LIMITATION OF SPECIFICATION
115* What Can Happen in Prosecution
116* Preferred or exemplary embodiments
117* Test examples
118* Necessary or useful features
TRAP #4 – LIMITATION OF SPECIFICATION
119* Preferred or Exemplary Embodiments
120* Even though there was only one disclosed embodiment, it was
improper to read a specific order of steps into method claims. Altiris Inc.
v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003)

19. TRAP #4 – LIMITATION OF SPECIFICATION
121* What Can Happen in Litigation
122* Embodiment used to limit claim scope
123* Test example used to limit claim scope
124* Feature used to limit claim scope
TRAP #4 – LIMITATION OF SPECIFICATION
125* How to Avoid Trap #4
126* Describe embodiments as being exemplary rather than preferred
127* Describe test examples as being exemplary rather than preferred
128* Describe feature as “may” rather than “must” be used

20. TRAP #5 – DEPENDENT CLAIMS
129* Non-Infringement of Independent Claims Impacts Dependent Claims
130* Basic rule of infringement
131* Excessive reliance on dependent claims
132* Independent claims that simply build upon prior independent claims
TRAP #5 – DEPENDENT CLAIMS
133* Basic Rule of Infringement
134* “One who does not infringe an independent claim cannot infringe a
claim dependent on (and thus containing all the limitations of) that claim.”
Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9
(Fed. Cir. 1989)
TRAP #5 – DEPENDENT CLAIMS
135* What Can Happen in Prosecution

21. 136* Excessive reliance on dependent claims
137* Independent claims that simply build on prior independent claims
TRAP #5 – DEPENDENT CLAIMS
138* What Can Happen in Litigation
139* Non-infringement of one or more independent claims
140* Above results in non-infringement of dependent claims
TRAP #5 – DEPENDENT CLAIMS
141* How to Avoid Trap #5
142* More rather than fewer independent claims
143* Independent claims that each focus on a single point of novelty

22. WERE DO YOU GO FROM HERE?
144* Possible Steps
145* Prepare checklist at “completion” of application
146* Checklist contains potential litigation issues