萬國法律事務所

Dealing with Your Claims with More Cautiousness
 

By Wade Lin

Wade Lin
Patent Attorney
Patent Deputy Manager
M.S. in Molecular and Cellular Biology
wade.lin@taiwanlaw.com
 
The era that reciting the claims as broad as possible while filing and bargaining allowable scope during prosecution by gradually limiting the claims has been passed. In the past, applicants are used to ask their attorney to set up a broader claim scope even if they do know there were already some prior arts existing. Or, on the other hand, attorneys found easy to please their client by setting up a broader claim scope no matter there was existing prior arts or not. In fact, the aforesaid strategies would seriously hurt the benefits of the applicants/patentees.

In Amdocs Limited vs. Openet Telecom, Inc., the Court held that one of the Patents at issue (US 7,631,065) “does not limit the correlation to any specific hardware, nor give any detail regarding how the records are ‘correlated’ or ‘enhanced’ ”(emphasis added).  One way to recite a broader scope is to use ambiguous terms or description that is not that specific. In the wake of so many latest court decisions after Alice regarding patent-eligible subject matters, there is a higher risk that those ambiguous terms or nonspecific description would be deemed causing preemption of the judicial exceptions contained so that patent-ineligible. Some “smart” applicants/attorneys may still use a bit ambiguous terms but prepare some back-up description in the specification or dependent claims in advance for overcoming rejections may face in the future.  However, that needs careful measurement because amendments during prosecution could become a nightmare later on.

In Festo Corp. vs. Shoketsu Kinzoku Kogyo Kabushiki Co., the Court affirmed prosecution history estoppel shall raise upon any amendments made for overcoming patentability-related rejections during prosecution of the patent at issue. Prosecution history estoppel is an antagonistic tool against Doctrine of Equivalent (DOE). That said, the amendments during prosecution would inevitably cause surrender of the equivalent scope of the patent at issue and may consequently allows the accused product dodging away. It is also important to note that the Court established Foreseeability as the key element in determining what equivalents are surrendered in view of prosecution history estoppel. Briefly, upon amendments during prosecution, equivalents foreseeable at the time of the amendments shall be deemed surrendered from the Doctrine of Equivalent.

Recently, the Foreseeability element also be held in Taiwanese IP Court. In Fu-Er (pinyin name) Technology Ltd. vs. HTC Co. Ltd. and Senao International Co. Ltd, Fu-Er Technology, the exclusive licensee of Taiwanese Patent No.: I237264 titled “A Multi-Function Semi-conductor storage Device and Method for Booting a Computer Using Thereof”, sued HTC Co. Ltd. and Senao International Co. Ltd. for patent infringement. Foreseeability was a key in this litigation. It was found that claim 1 of I237264 was amended to add the following limitation for overcoming rejection during prosecution:

“said semi-conductor storage media module (1) being at least divided into two storage spaces; wherein one of the two storage spaces is for storing information relevant to said multi-function semi-conductor storage device; said storage spaces at least correspond to a memory disc; said memory disc supports at least one equipment protocol of UFI protocol, SFF8020I protocol, SFF8070I protocol, SCSI Transparent Command Set protocol, Reduced Block Commands (RBC) T10 Project1240-D protocol, ZIP disc protocol, and MO disc protocol”

In comparison, the portable devices of the accused product 1 supports MTP protocol (Media Transfer Protocol), which is an extension to the Picture Transfer Protocol. That said, MTP protocol pertains to data transfer protocol but not equipment protocol. The Plaintiff alleged that MTP protocol was constituted in 2007; therefore was not foreseeable at the time of the aforesaid amendments. However, the Court held that claim 1 was amended to limit “equipment protocols” feature but not data transfer protocols. Therefore, a MTP protocol is not an unforeseeable equivalent of equipment protocols at the time of amendments. Likewise, the SCSI Transparent Command Set protocol of accused products 2 and 3 also pertains to data transfer protocol and had surrendered in view of prosecution history estoppel. In conclusion, the Court found even if the accused products fell in the claim scope of the patent at issue under DOE, the defendants shall be deemed not infringing because prosecution history estoppel.

In light of the foregoing, one shall be aware that amendments during prosecution could cause serious impact on the enforcement of the patent. That said, if one “greedily” recites an unreasonable broad claim scope initially, it is very likely that the unreasonable broad claim would be challenged and forced to be further limited during prosecution. The amendments during prosecution in view of prosecution history estoppel, as noted above, would become a weakness of the patent exclusive right.  Accordingly, we suggest applicants dealing with their claim scope more cautiously. Hereinafter are our suggestions:

1.      Being pragmatic in drafting claims.

Applicant and attorney thereof shall discuss deeply about the scope of the prior arts. Based on that, the attorney can set up a proper breadth of claims for the application. Furthermore, whether the wordings and description of the claims are certain enough or not shall be considered more carefully. It is not proper to try to cover broad scope and turns out causing preemption. In other words, applicant and attorney shall not fascinate with having claims “look” broad but shall be pragmatic in drafting claims with proper scope.

2.      Being patient in negotiating claims scope during prosecution.

Budge is an important thing in every aspect of business; however, if this patent would be critical to you business, you shall invest enough to defense the claim scope. In my experience, I saw lots of applicants easy to give up and amend their claims while prosecution. I understand they would like to have the patent issued as soon as possible and save money from responding the office actions again and again. However, they do not recognize the impact of prosecution history estoppel.  If the claims were draft pragmatically as suggested in the above Item 1, the applicant shall be confident and patiently negotiate the claim scope with the Examiner, especially when facing unreasonable rejections.