Post Patent Reform In-Depth Analysis

Patents for People, Not for Lawyers

September 30, 2014

When was the last time that you wanted to learn about how some new technology works, and you went and read a patent? Not recently? Not ever? Not surprising. Patents are difficult documents to read—a survey found that 56% of nanotechnology scientists either don’t read them or have never found useful information in them.

It doesn’t have to be this way. Scientists and technologists write articles all the time that explain new inventions in clear, understandable ways. In fact, the patent law requires patents to be written in “full, clear, concise, and exact terms.” But as I’ll explain below, patent lawyers have strong motivations to actually make patents hard to read, keeping that knowledge from the public. Well, we’re called Public Knowledge, and we’re fighting that legal establishment and demanding clarity in patents, most recently in a filing submitted today to the U.S. Patent and Trademark Office.

What’s so great about complicated patents?

Let’s start with some background. Obviously, patents are supposed to be clear and understandable. The Constitution dictates that patents must “promote the progress of science and the useful arts,” and patents that no one understands cannot promote the progress of anything.

But patent owners, and their lawyers, actually prefer patents to be vague and ambiguous. If a patent can be interpreted in multiple ways, then the owner of the patent can wait until the last minute to pick whichever interpretation works best at that time. Furthermore, ambiguities allow a patent owner to play games by telling the Patent Office that the patent means one thing, users of the technology that the patent means another, and courts that the patent means yet something else, each meaning carefully selected to maximize the success of the patent. Thus, as one report observed, the patent system creates “an incentive to be as vague and ambiguous as you can.”

As you can see, there is a tension between the public interest in clear, understandable patents, and desire by patent owners for their patents to be difficult to understand. Let’s look at how that tension has played out in recent events.

The importance of being ambiguous

Patent clarity has popped up as an area of interest due to a recent case in the Supreme Court called Nautilus v. Biosig. That case considered just how vague and ambiguous a patent could be before it actually violated those legal requirements for patent clarity. We filed two amicus briefs (both with the Electronic Frontier Foundation) urging the Supreme Court to require patents to be understandable, and in large part the Court delivered.

The justices recognized that without strong law requiring patents to be clear, “patent applicants face powerful incentives to inject ambiguity” into their applications. “Eliminating that temptation is in order,” they said, and thus they crafted a rule that patents must be sufficiently clear to allow people familiar with the general technology field to understand “the scope of the invention with reasonable certainty.”

Some people wondered whether Nautilus would have any real impact on actual patents—the opinion itself is terse and, well, a bit ambiguous—but a case from earlier this month confirmed its importance. In Interval Licensing v. AOL, the Court of Appeals for the Federal Circuit grappled with a patent about displaying notifications on a computer. According to the patent, the notices were displayed “in an unobtrusive manner.” But what does “unobtrusive manner” mean in that patent?

The patent owner suggested several possible definitions, such as a notice on a screen saver and a message on the desktop background. The appeals court agreed that these were possible definitions, but said that this was not enough: the patent had to clearly state which one of those possible definitions applied.

At one point, the patent defined “unobtrusive manner” as “e.g., the information is presented in areas of a display screen that are not used by displayed information.” Because this definition started with “e.g.,” Latin for “for example,” the court found it insufficient. “With this lone example,” said the court, “a skilled artisan is still left to wonder what other forms of display are unobtrusive and non-distracting.” Thus, the court decided that the term “unobtrusive manner” was too ambiguous, so the parts of the patent relying on that term were invalid.

Based on this Interval Licensing case, it looks like courts are following the patent law and Nautilus by policing patents for vagueness. But not all unclearness is baked into a patent itself. Clever lawyering can often turn a simple patent into an incredibly complicated one, by introducing ambiguities after the fact, during a process called “claim construction.”

Nothing is as easy as it seems

Claim construction is the process by which a court decides exactly what a patent covers, by reading through the patent (specifically, reading through a part of the patent called the “claims”). Based on the rules laid out in a case called Phillips v. AWH Corp., the claim construction process can be long and tedious, because it involves scouring through the patent text, the record of correspondence between the Patent Office and the patent applicant, and the historical and technical literature. Often high-powered (and high-cost) expert witnesses battle it out at trials over claim construction, which can deal with issues as obscure as the meaning of the word “or.” Even the Federal Circuit, the expert court on claim construction, has said that “claim construction can be difficult.”

The reason that this claim construction process is so difficult is that patent owners, and their lawyers, will bend over backwards trying to read patents to keep them alive. For a patent lawsuit to succeed, a patent has to satisfy multiple requirements (such as being different from older inventions), and claim construction is the opportunity to adjust the meaning of the patent to fit within those requirements. In fact, the Federal Circuit has approved of this after-the-fact adjustment, calling for “formidable” claim construction efforts in order to “protect the inventive contribution of patentees.”

Of course, that protection of patentees comes at the expense of the public interest in clear, understandable patents. For it is not only courts that must undertake formidable claim construction tasks. Technology companies, businesses, and interested individuals are supposed to read and understand patents as well. But every member of the public who seeks to understand a patent is saddled with that same formidable task. In an effort to protect patent owners, the courts have made patents unreadable to everyone else.

Do as I say, and as I mean

It doesn’t have to be this way. For at least a century, the Patent Office has used an alternate method of interpreting patents, called the “broadest reasonable interpretation.” Under this method, words in a patent are generally given “the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention.” In other words, the words of a patent mean what they say.

Powerful coalitions are working to dismantle this public-friendly method of interpreting patents and replace it with the patent-owner-friendly method. Thus, our comments to the Patent Office oppose those special interests and call attention to the importance of preserving the public interest in patent clarity.

Our reasoning is straightforward, and has already been endorsed by the Patent Office time and time again. In fact, our fantastic summer intern Wendy Knox Everette, who helped write our comments, uncovered a 1906 decision from the Patent Office that makes the case for the broadest reasonable interpretation as well as anyone could.

Podlesak & Podlesak v. McInnerney was a case over a patent application on a part of a combustion engine. During examination, the examiner found a defect in the application, and thus refused to approve it. The case went to an appeal board of examiners-in-chief, who came to the opposite conclusion.

How did they come to different results? The difference was in how the examiners-in-chief interpreted the patent application. The defect in the patent application that the examiner found was based on a term “contacting blow.” The examiners-in-chief overcame the defect by interpreting “contacting blow” to only mean a very specific action. In other words, the examiners-in-chief engaged in a complex claim construction in order to preserve the patent application and protect the patent owner.

The case was then appealed to the Commissioner of Patents, who concluded that the examiners-in-chief had erred in reinterpreting the term. The problem with the method of the examiners-in-chief, said the Commissioner, is that reinterpreting terms like “contacting blow” will create “such confusion, with its attendant useless delay, labor, and expense.” Instead:

No better method of construing [patent] claims is perceived than to give them in each case the broadest interpretation which they will support without straining the language in which they are couched. This method would seemingly give more uniform and satisfactory results than are obtained by methods largely in vogue—such, for example, as that of importing limitations from the specification according to the exigencies of the particular situation in which the claim may stand at a given moment. . . . Where a limited meaning is intended when a claim is drawn, what possible objection can there be to imposing that meaning unmistakably upon the claim by its express terms? That a claim which does not carry its true meaning upon its face misleads those affected by the patent instead of guiding them as to its true scope is alone sufficient reason why the Patent Office should refuse to recognize proposed limitations of claims which have not been clearly expressed therein.

Today, just as in 1906, we should expect every patent to carry its true meaning upon its face and guide us as to its true scope, rather than misleading those affected by the patent. And though the patent bar may make a loud fuss about protecting patent owners, the public interest in high-quality, clear patents must always override those special interests.

The image is from U.S. Pat. No. 859,510 to B. McInnerney, issued July 9, 1907, and entitled “Electric Igniter for Gas-Engines”.