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TAKEAWAY: The past few years have brought an increase in the tools available to the potential infringer to invalidate or otherwise avoid a patent. Patent application drafters should consider this changing landscape when preparing and prosecuting patent applications. 

Whether brought about by a backlash on patent trolls, the cyclical nature of the law, or some other reason, it appears that the patent validity pendulum is swinging in the direction of invalidity. The past few years have brought an increase in the tools available to the potential infringer to invalidate or otherwise avoid a patent. Patent application drafters should consider this changing landscape when preparing and prosecuting patent applications. Below are just a few of the recent movements in the law that can affect the drafting of a patent application.

  • KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) and 35 U.S.C. §103 – While not exactly recent law, the Supreme Court’s KSR decision provides the blueprint for an obviousness analysis. For example, the KSR decision provides a number of rationales that may be relied on to support a conclusion of obviousness. Keeping these rationales in mind when drafting a patent application may help to traverse an allegation of obviousness. For example, a patent application drafter can develop, support, and claim benefits of the invention in the patent application that can be referenced later in support of nonobviousness.
  • Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014) and 35 U.S.C. §101 – Finding the perfect solution to Section 101 attacks under Alice and its progeny may be an elusive goal. Drafting a patent application with these cases and issues in mind, however, may increase your chances for gaining and enforcing a patent.
  • Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) and 35 U.S.C. § 112(b) – While the Supreme Court’s new test requiring claims to inform those skilled in the art with “reasonable certainty” of what is claimed may not represent a significant change in the indefiniteness test, it is clear that indefiniteness attacks are more prevalent both during and after prosecution. Reviewing drafted claims so infringement determinations are clearer, and including claim term delimiters in the application specification, may defuse an indefiniteness attack.
  • Williamson v. Citrix Online, LLC, et al., No. 2013-1130 (Fed. Cir. June 16, 2015) and 35 U.S.C. § 112(f) – The Federal Circuit and the USPTO have been interpreting patent terms more frequently as means-plus-function terms when the phrase “means” is not recited. The patent drafter may want to consider drafting claims with different approaches, including (1) claims that avoid nonce words followed by function, (2) using method claims to address functional aspects, (3) including the specifics of a claimed algorithm in the specification to avoid invalidity if construed as a means-plus-function recitation, and (4) listing multiple alternatives in the specification.
  • Akamai Techs., Inc. v. Limelight Networks, Inc., No. 2009-1372, (Fed. Cir. Aug. 13, 2015) (en banc) and 35 U.S.C §271 – While the latest decision in Akamai provides some glimmer of hope for proving infringement based on the actions of more than one party, proving infringement in this situation may still be difficult. Accordingly, the patent application drafter may consider reviewing the claims to confirm that each feature likely will be attributable to one actor. Similarly, the patent application drafter may want to ensure that each feature of the claim can be attributed to an action in the United States.

Addressing these movements in the law when drafting your patent application may create a stronger patent. It is important to recognize, however, that the law is always moving and that a robust specification and a variation in claim formats and terms can be important in dealing with future changes in the law.