WEBVTT

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Good day and welcome to the Patently Strategic Podcast, where we discuss all

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things at the intersection of business, technology, and patents.

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This podcast is a monthly discussion amongst experts in the field of patenting

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it's for inventors, founders and IP professionals alike,

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established or aspiring. In today's episode, we're looking

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into how to get more predictable results from the unpredictable arts. Think your

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innovation is sufficiently enabled to secure, defend, and assert your patent rights?

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If it's a biological, chemical, or emerging technology invention,

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then you might want to think again. And there's that word again enabled.

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If you're a regular listener, you're probably noticing a common thread among

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several of our recent episodes the concept of enablement is

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one of the sharpest corners in the world of IP. In fortifying life

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science patents, we first explored section 112 rejections and

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the concept of enablement, or whether or not the patent teaches

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those skilled in the art how to make and use the full scope of

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the claimed invention without undue experimentation.

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In our From Alice to Axel episode, we looked at how the courts have conflated

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eligibility with enablement and the grave threats this poses to the

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innovation economy. And then in episode eight this season, we examine

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the use of means plus function, claiming in the enablement risks

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that come with using overly broad language that only describes what

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an invention is versus what it does. Why is this such a

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big topic worth so much discussion? Well, remember,

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enablement is the fundamental deal of the patent system.

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You're trading disclosure for exclusivity so you can't

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hold back on the key details. Longterm progress of science and the useful

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arts is promoted by trading a government granted window of exclusivity

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to inventors in exchange for an enabling public disclosure.

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This disclosure must teach the public how to make and use the invention.

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Enablement is teaching how to make and use the invention

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that requires a certain level of specificity. And that level of specificity

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is where we start traveling into the gray. Depending on the subject matter

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or technology area for the innovation, this level of specificity

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can have very different requirements. Some technologies, like those

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rooted in physics and mechanics, are considered predictable by the US.

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Patent Office, while others, like biological and chemical technologies,

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are generally considered unpredictable. It follows that the amount

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of disclosure required to enable invention is related to the predictability

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of the technology, and so called unpredictable arts require more description

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to teach a reader how to make and use the technology.

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Similarly, emerging technologies, being less wellknown,

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also require more disclosure to be fully enabled. In this month's

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episode,  David Jackrel, President of Jackrel Consulting, leads a discussion along

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with our Allstar Patent panel exploring enablement for the unpredictable arts

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and emerging technologies. The panel discusses peculiarities

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of patenting, unpredictable art and emerging technologies with a focus

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on modern case law and statutes to arrive at a set of best practices

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for getting more predictable results and patenting. These technologies.

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Dave is also joined today by our always exceptional group of IP experts,

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including Dr. Ashley Sloat, President and Director of Patent Strategy

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here at Aurora. Kristen Hansen, patent strategist at Aurora, and Shelley

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Couturier are patent strategist and search specialist. And before joining the

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group, as we often do, we'd like to provide a short primer on some key

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concepts in this episode for those newer to the world of patenting.

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Our legal scope for this talk once again falls under Title 35 of

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US. Code section 112, which is largely concerned

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with the topic of enablement. Patents can be rejected by the Patent Office or

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later invalidated by the courts if the invention is deemed to be insufficiently

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enabled. Regarding statute interpretation, the group also makes

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reference to the MPEP for those newer to the space. This might sound like another

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snoozeworthy acronym for Practitioners and Examiners. It's the

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Bible for patenting. MPEP stands for Manual

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of Patent Examining Procedure. It's a 3000 plus page

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manual published by the United States Patent and Trademark Office, produced by examiners,

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applicants, attorneys and agents. It is the reference guide for

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Practices and procedures for the prosecution of patent apps before the USPTO.

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Patent practitioners use the MPEP as a handbook of rules for

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drafting a patent application and examiners use the MPEP guidelines

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to decide whether to grant or reject the application. Along with patent

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laws and rules, the MPEP also attempts to explain the Patent Office's

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stance on current patent case law. In case you have trouble sleeping,

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we've linked to the MPEP in the show notes. As it often does,

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a lot of nuance comes down to understanding the difference between the spec or specification

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versus the claims of a patent application. We review this

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distinction in great depth in our patent anatomy episode from season one,

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but in brief, the specification describes the invention and provides

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context for interpreting the claims, whereas the claims are the heart of the

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application and point out the exact invention boundaries of the idea space

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the applicant believes she's entitled to own. Panel also

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uses the terms genus and species when talking about the breadth of a claim,

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much like the traditional definitions of genius being a group defined by common

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characteristics in a species being a logical division

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of a genus. In chemical, biotech and pharma patents,

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a genus claim covers a group of related chemicals,

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whereas a species claim covers a single compound without coverage of analogs

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derivatives or compounds in the same family. Inventors ideally want

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the broadest umbrella possible with genus claims,

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but a big question explored in this episode is what does that require from

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an enablement perspective? In the final bit of patent ease before

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handing you off to the panel is the concept of Marcosque groups.

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This is a claim drafting technique used to COVID multiple related alternatives

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or species in a single claim. It can appear in a patent with language like

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selected from the group consisting of A, B and C.

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The elements of the group must share some common characteristics and allow the group

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to be treated like a substitute variable. It is considered a closed

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group, though, so the variable can only be one of those things when claimed in

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that manner. For today's conversation, the practical application is using

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Marcos groups to specify groups of related chemical

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compounds. If you'd like to know more about Marcoche group instructions,

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please check out our blog post on how to read chemical and drug patents linked

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in the show notes. All right, hopefully you're now sufficiently

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enabled to enjoy the episode. Take it away, Dave.

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Well, I'm going to jump right in because I

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think that in a way, I could breeze

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right through this. But at the same time, I think it would be more

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interesting and fun if anybody has any comments or

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stories or examples of their own to, like,

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add in as we go. I don't have, like, specific prompts for

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places for that. So please, like, if you think of

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something or have something to mention,

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please do, please join. And I

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will. And don't laugh too hard. I've worked in Predictable Arts 99.99%,

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so I'll add some stupid questions for you. Great, that's perfect.

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So I thought, especially since for the

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podcast and the broader audience out there, we'll start at the beginning,

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we'll start at Enablement and the MPEP.

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We'll go through what is a predictable versus an unpredictable technology?

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How can we think about that? And then the meat of this is really two

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sections, chemical and biological technologies, which are

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basically the way that in this context are very similar.

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And then something actually interesting in a

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related vein, although not exactly unpredictable per se,

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is emerging technologies and the enablement requirement there, which is

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actually a little bit different. So M Pep

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21 64, what is enabling?

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So this is what we call 112 A. And in the specification,

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you describe how to make and use the invention.

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And that's a requirement. You have to enable someone

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to be able to make and use the invention in order for the

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patent office to grant you as a parent and a nice piece

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of case law that a lot of people kind of fall back on when they're

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thinking about this. How to determine whether or not you've met

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that far, is the test of enablement, is whether one reasonably

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skilled in the art a positive could make,

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use, make or use the invention from the disclosures in the

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patent coupled with information known in the art without

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undue experimentation. And that's really a key

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phrase. And what does that mean, undo experimentation? It's a

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bit vague, but there's been a lot

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of case law around this. And essentially,

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if there is a number of

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finite possibilities that someone could explore,

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then that may not be that

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it would be enabled if it's only a small number of possibilities.

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But if somebody had to do a lot of experimenting to figure something

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out how to make something that worked, then that would be undo

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experimentation. Again, quantitatively, that's a little bit of

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a tricky thing to unravel, but that's

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the idea behind it. Is this why you use

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Marcus groups so often in this art?

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Sometimes in some ways, yes. I think not.

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Maybe so much for enablement, but because you want the

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scope of your claim to be broad, but you also want it to

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be specific, because if you make something too raw,

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then you risk not enabling things. So by listing a specific list of

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things for each one of those things you know is enabled because it's described

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well, that can help you get the best

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practice, have everything enabled.

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Okay, interesting, because I think I could say I went 15 years never

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using it because it's not useful in predictable ours,

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but I see it everywhere in this space.

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It's a good point, I didn't think of it that way. But as we go

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through things, we can talk about that. I'm like how Marcus group may have

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been better than some of these other claims which were invalidated for

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lack of enablement. Well, and then

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too, even some countries, we've even been seeing that some countries, even with kind of

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Marcos groups, they're not okay with it if

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you don't have enough support for all

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the various types of and stuff. That's pretty routine, like detergents

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and things like that. They don't like it if you don't have more experimental

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support for some of those other classes. So that's kind

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of an interesting thing too. Right?

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So this I thought was pretty interesting. Same section.

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A subsection of this in the MPPP 21 64.3

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is a relationship of predictability of the art and the enablement

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requirements. So these are quotes now, right, from the MPEP.

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The amount of guidance or direction needed to enable the invention is

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inversely related to the amount of knowledge in the state of

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the art as well as the predictability in the art.

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So determining predictability or

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determining how much enablement you need,

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actually you have to go back and know about the art. You need

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to know the state of the art, how much knowledge is out in the art,

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what a Posito would reasonably know. And that's really

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the crux, I think, of both these unpredictable arts and the

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emerging fields. So another

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quote, the predictability, or lack thereof, in the art refers to the ability of one

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skilled in the art to extrapolate, to disclose our known results

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to the claimed invention. So in the field of chemistry,

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there may be times when well known unpredictability of chemical

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reactions will alone be enough to create a reasonable doubt as

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to the accuracy of a particular broad statement put forward

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as enabling support for a claim. I think through

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examples this will all become more clear. But I

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think the important takeaway here is this is in the MPEP,

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this is not sort of like something that's kind of

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come out has come out in case law. But it's

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explicitly in the MPEP as well that there is

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actually a different bar for different fields depending

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on the state of the art as well as the predictability of

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the technology. And so the scope

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of the required enablement varies adversely with the degree of unpredictability

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involved. But even in unpredictable

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arts, a disclosure of every operable species is not

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required. So this is something we're also going to talk about then. How do you

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do this? Extrapolating and teaching

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you can enable someone to create a

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whole slew of compounds, let's say by a number of examples and then

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also instructions or some information,

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some description about how to extrapolate between those examples to

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arrive at all of the other examples that may be in abroad

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definition. So as we said, chemical and

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biological chemical species with substitutable

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groups is sort of the main example of this. And we're

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going to talk a bit about that as we go through these examples. But also

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in emerging technologies, new fields, even if they're predictable,

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need more description to satisfy their disclosure obligations

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and more mature fields. So for example, broad claims that

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cover different embodiments need to have all of those variations

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enabled with a sufficient description. And as we get

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into the emerging technologies examples, you're going to see a pattern that

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arises there where someone tried to claim a genus

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and there are several species under the genus. One or two of those species

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was described really well and a couple of the other species were not described

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very well and the entire claim can be invalidated

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because of that. So the other thing that's really important

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for this is thinking about the terms and really

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what is the scope of this claim and is everything that

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this claim covers sufficiently enabled? It's kind of the crux

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of it. Okay, so now some fun examples.

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Predictable. What is predictable? So in

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a very famous example of a predictable

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technology, which is physics, physics, mechanical inventions

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are often pointed to as being predictable. So in 1916,

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Einstein published his theory of general Relativity, which said

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that mass curves, FaceTime all on paper, all equations,

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took three years. But three years later, in 1919,

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English scientists led by Sir Arthur Eddington traveled to

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Africa to observe a total solar eclipse which confirmed that the

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light from stars was bent by the gravity of the sun.

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So there's even older examples of this.

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The orbit of Neptune famously

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was predicted by the

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other planets around it having strange orbits which

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must have been affected by another mass that someone could tell was there.

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So these are predictable. And I'll tell you one other because

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I think it's very interesting, but it's also personally related.

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Also in 1009, Einstein predicted that gravity traveled

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in a wave and this one took 100

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years to prove. But LIGO, the Laser Interferometer

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Gravitational Wave Observatory, confirmed the observance

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of gravitational waves in 2016. And this

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is personal for me because this was the project that I worked on

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in grad school. I was designing photo

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detectors for LIGO and there you can see some pictures of

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these facilities. There's one up in Hanford, Washington. There's one

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in Livingston, Louisiana. These interferometers

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are Lshaped devices that

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each arm of the interferometer is 4 km long

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and the entire path of the laser is all under

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vacuum. And so these are just massive, massive installations.

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And you can see the data on the right, which was the observation of the

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first gravitational wave event, which I believe was two

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black holes or black holes or neutron

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stars smashing into each other. They are orbiting

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around each other and at the end, right before they coalesce

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into each other into one, they spin around each other so

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fast that they give off massive amounts of energy in the form

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of gravitational waves, which is what was observed. But the crazy thing

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is why it took so long to find is that the effect

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is so small. I know you can see on those plots but the

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screen is ten to the -20 1st so over

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4 distance the relative change in

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the length of the arm is one one zero of

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the diameter of the nucleus of an atom

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like ten to the -20 first meters extremely that's insane.

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It is insane. A lot

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of technology. How did they like

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I imagine like you get so much noise in that system,

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how do you pair together? That's what was causing that

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exactly right. And that's probably like more than what

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we have time for today. It is. I'll give you a short answer though.

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So there's these plots, and these are the plots that the

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people who made these systems were using, where you have a

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frequency spectrum of noise and there's like

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thermal noise up at really high frequencies, there's like ground noise

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at low frequencies. But there's a frequency band right in the sweet spot

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where you can through seismic isolation and

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all kinds of advanced optics and really advanced

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systems. It's active, active noise reduction and stuff like that.

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They can get the noise in certain frequency bands down low

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enough where they can see certain types of gravitational events.

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Yes, but also even in those bands,

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one big reason why there are two installations,

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two detectors so far away from each other is they wanted to rule

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out a local event, you know, so if it's something

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local up in near Hamford, Washington, Livingston, Louisiana wouldn't

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see the same signal. But the signals were exactly the same

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and they were offset by exactly the amount of time that you would expect.

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So there's also other detectors like in Europe,

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there's one called Virgo and there's one, I think in Japan as well

18:52.705 --> 18:56.750
now. And so kind of just like with

18:58.387 --> 19:01.807
earthquakes and seismometers, you can triangulate the

19:01.810 --> 19:05.542
position, you can triangulate where the gravitational wave event came

19:05.590 --> 19:09.512
from by the lag by when the detector is detected.

19:10.762 --> 19:15.202
When we lived in the Tri Cities, we toured the

19:15.220 --> 19:18.972
LIGO. Yeah. Neat. Oh, my gosh.

19:19.092 --> 19:22.282
It was something amazing, right? I know, it was amazing.

19:22.360 --> 19:25.047
I spent most of my time in the lab trying to make photo detectors.

19:25.092 --> 19:28.492
But two or three times a year I get to go to the sites and

19:28.540 --> 19:32.332
help them with a science run or for a meeting or

19:32.335 --> 19:35.472
something. It's so amazing to see it. And it's

19:35.517 --> 19:38.612
all in the ground, the whole observatory,

19:39.712 --> 19:43.027
like the pipeline or whatever they're calling it.

19:43.045 --> 19:46.177
It was very interesting. Yeah. Super neat, right?

19:46.195 --> 19:52.017
Yeah. So predictable physics

19:52.077 --> 19:55.372
is predictable, like proven time and time

19:55.405 --> 19:59.112
again. On the other hand, organic molecules,

19:59.187 --> 20:01.662
especially those with biological effects,

20:01.737 --> 20:05.122
are unpredictable. And so that's what

20:05.155 --> 20:08.242
we're going to dive into now. So starting

20:08.290 --> 20:12.097
with that, starting with chemical and biological technologies, it can be

20:12.130 --> 20:15.897
difficult for a skilled person to predict which functional activity a chemical

20:15.942 --> 20:19.672
or biological substance may possess. So this

20:19.705 --> 20:23.982
has some advantages in the patent space. So a newly found substance

20:24.072 --> 20:27.457
and its use is more likely to be deemed not obvious

20:27.535 --> 20:31.237
to the person. So that would be patentable over,

20:31.300 --> 20:35.450
you know, what's called so called business or 101, so 103.

20:35.812 --> 20:39.277
But it also creates a burden. So when you try to claim a

20:39.295 --> 20:43.792
group of compounds providing one synthetic route and

20:43.840 --> 20:47.302
the activity data of one compound may not be sufficient to support the

20:47.320 --> 20:50.872
assumption that all claim permutations of a certain compound can

20:50.905 --> 20:53.612
be synthesized and are active.

20:54.412 --> 20:57.657
So another kind of general rule.

20:57.747 --> 21:00.967
I'm going to use these molecules for the next couple of slides to talk about

21:01.015 --> 21:03.200
this in a little more detail.

21:03.787 --> 21:07.762
There's a known kind of law

21:07.825 --> 21:11.662
rule in patents in the US and around the world where

21:11.725 --> 21:16.122
a generic formula does not necessarily inherently disclose

21:16.167 --> 21:20.002
the specific compounds falling under the formula. You might

21:20.020 --> 21:24.267
say to yourself, really? That seems odd. But if you take it to its extreme,

21:24.402 --> 21:28.347
it makes sense because really no future chemistry

21:28.392 --> 21:32.062
invention would ever be possible. Since all conceivable compounds fall

21:32.125 --> 21:35.872
under one known generic formula or another, we take

21:35.905 --> 21:39.727
it to the extreme. More useful. Maybe a specific

21:39.820 --> 21:43.602
example is what we're showing here with a generic formula

21:43.632 --> 21:47.652
and then these two other compounds which were modified

21:47.757 --> 21:51.127
from it. So this case actually

21:51.220 --> 21:55.132
came from the German Supreme Court. It's a really good example,

21:55.210 --> 21:58.647
I think, of these principles. The generic formula

21:58.692 --> 22:02.712
One does not disclose this claimed compound,

22:02.787 --> 22:06.867
Olenzapin, which is number two, claimed compound

22:06.927 --> 22:10.632
one. There on the left, you can see a bunch of rings and other sick

22:10.647 --> 22:14.377
things coming off of it. But the important pieces for this discussion are that

22:14.395 --> 22:17.782
there are two variable groups in that compound, r One

22:17.860 --> 22:21.522
and R Two. The claim compound, a lensbin

22:21.567 --> 22:24.837
had for R One, nothing, just a hydrogen,

22:24.987 --> 22:28.542
and for R Two, it had a methane. Another compound

22:28.602 --> 22:32.167
from the art flumezapine has the same

22:32.215 --> 22:36.402
methyl group in R Two. But on R one, it has a fluorine.

22:36.582 --> 22:40.662
And so the question before the Supreme Court was, is compound

22:40.737 --> 22:44.112
two, the claimed compound rendered obvious by compound

22:44.187 --> 22:47.527
three? So in order to figure that out, you have to go back to

22:47.545 --> 22:51.402
the prior art. This also relates with enablement, but it's easier

22:51.432 --> 22:55.297
to talk about for obviousness first.

22:55.480 --> 22:58.582
So when you look at the art, the activity data in

22:58.585 --> 23:02.122
the prior art, all leads one

23:02.155 --> 23:06.492
to believe that fluorine would enhance the biological

23:06.627 --> 23:10.337
efficacy of this compound. In this case, it was an antipsychotic.

23:11.287 --> 23:14.767
And I think very importantly too, the prior art

23:14.815 --> 23:18.202
had no individualized compound under the

23:18.220 --> 23:23.122
generic formula one that was not halogenated. So basically

23:23.305 --> 23:27.067
the prevailing wisdom in this space was

23:27.115 --> 23:30.567
that fluorine, fluorogeneted, halogenated compounds

23:30.627 --> 23:33.522
were beneficial,

23:33.642 --> 23:36.927
improve the efficacy. So a person of skill

23:36.957 --> 23:40.747
in the yard, a positor, had no reason or incentive to

23:40.780 --> 23:44.562
modify compound three to compound

23:44.637 --> 23:48.442
one with no halogen. And therefore they found it that

23:48.640 --> 23:51.512
it was not obvious and it should be allowed.

23:51.862 --> 23:56.047
How this relates to enablement is

23:56.230 --> 23:59.947
if you general compound one,

24:00.055 --> 24:03.727
if you tried to claim that you

24:03.745 --> 24:07.872
would need to show and enable every variation

24:07.917 --> 24:11.232
of R One and R two, and if you showed a bunch

24:11.247 --> 24:14.542
of examples, let's say, and they were all fluorinated or halved needed,

24:14.665 --> 24:18.137
that wouldn't necessarily enable

24:18.937 --> 24:22.797
compound number two. Or from the other perspective,

24:22.842 --> 24:25.175
it doesn't make compound number two obvious.

24:26.962 --> 24:28.250
Does that make sense?

24:30.637 --> 24:33.200
Is there a be following at this point or is there any questions?

24:34.462 --> 24:38.167
I think the one question I have for you David, is do you believe then

24:38.215 --> 24:42.822
there's kind of this. I feel like at one point broader

24:42.867 --> 24:46.867
claims were allowed that maybe you didn't have

24:46.915 --> 24:50.062
support for all the different permutations under

24:50.125 --> 24:53.947
it, but if you showed enough like a

24:53.980 --> 24:56.422
fourth of the possibilities or something,

24:56.605 --> 25:00.147
then that was enough. But it seems like we're shifting

25:00.192 --> 25:03.682
towards this like these some of you are saying the death of the

25:03.685 --> 25:07.447
genus claim. Do you think that's really happening? And you think that's a good

25:07.480 --> 25:11.047
thing or a bad thing? It's a great question and

25:11.080 --> 25:14.617
you know, I don't have a solid answer like with

25:14.665 --> 25:17.827
case law etc. These cases we're looking at here are

25:17.845 --> 25:21.352
all from mainly or from like 20 08 20

25:21.370 --> 25:24.697
09 so it hasn't changed much, I'd say, in the last

25:24.730 --> 25:28.192
sort of decade. So everything that we've been sort of

25:28.240 --> 25:31.947
taught, I think still holds. It's not like there's been a change recently

25:31.992 --> 25:35.722
or anything. So that's sort of the first comment. But I

25:35.755 --> 25:39.702
think putting together best practice from what I've looked at in the prior

25:39.732 --> 25:42.967
art, even the MDP says you don't have

25:43.015 --> 25:46.332
to describe every single variation.

25:46.497 --> 25:49.597
However, what I think

25:49.630 --> 25:52.467
best practice is to extrapolate,

25:52.527 --> 25:55.407
to explain to someone how to extrapolate.

25:55.572 --> 25:59.877
So by saying R one, let's say for instance, can be halogenated,

25:59.907 --> 26:03.382
but it doesn't have to be Halloween, things like that.

26:03.535 --> 26:07.072
Extrapolate some guidance about which compounds fall in

26:07.105 --> 26:09.500
and which compounds don't and why they all work,

26:10.762 --> 26:14.242
I think is the best way to go.

26:14.365 --> 26:17.602
But your question is valid, and I think it's a bit of

26:17.620 --> 26:21.502
a gray area that comes down to, unfortunately, I think the

26:21.520 --> 26:25.387
individual examiner that you may be dealing with, but also probably

26:25.525 --> 26:29.647
in some cases, and it may be in many cases, something that would really

26:29.680 --> 26:32.537
come out in litigation, not so much in prosecution.

26:33.412 --> 26:36.742
Yeah, that's fair. I think it'll be interesting to see kind of what happens

26:36.790 --> 26:40.327
longer term with some of these, especially the chemical the chemical side

26:40.345 --> 26:43.100
of the world and what happens over time if, you know,

26:44.062 --> 26:47.150
you can show support for some and some guidance, like you said.

26:47.962 --> 26:50.750
Is that going to be enough for the courts, or do we have to do

26:51.187 --> 26:54.847
more? What I think is how

26:54.880 --> 26:58.062
I'm starting to think about this and putting this together for me is really helpful,

26:58.137 --> 27:02.167
is that it really I think there is some general kind

27:02.215 --> 27:05.847
of logical logical

27:05.892 --> 27:09.417
tool, logical questions you can ask yourself. Looking at a claim

27:09.477 --> 27:13.850
language, would someone be able to make and use every

27:14.437 --> 27:20.872
variation that I'm describing here, including synthesis and

27:20.905 --> 27:24.447
including is it enabled? Have we shown that every variation

27:24.567 --> 27:28.527
has efficacy? That generic

27:28.557 --> 27:32.197
compound on the left with R one and R two? Considering how

27:32.230 --> 27:35.900
many things r one and R two could be, I think having

27:39.037 --> 27:42.477
you know, I'm not that familiar

27:42.507 --> 27:45.802
with antipsychotics, so I'm not sure what a good example there would

27:45.820 --> 27:50.362
be. But, you know, putting the enough

27:50.425 --> 27:53.782
description that you not only have, like you said, maybe a

27:53.785 --> 27:57.132
quarter or some reasonable fraction of concrete examples,

27:57.147 --> 28:00.967
but also logic. Logic and

28:01.090 --> 28:04.732
direction for how to extrapolate between them to arrive at anything

28:04.810 --> 28:08.542
that you're claiming, you know? Yeah, I think. Interesting point.

28:08.590 --> 28:12.277
Do you think it's, you know, because some would argue that a person's skilled in

28:12.295 --> 28:16.027
the art to make and use a claim just has to

28:16.045 --> 28:19.777
be able to, based on the claim language and the stuff in the spec

28:19.945 --> 28:24.042
has to be able to make one chemical

28:24.102 --> 28:27.862
that fits the bill. But you also kind of said something interesting. You said somebody

28:27.925 --> 28:30.657
would have to be able to kind of make all the permutations.

28:30.822 --> 28:34.267
So do you think we need to enable them to make

28:34.315 --> 28:38.302
one, or do you think we need to enable them to make all the

28:38.320 --> 28:40.037
things that falls under the claim?

28:42.637 --> 28:46.027
There may even be some quotes from some case law that support that.

28:46.120 --> 28:49.207
But everything that I've been reading says yes.

28:49.285 --> 28:53.302
Not only supporting what the compound is and

28:53.320 --> 28:57.172
all variations, but also how to make you need how to synthesize them

28:57.280 --> 29:00.697
and how to use them. What the biological efficacy is.

29:00.730 --> 29:04.642
Not just for some example, but really, somehow not

29:04.690 --> 29:07.897
necessarily writing explicitly each one,

29:07.930 --> 29:12.147
but teaching someone how to extrapolate or interpolate,

29:12.192 --> 29:16.102
if you will. No, that's interesting. I would agree based on what

29:16.120 --> 29:19.257
I've heard and seen, you know what I mean? So it's interesting I think there's

29:19.272 --> 29:21.457
been a little bit of a shift over, like, set up with me in the

29:21.460 --> 29:24.142
last couple of decades in that direction. But yeah,

29:24.190 --> 29:27.642
interesting. So what we're about to talk about is KSR.

29:27.777 --> 29:31.327
And I think KSR is very confusing in this world.

29:31.420 --> 29:34.927
So KSR, that was

29:34.945 --> 29:39.725
a German case shifting over to the US. Case in 2007,

29:40.162 --> 29:44.122
famous landmark US. Supreme Court case was

29:44.230 --> 29:48.622
really putting more guidelines around. What does it mean to be obvious? And so

29:48.730 --> 29:52.252
what KSR establishes there does not need to

29:52.270 --> 29:56.202
be an explicit motivation in the prior art to modify teaching

29:56.232 --> 30:00.202
to arrive at a claimed subject matter. So what

30:00.220 --> 30:04.257
it did say is if there's a finite number of identified predictable solutions

30:04.347 --> 30:08.150
that could lead to the claimed solution, then it is likely obvious.

30:09.187 --> 30:13.467
However, the underlying technology behind KSR

30:13.527 --> 30:17.277
was from a predictable art. It was a mechanism for combining an electronic

30:17.307 --> 30:20.637
sensor with an adjustable automobile pedal.

30:20.787 --> 30:24.547
So all elements and their functions were

30:24.580 --> 30:28.327
known. And the result of a combination of those things

30:28.345 --> 30:30.275
was predictable and hence obvious.

30:31.987 --> 30:35.902
The courts have since clarified this

30:36.070 --> 30:39.912
specifically for chemical and unpredictable

30:39.987 --> 30:43.527
arts. And so the CIFC at least has ruled

30:43.557 --> 30:47.077
that there still needs to be some reason motivation to modify a

30:47.095 --> 30:50.617
starting compound to arrive at the claim compound. So this is,

30:50.665 --> 30:54.852
I mean, I think this is interesting and this is possibly

30:55.032 --> 30:58.417
partially where the gray area and confusion comes

30:58.465 --> 31:01.992
from. Is that's basically exactly the opposite of what KSR

31:02.052 --> 31:05.662
says? Right? No motivation is needed.

31:05.725 --> 31:08.902
And they say, well, no, in some cases a motivation is needed.

31:09.070 --> 31:12.547
So here's an example of this case. I think we actually have covered this

31:12.580 --> 31:15.747
one before. The ESI versus Dr. Reddy's Laboratory.

31:15.792 --> 31:20.382
Inteva. Tiva Pharmaceuticals. The CASC

31:20.547 --> 31:24.582
found soapprozole

31:24.672 --> 31:27.582
was known from the art and a very similar compound,

31:27.672 --> 31:31.917
Leperazole, was claimed. And interestingly

31:31.977 --> 31:35.322
again, the known compound was halogenated,

31:35.367 --> 31:39.012
had those three fluorine down there on the right bottom corner.

31:39.162 --> 31:42.877
But the claim compound did not have the

31:42.895 --> 31:46.942
fluorine, was not halogen needed. And so the CASC again found

31:47.140 --> 31:51.072
did not find any motivation in the art to substitute the active groups.

31:51.192 --> 31:55.122
And quote from that case, the record shows no discernible

31:55.167 --> 31:58.822
reason for a skilled artist. And to begin with, the lens soap resolve only to

31:58.855 --> 32:02.307
drop the very feature, the fluorinated substituent

32:02.397 --> 32:06.217
that gave this advantage advantageous property.

32:06.415 --> 32:10.492
So, you know, this kind of again, to me this shows that

32:10.690 --> 32:14.277
if someone had described this class of compounds

32:14.307 --> 32:17.872
and said it could be halogenated, but by the way, it doesn't have to be

32:17.905 --> 32:20.932
halogenated, it can have this group at the end, it could have that. Because it

32:20.935 --> 32:24.342
could have a metal, it can have that. I think there's a reasonable

32:24.402 --> 32:28.312
pretty good chance that this case

32:28.375 --> 32:31.497
specifically would have come out differently.

32:31.617 --> 32:35.127
But since it's

32:35.157 --> 32:39.217
acknowledged that these fields are unpredictable and small changes

32:39.415 --> 32:43.767
can change the efficacy in ways that are not easy to discern

32:43.827 --> 32:47.152
beforehand, bias one skilled in the art. This was this

32:47.170 --> 32:50.917
was deemed non obvious. And again, I think it's a good

32:50.965 --> 32:54.457
illustrative example when you think about enablement. How do you enable a

32:54.460 --> 32:58.377
class of compounds to have all kinds of different groups

32:58.407 --> 33:02.182
at the end? And not only I think and this is where

33:02.335 --> 33:07.177
you're getting into possibly what

33:07.195 --> 33:10.387
I was going to say is not technically the best

33:10.450 --> 33:13.617
case, but this way the best case you would have not only you would describe

33:13.677 --> 33:17.737
structures you'd also describe how to synthesize all of those and

33:17.800 --> 33:21.012
that they would still have biological efficacy,

33:21.087 --> 33:23.542
which, if you think about it, in this case, it's a pretty high bar.

33:23.665 --> 33:27.127
How do you know if it's going to be an antipsychotic or not?

33:27.295 --> 33:30.442
So it makes it pretty difficult for people to just

33:30.640 --> 33:34.297
claim a whole bunch of compounds without actually going through and having

33:34.330 --> 33:38.347
the data. I think that's where sometimes this is equated with

33:38.380 --> 33:42.487
experimental data. I think that's an example of how experimental data

33:42.550 --> 33:46.737
can be required almost at some point in order to really fully enable

33:46.812 --> 33:51.142
something. So if you do enable something in your spec like that,

33:51.265 --> 33:54.702
you have what you need, but you also have some description

33:54.732 --> 33:58.302
for some things that are not exactly fully covered

33:58.407 --> 34:01.262
correctly. They're just kind of listed elements.

34:01.987 --> 34:05.825
What about arguments around unexpected results? If you have

34:06.712 --> 34:10.312
data in your spec that isn't necessarily talked

34:10.375 --> 34:14.092
about, but it's put in there as experimental data,

34:14.290 --> 34:17.857
can you make those arguments and come out

34:17.935 --> 34:21.412
on top? Are you asking would that data possibly be

34:21.475 --> 34:25.477
enabling or those it

34:25.495 --> 34:27.350
could be. I think it comes out of the case.

34:29.662 --> 34:33.292
Do you really need experimental data to prove that

34:33.340 --> 34:37.362
something has antipsychotic effects? This is an ulcer

34:37.437 --> 34:39.200
to pre ulcers, right?

34:41.442 --> 34:45.427
A it's good question. Do you actually need to prove it

34:45.445 --> 34:47.975
with experimental data, or is a statement enough?

34:49.987 --> 34:53.697
Okay. Yeah. I mean, I only ask because when I get into that territory,

34:53.742 --> 34:57.132
I actually think this is the worst possible thing I could be arguing.

34:57.222 --> 35:00.262
But it's all I have. Right, right, exactly.

35:00.400 --> 35:03.757
And I think especially some of the later cases are going

35:03.760 --> 35:07.327
to see things exactly in that camp where

35:07.495 --> 35:10.962
there was a couple of things that were described really well, but the claim

35:11.037 --> 35:14.982
language was broader and covered things that weren't described

35:14.997 --> 35:18.282
that well, and they were invalidated for lack

35:18.297 --> 35:22.392
of enablement. So I think it's definitely something like you said in the specification

35:22.527 --> 35:26.022
and making sure the description is good, but then really looking at the claim language

35:26.067 --> 35:30.142
and being like, what how broad is this and what

35:30.190 --> 35:33.050
should we go after? What do we really have here?

35:34.762 --> 35:38.617
Okay, I'd almost argue that I mean, it seems to me

35:38.740 --> 35:42.050
lately that statements are not enough in the spec,

35:42.712 --> 35:46.177
which is a huge burden, arguably, for inventors and

35:46.195 --> 35:46.862
labs.

35:50.887 --> 35:54.097
You could argue their choice right. For how much broad coverage do you

35:54.130 --> 35:57.717
want. But if you have to have even just some kind of basic

35:57.777 --> 36:01.827
kind of data for a number of compounds that delays

36:01.932 --> 36:05.497
how quickly you can move for any one

36:05.605 --> 36:08.312
particular goal.

36:11.962 --> 36:15.022
It's exactly right. There are some

36:15.055 --> 36:18.897
some benefits to being able to claim

36:18.942 --> 36:22.252
something is an unexpected result or nonobvious, but there

36:22.270 --> 36:25.672
are some large burdens with having

36:25.705 --> 36:29.227
to have the data. And I've actually, maybe as a quick aside, I've talked

36:29.245 --> 36:32.677
to some scientists in this field that's particularly scientists at

36:32.695 --> 36:35.812
startup and small companies that are like, this is super

36:35.875 --> 36:39.882
important and I'm so glad that the system is like that. Otherwise Dow

36:39.897 --> 36:43.297
and Dupont would have patented everything already. They could just

36:43.330 --> 36:46.882
list giant lists of compounds and just patent them without

36:46.960 --> 36:50.300
having data, without knowing if they work. And so,

36:50.887 --> 36:54.427
yeah, there's pros and cons, I think. Yeah,

36:54.445 --> 36:57.202
I think that's really fair. I think that was some of what you saw in

36:57.220 --> 37:01.042
the early chemical arts too. Not from all the different compounds, but one

37:01.090 --> 37:04.977
compound that they found works for some kind of condition

37:05.157 --> 37:09.342
and then they would list like paragraphs of other conditions

37:09.402 --> 37:13.242
that were like so cursorly related to the target condition

37:13.377 --> 37:16.422
that you're like. You have no idea if this is going to work for Ms

37:16.467 --> 37:17.975
and that there it is.

37:20.287 --> 37:24.127
Right. I would

37:24.145 --> 37:27.667
imagine that an examiner during

37:27.715 --> 37:30.952
prosecution is not going to be able to answer all those questions.

37:31.120 --> 37:34.477
There's not enough time, there's not enough motivation for them to

37:34.495 --> 37:37.552
do that. I don't even know if it's really in their marching orders, within their

37:37.570 --> 37:40.747
scope. You know, those sort of things I feel like,

37:40.780 --> 37:42.812
are most often come up in litigation.

37:47.062 --> 37:49.187
So unpredictable arts,

37:50.437 --> 37:53.952
detailed description and supporting examples summarizing

37:53.982 --> 37:57.472
that if you want to claim a class of

37:57.505 --> 38:00.937
compounds, you need to make sure the class is enabled over the whole

38:01.075 --> 38:04.777
range. You're in full possession of the invention on

38:04.795 --> 38:08.197
the filing date. This is related to something that we were talking about and that

38:08.230 --> 38:11.962
the activity of the underlying claim compound is also present over

38:12.025 --> 38:15.802
the whole range claimed. And that's really key. Like the

38:15.820 --> 38:20.457
claim language gets to be very important. There's a couple of examples

38:20.472 --> 38:23.382
of this before I kind of finish up this section.

38:23.547 --> 38:27.042
Additional examples. There's Abby versus Jansson,

38:27.177 --> 38:30.742
which was invalidated a claim for a class of

38:30.790 --> 38:34.377
antibodies. And there was no structural definition in the claim,

38:34.557 --> 38:38.622
no structural definition in the patent at all, only defined

38:38.667 --> 38:42.442
functionally in terms of certain dissociation constants at a certain

38:42.490 --> 38:45.717
binding sites. And the quote there was the claim scope

38:45.777 --> 38:48.847
reaches beyond what the inventors have contributed to the

38:48.880 --> 38:52.702
art. Right. This is the grand bargain in

38:52.720 --> 38:56.497
a way. You teach the world how to make and use something

38:56.680 --> 38:59.982
in exchange for a limited amount of exclusivity.

39:00.072 --> 39:04.192
So that after the patent term expires, you've now contributed something

39:04.240 --> 39:08.137
to the world. Whereas if you don't enable something

39:08.275 --> 39:11.842
now, you aren't really holding up your end of the bargain. And then

39:11.890 --> 39:15.972
therefore no patent for you. And Ya

39:16.017 --> 39:19.872
vs. Abbott. In a similar case, there was a broad genus

39:19.917 --> 39:22.737
claim with only one supported single compound.

39:22.887 --> 39:27.177
And what the opinion

39:27.207 --> 39:31.262
said in this case, and these are 20 13, 20, 14 cases, slightly more recent.

39:32.137 --> 39:35.527
In that case, the skilled person would have had to synthesize and

39:35.545 --> 39:39.297
biologically evaluate thousands of compounds to see if they have the claim

39:39.342 --> 39:42.725
properties. So that in

39:43.312 --> 39:47.052
the CAFC's opinion, in this case, evaluating thousands

39:47.082 --> 39:50.647
of compounds was undo experimentation. Now, if you only

39:50.680 --> 39:54.022
had to do ten or five or 100, where is that

39:54.055 --> 39:56.947
line exactly? I think it's hard to say. I think it may be case by

39:56.980 --> 40:00.552
case in some ways, but oh, and that was the Rapamycin

40:00.582 --> 40:03.852
case, which I think we've also talked about in other meetings

40:03.882 --> 40:07.402
that we have had. So, okay, talked a lot

40:07.420 --> 40:11.592
about the pitfalls, what to do, what do we do in unpredictable

40:11.652 --> 40:14.687
arts? I think in the specification,

40:15.262 --> 40:18.667
cover as much breads as possible with examples and data,

40:18.865 --> 40:22.417
both synthesis and activity, and also provide

40:22.465 --> 40:26.602
guidance in the description how to extrapolate from the examples given

40:26.695 --> 40:29.782
to the remaining scope. And now we're going to

40:29.785 --> 40:33.562
shift into emerging technologies. But another thing that's as

40:33.625 --> 40:36.457
important here, this is more I think this one really covers what to do in

40:36.460 --> 40:40.657
the specification, in the claims. It's really important to

40:40.810 --> 40:45.072
pick phrases and to claim things that are enabled.

40:45.117 --> 40:48.877
Think about the genus claim and all

40:48.895 --> 40:52.147
the species that go underneath that sort of a claim and are they really

40:52.180 --> 40:55.552
all enabled? If not, maybe you're better off with some kind of a

40:55.570 --> 40:59.197
marqueous group or narrowing in some other way

40:59.230 --> 41:00.875
to make sure that it is.

41:02.962 --> 41:06.387
So that was predictable and unpredictable.

41:06.462 --> 41:09.622
Biological and chemicals are really the main examples there.

41:09.805 --> 41:14.142
Emerging technologies is similar, it's a lot of overlated concepts,

41:14.202 --> 41:18.067
but it's a bit different in that the question here is

41:18.115 --> 41:21.672
how much does this patent specification rely on the knowledge

41:21.792 --> 41:24.817
of a person of ordinary skill in the art to

41:24.865 --> 41:29.152
provide support for certain claimed embodiments? If a technology

41:29.245 --> 41:33.172
is very new, there may be very little information

41:33.280 --> 41:36.637
out in the field and a positor in that field may actually

41:36.700 --> 41:38.912
not have very much knowledge.

41:39.712 --> 41:43.347
So you need to err on the side of disclosing

41:43.392 --> 41:46.717
more disclosing, more enablement. How is this

41:46.765 --> 41:49.925
made? All the different components that go into something

41:50.287 --> 41:54.172
naturally that can create a tension between a company's desire to

41:54.205 --> 41:57.457
protect valuable trade secrets versus the need to provide

41:57.535 --> 41:59.462
and enabling disclosure.

42:00.562 --> 42:03.897
So what is an emerging

42:03.942 --> 42:08.162
technology? It's hard to define.

42:08.962 --> 42:12.312
We'll go through some examples which I think are very illustrative,

42:12.462 --> 42:15.502
but even in the

42:15.520 --> 42:19.797
previous case it's a little bit difficult. It was unpredictable

42:19.842 --> 42:23.487
arts, it's a little bit difficult to know exactly how much enablement is necessary.

42:23.637 --> 42:27.447
Similar kind of questions occur here from a different perspective,

42:27.567 --> 42:31.237
not so much unpredictability. But if it's so

42:31.300 --> 42:34.702
new, there might not be a lot of information out there. You might need to

42:34.720 --> 42:39.072
put a little bit more background, a little bit more enablement

42:39.192 --> 42:43.177
of different components. And things like that of your systems than

42:43.195 --> 42:46.342
you would otherwise. So as we've been talking

42:46.390 --> 42:49.722
about and this is that predictable arts,

42:49.767 --> 42:53.917
historically predictable arts can be enabled by a single example.

42:54.115 --> 42:57.667
This was a landmark case in 1987 with which

42:57.715 --> 43:01.372
as spectrophysics versus coherent where they had where this was

43:01.405 --> 43:05.457
established. New fields, however, even if they're predictable,

43:05.547 --> 43:09.102
may not rely on knowledge of a positive to satisfy

43:09.132 --> 43:11.387
disclosure obligations to the same extent.

43:12.487 --> 43:15.747
And the example we're going to go through in a minute here is automotive

43:15.792 --> 43:19.612
Technologies versus BMW, which was the 2006

43:19.675 --> 43:22.912
case. And there's actually

43:22.975 --> 43:26.900
some recent cases from 2018 to 2019 which

43:27.562 --> 43:31.347
also deal with some newer

43:31.392 --> 43:36.547
emerging technologies and how

43:36.580 --> 43:40.647
to enable that such that a positive can make and use the entire claim

43:40.692 --> 43:43.362
scope without undo experimentation.

43:43.512 --> 43:47.242
So there's a couple of cases on that as well

43:47.290 --> 43:50.872
that I've listed there. But to

43:50.905 --> 43:54.282
dive into this automotive Technologies

43:54.372 --> 43:57.922
case, because I think it's very interesting, goes back,

43:57.955 --> 44:01.177
this was a 2006 decision, but the application

44:01.270 --> 44:05.422
was filed in 1092 in this case, found all

44:05.455 --> 44:09.477
claims in balance due to that lack of enablement. And it dealt

44:09.507 --> 44:13.297
with crash sensing devices in cars. So when

44:13.330 --> 44:17.247
airbags were deployed in 92, airbag deployment

44:17.292 --> 44:20.225
sensors were arguably still an emerging technology.

44:20.662 --> 44:24.352
And what's interesting in this case is that I have

44:24.370 --> 44:27.472
this claim on the next slide. There was a broad claim which covered a lot

44:27.505 --> 44:31.587
of different embodiments. The specification

44:31.737 --> 44:35.247
described an embodiment of the device utilizing a mechanical sensor

44:35.292 --> 44:38.797
in considerable detail. You can see those I pulled out some figures on the right

44:38.830 --> 44:42.567
there from the actual patent and all different kinds of mechanical

44:42.627 --> 44:46.557
sensors were shown. It also described using an electronic sensor,

44:46.572 --> 44:50.225
but included less detail, no figures and

44:50.587 --> 44:53.600
only a paragraph or two of explanation of that.

44:54.637 --> 44:57.937
I think this is even the thing that sticks out of my mind the most.

44:58.075 --> 45:01.632
At trial, an expert testified

45:01.722 --> 45:05.017
that a positive could use off the shelf components and well

45:05.065 --> 45:09.217
known circuit design and programming to create everything

45:09.340 --> 45:13.702
within the claimed scope. And I don't think that there was any argument about that.

45:13.795 --> 45:17.127
Off the shelf components, welldesigned circuit design, well known circuit

45:17.157 --> 45:20.827
design and programming, there was no

45:20.845 --> 45:23.437
argument about that. That was true.

45:23.575 --> 45:27.577
However, the CISC still said

45:27.670 --> 45:31.402
it was invalid due to lack of enablement. Because you look

45:31.420 --> 45:34.887
at this claim, the claim is a side impact

45:34.962 --> 45:39.142
crash sensor. It has a housing, it has a mass and then C

45:39.265 --> 45:43.327
means responsive to the motion of said mass upon acceleration of

45:43.345 --> 45:47.497
said housing in excess of a prefrontal threshold for initiating an

45:47.530 --> 45:50.827
occupant protection apparatus. So really all the

45:50.845 --> 45:55.012
claims said is means for initiating this

45:55.150 --> 45:59.047
airbag system. And they described in detail some

45:59.230 --> 46:02.572
possible ways to do that mechanically, but there are a lot of different

46:02.605 --> 46:05.932
ways to do that and they hadn't enabled all of them in the

46:05.935 --> 46:09.350
specification. Even though the

46:09.787 --> 46:13.447
sort of vague, let's say the minimal description that they

46:13.630 --> 46:17.452
did include could have been made using

46:17.620 --> 46:21.022
off the shelf components. It's still the

46:21.055 --> 46:24.852
claim language, I feel like really hurt them in this case. It was so broad

46:24.957 --> 46:28.747
and their disclosure was really focused in one area that they

46:28.780 --> 46:31.112
ended up losing the entire patent.

46:33.412 --> 46:37.057
Any comments about that one? This to

46:37.060 --> 46:41.047
me was very interesting and I thought it

46:41.080 --> 46:45.867
made me think a little differently about alternative

46:45.927 --> 46:49.497
embodiments. A client may have a main kind of angle

46:49.542 --> 46:53.442
that they're going after, described really well, all kinds of mechanical drawings,

46:53.577 --> 46:56.907
but you can also do it these other ways. If it's

46:56.922 --> 47:00.562
an emerging technology, if there's not a lot of information out there

47:00.625 --> 47:02.750
about the general space,

47:03.712 --> 47:07.632
having a broad claim that covers everything could be risky.

47:07.722 --> 47:11.307
You may want to one or the other narrow the claim

47:11.397 --> 47:14.952
or beef up the description of the other embodiments,

47:14.982 --> 47:18.427
even if you're like. This is all off the shelf. This is all known in

47:18.445 --> 47:21.832
this case, at least in the automotive technology case, that would have made a

47:21.835 --> 47:25.132
big difference. I think this kind of surprises me,

47:25.285 --> 47:29.752
honestly, because it does to me, this seems like a but

47:29.770 --> 47:33.800
I guess I would agree that the claim hurt them. But if you

47:34.687 --> 47:38.300
just think about the spec, it seems kind of crazy.

47:40.612 --> 47:44.137
I would consider this pretty highly predictable art,

47:44.200 --> 47:47.587
right? Yes. Emerging, but highly predictable. So it seems

47:47.650 --> 47:50.997
a little and if Kristin has anything coming from the more predictable

47:51.042 --> 47:54.772
side of the world, if you have any thoughts does this surprise you or

47:54.955 --> 47:58.327
whatever? Is it really just the problem of the claims? They went

47:58.420 --> 48:01.722
a little too crazy with the claims? Well, it surprised

48:01.767 --> 48:05.112
me because it's back from 92 and that in six they decided

48:05.187 --> 48:08.697
that this was why this was too broad

48:08.742 --> 48:11.675
and this was how we were going to knock this out of the water.

48:12.412 --> 48:15.532
That seems like a lot of time and a lot of tech time too,

48:15.610 --> 48:18.142
including electronics development. Right.

48:18.265 --> 48:22.047
Chips, semiconductors, etc. And so that's

48:22.092 --> 48:26.407
peculiar. But when you look at the claim language itself, it really

48:26.485 --> 48:30.800
is quite broad. And so when you begin to use a means

48:32.287 --> 48:36.587
responsive to the motion of the mass upon acceleration,

48:37.012 --> 48:40.642
that could be almost anything. So I guess

48:40.690 --> 48:43.972
what I do when I see claims like this and

48:44.005 --> 48:47.302
Ashley can attest to this because I'm always asking her, hey,

48:47.470 --> 48:50.062
do you know this could read on this, this or this?

48:50.125 --> 48:54.577
And she does the same to me. And it

48:54.595 --> 48:58.487
just makes you remember that be really careful,

49:00.187 --> 49:03.547
don't try to claim a cardboard cooler when you're really

49:03.580 --> 49:07.392
trying to claim a freezing device right. With all the electronics

49:07.452 --> 49:10.897
and what not. So even though this is a

49:10.930 --> 49:14.347
great first claim and a first idea

49:14.455 --> 49:17.977
of this is everything that's needed, you do have to ask yourself as

49:17.995 --> 49:21.847
a practitioner, as you go through just the claim that you

49:21.880 --> 49:25.252
wrote, what else does this read on? How else could

49:25.270 --> 49:28.897
this be taken? Because this to me, there's a lot

49:28.930 --> 49:32.107
of things that this could be. I think

49:32.185 --> 49:35.812
some of the other problem too that I've been realizing is I think

49:35.950 --> 49:39.597
there is this like ideal that everybody has that I want this really broad

49:39.642 --> 49:43.612
claim and blah, blah, blah. But honestly, the best and I think

49:43.750 --> 49:47.122
your presentation Dave, is kind of hitting at this, that the

49:47.155 --> 49:50.632
best claim is really one that is

49:50.710 --> 49:54.397
narrow to the product that you are developing that

49:54.430 --> 49:57.132
has significant commercial, patient,

49:57.297 --> 50:00.962
clinical, whatever impact, but is broad

50:01.462 --> 50:03.875
in every other aspect. Right.

50:05.812 --> 50:08.937
Like Chris and I have talked about this before. Like every catheter,

50:09.012 --> 50:12.427
for example, has X features. So you don't need to

50:12.445 --> 50:16.700
go nitty gritty in every single feature that every single catheter has.

50:17.287 --> 50:20.722
But is there one thing of your catheter that

50:20.755 --> 50:24.582
has clinical efficacy? Okay, so claim that narrowly,

50:24.747 --> 50:28.722
not crazy narrow, but within reason, and then leave everything else broad

50:28.767 --> 50:32.437
because at the end of the day, competitors are going to copy that

50:32.500 --> 50:35.472
one thing and stick it on their own catheter.

50:35.517 --> 50:37.927
That may be slightly different, but again, like a cater to the cabinet or the

50:37.945 --> 50:42.897
catheter, generally speaking. So keeping that in mind that broad

50:42.942 --> 50:45.275
claims aren't actually all they're cracked up to be.

50:45.787 --> 50:49.252
Yeah. What's the invention in a

50:49.270 --> 50:53.637
way, right? Yeah, exactly. Don't get lost in this lofty.

50:53.712 --> 50:56.837
And I think it's hard because I think market pressures, investors,

50:57.937 --> 51:02.067
all these things have this pressure on companies. You have to have this broad

51:02.127 --> 51:06.027
claim. It's like, well, but is that really the good decision

51:06.207 --> 51:10.550
or does that just look good on paper but ends up causing problems later?

51:11.512 --> 51:15.247
Yeah, that's exactly what this whole investigation has

51:15.280 --> 51:18.457
exactly made me start thinking of that way too. And I feel like in a

51:18.460 --> 51:21.517
way, this is something that I don't know,

51:21.640 --> 51:26.302
I've always thought this way and in some ways this is like I

51:26.320 --> 51:28.492
want to look at the prior art and I want to make sure that whatever

51:28.540 --> 51:31.702
we're claiming doesn't read on something in the art. And this is giving me

51:31.720 --> 51:34.332
another kind of perspective on it. I want to make sure that what we're claiming

51:34.347 --> 51:37.717
is actually also enabled, that we've taught someone

51:37.765 --> 51:40.972
how to make and use everything within the scope of this

51:41.005 --> 51:43.747
claim. Yeah.

51:43.855 --> 51:47.000
And I will tell you, even if a larger company

51:47.362 --> 51:51.087
got this broad claim, it's really typical

51:51.162 --> 51:55.042
of large companies who have a lot of money to spend on it to

51:55.090 --> 51:58.252
say, great, we got this nice broad claim, let's go a different direction with it,

51:58.270 --> 52:02.237
in a couple of continuations, just to protect the original.

52:02.662 --> 52:06.427
If for some reason like this happened, the original has gone away,

52:06.520 --> 52:07.175
Right.

52:12.187 --> 52:15.612
Very similar case actually. Dream or Citric?

52:15.762 --> 52:19.702
Individual inventor versus DreamWorks. Again, all claims were found in

52:19.720 --> 52:23.322
value due to lack of enablement. The claim

52:23.517 --> 52:27.327
was describing using integrating a user's

52:27.432 --> 52:31.677
audio or visual signal into a preexisting video game or movie.

52:31.857 --> 52:35.392
And the specification was 99%

52:35.440 --> 52:39.772
about video games. And then they also kind of mentioned movies and

52:39.880 --> 52:44.225
that's again, what hurt him here. The district court essentially said that

52:48.337 --> 52:52.672
it was lack of enablement as to movies but they didn't even

52:52.780 --> 52:56.062
talk about whether it would have been enabled for video

52:56.125 --> 53:00.522
games. And again, here's the claim language which it's

53:00.567 --> 53:05.197
just that the presentation output and

53:05.230 --> 53:08.902
it's this presentation output was vague and

53:08.995 --> 53:12.307
if it was a video game that may have gotten through, but since it

53:12.310 --> 53:16.102
was vague and movies and other types of presentation outputs were

53:16.120 --> 53:19.252
not enabled, it was invalidated. It's a very kind of

53:19.270 --> 53:23.450
similar thing. And so what to do in

53:23.812 --> 53:26.997
emerging arts and unpredictable arts.

53:27.042 --> 53:30.627
Again, cover as much breadth as possible with examples, provide guidance

53:30.657 --> 53:34.187
on how to extrapolate and additionally,

53:34.837 --> 53:37.712
I would say for emerging technologies,

53:38.137 --> 53:41.617
which will, as we've talked about,

53:41.665 --> 53:45.382
may be a little difficult to define precisely. But if

53:45.385 --> 53:49.332
you're working in a field that is relatively new, err on the side of describing

53:49.422 --> 53:52.897
things more completely, if even if something is off

53:52.930 --> 53:56.262
the shelf or a component or a circuit, it should be known,

53:56.412 --> 54:00.575
you know, in the description. Having a little bit more description in there

54:02.962 --> 54:06.887
would probably be a worthwhile use of resources.

54:07.687 --> 54:10.897
And then carefully consider the scope of the

54:10.930 --> 54:14.600
claim terms being construed and make sure that

54:15.637 --> 54:18.952
the bread is really this goal in the Goldilock situation. It's not

54:18.970 --> 54:23.077
too broad. It's not too narrow, but it's broad enough

54:23.170 --> 54:25.852
that I art is not going to read on it and it's narrow enough that

54:25.870 --> 54:29.557
it's going to be enabled. And then I

54:29.560 --> 54:33.667
think another thing that we often talk about with clients, but maybe even

54:33.715 --> 54:37.297
more applicable here is maybe

54:37.405 --> 54:40.942
in certain cases in order to fully enable something, you're going to have to give

54:40.990 --> 54:45.622
up too much. You're going to have to describe too many process

54:45.730 --> 54:49.422
parameters and other things that would not be reverse engineer

54:49.467 --> 54:53.527
able and therefore might be better kept as a

54:53.545 --> 54:57.007
trade secret rather than going into a claim in a

54:57.010 --> 54:57.662
patent.

55:00.112 --> 55:04.107
David, quick question. What's your thoughts

55:04.197 --> 55:08.825
on I just lost my train of thought on

55:09.862 --> 55:13.475
oh, pointing. So let's say you are an emerging field, right?

55:13.837 --> 55:18.672
What are your thoughts or have you seen pointing

55:18.717 --> 55:21.712
to some art? Like,

55:21.775 --> 55:25.402
maybe not, like pointing to you. Like, here's the perfect car to

55:25.420 --> 55:29.127
do exactly the same thing. Because ideally, that's not the case, especially with emerging.

55:29.157 --> 55:32.722
But pointing to certain art somewhere in the

55:32.755 --> 55:36.097
background that kind of lays the groundwork for this new emerging field

55:36.130 --> 55:39.322
to kind of set the stage that this is

55:39.355 --> 55:43.250
the shoulders that we're stepping on. And here's the state of it.

55:43.987 --> 55:47.150
Have you seen that or would you recommend that?

55:49.462 --> 55:53.077
Great question. More or less, I guess that's what some of the

55:53.095 --> 55:56.237
articles that I was reading were advising.

55:56.587 --> 55:59.257
Not in so many words, more between the lines, I guess.

55:59.335 --> 56:02.692
But yeah, from these last few cases especially,

56:02.890 --> 56:05.450
I think like, okay,

56:06.262 --> 56:09.622
it's 1992. Your average car,

56:09.655 --> 56:13.267
maybe no car has ever had an airbag in it so this is something new.

56:13.390 --> 56:17.152
And they said to themselves, everybody knows how to use an

56:17.170 --> 56:19.707
electronic circuit to trigger a squib,

56:19.797 --> 56:24.027
to then explode an airbag

56:24.057 --> 56:28.017
or whatever. But I think that they miscalculated.

56:28.077 --> 56:31.372
And I think what they would have been better served by doing would be,

56:31.555 --> 56:35.772
hey, this is a new system or sub system, and also here's

56:35.817 --> 56:39.537
a circuit, here's a chip that you can use to control a squib,

56:39.612 --> 56:42.007
or you could do it this way, or you can do it that way.

56:42.160 --> 56:45.672
Even though I think they were just relying

56:45.717 --> 56:49.327
too much on the

56:49.345 --> 56:52.627
prior art and not explicitly stating how to

56:52.645 --> 56:55.250
make it. How to make it, how to use it.

56:57.562 --> 57:00.882
Yeah. I think oftentimes when I've

57:00.897 --> 57:04.597
been in this situation and other people I've heard say if

57:04.630 --> 57:08.602
it's in the art, if you can point to a

57:08.620 --> 57:12.127
textbook, let's say, that has this information in it, then you don't really need

57:12.145 --> 57:15.297
to describe it in detail. And I think in some cases,

57:15.342 --> 57:19.062
it might actually be okay. Sure. In many cases

57:19.137 --> 57:22.332
it's probably good advice. And in some cases, though, in emerging fields,

57:22.347 --> 57:25.792
you might want to go that extra little bit and describe a little bit more,

57:25.840 --> 57:28.957
even if you're like, someone should know this.

57:29.110 --> 57:32.087
So I don't think hurts to be a little more comprehensive.

57:32.962 --> 57:35.617
Yes, I think it's one of those cases where this shouldn't be the case.

57:35.665 --> 57:39.237
I think it is. You have to remember your audience. And the audience isn't

57:39.312 --> 57:42.652
just the

57:42.670 --> 57:46.147
inventors, it's really the courts. And I

57:46.180 --> 57:49.897
would argue that historically, judges and things like that have

57:49.930 --> 57:53.857
not been as technology savvy as maybe they should be to be weighing in

57:53.935 --> 57:57.202
on these topics. So I think you have to kind of

57:57.220 --> 58:01.452
remember your audience to some degree. Yes, patents are supposed to be written

58:01.482 --> 58:04.852
for one of skill in the art, but I think they

58:04.870 --> 58:08.122
also need to be read for judges and attorneys and things like that that

58:08.155 --> 58:11.262
maybe aren't as skilled as a positive.

58:11.412 --> 58:14.692
So I think that's kind of the weird balancing I strike, too, is that,

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yes, it's written for positive, but it's also written for people who need to interpret

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it and make judgments on it when they're not a

58:21.385 --> 58:25.177
positive. Good point. Yeah, that makes sense.

58:25.270 --> 58:28.862
Absolutely. Well, and from my perspective,

58:29.287 --> 58:33.592
I never put prior art specific content

58:33.790 --> 58:37.432
in my spec. I never point to,

58:37.585 --> 58:40.747
like, in this patent or like in that textbook or as

58:40.780 --> 58:44.152
well known in whatever, if I need to say something like that in

58:44.170 --> 58:47.932
order to not, first, denigrate the art and second, tie myself

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to that piece of art like I do in

58:51.385 --> 58:54.772
Europe. Right. European style summaries have that they want

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to know the closest prior art and then begin at your invention.

58:58.512 --> 59:01.792
But I never do that. I was taught to never do that. It could only

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hurt you from a

59:05.515 --> 59:08.977
well, look at this disclosure. It talks about this and you've covered this and

59:08.995 --> 59:12.247
said, this is new. But this other disclosure talks about it even

59:12.280 --> 59:15.097
though it doesn't do exactly what you say, it talks about it. And that could

59:15.130 --> 59:18.502
just be a slippery slope. So what

59:18.520 --> 59:21.887
I do is I say conventional systems

59:22.387 --> 59:25.927
such as blah, blah, blah, perform this,

59:26.095 --> 59:29.652
and the claim to subject matter or the disclosure

59:29.682 --> 59:33.327
discarded herein does this instead or provides

59:33.357 --> 59:36.502
this improvement over conventional systems. And so

59:36.520 --> 59:40.072
if you seeded in that language, even the courts who go looking for things

59:40.105 --> 59:44.150
in your specification to either help you or harm you

59:45.262 --> 59:48.597
can lean on that. And they can say, well, look, this is what conventional

59:48.642 --> 59:51.877
systems do and make sure that's accurate, by the way. You can't just

59:51.895 --> 59:55.477
make it up. And what they're doing in

59:55.495 --> 59:57.950
this invention is quite different. And this is why.

59:58.912 --> 1:00:02.757
Right. The more you can lean on technical problems, technical effects,

1:00:02.922 --> 1:00:05.375
technical solution, the better you are.

1:00:06.712 --> 1:00:10.297
And like you said, not characterizing the prior art or

1:00:10.330 --> 1:00:14.002
any specific reference. Yeah, and then

1:00:14.020 --> 1:00:17.442
the other thing I had to add was just for a practice

1:00:17.502 --> 1:00:21.127
tip and things that I think as a draft in

1:00:21.145 --> 1:00:25.112
order to make sure everything is described fully in your specification.

1:00:25.762 --> 1:00:28.850
So let's take your example with the movie and the video game.

1:00:29.812 --> 1:00:33.717
If you are ever tempted to put a comma delimited

1:00:33.777 --> 1:00:37.867
list of something in your specification that should

1:00:37.915 --> 1:00:41.677
trigger you to think, do I really want to just list these things? Is there

1:00:41.695 --> 1:00:45.942
anything important in here where they should be broken out into single sentences

1:00:46.077 --> 1:00:49.752
or examples thoroughly done in full paragraph

1:00:49.782 --> 1:00:53.527
form, interesting? Or is it really okay to be a list? It's just a

1:00:53.545 --> 1:00:57.097
trigger and I don't always do it. It's a lazy thing

1:00:57.130 --> 1:01:00.442
that as practitioners and drafters, we just kind of go, yeah,

1:01:00.490 --> 1:01:03.350
and this and this and this and this, and move on. Right.

1:01:04.162 --> 1:01:07.702
But I do try to make myself think

1:01:07.870 --> 1:01:11.872
if there's something in that list I really should dive into instead of just

1:01:12.055 --> 1:01:15.350
list. Yeah. How similar are they really,

1:01:16.312 --> 1:01:20.047
that the list prevails? Or are you shoving things

1:01:20.080 --> 1:01:23.227
into a list that yeah, maybe shouldn't be?

1:01:23.395 --> 1:01:27.232
Yes, because we all do it. You take a

1:01:27.235 --> 1:01:30.362
shortcut because you're like, I am so done with this concept.

1:01:32.587 --> 1:01:34.325
20 chemicals in,

1:01:38.362 --> 1:01:41.287
you can't think of anything else you're like, yeah, at least the three. That's good.

1:01:41.350 --> 1:01:45.050
And maybe those three things should have been three paragraphs, not three words.

1:01:46.612 --> 1:01:50.352
Right. Exactly. Well, this is cool, Dave, I appreciate

1:01:50.382 --> 1:01:53.647
it. And now I know more about the LIGO. Now I have to go

1:01:53.680 --> 1:01:58.267
see one of those next

1:01:58.315 --> 1:02:01.477
meeting. I'll do a presentation on LIGO. I've got lots of slides on

1:02:01.495 --> 1:02:03.725
that. That's cool. Yes.

1:02:05.212 --> 1:02:07.550
Our son is really getting into space.

1:02:09.112 --> 1:02:11.827
We are going to go to NASA in two days. We went a couple of

1:02:11.845 --> 1:02:15.552
years ago, but he was too little to appreciate it. But yeah, so it's

1:02:15.582 --> 1:02:19.437
just we start seeing these huge centers

1:02:19.512 --> 1:02:23.587
set up to measure phenomena that are crazy

1:02:23.650 --> 1:02:25.775
far away. It's cool to see.

1:02:26.662 --> 1:02:29.692
When I send her a presentation, I'll send a link to a really short video

1:02:29.815 --> 1:02:36.132
that they made in kind of explaining

1:02:36.147 --> 1:02:39.472
what LIGO is and the great discovery that they made and everything.

1:02:39.580 --> 1:02:43.102
And, like, all the people in the video are people that I

1:02:43.120 --> 1:02:46.612
worked with when I was in grad school. So pretty fun.

1:02:46.750 --> 1:02:47.837
Superstar.

1:02:50.587 --> 1:02:54.650
Hundreds of people worked on it. Right. But it was still a great project.

1:02:55.537 --> 1:02:58.777
That's cool. That's like one of those

1:02:58.870 --> 1:03:01.775
grad school projects that you don't have to market very hard.

1:03:05.437 --> 1:03:09.112
Thank you, David. I really appreciate I appreciate you going into enough chemical detail

1:03:09.175 --> 1:03:12.562
that my high school chemistry and maybe one class of chemistry in college

1:03:12.625 --> 1:03:16.602
got me there. Thank you. The flooring.

1:03:16.707 --> 1:03:23.527
I got the halogen group. I got that awesome.

1:03:23.620 --> 1:03:27.397
Great. Thanks. All right, well, thanks again,

1:03:27.430 --> 1:03:30.157
Dan, and everybody, I guess, have the rest of the rest of your week.

1:03:30.310 --> 1:03:33.952
Thank you, Ashley. Enjoy your time. I will soak up some sun for

1:03:33.970 --> 1:03:37.717
all of you, I promise. All right,

1:03:37.765 --> 1:03:41.377
take care. Have a great week. Bye. All right, that's all

1:03:41.395 --> 1:03:45.397
for today, folks. Thanks for listening, and remember to check us out@aurorapatins.com

1:03:45.430 --> 1:03:49.662
for more great podcasts, blogs, and videos covering all things patent strategy.

1:03:49.737 --> 1:03:52.147
And if you're an agent or attorney and would like to be part of the

1:03:52.180 --> 1:03:56.002
discussion or an inventor with a topic you'd like to hear discussed, email us at

1:03:56.020 --> 1:03:59.827
podcast@aurorapatins.com. Do remember that this podcast does

1:03:59.845 --> 1:04:03.300
not constitute legal advice, and until next time, keep calm and patent on.