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Intellectual Property Issues for High Tech Companies
Vol 4 Issue 2 February 2004

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Need Help Finding The Right Word?

It's All "About" Your Claims

Tip of the Month

IP Links of Interest

On-Line Patent Glossary

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Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)

Welcome!!

How much is one word worth? To BJ Services Corporation the word "about" was worth $98.1 million!

The language of patents is the language of precision, but sometimes, as engineers, we know that our inventions aren't "exact". Most physical systems are not binary - working for one particular combination of parameters but failing with the slightest deviation from the prescription. So how do you capture your invention in an imprecise world? To understand why your patent attorney may ask you for ranges of values for the details in your invention, read It's All "About" Your Claims.

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  • Need Help Finding The Right Word?
  • TechRoadmap combines technical expertise with patent experience to function as your Director of Intellectual Property. We work closely with your patent attorney to translate your technology into the language of patents.

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  • It's All "About" Your Claims

  • The patent law states that you must claim your invention with exactitude so other people, of ordinary skill in your field of endeavor, can understand what they are prohibited from making and what is okay to make. You also have to explain in detail how to make your invention, that is, to "enable" it (to allow others to make your invention later and to show that you actually have done it yourself). But most inventions will work with wide variations in many parameters, making these patent law requirements hard for engineers to deal with. There may not even be a single, well defined performance maximum to claim. When describing these inventions, many inventors want to use "words of degree" like "greater", "smaller", or that favorite, "about".

    In a case recently before the Court of Appeals for the Federal Circuit, Halliburton Energy Services was looking for relief from a $98.1 million infringement judgment awarded to BJ Services. Halliburton's case was that a BJ's claim including the words "having a [concentration] of about 0.06 percent by weight" was too imprecise to be valid. The claim, Halliburton said, did not "particularly [point] out and distinctly [claim]" the invention, since "about" could be a range of any size: what percentage was part of the invention and what was not? This question was not without merit, since the inventors had to distinguish themselves from the prior art in which a percentage of about 0.2 was used.

    Halliburton also argued that the specification failed to "enable" the invention because it did not explain under what conditions to measure the concentration in question or how to relate "about 0.06 percent" to the measurement technique.

    The original trial jury and the Appeals Court rejected these arguments. BJ had expert witnesses and a textbook that confirmed that the appropriate measurement technique was known to anyone of ordinary skill in the field; Halliburton did not call its expert to testify. Furthermore, with Halliburton's concurrence, the trial jury was instructed to give "about 0.06" its plain and ordinary meaning. Apparently the jury had taken high school chemistry and understood "about" to mean within typical experimental error and to follow rounding rules for precision.

    Although BJ Services prevailed and is $98 million richer for its efforts, the whole infringement suit might have been avoided had BJ included their textbook measurement method evidence as a reference in their patent and defined ranges for the concentration to show what "about" meant.

    Read this article on line.

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  • Tip of the Month
  • Be extremely careful when using "words of degree" in your patent, particularly in the claims:
    • When possible, use ranges - There is nothing indefinite about a range but an infringer might try operating just outside the range. Try making the range so large that performance suffers outside the range. Include dependent claims that narrow the range.
    • Use your specification to define your words of degree: - Explain why you can't claim an exact number. Is there a measurement precision/accuracy problem? Is the value arbitrary within a wide band? Is it interaction with other parameters?
    • Explicitly state your preferred value - Often, the preferred or nominal value for the parameter is the object of the modifier "about". It's better to identify the value as the nominal or preferred value and then indicate the range over which it may vary.
    On-line version of the Tip of the Month

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  • IP Links of Interest
  • US Patent office - Searchable database of all US Patents and, now, published patent applications.
    The Patent Cafe - an on-line source of interesting insights into current IP issues.
    EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  • Industry's Best Glossary
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    Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.

     
     


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