Note: Although these CLE courses discuss a book that has questions at the end of each chapter, you do not have to answer those questions to obtain lawyer CLE credit. You need only watch the videos and enter a code displayed in the video for each CLE credit hour.
The following text is a rough transcription of the audio from the above video. The above video is discussing the Specification Map Process which is subject matter covered in some CLE courses. If your specific course gives a link to this Specification Map Process, then the above video, and the below discussion, will help you understand what is covered in the Specification Map Process. Once registered, you will need to watch videos in the course and enter a verification code for as many videos as you decide to watch. Verification is one of the requirements for continuing legal education (CLE) in most states. You will enter the verification codes for each hour you watch.
There is a “feedback survey” so you can give feedback about the course and there is a “contact us” function available if you have any questions. The course covers the patent Specification Map process as discussed below including legal process design. Most courses also include ethics materials and the length and subject matter covered will vary based upon the requirements of a particular state. See Patent Law CLE Courses Listed By State.
The video reviews the Specification Map Process Course which is the second of four courses taught in a book called Legal Process Design: Patent Invalidity and Infringement Analysis. Legal Process design is defined as the orchestration of resources to produce well defined high quality deliverables according to be repeatable, trainable, measurable and scalable processes.
The introduction starts with a discussion of the qualifications of the author, the intended lawyer audience, and how to use business design to eliminate risk. The introduction gives an example of how legal process design is different from the more common law practice. The introduction then provides an overview of the structure of the book as shown in this figure.
Structure of Book
The book starts with priority law course 100. The book then teaches patent invalidity analysis 200, followed by the patent infringement analysis 300. Invalidity analysis includes the specification map/chart process (this) course 220 and the reference chart process course 260. The two search processes (240, 320) are not covered in the book because search techniques are more technical in nature and not eligible for lawyer CLE in many states.
Again, this course is the Specification Map/Chart Process course, and the other courses are described in more detail at the above courses link.
Each course includes the process documents including the law checklists, the process steps, quality metrics, deliverable templates, and project plans. These are fully designed, functional processes that have been designed to develop work-product. It is not just a analysis of law but it is a law in practice course.
Remember, this book is intended to show you an example legal process design. So the examples are intended to cover everything a new lawyer on your team would need to learn to perform these four designed processes–priority law, specification charts, prior art reference charts, and infringement evidence charts. Not all team members will need all of this information, but to be complete, the process design includes it. Again, this course covers only the Specification Map/Chart Process section of the book.
Pareto Analysis and Law: 80-20 Rule: Legal Process Design
In pareto analysis, also called the 80-20 rule, you select the 20% of issues expected to come up over a defined set of case that generate 80% of the benefits available to your client. That is why you need an expert patent lawyer overseeing the process. The expert needs to monitor the process and issue spot the issues not covered in these processes that provide the final 20% of benefits available to the client. For that level of patent law knowledge, use tools like Chisum, Westlaw, and Lexis. These processes are scalable because they focus on a subset of issues that arise most often.
The Specification Chart Process/Course (Picture)
This Specification Map Course is covered in Chapters 17 through Chapter 29 of the book, Legal Process Design: Patent Invalidity and Infringement Analysis. Before discussing chapter content, we will look at the process documents developed for the Specification Map Process Course. Although the process documents total 68 pages, we will show you only a few of those in the following discussion.
As shown, the process documents for this course include:
- Sample Completed Project Plan
- Sample Completed Specification Chart
- Specification Chart Process Document
- §102(a)/¶1 Checklist
- §102(b)/¶2 Checklist
- §101 Checklist
- §101 Flow Chart
- Prosecution History Checklist
- Claim Construction Checklist
- Sample Comments for Specification Charts
- Quality Metrics for Specification Chart Process
- Instructions for Chart Tables
The Sample Completed Project Plan includes the dates of deliverables in terms of first and final drafts, along with contact information for the parties working on the project.
The Sample Completed Specification Chart is the main deliverable or work-product created during this process. I am providing only a few sample sections to give you an idea of what this process creates.
Top of page 1 of: The Sample Completed Specification Chart
Bottom of page 2 of: The Sample Completed Specification Chart
Top of page 3 of: The Sample Completed Specification Chart
The above Specification Chart maps support for each claim in the patent specification to the claim language in order to determine whether the statutory requirements for patentability have been met, such a written description and enablement (§102(a)/¶1), claim definiteness (§102(b)/¶2), and subject matter eligibility §101. Further, the fourth column in the specification map is used to note any issues spotted regarding written description, enablement, claim definiteness, subject matter eligibility, claim construction, prosecution history estoppel (argument and amendment estoppel).
The Specification Map Process Document describes the inputs to and outputs from the process, and lists the process documents that are reference during process execution, such as §102(a)/¶1 Checklist, §102(b)/¶2 Checklist, §101 Checklist, §101 Flow Chart, Prosecution History Checklist, Claim Construction Checklist, and Sample Comments for Specification Charts.
The Specification Chart Process Document also describes each step of the process and provides tips for executing those steps. These are dynamic documents that are updated periodically as new law is created and as new mistakes uncover what needs to be added to the process. These are living documents.
These are sample sections from the documents. Hopefully enough to get you to enroll in the course and learn more about the process.
Once the claims indicated by the report requesting lawyer have been mapped, the process directs the process performing lawyer or expert to make observations from the process checklists.
Here is a diagram explaining the process flow.
Each issue checklist includes a general information section before drilling down in to the details of the issues selected using the 80-20 Rule. To give you an idea of the issues covered in the §102(a)/¶1 Checklist, here are the first few pages of the 7 page checklist:
112(a)/¶1 Checklist
35 U.S.C. 112 Specification.
112(a): IN GENERAL.–The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
112(f): ELEMENT IN CLAIM FOR A COMBINATION.–An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Written Description Test: [Possession Test] To satisfy the written description requirement, a patent specification must describe the invention (explicitly or inherently) in sufficient detail such that one skilled in the art can reasonably conclude that the inventor had possession of the invention–as now claimed, at the time of the [earliest] filing date needed. Vas-Cath Inc. v. Mahurkar, 935 F. 2d 1555, Fed. Cir. 1991.
General Idea: Although always relevant, the written description requirement more typically comes into play where claims or amendments not presented with the original application are presented later, or when applicant seeks the benefit of the filing date of an earlier-filed application under 35 U.S.C. § 119 or § 120. The question is whether the application provides adequate support for each claim in its present/issued form. It has also been analyzed in terms of whether the new claims or amendments introduce new matter under 35 U.S.C. § 132, that is not supported by the original application or with continuity of disclosure through the family chain to the earliest priority filing date.
The Invention: For purposes of the written description inquiry, “the invention” is what is now claimed. One claim of the application may have written description support, while another does not. Each claim is considered separately. Vas-Cath.
Obviousness–Not Enough: One shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations. It is not enough if the now claimed invention is merely obvious in light of what is described. The description must explicitly or inherently describe what is claimed. Entitlement to a filing date extends only to subject matter disclosed (explicitly or inherently) and not to that which is merely obvious in light of what was disclosed. Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed.Cir.1997).
Explicit versus Inherent Support: In order for a subject matter which is not explicitly disclosed to be considered inherent in what was disclosed, the missing descriptive matter must “necessarily be present” in the original application’s specification such that one skilled in the art would recognize it is necessarily present. The probability or likelihood of its presence is not enough. Vas-Cath.
Non-literal Support: Neither the application [nor earlier filed family members] need to describe the claimed subject matter in exactly the same terms as used in the claims. It is enough if they contain an equivalent description of the claimed subject matter. Lockwood.
Level of Descriptive Detail (New/Unconventional): The description need only describe in detail that which is new or not conventional. MPEP 2163.
Original Claims: Since original claims are part of the original disclosure, many will satisfy their own written description requirement. Although many original claims will satisfy their own written description requirement, certain claims may not. That is why §112(a) is always at issue even when a claim issues as filed. Ariad v. Eli (Fed. Cir. March 22, 2010).
Drawings: The drawings alone may even satisfy the written description test for a claim. Drawings or otherwise, the possession test applies. Vas-Cath.
Support Universe: It is now well accepted that a satisfactory description may be in the claims or any other portion of the originally filed specification, drawings, etc. MPEP 2163.
Continuity of Disclosure: In order to gain the benefit of the filing date of an earlier filed family member under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112. Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed.Cir.1997).
Claim Broader Than Support: A process claim directed to any method of creating a claim element lacks written description support when only one way of creating that element is described. LizardTech v. ERM, 424 F.3d 1336. However, apparatus claims do not need to recite the method used to make the apparatus, and the specification need not disclose more than one way of making that apparatus. RCT v. Microsoft, 627 F.3d 859 (2010).
Genus Claim Support: The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species. … representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. MPEP 2163.05
Lexicographer: If the patentee acts as his own lexicographer and assigns a term a unique definition that is different from its ordinary and customary meaning, then the specification and/or PH must clearly express the patentee’s intent and expressly contain the unique definition of the disputed claim term. Laryngeal Mask v. Ambu, 618 F.3d 1367 (2010). However, an after filing-date explicit definition in PH without proper support likely creates “new matter” issues.
Interrelationship of hardware and software: It should be recognized that sufficiency of disclosure issues in computer cases necessarily will require an inquiry into both the sufficiency of the disclosed hardware as well as the disclosed software due to the interrelationship and interdependence of computer hardware and software. MPEP 2161.01.
Limiting Descriptions: A statement in a specification that describes the invention as a whole can support a limiting construction of a claim term. That is especially true where, as here, other statements and illustrations in the patent are consistent with the limiting description. American Piledriving v. Geoquip, 637 F. 3d 1324 (2011).
To give you an idea of the issues covered in the §102(b)/¶2 Checklist, here is the top of page 2 of the page checklist:
There are three other checklist in this process not shown. The §101 Checklist, the Prosecution History Checklist, and the Claim Construction Checklist. There is also the §101 Flow Chart presently used by the patent office (not shown here),
There is also a Sample Comments for Specification Maps document which gives sample comments for issues spotted in the checklists. These help new lawyers and experts spot and note issues in the fourth column of the specification map.
There is also Quality Metrics for the Specification Chart Process that a supervisory lawyer uses to verify process quality and conformance. There are 69 pages of process documents total.
Chapter Summary
The process documents define what legal issues are within scope as determined by the 80-20 Rule, but they do not teach those issues. They expect the lawyer performing the process to understand what they mean. The process documents do contain links to controlling authority for most issues, but process execution time is too late to learn the issues if any efficiency is desired.
Thus, to be complete, the designed process includes Chapters 17 through Chapter 32 which are used to teach the process. Here is a short summary of what each chapter teaches:
Chapter 17 provides an introduction and overview for the Specification Chart Process. As discussed in the Introduction, the Specification Chart Process is one of four processes required to complete a patent invalidity and infringement study. The Specification Chart is followed by the Reference Search Process, the Reference Chart Process, the Infringement Evidence Search Process, and the Infringement Chart Process. The chapter also introduces the main steps performed in the Specification Chart Process.
Chapter 18 will increase your familiarity and comfort with accessing and reading the MPEP as well as develop your understanding of issues that will be present in the §112(a)/¶1 Checklist.
Chapter 19 takes what we have read so far in the last two chapters and adds a few other issues that we haven’t had time to read about yet, and asks the reader to study the §102(a)/¶1 Checklist.
Chapter 20 refers to Nautilus v. Biosig and develops more the §102(b)/¶2 Checklist. The chapter also provides a link to the oral arguments made in Nautilus by John Vandenburg of Klarquist.
Chapter 21 introduces the §102(b)/¶2 Checklist and verifies user understanding.
Chapter 22 introduces prosecution history issues. The prosecution history is used in the claim construction phase to construe the meaning of claims, but it is also used in a distinctly different way during infringement analysis where it is used to limit equivalents available under the doctrine of equivalents. Prosecution history estoppel is a judge made doctrine based in fairness where the judge will stop the patentee from making a first set of representations or amendments to the Examiner to get the patent issued, and then take a contrary position in court about the meaning of the claims when trying to prove infringement with respect to an equivalence.
Chapter 23 teaches more on prosecution history estoppel.
Chapter 24 introduces the prosecution history checklist and verifies reader understanding.
Chapter 25 introduces claim construction which is carried out in what lawyers affectionately call a “Markman Hearing.” This is the beginning of what will become the claim constructions checklist for this course.
Chapter 26 more on claim construction issues.
Chapter 27 introduces issues arising in the context of subject matter eligibility §101.
Chapter 28 introduces the §101 Checklist.
Chapter 29 introduces specification map process documents.
Chapter 30 provides more on specification map process documents.
Chapter 31 discusses issuing spotting with the checklists and using the sample comments document.
Chapter 32 reviews the quality metrics for specification maps.
As always, there are many examples to help the reader identify when exceptions apply.