i.e. v. e.g. Rule 1 during arguments: If you re losing, start correcting their grammar. - Author Unknown

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1 BIOTECH BUZZ Biotech Patent Education Subcommittee April 2015 Contributor: Jennifer A. Fleischer i.e. v. e.g. Rule 1 during arguments: If you re losing, start correcting their grammar. - Author Unknown Perhaps in no other profession is the written language more scrutinized than in the practice of law. In patent litigation, the selection of certain words (or abbreviations) used in drafting a patent application can have desirable consequences as well as troublesome results. The abbreviations, "i.e." and "e.g.," are widely used in drafting patent applications. "I.e.," an abbreviation for the Latin phrase, id est, means "that is" or "in other words." "E.g." is the abbreviation for the Latin phrase, exempli gratia and means "for example." This seems simple enough, however, mixing up these abbreviations when drafting a patent can cause issues if the patent is litigated. Jeffery G. Sheldon, in his book, "How to Write a Patent Application," cautions against using "i.e." unless the patent drafter intends to use the language that follows to define a term. He further explains that if the author wishes to list examples, then "e.g." is the safer language to use. Sheldon's advice is based, in part, on the Federal Circuit case, Dealertrack v. Huber. In Dealertrack v. Huber, the Federal Circuit concluded, inter alia (yet another Latin phrase which means, "among other things"), that "i.e." was used in the specification of Dealertrack's U.S. Patent 6,587,841 to give examples, despite its definitional meaning. The invention in Dealertrack v. Huber covered a computer program that received credit application information from an applicant, processed the information to conform to the banks' application formatting and forwarded the applications to the banks over electronic networks so that the applicant wouldn't have to fill out and submit separate applications for different banks. Dealertrack sued Appellees, David L. Huber, Finance Express, LLC and RouteOne, in district court for infringement of three of its patents, including the '841 patent. Appellees filed four summary judgment motions, one of

2 which claimed non-infringement of all asserted claims of the '841 Patent based on their proposed claim construction of the limitation, "routing." The district court agreed with Appellees claim construction of the term, routing and granted summary judgment. Dealertrack appealed. On appeal, Appellees argued that "routing" necessarily included that the user can select the "sequencing (order) and timing" of credit applications being sent to the banks and that the district court erred by construing the phrase as, "sending or forwarding by a particular route." The accused device only allows users to select one or more banks in which to send their credit applications and not the order in which their program sends the applications to the banks. Therefore, Appellees argued, there can be no infringement of claims that require "routing" or selecting the sequence (order) and timing of credit applications being sent. Appellees tried to convince the district court of their proposed claim construction by arguing that the '841 Patent defines "routing" as "sequencing (order) and timing" when describing the preferred embodiment: As already mentioned, the present invention provides flexibility in funding source selection, and routing, i.e., sequencing and timing. Dealer selected defaults for source and routing are provided at installation, but can be overridden on a caseby-case basis. In block 146, a funding source (or sources) is selected to send the credit application, along with credit bureau information, if applicable. If multiple sources are to receive the credit application, then the timing and order of sending is also selected, that is, the routing of the credit application. Routing selections include one funding source at a time in sequence until a positive decision is returned or until a set time has elapsed (conditional), or all funding sources at once (shot-gunning), for example. '841 Patent col.22 II (emphases added). Specifically, Appellees argued that in the context of the patent, the "i.e." and "that is" phrases were used to define "routing," and cited Abbott Labs v. Novopharm Ltd., 323 F.3d 1324, 1327, 1330 (Fed. Cir 2003). Dealertrack disagreed and argued that the specification repeatedly described "routing" as sending an application to one bank, in which case the user would not choose the sequence or order of applications being sent. Furthermore, Dealertrack argued, the '841 Patent describes the ability of the user to "shotgun" their applications to banks. When this feature is selected, all of the applications are sent at the same time, again removing the need for the user to select the timing and order. Dealertrack also responded that their specification describes routing as performing alternative functions and that, " in the context of the patent as a whole, see Pfizer, Inc. v. Teva Pharms., USA, Inc., 429 F.3d 1364, (Fed. Cir. 2005), the i.e. phrase was not used definitionally." The Federal Circuit agreed with Dealertrack. However, Dealertrack got lucky because there was no logical way, given the nature of the invention, that the i.e. used in their patent could have excluded the feature that was present in the Appellees program, namely the instance where the user only selects one bank. Indeed, the court

3 found several examples where the limitation, routing, was described as forwarding a credit application to at least one bank. In cases where one bank is selected, there is no selecting the sequence and timing of applications being sent to the banks. The court stated: The only way that the i.e. in this patent could be read definitionally is if it excluded from the claim scope the embodiments discussed throughout the claim where only a single funding source is selected. This is rarely, if ever, correct. Pfizer, 429 F.3d at Moreover, the most natural reading of the i.e. here is as citing examples, which, as discussed by the district court, is the way it was used throughout the specification in other contexts. See Claim Construction, at 6 (citing 403 Patent col.10 ll.41-44) ( I.e. as used in this patent.... appears to supply examples. For instance, the patent refers to selecting the funding sources for a type of credit application, i.e., finance versus lease, A quality versus B & C quality. ). This is precisely the type of contextual analysis we required in Pfizer, in determining whether the patentee s use of i.e. was definitional. 429 F.3d at (requiring consideration of written description as a whole and concluding that i.e. as used in the specification was not definitional because of inconsistent usage in the specification). It is necessary to consider the specification as a whole, and to read all portions of the written description, if possible, in a manner that renders the patent internally consistent. Id. at 1373 (citing Budde v. Harley-Davidson, Inc., 250 F.3d 1369, (Fed. Cir. 2001)). Here, internal consistency can only be achieved by reading i.e. as exemplary. Under that reading, sequencing (order) and timing is a species of routing, achieved when the user selects more than one funding source, and the general construction of routing incorporates both that species and the species of routing involving the sending of application data to a single funding source and shotgunning to all sources at once. The district court s construction of routing as sending or forwarding by a particular route adequately maintains consistency in the patent in a way that a definitional reading of i.e. would not. Although technically Dealertrack used i.e. incorrectly, their patent was drafted with enough detail to allow the Federal Circuit to interpret the invention the way Dealertrack intended it to be defined. This is not always the case, however. In Interval Licensing LLC v. AOL, Inc. (Fed. Cir. 2014) (Interval v. AOL), Interval asked the Federal Circuit to reverse the district court s holding that the claim phrase, in an unobtrusive manner that does not distract a user, was indefinite. Unfortunately for Interval, its patent was not drafted with a clear definition of what constitutes unobtrusive manner, and therefore, the Federal Circuit was unable to comply with Interval s request. Unlike Dealertrack, Interval was unable to convince the Federal Circuit that although it used the incorrect phrase (in this case it was argued that "e.g." preceded a definition of Interval's subjective term, "unobtrusive manner"), the patent supported what was really intended.

4 Interval s patents-in-suit, U.S. 6,034,652 and U.S. 6,788,314, were directed to an attention manager for occupying the peripheral attention of a person in the vicinity of a display device. The invention, acquires data from a content provider, schedules the display of the content data, generates images from the content data, and then displays the images in a device. Interval argued that the patent specification provided a clear definition of the highly subjective term, unobtrusive manner, as recited in representative claim 1 (emphasis added): 1. A method for engaging the peripheral attention of a person in the vicinity of a display device, comprising the steps of: providing one or more sets of content data to a content display system associated with the display device and located entirely in the same physical location as the display device; providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data; and auditing the display of sets of content data by the content display system; wherein the one or more sets of content data are selected from a plurality of sets of content data, each set being provided by an associated content provider, wherein each associated content provider is located in a different physical location than at least one other content provider and each content provider provides its content data to the content display system independently of each other content provider and without the content data being aggregated at a common physical location remote from the content display system prior to being provided to the content display system, and wherein for each set the respective content provider may provide scheduling instructions tailored to the set of content data to control at least one of the duration, sequencing, and timing of the display of said image or images generated from the set of content data. The Federal Circuit used the Supreme Court s Nautilus Inc. v. Biosig Instruments decision for guidance regarding the requirement for definiteness under 35 U.S.C. 112, second paragraph, stating: A claim fails to satisfy this statutory requirement and is thus invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Luckily for patent practitioners, the Supreme Court does not require exactitude, stating in Nautilus that, absolute precision in claim language is unattainable. However, this will only get a practitioner so far, especially if the rest of the specification does not provide a clear description of the scope of the invention. To get the Federal

5 Circuit to reverse the district court s finding of indefiniteness, Interval needed to show that its patent provided objective boundaries for the scope of its highly subjective term of degree, unobtrusive manner. As the district court observed, whether something distracts a user from his primary interaction depends on the preferences of the particular user and the circumstances under which any single user interacts with the display. Interval argued that the necessary clarity could be found if the court adopted a narrow example from the specification. This argument was unsuccessful because the narrow example from the specification was indeed an example, rather than a definition. That example lies in the Summary of the Invention, which explains that information can be presented in an unobtrusive manner that does not distract the user from the primary interaction with the apparatus (e.g., the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus). 652 patent, 2:15 19 (emphasis added). If the patent drafter would have used the phrase that indicates definition, i.e., instead of the phrase that indicates an example, e.g., it may have helped provide the necessary clarity. We recognize that a patent which defines a claim phrase through examples may satisfy the definiteness requirement. See, e.g., Enzo Biochem, 599 F.3d at 1336 (holding that not interfering substantially is sufficiently definite because one of skill in the art could use the examples in the specification to determine whether interference with hybridization is substantial ). In this case, however, we decline to cull out a single e.g. phrase from a lengthy written description to serve as the exclusive definition of a facially subjective claim term. See Nautilus, 134 S. Ct. at 2130 (disfavoring post hoc efforts to ascribe some meaning to a patent s claims ). Had the phrase been cast as a definition instead of as an example if the phrase had been preceded by i.e. instead of e.g. then it would help provide the clarity that the specification lacks. But as the specification is written, we agree with the district court that a person of ordinary skill in the art would not understand the e.g. phrase to constitute an exclusive definition of unobtrusive manner that does not distract a user. See Interval, 2013 WL , at *4. With this lone example, a skilled artisan is still left to wonder what other forms of display are unobtrusive and non-distracting. What if a displayed image takes up 20% of the screen space occupied by the primary application with which the user is interacting? Is the image unobtrusive? The specification offers no indication, thus leaving the skilled artisan to consult the unpredictable vagaries of any one person s opinion. In the end, it may be safer for a patent drafter to just simply write out, in other words and for example to avoid getting into trouble with their boss, i.e., fired.

6 Nothing herein should be construed as legal advice or legal representation. Click here for an expanded disclaimer. Jennifer A. Fleischer is a patent attorney at the boutique IP firm, O Banion & Ritchey LLP in Sacramento, CA. She specializes in patent prosecution in the life sciences field, where she worked for over four years developing cancer vaccines for a biotech company.