FEATURE
Careful Wording Makes for Broad Fintech Patent Claims By MICHAEL YOUNG, MATTHEW KARAS, LUKE MACDONALD AND CHRIS JOHNS
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atents are made of words, and the claims of a patent define its scope: the invention/activities that others are legally excluded from practicing. During an infringement suit or administrative proceeding, e.g., an inter partes review before the Patent Trials and Appeals Board (PTAB), claim words spark intense interpretive debates during a process known as “claim construction.” The construction of a term or phrase can sink or float a patent infringement action. Moreover, even simple terms like “automatically” can generate these debates. In this article, we consider recent cases to
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provide tips for aspiring and current fintech patent owners seeking to cover infringing activities while avoiding patent invalidity. Patent owners usually seek broad claim scope to allege infringement, while defendants typically argue for narrow constructions to avoid it. Defendants often also contend a term is indefinite and that vague or ambiguous words fail to put the public on notice of claim scope. A district court judge or PTAB panel decides the ultimate construction, which often drives downstream infringement and validity outcomes. First, some good news: Standard terms often need no construction.
NOVEMBER 2022
For example, district courts and the PTAB recently declined to construe common fintech terms like “personal identification number,” “point of sale system” and “trading system.” Patents can therefore use such terms to preserve broad claim scope with lower risk of indefiniteness. But be careful. Many terms have no standard definition, so well-written specifications should broadly define each claim term while describing it in context using plenty of examples. Examples help breathe life into the claims and, when explicitly presented in the specification as only examples, do not limit claim scope. For instance, in Blue Spike LLC et al. v. Grande Communications, Inc., the Eastern District of Texas recently found “agreed upon purchase value” is not limited to a bandwidth-focused definition because it was merely one of several examples. By maintaining broader claim scope driven through a well-written specification, patent owners can force more favorable settlements or increase their odds of proving infringement at trial. Detailed explanations are even important for seemingly innocuous words, including terms of degree like “maximizing,” “substantially” or “not fully.” Even when the specification describes these terms, courts may deem it impossible to tell whether an activity reaches the claimed BACK TO CONTENTS
