Broad Claiming in Nanotechnology Patents: Is Litigation…

   Broad Claiming in Nanotechnology Patents:
           Is Litigation Inevitable?


             SEAN O'NEILL, KIRK HERMANN,
      MARLENE KLEIN, JEFF LANDES and RAJ BAWA


                                                  ABSTRACT

     Nanotechnology is expected to faciliate great advances in energy, materials and medicine.
Inventors, corporations, and governments are staking their claims to the rapidly-growing body of
nanotechnology intellectual property. Patents are issuing with far-reaching rights, leading some to
question the validity and scope of these patents. Concerns are arising on potentially overlapping patent
claims in some sectors of nanotechnology. Contributing to the problem of patent overlap is the use of
broad terms in the claims of nanotechnology patents. Clarification as to the meaning of the claim terms
is sometimes available in the specification portion of the patent. The prosecution history of the patent
application may also clarify the meaning of nanotechnology claim terms. The USPTO's recent creation
of a new art classification system for nanotechnology and the development of standardized
nanotechnology terminology is reducing the ambiguity regarding claim terms and thereby eliminating
some of the uncertainty regarding ownership rights to nanotechnology.





  Sean O'Neill is an intellectual property attorney at the firm of Stetina Brunda Garred & Brucker P.C. located in
Aliso Viejo, California. His practice focuses on patent prosecution and litigation of mechanical, biomedical and
telecommunications inventions and counseling on patent strategies for start-ups and established companies. He can
be reached at soneill@stetinalaw.com.

   Kirk Hermann is an intellectual property attorney at the firm of Shimokaji & Associates located in Irvine,
California. His practice covers all aspects of intellectual property law and focuses on electrical, optical, and
software patent prosecution and litigation. He can be reached at khermann@shimokaji.com.

    Marlene Klein is a Senior Patent Attorney at Canon U.S.A. located in Irvine, California. Her practice covers all
aspects of intellectual property law, primarily focusing on patent prosecution and corporate contracts. She can be
reached at marlene.klein@cda.canon.com.

    Jeff Landes is Patent Counsel at a pharmaceutical company in San Diego, CA. His practice focuses on all
aspects of intellectual property law relating to pharmaceutical development and commercialization. He can be
reached at jlandes@san.rr.com.

     Dr. Raj Bawa, a microbiologist and biochemist, is president of Bawa Biotechnology Consulting, LLC, based in
Ashburn, Virginia and Schenectady, New York. The firm specializes in all aspects of biotechnology,
pharmaceutical, nanotechnology and chemical patent prosecution and patent searching. Dr. Bawa is a registered
patent agent and holds a faculty position at Rensselaer Polytechnic Institute in Troy, New York where he also serves
as advisor to the Office of Technology Commercialization. He can be reached at bawabio@aol.com.

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I.    INTRODUCTION



     T   here is enormous excitement surrounding the multidisciplinary field of nanotechnology.
         Nanotechnology continues to open up novel vistas of innovation ranging from the discovery of
         emergent properties arising at the quantum level to the finding of new wonder structures such as
nanotubes, quantum dots and diamondoids. Public and private entities across the globe are convinced of
nanotechnology's potential and are staking their claims. International rivalries are growing, political
alliances are forming and battle lines are being drawn.
       According to a recent report, governments, corporations and venture capitalists spent almost 10
billion U.S. dollars on nanotechnology R&D globally in 2006.1 This report predicts that by 2014, 2.6
trillion U.S. dollars in global manufactured goods (about 15% of the total global output) may include
nanotechnology in one form or another. Even at the time of this writing, it is estimated that there are
more than 300 nanotechnology-based consumer products in the marketplace.2

II. GROWING UNCERTAINTY REGARDING OWNERSHIP RIGHTS TO
    NANOTECHNOLOGY

     As scientists sort out and document the results of their research, corporate entities continue to seek
and carve out far-reaching patent rights in what is now a full scale patent "land grab."3
     As this trend unfolds, uncertainty is growing amongst researchers, developers, policy-makers and
investors regarding who really owns what particular swath of technology in the rapidly-expanding body
of nanotechnology intellectual property.4 Some fear that the far-reaching patent rights provided by early
nanotechnology patents clearly overlap. Commentators, ranging from university experts to government
agencies, blame this trend of uncertainty and patent overlaps on problems at the U.S. Patent & Trademark
Office (USPTO), including a delay in implementing nanotechnology training for examiners.5 They
further point to the granting of patents of questionable validity and scope, as well as a growing backlog of
unexamined patent applications and increasingly lengthy periods for patent pendency as exacerbating this
uncertainty.5, 6 Add to this backdrop the limited number of judicial opinions on patents involving


1
    See Lux Research, Inc., Key Findings, THE NANOTECH REPORT (4th Ed. 2006), available at
http://www.luxresearchinc.com/reference.html (last visited Feb. 15, 2007).
2
    See Project on Emerging Nanotechnologies, The nanotechnology consumer products inventory (2006), available
at www.nanotechproject.org/consumerproducts (last visited Feb. 15, 2007).
3
    See, e.g., JOHN C. MILLER, ET AL., THE HANDBOOK OF NANOTECHNOLOGY BUSINESS, POLICY, AND
INTELLECTUAL PROPERTY LAW (Wiley 2005); Drew Harris, et al., Strategies for Resolving Patent Disputes Over
Nanoparticle Drug Delivery Systems, 1 NANOTECH L. & BUS. 373 (2004); Raj Bawa, Will the Nanomedicine
"Patent Land Grab" Thwart Commercialization? 1 NANOMEDICINE: NANOTECH., BIO. AND MED., 346, 346-350
(2005); Mark Van Lente, Building the New World of Nanotechnology, 38 CASE W. RES. J. INT. LAW 173, 173-215
(2006).
4
    See Lux Research, Inc., and Foley and Lardner LLP, Nanotech IP Battles Worth Fighting, (2006).
5
    See Vivik Koppikar, et al., Current Trends in Nanotech Patents: A View From Inside the Patent Office, 1
NANOTECH L. & BUS. 27 (2004); Bawa, supra note 3; Van Lente, supra note 3; Raj Bawa, Editorial - Patents and
Nanomedicine, NANOMEDICINE: NANOTECH., BIO. AND MED. (2007) (in press); Raj Bawa, Nanotechnology
Patenting in the US, 1 NANOTECH L. & BUS., 31, 31-50 (2004); Raj Bawa, Patenting Nanomedicine: A Catalyst for
Commercialization? 5 SMALL TIMES 16 (2005); AK Mittal, LD Kootz, Improvements Needed to Better Manage
Patent Office Automation and Address Workforce Challenges, Report GAO-05-1008T, United States Accountability
Office (2005).
6
    See, e.g., John Miller and Drew Harris, The Carbon Nanotube Patent Landscape, 3 NANOTECH L. & BUS. 427
(2006) (identifying images of carbon nanotubes from the 1970s and 1980s to raise questions of validity related to
patents held by IBM and NEC).

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nanotechnology7 and a lack of standardized terminology,8 and you have a patent landscape that is almost
impossible to navigate in certain nanotechnology sectors.
     This patent "land grab" mentality is also fueled by the relative lack of products and processes in the
marketplace which compels companies to demonstrate confidence by generating intellectual property in
order to convince venture capitalists to invest. In this regard, some companies are compelled to claim as
much IP as possible in their patent application out of fear that their competitors will beat them to the
punch.

III. COLLABORATION IN THE NANOTECHNOLOGY COMMUNITY TO SOLVE THE
     PROBLEM

      Efforts are underway to address many of these problems. Recently, along with the above-mentioned
nanotechnology-related training of examiners, the USPTO also created a separate art classification for
nanotechnology patents.9 The creation of Class 977 along with 263 new categories (i.e., sub-classes)
provides a place for organizing most nanotechnology-related subject matter and assists examiners in
classifying new disclosures and patents. Class 977 therefore aids in the search and examination of
nanotechnology-related patent applications. In addition, the creation of Class 977, although based on the
stricter NNI definition of nanotechnology, provides a much-needed tool by which attorneys and inventors
can locate U.S. nanotechnology patent documents.
      Additionally, experts in the field are collaborating to devise a first standard of nanotechnology
nomenclature.10 The development of a glossary of nanotechnology terms is occurring in the public sector
(e.g., USPTO) as well as in the private sector (e.g., Institute of Nanotechnology).11
     Still, uncertainty regarding the nanotechnology patent landscape and the validity of numerous issued
patents remains the norm.12 This is largely due to the nature of the nanotechnology patent "land grab"
with its concomitant use of very broad claim language. Prominent examples include the far reaching
claim language directed towards patents involving various types of nanoparticles and nanostructures.

IV. AN ACCURATE ASSESSMENT OF THE SCOPE OF CLAIM COVERAGE IS
    ESSENTIAL

     What is occurring is that patentees who are trying to protect inventions regarding specific types of
nanotechnology discoveries are not using specific terminology in their patent claims. Instead, their claims
include broad terms such as "nanoparticles" and/or "nanostructures." In some cases, the specific types of
nanostructure and/or nanoparticles (e.g., quantum dots, nanotubes, nanowires, nanocups, nanocones,


7
    See Andrew S. Baluch, et al., In re Kumar: The First Nanotech Patent Case in the Federal Circuit, 2 NANOTECH
L. & BUS. 342 (2005).
8
    See Charles Q. Choi, Nano World: Nano Patents in Conflict, (2005), available at
http://tech.monstersandcritics.com/columns/article_6611.php/Nano_World_Nano_Patents_in_Conflict (last visited
Feb. 15, 2007); Bawa, supra note 5, at 102.
9
    See Blaise Mouttet, Nanotech and The U.S. Patent & Trademark Office: The Birth of A Patent Class, 2
NANOTECH L. & BUS. 260 (2005).
10
     See American National Standards Institute, New Standard Terminology for Nanotechnology, (2006), available
at http://www.ansi.org/standards_activities/standards_boards_panels/nsp/overview.aspx?menuid=3 (last visited Feb.
15, 2007).
11
     See     Institute    of      Nanotechnology,       Glossary     of    Terms,     (2006),     available    at
http://www.nano.org.uk/nano/glossary.htm (last visited Feb. 15, 2007).
12
     See Ruben Serrato, et al., The Nanotech Intellectual Property Landscape, 2 NANOTECH L. & BUS. 150 (2005).

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nanoliposomes, nanoshells, nanocrystals, etc.) are ambiguously described in the "written description"
section of the patent.
     In drafting patent applications, the patent agent/attorney enjoys the freedom to act as their own
lexicographer, which means that they can define and use claim terms in any way they choose. However,
employing special or non-standard terms in the claims comes with the obvious risk that a court may
construe such terms with a meaning that was unintended by the applicant. Unless the special claim terms
are clearly defined in the specification, a court may apply an ordinary meaning such as the dictionary
definition of the term. This unintended construction of the claim term may harm the patent owner such as
in cases where a court finds non-infringement of the patent by a competitor's product.
     Because an accurate reading on the scope and breadth of individual patents is required to provide
effective counseling to clients on various IP issues such as infringement avoidance or in preparation for
licensing negotiations, the focus of this article is to address the efficacy of this approach to patenting
nanostructure discoveries.
     The United States Patent Act at 35 U.S.C. § 112 states that the quid pro quo for receiving a 20-year
monopoly on the invention claimed in a patent is the requirement that disclosure of the invention to the
general public is full and complete. 35 U.S.C. § 112, first paragraph, is recited as follows:
          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 so as to
          enable any person skilled in the art to which it pertains, or with which it is most clearly
          connected, to make and use the same, and shall set forth the best mode contemplated by
          the inventor of carrying out his invention.
      Thus, § 112, first paragraph, contains three distinct requirements for patentability: (1) a complete
written description13--setting forth the full and complete details of making and using the invention; (2)
enablement14--the specification must teach one skilled in the art how to make and use the full scope of
the invention without undue experimentation and (3) best mode15--of carrying out the claimed invention
known at the time of filing for a patent needs to be set forth. Although patents are presumed valid upon
issuance, a violation of any of these three requirements is grounds for a finding of invalidity of an issued
patent by a court in an infringement suit, or by the USPTO such as in a reexamination proceeding.

V. THE ROLE OF THE COURTS IN DETERMINING CLAIM SCOPE OF
   NANOTECHNOLOGY PATENTS

     Patents that have been deemed to comply with § 112 by the USPTO are frequently subjected to
claim interpretation by a court to determine their true scope. In a claim interpretation hearing, more
commonly known as a "Markman" hearing, a court will delineate the meaning of claim language.
Typically in these court proceedings, a judge, who is most likely a layperson with regard to the claimed
technology, makes a determination as to the claim scope. To do so, the judge first reviews the claim
terms for their intended meaning. In Phillips v. AWH Corp., the Court of Appeals for the Federal Circuit,
the circuit to which all district court patent cases are appealed, stated that claim terms are given the
meaning they have to one of ordinary skill in the art.16

13
    See Laurie A. Axford, Patent Drafting Considerations for Nanotechnology Inventions, 3 NANOTECH L. & BUS.
305 (2006).
14
    See Melissa D. Schwaller and Gaurav Goel, Getting Smaller: What Will Enablement of Nanotechnology
Require? 3 NANOTECH L. & BUS. 145 (2006).
15
    See Matthew J. Dowd, et al., Nanotechnology and the Best Mode, 2 NANOTECH L. & BUS. 238 (2005).
16
    See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).

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      Although terms of art undergo constant refinement in emerging technologies such as
nanotechnology, claim terms should be construed by first referring to intrinsic evidence, as reaffirmed by
the Phillips Court.17 Intrinsic evidence includes the claims, the specification and the prosecution history
of a patent application. If the meaning of a claim term is still unclear after referring to intrinsic evidence,
then extrinsic evidence may be consulted, for example, by referring to dictionaries and to relevant
technical treatises.
      Courts sometimes employ the doctrine of claim differentiation for clarifying the scope of coverage
provided by a patent claim. Under this doctrine, the use of different terms in different claims of the same
patent results in the claims having differing scopes of coverage.18 Although not a hard and fast rule that
is applied in every case, the doctrine prohibits the broadening of a claim beyond that which is disclosed in
the specification but also prohibits the narrowing of broad claims by incorporating limitations of narrower
claims.19 Perhaps most informative with respect to construing claims, the Phillips Court noted that the
specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term."20

VI. "NANOSTRUCTURE" CLAIM CONSTRUCTION EXAMPLES

1.    U.S. Patent No. 7,068,898
      Applying the above discussion regarding claim construction to U.S. Patent No. 7,068,898
(hereinafter "the `898 Nanosys patent"), entitled "Nanocomposites," issued on June 27, 2006 to Nanosys,
Inc., Claim 1 recites the following (with emphasis added):


         1. A composite material, comprising: a matrix; and one or more nanostructures, the one
         or more nanostructures each comprising a core and at least one shell, the core comprising
         a first semiconducting material having a conduction band and a valence band, the shell
         comprising a second semiconducting material having a conduction band and a valence
         band, and the first and second materials having a type II band offset.


     Dependent Claim 6 of the `898 Nanosys patent further narrows the nanostructure limitation of Claim
1 by reciting specific classes of nanostructures:


         6. A composite material as in claim 1, wherein the one or more nanostructures comprise
         one or more of: nanocrystals, nanowires, branched nanowires, or nanotetrapods.


      At first glance, Claim 1 of the `898 Nanosys patent appears to broadly cover all composite materials
comprising a matrix and nanostructures. As mentioned in the discussion above, the doctrine of claim
differentiation cannot be used to narrow the scope of coverage of Claim 1 by incorporating the
"nanostructure" limitations recited in Claim 6. However, clarification as to the meaning of the


17
      Id. at 1313.
18
     See Clearstream Wastewater Systems, Inc., v. Hydro-Action, Inc., 206 F.3d 1440 (Fed. Cir. 2000).
19
     See id.
20
     Phillips, 415 F.3d at 1315.

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"nanostructure" term in Claim 1 is available by referring to a "Definitions" section which the patentees
included in the specification of the `898 Nanosys patent and which is recited as follows (emphasis added):


        "A `nanostructure' is a structure having at least one region or characteristic dimension
        with a dimension of less than about 500 nm, e.g., less than about 200 nm, less than about
        100 nm, less than about 50 nm, or even less than about 20 nm. Typically, the region or
        characteristic dimension will be along the smallest axis of the structure. Examples of
        such structures include nanowires, nanorods, nanotubes, branched nanowires,
        nanotetrapods, tripods, bipods, nanocrystals, nanodots, quantum dots, nanoparticles, and
        the like. Nanostructures can be substantially homogeneous in material properties, or in
        certain embodiments can be heterogeneous (e.g. heterostructures). The nanostructures
        can be fabricated from essentially any convenient material or materials. The
        nanostructures can comprise `pure' materials, substantially pure materials, doped
        materials and the like, and can include insulators, conductors, and semiconductors. A
        nanostructure can optionally comprise one or more surface ligands (e.g., surfactants)."
        "A `nanoparticle' is any nanostructure having an aspect ratio less than about 1.5.
        Nanoparticles can be of any shape, and include, for example, nanocrystals, substantially
        spherical particles (having an aspect ratio of about 0.9 to about 1.2), and irregularly
        shaped particles. Nanoparticles can be amorphous, crystalline, partially crystalline,
        polycrystalline, or otherwise. Nanoparticles can be substantially homogeneous in
        material properties, or in certain embodiments can be heterogeneous (e.g.,
        heterostructures). The nanoparticles can be fabricated from essentially any convenient
        material or materials. The nanoparticles can comprise `pure' materials, substantially pure
        materials, doped materials and the like, and can include insulators, conductors, and
        semiconductors."


     As can be seen, the "Definitions" section further limits the size and configuration of "nanostructure"
covered in Claim 1. Under the description provided above, Claim 1 only covers composites having
"nanostructure" that have at least one dimension of less than 500 nm and which are exemplified in
configurations including nanowires, nanorods, nanotubes, branched nanowires, nanotetrapods, tripods,
bipods, nanocrystals, nanodots and quantum dots as well as nanoparticles having an aspect ratio less than
about 1.5. Further limitations on the configuration of "nanostructure" taught in the `898 Nanosys patent
include limitations on the material composition and arrangement of the nanostructure. Therefore, what
might initially appear to be an overly-broad claim element in Claim 1 may, in reality, provide a much
narrower scope of coverage to the independent claim.
     The prosecution history of the `898 Nanosys patent provides further clarification to the meaning of
the term "nanostructure" wherein the Examiner, in the first Office Action, issued a prior art rejection
against Claim 1 citing a reference that disclosed a particular type of nanowire. The prosecution history
indicates that the patentee overcame the rejection by pointing out that the cited reference disclosed only
longitudinal heterostructure nanowires and failed to disclose either core-shell nanostructures or
composites.
      The Examiner essentially reiterated the patentee's arguments in the "Reasons for Allowance" section
of the Notice of Allowance for the `898 Nanosys patent. In this regard, the prosecution history could be
interpreted as further clarifying (and narrowing) the meaning of the term "nanostructure" to specifically



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exclude longitudinal heterostructure nanowires from Claim 1 even though "heterostructures" are
specifically recited in the "Definitions" section of the specification of the `898 Nanosys patent.
2.   U.S. Patent 7,101,761
     In another example, the above-described methodology is applied to U.S. Patent No. 7,101,761
(hereinafter "the `761 Intel patent") entitled "Method of Fabricating Semiconductor Devices with
Replacement, Coaxial Gate Structure," issued on September 5, 2006 to Intel Corporation, wherein Claim
1 recites the term "nanostructure" as follows (emphasis added):


        1. A method comprising:
        providing a nanostructure covered on a substrate;
        oxidizing a first portion of the nanostructure to define a sacrificial layer between the
        substrate and a second portion of the nanostructure;
        forming a first support structure over the nanostructure;
        forming a second support structure over the nanostructure; and
        removing the sacrificial layer from the nanostructure such that second portion of the
        nanostructure is suspended a distance from a surface of the substrate between the first and
        second support structure.


     Dependent Claims 5 and 7 of the `761 Intel patent limit the nanostructure term of Claim 1 as
follows:


        5. The method of claim 1, wherein the nanostructure comprises a nanowire structure.
        7. The method of claim 1, wherein the nanostructure comprises a nanotube structure.


     Though Claim 1 of the `761 Intel patent appears to broadly cover various types of nanostructures,
under the doctrine of claim differentiation, the limitations of nanowire and nanotube recited in Claims 5
and 7 cannot be read into Claim 1 to narrow its scope. However, further clarification as to the meaning of
the "nanostructure" term of Claim 1 may be found by referring to the specification wherein the patentees
included the following paragraph (emphasis added) that sheds light on the breadth of the "nanostructure"
term:


      As used herein, the term nanostructure refers to any structure having a diameter less than
      about 50 nm, such as a nanowire or a nanotube. The term nanowire is used herein to
      describe any nanowires, including silicon nanowires. The term nanotube is used herein to
      describe any nanotubes, including single-walled or multiple-walled carbon nanotubes.


      Although the remainder of the written description of the `761 Intel patent defines no other specific
types of nanostructures other than those mentioned above (i.e., nanowires, nanotubes), it would appear
that the term "nanostructure" as recited in Claim 1 broadly includes "any structure having a diameter less

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than about 50 nm." The prosecution history of the `761 Intel patent provides no further clarification on
the type of nanostructure that is recited in Claim 1. It is unknown whether a court or the USPTO would
broadly construe "nanostructure" to include any structure falling within the geometrical range described
in the written description.
3.    U.S. Patent 6,940,086
     In a further example, U.S. Patent No. 6,940,086 entitled "Tin Oxide Nanostructures" and issued on
September 6, 2006 to Georgia Tech Research Corp. (hereinafter "the `086 Georgia Tech patent") was
noted by one commentator as being one of the ten broadest U.S. patents pertaining to nanostructures.21
Claim 1 of the `086 Georgia Tech patent is broadly recited as follows (emphasis added):


        1. A nanostructure, comprising a tin oxide (SnO2) nanowire.


   As can be seen, Claim 1 itself limits the nanostructure to a specific type (e.g., SnO2 nanowire).
However, dependent Claim 2 recites a further geometric limitation to the SnO2 nanowire of Claim 1:


        2. The nanostructure of claim 1, wherein the SnO2 nanowire is substantially rectangular.


      Clarification as to any additional types of SnO2 nanowires that may be included in Claim 1 is found
in the specification of the patent (emphasis added):


        The cross-sectional shape of the nanowires can vary from virtually circular to the larger
        rectangle-like structure . . . .


      Under the doctrine of claim differentiation, the rectangular geometrical limitation of dependent
Claim 2 cannot properly be read into independent Claim 1 to narrow its scope. However, as described in
the specification, the SnO2 nanowire may be construed to include circular cross-sectional shapes. Further
limitations on the configuration of SnO2 nanowire taught in the `086 Georgia Tech patent include the
material composition and arrangement of the nanostructure. Many of these alternative configurations
appear to be covered by the remaining claims of the `086 Georgia Tech patent. In this regard, as noted by
at least one commentator, the `086 Georgia Tech patent appears to broadly claim a variety of tin oxide
nanostructure configurations.22




21
     See Blaise Mouttet, Top Ten Broadest US Patents for Nanostructures, September 17, 2006, available at
http://tinytechip.blogspot.com/2006/09/top-ten-broadest-us-patents-for.html (last visited Feb. 15, 2007).
22
     See id.

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4.    U.S. Patent 5,424,054
     Also included in the list of the ten broadest U.S. patents for nanostructures are two patents issued to
IBM, namely, U.S. Patent Nos. 5,424,054 and 6,843,850 (hereinafter "the `054 IBM patent" and "the
`850 IBM patent").23 The `054 IBM patent has a relatively early priority date of May 21, 1993 and
includes Claim 3, one of two independent claims:


         3. A hollow carbon fiber having a wall consisting essentially of a single layer of carbon
         atoms.


       Claim 3 does not have any claims depending therefrom. However, it may also be noted that Claim 3
includes the transitional phrase "consisting essentially of." Although the phrase "consisting of" is a
closed term in claim drafting language meaning that additional elements are excluded from the limitation,
the phrase "consisting essentially of" has been interpreted to provide that additional elements may be
included if such additional elements do not "materially" affect the novel characteristics of the product
(i.e., hollow carbon fiber) defined by the claim. As applied to the `054 IBM patent, this transitional
phrase would appear to further broaden the scope of coverage of Claim 3.
      In referring to the specification for clarification on the scope of coverage of Claim 3, no alternative
embodiments of the hollow carbon fiber are described. However, the specification includes the following
sections (emphasis added) which further define the invention:


         The present invention relates to carbon fibers having a wall comprising a single layer of
         carbon atoms. The present invention also relates to a process for making carbon fibers
         (tubes) having a wall comprising a single layer of carbon atoms.
         The carbon fibers of the present invention have a wall comprising a single atomic layer of
         carbon atoms. The thickness of the wall of the fiber is a single carbon atom thick and the
         carbon atoms of the wall are bonded together. The fiber is hollow and the wall is
         optimally cylindrically shaped and has a cross-sectional diameter generally less than
         about 3.5 nm preferably less than about 2 nm and more preferably less than about 1.5 nm;
         preferably a diameter of about 1 nm to about 2 nm. The fibers generally have a length
         greater than about 50 nm preferably greater than 100 nm, most preferably greater than
         about 1000 nm.


      As noted above, the specification of the `054 IBM patent describes carbon fiber using the
transitional phrase "comprising." This transitional phrase provides even broader coverage than the phrase
"consisting essentially of" described above. However, in order to overcome prior art cited during
prosecution of a patent application, patentees often narrow the claim scope by revising the transitional
phrase. In this regard, it is possible that the patentees amended the transitional phrase in Claim 3 from
"comprising" to "consisting essentially of" in order to overcome prior art cited thereagainst. Even with
such a narrowing amendment, Claim 3 of the `054 IBM patent appears to very broadly cover a tubular
carbon fiber.24


23
     See id.
24
     See id.

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5.    U.S. Patent 6,843,850
      The `850 IBM patent includes Claim 1, which is recited as follows (emphasis added):


        1. A single-walled nanotube that has been manufactured in the absence of a catalyst.


     Claim 2 is the sole dependent claim of Claim 1 and further limits the process for forming the single-
walled nanotube and is recited as follows:


        2. The single-walled nanotube according to claim 1 having been annealed substantially
        inert atmosphere at a temperature of at least about 1350 degrees Celsius.


      In referring to the specification of the `850 IBM patent, the process for forming the single-walled
nanotube is described as starting with a silicon carbide semiconductor wafer. Annealing of the silicon
face of the semiconductor wafer in a vacuum is indicated as inducing the formation (i.e., via rolling up) of
the single-walled nanotube. Due to the minimal number of steps recited in Claim 1, it appears that the
`850 IBM patent broadly covers all single-walled nanotubes formed without a catalyst.

VII. BROAD SPECTRUM OF UNCERTAINTY REGARDING THE SCOPE OF CLAIM
     COVERAGE FOR NANOTECHNOLOGY PATENTS

      As can be seen, for nanotechnology patents that use broad claim terms, the spectrum of uncertainty
regarding the scope of coverage is fairly broad. In some patents, such as in the `898 Nanosys patent, what
initially appears to be a broad claim element in Claim 1 may, in reality, provide a much narrower scope of
coverage after referring to the specification and reviewing the prosecution history. In the other cases, the
`054 and `850 IBM patents appear to very broadly claim the rights to "single-walled carbon fibers" (i.e.,
the `054 IBM patent) and "single-walled nanotubes" (i.e., the `850 IBM patent).
       As is apparent by reference to the above, the appropriate meaning of the claim terms is best
ascertained by referring to the intrinsic evidence and, more specifically, referring to the specification as
the "single best guide" as noted in Phillips.25 In this regard, the specification allows patent practitioners
(i.e., patent agents and patent attorneys) to obtain a better idea of the scope of coverage of nanotech
patents in order to effectively counsel clients on various IP matters.
     For nanotechnology patents lacking a clear definition of claim terms in the specification, or where
neither claim differentiation nor the prosecution history further clarifies the claim term meanings,
uncertainty may persist as to who owns what in the nanotechnology world. As a general strategy to avoid
downstream problems, it is suggested that applicants file patent applications that are not unduly broad in
scope.26




25
     See Phillips, 415 F.3d at 1315.
26
     See Sarah Lacy, Patently Confusing, (2005), available at
http://www.businessweek.com/the_thread/dealflow/archives/2005/04/patently_confus.html (citing a report by Lux
Research and the law firm of Foley & Larder LLP) (Last visited Feb. 15, 2007).

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                                                             Broad Claiming in Nanotechnology Patents


VIII. RISKS OF CLAIMING BROADLY

     By avoiding the temptation of claiming over broadly and receiving an issued patent that covers
much more than the actual invention, applicants can reduce their risk of a negative claim interpretation
and claim more narrowly. Furthermore, applicants can avoid the time and cost in defending later attempts
at invalidation of overly-broad patents by the USPTO (e.g., in a reexamination proceeding) or by the
courts (i.e., in litigation). It should be noted that the above-suggested strategy may, in some instances, be
a moot point as potential disputes between overlapping nanotechnology patents will increasingly be
handled with cross-licensing agreements. 27
     In addition, with focused claim drafting, start-ups may have an easier time of attracting investors
who may be wary of broad patent claims that may overlap with a competitor's patent portfolio. The risk
of becoming embroiled in a "cobweb" of nanotechnology patents may also be reduced. Furthermore,
patent owners may find it easier to assure investors and acquiring companies of the defensibility and
validity of their portfolios.

IX. STRATEGIES FOR PRESERVING NANOTECHNOLOGY IP

      Other methods by which patentees can protect their nanotechnology IP include the practice of
continuation filing available only in the United States and authorized under 35 U.S.C. § 120. In this
strategy, applicants can file a continuation application or continuation-in-part (CIP) patent application
based on a pending parent application which may later issue with relatively narrow claims. If a
competitor produces a product that falls just outside the scope of coverage of the claims, the patentee can
amend the claims of the continuation or CIP application such that the competitor's product infringes.
     Although the availability of this tactic may come to a halt with the looming enactment of the new
patent rules limiting patentees to a single continuation application, its use in current practice is proliferate
across all technology sectors and is one of the most commonly used weapons in the arsenal of many
patent practitioners.
     A similar strategy may be applied in reissue practice as authorized under 35 U.S.C. § 251.28 Under
this rule, a patent owner may file a patent application seeking to enlarge the scope of the claims.
However, broadening reissue applications must be filed within two years of the grant date of the parent
application. Furthermore, as in continuation practice, the enlarged scope of the claims in the reissue
application must be supported by the specification of the parent application.
      Continuation application practice and the reissue strategy are powerful tools by which the owner of a
nanotechnology patent can prevent competitors from designing around their patents. However, the
availability of these strategies is dependent upon the breadth of the specification in covering alternative
embodiments and features. In keeping with the above-noted suggestion of avoiding overly broad claims
in nanotechnology patent applications, inventors and researchers are also encouraged to work closely with
their patent agent/attorney in preparing a thorough specification that discloses all reasonable variations of
their nanotech inventions.




27
    See Choi, supra note 8, at 103 (quoting Stephen Maebius, Chair of the Nanotech Industry Team at the law firm
of Foley & Lardner LLP); Bawa, supra note 3, at 102; Bawa, supra note 5, at 102.
28
    See 35 U.S.C. § 251, last paragraph.

                  NANOTECHNOLOGY LAW & BUSINESS · MARCH 2007                                               605
O'Neill et al.


X. CONCLUSION

     There is a great deal of excitement associated with what many speculate will be a boom in the
multidisciplinary field of nanotechnology. In order to reduce uncertainty regarding the rights to
nanotechnology inventions, patent applicants, and patent owners must resist the urge to claim overly
broadly in the hope of getting a windfall of nanotechnology IP rights. Such attempts, in fact, may be
responsible in part for creating uncertainty as to who owns what across the nanotechnology landscape.
      Efforts are underway to reduce this uncertainty. In this regard, the USPTO's recent creation of a
new nanotechnology classification system is an important step forward. Private entities have reduced the
trend of uncertainty by developing a standardized nanotechnology glossary. Patent practitioners have also
assisted in reducing uncertainty by including clear, well-established definitions of claim terms in the
specification of their patents. Collectively, these efforts by public and private organizations will increase
the likelihood that significant technologic advances across multiple scientific disciplines will continue to
be proposed, validated, patented and commercialized with the subsequent nanotechnology boom leading
to big payoffs--economically in the form of returns for investors as well as benefits to consumers in the
form of improvements in energy, materials and medicine.
                                                   ***
     Note: This paper represents the current opinions of the authors which are likely to evolve.
Furthermore, they should not be attributed, in whole or in part, to the organizations listed above, nor
should they be considered as expressing an opinion with regard to the merits of any particular company or
product discussed herein. Nothing contained herein is to be considered as the rendering of legal advice
for specific patents or cases, and readers are responsible for obtaining such advice from their own
competent legal counsel. This article is intended for educational and informational purposes only.




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