Watch Your Step: Negative Claim Limitations Present Pitfalls and Secondary Considerations are No Safety Net

As a matter of best practices, patent practitioners draft claims of various types to protect inventions from multiple angles and to improve the chances of reaching allowable claims. Sometimes, this includes drafting claims with negative limitations.  In addition to multiple claim types, practitioners argue secondary considerations of non-obviousness to reach allowance.  Both strategies can be useful to reach allowable subject matter in difficult cases.  

Earlier this year, in a pair of decisions, the Federal Circuit explored both negative claim limitations and secondary considerations.  In both cases, the Fed. Circuit affirmed the PTAB on three IPR decisions, holding that all challenged claims in three patents owned by BillJCo, LLC were unpatentable as obvious. The decisions—BillJCo, LLC v. Apple Inc., Nos. 23-2188 and 23-2189—addressed two distinct patent families, respectively:

• U.S. Patent No. 8,566,839, which relates to methods of receiving and presenting information based on user actions.
• U.S. Patent Nos. 8,639,267 and 9,088,868, which concern mobile device privileges and permissions based on user identity and location.

Key Takeaways for Practitioners 

These rulings serve as good reminder of three points:

1. In claim drafting, affirmative and precise language is preferred.
2. Negative limitations can be strong when intentionally used but require clear support in the specification to be valid.  
3. During prosecution and litigation, secondary considerations must be substantiated with detailed, claim-specific evidence.  Discuss with your clients the possible benefits of separately tracking data on the success of their patented products in the event of litigation or difficult prosecution to provide support for patentability based on secondary considerations. 

Discussion of the Opinions

To better understand how the Federal Circuit reached its conclusions—and what we can learn from them—it’s worth digging into two key areas: how the court handled claim construction, and how it evaluated the evidence for secondary considerations of non-obviousness. Both offer practical lessons for drafting, prosecution, and litigation strategy.

I. Claim Construction: Reluctance to Read-In Negative Limitations

In the 23-2189 appeal BillJCo argued that the PTAB erred in construing the term “privilege” as used in the claims of the ‘267 patent to include “preferences.” BillJCo argued that the specification describes different types of conceivable user configurations and a “privilege” and a “preference” are two of these configurations and should be construed as separate terms.  

The court characterized BillJCo’s construction as an attempt to read-in a negative limitation into the term.  Negative limitations are permissible, so long as boundaries of patent protection are defined.  Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003), established that a negative limitation must find support either in (1) the express language of the claim, or (2) an express disclaimer or independent lexicography in the written description.  

The Federal Circuit rejected BillJCo’s argument and emphasized that the specification’s reference to “preferences” and “privilege” as distinct types of user configurations did not amount to an express disclaimer or lexicographic definition as required by Omega. 

This decision illustrates that courts are unlikely to read-in negative limitations absent clear textual support.  BillJCo likely did not anticipate arguing the proposed claim construction when the patents were drafted and prosecuted, but their difficulty  here underlines the need for careful and thoughtful drafting practices.  

Practitioners should:

• Avoid relying on negative limitations unless explicitly supported by the claim language or specification.
• Draft claims affirmatively, clearly articulating the scope of each term.
• Use the specification strategically to define claim terms with precision, including thorough  express definitions or disclaimers where appropriate.

II. Secondary Considerations of Non-Obviousness and their Evidentiary Burdens

In both appeals, the Federal Circuit affirmed the PTAB’s rejection of BillJCo’s evidence in support of secondary considerations of non-obviousness.  Graham v. John Deere Co., 383 U.S. 1 (1966), established secondary considerations of non-obviousness may include (1) commercial success, (2) long-felt but unmet need, (3) failure of others, (4) copying, (5) industry praise, (6) licensing, or (7) unexpected results.  Of these, BillJCo argued copying, commercial success, and licensing.  The court analyzed the asserted evidence of non-obviousness for a nexus with the claimed invention and found none.  

With respect to considerations of copying, BillJCo alleged that Apple copied its patented technology.  However, the court found the evidence circumstantial, noting that mere access to the patented technology and implementation of similar features does not establish copying.  Citing Liqwd, Inc. v. L’Oréal USA, Inc., 941 F.3d 1133 (Fed. Cir. 2019), the court reiterated that copying requires evidence of duplication based on access, otherwise all infringement would be treated as copying.

In arguing commercial success, BillJCo relied on marketing statements pertaining to functionality.  The court rejected this, emphasizing that commercial success must be demonstrated through concrete sales data or market impact.  BillJCo’s failure to provide objective data rendered the argument unpersuasive.

Finally, BillJCo pointed to licensing agreements as evidence of the patents’ non-obviousness.  However, the court found that the licenses cover more than thirty patents and include no evidence of the weight or importance of the patents at issue to the licenses.  Citing ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d 1350 (Fed. Cir. 2015), the court held that “without a clear nexus to the claimed invention”, the PTAB reasonably found that the licensing evidence carried little weight.

The decisions highlight the increasing difficulty of leveraging secondary considerations to rebut a prima facie case of obviousness and reinforce the need for robust evidentiary support when asserting secondary considerations.  

Practitioners should:

• Establish a clear nexus between the claimed invention and the secondary evidence.
• Provide quantitative data (e.g., sales figures) to support commercial success.
• Document licensing rationale, showing that the licensed technology specifically relates to the claimed invention.
• Avoid relying solely on circumstantial evidence of copying or market impact.