CAFC: “Near the Edge” Not Indefinite; Curing Inequitable Conduct

PatentLawPic001Young v. Lumenis, Inc. (Fed. Cir. 2007)

Dr. Young invented a surgical method of declawing a cat using lasers. (feline onychectomy).  Lumenis makes surgical lasers that were allegedly during unauthorized infringing surgeries.

Lumenis is a manufacturer, seller, and distributor of surgical laser instruments that were alleged to have been used to perform Young’s patented surgical procedure.

Young filed an infringement suit and Lumenis counted with an inter partes reexamination. (Patent 6,502,579). The PTO issued an office action rejecting the claims and the district court found the patent invalid and unenforceable

Indefinite: In particular, the district court found the word “near” to be indefinite as it was used in claimed step: “forming [an] incision in the epidermis near the edge of the ungual crest.”  Although the district court roughly understood its meaning, it found “near” to be indefinite because it “fails to distinguish the invention over the prior art and does not permit one of ordinary skill to know what activity constitutes infringement.”

On appeal, the CAFC reversed — noting again that claims are indefinite only when they are “not amenable to construction or are insolubly ambiguous.”  An indefiniteness ruling necessarily requires claim construction and examination of any intrinsic evidence. Here, the intrinsic evidence resolves the meaning of near — with both a drawing and reference to cat-sized measurements.  Here, the court distinguished the infamous Amgen case that found “about” to be indefinite: in Amgen, the potential error range of “about” was quite wide and the term had been added to the claims post-filing.

Inequitable conduct — better late than never: The CAFC also disagreed with the lower court’s finding of inequitable conduct — finding that Young’s late submission of contrary deposition statements cured any potential problem: “The essence of the duty of disclosure is to get relevant information before an examiner in time for him to act on it, and that did occur here.”

Reversed

16 thoughts on “CAFC: “Near the Edge” Not Indefinite; Curing Inequitable Conduct

  1. Harriet –

    This is a patent blog, but I agree with you 100%. I also understand that many of these cats being declawed would otherwise be put down, i.e., killed. Declawing is more humane than killing. New surgical techniques that make the declawing less painful, faster healing (due to extra skin to cover the wound) is valuable (as evidenced by the litigation, which itself isn’t cheap), and I am thankful there are doctors out there searching for better ways to carry out this surgical procedure. In an ideal world, declawing would never happen (I could never do that to my own cats). However, this is a darn good world, too, where people are looking for, and willing to pay for, less traumatic and painful methods for carrying out this procedure, allowing cats to coexist with humans that are less tolerant than you and I of cat’s sometimes destructive proclivities.

  2. I think the emphasis on “cure” is wildly misplaced here. The system cannot possibly demand anything more than that a disclosure be timely. The P’s lawyer did not miss a deadline fixed by statute or reg, and he filed his disclosure 5 months prior to the second OA, ergo, it was timely. And if it was a timely disclosure, how can that be inequitable? How freakin’ common-sense can it be? There was nothing to “cure.”

    As for the allegation that the P’s lawyer misled the examiner — well, the CAFC panel sorted that one out. The allegation was itself inequitable, in my opinion.

    This case did not require and did not produce a brilliant call by the CAFC. It was just another obvious and complete cock-up by a trial judge. Dog bites man. . .

    Babel Boy

  3. The court does seem to take a “no harm, no foul” approach: regardless of the omissions of the applicant, there’s no fraud on the public or on the PTO until a patent issues or re-issues.

    The challenger, in a situation like this, should wait until the patent re-issues, and the fraud is perfected, before pouncing.

  4. High (inventive) intellect is most harmful when not blended with compassion and commonsense! Just what the world needs: new ways to cripple the healthy dexterous, multi-functional limbs of cats! I wish that someone would “invent” a whole new veterinary industry where animal care–instead of animal exploitation; crippling healthy, multi-functional, dexterous animal limbs such as those of cats, and chasing after big bucks–and perhaps sadistic fun– would be the focus.

    Harriet E. Baker
    Author of The Shocking Truth about
    Declawing Caats

  5. Besides Applicant’s own prior use, it might be beneficial to have the IDS encompass non-patents or published patent applications (i.e. journal articles, technical papers, conference proceedings). I have not seen an Office Action referring to any materials outside of patents/published applications except when supplied by the attorney/agent.

  6. Yeah but Paul you are conditioned by your experience of patent litigation in good old common law England, where the judge was for the preceding 20 years a patent litigator with a science degree, andhas seen all the tricks a thousand times already, and the law he is interpreting is the newly-minted, pared-down-to-the-essentials, 1978 European Patent Convention, and litigation in Germany costs 10% what it does in England, so every English litigator is mindful of the potential of a wholesale exodus of forum-shopping litigants to Duesseldorf/Munich if London doesn’t deliver.

    I agree with you that these conditions, favourable to orderly administration of common law justice in patent matters, doesn’t bear down on patent litigation in USA.

    Mind you, recent decisions of the CAFC and the Supreme Court do suggest that the judges there do take some interest in the way patent litigation is done in England. England recently brought discipline to discovery and equitable factors. Strange things happen.

  7. Inequitable conduct is a nightmare!

    As foreign attorneys we have to assemble boxes of marginally relevant material at huge cost to our clients when the material does not really assist examination. The Examiner has to pretend to study the resulting junk, whereas in truth if he properly studied all the submitted material in every case his productivity would be less than one examined application per month.

    We now live in an electronic age. Searching is quick and at the touch of a button – electronic keyword searching has incredible power. So why the need for this flood of references?

    Why not limit inequitable conduct to the patentee’s own prior use, leaving everything else to searching by a competent examiner?

    Why navel-gaze what happened during prosecution?

    The patent is either novel, inventive and enabled or it is not. That is all that really matters. Equitable considerations create work for litigators and immense waste of resources at the prosecution stage without corresponding benefits.

    I have said this frequently to my US colleagues, but people in the US are conditioned by their education to accept this continuing absurdity and waste. Unfortunately the prospects of obtaining any shift in attitudes are extremely poor.

  8. As someone who recently hopped into law after years as a research scientist, I find inequittable conduct rulings really disheartening. It really makes me dislike litigators, and makes me see them as people who are not really interested in the truth, but as stereotypical “I will win whatever happens” people from TV shows. But then I spend time with the litigators at my firm, and they are some of the nicest people I have known. Well I better not have to go to court with them so I won’t see the other side.

    I like this decision.

  9. It would appear that, under this Court’s rationale, any submission prior to issuance that could (and was) considered isn’t an omission. I think you could still cure the omission, even with prior deceptive intent, if the cure came prior to issuance and was clearly considered by the Examiner — unless some other issue (like burying the reference) was in play.

  10. “The ‘new’ inequitable conduct requries failure to disclose (intent will be assumed).”

    sad, but true

  11. The “old” inequitable conduct required (1) failure to disclose with (2) intent to deceive.
    The “new” inequitable conduct requries failure to disclose (intent will be assumed).

    The new inequitable conduct can be “cured” by disclosing, even though delayed.

    It is not clear whether the old inequitable conduct could be “cured” by delayed disclosure. For example, if there was actual evidence of intent to deceive, I’m not sure this case would have came to the same conclusion. For example, if they had found a memo saying “let’s hold off on sending this in until we think the Examiner is ready to allow the case… at that point, he probably won’t give it the attention it deserves.”

  12. The court said that “Thus, we cannot agree that there was inequitable conduct resulting from the ‘failure to disclose material information’ when that information was disclosed to the PTO in time for the examiner to consider it.”

    In other words, without a failure to disclose material information, there can be no inequitable conduct based upon such a failure.

    The “cure” is not the cure for inequitable conduct itself (which includes the omission plus intent). The “cure” is for the failure to disclosure material information. Here, the applicant cured the failure by submitting the information to the PTO in time for the examiner to consider.

  13. Patent Hawk, please elaborate. There are all sorts of misdeeds by litigants that “either happened or … didn’t” but can be “cured,” as a legal matter.

    Are you quibbling with semantics and merely arguing that one can only “cure” the *effects* of inequitable conduct, rather than the conduct itself, or are you saying that once a patentee commits misconduct during prosecution, the patent’s dead in the water?

    The weird thing about this opinion, in my view, is not that the court holds that inequitable conduct can be “cured,” but that under some circumstances it can be cured during litigation.

    In this case, the infringement defendant filed a motion for summary judgment of inequitable conduct on January 9, 2006, and the patentee “cured” the inequitable conduct 3 weeks later, by curing the alleged failure to disclose.

    The opinion doesn’t seem wrong, but the facts are sufficiently strange that I wish the court had given more explanation for its holding.

  14. The decision is also good as it appears to recognize that a potential disconnect between prosecution and litigation attorneys (especially if in different firms) is not fatal if there is “no harm, no foul” in terms of materials provided to the PTO during prosecution.

  15. A good decision for patentees, I think.

    Not a charter to use relative terms in all circumstances, and definitely not without backing them up with more precise terms and specific values and ranges where possible.

    But there are situations that are not like that and where the precise definition that pleases examiners is not possible and any definition that is put forward does not correspond to reality. The hunt for precision where no precision is possible is a recurrent feature of patent prosecution, and does not lead to a fruitful outcome – it creates either injustice or uncertainty.

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