Gillespie v. DWIDAG: Prosecution Arguments Limit Claim Scope

ScreenShot050Gillespie v. DWIDAG Systems (Fed. Cir. 2007)

During prosecution, Gillespie argued around a cited prior art mine roof bolt reference — arguing that the collar of the bolt ‘appears to be cylindrical on the outside, thus impractical…’ Reviewing claim construction de novo, the appellate panel led by Judge Newman limited the claim scope to only cover non-cylindrical collars. (Following the maxim that a “patentee is held to what he declares during the prosecution of his patent.”).

Gillespie argued that the claims should not be limited by his statements because the non-cylindrical collar shape did not turn out to be material to allowance. (The Examiner provided alternative reasons for allowance). The CAFC rejected that potential loophole – finding that Gillespie’s argument was sufficient regardless of its importance in the prosecution process.

DWIDAG’s bolts were thus found to not infringe this new construction.

Notes:

  • The court appears to have been careful not to use the term disclaimer

 

28 thoughts on “Gillespie v. DWIDAG: Prosecution Arguments Limit Claim Scope

  1. Dear Auto anonymous,

    Oops. You are, of course, right. I appreciate your correcting my bass ackwards confusion: it was Mr. Glazer, counsel for Gillespie, I transcribed and posted earlier.

    I believe my “Lesson to be learned” remains the same:
    Cutese [or convoluted] lawyer’s arguments typically don’t jive with Phillips.

    Thanks also for confirming the contrast between Gillespie’s claim 1 and Dywidag’s structure which I pointed out by citing excerpts from the decision:
    Gillespie invented a (claim 1)(emphasis present in the decision, page 3):
    “A mine roof bolt … HAVING AN OUTER [non-cylindrical] SURFACE DEFINING A DRIVE HEAD THAT ACCEPTS A DRIVING MECHANISM [i.e., socket wrench] for rotating …”
    Page 5:
    “In the Dywidag structure … the Dywidag cable bolt is rotated by way of a key socket [i.e., allen wrench] recessed in the end of the bolt head.”

  2. Just to set the record straight: the “cute” lawyer’s argument that precipitated Judge Bryson’s comment about “Home Depot” was not made by Mike Weiner, but by Marvin Glazer, counsel for Gillespie. Ditto for the other comments transcribed by “Just an ordinary inventor.”

    The outer surface can be any shape provided it defines a drive head. A cylindrical collar lacks an “outer surface defining a drive head” and so does not literally infringe.

  3. Dear Tom,

    Great advice, thanks.

    I’m sure it is too late now, but, I wonder if, at some point, Dywidag could have patented his:

    “A mine roof cable bolt comprising:

    a recess means in the end of the bolt,

    cylindrical means to be rotated by way of a wrench, similar to an allen wrench of the types sold at Home Depot,

    said means, when fitted tightly together and installed by PHOSITA, defining said mine roof cable bolt.”?

  4. My first reaction on reading the patent and the opinion was that, literally, there could not be infringement. The claim uses “inner” and “outer” to describe the collar surfaces. The claim states that the inner surface of the collar engages the tapered plug and the outer surface of the collar accepts the driving mechanism. The decision interpreted the meaning of “outer” to support its finding of non-infringement.

    A better claim drafting technique would be to avoid descriptive adjectives and to claim “first” and “second” surfaces defined by their critical characteristics. The first surface engages the tapered plug and the second surface accepts the driving mechanism. The term “outer” gave the FedCir a hook to find invalidity, but “outer,” other than being a convenient adjective, really had nothing to do with the invention, which was primarily the attachment of the head to the cable. At least a broader term such as “second” would have made the FedCir work a bit harder to find non-infringement.

  5. Gillespie invented a (claim 1)(emphasis present in the decision, page 3):
    “A mine roof bolt … HAVING AN OUTER [non-cylindrical] SURFACE DEFINING A DRIVE HEAD THAT ACCEPTS A DRIVING MECHANISM [i.e., socket wrench] for rotating …”

    Page 5:
    “In the Dywidag structure … the Dywidag cable bolt is rotated by way of a key socket [i.e., allen wrench] recessed in the end of the bolt head.”

    I’ll bet it pained Judge Newman much as it pains me, JAOI, to find a patent not infringed due to what appears to be a Festo screwing.

    I believe Festo was never mentioned in the decision because the parties waived DOE by stipulation. What else could Gillespie have done in light of fricken Festo and what must have been amended in his claims in light of prior art Spies?

  6. Dear real anonymous,

    I found the language real confusing, but here’s my take:

    Gillespie v Dywidag in essence pits Dywidag’s (outside means) Allen Wrench against Gillespie’s (inside) Socket Wrench. Also, please see my comment immediately above.

    Judge Byrson indicated during oral that Dywidag’s attorney’s (very clever, but trite) “lawyer’s argument” (about the Starbuck’s coffee cup) was too contrived and would not pass muster at Home Depot.

    Lesson to be learned: Cutese lawyer’s arguments typically don’t jive with Phillips.

  7. Malcolm,

    “So when did the patentee [Gillespie] declare that the collar recited in its claims must be non-cylindrical?”

    I think the cite from Paper No. 3 found on page 7 of the decision tells when:

    Judge: Newman:
    “When the examiner rejected Gillespie’s application on the ground of obviousness in view of Spies, Gillespie argued that the collar at the end of the Spies bolt was cylindrical on the outside and was impractical for engagement by a mine roof bolting machine:

    [cite from Page No. 3, indented]
    “There is nothing in the Spies patent to suggest that the collar 17 should be used for this purpose. In fact, Spies teaches away from such an interpretation of the drawings. Collar 17 appears to be cylindrical on the outside, thus impractical for being rotated by a mine roof bolting machine.

    “’589 Patent Application (Paper No. 3).”

    * * *
    What is unclear is if Gillespie waived DOE by stipulation because he was Festoed with the emphasized claim phrases shown on page 3 of the decision.

    Festo was not mentioned in the decision nor (as I recall) in the audio track; but why else would Gillespie waive DOE?

  8. “So when did the patentee declare that the collar recited in its claims must be non-cylindrical?”

    Actually, he never could have/should have, since his drive collar had an outer surface in the form of a hexagonal cylinder. I guess everyone was using layman’s terminology here – hate to be sticklers for precision when it comes to claim construction. :-)

    I believe nothing (well, except the attorney’s superfluous remarks which were harshly or mis- construed) required the court’s finding that the limitation “having an outer surface defining a drive head that accepts a driving mechanism” could not cover the (socket-type) driver of Dywidag. The outer surface of Dywidag certainly defines a drive head, and the drive head certainly accepts a driving mechanism.

  9. ““The patentee is held to what he declares during the prosecution of his patent. North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1345-46 (Fed. Cir. 2005). ”

    So when did the patentee declare that the collar recited in its claims must be non-cylindrical? The answer is never. In fact, the patentee’s specification declares the opposite.

    The sort of game playing re claim construction that Newman et al engage in here is why we ended up with Phillips. Do we really want to head back into that swamp again?

  10. It is interesting to note again that, Phillips, e.g., cited on page 7 of Gillespie v Dywidag, does not wash with the Supremes’ eBay anti-injunction decision. Page 7 Phillips citation:

    “See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’”).”

    The following was noted by Professor Crouch on this thread “Injunction against ‘any products’ that infringe is overlybroad …”
    link to patentlyo.com

    “WHERE ARE THOSE PRINCIPLES OF EQUITY: Interestingly, the injunction portion of the decision did not discuss the Supreme Court’s recent case of eBay v. MercExchange. EBay focused [almost solely] on the language of the statute typically associated with patent infringement injunctive relief – 35 USC 283.” (emphasis added)

    I (JAOI) have been attacking the USSC’s eBay decision from the top down. Better would be to attack from the bottom up, i.e., it is 35 USC 283 that doesn’t wash with Article I, §8, Clause 8. My argument, as you may recall, is that 283 is inconsistent with any literal, loyal or lawful interpretation of the Constitution, because there has been no amendment whatsoever to Article I, §8, Clause 8. This patent clause has always been interpreted literally, e.g., on the face of U.S. patents and in Phillips.

    And since 35 USC 283 is therefore, at the very least, “suspect,” what does that say about the inconsistency between the CAFC’s en banc Phillips the Supremes’ eBay decision?

    “Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) “It is a ‘BEDROCK PRINCIPLE’ of patent law that ‘the claims of a patent define the invention to which THE PATENTEE IS ENTITLED THE RIGHT TO EXCLUDE.’”

    Bedrock is BEDROCK.

    “35 U.S.C. 283 Injunction:
    The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”

    How can any court deem it “equitable” to allow infringement to continue against the will of the patentee after a patent has been found valid and infringed?, when it is a bedrock principle of patent law that a patentee is entitled to the right to exclude?

    Like bullets to a gun, Nothing is as Constitutionally fundamental to a patent as is the exclusive Right:
    “Section 8. The Congress shall have Power …
    Clause 8: To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    “[T]he exclusive Right” can only be modified by a Constitutional Amendment (please see Article V, the procedure to amend the Constitution, and the Supremacy Clause, Article VI).

    35 USC 283, and the USSC eBay decision based thereon, are not Constitutional.

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  11. Malcolm got right to the kernel of the matter when he wrote:

    “I just don’t believe in reading limitations into the claims that plainly aren’t intended to be there. Under Phillips, this shouldn’t qualify as an express re-definition of one of the claim terms. That fact that it did here just mucks up the case law re claim construction. That’s a bad thing.

    “I’m not saying that a statement made during prosecution couldn’t be used to narrow a claim term. But I don’t think it’s right to turn an argument about the prior art into a *narrowing* construction of a facially broad term that was never expressly redefined.”

    Gillespie v Dywidag is a simple yet important precedential decision.
    Gillespie v Dywidag in essence pits an Allen Wrench against a Socket Wrench.
    I believe the case turned on “A LAWYER’S ARGUMENT.”

    I listened to and transcribed part of the Gillespie v Dywidag audio:

    At 12:50 minutes:
    Mr. Weiner for Defendant-Appellee Dywidag:
    We [the parties] agreed to waive reliance on the Doctrine of Equivalence, that’s correct your Honor.

    Judge Bryson:
    So all we are dealing with is pure and literal infringement so that if we decide that, no matter how much we may think that an allen wrench may be equivalent to a socket wrench, if we say that this is, that there’s a difference between the outside means – allen means outside – then you have to lose this case, right?

    Mr. Weiner for Defendant-Appellee Dywidag:
    That’s the deal we struck.

    At 13:17 minutes …13:25 minutes:
    Mr. Weiner for Defendant-Appellee Dywidag, referring to coffee cups on the table:
    Those cups have an outer roughly cylindrical surface, they also have a bottom wall. That bottom wall is part of the outer surface of that cup. Now if you go to Starbucks like I did this morning, and you get a cardboard cup, the bottom wall is recessed from the bottom of the cylindrical wall. Now, even though it’s recessed, the bottom of that bottom wall is still part of that outer surface of that cup. And the same is applicable to our case.

    At 13:58 minutes … At 19:05 minutes:
    Judge Bryson:
    I understand you argument, and I think it’s a, it’s [pause] a lawyer’s argument.
    I just wonder, if you took that device to Home Depot … and showed it to 100 people, … [I wonder how many would agree with you? At 19:25 minutes.]

  12. “The court appears to have been careful not to use the term disclaimer.”

    “So you don’t believe in prosecution history estoppel?”

    “Refresh my memory: why does Dennis think it’s important to mention that the court didn’t use the term ‘disclaimer’?”

    In fact, the Gillespie v Dywidag court appears to have been careful not to use the term “prosecution history estoppel” or the term “disclaimer” or the term “disavow” in the decision.

    (Incidentally, since this subject area is so fundamental to a patent’s construction, perhaps there would be benefit from a Category listing(s) on the left side of Patently-O.)

    Instead of using one or more of these common patent terms, Judge Newman used the term “declares” on the last page of the decision:

    “The patentee is held to what he declares during the prosecution of his patent. North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1345-46 (Fed. Cir. 2005). See also Springs Window Fashions L.P. v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003) (‘The public notice function of a patent and its prosecution history requires that a patentee be held to what he declares during the prosecution of his patent.’)”

  13. “You would rather rely upon a ridiculous decision like Liebel-Flarsheim?”

    I believe that ridiculous decision has already been cited approvingly by the CAFC on multiple occasions.

  14. “So you don’t believe in prosecution history estoppel? Statements made by a practitioner should not be held against the patent?”

    Quite the opposite. Even in this case, I would be all for using the prosecution history against the patent, but on enablement grounds.

    I just don’t believe in reading limitations into the claims that plainly aren’t intended to be there. Under Phillips, this shouldn’t qualify as an express re-definition of one of the claim terms. That fact that it did here just mucks up the case law re claim construction. That’s a bad thing.

    I’m not saying that a statement made during prosecution couldn’t be used to narrow a claim term. But I don’t think it’s right to turn an argument about the prior art into a *narrowing* construction of a facially broad term that was never expressly redefined.

    When a patentee plays the game that was played here, it’s like playing Russian roulette. The penalty for losing Russian roulette isn’t that you walk away with a slightly smaller gun.

    Refresh my memory: why does Dennis think it’s important to mention that the court didn’t use the term “disclaimer”?

  15. Malcolm,

    Newman got it right, like usual.

    So you don’t believe in prosecution history estoppel? Statements made by a practitioner should not be held against the patent? You would rather rely upon a ridiculous decision like Liebel-Flarsheim?

    Sometimes you seem coherent, sometimes you don’t.

  16. Better yet, what if Big Corp. sends the small inventor some money – just enough to bump him over the “micro” limit

  17. So do you think we could then invalidate patents based on the inventor’s income? Will it be discoverable? (My client Big Corp. certainly hopes so.) And what if the inventor has 8 children and lives in Orange County? Shouldn’t we cut him some slack on the income thing?

  18. That won’t fly Just a Patent Attorney. Your proposal might seem to work based on a quick literal read of the bill passed in the House. But, the kicker is that even if the invention is assigned (or the inventor is obligated to assign or license), each inventor must also qualify as a “small entity” – as defined in PTO regs. Under current regs, an inventor loses “small entity” status if they assign or license (or are obligated to do so) to an entity which itself is not considered a small entity. 37 CFR 1.27 & MPEP 509.02. As we all know, a “small holding company” owned by a large corporate entity is not a small entity under PTO regs. So, your suggestion would not fly because the inventor(s) in your scenario would not be a small entity.

    Also, you lose micro entity status if ANY named inventor has “a gross income, as defined in section 61(a) of the Internal Revenue Code of 18 1986, exceeding 2.5 times the median household income.” From what I could find, the median household income in 2006 was $46,326 – which means each and every named inventor must have a gross income of less than $115,815. IMHO, the micro entity status thing in the proposed legislation is intellectually dishonest.

  19. Maybe the safe harbor under 123 is the micro entities? I’m thinking that for large corporate entities a small holding company can be formed to file patent applications. There is nothing in the bill about having to file an ESD after the application is filed, so the holding company can assign the application to the parent and then be dissolved. For an assigned application, sec. 124(c)(3) does not require the assignee to be a small entity.

  20. Practitioners should be careful, when trying to build up one patentably distinct aspect of their invention, they don’t prevent other patentably distinct aspects from being assertable. I agree with MM: if you say devices with a prior art feature renders them impractical, you should be Liebel-Flarsheim-ed. (It doesn’t roll of the tongue like Festo-ed, does it?)

  21. Newman got it wrong (surprised?).

    The claim language at issue is “(c) an internally tapered drive collar having a frusto-conical inner surface … and having an outer surface defining a drive head that accepts a driving mechanism”.

    Nothing in the claim language suggests that the drive head be “non-cylindrical.” Nothing in the specification says that the drive head be “non-cyldidrical”. In fact, the specification plainly says that the outer surface can be “any shape.” The District Court go it right.

    The CORRECT approach to tanking a crap claim like this is to tank it with Liebel-Flarsheim. As with Liebel-Flarsheim, the patentee here admitted that non-beveled (i.e., cylindrical) outer surface’s in the prior art were “impractical” and never provided an enabling solution to that problem.

    That’s why the claim is invalid.

    Reading limitations into claims is a bad approach that should be avoided at all costs because, to the extent courts use that approach to nullify bad patents, confusion will be the result.

  22. “you’re joking, right? No one in their right mind is going to file an ESD.”

    So, Opampman, what do you think of the new 35 USC 123 passed by the House? Do you see a safe harbor for sanity there? The fate of the patent system now rests with the Senate, I believe.

  23. You’re right Opampman – no one is going to file an ESD until the PTO requires one in EVERY application. Which could happen real soon if the patent reform legislation passes with that requirement intact.

  24. “Seems like the easiest way to avoid infringement in the future will be:

    1) analyze the ESD to determine which limitations the applicant alleges are unshown by the prior art”

    you’re joking, right? No one in their right mind is going to file an ESD.

  25. Wow. This is news.

    Statements made in prosecution can and will be used to narrow claim scope.

    I’ll pass this along to the Janitor, who is the only human being in our firm’s building who is unfamiliar with this concept.

    UPDATE:
    Nope, I was wrong. The Janitor was familiar with it, and noted that it was stup1d of the prosecuting attorney to put in writing.

  26. Seems like the easiest way to avoid infringement in the future will be:

    1) analyze the ESD to determine which limitations the applicant alleges are unshown by the prior art; and

    2) from that set of allegedly unshown limitations, copy one of the corresponding limitations/features from the prior art, be it ever so insignificant, and you’re home free, even if patentability could have been and/or was established by more than that one limitation/feature.

    Could it be that is it no longer the invention as a whole that will be considered to determine the claim scope for patent infringement purposes, but rather the individual limitations/features that the applicant (as required by 37 CFR 1.265(a)(3)) has alleged are unshown early in prosecution?

    And so “patentee is held to what he declares during the prosecution of his patent” which is most certainly the law of the land. Does anyone now not see why the ESD, as currently regulated and with the current standards for admissions, is so dangerous to patent applicants and the patent system?

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