‘Comprised of’ is an open-ended transition

CIAS v. Alliance Gaming Corp. (Fed. Cir. 2007)

CIAS asserted its counterfeit protection patent against both Alliance Gaming and Bally’s but lost on summary judgment of non-infringement. On appeal, the CAFC reversed the claim construction, but affirmed the judgment.

‘Comprised of’ is an open-ended transition: Rather than the traditional “comprising” transition, CIAS wrote that its invention was “comprised of” several elements. The district court construed “comprised of” as a “closed-end term that excludes the presence of all [non-presented] elements.” On appeal, the CAFC reversed holding simply that “comprised of” is the same as “comprising” and should be interpreted as open ending.

The appellate panel did, however, give a narrow definition to the claimed “unique authorization information” — holding that it had been narrowed by prosecution arguments.  

Notes:

  • PTO records show 134,000 patents including “comprised of” language.

 

38 thoughts on “‘Comprised of’ is an open-ended transition

  1. “You should go humble yourself a little by reading some Learned Hand”

    I’ve noticed that CaveMan is really fond of that Hand.

  2. RD,

    “It has been demonstrated many times…” sorry, does not sound like a legal standard to me. Repugnant argument is anything but irrational. In fact I think it was discussed in the present case. Did you actually read it?

    What I said was that by saying that “comprised of” is open ended, the CAFC has assigned a meaning to “comprised of” that is repugnant to its accepted meaning of closed endedness.

    Not sure what kind of rodeo cowboy you are, but I can tell you that patent law is patent law my friend. You are not the first shiny apple to fall off the cart with an ideal and an idea or two in your head. You should go humble yourself a little by reading some Learned Hand (heck, he was all about “the patent law of the 1940s”). I doubt you would have qualified to sharpen his pencils.

    Maybe those partners might not get in today, but then maybe back in their day, you would have been off in the woods smoking your lunch.

  3. “Caveman”,

    My name is “RD” not “PD”.

    It has been demonstrated many times that “comprising” can be either open or closed. Introducing a “repugnant to their accepted meaning” argument is purely irrational.

    You said: “However, in the above case, the CAFC in my opinion has redefined something in a manner repugnant to its accepted meaning.”

    Your “opinion” is that an accepted meaning of a word is “repugnant to its *ACCEPTED* meaning”? (emphasis added)

    Regarding non-science types making terrible patent attorneys – the new crop is literate in both science and written communication. This is not the patent law of 1997. This is 2007. Many, many partners at firms today with mere BS degrees and mediocre grades from fourth tier law schools would never even be considered for an associate position today. In fact, the competition for getting into law school is so much tougher that many of those partners wouldn’t even get into their 4th tier alma maters today.

  4. PD

    I also rather agree that science types in general make terrible writers. I see a new literate freshman class as a breath of fresh air. Unfortunately, the reverse is also true – non-science types make terrible patent attorneys…

  5. PD,

    I suppose you have a point. If I wanted to coin a term for, say, those cheesy trucker mudflaps and call them “Bill Clinton was the worst president in history” then as long as I define it as such in the spec I might have a chance. However there is a well accepted rule that words should not be given a meaning repugnant to their accepted meaning. Therefore, since mudflaps everywhere would find the above definition repugnant, there may be a problem.

    However, in the above case, the CAFC in my opinion has redefined something in a manner repugnant to its accepted meaning. I will continue to rigorously use comprising for openendedness. And I would never say comprised alongside. I would say disposed alongside. Or, in the case of Mooney, dragged alongside.

  6. For those who disdain the tortured grammar usage patent practitioners have permitted to proliferate in patent parlance, the explanation is simple.

    In the past, high demand permitted anyone with a pulse and a “science” background to become a patent attorney. Those who had turned to science in college to avoid courses that required reading and writing swelled the ranks of the patent bar.

    Many of them are now law firm partners and they force the new crop of patent attorneys (who have actually written papers and read books in college) to perpetuate their legacy.

  7. “Caveman”:

    You forget that patent language /= common English language. If an applicant wishes to use the term “comprised alongside”, “comprised beyond”, or even “worst president in US history” to mean a given thing, and one of skill in the art understands that it means that thing, it means that thing.

    The REAL problem with this decision is that the court could have come down either way, or it could have held that it doesn’t always mean one or the other and that the specification should be consulted to determine, if possible, which of the two meanings were intended. There are 134,000 patents that potentially could have the scope of their claims altered substantially by this holding and no thought was given to the consequences. This is what the court should focus on. (Please pardon me for writing this and the previous sentence such that a preposition is what they are ended with.)

  8. Tim J,

    Yes, but the hairs are finely split in Oxford. And they acknowledge that, at least historically, “comprised of” was considered improper by a “panel of experts.” They note that objection is waning. However that does not mean that objection could not be restored as it should be.

    The word “comprise” or “comprising” is open ended the phrase “comprised of” is, technically, closed ended. The CAFC decision did not really change that, in my opinion, it just gave 134,000 careless drafters and Mooney a pass since, in patent, parlance, most who would (erroneously) use “comprised of” as a transitional phrase in their preamble, probably meant “comprising” (and might want to consider another profession).

    Irv Kayton would have stormed out of the room by now.

  9. Sorry Mooney, your response containing the usual circular gobbledygook doesn’t make any more sense than your original glib comment regarding the judge being out to lunch.

    And I’ll have you know that my wildest dreams do involve patents – a world of patents free from poseurs, Mooney.

    And we took a poll, its pretty much unanimous…

  10. “And just exactly what case is this pearl of “wisdom” based on?”

    Well, now its based on CIAS v. Alliance. In your wildest dreams (which probably do involve patents, sadly) would you ever have imagined that the CAFC would *uphold* a finding that “comprised of” = “consisting” *absent* any express definition by the patentee?

    C’mon. We all seem to agree that “comprised of” is nonsense. Ultimately it boils down to whether “comprised” is more similar to the phrase “comprising” or “consisting”. Take a poll.

  11. “Tim J, if you want to bet your future on MacDictionaries like Answers.com, go ahead. I prefer something more weighty like Oxfords and decades of patent jurisprudence.”

    So do I.

    However, like Answers.com, my Oxford and Chambers dictionaries give the open meanings “contain, include” for “comprise” (as well as closed meanings).

    And if you scroll down the page, Answers.com specifically cites the open usage in patent jurisdiction.

  12. “The only excuse for the District Court judge’s decision would be if the patentee had clearly defined “comprised of” to mean “consisting of.” Anything else doesn’t wash.”

    And just exactly what case is this pearl of “wisdom” based on? I’m glad there is a legal advice disclaimer here, because people could easily be led astray by this kind of specious claptrap.

    Here, the CAFC was just trying to save the bacon of around 134,000 careless drafters. I guess you can count yourself among the saved Mooney.

  13. Thanks Marc, I promise not to hold your youth against you.

    What “men” or “women” do (as opposed to boys and girls and Mooney) in their patent claims is carefully asses each and every word and item of punctuation so that the claim faithfully represents what they intend to claim as the invention.

    If they intend on claiming a compound “consisting of” element A, element B and element C, they use “consisting of” If they want to claim an apparatus comprising element A element B and element C, they use “comprising” and NOT “comprised of” element A element B and element C.

    If they want to promote acceptance of the improper usage vis a vis “comprised of” that’s fine, but they should know that, strictly speaking, “comprised of” is considered exclusive or closed ended and “comprising” is still and should always be considered “inclusive” or open ended. Oxford admits that “objection” to the use of “comprised of” is waning (probably because of the increasingly illiterate society we find ourselves in) however they recommend against its use, favoring “consisting of” or “composed of”

    While the CAFC clearly had a curative agenda with this decision, the district court got it right.

  14. @caveman: What do “men” do in thier patent claims? Do they use “include” instead of “comprising”? Have to admit I still use “comprising”, but then I am pretty young… ;-)

    /Marc

  15. Tim J, if you want to bet your future on MacDictionaries like Answers.com, go ahead. I prefer something more weighty like Oxfords and decades of patent jurisprudence.

    Once again, just because a lot of people incorrectly use “comprised of” or incorrectly believe “comprised of” to be indistinguishable from “comprising” (like Mooney) doesn’t change the fact that its wrong.

    Here’s some fuel to the fire. Who can explain why “depends from” is preferable to “depends on” when describing dependencies? (Another phrase guaranteed to separate the “men from the boys” – no sexual discrimination intended)

    I bet Mooney says “depends on”

  16. “I suspect that what is really meant is that the INVENTION “comprises A, B, and C,” but but an INFRINGING DEVICE may include other elements.”

    I don’t think that works. The scope of your patent is exactly equally to those inventions you can exclude using your claims. Further, your explanation doesn’t allow for closed transistion expressions (such as “consisting of”).

    The dictionary definitions I’ve seen for comprising encompass both the closed and open meanings. Even if it is true that the most common lay usage is as a closed transistion, there is plenty of history establishing that meaning in patent claims of comprise is the open ended usage.

  17. I haven’t read the cases, but isn’t the real reason “comprising” is considered open ended to uphold two fundamental principles 1) that one can’t avoid infringement by adding elements; and 2) that one can’t get patent protection for more than one actually claims?

    If I claim an invention “comprising A, B, and C,” a purely grammatical view of “comprising” might suggest that a device comprising A, B, C, and D is not the invention and could not infringe. While it makes sense that an invention “comprising A, B, and C” should not be expanded to include a device “comprising A, B, C, and D” (which might be independently patentable as an improvement), it also makes sense that infringement cannot be avoided by making a device “including A, B, and C” by simply adding D.

    I suspect that what is really meant is that the INVENTION “comprises A, B, and C,” but but an INFRINGING DEVICE may include other elements.

  18. A couple points: first, the fact that an Australian court found that “comprising” is exclusive does not change the fact that a US District Court judge who finds “comprised of” to be exclusive is out to lunch.

    Second, anyone who thinks that a claim to a composition comprising X AND Y means the same as a composition comprising X OR Y should watch this video:

    link to youtube.com

    We can complain about the new rules and how awful they are until we are blue in the face but if patent judges start playing ultra high-falootin word games because they are lazy or because they are easily confused by dust-kicking patent attorneys, then the jig is up and it’s time to invest in personal rocket launchers.

    The only excuse for the District Court judge’s decision would be if the patentee had clearly defined “comprised of” to mean “consisting of.” Anything else doesn’t wash. Moreover, if the Examiner falls asleep while examining an application, it’s the applicant’s duty to wake him up or face the consequences later.

  19. Was MPEP § 2111.03 (“Transitional Phrases”) referenced in the lower court or on appeal:

    The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. . . .In Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371-73, 74 USPQ2d 1586, 1589-91 (Fed. Cir. 2005), the court held that a claim to “a safety razor blade unit comprising a guard, a cap, and a group of first, second, and third blades” encompasses razors with more than three blades because the transitional phrase “comprising” in the preamble and the phrase “group of” are presumptively open-ended. “The word ‘comprising’ transitioning from the preamble to the body signals that the entire claim is presumptively open-ended.” Id.

  20. Landis on Claim Drafting cites Moleculon v CBS, 229 USPQ 805, 812, (CAFC 1986) for the usage of comprising, but this doesn’t really seem to be an old enough case. Adelman, Rader et al’s case book cites Mannesmann v Engineered Metal Products, 793 F2d 1279, 230 USPQ 45 (CAFC 1986), which is of the same vintage. I couldn’t find anything in either Chisum or in Francis and Collins, but didn’t spend all that much time looking. Hildreth discusses claim transitions extensively, but cites no cases in that section, and the same applies to Hawes.

    Any advance on 1986? I couldn’t find anything older in my US patent law books, but I would have thought it was much older.

  21. New DISCLAIMER Standard: BY IMPLICATION alone.

    Trouble, oh we got trouble, Right here in River City! with a capital “T” that rhymes with “P” And that stands for PATENT TROUBLE!

    The precedential CAFC decision, CIAS v Alliance Gaming (Bally), said on page 10 that:
    “We agree with the district court that the reexamination recharacterization of Shoshani requires the construction that the ’422 claims exclude information other than serial information alone or randomly-selected information alone.”

    The District Court decision* said on page 16 (emphasis added):
    “Again, while this may be an accurate description of how Shoshani actually works, the question here is what the inventors disclaimed during re-examination. The inventors … did not state that Shoshani used the two numbers separately, but instead IMPLIED that the patent used them together … With that framework in mind, the IMPLICATION of the inventors’ description is that they understood and claimed the ‘422 patent, in contrast to Shoshani, to use either serial numbers alone or randomly-selected numbers alone.”

    That’s why we got Trouble right here in Crystal City (now Alexandria, Virginia). Under this precedential decision, claim scope can be disavowed by a mere “IMPLICATION”! Prior to this dramatic turnabout decision, the well-established standard had been “CLEAR and UNMISTAKABLE and UNAMBIGIOUS.” Gosh, that could cut the heart out of untold numbers of patents, maybe tens of thousands of patents.

    Trouble, oh we got trouble, PATENT TROUBLE by mere Implication! Nah, there must be a mistake. There has got to be more to it than that. Maybe there is something more on the audio transcript; I’ll check out the audio later.
    ———————-

    Re: Roger Karp’s comment “I’m still having fun with ‘obvious’”.

    While “obvious” was not at issue, the two prior arts discussed in the two decisions would be dispositive of KSR obviousness issues b/c both taught away from the invention defined by the claims:

    Shoshani taught: “… the use of serial numbers does not inhibit counterfeiting because the counterfeiter merely selects for the counterfeit objects a block of serial numbers consistent with the numbers found on legitimate objects.”

    McNeight taught: “Banknotes in circulation in the United Kingdom carry a ten digit alphanumeric serial number, which, as currently constituted, is of no value for the prevention of counterfeiting according to the present invention…”

    How often do the primary cited prior arts teach away? Isn’t that remarkable?
    ———————-

    *The full district court decision may be found as follows:
    (there is no direct link I know of)
    1) goto link to nysd.uscourts.gov
    2) chose “Southern District of New York” and click “Proceed to CourtWeb”
    3) drop-down and chose under All Judges=, “Kaplan, Lewis A.”,
    in “Caption search=” enter “cias” and enter this date twice “3/29/06 to 3/29/06”
    and then click “Run Report” and then click on link under “See attached”.

  22. Interesting discussion. I wouldn’t think of using “comprised of”, it just sounds funny, doesn’t make sense.

    Another example of how a small gramatical error results in years of litigation.

    This sounds like another case for the Grammar Vandal.

  23. MaxDrei,

    “And” does not mean “or,” but can be logically equivalent to “or,” for example, when phrased in “one of A and B.”

    As noted in my post above, comprise literally means “embrace” (see, e.g. “Elements of Style,” MacMillan, Strunk and White, 1959). “Comprised of,” however woefully prevalent its use may be, is, and should remain, improper and thus should not be considered as altering the fundamental meaning of comprise, whose meaning, when properly used, has not changed.

    The reason we have cases like this is to try to prevent a total loss of the value of a patent (or by Dennis’ count 134,000) based on an ill-informed choice of grammar. After all, in the U.S. the Patent Laws are supposed to be grounded in theories of Equity, which theories universally prevent the lapsing of a valuable right based on a minor curable defect.

  24. My compliments to Dennis and the contributors, for making this blog so entertaining. Does “and” mean “or”? Sometimes yes and sometimes no. Does “comprise” mean “include”? Often. Does “comprise” mean “consist of”? Sometimes, depending on the context. We are in 2007, as Malcolm writes, and it’s no longer practicable or fair these days to judge patent claims and specifications on the basis that they were (or should have been) all written by English language majors with plenty of time to mull over every word. It’s not English any more, but Globish. The tools that might help to decide patent actions are Art. 69 EPC and good old English scope vs validity squeeze arguments.

  25. “Comprised of” is wrong.

    “Comprised of” is a grammatical anomaly and makes no sense. The reality of the wrongness of “comprised of” was drilled into me early in my career and, in my opinion, easily separates the “men from the boys.”

    Unfortunately many people in surprisingly prominent places who should know better use “comprised of” and therefore try to rationalize it or defend its use rather than admit that they were wrong.

    Because “comprised of” is used often (by the ill informed) does not make it right. Because many people commit crime does not make crime right. Because many people call for patent “reform” does not make patent reform a good idea. Because many people said that the world was flat, did not make it so. Because many people believed that drilling holes in your skull cured disease, did not make it an effective treatment. Because many people say that global warming is caused by man does not mean Al Gore should get a Nobel Peace Prize…

    The reason the court construed “comprised of” to be exclusive rather than open-ended or inclusive is for the reason that “comprised of” bears no resemblance to the proper grammatical form “comprising,” which represents what most ill informed people mean when they use “comprised of.” Unfortunately, the closest analog to “comprised of” is “consists of” or “composed of,” which are exclusive or closed-ended. I’m sure if the court were to construe “comprising” they would construe it as inclusive of elements not specifically enumerated.

  26. Malcom, it’s not “insane”.

    The Federal Court of Australia recently (well, not so recently any more) upset some of its patent attorneys by saying that “comprise” doesn’t always have an open meaning: it’s meaning, like that of any other word, needs to be construed depending on the context.

    Given the meaning of comprise, outside the patent world, is uniformly taken to be a closed one, this has the great advantage of at least meaning it is possible a court there (and other jurisdictions that take notice of Australian decisions, such as NZ, etc.) may read the word as having its usual everyday meaning. What’s insane about that?

    If anything is “insane” it is courts like the CAFC saying comprised has a settled meaning that contrary to plain English.

    As for construing the term “and” to mean “or”, well, some judges of the CAFC may like to view “or” as always having the opposite meaning of “and”, but plain English isn’t like that. It may be true that American users of English are more likely to ascribe only a disjunctive meaning to “or” than other users of the lanaguage, but even plenty of Americans see things differently.

    I refer you former CJ Mayer and my post at

    link to patentlyo.com

    (The person who followed up my post about misquotoing 102 is right about that, no “not” should have been there, but incorrect about or being a disjunctive there)

    Cheers, Luke

  27. The district court construed “comprised of” as a “closed-end term that excludes the presence of all [non-presented] elements.”

    That’s insane. It’s 2007.

    It’s like construing the term “and” to mean “or.”

    I’m glad that you-know-who didn’t write a dissent.

  28. I too would like to know the first patent that used comprised to mean the opposite of its normal meaning – or perhaps more importantly – the first court that so held. Was it a US court/patent? A UK one?

    Cheers, Luke

  29. Can someone tell me just when patent lawyers decided to change the meaning of comprise?

    “include often implies an incomplete listing: “Through the process of amendment, interpretation and court decision I have finally been included in ‘We, the people.’”
    Comprise usually implies that all of the components are stated: The book comprises 15 chapters.”

    “Some writers insist that include be used only when it is followed by a partial list of the contents of the referent of the subject. Therefore, one may write New England includes Connecticut and Rhode Island, but one must use comprise or consist of to provide full enumeration: New England comprises (not includes) Connecticut, Rhode Island, Massachusetts, Vermont, New Hampshire, and Maine. This restriction is too strong. Include does not rule out the possibility of a complete listing. Thus the sentence The bibliography should include all the journal articles you have used does not entail that the bibliography must contain something other than journal articles, though it does leave that possibility open. The use of comprise or consist of, however, will avoid ambiguity when a listing is meant to be exhaustive. Thus the sentence The task force includes all of the Navy units on active duty in the region allows for the possibility that Marine and Army units are also taking part, where the same sentence with comprise would entail that the task force contained only Navy forces.” –American Heritage Dictionary

    When I first started this whole patent thing, that discrepancy between usage among the patent bar and the rest of the population never made sense to me.

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