Claim Construction Reversal Rates I – Overall Reversal Rates

75 thoughts on “Claim Construction Reversal Rates I – Overall Reversal Rates”

1. 75

   Dear Prof. Schwartz,

   I finally found the time to read your full paper, in addition to the excerpts posted on Patently-O. As a practitioner and as a law student, I found the paper really insightful.

   However, I think that your findings do not fully support your argument against the establishment of a specialist patents court (p. 41, B.). That is because you have not controlled for, or assessed, the impact of judicial technical qualifications (or lack thereof) on claim construction reversal rates – and more subtly, on the ability of district court judges to learn from reversal in this particular area of law.

   CAFC judges are not nominated without having some tech savvy (even though it’s not a formal requirement). Could it thus be the case that the reversal rates are a natural result of scientists, engineers, and technicians reviewing the work of writers, economists, and political scientists on technical matters?

   Further, could it be the case that apparent inability to learn “the claim construction skill” merely reflects judicial lack of the technical knowledge required to understand the facts at issue in each new case? After all, legal skills become meaningful in their application to facts; and facts misunderstood or overlooked inevitably will thwart a proper outcome, regardless whether trial court judges have improved their “skill” of claim construction. Contrary to your assertion that claim constructions “in some instances involve fact findings by the trial judge,” (p. 45, emphasis added), is it not the case that in order to construe a claim the trial judge must first take extensive judicial notice regarding the knowledge of one having ordinary skill in the art at the time of the invention (p. 41, second paragraph)?

   While it might be a non-trivial task for a judge with a three-decades-old undergraduate physics degree to comprehend the ordinary skill of an electrochemical engineer ten years previous, for a judge with a four-decades-old political science masters degree, the task quite possibly is insurmountable without extensive foundational education.

   Respectfully,
2. 74

   Hmmm, I’m yet to see a 132 filed, but hey, it might happen. Problem with the 103 is that they’ll just amend around my art I have very easily, two words would do it. But as to the preparing statement, eh, I don’t know, the person of ordinary skill would be hard pressed to limit the term “preparing” to “preparing for use” rather than “prepare” in the context of making the device, which they clearly feel they did in the spec. I hear what you’re saying though, we’ll see what they have to say.

   There is one major problem though with interpreting it the way you do, as being limited to “prepare for use”. In the spec, there is disclosed a method of cleaning the device. I saw “a method of cleaning a CVD apparatus” in the third ind. (as opposed to the 2nd ind. with “prepare”) and I restricted because the “method of cleaning” was very precise (i.e. all the stuff that should be in the “preparing” claim), they then elected without traverse (i.e. pretty much admitting they’re seperate) the “prepare” one. In any event, the whole thing is a mess now, what am I supposed to do? Withdraw the restriction and let him include all the language he should have included the first go around in the 2 ind? It’s fairly obvious he wanted the 2nd ind. more broad than the 3rd ind’s specific cleaning “preparation” method he discloses, and that probably means he wanted it to include the construction. And FYI, at the time of restricting I didn’t really think about the meaning of “prepare” quite so in depth, I thought he was using the actual deposition to distinguish that line of claims, so they’re obviously different lines of method claims, one to clean a machine, and one to “prepare” and then use a machine for a specific deposition process (classified in a different class than a “cleaning” method). This is why we should get more than an hour to do a restriction (so we can read the whole spec), people shouldn’t send in without traverse, and/or people shouldn’t try this crp, sht can hit the fan.

   “He or she might be, but he or she might also have just written a lousy claim.” True, but you do realize you’re asking someone to spend 15+ hours examining the things you send in, and then presenting it in good faith as a legally binding document to the American people, you guys need to keep them as simple as possible instead of trying to capture people. When you send in something that doesn’t make sense, we do actually try to examine it, but trust me it gets very difficult very fast when you’re not sure what’s being specified. And I’m forced to consider that almost jerkish when you don’t make it specific. Just like when I send out an action, I realize I’m asking you to look it over and understand what I’m saying. So far I have an overwhelmingly good rate of people understanding what I say in my actions (or at least it appears they do), and I’m not even an attorney. If you’re getting $150 an hour I would think you could at least put together coherent sentences for them and maybe have at least one person peruse your submission.

   May as well call it quits for the discussion guys, it’s sent out and won’t be back for 6 months.
3. 73

   E6: “Well, to use the examples we’re going with of CVD machines I’m pretty sure all the basic components and methods of preparing them that are necessary for a “deposition” were already in the prior art, otherwise they wouldn’t be called a CVDeposition machine. The only thing they can argue is that by saying “preparing” they mean preparing the new part as well as the normal parts of the machine, in which case we get right back to it all hinging on the only special thing being that the new part needs to be prepared because you added a structural feature, gee, surprise surprise, add a part of a structure and it must be prepared just like the rest of the machine, in the end, you’re relying on that structural part being added.”

   If the parts recited all are known in the art, then just present a 102 or 103 rejection and move on. You didn’t address my point that during examination, the term must be given the broadest reasonable interpretation that a PHOSITA would assign it. In a method claim, in a method context, would a PHOSITA think “prepare” meant “construct” or merely “prepare for use”?

   Honestly, if reading the term that over-broadly is what kills the claim, the attorney will just file a 132 declaration on the “ambiguity”.
4. 72

   6k,
   If it’s a bogus claim, then reject it. Section 112 is there for the reasons you cite. I don’t think anyone here has suggested that every claim you see is solid. But, do us a favor – keep it simple, and don’t assume the applicant’s attorney is a jerk. He or she might be, but he or she might also have just written a lousy claim.
5. 71

   “Absolutely. BUT, you need to look at the whole step, including any structural features of any hardware involved. Those structural features might be an essential part of the step, or they might not.”

   Well, to use the examples we’re going with of CVD machines I’m pretty sure all the basic components and methods of preparing them that are necessary for a “deposition” were already in the prior art, otherwise they wouldn’t be called a CVDeposition machine. The only thing they can argue is that by saying “preparing” they mean preparing the new part as well as the normal parts of the machine, in which case we get right back to it all hinging on the only special thing being that the new part needs to be prepared because you added a structural feature, gee, surprise surprise, add a part of a structure and it must be prepared just like the rest of the machine, in the end, you’re relying on that structural part being added.

   While I agree, I don’t need the public notice stuff, the public does need it. And I’m about fed up to – here with people writing claims so broadly you can’t tell a solid boundary. Claims exist for a reason, foremost amongst those reasons to appraise the person reading it (hopefully the public) of just what you claim as your property. And I’m not about to let people just throw the reason away so they can “capture” more people and then end up in court later over the same issue.
6. 70

   “you fail to address one simple matter, as stated above, the term “prepare” can be broadly construed to include preparing for work on a day to day basis”

   In which case you may very well have a sound basis for a 112 rejection and/or a 102 or 103 rejection (given the potentially wide breadth of the claim). If a (reasonable) reader of the specification and claims cannot tell whether the term “prepare” includes manufacturing activities or post-sale activities, or both, then it’s not definite. But if this is the case, then just say so in your rejection. Chances are that the attorney is not trying to pull a fast one, but simply failed to consider the ambiguity of the term. (“Prepare” strikes me as an extremely vague term, but I don’t know the context.) On the other hand, if “prepare” has a particular meaning in the claim’s context, or if it is explicitly defined, then move on. Leave the “public notice” policy discussions out of it – you don’t need it.

   I’ve received 112 rejections where my reaction was “Oh yeah, that could be read in a way that I didn’t intend.” I’ve received others, however, where it seemed clear that the examiner was making stuff up…

   “Any method claim MUST distinguish itself by the steps of the method performed …”

   Absolutely. BUT, you need to look at the whole step, including any structural features of any hardware involved. Those structural features might be an essential part of the step, or they might not.
7. 69

   Alright alright, ok, ok. I see where you’re coming from, however you fail to address one simple matter, as stated above, the term “prepare” can be broadly construed to include preparing for work on a day to day basis. So then you have 1. Direct infringement by the person opperating/preparing it for work and 2. Potential contributory infringement by the person who helped to “prepare” (the part of prepare that means construct) the apparatus. Who’s to say? The public is supposed to look to the specification to clarify such a broad term when they’re also supposed to consider the original claims as filed enabling as to the full breadth of the specification? Ridiculous. Even if there is a 20 page long section on how to get the device ready (which there isn’t) using the term “preparing” by itself in the claim it makes it fairly hard to argue that “preparing” clearly excludes making an apparatus that they clearly think they are the first to make as well as prepare for work (as evidenced by them claiming the apparatus in the restricted claims).

   I don’t have long to spend on this, but suffice to end it for today; Even IF, we presume that the facts are so dissemilar to the Lyell case that it is not applicable at all, the following still stands as a huge barrier:

   Any method claim MUST distinguish itself by the steps of the method performed. (and not any other thing, including notably here, the structural composition of the apparatus used to deposit, or the structure of the apparatus having the “preparing for work” method performed upon it).

   correct or incorrect? <---- that is the most important question right now.
8. 68

   Ex6k: You said “…why does the case specifically say: ‘Such a manufacturer or seller would have no indication at the time of making or selling a workstand (apparatus) of the structure (xyz) set forth in appellant’s claim 2 whether they might later be sued for contributory infringement because a buyer/user of the workstand (apparatus) later performs the appellant’s claimed method (deposition) of using the workstand.’ ”

   Because it’s a completely different scenario than the one you presented. In Lyell, no one can tell whether it’s a method or an apparatus. If it’s both, then it’s only infringed by the end user who both uses the apparatus (an infringing act) and practices the method (which is using the apparatus.) That would be direct infringement, potentially making the manufacturer (who might never “use” the apparatus) liable for contributory infringement.

   Your example is clearly a method claim. And if “preparing” means “manufacturing”, then it’s a nearly worthless claim, because no single actor practices all steps of the method. But that doesn’t make it indefinite.

   You also said, “… in claiming: ‘An apparatus comprising: part a, part b, part c’ … You’re implicitely [sic] stopping people from making that invention i.e. reworded … ‘A method of making an apparatus comprising: providing part a, providing part b, and providing part c.'”

   Well, maybe, assuming your method claim is actually operational. But, the two claims cover different things, different acts, and, probably most importantly, can cover different actors. Your ‘method of making’ claim is of no use against an importer of the apparatus – the apparatus claim will get anybody who uses, sells, or imports it. Much better, hmmm?

   Furthermore, the two different claims may be subject to different prior art. Thus, a novel method of making a known apparatus may be the only thing available. Or, as you suggest, an old method of making a new apparatus might (I said MIGHT) not be novel and non-obvious.

   The case in Lyell was actually about a (poor) attempt to claim a method for USING the apparatus. That’s a whole different story, since you can now capture all of the end users. Great, if you can get it. However, not all methods for using a novel apparatus are novel and non-obvious, so the method for using might not be patentable.

   We are not filing claims to multiple statutory classes of invention for fun. At least not those of us who know what we’re doing.
9. 67

   First, how can it be that the specification discloses the claimed method and yet never uses the term “prepare”? How does the applicant use the term?

   Second, the rule isn’t “broadest possible interpretation.” Instead: “The Patent and Trademark Office determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.'” Would one of skill in the CVD art, knowing that a reactor MUST be prepared for a deposition process, interpret “preparing” as “manufacturing the entire reactor”? Not reasonably.
   ______________
   Also, very good questions. Perhaps you are right, and perhaps they will claim that “preparing an apparatus” means “preparing for work an apparatus”. However, in this case, the “interpretation” of this claim is quite unclear since they also claim per se the apparatus in the restricted claims. Now, if they want to argue that, then that’s fine, but the method claim still must distinguish itself over the prior art in terms of the METHOD STEPS and not the STRUCTURE of the apparatus the method steps are being performed to, which it does not. So if they want to do that, I’ll be happy to see “preparing an apparatus comprising xyz” as “preparing an apparatus”. And again fellas, there’s more ways to apply a chemical coating than by vapor deposition, thus why I put “VAPOR” in quotes.

   All this mess, he’s rejected under 103 anyway, and he’ll probably go through RCE over just that. We’re talking a year before this even really matters. Yeah I gtg can’t be looking over this case anymore for now.
10. 66

    link to theiplawblog.com

    See further this matter. I just don’t know how “preparing” i.e. constructing, can be reasonably construed as not claiming the actual structure itself. I get the technical difference, but reasonability must prevail. Especially when in claiming:

    An apparatus comprising:
    part a, part b, part c

    You’re implicitely stopping people from making that invention i.e. reworded:

    Making an apparatus comprising:
    part a, part b, part

    Or reworded again:

    A method of making an apparatus comprising:
    providing part a, providing part b, and providing part c.

    Anyway I gtg, more cases to do though I like this one.
11. 65

    That is a great question Fen, and one that I’m also considering. “preparing” is inclusive of “constructing”, i.e. putting together, as well as cleaning, putting new bits in place, putting in replacement parts, etc etc. and that’s a real problem.

    Preparing:
    1. To make ready beforehand for a specific purpose, as for an event or occasion: The teacher prepared the students for the exams.
    2. To put together or make by combining various elements or ingredients; manufacture or compound:
    ============================
    First, how can it be that the specification discloses the claimed method and yet never uses the term “prepare”? How does the applicant use the term?

    Second, the rule isn’t “broadest possible interpretation.” Instead: “The Patent and Trademark Office determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.'” Would one of skill in the CVD art, knowing that a reactor MUST be prepared for a deposition process, interpret “preparing” as “manufacturing the entire reactor”? Not reasonably.
12. 64

    OMG look at that, the case was linked from PO anyway:

    link to patentlyo.com

    Mixing = bad. Though they did theirs a bit differently.
13. 63

    My bad, you mean that lawyer searching for the board. Hmm, he could be here right now as we speak … scary. Speak up if you’re here Mr. Attorney. Frankly I should have just called them about this already and sorted something out because I know they’ll be calling come final time.
14. 62

    “If the “preparing” limitation in your example is construed to mean the manufacturing of the apparatus, then there would ordinarily be no direct infringement, and thus no contributory infringement, ”

    Ok, then why does the case specifically say: “Such a manufacturer or seller would have no indication at the time of making or selling a workstand (apparatus) of the structure (xyz) set forth in appellant’s claim 2 whether they might later be sued for contributory infringement because a buyer/user of the workstand (apparatus) later performs the appellant’s claimed method (deposition) of using the workstand.” “Accordingly, for this reason alone we would sustain the examiner’s rejection of appellant’s independent claim” citations included for the lawyers who are just like the lawyers I deal with in my everyday exp where they require a little (speaking like this) to specify to them just what exactly is on the page in front of them. And remember, this is totally ignoring the must better grounds I’ve already stated.

    That is a good question about if I’ll cite it, which I will do before I let it get past a 112, but that’ll be a year in the coming. Like I said, that part is a secondary consideration, so it’s not on my initial action. And if you’ve waited that long, you shoulda just taken me to lunch and found out who I was much easier, Ordinary’s invitation certainly applies to everyone. If you feel that retributitive, you should realize this job is disposable, and like most of my buddies I came into the place with (the few that have stayed this long), we’re all ready to leave already. Judging by the number of people inquiring about my resume online I hardly think I would be long out of work. Them pushing me out the door here rather than making me leave due to work conditions is hardly a difference to me. I would suggest searching the terms I gave as the bare bones of the claim above, but that’s going to be a tough search, there’s lots of fluff in the way in the real one. And oh wait, hah, request for non-publication. Looks like this one might be impossible for now.
15. 61

    “Back to school, ex6k. If the “preparing” limitation in your example is construed to mean the manufacturing of the apparatus, then there would ordinarily be no direct infringement, and thus no contributory infringement, if someone other than the manufacturer, e.g., a customer, performed the “depositing” limitation. Mr. Crouch was kind enough to highlight a case on this very point not so long ago.”

    Dead on …. and again, #6K shows why examiners should treat case law very carefully. They don’t know how to handle it, and eventually, it will blow up in their face. The fun part now, however, if he does cite Ex parte Lyell 17 U.S.P.Q.2d 1548 (BPAI 1990) (a rarely cited case) … the attorney will likely hop on Google and do a simple keyword search. Depending upon the search, the attorney may well very likely end up on this board and this thread. If so, #6K will have outed himself.

    The question now is …. will #6K stick to his guns and cite the case, or will he let this case slide to protect his identity??

    Inquiring minds want to know ….
16. 60

    “Thus, the manufacturer carrying out “preparing” in my claim in my case, would also not be reasonably appraised of his contributory infringement situation … if he were to “prepare” (manufacture in Lyell) and then someone else “deposit” (position output in Lyell).”

    Back to school, ex6k. If the “preparing” limitation in your example is construed to mean the manufacturing of the apparatus, then there would ordinarily be no direct infringement, and thus no contributory infringement, if someone other than the manufacturer, e.g., a customer, performed the “depositing” limitation. Mr. Crouch was kind enough to highlight a case on this very point not so long ago.
17. 59

    All I ask, ex6k, is that you leave some oxygen for your fellow examiners.
18. 58

    That is a great question Fen, and one that I’m also considering. “preparing” is inclusive of “constructing”, i.e. putting together, as well as cleaning, putting new bits in place, putting in replacement parts, etc etc. and that’s a real problem.

    Preparing:
    1. To make ready beforehand for a specific purpose, as for an event or occasion: The teacher prepared the students for the exams.
    2. To put together or make by combining various elements or ingredients; manufacture or compound:

    That’s a real bch ain’t it?

    Ahh, it appears pds called the broad construction of “preparing” above. See, they know what they’re covering when they claimed this.

    Also for pds from the cheatsheet actual case Lyell (which I know is not directly analogous, but the below lends itself to the cheatsheets actual case being more than completely non-analogous due to the recognition of the fact that the “apparatus” component portions in the first part of the body of the Lyell case must be “manufactured” i.e. prepared as claimed in my claim):

    Appellant’s independent claim 2, in combining two separate statutory classes of invention in a single claim, in our opinion, would raise serious questions for a manufacturer or seller of a tool like that claimed by appellant regarding infringement. Such a manufacturer or seller would have no indication at the time of making or selling a workstand of the structure set forth in appellant’s claim 2 whether they might later be sued for contributory infringement because a buyer/user of the workstand later performs the appellant’s claimed method of using the workstand. We therefore find that appellant’s claim 2 is not sufficiently precise to provide competitors with an accurate determination of the “metes and bounds” of protection involved so that an evaluation of the possibility of infringement may be ascertained with a reasonable degree of certainty, as discussed by the court in In re Hammack, supra. Accordingly, for this reason alone we would sustain the examiner’s rejection of appellant’s independent claim 2 and of dependent claims 4, 7, 8 and 10 through 12 under 35 USC 112, second paragraph. (This being a seperate issue entirely as addressed by the court, from the issue of “your claim purports to belong to two separate classes in the preamble”)

    Thus, the manufacturer carrying out “preparing” in my claim in my case, would also not be reasonably appraised of his contributory infringement situation, since in the indirectly analogous case of Lyell, the manufacturer “preparing” the workstand was not appraised of his situation regarding contributory infringement if he were to “prepare” (manufacture in Lyell) and then someone else “deposit” (position output in Lyell). This basic premise stands regardless of the preamble of Lyell, since it is presumed the manufacturers referred to in the Lyell case are indeed doing some preparing, same as the ones in my case.

    And actually, this was the very reason that at the outset of looking at the body of Lyell I had thought it was more analogous than I did after I read the preamble closely and had discussed it with a coworker. And even after disregarding it as directly analogous, it still stands to say something about the public notice to people preparing as opposed to people performing the deposition.

    Bottom line is though, even disregarding that 112 issue, it would be folly for me to regard his structural limitation of his apparatus in a method as being a valid sole reason for patentability.

    And yeah, trust me I got the apparatus, method of making apparatus/using apparatus, and method of cleaning the apparatus all as ind’s, but I routinely see apparatus/method/device/composition all in one case. Normally they aren’t too hard to divey up properly.

    According to EAST a grand total of 300 some applications contain “preparing” within 2 terms of “apparatus” in the claim language in all databases. Based upon a random sampling I can see that the vast majority of these are “food preparing apparatuses” etc. and the ones which actually say “preparing an apparatus” are all cases dating from 1999 onwards and nearly all of those are pgpubs, i.e. they’re unexamined or the claim did not survive to issue. This appears to be a brand relatively new brand of tom-foolery. In the class for deposition machinery there is a grand total of 37 hits, all but 3 of which are not “preparing an apparatus”, and of those 3, 2 are pgpubs, and 1 is an actual patent from 02′ with a lot more to the claim than the structure of the apparatus being formed and a generic function performed. Yeah, I’m not letting this slide, it looks like most examiners get rid of claims like this somehow, maybe I’ll check some cases.
19. 57

    “Hardly pds, you miss basic underlying principles in my “hypothetical” that are quite telling. In the BODY of the claim, it recites “preparing an apparatus comprising:” this means that this is supposedly part of a method of making that apparatus and then using it, NOT just using it.”

    Why do you equate “preparing” with “constructing”? When I place the appropriate drill bit in the chuck of my drill, am I not “preparing” the drill for drilling?
20. 56

    “Thus, the person who performs the act of deposition and did not “prepare” the machine, “hasn’t” infringed every limitation since he did not prepare the machine.”

    You are talking about sloppy claim drafting in which you don’t have an infringer that performs all of the claimed method steps. This is different between than not knowing whether or not the person who makes the apparatus is infringing or the person who operates the apparatus is infringing.

    In your hypothetical, the person who “prepares” the apparatus is not infringing as long as they aren’t also doing the “depositing.” Conversely, the person doing the depositing isn’t infringing so long as they aren’t preparing. In this instance, these parties definitely would know whether or not they are infringing.

    However, as a practical matter, the “preparing” limitation could be read so broadly that any step prior to the deposition process could be considering “preparing” … even if it is just to turn the coater/”larger apparatus” on.

    Regardless, as long as the individual steps are definite, there is no confusion as to who would be infringing based upon your hypo.

    “I don’t want to be the one who allowed an apparatus claim that belongs in another AU to which I do not belong and have little to no experience.”

    Applicaitons like this get split up all the time …. you can get a set of claims for the apparatus, for the product produced by the apparatus, and the method of using the apparatus, and (perhaps, if it is different) the method of producing the product. Four sets of claims and four possible art units …. quite common … even if the claim language is almost identical.

    “Maybe he’d rather me 112 him for not being clear enough about what he did to distinguish over the art”
    Do that and he’ll slap you with Metabolite Labs … “[o]nly when a claim remains insolubly ambiguous without a discernable meaning after all reasonable attempts at construction must a court declare it indefinite.” 112 2nd paragraph is about having a definite scope of the claimed invention … it isn’t about the prior art. This is why examiners don’t reject every claim under 112 when they have a prior art rejection. If I claim a chair comprising 3 legs and the prior art shows a chair with 4 legs, although the claim is anticipated, my claim is not indefinite.
21. 55

    “Does the claim encompass the structure of the apparatus prepared by one entity and used to deposit by another, or only the use of such an apparatus prepared and used by one entity”
    The infringer is the one (in your hypothetical) who performs the method, not who makes the machine. On the contrary, in your Cheatsheet case, the infringer could be one that either performs the method? or makes the machine? or does the infringer have to do both??? <--- this is the inquirty what underlies that decision, what does the infringer have to do when both a method and machine are claimed? It is unclear, and thus, indefinite. ___________ Hardly pds, you miss basic underlying principles in my "hypothetical" that are quite telling. In the BODY of the claim, it recites "preparing an apparatus comprising:" this means that this is supposedly part of a method of making that apparatus and then using it, NOT just using it. Thus, the person who performs the act of deposition and did not "prepare" the machine, "hasn't" infringed every limitation since he did not prepare the machine. But on the other hand, the person that made the machine did not use it, so he did not violate the last limitation of doing a deposition. And on our non-existant third hand, maybe they're both contributing to the infringement but who can say? There is nobody to say, and this hypothetical is not my own it is from a case used in the cheatsheets rational. "Look at all the issued patents that I previously cited. All of them include an apparatus that is involved in a method of coating. Any applicant is going to be able to find hundreds, thousands, if not tens of thousands of comparable cases." I'm aware of all the cases, and not even one single one will they be able to produce that had "allowable patent" stamped on it based only on a missing structural limitation of the apparatus if the claim began with "a method for doing:". The BASIS for the affirmative decision of patentability MUST be based on something in a method claim OTHER THAN the structure of the apparatus performing it. That is what all of the controlling law leads us to. That's what the book on claim construction states quite clearly, and it's overall just how things have to be. Again, I understand how easy the smackdown was for them to lay down in the Cheatsheet case, however, that does not preempt the use of all the rationals relyed upon in that case from other cases being used once again. The cheatsheet is just that, a collection of rationals from a case that was fairly similar that had a bunch of other cases cited. And of course he'll fight it, the question is, who's up for a round of argument? I fin know I am, for one thing I don't want to be the one who allowed an apparatus claim that belongs in another AU to which I do not belong and have little to no experience. The whole case could be prima facie at a glance to one of their examiners. I'll probably end up talking to a primary form there if my primary or spe overrules me as to a rejection (doubt it, hasn't happened yet). Fen: I'm not withholding the references. I'm sending him a 103 on all the claims that's good enough for his overclaim as a generous gesture. And yeah you're right about the collegiality that's for sure. I just got off the phone with an attorney who seemed quite angry over his final and how my interpretation is so broad and amorphous it's nearly impossible to argue effectively, and I recognize that, but I also recognize that the art gives a clear indication of that the element can be one way or the other in the same embodiment at the same time and it's all a matter of how one wants to consider it. Such is the nature of broad words, to bad for him. Maybe he'd rather me 112 him for not being clear enough about what he did to distinguish over the art? Eh, idk.
22. 54

    FWIW, I think it’s poor form to present the applicant with the tenuous “hybrid claim” rejection while hiding assertable art behind your back, then produce the art with a flourish and make the rejection final. When I’ve had a claim deemed indefinite or ambiguous by an examiner, he’s always included a rejection that addresses the claim to the extent he can understand it.

    There is no point to presenting prior art (and making a rejection based thereon) for the first time in a second/final action, other than to induce an RCE for counts. Especially if you’ve deal with this attorney before and you find him reasonable. Try collegiality.
23. 53

    “I am however saying that since the patentable subject matter in the claim is directed to the mechanism of it’s apparatus issues under 112 arise.”

    Look at all the issued patents that I previously cited. All of them include an apparatus that is involved in a method of coating. Any applicant is going to be able to find hundreds, thousands, if not tens of thousands of comparable cases.

    The 112 issue in the “Cheatsheet” was because the preamble cited BOTH a method and an apparatus …. that is the where the analysis of the BPAI was directed. As you presented the hypo, it is CLEARLY just a method claim.

    Methods, by their very nature (if you want to stay out of 101 territory) manipulate things (i.e., matter/data) and if the manipulation is not done through energy (e.g., heat treating or laser annealing or applying an electric current) then the manipulations is doing with a thing (e.g., a device, a manufacture, etc.). FYI, unless you have a 1:1 match, then relying upon case law is typically not advised. Remember MPEP 2144 “The examiner must apply the law consistently to each application after considering all the relevant facts. If the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court.”

    “Does the claim encompass the structure of the apparatus prepared by one entity and used to deposit by another, or only the use of such an apparatus prepared and used by one entity”
    The infringer is the one (in your hypothetical) who performs the method, not who makes the machine. On the contrary, in your Cheatsheet case, the infringer could be one that either performs the method? or makes the machine? or does the infringer have to do both??? <--- this is the inquirty what underlies that decision, what does the infringer have to do when both a method and machine are claimed? It is unclear, and thus, indefinite. You don't have that problem with your "hypothetical" ... regardless, I'll drop this now and leave making these arguments to the attorney getting paid to do it ... if you want to go ahead with it, at least you should have a good idea as to what the response will be because unless the attorney is spineless, they should traverse.
24. 52

    “Just as a reminder …. all words in a claim must be considered in judging the patentability of that claim. In re Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971); In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970).”

    This is where we part ways because of the way you construe “patentability”. Sure, in considering if the patent is patentable one must look to all of the terms as a matter of course. On the other hand however, if there is but one limitation on which patentability is found to rest (in this case structural feature z of the apparatus) then

    “”the patentability of a method claim cannot be predicated solely on the structure of a mechanism” (btw, this was from the same claim construction book, and this is precisely the reason he tells his students not to include the apparatus structural limitations in a method, because they limit the claim, but when it comes down to the final determination of patentability they cannot be looked to as a source of patentable weight)

    then that feature is found to not have patentable weight. Again, there is no objection to the term being included in the claim, just that patentability cannot rest squarely on that limitation. I.e. in my reason for allowance I could not type in “The examiner was unable to find an apparatus with z, therefore the claim distinquishes over the prior art” and further, in this case since his prior art device has all limitation other than the one structural limitation, it further fails 112 for distinctly claiming (i.e. claiming in a distinguishing manner). Also, you may want to reconsider your notion of “patentability” in terms of that all limitations must be taken into account to determine it, but some limitation terms are not afforded patentable weight if they are the sole basis for the patentability determination being affirmative.

    Again, this all stems from the mechanism which a method claim must distinguish itself, and which an apparatus claim must distinguish itself. And in this case, the distinguishing characteristic is a structural limitation in the apparatus, thus, it fails 112 under the case I cited way up that tells us what the proper way for a method to distinguish is and the proper way for an apparatus to distinguish is. I liked the part about this being so elemental so as to not require citation.

    I would agree with you though pds, if he were to have some real connection between the part z and the process being claimed (deposition) then I would likely back off, as in the claimed process portion is especially enabled to be performed by having that part provided. For example if the deposition were especially fast, clean, etc etc. Because then the determination might not rest solely on the part z, but on the interrelation between the deposition and the part z. But it does not, there is no ground for me to give there. If he should convincingly argue that his benefit to the deposition is in the spec and is included by reference to part z in the method claim, I may let it slide, but imo, that better deposition process should have to be in the claim as well. Can’t be pulling limitations on the deposition process in from the spec outta nowhere.

    Also, this does not begin to address the thing in the cheatsheet about if the public is adequately notified about what infringes, the instance they use is an apparatus manufacturer not knowing if he would be sued for contributory infringment if he were to build the device, and then a customer uses it a year later. Does the claim encompass the structure of the apparatus prepared by one entity and used to deposit by another, or only the use of such an apparatus prepared and used by one entity? Fails 112 again, public notice, learn to give it.

    Btw, does anyone know how to find this old Dammers case besides going to the library? It’s so old it doesn’t seem to be on the web yet, or at least I couldn’t dig it up after 30 minutes last night.

    Also, I need to address one person above who thinks I’m willfully ignoring the difference between the Cheatsheet case above and the instant application. I am certianly not. I am however saying that since the patentable subject matter in the claim is directed to the mechanism of it’s apparatus issues under 112 arise, and I’m borrowing heavily from the case and rational of the Cheatsheet, but not using an actual 1:1 match to that case.

    Lunch over, see you guys 2nite.
25. 51

    Malcolm Mooney is right when he points out that the numbers do no necessarily indicate out the relative performances of the various courts. For rates of reversal to be informative, the denominator of the fraction must be the number of dispositive rulings by the judge or the district court.
26. 50

    “Maybe instead of the 112, I should just ignore the limitation until he argues I ignored it, then hit him with Dammers etc and say yeah, I ignored it because it’s the only thing your claim rests on, and as being a method claim it cannot rest solely on such a limitation for purposes of patentability. I thought you knew that Mr. Lawyer?”

    The difference between Mr. Lawyer and Mr. examiner#6k is that I don’t make a habit of reading cases improperly.

    From Landis, Mechanics of Claim Drafting, FN 26, regarding Ex parte Dammers …. “points out that structural limitations are not per se objectionable, and to the extent necessary to carry out the claimed method, are permissible in a method claim.”

    Appeal No. 1997-0234 “In response, Appellants, citing Ex parte Dammers, 155 USPQ 284 (Bd. App. 1961), argue (Brief, page 6) that structural limitations in method claims are not inherently objectionable, an argument with which we agree.”

    Moreover, your cite of “the patentability of a method claim cannot be predicated solely on the structure of a mechanism” does not reveal that *solely* was in emphasis. As such, as long as the mechanisn is not solely used, it is OK. It seems that your claim includes method steps, and thus, the mechanism is not *solely* used.

    Just as a reminder …. all words in a claim must be considered in judging the patentability of that claim. In re Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971); In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970).
27. 49

    Mark Mann writes:
    ———–
    Although a radical idea, I think people need to seriously consider whether the CAFC experiment has worked. I have formed no conclusion on the question, but it is something to think about. Having one appellate court has its downsides — such as no percolation of difficult issues. Take Markman, had there been no CAFC, there no doubt would have been a Circuit split on whether de novo or clear error review or some mix would be appropriate. We could then see which systems were working the best and have the Supreme Court make the ultimate decisions based on that (and other things). As the system is now, however, we have one court that makes its decision and then we have to guess whether another answer would have worked better. These are things we should actually think about rather than take it as a given that the CAFC’s exclusive jurisdiction is a good idea.
    ———-

    It’s not the most radical idea in the world.

    See these 2 articles:

    link to law.northwestern.edu (Nard and Duffy suggest that there should be more than one CAFC–largely because of things like percolation and the desirability of running experiments in parallel instead of in series).

    link to papers.ssrn.com (Wagner & Petherbridge paper titled “Is the Federal Circuit Succeeding?” — bears some similarity to Prof. Schwartz’s study)

    I don’t agree with the Nard/Duffy article, but it shows that people *are* thinking about the question. Their paper actually provoked a response from one of the CAFC judges and his clerk:
    link to law.northwestern.edu
28. 48

    The “Bizzaro” world that MaxDrei lives in, pds, is one where specialist patents judges do the first instance stuff. 95% of cases settle in the barely one year between issuing proceedings and the full trial of the action, after discovery and expert reports and observed experiments. Only one third of the trialled 5% are appealed (because for the remaining two thirds of cases it would be futile). In my world, nobody bothers to do research on statistics for reversal rates. And don’t say that’s because UK is of no importance. There might not be so much at stake, financially, as in the cases you handle personally in the special world in which you live, but blockbuster drugs for the whole of 450 million inhabitant Europe is big enough to be significant, no?. Thanks again, Dennis, for getting these threads up and running. They are very educational.
29. 47

    Thanks for the interesting information, Prof. Schwartz. It would be interesting to compare the above table with reversal rate data for administrative judges in BPAI and ITC claim constructions. Another interesting topic is how reversal rates have changed based on years of post-Markman experience of non-CAFC judges (about 11 yrs max) among the judges in general (as a corollary to the Time-Adjusted Reversal Rate chart on p.64 of the article). Are reversal rates improving in general as Federal Circuit opinions shed more light on the Court’s claim construction preferences? Have these data been charted elsewhere recently?
30. 46

    Maybe instead of the 112, I should just ignore the limitation until he argues I ignored it, then hit him with Dammers etc and say yeah, I ignored it because it’s the only thing your claim rests on, and as being a method claim it cannot rest solely on such a limitation for purposes of patentability. I thought you knew that Mr. Lawyer? Do I smell … a futile RCE? Why yes, yes I think I do. But MM is totally against such a mean ol’ thing, so I guess I won’t.

    Anyway, enough for now, time for bed.
31. 45

    Proud to see my home district down near the 20% mark… Yep.
32. 44

    Hmmm, well continuing my analysis of the situation at home reveals that according to Landis on Mechanics of patent claim drafting
    link to books.google.com
    this sort of thing should be avoided since “the black letter” law is that the patentability of a method claim cannot be predicated solely on the structure of a mechanism used in practicing the method (citing Ex parte Dammers 155 uspq (BNA) 284 (BPAI 1961).

    Hmm, looks like I win, but not the way I thought I would. Even though it may not be objectionable per se, it will not lend patentable weight to the claim. So, perhaps ignoring it will do the trick here. But, I haven’t ignored it yet, I got some art that covers it but when he amends around that art, well, we’ll see about ignoring. Moreso we’ll see sending a 112, this matter seems to have gone both ways, we’ll see what the primary thinks in the morn.

    Strangely, this Ex Parte Dammers has been relied upon to overcome a 112, but it makes it so the claim cannot be predicated upon the structural portion of the apparatus used in the methods execution. I must read this if I can find it and not take that Landis guys word for it.
33. 43

    Dave, thanks for the responses.
34. 42

    “I’m aware of where you’re going with this, but that’s very different than making your whole “distinguish over the prior art” part of your method claim hinge on the *apparatus’s* special structural feature rather than the *thing you’re making or doing’s* special feature”

    Let me introduce to a thing called patent law and how each limitation in a claim is important, has meaning, and must be identically disclosed or obvious in view of the applied prior art.

    Classic examiner … sua sponte deciding to ignore claim limitations that he/she doesn’t think are important … I’ve been down this road before … however, nothing that a good appeal brief doesn’t cure very quickly.

    “The only person in the whole patent process who usually ever adversarial is the patent “seeker” or “holder” because he is the one wishing to trade in his idea for a monopoly. The office, saying “no, we would not like to trade you for that” is never adversarial, and the “infringer” sitting at his house making “your” invention is hardly being your adversary, unless it genuinely appears you have a solid patent and he is spiting you by using it. In which case, then the call goes to the patent holder.”

    Wow … do you really know what is implicit within the meaning of an “adversary”? The old expression “it takes two to tango” applies here.
35. 41

    MM

    Let me introduce you to two things called a dictionary and common sense.

    Only in Bizzaro world (apparently inhabited by the likes of MM, MaxDrei (aka MadMax), and examiner#6k) does one need think hard about whether the teaching of a rigid member identically discloses a flexible member.

    “Therefore, the ‘flexible’ limitation seems to be very important to the patentability of the claimed invention.”

    Let me introduce to the world of claim drafting … if the word isn’t important, it shouldn’t be in the claim. Do you populate the claims you draft with unimportant words??? Every word in a claim has meaning and, therefore, is important.

    “The kind that begins “By ‘flexible’, applicants mean …” blah blah blah.”
    I guess the size of your specifications are comparable to the old Encyclopedia Britanica.

    “And you think it’s reasonable for the Examiner and every other potential infringer to have to GUESS at what a “reasonable” definition is for the term based on frickin EXAMPLES in your specification?”
    The issue is claim construction, not 2nd paragraph of 112. Try to stay on track. I know you like to change topics when the argument isn’t going your way … however, unlike the occasional newbies on this board who have had the (dis)pleasure of attempting a real dialogue with you, I’ve seen your tricks before. BTW: If you are looking for an absolute definition, you aren’t going to get it … and the case law doesn’t require it.

    “Gee, could have I missed that aspect of your original hypothetical? Oh, right. You forgot to mention it. Thanks. Thanks a lot.”
    Apparently, some people do need to get hit over the head with a baseball bat to understand a point that most need to be hit with a pillow to understand. Regardless, you wondered whether or not X was profoundly different than A, and I responded. I find it amusing that you rail on me for being too verbose, yet when I try to make my hypothetical brief, you rail on me for that. How much hand holding do you actually need? Was this hypothetical too complicated for you?
36. 40

    Ignore that last sentence — I edited out the bit that it pertained to. Oops.
37. 39

    Thanks everyone for the comments to my post. I have a few quick responses.

    1. What I termed the “overall reversal rates” are the rates for appealed cases over the eleven year period. It does not include cases in which an appeal was not taken. In other words, 38.4% of all appealed cases had at least one wrong construed term, and 30.0% of all appealed cases were reversed or vacated due to a claim construction error. The 8.4% difference (38.4 – 30.0) represents cases in which the claim construction error did not require the case to be reversed or vacated; in those cases, the decision was affirmed on other grounds.

    2. As a point of reference, 11.5% of civil cases were reversed in the regional U.S. appellate courts in 2006, according to data from the Federal Judicial Center. See link to uscourts.gov.

    3. I don’t know the claim construction reversal rates of the regional circuit courts pre-1982. Remember, however, that those cases all were decided before the Supreme Court’s decision in Markman and the Federal Circuit’s decision in Cybor.

    4. As for the rate of reversal over time, my quick calculation of it shows that it has oscillated over time. (I hadn’t calculated it until now.) The highest reversal rates were of 40+% of cases being reversed or vacated in 2003 and 2004. Separate from the reversal rate, I believe that the number of dissents and concurrences also have increased after Phillips in 2005.

    5. I’m writing a second article analyzing the data from various other perspectives such as by technological field of invention. I’ll report back when I’ve completed that analysis.

    Dave
38. 38

    Be prepared to legally support your contention that product-by-process is the only “accepted” hybrid claim and that the present claim is a hybrid. And you (willfully?) miss the difference between the Lydell claim and the one before you. Lydell was “apparatus (device) and method for using said apparatus”; yours is “method for doing X, said method reciting some specific apparatus requirements”.

    The point of having a method of use claim with some mechanical specifics therein is to have a claim that reads on the infringing CVD reactor *user* rather than the infringing CVD reactor *manufacturer/seller*.

    On-topic: would the district court and/or CAFC construe “adjacent” to mean “in physical contact with” or would “in intimate proximity to” suffice?
39. 37

    So the applicant recites novel structural limitations in a method claim? If the structure is novel, then the method is novel.

    I’ve worked on litigation where the district judge flat-out got a term wrong. The term was clear in the art, its Latin root is crystal-clear, but defendant bamboozled him. CAFC reversed (quite rightly, and not said because I worked for patentee).

    I’ve had an examiner take a position along the lines of “A granite boulder placed in the middle of a small river will be worn down by the river until it is gone. Therefore, a granite boulder is soluble in water.” Happily, that sort of thing doesn’t happen too often. (And I’ll freely admit to more than once filing claims where I didn’t foresee/appreciate the breadth that my words were capable of being interpreted. The examiner pointed it out in making his rejection,and I realized my claiming error.
40. 36

    Alright, before I step out, here’s the wording I’ll say as my final opinion: An “Apparatus-by-process and process for using such” claim does not fall distinctly into a statutory catagory, and neither does it fall under the accepted hybrid practice of product-by-process, further, even if it were to, it would fall under apparatus, as product-by-process falls under product, and not method as was originally presumed by me for purposes of restriction. Though, to be sure, it is not an accepted hybrid claim anyway. And in this case, the applicant already split this off via a restriction from the straight forward apparatus claims.

    Odds on seeing the board in my not-so-distant future?

    Oh, and MM, I see a few product by processes, and yes sometimes I consider that, but, in the end, it’s not my call. Yes, there is a reason it isn’t my call. No we don’t need to get into it.
41. 35

    “What kind of “definition” are you looking for?”

    The kind that begins “By ‘flexible’, applicants mean …” blah blah blah.

    Look, you wrote the darn hypothetical. The claim seems very broad. Therefore, the ‘flexible’ limitation seems to be very important to the patentability of the claimed invention. And you think it’s reasonable for the Examiner and every other potential infringer to have to GUESS at what a “reasonable” definition is for the term based on frickin EXAMPLES in your specification?

    “How about the difference between getting hit with a baseball bat and getting hit with a down-filled pillow … that’s the difference between what was claimed . . . and what was taught in the prior art.”

    Gee, could have I missed that aspect of your original hypothetical? Oh, right. You forgot to mention it. Thanks. Thanks a lot.
42. 34

    The only person in the whole patent process who usually ever adversarial is the patent “seeker” or “holder” because he is the one wishing to trade in his idea for a monopoly. The office, saying “no, we would not like to trade you for that” is never adversarial, and the “infringer” sitting at his house making “your” invention is hardly being your adversary, unless it genuinely appears you have a solid patent and he is spiting you by using it. In which case, then the call goes to the patent holder.

    “What percentage of method claims do you see that do not also recite at least one of a “machine, manufacture, or composition of matter”? My guess is not a whole lot of them.”

    I’m aware of where you’re going with this, but that’s very different than making your whole “distinguish over the prior art” part of your method claim hinge on the *apparatus’s* special structural feature rather than the *thing you’re making or doing’s* special feature.

    I have really gtg, between my gf trying to talk to talk to me (I’m typing this as I drone on with her, why must they talk so much?) on the phone and me getting weird emails it’s like I’m never getting outta here, tty 2n.
43. 33

    “The obvious follow-up question is: is ‘flexible’ defined in the specification? If it’s not, the claim should be tanked unless ‘A’ is profoundly different from ‘X’.

    What kind of “definition” are you looking for? A definition that would satisfy an engineer? a definition that would satisfy one having ordinary skill in the art? Is a range of modulus of elasticity needed or are examples sufficient enough?

    Does one need to further define the terms “flat”? “round”? “resilient?” “opaque?”

    The answer to those questions (about further defining) revolves upon who you ask (i.e., one having ordinary skill in the art) and the context in which it is asked (i.e., the art).

    Of course …. this all brings me back to the point I originally made, which is that the examiner will make a “broadest” claim construction and declare that the claim construction is reasonable without making any of these inquiries.

    “If it’s not, the claim should be tanked unless ‘A’ is profoundly different from ‘X’.”
    How about the difference between getting hit with a baseball bat and getting hit with a down-filled pillow … that’s the difference between what was claimed (and disclosed) and what was taught in the prior art.
44. 32

    I won’t comment on if it’s necessarily C VAPOR D or another method of coating chemicals through the air, but that will work for an example, and you will notice very distinctly that in all of those claims, all of the real structure that is “prepared” is done so in the preamble or in the case of the “sheild” it is a secondary portion of the greater goings on in the claim. This stands in stark contrast to the type of claim I have where the only thing with merits is the composition of the structure. I’ll give you that within reason you can “prepare” some components of your apparatus, but there’s no way in heck you can get away with making an apparatus claim into a method claim simply by saying “prepare” or “constructing” an apparatus instead of just saying “an apparatus comprising:”. That’s just like the good judge in one of those cases says, this fact is so elemental to claim construction that it needs not have its authority cited.

    Or, more specifically: Ex Parte Forsyth, 151 USPQ 55, 56 (Bd. of Appeals 1965):
    A claim such as those before us cannot be both method and apparatus. It must be clear from its wording that it is drawn to one or the other of these mutually exclusive statutory classes of invention. A method or process, as indicated above, is an act or a series of acts and from the standpoint of patentability must distinguish over the prior art in terms of steps, whereas a claim drawn to apparatus must distinguish in terms of structure. This is so elemental as not to require citation of authorities. The Patent Act of 1952 did not abolish the then existing different classes of invention. It reaffirmed the same by Section 101 of USC 35.

    Therefore, the claim fails to distinguish over the prior art in terms of its *method steps* beyond the “Preparing of apparatus element z” which is clearly a structural consideration when you say alternatively “constructing apparatus element z” which isn’t a *method* any more than claiming “a method of hammering a nail: Providing a nail with a pointy edge; and hammering a nail” distinguishes over the prior art with regards to its method. If we’re going to let that slide, then we may as well disolve the apparatus and method statutory classes and just call it one statutory class called “apparatods”, and I mean that in a totally non-cute way.

    Idk, if he comes back with something convincing I’ll let it go I guess, but it better be good or I’ll be happy to let the board settle this one. More than happy. I’ve worked with this lawyer before, he’s a reasonable guy, I’m surprised he would let one of his lackeys put this bs in.

    In other news, wierd emails from the director disrupted me. I’ve really got to go now and write this up, cya.
45. 31

    I won’t comment on if it’s necessarily C VAPOR D or another method of coating chemicals through the air, but that will work for an example, and you will notice very distinctly that in all of those claims, all of the real structure that is “prepared” is done so in the preamble or in the case of the “sheild” it is a secondary portion of the greater goings on in the claim. This stands in stark contrast to the type of claim I have where the only thing with merits is the composition of the structure. I’ll give you that within reason you can “prepare” some components of your apparatus, but there’s no way in heck you can get away with making an apparatus claim into a method claim simply by saying “prepare” or “constructing” an apparatus instead of just saying “an apparatus comprising:”. That’s just like the good judge in one of those cases says, this fact is so elemental to claim construction that it needs not have its authority cited.

    Or, more specifically: Ex Parte Forsyth, 151 USPQ 55, 56 (Bd. of Appeals 1965):
    A claim such as those before us cannot be both method and apparatus. It must be clear from its wording that it is drawn to one or the other of these mutually exclusive statutory classes of invention. A method or process, as indicated above, is an act or a series of acts and from the standpoint of patentability must distinguish over the prior art in terms of steps, whereas a claim drawn to apparatus must distinguish in terms of structure. This is so elemental as not to require citation of authorities. The Patent Act of 1952 did not abolish the then existing different classes of invention. It reaffirmed the same by Section 101 of USC 35.

    Therefore, the claim fails to distinguish over the prior art in terms of its *method steps* beyond the “Preparing of apparatus element z” which is clearly a structural consideration when you say alternatively “constructing apparatus element z” which isn’t a *method* any more than claiming “a method of hammering a nail: Providing a nail with a pointy edge; and hammering a nail” distinguishes over the prior art with regards to its method. If we’re going to let that slide, then we may as well disolve the apparatus and method statutory classes and just call it one statutory class called “apparatods”, and I mean that in a totally non-cute way.

    Idk, if he comes back with something convincing I’ll let it go I guess, but it better be good or I’ll be happy to let the board settle this one. More than happy. I’ve worked with this lawyer before, he’s a reasonable guy, I’m surprised he would let one of his lackeys put this bs in.

    In other news, wierd emails from the director disrupted me. I’ve really got to go now and write this up, cya.
46. 30

    “Sounds an awfully lot like the preamble to the last case.”
    Not even close.

    “And further, come on man, if you can just claim apparatus and methods of using them like this then why would they even bother 112ing the other cases? That’s like saying, well, as long as you leave the 2nd statutory catagory elements out of the preamble then you’re golden if you can portay them as being somehow portrayed by langauge in the 1st statutory catagory. Iirc, the only hybrid claims allowed are product by process, and that’s because they’re clearly products.”

    What percentage of method claims do you see that do not also recite at least one of a “machine, manufacture, or composition of matter”? My guess is not a whole lot of them.

    BTW: How does your opinion reconcile with the many rejections I’ve seen out of the USPTO that essentially state that a computer-implemented method claim must recite a computer or else it isn’t satutory subject matter (i.e., it recites an abstract idea).

    “claim construction should go to the aggreived party, if there’s a reasonable doubt as to if the claim is too broad then it’s too broad, if there’s a reasonable question as to if it covers an “infringers” product then it goes to the “infringer”. This isn’t baseball, but you gotta give it to the runner, I mean seriously.”
    Wow … with analysis like that perhaps you are cut out for the SCOTUS. BTW: who is the aggreived party during (supposedly non-adversarial) patent prosecution?
47. 29

    “Let’s put this in perspective – this rate is only in relation to those that were actually appealed.”

    This is truly the essential caveat to all these studies of reversal rates at the CAFC: rational parties *typically* do not appeal slam dunk or plainly correct claim constructions by district courts. I think that most of time claim constructions are reversed by the CAFC, most of us would agree that the district court fudged it up. Most of those boring appellate decisions are not highlighted by Dennis, of course.
48. 28

    “Iirc, the only hybrid claims allowed are product by process, and that’s because they’re clearly products.”

    Is that what Judge Newman would say? Just kidding.

    Do you get many product-by-process claims, ex6k? Do you analyze them first to determine that the product is “resistant to description” by the usual method of claiming compositions (i.e., using words)?
49. 27

    “These reversal rates are absurd”

    Let’s put this in perspective – this rate is only in relation to those that were actually appealed. When you compare how many were overturned to the total cases filed in a district, that number is quite low. Even if you factor in that some of the filed cases never made it through Markman, it is still low (who settles pre-Markman?). Remember, the CAFC doesn’t hear every single patent dispute that has been tried.

    I is like saying the Supreme court always overturns the CAFC – well, the Supreme Court generally will only grant cert. if they disagree with the CAFC, which usually leads to overturning the CAFC, otherwise they really do not have a need to grant cert (i.e. patent cases generally do not suffer from the “different treatment by different circuits” reason for granting cert.).
50. 26

    pds writes “Under the “broadest interpretation,” everthing is flexible to some degree, so if an exmainer wants to interpret “flexible” in this manner, then all things are flexible. Moreover, since all things are flexible, the examiner could also argue that “rigid X” actually is flexible to some degree.”

    The obvious follow-up question is: is “flexible” defined in the specification? If it’s not, the claim should be tanked unless “A” is profoundly different from “X”.
51. 25

    “They’re claiming a generic method performed on/by a specific apparatus even if they don’t out and say it up front like Lyell does, so it’s not quite a cut and dry as you want to make it.”
    Lyell stands for exactly what I discussed … when the claims explicitly recite both a method and an apparatus. This, however, shouldn’t be confused with reciting an apparatus as part of a method.

    Moreover, reciting a generic method with a known/novel apparatus is patentable so long as it would not have been obvious to use the apparatus to perform the generic method.

    “The preamble just says ‘a method for making a blank comprising:’ to be clear.” If so, citing Lyell would be a waste of time.

    “I’ve confuzzled you, it’s a big apparatus with a smaller apparatus that is a part of the biggere apparatus and where a workpiece inside of the bigger apparatus is getting a layer put on it. The layer doesn’t go on the smaller apparatus. The smaller apparatus is the part of the bigger apparatus which gets the chemicals that make the layer moving and in the air.”
    So you’ve got a method claim for using a CVD reactor to coat some part and the CVD reactor includes some “smaller apparatus.” Nothing wrong with that.

    How about claim 3 of US PAT 6428847:
    3. A method of CVD using a vortex based CVD reactor adapted to cause a spinning gas field within the reactor interior, wherein the reactor interior includes a reactor side wall and the reactor side wall is characterized by a reduced lower diameter relative to the diameter adjacent the top of the reactor, the CVD method comprising the steps of: a. introducing chemical vapors into the reactor interior simultaneously under sufficient pressure and at suitable temperature through injector tubes; b. producing spinning gas fields in the reactor interior as a result of the chemical vapors emanating from the injector tubes; c. orienting the injector tubes to direct the spinning gas fields containing chemical vapors tangentially with respect to the interior walls of the reactor sidewall; d. allowing the spinning gas fields to move downward due to the reduced diameter of the reactor; e. allowing the downward spiraling gas to hit the lower surface and substrate and is subject to drag, loss of velocity from drag which causes the gas to flow inward and subsequently upward to where the pressure is lower; and, f. the gas spirals upward and out of a reactor exhaust

    … or claim 12 of US PAT NO 5493987:
    12. A method of forming epitaxial deposition on a semiconductor wafer in a reaction chamber having an upper wall that is substantially transparent to radiant flux within a selected waveband, the method comprising the steps of:
    supporting the wafer within the chamber adjacent the upper wall for receiving radiant flux therethrough;
    surrounding the periphery of the wafer with an upper heat shield surrounding the wafer for altering radiation of flux from the wafer; and
    supporting a lower heat shield within the chamber in close proximity to the underside of the wafer and the surrounding upper heat shield, said lower heat shield being positioned in substantially plane-parallel relationship to the under side of the wafer and the upper heat shield surrounding the wafer for altering radiation of flux from the wafer and upper heat shield.

    …. or claim 1 of US PAT NO. 5091217:
    1. A method for processing multiple single wafers in a multi station CVD reactor having a number of susceptors equal in number to the number of stations, which stations are disposed in a common chamber of the reactor, said method comprising the steps of:
    a) supporting one wafer on a susceptor;
    b) dispersing a gas upon the supported wafer from a gas dispersion head associated with the wafer supporting susceptor; and
    c) urging outward radial flow of the gas across each supported wafer to the peripheral edge of the gas dispersion head; and
    d) drawing the gas from the peripheral edge of the wafer, along the side of the susceptor and into an exhaust chamber having an opening centrally aligned with the susceptor.

    All of these claims recite a method of using a particular larger apparatus in which a smaller apparatus is disposed and does something regarding the process. BTW, this is my search expression to find these issued patents: aclm/cvd and aclm/method and ttl/reactor
52. 24

    Oh, and in Re to the guy above my last post, claim construction should go to the aggreived party, if there’s a reasonable doubt as to if the claim is too broad then it’s too broad, if there’s a reasonable question as to if it covers an “infringers” product then it goes to the “infringer”. This isn’t baseball, but you gotta give it to the runner, I mean seriously.

    Learn to clearly claim or don’t bring suites. Claim is now too narrow? QQ for me or be your own lexicographer and coin a new term.

    That’s probably asking too much though, I get the people that can’t even seperate apparatus from method claims doh!

    I gtg write this bs up c u.
53. 23

    I had typed some more in response, but it got deleted via the page back button on my mouse, I h ate that thing. Anyway, I have some 103 art, but it’s weak (from a class I don’t exam in, but I can’t transfer the case because of this “oh, it’s a method” bs).

    Let’s be clear, if I claim “A method of hammering a nail comprising: preparing a nail gun comprising a chamber for nails, a spring, and a hammer piston; and hammering a nail with a sharp blow” are you really prepared to give the chamber, spring, hammer piston, or even the nail gun itself, patentable weight? “preparing” as is being stated here is the equivalent of “constructing” so now I have a method of making an apparatus and using it? Sounds an awfully lot like the preamble to the last case. And further, come on man, if you can just claim apparatus and methods of using them like this then why would they even bother 112ing the other cases? That’s like saying, well, as long as you leave the 2nd statutory catagory elements out of the preamble then you’re golden if you can portay them as being somehow portrayed by langauge in the 1st statutory catagory. Iirc, the only hybrid claims allowed are product by process, and that’s because they’re clearly products.
54. 22

    These reversal rates are absurd — and more of an indictment of CAFC caselaw than of district judges. If a teacher was failing 30-40 percent of mostly talented students, we would begin to question whether the teacher was doing something wrong or if there is something wrong with the system.

    De novo review of claim constructions makes no sense. As the USSC said in Markman, claim construction is not an issue of law, but a mongrel practice. It should be reviewed as a mixed question, like a contract.

    Further, a system with specialist judges reviewing generalists is problematic (and then you have generalists atop the specialists who rarely get involved and the specialists usually do not follow what they say — see KSR and the CAFC’s complete and unwarranted rejection of prior USSC obviousness cases). Special patent courts are possibly a good idea, but I would want them all to be Article III. There will still be a problem with the Supreme Court on top.

    Although a radical idea, I think people need to seriously consider whether the CAFC experiment has worked. I have formed no conclusion on the question, but it is something to think about. Having one appellate court has its downsides — such as no percolation of difficult issues. Take Markman, had there been no CAFC, there no doubt would have been a Circuit split on whether de novo or clear error review or some mix would be appropriate. We could then see which systems were working the best and have the Supreme Court make the ultimate decisions based on that (and other things). As the system is now, however, we have one court that makes its decision and then we have to guess whether another answer would have worked better. These are things we should actually think about rather than take it as a given that the CAFC’s exclusive jurisdiction is a good idea.
55. 21

    PDS, it’s not a hypothetical, it’s a real with the names and specifics changed to protect the innocent. I’m well aware of what it is officially, i.e. “a method”, but lets be real, what are they claiming? They’re claiming a generic method performed on/by a specific apparatus even if they don’t out and say it up front like Lyell does, so it’s not quite a cut and dry as you want to make it.

    The preamble just says “a method for making a blank comprising:” to be clear.

    “”depositing a material on the smaller apparatus using the larger apparatus, wherein the smaller apparatus comprises x part and y part.””

    I’ve confuzzled you, it’s a big apparatus with a smaller apparatus that is a part of the biggere apparatus and where a workpiece inside of the bigger apparatus is getting a layer put on it. The layer doesn’t go on the smaller apparatus. The smaller apparatus is the part of the bigger apparatus which gets the chemicals that make the layer moving and in the air.

    But yes, it’s all a result of sloppy claim language. Surprise, surprise. I only get like 2 of those a bi week.
56. 20

    “MM, the problem is, this person knows he has no merit whatsoever to his method part of the claim and his apparatus is shaky at best, so I’m guessing he threw in for giggles, but strangly, when I restricted between this ind and another apparatus only ind. he picked this one … I guess he likes to abandon cases and then pickup the apparatus version?”

    I hope, for your sake, that (i) his preamble is comparable to claim 1 of Ex parte Lyell or (ii) you have some good 102/103 references as backup. Otherwise, if the attorney is any good, he/she is going to slam you on your case cite. This is what happens when you rely upon M.P.E.P. 2173.05(p) without actually reading and understanding the case being discussed.
57. 19

    “An example of one of these ‘errors’ in claim construction would be greatly appreciated, pds.”

    Just because I’m in a generous mood today. This is a good example because, IMHO, an examiner can take this limitation and VERY broadly construe the limitation. However, the question becomes whether or not this construction is reasonable and consistent with applicant’s specification.

    Suppose claim 1 recites “a flexible A connected to B.”
    The prior art disclolses “a rigid X connected to B.”

    Under the “broadest interpretation,” everthing is flexible to some degree, so if an exmainer wants to interpret “flexible” in this manner, then all things are flexible. Moreover, since all things are flexible, the examiner could also argue that “rigid X” actually is flexible to some degree.

    As a result, the examiner asserts X identically discloses A.
58. 18

    examiner#6K … interesting case you found.

    Unfortunately, you did not properly set up the hypothetical. What you SHOULD have done is said that the hypothetical claim 1 recited:

    1. An apparatus and method for using same comprising:

    This whole case rested upon the preamble yet you omitted it. I was actually going to give you some props until I realized you messed up the entire hypothetical.

    Regardless, the type of claim in your hypothetical is a method. However, that isn’t comparable to claim 1 of Ex parte David Lyell (i.e., your cheatsheet). The actual preamble of claim 1 (in the cheatsheet) recites “[a]n automatic transmission tool in the form of a workstand and method for using same comprising,” which means it is claiming both the method and the apparatus at the same time. This is where the BPAI slammed them. The Federal Circuit in IPXL Holdings, LLC v. Amazon.com, Inc. cited Ex parte Lyell to slam Amazon back in 2005.

    BTW: I’ve seen claims comparable to “preparing an apparatus having a smaller apparatus therein, the smaller apparatus comprising x part, y part; and performing a deposition process using the apparatus” and I think it is very sloppy claim drafting.

    As a method claim, it should recite “depositing a material on the smaller apparatus using the larger apparatus, wherein the smaller apparatus comprises x part and y part.”
59. 17

    MM, the problem is, this person knows he has no merit whatsoever to his method part of the claim and his apparatus is shaky at best, so I’m guessing he threw in for giggles, but strangly, when I restricted between this ind and another apparatus only ind. he picked this one … I guess he likes to abandon cases and then pickup the apparatus version?
60. 16

    “they presume that if they can think of a broad claim construction, then it must be reasonable”

    An example of one of these “errors” in claim construction would be greatly appreciated, pds.
61. 15

    “In those cases where the Examiner is a seasoned veteran, you would expect them to retain some knowledge of the area they work in and what has been done before.”

    Does seasoned veteran mean seasoned at the USPTO or seasoned on the outside? Regardless, whether or not “knowledge of the area they work[ed] in” was retained, unless one can definitively place a date on that knowledge and that date precedes the priority date of the application, then you have the possibility of an examiner “knowing” that a particular invention was anticipated/non-obviousess based upon knowledge that wouldn’t be considered prior art had that knowledge been published.

    “Take home: broadest reasonable interpretation means just that. Broadest does not mean most specific interpretation that you can possibly think of. Put varying degrees of coverage into your claims. Don’t act like someone set your house on fire when the broadest ones are given equally broad treatment.”
    What I often see is the examiner putting the horse before the court … they presume that if they can think of a broad claim construction, then it must be reasonable. What I want is the examiner to first factually establish that their interpretation is reasonable …. oh, and I forgot, “consistent with applicant’s specification.” 9 times out of 10 (actually more than that), the Examiner neither explains why their claim construction is reasonable nor explains why their claim construction is consistent with applicant’s specification. What I typically get is “it is reasonable because I say so.” Actually, I’m lucky to get any explicit claim construction at all.
62. 14

    “Apparatus claim? Method claim?”

    They look like bogus (unnecessary) method claims that could readily be found invalid under 112 as non-enabled if the only verbs recited are “preparing” and “performing.”

    Aren’t people aware in the 21st century that composition claims preclude others from the unauthorized MANUFACTURE and USE of the claimed device?
63. 13

    Here’s a stumper for you guys straight from the front lines. Claim construction. Ok, the claim says: preparing an apparatus having a smaller apparatus therein, the smaller apparatus comprising x part, y part; and performing a deposition process using the apparatus.

    Dep. 1, the method of claim 11 wherein the apparatus further comprises z part.
    Dep. 2, the method of claim 11 further comprising performing a deposition process to make a chemical layer.

    Apparatus claim? Method claim?

    Cheatsheet/reference:

    link to ipmall.info

    Only use Cheatsheet after you thought about it.

    Answers?
64. 12

    Posted by: anonymous | Feb 27, 2008 at 12:49 PM
    “pds: I think what you’re seeing are examiners who conclude that the claims are invalid before they search and then adapt their claim construction and/or analysis to fit that conclusion, regardless of what their searches turn up. We’ve seen this before. Remember the conclusion that Iraq had weapons of mass destruction and was an imminent threat?”

    While there certainly are some examiners who did this from my decade at the PTO, there was such a vast misunderstanding from the majority of patent attorneys I dealt with as to what the scope of the claims they wrote, encompassed, that it really wasn’t even worth putting “You got the BROADEST reasonable interpretation consistent with your specification ” statement anymore into my Examiner’s Answers.

    Facts:

    Most attorneys think broadest reasonable interpretation means any interpretation they would like to give to the claims, however specific, in order to get an allowance. Once said claims get allowed, they think the boundaries of protection are broader than even most Examiners feel are warranted.

    Some Examiners have pre-determined notions of allowability, even prior to searching.

    This is both good and bad.
    In those cases where the Examiner is a seasoned veteran, you would expect them to retain some knowledge of the area they work in and what has been done before.

    In those cases where the Examiner is not seasoned or is getting pressure from management to not allow something, this can be a bad thing. I say can be because the Examiner’s manager may know of literature that shows prior knowledge of the claims. Then again, they may not and may just be biased towards the fact that you wrote a 2 line claim that could mean anything under the sun.

    Take home: broadest reasonable interpretation means just that. Broadest does not mean most specific interpretation that you can possibly think of. Put varying degrees of coverage into your claims. Don’t act like someone set your house on fire when the broadest ones are given equally broad treatment.
65. 11

    “I am left mildly confused over whether the reversal rate is a reversal rate with respect to ALL decisions by the lower court or whether it is merely a reversal rate with respect to those decisions which one party or the other appeals.”

    Or is it the reversal rate with respect to the 38.2% of cases in which the claim construction is changed? i.e., of those 38.2%, the error in the claim construction leads to a reversal of the lower court’s decision or a vacating of the lower court’s decision 30% of the time. In that case, the 30% rate seems a little low.
66. 10

    I am left mildly confused over whether the reversal rate is a reversal rate with respect to ALL decisions by the lower court or whether it is merely a reversal rate with respect to those decisions which one party or the other appeals. It appears to be the latter.

    If the rate is merely with respect to the selected few cases that get appealed then it is much less significant and may say nothing about the quality of the District Court. So what if a Court has a higher rate of successful appeals, of those matters which are appealed, but has very few of its decisions appealed?

    Years ago someone told me that the success rate on appeals generally in common law jurisdictions around the world were consistently around one in three. Given that statistic, there is nothing very surprising (or informative) about these numbers.
67. 9

    Oops, forgot to link to that ABTL article I mentioned:

    link to abtl.org
68. 8

    “Overall Reversal Rates. For the entire eleven year period, 38.2% of cases had at least one term wrongly construed. Moreover, 30.0% of the cases had to be reversed or vacated because of an erroneous claim construction. These results are largely consistent with those of an earlier study (by then-professor and now-Federal Circuit judge Kimberly Moore).”

    Is there any indication of an increasing or decreasing rate of reversal over the years? Cyclic? Any differences between technologies or means-plus-fxn type claims? Schwartz’ results are also consistent with an article cited in the ABTL report from 2003:

    “The reasons for the intensity of patent litigation may range from the enormous economic stakes and competitive issues often involved to the lure of the heightened prospect of reversal on appeal when key issues are routinely reviewed de novo. For example, one article calculated that in 2001, the Federal Circuit modified the district court’s claim construction in 40% of the published cases where claim construction was expressly reviewed. (C. Ullsperger, Lessons in Claim Construction from the Federal Circuit, Intellectual Property Today, June 2002, at a-b.) For construction of means-plus-function claims, that number rose to 56%. (Id.)”

    Didn’t some university or law school in Texas also try to keep up with this data on an ongoing basis?
69. 7

    pds: I think what you’re seeing are examiners who conclude that the claims are invalid before they search and then adapt their claim construction and/or analysis to fit that conclusion, regardless of what their searches turn up. We’ve seen this before. Remember the conclusion that Iraq had weapons of mass destruction and was an imminent threat?
70. 6

    Thanks for the study. The entire reason they formed the CAFC was to address the inconsistency in applying patent law. David, how does the 30.0%+ rate compare to that before the formed the CAFC? In any event, the 30.0%+ is way too high. Most patent attorneys could construe claim terms good enough not to get over turned. Yet, the district judges (who largely are not patent attorneys) continue to get it wrong to a significant degree. Either the CAFC has failed as an experiment or Congress needs to take some of that money they siphon from the US Patent Office and put it back into the patent system to either better traine the district judges or get the CAFC judges more on the same page. In short, forming the CAFC was a very good step towards addressing the problem, but it still ain’t fixed. David, I think if you expand your study to characterize how well the CAFC has worked to address the problems for which it was formed, you can present your findings to Congress to help improve the patent system.
71. 5

    Thank you for conducting this interesting study, David.
72. 4

    The prime variable in reversal rates is not the experience level of the judges, but rather the effectiveness of counsel. In many cases, the competing arguments are at odds, and often make few remarks specific to the construction proposed by the opponent. The Judge is left to sort out and synthesize the differing versions. Garbage in…
    One other point for study is a weighted analysis of what sort of intrinsic or extrinsic evidence was the main basis for the chosen construction. In a typical case, one party will urge a plain language, dictionary-style meaning, while the opponent may take a line from the file wrapper or even extrinsic evidence to make its argument. From that, the Court will pick and choose, but: what’s the most compelling type of evidence in a statistically significant sample?
73. 3

    I’ve always felt that if any judge can’t get it right at least 50% of the time, he/she ought to be canned. Of course, that would require a constitutional amendment for Article III judges.

    43% reversal is pretty close, and those rates are for an entire district. Break those numbers down to individual judges, Dennis. I’ll bet dollars to doughnuts you’ll see some judges in the 60% range.

    How is a judge that majored in English and spent his life handling divorce cases supposed to get a grip on integrated circuits or IgM antibody subunits? There should be an entirely separate judicial branch for IP. Right from the trial bench to the FedCir. Only technical people on the bench. 1 IP trial court in each judicial circuit. The tax courts and bankruptcy courts are examples of what I’m talkin’.

    Bab
74. 2

    Dennis-

    Please dont come to any crazy conclusions about how we need to change the entire patent system based on these data, as your above mentioned colleague erroneously did (partially based on data of this type).
75. 1

    I’ve had the opportunity to review, in detail, a number of Federal Circuit cases that came down over a short period of time a little while that involved claim construction. What I thought then and still believe is that the FC construes the claim language to get the end result they want.

    There is so much apparently conflicting law regarding claim construction that it isn’t difficult to come up with a rationale that fits the result one wants.

    On a side note, dealing with claim construction issues before examiners and the BPAI is also a mess. Going into the process, I already know what is the desired final result (i.e., the claims are unpatentable over the applied references). As such, the analysis I get, particularly from the examiners, involves claim constructions that are neither reasonable to one having ordinary skill in the art nor consistent with applicant’s specification.

    One gets the sense that one of the unwritten parts of the examiner’s code of conduct is “if you cannot find a particular claim limitation, construe that claim limitation broadly enough to read upon your best prior art.”

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