Existence of Non-Asserted Claims Allows Court to Disregard Construction Canon Encouraging Coverage of Preferred Embodiment

PatentLawPic355Helmsderfer v. Bobrick Washroom Equipment (Fed. Cir. 2008)

John Helmsderfer sued Bobrick for infringement of its patent covering tamper-resistant diaper changing stations.  After a markman hearing, the Southern District of Ohio district court awarded the defendants summary judgment of non-infringement. Helmsderfer appeals on claim construction.

Partially Hidden from View: The claims include a top surface platform that is “partially hidden from view.” On appeal, the patentee argued that “partially hidden” could include “totally hidden.” The CAFC disagreed for two textual reasons:

  1. The patent used “generally” in other portions of the claim but not for this element — providing evidence that the patentee was intentionally distinguishing between those two modifiers.
  2. The patent used “at least” in other portions of the claim but not for this element — providing evidence that in this case the patentee did not intend to claim “at least partially.”

Quoting its own 2000 CAE Screenplates decision, the court reasoned that “[i]n the absence of evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.” Here, the court could find no evidence to find that partially should include totally.

Exclusion of preferred embodiment: The applicant did point that its preferred embodiment and also “every illustrated embodiment” would be excluded by the narrow definition of “partially hidden.”  The CAFC, however, rejected that such an exclusion creates any problem here. In particular, the court noted that it was analyzing only teh two claims (6–7) at issue in the case — “[O]ur construction of claims 6–7 leaves open the possibility that claims not at issue in this appeal encompass omitted embodiments. It is often the caes that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.” 

The appellate panel gave lip service to the precedential canon of avoiding claim interpretation that “excludes the preferred embodiment from the scope of the invention.”  However, in the end the court gave absolutely no weight to that “caution” in its claim interpretation.  Rather, the decision notes the distinction between the patent as a whole and the particular asserted claims.  In this case, the court noted that other claims are included in the patent and that those may be the ones that cover the preferred embodiment. 

This interpretation falls on the heels of the PSN Illinois v. Ivoclar Vivadent holding that sometimes unasserted or cancelled claims directed to a particular disclosed embodiment may actually serve as evidence that the scope of the asserted claims does not extend to that embodiment.  PSN Illinois – written by Judge Michel – applies the sensible notion that non-asserted or cancelled claims should be examined to determine if the preferred embodiment is found there. Helmsderfer extends that notion by creating an apparent presumption that – if non-asserted claims exist, then the court need not consider the rule of construction that encourages encompasing preferred embodiments.

Notes:

  • Preferred Embodiment: Relation to Tafas v. Dudas: Although the patentee lost here, Judge Moore’s decision here creates some interesting support for the Tafas case – by holding that it is the patentee’s right to file alternative claims to cover various parts of the disclosed embodiment.
  • Drafting Thoughts: Non-numeric range limitations – such as “partially” – have benefits and potential liabilities. When including a limitation of this type, you may do well to consider what prior art you are attempting to avoid — and consequently claim either “at least partially” or “at most partially.”

67 thoughts on “Existence of Non-Asserted Claims Allows Court to Disregard Construction Canon Encouraging Coverage of Preferred Embodiment

  1. During prosecution, claims are given their broadest reasonable interpretation when read in light of the specification. Therefore, to narrowly construe a claim term over art treated by the PTO and over which the claim was allowed, even in light of a sparse prosecution record, is probably not right. Besides allowances are supposed to be accompanied by Statement of Reasons for Allowance.

    Incidentally, what happens in an interview stays in an interview. No, seriously, MM there is nothing that can happen in the interview that won’t make it into the record somehow. With the possible exception of those “oral arguments” you keep pressing the examiner for. And why is it again that the lights need to be off?

  2. “During examination, there’s little doubt that a claim feature such as “partially hidden” would be regarded by the examiner as “met by” a reference that shows “totally hidden.”

    I think a frightened or confused Examiner might make such an argument, but I doubt that a typical Examiner would.

  3. ‘Here, we have a controversy over whether “partially covered” includes or doesn’t include “completely covered”. For the purpose of analyzing support in the specification and establishing claim meaning, and looking at the prior art, I think the “negative” limitation concept is helpful in focusing the inquiry.’

    Is there some difference between “partially covered” and “not completely covered” that would help focus the inquiry?

  4. This is a pretty routine claim construction case, but it does highlight the differences between the way claims are construed by courts and by the PTO. During examination, there’s little doubt that a claim feature such as “partially hidden” would be regarded by the examiner as “met by” a reference that shows “totally hidden.” Such is the broadest unreasonable treatment that claims are routinely subjected to in the PTO. I predict that citing this case as an example of a court finding that “partially” does not include “totally” will be routinely ignored by the corps.

  5. “Is ‘connected’ a negative limitation because it means ‘not unconnected’?”

    Possibly in some contexts, but generally not.

    The proper way to view whether a limitation is a negative limitation is in the context of a controversy regarding the meaning of the limitation.

    There may be some limitations for which the possible controversies are clear from reading the claim, and other limitations for which it is more difficult to imagine a negative limitation controversy. But even for those latter cases, there may be unusual facts that create a negative limitation out of innocent looking claims.

    Here, we have a controversy over whether “partially covered” includes or doesn’t include “completely covered”. For the purpose of analyzing support in the specification and establishing claim meaning, and looking at the prior art, I think the “negative” limitation concept is helpful in focusing the inquiry.

  6. Since when has “partially” meant “at least partially” by default?

    See:
    1. partially hidden
    2. at least partially hidden
    3. hidden

    Adding and taking away words results in … what? Identical meaning? I think not.

  7. Patent Law Student:

    I claim:
    1. An A connected to a B.

    Is “connected” a negative limitation because it means “not unconnected”?

    You can play this game with every word in the dictionary. The issue of negative limitations and support is an entirely different not non-beast.

  8. “If the claim construction leads to invalidity based on the art of record during prosecution, then I would agree that it should be a canon that such a construction is “probably not right,” since it disrupts the presumption of validity.”

    If the validity of the claims over the “art of record” is actually addressed by the Examiner and patentee, including a discussion of the meaning of the claim term, then the “canon” would be reasonable. But in that instance, the meaning of the disputed claim term typically falls right out of the prosecution history. The exceptional case, I think, tends to be the one where the Examiner explains how he is interpreting the claim, and in response the Applicant provides something that appears to be rebuttal, perhaps amending the claim in some other respect, and then obtains allowance after one of those magical mysterious Interviews.

  9. If the claim construction leads to invalidity based on the art of record during prosecution, then I would agree that it should be a canon that such a construction is “probably not right,” since it disrupts the presumption of validity.

    If the construction would lead to invalidity based on new art but supports validity based on the art of record, I would have to say that such a construction, if invalidating, is too bad for the patentee.

    It would be a bold new step for the PTO to require examiners to be required to make a construction record revealing how they are construing the claim terms so that the construction performed during prosecution can be admitted as evidence during construction in litigation. If such a form was developed (which the PTO should be good at doing), then it could be used as an important guideline that would discourage the courts from getting too creative during construction.

    Examiners already do a search record. The search record could be improved to add how the claim terms are broken down and interpreted for the purposes of the search.

  10. I’ve read the Decision now. I still can’t imagine a top surface that is facing the wall can be “partially” hidden ie not completely hidden from view. An embodiment that can meet the claim limitation would be flipping clever. No wonder the “partially” feature was nowhere else to be found; neither in the specn nor in any other claim. Whatever was the writer of the “partially” claim thinking? (Maybe that the “partially” feature would do a clever job of setting the otherwise egregiously old claim apart from the prior art?) Anyway, the Decision prompts four ideas, how to protect the courts from getting clogged by bizarre cases like this(at least till a MM Rule 11 sanction bites). They are:

    1) No issuance by the PTO till Applicant “conforms” the specification to the allowable claims (so the invention defined in the issued claims is the SAME as the invention described in the issued specn);

    2) No entry of prosecution amendments that introduce matter (eg “partially hidden”) that is not directly and unambiguously derivable from the app as filed;

    3. Only one inventive concept to be protectable, in any one patent issued by the USPTO;

    4. English squeeze arguments should be used more: Only two possible ways to construe the claim, and both result in the patent owner losing. If “partially” means “less than completely” the claim is not old but also not infringed. If “partially” is wide enough to embrace “fully hidden” then the claim scope includes something old and the claim is bad.

  11. “Unfortunately, the CAFC opinion authored by an inexperienced judge, and most likely drafted by an inexperienced law clerk, fails to make this crucial point. It is a cardinal rule in patent law that a claim construction that invalidates a claim is probably not the right claim construction.”

    Okay, now I’m calling parody (albeit a strikingly unfunny one). If there is one oft-abused and mis-cited “canon” that the CAFC has done a great job of squashing these past few years, it’s the dumbxss “claims should be construed to preserve their validity” baloney. In case after case, including the leading case on claim construction (Phillips), the CAFC has explained that this “doctrine” applies only to the unusual set of cases where, at the end of the analysis, a claim term is equally susceptible to one of two constructions, one of which plainly invalidates the claim (the rationale — and it’s a darn weak one — being that the PTO would not have issued the claim in that instance).

    It is surely not a “cardinal rule” that a claim construction that leads to the invalidation of a claim is “probably not right.”

    Nevertheless, the final grade for Patent Law Student will be a D, not an F, because he/she is joined in his/her confusion by a lot of district court judges who can’t resist taking the bait from patentees when they should be smacking them down with Rule 11 sanctions.

  12. Patent Law Student wrote:”But here is the problem: What the CAFC fails to recognize here is that there are special rules applicable to negative limitations. There must be something in the spec that shows that the patentee understood the invention to include a “negative limitation”. See MPEP 2173.05(i). In this case, it does not. Nothing in the spec suggests that the patentee possessed an embodiment with an express “not completely” limitation in it.”

    As the MPEP states, “Some older cases were critical of negative limitations because they tended to define the invention in terms of what it was not, rather than pointing out the invention.”

    For example, I claim apples, except for red apples; under the theory that the prior art shows apples that are red. Apples is a positive limitation. ‘Except for red apples’ is a negative limitation that was disfavored in the past.

    In this case, the limitation partially hidden from view is a positive limitation. It is not a negative limitation. It is interpreted to require that the claimed subject matter be ‘partially hidden.’ ‘Not hidden’ and ‘totally hidden’ do not qualify as ‘partially hidden’ under the District Court’s claim construction.

    The issue as to whether ‘totally hidden’ qualifies as ‘partially hidden’ could be argued, although the district court ruled against the position (see many cases where and=or, a=many, etc.) But it is not related to the concept of negative limitations discussed in the MPEP.

  13. “Let us go over this one more time. The DC construed “partially hidden from view” to mean “hidden from view to some extent but NOT totally hidden from view.” So there you go. The court held that part of the definition of partially is “NOT TOTALLY”, which effectively turns into a negative limitation.”

    Dana Perino called and she wants to know if you’d like to take her place.

  14. e6k, try to pay some attention:

    wherein the squirrel is dead

    wherein the squirrel is EITHER dead OR ALIVE

    were examples of alternate claim language, the second of which is broader than the first, even though there are more words present. It had nothing to do with an independent claim followed by a dependent claim. I hope you don’t examine applications with this level of cursory review.

  15. So, Telemachus, I agree but, nevertheless, I’m not sure. When baker Chef America’s careless drafting attorney wrote “heat to 400°F”, and every reader except the CAFC knew what he “meant”, Chef America deserved to get zero, zilch, nada, nowt, out of the US patent system, right?

  16. I don’t see why terms like “substantially,” “approximately,” “comprising,” “partially,” and other fairly well understood words need to be reconstrued time after time just to cover the a$$es of careless claim drafters. This is the kind of thing that leads to instability in the law.

    Just wondering- Mooney APPEARS clever, but is like a parlor magician, he knows a few tricks well… and, as noted, does not play well with others. Has been known to make obscure references to crack pipes, dog poop, satin panties, white wine, and the like. Beware.

  17. Dear Readers, where would we be without law students who are not shy of announcing that they can decide cases better than the CAFC? We wouldn’t have known that every positive feature of every claim must be construed as a “negative feature” with all that that dictates from a claim interpretation perspective. “Three and only three” razor blades would need to be treated as a NEGATIVE limitation, in case the court announces in its Decision that it understands the words as meaning “Not two and not four”). Or “between tank full and tank empty” is in fact a “negative feature” because the court understands it as “not full and not empty”.

  18. “Does that make it a negative limitation?”

    Leopold,

    Let us go over this one more time. The DC construed “partially hidden from view” to mean “hidden from view to some extent but NOT totally hidden from view.” So there you go. The court held that part of the definition of partially is “NOT TOTALLY”, which effectively turns into a negative limitation.

    In fact, this is the whole point in this case. The DC held that the defendant’s product did not infringe because it did not meet the negative limitation implicit in “partially.”

    But here is the problem: What the CAFC fails to recognize here is that there are special rules applicable to negative limitations. There must be something in the spec that shows that the patentee understood the invention to include a “negative limitation”. See MPEP 2173.05(i). In this case, it does not. Nothing in the spec suggests that the patentee possessed an embodiment with an express “not completely” limitation in it.

    However, after researching the specifics in this case, I became aware that the claim at issue is an originally filed claim. This makes it part of the original disclosure and to an extent immune from a 112 attack. If you listen to the oral arguments in this case, you will understand that this is the reason why the defendants chose not to attack the claim on a 112 basis. This is an original claim.

    Unfortunately, the CAFC opinion authored by an inexperienced judge, and most likely drafted by an inexperienced law clerk, fails to make this crucial point. It is a cardinal rule in patent law that a claim construction that invalidates a claim is probably not the right claim construction. Obviously, the judge should have taken pains to point out that the claim is an original and thus would not automatically invoke a 112 attack.

    In sum, this opinion is poorly drafted, omits important facts, and is ultimately very misleading.

  19. From Europe, 6K, we would venture a gloss on your simple “The claims mean what the claims say”. Stay with that, we would say, and you end up with cases like Chef America “heat to 400°F”, so the bakery claim covers nothing but charcoal. But shift to a model of claim interpretation “To the Phosita reader, what was the inventor using the language of the claim to mean” and you get every time to a result that is in tune with the gut feeling of intelligent members of the concerned decision-making public, like the CEO, CGC and every PTO Examiner. Hired gun litigators, the self-serving, “black means white” crowd, are relegated to the margins, where they can spout their abstruse theoretical claim interpretation nonsense all they like, because the court’s not listening any longer. But, where Binding Precedent rules, the lead has to come from the top. BTW, as somebody once said, deprived of CONTEXT, every word in your entire language is meaningless. The fundamental rule has to be, don’t begin to construe any claim feature without having first taken its context fully into account.

  20. The claims mean what the claims say. Not what the litigator wishes that the claims said.

    “The nature of patent prosecution is that there will always be minor mistakes. The nature of patent litigation is that the litigators will find the mistakes.

    Continuation applications can be used to fix all the mistakes. This is why people file a chain of continuation applications for 20 years. You amend the continuation claims so that they cover “generally hidden” or whatever terminology is supported in the specification, then you can pursue an infringer.”

    Thus totally negating what claims are there to do. Iirc getting rid of this was the chief justification of the new rules.

  21. “Sorry, Student, but this doesn’t make any sense. If my claim includes a “glass that is half full,” or even “a glass that is about half full,” does “half” include or exclude “completely”? It excludes it, of course. Does that make it a negative limitation?”

    The problem here is that the courts have forgotten how to interpret claims. Partially hidden means that part of the surface is hidden. It doesn’t say anything about the rest of the surface, which may, or may not, be hidden. Read it this way: Looking at the figures of the patent, is part of the surface hidden from view? Yes? Then it reads on the claim. That is old-school claim construction. Now, of course, up is down and black is white, and nothing makes any sense.

  22. wherein the squirrel is dead

    wherein the squirrel is EITHER dead OR ALIVE

    More words, broader subject matter.

    ….
    Yes, this type of nonsense gets 112 if I’m not mistaken. You have to put dead or alive in the ind and then dead in a dep. Is dead a requirement of the claim or isn’t it?

    “A broad range OR limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.”

    This particular 112 is not utilized as much as it should be. Apps get away with claims that do this sort of mess all the time. You want to put in something that is further limiting on a limitation you’ve already made? Guess what dependent claims are for? If you guessed to further limit the subject matter then you’d be correct!

    In a situation close this type of bs, I have one guy that says “wherein the spread is peanut butter or jelly” in the ind. then in the dep he says “wherein the peanut butter is creamy”. I chose jelly to meet the limitations of 1, therefore the dep doesn’t even require my attention in an OA. But he’s demanding that I “address more fully” the dep. Guess what arsehole, you have to first say “wherein the spread that is peanut butter or jelly is peanut butter, and wherein the peanut butter is creamy” in the dep. Otherwise, I can simply “choose” jelly to meet the limitation of “peanut butter or jelly” and the limitation in the dep is irrelevant.

    Of course all of this is bunk under 112 2nd, but I won’t get into that in this thread and we’ll stick to the accepted meaning.

  23. “I am therefore not going to give any serious thought to any of your comments.”

    Well, Leopold is very popular. Give some serious thought to his comments.

  24. “Judge Moore has effectively turned “partially” into a negative limitation that excludes ‘completely’.”

    Sorry, Student, but this doesn’t make any sense. If my claim includes a “glass that is half full,” or even “a glass that is about half full,” does “half” include or exclude “completely”? It excludes it, of course. Does that make it a negative limitation?

    “Moore got it “totally” wrong, because her opinion effectively invalidates the claim at issue.”

    How do you figure? Just because one or more of the pictured embodiments included “completely” hidden doesn’t mean that the patentee was every actually entitled to that claim scope.

  25. Patent Law Student:

    Mr. Mooney is smart and clever, but often “doesn’t play well with others.”

  26. I’m trying to write some claims – will yo-use guy please tone it down a peg?

  27. Mr. Mooney,

    Who exactly are you? You sound as if you own this blog?

    I understand from your comment that you believe the claim at issue is NOT invalid because of Moore’s decision. I guess you probably haven’t the slightest notion about negative claim limitations and how the law requires such negative limitation to be expressly supported by the specification.

    In any event, I judge from the other comments on this blog that you are not a particularly popular fellow out there.

    I am therefore not going to give any serious thought to any of your comments.

  28. “They clearly relied on the dictionary definition”

    Of what? “Partially”?

    What definition would you have relied on? The one you pull out of your rear end? Seriously.

    “They didn’t do Phillips, they did Tex Dig.”

    Where does Phillips preclude relying on dictionaries to construe ordinary non-technical terms like “partially” that are not expressly defined in the specification? You apparently have read Phillips recently. That’s unfortunate for you.

    “MM, if that sentence appeared in a party’s brief, that is no excuse for it to appear in a judicial opinion.”

    There is no excuse for you to blur the distinction between a “clause” and a “sentence”, except to allow you to completely miss the point. Well done, Sean! Well done. In fact, judges often repeat a brief’s mischaracterizations of the law in order to draw a distinction between the incorrect and correct recitations of the law. You know, exactly like Judge Moore did here.

    Patent Law Student: “Moore got it “totally” wrong, because her opinion effectively invalidates the claim at issue.”

    You know, it’s when people start posting stuff like that the comment thread should simply be shut down.

  29. Judge Moore has effectively turned “partially” into a negative limitation that excludes “completely”.

    Moore got it “totally” wrong, because her opinion effectively invalidates the claim at issue. By holding that the claim excludes “completely”, i.e. that partially is a “negative” limitation; she has effectively held that the claim is invalid. Nothing in the specification supports a claim with a negative limitation that would exclude completely.

    Moore’s decisions are becoming more and more bothersome.

  30. MM et al: Again, I don’t care about the outcome. The outcome may have been correct. But to suggest that the panel didn’t do the Tex Dig shortcut is to fail to read the opinion. They clearly relied on the dictionary definition (and of course had to select the most favorable definition to support their view).

    The proper analysis would have been to consult the specification. Had the panel done an analysis as concernedparent above, then it would have been a much better decision. They didn’t do Phillips, they did Tex Dig.

    MM, if that sentence appeared in a party’s brief, that is no excuse for it to appear in a judicial opinion.

    Caveman — “If people and/or the law were consistent, the law would be unnecessary…”

    Perhaps I misspoke (miswrote). It is consistent application of the law that I demand and that courts should strive for. How is the “notice” function of the law, and of patents, served when there is no way to predict how a court will do an analysis??

    Indiana Jones, you wrote a Markush group, which is exactly an exception that I pointed out in the first instance.

  31. Sounds like this decision means plaintiffs’ lawyers will have to consider an additional tactic: assert enough claims to be sure that court won’t be able to foreclose the broadest construction that the plaintiff wants (or needs) for a particular claim term by ruling that the broader construction “may” be found in another non-asserted claim.

  32. Sean: “Then she writes this nugget: “However, this does not mean that these embodiments are all excluded from the scope of the invention, but rather that they are excluded from the scope of these particular claims.”

    Sean, you seem to have a problem with the wording in the first clause (obviously nobody could take issue with the second clause). I humbly suggest that the wording is taken directly from the patentee’s own briefs.

    The patentee, as has been noted by several commenters already, was painted into a corner. Or, you may prefer to say that they were up crap creek without a paddle. They made the arguments they could. The tried to stretch the case law to unreasonable lengths. To the CAFC’s credit, they didn’t take the bait and, equally importantly (are you listening Judge Newman?), they didn’t issue an opinion filled with poorly written or incorrect summations of the previous case law.

    To suggest that this case signals a return to Texas Digital is absurd. If anything, Sean, it is your comments that apparently endorse the pre-Phillips dreamworld of applying vaguely articulated “canons” with all the subtlety of a sledgehammer on steroids. The point of Phillips is that the words of the claims, read in the light of the specification, control the outcome and *not* what some dictionary says or what the patentee really intended to claim but didn’t.

    The best that we practioners can hope for is opinions where the CAFC reaches the correct result, addresses any confusion created by prior poorly written dicta, and adds no more such dicta to the pile. This opinion is one of the better ones.

    I’m still waiting for them to clean up the preamble and product-by-process garbage.

  33. > Generally it is understood that adding words to a claim narrows its scope; or at the very least doesn’t broaden it.

    > If the patentee modifies the claim to say — AT LEAST partially –, does that narrow the scope?? No, not under the CAFC’s construction. It actually BROADENS it.

    wherein the squirrel is dead

    wherein the squirrel is EITHER dead OR ALIVE

    More words, broader subject matter.

  34. The claims mean what the claims say. Not what the litigator wishes that the claims said.

    The nature of patent prosecution is that there will always be minor mistakes. The nature of patent litigation is that the litigators will find the mistakes.

    Continuation applications can be used to fix all the mistakes. This is why people file a chain of continuation applications for 20 years. You amend the continuation claims so that they cover “generally hidden” or whatever terminology is supported in the specification, then you can pursue an infringer.

  35. Some observations:

    1. The specification uses partially several times. In one example, the specification reads: “partially inset into a wall recess or may be almost completely inset as shown in FIG. 5B”. If the patentee distinguishes between “partially” and “almost completely”, I don’t see how the patentee can now say that “partially” in the claim language includes “totally”.

    2. The patent does not use the word “totally”. The issue should have been whether “partially” in the claim language includes “completely”. The patentee cleaverly avoided that argument because the patentee uses “completely” many times in the application, none of which equates it with partially.

    3. The court sets up a dichotomy between selecting “only partially hidden from view” and “at least partially hidden from view.” Mind you, the claim language in fact has neither of these actual phrases. After not looking at the claim language, the court then does not look into the written and illustrative specification to see how that “partially hidden from view” claim language.

    4. The claim language “wherein the platform top surface is partially hidden from view” could have been written as “wherein the platform top surface is hidden from view”, but it wasn’t. This would seem to allow for partial, total, and other hidden arrangements. The claim language could have been written as “wherein the platform top surface is totally hidden from view”, but it wasn’t.

  36. Dear CaveMan,

    “Why say ‘utilize’ when there is the simple, unpretentious word use?
    I urge you to ‘utilize’ the word ‘use’…”

    I use to think “utilize” conveyed more than to simply “use” something but I could be wrong now, but I don’t think I really know now if the answer is no, yes or maybe so.

  37. “Excerpt from Strunk and White:”

    Cave, you need to send that excerpt to Judge Moore’s clerks. Sean was quoting the opininion.

  38. If people and/or the law were consistent, the law would be unnecessary…

    I suggest learning to embrace constant change, contradiction, and ambiguity. And of course don’t forget the effects of pushing political agendas, corruption, and impropriety, like improper contact with interested parties in legal proceedings, bribes, ultra vires rulemaking, and the like. Never underestimate the power of public/private wealth interests to tip “the law” on its head.

  39. To Sean:

    Excerpt from Strunk and White:

    ” -ize. Do not coin verbs by adding this tempting suffix. Many good and useful verbs do end in -ize: summarize, fraternize, harmonize, fertilize. But there is a growing list of abominations: containerize, prioritize, finalize, to name three. Be suspicious of -ize; let your ear and your eye guide you. Never tack -ize onto a noun to create a verb. Usually you will discover that a useful verb already exists. Why say “utilize” when there is the simple, unpretentious word use?”

    I urge you to “utilize” the word “use”…

  40. The invention is NOT the claim. The claim is legal text that reads on one or more embodiments of the invention including potentially infringing structures ideally even those not specifically described in the spec.

    Incidentally, it really annoys me when examiners talk about the prior art “reading” on the claim. Wrong-headedness at its finest. Even examiners are supposed to read the claims on the prior art.

    Where’s Kayton when you need him.

  41. Leopold, a claim defines an invention. There can be multiple claims and multiple inventions, and there can be inventions that are disclosed but not claimed. But the entirety of the disclosure is not “the invention” and “the invention” is not the entire disclosure. Judge Moore’s statement, however, confuses the two and is plain sloppy.

    Regarding the ultimate result in this matter, I really don’t care that much about how they ultimately construe “partially.” For my money, “partially” doesn’t necessarily include “totally.” And I sure as hell wouldn’t use a term in a claim that I hadn’t introduced in the specification.

    My whole point is that they use a crappy methodology to get to that result, and they aren’t doing anyone any favors by using one methodology in one case and an altogether different methodology in another case.

    But then I’m sure e6k will just push back with “A foolish consistency is the hobgoblin of little minds…” and I will have to concede that I am not worthy of his/her omniscience, since I demand some consistency in the law.

  42. “I agree that it is a poor decision. Essentially they are back to Texas Digital.”

    Ridiculous.

  43. “Bloom people do this all the time when amending claims before me. They like to rely on inferences and I like to smack them down with my good friend 112 1st.”

    At least some of the time you probably should. (I originally typed “some of the time,” but I realized that I really meant “at least some of the time”…) However, in my original comment (“Why would you use a term that is never used in the specification?”) I didn’t mean to suggest that this was always improper (e.g., with respect to Section 112). However, it doesn’t (generally) seem like a very good idea.

  44. “Wow. Why would you use a term in the claims that is never used in the specification?”

    Bloom people do this all the time when amending claims before me. They like to rely on inferences and I like to smack them down with my good friend 112 1st. Of course, 112 1st has been bound and gagged by the courts so he’s not always available when he should be.

  45. “I thought the invention IS the claim.”

    That is because you belong to a cult of misguided law fanatics who refuse to see the forest for the trees. When you awaken from their brainwashing don’t worry, you will be among friends.

  46. anonymous, that wasn’t me. I think I actually made a similar point.

    OK, now I’ve read the case, and the patent. Unfortunately, the file history is not on PAIR, so I can’t see whether “partially hidden” reflects an amendment.

    Sean, you said, “If they are going word-by-word, then how does the DOE analysis proceed? Or how are they going to construe ‘hidden’ and ‘view’?”

    You raise an interesting point, but perhaps not for the reason you think. If you look at the posture of the case, the plaintiffs stipulated to a final judgment of noninfringement, and apparently only appealed the claim construction. What’s missing? An appeal of a judgment of noninfringement under the doctrine of equivalents. If I had to guess, the patentee didn’t claim infringement under DOE because he wasn’t entitled to it. Perhaps because “partially” is the result of an amendment? This technically has nothing to do with the claim construction for literal infringement analysis, but it is interesting.

    Scanning the patent itself, the description uses the word “partially” a few times in other contexts. This one is interesting: “The inset baby changing station 80 may be partially inset into a wall recess or may be almost completely inset as shown in FIG. 5B.” Doesn’t this use suggest that “partially” excludes “almost completely” as well as “totally”?

    Judge Moore (and Mayer and Friedman) got it right.

  47. Leopold Bloom writes:——–
    Then she writes this nugget: “However, this does not mean that these embodiments are all excluded from the scope of the invention, but rather that they are excluded from the scope of these particular claims.”

    I thought the invention IS the claim.
    —————

    There are multiple claims in the patent. That is Judge Moore’s point. The invention (at least the inventor’s right to exclude others) is all of the claims.

  48. “…if there is pertinent prior art then the accused infringer would have been arguing for the more broad construction.”

    Maybe, but I’d much rather win on non-infringement. If I (the defendant) lose the claim construction, THEN I say, “OK, given that (overbroad) construction, then here’s invalidating prior art.” I don’t think it follows at all that an accused infringer would argue for a broad construction if there’s a construction that rules out his product.

  49. “I thought the invention IS the claim.”

    No, the claim defines the claimed invention. You don’t have to claim all embodiments of your invention. Or all of your inventions.

    “The specification never utilizes the term ‘partially hidden from view’ to describe the platform top surface.”

    Wow. Why would you use a term in the claims that is never used in the specification?

    “They relied on the selected dictionary definition, even though they clearly recognize that throughout the specification the top surface is “generally hidden from view” in the closed position.”

    That sounds reasonable – if they used different terminology in the claim, I would presume they meant something different.

    “Furthermore, they are hyper-technical when they are construing the MODIFIERS on the claim elements as ‘claim terms.'”

    That modifier has to mean something – you can’t just read it out of the claim entirely. I don’t think this is being hypertechnical. If it wasn’t clear from the spec that it meant something else, then I would think that “partially” would mean, well, “partially.” It sounds like a stretch to read “partially” as “completely” or even “generally.”

    Now that I’ve completely analyzed the case, perhaps I’ll go and read it now…

  50. Curious,

    If “at least” brodens the claim, then that is exactly why claim construction should focus on the element (i.e., construe “platform partially hidden from view”) rather than each individual word (i.e., here the CAFC construed “partially” which is why they resorted to the dictionary, and compared it to “at least” and “generally”).

    If they are going word-by-word, then how does the DOE analysis proceed? Or how are they going to construe “hidden” and “view”? Whose view are they referring to?

    I’m not married to whether “at least” broadens or not…the point is, the CAFC (or at least certain panels/members) does a poor job in trying to justify their little rules of claim construction, when they should just look at the spec as the first (and generally only) resort. Here they fell back into the Texas Digital trap because they felt compelled to construe “partially” in vacuo.

    As to whether the patentee is trying to broaden over what was originally drafted, if there is pertinent prior art then the accused infringer would have been arguing for the more broad construction.

  51. my guess is that when the patent was drafted and prosecuted it was intended to cover only “partially hidden” and not “totally hidden”

    but now the patentee or a competitor is using a product which is “totally hidden” and so the patentee wants to “broaden” the claims so that the new patent covers this new product

  52. On the one hand, if none of the claims cited “totally hidden” or “at least partially hidden” (and I have not reviewed the patent, so I have no idea) then I believe there is a reasonable argument to interpreting the claim to mean at least partially.

    On the other hand, what kind of poor drafter would claim partially hidden without an “at least” qualifier if all the embodiments are totally hidden?

    Can anyone verify that there were no other claims that covered totally hidden?

  53. “Generally it is understood that adding words to a claim narrows its scope; or at the very least doesn’t broaden it.”

    There are MANY exceptions to this (hence dependent claims can be rejected for improperly broadening the independent). Just as an example, the addition of the word “about” in front of any recited numeral makes the claim broader.

  54. Here’s another way to look at it.

    Generally it is understood that adding words to a claim narrows its scope; or at the very least doesn’t broaden it. (There is at least one exception, in that Markush groups can be broadened by addition.)

    If the patentee modifies the claim to say — AT LEAST partially –, does that narrow the scope?? No, not under the CAFC’s construction. It actually BROADENS it.

    So now the patentee tries to go get a reissue. Is the PTO going to allow the added language as a narrowing reissue, or will it bounce it as a broadening reissue?? Yet to be determined. (Ideally, the PTO would find that the added language neither broadens nor narrows the claim, but only makes it more definite.)

  55. I agree that it is a poor decision.

    Essentially they are back to Texas Digital. They relied on the selected dictionary definition, even though they clearly recognize that throughout the specification the top surface is “generally hidden from view” in the closed position. [‘The specification never utilizes the term “partially hidden from view” to describe the platform top surface. In fact, the only place where the platform top surface is described as “partially hidden from view” is in claim 1.’]

    So instead of using the specification to inform the claim construction, they use the specification against the patentee to foreclose coverage of ALL the DESCRIBED and ILLUSTRATED embodiments from the claim(s) they construe. While they say another claim might cover the other embodiments, they never bother to point out exactly where there are embodiments described and illustrated that fall within their claim construction — because they recognize that there are none that are explicitly described or illustrated.

    Then she writes this nugget: “However, this does not mean that these embodiments are all excluded from the scope of the invention, but rather that they are excluded from the scope of these particular claims.”

    I thought the invention IS the claim.

    (As an aside, if the accused infringer had a partially hidden platform, then this panel would probably find that the claim as they construe it was not enabled, since no such embodiment was described or illustrated.)

    The bit about “different claim terms have different meanings” is a red herring. The patentee never used “generally hidden” or “at least partially hidden”. Furthermore, they are hyper-technical when they are construing the MODIFIERS on the claim elements as “claim terms.”

    I’ve said it before and I’ll say it again — Judge Moore is a disaster for the CAFC.

  56. Seems like a reasonable opinion. It also implicitly bolsters claim differentiation doctrine (at least between sets of independent claims).

  57. “Another terrible decision by Moore.”

    Actually it’s the right result and the opinion appears well-written. Did you find a mistake that you’d like to show the rest of us?

  58. The dumbest canon of claim construction ever, suffocated by a Judge Moore’s pillow! Thank you.

    “[O]ur construction of claims 6–7 leaves open the possibility that claims not at issue in this appeal encompass omitted embodiments. It is often the caes that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.”

    Duh. I wonder how Judge Newman is taking the news. I seem to recall her taking this particular canon and puffing it up into a giant blood drinking frog not too long ago.

  59. To the layperson “partially” excludes “wholly.” It was an uphill fight from the get go.

  60. I would be a lot more convinced if they pointed out which unasserted claims covered the preferred embodiment. Just saying that *some* of the unasserted claims *may* cover the preferred embodiment seems very flimsy to me.

  61. Another terrible decision by Moore. I understand the need for careful drafting of claims, but it seems that claim interpretation by the Federal Circuit is out of control.

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