ICU Medical v. Alaris Medical System (Fed. Cir. 2009)
This is the second post on the ICU case. Part I discusses the $4.6 million award of attorney fees to the accused infringer based on the patentee’s litigation misconduct.
The district court found several of ICU’s claims invalid for lack of written description under 35 U.S.C. § 112, ¶ 1. On appeal, the Federal Circuit affirmed. (Judges Michel (CJ), Prost, and Moore; Opinion by Moore). Although similar to enablement, the written description requirement pushes an applicant to “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Most often, written description arises in cases where new matter is added to the claims during prosecution. That is also the case here – during prosecution ICU amended its claims to include “spikeless” claims — directed to a valve mechanism for adding drugs to an IV without using needles.
To be clear – the original claims included the “spike.” That element was removed during prosecution – seemingly broadening the claims. As the court stated “we refer to these claims as spikeless not because they exclude the preferred embodiment of a valve with a spike but rather because these claims do not include a spike limitation—i.e., they do not require a spike.” It is that failure to include any discussion of a spike in the claim that lead to the claim being held invalid for lack of written description.
The Federal Circuit does not cite Gentry Gallery or the infamous “omitted element” or “essential element” theories. However, the court does rely heavily on LizardTech. In that case, the court did not point to any claim limitation that was not sufficiently described. Rather, the court found the claim invalid because an embodiment arguably covered by the claim was not sufficiently disclosed.
We addressed a similar issue in LizardTech . . . We explained that “the specification provides only one method for creating a seamless DWT, which is to ‘maintain updated sums’ of DWT coefficients. That is the procedure recited by claim 1. Yet claim 21 is broader than claim 1 because it lacks the ‘maintain updated sums’ limitation.” We determined, however, that “[a]fter reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand LizardTech to have invented a method for making a seamless DWT, except by ‘maintaining updat[ed] sums of DWT coefficients.'” We therefore concluded that claim 21 was invalid under the written description requirement of § 112, ¶ 1.
In LizardTech, the court explicitly rejected the argument that the written description requirement “requires only that each individual step in a claimed process be described adequately.”
In this case, ICU’s original disclosure focused on spiked embodiments, but the more generic claims are not so limited.
ICU’s asserted spikeless claims are broader than its asserted spike claims because they do not include a spike limitation; these spikeless claims thus refer to medical valves generically—covering those valves that operate with a spike and those that operate without a spike. But the specification describes only medical valves with spikes.
Since all the embodiments included the “spike,” the court concluded that “Based on this disclosure, a person of skill in the art would not understand the inventor … to have invented a spikeless medical valve.”
Invalidity affirmed
Notes:
- This case also includes an important discussion of claim differentiation that will be dissected in a later post.
- Of course, this case suggests the best patent drafting practice of providing multiple embodiments of each claim element, and considering whether each and every limitation in the broadest original claims are necessary.
- ICU broadened its claim by dropping a limitation — did ICU introduce new matter?
- In a powerful rhetorical approach, Judge Moore chose to refer to the broad claims as “spikeless claims.” As mentioned, those claims do not include a “spikeless” limitation. Rather, they simply omit a “spike” element. As it turns out more than 99.9% all patent claims issued in 2008 are silent about “spikes,” and under the traditional interpretation of the “comprising” transition – all those claims would literally cover embodiments without spikes. The holding here cannot be that all those claims are invalid. I believe that the holding here is largely a result of the fact that the accused device was in-fact spikeless. Unfortunately, this decision does not provide helpful guidance as to when it will apply. Rather, it appears to simply be an additional vague tool available to defense attorneys.
- The court did not mention enablement – since it was easy to remove the needle from a syringe and the disclosure includes a preslit seal that could arguably work with a spikeless syringe. That modification would have been enabled based on the original disclosure.
Has there ever been an admission that an element is “essential”? Even the patent in Gentry didn’t actually say the console location was “essential.”
Even worse, the Gentry decision was very sloppy in stating that the disclosure identified the console as the “only possible location” when the specification simply included multiple embodiments having that one similarity. More specifically, this is what the court said:
“In this case, the original disclosure clearly identifies the console as the only possible location for the controls. It provides for only the most minor variation in the location of the controls, noting that the control “may be mounted on top or side surfaces of the console rather than on the front wall … without departing from this invention.” ‘244 patent, col. 2, line 68 to col. 3, line 3. No similar variation beyond the console is even suggested.”
Again, there is a lot of difference between a specification that lists several alternatives having a console location in common and a specification that “clearly identifies the console as the only possible location.” Furthermore, the word “may” was apparently read as “must” in this situation.
“To be dissatisfied betrays disrespect for the underlying creative process of the inventor.” ????
“Has anyone got an idea as to why she didn’t simply go with omitted essential element for invalidating the claim?”
Maybe because there is no admission in the record that it is “essential”?
Sadly, this decision extends a line of very troublesome cases for the predictable electro-mechanical arts. While the unpredictable arts have been dealing with omitted element considerations for quite some time, the full effects of Gentry are finally beginning to do their worst damage to the patent system.
More importantly, the 112(1) analysis no longer seems to include the saving distinctions that Gentry, and more recently, Liebel and PowerOasis, included. Namely, this “decision” does not reference criticism of the prior art, inventor testimony that a broader embodiment was not contemplated, statements that elements were necessary or advantageous, objects of the invention, etc.
Can’t competitors now invalidate a patent by simply selecting to change or omit one unclaimed detail from the specification, regardless of how insignificant, for which there is not a statement that such an detail is not included in some embodiments or that an alternate embodiment without such a detail is affirmatively disclosed and fully enabled?
If so, the ultimate result is worse than importing limitations from preferred embodiments into the claims because the claims are invalidated, and not simply avoided by one competitor.
More importantly, won’t patent attorneys now find themselves facing more malpractice lawsuits for things they did NOT say in their patent applications about embodiments that did NOT include every possible detail in the specification?
Since my post was deleted, I’ll offer it again.
Use of the term troll, like global warming, is propaganda.
MT, I think we’re on the same page. My “of course nots” were directed to the idea that this approach should be applied to ALL important claim amendments and ALL continuations. If it were that easy, I couldn’t charge so much, could I?
Leopold: your two “yes” seem inconsistent with your two “of course not”. Many continuations (and young reissue applications) come to broaden the claim scope. Every claim broadening covers embodiments that are not expressly described in the specifications, hence introduce new matter. If 112-1 could kill them and a CIP could save them, then why “of course not”, at least with respect to broadening continuations?
Furthermore, what about continuations that claim described yet previously-unclaimed matter? Those usually claim beyond what is expressly described – isn’t this the same as — or worse than — ICU? and isn’t a CIP the magic wand for those cases too? Thanks for your thoughts.
“If that’s the case, then (analgously to the provisional example) the spikeless claims could be declared effective only from the date of their entry; however, since there is no intervening prior art, they should be considered valid.”
Well yes, they could, except that by declaring so there’s an acknowledgement that the claims add new matter, which isn’t currently allowed.
“Suppose that the claim amendment was presented within a CIP, with no change to the specification whatsoever. (1) would the CIP status be proper? (2) would CIP then win the case?”
(1) Yes. (2) Yes. (Assuming no intervening art.)
And, if a CIP could be the solution: (1) should we file ALL important claim amendments as a CIP? (2) should we forget about continuations and file ALL our continuations as CIP, with the fear that ANY claim amendment can be interpreted as a new matter?
(1) Of course not. (2) Of course not. But perhaps this approach should be considered in a case where the amendment is clearly broadening, and where there’s some doubt as to the adqueqacy of the written description. This raises a question – would the designation by the applicant of such an application as a continuation-in-part constitute an admission that the application contains new subject matter, and since the only change is in the claims, that the new subject matter is in the claims. MPEP 201.06 suggests that a continuation-in-part MUST contain new matter, but I don’t believe the regs are that clear. (The proposed continuation rules made it more clear, however.) Any thoughts?
And, if a CIP could be the solution: (1) should we file ALL important claim amendments as a CIP? (2) should we forget about continuations and file ALL our continuations as CIP, with the fear that ANY claim amendment can be interpreted as a new matter?
To be consistent with the provisional argument, I would rethink the case as follows:
I guess that, in the ICU case: (1) it is presumed that if the spikeless claims were part of the original application, they would have been considered valid; and (2) there is no issue of intervening art. If that’s the case, then (analgously to the provisional example) the spikeless claims could be declared effective only from the date of their entry; however, since there is no intervening prior art, they should be considered valid.
Or, maybe restate the same situation differently:
Suppose that the claim amendment was presented within a CIP, with no change to the specification whatsoever. (1) would the CIP status be proper? (2) would CIP then win the case?
Anonymous at 10.03: Feel free to do so. All you like. If it makes you happy. Must I care (attention: rhetorical question)? Isn’t this fun?
“Would the very existence of the provisional worsen applicant’s position?”
In this case the applicant may not be entitled to the provisional appliation’s priority date with respect to the “spikeless” claims. However, the existence of the provisional application doesn’t make the applicant’s position worse. This really shouldn’t be surprising – the case law has said for a long time that 112’s first paragraph requires the specification (including originally filed claims) to evidence that the inventor “possessed” the ultimately claimed invention. Claims are obviously a good way to evidence possession of the claimed invention. But they’re not the only way. It appears to me that someone reading ICU’s original specification would have no trouble recognizing that ICU “possessed” spiked embodiments, even without the claims. I don’t think this case can be read to suggest that provisionals without claims are DOA.
“I would like to restate Question’s question. Suppose the provisional is an exact copy of ICU’s application, with no claims, and the non-provisional application is an exact copy of same, with the addition of the spikeless claims. Would the very existence of the provisional worsen applicant’s position?”
Only if the priority date of the provisional is necessary to avoid prior art that would invalidate the spikeless claims.
I would like to restate Question’s question. Suppose the provisional is an exact copy of ICU’s application, with no claims, and the non-provisional application is an exact copy of same, with the addition of the spikeless claims. Would the very existence of the provisional worsen applicant’s position?
@MaxDrei
>>This latest question of yours, Anonymous: rhetorical, I fancy.
I’ll take that as a “no”.
EG, thank you again for pointing out your opinion of another poster. I had almost forgotten, as it’s so difficult to keep track of who hates whom. Wouldn’t it be nice if there were a board where people could continually mention these things, like over and over? I beg you not to close this discussion. This is a valuable exchange and I want more! Tell me again your opinion of someone, Mooney for example. I haven’t read an opinion about him for at least a few minutes.
6, I think you’re on to something. It’s a sad state of affairs when “most smart people,” like global warming, can’t assemble a proper sentence.
Or, wait another minute, is it that global warming is like most smart people? How so? They’re both warm?
“Newsflash: like Global Warming, most smart people realize that the word “troll” is simply anti-patent propaganda designed to influence the stoopid among us. ”
“Global Warming” is simply anti-patent propaganda designed to influence the stoopid amongst us? Wait a minute, I thought global warming was the globe getting warmer irrespective of patents.
“Joker, everyone h8tes me”
As for “whatever the fxck that means, it means that a decent attorney, not a sideline watcher, anticipates reasonably predictable changes in the law.
As for very rarely being the same thing, obtaining the broadest possible claims that the specification and prior art allow has ALWAYS been considered serving the client’s best interests. Real practitioners know that.
“I’m very sorry to break this news to you but “your client’s best interests” and “the broadest claim scope that is ethically obtaintable … under a reasonable argument for a modification of the law” (whatever the fxck that means) are very rarely the same thing.
Unless you are a troll, of course. Then they surely are equivalent.”
Is this a feeble attempt at peer pressure?
Newsflash: like Global Warming, most smart people realize that the word “troll” is simply anti-patent propaganda designed to influence the stoopid among us. Looks like it got to you Pr0fessor Mooney and TJ too.
Any post with “Pr0fessor Mooney” will get deleted. Wonder why?
“I agree with Mooney”
RFLMAO
Thank you, Gratzi. A succinct analysis. And one which confirms the point that there is nothing controversial about this decision. It has ever been thus, in all jurisidictions.
Carmac asked: if the detailed description says that a feature of the invention has a spike, does this mean that there is no 112-1 support for a claim which does not include the spike?
I think this case, among others, stands for the proposition that, when it comes to “the invention”, you can’t have it both ways.
When the detailed description clearly asserts that “_the_ invention” (rather than simply some exemplary embodiments of “the invention”) “has” a “spike”, and the description is otherwise silent about any embodiments that have no spike, this case seems to say there is simply no room to later validly assert, via attempted prosecution or enforcement of a claim, that “_the_ invention” has NO “spike” after all.
In other words, by making a clear assertion that “_the_ invention” (rather than a particular embodiment) “has” a “spike”, the applicant has effectively asserted to the public that every embodiment “must include” that “necessary” and “critical” “spike”.
Otherwise, the public (i.e., competitors) must assume that the applicant is dishonest in its global and permanent characterizations of its “invention”, i.e., that the applicant means something other than what they clearly asserted. In that world, those competitors must remain diligently alert, year after year, for a late-emerging patent that suddenly lays claim to the misrepresented turf. Can’t say I blame the court for discouraging such shenanigans.
This latest question of yours, Anonymous: rhetorical, I fancy.
@MaxDrei
>>How can one answer in a few lines (except flippantly) such a fundamental question?
Do you even know what rhetorical means?
Dweller,
Based on the comment you made to mine, I suggest you ease up, as well as get a life. If there’s anyone who “clogs up” this particular blogosphere it’s MM, not Just Sayin’, me, or the many others who have to endure MM’s drivel (often repeated over and over again). With that, considered this subject closed.
“I am still troubled by the ststement that the patent enabled the spike-optional claim, but did not support the spike-optional claims. Can soemone please explain this conundrum to me?”
Consider this hypothetical. I disclose and claim “A chair with one to five legs comprising a computer that calculates flatulence temperature.” The claim issues but I file a continuation before issuance.
Then my competitor starts selling a bean bag chair comprising a computer that calculates flatulence temperature. I think I can argue that a bean bag chair is basically a chair with one leg, wherein the leg is a sack filled with beans. I am happy to admit that anybody reading my disclosure would know how to put the computer in the bean bag chair, even though I never once mentioned a bean bag chair in my specification.
So I introduce a claim in my continuation application to “A chair with one to five legs comprising a computer that calculates flatulence temperature, wherein said chair is a bean bag chair.”
The claim should not issue. I lack written description support for the bean bag embodiment, although a bean bag chair embodiment is certainly enabled by my disclosure.
I am still troubled by the ststement that the patent enabled the spike-optional claim, but did not support the spike-optional claims. Can soemone please explain this conundrum to me?
“Remember Marlon and his “diamond bullet”?”
Well, I guess that explains ol’ Mal’s “Apocalypse Now!” attitude to the patent profession at large!
The horror!
“So it isn’t just beauty that lies in the eye of the beholder but also arrogance and hostility.”
I dunno Max, but when I read your 10:00AM post, I heard the voice of Anthony Hopkins/Hannibal Lecter…
Thank you EG for that very creative contribution to this discussion. It’s you and Just Sayin that add oh so much to this comments area. I for one enjoy reading over and over again countless slags against particular posters and navigating through piles of chaff during my morning read. You really shouldn’t give away this kind of quality content for free. I bet if you made a web site dedicated to your brand of wit, you’d have paying advertisers beating down your door from day one.
I’m loving this “pile on Mooney” time! Getting the hint, MM?
Have to support Mr Mooney there, on his conundrum of how wide to go, and how many alternative embodiments to concoct. When non-obviousness in Europe hangs on “technical effects” and the drafter is not able to state the technical effects of the concocted alternative embodiments, then the chicken described by Mooney comes home to roost in the mechanical arts just as surely in the chemical field, despite mech’s greater “predictability”. I should have thought the ethical patent attorney works through this conundrum with his/her client, when deciding how wide to draft, in that first filing. There are known unknowns, which attorney and client can grasp together, before the moment of filing.
So: you’re both wrong, no?
Well thanks Dweller. That sheds a new light on it. But I’m sceptical. I think flint/fire is a great question for a trainee patent attorney to put to a supervisor. It is a question that preoccupied the English Supreme Court not many years ago, in one of those “claim the world” “whole new concept” biotech cases. It is a question that is fundamental to patent law and has bothered experts for a century. That’s why I got piqued. How can one answer in a few lines (except flippantly) such a fundamental question?
Ethical Attorney “acting like a lawyer, an advocate, and doing what is in your client’s best interests–that is, seeking patent protection of the broadest scope that is ethically obtainable under the current state of the law or a reasonable argument for a modification of the law”
I’m very sorry to break this news to you but “your client’s best interests” and “the broadest claim scope that is ethically obtaintable … under a reasonable argument for a modification of the law” (whatever the fxck that means) are very rarely the same thing.
Unless you are a troll, of course. Then they surely are equivalent.
Again, I point out the conundrum of disclosing embodiments to “support” a broader claim when those embodiments have not been reduced to practice and may not be sufficiently enabled to support a claim but are sufficiently enabled to serve as invalidating art if the embodiment is eventually reduced to practice.
This issue is more of a concern in ‘unpredictable’ arts than in other arts. But I believe the trend (brought on by KSR, in part) is that more and more applicants are going to be characterizing their technology as unpredictable.
Max, perhaps flint/fire was a rhetorical question. That’s certainly how I read it.
Sheesh. I didn’t say that making gravy was verboten. All I said was you need to be very careful with it.
Consider, if you will, the adverse consequences of tossing out laundr lists of embodiments where some of those embodiments, for whatever reason, turn out to be very desirable but (again, for some reason) are not enabled by your specification. Remember Marlon and his “diamond bullet”? This is a gravy bullet. Shot into your foot.
“Second of all, ‘protecting the exact embodiment the inventor created’ is all we are required to do as prosecutors.”
WOWEE! At every law firm I have been associated with, that is generally thought of as potential malpractice. It has always been my understanding that you are knowingly doing your client a disservice by limiting the scope of patent protection sought to the “exact embodiment” rather than acting like a lawyer, an advocate, and doing what is in your client’s best interests–that is, seeking patent protection of the broadest scope that is ethically obtainable under the current state of the law or a reasonable argument for a modification of the law.
So it isn’t just beauty that lies in the eye of the beholder but also arrogance and hostility. I had thought I was just bored, and unhappy about dilution of interesting threads. We are both waiting now, for an informative answer to your “flint” question. I look forward to responses, from players more patient than me.
Gratzi appears to ask the right questions, particularly given that so many Federal Circuit judges have a penchant for reliance on the “public notice” function of patents.
As I suggested in a previous thread, there can be substantial negative implications arising out of use of the term “invention” in the specification, see, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“[w]hen a patent thus describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.”); Honeywell Int’l, Inc. v. ITT Indus., 452 F.3d 1312, 1318-19 (Fed. Cir. 2006); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) (“[T]he characterization of the coaxial configuration as part of the ‘present invention’ is strong evidence that the claims should not be read to encompass the opposite structure.”); see also Andersen Corp. v. Fiber Composites, LLC, 474 F3d 1361, 1368 (Fed. Cir. 2007) (specification’s description of a “critical element” found limiting).
Although Judge Moore did not mention the “critical element” or “essential element” doctrine of Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998), perhaps there is good reason.
“In Gentry, the original disclosure identified the console of a sectional sofa as the only possible location for the controls. 134 F.3d at 1479, 45 USPQ2d at 1503. We held that the asserted claims were invalid because the location of the recliner controls in the claims was not limited to the console. Id. at 1479-80, 45 USPQ2d at 1503-04. In reaching that conclusion, we stated: “[I]t is clear that [the inventor] considered the location of the recliner controls on the console to be an essential element of his invention. Accordingly, his original disclosure serves to limit the permissible breadth of his after-drafted claims.” Id. In so stating, we did not announce a new “essential element” test mandating an inquiry into what an inventor considers to be essential to his invention and requiring that the claims incorporate those elements. Use of particular language explaining a decision does not necessarily create a new legal test. Rather, in Gentry, we applied and merely expounded upon the unremarkable proposition that a broad claim is invalid when the entirety of the specification clearly indicates that the invention is of a much narrower scope. Id. (“[C]laims may be no broader than the supporting disclosure.”). There was no description or support whatever in the Gentry patent of the controls being other than on the console.” Cooper Cameron Corp. v. Kvaerner Oilfield Products, Inc., 291 F.3d 1317 (Fed. Cir. 2002).
Ghost–
I believe you meant MPEP 2172.01
I presume that the Anonymous just above who posed that “flint” question is no patent attorney, nor a trainee patent attorney. What is this blog coming to? Yawn. JAOI, would you care to brief Anonymous? I won’t stand in your way.
I agree with above posters and Dennis that Judge Moore could have easily used the omitted “essential element” doctrine here (MPEP 2172.10 has caselaw cites), instead of these written description antics.
Has anyone got an idea as to why she didn’t simply go with omitted essential element for invalidating the claim?
If I discover fire and I invent a method for starting a fire that relies on flint, should I be allowed claims that don’t require flint?
i.e., am I entitled to a claim on “starting a fire”? (Which would cover new ways that don’t rely on flint).
Carnac – There is always a gap between what the inventor invents and what claims the prior art will permit. Good prosecutors try to bridge that gap with valid claims. We try to talk to the inventor more than once to help understand the “true” invention. We think up non-inventive embodiments all the time. But at the end of the day, the inventor, in his creative thought process, zeroed in on his particular embodiment because of some factor X. Let factor X be knowledge of the drawbacks of competing designs, a gut feel as to what would work best, inherent knowledge of the art, a flash of genius, etc, it does count for something.
So, when the prosecutor gets all creative and elicits variations from the inventor (as he should) to get broad claims, he should keep in the back of his mind the original embodiment. Why? Because many times, the prosecutor’s embodiments ignore that factor X and ultimately fail because they don’t work, are too costly, are not novel, etc. That’s not to say the prosecutor shouldn’t try. He should try, and if he fails he should be satisfied with claims directed to the original idea. To be dissatisfied betrays disrespect for the underlying creative process of the inventor.
Moonbeams:
“Defining the term “spike” to require that the spike be “pointy” is not reading the term ‘narrowly.’ Properly examined, a claim reciting the term “spike” would be construed just as the district court construed it here.”
No, I believe claiming spike to require the point is reading the claim more narrowly than ICU was applying it in the suit. They wanted all spikes — those with and those without points.
How can restricting spikes to just the pointy ones NOT be a narrowing construction vis a vis the infringement allegations? Or vis a vis the claim to just “spike?”
It looks like the more folks actually read Moore’s opinion, the more folks warm to it. She botched the claim differentiation part, but otherwise I feel she got it right. I don’t care for Moore, and I don’t think she belongs on the bench, but she’s very bright and her better years are ahead of us.
Do I now have to say what the invention is not?
So my claims read “A composition comprising A, B, and C. A composition of claim x further comprising D,” etc., etc. My spec reads “the invention includes A, B, C, D, E, F, G, etc…” Would it be good practice to have a standard paragraph like “The invention comprises any combination of the aforementioned components/elements, including the omission of one or more compenents/elements listed herein and not listed herein.”
Gratz – if the detailed description says that a feature of the invention has a spike, does this mean that there is no 112-1 support for a claim which does not include the spike?
I think that there is no support if the specification uses words like “must include”, “critical”, “necesssary” — but other wise I think that there is 112-1 support (though I realize that I disagree with the ICU case).
Dweller — did you as the prosecutor do your job and work with the inventor to identify, describe and claim the different inventions embodied in the article which he brought to you in the application as filed? The article has components A, B, C, D, E and F. The prior art which you were aware of when you filed the application shows only A and B, and you include only a claim to A, B, C, and D, and dependent claims E and F. It appears that there are various other combinations of elements which you might also have claimed.
I agree with Mooney. As a prosecutor, if a patent you drafted hits the federal circuit, you should be satisfied if only claims covering not much more than the inventor’s original idea survive. It’s far from the ideal outcome, but nobody can say you didn’t do your job.
This whole discussion about paint colors is slightly insane. Even the most tunnel-visioned inventor is not going to insist on (or even mention) such minutiae.
Mr. Hutz wrote:
“Under the Federal Circuit’s case law prior to Liebel-Flarsheim a provisional application does not provide written description support if there is no clear identification of what the invention is.”
Please provide a citation to that Federal Circuit case law.
“SUMMARY OF THE INVENTION
The valve of this invention has several features….
[…]
The first feature of this invention is….
The second feature is that the spike….”
If the detailed description clearly asserts that “_the_ invention” “has” a “spike”, how can the applicant later reasonably claim that “the invention” “has” NOT a “spike”? On what clear assertions in a patent should the public NOT rely?
What is the impact of this verdict on using “means” in claim structure? Anyone?
thought cloud
“sympathetic to Mooney? Cripes. Red chairs, blue chairs? I’m paying how much for this degree? I should’ve gone to GW”
Malcolm, I am generally sympathetic to your opinions, but saying that “protecting the exact embodiment the inventor created” is the core job and everything else is gravy seems a bit much. The “exact embodiment” suggests an awfully narrow patent. If the inventor creates a blue widget, a red widget would not be the “exact” embodiment. Surely you are not suggesting that changing the paint color takes something out of the scope of the patent. About the only place where the exact embodiment is all you need (where small variations actually create a large difference) is bio-chemistry.
The basic problem is that for every embodiment that you try to patent, a great many claims of increasing generality will all seem equally plausible, as long they are all novel. You invent the first table, whcih has four legs, painted blue, is made of wood, and is 3 feet high. But the description doesn’t describe a table with five legs, or red paint, or made of plastic, or 4 feet high. It is hard to understand why, according to this opinion, the claim to “a table” is not invalid. There is always a infinite number of details that are omitted in a claim, unless you claim the exact embodiment down to the paint color.
Dennis asks: “ICU broadened its claim by dropping a limitation — did ICU introduce new matter?”
My answer is “no.”
Hey Mooney, Zippy the Pinhead called, he wants his pointy head back.
Looks like the poll results are in Mooney. Pretty much everyone around here still thinks you’re a m0r0n.
“Are you saying that they’re not entitled to protect against one made of aluminium?”
Wouldn’t that depend on the prior art?
That japanese system sounds good though. We should also import their system of chopping off hands for IC/amending.
In other news I’m fuming over here. Thanks to the idits over on wall street we’re having this big recession and now the PTO HAS CANCELLED COMMUNITY DAY. W T F? Like we couldn’t have just stopped buying paper or other extraneous sht.
actingdirector@uspto.gov
There JD, have your way with him. Let him know all about bad GS-15’s are and how they’re all do nothing deadweights etc. etc. and give him any other ideas you have to save money.
I already dropped him a note.
“articulated” – that’s a pretty big word for a m0r0n.
bsn says “utter garbage.” I agree.
“Second of all, “protecting the exact embodiment the inventor created” is all we are required to do as prosecutors.”
As usual, Mooney tries to sound like he is making sense while delivering anti-patent propaganda masquerading as meaningless platitudes. And who exactly is “we?” Even if you think you are, you are NOT, and probably never will be, a prosecutor.
There is no such thing as an exact embodiment. Which is why, contrary to Mooney’s gibberish, the applicant is entitled to claim as broadly as possible, e.g. as the disclosure and prior art allow.
The resulting broad claim and any surplus scope is not “gravy” as you say, but a legitimate part of the scope of protection according to a well established legal principle (if I thought you could read real legal writing, I would encourage you to see In re Max Otto Henri Rasmussen).
The well established and accepted principles of Rasmussen are in direct conflict with the pull-it-out-of-your-a$$ “As Mooney wishes is was” hogwash that you spew forth every day here.
‘ Second of all, “protecting the exact embodiment the inventor created” is all we are required to do as prosecutors. ‘
Sorry, Malcolm. I agree on your interpretation of the actual case, but this statement is utter garbage, as you surely know. The inventor created a novel mechancial device out of steel. Are you saying that they’re not entitled to protect against one made of aluminium?
Have any of you much experience prosecuting patents in Japan? One’s specification works through each claim, from broadest to narrowest, explaining at each point what non-obvious advantage is gained by inclusion of the claimed element. This seems like good practice to me in any jurisdiction. In fact, it forces a prosecutor to work through the thinking process that most of the mechanical prosecutors posting here agree is required.
“If we did things your way, we would just be protecting the exact embodiment the inventor created.”
First, of all, that’s not “my way.” I have not articulated “my way” in either of the threads relating to this case.
Second of all, “protecting the exact embodiment the inventor created” is all we are required to do as prosecutors. The rest is gravy … hot, scalding gravy that can burn your fingers or your mouth or those of an over-reaching child if you are not careful.
WD is based on whether you have demonstrated to one skilled in the art to be in possession of what you claim.
In ICU the Applicants conveyed possession of a valve that included a spike. No place in the specification or the claims as originally filed (and thus considered part of the original specification) did they describe a valve that did not include a spike. The later-drafted claims that did not include the spike limitation were broader than what the Applicants conveyed possession of in the originally filed application, and therefore were invalid under 112.
This case is very similar to many of the Genus/Species cases that are seen in the biological arts. The Applicants conveyed possession of a single species of valve in the originally filed application (one with a spike) but later changed their claims to cover a genus of valves that included both the spiked species of valve and an unspiked species of valves.
Overall I felt that this was a good decision. If the Applicants had envisioned a spikeless valve as within the scope of their invention they should have said so in their originally filed application.
Suppose your inventor’s got an iron alloy (steel) that works better. It is your “Example 1”. But what is your claim 1? “Balance iron, with optional amounts of at least one of carbon, silicon, manganese, magnesium, nickel, titanium, chromium, vanadium, as well as incidental elements and impurities, if any”. That should do it. We’ll narrow down the envelope during prosecution, depending what art the PTO finds.
Come on chaps: you still don’t get it. As from now, you have to say what your invention is, no later than your filing date.
Referring to Mr./Ms. Question’s “provisional” hypothetical, since the patent laws allow for the filing of a provisional application without claims, maybe this implicitly means that that the hypothetical provisional provides 112-1 support for any and all combination of components/elements?
(I am not saying that I believe this, but rather am throwing it out for discussion purposes.)
“Referring to Mr./Ms. Question’s “provisional” hypothetical, maybe a form paragraph should be included in the provisional application saying that the invention can be any combination of the “components” shown (or some similar paragraph). Would that work?”
It might in some cases, but a better solution would be to include a description of alternative embodiments where various optional components have been omitted. At a minimum, where a particular component is not required in all embodiments, the description should say so.
Dear Question: I think you’d be hard pressed to show written description support for a “stripped down” embodiment. This is one reason why provisional apps should be prepared in exactly the same way as non-provisional apps, or at the very least, filed with a broad claim that omits everything not absolutely essential.
question: “A good argument (after ICU case) can be made that there is no written description for a non-provisional claim for A, B and C (without D and E).”
It is well-known that patent prosecutors constitute some of the most shallow-thinking and reactionary practitioners in the legal universe. Nevertheless, I’ll attempt once more, by repetition, to drill this point home: this ICU case is not a dramatic break with previous precedent, nor does it represent a sledgehammer for invalidating any claim broadened during prosecution.
“A good argument (after ICU case) can be made that there is no written description for a non-provisional claim for A, B and C (without D and E).”
That argument could have been made just as easily before the ICU case, with no greater or lesser expectation of success. Filing only a single Figure and a generic “description” of the Figure (i.e., a description drafted without any consideration of patent law) is, and always has been, an undesirable beginning to the process of protecting one’s future patent rights.
That said, even in this instance, the degree to which written description considerations may be used to tank a minimal claim derived from the Figure will depend on myriad factual considerations that are not present in your hypothetical.
Referring to Mr./Ms. Question’s “provisional” hypothetical, maybe a form paragraph should be included in the provisional application saying that the invention can be any combination of the “components” shown (or some similar paragraph). Would that work?
question,
Maybe.
Under the Federal Circuit’s case law prior to Liebel-Flarsheim a provisional application does not provide written description support if there is no clear identification of what the invention is. A detailed drawing and description of a mechanical/electrical device would probably suffice for claims to that device. Your claims would be limited to the device shown, but bells and whistles could likely be dropped for core claims.
Under this case, exactly how narrow those claims can be – how many structural elements you are required to include – will likely be subjective.
I haven’t filed one in awhile, but I always included a set of claims and a summary of the invention with my provisionals.
In your provisional (mechanical/electrical) application, you include one very detailed drawing and a specification which describes that drawing and all of its elements. The drawing and description disclose the best mode in sufficient detail so that one skilled in the art would know how to make and use the best mode. However, there is no mention in the specification of what the “invention” is. There is no emphasis in the spec which might give you a clue as to what the invention or novel features are. There are no claims, no summary, no abstract.
A year later you file your non-provisional application with claims of course.
Does your provisional application provide written description support for your (non-provisional) claims?
An argument can be made that except for a picture claim, there is no 112 paragraph 1, support, since there is no indication in the provisional application as to the “invention” being anything less than all of the elements disclosed.
Let’s say that the provisional application shows components A, B, C, D and E. A good argument (after ICU case) can be made that there is no written description for a non-provisional claim for A, B and C (without D and E).
Any thoughts and comments? (MaxDrei may agree with me on this)
“there was no antecedent disclosure to support non-pointed spikes.”
What’s a non-pointy spike?
Overall, I like the trend. I was involved a bit with the Lemelson patents, and was overjoyed when this doctrine was resurrected to deal with them. I see the doctrine as putting limits on how far an invention and its disclosure in a patent application can be stretched to cover products that were never within the contemplation of the inventors.
As I say (somewhere, I forget which thread) mech drafting is higher level than Malcolm’s chem/bio, where claim 1 just recites “Molecule X”. When the thing on your desk is a working machine with 100 components, all old as such, what technical features do you recite in combination as “The Invention”? Up to now, American-style optimal drafting involves just writing a 50 page detailed description of the entire machine and a main claim that’s hopelessly optimistic, and making no attempt to define a patentable “intermediate generalisation” until during prosecution (10 years later). For Judge Moore and her ilk, something more in the nature of professional (ROW) drafting is now required. Good so, because a majority of those applying for US patents these days are aliens. (Oops, I forgot, what’s good for MaxDrei and his pesky ilk must, by definition, be bad bad bad for the US economy). Oh and BTW “nobbled” means “got at” in the sense that a racehorse can get “nobbled” with drugs, to ensure that it won’t win the big race..
“The Federal Circuit does not cite Gentry Gallery or the infamous “omitted element” or “essential element” theories.”
Nor does Judge Moore cite Tronzo.
But Judge Moore does cite PowerOasis v. T-Mobile, another vague opinion authored by Judge Moore in 2008 re 112-1.
I give credit to Judge Moore for intensifying the vagueness surrounding 112-1. Hopefully this will eventually lead to en banc or certiorari review.
Hutz “This still does not mitigate my issues with Liebel-Flarsheim (LF) and its clear departure from precedent under the enablement standard.”
I agree that if you are prone to worrying about Federal Circuit cases that invalidate patents, Liebel-Flarsheim is a slightly better subject than this one. That said, I think the two cases are very similar. As I recall, the greatest weakness in Liebel-Flarsheim (and it’s a minor weakness; I have zero problem with the decision) is that the strongest evidence for the embodiment being “disclaimed” in Liebel was the reference to that embodiment being “cost-ineffective”.
There was much handwringing when Liebel was decided but I think it is true that Liebel (and this case) are largely limited to a narrow set of facts that have little to do with meat and potatoes prosecution and everything to do with obnoxious litigation tactics.