En Banc Federal Circuit: Infringement of Product-by-Process Claim Requires Practicing the Process

Abbott Labs v. Sandoz (Fed. Cir. 2009) (en banc) 07-1400.pdf

The Federal Circuit had developed two opposing lines of cases for interpreting the scope of a product-by-process claim. Acting en banc sua sponte sub secretum, the appellate body sided with the Atlantic Thermoplatics line in holding that infringement of a product-by-process claim requires practicing the claimed process steps. This decision makes Judge Newman’s 1991 Scripps decision no longer good law. (Note, the en banc portion is only Section III.A.2).

[T]his court now restates that “process terms in product-by-process claims serve as limitations in determining infringement.”

The holding here explicitly focuses on claim construction for the purposes of infringement. Based on my first-pass, it appears that the court has left undecided whether this rule applies for validity purposes. I.e., can a product-by-process claim now cover a well known product made through a new process?

Notes

  • This is a very interesting decision and more analysis will be forthcoming.
  • Perhaps the most interesting portion of the decision is Judge Newman’s 39 page dissent.
  • Based on this Decision, generic Omnicef will continue to be available.

128 thoughts on “En Banc Federal Circuit: Infringement of Product-by-Process Claim Requires Practicing the Process

  1. Posted by: 6 | May 26, 2009 at 03:20 PM “Trust me, I’d make a pretty good drug dealer if I was “of color”. As is, I’d feel a little out of place in too many areas that are prime. That’s a pretty good claim tho isn’t it? From whole cloth ma [homies]!”

    Oh great, the notorious 6 is also a bigot. I just hope and pray he is not an actual patent examiner.

  2. Mr. broje wrote: “If someone made a product in China that is patented in the US, and then put it in a box and stamped it “Made in China,” it does not become a different product for purposes of infringement regarding importing it into the US.

    If someone made an automobile outside the US and used a type of bolts that are patented in the US, doesn’t the importer of that automobile still infringe because it contains the bolts?”

    I would hope so and would also say if someone used a process for making or installing the bolts that is patented in the united states the importer of that automobile should still be liable for infringement.

    Bottom line if anyone is going to make money off a valid and current US Patent in the United States then the patent owner is entitled to a royalty.

  3. “… but I know there is a prohibition against patents dealing specifically with breaking the law.”

    There is? Do you have a citation for that?

    Perhaps patent examination isn’t for you, after all…

  4. Bloom, remember, the if and only if language is subject only to the “comprising” language at the top. Perhaps I will shoot the client no matter what. Trust me, I’d make a pretty good drug dealer if I was “of color”. As is, I’d feel a little out of place in too many areas that are prime.

    Actually I was going to claim “shooting the client” if the risk profile so demanded, but I know there is a prohibition against patents dealing specifically with breaking the law.

    That’s a pretty good claim tho isn’t it? From whole cloth ma [homies]!

  5. “…refusing to sell product to the client if, and only if, the risk profile indicates the possibility of the client being a law enforcement agent is greater than the possibility of the client not being a law enforcement agent. ”

    You’re willing to risk 5-10 years based on a 51% probability that the client is not a law enforcement agent? You might want to stick to patent examination.

  6. Broje patents are the least of drug dealers worries.

    As to your other concerns, you’re not giving enough info on the hypo to get a good answer I don’t think.

    In any event, you missed out this weekend, shoulda come out with us.

    A method comprising:
    obtaining an order from a client, wherein the order includes client information,
    determining a risk profile for the client based upon the client information, wherein determining the risk profile comprises determining the possibility of the client being a law enforcement agent and also determining the possibility of the client not being a law enforcement agent,
    refusing to sell product to the client if, and only if, the risk profile indicates the possibility of the client being a law enforcement agent is greater than the possibility of the client not being a law enforcement agent.

    Bilski cuts deep into the drug world.

    If you can get around Bilski I dare you guys to get that claim and go sue drug dealers.

  7. If someone made a product in China that is patented in the US, and then put it in a box and stamped it “Made in China,” it does not become a different product for purposes of infringement regarding importing it into the US.

    If someone made an automobile outside the US and used a type of bolts that are patented in the US, doesn’t the importer of that automobile still infringe because it contains the bolts?

    But, what I’m hearing is, if someone outside the US performs a chemical process that is patented in the US, and then adds one more step to change the end product, the importer gets to avoid infringement for purposes of importation of that modified product into the US. Is that right? And, if so, does it still hold if that last step is easily reversible to obtain the original product once the modified product is inside the US? We know that such chemical processes are possible. I mean, look at all the drug dealers extracting product from imported, seemingly inoocuous, items. Isn’t that analogous to putting the product in a box?

  8. “I think we get where we would all want to be”

    Who elected David Boundy to speak for the world?

  9. Mr Boundy, the difference between the (one word) “direct” and the (16 word) “unless materially…trivial….product” language is typical (in my limited experience) of differences between civil law and common law statutory language. Interesting is the bind that England finds itself in, a common law jurisdiction within the civil law European Union. The English judges have been telling the UK Parliamentary Draughtsperson, for years and years, to stop for pity’s sake taking the simple langage of the pan-European statute and re-writing it in common law form, because it makes for endless difficulties of interpretation in the English courts.

    What do you think? Is “material” or “trivial” any more clear than “direct”? Or do you agree with me, that there are 16 times more meanings in your statutory language than in Europe’s?

    As to damages, suppose your invention is a way to seed the atmosphere, to create rainfall in the high mountains of China, and some of the resulting rain is in the water bottles of all factory workers in the whole of lowland China. Is the entire industrial output of China subject to payment of damages, at the port of entry into the USA?

  10. MaxDrei – yes, the European “direct product of process” approach could be the seed of a good solution, subject to details. What is a “direct product?” Is it commensurate with our definition in § 271(g), of “product of patented process, unless materially changed by subsequent processes, or becomes a trivial and nonessential component of another product”?

    I think we get where we would all want to be if the law were that you could collect damages, but not an injunction, for product-of-process that meets the preamble of § 271(g), but falls within the two § 271(g) exceptions.

    Actual Inventor, take a look at my posting of May 19 at 1:03 PM, setting forth the precise fact pattern falls within the problem created by the Process Patent Improvement Act of 1988, not solved by it.

  11. Inventor, thanks for playing. Question for you: are they using the subject matter of your claim to “make cars”. I thought it was a stock control method.

    What if your method is a cheaper way of making a staple bulk industrial product, say, polyamide filament, and the Chinese car has a small component, somewhere in the car, that includes a few filaments made by your process. I suppose you would argue that each car is an infringing embodiment of your patented method.

    Now turn it round. Imagine that, one day, the USA is beginning to enjoy renewed success in exporting goods. But, wherever they are being imported, the courts in that Asian country are enjoining them, as infringements of locally owned process patents. That’s OK too, is it?

  12. But, inventor, where do you want to draw the line?

    1. [USA for USA Patents]

    Patents are territorial, yes?

    2. [Yes, see above]

    That means a Chinese owner of a Chinese patent on a process can’t enforce that right against you, when you’re busy inventing, using that process, inside the USA. That wouldn’t be right, would it?

    3. [ It would be absolutely right if the Chinese owner did not have a patent in the USA. ]

    Would you in your inventing be “shafting” that unknown Chinese inventor?

    4. [ See #3 ]

    Does that matter?

    5, [ Go back to # 1 ]

    How about a Chinese maker of autos, that is using in China a neat stock control method upstream of the assembly line. The method was invented by an American, who patented it in the USA but deliberately chose not to try to patent it outside the USA. Would you find those Chinese cars to be infringing articles, when they arrive at a US port of entry?

    6. [ I would feel very much infringed and would support a law/rule against such infringement. Now on the other hand if the Chinese only used the process to make and sale cars in China, where I had no patent or any other country for that matter where I had no patent, then no problem.]

  13. But, inventor, where do you want to draw the line? Patents are territorial, yes? That means a Chinese owner of a Chinese patent on a process can’t enforce that right against you, when you’re busy inventing, using that process, inside the USA. That wouldn’t be right, would it? Would you in your inventing be “shafting” that unknown Chinese inventor? Does that matter?

    How about a Chinese maker of autos, that is using in China a neat stock control method upstream of the assembly line. The method was invented by an American, who patented it in the USA but deliberately chose not to try to patent it outside the USA. Would you find those Chinese cars to be infringing articles, when they arrive at a US port of entry? (BTW, I see from the latest stats that Americans are filing a lot of patent applications in China, far more than they bother to do in Japan. I wonder why.)

    The European Patent Convention provides that, where the patent has a process claim, the scope of protection of that claim extends also to the “direct product”of that process. How do you like the cut of the European jib?

  14. Mr. Malcolm Mooney wrote: “But here’s where it gets really interesting: if the product is unpatented and is an intermediate component and only the new process is patented (in the US), then importation of the product is not an infringing act, **regardless of how it was manufactured**, as long as a non-patented commercially viable method of manufacturing the product is known to exist. That is quite a large loophole. Again: Eli Lilly v. American Cyanimid (1996)”

    Okay I have not read this case. But, if it is as stated above then what’s the point of even having a Process Patent Amendments Act of 1988?

    Geeez, go to china and use an “Actual Inventors” patent to make the stuff cheaper, faster, better and ship back to the good old USA to sale to cheaper, faster, and better.

    I only hope there is something in the Patent Reform Act to address this or the small time “Actual Inventor” is getting the shaft.

  15. ActualInventor: “Wait, why wouldn’t a US patented process claim give you protection? For example, a process for providing x comprising the steps of A, B,C. Are you saying that anyone can practice A, B,C, in another country to provide an X, and then provide that X to consumers in the USA and not infringe? If so I want to see the case law on that.”

    See my May 21 8:31 pm comment.

  16. David Boundy wrote: “What if X’s old, are old, but I have a new manufacturing process? How do I protect against ALL importation of X’s made by the patented process?”

    By having a US patent on the process. Or, are you saying that patents on processes practiced in the USA are not enforceable if someone uses the process outside the USA then imports the product made with that process back to the USA?

  17. Mr. Examiner Number 9 wrote, “If the process is new but the product is the identical as the old one. Why would you not keep it as a trade secret? Just a thought.”

    Because some processes are required to be practiced in the open for everyone to see, thus making trade secrecy impossible and patent protection essential.

  18. “Question 2 – On the law as it stands today, the only claim that can be drafted under U.S. law to cover this kind of infringement under a U.S. patent is a product-by-process claim. (Abbot v Sandoz confirms that indeed this claim is infringed.) Would we agree there? ”

    Wait, why wouldn’t a US patented process claim give you protection? For example, a process for providing x comprising the steps of A, B,C. Are you saying that anyone can practice A, B,C, in another country to provide an X, and then provide that X to consumers in the USA and not infringe?

    If so I want to see the case law on that.

  19. MaxDrei, I have no idea what you’re talking about with regards to “obtainable” claims. Moreover, if you are going to justify an impossible-to-construe claiming paradigm on the existence of a “rare as hen’s teeth” situation, it would be nice if one real world concrete example of said situation was provided. Not a hypothetical. But a genuine case.

    But more importantly I have no idea what you’re talking about. I do know what Luke was talking about, but he was wrong.

  20. X: “To put it another way, for validity the Product by Process claim is construed as covering the product, no matter how it is produced.”

    Not necessarily. A product-by-process claim whose process steps are anticipated is also invalid. Or do you disagree?

    “Are you saying that the second construction is not narrower than the first?”

    I’m saying that determining whether “A method comprising steps x, y, z” is more “narrow” than “a product made by the method” is comparing apples and oranges … in this case an extremely fuzzy orange. More like a peach.

    Also, I agree entirely with your 8:37 am comment.

  21. Wasn’t the Process Patents Act intended to fix this problem?

    Thanks Malcolm. Section 271 has been amended so often, it’s getting a bit confusing figuring out when various provisions apply. You are right; I got the wrong act, although Congress did a sloppy job with the 1988 act and had to go back and later add importation provisions that had been left out of 271(c) and (e).

    Even so, this is a really old patent, at the end of its life. So much so that even the 1988 act doesn’t apply to this patent. The 1988 act only applies to cases filed on or after Nov 19, 1988, which isn’t true with the patent at issue. The patent drafter would have been operating under the old law when the claim set was written up.

  22. How is it logically consistent to have different constructions of the same claim based on timing (prosecution/post-prosecution)?

  23. “Product-by-process claims are given two entirely different constructions, a broad one for validity, a narrow one for infringement.”

    MM writes:

    “What makes you say that a “A method comprising steps x, y, z” is more narrow than a claim to the product made by the method? I agree that such a method claim is vastly more DEFINITE than the product-by-process claim, but what makes you say that is narrower?”

    For validity the product by process claim is construed so that the process is no limiting, for infringement the product by process claim is construed as the process being limiting. When you add an additional limitation to a claim you make it narrower.

    To put it another way, for validity the Product by Process claim is construed as covering the product, no matter how it is produced. For infringement the Product by Process claim is construed as covering the product only when it is produced by a specific process. Are you saying that the second construction is not narrower than the first?

  24. “Any non-identity (i.e. structural) “property” is in fact a product-by-process, since the result of any measurement depends on the technique you use to measure it.”

    Not true. It may be a “description” by process, but it is certainly not a “product” by process, since the process in this case does not result in the creation of the product, only the characterization of the product.

  25. “Any non-identity (i.e. structural) “property” is in fact a product-by-process, since the result of any measurement depends on the technique you use to measure it.”

    Just how certain are you of that?

  26. I’m with Luke on this. Applicants should be free to define their contributions to the art in their own language, and claims should stand, until knocked down by one of the standard statutory provisions. In an “obtainable” claim, the product has to be so wondrous that it, as such, solves an objective problem even while the product made by a prior art method does not. That’s as rare as a hen’s tooth, but not unknown. If Applicant can substantiate that, during prosecution, by a protocol of comparative testing data, relative to the closest art, he should still be in with a chance to get through to issue. If the claim, to the product as such, thus defined, can survive clarity, novelty and obviousness attacks, and it is enabled, it is entitled to get through. Dismissing all “obtainable” claims into the “too Difficult” box, per se, is ultra vires.

    If public policy demands that the claims be squeezed out, then please do it on Leibel-Flarsheim logic, or that other recent case whose name escapes me, decreeing that a claim must be enabled over its full width, and that the only width enabled by an “obtainable” claim is the width of the single method recited in the app as filed.

  27. It has not escaped our attention that many critics of the Abbott case rely on worse-than-anecdotal descriptions of ancient “inventions” that allegedly could not have been patented but for product-by-process claims, as well as the implication that compositions such as rubber would never have been discovered or would have been delayed but for product-by-process claims.

    I humbly suggest that you are merely repeating the worst aspects of weak arguments that were first floated to the United States Supreme Court sometime in the late 19th century, when segregation was legal and women were legally second class citizens. Breathe some fresh air. Patent law is better without product-by-process claims. They were never necessary.

  28. To forestall a further point:

    In my previous post I said why restricting claims to only structural (i.e. identity) claims is not sound. However, one might object that even if you can’t *identify* a composition structurally, one can *identify* it by its properties without recourse to an description of process elements.

    Malcolm evocatively described denying this as a bigfoot myth.

    But this isn’t so.

    Any non-identity (i.e. structural) “property” is in fact a product-by-process, since the result of any measurement depends on the technique you use to measure it.

    If I want to describe a polymeric mixture in terms of its average molecular weight, as one almost always would want to do, amongst other parameters, the result depends critically on whether I am talking about its viscosity-average molecular weight for instance, or one of a host of other molecular-weight estimating numbers/techniques.

    In the patent in suit, there was a lot of argument about diffraction peak patterns; but such patterns vary depending on the machine used, etc. – that is why the word “about” is used in the claims with reference to angles.

    There is no property that can be measured without reference to some process.

    Processes are part of any description of a composition that cannot be described ab initio.

    You can’t just will them away.

    Cheers, Luke

  29. Luke “Patents are for industrially useful discoveries.”

    Yes, you can patent a method if it is useful.

    “Something may be useful without it being completely, or even vaguely, understood.”

    But in order to get a patent you have to describe it. Quid pro quo.

    It’s really not that big of a deal. And it never was.

    “Take the vulcanization of rubber.”

    That’s a process. Claim it. Enjoy.

  30. “Alchemy” wrote

    Quote:

    It occurs to me that, if an inventor cannot sufficiently characterize his/her invention structurally, then there should be a 112 issue.

    Characterization via the method of production is to me akin to characterization by performance specifications–bogus. For instance, the myriad different types of steel can be characterized via performance, method of production, or structure.

    Only characterization by structure really indicates that the inventor understands what it is that he/she has invented.

    All the remainder is alchemy.

    Endquote.

    But understanding the structure of an invention has never been part of patentability. Why should it be?

    Patents are for industrially useful discoveries. Something may be useful without it being completely, or even vaguely, understood.

    If you make something new, useful, and that can be reproduced by others, that is enough to get a patent, and that is as it should be.

    There is often no need to determine a discovery’s “structure” for humankind to enjoy its utility.

    Many of the foremost industrial inventions have come about with much less than a complete understanding of their “structure”.

    Take the vulcanization of rubber. Should this have been denied patentability because how to chracterize the structure of rubber was unknown in the 19th century?

    Of course not. Finding a reproducible process was the key, and what mattered to the public, not the the scientific description of sulfur cross-linking.

    Cheers, Luke

  31. “it would not even suffice to get a process patent in every foreign country, as the performance of the parts of the process could be carried out by various entites in various countries”

    Broj stumbles upon a horrible truth about current patent law. Process claims aren’t all that or a bag of chips when it comes to foreign competition.

    Former, at least that is what this board has been saying for awhile, and I would tend to agree based on the limited understanding I have.

  32. Mark: “If the product itself was old, even if made by a new process, you were out of luck and had no remedy. US patent law was changed to cover these importation cases with entry into the WTO following the Uruguay Round Agreements Act. With today’s law, you can get away with just patenting the process.”

    Interesting comment, Mark. I’m not sure if I agree. Wasn’t the Process Patents Act intended to fix this problem? See, e.g., Eli Lilly v. Amer. Cyanimid (1996):

    “The Process Patent Amendments Act of 1988 was enacted to close a perceived loophole in the statutory scheme for protecting owners of United States patents. Prior to the enactment of the 1988 statute, a patentee holding a process patent could sue for infringement if others used the process in this country, but had no cause of action if such persons used the patented process abroad to manufacture products, and then imported, used, or sold the products in this country. In that setting, the process patent owner’s only legal recourse was to seek an exclusion order for such products from the International Trade Commission under section 337a of the Tariff Act of 1930, 19 U.S.C. § 1337a (1982). By enacting the Process Patent Amendments Act, the principal portion of which is codified as 35 U.S.C. § 271(g), Congress changed the law by making it an act of infringement to import into the United States, or to sell or use within the United States “a product which is made by a process patented in the United States … if the importation, sale, or use of the product occurs during the term of such process patent.”

    But here’s where it gets really interesting: if the product is unpatented and is an intermediate component and only the new process is patented (in the US), then importation of the product is not an infringing act, **regardless of how it was manufactured**, as long as a non-patented commercially viable method of manufacturing the product is known to exist. That is quite a large loophole. Again: Eli Lilly v. American Cyanimid (1996):

    “If there are commercially viable non-infringing processes to have arrived at X, the connection between the patented process for producing chemical X and the ultimate product, chemical Y, is broken, and Y would be a non-infringing product …

    As we noted above, the record makes clear that there is at least one commercially viable process for making cefaclor that does not involve the patented method of synthesizing enol cephems (including compound 6). Opos does not use that non-infringing process, but under the test set forth in the Senate report, it is enough to defeat the claim of infringement that there is another way of producing the intermediate, even if the alleged infringer does not use that alternative process.”

    And from Rader’s dissent: “Sadly this decision will create another massive loophole in the protection of patented processes. This decision will, in effect, deny protection to holders of process patents on intermediates as opposed to “final” products. This decision denies protection to a patented process anytime it is not the only way to make an intermediate, even if it is the most economically efficient way to produce the intermediate. ”

    To my knowledge this loophole has not been closed. Is it because it has not been sufficiently exploited? Or did I miss the case/statute that plugged it up?

  33. It seems to have escaped many of the above commenters’ notice that the patent at issue in this case was written pre-1996 (foreign priority date of Aug 19, 1987, US application filing date of Aug 8, 1988, US patent issue date of June 19, 1990). Prior to 1996, US patents did not cover importation of a product made by a patented process; only making, using and selling. For a patented process, the infringing act of using the process had to occur within the US. If you wanted to protect the product itself against sales in the US, you had to claim it as a product, and not just claim the process. Otherwise, someone could simply manufacture the product overseas using the patented process, import the resulting product into the US and escape infringement. If the product itself was old, even if made by a new process, you were out of luck and had no remedy. US patent law was changed to cover these importation cases with entry into the WTO following the Uruguay Round Agreements Act. With today’s law, you can get away with just patenting the process.

  34. I’m just going to ask, because I really don’t know.

    Does this decision require that every step of carrying out the process be perfomed by a single infringer in the United Sates in order to identify a direct infringer under a US patent?

    Or does it still permit a finding of infringement for attempts to import a finished product made, outside the United States, by that process, regardless of whether some of the steps were performed by various entities in various countries?

    If the former, then am I wrong in thinking that it would not even suffice to get a process patent in every foreign country, as the performance of the parts of the process could be carried out by various entites in various countries?

  35. Boundy “And now the problem comes into sharp focus.”

    [rolls eyes] Dude, the problem was in focus for a long time. The problem is that product-by-process claims are a debacle and should never have been permitted in the first place.

    “Product-by-process claims are given two entirely different constructions, a broad one for validity, a narrow one for infringement.”

    What makes you say that a “A method comprising steps x, y, z” is more narrow than a claim to the product made by the method? I agree that such a method claim is vastly more DEFINITE than the product-by-process claim, but what makes you say that is narrower?

    Also, it is not necessarily the case that product-by-process claims are given “two entirely different constructions.” While claiming an old product with a product-by-process claim is prohibited (because of a much more profound and obvious inconsistency relating to anticipation which apparently does not bother you), I do not see where the courts have prohibited invalidating a product-by-process claim via a showing that the recited process was old in the art. Can you provide me a cite for that? Frankly, I believe the Federal Circuit would approve wholeheartedly of the invalidation of a product-by-process claim by a showing that the recited process was old.

    “Malcolm, when you rely on something grounded, you move things forward”

    David, I am certain that clerks at the Federal Circuit and attorneys practicing before the Federal Ciruit do read this blog, including my comments (and those of others) presented over the past several years here and elsewhere on the subject of product-by-process claims. It’s not a coincidence that the Federal Circuit did what they did. It was expected. It was necessary. And the decision is “grounded” in precisely the same way that my own conclusions were grounded years ago: in basic logic. In contrast, Newman’s hangup is based in part on a myth and in part on misleading appeals to “consistency” when overall legal consistency is, in fact, dramatically enhanced by the Abbott decision.

  36. Boundy> “Malcolm, could you drop off until you familiarize yourself
    Boundy> with the cases in the area.”

    Mooney> SmithKline Beecham v. Apotex, No. 04-1522 (Fed. Cir. February 24, 2006)

    Thanks Malcolm, when you rely on something grounded, you move things forward. This is very useful.

    And now the problem comes into sharp focus. Product-by-process claims are given two entirely different constructions, a broad one for validity, a narrow one for infringement.

    That can’t be right.

  37. It occurs to me that, if an inventor cannot sufficiently characterize his/her invention structurally, then there should be a 112 issue.

    Characterization via the method of production is to me akin to characterization by performance specifications–bogus. For instance, the myriad different types of steel can be characterized via performance, method of production, or structure.

    Only characterization by structure really indicates that the inventor understands what it is that he/she has invented.

    All the remainder is alchemy.

  38. X: ” don’t think you understand my point. My point wasn’t about how product by process claims are interpreted, I just think that they should be read consistantly. Even if that means they were eliminated completely.”

    I understood your point perfectly. I also would have preferred that product-by-process claims be eliminated completely. But the “inconsistency” in the present approach to product-by-process claims that you and others continue to gripe about is trivial compared to the inconsistency that arises if product-by-process claims are treated otherwise.

    The bottom line here is that the Federal Circuit has effectively neutered product-by-process claims. For many of us, it’s a moot point because we stopped writing them for clients a long time ago. We stopped writing them because the paradigm was flawed and was destined for the garbage heap, or was going to be treated by the courts in such a way that they added nothing of value to the standard claim formats.

  39. “In a former life I was prosecuting an improvement invention for an article, which demonstrated considerably improved properties from our own prior art materials. We tried to claim the new properties, but were rebuffed by the PTO, stating that a claim to mere performance properties was insufficient under the patent laws. Since the nature of the article was so random and complex, it was impossible to really describe the differences over the prior art, but it was clear from the improved performance properties that it was different (in some way) and better.”

    Thanks for the worthless anecdote, bierbelly.

    “I think I agree with Pauline once again”

    Too bad, because Pauline just got smacked down in rather dramatic fashion.

  40. “I never liked the broader reading of product by process claims anyway because I felt that if you were only able to characterize a composition by the method of making it then it was, in fact, impossible (at the time of invention) to determine if the product was new. All that could be said for sure was that the process was new.”

    ———————————————-
    Not entirely true. I guess if you haven’t had to deal with a real situation like this, it’s hard to imagine the issues.

    In a former life I was prosecuting an improvement invention for an article, which demonstrated considerably improved properties from our own prior art materials. We tried to claim the new properties, but were rebuffed by the PTO, stating that a claim to mere performance properties was insufficient under the patent laws. Since the nature of the article was so random and complex, it was impossible to really describe the differences over the prior art, but it was clear from the improved performance properties that it was different (in some way) and better.

    Ultimately, we were forced to describe it in product-by-process language for 112 purposes, which I tried to avoid like the plague due to the Scripps/Atlantic dichotomy, to no avail.

    Mind you, this was NOT a new chemical, but largely a mechanical-type of article, although chemical engineering was certainly at the crux of the improvement.

    All in all, I think I agree with Pauline once again, assuming her observations about the SCOTUS precedent cited by the majority are true, i.e. that all of its foundation lay on prohibiting new processes for old products in PbP claim construction. She seems to have picked the majority’s opinion apart and discarded it piece by piece. Why won’t the world listen to real patent attorneys?

  41. Malcolm,

    I don’t think you understand my point. My point wasn’t about how product by process claims are interpreted, I just think that they should be read consistantly. Even if that means they were eliminated completely.

    If product by process claims were read as being limited by the process (as they are now certainly read for infringement purposes), then they would simply be another way of patenting a method that would simplify enforcement of your method claim.

    It would be one of those cases where the literal meaning of the claim is not the same as the legal interpretation of the claim (as is the case with means plus function clauses).

    I never liked the broader reading of product by process claims anyway because I felt that if you were only able to characterize a composition by the method of making it then it was, in fact, impossible (at the time of invention) to determine if the product was new. All that could be said for sure was that the process was new.

    This is not an issue with the narrower reading of product by process claims (in which you are, in essence, patenting the method), but is an issue when the claims are read broadly. A patent (with its presumption of validity attached) should not be granted if it is not possible to determine the novelty of a composition.

    The other choice would be to eliminate product by process claims completely.

  42. Let’s stir the pot.

    Malcolm, Isn’t your favorite type of claim – beauregaurd – just a product-by-process claim in computer clothes?

  43. broje “If not, then what is the distinction and why is it relevant?”

    Read the decision starting at the paragraph at the bottom of page 20.

    This is really not difficult at all.

  44. Is there a distinction here between a composition that is described versus a composition that is enabled? If the patentee enables the composition by describing how it is made, and if it can be determined that an accused composition was made in that fashion, then hasn’t the patentee described the composition? If not, then what is the distinction and why is it relevant?

  45. “Separate claim constructions for invalidity and infringement does not seem proper.”

    *sigh* The point is that if the accused infringer can show that their accused product is old in the art, then claim construction is not necessary.

    Again, the concern about what is “proper” is misplaced, particularly now. Compared to the previous impropriety (prior to this decision) of allowing patentees to sue competitors for selling compositions that the patentee FAILED TO DESCRIBE, the contradiction with the spirit or letter of the law in the present paradigm is relatively meaningless.

  46. So the process of a product by process claim is to be construed as limiting for purposes of infringement but non-limiting for purposes of validity (at least under 102 and 103)?

    Separate claim constructions for invalidity and infringement does not seem proper.

    You would think that the metes and bounds of a claim would be determined once, and that this construction would hold true for both potentially invalidating prior art and potentially infringing products.

  47. It just goes to show that nobody’s perfect. I believe Mooney is correct that based upon the decision, Newman is jumping to the conclusion that the old validity standard will hold as well.

  48. “We have long known that claims are construed without respect to the method steps for *patentability,* and we now know that they are construed with respect to the method steps for infringement. But I don’t know whether a case has ever adjudicated the issue for post-issue *invalidity.*”

    Try SmithKline Beecham v. Apotex, No. 04-1522 (Fed. Cir. February 24, 2006): “It makes no difference here whether the ‘944 patent’s product-by-process claims are construed broadly to cover the product made by any process or narrowly to cover only the product made by a dry admixing process. Either way, anticipation by an earlier product disclosure (which disclosed the product itself) cannot be avoided.”

    “Malcolm, could you drop off until you familiarize yourself with the cases in the area.”

    Keep digging, Mr. Boundy.

  49. David:

    It seems that Kinik Co. v. International Trade Commission, 362 F.3d 1359 (Fed. Cir. 2004), which held that defenses to infringement under section 271(g) do not apply to ITC exclusion actions, is still good law. Consequently, it seems that generally, one could seek an exclusion order to prohibit entry of a product manufactured abroad by a process patented only in the US, even if that product:
    (1) is materially changed by subsequent processes; or
    (2) becomes a trivial and nonessential component of another product.

    Although the very recent Amgen v. ITC & Roche decision introduces some slight tweaks, this seems true regardless of this particular en banc decision or whether one even has an issued, in-force, enforceable US product-by-process claim.

    Thoughts? Thanks.

  50. just Visting -

    > ["That which infringes if later anticipates if earlier," quotation corrected]
    > is simply not true for product by process claims. By this opinion
    > (and also Scripps), the scope of a product by process claim is narrower
    > for infringement purposes than it is for invalidity purposes where
    > the product steps simply don’t matter.

    This might not be quite correct either! We have long known that claims are construed without respect to the method steps for *patentability,* and we now know that they are construed with respect to the method steps for infringement. But I don’t know whether a case has ever adjudicated the issue for post-issue *invalidity.* That could go either way! (Demonstrating how silly the patentability “ignore the words of the claim” rule is.)

    Malcolm, could you drop off until you familiarize yourself with the cases in the area. You’re not contributing anything except confusion.

    David

  51. “What anticipates during prosecution later infringes.”

    This statement is simply not true for product by process claims. By this opinion (and also Scripps), the scope of a product by process claim is narrower for infringement purposes than it is for invalidity purposes where the product steps simply don’t matter.

    Of course none of that prevents you from writing process of making claims in which the process steps will be given weight.

    I’m a bit surprised at 6′s reaction to Newman’s opinion. A quick perusal of the MPEP section on product by process claims suggests to me that she is dead on regarding how such claims are to be examined for validity/invalidity. Newman’s comments concerning how the claims are to be applied for infringement are not in conflict with examination procedures.

    In any case, I don’t read Newman’s opinion as complaining about the decision for this particularcase, but rather about having a no-exception rule and going through the proper process for reaching the new rule.

  52. In my non-US jurisdiction, I regularly include “a product made by the process of claim 1″. The reason is that I want an option to sue the retailer, not merely the manufacturer. The retailer may be the one with assets, or may simply be easier to pin down. If the claim as a whole is novel and non-obvious, I think I have a right to it.
    My read of the case suggests that actually it’s about construction of the term ‘obtainable’, not about product-by-process terms per se.

  53. Any patent lawyer who was banking on Scripps was probably at risk for malpractice anyway.

  54. GP “what infringes during prosecution must earlier anticipate.”

    Yes, that’s the rationale for not allowing someone to claim an old composition by reciting some historical event in the composition’s history.

    Likewise, you can’t avoid claiming the structure or properties of your allegedly new composition and then expect the right to sue everybody unfortunate enough to make it, by any technique.

    Those who enjoy peddling multitudes of garbage claims using every “paradigm” in the book should really be glad that the Federal Circuit didn’t simply declare all product-by-process claims invalid. That would have been an even better start. But we take what we can get.

  55. “a product that was only describable through the process through which it was made.”

    The zombie myth that refuses to die. It’s like Bigfoot. Fraud after fraud can be exposed or admitted. Yet all you have to do is wave some brown fur around and point to a big footprint in the snow and a thousand new suckers will be on the phone the next day saying that they “saw something.”

  56. Dennis wrote: “”"”"Based on my first-pass, it appears that the court has left undecided whether this rule applies for validity purposes. I.e., can a product-by-process claim now cover a well known product made through a new process?”"”"”

    How can it not?

    What anticipates during prosecution later infringes. There can be no other way, and the reverse must be true – what infringes during prosecution must earlier anticipate.

    If you require process steps to infringe, then you require process steps to anticipate.

    BAD DECISION that substantially broadens what is now patentable through product by process claims, which were meant originally to serve to describe a product that was only describable through the process through which it was made.

  57. “OutWithTheOld” wrote:

    But the biggest joke here is the process element of these claims: “Crystalline [compound] which is obtainable by dissolving [said compound] in an alcohol, continuing to stir the solution slowly under warming, then cooling the solution to room temperature and allowing the solution to stand.” Even non-ChemEs know that dissolving many compounds in a solution (particularly water or alcohol) results in a crystalline suspension. How can someone with Newman’s knowledge in ChemE can say that this is “unobvious”?

    Because she is an actual chemist, and knows that dissolving a compound *by definition* cannot result in a “crystalline suspension” [sic], but gives a solution. *Suspending* a compound results in a suspension…

    Please learn some chemistry if you are going to attack her chemistry knowledge. And really, this is vary basic knowledge.

    Cheers, Luke

  58. metoo,

    Good observation. Waas the Japanese Priority Document incorporated by reference? If so, I think Johnston supports the argument that any material in the prioority document that is not claimed is dedicated. On the other hand, if the priority document was not incorpoated by ref, then I would argue that Johnson does not support dedication because the unclaimed material was not disclosed in the specification. What do you think of this approach?

  59. Anyone notice the other nugget in the opinion that says just because a generic is bioequivalent for FDA purposes, it should not be presumed to be equivalent for doctrine of equivalents purposes? That idea has been hopping around in a few district court decisions for a long time, but the idea has never expressed in that straightforward a manner in a Fed. Cir. decision before.

  60. Well MM if you’re going to take that attitude then what’s the point in filing any applications? “Because I can”.

    In other news, Gene Quinn, patent troll, comes out of the closet.

    link to ipwatchdog.com

    I’ve already cited claim 1 for your amusement, be sure to check out the rest of the app shortly. In addition, be sure to stop by and let Gene know what you think about his take on Bilski.

  61. It seems that Kinik Co. v. International Trade Commission, 362 F.3d 1359 (Fed. Cir. 2004) held that defenses to infringement under section 271(g) do not apply to ITC exclusion actions. Is this still good law?

  62. What is the policy reason behind 35 USC 271(g)’s statement that:
    “A product which is made by a patented process will, for purposes of this title, not be considered to be so made after -

    (1) it is materially changed by subsequent processes; or

    (2) it becomes a trivial and nonessential component of another product”?

  63. “The purpose would be to get around 102/103 by using a combo of structural and method limitations and then still perhaps catch some infringers.”

    Like I said: “because I can.”

  64. I didn’t know Blizzcon was fri night. I thought they did blizzcons during the day anyway, I’ve never been to those convention type things. It would be pretty awesome to go over to the west coast for a bit tho, get me some sun, play me some SC2, meet some folks. This weekend I think my pool is opening up so I’ve got to do that a bit.

    But in the mean time, this coming fri I don’t know just yet, we might just head out for some drinks, heck, maybe I should clean up the place a bit n have a party. Been meaning to for a bit, and everyone is in town I think. Maybe check out a show or a movie. See what some folks in richmond and bmore are doing.

    Lol I just looked up what a nero event was, I knew a bangin chic that was into that LARP stuff awhile back but that’s about the extent of my involvement in LARP. lollarpers are so weird. But man, that chic was something else. Hair down to her behind. Don’t see that every day, she could make some cool hair dos.

    “In any case, I have no idea what you are envisioning but you seem to be saying that the “purpose” of drafting the product-by-process claim is simply “because I can.”"

    The purpose would be to get around 102/103 by using a combo of structural and method limitations and then still perhaps catch some infringers.

  65. 6: “I could come up with some product by process claims which you couldn’t knock out with prior art and which could concievably be asserted by an infringer at a later date.”

    Did you mean “asserted against an infringer” or “practiced by an infringer”? In any case, I have no idea what you are envisioning but you seem to be saying that the “purpose” of drafting the product-by-process claim is simply “because I can.”

    And that gets back to my point upthread: drafting worthless claims simply “because you can” is something you do if you have money to waste or if you have a need to take someone else’s money in exchange for nothing.

  66. “For what purpose?”

    Well MM, I could come up with some product by process claims which you couldn’t knock out with prior art and which could concievably be asserted by an infringer at a later date. For those same claims you might could knock out the product or the process steps separately. Basically all product by processes are now is an excuse to create a hybrid claim in extenuating circumstances.

    It’s just another tool in the toolbox of the attorney. Although a very hard one to use.

    Then again, that’s as it should be since it probably shouldn’t even exist as a tool.

  67. “It’s a valid “concern” in so far as you concern yourself with things which you should not. As a US patent attorney that is. As a citizen on the other hand…”

    6, I think you misunderstood. I was referring to an overseas use of the patented method in order to produce something which is then exported to the U.S. While 271(g) often applies, there are situations in which it is not applicable (e.g., ” materially changed by subsequent process”).

  68. “Because the X made by the patented process is incorporated into a larger product, that X is now outside § 271(g).”

    And thank god for that.

    “Question 1. If X is made by my patented process, then the patent right should cover any economic exploitation of that process in the U.S. If my process is new and better, and my process makes the same stuff but makes it by a cheaper process, then that’s the value add that a U.S. patent should protect. Would we agree with that view?”

    No. If X is made by your patented process then the patent right should cover performing the patented process in the US. If your process is new and better, and your process makes the same stuff but makes it by a cheaper process, then that’s the value added. And a U.S. patent should protect the patented process. How much clearer can this be made for you?

    I should note briefly that there is some room that I misunderstood the question. Perhaps you’re trying to say that “if X is actually made by an infringer by my patented process…”. If that is what you’re trying to say you’re not making any sense since the claim you wrote is a product by process not a process. You thus have a product by process patent, not a patented process. In which case the whole question makes no sense.

    “Question 2 – On the law as it stands today, the only claim that can be drafted under U.S. law to cover this kind of infringement under a U.S. patent is a product-by-process claim. (Abbot v Sandoz confirms that indeed this claim is infringed.) Would we agree there? (6, your post of May 19, 2009 at 11:26 AM confirms that we agree on that there’s infringement.)”

    I can neither agree nor disagree, as I’m not familiar enough with the types of infringment. I don’t believe my post confirms what you say it does, because unless it is all one company making the product in china, then transporting it over (without selling it) and then selling it in the US, it would have to be some indirect infringment or some such mess rather than direct infringment. Presuming that it is all one company doing all that, I’m still not sure, because I’m not familiar with product by process infringement law pre this decision. Although, I will say that in all those circumstances I would lean towards your position that there is some kind of infringment.

    “Question 3. I don’t think that there is any other claim form that is infringed under a U.S. patent under U.S. law as it stands today for the facts of my hypothetical. Judge Learned Hand noted this in the 1950′s, and it’s still true today as far as I know. Can anyone propose another?”

    No, and for good reason. Because congress hasn’t created one for you.

    “Question 4. However, under Thorpe, Hughes, etc., it’s VERY difficult to get this claim issued, because X is old, and the claim construction for patentability and the construction for infringement are totally different. Would we agree there?”

    It might be. It would depend on a number of factors. How astute is the examiner? And are we talking about difficulty to have this claim issued under the old regime, or what will likely be the new patentability regime for product by processes?

    “That inconsistency between patentability and infringement is Judge Newman’s main gripe, and mine.”

    Actually, her main gripe was the procedural bs iirc. Probably the same kind of rule making procedural laws/rules that you worry about the PTO trampling all over when rule making.

    “I see two good solutions: either the European solution (direct product of a process is an infringement of the process claim), or get rid of the product-by-process rule for misreading claims during examination.”

    I’ll settle for the later since they won’t do away with this nonsense outright just yet. Give the art another 100 years of learning how to inquire into the structure of things and perhaps we’ll get rid of it for good.

    “You are absolutely correct–there is no reason why a product-by-process claim should be interpreted one way for infringement and a completely different way for patentability.”

    You’re absolutely right. We’ll need to change the way we think about the claim from the standpoint of patentability like what I believe Boundy is telling us about and I’d mentioned way up thread.

    “Every other agency of the federal government takes the law as it is, and works within the law as handed down by those with authority to write it. Only the Patent Office takes the view that settled law is made to be broken. That’s chaos and anarchy.”

    No other agency has to deal with the ridiculousness that goes on in patent law sans our interference. That’s enough said imo. But if I were to say more, it would go something along the lines of: No other agency has rulings which directly countermand the statutory provisions coming down in the sheer numbers that the USPTO gets. How can we be fulfilling 151 while two or more of our “laws” amongst the caselaw and the statute are in express disagreement with one another? What if, as in this case, the express disagreement was created in no small part by the PTO itself in ages past? Should we not say “our bad, let’s do things right”?

    “The example he gave with respect to overseas use of a patented method is absolutely a valid concern in many instances.”

    It’s a valid “concern” in so far as you concern yourself with things which you should not. As a US patent attorney that is. As a citizen on the other hand…

    MM makes some valid remarks at the top of this page. We may very well keep the old examination standards and adopt this new view on things for infringment. Though, I wouldn’t consider it all that fair in my book on first blush.

    “This is just silly. Every agency, including the PTO, gives lip service to existing law and the constraints imposed by statutes and court decisions. The extent to which they actually “take the law as it is” is debatable, and the PTO doesn’t really stand out one way or the other.”

    Probably true, but I don’t know enough about them to know for sure.

    We’re an administrative branch agency. Administer things. It’s kind of what we do.

    Oh and Max, I’ll be frakked it seems my brief reply from you got eatten by the site.

    I drafted you a claim.

    1. A composition comprising: grey goo that cures life threatenting disease Y.

    Then I said go get you a patent bucko. Then I told you to stop worrying your silly little head about product by process claims that you’ll never need to use.

    I also mocked you for fearing competition as well, since I am always liable to mock people who dislike competition.

    Then, I stated that clearly you’re not reading me right since I do feel like A deserves protection for the goo, however made, since I just drafted you a legitimate claim.

    Finally I told you that it’s me and a majority of CAFC judges that are telling you that US patent law statute is compatible with our position and no other and that our minority doesn’t only comprise one.

    But thanks for playing.

    “your incentive to disclose that process?”

    What is: A process claim Alex? That’s right 6! Pick a category! I’ll take product by process claims for 500 please.

    Broj, I didn’t hear back from you about if you had anything planned for Fri night. I promise, whatever I’m getting into it’ll be fun times ;)

  69. “Question 1. If X is made by my patented process, then the patent right should cover any economic exploitation of that process in the U.S. If my process is new and better, and my process makes the same stuff but makes it by a cheaper process, then that’s the value add that a U.S. patent should protect. Would we agree with that view?”

    I don’t agree. If your only patent rights are to the process, your process should be conducted in the US to sue for infringement in the US. Get a foreign patent and sue where the process is being used.

    “Question 3. I don’t think that there is any other claim form that is infringed under a U.S. patent under U.S. law as it stands today for the facts of my hypothetical. Judge Learned Hand noted this in the 1950′s, and it’s still true today as far as I know. Can anyone propose another?”

    I believe there is no possible cause of action in the US on any valid claim.

    “Question 4. However, under Thorpe, Hughes, etc., it’s VERY difficult to get this claim issued, because X is old, and the claim construction for patentability and the construction for infringement are totally different. Would we agree there?”

    I agree, as it should be.

  70. “If a product-by-process claim will only be infringed by someone who makes the product by the process recited in the claim, then what’s the point in ignoring the process when determining patentability? Expediency? No”

    Uh, yes. A claim to an old product drafted in product-by-process claim format is invalid. What could be simpler?

    Again, I’m not sure what all the fretting is about. Most of the universe had already given up on product-by-process claims. Who is going to draft such claims now? For what purpose?

    The alleged inconsistency the above rule presents is nothing compared to the mind-numbing gobbledygook that results if one adopts Newman’s position which is (1) predicated on a lie and (2) leads to a result that reeks of inequity.

  71. broje,

    This decision does not affect the ability to claim such a new process for making a known product. A “product-by-process” claim is simply an alternative, but often important, way to obtain patent protection for that new process. It should not replace a method claim for the new process, but it can serve a vitally important role (which some here are choosing to ignore).

  72. metoo “The example he gave with respect to overseas use of a patented method is absolutely a valid concern in many instances.”

    Let me put it this way, metoo, so both you and David understand: product-by-process claims were and are worthless piles of crap whose existence was predicated on an easily debunked myth that is, sadly, easily swallowed by shallow thinkers and habitually relied on by prosecutors of a certain age and lifestyle who like to charge naive people for the drafting of worthless claims.

    This was all patiently explained to David and others over the course of many comment threads over the course of many years. Anyone who was “concerned” about the oversease use of a patented method and who believed that a product-by-process claim was the answer was fooling themselves and their clients.

  73. Expediency isn’t enough.

    If “A then B then C to yield D” is known, and if you discover that “A then E then C then F to yield D” is cheaper, then what is your incentive to disclose that process? Refusing to allow the patent becasue D is old merely encourages you to keep the new process as a trade secret and sell D at a cheaper price. Encouraging people to opt for trade secret protection is just bad policy. Who knows what kind of further innovations might have been sparked by the disclsoure of the new process?

  74. Malcolm,

    I can’t for the life of me understand why you are still tolerated here. The majority of your posts evidence a level of immaturity which is perhaps surpassed only by your unwarranted arrogance.

    Expediency? Give me a break. If a product-by-process claim will only be infringed by someone who makes the product by the process recited in the claim, then what’s the point in ignoring the process when determining patentability? Expediency? No, the only expediency here is the fact that you’ve got no logical reason for your assertion. Claims should be interpreted the same way–whether for purposes of infringement or validity. Period.

    And I also see that you have yet to explain how the use of PBB claims discussed by David is not a valid concern.

  75. D. Boundy writes:
    ———-
    Every other agency of the federal government takes the law as it is, and works within the law as handed down by those with authority to write it. Only the Patent Office takes the view that settled law is made to be broken. That’s chaos and anarchy.
    ———–

    This is just silly. Every agency, including the PTO, gives lip service to existing law and the constraints imposed by statutes and court decisions. The extent to which they actually “take the law as it is” is debatable, and the PTO doesn’t really stand out one way or the other.

  76. outwiththeold, you said:

    “If you argue in prosecution that the difference between prior art A and your invention A+B is B, then DO NOT argue in litigation that B is somehow not required to find infringement. Here, the patent holder did exactly this (pp 23, 24 of the slip; pp 25, 26 of the pdf).”

    Did you read a different case than I did? What prior art are you talking about? “Crystal B” is not prior art that was argued around during prosecution. Good grief–at least try to read the case before you post.

  77. “You are absolutely correct–there is no reason why a product-by-process claim should be interpreted one way for infringement and a completely different way for patentability.”

    Yes there is: expediency.

    If the claimed product is old, then your product claim is invalid, regardless of whether it is drafted in composition form or product-by-process form. Using a product-by-process claim, you can’t sue a competitor who makes an old product, period.

    If the claimed product is not old and you sue an alleged infringer who doesn’t practice the process steps, the alleged infringer doesn’t infringe. The reasoning here is that it is not fair for the competitor to be forced to guess whether its product is captured by the claim when the patentee could not be bothered to describe the product.

    This is really basic stuff and I feel sorry for people like David Boundy who continually spit in the wind and end up drenched in their own saliva.

  78. Malcolm,

    All snide remarks aside, David is absolutely correct given the current statutory framework we have for infringement. The example he gave with respect to overseas use of a patented method is absolutely a valid concern in many instances.

  79. Normally I agree with Judge Newman, but not on this on what infringes a product-by-process claim. Requiring the alleged infringing product to be made by the process steps recited in the claim is completely consistent with the all elements/all limitations rule. That such a claim may be invalidated by the same product made by a different process is also completely consistent with novelty under 102.

  80. David Boundy: “Malcolm Mooney’s post of May 19, 2009 at 02:15 AM … reflect lack of knowledge of the law”

    Nice try, David. You want to see lack of knowledge of the law? Read this garbage in your own comment:

    “Product-by-process claims are essential in order to protect manufacturing processes in the 21st century when most manufacturing occurs outside the U.S.”

    I haven’t seen a better example of pure make-it-up-as-you-go wanking in quite some time. Congratulations.

  81. PBP claims have always been a joke. First, someone in the art patents invention A. To obtain a patent, subsequent inventions must either not be A, or they must be a novel/nonobvious method for producing or using A. If the structural notation (“7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-vinyl-3-cephem-4-carboxylic acid (syn isomer)”) is insufficient to differentiate a new version of A from the prior art, then we need a new notation (and yes, I took organic chem).

    What’s funnier is the dying minority that still fights prosecution history estoppel. If you argue in prosecution that the difference between prior art A and your invention A+B is B, then DO NOT argue in litigation that B is somehow not required to find infringement. Here, the patent holder did exactly this (pp 23, 24 of the slip; pp 25, 26 of the pdf).

    But the biggest joke here is the process element of these claims: “Crystalline [compound] which is obtainable by dissolving [said compound] in an alcohol, continuing to stir the solution slowly under warming, then cooling the solution to room temperature and allowing the solution to stand.” Even non-ChemEs know that dissolving many compounds in a solution (particularly water or alcohol) results in a crystalline suspension. How can someone with Newman’s knowledge in ChemE can say that this is “unobvious”?

  82. David,

    You are absolutely correct–there is no reason why a product-by-process claim should be interpreted one way for infringement and a completely different way for patentability. Also, as you note, product-by-process claims are indeed important given our statutory infringement framework.

  83. Can a product-by-process claim now cover a well known product made through a new process?:

    Only if the product made through that new process is itself new and nonobvious. One cannot patent an old product, no matter how it is made. Product-by-process claims were devised specifically for those cases where the structural distinctions that make the product novel are difficult or impossible to characterize otherwise than by the specific process of making; although it is possible, as in Abbot’s patent, to use the product-by-process form of claim (claims 2 and 5) even where the unique structural characteristics are characterizable (as in claim 1).

    I think the decision is reasonable in this sense: products made by other methods than that found in the claim (at least by prior methods) should be structurally different from that patented, and therefore not infringe. If that were not the case, then the novelty of the product would be called into question. I suppose it is possible that some other still newer process, created after the patent filing, could also obtain the same structure as the patented product, but even in those rare cases, I believe it is reasonable on section 112, second paragraph, grounds of definiteness and public notice as to what is patented, to insist that if the product-by-process form of claiming is used by a patentee, the claim scope should be limited to just those products made by that process.

  84. Alan and 6:

    > If X is old, what right do you have to stop me, the consumer, from
    > getting X from whoever I want in the US?

    Let me get this back to a focus. First, I’m not sure you’re sticking to the facts, so I put them down really clearly in next paragraph. Second, it is pretty clear you’re drifting off-topic on the legal point – we’re talking about U.S. patents, not Chinese patents. If we stick to the relevant issue, we’ll either reach an agreement, or identify the point of disagreement. If you divert, we won’t move forward.

    Here’s the hypothetical, let’s stick to these facts, so we don’t go round and round. I invent a new process for making X. X is a molecular compound, so X is X is X, no matter how it’s made. But my process is lots cheaper than the old processes. I have a claim that says “X made by a process comprising the steps of: A B and C.” A B and C are practiced in China, and then the X is incorporated into a bigger product. (Maybe X is a plastic resin, and the plastic is used for the interior door panels of a car.) The bigger product is imported into the U.S. Because the X made by the patented process is incorporated into a larger product, that X is now outside § 271(g).

    Obviously if X is not made by my patented process, then I have no right whatsoever. But that’s not within the hypothetical, so let’s not go off point in that direction.

    So let’s check our points of agremenet and disagreement.

    Question 1. If X is made by my patented process, then the patent right should cover any economic exploitation of that process in the U.S. If my process is new and better, and my process makes the same stuff but makes it by a cheaper process, then that’s the value add that a U.S. patent should protect. Would we agree with that view?

    Question 2 – On the law as it stands today, the only claim that can be drafted under U.S. law to cover this kind of infringement under a U.S. patent is a product-by-process claim. (Abbot v Sandoz confirms that indeed this claim is infringed.) Would we agree there? (6, your post of May 19, 2009 at 11:26 AM confirms that we agree on that there’s infringement.)

    Question 3. I don’t think that there is any other claim form that is infringed under a U.S. patent under U.S. law as it stands today for the facts of my hypothetical. Judge Learned Hand noted this in the 1950′s, and it’s still true today as far as I know. Can anyone propose another?

    Question 4. However, under Thorpe, Hughes, etc., it’s VERY difficult to get this claim issued, because X is old, and the claim construction for patentability and the construction for infringement are totally different. Would we agree there?

    That inconsistency between patentability and infringement is Judge Newman’s main gripe, and mine.

    I see two good solutions: either the European solution (direct product of a process is an infringement of the process claim), or get rid of the product-by-process rule for misreading claims during examination.

    6, in your close of May 19, 2009 at 11:26 AM you make my point perfectly. Every other agency of the federal government takes the law as it is, and works within the law as handed down by those with authority to write it. Only the Patent Office takes the view that settled law is made to be broken. That’s chaos and anarchy.

  85. Did anyone else catch this little gem in the opinion?:
    Alternatively this court notes that this case seems to fit within the dedication doctrine that forecloses invocation of the doctrine of equivalents. The patent applicant clearly knew of the Crystal B forms of the claimed invention because it claimed and disclosed them in its Japanese priority application. Yet it declined to claim an embodiment expressly disclosed in its priority document, thus dedicating that embodiment to the public and foreclosing any recapture under the doctrine of equivalents. See Johnson & Johnston Assocs. v. R.E. Serv. Co., 285 F.3d 1046, 1054 (Fed. Cir. 2002).

    Since when does disclosure found only in a priority application (i.e., is omitted from the corresponding U.S. patent) preclude application of the doctrine of equivalents? Certainly the Johnson & Johnston case says no such thing

  86. MaxDrei, it’s well and good to talk about new products that can only be described by the process by which they are first produced, but I wonder how often that actually happens.

  87. 6: As I said, when A, Inc. comes up with grey goo X,that cures life-threatening disease Y, often the only way to define the goo is the method by which it was made. But once the goo exists, and cures disease Y, B, Inc. comes up with another way to make the same goo. That’s competition. Some people, including the CAFC dissenters, think that A deserves protection for the goo, however made. Clearly you not. Just don’t tell me that the US Patent Law Statute is compatible with your position and no other cos, on that, you’re in a minority of one. For the time being, the one who shows that new molecule X (shown in a benzene ring type diagram in claim 1) unexpectedly cures disease Y gets absolute protection for the molecule X, even when it’s used as a fuel additive. We are only being consistent here.

  88. One final thing I should add. My sympathies lie with Lourie’s dissent. But, as he has admitted, there is substantial SC precedent for the current ruling. And while he is correct that there is need to take all these factors into account, that is not the place of the courts. That is for congress to do. The underlying question for the courts is not “what should the statute be” but “what is the statute?” and I dislike it when the lower courts get the two questions mixed up and have to have the SC set them straight.

  89. xu. Sorry. Don’t know. This blog is for me just a bit of fun. You could follow the IPKat, but much of that is trademark stuff. If you want real legal advice, it normally costs money. People don’t normally give away for free their hard-won, career-long, income-earning expertise.

  90. It may very well be that by the time I’m 30 every major blunder of patent law for the past 200 years will be corrected. Amazing. I am in near awe of the current court systems. It is as if the mere touch of the USSC in KSR has set off a firestorm of purging of bull from the heart of the caselaw.

    “The applicant would still have to demonstrate patentability of the new product as a product (independent of the process)”

    “On an unrelated topic, 6′s posts of May 19, 2009 at 08:23 AM and 08:44 AM are yet another proof of my hypothesis that the biggest problem in the patent system is the Patent Office, and the biggest problem at the Patent Office is the lack of respect for the rule of law. After DIRECTLY QUOTING a case, examiner 6 says he just doesn’t believe it. The problem at the PTO is that way too many employees, from examiner to Commissioner, thinks that he/she has the power to make up the law on personal opinion or “my understanding.” NO. THE LAW IS WHAT IS WRITTEN BY THOSE WITH CONSITUTIONALLY- AND STATUTORILY-EMPOWERED AUTHORITY TO WRITE IT. The “law” is just as proveable as the content of the prior art. When PTO employees express the views that 6 expresses here, chaos and anarchy results. Let’s try an “attitude adjustment” of PTO employees so we actually follow the law as it exists today – I’ll bet it would work pretty well, and all the clamor for “reform” would die down.”

    Sorry bucko, maybe they didn’t tell you this in law school but there is statutory law, and then there is caselaw. Caselaw of lower courts is an invitation for you to appeal to a higher court until the SC straightens out the nonsense which has been occurring at the lower courts. You know, the nonsense on which you are relying.

    That is easily remedied my dear Pauline. Simply allow them to demonstrate the patentability of the new product as a product by process. As has been the generally accepted rule for some time now (since you weren’t aware).

    Also Pauline, why so much QQ about them not getting product claims any longer? All they have to do is identify what they made and wham bam thank you ma’am there’s another patentable product 5 years later that they had made long before. Oh, what’s that you say? They weren’t the first ones to find out what the product is, but where the first ones to make it? Cry me a river. I would like to award product claims for people that describe to me the product, and process claims for people that describe to me processes. This is simple, it is workable, and it is demanded by 101. There is no need for this special exception that has been created when the law as written serves perfectly well. In fact, it serves as an incentive for the applicant to get offa their arse and ID wtf the product is. Wouldn’t you agree Pauline?

    No, of course you wouldn’t agree, because you feel like the laws as written weren’t good enough, so you need to go bungling them and making things more complicated than they need be. And you pay no heed to the evils which are displayed before you by your fellow judges in so far as your claiming style permits the claiming of things which you did not invent. In one instance because it gives you a broad genus of structure which you didn’t fully enable, and where you don’t even really know wtf the genus is. It isn’t fully enabled, you don’t know what it is, you didn’t invent the son of a btch for the purposes of our statute. Know what I mean?

    “Has it yet occurred to you, 6, that there are plenty of new molecules that (as of the filing date) defy definition except by the process of making them?”

    Fine max, get a process claim, THAT’S WHAT THEY WERE MADE FOR. The different stat classes weren’t just arbitrarily decided upon. They’re there for a reason. To allow a broad spectrum of ways for applicants to claim their inventions. Now all you have to do is play by the rules and claim your invention in a way that is stat acceptable. Jebus, how hard is this?

    I realize that over the years differences in the ability to be enforced etc. have caused people to want to get a product as well as a process, and an apparatus claim. Sorry, that’s not what the system was meant for. Jebus people, stop stretching it.

    “Do you have any idea of the day to day difficulties and needs of innovators working in such fields, trying to achieve a fair measure of protection for their valuable contributions, that will keep humans like you alive, ”

    Then let them bring their concerns to congress. And let congress draft them out a new statutory class, or merge all the existing ones into one big blob of indefiniteness called “things in reality”. Done and done. Easy. Simple. Do it. Till then, let’s play by the statute eh?

    “Tell me, in what way are the multitude of issued, valid, “obtainable” claims in Europe an “abomination”? Our European technically qualified patents judges take them in their stride. But you not, it seems.”

    I don’t take issue with your claims as you are not playing by our rules. If you want to adopt our rules over there then I’ll take issue with your claims as well. Similarly, I don’t take issue with your multiple dependent rules. They’re your rules max. They’re different. I could craft rules (laws) that take into account the issues Newman brings up. But I’m not, I’m playing by the current ones.

    “6,
    Perhaps I’m simply repeating Max’s more subtle point, but your “comment” regarding Judge Newman, who has a distinguised record on the bench, says far more about you than it does about her. You should be ashamed. But I bet you’re not.”

    Fine fine, she’s a grand ol lady. But seriously, she could take a look at present reality every now and again and disregard what has taken place in the past. Stare decisis has it’s place, where the old ruling still makes sense. Otherwise this would be called taking a fresh look at controversial issues which, while perhaps decided correctly back 100 years ago, no longer makes much sense. These are crucial where the old case went against the very words of the statute even back then.

    “You can, but you wouldn’t and not it would not be dependent as it pertains to a different claim category.”

    I would disagree in so far as it is technically dependent in so far as it includes all the limitations of the previous claim even if they are improper.

    “But a U.S. patent should protect all economic exploitation of an invention whose stream of commerce flows through the U.S. A U.S. patent should not extend beyond U.S. borders, but should be effective up to the U.S. border. The product-by-process rule makes it VERY difficult to get that patent.”

    It does protect all economic exploitation of your process invention within the US. It doesn’t in China. Where is the issue Boundy?

    All you just did was prove to us that there are situations where the old rule improperly allowed you a monopoly (or “protection”) that you didn’t deserve. /golfclap.

    “and 6′s of May 19, 2009 at 08:23 AM both reflect lack of knowledge of the law.”

    Trust me, I knew the old law, and I could see reality in front of my face. And I’m very much so glad that there was precedent that I wasn’t aware of that this court could rely upon to shine the light of day down upon the current practices and “law” and bring it into line with what it should have been the whole time. In case you hadn’t noticed, I’ve been talking about this very subject for a long time. Probably longer than you’ve been on the board. This is why MD probably remembers it very well, and sees that some judges are thinking just like me.

    Just like they keep on doing with what must be alarming frequency for you guys.

    “This is a terrible rule, and should be the next thing overruled. Product-by-process claims are essential in order to protect manufacturing processes in the 21st century when most manufacturing occurs outside the U.S. I need to be able to protect “An X widget, made by the process of A, B and C.” If a Chinese manufacturer uses A, B and C, and sends the X to the U.S., I want claims that will cover that product, even if the X is incorporated into a much larger product, even if a subsequent manufacturing step changes the X to an X’. Product-by-process claims are essential to avoid all the extra hoops and loopholes of § 271(g).”

    Then fin get a chinese patent on the method. Or take your concerns to congress. I’m sure they’ll listen since these extra statute claim types are “essential”.

    “NO. THE LAW IS WHAT IS WRITTEN BY THOSE WITH CONSITUTIONALLY- AND STATUTORILY-EMPOWERED AUTHORITY TO WRITE IT. ”

    Sorry bucko, but in case you didn’t notice, the courts are were we go to challenge the previous precedent. And in order to do so, we first have to disagree with you, and the precedent. As to the comments to which you are referring however this is not an issue. I was not stating that I don’t believe it, I was stating that I didn’t think I was fully comprehending what they were saying and in the later, that the position she was taking was rtarded (even if it was backed by precedent).

    “chaos and anarchy results”

    That’s going a tad bit overboard. Disagreeing with a precedent happens all the time. Both at the PTO, and at law firms. I wouldn’t exactly call this focused disagreement chaos, or anarchy. Either way though, you do have a flare for the dramatic although I’m not sure if it rivals my own.

    I’ve got some work to do so I’ll ttyl.

  91. PatentLawNewbie, I think the procedure is a little strange, but as Hal Wegner has pointed out recently, it’s nothing new. The CAFC has done the same thing at least 3 other times:

    Kingsdown Medical Consultants, 863 F.2d 867 (CAFC 98)
    Midwest v. Karavan, 175 F.3d 1356 (CAFC 99)
    DSU Medical, 471 F.3d 1293 (CAFC 06)

    I think it’s arguable that the unique nature of the CAFC’s jurisdiction makes it necessary for it to reconcile inconsistencies in its own precedent in this way. I imagine that the CAFC bar will adapt and if there’s a conflict in precedent and a litigant doesn’t like the “first precedent controls” rule, s/he can suggest that the later decision states the better rule and that the CAFC use the partial en banc procedure to adopt the later decision.

  92. Reading through Newman’s dissent now.

    Anyone have comments on the procedure the Fed. Cir. used in deciding this en banc (or as Prof. Crouch worded it: en banc sua sponte sub secretum)? My gut reaction is to agree with Judge Newman that this procedure was improper and unwise.

  93. MaxDrei-

    Do you know of a European Forum where, perhaps, one could find serious, “more advanced” professional discussions on these topics?

    could you please enlight us in this regard?

  94. It seems likely after this case that in the Patent Office just a product will continue to be prior art (even if produced by a different process). This seems a little odd since the normal rule is that if something earlier in time anticipates if it came later in time it would infringe (my wording there is off but you get the point).

    The Court quotes In re Thorpe:

    “For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (emphasis added).

    Later, it states:

    “As noted earlier, this holding follows this court’s clear statement in In re Thorpe that “product by process claims are limited by and defined by the process.” 777 F.2d at 697.”

    So it seems like that would be case law at this time. Obviously, this case didn’t deal with examination before the USPTO and so couldn’t (or wouldn’t be proper to) overrule this other parte of Thorpe. That could be another case, though it looks like product-by-proecss claims might just be an exception.

    Still working my way through the case though.

  95. The issue about importation of the direct product of an infringing method is 19th century law in England (the “saccharine” cases), and explicitly dealt with in the 1973 EPC. See Article 64(2). Been there, fixed that. Next issue?

  96. MaxDrei, Judge Newman was born in 1927 and joined the CAFC in 1984. She’s had the right to take senior status or retire outright for at least the past 10 years… probably more like 15, but she’s stayed active and shows no signs of slowing down.
    link to fjc.gov

    I think she’s wrong on the law here and was wrong in Scripps, for essentially the reasons set out in the en banc part of the majority opinion. As Judge Lourie acknowledges, precedent isn’t really on her side. Judge Lourie makes some good points in his dissent.

    As MM says, I’m glad that the CAFC cleaned this up. The Atlantic Thermoplastics has the better rule and is more in line with precedent, but the way it went about overruling Scripps was underhanded and an embarrassment to the court.

    Regarding preamble claims, the current state of the law is Bicon v. Straumann, I think. link to cafc.uscourts.gov See pp. 11-12. I suppose a stricter rule would put patentees and potential infringers on notice, but I’m not sure that the rule isn’t better left as is.

  97. If the process is new but the product is the identical as the old one. Why would you not keep it as a trade secret? Just a thought.

  98. David,

    If X is old, what right do you have to stop me, the consumer, from getting X from whoever I want in the US?

    If your process for making X is new, I still say your cause of action should be in China, not in the US.

  99. Max said: What will others write, I wonder, to ease your confusion, about the position in the USA?

    It seems to me that the position in the USA regarding product-by-process claims is confusion in itself.

    I had a claim rejected recently for being “product-by-process” of a known substance. The claim recited: “the composition of calim 1 wherein ingredient A is obtained by a known technique” (steps of which were not described).

    The examiner was stubbornly confused and stated that “limitations that indicate the manner in which one of the components is obtained are product-by-process because they are darwn to how a composition is made” -While main Claim 1 described the composition by its components and their percentages.

    Obviously the examiner, Ms. Shubert, is confused too about many other basic claim rules.

    BTW, John Roethel, asked: Can you still write a claim that says: The product made by the method of Claim 1? Is this a dependent claim?

    You can, but you wouldn’t and not it would not be dependent as it pertains to a different claim category.

  100. Alan -

    You’re arguing against several straw men, without grappling with the precise issues involved.

    What if X’s old, are old, but I have a new manufacturing process? How do I protect against ALL importation of X’s made by the patented process?

    If I don’t have a Chinese patent, of course I can’t do anything about infringement wholly within China – let’s not get off topic.

    But a U.S. patent should protect all economic exploitation of an invention whose stream of commerce flows through the U.S. A U.S. patent should not extend beyond U.S. borders, but should be effective up to the U.S. border. The product-by-process rule makes it VERY difficult to get that patent.

  101. David Boundy,

    Again I’m confused.

    If the X widget it patentable, why don’t you claim that and use the ITC to stop the X import at the border.

    If X was changed to X’ before entry to the US, you should have Chinese patent protection and be filing your suit in China, not the US, unless you are entitled to a claim on X’.

    You appear to be seeking extraterritorial reach of US patent law, something the Microsoft case seems to have abolished.

  102. 16 of the 24 posts in this thread have been by the three stooges — Larry (MD), Curly (6), and Moe (MM).

    This should tell you all you need to know ….

  103. Well, this could be the start of a much-needed revision. For decades, for examination purposes, product-by-process claims have been interpreted to cover the product, no matter the process of creation. So if an examiner finds a similar product, no matter the process by which it was made, you can’t get a claim to the product made by the process. (Malcolm Mooney’s post of May 19, 2009 at 02:15 AM and 6′s of May 19, 2009 at 08:23 AM both reflect lack of knowledge of the law.)

    This is a terrible rule, and should be the next thing overruled. Product-by-process claims are essential in order to protect manufacturing processes in the 21st century when most manufacturing occurs outside the U.S. I need to be able to protect “An X widget, made by the process of A, B and C.” If a Chinese manufacturer uses A, B and C, and sends the X to the U.S., I want claims that will cover that product, even if the X is incorporated into a much larger product, even if a subsequent manufacturing step changes the X to an X’. Product-by-process claims are essential to avoid all the extra hoops and loopholes of § 271(g).

    Product-by-process claims, at least during examination, are one of the areas of the law where words don’t mean what they say. That’s a silly rule that should be overruled next.

    On an unrelated topic, 6′s posts of May 19, 2009 at 08:23 AM and 08:44 AM are yet another proof of my hypothesis that the biggest problem in the patent system is the Patent Office, and the biggest problem at the Patent Office is the lack of respect for the rule of law. After DIRECTLY QUOTING a case, examiner 6 says he just doesn’t believe it. The problem at the PTO is that way too many employees, from examiner to Commissioner, thinks that he/she has the power to make up the law on personal opinion or “my understanding.” NO. THE LAW IS WHAT IS WRITTEN BY THOSE WITH CONSITUTIONALLY- AND STATUTORILY-EMPOWERED AUTHORITY TO WRITE IT. The “law” is just as proveable as the content of the prior art. When PTO employees express the views that 6 expresses here, chaos and anarchy results. Let’s try an “attitude adjustment” of PTO employees so we actually follow the law as it exists today – I’ll bet it would work pretty well, and all the clamor for “reform” would die down.

  104. SmithKline Beecham Corp. v. Apotex Corp., (Fed. Cir. 2006) had already answered the validity question. [Anticipation does NOT require the prior art to use the same process if the product is the same.] I assume there was no suggestion here of overuling that decision?

    THIS decision finally resolves a direct [and admitted] conflict for many years as to the product by process claim scope for infringement between two opposite CAFC panel decisions. Yet the CAFC had refused to take that direct conflict en banc to resolve at that time, when it should have, in spite of very strong protests by J. Rich.
    ———————-
    Now, as a practical question, since “product by process” claims provided for so many years a needed way to claim a novel compound that could not otherwise be adequately identified for claiming purposes as of the filing date, do you chemical practitioners think thad nowadays there are enough other sufficiently convenient and rapid chemical/physical properties measurement/identification systems to sufficiently identify compounds for claiming purposes, so that there is now less need for product-by-process claims?

  105. Does anybody have a theory to explain the CAFC majority’s irrational distaste for “obtainable” claims? It can’t be because “obtainable” claims are a disaster in Europe, cos they’re not. It can’t be because the CAFC is overly influenced by some law professor who thinks like 6, can it?

  106. 6,
    Perhaps I’m simply repeating Max’s more subtle point, but your “comment” regarding Judge Newman, who has a distinguised record on the bench, says far more about you than it does about her. You should be ashamed. But I bet you’re not.

  107. FYI from Newman herself on when the claims include product and a product by process of the same product:

    “In contrast, where the patent application made clear that the product could be described by its structure, the Patent Office ruled that the exception did not apply. See, e.g., Ex parte Scheckner, 1903 C.D. 315, 315-16 (Comm’r Pat. 1903) (sustaining rejection of claim directed to an etched printing-plate that “specifies certain steps by means of which the etching is accomplished” because other claims “define the plate in terms of its structure”).”

  108. Once again I feel compelled to observe (this time in relation to a different fellow commentator) that those individuals who are quickest to dismiss others as dim invariably are also the quickest to reveal themselves as not seeing the picture with any great degree of clarity.

  109. “Two serious questions, please. Can you still write a claim that says: The product made by the method of Claim 1? Is this a dependent claim?”

    People do that sht all the time. Generally speaking they do not survive prosecution because, for some reason or other, the attorneys change and someone who knows what they’re doing takes over and cancels the claim. In other cases the claims get restricted from one another. There are more than one spe’s I have discussed the issue with which feel like it is always appropriate to restrict them because of some logic which I’ve forgotten off hand. That is, assuming the product and method have different classifications.

    I stopped worrying about it and I stopped restricting them out because if I have the method I have the device in all my cases. If the courts start getting pissed then they’ll let us know.

  110. Good question Alan McDonald. I always thought so too. But I was thinking of Europe, where that is long-established and very clear. What will others write, I wonder, to ease your confusion, about the position in the USA?

  111. “But claim 1 is sitting right there defining the product. Should the product-by-process claims have been rejected on that basis?”

    Maybe. I can’t comment on the validity of the claims, but as to a hypothetical procedure in which there was a product claim in an application where there is also a product by process claim describing the same product it would seem that the proper procedure is to deny the product by process claims.

  112. “Patentability was determined as a product, independent of any process reference in the claim, and validity and infringement were based on the product itself.”

    That is possibly the most retardd thing to ever pass out of Newman’s mouth. And I’ve seen some dooseys come out.

    Seriously. On what planet is she living? That lady needs to retire and stop misreading precedent while she’s at it she could shut down her smuggling business. All her smuggling of limitations in from specifications is illegal and should be stamped out by her fellows or the USSC.

  113. Two serious questions, please. Can you still write a claim that says: The product made by the method of Claim 1? Is this a dependent claim?

    Thanks

  114. I’m confused.

    I always thought product-by-process claims were only proper when the product could not be described except by the process of making it.

    But claim 1 is sitting right there defining the product. Should the product-by-process claims have been rejected on that basis?

  115. Has it yet occurred to you, 6, that there are plenty of new molecules that (as of the filing date) defy definition except by the process of making them? Have you read Newman yet, to grasp that the determination whether the accused product is identical to the patented molecule (by the likes of X-ray diffraction, at the time of the infringement, 15 years later, let us say) is perfectly feasible, even while precise definition of that molecule remains elusive. Do you have any idea of the day to day difficulties and needs of innovators working in such fields, trying to achieve a fair measure of protection for their valuable contributions, that will keep humans like you alive, in years to come, provided the innovators have enough money to continue all the way to market.

    Tell me, in what way are the multitude of issued, valid, “obtainable” claims in Europe an “abomination”? Our European technically qualified patents judges take them in their stride. But you not, it seems.

  116. Indeed, this court itself had articulated that rule: “For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (emphasis added).

    That makes no sense to me unless they’re saying that the product must distinguish structurally in order for the patent to be granted, but after it is granted the claim is limited in scope to products of that structure which are also made by that process.

    That doesn’t seem to be my current understanding of how product by process claims are supposed to be examined.

  117. This is RICH. How would someone argue that you don’t actually have to have made the product BY THE PROCESS to infringe the claim?

    I do love this decision though, it should help to stamp out the abominations which are product-by-process hybrid claims. The courts need to stop practicing their fell black magics in raising such abominations in the first place.

  118. Thanks Luke. Still haven’t had time to read the Decision but already am flabbergasted to see that the claim in suit is expressed in “obtainable” form. Taking my habitual naive view, I think there is a decisive difference between a claim that recites “obtained by” (method steps) and one that recites “obtainable by” (those same method steps). The former is manifestly limited to the particular method, the latter manifestly NOT.

    That was how England saw it, till corrected by mainland Europe. Now, in Europe, it makes no difference whether one writes “-ed” or “-able”. However, the EPO always makes you change “-ed” to “-able” so in the end it doesn’t matter any more, in Europe. But at least Europe recognises the real world of chem/biotech, as explained by Judge Lourie. There are loads of “-able” claims issuing routinely from the EPO, and none of them is limited to products made by the recited method steps. How else can a patent system deliver “fair” protection for the inventors of this sort of subject matter? Any chance of SCOTUS taking this case, and putting the CAFC straight once more?

  119. “I.e., can a product-by-process claim now cover a well known product made through a new process?” can you provide an example and a good guess…

  120. MaxDrei, I believe J Newman’s fellow dissenter J Lourie also has a PhD in chemistry.

    Cheers, Luke

  121. Fantastic news (and more fun than design patents). Europe had its corresponding ding dong about product by process claims (with a 39 page dissent from the English courts) about 20 years ago. But, since then, it’s all harmony in Europe. Of course Europe had it easier, helped as it was by its statutory provision that a method claim covers the direct product of that method too. Looking forward to reading the en banc Decision (and the Dissent) as soon as I can, to see what echoes are in there, of all those old arguments, that used to run and run in Europe. Bring on that further analysis please Dennis, I can’t wait.

    Folks, is it true that Pauline Newman is the only chemist on the banc? If she was already there in 1991, to write Scripps, is she nearing retirement age? But can she possibly contemplate retirement, when there’s still so much to do?

  122. “terms in preambles are always limiting” — i.e., they are taken into account in distinguishing over the prior art?”

    Surely you aren’t proposing that such an activity during examination would be considered shocking, new or even rare …

  123. It appears that Judge Newman has her own answer to the question about how to determine validity: “My colleagues hold that these are product claims for validity, but process claims for infringement. Departure from the rule that forbids such deviation requires sound reason, and fuller exploration than the cursory brush-off dispensed by my colleagues.”

    Frankly, I’m not entirely sure that Newman is right about the majority’s holding in this regard (although one might expect them to rebut her interpretation). It seems that Newman is assuming the continued viability of earlier cases that preclude the patenting of old compositions with product-by-process claims.

    In any case, it seems to be a moot point. The PTO (theoretically) did not allow old products to be patented as product-by-process claims. Will they start doing so? Will someone ask them to? What would be the point?

    Either you have a useful novel, non-obvious method that you can claim, or you have useful, novel non-obvious composition, or you have both, or you have nothing. You can no longer handwave your way into a claim to a composition that you (allegedly) can not describe.

    And Newman’s dissent is over the top. There was no “cursory brush-off”? As the court states, it’s reasoning is straightforward. Why belabor the point? The paragraph at the bottom of page 20 should sound very familiar to anyone who’s been reading comments here for the last couple years. There’s nothing original or clever about it. It’s merely a fundamental and devastating point that explodes the myth that Newman insists on perpetuating in her dissent, i.e., that some unfortunate scientists is being robbed of “rights” to some “thing” that he/she is incapable of describing. In fact, the opposite is true.

  124. “terms in preambles are always limiting” — i.e., they are taken into account in distinguishing over the prior art?

  125. “I.e., can a product-by-process claim now cover a well known product made through a new process”

    That is truly an academic question, isn’t it?

    If the claim can only be infringed by practicing the method steps, then it’s effectively a method claim, albeit a poorly drafted one because it includes an additional limitation (i.e., the product).

    By the way, I applaud this decision. I’ve been waiting for the Federal Circuit to clean the case law up for a long time. Maybe they can quickly get together and write the case that holds that terms in preambles are always limiting. That would also be a great help to everyone.

  126. “Judge Newman’s 39 page dissent.”

    BWAHAHAAHAHAHAHAHAHAHHAHAHAHAAHAHAHAAHAHAHAHHA!!!!!!!!!!!

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