Federal Circuit Debates Stays Pending Reexamination; Injunctions when Claims are of “Suspect Validity”

Fresenius USA, Inc. v. Baxter International, Inc. (Fed. Cir. 2009)

Three judges, three opinions with a unanimous majority opinion written by Judge Gajarsa and two competing concurring opinions by Judges Dyk and Newman. The majority opinion (see below) renders most of Baxter’s asserted dialysis claims obvious. The two concurring opinions focus on the fact that the remaining still-valid claims are currently under reexamination at the USPTO and question whether a stay is appropriate.

Judge Dyk suggests that a final determination of the case may need to be stayed “pending the outcome of the reexamination.” Notably, Judge Dyk argues that the currently-valid claims are “of dubious validity in light of our holding.”

I join the majority opinion on the understanding that it does not foreclose the district court in its discretion from staying further proceedings pending the outcome of the reexamination before the U.S. Patent and Trademark Office. While Fresenius did not establish the invalidity of claims 26–31 of the ’434 patent in the district court proceeding, those claims on their face are of dubious validity in light of our holding that claims 1–3 and 13–16 of the ’131 patent and claim 11 of the ’027 patent are invalid. It is entirely possible that the U.S. Patent and Trademark Office will finally conclude that claims 26–31 of the ’434 patent are also invalid.

Judge Newman writes in response to Judge Dyk and argues that a stay would be

[inappropriate] at this stage in this protracted litigation, after full trial and decision in the district court, after full appeal and ruling of the appellate court and with only a modified remedy remaining on remand. . . . A stay of finality, after the issues of validity and infringement have been litigated and decided by the district court and appealed to the Federal Circuit, is a distortion of the role of reexamination.

I remain a strong supporter of the principle of reexamination. It can be a useful and powerful tool for the benefit of both patentees and those interested in restricting or eliminating adversely held patents. However, if routinely available to delay the judicial resolution of disputes, the procedure is subject to inequity, if not manipulation and abuse, through the delays that are inherent in PTO activity.

Majority Opinion:

The jury held that Baxter’s patents covering a hemodialysis machine with a touch-screen interface were invalid as obvious. In a post-jury JMOL decision, district court Judge Armstrong (N.D.Cal.) held that the jury verdict was not supported by substantial evidence – and thus that the claims remained valid. On appeal, the Federal Circuit largely reversed – finding that the jury had sufficient evidence to decide either way.

The jury yes/no decision here shows signs of the ‘black box’ effect that renders such decisions largely unassailable. Rather than attacking the jury’s reasoning, the appeal can only question whether the defendant had provided sufficient evidence of obviousness (regardless of whether the jury actually relied upon that evidence).

Where, as here, the jury made no explicit factual findings regarding obviousness, we must determine whether the implicit findings necessary to support the verdict are supported by substantial evidence.

Permanent Injunction: The court had ordered a permanent injunction to stop ongoing infringement. On appeal, the Federal Circuit vacated that decision after finding some of the claims invalid. On remand, the district court is instructed to “revise or reconsider the injunction in light of the fact that only claims 26–31 of the ’434 patent remain valid and infringed.”

Based on Judge Dyk’s argument regarding dubious validity, this case appears to now create a situation suggested by Justice Kennedy in his eBay concurrence. In that opinion, Kennedy argued that the “suspect validity” of patent claims “may affect the calculus under the four-factor test.” Thus, even though the claims have been held valid, their marginal validity could weaken the patentee’s case for permanent injunctive relief.

Notes:

  • This is an interesting and nuanced opinion that includes much more than what is discussed here.

 

91 thoughts on “Federal Circuit Debates Stays Pending Reexamination; Injunctions when Claims are of “Suspect Validity”

  1. ‘Now I’m confronted with the situation where applicant’s own specification doesn’t technically describe making a “solution”, but rather merely a “suspension” but the claim calls for a “solution”. ‘

    I believe the more hostile, legalistic response would be a rejection due to failure to enable, because the claim calls for a solution and the specficiation only makes a suspension.

    At this point the applicant has to amend the claim or define what the applicant means by “solution”, at which point you’re back on firm ground.

  2. “Everyday nonsense I get to put up with. What to do, what to do? ”

    Well, if there isn’t any legal reason not to, tell the applicant that his description seems to describe a suspension, not a solution, and could he please amend.

  3. MaxDrei, indeed this is the issue and it appears to be more common than not in the real world. We live in an imperfect world where no one has or can ever hope to have at reasonable expense a complete understanding of the prior art. In such a world, inventions exist in the specification, but are not properly claimed. Historically, we provide patent owners a remedy: reissues.

    The theory of a reissued patent is that it is a new patent that becomes effective upon the surrender of the old. For the first 150 years of reissue practice, this naturally abated past damages for even claims in the reissue which were substantially the same as the claims in the original patent. But in 1952, Congress provided for continuation of damages for claims “substantially identical” with claims in the original patent. Case law has construed this statute to mean “without substantial change in scope.” This statute also now applies to reexamined patents.

    So what of claims that are actually narrowed during reissue. As an example, suppose we have a claim that originally provided a range of 1-100, but is narrowed to provide a range of 1-80 due to prior art. The case law would say that this claim is not identical in scope and would abate damages against a party that was within the 1-80 range at all times. In other words, the party was at all times practicing the disclosed and claimed invention, but because of a latent defect, the originally claimed invention could not be enforced without a further limitation.

    In Europe, it is my understanding the law generally is that a patent cannot be enforced while an invalid claim exists in a patent, but if a claim is narrowed to make it valid, past damages can be awarded provided the infringement of the narrowed claim existed at all times. I think the reason for this is that European patent systems never had a reissue system such that a new patent was issued. The European theory was that the claims in the existing patent were limited.

    But, as stated, such is not the law in the US. If a claim is limited in a reissue or a reexamination, past damages are abated even if “infringement” of the claim was continuous.

    Which brings us to the “game.” If an infringer can force the patent back into the patent office and have the claim “broadly construed” so that amendments are required, their damages are abated even if they are at all times practicing the claimed invention and even if the original claims are perfectly valid over the art given a proper construction.

    The “game” was predicted in 1985 by Judge Nies and is common practice today. However, if the European practice of not abating past damages if a narrowed claim continues to be infringed, the unfairness of the current reexamination system (primarily caused by substantially different claim construction regimes) would lessen substantially.

    But until such a law is passed, reexaminations remained subject to what I would call abuse.

  4. Mr Heller, I think your replies make my point, which I did not express clearly enough. As your reply to Visiting reveals, there are narrowing amendments that do nothing more than suck a dependent claim into claim 1. Then there are those that amend claim 1 with words that don’t correspond to a dependent claim. It was this latter category I had in mind. With the best drafting in the world, but with incomplete knowledge of the close art, there will be instances of the latter type of amendment. What then?

  5. MaxDrei, tell me a patent attorney worth his salt that does not already attempt to get both broad and narrow claims in his patent? Your note is essentially a non sequitur.

    Just Visiting: Let us be completely clear, if a claim is held invalid by a court, it cannot be narrowed during reexamination or reissued with narrowing amendments. So at face value, you have a point if one has a good-faith belief in the invalidity of a claim. If he is wrong in his judgment, he will be liable for past damages. But he is entitled to proceed without willful infringement. His good faith does not excuse past damages. This is the point I wish to make here.

    But we do have reexaminations and we do have reissues. If before a claim is held invalid, it can be reissued in narrowed form. This is almost as if a narrow dependent claim corresponding to the narrowed claim was already present in the patent. Obviously, the problem here (past damages or not) is a prosecution problem, as a patentable invention was at all time present and claimable.

    So the question really is should the “infringer” whose past activity infringes the narrowed claim escape damages solely because the hypothetical narrow dependent claim was not present from the beginning?

    If one answers the question in the affirmative, one would strengthen the patent system in my view as it would place more value on the fundamental invention than the skill of the patent attorney.

    But this discussion is largely out of context, as validity of a claim during reexamination and reissue is not at stake or even at issue. Rather, it is the patentablity of the claim which is at stake under BRI. Just because a claim is amended in such a proceeding does not ipso facto mean that it was invalid under a reasonable construction. So the equities line up even more heavily, in my view, in preserving damages.

    There are cases where the courts have weighed the equities of intervening rights in face of narrowed claims. Where the infringer has proceeded recklessly prior to the reissue, no intervening rights were accorded. The contrary may be true when good faith is demonstrated. What this suggests, of course, is that the issue of past damages might also be a matter of equity where the good faith of the infringer was weighed against the issue of whether in fact the claim was invalid and not just unpatentable, i.e., whether the construction given the claim during examination was reasonable and NOT the BRI drivel given us in the usual case.

  6. MM-trollbot wrote: >>”Under the circumstances you indicated, >>absolutely.”

    An intelligent poster wrote: >>It is crystal clear that you are an examiner.

    There is no doubt that MM is an examiner.

  7. Good question Visitor. If you allow patent owners belatedly to narrow down to a valid claim, and recover damages back to the time before amendment, that will just encourage Applicants to go for broader and broader claims, whether valid over the entire scope or not, which (as such) will work against the public interest.

    No doubt Mr Heller will give you an answer to your question that is better than anything I could come up with. After all, it’s his thing, that he’s pushing.

  8. “Why should the blameless patent owner get no damages”

    Why shouldn’t the infringer be allowed to rely on the fact that the claims were invalid at the time he infringed?

  9. I’m with Ned Heller. Let us apply the “reasonable onlooker” test to the case of an infringement of a claim that is then caught by late-emerging art. the claim can readily be narrowed, in order to be not invalid, while still reading on to the infringement.

    Why should the blameless patent owner get no damages for infringing acts committed before the amendment? To that reasonable onlooker, it would make no sense.

    What point is the reasonable onlooker not seeing?

  10. Malcom said, “But, as opposed to a patent application, amendments in a reexamination are extremely harmful to a patent owner”

    Not if they turn a broad invalid claim into a narrower valid one.”

    Two points:

    1) Your statement seems to assume the patent claims are invalid under a proper construction by a court. If there were no alternative, such as for example, the court construction reads the claims directly on the prior art, the PO would seek to have his patent reexamined or reissued to preserve validity through narrowing amendments. But this is no justification for 3rd parties to take advantage of BRI to game the system. Just because the Office finds a claim unpatentable under BRI does not and never has meant that that claim is invalid.

    2) What is you position on an infringer who infringes both before and after an amendment? Should is damages be abated?

  11. 6 said, “Claim construction should take place PRIOR to any prior art search by the examiner, because what they do now is more like finding prior art that is close and adapting their claim construction to fit.”

    You’ll find that NAL doesn’t agree with you.”

    I would love to understand what you mean here. Can you elaborate. BTW, I do not know who NAL is, but is she an official of the Office?

    Ned

  12. At times these issues are best understood from real cases. Take In re Morris, the leading case on BRI. Assume this were a reexamination and that there was a companion infringement suit.

    The issues before the Fed. Cir. in Morris were whether the claimed “compliant area being integrally formed as a portion of” the disk drive casing could read on a prior art “sandwich” where a compliant means (foam rubber pad) was bolted onto the casing in a sandwich structure. In the end, the PO lost and the PTO claim construction prevailed because there was “no definition” of “integrally formed as a portion of” and no usage of that term in the description in connection with the drawings. However, the background section talked extensively about the prior art sandwich structure and stated the claimed invention overcame the problems of that art by providing a compliant means “integrally formed as a portion of the casing.”

    No reasonable reader of the patent, let alone a skilled reader, would have construed the term the way the office did, so let us assume for the sake of this argument that a district court had construed the claim to require some alteration to the casing itself as opposed to a sandwich.

    So, the PO had a way out at the office after losing the appeal: amend the claim to limit it to the court construction, which was, for the sake of THIS argument, the only reasonable construction albeit not the BRI.

    What do we have in terms of fairness and equity and advancement of the interests the patent system as a whole? We have accomplished virtually nothing except to potentially strip the PO of six years past damages and award the infringer a windfall. The claim amendment adds nothing to the notice function of the patent, as the prior claim construction by the disctrict court BINDS the PO as a matter of collateral estoppel against other infringers. The PO cannot assert a broader or different construction.

    Paul Morgan talks about “invalid patents” and “jury trials” as justifying reexaminations. What really is happening is more like gaming the system as I describe above and as predicted by Judge Nies in In re Etter. There is real injustice in the reexamination process as actually conducted as opposed to an idealized process we may have envisioned when reexaminations were first proposed.

    But the devil is in the details, is it not?

    As I observed before, in Europe, claims limited post grant do not affect damages so long as the claim was infringed both before and after. Were that the rule of abatement in the US, the injustice of the reexamination systems would itself largely abate — leaving only the harassment and delay issues to deal with.

  13. Professor, we aren’t quite yet on the same wavelength,, but I think we can get there.

    I’m not suggesting that defendant infringers are barred from running their own claim construction theory. Quite the reverse. Rather, I think everybody involved should work to the same rules of claim construction. Examiners apply rules laid down by SCOTUS and the CAFC. Attorneys assess the validity of issued claims according to the same rules, and render opinions on validity to the client. Disputed cases reach trial only when both sides think they are right on claim construction and so genuinely expect to prevail at trial with their own claim construction theory.

    I think that the amount of litigation goes up in proportion to the uncertainty about how the court will construe the claim. I think the “squeeze arguments” invariably used in English patent litigation bring all but a very few cases to compromise before trial. I think the squueze works best when it is symmetrical, as between infringement and validity (which means deciding both issues at the same standard of proof).

    Oh and BTW, don’t you think that, in any society concerned to nurture the idea of litigation as last resort, and to preserve the precious resource of competent courts, and respect for the rule of law, the loser at trial should pay the legal costs of the winner.

  14. “Under the circumstances you indicated, absolutely.”

    It is crystal clear that you are an examiner.

  15. “Patent holder disagrees, maybe states such disagreement on the record, and the patent issues. Should patentee be held to the examiner’s construction?”

    Under the circumstances you indicated, absolutely.

  16. “Why not just have everybody striving to construe the claim with a singular, consistent, unambiguous meaning. Then, let squeeze arguments do the rest. Is that singular meaning i) clear of the prior art and at the same time ii) wide enough to catch the infringer? If Yes, patentee wins. Any other result and well, sorry, the patentee doesn’t succeed in nailing that particular infringer”

    Max, maybe I misunderstand your point, but I’ll use it as a chance to play law professor.

    If I’m in court as an accused infringer of a patent, I probably didn’t have any say in the proceedings leading to issuance of the patent. I might not want to construe the claims with the singular meaning of the examiner and applicant. Point is, why should I be bound by the PTO’s claim construction if I had no chance to influence that construction? Same with the patent holder. Claim says “network address”. Examiner allows the claim, with a remark that “network address” means only a URL. Patent holder disagrees, maybe states such disagreement on the record, and the patent issues. Should patentee be held to the examiner’s construction?

    Even if the PTO putatively applies the exact same rules of construction that the courts apply, a claim should be subject to possible different construction during litigation, because examination is (usually) ex parte — one party and a judge/examiner.

    Patents are a strange breed, kind of like allowing a private party to write their own law governing the public. An accused infringer has a legitimate secondary role as a check on the patent. If a patent is poorly drafted, if there are latent flaws in the claims that might unfairly affect other accused infringers, it’s efficient to let that accused infringer cut down that patent if a “singular meaning” used during prosecution is wrong or miseading to the public. Suppose applicant and examiner agreed on a meaning of a term that was not supported by the spec and which was contrary to ordinary use of that term in the relevant technical field. Since the claim functions as a notice to the general public, it seems fair to let an accused infringer in effect “police” the claim by shifting the meaning of that term to the meaning it would have to those who might be expected to read the claim (e.g., engineers) and make decisions on possibly infringing activities.

  17. Good suggestions good suggestions. But what of the wording of a hypothetical rejection? Seems to me like some claims somewhere in the world are fairly definite in what they define. Are you guys sure you back a certain approach?

  18. “…what do you do with a claim like claim 1 of 12204929 as an examiner?”

    If I were an examiner, which I’m not, I would probably examine it.

    I agree with Hagbard, a rejection under 112, 2nd may be a good place to start.

    Then explain to the applicant what construction you have given it, and apply the art as appropriate.

  19. Dear PatentlyO, what do you do with a claim like claim 1 of 12204929 as an examiner?

    This should be publicly accessible but I will not comment upon it.

  20. Smashmouth, NotSoObvious:

    If I am not mistaken, KSR was focused on solving a specific problem of TSM: how to reject an obvious combination of elements when the Examiner can’t find literal teachings to combine.

    At the same time, SCOTUS also required that a rejection be accompanied by a rational motivation to combine: “…a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was independently known in the prior art”. We can discuss what this sentence means, but certainly not predictable = obvious.

    NotSoObvious, I honestly don’t understand: when you write “joke” and “further from the truth” are you being sarcastic and saying that the in some cases the USPTO ignores SCOTUS, or are you disagreeing with my interpretation of KSR?

  21. Yes, the two present reexamination systems have their disadvantages, but having no other way to test claim validity (even solely with indisputedly prior patents or publications) than by a costly trial before a jury with no technical education or claim reading experience is not a good or effective alternative.
    Also, it is unrealistic to think the Supreme Court would even want to invalidate those statutes and increase litigation.

  22. Readers, I don’t understand the merit of this idea (BRI) that the system can tolerate a Presumption of Validity because the PTO imbues the claim with a wider scope than does the District Court. It’s a comfort blanket that is a delusion. It does no good but it does do a lot of harm, in obfuscating the jurisprudence. Outcome: everybody shouting at each other, even in this humble blog, ranting that nobody knows how to construe the claim “properly”.

    Why not just have everybody striving to construe the claim with a singular, consistent, unambiguous meaning. Then, let squeeze arguments do the rest. Is that singular meaning i) clear of the prior art and at the same time ii) wide enough to catch the infringer? If Yes, patentee wins. Any other result and well, sorry, the patentee doesn’t succeed in nailing that particular infringer.

    That’s how it is, in patent owner friendly England. Why not also in the USA?

  23. “this is a game to 6, a game to see if his bull–it and subterfuge can CHEAT someone out of their just reward. ”

    Alright Noise, I’ll let you go ahead and tell me, how does one get particles into a hardened gel like the one in my reference without making a mixture at the time of deposition? And even if it is physically possible (which I doubt) would it not be implicit to one of ordinary skill that this is the operation performed?

    Well, the attorney thinks so. And his client hasn’t argued against it either. If we’re all in agreement, then why do you take issue with it?

    Could it be because you have no knowledge of this sort of technical operation? O, that’s right, that’s why!

    “then why not allow???”

    Because I don’t have a signature you du mb &$^&.

    “Hey guys, we don’t have enough examiners to handle all the applications being filed, you know what we really need? A MASSIVE PURGE OF EXISTING EXAMINERS!”

    lol

    “Claim construction should take place PRIOR to any prior art search by the examiner, because what they do now is more like finding prior art that is close and adapting their claim construction to fit.”

    You’ll find that NAL doesn’t agree with you.

  24. “The examiner would then, like a judge, make his call on the right construction.”

    Would the PO have a right to appeal/petition at this point?

  25. “But, as opposed to a patent application, amendments in a reexamination are extremely harmful to a patent owner”

    Not if they turn a broad invalid claim into a narrower valid one.

  26. Yes, Mal, I meant a colloid. Good catch. An even better catch would have been that suspensions and colloids are both heteregenous, while solutions are homogeneous. Mea culpa.

  27. Malcolm; BRI is allowed in reexaminations b/c it is thought “better” to clarify claims if they could be construed to read on the prior art. But, as opposed to a patent application, amendments in a reexamination are extremely harmful to a patent owner and highly beneficial to infringer who infringes before and after an amendment. Past damages may be lost. The cavalier attitude displayed by the Fed. Cir. in In re Etter about the damage being done to the PO is remarkable. But it was noted in a powerful dissent by Nies.

    Hopefully, one day, these issues will make their way to the Supreme Court.

    Did you know, Malcolm, that in Europe damages are not abated by claim limitations added in limitation actions? Were that the rule in the US, I would be less hostile to BRI.

  28. Curious, part of the filing by the requestor could be their view of claim construction. It would have to be supported, chapter and verse, by reference to the specification, file wrapper or literature, as in the courts. The PO should have an opportunity to respond before the request is granted. The examiner would then, like a judge, make his call on the right construction. He could then form his judgment on the the prior art advanced by the requestor and make a call on the SNQ. The first OA should then be pro-forma, but the outcome, save for obviousness, would already be determined just as claim construction battles in court largely determine the outcome in litigation.

    If there is an appeal, it will be more about claim construction than the prior art, just as in court cases. However, the PO may choose to amend and suffer the consequences of loss of rights.

    The latter point still illustrates why it is vastly preferable to have reexaminations done early in the form of oppositions.

  29. “Do we need another trainwreck episode to show that 6 is a liability to the Office and is a prime example that the reject-reject-reject indoctrination can only by overcome by a massive purge of the Office staff?”

    A massive purge?

    LOL.

  30. Do we need another trainwreck episode to show that 6 is a liability to the Office and is a prime example that the reject-reject-reject indoctrination can only by overcome by a massive purge of the Office staff?

    “6 supposes…doesn’t really know if this is true or not.” = this is a game to 6, a game to see if his bull–it and subterfuge can CHEAT someone out of their just reward. This is no better than stealing. 6, this is even worse than the use of the N word.

    “Would call this allowable” = then why not allow???

    “So frakin good at making rejections” = rejections should be made when they are proper, not when they are just so frakin good at being made (read that as good at flinging bull—it.) It is NOT your job to creatively steal the rights from inventors. That you find such perverse pleasure in doing so speaks both to the insanity of the indoctrination and to the level that you have bought into that indoctrination.

  31. “Claim construction should take place PRIOR to any prior art search by the examiner”

    You mean having a complicated two-step examination process?

    This complicated process would have to be made for each claim including dependent claims and every time a claim is amended?

    And if the applicant disagrees with the claim construction he would appeal/petition before examination?

  32. Paul, you seem to recognize part of the problem, delay, but at the same time you fail to recognize the other components to the problem: the difference in claim construction, the serial nature of filings, the anonymous nature of the requestor in ex parte reexaminations that allow repeated filings by the same party without any consequences or downsides in terms of estoppel. Perhaps we should consider banning ex parte reexaminations by third parties.

    But we also need to fix the claim construction issue. That problem has been noted here at Patently-O in other threads. But BRI is clearly inappropriate for issued patents. What we need is more like a Markman hearing in courts, with the Fed. Cir. being the ultimate arbiter and with the legal standard being that of the courts. Claim construction should take place PRIOR to any prior art search by the examiner, because what they do now is more like finding prior art that is close and adapting their claim construction to fit. We have case law that states that it is error for the PTO to adopt a prior claim construction by the court. This is clearly wrong in principle; but it can now only be overturned by statute or by an en banc Fed. Cir.

  33. Yes, the PTO’s inexcusable delays of reexaminations might occasionally also delay some patent licensing. But in most cases anyone seriously considering paying real money for a patent license [as opposing to just blowing off the patent owner] has already done a thorough patentability search on the patent, and can reasonably guess if a reexam would be a ‘slam dunk’ forcing claim rejections or claim narrowing that would avoid infringement, or, on the other hand, risk strengthening the patent, and also risk treble damages for not taking a license and infringing. Thus I have good reason to believe that most genuine licensing for value between reasonable parties, or cross-licensing, does NOT result in a reexam. [Excluding reexaminations filed AFTER taking a license in order to escape from "running-royalties," which licenses are becoming much less common, partly for that reason.] But the availability of a reexamination can makes a difference between negotiating reasonably for the actual value of the subject invention, as opposed to “licensing” invalid patents merely as a payoff alternative to expensive litigation, which is not in the public interest of the patent system.
    Also, if the prospective licensee is unrealistically arguing ineffective prior art to avoid taking a license, the patent owner itself can file a reexamination to get the patent claims re-allowed over that art and greatly strengthen its bargaining position. That used to be quite fast, and could easily be again.

  34. “then you can deal with it then.”

    No broje I have to deal with that now. But yes, I think a 112 might be in order. A 2nd. Two separate interpretations are possible, one in view of the spec, and one in view of the original claims. So he can pick.

    And I’ll tell him that if he picks the later then he can go ahead and explain to me how the claim is enabled since it seems technically impossible to form a real solution out of what he has claimed.

    But thanks for the help you guys.

    “But if the reference shows a nonhomogeneous mixture,”

    This time on the adventures of 6:

    The reference shows some dust. A special kind of dust. The dust also having a special coating. And it also shows this dust inside of a certain structure. 6 needs to get that dust inside the same kind of structure in another reference. The structures in both references are made by ploppin’ down and hardening a gel/liquid. Rather, more like a liquid that will turn into a gel if you don’t watch your step. After it gels it gets solid.

    Now, 6 supposes that the only way for the guy in the first reference to get the dust into the gel was by making a mixture. And then says that it was implicit to an ordinary artisan that such is the case. He doesn’t really know if this is true or not, but the attorney buys it, the spe buys it, and conference guy buys it.

    6 personally don’t even like this rejection, and would call this allowable. This is based on this concern and another. However, 6 is so frakin good at making rejections he convinced his spe that it was a reasonable rejection even while trying not to. The conference guy even had some concerns. 6 agreed with two of his concerns, and thus thinks that the app is allowable. None the less, the conference guy is still persuaded by 6′s reasoning of record and thinks it is a pretty good rejection.

    So the concern at issue is that dust inside of a gel/liquid isn’t really a solution.

    Next time on the adventures of 6:

    A sub-concern pops up! What happens to the coating on the dust?

    The plot thickens!

    Also in the next episode is an answer to that question weighing on all our minds: Why is 6 even working on this application in the first place?

    Don’t miss our all new episode! Same time, same place, next week!

  35. Paul–

    I live in the world of prosecution, not litigation.

    Has the availability of contingent fee arrangements in patent cases dropped in proportion to the increasing uncertainty in patent litigation resulting from, among other things, the availability of re-examination?

    Or have the straight contingent-fee arrangements been modified in any consistent way?

  36. “I do not see where the unpredictable results requirement came from. In the patent world, “obvious” should not be a synonym for “predictable”

    Patents are not rewards for super-nifty ideas.”

    They are also not for lame-o ideas like taking an old device and “updating it” with some old technology that does exactly what you expect it would do. If the PTO had applied its own rules in this regard with vigor back in the early 90s, it likely would not be in the sad shape it’s in now.

    But then some of those “genius” investors wouldn’t have won the patent lottery and we’d all be so much worse off because of it.

  37. Erez Gur,

    “I understood that in KSR, SCOTUS said that solving a known problem with known elements might be obvious, which is still a bit far from predictable=obvious.”

    To the extent predictable≠obvious, I agree. But I’m not so sure it’s such a great leap from KSR to a regime where courts conflate predictability and obviousness, especially in crowded arts, and with a broad interpretation of motivation to combine.

    I should add I’m not necessarily advocating this view, I just think that’s the way KSR is being interpreted. As to the poster criticizing the use of dicta from a SCOTUS opinion, whether you like it or not, intermediate appellate courts are forced to do this all the time. SCOTUS only issues something like 75 or 80 full opinions each term (actual counts–Oct. 2007 Term: 73; Oct. 2008 Term: 83). As to cases interpreting Title 35 of the U.S. Code, way fewer. The lower courts have to read the tea leaves as best they can. And it’s far from a fool-proof process, I’ll admit. Just last term, the Fed. Cir. was reversed in a case involving Cohill remands where at least one justice pointed out that a straight reading of the remand statute supported the Fed. Cir. interpretation, and that only a chain of relatively convoluted SCOTUS case law led the majority to conclude otherwise.

  38. Oh, absolutely Mr Heller. Where there’s a will, there’s a way. Tight time limits, strict limits to discovery, number of expert witnesses, competition from the cheaper and faster (?1?) civil law jurisdictions has turned litigation in England into good value for money, delivered lightning fast. It is still inherently rather more expensive than litigating (?) at the EPO, but you do get much more “quality” and satisfaction, for that significant extra cost.

  39. MaxDrei, I think statutory time limits are on the table for oppositions rather than the more amorphous standards given reexaminations. I think this is entirely doable — we have similar statutory time limits for ITC proceedings and they work.

    As to expenses in English courts, I have no personal knowledge, but in the US, most of the expenses are caused by discovery, law and motion and the like. Litigation has no time limits, and the work of the lawyers always seems to expand to fill the unlimited time alloted. Something similar may be happening in England.

  40. “It might be a collage, like milk…” < “ANY new problem/purpose is obvious under KSR if enough components covered in prior art can be put together like a puzzle” alas, yes, but this is what happens when your future and prospects are placed in the hands of poly sci grads.

  41. “obvious to try in express violation of Congress explicit mandate in 103(a)”

    Obvious to try is about what a PHOSITA could/would do and not about what the inventor actually did. If the inventor does what anyone else would have done, that doesn’t make his invention non-obvious.

  42. Erez Gur,

    motivation to combine is a joke. The fact that a patent is desired indicates by itself a motivation to combine. ANY design need or market pressure is a motivation to combine. In other words, only those inventions that have no logical reason to be pursued lack the “motivation to combine” requirement. Often the “desire to be better” in just those types of words is motivation enough for the legion of examiners.

    Additionally your “a new problem/purpose that is solved/achieved using old elements is not obvious under KSR, no matter how predictable” could not be farther from the truth. Simply put, if the old elements act “as predicted”, ANY new problem/purpose is obvious under KSR if enough components covered in prior art can be put together like a puzzle.

  43. 6,

    If your reference really does show a homogeneous mixture, just 112 the claims for reciting solution when the spec teaches suspension, state that you are examining the claims on the presumption that the applicant meant to recite suspension, or perhaps homogeneous mixture, and then 102 them.

    Solutions and suspensions are both types of homogeneous mixtures. But dropping dust in water would most likely result in a non-homogeneous mixture, which would be neither a solution nor a suspension. It might be a collage, like milk, that appears homogenoues to the naked eye. But that is not a homogeneous mixture because it is not uniform throughout.

    In response to the 112, the applicant might come back with the argument that the claims as originally filed are part of the the specification, so the disclosure for solution is there. If that is what they want to do, then you can deal with it then. Since solutions and suspensions are both homogeneous mixture you might just 103 it at that point and take your count. That seems to be the normal patent office procedure these days. But if the reference shows a nonhomogeneous mixture, and the difference is significant, maybe you need to search some more.

  44. Mr Heller, fine but I’m just a teenzie bit sceptical about your:

    “The opposition is done within a year or two.”

    If the civil law EPO can’t do that, with minimal witness evidence and no discovery or cross-examination, then I wonder how the USPTO is going to do it fairly, under common law rules of evidence, and in “a year or two”.

    But I’m all for it, if it’s do-able. After all, it is the way validity is tried in England, since time immemorial. The English Patents Court does the best scrutiny of validity in all Europe, all finished within around 15 months and with seldom any point in appealing the judgement.

    It is just that revoking a patent through the English court is a teenzie bit expensive.

  45. Smashmouth,

    I understood that in KSR, SCOTUS said that solving a known problem with known elements might be obvious, which is still a bit far from predictable=obvious.

    Additionally, you still need motivation to combine.

    Additionally, a new problem/purpose that is solved/achieved using old elements is not obvious under KSR, no matter how predictable.

  46. Paul Morgan, you say the abuses have not occurred, but at the same time you acknowledge the huge delays. You are aware that reexaminations essentially stop licensing programs, but this is okay in your view, because, after all, licensing programs are conducted by “trolls,” and, by definition, trolls license invalid patents.

    I see your “reasoning.”

    MaxDrei, et al., I think we should adopt an European-style opposition system and do away with reexaminations. One of beauties of oppositions, at least as planned in the US, is the compactness of time to begin and end one. Everyone has to file within a short time after grant. The opposition is done within a year or two. Patents are then enforceable without harassment.

    In contrast, reexaminations in the US are not compact, many different reexaminations can be filed, even by the same party, strung out over time, etc. The delays are noted even by Paul Morgan. They are expensive, each one. They ignore court claim construction and adopt BRI designed to force amendments. Amendments kill damages.

    Reexaminations are subject to abuse and they are being abused. Only the most cynical would not see this.

  47. “I do not see where the unpredictable results requirement came from. In the patent world, ‘obvious’ should not be a synonym for ‘predictable’[.]”

    I’m afraid it came from SCOTUS:
    “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Admittedly, what SCOTUS actually said was that predictability implies a high probability of obviousness, not that the two are strictly synonymous. I think elsewhere in the opinion they go on to explain that this inference is stronger when there are a finite number of known, predictable alternatives. In fact, I just found the quote:

    “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”

    Id. at 421.

  48. We have now had reexaminations for many years now. The alleged abuses have not occured. The problem, as illustrated by this case, is almost entirely the PTO’s reexamination delays, in violation of the statute, which could be easily fixed by better PTO management, given the small number of pending reexaminations.
    Almost all reexaminations are on prior art that was never considered in the brief initial prior art search by the original examiner.
    The vast majority are ex parte reexaminations in which an adverse requestor only gets to file one single initial document, while the entire proceeding is then controlled solely by the patent owner and the Office, with no one else allowed to file anything.
    The strongest opponents of reexamination are naturally those profiting from the large shake-down settlements that can be obtained on clearly invalid patents by the many defendants willing to pay large amounts of money to avoid millions of dollars in legal costs and discovery for an entire trial and appeal on that and every other possible issue in patent litigation. {In contrast, contingent-fee plaintiff attorneys for troll companies can initiate or even conduct patent litigation on invalid patents for far less.}

  49. “If you bothered to read my comment you might understand why this is a less than wonderful suggestion.”

    Translation: “I don’t want to look like an idi0t in person, but I’m more than happy to do so anonymously via the internets.”

  50. 6 – you need to define what the particles are. in your hypo, the particles were “dust” which is a non-descript collection of soluble and insoluble stuff. so in your hypo, the soluble components of your dust particles would dissolve and form a solution, while the insolubles would not dissolve. In fact, my guess is the insoluble part would not be “suspended” in the water at all, they would sink to the bottom. this is neither a solution or suspension. It is just to immiscible compounds.

    Tell you what, call the applicant and talk to him/her about it rather then “invent” some definition and frustrate the both of you.

  51. Erez, isn’t the muddle over “obvious” and “predictable” a consequence of applying chemical jurisprudence to physics and engineering cases? Or else a consequence of the hegemony of The Problem and Solution Approach with its toggling between technical “features” in the claim and technical “effects” that are decisive for the obviousnes debate?

    At least at the EPO (and I suspect elsewhere) unexpected results are a constant presence in debating non-obviousness of chemical stuff, but rare in non-chemical fields.

  52. I do not see where the unpredictable results requirement came from. In the patent world, “obvious” should not be a synonym for “predictable”

    Patents are not rewards for super-nifty ideas. If they were, the USPTO could simply give out cool “inventor pins” or propeller beanies.

    Patents are artificial constructs that convert ideas into tradeable products with a market value and provide an insurance policy for entrepreneurs and investors to take risks. If you refuse to give an idea a value or to give insurance, you can’t expect to promote innovation.

    In this vein, maybe the USPTO should allow anyone to be an Examiner, but require that SPEs and above be either Inventors or experienced Patent Agent/Attorneys.

  53. Ned, Max

    I don’t see how post-grant opposition can be abused at an unacceptable level.

    The fact is that in the EP, post-grant opposition has been a success that gives predictable results, provides clear guidance on how to draft patent applications and claims, and provides clear guidance as to what is infringing activity and what is not.

  54. Examiner 7 abused some electrons to write: “touch screens are actually very old. Like 60′s or 70′s. They weren’t very good though.”

    Maybe, but by 1983 they were good.

    From link to hp.com

    “HP-150 touchscreen personal computer with HP 9121 dual drives, 1983

    The HP-150 personal computer featured a touch-sensitive screen that allowed users to activate a feature by touching the screen. The PC had an MS-DOS operating system and an Intel 8088 microprocessor. The HP-150 was introduced with twin 3-1/2 inch HP 9121 disc drives—the first commercially available 3-1/2 inch floppy-disk drives in the United States. These drives were less expensive, more reliable and held the same amount of information as the 5-1/4 inch IBM-compatible drives.”

    From link to blinkenlights.com: “The HP-150 had an HP-IB (IEEE-488) interface and two RS232 serial ports.”

    The HP-IB was a good parallel interface with full handshaking. It was used mostly to control test and measurement equipment. It could have easily been used to control medical equipment.

    Plato IV terminals were even earlier but I don’t know if they had interface ports.

  55. “Give me a big enough fulcrum and I can move the world.”

    Good luck with that huge fulcrum and that tiny lever.

    We had a trainee patent attorney once, who was a mechanical engineering major. Didn’t even know what a fulcrum was. It fair boggles the mind.

  56. Mr Heller, I agree that a post-issue opposition system is open to abuse. But, at least with opposition at the EPO, I think the competition for the litigation business in Europe, between the litigation communities of Germany, England and The Netherlands, keeps the abuses under control. I for one am apprehensive about the consequences of removing this “survival of the fittest” environment (by setting up a pan-European patent litigation system).

    I suppose you could call it “forum shopping”. But that’s not per se bad, is it? Specially when it’s international forum shopping for the best legal forum. Frankly, I think it has brought huge benefits, to all those who are obliged to initiate patent litigation in Europe. England is quicker and cheaper than it used to be, and there’s more legal certainty in Germany.

  57. Malcom, while reexamination and oppositions are essentially the same legally, they are materially different when one considers when they occur. Litigation defendants always try to get validity back into the patent office where the claim construction standards and lack of a presumption of validity biases the likely outcome heavily in their favor — this and the fact that it is the government paying the litigation bill while the patent owner has to pay his own attorneys a literal fortune in defense of his patent.

    Imagine just how unfair this really is. Consider a judge who hires an expert patent lawyer as a special master to a make recommendation on validity. Imagine further that this expert can ignore the court’s claim construction and can adopt a claim construction fully intended to read on the prior art — he becomes an advocate for invalidity rather than a neutral party. Further imagine this “advocate” is paid by the court.

    Now add to this, that the expert’s opinions on validity are presumptively correct and binding and can only be overturned for clear error?

    You would say such a system is nuts. But that is what reexamination is. And you think my talk is crazy.

    And just where in this hypothetical did the patent owner’s right to jury trial go? It vanished into thin air, never to be heard from again.

    Oppositions, as envisioned by the AIPLA at the time, were intended to substitute for reexaminations — to allow third parties to bring art to the attention of the patent office; but without the opportunity for such oppositions to materially interfere with patent rights as do reexaminations. If a claim is amended (as a result of the broad construction given the claim in reexamination), real and severe damage is done to the patent owner in terms of loss of damages and in terms of the potential for intervening rights.

    Judge Nies saw all this happening in her dissent in In re Etter. She was right on in her prediction.

  58. “A primary familiar with the art ”

    Is a primary/spe from 1600 familiar with my art? No. He is not. I’m nowhere close to 1600.

    Even talking to you newbies hurts my head.

  59. “If you bothered to read my comment you might understand why this is a less than wonderful suggestion.”

    I did read your comment. A primary familiar with the art would be able to advise you as to how strictly to interpret “solution” in your situation.

  60. “There is nothing unpredictable about a microwave heating food.”

    Except that this microwave has a TOUCH SCREEN INTERFACE!!!!

  61. “Other countries recognize the “resource” problem and provide for oppositions that take place immediately upon grant. But after that, patents should be respected”

    You realize this is basically a semantic difference. Opposition, re-examination, whatever. All it means is that after the office has examined the patent, someone else has the right to ask the office to look again. The patentee’s constitutional rights are not being affected.

    But you know who really gets screwed by US re-exam laws? The alleged infringer who loses his rights to challenge the patentee in court if the PTO does a crappy job in re-examination, which happens with the degree of frequency we’ve become accustomed to.

    “The system is being gamed to the Nth degree today.”

    We agree on that much. It’s a game played by investors and corporations, using lawyers and paper, and paid for by increased prices on goods. What else is new?

    “The situation is far worse, IMHO, that the forum shopping that occurred prior to the creating of the Federal Circuit.”

    That’s crazy talk.

  62. MaxDrei: Inter partes reexaminations do more than just substitute a patent examiner for a district court judge in who decides an issue; they also operate on a completely different claim construction standard and take on an average about a decade to complete. However idealistic the concept may be on paper, in point of fact, it is abusive both in the claim construction standard and in the delay. The claim construction standard in particular is designed to reject claims that a court would sustain. The result is amendment that have dramatic consequences in terms of loss of damages and intervening rights.

    Look up Nies’s dissent in In re Etter. The system is being gamed to the Nth degree today. The situation is far worse, IMHO, that the forum shopping that occurred prior to the creating of the Federal Circuit.

  63. Mooney: “Gosh, Ned, you make it sound as if the PTO tends to really examine these things carefully the first time around, without ever making any serious mistakes. As we know, the opposite is quite often true.

    I’m all for speeding up the re-examination process. I’m also all for making that process more rigorous and easier to trigger than it is now.”

    Nice. Patent owners are effectively denied constitutional and statutory rights because the patent office is not perfect? Other countries recognize the “resource” problem and provide for oppositions that take place immediately upon grant. But after that, patents should be respected and patent owners should have the right to have validity decided in the courts and have disputed facts tried to a jury.

    I was on the original AIPLA committee that recommended oppositions. The entire purpose for oppositions was to remedy the resource problem and to dispense with reexaminations which even in the mid 90s were being abused. But, even then we were concerned with how big companies could abuse the system by engaging in expensive oppositions with respect to virtually every patent granted in its field. We had examples from Europe.

    We really need to critically think on these issues one more time. I believe reexaminations and the proposed opposition procedure currently before Congress, while having laudatory goals, are being abused and will be abused to the detriment of the patent system as a whole.

  64. “There is nothing unpredictable about a microwave heating food.”

    This is a true statement, but nontheless irrelevant. I expect that you know, that just because something may be _predictable_ to those with the necessary knowledge (be it knowledge of a mechanical, electrical, chemical, biological, or yet uncategorizable nature) does not mean that the (first or otherwise) person to acheive such results was capable of predicting them, and whom therefore might find the results _unexpected_.

    Besides, the guy didn’t invent the concept of the pacemaker (though the description of prior external pacemakers sound closer to torture machines than medical devices), he unexpectedly created a pacemaker that was implantable, when trying to create a device that monitored, rather than regulated, heartbeats.

  65. “There is nothing unpredictable about a microwave heating food.”

    Doesn’t this depend on the level of abstraction? For example, some older versions of microwave ovens heated food less uniformly (because of difficulties in achieving a uniform spatial arrangement/density of nodal regions in the radiation field), and others had problems of radiation leakage. Although I don’t claim to be an expert in this art, my guess is there has been research into improvements in these specific areas, and patentable improvements almost certainly resulted. And I doubt that those specific improvements were nearly as predictable as you suggest. Even though the general principles behind microwave ovens were well-understood decades earlier.

  66. “How about – consult with a primary examiner in TC 1600 or 1700, perhaps one with responsibility for Class 516 (Colloidal Systems), rather than an internet blog.”

    If you bothered to read my comment you might understand why this is a less than wonderful suggestion.

  67. Why exempt biology?

    Just because we mere humans do not understand everything going on (yet), does not mean that EVERYTHING is not predictable.

    Give me a big enough fulcrum and I can move the world.

  68. “2 seconds on google suggests otherwise. First (though not only) hit for ‘accidental invention’ is a top 10 list, including the microwave (electronic), the slinky (mechanical), and the pacemaker (electronic).”

    Pacemaker, perhaps, because it involves biology. The microwave and slinky follow known laws of physics. There is nothing unpredictable about a microwave heating food.

  69. “Everyday nonsense I get to put up with. What to do, what to do?”

    How about – consult with a primary examiner in TC 1600 or 1700, perhaps one with responsibility for Class 516 (Colloidal Systems), rather than an internet blog.

    Or do you cite Patently-O on your Search Notes?

  70. …and (seconding MM) I’m all for validity to be tested inter Partes. I still think that the PTO has no chance of reaching a well-informed decision on validity, at a point in time when it has heard only one side of the story. The Presumption of Validity is built on sand.

  71. “it is my view that abuse abounds in the whole concept and practice of reexamination as it essentially strips patent owners of critical rights: the right to a jury trial on factual issues, the right of having validity determined by an article III court, and the right to a presumption of validity; and it provides instead a claim construction standard appropriate only for patent applications and not for issued patents.”

    Gosh, Ned, you make it sound as if the PTO tends to really examine these things carefully the first time around, without ever making any serious mistakes. As we know, the opposite is quite often true.

    I’m all for speeding up the re-examination process. I’m also all for making that process more rigorous and easier to trigger than it is now.

  72. That seemed to me to be what the situation was. Now I’m confronted with the situation where applicant’s own specification doesn’t technically describe making a “solution”, but rather merely a “suspension” but the claim calls for a “solution”. My references of course combine to make a “suspension” as well since the ingredients don’t dissolve, like in applicant’s spec. Thus there is the issue of not meeting the claim, but having the references describe making exactly what he described his invention to be.

    The issue probably is that in my art it is not outside the realm of possibility that we take a more relaxed view of what one could call a “solution”, and that the applicant may very well be using the term thus.

    Everyday nonsense I get to put up with. What to do, what to do?

  73. Wow!!!! that Dyk actually proposed holding up a final injunction for potentially years to consider the final results of a reexamination is beyond the pale. What would his final order say? “Claims xyz have been finally determined after appeal to be “not invalid” and infringed, but in a reexamination conducted in the patent office with no presumption of validity and with a broadest reasonable construction standard that resulted in a construction different from that of this court, claims xyz have been found unpatentable. I therefore decide to not grant a permanent injunction.” — and leave the patent owner with no remedy whatsoever. What?

    What is he to do about the different claim construction? What would he do if the claims were narrowed? Would he toss out his own claim construction and order a new trial on validity and infringement? What kind of justice is this?

    Judge Newman says she supports reexamination, but goes on to suggest that it can be abused by delaying justice. However, it is my view that abuse abounds in the whole concept and practice of reexamination as it essentially strips patent owners of critical rights: the right to a jury trial on factual issues, the right of having validity determined by an article III court, and the right to a presumption of validity; and it provides instead a claim construction standard appropriate only for patent applications and not for issued patents. As Judge Nies said in dissent in In re Etter, the reexamination scheme architected by Federal Circuit is prone to abuse as accused defendants will naturally seek to delay trials and the presumption of validity; and seek the shelter of patent’s office’s abusive broadest reasonable claim construction standard. She said that in 1985, but what she predicted is now fact.

  74. “No electrical or mechanical invention provides unexpected results.”

    2 seconds on google suggests otherwise. First (though not only) hit for ‘accidental invention’ is a top 10 list, including the microwave (electronic), the slinky (mechanical), and the pacemaker (electronic).

    It’s not exactly difficult to search these things before speaking.

    “That must have seemed like magic back in 1991, before anyone had even heard of a touch-screen.”

    While (probably) not actually enabled, Star Trek The Next Generation was totally sporting touchscreen displays in medical devices back in ’87. Yes, I do recognize the sarcasm, just felt like throwing that out there.

  75. “The jury held that Baxter’s patents covering a hemodialysis machine with a touch-screen interface were invalid as obvious.”

    No kidding? Wow. Because that sounds like an incredible invention. It’s frankly unbelievable that anyone could have contemplated using a touch-screen interface with a machine before 1991, particularly a medical device. Truly shocking. Especially when one considers all the unexpected results that flow from that combination. Like, you don’t really need a keyboard or a bunch of buttons. You can just touch the screen. That must have seemed like magic back in 1991, before anyone had even heard of a touch-screen.

  76. 6

    Unless at least some of the particles actually dissolved, you don’t have a “solution” but at best a “suspension.” Hope that helps (my undergraduate degree was in chemistry).

  77. OT: Quick question for a chemical guy out there.

    If I take a handful of, for instance, dust off of my tabletop (I saved up a whole handful) and put it in a tub of water do I get a “solution”? Or is the resulting mixture not a “solution” since none of the particles probably dissolved into the water?

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