Federal Circuit: Is a Human An Animal? Written Description; Enablement; and Inventorship

Martek Biosciences v. Nutrinova and Lonza (Fed. Cir. 2009)

[Read part I of the discussion of Martek]

Sitting in as an expanded five-member panel, the Court of Appeals for the Federal Circuit has largely affirmed a jury verdict finding Martek’s patents valid and infringed. The case involves issues of written description, enablement, sufficiency of infringement evidence, corroboration of prior inventorship arguments, and claim construction of the word “animal.” The five members agreed as to all issues except for claim construction. On that claim construction issue, the majority opinion of Judges Newman, Gajarsa, and Moore held that a human is an animal. Judges Lourie and Rader argued in dissent that the patentee’s use of animal suggested that it did not include humans.

Is a human an animal: The four patents in suit cover various aspects of making and using the omega-3 fatty acids. Nutrinova sells allegedly infringing products for human consumption. One of the patents claims a method for achieving high concentrations of the omega-3 acids in an “animal,” and the parties contested whether an a human is an animal. The majority based its decision on the maxim that the patentee is free to be its own lexicographer. “When a patentee explicitly defines a claim term in the patent specification, the patentee’s definition controls.” In its specification, Martek appears to plainly define the term animal in the following sentence: “The term ‘animal’ means any organism belonging to the kingdom Animalia.” It is undisputed that humans are classified within the kingdom Animalia – and thus, humans fit within the claims animal limitation. Q.E.D.

According to the court, once a patentee defines a term, extrinsic evidence of that term’s meaning “is simply irrelevant.” On remand, the district court will need to consider whether the patent is infringed under the broader definition.

The dissent does not disagree with the traditional maxim, but argues that the patent is not so clear in its definition:

This case illustrates the unusual situation in which a purported definition of a claim term in the written description is totally negated by the remainder of the text of the patent. Martek’s attempt at lexicography does not conform to the way in which it otherwise describes its invention.

In particular, the dissent points to the fact that the claim in question is “a method of raising an animal” in a way that increases the “content of omega-3 highly unsaturated fatty acids in said animal” and that the field of the invention looks toward “food products derived from such animals.” The specification and claims spell out a variety of animals that could be so-raised: poultry, swine, cattle, shrimp, shellfish, milk producers, and goats. However, the specification only refers to humans when it discusses the benefits of ingesting the milk and meat of those animals.

Written Description: The accused infringers argued that the patentee had added new matter to the claims of one of the patents during prosecution and that the claims are consequently invalid under the traditional written description requirement of 35 U.S.C. § 112. The Federal Circuit disagreed – finding that the jury had sufficient evidence to reject the written description argument. In particular, the ‘594 patent generally claims “a food product.” Although that claim term had been added during prosecution, the Federal Circuit found that it was sufficiently supported by the original disclosure – noting again that “the earlier application need not describe the claimed subject matter in precisely the same terms as found in the claim.” Tech Licensing (Fed. Cir. 2008). Rather, the test is “whether the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.”

Evidence of Infringement: The claims of the ‘281 patent recite a limitation that the claimed microorganisms designed to create the omega-3 fatty acids caused less vessel damage than another other cultural medium (which used more sodium chloride). Martek did not provide results of any physical analysis of the accused infringing product to ensure that it met this limitation. Rather, Martek’s experts discussed the “literature” on the topic and a conceptual analysis of the known effects of a high chlorine concentration. On appeal, the Federal Circuit affirmed that the expert testimony was sufficient for a jury to find infringement – holding that there is no “general rule requiring one who alleges infringement of a claim containing functional limitations to perform actual tests or experiments on the accused product or method. Rather, a “patentee may prove infringement by any method of analysis that is probative of the fact of infringement.” Forest Labs. 239 F.3d 1305 (Fed. Cir. 2001).

Evidence of Prior Inventorship: It is improper to say that ‘prior inventorship’ is a defense to patent infringement. However, an accused infringer can invalidate a patent under 35 U.S.C. § 102(g)(2) by showing clear and convincing evidence that it (1) conceived of the invention before the patentee and (2) either reduced the invention to practice or was diligent in reducing the invention to practice from a time beginning before the patentee’s conception date; and (3) did not abandon, suppress, or conceal the invention. In this case, the defendants had filed a patent application on a similar invention prior to the patentee. However, that application had gone abandoned. The application properly serves as evidence of conception, but – because it was abandoned – does not serve as constructive reduction to practice. Here, the accused infringer’s defense failed because it could not provide other corroborating evidence of reduction to practice or diligence.

Enablement: The claims of the ‘567 patent were found invalid on JMOL due to lack of enablement due to a genus-species issue. Claim 1 broadly discusses growing “euryhaline microorganisms” while the specification only discloses two examples of thraustochytrium and schizochytrium organisms. The defendants’ experts testified that there were at least 10,000 different qualifying species and the district court agreed that two species were insufficient. On appeal, it appears that the patentee gave-up on its claim 1, but the Federal Circuit agreed that the other claims had been improperly invalidated because they included limitations to the specific examples proffered in the specification. Evidence presented indicated that the species of those dependent claims together encompassed “only 22 known species.”

69 thoughts on “Federal Circuit: Is a Human An Animal? Written Description; Enablement; and Inventorship

  1. 6 wrote: ‘As an aside totally unrelated to this thread in specific, we need to get rid of government “entitlements”. Those things are bleeding us dry via SS, medicare, etc. ‘

    Check out one of the diagrams of the US budget. The super-bloated military spending is bleeding us dry faster. Plus which SS and Medicare have dedicated taxes; the military is just funded from borrowing, basically.

  2. “But in times of…”

    Your infatuation with Malcolm is getting the best of you Max,

    It is NOT a matter of cuurent times and the PTO ship going under that precipitates the “training issue”. Bad management including indoctrination of examiners to be anti-patent has been going on for years.

    I am sure if you think about it, you will realize it.

  3. Same issue at the EPO. Width and ambiguity should not be muddled up with each other. I should have thought that more rigorous in house training could quickly deal with that issue, provided the Examiner newbies have a reasonable level of intelligence. After all, the distinction is not hard to grasp, once it is pointed out.

    But in times of “all hands to the pumps”, lest the PTO ship go under, finding the time to do proper in house training is tough for management to organise, no?

  4. “My only concern is with the potential for overzealous application by examiners who don’t understand the difference between breadth and ambiguity.”

    Excellent point

  5. “Perhaps you’d like to add your opinion on the matter Big.”

    Actually, 6, my “correction” was incorrect. You may disregard.

    For what it’s worth, I really don’t have a problem with the principle outlined in Miyazaki. Identifiable ambiguities should be resolved early. My only concern is with the potential for overzealous application by examiners who don’t understand the difference between breadth and ambiguity.

  6. Hmmm, well that’s too bad. It is especially too bad since we have to wait for an appeals body to decide issues.

    And MM, I don’t think that the public schools are bleeding us anywhere near what SS/medicare is.

  7. “However, it was my understanding that “the law” was what the board said it was until the DC/CAFC had its say. Is that not so?”

    Simple – NO. The board makes decisions (not law) and is only a quasi-judicial body. It truly is an adminsitrative body that is evaluating (and sometimes performing) an examination.

    The conflation created by changing the titles from Chief Examiners to Judges has only fed the power hungry USPTO. It’s time to change this misalignment.

  8. Malcolm at 12.45 yesterday:

    “MD “The explicit Definition of “animal” elsewhere in the patent doesn’t explicitly say that the term “animal” definitely includes “human”.”

    That’s funny, MD. “I know the animal kingdom includes humans but my definition didn’t say it *definitely* had to include humans!” C’mon, has patent prosecution sunk that low?”

    The European Patent Convention prohibits patents on methods of surgery or therapy practised on “the human or animal body”. Could be that European practitioners have unconsciously come to see a distinction between “human” and “animal” which they import into other documents before their eyes (and into the assessment of explicit definitions of “animal” in those documents). Malcolm I know you cling to Philips as the only lifebelt in treacherous seas, but I just wonder. Do you have any views on the EPO’s Principle of Synthetical Propensity (see T_0190/99 and others)? It also is a valuable lifebelt, and the one I personally prefer.

  9. 6: “As an aside totally unrelated to this thread in specific, we need to get rid of government “entitlements”. Those things are bleeding us dry via SS, medicare, etc.”

    Rush Limbaugh called and he said that you forgot to mention public schools.

  10. Perhaps you’d like to add your opinion on the matter Big. Does one have a presumption of validity during prosecution?

    I also note that I believe I do recall a case, unrelated to this matter mind you, where the CAFC did state that you don’t have the presumption of validity in prosecution I’m nearly sure. Perhaps someone knows of the case? Perhaps I’m wrong. Perhaps it was only Kubin oral arguments? I don’t remember for the life of me.

    “But it is a PTO fiction that they have different standards of analysis than the courts. Convenient, yes. Consistent with law, no.”

    We’re evaluated on the “substantial evidence” standard, could you remind me on which standard the DC’s are evaluated? Was it also the substantial evidence standard? Or was it clear error? I really can’t remember.

    I know you are referencing 112 specifically instead of just plain ol’ generally speaking, and I also realize that the courts have not made this precedent yet. However, it was my understanding that “the law” was what the board said it was until the DC/CAFC had its say. Is that not so?

    As to your presumption, I’m not buying it.

    As an aside totally unrelated to this thread in specific, we need to get rid of government “entitlements”. Those things are bleeding us dry via SS, medicare, etc.

    “But a strong prosecution should be approached reasonably on both sides, and we all know that right now it is not.”

    Well I do what I can. It’s all we can do.

  11. Good info, 6, and thanks.

    But it is a PTO fiction that they have different standards of analysis than the courts. Convenient, yes. Consistent with law, no.

    I do hope someone appeals a Miyazaki-style rejection to the CAFC. The PTO will lose, in my opinion. The “insolubly ambiguous” and “in light of the specification from the perspective of one of ordinary skill in the art” are not related to the attachment of presumptions.

    And as a subtle point, you do have a form of presumption in prosecution, at least according to 35 USC. You are “entitled to a patent…unless”. The burden is on the PTO to produce a prima facie case, and if they don’t, the applicant wins without doing anything more. It is not nearly the strength of the presumption of validity in a litigation, but that is where prosecution is supposed to start. The fact that the PTO continues to attempt to turn the “presumption of patentabilty” (loosely termed) into a “strong presumption of rejectability” is another issue.

    But don’t get me wrong. I’d rather have strong prosecutions followed by strong validity presumptions. But a strong prosecution should be approached reasonably on both sides, and we all know that right now it is not.

  12. “You would be able to, but according to the courts the presumption o validity rules that out. You don’t have a presumption in prosecution[, according to the PTO].”

    Just a small correction.

  13. “Can you get an invalidity verdict based on presenting a plausible alternative interpretation? Apparently, you should be able to as far as the PTO is concerned.”

    You would be able to, but according to the courts the presumption o validity rules that out. You don’t have a presumption in prosecution.

  14. I see we have some fans of Miyazaki up in here, I hope it catches on. I’ve been doing my best to spread it around the office and get it into widespread use so one of you guys will appeal it to the CAFC and we can get it firmly entrenched in stone.

    In-house, I personally do not issue such rejections although concievably some of the claims in my art could read on 10000 embodiments as well. In fact, any given claim in my art likely reads on a nearly infinite amount of embodiments, and (nearly?) all “comprising” claims are “genus” claims to some extent. However, the reasonings on which the claims are usually rejected seems to be rich and varied and the courts seem to be buying. I agree that the determination appears to be subjective, and in fact it may well be. I urge an overabundance of caution, disclosing as many species as you can in an attempt to show a good faith effort towards persuading the examiner or judge that you have shown possession of the invention.

    That means, don’t make a token effort. If you’re going to skip 90000 emobidments but you really do have possession of them, then explain why you’re skipping them and why you’re justified in doing so etc. And do it in the patent itself, do not wait until a response to a 112 1st.

    But, who knows, the court may reject this type of rejection here very shortly. We’ll have to wait and see.

    Bio, I find it rather easy to avoid Miyazaki.

    “The basic assertion that a claim could possibly be amenable to exactly one plausible claim construction is ludicrous.”

    I disagree with you, as I’ve issued quite a few claims that are amenable to exactly one plausible construction. However, assuming you’re correct, it is irrelevant anyway. Miyazaki is a tool, nothing less, to help examiners get the claims into condition to settle issues that arise. If you have terms that could mean two things, but no issue pops up with respect to art, another 112, or a 101, then you’re unlikely to get a whole lot of resistance on the part of the examiner.

    “I wonder how many issued patents that have been litigated never required a claim construction hearing. Any? Ever?”

    I think I posted one just the other week that did not require one. Everyone agreed on the construction right straight up front. Or maybe that was SJ and SJ doesn’t count as “litigated”?

    “So I can’t possibly be expected to understand how POSITA would interpret this claim. ”

    I disagree again. I many times understand perfectly well how POSHITA understands the term, and I also understand that it is an even split down two seperate interpretations. In other cases I have an interpretation I want to take which is reasonable, and the patentee takes another which is perhaps also reasonable (to an extent more or less than mine depending on the case). So, rather than fighting about it, I simply say ok, no problem, 112 2nd, amend the claim and we all go home happy. Unless of course they don’t really have a prayer at their “interpretation” having good WD support and they can’t amend. In which case I view it simply as an indication that their interpretation was bogus in the first instance. In some cases I even go out of my way to bring in some evidence for my construction, they provide none and still want to fight. 112 2nd simply ends the matter.

    Compact prosecution baby :)

    Oh, and by the by, if POSHITA would obviously fall onto one side or the other of the dispute then simply argue that. This type of argument should be no different than other times you deal with an examiner not viewing the claim from the perspective of a POSHITA and appealing that. And you shouldn’t view it any differently, because that is the real issue you are upset about.

  15. “To give a bit of outside context”

    That isn’t “outside context”, it’s just another anecdote. I’ve never heard of any such requirement.

    It’s impossible to judge the merits of the indefiniteness issue from the facts you are presenting us.

    The most recent indefiniteness issue I was presented with was well-considered (not a case I drafted, of course). The Examiner did me (and everyone else) a favor by pointing it out.

  16. Max and MM:

    I agree that enablement can be a different thing, particularly with the enhanced requirements RE: scope. But that was not the issue in the case I was referring to.

    I cannot remember exactly what the context was, but something along the lines of “gene expression associated with a phenotype”, I believe. And I also agree that most examiners wouldn’t have blinked.

    But one did, and some Primary signed off on it, and that’s just ridiculous. And the “phenotype” and “expression” examples were merely the most egregious.

    To give a bit of outside context, a colleague of mine told us all about an examiner in 1600 that stated that her supervisor REQUIRED her to give 112, 2nd rejections in each and every case. I doubt that this was just a rogue Primary/SPE. And we have Congressional hearings and en banc CAFC cases about backlogs.

    I wonder how many issued patents that have been litigated never required a claim construction hearing. Any? Ever? Can you get an invalidity verdict based on presenting a plausible alternative interpretation? Apparently, you should be able to as far as the PTO is concerned.

    Summarily, clarity is a great thing, and I am all for it. Just don’t expect people to do more than language allows. Whether it would be a good thing or not for every word in the English language to be susceptible to only 1 meaning, that is not the reality we are dealing with.

  17. BPA “Do you really think that I (or anyone) enjoys battling with the PTO about what the phrase “gene expression” means? I have plenty of work to do, thank you, and shouldn’t have to waste my time and energy, or tens of thousands of dollars of client money, educating a patent examiner about what a “phenotype” is (and is NOT).”

    I’d be curious to see the claims you are referring to. I use such terms routinely (as does everyone else in the field) and I’ve never seen them questioned by a 1600 Examiner as indefinite. What’s the context?

    Of course, we’ve all seen claims with such terms objected to as non-enabled.

  18. No, not a great system, I agree. That’s why the EPO has its “Principle of Synthetical Propensity” See Decision T_O190/99. I hadn’t realised that the USPTO was so far from being fair to Applicants. Sorry.

  19. Max:

    Don’t be ridiculous. I don’t want a “deferral of clarity”. The basic assertion that a claim could possibly be amenable to exactly one plausible claim construction is ludicrous. If that were the case, we’d stop having Markman hearings and move straight to summary judgment of infringement on the briefs.

    And whereas I used to believe you to be a fairly thoughtful poster, I appear to have been mistaken. Do you really think that I (or anyone) enjoys battling with the PTO about what the phrase “gene expression” means? I have plenty of work to do, thank you, and shouldn’t have to waste my time and energy, or tens of thousands of dollars of client money, educating a patent examiner about what a “phenotype” is (and is NOT).

    And “lack of clarity” is PTO-speak for “I really didn’t have time to understand the spec, or do a decent search, or actually understand what is going on with the current state of this art. So I can’t possibly be expected to understand how POSITA would interpret this claim. Therefore, I will come up with two formally plausible interpretations (completely ignoring how one of skill would view the claim), write an illogical 112, 2nd rejection based on the 30,000 foot view, and get my count. Don’t like it – appeal.”

    Sounds like a great system, right?

  20. MD “The explicit Definition of “animal” elsewhere in the patent doesn’t explicitly say that the term “animal” definitely includes “human”.”

    That’s funny, MD. “I know the animal kingdom includes humans but my definition didn’t say it *definitely* had to include humans!” C’mon, has patent prosecution sunk that low?

    As for the “human dignity” comment above, please remember that cats raise kittens, dogs raise puppies, and humans raise children, kittens and puppies. All this is done, in part, by feeding the children, kittens and puppies “material.”

    in house: “With no metric for the applicant to be guided by, how many examples of species are sufficient to claim a genus?”

    Welcome to the world of reason, based on facts. Would you really be happier with an arbitrary number?

  21. It appears as if I would Tino. The question is whether or not they included enough examplary species to justify the allowance of a claim to such a broad genus.

    Posted by: 6 | Sep 07, 2009 at 08:32 AM

    6 – I see this all the time and it bothers me. There appears to be some subjective standard by which each individual examiner measures sufficiency of the disclosures/examples with respect to a claimed genus. Numerically, is 1, 2, 5, 10, 200 examples sufficient when the genus may encompass 10,000 species? With no metric for the applicant to be guided by, how many examples of species are sufficeint to claim a genus?

    Your thoughts.

  22. Euro: sir, we must agree to disagree here. And MM is correct that this case could lead to some mild naseau.
    As to MiyaZaki, I would love to see the Chief Admin Patent Judge or Vice Chief whip that opinion out as a sample of their best work, if they ever leave the PTO,and interview for a high level legal position. no chance.

  23. Sorry Ames, Disnae. I must have been reading so fast and inattentively that I missed the Disnae double negative.

  24. “A method of raising an animal, comprising feeding said animal material…”

    If that’s supposed to include humans, then simple respect for basic human dignity demands a better choice of words. I can’t imagine that most biologists would disagree.

  25. Ames I’ve lost you. Disnae agrees with you and I don’t. Yet you quote Disnae and (it seems) disagree with his words.

    Bio, Miyasaki seeks clarity early on. Prof. Polk Wagner of PennLaw asserts that deliberate deferral of clarity is the cause of much that is imperfect in the US patent system. I gather that you want deferral of clarity. i wonder why.

  26. “can only be referring to non-human animals”.
    Really? This case is Exhibit A on why it’s more important what a biologist would think about these claims instead of the bowling league (or the “football” league). Again, if one can take the big picture view of the situation, it is appreciated that a broader claim construction for infringement is balanced by a broader risk of invalidity (based on prior art, lack of enablement, etc.). Subjective implicit is better than rigid rules? whatever.

  27. Miyazaki, 6? That’s one of the biggest pieces of crap ever to come out of the BPAI.

    “In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite”.

    Nothing more than the BPAI giving all Examiners more ammunition in their arsenals for refusing to do a real examination. “Amenable to two or more plausible claim constructions…”

    Pathetic.

  28. Personally, I fail to see how any reasonable person could read the whole ‘244 patent and not conclude that the claimed “method of raising an animal, comprising feeding said animal material…” can only be referring to non-human animals.

  29. Fisher Ames, you ask:

    “Does the actual confusing sentence in question mean: “human and OTHER animalS”

    and I answer your question thus:

    You would like it to mean that. This we can see. To a disinterested reader, however, taking the patent at face value, it doesn’t mean what you want it to mean. The writer is using the words “human and animal” to tell us (very simply and clearly) that when he writes “animal” he does not include “human”. The explicit Definition of “animal” elsewhere in the patent doesn’t explicitly say that the term “animal” definitely includes “human”. I think it entirely possible for readers to infer that, implicit in the definition, is the setting aside of the special case “human” from the general class “animal” thereby rendering that definition consistent with the rest of the specification.

    I think this is a tough case. I think humans search for simple rigid Rules, to make hard cases less hard. Often though, and especially in the law, it ain’t that easy. Thank goodness, eh?

  30. “nobody in this case seems to have discussed the important “human or animal” passage”
    Perhaps because it does not say “OR”; it says ‘and’, as you acknowledged elsewhere. Does the actual confusing sentence in question mean: “human and OTHER animalS” or ‘human OR animal’, as you suggest. Well, resolving that ambiguity by the express non-ambiguous definition provided sounds logical. Some “oily rag drafter” defined a human as being within the animal kingdom? pleeeease.

  31. It appears as if I would Tino. The question is whether or not they included enough examplary species to justify the allowance of a claim to such a broad genus.

  32. Much common sense there, from Luke.

    I had always thought one had to take any document as a whole. Suppose its tenor, throughout, is that humans and animals are different yet, somewhere in that consistent disclosure, some oily rag drafter, perhaps on the instruction of an experienced and case law savvy patent attorney superviser, has grudgingly done the superviser’s bidding, reached for a dictionary, looked up “animal” and pasted into the otherwise consistent disclosure a Definitions Section, consisting of a dictionary definition of “animal” that, taken in isolation, on its face, apparently contradicts the remainder of the disclosure. Otherwise, the disclosure remains unamended. Then, as Luke points out, any common sense technical reader, sincerely searching for the true sense of the disclosure (the PHOSITA, not some fancy lawyer) has a big construction problem.

    And anyway, isn’t a definition like a picture? No matter how long you spend on it, it is never complete. Stripped of context, a word is meaningless (no matter how many definitions you cite from a dictionary). For example, when in a newspaper report a criminal (or a sportsman) is described as an “animal”, they are saying something other than that the subject is “human”.

  33. I find this a tough case.

    While the patent in one place defines an “animal” as including humans, it also says, as quoted in page 2 of the opinion, and strangely enough, not seemingly discussed elsewhere, “human and animal”. That to me as an equally clear definition that in this patent human does not include animal.

    Thus I find there are two contradictory definitions, one explicit, one implicit.

    Thus the majority’s statement that “because the patentee explicitly defined “animal,”, Lonza’s extrinsic evidence is simply irrelevant” is to my eyes inapt, because it adds a very important word – explicit – that isn’t in Honeywell it purports to follow. Here the implicit definition contradicts the explicit one; nothing in Honeywell says that the explicit one should over-ride the implicit one.

    Which one should control in any situation would depend on the facts (if either should; maybe the patent language could be ruled as helplessly ambiguous…)

    Alas, nobody in this case seems to have discussed the important “human or animal” passage.

    Cheers, Luke

  34. “WRT Phillips, there is no suggestion that the existence of an express definition means you can ignore the remainder of the specification.”
    The converse is the greater sin; ignoring an express definition set forth in the spec based on the “remainder” of the spec, as done by the dissent in this decision. Any express disavowal of coverage by a patentee’s committing to an included narrow express definition, or invitation to easier invalidity from a broad express definition, provides superior notice to the public on the claim coverage. Trumping such volunteered express definitions with the “remainder” of the specificiation undermines public notice functions of the patent. As max3 would say: Alles klar, Herr Kommissar?

  35. Malcolm: The similarity between CRM and DNA arose because both are tangible things that encode information.

    6: Sufficiency of disclosure is exactly the problem. Would you have found enough disclosure to allow claim 1 if “animal” had been replaced by “human”? i.e. if the claim had recited “a method of raising a human comprising feeding said human…” Alternatively, is disclosure of a limited number of species here enough to claim the entire genus?

    WRT Phillips, there is no suggestion that the existence of an express definition means you can ignore the remainder of the specification.

  36. Tino’s nonsense about new matter and 112 did however lead me to wonder about the sufficiency of disclosure. I haven’t read the spec, but would there not be millions of species of “animals” that the claims would read upon, and are the examples which they give sufficient to show ownership of the whole genus?

    This follows the Ariad? 112 1st problem somewhat I do believe.

  37. “So where would “a shape-shifting man who can turn himself into a snake, a hawk, or a black panther, and use[] this ability to fight crime” fit?”

    Then we are talking about neither man nor animal, but rather an extremely short-lived 80’s television show. This would of course be patentable as long as it is shown in an airplane (consult Actual Inventor).

  38. The last time I engaged Tino in the comments was when he stated that claims to deoxyribonucleic acids encoding specific protein sequenes and computer-readable media encoding methods for recommending movies were legally indistinguishable. When pressed to justify the remark, Tino replied that both compositions are “made of matter.” So I enter this discussion warily.

    Tino: “according to the majority, claim 1 covers embodiments for which there is no actual actual written description.”

    Is that language in the case or is that you’re “interpretation”? The majority says that all of the asserted claims of the ’244 patent are directed to methods for achieving high
    concentrations of omega-3 HUFA in an animal. Does the spec state that the method won’t increase omega-3 HUFA in a human animal? No it doesn’t. But it does define animal as including humans. I don’t see a written description problem here.

    “Phillips, which basically says the spec is the best thing to use for claim construction”

    Phillips “basically” says a lot more than that, Tino, as you know. You should read it sometime, especially the part about expressly defining claim terms.

  39. Malcolm: Both dissent and majority relied on Phillips, which basically says the spec is the best thing to use for claim construction. They differed in how much weight to assign the express definition of “animal” and on the spec’s statements about “the invention”.

    If patentee had tried to add a dependent claim saying “wherein the animal is human”, he would probably have encountered a 112 written description rejection, since the spec never describes such an embodiment. Thus, according to the majority, claim 1 covers embodiments for which there is no actual actual written description. That’s really good news for a plaintiff’s attorney down the road.

  40. So where would “a shape-shifting man who can turn himself into a snake, a hawk, or a black panther, and use[] this ability to fight crime” fit?

  41. “I think some of you who believe that this case is open and shut would do well to read the specification. At least if the comments on hawk are true.”

    Am I the only one that gets the joke?

  42. “Federal Circuit: Is a Human An Animal?”

    Someday we’ll all look back on this headline and have a good laugh.

  43. It’s a sloppy piece of drafting, but we aren’t vegetable or mineral, so there’s only one other possibility left, in the mind of this EE. It could even be consistent if it were directed to the ordinary cannibal skilled in the art, extolling the virtues of ‘long pig’ containing high concentrations of Omega 3 fatty acids.

  44. I think some of you who believe that this case is open and shut would do well to read the specification. At least if the comments on hawk are true.

  45. I’m surprised Judge Rader never heard of mother’s milk (including that produced by species homo sapien for feeding babies). He comes off as being way too sure of himself about the underlying facts of the case. Besides, how hard is it to appreciate that we are animals? We eat, we breath and we breed like most other animals (e.g. land dwelling mammals). And often we act no differently than many other animals.

  46. “organisms including humans, chimps, dogs, mice, flies, worms, and …”

    the lesser organisms, the slugs, the leeches, the whale droppings, the sub-animals, and then the Mooney-like creatures, which resemble a persistent ooze or slime like substance that simply will not go away.

  47. Based on the movie “Animal House”, Animal can’t possible refer to a human. “Animal Farm” … the whole purpose was that the characters were not human. “Animal Crackers ™” … umm, I hope to never see a Jane Goodall human cracker in the mix.

    QED

  48. MD “After all, people are accustomed to writing “animal” when they mean “animal, not human”, and “human” when they mean “human animal”.

    Yes, “people” may be accustomed to doing that but skilled biologists and applicants in the 1600 art unit use the term “animal” almost always just as it is defined in this application, i.e., to refer to organisms including humans, chimps, dogs, mice, flies, worms, and everything else in the kingdom Animalia. The term tends not to show up in claims due to the fact that many applicants are interested mainly in the most important animals, e.g., mammals (including humans), because that is where the money typically is, and also because many treatment methods are not applicable to all animals (the enablement issue) but only a subclass (usually mammals).

  49. Tino: “Does anyone else think it would have gone the other way unanimously without that express definition in the spec?”

    Quite possible.

    “The majority really seemed to rely on it.”

    They were the following the law. Read Phillips again.

  50. Nice insight Tino. After all, people are accustomed to writing “animal” when they mean “animal, not human”, and “human” when they mean “human animal”. Like any other document, it all hangs on “context”. An English patents judge pointed out that, robbed of context, you can’t extract any useful meaning from a mere string of six alphabetical letters.

  51. Any explanation of why this is a highly unusual, if not unique, FIVE judge decision of the CAFC [instead of three] but not en banc?

  52. Does anyone else think it would have gone the other way unanimously without that express definition in the spec? The majority really seemed to rely on it.

  53. Nice from Blimpy at 4.57. I laughed. Bad luck MM.

    I’ve skimmed the Decision on “animal” now (but not the patent). Still think it’s a tough call, what with cannibalism, and such like. So, I think the majority took the better view. Fun though.

  54. MD “Given the facts, this is a “hard case” on claim construction, isn’t it.”

    I don’t think so. The reasoning of the majority is devastatingly correct and straightforward. But imagine if the panel had been Lourie and Rader and Newman, with Newman dissenting to uphold the claim construction that accords with the express definition in the specification. My head might have been exploded. Instead, I am only mildy nauseous just thinking about the possibility.

  55. “Hundreds of years…”

    Guess Mooney doesn’t realize that the history of man has a few more zeros behind it… Was Cro-Magnon an animal? His girlfriends would say, resoundingly, YES, YES, oh YES.

  56. “According to the court, once a patentee defines a term, extrinsic evidence of that term’s meaning “is simply irrelevant.”

    This is a great rule. They should engrave it in stone and hang it on the wall behind the bench.

  57. Glad to see more evidence of harmony between 112 (written description) and Europe’s Article 123 EPC (prohibition on addition of subject matter during prosecution). Some provisions of patent law are universal, never mind what you call them.

    Glad to see a case which would can put under the microscope the English way of claim construction, namely to ask: what would the PHOSITA think the inventor was using the language of the claim to mean. Given the facts, this is a “hard case” on claim construction, isn’t it. A 3:2 split on this issue is entirely respectable, isn’t it?

  58. The Dissent: “This case illustrates the unusual situation in which a purported definition of a claim term in the written description is totally negated by the remainder of the text of the patent.”

    News flash: there is nothing unusual about a sloppily drafted patent application. Majority got this one right, at least with respect to this simple issue. Humans are animals, as defined in the spec, and in accordance with hundreds of years of biological science.

  59. Indeed, he’d get a 112 2nd under Miyazaki according to the dissent’s rationale were the claim at he office and used the disputed term in the claims.

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