Using Claim Terms and their Synonyms

Edwards Lifesciences v. Cook, Inc. (Fed. Cir. 2009)

The four Edwards patents all relate to internal blood-vessel grafts for treating aneurisms. The grafts are designed to be inserted endovascularly without the need for open surgery. After construing the claims, N.D. Cal. District Court Judge Jeffrey White granted summary judgment of non-infringement to the two defendants, Cook and Gore. On appeal, the Federal Circuit affirmed.

Lumpy Claim Construction: Patent claim construction serves as a prime example of how litigators can take a simple issue and make it quite complicated. For their part, judges are keen to limit the issues. A common approach in claim construction is to group similar claim terms together and give them identical meaning. In this case, the patent used the terms “graft,” “graft body,” graft structure”, “bifurcated base structure,” and “bifurcated base graft structure.” Examining these terms, the appellate panel agreed that these terms could properly be analyzed together because the applicant had used them “interchangeably in the specification,” at least with respect to the disputed differences.

This risk of synonymous meaning is not necessarily bad. Using various terms to describe the same idea helps to flesh out the detail and scope of the idea. However, in most cases, applicants would probably be better off emphasizing distinctions between similar terms. The distinctions may well be useful for ensuring varied claim coverage.

The point from this case is that the distinctions between similar terms must be explicitly emphasized if the applicant wants to have confidence that it can later rely on the differences.

Broadening Claims:During prosecution, Edwards seemingly broadened some of its claims by amending the “intraluminar graft” elements to simply “graft” elements. Despite that change, the court found that the specification’s written description still required that all grafts be intraluminal.

73 thoughts on “Using Claim Terms and their Synonyms

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  2. After reading the specification and claims it is clear to me that the inventors intended to only disclose and claim an “intraluminal” graft with malleable wires. After issuance, Edwards seeks to construe the claims to embrace subject matter that was not part of the invention as disclosed or the claims as examined in the USPTO. Edwards should have paid more to have the specification prepared and reviewed it to make certain it covered what it wanted to be covered at the time. My guess is that Edwards only cared about the fees paid at the time and did bother to review the application when it was filed. And the inventors probably never thought about non-intraluminal grafts.

    The text of this sloppily written specification suffers numerous grammatical errors that could have easily been corrected when edited before filing so that “graft” defined an the entire implant and “graft body,” etc defined the parts of a graft as is conventional in medical device patents. The ABSTRACT best states these distinctions. But, I do not think that a more clearly written description would have made any difference in the result.

    The oddly named DISCLOSURE OF THE INVENTION (should simply have been titled “SUMMARY”) adds nothing to the description but confusion, and could have been reduced to repeating the ABSTRACT. But again, I think that the CAFC would have reached the same conclusions as they express in this opinion if the entire DISCLOSURE OF THE INVENTION section had been left out. The same result would have been reached regardless of whether the specification did or did not use the dreaded terms “the invention” or “preferred embodiment of the invention” that the above writers dwell on.

    It is the detailed description and drawings that entirely lack any disclosure of any grafts other than intraluminal grafts with malleable wire woven within the graft body. There is no way that the claim terms could be construed to read on non-intraluminal grafts lacking malleable wires absent a specific embodiment of such a graft and the intent expressed in the description to include such grafts within the scope of “the invention.” Does anyone remember the SciMed decision referenced in the opinion? That made it clear how applications should be written and how patentees should decide whether or not to bring suit enforcing medical device patents.

  3. I confess I haven’t read the decision, but did the court use the phrase “doctrine of claim differentiation” or only talk about it without using the phrase?

  4. Criticism of the present claim drafting practice is not credible without proposing a workable alternative and rules for implementing it. After all,the present approach, although imperfect, has served the patent system for many years.

  5. “More on Kara: Judge Moore also cited the claim differentiation doctrine, which is not the law if Judge Lourie is on the bench as we saw in Edwards Lifesciences.”

    Judge Lourie said that the doctrine of claim differentiation couldn’t be relied on when construing claims? I missed that passage from the decision.

  6. More on Kara: Judge Moore also cited the claim differentiation doctrine, which is not the law if Judge Lourie is on the bench as we saw in Edwards Lifesciences.

  7. The Kara case just shows that CAFC practice comes down to the luck of the draw, the patentee drew Judge Moore and got some scope, if he had drawn Lourie he wouldn’t have gotten any.

  8. “Why do so many attorneys want nice neat rules on how to do their job?”

    The rules have never been neat. What is driving me, at least, crazy is how much they have been changing the past few years (heck, the past year). *Not* because it makes it harder to draft applications. I can incorporate a new “rule” into my practice pretty easily. But because it means there isn’t any stability or predictability for what a patent covers or will cover in another five years.

  9. “Has anyone been taught this [not defining terms in the claim within the spec] as a deliberate strategy to obfuscate, or is this simply the result of bad practitioner workproduct randomly hitting one of those examiners that will allow anything?” The answer is: jabberwocky

  10. NATL: “Hierarchy – see BabelBoys’ comment above at 12:05PM.”

    Good to see Phillips is alive and kicking, since I base so much of my work on it. I’m not saying that single-embodiment features can’t get broad coverage, I’m just saying that sometimes practicioners fall into habits that are seen one way within their profession, but to outsiders seem odd or could have different meaning. I say “in one embodiment”, the attorney reads that and says “ok, he means this is not the only way to do it”, whereas the engineer/researcher/technician reads same thing and says “where are the other embodiments that this statement implies”. … I wouldn’t write “in one of my cars there is a stereo” if I didn’t in fact own two cars. Anyway, it was just an example to try to show the impoortance of keeping in mind that patents are interpreted (and should be written/prosecuted) in a way that tries to be estimate the meaning that would be expected to be given by the unknown future reader (more accurately, estimate a court’s esimation of an engineer’s interpretation). Per Phillips, that reader is one of ordinary skill _in the art_ at the time of invention. So if you’re an engineer second when drafting and prosecuting, you could end up with unexpected and unwanted results.

    Back to the ‘zealous advocate’. The whole idea seems quaint in the context of patent prosecution. Notice how often the phrase “zealous” is qualified with “within ethical bounds”? Some clients don’t need or want zealous advocacy, which can be costly. This is not litigation, this is ex parte administrative law. The PTO doesn’t “lose” when a decent app issues. The Examiner doesn’t have a substantial personal stake in the outcome in the way a litigant might. To me, Zealous Advocacy only begs the question: advocacy for what? For maximum coverage possible in view of all prior art? For reasonable coverage in view of some known art? For passable coverage with minimal cost? Zealously try to understand the client’s need, then meet it as best you can.

  11. You know what is funny about that case Babel? If the prior art contained all limitations and didn’t contain “a security key”, but the accused infringer did have a security key and all other limitations, then Newman would hold that the claim required one since PLAINLY the specification shows that a security key is required.

    lawl. Newman.

    IBP, I didn’t write a claim right there. I was only writing a spec.

    Even so I can present evidence of the proper construction of irregardless anyway. I did it probably a year ago.

  12. Thank-you for proving my point 6.

    6′s comment enjoyed the presumption of validity, because I actually read it (unlike MM’s comments)

    But more than a mere scintilla of evidence shows that the meaning of the term “irregardless” is unclear and ambiguous.

    The burden should be on 6 to tell us exactly what he means.

  13. “All well and good, but one cannot conclude that a valuable solution has been disclosed until one has a claim construction that is amenable to analysis. If there results no workable claim construction, the applicant isn’t cheated out of anything–they in effect were never entitled to bring the present action in the first place. The patent wouldn’t be “invalidated”–it could still be sued on again, in another scenario, thus preserving the presumption of validity–but it wouldn’t form an appropriate basis for proceeding in the present action.”

    This does not compute in some people’s head. They want to judge the “valuable solution” on what was disclosed in the spec, irregardless of what the claim is, or what the proper construction is.

  14. “As hard as you guys like to make it out to be to draft decent claims that pass 112 2nd with no questions asked it simply isn’t that hard.”

    Spoken like one who’s never truly done it.

    Oh, that’s right, you drafted a picture claim for a pro se applicant. Once.

    If that one claim you wrote was as clear as your typical post, I’m sure it’s a marvel of clarity.

    BWWWWAAAAAAHHHHHHHHAAAAAAAHHHHHHHAAAAAAAAA

  15. 6 chimes ‘Vote YES for more stringent application of 112′s in 2012!!!!”

    6, rather than the typical political hack of “promise and show nothing” (of which, you’d be pretty darn good at), why don’t you finish your homework of diagramming that 112 paragraph? C’mon 6, show us you know something.

    How are you going to apply anything more stringently when you don’t know what that anything means?

  16. Q.E.D. and Broje–

    Yes, it is the burden of proof that bothers me. There should be some intermediate burden to shift the burden back to the patentee, accompanied by a lowered standard of proof–something like “more than a mere scintilla”.

    Here’s why: it is the patentee who is suing on the patent–declaring that certain actions of the defendant infringe upon claims. Although I’m not a litigator, I recall that one of the burdens upon a petitioner to a court is to state with particularity and specificity the basis for the claim for which they petition the court for relief.

    As it now stands, presumably at this point the claim construction preferred by the patentee petitioner is accepted at face value by the court, in the absence of dismissal for failure to adequately state a claim. The quid pro quo for this benefit conferred upon the patentee in an action against another party should be the requirement that the patentee be required upon request to state the evidentiary basis for its claim construction.

    This would not run afoul of the presumption of validity, as the court would have by this time accepted the plaintiff’s statement of claim, which presumes that the document upon which it is based is valid. That is as far as the presumption of validity should get you–it should get your foot in the door.

    There would be an economy in this–after all, the patentee petitioner is in the best position to initially articulate the claim construction that it used as the basis for its analysis of potentially infringing activities by another party. The patentee should be able to produce an evidentiary basis for this construction, otherwise the suit should be ruled frivolous and the petitioner sanctioned.

    The standard of proof should be some intermediate standard, something easy to achieve, but to a level that would permit a directed response by the respondent–something like “some evidence”–that is, relevant and admissible.

    Broje, I agree that there are some competing requirements when drafting, and I agree that if you had 5 attorneys around, there would be nothing left after their edits. You remarked that the subjective elements in patent drafting would make it impossible to write a patent that would hold up under any scrutiny. I assume that you were writing quickly and that your wording got confused, as that is of course untrue, as patents are upheld as valid, even when rebuttal evidence is provided by the patentee petitioner during Markman.

    I do agree with you that 112′s are not to be relied upon by petitioners, as they don’t seem to get much mileage in the final analysis, although they can be useful in steering a Markman in a certain direction, and away from a particular unwanted construction.

    Finally, you remark that an applicant who has disclosed a valuable solution to a problem shouldn’t be cheated out of his patent because of poor representation or examination. All well and good, but one cannot conclude that a valuable solution has been disclosed until one has a claim construction that is amenable to analysis. If there results no workable claim construction, the applicant isn’t cheated out of anything–they in effect were never entitled to bring the present action in the first place. The patent wouldn’t be “invalidated”–it could still be sued on again, in another scenario, thus preserving the presumption of validity–but it wouldn’t form an appropriate basis for proceeding in the present action.

    Finally, a representative is there to assist an applicant–the application still belongs to the applicant, and it is the applicant who is ultimately in control thereof. If the representation is bad, that should be actionable in its own right, with its own remedies, and not be folded into the disposition of an action against a potential infringer.

  17. I wonder if the failure to use the word “invention” or something similar will someday result in newly added claims being rejected as failing to comply with the written description requirement because the applicant did not indicate in the application as originally filed that the subject matter of his newly added claims was part of his invention???

  18. Z: “My job is to represent and service my client zealously but within ethical limits. What you describe may be part of a patent’s job, and as a patent attorney its great that I most oftentimes get to do what you describe, but that comment feeds into my earlier comment about patent attorneys being somewhat insular. In my view, we are attorneys first, engineers second.”

    Hah hah. A false dichotomy. We’re hybrids; neither comes first or second. I would not write a patent spec. like I would write a technical spec. or design doc. Nor the reverse. I would write either according to its purpose. A patent spec. will be subject to rules of interpretation (judge), but it will also be subject to interpretation by expert witnesses in the relevant field. They’ll be testifying about the meaning of terms of art, how things work, state of the art, etc. It’s a mistake to not consider both angles when prosecuting.

    The point I was trying to make is that mechanical rule-based practice can have problems. Rules are designed to help resolve issues that a good attorney should be avoiding to begin with.

    How many of your issued patents are liberally sprinkled with “the invention”. Does that help them or hurt them? Could you have foreseen the turn in the law that made this a poor practice? Yes. Anyone reading a patent that says “the invention this” or “the invention that” could have said to themselves, wait a minute, how would the POHISTA (not attorney) interpret that? Could they equate such statements scope of coverage? Yes.

    As a prosecutor, zealotry (“fervent partisanship”) has its role, in particular regarding PTO procedure, efficient use of client resources, assuring the PTO is following the law, etc. But at the end of the day, the patent will leave the PTO and have to stand on its own. The Examiner won’t be around when the judge is intrepeting and the expert is testifying. So during drafting and prosecution I try to keep in mind what overall substantive message am I conveying to the public, the judge, the POHISTA, etc.

    Here’s an example. How often do attorneys write in a spec: “in one embodiment”, or “in the example of Figure X”, or “in one aspect of the disclosed method”, etc. But actually only one embodiment is disclosed (or one implementation of a feature)? The drafter does this to avoid narrow claim interpretation. But how will the non-lawyer read that kind of statement? If only one type of fastener is described, or only one particular algorithm is described, why would the POHISTA believe that the claims should cover more? This kind of practice might even be harmful if there aren’t truly multiple embodiments. A clever litigator might argue: hey, you say “in one embodiment”, but where are the other embodiments; maybe you’re failing to disclose the best mode. … see the forest, or get lost in the woods…

  19. And so here we have yet another example of a large corporation saving dimes on prosecution only to spend a fortune on litigation to no good end.

  20. “It is literally impossible to comply with all of the competing “requirements.” ”

    You must work in either a very very very very very very very very very very very very very very very very very very complicated art, or a bullsht art.

    Which is it?

    ” I bet that if you hand five patent attorneys the same disclosure and ask them each to write an application, and then they stand in a circle and pass the drafts around, striking out anything they don’t like, there will be nothing left of any of the applications by the time all is said and done. ”

    I know some attorneys that you could put in that group and you’d get that result. Then again, I know at least 5 others where nothing would be crossed out by any of them. They’re simply that good.

    We prattle on and on about the quality at the office, but the simple truth is that quality begins with that drafter. And there are a whole lot of them that aren’t but barely worth their salt, much less a high salary.

    ” If the Applicant has disclosed a valuable solution to a problem”

    I love how the “solution to a problem” red herring shows up so often in your writings Broje. No, really, I do.

    “will wipe out all damages for past infringement.”

    So what? They didn’t do the job properly. Why should they be entitled to the benefits of doing the job properly?

    As hard as you guys like to make it out to be to draft decent claims that pass 112 2nd with no questions asked it simply isn’t that hard. Even when the claim gets long. 112 2nd should not be very hard to draft around. Introduce all your stuff, make sure all your stuff is well portrayed in the spec, make sure all your terminology is used consistently. If you can’t proof read worth a dam for yourself then hire a buddy to look over your work or look over his in exchange.

    “The system we have now is needed for patents to have any teeth at all.”

    I disagree. All we need for patents to have teeth with respect to 112 is a shift in thinking of prosecutors/pro se filers. Clarity at the cost of scope if you aren’t smart enough to be clear while maintaining scope. It’s a built in feature by design in the patent laws that has been ignored too much.

    Vote YES for more stringent application of 112′s in 2012!!!! Vote 6 for president!!!!

  21. My personal favorite source of ambiguity (and by favorite I mean the one that frustrates me the most when evaluating an issued patent) is when you hit the first significant term in claim 1, wonder how it’s used in the spec, and then discover that it isn’t. And neither is the next term, or the one after, etc. It’s like two people who refused to speak to each other wrote the spec and claims, respectively. It’s one thing to introduce new terms in prosecution, at least you have to justify why the terms are supported, but I keep seeing this in as-filed applications. And more often than not the application went straight to issue. Has anyone been taught this as a deliberate strategy to obfuscate, or is this simply the result of bad practitioner workproduct randomly hitting one of those examiners that will allow anything?

  22. Old Timer: “The idea that a patent claims an invention while disclosing one or more embodiments thereof is fast becoming a quaint notion.“

    Not so fast, ole’ boy. Read Moore’s opinion of yesterday (Sep24.09) in Kara v. Stamps.com

    link to cafc.uscourts.gov

    She pulls Phillips out of her quiver and shoots a hole through the idea that the claims must lie within the four corners of the embodiments.

    In Kara all of the disclosed embodiments required a feature [a security key] but the claim at issue didn’t mention it. That’s OK, says she, it’s the invention that’s getting patented, not the embodiment. Or words loosely to that effect.

    Here’s the good ole’ Phillips passage she relies on:
    “In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”

    Amen.

    You know, I’m actually beginning to warm up to this lady.

  23. IBP, what is nagging you is not the presumption of validity; it’s burden of proof that presumption drops in your lap.

    Buck up, boy. It’s a tough job; someone has to do it.

    (Nothing worse than a high-paid whiner.)

  24. IBP,

    I respectfully disagree. Writing a patent application is a catch 22. It is literally impossible to comply with all of the competing “requirements.”

    Also, every patent attorney thinks they know the correct way to do things and anyone who disagrees is wrong. I bet that if you hand five patent attorneys the same disclosure and ask them each to write an application, and then they stand in a circle and pass the drafts around, striking out anything they don’t like, there will be nothing left of any of the applications by the time all is said and done.

    I bet the same can be said of Examiners and Judges, and so it goes with reexam and litigation. In other words, the subjective elements involved make it is impossible to write a patent that will hold up under all scrutiny, or any scrutiny. That is why the presumption of validity is so crucial.

    That said, I think patents should be invalidated over prior art, and not something like 112. If I were a client, I would not want to rely on a 112 invalidity argument, because Judges will bend over backwards to save a claim from invalidity, even though it requires construing the terms in such a way that infringment is not found.

    And Judges should do that. If the Applicant has disclosed a valuable solution to a problem, then the claim should not be held to such a standard that the Applicant is cheated out of his patent because of, in hindsight, poor representation and/or examination. reexam is not a sufficient solution because the inevitabel claim amendment will wipe out all damages for past infringement.

    The system we have now is needed for patents to have any teeth at all.

  25. MM–

    The latest non-infringement opinion I drafted was on a patent that had a nearly indecipherable scope.

    Almost every key term in the claim and spec had some ambuguity associated with it (within the spec), and I had to opine that many were not reasonable amenable to a consistent interpretation. The lengthy prosecution history only made the situation worse.

    So, 112 immediately comes to mind–but the question in an opinion situation such as this is “At what point do I stop?” When I feel I have an iron-clad case of invalidity? In this particular case, I encouraged the client to put a cap on the fees, and I hit the highlights hard while summarizing the lowlights.

    I personally believe that more 112 defenses should be raised–after all, it is the inventor who is in the position to unambiguously describe the invention in the spec..

    I believe that any ambiguity or unascertainability in the spec should weigh STRONGLY toward a finding of invalidity, because it can only be a result of a limited number of things: 1) sloppy drafting, 2) lack of appreciation of “the invention”, or 3) a strategy of ambiguity, none of which should be rewarded in any way, and all of which should be sanctioned because they were all within the direct and sole control of the applicant.

    So your 23/25 strategy, in my opinion, should get you burned at the Markman.

    Unfortunately there’s that nagging presumption of validity…

  26. All good point MaxDrei.

    Kudos to you I might add — it is refreshing to see you post with thoughtfulness (especially on this thread – your dialogue with Z above was exemplary).

    Nice to see you separate yourself from the likes of… (dare I say 102%)

  27. Thanks Ah Pook. The “theory” that a patent claim has a true meaning narrower than its “plain” meaning arises out of the very asymmetry between infringement and validity, which I mentioned above. So too the distorted meanings that a judge (searching for a just result) can impose on a claim in suit. As to your third point, unclear definition,that’s the mischief that ensues, when the meaning of a self-contained public published printed patent can emerge only after exhaustive argument about the content of the yard of paper in the PTO called the “file wrapper”. Bonkers.

    Glad to have you on board.

  28. Perhaps the theory that a patent claim can have a meaning much narrower than its natural reading would imply. Or the theory that the skilled person is not the addressee of a patent, which can only be properly understood by a judge. Or the theory that it’s OK to grant patent claims containing non-standard technical terms without those terms being clearly defined in the patent.

  29. I try not to forget Crumbs thanks. Will you let me in on the part of theory you have in mind. As far as I can see, it’s the right to trial by jury that sets US apart from every other jurisdiction, and would block adoption into the USA of the English way of doing patent litigation. England’s common law patent courts run happily within the continental European civil law system, despite the differences in legal “theory”, without anybody kicking up a fuss about “theory”. Is it perhaps “due process” which is pre-occupying you? Tell me more, and we can chat further.

  30. MaxDrei,

    Don’t forget the differences in legal theory that affect any application of Euro law into US law.

    Waiving a magic wand will not make these differences disappear no matter how hard one wishes.

  31. This is all very “Alice in Wonderland” isn’t it? A claim is a definition, composed of a single sentence, found within a larger document that is entitled to be read as a coherent whole. The sentence means what the sentence says, taken in that context. It is the assymmetry there is in the US system, between matters of infringement and matters of validity, that is doing all the damage to legal certainty. Clarity comes, when an experienced patents judge is free to decide, in one action, what the claim means as regards its validity, and whether that meaning includes within its ambit the accused embodiment. Do away with the DoE, set the judges free to settle these issues, and legal certainty will follow.

  32. Kara v. Stamps.com, another case coming out of CAFC on 9/24, seems to be in conflict with this case, or they differ on very fine lines.

    Are claims limited to specs/enablements or not? It’s confusing.

  33. John Roethel:
    Great comment. I think it would be real difficult to argue without turning red in the face that each and every term in the claim is part of the invention.

  34. §112, 2nd¶: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

    If each claim is an “invention”, how does that affect the analysis of how to use the term “invention” in the spec?

  35. I’m not saying you shouldn’t try to get broad claims, I’m saying when you are in the CAFC and you draw a bad judge (Lourie) you are going to get no scope. He’s going to “construe” your claims to be limited to your embodiments no matter what, and there’s nothing you can do as a patent drafter to stop him. So it’s a little silly to avoid the word “invention” or whatever, it’s simpler than that.

  36. re Mooney’s 23/25 idea of terminology: I propose simply using a general term and then writing: in particular embods, the graft is an intraluminal graft. Or: typically the graft is an intraluminal graft, however, according to some (exemplary)embods, it is interluminal blah blah.

  37. re the US vs EP discussion. I am in neither jurisdiction but file/prosecute in both (in Europe via Assoc’s, but I provide the remarks/amd’s). I simply make sure that the stricter EP protocol is followed: all I wish to claim is backed up with appropriate terms in the descrip. I have successfully broadened claims written by others in EP and find the Examiners open-minded, though very strict.

  38. continuing: so describing exemplary embodiments of the invention should not be limiting, esp if one provides a decent list of alternative embods, with an enabling description (if not so obvious already to be enabling by mere mention).

  39. Dear colleagues:
    US 102 and 103 use the word invention. Then, surely there is no need to avoid the use of the word if used properly. Clearly one receives a patent on an invention.

  40. Regarding A Reader’s comment, while I might agree your stated position is true of describing a trend in the CAFC, as a dogmatic position describing all cases regarding claim construction, it is demonstratably false. And as a philosophy for drafting patents, it is wholly unuseful and unhelpful and perhaps the grounds for malpractice!

    -Z

  41. “Why do so many attorneys want nice neat rules on how to do their job? The job is this: to convey information to the public and to particular subsets of the public.”

    Uhm, that’s not my job. My job is to represent and service my client zealously but within ethical limits. What you describe may be part of a patent’s job, and as a patent attorney its great that I most oftentimes get to do what you describe, but that comment feeds into my earlier comment about patent attorneys being somewhat insular. In my view, we are attorneys first, engineers second.

    Just my two cents on that issue.
    -Z

  42. Unfortunately, a fair review of Fed. Cir. case law over the past few years reveals that A. Reader is correct. The idea that a patent claims an invention while disclosing one or more embodiments thereof is fast becoming a quaint notion.

    It makes a pretty good argument for a registration system in which patent applications are published and examined only upon request by the owner of the application or a third party. I suspect fewer than 20% of the applications filed would ever be examined.

  43. Look, the CAFC is going to make every case come out the way they want it to, and you can’t do anything about it.

    And the way they want cases to come out is that patents have no scope, you can only claim the exact embodiments you disclose.

    That is how “graft” gets construed as “an intraluminal graft structure with wires that are malleable and have no resilience.”

    There’s no way to avoid that outcome. You can make it more difficult for Judge Lourie to justify his decision, but there’s no avoiding it.

  44. Why do so many attorneys want nice neat rules on how to do their job? The job is this: to convey information to the public and to particular subsets of the public. It is the practicioner’s job to write the specification and prosecute it so that it conveys the correct meaning and scope.

    One way to look at it: the claims are the statute, everything else is the legislative history. The specification is the committe report, the prosecution history is the committee or legislative debate. It’s up to each practictioner to take all of these pieces of information, as well as understanding of the meaning of terms of art and ordinary words, and the rules of English grammar, and come up with a best estimate of what the patent does/will cover, and what it won’t. Implicit and explicit limitations can be imposed on the claims in an infinite number of ways. It’s smart to take into account, during prosecution and drafting, rules of claim interpretation, and also facts that courts have found to be significant (like, “the invention”), but that’s only one piece of the overall analysis puzzle. In my own practice, I try toask myself: what would the English speaking average objective engineer/artisan, reading this patent and its history, think we meant to cover?

  45. “Note that I would never ever intentionally engage in these sorts of shenanigans. Just an fyi”

    Thanks for confirming that you work for the USPTO and not a client. If you aren’t pushing the envelope for your client, you are not representing your client zealously.

  46. “”graft,” “graft body,” “graft structure”, “bifurcated base structure,” and “bifurcated base graft structure.” ”

    Question for anyone interested. What if instead of appearing in the same one granted patent, only the 1st term “graft” was in a parent patent, and the other 4 claim terms were in the independent claims of 4 separate “divisional” applications? (That is, 2nd term in claims of 2nd patent, 3rd term in claims of 3rd patent, etc.)

    And complicating matters, only that 1st term appears in the spec (any of them). These other terms 2-5 only were introduced serially in each of the “divisional” applications via preliminary amendment of newly added claims.

    Leaving aside why the Examiner failed to raise new matter, given no indication of the meaning of terms 2-5, and these not being particularized terms of art, is this a circumstance where it’s wholly proper to “lump” their construction in with the construction of term 1?

  47. “Really, *if used properly*, there is no risk.”

    Zarkonian,

    As you note, there is nothing wrong with mentioning the word “invention” in a patent application. In fact, it’s even stranger not to mention the word “invention.”

    What the applicant did here by the way the patents were drafted was to tie the word “invention” to the preferred embodiment. (BTW, I no longer use words like “preferred” anymore in patent applications because of such legal baggage they now carry.) Instead, by saying “an embodiment of the (present) invention” (plus exemplifying multiple embodiments), there would have been no issue with “the invention” = preferred embodiment.

    The applicant also wasn’t helped by the “disparagment” of the prior art in the background section of the patent(s). This is a tricky issue as you’re trying to walk the fine line between showing that the claimed invention has unique, unobvious benefits/advantages but without making a “disclaimer/disavowal” that comes back to haunt you later. Also trying to argue that deleting “intraluminal” from the claims broadened “graft” was asking for trouble, especially in view of the patent specs not exemplifying anything other than “intraluminal grafts.”

    And MD, you’re correct that “quality drafters are just as important as quality litigators.” This case shows patent drafting isn’t a “fungible commodity” as some would have us believe. There’s quite a bit of “art” in doing patent drafting in a manner that survives prosecution yet avoids issues in litigation later.

  48. MD “I suppose the 23/25 strategy has achieved its full objective long before any court gets around to doing any claim construction.”

    Correct.

    Bear in mind, the “correct” (“intended”) construction in this case is the narrower term. But that spot of ambiguity affords some looseness in pursuable subject matter and, as I noted, sucks up time for opinionators and deciders.

    Note that I would never ever intentionally engage in these sorts of shenanigans. Just an fyi.

  49. Malcolm, this 23/25 strategy of yours interests me. A naive observer from outside might wonder whether it really is risk free, and might rebound to hurt the drafter. I have in mind that your 2/25 term “film” is seized upon by the party attacking validity, while the 23/25 term “thermostable film” is invoked (if need be) by the infringer in defence of a non-infringement position. Maybe this is rather like “for” in a claim. It can mean “suitable for” when the validity of the claim is in issue, even while the infringer urges “intended for”.

    I suppose the 23/25 strategy has achieved its full objective long before any court gets around to doing any claim construction. All the same, if the patent owner is a little guy, and the target is big corp, could not a 23/25 drafting style be more advantageous for the threatened party than the patent owner?

  50. Zarkonian: “I vacilated between using “invention” judiciously and not using it at all. I finally came down to using it. Really, *if used properly*, there is no risk.”

    Absolutely correct, sir.

  51. There is a widely known but rarely discussed application drafting strategy that may be mimicked by mere sloppiness. The strategy is to use a key term with a limiting adjective *almost* all the time, but drop it off occasionally (e.g., refer to “a thermostable film” 23 times out of 25, but refer to “a film” in a couple instances). This practice can create just enough ambiguity to turn claim construction (by a judge or by an attorney attempting to opine on the validity and scope of the claims) into an annoying mini-nightmare. The result, of course, is a more valuable patent because it costs the public more to figure out what exactly the patent covers, an ideal situation for the patent owner.

  52. “Aspiring UK patent attorneys are examined on their knowledge of patent law in other jurisdictions, before they can receive their “Pilot’s Licence”. German ones too. May I ask, is that also the case, in the USA?”

    Beyond general PCT practice, definitely not. In fact, I find U.S. patent attorneys generally insular, with myself being guilty on occasion. That’s not necessarily the worst quality in the world to have, so long as you happen to be practicing in the country with the largest economy and most patent filings. But it’s not ideal.

    -Z

  53. No contradiction. That’s good news. Thanks Z.

    You make a good point, about clients needing to file outside their home jurisdiction from time to time, and the patent attorney’s duty to meet client needs.

    You make another good point: what is a drafting “purist”?

    Aspiring UK patent attorneys are examined on their knowledge of patent law in other jurisdictions, before they can receive their “Pilot’s Licence”. German ones too. May I ask, is that also the case, in the USA?

  54. “What if the PCT, written in the USA, fails to disclose what specific technical effects are delivered by which specific technical features?… But if you put all that stuff in, you offend US drafting purists, don’t you?”

    It’s hard to say given the level of abstraction, but I’m not sure I agree with your premise that that would offend US drafting purists. I’m not even sure that the proper bar of excellence is even a “US drafting purist”. A good patent practioner in the US should take into account not only case law, but the needs of the client in regards to how the application fits into his business strategy, and takes into account where the case is going to be filed. Other considerations should at times trump the rules of “drafting purists”, whatever that may mean.

  55. Anon – you seem to be thinking about strategies for amending claims to broaden coverage using multiple dependencies, I was thinking more along the lines of preparing the application for a sucessful prosecution. But your point is well taken.

    -Z

  56. Z thanks but No.

    What if the PCT, written in the USA, fails to disclose what specific technical effects are delivered by which specific technical features? Legally, I can’t make good that deficiency, even one day after the PCT filing date, even if I knew what features deliver which effects. In practice, of course, I don’t know. Nor does the Examiner, with US drafted stuff.

    But if you put all that stuff in, you offend US drafting purists, don’t you?

    So, how about a twin track system, in which you file non-pro for the USPTO on the same day as you file PCT for ROW. You give each app its own specification, different from the other.

    Or is even that going to get you into trouble, when the US patent gets litigated?

  57. “If you’re talking about a vehicle, refer to “the vehicle 10.” I agree with this. However, there are instances when I want to make comments about “the invention” that broaden the invention, without saying what exactly I am referring to (i.e. a vehicle 10), where that word works well. Again, it has to be used judiciously. In those instances, I disagree that using the term is legalese, its just being done for a legal purpose.

  58. “do they have to be compatible? Can’t the foriegn associates just amend the application as needed (without adding new matter) to take into account their local jurisprudence?”

    No. The EPO has strict requirements for amending the claims. If the particular combination isn’t already in the claims, it is almost impossible to get your amendments using a typical US-style specification.

    One strategy may be to draft a United States case with a load of multiple-dependent claims with varying layers of abstraction, combinations and alternatives all present in the claims. File that spec with a preliminary amendment for US-style claims, but file the original spec in the EPO.

  59. Referring to the term “invention,” Zarkonan states, “Really, *if used properly*, there is no risk. I prefer it on the broad principle of reducing unnecessary legalese in my practice of law.”

    What is the term “invention” if not legalese? It adds nothing. If you’re talking about a vehicle, refer to “the vehicle 10.” If you truly want to reduce legalese, stop saying “the invention.”

  60. MaxDrei – do they have to be compatible? Can’t the foriegn associates just amend the application as needed (without adding new matter) to take into account their local jurisprudence?

    -Z

  61. Can optimal drafting for the USA be compatible with optimal drafting for ROW?

    For example, does anybody have an easily assimilated and compact instance of perfect American drafting style

    (such as: never say in the specification what the “invention” is, nor why the inventor favours particular technical features)

    losing out at the EPO?

  62. After reading the opinion, it seems clear the written description did not use “the invention” properly given recent case law.

    -Z

  63. Not sure that the best take home is “So long as you never use the word invention, all will be well”. I should have thought that the right take home is that, with drafting, you don’t get a second chance. Those paying for drafting services should be aiming to pay for “Get It Right First Time” quality. Quality drafters are just as important as quality litigators.

    In any First to File jurisdiction, of course, this has always been a “given”.

    Has the CAFC come under foreign influence? Rader CJ, for example, is very often over in Europe, debating patent law.

  64. I vacilated between using “invention” judiciously and not using it at all. I finally came down to using it. Really, *if used properly*, there is no risk. I prefer it on the broad principle of reducing unnecessary legalese in my practice of law. The advantage is it is clear and easily understood by inventors, and any attempts not to use it or some replacement word, like “disclosure”, just adds a layer of unneeded confusion.

    For example, instead of saying “”in a preferred perspective of the present invention, one embodiment shows”", as suggested above, I would say “An example of the present invention includes…”. I think the use of simple language offers better understanding to inventors and juries.
    -Z

  65. My inner claim-drafting coward agrees w/ bb, but, man, “invention” is one hard word to avoid.

    In describing a specific feature, probably better to refer to just a specific “embodiment,” but even then “invention” is implied since the embodiment is an embodiment of the invention.

    After all, the invention is what you’re claiming.

  66. No, don’t use the word “preferred”, don’t even use the word “invention”. There’s no need, it can only harm you, and does not confer any advantages.

  67. in most of the cases, the practioner would like to use the term “in a preferred perspective of the present invention, one embodiment shows…….” to avoid possible limit to the scope of the invention. others, you tell me.

  68. There are a number of valuable refresher lessons in this opinion — like, beware the loose use of “the invention”.

    — Here, the specification frequently describes an “intraluminal graft” as “the present invention” or “this invention,” indicating an intent to limit the invention to intraluminal devices. —

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