An en banc rehearing is now pending before the Federal Circuit in the case of Therasense (Abbott) v. BD. The case focuses on questions of patent unenforceability due to the patentee’s inequitable conduct during prosecution. The court opinions focus on the actions of Mr. Lawrence S. Pope who was the attorney responsible for prosecution of the asserted patent. The district court held that pope “acted with specific intent to deceive” the patent examiner and the USPTO. Based on that finding, Pope has been investigated by both the PTO Office of Enrollment & Discipline (OED) and the Illinois Attorney Registration and Disciplinary Commission (ARDC).
There is no doubt that the finding of intentional deception has substantially and negatively impacted Mr. Pope. As a pro-active attorney, Mr. Pope (who is no longer with Abbott) attempted to intervene in the case to defend his own record. After receiving briefs on the motion to intervene, the Federal Circuit denied the request.
Writing as the motions judge, Judge Gajarsa wrote:
Pope asserts that he meets the standards for intervention, i.e., that he has a substantial interest in the appeal, that his interests will not be adequately represented by Abbott, and that intervention will not cause any undue delay or harm. . . . In Nisus Corporation v. PermaChink Systems, Inc., 497 F.3d 1316, 1319-20, 1322-23 (Fed. Cir. 2007), we affirmed a district court's denial of a motion to intervene by an attorney who had prosecuted a patent and who sought to challenge factual findings concerning his conduct that were related to a finding of unenforceability. We expressly distinguished Penthouse Int'l because it involved an attorney who sought to intervene after a district court sanctioned the attorney and directed the attorney to pay a sanction. In this case, Pope has shown no similar type of sanction. Nisus, 497 F.3d at 1319 ("Critical comments, such as in an opinion of the court addressed to the issues in the underlying case, are not directed at and do not alter the legal rights of the nonparty.").
Documents:
Simply referring to something as preferable gives you a little more leeway
How can you not understand from “preferred” or “preferably” a clear indication that a feature is optional? Nobody in real life ever describes required features as “preferred”, and even patent agents are trying to use it to mean “optional”.
If something is required and you don’t know (in the application as filed) that it’s required, you should think long and hard about whether you’ve actually invented the invention.
Seriously,
If you actually state something is optional, you are hosed. Simply referring to something as preferable gives you a little more leeway. And if you believe something is absolutely required, then you probably should use required.
Malcolm,
You mean gene patents?
Malcolm, as I said before and I will say it again, the major fault here was that the ‘551 patent appeared to claim a prior art sensor without a prior art membrane for use with blood where the patent itself has no explanation as to why this works. The district court judge explained that the reason this worked is because of the speed of the sensor. This speed increase occurred not only in the ‘551, but also in the prior art ‘382 patent. Thus, unless there was something else going on in the ‘551 that was neither described or claimed, the prior art ‘382 patent inherently had the same capability as the ‘551, even though it apparently had no examples.
When Pope began to emphasize the lack of a membrane in the ‘551 as his point of novelty, the examiner should never have allowed the case based either on 102 or 112 grounds. Negative limitations anyone? What are you guys in the PTO taught?
The affidavit included a PCT dated 1986 in which every example used with blood had a membrane.
*yawn*
We’ve been through this.
e judge said it made no difference given the increase speed of the sensors. But, was that appreciated at the time?
It certainly appeared to be, based on Applicants’ behavior before the EPO where the issue of the *requirement* (not preference) of membranes was raised and unambiguously rebutted bby the Applicant. See the claims that issued in the EP. See anything about membranes being required? Nope, and the claims aren’t limited to non-blood fluids. What about in the spec? Anything about membranes being required? Nope. On the contrary, membranes are merely “preferred.”
When you choose to use certain terms, choose them carefully, not greedily. Eventually you’ll learn this lesson, Ned. Or maybe not, given that you prosecute in the least credible and wankiest art units on the planet.
Malcolm, load of crap? The affidavit included a PCT dated 1986 in which every example used with blood had a membrane. It was not a load of crap at all.
Now the judge said it made no difference given the increase speed of the sensors. But, was that appreciated at the time?
Ned Depends on the context and what those of ordinary skill would understand the passage to mean.
When doing this analysis, can one of ordinary skill rely on what the patent applicant himself said to a foreign patent office when queried as to whether a membrane was required, and where the claims did not exclude live or whole blood?
The stated reason that it was preferred is that when the sensor was used with live blood, particles could break off the sensor and get into the bloodstream and/or the large constituents of the of the blood could foul the sensor. However the same considerations were not true when the sensor was used with respect to other body fluids.
The considerations are also not true when the sensor is used with live blood under typical conditions, as was brought forth at trial. In a a nutshell, the “stated reason” was revealed to be a pile of post-hoc horsecrxp.
when analyzing the specification for what it teaches, preferred can mean required.
Give me an example of such a context. In particular, give me an example of such a context where the prior art teaches all elements of your invention exactly except element X is “optional” whereas you teach in your specification that X is preferred (you never say “required”) but now you want to say that your invention is non-obvious because “X is actually ‘required'”. Give me a hypothetical set of facts that would allow you to argue this successfully without eating your foot.
Max, on your earlier point, I urge you to read the entire discussion on this point in Alsup’s opinion. The glucose sensor of the prior art EPO patent could be used in both bodily fluids and in live blood. In connection with the latter use, but not the former, it was stated that the membrane was preferred. The stated reason that it was preferred is that when the sensor was used with live blood, particles could break off the sensor and get into the bloodstream and/or the large constituents of the of the blood could foul the sensor. However the same considerations were not true when the sensor was used with respect to other body fluids.
In context, “optionally” clearly were refers to the use of the sensor with bombing fluids other than blood.
As noted by Lionell, they say something like preferred when they really mean required. It becomes mandatory, viz., required, only when claimed. Until then, applicants can avoid putting the limitation into the claim by using preferred.
But, when analyzing the specification for what it teaches, preferred can mean required. Depends on the context and what those of ordinary skill would understand the passage to mean.
Hah. Great question MM. Ned?
Ned given that patent drafters never use “required” if they can help it
“If they can help it”? What is that supposed to mean, Ned?
Ned, you write:
“this can be read that in the case of live blood, the membrane was not optional all all”
in which “this” is:
“Optionally in fluids other than live but, but preferably in the case of live blood”.
Sorry, not for me.
Mind you, I’m not the PHOSITA, the notional reader.
So, are you asserting that, in the case when a PHOSITA reads “preferably”, his brain understands that word as “not optional at all, at all”?
Is this Irish American, or what?
Malcolm, you may be right that if you read the EPO patent the way you do, the conclusion you draw is correct. But the phrase, taken in context, and not out of context, reads like this
“Optionally in fluids other than live but, but preferably in the case of live blood.”
Now this can be read that in the case of live blood, the membrane was not optional all all. Now, given that patent drafters never use “required” if they can help it, one had to go outside the specification to determine what the passage would mean to one of ordinary skill.”
“Patents are legal documents. Imagine you sign a contract with Mr. A and it says that you have a duty to perform X and Y, but perfo….”
“It’s also obvious that when you say something is “optional, but preferable”, you have *admitted* that the element is not required.”
Malcolm, Lionel said that too.
Hutz Like I said, it is obvious that all required elements are preferred.
It’s also obvious that when you say something is “optional, but preferable”, you have *admitted* that the element is not required. Patents are legal documents. Imagine you sign a contract with Mr. A and it says that you have a duty to perform X and Y, but performing Z is “optional, but preferable.” You perform X and Y and call Mr. A and ask for payment. Mr. A says “I’m not paying until you perform Z. Everyone knows that in this context ‘optional, but preferable’ means required. I was just trying to keep my options open when I wrote the contract.”
If Mr. A’s argument sounds incredibly stoopit to you, it should. And it should also sound incredibly stoopit to you if you are a professional patent attorney.
Just to be clear I meant “included a preferred element in a claim” at the time of filing.
“giant pile of horsecrxp.”
Kinda like you Mooney.
Lionel’s argument is critical to understanding why Pope’s argument that the prior art description that the membrane was preferred when used with blood meant to patent practitioners that the phraseology did not settle the issue, but that one had to resort to extrinsic evidence to determine whether in the particular circumstances the use of the membrane was considered by those of ordinary skill to be required. One simply couldn’t tell from the patent specification.
I read through most of the opinions (the inequitable bits) and one thing confused me (not dealing with inequitable conduct). It seems that a lot of the issues were “live” blood vs. “whole blood” in a testing procedure- which type would require a membrane or not. So I thought that maybe these were method claims- but since they are plain apparatus/device claims and the prior art taught both membrane and no-membrane sensors, isn’t the apparatus/device unpatentable because apparatus are not limited by the materials upon which they work? Maybe I need to read the whole thing again, with the patent and the reference printed out in front of me (I hate clicking between windows, I’m too used to paper, sorry trees).
I would like to see inequitable conduct issues addressed en banc by the Federal Circuit but I think I would have liked a somewhat closer case-because the inventor of the ‘382 patent disagreed with what the affiant wrote in the prosecution of the ‘551 patent (not sure about the number, sorry), that was a problem for me. Although I guess it is not clear if the inventor communicated that to Mr. Pope (or it’s clear and I missed it). If the inventor doesn’t agree with what you’re saying about his own patent, that’s not good. I have had the Examiner say “patent x teaches y” in rejecting my claims and when patent x is our own patent then we got the inventor of patent x to say “no, it doesn’t teach y.” Not sure why the research director got into it.
It is a very interesting case and even though things do not look so good for Mr. Pope, I still think there does need to be some mechanism to protect his rights in an inequitable conduct decision. Not sure what that is, maybe just being able to bring in his own lawyer during questioning? Because there are many cases that are not as close as this and I would be concerned for anyone whose livelihood is threatened by a charge of inequitable conduct.
Maybe an en banc decision on the right to intervene??
Oh and on the language issue with patent offices- I am about to file my English-language PCT application with SIPO (China) as the receiving office (so, umm, you can pretty much guess where I live). So you are pretty much 100% guaranteed to have a person for whom English is not the native language. It’s not just the EPO…
That’s as may be. But what if you are construing a document which does contain those troublesome words “required” or “preferred”. We are back to my question and, with respect, much as it is sound advice, it’s hardly an answer to say “Don’t use them in the first place”.
Lionel’s on the mark.
Max,
The view I have held, and the view I thought everybody else held was that it was desirable to avoid stating any element was essential, unless you were absolutely positive it was, especially where combining old art into new art.
You want to be very careful, in case an element has an equivalent you haven’t thought of. Like I said, it is obvious that all required elements are preferred.
In many cases, inventors produce a new product X with components ABCD and they have not really considered alternatives to those components. In many cases the inventor’s answer to a question about an alternative component may be “I can’t think of one” It would be a disservice to the client if I characterized components as being absolutely required when they were not.
One way to avoid this directly is to use language as functional as possible in the claim for each component – fastener, counter, user input terminal, etc.
Words like “must”, “required”, “essential”, and “necessary” have always been considered bad language to be avoided as much as possible as long as I have been working.
Lionel, can you comment on the view I hold (and which I thought everybody else had too) namely:
1) “X is Required” tells you that X is essential for putting the invention into effect, and
2) “X is Preferred” tells you that there are ways to realise the inventive concept without resort to X.
3) It matters which word you use, so that the definition of the invention in the claims, and the description of the invention in the supporting specification, are consistent and do not contradict each other. Also in the dependent claims: if one of them is directed to essential feature X, what does that do to the validity (enablement) of the independent claim from which it depends.
I know the answer in Europe but I’m just curious anout the USA.
Preferred definitely does not equal required but preferred subsumes required. All required elements are preferred, but not all preferred elements are required. That’s why it has always been the logical choice to characterize many elements as preferred rather than required. However, where a particular element is THE key distinction, you would want to state that it is required.
and sides – I ain’t conflatin no physical threat. Let’s stick to one point at a time, OK Sunshine?
Cause I asked first.
And I said what I said: You’ll have to cite some law for that.
How about you cite me some law that says that the USPTO or state bar *can’t
* sanction an attorney for lying to a foreign patent office. While you’re at it, cite me some law that says that the USPTO or state bar can’t sanction an attorney for threatening a foreign examiner with bodily harm.
Malcolm, agreed.
On a personal note, I have enjoyed our conversation here. We did not fully agree on every issue, but it was a good back-n-forth.
Thanks.
Ned Here Pope claimed a prior art sensor without a prior art membrane. He never articulated what it was that allowed this. His litigators never came up with a convincing theory either.
Gee, Ned. Maybe that’s because the entire theory of patentability of the “membraneless sensor” was a giant pile of horsecrxp. You really don’t think the apparent “incompetence” and the inequitable conduct findings are at all related? Think harder, Ned. You are almost there.
Malcolm, the problem with this case lies elsewhere. Remember Alsup’s point about the pencil and eraser? The sensor without a protective membrane is not an invention (or does not properly claim an invention) just as a pencil without an eraser is not an invention without more. A pencil that erases without an eraser might be patenable, but the invention is the means for erasing without an eraser. One cannot simply claim the result.
Here Pope claimed a prior art sensor without a prior art membrane. He never articulated what it was that allowed this. His litigators never came up with a convincing theory either.
So the answer to all questions is no. Pope appears to be borderline incompetent on patent law while at the same time being highly skilled in getting patents allowed.
Ned, assume all the facts about the prosecution are unchanged and public knowledge, except that the case settled before trial. If your best friend came to you and said he needed a patent prosecutor with experience in the field of metabolite sensors for a very important invention, would you recommend Pope?
Same question. Assume the trial happened, the IC issue was raised and litigated, but came out the other way, i.e., no finding of inequitable conduct.
Same question, with the actual facts as background.
Malcolm,
“I said what I said. It’s unambiguous.”
And I said what I said: You’ll have to cite some law for that.
I’m pretty sure it was clear that I wasn’t questioning the ambiguity of your statement.
What we have is an attorney being defamed in court and he has no legal recourse. Why?
Because the entire legal system would descend into chaos if you had a cause of action every time you were mentioned by name in a trial between two other parties who should be able to fully and freely present their case.
I suppose you are also against people voting on resolutions or by extension, even having the right to vote at all.
Now that you mention it, I’m not really a fan of that either.
IANAE, mobs? As in what happened in Paris during the Reign of Terror? That is what you think of juries?
I suppose you are also against people voting on resolutions or by extension, even having the right to vote at all. After all, they are just uniformed mobs.
INANE, on the civil rights issues, I think we really need to look on this as a civil rights issue. What we have is an attorney being defamed in court and he has no legal recourse. Why? Because of a “privilege” that has its origins in England.
But we have an understanding that our right to yell fire does not extend to doing so in a crowded theater. The privilege to defame third parties in civil cases should be limited in some fashion, such as by granting the third party the right to be heard. That is all that Pope asks here. Is his request all that unreasonable?
when the law is that there can be no other reasonable explanation and if appellate judges continue to explain just what those other reasonable explanations are, I would find it hard to accept that there was a willful intent to deceive.
The law is also that a majority vote at the appellate level carries the day. If two out of three say there is no other reasonable interpretation, there is no other reasonable interpretation. Subject, of course, to en banc review or Supreme Court review.
No evidentiary standard can override the requirement that a majority of the appellate panel find that the standard is met.
What we are seeing here is a pattern where IC is found where there are reasonable explanations for the statements.
Maybe someone should track down a credible witness to put forward those explanations. It would make them sound much more reasonable.
What I suggest is that juries decide the fact issues.
What I suggest is that large mobs of people selected because of how uninformed and manipulable they are should be deciding as little as possible.
IANAE, when the law is that there can be no other reasonable explanation and if appellate judges continue to explain just what those other reasonable explanations are, I would find it hard to accept that there was a willful intent to deceive. It throws our whole justice system into disrepute.
In the Taltech case, the attorney said that so and so seams were considered unacceptable in dress shirts. The facts showed that 5% of the PO’s dress shifts had the “unacceptable” seams. The court held the statements by the attorney to be false.
The dissent disagreed because the evidence was also consistent with a good faith believe that the seams were unacceptable. The de minimis usage in dress shirts actually supported this conclusion.
What we are seeing here is a pattern where IC is found where there are reasonable explanations for the statements. We really need to think this through a bit more. What I suggest is that juries decide the fact issues.
I said what I said. It’s unambiguous.
Even so, the moment one person finds a different way to misunderstand what you’ve said, that kind of destroys your point. There has to be unanimity, in my view.
Have I mentioned before what a wonderful idea it is to corral a dozen random people off the street and ask them whether the guy in the handcuffs should go to jail? It’s a glorious expression of freedom, and not in any way a completely outdated ritual that had its place when judges served at the King’s pleasure and today puts one’s rights at the mercy of your lawyer’s relative ability to psychologically manipulate the proudly-uninformed.
I don’t understand how you can fail to understand this.
What I don’t understand is how you can fail to understand the role of an appellate judge, and how that role differs from the role of a trier of fact.
What happens if this case goes en banc and from there to the Supreme Court? Unanimity all the way up? Now that one judge from the Federal Circuit panel has dissented, should that prevent the Supreme Court from finding inequitable conduct?
IANAE, if one juror holds out, the defense fails. PERIOD. I don’t understand how you can fail to understand this.
What this suggests, that in close cases such as this, that juries be used. The law requires that the applicant or his attorney have no reasonable explanation. If a jury unanimously hold that there is no reasonable explanation, then I would agree with it. However, where four judges have considered the issue and one disagrees with the others, as here, I believe we have a problem. There has to be unanimity, in my view.
ping So, Malcolm, you do be saying that the Office controls what is said from one person to a foreign entity?
I said what I said. It’s unambiguous.
IANAE, why are you thinking that all juries involve the standard of proof of “beyond a reasonable doubt.”
I don’t. You keep saying that inequitable conduct should not be found if even one person could reasonably reach a different conclusion. I keep telling you that’s the wrong standard.
the ACLU has no genuine interest in civil rights.
Are you still insisting that this decision somehow affects Pope’s liberty? When did this become a discussion about civil rites?
I take it Malcolm that you actually believe that the ACLU would have no interest in Pope. I suspect the reason is what I said all along, the ACLU has no genuine interest in civil rights.
IANAE, why are you thinking that all juries involve the standard of proof of “beyond a reasonable doubt.”
Most juries in civil cases still require a unanimous verdict. I am merely suggesting where there are two reasonable interpretations, that it is likely a jury would not be unanimous when the “law” requires there is only one reasonable interpretation. As such, the defense of IC would not prevail at all.
In England, prior to 1789, it was the “law” that issues of fact had to be tried to juries even if the cause of action was in equity. I do not recall a US Supreme Court case on point, but there must be a case somewhere in our history that dispensed with this practice and found it not in violation of the 7th Amendment.
So, Malcolm, you do be saying that the Office controls what is said from one person to a foreign entity?
You’ll have to cite some law for that.
ping This goes back to the ability to lie to a foreign office, cause the US don’t control what be said in a foreign office.
Of course, telling obvious lies affects one’s credibility generally, making it more difficult to persuade someone later on that you are telling the truth. Plus, it’s unethical. I don’t see why an attorney couldn’t (or shouldn’t) be disbarred for lying to a foreign patent office.
Had it been decided by a jury, I don’t think there would have been an unanimous verdict because there are two reasonable interpretations of what was said to the EPO. That was revealed when the one judge at the appellate level dissented.
Let me get this straight… you’re saying that even though it wasn’t a jury trial, we should infer what the jury would have decided based on the wrong standard of proof by the mere existence of a dissent at the appellate level.
And you still haven’t addressed the point that reasonable doubt is not enough to overcome “clear and convincing”. Or that “preferable means required” is not reasonable.
But the better solution is to give these kinds of cases to a jury in the first place.
Is it normal for witnesses to have the right to be questioned before a jury?
Malcolm, call the ACLU.
IANAE, the case here was decided by one judge. Had it been decided by a jury, I don’t think there would have been an unanimous verdict because there are two reasonable interpretations of what was said to the EPO. That was revealed when the one judge at the appellate level dissented.
The best recourse now would be to hear the case en banc. But the better solution is to give these kinds of cases to a jury in the first place. It is quite acceptable for a court to have a jury decided factual issues even where an issue is equitable and their presumably is no 7th Amendment right to a jury trial.
“he argued on the record the opposite of what he had argued on the record of a corresponding case”
Ima gonna pull a Maxie and make a comment without knowing here:
not quite though – the one was not “on the record” of the same office as the other, right? This goes back to the ability to lie to a foreign office, cause the US don’t control what be said in a foreign office.
Ned: there are reasons why jury verdicts in criminal cases have to be unanimous.
And even there, the reasons are tenuous and historical at best. Look at how many people believe Barack Obama is a Kenyan-born Muslim, and ballpark me the odds that twelve random people off the street will all know the difference between reasonable and unreasonable doubt.
Here, we’re working with a lower standard of proof, so actually a reasonable doubt is not enough, particularly in a minority of the panel. If the alternative were reasonable, surely a majority of the panel could be persuaded.
By the way, do appellate panels in criminal cases have to be unanimous too?
Ned: But the way this case is evolving is the solution I seek.
You think the existence of further appellate review means that panels should be unanimous?
Lionel: How did Mr. Pope act unethically or “with intent to deceive”?
In a jurisdiction where the file wrapper is sacred, he argued on the record the opposite of what he had argued on the record of a corresponding case. Which itself was the opposite of what the words actually said.
Lionel: there are many aspects of inventions that I have described as preferable, which as far as the inventors were concerned were required.
This isn’t complicated. There’s a clear difference between “I would never make/buy/sell one without a flux capacitor” and “it would not function without a flux capacitor”. The former is optional and preferred, the latter is required.
If something is required and you thought it was merely preferred when you filed the patent application, you might not be entitled to your filing date.
“as far as the inventors were concerned”
ref my comment at May 19, 2010 at 05:49 PM
me getsa be all scholarly again.
When you say preferable, you are generally giving up the ability to argue required later on, but there are many aspects of inventions that I have described as preferable, which as far as the inventors were concerned were required. As anything required would be preferable, I did not see a problem with it. This case highlights a problem with that approach.
How did Mr. Pope act unethically or “with intent to deceive”?
You know, Malcolm, one the reasons the Supremes take cases is that the circuits disagree with each other. One of the reasons they are taking THIS case en banc is the strong dissent of one of their members.
There is law. There is equity. There is, as well, doubt. When there is doubt, the courts recognize it and will address it.
I am not suggesting a formal rule here. But the way this case is evolving is the solution I seek.
IANAE wrote, “I can also back this up in the case of certain PTO examiners whose first language is clearly not English. Not only are they fastidious about amendments, but their broadest reasonable interpretations are often heavy on the broad and light on the reasonable.”
Oh! Oh! OH!
RED LETTER DAY!
HOW did it pass without comment or recorded notice that IANAE said something mildly non-complimentary to USPTO Examiners?
How?
How?
How?
“IANAE, somebody once told me that early US patents were printed in German. Hard to believe. Could it possibly be true?
”
That’s funny Max, someone told me that they were printed in Martian. Could that be true?
Malcolm, there are reasons why jury verdicts in criminal cases have to be unanimous. I am suggesting the same reasons apply here.
Yes, I got that part. But you will never succeed in presenting an argument for your proposal that will convince anybody who matters, much less anyone with half a brain.
Malcolm, there are reasons why jury verdicts in criminal cases have to be unanimous. I am suggesting the same reasons apply here.
The standard of proof is “clear and convincing” of an intent to deceive. The “law” is that intent to deceive requires, among other things, that the justification for the allegedly false or inconsistent statement be unreasonable. If, as it turn out, at least one judge on the court of appeals believes the statements are not false or inconsistent, then clearly the justification is reasonable. There can be no other reasonable conclusion.
If a Federal Circuit judge agrees that it is reasonable, that should, in my view, settle the issue.
Ah yes. The unanimous panel rule for finding inequitable conduct. Great idea, Ned. I can’t wait to read your amicus brief.
Malcolm and IANAE, all that is required is that the alternative interpretation be reasonable, not that it be right. If a Federal Circuit judge agrees that it is reasonable, that should, in my view, settle the issue.
Mooney, Alsup certainly did include Pope’d demeanor in his decision. I also offered my opinion that had Pope not appeared live, the case may have gone differently. Pope’s live testimony certainly had a major impact on the result in this case.
In contrast, the Feds judged the case on the record and at least one of them came to a different view. Could this have anything to do with the fact that the Feds did not listen to Pope in person?
IANAE, somebody once told me that early US patents were printed in German. Hard to believe. Could it possibly be true?
Just how far beyond the pale must an argument be before it is unreasonable?
I don’t know exactly where the line is, but I know for sure that “everyone knows that ‘preferable’ means ‘required'” is over it.
I’m surprised other patent agents haven’t strung him up in the streets already for trying to ruin the word “preferable” forever.
Ned: if a Federal Circuit Judge agrees that the argument is reasonable, isn’t this enough, by itself, to decide the issue?
News flash for Ned: Federal Circuit cases are decided by a panel of judges for a reason. Do you know what the reason is?
Ned, you may be right but, sadly, the ones who are unable to move on from their WWII mode are the little Englanders.
And that’s the reason why English won’t fly, on “the Continent”.
Think back to when the EU was being set up, immediately after the war. The continentals were begging the UK to participate. Had the UK gone in then, it would have made the Rules. Instead, as everybody today still remembers, it patronisingly declined to get involved.
The majority view here is that the minority interpretation is unreasonable.
Yes, more or less.
Judge Alsup decided the issue of reasonableness based on witness demeanor.
No, Ned, that is simply false.
Just how far beyond the pale must an argument be before it is unreasonable?
Farther than you will ever know, we can rest assured of that.
What is true is that there are two interpretations of the EPO prosecution. I read it the same way as the dissent in this case. The majority view here is that the minority interpretation is unreasonable.
Judge Alsup decided the issue of reasonableness based on witness demeanor. If the Feds on en banc rule decide this case on the same basis, that the lower court’s ruling is not clearly erroneous, I could accept that. But this discussion does raise an interesting issue.
Just how far beyond the pale must an argument be before it is unreasonable? Now, if a Federal Circuit Judge agrees that the argument is reasonable, isn’t this enough, by itself, to decide the issue?
but for one inconvenient fact: English is the language of the Brits.
Don’t let them find out it’s also the language of the Americans, or you’ll be lucky if the EU lets you continue to speak it.
Say, you guys got any examiners who speak Lojban?
Malcolm, obviously grey.
In yours, black and white.
Yeah, Max, you guys won WWI and WWII, and the rest of Europe will not forget or forgive.
Ned You see only trees. You cannot see forests.
What color are the forests on your planet, Ned?
Ned, English would have been adopted long ago as the single language of the European Union, but for one inconvenient fact: English is the language of the Brits.
Suddenly, the meaning of a simple phrase can change 100%.
No amount of context can make “optional” and “preferable” mean “required”. Particularly the context of Mr. Pope’s profession where one desperately avoids any implication that anything is required.
Avoids it like the plague, if you’re in the mood for irony.
IANAE, this case is a prime example of how any expression can be distorted if taken out of context. Suddenly, the meaning of a simple phrase can change 100%.
You guys who only see one side of this case are truly remarkable. You see only trees. You cannot see forests.
Max, more of you Brits need to learn German and become EPO examiners. (You also need to delete French as a required language for obvious reasons.) Perhaps you need a branch office in Great Britain.
So it really comes down to what one of ordinary skill in the art at the time would understand ‘382 to mean.
Specifically, it comes down to whether one of ordinary skill in the art would understand it to mean the exact opposite of what it said.
I’d have been very disappointed if they managed to slip that one past the trial judge.
Mooney, true, the “protective” membrane was not necessary for the purposes of controlling permeability with respect to certain chemicals.
But, THIS says nothing whatsoever about whether a membrane might have been necessary for a completely difference reason when the sensor was used with blood.
That is an entirely separate issue.
So it really comes down to what one of ordinary skill in the art at the time would understand ‘382 to mean. The affidavit filed was actually consistent with a ’86 PCT that similarly taught that protective membranes were always used with blood.
This explains the uniquely fastidious attitude which EPO Examiners have, towards prosecution amendments, and whether these amendments are smuggling “new matter” into the pending application. They find it difficult to judge. So would you, if you were examining an app in a language not your own.
I can also back this up in the case of certain PTO examiners whose first language is clearly not English. Not only are they fastidious about amendments, but their broadest reasonable interpretations are often heavy on the broad and light on the reasonable.
Mooney, can you sign up to that?
Yup.
I’ll try again, for Stuffer’s benefit.
In all the Patent Offices of the world, except the EPO, the language of the Examiner is the language in which the app is written, is the language of the prosecuting attorney.
Only in the EPO is the language of the app (English) NOT that of the Examiner (unless of course that Exr happens to be within the 9% of EPO employees with English as mother tongue).
This explains the uniquely fastidious attitude which EPO Examiners have, towards prosecution amendments, and whether these amendments are smuggling “new matter” into the pending application. They find it difficult to judge. So would you, if you were examining an app in a language not your own.
Does anybody (Stuffer?) still not get it? Mooney, can you sign up to that?