Judge Plager: “The Walls Surrounding the Claimed Invention [Should] be Made of Something Other than Quicksand”

Enzo Biochem and Yale University v. Applera Corp. (Fed. Cir. 2010)

The district court initially held Enzo’s patent claims invalid as indefinite because of the ill-defined term “not interfering substantially.” On appeal, the Federal Circuit reversed — finding that the someone of skill in the art “would understand what is claimed.”

Applera requested a panel rehearing and rehearing en banc which the Federal Circuit recently denied. However, as part of that denial, Judge Plager penned an important dissent — arguing that indefiniteness law should be given more teeth and that claim construction commands too large of a role in the litigation process.

“In my view, this court’s definiteness doctrine could go considerably further in promoting that objective than it currently does, with the not inconsequential benefit of shifting the focus from litigation over claim construction to clarity in claim drafting. . . . The court now spends a substantial amount of judicial resources trying to make sense of unclear, over-broad, and sometimes incoherent claim terms. It is time for us to move beyond sticking our fingers in the never-ending leaks in the dike that supposedly defines and figuratively surrounds a claimed invention. Instead, we might spend some time figuring out how to support the PTO in requiring that the walls surrounding the claimed invention be made of something other than quicksand.”

PatentLawPic990Read the full dissent here:

Judge Plager: I respectfully dissent from the denial of the petition for panel rehearing on the question of indefiniteness.

Despite the varying formulations that this court has used over the years in describing its “indefiniteness” jurisprudence . . . , the general conclusion from our law seems to be this: if a person of ordinary skill in the art can come up with a plausible meaning for a disputed claim term in a patent, that term, and therefore the claim, is not indefinite. At least not so indefinite as to run afoul of the statutory requirement that claims shall “particularly point[ ] out and distinctly claim[ ] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, second paragraph.

The corollary derived from this understanding is that if several persons of ordinary skill come up with competing but plausible interpretations of a disputed terms is typically the case with competing “expert witnesses” in patent infringement litigation—the problem is not one of an inherently ambiguous and potentially indefinite claim term, but rather the problem becomes simply one of picking the “right” interpretation for that term. Since picking the “right” interpretation—claim construction—is a matter of law over which this court rules, and since the view of the trial judge hearing the case is given little weight, so that the trial judge’s view on appeal becomes just a part of the cacophony before this court, it is not until three court of appeals judges randomly selected for that purpose pick the “right” interpretation that the public, not to mention the patentee and its competitors, know what the patent actually claims. The inefficiencies of this system, and its potential inequities, are well known in the trade.

The United States Patent and Trademark Office (“PTO”), by contrast, appears to be taking steps to give the statutory requirement real meaning. In 2008, the patent examining corps was given a five-page instruction on “Indefiniteness rejections under 35 U.S.C. 112, second paragraph.” The memo initially observes that “[t]he primary purpose of the definiteness requirement for claim language is to ensure that the scope of the claims is clear so that the public is informed of the boundaries of what constitutes infringement of the patent.” The memo reviews in detail a recent opinion of this court, following which the memo states the position of the PTO: “If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpre-tation then a rejection of the claim under 35 U.S.C. 112, second paragraph, is appropriate.”

This memo was followed later in the year by a rare precedential opinion issued by the Board of Patent Appeals and Interferences (“Board”) in Ex parte Miyazaki. The Board noted that this court has in post-issuance patent infringement cases held “that the definiteness requirement ‘does not compel absolute clarity’ and ‘[o]nly claims “not amenable to construction” or “insolubly am-biguous” are indefinite.’” Recognizing that this court has never set forth a different standard of review for indefiniteness under 35 U.S.C. § 112, second paragraph, for pre-issuance pending claims as compared with post-issuance patent claims, the Board concluded that the Federal Circuit’s reading of the indefiniteness requirement was counter to the PTO’s broader standard for claim construction during prosecution. Accordingly, the Board announced that, “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.”

The Board is clearly right in recognizing that the circumstances are different between pre-issuance and post-issuance application of the definiteness standard with regard to claim terms. At the same time, the PTO and the Board are clearly right in insisting that, if the public notice function of the patent law is to be honored, claim terms must particularly point out and distinctly claim the subject matter of the invention. In my view, this court’s definiteness doctrine could go considerably further in promoting that objective than it currently does, with the not inconsequential benefit of shifting the focus from litigation over claim construction to clarity in claim drafting.

To begin the discussion of how this court could move in that direction, I would grant the petition for panel rehearing. The court now spends a substantial amount of judicial resources trying to make sense of unclear, over-broad, and sometimes incoherent claim terms. It is time for us to move beyond sticking our fingers in the never-ending leaks in the dike that supposedly defines and figuratively surrounds a claimed invention. Instead, we might spend some time figuring out how to support the PTO in requiring that the walls surrounding the claimed invention be made of something other than quicksand.

I respectfully dissent from the loss of that opportunity through the panel’s denial of rehearing.

Substantially: As a claim limitation, “substantially” is being used less frequently than ever before. The chart below shows the percentage of issued patents that include “substantially” as a claim limitation. The data is grouped accourding to the patent issue year. (For the 1980’s and 1990’s, I grouped the data by decade.)

PatentLawPic991

PatentLawPic992

 

 

 

80 thoughts on “Judge Plager: “The Walls Surrounding the Claimed Invention [Should] be Made of Something Other than Quicksand”

  1. Bingo, ping! It’s a prong-3 issue. The claim is not invalid under 112 of paragraph 6, it just does not get the benefits of paragraph 6.

    Once again, IQ=6 is clueless.

    Claim 2 is not definite because of identical scope? Hmmm…does Paragraph 6 structural equivalents — which Claim 1 gets but Claim 2 doesn’t — affect the scope? Chiuminatta v. Cardinal Indus.; Markman, etc.

  2. MPF: A great example of tortured logic…

    Don’t blame me, I didn’t draft the statute.

    The statute says how to interpret the claim. Once you follow it, all you’re left with is structure. If that displeases you, take it up with Congress.

    Max: But on a theory of claim differentiation, that can’t be.

    Max, is claim differentiation a rigid and unyielding rule in Europe? I thought it was merely a guideline of construction. Surely it’s still possible to draft claims that are differently-worded but have the same scope (as in Babel Boy’s example, contrived though it is because of the bizarre US statute involved).

    Max: In polyglot Europe, such a claim damages clarity, and brings nothing of value.

    In the US you might also get a 112 rejection for presenting two claims having the same scope.

    More amusing is the case where you present a MPF independent claim (limited to the corresponding structure), and a dependent claim that recites “wherein the means comprises just enough structure that it’s not MPF anymore” that winds up being broader than its parent claim.

    Such are the joys of having a ridiculous and counter-intuitive statutory provision originally enacted to save a claim format that nobody needs because one can always explicitly claim the corresponding structure – it’s right there in the spec. The only actual reason I can think of why 112 6th even exists is to save all the MPF claims in already-issued patents that couldn’t be amended anymore.

  3. Depending on the precise way this was worded I likely would have

    So let’s take something not part of the hypothetical, and lacking the actual wording necessary to make a legal position and state a legal position for rejection. Arms tired much, 6?

    Then let’s have the blimy brit agree with this nonsense.

    nullified part of the breadth of the limitation by then including a different version of the same limitation which has different boundaries

    If you have different boundaries, then you have a different limitation. Plain and simple.

    that you cannot combine the words “means for” with recitation of structure. Is he right?

    Just as you can have elements of a claim that are non-MPF along with elements that are MPF, the use of the structure dictates how to understand the claim. Your claim 2 is not read under the MPF 112 6 guidelines.

    From MPEP 2181 I:
    A claim limitation will be presumed to invoke 35 U.S.C. 112, sixth paragraph, if it meets the following 3-prong analysis:
    (A)the claim limitations must use the phrase “means for” or “step for;”
    (B)the “means for” or “step for” must be modified
    by functional language; and
    (C)the phrase “means for” or “step for” must not be modified by sufficient structure, material, or acts for achieving the specified function.

    Since the dependent claim is considered to have different elements than the independent claim, and each claim is independently reviewed as to whether that claim invokes 112 – 6, the elements of claim 2 do not meet the MPF guideline C. Contrary to 6, this does not mean that the claim is indefinite. 6, try picking up the MPEP before throwing out your gee-whiz insights. Ya might want to review section 2100.

    As for the linguistic 6 and “discover”, perhaps Babel Boy wonder was using the word in the (C)onstitutional (S)ense.

  4. Thanks Babel, 6. I have always wondered about how much value such a claim 2 adds, and whether it offends the objective of clarity. On the face of it, to my alien eye, claim 2 has the same meaning as claim 1. But on a theory of claim differentiation, that can’t be. So, I’m confused.

    In polyglot Europe, such a claim damages clarity, and brings nothing of value. You pay EUR 200 for every claim after the first 15. Claims like claim 2 ought to be struck out even before EPO entry.

  5. “or you have discovered that a known structure can perform a new function, then that is a point of novelty,”

    HAHAHAHAHAHAHAHAHAHAHAH try that sht and see how well it works out for you.

    “If you have discovered a new structure,”

    Where did you “discover” it? On a nature hike? In your buddy’s lab where he was working on it? Getting a patent on things you “discovered” is a risky business my friend.

    You need a trip back to lawlschool if you have gone once already. Focus on claiming practice this time.

    In the mean time, the CAFC needs to educate you fools on using functional language.

    “Examiner rejects Claim 2 on the “grounds” that you cannot combine the words “means for” with recitation of structure. Is he right? 10 bonus points: The examiner is IQ=6. T/F”

    I don’t know about examiner IQ=6, but I wouldn’t have rejected it on those grounds. Depending on the precise way this was worded I likely would have rejected the dep over 112 2nd for containing a broad limitation and a narrow version of the exact same limitation in the same claim. Essentially what you have in the dep is a recitation that according to 112 6th is ” expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof” which makes the claim “be construed to cover the corresponding structure, material, or acts described in the specification and EQUIVALENTS THEROF”, but you have nullified part of the breadth of the limitation by then including a different version of the same limitation which has different boundaries which goes against what the express language of 112 6th makes the claim be limited to. Thus, an indefinite claim.

  6. “Another point of confusion in this fascinating discussion (thanks Ned and INANE). . .”

    Meaning: thanks for the fascinating discussion, not thanks for the confusion.

  7. Another point of confusion in this fascinating discussion (thanks Ned and INANE)is the use of the term “old,” as in “. . .functional elements claim ONLY old elements.”

    The term “old” is surprisingly slippery. There are at least two issues to “known” aka “old.” First, structure that is known, and, second, the fact that that structure is known to do the claimed function. KSR really lights up this two-phase knowledge of structure AND its function in the context of 103.

    If you have discovered a new structure, or you have discovered that a known structure can perform a new function, then that is a point of novelty, and, yes, your MPF claim will include that point of novelty. It will not include structure that does the function if the structure is discovered downstream of the application, unless that strcuture falls within the DOE.

    It is possible for a specification to disclose multiple known structures, but some of those structures are not previously known to do the claimed MPF function. It is also possible for the specification to disclose completely new structure that does the function, along with old structure that does the function. These are all covered by the MPF — the new and the old.

    I see a MPF claim as an egg carton. In the spec you inventory as many individual structures as you can think of that perform the function — maybe some are new. Listing all those structures in the spec is equivalent to putting the structures in the carton. Then you merely claim the full carton without having to list its contents. It merely reduces the number of claims you have to write and pay for. But just because you disclose new structure for the MPF claimed function doesn’t mean that the MPF claim won’t cover it.

    When one says only “old” structure can be claimed by MPF, that use of “old” includes new structure disclosed in the patent. IOW, “old” is from the viewpoint of one who has read the patent, whereas usually “old” is restricted to everything known BEFORE the application was filed.

    With respect to MPF, the courts see as “new” that which is downstream from the patent, but not including the patent. They are trying to keep the monopoly from choking off after-discovered new structure for the claimed function.

    I think this is what INANE is getting at when he says all MPF actually recite pure structure.

    Real life practice problem: Specification discloses 4 known structures for a function. Claim 1 includes MPF for that function. Claim 2 is dependent and says (roughly): “. . . wherein the means for doing the function is chosen from the list consisting of . . .” and then lists the 4 structures disclosed in the spec. Examiner rejects Claim 2 on the “grounds” that you cannot combine the words “means for” with recitation of structure. Is he right? 10 bonus points: The examiner is IQ=6. T/F

  8. “If one cannot tell the scope of a claim with any reliability until the Fed lady sings, a claim is indefinite.” — Ned.

    What a chuckle. No, the show’s not over until the Fed Lady sings. But his view of claim scope don’t hold air — like it or not, nobody ever knows the scope of their patent until the Fed Lady sings.

    By analogy, nobody knows the actual metes and bounds of their property until a dispute arises and judgment is entered by a court of competent jurisdiction saying where the boundary is. No difference with patents — nobody really knows what they have until some judge tells them what they have, and, ulitmately, until the Fed Lady sings.

  9. Just to keep the pot bubbling:

    1. FA says to use “contains” to inform that there are no more components in there. Huh? Like in “This aircraft contains whisky”?

    2. I dislike “comprises” when it is used for something that can’t possibly be the entirety, like “His carry-on bag comprised whiskey” or “The preferred body comprises two feet”. For that task I prefer “include” and I reserve “comprise” for situations where it conceivably could be all there is.

    3. I never understood the special meaning of “consists essentially of”. It always strikes me as an even stronger statement of essentiality than “consists of”. But what the judges create, far be it from us to question, eh?

  10. INSANE/Mooney/Willton/Grimacing Clown

    “a statutory framework where functional claim elements are magically transformed into structural claim elements. As a result, the point of novelty can only be structural, because there are no functional elements left”

    A great example of tortured logic…

  11. Comprising ????
    It means “including” … as in, contains, but could have more stuff – how’s that ?
    I don’t see any reason why such a term is mushy.
    Further, it makes perfect sense that such a term is used in most P-applic’s.
    In addition to the vital and inventive components stated in a claim, there is almost surely the possibility for additional components/options.
    If one wishes to stress that the invention does NOT have more components, then one should use the word contains – and preferably note the reason in the Spec.

  12. I hope, IANAE, that you now understand that it was not simply the actual scope of the infringement which was the problem identified, but the ambiguity and breadth — at least when the claim is functional at the point of novelty.

    I understand all of that. 112 6th does away with all of those problems, by making the claim unambiguous, narrow, definite, and structural at the point of novelty. It is no longer the case that “many other devices beyond our present information” will fit the claims, and nobody is reasonably “frightened from the course of experimentation by broad functional claims” because the claims are neither broad nor functional as a matter of law.

    functional claim elements were permitted provided they claimed only old elements. It cannot have been the intention of congress to abrogate that law,

    Of course it was the intention of Congress to abrogate that law, because Congress created a statutory framework where functional claim elements are magically transformed into structural claim elements. As a result, the point of novelty can only be structural, because there are no functional elements left.

  13. IANAE: from Halliburton:

    “The language of the claim thus describes this most crucial element in the “new” combination in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus. We have held that a claim with such a description of a product is invalid as a violation of Rev.Stat. § 4888. Holland Furniture Co. v. Perkins Glue Co., 277 U. S. 245, 277 U. S. 256-257; General Electric Co. v. Wabash Appliance Corporation, supra. We understand that the circuit court of appeals held that the same rigid standards of description required for product claims is not required for a combination patent embodying old elements only. We have a different view.”

    Note, MPF were sanctioned by the lower courts for combination claims embodying old elements only.

    This is the law that Section 112, p. 6 “restored;” as Federico commented that the intent of Congress was to restore the law regarding functional claiming to its state prior to Halliburton. Prior to Halliburton, MPF claims could only functionally claim old elements as stated by the Supreme Court.

    In Halliburton, the Supremes then held the claims indefinite:

    “Under these circumstances, the broadness, ambiguity, and overhanging threat of the functional claim of Walker become apparent. What he claimed in the court below, and what he claims here, is that his patent bars anyone from using in an oil well any device heretofore or hereafter invented which …performs the function….[T]here may be many other devices beyond our present information — or, indeed, our imagination — which will perform that function and yet fit these claims. And, unless frightened from the course of experimentation by broad functional claims like these, inventive genius may evolve many more devices to accomplish the same purpose.

    I hope, IANAE, that you now understand that it was not simply the actual scope of the infringement which was the problem identified, but the ambiguity and breadth — at least when the claim is functional at the point of novelty.

    But this is not the case when the functional elements claim ONLY old elements. That was the law up until the Halliburton case — functional claim elements were permitted provided they claimed only old elements. It cannot have been the intention of congress to abrogate that law, but to simply clarify that such claims remained allowable while not sanctioning the kind of claims condemned in Halliburton.

  14. Some of the decreasing trend in the use of claim terms such as “substantially” and “about” may be due to the fact that these terms are more often used in the chemical, pharmaceutical, and similar arts–areas which probably have garnered a decreasing percentage of the total patents issued in the identified years.

  15. Their concern was the apparent coverage.

    Where in the decision do they say so? From what I can tell, their objection is to claims that define the invention in functional terms, and 112 6th makes that decision obsolete except for single means claims.

    as the lower courts HAD used the Westinghouse rule of construction which is effectively the same as section 112, p. 6.

    Before 112 6th, a 112-6th-style construction couldn’t save a claim because you couldn’t know till you got to court whether you would get that construction. Now, the statute permits only that construction, so as soon as you see the word “means” the claim is easy to construe.

    If one cannot tell the scope of a claim with any reliability until the Fed lady sings, a claim is indefinite.

    With means plus function claims, you can reliably tell the scope. You look in the spec and see what structure it discloses, and that’s your scope. That’s exactly the problem that 112 6th is meant to solve.

  16. IANAE, I don’t think their primary concern was what the claims covered, as the lower courts HAD used the Westinghouse rule of construction which is effectively the same as section 112, p. 6.

    Their concern was the apparent coverage.

    This is Judge Plager’s concern as well. If one cannot tell the scope of a claim with any reliability until the Fed lady sings, a claim is indefinite.

  17. I’m sorry, IANAE, but I think the Supremes were concerned with the apparent broad scope of the functional claim in Halliburton.

    I think they were concerned with the actual broad scope of those claims. Didn’t you say that case predated 112 6th?

    Apparent scope is meaningless, if it’s only apparent to people who don’t know the law about what the scope of the claim actually is.

    But the Supreme Court finally and had enough. It declared the vice could not be cured by limiting the claims to the corresponding structure and equivalents when the claim was functional at the point of novelty, as such a claim would literally read on the future independent inventions of others.

    Claims that trigger 112 6th aren’t functional at all. They’re structural through and through. And definite, as long as some corresponding structure is disclosed.

    Even under section 112, paragraph 6, therefore, the claim cannot be functional at its point of novelty and still satisfy the definiteness requirement required by the Supreme Court.

    That’s because under 112 6th a claim can’t logically be functional at its point of novelty. Or at any other point. Any “apparently” functional language is actually a specific recitation of the corresponding structure in the spec. As a matter of law.

  18. I’m sorry, IANAE, but I think the Supremes were concerned with the apparent broad scope of the functional claim in Halliburton. In Westinghouse v. Boyden Power Brake, the Supremes were also confronted with a claim that literally read on the accused brake through functional claiming, but there created the rule that we now recognize as section 112, paragraph 6, when they construed the claim to cover the corresponding structure described in the specification and equivalents thereof. Consistent with the Westinghouse rule of construction, lower courts in Halliburton had construed its claim to cover the corresponding structure described in its specification and equivalents. But the Supreme Court finally and had enough. It declared the vice could not be cured by limiting the claims to the corresponding structure and equivalents when the claim was functional at the point of novelty, as such a claim would literally read on the future independent inventions of others.

    This vice identified by Halliburton is not cured by the rule of construction provided by section 112, paragraph 6 if the claim remains functional at its point of novelty. It was not an accident therefore that the drafters of the statute required that the “means plus function” element be part of a combination claim. Even under section 112, paragraph 6, therefore, the claim cannot be functional at its point of novelty and still satisfy the definiteness requirement required by the Supreme Court.

    So I hope you see, IANAE, that the issue is not whether the claim is novel, but whether the claim is definite. If the novelty lies in the combination, it makes little difference that the particular elements of the combination are old. It is therefore easy to understand why there is little vice in claiming old elements functionally as the invention does not lie in (and cannot lie in and should not lie in) the particular details of these old elements. Thus if I am claiming a picture frame comprising a combination of four pieces of wood secured at their respective ends by nails, where a picture frame was not known in the prior art, I could broadly claim the invention as a plurality a rigid support members arranged in a rectangular shape, and means for securing the respective support members to each other.

  19. 6 – your comments are rejected under sec. 112, second paragraph. Particularly, the use of the term “rtard” is indefinite. The term offers no standard for consistent interpretation and therefore does not delimit the metes and bounds of your comment. For example, is an “rtard” someone who thinks more slowly than the average population? Speaks more slowly? Is an “rtard” defined by some IQ level? Amendment of the term is requested.

    It is denied as the term has a meaning well known to those in the art.

    link to en.wikipedia.org

    see also in a more respected publication:

    link to encyclopediadramatica.com

    Furthermore, the specification clearly indicates the level of retardation in this case, as severe as it gets.

  20. I am actually inclined to disagree with Plager on one point. If his difference of opinion on indefiniteness didn’t keep him from signing Linn’s panel decision, this isn’t the right case to take en banc to decide the issue. Let’s wait for a result that depends on the distinction.

  21. So if I claim “A vehicle comprising a substantially opaque window and a clown with a mug” (and nothing more in the spec) it’s not anticipated by a prior published patent application decribing “A vehicle comprising a substantially opaque window and a clown with a mug”?

    That depends. What’s written on your mug?

  22. Linn’s dicutm that a claim cannot be both anticipated and indefinite. No case law cited, but pretty well reasoned. I’ve not heard that before.

    It’s a tempting line of reasoning, but it only really works if indefinite means “incapable of construction”. If there is no way at all to understand a claim limitation, obviously you can’t find prior art for that limitation.

    Say wha?

    So if I claim “A vehicle comprising a substantially opaque window and a clown with a mug” (and nothing more in the spec) it’s not anticipated by a prior published patent application decribing “A vehicle comprising a substantially opaque window and a clown with a mug”?

    I beg to differ. And the PTO would be right to invalidate the claim as anticipated by “A vehicle comprising a substantially opaque window and a clown with a grimace.”

  23. BB Actually, claiming “no detectable interference” might have been a very nice alternative. Clearly definite.

    Only if you specify the method of detection.

  24. Changing the law on indefiniteness is not the way to correct a process problem.

    Everyone on this board who whines about how KSR or Bilski or Ariad or whatever recent case has affected their prosecution practice would like a word.

  25. Judges want absolute clarity when such clarity cannot be provided. That is why the specification includes a written description and drawings.

    If there is a process problem with the meaning of the claims being determined too late in litigation, that should be addressed directly. Changing the law on indefiniteness is not the way to correct a process problem.

  26. Seems to me the big news in the Enzo case is Linn’s dicutm that a claim cannot be both anticipated and indefinite. No case law cited, but pretty well reasoned. I’ve not heard that before.

    It’s a tempting line of reasoning, but it only really works if indefinite means “incapable of construction”. If there is no way at all to understand a claim limitation, obviously you can’t find prior art for that limitation.

    If a claim is indefinite because it could mean one of three different things, it could still be anticipated if you find all three of those things (or one of them, depending on how you define anticipation) in the art. If a claim is indefinite because you can’t tell how broad it is, it can still be anticipated by prior art that is clearly within the narrowest possible scope.

    Actually, claiming “no detectable interference” might have been a very nice alternative. Clearly definite.

    Only definite if you specify what manner of detection would detect the substantial interference but miss the insubstantial interference. Otherwise, the claim will favor whichever party bears the burden at trial of upping the resolution of the detector.

  27. If the novelty lies in the corresponding structure, the combination claimed is old. This effectively is a single means claim.

    I’m trying to figure out whether that’s a contradiction or merely a non sequitur.

    If novelty lies anywhere within the claim, the combination (if a combination is claimed) is novel.

    Also, once you have “the combination claimed”, you are claiming a combination, so it is a 112 6th claim and not a single means claim. Nor “effectively” a single means claim, whatever that means.

    Allowing a claim to have its novelty solely in the one element and particularly in the corresponding structure, permits the claim to literally read on all means for accomplishing the specified function regardless of whether the claim as construed as limited to the corresponding structure.

    You have yet to explain to me (and I’ve asked several times) why the clearly-incorrectly-construed scope of a claim should be relevant to anything at all. The only thing that matters is whether the actual legal scope of the claim is valid and infringed.

    Specifically allowing means plus function claims where the novelty lies in the one element and in particular in the corresponding structure, would allow means plus function claims to represent the maximum height of indefiniteness and would seemingly fall afoul of the three Supreme Court cases previously mentioned.

    Except that it wouldn’t, because 112 6th makes means plus function claims definite, probably more definite than most structural claims that make it through the PTO.

  28. “Those percentages should be adjusted for total patents issued each year. I might be wrong, but that could wipe out part of that trend.” — Michael F. Martin.

    Um . . . ‘cuse me, Mike, but a percentage IS adjusted for total. That’s why it’s used.

    Seems to me the big news in the Enzo case is Linn’s dicutm that a claim cannot be both anticipated and indefinite. No case law cited, but pretty well reasoned. I’ve not heard that before.

    As for the “substantially” weasel word issue this discussion is embarrassingly over-simplified. As Linn points out by implication, using weasel words with functional limitations is different than using them with measurements or comparisons.

    If you don’t uses a WW with a measurement or comparison, you are negligent. If your claim says, “wherein said first rod is the same length as said second rod,” you ought to lose your license. Any infringer beats the claim by making the second rod 2 mm shorter. Landis, for one, makes this point very clearly.

    Enzo is about using weasel words to modify functional limitations, which is a harder call.

    If Enzo claimed the linkage group simply as not interfering with hybridization, then they would have opened themselves to an infringer who brings in an expert arguing to the jury that the accused linkage group is not infringing because it shifts a p-orbital and this would cause some undetectable interference in hybridization, but interference nevertheless. If the expert is good looking and the jury is mostly women, Enzo loses.

    By claiming “no substantial interference” you avoid this fight because the infringer would have to prove substantial interference — a de minims p-orbital wobble gets wonked. (If you can say that 5 times fast, we’ve got a place for you on CNN.)

    Actually, claiming “no detectable interference” might have been a very nice alternative. Clearly definite. I’ll bet similar, more definite weasel words can be found in most cases requiring functional wobble.

    But my main theme is that it’s not very helpful to be wanking on about weasel words without narrowing the discussion to their use in measurements v. their use in function.

  29. Well, the Supreme Court has always been adverse to overbroad claims. They have ruled against functional claiming, imposed requirements of written description of the invention and of enablement, required the disclosure of the best mode and have generally required claims to be clear and definite.

    The Federal Circuit jurisprudence represented by its interpretation of section 112 paragraph 2, as generally allowed claims to be anything but clear and definite. The decision in In re Donaldson is a prime example of its total disregard for these central principles laid down by the Supreme Court for 200 years. It is high time, in my opinion for the Federal Circuit, to take the issue of indefiniteness en banc, in particular due to reverse In re Donaldson.

  30. IANAE, form over substance. If the novelty lies in the corresponding structure, the combination claimed is old. This effectively is a single means claim. Any drafter an masquerade a single means claim by adding old elements. Allowing this would simply eviscerate the statute.

    The vice the Supremes were trying to prevent in Halliburton is a claim that literally covered, due to its functional claiming, future independent inventions of others. They had the same concern in O’Reilly v. Morse and Westinghouse vs. Boyden Power Brake. Allowing a claim to have its novelty solely in the one element and particularly in the corresponding structure, permits the claim to literally read on all means for accomplishing the specified function regardless of whether the claim as construed as limited to the corresponding structure.

    Now judge Plager is concerned with indefinite claims that do not clearly point out and distinctly claim the invention. Specifically allowing means plus function claims where the novelty lies in the one element and in particular in the corresponding structure, would allow means plus function claims to represent the maximum height of indefiniteness and would seemingly fall afoul of the three Supreme Court cases previously mentioned.

    And don’t remind me of In re Donaldson. That case must be reversed as recommended both by the AIPLA patent law committee and the American bar Association intellectual property Law section.

  31. Silly: “Give me the claim and I’ll find multiple plausible interpretations for multiple claim terms. If you can’t do it, you’re just not trying hard enough. Litigators do it easily all the time.

    Literally no claim would be valid under Plager’s standard.”

    While not entirely agreeing with you, I substantially agree with you.

    That is one of the biggest problems in patent law, and lead to tremendous expense for those other than the patentee. The burden should be squarely on the patentee, and the patentee shouldn’t be able to float some vague stuff out there and leave everybody else to figure it out.

  32. The likes of Rader STILL think that novelty can lie in the corresponding structure and not in the combination

    I understand your concern that single-means claims are not covered under the 112 6th construction rule, but I don’t understand why you think there is or should be a rule about where in the duly-construed claim the novelty has to lie.

  33. Perhaps with a proper motion by the defense, a judge construing the claims would have three options: the POs construction, the infringer’s construction, and a box labelled, “incapable of construction.” If he ever checked that, the claim would be indefinite.

  34. Posted by: Gene Lee | May 28, 2010 at 03:09 AM

      “Therefore, one radical solution would be to statutorily change the process of claim interpretation of claims drafted in newly submitted applications, so that all claims are interpreted similarly to means-plus-function claims. Giving patentees what they actually disclose in the specification, plus equivalents, would not only reduce the amount of resources spent on claim construction during litigation, it would also likely reduce much of the time spent in prosecution haggling over claim terms, rather than substantively determining the scope of the prior art and the point of novelty of the invention.<

    Even MPF have problems:

    1) The likes of Rader STILL think that novelty can lie in the corresponding structure and not in the combination (effectively, a single means claim in combination form); and

    2) There is no clear limit on how much of the corresponding structure is incorporated: all of it to the minutest, irrelevant detail, or only that which is necessary?

    Both are major problems with current MPF jurisprudence that would make the recommendation unworkable.

  35. Plager J. is clearly trying to offload some of the CAFC workload onto the PTO.

    And I totally agree with him. The PTO should have some affirmation from the CAFC regarding the Board’s “2 or more plausible claim constructions” formulation.

    I can’t tell you how many times I’ve been asked to look at a patent, only to find that, in my opinion, it was indefinite under 112 at the time of grant under a “2 or more plausible claim constructions” formulation, yet definite under 112 under an “insolubly ambiguous” formulation.

    In authoring an opinion, doing the “solution” work required by the “insolubly ambiguous” formulation is incredibly time-consuming and uncertain. It would be MUCH easier to have the PTO do it, as they have direct access to the inventor and others, and can therefore more easily develop the solution.

    More economical, more certainty, better serving of the public notice function. Better all around.

    But does the PTO really need affirmation of the Board’s test by the CAFC? It would be nice, but is it worth the time, effort, and expense of a CAFC proceeding?

    I think so–let’s get some certainty going from the CAFC.

  36. raygrogan,

    “comprising” is dropping too since, due to the huge id1ot contingency (who, BTW, recently received encouragement from the Federal Circuit), “comprised of” has now slithered into use, even though those who know better still don’t use it.

    But Mooney thinks its OK. He also thinks stuff “reads on” claims.

  37. “…in litigation the question may arise as to which shade of red? Brick red? Fire engine red? Watermelon? ”

    What about Salmon, Mooney prefers salmon.

    Not that there’s anything wrong with that.

  38. “Substantially” is clear enough if that is what this case hinged on.

    The court spent a substantial amount of resources trying to construe it.

    What part of that don’t you understand?

  39. Definite doesn’t have to mean narrow, you know.

    So how much “breadth” means over-broad? What does “breadth” mean in relation to “definite”?

    How many meanings does the word “is” entail?

    Not too skinny, she’s not too fat
    She’s a real humdinger and I like it like that

    Step 1: draft better claims.
    - I can think of several separate and distinct interpretations of what “better claims” means…

    Plager himself hints at this!

  40. If judges didn’t spend time doing analysis, then what would we be paying them for?

    We need unclear claims to justify all those judges’ salaries. We also need people to keep committing crimes, because those judges are tenured and they’re going to be paid regardless.

    Incidentally, what do you pay your patent agent for?

    Plager, why don’t you spend some time figuring out how to provide the patent community with a comprehensive approach to claim construction

    Step 1: draft better claims.

  41. “The court now spends a substantial amount of judicial resources trying to make sense of unclear, over-broad, and sometimes incoherent claim terms. Instead, we might spend some time figuring out how to support the PTO in requiring that the walls surrounding the claimed invention be made of something other than quicksand.””

    If judges didn’t spend time doing analysis, then what would we be paying them for? Plager,
    why don’t you spend some time figuring out how to provide the patent community with a comprehensive approach to claim construction instead of bitching about how hard your job is.

  42. However, when You’re given the broadest unreasonable interpretation in prosecution and then the narrowest reasonable interpretation at trial and all equivalents are taken away, there’s a huge hole in the process.

    All the more reason to draft a claim with only one reasonable interpretation.

    Definite doesn’t have to mean narrow, you know.

  43. If the doctrine of equivalents still existed, then no one would argue with him. However, when You’re given the broadest unreasonable interpretation in prosecution and then the narrowest reasonable interpretation at trial and all equivalents are taken away, there’s a huge hole in the process.

  44. Ken: Clims need be no more clear than to provide notice, as required by the Constitution to place one on notice of what behavior is prohibited.

    It’s not true that they need be “no more clear than” that. They also need to be as clear as required by the statute, as that statute is interpreted by the courts. So basically, if Plager convinces one other judge on some other panel that his opinion is what “distinctly claim” means, that’s how clear claims need to be.

    On reflection, a claim that can just as easily mean two things doesn’t seem all that distinct. How distinct is a trademark that could just as easily mean two different companies?

  45. 6 – your comments are rejected under sec. 112, second paragraph. Particularly, the use of the term “rtard” is indefinite. The term offers no standard for consistent interpretation and therefore does not delimit the metes and bounds of your comment. For example, is an “rtard” someone who thinks more slowly than the average population? Speaks more slowly? Is an “rtard” defined by some IQ level? Amendment of the term is requested.

    NB – for purposes of prior art rejections, the term “rtard” is interpreted to mean a period of slower tempo in music, i.e., ritardo. Your insults are thus obvious over any well-known piece of music.

  46. If indefinite terms like “substantially” are dropping, how is the flagship of mush “comprising” doing?

  47. Malcolm,

    This may shock you coming from me, but I frankly agree with Plager’s dissent. The “definiteness” requirement of paragraph 2 of 35 USC 112 should be enforced more strictly than Federal Circuit precedent might suggest. I also agree with you that there’s nothing inherently wrong with the term “substantially.” But terms like “substantially” which are relative should be defined carefully in the patent specification (as should other key claim terms) so that the meaning of the term is clear to at least the PHOSITA, especially in the context of the claimed invention.

    I also wouldn’t mind a more stringent “enablement”/”written description” requirement under paragraph 1. As I’ve expressed before, 35 USC 112 should be the initial screen for poorly defined inventions (including the claimed method in Bilski), not 35 USC 101.

  48. Oh Buddy Oh Buddy,
    They told you what to do.
    And just because you did it,
    they all make fun of you.

    You could have told me something.
    Like how they foiled your plan.
    But instead you folded up your Tent,
    and ran, and ran, and ran.

  49. It is often said that the legislature makes the law, the executive enforces it, and the judiciary interprets it. If things were always black and white, there would be no need for judges. Most of what judges do is interpret things that are indefinite, like statutes, contract terms, and of course, claims. If Judge Plaget is uncomfortable with that, he needs to be in a different line of business, like math (except maybe statistics).

  50. Plager does an excellent job of describing the problem of the overemphasis on claim construction during litigation, and the overemphasis on claims in general. However, while putting more ‘teeth’ into 112 paragraph 2 would help, there are better solutions.

    Real patent reform would de-emphasize the impact of poor (or clever, depending on your point of view) claim drafting by increasing the emphasis placed on providing a thorough disclosure in the written description. Doing so would align with the spirit and purpose of the patent system, which is to reward inventors for what they actually disclose and share with the public, as opposed to what their attorneys are able to clever carve out by clever or vague claim drafting. Our current emphasis on claims encourages rent seeking and doesn’t provide enough incentives that actually connect the scope of patent coverage to the actual invention disclosed.

    Therefore, one radical solution would be to statutorily change the process of claim interpretation of claims drafted in newly submitted applications, so that all claims are interpreted similarly to means-plus-function claims. Giving patentees what they actually disclose in the specification, plus equivalents, would not only reduce the amount of resources spent on claim construction during litigation, it would also likely reduce much of the time spent in prosecution haggling over claim terms, rather than substantively determining the scope of the prior art and the point of novelty of the invention.

  51. Give me the claim and I’ll find multiple plausible interpretations for multiple claim terms. If you can’t do it, you’re just not trying hard enough. Litigators do it easily all the time.

    Literally no claim would be valid under Plager’s standard.

  52. Clims need be no more clear than to provide notice, as required by the Constitution to place one on notice of what behavior is prohibited.

  53. “More scrutiny by the PTO could be helpful. My concern about more scrutiny by the courts is the high price of invalidity over an issue that can be so subjectiive and arise only in hindsight. ”

    If you’re not a rtard then you can write pretty mother fin definite claims. Although, I do admit this might be an issue for the majority of attorneys. I freely will admit that.

  54. “This phrase alone is not at all clear and susceptible to multiple constructions.”

    LOLOLOLwtfffffffff?

    “This phrase alone is not at all clear and susceptible to multiple constructions. As several have pointed out, any word/phrase/sentence/paragraph/book can be interpreted multiple reasonable ways, ”

    Give me multiple interpretation of:

    The commenter “Plager for the wtfffff” is a rtard.

    Go ahead, give me more than one plausible interpretation. I’m waiting.

  55. “having multiple plausible interpretations”

    This phrase alone is not at all clear and susceptible to multiple constructions. As several have pointed out, any word/phrase/sentence/paragraph/book can be interpreted multiple reasonable ways, but surely this standard isn’t saying that all claims inherently indefinite. But the standard purports to sweep more broadly than one that invalidates claims that are susceptible to no plausible interpretation (i.e., is insolubly ambiguous and not amendable to constructions). Maybe the standard actually is trying to invalidate claims with plain language alone that is susceptible to reasonable constructions that, in view of the specification and knowledge in the art, are implausible (undisclosed, non-enabled, or whatever). It isn’t helpful to advance a standard for indefiniteness that is indefinite itself.

  56. More scrutiny by the PTO could be helpful. My concern about more scrutiny by the courts is the high price of invalidity over an issue that can be so subjectiive and arise only in hindsight. You know parties in litigation will argue over any issue they think could impact the outcome, making mountains out of molehills or creating indefiniteness where there was none.

    An attorney may draft claims that he thinks are definite – he knows what he means. It is difficult to read and evaluate your own work objectively for clarity, because you know the intended meaning. If the Examiner doesn’t raise any questions about definiteness, the applicant may not even realize the possibility of a problem until litigation

    During prosecution, “red” may seem like a very clear term, but in litigation the question may arise as to which shade of red? Brick red? Fire engine red? Watermelon? Is “red” now indefinite because the cla doesn’t specify this nuance that didn’t matter during prosecution?

  57. Some applicants intentionally draft claims, and secure a patent, having terms that can be interpreted with multiple meanings, knowing very well that the Federal Circuit’s lax indefiniteness doctrine will provide them with an opportunity to more easily shape the claim scope during litigation. It amazes me how the Federal Circuit engages in selective mental gymnastics at times to give meaning to a claim term. If there are several plausible interpretations, one would think that this inherently means there’s some indefiniteness.

  58. If judges disagree on interpretation, this is strong evidence of indefiniteness.

    It scares me that you are now essentially suggesting that appellate judges should have veto power on invalidity as well as unenforceability.

    On IC, the matters are entirely different. If there are two reasonable explanations, one supporting IC and the other not, the rule ought to be and I believe is, that there is no intent to deceive.

    Get yourself an agent who is good at rationalizing before they’re all snapped up by the big evil companies!

  59. Well, Malcolm, I wrote in the other thread that I agreed with Plager. We need more robust law on indefiniteness. If judges disagree on interpretation, this is strong evidence of indefiniteness.

    On IC, the matters are entirely different. If there are two reasonable explanations, one supporting IC and the other not, the rule ought to be and I believe is, that there is no intent to deceive.

  60. There’s nothing wrong with the term “substantially” per se. In the case at issue, the problem was that the term was not defined in a way that would allow one skilled in the art to determine if they literally infringed (or if the patent was invalid) except to take the case to court for a Markman hearing. If, for example, the term had been defined objectively (e.g., “substantially means within 5% of value X, as measured using standard technique Y”), there’s no indefiniteness there, even if it may seem to be the case at first glance.

    With respect to those numbers, looks like the peak is right around 1998-2002, i.e., bubble time …

  61. Year No. of Claiming Substantially, Approximately, Generally, or About
    2010 27184
    2009 53718
    2008 51496
    2007 53533
    2006 60387
    2005 52537
    2004 60868
    2003 64934
    2002 64902
    2001 66883
    2000 64557
    1999 63611
    1998 60807
    1997 47865
    1996 47439
    1995 44820
    1994 46400
    1993 45523
    1992 46122
    1991 46136
    1990 43446
    1989 46677
    1988 38324
    1987 41402
    1986 36102
    1985 36623
    1984 34604
    1983 29319
    1982 29936
    1981 34235
    1980 32789
    1979 25954
    1978 35340
    1977 34376
    1976 36715

  62. Year – No. of Patents Issued
    2010 84964
    2009 167,349
    2008 157,772
    2007 157,282
    2006 173,772
    2005 143,806
    2004 164,290
    2003 169,023
    2002 167,330
    2001 166,035
    2000 157,494
    1999 153,485
    1998 147,517
    1997 111,984
    1996 109,645
    1995 101,419
    1994 101,676
    1993 98,342
    1992 97,444
    1991 96,511
    1990 90,365
    1989 95,537
    1988 77,924
    1987 82,952
    1986 70,860
    1985 71,661
    1984 67,200
    1983 56,860
    1982 57,888
    1981 65,771
    1980 61,819
    1979 48,854
    1978 66,102
    1977 65,269
    1976 70,226
    1975 72,000
    1974 76,278
    1973 74,143
    1972 74,810
    1971 78,317
    1970 64,429
    1969 67,559
    1968 59,104
    1967 65,652
    1966 68,405
    1965 62,857
    1964 47,375
    1963 45,679

  63. Michael – I think that the percentage is a better figure, but here are the raw numbers.

    Year No. that claim “Substantially”
    2010 15542
    2009 30620
    2008 29987
    2007 31079
    2006 35165
    2005 30472
    2004 34620
    2003 36474
    2002 36393
    2001 37624
    2000 36669
    1999 35934
    1998 34878
    1997 27358
    1996 27441
    1995 25932
    1994 26753
    1993 26315
    1992 26698
    1991 27238
    1990 25977
    1989 28100
    1988 23219
    1987 25237
    1986 21725
    1985 21713
    1984 20493
    1983 17089
    1982 17922
    1981 20284
    1980 19657
    1979 15443
    1978 21088
    1977 20850
    1976 22060

  64. Actually, the simplest way to make the adjustment is not to list a percentage at all, but simply the total number of patents that include the word in their claims each year.

  65. Re: “I’m glad someone important agrees with me that it’s ridiculous to have no idea of the scope of a claim until you’ve been to the court of appeal, the lower court judgment being essentially a wasted step in the claim construction process.”
    This reminds me of one of our local Federal District Court Judges. As he was walking away from the bench after a Markman hearing one day, he remarked for all to hear: “After all gentlemen, I’m just a whistle stop on the way to the Federal Circuit.”
    [But the other side of the coin is that some of his and many other D.C. claim interpretation CAFC reversals were clearly required.]

  66. “the PTO applies the broader of the two, ”

    LoL WuT does that have to do with anything? It quite often arises that both of the interpretations are equally, or nearly equally, as broad as one another but in different ways.

    “and the question of indefiniteness never arises.”

    Sure it does. Just because one interpretation may be a bit broader in one way doesn’t mean that the other interpretation isn’t also broader than the first in one or more ways. And they quite often are.

    “Should the PTO start caring whether a claim admits of a narrower interpretation than the BRI?”

    We already do unless that interpretation is wholly subsumed by the broader one, and even then we sometimes do. Note that such a situation is rather rare as the narrower version is usually broader than the broad one in at least some minute way even whilst being much narrower in others.

    “What should become of claims that have only one reasonable interpretation, when the patentee argues a second, unreasonable interpretation in court? Is that an admission of indefiniteness?”

    The court should deny such construction and as to the second question idk, but probably not.

  67. What should become of claims that have only one reasonable interpretation, when the patentee argues a second, unreasonable interpretation in court? Is that an admission of indefiniteness?

  68. “Claims cannot achieve absolute clarity. Language is not amenable to such precision. That is why we have math.”

    BS. I have plenty of claims that pass this 112 standard with flying colors. There happens to only be one distinct reasonable interpretation.

  69. I would be interested in percentage of patents whose claims include one or more of substantially, approximately and generally.

  70. IANAE Still, I’m glad someone important agrees with me that it’s ridiculous to have no idea of the scope of a claim until you’ve been to the court of appeal, the lower court judgment being essentially a wasted step in the claim construction process.

    And then there’s Ned who would like to do something similar with inequitable conduct findings, i.e., the “if one judge on the appellate panel buys the baloney, then the defendant has to eat it” test.

  71. I’m always in favor of more definite claiming. If you want your claim to have two arguable interpretations, you should be filing two specific claims rather than a single ambiguous one. Patent agents need to stop being afraid to say what they mean.

    I’m not sure how to get the PTO involved. If a claim has two plausible interpretations, the PTO applies the broader of the two, and the question of indefiniteness never arises. Should the PTO start caring whether a claim admits of a narrower interpretation than the BRI?

    Still, I’m glad someone important agrees with me that it’s ridiculous to have no idea of the scope of a claim until you’ve been to the court of appeal, the lower court judgment being essentially a wasted step in the claim construction process.

  72. Claims cannot achieve absolute clarity. Language is not amenable to such precision. That is why we have math.

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