The Thesaurus of Claim Construction

Several years ago, Stuart Soffer told me about his claim construction thesaurus project. At the time, I thought that the result would be amazing, but that the project was clearly too ambitious. I was both surprised and happy when Oxford Press sent me the completed 1,000 page volume. The book, co-authored by Robert Kahrl (author of Patent Claim Construction), includes over 7,000 claim terms that have been construed by courts over the past decade. Following the introductory chapters explaining the source of definitions from the book and the process of claim construction, the book quickly jumps into the definitions. Here is an example:

Downloader: A computer that retrieves web pages and embedded objects from the internet. 6,864,904 (715/760) Filed: 2000. Girafa.com Inc. v. Amazon Web Service LLC et al. 07-00787 (D. De. September 15, 2009) Stage: Claim Construction.

I am quoted on the book cover as follows:

Claim language and claim construction are probably the most frequently debated legal issues in patent prosecution and patent litigation respectively. This book offers an invaluable resource and desk reference for parties to those debates.

Soffer maintains a database of the claim terms which he uses for his work as a technical expert.

Oxford Press has compiled an impressive group of practical patent law books. My problem with the series the cost Oxford lists the book at $295. Amazon sells them for $270

 

87 thoughts on “The Thesaurus of Claim Construction

  1. 86

    I can well imagine a judge, somewhere in the world, baulking at it.

    Nice. (It won’t happen, but the pun is appreciated, nonetheless.)

  2. 85

    Don’t know, but it is a pet dislike of mine, that patent attorneys unthinkingly use “comprising” when “including” is the only proper word. Who but a patent attorney would write that (say) a baseball team “comprises” a pitcher? I can well imagine a judge, somewhere in the world, baulking at it.

  3. 84

    15 or 20 years ago I was told that a court in Australia had construed the word “comprising” to mean something opposite to what we mean in the US. Does anyone know “comprising” is still a problem in Australia or what happened with that case?

  4. 83

    I haven’t studied the patent, but it strikes me that the argument about saving metal seems phony. The purpose of the redesign is to eliminate scuffing of the can top in the beads. The solution was the redesign of the chuck and can top so that the chuck would not have to enter the reinforcing beads. That was the invention.

    That this invention could reduce metal usage in two different ways was an “advantage” of the invention.

    So, the bottom line is this: so long claims call for the chuck to press against the flatten can top flange and not enter the bead, I think the claims are sufficient and supported. Whether the bead is narrowed or not seem irrelevant.

  5. 82

    Excellent question. I think the ultimate answer is this: is C2”’ the equivalent of either C2′ or C2″. If not, the claim to C2 literally covers subject matter neither disclosed nor enabled.

    The Supreme Court has been very clear that this violates the principles behind section 112, paragraphs 1 and paragraphs 2. See, e.g., O’Reilly vs. Morse, Westinghouse vs. Boyden Power Brake and Halliburton vs. Walker Processing.

    The Federal Circuit has been less clear on the principles behind its written description jurisprudence. The question they pose is whether the inventor had possession of the invention claimed. They seem rather unconcerned with whether the claim covers subject matter not the equivalent of anything disclosed.

  6. 80

    Do it, man.

    I’ve gone half a day already without taking the bait. Only 6 1/2 more to go. 😉

    It’s a good feeling.

  7. 79

    I predict that unless I join you in this nonresponding then it will have no effect.

    Picture this: 6, being dragged by his horse, attached only by his foot entangled in one stirrup, the horses hooves dancing upon his head, yells out to the rest of the horsemen, “Wait for me, me too, me too.”

    And the roundup of those who think O themselves way way too highly continues. Chuckles, chuckles and more chuckles.

  8. 78

    I predict that unless I join you in this nonresponding then it will have no effect. It would also be more effective if others would jump on the bandwagon as well.

  9. 77

    “if a claim explicity covers an embodiment not described, it may be enabled, but it may also violate the written description requirement”

    Ned, what do you mean by “explicitly?” Do you mean “literally” as opposed to “equivalently?”

    I think that is an important question, because the proposition that claims are invalid under 112 if broad enough, under the Doctrine of Equivalanets, to cover an undescribed, but enabled, embodiment necessarily conflicts with the existence of any Doctrine of Equivalents. And while tghe DOE has been whittled down to a nub by the CAFC, the Supreme Court has asserted the existence of the DOE time and again, and will surely eventually breathe life back into the DOE. But even in its diminished state, DOE does still exist. So I presume that you mean that the claim is invalid if the literal scope is broad enough to cover subject matter enabled but not described.

    In addition to this concern about literal versus equivalent claim scope, I am concerned about use of the word “comprising” to allow the claim to read on devices, etc., that have additional features not recited as limitations in the claim. How can it be the case that a claim broad enough to cover an undescribed embodiment is invalid for lack of written description? If that were the case, there could be no dependent claims. So the 112 written description requirement obviously can’t mean that. It must mean that a limitation recited in the claim is not described in the spec.

    What then happens int he following circumstance:

    Spec describes A + B + C, where C can be a C1 or a C2, and that C2 can be a C2′ or a C2”.

    Originally filed Claim 1 is to A + B + C.
    Dependent claim 2 specifies that C is a C1.
    Dependent claim 3 specifies that C is a C2.
    Dependent claim 4 specifies that C2 is a C2′.
    Dependent claim 5 specifies that C2 is a C2”.

    During prosecution the applicaiton issues after the applicant amends the claims to the following form to overcome a prior art rejection asserting a reference that shows a C1:

    Independent Claim 1 is to A+B+C2.
    Dependent claim 2 specifies that C2 is a C2′.
    Dependent claim 3 specifies that C2 is a C2”.

    Now C2 has no range of equivalents due to prosecution history estoppel.

    The patentee then asserts claims 1 and 2 against a competitor manufacturing a device exhibiting A+B+C2”’.

    Notice that C2”’ was not described in the patent application, and that C2 is categorically broad enough to cover it literally. What happens to the claim 1? What if C2”’ did not exist at the time the specification was filed. What if it came into existence after the application was filed, but before the application issued? After it issued? What do you think is fair in these situations?

  10. 75

    Something about the applicant being their own lexicographer speaks against any successful “standardization.”

  11. 74

    lamenting a lack of sparring partners

    Maxie – grab a clue – it be the opposite of what be “lamenting.”

    The sparring partners simply be too much for the A_$$____s who be way way too full O themselves.

    Ask yourself this: how many of my questions were actually answered by the handwaivy fluffy crowd? These peeps dont want “sparring,” they want a soapbox from which they (and only they) can pontificate and be otch about what they want.

    It be chuckle city ta compare the methods used – like mocking cancer survivors and making sexual innuendo slurs – and yet they set themselves up as high priestesses O the Blog Comments.

    The irony is simply scrumptious.

  12. 73

    but it has worked in the past to quiet down self-absorbed commenters who’ve clearly lost their way.

    Ya know what worked better? The Bilski decision. Sunshine hid for like a month.

    I’ll tell you what. I’ll not respond to a comment from pingaling for a week

    Wont happen – Sunshine simply be way way too full O himself. Somethin about that self appointed job at the edge of the rye fields (and the hopes of an old professor takin him in)

  13. 72

    One can’t just hang up, but if readers want to reduce the number of anonymous abusive calls to this site, from bored people lamenting a lack of sparring partners, the next best thing might be simply to choose not to respond in writing to their postings (whatever pseudonym they are currently using).

  14. 71

    IBP Fair enough, but ping casts a cloud over the entire blog. Maybe you should try ignoring him/her for a while.

    You think that will work? Really?

    I think Dennis needs to find his bottle of anti-ping spray and do some disinfecting. That’s obviously only a temporary solution, of course, but it has worked in the past to quiet down self-absorbed commenters who’ve clearly lost their way.

    I’ll tell you what. I’ll not respond to a comment from pingaling for a week and we’ll see if the poor schlub changes his behavior detectably. Bets?

  15. 70

    You just dropped 7 posts in a row and every one of them was directly about yourself or me.

    Correction – EVERY one be about me.

    What else is there?

    And in yet another sterling example of your counting abilities – four on this thread and only one of those abouts you.

    Must be more O that I told you see I told you 28 times method….

    (Someones needs a new GREAT BIG COMPUTER BRAIN.

  16. 68

    Even better lolz

    specially since most of those were not dropped at you Sunshine, but rather at wtvlfdt.

    Are you confessing that you and he are actually the same?

    That would be great lolz there (and make sense)

    MED CHECK !!! – Sunshine might be bifurcating here.

  17. 67

    says the sock puppet whose original moniker was Cave Man.

    Lolz – And I thought you were Cave Man (I sure aint)

    Mayhaps weza need ta get Cy involved.

  18. 66

    Mooney–

    Ping, with his various internet personalities, is a basket-case.

    Why you continue to respond to him/her is a marvel. You must know who he/she is, and have some issue that you need to play out on this blog.

    Fair enough, but ping casts a cloud over the entire blog. Maybe you should try ignoring him/her for a while.

  19. 65

    Meltdown?

    Yes, I think so, pingaling. You just dropped 7 posts in a row and every one of them was directly about yourself or me.

  20. 64

    “…but the idea of Sunshine dwelling in the basement…” says the sock puppet whose original moniker was Cave Man.

    “Sir Anon,…”

    Talking to your own sock puppets now?

    Forget what I said about needing help. You’re way past that point.

  21. 62

    Sir Anon,

    Perhaps it is time for you to take a break from commenting

    Dont be downin my chuckles by trying to turn Chowder Boy away from his new BFFs.

    In fact, every time Chowder Boy posts under his current moniker, the chuckle wagon roars into high gear.

    A little historical observation be in order. The moniker “what’s the view like from down there” originated in a little pitter-patter dispute by that poster with Sunshine! Not sure who had first alluded to Sunshine as the Jaime persona in Silence of the Lambs, but the idea of Sunshine dwelling in the basement stuck and the moniker asking the question was a derision of Sunshine (throw in the living in his mother’s basement for good measure).

    The sublime chuckle factor bein that that question aint be needed ta be asked anymore – Chowder Boy be down in the basement with Sunshine, and thus knows only too well what the view is like from down there.

    Sunshine making fun of cancer survivors, past jokes about sxx with dead presidents, and now Chowder thowin sxxual-predator type charges about…(and without a clue as to how he appears) – this be high entertainment!

    Let the good times roar.

  22. 61

    This frustrates ping.

    And you see how ping takes out his frustration.

    So to the extent you defend pingaling, you really are defending a clown show. Probably 80% of his comments or more are unintelligible drivel and name-calling in response to any post by his perceived “enemies.

    Project much, Sunshine?

    prosecution and examination of software claims

    Ohh lookie – a windmill disguised as a “serious” topic (insert Lolz here)

    you really are defending a clown show…name-calling

    And here I thought Sir Anon was chastising Chowder boy for sinking to the level of namecalling

    As our Fav Prez used to say, “Well, there you go again

    Meltdown?

    More like a chuckle fest – see above (and below, and here – chuckles all around!)

  23. 57

    As my BFF’s Malcolm and…

    Not sure where you got this impression, View, but it’s probably best left scratched on the bench outside of your high school.

  24. 56

    I know, right. How funny is it going to be when the evening news shows the tape of ping’s perp walk after the authorities discover the bodies buried under his front porch and the clown suit at the back of his closet?

  25. 55

    As my BFF’s Malcolm and 6 would say, chillax, sockie.

    That’s no sockie, wtvlfdt, that’s my best pal Noise. How have you been, Noise?

    Cue conspiracy theory “observation” from ping in 5, 4, 3, …

  26. 54

    Anon If you think that I champion Ping because you do not realize how bad you look in sinking to the depths of such insults, then perhaps Ping is correct.

    Anon, you do understand that ping’s goal is to turn the comments into a ‘train wreck’, don’t you? He’s been at it for years, under various guises. The reason being is that if Dennis closes the comments then certain viewpoints expressed in the comments (e.g., viewpoints about inequitable conduct and the prosecution and examination of software claims) will no longer be expressed.

    Ping knows, you see, that certain viewpoints expressed by certain commenters here have made their way into case law — case law that was not favorable to ping’s agenda. Those views have had an impact. This frustrates ping.

    And you see how ping takes out his frustration.

    So to the extent you defend pingaling, you really are defending a clown show. Probably 80% of his comments or more are unintelligible drivel and name-calling in response to any post by his perceived “enemies.”

    It’s extremely sad. But also true. Watch and see — another meltdown is on the way, guaranteed.

  27. 52

    If you think that I champion Ping because you do not realize how bad you look in sinking to the depths of such insults, then perhaps Ping is correct.

    Perhaps it is time for you to take a break from commenting, as your lack of judgment is showing.

  28. 51

    How dxmb is pingaling? Dude is so dxmb he thinks he owns the phrase “chuckle-worthy”.

    DAAFR

  29. 50

    Okay, make it a 1,000 yards for the creepy internet stalker guy and his Anon champion.

  30. 49

    500 yards away from elementary schools.

    Congratulations – you have achieved Mooney level of crassness.

    I don’t think Ping minds the insults, but you should. The one being more insulted is the one resorting to such a tool.

  31. 48

    You must be very lonely since that law was passed requiring you to stay more than 500 yards away from elementary schools.

  32. 47

    Quote reprise:

    If that makes me sad, how much more sad does that make you?

    specially now that you done taken to copying me (hmm, Sunshine did with his comment on chuckles – is this something for the BFF trio ?)

  33. 45

    Well, it seems I’ve gotten myself a little follower. So nice to have a groupie.

  34. 44

    wtvlfdt,

    So you’ve taken the immediate time to respond to your lack of response, and now that I have even given you time to form a substantive response, you fail.

    Must be getting kinda hard ta keep preachin when your soapbox is so shabbily put together.

    But hey, ya can always hang out with your BFF’s who never need substance either.

  35. 43

    Ned, I’m not sure we have two independent inventions here.

    I have not read the transcript but my intuition tells me that the shallower angle not only saves metal but also lets the rotatory chuck get a better grip on the can lid. Now, with that better grip, you no longer need to get the chuck ridge inside the annular recess of the lid, so you can make that recess narrower, and thereby save a bit more metal, in addition to that which you saved by resorting to the shallower angle.

    So, you can contribute to the art with the shallow angle even without the ridge-free recess. But you can’t run with the old steep angle when you try to make the recess ridge-free.

    So claim the shallow angle in claim 1, and add the ridge-free recess in a dependent claim.

    A discussion with the inventor, prior to drafting, about which technical features deliver which technical effects, might have sharpened up the drafting, no?

  36. 42

    Nice dodge, Chowder Boy.

    Anytime ya wanna answer (unless ya be copying my Homey dont do answers hook – but you can at least make the observation that you done copy my hook), feel free to actually address any of the actual issues thrown your way.

    Otherwise, I will just keep sharpening my pointy stick and keep making you dance.

  37. 40

    Yet ya cant resist me…(but still not respond with anything of substance)

    If that makes me sad, how much more sad does that make you? (sharpens pointy stick for prompting another dance)

  38. 39

    It seems that this case raise the very same issue as did Phillips: if there are two different inventions disclosed, such as in Phillips where the baffle could be either load bearing or bullet deflecting or both, or as here a the where the sealing cap had both a flatter angle at the flange and but also had narrower stiffening beads, does the claim (as construed?) have to include features of both “embodiments.”

    Both cases came out the same way, but the issue is worth exploring in some depth. The dissent in this case had a good point that there was no disclosure of any embodiment of the one without the other. Further, there appear to be testimony in this case that the invention would not work without both. Were they really independent?

  39. 38

    So you’re up at 11:16 PM playing internet tough guy and you get up the next morning and run to your computer to see if anybody’s responded to you?

    You’re even sadder than I thought.

    You may want to reevaluate your priorities. Try making some friends. Maybe spend some time with your family.

    You need help.

  40. 36

    Maxie-poo,

    And I am surprised that you even think that “I’m surprised, ping,that you can’t see that there is a link between“.

    I gave no such indication. I did not question this at all. Why are you making stuff up?

  41. 35

    Max, Perhaps it’s the choice of language between you and I that divides us. We do not claim embodiments. Rather we claim the essential limitations of an embodiment, or embodiments, so that any other embodiments made by an infringer that have these essential limitations is an infringement. If this is what you mean, we agree.

  42. 34

    Here is Similar Story

    I’ve not yet had a chance to see it, but the Thesaurus of Claim Construction, by Robert L. Kahrl and Stuart B. Soffer, looks as though it might be of substantial interest to patent litigators both in the United States and quite possibly beyond it. The first-named author is a practice leader in Jones Day’s IP practice and a seasoned litigator; the second-named author runs an IP consultancy and has academic credentials too.

  43. 33

    I have replied above, to Ned. I’m surprised, ping,that you can’t see that there is a link between i) a requirement to show in the app on the filing date that the inventor was “in possession” of the claimed invention, and ii) a requirement that prosecution amendments be devoid of new matter. Never mind though. It keeps the thread going. Staves off boredom. That’s the main thing, eh?

  44. 32

    Can we agree that the function of a claim is to define the invention and mark out the prohibited area, in which unlicensed practice is an infringement? Can we agree that ignorance of the patent and the patentee’s product is no defence to the charge of infringement? Can we agree that a patent system is not a system exclusively to restrain copying, that if copying were themischief, copyright would be enough?

    In that sense, claims are to exclude others from an area and that describing in detail every conceivable embodiment lying within the excluded area is not a requirement for validity.

    If the drafter could envisage and describe how the competitor would realise in material form the inventive concept disclosed by the patent, then copyright would be enough.

    This is why I say that the mission of claims is to cover embodiments of the protected inventive concept not described in detail in the spec. Why weird, or even contentious Ned? Seems uncontentious to me, even banal or trite.

  45. 31

    Even sadder.

    Yep – for you. But let’s hear some witty substance on the actual point made above by Paulie – O wait, you done given up substance in order to hang with your new BFF’s.

  46. 29

    Now that’s just sad.

    On the contrary, it be exceedingly exquisite. Specially given your pontificating on the other thread.

    The irony be deliciously yummy, the nuances be superb.

  47. 28

    “ping said in reply to ping…”

    Now that’s just sad.

  48. 27

    Sigh – wtvlfdt be too busy slapping it up with his new BFF’s to even take note of this important concept.

    Ya think he might actually try to quicken his perceptions by realizing just what the point was on the other thread. Nah, he loves bein all obtuse.

  49. 26

    “This Thesarus is dangerous food for the examining corps for those of us who are patent prosecutors.”

    The sky is falling!!! The sky is falling!!!!! Run for your lives!!!!!!

  50. 25

    A claim of a utility patent has no other function than to cover stuff that is NOT described in detail in the spec.

    Maxie – you are more deranged than I thought.

    PS – we here in the States also have a “No New Matter” rule, but that aint got nothin to do with the subject of this thread.

  51. 24

    Wow, another axxhole sockpuppet. Li’l pingaling following in Caveman’s footsteps … nobody could have predicted!

    Well, you cant, cause that aint me.

    But since ya be the Expert at sockpuppetry, we’ll just get you and Cy Nical on the yet another case of a sockpuppet conspiracy mystery theory.

    Cy, ya up for some fun?

  52. 23

    LOL, when specification writing becomes “standardized,” then we can get trained monkeys (like Mooney) to write specifications.

    Wow, another axxhole sockpuppet. Li’l pingaling following in Caveman’s footsteps … nobody could have predicted!

  53. 22

    OMFG:

    Paul, you really have to read In re Morris. The PTO won that case because they relied on prior court cases construing “integral” in other contexts.

    This is the ESSENCE of BRI. It is BRI in motion, in action, in reality. It is what plagues us in the patent office today. The examiner must justifiy his BRI, and this provides him just that ammunition.

    This book is dangerous to the extent it permits BRI to wander even farter away from the context of the specification.

  54. 21

    Max, “You say you agree that claims which cover embodiments not described are vulnerable under the WDR. But why, all those years ago, did we decide we needed claims at all? A claim of a utility patent has no other function than to cover stuff that is NOT described in detail in the spec.”

    Max, all I can say to this remark is that to an American it appears very weird.

    If you look at the cases from the early 1800’s, we had a problem without claims. We could not the distinguish old from new. See, e.g., Evans v. Eaton, 16 U.S. 3 Wheat. 454 454 (1818), link to supreme.justia.com. So, in the 1836 Act, we added claims for THAT purpose, to identify the parts and features of the specification that were new.

    Over time, the Supreme Court adopted rules to make claims more specific to oppose attempt to claim results (O’Reilly v. Morse) or machines functionally (Westinghouse v. Boyden Power Brake and Halliburton), or artilces of manufacture in terms of the effect they produced, instead of what they were: Perkins Glue.

    As we have discussed many times, we tend to claim in the US at the boundary, to capture the principle, to lay claim to all that is enabled. The courts push back and require clairity. But, the purpose for claims harkens back to the original Eaton case as recently decided by Ariad. We need to point out and distinctly claim the parts and features of the specification that are the invention. As a corollary, the specification must describe these features.

  55. 20

    Ned I like written description cases because I agree that the issue whether the inventor was “in possession of” the claimed invention at the filing date is decisive to validity (at least in a First to File jurisdiction). The tool Europe uses is its prohibition on adding subject matter to an application during prosecution. Hence, the results in WDR cases are interesting for me to compare with EPO added subject matter cases. Two very different routes to the same objective.

    Especially in a FtF jurisdiction, we can’t allow a patentee to “improve his position” after the filing date.

    In Europe, issues of b) enablement and c) WDR are looked at in inter partes oppositions as the separate and distinct grounds of Art.100b “insufficiency” and 100c “added subject matter”. However, in the USA, enablement and WDR seem to get muddled up together.

    I just find it interesting to compare the two approaches.

    You say you agree that claims which cover embodiments not described are vulnerable under the WDR. But why, all those years ago, did we decide we needed claims at all? A claim of a utility patent has no other function than to cover stuff that is NOT described in detail in the spec.

  56. 19

    I definitely see this book as being more use to a patent application drafter than to a litigator.

  57. 18

    Paulie,

    Great post. Brilliant even. One of your best.

    However…

    This work sounds like a useful compilation if we understand and recognise what it is.

    Not. Likely. To. Happen. Witness the response of 6.

    On the plus side:

    It should never be forgotten that what is binding in precedent is the rule on which a particular decision was made. Factual findings are of no precedental value

    If only wtvlfdt can recognize this legal concept and (wisely) leave behind his new BFF’s, he might salvage a shred of his decency.

  58. 16

    This work sounds like a useful compilation if we understand and recognise what it is.

    It appears to be a compilation of constructions given to particular words in particular contexts on particular evidence and arguments.

    However, it is not apparent that any of the words will necessarily have the same construction in different contexts and on the basis of other arguments. In particular, the word “downloader” might have the meaning ascribed to it, or it might mean not a computer but a software routine forming part of a web browser programme for downloading web content: in any event what do we mean by a “computer” nowdays?

    And what do we do if we run across a word that is not in the dictionary?

    It should never be forgotten that what is binding in precedent is the rule on which a particular decision was made. Factual findings are of no precedental value, and a particular construction is inextricably tied to the fact matrix in which the construction was arrived at. So a potentially very useful book, a handy reference for students and a good starting point for developing arguments. But don’t go citing it in court.

    And beware showing it to your expert or you might have the following in your trial transcript:

    Q. What do you understand the meaning of downloader to be, Professor X?

    A. It is a computer that retrieves web pages and embedded objects from the internet.

    Q. Is that your own definition?

    A. No, my instructing attorney showed me it in that heavy book published by the Oxford people.

  59. 15

    I just be ruminating, but doesnt the “standard” of “without undue experimentation” kinda dictate that there need not be such a one ta one description as Dyk would have it?

    That be almost canonical.

  60. 14

    Max, if a claim explicity covers an embodiment not described, it may be enabled, but it may also violate the written description requirement. That is what I get from Dyk’s dissent, and in principle, I agree.

    I have the impression that you believe the WDR to be satisfied if the claim is enabled regardless of whether the claim elements are actually described in the specification in the combination claimed.

  61. 13

    But you can use this book as a reference to use readily defined words. In my time drafting descriptions and claims, I had to create a number of generic and specific terms. I could see this helping a novice drafter.

  62. 12

    Here is a similar story

    Judge St. Eve construed the terms of the patents-in-suit to internet technology. From a procedural standpoint, the Court did the parties and readers of the opinion the favor of identifying the Court’s construction in a bulleted list at the beginning of the opinion, as well as at the end. Lists of the construed terms and their construction opinions make claim constructions far more readable.

  63. 11

    “…can standardize the way specifications are written.”

    “standardization”, like consistency and predictability, are the hobgoblins of little minds. My standard for specification writing is that, at the end of it all, it’s enforceable. Heck, a lot of people thought “comprising” was the standard open ended term. Then the CAFC came along and said “comprised of” was OK too. So much for standards.

    LOL, when specification writing becomes “standardized,” then we can get trained monkeys (like Mooney) to write specifications. Until then, I’ll just keep typing away with my “unique skill set”. Now please pass the banannas…

  64. 10

    Dear Dennis, can we have a thread on Crown v Ball CAFC 2010-1020, a “written description” case?

    We see summary judgement (!) against the patentee for want of written description, reversed by 2 out of 3 at the CAFC.

    I think it had to be reversed, and the Dyk dissent came to the wrong answer. But I also think that Crown could have saved themselves an awful lot of bother if they had composed their “written description” in the European style, toggling between “technical features” and “technical effects”, that is, simply stating which features deliver which effects.

  65. 9

    You may not think this is important for claim construction in court, but it certainly is in the PTO. See, In re Morris, where prior constructions of “integral” were used to support the PTOs BRI against an inconsistent usage in the specification.

    This Thesarus is dangerous food for the examining corps for those of us who are patent prosecutors.

  66. 8

    Yes, but those dictionaries and thesari routinely DO NOT include technical definitions from all walks of patent life. If that is what this work would be, a combined standard dictionary and technical dictionary as well as thesaurus then I applaud the work. Sure, it could be that the spec in some way modifies the meaning of the word, but if this thing has some of the good terms that we see everyday this thing could be invaluable to a newbie examiner or a newbie attorney, or even someone switching technical fields.

  67. 6

    Seems like a great resource. FYI, Docket Navigator (https://www.docketnavigator.com) has a searchable dictionary of over 35,000 claim terms. It covers claim construction at all stages of the litigation including, for example, preliminary injunctions, summary judgment, JMOLs, and of course claim construction orders. It also includes free links to the underlying court documents, docket sheets and other useful resources. Docket Navigator is in closed beta through 2011 but attorneys, patent agents and other professionals involved in patent prosecution or litigation may request free access during the beta at link to docketnavigator.com

  68. 5

    That is a pipe-dream. We’ve had good dictionaries and thesari for almost as long as our patent system, yet we still have battles over what claim terms mean.

  69. 4

    Might be useful as a list of words not to use, thus pre-empting the possibility that a defendant might use this thesaurus to urge a court to adopt a construction unfavorable to the plaintiff.

  70. 3

    On the other hand, resources like this can help to standardize the way specifications are written, combining the aspect of both a technical and legal dictionary. It’s a worthy effort to try to bring some clarity to claim construction.

  71. 2

    yes, these books are marginally useful. They are good to locate the useful resources. That is, the cited opinions may cite to useful technical references, which in turn my support your preferred claim construction.

    But having a list of what terms “mean” without any context of the patent specification is of limited utility.

  72. 1

    If the specification is supposed to be the primary source for what a term means, and if a dictionary is supposed to be the secondary source for what a term means, wouldn’t a judge’s opinion of what a term means be pretty low on the resource list?

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