Court Continues to Struggle with Claim Construction

PatentLawImage139Retractable Technologies v. Becton, Dickinson and Company (BD) (Fed. Cir. 2011)

In 2010, Judge Folsom of the Eastern District of Texas confirmed the jury finding that BD was liable for infringing three of RTI’s retractable syringe patents and that BD’s invalidity arguments were not convincing. On appeal a two-member majority (Judges Lourie and Plager) reversed-in-part — finding that the district court had erred in its construing of the term “body” too broadly by not limiting the term to a “one piece body.” The majority opinion was written by Judge Lourie. Judge Plager filed a concurring opinion asking courts to focus on the “actual invention” when construing claims. Chief Judge Rader wrote in dissent that the majority’s construction improperly imported limitations from the specification into the claims.

I begin with Judge Plager’s minority view of focusing attention on the actual invention (rather than solely on the written claim language) that has been a recent topic for discussion in the legal academy. 

Plager writes:  

However much desired by the claim drafters, who want claims that serve as business weapons and litigation threats, the claims cannot go beyond the actual invention that entitles the inventor to a patent. For that we look to the written description. I have written elsewhere about the curse of indefinite and ambiguous claims, divorced from the written description, that we regularly are asked to construe, and the need for more stringent rules to control the curse.

I understand how a perfectly competent trial judge can be persuaded by the siren song of litigation counsel to give the jury wide scope regarding what is claimed. But it is a song to which courts should turn a deaf ear if patents are to serve the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more.

Although the written description and enablement requirements are intended to ensure that the claim scope is commensurate with the disclosure, Plager’s approach has some merit as a mechanism for allowing courts to adjust patent scope based on disclosure problems rather than the binary valid/invalid choice available under Section 112 p1 defenses.

The Majority Claim Construction: The meaning of a patent claim is considered a question of law that is reviewed de novo on appeal.  That is, on appeal, no deference is to be given to the lower court’s opinion.  In the 2005 en banc decision of Phillips v. AWH, 415 F.3d 1303, the Federal Circuit wrote that claim meaning should be determined by looking at the words of the claims themselves; the patent specification; the prosecution history; and any relevant extrinsic evidence.  Phillips changed the law of claim construction by requiring that clams always be construed “in view of the written description.”

One-Piece Body: The claimed syringe includes a limitation to “a hollow syringe body comprising a barrel and having a front end portion and a back end portion, the back end portion further comprising at least one radially extending member providing finger grips for the syringe body.”  The district court looked primarily to the claim language in ruling that the claimed “body” is not limited to a one-piece structure (except for dependent claim 25 that did explicitly limit the body to “one piece”).

Claim Differentiation: On appeal, the Federal Circuit first addressed the claim differentiation argument and found a weak implication that a claimed “body” should be broader than a claimed “one piece body.”  

While the patents contain an independent claim that recites a “body,” with a dependent claim that limits the “body” to a “one-piece body,” none of the claims expressly recite a body that contains multiple pieces. Thus, while the claims can be read to imply that a “body” is not limited to a one-piece structure, that implication is not a strong one.

The decision suggests that the claim differentiation would have been a much stronger argument if a separate dependant claim had been limited to “a multiple-piece body” or “a non-one-piece body.”

Specification: In several decisions, the Federal Circuit has ruled that claim differentiation arguments will be outweighed by a contrary construction “dictated by the written description or prosecution history.”  Here, the court found that the specification’s background section discussing the prior dictated the a narrow construction. In particular, the background section of one of the asserted patents included the following line:

The prior art has not recognized that such a structure can be molded as a one piece outer body

And, the Summary of the Invention stated that the invented syringe “features a one piece hollow outer body.”  The specification discusses several embodiments of a one piece body and never discloses a body that consists of anything other than a one-piece body (except in disparaging the prior art).

In considering these competing arguments, the court noted that there is a very “fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims.”  Here, the court ruled the one piece body is necessary “to tether the claims to what the specifications indicate the inventor actually invented.”  

Chief Judge Rader’s dissent evokes the pre-Phillips notion that a patent claim can often be read in a vacuum unless scope is disclaimed during prosecution or terms specially defined in the specification.

He writes:

[Under Phillips] Claim language is to be given its ordinary and customary meaning, as understood by a person of ordinary skill in the art at the time of the invention. In this case, neither party contends that “body” has a special, technical meaning in the field of art, and thus claim construction requires “little more than the application of the widely accepted meaning of commonly understood words.” (quoting Phillips). The ordinary and customary meaning of “body” does not inherently contain a one-piece structural limitation. Moreover, neither the claim language nor the written description evinces intent by the patentee to limit the scope of “body” to one-piece bodies.

. . .

Certainly, the claims do not stand alone and must be read in light of the specifications. Nothing in the specifications, however, rebuts the strong presumption created by the claim language that “body” does not contain a one-piece structural limitation. The specifications do not reveal a special definition given by the inventor to the word “body.” Nor do the specifications contain an intentional disclaimer or disavowal of claim scope by the inventor.

This opinion serves as evidence that the court continues to struggle with claim construction and that there continues to be some amount of panel dependence in the results.

78 thoughts on “Court Continues to Struggle with Claim Construction

  1. FYI:

    Regarding “The district court looked primarily to the claim language in ruling that the claimed “body” is not limited to a one-piece structure (except for dependent claim 25 that did explicitly limit the body to “one piece”).”

    Claim 25 was the independent claim, and claim 31 was the dependent claim that explicitly recited the one-piece limitation.

  2. Except that you are overlooking the fact that the original claims are part of the specification.

    Wasn’t there a case not too long ago that held that written description can be lacking even for original claims?

    I have to side with Malcolm on this one. This isn’t a claim differentiation issue at all. The term “body” is clearly not limited to a one-piece body, and on that point it doesn’t matter what the original spec or the other claims recite, short of an explicit definition.

    If the PTO didn’t see it that way, the PTO would have issued one of those rejections [...]

    If the PTO got everything right, we wouldn’t need invalidity as a defense.

  3. Except that you are overlooking the fact that the original claims are part of the specification. So if one piece body was originally recited in claim 25, there can be no questions that “body” was meant to encompass multi-piece bodies.

    If the PTO didn’t see it that way, the PTO would have issued one of those rejections that says claim 25 doesn’t further limit the scope….

    Ya know, the PTO does a lot of whining about the length of applications and does a lot of fee setting to discourage lengthy documents.

    It seems odd then, that you would argue for explicit statements about the body can be a one piece body or a two piece body or a multi piece body for ever friggin component in the thing….

  4. Malcolm Mooney said:

    “My gob. How about we all agree that patent prosecution is a backwater profession populated by hacks from top to bottom, and move to a registration system?”

    I don’t know that we are all or even mostly hacks, but the part about patent prosecution being a backwater profession was true pre-Federal Circuit and it increasingly is seen to be true today. Astute recent law school grads know to avoid it if they can, and the money to be made doing most patent prep and pros (outside of a few hot areas) seems to be in strong decline.

  5. Herr Doctrine Docktor, I really don’t understand how point of novelty enters into the discussion except when infringement, not construction, is considered, and then primarily to determine the scope of equivalents. If the claim element is old, the scope of equivalents should be broad. If the claim element is at the point of novelty, it needs a fairly strict construction so as to not encompass the independent inventions of others that may accomplish the same result using wholly different means.

    Now, if the claim element is functional at the point of novelty, we also have the issue of indefiniteness to consider.

  6. Malcolm, I think the Feds held that there had to be two at least reasonable constructions to choose from in order to choose the one that leads to validity. I think this is reasonable.

    So, I understand you to say that if a claim, properly construed, is not supported for its full breadth, it is invalid.

    I have no fundamental beef with this view.

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  8. Last time we tried to educate

    Interesting lexicography Malcolm – I don’t think I have ever seen “run away” defined as “educate.”

    And don’t pin the “appropriate thread” rap on me – you were the one who tried to put that little spin into this thread.

  9. You had attempted to insert into the discussion your usual

    *click* !

    Last time we tried to educate NAL Jr. about this issue, NAL Jr. quite simply refused to engage. This isn’t the proper thread to attempt again to have an honest discussion about such claims with NAL Jr. Everyone can see that such a discussion will be extremely difficult because NAL Jr has a bad habit of pretending that the only issues that exist are those that have already been “settled” (“settled”, at least, in NAL Jr.’s constricted and confused mind). So for now, we will simply wait until the next relevant post that raises the topic appropriately. Of course, NAL Jr. should feel free to repeat her “views” about the eligibility and validity of such claims ad nauseum. It’s not those views of such claims’ eligibility/validity per se that offend, it’s NAL Jr.’s endless, implicit defense of the eligibility/validity of such claims without any reason (short of the Diehrbot’s Mantra) that we find most amusing, particularly in light of the fact that such claims would never ever be granted or upheld by any court if only they were presented as forthrightly as I have done here.

    And please don’t pretend, NAL Jr., that I haven’t provided reasons to explain why the prohibition against “dissection” in such circumstances is as meaningless as the distinction between eligibility/validity. I have provided the explanation over and over and over again, in language so clear that you don’t even need to pull your head out of your axx to understand it.

  10. I would revise as follows

    Phillips wholeheartedly approves the latter (although the claim language itself controls relative to any “inferences” or statements in the the specification about what “the invention” is; that would certainly include interpreting an independent claim more broadly than a dependent claim unless there was an express definition over-riding that interpretation, in which case one of those two claims would be invalid under 112).

  11. Malcolm,

    It does not take a kindergartern education to see what is meant by the post.

    You had attempted to insert into the discussion your usual faulty legal premise that it is perfectly proper to dissect claims and arrive at a “points of novelty” to determine whether a claim was eligible or ineligible.

    Your statement of “is either invalid or ineligible (take your pick) precisely because of the nature of the ‘point of novelty’” is false, precisely because Diehr explicitly holds that claims must be taken as a whole, and Bilski reinforces that holding.

    (And you claim others are willfully ignorant…?)

    So, to your suggestion of “take your pick,” one of those picks (eligibility) simply does not hew to a “point of novelty” doctrine, and quite emphatically – much to your noted consternation – hews expressly against such a doctrine.

  12. I am in complete and total agreement with MM’s comment, although one could say that it is easy to see the problem with following the rules in any particular case.

    Are you sure you don’t want to revise anything MM?

  13. I think I can say with some certainty that anyone who doesn’t see the truth of what Passing through has said, has obviously never prosecuted a patent application in the USPTO. Of course, none of the judges has, and perhaps that is part of the problem.

    That said, there is a drafting problem here, in that the spec seems to imply that the one-piece body is an essential feature. Clearly it is not, or it would be in the independent claims as allowed, but apparently now this opens the way for an unnecessarily narrow interpretation of the claims. The take home message is in fact a very old piece of advice: never, ever, imply or suggest, however indirectly, that anything is an essential feature. If you do, it may come back to bite you, sooner or later.

  14. “ineligible” is not a valid pick for all of the case law

    Whatever that means. Let me know when you graduate from kindergarten.

  15. a claim such as the following:

    Dorothy, the Tinman, and the Cowardly Lion are looking for you.

    - and actually, “ineligible” is not a valid pick for all of the case law which so burns at the core of your charred soul (that would be Diehr and Bilski)

  16. This decision exemplifies that brand of juridical certainty that is so heartily endorsed by Paul Michel.

  17. There is no such “point of novelty” doctrine that you go on about. At least, not in any legally recognizable manner that you are attempting to portray.

    It’s not clear why Ned brings up the issue here, or why (and frankly I don’t want to know). But please rest assured that a claim such as the following:

    A method of entertainment, comprising the steps of: choosing a hat, putting said hat on one’s head, and thinking about [novel thought X], wherein said thinking causes pleasure to said thinker while wearing said hat.

    is either invalid or ineligible (take your pick) precisely because of the nature of the “point of novelty”.

    Again, I note that this digression has absolutely nothing to do with claim construction issue that is the focus of this thread.

  18. the statutes require the CLAIMED subject matter be both described and enabled.”

    I think your own words provides the answer.

    You further digression to what the Supreme Court condemns is a false trail – one still looks at claims as a whole for description and enablement.

    There is no such “point of novelty” doctrine that you go on about. At least, not in any legally recognizable manner that you are attempting to portray.

    You really should stop simply making things up.

  19. I would hope you would agree with at least this much, that the claimed subject subject matter cannot extend to literally encompase subject matter not describe nor enabled

    Of course they can. The claims can literally cover compositions that cure every disease known to man, including diseases not yet discovered, and methods of making those compositions travel backwards in time via the action of vaguely defined hand gestures, and the specification But such claims are invalid under 112.

    The doctrine of interpreting claim terms “so as to preserve their validity” was addressed squarely years ago by Phillips and narrowly confined to a particular and rare set of circumstances. This was a correct and reasonable conclusion.

    Any other approach leads to a complete nullification of the purpose of claims.

    Dear Judge Rader, reverse this case en banc. Sua sponte. Do it now.

  20. Doctrine Doctrinaire, claims as a whole relates to whether difference over the prior art would have been obvious. It relates to claims to combinations of old elements. It somewhat relates to a determination of patentable subject matter. But it does not relate generally to novelty, or to whether the point of novelty has to be defined clearly.

    Regarding the point I made, the statutes require the claimed subject matter be both described and enabled. This Supreme Court has often condemned claims that literally cover subject matter that is not described and enabled under the theory that such claims would block the progress of the useful arts. This is virtually a constitutional requirement.

    Now, I would hope you would agree with at least this much, that the claimed subject subject matter cannot extend to literally encompase subject matter not describe nor enabled.

    If you agree to that, should this question be adressed in terms of limiting the claims by construction to the disclosure so as to keep them valid, or would you rather interpret them as broadly as they may properly be construed and then address all the validity issues they might then raise?

    What is YOUR preference, oh wise purveyor of the truth?

  21. I further do not agree that Phillips changed the law by requiring the specification to be used to interpret the claims. My understanding is this was always the law.

    You are correct. There is a difference between using the specification to REWRITE CLAIMS and using the specification to interpret TERMS in the claims. Phillips wholeheartedly approves the latter (although the claim language itself over-rides that would certainly include interpreting an independent claim more broadly than a dependent claim unless there was an express definition over-riding that interpretation, in which case one of those two claims would be invalid under 112).

    These rules are actually incredibly easy to follow.

    I have no idea what the problem is with following them, and no idea why anyone would propose an alternative unless they want claims to be more difficult to construe.

  22. This “doctrine” has been expressed again and again in Supreme Court case law.

    Was that “point of novelty” doctrine the same as in the “claims as a whole” doctrine which actually has been expressed again and again in the Supreme Court case law?

  23. Why have claims at all?

    Your proposal is terrible. The CAFC’s methodology, properly applied, does lead to some degree of certainty. It’s just cases like this one that ruin it for everybody.

    The solution is simply to get rid of this case and cases like it.

    Rader, please do your job. Take the next appropriate case sua sponte en banc, just like you did to resolve the construction of product-by-process claims once and for all.

  24. Yes, but that doesn’t necessarily mean that every dependent claim is a proper dependent claim in compliance with all of the requirements.

    The law also very clearly requires claims to be novel and non-obvious, but that doesn’t mean every claim necessarily is. Even though we presume that they are.

    And when the claims are obvious or anticipated, they are rendered invalid, not re-written or “interpreted” such that they are not obvious or anticipated.

    Your argument would have much more force, IANAE, if we were dealing with two independent claims in the same patent of possibly identical scope. That’s not the issue here.

  25. Mike, I have long argued that the proper way to construe claims in all cases is exactly this: the claims should be construed to cover the corresponding structure and equivalents. The question in this case then would become whether the multiple body implementation was an equivalent. In deciding this question, old elements need a broad construction, while the point of novelty needs a narrow.

    My reasoning is that one should never be allowed to claim more than he discloses and equivalents. This “doctrine” has been expressed again and again in Supreme Court case law.

  26. It’s a great way to claim the opposite of what has written description support in your spec.

    No, it is not.

    Stop being such an academic conflation machine.

  27. . I believe it is worth noting that Lourie wrote the first Phillips v. AWH decision which upheld the trial courts wholesale incorporation of the specification into the claims ignoring claim differentiation. To me this case is more an indication of a split in the Court rather than a new direction. I further do not agree that Phillips changed the law by requiring the specification to be used to interpret the claims. My understanding is this was always the law.

  28. I think that this case is a good example of why the approach to claim construction in the US is wrong. Courts, patent prosecutors, and patent owners frequently divorce the claims from the specification that describes their own invention to arrive at something the did not invent.

    I would wager good money that most, if not all, NPE suits in the software/computer space do this. By taking a creative, broad reading of claim language drafted in the context of specification and apply it to a state of the art at a later, more developed time, the words have magically transformed.

    A better strategy for claim construction is to include Sec. 112 directly into the process. For example, an application filed in 1990, claiming a “mobile device” shouldn’t necessarily apply to modern smartphones merely by virtue of being a “mobile device”. This, in essence, would require courts to bound claim construction by that which is described in the Specification and what is known in the art at the time.

    This moves the analysis out of invalidity (at least in part) and puts into properly construing the claims. It gives meaning to the specification, it gives support to the Constitutional disclosure obligation, and it gives some amount of stability and reassurance to someone reading a patent that terms will not be creatively construed.

  29. The law and the regulations very clearly, in multiple places, require dependent claims to further limit the scope of the invention

    Yes, but that doesn’t necessarily mean that every dependent claim is a proper dependent claim in compliance with all of the requirements.

    The law also very clearly requires claims to be novel and non-obvious, but that doesn’t mean every claim necessarily is. Even though we presume that they are.

    Still, claim differentiation is fun, isn’t it? It’s a great way to claim the opposite of what has written description support in your spec.

  30. If dependent claim only adds “one piece body” to the claim language, this strongly supports the notion that the term “body” in the independent claim is intended to be broader than a one piece body. The law and the regulations very clearly, in multiple places, require dependent claims to further limit the scope of the invention and I think the majority is wrong in calling this argument weak.
    This decision appears to me to defy sound logic, and further muddies patent law in the swamp of “common sense”.

  31. And I agree completely with Chief Judge Rader’s dissent on this point that the presumption is an “especially strong one” and not a “weak” one as suggested by Lourie.

  32. Paul,

    I think you’re going overboard on the impact of the sub-title “Summary of the Invention” in this case. The real problem with what was in this sub-heading in this case was the fact that applicant used “one-piece” in descrbing the “body,” but nowhere said the “body” could be “more than one piece.” Also, the majority opinion completely violates the doctrine of claim differentiation discounting “one-piece” in a dependent claim. If the majority opinion has a beef it is with whether the term “body” as including multiple pieces complies with 35 USC 112, first paragraph.

    The concept that the applicant can’t use the term “invention” or at least summarize what he/she believes the invention to be (including multiple different embodiments of it) is absurd. In fact, the real danger now in not “summarizing” somewhere what the applicant considers the invention to be is the “written descripition” requirement. If you leave what the boundaries of the broadest scope of the invention is as ambiguous, you can just as easily get nailed for not “possessing” the invention under 35 USC 112, first paragraph.

  33. “While the patents contain an independent claim that recites a “body,” with a dependent claim that limits the “body” to a “one-piece body,” none of the claims expressly recite a body that contains multiple pieces. Thus, while the claims can be read to imply that a “body” is not limited to a one-piece structure, that implication is not a strong one.”

    The last sentence in this quote is nonsensical in view of the rule of claim differentiation. If a dependent claim says “one-piece body,” why doesn’t that strongly imply that the independent claim covers a “body” which is mulitple pieces?

  34. In my practical experience as an Actual Inventor the Feds read the spec in minute detail and try to narrow the claims based on any limiting language or admission by the inventor.

    On the other hand the PE will glance over the spec, if he/she even looks at it all and interpret the claims as broad as can be imagined to get 101 abstract idea pre-emtion, and 102, and 103 rejections based on prior art references.

    The problem most PE’s don’t realize is that with this approach they can and often do over look where the applicant has acted as his/her own lexicographer, and apply rejections based on bad 101 analysis and false 102 and 103 prior art.

    This can be a mind boggling paradox from the Actual Inventors POV. Whom do you write your spec for? The PTO, or the Feds? After all you have to get your patent issued, but then you have to be able to enforce it in court to make any money off it.

    I write for both. Doing a good prior art search and designing around the known art will help you at the Fed level. While a broad set of claims with many different embodiments and a few strategically defined terms in the app, will get you passed most PE rejections.

  35. If you have a wall, you will have an Audience. If the table of Elements is in each science class at School, then what you do is show examples of what you are trying to achieve. It will sink in.

  36. Ultimately, this case has no real impact since the PTO interprets claims in a different manner than Federal Courts. Due to a lack of legal education, US Examiners routinely ignore or misapply case law anyway (just look at the number of BPAI decisions where examiners are chided for misapplying In re Leshin despite the fact that the PTO has spent thousands of manhours training examiners on its correct application), so again, no real impact. Still, ask an examiner what the practical difference is between interpreting a claim in view of the specification and incorporating limitations from the spec into the claims, and you’ll simply get a blank stare.
    Better training at the PTO is required. If not, expect appeals to continue to increase and BPAI judges get less indulgent of examiner excesses in all areas.

  37. This opinion serves as evidence that the court continues to struggle with claim construction and that there continues to be some amount of panel dependence in the results.

    My hats off to DC for highlighting this case.

    I would have liked to have been in the room with Judge Folsom when he read the majority’s opinion.

  38. A related factor that logically ought to be very relevant is whether or not the respective “differentiating” claims were original claims filed with the application. If they were, should they not logically to be treated as key 112 specification teachings (not just claims) even more important than the “summary of the invention”?

    Of course. And if they weren’t originally filed or in the summary, that’s an issue for 112, not for claim construction.

    But one has to live with the fact that there have been too many Fed. Cir. decisions that have held this doctrine to NOT be controlling when a Fed. Cir. panel wants to reach a contrary claim interpretation.

    How many is too many? How many were there in fact? Off the top of my head, I can’t think of a case like this one, which quite possibly represents the most extreme case of dismissing the doctrine of claim differentiation that is possible, short of holding that the claims themsleves are irrelevant for claim construction (which would turn Phillips completely on its head).

    En banc sua sponte. Reverse this case now.

  39. Amen.

    Amen, Moonbeam.

    Amen, Paul.

    Amen, Ned.

    Now, if Congress would just aim in on the CAFC.

    Put all patent law in the hands of a separate patent judiciary. Specialized trial courts — one in each circuit — and a dedicated appeal court that operates not in panels (whose opinions are splattered all over the place) but always en banc. All trial and appeals judges should be people with patent/technical backgrounds.

  40. The real lesson for business here is that even after nearly 30 years of history of this specialized court, where the judges on the panel are all long term members of the court, there still is not a reliable and predictable law on interpretation of patent claims in the U.S.

    At some point, claim construction has to be like the “mail box” rule: It can be effective upon mailing, or upon receipt, but you have to pick a rule business can rely on, even if the rule is not perfect. Predicatability is the basis of commerce.

  41. One can sympathize with and wonder why “the doctrine of claim differentiation” does not seem to control more Fed. Cir. decisions? But one has to live with the fact that there have been too many Fed. Cir. decisions that have held this doctrine to NOT be controlling when a Fed. Cir. panel wants to reach a contrary claim interpretation. So, not something to safely bet a lawsuit on. A related factor that logically ought to be very relevant is whether or not the respective “differentiating” claims were original claims filed with the application. If they were, should they not logically to be treated as key 112 specification teachings (not just claims) even more important than the “summary of the invention”?

  42. Paul: The Fed. Cir. has repeatedly indicated in decisions for a number of years now that patent attorneys and agents who [foolishly still continue to dangerously] use a specification sub-title “Summary of the Invention” can get their clients stuck with admissions against interest

    Careful major companies and law firms have ordered their patent attorneys to stop using this subtitle, or “the invention is,” in specifications for some years now.

    Yes, this is ancient news. None of this should have anything to do with the issue in this case, however, which was the construction of the term “body”, a term that the applicant INCONTRAVERTIBLY understood to include both one-piece and multipiece “bodies,” and a term that nobody in the art would ever have understood to have a narrower meaning. Was such a claim enabled? Was there written description support for such a claim as of the earliest priority date? Great questions. But there is absolutely nothing in the record suggesting that “body” had the bizarrely limited meaning accorded to it by the Federal Circuit. Will the claims be interpreted as one skilled in the art would interpret them (surely that is the existing law) or are they to be interpreted based on some weird equitable doctrine that we could call “this is what a judge decides should have been claimed had everyone been paying attention.”

    Consider the following: the invention summary includes a statement saying “A critical feature of the improved dobbalina of the invention is the presence of an anterior bob. Prior art dobbalina’s lacked the anterior bob. The dobbalina of the invention will not function without the anterior bob. While a posterior bob can be added, a posterior bob alone is non-functional. We refer herein to the improved dobbalina of the invention as a bob-dobbalina. In some embodiments, the bob-dobbalina of the invention further comprises a knob.

    The claims read:

    1. An improved dobbalina, wherein said dobbalina comprises a knob.

    2. The dobbalina of claim 1, wherein said dobbalina comprises a bob.

    3. The dobbalina of claim 2, wherein said bob is anterior to said dobbalina.

    According to the logic of this case, the term “dobbalina” in claim 1 should be construed to include an anterior bob. That is insane. The doctrine of claim differentiation, at least where you have dependent claims that do not differ in scope, must control over the Plager/Lourie doctrine.

    As Dennis writes: The district court looked primarily to the claim language in ruling that the claimed “body” is not limited to a one-piece structure (except for dependent claim 25 that did explicitly limit the body to “one piece”).

    This rule is reasonable and is incredibly easy to apply. This opinion should be taken en banc and reversed. The en banc opinion should be a one-pager.

  43. P.S. Part of the problem is in not understanding that 37 CFR 1.73 “Summary of the invention” is optional, not mandatory. It says “should” [not "shall" or "must"] and “WHEN set forth”].

    [If this dangerous subtitle was mandatory it would also be directly inconsistent with USPTO international harmonization policies, since such an internal specification subtitle is not even allowed in many other countries patent systems.]

    Careful major companies and law firms have ordered their patent attorneys to stop using this subtitle, or “the invention is,” in specifications for some years now.

  44. Consistent with some above comments, this decision states that: “the Summary of the Invention states that “[t]he invention is a retractable tamperproof syringe,” and that this syringe “features a one piece hollow body.” Id. col.2 ll.45–47.”
    The Fed. Cir. has repeatedly indicated in decisions for a number of years now that patent attorneys and agents who [foolishly still continue to dangerously] use a specification sub-title “Summary of the Invention” can get their clients stuck with admissions against interest that the text under that subtitle is designating the scope of the invention, even if some final claims are broader in some respects. Thus, that alone could have decided this case, without any panel members suggesting a much more ambiguous claim “interpretation” [re-write] standard.

  45. “And you complain about applications being too long now?”

    I didn’t say that I advocate for this manner of nonsense. I just noted that it would make some changes in how things go down.

  46. “Examiners: This is why you see what you do. We’re not writing for you. We’re writing for the Federal Circuit.”

    Bingo

  47. “So, in order to have made a full disclosure of what is actually invented so to speak, the applicant should have simply said in the spec that the body could be any body.”

    And you complain about applications being too long now?

    That’s what I like about you 6, you never let realism get the in way of a good rant.

    “If we adopted his rule on claim construction it wouldn’t really matter because we’d simply construe your claim to be limited to the broadest recitation in your original app of that limitation.”
    Not too hard to go through claim 1 (or all of the claims for that matter) and include a statement in the specificaton for each claim term:
    Claim term “X1″ means its broadest interpretation to one skilled in the art and is not limited in any manner.
    Claim term “X2″ means ….

    You’ll find that one the attorneys know the rules of whatever new game is being played, they’ll adopt their strategies accordingly.

  48. “You make the assumption that the attorney didn’t add some random feature to the independent claims that had nothing to do with the actual inventive concept but that somehow distinguished over the prior art.”

    Your point being??? If they did add that “random feature,” then it was that random feature that elevated the claimed invention from being rejected to being patentable. However, that random feature wasn’t a “one piece body,” which was not found in the independent claim but recited in one of the dependent claims. Therefore, whatever that “random feature” was, it wasn’t the “one piece body” and the Examiner did not rely upon that feature for patentability.

  49. Lourie pounding the no-importation of limitations drum is precious. He is, in fact, importing a very subtle but fatal limitation when he keeps barking about the spec saying “the invention,” as if that 2-word phrase excludes any part of the known universe not specifically stated in the spec.

    Another warning, in case you needed it, to NEVER, NEVER, NEVER use the words “the invention” unless preceded by “one embodiment of” or something similar.

    As to the single-piece body — somebody must be competing for next year’s Academy Award in the class of BeeEsse opinions. The inventive concept was being able to get the needle to retract by jamming down on the plunger.

    The number of pieces that make up the body is completely irrelevant to that claimed feature. The added bonus that a 1-piece body was particularly conducive to implementing the inventive feature, or vice versa, could not possibly be taken by any fair minded person as an exclusion of multiple-piece bodies from the intended scope.

    Lourie’s got my vote.

  50. All in all, it comes down to the statement in the summary of the invention that the device “features a one piece hollow outer body.”

    To put such a statement in the summary and not include the limitation in the broadest claim demonstrates complete incompetence on the part of the agent who prepared and prosecuted this case, and also on the part of the Examiner.

    But the solution should never be to re-write the claims, as was done in this case. The solution is invalidation under 102, 103 or 112.

  51. some of the discussion of the specification does seem that there is an estoppel in the present case.

    Wrong. Some of the discussion of the specification suggests that claims covering a “one piece” body might be invalid for some reason, but they do not suggest that the term “body” should be construed narrowly. On the contrary.

  52. BTW, for those who claim the invention is a one-piece barrel, look to the paragraph of the background section following that quoted above:

    “The rare prior art that employs a front mounted retraction mechanism in a one-piece barrel with a plugged hollow plunger, Tsao U.S. Pat. No. 5,084,018, among other things does not show reduced barrel area to prevent excessive blowout pressure, employs engaging flanges to secure all retraction parts, requires concurrent distortion of internal parts and flanges to effect release, cumulating in excessive force required to retract and requires ventilation holes because of a compartmented barrel.”

    The structure solving those additional problems does not appear to be specific to a one-piece barrel.

  53. How about an actual example?

    “The prior art frequently has a two-piece barrel in order to be able to assemble a retraction device in the nose. This requires at least an additional part and assembly step.”

    Then claim 1 recites “Invention with a body,” and claim 2 recites “The invention of claim 1, wherein the body is a one-piece body.”

    The inventors obviously never contemplated a design around with a two-piece body: they didn’t say the invention extended to a multi-piece body in the detailed description; and we choose to ignore that inconvenient claim 2 because the inventors didn’t say the magic words elsewhere. Nevermind precedent such as this:

    The “written description” requirement states that the patentee must describe the invention; it does not state that every invention must be described in the same way. As each field evolves, the balance also evolves between what is known and what is added by each inventive contribution…. The Board erred in holding that the specifications do not meet the written description requirement because they do not reiterate the structure or formula or chemical name…

    Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1085 (Fed. Cir. 2005).

    All in all, it comes down to the statement in the summary of the invention that the device “features a one piece hollow outer body.” This is why many prosecutors follow the practice of restating the independent claims in the summary and abstract. If anything I write can and will be used against me, then expect to see nothing but the claims, the claims, and yet again the claims, as well as massively redundant detailed descriptions.

    Examiners: This is why you see what you do. We’re not writing for you. We’re writing for the Federal Circuit.

  54. I briefly scanned the opinions, but I was left a bit disatisfied.

    For example, what is the point of novelty over the prior art? That is the invention. This is what needs clarity in the claims, support in the specification, and some explanation as to why this is an advance over the art.

    If “single piece” body is not the point of novelty and the specification does not have a clear estoppel on broader scope, then I would agree that construing the claims to limit them to a single piece would amount to reading limitations into the claims.

    However, some of the discussion of the specification does seem that there is an estoppel in the present case. If so, that should have easily resolved this case.

  55. You make the assumption that the attorney didn’t add some random feature to the independent claims that had nothing to do with the actual inventive concept but that somehow distinguished over the prior art.

  56. To give an extreme example, let’s say that the specification includes the following statement: “The invention does not include a body with more than one piece because nobody in the art, including the inventors named on the instant application, know how to make such a body.”

    Claim 1 recites “Invention with a body.”

    Claim 2 recites “The invention of claim 1, wherein the body is a one-piece body.”

    Guess what? Claim 1 is invalid.

    Anyone disagree with this result? If so, explain why.

    The case at issue here is merely a variation of this fact pattern, albeit with a less forceful statement of what “the invention” is and is not relative to my hypothetical.

  57. Great Zeus, I still haven’t finished:

    ::I disagree. Phillips sought to prevent courts from relying first and foremost on dictionary definitions, in spite of the claims themselsves and contrary teaching in the specification. Phillips certainly did not advocate narrowing terms that were clearly given broad scope by the applicant merely because the Applicant presented only a narrower embodiment in the specification::

  58. Well paul not really. You’re just not understanding what he is saying.

    Let me address your points in opposite order so that you may better understand why the answer to 1 is the way it is.

    2. “full disclosure of what is actually invented” means setting forth the invention in proper terms in the spec. Like, in this application, the body was always referred to as being a one-piece in the spec. But then in the claims it magically became just a body. So, in order to have made a full disclosure of what is actually invented so to speak, the applicant should have simply said in the spec that the body could be any body. Or else have his claims limited to the one-piece that he keeps going on about. At least, this is the view of the plager opinion in this case.

    I am sympathetic to this view because it is all too often that applicants come in with a disclosure and then use way broad terms in the claims without any corresponding disclosure in the spec that the invention should be considered so broad. I suspect that if such a requirement were made we might see less overclaiming. If someone actually had to get up in the spec and say something as absurd as they put in their claim 1 is the invention then that might tip off some prosecutors that they’re overclaiming by a smidgen. Or a mile.

    Just as an example, a claim to:

    1. a bicycle comprising: a frame and a reflector on the frame.

    You could very well see such a claim in an application today for a bicycle with a very specialized reflector. Why? Because the applicant’s rep wants to start out broad and work his way in. Or perhaps in some apps you might see a similar situation where the prosecutor is relying on someone reading in a limitation from the spec.

    But if he had to actually say in the spec “hey, yeah we invented all bicycles with frames, no matter what frame, and reflectors, no matter what reflector, on the frames” he might think again.

    This is a simplistic example, but when terms of art and all are factored in it could have a significant positive impact.

    However, it is of course contrary to current law.

    1. This should be self explanitory if you understood 2. He basically means that if your spec comes in and makes it pretty clear that you’re only disclosing your invention in the spec as having a one piece body then you need to limit your claims to a one piece body. Else draft your spec differently.

    Of course, this is blatantly not the current law.

    And to be clear, if his proposals were granted into the law as the new law then it wouldn’t be the worst thing ever. It would simply make initial drafting a bit more involved and it would make it a real pain to amend in such a fashion as to broaden any feature in a claim that you don’t already have a broad recitation of in the spec. WD already somewhat prevents this currently, but not always. If we adopted his rule on claim construction it wouldn’t really matter because we’d simply construe your claim to be limited to the broadest recitation in your original app of that limitation.

    Also, it would make claim construcion a lot easier.

  59. Yes, the litigation use of dictionaries seems to be the only thing the en banc Phillips decision seemed to have affected in the long run. But did not its actual holding also give its subject claims a broader scope than the specification examples and the panel decision below?
    [THAT part of Phillips seems to be ignored by subequent panels?]

  60. Re the dissenting view that “courts should turn a deaf ear if patents are to serve the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more.”
    There are at least two serious logical flaws in this view, [not to mention the years of legal precidents to the contrary].
    1. If “to claim that and nothing more” [irrespective of the scope of the claims] were followed literally, almost any patented invention, even pioneering, could be so easily “designed around” by minor product changes differing from the the patent specification examples as to render patent protection almost worthless.
    2. What IS “full disclosure of what is actually invented” in a patent when ignoring the scope of the claims as written and allowed? A subjective gestalt reaction to the “scope”? of specification examples? [Especially for inventions in technologies outside of the 112-limiting scope of chemical ["unpredictable arts"] patents, which seems to be the source of this minority view?]

  61. I wouldn’t blame this on the prosecutor. If the prosecutor does a “fantastic” job and drafts “valid” claims–it makes it a lot harder to sue everyone and extract settlements (i.e., extortion).

    I see the problem being that the PTO supposedly uses BRI. The district courts have their interpretation which is narrower than the PTO. But then the E.D. Tex. uses an “extremely broad and unreasonable interpretation.” Further, as Judge Pflager pointed out, it refuses to decide anything and leaves everything to the jury.

  62. “I’ll be citing this case.”

    Lulz, and then have your sht affirmed at the board and any other panel of the CAFC.

  63. Or perhaps [the Examiner] was giving the term “body” a reasonable construction in view of the specification, just as Plager is telling us we should, and thus assumed it to mean “one-piece body.”

    Then the Examiner should rejected the dependent claim as not narrowing the independent claim.

    Pretty basic stuff. This is the kind of analysis that should take 1 minute for a troglodyte examiner or patent attorney. You don’t even need the faintest understanding of the technology to spot these issues.

  64. Seems I forgot to amend my first paragraph:

    ::I disagree. Phillips sought to prevent courts from relying first and foremost on dictionary definitions, in spite of the claims themselsves and contrary teaching in the specification. Phillips certainly did not advocate narrowing terms that were clearly given broad scope by the applicant merely because the Applicant.::

  65. Only by artificially isolating the claims from the rest of the document do you get claim constructions that cover precisely what the inventor did not invent. That’s a dumb way to interpret claims, and it’s also the approach that Phillips sought to correct.

    I disagree. Phillips sought to prevent courts from relying first and foremost on dictionary definitions, in spite of teaching in the specification. Phillips certainly did not advocate narrowing terms that were clearly given broad scope by the applicant merely because the Applicant

    The proper procedure to follow is that outlined in Phillips. First you look at the claims. The claim differentiation argument is extremely compelling here. The idea that it may be necessary to put dependent claims covering both aspects of a binary option in order to secure the benefits (such as they may be — keep reading) of the claim differentiation doctrine is an obnoxious one. Given the claims, it’s an insult to prosecutors to argue that the applicant did not intend the term “body” to include a “multipiece body”.

    As Rader and the District Court found, the independent claim should have been construed broadly. Then we move on to validity, including a discussion of written description and enablement.

    To give an extreme example, let’s say that the specification including the following statement: “The invention does not include a body with more than one piece because nobody in the art, including the inventors named on the instant application, know how to make such a body.” Claim 1 recites “Invention with a body.” Claim 2 recites “The invention of claim 1, wherein the body is a one-piece body.” Guess what? Claim 1 is invalid. That’s the price you pay for being greedy and/or the price you pay for not understanding how the doctrine of claim differentiation works (when properly applied).

  66. “Or perhaps he was giving the term ‘body’ a reasonable construction in view of the specification, just as Plager is telling us we should, and thus assumed it to mean ‘one-piece body.’”

    You are presuming far too much. No Examiner I’ve run across would ever do that. Examiners are far more likely to read limitations out of claim language than to read limitations into claim language.

    Why do we need claims if everything from the specification is going to be incorporated into the claims? Let’s go back to the olden days when there was just a specification and no claims. We can then go to the Federal Circuit to determine what limitations to which the invention should be “tethered.” Wouldn’t that be a lot of fun?

    IMHO — it is just one big fat joke. Either the claim language means something or it doesn’t. The Examiner did not believe that the “one-piece” limitation was necessary. Otherwise, claim 1 would have been rejected and the dependent claim that included the “one-piece” limitation would have been allowed. To me, this means that there was other aspects of the invention that made the invention patentable.

    What is lost on many people, is that an “invention” may include many aspects — some of them patentable in their own right. In this instance, perhaps the inventors thought that a one-piece body was one patentable aspect – perhaps a very important aspect. However, it wasn’t the only patentable aspect since it was not included in the independent claim. Therefore, the Federal Circuit (apparently unaware that applications are often-times not written to disclose just a single embodiment) latches onto a comment in the specification about the importance of a one-piece body (or undesirability of a multi-part body) without considering that although a one-piece body may be a “preferred” or “desired” embodiment, it isn’t necessary for the claimed invention (as evidenced from its omission from claim 1). The scope of a disputed term is not limited by the preferred embodiments absent an express disclaimer by Appellant of a broader definition. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).

    Personally, I have no dog in this fight, and I couldn’t care less about the ultimate result. However, what I do care about is consistency at the Federal Circuit, because consistency at the Federal Circuit makes both my job (and the job of the Examiners examining my patent applications) a whole lot easier.

    However, like a good attorney should, I’ll make lemonade out of lemons. The next time an Examiner tells me the prohibition about interpreting limitations from the specification into the claims, I’ll be citing this case.

  67. “Chief Judge Rader wrote in dissent that the majority’s construction improperly imported limitations from the specification into the claims.”

    I haven’t even read the decision yet and I can already tell that it did. If even Rader can admit that they’re importing limitations then by golly there is limitation importation going on.

    “My gob. How about we all agree that patent prosecution is a backwater profession populated by hacks from top to bottom, and move to a registration system?”

    I can get on board with this. Except for the registration system part.

    “Or perhaps he was giving the term “body” a reasonable construction in view of the specification, just as Plager is telling us we should, and thus assumed it to mean “one-piece body.”

    Why would you read body as one piece body just because the one in the spec was a one piece body?

    “Claim language is to be given its ordinary and customary meaning, as understood by a person of ordinary skill in the art at the time of the invention. In this case, neither party contends that “body” has a special, technical meaning in the field of art, and thus claim construction requires “little more than the application of the widely accepted meaning of commonly understood words.” (quoting Phillips). The ordinary and customary meaning of “body” does not inherently contain a one-piece structural limitation. Moreover, neither the claim language nor the written description evinces intent by the patentee to limit the scope of “body” to one-piece bodies.”

    How could anyone think differently? This has nothing to do with any “pre-phillips” doctrine, this is a mainstay of phillips.

    ” However much desired by the claim drafters, who want claims that serve as business weapons and litigation threats, the claims cannot go beyond the actual invention that entitles the inventor to a patent. For that we look to the written description. I have written elsewhere about the curse of indefinite and ambiguous claims, divorced from the written description, that we regularly are asked to construe, and the need for more stringent rules to control the curse.

    I understand how a perfectly competent trial judge can be persuaded by the siren song of litigation counsel to give the jury wide scope regarding what is claimed. But it is a song to which courts should turn a deaf ear if patents are to serve the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more.”

    I wish Plager. If you intend a coup of claim construction doctrine you may as well make it clear that is what you’re doing I suppose.

  68. Except that if we trust the USPTO and the district court, the invention was clearly more than that.

    Do you?

  69. The Examiner apparently didn’t find the “one piece” limitation critical to patentability.

    Or perhaps he was giving the term “body” a reasonable construction in view of the specification, just as Plager is telling us we should, and thus assumed it to mean “one-piece body.” Should the examiner have insisted on a clarification? Of course, in hindsight. Should his failure to do so really inform our interpretation of the claim very much? I don’t think so.

  70. The prosecutor didn’t make a mistake – he/she told the world exactly what the invention was.

    Except that if we trust the USPTO and the district court, the invention was clearly more than that.

  71. “Anybody remotely resembling the skilled person, on reading the entire patent, would know quite clearly that the invention revolved around a one-piece body.”

    Then why didn’t the Examiner produce art to reject the claims or cite M.P.E.P. § 2164.08(c) — “Critical Feature Not Claimed”?

    The Examiner apparently didn’t find the “one piece” limitation critical to patentability.

  72. “The decision suggests that the claim differentiation would have been a much stronger argument if a separate dependant claim had been limited to ‘a multiple-piece body’ or ‘a non-one-piece body.’”
    To the Examiners out there is bemoan the number of dependent claims being filed … add this case as yet another reason why Applicants are (will be) forced to present so many claims.

    “Here, the court ruled the one piece body is necessary ‘to tether the claims to what the specifications indicate the inventor actually invented.’”
    Here, the court picked a winner, and then picked the case law to support their conclusion (i.e., choosing to ‘construe’ the claims in view of the specification instead of eschewing the incorporation of limitations from the specification into the claim). When I started looking at Federal Circuit claim construction cases nearly a decade ago, I found the same theme. The Court merely picks whatever line of claim construction case law that supports their opinion, as there is no apparent rhyme or reason for their justification as to what line of case law they are applying.

    “This opinion serves as evidence that the court continues to struggle with claim construction and that there continues to be some amount of panel dependence in the results.”
    The Federal Circuit isn’t struggling with claim construction – they are using a very pliable tool to justify their conclusions – to the detriment of us all.

  73. There’s a lesson there for every prosecutor. Take heed.

    But that’s precisely Plager’s point. The prosecutor didn’t make a mistake – he/she told the world exactly what the invention was. Anybody remotely resembling the skilled person, on reading the entire patent, would know quite clearly that the invention revolved around a one-piece body. Only by artificially isolating the claims from the rest of the document do you get claim constructions that cover precisely what the inventor did not invent. That’s a dumb way to interpret claims, and it’s also the approach that Phillips sought to correct.

  74. Plager’s approach has some merit as a mechanism for allowing courts to adjust patent scope based on disclosure problems rather than the binary valid/invalid choice available under Section 112 p1 defenses.

    “Allowing courts to adjust patent scope based on disclosure problems“?!! My gob. How about we all agree that patent prosecution is a backwater profession populated by hacks from top to bottom, and move to a registration system?

    [T]he background section of one of the asserted patents included the following line: The prior art has not recognized that such a structure can be molded as a one piece outer body

    And, the Summary of the Invention stated that the invented syringe “features a one piece hollow outer body.”

    There’s a lesson there for every prosecutor. Take heed.

    I’m surprised that the “one piece body” limitation did not come up during examination. I’m also curious how Retractable was able to dismiss the significance of the “one piece body” and at the same time survive the invalidity challenge. It seems unlikely to me that they could have pressed the broad claim construction all the way up to the Federal Circuit and not shot themselves in the foot. As it turns out, it appears that they might have held back on their arguments for the broader claim construction “just in case” …?

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