Wonky Claim Construction; Wonky On-Sale Bar

August Technology Corp. v. CamTek Ltd. (Fed. Cir. 2011)

A Minnesota jury awarded $6.8 million in lost profit damages to August Tech – holding that the defendant CamTek’s “Falcon” silicon wafer inspection device infringes claims 1 and 3 of the asserted patent and that those claims are not invalid. (See U.S. Patent No. 6,826,298).

Six Year Background: The infringement litigation was originally filed in July of 2005, a Markman hearing was held in September 2007, and a claim construction order issued in 2008. The trial concluded in 2009 and a final judgment issued in 2010. The appeal was then timely filed resulting in this 2011 opinion. On appeal, the Federal Circuit have pushed “rewind” – ordering the District Court to reverse its claim construction decision and vacating all of the subsequent decisions on infringement, validity, damages, and injunctive relief.

Can a “plurality of wafers” all come from the same wafer?: In semiconductor chip manufacturing, individual chips (AKA dies) are usually manufactured as part of a large silicon wafers that is then divided into a number of identical dies. The patent specification in this case continually refers to operation on wafers “in whole or in part.” And, in construing the claim term “wafer” the district court concluded that a wafer might be only a portion of the large round so long as it contains multiple dies. The claims also include a step that involves inputting a “plurality of wafers” into the inspection device in order to train the device. Apparently the accused device is usually trained with multiple sections of a single large wafer. And therefore, the contested claim construction issue was whether the “plurality of wafers” limited could be construed to include a plurality of sections of a single wafer.

Avoiding Superfluous Terms: On appeal, the Federal Circuit (Moore, J) concluded that “most logical reading of these claim limitations” is that the claimed “wafer” is a single object and that a “plurality of wafers” must be more than one of those objects. Otherwise, the word “plurality” is “superfluous.” On remand, the district court must consider whether the accused device infringes the more narrowly construed claims.

On-Sale Bar and Obviousness: Prior to the conception of its patented invention (and more than one year before its application filing date), August Tech had sold a different machine (the customized NSX-80). Apparently CamTek did not have sufficient published material regarding the prior machine, and instead argued that the on-sale bar of 102(b) treats the NSX-80 as prior art. Although not identical to the invention, CamTek posited that the patent was obvious in the face of the NSX-80 combined with other prior art available at the time of the invention. The district court rejected this argument – holding that, under Pfaff, the on-sale bar does not apply because the claimed invention was not “ready for patenting” at the point of the prior offers for sale.

In six pages of dicta, the Federal Circuit rejected a narrow view of 102(b)/103(a) prior art – writing instead that the “ready for patenting” prong of Pfaff is triggered if the invention is conceived of at least by the 102(b) critical date of one-year prior to the application filing date. For the on-sale bar to be triggered, the “offer for sale” needs to still “remain open” at the time of the conception.

While the invention need not be ready for patenting at the time of the offer, consistent with our cases, we hold that there is no offer for sale until such time as the invention is conceived. Pfaff states that the “word ‘invention’ in the Patent Act unquestionably refers to the inventor’s conception.” Therefore, we conclude that an invention cannot be offered for sale until its conception date. Hence, if an offer for sale is made and retracted prior to conception, there has been no offer for sale of the invention. In contrast, if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it. Before that time, he was merely offering to sell an idea for a product.

The ruling is clearly dicta because the court held that the addition of the machine to the prior would not, as a matter of law, render the claimed invention obvious.

Finally, the court noted an additional quirk of the lower court’s injunction where it enjoined the adjudged infringer “from communicating with third parties in the United States for the purpose of offering to sell accused devices for use outside the United States.” That ruling may be implicated by Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1309 (Fed. Cir. 2010).

98 thoughts on “Wonky Claim Construction; Wonky On-Sale Bar

  1. and THANK YOU qwerty! I was going against a big name when I took my stance, and I was quite surprised to think that none of the 95 comments before me mentioned this. (Admittedly, I did not read each one, but I searched for typical keywords. I found nothing.)

    So my understanding was correct. The decision only addresses the “offer for sale” prong not the “ready for patenting” prong, which also must be satisfied before the clock begins to run. (After all, how can you file an application in a year if you still haven’t figured out how to enable on paper the conceived invention?)

  2. THANK YOU. The author misinterpreted the decision, and for some reason the comment thread ran with it.

    The decision does not address the “ready for patenting” prong. Contrarily to what has been asserted in this thread (and elsewhere), the clock does not begin to run at conception if there is a prior offer. Rather, it begins the same way it always did under Pfaf: when (1) the “offer for sale” AND (2) the “ready for patenting” prongs are BOTH satisfied before the critical period.

    The decision only addresses the “offer for sale” prong, and merely holds that an offer for sale can precede patent readiness, but (somewhat superfluously) not conception.

    The strange thing is that I see the same mistake all over the web.

  3. DC,

    You wrote:

    “… the Federal Circuit rejected a narrow view of 102(b)/103(a) prior art – writing instead that the ‘ready for patenting’ prong of Pfaff is triggered if the invention is conceived of at least by the 102(b) critical date …”

    I read the opinion to say instead that the “offer for sale” prong is triggered if … To me, it seems to leave standing (i.e., does not interpret) at all the “ready for patenting” prong.

    Why do you conclude otherwise?

    Jam

  4. “A trade secret process is not prior art to third parties regardless that the product of the process is on sale.”

    No fking kidding?

  5. Malcolm, you may be right on this case given your summary of the facts.  The specification acknowledged both one piece and multi-piece bodies and used "body" in the genus claim, and "single piece" in the species.

    I personally thought the case went on the specification's criticism of multi-piece bodies, leading one to believe that body meant one-piece.

    But this is arguing the "facts."  I only wished to point out that one does not need express definitions in the specification to give a claim term specific meaning, a meaning more narrow than the term would mean generally to those skilled in the art.  I had the impression that you strongly disputed this point.  But apparently, you do not.  You instead
    emphasize claim differentiation as giving a clear meaning to "body;" a meaning that is not, in your view, inconsistent with the specification.

  6. You highlighted the wrong passage, Ned. You should have highlighted this passage:

    Properly viewed, the “ordinary meaning” of a claim term is its meaning to the ordinary artisan after reading the entire patent.

    and this passage

    (“Even when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.”)

    Note the emphasis on the phrase “claim term.” What was the claim term at issue in Retractable Tech? The term was “body.” When the specification refers to a “one piece body” and distinguishes such a “body” from “multi-piece bodies”, and an independent claim uses the term “body” with “one-piece body” appearing in a dependent claim, the “implication” is crystal clear: the claim term “body” includes a body with multiple pieces. In light of the facts, there is no other correct answer except this one.

    I’m going to keep coming back to this sensible, basic, irrefutable point. Why? Because it makes sense, it’s basic, and it’s irrefutable. You haven’t explained yet why it doesn’t make sense and you never will. Phillips says nothing that would suggest that I’m misapplying the law here. Why? Because Phillips is a reasonable opinion.

    What you are selling does not make sense, Ned, Your approach (and the approach of the judges in Retractable) renders claims meaningless and turns the profession of patent prosecution into a bigger joke than it already is. I’ve already explained why this is so.

  7. 6, I’m sorry, but the case is this: In re Omeprazole Patent Litigation, 483 F. 3d 1364 – Court of Appeals, Federal Circuit 2007

    6, the art being discussed was the alleged trade secret process of a Korean company making Omeprazole. Astra, a Swedish company, had discovered that a tablet barrier could be formed “in situ” if the air temperature was held to 42 degrees. After Astra had filed its patent application to its process of making a barrier in situ, discovery in the Korean case showed the Korean company operated its process at 70 degrees. At that temperature, the process could not form the claimed barrier in situ.

    Astra lost the case for two reasons: 1) it asserted the Korean’s tablet did have an in situ barrier in the Korean litigation; and 2) the 42 degree limitation was not in the claims.

    The point of my citing the case is this: the Korean’s tablet did not disclose the in situ process claimed by Astra. The Koreans admitted they kept their process secret. Even if that process somehow formed an in situ barrier, had Astra not made the admissions it did in the Korean litigation, they would have won.

    A trade secret process is not prior art to third parties regardless that the product of the process is on sale.

  8. “the coke forumla”

    I presume you mean the chemical composition of coke as opposed to the method of obtaining such.

    To be sure, the “coke formula” aka the chemical composition of coke, that has been held secrit is not prior art. However, should you try to patent a new liquid which happens to cover coke, then the coke currently on sale anticipate by way of inherent properties. You’d likely have to do some testing to find that out. If such testing can even be done.

    However, if your “formula” is actually the method of making coke, which is also secrit, then you would have no relevant prior art that I can think of off hand against you from the coke corp or its sales.

  9. NEWMAN! So fra king rtarded. Apparently, in her world: A company starts selling a product. A year later someone tries to patent it. NO PROBLEM SAYS NEWMAN, so long as the product wasn’t an “enabling” disclosure.

    So fking reta rded. You can’t just go and stick the “enabling” requirement on “on-sale bar” prior art like you do on pie-in-the-sky publications. The whole point of the on sale bar is to stop people from patenting articles (and methods?) that have been on sale for some time now, and that is regardless of whether or not they’re easy enough to a POSHITA to make/use.

  10. Malcolm: “the specification made it clear that body meant “one piece.”

    Respectfully, this is absolutely wrong. You see, Ned, there is really one way that the specification could “clearly” define the term “body” to mean “one-piece body.” And that is by an express definition.”

    Malcolm, please consider this from Philips:

    “Although the concern expressed by the court in Texas Digital was valid, the methodology it adopted placed too much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history. While the court noted that the specification must be consulted in every case, it suggested a methodology for claim interpretation in which the specification should be consulted only after a determination is made, whether based on a dictionary, treatise, or other source, as to the ordinary meaning or meanings of the claim term in dispute. Even then, recourse to the specification is limited to determining whether the specification excludes one of the meanings derived from the dictionary, whether the presumption in favor of the dictionary definition of the claim term has been overcome by “an explicit definition of the term different from its ordinary meaning,” or whether the inventor “has disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” 308 F.3d at 1204. In effect, the Texas Digital approach limits the role of the specification in claim construction to serving as a check on the dictionary meaning of a claim term if the specification requires the court to conclude that fewer than all the dictionary definitions apply, or if the specification contains a sufficiently specific alternative definition or disavowal. See, e.g., Texas Digital, 308 F.3d at 1202 (“unless compelled otherwise, a court will give a claim term the full range of its ordinary meaning”); Nystrom v. TREX Co., 374 F.3d 1105, 1111-13 (Fed. Cir.2004) (ascertaining the “full range” of the ordinary meaning of the term “board” through a collection of dictionary definitions, and stating that those candidate definitions should be removed from consideration only if they were “disclaimed” in the written description or prosecution history); Inverness Med. Switz., 309 F.3d at 1379 (claim should be construed to encompass multiple dictionary meanings unless “the specification or prosecution history clearly demonstrates that only one of the multiple meanings was intended”). That approach, in our view, improperly restricts the role of the specification in claim construction.

    Assigning such a limited role to the specification, and in particular requiring that any definition of claim language in the specification be express, is inconsistent with our rulings that the specification is “the single best guide to the meaning of a disputed term,” and that the specification “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.” Vitronics, 90 F.3d at 1582; Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed.Cir.2004) (“Even when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.”) (citations omitted); Novartis Pharms. Corp. v. Abbott Labs., 375 F.3d 1328, 1334-35 (Fed.Cir.2004) (same); Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed.Cir.2001) (“[A] claim term may be clearly redefined without an explicit statement of redefinition.”).

    The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent. Properly viewed, the “ordinary meaning” of a claim term is its meaning to the ordinary artisan after reading the entire patent. Yet heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract, out of its particular context, which is the specification. The patent system is based on the proposition that claims cover only the invented subject matter. As the Supreme Court has stated, “[i]t seems to us that nothing can be more just and fair, both to the patentee and the public, than that the former should understand, and correctly describe, just what he has invented, and for what he claims a patent.” Merrill v. Yeomans, 94 U.S. at 573-74. The use of a dictionary definition can conflict with that directive because the patent applicant did not create the dictionary to describe the invention. Thus, there may be a disconnect between the patentee’s responsibility to describe and claim his invention, and the dictionary editors’ objective of aggregating all possible definitions for particular words.”

  11. ” think the reasoning of this case is unsound, as it assumes that anything on sale is prior art.”

    Idk Nedo I think pretty much anything on sale a year before is prior artszors.

  12. Malcolm, the point is that the information has to be in the public domain to be prior art. Further, it has to be enabling.

    Secret prior art is neither. Just because one commercially exploits a secret process does not put that secret process into the public domain to enable the public to make and use the secret process.

    The only form of on sale that is prior art is that form which is also a public use.

    Does this help.

    (BTW, I didn’t have time to complete the thought in the prior post.)

  13. Ned, you’re doing that thing that you do sometimes where you flood the stage with information that is meaningful to you but is objectively unrelated to the topic being discussed.

  14. Malcolm, check my post below regarding In re Omeprazole. Also consider this:

    Anticipation Also Requires Enablement

    To “anticipate,” the identical subject matter must not only be previously known, but the knowledge must be sufficiently enabling to place the information in the possession of the public. In Seymour v. Osborne, 11 Wall. 516, 78 U.S. 516, 20 L.Ed. 33 (1870), the Supreme Court explained:

    Patented inventions cannot be superceded by the mere introduction of a [prior art reference] unless the description and drawings contain and exhibit a substantial representation of the patented improvement, in such full, clear, and exact terms as to enable any person skilled in the art of science to which it appertains, to make, construct, and practice the invention 1379*1379 to the same practical extent as they would be enabled to do if the information was derived from a prior patent. Mere vague and general representations will not support such a defense, as the knowledge supposed to be derived from the publication must be sufficient to enable those skilled in the art or science to understand the nature and operation of the invention, and carry it into practice use. Whatever may be the particular circumstances under which the publication takes place, the account published, to be of any effect to support such a defense, must be an account of complete and operative invention capable of being put into practical operation.

  15. Since death cannot be predicted, “indefinite” (as you would apply the meaning to the term) is inherent and the proscription must be on “infinite.”

    Incoherent.

  16. Observe, Paul and Malcolm, that if the sale does not reveal the invention, it is not prior art. In effect, a sale that reveals the invention is a public use.

    Thus, to prove that on sale is prior art to third parties, one has to also prove the elements of public use.

  17. Only if you think “indefinite” and “infinite” mean the same thing. Which they don’t.

    I would posit that they do. At least to those deciding on such matters.

    In a (crass and admittedly limited) analogy, the existing rules for limited copyright protection (which has the exact same constitutional genesis), provide a limited term (generally) of author’s life plus an additional 70 years after the author’s death.

    Since death cannot be predicted, “indefinite” (as you would apply the meaning to the term) is inherent and the proscription must be on “infinite.”

  18. Now it gets interesting:

    Rader and Bryson held that a process was anticipated by a prior art product primarily based on admissions of the patent owner during litigation in Korea that the formation of the product inherently produced a certain coating “in situ.”

    However, the Korean court eventual held that the coating was not present. Based on this, Newman dissented.

    Regardless of who was right in that case, Newman had this to say about Secret Use as prior art:

    Secret Information Cannot “Anticipate”

    My colleagues speculate that CKD practiced a sublayer-producing process in secrecy, although the Korean inventors denied such practice in the proceedings in the Korean Patent Office and also in the Seoul District Court. Whatever may or may not have been done in secret in Korea does not convert a secret and still unknown process into prior art.

    “Anticipating” subject matter must be known, and the knowledge must be sufficient to place enabling information in the possession of the public. See, e.g., Vulcan Eng’g Co. v. Fata Aluminium, Inc., 278 F.3d 1366, 1372-73 (Fed.Cir.2002) (a secret system that was not known or publicly used in the United States is not prior art and cannot “anticipate”); Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed.Cir.1998) (secret prior use or knowledge by another is not a bar to patentability).

    The Korean court found that an in situ sublayer was not produced by the process set forth in the CKD specification. I repeat, this finding is not challenged by any evidence presented in this case. Even if CKD indeed practiced a secret process in Korea, and made a sublayer while concealing the process, such an unknown process is not an inherent anticipation.

  19. 6, a panel did decide in 2007 that on sale could be used under 103 against the applicant who placed the invention on sale.

    I think the reasoning of this case is unsound, as it assumes that anything on sale is prior art. It is not prior art however. They even cited Metallizing for that proposition, but that case held the opposite.

    Dippin’Dots, Inc. v. Mosey, 476 F. 3d 1337 – Court of Appeals, Federal Circuit 2007

  20. Anon, your reasoning is sound,

    Only if you think “indefinite” and “infinite” mean the same thing. Which they don’t.

    What do we want in this case? Do we want the inventor to file a patent application or not?

    I’m thinking not.

    The inventor has decided to take his chances with trade secret protection, so let him make the most of it. Let him make his profit and give the public the benefit of using his product embodying the invention.

    If his trade secret ever makes it into the public domain, the public will have his invention and there will be no need to incentivize the inventor to disclose it.

  21. Paul, I think we are in substantial agreement. If the invention is not “available to the public,” private trade secret use will not be prior art to third parties under current law, even though it will be a personal bar to the applicant.

    Regarding Mettalizing, Hand did nothing more than review the cases to derive their principle. He found none that suggested that “on sale” would be prior art to third parties unless the invention was also made known as well. From this he deduced that on sale was nothing more than a personal bar.

    But that is exactly what the Supreme Court said it was in Pennock v. Dialogue (1829), the case first defining on sale, defined it as a form of abandonment of the right to obtain a patent. It had nothing whatsoever to do with whether such abandonment of one’s personal right to obtain a patent could affect anyone else. That had nothing to do with the Pennock at all.

    This case was enacted into the statutes in 1836 when “on sale” was added.

  22. Ned, did I understand you to argue that a non-pubic “on sale” is only a bar against that applicant and not prior art if done by another even under current law? A personal estoppel only is solely from case law [not the statute*] and is confined to products made by a patented method which cannot be determined from examining the sold product, as in the old Learned Hand Metalizing Engineering decision, which was blessed by the Fed. Cir. in Gore v. Garlock.

    Note “MEPEP 2133.03(b) “On Sale” [R-5] – 2100 Patentability -

    IV. SALES BY INDEPENDENT THIRD PARTIES
    A. Sales or Offers for Sale by Independent Third Parties Will Bar a Patent
    Sale or offer for sale of the invention by an independent third party more than 1 year before the filing date of applicant’s patent will bar applicant from obtaining a patent. “An exception to this rule exists where a patented method is kept secret and remains secret after a sale of the unpatented product of the method. Such a sale prior to the critical date is a bar if engaged in by the patentee or patent applicant, but not if engaged in by another.” In re Caveney, 761 F.2d 671, 675-76, 226 USPQ 1, 3-4 (Fed. Cir. 1985).”
    *This same MPEP section earlier-on also cites the case law that a 102 “on sale” does not have to be public.

  23. Regarding “on sale” in the new law, if “availability” to the public were the true triggering criteria, the additional contract concepts of an offer would seem to be completely irrelevant.

    Many have expressed the belief that “on sale” in the new statute somehow changed the nature of “on sale” from a personal bar relating to “commercial” exploitation of the invention prior to filing a patent, to some form of “public disclosure” such that private “commercial” exploitation is no longer a personal bar. But, “public use” remains in the statue. So does “described in a printed publication.” They seem to read “on sale” to be a form of either, depending on whether a product embodying the invention were actually sold or provided without a confidentiality requirement, or a written description of the invention were provided to third parties on a non confidential basis. Their reading of “on sale” seems to read it effectively out of the statute: Any proof of “on sale,” according to their reading, would also require proof of public use or printed publication. The requirement of a contractual offer for sale would seem to be complete surplusage.

  24. But please explain how one can get any grace period [under the new 102 "exceptions"] for a NON-public sale of a product containing the invention?

    I don’t believe “new 102(b)” applies because private sales aren’t a “new 102(a)” activity. One engages in such sales in the absence of patent protection (or at least a publication describing the invention) at one’s own risk.

  25. the specification made it clear that body meant “one piece.”

    Respectfully, this is absolutely wrong. You see, Ned, there is really one way that the specification could “clearly” define the term “body” to mean “one-piece body.” And that is by an express definition.

    There is no such definition in the specification. Merely by using the term “one-piece body” in the specification, the applicant shows that he/she understood the generic term “body” to include both one-piece and multi-piece bodies. Why else include the limiting qualifier before the generic term? Reasonable people can not refute this logic.

    More importantly, the claims were crystal clear about the breadth of the term “body”. And the claims themselves are the first and foremost place we look when we are construing claims.

    The patent attorney wanted to broaden the claims to multi-piece bodies, but could not do that directly because there was no disclosure of such, or even any hint of such disclosure. So he tried to do it by implication.

    That’s a written description or enablement problem under 112, p1. It’s not a claim construction issue. It is not the job of Federal courts to re-write broad claims so that they remain supported by the disclosure. Broad claims lacking support should simply be invalidated – buh-bye! It’s not as if there is any shortage of patents in this country.

  26. Max, let me illustrate with an actual situation. A U.S. company publicly announces offers to sell a new product which is completed but not ready to ship and inventive details of which have not been publicly disclosed. That is not a bar to EPO filing and not prior prior there [under a decision there] until the date that the product is received on someone’s shipping dock somewhere in the world so that it is avilable for examination without any secrecy obligation.
    But under present U.S. law, Pfaff, it started a one year clock running from the first commercial offer to sell a product which is ready for patenting, even if it was not a public offer to sell.

  27. Thanks Malcolm. Since many prior “on sale bar” cases WERE “private” [non-public] the expressed Congressional intent to end that will hopefully avoid confused future decisions that could have been better avoided by clearer statutory drafting.
    But please explain how one can get any grace period [under the new 102 "exceptions"] for a NON-public sale of a product containing the invention?
    Max, probably you and others find U.S. NON-disclosing “on sale” bars confusing because it does not exist elsewhere, and “harmonization” is probably a major motive for the very indirect way it is being eliminated in the new U.S. 102. Furthermore, even though it has been in U.S. law for many generations, it was not clairified until much later in the Sup. Ct. Pfaff v. Wells decision, which sua sponte made major changes from prior decisions.

  28. The case says what it says, blithering id i o …. All you have to do is pick up a copy and read it.

    And yet, you Ned, have such a hard time understanding what you read.

    There is, it seems, more to law than merely reading it.

  29. Interesting.  You have it flipped from what I would do. 
     
    1) I like Pennock's reasoning.  Prior trade secret use prevents a patent because it effectively extends the monopoly period.
     
    2) In contrast, an offer for sale, withdrawn, without any trade secret use or public disclosure should, in my view, not disable the inventor from obtaining a patent.  He has done nothing in violation of any public policy announced in Pennock v. Dialogue, the case, written by Storey and in which Marshall participated, that coined the atextual "on sale" that was, a few years later, put into the statute.
     
    Trade secret use followed by a patent, in contrast, is
    prohibited by Pennock v. Dialogue.  That case remains good law unless the new statute unambiguously overrules it, which I do not think the new statute does.

  30.   Ahh! the self-appointed censor has arrived.  He who pronounces his own opinions as law, and other such bull.  Whoever he F you are, you are an extreme pest.
     
    The case says what it says, blithering id i o ….   All you have to do is pick up a copy and read it.
     
    And if you think this rude, I fully intend it to be so.  You deserve it.

  31. Malcolm, under current law, the cases are uniform that on sale is not prior art.  This has been established since L. Hands analysis of Pennock v.
    Dialogue and other  cases in Mettalizing Engineering.
    http://www.leagle.com/xmlResult.aspx?xmldoc=1946669153F2d516_1498.xml&docbase=CSLWAR1-1950-1985
     
    Under the new law, I hardly think that any court will hold that 180 years of consistent interpretation of on sale will change.   There is nothing in new statute that requires a reinterpretation.

     

  32. but you really have to respect the reasoning of the Supreme Court as well.

    If that reasoning is dubious, why must I respect it? Just because it comes from the Supreme Court?

    Not likely.

    Re: policy considerations of allowing to file at any time (even after on sale or in public) – this does not yield to a simple yes/no answer.

    For example, a Pennock-style invention where the item itself is in the public domain, and either no patent has been desired, or a patent had been had and has lapsed.

    Case 1 – patent lapse. Since part of the ability to obtain a patent is the requirement to share how to make, the public has at least one method that it can use. It may not have the optimal or a later (after file) best method, but either that is not germane, or you have a violation of best mode. Either way, the public has recourse.

    Case 2 – no patent: Since no patent on the item was attempted, the method or best mode can be rightfully maintained as a Trade Secret. By definition, a Trade Secret is unknown to the public, and the patent system policy of shared knowledge can still be achieved. “New to you” is still a valuable thing for the public to gather.

    I have absolutely no problem with someone having a trade secret and later sharing that secret in exchange for patent rights. I really don’t care what prompts the sharing, even if competitors are closing in on the understanding – that knowledge can be used to leapfrog an invention. If a company wants to roll the dice with the trade secret route, then the inherent risks are more than enough offset. As I mentioned above, the Court has no business conflating the coverage realms, patent law applies only in the case of an attempted patent and any attempt at patenting (short of express abnadonment prior to publication) removes the threat of indefinite term. If the company or individual decides to share, then they should obtain the same benefits of sharing that everyone else that shares gets. If they decide too late (novel/obvious), then the pertinent sections of law already in place will handle the patent application – just like everyone else’s. There is no need for a Court Nanny to artifically prompt sharing on a timelyness basis. Let the market drive that.

  33. congress could not constitutionally authorize

    this smacks of your discredited version of Pennock

  34. Ned: No to everyone else, even though it might be on sale, it is not prior art to third parties.

    It’s late and I’m tired but something about this bugs me. Let’s say I’m being sued by Patentee. I discover and have evidence showing that Competitor publically offered for sale the identical allegedly infringing device five years before Patentee allegedly conceived of his invention. However, Competitor never publically described the invention in his offer for sale, nor was it subsequently publically described by Competitor or anyone else (until Patentee filed).

    You’re saying, Ned, that this information is immaterial to patent validity under current law? It certainly seems material under the “new law”.

  35. MM said, “Seems clear enough to me. If the offer to sell is private, it doesn’t fall under 102(a). If it’s a public offer, then Federal Circuit precedent controls. Does Federal Circuit precedent require that the invention as claimed be publically disclosed in the offer for sale in order to qualify as being “on sale”?”

    Yes and no.

    Yes as to the inventor/applicant. It is a bar.

    No to everyone else, even though it might be on sale, it is not prior art to third parties.

    What’s scary is the congressional history (and perhaps the drafters themselves) do not seem to recognize that ON SALE is a personal bar and is not prior art under current law. Public disclosure of the invention is completely irrelevant, although, there is a completely nonsensical case by the usual suspect Rader to the contrary.

    Moreover, the Supreme Court that created the on sale bar said, in effect, that congress could not constitutionally authorize unlimited prior trade secret use and then allow one to obtain a patent. The way the congressional history reads, it would allows just that. So, we know in advance that the courts will never interpret it that way because to do so would render the statute unconstitutional.

  36. Anon, your reasoning is sound, but you really have to respect the reasoning of the Supreme Court as well.

    But that begs the question.  What do we want in this case?  Do we want the inventor to file a patent application or not?  He has not otherwise disclosed the invention to the public and may never if he can no longer get a patent.

    I suggest the policy considerations favor allowing him to file the patent application and obtain a patent.

    What say you?

  37. The second is a serious doubt that anyone will find in the Congressonal Record a clear statement to the effect that even if an “on sale” bar is neither a “disclosed” invention or “available to the public,” that it must be treated that that way?

    link to gpo.gov

    “102(a) was drafted … to do away with precedent … that private offers for sale … may be deemed patent defeating prior art. In effect, the new paragraph 102(a)(1) imposes an overarching requirement for availability to the public, that is a public disclosure, which will limit paragraph 102(a)(1) prior art to subject matter meeting the
    public accessibility standard that is well-settled in current law, especially case law of the Federal Circuit.”

    “…a disclosure that does not satisfy the requirements to be prior art under subsection 102(a), nonetheless constitutes a disclosure that is fully protected under the more inclusive language of subsection 102(b). ”

    Seems clear enough to me. If the offer to sell is private, it doesn’t fall under 102(a). If it’s a public offer, then Federal Circuit precedent controls. Does Federal Circuit precedent require that the invention as claimed be publically disclosed in the offer for sale in order to qualify as being “on sale”?

    Of course, if there’s any doubt, you’ve got the grace period.

  38. Malcolm, we can all hope that you are right that “The legislative history is fairly clear on how the new 102(a) and (b) work.” But there are at least two issues with that. The first is the Sup. Ct. decisions holding that Congressional floor remarks cannot overide express words in the statutes they enact. The second is a serious doubt that anyone will find in the Congressonal Record a clear statement to the effect that even if an “on sale” bar is neither a “disclosed” invention or “available to the public,” that it must be treated that that way? Or is there some other “fix”?
    If it exists, there is enough concern that it ought to be published.

  39. Regardless of Pennock or Coke, the point of the matter is that once an application is filed, “patent term” (if even achieved) is fixed and there is no such thing as “indefinite monopoly.”

    The ONLY way to have an “indefinite monopoly” is to NEVER file a patent application and HOPE that the Trade Secret always remains. But if that is the case, then patent law has no impact to begin with.

    Like I said – the logic involved is dubious.

  40. You see folks, I personally find the Plaintiff’s claim construction rather unremarkable, and the DC take on it not so surprising. This is why I am curious to know what the view is, post CAFC, in Plaintiff’s camp.

    What puzzles me, I must say, is why this was the only claim thought worth asserting against this Defendant.

    Never mind. Shall we move on now?

  41. 6, thanks for the link, but they do not discuss one's own on sale bar in terms of 103.  They discuss 102(b) "prior art,"  but on sale bar is not prior art.  The case does not appear to discuss "on sale" at all.

  42. Malcolm, regarding Retractable, the specification made it clear that body meant “one piece.” There was no disclosure to the contrary.

    What I think happened is this: The patent attorney wanted to broaden the claims to multi-piece bodies, but could not do that directly because there was no disclosure of such, or even any hint of such disclosure. So he tried to do it by implication.

    But the Feds effectively held that he could not “implicitly” broaden the disclosure by such subterfuge.

  43. My only point is this, if there is an ambiguity (and there was none here)

    There was no ambiguity about the meaning of the term “body” in Retractable Technologies. It was crystal clear from the claims themselves that the term “body” included both a single-piece body and a multi-piece body, and it was crystal clear that the applicant knew this.

    The specification must ALWAYS be consulted, claims are to be interpreted consistent with the specification

    This just means that you don’t construe claims as if you are a mxrxn who stumbled across them written on the sidewalk. It doesn’t mean that you ignore the plain language of the claims to “conform” the claims to something that you believe was described more accurately in the specification.

  44. Anon, the problem presented in Pennock v. Dialog was that the method of making the fire hose was not discernible from the fire hose itself. Thus in that case, the patentee was able to exploit his invention for years without anyone else figuring it out, before he filed a patent application.

    A similar situation would obtain here if the Coke company today filed a patent application on the Coke formula after exploiting it for more than 100 years.

  45. I don’t understand why this patent was litigated at all given that the proper claim construction was so clear.

    If I had to guess, I’d say it’s because the patentee thought of a vaguely arguable improper claim construction that captured the accused product, and figured it was worth a try.

    And he would have gotten away with it too, if it hadn’t been for you meddling kids.

  46. The primary purpose for the “on sale bar” in the first place was to prevent the extension of the monopoly indefinitely

    Taking what Ned proposed to be true, this nonetheless exhibits dubious logic.

    The moment an application is filed (short of an express abandonment prior to publication), the possibility of a monopoly extending indefinitely is eliminated.

    Case 1: no patent issues – the app has been published -> no possibility of monopoly extending indefinitely

    Case 2: patent issues – after the patent expires (after full term or otherwise), invention belongs to the public -> no possibility of monopoly extending indefinitely

  47. Max, I don’t understand why this patent was litigated at all given that the proper claim construction was so clear. Obviously, the clearly erroneous claim construction by the District Court had a lot to do with why this case went to trial and then to appeal. But it also seems to me that the proper construction of this claim was clear and that there was no infringement – at least of this claim.

    What a waste.

  48. Simply from a policy point of view, I see more harm in not allowing such an inventor to file and obtain a valid patent then to bar him from obtaining a valid patent, because without a clear path to obtaining a valid patent he probably will never disclose the invention, and certainly not in a patent.

    The primary purpose for the “on sale bar” in the first place was to prevent the extension of the monopoly indefinitely. The purpose would seem to have nothing to do with the offer of an invention that is not otherwise in public use that was withdrawn or not accepted within a reasonable time.

  49. Malcolm, clear?

    1) If an inventor privately uses the invention to make widgets which are sold, is the invention on sale? By private, I mean that there is no public disclosure of the invention whatsoever, none, nada, nil.

    2) If an inventor confidentially discloses an invention to another for the purposes of seeking investment, is the invention on sale?

    Just two examples. The legislative history is all over the map on these issues.

  50. Malcolm, in this case I would agree with you that it is remarkable that the DC got the claim construction wrong.

    My only point is this, if there is an ambiguity (and there was none here), then the question becomes whether to hold the claim invalid or to construe it according to the corresponding structure materials acts described in the specification. I know you have consistently expressed the opinion that if there is an ambiguity the claim should be held invalid. While I tend to agree with you that this is the best policy choice, it is not consistent with the current state of the Federal Circuit law which holds that if there is an ambiguity, and the claim can be construed by incorporating corresponding structure, steps or materials from the specification, that is what the Federal Circuit says should be done.

    For example, we previously discussed the term “substantially hot” where that term has no well understood meaning in the art. The Feds would hold such a claim definite so long as the specification provided examples and a test so that one could determine what “substantially hot” was without undue experimentation.

    Re: Phillips, Phillips held two things that were somewhat up in the air prior to that case:

    1) The specification must ALWAYS be consulted, claims are to be interpreted consistent with the specification; and
    2) If a claim element has more than one purpose described in the specification, it would be improper to limit the claim to one of those purposes.

    Thus in that case, the baffle had more than one purpose. One purpose was for bullet deflection. Another purpose was for load bearing. Thus the court held that it was improper to limit the construction of baffle to the bullet deflection purpose and read into the claim the oblique angle the specification emphasized was required of the baffles for that purpose.

  51. :-)

    My initial thought was that this dicta was dumb.

    It makes sense to not trigger an on-sale bar if the offer is retracted before conception. The idea that an open offer triggers an on-sale bar on the conception date and not when the offer was originally made seemed backwards when I read it initially. However, a benefit of this backwards “rule” is that it arguably prevents a defendant from digging up random emails and other communications to show that an offer was outstanding when conception occurred.

  52. Nope I haven’t peeked. Also, unless they said substrate in the original filing then yes, you EPO folks would probably say it is new matter.

    They didn’t draft it properly because they’re either ret arded or else the guy simply didn’t invent such a machine. The later being most likely the correct answer.

    As to your algorithm idk Max, courts might start rule 11ing more often.

  53. If I remember correctly the Day Dec.9th I was going to but was told not to. And the day Dec 11th stands out form the file that i had earlier before it was stolen and replaced. And there is a Power of Atty dated Dec 13, 1997, that wouldn’t even cut it, because I never signed anything until Dec. 18, 1996.

  54. If you’re talking about a withdrawal that the Applicant did,fine. But if you are talking about it being done by someone that didn’t have the power to withdraw it, wouldn’t that be illegal? And wouldn’t the Patent Office deny it because the Person that did withdraw it was not listed as Atty. of Record until 5 days after he illegally withdrew it? I would think that if they did they would have to correct it if they in fact made the mistake of allowing that to happen.
    And if an Atty. that you fired over and over again ignored being fired by you, and even threatened you, but you never realized why he did, and the USPTO was continually sent Revocations by you then that too makes no sense to me. For fifteen years I did just that. I also know I was charged $100.00 for the firing of the Atty. by the other.. but he never did and that was 1 and 1/2 months before I ever signed anything for him. And 5 days before my first Application was abandoned. but it was already set to Print months before, so he couldn’t have done it he had no Power. Well maybe that is a question no one here will answer LOL.

  55. Based on this comment and previous comments you’ve made, you apparently do not understand Phillips, or why claims exist in the first place.

    Oh my, the rudeness.

  56. What if there is an offer for sale of a conceived invention without making it public. Then the offer is withdrawn in some fashion. Time flies. The inventor then files his application. Does or should the earlier “withdrawal” count, as the invention really never was sold.

    I don’t recall a case that ever decided this exact issue.

  57. I’m sorry, Paul, but are you disagreeing with my analysis? If so, I’m afraid you’re mistaken. The legislative history is fairly clear on how the new 102(a) and (b) work.

  58. Malcolm, but the issue is not how wafers were operated on, but on how the machine was calibrated.

    Wrong. The issue was the the meaning of the term “plurality of wafers.” It doesn’t really matter “how the machine was calibrated” in the specification. Based on this comment and previous comments you’ve made, you apparently do not understand Phillips, or why claims exist in the first place.

    If the specification taught a hundred thousand times in every embodiment that “according to the invention, only a single wafer, and not a plurality of wafers is used to calibrate the instrument,” the term “plurality of wafers” must still be construed to mean “more than one wafer.”

    I hope you understand why this must be the case. If not, there is no point in continuing a discussion about claim construction with you, ever.

  59. Well yes Ned, I did see those passages in the Decision, but thanks anyway.

    As you valuably point out, the Decision includes the splendid shoulder shrug: “The fact that the claims at issue cover only the latter – a
    plurality of known good wafers – is little cause for concern.”

    This leaves me wondering whether the party who asserted this claim is equally blase about it. I should have thought the asserted claim’s failure to read on to the accused embodiment would be a matter of very great “concern” for those footing the bill for the litigation. And what has the drafter of the claim to say about such cavalier treatment of his or her best efforts?

  60. Max, here is the answer:

    "The disclosure therefore teaches both using multiple 
    die and multiple wafers to train.   

    The fact that the claims at issue cover only the latter – a 
    plurality of known good wafers – is little cause for concern.  
    “The mere fact that there is an alternative embodiment 
    disclosed in the [asserted patent] that is not encompassed 
    by [our] claim construction does not outweigh the language 
    of the claim, especially when the court’s construction is 
    supported by the intrinsic evidence.”   TIP Sys., LLC v. 
    Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373
    (Fed. 
    Cir. 2008).  This is especially true where, as here, other 
    unasserted claims in the parent patent cover the excluded 
    embodiments.  "

  61. Ned, help me here, will you. As far as I can see, the spec teaches calibration by looking at a plurality of good dies. These dies are all on the same single good wafer. The accused infringer does what is taught in the spec. The owner (reasonably enough) thinks that must be an infringing act. Yet it does not infringe because the drafter of the claim wrote “plurality of wafers” when he should have written “plurality of dies” (or, as 6 and the EPO Examiner understand, “plurality of substrates”).

    Chef America anybody?

  62. Paul, “fruitlessly pointed out?” I think they reacted with a lot of chit-chat between Senators and congressmen to substitute for clarity language. Recall they said that everything in 102 that was prior art as a result of the inventor’s actions would not bar his own patent if he filed within a year.

    Unfortunately, the statute is unclear and could use some fixin.

  63. 6, same reply to you as to Malcolm.  The issue is not, what is a wafer, not how wafers were operated on, but on how the machine was calibrated.  The specification, IIRC from the case, did say it was by calibrating a number of different wafers, not parts of the same wafer.  If that was in fact the case, the construction violated Phillips from the get go.

  64. Malcolm, but the issue is not how wafers were operated on, but on how the machine was calibrated.  The specification, IIRC from the case, did say it was by calibrating a number of different wafers, not parts of the same wafer.  If that was in fact the case, the construction violated Phillips from the get go.

  65. I think 6 has been peeping. Peeping at the EPO file EP1112550 and at the 7 allowed “substrate” claims. Curiously, there is no EPO divisional and now it is too late to file one, which is bad luck if somebody now successfully opposes the granted EP.

    Is “substrate” added matter under the EPC? If so, the independent claims of the EPO case fatally invalid? Why didn’t the drafter write “substrate” in the app as filed? Should litigators get more than drafters? Isn’t drafting the highest value activity? When will the corporations realise that.

    But then again, on the Chien thread, are we entering a world in which computers will decide not only whether to buy or sell shares in companies but also whether a patent shall be litigated. Just as share prices are nothing to do with the underlying value of a company, so the question whether patents shall be litigated will become nothing at all do to with the reach of the claim, and whether or not it is valid but will be decided instead by a computer running a Chien algorithm.

  66. “We do not reach the issue of whether the sale of the NSX-80 device was a sale, because even if the NSX-80 was on sale, it does not disclose the claimed strobing and therefore does not supply the missing element for purposes of the obviousness analysis.”"

    They can’t say that anymore. Did you miss the Odom case? Missing elements are no longer an issue in the obviousness analysis. That’s too old school.

  67. I’m glad you pointed out the dicta aspects of this decision. It pisses me off when courts create a bunch of law (and in this case, mutilate a bunch of law) that is completely irrelevant to the decision at hand. The on-sale bar issue should have been addressed in a single line: We do not reach the issue of whether the sale of the NSX-80 device was a sale, because even if the NSX-80 was on sale, it does not disclose the claimed strobing and therefore does not supply the missing element for purposes of the obviousness analysis.” Instead we get 6 pages of tortured analysis which effectively means that at least according to this set of judges, a development contract creates an on-sale bar when the development stage is advanced enough. No “ready for patenting” required.

  68. On the “on sale” point, I’m lost.

    On claim construction, Dennis, many thanks because this looks like a nice testpiece for the UK Supreme Court method of arriving at an understanding of what the ambit of the claim is supposed to be. One simply reads the patent in its entirety, through the eyes of the PHOSITA. Then ask: What was the inventor using the language of the claim to mean.

    And (of course) one construes the claim “as if the infringer had never been born”.

    So now I’ll read the patent in suit, then the Decision (eh Paul).

  69. An “on sale” bar does not need any public disclosure or availability to the public as of its creation date of either the facts of the invention or products disclosing them, as clearly shown in the decision here, and as fruitlessly pointed out for some time to those in a position to fix drafting errors in the new 102. The NEW 102 bar will occur when “the claimed invention was patented, described in a printed publication, or in public use, ON SALE, or OTHERWISE AVAILABLE TO THE PUBLIC before the effective filing date of the claimed invention;” [not one year later], with an exception that “DISCLOSURE made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention .. if .(A) the DISCLOSURE was made by the inventor or joint inventor or by another who obtained the subject matter DISCLOSED directly or indirectly from the inventor or a joint inventor; or
    `(B) the subject matter disclosed had, before such disclosure, been PUBLICLY DISCLOSED by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” [emphasis supplied]

  70. I’m sure it was consulted Nedo. I’m also just as sure that the specification did not provide any clarity on this topic because “wafer” is a well known term of art and including a definition for it is not needed in the slightest.

    link to silicon-wafers.com

    The waste of everyone’s time is the patentee arguing against the well known term of art when he knows good go d dam well what it means. Unless this is just some clueless troll that bought the patent from someone who knew something. In other words, this is probably just a symptom of the greater disease of selling patent rights.

  71. I agree that the specification should have provided the definitive answer, to the extent of any ambiguity. I wonder why it was not consulted in the first place?

    I’m sure it was consulted, Ned. And I’m sure that the patentee did everything in its power to convince the judge that because the specification “continually refers to operation on wafers ‘in whole or in part’” that the claims MUST be construed to include such operation, even if the plain language of the claims says pretty much the opposite and there can be no doubt that the applicant knew the difference between multiple wafers, one wafer, and a portion of one wafer.

    Judge Moore was construing claims according to Phillips, not according to the atrocious “method” used by the majority in Retractable Technologies, in which the claims are rewritten based on some judges understanding of “the invention.”

  72. The district court should read the claim, look to the spec to resolve the meaning of the limitation “plurality of wafers”, and then treat those articles as processes for 101 purposes regardless of any resulting claim construction.

    After all, the CAFC doesn’t want to exalt the FORM of claim construction over the substance of claim construction, which is clearly the achievement of the claim construction desired by the court to effect policy-based outcomes.

    Come on, Ned–get a grip.

    This is the post-modern CAFC.

    Of course po-mo is woefully outdated, but the court IS a bit behind the times…

  73. “..if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it.”

    That may not be a major problem under the present patent statute 102, with a clear one year grace period to file after the conception date, but what about the pending NEW 102?

    Why would it be different?

    Jan 1, 2000 – Inventor A : “Hey everybody, I’m working on an invention. When it’s ready, I’ll sell it to you for $50.”

    June 1, 2000 – Inventor A: “Okay, everybody: remember that invention I was talking about on January 1? It’s ready! Come and get it!”

    As of June 1, if the invention is conceived, it’s “on sale”, and the grace period clock starts running. Inventor A has 1 year to file his/her application and, assuming that filing occurs, any intervening filing or publishing by Inventor B will not be considered prior art against Inventor A’s filing.

    As a practical matter, the applicant/patentee making these statements will need to prove to the PTO and/or the court (assuming intervening art is cited) that the offers for sale correspond to “the invention” at issue and that conception of the invention occurred prior to the intervening art.

  74. Malcolm, I agree that the specification should have provided the definitive answer, to the extent of any ambiguity. I wonder why it was not consulted in the first place?

    What a fricken waste of everyone’s time.

  75. Excellent point there Paul. Just how can we incorporate FTI concepts of conception and reduction to practice into a FTF system, but we will have to given that “on sale” remains.

    We also have the issue of proof of derivation. At a minimum there needs to be showing of prior conception before there can be derivation.

    It looks like “conception, due diligence and reduction to practice” concepts will remain in our law.

  76. “And, in construing the claim term “wafer” the district court concluded that a wafer might be only a portion of the large round so long as it contains multiple dies. The claims also include a step that involves inputting a “plurality of wafers” into the inspection device in order to train the device. Apparently the accused device is usually trained with multiple sections of a single large wafer. And therefore, the contested claim construction issue was whether the “plurality of wafers” limited could be construed to include a plurality of sections of a single wafer. ”

    Drafted themselves into a pickle there. Should have used “substrates”.

    On the other hand, the “inventor” probably never invented a machine that used little parts of the same wafer to calibrate it. Thus there is no reason to suspect that he should have used any other words than those he did in his drafting.

    We should be so lucky as to have someone having patented or otherwise disclosed using the small pieces to do the calibration in lieu of the whole.

  77. I wonder about this panel’s parallel holding or dicta that:
    “..if an offer for sale is extended and remains open, a subsequent conception will cause it to become an offer for sale of the invention as of the conception date. In such a case, the seller is offering to sell the invention once he has conceived of it.”
    That may not be a major problem under the present patent statute 102, with a clear one year grace period to file after the conception date, but what about the pending NEW 102?
    I have not thought that through, but some other commentator here might want to? Obviously an application cannot be filed before the conception, which this panel says immediately triggers the bar if there was an outstanding offer to sell something that might incorporate the invention.

  78. the contested claim construction issue was whether the “plurality of wafers” limited could be construed to include a plurality of sections of a single wafer.

    There is only one question that matters: does the spec expressly define the term “wafer” as “X and subsections thereof”? If not, then the claim “plurality of wafers” can not be construed to mean “a plurality of sections of a single water.”

    Avoiding Superfluous Terms: On appeal, the Federal Circuit (Moore, J) concluded that “most logical reading of these claim limitations” is that the claimed “wafer” is a single object and that a “plurality of wafers” must be more than one of those objects. Otherwise, the word “plurality” is “superfluous.”

    Yes. Back to basics. Thank you, Judge Moore. Phillips is alive and well.

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