The Path Forward for Intervening Rights: Presaging the En Banc Decision in Marine Polymer v. Hemcon

Guest Post by Scott McKeown, Greg Gardella, and Lisa M. Mandrusiak all of OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, L.L.P.[1]

The Court of Appeals for the Federal Circuit is currently considering en banc the panel decision in Marine Polymer Technologies, Inc. v. Hemcon, Inc. The panel decision can be interpreted as suggesting that intervening rights can arise from an argument made during a post grant patent proceeding, such as a patent reexamination proceeding,[2] even if the patent owner is merely urging a claim interpretation that is consistent with the manner in which the term would have been understood at the time the underlying patent application was filed. In cases where the post grant record simply clarifies the way in which a skilled artisan would have understood a claim term at the time of filing, or reiterates the positions of the previous intrinsic record, the scope of the claims cannot properly be said to have been altered during the subsequent proceeding.

Post grant PTO patent proceedings often focus on the meaning of different aspects of originally issued claim language than were considered during the earlier application prosecution. Therefore, much of the argument made by the patent owner during the subsequent PTO proceeding is directed to new issues not previously considered by the PTO. It is to be expected that re-opening the intrinsic record via post grant file histories will often include substantively new discussion of various claim terms.

For example, during post grant proceedings patent claims are accorded the broadest reasonable interpretation ("BRI"). Determining the BRI requires a different analysis than carried out in a district court during claim construction, and notably, there is no requirement that the PTO consider the earlier prosecution record in ascertaining the BRI and meaning of an originally issued patent claim. This often places patent owners in the position of having to re-argue distinctions which were implicitly or explicitly accepted by the previous patent examiner. When the PTO requires amendment of a claim in post grant proceedings the amendment may in fact be a simple restatement of previously agreed upon claim scope, which should not give rise to intervening rights.

The rule adopted by the Court should be flexible so as to accommodate the foregoing situations and permit intervening rights only in the appropriate circumstances. The application of argument-based intervening rights should be limited to situations in which the patent owner clearly and unambiguously revises the issued claim scope by urging that a limitation has a meaning that is plainly at odds with the interpretation a court would have given the originally issued claim language.

The Legal Standard Should Recognize and Accommodate the Practical Reality that Not Every Argument Alters Claim Scope in the Manner Contemplated by the Statutory Provisions Governing Intervening Rights

Post grant proceedings typically involve claim rejections based on prior art that was not fully considered or applied by the examiner during the ex parte prosecution of the underlying patent application. Such prior art references are often distinguished based on facets of the claim language not previously addressed in the original prosecution of the underlying patent application.

For instance, a claim directed to the combination of A, B and C may have been deemed allowable because no reference taught that B could be used in conjunction with C. A reexamination may be initiated based on prior art that teaches the combination of B and C. The patent owner might successfully argue during reexamination that the new prior art reference does not teach A as that term is properly understood. Virtually any explanation and argument with respect to element A could conceivably give rise to intervening rights if one were to broadly apply the principles set forth in the majority's holding in Marine Polymer.

However, the statutory intervening rights provisions (35 U.S.C. §§ 252 and 307) were intended to prevent liability from accruing during the period prior to the rectification of a validity defect through reexamination. Congress explicitly stated that its objective in passing 35 U.S.C. § 307(b) was to ensure that a party is not held liable for infringement during the period between the issuance of an invalid patent and the time when that patent is made valid via amendments during reexamination:

Thus, a person practicing a patented invention would not be considered an infringer for the period between issuance of an invalid patent and its conversion through reexamination to a valid patent

H.R. Rep. No. 96-1307(I), at 7 (1980), reprinted in 1980 U.S.C.C.A.N. 6460, 6467.

A finding of intervening rights may be inappropriate where a post grant proceeding does not clearly involve rectification of a validity defect. For instance, if a patent owner sets forth on the record a well-established and undisputed definition of a technical term in order to distinguish newly cited prior art, the claim may not have been narrowed at all in the view of a skilled artisan. Rather, the skilled artisan may have always understood the claim term in a manner consistent with the definition that was placed on the record during the post grant proceeding.

Post Grant Patent Practice Sometimes Requires Patent Holders to Restate Previously Understood Claim Interpretations, Which Should Not Give Rise to Intervening Rights

The Marine Polymer majority opinion expressed the concern that an intervening rights doctrine which was limited to express claim amendment "would allow patentees to abuse the reexamination process by changing claims through argument rather than changing the language of the claims to preserve otherwise invalid claims and…avoid creating intervening rights as to those claims." Slip Op. at 11. This concern, which at its core is a concern that the PTO will overlook its duty to give the claims the BRI,[3] appears to have given rise to the majority opinion which suggests that intervening rights can arise from any argument made during a post grant patent proceeding. That holding should be clarified in a manner that is consistent with the realities of post grant PTO patent practice.

During post grant proceedings, patent claims are accorded the BRI. In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010). This standard also applies to, and is borrowed from, ex parte patent prosecution, and is notably distinct from the analysis done in the district court which considers the earlier prosecution (intrinsic) record for guidance as to claim meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc); In re American Academy of Science Tech Center, 367 F.3d 1359, 1369 (Fed. Cir. 2004) (The PTO uses a different standard for construing claims than that used by district courts; during examination the PTO must give claims their BRI in light of the specification).

Since there is no requirement that the PTO consider the earlier prosecution record in ascertaining the meaning of an originally issued patent claim, patent owners are sometimes placed in the unfortunate position of having to "re-bargain" for understandings and distinctions accepted by previous, and very likely different, patent examiners. While the PTO in the vast majority of cases requires amendment of claims in post grant proceedings, such changes may in fact be a restatement of the previous examiner's (correct) interpretation of the claim term.

There should be few situations where a patent owner is permitted in a reexamination to implicitly or explicitly define a claim term (in order to distinguish the prior art) via a post grant proceeding in a manner that revises the scope of the claim term relative to the way the term would have been understood by a skilled artisan at the time of the initial application filing. Generally, the PTO will require the claims to be amended where the patent owner is urging a claim interpretation that is narrower than the BRI, even where such narrower meaning coincides with the proper Phillips interpretation. The application of argument-based intervening rights should be limited to those rare instances in which the PTO allows a new disclaimer to avoid art in a post grant proceeding, as opposed to the more common explanation or restatement of claim scope found in the vast majority of post grant proceedings.

Argument Merely Explaining How a Skilled Artisan Would Have Understood the Term at the Time of Filing Should Not Give Rise to Intervening Rights

The majority's decision in Marine Polymer could be broadly interpreted as suggesting that any argument estoppel substantively changes the meaning of the claims and gives rise to intervening rights, including clarifying argument. However, as noted above, the PTO is expected to give the claims the BRI, which in turn puts the onus on the patent owner to explain why the claim terms would not have been interpreted so broadly by a person skilled in the art.

These patent owner explanations do not necessarily change the claim scope. In fact, many such arguments merely explain and clarify the manner in which the claim terms were used at the time of filing, and the Court has previously held that even express claim amendments to clarify the text of a claim or make it more definite without affecting scope do not give rise to intervening rights. Kaufman Co. v. Lantech, Inc., 807 F.2d 970, 977 (Fed. Cir. 1986). Where the patent owner's arguments simply explain the manner in which a skilled artisan would have understood the relevant claim terms at the time of filing, the claim terms cannot be considered to have changed in scope.

The Public Interest Is Best Served By Limiting Intervening Rights to Clear and Unambiguous Disavowal of Claim Scope

Argument should give rise to intervening rights only where it clearly and unmistakably alters the scope of the claim given the manner in which the claim language would have been understood at the time of filing. "[D]isclaimers based on disavowing actions or statements made during prosecution…must be both clear and unmistakable." Sorensen v. Int'l Trade Comm'n, 427 F.3d 1375, 1378-79 (Fed. Cir. 2005) (citing Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir. 2003)). A finding of "disclaimer" must be clear, deliberate, and so unmistakable as to be supported by unambiguous evidence. See, e.g., N. Telecom Ltd. v. Samsung Elecs. Co. Ltd., 215 F.3d 1281, 1294-95 (Fed. Cir. 2000). This same principle should be applied to determine whether a patentee has made a disclaimer through argument in reexamination.

The public interest is best served by a flexible approach which balances the settled expectations of patent owners against the justifiable reliance of the public on the original file history. Patent owners have a proper and settled expectation that their patent rights will be fully enforceable if the PTO confirms the claims on the basis that the prior art would not have met the original claim language, as that language would have been understood by a skilled artisan at the time of filing. The public likewise has a proper and settled expectation that intervening rights may be available if the original claim language, as that language would have been understood by a skilled artisan at the time of filing, was unduly broad and thus embraced prior art. The common thread between both sets of expectations is the meaning of the issued claim language as it would have been understood by one skilled in the art at the time of filing. If that claim scope is substantively modified, intervening rights should be available.

[1] The views expressed in this article are those of the authors and not necessarily those of the firm.

[2] The intervening right statute currently applies to both patent reissue (35 U.S.C. § 252) and reexamination (35 U.S.C § 307) and going forward will apply to additional proceedings of the Leahy-Smith America Invents Act.

[3] In the case at bar the Examiner appears to have allowed the doctrine of claim differentiation to trump the required BRI analysis.

105 thoughts on “The Path Forward for Intervening Rights: Presaging the En Banc Decision in Marine Polymer v. Hemcon

  1. This is, IMHO, not different in kind from isolating DNA from naturally occuring DNA, or, in the government brief’s example, isolating the leaf from the tree.

    Then you do not understand the Myriad case. See Patent Docs for a detailed explanation.

  2. Rudimentary,
     
    On the facts of this case, compound C comprise the legs of a diatom, a creature of the sea.  The inventors provided a method for removing the rest of the diatom, leaving only the legs of interest, or the portion of the legs of interest.
     
    This is, IMHO, not different in kind from isolating DNA from naturally occuring DNA, or, in the government brief's example, isolating the leaf from the tree.
     
    The isolated DNA, the leaf and the legs of the diatom are things of nature.  That one can describe them with exact chemical formulae seems irrelevant. 

  3. Rudimentary, you make a good argument there. 
     
    However, among the exclusions from patentability under the Supreme Court jurisprudence are things found in nature.
     
    Aside from the law, I think you might be right on policy.

  4. I have not seen a position taken by Malcolm. Does this Malcolm take positions?

    In the case of a purification process, would it make a difference if C were a compound or an element?

    If C were a compound, do you not run into the danger of somewhere in nature that compound existing pure of itself; for any and every compound? Does such a limitation then take too much? Is all chemistry suspect? All pharma?

    The driving question would take from the hands of man, and ask why not by nature alone? Could the right conditions occur naturally? In a volcano? On the moons of Jupiter? Could the product be made by other natural means? Would the discovery of any other means (natural or not) be enough to revoke a patent on the product as tending to show that nature could have still other means of creating the product naturally? The extension of this logic removes a very very large set of arts from patent eligibility. Is that asking too much?

    Or is it enough to show that the product, albeit existing in nature, was not recognized as existing in nature prior to the “discovery?” Should a first discoverer of any product, even natural ones, be rewarded for his uncovering of an otherwise previously unknown? Would such an uncovering actually remove from the staple of all things open to men something that wasn’t prior known to even exist? If something is said to be in the commons, but cannot be used because it is unknown in the commons, is it really there in the commons at all?

    Switching to C as an element, hasn’t even an element been patented? Doesn’t the logic of that example tilt the playing field in favor of “discovery” having as much weight as otherwise “invention?” regardless of the product existing of itself in nature, but hidden from the eyes of man? Should we not reward those that do such uncovering? If the product was previously unknown to man, is it not just as much “new” as if it were cobbled together by man?

  5. Ned indeed Europe considers that the scope of protection should be commensurate with what the inventor contributed to technical progress. There are many ways available to Europeans to reach that policy objective. These include Art 83 sufficiency, Art 84 support and Art 56 obviousness. Horses for courses Ned, bearing in mind that Art 84 is available only up to issue and not afterwards.

  6. Max, In Euro land, isn't the issue of such broad claims, support?  A product claim where the only one method of producing the product is disclosed and enabled, covers the product produced by other methods.  By definition, the claim exceed the scope of contribution.  There is something wrong with such claims.
     
    Digressing into the realm of inventive step largely avoids addressing the critical issue, and is a diversion.  No so?
     

  7. following a public policy imperative, to skew the law to give more patent protection to pharma and less to the software industry

    Not if you listen to the whiners around here.

  8. Ned, I’m rather open-minded on your question. That reflects the progress of the Lund-Beck enantiomer litigation in England, where the Patent Court and Appeal Court found the method claim OK, in that it was commensurate with the contribution made to the art, and then went on to find obvious the claim to the product per se. But then the supreme court went and found the product claim also not obvious.

    It is a fine balance how much to reward the inventor who found a way to get to the product (and met the long felt want) when its consequence is to hinder the follow-on folks (who also “promote the progress”).

    We had the same thing recently, on utility. English Patents Court and Court of Appeal voted down the Human Genome Science DNA sequence claim in suit. It was supported by a specification that speculated that the molecule might cure every second disease under the sun but had results for none of them. But that didn’t stop the Supreme Court (after lobbying by the Bio-Industry Association) from finding the claimed subject matter indeed to have utility. Americans criticise First to File as encouraging speculative filings. See, it’s not FtF as such that encourages speculative premature filings but, rather, the UK Supreme Court and the Technical Boards of Appeal of the EPO, who ignore the lobbying of the entire caucus of specialist patents judges in London.

    My sense is that courts world-wide are following a public policy imperative, to skew the law to give more patent protection to pharma and less to the software industry.

  9. Ned,

    Your last paragraph, intejecting a purely philosophical stance is either unwarranted or unnecesary.

    The claim warrants a patent on its face or it does not. If it warrantes it (it is not obvious or indefinite) then the “retards the progress by blocking other sources” is nonsensical. You can patent processes of getting other sources to the same (non-patent) product – regardless of the position of “isolation” – thus the “isolation” portion of the argument is a red herring.

    This is quite apart from the rest of your hypo, which as I mentioned above, it not ready for discussion.

  10. Max, the facts are that Compound C was known for wounds. However there were negative side effects caused by “pollution.” There was a long felt need for compound C without pollution. The inventors found pure compound C existed in nature, and isolated it.

    In the enantiomer case, I am not so sure that the utility of isolated enantiomer was know. But in the present case it was known.

    I assume you would agree that a claim to the isolated or pure C, under the facts, would be obvious or alternatively, indefinite under Perkins Glue.

    As I see it, a claim to the isolated or pure C acts as a disincentive for others to discover other sources of pure compound C. The broad claim, not limited to the discovery of the inventor, retards rather than promotes, the progress in the useful arts.

  11. Ned, I do not understand your fact matrix. My earlier posting was intended to point out that the answer depends on the facts.

    The claim is directed to the thing, per se, ie covering it regardless of which method created it. If the prior art reveals that the claimed thing (the pure substance, or the enantiomer) must inherently exist, and also includes a method that would make it, then the claim includes within its ambit subject matter that is old and obvious.

    But what if the state of the art fails to enable any way whatsoever actually to make the thing per se?

    If the claim in view, to the thing as such, is supported by an enabling disclosure of a way to make the thing per se, then at least that way is patentable.

    But what about a claim to the thing per se? It is new, sure. But is it patentable, that is, is it also non-obvious? In the case of the enantiomer, that is what was decided in England, very recently, in the Lund-Beck case. It falls to be decided by each jurisdiction, using the method in vogue in that jurisdiction for exploring the obviousness issue.

    How obviousness is examined outside the USA is irrelevant, right. I ‘ll leave it to others, better qualified than me, to write here about how obviousness is examined inside the USA.

  12. MaxDrei,

    I do not see an issue in your post. You have answered your own questions.

    From your second paragraph, you have laid out that everything is obvious. I can only assume your question there is rhetorical.

    In your third paragraph you retract the state of obviousness by providing that something is missing in the art. Clearly then, the question in that paragraph must also be rhetorical.

    It is unclear whether your fourth paragraph stems from the condition you set in the third – which would make the question nonsensical – or is its own retracting of the state of obviousness from the second paragraph – which would then also make the question rhetorical.

    Do you have an actual question to pursue?

  13. I’m not a chemist, but Rudy, your purity questions remind me of a more Y/N situation, much rehearsed recently in Europe, namely the validity of a claim to an isolated enantiomer (left- or right-handed molecule), on the basis that the molecule per se, and the racemic mixture of the two enantiomers, is old.

    Suppose that the prior art enables isolation of the enantiomer. Suppose that the emantiomer delivers no surprising effects. The enantiomer is obvious, right?

    But now suppose that on the date of the claim there is no known way to separate the enantiomer, and the specification recites and enables one that works. Is the claim to the enantiomer still obvious.

    And what if the enantiomer yields a surprising and unexpected therapeutic effect. Is the enantiomer per se then obvious subject matter?

  14. Is it justifiable to claim a purified compound regardless of the process for purification, if the desirability of the purified compound is known, but the process for producing it is unknown?

    Isn’t part of the requirement to obtain a patent the need to include how to make or use (i.e. enablement – “and of the manner and process of making and using it“)? Don’t you fail this requirement by only claiming this purified compound if no way of getting to that compound is known?

  15. Good point there.

    Malcolm and I, and perhaps a few others, had a huge debate on this very topic just awhile back when we were discussing isolated DNA. Malcolm was adamant that one could claim the non naturally occurring DNA.

    I wonder what his position will be here.

    But I take it that you would say that one can claim the process of purification of C from diatoms, but not the pure C itself, as this is a product of nature?

  16. the discovery that the legs of diatoms contained pure compound C

    Doesn’t this raise a different issue? The “discovery” is for a naturally occurring item that is not, in itself, changed in its obtainment. Rather like plucking a life from a tree (and distinguished from Myriad as no introns or other inter-chain elements removed).

    I don’t think the “restatement” of the problem here, that of calling this a “purification,” works.

  17. The problem with this case.

    The facts as I understand them, briefly,: The prior art knew that compound C was useful in healing wounds; but the problem was that compound C had an excessive bio-reactivity due to contaminants. The source of compound C were crustaceans and their shells. The contaminants were caused by the shells containing foreign substances, somewhat caused by pollution. The desirability of reducing bio-reactivity was known. The source of the bio-reactivity was known. However, there was no known solution to the problem of reducing bio-reactivity-causing contaminants.

    The invention involved the discovery that the legs of diatoms contained pure compound C. The inventors developed a selective chemical that remove the shell of the diatoms leaving the legs that contain the pure compound.

    In a subsequent patent applications, the inventors claimed the method of producing pure compound C, and also claimed the pure compound C. The latter was claimed in terms of its biocompatibility, which was defined on a scale between 0 and 4 on several tests measuring bio-reactivity, with the lower score having less bio-reactivity. The inventive compound C had a score of zero on the four tests. However the specification disclosed that a bio-reactivity of 3 or below was acceptable for medical applications.

    The independent claims claimed a biocompatible compound C. Dependent claims claimed that the term biocompatible included scores of between 0 and 2 (on one of the tests). The specification disclosed, as expected, no examples greater than zero.

    Considering that the desirability of reducing bio-reactivity was known, simply claiming the compound in terms of its biocompatibility was obvious. The invention was not in a reduced bio-reactivity compound C, but in the discovery of the source of pure compound C.

    But let’s assume for the sake of argument that the term “biocompatibile” was construed to mean “purified” compound C. I would suggest that the claim was still unpatentable as indefinite under the Perkins Glue case. There the inventors discovered that using a specific starch with a specific method produced glue of a certain property. Rather than claiming the glue produced by the specific process, they claim the glue having the property. The defendants in the case produced the a glue having the same properties, but used starch of a different source and kind, and used a different process. The Supreme Court held that the invention was in the selection of a particular starting material and using a particular process; and that a claim to a compound not limited to that starting material and process was indefinite.

    How is that not the case here? Is it justifiable to claim a purified compound regardless of the process for purification, if the desirability of the purified compound is known, but the process for producing it is unknown?

  18. “Cloying” wasn’t the right word at all

    Actually, it is the perfect word. The EP has some fine attributes, but the ad nauseum and the posting without thinking of MaxDrei makes anything EP sick.

    With that, the last line becomes self evident – MaxDrei is no attorney.

  19. simply because the specification disclaims X.

    There is something so wrong with this statement.

    The problem is that a correction would not be understood if this level of error is already in evidence.

    Where’s Jack Welch when you need him?

  20. For the most part, they should not during prosecution with respect to coming up with the BRI of a claim term. Sure, the specification is relevant, especially when it defines claim terms in certain ways. But, if the BRI of a claim term is X, the examiner should not interpret it as Y simply because the specification disclaims X. Instead, the examiner should say that the BRI is X, and then reject the claim as being unsupported, beyond the scope of the written description, etc. That’s the whole point of giving claim terms BRI during prosecution.

    And are you suggesting that the BRI of a claim term should depend on what the specification enables? That is clearly wrong. The examiner should not choose something narrower than BRI simply because the spec does not enable the BRI. The examiner should adopt the BRI and then reject the claim under 112.

    To use Malcolm’s example, if the claim’s clearly indicate that the table can be any color, the examiner should not interpret the claims as being limited to a white table because the spec. disclaims, does not describe or does not enable anything but a white table.

  21. Malcolm, reading between the lines, the only way this panel’s reasoning can be limited to reexaminations and reissues is if there is something unique in the panel’s decision that applies only to theses cases, and would not apply to routine estoppels by argument in other commonly owned applications with similar claim terms, in foreign patent offices in connection with similar issues, and in court involving the same claims and the same claim construction issues.

    The only thing that I can see here that would not apply to general estoppels but would only apply during reissues and reexamination is the cancellation of the “broadening” dependent claims that were inconsistent with a narrower construction. Is that your read of the panel decision?

  22. John, well there is the rub, is it not? This is where the PTO thinks it can relitigate the same issue of patentablity already decided.

    Suppose a reference is cited to show A. The applicant adds language to distinguish A. The examiner accepts the amendment and allows the application.

    Next,a reexamination is filed and ordered per the rubber stamp approval method. The examiner rejects over B, which is the same in substance as A. In doing so, he use BRI on the added language to conclude that very claim amendment added in the previous prosecution to distinguish A must be construed to cover A.

    Now that, my friend, is ultra vires. Way beyond the legal authority of the PTO that only has authority to adjudicate substantial new questions of patentability.

  23. I. COMPLIANCE WITH 35 U.S.C. 112

    Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim. Thus, a term in a patent claim which the examiner might deem to be too broad cannot be considered as too broad in a new or amended claim unless the amendatory matter in the new or amended claim creates the issue. >If a limitation that appears in an existing patent claim also appears in a claim newly presented in a reexamination proceeding, that limitation cannot be examined as to 35 U.S.C. 112. If a dependent claim is rewritten as an independent claim in a reexamination proceeding, that independent claim cannot be examined as to 35 U.S.C. 112, unless the nature of the rewriting raises a new question (e.g., by newly providing a lack of claim antecedent for a term in the claim). < http://www.uspto.gov/web/offices/pac/mpep/documents/2200_2258.htm

  24. Agreed. It is also a real pleasure, and a refreshing change, to read (and respond to) art-based rejections that are actually based on relevant art and that are written by examiners who have a decent grasp of the technology.

    Cheers!

  25. Unlike Philipps, the BRI analysis requires the claims be compared to the specification, nothing more.

    Like Phillips, BRI requires reading the claims first and foremost in light of the language used in the claims themselves. Therefore, if the term “table” appears in claim 1 and the dependent claims recite “where the table is a green table, a red table, or a blue table,” then the generic term “table” must be construed to include at least tables with those colors. It doesn’t matter if the spec only discloses white tables in the Examples, or even if the application is entitled “WHITE TABLES AND METHODS OF USE THEREOF.”

    Any other approach to claim construction turns claims into an extraneous joke. If you don’t understand why, try breathing oxygen and thinking about it for ten seconds. If that doesn’t work, I can try to explain it to you in more detail but you’re probably beyond hope.

  26. Same claims as went out. Same specification too.

    Different examiner – Exactly how is the full faith and credit not applicable?

    (answer: the full faith and credit is fully applicable)

  27. Unfortunately, during re-examination, the examiner cannot reject claims on section 112 grounds.

    Where is that rule written down? I know you can’t start a re-exam based on 112 grounds but I don’t recall examination being limited to 102/103 issues after the re-exam is commenced.

  28. Ned, the holding and “rationale” of this case is limited to claims whose scope has been changed during re-exams and reissues. The case is about intervening rights. Stop kicking up dust.

  29. Ah those clarity objections! I know what you mean, because I get them too. For me though, they are an education for the instructing associate or corporate client, (mostly) fun, a challenge to address and overcome and an opportunity for me to add value and earn my crust. Because one can always do productive business with the EPO, pre-issue, I do prefer a vigilant, even fussy, Examiner to a lazy one. I think it is in the long term interests of the Applicant, in a jurisdiction where validity post-issue hangs on a mere preponderance of evidence. No nasty surprises after issue, please.

    “Cloying” wasn’t the right word at all. Choosing a word that is apt belongs to the basic skills (and pleasures) of an attorney, I would say.

  30. metoo, makes a lot of sense.  I agree that had they simply cancelled the independent claims, and claims with scores greater than 0, they would have not had to make any arguments at all about claim construction of biocompatibility.
     
    Yesterday I argued that the examiner should have required cancellation of the dependent claims with test scores greater than zero as not being supported by the specification. Unfortunately, during re-examination, the examiner cannot reject claims on section 112 grounds.  In retrospect, it seems that we cannot have a complete examination without using section 112 even in re-examinations. Perhaps we should have a statutory fix whereby authorization for re-examination would require a substantial new question of patentability be limited solely to prior art issues, but once re-examination starts the examiner can reject claims based upon lack of support.

  31. I’m glad to see that I don’t rate cloying – I was aiming for “slightly annoying.” No offense intended, Max – as I think I’ve stated before, I’m a big fan of the EPO and its examiners, even if lately a few have gotten a little carried away with the clarity objections.

  32. OK Leopold, I concede that perhaps “multiplying” by an integral whole number greater than one might be a stretch. But multiplying by a factor of at least 1.001. How about that then?

    Also in England, litigation is seen by the judges as a last resort. 95% of cases are submarine, in that they settle before trial. The loser of the remaining 5% at trial often assesses his chances on appeal to be too low to justify it.

  33. Even if you are correct that the patentee did not have the right to claim anything other than 0, the fact is that they DID claim all the way up to 2. In my opinion, the more appropriate way to deal with the issue is to hold claim 1 invalid under 112 rather than read in a claim limitation that is simply not there. Ironically, had that happened, claims 12 and 20 would have survived uder 112, and they could have simply accepted just those two claims during reexamination. There are no arguments in the reexam which are deemed to narrow claim 1, as they would have only had to argue the patentability of 12 and 20 without ever asserting a construction narrower than what most everyone would agree was the original BRI.

  34. Full faith and credit is referring to work on the same application, by different examiners before a patent issues. When a patent comes back to the PTO years later in reexam, BRI is applied to the claims. Unlike Philipps, the BRI analysis requires the claims be compared to the specification, nothing more.

  35. MaxDrei,

    Answering politely…

    It drips with every one of your posts. Leopold merely points out what everyone knows what comes with your posts. Do you find his constant reminders a bit cloying? That’s how your posts read too.

  36. Thanks Leopold, but why might you “have to proceed”. Have proceedings yet been served on you? Will they ever be? Is somebody urging your client to spend heaps of money in pointless patent litigation? Why?

    Something else. Asking politely, can you give up with this sad “perfect” refrain? When did I ever write that the EPO’s “perfect”? Why do you say that I do?

  37. “multiplies the cost of patent litigation” is a bit strong – FWE is certainly something that has to be argued, but I don’t think it adds that much to the overall cost of litigation.

    So long as one specialist patents judge tries both the facts and the law of both infringement and validity in one adversarial trial…

    There’s the real rub, Max. In the U.S., the challenge for the defendant is to “win” the case on purely legal grounds, and early (i.e., at or before summary judgment). That means getting the best possible claim construction, which is purely a legal question and which is relatively inexpensive to reach. Invalidity on section 112 grounds is also a legal question, which is why I would prefer to get to the clarity issue soon.

    Unfortunately district court judges are reluctant to take patent cases away from the juries, and they somehow tend to think that promoting settlements is doing justice. So, often, the name of the game for defendants is reducing the value of the settlement as quickly and as inexpensively as possible.

  38. I think your analysis is sound from top to bottom, Max, and is consistent with what I’ve learned from co-counsel. My point was that “special” doesn’t mean anything at all, standing on its own, and I shouldn’t have to proceed in two separate courts of law to get “an eventual outcome.”

    But I’m gratified to know that the EPO is no longer making any mistakes. ;)

  39. Why might that be Leopold? Because File Wrapper Estoppal is another of those issues which multiplies the cost of patent litigation for no good reason, and so should be positively kept out of it.

    So long as one specialist patents judge tries both the facts and the law of both infringement and validity in one adversarial trial, deciding both issues on the ordinary civil evidential standard of preponderance, squeeze arguments will prevail against all patentees that have built their house on sand. No recourse to the PTO File Wrapper needed.

    By “squeeze arguments” I mean arguments about what the claim means. If it means X, the claim lacks patentability over the art but, if it means Y, it ain’t infringed (and if it means Z it is bad on internal grounds, like insufficiency). When you are presenting to a specialist patents judge, simultaneously on validity and infringement, you need to elect one constant meaning for the claim, and hold to it through thick and thin. I recommend all readers to experience how fast, uncompromising and effective patent litigation can be, as practised in London. Note, I say nothing about how patent litigation bumbles along in the two biggest jurisdictions on the mainland, on “The Continent” ie in “Europe”.

  40. and notably, there is no requirement that the PTO consider the earlier prosecution record in ascertaining the BRI and meaning of an originally issued patent claim.

    Not sure this is accurate. Full faith and credit of another examiner’s work and all…

    When an examiner is assigned to act on an application which has received one or more actions by some other examiner, full faith and credit should be given to the search and action of the previous examiner unless there is a clear error in the previous action or knowledge of other prior art. In general the second examiner should not take an entirely new approach to the application or attempt to reorient the point of view of the previous examiner, or make a new search in the mere hope of finding something.

  41. Leopold, it makes no sense for us to argue this particular case in this forum but it strikes me that there is no dispute what is meant by a layer that carries the local positioning information signal, so that it all boils down to what is meant by “special”. If “special” means “any” then the claimed matter is old (isn’t it?). If “special” means “dedicated”, then your client doesn’t infringe (otherwise Owner would not need to argue that special means any) and, anyway, even if “dedicated”, the claim is probably still obvious (isn’t it?).

    The thing is, in a jurisdiction where the preponderance governs validity decisions, and nobody gives any deference to the PTO, many asserted claims end up being found to be invalid.

    Patent owners do try it on but, when push comes to shove, and a validity trial, it transpires that they never did have a claim that was both valid and infringed.

    If you are in UK then squeeze arguments will probably do in the claim. If you are litigating in Germany, the court structure is different but the eventual outcome will be the same.

    You say: he says it covers any signaling layer that carries the local positioning information signal.

    Has “he” said that yet, to a judge in London or at the Federal Patents Court of Germany? I suppose not yet.

    The patent has less than 2 years to live. Have you assesed the chances the owner has, of getting injunctive relief? Who litigates patents any longer, when i) loser pays ii) injunctive relief is not in prospect, and iii)quantum of damages will likely not exceed an arms length reasonable royalty? Why worry?

    BTW, that argument: that “special” actually means “any”. Is it not fatuous?

    Is the Owner from Australia? Is it not that jurisdiction where proving something to be obvious is a near impossibility? Does the Owner not yet realise that he’s not litigating this patent in Australia?

  42. metoo, I just read the portion of the specification you described: col. 42, beginning at line 39 or thereabouts.

    It is true that “mild reactivity” is described as a score of two. It further says that the sample will pass the test(s) if the reactivity is mild or less. But the specification also says this at the end of col. 41-42:

    “…the p-GlcNAc of the invention exhibits no detectable biological reactivity, as assayed by elution tests, intramuscular implantation in rabbits, intracutaneous injection in rabbits, and systemic injections in mice.”

    This is what the district court limited the claim to, and it was not clearly erroneous.

    Further, I do not agree the patent owner had a right to claim beyond the scope of the example, as they had not described any other source for the compound other than diatoms from the sea that undergone “shell” removal with acid. They did not invent the concept of biocompatibility. They invented a compound that had a reactivity of zero.

  43. Malcolm, it is a Supreme Court opinion and it cannot be overturned by the Art. I CCPA court, or the Art. II Federal Circuit appeals court.  Congress can overturn it, but they haven't.  They limited 112, p.6 to combination claims, which expressly excludes claims of the type under consideration in Perkins Glue.  In fact, the very purpose for limited 112, p. 6 to combination claims was to NOT overrule Perkins glue.

  44. I urge you to read Perkins Glue. It is still good law.

    Why? Because it wasn’t expressly overturned by the Supremes or an en banc Federal Circuit? That’s a pretty broad definition of “good law.” Sound like the sort of definition one might proudly recite shortly before one is sanctioned under Rule 11.

  45. What a shocking surprise that Ned is laboring under a completely wacked claim construction, unsupportable by law or facts.

    Compare:

    Ned: There were no test scores describe the specification that had scores of one and two. The only test scores described in the specification were zero.

    versus

    Specification: “The test article (i.e., p-GlcNAc) meets the biocompatibility test if none of the cultures treated with the test article show a greater than mild reactivity.” The spec goes on to define “mild reactivity” as a test score of 2.

    And lastly this chestnut from Ned:

    Regardless of anything else, if the claims are not limited to scores of zero, the claim is directed to subject matter the patent owner did not invent.

    And what happens when you claim objects or methods that you did not invent, Ned? Better question: what should happen when you claim objects or methods that you did not invent? What should happen when you present such claims to the PTO and the PTO issues them and you start asserting them against people who reasonably recognized that the claims were directed to objects or methods that weren’t actually invented by the patentee? What should happen in that case, Ned?

    These aren’t challenging questions, by the way. They’ve already been asked and answered by Congress and the courts, repeatedly. Here’s a hint: everyone agrees that the last thing that should happen is for the patentee to fix his/her mistake at a later date and receive full damages from infringers of the fixed claim, as if the original mistake never occurred.

  46. metoo, I urge you to read Perkins Glue.  It is still good law.  There the invention claimed a clue having certain properties.  The only way disclosed to make that glue requires a starch from a particular source.  The claims, unless limited to that source, did not describe the invention according to the Supreme Court.

    I think that case applies here.  If the claims are not limited to a biocompatiblity defined by test scores of zero, the claims claim way beyond the scope of the disclosure.  I think that even under Phillips, the claims here need to be limited to scores of zero as such scores describe the invention.

    In fact, the section describing biocompatibility tests, starts with "the invention," and goes on to describe the tests and the scores with the inventive compound having only scores of zero on all the tests.

     

  47. Malcolm, The Federal Circuit’s holding is is not so cabined as it relies on “estoppels” by argument.

    That is bullshxt, Ned.

  48. Regardless of anything else, if the claims are not limited to scores of zero, the claim is directed to subject matter the patent owner did not invent.

    I agree. But, in my opinion, that is not a reason to read a score of 0 into the claims when the specification defines “biocompatibility” in a different way. Yes, there are CAFC opinions where they do that very thing. I disagree with many of those decisions as well, as neither infringement nor validity should depend on whether or not the CAFC decides to read a limitation into a claim that is not there.

    Oh sure, the CAFC keeps telling us they never read in limitations–they only interpret claim limitations in light of the spefication. But you and I both know that’s largely a charade.

    By the way, I believe that “mild reactivity” is identified in the specification as a score of 2. So, if the spec says no more than mild reactivity, does that not provide support for claiming 1 or 2? There is certainly caselaw to that effect, at least from a written description standpoint–especially for claiming 2.

  49. Metoo,

    The dependent claims did not claim "mild reactivity," within the scope of the "definition."  They claimed specific scores.  There was no support for such scores.

    Think of what the applicant was claiming: a composition that differed from the prior art because it was obtained from a specific source using a specific method.  The disclosure showed that the ONLY reactivity this composition had was zero.  The patent's composition claim was identical with the prior art composition but for the word biocompatible which had but one example in the specification.  

    The patent owner had not described any other source or any other method for obtaining the particular composition.  The composition it did describe had a reactivity of zero.

    Regardless of anything else, if the claims are not limited to scores of zero, the claim is directed to subject matter the patent owner did not invent.

    Your turn.

  50. I agree with that point, Ned. By the reissue statute stating that if “the claims of the original and reissued patents are identical,” there’s no “intervening rights” suggests to me that there must be a textural change in the reissue claim that also changes the scope for “intervening rights” to apply, not simply arguments, statements, and the like.

  51. No misimpression at all. The spec states: “The test article (i.e., p-GlcNAc) meets the biocompatibility test if none of the cultures treated with the test article show a greater than mild reactivity.” The spec goes on to define “mild reactivity” as a test score of 2. So to me the definition of biocompatibility is very clear–it is not limited to an elution score of 0.

    Now, the fact that there was no support for a test score other than 0 is of litle import, in my opinion, to the question of the meaning of the term “biocompatible”–particulary given the dependent claims and the fact that the spec unequivocally states what is meant by the term “biocompatible.” If you define a term and then claim it, there is no reason to narrow that meaning simply because there is insufficient enablement.

    Together, all of this leads to the conclusion that a POSITA would have interpreted “biocompatible” to include elution test scores of 1 or 2–or, at a minimum, certainly not limited to an elution test score of 0.

  52. EG, I think the better argument is to read the statutes together to both require an amendment: otherwise there is a possibility that reissue claims could be subject to intervening rights due to argument, while reexamined claims not.  This would make no sense.

  53. metoo, you are laboring under the misimpression that the claim scope as found by the District Court and as finally found by the PTO was improper and too narrow.  In contrast, the DC and the examiner were ultimately correct.  The proper claim scope all along were test scores of zero on the four enumerated test.  There was no support in the specification for any test scores other than zero: not 1 or 2.  

    The prosecuting attorney in the original prosecution added dependent claims directed to test scores greater than zero that were not described in the specification.  These claims  are or should be invalid under 112, p.1.  The district court, relying on the specification, had no recourse, but to hold that the biocompatiblity based on test scores meant zero.  The examiner had to come to that conclusion as well.  The cancellation of invalid claims should not have been deemed broadening.

    And what of the equities here?  The patent owner proposed a claim construction where test scores could be above zero.  The defendant infringer urged that the proposed construction was too broad and not supported by the specification.  The district court agreed.  

    On appeal, the now losing infringer switched positions and argued that the very claim construction it urged below as proper (to the extent the construction was based on test scores) was too narrow.  That the Federal Circuit even allowed such a argument by the losing infringer was a travesty.

  54. I don’t understand why relying upon what 307(b) expressly says is “terribly wrong” in reexams, Ned. As noted in my response to your other comment, arguments in reissue are also likely irrelevant if the claim, even if amended, is still deemed “identical,” i.e., no change in scope.

  55. Ned, allow me to clarify. I think the end result was correct, but not the way the panel achieved it. In other words, I think the majority was incorrect in its analysis of the relevant statute. I do not believe intervening rights should arise simply because of arguments made during reexam or reissue where the claims were not amended. While it is obviously a fiction that the plain and ordinary meaning of a claim term is some divine, immutable thing that one can find simply by maximum effort, I do not believe that a patent owner should be permitted to take advantage of the narrowing effect of an argument made during reexam/reissue in order to avoid having to amend the claims. A judge should not allow it during litigation, and the PTO should likewise not allow it during reexam/reissue.

    In other words, if the patentee wants a narrower claim scope than what was conveyed by the claims as issued, then the PTO should not permit the charade of achieving that without a claim amendment. In fact, I think that’s what you are suggesting in your post below.

    Of course that leads to a dilemma. If the trial court’s narrow construction was incorrect (per the CAFC panel), then the PTO should not rely on that same narrow construction without claim amendments. So what do you do? Insist that claim 1 be interpreted broadly, and ignore the patentee’s arguments during reexam for a narrow construction? I would say yes, and then let the chips fall where they may with respect to validity (prior art and 112 issues).

  56. You bring up an interesting point, Ned. The relevant poriton of the reissue statute (35 USC 252)says : “but in so far as the claims of the original and reissued patents are identical, such surrender shall not affect any action then pending nor abate any cause of action then existing.” In fact, even if the claims are amended in reexam, “intervening rights” won’t necessarily apply if the amended claims are still deemed to be “identical,” i.e., no change in the scope of claim. See Kaufman Co., supra, 807 F.2d at 977, 1 U.S.P.Q.2d at 1207 (Fed. Cir. 1986) (reexam claims “identical” where there were no substantive differences from the original claims); Oak Industries v. Zenith Electronics, 687 F. Supp. 369, 372, 7 U.S.P.Q.2d 1867, 1869 (N.D. Ill. 1988) (term identical does not mean “exactly the same”).

    I would still read the reissue statute as requiring a some claim amendment, otherwise the claim would be physically “identical” so that no “intervening rights” should apply. Statements alone should not change the result even in reissue, other than putting prosecution history estoppel into play.

  57. EG, why are you intentionally leaving open the possibility that arguments in reissues could lead to intervening rights.

    There is something terribly wrong with simply relying on 307(b).

  58. I’m forgetting nothing, MM. Phillips is irrelevant on the issue of “intervening rights.” The reexamination statute is clear: “intervening rights” only applies if the claim is amended or is new.

  59. I do not agree with the OP to the extent that it suggests that the PTO is within its rights to adopt a new claim construction inconsistent with a prior claim construction it previously adopted in a prior prosecution. This is tantamount to saying that the PTO is entitled to re-litigate the exact same issue of patentability that was litigated and decided before. That is dramatically inconsistent with prevailing case law on what a “substantial new question” means.

    The PTO has NO SUBJECT MATTER JURISDICTION to adopt a claim construction inconsistent with its own prior claim construction as that would permit it to ignore the statutory jurisdictional requirement of a substantial new question of patentability.

  60. Malcolm, The Federal Circuit’s holding is is not so cabined as it relies on “estoppels” by argument. Such estoppels occur across the board and affect claim scope during claim construction. There is no legal or statutory limit on where estoppels may occur. Estoppels are a creature of a court and only require an assertion by the patent owner to a legal authority of a fact or legal position made to obtain an advantage.

  61. Ned, and I agree with you, but the authors don’t seem to recognize any questions of degree in their arguments.

  62. Malcolm, that would depend on whether the proper claim construction to begin with extended to scores greater than zero. Whether they did or did not critically depends on whether the dependent claims ineluctably cause the parent claim to be broader in scope without considering whether the dependent claims themselves are supported.

    There are Fed Cir cases that have held that the determination of the proper claim scope of an independent claim can be such that the the dependent claims do not narrow the scope of the independent claim. That simply means that the dependent claims may be invalid. The “rule” of construction that the dependent claims are presumed to narrow the scope of the independent claims is not a hard and fast rule.

    In this case, as in others, the dependent claims actually broadened the independent claims by implication to subject matter not supported. Such independent claims have to be invalid, not necessarily the independent claim.

    The only case that I am aware of that might be contrary is the present case, but it has been vacated.

  63. The original claims did not have the term biocompatible at all. There were just two:

    WHAT IS CLAIMED IS:
    1. A method for immunoisolation of a cell comprising:
    coating a cell/poly-~-1-4-N-acetylglucosamine species, said
    5 cell/poly-~-1-4-N-acetylglucosamine species comprising ~
    poly-~-1-4-N-acetylglucosaminespecies comprising about 4,000
    to about 150,000 N-acetylglucosamine monosaccharides
    covalently attached in a ~-1~4 conformation, free of protein,
    substantially free of other organic contaminants,
    substantially free of inorganic contaminants, and having a
    ~o
    molecular weight of about 800~OOO daltons to about 30 million
    daltons within with at least one cell is encapsulat~d, with a
    coating having a polyelectrolyte charge opposite to the
    charge of the cell/poly-~-1-4-N-acetylglucosaminespecies, so
    that the cell within the cell/poly-~-1-4-N-acetylglucosamine
    15 species is immunoisolated.
    2. The method of claim 1, wherein at least one
    acetylglucosamine monosaccharide of the poly-~-1-4-Nacetylglucosamine
    species as been deacetylated.

  64. This case once again proves the old maxim that bad facts make bad caselaw. The CAFC concluded that the district court’s narrow claim construction was incorrect. Now I recognize that Phillips says that claims can be narrowed by arguments made during prosecution. But that doesn’t mean that an examiner necessarily should allow an applicant to do so–especially during reexamination/reissue in order to get around prior art. The claims were clearly interpreted more broadly during the original prosecution. An applicant should not be permitted to argue a narrower construction during reissue/reexamination without making corresponding claim amendments.

    And arguing claim differentiation as a basis for the narrowed construction during reexam? Puuuullllease. You can’t have it both ways. If claim differentiation leads to a broad interpetation, simply canceling those dependent claims should not suddenly result in a narrowing of the independent claim. Claim differentiation is simply one of several tools which should always be subservient to plain and ordinary meaning (and broadest reasonable interpretation during prosecution).

    Bottom line is that I think the decision was correct, but I don’t like the way in which it was reached. This case has the potential to become problematic down the road, as most every defendant facing a reissued or reexamined patent will try to make it fit their particular facts.

  65. Ned, the case is already “cabined” to re-exams and reissues and I’m not aware of anyone suggesting that the “rationale” (for allowing defendents to hve intervening rights when claim scope has been changed) be extended to other contexts.

    Again, I’m sure there were crazy chicken littles running around the Internets arguing that patents would be “worthless” if Festo reigned in the DOE. Take a pill, dude.

  66. Let’s try that again: “Patentees should not be allowed to “fix” a greed-driven fxck-up like that in a post-grant proceeding and eat their damages cake, too, as if the claims were never fxcked up.”

  67. Malcolm, the claims were first presented in a preliminary amendment in a divisional case.

    Exactly what was the claim language in the independent claim that was presented? By chance, did the original claim (and specification) include the phrase “at least”? Let me know.

    The the biocompatibility tests courts referred to the test described in the specification. There were four. Each test had a score results range from 0 to 4. There was only one example given for each test. The score result for each test on the claimed compound was zero. There was no support in the specification for test scores other than zero.

    Okay, so the patentee presented an independent claim that unambiguously included within its scope non-enabled subject matter and/or new matter. Assuming those facts, the properly construed claims are invalid for lack of enablement and/or written description. Do you suppose it’s possible that an competitor might rely on that fact, Ned, when determining whether to infringe? I think it’s possible. Also quite reasonable. And that’s why we have intervening rights. Patentees should not be allowed to “fix” a greed-drien fxck-up like that in a post-grant proceeding and eat their damages cake, too, as if the claims were never fxcked up.

  68. “Unless Cabined”

    Do you agree or disagree that arguments made in court cause estoppels just as much as arguments made in the PTO?

    Even arguments made to the EPO cause estoppels.

    Therasense….

  69. Malcolm, the claims were first presented in a preliminary amendment in a divisional case.

    The the biocompatibility tests courts referred to the test described in the specification. There were four.  Each test had a score results range from 0 to 4. There was only one example given for each test. The score result for each test on the claimed compound was zero. There was no support in the specification for test scores other than zero.

    Therefore, there was no written description support for any test score other than zero in the specification. The dependent claims having test scores other than zero were without support in the specification under the written description doctrine. The examiner should have rejected claims having scores other than zero under section 112. Having done that, it would have been proper to construe claim one, which do not have any test score limitations, to have a biocompatibility of essentially no reactivity, because that was the only biocompatibility disclosed in the specification.

  70. It’s not the only example I’ve seen, Max, just the one I’m working on this week. I didn’t realize that your position is that the EPO has only recently reached perfection, however.

    The problem with this patent today is that the patentee doesn’t agree that it’s meaningless – he says it covers any signaling layer that carries the local positioning information signal. Never mind that the “special” aspect of the signaling layer was apparently the reason why it wasn’t obvious to send signaling information over a signaling layer.

    Common law equitable jurisdiction England has looked at File Wrapper Estoppal during over a hundred years of patent litigation. Yet it steadfastly eschews it. Why might that be?

    Sorry, Max, I don’t know. Why? Because it reached a state of perfection a hundred years ago?

  71. Unless cabined, the rationale provided by the majority in the panel could effectively render patents worthless

    That is insane. But it does explain, of course, why the usual chicken littles are flipping out over this case.

  72. Malcolm, I have try to explain this to you before.

    Yes. Your explanation stunk then and it stinks now. At the very least, please refer to the actual language in the claims, before and after amendment, please let everyone know when the canceled dependent claims were first presented, and please let everyone know what a “biocompatibility test result score” refers to, according to one skilled in the art. Without such basic facts, your explanation bites.

  73. No, the inquiry should look at *how much* is amended or disclaimed, and whether infringement was at all affected by such amendment and disclaimer.

    I assume you meant to say “infringement or validity.”

  74. I think that one must consider that the Federal Circuit held in the case at bar that “original” claims were effectively amended by argument in a post-grant proceeding.

    Consider that with a reissue, the claims in the reissue patent are not the original claims even if they are identical. The reason for this is that the original patent is surrendered and is replaced by the reissue patent. The statute, §252, is intended to provide an effective continuation of rights where the claims in the reissue are substantially identical, meaning no substantial change in scope, with the claims in the original patent.

    Judge Lourie noted in his dissent that what were involved in this case were not the new claims of a reissue patent, but the original claims of the original patent.

    If original claims can be narrowed by argument, why does this narrowing have to take place only in the patent office? Estoppel is well known when one makes an argument about the claims even in court. The principle involved is the same.

    Unless cabined, the rationale provided by the majority in the panel could effectively render patents worthless because any argument in any patent proceeding or litigation about claim scope, or about how the claims distinguish over the prior art, even in the present litigation, could work to provide intervening rights.

  75. Leopold, I see your EPO poster child is 20 years old, near to expiry. Back in the last century, Patent Offices were letting stuff issue which these days doen’t get that far. Can you find one a bit more recent?

    But apart from that, if “special signalling layer” is meaningless, nobody infringes. If the PHOSITA knows what it means, more or less, then he knows where not to go.

    Common law equitable jurisdiction England has looked at File Wrapper Estoppal during over a hundred years of patent litigation. Yet it steadfastly eschews it. Why might that be?

  76. Malcolm, I have try to explain this to you before. The dependent claims that were canceled in the prosecution were directed to biocompatibility tests results of one or two. There were no test scores describe the specification that had scores of one and two. The only test scores described in the specification were zero.

    What the examiner should have done is required the patent owner to cancel of the dependent claims requiring scores of one or two based upon lack of support in the specification. If he had done that, the claim scope of biocompatibility would have been essentially zero, which is the claim scope given the term by the District Court.

    Not only was the examiner wrong, the Federal Circuit was wrong. And further, what we have here is an outrageous perversion of justice because the very claim construction adopted by the District Court was urged on the District Court by the losing defendant who urged on appeal that the claim construction of the District Court was an error because it was too narrow.

  77. I agree; and the clear implication must be drawn that where there is no amendment required by the examiner that the claim scope argument prevailed, i.e. that the examiner agreed that the proper scope of the claim was that being argued by the applicant or the patent owner, as the case may be, rather than that the claim as properly construed was being distinguished from the prior art based upon argument. In the latter case, clearly the examiner must require an amendment.

  78. EG, the real problem we have is that section 252 does not clearly require an amendment, as does section 307(b). This would leave open the possibility that reissues would be subject intervening rights based upon arguments, while if the same argument were made in a re-examination there would be no intervening rights. Not only is this illogical, it is unworkable.

    What this goes to show is that the drafters of the re-examination statutes, and Congress, considered that section 252 already required that at least the claims that might be subject to interview rights be new or amended claims.

  79. Paul consider that section 252 does not clearly require an amendment. Thus if the en banc Federal Circuit reverses on the basis of §307 (b), reissue patents may be subject to intervening rights on the basis of patent owner argument, while re-examine patents not so. This would leave an obvious problem for both the patent owner and the patent office because reissues and re-examinations are somewhat fungible ways of conducting post-grant re-examinations.

  80. [3] In the case at bar the Examiner appears to have allowed the doctrine of claim differentiation to trump the required BRI analysis.

    Could one of the authors please explain the meaning of this statement?

  81. What the majority panel opinion has done is to improperly conflate prosecution history estoppel with “intervening rights.” Statements relative unamended claims are just that, statements which might bear on claim scope for infringement purposes

    Unfortunately, EG, you’re forgetting something. Phillips and case law preceding Phillips and case law after Phillips is crystal clear that statements made during prosecution are relevant to construing claims, which is just another phrase for “determining claim scope,” changes in which are obviously relevant to determining intervening rights.

    It seems that some people will see “conflation” everywhere. Curious.

  82. “Argument should give rise to intervening rights only where it clearly and unmistakably alters the scope of the claim given the manner in which the claim language would have been understood at the time of filing.”

    What if I unambiguously disclaim only a tiny, tiny fraction of claim scope? You say intervening rights should apply.

    No, the inquiry should look at *how much* is amended or disclaimed, and whether infringement was at all affected by such amendment and disclaimer.

  83. Sure, Max, and the EPO always gets it right, is that it?

    How about this claim, from EP 0681704 B1:

    A system for tracking the location of vehicles and the like, said system comprising local positioning information supply means which corrects positioning information received from satellites so as to produce a local positioning signa; characterized in that said local positioning information signal is transmitted to said vehicles and the like on a special signalling layer of a communications path provided by a mobile telephone sytem.

    What exactly is a “special signalling layer”? (I’ll give you a hint – it’s not especially clear from the specification, much less from “the claim, on its face, standing alone.”)

    The doctrine of file wrapper estoppel is not about letting the PTO ignore the clarity requirement of 35 USC 112, 2nd paragraph. Rather, it’s about preventing a patentee from ignoring his own prior admissions, in those inevitable instances when the PTO gets it wrong, whether through negligence or simply because perfect clarity is difficult to achieve.

  84. I suppose one of the reasons why the EPO is so obsessive about clarity of claiming is that there is in Europe no Doctrine of File Wrapper Estoppal. Instead, Article 84 of the EPC expressly requires that any claim, before it can be allowed, must be “clear”.

    Put another way, that Doctrine is the very thing that frees the PTO of any obligation to insist that the claim, on its face, standing alone, is in any way “clear”.

  85. “The application of argument-based intervening rights should be limited to situations in which the patent owner clearly and unambiguously revises the issued claim scope by urging that a limitation has a meaning that is plainly at odds with the interpretation a court would have given the originally issued claim language.”

    In such cases, the PTO should simply do its job and insist on amendment. Is that too much to ask?

  86. “The rule adopted by the Court should be flexible so as to accommodate the foregoing situations and permit intervening rights only in the appropriate circumstances. The application of argument-based intervening rights should be limited to situations in which the patent owner clearly and unambiguously revises the issued claim scope by urging that a limitation has a meaning that is plainly at odds with the interpretation a court would have given the originally issued claim language.”

    The second sentence is completely wrong on when “intervening rights” should be applied. The only “appropriate circumstance” for applying “intervening rights” is when the claims are amended during reexamination or new claims are added. That’s what the reexamination statute expressly says, and Judge Lourie’s dissenting opinion is very correct on this point.

    What the majority panel opinion has done is to improperly conflate prosecution history estoppel with “intervening rights.” Statements relative unamended claims are just that, statements which might bear on claim scope for infringement purposes (as is clear from the Cole and American Piledriving Equipment cases cited by the majority opinion), but not for “intervening rights” purposes

    The majority’s basis for permitting “intervening rights” to apply to unamended claims (by analogy to the doctrine of “disavowal of claim scope”) is also a legally flawed analogy. The doctrine of “disavowal of claim scope” is a corollary of the judicial doctrine of “prosecution history estoppel.” By contrast, “intervening rights” is not a judicial doctrine, but is, instead, a creation of the reexamination/reissue statutes. Any supposed basis for this “analogy” simply doesn’t pass muster in my book.

  87. Re: “The application of argument-based intervening rights should be limited to situations in which the patent owner clearly and unambiguously revises the issued claim scope by urging that a limitation has a meaning that is plainly at odds with the interpretation a court would have given the originally issued claim language.”
    Yes, and would not that also be consistent with what the en banc In re Philips decision said about prosecution history estoppel in general?
    But wasn’t the dissent in the panel decision below arguing that the reexamination statute clearly requires an actual claim amendment to create intervening rights?

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