Presume that Claims Cover the Preferred Embodiment

by Dennis Crouch

Accent Packaging v. Leggett & Platt (Fed. Cir. 2013)

In yet another case, the Federal Circuit has altered a district court claim construction in a way that entirely flips the outcome.

In a 2010 action, Accent asserted that L&P infringed its US Patent Nos. 7,373,877 (claims 1–5) and 7,412,992 (claims 1, 3, 4, 7, and 10–14).  The patents are directed to a device for baling recyclables or solid waste for easier handling. 

The asserted claim required a set of “elongated operator bodies, with each of the operator bodies being operably coupled with a respective one of said gripper, knotter, cutting element and cover so as to supply driving power from the single drive assembly thereto.”  Leggett's accused device links together the gripping/knotting/cutting/covering tasks and only requires two operator bodies to accomplish all four tasks.  In construing the claims, the district court held that the “each . . . respective one of” language required that each operator body perform only one of the listed tasks. As such, Leggett could not infringe.

On appeal, the Federal Circuit reversed –  finding that its interpretation of the claim does not require that “each elongated operator body be coupled to one and only one of these operator elements.”  Rather the court found that the language only required coupling with at least one operator element.  In its decision, the court relied heavily on the fact that the identified preferred embodiment of the invention showed an operator body operably coupled to both a knotter and a cover.

[I]n the preferred embodiment of the invention, two elongated operator bodies are operably coupled to both the knotter and the cover. Put differently, the preferred embodiment features an elongated operator body that is operably coupled to one or more operator elements. We have held that “a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.” On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004).

One question that I have regarding this particular preferred embodiment canon of construction has to do with amendments made during prosecution. In my view, a narrowing claim language made during the course of prosecution should not carry the same presumption of covering the preferred embodiment.  In this case, the claims were completely rewritten during prosecution in order to place the application in condition for allowance.  And, the limitations in question were added during prosecution. 

The result in this case is major — instead of winning on summary judgment, the Federal Circuit here holds that Leggett & Platt loses on summary judgment and is liable for infringement.

AccentPackagingBaler

 

 

81 thoughts on “Presume that Claims Cover the Preferred Embodiment

  1. MF,

    Let’s start with an easy question to test your commitment to intellectual honesty:

    Would a reasonable person (obviously not your view) consider you to be a member of the legal academia?

    Please don’t make me chase you around for a week (or more).

  2. What the f–k are you talking about you sociopathic d-ckwad?

    LOL – see link to patentlyo.com
    at 7:36 PM:

    MM writes: “Reading it also made me realize that, for those of us in legal academia trying to do something about the mess we’ve collectively created, every morning our rock awaits us.

    It’s scary how accurately I have MM pegged.

    I wonder why they don’t teach ethics and intellectual honesty in the legal academia. I think these things should be more than just MM’s “Top Priority,” as obviously he FAILS at these things too.

  3. Correction: that should be…”Why the inclusion of software and a computer would suddenly make the process abstract has no logical answer to it.

  4. “It was admitted that “perfect” cures of rubber could be and were obtained prior to the invention.”

    Ahh…Thanks anon, I did not know Diehr admitted this. In this case the use of the computer is what made the process more efficient. Improving a process, even an old one, using a combination of known machines and apparatus, is the type of invention that has been and should remain eligible for patenting. While the inclusion of software and a computer would suddenly make the process abstract has no logic to it.

  5. Company sells you a patented android.  It instructs you to not let it breed.  Collect the seed, your manual says, and it is obligatory to collect the seed.  You do not collect the seed as instructed.  The android breeds.  Is the offspring patent infringement?

     
    Sent from Windows Mail
     

  6. MM, good post, and I see you really understand the issue that vexes.
     
    We can agree that the folks who discovered the association should be able to patent practical applications of it.  The case law seems to suggest that the practical application itself has to be "inventive."
     
    I can see the isolation of DNA of a particular gene to see what it is to be part of such a test.  Perhaps using the man made molecules that you discussed.  But, such a test would be a method. 
     
    But there remains a problem with a claim that makes activity remote from such a test infringement.  Recall in Prometheus that a doctor who ran the test there would be infringing even if the purpose for running the test and getting the information was unrelated treating the disease at issue. 
     
    Suppose that doctors testing fetuses for potential diseases ran an process that generally looked for all serious genetic defects.   Would this infringe?  What if instead of listing the defects, it simply listed the genome in the areas of concern and let the doctors read it.  If the doctors  "knew" what to look for because of their education, just like in Prometheus, they could spot the particular genetic defect here.
     
    Literal infringement does not rely on intent.  As a corollary, the scope of the claim should not rely on the good will or business interests of the patent owner. 
     
    Tough issues.

     

  7. You can’t patent thinking about it. That was the issue in Prometheus” and “That’s why Prometheus was a 9-0 decision.

    LOL – for a man so used to building strawmen, your reaching for straw is practically second nature.

    Let’s take a look at the AMA and US briefs, shall we?
    Q: How many times is Mayo v. Prometheus explicitly referenced?
    A: At least thirty-three times.

    Q: How many times is MM’s wacky [oldstep+newidea] theory actually used?
    A: ZERO.

    That’s right: Zero times.

    We will leave the exercise of counting how many times a product of nature rationale is used.

    MM Pet Theory FAIL

    And speaking of strawmen, tell me MM, in your BigLab hypothetical, is this “detectin” effectively a product of nature or not?

    Watering downthe rest of your dust-kicking, you kind of left out that important detail (well, it’s important to everyone in the real world at least).

    And finally, what will it take to get an answer from you as to the page cite that you offered? It’s not like I am demanding something new, is it? After all, YOU offered to provide it, and I find it very curious as to why you have run away from something in your favorite “9-0 Baby” case. What possibly could explain this behavior of yours?

    LOL

  8. I just don’t want to see

    LOL – like anything you want should be taken seriously…

    Well, perhaps MD and your circle do take your wants seriously, but until you can post in an intellectually honest and non-vacuous manner, the rest of us (English as a second language types like the Solicitor General and the AMA) will just have to relegate your posts to pile they belong.

  9. achieved an end use/result heretofore unknown in the art.

    Actually, the end use/result was also known in the art. It was admitted that “perfect” cures of rubber could be and were obtained prior to the invention. It would be silly to think that just becaus it took more of a ‘feel’ or ‘guess’ during processing that such necessitated the absence of achieving the desired result.

    However – and this is important – this quite in fact emphasizes the gist of the invention being the application (the integrated application) of a GREAT BIG COMPUTER BRAIN to do something faster and better than an ordinary human brain, and that such is rightfully the stuff of patent eligibility (no matter how much jealous QQ’ing is spewed out there).

  10. One more point if I may. The lesson from Prometheus is that if you are claiming a bare Court created judicial exception, (derived implicitly from the Congressional Statute of 101) followed by additional steps or claims that apply the judicial exception, then your claims as a whole or ordered combination better be achieving an end use/result that is different than the judicial exception achieves by itself. Like I said previously this is clumsy and potentially confusing. But alas it is what the Court has left us to deal with.

  11. Ned Heller:

    “Thus, under Prometheus, one simply cannot patent the LON, but must patent some inventive application. What does this mean, in point of fact?”

    Hello Ned:

    Very good question. To understand the meaning of ” inventive application”
    ( Not to be confused with “Inventive Concept” ) one must first understand the legal foundation upon which the precept in built. And that is best explained by the Prometheus Court itself as follows.:

    “In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as “a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula. ) [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added).

    Now let’s break down each keyword and trace its legal significance, none of which is more important than the phrase “as a whole”. What the Court means here is that when determining the “inventive application”, under no circumstances can the claims be dissected, as was held in Diehr. You take the claims as a whole.

    Next is the term “inventive” which means that the claims as a whole must be doing something new, and not just restating the Judicial Exception, ( in Prometheus case a Law of Nature) as a series of steps. Because to do so would amount to a claim on the LoN itself.

    Prometheus refers back to Diehr, the case most on point for what “is” patent eligible subject matter because all the individual elements in Diehrs’ process were old. For example:

    a) The industrial process of curing rubber was old.

    b) The digital computer was old.

    c) The Arrhenius equation, ( the judicial exception in this case) was old.

    Yet the Court found the process to be patent eligible subject matter. The Court was able to reach this conclusion because while certain steps, or parts in isolation were ineligible, the combination of the elements were indeed new/novel, an achieved an end use/result heretofore unknown in the art.

    When you look at the claims in combination you have “integration”. And when you have integration you are taking the claims as a whole. Thus the point of novelty, indeed the “inventiveness” in 101 is in the claims as a whole. This is not to be confused with the novelty of 102, or interpreted as the Court giving permission to conflate the sections in 35 USC.

    When the Court looked at the Prometheus claims as a whole, in an ordered combination, they determined ( rightly or wrongly) the claims were not doing anything new, other than stating a LoN and applying it. Thus the claims were not integrated and therefore not an “inventive application”. I am the first to admit Prometheus is a very awkward Court decision. Which makes it ripe for exploitation by anti patent dissectionist. However if you read it in the context of Diehr, as the Court instructs then you reach the right definition of “Inventive Application”.

    Any more questions?

    I am here to help.

  12. I don’t know what you mean, anon.

    LOL.

    LOL LOL LOL

    LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL

    Ahhhhh – better start looking for that Sam Hill.

  13. The anti-patent academic taint is unmistakeable.

    So is the elitist entitlement mentality.

    What the f–k are you talking about you sociopathic d-ckwad?

  14. the law is not looking too good for you.

    I don’t know what you mean, anon.

    As I’ve said before, I don’t have strong feelings about patents on “isolated human genes”. I think the policy arguments against such patents are interesting. Compelling even. Maybe we are entering a new era when such arguments against patents are more compelling than the familiar statutes that prevent undesirable patents from issuing. Are you looking forward to that?

    I just don’t want to see the Supreme Court invent a boneheaded and thoughtless “product of nature test” like the ones I’ve seen tossed around here and elsewhere.

  15. After reading the AMA brief, I also see a strong Product of Nature issue in Monsanto.

    That should give you a hint that the so-called “product of nature” “test” the AMA is applying is, in fact, not a test at all but a bunch of incomprehensible and unworkable gobbledygook.

    the seed from a plant sexually reproduced is hardly the product of man. It IS a product of nature.

    Right. So if I invent a novel nucleic acid that cures cancer when you rub it on your forehead, you can render my patent ineligible by putting the sequence on a plasmid in bacteria in which case “nature” will replicate it and voila! no more patent.

    Any “product of nature” test which doesn’t account for this kinds of everyday contingency is worthless, IMHO.

  16. To approach the issue from a completely different angle,

    LOL – you are going to have to come up with some completely different angle, as the law is not looking too good for you.

    Have you thought about picking up a non-English language so that you can be “misunderstood” just a wee bit more effectively?

    LOL

  17. LOL – some serious QQ.

    because we spent years of our lives providing such evidence to peer reviewers of our papers)

    The anti-patent academic taint is unmistakeable.

    So is the elitist entitlement mentality.

  18. Ned: the discovery of what DNA sequence was the genetic origin of the tendency to a particular cancer was the real discovery here. But, under Prometheous, this is “association” is a law of nature

    Ned, I absolutely agree that “sequence XX is correlated with cancer” is an ineligible fact or “natural phenomenon”. You can’t patent that fact. You can’t patent thinking about it. That was the issue in Prometheus (and it was also the reason that certain of Myriad’s method claims were flushed down the t—let). The Supreme Court in Prometheus made it crystal clear that they understood that ineligible facts or “laws of nature” of one kind or another (e.g., “this thing has a utility because of X”) underlie every eligible invention. They understood that.

    The claims in Prometheus took ineligible subject matter (i.e., a fact about the relationship between a drug dose and metabolite levels) out of the public domain, which is a big no-no. Never, ever forget this: practitioners of the prior art became literal infringers of Prometheus claims merely by engaging in the additional act of thinking about the ineligible fact. That was the step way too far. That’s why Prometheus was a 9-0 decision. It had nothing at all to do with the “importance” of the colon treatment scheme that was disclosed in the specification. The result would have been the same had the treatment scheme been relevant to three people on earth.

    The issue with Myriad’s composition claims is different. Myriad’s claimed compositions were not found in nature and they still aren’t found in nature (otherwise the defendants would show us the evidence; those of us skilled in the art know exactly what that evidence looks like because we spent years of our lives providing such evidence to peer reviewers of our papers). If the claims inherently read on the prior art (e.g., sequencing methods) that would be extremely easy to demonstrate and this 101 issue would have become moot a long time ago.

    Everyone agrees and understands that the claimed compositions (unlike the methods in Prometheus) do not prevent any otherwise lawful actor from thinking about any fact or “law of nature” so that also is not an issue here.

    The only argument with any meat on its bones appears to be premised on the fact that the only substantial utility of novel, non-obvious nucleic acid compositions like Myriad’s (other than the dubious “object of further research”) is to detect the presence of “important”/”disease-linked” mutant sequences in humans. The key assumption of this argument is that there is no other way to detect the mutant sequences except by infringing Myriad’s patent. If this assumption is correct then, according to the argument, researchers are prevented from merely identifying or treating people with the mutation without infringing the patent.

    Myriad does not believe that the assumption is correct. Kevin Noonan doesn’t believe it either, as far as I can tell (and you can take that fact with a grain of salt if you like). I’m not convinced that the assumption is correct, either. But I don’t think it’s disputable that Myriad’s claim (and claims like it, i.e., claims to DNA sequences that are identical or complementary to newly discovered genetic markers) makes it difficult for practitioners of the prior art to study the genomes of people without literally infringing the patent. And this, of course, is a claim construction issue.

    Myriad has made all sorts of statements to the effect that normal DNA sequencing protocols don’t infringe its patent and they don’t intend to sue people who use traditional sequencing to identify the presence of the gene. Of course, if the claim is properly construed to include compositions that arise during the course of “normal” DNA sequencing, then it doesn’t matter what Myriad thinks its claims covers or who Myriad promises not to sue. In that case, I think Myriad (and wannabes with claims of similar scope directed to different marker sequences) have a serious problem because their claims seem to be inherently reading on compositions in the prior art (not “natural” compositions, but compositions produced during the course of genome sequencing).

    To approach the issue from a completely different angle, imagine if BigLab has identified a very strange molecule only in people who subsequently get Crohn’s disease. BigLab’s scientists develop a test and it’s the only test in the world for identifying the presence of this molecule. BigLab decides to keep the molecule secret but they patent a novel composition of matter (“detectin”) that is essential for their test. Nobody can predict the likelihood of Crohn’s disease with the miraculous accuracy of this test unless they use BigLab’s patented composition. In a sense that is exactly as “real” as the arguments presented by the ACLU, BigLab “owns” the correlation itself by virtue of its patent on the only composition for obtaining the foundational information.

    Is that really a 101 problem? Or is it more like a policy issue concerning human medicine?

  19. Does the government address…

    Yes.

    Did they consider the same question…

    Yes.

    It appears that someone in the Solicitor General’s Office has no problem whatsoever understanding certain arguments posted on certain blogs in what must be English as a second language.

    LOL

    MM, maybe you can go dance a “9-0 baby” jig and post a link to the government brief (naturally, before you actually read it).

    LOL

  20. When I view the page with Chrome Version 24.0.1312.57, it distorts the columns and places arrows in the background of the blog post. It displays the comments fine, but not the subject of the post.

    I had to post this with Safari.

  21. Any questions?

    Yes. Can you find Conscience for me? I set him out to find MM, my popcorn and the offered page cite for another glorious MM self-defeat (yes, concerning a dead letter in Prometheus, but no one is home. Maybe MD can steel himself and help out.

    Sniff, I feel abandoned.

    LOL

  22. Hello MM:

    Well, since you are afraid to broach the Court’s “Integration Analysis” I would be glad to help you out here with this subject. Now what’s your question?

    MM: Why should the Examiner care about your “preferred embodiment” when the claims literally read on a broader invention?

    101: Because when the claims are read in “light” of the specification, as the law requires the Examiner to do, the claims may not actually read on a broader invention as the examiner asserts. Why? The ” preferred embodiments” may provide a definition of a claim term or phrase that distinguishes the invention over the prior art. This kind of enlightenment, (which by the way the phrase “in light” of the specification derives from) is gleaned only by caring enough to read, understand, and considered the “preferred embodiments”.

    MM: You argue hey it’s in the spec. Do you know what claims are for?

    101: Yes, do you know what the specification is for? Well, then let me inform you. Among other things, the Specification is there to serve as a glossary for the terms in the claims.

    See:

    “The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (the USPTO looks to the ordinary use of the claim terms taking into account definitions or other “enlightenment” contained in the written description)” ( MPEP 2111.01 Plain Meaning [R-9])

    MM: “Again, that’s what the Examiner should be doing: pointing out to you that your claims are broader than your “preferred embodiment” and therefore if you want valid claims to issue then you need to amend them.”

    101: Well, now let’s look at breadth according to the statute.

    Under 112 claims can be as broad they are enabled.

    Under 101 breadth is not an issue at all.

    Under 102 claims can as broad as the prior art allows.

    Under 103 breadth is not an issue. Obvious is the question there.

    So what the Examiner should be doing, is reading the specification to see where the Applicant has provided a lexiocographic definition of any terms or phrases, as well as considering how a person of ordinary skill in the art would view the terms and phrases.

    See: “The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827] (Fed. Cir. 2004).

    Any questions?

    I am here to help.

  23. MM, psssst – you don’t need “precise” with the word “effectively.”

    What’s that? You’ve forgotten again what that means? Leopold, did you bookmark the lovely definition you provided a while back?

    LOL

  24. After reading the AMA brief, I also see a strong Product of Nature issue in Monsanto. While the DNA sequence of a plant might be the product of man, the seed from a plant sexually reproduced is hardly the product of man. It IS a product of nature.

  25. Certainly, the discovery of what DNA sequence was the genetic origin of the tendency to a particular cancer was the real discovery here. But, under Prometheous, this is “association” is a law of nature.

    Thus, under Prometheus, one simply cannot patent the LON, but must patent some inventive application. What does this mean, in point of fact?

    With the AMA and the US Government against, and Prometheus 9-0, there may be a problem, Malcolm.

  26. Let’s try again:

    That AMA brief is a real piece of work.

    There is a very real and quite compelling policy concern arguing against the patent eligiblity of isolated nucleic acid sequences whose only substantial utility as of the filing date is for (1) identifying its complement in a human genome, i.e., a marker detector; and/or (2) as a tool for further research. And Myriad’s claims really are the perfect context in which to have that policy dispute. Ideally, it would be a subject for Congress to debate but this is the United States and we know those folks in Washington roll.

    Fine.

    But then there’s all sorts of distracting cr-p like this in the AMA brief:

    The patent claims at issue in this case, covering isolated DNA and cDNA which are described by their genetic sequences, are invalid because they are patents on products of nature without an inventive concept and because isolated DNA and cDNA are not markedly different from what occurs in nature in every human being

    Can we at least try to be accurate? Yes, humans are animals and they have genomes comprising DNA, just like bacteria. But it’s simply not true that any and all nucleic acids are “not markedly different from what occurs in nature in every human being.” The human genome is large but it certainly doesn’t encompass all possible nucleic acid sequences that encode potentially useful proteins or that could have utility as non-coding sequences (e.g., promoters and other regulatros of transcription etc). Not even close! Why would the extremely thoughtful well-meaning people who certainly reviewed this brief let nonsense like the above quote slip through?

    And this:

    Moreover, it makes no sense to have patentability turn on the issue of whether covalent bonds are broken, since DNA that is not covalently bonded exists in the body

    DNA that is “not covalently bonded”? What is that supposed to mean?

    and since the other bonds (such as hydrogen bonds) are actually more important than covalent bonds in terms of DNA functioning.

    That’s ridiculous. It’s like saying that the wings of a jet plane are “more important” than the engine. It’s unhelpful nonsense.

    When Myriad’s counsel was pressed to identify its inventive concept at oral argument on remand, Myriad’s main argument was that the decision of the scientist about where to “cut” the gene sequence to remove it from the chromosome was the inventive concept. Fed. Cir. Oral Arg. on Remand Trans. at 42:48 (July 20, 2012). Under such logic, the first surgeon who successfully removed a kidney for transplant, because he decided where to cut, could obtain a composition of matter patent covering all kidneys later removed by anyone else.

    Actually, the logic would require the patent to cover only the non-naturally occuring isolated kidney cut in the precise non-obvious location identified by the surgeon.

    Much of the case law-based 101 argument in the brief is very evocative of arguments under 103, which would set a very unfortunate precedent for composition of matter claims. For example, such a test would allow compositions that were novel and non-obvious as of their filing date to become ineligible if a similar composition was found “in nature” (and if we are allowed to ignore covalent bonds for that analysis, the problem with the analysis becomes extraordinarly more acute!).

    All that said, there are some good points made. It’s just unfortunate to see them buried under b.s. like that I’ve highlighted above.

  27. That AMA brief is a real piece of work.

    There is a very real and quite compelling policy concern arguing against the patent eligiblity of isolated nucleic acid sequences whose only substantial utility as of the filing date is for (1) identifying its complement in a human genome, i.e., a marker detector; and/or (2) as a tool for further research. And Myriad’s claims really are the perfect context in which to have that policy dispute. Ideally, it would be a subject for Congress to debate but this is the United States and we know those folks in Washington roll.

    Fine.

    But then there’s all sorts of distracting cr-p like this in the AMA brief:

    The patent claims at issue in this case, covering isolated DNA and cDNA which are described by their genetic sequences, are invalid because they are patents on products of nature without an inventive concept and because isolated DNA and cDNA are not markedly different from what occurs in nature in every human being

    Can we at least try to be accurate? Yes, humans are animals and they have genomes comprising DNA, just like bacteria. But it’s simply not true that any and all nucleic acids are “not markedly different from what occurs in nature in every human being.” The human genome is large but it certainly doesn’t encompass all possible nucleic acid sequences that encode potentially useful proteins or that could have utility as non-coding sequences (e.g., promoters and other regulatros of transcription etc). Not even close! Why would the extremely thoughtful well-meaning people who certainly reviewed this brief let nonsense like the above quote slip through?

    And this:

    Moreover, it makes no sense to have patentability turn on the issue of whether covalent bonds are broken, since DNA that is not covalently bonded exists in the body

    DNA that is “not covalently bonded”? What?

    and since the other bonds (such as hydrogen bonds) are actually more important than covalent bonds in terms of DNA functioning.

    That’s ridiculous. It’s like saying that the wings of a jet plane are “more important” than the engine.

    When Myriad’s counsel was pressed to identify its inventive concept at oral argument on remand, Myriad’s main argument was that the decision of the scientist about where to “cut” the gene sequence to remove it from the chromosome was the inventive concept. Fed. Cir. Oral Arg. on Remand Trans. at 42:48 (July 20, 2012). Under such logic, the first surgeon who successfully removed a kidney for transplant, because he decided where to cut, could obtain a composition of matter patent covering all kidneys later removed by anyone else.

    Actually, the logic would require the patent to cover only the non-naturally occuring isolated kidney cut in the precise non-obvious location identified by the surgeon.

    Much of the case law-based 101 argument in the brief is very evocative of arguments under 103, which would set a very unfortunate precedent for composition of matter claims. For example, such a test would allow compositions that were novel and non-obvious as of their filing date to become ineligible if a similar composition was found “in nature” (and if we are allowed to ignore covalent bonds for that analysis, the problem with the analysis becomes extraordinarly more acute!).

  28. what are you going to do when the Examiner ignores your ‘preferred embodiment” in the name of broadest reasonable interpretation

    Why should the Examiner care about your “preferred embodiment” when the claims literally read on a broader invention?

    You argue hey it’s in the spec

    Do you know what claims are for?

    Examiner responds, sorry can’t import limitations from the spec,

    Again, that’s what the Examiner should be doing: pointing out to you that your claims are broader than your “preferred embodiment” and therefore if you want valid claims to issue then you need to amend them. The alternative is to point to your clear, narrower and unambiguous definitions of the disputed terms and phrases.

    Or you can just stick to your “theory” of claim construction and just claim “The world and everything in it” and when the Examiner complains about the breadth, you can pound the table and say that your claim is no broader than “the invention” you described in the specification. And of course appeal! appeal! appeal!!! Unless Director Rea changes things, that’ll probably work 20% of the time at our awesome PTO. Worth the gamble? Probably.

  29. Yes, but what are you going to do when the Examiner ignores your ‘preferred embodiment” in the name of broadest reasonable interpretation, so that only the “patent ineligible concept” is being claimed?

    You argue hey it’s in the spec! Blah blah blah.

    Examiner responds, sorry can’t import limitations from the spec, BRI. Blah blah, blah. You will fail 101, 102, and maybe even 103 this way.

    It’s a dirty little trick but it happens everyday.

    :-/

  30. The AMA brief, at page 7, says this,

      A patent on the genetic sequence of a human gene grants the patentholder complete control over the use of that sequence the life of the patent.

    At page 19 they say this,

      Nature’s handiwork is excluded from patentability. [Citing Mayo and Bilski.] “Laws of nature, natural phenomena, and abstract ideas’ are not patentable.” [Citing Mayo] “[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.” [Citing Chakrabarty (Funk Brothers)] rather, a newly discovered natural phenomena must be “treated as though it were familiar part of the prior art” and free-for-all the use. [Citing Flook and Bilski]

      even when a newly discovered long nature are product of nature is novel, nonobvious, and useful, it is still not patentable under section 101 [citing Mayo] nor can a patent be granted on a synthetic product that is not markedly different from what is found in nature Cochrane v. Badische Anilin & Soda Fabrik, 111 US 293, 311 (1884).

      To be valid, a claimed invention evolving a product nature must have an inventive concept that of all simply more than describing the product of nature. The claimed invention must be “markedly different” from what occurs in nature. Chakrabarty, 447 US at 310. See also five brothers, 333 US at 130; American Fruit growers, Inc. v. Brogdex company, 283 US one, 11-12 Lebron 1930); Cochrane, 111 US at 311.

      The patent claims at issue in this case, covering isolated DNA and cDNA which are described by the genetic sequences, are invalid because they are patents on products of nature without any inventive concept and because isolated DNA and cDNA are not markedly different from what occurs in nature and in every human being.

  31. I don’t know, I haven’t seen the brief yet. It’s just a lawl360 article behind a paywall for now. They do say that it was filed on 02/01/13 tho I think.

  32. The position taken on “gene patents” is less important (to me) than the rationale behind the position.

    Does the government address the issue as to whether a new and non-obvious isolated nucleic acid sequence, with a substantial utility other than “detecting its complement”, suddenly becomes ineligible when it’s discovered after the filing date that the recited sequence (or a “similar” sequence?) is found buried (i.e., non-isolated) in the chromosome of a “natural” organism (whatever “natural” is supposed to mean in this context)?

    Did they consider the same question as that I posed above in the context of amino acid sequences?

    If not, that’s unfortunate.

  33. “http://www.law360.com/ip/articles/412252?nl_pk=994dc35a-6d58-4192-9311-c4a951b056d5&utm_source=newsletter&utm_medium=email&utm_campaign=ip”

    lulz lulz lulz, no gene patents for you says feds.

  34. and another when I saw that you had taken it seriously.

    Why do you think I took it seriously?

    Do you think I take MM “just as seriously?”

    Really?

  35. I myself took that “every application” boast as pure sarcasm. No question. You know, like I take your announcements of your razor sharp wit. Or do you mean it seriously?

    And I got two laughs. One for his comment and another when I saw that you had taken it seriously.

    Now I will steel myself for another dose of snark, and what you think of as wit.

  36. Respective says he is:

    “…starting to envy the EP process where you actually know what is claimed based on the claim language….”

    and I’m wondering what he is alluding to. Folks, which of the following do you think it might be?

    1. You don’t get to issue till you have removed from the specification any statements of what the invention is that contradict what the claim defines the invention to be.

    2. Because Europe eschews extrinsic evidence of what a claim means (and extrinsic includes the PTO wrapper) Examiners are required by EPO management to be very fussy about confomity between the invention described in the allowed specification and the invention defined in the allowed claims.

    3. Because a want of clarity is not available after issue to dispute the validity of any claim, EPO management requires from its examiners that every claim that exhibits less than total clarity be rejected.

    4. Because in any First to File jurisdiction, total vigilance is required throughout prosecution, lest a wily Applicant illegitimately improve its position during prosecution to one not jusified by its as-filed disclosure, prosecution amendment is more or less limited to the verbatim text as filed.

    5. EPO practice is merciless with sloppy (or deliberately obfuscatory) drafting.

    In all of that, what’s to envy? Anything or nothing?

  37. Right. And it could be 1 or 2 operator bodies each one coupled to a respective one of the… and at least another one of the…

  38. but every application I have ever filed is a first action allowance without amendment

    With all due respect, you are doing it wrong – most likely obtaining coverage far below what your client deserves, an likely with picture claims that are only too easily designed around.

    It smells like you would make good friends with MM.

  39. “At first glance, the term “one” appearing directly after the phrase “a respective” might be viewed as limiting. In this case, however, the specification substantiates a construction that allows for an elongated operator body to be operably coupled to one or more operator elements.”

    This is ridiculous. What happened to “the name of the game is the claim?” It seems to me the Fed. Cir. is relying on the intrinsic record to determine the ordinary and customary meaning of the term respective one of…and the intrinsic record discloses one embodiment; therefore, the customary meaning must be disclosed in the intrinsic record containing the one embodiment. Um….Consult an extrinsic source….Definition of Respective: pertaining individually or severally to each of a number of persons, things, etc., or particular, separate. Not sure how the “respective one of” turns into one or more…yah, the court states how they do it, but it makes no sense given an ordinary and customary meaning analysis. The drafter could have chosen “one or more” and didn’t.

    I’m starting to envy the EP process where you actually know what is claimed based on the claim language. I’ll even take being SOL on a misspelling if there is at least some predictability.

    We have held that “a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.” Really? Seriously?

    So many ways this is wrong. I don’t know about you guys, but every application I have ever filed is a first action allowance without amendment…after all, everything I file is brand spanking new and has never been done before….nothing even comes close and I never need to include a further limitation that may or may not be included in the “preferred” embodiment, wherein the “preferred embodiment” is the only embodiment.

  40. I guess I shouldn’t worry about making amendments anymore

    Nor should you worry any less. This decision really does not change patent law in any appreciable manner, if one looks at the case with a modicum of common sense (aside from the gratuitous QQ’ing from the usual suspects).

  41. In my view, a narrowing claim language made during the course of prosecution should not carry the same presumption of covering the preferred embodiment.

    Why?

    Especially where, as here, the change does not appear to be because the item to be overcome was related to the preferred embodiment.

  42. Agreed.

    The reasons for allowance noted that it was he single drive shaft vs. two in the prior art that was the novelty.

    The arms connect the drive shaft to driven components of the machine. That is all the claim language should have said. The language chosen was never discussed in the amendment in which it was entered so what it was supposed to mean was not made clear.

    Obviously, though, when there is no embodiment showing only one-to-one connections, and this language was not intended to define over the art, some common sense should be employed in construction.

  43. I guess I shouldn’t worry about making amendments anymore…whatever amendments I make to the claims, we can always appeal to the fed. cir. and have them interpreted to read on the preferred embodiment. Patent law just got more funner.

  44. Good points – but I still don’t see any indication in the prosecution history that this “respective one” language was added to mean “respective one and only one” in order to avoid prior art. The one and only embodiment in the spec suggests otherwise – that the language is not so limiting. Therefore, I don’t think that the Fed. Cir. construction here is all that crazy. But I agree – “respective” is dangerous word in claims.

    I admit though, I might be missing something. I haven’t read the entire PH or all the briefs.

  45. Now, if the patentee has bitten off more than they can chew, there’s a good chance that this claim will go down on written description.

    In a mechanical case? Doesn’t happen very often. It appears the originally filed claims were broader so the argument would be that in this “predictable” art the inventor was in possession of all the configurations covered by the original claims and not just the configuration in the “preferred embodiment.”

    Isn’t it rather rare for claims to read out the only embodiment disclosed in the claims?

    You mean “disclosed in the specification.” I don’t think it’s rare in the case where there is prior art close to the “preferred” embodiment and the alternative is no patent at all.

    I still have no idea what the term “respective” is supposed to add in this context and I suspect there are a lot of prosecutors who use the term without any understanding of its meaning.

  46. I’ve read a bit of the patent and prosecution history. There is only one embodiment. It has one drive assembly, four arms. Two of the arms are connected in two instances to two different actuated machine parts.

    The prior art disclosed a similar machine, but had two drive assemblies, not one.

    The amendment was concocted by the examiner/applicant during an interview. It was not explained in writing.

    Thus, the literal reading of the claim language cannot be correct to the extent it must be construed to cover the sole embodiment.

    Blame this one, in part, on the examiner and an very compliant patent agent.

  47. Clarification – I meant to say the one and only embodiment disclosed in the specification, not “the claims.” That is, it’s rare for a claim to read out the one and only embodiment disclosed in the specification – unless that embodiment is covered by some other claim in the patent. But that doesn’t appear to be the case here.

  48. Read the case before commenting. This wasn’t just the preferred embodiment – it was the only embodiment disclosed. Isn’t it rather rare for claims to read out the only embodiment disclosed in the claims? Possible, but rare. Moreover, there’s no indication that a “one and only one” relationship was added to overcome something in the prior art.

    Also, like Les explained, with a respective one does not necessarily mean with only a respective one. Seems pretty clear cut to me.

    Now, if the patentee has bitten off more than they can chew, there’s a good chance that this claim will go down on written description. But district court never reached invalidity.

  49. Yeah I ran into this kind of bad drafting the other day, we’re sorting it out in my app tomorrow. One wonders who doesn’t grasp the basics of claim drafting well enough to draft these kinds of claims better.

  50. “enablement and written description rejections are not the norm.”

    Idk about that either, I was thinking about it the other day and I was guesstimating that I give a 112 1st in at least half of my cases, at the least half of the ones that come back after non-final.

    “Even restriction requirements can lead to preferred embodiments being excluded”

    Well, yes, but then it is one preferred embodiment per restricted app.

    “As a general rule of claim construction, it’s crazy and unhelpful.”

    Idk, I think you’re going a little bit overboard. Although to decide the case solely on that may be a little overboard as well.

  51. Then why does the claim refer only to a set of operator bodies and not specifically four operator bodies? The “respective” might divvy up the four elements among the members of the set, but I don’t think it requires a 1 to 1 correspondence.

  52. It is pretty rare in my art.

    I suppose it might be rarer in so-called predictable arts where enablement and written description rejections are not the norm.

    Even restriction requirements can lead to preferred embodiments being excluded, particularly when the preferred embodiments are covered by claims in earlier or co-pending cases.

    As a general rule of claim construction, it’s crazy and unhelpful. Why can’t get the Fed Cir stop shooting itself in the foot with absurd j-nk like this?

  53. “Are you suggesting that if a clear and definite claim is not enabled, then there should be an effort to conform its interpretation to a preferred embodiment?”

    No.

  54. If the claimed subject matter is described, enabled, clear and definite there shouldn’t be any efforts to conform its interpretation to any preferred embodiment(s).

    Are you suggesting that if a clear and definite claim is not enabled, then there should be an effort to conform its interpretation to a preferred embodiment?

    I hope not. Such a rule would seem to render the enablement requirement a “dead letter” and would also undercut the purpose of claims themselves. I recognize that the position has one or two misguided adherents on the Federal Circuit.

  55. “As Dennis points out, applicants amend claims all the time for all kinds of reasons and it’s not “rare” for those amendments to exclude one or more (usually most) of the “preferred embodiments” described in the application”

    It is pretty rare in my art.

  56. Sure, each operator body could be coupled with more than one of those elements and possibly still satisfy the claim. But by using “each”/”respective one”, the claim sets up a correspondence between each of the operator bodies and each of those four elements, and this correspondence results in four operator bodies being called for by the claim.

  57. Some other great uses of this claim language in the database:

    8,365,111
    1. An apparatus for logic simulation, comprising:
    storage including a library to define how a net-list is to be synthesized by a synthesis tool;
    a data-driven logic verification chip comprising a plurality of logic processors, wherein the data-driven logic verification chip comprises a plurality of logic simulation engines, each of the plurality of logic simulation engines comprising:
    a routing unit, wherein the routing unit is configured to execute a routing algorithm wherein a header of a routed packet includes offsets in an X direction and a Y direction and the packet is determined to reach its destination when both offsets are equal to zero;
    an instruction memory;
    a respective one of the plurality of logic processors; and
    a data memory; and
    a code generator to adopt one or more heuristics to convert the net-list into data driven logic programs and to allocate hardware resources to balance computing and storage loads across the plurality of logic processors of the verification chip.

    8,363,544 (truly a total piece of cr-p)
    1. A method of determining quality rankings of user traffic transmitted over a communications network, the user traffic directed from at least one traffic producer Web site linked to the communications network to a plurality of traffic consumer Web sites, each of the plurality of traffic consumer websites linked to the communications network, comprising the steps of: a) establishing a plurality of references for the plurality of traffic consumers on the at least one Web site of the traffic producer, the plurality of references each including a link to a traffic quality intermediary and a unique identifier to identify a respective traffic consumer from other traffic consumers of the plurality of traffic consumers, the traffic quality intermediary linked to the communications network; b) directing, using a respective link, user traffic data received by the traffic quality intermediary, through the traffic quality intermediary, from the at least one traffic producer Web site to one or more of the plurality of traffic consumer Web sites, the user traffic data being associated with the user traffic directed from the at least one traffic producer, the user traffic based on requests for a reference on the at least one web site of the traffic producer, the requests transmitted from computers associated with users, the computers linked to the network, to the at least one web site of the traffic producer; and c) determining, at the traffic quality intermediary, a quality ranking of the user traffic of each of the traffic consumers based upon: i) a weighting of a plurality of traffic data parameters associated with the user traffic data received by the traffic quality intermediary, at least one of the traffic data parameters obtained from the requests transmitted from the computers of the users, and, ii) the unique identifier of the respective traffic consumer.

    12. A method of determining a quality ranking of user traffic in accordance with claim 11, wherein the predetermined group of traffic producers is an industry grouping into which the plurality of traffic consumers are categorized or a grouping based on a common factor to a respective one or ones of the traffic consumers and the others in the grouping or a general grouping of traffic producers.

  58. “Easily one of the Federal Circuit’s st-pid-st holdings ever.”

    I agree. If the claimed subject matter is described, enabled, clear and definite there shouldn’t be any efforts to conform its interpretation to any preferred embodiment(s).

  59. With a respective one of does not mean :with only a respective one of.

    Fascinating.

    What does the term “a respective” add to the phrase “with one of”? What is the point of including the term “respective” in that phrase?

  60. It’s a good thing that current patent law treats claim ambiguity so harshly. Otherwise drafters might intentionally keep their claims as muddled as possible by, e.g., creating new terms when old terms would do and filling their claims with “limitations” that aren’t really limitations but at all but rather the results of “choices” in a patent-ineligible decision tree (or some other abstraction) or the recitation of non-limiting/obvious uses for a machine with generalized “capabilities”.

    We can only hope the harsh treatment of claim ambiguity will continue. I’m surprised more applicants aren’t complaining about the incredibly harsh treatment they are getting from the USPTO in that regard.

  61. Les, thanks for your clarification. You might be right.

    Still I would want to know whether there is alternate embodiment showing only a 1-1 relationship.

  62. Agreed

    We have a set, each member of the set coupled to one of a group, defined by a list….

    If there is no embodiment showing this, the claim seems to be unsupported in the specification. If there is such an embodiment, then the claim amendment seems limited to that alternate embodiment.

    The post does not make clear whether there was only the one embodiment or whether the claim as written was supported by an alternate embodiment.

    Even so, something definitely stinks in the State of Denmark. The result cannot be explained.

  63. “elongated operator bodies, with each of the operator bodies being operably coupled with a respective one of said gripper, knotter, cutting element and cover so as to supply driving power from the single drive assembly thereto.”

    With a respective one of does not mean :with only a respective one of.

    Instead “with a respective one of” means: with at least a respective one of.

    For similar reasons a stool comprising three legs covers a four legged stool.

  64. The drafter here seems to have tried its very best to avoid anything resembling clarity.

    Yes, and it got the patentee a do-over on claim construction.

  65. We have held that “a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.” On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004).

    Easily one of the Federal Circuit’s st-pid-st holdings ever.

    As Dennis points out, applicants amend claims all the time for all kinds of reasons and it’s not “rare” for those amendments to exclude one or more (usually most) of the “preferred embodiments” described in the application. Applicants also draft original claims that cover non-preferred embodiments for all kinds of reasons.

    The Federal Circuit’s “rule” is actually nothing more than a self-fulfilling prophecy. As applied, it’s an absurd rule that guarantees the wrong results (like this one). A better rule would be something to be applied in only a rare circumstance such as an originally presented broad independent claim that was not amended. Typically (but certainly not always) such a claim would be expected to read on at least some preferred embodiments of the broader invention (e.g., the sorts of embodiments that would be expected to be described in originally presented dependent claims).

    Seriously, though: “coupled with a respective one…”? The drafter here seems to have tried its very best to avoid anything resembling clarity. This would be excellent case for an en banc review of some awful Federal Circuit precedent floating out there. Why is it so hard for them to get the basic stuff right?

  66. Even under broadest reasonable interpretation, I would still require there to be four operator bodies, one for each of those respective four elements.

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