Judge Plager: Construe Ambiguous Terms Against the Drafter

3M Innovative Properties Companies v. Tredegar Corp (Fed. Cir. 2013)

In 2009, 3M filed sued – alleging that Tredegar’s elastomeric laminates (used for diaper waistbands) infringed four 3M patents. U.S. Patent Nos. 5,501,679; 5,5691,034, 5,468,428, and 5,344,691. After claim construction, District Court Judge Donovan Frank 3M stipulated to a finding of non-infringement. The appeal focuses on construction of the asserted claims.

In its decision, the Federal Circuit panel issued three different opinions – each offering different notions on the correct construction of the various claim terms and each offering some disagreement with Judge Frank’s initial opinion.

The most interesting opinion of the four is Judge Plager’s concurring opinion that focuses on the intentional ambiguity inserted into the claims by 3M. Judge Plager argues that courts should begin to apply the contract doctrine of contra proferentem and construe ambiguous terms against the drafter (i.e., the patent holder). Judge Plager writes:

I appreciate that there are four different patents involved, and that the particular technology for manufacturing the product is quite detailed, although the products themselves are fairly basic—the material at issue is used for example in diapers. Nevertheless, when claims are larded with terms such as “substantially,” “preferentially,” and “relatively,” and when it takes four judges and some seventy pages of densely written opinions to find meaning in these terms, there is considerable evidence of a failure by the claim drafters to be clear and precise, and, beyond that, of a shortcoming in the patent examination process that permits claims to be so drafted.

Sometimes such ambiguity is the result of sloppy drafting, and sometimes it appears that claims are drafted with a degree of indefiniteness so as to leave room to later argue for a broad interpretation designed to capture later-developed competition. The problem is exacerbatedwhen, as here, there is a conflicting or indeterminate written description and prosecution history with regard to the claim terms at issue. Claim construction then becomes a game of crystal ball gazing, not resolved until this court’s gaze is announced.

The particular claim construction issue that divides the three appellate judges provides a perfect example of the problem. The claim term, “continuous microtextured skin layer,” truly is perplexing. Does “continuous” apply to the microtexturing, the skin layer, or both? Does it mean the microtexturing is everywhere (except perhaps for manufacturing flaws), or can it cover only a part of the skin layer as long as that part is continuous? Relying on the Chicago Manual of Style, 3M argues that “continuous” and “microtextured” are adjectives that separately modify “skin layer,” and thus, the claim term does not require that the microtexturing itself be continuous. According to 3M, if the applicant wanted “continuous” to modify “microtextured,” the applicant would have used the adverb “continuously.”

3M makes an interesting argument to be sure. But the argument creates its own grammatical problems. For example, there is no comma between “continuous” and “microtextured.” And the Chicago Manual of Style also tells us that adjectives that separately modify a noun are generally separated by a comma, unless of course the second adjective is a unit with the noun being modified (which would favor Tredegar’s construction). The Chicago Manual of Style § 6.33 (16th ed. 2010). The applicant seems to have understood this comma concept, and in fact used it when referring in the written description to a “continuous, deeply textured, microstructured surface.” ’034 patent, col.15 ll.2-3. But the nuances of comma usage, like 3M’s adverb argument, seem to me a tenuous foundation for an entire claim construction on which substantial liabilities may rest. See United States v. Palmer, 16 U.S. 610, 638, 4 L. Ed. 471 (1818) (noting that “the use of the comma is exceedingly arbitrary and indefinite”); United States v. Ron Pair Enterprises, Inc., 489 U.S. 235, 249, 109 S. Ct. 1026, 1035, 103 L. Ed. 2d 290 (1989) (characterizing a comma as a “capricious bit of punctuation”) (internal quotation marks omitted).

Much like the claim’s grammar, the written description provides little help deciphering the meaning of the disputed term. Certainly, the ’034 patent has a lot of disclosure: nearly 30 columns of it. The patent has 33 different examples, 16 tables, and 24 figures. The patent’s problem does not lie in the quantity of its disclosure; it lies in the disclosure’s relevance to the language used in the claims.

The applicant knew or should have known that the claim term “continuous microtextured skin layer” was highly relevant to the patented technology. The applicant wrote the term nine times in the first eight claims. Strangely, however, the disclosure does not reflect this relevance. “Continuous microtextured skin layer” does not appear one single time in the written description. The written description provides no discussion of “continuous microtextured skin layer,” no definition. Language resembling the claim term appears here and there, but mutated versions of claim terms often confuse more than they elucidate.

While ultimately I have voted to join Judge Reyna for the reasons I explain shortly, Judge O’Malley in her dissent-in-part makes an argument for the opposite construction based on the prosecution history. The argument is not without merit, although again, I do not find the prosecution history a shining example of clarity.

Cases like this—claim construction issues such as this one—may well deserve application of a principle analogous to the contract doctrine of contra proferentem. See Williston on Contracts § 32:12 (4th ed.). When a term is ambiguous, a crystal ball matter, the ambiguity should be construed against the draftsman. (Or better yet, the claim should simply be invalidated as indefinite, though our court has not seen fit to go there as yet.)

Without labeling it as such, we have already used this principle to construe claims for compliance with 35 U.S.C. § 112. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996) (“Where there is an equal choice between a broader and a narrower meaning of a claim, and there is an enabling disclosure that indicates that the applicant is at least entitled to a claim having the narrower meaning, we consider the notice function of the claim to be best served by adopting the narrower meaning.”); see also A Theory of Claim Interpretation, 14 Harv. J.L. & Tech. 1, 81 (2000).

The contra proferentem principle would require the applicant to draft clear claims, using simple, direct sentences, proper grammar, and definitions in the written description where appropriate. It harmonizes with the notice function of patent law. It would result in applicants—and prospective patentees—investing more resources on the front end, during drafting, and less resources on the remedial end, during litigation. Better drafting of patent applications can only improve the efficiency of the patent system by clearly delineating a patentee’s property rights, thereby reducing wasteful and unnecessary litigation.

Specifically in this case, when I gaze in my crystal ball, I see, in addition to the verbal jousting, a district judge who struggled at length to make sense of the claims, and I see a patentee (more correctly a patent applicant) who had the last clear chance—infringement is after all a tort—to avoid this kind of unnecessary claim construction game. My crystal ball tells me to vote against the patentee’s construction of “continuous microtextured skin layer” and in favor of a competitor who should not have the risk of guessing wrong about what a claim term could possibly mean.

Judge Plager’s solution is gets to the heart of the matter – claim construction is problematic because patents and patent claims are so often drafted in ways that hide the invention rather elucidate the inventor’s contribution.

118 thoughts on “Judge Plager: Construe Ambiguous Terms Against the Drafter

  1. 6, Thanks for your comments here. I suspect you are right because this weekend I found myself dictating some claims and doing exactly this, providing two adjectives in front of a noun without commas. If it were not for this case, I would have thought nothing of it. But in view of this case, I went back and added the necessary commas throughout.

     
     
     

  2. I Agree with everything you said on Aug. 12, at 12:36 EDT. If you thought I didn’t or wouldn’t, then you may have misread me. Otherwise, I’d estimate you read me 5 by 9.

  3. Oh dear Les, I fear we are talking at cross-purposes. But thanks for giving me something to respond to.

    The court is interested in many issues, like the interests of justice, and finding a claim construction that is reasonable. I do not say the court is uninterested, rather, it is disinterested, which is not the same thing at all.

    All I was saying is that the court is neutral, as between the business interests of the Plaintiff and those of the Defendant.

    I suppose you have more experience of BRI at the USPTO than I do. But I imagine I have greater experience than you do, of the gymnastics of argumentation that opposed litigants go through, in contested inter Partes proceedings, when it comes to claim construction.

    The patent owner strives for a claim construction that leaves the claim not invalid, yet infringed.

    The accused infinger, conversely, strives for a claim construction that is either so narrow as to not be infringed, or else so wide as to be clearly invalid. One or the other will work, but not the middle way, that leaves the claim BOTH infringed AND not invalid.

    It is then a good deal more complicated for the court to settle upon the proper construction of the Claim than it is the USPTO in ex Parte proceedings.

    Or am I misreading you?

  4. “6, so, there is NO reasonable possibility that the phrase could be read “continuously microtextured”? If we are going to read implied comma’s in, why not implied “ly’s?””

    Nope.

    Also, we’re not “reading in implied commas”, we’re writing the way everyone does in such arts, every single day. Without doting their work with commas everywhere, you know, using proper english. You might be unfamiliar with commas, but a cardinal rule is to not go ape-nuts with them which would be required on a daily basis if we were to write using the comma scheme proposed in the handbook.

    In any event, regardless of what happens with the commas, there is no reason to tack on an ly.

    Also, I’m growing way too bored with this conversation to take it further. If you worked in such arts this wouldn’t even be a topic of discussion.

  5. Again, I read the bio-C as an intended use, not as a limitation. But I don’t practice in the chemical arena. If the chemical was known, it was known. If perfect bio-c is being relied upon as a distinguishing limitation and the spec doesn’t say how perfect bio-c is achieved over an embodiment of the same chemical in the prior art, then, shrug, maybe the dependent claim that recites perfection isn’t valid, I dunno.

    But I don’t see how anyone gets off saying the term bio-C is ambiguous.

  6. Les, you do know that if the claim were to be construed broadly (the full bio-compatibility range, 0-2) that the claim is manifestly invalid at least two grounds: first prior art, and second lack of enablement. The more conservative construction preserves validity on both.

    Given these considerations, what was proper construction in your view?

  7. Clearly, the inventor was claiming as broad a range as he could. That’s what inventors do. So the spec defines bio-c with the accepted definition and the spec discloses a preferred embodiment that the inventor believes is very bio-c. So what? Why does that limit the claims to the perfect or preferred embodiment?

  8. Unfortunately Max, It appears to me that courts are very interested. That’s why we have so many conflicting and absurd rulings based on twisted logic, such as: a method isn’t a method under 35 USC 101 if it claims a mathematical process. That’s no where in the statute. One would have to have an ulterior motive to come up with that nonsense.

    Another example is the decree that: A method is not a method if it is a newly discovered naturally occurring method even though the U.S. Constitution and the Statute specifically refer to discoveries as things to which inventors may secure rights/patents to and even though there is nothing TO “discover” but products and phenomenons of nature. Clearly, that court was an interested party.

  9. have no end of words

    Not limited to ‘rooting.’

    Ah, the joys of legally being allowed to be your own lexicographer.

  10. I just found out, if one Googles, it gets even funnier:

    link to alldownunder.com

    Take this link to discover that what Americans call rooting Australians apparently call barracking.

    Americans have no end of words for what Australians call rooting.

  11. What a coincidence. In the England vs Australia cricket match today, Yorkshire’s ,Joe Root was batting. In the running commentary there followed a discussion of what “root” means to an Australian. Somebody then mailed in the quotation which follows:

    .”On the definition of rooted in Australia,” writes Adrian Flood. “From Peter FitzSimon’s column in the Sydney Morning Herald today:’BHP is still, and always has been, a company firmly rooted in Australia.’ BHP Billiton new chief executive and Scot, Andrew Mackenzie. (Umm, can someone tell him?)” Ha.

    I thought it was so funny I should share it with you all.

  12. All the fuss about a comma. It reminds me of the apochryphal story of the small ad in the For Sale columns of the Journal of Antiques, which read something like:

    Edwardian Dressing Table; one lady owner, with Queen Anne legs and an unblemished top surface.

    Then there is the Truss book “Eats, Shoots and Leaves” (on grammar and touching on the diet of the giant Panda). Better not to mention the vulgar Australian variant “Eats, Roots, Shoots and Leaves”

    link to en.wikipedia.org

  13. 6, so, there is NO reasonable possibility that the phrase could be read “continuously microtextured”?  If we are going to read implied comma’s in, why not implied “ly’s?”
     
     

     
     

  14. Les, one part of the spec said bio-c had a range of 0-2 on a defined test.  Another said the inventive compound had zero or close to zero. 
     
    So when the claims were claim the inventive compound that was biocompatible, the only disclosed compound had a score of zero.  Does this support the broader range?  What was the inventor actually claiming?

     
     
     

  15. Les it is the court (that is, the judge) who decides what the claim in suit means. Now, in your scheme of things, is or is not the court “disinterested”?

  16. I’m not sure what your point is. Mine is that if the patent drafter in this case had a vision and understood that some day litigators would be rolling their eyes and alleging that –continuous micro-textured skin layer — was ambiguous, and had endeavored to define it precisely in the specification, then the litigators would be rolling their eye and alleging that some word in that definition is ambiguous.

    My other point is: –continuous micro-textured skin layer — is perfectly clear.

  17. In any litigation, litigants will find something to argue about.

    In all but a very few cases, would a disinterested party find the ambiguity allegedly found in this case or the one Ned is citing.

  18. 3M told you exactly what it means.

    Continuous, micro-textured, skin layer.

    ^that, at least if you write it out like a ta rd with extra commas.

    “The latter requires the skin to be continuous, and that it be micro-textured, but non necessarily continuous.”

    Mhmmm.

  19. Ok, I read some of it. It seems to me “Bio-compatiblity” is in the eye of the beholder and that it is odd that it is being treated as a limitation, rather than in intended use. Was the accused infringer arguing that the stuff they were selling, while meeting the other limitations of the claim, was NOT bio-compatible? Odd.

    In any event, the spec and the claims gave ranges of test values intended to be encompassed by the word. I can’t imagine what else the courts expect by way of definition.

    If the stuff cures your deadly cancer but gives you a poison Ivy like rash for 6 months, I’d say its bio-compatible enough.

    If it gives you the same rash in exchange for curing baldness, it might not be considered bio-compatible.

    Clearly if it causes no ill effects, it bio-compatible.

  20. Les a tip from me: be sparing in your use of expressions like “undoubtedly”. Resort to them is a dead giveaway, that actually, there is doubt.

    Think about those who begin their argumentation “Surely….”. We immediately know it isn’t sure at all, what they are espousing.

    You write “It doesn’t matter”. I can assure you that, in patent litigation at least, it does.

  21. If the author did not provide further undoubtedly the author intended bank to refer to both situations….did the man get to the bank in time to withdraw the child from the river?; did the man get to the bank in time withdraw money before the bank closed? It doesn’t matter.

    In either case, the method of withdrawal comprising: hurrying to the bank;

    is supported by the specification.

    :-p

  22. Ned, you still have not answered Les’ original post at 4:24.

    You are doing that ‘speak past him’ thing.

  23. No, anon, I was poking fun at Les and perhaps you over your comment that a generic term can cover two distinctly different things.  Perhaps a Markush claim can, but that is a specific form of claiming.  “Bank” cannot cover two different things.

     
     
     

  24. OK 6, since the claim to you is unambiguous, what does it mean?

    Continuously micro-textured, skin layer (over the entire surface); or

    Continuous, micro-textured, skin layer?

    The former requires the micro-texture to be continuous.

    The latter requires the skin to be continuous, and that it be micro-textured, but non necessarily continuous. Selective micro-textured was an embodiment.

  25. Les three questions:

    1. If you were to read the sentence “The man hurried to the bank.” what meaning would you ascribe to “bank”? The bank of the river or the bank located somewhere on Wall Street?

    2. How “broad” is the meaning of that sentence?

    3. What if the context doesn’t break the tie. Suppose the man was on his way over a river bridge, to draw cash from his bank account, but then heard the cries of a drowning child coming from the river below. Do you still say there is no ambiguity about which bank he hurried towards, only breadth?

  26. Gimme a link or somfin to “Hemcon” and I’ll try to read it. …but I’m told its not clear and is confusing…. so… I’m not making any promises.

  27. Ned, once again you have read past what people have posted here. Did you read what Les stated at 4:24?

    Just because a phrase can mean two different things does not indefinite make as the use of the phrase in a claim can very well mean that you want both meanings. His example of ‘red,’ is on point for showing this.

  28. Les, May I suggest you read Hemcon once again. There the claim term had two different meanings upon reading the specification. It really was not clear what the drafter meant.

    The en banc court there should have applied Plager’s contra proferntum principle and should have construed the claim term against the patent owner.

  29. “But it is instantly apparent that the real problem was that it was not clear from the claim itself which usage was being claimed.”

    No. Both ways were being claimed. The real problem is that Judges constantly want to simplify issues and so try to construe terms in the most limited way.

    If the claim term is “red” and in the one portion of the specification it is used to refer to pink and in another portion it is used to refer to burnt umber, that’s not vague or unclear or indefinite. ITS BROAD.

  30. Les, what it means really depends on what's in the specification. When you say "continuous chunky-textured" peanut butter, I think I know what you mean. But if you're specification does not disclose anything like this, what is the problem? It's really a problem of written description. What you are claiming is not disclosed.

    Furthermore, if what you are claiming has no clear association with anything in the specification, how can you construe claims? That's what I was talking about a continuous micro-textured layer, when the disclosure had nothing to do with that but had something to do with a graphics unit having a plurality of processors, I would suggest to you that is a waste of time to even try to construe the claim.

    It becomes easier if the claim term is unambiguously associated with particular structure, or steps, or compositions. If the claim term is not so associated, then construction becomes impossible.
    Recall the en banc Hemcon case. The federal spur circuit split 5-5 because the claim term under discussion was used in two different locations in the specification in two distinctly different ways. It was not clear from the claim itself which way was being claimed. Five of the judges thought the claim term was associated with one way. The other five thought the claim term was associated with the other way. But it is instantly apparent that the real problem was that it was not clear from the claim itself which usage was being claimed. As such the claim was indefinite.
     

  31. Yes. It covers a graphics processor having multiple processors, at least one of which includes a continuous micro-textured skin layer. Since you didn’t explain further, it is unknown (by me at least) whether this layer is, or is on a gallium arsenide substrate layer or is or is on a mask layer or is on some other layer. Presumably it is on an outer layer and the micro-texturing increases surface area for cooling.

    Now, how about answering MY question.

    If I said my sandwich had a continuous chunky-textured peanut butter layer, would you understand me or would you wonder if continuous modified peanut butter layer or chunky-textured?

  32. If a claim term is not used in the specification and is NOT clearly associated with any embodiment or feature, does it make any difference if one knows what the words mean?
     
    Example, consider a disclosure of a novel graphics processor, that haa multiple processors.
     
    The claim said “continuous microtextured skin layer.”
     
    Do you have any idea what the claim covers?
     

  33. 1. The original claims are part of the specification.

    2. Broad is not unclear.

    What part of “continuous microtextured skin layer” don’t you understand?

    Just because someone alleges a phrase means something other that what it say, doesn’t make it so.

    If I said my sandwich had a continuous chunky-textured peanut butter layer, would you understand me or would you wonder if continuous modified peanut butter layer or chunky-textured?

  34. I don’t “miss that point”, I’m well aware of it. This is not a term that swings on BRI/not BRI it is a very simple term that means one thing and will always mean one thing.

    And yes I could tell you what the difference is, and probably give you a few examples over the course of the week just in my cases alone, but I’m not your assistant so I decline to do so.

  35. Anon, I am not so sure that I have ever seen a case where, in the patent office, if there is a choice between two reasonable constructions, the one that preserves validity is the proper choice. In fact, choice is the opposite – the broader construction.

    This may or may not be the same thing as being charged with knowledge of the prior art in court and not so in the patent office, but it is close.

     
     

  36. 6, I still think you miss the point that there is a difference between claim construction in the patent office and claim construction in the courts. Other than using the rubric, broadest reasonable interpretation, can you tell us what you think the difference is?

  37. BTW, Max, in the US, the skilled person also is deemed to have has knowledge of the art — but they apply this knowledge in determining obviousness.

    I think it fair to also suggest that if the claims are to be construed as one of ordinary skill would read them after having read the specification that his knowledge of the art be a factor. However, I am not aware of any US cases that ask you say this, but it is implicit in the doctrine that if there exists two reasonable constructions, the one chosen to preserve validity is the correct construction. This is another way of saying, I think, that a skilled person having knowledge of the art would interpret the claims that way.

  38. Ned,

    I cannot follow the statement of “ His skilled person does not know of the prior art

    PHOSITA during prosecution does in fact carry the same omniscient capability of full awareness of all prior art.

  39. He said a PHOSITA has knowledge of the art. What does that mean?<:i>”

    This in addition to the (still) unanswered and unexplained difference between ‘not one iota of inventive capability’ and the KSR induced common sense inventive capability from our foreign friends who, while not having any trouble holding such views, do seem to have some serious trouble explaining such views.

    Maybe it is a ‘technical’ thing…

  40. Max,  I read the opinion by the English Lord.  it obviously was from a court case.  He said a PHOSITA has knowledge of the art.  What does that mean?   How would that knowledge impact his view of the claims if there are two possible interpretations?
     
     

     
     
     

  41. He said to the man who earns his daily bread on just such things as at issue here.

    You’re using the broadest reasonable interpretation of “earns,” right? ;)

  42. …construe claims to avoid the art, but that is exactly what is done in Europe, it appears,…

    Ned, I don’t know where you got that notion from, but it is not how I understand patent law in Europe. Rather, you construe the claim in the context of the entire patent, including its discussion of the art, asking yourself what was the writer of the claim using the wording of the claim to mean.

    This “awareness of the art” issue you are on: I don’t want to block Paul but I think you are labouring under a misapprehension. The European PHOSITA has the background general knowledge of the art of one of skill in that art. But what actually constitutes this common general knowledge requires a heavy burden of proof, in both the EPO and the English patents court.

  43. KID____PIC
    sour.name.turning
    Look! Over time teeth wear down from the use of chewing if you can call chewing a use;
    If the chew is always on one side<>what is the development>
    The use of a comma or its omission is not an imperceptible dilemna even if I misspell the
    word dilemma. So where’s the fault.ing. .are the teeth synthetic?. . .or even virtual?

    (And what is this?)
    conferentra.profere.conrentem..

    3D Negotiation
    link to arxiv.org
    The Light of Torah Codes
    link to youtube.com

    (time may be flowing backward in some circumstance(s))
    Heard this on Coast to Coast`’Radio with George Noory.
    (ANA.Platonic.NEO.Gnosticism>JUST.KIDDING)
    link to intothecool.com

    (better read <> Into The Cool)

    O.SENG.A
    link to arxiv.org

  44. This has jack squat to do with BRI Ned. It has everything to do with standard drafting procedures for cases such as this.

  45. The Supremes are, for some reason, avoiding 112.

    What seems clear to me is this:

    1. 112 requires the claimed invention be described.
    2. 112, p. 2, requires the claims to be clear.

    If a claim term is not used in the spec, nor associated with any particular embodiment or feature, is the claim term

    1. described per 112,p.1; or
    2. clear?

    The answer seems self evident.

    Yet the Supreme Court will avoid the issue once again.

  46. 6, you are too used to BRI.

    This situation came up in the context of BRI in In re Morris. There Plager constructed the term to read on the prior art because it was not used in the spec.

    Here, he took the narrower view because this is in court, not in the PTO.

  47. Paul, but as I pointed out below, there is a difference between the skilled person before a patent is granted and after. Before, he is not aware of the prior art – at least none that is not acknowledge in the specification. After, he is.

    Thus during prosecution, a construction that reads on the prior art is acceptable. After, it is not if there is a reasonable construction that is consistent with the specification.

  48. IBP, Plager said much the same in In re Morris, where the claim term at issue was there too not used in the specification. But there, BRI commanded the broadest reasonable construction, one that read on the prior art.

    Here, the law should command the construction that is consistent with the specification, not the BRI of the PTO. This is not an issue of a claim term that clearly is associated with more than one embodiment that the defendant is attempting to limit to one by adding a limitation. This is an attempt to limit the claim term to the description in the first place where the claim term is not otherwise used in the specification to describe any embodiment.

  49. Plager: Absolutely.

    I have spent a lot of time here flaming the CAFC, because they have deserved it.

    However, this piece of writing by Plager is a shining beacon of rational sanity.

    I absolutely agree with what he wrote, to the extent that I wrote it myself here on this board, maybe a year or more ago.

    It’s unfortunate that it took them so long to express it themselves, but it is better late, than never.

    I hope that this idea gets traction. The notice function has been marginalized for far too long.

  50. “not seen fit to go there as yet”

    Allows me to jump on another of my hobby horses, the Presumption of Validity. European courts have no compunction in pronouncing a claim invalid, operating as they do on a preponderance standard. I do see such a lack of compunction in the USA though. On the contrary, outside the USPTO, I see no end of wriggling to avoid finding invalid a claim duly issued by that self-same USPTO.

    Is that reluctance to pronounce invalid a reaction to the way the courts behaved in an earlier era, invalidating everything that came before them? Is it a consequence of bifurcating validity between the courts and the PTO, so the courts defer to the experts at the PTO on validity? Is it a consequence of a jury being hesitant to gainsay those experts? Or all three of these?

    But I do see international convergence, as technology gets ever more esoteric and difficult for non-specialists to understand; a convergence to a preponderance standard, exercised at the Patent Office, in both the USA and Europe.

    Just as it took Europe’s finest patent drafters, prosecutors and litigators 30 years to adjust to the advent of the EPO so I expect it to take quite some time before Judge Plager gets clear claims to consider.

  51. Paul, the bit in the quote about the skilled person being aware of the art is a point that we need to discuss.

    Phillips resisted the notion that we should construe claims to avoid the art, but that is exactly what is done in Europe, it appears, when one understands that the skilled person is aware of the prior art. He is not just some person with a level of education and experience. He is a person who also is aware of the prior art. Thus that skilled person would not construe the claims in a manner to read on the prior art if there is a reasonable alternative construction available.

    This, I think, is one of the real differences between construction in the courts and in the patent offices of the world. The examiner does not take the narrower construction. His skilled person does not know of the prior art. If a reasonable construction may read on the prior art, the claim must be narrowed.

  52. “Paul, the problem here was that the claim term was never used in the specification to describe any embodiment, nor apparently is it associated in any particular way with any embodiment or feature. As such, the claim term stands apart from the specification.

    What to do?”

    If all the above is correct (I haven’t read the specification of the patent in suit), from an European point of view the claim would either fail Art. 123(2) EPC because introduces added subject – matter or Art. 84 EPC because it is not clear and supported by the description. Judge Plager seems to have similar thoughts when he writes: “Or better yet, the claim should simply be invalidated as indefinite, though our court has not seen fit to go there as yet”.

  53. Paul, the problem here was that the claim term was never used in the specification to describe any embodiment, nor apparently is it associated in any particular way with any embodiment or feature. As such, the claim term stands apart from the specification.

    What to do?

    In Europe, you seem to construe the claims to cover the embodiments as that is what one of ordinary skill would do. The claim would not have a meaning that departed from what was described.

    But that doctrine is not followed here — probably because of the long battles we have had since the days of Morse over functional claiming. We want to claim every equivalent, all ways of achieving a novel result, even though we disclose but one. Thus we use broad functional terms in our claims and avoid as best as possible assigning any specific meaning to them.

    The Federal Circuit is divided on this issue. The Phillips case is on point here. There a somewhat functional term “baffle” was construed broader than any embodiment. In the end, the claims there covered, as construed, embodiments that were neither disclosed nor even arguably equivalent of the disclosed embodiments.

    An embarrassment.

  54. So far as infringement is concerned, the relevant provision in Europe is the protocol to article 69 EPC which reads:

    “Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.”

    The key part of that decision is one of those passages which when you read it makes your spine tingle, or makes you say: Why did I never think of this? Lord Hoffmann said at [47]:

    “The Protocol, as I have said, is a Protocol for the construction of article 69 and does not expressly lay down any principle for the construction of claims. It does say what principle should not be followed, namely the old English literalism, but otherwise it says only that one should not go outside the claims. It does however say that the object is to combine a fair protection for the patentee with a reasonable degree of certainty for third parties. How is this to be achieved? The claims must be construed in a way which attempts, so far as is possible in an imperfect world, not to disappoint the reasonable expectations of either side. What principle of interpretation would give fair protection to the patentee? Surely, a principle which would give him the full extent of the monopoly which the person skilled in the art would think he was intending to claim. And what principle would provide a reasonable degree of protection for third parties? Surely again, a principle which would not give the patentee more than the full extent of the monopoly which the person skilled in the art would think that he was intending to claim. Indeed, any other principle would also be unfair to the patentee, because it would unreasonably expose the patent to claims of invalidity on grounds of anticipation or insufficiency.”

    The skilled person approaches the question of interpretation from the standpoint of the background in the art and the common general knowledge. And from recent case law the skilled person (or team) and the relevant knowledge may differ somewhat between construction and inventive step.

    From the point of view of inventive step, the UK approach and also the EPO approach rely quite considerably on common general knowledge, whereas under Graham v John Deere the enquiry is routine skill which may not be the same. Under the EPC there has to be a new result from whcih a technical problem can be devised. Thereafter, the decision is a matter of evaluatinvg the evidence, as developed in some detail in the CIPA Guide. Unfortunatley I cannot comment about German domestic law. But in the UK and before the EPO once the technical problem has been identified there is no further standard – it is a matter of weighing the evidence. I am not sure that there is room for any deeper standard or an observation that German experts are deemend to approach the question with a deeper level of thought because that imposes a prior standard on the evaluation whereas due process demands an unfettered decison according to the evidence.

    Not sure that this helps but hope it does to some extent.

  55. So far as infringement is concerned, the relevant provision in Europe is the protocol to article 69 EPC which reads:

    “Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.”

    The key part of that decision is one of those passages which when you read it makes your spine tingle, or makes you say: Why did I never think of this? Lord Hoffmann said at [47]:

    “The Protocol, as I have said, is a Protocol for the construction of article 69 and does not expressly lay down any principle for the construction of claims. It does say what principle should not be followed, namely the old English literalism, but otherwise it says only that one should not go outside the claims. It does however say that the object is to combine a fair protection for the patentee with a reasonable degree of certainty for third parties. How is this to be achieved? The claims must be construed in a way which attempts, so far as is possible in an imperfect world, not to disappoint the reasonable expectations of either side. What principle of interpretation would give fair protection to the patentee? Surely, a principle which would give him the full extent of the monopoly which the person skilled in the art would think he was intending to claim. And what principle would provide a reasonable degree of protection for third parties? Surely again, a principle which would not give the patentee more than the full extent of the monopoly which the person skilled in the art would think that he was intending to claim. Indeed, any other principle would also be unfair to the patentee, because it would unreasonably expose the patent to claims of invalidity on grounds of anticipation or insufficiency.”

    The skilled person approaches the question of interpretation from the standpoint of the background in the art and the common general knowledge. And from recent case law the skilled person (or team) and the relevant knowledge may differ somewhat between construction and inventive step.

    From the point of view of inventive step, the UK approach and also the EPO approach rely quite considerably on common general knowledge, whereas under Graham v John Deere the enquiry is routine skill which may not be the same. Under the EPC there has to be a new result from whcih a technical problem can be devised. Thereafter, the decision is a matter of evaluatinvg the evidence, as developed in some detail in the CIPA Guide. Unfortunatley I cannot comment about German domestic law. But in the UK and before the EPO once the technical problem has been identified there is no further standard – it is a matter of weighing the evidence. I am not sure that there is room for any deeper standard or an observation that German experts are deemend to approach the question with a deeper level of thought because that imposes a prior standard on the evaluation whereas due process demands an unfettered decison according to the evidence.

    Not sure gthat this helps but hope it does to some extent.

  56. MM, recall the other day I pointed out that when a claim phrase is not define or otherwise used in the specification (as here) the solution should be to read the claim narrowly to cover the disclosed embodiments. Otherwise one really has a written description problem.

    Here, a way to force that issue would have been to also move for summary judgment that the claim term lacked written description support because it was not used in the specification and there was no clearly defined structure associated with the term so as to understand its meaning.

    The essence of the written description requirement is to describe what the “claimed” invention is. If the claimed invention is never described, we are left to try construe the claim language in the abstract. That should never happened. There is a fundamental failure in several requirements of 112.

  57. Quite right – apologies for the typo. But these are two top notch decisions for the European practitioner and deserve frequest citation.

  58. Actually, MM, it was Paul Cole’s thoughts I was after. He has written a book about the differences in patent law between the USA, the UK and mainland Europe and I am curious how he sees these issues.

    Sorry to be so boring. I haven’t for a long time thought about Romans and the uniforms they wore but now you put me to it, your remark brings to mind the very camp Frankie Howerd and his old TV vehicle called Up Pompeii! With my memory of the TV show not yet extinguished, even to read the Wiki entry:

    .link to en.wikipedia.org!

    is enough to stimulate many a chuckle and a chortle. Many thanks for that, MM.

  59. Germans are fond of saying that their “person skilled in the art” in their domestic courts thinks more deeply than the EPO’s skilled person but I just think that is a historical overhang from the days when the judges in Germany had difficulty distinguishing the difference betweeen lack of novelty and obviousness.

    Any thoughts?

    I always thought of it as more of Roman thing. But then, they had better uniforms.

    Any thoughts?

  60. Paul, another thread touches upon the attributes of the notional addressee, the PHOSITA, under KSR and under the EPC. Does that fictitious construct have any “common sense” and does it have an “ordinary” level of inventive faculty or “not one iota” of inventive faculty.

    Germans are fond of saying that their “person skilled in the art” in their domestic courts thinks more deeply than the EPO’s skilled person but I just think that is a historical overhang from the days when the judges in Germany had difficulty distinguishing the difference betweeen lack of novelty and obviousness.

    Any thoughts?

  61. If a decision of the Federal Circuit is overturned by the Supreme Court what does that say about the Federal Circuit judges who wrote that decision?

  62. By the way, who says continuous microtextured skin layer is ambiguous.

    I think its clear on its face. But if I’m wrong, its only because I didn’t do so good in grammar and/or because I have forgotten what I did learn.

    Surely the rules of grammar are such that the phrase has an unambiguous meaning.

    Could it be that ambiguity is in the eye of the beholder? Could it be that the Judge isn’t sure of the grammar rules either and for THAT reason and THAT reason alone, the Judge finds the phrase ambiguous?

  63. Nice, now try something in patent law – like what I asked of you.

    LOL – STILL can’t find the nuts, eh Malcolm?

    Watching you struggle over something as simple and factual as this is blissful.

  64. LOL – in other words, you don’t know what BRI is, right Malcolm?

    How do you expect me to discuss this with you, if you do not know the fundamentals?

  65. I’m shocked — shocked, I say — to find bad writing at the core of a legal dispute. In a context only slightly less abstruse than patent claim drafting (ERISA benefit statements), Judge Cummings remarked that

    This is not fine prose nor, by itself, terribly clear. It would appear to have been drafted by lawyers. The use of “criteria” and “targets,” in the plural, could be understood, in the singular, with D & B, to refer to a unique target (among several criteria) for each of several individuals covered by the Plan, that particular target to be specified in each case in that person’s award letter. Or it could be understood, with appellants, to mean several different criteria and targets for each individual participant.

    Bourke v. Dun & Bradstreet Corp., 159 F.3d 1032, 1037–38 (7th Cir. 1998).

    It gets worse when one reads the purported “issues presented for review” in most appellate briefs…

  66. “But the drafter would so in the specification? ”

    Nah J Plager is mistaken about that little excerpt. Actually the quoted portion of the specification has a parenthetically delineated “deeply textured” in there. He isn’t using the commas to show off the multi-modification. If he only wanted multi-modification he would have left out the commas. Note how the “deeply textured” never made it into the claims, because it is something they wish to be quite optional.

    This is all fairly easy in this art guys, literally everything here is run of the mill. If this kind of sht were controversial then cases would languish in my art forever and nobody would understand the disclosures. I wonder, can they call expert claim drafters during Markman? Because if so this should have been a fairly good time to call them.

  67. “?Wherein said X is Y” clauses are extremely useful in this sort of situation”

    Yes, those get used also. But many claims have so many dual (or triple or more) modified layers that your whereins would extend off into the sunset.

  68. Practically no claim drafter would delineate that using a comma the way the manual of style says otherwise some claims would be reduced to a big jumble of commas

    But the drafter would so in the specification? That’s what happened here.

    Also, the reason that the grammar book came out in the first place is because the patentee cited it as evidence for its proposed construction. Maybe that wasn’t such a great idea. Either they know of the contrary teaching in that reference which undercut their claim construction argument and decided to go forward with the argument anyway, or they got caught with their pants down.

  69. .The other two would be written “continuously microtextured skin layer” and “continuously micortextured continuous skin layer” respectively.

    “Wherein said X is Y” clauses are extremely useful in this sort of situation, assuming one is striving for clarity and ease of interpretation. It’s a rather popular approach, in fact, favored by many prosecutors and Examiners alike.

  70. you can’t really be 6. it’s not like 6 to understand anything patent law related, much less common sense like this.

  71. BRI is the claim intepretation test for pending applications and for patents being post-grant re-examined within the PTO, not the test for patent litigation, as demonstrated by the pre AIA, and continuing, disputes by those wanting to change the former to the latter.

  72. That’s quite a fit to throw just because you can’t understand all of the technical and legal issues in a patent case. I put way less effort into my fits though, so kudos for a job well done.

  73. I will leave it to you as an

    *click*

    Isn’t it always left up to everyone else to figure out what you “actually mean”?

    Funny, it’s a lot like your proposed approached to claim construction: at the end of the day, what you “acually mean” in your comments is inevitably what is correct and reasonable, regardless of how incomprehensible or wrong what you “actually wrote” might seem.

  74. 35 USC section 282 is about who has the burden of proving of proving invalidity during litigation of a patent. It’s not about how to determine the scope or meaning of a claim.

    would that qualify as me being a pr*ck?

    Not at all. I’m not sure what the relevance is. What exactly were you responding to and how is that particular passage of 35 USC 282 a response to any question I asked you? Do tell. Unless you simply don’t know or are unable to articulate something so complicated.

  75. While I whole heartedly agree with the principles Jude Plager would rely on, I have to say that this is not a case that invovles them at all. This is run of the mill language when it comes to arts using layers. Practically no claim drafter would delineate that using a comma the way the manual of style says otherwise some claims would be reduced to a big jumble of commas (some already approach that as is) and that is not at all how commas should be used. And the claim term is crystal clear.

  76. From the standpoint of a European reader, the emphasis on a grammar book rather than on the understanding of a skilled person is a little odd. As Lord Hoffmann pointed out in the UK decision in Kirin-Amgen, the important question is not what the words mean but what the skilled reader would understand the patentee to have menat by the words used.

    The EPO is proceding (somewhat) in the same direction. It has held that the wording should be considered from considered from the standpoint of a technical audience rather than a philologist or logician, see T 2619/11 AGILENT/Plasma Torch.

    As explained in T 668/08 FRACTUS/Space-filling miniature antennas:

    “It is an undisputed principle in the jurisprudence of the Boards of Appeal of the EPO that an amendment is allowable under Article 123(2) EPC if the subject-matter resulting from the amendment is directly and unambiguously derivable from the original application documents i.e. the description, the claims and the drawings, using common general knowledge. Thereby it is not necessary that the subject-matter resulting from the amendment was explicitly disclosed in the original application.

    It is therefore essential, when deciding on issues of added subject-matter, to identify the actual teaching conveyed by the original disclosure, i.e. the technical information that the skilled person reading the original disclosure would have derived from its content (description, claims, drawings) considered in its entirety.

    This approach might lead to the identification of subject-matter which has not been explicitly revealed as such in the application as filed, but nevertheless derives directly and unambiguously from its content. Literal support is not required by the wording of Article 123(2) EPC. An amendment can therefore be allowable if it combines information which has not been disclosed in one and the same section of the original disclosure, but results, for instance, from information gathered from various embodiments possibly associated with general statements regarding the information derivable from the introductory section of the application.

    If this were not the case, the original disclosure would be deprived of a part of the information it actually contains, namely the technical teaching that the skilled person would retrieve from the application but which may typically extend beyond a mere literal interpretation of the original text.

    In order to avoid any misunderstanding, it is stressed that the Board does not question the principle according to which embodiments of an invention can normally not be freely combined under Article 123(2) EPC but merely emphasises that each embodiment in a disclosure must be construed with the knowledge and understanding aptitude of the skilled person in the art in the light of the whole application.”

    So both in the UK courts and the EPO the question is not whether a judge can understand the language using a grammar book, but whether a skilled person can understand it.

  77. ” Does “continuous” apply to the microtexturing, the skin layer, or both?”

    Actually that’s basic english. It applies to the skin layer only. The other two would be written “continuously microtextured skin layer” and “continuously micortextured continuous skin layer” respectively.

  78. Shall we start with 35 USC § 282:

      A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim.

    …or would that qualify as me being a pr*ck?

  79. You are rather far behind in your explanations.

    Let’s start with a recent favorite; Explain who was right in the Myriad case and why.

    LOL

  80. There are already proper paths to deal with any of the issues you point out.

    Of course it would be asking far too much for you to name them so we could determine what you were thinking when you waved your hands and chucked out your usual insults.

    Off the top of my head, I’m not aware of any such path that includes the claim construction approach towards issued claims that you believe is “dictated” by the use of BRI during Examination. Happy to be educated, though. See if you can achieve that without being a pr*ck.

  81. “The bigger issue, then, is whether the price of that imperfection should be paid”

    No. It is not.

    Great “argumment”, Tr0 llb0y!

    But you’re wrong. The consideration I refer to is similar to that underlying the doctrine of contra proferentem, referred to by Judge Plager.

    link to en.wikipedia.org

    The doctrine is often applied to situations … where the parties are of unequal bargaining power. ….Contra proferentem also places the cost of losses on the party who was in the best position to avoid the harm.

    Anyway, I can understand why you would like to believe that I’m wrong. I’m also happy to explain that understanding to you if you like.

  82. There are already proper paths to deal with any of the issues you point out.

    You already know that though, don’t you pumpkin (so sorry that your fav QQ ing on patent blogs is not one of them).

  83. Why would you think that proper broad claims drafted without regard to any particular structure and that are not related to software be of any interest to this blog’s audience?

  84. The bigger issue, then, is whether the price of that imperfection should be paid

    No. It is not.

    Your anti-patent streak is shining brightly.

  85. Wouldn’t this dictate that any notice function should be as you indicate: the stamp of the Office should mean that the claims are to be construed as broadly as possible without reading on the prior art?

    First, no, the mere allowance of a claim examined “under the concept of BRI” wouldn’t “dictate” result because (1) Examiners and Applicants make mistakes about the content of “prior art” of which they are aware; (2) Examiners and Applicants (mistakenly or otherwise) ignore the law which requires the invention to be described by the claims, not by the prosecution history or by the contours of the prior art disclosed during Examination; and (3) new prior art is routinely “discovered” that wasn’t addressed by the prosecution history.

  86. Les: What if the drafter had left out continuous. Would the Judges then ask if the skin layer could be discontinuous?

    The judges that are confused about the purpose of claims might ask that. And certainly the patentee would ask for that construction if an accused infringer used a continuous layer and some newly “discovered” prior art disclosed a discontinuous layer.

    Construe the claim as the applicant and Examiner meant for it to be construed. That is, construe it as broadly as possible without reading on the prior art.

    Why not just present a claim to “All the embodiments in the specification and any descriptions herein that are inventive and enforceable”?

    Better yet: just assert the description and let the court figure out if there is something in the description that is inventive, enforceable and infringed.

    One giant problem with your proposal, Les, is that many applicants are less concerned about the “prior art” (especially prior art of which they are not aware) and more concerned about obtaining at least a few sweet broad claims. Then their “competitors” can worry about “the prior art” (the applicant can always “fall back” on the narrower claims or ask for a narrower construction — right?). Ask any experienced prosecutor. This is how the game is played. You really don’t need to ask anybody. You know it as well as Judge Plager and every other person with the least knowledge of our patent system knows it.

    Also, it’s not only “language” that is “imperfect” — it’s the human beings who speak and write it. The bigger issue, then, is whether the price of that imperfection should be paid by the vast majority of the public who are not owners of patents (but who are subject to them) or the tiny minority of people who own them and who are invariably in a much better position to pay the price of any mistake in claim construction.

  87. Whether or not the applicant ‘meant it,’ isn’t the concept behind BRI such that the broadest construction (eventually allowed) is said to pass muster of having earned patent rights?

    Wouldn’t this dictate that any notice function should be as you indicate: the stamp of the Office should mean that the claims are to be construed as broadly as possible without reading on the prior art?

    I would merely add “in light of the specification and knowledge imputed by those persons having ordianry skill in the art” as a reminder of what BRI is supposed to be (and not BUI).

  88. Great writing by Plager.

    With respect to this:

    Without labeling it as such, we have already used this principle to construe claims for compliance with 35 U.S.C. § 112. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996) (“Where there is an equal choice between a broader and a narrower meaning of a claim, and there is an enabling disclosure that indicates that the applicant is at least entitled to a claim having the narrower meaning, we consider the notice function of the claim to be best served by adopting the narrower meaning.”); see also A Theory of Claim Interpretation, 14 Harv. J.L. & Tech. 1, 81 (2000).

    … the key to making this doctrine “work” is to be supremely mindful of the requirement that the choice between the broader and the narrower meaning is “equal.” Just because there are two “choices” (e.g., the broad meaning apparent from the term’s face versus the narrower “interpretation” based on reading a limitation in from the spec which discloses only a narrower embodiment) does not mean that those choices are “equal.” In nearly every instance where a claim or claim phrase is inconsanant with what is disclosed in the specification, the choice between two constructions will not be “equal.”

  89. What is bizarre is that with two adjectives like thata hypen is used to join the first with the second if the first is meant to modify the second and not the main noun of the noun phrase. That is 7th grade grammar.

  90. The author has no problem with the Chicago Manual of Style telling us that adjectives that separately modify a noun are —-generally—- separated by a comma.

    Yet the author finds fault with the claim drafter for having a cloudy crystal ball that didn’t tell the drafter that Judges would some day find “continuous microtextured skin layer” to be confusing.

    What if the drafter had left out continuous. Would the Judges then ask if the skin layer could be discontinuous? Would the Judges then ask if the microtexturing could only be on a portion of the skin layer.

    Language is an imperfect tool.

    Construe the claim as the applicant and Examiner meant for it to be construed. That is, construe it as broadly as possible without reading on the prior art.

  91. Claims are problematic because human language is problematic which further compounded by the fact that patent claim construction rarely, if ever, draws from other areas of law that are responsible for legal interpretation of human language. No one has agreed upon a single system of language to define the bounds of an invention. For most people (and lawyers), patent claims are truly a backwater of the legal world where words never mean what they say.

    I like Judge Plager’s idea: construe against the drafter. Patent infringement is strict liability, so unless an accused is on reasonable notice of what a claim means, there should be no liability. Thus, as between two reasonable interpretations, the patent owner’s construction should be heavily disfavored since the patent owner is the only one who ever had a chance to define their invention with clarity and particularity.

    What’s more, unlike contract law, there’s no opportunity for negotiation by the accused, no assent, no opportunity to review.

  92. You know something is seriously wrong with the patent system when the PRESIDENT OF THE UNITED STATES has to tell patent applicants to “use a glossary”.

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