Oral Argument Recap: Lighting Ballast Control v. Philips

Guest Post by Jonas Anderson, Assistant Professor at American University, Washington College of Law.

This morning, the Federal Circuit sat en banc in the case of Lighting Ballast Control v. Philips.  The case is the latest and most significant challenge to the court’s de novo standard of review in claim construction cases.  In taking the case en banc, the Federal Circuit asked the parties to brief three questions:

  • Should the Federal Circuit overrule Cybor Corp. v. FAS Techs. Inc., 138 F.3d 1448 (Fed. Cir. 1998) (in which the Federal Circuit held that “as a purely legal question, we review claim construction de novo on appeal including any allegedly fact-based questions relating to claim construction.”)?
  • Should the Federal Circuit afford deference to any aspect of a district court’s claim interpretation?
  • If so, which aspects should be afforded deference?

Both parties in this case agree that de novo review is not the appropriate standard of review for all aspects of claim construction.  The parties’ positions differ, however, as to the proper scope of appellate deference: Lighting Ballast argues that the court should completely abandon its practice of de novo review and afford deference to all aspects of claim construction decisions; Universal Lighting Technologies (the appellee), on the other hand, argues that deference is appropriate only in resolving “disputed issues of historical fact.”  The PTO echoes ULT’s stance.  In a recent paper forthcoming in the Northwestern University Law Review co-authored with Professor Peter Menell of Berkeley Law School, we argue that de novo review has already been replaced at the Federal Circuit with a more deferential standard, albeit informally.  We find evidence for out theory in the significant drop in reversal rate that has occurred over the past decade: from a high of 44% of terms in 2004 to 20% reversed in 2011.

Despite both parties arguing that Cybor should be modified to some degree and numerous Federal Circuit judges having expressed that belief in prior cases, the tone of the arguments today was certainly one of skepticism.  The three main topics addressed:

National Uniformity Concerns -  Judge Lourie’s initial question was whether deference would disrupt the national uniformity of patent law that the Federal Circuit was designed to achieve.  ULT admitted that the possibility of non-uniform claim construction decisions would be a negative outcome of overruling Cybor, but FRCP 52(a) is in tension with a pure de novo review of claim construction.  The acting Solicitor of the PTO, Nathan Kelley, closed his argument by addressing the non-uniformity concern.  Kelley argued that any non-uniformity that occurred in light of a lowered deference standard would be a benefit to the public because it would result in reduced patent scope in some parts of the country.  While that is obviously not ideal, Kelley’s point was that the concern should not be an overriding one for the court since any non-uniformity is a benefit, not a burden, to the public. 

Line-drawing Problems between Issues of Fact and Issues of Law – The issue that perhaps most captivated the Judge’s attention was whether a deferential standard was workable.  Judge Moore, perhaps one of the court’s most vocal critics of Cybor, was clearly troubled with the solution offered by ULT and the PTO.  She asked for a precise definition of a “historical fact” no less than three times, and never received an answer that satisfied her.  Because claim construction is ultimately an effort to decipher the meaning that a PHOSITA would ascribe to a claim term, she feared that every claim construction decision (other than when the patentee acts as his own lexicographer) would be considered a question of fact.  Despite the PTO and appellee’s repeated assurances that their preferred level of deference would amount to no more than a “small change” in the law, Judge Moore and others (including Judge Dyk, Lourie, and Reyna) seemed troubled by the potential implications of the change.  Judge Lourie asked whether every case would now involve litigants attempting to frame legal determinations as factual determinations.

The Impact of Stare Decisis – This issue, pursued extensively by Judge Taranto, seemed to take the litigants by surprise.  Judge Taranto repeatedly asked about the court’s ability to revisit a clearly established en banc precedent with no intervening Supreme Court case or other change in the law.  Neither side seemed to have a ready answer to his question.

Judge O’Malley, who was on the original panel decision, played a pivotal role in the argument, attempting to clarify the position of the PTO and ULT.  She interpreted their position as one in which a district court judge’s decision as to the historical meaning of a claim that was based on extrinsic evidence would be given deference, but if that interpretation runs counter to the Federal Circuit’s de novo review of the intrinsic evidence the district court’s decision would not impact the case.  This middle position was clearly not satisfactory to a number of judges.  In light of the skepticism, ULT’s counsel essentially backed away from his position that Cybor should be modified; on rebuttal he suggested that the court may well not want to modify Cybor

Ultimately, it will be interesting to see if the court decides to maintain the de novo standard or tries to find a way to disentangle factual issues from legal ones.  As a skeptical Judge Dyk quipped about the latter option, “let’s just experiment and see how difficult it would be.”  I sense that some on the court would like to make those distinctions (Judge O’Malley in particular), but I’m unsure whether enough votes exist to make the change.  I don’t think the court will gravitate to Lighting Ballast’s position of a pure legal error standard.  Characterizing all claim construction decisions as factual seems too radical of a departure to the court. Judge Lourie appeared taken aback when Lighting Ballast’s counsel suggested that the specification should be treated as parole evidence: “That is an extraordinary argument.”  Indeed, switching from de novo review to complete deference to all district court claim construction decisions appears, at this stage, very unlikely.

Ed.: You can listen to the oral argument here.

88 thoughts on “Oral Argument Recap: Lighting Ballast Control v. Philips

  1. Guest,

    Give to Caesar that which is Caesar’s.

    You are not catching my posts quite accurately.

    What I am saying may still match with what you have cited, except I am saying that the legal portion is inescapable in the overall picture. I am not denying that there are facets of facts, nor that such facets obtain a different (and proper) deference to the lower court. What I am saying is that the final question in any mongrel breed cannot eliminate the legal aspect, and it is that legal aspect that finally controls the level of deference.

    What it boils down to is that whenever law is involved – even a little, the proper deference overall deference is de novo. The cites you provide are premised on ZERO aspect of law being involved – sorry, but that will never be the case with anything but a pure factual matter. Your quotes sound good, but any court can easily sidestep claim construction due to the legal thread that permeates – you simply cannot deny that it exists and thus any court – if it so chooses, will have a basis for de novo review.

  2. “Indeed, the Supreme Court has held that a deferential standard of review is warranted for mixed questions of law and fact “when it appears that the district court is ‘better posi-tioned’ than the appellate court to decide the issue in question . . . .” Salve Regina College v. Russell, 499 U.S. 225, 233 (1991) (quoting Miller v. Fenton, 474 U.S. 104, 114 (1985)). See also First Options of Chicago, Inc. v. Kaplan, 514 U.S. 938, 948 (1995) (“The reviewing attitude that a court of appeals takes toward a district court decision should depend upon ‘the respective institutional advantages of trial and appellate courts . . . .’ ” (quoting Salve Regina College, 499 U.S. at 233)).”

    From Judge O’Malley’s dissent from denial of rehearing en banc in Retractable Techs.

    Also, Pierce v. Underwood, 487 U.S. 552, 560 (1988):

    “[D]etermining whether mixed questions of law
    and fact are to be treated as questions of law or of
    fact for purposes of appellate review . . . has
    turned on a determination that, as a matter of the
    sound administration of justice, one judicial actor
    is better positioned than another to decide the issue
    in question. We think that consideration
    relevant in the present context as well, and it argues
    in favor of deferential, abuse-of-discretion
    review. To begin with, some of the elements that
    bear upon whether the Government’s position was
    substantially justified may be known only to the
    district court. Not infrequently, the question will
    turn upon not merely what was the law, but what
    was the evidence regarding the facts. By reason
    of settlement conferences and other pretrial activities,
    the district court may have insights not
    conveyed by the record, into such matters as
    whether particular evidence was worthy of being
    relied upon, or whether critical facts could easily
    have been verified by the Government.”

    That was cited in Judge Moore’s Highmark dissent from denial of rehearing en banc.

  3. the patent office often enters a new matter rejection.

    That’s a point you have to prove rather than assume Ned.

    It’s also a red herring – as I mentioned, there is no legal requirement for ipsis verbis.

    Until you recognize and admit this fact, you are only flailing.

    Your opinion, while you have a right to have one, means nothing in this discussion of law.

  4. Anon, sure there is an you know what it is: If a claim term, not used in the specification, is added by amendment, the patent office often enters a new matter rejection. The basis for new matter rejection is in fact the lack of written description support for the claim term.

    Since Ariad, a written description rejection also applies to the claims as filed. If a claim term is not use the specification even with claims as filed, a combined written description/clarity rejection could be made – and should be made in my opinion.

  5. Ned,

    I don’t give a rip about what you are babbling about at 2:37 – my post at 11:49 is 100% correct.

    Move on. There would be NO legal basis for the Office to do as you are suggesting.

  6. LOL – are you saying that I have not busted you at least twice now for saying that you said something when you have not?

    Really?

  7. anon, the Feds complain all the time that they are asked to construe claim terms that are not used in the specification. How can one actually do this in any reliable manner?

    A simple way to fix this problem would be for the patent office to religiously invoke section 112 paragraph two to force applicants to use only terms used in the specification.

    You know your pal Malcolm was asking this question a few weeks ago when he was asking just how far an applicant can go using terms that are mis-descriptive of what is disclosed the specification. Rather than ask that question, I think the patent office simply could force applicants to use terms in claims that are used in the specification so there is no ambiguity.

  8. LOL – “No

    translation: 6 is busted yet again for making a statement he cannot back up.

    Seems to be quite a habit for you, 6.

  9. Still not the quote that can be found in In re Skvorecz. I have asked 6 for the case, since he claims he knows, but actual answers from 6 (even when he promises such) are extremely rare.

  10. LOL – talk about semantics…

    You do have a union, right 6? Why are they not backing you up in doing the right thing?

  11. Man I always give you too many hints. Now all you’re going to do is google broadest reasonable interpretation newman 2012 and further your interbutts edumacation.

    I’ve got to start being more cryptic.

  12. No.

    For now you’ll just need to be content with what you have. As Skvorecz supports the assertion that BRI is not a rule of claim construction. And that should be sufficient for you to ponder upon. Until you can make it to a conference with Newman and ask her herself. Since that will probably never happen since your edumacation consists entirely of stuff you looked up or heard on the interbutts, my lulz will be ongoing.

    How much reeducation am I required to provide to you free of charge in one month anyway? I think you should be paying.

  13. I believe the exact quote is “the protocol of giving claims their broadest reasonable interpretation during examination does not include giving claims a legally incorrect interpretation. This protocol is merely an examination expedient, not a rule of claim construction.”

  14. I know he misquoted the case. And I also know which case he meant to cite. And I also know that you’ll never bother to read it, or listen to Newman in person telling you about the subject to your face. Because you’re an amateur, and your only edumacation comes from what you read on the interbutts.

  15. Whatever anon, your proposals for “reform” have hitherto (for years actually) been related to “examiners just doing their jobs”. If you’d been saying “get the management to correctly instruct the examiners on how to do their job and enforce it” then we’d have been in agreement throughout.

  16. You can tell anon this all you like

    You kind of missed the part that the quote used was not actually in the case 6.

    Kind of important when you cite a case that the case actually says what you cite (you learn that in law school).

  17. Another vacuous reply from Malcolm. You forget to address the fact that examiners must use BRI.

    D’Oh! (said in the best Homer Simpson tones)

    @ta boy.

  18. Exactly. There are certain parts of claim construction that seem to be clearly factual issues: means plus function elements, the question of indefiniteness.

    There are other parts that seem to be clearly legal issues: whether a method claim recites order, whether the preamble recites a limitation, the meaning of the transition phrase.

    There are a lot of other issues which fall between the spectrum of pure fact and pure law, and so they are a mixed question of fact and law, one which the Supreme Court precedent suggests would be subject to clear error review. The fundamental flaw with Cybor is that it misread Markman to affirm the CAFC’s Markman decision treating claim construction as a pure question of law, when it really determined that claim construction should be done by a judge. There are plenty of factual issues determined by the court rather than a jury – all discovery matters, anything related to sanctions, the decision whether to grant or deny an injunction, etc. Many are subjected to a higher level of deference than de novo. The question is which tribunal is better equipped to determine the question, and whether searching appellate review is appropriate given that circumstance, under Supreme Court precedent. I think it’s the district court, who has the time and ability devoted to getting these issues correct. But certainly reasonable minds can disagree, as the Judges on the Fed. Circuit do. I would be surprised to see Cybor affirmed, but it’s hard to tell how Judges Taranto and Chen view this issue.

  19. something actually of substance

    Is that what you think you’re contributing to the conversation, Tr0 llb0y?

    That’s funny. Examiners can construe claims like a court construes them and they do so all the time, every day. Nothing illegal about it. Enjoy.

    Or just keep w anking. Your choice.

  20. Feel free to join in the mature conversation (or not) with something actually of substance, Malcolm.

    LOL – that is if your fingers have recovered from their burns yet.

  21. required by the people in control

    Therewith lie where the focus of reform should truly be.

    I love when 6 gets to spinning so much he makes my case for me.

  22. “that BRI is simply “an expedient of examination, not a free-standing rule” of claim construction (In re Skvorecz, 2009).”

    You can tell anon this all you like, he was edumacated on the interwebs by Oetikerta rds like pingerdoodle and so his only impressions of it relate to it being a free-standing rule, and they always will until Newman herself comes and tells him differently to his face. Though she obviously has in a few decisions of late, anon hasn’t bothered to read them.

  23. “One does not need to wait for a court, as options include filing continuations or reissues”

    So those are the mechanisms. Thank you.

    And neither of them are options to dispute the claim construction in the actual case before the office. You simply state that you’ll have to open a new case, and you surmise either a reissue or a continuation might do the trick if done properly.

    Thanks for informing me of something else I already knew. Congrats masta educator.

  24. “I love how you embrace the very CRP that needs to be expunged as if that CRP must be done because it is how you see the ‘real’ operation of the Office.”

    I’m not saying that the crp that needs to be expunged is the crp that “must be done” because it is how I see the “real” operation of the office. I’m saying that there is crp that, if you and possibly others want it not to be done, needs to be expunged, and that you shouldn’t ignore it just because you want it to be expunged. I will also say that the crp that needs to be expunged is the crp that “must be done by examiners” for now because it is exactly what is required by the people in control of what must be done on the ground, in the day to day (note that what is required by these people has dck to do with how I see the “real” operation of the office).

  25. Tourbillion,

    I have reread In re Skvorecz and cannot see how you are attempting to use that case as you are doing.

    I do not find your quote “an expedient of examination, not a free-standing rule” in the decision at all. Have you misremembered the case that you are quoting from?

  26. The ‘appearance’ of waste (to you) is immaterial. A legal question gets de novo review.

    Period.

    Mixing in some factual predicates does not eliminate the legal nature.

  27. JB,

    Please realize that “ Namely, how one of ordinary skill in the art would construe that term within the legal framework.” is a legal determination in the end.

    My posts stand as correct. You have not (and cannot) eliminate the legal aspect.

    • but you have no mechanism to dispute the claim construction adopted until you get to court

    also incorrect. One does not need to wait for a court, as options include filing continuations or reissues.

    Come now 6, if an ‘amateur’ (as you falsely claim me to be) can run such circles about you, what does that say about you and your knowledge of the job you are supposedly doing every day?

  28. Not sure. If the term “a soap” is used on a claim, how that term should be construed and interpreted by a court seems to be more of a factual issue. Namely, how one of ordinary skill in the art would construe that term within the legal framework.

    If the lower court doesn’t follow the legal framework, should be de novo.

    If follows it, should be given some deference.

    Not sure there’s a perfect solution but the current 100% de novo system appears wasteful.

  29. Of course you know 6, that anon is making you sound like a wounded deer being chased down by a wolf. You are started to sound as haggard and beaten as MM. We are all pretty sure that IANA..EIO..EIO doesn’t have the IQ to notice he has lost.

  30. So I asked how one disputes a claim construction given at issue, and then today you noted that you can make comments after allowance. Making boiler plate, or even serious in depth arguments about the substance of the claim construction is not a manner in which you may dispute what the office did, i.e. made a claim construction and issued the case. You can state that you disagree, but you have no mechanism to dispute the claim construction adopted until you get to court at which time, the PTO doesn’t care as its decision was indisputable (i.e. it adopted x construction and allowed the case).

    In any event, this entire discussion is unnecessary. I saw someone make comments re the claim construction adopted at the time of issue years ago. Blathering on the record doesn’t permit them to dispute it.

  31. Truly sad that you are so clueless 6.

    But please, continue to call everyone else a t ard while you are supreme in that regard.

    I love how you embrace the very CRP that needs to be expunged as if that CRP must be done because it is how you see the ‘real’ operation of the Office.

    You suffer from delusions of inferiority masking as superiority.

  32. “Wrong. 100% wrong. They are not required to get it wrong and examine when they don’t know what the applicant means. They are required to FIRST understand the application.”

    Well then, why don’t you tell that to all their spe’s and all the directors? They all think that is simply what “should” be done, not necessarily what the examiner is “required” to do. Again, your lack of real world understanding vs. your pristine pie in the sky theory is telling us again just how little experience you have with this. A lot of your gnashing of teeth on this and similar issues would be quelled if you had a more realistic understanding of what was actually being required of the examiners IRL as opposed to by whatever guidelines have supposedly been issued as an official edict. I’m not sure why you have such a hard time understanding that there is a difference. There are examiners here who have been here for a decade and literally do not know that we apply the law. What makes you think that this breed of ignoramus somehow magically knows any more about what is required of them (even if it is) save for what their spe makes them do?

    “Anything else is the CRP examination that you hear so many people complain about.”

    I agree, which is why I stated exactly what I told you above. And why I support efforts to instruct the corps on proper claim construction and on how to reach a better understanding of the application, especially with a focus on gaining understanding AFTER you read the spec either during the search proper, or during a mini pre-search into figuring out what is being talked about. Oh and I also support the office requiring information from the applicant, ala star fruits more often.

    “You are allowed to pick up the phone, you know.
    You are allowed a no-count action requesting clarification, you know.”

    LOLOLOLOLOLOLOLOLOLOLOLOLOL.

    You really believe that? Again, there is a difference between what the MPEP allows for and what the management allows for. Management doesn’t allow for such pre-first action. Ever, to my knowledge, though perhaps 1 or 2 happen per year for the 400k+ applications of which probably at least 10% will be inextricably confusing for the examiner on the case.

    See, the disconnect seems to be that you think that examiners are required to do things because of official edicts that are published for you to see, whereas IRL what they’re really required to do (as in, what they’d get fired, or in trouble, for doing/not doing) is what their spe says. And the two things are not even closely related to one another.

    But I know, I know, you have a real hardwired aversion to understanding what the situation is on the ground.

    In any event, I grow bored with your pie in the sky theoretical notions about what goes on at the office. Come and get a job here for a year and tell me all about how right you really were. Unless of course you get fired first lol.

    ” I did not say that you did not attempt claim construction, I said that you did not do claim construction as the courts do claim construction.”

    You put the part about the courts in parenthesis to de-emphasis it. Well done, ta rd.

    Then in re your point a. I say: you’re a t ard and your point a. isn’t even relevant to the topic which I’m discussing, which is claim construction in the office. The fact that we don’t do claim construction specifically as courts do is irrelevant to my concerns about the claim construction we actually do.

    Big surprise, anon made a response that wasn’t even relevant to the topic at hand, and when I presumed he was attempting to do so, it turns out I’m wrong. Whoa is me, always wrong about presuming anon ever says anything remotely relevant.

  33. Not sure that BRI does not square with CAFC claim construction insofar as the CAFC believes. The CAFC repeatedly says that the same Phillips-based analysis holds at both the PTO and federal bench, and that BRI is simply “an expedient of examination, not a free-standing rule” of claim construction (In re Skvorecz, 2009). The difference, perhaps, is that while a court with two plausible constructions before it must take the one that preserves validity, the opposite is true during prosecution.

    Not criticizing your point so much as observing that as far as the CAFC is concerned, BRI squares with CAFC claim construction, assuming the law is understood correctly by the average examiner at the PTO, oh God now I’m laughing so hard I’m snorting my drink up my nose.

  34. I will point out that someone is having fun with wikipedia:
    Mixed questions of law and fact

    Court and jury decisions concerning mixed questions of law and fact are usually subjected to de novo review, unless factual issues predominate, in which event the decision will be subject to clearly erroneous review. When made by administrative agencies, decisions concerning mixed questions of law and fact are subjected to arbitrary and capricious review.”

    • thousands of examiners are required, day in and day out, to do just that

    Wrong. 100% wrong. They are not required to get it wrong and examine when they don’t know what the applicant means. They are required to FIRST understand the application.

    Period.

    Anything else is the CRP examination that you hear so many people complain about.

    You are allowed to pick up the phone, you know.
    You are allowed a no-count action requesting clarification, you know.

      Ahh, you had to inform me of something I already knew?

    Wrong again 6. You asked a question on a recent thread, admitting that you did not know the answer I provided. Even Leopold piped up and said I was correct. LOL – you want me to provide the link?

      Quick question, if we don’t do claim construction, then just how is it that we apply the BRI during the course of our examination that doesn’t involve claim construction?

    Wrong 6 – You might try reading what I actually posted. I did not say that you did not attempt claim construction, I said that you did not do claim construction as the courts do claim construction. Quite simply, you are not allowed to do it like the courts do it.

    Try to keep up 6.

    (and eyeroll all you want regarding the notice of your error and accusations – hey, it’s no skin off of my nose, but if the person you are accusing me of being (and I am not) recognizes that you have been put on notice and persist in disregarding that notice…)

  35. 6,

    You are not allowed to do claim construction as a court would do it.

    You may attempt to apply claim construction rubrics, but you are hampered by the requirement to apply BRI, which is a violation of court claim construction.

    Sorry Charlie.

  36. construe in view of spec

    Just one of the problems you immediately face – along with BRI.

    Plain and simple, even what an individual term means may largelybe grounded in factual determinations, but there is always a fine finish of law throughout.

    From the very first instance of review, a question of law is immediately embedded.

    As such, there is simply no way to make the standard of review anything but de novo in an overall sense. Deference as to factual determinations cannot override that first instance of legality. “Meaning” thus cannot rest in facts, because the ‘meaning’ that is important is more than just the meaning of a single word – it is the meaning of the claim as a whole.

  37. Let’s step back. Claim construction is what Examiner’s do day in and day out and they are usually the ones making the decision based on arguments, interviews, prior art, specification etc.

    Courts don’t do this day in and day out. District courts have the benefit of hearing witnesses, experts, etc., while appeals courts don’t.

    What a word, for example, means to one of ordinary skill is largely a factual determination (e.g., Does X mean Y or Z? ).

    In contrast, there’s a framework of patent law that provides interpretation guidelines regardless of the underlying facts. Transition phrases, every element, claim differentiation, construe in view of spec, etc.

    There’s overall claim interpretation and there’s interpretation of individual terms within claims.

  38. “If you do not understand the application after reading it, how can you make a valid rejection?”

    That’s a good g d question anon, and I say quite sincerely that you cannot, save by luck (blind squirrel and all that). Yet, thousands of examiners are required, day in and day out, to do just that, so apparently the USPTO higher ups must know differently. And then people on the outside see the results of their knowing differently.

    And this is precisely the reason why the office should, in this day and overly sophisticated age, not only be permitted, but be encouraged to contact the applicant at the outset to obtain information about just wt f is being discussed. Star Fruits is a start down the right path, but the office needs to encourage, rather than discourage that sort of process.

    Of course, this doesn’t occur too often for people who are experienced, like primaries, spe’s that have exp in the art etc. The main people that have this problem are the ne wbies. Though it does necessarily apply to old hands as well. Even though the corps is finally starting to get experience, we still bring on bukoos of ne wbies.

    “just like I had to inform you of the ability of an applicant to make comments to a notice of allowance,”

    Ahh, you had to inform me of something I already knew? Wonderful anon, great job, you’re a straight up masta at this whole education thing.

    “go ahead 6 as we both know that the reason you do not answer me is because you lack answers to the points I raise.”

    Ahhh, your being an amateur as s hat doesn’t enter the equation at all. Keep thinking that.

    “I am on the bar. ”

    The bar in your apt maybe.

    “I keep on telling you that I am not the person you think I am (from your very limited digging into the ladders of abstraction background)”

    Oh I did more digging than that. Didn’t I tell you about the other evidence that I would never suggest exists and is certainly not easily retrievable online?

    I thought I did, maybe that post got eaten.

    “Whether you believe me or not will only end up hurting you”

    /eyeroll.

    So let me ask you anon, what would it take for me to convince you that the office does indeed perform claim construction? I can see that simply telling you this will not assuage your ig norance, so what would it take? Would judge rader have to tell you to your face? Would just any ol federal circuit judge do? Or can I just show you a bit of legal scholarship referring to the office performing claim construction?

    Quick question, if we don’t do claim construction, then just how is it that we apply the BRI during the course of our examination that doesn’t involve claim construction?

  39. I do when it serves my purposes muahahahahahahahahaha. And so do other educated examiners once they find out why and when to do so. Although I agree with you that most do not, simply because of a lack of training. Director Kappos was trying to start up a claim construction training program before he left (even though according to anon we just don’t do that here). But since he’s been gone I’ve heard nothing more about it.

  40. I agree Tourbillion.

    The point being that examiners do not engage in claim construction like the courts.

    On the contrary, they are required to use the BRI approach which cannot square with the court claim construction technique.

    That 6 feels compelled to bluster about in his ignorance is merely a sign that he lacks professionalism in his duties: thus the label of ‘amatuer’ is especially apt for him.

  41. Maybe 6 personally does claim construction. If so, he/she is pretty unique, because 99% plus of examiners DO NOT CONSTRUE CLAIMS beyond an implicit finding that “your claim term means: an unstated definition of which the only salient thing you need to know is that it is broad enough to encompass whatever prior art thing I allege meets it”.

    Pure tautology.

  42. If you do not understand the application after reading it, how can you make a valid rejection?

    Serious question with no snark.

    Your comment of ‘keep dreaming’ to my point of a) is meaningless. Try again.

    Yes, 6, just like I had to inform you of the ability of an applicant to make comments to a notice of allowance, your lack of understanding on these things (which you should know in order to do your job) paints you as ana amatuer.

    not answer you otherwise

    LOL – go ahead 6 as we both know that the reason you do not answer me is because you lack answers to the points I raise. If you feel like pretending that you are not answering for some other reason you can play in that fantasy land all you want, but your silence screams otherwise to all reading our discussion.

    supposedly being on the bar is hilarious

    I am on the bar. I keep on telling you that I am not the person you think I am (from your very limited digging into the ladders of abstraction background). Whether you believe me or not will only end up hurting you because you have been put on notice that I am not the person you are making allegations about. Purposefully ignoring this notice can only harm you.

    As to ‘screaming,’ I do not understand why you think any such ‘screaming’ is going on. My words were “keep telling you.” Kindly do not attempt to spin what I say.

  43. “a) you do not actually do claim construction (as the courts do) when you examine applications, and
    b) you are tasked with reading and understanding the entire application before you do your ‘keyword’ search – in other words, you have always needed to know and understand the terms ‘the applicants make up off the top of their heads’ before you cite art in any rejection.”

    a. keep dreaming.

    b. what on earth makes you think that I, or any other examiner, can divine the meaning of many terms just from the application itself?

    c. you calling me an amateur while making these assertions is hilarious. Maybe you should talk to the good judges on the federal circuit and ask them if we do or do not perform claim construction. And likewise perhaps you can show me an examiner in an extremely technical art who is able to “understand the entire application” “before they do their keyword search” in every application before them. Introduce us over coffee.

    You really do let your conceptual understanding of what the office supposedly does drift far away from what is actually occurring on a day to day basis anon. Seriously, why don’t you come get a job at the office and see for yourself what goes on? In the meantime I’m going to go ahead and put you on notice that the next time you allow your amateurishness show I’m simply going to state you’re an amateur and not answer you otherwise.

    “how do you think the bar feels when you don’t do your job and we have to keep telling you that?

    You supposedly being on the bar is hilarious mr. “making findings of fact as a matter of law”. Even the worst third rate lawlschool wouldn’t pop out an attorney with such a tar ded view. But even presuming you were, I’m not sure how you or anyone else on the bar thinks screaming at an examiner to “understand” an application, or terms in a given application, that they clearly do not understand, even after reading the application, is going to make them magically understand the application or term. But perhaps you can share with us how your screaming magically works out. I’m guessing, from your assertion that this screaming keeps having to take place that it doesn’t work out all that well.

  44. Similarly to my pointing out to you 6, that the applicant has the ability to comment on reasons for allowance, I will point out to you that

      a) you do not actually do claim construction (as the courts do) when you examine applications, and
      b) you are tasked with reading and understanding the entire application before you do your ‘keyword’ search – in other words, you have always needed to know and understand the terms ‘the applicants make up off the top of their heads’ before you cite art in any rejection.

    That’s called: your job.

    this makes the whole endeavor a whole lot less appealing to me.

    LOL – how do you think the bar feels when you don’t do your job and we have to keep telling you that?

  45. You know JB your post just reminded me of something that I feel is often left out of discussions at the CAFC, and perhaps was in this case as well. The effect on the prosecutions before the office. Just how in the sam happy he ck is the office supposed to necessarily find art or a definition for all these terms applicant’s make up off the top of their heads? If all of these terms meanings are a matter of fact, thus requiring, one presumes, some sort of evidence, and if the office supposedly bears the initial burden, does that mean the office now will be required to back up every little claim construction of every little term with art showing the understanding of the person having ordinary skill?

    I don’t know, but looking at it from that perspective this makes the whole endeavor a whole lot less appealing to me.

  46. Suggestion: The “general” claim construction is a legal issue and reviewed de novo. By general, I mean the legal framework of interpreting claims.

    For example:

    i) “consisting of” vs “consisting essential of” vs “comprising”

    ii) each limitation being considered.

    iii) properly construed in view of specification.

    and the like.

    Interpretation of individual terms within a claim largely factual. That is, how one of ordinary skill interprets the term “X” in a claim is a factual issue. District court weighs witnesses, experts, etc. to make a determination.

    That is, so long as lower court follows the general legal framework of claim interpretation should not be de novo.

  47. From the summary: Judge Lourie asked whether every case would now involve litigants attempting to frame legal determinations as factual determinations.

    That would depend on what the litigants were trying to achieve. On the flip side, it seems likely that, if de novo review is abolished, the Federal Circuit will try to frame those same determinations as legal determinations whenever it wishes to overturn a lower court’s claim construction.

  48. Max, the United States has two independent and distinct requirements for specifications in relation to claims: first one must describe in the specification what one is claiming, and second, one must enable what one is claiming. So when I say that the United States allows one to claim only what one discloses, this is statutory.

    In the case of O’Reilly v. Morse, the Supreme Court identified two problems with a functional claim: it claimed future inventions of others that it had neither described nor enabled. They linked their holding not only the prior cases, including Wyeth v. Stone (a claim to cutting blocks of ice using machines was declared void as claiming beyond the scope of enablement or description when only one machine was described), but to the statutes:

    “But before he receives a patent, he shall deliver a written description of his invention or discovery, “and of the manner and process of making, constructing, using, and compounding the same,” in such exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same.

    This court has decided, that the specification required by this law is a part of the patent; and that the patent issues for the invention described in the specification.

    Now whether the Telegraph is regarded as an art or machine, the manner and process of making or using it must be set forth in exact terms. The act of Congress makes no difference in this respect between an art and a machine. An improvement 119*119 in the art of making bar iron or spinning cotton must be so described; and so must the art of printing by the motive power of steam. And in all of these cases it has always been held, that the patent embraces nothing more than the improvement described and claimed as new, and that any one who afterwards discovered a method of accomplishing the same object, substantially and essentially differing from the one described, had a right to use it. Can there be any good reason why the art of printing at a distance, by means of the motive power of the electric or galvanic current, should stand on different principles? Is there any reason why the inventor’s patent should cover broader ground? It would be difficult to discover any thing in the act of Congress which would justify this distinction. The specification of this patentee describes his invention or discovery, and the manner and process of constructing and using it; and his patent, like inventions in the other arts above mentioned, covers nothing more.

    Whoever discovers that a certain useful result will be produced, in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.”

    O’REILLY ET AL. v. MORSE ET AL., 56 US 62 – Supreme Court 1853, at 118-119.

    Recently you we have been debating whether it is proper to construe claims to cover subject matter not described in the specification independently of whether one of ordinary skill in the art could make the invention claimed. Of course we know where Judge Rader lands in this debate.

  49. Max, perhaps claim construction in Europe or in England specifically needs not to resort to the prosecution history to determine prior art because the examiners are diligent about requiring the specification to be amended to include the most relevant prior art so that the claims will not be construed to cover the prior art of issue during prosecution. That of course not done the United States.

    Another thing that American examiners often allow prosecutors “get away with” are specific disclaimers about claim scope. Actually this is somewhat important in the case of re-examinations or reissues where the statutes provide for intervening rights when one amends the claims and changes their scope. A disclaimer does not formally amend the claims, but it does limit the scope the examiner might give claim terms under the doctrine of broadest reasonable interpretation. The Federal Circuit debated whether a disclaimer was effectively the same thing as an amendment to the claims for the purposes of intervening rights. They held that it was not.

  50. Good start.

    Not nearly enough for a definition (legal fiction, what is entailed, where appropriate to apply, etc.)

    If the person does not recgonize the very common term of art in acronym form, spelling out the acronym will not likely help much.

  51. I didn’t hear the PTO say that the the scope would be different regionally, but that collateral estoppel would prevent patentees from taking advantage of factual deference to get broader coverage in subsequent cases. Yes, subsequent defendants might get to fight claim construction issues over again, but that is not necessarily a bad thing as some of the briefs argued. Whether sound or not, that observation has nothing to do with regional disparity as the original post suggests.

  52. I didn’t see in the mix that the specification is supposed to not include what is known in the art. This is one of the most abused aspects in patent law.

    A recent example of abuse: The recent decision (for example) from the PTAB looking to the spec for the definition of a processor.

    So, what you get really, it should be the how one ordinary skill in the art in view of the specification (and what is forgotten is and what was known in the art by one of ordinary kill at the time of the invention.) Putting this last part into or out of the mix is one of the great games judges play.

  53. Thanks for your reactions Ned. We could debate endlessly the difference between the English test and the US jurisprudence (and there is a difference) but that would be off-topic. I want to take you up on your statement that your claim scope is limited to what you “disclose”. I wonder whether you really mean that.

    In Europe the test is slightly different, namely that your scope should be commensurate with your contribution to the art, that is to say, confined to the scope you have enabled.

    But perhaps you will now tell me again that it’s the same test in the USA?

    Perhaps we can also agree that the inventor defines her/his invention in words of her own choosing, selected deliberately and carefully, by means of the Claim, and that the scope of protection to be given by the issued patent is therefore to be determined exclusively by that claim?

    I do not like the notion of using the prosecution history to put a meaning on the claim. Neither does Europe. If one does, then one cannot see what scope of protection the patent owner enjoys until one has first digested all that history. This is very time-consuming and expensive in lawyer time.

    Even then, the history muddies the waters and gives the litigators much more scope to fiddle the scope whichever way their strategy dictates, leaving every case unclear till the Feds have got at it. Business confidence (investors) need to know the scope without having first to go and ask the CAFC what it is.

    I prefer the European way, where the PTO will not issue till you have set your claimed subject matter in the context of the most relevant art (in your specification) and scrupulously tailored the detailed description to accord with the claims. At the EPO, what the spec describes as the invention must accord exactly with what the claims define as the invention.

    With the European way, you know it (the scope) the moment you see it (the issued patent). No need to look at the file history to find out the scope (although it might very well yield useful validity attacks).

    Sorry Readers for the length. I just wanted to clarify with Ned his false impression of how Europe fixes the scope of protection.

  54. A circuit court judge who has no background in computer science/electronics and regularly demonstrates his ignorance of the field should not be the one determining whether or not an element adds anything to a claim.

  55. Actually, Ned, I think you nailed this one.

    “What a claim term means to a PHOSITA in view of the specification and prosecution history”

    That, from what I’ve seen, is seldom what happens. What the judge does is looks at the universe of possible claim constructions that they could make select one that fits their theory of the case. Their one skilled in the art hat goes out the window.

    That is the same thing we see at the Fed.Cir. Lourie’s test of abstract, I rule no meaningful, ergo not patent eligible has completely eliminated one skilled in the art for a circuit court judge.

  56. “Despite the PTO and appellee’s repeated assurances that their preferred level of deference would amount to no more than a “small change” in the law, Judge Moore and others (including Judge Dyk, Lourie, and Reyna) seemed troubled by the potential implications of the change. Judge Lourie asked whether every case would now involve litigants attempting to frame legal determinations as factual determinations.”

    Haha, a small change. Yeah right.

    I bet they were troubled. Without their de novo claim construction abilities their power over patent law diminishes SIGNIFICANTLY. Most of their more nonsensical decisions start going down the tubes because their ability to swing the claim construction for the patentee is gone. Although on the other hand, their hands will be more tied to fix actual claim construction errors.

  57. Man o man, if they were to start giving deference that would be amazing, I wonder if the board would do so as well? Crazy powa if so!

  58. Max, underlying your assumption about DOE, I think you assume the inventor can claim equivalents using broad and functional claim language, and if he does not, that is his fault.

    The American system (US Supreme Court) operates on the principle that we claim what we disclose and no more. If we claim unknown equivalents, the claim is “functional” and indefinite and not enabled.

    But, we use functional claiming all the time and the Feds let us get away with it because there are some on that court who like broad claim constructions and see no vice at all in claiming variations not enabled or described — after all, this is how they decide cases themselves: ruling broadly on small facts.

  59. To the extent the proponents want to leverage the construction of a term away from the specification and to a meaning divorced from the specification, I think they do a disservice. Reading claims out of context is the stuff of the PTO where BRI is the rule. See, in re Morris for more on this.

    If they are read out of context, claims assume the fluidity of the proverbial nose of wax, moving one way for validity and another for infringement, with no certainty at all. Add to this “deference” and we get national chaos as forum shopping would abound.

  60. Max, you are absolutely correct.

    “What a claim term means to a PHOSITA” is properly the standard in the PTO where BRI is used.

    “What a claim term means to a PHOSITA in view of the specification and prosecution history” is what goes on in court, or should go on in court. I think this parallels the English view.

    But to the extent the Feds get the standard wrong, and they seem to a lot, it creates confusion.

  61. Malcolm, think the PTO guy doesn’t understand that we have a national patent system, not a collection of “regions” or district courts that have their own views of patent law.

    If he wants to change the law, go back to congress.

  62. Taranto does have a point.

    Wrong decisions are overturned over time by creating exceptions.

    The problem with this court is that it is filled with Judges that like to rule broadly on narrow facts. Overturning a prior en banc case they do not like is right up their alley.

  63. How is a doctrine of equivalents both unnecessary and obstructive?

    As you use the term unnecessary (as in duplicative), are you saying the English system is already obstructive as well?

    Your second point seems off as well. Applicants are not law writers and treating them in the same way would draw more errors – not less.

    Your third point is also difficult to follow: how is the lawyer involved? You do realize that a patent is a legal document, right? Your would place an inordinate legal function on ‘public confidence.’

    And finally, it is downright asinine to ask for the Federal Circuit to operate by English rule.

    Someone needs to take that soapbox of yours MaxDrei, chop it up into tiny little pieces and throw it on Malcolm’s next bonfire.

  64. Yeah, not much of a point. While some areas might have “reduced patent scope”, others would have increased patent scope. I don’t see why that would be beneficial to “the public” in any way.

  65. He may be implying that it is the cases that are not uniform that drive the reviews higher in the court chain and (supposedly) receive more and beter judicial scutiney.

    Lots of implied assumptions…

  66. Dennis writes:

    “…claim construction is ultimately an effort to decipher the meaning that a PHOSITA would ascribe to a claim term”

    but it isn’t in England and so I wonder about the extent to which it MUST be so, in the USA. Is it because SCOTUS makes it compulsory, perhaps?

    England makes claim construction a question of law by making it ultimately the question “For the PHOSITA, what was the inventor using the language of the claim to mean?”

    The answer to that question is often slightly different from the question as Dennis puts it. Take the Chef America case, for example.

    Posing it as that particular question has a number of merits.

    First, it renders a Doctrine of Equivalents unnecessary and obstructive. The answer to the English question inherently includes a consideration of equivalents.

    Second, it secures that one construes a claim in the same way that one construes a statute. Judges feel they can do this, and so are not frightened of doing it.

    Third, it is a rule how to construe claims which fits with what the notional reader of the claim, a scientist or engineer in the relevant technical field, would expect as the way lawyers would logically and sensibly construe a patent. Which is good for confidence in the patent system from outside the narrow world inhabited by patent law specialists. Which is in turn what we need to retain public confidence in the patent system

    Is it impossible for the Federal Circuit henceforth to operate by the English rule?

  67. Judge Lourie’s initial question was whether deference would disrupt the national uniformity of patent law that the Federal Circuit was designed to achieve…

    [Acting Solicitor of the PTO] Kelley’s point was that the concern [about non-uniformity] should not be an overriding one for the court since any non-uniformity is a benefit, not a burden, to the public

    Say what?

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