By Dennis Crouch
Braintree Labs v Novel Labs (Fed. Cir. 2014)
I see this case as highlighting the most critical and problematic problem with our patent system – that patent claim scope is intentionally ambiguous and malleable. Consistent with the subject matter of the invention, this case may potentially serve as a trigger for cleaning-out the patent system.
Braintree’s U.S. Patent No. 6,946,149 (asserted claim 15) covers a “composition for inducing purgation of the colon of a patient” and is used to help prepare patients for colonoscopies. A major problem with colon cleansing is the risk of having a dramatic electrolyte shift in the body as a whole – leading to potential emergency health problems. Of course, colonoscopies have become very big business and this patent is potentially quite valuable.
Here, Braintree’s patent includes the clearly functional claim limitation of “wherein the composition does not produce any clinically significant electrolyte shifts.” The appeal is about the meaning of that the terms purgation, patient, and “clinically significant electrolyte shifts.” The panel here included Judges Dyk, Prost, and Moore. Each Judge had their own version of how the term should be construed and how that relates to infringement.
What is “a patient”: The preamble of asserted claim 15 indicates that that the invention covers a composition for inducting purgation of the colon of a patient. All parties agreed that the preamble term “a patient” should be seen as limiting since it is implicitly referenced by the later reference to electrolyte shifts. Here, both the district court and Judge Moore saw the “a patient” term as indicating “one or more patients” whereas Judges Dyk and Prost saw the term as meaning “a patient population.” This ends up being important since the plaintiffs provided evidence of a patient who had received the accused product and fit within the electrolyte shift limitation. However, the “general class of patients” interpretation would require evidence that the result is generally expected in all patients.
Judge Prost: Indeed, [the “one or more patients”] interpretation would allow a composition to meet the claims even if 99 patients out of 100 experienced clinically significant electrolyte shifts, as long as one patient did not. . . . [The] application of the claim terms “a patient” leads to the absurd result of infringement even if a composition causes clinically significant electrolyte shifts in a large percentage of patients
Judge Moore: The majority believes this to be an “absurd result” because it would allow “a composition to meet the claims even if 99 patients out of 100 experienced clinically significant electrolyte shifts, as long as one patient did not.” I understand the majority’s concern. But this is a question of damages, not infringement. . . . Infringement, whether on a large or small scale, is still infringement.
Judge Dyk: (Agreeing with Judge Prost) The sole evidence in the summary judgment record concerning the percentage of individuals experiencing such electrolyte shifts is data from two clinical studies … and those data are sufficient to show that the claim limitation was not met [since] a majority of patients experienced clinically significant electrolyte shifts.
In this case, the district court had awarded summary judgment of infringement to the patentee. On remand, the district court will need to revisit whether the patentee has proof that the patient population as a whole would react to the treatment as claimed. We’ll likely see this case again on revise-and-resubmit after the district court has redone its work. Of course, there is a chance that the Supreme Court may take this case – potentially seeing it as a subject matter sequel to Sakraida (“that cow shit case”).
= = = = =
This is a bit of an off-the-wall thought, but I might question whether an infringement finding is appropriate even under Judge Moore’s interpretation. Here, we basically have a setup where one claim limitation (no-electrolyte-shift) occurs in some patients and not in others – the cause of the difference is unknown but is likely a somewhat random operation of the laws of nature. What we know is that a particular treatment protocol will usually result in an electrolyte shift, but sometimes does not have such a result. Of course, for infringement to occur, the accused infringer must practice each and every step of the invention as claimed – here that includes the “no-electrolyte-shift” limitation. Now, although patent law does not require that the accused have intented to infringe the patent, the acts that eventually resulted in infringement must have been intentional.
My question on infringement, is whether performance of that no-electrolyte-shift element is properly attributable to a deliberate act by the accused or instead should it be seen simply as an occurrence of a natural phenomena – an Act of God as the old Lords might have said. See Tennent v. Earl of Glasgow (1864).
“unless there is an art-recognized or otherwise defined relationship between the effect and some objective physical descriptor corresponding to the stated effect.”
Worth repeating for a morning chuckle of Malcolm self-FAIL.
art-recognized.
(hint: software really does work – it really does make a difference if you are holding a Britney Spears cd and a Microsoft Operating disc)
Gee, Tr0llb0y, there’s a bit more to my comment than the phrase “art-recognized.”
Are you really that st00pit? Or are you just a path0l0gical liar who doesn’t care if people can see right through your pathetic attempts to lie about everything that everyone else says?
Rhetorical question.
Nothing of any of your words fit Malcolm.
You did use the phrase “art-recognized.”
You have previously provide your, um, ‘opinion’ of that art field, and without any law or fact to back you up, would seek to dismiss the entire art field – well recognized for extensive innovation touching almost every other art field as some base ‘grifting’ scheme.
It is, as typical, ironic that you seek to accuse someone else of that which you are doing.
C’est La Vie.
Prof. Crouch’s statement of “Here, we basically have a setup where one claim limitation (no-electrolyte-shift) occurs in some patients and not in others – the cause of the difference is unknown but is likely a somewhat random operation of the laws of nature. What we know is that a particular treatment protocol will usually result in an electrolyte shift, but sometimes does not have such a result. Of course, for infringement to occur, the accused infringer must practice each and every step of the invention as claimed – here that includes the “no-electrolyte-shift” limitation.” prompted a new thought not advanced in any discussion I have seen on this case:
Do we have a product-by-process here given that an interaction of one claim element is outside of the supposed ‘composition’ nature of statutory class involved? What merely appears at first blush to be a straight up composition actually relies for its patentability on an action (i.e. interaction) and result (result indicating process) of that interaction.
This view may alliviate the good Professor’s ‘act of god’ notion, given that the purpose behind product-by-process claims was to protect patentees when they could not fully identify the product, but still presented something earning a patent.
Anon, given the holding in the court that the patient population must be considered rather than the effect on individual patients, there may not be a problem if a particular formulation being sold by the defendant does not produce an electrolyte shift in all but a handful of outliers.
However the way the claim is written, it does require that the particular formulation not produce an electrolyte shift in particular patients in order to infringe. Thus, the sale of the composition possibly could not infringe unless it was demonstrated that in no case would there be an electrolyte shift with the particular composition chosen. But Moore concluded the opposite, that if 99 out of 100 times there was an electrolyte shift, but in one case there was no shift, there would be infringement. But how can that be if the sale itself did not infringe?
I don’t see how this changes if you construed a claim to be a product by process claim because the sale of the product would infringe unless it was shown that the formulation worked in every case.
If you construe it as product-by-process, you would necessarily make the stated claim limitation an absolute requirement.
Moore’s conclusion is a bit odd. I think that she is taking the “well, it is not necessarily always required” logic to its extreme. Since the word “substantially” or any other comparative word is not present, one is not necessarily constrained to view the limitation as a “most should,” but rather, the “at least one” thinking may be applicable.
Of course, Moore’s way may be less and may not be so desired by the patentee – (think Chef America).
Do we have a product-by-process here
No.
Wow, so insightful.
TB: It is not considered infringement to make to see if the claim is actually reached.
How fascinating, coming from the mouth of Mr. Strict Liability himself.
As I said, I have all the recited salts in my garage and I already made a composition that lies just outside the scope of claim 16. Does my composition infringe claim 15? Yes or no?
You seem to be suggesting that infringement of a composition claim depends on how I intend to use the composition. That’s an interesting legal theory — particularly from Mr. Strict Liability. Do you, uh, have a cite for this proposition?
Let’s say I send you 250 mls of the solution and keep the rest here. You test half of it on a patient and you get a “positive” result. I test half of it on a patient and I get a “negative” result. So is your composition infringing but my identical composition is non-infringing?
Spend some time thinking before you answer. Remember, folks: these are composition claims, not method claims.
“Do you, uh, have a cite for this proposition?”
You might try Justice Story in Whittemore v. Cutter: [I]t could never have been the intention of the legislature to punish a man who constructed such a machine merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce it’s described effects.”
You can supply the next step, chump.
You might try Justice Story in Whittemore v. Cutter: [I]t could never have been the intention of the legislature to punish a man who constructed such a machine merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce it’s described effects.”
Mr. Principle is going to rely on some extra-statutory “judical activism” now? And a total piece of shirt case from 1813 that addresses pretty much ever possible defect in a patent with petty one paragraph summations???? Too funny. What happened to your beloved Founders all of a sudden? Apparently you happily throw them under the bus when it suits you. Nobody could have predicted that.
But more to the point: the passage you cited is not the holding of the case, but a description of the argument made before the lower court by the defendant. This is the holding:
It is further argued, that the making of a machine cannot be an offence, because no action lies, except for actual damage, and there can be no actual damages, or even a rule for damages, for an infringement by making a machine. We are however of opinion, that where the law gives an action for a particular act, the doing of that act imports of itself a damage to the party. Every violation of a right imports some damage, and if none other be proved, the law allows a nominal damage.
So pretty much the opposite of what you contended above. Nice try, though.
In any event, I didn’t make the composition I described for the purposes discussed in Whittemore. I made it for completely different purposes. It’s a salt solution, after all. There’s lots of uses for sulfate salt solutions. I just made a bunch more by the way, and put it all in 500 milliliter bottles. I wonder if they each infringe? Each composition is the same, remember.
So answer the question: Let’s say I send you 250 mls of the solution and keep the rest here. You test half of it on a patient and you get a “positive” result. I test half of it on a patient and I get a “negative” result [i.e., the limitation in the claim is not met]. So is your composition infringing but my identical composition is non-infringing?
A simple yes or no followed by your explanation will suffice.
It’s always an option, of course, to simply admit that relying on functional language for patentability creates all kinds of problems for the public.
Going back to your assertion that “a philosophical experiment” is a defense to infringement: what’s a “philosophical experiment” exactly? Am I allowed just one experiment? How long can the experiment go on? Am I allowed multiple trials to determine if the results are reliable? What if the elements of the claim are each written in functional language (like typical computer implemented junk) and, according to you, the patentee, and all your bottom-feeding grifting friends, the claim is enabled upon description of the function? Exactly what sort of “philosophical experiments” can I perform without infringing your claim, according to your earlier espoused theory?
You seem confused about the point I made (showing one of the experimental use defenses – in law) with a different argument that I was not ever making.
Move the goalposts back and try again.
“So pretty much the opposite of what you contended above. Nice try, though.”
Are you saying that there are no defenses along the lines of experimental use, Malcolm?
None?
Are you really saying that?
“ what’s a “philosophical experiment” exactly?”
Maybe you should read the Whittemore case with the intent to understand, instead of just looking for soundbytes.
“going to rely on some extra-statutory “judical activism” now? And a total piece of shirt case from 1813”
In case you missed the memo, in the time period of 1813, Congress has allowed the courts some nose of wax leeway.
That leeway was removed in 1952.
You might want to get these facts straight and not try to kick up so much dust.
LOL! Tr0llb0y gets the holding of his case axx-backwards and calls me a chump. When he’s called on his error, he not only fails to acknowledge that he stuck his foot in his mouth but instead launches into further insults.
Nobody could have predicted that a path0l0gical liar would behave this way.
What a freakin t 0 0 l.
Did I say my quote was the holding?
That would be a NO.
Pay attention – I gave you a cite for the proposition – which is what you asked for. Thus no error. No lie. no foot stuck in mouth. In fact, you are in the spotlight now to defend the notion that there are no defenses along the lines of experimental use – funny how you have not bothered to answer the question, and instead seek to kick up dust and proclaim yourself (red) Queen of the world…
Try to contain your spin to just a little bit of accuracy, as I note that you have failed to answer my questions and requests for citations from you (instead giving the bland excuse of ‘I don’t need a cite for every legal proposition I make.’)
Did I say my quote was the holding?
Good lord what a freaking psycho.
LOL – gee, did you use the wrong word again and get all excited for nothing, while still avoiding providing any answers that were asked of you?
(and yes, that is a rhetorical question)
“Good lord what a freaking psycho.”
Actually I think that the need to be right was more a symptom of OCPD wasn’t it? The psychopathy might be indicated by the lying before that, but the declaration of “no error” is more simple need to be right.
“Friends and family are often under serious strain because the OCPD individual must be in charge and the only one who knows what is right”
Yep.
“For a person with fully-developed OCPD, actions and beliefs are either completely right or completely wrong, and they are always right. Because of this, interpersonal relationships are difficult as the person demands too much of their friends, partners and children. ”
And yep again.
Nice projections 6.
It must be wonderful to not even care at all what was right in the first place.
I see the Chump Malcolm has run away from the conversation.
Again.
Stooping to spread his lies on “holding” in another thread, yet refusing to answer the points put to him.
So typical of the coward.
btw, love the spotlight of your self- FAIL by posting this right up on top – mighty considerate of you to supply the laughter (at you, not with you) with such easy access.
“How fascinating, coming from the mouth of Mr. Strict Liability himself.”
I kno right?
LOL – obviously 6, you too did not know.
Way too funny.
further, it’s called a defense – there a few limited ones and they do not take away from the context in patent law known as ‘strict liability.’
Why don’t you know these things?
“wherein the composition does not produce any clinically significant electrolyte shifts”
So, scope of enablement. Which compositions are enabled by the specification by a PHOSITA? And throw in there the doctrine of equivalents and you have the scope of the claims. Look at the accused composition. Would it take more than routine application of known techniques to invent the accused composition? If yes, then no infringement and the claims are too broad.
LazardTech is the proper way to police claim scope. It is fair and logical. You are entitled to what you have enabled. If you claim scope is too broad, then you end up with invalidated claims.
Please, try to apply real patent law. Try to be real patent attorneys and agents and not a Lembot.
Night, if the claimed subject matter is not enabled, then certainly too the claim is indefinite because it does not particular point out and distinctly claim the invention. The Supreme Court has indicated that when claims are overbroad, they have both problems.
But the Supreme Court has made a stand – that when a composition is claimed in terms of the results it achieves, rather than in terms of what it is, the claim is inherently indefinite. It makes no difference whether one of ordinary skill in the art would know how to construct the claimed invention and test it to see if it has the claimed result. The claim must specify the structure or steps that will yield the claimed result.
In the present case, the claim compositions ranges were not effective to achieve the claimed the result in all cases. Once this was made clear, the claim was invalid under both 112(a) and (b).
But the patent office never should allowed the applicant to distinguish the prior art based upon the claimed result when the claimed compositions themselves were disclosed or obvious over the prior art.
Ned,
Your over reading habits are suspect.
I do not question the Supreme Court (well, I do, but in a different manner) – I question your version of the Supreme Court.
So, I take it that you agree with my post Ned in the proper way to police claim scope.
Night, yes, it works.
Thank you for that.
NWPA Would it take more than routine application of known techniques to invent [sic] the accused composition? If yes, then no infringement and the claims are too broad.
What your analysis fails to acknowledge is that the typical claims that present problems are claims such as the one at issue in this case which, absent the functional limitation, cover a gazillion different compositions and, with the functional limitation, still cover few zillion compositions. Each one of those compositions may be trivially easy to make (I just made one right now, using readily purchased salts, for an entirely different purpose than that described in the claim) but it’s absurd to require me to perform the applicant’s arbitrary clinical test on the “effectiveness” of the solution to discover if my solution infringes the applicant’s composition claim. The act of preparing the solution for testing is itself an infringement, unless I can show it’s reasonably related to some future FDA submission. So I have to risk infringement in order to determine if I infringe? That seems a bit unfair, to put it mildly.
Note that this is a different problem than that which plagues so much of the computer-implemented junk that’s out there. All of the structures in the typical computer-implemented junk claim are old — the computers, the processors, the transmitters, the receivers, etc — including their connectivities. All that’s “new” is the information that is being received, “processed” and spat out. To the extent there is any objective physical structure that is novel, it’s described nowhere. Such claims do not protect or promote any new technology; they simply limit what the public can freely do with existing technology, in exchange for the mere identification of that specific potentiality (where the generic information processing functionality of computers has been understood for eons, in patent terms).
“The act of preparing the solution for testing is itself an infringement, unless I can show it’s reasonably related to some future FDA submission”
Not true. It is not considered infringement to make to see if the claim is actually reached.
And this is not the only reason either.
Why don’t you know this?
MM, still the specification enables a PHOSITA to make the compound. I have a reverse question for you: if the claims are not valid, then what claims would be? Are you saying this is simply not the type of invention that can be eligible for patentability?
I had a funny feeling that you would not answer this question.
LOL – just a funny feeling?
When (if ever**) has Malcolm provided a straight-up, intellectually honest answer to anything?
**-without torching one of his agendas, as in when he volunteered the admission as to knowing the controlling law of the exceptions to the judicial doctrine of printed matter.
if the claims are not valid, then what claims would be
Claims that describe the composition in objective physical terms. As was already pointed out, the claims granted in the EP are much more sensible (they look a lot like claim 16 in the corresponding US case).
“in objective physical terms”
Do you feel that Orthokinetics is described in “objective physical terms?”
What are “objective physical terms?”
Do you recognize that your “absence of functional terms” simply does not accord with US law?
Further, are these US-law-acceptable terms in relation to the person having ordinary skill in the art to which the invention pertains?
(did you notice the almost prescient emphasis I had been giving that part of the law prior to this decision coming out?)
“granted in the EP” – LOL refresh for yourself the importance of actually applying US law, my friend.
“ absent the functional limitation, cover a gazillion different compositions and, with the functional limitation, still cover few zillion compositions.”
So you seem to be saying that the same problem would exist without functional language…
“ Each one of those compositions may be trivially easy to make”
You want what? you want it to take a flash of genius? What part of the last sentence of 35 USC 103 do you not understand?
“ they simply limit what the public can freely do with existing technology”
LOL – like what people could freely do with electrons, protons and neutrons….?
What is the difference again between three resistors in series and the same resistors switched to be in parallel…? Something witty about a car seat…?
What is it that you mean by “specific potentiality“…? Sounds like gobbledygook and dust-kicking to me.
While I would personally prefer to see a knife fight, the CAFC could probable get better results if they just arm wrestled or flipped a coin.
OT, but I can neither confirm nor deny that Malcolm has been ordering hundreds of the beta versions for his postings at PatentDocs:
link to yahoo.com
Hey, lookie: the Cliven Bundy of patent law is trying to make a funny.
Emphasis on “trying” …
For the record, the reexamination, 90/010316, was owner initiated. Claims 1 and 6 were amended to add the limitations about electrolytic shift, and specific ranges of solutions. Here are the reasons for “allowance” in the NIRC:
“the prior art of record, namely Morishita, Russell, Nissho, Giuliani, and Martindale, fail to teach or fairly suggest a composition comprising from about 100 ml to about 500 ml of an aqueous hypertonic solution, wherein the solution comprises an effective amount ofNa2S04, an effective amount of MgS04, an effective amount of K2S04, wherein the composition does not produce any clinically significant electrolyte shifts and does not include phosphate.” (emphasis in original)
This case was already decided in the much more interesting context of glue, see Holland Furniture v. Perkins Glue 277 US 245 @ 257.
“One attempting to use or avoid the use of Perkins’ discovery as so claimed and described functionally could do so only after elaborate experimentation. Respondents say that laboratory tests would be insufficient and that “the best and probably the only satisfactory test is to try it out on a large scale in a furniture or veneering gluing factory.” A claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery and would discourage rather than promote invention. The Incandescent Lamp Patent, supra, 476. That the patentee may not by claiming a patent on the result or function of a machine extend his patent to devices or mechanisms not described in the patent is well understood.”
When one has to submit studies for a fact finder to determine if they are infringing, the underlying patent is invalid.
What about Funk Bros. as well?
All three salts of the composition were known laxatives. Effective amounts of each were known. Combining them in a solution is not invention per Funk.
The invention, if any, lay not in the combination, but in such combinations and that were both effective for purging and for not inducing electrolytic shift.
The defendants proved that there were many combinations in the claimed ranges that were effective for purging but that induced electrolytic shifts. Thus either the claim is way overbroad — it claimed an invention not enabled.
This cannot be that hard to figure out. Why in the world the defendants did not make the argument is a wonder.
You’re correct, but it’s important to understand I’m going down a different road than you.
There are case-specific facts which would find this claim invalid. What I am saying (and apparently what Prof. Crouch is saying) is that this entire type of claim is always invalid.
The statutes require the patentee to inform the public of what is his invention. When the invention turns on an effect or result and the effect is not readily apparent at the time of making, it creates a negative effect on the public because it chills valid competition. Nautilus (which is argued next week) has the same problem: Post facto it’s entirely possible to determine whether an article infringes or not, but nobody could know at the time of making whether it infringed.
The CAFC’s current test, which simply requires that the scope be ascertainable and if the accused product fits within the scope, is insufficient in giving effect to the full requirement of the law. The patentee must inform the public of what structures are foreclosed from them, so that the public need not brave infringement to find a noninfringing alternative. That’s the essence of pointing out and particularly claiming.
Its not hard to figure out how it came to be either – In Wabash the court said that limited use of functional language to describe inherent properties is okay (see @ 371-372) but that was in the context of well-known functional properties of old things. Over time, the CAFC has drifted so far from that that we have this case here, where it’s the distinguishing characteristic from the prior art, that the entire point of the Supreme’s words is lost.
It ties in greatly with the general prohibition on functional claiming. It’s not just that in this case it’s unenabled and undescribed, it’s that in virtually all cases it’s unenabled, undescribed and indefinite.
“ The patentee must inform the public of what structures are foreclosed from them, so that the public need not brave infringement to find a noninfringing alternative. That’s the essence of pointing out and particularly claiming.”
Um, “structure’ is not your magic elixir (one way or the other).
And lose the Latin – it paints you as a 1 L.
Not understanding that strict liability is only a characterization of the required mental state paints you as a dropout. Was your school accredited?
But I’ll explain using smaller words: If one of skill in the art reads your patent and still doesn’t know what things they can and can’t make, you’ve got an invalid patent. The idea that once something is made you can test it and see if it falls into a class is not an acceptable standard for determining definiteness.
Let’s say the defendant instead came to the court in a declaratory action: “I intend to make a compound comprising 100mL of X, 200mL of Y and 200mL of Z, decide if I infringe these claims.” A resolution would be utterly impossible. The case necessarily turns on dueling expensive studies of a compound the court would have to essentially immunize someone to allow them to make. The law doesn’t tolerate that disincentive on the public, it just declares the patent indefinite and moves on.
Not understanding the context of the use of the term “strict liability” in the patent setting – and then lecturing others on an incorrect understanding paints you as an @$$.
You are trying too hard to sound impressive in an area of law that you really just do not know.
“If one of skill in the art reads your patent and still doesn’t know what things they can and can’t make, you’ve got an invalid patent.”
Nice strawman. You might though want to emphasize that “one of skill in the art”portion though. You know, for others that also seem not to recognize what that means.
“The idea that once something is made you can test it and see if it falls into a class is not an acceptable standard for determining definiteness.”
More than a slight problem with that is the notion of inherency – you might want to think about that. Your simply assuming the conclusion that you want to have (not acceptable) does not make it so.
“ the court would have to essentially immunize someone to allow them to make” LOL – actually you are wrong on this as well. You probably have not gotten to the point in your 1L studies yet on the possible non-infringing ability to “make” to verify that the invention does what it claims to do.
You keep on wanting to sound impressive and all that you are doing is highlighting that you really do not know patent law.
You are pathetically wrong and doubly so for bragging about it.
You keep on wanting to sound impressive and all that you are doing is highlighting that you really do not know patent law.
He makes way more sense than you do, nutcase.
LOL – the company you keep, Random Examiner – when Malcolm jumps to your side, you might (well, should) feel rather squeamish about that.
Anon, “The idea that once something is made you can test it and see if it falls into a class is not an acceptable standard for determining definiteness.” [Quoting RandomGuy]
More than a slight problem with that is the notion of inherency – you might want to think about that. Your simply assuming the conclusion that you want to have (not acceptable) does not make it so.
Actually anon, it is the holding the Supreme Court in Perkins Glue – which makes Dennis’s opening post exactly on point. Defining a claim in terms of an effective result without the details in the claim that ineluctably achieve that result is indefinite.
It is not simply a matter of whether you can construed a claim to determine whether a claim is indefinite, but whether one of ordinary skill in the art would know whether they infringed before they constructed and tested the product. RandomGuy is exactly on point.
To the extent that the Federal Circuit is not enforcing Perkins Glue, then the matter should be taken up to the Supreme Court.
“thout the details in the claim that ineluctably achieve ”
You over-read the case (again) Ned.
It is black letter patent law that the fact that some experimentation may be required does not mean a claim is indefinite.
Your over-reading would change that completely.
anon, that is why ranges and things like “substantially” can be placed into claims. The Supreme Court is also said that in the nature of the case if one cannot precisely define the scope of the claim, one can add in the skill in the art such that the person of the ordinary skill in the art would appreciate what he has to do to achieve the result.
Thus an effective dose is probably not indefinite because doctors know what that is.
Ned,
Do you realize that your post at 11.1.1.1.1.6 directly contradicts your post at 11.1.1.1.1.4?
In other words, your last post affirms that I am correct.
Thanks.
To respond to 11.1.1.1.1.1 – There is no inherency. It is subject to effects upon a particular patient or a group of patients (depending upon the construction). As I pointed out in my example, it’s entirely possible that a mixture is effective on one person and the very same mixture is ineffective on another person. It has a fixed (inherent) structure, but that structure does not have an inherent effect. This isn’t even a situation where a machine sometimes works and sometimes doesn’t (and thus sometimes infringes, making it an infringing article) as the dissent argues, because every particular article is different and is consumed upon a single use. So it doesn’t even meet the wrong standard that the CAFC uses.
Nautilus will again show this quite soon for you. If you were right, Nautilus would infringe because one can post-facto determine if a structure inherently substantially cancels out the EMG (even though there was little to no guidance as to what structures actually achieve that effect in the patent). We’ll see if the Supreme Court finds that to be the proper test, won’t we?
“You probably have not gotten to the point in your 1L studies yet on the possible non-infringing ability to “make” to verify that the invention does what it claims to do.”
That exception goes to experimentation for further development and it isn’t in play here. Even if it were, you’re suggesting that the public pay a tax (the cost of the experimentation) to determine whether the scope of the invention reaches their action, but that’s a burden the law specifically forces the patentee to bear before the patent issues. The patentee must make clear what is protected or there simply is no protection.
What I am talking about the commercial making, using and selling of a product where it is impossible to determine if there is infringement on that particular article until the use is exhausted and the product ceases to exist. You make a mixture, you administer the mixture, it will either shift electrolytes in the patient or it won’t, and infringement turns upon that. If your argument that the exception applied was accurate there would be no case here, as the infringer would be immunized under the experimentation doctrine because the experimentation is necessarily patient-specific (i.e. every commercial use would also be an experimental use, and infringement could never be found). Obviously that isn’t the law.
“ It has a fixed (inherent) structure, but that structure does not have an inherent effect. ”
You are not talking about what is actually claimed though.
Move the goalposts back.
“If you were right, Nautilus would ”
? – I have not yet made any comments in the Nautilus case, have I?
“That exception goes to experimentation for further development and it isn’t in play here”
No. It does not.
Try again.
“What I am talking about the commercial making, using and selling of a product where it is impossible to determine if there is infringement on that particular article until the use is exhausted and the product ceases to exist”
Nice goalposts moving. Can we move it back now?
Random, describing well know properties of the prior art is totally acceptable — it is the novelty of the thing that cannot be claimed in terms of its properties or results or functions.
Rich and crew really screwed the pouch in Swinehart and Donaldson.
Just one more time: Halliburton not only condemned functionally claiming the point of novelty. That case also demanded that old elements as well be claimed structurally. While this is just dicta, it is an important reason the patent bar went into a panic, in addition to the open question of whether a novel combination could be functionally claimed.
The language of the current statute did not start out that way. It first was proposed as a modification to 103, and without any construction clause. This suggestion was not received well on the Hill, nor in the patent bar as a whole. The modification where means plus function was permissible was added to 112, but no one at the time thought it was in any way a derogation on 112(2) that excluded claiming the novel feature in terms other than its properties or functions or results. No one intended to overturn not only Halliburton, but Wabash Appliance, United Carbon and Perkins Glue. The only way to reconcile this is to observe that MPF are allowed, but not at the point of novelty.
This is entirely consistent with the Supreme Court cases, consistent with Halliburton’s holding, but with not its dicta. The clause clearly was intended to allow claiming of old elements functionally, and no more.
(sigh) Halliburton was abrogated.
Take it up with Frederico who flatly disagrees with you, anon.
You are over-reading yet again Ned.
anon I will bet you that Halliburton will be spoken or cited approvingly with respect to its functional claiming logic in Nautilus.
The abrogated part of Halliburton is only the claim construction part with respect to 112, 6th, and you cannot cite any statute passed by Congress that states otherwise. Congress has endorsed the Halliburton (large prohibition on) functional claiming logic.
“Congress has endorsed the Halliburton (large prohibition on) functional claiming logic.”
Cite please.
“The abrogated part of Halliburton is only the claim construction part with respect to 112, 6th, and you cannot cite any statute passed by Congress that states otherwise. Congress has endorsed the Halliburton (large prohibition on) functional claiming logic.”
Nah bro, that’s just the way it looks to the everyday bystander who is not a federal circuit judge with a pro-patent agenda.
112(f) is (still) not written in mandatory language.
Not all valid functional language is within 112, 6th. But the functional language that is used most of the time is still invalid.
Correction:
“Not all [ ] functional language is within 112, 6th”
And that is the key.
112(f) is STILL not written in mandatory language.
And that my random examiner friend is the law as written by Congress. While you struggle to seek out and find some endorsement, I will use the very words of Congress.
(I like my position way more than yours)
At 11.1.1.2.3.18-19 AAA JJ nails the critical weakness in the Ned/6/Malcolm Mooney position.
Come on guys, don’t run away.