Teva v. Sandoz: Standard of Review for Claim Construction(?)

By Jason Rantanen

While many eyes will be on the Supreme Court on Monday when it releases its decision in Hobby Lobby v. Sebelius, the term is over for patent cases.  Over the past few months, the Court issued an astonishing six patent law-related opinions (almost 10% of the Court’s docket), covering ground from claim definiteness (Nautilus) to the exceptional case standard in Section 285 (Octane, Highmark) to multi-actor infringement (Limelight) to the burden of proof in noninfringement declaratory judgment actions (Medtronic) to the ever-present patentable subject matter case (Alice).  Three of these opinions (AliceHighmark, and Limelight) resolved deep intra-circuit splits at the Federal Circuit.  Altogether, this term profoundly altered the landscape of patent law jurisprudence.  Perhaps more important than the substance of the Court’s opinions was the change itself: through opinions such as Nautilius and Alice, the court made it clear to participants that the law of patents can be a dynamic, changing thing, an organicness that forward-thinking patent attorneys and agents – even more than litigators – will be forced to grapple with.

I’ll be talking more about this year’s developments in patent law at the Wisconsin State Bar Association’s annual Door County Intellectual Property Academy in a few weeks, and the Supreme Court will certainly take center stage.  Dennis will be there as well.

For now, though, the next major event in patent law jurisprudence is likely to be the Court’s opinion in Teva v. Sandoz, in which the Petitioner posed the question:

Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.

But this case is more complex than the (relatively) simple issue of deference in appellate review of claim constructions.  At the trial court level, the district judge did not simply construe the claim in a way unfavorable to Sandoz, the accused infringer.  Rather, the district judge rejected Sandoz’s argument that the claim term “Average Molecular Weight” was indefinite and construed the claim in Teva’s favor.  On appeal the Federal Circuit reviewed the issue of claim definiteness without deference and concluded that the term was indefinite (applying it’s pre-Nautilus standard of “not amenable to construction” or “insolubly ambiguous”).  

Herein lies the sticky part: If one takes the view that questions of claim definiteness and claim construction are effectively one and the same, then this case squarely presents a question about the appropriate standard of review for claim construction. This seems intuitive: both revolve around determining claim meaning.

But treating issues of claim definiteness and construction as if they are just different sides of the same coin runs into a glitch if there is a factual component: one issue (definiteness) arguably comes with a “clear and convincing” evidentiary standard while the other (claim construction) does not.  (While there is a canon that claims should be interpreted to preserve their validity, it’s  a weak one that only operates as a last resort.  See Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (“While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction.”).)  If different evidentiary standards are being applied to the factual components of each, then claim definiteness and claim construction must be separate issues.

If this logic is sound and claim definiteness and construction are distinct issues, then Teva v Sandoz is really only about the standard of review on the issue of claim definiteness, not about the standard of review of claim construction.  But the observation about evidentiary standards notwithstanding, it seems counterintuitive to say that the question of whether “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty” is somehow different from how those skilled in the art would interpret the claims.  And Teva’s Brief, which I’ll summarize tomorrow, treats indefiniteness and claim construction as if they were the same thing.

How, then, could the Court escape this conundrum of different evidentiary standards for what is essentially the same determination, aside from concluding both are pure issues of law, a position that would be at odds with Markman and probably Nautilus?   First, the Court could conclude that indefiniteness does not implicate the clear-and-convincing evidence standard.  The Court went halfway there in Nautilus, observing that the “presumption of validity does not alter the degree of clarity that §112, ¶2 demands from patent applicants,” but left open the question of whether subsidiary issues of definiteness trigger the clear-and-convincing evidence standard.  A second possibility would be for the Court to implement a “clear-and-convincing” evidentiary standard for issues of fact in claim construction (although how that would work in a form other than the current pro-validity canon, I have no idea).

There are also some less-than-helpful options that would further churn up the muddy bottom of patent law. It’s entirely possible that the Court could issue an opinion solely addressing the issue of whether or not the appellate court must grant deference to district court factual findings on the issue of indefiniteness, and leave unanswered the question of whether deference is appropriate in the context of claim constructions.  Or, it could avoid discussing the appropriate evidentiary standards for claim construction and indefiniteness (as it did in Nautilus), instead leaving folks to ponder whether they are the same or different.

I’ll also make the observation that after the Court granted certiorari in this case, it issued Nautilus v. Biosig, which lowered the standard for finding claims indefinite.  Even if the Court were to reverse in this case – ruling that factual issues in claim construction and claim definiteness are entitled to deference – it would seem that the inevitable result would be a remand to the Federal Circuit, and then probably to the district court, to apply the new standard.

123 thoughts on “Teva v. Sandoz: Standard of Review for Claim Construction(?)

    1. What dichotomy? According to the SCOTUS there are no facts in patent law only a judge applying the float-my-boat test.

  1. “On Thursday, the Supreme Court issued a unanimous finding that the 35-foot buffer zones around Massachusetts abortion clinics violated protesters’ freedom of speech. We do not have time to discuss this in detail, except to point out that this decision came from people who work in a building where the protesters aren’t allowed within 250 feet of the front door.”

    There is a quote from the NYTs about the royal 9.

  2. MM brosef, or even Ned etc. now that you are somewhat wise to the ways of the preemption I actually rather need your assistance with an instance that I’m rather halfsies on.

    So you have a claim that is directed to controlling a milling machine for bicycle parts.

    The apparatus claim is of the form:

    A milling machine for bicycle parts comprising:

    old part B (let’s say a ‘workstand’)
    old part C (lets say a ‘toolhead’)
    and a processor configured with program instructions to perform steps
    Old step A (let’s say loading up a workpiece on the stand)
    Old step B (let’s say milling the workpiece in an old fashion)
    Old step C (let’s say brushing off the workpiece)
    New step Z (let’s say milling the workpiece again in a new fashion)
    Old step D calls out that an OLD finished milled bicycle part is produced.

    Any thoughts? Only thing new is a new step.

    If you’re not familiar with milling machines

    link to thomasnet.com

    1. 6, if the process claimed (in the form of a machine configured to perform the process) is not even “improved,” I wonder how it is statutory as the machine is neither new or improved. Different is not enough.

      But if the process produces the old product faster, with more quality, cheaper, better or any such, it clearly passes 101.

        1. 6,

          1. Cite 101.
          2. Cite the portion of the specification that states that the output of the process is unchanged.
          3. Cite the fact that the specification does not state that the process is improved in any way.

          Conclude that the process or machine that is neither new nor improved over prior processes is non statutory.

          If the applicant files an affidavit that relies on expert opinion that there is an improvement, you have to accept it.

          But, that affidavit would then be on the record and subject to inquiry for truth and accuracy.

          I think the PTO has inherent authority to do the above when incredible utility is involved. This is not different in kind.

          1. Thanks for your input Ned. It doesn’t seem that you’re wanting to do a preemption rejection so much as a lack of “improvement” rejection.

            1. Wanting” to do a rejection of a certain form should never be the driver of actually making a rejection.

              How are you contemplating a pre-emption rejection: what exactly do you think is being pre-empted? Clearly, if a different method achieves the same end product (and filling in the blanks, you have a different machine making the same end product), how do you suppose anything is being pre-empted?

            2. “How are you contemplating a pre-emption rejection: what exactly do you think is being pre-empted? ”

              I haven’t yet decided. It is very difficult to sus out sometimes anon. They don’t generally draft these kinds of claims with the objective of giving away the entire game quite so easily as the drafters did in Alice. They generally draft to mask and bury that.

              There are often tricky little things in the form of the claim. Take for instance here in this claim we have a situation that a “processor” is supposedly “configured” to carry out steps that no mere processor (or mere instructions) can actually carry out. As opposed to some claims where they strictly limit what the processor is “configured to do” to only things the processor actually does.

              So shall I strike with enablement? They’d just respond “but but but, you know what we meannnnnn”, right?

              And if they did respond in that fashion, then you know some super examiner will be like “hur hur hur, yeah you know what they meannnnn, let’s give them some implicit limitations so that we’re not big fat meanie pants to the softiewafty babies”. So then it becomes a question of just what is going on in all those invisible “implicit” limitations. Is the processor actually doing nothing but generating and sending some signals to other parts to carry out those steps (as opposed to actually carrying out the steps itself)? Now we’re talking a little closer to the realm of the abstract. Maybe not close enough, but we’re getting there.

              But I will keep you advised.

              I would still like to hear from MM since he appears to understand things a tad better than Ned seems to at the moment. Ned seems to kind of drift in and out of understanding preemption.

              1. Difficult to “sus out”….?

                LOL – seriously? Hey, I know the examiner’s job is not always easy, but this point here IS easy. If you think this is difficult, you are doing it wrong.

                a “processor” is supposedly “configured” to carry out steps that no mere processor (or mere instructions) can actually carry out.

                Are you talking impossibility, or are you trying too hard not to take the claim as a whole, wanting not to see that the processor is integrated into the machine?

                So shall I strike with enablement? They’d just respond “but but but, you know what we meannnnnn”, right?

                Doubtful as it is unclear what you mean with such a comment. Are you adding to the hypo a concern of lack of enablement?

                big fat meanie pants to the softiewafty babies” – you have jumped fully into the weeds of anti-patent ad hominem. I suggest that you might want to collect yourself and calm down.

                MM since he appears to understand things a tad better than Ned seems to at the moment.

                Translation: MM aligns with my viewpoint and I like that better.

                Ned seems to kind of drift in and out of understanding preemption.

                Once again – how is preemption even in the picture? (Ned’s um, “understanding” is not the only person’s that is drifting as you never quite grasped the whole ladders of abstraction concept.

              2. I would try to help you by not overloading you and putting too much on your plate and simplifying my question to you, but the question is as about as simple as it gets.

              3. “Hey, I know the examiner’s job is not always easy, but this point here IS easy. If you think this is difficult, you are doing it wrong.”

                Well I respect your opinion in this particular case anon. I appreciate you giving it.

                “Are you talking impossibility, or are you trying too hard not to take the claim as a whole, wanting not to see that the processor is integrated into the machine?”

                To be clear, the “machine” so far only has 3 parts. So yes in so far as we’re talking about the machine as explicitly recited, we’re talking at this point unpossible. So the question is, what are all the rest of the invisible parts that are supposedly present in order for these things to happen? What are the actual processes between all these invisible parts that go on to accomplish the recited things?

                See, here’s the thing. I deal with a lot of method claims. It is not uncommon at all, to have to figure out what the actual method steps are that are supposedly occurring since the applicant comes in speaking either in past tense or in some bizarro japan/korea/china speak where he has failed to tell us any method steps for his method what so ever. Or, they’ll tell us some method steps that aren’t in proper english etc. etc. so it falls to us to try to put the claim into actual method language that describes what is actually occurring so that we can do the examination, and esp. the search, correctly the first time. Otherwise, if you just examine what they sent in, without filling in the blanks so to speak, then you’ll just waste a round of prosecution. (In fact, you should note that this is probably a rather large source of wasted rounds of prosecutions as not all examiners will trouble themselves and will instead simply act on the broke arse claims submitted)

                Similarly here. It’s pretty much without doubt that what we have explicitly in the claim is a description of what the processor’s instructions are for making the processor send signals out to other parts to accomplish (reading in context and taking the claim as a “whole”). The processor itself does none of those things. Yet none of that other stuff is literally recited. It’s all left to be “implicit”, and is invisible. It is rather hard to evaluate that which is invisible in the claim.

                “Are you adding to the hypo a concern of lack of enablement?”

                Yes, remember the “impossible” part we just got through talking about? Remember, the processor itself, and the instructions, could never accomplish those things by their lonesome.

                “you have jumped fully into the weeds of anti-patent ad hominem”

                Nah that was my imaginary super examiner that did that.

                “MM aligns with my viewpoint and I like that better.”

                Yes, “my viewpoint”. The one that has been expressed now 4x at the USSC in the last 5 years. That one. You know, the one that is the lawl.

                “Once again – how is preemption even in the picture?”

                I just said I haven’t decided. I am concerned about all the implicit, and as yet invisible limitations the most. And of course those are going to involve things like control, sending of signals, etc. etc. But you can stop asking me about it.

              4. To be clear, the “machine” so far only has 3 parts. So yes in so far as we’re talking about the machine as explicitly recited, we’re talking at this point unpossible

                To be clear, you missed the particular word “comprising.” This means that the machine has far more than just the three parts – as any person having ordinary skill in the art to which the invention pertains would readily comprehend.

                No wonder why you find this so difficult to “sus out.”

              5. “To be clear, you missed the particular word “comprising.” This means that the machine has far more than just the three parts – as any person having ordinary skill in the art to which the invention pertains would readily comprehend.”

                Yeah I’m aware. But it doesn’t mean that a processor does the things recited. In fact, the processor does not do the thing recited. So in effect, they’re trying to say that a processor does some things that it doesn’t really do so as to get around putting the real limitations about what is actually happening (signals being sent etc. etc.) into the claim so that I may evaluate such. Likewise, the total effect of this situation is that it gives them essentially what MM was talking about the other day: a “wish” claim. They wish that the processor did that, and they have instructions that will cause the processor to send a bunch of signals etc to do that, so they figure they’ll just go ahead and recite that.

                As you’re so keen to tell us, the processor isn’t alive, it doesn’t “know” what it is doing and the only thing it is physically doing is crunching numbers and sending signals.

                But I appreciate your assistance anon. That will do us for today.

              6. “as any person having ordinary skill in the art to which the invention pertains would readily comprehend.”

                Right, that’s precisely what I’m saying anon. And I need to be able to evaluate all those as yet invisible parts.

              7. That will do us for today.

                Talk about controlling….

                You really cannot stand to be wrong at all, can you 6? You just have to control the situation or in essence run away.

                That’s a symptom, you know. :-)

              8. “invisible parts” are not – to the PHOSITA.

                Um, that’s a related power to that very same PHOSITA that allows that person to have instant and full knowledge of all prior art, and with the blessing of KSR, has been augmented.

                So many people forget about that side of the KSR decision.

              9. 6, I don’t drift in and out of understanding of preemption. I simply disagree with the whole concept of preemption.

                I think the problem with laws of nature, products nature and the like is that they are nonstatutory. Preemption has nothing to do with that issue. If the novel aspects of the claim are nonstatutory, the claim as a whole is not statutory as there is no statutory invention. It makes no difference what the old elements of the claim are. No difference whatsoever.

                Returning to Benson, the novel parts of the claimed there were nonstatutory. The computer parts were statutory, but the invention did not lie in the computer but in the nonstatutory aspects of the claim. This was not about preemption. Later Flook clarified that issue. Flook clarified that peemption really has nothing to do with whether claim subject matter is statutory – even though Flook addressed mathematics as a judicial exception.

                Now I know the Supreme Court keeps talking about preemption. But I think that has never been given weight in any case is and it is not decisive. Flook demonstrated that. In other words preemption is pure dicta.

                I see from listening to the oral arguments in Alice that the Supreme Court does understand this issue when various justices began asking the patent owner about where the invention was. They wanted to know if there was any invention in the computer or in the computer system. Those questions tell you everything.

              10. Ned,

                You are misreading Benson again as the holding there was to method only – not computer parts (regardless of the part in claim 8 – we’ve talked before about that being a clear “miss” on the Court’s part).

              11. What it tells you Ned, is that the Court is on a frolic with its “Gist.”

                Combine that with your (void for vagueness) “abstract,” and what you have is a Court ignoring the branch of government that was actually given authority under the constitution to WRITE patent law.

                If reading a map includes re-writing the map, you know that you have gone too far.

              12. Anon, whether Benson’s holding was that math was nonstatutory or whether math was a judicial exception, that holding was not limited to the context of methods.

                This is another example of a holding of a case the implications of which you fail to grasp because it does not fit within your worldview. No one reading Benson would have ever understood that math being nonstatutory or an exception was in any way dependent upon whether the claim was to a process or to a machine.

              13. “6, I don’t drift in and out of understanding of preemption. I simply disagree with the whole concept of preemption.”

                Well you say that, but then you demonstrate the opposite on the regular. I respect your disagreeing with it. I don’t respect you’re not abiding by it and incorrectly applying or misapplying it.

              14. “You really cannot stand to be wrong at all, can you 6? You just have to control the situation or in essence run away.”

                It can’t be a surprise to you that not everyone likes to talk to the mentally ill like yourself all day long anon. Some sure, it is a hoot. Learning about how their condition affects them and seeing it in action is extremely interesting and all but you just can’t handle the ramifications of their illness all the time. Sometimes you gotta bid them goodbye for awhile.

              15. “Now I know the Supreme Court keeps talking about preemption. But I think that has never been given weight in any case is and it is not decisive. Flook demonstrated that. In other words preemption is pure dicta.”

                Ned if you think that then you’re not understanding what preemption is. The whole of the analysis just done in Alice is preemption. The steps they did (and which I told you about nearly 4 years ago now) are just the steps that you carry out to determine preemption. If you prefer to leave the term preemption out then that’s fine, you can use another, less descriptive word. So long as you’re still looking for preemption it doesn’t matter one bit. But it sure as sht ain’t just dicta. It’s just a name sure. But it is a descriptive one.

              16. ““invisible parts” are not – to the PHOSITA.

                Um, that’s a related power to that very same PHOSITA that allows that person to have instant and full knowledge of all prior art, and with the blessing of KSR, has been augmented.

                So many people forget about that side of the KSR decision.”

                Well anon until one of these invisible men shows up and tells me what the invisible limitations are here in the real world I have no way of knowing what they are. The prior art and spec sure as sht ain’t saying what all these invisible things would be. And if I don’t know what they are (since I’m not an imaginary person myself irl), then I literally cannot, as in do not have the ability to, evaluate the claim as a whole as you always bid me to do.

              17. 6, I think “non statutory” is the word I prefer.

                All patent preempt. If that which is preempted by the patent is ineligible, the patent claim as whole is directed to non statutory subject matter.

                I would just like to get the Supreme Court to focus on the statute and stop making things up as they go by using vague new terminology that they refuse to define — as in “abstract.”

              18. ” If that which is preempted by the patent is ineligible, the patent claim as whole is directed to non statutory subject matter.”

                That’s how we’ve been using the word already thanks Ned. But if you really don’t like the word then that’s cool. Don’t use it. But I will tell you that it comes in handy in everyday usage.

                “I would just like to get the Supreme Court to focus on the statute and stop making things up as they go by using vague new terminology that they refuse to define — as in “abstract.””

                You do know that the use of that term “abstract” in this context is at least over 100 years old correct? There is nothing “new” about it. The word “preemption” has been around for 60 years now as a short hand descriptor for an inquiry. Also, not much “new” about it.

                But I can appreciate that you’d like them to stick to the statute, just to make your life easier or whatever.

                “Your ignorance is breathtaking.

                You must try really really hard to be that really really m0r0n1c.”

                Hooray anon got around to insulting me! I was wondering how long it would take him to resort to the ol ad hominem!

      1. Different is not enough.

        Ned – you misstep.

        Different machines that create the same end product are easily patent eligible, and may even be patentable from one to another.

            1. anon, since you never understand the facts of the case, and are unwilling to discuss the facts of any case, you are in no position to lecture anyone on what a case holds.

              1. LOL – dead wrong Ned. I don’t need to dive into the briar patch at your beck and call.

                My analysis – and the results of the analysis are sound.

                You on the other hand have several questions to you still sitting on the table. AOOTWMD does not work for Malcolm. It surely will not work for you.

    2. My thought 6: if you can’t reject it under 102, 103, or 112, then allow it. If you have to resort to 101 then you are a scoundrel.

        1. Frame it properly and I will be glad to help. If your problem is that you think the claim scope is too broad for what is enabled, then so state that. Still, in today’s world–think–how often is it really the case that claims that are too broad cannot be taken out with 103?

          1. 6 is clearly not interested in doing the job that he is supposed to do.

            He is off on a frolic looking (and sussing hard) to use a rejection that just does not fit.

          2. I’ll be honest with you NWPA, this particular instance concerns me most because of the “implicit” limitations that people have taken to dreaming up are “implicitly” in claims that use functional language. Do you remember when that sort of “reasoning” started coming into vogue a few years back to try to rescue claims from 101? This is a case where it is undoubtable that such “implicit” limitations would be present, if that happens ever.

            So then my real concern then is that I am stymied from actually examining the claim on the merits because half, or more, of the claim is invisible and not yet written out. It’s just all “implicit” though no living man could tell us what the actual “implicit” limitations are because they are in fact formless and could take on any number of forms.

            To me, this should be a situation where we hit the applicant for failing to claim what he regards as the invention (we do this after he argues for invisible “implicit” limitations being present) or simply state that it is inoperative as presented. But, the administration likes to try to coddle folks using this FORM, thus paying homage on the alter of the draftsman, so that sort of rejection really probably isn’t in the cards.

            Frankly 101 doesn’t concern me so much as the invisible limitations. Now, if after we sorted out the invisible limitations, and had them present explicitly in the claim (via amendment) then my 101 alarm bells would probably ring loudly and clearly. That’s my guess anyway.

            But to be honest the reason I posted was because what I wanted was MM’s opinion. Because whether you agree with him on the substance of the law or not, he is pretty good at looking past the form of the claim to what is being claimed even if he goes too far doing that on occasion. And to be honest, it appears to me like the whole claim is directed to a manner of controlling an old apparatus. If that be the case, the form of the claim needs to be method, not apparatus. How then it is to be forced into being that is the question.

            All this is of course setting aside the absurdity of having a bunch of method steps in an apparatus claim.

            1. 6, if the non statutory elements of a claim control the statutory elements to produce a new or improved result, the claim is statutory.

            2. 6,

              I do not see you getting all upset about the other “implicit” powers of PHOSITA, like the godlike power to instantly know and possess all prior art anywhere….

              When “proponents” start getting all selective, eyebrows rise.

              1. What “implicit power” do you think I’m currently upset about anon?

                Mere implicit “powers” aren’t invisible implicit limitations that need to be reviewed as part of the “claim as a whole”.

  3. One point that is interesting is the potential clash of Alice with deference to factual findings as Alice (and Laurie’s method) is all de nova the judges decides everything and fabricates everything from their mind out of the ether.

    1. Don’t you know NWPA that since anything in any of the statutory categories (even stone cold physical items) can be considered “abstract,” that even facts can be considered and the Court will still do whatever it pleases.

      ;-)

      1. since anything in any of the statutory categories (even stone cold physical items) can be considered “abstract,”

        Is this what you’re telling your clients? Just curious.

        If so, they should probably find a new patent attorney.

          1. He does on occasion. Though you will note anon’s hyperbole just before his own inciting.

            Let’s be honest, even if you agree with anon the hyperbole is at least geared to incite a bit.

          2. NWPA You really do incite much of the bickering

            Right — sorry about that. In the future I’ll try to follow your lead and post only very inspiring thought-provoking commentary about “judges fabricating everything from their mind out of the ether” and how everyone I disagree with is just like John Wayne Gacy.

  4. Fascinating how the courts and here the Commenteria ignore the Statute.

    Or did Congress delete the decisive role of the POSHITA?

    That person needs only to understand the claims. There’s no evidentiary overlay.

    Judges just can’t stop meddling with evidence at trial.

    1. Good point. The PHOSITA disappear in Lemley’s functional paper as well. Killing off the PHOSITA is a necessity to kill patents.

      1. …as worth noting in almost all whines about “software patents,” is the improper reading of claims (the infamous **sniff** test).

        Claims are to be read standing in the shoes of a person having ordinary skill in the art to which the invention pertains, having been informed by the specification.

        Leaving out “in the art to which the invention pertains” is critical to those attempting to resurrect the mental steps doctrine and the purposeful obfuscation of what one of my favorite words brings to the table.

        That word, of course, being: anthropomorphication.

        Further, as noted, one of the primary faults of the “Gist” approach is the elimination of claim elements that must be present when enforcement of the claim is being pursued.

        The bottom line of Alice is a two-fold sword against patents: “abstract” and “gist.”

        The NIMBYs fail to realize that this sword can be (and will be) swung against patents in all art fields. There are even some who still refuse to recognize that perfectly fitting ANY statutory category is no shield against the “abstract”-“gist” sword.

        The Court has created a cache of weapons and then left that open cache in the parking lot of a grade school, closing its eyes to the impending recess and swarm of children of local courts everywhere.

        Great job Court.

        1. This is pretty much the same chicken-little complaining we heard from the exact same people after KSR was decided. The reality? More patents were applied for and granted per year in the wake of that decision than ever before in the history of the country.

          Information processing methods (and apparati functionally claimed to carry out those methods) really are different from other kinds of methods and apparati.

          You’ll figure that out eventually. Most people already have.

          1. This is pretty much the same ch….

            zzzzzzzzzzzzzzzzzzzzz

            LOL, lovely AOOTWMD from the number one comnplainer and the number one repeat complainer of activities that can be performed lawfully but that are subjectively “grift.”

            Spare us please.

            (btw, I was not posted right after KSR so – once again – you are making false accusations)

            1. complainer of activities that can be performed lawfully

              Lots of stuff was lawful once but isn’t anymore and/or won’t be in the near future. For example, you used to be able to refuse to serve people food in a public restaurant on the basis of their skin color. You can’t do that anymore.

              Smart people have learned to take these basic facts about reality into account prior to making plans for the future. Smart people also know that without “complainers” we’d still be living in a country where, e.g., you used to be able to refuse to serve people food in a public restaurant on the basis of their skin color.

              We all know that patenting jnk is very, very important to you. Most of us could really care less, however, because the patent system isn’t all about you. Not even close.

              Please keep crying about the loss of some entitlements for the wealthiest people in the country. It’s very, very moving.

              1. That use choose “skin color” is pretty rich, given your past behavior on these boards defending 6 and the use of a certain “N” word.

                A truly lovely AOOTWMD, there.

              2. We all know that patenting jnk is very, very important to you. Most of us could really care less, however, because the patent system isn’t all about you. Not even close.

                Nice strawman – build the fallacy of over-personallizing (which jnk is SOOOOO important to me, precisely?) – and ignore the fact that I argue substantive law – and then fabricate out of thin air this notion that I feel that the patent system is “all about me” (when I have never provided anything close to that view) and then knock that strawman down with a statement that no one has ever argued (“because the patent system isn’t all about you“).

                You post is not even close to a reasonable position.

                Try a little intellectual honesty. For a change.

        2. “There are even some who still refuse to recognize that perfectly fitting ANY statutory category is no shield against the “abstract”-”gist” sword.”

          Well of course not. Merely fitting a category is no shield.

          Claiming something that isn’t judicially excepted subject matter on the other hand is a great shield.

          1. Claiming something that isn’t judicially excepted subject matter on the other hand is a great shield.

            It really is. And it’s not that difficult either. Of course, you have to invent something eligible first.

          2. Well of course not. Merely fitting a category is no shield.

            Pretty funny that statement – 6, do you know that Malcolm does not think that the Alice case provides for that sentiment?

            Hmmm, first MaxDrei, with an “of course” assumption that Malcolm totally disagrees with (and I even politely notified MaxDrei of such, only to be responded to in a snippy manner), and now you with a “of course not” which Malcolm has recently disagreed with as well.

            Your little circle seems to be fracturing (notwithstanding MaxDrei attempted @$$kssing).

            1. “Pretty funny that statement – 6, do you know that Malcolm does not think that the Alice case provides for that sentiment?”

              First I wouldn’t care if he doesn’t think that. And second I see no reason for the “alice case” to “provide for” that statement.

              Merely dropping your sht into a class won’t shield you from the abstract idea analysis. Alice dropped their sht in a class and they fit there quite well for three claims at least. Didn’t shield them. Seems like the case “provides for” what I said just fine.

              1. First, I wouldn’t care

                There is a big problem with you 6: you don’t care.

                Reminds me of another symptom…

                As to repeating yourself with “merely dropping your sht” – hey I’ve said the same thing like forever and it’s Malcolm you need to be speaking to.

              2. “There is a big problem with you 6: you don’t care.”

                Really? Is that a “big” problem “with” me?

                Or is that a big problem you have “with” me?

                “and it’s Malcolm you need to be speaking to.”

                I don’t know w t f you’re talking about ta rd, MM has never stated the contrary. If you think he has it is because you can’t understand him.

              3. You are doing those projecting and being delusional things with clenching tight your eyes again 6.

                Try opening your eyes. Yes I know the view of the lemming’s arse in front of you is not the best view in the world, but you might want to open your eyes before you reach the crest of the hill you are marching up.

  5. Perhaps immediately relevant is the DOJ/PTO Amicus brief that sets forth the PTO view of when factual evidence from an OSA is needed and should be deferred to. The DOJ/PTO brief should have immediate relevance to IPR practice since it sets forth the agency’s view on the correct interpretation of Markman and the claim construction process.

      1. Interesting that the Supremes have asked for the USG position by way of the Solicitor today. So what was the DOJ/PTO doing? Does the Solicitor line up behind them or are we going to see a split in the agencies.

        13-956
        TEVA PHARMACEUTICALS USA, ET AL. V. SUPERIOR COURT OF CA, ET AL.
        The Solicitor General is invited to file a brief in this
        case expressing the views of the United States.

    1. JRF, the Government brief relies on FRCP 52(a)(6) — findings of fact are reviewable for clear error.

      How this applies to appeals from IPRs is unknown – and illustrates that IPRs are a whole new can of worms.

      1. All my admonitions aside, I wonder Ned, if you realize that your rather uneven handling of violations of the separation of powers doctrine severely weakens your focus on this particular type of separation of powers doctrinal violation.

          1. Yep – you might actually admit to reading my posts…(as you do and only stop responding when you lack answers as to your agenda and your third party interests are threatened)

            1. anon, I admit, I generally read your posts. But what I found amusing is your assumption that I did read your posts.

              We have long have had good conversations. I don’t like being badgered, though. If you disagree with me on a point, just say so and why you disagree. The why is very important.

              1. Asked and answered.

                If you don’t like being badgered, address the points and questions I raise in the first instance and stop repeating arguments that have no merit.

      2. Well Nautilus clearly established that specs/claims are viewed through the eyes of OSA. Nautilus also establishes that the issue, when not a layman level, is appropriate for an expert. There is no ability to reject the expert testimony (factual) under the guise of the interpretation of the spec/claims being legal.

        Then look at the DOJ/PTO brief where the construction analysis necessarily collapses since there is no ability to disagree with a factual finding. More importantly, the entire justification for the factual / legal dichotomy appears to be premised on credibility findings.

        DOJ/PTO own the government policy so the PTO has to come in line with the brief – as would all other executive agencies.

        Now look at the IPR process which pretends to follow the FRE but does not use live witnesses – no cross-examination. Dueling experts? IPR ALJs are limited to the factual findings (expert interpretations) presented to them which raises a host of issues since claim amendments are possible (in theory) as well as with 112. Absent the PTO using its own experts which can be questioned and whose credibility can be attacked, there is an inherent flaw in the process. Without digressing into IPR nuances there are a host of inconsistencies between the policy set forth in the DOJ/PTO brief and how the PTO is handling IPRs.

          1. But the PTO has to follow the DOJ/PTO policy now which means they need factual findings. Which would bring the IPRs in line with a normal APA analysis akin to what we see out of the ITC. The point being, as an executive agency the PTO has to follow the DOJ/PTO policy in the amicus brief. That impacts IPRs now prior to the Supreme Court deciding the issue. While it may have appeared to be a great idea to a solicitor or two, procedural problems are created by the decision to file a brief. PTO should have stayed quiet because right now the policy conflicts with the IPR practice and throws everything into uncertainty pending a decision by the Supremes.

            1. JRF, since the Government brief generally speaks about appeals from the trier of fact, I don’t know how this would impact IPR trials — except to allow live cross examination as is done in the ITC.

              Is that your concern?

              Also, I don’t have a clue as to how the PTAB would construe a claim that was indefinite. They certainly cannot invalidate a claim on that grounds.

  6. It does call for a re-read of some cases to get all this straight. Wouldn’t be so bad if they would just lay off the 101 stuff. In what patent world do you say that something is well known and was merely implemented in an obvious way and not reject it under 103? There is an answer and it is not pleasant.

    1. In what patent world do you say that something is well known and was merely implemented in an obvious way and not reject it under 103?

      Maybe it’s a patent world where we want to preclude patentees from wasting everybody’s time with arguments that they should have a patent because “Lookee, mommy, all these people already took licenses! It must be non-obvious!”

      Just a thought.

      1. But the problem is then there is no objective way to evaluate an invention and no process a person can follow. We are back to a judge looking at something and making their own evaluation absent facts and absent any science or patent law training from the judge (in most cases.) This way of evaluating inventions was found to be tragically flawed back in the 1950’s.

        Now the test is will your invention float the boat of the judge you are before and float the boat of the Fed. Cir. panel you draw? That is the best advice to clients. The float the boat of the judge test. Assume the judge has no science background, has never thought about hindsight, and does not have to consider any facts.

        That is not the type of law a modern society needs. In fact, the last country that implemented patent law like that was the U.S.S.R. A panel of your peers looked at the invention and if it floated their boat you got a patent. Guess what? Almost no one got patents and there was no innovation.

      2. Further,

        The items that NWPA puts forth will already resolve Malcolm’s quaint “look Mommy” issue.

        The anti-patent tilt is evident again. You really need to get into a line of work that you don’t hate the work product so much, Malcolm.

        1. I think anon you are right that MM’s intent is clear in this post. The end justifies the means and the end is to hold that all information processing patents are not eligible for patentability. The problem is that that is a job for Congress not the SCOTUS.

          1. Well, at least the executive branch noticed the proper distinction by stating in its examination instructions that “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business-methods, nor imposes any special requirements [such as “all-and-only-physical-claiming”] for eligibility of software or business methods.

            A recent post by Oh No is on point here as the anti’s have not stopped with their propaganda machine efforts. Their message remains the same – no matter what.

            1. You might be able to make a straight-face argument re Alice as to what it did or not make “eligible per se” (or vice versa).

              A bit trickier is taking into account all the Supreme Court decisions and the statutes and arriving to the conclusion that “fucntional claiming of information processing ‘inventions’ is still teh awesome!”

              But knock yourself out. I’m pretty confident about how all this is going to turn out. If it’s worth it to you to gamble re the exact time frame in the hopes that you’ll score big before the plug is pulled, then go right ahead. That’s your “legal right.” It’s also my legal right to point out what you’re doing and question whether cheering you on is wise or beneficial.

              1. Define “functional claiming.”

                Please be sure to note the difference between whatever fantasy is in your head and the perfectly legal use of descriptive words of the functional type.

                Thanks.

    2. Night, one would think that in both Bilski and Alice, after finding the claims as a whole notoriously old and “obvious” that they would have dismissed cert.

  7. Jason, in Markman the Supreme Court held that claim construction did not have a 7th Amendment right to a jury trial.

    In re Lockwood, vacated after the patent owner withdrew his jury trial demand, held, based on historical analysis, that the patent owner enjoyed a 7th Amendment right to a jury trial on validity (questions of fact).

    As well, see ex parte Wood & Brundage where the Supreme Court (Story, J.) held there to be a 7th Amendment right to a jury trial on questions of fact in actions seeking to revoke a patent for invalidity.

    I don’t think this issue is simply one of burden of proof. It is far more complicated.

  8. Nice post, Jason. This is an important case.

    he law of patents can be a dynamic, changing thing, an organicness that forward-thinking patent attorneys and agents – even more than litigators – will be forced to grapple with.

    If it wasn’t the Supremes, it was the Federal Circuit changing things up. It’s part of makes patent law so interesting. Technology changes, lawyers try to keep up with the technology, judges try to keep up with the lawyers, and Congress, well … they try. ;)

    the district judge rejected Sandoz’s argument that the claim term “Average Molecular Weight” was indefinite and construed the claim in Teva’s favor. On appeal the Federal Circuit reviewed the issue of claim definiteness without deference and concluded that the term was indefinite (applying it’s pre-Nautilus standard of “not amenable to construction” or “insolubly ambiguous”).

    I don’t recall the specific facts but if the Federal Circuit pre-Nautilus found the claim to be “insolubly ambiguous” then it seems likely that there were some serious issues. Was the District Court’s decision to go with Teva’s construction primarily due to Teva’s more convincing expert testimony as to what a skilled artisan would believe? Or did the District Court judge indicate that it was the weight of the intrinsic evidence that led him/her to adopt Teva’s construction, and the expert testimony was irrelevant? These are the scenarios where these questions of deference need to be focused, I think. It seems that in the former situation some deference should be given at least to the judge’s evaluation of the credibility of each side’s experts. In the latter instance, not so much.

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