Studying the Mongrel: Why Teva v. Sandoz Won’t Solve Claim Construction

Guest post by Heather F. Auyang, Senior Counsel at LTL Trial Attorneys in San Francisco, California. The views and opinions expressed herein are those of the author and do not reflect the views or opinions of LTL Trial Attorneys.

This is the Teva-update to last summer’s Patently-O Guest Post titled “Why Lighting Ballast Won’t Solve Claim Construction” (http://patently.wpengine.com/patent/2013/07/guest-post-why-lighting-ballast-wont-solve-claim-construction.html), which discussed two then-recently published empirical studies – a study of “close cases” (analyzing all post-Markman claim construction cases where the Federal Circuit panel was split) and a study of “reversals” (analyzing all post-Phillips claim construction cases in which the Federal Circuit reversed the district court).   Updates to both studies have now been published in a sequel article, which provides further explanation and answers to some of the questions that were raised in this very forum last year.  The past year’s data is unsurprising – it is exactly what the models provided by the original studies predicted, and it confirms, yet again, that changing the standard of review will not have a particularly beneficial effect on claim construction predictability or consistency. This conclusion is based on two key facts shown by the data:  (1) that Federal Circuit judges remain divided on how to approach the task of claim construction, and (2) that when district courts are reversed, it’s almost always because they have misapplied settled claim construction principles.  In fact, giving more deference to district courts will likely exacerbate, rather than fix, problems with claim construction.

The close cases study (of 105 cases) continues to show that each Federal Circuit judge who has participated in more than five close cases falls into a distinct camp.  Judges Wallach, Linn, Clevenger, and Moore “go broad” in over 66% of close cases (Judge Rader was also in this group); Judges Bryson, Prost, Mayer, Schall, and Dyk “go broad” in between 47% and 55% of close cases; and Judges Newman and Lourie “go broad” in under 31 percent of close cases.

As pointed out last year, if the goal is to make claim construction more predictable, a good place to start would be to ensure that all the Federal Circuit judges are following the same rules of claim construction.  This data clearly shows that they are not.  While any given judge in any given opinion can cite the same agreed-upon rules, the rules are not preventing significant differences in approach among the judges.  Last year’s post and article posited that some judges are expressly or implicitly following an “actually invented” standard that other judges reject.  Whatever the explanation, until these differences are ironed out, tinkering with other issues – like deference to district courts – is unlikely to be productive.

The reversals data (based on 153 cases) is even more relevant to the question of deference than is the close cases data, since it deals directly with the relationship between the Federal Circuit and the district courts.  Focusing on reversals makes sense because this dataset, presumably, includes the cases whose results would change if the Supreme Court determines that district courts should get more deference in claim construction.  Accordingly, these are the decisions that should be studied before one concludes that the current standard of de novo review should be changed.  As it turns out, the reversals data suggests that the high reversal rate is caused by district court error, not Federal Circuit arbitrariness. If that’s the case, why in the world are people advocating more deference to district courts?

The reversals study coded for whether the Federal Circuit decision was in a broadening or a narrowing direction.  The result for the 11-month period since the last study was a broadening rate of 87.5%, even higher than the previously-reported overall broadening rate of 72.5%.  In other words, in cases where district courts are “getting it wrong,” according to the Federal Circuit, they are systematically interpreting the claims too narrowly.  As pointed out last year, these narrowing interpretations typically enable district courts to grant summary judgment of non-infringement (or encourage the parties to enter such a stipulation), and thereby permit the Federal Circuit to review the claim construction issue without going through the trouble and expense of a trial.  In the year since then, we have not heard any other plausible explanation.  Last year’s post and article also challenged any advocate of deference to provide one or more examples from the “reversals” cases that (1) would have come out differently under a deference regime, and (2) should have come out differently.  We haven’t heard anything on that either.

This year’s article – including fancy color charts analyzing Federal Circuit judge proclivities across broad/narrow, less spec/more spec, pro-patent/anti-patent, and pro-affirm/pro- reverse; and pie-charts and tables for the reversals data –  is What Reversals and Close Cases Reveal About Claim Construction at the Federal Circuit – The Sequel, 13 J. Marshall Rev. Intell. Prop. L. 525 (2014) (available at http://repository.jmls.edu/ripl/vol13/iss3/3/). The comments here on last year’s article were of a very high caliber; hoping for the same again this time!

 

 

237 thoughts on “Studying the Mongrel: Why Teva v. Sandoz Won’t Solve Claim Construction

  1. […] This blog had some more variety in July 2014 compared to our normal ND Cal patent fare.  In a change of venue (literally), we reported on an Eastern District of California opinion holding that delay led to waiver of an improper venue defense.  Back home, we took a look at how a complaint can be self-defeating in an unfair competition and false advertising case and learned from a trade secret case that “willful and malicious” conduct, and attendant punitive damages, are available only against individuals, not corporations.  An end-of-the-month order on the level of specificity required in patent infringement contentions was more familiar ground.  If this all leaves you craving more discussion of patents, try this updated study on Federal Circuit review of claim construction. […]

  2. Caught by the filter. Try again.

    July 19, 2014 at 5:14 am

    Question to you on default claim construction, when there is ANY numerical range in the claim. Does it matter how many places of decimals the claim writer uses, to set the end values of the claimed range?

    Consider a typical aluminum alloy composition, carefully and deliberately expressed in wt %. Thus:

    Si 5 to 8. Mg 3 to 5. Ti 0.01 to 0.05. Balance Al.

    in which the Ti is, of course, as the PHOSITA knows, the nucleating agent.

    At # 18, below, I suggest that a range rounded to zero places of decimals (like Si above) is to be construed as anybody (not limited to the PHOSITA) educated in science (CAFC judges?) would construe it, namely to include 8.1 (but not 8.6), and 4.9 (but not 4.4). I’m saying that the writer was deliberate, for a purpose absolutely manifest to the PHOSITA, when she wrote “5″ and NOT “5.00″.

    Is all this a) common sense b) a matter of evidence c) a matter of who serves at the CAFC or d) as 6 below assesses it, magic? Discuss?

      1. To the extent that it is a repeat of # 19 that got held up by”moderation” it is indeed “boring”. I agree.

        But to anybody in the USA who does have real clients, who has to write real numerical range claims for them, that are going to be contrued 10, 15 or 20 years ahead of today, I would think it not altogether without interest. After all, this decimal point issue has appeared often enough already, when construing claims in Europe, trying to decide with precision what exactly they cover. I’m therefore surprised it has never yet been an issue in the USA, where the name of the game is the claim and where (as in the Chef America case) the patent owner is increasingly held to the precise words of the claim, deliberately chosen by the drafter of that claim.

        1. Well, Max, there are two topics, one validity the other infringement.

          In the PTO, there are prima facie cases and in court there is literal infringement and equivalent.

          You are struggling with equivalent infringement. But, in the PTO, all the examiner has to do is prove all limitations with evidence.

          Simple, right?

          1. Ned thanks but how about what coming after, and infringing, if coming before, taking away novelty? How many different meanings does a claim have?

            Me, “struggling” with the notion of “equivalent” infringement? I don’t think so. To render that notion otiose and worse than useless, I simply ask the question “What was the writer using the words of the claim to mean?”

            Try Chef America. Literal infringement? Apparently not. Equivalent then? What is “equivalent”? Is heating at equivalent to heating to? Fxxk knows!

            But if instead you ask, what was the Chef writer using the language of the dough baking claim to mean, its unambiguous single meaning becomes screamingly clear to any reasonable PHOSITA. Struggle? I think not.

            If you claim Mg 5-8 wt %, the Al alloy formulator reader immediately understands a magnesium content that ranges from about 5 to about 8, (and prior art 4.99 destroys novelty). If instead you choose to claim a Mg content of at least 5.10 wt %, well then, prior art 5.09% does not destroy novelty.

            Attention CAFC: Let’s not manufacture uncertainty where none exists. let’s not patronise the PHOSITA reader, and let’s not disrespect the writer of the claim. Instead, unless the claim as it stands makes no sense (Chef) let’s give full faith and credit to the claim drafter, that when her chosen words make sense, she knew what she was doing.

            Besides, isn’t the PTO supposed to construe the claims using a BRI standard? What is unreasonable about the claim construction for which I am pressing?

            1. I do not think that you two agree on what you are talking about.

              There is no meeting of the minds here.

              (as to why that condition is not met, well, lots of reasons exist, some more amusing than others)

            2. and let’s not disrespect the writer of the claim.

              It is not the CAFC that you need to address this admonition to.

              It is the Supreme Court.

              In a crossover from the “Applicant’s IDS” thread 101 discussion, it is the Supreme Court that is disrespecting the writer of the claim – d@mm scriviners.

              Let’s watch a hypothetical discussion unfold:

              Applicant: I choose precise words to claim as my invention a machine….

              Court: Stop. While it is a fact that you claim a machine, you have not obtained our respect for those precise words. We hereby use our powers granted unto us by us to say to thee “Gist” and thus decide that your invention is not to the words you have chosen. And thus, no patent for you.

              Applicant: May it please the Court to define this tool that you are using, so that I may understand and properly claim my invention?

              Court: Bah. No. We refuse to explain ourselves or what the terms we use mean (for example, “Abstract” the other edge of the sword). For if we were to explain ourselves, you clever scriviners would merely rewrite your claims to pass our words and thus obtain patents where we feel no patents should be granted. We will leave you to guess, and leave unto ourselves the power to deny you (without explaining) your future attempts.

              We the great and wonderful Oz have spoken.

            3. Max, 6 hit the nail on the head when he said there may be a problem here with WD support for the lower limit. If the spec does not suggest that composition amounts below that would not work, then I think there might be an argument about the number.

              I think MM should help us out here.

  3. General question on default claim construction, when there is ANY numerical range in the claim. Does it matter how many places of decimals the claim writer uses, to set the end values of the claimed range?

    Consider a typical aluminum alloy composition, carefully and deliberately expressed in wt %. Thus:

    Si 5 to 8. Mg 3 to 5. Ti 0.01 to 0.05. Balance Al.

    in which the Ti is, of course, as the PHOSITA knows, the nucleating agent.

    At # 18, below, I suggest that a range rounded to zero places of decimals (like Si above) is to be construed as anybody (not limited to the PHOSITA) educated in science (CAFC judges?) would construe it, namely to include 8.1 (but not 8.6), and 4.9 (but not 4.4). I’m saying that the writer was deliberate, for a purpose absolutely manifest to the PHOSITA, when she wrote “5” and NOT “5.00”.

    Is all this a) common sense b) a matter of evidence c) a matter of who serves at the CAFC or d) as 6 below assesses it, magic? Discuss?

  4. Below, comment 13 and its children consider a CAFC case called Patel. Ned says it is about evidence but I think it relevant to claim construction and whether the CAFC can do it right.

    Prior publication Maugans taught – up to 25 wt %. The claim recited – a range of from 26 wt % upwards. On that small difference hangs the whole of patentability.

    People, note the absence of any decimal point, with the consequence that a value of 25.5 lies within the contemplation of both Maughans and the claim.

    Yet nobody even mentions novelty. Only obviousness is addressed and, would you believe, on the basis that there is no abutment and no overlap. Now OK, there might not be an overlap, but there ain’t no gap between the respective ranges either, is there? Given that the claimed range sails all the way up to that nice round number 80 wt % one can but wonder what prompted the lower range end selection of 26 wt%

    Who’s going to volunteer to construe the claim for me? Does the range end at 26 or at 25.5?

    And as to obviousness, would it have done the PTO any good, in its efforts to get a prima facie obviousness case up on its feet, to argue that Applicant is silent as to any significance of shifting from 25% to 26 %. That silence (in the application as filed) is prima facie evidence that there is no step change in results, when one puts 26% into the pot instead of Maugans 25%. In short, Applicant wants a patent for an invention he had not got round to inventing when he filed his patent application. Mark my words; debating validity henceforth, in the context of FtF, is going to create much work for keen lawyers.

    1. Max, all the case really stands for is that the PTO needed evidence to bridge the gap. It did not have it in the prior art of record as noted by the court. It needed to find something else.

      The patent examiner could have provided his own affidavit. But that too would have had to be based on evidence.

      A prima facie case must demonstrate all the claim limitations with evidence.

      You’d better believe that in court, any defendant is going to supply an expert (unbiased, of course) that is going to bridge the gap. The patent owner will supply counter evidence. Then a trier of fact can make a decision, but based on evidence.

      1. Indeed Ned. It all depends what constitutes a prima facie case, one good enough to flip the burden of proof of patentability over to the Applicant.

        Given the presumption of validity, once the claim issues, it is incumbent on the PTO to examine applications thoroughly. Given this admonition of the PTO by Judge Moore, one has to wonder where the PTO is going to find the time and money to build a “prima facie” case to the rigorous evidential standard that will satisfy Jurist Moore.

        Perhaps Ms Moore supposes that, in their own self-interest, the competitors of the Applicant will step in, from now on, to help the Examiner, each time a case like this is being examined on the merits. By the way, “merits”, what a nice word that is.

        Thanks again, for drawing this case to our attention. I see more clearly now why some Americans get so hot under their collars about the way the EPO from time to time rejects claims that applicant vehemently asserts to be indisputably not without “merit”.

        1. You need to read pages 2-3 of the applicant’s request for rehearing to see how well applicant’s representative destroyed the Board’s reliance on the almost always misapplied boilerplate of In re Peterson, Titanium Metals, and In re Woodruff. And then you need to read page 9, second to last paragraph of the Court’s decision to see why those arguments were persuasive to the court.

          This is another fine example of how the lazy APJ class, who like Ned says like to hand wave at requirements for evidence and persuasive arguments that the favor boilerplate case law relied upon so routinely and lazily by the examiners and the Board, gets smacked upside the head by the Court when an applicant has the will and the resources to press their case.

          For another laugh see page 2 of the Board’s decision on request for rehearing where they state that the applicant’s request for rehearing appears to argue that the Board misapplied the case law, and how the APJ’s weren’t persuaded.

          Lulz

          1. AAA JJ, Thanks for that.

            This prima facie case issue is important. The Board at times seems to stop just short of proving all limitations with evidence.

            1. Careful, Ned. If you start joining the “show me the evidence” folks on this site, you’re gonna have to face the wrath of your buddy Examiner Mooney.

              1. You funny, Ned.

                Let me keep you from spending any time waiting for what Examiner Mooney has to say by telling you that he will chime in with his usual bullshirt of, “It’s facially invalid cr#p!!!!! I’ve tanked hundreds, no thousands, of j#nk patents like this just by posting on this site!!!!! It’s so obvious it’s not even eligible subject matter!!!!!!”

                Have a nice weekend.

              2. Ned I don’t even have to get far into the case after having seen what you guys have said and the claim itself. I’m in agreement substantially with what you’ve said about a hypothetical nonexistent case very similar to this one.

                It may well be that such a hypothetical case is obvious. But yeah you’re def going to need some evidence for a claim like that. I’m surprised that an examiner would even take this up/be allowed to take this up/would be affirmed. Who gives two flying shts if someone gets a range with another range with another range with several other limitations where all that is not old? If he’s busy rejecting this stuff he should check out the garbage issuing forth from the liberal arts side of the PTO. Maybe then he’ll reconsider being so harsh on folks that are at least promoting the progress of the useful arts.

                That said, of course whether or not an applicant in that position had WD for that range or not is another question.

                Also Max, you’re horrible at construing claims bro. Seriously? 25% in the ref magically becomes 25.5 and 26 in the claim means 25.5? W T F? Maybe if you had some kind of evidence or something about how an imaginary man would read the claims and the art. Maybe. Probably not even then.

                And all that is setting aside the density kerfluffle going on at the same time.

            2. AAA JJ, Malcolm knows his stuff on chemistry and bio, and always responds/discusses these cases seriously.

              6’s point on WD support for the lower limit was a good one. That is where the examiner should have spent some time.

        2. the competitors of the Applicant will step in, from now on, to help the Examiner, each time a case like this is being examined on the merits.

          Yet another fundamental error by our meddling officious friend from overseas.

          With friends like this, does the patent system need any enemies?

    1. Presumably a legal right is something that you have recourse with the legal authorities if it is violated. A non-legal right may be a right that a person feels they have, but that may not have cause of action recognized by the laws of the land.

      People may feel they have a right to free speech in Cuba, but not have a cause of action if they are imprisoned for exercising their right.

      1. Agreed, Night. A right without a remedy is no right at all. A patent in a country without viable, independent judiciary, is not really a patent.

        What is the difference between a legal right an a privilege?

        1. “A right without a remedy is no right at all. ”

          Not necessarily. If the cultural norms enforce it for all for the entire duration under discussion then they effectively have whatever “right” is being discussed. That’s why so many entitled ‘Mericans think they have a “right” to so many things that they legally have no cause of action to enforce upon the gov and yet the get to do anyway.

  5. I think that this is gen erally a good post. The more we can measure the consistency (or lack of) the “judges” the more we can spot those that have no regard for the law. But, the only problem is that in this case we are dealing with a large group of “judges” that have no regard for the law. So, it would be expected that no real rules (or laws) can be found that are being applied.

    And, now they can always resort to the 101 psychotic rule where a judge need only sit in a chair by themselves and dream up an abstract concept and then chant that the claims add nothing significantly more (the flash of genius test redux).

    1. This one was sent to moderation for “gen erally” (without the space).

      MM you must have really gotten G3ne mad. Impressive for a g3ne deficient chimp.

    2. If a citizen violates the law, there is the lawsuit.

      If a president violates the law, there is impeachment.

      But, if the courts violate the law, what then?

  6. I think that this is generally a good post. The more we can measure the consistency (or lack of) the “judges” the more we can spot those that have no regard for the law. But, the only problem is that in this case we are dealing with a large group of “judges” that have no regard for the law. So, it would be expected that no real rules (or laws) can be found that are being applied.

    And, now they can always resort to the 101 psychotic rule where a judge need only sit in a chair by themselves and dream up an abstract concept and then chant that the claims add nothing significantly more (the flash of genius test redux).

  7. anon, I agree that I, as well as some others, have been critical of the Federal Circuit as too friendly to the patent bar, and at least some of its judges seem to have seen the Supreme Court the same way as does the patent bar, but I don’t use blasé epithets to describe them.

    I am surprised you did not add tea baggers to the list though.

    1. I care not to add to any list. As I have mentioned, some use of rough and colorful language is appropriate. I would add, that such use can even be more effective than too-nice vanilla “let’s be polite” tiptoeing.

        1. You know I often thought you saw yourself that way and I thought about making one of the little 9 boxed posters for PO. But you would have been chaotic evil.

    2. Ned what is wrong with blasé epithets? The real problem is that people like Lemley will not address substantive criticisms of their ideas. (Laurie bird too as well as many others.)

      When you are dealing with people that will not show respect to the rule of reason (or law), then resorting to name calling is understandable and servers the purpose of diminishing them and their specious arguments.

      1. Night, regarding Lemley, all we have to show is that he was dramatically wrong on one point to undermine his credibility across the board.

        He is the author of the single-entity rule for method claim infringement. He wrote the law review article. He filed the amicus brief in BMC Resources.

        Just point this out to anyone who wants to rely on Lemley for any novel legal proposition.

        1. While I dislike Lemley intensely, this statement goes too far Ned.

          You fall (again) into the authority fallacy, here, applying the mirror image of “lost authority.”

          Read an item for what it states – not imputing extrinsic “worth” by the name attached.

          This is not to say that a name attached cannot inform of possible bias in the article, nor excuse a critical view of underlying tones in the article – those are fair imports that can be made. The difference is the wholesale reject-at-sight-unseen blanket action that you seem to be advocating.

  8. IN RE PATEL
    link to cafc.uscourts.gov

    PTAB reversed – no prima facie case.

    Claim to a composition. Range of one compound 26-89. Prior art. 9/5 to 25.

    PTAB said, obvious.

    Feds. no prima facie case because the reference did not suggest that a broader range would be effective.

      1. “Appellants allege that because the prior art reference “recites a range which does not overlap, nor abuts with the claimed range,”

        Doesn’t it? Wouldn’t a skilled reader read with significant digits in mind? A claim to 25% would normally seem to read on 25%+/- 0.5% unless otherwise specified. As such the one claim is up to 25.5% and the other is down to 25.5%.

        Given this, how could a difference of less than .01% not be considered obvious to one skilled in the art when the prior art teaches that a range from .05 to 25% works and there is no evidence it teaches away from over 25%.

  9. I think we should be careful with all this blasé use of the term mongrel, especially “studying the mongrel,” or “taming the mongrel;” it has arguably derogatory connotations.

    1. Yeah we should be careful about blasé use of any derogatory terms.

      Royal Nine.

      Troll.

      Anyone care to add to the list?

      1. Sorry Ned, but Some derogatory terms fit.

        Like Royal Nine – even you clearly agree that they should stick to/get back to the statutes, right?

        1. Absolutely, anon, on what they should do. But the institution itself should not be so heavily criticized. I was astounded to here this my entire time in the leadership of patent bar as almost a consensus view. But such a view puts the whole patent bar into a position lacking any credibility with the Supreme Court and to the courts in general.

          Do I need to explain why?

          1. Absolutely, anon, on what they should do. But the institution itself should not be so heavily criticized. I was astounded to here this my entire time in the leadership of patent bar as almost a consensus view. But such a view puts the whole patent bar into a position lacking any credibility with the Supreme Court and to the courts in gen eral.

            Do I need to explain why?

              1. anon, I agree that I, as well as some others, have been critical of the Federal Circuit as too friendly to the patent bar, and at least some of its judges seem to have seen the Supreme Court the same way as does the patent bar, but I don’t use blasé epithets to describe them.

                I am surprised you did not add tea baggers to the list though.

          1. Hiding behind politeness (crybaby veto anyone?) while trampling the Rule of Law is far more despicable than nak ed aggression.

            “Beware over-politeness as that is often the way of the coward and the deceiver.”

            1. I agree anon. The politeness becomes part of the machine. Chomsky.

              Probably the reverse should be true. The Royal Jelly 9 should probably have to face us. The reality is that many of their decisions and beliefs would not stand the light of day.

              I think we saw this recently when a crybaby professor got on here and said we were too mean to the great and powerful Lemley. And, then the professor refused to address substantive issues which is the same thing the great and powerful Lemley does.

              1. then the professor refused to address substantive issues

                I remember that well – I posited several points in utmost politeness even – and all he wanted to do was crab about the “meanies.”

                That being said, I think the good professor hurt more than helped his own case by his Hamlet-like protests.

                The lady doth protest too much, methinks.

              2. Wouldn’t it be great 6? But, think. What is the reverse of that? We are being asked to be polite? That is anti-American. There is a long tradition in this country for commentators to be free with their language in criticizing those in power.

              3. Only a red coated oppressor would suggest that we should be polite or a worm tongued professor defending a multi-million professor that won’t even tell us how he protects IP in his own companies.

                Note that Lemley is probably forcing employees to sign onerous non-compete and non-disclosure agreements that prevent the free movement of their employment. Get that this is where we are headed due to Lemley and his like.

              4. “Note that Lemley is probably forcing employees to sign onerous non-compete and non-disclosure agreements”

                Well if that goes on long enough then perhaps they’ll end up with all the shty employees and shortly go out of business. Then we won’t hear from them anymore :)

  10. I do not understand this study. I agree that 20-25% of reversal rate is a problem, but not because this rate is high, but because it is low. If the appellants are rational, and if claim construction is predictable, then the reversal rate should be 100%.
    The real question is what is going on in the 75-80% of cases when the construction is appealed but not reversed? Is the appellant irrational? Or is claim construction so unpredictable that 3/4 of appellants are just the randomly selected losers? Or is the Federal Circuit systematically getting it wrong?
    I don’t know the answers of theses questions, but theses answers would be more useful than a study that concludes that the district courts make an obvious mistakes in 20 cases per year on average (out of what, 2,000 cases filed per year) and that the Federal Circuit sees that a mistake was done and corrects it. After all, this is what the Federal Circuit is supposed to do.

    1. If you read the study linked in the last paragraph, you can see the key. Whether your district judge’s claim construction is considered valid does not depend much on the construction itself or on CAFC precedent. It depends primarily on the random selection of your three judge CAFC panel.

      If you’re hoping for Laurie and Newman but you get Moore and Prost, you’re out of luck. It wasn’t your fault and it doesn’t reflect bad judgement. It’s just that you rolled the dice and crapped out.

    2. If the appellants are rational, and if claim construction is predictable, then the reversal rate should be 100%.

      A rational appellant would throw a few million at an appeal of a $30M exposure, even with a 10% chance of reversal. Even that economic rationality can go out the window when corporate reputations or survival are on the line.

          1. He finally used “deference” instead of “difference”!!!!!!!! Will miracles never cease????!!!!!!!!!!

            He’s actually capable of learning!!!!!!!! Took him 6 or 7 years, but he learned one thing!!!!!!!!!

            YAAAAAAYYYYYYYY!!!!!!!!!!!!!!!!!

    3. You have several errant assumptions running amuck PiKa.

      First and foremost is the expectation of 100%.
      Second is the implied notion that district courts MUST ALWAYS be wrong
      Third is the implied notion that the CAFC MUST ALWAYS be right
      Fourth is the notion that an affirmance of a district court decision is somehow the sign of CAFC getting something wrong.
      Fifth is your attempt to apply statistics of patent cases to district court other cases.

      1. For the 100%, my first assumption is that the district court must always be wrong WHEN THE CASE IS APPEALED. If the district court is right (the construction is right), then the case (the construction) is not appealed. I agree that my second assumption is that the CAFC will always detect mistakes (wrong constructions).

        I may be wrong about the 2000 patent cases per year, but it is the number of patent cases filed every years that I have in mind. Has someone else a better number?

          1. anon

            I am just talking about how the reversal rate is defined, and what I think the “ideal” rate should be.

            My understanding of the paper is that the reversal rate is computed by taking as a reference the number of cases decided by the CAFC in a given year in which claim construction was appealed. The rate is the number of reversals that particular year divided by the reference number. Do you agree so far?

            If this number is high (100%), it means that appellants were always right to appeal, and I think it is a good sign.

            If this number is low (10%), it could mean that appellants are playing lottery, and I think it is sign of a dysfunctional system.

            The author seems to believe the opposite.

              1. Definitely. I didn’t even know that the statistics as applied in the legal contexts could be different from the statistics as applied in other contexts. But I still think you have not yet realized that the reversal rate estimated by the author is in fact a reversal rate of claim construction knowing that the cases are appealed for claim construction. It is not a reversal rate of claim construction by the district court judges.

    4. PiKa’s basic question — whether the 20-25% reversal rate is really too high — is a fair one, and one that is far beyond the scope of the article. In fact, the point of the article is to respond to those who (1) think that the reversal rate is too high, and (2) think that the solution is to defer more to district court claim constructions. Our reversals study, combined with existing literature, demonstrates that (1) district courts do a pretty good job at claim construction (75-80% affirmance rate, as reported by others), but that (2) they would probably do a better job if they weren’t systematically erring in a narrowing direction.

      I hasten to add that this does NOT mean that district courts should start deliberately erring in a broadening direction. In fact, as the article reports, the “right answer” (i.e. the Federal Circuit’s overall “go-narrow” rate) is to go narrow in 64% of cases. The problem is that district courts, in the aggregate, are “going narrow” significantly more often than that (in 74% of cases).

      I agree with IANAE, who points out that rational actors will appeal claim construction issues even if they know that odds are against success. This is all the more true when the appellant has decent arguments on other issues.

      Please note that our references to “overall” reversal rates are not based on our study; our study just focuses on what happens in the reversals (whether the claims are construed too narrowly or too broadly). The approximately 20% reversal rate comes from the Menell/Anderson study, and yes, it is based on cases that went to the CAFC on appeal, and therefore “excludes” cases where the appellant chose not to appeal the district court’s claim construction. In other words, it shouldn’t be seen as a “district court error rate,” since, as PiKa points out, there are doubtless times when the district court gets it right and no appeal is taken. That’s why it’s called “reversal rate” instead of “got it wrong rate.”

      1. Heather,

        As I pointed out in the initial posts, you have both Type I and Type II errors and your omissions of decisions in which the panel members are all of like mind will hide the true rates of what you seek to uncover.

        I do not think that you can draw the conclusions that you wish to draw from the methodology of your study.

        1. Thanks Anon, but you’ll have to be more specific than this. I thought I responded to your points last year; happy to resume the discussion here.

          Where are you seeing a Type I error (erroneous rejection of the null hypothesis)? Here, isn’t the null hypothesis that all Federal Circuit judges approach claim construction the same way, or, to make it specific for our “close cases” dataset, that the numbers of “go broads” and “go narrows” will be evenly distributed among the judges? Haven’t we disproved that? And for “reversals,” haven’t we shown that where district courts have been reversed, it’s disproportionately because they “went narrow”? Using our results, for any given “close case” (past or future), if you tell me the panel members, I will do much better than random chance at telling you which way the different judges voted. Likewise, for any given “reversal,” I can do much better than random chance at telling you whether the reversal was in a broadening or narrowing direction (hint — I will guess “broadening”).

          And where are you seeing a Type 2 error (erroneous acceptance of the null hypothesis)? We’re seeing positive (non-null) effects on both sides.

          You also seem to be implying that we are seeking to uncover some “true rates” that are different from those that we are reporting. We aren’t — we think what we are reporting is significant enough.

          Finally, what are you proposing when you point out that we’ve omitted “decisions in which the panel members are all of like mind”? Remember “close cases” is just the label we chose for our dataset — it’s the set of cases that feature a disagreement on a claim construction issue. Yes, we’ve excluded some cases that might be considered “close” by some other definition, but we get to define our terms. And, as shown above, our study has clear predictive value for both “close cases” and “reversals,” so it’s really hard to understand how you can say our methodology doesn’t support our conclusions. Our “conclusions” are little more than a restatement of the data produced by our methodology.

          1. I though my comment last year was that you exhibit a certain selection bias by only taking “conflicted” cases, and thus leave many cases out of your analysis that escape analysis even though the cases should be analyzed – the cases escaping merely because the particular panels are all of like mind.

          2. Close cases alone are not the only cases that speak to whether or not the case itself has judge-induced “construction”/philosophy issues.

  11. link to scholarship.law.cornell.edu

    This is a Link to a 20112 Cornell Paper by Liivak, Rescuing the Invention from the Cult of the Claim, which suggests how to do claim construction.

    I think it is interesting for its plea to get away from peripheral claiming. I hope to find in it some acknowledgement of Europe’s pioneering work in 1973, creating the EPC rules on claim construction (The Protocol on the Interpretation of Art 69 EPC) which reconciles the former German “central” claiming philosophy and the former English “peripheral” claiming philosophy.

    There is really no need here, to re-invent the wheel.

      1. Takes one to know one.

        But when Oscar asserts that “claims are written to satisfy the statutory requirement to particularly point out the …invention and should be interpreted accordingly” that makes good sense to me.

  12. The problem is not in how claim construction is done but rather that there is something called claim construction at all. My sense is that the concept of “construing claims” has been taken to an illogical extreme. I start from the premise that claims are supposed to serve as notice. If a potential infringer cannot divine what the claims do and do not cover without having a United States District Court and the Court of Appeals for the Federal Circuit going through claim construction as it is done now, then the claims fail in their essential purpose.

    It seems to me that claim construction and the doctrine of equivalents (as it was applied in the 1990s) are tools (or perhaps weapons) patent owners use to make up for poorly drafted claims and specifications.

    Consider that the patent owner had more than ample time and opportunity to draft, edit, revise, argue and prosecute their patent to a standard of quality. A patent owner can even go back for reissue and reexamination and, in some cases, do better with a continuation application. In contrast, an accused infringer typically has with a sword over its neck a very short time to analyze validity and infringement of a moving target because of claim construction.

    Claims should not be malleable once issued. A patent owner should be stuck with the result of its efforts and the plain words of the claim if not enough to put a potential infringer on notice, should be invalid for failing to meet the requirements of Section 112. Perhaps the Supreme Court is telegraphing a message in its recent Nautilus decision.

    1. anon, I tend to agree, because most claim construction disputes now involve a lot of testimony by experts who are testifying about what the claims mean, obviously trying change their scope. I would not mind if all we had were attorney argument, dictionary definitions, and the record.

  13. I observed this …. oh …. about 10 years ago after reviewing the Federal Circuit claim construction cases at the time: The Federal Circuit chooses what case law they want to apply (i.e., claims are to be interpreted in view of the specification or limitations from the specification are not to be incorporated into the claims) depending upon the result they wanted to achieve.

    This aside, claim construction is hard — because words are squishy. I’ve written that time and time again. Moreover, interpreting what a word really means is hardly the province of patent law. Depending upon your professor in law school, you probably ran across Frigaliment Importing Co. v. B.N.S. International Sales Corp in contract’s class. This is the famous case about what is meant by a “chicken.” One would think that the term “chicken” is pretty unambiguous. However, for those who read the case, there is a lot of wiggle room in that term.

    Regardless, there will always be a benefit for an infringer to assert that some language of the claim means something different than what the patent owner thinks it means. As such, the issue of claim construction will always be raised. Unless we can find a way of claiming inventions using something other than squishy words, this is a problem that cannot be solved.

      1. it affords a lot of dust-kicking
        What bothers me is that some people don’t realize that the problem of “dust-kicking” is always going to be present.

    1. Unless we can find a way of claiming inventions using something other than squishy words, this is a problem that cannot be solved.

      The only way to avoid “squishy words” is to stop using a peripheral claiming system, because the problem with words is that they are always going to be squishy. Sometimes squishy words are used on purpose, but sometimes they are just the nature of language.

      1. Substituting “peripheral” claiming significantly increases and moves the “squishyness” [claim scope ambiguities] to an unpredictable final determination by some judges somewhere years later, and dependent on what prior art is found and applied, and makes valid estimations of non-infringement and investment risks at any time before then even more difficult. The enhanced claim scope ambiguity would encourage more patent suits in the U.S., which only provides “loser pays” for a very few objectively unreasonable suits.

          1. Maybe he needs a glossary.

            and then a glossary for the words in the glossary.

            and then a glossary for the words in the glossary of the glossary.

            and then a glossary for the words in the glossary of the glossary of the glossary.

            and then a glossary for the words in the glossary of the glossary of the glossary of the glossary.

            (get the picture, 6?)

            Is that enough?

            Well, that depends on what the meaning of “is” is….

  14. For me, looking in from the outside, the root cause is the difficulty of dealing with validity. Validity is difficult. No question.

    The USA finesses out of it, by erecting the C+C presumption standard. DC: assume please that the asserted claim is valid.

    But this often leads to problems for the DC judge. Justice requires that the party asserting the covetous and unconvincing claim shall not win. But holding the claim to be not valid is ruled out. What’s left? Construe the claim narrowly. Justice done. Let the CAFC sort it out.

    When it is plain to all right-thinking patent professionals involved, that the correct result is that the claim, correctly construed, is not valid, other jurisdictions get to that result, easy. But then again, they lack the USA’s uniquely “strong” patent system, don’t they?

    1. You have a HUGE assumption in your post MaxDrei: that the claims are in fact NOT valid.

      How pray tell did you get to that assumption? By feeling?

      You err in understanding what the proper legal starting point IS for justice. We have (through the branch of the government so duly authorized by our constitution) DEFINED justice as the legal condition so set forth. Plain ans simple then, the district court judges who feel otherwise are in fact brandishing INjustice.

      Based on their feelings.

      You align your own ASSumption of “right-thinking” with the feeling that the law should be different.

      The idea of “Meh, decide how we want and let another court get the right decision under the law” is – and should be anathema to ANYONE who values and serves the Rule of Law.

      I “get” that certain people don’t like certain laws. No problem. But please, do not subvert the law based on your “liking.”

      Learn the Law. Live the Law. APPLY the Law. Love the Law.
      (change the law is OK – we have systems set up to do just that)

    2. That may be somewhat Max.

      And yeah idk why anon thinks you presume the claim invalid, you plainly stated your assumptions and invalidity was not one of them.

      1. Justice requires that the party asserting the covetous and unconvincing claim shall not win.

        Why?

        This be the unsupported assumption.

      2. the covetous and unconvincing claim

        according to whom – and why?

        Someone is basing a judgment on feelings and not according to the law.

        1. “according to whom – and why?”

          To the judge. And it is because he’s familiar with this whole “justice” thing. I know, I know, justice is a foreign concept to you as you reside in the “laws/rules are justice!!!1!!!!11!1!!!!” camp. Not everyone is so firmly entrenched. Even the justice dept doesn’t arrest every girlfriend snooping on her bf’s password protected gmail.

          1. A judge does not make up “justice” totally in the mind, subjectively and anything goes – guess what – it’s those pesky rules that you seem to disdain so that provides the structure of justice that we as a society have put together.

            Respect for the Rule of Law – get it.

            1. “A judge does not make up “justice” totally in the mind, subjectively and anything goes ”

              You say that, but the numbers indicate differently.

              “guess what – it’s those pesky rules that you seem to disdain so that provides the structure of justice that we as a society have put together.”

              Yeah that’s why Max just said the judges do an end run around them via claim construction so as to reach what they consider the just result. I’m glad you’re finally catching up.

              I know you have a lot of confidence in the court system anon, and you think they always do what is the “legal” thing. But it just doesn’t work that way. See: a whole prison full of minorities. If you need a more blatant indicator than that I just don’t know what will shake you out of your blind faith to the justice system.

              You live in some kind of bizzarro idealized world.

              “Respect for the Rule of Law – get it.”

              Tell the judges we’re talking about. Not me.

              1. You say that, but the numbers indicate differently.

                The same numbers showing such judges to be in error of law….

                So nice of you to yet again bring your own rope, 6.

              2. “The same numbers showing such judges to be in error of law….”

                And max’s hypothesis is that they’re doing this in order to achieve justice. I think it fits the data, what do you think?

      3. 6,

        The essence of “valid” is that they are just – and yet, MaxDrei implicitly states otherwise.

        All I am looking for is some sound basis for this implication; some support for the hypothesis that he has put forth.

        1. “The essence of “valid” is that they are just”

          An interesting take. You should write a law review paper about that, I would read it.

          “All I am looking for is some sound basis for this implication”

          Gl.

  15. Plaintiffs can choose their district court judge and often do pick a very small number to conduct 150+ cases per year (Gilstrap, Davis, Schneider from E.D. TX, obviously, but also Robinson, Sleet, Andrews, Stark from DE) while median judges handle about two. The patent plaintiffs must have some reason to hope that claim constructions will be partial toward patentees in the courtrooms of those judges.

    So maybe it’s better, even knowing that the CAFC can hardly be unbiased on patent issues itself, to keep de novo construction at the appellate level. At least CAFC judges are subject to some kind of public pressure to keep things objective.

  16. The bottom line: more deference will cause more errors.

    The problem is not the Federal Circuit giving no deference to findings of fact, but the District Court not following the law.

    The one exception is TEVA, which also involves a finding by the Feds that the claims were indefinite over a contrary ruling by the District Court.

    Note: a decision that claims are indefinite does not necessarily fall under Markman, and findings of fact by a court are required to be given deference under Rule 52(a)(6).

    “(a)(1) In an action tried on the facts without a jury or with an advisory jury, the court must find the facts specially and state its conclusions of law separately….”

    “(a)(6) Setting Aside the Findings. Findings of fact, whether based on oral or other evidence, must not be set aside unless clearly erroneous, and the reviewing court must give due regard to the trial court’s opportunity to judge the witnesses’ credibility.”

    This is what the Government brief to the Supreme Court argued as well.

    1. But, then how can they invalidate patents under the 101 psychotic rule where there is no deference to facts, no acknowledgement of statutes, and a presumption that the judge is an expert in the technical area?

      1. Night, good question.

        The SC must start following the statute, and link any so-called exception to a specific statutory provision because what they are doing, waving their hands generally in the direction of 101, is hardly sufficient.

        On abstract, Morse saw the problem with claim 8 as an undo breadth. Thus the statutory provision for abstractness is not 101, but 112.

        I think, though, what the Supreme Court has been doing since Benson with math and with business methods is to substitute the term “abstract idea” for non statutory, because when a claim is fully limited to a machine implementation, it is hardly abstract at all in the sense that it is no longer a disembodied idea. But non statutory, yes, as neither math nor a business method constitutes a machine, composition or manufacture, and from Morse, the most general definition of Art (process) involved the making or use of one of these three classes to produce a new or improved machine, manufacture or composition (result.)

        The cases from Hotel Security (business method) to In re Russell (printed matter) all found the novel portion of the claims to be non statutory and the novel portions old. But all will recognize that this is the same analysis as employed in Prometheus and Alice with the novel portions of the claim being ineligible and the eligible portions being old.

        It would be nice if the Supreme Court would simply adopt the reasoning of the Hotel Security line of cases, and drop it misuse of the abstract idea analysis, because Abstractness is not a 101 problem, again, per Morse.

      2. Night, good question.

        The SC must start following the statute, and link any so-called exception to a specific statutory provision because what they are doing, waving their hands gen erally in the direction of 101, is hardly sufficient.

        On abstract, Morse saw the problem with claim 8 as an undo breadth. Thus the statutory provision for abstractness is not 101, but 112.

        I think, though, what the Supreme Court has been doing since Benson with math and with business methods is to substitute the term “abstract idea” for non statutory, because when a claim is fully limited to a machine implementation, it is hardly abstract at all in the sense that it is no longer a disembodied idea. But non statutory, yes, as neither math nor a business method constitutes a machine, composition or manufacture, and from Morse, the most gen eral definition of Art (process) involved the making or use of one of these three classes to produce a new or improved machine, manufacture or composition (result.)

        The cases from Hotel Security (business method) to In re Russell (printed matter) all found the novel portion of the claims to be non statutory and the novel portions old. But all will recognize that this is the same analysis as employed in Prometheus and Alice with the novel portions of the claim being ineligible and the eligible portions being old.

        It would be nice if the Supreme Court would simply adopt the reasoning of the Hotel Security line of cases, and drop it misuse of the abstract idea analysis, because Abstractness is not a 101 problem, again, per Morse.

        1. “On abstract, Morse saw the problem with claim 8 as an undo breadth. Thus the statutory provision for abstractness is not 101, but 112.”

          Correct.

          1. I agree that part is correct. You go off the deep end, Ned, when you start citing to cases before the rise of information processing and the modern understanding of the human brain. I do wish Ned that you would modernize yourself to post 1930.

            Information processing is (should be) statutory. For reasons that I have stated many times on this board.

          2. “On abstract, Morse saw the problem with claim 8 as an undo breadth. Thus the statutory provision for abstractness is not 101, but 112.”

            I certainly view Morse as being on more sound footing in 112, but I wouldn’t say that it doesn’t fit in 101 either. Morse clearly viewed himself as having mastered the functionality, and the claim was directed to the function, regardless of how expressed in machinery. It’s easy to say that’s overbroad and call it a day, but I see no reason why a claim to a function (“printing at a distance”) absent its expression in a particular structure would fall into a statutory category. The claim is neither a claim to a machine, nor a claim to an improvement on a machine. In this sense I view it as a straight 101 issue.

            I can also tell you that there are certainly software disclosures that amount to no more than regurgitated brainstorming, and truly are claims toward “abstract ideas.”

            That being said, if one properly applied 112, 1st, I can’t think of any situation that would fail 101 while passing 112, and in that sense the whole line of reasoning is somewhat pointless. I also think the court should stop dancing around 101 and (possibly) 112, 2nd to try and cabin in functional language when it’s clear that WD/enablement, when properly applied, do it so well.

        2. Ned: “the Supreme Court has been doing since Benson with math and with business methods is to substitute the term “abstract idea

          Ned, come man, we have talked about this and we both know that such is NOT what the Court is doing. We both know that the Court is simply ignoring the statutory category requirement altogether in its “Gist/Abstract” swordplay.

          At least be honest with yourself on this – your fealty to the Royal Nine alone will not suffice to make a silk purse from that sow’s ear.

        3. I think, though, what the Supreme Court has been doing since Benson with math and with business methods is to substitute the term “abstract idea” for non statutory, because when a claim is fully limited to a machine implementation, it is hardly abstract at all in the sense that it is no longer a disembodied idea.
          Except at least one of the claims in Benson was limited to a machine implementation — not that they realized it at the time.

          Read Benson, and it is also about breadth (i.e., 112). However, they confused broad scope with being abstract.

          1. I think that you assume that they were confused.

            I think, rather, they CHOSE to pin their letters on 101 (actively seeking to blunt the changes that Congress enacted with the 1952 Act).

            There is nothing like an addiction – and the addiction to power to define “invention” at the front gate (as opposed to merely an appendage like 103 or 112) is far too alluring to an unaccountable Royal Nine. See Prometheus for the dead letter comment.

          2. Well, one of the claims had a “reentrant shift register”. I originally thought that claim was directed to a machine embodiment, but now I’m not so sure, and I don’t think the court treated the claim as being directed to a machine. It’s impossible to tell, though, as the case is poorly worded. Take the following for example:
            ——-
            The patent sought is on a method of programming a general purpose digital computer to convert signals from binary coded decimal form into pure binary form. A procedure for solving a given type of mathematical problem is known as an “algorithm.” The procedures set forth in the present claims are of that kind; that is to say, they are a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another. From the generic formulation, programs may be developed as specific applications.
            —–
            So, is the Court saying that the patent is directed to programming a general purpose computer, but the claims are directed to the generalized formula?

            The Court in Benson seems to vacillate between whether the claims are directed to a machine or whether they’re directed to a mathematical process that might be performed on a machine (or in your head). If they said the claims were too broad, as they are not limited to a machine, I could understand this. But they use language that also implies claims solely directed to a machine also would not be patentable under 101, and I find this part hard to understand.

            Regardless, Benson has to be one of the worst SC cases ever written. Take this sentence for instance:
            —–
            The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
            —-
            Perhaps its the 40+ years that’s elapsed since Benson, but this sentence makes no sense today. Encryption and modulation are two items that really have no practical application except in connection with a digital computer. Does that means patents directed to these two fields are not possible?

            1. Patent Bob, the Benson court got the result right, but for the reasons that are at least unclear.

              The holding: mathematical algorithms are not patentable as processes, and their limitation to generic computers is not enough.

              But Flook did clarify that this was the holding. They also clarified that “preemption” was not the problem. This clarification seems to have been lost in Bilski, but is now restored in Prometheus and Alice.

            2. Patent Bob, the Benson court got the result right, but for the reasons that are at least unclear.

              The holding: mathematical algorithms are not patentable as processes, and their limitation to gen eric computers is not enough.

              But Flook did clarify that this was the holding. They also clarified that “preemption” was not the problem. This clarification seems to have been lost in Bilski, but is now restored in Prometheus and Alice.

              1. The parallel between “result right and unclear reasons” and
                The ends justify the means is a bit too scary for anywhere that appreciates the Rule of Law.

                (btw, “We do not so hold”)

      3. “But, then how can they invalidate patents under the 101 psychotic rule where there is no deference to facts, no acknowledgement of statutes, and a presumption that the judge is an expert in the technical area?”

        That are an issue of lawl last I heard.

        1. What does actually understanding the technology or the context of the claim have to do with anything, Alun? Clearly “justice” is already in the mind of the judge without such distractions.

          / off sardonic bemusement

    2. “but the District Court not following the law.”

      I think you mean “the rules put in place by the federal circuit for construing claims” by “law”. The statutes usually get followed ok.

      “The bottom line: more deference will cause more errors.”

      I might even agree with that, technically speaking. But the errors will be less noticed, given less review, and people will have their cases decided better. So all’s “well” or at least “better than it otherwise is where you have to go to the fed. circ. for closure”.

      1. B-b-b-but errors – (gasp) you must be OCPD.

        Quick – let’s “redefine” errors not to be errors and the mantra looks fine still.

        / eye roll

        1. “B-b-b-but errors – (gasp) you must be OCPD.”

          Anon discussing a court’s error rate is not telling someone (or someones) one on one that they’re wrong, all the time, at least a few times a week. I know you have difficulty distinguishing, but yeah, you can do better brosef.

            1. The distinction is in the amount of interpersonal strife the two create.

              I can talk about the court’s error rate all day and no interpersonal strife will ever be created between me and any of the judges on that court.

              Contrast to:

              You can talk about how wrong someone is simply 1-5 times in a day and interpersonal strife will nearly always be created between you and the person you’re talking to.

              It really is not a hard distinction to see. The gulf between the two is as wide as the grand canyon.

              1. amount of interpersonal strife the two create.

                LOL – translation: “Wah, I want to be able to post anything I want to post without anyone pointing out that what I post is absolute horse$h1t”

                6 – grow some.

              2. Also note that you are not having a conversation with any judge on any court – thus, your attempted distinction fails for being different in kind.

                Now, on the other hand, were you to be having a conversation with a judge, and pulled any of the CRP that routinely gets pulled by the anti-patent crowd, you sure-as-$h1t would find out right quick just how much interpersonal strife you be causing.

                Do that in a courtroom, and you would be sanctioned. Repeat that CRP as often as you do, and you would be out of a job.

                But that is actually the point that I have long made with Malcolm and his “winning” (read that as losing) position on posting without intellectual honesty because this is merely a blog (setting aside his – as he claims to be an attorney – own volunteered restrictions against acting against the ABA model rules of professional responsibility by advocating – even outside courtroom – in violation of section 8.4(c).

              3. Good god you’re hopeless. Absolutely hopeless. I don’t see how the professionals do this. The articles say it is usually the case that it takes the sufferer to have hit rock bottom and to have the condition to be causing him actual irl problems before he’ll get help and consent to being treated (hopefully without them constantly fighting back).

                In any event, I’m not going to sit around and risk JADEing about what I did previously in the thread here with you tonight anon.

                But here instead of JADEing I’m going to leave this for you to digest. Note that discussing judicial error rates is not even close to owning truth. At all.

                Owning Truth
                We all periodically have such confidence in what we are saying that statements such as “I’m sure of it” or “The fact of the matter is…” play a natural part of our everyday vocabulary. For persons with OCPD, facts and confidence are all too often turned into “I’m RIGHT and your WRONG.” “The way I see it represents the way it is, end of story” (editorial note: does that sht remind you of anyone anon? ). For others (other than the OCPDer), refusing to yield (editor: genuflect) to the “correct perspective” often entails encountering tension and discord (editor: oh look, tension and discord are often encountered as a result of doing this who’da thunk?). This manifestation of OCPD entails one’s adamantly guarding his dogmatic beliefs to such a degree that casual conversation often converts minor disagreements into heated debates (editor: we’ve done that a bazillion times thanks to your “i’m right ur wrong”). The relative importance of any topic (i.e. comparing the effects of regular gas vs. high test on a particular car’s performance) rarely is of consequence in determining the degree of the intensity expressed in the midst of the debate. (editor: you often fight hardest on some throw away point, often when I couldn’t care less)

                Perhaps there are a few variables on this planet, which are beyond debate in their apparent universal truthfulness. “Humans are a living organism when there is a heart beat and/or brain activity” or “Rocks eventually tend to drop in a downward direction when released into the air.” For the person who experiences OCPD, abstract ideals and moral standards become rigidly held truths (editor: sound familiar at all anon????). An example belief would be that “The Mormon’s practice of marrying more than one woman is illegal and absolutely wrong.” The ideology that all-religious practices are subject to interpretation and not a matter of right or wrong is often overlooked and rarely considered. It is not unheard of for someone with OCPD to feel that he is flexible due to an occasional shift in his beliefs. If one listens carefully, the shift in position can be dramatic and equally dramatic is the degree to which the new truth is held as fact. The knowledge that abortion is “murder” can be converted to the fact that the freedom to chose represents every woman’s “God Given” right to make decisions about her own body. Most examples of this particular cognitive shift would tend to go in the opposite direction.

                It would not be unusual for an OCPD sufferer to literally take delight in being wronged (editor: sound familiar?????), since it affords them, what they perceive, as the justified opportunity to deliver a steep punishment. The term “righteous indignation” (editor: who was it just the other day characterizing themselves as righteous????) was probably conceived with this perspective in mind. Crossing a person with OCPD provides her the license to hold a grudge and forever hold your mistake over your head. (editor: I’m sure we’ll hear about some minor slight from 4 years ago in the next few years won’t we anon, you’ve got em all cataloged)

                In a conflict with someone who has OCPD, the non-OCPD person might be motivated to desperately seek closure (editor: as we almost constantly do with you anon). In the process of attempting conflict resolution, the non-OCPD might discover that every minute the quagmire becomes deeper and deeper (editor: yep, see this thread and a million more just like it). It is almost as if the mere effort to find resolution is a punishable offense (editor: but you’re running away!!!11!!!!1!!). In a close relationship, encountering this zone of contempt is bewildering and frightening. All one wants to do is to bring this controversy to an end, and then, you are punished for not being willing to deal with the issue at hand. Within this zone, the person with OCPD feels a great need to bring about absolute clarity for the issue to be resolved (editor: iirc that was the whole point you advertised as being why you post in the first place). Once again this need for the perfect resolution creates a seemingly never ending tweaking of the issues (editor: to put it mildly). Agreeing to disagree is rarely a reasonable solution and often not in the scope of the OCPD’s world (editor: i literally cannot recall the last time you willingly did that when asked to without kicking and screaming).

                Notice how casually mentioning “judicial error” is nowhere close to this anon.

                “position on posting without intellectual honesty because this is merely a blog ”

                Hey look, anon tosses in an aside about how we can’t have casual convo here and instead we need to convert casual conversation into posting with “intellectual hur hur” so that a major disagreement inevitably arises. Who’da thunk? Oh wait, the psychologist that wrote the above article thunk it.

              4. “LOL – translation: “Wah, I want to be able to post anything I want to post without anyone pointing out that what I post is absolute horse$h1t””

                I see the ol’ lack of empathy super power of yours is flaring up. :/

              5. 6,

                You obviously don’t know and don’t care that you don’t know that your vap1d med-line control shenanigans ar a complete fail.

                There is no “owning truth” when objective law is being discussed – and yes, in a discussion of objective law, those in error can have their error pointed out as such – no matter how much you would want otherwise. It’s downright hypocritical of you to want to be able to openly tell others they are wrong and not be open to be told yourself.

                You should take your long rants to your doctor and show him the examples of your projections run amuck.

              6. I see the ol’ lack of empathy

                I see the lack of understanding superpower of yours kicking in as you fail to see that I do care and that caring means that I am willing to not be controlled by your games and repeatedly show you your attempts at controlling others does not work.

                Would you rather have a pat on the head, a nice popsicle and a puppy? You are in the wrong forum.

              7. “There is no “owning truth” when objective law is being discussed”

                I’m going to repeat this for you very slowly so that your kindergarten brain can absorb it:

                “For the person who experiences OCPD, abstract ideals (editor: about the lawl or anything else) and moral standards become rigidly held truths (editor: aka “objective x”)”

                But in any event, at least its good to see you thinking about such things. Even if you’re still all “omg!!!11!1!!11! that’s totally not it even if I’ve said that my “objective views on the law” are the “truth” many many times!111!!1!!!!1″. Eventually you’ll probably accept it, but you’ll still probably not want treatment because how you’re doing things is working for you. Right now that is. Probably won’t forever. But it is for now. Gl with that. When it causes your life to crumble down then you’ll have a pretty good chance of wanting treatment. Can’t happen soon enough amirite?

              8. Your repeating it again and again or slowly or quickly won’t change the reality that you are merely trying a gambit of control and that gambit fails.

                btw – the moral standards apply to attorneys upon their voluntarily swearing to such. You keep on missing this point in my reference to Malcolm. It is not high that made Malcolm swear to this oath – He (supposedly) swore to the oath.

              9. post in a manner that doesn’t cause rampant interpersonal conflict.

                LOL – if you mean that you want to post WHATEVER CRP without a critical evaluation, than, you will be verily disappointed.

                Grow some.

              10. “LOL – if you mean that you want to post WHATEVER CRP without a critical evaluation, than, you will be verily disappointed.”

                link to jfponline.com (note this isn’t the only one)

                “Early in treatment, it becomes apparent that the patient has an endless attention to detail, >>>critical analysis of his own behavior and that of others<<<, plus a need to be in almost absolute control of his environment."

                Took me a little while to pick up on just what it was that you were insisting on doing and how that might be important. And yes. You're absolutely right! You do have an endless attention to critical analysis of others behavior (here posting).

                And you're also right, I will be verily disappointed. Your OCPD will make sure that I and others get some good healthy doses, even over-healthy doses, of critical analysis. At least until you get some treatment that is. That nice London man might be in your area.

                "Thus, the client with OCPD attempts to travel the one -dimensional path of doing what is right … overdeveloped strategies include inflexible rules, constant critical evaluation …"

                Constant critical evaluation. Anon, the master thereof.

              11. zzzzzzzzzzzzzzzzz

                6, your stale attempts to kick dust over any critical review of your posts (while wanting to be able to “probe” the “hypothesis” of anyone else’s posts) shows your duplicity.

                This has been previously noted under the phrase: remove the log from your own eye before you attempt to remove the mote from mine.

                It is evident that what you seek is a fully non-critical forum in which you can post WHATEVER, but still want to be critical of anyone posting anything that is even remotely pro-patent.

                You f001 no one.

                At all.

                Your mantra is downright boring and beyond stale. Here’s an idea: focus on the substantive points and leave out your “desire” to be able to post without having your fee-fees hurt because someone may be “picking on you.” Take the opportunity to LISTEN to what those picking on you have to say and LEARN from it, and if possible, use that to make your position stronger.

                OK pumpkin?

              12. “It is evident that what you seek is a fully non-critical forum”

                Not in the least, we simply want you to keep the dial turned down to a 5 or so like we do instead of constantly keeping it on 11, forever and always.

                6 and everyone says: anon you’re overdoing it!

                anon: but but but it’s plain to see what you want is for me to never critically analyze what you say!

                6 et al: no just take it easy bro ffs

                anon: but I can’t! I don’t know how and I wouldn’t even if I did! It’s either dial up the being critical to 11 or nothing! Right or wrong also btw!

                ______________

                “Here’s an idea: focus on the substantive points and leave out your “desire” to be able to post without having your fee-fees hurt because someone may be “picking on you.” ”

                I do belieb that you were the one to bring this up in this thread telling me that I was supposedly OCPD for discussing judicial errors (lol). Now you’re telling me to focus on the substantive points? Rich.

                And to be clear, I don’t want to outright dismiss the potential utility of your being overly critical. Indeed, your constant tar ded backing of ta rded positions has made my various positions infinitely stronger over the years. And for that I may well owe your dysfunctional personality disorder a debt in a manner of speaking. In fact, the entire nation may, depending on just how many influential people really do lurk around here. Just think, your being overly critical may have helped, in some small way, for preemption to come into being! Or for the recent “reasonably clear” standard for 112.

                That however does not mean that I am not concerned about your dysfunctional personality disorder for you on a personal level or that I am more likely to appreciate such behavior from you in the future.

                I am curious though anon, do you not find it at all strange that the very words you yourself use to describe what you’re doing pop up constantly in the OCPD literature to describe people with OCPD? I mean, does that not strike you as a mighty strange coincidence?

              13. Overdoing it?

                Not at all.

                Are people still trying to pass off CRP that does not survive any critical analysis?

                THOSE are the people over doing it.

                (you are aiming at the wrong people 6)

              14. “(you are aiming at the wrong people 6)”

                Anon, I’m “aiming” at the person doing the critical analyzing to the 11th degree. That person is you.

                ” you still need to address the log in your own eye first.”

                So then my needing to address the “log” in my own eye excuses your OCPDing out on everyone on the board? That just seems odd to me, just as a way of thinking.

              15. You see there is your problem 6 – there is nothing wrong with analyzing to the 11th degree. That’s a feature, not a bug.

                You should be aiming at those who do not analyze at all.

                There be the dross that needs to be expunged from the thread to ensure meaningful discourse.

                And speaking of dross – your “way of thinking” is one item that desperately needs afixing.

              16. “You see there is your problem 6 – there is nothing wrong with analyzing to the 11th degree. That’s a feature, not a bug.

                Wow. It’s almost unbelievable to hear a human being say that. I guess OCPDers really are exactly how the literature says they are. In any event, be sure to tell your therapist that you end up running to when your life finally crumbles like the good Dentist’s in the article above. That is, if you’ve even managed to make one while thinking like that.

                “You should be aiming at those who do not analyze at all.”

                I see, I’m “obliged” (via “should”) to “aim” at the people that just want to have a casual convo. Yes. Totally. I’m totally obliged to “aim” at these everyday people.

                Or. not.

                Good day to you anon. This has been a rather productive session if I do say so myself. The rest of us finding out that you’re proud of being OCPD and that you see its ramifications as features is something worth having discovered. At the least it will better assist myself and others in responding to you or deciding to respond to you. And also in helping us to interpret what you’re saying/doing when you say seemingly bizarre things. In fact, I daresay that such information may be helpful for yourself as well.

              17. If you were to completely ignore the context of the discusions here, you would – even then – have zero relevance in your hypothetical “conversations”

                De-spinning your CRP, your aim to be able to have zero culpability and get up on your soapbox and say whatever is flatly out of place.

                Join this reality 6.

  17. “(1) that Federal Circuit judges remain divided on how to approach the task of claim construction, and (2) that when district courts are reversed, it’s almost always because they have misapplied settled claim construction principles.”

    Both 1 and 2 are almost exclusively because of us making claims be nothing more than a person’s subjective view of what their invention is. That is the root cause of the “mongrel” problem. The person’s subjective opinion can at times involve facts that they’re aware of and they can at times not and simply be made up words off the top of their heads. And that root cause will never go away no matter how many “principles” of claim construction you tack on, no matter how well they’re followed, and no matter how many different people come and go on the circuit.

    “As pointed out last year, if the goal is to make claim construction more predictable, a good place to start would be to ensure that all the Federal Circuit judges are following the same rules of claim construction. ”

    An interesting goal. I’d think that the goal should be somewhat loftier but I suppose that goal could do us for now.

    “This data clearly shows that they are not.”

    I think they just see the rules in slightly different ways. Same rules. Different takes on the same rules. One might even be forgiven for suggesting that, gasp, they have subjectively different takes on the same rules.

    ” Last year’s post and article posited that some judges are expressly or implicitly following an “actually invented” standard that other judges reject. ”

    Yep. Some people see that as inherent in our system because they believe that there is an actual invention at issue in every case. Those kinds of people still believe in the patent system as a substantive way to promote the useful arts. There are others that poo poo this sort of take that think the whole thing has devolved into a mere lawyers game of writing stuff on paper. The former will likely win out in the end vs. the opposing faction as the law tends to correct itself over time.

    “Whatever the explanation, until these differences are ironed out, tinkering with other issues – like deference to district courts – is unlikely to be productive.”

    Indeed.

    “As it turns out, the reversals data suggests that the high reversal rate is caused by district court error, not Federal Circuit arbitrariness.”

    Riiiiiight. It’s all the fault of those dastardly district courts that just can’t get it right! Never mind that the “rules” put in place may be overly complicated nonsense from some blow hards that think they’re the shizzle.

    “If that’s the case, why in the world are people advocating more deference to district courts?”

    Because there is practically no chance to get the federal circuit to lay off their rules and people don’t like what results from the implementation of those rules in practice? Perhaps they’d prefer a little more “district court say so” and a little less “Federal circuit rules o claim construction hur”. And maybe that’s because they came to the district court to resolve their matter in the first place. I’m just throwing that out there since it seems super complicated for you.

    “In other words, in cases where district courts are “getting it wrong,” according to the Federal Circuit, they are systematically interpreting the claims too narrowly. ”

    Yeah they probably haven’t been corrupted so much by the federal circuit’s influence even after all these years. Maybe they, like oh I don’t know, everyone in the world would normally, apply the ol’ “actually invented” standard that other judges reject. Maybe they’ve been trying, despite the federal circuits efforts the contrary, to hold the patent system together.

    “Last year’s post and article also challenged any advocate of deference to provide one or more examples from the “reversals” cases that (1) would have come out differently under a deference regime, and (2) should have come out differently.”

    How are we supposed to say that it “should” (is obliged to) have turned out otherwise after the federal circuit had its say? They’re the one with the power to say what it “should” be. You’re asking people to naysay the very people that determine the “should”. An exercise in futility.

    1. And that root cause will never go away

      Asking (for a second time) – what is your suggestion for an improvement?

    2. What has always bothered me about Federal Circuit claim construction ruling in gen eral is insufficient attention to the specification and claims as filed as to what the inventor thought the invention was. Of course, the claims might be narrowed by limitation being added later, and they must be given weight. But the broader concept of the invention should also be given weight.

      How many times have we seen the claims as filed discussed? How many? None. Nada. But as we all know, that is where the inventor and his patent attorney tell us what they thought the invention was when they filed the application.

      1. “How many times have we seen the claims as filed discussed? How many? None. Nada. But as we all know, that is where the inventor and his patent attorney tell us what they thought the invention was when they filed the application.”

        Interesting to hear you say that Ned. You’re probably the first attorney I know to have owned up to that.

      2. How many times have we seen the claims as filed discussed? How many? None. Nada. But as we all know, that is where the inventor and his patent attorney tell us what they thought the invention was when they filed the application.
        As I wrote not too long ago, the inventor and his patent attorney has imperfect knowledge of the prior art at the time of filing. As such, the original claims (and the specification itself) are a best guess as to what the invention is. A good patent attorney will attempt to flesh out as much as the invention (up and down the ladder of abstraction) as possible. However, we cannot do it all (unless the client has an unlimited budget — very few do) so we have to focus on some parts over others. If we guess correctly, great. If not, we have to hope that we put in one of those throw away sentences (as 6 likes to put them) in the specification to rely upon.

        Anyway, to address your point directly — original claims aren’t discussed much because they don’t matter.

        1. To Ned’s point (and this may be a bit subtle for the usual crowd), original claims MAY matter.

          Original claims are indeed a part of the specification. Specification changes are allowed during prosecution. Removing material from the specification (including original claims) may be fully permissible.

          But here’s the rub: removing material from the specification (including original claims) may ALSO be impermissible.

          Think for a moment, a change excising something may in fact be equivalent to adding matter. Matter may not be added after the filing date (yes, Ned, currently added matter is treated as an objection, but nonetheless, we do not allow added matter – either in the amended claims or in the rest of the specification.

          1. anon, original claims can be very important to rebut an assertion by an infringer that so and so feature has to be read into the claims as allowed because the feature was described to be “the invention” or “essential” or “important” in the written description.

            If the claims as filed do not limit themselves to this so-called essential feature, then that is a clear indication that there was no clear disclaimer! The claims as-filed rebut the narrowing interpretation.

            Many times a written description ends with a statement to the effect that the description should not be taken as a limitation on the scope of the appended claims. These words should have effect.

            The claims as filed are part of the specification as filed and what they say about what the inventor thought his invention to be should stand as a rebuttal against a narrowing interpretation based on so-called disclaimers from the written description.

        2. “a best guess as to what the invention is.”

          Well if the bar and the courts would start treating it as such, pre- and post-issue then we’d all be much better off. And for the record I’m in agreement re the “best guess as to” in so far as it simply means “subjectively thinks”.

          1. in so far as it simply means “subjectively thinks”

            How do you then propose to judge this “subjective” in the real objective world?

              1. judge…
                By whom?
                By what standard?

                No James, 6 does not get the point that “language” itself is part and parcel of the issue. He is trapped by his anti-patent belieb system and gloms onto any anti-patent tract regardless of actually understanding the issues.

              2. “By whom?
                By what standard?”

                An examiner or judge? Or a potential licensee? Or anyone?

                I’m not sure what you mean “by what standard”. We’re just looking for what the guy subjectively meant at the time he filed the claim. There is no “standard”.

              3. What’s the “standard” now? If we don’t have one now I see no reason why we need one if we do things my way. Imo the “need” for a standard you’re dreaming up is just an OCPDer’s dreams running wild. He needs order! Order he says! Order must be implemented on this inquiry into a purely subjective enunciation by the applicant! Order!!1!111!!!

                That said, of course there are “standards” in the form of the req’s of 112, if that’s what you mean. Though I don’t think that is what you mean. However, if so, the USSC just got done setting some of those “standards” as a matter of fact and the other “standards” under 112 are more or less fine as is.

                Look anon, that’s all I have to say about the need for “standards” if you want to continue to talk about it then fine, have your final say. I seek resolution of this topic and yet the quagmire is likely to just keep getting bigger if I don’t shut ya down. You’ll likely protest and seek to punish me for seeking resolution, maybe by jeering me for running away (see the article snippet I posted for you for a good description of this).

              4. Again 6 – you cannot judge without a standard.

                If you don’t think you have one now, you are simply wrong.

                I suggest you come back tot he conversation when you know what you are talking about.

              5. And it is not I that is “punishing you,” it is you that is punishing you. I am merely showing you that you don’t know what you are talking about. You are the one doing the talking when you don’t know what you are talking about.

                You are doing that evasion of personal responsibility thing again.

              6. First you tell me that you’re not punishing me (say by jeering me) and then…

                “You are doing that evasion of personal responsibility thing again.”

                Oh hey look! Some jeering!

                You can’t stop even if I predict it! It would be hilarious if it weren’t so sad.

              7. The sad thing 6 – is that your attempts to paint me with the p$ycho brush, paint a much more vivid portrait of you instead.

                Your belieb system just gets in the way of you seeing it.

            1. Anon I ha te to stand you up since you’re being polite today but I’m afraid I don’t really have time to rehash everything I’ve said over the last few weeks for the 3rd time right now. And put it all in the format of a response to your question. Perhaps later today, tomorrow or later.

              1. “sufficient reply”

                Sufficient?

                Sufficient for what? By whose standards? Come man, use some “plain language” or whatever because what you are currently using isn’t cutting it (and please note that my obstinate behavior in this instance is on purpose to reflect the real world fact that there will always be some party out there being obstinate to any “plain language” attempt at claim construction – thus the “plain language” advice is stillborn.

              2. “(and please note that my obstinate behavior in this instance is on purpose to reflect the real world fact that there will always be some party out there being obstinate to any “plain language” attempt at claim construction – thus the “plain language” advice is stillborn.”

                Anon, I appreciate that this is at least partially why your obstinate behavior is arising. You have important irl concerns that you’d like to address. Of course you could say the same thing without being obstinate, but you practically always choose not to. Huge surprise that is!

                Regardless of your obstinate behavior, what you mentioned is why we have DC judges to shut these sorts of folks down and we would empower them to do so under “plain language”. If the judges choose not to utilize that power, then perhaps we’d take even stronger measures to force them to in the future. And if the CAFC starts up another reversal carnival ride then we’d take stronger measures to reign them in. Under my framework, there is ample opportunity for cranking up the pressure on judges to shut these folks down as well as many ways of doing so. Whether we use them or not is at congress’s discretion.

              3. You miss the point of the example here 6 – try to read the post again slowly and see that the example in this instance is based on the reality that patentees face and that the “solution” you have mouthed, is just not a viable solution.

                Pay attention son.

    3. “Some people see that as inherent in our system because they believe that there is an actual invention at issue in every case. Those kinds of people still believe in the patent system as a substantive way to promote the useful arts. There are others that poo poo this sort of take that think the whole thing has devolved into a mere lawyers game of writing stuff on paper.”

      You want the yin without the yang. Can’t have it.

      How do we know what the “actual invention” is, without lawyers “writing stuff on paper” to claim it? It is a disagreeable reality of our profession that to date we have been unable to clone pluperfect lawyers who always write claims exactly as Examiner 6 thinks they should be written.

      This may come as a shock, but every patent prosecutor I have known, studied under, worked with, or eventually taught, tries their best to claim the “actual invention”. The only vehicle available for doing so is to “write stuff on paper.”

      1. “How do we know what the “actual invention” is,”

        If you built something try taking a picture. Or a video. A good number of my apps do. Or you can write it down/draw it yourself (sans lawlyer). And if you’re just dreaming (ahem “constructively reducing to practice”) well writing it down/drawing it sans a lawlyer will need to do you. Of course, you could bring the lawyer into the “inventing” session, and name him as an inventor (but nobody wants to do that says a few lawyers on here and the courts go along with the attorney not being listed).

        “It is a disagreeable reality of our profession that to date we have been unable to clone pluperfect lawyers who always write claims exactly as Examiner 6 thinks they should be written.”

        I want to be clear since I seem to have confused you, I don’t have a problem with how the vast majority of claims are written. To be clear, these major claim construction issues appear in a fraction of a fraction of cases. Just because we see them a lot in litigated cases doesn’t mean they’re present in the bulk of cases. They are not, at least not necessarily.

        The current “claim whatev ya feel lik or dreamd up and do so however you please” system works out ok for a huge majority of apps/patents after issuing since they are never seen or heard from again after issue. That much cannot be denied. And all those anonymous patents that we never hear from, or that never make it to the Fed. Circ., is precisely what keeps this boat afloat.

        I’m simply pointing out where this system’s failures are in respect to this particular issue (the federal circuit super broad claim construction reversal carnival ride) and how those failures come about or why they exist so to speak. They’re nothing more than intrinsic features of the system. The system which is in place to assuage the policy prescriptions we’ve adopted (things like no working model req’d etc). Some people (like the author) seem horribly perplexed by the whole thing when it really is not that difficult to comprehend. If you let some random as hole spew whatever he wants to out on a piece of paper, no matter his good intentions or bad, and give that effectively the force of law then this is what you end up with. Especially when you pile on a bunch of “rules” as to how to interpret what that random as hole said.

        “This may come as a shock, but every patent prosecutor I have known, studied under, worked with, or eventually taught, tries their best to claim the “actual invention”. The only vehicle available for doing so is to “write stuff on paper.””

        I doubt that very highly. In fact I’d say that all the prosecutors you know try their very best to claim something other than what the “actual invention” is so as to not have a picture claim that fully describes the “actual invention” on their hands. Instead, they want to make up a way of describing some mini-chunk of the “actual invention” such that the words they use are 1. valuable and 2. distinguish from the prior art etc. That is so that they can have something valuable. And I’d like to stress that I do not begrudge them that what so ever. But then they want people to regard that claim which they made up as the “actual invention”. And people have been going along with it. But there are ramifications to doing things this way. And the federal circuit reversal carnival ride is only one of them.

        I personally, along with some few others, think we should just call a spade a spade.

        1. Don’t tell me what prosecutors I know, and you do not, try to claim, Grasshopper. You are in WAY over your head.

          “If you built something try taking a picture. Or a video. A good number of my apps do. Or you can write it down/draw it yourself (sans lawlyer).”

          Yes, that is a brilliant solution, “brosefus”. We can all view videos and pictures, pointing like apes to features we find attractive, to dispositively resolve all doubt as to “what the invention is”. If need be we can then peruse inarticulate lay scribblings by engineers whose written composition skills typically are…let’s just say underdeveloped. Vast improvement over the current system that so gets under your skin.

          Gosh, with flashing insight like that you should apply to be bucked up to the Commissioner’s job. Vacant at present, you know.

          1. “Don’t tell me what prosecutors I know, and you do not, try to claim, Grasshopper. You are in WAY over your head.”

            Right. They totally draft picture claims all the time. Or not.

            “Yes, that is a brilliant solution, “brosefus”. We can all view videos and pictures, pointing like apes to features we find attractive, to dispositively resolve all doubt as to “what the invention is”.”

            That’s just one way. I gave a couple. And as to “features” you find attractive you can leave those to the claims. However, there will be ramifications on occasion to having the judge know in his mind that the actual invention is other than what you decided to claim.

              1. “Who said anything about picture claims?”

                I did. And I specifically said way above that they do not file such.

                “Do you realize how typically worthless picture claims are?”

                That’s why I said what I did.

              2. “…and it seems that is your “answer” here – to file worthless claims….”

                I just got done saying that was not my answer and yet you put right in my mouth. Read the original comment from whence you commenced this line of questioning. Nowhere will you find anything advocating such.

              1. Well you can feel free to say that, I surely don’t mind. In fact I can surely understand why you say it.

                Even so, this sort of thing will keep happening, on and on and on forever because the avg joe has in his mind the idea that there is an actual invention at issue in the case and that doesn’t necessarily have anything to do with what the applicant subjectively believes their invention to be. Thus the avg judge comes to the bench with that in his mind and becomes the avg judge. And it will not be easy to banish that notion through federal circuit say so or patent attorneys “educating” the avg judge for some few patent cases. As we can plainly see. In fact, they can’t even reach some of the CAFC judges.

                I think the reason for that is simple. The avg joe/congresscritter/judge all knows from the get go that is the actual law, no matter how many patent attorneys/cafc judges say otherwise. Note anon that is their subjective opinions and they’re having irl effects. And the reason they know that from the get go is simple. Because that is the whole fcking purpose of the patent system: to protect what the actual invention is, as opposed to whatever some person claimed. And not all the CAFC judges/anon on the interbuts/patent attorneys will ever change that in the mind of the avg joe/avg judge/avg person. The bizarro cult of the claim where the claim is the be all end all as to what the “actual invention is” simply has no hold on their minds and nobody has time to put them through a patent law course just for a trial in order to indoctrinate them fully into the cult. They think x, and no matter how much you rail against this on the interbuts their minds are not going to change on that subject.

                In any event, I’ve said all I can for now.

        2. My view is that to a competent partitioner the “invention” is not something sitting on a table. It is one or more inventive concepts that are behind the thing on the table doing what it does.

    4. A few responses to 6’s initial comment:

      “I think they just see the rules in slightly different ways. Same rules. Different takes on the same rules. One might even be forgiven for suggesting that, gasp, they have subjectively different takes on the same rules.”

      — This is semantics. Whether we say they follow different rules or “have subjectively different takes on the same rules,” the result is the same — panel dependency in close cases. If you have two judges in the “go-broad” camp, you’ll get a broad construction, and vice versa for the narrow camp. Panel dependency (and thus unpredictability) will remain until the judges all apply the same rules, or have the same “subjective[] takes.” Until then, we have to accept that (e.g.) that Judges Lourie and Newman will “go narrow” in close cases, and Judges Wallach and Linn will “go broad.”

      “Riiiiiight. It’s all the fault of those dastardly district courts that just can’t get it right! Never mind that the “rules” put in place may be overly complicated nonsense from some blow hards that think they’re the shizzle.”

      — You’re oversimplifying here. The problem is two-fold — (1) the Federal Circuit’s rules are not yet clear enough (as evidenced by the fact that the judges apply them differently), and (2) when district courts are reversed, it’s because they are misapplying the baseline, agreed-upon rules. The baseline rules are not that complicated; the problem is that district courts have a greater bias in favor of interpreting claims narrowly than the rules permit. If you have any specific examples from our “reversals” dataset in which you think the district court was improperly reversed on a claim construction issue, please share. We’ve looked, and can’t find any.

      “Perhaps they’d prefer a little more ‘district court say so’ and a little less ‘Federal circuit rules o claim construction hur’. And maybe that’s because they came to the district court to resolve their matter in the first place. I’m just throwing that out there since it seems super complicated for you.”

      — You’re oversimplifying again. People go to district court first because that’s where the law tells them to go. The system has a built-in right of appeal for either party, and usually at least one of the parties wants this (or else they’d agree to binding arbitration and save a lot of time, money, and trouble). No doubt some parties would like the district court to be the final review, but that’s just not the way it is. As our article shows, trying to achieve that result by giving more deference to district courts is just a recipe for more bad rulings (because presumably, some of the current “reversals” would have been affirmances).

      “Yeah they probably haven’t been corrupted so much by the federal circuit’s influence even after all these years. Maybe they, like oh I don’t know, everyone in the world would normally, apply the ol’ “actually invented” standard that other judges reject. Maybe they’ve been trying, despite the federal circuits efforts the contrary, to hold the patent system together.”

      — You’re imputing way too much intentionality to the district courts here. The district courts are just trying to do the best they can with the patent cases they have; they are not “trying to hold the patent system together.” In any event, district courts generally do a good job at claim construction — they get it “right” (according to the Federal Circuit) about 75-80% of the time, in cases where claim construction is appealed.

      “How are we supposed to say that it “should” (is obliged to) have turned out otherwise after the federal circuit had its say?”

      — All we’re asking is for you (or anyone advocating deference) to identify a case where the district court was reversed where it should, in fact, have been affirmed, and to tell us why. Given that the Federal Circuit has not definitively ruled on whether “actually invented” should be the standard, feel free to show us a case where the district court correctly applied that standard and was reversed. The point is, unless you can show us a case — or preferably, a set of cases — in which the Federal Circuit’s reversals were improper (under any permissible standard), you don’t have any empirical support whatsoever for your deference argument.

      — If you want deference just because you don’t like Federal Circuit review, then you’re basically expressing a preference for eliminating judicial review altogether for these issues. You’re entitled to have that preference, but it’s somewhat beside the point in the context of our article.

      1. Heather, granted you do not post (or read the comments) on a regular basis, but you make a primary error in your assumption of 6 being a rational actor or having a consistent rational understanding of the rule of law.

        His “character” here is to play the “anti-patent, applicants and their representatives are merely out to gouge the system, law(l) is totally subjective in the mind and anything goes, thus I can post whatever and nobody should have a critical view against what I post) role.

        The best one can hope for is to take what he says and use the opposite as a baseline for a reasonable starting point.

        1. We take our critics as we find them; anyone who provides a critique gets a response. So far, 6’s defense of deference to district courts is about as good as any we’ve seen. It would be great if some credentialed “true believer” would step up and try to explain why our reversals data doesn’t refute calls for deference to district courts, at least as a policy matter. But that hasn’t happened in the year since we first published the studies.

          1. I did grant that you may be “taking critics as you find them.”

            I was attempting to point out that some critics really are only concerned with their soapbox views, and you run the risk of capturing noise and mistaking it for signal.

      2. Glad to have you pop by Heather. I almost didn’t notice you since you came so late.

        ““I think they just see the rules in slightly different ways. Same rules. Different takes on the same rules. One might even be forgiven for suggesting that, gasp, they have subjectively different takes on the same rules.”

        – This is semantics. Whether we say they follow different rules or “have subjectively different takes on the same rules,” the result is the same — panel dependency in close cases. If you have two judges in the “go-broad” camp, you’ll get a broad construction, and vice versa for the narrow camp. Panel dependency (and thus unpredictability) will remain until the judges all apply the same rules, or have the same “subjective[] takes.” Until then, we have to accept that (e.g.) that Judges Lourie and Newman will “go narrow” in close cases, and Judges Wallach and Linn will “go broad.””

        I wish that it were mere semantics. Sure the “result” that pops out at the end of the case is panel dependent. No question about that. But then we must look at what remedies are available to treat that problem.

        It is here where the difference becomes apparent. The difference between the two views determines what can ultimately be done to remedy the situation. If the judges were following different rules then you can simply make the rules clear to everyone -without having to change the rules- and poof the problem goes away. If they have subjectively different takes on the same rules then you can’t simply make the rules clear to everyone, -without changing the rules-. You must instead change the minds of each individual regarding what those rules mean, -or make a change to the rules-. Since the later, changing the rules themselves, is undesired, you must do the former.

        There is a vast difference in the remedies available to treat the situation depending on which of the different views you adopt of the “problem”. So far as I’m aware people have been viewing the problem in your fashion for years, with barely any results being achieved despite repeated attempts of various judges to make the rules clear to all. There is a reason for that. Change your definition of the problem, then you will achieve results with your treatment because you will utilize the correct treatment.

      3. “– You’re oversimplifying here. The problem is two-fold — (1) the Federal Circuit’s rules are not yet clear enough (as evidenced by the fact that the judges apply them differently), and (2) when district courts are reversed, it’s because they are misapplying the baseline, agreed-upon rules. The baseline rules are not that complicated; the problem is that district courts have a greater bias in favor of interpreting claims narrowly than the rules permit. If you have any specific examples from our “reversals” dataset in which you think the district court was improperly reversed on a claim construction issue, please share. We’ve looked, and can’t find any.”

        You and I will simply have to agree to disagree. And eventually, after another decade of “clarification”, perhaps you’ll start to migrate to my camp, since clarification sufficient to accomplish your ends is unlikely to ever occur. Ever. I say 1. the rules are clear enough for those of super skill in the legal patent arts and 2. they’re not clear to anyone else specifically because of how clear they’ve been made to those of super skill in the legal patent arts and because of how alien they make the whole process of claim construction feel to the everyman/everyjudge. In other words, they’ve gotten too complicated for the everyman/everyjudge. That is so on many levels. Including, but not limited to: giving two dams, simple understanding, etc. Since that is the case only experts can hope to wade through them reliably. And though they can get it “right” most of the time, they’re not the ones in power.

        We are probably agreed in that the DC’s are misapplying the “agreed upon” (though not agreed upon by them! You’re dealing with a top down power structure) baseline rules. Rules that are known and are quite applicable by patent law experts and the judges of the federal circuit.

        “The baseline rules are not that complicated;”

        Interesting. It took me at least 3 years of doing this every day, for thousands, if not tens of thousands of claims to get a good hold on “the basics”. Men and women sit beside me every day that have no clue about “the basics” of claim construction and supposedly construe thousands of claims every year. There are people at the office examining for over 20 years that haven’t the slightest clue as to the basics. I had to make inquiry into the subject myself to learn them. I’m not even sure if even the basics are something that can “be taught”, they must be “experienced” to really learn them well enough to actually apply them well. No district court judge has that kind of time to learn these supposedly “not so complicated” rules of claim construction. To suggest otherwise is absurd. Absolutely absurd. You guys are lucky they stumble blindly into the correct result like half of the time.

        That said, you may well be right about the bias. And I don’t know about your dataset, but I’ve posted many a times when I thought the claim construction was right at the DC and wrong at the Fed. Circ. Though I cannot promise that such was regarding a “basic” rule.

      4. ” You’re oversimplifying again. People go to district court first because that’s where the law tells them to go. The system has a built-in right of appeal for either party, and usually at least one of the parties wants this (or else they’d agree to binding arbitration and save a lot of time, money, and trouble).”

        I wish heather. Last I heard however people have been going to the bottom, baseline, adjudicative body (whether established by statute or however) for thousands of years to have their quarrels adjudicated. So far as I’ve been made aware, very few of them like throwing additional money down that pit. Regardless of how many down on their luck “inventors” want an appeal so they can get around the dastardly DC judge.

        ” No doubt some parties would like the district court to be the final review, but that’s just not the way it is. As our article shows, trying to achieve that result by giving more deference to district courts is just a recipe for more bad rulings (because presumably, some of the current “reversals” would have been affirmances).””

        That depends on your subjective definition of “bad” Heather. Maybe there are some that would gladly sacrifice some of the “rule application” for more “solid adjudication”. And maybe, just maybe, there are some people that aren’t big fans of the CAFC essentially making law via claim construction rules and would prefer they be cut out. Maybe the public’s confidence in the CAFC just isn’t up to snuff for the public to want to keep them involved. Just maybe some of those folks are the serious folks involved in the useful arts. And maybe none of that is “bad”. I’m just saying, all, or some of that could be so.

        “You’re imputing way too much intentionality to the district courts here. The district courts are just trying to do the best they can with the patent cases they have; they are not “trying to hold the patent system together.” In any event, district courts generally do a good job at claim construction — they get it “right” (according to the Federal Circuit) about 75-80% of the time, in cases where claim construction is appealed.”

        Yes it was not my intention to impute outright intentionality. They may well be doing what I said unintentionally just because it seems like the straightforward thing to do to the everyman/everyjudge. Seems about as likely as any other reason aside from bumbling, which is of course the number one contender.

        “All we’re asking is for you (or anyone advocating deference) to identify a case where the district court was reversed where it should, in fact, have been affirmed, and to tell us why. ”

        I’ll fav your page and give you an email the next time this happens. But again, regardless of whether I myself do it or not, you’re not going to get the public by and large to do that because of what I mentioned.

        “Given that the Federal Circuit has not definitively ruled on whether “actually invented” should be the standard,”

        Actually they arguably ruled that just not half a year ago in a case iirc that was about a stent or some medical device. MM was all up in arms. Though that was not en banc.

        “If you want deference just because you don’t like Federal Circuit review, then you’re basically expressing a preference for eliminating judicial review altogether for these issues. ”

        That would be, quite literally, no skin off my back, and (if made g e n eric outside the DC to the PO in addition to the DC) more power in my hands. Though frankly I’m not for that. I simply think a higher standard would settle things down and give the lower bodies some responsibility and a respectable place in the system instead of them just being a preparatory waystop on the way to the CAFC. Plus it would take some power out of the hands of the CAFC, and that I am very much for. Very much. They’ve bungled things up right nicely in issue after issue imo. That is so even though I concede they likely apply their own rules quite nicely.

        In any event, good chatting. At least you’ll have another perspective to keep in the back of your mind when going forward.

  18. Once again, more evidence that District Court judges with no experience, and no reasonable way to get experience in this area should not be doing claim construction. And again, it is not their fault.

    Firstly, the appeals process is too slow to provide meaningful feedback to them. They make so many decisions in the years between when the construction is made and when they are affirmed/reversed that they probably don’t even know why they made the construction in the first place!

    Secondly, they have so many non-patent cases, and so few patent cases, that even if they got feedback, they would not have enough close cases that are similar to be able to implement the feedback and cement it in their minds!

    Thirdly, most of the hard cases are not even litigated in patent law due to costs (moreso, I think than in other types of litigation) so a higher reversal rate than say, in foreclosures or criminal cases.

    Lastly, judges are not comprised of 25 year old recent graduates, and the reality is by the time they reach the bench, most, despite being otherwise excellent legal minds, have reached an age where learning becomes more difficult. There is a fairly large consensus that learning new, complex concepts after the age of 30 is very difficult, and that the ability degrades fairly linearly after that point.

    1. “Once again, more evidence that District Court judges with no experience, and no reasonable way to get experience in this area should not be doing claim construction. And again, it is not their fault.”

      I agree that they’re making “mistakes” according to the “rule giver” the fed circ. I don’t necessarily agree that they “should” (are obliged to) not be doing claim construction. I do agree though that none of this is their fault.

      “Firstly, the appeals process is too slow to provide meaningful feedback to them. They make so many decisions in the years between when the construction is made and when they are affirmed/reversed that they probably don’t even know why they made the construction in the first place!”

      That is so funny because that is how many appeals at the PTO happen too.

      1. Oh I know. The appeals process at the PTO is no better, but at least there are feedback mechanisms that are more instant for examiners (although I dont know how reliable/etc they are). In theory they can get instant feedback from a SPE early in their career, and of course they are typically younger and certainly more immersed in the arts, which are significant advantages to learning.

        Also, some may not agree, but I see the examiner as much more of a factfinder who collects the prior art and makes predictable inferences about it (even if I disagree with those inferences) because they use BRI. So, they actually seem much more like factfinders to me than judges. So, its mostly better on all fronts, but of course not ideal.

    2. Yeah, but just think Obama is just appointing bourbon swilling liberal arts judges to the federal circuit.

      So, I think it is fine to give it to the dist. judge. At this point the more random it is the harder it will be for the anti-patent corporate movement to kill patents.

  19. In particular I note:

    “……in cases where district courts are “getting it wrong,” according to the Federal Circuit, they are systematically interpreting the claims too narrowly. As pointed out last year, these narrowing interpretations typically enable district courts to grant summary judgment………”

    because it reminds me of the stark contrast between Appeals in the English Courts and Appeals at the EPO.

    At the EPO, the lower instance has no qualms about dumping as much work as possible on the Appeals instance. In England, it’s the opposite. Only about a third of cases tried in the patents courts go to appeal, mainly because the court judges have a horror of any criticism of their performance by the Lord Justices of Appeal.

    Do readers in the US will say it’s a good thing that district court judges are intent on getting to Summary Judgement?

    1. If it is appropriate to get to summary judgment, it is a good thing.

      If it is not, then not.

      There is no such thing as a priori “good to summray judgment and let someone else make the right judgment.”

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