Federal Circuit Again Revives Zoltek Case: Who Invented Stealth Technology

By Dennis Crouch

Zoltek Corp. v. US (Fed. Cir. 2016)

The interesting and long-running Zoltek case has received another decision from the Federal Circuit – this time reversing the Court of Federal Claims ruling that Zoltek’s stealthy patent claims are invalid.

Zoltek is the owner of US Reissue Patent No. Re 34,162[1] issued January 19, 1993.  In 1996, Zoltek sued the U.S. government for infringing the patent – in particular, the patentee argued that the B-2 Bomber and F-22 Fighter both used carbon fiber sheets that infringed the patent rights.

As a starting point for most claims against a government is with sovereign immunity. The U.S. Government claims sovereign immunity against suits except where waived.  In the patent context, the U.S. government has waived its immunity, but limits the procedure and form of recovery. In particular, 28 U.S.C. § 1498(a) provides that “the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.”  The statute also provides cover for contractors or other non-government-entities who infringe the patent “with the authorization or consent of the Government” so that those actions must also be pursued against the U.S. Government.  The Court of Federal Claims is located in the same Madison Place building as the Court of Appeals for the Federal Circuit.

In its prior en banc decision from the case, the Federal Circuit ruled that Section 1498(a)’s infringement statute should be broadly read to encompass Section 271(g) infringement.

Following that decision, the Court of Federal Claims held a trial on validity and found that the asserted claims were invalid as obvious and/or lacking written description.  The court has reversed that holding and remanded.

Omitted Elements:  During reissue prosecution of the manufacturing process claims, the applicant deleted the initial step of “oxidizing and stabilizing the carbonizable fiber starting material at an elevated temperature.”  That deletion clearly broadened the patent claim – however, a broadening reissue was proper because it had been filed within two years of the grant of the original patent.  The CFC found, however, that the new breadth went beyond the original written description and thus rendered the claim invalid – holding that “the preparation of the known starting material must be included in the claim” even if known in the prior art.  On appeal, the US Government argued for affimance since “the specification does not state that these steps need not be performed by the same entity.”

On appeal, the Federal Circuit completely rejected this analysis: “The question of who performs steps of a fully described invention, including preparation of a known starting material, is not a matter of the written description requirement.”

The original specification plainly, and without dispute, describes that the starting material is an oxidized and stabilized fiber, cites references showing this known material, and describes its preparation. That a previously oxidized and stabilized starting material was known to a person of ordinary skill in the field was recognized [as well] . . . . The question of who performs steps of a fully described invention, including preparation of a known starting material, is not a matter of the written description requirement.

The purpose of the written description requirement is to assure that the public receives sufficient knowledge of the patented technology, and to demonstrate that the patentee is in possession of the invention claimed. . . . The written description need not include information that is already known and available to the experienced public. . . .

The CFC stated its concern that the reissue patent claims could be infringed by an entity that did not itself make the starting material, but purchased the known starting material from a commercial source. . . . A validly obtained reissue does not violate the written description requirement if the patentee can reach an enlarged scope of possible infringement. It is not an improper broadening amendment when a reissue applicant, with the considered agreement of the reissue Examiner, substitutes a preparatory step known to those skilled in the art at the time of the invention with a requirement to start with the product of that known preparatory step. The CFC’s emphasis on who might infringe the broadened reissue claims is an issue of infringement, not written description. We conclude that the CFC erred in holding reissue claims 1–22 and 33–38 invalid for failure to meet the written description requirement of section 112. That ruling is reversed.

The issue here is definitely interesting – in particular, I see the question of whether the starting-material is available as prior art to be a total red-herring since its manufacture was sufficiently described in the specification.  The question is whether the patentee described an invention that began by “obtaining” rather than “making” the starting material.  The Federal Circuit didn’t really answer that question. I will note that none of the parties cited Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) ([not announcing] an omitted essential elements test).

On Obviousness, the Federal Circuit took the government to task as well – finding substantial errors in the Government’s expert testimony and noting the admitted novelty of the fiber sheets created by the inventors. “Instead, the government’s argument appears to be that since [its expert] Dr. Sullivan is a renowned scientist in this field, and since Dr. Sullivan was able to reproduce the Figure 4 graph, it was obvious to do so. This was error.”[2]

Section 101 – The government had also argued that the patented “method of manufacturing . . . carbon fiber sheets” lacked subject matter eligibility under Section 101 as effectively claiming a law of nature.  From the CFC Decision rejecting the eligibility argument:

The Government argues that the claims are invalid because they embody nothing more than a law of nature. For example, the Government points to Figure 4 of the patent to support its contention. It argues that Figure 4, which charts a relationship between heat treatment temperature and surface resistance, demonstrates the ineligibility of the ‘162 Patent claims by showing that the claims embody nothing more than a natural law that links temperature to resistance. Relying upon the testimony of its expert, Dr. Brian Sullivan, the Government argues that the independent claims at issue (claims 1 and 33) consist of three parts: (1) the manufacture of carbon fibers using conventional carbonization equipment and techniques; (2) the manufacture of a sheet product using conventional techniques and processes; and (3) “the concept that if you control the fibers’ volume electrical resistivity it gives you the ability to control the sheet or surface resistivity of the final carbon mat productThe Government argues that these three parts render the ‘162 Patent’s claims similar to those found ineligible in Flook and Mayo. . . . The Court agrees with Zoltek [and disagrees with the Government]. The Government’s comparisons to the ineligible claims in Flook and Mayo are much less apt than comparison to Diehr.

The CFC did reject that argument and the Government did not appeal that issue.

= = = =

[1] The ‘162 Reissue Patent originally issued in 1988 as U.S. Patent No. 4,728,395 and then reissued in 1993. Zoltek obtained the patent rights when it bought Stackpole Fibers in 1988.

[2] See Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051 (Fed. Cir. 1988) (“[t]hat which may be made clear and thus ‘obvious’ to a court, with the invention fully diagrammed and aided . . . by experts in the field, may have been a break-through of substantial dimension when first unveiled.”); see also KSR (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”); W.L. Gore, 721 F.2d at 1553 (“It is difficult but necessary that the decisionmaker forget what he or she has been taught at trial about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art.”).

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

106 thoughts on “Federal Circuit Again Revives Zoltek Case: Who Invented Stealth Technology

  1. So we’re down to this? The very government that granted the patent is (probably rightfully but not morally) denying the invention patented?

    Let the games begin.

    1. Richard, if it were the patent owner vs. the government in a court of law, with a jury involved, the result would both be fair and legal.

      But when the government itself is deciding the issue, being both prosecutor, and judge and jury, the fairness of the whole proceeding is cast into doubt. One can argue all day long that one is receiving due process. But the inherent bias of the people involved in making the decision is exactly why we have an independent court systems and right to trial by jury.

      One sa

    2. And, this is not an issue of an expert agency regulating something. This is the government deciding just compensation, something that is regularly done in a court of law when property is taken and the compensation offered is deemed inadequate.

  2. On topic

    MM: no one would eeeeever apply Alice/Mayo where there is objective physical structure

    “Section 101 – The government had also argued that the patented “method of manufacturing . . . carbon fiber sheets” lacked subject matter eligibility under Section 101 as effectively claiming a law of nature.”

    Thank God, in this case that court didn’t buy it. But, someone still had to spend money opposing the attempt… and at some point a court will see that that IS what the rulings say, and side with the argument….

    1. Saw a report of a patent infringement case regarding a patent for a drill bit and a method of drilling for oil where the accused infringer alleged the patent was invalid for being directed to the abstract idea of rotating.

      The court rejected that argument.

      I assume the use of this “defense” will continue for a while without regard to the ability of the arguments to pass the straight face test, and then courts will get sick of it and the pendulum will swing back somewhat.

      1. Back?

        I think some are poking fun at the vagueness of the Supreme Court. Some district courts will fully agree and at least for a time will go along with poking fun.

      2. “The court rejected that argument.’

        lulz, no kidding?

        “without regard to the ability of the arguments to pass the straight face test, and then courts will get sick of it and the pendulum will swing back somewhat.”

        Where are the sanctions that are supposed to come out when the arguments don’t pass the straight face test?

        1. “The government had also argued that the patented “method of manufacturing . . . carbon fiber sheets”

          6:”Where are the sanctions that are supposed to come out when the arguments don’t pass the straight face test?”

          Are you saying the government would issue an argument that doesn’t pass the straight face test? That explains this Office Action….

    2. “MM: no one would eeeeever apply Alice/Mayo where there is objective physical structure”

      The court did not so hold. Even at the lower court. As is appropriate.

      Just because someone tried to use it as a defense doesn’t mean they did it properly.

      Perhaps sanctions on the attorney would sort that lawlyer out.

    1. Breyer: We have decided to patent tens of thousands of software products and similar things where hardly anyone knows what the patent’s really about.

      Not what I’d call a ringing endorsement of the status quo.

      LOL

      1. Your “Z1ng! reminds me of how quickly and eagerly you were to post the link to the Office take-away from a certain patent case…

        …and the embear assment for you when you finally read the item linked to and realized that your (b@na1) pet theory was NOT the take away that the Office came out with.

        1. Whether or not a “ringing endorsement” or even a wistful “gee I wish there was a separate law” kind of points out that NO endorsement is needed to recognize the reach of the existing single law is NOT what you would want that reach to be.

  3. Just out of curiosity, can the U.S. use all of the PTO post-grant systems, and if so why haven’t they used it more? If they do use an IPR, must it be filed within one year after they are served on the suit in the Court of Claims?

  4. “Who Invented Stealth Technology” ?

    Well, if it isn’t Soviet physicist Piotr Ufimtsev, who developed the Geometric Theory of Diffraction as an extension of Geometric Optics in the 1960s, who was it?

    GTD = GO + correction factors

    GO describes the behavior of the reflection against objects and shadowing by them, neglecting the diffraction at the edges. It describes most everyday phenomena at optical wavelengths.

    The correction factors takes the diffraction into account, and allows the analysis of an object hundreds of wavelengths long and wide on the computers available in the 1970s and beyond. That was the enabling theoretical work for understanding how to build an aircraft with the smallest possible RCS (Radar Cross-Section).

    His work was noticed and translated in the US: link to dtic.mil

    The rest is history, and at best mere implementation details better left to technicians. 😉

    What the US contractors generally invented was a way into milking Uncle Sam into building hugely expensive aircraft providing illusory superiority and the handling of a box of Corn Flakes. (think of the committee-designed F35…)

    I’m less skeptical about the value of such techniques for ships, which explains the angular and pyramidal aspect of current-day vessels.

    The absorbing material patent has been around for a while, but what about classified US patents that haven’t issued yet?

  5. Assume for the moment that Congress had not created a court of claims and that the government takes property under the takings clause of the 5th Amendment.

    Can the clause be considered to be a waiver of sovereign immunity so that an abused property owner might have a lawsuit in a common law court of some jurisdiction for damages against the Federal Government? Is there a case on point?

    1. Q: Is there a case on point on Ned’s completely imagined other world make believe?

      A: Yes – but it is only also totally imaginary and not a part of this reality.

      Maybe you want to ask a different question….?

    2. It turns out that actions for compensation were always tried in the common law courts. “. In spite of contrary statements found in some American law, in the United Kingdom, compulsory purchase valuation cases were tried to juries well into the 20th century. DeKeyser’s Royal Hotel v. The King (1919).” link to en.wikipedia.org

      Moreover, various forms of action were known, and if the King had to be sued, consent was routinely give. link to jstor.org

      I daresay one could use these cases as precedent to sue in common law courts of the US against officers of the government and to juries. It might even be that this precedent would support a right to jury trial.

    3. Ned, there are numerous decisions rejecting attorney’s wasting their clients money trying to sue the U.S. in a D.C. rather than the Court of Claims. The other route is asking Congress to pay.

      1. Paul, I assume you are right that the Courts too have line up to protect the government as best it can when it appropriates one’s property. It gets to decide how much it will pay, but first it will put you through twenty years of litigation purgatory at great expense in order for you to have the privilege of being paid.

      2. Still, Paul, if you know of any Supreme Court case that directly decided that the Fifth Amendment did not constitute a waiver of sovereign immunity when government took one’s property without compensation.

        1. Ned,

          I don’t have a cite (or even a source) but thinking about the problem: Would there be a distinction between a suit for damages (law side) versus a suit for replevin (in the case of a physical object) or injunction in (the case of property) (equity side)?

          My point being: in either case, Congress can provide the sole means to address the “taking.” Obviously, if Congress tried to invoke sovereign immunity versus a 5th amendment takings – which constitutional doctrine prevails?

          I think the 5th because it’s explicit, whereas sovereign immunity is an implicit backdrop theory (for the federal govt) and mixed explicit-implicit (for states due to 11th amendment).

          A quick (and cursory) search reveals this law review:
          Curiously, despite the Court’s recent attention to these areas, little has been made of the seeming incompatibility of such robust takings and sovereign immunity precedents. In recent memory, the Supreme Court has acknowledged the paradox rarely, most famously in 1987, in a footnote in First English Evangelical Lutheran Church of Glendale v. County of Los Angeles,2 in which the Court offhandedly asserted that the Just Compensation Clause trumps *495 sovereign immunity.

          Eric Berger, The Collision of the Takings and State Sovereign Immunity Doctrines, 63 Wash. & Lee L. Rev. 493, 494-95 (2006).

          I’ll read more and see if I find anything else.

          1. Hey, drop by, just as I thought.

            And it does appear that property owners had a cause of action for compensation in the common law courts and to a jury. The petition was known as a petition of right, which is used when guaranteed liberties are infringed. Today, such petitions are replaced by civil actions.

            Now congress can provide which court may hear certain kinds of petitions or civil cases pursuant to its constitutional authority, but these courts must be Article III courts, and the right to a trial by jury must be preserved.

            Since this does not involve a voluntary waiver of sovereign immunity, the normal doctrines involving public rights flowing therefrom do not apply.

          2. We have recognized that a landowner is entitled to bring an action in inverse condemnation as a result of ” `the self-executing character of the constitutional provision with respect to compensation . . . .’ ” United States v. Clarke, 445 U. S. 253, 257 (1980), quoting 6 P. Nichols, Eminent Domain § 25.41 (3d rev. ed. 1972). As noted in JUSTICE BRENNAN’s dissent in San Diego Gas & Electric Co., 450 U. S., at 654-655, it has been established at least since Jacobs v. United States, 290 U. S. 13 (1933), that claims for just compensation are grounded in the Constitution itself:

            “The suits were based on the right to recover just compensation for property taken by the United States for public use in the exercise of its power of eminent domain. That right was guaranteed by the Constitution. The fact that condemnation proceedings were not instituted and that the right was asserted in suits by the owners did not change the essential nature of the claim. The form of the remedy did not qualify the right. It rested upon the Fifth Amendment. Statutory recognition was not necessary. A promise to pay was not necessary. Such a promise was implied because of the duty to pay imposed by the Amendment. The suits were thus founded upon the Constitution of the United States.” Id., at 16. (Emphasis added.)

            316
            *316 Jacobs, moreover, does not stand alone, for the Court has frequently repeated the view that, in the event of a taking, the compensation remedy is required by the Constitution. See, e. g., Kirby Forest Industries, Inc. v. United States, 467 U. S. 1, 5 (1984); United States v. Causby, 328 U. S. 256, 267 (1946); Seaboard Air Line R. Co. v. United States, 261 U. S. 299, 304-306 (1923); Monongahela Navigation, supra, at 327.[9]

            First Lutheran Church v. Los Angeles County, 482 US 304 – Supreme Court 1987 at 315

  6. A process consists of steps A, B, C and D to produce produce product X. It turns out, that only A is new, being essentially A’ in A, B, C and D.

    I think I should be able to claim the performance of step A’ in a process that produces product X.

    To infringe, anybody else, as in the Univis Lens case where the finishers performed conventional steps to finish the bifocals acting upon lens blanks embodying the inventive steps, might perform any or all of the other steps.

    This is why, and it serves to illustrate a point, that the Federal Circuit single actor rule is not consistent with the law of infringement. As the Supreme Court said, the Federal Circuit does not understand the law of infringement.

    1. Once again, your treatment of the Univis case is simply baffling.

      As in – explicitly for that case, anybody else finishing the last step simply does not infringe – and cannot infringe.

      Your first two sentences simple make no sense.

      As to the notion that multiple parties <should be considered to be able to be infringers (just like other torts that may have multiple actors), I am in agreement.

      I just don’t get to that place with how you are treating case law.

      1. anon, I find it puzzling that you do not accept that the Supreme Court held that if others did the acts of the licensee and the finishers in that case, others who were not licensed, that they would infringe.

        You consistently misunderstand what I am saying by reading into what I am saying an implicit assumption that a licensee is making the lens blanks. I am not saying that. I am saying that a third party is. The Supreme Court assumed for the sake of their holding that such would be a contributory infringement without a license.

        1. Your statement here (others performing the last step would be infringers) is clearly the OPPOSITE of what the Court actually found – expressly because the Court found that the input to that third party performing that last step was exhausted.

          You keep in ig noring whole cloth this rather important point made by the Court.

          1. Yikes, anon. Are you kidding me?

            There was exhaustion because if what the licensee was doing was unlicensed that licensee would be committing contributory infringement. Of court the finishers would be infringing as well — they are the direct infringers.

            1. Because IF what the licensee was doing….?

              No Ned.

              The exhaustion was because of what the patent holder did.

              One cannot BE an infringer on an exhausted product.

              Why do you not want to understand the exhaustion point?

              Why do you keep on acting that the exhaustion point is not there?

              1. anon, please. You must be kidding.

                1. No patentee making or selling anything.

                2. No licensee making or selling anything.

                We have A and B, complete strangers to the patentee. A makes the lens blanks. B finishes the lens blanks into bifocal lenses according to the prescription of the patient.

                Here, there is no authorization to do anything by anybody. There can be no exhaustion. The Supreme Court said in this circumstance, A is a contributory infringer and B is necessarily a direct infringer.

                You cannot tell me with a straight face that infringer can exhaust a patent. There has to be a direct infringer for there can be a contributory infringer. Thus, the finisher is the direct infringer and the seller of the lens blanks, the practicer of all the process steps that makes the lens blanks, is an infringer – a contributory infringer.

                  1. anon, a direct quote:

                    “…each blank, as appellees insist, embodies essential features of the patented device and is without utility until it is ground and polished as the finished lens of the patent. We may assume also, as appellees contend, that sale of the blanks by an unlicensed manufacturer to an unlicensed finisher for their completion would constitute contributory infringement by the seller.”

                    Univis at 249.

                    link to scholar.google.com

                  2. From the same page as your quote:

                    In any event, we find it unnecessary, in the circumstances of this case, to decide whether, as the court below held, the patent claims can rightly be said to include the finishing of the blanks.

                    So what? You can parse out a quote.

                    What about exhaustion?

                  3. Mayhap at 251…

                    We think that all the considerations which support these results lead to the conclusion that where one has sold an uncompleted article which, because it embodies essential features of his patented invention, is within the protection of his patent, and has destined the article to be finished by the purchaser in conformity to the patent, he has sold his invention so far as it is or may be embodied in that particular article.

                    So once you grasp that, then return and discuss this little doggie of exhaustion.

                    Thanks.

    2. Ned: A process consists of steps A, B, C and D to produce produce product X. It turns out, that only A is new

      And who was the first to appreciate this fact and recognize the broader claim? Shouldn’t that person be listed as an inventor?

      1. MM, during prosecution, one often finds that a lot of limitations are unnecessary. Most patent attorneys simply leave them in. Good patent attorneys try to remove them, either in Rule 312 amendments, in RCEs, in continuations or if necessary, in reissues.

        1. Ned: during prosecution, one often finds that a lot of limitations are unnecessary.

          No doubt that happens. But the best patent prosecutor encourages the inventor to identify the closest prior art and speculates about the existence of prior art that isn’t known but may be discovered later. The specification is then written to provide solid written description support for all the embodiments — narrower and broader — that one might reasonably wish to claim down the road.

          Waiting until after the specification is filed to do that work will end up increasing the cost by orders of magnitude and that’s not even considering the expensive cloud that ends up being cast over the patent.

        2. How do people feel about amending the Summary during prosecution? Historically, not often done. A bigger issue in view of Summary sections more frequently being used to limit claims these days?

          1. I don’t normally do it, but the Euro’s require it so that the prior art is discussed. As explained by Max, the reason that the European patent office does this is because the prosecution history cannot be used in litigation to limit the claims.

            All in all, I think the US practice is actually better because we get to read prosecution. It normally is very informative as to what the invention is.

            1. Ned, you suppose that in Europe we do not “get to read prosecution”? I can assure you we do, avidly. It is by far the best source of material for striking the patent down. Especially with cases drafted in the USA, or in USA-style, one turns to the prosecution more in expectation than in hope, that there will be something in there that will destroy the patent utterly.

              And of course, in litigation, one will be using against the patent owner anything in the prosecution history. As the UK police caution goes, when arresting a suspect “Anything you say will be taken down in evidence and may be used against you…..”

              As to “what the invention is” there is nothing better than an EPO “two part” form of claim, in which the claim is split by reference to D1, and D1 is expressly fingered, in the opening pages of the specification. Your precious prosecution history can’t do much to change away from that definition.

              And Europe is polyglot anyway. You will be litigating in a language that is not the English of the granted patent.

              As to “better” prosecution in the USA, I agree it is “better” for Applicants who want to delay saying what their invention is until years after they ask the Patent Office for a patent on their invention. Europe expects drafting standards higher than that, which is “better” for the public, for professional standards amongst patent attorneys, and generally, for overall respect for the patent system.

            2. More thoughts, on why “the Euro’s” require the specification to be amended during prosecution.

              Under the EPC, clarity/definiteness is not a ground on which one can dispute validity after issue. Good so. No patent that ever issued is 100% clear. But because of this reality, the EPO is under pressure to ensure that only text that is fit-for-purpose clear gets through to issue. In particular, any disconformity between what the specification describes as “the invention” and what the issued claims define as “the invention” must be scrupulously excised, prior to issue, otherwise smart lawyers, after issue, can obfuscate what “the invention” is by playing off the claims against the specification.

              These days, nobody can reasonably be expected to form a view what a claim covers only after having gone through the exercise of construing the claim on the basis of the entire PTO prosecution history right back to the first provisional filed. Life’s too short, at least for business people and their advisers. A business-friendly patent system does not impose such unreasonable expectations on business.

              When the EP-B is used all over the world, and in all languages, as a point of reference for what the invention is, the EPC requirement, that the specification shall set forth the invention in the context of the most relevant prior art, is a great help for non-patent attorneys to grasp what actually is the protected subject matter.

              One more thing: just for the avoidance of doubt, there is no EPC prohibition on claim broadening until after issue. During prosecution it is a daily reality. It is just that, after you file, you can’t then add technical teaching to your pending application. In a First to File system, that much is unavoidable and inherent, so not worth arguing about. the skilled person reads, hungry to derive useful technical teaching. Almost any shift of wording, from the text as filed, might be enough to give such a reader a nuance of a shift of technical meaning. And that is why every EPO Examiner is inherently sceptical, every time an Applicant wants to change away from the text as filed.

              Do we want to raise drafting standards, or not?

              1. MaxDrei at perhaps his most elegant best.

                So while he has captured his long standing mantra here quite cogently and artfully, he has also assumed conclusions, and presented some mischaracterizations along the way to his (naturally) glowing endorsement of the EPO Way.

                Lot’s of subtle “blame the applicant” couched in terms of “respect” and “wanting better,” because, who can really argue with “wanting better,” after all?

                The Tafas case could probably have used such “fine” propaganda. Who can argue with a desired result that sounds so good?

                Why not let any means occur to obtain such a fine result? After all, the magic words of “respect” and “raised standards” are invoked, so what possibly could be wrong?

                The “intoxicating” effects of that kool-aid may catch the unaware person by surprise.

                But if we take a closer look, we run into many of the same types of “means” problems that the Tafas case exposed. We run first though into the manipulation of sound bytes that at a closer listen, merely sound in the “good ends” with cheap shots at the supposed “scurrilous” people trying to abuse the system.

                Some classic MaxDreisms:

                – Invoking the notion of superiority with polyglot Europe and at the same time an over-reliance on the “locked-in literal word, EVEN AS he paradoxically invokes a “well we can only be so precise” view in defense of not having a certain form of post-grant challenge (“too messy,” he says in his conclusory manner, “good so” he says, “life is too short” he says – hmmm, that “respect” blank is stunningly absent here…).

                – claim broadening and its intersection with added subject matter (neglecting the fact that here in the States we too cannot add subject matter after filing). The attack on the artful scrivener here “sounds good,” but is an att ack nonetheless. In this sovereign we have that protection against new matter AND the accommodation of the inherent weakness of language itself to be “ultimately precise.”

                – The de facto imposition of the optional Jepson claim format with his “As to “what the invention is” there is nothing better than an EPO “two part” form of claim, in which the claim is split by reference to D1, and D1 is expressly fingered, in the opening pages of the specification. Your precious prosecution history can’t do much to change away from that definition.” Quite frankly, our sovereign specifically made the Jepson claim format as a mere option and NOT a de facto requirement.

                Ever notice how the likes of MaxDrei, Ned and Malcolm always seem to resolve into views of patent law that make optional claim formats to be NOT optional at all in order for their “view” of the law to survive? Ever notice the common ground usage of “respect for the system” at the very same time they are att acking that very same system and NOT showing respect? It is a pretty convenient excuse for ad hominem for the sake of ad hominem in the modern day sound byte “w a r.”

                1. Readers, you should be aware that ( as I have repeatedly advised anon, but which he forgets when it suits him) an EPC c-i-t claim , even though it might look like a Jepson, is not at all comparable with one. Those who make that mistake are being careless with their clients’ interests.

                  Anybody interested can easily read the authorities, or take advice from one who knows about patent law in Europe.

                  1. You have merely stated such – but have never completed the thought process and shown where the difference is.

                    Your last attempt was to link to the ENTIRE body of European writings and merely proclaim “it’s in there, trust me.”

                    Thanks but no thanks as you have often gotten things wrong -not just in blundering through the laws of our sovereign, but even in those laws of your own backyard.

                    But please, if you would like to explicate the difference – especially as it relates to how the concepts are treated in the different sovereigns, I eagerly await your detailed tutelage.

                  2. anon points out that Jepson is not compulsory at the USPTO. Well, neither is a two-part c-i-t claim at the EPO (as those of you who instruct European patent counsel will know well, already). What is important to appreciate, readers, is that a c-i-t under the EPC is not to be compared with a Jepson in the USA. That’s all you need to know, unless you instruct European outside counsel. And if you do that, you will know already, what the difference is.

                    Another example of trans-Atlantic differences in claim construction is in M+F language. There is no 112-6 provision in the EPC. Instead, under the EPC, M+F means what it says. It’s the same with c-i-t. Simple as that.

          2. Not Paid,

            Interesting question. Amending the Summary is a new one on me because I have not run across a US examiner who requires it. Maybe 6 can comment. If amended claims have support in the rest of the specification and courts are only reading the Summary, maybe it is a good idea.

            At one time, the PTO said the Abstract was for search purposes only and did not limit the claims. Lately, they advised that courts think otherwise even though it is now supposedly limited to 150 words. So, amending the abstract is probably a good idea if it was not general enough to include the amended claims. Even Titles can be a problem.

            I did not see the EPO situation clarified. Max can comment but my understanding is that original claims do not provide their own support, unlike the US. Hence, one often sees US PCT Summaries that are a rehash of the claims in plainer English and this carries over to the US case.

            The EPO does require that the prior art is mentioned, but I think this is inserted into the Background, not the Summary as Ned suggests.

  7. “The question is whether the patentee described an invention that began by “obtaining” rather than “making” the starting material. The Federal Circuit didn’t really answer that question. I will note that none of the parties cited Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) ([not announcing] an omitted essential elements test).”

    Unlike 6, I don’t here ya. If the claim recites nails, and the spec goes on (necessarily) for 10 pages explaining how to make nails, like the ones on the shelf at Home Depot, what difference does that make? Even if the original claims include recitation of the process for making nails, and later it is realized that nail making is in the prior art and that process is not needed for novelty or non-obviousness, and that recitation is canceled from the claim, what difference does that make? Obtain nails by manufacture or purchase… was the diff?

      1. Irrelevant in what sense? Making the nails must be recited in the claims even though it is not necessary that one make ones own nails?

        Why?

      1. Is B and C novel and not obvious? Then of course you can. Why isn’t it enough to invent something. Why do you want to also require an inventor to know that A was already known?

        The inventor did not know that nails were already known and readily available, so he disclosed how to make them and recited them in his original claims. He later finds out (e.g. during prosecution, when the examiner cites a home depot circular) that nails are known and available. Since they aren’t adding patentable weight, there is no reason to recite their manufacture in the claim. The claim is amended to recite use nails thusly… rather than first reciting make nails and use nails thusly.

        Why should this not be appropriate?

        1. Why isn’t it enough to invent something.

          Our patent system requires a tad more than “inventing something” because if that was the standard for obtaining a patent the system would be even more of a broken farce than it already is.

          1. ?

            Equating “broken” with any sense of relative ease of obtaining a patent is most peculiar.

            Maybe you heard that in 1952 Congress specifically (and explicitly) rejected the notion that a patent should only come from some “great” thing like a Flash of Genius….

          2. Actually, all it requires is the following:

            Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

            One can DISCOVER something and get a patent for that.

              1. Absolutely.

                As long as you don’t go trying to conflate and confuse those various other conditions and requirements (or try to create new ones, implicitly or explicitly), we likely won’t have any issues with our view of the statutory law as written by that branch of the government so sanctioned to write the law by the Constitution.

        2. “Why isn’t it enough to invent something. ”

          That needs a ? mark at the end. But also, I think you guys need to stop using the word “invent” in this way when all you really mean is create something new.

      2. Prof. Crouch,

        Sometimes not. To satisfy the utility requirement, the claimed process must produce a useful product, else the claim is inoperative, as the PTO calls it. So, if steps A & B, without C, (an easier case to understand) produce a useful intermediate product, then yes you can, otherwise not.

        In this case, no steps were left out. Step A was to, though not literally as to obtain, obtain off the shelf “oxidized and stabilized fiber starting material” OR in the alternative in the original claim, obtain of the shelf fiber starting material and oxidize and stabilize at 220 deg. C. This should have been a no-brainer. Fortunately, it was for Judge Newman.

    1. Les: Even if the original claims include recitation of the process for making nails, and later it is realized that nail making is in the prior art and that process is not needed for novelty or non-obviousness, and that recitation is canceled from the claim, what difference does that make?

      Friendly reminder: fantastical hypotheticals can be helpful for illustrating a point, but they are far less helpful when the fantastical elements are starkly at odds with reality. That often ends up confusing the issues.

      That said, when an inventor doesn’t realize that the preparation of a recited component is in the prior art (perhaps buried in some obscure thesis!), then (arguably) she can’t be said to have conceived of a method that does not involve the preparation of that component. After all, if she had conceived of a method that required only the obtaining or use of a pre-prepared component, then surely she would have disclosed that “fixed and permanent idea”. That is how one demonstrates the possesion of one’s invention.

      Note that this is a very much a written description issue and not an enablement issue. If the step reciting the preparation of the component is deleted from the claim at a later stage without written description support for that embodiment, then it seems that the recited component should necessarily be construed as limited to the preparation steps provided in the specification.

      1. But don’t you fall into issues of claiming embodiments that are non-obvious over each other?

        I.e.: claim 1: a,b,c; claim 2: b,c. Claim 1 is obvious in view of claim 2. Both could be fixed and permanent in the inventor’s mind.

        I agree, generally, with your point as to the subjective belief of the inventor / knowledge that the individual inventor had at the time they filed. But that doesn’t really fit snuggly with the general written description test (disclosed such that POSITA (the magical beast) would know at the time of filing).

        It seems there is a disconnect, no?

        1. drop by: that doesn’t really fit snuggly with the general written description test (disclosed such that POSITA (the magical beast) would know at the time of filing).

          There’s more to that test than what you are reciting here.

          Let’s take an extreme example. Specification discloses: “A method comprising steps A, B, C, D, and E.” And that’s all it discloses. That’s the only embodiment described. It’s the only embodiment originally claimed.

          Later the inventor learns that the generic product resulting from step C was in the prior art (taught in a Russian publication). Can the inventor file a reissue and delete steps A, B, and C based on this later “discovery”? I don’t think so.

          There are good reasons for a written description requirement and I think situations like this are among those reasons.

          1. Someone once said that extreme hypotheticals fall apart very easily (or some such).

            Your own here at 4.3.1.1 is a good example of a hypothetical simply too extreme to be of any use.

            What even minimally capable patent writer does not include a certain level of “boilerplate” allowances to take into account that prosecution may necessitate dropping a claim limitation or two?

            You might as well merely wish that picture claims were the only thing allowed and that they accounted for more than 5% of valuable (and yes, valid) patents at best.

            The real world intrudes….

            1. “anon”: What even minimally capable patent writer does not include a certain level of “boilerplate” allowances to take into account that prosecution may necessitate dropping a claim limitation or two?

              And there you have it, folks: boilerplate! All those written description concerns just melt away. LOL

              Meanwhile, the point that was made with the hypothetical remains unaddressed. But “anon” is a very serious person. Let’s all pay attention to him.

              You might as well merely wish that picture claims were the only thing allowed

              Great analogy. Don’t forget to tell your doctor about that one after he adjusts the couch pillows for you.

            2. Someone once said that extreme hypotheticals fall apart very easily (or some such).

              Actually that’s not even close to what I said at 4.3.

              Get the meds adjusted.

              1. LOL,

                It’s really not that far off, Malcolm.

                The boilerplate aspect that you seek to mock is to take care of this type of procedural attack.

                It just is not that difficult to have your “hypo” fall apart.

                1. …and please, do not misconstrue what I say when you see the word “boilerplate” and react so instinctively.

                  Boilerplate simply does have its proper place in legal documents, of which, a patent application IS.

                  Sure, boilerplate can be misused by the unwary. Sure, simply slapping boilerplate into ANY legal document without care is something to be avoided, and good lawyering will make sure that the introduced boilerplate does not bring along undesired side effects.

                  I do expect such notions of good lawyering would not need to be mentioned to someone who has claimed to be an attorney on these boards,.

          2. So your saying that bypassing C and instead purchasing the result of C from a third party is not an “equivalent thereof,” that it is not an infringers ploy to unfairly get around a claim? That no method claim is ever enforceable in the real world because an infringer can always arrange to have some of the steps performed by a third party? Is that the point of your hypothetical?

      2. she can’t be said to have conceived of a method that does not involve the preparation of that component.

        Since that portion is stricken from the claim and is – in fact – in the prior art (and here, for argument’s sake – separable from the rest of the remaining claimed invention) – what exactly do you see as the issue?

        You are aiming for possession of a factor that needs not to be possessed.

        1. “anon” what exactly do you see as the issue?

          If you can understand English, then you can read my comment and find out exactly what I see as the issue.

          Note that this isn’t about connecting the dots. It’s about reading. Reading English.

          Please take some remedial courses, for everybody’s sake.

      3. “That said, when an inventor doesn’t realize that the preparation of a recited component is in the prior art (perhaps buried in some obscure thesis!), then (arguably) she can’t be said to have conceived of a method that does not involve the preparation of that component.”

        MM, it seems that you are conflating a product by process claim with a method claim. In a product by process claim, if the only method you knew of identifying or describing the product begins with making the starting material, and that is how you described and claimed the product, then I could see the argument that you have not described the product made using any other method of obtaining the starting material. In a method claim, however, if you describe a first step of making component A followed by further steps involving the use of component A, then you have inherently described the process of using component A bought off the shelf. I can’t see a written description issue here. You have adequate written description support for the broadened embodiment simply by reading from the paragraph that begins with any concept similar to “Now you take your component A and…”

      4. “That said, when an inventor doesn’t realize that the preparation of a recited component is in the prior art (perhaps buried in some obscure thesis!), then (arguably) she can’t be said to have conceived of a method that does not involve the preparation of that component.”

        That’s fact dependent brosef, WD is always a factual finding. Given the current facts, that the thing was old and well made already we need not go down that alternative line of thinking about those alternate facts.

        And also a hypothetical (or in this case the real) inventor is a he.

      5. “That said, when an inventor doesn’t realize that the preparation of a recited component is in the prior art (perhaps buried in some obscure thesis!), then (arguably) she can’t be said to have conceived of a method that does not involve the preparation of that component.”

        You might argue it. But no one else word. Everyone knows if you already have a sufficient supply of x, you don’t need to make or go get x.

        If you want to make rice pudding, you don’t start by boiling dry rice if you already have left over rice in the frig., even if the recipe calls for cooking rice. You just skip ahead.

  8. “The CFC did reject that argument and the Government did not appeal that issue.”

    At least they got something right.

  9. “I see the question of whether the starting-material is available as prior art to be a total red-herring since its manufacture was sufficiently described in the specification. ”

    That’s not really the “question”. The question is whether one of skill in the art would recognize the inventor as disclosing the invention such that the starting material could be pre-made or whether the party doing the inventive method had to do the initial creating step of the starting material itself. It’s a sub-question under this whether or not the material, already pre-made, was old in the art. If it isn’t old in the art then bam, he couldn’t have possession if he didn’t disclose specifically that you could start with the pre-made material. If if is already known to be pre-made, then he can just start up in the middle of the method and proceed onwards without getting into that.

    1. “The question is whether one of skill in the art would recognize the inventor as disclosing the invention such that the starting material could be pre-made…”

      Bingo. (Being explicit about it may be helpful, but it’s never a requirement.)

  10. Complete legal error. Ridiculous. You’d think the lawyers involved in this case would have steered the court into the right legal decision here.

    “The question is whether the patentee described an invention that began by “obtaining” rather than “making” the starting material. The Federal Circuit didn’t really answer that question.”

    I hear what you’re saying but as they already had that part in the beginning of the patent then I’m sorry bro, that’s the European line. This ain’t Europe, and in ‘Merica that’s all we need.

    1. Excuse me, but are we really arguing on the difference between obtaining and making where it is not a critical step or element? Whatever happened to common sense and the court of equity?

      1. Richard, while I agree that one need not include in any claim an element that is unnecessary and the question here really is whether the omitted element was necessary, what has all this to do with a court of equity? Is not the question of validity a legal issue?

        1. We are drilling so far down the chain of legality, we have forgotten principles of equity, faint hints of which were imbued with the doctrine of equivalents. With enough effort we can kill any “validly” issued patent.

          1. Richard, is the DOE really equity? See below from Faragi, Eric J. “Proposal to Restict the Patent Law Doctrine of Equivalents While a Statutory Remedy Is Available, A.” Seton Hall L. Rev. 34 (2003): 1299.link to google.com

            In addition to being consistent with recent case law, one can also
            find support for limiting infringement to literal infringement in a
            long-standing principle of American jurisprudence—a person cannot
            appeal to equity when there is an adequate remedy at law.9 One
            might classify the doctrine of equivalents as a remedy in equity
            because a finding of infringement under the doctrine of equivalents
            is similar to the equitable remedy of reformation (the jury is
            essentially rewriting the existing claims in order to find infringement
            in a particular instance).10 The Federal Circuit has classified the
            doctrine of equivalents as an “equitable remedy,” then at least by
            analogy, the doctrine of equivalents should not be available when a
            legal, statutory remedy is adequate and available.11
            This “inadequate remedy at law” rule has its roots in the English
            court system, which was principally divided into the law courts and
            the equity courts.12 Law courts were rigid in their rules and
            procedures, while the equity court was a separate court administered
            by the Chancellor that was more flexible, and focused on fairness.13

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