by Dennis Crouch
Although our attention over the past few years has focused more on eligibility and definiteness issues, claim construction continues to befuddle the courts. In MultiLayer Stretch Cling Film v. Berry Plastics (Fed. Cir. 2016), the Federal Circuit has offered a split interpretation of the patent’s Markush group claim element.
The asserted cling-film claim requires “five identifiable inner layers with each layer being selected from the group consisting of LLDPE, VLDPE, ULDPE, and mLLDPE resins.”
The accused products include inner layers made of a different resin (not listed in the claim) and also layers with blends of the above listed resins. In claim-construction mode, the court found that the claim would not extend to these embodiments. The court particularly focused on the “consisting of” language used in defining the group and noted that a broader approach would have written “comprising.”
What is critical here is that the transitional phrase . . . “consisting of,” is a term of art in patent law with a distinct and well-established meaning. Use of the transitional phrase “consisting of” to set off a patent claim element creates a very strong presumption that that claim element is “closed” and therefore “exclude[s] any elements, steps, or ingredients not specified in the claim.” . . . Thus, if a patent claim recites “a member selected from the group consisting of A, B, and C,” the “member” is presumed to be closed to alternative ingredients D, E, and F. By contrast, the alternative transitional term “‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.”
The majority agreed with the dissent that elements of the specification as well as other claims suggest that the broader invention includes other non-listed resins. However, the majority and dissent disagreed on the impact of those alternative facts.
The majority:
We do not think that the listing of these other resins in the specification is sufficient to overcome the presumption created by the “consisting of” claim language. . . . [Further], ‘[t]he dependent claim tail cannot wag the independent claim dog.’
The Dissent:
I think that this is a close call, but I would conclude that the claim language is not so plain.
The dissent’s textual argument is that, although “layer consisting of [listed resins]” would have been clear, that clarity was muddied by the patentee’s more complex “layer being selected from the group consisting of [listed resins].” The actual claim language leaves “semantic uncertainty” that then opens the door to more consideration of the specification and claim differentiation.
The specification states the following wrt to the outer layers.
It is somewhat unclear to me exactly what is being claimed wrt to the outer layer resins.
Does a PHOSITA immediately assume a linear low density polyethylene resin may optionally contain a cling additive or would a PHOSITA need a phrase like a resin consisting essentially of linear low density polyethylene and optionally including cling additives?
I am not sure that the inventors are claiming embodiments including cling additives.
A plain reading of the claim language is that there are no additivies in at least one of the two outer layers. The passage you quoted from the specification is entirely consistent with that interpretation.
The question of “what a PHOSITA would immediately assume should be in the layer”, no matter what the claim actually says, is not the correct question and this is a mistake that courts often make (the CAFC got the result absolutely right here). When you start asking how a PHOSITA would read a term like “consisting of”, or “a majority of” in a vacuum, ign0ring the fact that we’re talking about patent claims that were drafted in nearly every instance by lawyers, the process of construing claims turns into a joke. We might as well just allow applicants to claim “The new non-obvious stretch film that we described in the specification, and not the one that doesn’t work and nobody would actually make” and then let judges figure out what that stretch film “surely has to be.”
This decision is actually kind of huge in that respect. There are (or were) a couple judges on the CAFC who were making a mess of claim construction by rewriting applicants plainly written claims according to some understanding of what the applicant “really wanted to claim.”
The key is that PHOSITAs or (experts on PHOSITAs) who opine about how a claim is interpreted need to understand that they are not being asked what the applicant meant to claim. They are being asked what the words in the claim actually say, and they must recognize that applicants write claims that are indefinite, inoperable, or otherwise unsupported by the specification all the time. It’s not the PHOSITAs job (or anyone else’s job) to rewrite those claims.
Agreed.
Likewise.
But I should qualify that Expert is supposed to opine the claim’s meaning relative to the terminology of art.
Ah-ha! So, Malcolm, you would give short shrift to the UK Supreme Court approach to claim construction, namely, to ask itself what was the writer of the claim using the language of the claim to mean (to the person of skill in the art, the notional reader of the patent).
Everybody agrees, including the UK Supreme Court, that the patent owner’s feet must be held to the flame, the flame which is the true meaning of the claim. Everybody agrees, that the patent owner is deemed to have written its claim the way it is with deliberation not carelessness, that limitations in the claim are to be taken as being in there for a purpose. But nevertheless, it is hard to draft with perfect clarity, and (at least in mech eng) it is the case that one needs a little bit of “I know what he’s trying to say” to arrive at a claim construction which reconciles solid legal certainty for the public with fair protection for the inventor.
At first I thought this decision of no interest outside its peculiar facts. But your comments have whetted my appetite to read the actual decision carefully. Many thanks for that.
MD: Ah-ha! So, Malcolm, you would give short shrift to the UK Supreme Court approach to claim construction, namely, to ask itself what was the writer of the claim using the language of the claim to mean
Not at all. The writer of the claim language was a lawyer, skilled in the art of claim drafting, employed to write a patent claim for a PHOSITA. That writer “used the language of the claim” to describe the claimed invention, period. Of course different words may have different meanings in different techn0logical contexts and reasonable people can and should take that into account. But a screw-up is a screw-up, and screw-ups have consequences. So the claim is, on its face, inconsistent with “industry standards” or the “embodiments” described in your spec? Tough beans.
Not sure whether it is decisive to the case, the question whether a “VLDPE resin” is limited to pure VLDPE or can embrace a ready-to-extrude commercial resin product based on VLDPE but also including small amounts of performance-enhancing “additives”. That’s because the accused infringements were using a different polymer, or a polymer blend.
One might have to ask the PHOSITA though: what in your industry does the expression “VLDPE blend” comprehend?
Sorry, error. I meant the question: What does “VLDPE resin” comprehend?
I meant the question: What does “VLDPE resin” comprehend?
That’s easy: pure resin.
How do I know that?
Because you don’t have to look far to find PHOSITA’s “in the industry” talking about blending those resins with other things.
Again, this is a common trap that court’s fall into. They pretend there’s some confusion about the breadth of a generic term, in spite of the fact that the specification invariably modifies that generic term with an adjective. That means that applicant knows the difference between the generic term and species falling within the genus.
If by the word “pure” you have in mind commercial levels of purity, I’m with you. Suppose your baking recipe calls for “flour” and “salt”. That means “pure” flour, and “pure” salt, I suppose. But I’m pretty sure that the flour and salt you buy in a supermarket is not 100% “pure”. In the context of PE resins, I suspect they are not quite 100% PE. What if they invariably contain some additive or other, that renders them fit for purpose.
You see it’s not so much the blending, rather the “additives” that I’m interested in, and the difference between laboratory purity and commercial purity.
And, yes, if the claim really is unclear, through less than competent drafting, it is its owner that should pay the price.
Fold in your “:fit for purpose” for that commercial level and you are really in sync.
Of course, the base resin’s “purpose” will most definitely NOT be the same “purpose” as to specific additives added (that’s why additives are needed to be added).
Once you step to wanting to include “additives” then you have stepped away from purity of “purpose” of the resin and you are talking about something else (and most likely the term that should have been used in the claim).
The purpose here, for this claim, is “cling film”. That’s quite special, amongst all the uses of PE.
I presume that constrains the range of available “additives” that one can include in the base PE resin. Only those approved for use with food, for example.
I wonder whether it is even possible to make cling film with pure PE resin, free from all additives.
As Malcolm says, context is key.
Yes – context is key – but the context is what is defined by the claims and NOT by what was perhaps desired to be defined by the claims.
A great example here is how you want to now have a subset of compatibility with foods – that is just not there in the claim, nor would a PHOSITA understand that limitation to be their.
Read again my post (believe it or not, I side with Malcolm here).
Fair enough. Having read Dennis, I took it that the claim was to a “cling film” and I jumped to the conclusion that this is for food.
But now, having gone back to the decision, I see that the claim is directed to a stretch film wrap. Now I cannot myself recall having seen products other than food products wrapped in stretch film, but I suppose that such stretch film is routinely used on products other than food products.
Even so, when the PE resin has to be extruded so thin, I wonder how many additives are needed, before it will work.
You are missing the point MaxDrei.
Context is what the claim – as written – sets.
Again, agreeing with Malcolm, the claim writers here needed to do a better job.
(this would have been a slightly more interesting discussion had an open ended claim term been used – as it is, with a closed group claim term used, this is [terminally]** less interesting)
**the filter does not allow the better synonym.
Ultimately, a traditional call. Practitioners know when and why they are using “consisting of,” instead of the broader term, “comprising.” Now can we get any consistency in the doctrine of equivalents?
Given practitioners are not permitted to recite, “selected from the group comprising”, uh, sure.
” (b) five inner layers, with each layer comprising a resin
beingselected from the group consisting of linear low density polyethylene, very low density polyethylene, ultra low density polyethylene, and metallocene-catalyzed linear low density polyethylene resins; said resins are…”Fixed?
Hmm. Intended “comprising a resin” above to be tagged “underline” to indicate added matter.
Guess I’m just an illtagerate.
That’s a much better claim for the patentee, at least for their infringement theory.
I found this interesting,
Taranto then concludes that the dependent claims should be given weight to make the call on which interpretation is correct. But what seems quite obvious to me is that the better reading is that “layers” must have at least one of the “list” and may have other materials as well. The dependent claims seem to confirm this reading.
So basically, in your view, the claim is directed to the abstract idea of a seven layer plastic wrap with 5 of the layers having at least a molecule of LLDPE, VLDPE, ULDPE, and/or mLLDPE and your OK with that because “structure” and not function.
…sigh…
The analysis is correct that the usual application of In re Markush is the genus/species situation. Here, because layers are made of materials there is an implied specification that the material of the layer (a layer being a thickness of material) is selected from the group. A person of ordinary skill in the art has no problem with that, so it is not indefinite. Once you reach the implied genus “material” with reasonable certainty, there is no indefiniteness, and no way out of the Markush interpretation.
I think the CAFC reached the right conclusion but for the wrong reasons. “Consisting of” in the claim modifies the group, not the layers. So you have a group of substances that you can pick from, and as is routine (and required) practice for Markush groups, that group is of finite size (hence “consisting of”).
Then, for each layer, you select something from that group. So the real key question here is: what does “selected” mean? Does “selected” allow you to mix and match items from the menu, or do you have to just pick one? Can you select a blend between an item from the menu plus some extra stuff?
The claim could have been written more clearly, but my reading is that each layer can be made of one of the menu items, and that’s it. Besides, I’ve seen many Markush-style claims that recite “or combinations thereof”, so it’s certainly something commonly contemplated by patent applicants.
There are all kinds of far better ways to claim what the patentee here (apparently) “wanted” to claim. For starters, the patentee could have stated in the spec that, unless indicated otherwise, the terms [list resin names recited in Markush group] refer both to pure resins and also to resin mixtures wherein the named resin is at least 50% of the resin mixture by weight (or volume or whatever). And ideally (for everyone involved) the Examiner would require that definition be inserted expressly into the appropriate claims.
I’ll also note that, on its face, the term “identifiable” adds nothing to the claim. Unless there’s some interesting definition in the spec, what is the point of including it? To exclude “unidentifiable layers”? I’m pretty sure all the accused embodiments are going to include some “unidentifiable layers” (rather difficult to prove otherwise, you know?).
I’ve got a guess why “identifiable” is in there. I bet a “clever” examiner had a reference with a single layer, and then argued that he could subdivide it into 5. I’ve seen this many times.
That’s true, which then makes you have to up your game in your drafting into where the layers must be distinct. Wowee zowee hard drafting.
DanH: I bet a “clever” examiner had a reference with a single layer, and then argued that he could subdivide it into 5. I’ve seen this many times./i>
Well, there’s definitely a very strong prima facie obviousness argument to made if the claim can be read to cover a composition comprising 5 layers of the same material. This is a composition claim, after all, and not a method claim.
But I don’t think that argument turns a non-anticipatory reference into an anticipatory reference. The term “layers” inherently includes distinct/identifiable structures (i.e., the boundaries between the layers). Objects of uniform density and composition don’t have “layers”, period.
Moreover, unless the art teaches away from a layered appearance, I’m not sure how adding the term “distinct” or “identifiable” would overcome the strong prima facie obviousness argument where the prior art teaches one layer and the claim covers five “distinct” layers of the same material of indeterminate thickness.
[formatting fixed]
DanH: I bet a “clever” examiner had a reference with a single layer, and then argued that he could subdivide it into 5. I’ve seen this many times.
Well, there’s definitely a very strong prima facie obviousness argument to made if the claim can be read to cover a composition comprising 5 layers of the same material. This is a composition claim, after all, and not a method claim.
But I don’t think that argument turns a non-anticipatory reference into an anticipatory reference. The term “layers” inherently includes distinct/identifiable structures (i.e., the boundaries between the layers). Objects of uniform density and composition don’t have “layers”, period.
Moreover, unless the art teaches away from a layered appearance, I’m not sure how adding the term “distinct” or “identifiable” would overcome the strong prima facie obviousness argument where the prior art teaches one layer and the claim covers five “distinct” layers of the same material of indeterminate thickness.
“Moreover, unless the art teaches away from a layered appearance, I’m not sure how adding the term “distinct” or “identifiable” would overcome the strong prima facie obviousness argument where the prior art teaches one layer and the claim covers five “distinct” layers of the same material of indeterminate thickness.”
Because 5 layers is a completely different thing than 1 layer? Ergo you’ll have that whole 5 layers limitation as a completely missing part in the factual findings under Graham. Then you’re going to be stuck trying to wave it away in the 103 or caselawing it.
“But I don’t think that argument turns a non-anticipatory reference into an anticipatory reference. ”
It probably shouldn’t but it does because of the nature of how rejections are made and how the “analysis” under the lawl takes place. Once you’ve interpretated the claim such that it is amenable to covering an amorphized blob that you have arbitrarily sliced into 5 different layers then the office then simply turns around and does that during the designations for the layers in the ref in the OA, thus finding as fact that the whole limitation re 5 layers is taught by the ref. That’s the beauty and the legal danger of woodaliewhooping on your claim construction in these situations.
woodaliewhooping…?
6: Because 5 layers is a completely different thing than 1 layer?
“Completely different?” What?
That’s pretty funny. You can *maybe* get away with that kind of thing at the PTO when it’s just you and the Examiner but not in the real world when an intelligent reasonable person with an interest in the outcome is involved. As a matter of fact, the “difference” between, e.g, “five layers of vanilla ice cream” and one otherwise identical pile of vanilla ice cream is pretty much squat — at least from an obviousness perspective. People have been layering stuff for a long time, for all kinds of great reasons. I assume I don’t need to list them for you.
“But I don’t think that argument turns a non-anticipatory reference into an anticipatory reference. ”
It probably shouldn’t but it does because of the nature of how rejections are made and how the “analysis” under the lawl takes place. Once you’ve interpretated the claim such that it is amenable to covering an amorphized blob
Except that’s not what I’m talking about. And I don’t know who “you” refers to in the phrase “you’ve interpreted.” My hypothetical claim recites layers. It’s not an amorphized blog. And you’ve just told me that layers are “completely different” from blobs. I don’t agee that they’re “completely different” but they certainly are different.
“My hypothetical claim recites layers.”
Yes, and we just determined that “you” MM, are, in the hypothetical interpretating those layers to not need to be distinct. Otherwise there is no point to the putting forth the hypothetical.
“It’s not an amorphized blog”
Yes well in the hypothetical it is being interpretated that way whether applicant likes it or not.
“And you’ve just told me that layers are “completely different” from blobs. ”
Yes, so if it was interpretated in the fashion that the applicant would like it to be then it would not face anticipation under 102.
“I don’t agee that they’re “completely different” but they certainly are different.”
And the difference between “completely different” and “different” in this context is???????
Can, “including a resin selected from the group consisting of (list of five)” include materials other than resins or resins other than the list?
Diagram your sentence Ned.
As you typed it, the answer appears to be “no,” since the resin being selected is constrained by the Application of the Markush group and you are not providing the option of selecting from outside of that group.
Reminds me of nice toasty bisquits…
😉
OK, anon, let us look a biscuits.
1. A toasted biscuit including a spread consisting of (a list of butters).
The accused biscuit has a spread of one of the listed butters and also a spread of jam that is not listed.
Now, claim 2 says,
2. The toasted biscuit of claim 1 further including a second layer consisting of jam.
The issue is not so simple.
Clearly, if I claim “a butter consisting of (list of types of butter), the claim would not cover a different kind of butter. But, as Taranto observed, the problem is that the thing upon which the butter is spread is different from butter such that it could include spreads other than butter, such as jams, and still meet the requirement of the claims.
To the extent there is ambiguity, that ambiguity is resolved by the dependent claims.
The bisquit reference was to a different and rather well known “claiming” case, Ned.
The “collision” between your hypo claim (and possibly the claim of this case) has to do with the improper use of your claim 2 and the well understood use of “consisting.”
You should still diagram your claim 1 sentence and the underwood meaning of the terms of art.
That you have an impossible dependent claim is a problem for sure – but not the one that you seem to want to have.
“Underwood” s/b “understood”
Other materials are not included in that limitation.
However other materials may be included in an embodiment which separately satisfies that limitation.
If your list to choose from is a closed list, other materials will NOT satisfy the limitation (separately or otherwise).
The group of resins is closed via “consisting of”, but the inclusion list does not necessitate that all inclusions must be from that group.
If it read, “including only a resin selected from . . .”, then the inclusion list would also be closed. IMHO, anyway.
Sometimes it’s helpful to use parentheses. You can also add phrases, so that “including a resin selected from the group consisting of” becomes “including (among other things) a resin selected from the group consisting (exclusively) of”
Dobu,
Did you read what I posted here?
In that case, Ned, I would think that additional materials are permitted (as long as they don’t react with the selected resin in such a way that all of the selected resin is gone). It’s also a better-phrased limitation than the patent-in-suit, inasmuch as Taranto complained in the dissent about the limitation “each layer being selected from [group of resins]” equating a layer with the material it’s made from.
“The dissent’s textual argument is that, although “layer consisting of [listed resins]” would have been clear, that clarity was muddied by the patentee’s more complex “layer being selected from the group consisting of [listed resins].” The actual claim language leaves “semantic uncertainty” that then opens the door to more consideration of the specification and claim differentiation.”
All that does is open the door to a 112 2nd invalidation.
“All that does is open the door to a 112 2nd invalidation.”
Agreed. The D. Ct. did the patentee a huge favor here by giving them this narrow construction. They really deserved no more than invalidity for indefiniteness.
Good grief, learn how to write claims, people.
This is the easy part.
“The accused products include inner layers made of a different resin (not listed in the claim) and also layers with blends of the above listed resins.”
This statement of fact is not sufficient to determine infringement. If the products include inner layers (or blends) that have different resins which are additional to “five identifiable layers” (as claimed) there is still infringement.
The relevant question is not whether the product includes other inner layers of a different resin but whether or not, of all the inner layers present, there are (at least) “five identifiable layers” as claimed.
Ahmen.
Yes, the claim does not recite “consisting” of five layers, but simply that the five layers “consist” of certain material. Whether there are additional layers of other materials is irrelevant, as long as the five layers satisfying the limitation aer met
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