by Dennis Crouch
Icon Health v. Polar Electro & Garmin Int’l. (Fed. Cir. 2016) [IconHealth]
In a non-precedential opinion, the Federal Circuit has affirmed that Icon’s asserted patent claims are invalid because they “fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Although indefiniteness is a question of law subject to de novo review, the starting point of that review is almost always the district court opinion – thus the court here looked for errors in the district court decision. That is especially true here where the district court decision was based in part on underlying factual conclusions that receive deference under Teva.
Claims define the scope of the exclusive patent right and there are a number of benefits associated with having that scope clearly delineated. Because patentees have control of claim language, the law places a burden on patentees to also ensure clarity. Section 112 of the Patent Act requires that requires “one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” In Nautilus, the Supreme Court interpreted the statute as requiring claims to “inform those skilled in the art about the scope of the invention with reasonable certainty.” As I have written before, “reasonable certainty” is generally thought of as a high standard that is difficult to meet, but the Supreme Court did not elaborate on its meaning in the patent context. Up to now, the Federal Circuit has also resisted an exploration of the term’s meaning other than noting that the standard is significantly higher than was was previously in play.
The patent at issue covers an “exercise system” that includes “in-band communication” with a local server; “out-of-band communication” with the user; and a “relationship” between the in-band and out-of-band communication. Both the district and appellate courts found that this “relationship” was undefined and that the distinction between the two forms of communication was unduly ambiguous.
At the Markman hearing, the district court allowed expert testimony on the meaning and definiteness of these terms and the Federal Circuit approved of that approach – since “the indefiniteness of the claim terms simply cannot be resolved by reference solely to the intrinsic evidence (i.e., the claims, specification, and prosecution history).” The defendants here took an interesting tack of presenting ten-different extrinsic references and showing that the meaning of the communication forms would vary depending upon which was chosen. Thus, based upon that evidence, the courts found “that those skilled in the art understand that the terms ‘in-band’ and ‘out-of-band’ are relative terms, and only have meaning in a given context with a defined reference, such as a frequency, a channel, a protocol, time slots, and data streams.” Because the patents themselves offered no such context, they were deemed indefinite.
= = = = =
I mentioned above that indefiniteness is a question of law. A major limitation on that approach however comes from Teva, where the Supreme Court held that underlying factual conclusions regarding evidence extrinsic to the file history should be given deference on appeal. Here, the court found that the conclusions regarding the ten extrinsic references “constitute findings of fact, and we review such factual findings for clear error. Teva.”
= = = = =
Level of Proof Depends upon Purpose of Proof: Teva does offer an interesting dichotomy regarding factual conclusions that may need further exploration. Although parties may benefit from deference on appeal – there is also the higher standard of proof – “clear and convincing evidence” – that must be met before a claim may be found invalid. The result of this evidentiary burden then is that the level of proof required to support factual conclusions underlying a claim construction determination will depend upon the purpose for which the claim construction is being used. If invalidity then the underlying conclusions require presentation of clear-and-convincing evidence; if infringement then the court’s underlying conclusions require only a preponderance of the evidence.
B.E. TECHNOLOGY v. SONY MOBILE COMMUNICATIONS
link to cafc.uscourts.gov
” “that those skilled in the art understand that the terms ‘in-band’ and ‘out-of-band’ are relative terms, and only have meaning in a given context with a defined reference, such as a frequency, a channel, a protocol, time slots, and data streams.” ”
So then, how is that indefinite? You JUST SAID those of skill in the art know what it means!
It’s indefinite because the necessary “defined context” wasn’t provided by the applicant, per the sentence in Dennis’ summary immediately following the passage you quoted.
Here in Europe, “relative terms” are notoriously indefinite. Especially devoid of context. For example, everybody knows what “flexible” means. But that’s not the point.
Take the cast iron (say) of your embodiment, the one accused of infringing the claim: is it “flexible”? You say not but the patent owner says it is. You are both right.
In the context of diamond, or concrete, cast iron is flexible.
But then again, in the context of low carbon steel, cast iron isn’t flexible at all.
So, when the claim is not tied to steel or diamond, BOTH you AND the patent owner are right, right? Is the claim “definite”? Surely not!
It only need be definite in the context of the accused infringement.
Those of ordinary skill in the art of diamonds know cast iron is flexible. Its only when they want to infringe a claim that everyone becomes so confused.
Les Its only when they want to infringe a claim that everyone becomes so confused.
LOL
Wrong blog, Les. Did you forget the URL for your favorite echo chamber?
Les, with your announcement that only “in the context of the accused infringement” need the claim be definite you seem to be making up patent law on the fly.
Suppose the claim is to a stent with a new arrangement of struts and the best mode is of self-expanding (springy) nitinol. The acknowledged prior art includes much less springy stainless steel stents plastically deformed by a balloon. Your accused embodiment is also a stainless steel balloon-expansible stent.
The claim happens to include the word “flexible”. You are adamant, that your embodiment isn’t but the patent owner says of course it is “flexible”. How does the court decide what the claim means/covers?
The prior art stainless steel, when rolled into a sheet and then strips for a stent is clearly “flexible.” How else could they fish it from ones crotch or arm all the way over to ones gunked up ticker?
Did I say the stent was coronary, percutaneous and trans-luminal. They don’t have to be, you know. Thousands aren’t. Or have you decided to impose that “context” on the claim?
Even before you balloon expand the stent, it is already much stiffer than one of nitinol. Approaching the stiffness of diamond (although still some way to go, of course). Relative to other stents then, it isn’t “flexible” at all. Not at all.
You said the claim recited flexible, not the most flexible. Stainless Steel stents are flexible.
“Les, with your announcement that only “in the context of the accused infringement” need the claim be definite you seem to be making up patent law on the fly.”
That’s what the courts do, so why oh why can’t I?
I’ll defer to US attorneys, Les, on that last statement of yours.
Is a claim having pie as a constant definite?
Would that be like chemical claims with “ranges” of materials in a “comprising” format (with unstated “other” things like contaminants)…?
Pie can vary. It can be burnt or underdone, pumpkin, rhubarb, cherry, blueberry or apple…
Pi on the other hand is thought to be fairly constant.
oh…. and where I come from, it can also be pizza.
Pie, not Pi.
Les, can we type greek letter here? I don’t know how. It would help at times, like, this time.
Heck if I know, I have enough trouble with one alphabet…. and don’t get me started on bolding…..
Maybe someone should invent a better ….. oh… but then they couldn’t get a patent for it, ’cause…. generic computer….steps could be done with pencil and paper…. sigh…. I guess were stuck with 1980’s technology Ned…
Ned:
Keyboard ALT codes
ALT + 227 π
link to keynotesupport.com
yummy – thanks John!
Oh, but Ned…. Pi describes a “law of nature” or at least an approximation thereof… so, by your philosophy, such a claim would not be eligible.
My philosophy?
But the context need not be defined. In any context, there is a meaning to “in-band” and a meaning to out-of-band. What is being claimed covers any context and when an embodiment operates in context A the meaning of in-band and out-of-band under context A applies. When an embodiment operates in context Z the meaning of in-band and out-of-band under context Z applies.
Why is that indefinite?
If a method of clean up included the step: putting on protective gear, would that be indefinite?
No. In the context of dinner dishes, it means putting on rubber gloves. In the context Three Mile Island it means putting on lead lined BVDs. In the context of an Ebola ward it means putting on a hazmat suit.
Its not indefinite, though it might be broad.
In any context, there is a meaning to “in-band” and a meaning to out-of-band.
That’s nice. Learn to define your claim terms like a big boy.
One can’t define every word in a specification. When does it end?
Do we also have to define the words used in the definitions?
What of the terms used in the definitions of the definitions.
Who knew someone was going to find in-band and out-of-band sooooo perplexing?
If a method of clean up included the step: putting on protective gear, would that be indefinite?
If that step was used to distinguish claims from the prior art and “protective gear” wasn’t defined in the specification, there’s a good chance that the term is indefinite.
This really isn’t that hard. The glorious days when a court would bend over backwards to dig up some definition to rescue the patentee’s junky case are pretty much over. The Supreme Court pulled the plug, and thank goodness for that.
Oh, by the way: there’s more to come.
If a method of clean up included the step: putting on protective gear, would that be indefinite?
No. In the context of dinner dishes, it means putting on rubber gloves. In the context Three Mile Island it means putting on lead lined BVDs. In the context of an Ebola ward it means putting on a hazmat suit.
What about a person doing dishes who decides to wear earplugs because the clanging silverwear is loud? Is that “protective gear”? How about a plastic hairpiece that is supposed to keep hair off the dishes but also keeps dirty/soapy water off the hair? Is that “protective gear”? How about a shirt?
I know, I know: this is super d00per subtle stuff that nobody can predict. It’s way about a patent prosecutor’s pay grade to think about this. Better to just put the burden on the public.
“What about a person doing dishes who decides to wear earplugs because the clanging silverwear is loud? Is that “protective gear”? How about a plastic hairpiece that is supposed to keep hair off the dishes but also keeps dirty/soapy water off the hair? Is that “protective gear”? How about a shirt?”
Yes, those are also protective gear. Protective gear is any gear that protects something that might need protecting in the coarse of performing the method.
Terribly, oh soooOOOoooooo terribly broad….. so, find and example in the prior art and reject/invalidate the claim on that basis.
Be careful of the biscuits that you want to bake 😉
The Feds are taking en banc the case of an FBI agent who blew the whistle on wrongdoing, was subjected to a retaliatory OIG investigation, and dismissed from the Bureau for being less than candid when he did not understand that he was being investigated for his own wrongdoing. The specific issue is whether the Agent has an affirmative defense as a whistle blower.
Personally, I think the agent’s boss who gave him a low rating and called in the dogs should either be fired or assigned to work for the agent in question.
“was subjected to a retaliatory OIG investigation”
I do not doubt it at all. Overall the OIG seems ok on the whole when I dealt with them in a matter unrelated to anything about my person, but I wouldn’t put it past them at all to be the retaliators themselves. Specifically that which they’re supposed to be an “alternative to”.
This is why whistleblowing etc. needs to be a no. 1 concern of anyone concerned with anything in their fed gov. Someone knows that some sht done went down in most major screw ups, but nobody does anything because “managementlol”.
“The specific issue is whether the Agent has an affirmative defense as a whistle blower.”
I’m sure he doesn’t from the dumas rules that the Federal Circuit put on them through “interpretating lol” and from the bad language used in the statutes. Congress has to overrule that nonsense before pretty much anyone other than the most expert people at “whistleblowing” actually do formally “blow the whistle”. You have to be an expert in whistleblowing law to even be technically a whistleblower.
“Personally, I think the agent’s boss who gave him a low rating and called in the dogs should either be fired or assigned to work for the agent in question.”
Which is no doubt what “should” happen, but which would be entirely too hilarious and thus will not happen.
What did he blow the whistle about tho ned, or do you have a link?
link to cafc.uscourts.gov
Jesus, just getting ankle deep in that case shows that it’s a run of the mill cluster f that occurs anytime someone tries to make a whistleblower complaint.
I did like the part of “theft of furniture” where he removed it to stop it from being screwed up by the original people he was reporting lol. The mutual recollection document seems odd but likely the mistake of a legal amateur.
“The Board affirmed the AJ’s dismissal of Parkinson’s
whistleblower and USERRA affirmative defenses, relying
on its prior decision in Van Lancker v. Department of
Justice, 119 M.S.P.R. 514 (2013) that FBI agents were not
entitled to such affirmative defenses under 5 U.S.C.
§ 7701(c)(2)(B) because the FBI is excluded from the
definition of agency in 5 U.S.C. § 2302.”
Lulz. I have little doubt.
Anyway, yeah just reading that document should be enough to show why the feds cannot be trusted with whistleblower information at present. Their needs to be an entire dept. dedicated solely to whistleblower complaints, the handling thereof, and the immediate review of potential blowback. And they need to be more powerful in this role than any cabinet level member of the executive, second only to the pressy himself, and they should be, to the extent possible, separated out of the chain of command of the executive branch.
Looking on the bright side, at least they got this right:
“We thus hold that the lack of candor charge with respect
to the ask/tell distinction is unsupported by substantial
evidence.” and “Parkinson’s use of “approved” in that context
instead of “ratified” is thus not enough to prove the necessary
element of a knowing failure to be forthright. ” and “With regard to his whistleblower defense, we agree with Parkinson. ”
Still, that document does not detail what he actually put in the whistleblower complaint, but I think I found a relevant interbuts story. Apparently he thought that the “pilots” were using the FBI plane to go to nevada to hire ladies o the night and also using the inappropes images on the gov. computers on gov time. Which also explains why he removed the furniture, not wanting it to be ahem, soiled.
They def need to start making retaliation a criminal (de minimus perhaps) offense.
I did like this part though:
“In either case, the FBI is not an “agency” and is
thus incapable of taking “personnel action” under 5 U.S.C
§ 2302(a). ”
The federal BUREAU of investigations is not an agency, because because because it was defined as not being one. Lulz. Only in the US gov.
That being said, Taranto may be correct. Idk, the screwy language the congress uses is a travesty.
Will like to see what happens.
Man, people better hope someone doesn’t figure out “has a relationship to” means the same thing as “associated with” and is pretty similar to “based on.” It’d be a shame if all those claims that didn’t claim an algorithm and just claimed some usage of the variables used took a tumble.
Random, the problem here was that coined terms were used to distinguish the prior art, and they were not defined with any certainty in the specification.
So, there might have been something new here, but just what it was was not made clear.
Maybe I am missing something, but isn’t the question of whether the claims are indefinite somewhat independent of claim construction for infringement purposes? Construing a patent and instructing a jury about its legal scope is one thing, but holding a patent invalid based on contested dispute of facts is quite another.
Secondly, isn’t there a right to trial by jury for invalidity?
Ned, you remind me of the rule under English law, to “construe the claim as if the infringer had never been born”.
Max, true. But although we discussed this before, I do not recall the answer.
Does England have a requirement that the claims be reasonably certain?
Consider a claim that distinguishes over the prior art based upon a generic type of measurement where that measurement can be any one of a number of different measurements, but the specification does say which. How is one to tell what the claim covers?
(Our indefiniteness cases generally have something of this ilk wrong with them.)
Yes Ned, the EPC does.
Back in the day when the EPO as IPEA was required to examine thousands of indefinite claims written in the USA it would object to them as unclear. This infuriated the US attorneys who had written them, resulting in furious correspondence. The EPO devised a work around. It stopped objecting that they were unclear. Instead it construed them broadly and found them in consequence to lack novelty. The cure (insert more definition) lay in the hands of the drafter.
After the EPO issues, lack of clarity (indefiniteness) is not a ground of invalidity. But the EPO, and the courts in Europe, are not deterred. They find the claim invalid for lack of sufficient disclosure, lack of novelty, or whatever. You only need to reach a “more likely than not” standard to prevail in Europe, with your validity attacks.
Specifically, with unusual units of measurement in the claim, your definition in the specification had better be unambiguous and rigorous. Otherwise you’ll go down for insufficiency. Or lack of novelty.
And when you try to add more definition, you can’t, cos you’re doing what’s not allowed, namely, adding subject matter.
In other words, drafting is key. In First to File Europe (as in any FtF jurisdiction), you have to get it right first time.
“Because the patents themselves offered no such context, they were deemed indefinite.”
Oh snap.
Although I’m not 100% sure that this is the right outcome here.
Part of the issue may have been that the spec defined “in-band” and “out-of-band” poorly:
Typically associated with an exercise device is a user such as user 266A-266N. The users 266A-266N interact with the system 250 at least through the exercise devices 264A and 264N. Such interaction will be referred to herein as “in-band” interaction. However, the users 266A-266N can also interact with system 250 through “out-of-band” interactions 268A-268B…
Of course, out-of-band interaction can also be performed in-band.
Sounds like the drafting attorney didn’t really know what the terms meant but was told by the inventor that those were important terms of art, so he or she simply added them in with the vaguest possible handwaving rather than spend the effort to look up definitions or (gasp) admit they don’t know and ask the inventor.
Of course, out-of-band interaction can also be performed in-band.
Of course it can! Because it’s just a word salad. Black is white, up is down, and less than half includes more than half. Because I scrivened it!
Seriously, it sounds like all they need is a processor configured to establish the band attribute status. Then you can perform the establishing step dynamically, using a remote server comprising an attribute establishment data object. And don’t forget the personalized user interface comprising a band-associated encryption module!
Correction: an attribute establishment data object like that would probably weight too much for this system to be implemented on a mobile platform.
That’s why its claimed functionally. In embodiments where weight is an issue, the attribute establishment data object can be implemented in the cloud, which can handle more weight than the name might connote.
Why, that sounds just like “magic” or “witchcraft”….
😉
AbstractiDan, the inventor was a patent “attorney,” one Paul L Hickman, RN 28,516. He signed the issue fee. However, one Dr. Michael Rostoker*, 31,193, signed the amendment adding the in-band and out-of-band limitations, arguing that the prior art did not disclose these limitations.
Of course not, they were coined terms.
But, such is the way of the modern patent attorney or agent.
*Rostoker no longer practices.
And this is why he no longer practices link to caselaw.findlaw.com
omg.
LOL
That’s the second time in less than a year that a bit of a research on a junk patent appealed up to the CAFC turns up some illegal sex hijinx. I guess desperation in one endeavor just bleeds over into another.
More details. He apparently was a sex tourist trying to get the underage girl into the US to live with him at his backwoods home under “secure conditions.” link to sfgate.com
They make movies about guys like this. See, e.g., Room.
It gets better: Rostoker Sues his Attorneys From Jailhouse
link to therecorder.com
Man I’d like to read those recorder articles but I don’t want to register.
I did wonder how he knew about her supposedly defrauding the immigration people if he wasn’t in on it though. If he married her, that explains it lol.
I’m sure Lester can explain it to you.
He can explain everything, especially if it involves explaining away the putrid odor surrounding a junk patent.
Trial details. link to therecorder.com
He married her in Vietnam.
Now, wait a minute here.
Although I’m not 100% sure that this is the right outcome here.
I am. Abstract iDan is right – the drafting attorney likely had no idea what the invention, if there was one, was about.
DanH, but the drafting attorney was the inventor.
DanH, but the drafting attorney was the inventor.
Ew. The drafting attorney is one of the inventors, anyway. That’s often a red flag.
No big surprise, but all of the “in-band” and “out-of-band” stuff was added to the claims by amendment.
One of two, Ned. It’s possible that the other inventor was the brain of the operation, while the drafting attorney was… well, clearly, not the brain.
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