Federal Circuit Affirms $4.6 million award for litigation misconduct

ICU Medical v. Alaris Medical System pic-14.jpg (Fed. Cir. 2009)

ICU’s patents covers technology for using syringes to add drugs to an IV. The district court granted summary judgment of invalidity and also awarded attorney fees and found a violation of Rule 11 of the Federal Rules of Civil Procedure. Alaris was awarded $4.6 million in attorney fees and sanctions. On appeal, the Federal Circuit affirmed.

Section 285 of the Patent Act provides for the award of attorney fees to the winning party in “exceptional cases.” In Brooks Furniture, the Federal Circuit discussed a two-part test for whether attorneys fees may be awarded due to litigation conduct. The test requires that “both (1) the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless.” A district court fee award will be affirmed absent clear error.

The problem – ICU argued that the claim term “spike” could be a non-pointed structure such as a tube even though the specification “repeatedly and uniformly describes the spike as a pointed instrument.” The claim construction was not ICU’s only problem:

For example, the district court found that ICU made “multiple, repeated misrepresentations . . . to the Court regarding its own patents in an effort to conceal what are now characterized as errors in order to rescue the TRO/PI from denial.” These misrepresentations related to (1) ICU’s assertion of claims in the ’509 patent that were identical to claims in the ’592 patent (i.e., assertion of double-patented claims); (2) ICU’s assertion of more double-patented claims from the ’509 patent even after Alaris and the district court warned ICU of the double-patenting issue; (3) ICU’s misrepresentation of Federal Circuit authority; (4) ICU’s representation that figures 13 and 20–22 of the common specification “clearly” disclosed a spikeless embodiment, only to later acknowledge that these figures do not disclose such an embodiment and state that its representation was an “honest mistake.”

Although the Brooks Furniture rule discusses objectively baseless “litigation,” that rule is not construed to focus on the litigation as a whole. Rather, attorney fees may be assessed if any portion of the litigation is brought in bad faith and in an objectively baseless manner. Here, the Federal Circuit found that the lower court had “appropriately exercised its discretion in awarding attorney fees only for [a] portion of the litigation.”

Notes:

  • Federal Circuit Decision 08-1077.pdf
  • District Court award of Fees: 232495.pdf. Bottom line: “The Court finds that Alaris is due $4,587,622.44 in attorney fees and $164,721.19 in costs for the reasons set forth below. . . . This represents a reasonable lodestar calculation for Alaris’ work . . . , and it constitutes a reasonable pro rata amount of Alaris’ total expenditure of $11,000,000 in attorney fees and $2,000,000 in costs overall in this case.”
  • District Court decision to find a Section 285 exceptional case and Rule 11 sanctions. 232494.pdf. Money Quote: “[The submitted declarations] do not substantively justify or excuse ICU’s litigation tactics or show its good faith. These declarations were prepared by ICU’s litigation counsel for the purpose ofopposing the Rule 11 and Fees Motions, and comprise mostly self-serving assertions of good faith by interested witnesses, such as ICU’s CEO (Dr. George Lopez), trial counsel (Fulwider, Patton, Lee & Utecht; Paul Hastings; or Pooley & Oliver), patent counsel (Knobbe Martens) and its paid experts (Dr. Maureen Reitman and Bob Rogers). These materials lack the indicia of credibility provided by declarations or opinions from outside, independent counsel or experts, particularly outside patent, as opposed to litigation, counsel. Most of the materials appear to have been “memorialized” in retrospect, providing marginal support compared to, for example, an ex ante documented and vetted analysis that preceded the litigation or that, al minimum, preceded the TRO/PI request and the inclusion of the “spike” claims in the amended complaint.”
  • Although the district court decision appears to identify the Fulwider firm as “trial counsel,” that appears to have been a mistake made by the court. A Fulwider attorney has indicated that their firm “was never one of ICU’s trial counsel in that matter, and thus made no representations to the court on ICU’s behalf.” In fact, ICU appears to be somewhat of a toxic client. According to the court documents, Fulwider represented ICU in the 1990’s. At some point ICU dropped the firm as a client and sued for malpractice based on Fulwider’s representation of alleged ICU competitors. Fulwider did not admit wrongdoing, but a 2007 press release by ICU claims that ICU “will be paid $8 million in settlement of its claims against Fulwider.”

80 thoughts on “Federal Circuit Affirms $4.6 million award for litigation misconduct

  1. 79

    >>Commenter 2: No. I’m saying that some extra >>consideration should be given to their >>handling. They smell terrible, too.

    I guess “equal under the law” just doesn’t have any meaning to you.

  2. 78

    “As for my age…well, let’s just say that you (it sounds like) and I both were thrilled when our fathers brought home that first color TV.”

    Are you talking about 6? He wasn’t even aware that there was ever anything other than color TV until you made that comment. My guess is that he was actually conceived in front of a 1985 model. Over-under, anyone?

  3. 77

    “Be clear man, you have to look at the whole paper plus all prior art everywhere in conjunction with that whole paper for enablement, not just the paragraphs/lines relied upon for any given rejection.”

    The rest of the 309 word press release says nothing about this “product”…and I am of course granting that the PHOSITA has knowledge of any/all relevant prior art.

    Your other points, looks like we’ll just have to agree to disagree on.

    As for my age…well, let’s just say that you (it sounds like) and I both were thrilled when our fathers brought home that first color TV.

    Thanks again for your time & thoughts.

  4. 76

    Meanwhile, on the TrashlyO Blog:

    Commenter 1: Homeowners become upset if you don’t take their diapers away.

    Commenter 2: I think diapers should be treated as biological waste and not as typical refuse.

    Commenter 1: Are you saying that you should leave the diapers on the sidewalk.

    Commenter 2: No. I’m saying that some extra consideration should be given to their handling. They smell terrible, too.

    Commenter 1: It is really hard to believe that you are a garbage collector.

    Commenter 2: *shrugs* That’s your problem, sister.

  5. 75

    MM wrote:
    >>If the inventor didn’t stop to think whether >>a ‘spike’ was necessary, then the inventor >>didn’t conceive of a spikeless embodiment, in >>which case the inventor didn’t invent a >>spikeless embodiment, in which case a >>spikeless embodiment can not possible be the >>heart of the invention.

    It is really hard to believe that you do prosecution.

  6. 74

    “using the same Dialog database this “reference” was drawn from–another purported PR piece announcing the launch of the same exact product…over 1.5 years later”

    Like I said, apps contesting need relevant evidence. Not irrelevant evidence.

    “If they’re all doing nothing more than regurgitating the same exact purported PR piece from the same exact original source (as they are here), why yes.”

    /facepalm. You mean the exact same website, publicly available to all, that exact same purported original source?

    “And there’s the key difference…actual, physically-printed materials can normally be relied on. ”

    Ahh, but automated databases that do nothing but record lists of dates of websites and a copy of that website from that date can not normally be relied upon. I gotcha. I understand completely. 100 humans making calculations can normally be relied upon, but my TI-89 (that was lost my senior year :( ) can normally not be relied upon. Makes perfect sense to me.

    I have a question, and no offense to you, but are you over the age of 50? Or maybe 70?

    Just an FYI the history of a given wiki is remarkably accurate and will show you when every change was made and by whom (often anon). The only reason there are charges of it being hearsay is because anyone can modify it. That isn’t true about most websites in general however, kind of like ones often cited in patent prosecution.

    “Finally; here’s the relevant 2 paragraphs of the “reference”…in the belief that we can both agree that this is clearly not enabling for a PHOSITA:

    “HelpWorks Web Edition(TM) supports both a professionally-directed deployment model – in which end users are professional caseworkers – or as stated above, a self-service model in which consumers use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.””

    Be clear man, you have to look at the whole paper plus all prior art everywhere in conjunction with that whole paper for enablement, not just the paragraphs/lines relied upon for any given rejection.

    Just out of curiousity, and not commenting on any aspect of any case, what prey tell, is exactly what you feel like is not enabled?

    Why apps fight the PTO in some cases where they are blatantly doing them a favor I will never understand.

  7. 73

    “using the same Dialog database this “reference” was drawn from–another purported PR piece announcing the launch of the same exact product…over 1.5 years later”

    Like I said, apps contesting need relevant evidence. Not irrelevant evidence.

    Wait wait wait, a product can’t be new twice right? L… you get the picture. Wait wait, just because a newsman says that something is being announced for the first time means that a perfectly reliable archiving mechanism is obviously off the mark, even when the documents themselves offer self dating within themselves? Right on bro.

    “If they’re all doing nothing more than regurgitating the same exact purported PR piece from the same exact original source (as they are here), why yes.”

    /facepalm. You mean the exact same website, publicly available to all, that exact same purported original source?

    “And there’s the key difference…actual, physically-printed materials can normally be relied on. ”

    Ahh, but automated databases that do nothing but record lists of dates of websites and a copy of that website from that date can not normally be relied upon. I gotcha. I understand completely. 100 humans making calculations can normally be relied upon, but my TI-89 (that was lost my senior year :( ) can normally not be relied upon. Makes perfect sense to me.

    I have a question, and no offense to you, but are you over the age of 50? Or maybe 70?

    Just an FYI the history of a given wiki is remarkably accurate and will show you when every change was made and by whom (often anon). The only reason there are charges of it being hearsay is because anyone can modify it. That isn’t true about most websites in general however, kind of like ones often cited in patent prosecution.

    “Finally; here’s the relevant 2 paragraphs of the “reference”…in the belief that we can both agree that this is clearly not enabling for a PHOSITA:

    “HelpWorks Web Edition(TM) supports both a professionally-directed deployment model – in which end users are professional caseworkers – or as stated above, a self-service model in which consumers use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.””

    Be clear man, you have to look at the whole paper plus all prior art everywhere in conjunction with that whole paper for enablement, not just the paragraphs/lines relied upon for a rejection.

    Just out of curiousity, and not commenting on any aspect of any case, what prey tell, is exactly what you feel like is not enabled?

  8. 72

    “You continue to be a beacon of industry decorum and enlightenment, MM.”

    Why if I didn’t know better, I’d say Mooney just got spanked (again) using the well known and time honored tactic of sarcasm.

    Bravo, Pro Se, Bravo.

    And I really mean that.

  9. 71

    “…you would need evidence showing that such occurred. You would not need evidence showing something else entirely.”

    Well; except that it’s the examiners who are legally charged with the responsibility of demonstrating that any particular reference can be relied on…and in any case, I was quickly able to find–using the same Dialog database this “reference” was drawn from–another purported PR piece announcing the launch of the same exact product…over 1.5 years later.

    Looks like a date problem there to me.

    “Perhaps you believe that all the automated crawlers/archivers magically assigned the wrong date? Mhmmm.”

    If they’re all doing nothing more than regurgitating the same exact purported PR piece from the same exact original source (as they are here), why yes.

    “The same way all librarians must give the wrong date to references in their libraries.”

    And there’s the key difference…actual, physically-printed materials can normally be relied on. “Internet”-type data bases, web sites, web pages, electronically archived this and archived that, etc (Wikipedia, anyone?) should not.

    Finally; here’s the relevant 2 paragraphs of the “reference”…in the belief that we can both agree that this is clearly not enabling for a PHOSITA:

    “HelpWorks Web Edition(TM) supports both a professionally-directed deployment model – in which end users are professional caseworkers – or as stated above, a self-service model in which consumers use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.”

    “The power behind this unprecedented flexibility in application and access is PMA’s newly released Expert Eligibility Server(TM) (EES) technology. The EES engine allows an agency to utilize HelpWorks Web Edition(TM) as well as other applications that will leverage this dynamic technology. With EES as the backbone, agencies can rapidly deploy eligibility solutions for touch-screen kiosks, interactive voice response systems, the Web and many other platforms.”

    Anyone else (besides Malcolm) think this is enabling?

    Mr.6, I do appreciate your time and thoughts; even those I respectfully disagree with.

  10. 70

    “So “google-whacking” may not be quite as efficient or effective for finding prior art as you’ve made it out to be, Mr.6?”

    I haven’t looked at the search report but there’s an overwhelming chance that googling was what turned up that article that you’re currently facing. And it probably took about a minute. So yes, I will stand by the efficiency and effectiveness. As I have explained before, if I try to google a case where art that is easily googled has already been turned up then I will simply take 10 seconds to google the art that has already been turned up.

    “system/process”

    No it isn’t. It is a system. Comprising means for achieving some ends. End of story. Review 112 6th.

    “Really? Since when did accurate reference dates and their being actually enabled become unimportant?”

    Since when the accurate reference date is set forth in black and white and the reference being blatantly enabling to one of ordinary skill. As this tidbit relates to your specific case I will refrain from saying.

    “Best place is p.14-16 of the brief itself.”

    Many thanks. After having looked at claim 189 in more detail especially the end, I note that I wish you gl because you’ll need it, either that or a confuzzled ABJ.

    “Conventional payment methods were acknowledged…those I’m actually claiming (i.e. pieces of [the value] of the benefit(s) as payment, etc) are in fact unique & non-obvious.”

    Then don’t challenge (traverse) the official notice. What was put forth was BEYOND SUBSTANTIAL EVIDENCE, any reasonable jury, heck, ANY JURY at all, would know that the statement made is factual. So you need to argue that official notice hasn’t been taken of the actual limitations that are in the claim. Then explain why the fact noticed is insufficient to meet the limitation.

    “Conventional payment methods were acknowledged…”

    Claim 189, last two lines claims conventional payment methods doesn’t it? You don’t want it to, but look really hard and I’ll bet you’re in for a surprise. There is no claim that I know of that says: through cash or cash equiv of some percentage of at least one benefit. Look really hard at what the cash must be a percentage of. Bingo. You see good sir, experts at reading limitations out of claims think alike. ABJ’s are also quite good at it.

    Aside: Do you see why this challenging business is dangerous in the wrong hands JD? People do not even understand what they are doing when they challenge. People challenge when they don’t even need/want to challenge, they want to argue the determination of obviousness, in some cases based on the fact that limitations are still missing. They feel like the challenge is a substitute for that when it certainly is not, it is completely different from that. When the examiner shows them a receipt from a mcdonalds (or whatever) as proof of his common knowledge official notice then an app that has challenged for the wrong purpose is still stuck arguing the obviousness of the combination, which is all they needed to do in the first place.

    “I grant you that my file is rather weighty at this point, Mr.6; but was it my mistake to think you’d at least spend sufficient time to read & understand enough of the app…at least on those items you’ve elected to make comments on?”

    Had to peruse sorry. Like I said, if this case issues before 2021 let me know, I’ll spend a day on it.

    “One has only to read their TOU/TOS to see just how strongly they stand behind their so-called “data.””

    One has only to contact the webadmin/author for the website in question to confirm their data. Perhaps you’d like to see the same site brought up in another “wayback” site? There are several, all probably have the site you’re interested in. Perhaps you believe that all the automated crawlers/archivers magically assigned the wrong date? Mhmmm. The same way all librarians must give the wrong date to references in their libraries.

    Look, I’ll give you that there could be a mistake with wayback in any given case, but you would need evidence showing that such occured. You would not need evidence showing something else entirely. I’m not going to comment on the specifics of your case, but take from that what you will.

    “Enabled? From 117 words of a 309 word press release? You can’t be serious.”

    /facepalm

    Protip: Don’t call a system comprising structural part 1, structural part 2, structural part 3, and structural part 4 a system/process, it is a system. Besides, rumor has it the CAFC hasn’t taken a shine to those types of hybrid claims.

    In any event, overall, gl.

  11. 68

    “those I’m actually claiming (i.e. pieces of [the value] of the benefit(s) as payment, etc) are in fact unique & non-obvious.”

    Take you bullcrap somewhere else, please.

  12. 67

    “Sure thing pro se.”

    So “google-whacking” may not be quite as efficient or effective for finding prior art as you’ve made it out to be, Mr.6?

    “Regarding claim 181 though… Tandy sensation, 1992 /w network printer?”

    Um…you did notice that the invention is a system/process for matching entities with benefits (“benefits” being clearly defined in my spec), right?

    “When the small matters of the date of the reference and the enablement of the reference are dealt with, that should sufficiently seal the deal.”

    Really? Since when did accurate reference dates and their being actually enabled become unimportant?

    “Can you point me to your specific contesting of official notice that you refer to in your appeal brief?”

    Best place is p.14-16 of the brief itself.

    “…charging for services provided to users was well known in the art of business at the time the invention was made, is noteworthy because it is blatantly factual and has been “challengedlol” by the applicant.”

    Conventional payment methods were acknowledged…those I’m actually claiming (i.e. pieces of [the value] of the benefit(s) as payment, etc) are in fact unique & non-obvious.

    I grant you that my file is rather weighty at this point, Mr.6; but was it my mistake to think you’d at least spend sufficient time to read & understand enough of the app…at least on those items you’ve elected to make comments on?

    “Maybe you can do him a favor and vet the new piece of art that is applied to 181 as being dated when wayback says it was dated and also likely being enabled.”

    Er, right…everyone knows how accurate the automated, unvetted wayback is. One has only to read their TOU/TOS to see just how strongly they stand behind their so-called “data.”

    Enabled? From 117 words of a 309 word press release? You can’t be serious.

    In any case, though, thanks for your thoughts; and for cutting me some slack.

    And yours as well, JohnDarling.

  13. 66

    Mr Morgan, I’m disappointed in you. Nothing against claim broadening, as such, in Europe, provided you do it before issue.

  14. 65

    Some of the 112 confusion as to claim broadening [in particlar on the part of some CAFC judges in recent years] has to to with confusing the traditional clear distinction between electrical & mechanical art claims versus chemical (“unpredictable art”) claims. In the former, specification disclosure support for a single species was previously considered adequate to support broad generic claims, as long as they did not read on prior art. There was even an en banc decision support for doing so during prosection to cover competitive products. In the latter art, however, more than one species is usually required to support genus claims and 112 rejections used far more frequently to prevent claim broadening. However, cases like LizardTech and a number of others seem to be applying chemical practice limitations or narrrowing interpretations to electrical and mechanical claims.
    P.S. The inability to broaden claims in EPO equivalent applications after filing is another good reason to file U.S. cases with the broadest claims possible to begin with.

  15. 64

    “These declarations were prepared by ICU’s litigation counsel for the purpose of opposing the Rule 11 and Fees Motions, and comprise mostly self-serving assertions of good faith by interested witnesses, such as ICU’s … trial counsel (…Pooley & Oliver)…. These materials lack the indicia of credibility provided by declarations or opinions from outside, independent counsel or experts, particularly outside patent, as opposed to litigation, counsel. Most of the materials appear to have been “memorialized” in retrospect, providing marginal support compared to, for example, an ex ante documented and vetted analysis that preceded the litigation or that, al minimum, preceded the TRO/PI request and the inclusion of the “spike” claims in the amended complaint.”

    Is this the same Pooley & Oliver from which the oft-discussed potential USPTO Under-Secretary Jim Pooley emerged?

  16. 62

    > > “So essentially now, any issued claim which was not an originally-filed claim and is broader than the originally-filed claims is invalid under 112 first paragraph?”

    > That appears to be the case.

    Rather, it depends on whether the spec supports the broader claims, either explicitly or implicitly. I know that’s what you meant…

  17. 61

    why don’t we move our 112 discussion over to Dennis’ new article — Written Description: Federal Circuit Again Invalidates Broadened Claims. (Thank you, Dennis, for that article)

  18. 59

    I swear the typos weren’t in the version I originally posted

    If I describe an invention comprising A, B, C, D, and E, I should be able to claim the subinvention that is the combination of A, B, and C alone, if that combination is novel and nonobvious even if I see that D and E are not required until later.

    In your view, exactly how would a broadened claim meet the written description requirement under the holding in this case?

    It’s funny, but I have had no problems with Festo, E-bay, or KSR; I thought they were all sound decisions. However, I believe Liebel-Flarsheim and the present case are a much more radical departure from current practice.

  19. 58

    bsn “The heart of the invention was the technique of pushing the tube through the seal. The patent draftsman (and perhaps the inventor) didn’t stop to think whether a ‘spike’ was actually necessary.”

    I guess it depends on how you define “invention.” If the inventor didn’t stop to think whether a ‘spike’ was necessary, then the inventor didn’t conceive of a spikeless embodiment, in which case the inventor didn’t invent a spikeless embodiment, in which case a spikeless embodiment can not possible be the heart of the invention.

  20. 57

    Leopold,

    If a describe an invention comprising A, B, C, D, and E, I should be able to the subinvention that is the combination of A, B, and C alone if that combination is novel and nonobvious.

    In your view, exactly how would a broadened claim meet the written description requirement under the holding in this case?

    It’s funny, but I have had no problems with Festo, E-bay, or KSR; I thought they were all sound decisions. However, I believe Liebel-Flarsheim and the present case are a much more radical departure from current practice.

  21. 56

    You don’t say, Question. Is that why the sky is falling?

    Several days ago, I wrote on the Patent Prospector that Judge Moore had been nobbled by the Europeans. I take it that you agree.

  22. 54

    “If you pay peanuts, you get the work of monkeys.”

    I wonder if Mooney prefers shelled or unshelled?

  23. 53

    Agreed Leopold. The contributer called “question” is one of the many whose real name is “Chicken Little”. Mooney has the point, that “enablement” and 112(1) provide alternative ways to stop the mischief (anarchy?) of a covetous Applicant going after a legitimate design-around with a late-filed prosecution amendment. Plenty of prosecution claim broadening goes on within the EPO, without offence against Art 123(2). So, why not also in the USA, provided Applicant meets the statutory requirements for enablement and a written description, on the filing date. Applicant starts with a clean white sheet of paper. On it he can define his invention exactly how he wants. It’s not that difficult, to identify the irreducible minimum of technical features that will deliver the contribution to the art that the inventor asserts is characterizing his invention. You just need a tradition that this is what justifies the hourly rate of a trained patent attorney. Maybe clients need to grasp that drafting, especially in the mech arts, is high level work. If you pay peanuts, you get the work of monkeys.

  24. 52

    “Unless this case is exceptional. But it is exceptional, isn’t it?”

    Perhaps not so exceptional. After all, as first noted above by TJ, there are at least 3 cases (Liebel-Flarsheim, Automotive, and Sitrick) that struck down late-presented claims for failing to meet the enablement requirement.

  25. 51

    “So essentially now, any issued claim which was not an originally-filed claim and is broader than the originally-filed claims is invalid under 112 first paragraph?”

    That’s funny, I don’t recall reading that holding in the decision. Again, am I reading the right case? It seems pretty clear to me that whether a broadened claim meets the written description requirement is going to depend on exactly what’s in the specification. But I suppose it’s more exciting to run around in circles and yell that the sky is falling.

  26. 50

    “So essentially now, any issued claim which was not an originally-filed claim and is broader than the originally-filed claims is invalid under 112 first paragraph?”

    That appears to be the case.

  27. 49

    No Mr Bloom, it had not occurred to me, so I’m grateful for that insight. Let me explain. I was thinking of the outcry this decision is causing “Moore is a lightweight” etc. which suggested to me that many think this case to be wrongly decided ie an exception to the normal rule. F&R evidently thought that there was nothing in the law standing in the way of a win for their client. As to there being anything incompetent about the original drafting, did discovery reveal the inventor instructing his patent attorney “The spike is an essential feature”? I think not.

    So, yes, I guess I am contradicting myself. Unless this case is exceptional. But it is exceptional, isn’t it?

    Thanks again. Every time somebody picks me up on my lack of clarity, I learn something.

  28. 48

    “With decisions like this, we see signs of a returning emphasis on the need for drafting to be done properly. In other words, a return to basics.”

    “First to File Europe thinks it wrong to claim one invention on filing, then switch to a different one after filing, but the USA thinks there’s nothing wrong with that…”

    Max, has it occurred to you that you’re contradicting yourself? My take-away from this case is that the prosecuting attorney tried to belatedly (after filing) claim material that the inventors hadn’t invented, and the court (in the USA) didn’t let the patentee get away with it. Thus it would seem that both of your suggestions are wrong – there wasn’t necessarily anything wrong with the original drafting and “the USA” doesn’t let you switch to a different invention?

    Or did I read the wrong case?

  29. 47

    It all depends what one means by “new matter”. Clearly the definition in Europe is different from that in the USA. I will attempt to expose the difference.

    Europe: If the PHOSITA can derive from the amended doc some technical teaching over and beyond what was directly and unambiguously derivable from the app as filed, sm has been added.

    The USA: if the elements of the claim after amendment are all in the app as filed, then the amendment, to delete a technical feature from that claim, doesn’t add any sm.

    In other words, First to File Europe thinks it wrong to claim one invention on filing, then switch to a different one after filing, but the USA thinks there’s nothing wrong with that (which is maybe a consequence of “First to Invent”).

  30. 46

    Sorry “Slothrop”

    That answer is exactly wrong. A broadening claim amendment would not introduce new matter. Please keep misleading people so they will come running to someone like me who knows what they are talking about. I hope you don’t teach patent law.

    BTW, it looks like the puppet master is deleting anti-Mooney posts again… what a surprise.

  31. 45

    “So, can you introduce new matter by making a purely broadening amendment?”

    Yes
    Yes
    Thrice yes

  32. 44

    Somebody above wanted the judge to apportion the 4.6 million between the individual lawyers involved. But would that be right? They’re all in it together, aren’t they? Who was egging who on? What’s in the Mooney point, that ICU sees the litigation as a success, notwithstanding?

    For an example of naming and shaming, see the decision of the English Patents Court posted on the PATLIT blog, in which Judge Robin Jacob savages patent attorney Andrew Sheard, acting for Human Genome Sciences against Eli Lilly. Sheard made the mistake of telling the court that he had simply no time to reply to the EPO (on the opposition proceedings running in parallel) till the very last day of the EPO’s 4 month reply term, despite the advanced stage of the connected litigation in England. Regardless what client instructions lay behind his tale, it was Sheard who got the lash. Was that right? Is there a limit, of loyalty to a client, beyond which a lawyer should decline to follow instructions?

  33. 43

    What goes around comes around. When I started in this profession, drafting was seen as the pinnacle of our skill set. Once you’ve filed at the PTO, it’s too late to re-define the invention that is the subject matter of the application for protection. Why? For good solid public policy reasons. OK, in chem/bio, just claim “Molecule X”. No great thinking effort required. But in mech. eng. there’s a real challenge, to extract from the embodiment on your desk the fundamental technical feature combination that defines the contribution to the technical field. Here in Europe, many trainees, good learners all, fail because they somehow haven’t got the core skill of distinguishing the wood from the trees, and then writing a competent claim 1. Note how many candidates pass the other exam papers, to become a British and European Patent Attorney, but nevertheless FAIL the 4 hour examination called “Drafting”. And that’s after 3 years in a law firm doing not much else but….drafting.

    Of course, the European Patent Office Boards of Appeal, and the European litigation community, know all this, and so they all expect a certain minimum level of drafting skill. I have the feeling that, in the USA, up till now, the courts have grown enured to poor quality drafting, thinking it unavoidable, and so tend to make allowances for it, or excuse it. But maybe not any more.

    With decisions like this, we see signs of a returning emphasis on the need for drafting to be done properly. In other words, a return to basics. Hoorah.

  34. 42

    ‘Do you a compelling reason to suspect that the “heart of the invention” was not described and enabled in this case?’
    Yes. The heart of the invention was the techniwue of pushing the tube through the seal. The patent draftsman (and perhaps the inventor) didn’t stop to think whether a ‘spike’ was actually necessary. The decision was correct, but that doesn’t disguise the fact that Alaris copied the invention.
    And I know many chemists and biotech attorneys who avoid simple mechanical drafting. I am pleased that you are one. I also know many others who believe that ‘anyone can do it’. The results have been known to cause me an involuntary physical reaction.

  35. 41

    Sure thing pro se. But as prior art sufficient to cover the claims has already been provided however I have trouble googling, just like in the other cases that have been put forward where prior art has already been ID’ed, see phawk and others. The prior art of record is beyond sufficient actually, for the first claim at least, and sadly I must limit myself to the first claim in online discussions of complex cases.

    Your appeal brief was lulzy though. I looked at the first 5 or so issues, I don’t see you winning on those, but you may prevail on one of your other thousand.

    Regarding claim 181 though… Tandy sensation, 1992 /w network printer?

    PS I especially liked your “for the first time in history” line. I’d like it more except for the small matter of actual history having shown it being done before. I also enjoyed the parts of your argument where you admit that your invention is broader than the species disclosed in the prior art. When the small matters of the date of the reference and the enablement of the reference are dealt with, that should sufficiently seal the deal.

    I won’t keep you further from your date with KSR and Bilski.

    Note guys, we have the app number of a case we’ll likely be seeing on PO in the next year.

    Can you point me to your specific contesting of official notice that you refer to in your appeal brief? I would like to see if it rises to the occasion, and if it does not, what happens to it on appeal. Despite the poor manner in which the examiner put forward the official notice, the fact noticed: that charging for services provided to users was well known in the art of business at the time the invention was made, is noteworthy because it is blatantly factual and has been “challengedlol” by the applicant.

  36. 40

    MM: “No, that is not what I mean. Next strawman, please.”

    Malcolm, I wonder if it’s possible that you are full of crap.

    Are you full of crap?

  37. 39

    From the decision:

    “ICU contends that the presence of claim 13 precludes a construction of spike that requires “a pointed tip for piercing the seal,” lest claim 13 be rendered superfluous. The district court rejected this argument and noted that “claim 13 was only added to the ’592 patent in 2001, years after the filing date of the original patents, the issuance of the ’866 and ’862 patents, and the introduction of the allegedly infringing Alaris products.”

    Golly, how shocking that a litigious entity would behave this way.

  38. 38

    “Malcolm, you mean that you have never amended claims to make them broader in one or more aspects during prosecution?”

    No, that is not what I mean.

    Next strawman, please.

  39. 37

    bsn “As I see it, the patent prosecutor’s role is to get to the heart of the invention … and then to draft a specification which claims, descibes and fully enables that heart.”

    Do you a compelling reason to suspect that the “heart of the invention” was not described and enabled in this case?

    “as I have seen too many times, maybe the prosecutor has a biology or chemistry degree and assumed he could do mechanical cases because “they are so simple, anyone can do them.”

    That’s odd because all of the chem/bio types I know avoid drafting mechanical cases like the plague because of the vastly different terminology used. I wonder if it’s possible that you are full of crap.

  40. 36

    “I’m laughing at the idea that a “good prosecutor” could have prevented this debacle. This case has nothing to do with “good” or “bad” prosecution and everything to do with greed.”

    Here we go with the greed. In the Peace Corps they didn’t have greed…

  41. 35

    question, Defector has already answered you. Think, and ask questions.

    ‘Given adequate resources, a good prosecutor should have/would have asked the inventors, “is a pointy spike needed?” and if they said, “no” the prosecutor should have incorporated alternatives into the specification. *That* is why good patent prosecutors should be well-paid. It is their *job* to identify design-arounds and incorporate them into the specification. But, as I have seen too many times, maybe the prosecutor has a biology or chemistry degree and assumed he could do mechanical cases because “they are so simple, anyone can do them.” ‘

  42. 34

    What is the lesson (the practice tip) which we patent prosecutors are to learn from the decision?

  43. 33

    Malcom, you need to distinguish between an invention and an embodiment of that invention. You are right, it is important to agree on what the invention is – and one of the ways in which that is done is to think through and talk through possible design-arounds. As I see it, the patent prosecutor’s role is to get to the heart of the invention (the “pith and marrow”, according to old British law), and then to draft a specification which claims, descibes and fully enables that heart. Claiming a specific embodiment and not the actual invention is close to, if not actual, malpractice.

  44. 32

    So essentially now, any issued claim which was not an originally-filed claim and is broader thn the originally-filed claims is invalid under 112 first paragraph?

  45. 31

    I am with fish bones.

    Malcolm, give us a good example of when a broadening amendment is permissible.

  46. 30

    “At some point early in the drafting stage, everyone has to agree that X is the invention, and not A, B, C, D, E, F, G, H, …. W, Y, or Z. That’s just the way it’s done.”

    That is the way it’s done? Malcolm, you mean that you have never amended claims to make them broader in one or more aspects during prosecution?

  47. 28

    Hey, Mr.6; just in case you didn’t see it…

    …per your “Google-whack offer” on Dennis’ “Patent Reform 2009” post:

    “Either way, throw it up, I’ll be glad to hand you some invalidating prior art after a quick google and save you the trouble of trying to collect on something unable to be enforced.”

    The bat’s still in your hands for 09/832,440.

    Please show us what ya got.

  48. 27

    “Given adequate resources, a good prosecutor should have/would have asked the inventors, “is a pointy spike needed?” and if they said, “no” the prosecutor should have incorporated alternatives into the specification. *That* is why good patent prosecutors should be well-paid. It is their *job* to identify design-arounds and incorporate them into the specification. ”

    While I agree with you that what you describe has become their job it is laudable that we’re now relying on attorneys to innovate rather than inventors. They should bring this up in the congressional hearings.

  49. 26

    I’m laughing at the idea that a “good prosecutor” could have prevented this debacle. This case has nothing to do with “good” or “bad” prosecution and everything to do with greed.

    Clients come to prosecutors with inventions. At some point early in the drafting stage, everyone has to agree that X is the invention, and not A, B, C, D, E, F, G, H, …. W, Y, or Z. That’s just the way it’s done.

    There is no reason to believe that wasn’t the case here. Later, it occurred to someone else that Party B could be sued with the patent, but there might be a little problem …

  50. 25

    To answer Question’s question,

    In the present case, yes. The panel is basically stating the Patentee did not adequately identify the subject matter of the new claims in the original application.

    However, under the enablement wording of LF, it would appear to make no difference.

  51. 24

    Malcolm,

    What Defector described is what a good prosecutor does. Inventors often do not consider alternatives to the precise embodiment they create and a good prosecutor asks them questions to find the boundaries of the invention. If you find that LOLable, then I really feel bad for any clients you have represented and I would be concerned about malpractice suits if I were you.

  52. 21

    “My gut feeling is that the inventors never considered a spikeless embodiment, and the spec does not teach or suggest the possibility of a spikeless embodiment. Given adequate resources, a good prosecutor should have/would have asked the inventors, “is a pointy spike needed?”

    LOL.

  53. 20

    “It is a simple broadening claim removing an unnecessary limitation and should not be rejected under 112. ”

    While I do see where you’re coming from, do you not suppose that if one makes a broadening amendment during prosecution that encompasses subject matter which a person of ordinary skill would not have been reasonably appraised of from the original WD (original claims included) then there might be a 112 issue under WD? I think that the answer is likely yes. In fact, I do believe that I have seen this instance pop up in my own cases and I indeed voiced such an opinion and iirc the lawyer agreed with me. It is a complicated matter, because like you say, most amendments that are broadening are equally well described by the original WD. The cases I’m thinking of from my own docket involved much more complex art than this spike though. I might not have found fault with that.

    An example:

    My original spec shows a bike with a new shock absorbent frame and foot pedals. My claims state as much. Then, later in prosecution I amend the claims such that they don’t require foot pedals, or pedals at all, even though one of ordinary skill would not have been appraised of an invention without having foot pedals. I then get the patent issued, and go sue someone that uses hand pedals. 112 1st issue? Mmmm, idk, but it seems reasonable especially when tech makes the issue much harder than a simple foot pedal/spike.

    It boils down to: does 112 1st paragraph require you to stick to subject matter that would have been reasonably disclosed to one of ordinary skill at the time of invention OR do you simply need to be able to pick out support for all lines that you stick into amended claims, regardless of what goes unsaid and how that changes what an artisan would now understand from the application.

    “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

    It does say right in the first line that the spec shall contain a description of the invention. That to me means that it shall describe it as one of skill would understand it.

    So, can you introduce new matter by making a purely broadening amendment?

  54. 19

    Dennis, it is lucky that you have a few sharp readers and commentators on your blog, otherwise Patently-O would be a total waste of time. If you value our input, you really should pay more attention to concerns of prosecutors, rather than constantly bashing prosecutors over the head, being critical of misconduct and competency. Don’t get me wrong: I don’t defend incompetent prosecutors, but walk a mile in our shoes, and you’d see it is getting more and more difficult to write a valid patent with reasonable scope with a limited budget. This is a case in point.

    The question here is, did the inventors have possession of a spikeless ebmodiment, and if not, should the claims reading on spikeless embodiment nevertheless be held valid under 1st para.?

    My gut feeling is that the inventors never considered a spikeless embodiment, and the spec does not teach or suggest the possibility of a spikeless embodiment. Given adequate resources, a good prosecutor should have/would have asked the inventors, “is a pointy spike needed?” and if they said, “no” the prosecutor should have incorporated alternatives into the specification. *That* is why good patent prosecutors should be well-paid. It is their *job* to identify design-arounds and incorporate them into the specification. But, as I have seen too many times, maybe the prosecutor has a biology or chemistry degree and assumed he could do mechanical cases because “they are so simple, anyone can do them.” Or maybe he was given a cap of $5K, and told, “just give me a Corolla.” Or, maybe the prosecutor was given limited access to the inventors, because they are too busy making the “next big thing” to “waste their time” talking to a patent attorney.

    This could be a failure of the prosecuting attorney. But it is also possible he or she did the best they could given the circumstances. It is up to the client to make sure that they are getting good representation, they are paying for a quality application, and that they have the right person preparing the application — the first time around. You can’t fix a bad spec in litigation.

  55. 18

    If the subject spikeless claims had been filed with the original application would that have made a difference on the 112 issue?

  56. 17

    One would think that in a decision confirming a relatively rare award of heavy sanctions and attorney fees for alleged patent “litigation brought in subjective bad faith, and ..objectively baseless” plus “multiple, repeated misrepresentations . . . to the Court” [and not by a troll in this case] that the decision should at least name the specific trial counsel who allegedly did that [rather than tarring the entire Appellant firm] and indicate who’s pocket will be punished? the firm’s, the client, or both?

  57. 16

    I’ll say it again: the Liebel-Flarsheim/Automotive/Sitrick line of cases is not about invalidation of a claim under 112 for “a failure to disclose all embodiments”.

    Those cases are about the invalidation of a claim that is asserted against a literally infringing “embodiment” that the patentee did did not enable and/or an embodiment contemplated by the patentee but distinguished as non-operational or useless. 112 is a convenient way to destroy such claims.

    The difference between enablement and written description are fuzzy but this case is a good example of how to draw the line. This case will have zero impact on how applicants draft their applications.

    It may affect how patentees litigate their applications, however. Sanctions are the only way to stop patentees from engaging in the bad behavior described above. Well done.

    As with Leibel, however, we are left wondering whether the patentee neverthless achieved its business goals with this litigation.

  58. 15

    A 112/claim diifn thread has been running for a couple of days now, over on Patent Prospector.

  59. 13

    The Europeans have nobbled Judge Moore. Nothing strange about her judgement, when read by a European. 35USC112 first sentence goes by the name of Article 123(2), here in Europe, and we know her “obvious” point very well, since at least 20 years ago. Welcome to the world of sane patent law, where claim drafters, incompetent but covetous, don’t prosper.

  60. 11

    Dennis,

    You may want to rewrite your summary of the case and highlight the 112 issue (which as a patent prosecutor has me very concerned).

  61. 10

    For all the wizes out there Libel-Flarsheim is a pure enablement case, while this is a pure WDR case. Mooney is right.

  62. 9

    “/neanderthal lawyer off”

    We were wondering if you would ever take it off. Three years was long enough.

  63. 8

    For what it’s worth, after reading TJ’s comment again, it’s pretty clear that he was quite aware of the distinction.

  64. 7

    Malcolm is technically right, but TJ’s “error” is not nearly as egregious as Malcolm suggests. I believe Liebel-Flarsheim, Automotive, and Sitrick were all about lack of enablement. This one is about written description. All of these are about claims being broader than the specification will support, however.

    Perhaps Judge Moore chose written description rather than enablement because of the obviousness argument mentioned above?

  65. 6

    Malcolm, please read Liebel-Flarsheim again. TJ is exactly right.

    Just because you believe Liebel-Flarsheim was a bad actor, does not change the holding in that case. The holding does not say that the decision is based upon LF’s bad acts, it is a straightforward 112 rejection.

  66. 5

    TJ,

    Thank you for pointing the 112 issue out as I consider this to be the bigger issue. I believe Liebel-Flarsheim was worse than all of the other recent cases that have had prosecutors or inventors up in arms.

    It appears that the prosecutors realized they would have a valid (under 102/103) claim even if they excluded the spike limitation. It is a simple broadening claim removing an unnecessary limitation and should not be rejected under 112.

  67. 4

    TJ:

    This is much worse than the Liebel-Flarsheim/Automotive/Sitrick line of cases. Far more worse. The Court here acknowledges that it would be “obvious” to one skilled in the art to substitute a spike with a spikeless tube without affecting performance of the invention, but nevertheless held that the spike feature “must” be included in every claim, or otherwise the claim would be invalid under 112-1.

    This is the crux of Judge Moore’s holding:
    If you describe your invention with only one embdodiment that includes feature X, then even if it would be obvious to one skilled in the art that feature X is not essential and can be substituted with Y or Z, you nonetheless cannot claim generically to encompass X-Z, because you would be overclaiming.

    I think Moore has 112 all confused. She somehow sees the WD (para. 1) as serving to point out distinctly “what is regarded as ‘the’ invention”, while the claims (para. 2) are just something that mischevious lawyers hopelessly play around with (e.g. amendments, reissue, continuation). The scope of “the” invention is in the WD not in the claims.

  68. 3

    TJ “it follows the Liebel-Flarsheim/Automotive/Sitrick line of cases and invalidates a broad claim under 112 for failure to disclose all embodiments”

    That’s not what Liebel-Flarsheim stands for, nor is it what happened in this case.

    But I’m sure it was just an “honest mistake” on your part.

  69. 2

    B..b..b.b.but this was j..ju..just z…z..zealous advocacy, Your Honor!

    /neanderthal lawyer off

  70. 1

    Dennis, another thing to note about this case is that it follows the Liebel-Flarsheim/Automotive/Sitrick line of cases and invalidates a broad claim under 112 for failure to disclose all embodiments. Since this time it is done under the written description requirement, we might see another Radar dissent blasting Eli Lilly.

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