Diverging Claim Constructions

Yesterdaypic-53.jpg raised a valuable discussion on claim construction with many excellent comments on the Cotropia-Bey article. The issue is obviously important since claim construction disputes arise in virtually every attempt to enforce a patent. One problem with claim construction in litigation is that the district court follows a completely different process of claim construction than do PTO examiners. The rules suggest that the two claim construction scopes should form concentric circles with the PTO’s broad construction and the Court’s narrower construction. The reality is that it is hard to form these concentric circles — especially with complex claims. And, it is virtually impossible to form concentric circles of construction using such distinct construction processes. Instead of nested constructions, in many cases the outcome of the district court tends to diverge from that suggested during prosecution.   

It seems odd that the patent prosecution process does not focus on determining the correct meaning of the claims. The better approach may well be to allow the original examination to determine the correct meaning of claims in a way that can be followed by courts down the line. I suspect that this approach would actually lead to more valid patents — especially if examiners applied a stronger hand on issues of indefiniteness.

Notes:

  • Joel Miller’s 2006 JPTOS article in the Broadest Reasonable Interpretation standard is available here.
  • Mark Lemley and Dan Burke recently wrote a paper arguing that we should admit defeat and move to a central claiming system. Their analogy is that claims might be better used as sign-posts rather than fence-posts. [Link]
  • Lemley’s 2005 article on The Changing Meaning of Patent Claim Terms is also a good read. [Link]

80 thoughts on “Diverging Claim Constructions

  1. 80

    Anyone who still thinks broken English and run-on sentences by examiners are not an issue should check out the following gem from:

    link to ipwatchdog.com

    “The USPTO is broken ( thank you for saying it ) and being so, too many “bad” patents are gong through. Let me clear up what I call a “bad” patent: Patent with all, in my opinion intent, to cover some/all of underpinning technology/ies through claims that are written to extend the reach of the focus of an idea, an idea that is the only subject of the patent application and changes that have been talked about do not address this problem. Knowing well the ball park, here, Iam swinging in, having the knowledge though that going after intent is not a path for a fix. However, action(s) are clear, though litigation is a tool and can not be avoided at times no matter what objections, if litigation levels in the patent world are “too” high, is a telling sign, that the USPTO can have an impact on if done right. Being right or having the “correct” answers to the problems is far from the point here I beleve, because the understanding of the problems not unlike the proposed answers to them are subject to opinion based on who you talk to. The “right” the “correct” not answers at all when talking of a broken patent system, has no meaning, though a patent system continues on working for those best served by it, as is. For sure, the USPTO should not continue to work for some nor be in their control, and if so, this is one change that would give meaning to answers to other problems. As it is now I have to say I see the objections to/about changes being threats, not what is best for a working PTO.”

    Diagramming that paragraph would be a hoot.

  2. 79

    “Central claiming,” like Lemley himself, Twinkies, and the notion of published provisional applications, is a sad joke and is code for “let’s dismantle the patent system in favor of large infringers”

  3. 78

    “On reading that, I must confess that I fail to comprehend it.”

    I wouldn’t sweat it, broje. Challenges to your reading comprehension skills are the last refuge of the half-literate. (Apologies to Samuel Johnson.)

  4. 77

    “If the CAFC says that the statute 112 mandates them make some caselaw …”

    On reading that, I must confess that I fail to comprehend it.

  5. 76

    If the CAFC says that the statute 112 mandates them make some caselaw then the CAFC case is “statutorily mandated law”.

    Mo ron. That’s why you fail at reading comprehension.

  6. 75

    Yes, a CAFC case is “statutorily mandated law.”

    That is why you will never make it as a lawyer. Heck, you’re not even making it as an examiner, which is why you’ll probably get promoted. That, plus any other boosts you might have at your disposal such as minority status, or the like.

  7. 74

    “I’ve never heard of such a thing. The PTO itself in Chapter 2100 acknowledges that there may be more than one interpretation of a claim.”

    Why yes, yes it does :) Claims have those darned extra interpretations in them all the time. It is the examiner’s job to get em outta there when the “correct” interpretation doesn’t jump right out at you. At least sometimes. Examiners don’t have all day to take care of every little thing and rewrite your whole claim for you.

    Read Miyazaki and its parent CAFC case. Maybe it’ll drill something in for you. Those are the best references I can give you. If you need more after that, ask around.

    “Thank you 6 for making the classic mistake of confusing breadth with indefiniteness. I think there are books written on the topic and I can’t think of a more germane example of the precise reason that you are wrong.”

    Hah, you accuse me of making the mistake you’re making! How ironic! You’re absolutely right about there being books about it. You should go and read one.

    That’s all I have to say to you, even deriding you loses its lulzy appeal after a bit. Especially when you so firmly believe that you’re right. I have to waste my breadth teaching attorneys irl this same mess, except I get paid for it.

    Ok, ok. I went the extra mile for you anyway. Here is a named lawyer’s take on Miyazaki:

    link to ipbiz.blogspot.com

    Don’t forget to read the similar punchline in the parent CAFC case.

    It is funny how the guy that says “I’ve never heard of such a thing” precedes that by calling the other guy the ignorant one.

  8. 73

    And, oh woefully ignorant one who calls himself “6”, please tell me the “statutorily mandated absolute requirement that there be one correct interpretation of a claim.”

    I’ve never heard of such a thing. The PTO itself in Chapter 2100 acknowledges that there may be more than one interpretation of a claim.

  9. 72

    Thank you 6 for making the classic mistake of confusing breadth with indefiniteness. I think there are books written on the topic and I can’t think of a more germane example of the precise reason that you are wrong.

  10. 71

    I actually decided to entitle it “the example of an attorney who thinks they are entitled to write and subsequently have issued indefinite claims and who is too stupd to understand that is what he is arguing for, and who at the same time also doesn’t understand that definiteness need not come at the expense of scope”.

    I know, it’s kind of a run on title.

  11. 70

    “But you are an expert at making yourself look bad. How bad does it look for a supposed Examiner to deride an attorney for objecting to some arbitrary measure of “correctness” at the expense of breadth to which his client is legally entitled.”

    You’re right about the first part. And that lends me insight into seeing when others do the same.

    As to the second part, who is an supposed examiner around here deriding an attorney for objecting to some arbitrary measure of correctness at the expense of breadth to which his client is legally entitled? There are no supposed examiners that I see around here. I’m certainly not a supposed examiner. And, nobody has derided any attorneys for anything even close to objecting to some arbitrary measure of correctness at the expense of breadth.

    The only thing I’ve seen in this thread is an anonymous poster who goes by “6” deride an alleged attorney for objecting to a statutorily mandated absolute requirement that there be one correct interpretation of a claim. This derision is without respect to the separate characteristic of claims called “breadth”.

    Furthermore, it appears that the anonymous poster realized that the alleged attorney could not tell the difference between breadth and the requirement to have one correct meaning. That is, that the alleged attorney could not tell that they are distinct concepts and are disconnected from one another, and that the one need not come at the expense of the other. Then the anonymous poster derided the alleged attorney for that as well.

    Any of the derision which was listed above, and was merely implicit to those of ordinary skill in the patenting arts and wasn’t already made explicit in the thread is hereby made explicit.

    Feel free to disagree with me at your leisure. But you disagree with me and NAL at your own peril.

    I’ll let the readers decide who looks bad and who doesn’t, and I’ll also use you as an example in the future. The thread will be faved as “the example of an attorney who thinks they are entitled to write and subsequently have issued indefinite claims and who also doesn’t understand that definiteness need not come at the expense of scope” so when I need an example of your kind it is ready at hand when other, better attorneys alledge that no self respecting attorney would ever believe such a thing.

    Thanks for a ready made example.

  12. 69

    Many Examiners have trouble forming complete sentences, have trouble with the very basics of claim interpretation, and have trouble conveying coherent thoughts. When you read and Examiner’s ‘Reasons for Allowance’ and it has the phrase ‘prior art does not rendor abviousness invention,’ it doesn’t really give you confidence in an Examiner’s ability to decide the “correct” claim interpretation.

    At least with ‘broadest reasonable interpretation,’ the standard is objective. With a ‘correctness standard,’ an Examiner could simply dictate what the claims mean. Allowance rates would drop virtually to zero.

  13. 68

    “See NAL? This man will make himself look worse than anyone else ever could.”

    Not so sure anyone but you understands what you are talking about. But you are an expert at making yourself look bad. How bad does it look for a supposed Examiner to deride an attorney for objecting to some arbitrary measure of “correctness” at the expense of breadth to which his client is legally entitled.

    It makes you look like the m0r0n everyone already knows you are. I am personally proud that you think I look bad, because it probably means I am exactly right – God forbid you actually agreed with my point.

  14. 66

    6: thanks for your explanation. I see you now assert that “new = inventive” but that doesn’t matter, because “inventive” is not the same as “non-obvious”. In the EPC (Article 56) “inventive” and “obvious” are antonyms. It is useful to me to know that, in the USA, they are not.

    But, readers, is 6 right actually about the law in the USA?

  15. 65

    “Let’s see if I’ve got this right. You think “ordinary creativity” can include “inventive”.”

    Correct.

    “So some inventive activity is patentable but other is not? ”

    You just changed the inquiry but yes. The inventive activity which is not patentable is that which is obvious to the POSHITA.

    “Now me, I think SCOTUS in KSR means that PHOSITA is creative in the sense that he/she is creative enough to make obvious combinations of prior art references. That would be, just as an example mind, when there is a pre-existing TSM to do so.

    Or do we still differ?”

    Making obvious combinations is being inventive. You’re making things which are wholly new, never seen before. You are making inventions. You are thus being inventive. If you disagree, then we still differ. If not then we don’t differ.

  16. 64

    “Sorry NAL, I’ll have to stick to my guns.

    As a patent attorney (as not as some wannabe m0r0n like 6), I don’t want the meaning of my claims to be “fixed” to some level of “correctness” until there is a reason to do so. Until then, my claims should be as flexible as possible and should cover as much as I am legally entitled to, which can often be quite broad.

    See NAL? This man will make himself look worse than anyone else ever could.

    “I want to have the ability to go after anyone who is infringing the invention despite whether they may have conveniently sidestepped what, in the present hypothetical, would be the “correct meaning” of my claims as they were prosecuted.”

    Do you understand now the reason we have to cut through layers of bullsht to get them to actually claim an invention?

    I’ve been telling you since the beginning, and you just don’t want to listen since you happen to (maybe) do things differently. There couldn’t be a better case study to support my position.

  17. 63

    “”based upon consideration thereof” means what?”

    It means that you base the legal determination on the imaginary consideration of a poshita.

    One is an imaginary construction.

    The other is a legal determination. It is a legal determination which is often based upon consideration of the imaginary construction.

    I can’t make it any simpler than that, and I’m not “cross-defining” anything.

  18. 62

    “As a patent attorney, I don’t want my claims to have a “correct” meaning – I want my claims to be flexible so that they can be applied against a myriad of potentially infringing configurations, or else what is the freakin point?”

    Lighten up peeps! He’s just saying he wants broad claims. When dealing with language, there is no one and true definitive meaning. Everything is fluid. It’s the nature of language (at least human languages). “Many meanings” is equal to breadth. If “component” can mean a program module, an object, a program, a computer running code, etc., that seems like a fair use of multiple meanings. Do these examples form one meaning of “component”, or multiple meanings? Is each concrete thing that reads on a claim term another meaning of the claim? Heck, what is the meaning of “meaning”?

    I was trained with this philosophy, though I don’t take it to extremes. I always understood it to reflect the fact that (1) showing non-infringement (esp. w/ respect to a narrow claim feature) is a much easier way to defend against a patent than to prove invalidity, and (2) a well-written claimset has dependent claims and independent claims of varying scope as a fallback for the broader claims. You try to build a net that only catches the right fish, but if it happens to snag bycatch (prior art), hopefully you have another net to use.

    And I don’t see anywhere where Blimby suggests claiming something he isn’t entitled to. That is the ultimate role of the attorney; figuring out what the applicant is entitled to, and then claiming it in the face of a skeptical and/or legally/technically challenged examiner.

  19. 61

    Sorry NAL, I’ll have to stick to my guns.

    As a patent attorney (as not as some wannabe m0r0n like 6), I don’t want the meaning of my claims to be “fixed” to some level of “correctness” until there is a reason to do so. Until then, my claims should be as flexible as possible and should cover as much as I am legally entitled to, which can often be quite broad.

    I want to have the ability to go after anyone who is infringing the invention despite whether they may have conveniently sidestepped what, in the present hypothetical, would be the “correct meaning” of my claims as they were prosecuted.

    I pity anyone who “agrees” with 6 for any reason.

  20. 60

    6,

    “based upon consideration thereof” means what?

    Are you cross-defining your separate genera?

    Help yourself to a bit more rope my friend.

  21. 59

    Let’s see if I’ve got this right. You think “ordinary creativity” can include “inventive”.

    So some inventive activity is patentable but other is not?

    Be careful or you will end up like the Germany, who have one level of non-obviousness for 20 year patents and a different and lower level for their 10 year patents (Gebrauchsmuster). Only thing is, they had to drop that distinction recently, when under international pressure they found it no longer credible.

    Maybe the German Supreme Court should have engaged you as a consultant, before they gave up on the distinction.

    Now me, I think SCOTUS in KSR means that PHOSITA is creative in the sense that he/she is creative enough to make obvious combinations of prior art references. That would be, just as an example mind, when there is a pre-existing TSM to do so.

    Or do we still differ?

  22. 58

    The difference is that one is an imaginary construction of a person and the other is a legal determination based upon consideration thereof. I’m sorry I can’t break this down as a genus/species this time for you because they’re both in separate genera.

  23. 57

    6,

    You lost me at:

    “I’m talking about qualities of a POSHITA here, not the determinations made using POSHITA as a standard.”

    And the difference is…?

  24. 56

    No, I’m not saying that. I’m saying that the POSHITA has some “inventive” or “creative” capability between his ears. I’m talking about qualities of a POSHITA here, not the determinations made using POSHITA as a standard.

    “for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ.”

    “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”

  25. 55

    6: are you saying that, since KSR (but not until then, mind), stuff that’s factually inventive can at the same time be legally obvious? Interesting.

  26. 54

    “Thanks for advancing the discussion, BigGuy.”

    To be fair, curious, I actually said only that SOME of the smuggest jackasses on the planet are attorneys. You disagree?

    I’ll go crawl back under my rock now…

  27. 53

    “‘I would think that someone’ — Do you mean that isn’t what you think now, but what you intend to think? Don’t you mean ‘I think that someone …’? See how easy it is to nitpick.”

    Apparently not as easy as you think. Go ahead, revise my sentence as you suggest and see if it means the same thing, or whether you really think that your version is closer to what I meant. I used the second conditional, with an implied condition, for a reason. [If you weren’t currently demonstrating otherwise] I would think that someone with your mastery of the language could easily handle this rhetorical maneuver.

  28. 52

    “smuggest jackasses on the planet are attorneys”

    Thanks for advancing the discussion, BigGuy.

  29. 51

    “have not one scintilla of inventive capability between his/her left and right ear.”

    Not since KSR my friend.

  30. 49

    “”heat treating the fixture, and quenching the heated treated fixture.” The Examiner thinks that the heat treated fixture is indefinite.”

    If they had a brain the person who drafted that would have just written “heat treating the fixture and then quenching the fixture.” He probably gave you a 112 for lack of antecedent basis even though technically that shouldn’t be a problem either. Sure, what was written might not be indefinite, depending on the rest of the claim, but why tempt fate? Claim drafting isn’t some magical arcane art. All you have to do is follow simple rules to come out with a rock solid claim product.

    I see this kind of thing nearly every week. Some poor schmuck will follow the claim drafting “rules” for everything but usually one or two things in the claim where he thinks he’d like to be slick instead. Guys, just stop thinking you’re slick and just write the fin claim properly.

    As to your previous posting, well, I never said they’d be fed all the time. But, I did say that they usually are.

    And as to your topic as a whole, I just don’t think the problem is quite as widespread or serious as you make it out to be. I don’t know many people who are that hard to understand here. And my last serious gf was from another country and sometimes I wouldn’t catch a word or two, and her writing skillz weren’t the leetest thing ever, but she never had much of an issue reading things herself. Occasionally sure this might lead to some small issue, but the bottom line is that the PTO can’t just magically rectify the situation due to national “you can’t discriminate based on nationality” laws. Which, as I’m informed by an expert, includes accents. And those same people who have poor writing skills might be getting a by because the PTO doesn’t want to be seen as having discriminated based on the accent. Can you say law$uit?

    Besides, there are plenty of people with poor reading/writing/talking skills that work here that aren’t foreign. They have to take what they can get in terms of people qualified to do the job (degree) and willing to do the job for the pay.

    You two children can stop making fun of each other now.

  31. 48

    Geez louise, put it back in your pants, guys. It’s just grammar. You do realize that the next generation of patent attorneys will be writing claims in chat and leetspeak, so it’s already a lost cause.

    1> a method 4 feeding cheezburgers 2 cats, compreyes-
    a method;
    a cats; and
    a cheezburger;
    wherein lol, and
    kekekekekeke. I can has patent?

  32. 47

    “But go ahead, enjoy feeling superior to those engineers with woefully inadequate language skills.”

    Woo hoo … you can nitpick from a post meant for a message board. Next time, perform the same exercise on a similarly-sized post from 6 – just make sure to set aside plenty of time.

    If all I had to do, when reading an Office Action, was nitpick like you, then I wouldn’t have written what I did.

    I worry about the Examiner who doesn’t bother to pick up a dictionary.
    I worry about the Examiner who doesn’t investigate the art-recognized meaning of a term.
    I worry about when I have to listen to a phone message from an Examiner, and I understand about ½ the words the Examiner is saying.
    I worry about when I talked to the Examiner, I have to have the Examine repeat the phrase the Examiner is saying several times (and even request the individual words be repeated, word-by-word).
    What I worry about is when an Examiner exhibits the type of reckless analysis and failure of reading comprehension that you exhibited in your initial post.

    Finally, by repeatedly focusing on individuals and not the groups, as a whole, you continue to miss the point. I am making point about the groups, as a whole. As such, your discussions of individuals doesn’t address the issues I have raised.

    BTW – my use of quotations was proper. I’ll let you figure out why.
    “I would think that someone” — Do you mean that isn’t what you think now, but what you intend to think? Don’t you mean “I think that someone …”?
    See how easy it is to nitpick.

    BTW, if you thought that who “them” was referring to was ambiguous, are you sure you aren’t an Examiner pretending to be an attorney. I find it amusing when I get 112, 2nd rejections on language such as “heat treating the fixture, and quenching the heated treated fixture.” The Examiner thinks that the heat treated fixture is indefinite.

    “Personally, I think it is truly impressive when an English-as-a-foreign-language student makes it through a rigorous engineering curriculum here in the States.”
    After you’ve written “Personally,” don’t you think “I think” is superfluous? Actually, since you’ve written the statement, both are probably superfluous since the sophisticated (or even average) reader should assume that what you are writing is your opinion. Also, “here in the States” is pretty sloppy. You can omit “here” altogether as being superfluous. The “here” presumably refers to your personal location, but that is totally irrelevant to your point. Again, it is easy to nitpick when one has the time and inclination. Oh … and this is just my opinion – not a statement regarding proper grammar, but the term “rigorous” is also superfluous when connected with “engineering curriculum.”

  33. 46

    For a patent and its claims, the notional reader is the PHOSITA, an artificial construct who is neither a “real” lawyer nor a “real” engineer. The PHOSITA isn’t like anybody in real life: he/she is deemed to know ALL the prior art, the common general knowledge in the technical field in view, have the “common sense” and “mental furniture” of a person in that field having ordinary skill, yet at the same time as possessing all that relevant compendium of knowledge, have not one scintilla of inventive capability between his/her left and right ear.

    Examiners are not the PHOSITA, nor are prosecuting attorneys, nor are inventors and nor are judges.

    Thus, judges are required to put on the mantle of the PHOSITA, even before they start to construe the claim.

    It’s easier to define that task than to perform it. But is there any other way to construe a claim that is as fair to both sides of the dispute, or as much in accord with the role of the patent system to promote the progress?

  34. 45

    “The USPTO compounds the problem by hiring a substantial amount of engineers who are not entirely proficient in English.”

    Perhaps you mean a substantial number?

    “Granted, there are problems on both sides of the fences.”

    Interesting image. But wouldn’t there be three or more sides of the fences?

    “Although I am admittedly biased, in order to get through law school, I believe a patent attorney needs to be better with ‘words’ than the average engineer.”

    Do you know what a misplaced modifier is? Can you spot one in the quoted sentence? And why on earth is “words” in quotes?

    “It shouldn’t be any great secret that, as a whole, the worse [sic] wordsmiths of all the professions are engineers. Engineers are typically great with numbers and formulas, not words. However, both sides are chock-full of them.”

    It certainly isn’t any secret that some of the smuggest jackasses on the planet are attorneys. So, “them” refers to “engineers,” rather than any of the three other plural nouns that appear between “engineers” and “them” in your sentence? I would think that someone with your mastery of the language would be more careful to avoid ambiguous pronouns. I know many of your “bretheren [sic]” who are.

    But go ahead, enjoy feeling superior to those engineers with woefully inadequate language skills.

  35. 44

    “Not entirely true, I had to work out chemical molar ratios just the other day. Needless to say, I hadn’t done this in years and it took quite awhile to do just the three I needed to do.”

    6 — the perpetual exception to the rule.

    “Look on the bright side, when faced with an examiner with English skills higher than your own you are usually completely fed. Is that what you’d prefer to have happen?”

    6 — not entirely bright or well-versed in simple logic.

    The fact that I have better language skills does not necessarily mean that the Examiner will allow my application. Similarly, the fact that an Examiner ma have better language skills does not necessarily mean that my application will not be allowed.

    Higher language skills do not necessarily mean one side or the other will win. However, higher language skills on both sides means that the issues will likely be resolved in a quicker, more efficient manner.

    To make my point a little clearer … Proper claim construction is hard enough when both sides are handicapped by having engineers doing the claim construction. The USPTO compounds the problem by hiring a substantial amount of engineers who are not entirely proficient in English.

  36. 43

    “Both sides of what are chock-full of what? Words?”
    Uhh no, engineers.

    “Although I’ve been practicing as an attorney for a while, I am still proud to consider myself an engineer.”
    As do I.

    “(and I will put my language skills up against yours any time).”
    That may be so, but don’t try putting your reading comprehension skills against mine. Your response is ample evidence that you didn’t undestand the post.

    “Your suggestion that engineering solely involves ‘formulas’ indicates that you have never actually been an engineer.”
    For one, I never suggested that engineering solely involved formulas — yet another ding on the reading comprehension. Also, I practiced several years as an engineer — a ding on your deductive reasoning skills.

    Since I’ve been a practicing engineer, I have first hand knowledge as to the woeful language/writing/comprehension skills of my bretheren — although you may not have understood the points I was trying to make, thanks for supporting my points.

  37. 42

    “Both sides of what are chock-full of what?”

    Engineers.

    You say you’re an attorney?

    “However, working at the USPTO does not involve solving formulas at all”

    Not entirely true, I had to work out chemical molar ratios just the other day. Needless to say, I hadn’t done this in years and it took quite awhile to do just the three I needed to do.

    “However, when faced with an Examiner with poor English skills, I’m stuck until I can take the application to appeal.”

    Look on the bright side, when faced with an examiner with English skills higher than your own you are usually completely fed. Is that what you’d prefer to have happen?

  38. 41

    “It shouldn’t be any great secret that, as a whole, the worse [sic] wordsmiths of all the professions are engineers. Engineers are typically great with numbers and formulas, not words. However, both sides [sic] are chock-full of them [sic].”

    Both sides of what are chock-full of what? Words?

    Impressive wordsmithing.

    Although I’ve been practicing as an attorney for a while, I am still proud to consider myself an engineer (and I will put my language skills up against yours any time). Your suggestion that engineering solely involves “formulas” indicates that you have never actually been an engineer. Personally, I think it is truly impressive when an English-as-a-foreign-language student makes it through a rigorous engineering curriculum here in the States.

  39. 40

    Ok, maybe not an elephant, but a large water buffalo.

    The problem the profession, as a whole, faces (and this includes both sides of the fence) is that inherent within the whole discussion is the ability of the people construing the language of the claims to be actually competent to do so.

    It shouldn’t be any great secret that, as a whole, the worse wordsmiths of all the professions are engineers. Engineers are typically great with numbers and formulas, not words. However, both sides are chock-full of them.

    Although I am admittedly biased, in order to get through law school, I believe a patent attorney needs to be better with “words” than the average engineer. That being said, I believe the average patent attorney is a better wordsmith than the average Examiner.

    The best claims are those that are written with no superfluous words – every word has a purpose and the removal of just one word substantially changes the scope of the invention. However, what I have seen time and time and time and time again is the failure of Examiner’s to construe all the language of the claims. Too many times I have seen words that were simply read out of the claim based upon the implied claim construction provided by the Examiner. This is a result, in part, of the inability of many Examiners to critically think about (and investigate) the language they are construing.

    Although not politically correct, I believe a huge problem results from the lack of solid English proficiency from many of the Examiners. A rough guesstimate is that half of the Examiners I deal with have English has a second (or third) language. Giving a broadest, reasonable interpretation of the claim language consistent with the specification and the meaning that those skilled in the art would reach is hard enough. Making this interpretation when one’s working knowledge of English is deficient is an invitation for committing gross error.

    As an engineer, you can make it through engineering school with substandard English-language skills. Formulas are generally language neutral. However, working at the USPTO does not involve solving formulas at all. It involves a whole lot of reading, analysis, and the communication, via writing, of that analysis. Again, this is not politically correct, but I believe that many of the problems at the USPTO stem from Examiners who cannot provide proper claim constructions and who cannot clearly articulate their rationale for rejecting the claims. It also is difficult to respond to these arguments when the Examiner does not understand, completely, what you are arguing because of their language deficiencies.

    Granted, there are problems on both sides of the fences. On our side of the fence, I’ve seen some bad translations and some claim language that is very difficult to parse. However, the language in the specification is not so critical as the language in the claims, and I can address the language in the claims by amendment (or by redrafting entirely new claims). As such, when faced with a bad patent application, I can fix it. However, when faced with an Examiner with poor English skills, I’m stuck until I can take the application to appeal.

  40. 39

    6 had it going, but continued flapping and went off into the bushes again.

    Blimpy,

    I would assume that you have a few monikers and have posted and read here at the trainwreck for some time. I realize it is painful to be on the wrong side of a 6 post just as it is painful to agree to something that 6 says. However, I am basing my comment on what I believe you meant at the time of the post – and I see that you have modified that belief somewhat.

    I think that broje was on to something in her modifying comment about “one and only”, and I see that Blimpy further modifies to indicate his view that “correct” suggests “single narrow meaning” in his post.

    I would posit that Blimpy is still incorrect at the start but for a now different reason. “Correct” does not imply single narrow meaning or even “one and only”. “Correct” implies that an invention, as supported by the specification has been rightly claimed (and allowed). “Correct” includes a wide variety of scope coverage, from narrow to broad. There are times when my claims are meant to be narrow, as that is what the client is aiming for, just as there are times when broad coverage is desired. Both ranges are “correct” when I have done my job (as IANAE suggests).

    So we were talking a bit of apples and oranges. In my meaning of “correct”, there ALWAYS is a correct meaning that is to be achieved, and the chasing butterflies comment is simply off-base. Blimpy, your shade of “correct” came across initially as a greedy, claim-as-cloudy-as-possible, grab-what-is-not-mine effort to take what is not due or at best what you can get away with. This feeds the general lowest image of lawyers, which is unfortunate and should be guarded against.

    The comment about infringers characterizing their scope seems to be a non-sequitor, as I really don’t care how the infringer characterizes their activity – if they infringe I’m going after them and if the infringers close their eyes, stick their fingers in their ears and refuse to see or listen, the court will decide.

  41. 38

    “For being an attorney LB you need a refresher on your dependent claim drafting.”

    Thanks for the tip, 6.

    “Doctrine of claim differentiation? Look into it.”

    Now that’s funny.

    “… you might have otherwise wanted one ambiguous claim to cover.”

    The rest of us were talking about the ‘broadest reasonable interpretation’ doctrine. Difference between breadth and ambiguity? Look into it.

  42. 37

    Sweetheart, I’m always ahead.

    Don’t even bother to try to critique what I said above because nothing to critique exists.

    Oh, and while I have you here, you and retardugene need to back up off of jules. She’s trying to tell you that more 102e art is EASILY available compared to ~1999. Applications that weren’t patented yet were nearly impossible to find and search prior to PGpubs. They weren’t in a big database, and most weren’t in shoes prior to that. Just because they “could be used” prior to PGpubs doesn’t mean that the practical ability to find them was there. That’s all she is trying to tell you.

    You have a habit of understanding things in terms of “the law” only, to the neglect of the actual practicalities of everyday patent business. You need to open your eyes a bit and understand that while you and your firm might be omniscient and omnipotent, most firms and the Office, as well as the people that work therein, are not. And if you give them better tools to find prior art (such as a huge database of information called PGPUB) then they’ll find it better than if that database didn’t exist.

    Oh, and if you want a copy of Eugene’s blathering on about how my posts are stealing the bread right out from over his wife and kids plates I can send you one. He’s a big baby whose beliefs aren’t well founded enough to withstand even little ol me in the eyes of his own clients. Pathetic.

    We can discuss this further over drinks tonight, want to head down to Dupont?

  43. 36

    If the examiner gives an improper claim construction but still allows the claim, Applicants will be forced to petition for a proper claim construction?

    The PTO cannot handle its current workload and duties.

  44. 35

    Criticizing BRI was the easy part, where was the proposed solution? If the solution is having the PTO use the same standard as the courts, how does that help?

    Assume an Examiner uses the same standard as the courts and then just states in the notice of allowance that the application is allowable because “insert direct quote from the claim.” A court will not find that very helpful and from my experience, most file wrappers are not that illuminating on the Examiner’s thoughts on the “correct” scope of the invention in the claims.

    Sure, raising the standard for patentability means less patents are issued (which may be a good goal in and of itself, but that is another issue). However, it will not change the reality that a Judge and Jury during litigation will typically interpret claims differently than an Examiner sitting peacefully in an office at the PTO, regardless of whether they use the same standard or not. Isn’t that the real problem here?

  45. 34

    Blimpy,

    I see I must explain how I viewed the comment thread (Oh, the danger of agreeing with 6). However, this explanation will have to wait.

  46. 33

    “The point is, having a “correct” meaning suggests having a single narrow meaning, which no patent attorney worth their salt wants”

    No, it “suggests” that there is a correct meaning.

    “”a large enough number of correct meanings.””

    Per application. That’s reasonable. We live in a finite world based on $, even if your invention is infinite.

    “Thus, the dependent claim can’t give you a different “correct” meaning than the parent claim, only a more specific one. ”

    Doctrine of claim differentiation? Look into it.

    “Dependent claims are great for specifying what is definitely included in the meaning of a term in the parent claim,”

    They’re also great at specifying the breadth of a term in the parent. And they can assist in determinations of definiteness of terms in the parent as well in rare odd situations.

    “Dependent claims don’t provide any relief for that problem.”

    They can in rare situations. If the dependent claim wouldn’t fit under the examiner’s interpretation then the attorney can base an argument off of that. It’s rare, but it can happen.

    For being an attorney LB you need a refresher on your dependent claim drafting.

    In any event, what he was trying to say, I believe, is that you get several opportunities to draft claims that cover each meaning you might have otherwise wanted one ambiguous claim to cover, and you get those opportunities for free. Then, he implies, that you get as many opportunities as you’re willing to pay for thereafter.

    Thus, he surmises, that the practice of drafting one ambiguous claim to mean several things, is a bad one when weighing your options. You can either draft one big one, or draft many smaller ones. The latter strategy comes with less unintended side effects and doesn’t meet officer 112 as often. He therefor advocates the later strategy.

  47. 32

    “The point is, having a “correct” meaning suggests having a single narrow meaning, which no patent attorney worth their salt wants”

    No, it “suggests” that there is a correct meaning.

  48. 31

    “I dont know if its possible to make this lawyer look worse”

    However perverse, coming from you 6, that is actually a compliment.

    The point is, having a “correct” meaning suggests having a single narrow meaning, which no patent attorney worth their salt wants, despite the whining from ninnies like 6, IANAE, and (gasp) NAL, who I thought I could take stock in.

  49. 30

    “Y’know, the PTO doesn’t charge extra for claims 2 through 20. Is that not a large enough number of correct meanings for most people?”

    You made a similar suggestion before – I can’t let it pass unchallenged again.

    In fact, the PTO does charge for more than 3 independent claims, so your comment apparently is meant to suggest that 17 to 19 dependent claims ought to be adequate to claim “a large enough number of correct meanings.”

    Those dependent claims, of course, have to be narrower than their parent claim. Thus, the dependent claim can’t give you a different “correct” meaning than the parent claim, only a more specific one.

    Dependent claims are great for specifying what is definitely included in the meaning of a term in the parent claim, but aren’t as useful in defining what is NOT included.

    The problem that real prosecutors run into with the BRI is that the examiner uses it to include things under the meaning of the term that the prosecutor believes are NOT included. Dependent claims don’t provide any relief for that problem. So, what are you trying to say?

  50. 29

    “However, with this strategy, you may expect long prosecutions, more rejections, and if you happen to slip some claims by the examiner – more invalid patents.”

    Not to mention more correct meanings that favour the accused infringer.

    Y’know, the PTO doesn’t charge extra for claims 2 through 20. Is that not a large enough number of correct meanings for most people?

  51. 28

    “As for me, I want my claims to have an extremely large number of correct meanings.”

    I understand your statement, and I have no qualms. However, with this strategy, you may expect long prosecutions, more rejections, and if you happen to slip some claims by the examiner – more invalid patents.

  52. 27

    Well, I think Blimpy was interpreting “correct” meaning as “one and only one” meaning.

    As for me, I want my claims to have an extremely large number of correct meanings.

  53. 26

    Wow! I have to agree wholeheartedly with IANAE and 6. Blimpy that may be the most rediculous online post I have ever seen.

  54. 25

    “If an ‘infringer’ characterizes his activities as outside the ‘correct’ scope, then (1) he’s *not* an infringer, and (2) he’s probably not doing what your client invented, unless you’re bad at drafting claims.”

    Huh. Either (1) you are hopelessly naive, or (2) you’re bad at drafting comments for blogs. When’s the last time you met an infringer that didn’t characterize his activities as outside the correct meaning of the claim?

  55. 23

    “”As a patent attorney, I don’t want my claims to have a “correct” meaning – I want my claims to be flexible so that they can be applied against a myriad of potentially infringing configurations, or else what is the freakin point?””

    I’m not even sure if it is possible to make this lawyer look worse.

  56. 22

    “As a patent attorney, I don’t want my claims to have a “correct” meaning – I want my claims to be flexible so that they can be applied against a myriad of potentially infringing configurations, or else what is the freakin point?”

    As a patent attorney, you want your claims to have a relatively unambiguous correct meaning that is broad enough to apply to a myriad of potentially infringing configurations. Or at least a combination of multiple claims performing a similar function.

    If you can think of a potentially infringing configuration you’d like to cover, draft your claim to cover it. Drafting clear claims that cover products is our job, right? If an “infringer” characterizes his activities as outside the “correct” scope, then (1) he’s *not* an infringer, and (2) he’s probably not doing what your client invented, unless you’re bad at drafting claims.

  57. 21

    It is chasing butterflies to even think that there is or should be a “correct” meaning for a claim. As a patent attorney, I don’t want my claims to have a “correct” meaning – I want my claims to be flexible so that they can be applied against a myriad of potentially infringing configurations, or else what is the freakin point?

    Talk all day about the public notice function, but the fact is, if a “correct” meaning could be established, then all infringers need do is characterize their infringing activities as somehow outside of the “correct” scope – not hard to do.

  58. 20

    Why not ask for the broadest reasonable interpretation at trial and use the Office Actions to prove that breadth? I’ve seen it done before to prevent a narrow interpretation of a claim term.

  59. 18

    6, it isn’t an “issue”, it is simply a practical reality. PTO examiners simply do not have the time or resources to imaginatively ponder every possible scope interpretation or ambiguity of every claim term the way patent litigators can in typical multi-million dollar patent litigation.
    This is also another example of why the prior and other academic articles suggesting that all such patent problems can be somehow cured within the PTO [in its millions of low-fee ex parte examinations] are so unrealistic, and why an effectively run reexamination system is vital for less than 1% of patents that are ever actually asserted.

  60. 17

    “Also, as practical matter, even what seems to be completely unambigious claims in the PTO can often be cleverly argued to be ambiguous in litigation, where clever attorneys have nearly unlimited time and resources to do so. ”

    I fail to see an issue here if the argument is convincing. If you write a bad claim, then just because you manage to smuggle it being bad through the PTO shouldn’t entitle you to a bad claim.

  61. 16

    Jules,

    More often than not, the attorneys on the plaintiff’s side will be trying to thread the needle between prior art and the accused product.

    The attorneys on the defendent’s side make a tactical decision (noninfringement or invalidity), and then argue that certain claim elements are really broad or really narrow accordingly.

  62. 15

    The real current problem with claim interpretation is not the difference between long-established PTO claim scope tests and long-established prior judicial scope tests. It is the current differences of opinions between those current judges of the Federal Circuit who want to limit claims to specification embodiments regardless of their literal generic scope, and those judges do do not. Some of the former judges, when in 2 to 1 majorities, have not only greatly judicially narrowed claim scopes, they have even extended 112 rejections to some generic electrical or mechanical patent claims [e.g. the Lizardtech decision, et sec] as if those were chemical [“unpredictable art”] claims.

    Also, as practical matter, even what seems to be completely unambigious claims in the PTO can often be cleverly argued to be ambiguous in litigation, where clever attorneys have nearly unlimited time and resources to do so.

  63. 14

    What it comes down to is that examiners can’t be 100% sure what the applicant intends to mean with their claims. Examiners are supposed to ask lots of questions to clarify. One thing you can be sure of, attorneys will stretch to the limits of reasonability and beyond when the case gets to court. Therefore, the examiner does that up front in expectation of things to come.

  64. 13

    The standard for patentability should be simple enough that even a newbie Patent Examiner can understand it.

    That also goes for CAFC Judges’ Clerks who seem to decide many of the cases.

  65. 12

    IANAE,

    Doesn’t the presumption of validity that patentees cherish so dearly apply to the scope of claims that the applicant can enforce, rather than the enlarged scope that a “reasonable” Examiner might pursue?

  66. 11

    “And you think that judges are going to give any weight to an examiner’s claim interpretation”

    Of course not. They don’t even give any weight to another judge’s claim interpretation. Courts defer to nobody on questions of law.

    The court doesn’t care what anybody else in the world thinks of the claim. All it cares about is that someone who is paid to search the prior art has done so before the claim got to court.

    That’s precisely why the Examiner has to take the broadest reasonable interpretation – which should, nevertheless, be a *reasonable* interpretation. A narrower interpretation would mean that the entire claim scope may not have been searched in the prior art, which undermines the presumption of validity that patentees cherish so dearly.

  67. 10

    Mr. Crouch stated:
    It seems odd that the patent prosecution process does not focus on determining the correct meaning of the claims. The better approach may well be to allow the original examination to determine the correct meaning of claims in a way that can be followed by courts down the line. I suspect that this approach would actually lead to more valid patents — especially if examiners applied a stronger hand on issues of indefiniteness.

    I am wary enough of the violence done to the Doctrine of Separation of Powers by the existences of Administrative Agencies. I am not inclined to further limit Article III courts’ powers with respect to claim interpretation by low level bureaucrats. Bureaucrats, I point out, are immune to discovery. I am not sure this immunity passes Constitutional muster. Nonetheless, it is the current state of the law.

  68. 9

    “We should increase the flexibility of claim format to accommodate fields in which the symbolic rules and procedures evolve faster than the non-specialists can keep up.”

    Can you be more specific, Michael? Can you suggest a format that would better accomodate the symbolic rules and procedures of software experts (whatever those might be)?

  69. 8

    “then there ought to be a legal mechanism in place for Applicants to recapture that scope at trial.”

    Well hel Broje, why don’t we just do away with examination what so ever? If you’re going to do this “recapture” nonsense that’s precisely what you’re doing.

    That said, perhaps you’re right, maybe they should be able to recapture it in litigation, with a presumption of invalidity. When they can show by clear and convincing evidence that the claims are valid then they’ll be good to go.

  70. 7

    “It seems odd that the patent prosecution process does not focus on determining the correct meaning of the claims.”

    It shouldn’t. We don’t have all day to be wishy washy about this type of thing. When we do as you suggest production takes a NOSE DIVE.

    Never the less, we do attempt to determine the correct meanings, the correct broadest reasonable interpretation is precisely what we try to find.

  71. 6

    Dennis:

    You want to increase the responsibility of examiners? They cannot keep up with their current workloads.

    And you think that judges are going to give any weight to an examiner’s claim interpretation

  72. 5

    The underlying problem is that the group of experts in each technical field develop their own set of symbolic rules and procedures for communicating their work. Although for some technologies, patent lawyers can claim using the same set of symbolic rules and procedures used by the field of experts (think of chemical stuctures), in others (think of software) the one-sentence English claim is a disaster.

    I respectfully disagree with the suggestion of going back to central claiming. Just because it’s hard doesn’t mean it’s better to give up. We should increase the flexibility of claim format to accommodate fields in which the symbolic rules and procedures evolve faster than the non-specialists can keep up.

    I’ve always thought that one of the most important values that patent lawyers bring to the table in preventing and resolving disputes is the act of translation.

  73. 4

    ******” … stronger Examination with respect to every requirement for patentability would lead to more valid patents, at least on a percentage basis.”*****

    True, MM. More stringent Examination would filter out many invalid patents as well as valid patents, leaving almost entirely only patents with overly narrowed claims.

    I, for one, think Examintion is already overly stringent. If applicants are forced to give up claim scope due to an overly broad reading fo the claims during Examination, then there ought to be a legal mechanism in place for Applicants to recapture that scope at trial. It only seems fair, if there are two different standards for claim interpretation being applied during prosecution and during litigation.

  74. 3

    I like the broje riposte. In a civil law jurisdiction there isn’t a problem, because they don’t “do” evidence properly. in a common law jurisdiction, one needs evidence as to what the skilled addressee understands. But the last place one would go to for that, surely, is the inventor. They do it in England by cross-examination of the technical experts fielded by the adverse parties.

    Dennis, don’t go for central claiming or peripheral claiming. Instead, just adopt the by now 30 years of European jurisprudence on the compromise between the two, namely Art 69 EPC and the Protocol. Does Lemley and Burke consider that option (haven’t had time yet to download the linked Paper).

  75. 2

    “I suspect that this approach would actually lead to more valid patents — especially if examiners applied a stronger hand on issues of indefiniteness.”

    Trivially, stronger Examination with respect to every requirement for patentability would lead to more valid patents, at least on a percentage basis.

    But the point is taken: to the extent the Examiner pays attention to all possible points of confusion and demands clarification from the Applicant, the system is dramatically improved.

    Essentially, however, that is what is being done when the Examiner reads the claims broadly. The Applicant is being invited to admit on the record that the term has a narrower meaning and is invited to demonstrated where in the specification support for that narrower meaning may be found. We’ve seen, though, how certain practitioners roll: they use terms like “computer readable medium” or “processing” or “determining” or “calculating” and they define the term in a broad open-ended fashion (or not at all). Then they cry and whine when the claim is tanked because the Examiner isn’t reading it how they would like it to be read, i.e., as broadly as possible but not so broadly that the claim as invalid.

    I’m all for stronger examination and I’m also all for giving claims their broadest reasonable interpretation during examination. If you work at writing claims and definining terms appropriately, many of these alleged incongruencies between claim construction during prosecution and litigation can be avoided.

    Of course, it also helps to have an actual invention and not some abstract hoohaw “on a computer” or “in an airplane”.

  76. 1

    I imagine that the inventor Declaration explaining what one skilled in the art would understand the claims to mean would become the Reponse du Jour.

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