Arlington Industries v. Bridgeport Fittings: “The specification is the heart of the patent”

By Jason Rantanen

Arlington Indus., Inc. v. Bridgeport Fittings, Inc. (Fed. Cir. 2011)
Panel: Rader (author) Lourie (concurring in part and dissenting in part), Moore

At first glance, Arlington v. Bridgeport presents a seemingly typical claim construction opinion, as the majority opinion reads like any another decision addressing the perpetual question of whether the district court improperly imported a limitation from the specification or instead correctly interpreted the claims in light of the specification and prosecution history.  In an eloquent dissent, however, Judge Lourie reveals his deepest beliefs as to what patents should really be about: permitting the patent holder to claim what is disclosed in the specification – and nothing more.

 
Bac
kground
2010-1025The claim construction issue in this appeal involved the term "spring metal adaptor," a key component in the invention: a new fitting for an electrical junction box.  Prior to the invention of Patent No. 5,266,050, held by Arlington, most junction box connectors used a threaded nut that was screwed into the junction box – a tricky operation.  The '050 patent solved this problem by using a fitting with a spring metal adaptor (20) containing two types of outward pointing tangs (22 and 23).  The new fitting could simply be snapped into place rather than needing to be screwed.

During the district court proceedings, the court construed the claim term "spring metal adaptor" to mean a "*split* spring adaptor," commenting that "a necessary feature of the "spring" metal adaptor is that it is 'split.'  Without the split, it would not spring."  Summary judgment of non-infringement was granted in Bridgeport's favor based on this construction.

Majority: The District Court Imported a Limitation from the Specification
Treating the appeal as a standard question of claim construction, Judge Rader, writing for the majority, held that the district court erred by importing a "split" limitation into its constructions of "spring steel adaptor."  The majority first dismissed Bridgeport's argument that "spring" should be construed to mean that the metal adaptor performs a "springing" function, and instead held that it refers to the type of steel used in the adaptor. It then rejected the argument that "spring metal adaptor" should be defined by implication to require a split, considering both the specification and prosecution history, as well as the doctrine of claim differentiation, before concluding that the intrinsic evidence "reveals no intent to lit the term 'spring metal adaptor' by using it in a manner that excludes unsplit adaptors."  Slip Op. at 15.

Judge Lourie's Dissent: "The specification is the heart of the patent"
Bringing to the boil an ideological disagreement that last eruped in Ariad, Judge Lourie's dissent takes issue less with the outcome of this particular appeal than with the CAFC's entire approach to claim construction.  Expanding upon his discussion of claim construction in Phillips v. AWH Corp., 415 F.3d 1303, 1328 (Fed. Cir. 2005) and before, Judge Lourie writes: "the basic mandate is for claims to be interpreted in light of the specification of which they are a part because the specification describes what the inventors invented….The specification is the heart of the patent.  In colloquial terms, you should get what you disclose."  Arlington dissent at 2 (internal citation omitted).  In his view, the problem is that the CAFC has gotten bogged down in its "focus on our muddy, conflicting, and overly formulaic rules…when the real task of claim interpretation is to read the specification and determine what the inventors meant when they used the language they did." Id. (internal citation omitted).

"Obviously the claims define the scope of protection accorded the owners of a patent. Phillips, 415 F.3d at 1312. But in construing the claims we should avail ourselves of the knowledge we glean from the patent specification to see what the inventors disclosed as their invention. The bottom line of claim construction should be that the claims should not mean more than what the specification indicates, in one way or another, the inventors invented."

Id. Thus, Judge Lourie would have ruled differently:

"In this case, the inventors made clear in the specification of the ‘050 patent that the spring metal adapters in their invention have an opening that prevents the adap-tors from forming a complete circle. The result that the panel majority arrives at here, on remand, could be that Bridgeport might be held to be an infringer of a patent that clearly indicates that there is a split in the adaptor, by making or selling an adaptor lacking such a split. That is not a result that the patent law ought to protect."

Id. (emphasis added).

Judge Lourie's articulated ideology of claim construction offers a window into a deeper worldview: that fundamentally, patents should be narrow, limited to only that which the inventor actually contemplated at the time of filing.  If an inventor invents a circular tanged clip with a slot, the inventor should not be able to claim circular tanged clips that lack slots, period.  Following Judge Lourie's reasoning a bit further, if an inventor contemplates a circular tanged clip made out of steel, the inventor should not be able to claim circular tanged clips made out of aluminum.  Perhaps aluminum clips might be held to infringe under the doctrine of equivalents, but they are not within the literal claim scope.

This view has merit.  By placing a heavy onus on the patent applicant to think of all the possible permutations of the invention, applicants would need to think more carefully about their disclosures and patent scope would be limited to only present ideas.  Of course, inventors would necessarily be penalized because it may be impossible to imagine all permutations, especially those that rely on not-yet-envisioned technologies.   But Judge Lourie seems willing to pay this cost because of the greater certainty and narrower scope that he believes flows from limiting the inventor to only what he or she invented.   

Procedural note: There were actually two separate district court proceedings at issue, both arising in the same district.  In the first proceeding, the district court declined to adopt a "split" construction and Bridgeport was found to infringe; that appeal was stayed while the appeal of the second proceeding (in which the court did adopt a "split" construction) was pending.  The second proceeding also involved a related patent, No. 6,521,831, that contained an essentially identical term ("spring steel adapter").  The CAFC reversed the district court's construction of that term as well, a ruling Judge Lourie joined because the district court relied only on its construction of the term in the '050 patent and did not separately construe the term of the '831 in light of that specification.

Additional Commentary: In a recent article on IP Frontline, Hal Wagner offers a perspective on the ongoing discussion between Chief Judge Rader and Judge Lourie about the proper scope of claim construction.  See Wagner, "Arlington Indus. v. Bridgeport Fittings: The 20 Year Claim Construction Debate."

 

120 thoughts on “Arlington Industries v. Bridgeport Fittings: “The specification is the heart of the patent”

  1. 120

    New format is a chuckle killer. The recent comments column indicates a post by chuckle machine Ned. I cannot find it. Now how is Ned supposed to learn from my golden observations?

  2. 119

    New Light, During the debate over MPF in the ’90s, the ABA observed that two claims could be identically worded, yet not be covering the same invention.

    The way I see it, both parties here could have two different adapters, both made from spring metal. The claim could be identically worded — which presupposes the “meaning” of adapter has to be understood from its “definition” or unambiguous use in the specification. In such a case, the two identically worded claims would cover different inventions and no interference would be possible.

    In contrast, if adapter could not be construed differently, the an interference might be appropriate.

    Now, suppose an interference is declared. One inventor has a statement that he regards his inventor to be an adapter, however configured made of spring steel. The other says he regards his invention to be an adapter of a specific configuration with the preferred material comprising spring metal. Who wins?

    I would suggest the one who stated his invention to be the use of spring metal. He would win because his specification supports the claim as stated, while the other party’s specification does not support the claim.

    Pretty much Lourie’s position here. The patentee here did not invent all adapters of whatever configuration made of spring steal. He didn’t even regard that to be his invention at the time of filing.

    As Malcolm said earlier, a major problem here is lack of written description support for the claim due to its breath.

    But, as I said earlier, the whole problem could neatly be solved by considering “adapter” to be a term that defines itself wholly by its function, and not be any well understood structure. An “adapter” is a “means for adapting the one part for connection to a second part.” So understood, the claim would be governed by Section 112, p. 6, and the result Lourie wants is achieved.

  3. 116

    NAL: IANAE, I invite you not to reply.

    Thanks for the invitation, but at some point somebody else is going to work out that you proposed to determine infringement based on a BRI claim construction and on a balance of probabilities.

    And you’ll have to deal with this case, where infringement before did not invalidate.

    But don’t take it from me. Wait for someone who would actually discuss the issues raised to join the discussion.

  4. 115

    I invite anyone who would actually to discuss the issues raised, rather than play games, to join the discussion.

    IANAE, I invite you not to reply.

  5. 114

    6: There are uncountably many ways of making an electromagnetic communication device and the inventor shouldn’t have to describe them all, right? Oh wait…

    That would be a valid point, except that it’s not.

    Springy bits of metal are readily generalizable, and many different shapes of springs already existed and were well known in various arts at the filing date of Arlington’s patent.

    What methods of using electromagnetism for long-distance communication were known in the art when Morse filed his application? Semaphore? No person skilled in the art could possibly have understood his spec to encompass much more than what he explicitly described.

  6. 113

    Sorry ping, Lizardtech was also a case of an originally filed claim.

    The issue here is that the originally filed claim did not say “unsplit spring steel adapter.” It simply said “spring steel adapter.” But the spec only described a split spring steel adapter, and they are trying to enforce the claim against a defendant having an unsplit spring steel adapter.

    It’s a match for the facts in Lizardtech, where they disclosed only one way of achieving an image having a certain characteristic, and claimed broadly enough in the originally filed claim to cover all ways of achieving an image having that characteristic. Then they tried to enforce that originally filed claim against a defendant who had found another way to achieve the image having that characteristic. The Court made it clear it was a matter of written description, and not of enablement.

    In other words, they have claimed all spring steel adapters, while only describing split spring steel adapters. If the rule in Lizardtech is followed, and if the court can’t read the split limitation into the claim, then the claim removes from the public domain subject matter not described in the specification, and therefore is invalid under 112 for lack of written description. It matters not whether the claim was originally filed.

    Yes. Lizardtech. It’s an important case, and the BPAI is upholding Exmainer’s rejections of such originally filed claims under 112 for lack of written description even though the Applicant is not trying to enforce the claim against any product or method at that stage, and there is no proof that there is another embodiment covered by the claim that is not described. It’s issue that we are going to have to deal with in prep and pros, becasue the days of explicitly describing less and all claimed embodiments are gone, unless Lizardtech is overturned.

  7. 112

    NAL: Would an examiner, in a Broadest Reasonable Interpretation succeed in taking the actual claim language of Arlington and prevent Bridgeport from obtaining a patent?

    Why are you looking at this from an examiner’s perspective, when two sentences earlier you equated anticipation with infringement? Surely, if the two analyses are equivalent they demand the same claim construction and burden/standard of proof.

  8. 111

    Ned,

    Perhaps the answer can be found if we look at this like “That which comes before anticipates. That which comes after infringes” and analyze Bridgeport as if they were trying to have an application passed to issue and Arlington had been put forth as prior art. Would an examiner, in a Broadest Reasonable Interpretation succeed in taking the actual claim language of Arlington and prevent Bridgeport from obtaining a patent?

  9. 110

    IMO, it should be noted that the invention seems to refer to a “spring (ie elastic/springing) adapter made of metal”. the claim was badly written, in a poor english, but as I’m not native english speaker, I’m prone to make such a mistake, and maybe I can detect it easier.
    a “springing metal” has absolutly no technical sense as any metal has at least a small springing effet.
    The only technical sense, allowing for bad wording, is what I expressed (I would have said a “springing adaptater made of a conductive material…”) (Something made of metal that is springing… is a nonsens as all metal can do that, something made of metal made in spring (or in a water spring) has no sense either unless expressly mentionned in the specification.
    So IMO, any adapter made of metal that has a “springing” function is enclosed in the claim, the specification showing only an example of how to do it.
    The defendant could have filed a “amelioration” patent, with the ‘not-splitted-ring-adapter’… but while the patent could be new and inventive, IMO its use should still be and infringement of the previous patent. The defendant’s patent is then a “limitation”/”selection” to overcome issues that the former patent didn’t understand/know/adress.

    It seems to me that Judge Lourie is confusing what a patent disclose as a state of the art document, what the patent disclose to be satisfactory to sufficent description and what a patent can claim.
    Judge Lourie seems to think that all those “disclosures” should be considered with the same approache.

  10. 108

    Wrong again there Ned. Your penchant for force-feeding the law into the prime of your understanding (pre-1952 law) is quite the chuckle machine.

    The way forward is decidedly not retreating to the past as such.

  11. 107

    Perhaps the way forward is to recognize here that “adapter” has no well understood meaning. It is to be understood, if at all, from the specification. In this, it is functional and should be governed by Section 112, p. 6 (or the rule of Westinghouse).

  12. 106

    Ping, did you mean this from the majority?

      Specifically, the ’050 patent states that the spring metal adaptor “is typically . . . formed from spring steel such as SAE ARLINGTON INDUSTRIES v. BRIDGEPORT 10 1095 tempered spring steel or its equivalent.” Col.3 ll.7-10 (emphasis added).
  13. 105

    Nedogram,

    Spring steel of a certain grade was preferred

    Is this your way of sayin that you were wrong about the use O spring metal per se?

    You repeaten what Lounie says wont make it any more right. Lounie missed the statement – in the specification – that I done observed for ya already. Pay attention now.

  14. 104

    During the time of the Cherrys’,Jim and I were separated, not legally. But we were. You can ask him! Well anyway I met this guy. He is a Memphis Jail Psychologist. His house (White Clapboard) had a big big Power line in the Yard. In an open closet he had some large poled Flags. Flags you would carry on a march or a demonstration. they were foreign to me. They looked like Nazi Flags. I asked him what they were. He wouldn’t say, got a little nervous. I asked him as the day went on about his Job. He told me he hated black people. And they were all the same. And that you couldn’t fix them! I then said then why do you work there then? Why do you think they can’t change, I said? I was puzzled. He called me the next day and said he was not able to see me again. His reason was an old Girlfriend of his just found out she had Cancer and he couldn’t leave her now! Now I wonder!!!!!!! Was he a set up. And I found out to much when I saw the Flags? Now was that a Flag for the KKK? And if it was why was he working with men he claimed were not worth saving? Was he the first key to Wenzel, Litman,and Loffler, and of course the Cherrys’? Is he the key to the beginning of my Nightmare? I left a copy of the Blue eyed Baby at his house.
    Commercial Appeal Ad. Called Himself a professional. Don’t remember the rest!

  15. 103

    ping, there were two patents. The ‘050 had but four embodiments. All had gapped rings. The description described them as having gaps. Spring steel of a certain grade was preferred.

    Lourie said this:

    “In this case, the inventors made clear in the specification of the ‘050 patent that the spring metal adapters in
    their invention have an opening that prevents the adaptors from forming a complete circle. The result that the
    panel majority arrives at here, on remand, could be that
    Bridgeport might be held to be an infringer of a patent
    that clearly indicates that there is a split in the adaptor,
    by making or selling an adaptor lacking such a split.
    That is not a result that the patent law ought to protect”

  16. 102

    Not sure on this TINLA, as I have not observed the intial filing application, but if the initial claims say somethin to the effect of unsplit, and claims bein part of the specification, ya just might have a case there of the claim bein its own description.

    And if not, its just another case wereas I can yell at the worthless examinations bein done.

  17. 101

    That is, until the USSC steps in again…

    Yeah, like they so boldly did in Bilski?

    Don’t hold yer breadth.

  18. 100

    correction: today if we claim something functionally, either Section 112, p. 6 applies or the claim is invalid

    Ned,

    Get with da Lawl, dude.

    The use of spring metal per se in any adapter was not disclosed.

    Ned – Didcha even read the majority opinion?

  19. 99

    “Okay, yeah, but that wasn’t really what he invented. He was really stretching his claim. What he had invented was a particular way of communicating at a distance.”

    That’s strange, in this case, the patentee didn’t invent what was claimed, he was really stretching his claim. What he had invented was a particular connection device.

    The invention in this case appears to be a spring adapter as an improvement to the prior art threaded nut. There are uncountably many ways of making a resilient piece of metal, and the inventor shouldn’t have to describe them all for his claim to cover them all.

    That’s funny, in Morse it appeared that it was an electromagnetic communication device as an improvement over the prior art letter by post. There are uncountably many ways of making an electromagnetic communication device and the inventor shouldn’t have to describe them all, right? Oh wait…

    Bottom line, Ned is right about the USSC. But it doesn’t matter because patent lawlyers have fcked the system so badly over the last 100 years it doesn’t matter anymore. That is, until the USSC steps in again…

    All that said, I’m still not sure that this case would turn out differently.

  20. 98

    But, sixeepoo, they only described a split spring steel adapter, while claiming both split and unsplit spring steel adapters. And they are trying to enforce the claim against an alleded infringer who has unsplit spring steel adapters. How is that not like Lizardtech?

    FYI, my booty is off limits, you pirate, you.

  21. 97

    IANAE, correction: today if we claim something functionally, either Section 112, p. 6 applies or the claim is invalid. You will recogize, I hope, the origin of Section 112, p. 6, in Westinghouse.

    Circling back to the present claim, the disclosed invention was a spring adapter, preferably made of spring metal. The use of spring metal per se in any adapter was not disclosed.

    I hope you begin to understand Lourie’s thinking here.

  22. 96

    Ned: (BTW, I believe the construction was that adapter be made of “spring metal,” not a spring adapter made of metal. Correct me if I have this wrong.)

    Yes, that was an unfortunate bit of claim drafting. He should have claimed the resilient properties rather than ambiguously claiming (and being so detailed in the spec about) the material.

    But none of that is relevant to the “split” issue.

    Ned: Take Westinghouse for example.

    Looks like another patent-agent-assisted suicide. The court was stuck between construing the claim language as functional (in which case it would have been invalid), or assigning to it a structure (in which case it would have been not infringed). There are some other considerations in there too, leading me to conclude that this case wasn’t nearly as simple as “should claims be generally limited to the disclosed embodiments?”.

    In the present case, had the inventor simply claimed a resilient adapter, it could properly have been broadly construed without either importing features from the spec or running afoul of Westinghouse.

    How times have changed. Today there’s no trouble at all with claiming a device based on its function, as long as its structure includes some silicon.

  23. 95

    Ned-O

    Your homework assignmeents are piling up as you go galavanting across ancient Supreme Court decisions to find some justification for a panel dissent.

    You are now additionally charged with the homework assignmetn of comparing and contrasting the arguments of the majority opinion (ya know – the one that counts).

    Chop chop.

  24. 94

    IANAE, true, the split is not in the claim. But his improvement IS a spring adapter and not just any adapter made of spring metal. If the later, constructing the prior art screw connector out of spring metal would infringe. That is nonsense.

    (BTW, I believe the construction was that adapter be made of “spring metal,” not a spring adapter made of metal. Correct me if I have this wrong.)

    Take Westinghouse for example. The invention broadly was admitting high pressue from the train pipe directly into brake cyclinder for emergency braking in response to a “further traverse” of a piston, but the means disclosed for doing so was an auxiliary valve. The defendant did not use an auxialiary valve nor anything equivalent.

    It might be interesting here to read what the Supreme Court wrote that day, 112 years ago, that echo so loudly in Lourie’s dissent today:

    “But if the second claim be not susceptible of the interpretation that it is simply for a function, then the performance of that function must be limited to the particular means described in the specification for the admission of air from the train-pipe to the brake cylinder. This we understand to be the theory of the defendants, and this raises the same question which is raised under the first and fourth claims — whether defendants’ device contains the auxiliary valve of the Westinghouse patent, or its mechanical equivalent.
    In this view, it becomes unnecessary to express an opinion whether the second claim be valid or not, since, in the aspect of the case most favorable to the complainants, it is necessary to read into it something which is not found there, or, in the
    Page 170 U. S. 558
    language of complainants’ brief,
    “to refer back to the specification — not, it is true, for a slavish adoption of the identical instrumentalities therein described, but for the understanding of the essential and substantial features of the means therein illustrated.”
    In thus reading the specification into the claim, we can adopt no other construction than to consider it as if the auxiliary valve were inserted in the claim in so many words, and then to inquire whether the defendants make use of such valve, or its mechanical equivalent.”

    link to supreme.justia.com

  25. 93

    An adapter “having a split” isn’t the invention, isn’t required to realize the advantage of the invention, and isn’t in the claim.

    Word from the Man. Ned will try to shoot a basketball from the foul line with his elbows, cause he gots his hands plugged into his ears.

  26. 92

    Ned: Morse tried just that by claiming all apparatus using electromagnetism to communicate at a distance, and the Supremes said no.

    Okay, yeah, but that wasn’t really what he invented. He was really stretching his claim. What he had invented was a particular way of communicating at a distance.

    The invention in this case appears to be a spring adapter as an improvement to the prior art threaded nut. There are uncountably many ways of making a resilient piece of metal, and the inventor shouldn’t have to describe them all for his claim to cover them all.

    Granted, if his claims are drafted more restrictively, he should be so limited. But that’s not the real problem here. An adapter “having a split” isn’t the invention, isn’t required to realize the advantage of the invention, and isn’t in the claim.

  27. 91

    IANAE, if the inventor in his specification discloses improvements to prior spring connectors by using spring metal, then, of course, a claim to the sping metal connector can be claimed.

    But, if the prior connectors were not spring connectors, and the invention is the spring connector of a structure, with a preferred spring metal, the invention cannot be claimed as a spring metal adapter and have it cover different, non equivalent structures regardless of whether they use spring metal.

    Morse tried just that by claiming all apparatus using electromagnetism to communicate at a distance, and the Supremes said no. Ditto Walker in Halliburton. He disclosed a mechanical tuner for counting tubing collars in an oil well. The Supremes would not allow him to claim all apparatus for counting tubing collars.

  28. 90

    The patent enforcability should not include anything not mentioned within it true.This is a fair judgement however granting a minor improvement allowing the usage of the previous patenters I.P. is fradulantly unfair before the experation of the parent patent. If the improvement is significant enough to obsolete the previous patented item due to consumer prefrence the new product should be improved immediatly and the parent patenter should pay a royalty to the improved filer except in indegency cases where the ability of the parent or subsequent filer to afford aR+D department is unfesable. After experation of the parent patent the subsequent filer should have a full term patent of his own on the improvement if signifaicant.

  29. 89

    Ned-o,

    Let’s not forget the other (mis)uses of “spring”…

    Any items manufactured from steel processed in the summer, fall or winter are in the clear.

    Anyone using a connection immersed in a natural flow of ground water might be shocked to learn that they are not infringing.

    Electricians who must leap up to make such connections are also in the clear.

    Oh the silliness that issue forth in such surpring manner from the precision we are regarding this case!

  30. 88

    Ned, I’m trying to figure out whether we’re at cross-purposes here, but if we aren’t it means that you’ve implicitly answered my question and I find the answer troubling.

    What do you think of having a highly schematic embodiment, with (for example) just a big empty square saying “bit of springy material” between a big empty square saying “junction box” and a big empty square saying “conductor”? Is that the only way to say that one has disclosed the full scope of one’s broad independent claim?

  31. 87

    Your post is a good example of the conundrum facing inventors seeking to extend their claims beyond the examples and to the principal. This effort has many layers and features, such as the use of generic terms, the use of functional language to describe the invention in terms of what it does and accomplishes rather than what it is, but uniformly when the issue is addressed by the Supreme Court, the Supreme Court has uniformly limited the scope of the patent to what the inventor has disclosed, including taking into account what he regarded as his his invention, and equivalents thereof.

    It is a general principle to be ascertained from many, many examples Supreme Court opinions.

    In the end, if this debate shall reach the Supreme Court, the result is certain: If the inventor discloses a circular, spring metal connector that is split so that it may “spring,” it should not cover a different connector that is configured to spring in a substantially non-equivalent way regardless of whether that connector is made from spring metal.

  32. 86

    Ned: the scope of a patent can never be extended beyond what the inventor disclosed and equivalents thereof,

    That’s the real question, isn’t it? What did the inventor disclose?

    If he disclosed a number of connectors that he discovered were handy for attaching to junction boxes, there may be no indication that he’s entitled to more than his disclosed embodiments.

    However, if he disclosed that “you want something springy here, and here are some examples of bits of springy metal that I’ve thought of”, and there’s no springy thing just there in the prior art, I’m happy to extend his (properly-drafted) claim to anything springy regardless of what common features his embodiments might happen to have.

    Also, can I add that I’m finding the new display format on this blog increasingly cumbersome? The only good thing I can say at this point is that having the poster’s name above the post makes it easier to ignore certain people, but that’s not even really a help since the posts are for all intents and purposes in a random order. It’s certainly reduced the number of posts by me, for those who see that as a positive.

  33. 85

    Malcolm, “to preserve validity?” Why do you think that? I read Lourie to be concerned that the construed claims should not be construed to cover more than what the inventor disclosed (and equivalent thereof). Here is what he said in closing the most pertinent paragraph of his opinion:

    “The bottom line of claim construction should
    be that the claims should not mean more than what the
    specification indicates, in one way or another, the inventors invented.”

  34. 84

    I agree with Wegner when he writes “Until there is a final resolution of this debate there will never be clarity in claim construction at the Federal Circuit. No matter which side is correct in this debate, the more important point is that the debate should be fully aired and settled, one way or the other, for the sake of providing the trial courts a clear scheme for claim construction”.

    The issue was settled in Phillips and a legion of cases decided thereafter which were very clear that construing claims to preserve their validity is something that is done only in rare circumstances. The fact that Lourie doesn’t get it is troubling, but a failure to “get it” won’t be solved be explaining the proper procedure for the twentieth time.

  35. 83

    Given that the Supreme Court has often held that the scope of a patent can never be extended beyond what the inventor disclosed and equivalents thereof, may I suggest that claim construction include whether the construction is no more than that?

  36. 82

    Cala,

    example :
    a “spring metal adaptor” is any metal adaptator that contributes to a spring function
    ” is precisely the wrong reading of the word spring. This is explicit in the spec.

    Ya might as well skip straight through the flowing water into Summer, Fall and Winter (well, the water might not flow so well then).

  37. 81

    I’m late and i’m not US.
    I’ll just say that if EPO(europe) goes for the actual wordings of the CLAIMS, if the claims are broader than the specifications, it is ok.
    We don’t have the same oppressive interpretation of “means for”.
    “a means for…X” is a broad and precise feature in an EP patent application/patent.

    example :
    a “spring metal adaptor” is any metal adaptator that contributes to a spring function, be there a split or not.
    Under the european doctrine of equivalent, if it is unknown to use a spring adaptator for this application then any spring adaptator fall into the scope of the claim.
    it is obvious that the inventor invented not only the shape of the adaptator but also the idea of having an adaptator that is elastic due to a splring effect.

    So while I understand that US law is different and I find that totally normal, please do not write that what Lourie announced is “not inconsistant/in accordance with the world outside US”. That is totally wrong. Lourie constructs the scope of claims in the US to be less in accordance with the rest of the world (at least for EP ).

  38. 80

    I am not sure that the question always turns on whether a specific change was contemplated by the inventor.

    Just an observation: No one can tell what is “contemplated” and all business with the Office is to be done in writing.

    This sorta be like a show down in poker. When you turn the cards over, it aint what you thought you had, it be what the cards say you have.

    All “style” aside, the power of the word overcomes the power of the sword in our civilized system. Those that wield that power well are paid handsomely.

    As for the “more holistic,” that would be a wishful thinkin kind of reach. Ya be reading your own views into Lounie’s written word. His eloquence would have been a bit more forceful had he not ignored the tons O valid points (and case lawl) presented by the majority. Stickin your fingers in your ears and chanting nanananana aint too convincing – specially when ya need to show just why the majority view aint on target.

  39. 79

    Why bother to have claims?

    Lounie does smack of that doesn’t he? Did we not have a system,once upon a time, that did not have claims? Iza need ta check with the resident fossil 2-series Ned. He likes to quote (or misquote as the case may be) abrogated law and might know the answer there.

  40. 78

    Maxie,

    You’ve been away? Wow, hadn’t noticed.

    To be provocative, is this majority Decision and dissent the US equivalent of the 1973 Protocol?

    Are you sure that you are back? A panel decision is hardly “provocative“, now is it?

  41. 77

    I’ve been away. I would just like to say that I agree with Wegner when he writes “Until there is a final resolution of this debate there will never be clarity in claim construction at the Federal Circuit. No matter which side is correct in this debate, the more important point is that the debate should be fully aired and settled, one way or the other, for the sake of providing the trial courts a clear scheme for claim construction”.

    Europe, since 1973 and the Protocol on the Interpretation of Article 69 EPC, has it that BOTH sides of the debate have merit and the correct way to construe a claim is to balance off between “fair” scope for the inventor and “reasonable” legal certainty for those who find themselves reading the claim and wondering whether or not they infringe. After 30+ years of adjudicating that Protocol, judges in Europe are slowly getting there.

    To be provocative, is this majority Decision and dissent the US equivalent of the 1973 Protocol?

  42. 76

    Here we go again. The issue on appeal never properly is a determination of the facts. That’s the job of the Fact-Finder below.

    Accordingly, the function of the CAFC– or any appellate court–is to determine if the trial court erred in applying the LAW to the facts found at the trial.

    Here, however, as the do so often, the CAFC judges (and many commentators here) decide it’s their function to “really” determine the facts, i. e., to try the case from 30,000 feet. (The semantics of “spring-loaded” are not questions of law but issues for the Jury below. For example.)

    Thus, the question of law here is simply–what do claims cover: only material explicitly disclosed and literally as claimed, or non-disclosed changes, variants, etc.

    In short, this is another example of the continuing confusion about the DOE.

  43. 75

    The main improvement here is snap in connector for emt I invented the original snap in connector for ent or smerf as us electricians call it.I also designed the fitting in question on jobsite improving the existing design but they should have no right to use it without lisencing until the patent expired on snap in electrical fittings. Sub inventions associated include metal instead of plastic usage and set screw snap in combination fitting. These improvements are progressive not independant so each draws improvement from the predisessor in previous art.We need to recognize each part of the invention in order to give proper credit and compensation for each advancement so as to not retard human advancement and discourage brilliant indegent inventors.

  44. 73

    Copyrights and design patents show us what literal coverage is about. With Lourie’s approach, why even file a patent? Why bother to have claims? You can pick any invention and start making small modifications to the detailed embodiments.

    Here’s one way to look at it. Patent owner Arlington could have written a specification with minimal detail, a conceptual patent lacking many of the details of the actual patent. The embodiments could have been described in mostly functional terms and broad concepts. Now suppose they got a valid patent for that with the same claims as the actual patent? Who loses? The public. Less information is disclosed. The reason limitations aren’t imported into the claims is that we want the public to benefit from information-rich disclosures from which the invention can be conveniently practiced (a blueprint type disclosure). If Lourie’s approach is taken, drafters like me will just dumb down the detailed descriptions with less detail (or else clutter them up with inane and endless combinations of obvious permutations). The current approach is efficient for applicants and examiners and also gives the public detailed disclosures. Go away, Lourie.

  45. 72

    Lourie’s view is consistent with the Supreme Court’s view often expressed. It began at least with O’Reilly v. Morse, Diamond v. Denmead (dissent), Westinghouse v. Boyden Power Brake, and Halliburton. The stated concern is that claims should not cover (either nominally or in fact) the future independent inventions of others. Variously, the Supremes simply held aggressive claims invalid as not enabled, as not described or as being indefinite. But in Westinghouse, it suggested that claims (all claims?) should be construed to cover the corresponding structure described in the specification and equivalents.

    The rule of construction we now see in Section 112, p. 6, once applied to all claims. Anyone involved in claim construction contests know that it still does — at least to some extent. It might be beneficial for the Feds to revisit Westinghouse and decide whether it is generally applicable. The Court in Graver Tank seemed to suggest that it was.

    For the unfamiliar, Westinghouse is now described as a “defense” to infringement because of Graver Tank. However, in reality, Westinghouse was and is a matter of claim construction.

  46. 71

    ping, what statute says that an examiner must read the specification before he conducts a search and issues the first action?

    In re Morris, held that the specification binds the interpretation only to the extent of definitions and unambiguous meanings. Even so, there is no requirement in Morris or anywhere else that, at least initially, the examiner cannot give claim terms their ordinary meaning as would be understood by one of skill in the art.

  47. 70

    Problem with your preference Nedo, is that it is against the law.

    And yes, we have been down this so many times – Iza be lazy to smack you again, so just consider your self smacked for bein silly to trot out this nonsense yet again.

  48. 69

    Jason said: “Judge Lourie’s articulated ideology of claim construction offers a window into a deeper worldview: that fundamentally, patents should be narrow, limited to only that which the inventor actually contemplated at the time of filing. If an inventor invents a circular tanged clip with a slot, the inventor should not be able to claim circular tanged clips that lack slots, period. Following Judge Lourie’s reasoning a bit further, if an inventor contemplates a circular tanged clip made out of steel, the inventor should not be able to claim circular tanged clips made out of aluminum. Perhaps aluminum clips might be held to infringe under the doctrine of equivalents, but they are not within the literal claim scope.”

    Personally, I suspect that there is some nuance here that might get lost in such a simplification. Everyone hates critical element rationales, but I suspect Judge Lourie, and others who favor narrower claim interpretations based on the disclosure of a Specification, would find some changes from what is explicitly disclosed in the Specification to be understood by an ordinary artisan to be supported, and form part of the invention, while other changes would not be. I am not sure that the question always turns on whether a specific change was contemplated by the inventor. Somehow, I suspect that the substantiality or insubstantiality of the change plays a role in many people’s minds. Overall, I read such opinions as favoring a more holistic approach to claim interpretation based in large part on the specification, rather than as replacing a formulaic approach that favors broad construction with a formulaic approach that favors narrow construction.

  49. 67

    Semiotically speaking—your first issue about the meaning of the term “circular” relies upon a false premise, and your second question, “what does ‘spring metal’ mean”, is not relevant to the immediate analysis.

    An arc is a segment of the circumference of a shape, often circular. The arc depicted in the drawing is a major arc.

    In claim 8, “circular” modifies “adapter”, not “arc”, as you would suggest.

    In the M-W usage, it is the qualities of the “arc” which must “relate to a circle or its mathematical properties”.

    As the M-W definition would have it, in claim 8 it must be the qualities of the “adapter” which “relate to a circle or its mathematical properties”, NOT the qualities of the adapter which “relate to a segment of the circumference of a circle or the mathematical properties of a segment of the circumference of a circle”.

    In order for your suggestion to have any merit, the claim would have to have read something like “circularly arcing adapter”.

    Your second question, “what does ‘spring metal’ mean”, is the next natural question that arises after it is properly determined that “spring” modifies “metal”–however, the meaning of “spring metal” is not required for resolution of the basic issue–that being, is the adapter required to have a slot? Because “spring” does not modify “adapter”, a slot is not required to satisfy some non-existent “adapter spring” requirement.

    I am aware of the “precedential canon of avoiding claim interpretation that “excludes the preferred embodiment from the scope of the invention.”” as addressed by the CAFC in Helmsderfer v. Bobrick Washroom Equipment in 2008. However, even Dennis remarked that in that decision, the appellate panel gave only “lip service” to the canon, and that “the court gave absolutely no weight to that “caution” in its claim interpretation.” because there were “other claims…included in the patent…that…may be the ones that cover the preferred embodiment.”

    In the ‘050 patent, there are 8 claims, all of which refer to a “circular spring metal adapter”. I can see no good reason why the same logic the CAFC applied in Helmsderfer should not have been applied in this case, such that “spring” is in no way required to apply to “adapter” in claim 8 in order for the precedential canon to be fulfilled.

    So, your first issue about the meaning of the term “circular” relied upon a false premise, and your second question, “what does ‘spring metal’ mean”, is not relevant to the immediate analysis.

    Of course, after this initial step determines that “spring” modifies “metal”, the parties could dispute the meaning of that compound term—if it turned out that it wasn’t amenable to a coherent interpretation, the claim would fail under 112; but that is another issue entirely.

    Check out the CAFC’s decision in O2 Micro, where they effectively lay out all sorts of potential threshold conditions for entry into Markman-style claim construction: “When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute. . . . When the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.” Chock full of potential conditions: there must be a dispute, it must be actual, it must have been raised by the parties, it must regard the “proper scope of the claims, and perhaps most importantly, the dispute must be “fundamental” and must regard “the scope of a claim term”.

    Even Dennis independently suggested a limited threshold back in 2008 in his discussion of Hearing Components v. Shure: “Perhaps the solution is to require some threshold explanation as to why each additional term needs to be construed.”. Dennis’ suggestion was to apply some threshold to claim construction requests in excess of some particular number.

    My suggestion is that some threshold has to exist for ALL claim construction requests, whenever and in whatever quantity made.

  50. 65

    BRI, in full, is BRI “consistent with the specification.” What this means is STILL in dispute. IANAE and I had a major disagreement on whether a claim as construed under BRI is “broader” if it does not read on any of the embodiments. He suggested that if such an interpretation is in fact possible, the claim is indefinite under Section 112, p. 2, and should be clarified.

    I for one favor in principle a form of examination like this:

    The examiner initially examines the claims without reading the specification so as to not bias his interpretation. The applicant then clarifies the claims, if necessary, by argument, by reference to definitions or unambiguous use in the specification, or by amendment. The examiner then conducts a fresh search with the clarified claim and if necessary issue a second non final action.

    What I oppose is the use of BRI in post-grant procedures. There is NO justification for this. Rather, there is positive harm to the patentee who may have to add limitations to a claim simply to combat BRI, not to combat the prior art. In doing so, the patentee may lose substantial past damages. That is postively outrageous, IMHO.

  51. 63

    My casual observation (which by the way is usually golden), is that you are “assuming” an outlandish construction, and are “assuming” that construction is not supported by the disclosure.

    Both of these assumptions are demolished in the majority opinion.

    Have ya read that opinion?

  52. 62

    Why give property rights to something the applicant didn’t contribute? 112 to invalidate by clear and convincing evidence after an outlandish construction not not supported by the disclosure is not a sufficient answer. I also think the article’s reductio ad absurdum argument distorts Judge Lourie’s opinion considerably.

  53. 61

    On the subject of the opinion I would say that I’m down with Lourie’s view, but we’re too far down Rader’s path in mainstream patent law understanding to just pick up and go back now. If the year was 1900 on the other hand…

  54. 60

    Does everyone think the new comment system is the sux? I dislike change and all, but I think I dislike this whole, last in-to the top comment structure and the nesting is horrible. Plus, it could just be my resolution or something but it seems like the nesting just looks wierd on the page because the comments aren’t small enough for you to be able to easily tell what is nested where and what isn’t.

  55. 57

    Right. Tell Merriam-Webster that “circular” and “arcing” are mutually exclusive terms. From their definition of “circular”:

    2a : of or relating to a circle or its mathematical properties < a circular arc>

    And if “spring” modifies “metal,” then what does “spring metal” mean?

    It seems to me that “Initial semiotic and grammatical analysis of a claim ON ITS FACE,” without consideration of the context provided by the rest of the specification, is likely to yield nonsense as often as not.

  56. 56

    In Arlington Industries, Inc v Bridgeport Fittings, Inc., CAFC January 20, 2011, Judge Lourie states:

    “…the real task of claim interpretation is to read the specification and determine what the inventors meant when they used the language they did……the claims should not mean more than what the specification indicates, in one way or another, the inventors invented.” (dissent p4)

    The definative decision in the United Kingdom on the issue of patent claim interpretation is Kirin-Amgen, Inc. v Hoechst Marion Roussel Ltd UK House of Lords (21 October 2004)

    link to bailii.org

    Lord Hoffmann, delivering the opinion of the House of Lords reviewed the history and principles from the British perspective (paras 18 to 52 of his Judgment). Referring to the key prior decision in Catnic Components Ltd. v. Hill & Smith Ltd (H of L 1980), he quoted Lord Diplock as propounding that the solution was to adopt a principle of construction which actually gave effect to what the person skilled in the art would have understood the patentee to be claiming. Lord Hoffmann then summarized this principle as follows:

    “What principle of interpretation would give fair protection to the patentee? Surely, a principle which would give him the full extent of the monopoly which the person skilled in the art would think he was intending to claim. And what principle would provide a reasonable degree of protection for third parties? Surely again, a principle which would not give the patentee more than the full extent of the monopoly which the person skilled in the art would think that he was intending to claim. (para 43)”

    Consequently, if a claim is intended to cover products or processes which involve the use of technology unknown at the time the claim was drafted, then the patent specification and claims based thereon should be drafted so that a person skilled in the art would understand the description in a way which was sufficiently general to include the new technology.

    link to en.wikipedia.org

  57. 55

    Ultimately, I think that the proper resolution of this case should have been a ruling of a 112 violation based upon the discrepancy between the claim language and the drawing disclosure.

    I modify what I said in my earlier post, in that the drawing could provide evidence that “circular” means “arcing”–but because the two terms are in the first instance mutually exclusive, such evidence should be used for only a 112 invalidation.

  58. 53

    I agree totally with this.

    I believe that the prescription for analysis in my rambling post on QoL threshold, if followed, would proceed to a 112 analysis and foreclose a Lourie-type claim construction analysis which, as MM said, would otherwise short-circuit a 112 analysis.

  59. 52

    I think an important concern here is the legal threshold required in federal court to raise a question of law, in a general sense, not in a patent-specific sense.

    There must be some effective filtering mechanism that prevents litigants from simply needing to make an unsupported suggestion of their preferred construction of a claim term. The issue of having a large number of terms disputed, and going to Markman, should be headed-off by a more basic QoL threshold consideration.

    A particular litigant should have to meet a basic evidentiary threshold in order to justify the court’s (and the parties’) allocation of resources to a Markman-style claim construction hearing.

    Look at this case in particular. The departure point for raising a QoL is the language of the claim.

    Claim 8 of the ‘050 patent reads, in part: “…a circular spring metal adaptor surrounding said leading end of said electrical connector…”.

    First, as a pure semiotic issue, an adapter with a break is an “arcing” adapter, as distinct from a “circular” adapter. This is a particularly useful illustration as, in the absence of lexicographic evidence from the patentee to the contrary, “circular” and “arcing” are mutually-exclusive terms–something can be either circular OR arcing, but not both. Qualifying evidence would therefore consist of specific lexicographic evidence from the spec or pros. history that “circular” means “arcing”. In the absence of any such evidence, should arguing that “circular” means “arcing” meet the QoL threshold?

    Second, as a grammatical issue, “spring” seems to me to clearly modify only “metal”, and not “adapter”–for instance, “circular adapter” and “metal adapter” both make sense, but “spring adapter” does not make any sense in this context–there is no adaptation for a spring. For the “spring” concept to apply to “adapter”, it would have needed to have appeared as “springing”, as in “springing adapter”. “Spring”, both colloquially and grammatically, therefore modifies only “metal”.

    Qualifying evidence would therefore consist of specific grammatical evidence from the spec or pros. history that the normal and ordinary rules of grammar do not apply to at least claim 8. In the absence of any such evidence, should arguing that “spring” modifies “adapter” meet the QoL threshold?

    I’m not sure why this appeared at all as an issue at the district court level in the first place–IMHO, there is no genuine issue of law raised by the either the suggestion that “circular” means “arcing”, or that “spring” modifies “adapter”, upon a first-instance, purely semiotic and grammatical analysis of the claim.

    Such a first-instance construction of the claim should be appropriate to determine if the genuine QoL threshold has been met–after all, “We begin claim construction analysis with the ordinary meaning of the disputed claim term” from “standard dictionaries of the English language [and the standard rules of English grammar].” (Inverness Medical v. Warner Lambert, 309 F.3d 1373 (Fed. Cir. 2002)

    The initial semiotic and grammatical threshold would be appropriate in view of the suggestion made in Telegenix that claim construction should consider first the claim language and dictionaries before consulting the specification and prosecution history, because “Consulting the written description and prosecution history as a threshold step in the claim construction process, before any effort is made to discern the ordinary and customary meanings attributed to the words themselves, invites a violation of our precedent counseling against importing limitations into the claims.”. (Texas Digital v. Telegenix, 308 F.3d 1193 (Fed. Cir. 2002)

    Initial semiotic and grammatical analysis of a claim ON ITS FACE, combined with a responsive evidentiary showing, should form the threshold QoL test, without which no Markman hearing, to evaluate the evidence and reach conclusions, should be granted.

    We are going through the same threshold question in, for instance, the IC arena. This threshold should be directly addressed and resolved in the name of at least judicial economy, if not entire litigation economy.

  60. 51

    LOL – touche – cepts I be the one who provided the big picture (ya just got the roles reversed is all).

  61. 50

    It’s a judicially sanctioned double-standard. So you would likely be shooting yourself in your client’s foot if you argue this case in an examination.

  62. 49

    The large gears (je) are trying desperately to engage the tiny gears (vous) with no prospect of success.

  63. 48

    “It helps to prevent the profession of patent prosecution from sinking into the swamp of sleaze and hackery.”

    Do you suppose clients’ pressure to reduce what they pay for patent applications encourages hackery?

  64. 47

    Hutz If the Liebel-Flarsheim conclusion is applied to other patents (where the plaintiffs were not clearly bad actors) you open up the majority of patents to nonenablement challenges as I can always come up with an embodiment that was not enabled.

    Lionel, I recognize the problem. We hashed that out years ago. But I’m not aware of any scourge of enablement invalidations occurring under this theory. This case again seems to be a classic case of “be careful what you ask for” and “be careful who you sue”. It takes a lot of work to develop a broad invention and and draft a specification and claim to cover it in a bulletproof manner.

    I think that’s a good thing. It helps to prevent the profession of patent prosecution from sinking into the swamp of sleaze and hackery.

  65. 46

    IBP Go back to real language ping–I’m sure I’m not the only one ignoring your posts because of your language.

    IBP, you are correct. Good advice.

  66. 45

    Hodges The position of Judge Lourie’s dissent is to read the specification to discover the limits of what the inventor specifically contemplated and to cut off claim scope based on this.

    That does seem to be Lourie position. But that’s not the job of courts. Lourie’s approach is to effectively re-write the claim so it is no longer subject to invalidity under 112. The Federal Circuit toyed with that concept in its early days but thankfully realized that it was wrong and made that quite clear in Phillips (one of the best decisions ever written by the Federal Circuit).

  67. 44

    Wow. What timing. I just argued Lourie’s point (for the most part) with an examiner by requesting the examiner to use the written specification to determine the scope of a claim term rather than what he felt its scope should be. The Examiner replied that claim terms are to be given their broadest scope, even including that which had nothing to do with what was discussed in the specification (just so the examiner could apply a prior art patent against the claims).

    Funny how they always hammer away at the limits of patentees, but never seem to extend that same limit to what patent examiner can do.

  68. 42

    So, what are the odds of the claim now being held invalid under 112 for being so broad as to claim subject matter not described in the specification (a la Lizardtech)?

  69. 40

    Um, sure, that’s one way O looking at it.

    I tend to see gears missing the point and spinning uselessly.

  70. 39

    George is correct. I would have liked to see Lourie’s opinion if the spec had added a line like “any structure having a spring function may be used, including, for example, split or unitary metal adaptors, flexible tangs, elastic members, etc.”

    Would he permit only the specifically-listed examples to infringe the claim, or would he permit the generically-stated any structure having a spring function? If Lourie really means to limit claims to disclosed specific embodiments, welcome to the era of the 500-page spec and endless means-plus-function (with little else) claims.

    Why can’t we just go with interpreting the claims to include what is disclosed *or enabled*? Not bright line enough?

  71. 38

    OMG – now I am Haggy. Things are just getting worse all the time.

    On an equally jovial note, “should be judged in light of the contribution that the patent *actually* makes to the state of the art” – and they are. The legal mechanism for such are things called Claims. Maybe ya heard of em. And there be laws tieing these things called Claims to the rest O the application. And not only do we have a whole government entity dedicated to figuring these things out, we got courts that also decide such things. Maybe actually reading the majority opinion here might help ya. Here’s a hint: those things that look like other cases – that be called case law. You can look em up and see what has already been decided and considered as to what the legislated law means. It usually is a good idea to follow such. And usually, a dissent such as this, that eloquently wants to legislate fromthe bench is a dissent for a reason, and until notified otherwise, dissents do not have the force O law, no matter how many times they are trotted out.

  72. 37

    I hope no-one would disagree that, come litigation, the scope of the protection provided by a patent should be judged in light of the contribution that the patent *actually* makes to the state of the art. Over-reaching claims will always risk either invalidity or limitation, when analysed in light of the patent as a whole and judged against the real-world prior art.

    IMHO, it should be part of the examiner’s job to consider this aspect pre-grant, which isn’t possible if the examiner only looks at the claims. The EPO is increasingly enthusiastic about this, and it’s going to bite a lot of EP apps that don’t take proper account of EPO statutory requirements from the outset (the EPO calls it “raising the bar” for patent app quality).

    “Quick and dirty provisionals” just won’t (and IMHO shouldn’t) cut it, if their priority dates are to be relied on.

    Quality drafting is key. Juducial bias is another thing altogether.

  73. 35

    Looking at the ‘050 patent one might guess it was a good example of a D. Pressman DIY self-immolation. There is no patent lawyer listed on the patent, but apparently it was prosecuted by a coy D.C. firm.

    Good example of a great idea being scrwd by brain-ded patent prosecution. I must have made hundreds of these connections while re-modeling houses and my electrician brother-in-law has made thousands and thousands over his career. These connections are a pain in the but. Neither of us ever once would have considered such an elegant approach, although, admittedly, we may not be the brightest bulbs in the marquee.

    But this patent was a skunk walking down the highway of incompetence waiting to become road-kill.

    Why wouldn’t there be a broad disclosure and claim to the general concept of a spring-based retainer, and dependents for each of the 2 distinct spring mechanisms disclosed?

    Why, would anyone limit this adapter to steel????

    Now…do I get to choose my new ID icon?

  74. 34

    That’s why provisionals should be reserved for an application that already includes claims, with the claims just having been excerpted out.

    The only point of a provisional should be to buy more time to hone business- and patent-filing-strategies, NOT to buy time to “perfect” the disclosure.

  75. 33

    Case in point (and chuckles O irony):

    Even “convicted lulz” lacks “the courage of [his] convictions“.

    Yum yum.

  76. 32

    Like whoo died and left you king of what is or is not impressive witticisms.

    Take a look around DCT – you are in the extreme minority for posting “under your own name”.

    If ya dont lighten up, you will miss out on like 97% of the actual witticisms in the brave new world.

  77. 31

    His views are not inconsistent with rest of the world.

    Really? the pretentious use of the double negative – not inconsistent – almost obscures the fact that your poiint about ROW is immaterial.

    US judges need to apply US law. Legislating from the bench should be frowned upon – and is in most circles.

  78. 30

    Hey ping–

    I’d really like to hear what you have to say, but I find it impossibly burdensome to read your posts.

    Go back to real language ping–I’m sure I’m not the only one ignoring your posts because of your language.

  79. 29

    Mr. Toedt,

    If you’re looking for posters with the courage of their convictions, you’re at the wrong site.

  80. 27

    Once again Malcolm is showing his patent inexperience.

    If the Liebel-Flarsheim conclusion is applied to other patents (where the plaintiffs were not clearly bad actors) you open up the majority of patents to nonenablement challenges as I can always come up with an embodiment that was not enabled.

    Limiting the scope of the claims is the only rational way to deal with them.

    Having said that, I do not believe Lourie’s statements are that bad as it’s generally good practice for the patent counsel to tease out as many alternative embodiments and equivalents during the drafting process. Yes, no rational person thinks the inventor should be limited to their precise invention, but unless the obvious alternative components and designs are explored or suggested by the written description, the inventor cannot expect to be protected.

  81. 25

    If Judge Lourie’s view prevails, just think what will happen to all of those patents based upon “quick and dirty” provisional applications used to secure a filing date and dressed up later with patent attorney supervision.

  82. 23

    Sounds more like Lourie is reading each claim limitation as a means-plus-function. His views are not inconsistent with rest of the world. Europe goes by actual words, and China goes by actual disclosure.

    IMHO, we should keep a close watch on this line of legal reasoning. It could be a major shift in patent law.

  83. 21

    Unless of course the materials had some property that was essential to the function of the structure

    Essential? Um no, that be the wrong analysis. How abouts explicit – as noted in the majority opinion. Didya read teh majority opinion there great white hope?

  84. 18

    The issues in the debate that Dennis highlights is very important to those who draft patent applications. Basically, they need to know how to write the specification and the claims so that the applicants can obtain the scope of protection desired (I will just assume for this discussion that the requirements for patentability are otherwise complied with for whatever scope is described in the specification and embodied by the claims—if it were otherwise, any given court case could be decided on that basis rather than on the basis of how to properly interpret claims in light of the specification).

    It used to be recognized that the contribution of an inventor could be greater than the specific embodiments that the inventor specifically contemplated. See, for example, the traditional (now eviscerated) doctrine of equivalents—a doctrine based on the broader contribution made by inventors. As an example, if an inventor invents a new and innovative plowshare shape, and describes only an example of the plowshare made out of wood and only an example of using the plowshare attached to a horse or ox, it would actually be fair to give the inventor protection for the plowshare shape made out of metal and used attached to a tractor. The inventor invented the innovative shape, after all, and it can be applied in many ways beyond the specific embodiments contemplated. The traditional doctrine of equivalents solved this; and if the claims were not limited to wood plowshares and to use only with a horse or ox, then the claims in the past would have been interpreted to cover these other modes. This seems fair.

    The position of Judge Lourie’s dissent is to read the specification to discover the limits of what the inventor specifically contemplated and to cut off claim scope based on this. As this case seems to show, even if the specification includes disclaimers that the scope of the claims should not be limited to the examples or specifics in the specification, Judge Lourie would still limit the claims to what was specifically contemplated. It would seem that applicants would be encouraged to write extensive specifications describing in detail every mode and embodiment that time permits in order to satisfy this standard. It is not clear that this is good policy.

    Regardless, I agree with Dennis that this debate is not really about law or specifications and claims, but is really about the policy debate between narrow claims versus broad claims. On this and many other fronts, this debate turns on whether the debater believes that patents are good for the country or bad for the country (or, perhaps, whether patent protection beyond a threshold scope is good for the country or bad for the country). I continue to believe that strained legal rules and strained interpretation of the law by judges is not the best way to resolve this policy debate.

  85. 17

    Jason’s example of steel vs. aluminum is not good. Judge Lourie’s viewpoint is directed to the structure that is made, not the the materials that are used to make the structure. Unless of course the materials had some property that was essential to the function of the structure.

  86. 15

    Thus the scope of the invention should be determined by the appended claims and their legal equivalents, rather than by the examples given.

    Would/should the analysis of the claims be different if this line was not in the specification?

  87. 14

    In today’s world of the all things visual consider the following. Section 112 in essence says write the specification that explains the invention, and “… conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” The USPTO full text database presents the claims first followed by the specification.

    The current use of vocabulary obfuscation in both the spec and the claims in attempts to get the broadest possible coverage for the invention to include technology and science not yet defined means patents are heading down a path where the only way to know what really are the boundaries of a claim or a patent will be to litigate it and wait and see what the court says. Not a helpful direction regardless of which wide of the spec/claims issue you’re on. Eschew patent obfuscation.

  88. 13

    I wonders if damages (if any) will be based on one quarter of the year, as summer fall and winter steel won’t qualify.

    Of course, if Lounie went the liquid route, heda be all went – not ta mentioned a bit shocked.

  89. 11

    In an eloquent dissent

    If by eloquent, J-Boy, ya mean that Lounie ignores all the case law and all the arguments in that o so dull (but legally sound) majority opinion and even the actual specification as written, then well yeah “eloquent” it might be.

    Did you have a former position defining the term “quality” for the Office?

    But hey – ya be on a glorious start to an academic career where ignoring what the actual law is comes mighty in handy when ya gotta write some excitin stuff to be published, and the plain truth is just O so hum-drum.

  90. 10

    We’ve discussed this issue ad nauseum, as I recall (Lizard Tech, that shoe case, etc.).

    Um, no I don’t think wez have.

    Ya be forgetin that claims be a part of the spec, right? Claims are often very carefully drafted to achieve a maximum of protection (at least by most normal peeps).

    O wait – Iza forgot – you be the king of teh 95% achievement picture claim fame. Ya still holdin out from sharin your success secrets with the rest O the practicioners for your art unit, arentcha? Unless of course, you have tried to share it and got laughed out O the building for the simplistic picture claims and minimal coverage that follows.

    Lolz Sunshine.

  91. 9

    ping let the Office skip on their duty [to Examine claims and require Applicants to amend as needed] and punish the applicant….Applicants are not in the examination bizzness.

    Whether Applicants are in the “examination business” or not is beside the point. If an applicant presents and is granted claims that cover embodiments that are not disclosed in the specification, are disclaimed in the specification, or otherwise do not appear to have been conceived of as of the effective filing date of the application, there is a fair chance that those claims are invalid, especially when the applicant chooses to go after an infringer who is operating outside of the scope of claims that the applicant actually deserved. We’ve discussed this issue ad nauseum, as I recall (Lizard Tech, that shoe case, etc.).

    Too bad, though, that Lourie wasn’t on the panel which wrote the recent “automatic toolbar popup” decision. They could have used his insight there.

  92. 8

    It be funny how Lourie says the spec is the heart, but counts out the one line that he dont like:

    Thus the scope of the invention should be determined by the appended claims and their legal equivalents, rather than by the examples given.

    Yep. That be a line in the spec alrighty (then). Nothin like nakid blatant judicial activism. Funny how the majority op tears Loounie ta shreds.

  93. 7

    Yikes – it looks like we have another casualty in this new system – nesting forces comments to comments to come after the first comment, but succeeding comments come in between the first comment and the comment on the first comment.

    If the comments were anybody’s but mine, Iza say this be downright ugly.

  94. 5

    where the PTO fails to spot the issue and applicants fail to take steps to address the 112 problem, the correct result is invalidation, not narrowing of the claim.

    Sure sunshine, let the Office skip on their duty and punish the applicant. Didntcha here? Applicants are not in the examination bizzness.

    Feeling rather draconian, arentcha?

  95. 3

    I can see how there is a conflict of patent principles here. The Arlington fitting would appear to require a split for all of the embodiments illustrated or contemplated but the claims are not limited to a split configuration. The Bridgeport Whipper-Snap product cleverly redesigns so that a split is not necessary and so you might think that the Arlington patent should not have the right to exclude it. Here’s a link to a photo link to esu.com

    I guess that’s why we have dissenting opinions.

  96. 2

    DC Judge Lourie’s articulated ideology of claim construction offers a window into a deeper worldview: that fundamentally, patents should be narrow, limited to only that which the inventor actually contemplated at the time of filing.

    Dennis, you seem to be suggesting that claims that are “limited to … that which the inventor … contemplated at the time of filing” necessarily “narrow”. Why should that be the case?

    I don’t think there can be any dispute as to whether “patents should be limited to only that which the inventor actually contemplated at the time of filing.”

    But the proper procedure for ensuring that this goal is achieved is not to pretend that the claims recite elements that the skilled artisan, reading the claims, would not understand to be present in the claims. The proper procedure is to invalidate non-enabled claims and claims lacking written description support under section 112. Perhaps the Federal Circuit (or at least some of its judges) are having second thoughts about the de-fanging of 112.

    Rather than talking to Judge Rader, it seems to me that Judge Lourie should talking to the USPTO and its Examiners, exhorting them to be more diligent about forcing applicants to amend their claims during prosecution to reflect what has, in fact, been invented. Granted, this can be a difficult task and its not always easy to predict what element of a claim will be most hotly contested. In those inevitable cases where the PTO fails to spot the issue and applicants fail to take steps to address the 112 problem, the correct result is invalidation, not narrowing of the claim.

  97. 1

    It is amazing that this still has not been resolved 58+ years after the 1952 Patent Act.

    §112, ¶1 states what should be in the specification. §112, ¶2 states what should be in the claims.

    It would helpful to the debate if each side made its arguments based on the statutory language. May the better argument prevail lest some law clerk at the Supreme Court be the final arbiter.

Comments are closed.