Calcar v. Honda: CAFC’s First Post-Therasense Inequitable Conduct Opinion

By Jason Rantanen

American Calcar, Inc. v. American Honda Motor Co., Inc. (Fed. Cir. 2011) Download 09-1503-1567
Panel: Lourie (author), Bryson, and Gajarsa

In its first decision addressing the issue of inequitable conduct since Therasense v. Becton Dickinson, the Federal Circuit affirmed the district court's finding of materiality with respect to one patent, but remanded for further findings on materiality (in connection with the two remaining patents) and intent (with respect to all three patents).

The inequitable conduct issues in this case revolve around a family of patents sharing a common specification.  One of the patents, No. 6,330,497 ("the Three-Status patent"), relates to "a system that allows a user to select an option from a list, to be shown a preview of information about it, and then to activate it."  Slip Op. at 12.  Two other patents, Nos. 6,438,465 and 6,542,795 ("the Search patents") claim a system for performing searches on a system in a vehicle. 

Prior to the filing of the patent application, the inventors closely examined an Acura 96RL that contained a navigation system with features similar to those later claimed in the Three-Status and Search patents.  Although the 96RL system is described in the background section of the patent application, that description is limited to the navigation aspect of the system, not the user interface aspects.  Thus, the inventors "never disclosed to the PTO the aspects of the 96RL system relating to the three-status feature or the search feature."  Slip Op. at 14.This failure to disclose formed the basis of the district court's finding of inequitable conduct, which Calcar sought to overturn on appeal.

Jury Verdict Merely Advisory
In reaching its conclusion of inequitable conduct, the district court disregarded an advisory jury verdict of no inequitable conduct.  The CAFC rejected Calcar's argument that this constituted error.  "Inequitable conduct is equitable in nature, with no right to a jury, and the trial court has the obligation to resolve the underlying facts of materiality and intent…Where a court submits the question to a jury, and both parties agree that the jury findings will be advisory, the court shall treat them as such. [] That is the universal rule."  Slip Op. at 23 (internal citations omitted).

Appliation of Therasense
The CAFC next turned to the substance of the district court's findings.  With respect to the Three-Status patent, the panel concluded that, even under the "but-for" standard of Therasense, the district court had correctly found materiality.  "We agree with Honda that the undisclosed 96RL information was material to the Three-Status patent because the jury found, and the court upheld, the asserted claims as anticipated by the 96RL system, and ACI has not appealed that decision to us."  Slip Op. at 25. 

The materiality of the Search patents was more questionable, given that the jury had rejected Honda's invalidity arguments based on the 96RL system.  Nevertheless, "the withheld information may be material if it would have blocked patent issuance under the PTO's preponderance of the evidence standard, giving those patents' claims their broadest reasonable construction."  Id.  As a result the CAFC remanded to the district court to assess materiality under a "but-for" standard, applying the evidentiary standard and claim scope used by the PTO.  The CAFC did not give any guidance as to how the latter might differ from the scope previously applied by the district court.

The CAFC reached a similar result on intent, concluding that the district court had relied on a sliding scale standard, "basing its finding of intent significantly on the materiality of the 96RL system to the claimed invention."  Slip Op. at 26.  That approach was rejected in Therasense, and the CAFC remanded for further consideration in light of that opinion.

Note: The court also affirmed the district court's rulings of noninfringement as to several other patents and reversed its denial of judgment as a matter of law that another patents was invalid. 

For those who find this information noteworthy, the panel in this case included two members of the dissent in Therasense.  Judge Lourie, the author of this opinion, was a member of the Therasense majority.

72 thoughts on “Calcar v. Honda: CAFC’s First Post-Therasense Inequitable Conduct Opinion

  1. Open that back door and it will soon bring down the whole house of cards the Feds are trying to build.

    Ned,

    You ask for alternatives and I point out that I have already given them and give you some more and you just pooh-pooh them without any rational explanation.

    How would expanding the court’s own doctrine to include non-atom-bomb options “bring down the whole house of cards?” What exactly is this “house of cards” that you see (it is not evident to what you are referring to).

    Once again, rather than discuss, you merely state that others “must get with it’ and conform to your pronouncements.

    Sorry Ned – such conslusory statements are totally unconvincing.

    And while we do make some ground by your inclusion of an example (THANK YOU!!), your example actually falls to the idea I gave to you (and you somehow missed) – that of the Office simplly not requiring particular submissions – you should be able to see the difference between a “not requiring’ stance and a “prohibiting’ stance.

  2. Hardworking and Provider of the Actual Specifics from the Recent Prometheus Thread That Shows Just Who Actually Plays the Fool and that Would be Malcolm says:

    Malcolm,

    Your “definition” of willful ignorance is quite frankly not one that would be accepted by any IP professional- or any reasonable person for that matter. The only people being truly willfully ignorant on these threads are you and Ned.

    You mistake my calls for civility – as do most predators mistake kindness – as a sign of weakness. Sadly, in this forum there is no available remedy for your instant crassness or uncalled for snideness.

    The most obvious reason you choose not to go into specifics from the recent Prometheus thread is that the specifics belie your statement. The specifics, reviewable by anyone who would care to do so, plainly evidence exactly who is engaging in deplorable “bad behavior” – hint: that would be you.

    Let’s actually review a few of those specifics, shall we?

    My first comment on the thread was “ all I see is squabbling along the same old lines and no one listening to anyone else and no issue being progressed. Implacable camps talking past one another – a waste of time for everyone

    You only offered a snide comment. I pointed out that such was inappropriate and did not advance any issues.

    Our next interchange had to do with my scolding you and pointing out substantive reasons why your posts simply do not garner any respect due to your (willfully ignorant) muddling of 101 with 102/103.

    Your response was not an admission of your errors, but a challenge for me to answer questions you had posed to another poster. In the interest of advancing the issues, I answered those questions.

    Your reply sought to artificially parse my response and take things out of context. When I corrected you, you threw a hissy fit, descending, as is your habit, into name-calling (rather ironic for someone else prone to asking others to “grow up”).

    Once again, I called you out for your inappropriate responses. (Is my calling you out the “games” you think I am playing?) I called you out on the inappropriate parsing of my answers – just as you inappropriately parse claims in your mistaken 101 analysis (your penchant for ignoring how the law says to treat the 101 question may very well be uncorrectable – but such does not mean that anyone has to accept your erroneous legal thinking).
    At this point I asked for a well-deserved apology or a pincite to where you based your accusations concerning my so-called “lies.”

    Of course, you provided neither – and you still have provided neither.

    Instead, you went off (again) on yet another childish rampage. This time joining in on the sock-puppet accusation parade.

    My calm response was to yet again try to explain to you why your posting style eradicates any level of respect for what you are trying to say. I also set the record straight for your out-of-context taking of my comment to Hans Blix.

    Your childish response – as is often typical, was to paint me with your own behavior (yet another tiresome game you play that fools no one). I called you out (yet again) to discuss the issue at hand – you refused. I called you out to not misrepresent what I said, to not take anything I said out of context – You could not do so. I called you out on your penchant for name calling and cyber-bullying. I called you out on your lack of substance. And I asked you to address the issue like a grown up.

    As I answered you – I also hoped to lay the rest the Blix/6/Malcolm sock-puppet empty accusations – which again fool no one in their attempts at misdirection.

    Was it my urging you to stop name-calling and actually stay on topic and actually discuss issues that so peeved you? Or was it (a much higher probability) that in actually staying on topic and actually discussing issues you would be forced to stop your inane arguments that made you so angry?

    Anytime you want to stop your game playing and actually grow up, no one will mind. No one, and I do mean no one will miss the childish rampages that you are so prone to engage in.

    I would love to bank on an actual on-topic and non-misaligned response from you (which would include my well-deserved apology), but I just don’t see you owning up to the actual truth of your behavior. Such is beyond your capability.

  3. Ah, come on now. Open that back door and it will soon bring down the whole house of cards the Feds are trying to build.

    The PTO has to get with it and come up with a rule that will prevent disclosure of cumulative references. Just for example, applicants should not be required to disclose references cited in corresponding PCT or foreign applications. The office ought to provide links to those examinations for their examiners to simply click on to see what was up, with some indication, such as a color flag, to indicate whether there is anything new.

    I am sure foreign offices will (and perhaps already do) provide links to US public PAIR data for their own examiners.

    Similarly, if we disclose related cases, the examiner should be provided links to their prosecutions to check them at will. Having to dump related US prosecutions on the patent office is such a massive FUBAR as to be beyond description for its waste.

  4. Hard, you and I had a discussion about this when Therasense first came down. I don’t know about Boundy, but I brought up whether the PTO will continue to impose inconsistent obligations of disclosure on applicants and just how this would really confuse everyone if they did.

    I have been working on trying to develop a workable proposal for a new rule that would accomplish what the Feds stated they wanted in their decision. I would be surprised if Kappos and crew were not thinking along these lines as well.

    So, if you really want to help out here, why don’t you think about the objective just a bit and see if we could come up with something that would work.

  5. I agree that Ned is mistaken here. But as to his “bad behavior”, it’s really nothing compared the willful ignorance you displayed in the recent Prometheus thread. And, no, I’m not going to go into specifics. The issue will come up again, trust me. And you’ll play the fxxl again. That’s guaranteed. And when I point out to everyone you’re doing that, you’ll whine and cry about “civility”. Bank on it, friend.

  6. Your game is to ignore what others actually post and continue to blather on and on.

    Good luck on getting Ned to actually not blather on in all directions except the one that he needs to. As quick as he is to tell others to “get real,” it seems such advice does not apply to the advise-giver. You could draw him a simple analogy, one that is not easily forgotten, but rather than forget you said something, he will outright ignore it.

  7. And if you actually care to listen, I will share another idea. Since it was the court (rather than the Office) that fashioned the atom-bomb style of IC, the court can also fashion a smaller weapon for dealing with any non-compliance with the Office mandate. – The Office does not even have to change its mandate at all (although I do tend to doubt that Kappos will take that position).

    If Judge O’Malley’s tea leaves are to be read in a certain way, with the rising sun casting a certain light, one can easily fashion the logic that a new court doctrine of lesser-than-atom-bomb “Applicant Misconduct” dawning for those instances which, while failing to rise to the atom-bomb level of IC, may yet still warrant some equitable treatment by the court – perhaps of individual claim elimination or reduced level of damages.

    The court created the doctrine of IC. Why is it so hard to believe that they can create a sister doctrine of AM to go along with it? Your penchant for strict prohibitions are more problematic and simply less likely to happen (especially given the lessons learned from Taffas – you are capable of still learning lessons, are you not? And even if you are not, I am sure that Kappos is.

  8. You seem to think that the PTO can still require disclosure of cumulative references as if they could impose some penalty for failure to follow its rules. But they cannot.

    That’s just it Ned – they can continue to require disclosure and they actually do continue to require disclosure in exactly the same manner that they previously required disclosure. The fact that the court has changed the court’s remedy is quite beside the point.

    Dave Boundy explained this to you on the thread with the breaking news – the Therasense decision only directly affected the court’s control – the court’s decision explicitly left the Office’s control out of the picture.

    Yes, this does create the situation wherein the Office currently has a rule that is virtually meaningless, because the court currently has dialed back the atom-bomb remedy. But you need to understand the basic structure of the judicial-executive agency branches (and their differences), and realize that there is, in fact, differences. The PTO STILL requires disclosure just exactly as they did before the Therasense decision came out. Kappos has not yet made any changes, and thus the Office STILL operates exactly as it did before. This is reality – you would be well-advised to recognize it.

    From this, one should reason (if one were able to put aside their pre-conceived notions) that the Office and the Feds actually operate under two different systems. And while it is true that those two different systems are not often out of step with each other, there is no denying that the Therasense decision simply did not automatically render the Rule 56 (and accompanying rules of 97 and 98) moot. To state this positively, the Office CAN and STILL DOES require exactly the same things it required before. No matter how you want to think differently, your thinking just does not match the real world. With all due respect, WAKE UP !!

    And while you glibly (and falsely) state that I have offered no alternatives, you need to actually read my posts to see that I have indeed offered an alternative – and one you have already actually commented on – that of July 5 at 7:24 AM.

    The fact that you don’t understand or remember this indicates that it is you that are the one playing games. Your game is to ignore what others actually post and continue to blather on and on. It is you that needs to stop talking so much and actually listen. Didn’t your mother tell you the reason why you have two ears and one mouth is that you are supposed to listen twice as much as you talk?

  9. Hard, since you do not agree on the fundamental objective, the way forward is cannot be discussed at all. You seem to think that the PTO can still require disclosure of cumulative references as if they could impose some penalty for failure to follow its rules. But they cannot.

    What they can do now is to try to cooperate with the Federal Circuit even if they do not agree with its holding. Unless appealed to the Supreme Court or overruled by Congress, it is the law. They cannot ignore it.

    The Feds clearly held that the only art that has to be disclosed is art that would prevent the patent from issuing in the first place had it been known to the examiner. This DOES NOT include cumulative art.

    From this, one can reason that the only art the Office should require to be disclosed is art that is not cumulative. To state this positively, the only art the Office can now require to be disclosed is art that is better than the art of record and which would result in a determination of unpatentability.

    So how does one implement this policy in a simple rule?

    I have offered some ideas. You object. But you offer no alternatives. You continue to play games.

  10. Ned,

    You do realize that that is not an answer to my question, do you not?

  11. Hard, what??

    Clearly one of the primary objectives of the Federal Circuit was to stop the submission of cummulative art by the bucketfulls. What in the fricken world does “but for” mean if not that the art required to be submitted is at least more material than the art before the examiner? “But for” cannot mean “cummulative.”

    Get real.

  12. the objective is to prevent the submission of any art not more material than the art cited by the examiner.

    No, it is not.

    It never has been.

    Do you understand why?

  13. Ned,

    I think this answer is as wacky as your post on the other thread.

    The object is not to cement bad practices in place. If the current practice is bad – like examiners ignoring art, making a new rule that makes this badness permanent is a rather bad idea.

    Further, you are still making the applicant do the examination – “to the extent that the applicant points out how” – that was criticized above.

    Your new rule svcks just as much as your previous new rule – the applicant does all the work, the person who is supposed to do the work still is not doing the work they are supposed to do.

    You just are not seeing straight here. I am curious though – why are you trying so hard to make the applicants do more work?

  14. No Way, then what about this:

    Rule 56: Art may be submitted at any time as provided by rules 97-99; provided that art submitted prior to any substantive action shall be not be considered by the examiner; and provided further that art submitted after any substantive action will be considered only to the extent that the applicant points out how the reference is more pertinent than the references of record.

    Since examiners don’t look a IDS art anyway, this will bring the rule into substantial conformity with practice.

  15. Ned’s comments here do not present an acceptable alternative.

    Ned,

    You are asking the applicants to do the examination.

    That’s not our job. You need to remember other rules that work in tandem with 56 – 97 and 98 for example.

    And, as Hardworking suggests, anytime you prohibit a submission, you will have the obvious backlash. And, as Hmmmm suggests, those seeking to find a way to massively import – and thus do the exact same thing currently done – can do so by merely listing the references in the application with some hand-waiving (or do the same in an office response) – thus, at best, your answer is no answer at all, and at worst only induces negative estoppal effects without any true benefit.

    I don’t think you understand what the word ‘considered’ means. You are both under- and over-inclusive. As to over-inclusive, just because the applicant discusses the art means nothing (short of estoppel effects – which, by the way are not desired). An examiner’s silence is not the same as an examiner’s acceptance. As to under-inclusive, all “considered” means is that the reference went into the hopper of input that the examiner considered. It means no more than an examiner’s search results that includes a claim key term and an art unit.

    Your “cure” for flooding is worse than the disease – at least from the applicant’s viewpoint.

  16. Examiners normally fail to cite any art in IDSs. I think the reason for this is that a great deal of it is not all that relevant.

    To stop the practice of submitting cummulative at best art, I think we need a new rule 56 that essentially will prohibit disclosing art not more relevant than the art cited by the examiner. This, of course, will require that IDSs be filed after the first action. The art cited will implicitly all be more relevant.

    If the art is not such, the examiner should indicate this in his review of the references. If the practitioner submits more than one of these IDSs containing cummulative art in a too short period of time, he could be given a warning letter. If he receives too many warning letters, he could be disciplined.

    This is a more nuanced way to handle the flood problem. I still think a rule flatly prohibiting IDSs is the best solution. Art can be still cited in the patent itself, or in amendments. In either case, the patentability of the claims over the reference must be pointed out or made clear in some fashion.

  17. Hard, let’s compromise. Flatly prohibit IDSs. Permit any art to be submitted if discussed in an amendment. Just for example, if X reference is more relavent that Y, in the applicant’s opinion, one could have a brief section on “more relevant art.” Here one would simply state that X is more relevant than Y.

    Assume now the application is allowed and X is used as the basis for a reexamination request. Result: denied. It was “discussed” in a prior action, and it relevance was at at least that of Y.

    Now if X has something not shown in Y, the “new lighters” would focus on that. To head this off, the amendment would have to point this “new light” material out to the examiner.

    I have actually done this in prosecution where I think a reference of record is better than the one the examiner is using. I point to the material the other reference lacks. This effectively freezes this better reference from ever being used in a reexamination.

  18. A pleasure to read you, Hard. But you realise the consequences of “extremely”? I await from readers a fresh round of condemnation of the EPO for its iniquitably high taxes on the Applicant community

  19. Thanks MaxDrei!

    How diligent and how thorough would you like EPO Examiners to be a)… b)…

    Extremely so for both. I do not begrudge anyone – friend or foe, the fruits of their labors.

  20. OK. How about Art 94(1) “The EPO shall, in accordance with the Implementing Regulations, examine on request whether the European patent application and the invention to which it relates meet the requirements of this Convention.”

    Thus, until Applicant has satisfied the Examining Division, that the patent application meets ALL requirements of the EPC and the EPC’s Implementing Regulations, no patent.

    But, once all requirements are met, to the satisfaction of the Examiners, Applicant is entitled to expect early issue of a patent.

    How diligent and how thorough would you like EPO Examiners to be a) when it is your own application and b) when they are examining the patent applications of your client’s competitors?

  21. MaxDrei,

    I was not questioning whether or not the members had the knowledge of how to run a Patent Office. Rather, I was drawing a nuanced distinction between the Offices and their mandates.

    You may have to look deeper than Article 4 to find the ‘examining” mandate.

  22. Excellent question Hard.

    So, I had a look at Article 4 of the EPC.

    It is the task of the European Patent Organisation to grant patents. The Organisation has two organs, the EPO and the AC. The task of granting patents is to be carried out by the EPO, supervised by the Administrative Council. Who sits on the AC might then be key to your concerns.

    Generally, seats in the AC are filled by the heads of the national Patent Offices, in the EPC Member States.

    Thus, at least some of the AC committee members do know how to run a Patent Office.

  23. Don’t sweat the minor errors – the “Allowance Cliff” chart is something that sticks in your mind once you see it and couple it with the “rejection equals quality” mantra of the Dudas Adminsitration.

  24. Not to pick too fine of a nit, but…

    tasks the EPO with the job of ‘granting patents’.

    …isn’t the actual job one of examining patent applications?

    There is a different mindset between the task of “granting” and that of “examining” – “granting” can be done easily and lazily, while “examining” implies an arduous and thorough approach.

  25. Ned,

    flatly prohibiting all disclosures of information

    I understand the desired end result of your comment, but I think that Kappos would never make such a prohibition. There is just too much possible backlash (look at the Office, sticking there fingers in their ears, chanting “na na na” and prohibiting people trying to help out with the disclosing of additional information that the examiners may find useful).

    What the Office could do to possibly reach the same effective place without the backlash is to make an announcement that in order to approach the ROW practice (harminization), the requirement to submit known pertinent art is dropped. In the “non-official” comments, Kappos can make an obligatory “welcome” of hoping people continue to submit worthwhile references, but that the obligation to do so is no more.

  26. Thanks Anon. The European Patent Convention tasks the EPO with the job of “granting patents”. So the USPTO is not alone in having such a Mission Statement.

    On severity of examination, it is true that the EPO is bent on “raising the bar”. See Fly above. I have not noticed any pendulum swings though.

  27. Fly thanks. I am interested in those aspects of drafting which, after the end of the Paris year, it is too late to put right, like adding technical effects to your description, matched to particular feature combinations at particular levels of generality. That is why I wrote “You get only one chance”. After the end of the Paris year though, there is no problem deleting independent claims.

    Thanks for the tip to the EPO file. I must read it because of your quoted extract from the letter to the Applicant. When an application lapses by mistake, it is not surprising to see the EPO representative arguing that the thing was anyway not worth pursuing. When the client is American, however, I’m not sure though that it is a good idea to tell him that in writing.

    What do you mean about discovery being rare in Europe? Was that supposed to be ironic?

  28. flatly prohibiting all disclosures of information

    Just curious – would that include any such disclosure by way of comparison within the specification itself?

    If not, that would be one giant loophole.

    If so, how would you reconcile this with your known stance on specification writing?

  29. You are right, of course ben. The Feds could have done a whole lot more, but obviously they were handicapped by a bad split. If we are going to fix IC, we need the Supreme Court to do it. I think Congress has had its fill of patents for the time being.

    We could also use a helping hand from Kappos. He could, if he chose, go a long way to fixing the problem by flatly prohibiting all disclosures of information. Just how is one going to commit IC by failing to disclose information if disclosure is prohibited?

  30. by the very Office charted to promote patenting.

    should read:

    by the very Office chartered to promote patenting.

  31. Let me throw my two cents in.

    The question of ROW versus US drafting style is an interesting question and the answer to that question is “it depends.”

    It depends on what the client wants. For many clients of mine, drafting for the US provides a de facto world coverage. For others, it is particularly important to be able to obtain patents in Europe. For others, coverage in the US alone is simply enough.

    Being based in the States, I do not find any clients who only want European coverage. For the subset that want coverage outside of the US, coverage within the US is still desired, so for that subset the answer is “both.”

    On the topic of cycles, there is no doubt that the general view of patents ebbs and flows between something to be promoted and something that is an onerous burden on society. While the term “cycle” indicates a predictable oscillation, I think “tug-of-war” is a better description because the view of patents is a philosophical one and there are active proponents on both sides pushing their beliefs.

    I also think that the EPO is not immune to this effect.

    Regarding the allowance rate: You bring up an interesting phenomenom, one that actively shows a recent surge in the pulling of one philosophical camp. While there is some natural movement of the allowance rate when looked at on a long term view (on the order of a few percentage points), the precipitous drop during the Dudas administration defies any systematic explanation. The famous “Allowance Cliff” clearly shows a period of active animus against patents in the US – by the very Office charted to promote patenting.

    Anybody disagree?

  32. I reply here […] on the question whether US and ROW drafting styles can be reconciled.

    I can’t remember seeing applications which was at the outset compatible with both the EP prohibition of multiple independent claims of a given category, and the US one against multiple dependent claims. I feel that both requirements make sense, though.

    I see rates of allowance varying. I see pendulum swings at the USPTO (but not at the EPO). I recall some earlier US commentator proclaiming that the only valid US patent is the one the courts have not yet laid their hands on. So, I think there are pendulum swings.

    Many years ago I attended a lecture by a German patent counsel who told us examiners a “funny” anecdote about a notional clock mounted on the façade of the Bundespatentgericht (Federal Patent Court) indicating the level of Erfindungshöhe (roughly: inventive achievement) required by the bench on that particular day. In his opinion, the needle often swung wildly. He went on to rave about the EPO’s PSA “reliability”. Was it you?

    BTW, not everyone shares your enthusiasm about PSA. Some of your friends in the Bayerstr. filed the private E-mails exchanged with their US counterpart as evidence for supporting a hopeless request under Art. 122 EPC, as such requests practically always are — see the discussion on this case in the excellent blog (on EP) K’s law.

    They wrote privately: We would also caution that the BoA are typically much harder to convince of an inventive step, as they are more inclined to combine documents without using the rigid “PSA” followed by the E.D..

    They then assessed the work by the E.D. : … we must caution you that we feel the decision from the E.D. was fair, and feel it remiss of us not to bring this up. The prior art for this case is extremely pertinent, and we have grave concerns that bringing out any inventive feature would prove difficult, or at best leave the Applicant with such a narrow scope of protection, that this would be perhaps commercially useless.

    Good thing that “discovery” is rare in Europe…

  33. A big part of IC lore is its strategic value–opening routes to certain discovery, threatening to defeat related patents/claims through collateral attack, creating a morality issue before jury, etc.

    Regardless of how easy/hard it is to prove IC after Therasense, I feel pretty comfortable suggesting its continuing strategic viability. It can be pleaded, and it is a legitimate subject of discovery.

    Ned, your point about reserving IC for after re-exam or infringement assessment only confirms the ability to preserve IC claim through discovery and trial.

  34. I reply here, at the foot of the thread, to my various correspondents above, on the question whether US and ROW drafting styles can be reconciled.

    My viewpoint is that of a patent attorney drafting for a client in Europe. The client requires effective, even optimal, patent rights in Europe, Asia and North America. My challenge is to have it all, with one drafted specification.

    My correspondents above are within the USA (as far as I can tell) and focus on getting effective patent rights in the USA. My impression is that they have not begun yet to think whether their drafting style is denying their clients effective patent rights outside the USA. But that’s OK.

    Another theme is whether caselaw in patents goes in cycles, and what we draft today, and file next year, might be in the CAFC 20 years from now, in a cold hard First to File climate.

    I see rates of allowance varying. I see pendulum swings at the USPTO (but not at the EPO). I recall some earlier US commentator proclaiming that the only valid US patent is the one the courts have not yet laid their hands on. So, I think there are pendulum swings.

    Anybody disagree?

  35. If you have a family of references in a chain (one after another), do you have to separately submit each and every Office action from the parent and grandparent applications?

    Only if the office action would be considered material. Quite often, the claims in divisionals and continuations are sufficiently distinct so that this is unnecessary.

    “What can I do today to prevent any defendant from ever raising the defense of IC in court?”

    The answer to that question is “nothing.” Unless and until Rule 11 is given real teeth, many defendants will raise whatever defenses are legally available to them, regardless of the facts.

  36. Mouse, I’m writing primarily about the specification, and the description of the invention it sets forth, rather than about the definition of the invention in the claims.

    Then you should be more clear in your writing. For example, do not state that the balloon is claim 1, if you are not talking about claims. (“Imagine a balloon skin. That is independent claim 1.“)

    As to “Best Mode,” I think you are confused here as well. “Best Mode” is only the best known to the applicant – it has nothing to do with being “better” than anything in the art. (“How about it being “better” placed to avoid infringement of a competitor’s dominant patent.“)

    As far as the other “best” that I discussed, your view is not in the mindset of what is “best” for the client – you seem to want the best disclosure for the public. While laudable, what is best for the public is at best, a mere secondary concern.

    I have to wonder if you know how to look out for that “best” for your clients, as you seem to have difficulty understanding or expressing yourself (or both).

  37. Okay Maxie,
    When I file my next Application I will show you how I came to the final decision on what IS IS.. OK Fair enough…
    And next time someone tries to steal my idea by not knowing how to SEW or ….
    Just read the Oct 19, 1995 cover Letter.
    And like it was yesterday Dolph told me to sign the 250,000.00 Document again.
    Here is a near quote of me quoting me… to DOLPH! No thank you. I thought of the cold in Canada, and the sharks in Australia. And the Money in the Arabian Gulf, and said thinking to myself 250,000.00. I’ll pass on the Foreign Insurance.. not knowing I had already signed one. And I said the only other real selling would be in that area. But that obviously was a very naive statement… riddled with fear of 250,000.00 nightmares of signing it.. I got into this to make a living,

  38. Mouse, I’m writing primarily about the specification, and the description of the invention it sets forth, rather than about the definition of the invention in the claims. Where I sit, one defines an invention, in a claim, by reciting technical features. In the specification, one describes the invention, as a contribution to the art, that is to say, explaining what technical effects are delivered by which technical features.

    Whether I can get a patent or not usually depends on what technical effects the specification delivers with the claimed feature combination. Of course, the prosecutor seeks the greatest level of generality/abstraction in the claim that the state of the art and the specification will permit. The way it usually works out, I am going to issue with claims set at a level of generality somewhere between originally filed claim 1 (the balloon) and the illustrated embodiment (the diamond). Do you get the idea now?

    And is not an illustrated embodiment a pin point within the envelope defined by the claim? As to “diamond” I didn’t “learn” it anywhere. On the contrary, thinking that the illustrated embodiment is, simultaneously, the “Best Mode” I myself came to the idea of likening it to a “diamond” in the balloon. Where am I going wrong? Do tell me more. I want to learn.

    Interesting take you have on “best”. Yes, I agree, one view of “best” is “most widespread”. But by “best” I was thinking “highest”, “greatest” or “most concentrated”. Cheers.

  39. Max,

    Your view of US claim drafting is very flawed.

    Each diamond is an embodiment (a pinpoint thing) illustrated by the drawings.

    Where did you learn such nonsense?

    with the best technical effect of all announced as being delivered by the narrowest claim.

    This too, would be considered nonsense. Typically speaking, the best technical effect is that which covers the largest ground and is impervious to assault. If such is your narrowest claim, then your claim drafting needs work. In the US, the narrowest is not the best, but the lowest acceptable level of claim.

    In truth, proper US claim drafting is a bit more like the onion effect that you describe and only at the bottom of the dependent claim trees is it anything at all like the diamonds.

  40. To my way of thinking, “Both” is the right answer.

    There is a plethora of seminar offers, right now, on how to reconcile best US patent application drafting practice with that of ROW. These seminars are good earners for the organisers, and attendees can add to their continuing education points.

    Nevertheless, at least for “predictable” subject matter (ie physics and engineering) I cannot see that the two drafting practices are anything but incompatible.

    In case any reader is wondering what the two incompatible drafting styles are, here goes.

    Imagine a balloon skin. That is independent claim 1. Everything inside the balloon is protected by the claim. Floating freely within the otherwise empty balloon cavity is at least one diamond. Each diamond is an embodiment (a pinpoint thing) illustrated by the drawings.

    In US drafting, there is nothing between the balloon and the diamond. This is another way of putting it, that you don’t say in the app as filed what your invention is. Just write a hopelessly over-broad main claim, write a User Manual on each of the illustrated embodiments, offer some alternatives to particular components of the illustrated embodiments, and then wait and see what art the PTO finds and what rejections arise.

    With ROW drafting, the balloon is on the surface of a giant onion, which has (as onions do) a multiplicity of intermediate layers, being the dependent claims. The specification ties each dependent claim to a technical effect somehow different from that delivered by claim 1, with the best technical effect of all announced as being delivered by the narrowest claim.

    Suppose the balloon skin gets popped by a prior art attack. To prevent collapse all the way down to one or other diamond, and instead get to issue with a claim at an intermediate level of generalisation, you need a written description of that intermediate level of generalisation, plus something in the spec that reveals that intermediate level of generality to be non-obvious, even while the balloon skin level of generality is obvious. ROW knows this, while US drafters can’t yet bring themselves to commit to the recitation of real flesh of the onion layers.

    By the way, can anybody tell me, in what sense is the “Best” Mode the “best” mode? As I recall, it is the mode that the inventor subjectively holds to be the best. But how does an inventor come to the idea that one of her modes is “better” than another? How about it being “better” placed to avoid infringement of a competitor’s dominant patent. Would that be a good enough basis for singling out one mode as the Best of all Modes?

    Perhaps ROW has its onion layer philosophy because it has no requirement to recite the Best Mode but does have a requirement to enable over the full width of the main claim. Whatever, I await with interest to see whether FItF prompts any shift in drafting practice within the USA.

  41. So, tomorrow, should I draft to suit FtI ior FItF?

    The typical lawyer answer: It depends.

    Alternatively, the secondary typical answer: Both.

  42. One more thought: that drafting might depend on whether inventions are judged in court on their date of conception (ie BEFORE the app is drafted) or on the filing date of the app (ie AFTER the spec is drafted).

    So perhaps if and when the USA moves to FItF, there will be a slow shift in the expectations US courts have, of those drafting patent applications.

    So, tomorrow, should I draft to suit FtI ior FItF?

  43. MaxDrei,

    that, as the drafter, I’m starting with a blank sheet and have perfect freedom to describe client’s invention in the specification, and define client’s invention in the claim, in whatever way I think will best “sell” its patentability to the PTO and its validity to the CAFC.

    100% Correct.

    My client does not get a second chance.

    100% Correct.

    It is how the courts will be judging it then, that governs how I draft today.

    100% Correct.

    But the cases I draft now might be litigated 20 years from now.

    100% Incorrect – 20 years from now the patent will be in the public domain. Some patents are litigated nearly immediately after issuance. It is the entire span of a patents life that must be protected and enforced (either through the threat of litigation or by actual litigation).

    It is a curious artifact of our profession that us writers must be in part soothsayers of the trends and directions of law well into the future. I think this has something to do with why we may become so recalcitrant in our positions, why we may seem to be so unmoving and unwilling to change our positions – we may have a substantial body of work that depends on a past position not only being “right,” but staying “right.” This too, no doubt, shapes our intuition – if we are not aware. If we let our “wishful thinking” guide what should be an objective view, we will find ourselves in the weeds. Even after all these years I still must remind myself to separate the advocacy yearning from the objective analysis when I seek to understand court decisions and look to play soothsayer.

    As for the “first green shoots of a return to sanity,” I admire the colorful advocacy of yours, but it is empty advocacy as it only addresses applicant behavior (and only certain old-school applicant behavior at that). Such is pure preaching, mere wanting or wishful thinking – attempts to shape the landscape. It does not objectively address the law as written (or even the changes as contemplated in the current legislation). All of the factors that trend towards the minimalist approach (not to be confused with lack of enablement) are still very much present and our clients one chance is still very much served by the adage “less is more.”

  44. Thanks again. I think I understand your counsel and I think I understand it. Nevertheless, when you write:

    “You as the application writer simply do not get to decide what is the art that’s the closest and most realistic starting point for assessing obviousness”

    that makes me think that, as the drafter, I’m starting with a blank sheet and have perfect freedom to describe client’s invention in the specification, and define client’s invention in the claim, in whatever way I think will best “sell” its patentability to the PTO and its validity to the CAFC.

    We have lived through a period in which (I grant you) clients were best served in the US courts by American drafters who were always careful never to say what was the relevant prior art, and never to say what was the contribution to that art which would justify the issuance of a patent. Wishful thinking on my part maybe, but I think I can see the first green shoots of a return to sanity, in which drafters do tell what is the contribution as seen by the inventor. I admit, it might be the direction that EPO caselaw has taken, progressively, over the last ten years, that leads me to this view.

    Anyway, after another ten years or so, we will know.

    But the cases I draft now might be litigated 20 years from now. It is how the courts will be judging it then, that governs how I draft today. My client does not get a second chance.

  45. MaxDrei,

    I recognize that what you decide to do (either continue in your path or change) is completely up to you.

    I can only comment on how the methodology you espouse will likely play out in the US system (therein lies the majority of my clients’ interests).

    Likewise, as we are discussing the US impact of IC, the comments geared to US prosecution must be weighted more heavily than international prosecution on this thread.

    That being the case, your attempts to insulate yourself from charges of IC are in vain for the reasons already given. You as the application writer simply do not get to decide what is the art that’s the closest and most realistic starting point for assessing obviousness. Any of your attempts to do so are simply pissing in the wind.

    The courts, likewise will only look to your admissions as limitations – for it is the examiner’s viewpoint that matters and the examiner’s non-response to any of the included comparisons to prior art simply do not innoculate you (and there is no way to force the examiner to comment on your included prior art discussion). You perceive a benefit that is not there.

    As to reducing the incidence of litigation or raising the level of respect, I fail to see any evidence of either of those results happening from discussing prior art in an application. In fact, I happen to lower my level of respect when I see superfluous inclusion of prior art discussions in an application. I realize that this is merely my opinion, but when I see work that is not needed, I see an application that is poorly prepared. Further, to the extent that any such admissions play a role in limiting your application, such is an unnecessary detriment. So at least to me, what you see as vindication, is actually the opposite.

    Lastly, your comment of “If my drafting style encourages the PTO to reject my claims, so be it” misses the point of unnecessary estoppel creation, added time and cost to the client and generally poor prosecution habits, just because of your desired drafting style. If you are in love with your drafting style “just because,” that’s one thing – but to hang on to it to the detriment of your clients is quite another.

    As to Examiner’s “less relevant” art citations and their examination results (poor or otherwise), you must realize that you simply do not control (nor can you predict) what that will be. It is a fool’s errand to believe otherwise. And while the question of “Why not just allow the app, for goodness’ sake?” is heard on a declining basis with the change in Office leadership, it is a question beyond the control of individual application prosecutions.

  46. Delighted to get such thoughtful responses to my wishful thinking. Thanks both.

    All the same, going forward, my intuition (for what that’s worth) tells me to go on drafting as I do now, with a specification that sets the invention, from the outset, in the context of the art that’s the closest and most realistic starting point for assessing obviousness.

    I realise that doesn’t insulate me from charges of inequitable conduct. I just think that my drafting style represents the best way of exposing ic attacks for what they are, forlorn attempts to bring down a claim that is not invalid, so that those ic attacks get short shrift from the courts.

    If my drafting style reduces the incidence of litigations on my clients’ patents (or raises the level of respect given to my clients’ patents), that is vindication enough, isn’t it?

    If my drafting style encourages the PTO to reject my claims, so be it. But if the only art the Exr can find is less relevant that what is already discussed in the app as filed, why should Exrs expend so much effort formulating poorly argued objections. Why not just allow the app, for goodness’ sake?

  47. “Have to” is not the proper question. The better question is this: “What can I do today to prevent any defendant from ever raising the defense of IC in court?”

  48. If you disclose all of the references of which you are aware, is this really a problem?

    If you have a family of references in a chain (one after another), do you have to separately submit each and every Office action from the parent and grandparent applications?

  49. MaxDrei,

    I echo Ned’s opinion on this – your comment simply rings with “wishful thinking” that really has no basis in the real world of patent prosecution.

    we see thinking that from now on, thanks to the “but for” standard, the inventor/applicant/patentee will from the outset, in its own interest, tell the PTO what is the closest art.

    Um, no. There still is no directive for the applicant to even perform a search. There still is no directive for the examiner to pay any heed whatsoever to any applicnat’s search (and subsequent included explanation of the invention relative to that search). In fact, Dennis Crouch recently ran an article showing that examiners largely ignore the IDS’s of applicants. I would slightly amend Ned’s comment to “Every known reference must be disclosed” – which is basically the case today, so there indeed is no effective change on that basis. You see a change where none exists.

    Adding to that, we have the other threads, prompted by the Hal Milton paper… I can see a new drafting practice emerging, in which contributions to the state of the art delivered by the claimed subject matter are set in the context of the closest art known to the drafter, the drafted specification including statements of all the technical effects delivered by the contribution, relative to that closest art, which inventor and drafter can together conceive.

    This too is wishful thinking and not at all related to the bulk of today’s drafting. The Hal Milton paper, while receiving much press, is decidely not a good model for drafting applications. Mind you, Hal does include some solid basics, but on the whole, the paper is not an adequate primer for patent preparation.

    Your comment of “might even encourage proper patentability searches prior to drafting, and then proper watching searches of the WO and A publications of competitors, so they can be accommodated in the prosecution file before the patent goes to issue” is also largely a fallacy. The fact that applications cannot be amended to contain new matter and the still-present danger of invoking treble damages both still dissuade against your tenant of “proper watching.” There is nothing to gain from trying to include any such actions in the prosecution phase, as opposed to making those same arguments in any (small chance) litigation phase.

    Your desire is clear, but you have let that desire cloud the objective reality of patent prosecution going forward.

  50. Max, wishful thinking at best. The but for standard is so broad as to be no different from the current standard. We know what that does, do we not:

    Mindless dumping.

    It results in a flood of references of bare relevance. No one can review a reference and reliably decide it is not material or cummulative. A review of a reference followed by non disclosure is potentially fatal. Every reference must be disclosed.

    The Feds have miserably failed their objective in Therasense by once again adopting a very low bar to materiality, and by further complicating litigation with more than one claim construction and two difference standards of proof for “validity.”

  51. Paul, you are known as an advocate of an approach to obviousness which involves putting confidence in the best line of attack and paying less attention to any other lines of attack. Below, in this thread, we see thinking that from now on, thanks to the “but for” standard, the inventor/applicant/patentee will from the outset, in its own interest, tell the PTO what is the closest art.

    Adding to that, we have the other threads, prompted by the Hal Milton paper. Wishful thinking, perhaps, but I can see a new drafting practice emerging, in which contributions to the state of the art delivered by the claimed subject matter are set in the context of the closest art known to the drafter, the drafted specification including statements of all the technical effects delivered by the contribution, relative to that closest art, which inventor and drafter can together conceive.

    Heck, it might even encourage proper patentability searches prior to drafting, and then proper watching searches of the WO and A publications of competitors, so they can be accommodated in the prosecution file before the patent goes to issue.

    In short, the repercussions of “but for” might be quite revolutionary.

    I have always thought that the best way to get candor from the applicant is somehow to arrange that the risk of not telling the PTO about the closest art outweighs what applicant can gain by not telling the PTO. I never thought a “but for” standard was the way to do it but that’s because it never occurred to me to take advantage of a per se unattractive feature of the US patent system (claims construed broader in the PTO than in litigation) as a tool to reform the system for the better. Horses for courses, it seems.

  52. Two thoughts on the “but for” of Calcar and Therasense. It tracks 56(b)(1) and it encourages an earlier examination on the best references of which the applicant is aware. An applicant can not withhold a reference in hopes that if enforcement litigation proves necessary he can then obtain the evidence to overcome it. The materiality determination is based on the record in the USPTO and excludes any post grant evidence such as later run comparative tests.

  53. In other words, the Feds made it really easy to prove materiality.

    I don’t know about “really easy”, but is easier to show elative to the alternative that suggested by others where one has to first prove that a claim is invalid.

    Anyway, you said you were unclear as to why the CAFC chose the test that they did. I trust that confusion has been wiped away (“As to rolling the dice by game playing mulchers, the new standard helps stop this”).

    Have a great 4th of July!!!

  54. No doubt the burden of proof was a factor, as well as the more conservative claim construction in court.

    But, since both IC and invalidity historically have had to be proved by C & C evidence, I don’t see how requiring proof of the “but for” element by C & C was not to be expected from the court. But we got something radically different. See below for more on this.

    As to rolling the dice by game playing mulchers, the new standard helps stop this, I agree, because it reduces the requirement of proof of materiality in two ways:

    1) It broadens the claim construction to include more art; and

    2) It reduces the burden of proof to a preponderance.

    While we have a “but for” standard in name, it is not the standard that anyone expected or asked for, and the new standard really is a shock to many because it effectively reduces the standard of proof to well below a preponderance of evidence. I say below, because the broader claim construction is coupled with a prepoderance of evidence burden.

    In other words, the Feds made it really easy to prove materiality.

  55. It may help to consider the situation where the applicant withholds art, obtains a broad claim, then later (after a decade of reaping the protectionary benefits of the broad claim) sues someone and makes a novel, convulated, highly technical claim construction argument to avoid invalidity in view of the withheld art.

    Even if the construction is ultimately adopted and the claim found valid in view of the withheld art, why encourage such behavior?

    And make no mistake, Ned: that is exactly what every troll will do if your position is ever adopted. Heck, this is exactly what many of them do even now, and even before Therasense.

  56. For some reason that is totally unclear to us, the Feds used the words “but for,” but gave us something entirely different, something no one had asked for.

    Let me clear it up for, Ned: the reason the Feds didn’t require that a claim be found invalid first is because that would only provide applicants with a greater incentive to withhold info from the USPTO to obtain a patent (further = relative to the new test the CAFC devised in Therasanse).

    The test that you propose would provide an additional incentive to game-playing applicants to withhold information from the USPTO. Roll the dice, withhold the info and take your chances. Now even before inequitable conduct can be addressed in earnest by the court, you have to succeed in presenting clear and convincing evidence of invalidity.

    So there’s the reason, Ned. You can stop wondering now. You can disagree with the reasoning, but I’m quite certain that’s it.

  57. Pendantly Pathetic, you know what he means: invalid.

    Paul, that was the position advocated by many if not most of the bar: that as a prerequisite to a finding of IC based on non disclosure, the proponent on the charge had to prove that at least one claim was invalid over the withheld reference.

    For some reason that is totally unclear to us, the Feds used the words “but for,” but gave us something entirely different, something no one had asked for.

  58. No wonder you are puzzled…

    There is no establishment of objections under 35 USC 102 or 103.

    rejections, possibly…

  59. Paul, unless the PTO changes Rule 56 to require non disclosure of references, there is no chance that IDSs will be limited in any substantial way for reasons previously discussed.

    Now, see my post to Ben above. The Feds may actually want the issue of patentability over non disclosed references to be resolved by the PTO. If I were a DC judge and a defendant tells me that “but for” non disclosure of so-and-so reference, the PTO would not have issued the patent, I would ask the defendant to prove it — by requesting reexamination. If he refused to request reexamination, I would toss his defense.

  60. Ben, you have a point there. B would still have to prove that A knew of the prior art during the initial examination and deliberately chose not to disclose (it for the purpose of deceiving the PTO).

    In another thread, I suggested that rather than speculate on whether the claims were patentable over a reference pursuant to BRI, that a DC judge would want to see the PTO actually reexamine the patent over the withheld art. In this way, there would be no speculation at all. No hypotheticals to resolve. No second guessing the PTO at all.

    Given this, I would expect that IC defenses based on lack of disclosure and the like to be routinely deferred until reexamination is complete. If this is the case, what the Feds might have been doing is in its decision in Therasense is to force the reexamination of patents allegedly procured by IC.

  61. Please advise this puzzled Englishman how the law on inequitable conduct can in any sense be said to have been reformed to become simpler and more straightforward to apply?

    Wouldn’t it be better simply to determine in a single pass through the district court and the CAFC whether the material relied on establishes an objection under 35 USC 102 and 103?

  62. Company A sues B in district court. B requests re-exam in PTO and submits new prior art. A’s patent claim was narrowed on re-exam. “But-for” the failure to disclose the prior art, the original claims would not have issued. Therefore the failure to close prior art is material for the purpose of IC.

    My point is that any patent that survived re-exam with narrowing claims may allow a defendant to maintain an IC attack, even if the validity of the later narrower claims are not an issue in the law suit.

  63. “conduct a patentability analysis to determine if the PTO would not have allowed the patents’ claim but for the withheld information”

    I can see another category of patents for automatic but-for materiality–patent with new claims upon re-exam based on some new prior art (which is quite a few of the heavily litigated patents, if I recall correctly from some of the recent posts).

  64. Confused?

    I think we are all dumbfounded. When the majority in Therasense said this, I briefly went back through all the briefs filed on by the amici. I couldn’t find one that advocated such a standard, allthough there were some that advocated a but-for standard without being totally clear what that meant.

    Most briefs that did argue “but for” argued that the claim had to “invalid” over the non-disclosed reference or in face of the misleading statements. This would have continued to allow one claim construction, and would have permitted the whole issue of IC to be put off until after a finding that one claim was invalid. This really is important so that IC not taint in any respect the trial on validity.

    We got a lot of lofty words from the majority in Therasense, but incrediblely poor execution. Perhaps the muddled result was required to get a majority.

    Even so, the Feds really screwed this pooch on this one.

  65. So the district now has to conduct a patentability analysis to determine if the PTO would not have allowed the patents’ claim but for the withheld information? Would this be something like a substantial new question of patentability analysis?

  66. I bee trying too speak frennnchh.
    I get the missing numbers to take more from me.You want to take it all from me…. PATOIS.
    On monameee I see my first Patent is in United Kingdom.
    Must be my lucky DAY!
    If you protect me I protect you. Is that it? I think NOT!

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