No Litigation Estoppel until All Appeals Exhausted in Inter Partes Reexamination

Bettcher Industries v. Bunzl USA (Fed. Cir. 2011)

by Dennis Crouch

For one summer during college, I worked in a meat packing plant. In one hand, I wielded a power-operated knife while the other, gloved in chain-mail, held thawing pork-bellies. This case involves litigation over a hand-held rotary blade used in the commercial food processing industries. As is now common, after Bettcher filed its infringement lawsuit, Bunzl, the defendant, requested the patent undergo inter partes reexamination at the USPTO. Bunzl asserted the same prior art in both its reexamination request and in its invalidity defense before the district court.

The issue on appeal is the timing of the estoppel provision associated with inter partes reexamination under 35 U.S.C. § 315(c). Under the statute,

"[a] third-party requester whose request for an inter partes reexamination results in a[ reexamination] order … is estopped from asserting at a later time, in any civil action [related to patent law] … the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.

As I read the statute, a reexamination requester is blocked from making particular invalidity arguments in court if certain conditions are met. These conditions include: (1) a final determination that the reexamined claim is valid; and (2) a finding that the invalidity argument is based on grounds that were or could-have-been raised by the requester during the inter partes reexamination.

In the case at hand, the USPTO had granted Bunzl's reexamination request, but the reexamination examiner had rejected Bunzl's position and issued a right-to-appeal-notice to Bunzl. Bunzl appealed to the BPAI, and recently lost the appeal, but had now requested rehearing by the Board. If Bunzl loses at the BPAI, it has a right to further appeal the reexamination to the Court of Appeals for the Federal Circuit.

In summary, at this point, the USPTO Examiner has made a "final" decisions that the claim is valid, and the BPAI has made a "final" decision that the claim is valid. However, Bunzl still has a right to appeal. The question from those facts is whether the claim is "finally determined to be valid" under the statute.

Deciding the issue, the Federal Circuit held that a claim is not "finally determined to be valid" under Section 315 until all appeals are exhausted.

[T]his court agrees with Bunzl that the estoppel provision of § 315 is triggered not when examination is completed but only after all appeal rights have been exhausted.

On remand, the district court will need to determine whether a new trial is necessitated by the additional prior art made available by the lack of estoppel.

Judge Reyna dissented – arguing that the estoppel issue is moot because the claim is anticipated as a matter of law.

The plain meaning of the claim language of the '325 patent reads on Bettcher's own prior art products, which include all of the structural features required by the claims, and which possess the capability of satisfying the functional or intended use limitations.

. . . .

No reasonable jury could conclude that the claims of the '325 patent were novel over the pre-1998 blades because none of the dispositive facts were disputed and the law is clear. I would reverse the district court and enter judgment as a matter of law of anticipation.

In reaching his outcome, Judge Reyna is finding that, as a matter of law, the wrong conclusion was reached by the trial jury, the district court judge, the original patent examiner, the reexamination examiner, the BPAI, and the other two judges on the court.

Comments by Crouch: This case is in tension with the recent Federal Circuit decision of Marine Polymer Tech. v. Hemcon, Inc. In that case, the court held that non-final arguments made during reexamination created intervening rights that relieved an accused infringer from liability, and that the intervening rights were created at the point of the arguments even though the reexamination was ongoing.

169 thoughts on “No Litigation Estoppel until All Appeals Exhausted in Inter Partes Reexamination

  1. 169

    Dennis does this ruling leave asymmetry in that a validity/invalidity holding of the district court has immediate effect on the PTO but the estoppel effect of the PTO does not bind the district court until affirmed by the CAFC?

  2. 168

    The above, 2/1 here is a nice split, to engineer fierce debate between respectable schools of thought, so that next time claim construction get done, it gets done with a surer touch, more proficiently, consistently and confidently.

  3. 166

    Ah, but the old structure for a new use might be patentable as a process.

    In the present case, bearing races having bearing faces conical in cross section were undoubtedly old. The only pertinent question was whether they were old in this application. Clearly, the answer here, was that they were not as the prior art chamfers were not bearing faces of bearing races. Even our dissenter recognized this fact.

    All Reyna needs, it seems, is a little bit more seasoning in patent law. Reading and understanding cases like Tilgman v. Proctor and anything on the topic written by Learned Hand would be recommended.

  4. 165

    EG, Hand relied in major part on Tilgman v. Proctor for his authority. That case, a Supreme Court case and still good law and binding precedent on the Federal Circuit, said this:

    “We do not regard the accidental formation of fat acid in Perkins’s steam cylinder from the tallow introduced to lubricate the piston (if the scum which rose on the water issuing from the ejection pipe was fat acid) as of any consequence in this inquiry. What the process was by which it was generated or formed was never fully understood. Those engaged in the art of making candles, or in any other art in which fat acids are desirable, certainly never derived the least hint from this accidental phenomenon in regard to any practicable process for manufacturing such acids.

    The accidental effects produced in Daniell’s water barometer and in Walther’s process for purifying fats and oils preparatory to soap-making, are of the same character. They revealed no process for the manufacture of fat acids. If the acids were accidentally and unwittingly produced, whilst the operators were in pursuit of other and different results, without exciting attention and without its even being known what was done or how it had been done, it would be absurd to say that this was an anticipation of Tilghman’s discovery.”

    link to scholar.google.com

  5. 164

    This is completely wrong. We’re talking about a composition claim. If my composition has a limitation “wherein said structure is used for X”, it doesn’t matter if the prior art composition included a structure that was only considered useful for Y or Z. That’s Cruciferous Sprouts.

    John,

    very informative and interesting article and comments as well

  6. 162

    Ned, please step up the accuracy a notch. You write:

    The specification consistently defined computing a ration to mean division, and consistently used other terminology to refer to subtraction.

    The specification in Zircon did not “define” the term “computing a ratio.” It merely used the term to refer to division consistently, just as it used other terminology consistently to refer to substraction.

    I note this passage from the case:

    Indeed, when read in the context of the other claims, the dependent claims are virtually incomprehensible on their face and certainly do not follow the pattern we examined in Phillips.

    This really isn’t an “interesting” case. It’s just an example of a case where the doctrine of claim differentiation, for obvious and logical reasons, is not useful for determining the scope of a term used in an independent claim.

  7. 161

    Hagbard, I wonder how the defense got away with its demo that reconstructed the prior art to show that a reconstructed structure could, momentarily and very badly, operate as a bearing. The judge should have excluded it. If the jury held the claims invalid over this evidence, I am confident the verdict would have been reversed.

    Since we do not have access to the complete record, we cannot know the answer to these questions. But I does seem both fishy and wrong.

  8. 160

    “Now, like I said, if there is a potential issue here then it is simply that an examiner, armed with his BRI, could make such a wacky interpretation and then force an amendment.”

    Unfortunately, this is the PTO’s understanding of BRI.

  9. 159

    “Does your definition of “bearing face” admit of the possibility that the chamfers constitute such “bearing faces”? ”

    Chamfers in general COULD be used as a bearing face, just as the toolbag that made the demonstration in the courtroom showed. Are chamfers “bearing faces” in the context of the specific reference cited? No, they most certainly are not, as they do not bear anything which would have been clearly illustrated had the toolbag made his presentation an appropriate representation of the actual setup in the reference. They are there to ensure that the piece that goes in the groove actually gets into the groove (by the dissent’s admission), it doesn’t hold it there after it is in. At least from what I can tell it doesn’t. The groove holds it in. The chamfers are specifically not to even be touching anything in actual practice so far as I can tell.

    Now, like I said, if there is a potential issue here then it is simply that an examiner, armed with his BRI, could make such a wacky interpretation and then force an amendment. If this thing is in court and they’re making these wacky constructions then they’ve gone off the deep end.

    “Are you with the majority view, or that of the dissent, on this issue of what is the meaning of the words of the claim? ”

    Is it not clear that I’m with the majority?

    “Is the answer different, depending on whether you are construing a)in the course of normal pre-issue ex parte examination on the merits or b) post-issue, in disputed proceedings at the CAFC?

    No, but I would not blame an examiner for having gone out on that limb. Most lack the sophistication to understand why things would be any different. Thus, BRI is there for them and I do not hold that against them.

  10. 158

    I wonder if MM realizes that the person QQ’ing

    Well if it is pointed out to MM, then of course he realizes it.

    But in reality, MM just wanted to QQ some more and so it doesn’t matter if MaxDrei is QQ’ing about the length of threads or not.

    I was just trying to help poor MaxDrei out and MM couldn’t resist the urge to jump right in.

  11. 157

    Max, speaking of widening, read link to cafc.uscourts.gov

    Here the question was whether an independent claim (10) which called for computing a ratio included both division and subtraction when claims dependent on an intermediate claim (19) spoke in one claim that computing a ratio meant dividing one value by another and in a second
    dependent claim said that it meant subtracting one value from another and comparing the difference to a threshold.

    The specification consistently defined computing a ration to mean division, and consistently used other terminology to refer to subtraction.

    The intermediate claim, 19, was originally independent and only spoke of comparing, not computing a ratio.  Thus the two depended claims made clear that comparing could include both division and subtraction.   But, without explanation, claim 19 was amended to depend upon 10, which called for computing a ratio.

    Under these circumstances, the
    court held that even though the dependent claims now made no sense, they could not alter the clear meaning of computing a ratio that was given that term by the specification.

    Interesting case.  But it does go to show that the patent owner wanted both to have his cake and eat it too.

  12. 156

    OK, MM, you got your laugh, you know what I meant. The difference in SHAPE of the bearing face does matter, but not how you describe/refer to what the bearing face is (again, see my statement above that a yardstick is still the same as a ruler which is 36 inches long)

    And I didn’t see any rebuttal to my comment about the validity of Judge Learned Hand’s opinion by the Federal Circuit today, correct?

  13. 155

    The fact is that the majority was correct that the shape of the bearing face, however you describe it, was different in the invention claimed in the ‘325 patent

    LOL.

  14. 154

    OK, have it your way, MM, the STRUCTURE is NECESSARILY the same in the claimed invention and in the prior art. The fact is that the majority was correct that the shape of the bearing face, however you describe it, was different in the invention claimed in the ‘325 patent, versus the figure of the Bettcher pre-1998 blades. And the jury’s determination that they were different is at least supported by “substantial evidence.”

    I would also be careful about characterizing citation to an opinion by Judge Learned Hand as “desperate” in the patent law area. The point I’m making with reference to the Bettcher case that refutes Renya’s dissent is the very one made in the Dewey & Almy Chemical case I cited. And what Judge Learned Hand says still carries significant weight today, even with the Federal Circuit. See Elan Pharmaceuticals v. Mayo Foundation (Fed. Cir. 2002) which cites the same quote I did from the Dewey & Almy Chemical Co. v. Mimex Co. case saying: “On the law of anticipation, precedent has not improved on the words of Judge Learned Hand.”

  15. 153

    I wonder if MM realizes that the person QQ’ing about the length of the threads is MaxDrei?

    Still – it is wryly amusing to see MM QQ about someone else’s QQing.

    Or at least amusing to me – but then again, I do happen to be a happy-go-lucky sort.

  16. 152

    And the jury’s determination that they were different is at least supported by “substantial evidence.” Reyna’s statement that no jury would say these structures are different simply doesn’t “hold water” in my book.

    I think the obvious implication here is that Reyna believes the jury was improperly instructed or gave undue weight to questionably relevant evidence.

    This is the problem with jury trials – the jury never writes detailed reasons for review by the appellate court. The fact that they produced an answer is not conclusive proof that they have produced the right answer, or even a reasonable answer.

  17. 151

    Twice eaten now….

    Only we’re clearly not at that point, because it’s the exact. same. structure.

    Except for the FACT that we ARE clearly at that point. Keep in mind that you are commenting on (or trying to take the position of) the DISSENT.

    The facts and ruling here do indicate that a chamfer – to a reasonable person in the art – should NOT be blown up by a magic microscope or a court room model or both to be confused with a raceway. Such is not a reasonable thing to do – NO MATTER if it’s the exact. same. structure.

    As already mentioned, the only way you get to your position is if you ignore your own advice on being reasonable, and take things out of context, or use a magic microscope or take an UNreasonable interpretation.

    You must really love to argue, as you are arguing from your own EXPLICIT warning.

  18. 150

    “What if the device in the prior art had exhibited a configuration EXACTLY THE SAME as that of the claimed device, but the circumferential groove was used for a different purpose than a bearing race–for instance, as a structure for locating a circumferential damping ring…would it not be anticipated?”

    It would be anticipated, IBP. The fact that you call it something different and say it does something functionally different won’t avoid anticipation if they are structurally the same (e.g., a yard stick is the same as a ruler which is 36 inches long). And I have this discussion many, many times with clients who say “but my widget X does function Y while the prior art shows the [identical] widget X doing a different function Z.”

    In the Bettcher case though, the “structure” (i.e., shape of the bearing face, however you describe it) was different in the invention claimed in the ‘325 patent, versus the figure of the Bettcher pre-1998 blades. And the jury’s determination that they were different is at least supported by “substantial evidence.” Reyna’s statement that no jury would say these structures are different simply doesn’t “hold water” in my book.

  19. 148

    Not that it is any source of authority, but even the MPEP discusses this in s.2112 para III:

    “Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/ 103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/ 103 rejection is appropriate for these types of claims as well as for composition claims.”

    What this says is that “Where applicant claims a [physical structure] in terms of a function, property or characteristic and the [physical structure] of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”

    From para. IV, quoting decisions: “The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic.”, the “certain characteristic” being the ability of the structure to function as described in the patent and understood by a PHOSITA;

    “”To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.'” (The “missing descriptive matter” being the entirety of the description in the patent. The fact that a surface MAY be capable of bearing in not sufficient–it is required that a surface MUST certainly be capable of bearing in the manner disclosed in the patent, and that there is no doubt in this conclusion.)

  20. 147

    EG, let me ask you this: What if the device in the prior art had exhibited a configuration EXACTLY THE SAME as that of the claimed device, but the circumferential groove was used for a different purpose than a bearing race–for instance, as a structure for locating a circumferential damping ring…would it not be anticipated?

    The point I’m getting at is that one must beware of patenting an old device for a new purpose–that is, if the exact same structure can be claimed but with a novel functional limitation, should patentability be imparted?

    The purpose of a functional limitation in an article claim is to inform the structure–that is, the structure claimed should normally be capable of performing the function as understood by a PHOSITA, given the disclosure, in order to not run afoul of the credible utility requirement of 101.

    Now the question becomes one of degree. The question is not whether the chamfers can actually function as bearing surfaces–the question is whether they embody the structural characteristics required to function as a bearing surface AS CONTEMPLATED AND DISCLOSED IN THE PATENT AND AS UNDERSTOOD BY A PHOSITA.

    In other words, the question is not whether the structure actually performed the function recited in the claim, but whether the structure embodied physical characteristics sufficient to enable it to function as contemplated and disclosed in the patent and as understood by a phosita.

    It is all about the structure–the functional limitation only serves to further describe that structure, albeit in an indirect manner.

    Reyna got it wrong, as others have pointed out upthread–but in my mind, the best logic is a hybrid between his and your own–the “bearing” of “bearing surface” should be seen as a functional recitation, which both he and you have done.

    The function need not be ACTUALLY performed in the prior art, as you would require, nor does it merely need to be CAPABLE of being performed in the abstract, as Reyna would require. Instead, the structure must be capable of performing the required function as contemplated and disclosed in the patent and as understood by a phosita.

    That is, of course, a factual matter that is within the province of the jury to determine, and IMHO it could have gone either way in this case. The jury was certainly entitled to decide as it did, given the evidence and, “as a matter of law”, Reyna’s analysis and opinion are insufficient and inadequately supported.

  21. 146

    and just as reasonably, at a certain point a chamfer should start meaning something that a person skilled in the art could look at and say “no, that would NOT make a decent bearing race/face/surface.”

    Only we’re clearly not at that point, because it’s the exact. same. structure. Of course it would make a perfectly good bearing race. It’s the same (chamfered) shape that bearing races are. Anybody could take one look at the prior art and instantly know that. Don’t believe me? There was a demonstration at the trial.

  22. 145

    IANAE,

    Please stop.

    Stick to the facts and what a reasonable interpretationbringrs without carting out the microscope to blow up a chamfer to be a raceway.

    There is no “intent” or “meant to” in my comment for you to reply and include that slant. You are introducing items outside of my comments and not addressing my comments. Please stay focused.

    You are falling back to your mistating and obfuscating ways.

    I liked your warning. The facts here are plain and simple – let’s stick to the:

    After all, At a certain point, a bearing race/face/surface has to start meaning something that a person skilled in the art could look at and say “yeah, that would make a decent bearing race/face/surface.” and just as reasonably, at a certain point a chamfer should start meaning something that a person skilled in the art could look at and say “no, that would NOT make a decent bearing race/face/surface.”

  23. 144

    There was. The facts are plain and even Reyna admits to this – see below.

    He admits that the prior art device was never meant to be used that way. But its shape was just about identical, and since when do infringement or anticipation of an apparatus claim turn on intent? This isn’t even a cricket ball/tennis ball distinction. It’s the exact same apparatus.

    If you want to claim the prior art structure used in a new way, you shouldn’t be claiming an apparatus at all. You should be claiming a method, fully expecting any possible apparatus claim to be anticipated.

  24. 143

    Yes, that’s what I thought dependent claims were for. But some US drafters include them only to widen claim 1. They are fixated on something they call “claim differentiation”. It strikes me as the Tail Wagging the Dog. Never mind.

  25. 142

    Dear Judge Reyna
    I think you’re wrong* in this instance, but I like your style and you surely don’t deserve the abuse that has been heaped upon you by certain posters here.

    *a skilled person would not identify the chamfers of the prior art blade as being bearing surfaces of that blade when the blade includes adjacent surfaces that are plainly designed to be bearing surfaces. Maybe the patentee just made a poor job of its expert evidence.

  26. 139

    Well, IANAE, I think even if an examiner would do that with me, I would say he was reconstructing the prior art to meet the claims.  The prior art chamfers were not bearing surfaces in the prior art apparatus.  To perform that function, there had to be substantial reconstruction of the prior art apparatus, just as in the courtroom demo.  That is bogus even from an obviousness point of view.

  27. 138

    Max, thanks.   

    But, that's why we have dependent claims, no so?   At least one of them should have said baffle wherein its angle to its depending wall was obligue.

  28. 137

    Ned,

    giving the claims their broadest reasonable construction completely out of context of the specification.

    Except for one thing. I would hold that to give a construction completely out of context is not a broadest reasonable construction. I would define such as the epitome of unreasonable.

    If an actual reasonable construction were followd – in light of the specification (which I believe is still what is required by law, even in the Office), then the self-evident non-reasonable microscope blown up chamfer would be seen for what it actually is (a chamfer and not a raceway).

    After all, At a certain point, a bearing race/face/surface has to start meaning something that a person skilled in the art could look at and say “yeah, that would make a decent bearing race/face/surface.” and just as reasonably, at a certain point a chamfer should start meaning something that a person skilled in the art could look at and say “no, that would NOT make a decent bearing race/face/surface.”

    And yet,… here we are.

  29. 136

    All I’m saying is that the reader of the claim must put a meaning on the term “bearing surface” and must then ask whether that feature is in the prior art relied upon.

    If “bearing surface” had been defined properly, that definition would not have included within its ambit a mere chamfer, for goodness’ sake. Let’s have drawings to scale please, and testimony tested by cross-examination in open court (like in England) and set in a transcript, to reveal to the judge at first instance what “bearing surface” means, in context, to the proper notional reader.

    But the term wasn’t defined properly, was it. Given the inadequate and unsatisfactory Markman definition that exists, I suspect Reyna was right to find the chamfers were indeed bearing surfaces. Sigh.

  30. 135

    Had there been meaningful structural differences between annular recesses of the claim and the art,

    Had there been?

    There was. The facts are plain and even Reyna admits to this – see below.

    In order not to see this, one either has to take things out of context, zoom in with a magical microscope, both, or ignore your ample warning.

    Your desire to “preach” on the “evils” of Beauregard claims will only muddy the waters here. Please don’t go there.

  31. 134

    Sounds, again, like the government’s magic microscope test…

    No microscope needed at all. If you’re going to claim the exact same structure that exists in the prior art, in the exact same type of article you’re claiming, based on the distinction that one of the surfaces is used for a different purpose, you can’t distinguish over the art without either (1) claiming the method of using for the different purpose, or (2) claiming enough structure of the complementary housing to make the functionality explicit.

    Had there been meaningful structural differences between annular recesses of the claim and the art, in parts other than the bearing/chamfer that were relevant to the chamfer’s ability to function as a bearing, I’d have been the first to say that this is Max’s cricket ball and patentable. But there aren’t on these facts.

    It’s a claim to a blade that would work in a particular way if it were inserted into an unspecified and unclaimed housing that works that way, in the face of prior art that would do just that as demonstrated in court. It’s a Beauregard claim.

  32. 133

    This isn’t entirely unlike the Beauregard claim issue

    Ahh, now I see where your fishing expedition is leading to.

  33. 132

    But the structure is the structure

    Sounds, again, like the government’s magic microscope test…

    If we zoom in enough to make irrelevant the context that should be relevant…

    IANAE, what is surprising here, is that you warned against this tactic and now blow through your own warning.

  34. 131

    I’m going to side with the dissent on these particular facts.

    Per my comment below, it now appears that IANAE is not following IANAE’s advice.

  35. 130

    In summary, at this point, the USPTO Examiner has made a “final” decisions that the claim is valid, and the BPAI has made a “final” decision that the claim is valid. However, Bunzl still has a right to appeal. The question from those facts is whether the claim is “finally determined to be valid” under the statute.

    I haven’t read the opinion. But on it’s face this strikes me as an issue that would only be interesting to patent (and maybe trademark) prosecutors. In the world of litigation, it’s generally accepted that nothing is final until appeals are exhausted or waived. Then again, even in the world of patent prosecution, “final” rejections aren’t really final (see RCE).

  36. 129

    In this sense, there is nothing more opposite to a “bearing surface” than a “chamfer”.

    A different solution to a different problem. But the structure is the structure, and if you look at the patent and the art side-by-side it’s quite evident (not to say “obvious”) that they would inherently function in the exact same way if you put them in the same housing.

    And that’s not even considering that if you chamfer a surface to avoid bearing on the abrupt corner, you probably know that at some point something will inevitably bear on the chamfered surface. Sure, it’s not as bad as the corner because the chamfered surfaces are angled to direct the inserted part toward the gap in between, but if you were going to miss those chamfered surfaces every time they wouldn’t have been there in the first place.

  37. 128

    EG The majority opinion is correct that anticipation by “inherency” requires the “prior art” to NECESSARILY function as the claimed feature(s)

    This is completely wrong. We’re talking about a composition claim. If my composition has a limitation “wherein said structure is used for X”, it doesn’t matter if the prior art composition included a structure that was only considered useful for Y or Z. That’s Cruciferous Sprouts.

    The issue about limitations “necessarily” being present relates to structural limitations that are not expressly disclosed in the prior art. We come back to claim construction again: what is the structure of the “bearing face” recited in the claims describing the invention? Question 2 is: is such a structure in the prior art blade?

    By the way, I’d recommend not relying on ancient 2nd circuit cases, EG. Have you ever litigated a patent? Learned Hand or not, such citations indicate that one is desperate.

  38. 127

    “Seriously, IBP: see a doctor.”

    You and I are in agreement on that.

  39. 126

    Using this quote, “aiming at the target” is what is equivalent to “necessarily.” By contrast the argument based on Bettecher’s pre-1998 blades was t”hit or miss” and thus not “inherent” or anticipatory.

    The chamfers on the particular pre-1998 blade discussed were inherently a bearing surface, as inherently as anything could ever be a bearing surface, which is to say that the blade would have rotated just fine if someone had put a rotating bead against them. It’s not hit-or-miss, it’s an explicit teaching of a particular structure that, if used in that way, would work every time.

    This isn’t entirely unlike the Beauregard claim issue, which is that you’re claiming a first thing by the sole fact that works with an unspecified and unclaimed second thing in a specified way, and then you get upset when someone produces a second thing that causes a prior art first thing to function in the claimed way. As the claim stands, that is an anticipation.

    Now, if you’d claimed the actual invention over the prior art, which is a method of operating a blade by the engagement of specified surfaces of the blade and the housing, you’d be fine because there’s no teaching that the prior art blade was ever actually used that way.

  40. 125

    I’m sorry, I’ve got to come clean, I’m rolling on the floor laughing so hard! My plan was to troll on MM’s side initially, and then to “see the light” and defect to the other side, to highlight MM’s “wrong-headedness” and his unjustifiable self-aggrandizement to the effect that he has this laudable ability to “recognize and admit when he’s wrong”, even though he is “usually correct”. And then, because converts make the biggest zealots, I would bury him in a torrent of merciless posting, as I have done in the past.

    HA! And when I said “Preach it brother!” you actually believed me! All my posts on this thread were dedicated solely to luring into attempting this plan because I knew you were that sleazy! And you showed up and executed exactly as I expected you to.

    Seriously, IBP: see a doctor.

  41. 124

    IANAE What’s more, the patentee’s argument to the contrary appears (from page 6 of the dissent) to be that, yes, they are bearing surfaces, but probably not practical or commercially viable ones. When did that become a valid argument?

    Well, there was that insect screening mesh case, although that was an obviousness argument.

  42. 123

    to keep these threads, being too long already

    BOO HOOHOOOHOOHOOHOO!!!!!! The threads are too long!

  43. 122

    Was it a disputed fact, or an undisputed fact, that the frusto-conical surfaces in the prior art were self-evidently “chamfer” surfaces. Is it realistic, to argue that engineering chamfers are in any sense “bearing” surfaces. How does the skilled person regard chamfer surfaces? I had supposed that, when machining a metal component of a machine, chamfers are added only to exclude the possibility that the otherwise abrupt corner without any chamfer might otherwise unwantedly and unpredictably “bear” on an adjacent structure.

    In this sense, there is nothing more opposite to a “bearing surface” than a “chamfer”.

  44. 121

    what you are talking about here is the Selden case of fame.

    No, I’m really not. Having finally read Selden’s patent, it looks like what he actually invented was the use of a known engine type in a known vehicle, with the engine type he chose (compression-type petrol) being inherently lighter than the old type (steam). I don’t think he claimed more broadly than what he thought of, which was “hey, gas engines are smaller and lighter” – the same reason we still use them today. It’s just that putting an engine of any type in a vehicle is precisely what you’d think of as obvious. Restricting his claims to the particular engine disclosed is a ridiculous construction, and there’s no reason to go that far to preserve validity. If he wanted a claim that narrow, he could and should have drafted one.

    I’m talking about a hypothetical structural feature that the inventor fairly contemplated could be applied to multiple types of engine, and for which he is legitimately entitled to structurally claim that feature in an engine generally. The problem arises when the interesting part of the device is adequately structurally claimed, but the uninteresting part of the device (of which we always try to claim as little as possible) gets interpreted unreasonably broadly based on the function implied by its name.

  45. 120

    Thanks for the kind words, IBP. See also my response above to IANAE regarding the Dewey & Almy Chemical case. My “long-retired” patent attorney dad used the quoted statement from that case constantly in rebutting anticipation rejections, and it’s stuck with me. What Judge Learned Hand said then in that case is the clearest and most cogent expression of what “anticipation” is, and is definitely applicable today to rebut assertions of anticipation, including those based on “inherency.”

  46. 118

    “What does it mean to “necessarily” be capable of functioning as the claimed features?”

    IANAE, this goes back to a very famous 1942 Second Circuit case written by Judge Learned Hand called Dewey & Almy Co. v. Mimex Co., 124 F.2d 986, on what constitutes “anticipation.” As Judge Learned Hand ruled, “anticipation” is based on “probability,” not “possibility.” Here’s the key quote from that case that demonstrates this:

    At times courts have spoken as though greater certainty of anticipation were necessary in the case of foreign patents than of domestic, but that distinction we need not press; and indeed we should in any case be slow to do so, except so far as the authorities require. Tested by this doctrine, Newton’s disclosure was inadequate for several reasons. We do not rely upon the fact that he was not concerned with making a “sealing composition,” but only with finding a carrier for pigments effectively to “print or stain” fabrics; we shall assume that if his process would have uniformly resulted in the patented seal, it would have been a good anticipation even though it took a second authentic act of creative imagination to discover its fitness for the new use. The difficulty lies, not in his failure to anticipate the new use, but in what he actually disclosed and failed to disclose. Even if he had recommended the use of gum with pigments, and even if his direction to grind the pigments fine had been a direction to use the equivalent of a “colloid mill,” success or failure would have remained the sport of accident, as we have seen. It was hit or miss for the best of reasons; Newton was not aiming at the target.

    Using this quote, “aiming at the target” is what is equivalent to “necessarily.” By contrast the argument based on Bettecher’s pre-1998 blades was t”hit or miss” and thus not “inherent” or anticipatory.

  47. 117

    Sorry IANAE if I’m not reading you clearly. My fault not yours.

    A minimalist spec that sets the field as ic engines and describes an improvement, but recites none of the core components of an ic engine, comes under attack from a doc that shows the claimed technical feature in a bullet, the attacker arguing that a bullet is an ic engine. The claimed invention works equally well for all ic engines. I don’t know whether it works for other things besides.

    Provided that the spec has no definition of ic engine that shifts the term in your claim away from the everyday meaning of “ic engine” then the everyday meaning holds, and a bullet just is not an ic engine.

    For me, the dependent claim does not improve your position but would be objected to as new matter. If it makes a difference of substance, we would say, it must be adding matter. If it makes no difference of substance, there is no reason to admit it.

  48. 116

    The bearing surface is structure. It has a function in context. That function and that structure is not present in the prior art.

    Except that the prior art does have the two frusto-conical surfaces and does function in exactly the same way. It was never used in that way, but it always had the claimed structure and inherently had that function.

    The problem here isn’t functional claiming v. structural claiming, though I still think that’s an interesting discussion. The problem here is that the claim isn’t directed to the actual invention, which appears (in retrospect, anyway) to be a new use for something that’s pretty much the same shape as the prior art.

    Looking at the patent and the art side by side, it’s perfectly clear to anybody, even lacking ordinary skill in the art, that the prior art structure is just as much a bearing race/face/surface as the structure described in the patent.

    What’s more, the patentee’s argument to the contrary appears (from page 6 of the dissent) to be that, yes, they are bearing surfaces, but probably not practical or commercially viable ones. When did that become a valid argument? If that’s the best they can do, I’m going to side with the dissent on these particular facts.

  49. 115

    IANAE, what you are talking about here is the Selden case of fame. The prior art showed several attempts to adapt gasoline engines to power carts, but they were all too heavy and lacked sufficient power. Selden came up with an engine that was powerful enough and light enough actually be used to power the cart. He then claimed the gasoline engine (actually hydrocarbon) powered cart, which later became known as the automobile.

    In the end the court held the claim limited to the particular engine disclosed and described; because otherwise, a broader construction would render the patent invalid over the prior art, not so much on the basis of anticipation, but on the basis of lack of invention, which today we know as obviousness.

    Had he been in the patent office, however, Selden would not be able to take advantage of the narrowing construction to save his claims. They would have been unpatentable.

  50. 113

    Ned, as you know, the EPO is mustard hot on forcing Applicant to remove, during prosecution, all disconformity between the inventive concept defined in the (one only per category) independent claim and the inventive concept described in detail in the specification.

    So it is difficult to imagine the scene you set.

    But I will do anyway. If the thing did get through to issue with a claim that did not require the baffle to be oblique, nobody threafter is going to gratuitously read “oblique” in to that claim just so as to save it from invalidity. Rather, everybody would expect the owner to amend the claim, to save it from a finding that it is invalid.

  51. 112

    EG–

    The distinction is between “capable of” performing a function, and “actually” performing a function.

    As I understand inherency, and I’m in the middle of an opinion on this right now, you are absolutely correct.

    I hereby restrict my praise for Reyna to his claim construction and functional limitation determination–which is just grammar. He shows no grasp whatsoever of substantive patent law, and has done substantial violence to the doctrines of anticipation and inherency.

    I KNEW IT!!!

    I’m sorry, I’ve got to come clean, I’m rolling on the floor laughing so hard! My plan was to troll on MM’s side initially, and then to “see the light” and defect to the other side, to highlight MM’s “wrong-headedness” and his unjustifiable self-aggrandizement to the effect that he has this laudable ability to “recognize and admit when he’s wrong”, even though he is “usually correct”. And then, because converts make the biggest zealots, I would bury him in a torrent of merciless posting, as I have done in the past.

    There’s nothing as brutal as having somebody you thought was on your side (“Preach it, brother!” !!!!!!LOLOLOLOL!!!!) abandon you just when you are at the zenith of your arrogance. What a sucker Mooney is, he fell for it hook, line, and sinker. He’s so full of conceit that he actually believes that somebody who has stated their belief that he is a m0r0n would publish their agreement with him on any subject.

    What a sucker, so easy to play.

    I’ve come clean because I just had to share the plot with everybody else on this thread. I’ve already had my laugh, and it was good enough for me! I’ve been accused of being Hannibal Lecter-esque in the past, and I admit, I like to stick it to people–and there are few indeed who are as deserving as “Mooney”. I am a lawyer, after all.

    If there was somebody else’s money riding on it, or if it had actually been important, I would have gone through with it.

    As it turns out, Mooney just isn’t that important–or that bright, for that matter.

    Apologies to all those whose time I may have wasted, I promise I won’t do it again, view, 6, 7, IANAE, etc..

    “Mooney” – what a conceited, dense, sucker.

  52. 111

    Take a look at the side by side drawings of the claimed invention and the prior art pre-1998 blades. And then remove your head from your rectum and stop this nonsense that claim construction is done by looking at each word in isolation, and concluding that any word that ends in “ing” is a “functional recitation” and therefore free to be ignored or interpreted in the manner an examiner would interpret it (i.e. the broadest unreasonable interpretation).

  53. 110

    anon, indeed. Judge Reyna is giving the claims their broadest reasonable construction completely out of context of the specification. He admits, that if bearing surfaces are construed to require that the surfaces actually be used to support the bearings, that the prior art chamfered surfaces are not used for this purpose. But he then goes on to completely ignore limitation “bearing” to read the claims on the prior art. This is taking the claims out of context of the specification and giving them a very broad construction.

  54. 109

    With all due respect, IANAE, no one reading the specification would construe “bearing surface” to mean anything other than a surface which functioned as a bearing surface in context. The prior art chamfered surfaces did not, in that context perform, that function. It simply did not. The only way one could construe “bearing surface” to read on the chamfered surfaces of the prior art is to give the claims a very broad construction, the kind of construction one uses in the patent office.

    When I see throughout this thread is consistent attempt to construe “bearing surface” in the abstract it out of context of the specification. In the specification, what the bearing surface is is clear. The bearing surface is structure. It has a function in context. That function and that structure is not present in the prior art.

    In the patent office in contrast, the way the patent office construes claims according to In re Morris, the claims are construed according to what the term means in the abstract to one of ordinary skill in the art, that is, completely out of context. That is the way you and everybody else here seems to be construing bearing surface if one likes Judge Reyna’s decision.

  55. 108

    You can’t at the outset say “Pick any letter from A to Z. They are all just as good as each other” and then later, in prosecution, assert that the narrow range G to K is better than A to F and L to Z. That’s a different invention, and added matter.

    I’m with you there, Max. But that’s not what I’m on about.

    If I draft a spec involving an internal combustion engine, I probably won’t even feel the need to describe most of the engine unless that’s where the invention is. It’s not a matter of saying “this could equally apply to reciprocating-piston petrol engines, diesel engines, coal-fired steam engines, nuclear power plants, fireworks, and bullets” and later trying to narrow it down. None of that is in my spec.

    I simply figured that the expression “internal combustion engine” would be readily understood to mean what you and I understand it to mean, without having to give a bunch of examples that might inadvertently limit me to certain engine types.

    Suppose further that my invention is of general application and I wouldn’t have been able to make out an inventive step anyway if someone had found an anticipation in one particular engine type. All I have in the spec to hang my hat on is “internal combustion engine”.

    Now, suppose I claim an “internal combustion engine” with at least one cylinder and a piston capable of axial movement within the cylinder, etc. or whatever. What do I do when the examiner (or worse, the opponent/defendant) comes up with a bullet that otherwise shows the features of my intentionally minimalist claim? Hope I’m saved by a dependent claim to fuel injection or some other engine-specific feature?

  56. 107

    Max, the claim in Phillips was slightly different. The specification disclosed two functions for the baffle. A first function was for bullet deflection. A second function was for loadbearing. There was no requirement for the oblique angle for the loadbearing function. Because of this, the Federal Circuit did not read into the claim any requirement that the claim be limited to the oblique angle.

    However the specification made clear that the oblique angle was critical for the bullet deflection function. It was this point that was heavily argued in Phillips. The dissent would have limited the claims to the oblique angle regardless that the claim was not directed to the bullet deflection function but only the loadbearing function.

    Assume in Europe the specification made clear that the oblique angle was critical for the bullet deflection function; but the claim was only to a baffle, and no such oblique-angle limitation was in the claim. How would EPO construe “baffle” especially in light of prior art that had a baffle that was perpendicular, but for a loadbearing function.

  57. 106

    At a certain point, a bearing race/face/surface has to start meaning something that a person skilled in the art could look at and say ‘yeah, that would make a decent bearing race/face/surface’.

    Compare to the dissent’s admission on page 5:

    The chamfers were intended to provide clearance with mating parts, not to be used as bearing surfaces to engage the bearing beads in the knife housing.” (emphasis added).

    Reyna is not following the simple directions that IANAE would have all of us follow.

  58. 105

    IANAE, is this not a case of he who lives by the sword dies by the sword? If you claim “ic engine” but say in the specification that it covers a ramjet you risk being anticipated by a bullet. The old “What comes before….What comes after” rule of claim construction.

    For my EPO practice, this sort of thing happens all the time, with cases drafted in the USA. Spread around inside the specification are little scope wideners, planted for use later. “We say use X, but you could equally well use Y or Z”. Later, when Applicant is faced with close art, he tries to narrow down to a select range that (he now says)delivers surprisingly good results, those statements in the app as filed come back to destroy him. You can’t at the outset say “Pick any letter from A to Z. They are all just as good as each other” and then later, in prosecution, assert that the narrow range G to K is better than A to F and L to Z. That’s a different invention, and added matter.

  59. 104

    The majority opinion is correct that anticipation by “inherency” requires the “prior art” to NECESSARILY function as the claimed feature(s)

    What does it mean to “necessarily” be capable of functioning as the claimed features? I’ve never been to Argentina, and I don’t think anybody has ever suggested that I go or given me a motivation to go, but I’ve always been inherently capable of going.

    If it’s a functional limitation, all you need to find is the function. A function is inherently either present or absent whether or not the function has ever been used or noted.

    That’s why this whole functional/structural distinction is so important, and why (actual) functional limitations are a dangerous way to establish novelty. But also why we have to leave some room for functional-sounding language that persons of skill in the art would recognize as belonging to a defined class of structures that might still be too diverse for a single structural definition that preserves the meaningful scope of the claim. At a certain point, a bearing race/face/surface has to start meaning something that a person skilled in the art could look at and say “yeah, that would make a decent bearing race/face/surface”.

  60. 103

    But in the absence of Examples of turbines and steam engines, I would assume the ordinary everyday meaning of “internal combustion engine”.

    I would assume so too, but there are many types of internal combustion engines and one can’t come up with a single general structural definition for them as a class. One knows it when one sees it.

    However, a person (perhaps neither reasonable nor of ordinary skill, but a person nonetheless) might be of a mind to construe “internal combustion engine” as a functional limitation. After all, it appears to be defined only by the function of having combustion going on inside it and the function of producing motive force. If “engine” is even construed so narrowly. Would it then risk anticipation by a rocket engine? A firework? A bullet?

  61. 102

    Hi Ned. you know the Phillips facts and I don’t. But never mind. Here goes.

    Is a baffle “bullet-deflecting”? That might depend whether the baffle is one of thin glass intended to deflect a current of air, or a prior art bullet-stopper. It might depend on the mass of the bullet and its velocity. Whether a baffle is “bullet-deflecting” would also depend on the trajectory of the bullet (what else but that line is the baffle perpendicular or oblique to?). A claim that is meaningful only when you know what the trajectory, velocity and caliber of the “bullet” is, is a claim which the the EPO must be rejected as lacking in clarity.

    Until the claim has been clarified, I don’t know exactly what it means.

    As I understand it from you, the closest art was “perpendicular”, the single characterizing feature was “deflecting”, the technical effect was “deflecting” and the claimed invention delivered an enhancement of performance over the prior art “perpendicular”.

    To me, “deflecting” and “oblique” both depend on knowing the trajectory. For a mind willing to understand, they mean the same, I should have thought. How was it, that the outcome in Phillips depended decisively on the difference between “oblique” and “deflecting”?

  62. 101

    “No reasonable jury could conclude that the claims of the ’325 patent were novel over the pre-1998 blades because none of the dispositive facts were disputed and the law is clear.”

    Sorry, but this statement at the end of Judge Reyna’s dissent “doesn’t hold soap” (using my former patent attorney dad’s expression). The majority opinion is correct that anticipation by “inherency” requires the “prior art” to NECESSARILY function as the claimed feature(s) (in this case, the pair of frustoconical bearing surfaces 70 and 72). Comparing the ‘325 patent drawing to the the pre-1998 Bettcher blades shows that’s not NECESSARILY true, thus precluding “inherency” (or at least overturning the jury verdict in this case).

  63. 100

    inviting body punches, I replied to you above in the same fashion, but I will repeat it here. You are approaching claim construction as if it were in the patent office, or in line with the cases overruled by Philips. Since Phillips however, one does not construe claim terms in the abstract. But that is what you are consistently doing here in this thread. Since Phillips, the claims must be construed in light of the specification after reading the specification. They cannot be divorced from the specification. But that is what you are doing here.

    From the reply above:
    Inviting body punches, ask the wrong questions and you would get the wrong answers.

    The question is not, “What does “bearing surface” mean to one of ordinary skill in the art.” That is the claim construction used in the patent office according to In re Morris. The construction using courts is different. It is this:

    “What does “bearing surface” mean the one of ordinary skill in the art having read the specification.” See Phillips.

    I hope you can see the difference.

    Parenthetically, the Federal Circuit has not reviewed its claim construction dictated in In re Morris since Phillips. I would suggest to you that if they would take the issue en banc that they would hold that the claim construction provided by Philips will control even in the patent office.

  64. 99

    Inviting body punches, ask the wrong questions and you would get the wrong answers.

    The question is not, “What does “bearing service” mean to one of ordinary skill in the art.” That is the claim construction used in the patent office according to In re Morris. The construction using courts is different. It is this:

    “What does “bearing surface” mean the one of ordinary skill in the art having read the specification.” See Phillips.

    I hope you can see the difference.

    Parenthetically, the Federal Circuit has not reviewed its claim construction dictated in In re Morris since Phillips. I would suggest to you that if they would take the issue en banc that they would hold that the claim construction provided by Philips would control even in the patent office.

  65. 98

    After you, kind sir – and let’s see which has a bigger impact, which person’s silence does more to keep these threads, being too long already, from delving into the typical shill rants (and yes, I do know the answer to that proposition – as should you).

  66. 97

    Max, I think is rare. But, let’s test the issue just a bit here. Take Phillips for example. Let’s assume that the claim was claiming a bullet-deflecting baffle. The specification discloses only oblique-angled baffles. The prior art discloses perpendicular baffles.

    In court, I would assume that proper claim construction to preserve validity would be to read into the claims the oblique angle. In contrast, in the patent office, such an incorporation of structure into the claim to preserve its patentability would be inappropriate.

    Given the above example, how would baffle be construed in the European patent office?

  67. 96

    “Interesting” is it Shill? Interesting? So “interesting” that you had to break off what you were doing, just so you could tell us how “interesting” you find it all. Haven’t you got something better to do with your precious time? These threads are too long already. Will you now do your bit to keep them short and to the patent law point?

  68. 95

    It’s interesting to see the thread line go off-rail into the vocal minorities’ favorite subjects…

    Oh, wait, no it is not.

  69. 94

    Ned, you tell of cases in which: “there are two reasonable claim constructions consistent with the specification, one which reads on the prior art and a narrower one that avoids the prior art”. Are such cases:

    1) present for every asserted claim

    2) nearly always there

    3) quite common

    4) unusual

    5) rare as hens’ teth

    It should be 5). It is so, outside the USA. But within the USA, what is it Ned?

    Or do you want a Presumption of Validity that junks the PTO reasonable construction of the asserted claim, artificially to stave off what would otherwise be the common sense verdict, that the asserted claim, as it stands, is simply invalid? You want that, I suppose, because for the courts simply to call validity just as it is would be a shift so profound as to demolish the well-understood foundations of litigating duly issued US patents.

  70. 93

    Max, I agree with your statement that the two claim construction methods should be identical. The only difference between the two in the end should be this: if there are two reasonable claim constructions consistent with the specification, one which reads on the prior art and a narrower one that avoids the prior art, the courts should choose the narrower construction to preserve validity, while the patent office should not. But that should be the only difference. And if you read the original cases on this topic, that is, in fact, the only difference between the two.

    The problem really began with cases such as In re Morris, which gave lip service to the specification, and adopted rather the rule of construction that was overturned by Phillips. No case emerging from the patent office since Phillips has squarely addressed the issue of whether the Phillips approach to claim construction applies in the patent office, and that all prior approaches that would ignore the specification in the first instance are still valid approaches. I think it does; but Phillips itself suggests that the construction in the patent office is somehow different, without explaining the difference.

    In other words, the Phillips en banc court did not clearly extend its holding to the patent office, leaving intact such cases as In re Morris.

  71. 92

    6 I may be wrong about what MM is inviting from you, but what I was hoping to get from you, in reply to MM, was your view of what is a “bearing face” (as opposed to a “bearing race”). The claim requires first and second frusto-conical bearing faces. Does your definition of “bearing face” admit of the possibility that the chamfers constitute such “bearing faces”? Are you with the majority view, or that of the dissent, on this issue of what is the meaning of the words of the claim? Is the answer different, depending on whether you are construing a)in the course of normal pre-issue ex parte examination on the merits or b) post-issue, in disputed proceedings at the CAFC?

  72. 91

    “Do the claims require this “rolling element” to be present for infringement?”

    Nope. I considered exactly what you’re saying when I construed the claim previously. And no, they do not, you must simply evaluate whichever design is under consideration for infringement/anticipation/obviousness for elements which, in the context of that given design, would fit the definition.

    And also, no I would not care to take another stab at it, as what I stated originally was correct in its entirety.

  73. 89

    I like your hat tip to the EPO’s “Principle of Synthetical Propensity” (mind of the construer being one “willing to understand, building up, not tearing down”) for construing claims. One would think that “minds willing to understand” are the rule but not, it seems round here. Perhaps it is a bit like “common sense”. Everybody believes they have it, and those convinced that they have a full measure of it are most likely the ones with least of it.

    As I said above, 2/1 here is a nice split, to engineer fierce debate between respectable schools of thought, so that next time claim construction get done, it gets done with a surer touch, more proficiently, consistently and confidently.

    You know Ned, I really do not like this idea, that pre-issue the PTO will construe the claim broader than its common sense meaning and then, later, the court will construe it narrower than its common sense meaning. I think it leads to absurd debate about functional vs structural features, and a pervasive, corrosive Alice in Wonderland feeling within the community of patent practitioners and litigators, that claims are infinitely pliable, to have any one of an infinity of different scopes, and that their objectively true single meaning is whatever I say the claim means.

    This case is a nice example of how this claim construction divide between PTO and courts is so destructive of respect within the community. Each side has good reason to be convinced that the other is wrong, and says so, vociferously and sometimes intemperately.

    I think it goes better when the Office and the Courts both follow the same rules of claim construction. Then each can learn from the other, with mutual respect, and synthetical propensity. This is not idealistic dreaming but readily attainable. Where there is a will, there is a way.

  74. 88

    “Happy-go lucky folk don’t QQ like that.”

    Happy-go luck isn’t how I would describe MM — delusional is the better term.

    Then again, has anybody seen my pants?

  75. 87

    Or I’m just a happy-go lucky

    Well we can rule that out – no one does more QQ’ing than MM. Happy-go lucky folk don’t QQ like that.

  76. 86

    “Still waiting for you to tell us the “clear structural differences” between the prior art and the patent, in structural terms. And don’t forget to show us where the patent specification defines those structures.”

    Sorry, I fear that basic engineering eludes you as much it would elude a monkey.

    “this is a cakewalk”
    Stop living in your fantasy world — my experience in law school was that those walking out of the test thinking that they “knew everything” did very poorly. The problem is that you don’t know what you don’t know.

    BTW … thanks for proving my point Mr. Mega-Poster.

  77. 85

    I asked: Do the claims require this “rolling element” to be present for infringement?

    And I see that 6 has already answered in his 5:57 comment. The answer is no.

  78. 84

    it is a groove fashioned in such a way as to allow a rolling element to ride along it(intended use part) AND is operably connected to a rolling element (non-functional/non-intended use actual structural relationship) operable to roll along it in a given design (functional recitation).

    A fine effort, my friend. A fine effort.

    A “groove.” I like it. Extremely broad, but I do believe it’s structural!

    Do the claims require this “rolling element” to be present for infringement?

    You want to take a stab at “bearing face” now?

  79. 83

    Reyna said,

    “The claims merely mention that
    those first and second surfaces happen to “defin[e] first
    and second bearing faces.” In essence this limitation does
    nothing more than give a name to the first and second
    surfaces: “bearing faces.” Admittedly, the word “bearing”
    carries some meaning, but that meaning is not structural.
    At most, the “defining” limitation is an indication of an
    intended use or function of the first and second surfaces—
    that they be used to engage one or more bearing beads.”

    I think this is where Reyna went off the rails. The limitation of “bearing” actually located the surfaces in the structure having the conical shape. It is the structure of the “body” that provides the surface that engages the rotating blade in sliding contact. One identifies which surfaces perform this function by reading the specification.

    Reyna, by suggesting that the chamfered surfaces can be the claimed bearing surfaces, not only gives no weight to “bearing,” but he reads the limitation right out of the claim. His construction is not only not consistent with the specification, it is divorced from the specification. His approach at claim construction is completely at odds with Phillips.

    Anyone reading the specification with a mind willing to understand would never construe the chamfers as the claimed bearing surfaces because no embodiment actually show those chamfers performing such functions.

    Reyna’s dissent really cannot be taken seriously. His dissent is an example of why Phillips was necessary.

  80. 82

    who really enjoys whipping the pants off

    We have discussed these latent fantasies of yours Mr. Mooney.

    Please try to restrain yourself.

    (Ouch).

  81. 81

    I will not “argue” otherwise. I will tell you otherwise.

    A bearing race is the structural element upon which a rolling element rides, usually a groove. To put it in layman’s language for you, it is a groove UPON WHICH rolling elements ride in a given design. If you want to put it even moreso into layman’s terms with a tad of patent speak, it is a groove fashioned in such a way as to allow a rolling element to ride along it(intended use part) AND is operably connected to a rolling element (non-functional/non-intended use actual structural relationship) operable to roll along it in a given design (functional recitation).

    That wasn’t terribly hard to come up with. The part that is missing is the part about the groove being operably connected to a rolling element in a certain design (specifically the prior art design).

  82. 80

    its seems he is more likely a bitter, UNEMPLOYED patent attorney with lots of time on his hand.

    Or I’m just a happy-go lucky, securely employed patent attorney who really enjoys whipping the pants off pxtxnt txxbxggers, trolls, and all who shill on behalf of same.

  83. 79

    What is interesting is MM is expending great effort

    LOL. Great effort?

    Maybe it looks that way in sockieland. From where I’m sitting, this is a cakewalk.

    The terms are defined by the patentee’s use of them in the specification according to their ordinary and customary meaning

    Still waiting for you to tell us the “clear structural differences” between the prior art and the patent, in structural terms. And don’t forget to show us where the patent specification defines those structures. Thanks.

  84. 78

    “That would depend on how those terms in quotation marks are defined by a court, wouldn’t it? Seems to me that you’re getting ahead of yourself.”

    What is interesting is MM is expending great effort defending the side of one dissenting justice, whose position was discarded at level of the process.

    Regardless, given how much MM posts on everything, its seems he is more likely a bitter, UNEMPLOYED patent attorney with lots of time on his hand.

  85. 77

    “That would depend on how those terms in quotation marks are defined by a court, wouldn’t it?”

    The terms are defined by the patentee’s use of them in the specification according to their ordinary and customary meaning, i.e. the meaning that the terms would have to a person of ordinary skill in the art.

    You should know that.

  86. 76

    There are clear structural differences between the claimed blade and the pre-1998 blades.

    Please tell us what those “clear structural differences are”, using structural terms, and show us where the patent specification defines those structures.

    Thanks.

    Nobody, I repeat, nobody, of ordinary skill in the art would have looked at the chamfers of the pre-1998 blades and concluded that they were “bearing races” or “bearing faces” or “bearing surfaces” or any other feature of the claimed invention.

    That would depend on how those terms in quotation marks are defined by a court, wouldn’t it? Seems to me that you’re getting ahead of yourself.

  87. 75

    “And I have vast experience in this particular area.”

    I examined cases in class 384 when I was an examiner.

    So there.

  88. 74

    “I’m willing to be convinced, but you haven’t in fact convinced me.”

    So sorry.

    There are clear structural differences between the claimed blade and the pre-1998 blades. If you can’t see those differences, well, this conversation is not going to go very far.

    If you can see them, then you need to review the patent specification to determine what is the broadest reasonable interpretration of the terms “bearing race” and “bearing face” or “bearing surface” that is 1) consistent with the patentee’s use of those terms and 2) consistent with the interpretation that one of ordinary skill in the art would reach. Nobody, I repeat, nobody, of ordinary skill in the art would have looked at the chamfers of the pre-1998 blades and concluded that they were “bearing races” or “bearing faces” or “bearing surfaces” or any other feature of the claimed invention.

    J. Reyna is doing the same nonsense that examiners do when they rely on the broadest unreasonable interpretation, “Well, gee, these chamfers could might possibly be a bearing face if somebody who had no idea how the saw actually works installed it upside and backwards so that the chamfers kinda sort of engaged the whatever before the whole thing fell apart two milliseconds after starting up the saw.”

    We should expect a little bit more from federal appeals court judges when they are construing claims.

  89. 73

    view,

    Your statements are merely conclusory, and therefore unconvincing.

    Again, a “bearing race” may be a component unique to a “bearing”, and be understood as such by a PHOSITA…

    but a “bearing surface” is not a component unique to a “bearing”, and is NOT understood to be such by a PHOSITA–in fact, there is a plurality of “bearing surfaces” in any “bearing”, the number, placement, and configuration depending on the configuration of the “bearing”.

    BTW, in the art, in my experience, the word “bearing” is NEVER used in isolation–it is ALWAYS

    “BEARING ASSEMBLY”.

    And I have vast experience in this particular area.

  90. 72

    “The dissent had everything to do with inherency”

    Exactly. The dissent. Everybody else involved in the case wasn’t dopey enough to think that using the terms “bearing race” and “bearing face” was “choosing to define an element functionally” because everybody understands that those are not “functional” recitations.

    Well, almost everybody except J. Reyna, examiners that search for protein fragments all day.

    And you.

  91. 71

    view,

    I’m willing to be convinced, but you haven’t in fact convinced me.

    What exactly is a “bearing surface” to a PHOSITA? It is not a standard component unique to a “bearing”.

    A “bearing”, if considered as a noun, can have many “bearing surfaces”, and a surface to which a particular force is transmitted in a particular way and in a particular direction is no more a “bearing surface” than any other surface present in the “bearing”.

    You can’t have your cake and eat it, too–if you want a “bearing race” to be a structural limitation, “bearing surface” MUST be a functional limitation, because a “bearing” is not disclosed–it is only a “bearing race”, a component of a bearing, that is disclosed.

    The “bearing surfaces” referred to in the claim are described not as components of a “bearing”, but as components of a “bearing race” (surface) contemplated to perform a particular function (bearing).

    On the other hand, if the patentee had used the terminology “a bearing race surface” instead, there would have been an antecedent basis for construction as a structural limitation.

  92. 70

    what’s: “This case had absolutely nothing to do with inherency.”

    The dissent had everything to do with inherency:

    “The court explained that “choosing to define an ele-ment functionally, i.e., by what it does, carries with it a risk” in that “a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art.” Id. at 1478 (quoting In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)). To find that a claim element is inher-ently disclosed in the prior art, it must necessarily be present in the prior art. King Pharms., 616 F.3d at 1274. Because the oil spout in Schreiber was “capable of” dis-pensing popped popcorn in the manner set forth in the claim, it inherently satisfied all of the functional limita-tions and anticipated the claimed popcorn spout.”

    “It is undisputed that the chamfers of the pre-1998 blades could function as bearing faces, as demonstrated by the mock-up used at trial. No recognition of such capability in the prior art is required. Schering Corp. v. Geneva Pharmaceuticals, Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (“[T]his court rejects the contention that inherent anticipation requires recognition in the prior art.”); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (“Inherency is not neces-sarily coterminous with knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recog-nize the inherent characteristics or functioning of the prior art.” (quotations omitted)). Each chamfer inherently satisfies the “bearing face” limitation “regardless of whether it has ever been used in any way in connection with [a bearing].” Schreiber, 128 F.3d at 1477.”

  93. 69

    “Jimmie…has demonstrated beneficial knowledge and understanding of not just one broad substantive patent law concept (anticipation)…”

    Unfortunately Jimmie has demonstrated that he has zero understanding of claim construction, i.e. of the concept that claims are to be interpreted as they would be understood by one of ordinary skill in the art.

  94. 68

    Many of you here keep referring to a “bearing race”, when Reyna’s reference to a functional limitation was aimed at a “bearing face”, or a “bearing surface”.

    Maybe there is some confusion. To my mind, there is no conflict between construing the “bearing” in “bearing race” as an adjective descriptive of structure, as it is well-understood in the art, (the race component of a device commonly known in the art as a bearing) and the “bearing” in the “bearing surfaces” or “bearing faces” of that “bearing race” being construed as an adjective descriptive of function (the surface or face that is bearing the force transmitted thereto by another structure).

    It makes more sense to think of “bearing” in this way, than as a structural limitation when used with “surface” or “face”. A “bearing race”, unlike a “bearing face or surface”, is a well-understood component of the device commonly known as a “bearing”, and is essentially limited thereto–unlike a “bearing face or surface”, which can be exhibited by many components of many devices, other than “bearings”.

    It might be helpful if you think of “bearing surface” as meaning “surface bearing a force”, which is, IMHO, the most plausible intended use of the term.

  95. 67

    or confuse, obfuscate, misapprehend, or misapply any of the tenets of patent law.

    After all, that’s MM’s job.

  96. 66

    “…but also of the slightly more subtle patent law concept of inherency.”

    This case had absolutely nothing to do with inherency.

    Thanks for playing though.

  97. 65

    Do you realize how much of a clown you have become?

    It is hard to tell. He may not realize how much of an a@@ he is. Or he may (and he just might relish owning his special spot on the blog roll).

  98. 64

    Although Jimmie’s opinion in this case doesn’t really move patent law forward, it does cement into place an example of rational logic with a substantive underpinning–and more importantly, in contrast to other CAFC judges, his opinion didn’t move patent law backward, or confuse, obfuscate, misapprehend, or misapply any of the tenets of patent law.

    Preach it brother!!!!!!!!!!!!

  99. 63

    you have now resorted to your typical insulting

    LOL. In fact, as usual, the first insult here was thrown by one of your beloved partners in sockpuppetry (wtvlfdt), who called me a “dolt”. Before that, he/she/it was lobbing other snide comments (see 3:47 pm upthread). This is a typical series of events, as you most likely know.

  100. 62

    Even 6 can’t agree with you

    It’s not the first time that I haven’t seen eye-to-eye with 6. In this case, at least, 6 is simply wrong. “Bearing race” and “bearing face” are functional terms. They do not clearly define structures, using structural terms.

    By the way, I’m not an Examiner. I’m a patent attorney. On the other hand, you clearly are working for a patent troll. Best bet is that you are an intern trying to raise cash to take the patent bar for the third time.

  101. 61

    Jimmie Reyna got it exactly right in this case–and in doing so, has done more than merely meet the minimum standard of rationality that we rightly expect from judges, but has demonstrated beneficial knowledge and understanding of not just one broad substantive patent law concept (anticipation), but also of the slightly more subtle patent law concept of inherency.

    In doing so he has not yet demonstrated a high standard, but instead a standard just sufficient to decide the case correctly–which also evidences a laudable judicial economy.

    Do any of you remember the thread on which I pointed out that he had zero patent experience, and hoped that because of that inexperience he would provide a breath of fresh air into patent jurisprudence?

    link to patentlyo.com

    “Who knows? With the state of CAFC patent jurisprudence, his contribution may be a marked improvement–his likely ignorance thereof could prove to be a great advantage.”

    “I meant what I said about him possibly being a breath of fresh air in a stale patent room–he’s not encumbered by having done things in any particular way for a long time, and he might not arrive with any of the usual patent-related biases in place.”

    What Jimmie has done, by his thoughtful, rational, and economical juridical approach, has been to highlight the relatively lower competence, or even outright incompetence, of the other 2 panel members, Bryson and Linn.

    When I said that “the vacancy represented an opportunity for patent law to move forward–an opportunity that seems to me to have been missed, or ignored, if it was even noticed at all.”, I was serious–but even a “blind squirrel” (confirmation committee) sometimes finds a “nut” (Reyna, but in a flattering way).

    Although Jimmie’s opinion in this case doesn’t really move patent law forward, it does cement into place an example of rational logic with a substantive underpinning–and more importantly, in contrast to other CAFC judges, his opinion didn’t move patent law backward, or confuse, obfuscate, misapprehend, or misapply any of the tenets of patent law.

    Most importantly, his opinion gives hope that in the future, with other opportunities arising in other cases, he will in fact be able to move patent law forward somehow.

    Jimmie Reyna–not only was he correct, he had the courage to stand up and say so in the face of opposition.

    A breath of fresh air, indeed.

  102. 60

    Do you realize how much of a clown you have become?

    So, you have now resorted to your typical insulting, name calling, and declaring victory as you get your a@@ handed to you.

    Even 6 can’t agree with you examiner Mooney.

  103. 59

    My views on a wide variety of subjects are well-known and (I believe) fairly consistent and (more importantly) usually correct and accurate

    Well-known? Yes.

    Fairly consistent? Yes.

    Usually correct and accurate? Not. A. Chance. ZERO.

  104. 58

    The mockup at trial?

    I think that is “reconstruction” — taking the prior art and reconstructing it to meet the claims.

    Examiners do it all the time. It is a wonder that they got away with it in court.

  105. 57

    Your only saving grace

    LOL. My saving grace is that I’m happy to admit when I’m wrong. I’ve done so numerous times. I’m still prepared to do so.

    You’re inability to admit that you’re wrong is, well, typical of your kind. You know: the sockie kind. The kind with the obnoxious pseudonym that changes when it’s convenient.

    an anonymous dummy

    That would be you. My views on a wide variety of subjects are well-known and (I believe) fairly consistent and (more importantly) usually correct and accurate. Years of my comments are archived here. In fact, you know far more about me and my views than you do about most IP pundits. I have no idea why that’s not good enough for you, unless you want to throw txxlet paper into my trees or something.

  106. 56

    “Nevertheless, ‘bearing race’ is a functional term.”

    Blah blah blah.

    Your only saving grace is that you’re an anonymous dummy. Poor J. Reyna had to display his stunning ignorance in front of the whole world.

  107. 55

    The namestealers are back, sockie. But you knew that already.

    Only dopey Federal Circuit judges with zero technical knowledge and examiners who s

    Blah blah blah.

    Nevertheless, “bearing race” is a functional term. If 6 thinks otherwise, he is wrong. If he wants to argue otherwise, he can provide an objective, structural definition of the term. I won’t hold my breath. It can’t be done.

  108. 54

    That’s the worst concession speech ever. But coming from a dope like you, it’s still nice to read.

  109. 53

    What would I make of it? Well, being European, I would follow the guidance of the UK Supreme Court and ask myself “What was the inventor using the language of the claim to mean (to the notional PHOSITA reader of the patent)?”

    Suppose the “internal combustion engine” invention is all about systems for cooling engine blocks, Example 1 in the specification of the patent is of a diesel engine, Example 2 a gas turbine engine and Example 3 a steam engine. Then, I would say that the writer of the claim was using the language of the claim to embrace such things as jet engines and coal-fired steam engines on board old railway locomotives.

    But in the absence of Examples of turbines and steam engines, I would assume the ordinary everyday meaning of “internal combustion engine”.

  110. 52

    but… but… but….

    wtvlfdt you are a sockie!

    So there.

    Nah nah nah.

    And you still have not given anything but functional language (because I say so).

    (caricature provided by…)

    T O O L

  111. 51

    “Well, all decent claim constructions do that to some extent.”

    That may be how Examiner Mooney does claim construction. But nobody competent would.

    “I can assure you that it is structural.”

    Mooney’s fellow examiner sets him straight. Now that’s funny.

    “In other words, MAYBE (although probably not, and I explicitly do not take that position) had an examiner brought this issue up, armed with his BRI, then there may be an issue which they could then correct by amendment.”

    There is no broadest reasonable interpretation of the term “bearing race” that would include the chamfers of the pre-1998 blades. That’s because nobody of ordinary skill in the art would consider the chamfers of the pre-1998 blades to be a bearing race. Only dopey Federal Circuit judges with zero technical knowledge and examiners who spend all day searching for protein fragments and DNA strands would think the chamfers of the pre-1998 blades were a bearing race.

  112. 50

    Suppose I claim instead “A cricket ball, comprising an annular layer of polymer X”. Is that novel? I would say Yes.

    That’s all well and good when you’re relying on the “cricket ball” aspect to imply additional structure, but in this case it seems that quite a lot of the structure of the bearing race is explicitly claimed. Are we at a point now where we can’t name things in our claim without a judge pointing to imagined “functional” limitations?

    Where do we draw the line between a well-understood term for a class of structures and a functional limitation? What would you make of “internal combustion engine”, for example?

  113. 49

    This thread reminds me of the example I use for EPO prosecution.

    Suppose the state of the art includes a tennis ball which comprises an annular layer of polymer X.

    Suppose I claim “A ball for playing cricket, comprising an annular layer of polymer X”. Is that novel? I would say No. Kids everywhere use a tennis ball to play schoolyard cricket.

    Suppose I claim instead “A cricket ball, comprising an annular layer of polymer X”. Is that novel? I would say Yes. As to what constitutes a “cricket ball”, the Rules of the Game of Cricket are extremely strict and would not extend to tennis balls.

  114. 47

    Dennis,

    I see you point, but the bigger problem with Marine Polymer Technologies is that the majority’s opinion “doesn’t hold water” as it is completely contrary to the express language in 35 USC 307(b) that only “amended” or “new” claims trigger “intervening rights” during reexam, not statements (Judge Lourie’s dissent is absolutely correct on this point). Don’t be surprised if Marine Polymer petitions for a rehearing en banc and also don’t be suprised if it’s granted (at least Newman and Rader in particular will likely go “ballistic” over the majority’s ruling here).

  115. 46

    Talk about “non-responsive”…

    Ask MM for a screwdriver.

    Watch the eyes glaze over.

    We are all “informed.”

  116. 45

    Hey Fuzzy,
    What now Fuzzy… It ain’t so Fuzzy.. Wuzzy. Doing the same thing over and over again. Not being a Chess Player… KING ME!
    Oh and Elanore.. calling yourself Ella cool move.

  117. 44

    Yes, View, I’m correct, but nevertheless, the alternative (Reyna) position is not at all “dopey”. It has integrity: see immediately above. It’s OK, just not as good an assessment of the claim as mine. OK?

    There are so many dissents from the CAFC these days. I am thinking they do it deliberately, to stimulate fruitful debate on patent basics, like claim construction, in fora such as lively patent law blogs. Good for them.

  118. 43

    Ned, actually I do have an idea why J Reyna thinks the way he does.

    The claim is to the blade alone. Makes sense: one wants to be able to control the trade in replacement blades. But he who lives by the blade can expect to die by the blade. The only features you can recite, in a claim to a blade per se, are blade features (like frusto-conical surfaces) per se. The bearing is not there. We have no idea what sort of bearing the blade might run on. You give me the chamfers, and I’ll make you a bearing that will run on those chamfers. Not for long, but with a replaceable blade, who cares.

    For me “intention” does not come in to it, and it’s complicating things unnecessarily, to talk about “intention”.

  119. 42

    cc: Sad. Very sad.

    I take it from your non-responsive comment that you admit that the term is functional and there is no objective structural definition. Thank you.

  120. 40

    sockie the sockpuppt: “is the object upon which the

    not structural??

    LOLOLOLOLOLOL. “Object”. Wow. I guess the term “object” is “structural”, in the same sense that the word “structure” is “structural.” In other words: completely non-informative.

    Same with “surface.” Compositions/articles/structures/objects do tend to have “surfaces.” Slightly more informative, perhaps, but still leagues away from a meaningful objective description of the object in question.

    Maybe you should drink your milk, have a cracker, and take a nap. You don’t seem to be up to this.

  121. 39

    is the object upon which the

    not structural??

    bearing contact surface,

    not structural??

    W

    T

    F

    If I show you an object removed from its context

    Is that like the government’s magic microscope? How did that argument work for them?

  122. 38

    “I have no idea why Reyna is insisting that the prior art anticipates.”

    Because of the botched Markman. And partially (according to him) because of the little model that they showed for 3 minutes.

  123. 37

    6: It is really a matter of construing the claim as one of ordinary skill would construe it

    I agree.

    rather than having dissected the phrase into different words, assigning each of them a different meaning and then peice-mealing it all together to get a construction.

    Well, all decent claim constructions do that to some extent. The least helpful claim constructions from the public’s standpoint are those that say merely “Term X includes doohickey’s like plaintiffs but not those of defendants.” This is why objective structural definitions are always the best definitions. They are also difficult to arrive at which is why courts tend to fudge it up when nobody is paying attention.

  124. 36

    cc Anyone who works in the mechanical field (or skateboards for that matter) knows what a “bearing race” is.

    Right — “they know it when they see it”. Except when they don’t.

    you can buy a bearing race on Amazon

    You can buy a “walking stick” on Amazon too. That doesn’t mean it’s not a functionally defined composition that can include widely varying structures and, as such, can include prior art compositions that were never “intended” by their makers for use as “walking sticks.”

    The term clearly denotes structure to anyone in this field.

    And what exactly is that structure? If it’s so “clear,” it’s a bit odd that the only definition provided so far was plainly functional, and not structural. Please provide the objective, structural definition that is so clear to everyone.

  125. 35

    MM, there is a difference between law and equity. The law is not concerned with what is right or wrong. Equity, in contrast, acts to smooth the rough edges of the law in the interests of justice.

    I think the law here is clear. Intervening rights applies to amended or new claims. Period. End of discussion.

    Now if the Federal Circuit wants to create an equitable exception, it can do so in the interests of justice. But I do not see that here. Not at all.

    So, even if Feds do not reverse this case en banc, I feel confident that it will be petitioned to the Supreme Court and the US Government will support the petition as the Federal Circuit is ignoring the statute.

  126. 34

    Man you are really out of your league.
    Anyone who works in the mechanical field (or skateboards for that matter) knows what a “bearing race” is. In fact, you can buy a bearing race on Amazon and tons of people advertise that they manufacture and/or sell bearing races.
    The term clearly denotes structure to anyone in this field.
    The more you insist on arguing this reediculous point, the more you compromise what little remaining credibility you may have. I am embarrassed for you.

  127. 33

    I read the dissent too and my conclusions were posted below. What they’re talking about in the claim is a certain “thing” not the “function of a thing”. As some posters in this thread put it, the word is used as a noun. One of ordinary skill simply would not refer to that which they are designating as a certain term in the prior art as that thing recited in the claim.

    It is really a matter of construing the claim as one of ordinary skill would construe it rather than having dissected the phrase into different words, assigning each of them a different meaning and then peice-mealing it all together to get a construction.

    In other words, MAYBE (although probably not, and I explicitly do not take that position) had an examiner brought this issue up, armed with his BRI, then there may be an issue which they could then correct by amendment. But a court bringing this kind of thing up without a BRI standard is unpossible.

    “It’s not a straw man at all. It’s a direct and logical (indeed, inevitable) response to your false claim that the term “bearing race” is structural. It’s not structural. It’s functional, for the exact reason that I provided you.”

    I can assure you that it is structural.

  128. 32

    the MPT majority still was wrong as intervening rights EXPRESSLY applies by statute only to new and amended claims.

    Just because Congress didn’t anticipate that the PTO (with the help of the patentee) would ignore the canons of claim construction and thereby create a giant loophole in the intervening rights statute? Doesn’t seem fair. The CAFC did the right thing. It won’t be overturned en banc.

  129. 31

    sockie “If I show you an object removed from its context (say, a machine of which the object is a part) and I point to a part of the object (say, a groove) and ask you if it’s a ‘bearing race’, you’re not going to be able to tell me if it is or it isn’t.”

    Nice straw man.

    It’s not a straw man at all. It’s a direct and logical (indeed, inevitable) response to your false claim that the term “bearing race” is structural. It’s not structural. It’s functional, for the exact reason that I provided you.

    “bearing races” as that structural term

    Again, it’s functional, not structural. Keep digging though. China needs more reality-denying mxrxns.

  130. 30

    “What you CAN tell me (if you’re a person of ordinary skill, at least) is whether it is capable of being used for such.”

    Nobody of ordinary skill in the art would have considered the chamfers of the pre-1998 blades to be “bearing races” as that structural term is used and understood.

    “If I show you an object removed from its context (say, a machine of which the object is a part) and I point to a part of the object (say, a groove) and ask you if it’s a ‘bearing race’, you’re not going to be able to tell me if it is or it isn’t.”

    Nice straw man.

  131. 29

    Notice that this patent survived IPX unscathed, which is extremely rare. Bunzl must have really botched that one.

  132. 28

    sockie A race is the object upon which the raceway is formed.

    LOL. Not structural.

    A raceway is a bearing contact surface, that is, the surface upon which another raceway slides or upon which a rolling element, such as a ball or roller, rolls.

    LOL. Not structural.

    You wrote: A bearing race is a structural term

    In fact, it’s not a structural term. It’s a functional term. If I show you an object removed from its context (say, a machine of which the object is a part) and I point to a part of the object (say, a groove) and ask you if it’s a “bearing race”, you’re not going to be able to tell me if it is or it isn’t.

    What you CAN tell me (if you’re a person of ordinary skill, at least) is whether it is capable of being used for such.

    Only a dolt

    How’s your foot taste today, shillywilly?

  133. 27

    Not to mention that *three* different examiners in the CRU have to sign off on each office action (if I recall correctly… see MPEP 2671.03).

  134. 26

    “In reaching his outcome, Judge Reyna is finding that, as a matter of law, the wrong conclusion was reached by the trial jury, the district court judge, the original patent examiner, the reexamination examiner, the BPAI, and the other two judges on the court.”

    This made me howl with laughter.

  135. 25

    Max,

    You are correct. The only people who would have bought into the defendant’s expert’s dopey interpretation of the prior art blades are examiners (e.g. Mooney) and Federal Circuit judges with zero technical knowledge.

  136. 24

    And the reason for that is that chamfers at the lip of the groove are not bearing races, primarily because the blade bearing member is not intended to be in sliding or rolling contact with the chamfers.

    I have no idea why Reyna is insisting that the prior art anticipates. No jury would agree with him and a jury did not in fact agree with him. He seems to misunderstand something.

  137. 23

    Here’s the note from the class definitions for class 384 (bearings), subclass 7, of the USPC:

    A race is the object upon which the raceway is formed. A raceway is a bearing contact surface, that is, the surface upon which another raceway slides or upon which a rolling element, such as a ball or roller, rolls.

    Only a dolt like you who examines molecules all day, and apparently J. Reyna, would argue that a “bearing race” is a functional recitation or intended use.

  138. 22

    I agree with the latter point. By the time of the appeal, the reexamination was final and the certificate had issued.

    Also consider in MPT that primary issue on appeal was claim construction. The majority opinion held that the DC had it wrong and that the PTO had it right. This clearly did not depend at all on whether the reexamination was final.

    However, the MPT majority still was wrong as intervening rights EXPRESSLY applies by statute only to new and amended claims. The statute, by its terms, excludes from its scope claims that are not amended. The panel in decision in MBT therefor violates the express conditions necessary for the applicability of intervening rights.

    But as you argue, Malcolm, the examiner should have required the addition of claim limitations to the independent claims. That he did not may have been an error.

    I wonder if that case will be overturned en banc?

  139. 21

    sockie #21 : A bearing race is a structural term, not a functional recitation or intended use

    Really? Please provide your definition of “a bearing race” in objective, structural terms.

  140. 20

    The way I would put it is as follows:

    Judge Reyna, looking at the alleged anticipation, had no problem identifying a bearing race, namely, the slab-sided groove. Now, the frusto-cone faces of the claim are presented as part of the claimed bearing race. I doubt that the schematic drawings are to scale. I have difficulty accepting that the miniscule chamfers at the lip of the groove are properly to be regarded as an integral part of this particular “race”.

  141. 19

    D, thanks. I can sort of see the “tension” at the level of abstraction you indicated. But the facts in the cases are different enough that any perceived “tension” melts away quickly, at least in my view. Also, by the time of the Federal Court’s decision in Marine Polymer, Marine Polymer’s re-exam had issued and was “final”.

  142. 18

    Malcolm, I think the whole point here is that the chamfered surfaces Reyna said had the claimed structure were not bearing races at all. The fact that their structure could meet the structural limitations of the claim bearing race was therefor irrelevant.

    I am not sure where you “capable” point is at all applicable here.

    Take a bow and arrow for example. Suppose the claim is to a bow that has a reverse curve at both ends. The prior art has a reverse curve, but at the center of the bow. The fact that two bows both have reverse curves may go to obviousness, but the location of the curves is critical in this example.

    In the claim under consideration, the chamfered edges were not bearing races and therefor structure was irrelevant.

    I think the majority was right.

  143. 17

    “Thus, any structural feature in the prior art which is capable of serving as a “bearing” race in the saw and which otherwise meets the recited structural limitations will suffice for anticipation purposes.”

    Lulz.

    A bearing race is a structural term, not a functional recitation or intended use. One of ordinary skill in the art would know that. J. Reyna is clearly not one of ordinary skill in the art, or even capable of determining the level of skill in the art, despite having the title of “Judge.”

    Idiots who examine protein fragments and DNA strands clearly don’t get it either.

  144. 16

    The functional term is “bearing”. I didn’t spend an hour poring through it, but it seems like a pretty solid argument.

    Surely, “bearing” is a noun in that claim and a structural term. Doesn’t everybody who deals in rotatable parts know what a bearing is?

  145. 15

    I just read the dissent. The functional term is “bearing”. I didn’t spend an hour poring through it, but it seems like a pretty solid argument.

    A key point is that the claim is to a blade, not to the saw itself. Thus, any structural feature in the prior art which is capable of serving as a “bearing” race in the saw and which otherwise meets the recited structural limitations will suffice for anticipation purposes. That’s one of the risks of functional limitations into your composition claims.

  146. 14

    “…it appears that he is apparently simply trying to construe the claim term to mean something counter to what one of ordinary skill would interpret it as by splitting up the words used, looking at the separately and figuring out what the overall phrase would mean that way. And then, he takes one of the words and makes it be nothing more than a functional limitation when he looks at just that word itself.”

    Sounds like he should be an examiner instead of a Federal Circuit judge.

  147. 13

    As it turns out, the reason he’s bringing up functional/intended use limitations is because of a weird markman hearing that imo went horribly and ridiculously awry and then appears to never even have been finished. Bizarre.

    And then, when you read the dissent, it appears that he is apparently simply trying to construe the claim term to mean something counter to what one of ordinary skill would interpret it as by splitting up the words used, looking at the separately and figuring out what the overall phrase would mean that way. And then, he takes one of the words and makes it be nothing more than a functional limitation when he looks at just that word itself. /facepalm. That is not a good way to go about things. Simple as that.

    Although, I have to give him this much, his little figure showing what he thought they meant to claim is at least indicative of his trying real hard.

  148. 12

    Dennis, I can kind of see the “tension” you are referring to. In both cases the court is asking whether what occurs in a non-final proceeding will have collateral effect. But ultimately I think there is no tension or contradiction.

    In prosecution disclaimers, the fact that the proceeding is non-final really shouldn’t matter because the final outcome (as in whether the claim survives or not) is irrelevant. A patentee will be stuck with the disclaimer whatever the ultimate outcome of the reexamination after appeals. The maxim “equity deems done what ought to be done” seems to apply.

    In 315(c) bars, however, the final outcome is relevant. If the claim is ultimately held unpatentable on appeal, then there will be no 315(c) bar because there is nothing to bar. So until we know the final outcome, it seems a little premature to apply the bar.

  149. 9

    I don’t see the functional/intended use limitations.

    I’m not seeing them either. Maybe they are in dependent claims?

    *yawn* Sleepy today.

  150. 8

    “Judge Reyna dissented – arguing that the estoppel issue is moot because the claim is anticipated as a matter of law.

    The plain meaning of the claim language of the ‘325 patent reads on Bettcher’s own prior art products, which include all of the structural features required by the claims, and which possess the capability of satisfying the functional or intended use limitations.”

    Sounds to me like J. Reyna doesn’t know what the heck he’s talking about.

  151. 7

    Idk looking at the claims

    1. A rotary knife blade comprising:
    a rotatable annular body defining first and sec-ond axial ends, said body disposed about a cen-tral axis; and,
    an annular blade section rotatable with the an-nular body and projecting axially from the first axial end of said body;
    said body comprised of a wall defining a radially outer surface disposed between said first and second axial ends, and an annular bearing race in said surface and extending radially into said wall, said bearing race spaced axially from said blade section and comprising a first surface that converges proceeding away from said sec-ond axial end, and a second surface that con-verges proceeding toward said first surface, said first and second surfaces defining first and second bearing faces spaced axially apart, wherein both of said bearing faces are frusto-conical.

    I don’t see the functional/intended use limitations.

    Here’s a link since D didn’t provide.

  152. 6

    Thus, in that case, a non-final reexamination impacted the legal rights of the parties in litigation while in this case the legal rights will not be impacted until all appeals are resolved.

    Yes, but in Marine Polymer Tech the party’s own statement was being held against it, whereas in this case it’s a non-final adverse decision rejecting the party’s statement.

  153. 5

    Let me clarify – the tension comes the fact that in Marine Polymer Tech, the arguments were made in reexamination that was still pending at the time of the court decisions. Thus, in that case, a non-final reexamination impacted the legal rights of the parties in litigation while in this case the legal rights will not be impacted until all appeals are resolved.

  154. 4

    “In reaching his outcome, Judge Reyna is finding that, as a matter of law, the wrong conclusion was reached by the trial jury, the district court judge, the original patent examiner, the reexamination examiner, the BPAI, and the other two judges on the court. ”

    Sometimes it takes balls to tell people they’ve been mistaken.

    ” Is that true?”

    I haven’t gone over the claims myself, but I imagine it is. Probably a good 9/10’s of people involved in patents don’t understand functional and intended use limitations thinking them instead to be a form of magic, so it wouldn’t surprise me to find out that 6 other bodies fed up.

  155. 3

    In reaching his outcome, Judge Reyna is finding that, as a matter of law, the wrong conclusion was reached by the trial jury, the district court judge, the original patent examiner, the reexamination examiner, the BPAI, and the other two judges on the court.

    I’m glad that Judge Reyna isn’t afraid to speak his mind. It appears from his characterization of the claims that they rely on functional limitations, rather that structural distinctions, to create the impression of novelty over the prior art compositions. Is that true? If so, I’m glad to see Judge Reyna telling it like it is.

  156. 2

    “In reaching his outcome, Judge Reyna is finding that, as a matter of law, the wrong conclusion was reached by the trial jury, the district court judge, the original patent examiner, the reexamination examiner, the BPAI, and the other two judges on the court. ”

    Hmmmmm. Reading *between the lines on* his CV (as well as a previous thread here regarding his appointment), I’ll leave it to you what *qualifications* this person had to become a judge at the CAFC.

    “Jimmie V. Reyna was appointed to the United States Court of Appeals for the Federal Circuit by President Barack Obama in 2011” Uh oh. Strike one . . .

    “Judge Reyna is a recipient of the Ohtli Award (the highest honor bestowed by the Mexican government for non-Mexican citizens). Other awards include: Minority Business Leader, Washington Business Journal; Extraordinary Leadership, Hispanic National Bar Association (HNBA); Lifetime Honorary Membership, Society of Hispanic Professional Engineers; Distinguished Citizen Award, Military Airlift Command, U.S. Air Force; Spirit of Excellence Award, Albuquerque Hispano Chamber of Commerce

    Judge Reyna served over a decade of leadership in the HNBA, including as National President (2006-07). He served in various leadership positions in the ABA Sections on International Law and Dispute Settlement and the ABA Presidential Commission on Diversity in the Legal Profession (2007). He was a founder and member of the board of directors of the U.S.-Mexico Law Institute, and the Community Services for Autistic Adults and Children Foundation. He currently serves on the Nationwide Hispanic Advisory Council of Big Brothers Big Sisters of America.”

  157. 1

    Comments by Crouch: This case is in tension with the recent Federal Circuit decision of Marine Polymer Tech. v. Hemcon, Inc. In that case, the court held that clearly non-final arguments made during reexamination intervening rights that relieve an accused infringer from liability.

    I’m having trouble seeing the tension. In Marine Polymer, the patentee made arguments (with amendments to the claim set) relating to the scope of independent claims. Those arguments were accepted by the Examiner (wrongly, IMHO). The re-examined patent issued, did it not? The scope of the infringed claim(s) was deemed substantially changed, so absolute intervening rights apply (the CAFC expressly left the issue of equitable intervening rights undecided). Am I missing some key fact(s) giving rise to the “tension” with the present case?

    The Federal Circuit has ruled that the a claim is not “finally determined to be valid” under Section 315 until all appeals are exhausted.

    [T]his court agrees with Bunzl that the estoppel provision of § 315 is triggered not when examination is completed but only after all appeal rights have been exhausted.

    This seems very reasonable and fair. It’s difficult to imagine how any other result could have been reached.

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