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.
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?
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.
very interesting article, much informative thanks for post
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.
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
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
MM, Thanks for the edit. I was going to do it myself, but I was interrupted by business.
You are right, of course, in your update.
Ned
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.
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.
“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.
“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.
“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.
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.
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?
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.
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.”
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.
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.
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.
“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.
end bold tags
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.)
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.
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.
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.”
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.
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.
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.
Anon, agreed. Any claim construction that could read on the chamfers which were not bearing surfaces would be unreasonable, and very much so.
Now, I invite you to read the Second Circuit opinion.
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.
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.
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.
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.
“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.
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.
“This isn’t entirely unlike the Beauregard claim issue”
Ahh, now I see where your fishing expedition is leading to.
“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.
“ 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.
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).
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.
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.
“Seriously, IBP: see a doctor.”
You and I are in agreement on that.
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.
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.
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.
to keep these threads, being too long already
BOO HOOHOOOHOOHOOHOO!!!!!! The threads are too long!
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”.
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.
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.”
Oops, the full case name is Dewey & Almy CHEMICAL Co. v. Mimex Co.
“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.
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.
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.
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.
Apologies also to Ned and anon, didn’t mean to leave you guys out!
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.
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.
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).
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.
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.
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?
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.
“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.
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.
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”.
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?
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”?
“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).
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.
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.
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).
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?
“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?
It’s interesting to see the thread line go off-rail into the vocal minorities’ favorite subjects…
Oh, wait, no it is not.
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.
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.
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?
“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.
John Says.
“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.”
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.
“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?