Patent Invalid for Failure to Claim “What the Applicant Regards as His Invention”

by DennisCrouch

Juxtacomm-Texas Software v. Tibco Software, et al. (Fed. Cir. 2013)

In this case the Federal Circuit only offered one paragraph of substantive analysis:

The decisions of the district court … , construing the relevant claim language of U.S. Patent No. 6,195,662 and granting the motion for summary judgment of invalidity based on 35 U.S.C. § 112 ¶ 2, are affirmed on the basis of the district court's opinions. The language of the claims controls their construction, and the invention set forth in the claims "is not what the patentee regarded as his invention." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002).

Under Allen Eng'g, section 112 ¶ 2 requires that the patent "set forth what the applicant regards as his invention and … do so with sufficient particularity and distinctness." (Section 112 has now been rewritten and § 112 ¶ 2 is renumbered as § 112(b)). In most cases, 112 ¶ 2 challenges focus on the requirement of "sufficient particularity and distinctness" in the form of a definiteness challenge. However, this case focuses on the first portion of the provision and finds that the patentee failed to claim "what the applicant regards as his invention." And, that failure results in the relevant claims being held invalid. The district court wrote:

Section 112 ¶ 2 contains two requirements: "first, [the claim] must set forth what the applicant regards as his invention and second, it must do so with sufficient particularity and distinctness, i.e., the claim must be sufficiently definite." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed.Cir.2002) (internal quotes removed) (quoting Solomon v. Kimberly–Clark Corp., 216 F.3d 1372, 1377 (Fed.Cir.2000)). A claim is invalid under the first prong of 35 U.S.C. § 112 ¶ 2, when one of skill in the relevant art, reading the specification would not understand the invention set forth in a claim is what the patentee regarded as his invention.

Juxtacomm's basic problem in this case is that the plain interpretation of its asserted claims result in a system that the patent document itself does not describe.  The patent here is directed to a data transformation system and all asserted claims include some form of a "script processor for utilizing metadata from [a] metadata database to control data transformation within [a] systems interface and [to control] movement of said data into and out of a distribution system." The claim includes a limitation that a "script processor" that is designed "to control data transformation within said system interface." However, Juxtacomm's specification does not describe data transformation within the system interface. Based upon that difference, the court found an "irreconcilable contradiction" between the specification and the claims that renders the claims invalid under § 112 ¶ 2.

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A major question left unaddressed by the court here is the overlap between, on the one hand, this § 112(b) issue of "irreconcilable contradiction" when comparing the specification with the patent claim and, on the other hand, the requirement of § 112(a) that the specification set forth a written description of the claimed invention. For its part, the district court here suggested in a footnote that the two doctrines have substantial overlap – writing that "the Court would [also] find it exceedingly difficult to preserve the validity of the ′662 in light of the requirements set forth in 35 U.S.C. § 112 ¶ 1 … [since] the specification simply does not disclose [the claimed] invention."

It appears to me that the overlap is likely complete. However, there is one important procedural distinction – that the inquiry under § 112(a) is generally seen as a question of fact while the inquiry under § 112(b) is a question of law. See Enzo Life Sciences, Inc. v. Digene Corp., 305 F.Supp.2d 406 (Fed. Cir. 2004). All things being equal, questions of law tend to be easier to resolve earlier in the case – such as on summary judgment. However, questions of law are also ordinarily more vigorously reviewed on appeal.

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Read the CAFC Opinion and the District Court Opinion.

47 thoughts on “Patent Invalid for Failure to Claim “What the Applicant Regards as His Invention”

  1. 14

    I find it amazing that the patent went through an initial case of Juxtacomm I versus legal teams from IBM and Microsoft who settled before trial, it went through two patent exparte re-examinations in 2009 and 2010 where the claims were confirmed and it was only in the Juxtacomm II trial in 2012 that this inconsistency was found.I think the claims read okay but it was a definition of “System Interface” from the Markman hearing of Juxtacomm I that made them inconsistent.

    1. 14.1

      the patent went through an initial case of Juxtacomm I versus legal teams from IBM and Microsoft who settled before trialI don’t find any of this “amazing”. “Disappointing” is more like it, but I don’t think these facts are that unusual.First, Microsoft and IBM settle “winnable” cases all the time, in spite of the relentless assertions made by patent troll supporters that these companies (and other large companies) are unaccountable thieves who respond to phone calls only when 500 different patents from 400 different patent families are asserted against them simultaneously.Second, ex parte re-examinations are only as tough as the attorney who is requesting the ex parte reexamination. They might have been able to fix this during re-exam by pointing out the claim construction issue to the Examiner and working out a solution. Third, it’s easy to write a claim that “reads okay.” It’s far more difficult to write one that both “reads okay” and is also capable of being construed in a way that simultaneously manages to avoid the prior art and capture infringers.What’s interesting to me is that Juxtacomm-Texas Software insisted on pushing these claims after they managed to get some money (presumably) from their earlier settlement. Perhaps they thought that the fact of the earlier settlement would help them win (a serious problem with our present system)? The claims are functionally claimed nonsense that never should have issued in the first place. Congrats go to the defendants here for stepping up.

  2. 13

    Actually, I confess that I believe Les is correct. See MPEP 2163. In fact, it would be theoretically possible to file only the claims. It would also be very daring. Claims in a vacuum are difficult to construe accurately. But difficult does not mean impossible.

    1. 13.1

      Tino, an original claim may show possession, but the specification must not only show possession, but describe how to make and use. Suppose I claim a compound, X, for use Y. How is this supported with no examples?

      1. 13.1.1

        It’s pretty fact dependent. It’s what the ordinary skilled guy could figure out. I could imagine a claim like “a composition of salt, rosemary, and garlic in a 1:2:3 ratio to be rubbed onto a chicken and baked at 350 for four hours.” You could probably paste in today’s weather report as a specification and still get away with saying you’ve enabled making and using your composition.

      2. 13.1.2

        Its supported by the example outlined in the claim.I claim the compound Ajax Cleanser (i.e., the list of ingredients/ratios therefor) for use as a blue dot bath tub cleaner.What more do you need that wouldn’t have been understood by one of ordinary skill in the art?

  3. 12

    This is a obvious error in the claims that should be fixable in some fashion, but are they? A simple amendment, changing “systems interface” to –system–, would do the trick. 1. Under the rules pertaining to reissues, the change would, I think, be considered broadening. 2. Under 255, the obvious mistake might be fixable, but is it “minor” and is it clerical? I think not.So the patentee is left with no recourse at all unless he maintained a continuation. I think this wrong. I think he should be able to fix the error through a reissue. The affected public will receive intervening rights, but the patent will be enforceable on a going forward basis.European practitioners, I know you have a procedure to correct errors like this in European patents. Can you comment and do you have the concept of intervening rights in Europe?

    1. 12.1

      Ned: So the patentee is left with no recourse at all unless he maintained a continuation. I think this wrong. I think he should be able to fix the error through a reissue. The affected public will receive intervening rights, but the patent will be enforceable on a going forward basis.What’s “wrong” about the public being able to rely on the fact that the time period for a broadening reissue has expired?If it’s such an obvious error, why wasn’t it noticed much earlier?

      1. 12.1.1

        Malcolm, the public who “rely” have intervening rights.So, there is the rub. The public is protected and yet the patented owner cannot correct a mistake. As to clear error, I don’t think these kinds of errors are clear. If they were, the patent attorney or the examiner would have caught it in the first place.

    2. 12.2

      Procedure to correct errors? News to me Ned. Can you give me a clue to your thinking?Intervening rights? Yes, the concept is known but is limited to situations when the application was declared dead but was then (a very rare event) resurrected under Art 122 EPC (restitutio in integrum). Those who started in the interregum can continue.


          Opposition by a strawman, perhaps Ned? Or resort to the EPC’s central limitation procedure? Neither quite fits though.


              I don’t see why not Ned. It is not what the Limitation Procedure was designed for though. Any post-filing amendment under the EPC is scary, because it opens the door to Art 123 EPC attacks on validity. Europe reasons: If the correction to the error is obvious, no need to make the correction. The “mind willing to understand” will do the right Thing, with the uncorrected text. Chef America would surely have been decided otherwise, in Europe.And what If the correction is not obvious? The Art 123(2)/(3) fatal trap awaits the unwary.I see it as CATCH 22 Ned. Stuffed if you don’t amend, and stuffed if you do. Choose your poison.

  4. 11

    Actually, I see this problem all the time. When I first began practicing, a major company sent my client, a major company, a notice of infringement. The claim was to a process where the order of steps was the invention. The claimed order was the opposite from that of the spec. I responded to the notice that we did not infringe because we did exactly what was described in the spec.Never heard from them again.

  5. 10

    It is encouraging to see the court analyze the validity of the claims in light of the actual language of the statute. Something the law clerks at the Supreme Court should consider.

  6. 9

    That seems illogical. If the WD and Claims don’t match up, how do you tell which reflects the inventor’s intent? It could be that the inventor claimed exactly what he believed to be his invention, but somehow just blew the written description. Why the deference to the written description? This should have been decided on 112(a) alone.

    1. 9.2

      Tino, the question is whether one can claim anything regardless of the spec or whether the specification defines the limits of what can be claimed? I think the answer and the law are obvious.Check the remarkable, almost shocking, statement by Les above that claims are part of the spec and are “self supporting.” If this were even remotely true, one could simply file claims and dispense with any other description.

      1. 9.2.1

        I’m sorry to have shocked you Ned. However, I think you are shocked by something I did not say. I did not say the claims support things the claims do not say. I said that original claims are self supporting. That is, they contribute to the specification those things that they do say and those things that are implied to one of ordinary skill in the art by what they say.

  7. 7

    I’ve only ever had to issue but a few of these kinds of rejections but it’s really funny when I do. In the inevitable interview that follows the attorney is always all like “I’ve never been in this position before”.

    1. 7.1

      The best I’ve been able to come up with for these situations is that the claims and the spec conflict, so the BRI in light of the spec is indefinite. Not exactly correct, I suppose, but the MPEP guidance on the “what applicant regards” prong of 112 2nd requires extrinsic evidence. Fortunately, most attorneys will recognize the problem in the claims and are happy to fix it while they have the chance.

  8. 6

    This is not precedential. A stricter application of 112:1 could lead to an EPO style “essential elements” rule and an “intermediate generalization” rule. This could have been decided on written description grounds.

      1. 4.1.1

        I believe gaga means there is a defense to assertions of written description issues; that being that one of ordinary skill would have understood what goes in the gap. Or that the gap filler is implied.


          Are you Gaga’s official interpreter? I’m blowed if I can understand what that person says.

  9. 2

    1. Original claims are part of the specification and are therefore self supporting.2. The inventor is the only one that can judge whether he or she claimed what he or she considered to be the invention. The arrogance of the court here is stunning.Maybe there is a written description problem. But please don’t tell me what I considered to be the invention.

    1. 2.1

      Sometimes cant use cc canons to tether claims to spec and wd is not a good tool bec. easy art so gap filling ok.This was the only good invalidating tool

      1. 2.1.1

        Is that Lady Gaga? I know you were born that way, but I can’t understand what you’re saying.

    2. 2.2

      les, your first point is a remarkable statement. If it was true, one would not need a spec at all. One would just file claims.

      1. 2.2.1

        He’s half right. The examiner could have (and no doubt should have) made them add to the spec based upon the claims. This decision implies that if you don’t fix it yourself (and the examiner doesn’t tell you to) then you may end up with a worthless patent.

      2. 2.2.2

        Remarkable only in that it is was established U.S. Patent Law:In addition, early opinions suggest the Patent and Trademark Office was unwilling to find written descriptive support when the only description was found in the claims; however, this viewpoint was rejected. See In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980) (original claims constitute their own description); accord In re Gardner, 475 F.2d 1389, 177 USPQ 396 (CCPA 1973); accord In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). It is now well accepted that a satisfactory description may be in the claims or any other portion of the originally filed specification. link to…MPEP 2163 (I) (second paragraph)


          Les, but that is not what you said. You said, “self supporting.” If the only issue is “possession,” then indeed the original claims may show that. But an invention must not only be described in terms of what it is, it must also include supporting disclosure in how to made and use it.Example.I claim compound X. X is described in the claim.However, does one know how to make and use it? Where is that description in the claim?


            That is what I said:”In addition, early opinions suggest the Patent and Trademark Office was unwilling to find written descriptive SUPPORT when the only description was found in the claims; however, this viewpoint was rejected.”

    3. 2.3

      If the Examiner had rejected the claims for lack of written description, it would have been permissible to add their subject matter to the spec, for the reasons you suggest. I have certainly done that, in cases where the spec was written in another country. This didn’t happen here, but if it had, I wonder if this question would have been before the court atall? I think you have a point. Who knows what the inventor considered to be the invention?

      1. 2.3.1

        I’m not so sure about that: adding new matter to the spec that is. The spec requires a description of what the invention is and how to make and use it. Adding, here, description of a script processor transformer to the spec should require some detail on just what that is and how it works.


          If it were me I would have added a script processor and said that it processes scripts, which is impossible to contradict. The claims support at least that. This would probably be accepted by the PTO at least, if not the courts.


            Alun, I think it is hard to add description to the specification without adding new matter, even when simply showing something originally claimed. In most cases as well, if something is claimed that is not described, there is an error somewhere. Fixing the error by adding matter to the specification is verbotten. Fixing the error by correcting the claim is the better choice.

  10. 1

    From a brief review of the file history, it looks like the drafter meant to say that the script processor was “within the distribution system”, not “within the system interface”. See the Summary. Oops.

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