By Dennis Crouch
X2Y Attenuators v. US International Trade Commission as well as Intel, Apple, & HP (Fed. Cir. 2014)
In this case, the Federal Circuit affirms a narrow construction of X2Y’s claim terms based upon a disavowal of scope. In the face of USPTO pleas for patentees to more particularly define claim terms, this case offers reasons for applicants to push-back against that approach.
The decision here fully and problematically supports the current patent drafting norms where the true nature and advances offered by inventions are hidden in order to avoid unduly limiting claim scope. Under standard patent drafting technique, no elements are described as necessary, critical, preferred, or even discouraged. And, “the invention” is never particularly defined or called-out. That strategy has the result of substantially decreasing the disclosure value of a patent.
= = = =
The founder of X2Y Tech was Mr. Anthony A. Anthony who passed away in 2012 while continuing to fight for royalty agreements from major manufacturers. During his life, Anthony obtained more than 100 patents covering a variety of electronic components and circuitry configurations.
X2Y’s claims require a set of electrodes but do not expressly indicate their relative configuration. The specification discusses a particular “sandwich” configuration of electrodes and the USITC found that the claims should be construed as also requiring the sandwich formation. On appeal, the Federal Circuit affirms – finding that the language of the specification requires that the claims be so limited.
Under Phillips v. AWH, the specification and prosecution history of a patent can provide insight into proper the claim interpretation. In addition to the scope-shading offered by Phillips, scope disclaimers or term definitions coming from the applicant can dramatically shift claim scope. However, the law requires that any disclaimer must be found in a clear and unambiguous statement made by the applicant.
In this case, the specification refers to the sandwich configuration as “universal to all the embodiments” and as “an essential element among all embodiments or connotations of the inventions.” The court finds these statements to represent a “clear and unmistakable disavowal of claim scope.” The standard for finding disavowal, while exacting, was met in this case.
To be clear, an important element of the decision here is that the disavowal is not tied to any particular claim language, but applies to all claims of the patent without regard to their express claim terms. In fact, the court goes even further and found that statements made in some family-member applications also apply to establish the disclaimer here.
The court notes that one mechanism for overcoming the disclaimer in a child application would be to expressly amend the claim scope so as to reject the disclaimer – of course that result may well have written description problems.
A unanimous majority opinion was filed by Judge Moore and joined by judges Reyna and Wallach. Judge Reyna also filed a separate concurring opinion discussing whether claim construction must come before determining whether a priority claim is proper.
[…] case should be seen as a follow-on to Judge Moore’s recent decision in X2Y Attenuators v. US International Trade Commission (Fed. Cir. 2014). In both cases, Judge Moore applies the doctrine of prosecution disclaimer to […]
Consider the interface between provisional applications and the requirements of §112(a). If such a provisional application to uses the standard gibberish of most US specifications, one cannot tell from such a specification what the invention is. Now consider further that such a specification was filed without claims. Can such a specification satisfy the written description requirement as defined in Ariad?
Far too many will file a provisional that is, as they say, lawn clippings gathered and thrown into a bag.
That being said, the contents of the bag are what they are. Keep in mind the time (and cost factors) and think of the provisional in a gold-mining analogy. The provisional is a claim to land that has a stream on it, that stream having provided a nugget. The prospector files his claim to the wide area, in order to have a legal claim to gold later found in the stream.
Does his possess the gold in the stream if he possesses the stream?
Or, more to your point, I think, can he quantify how much gold will be found in the stream?
Maybe he finds silver instead. Since provisionals – by law – are not subject to examination, is your attempt to apply case law stemming from examinations truly applicable?
Given i) the disappointing response to my #28 ii) that drafting inventor-optimally for the US courts is irreconcilable with drafting optimally for the courts everywhere else in the world, and iii) that what one drafts today will be considered by the courts 20 years from today, tell me, which of the following options is best for a conscientious and competent drafter, acting assiduously to protect the interests of her Inventor Client:
a. draft for the US Courts (ROW will come round to the US view, sooner or later)
b. draft the way the ROW does it (the courts of the USA will adapt to it, sooner or later)
c. draft two patent applications, namely, one for the USA and one for the ROW. Take care to file them on the same day, to avoid falling foul of Paris Convention priority rules. But can the Applicant’s “profanity” within her ROW priority document somehow anyway be “incorporated” into any US court proceedings, to “taint” or “pollute” the US patent that derives from the US-exclusive priority filing?
d. follow the advice (whatever that is) given by numerous pundits in innumerable conferences that address the thorny issue how to draft the universal (that is, both USA and ROW) patent application. Attending such conferences has the advantage that one can acquire Continuing Professional Education points.
Can anybody name another jurisdiction on Earth, that needs a separate patent application, set apart from the one that serves optimally everywhere else on Earth, in order to secure full patent protection within its boundaries? To serve my clients, I need to know
Max, two applications.
Note from Dennis’ post: “Under standard patent drafting technique, no elements are described as necessary, critical, preferred, or even discouraged. And, “the invention” is never particularly defined or called-out. ”
In the US, the claims as-filed define the invention. I am not sure that the ROW will not follow suit. But, until then, two applications just may be best practice.
Max, how do US specs fair in Europe? Do we have to file two as well?
Ned put it this way: if domestic-focussed Americans ever do work out how to draft properly, the Rest of the World will soon be toast. Most American filers have it all stitched up at home but have not yet punched their weight overseas. When US filers come to the idea that the ROW market is worth more than the US market, and draft accordingly, they will get better results in courts other than those of the USA.
Ned of course the claims define the Invention, everywhere on Earth. Of course the claims are to be construed in the context of the specification, all over the world. That’s not the point. The point is, what’s the “Invention” (as of the filing date) for which Applicant is petitioning for 20 years of exclusive rights (with validity tested as of the filing date and not later than that). Is it (judged as it is on the as-filed document) worthy of those exclusive rights? What has been “contributed” to the technical field, the state of the art? Outside the USA, an invention is the solution to a technical problem. What’s the problem and what’s the solution, the contribution offered by the Inventor in the WD? That’s the question, and it’s judged on the drafting. If Applicant chooses not to front up, with what her contribution was, that’s OK, probably wise for the US jurisdiction, but elsewhere in the First to File world, she will then have to take the adverse consequences.
There is a nice Paper by an American professor of patent law entitled something like “Getting away from the Cult of the Claim” and advocating a reversion from peripheral to central claiming. Talk about re-inventing the wheel. What a graphic demonstration of the parochialism of academics. Did nobody tell the good professor that Europe resolved and finessed out of the tension between the opposite extremes of peripheral (England) and central (Germany) claiming back in 1973, when it drafted the EPC?
Ned as far as I know, it is standard supra-national corporate practice (even for inventions made in Europe) to draft one doc for the USPTO and a different one for filing under the PCT. I don’t know any other country in the world where this double filing is thought advisable or necessary.
MaxDrei, your arrogance is only matched by your ignorance.
Are you “disappointed” that your hoped for One World Order has not as yet overcome national sovereignty, MaxDrei?
Do you view this as a mere ‘ugly-Americanism?”
Is “optimally serve” to be accepted on its face? Without recognition of individual sovereignty or the diversity of politics and agreements that more truly reflects our current reality?
It is with wry amusement that I would draw a parallel with the EPO as a mini-State-Federal system to the US Federal system of patents. Before our constitution sanctioned the patent system as a Federal system, we too had a state by state system. Even before we had a centralized court body (the CAFC), regional effects still persisted even within the single Federal system. The take-away is that the “ease” you desire is a mirage, a fantasy. As Einstein has said: “Everything should be made as simple as possible, but not simpler“
Same old piffle. Same old blah, blah blah. But putting all that tosh to one side, anon, and getting back to reality just for a moment, what do you advise your clients, when they want patent protection both in the USA and somewhere else in the ROW as well? Is it to draft two separate WD’s, or trust to just one? It seems that you have never had that dilemma.
MaxDrei seeks to ignore reality by labeling it piffle.
Ever the f001.
A propos “essential” and the like, here’s something useful on “patent profanity”:
link to finnegan.com
I still think one can draft with a WD of the Invention that is effective to secure protection in the ROW without being profane in the USA.
Or, to put it another way, it is bad also in the ROW to be profane when drafting.
Thanks for the link MaxDrei,
One important consideration (often lost on those who think we already have One World Order), is that profanity is particularly primed to each sovereign’s laws and the case law interpretations of those laws.
One really must be aware of the distinction between “would be nice” and “is the law.”
One really must be aware of the distinction between “would be nice” and “is the law.”
As if Billy has a clue.
nice vacuous drive-by of yours, Malcolm.
Come again when you have some time to chat.
OT – Dennis, I’m looking forward to extensive coverage of the recent opinion in the case of Muffin Anderson v. Kimberly Clark. Ms. Anderson, appearing pro se, is understandably upset about the district court’s dismissal of her patent infringement claim and demand for … wait for it … 50 billion dollars.
Well, that is certainly a representative case.
It’s representative of what a case filed by Dr. Evil might look like, at least.
here’s the case: link to cafc.uscourts.gov
Part of the problem is that you take an English description of an invention and translate it to the arcane language of claims.
Then the Courts have to translate the claim language back to some kind of plain language so it can be understood by the Court (the Judge) and then maybe by a jury of the common people.
It’s like translating everything into Nesite (a long-dead language spoken by the long-dead Hittites) and then translating it back.
It’s nuts.
The trend of the past several decades is to write Laws in plain language (as much as possible) so that the meaning of the Law can be understood.
We should do that with claims.
Why can’t an invention be particularly pointed out and distinctly claimed in plain English?
easy answer: patent profanity created by the courts.
“We should do that with claims.”
Amen. Preach.
6, what’s your take on the Alice guidelines at the PTO?
Although, don’t think I respect you just because I asked you a question.
🙂
lulz
The overall guidance, as in all of them taken as a whole, are now more or less exactly what I said they should have been pre-alice. The change after alice, where all of the exceptions are to be treated the same was just what I said it was supposed to be before alice. So I’m totally on board with that.
The only thing which I recall that remains in need of attendance is their “guidance” so to speak as to how to figure out if there is an abstract idea/phenom/law at play. But, that said, it is probably about as good as a bunch of engineers can come up with and we’ll probably be stuck with it for a decade or so.
All said. Not bad. A tiny ways to go maybe.
Anything in specific on your mind?
Are the examiners rejecting under 101 using the new guidelines?
How big of an affect do you think it is going to have?
“Are the examiners rejecting under 101 using the new guidelines?”
I’m sure at least some are. Everyone that I know of and have asked at least knows of them and were informed of the change (mass email went out announcing it). They just sent out a new FP yesterday for people to use.
“How big of an affect do you think it is going to have?”
Compared with the status quo right before the alice case I’d say not that huge. Most of the things that are now 101’d under the new guidelines would have been 101’d under the old guidelines as well. But there will surely be some effect. Hard to predict the exact magnitude. And it will vary by art. The change in my AU will be practically nothing. The change in certain others will likely be rather large.
Of course if you’re asking for a comparison to pre-bilski then the change is rather large.
Also as my mom used to correct me: the word is “effect”.
From reading PatentDocs, I would gather (surprisingly) that the post-Alice changes are affecting the Bio and Biochem arts in the most severe manner.
“Also as my mom used to correct me: the word is ‘effect’.”
Oh the irony of being corrected by somebody who uses “later” when he means “latter” and “difference” when he means “deference.”
Lulz upon lulz upon lulz.
Post-Alice changes to what?
I have to ask,…
Is there more than one Ned Heller?
“Post-Alice changes to what?”
The guidelines for abstract ideas under 101.
Thanks 6. Interesting. Ask your mom to give me a call. I need a good whooping for that mistake.
6, thanks.
Just how finding “fundamental economic principles” ineligible could affect Big Pharma is not apparent.
I’m not sure – but I think it is more than just the econ stuff and is the whole “Gist/”Abstract”” double edged sword that the folks at PatentDocs are freaking out about.
Well, anon, I agree that the SC is floundering after Bilski and they are adrift.
But they drift in the direction of Hotel Security and its progeny which makes this whole discussion simple: non statutory subject matter in a claim is to be ignored for 102/103 unless integrated.
What strikes me about the comments particularly by Dennis is a complete lack of connection with reality.
This is reality: In-house counsel have a huge incentive to have patent applications be as concise and understandable as possible. That is FACT.
I have worked for most large tech companies. If you name 4, I have probably worked for 3 of the 4. EVERY in-house attorney I have worked for has demanded that the applications be as easy to read as possible and as concise as possible for portfolio management.
THAT IS REALITY!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
The fiction that is being pawned off on the masses is made up to burn the system down.
The obscurity that comes in some application is because of 1) there are a few bad actors and the PTO is terrible at policing them, 2) the law has become unreasonable. This functional business by LEMLEY (THE DIRT BAG) for example, is counter to all patent law and counter to anyone that actual writes applications. We can see that Lemley is out to burn the system by the fact that he never addresses practical considerations which should guide the discussion.
And, for those that aren’t sure what is going on: look to the practical everyday what needs to get done and whether the anti-patent judicial activist (nearly criminal intent) crowd say about the practical. They simply do not address the practical issues. They ignore them because the practical issues expose them as the $ying dogs they are.
REALITY: EVERY IN-HOUSE COUNSEL FOR MAJOR TECH COMPANIES WANTS PATENT APPLICATIONS TO BE AS CONCISE AS POSSIBLE AND AS READABLE AS POSSIBLE FOR PORTFOLIO MANAGMENT. Reality. Try to put into your psychotic disconnected cognition. (But, Lemley knows exactly what it is doing. Just read some of his comments. The functional canard will “solve” the software problem.)
And, for those that doubt me: Ask yourself, will the anti-patent crowd address this issue.
Is it true that in-house counsel want (and demand) patent applications to be as concise and readable as possible?
If that is a true statement, then their entire premise is wrong and the real problems we are having is that case law and judicial activist are preventing real patent attorneys from doing their job the way the client wants.
THAT IS REALITY!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!! REALITY !!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
Moreover, the reality is that patents are used by large corporations to manage innovation. They set goals of a number of patent applications and pressure the engineers to come up with that number of new innovations. The in-house counsel want the applications to be understandable so they represent the innovation that occurred.
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!! REALITY !!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
This has been a reality break from your normal psychotic discussions. We now return to your normal psychotic discussions that have nothing to do with reality.
MM, says ….
So, NWPA, how are things going?
Life is generally good. Lots of positive developments recently.
Of course, dealing with the constant battle of the paid anti-patent crowd, ignorant judges that were appointed based on promises to burn the system down, CJ of the PTO burning down the system to get stock options, and a shadow director hired by industry and bidding her time for the stock pay off is a pain.
Good.
Great! Do you have any vacation coming up?
I do. Thanks for asking. How about you? Maybe you could spend some time in an ethics boot camp. Might help you to understand the outrage some of us feel towards the anti-patent crowd.
LOL – no, I don’t think more outrage is what either of us needs. I was thinking the beach, or something like that – lots of quiet meditation.
anon, no kidding.
I will add, though, that the one “patent troll” I worked for delighted in filing bloated incomprehensible applications.
Corporations on the other hand that had real products are laser focused on concise understandable applications.
Perhaps a study on that would be interesting. Size of patent application might correlate to the trolls.
And, anon and DanH, we don’t need less outrage we need less outrageous behavior. It does sound like you need that ethics boot camp DanH.
We need more outrage in response to outrageous behavior–not less.
How are the materials on the ladders of abstraction that you were going to find coming along? (you see a not-so-subtle difference there? – I typically INVITE input – especially input on germane points under discussion, albeit the points I invite do tend to be rather inconvenient for those with ulterior motives, but I do invite them to fully discuss the merits)
LOL – I’m sure that someone knows what you’re talking about.
I’ll keep an eye out for this “Malcolm” fellow that you’re so concerned about. He sounds scary.
Your feigned ignorance is appalling.
You really don’t f001 anyone – and only confirm the sham of your “concern” here.
“I will add, though, that the one “patent troll” I worked for delighted in filing bloated incomprehensible applications.”
Well I’m glad to hear you owning up to “reality” at least a tiny bit.
lulz
“Is it true that in-house counsel want (and demand) patent applications to be as concise and readable as possible?”
I frankly don’t know, but if they are then whomever they’re demanding this from are abject failures in a huge portion of cases.
“The fiction that is being pawned off on the masses is made up to burn the system down.”
The “fiction”! What a riot! You can point to 10 random patents and point out at least 5 of them that (probably all 10) that do exactly what was related in that “fiction”.
“1) there are a few bad actors and the PTO is terrible at policing them, ”
How exactly do you “police” them without a good solid statute (or maybe even “rule”) to do so with re re?
6, that is factual wrong regarding random patents.
How do you police them? Use 112. But, I will say that the PTO rules on 20 claims has cleaned up patent applications a lot. They may consider such a restriction on the number of pages. And, consider Lemley’s functional claiming nonsense and the fact that it encourages giant applications.
So, one answer would be to start charging extra for over 30 pages and make it clear that functional claiming is fine and that it covers scope of enablement. Then you would start to see some snazzy patent applications. Readable. Filled only with what is new.
But, of course, the anti-patent crowd would rather claim that functional claiming isn’t ok and that scope of enablement is nonsense and burn the system down rather than addressing the real practical issues.
You see 6, your little dirt bag friends make life hard on everyone. You just haven’t figured it out yet. If reality was dealt with properly, almost all the problems we have now could be fixed rather quickly. But, instead we have to deal with psychotic delusions of reality and intellectually dishonest characterizations of the world.
“You see 6, your little dirt bag friends make life hard on everyone. You just haven’t figured it out yet. If reality was dealt with properly, almost all the problems we have now could be fixed rather quickly. But, instead we have to deal with psychotic delusions of reality and intellectually dishonest characterizations of the world.”
Well I must say that I don’t see how they’re “making life hard one everyone”. Maybe on some few applicants or drafters. But not “everyone”.
“Use 112.”
How exactly does that rejection go? Because I surely do not have a FP for that and have never seen 112 used in such a fashion.
“But, I will say that the PTO rules on 20 claims has cleaned up patent applications a lot. They may consider such a restriction on the number of pages. And, consider Lemley’s functional claiming nonsense and the fact that it encourages giant applications.”
Why don’t we just do the restriction on the number of pages + Lemley’s suggestion at the same time? (not that I’m for lemley’s suggestion)
“without a good solid statute (or maybe even “rule”)”
LOL – sounds pretty OCPD to me… 😉
I can see you still don’t get what OCPD is.
Does the little kindergartener remember the word “preoccupation”?
Do you? As the preoccupation is surely on you.
“Do you? ”
Yep.
As the preoccupation is surely on you.”
Yes, the preoccupation is surely “on” me. Yep. “on” me.
/facepalm
Don’t you remember? It was just like yesterday when you said that you did not want to have a conversation on law (this being a legal blog and all, a bit strange), but that you ONLY wanted to play our little “med-control game with your obsession on me.
You face palm at the oddest times.
“Don’t you remember? ”
I don’t even know what you’re asking me if I remember.
“It was just like yesterday”
I don’t know what “it” is in your sentence.
“did not want to have a conversation on law”
If I said I did not want to have a conversation on law then I likely meant I didn’t want to discuss it with you brosefus. Other people are probably fine.
” but that you ONLY wanted to play our little “med-control game with your obsession on me.”
Last I remember discussing the “med-control game”, aka your mental conditions, I thought I asked you if it would be cool by you if I just don’t talk to you. You know, on account of you having OCPD (set aside the psychopathy) and my not really being able to help you with that, and since it causes problems. And I have yet to see the reply if any is present.
LOL – the obsession and pre-occupation you have with me is the very same “med-control” thing that I mock you with.
The “med-control” is not my mental condition – but yours.
You are doing that projecting thing again.
“the obsession and pre-occupation you have with me is the very same “med-control” thing that I mock you with.”
Yes, thinking about an ashat that is constantly causing inter-personal problems all over the board every other time he posts is totally having an “obsession” with him. Right. Newsflash re re, unlike your constantly thinking about laws, rules, ethics, order, truth and right/wrong the only time I’m thinking about you is after you’ve posted something, or more likely posted something that causes a problem. Though I do find your conditions very interesting even irl outside of blogging, your conditions are not you.
In any event, since I’m so blatantly “obsessed” with you then that must also be why your “mocking” me has everyone thinking you’re totally sane. Including the nice man Martin that promised not to feed your condition anymore by refraining from responding to you. I’ll simply say that perhaps if the whole blog took that generous stance then some progress might be made in others dealing with your conditions, at least on the board.
Sounds like a version of the Crybaby Veto.
I’ve got a better idea: Learn the law. Live the law. Love the Law.
LOL, fun quote of the day:
“…you have my sympathies when you truly don’t know jack squat about the art, but this is an application for an official entitlement from your federal government, not popping down to the supermarket for a loaf of bread. I’m still, and always will be of the opinion that it is time to get your sht together. “
The question in many cases is always: how would a patent attorney skilled in the art of identifying a target ripe for the picking and then filing claims to extort money from that target understand the scope of the claims?
The Supreme Court made that very clear.
LOL – Malcolm, get into a profession in which you can believe in the work product you (supposedly) produce.