By Dennis Crouch
Over the past year, the Federal Circuit has decided dozens of important patent cases. Of those, one of the most important appears to be 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315 (Fed. Cir. 2013). When I wrote about the decision in August 2013, I titled my post “Judge Plager: Construe Ambiguous Terms Against the Drafter.” In the decision, Judge Plager’s concurring opinion was the most pointed and poignant. However, each of the judges wrote their own opinions, with Judge Reyna writing for the majority and Judge O’Malley both concurring-in-part and dissenting-in-part.
Judge Plager’s concurring opinion focuses on the intentional ambiguity inserted into the claims by 3M. Judge Plager argues that courts should begin to apply the contract doctrine of contra proferentem and construe ambiguous terms against the drafter (i.e., against the patent holder). Judge Plager writes:
Sometimes such ambiguity [in claim drafting] is the result of sloppy drafting, and sometimes it appears that claims are drafted with a degree of indefiniteness so as to leave room to later argue for a broad interpretation designed to capture later-developed competition. . . .
Cases like this—claim construction issues such as this one—may well deserve application of a principle analogous to the contract doctrine of contra proferentem. See Williston on Contracts § 32:12 (4th ed.). When a term is ambiguous, a crystal ball matter, the ambiguity should be construed against the draftsman. (Or better yet, the claim should simply be invalidated as indefinite, though our court has not seen fit to go there as yet.)
Following this case, the Supreme Court decided Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 212 (2014) in a way that very much agrees with Judge Plager’s suggestions – but goes further by substantially lowering the standard for invalidating ambiguous claim terms by applying the doctrine of indefiniteness. The Supreme Court also highlighted the intentional-ambiguity problem – noting that “absent a meaningful definiteness check, we are told, patent applicants face powerful incentives to inject ambiguity into their claims.” In Nautilus, the Supreme Court was not asked to decide the Supreme Court did not directly indicate that ambiguity should be construed against the drafter. However, the court’s discussion suggest this possibility.
I wonder how patentees would alter their claim drafting if Judge Plager’s rule became law?
Of course the great irony of this is that the Fed. Cir. has been making patent attorneys dance for the last 20 years in changing the way they interpret the claims. Now — due to the great and powerful Lemley writing a paper that holds about as much water as a desiccated river rat– we have a new functional claim interpretation proclamations by the Fed. Cir.
Let’s fact it. The Fed. Cir. is wacked out by Obama appointing shills, the shadow Director and a SCOTUS that is determined to enforce their federal common law over the 1952 Patent Act. The Fed. Cir. was meant to interpret the 1952 Patent Act. The SCOTUS should review it only for Constitutionality.
we have a new functional claim interpretation proclamations
What “new proclamations” are you referring to?
Night, one of the problems with not reading Halliburton and Faulkner v. Gibbs is that one does not recognize or understand that the Supreme Court only had problems with claims functional at the exact point of novelty.
Functionally claiming old elements was not identified as a problem – and this was emphasized in Faulkner.
When one does not understand this, one attempts to apply 112(f) and its cramped construction clause to old elements of a combination, where functionally claimed old elements should be given the entire scope claimed. There should be no difference between “computer” and “means for computing” when all the claim requires is anything that computes.
MOREOVER, claiming process steps in terms of acts is not functional claiming. Most programmed computer claim are process claims and the claim elements themselves should be treated as such. 112(f) should not apply to process claims unless they have an exact point of novelty and they claim a result.
Lemely is way, way off base in attempting to treat process claims that have no point of novelty as limited by 112(f).
Ignoring Halliburton and Faulkner v. Gibbs is not a good thing for patent law, even after ’52. Lemely and the Federal Circuit are drifting far afield as a result.
Ned continues to beat the dead horse…
I know…he beats and beats it.
Lemely is way, way off base [anything after this is not necessary]
Then again, what can one expect when somebody who has a degree in political science and never worked in technology wants to make policy arguments about law that is inextricably tied to technology?
I’ve been around smart people who aren’t lawyers yet who attempt to comment about the law. I’ve also been around smart people who aren’t engineers say crazy things about technology. Lemley has no experience in either technology or the practice of patent law.
Give me a dime for every engineer patent lawyer who’s arrogant inflated head is buried deep up his Republican creationist axx and I’ll be a millionaire.
Bias much?
“a SCOTUS that is determined to enforce their federal common law over the 1952 Patent Act”
I agree
Dennis asks: I wonder how patentees would alter their claim drafting if Judge Plager’s rule became law?
Answer: The patentees wouldn’t alter the claims at all b/c the patentees don’t write the claims. Most inventors wouldn’t know indefiniteness or contra proferentem from a wet diaper. The patentees almost never contribute to this problem, they only pay the penalty.
For the sake of precision, let’s focus on the source of the problem. It’s the patentees’ lawyers. And the patentees’ lawyers are, for the most part, writing claims they way they were taught in law school.
As with all problems in claim drafting, the problem often lies with the patentees’ lawyers’ law professors even though there is no “my-law-professor-told-me-to-do-it-that-way” defense to malpractice.
And the patentees’ lawyers are, for the most part, writing claims they way they were taught in law school.
Seriously? Who learned how to draft claims in law school?
IDK, Lemley?
Ambiguity is in the eye of the beholder (the judge) after he has been pepper sprayed in the face by the infringer.
There was nothing ambiguous about the claims in Nautilus.
As I recall the electrodes were in a spaced relation (well duh, if they weren’t spaced from each other, they would be a single electrode) and also had to be contactable by the palm of a single hand.
So, picking the hand of a 10 year old as the smallest hand to be expected to grasp the associated support, the electrodes would have to be spaced from about 1 to about 30mm…
oooooh sooooo ambiguous..
Paleeze
“the electrodes would have to be spaced from about 1 to about 30mm”
Guess they should have just said that then eh?
Shrug. Hindsight is 20/20. I’m sure when the inventor was describing the invention he/she wasn’t thinking in terms of units of measure. In his or her mind the point was there were 2 (sets of?) electrodes and that had to contact the same palm. So, that’s how he/she described it to the scrivener and that’s what the scrivener included in the claim.
Why is that description ambiguous? Only because someone wants to copy the invention and alleging that the description is ambiguous might let them.
the point was there were 2 (sets of?) electrodes and that had to contact the same palm.
Does this “point” appear in the claim or in the specification, or is it something that anyone aware of the prior art would understand?
My recollection is that it was in the claim and that it was declared ambiguous.
They teach claim drafting in law school? Not many law schools teach patent drafting.
Ha, ha, ha . . . on me. This is so funny. Smack me down, dudes, b/c I had no idea what I was talking about. Clueless. I admit. (Please note: I’m the first person ever to make such an admission on this hallowed blog. Does the ABA have an award for that??) I read the law in Va. and have never even seen the inside of a law school lecture room. Now I can claim that with a heightened sense of superiority, not just the regular sense.
I just assumed that any patent person who paid 6-digit bucks for a law school education would get — at a very minimum — a course in how to write a freaking claim. Now you tellin’ me they didn’t even cover the basics of claim drafting???? OMFG!
No wonder the US judicial system wastes all this time and tax payer money sorting out these banal issues that keep coming up again and again. Next you’ll be telling me you didn’t learn claim construction, either.
But my essential point still stands: it is not the “patentee” who screws these things up. It is the lawyer with little but bone between his/her ears.
That’s why the age and experience of your first firm is so critical to how good you become as a patent attorney.
That’s why the age and experience of your first firm is so critical to how good you become as a patent attorney.
100% accurate. I learned claim drafting from a literal wizard. However, he was terrible drafting applications. Another partner I had, however, was great at drafting applications but neither were good at patent prosecution. Luckily, I found another partner to teach me that patent prosecution is really the practice of law — so many patent professionals forget that they are lawyers — not glorified engineers.
I feel bad for attorneys that have sub-par mentors.
I read the law in Va. and have never even seen the inside of a law school lecture room. Now I can claim that with a heightened sense of superiority, not just the regular sense.
Well I’ll be. I didn’t know anybody still did that.
Yes, most of us do learn the basics of claim drafting in law school. But if these cases was “basic”, I doubt they would rise to the level of the Fed Circuit or SCOTUS.
I just assumed that any patent person who paid 6-digit bucks for a law school education would get — at a very minimum — a course in how to write a freaking claim. Now you tellin’ me they didn’t even cover the basics of claim drafting???? OMFG!
By some measures, there are about 1.25M active attorneys in the US. A couple of years ago, Dennis estimated there are only about 26,000 active patent attorneys. That means there are only about 2 patent attorneys for every 100 attorneys. Who is going to teach a class in law school that only 2 students out of 100 are going to use?
But my essential point still stands: it is not the “patentee” who screws these things up. It is the lawyer with little but bone between his/her ears.
Who screws things up are the attorney on the other side who is getting (highly) paid to allege that the language is ambiguous.
All true, but I would argue that the number is probably under 26k active patent attorneys. That’s just those with PTO bar #’s who are in active practice. I’d point out that many of them aren’t prosecuting.
The “essential point” BabelBoy, is that you are more than perfectly willing to make things up and speak from your arse.
It’s not a good essential point for you to make or be proud of.
In an earlier thread there was reference to a Learned Paper on claim construction:
link to luc.edu
I was reminded of it by the talk here about what it means to have a “peripheral” notion of claim construction.
It seems to me to be pure wishful thinking to suppose that the wording of a claim can ever define with perfect precision the position of a boundary fence. I have yet to see a better Rule of Claim Construction than the one Europe has operated since 1978, namely that the court MUST deliberately balance “fair” protection for the Inventor with “reasonable” legal certainty for the public ie business competitors.
At first sight, that seems hopelessly vague and permissive. However, experience in national courts all over Europe since 1978 shows that it does box the judges in, so they end up, more and more, coming to about the same line on scope, no matter what their history of how to construe claims, whether “central” or “peripheral” and with or without a DoE. This boxing in process leads to increasing legal certainty. Test it on the Chef America case.
If we take, by analogy, the scope of a claim to be equivalent to the “conceptual” area enclosed by a fence and that which falls outside the scope of the claim to be equivalent to an conceptual area outside of the fence, then the concept, “ambiguity” is equivalent to a fuzzy fence (physically impossible but illustrative) or a double fence having itself some width causing difficulty determining what “under the finite fence itself” lies within and what lies without. A clear and distinct fence of no discernible width is one which is clear and distinct and divides the interior from the exterior would be equivalent to “clear and distinct” claims.
“Breadth” of a claim, is equivalent to the magnitude of area the fence encloses. Some of that territory, may lead to invalidation of the claim, but the precision with which that area is fenced is separate from its area. A valid claim will precisely enclose that which has been invented.
Although there has been confusion in the past, is the court in this particular case confusing the issue of breadth and ambiguity?
I have looked at the case please ignore the above as irrelevant to the discussion.
This case reminds me of that silly song from last century:
“One-eyed one-horned flying purple people eater.”
which has at least 5 interpretations.
No, its attacking the practice of breadth through ambiguity.
In your hypothetical it is as if the “fuzzy fence” could enclose any of: a suburban backyard, a farm, or Iowa.
Contract law doesn’t seem a fair analogy to me, since examiners in reality have all the leverage in these “negotiations.”
And if claim ambiguity were truly avoidable, it would seem to me that claim construction wouldn’t always be such a critical junction in patent trials.
Another attack on d@mm scriviners.
For one, patentees might consider no longer modifying numerical claim elements with the word “about.”
Even contracts do this sometimes…
That Ge ne filter is really annoying. This will (eventually be a repeat):
I’m having difficulty understanding what “intentional ambiguity” is and how it could possibly be advantageous to the patentee. A term/claim is ambiguous if it can be understood in two or more ways and it can’t be determined which way is intended. That’s different than “vague,” which indicates a lack of specificity, or, more ge nerally, a lack of clarity (which may include ambiguousness, I suppose.)
A truly ambiguous claim is (almost by definition) indefinite, so I don’t see the source of the supposed incentive to inject ambiguity into claims.
It appears to me that what people are often really complaining about are intentionally broad claims, which can sometimes be vague.
The Supreme Court’s comment on intentional ambiguity thus strikes me as, well, unintentionally ambiguous.
I think intentionally ambiguous is the wrong standard.
It should simply be that when read for infringement purposes, the most reasonable construction that avoids infringement is the correct construction. Put another way, the benefit of the doubt goes to the accused infringer since the accused infringer did not participate in the drafting of the claims and is afforded no opportunity to clarify the prohibited activity.
In this sense, it’s not all that different than the idea that claims are read to preserve their validity–itself an odd doctrine when again the drafter had the opportunity to preserve the validity at the time of drafting.
So like 112/103, we should now also muddle up claim construction with a determination of infringement and see how we “feel” about infringement before construing the claims?
Am I the only one thinking that this is making patent law LESS certain that it has been even in the recent past?
If you think that there’s any certainty now, you’ve never evaluated a patent infringement / invalidity analysis. There’s anything but certainty. Even really strong arguments are uncertain.
The problem is that that uncertainty currently tilts way in favor of the patent owner. Rules that preserve the validity of the patent punish those who had no involvement in the original filing and create strict liability for otherwise innocent actors.
If we view patents through the lens of pretty much any other area of law, the strict liability nature of patent infringement ought to disfavor the patent holder. But we don’t. Patent law is a weird backwater: we construe claims broadly, we construe them to preserve validity, and we rely on unique canons of construction.
We do not construe the claims broadly except for validity determinations at the PTO. Yes, we use established rules for construction which gives some measure of certainty.
I understand that you’d prefer patents not exist, but let’s not pretend that this approach is good for anyone. This will only prolong litigations that might have settled under the established rules and increase the costs of litigation due to the additional points for argument that this creates.
We do not construe the claims broadly except for validity determinations at the PTO. … I understand that you’d prefer patents not exist …
Oh, come on, enough with the immature “You’re anti-patent!” arguments. They’re not particularly persuasive.
Although the PTO supposedly uses a broader interpretation rule, I think it’s still fair to say that claims are interpreted broadly. The ge ne ral rule is that the plain language applies, even when that plain language is considerably broader than anything described/illustrated in any detail. The PTO’s supposed adherence to “broadest reasonable interpretation” aside, I don’t see how the claims could be read any more broadly.
mmm is right that courts also read claims to preserve validity, when possible, which is definitely favorable to the patentee. He makes a good point that it would be quite reasonable to do it the other way, given the strict liability nature of infringement.
“Claims should be read so as to be invalid if possible.”
You’re saying that that isn’t anti-patent. Think about that for a minute.
“Claims should be read so as to be invalid if possible.”
You’re saying that that isn’t anti-patent.
Well nobody said that, exactly, but no, that isn’t “anti-patent.” It’s anti-ambiguous-patent.
LOL – like that will be persuasive.
(well, about as persuasive as any of your other smarmy posts)
Right. The “notice” function can be achieved through litigation. Great solution. That ought to work for everybody. Another fine example of “thinking like a lawyer”. LMAO
I’m having difficulty understanding what “intentional ambiguity” is and how it could possibly be advantageous to the patentee. A term/claim is ambiguous if it can be understood in two or more ways and it can’t be determined which way is intended. That’s different than “vague,” which indicates a lack of specificity, or, more generally, a lack of clarity (which may include ambiguousness, I suppose.)
A truly ambiguous claim is (almost by definition) indefinite, so I don’t see the source of the supposed incentive to inject ambiguity into claims.
It appears to me that what people are often really complaining about are intentionally broad claims, which can sometimes be vague.
The Supreme Court’s comment on intentional ambiguity thus strikes me as, well, unintentionally ambiguous.
Ambiguity is usually not synonym of indefiniteness. If a claim can be understood in two or more ways that are enabled, and apparently valid in view of the prior art on the record, then it simply means that the claim is intended to cover all these interpretations. And yes, this ambiguity is most likely intentional, given the time spent choosing the proper wording in claims.
Ahmen
“And yes, this ambiguity is most likely intentional,”
Good, easier to invalidate.
The problem of intentional ambiguity has been with us since claims. Nothing has deterred.
The practitioner will simply draft two independent claims directed to essentially the same invention, one with broad, functional and ambiguous terms, and a second that is directed to the invention in simple, but clear language.
The existence of the broad, indefinite claim in the patent will operate as a threat even if the accused infringer believes he does not infringe the more definite claim.
Agreed. Until the cost of patent litigation decreases, bad claims will continue to be weapons that can leverage settlement regardless of their definiteness.
You totally missed the point. Broad claims should get caught by 102/103, by the way.
You put the more vague claim in there to see how broad you can make the coverage. You put the picture claim in there to get an early allowance, then file a continuation and pursue the broad claim in the continuation.
The canard of patent litigation cost has no merit here. The real issue is in the title of this thread, claim construction and infringement.
Careful there Software Guy – if you get your wish of lowered litigation cost, you will see more (not less) patent suits.
It is not only the supposed infringer that pauses at the cost of a suit.
The practitioner will simply draft two independent claims directed to essentially the same invention, one with broad, functional and ambiguous terms, and a second that is directed to the invention in simple, but clear language.
Ned — there is nothing inherently ambiguous about functional language. Language, on the other hand, is inherently ambiguous to some degree or another.
Also, any “functional language” could be merely rewritten as a method claim and nearly the same scope achieved.
The existence of the broad, indefinite claim in the patent will operate as a threat even if the accused infringer believes he does not infringe the more definite claim.
You do realize the indefinite claims can/should be rejected by examiners. Also, I see that you improperly conflate breadth with indefiniteness.
I wonder how patentees would alter their claim drafting if Judge Plager’s rule became law?
Hardly at all. I know of no practitioner that intentionally adds “ambiguous” language to their claims.
I’ve made this point before, and I’ll probably have to make it dozens of times again — the English language is inherently ambiguous to some degree. As such, it doesn’t take much for a motivated attorney to concoct some argument that “the claims are ambiguous/indefinite.” I’m sure it is part of the standard fare when defending a patent suit:
1) we don’t infringe
2) the patent is invalid
2A) the patent is directed to non-statutory subject matter
2B) the patent is anticipated/obvious
2C) the claims are indefinite
3) the patentee committed fraud on the patent office
If you aren’t alleging these, as a defense attorney, then you (apparently) aren’t doing your job.
Oh no, I totally agree that functional language is wholly acceptable when it is claimed in combinations where the particular element might be old and it might be functionally claimed with total propriety.
When I talk about functional claims I am talking about claims that are functional at the point of novelty, where essentially everything else in the claims old and old in combination.
You may want to actually read Faulkner v. Gibbs, a Supreme Court case that limited Halliburton the claims functional at the exact point of novelty.
point of novelty
You do know 35 USC 103 refers to the claimed invention “as a whole”?
Oh No, so what?
Do you have any idea what Halliburton was even about?
Abrogated.
Do you have any idea what Halliburton was even about?
SCOTUS mucking around with patent law?
I know of no practitioner that intentionally adds “ambiguous” language to their claims.
Fascinating.
The advantage of introducing ambiguity is well-known: you can appease an Examiner by including an “ambiguous” term (with multiple constructions of differing scope); if the Examiner assumes a narrower construction of that term and fails to put his/her construction on the record, you are relatively free (perhaps less free now that the stakes have been raised by the Supreme Court) to assert the claim under its broader construction.
I’m sure it is part of the standard fare when defending a patent suit:
1) we don’t infringe
2B) the patent is anticipated/obvious
Last time I checked, defendants who are confident they are practicing the prior art (as recited by the patentee) are happy to admit infringement and let the patentee hang itself. It’s a perfectly valid legal strategy.
Language, on the other hand, is inherently ambiguous to some degree or another.
Right — if that weren’t the case, we wouldn’t be discussing ambiguity at all. It’s the degree to which certain words (or combinations of them) are impermissibly ambiguous that is the issue here.
I know of no practitioner that intentionally adds “ambiguous” language to their claims.
We do it all the time once we know the commercial embodiment is secure.
“Last time I checked, defendants who are confident they are practicing the prior art (as recited by the patentee) are happy to admit infringement and let the patentee hang itself. It’s a perfectly valid legal strategy.”
I’ve never had any client “admit infringement” but I’m sure in Examiner Mooney’s fantasy world such clients are plentiful. And they’re all happy to have him as their “attorney.”
Lulz
I’ve never had any client “admit infringement”
Meet AAA JJ. AAA JJ is the deep thinker who once proposed that judges who use term “monopoly” when discussing patent rights should be impeached.
Now AAA JJ is here to tell you that if you are an oatmeal cookie-eating defendant accused of infringing a claim to “eating an oatmeal cookie” you should pretend that you didn’t eat the oatmeal cookie rather than just admit that you did that and tank the claim based on the fact that the act of eating oatmeal cookies is old.
Or maybe AAA JJ is just being pedantic because he’s got nothing else to add (except to insult Mark Lemley).
Epic fail MM. You dug yourself much deeper.
Keep up that record breaking outstanding quality work you’re doing examining DNA pieces and protein bits, Examiner Mooney!
We’ve seen this “strategy” at play in cases here on PO and yet it looks like the looney bin members think it’s all just crazy talk n MM is totally “digging himself in deeper” and is tots an “examiner”.
You guys. So hilarious.
LOL.
You really have to be impressed by these Patent Wonder Twins. Yes, we should all take them sooooo seriously … because they’re consistently wrong about everything important.
Meanwhile, the Unmentionable One is on the record stating that he expects the backlog to decrease as a result of Alice (so far nobody has disagreed with him but the “Park and Wait” folks are sure that they can make the backlog even huger by refusing to recognize 101 challenges to their j nk patents).
On top of that, we’ve got awesome stories like this:
link to arstechnica.com (Apple’s slide-to-unlock j nk about to go up in flames)
and this:
link to arstechnica.com (podcast j nk patent owner whines and cries that people won’t leave it alone)
The podcast troll story:
link to arstechnica.com
That one’s pretty funny. I don’t see any problem at all with Carolla’s carrying on the case – that’s precisely what his contributors wanted.
6, we know the standard you use to comment. If you are ignorant on a topic, then you feel that you are qualified to comment.
“If you are ignorant on a topic, then you feel that you are qualified to comment.”
Ahh, we need “qualifications” to comment on these here interbuts? Is that your new shtick?
there is that log in your own eye thing again 6…