Guest post by Heather F. Auyang, Senior Counsel at LTL Trial Attorneys in San Francisco, California. The views and opinions expressed herein are those of the author and do not reflect the views or opinions of LTL Trial Attorneys.
This is the Teva-update to last summer’s Patently-O Guest Post titled “Why Lighting Ballast Won’t Solve Claim Construction” (https://patentlyo.com/patent/2013/07/guest-post-why-lighting-ballast-wont-solve-claim-construction.html), which discussed two then-recently published empirical studies – a study of “close cases” (analyzing all post-Markman claim construction cases where the Federal Circuit panel was split) and a study of “reversals” (analyzing all post-Phillips claim construction cases in which the Federal Circuit reversed the district court). Updates to both studies have now been published in a sequel article, which provides further explanation and answers to some of the questions that were raised in this very forum last year. The past year’s data is unsurprising – it is exactly what the models provided by the original studies predicted, and it confirms, yet again, that changing the standard of review will not have a particularly beneficial effect on claim construction predictability or consistency. This conclusion is based on two key facts shown by the data: (1) that Federal Circuit judges remain divided on how to approach the task of claim construction, and (2) that when district courts are reversed, it’s almost always because they have misapplied settled claim construction principles. In fact, giving more deference to district courts will likely exacerbate, rather than fix, problems with claim construction.
The close cases study (of 105 cases) continues to show that each Federal Circuit judge who has participated in more than five close cases falls into a distinct camp. Judges Wallach, Linn, Clevenger, and Moore “go broad” in over 66% of close cases (Judge Rader was also in this group); Judges Bryson, Prost, Mayer, Schall, and Dyk “go broad” in between 47% and 55% of close cases; and Judges Newman and Lourie “go broad” in under 31 percent of close cases.
As pointed out last year, if the goal is to make claim construction more predictable, a good place to start would be to ensure that all the Federal Circuit judges are following the same rules of claim construction. This data clearly shows that they are not. While any given judge in any given opinion can cite the same agreed-upon rules, the rules are not preventing significant differences in approach among the judges. Last year’s post and article posited that some judges are expressly or implicitly following an “actually invented” standard that other judges reject. Whatever the explanation, until these differences are ironed out, tinkering with other issues – like deference to district courts – is unlikely to be productive.
The reversals data (based on 153 cases) is even more relevant to the question of deference than is the close cases data, since it deals directly with the relationship between the Federal Circuit and the district courts. Focusing on reversals makes sense because this dataset, presumably, includes the cases whose results would change if the Supreme Court determines that district courts should get more deference in claim construction. Accordingly, these are the decisions that should be studied before one concludes that the current standard of de novo review should be changed. As it turns out, the reversals data suggests that the high reversal rate is caused by district court error, not Federal Circuit arbitrariness. If that’s the case, why in the world are people advocating more deference to district courts?
The reversals study coded for whether the Federal Circuit decision was in a broadening or a narrowing direction. The result for the 11-month period since the last study was a broadening rate of 87.5%, even higher than the previously-reported overall broadening rate of 72.5%. In other words, in cases where district courts are “getting it wrong,” according to the Federal Circuit, they are systematically interpreting the claims too narrowly. As pointed out last year, these narrowing interpretations typically enable district courts to grant summary judgment of non-infringement (or encourage the parties to enter such a stipulation), and thereby permit the Federal Circuit to review the claim construction issue without going through the trouble and expense of a trial. In the year since then, we have not heard any other plausible explanation. Last year’s post and article also challenged any advocate of deference to provide one or more examples from the “reversals” cases that (1) would have come out differently under a deference regime, and (2) should have come out differently. We haven’t heard anything on that either.
This year’s article – including fancy color charts analyzing Federal Circuit judge proclivities across broad/narrow, less spec/more spec, pro-patent/anti-patent, and pro-affirm/pro- reverse; and pie-charts and tables for the reversals data – is What Reversals and Close Cases Reveal About Claim Construction at the Federal Circuit – The Sequel, 13 J. Marshall Rev. Intell. Prop. L. 525 (2014) (available at http://repository.jmls.edu/ripl/vol13/iss3/3/). The comments here on last year’s article were of a very high caliber; hoping for the same again this time!
[…] This blog had some more variety in July 2014 compared to our normal ND Cal patent fare. In a change of venue (literally), we reported on an Eastern District of California opinion holding that delay led to waiver of an improper venue defense. Back home, we took a look at how a complaint can be self-defeating in an unfair competition and false advertising case and learned from a trade secret case that “willful and malicious” conduct, and attendant punitive damages, are available only against individuals, not corporations. An end-of-the-month order on the level of specificity required in patent infringement contentions was more familiar ground. If this all leaves you craving more discussion of patents, try this updated study on Federal Circuit review of claim construction. […]
Caught by the filter. Try again.
July 19, 2014 at 5:14 am
Question to you on default claim construction, when there is ANY numerical range in the claim. Does it matter how many places of decimals the claim writer uses, to set the end values of the claimed range?
Consider a typical aluminum alloy composition, carefully and deliberately expressed in wt %. Thus:
Si 5 to 8. Mg 3 to 5. Ti 0.01 to 0.05. Balance Al.
in which the Ti is, of course, as the PHOSITA knows, the nucleating agent.
At # 18, below, I suggest that a range rounded to zero places of decimals (like Si above) is to be construed as anybody (not limited to the PHOSITA) educated in science (CAFC judges?) would construe it, namely to include 8.1 (but not 8.6), and 4.9 (but not 4.4). I’m saying that the writer was deliberate, for a purpose absolutely manifest to the PHOSITA, when she wrote “5″ and NOT “5.00″.
Is all this a) common sense b) a matter of evidence c) a matter of who serves at the CAFC or d) as 6 below assesses it, magic? Discuss?
Is all this e) boring as SHT and why bother?
(yes)
To the extent that it is a repeat of # 19 that got held up by”moderation” it is indeed “boring”. I agree.
But to anybody in the USA who does have real clients, who has to write real numerical range claims for them, that are going to be contrued 10, 15 or 20 years ahead of today, I would think it not altogether without interest. After all, this decimal point issue has appeared often enough already, when construing claims in Europe, trying to decide with precision what exactly they cover. I’m therefore surprised it has never yet been an issue in the USA, where the name of the game is the claim and where (as in the Chef America case) the patent owner is increasingly held to the precise words of the claim, deliberately chosen by the drafter of that claim.
Well, Max, there are two topics, one validity the other infringement.
In the PTO, there are prima facie cases and in court there is literal infringement and equivalent.
You are struggling with equivalent infringement. But, in the PTO, all the examiner has to do is prove all limitations with evidence.
Simple, right?
Ned thanks but how about what coming after, and infringing, if coming before, taking away novelty? How many different meanings does a claim have?
Me, “struggling” with the notion of “equivalent” infringement? I don’t think so. To render that notion otiose and worse than useless, I simply ask the question “What was the writer using the words of the claim to mean?”
Try Chef America. Literal infringement? Apparently not. Equivalent then? What is “equivalent”? Is heating at equivalent to heating to? Fxxk knows!
But if instead you ask, what was the Chef writer using the language of the dough baking claim to mean, its unambiguous single meaning becomes screamingly clear to any reasonable PHOSITA. Struggle? I think not.
If you claim Mg 5-8 wt %, the Al alloy formulator reader immediately understands a magnesium content that ranges from about 5 to about 8, (and prior art 4.99 destroys novelty). If instead you choose to claim a Mg content of at least 5.10 wt %, well then, prior art 5.09% does not destroy novelty.
Attention CAFC: Let’s not manufacture uncertainty where none exists. let’s not patronise the PHOSITA reader, and let’s not disrespect the writer of the claim. Instead, unless the claim as it stands makes no sense (Chef) let’s give full faith and credit to the claim drafter, that when her chosen words make sense, she knew what she was doing.
Besides, isn’t the PTO supposed to construe the claims using a BRI standard? What is unreasonable about the claim construction for which I am pressing?
I do not think that you two agree on what you are talking about.
There is no meeting of the minds here.
(as to why that condition is not met, well, lots of reasons exist, some more amusing than others)
“and let’s not disrespect the writer of the claim.”
It is not the CAFC that you need to address this admonition to.
It is the Supreme Court.
In a crossover from the “Applicant’s IDS” thread 101 discussion, it is the Supreme Court that is disrespecting the writer of the claim – d@mm scriviners.
Let’s watch a hypothetical discussion unfold:
Applicant: I choose precise words to claim as my invention a machine….
Court: Stop. While it is a fact that you claim a machine, you have not obtained our respect for those precise words. We hereby use our powers granted unto us by us to say to thee “Gist” and thus decide that your invention is not to the words you have chosen. And thus, no patent for you.
Applicant: May it please the Court to define this tool that you are using, so that I may understand and properly claim my invention?
Court: Bah. No. We refuse to explain ourselves or what the terms we use mean (for example, “Abstract” the other edge of the sword). For if we were to explain ourselves, you clever scriviners would merely rewrite your claims to pass our words and thus obtain patents where we feel no patents should be granted. We will leave you to guess, and leave unto ourselves the power to deny you (without explaining) your future attempts.
We the great and wonderful Oz have spoken.
Max, 6 hit the nail on the head when he said there may be a problem here with WD support for the lower limit. If the spec does not suggest that composition amounts below that would not work, then I think there might be an argument about the number.
I think MM should help us out here.
“I think MM should help us out here.”
Because we just have not yet seen enough disrespect….
/eye roll
General question on default claim construction, when there is ANY numerical range in the claim. Does it matter how many places of decimals the claim writer uses, to set the end values of the claimed range?
Consider a typical aluminum alloy composition, carefully and deliberately expressed in wt %. Thus:
Si 5 to 8. Mg 3 to 5. Ti 0.01 to 0.05. Balance Al.
in which the Ti is, of course, as the PHOSITA knows, the nucleating agent.
At # 18, below, I suggest that a range rounded to zero places of decimals (like Si above) is to be construed as anybody (not limited to the PHOSITA) educated in science (CAFC judges?) would construe it, namely to include 8.1 (but not 8.6), and 4.9 (but not 4.4). I’m saying that the writer was deliberate, for a purpose absolutely manifest to the PHOSITA, when she wrote “5” and NOT “5.00”.
Is all this a) common sense b) a matter of evidence c) a matter of who serves at the CAFC or d) as 6 below assesses it, magic? Discuss?
Below, comment 13 and its children consider a CAFC case called Patel. Ned says it is about evidence but I think it relevant to claim construction and whether the CAFC can do it right.
Prior publication Maugans taught – up to 25 wt %. The claim recited – a range of from 26 wt % upwards. On that small difference hangs the whole of patentability.
People, note the absence of any decimal point, with the consequence that a value of 25.5 lies within the contemplation of both Maughans and the claim.
Yet nobody even mentions novelty. Only obviousness is addressed and, would you believe, on the basis that there is no abutment and no overlap. Now OK, there might not be an overlap, but there ain’t no gap between the respective ranges either, is there? Given that the claimed range sails all the way up to that nice round number 80 wt % one can but wonder what prompted the lower range end selection of 26 wt%
Who’s going to volunteer to construe the claim for me? Does the range end at 26 or at 25.5?
And as to obviousness, would it have done the PTO any good, in its efforts to get a prima facie obviousness case up on its feet, to argue that Applicant is silent as to any significance of shifting from 25% to 26 %. That silence (in the application as filed) is prima facie evidence that there is no step change in results, when one puts 26% into the pot instead of Maugans 25%. In short, Applicant wants a patent for an invention he had not got round to inventing when he filed his patent application. Mark my words; debating validity henceforth, in the context of FtF, is going to create much work for keen lawyers.
Max, all the case really stands for is that the PTO needed evidence to bridge the gap. It did not have it in the prior art of record as noted by the court. It needed to find something else.
The patent examiner could have provided his own affidavit. But that too would have had to be based on evidence.
A prima facie case must demonstrate all the claim limitations with evidence.
You’d better believe that in court, any defendant is going to supply an expert (unbiased, of course) that is going to bridge the gap. The patent owner will supply counter evidence. Then a trier of fact can make a decision, but based on evidence.
Indeed Ned. It all depends what constitutes a prima facie case, one good enough to flip the burden of proof of patentability over to the Applicant.
Given the presumption of validity, once the claim issues, it is incumbent on the PTO to examine applications thoroughly. Given this admonition of the PTO by Judge Moore, one has to wonder where the PTO is going to find the time and money to build a “prima facie” case to the rigorous evidential standard that will satisfy Jurist Moore.
Perhaps Ms Moore supposes that, in their own self-interest, the competitors of the Applicant will step in, from now on, to help the Examiner, each time a case like this is being examined on the merits. By the way, “merits”, what a nice word that is.
Thanks again, for drawing this case to our attention. I see more clearly now why some Americans get so hot under their collars about the way the EPO from time to time rejects claims that applicant vehemently asserts to be indisputably not without “merit”.
You need to read pages 2-3 of the applicant’s request for rehearing to see how well applicant’s representative destroyed the Board’s reliance on the almost always misapplied boilerplate of In re Peterson, Titanium Metals, and In re Woodruff. And then you need to read page 9, second to last paragraph of the Court’s decision to see why those arguments were persuasive to the court.
This is another fine example of how the lazy APJ class, who like Ned says like to hand wave at requirements for evidence and persuasive arguments that the favor boilerplate case law relied upon so routinely and lazily by the examiners and the Board, gets smacked upside the head by the Court when an applicant has the will and the resources to press their case.
For another laugh see page 2 of the Board’s decision on request for rehearing where they state that the applicant’s request for rehearing appears to argue that the Board misapplied the case law, and how the APJ’s weren’t persuaded.
Lulz
AAA JJ, Thanks for that.
This prima facie case issue is important. The Board at times seems to stop just short of proving all limitations with evidence.
Careful, Ned. If you start joining the “show me the evidence” folks on this site, you’re gonna have to face the wrath of your buddy Examiner Mooney.
LOL – B-b-b-b-but “policy”/opinion table pounding works so well.
/eye roll
AAA JJ, Malcolm is the one poster I’d like to hear from on this case.
Malcolm?
Another is 6.
gd it ned I’m bored with this case and I haven’t even cracked into it yet. But fiiiiiiine.
You funny, Ned.
Let me keep you from spending any time waiting for what Examiner Mooney has to say by telling you that he will chime in with his usual bullshirt of, “It’s facially invalid cr#p!!!!! I’ve tanked hundreds, no thousands, of j#nk patents like this just by posting on this site!!!!! It’s so obvious it’s not even eligible subject matter!!!!!!”
Have a nice weekend.
Ned I don’t even have to get far into the case after having seen what you guys have said and the claim itself. I’m in agreement substantially with what you’ve said about a hypothetical nonexistent case very similar to this one.
It may well be that such a hypothetical case is obvious. But yeah you’re def going to need some evidence for a claim like that. I’m surprised that an examiner would even take this up/be allowed to take this up/would be affirmed. Who gives two flying shts if someone gets a range with another range with another range with several other limitations where all that is not old? If he’s busy rejecting this stuff he should check out the garbage issuing forth from the liberal arts side of the PTO. Maybe then he’ll reconsider being so harsh on folks that are at least promoting the progress of the useful arts.
That said, of course whether or not an applicant in that position had WD for that range or not is another question.
Also Max, you’re horrible at construing claims bro. Seriously? 25% in the ref magically becomes 25.5 and 26 in the claim means 25.5? W T F? Maybe if you had some kind of evidence or something about how an imaginary man would read the claims and the art. Maybe. Probably not even then.
And all that is setting aside the density kerfluffle going on at the same time.
6, good point on the WD support for the lower limit.
And, thanks for taking the time to comment.
AAA JJ, Malcolm knows his stuff on chemistry and bio, and always responds/discusses these cases seriously.
6’s point on WD support for the lower limit was a good one. That is where the examiner should have spent some time.
Examiner Mooney do t know nothing except DNA stands and protein bits.
He does know how to dissemble and toast his pet theories when he is compelled to actually volunteer substantive discussions on the merits.
“ the competitors of the Applicant will step in, from now on, to help the Examiner, each time a case like this is being examined on the merits.”
Yet another fundamental error by our meddling officious friend from overseas.
With friends like this, does the patent system need any enemies?
What is a legal right?
Presumably a legal right is something that you have recourse with the legal authorities if it is violated. A non-legal right may be a right that a person feels they have, but that may not have cause of action recognized by the laws of the land.
People may feel they have a right to free speech in Cuba, but not have a cause of action if they are imprisoned for exercising their right.
Agreed, Night. A right without a remedy is no right at all. A patent in a country without viable, independent judiciary, is not really a patent.
What is the difference between a legal right an a privilege?
In the patent context, I would say that something called Quid Pro Quo is in play.
“A right without a remedy is no right at all. ”
Not necessarily. If the cultural norms enforce it for all for the entire duration under discussion then they effectively have whatever “right” is being discussed. That’s why so many entitled ‘Mericans think they have a “right” to so many things that they legally have no cause of action to enforce upon the gov and yet the get to do anyway.
“ If the cultural norms enforce it”
lol – such wonderful comicbook land writing
Tell that to all the snooping gf’s not in jail.
..because that’s germane to discussions of patent law….
Oh wait. It’s not
/face palm
I think that this is gen erally a good post. The more we can measure the consistency (or lack of) the “judges” the more we can spot those that have no regard for the law. But, the only problem is that in this case we are dealing with a large group of “judges” that have no regard for the law. So, it would be expected that no real rules (or laws) can be found that are being applied.
And, now they can always resort to the 101 psychotic rule where a judge need only sit in a chair by themselves and dream up an abstract concept and then chant that the claims add nothing significantly more (the flash of genius test redux).
This one was sent to moderation for “gen erally” (without the space).
MM you must have really gotten G3ne mad. Impressive for a g3ne deficient chimp.
If a citizen violates the law, there is the lawsuit.
If a president violates the law, there is impeachment.
But, if the courts violate the law, what then?
*But, if the courts violate the law, what then?*
In gen eral, also impeachment:
link to en.wikipedia.org
Examiner Mooney is going to flip out.
Lulz.
“Examiner” Mooney is going to run away without adding anything of substantive merit.
Again.
I think that this is generally a good post. The more we can measure the consistency (or lack of) the “judges” the more we can spot those that have no regard for the law. But, the only problem is that in this case we are dealing with a large group of “judges” that have no regard for the law. So, it would be expected that no real rules (or laws) can be found that are being applied.
And, now they can always resort to the 101 psychotic rule where a judge need only sit in a chair by themselves and dream up an abstract concept and then chant that the claims add nothing significantly more (the flash of genius test redux).
anon, I agree that I, as well as some others, have been critical of the Federal Circuit as too friendly to the patent bar, and at least some of its judges seem to have seen the Supreme Court the same way as does the patent bar, but I don’t use blasé epithets to describe them.
I am surprised you did not add tea baggers to the list though.
“, but I don’t use blasé epithets to describe them.”
LOL – wanna bet?
I care not to add to any list. As I have mentioned, some use of rough and colorful language is appropriate. I would add, that such use can even be more effective than too-nice vanilla “let’s be polite” tiptoeing.
On my office wall: link to fc05.deviantart.net
You know I often thought you saw yourself that way and I thought about making one of the little 9 boxed posters for PO. But you would have been chaotic evil.
LOL – only because your perception is so twisted 6.
March, my lemming friend, march.
Under the “Are you kidding me?” category of “too polite”:
link to lawtechnologynews.com
Ned what is wrong with blasé epithets? The real problem is that people like Lemley will not address substantive criticisms of their ideas. (Laurie bird too as well as many others.)
When you are dealing with people that will not show respect to the rule of reason (or law), then resorting to name calling is understandable and servers the purpose of diminishing them and their specious arguments.
Night, regarding Lemley, all we have to show is that he was dramatically wrong on one point to undermine his credibility across the board.
He is the author of the single-entity rule for method claim infringement. He wrote the law review article. He filed the amicus brief in BMC Resources.
Just point this out to anyone who wants to rely on Lemley for any novel legal proposition.
While I dislike Lemley intensely, this statement goes too far Ned.
You fall (again) into the authority fallacy, here, applying the mirror image of “lost authority.”
Read an item for what it states – not imputing extrinsic “worth” by the name attached.
This is not to say that a name attached cannot inform of possible bias in the article, nor excuse a critical view of underlying tones in the article – those are fair imports that can be made. The difference is the wholesale reject-at-sight-unseen blanket action that you seem to be advocating.
IN RE PATEL
link to cafc.uscourts.gov
PTAB reversed – no prima facie case.
Claim to a composition. Range of one compound 26-89. Prior art. 9/5 to 25.
PTAB said, obvious.
Feds. no prima facie case because the reference did not suggest that a broader range would be effective.
Prior art s/b 0.5-25.
“Appellants allege that because the prior art reference “recites a range which does not overlap, nor abuts with the claimed range,”
Doesn’t it? Wouldn’t a skilled reader read with significant digits in mind? A claim to 25% would normally seem to read on 25%+/- 0.5% unless otherwise specified. As such the one claim is up to 25.5% and the other is down to 25.5%.
Given this, how could a difference of less than .01% not be considered obvious to one skilled in the art when the prior art teaches that a range from .05 to 25% works and there is no evidence it teaches away from over 25%.
James, this is a case about showing all the limitations with evidence. The PTO hand-waved where evidence was needed.
Shocking they would do that.
/sarcasm
I think we should be careful with all this blasé use of the term mongrel, especially “studying the mongrel,” or “taming the mongrel;” it has arguably derogatory connotations.
Yeah we should be careful about blasé use of any derogatory terms.
Royal Nine.
Troll.
Anyone care to add to the list?
Sorry Ned, but Some derogatory terms fit.
Like Royal Nine – even you clearly agree that they should stick to/get back to the statutes, right?
Absolutely, anon, on what they should do. But the institution itself should not be so heavily criticized. I was astounded to here this my entire time in the leadership of patent bar as almost a consensus view. But such a view puts the whole patent bar into a position lacking any credibility with the Supreme Court and to the courts in general.
Do I need to explain why?
Absolutely, anon, on what they should do. But the institution itself should not be so heavily criticized. I was astounded to here this my entire time in the leadership of patent bar as almost a consensus view. But such a view puts the whole patent bar into a position lacking any credibility with the Supreme Court and to the courts in gen eral.
Do I need to explain why?
That comment cuts both ways Ned – (criticize the CAFC much? defend the Supremes against rightful criticism much?)
anon, I agree that I, as well as some others, have been critical of the Federal Circuit as too friendly to the patent bar, and at least some of its judges seem to have seen the Supreme Court the same way as does the patent bar, but I don’t use blasé epithets to describe them.
I am surprised you did not add tea baggers to the list though.
The Royal Nine can take care of themselves. (The simian on this board can too.)
Hiding behind politeness (crybaby veto anyone?) while trampling the Rule of Law is far more despicable than nak ed aggression.
“Beware over-politeness as that is often the way of the coward and the deceiver.”
I agree anon. The politeness becomes part of the machine. Chomsky.
Probably the reverse should be true. The Royal Jelly 9 should probably have to face us. The reality is that many of their decisions and beliefs would not stand the light of day.
I think we saw this recently when a crybaby professor got on here and said we were too mean to the great and powerful Lemley. And, then the professor refused to address substantive issues which is the same thing the great and powerful Lemley does.