In re Papst Licensing: Federal Circuit Speaks on Claim Construction

By Jason Rantanen

In re Papst Licensing Digital Camera Patent Litigation (Fed. Cir. 2015) (Download In re Papst)
Panel: Taranto (author), Schall, Chen

In its first precedential opinion addressing claim construction after Teva v. Sandoz, a panel of Judges Taranto, Schall and Chen take the approach that it is business at usual for the court—at least, as long as only intrinsic evidence is involved.

The most significant aspect of this opinion is the relationship between this appeal and Teva.  Here, the district court heard from the parties’ experts on the technical background, but “declined to admit expert testimony or to rely on an expert declaration from Papst, stating that ‘the intrinsic evidence—the claims, the specification, and the prosecution history—provide the full record necessary for claims construction.”  Slip Op. at 7.  Given this posture, the Federal Circuit comfortably applied a de novo standard of review.  From the opinion:

We review the grant of summary judgment of noninfringement de novo, applying the same standard used by the district court. See Bender v. Dudas, 490 F.3d 1361, 1366 (Fed. Cir. 2007). The infringement inquiry, which asks if an accused device contains every claim limitation or its equivalent, Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997), depends on the proper construction of the claims. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). In this case, we review the district court’s claim constructions de novo, because intrinsic evidence fully determines the proper constructions. See Teva Pharm. U.S.A. Inc. v. Sandoz, Inc., 135 S. Ct. 831, 840–42 (2015). As we have noted, the district court relied only on the intrinsic record, not on any testimony about skilled artisans’ understandings of claim terms in the relevant field, and neither party challenges that approach.

Slip Op. at 8.  Operating within this framework, the court drew upon its “familiar approach to claim construction”:

“We generally give words of a claim their ordinary meaning in the context of the claim and the whole patent document; the specification particularly, but also the prosecution history, informs the determination of claim meaning in context, including by resolving ambiguities; and even if the meaning is plain on the face of the claim language, the patentee can, by acting with sufficient clarity, disclaim such a plain meaning or prescribe a special definition.”…We apply, in particular, the principle that “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.”

Slip Op. at 9-10 (internal citations omitted).  Using that approach, the Federal Circuit reversed all of the district court’s claim constructions at issue.

While this appeal appears to involve Teva‘s paradigmatic scenario in which de novo review is appropriate, future appeals are less likely to offer such a relatively simple posture.   Rather, the expectation is that district judges will seek to insulate themselves from review by relying upon evidence that the Supreme Court said is due deferential review.  This increasing reliance on extrinsic evidence by district courts will result in appeals that intertwine the intrinsic with the extrinic.  That said, the above sections of the opinion suggest to me that the court is probably going to focus its review on the intrinsic evidence first and, if that is clear, will decide the appeal on that ground alone.

There’s another layer of complexity going on here that relates to the starting meaning* of words.  In Teva, the Court observed that:

Construction of written instruments often presents a “question solely of law,” at least when the words in those instruments are “used in their ordinary meaning.”…But sometimes, say when a written instrument uses “technical words or phrases not commonly understood,” id., at 292, those words may give rise to a factual dispute. If so, extrinsic evidence may help to “establish a usage of trade or locality.” []. And in that circumstance, the “determination of the matter of fact” will “preced[e]” the “function of construction.”…This factual determination, like all other factual determinations, must be reviewed for clear error.

Teva v. Sandoz at 5-6 (internal citations omitted).  A tension that emerges from this passage is the tension between “ordinary meaning” and “technical words or phrases not commonly understood.”  The latter, the Court’s opinion states, may be due deference; but when “ordinary meaning” is involved, it is a “question solely of law.”

Here, the claim construction did require some discussion of the ordinary meaning of words.  At issue was the meaning of the claim term “virtual files,” which the district court construed as meaning “files that appear to be but are not physically stored; rather, they are constructed or derived from existing data when their contents are requested by an application program so that they appear to exist as files from the point of view of the host device.”  Slip Op. at 21.  This construction, in the district court’s eyes, limited “the “virtual files” of the “virtual file system” to files “not physically stored on the interface device,” whose content is data “originating from the data transmit/receive device.”  Id.

In reversing the district court’s construction, the Federal Circuit began with its —not the district court’s—ordinary meaning.   “‘Virtual’ conveys some kind of as if action, one thing emulating another; the term was prominently used that way in the computer field at the time of the inventions here.  See CardSoft v. Verifone, Inc., 769 F.3d 1114, 1117–18 (Fed. Cir. 2014) (discussing Java Virtual Machine in patent dating to 1998).”  Slip Op. at 22.  With this meaning as the starting point, the CAFC concluded that the patent identifies this emulation as not turning “on whether data in a ‘virtual file’ is physically located in the interface device or a data device when the host seeks it.”  Id.

The district court, however, relied on a different source for its starting meaning:

The 1993 New IEEE Dictionary defined the term similarly to the construction proposed by the Camera Manufacturers. In the context of a “virtual record,” “virtual” was defined as: “a record that appears to be but is not physically stored; rather, it is constructed or derived from existing data when its contents are requested by an application program….The Court adopts the definition from the New IEEE Dictionary as the most clear and pertinent….”

In re Papst Licensing GmbH & Co. KG Litig., 670 F. Supp. 2d 16, 60 (D.D.C. 2009).  It’s unclear why the Federal Circuit didn’t address the district judge’s choice of starting meaning, substituting its own with no explanation of why.  It’s also not clear to me that the different starting point really matters for the ultimate issue of whether the claim term excludes files stored on the interface device.  But this kind of dispute, where a district judge relied on an extrinsic source for its starting point when construing a claim term, seems to be one that parties will try to make hay with in future appeals on claim construction.

*I’m using “starting meaning” to refer to the meaning that the party construing the claim term begins with; it may or may not be the “ordinary meaning.”  For some words, that may be our individual “mental lexicons,” as Kristen Osenga has described ; for other words, those meanings may come about when we look up the word in a dictionary.  For court opinions on claim constructions, the court will sometimes, but not always, state what it’s using as the starting meaning for a term.  Here, the Federal Circuit started with its meaning from the cited case, while the district court began from the point of the IEEE dictionary and the OED.

77 thoughts on “In re Papst Licensing: Federal Circuit Speaks on Claim Construction

  1. OT but I know you guys want to hear about this:

    BREAKING: Fed. Circ. Backs PTAB In 1st AIA Appeal Ruling
    In its first-ever ruling in an appeal of an America Invents Act review decision, the Federal Circuit on Tuesday affirmed that a navigation system is invalid and held that the Patent Trial and Appeal Board’s claim construction standard is correct and that decisions to institute AIA reviews cannot be appealed.

      1. anon, no.

        And it really annoys me that the Federal Circuit constantly uses very broad language in its decisions so that they may apply to cases not before them.

    1. On the latter point, 6, Cuozzo challenged the PTO’s institution of some claims on grounds not alleged in the petition. This seems to be a determination made under 314(a). This is significant. The holding is mere dicta decisions made under 315.

      Moreover, the Court also held that mandamus was available for the PTO exceeding its jurisdiction — but only after a final written decision? This actually makes no sense. The Supreme Court will have a another dance with the Federal Circuit if someone choose to raise the issue.

      1. “Moreover, the Court also held that mandamus was available for the PTO exceeding its jurisdiction — but only after a final written decision? This actually makes no sense.”

        I totally agree with you there, that it makes no sense. But then, the statute itself might be driving that nonsense.

        1. 6, this reminds me of the Federal Circuit en banc case that held that one can have inducement infringement without anyone being liable for direct infringement. That absurdity was the direct result of the prior incorrect decisions about multiparty infringement.

          Here the Federal Circuit apparently had previously ruled that mandamus is not available when an institution decision is made, but they appeared to realize that if a decision to assert jurisdiction where none exists in fact is not appealable at all to a federal court, then the statute is rendered unconstitutional. See e.g., Crowell v. Benson, 285 U.S. 22, 56-57 (1932).

    2. Regarding use of BRI in IPR’s:

      There is no indication that the AIA was designed to change the claim construction standard that the PTO has applied for more than 100 years. Congress is presumed to legislate against the background of existing law where Congress in enacting legislation is aware of the prevailing rule. As we held in GPX International Tire Corp. v. United States, “the principle of legislative ratification is well established. In the case of a widely known judicial decision or agency practice, Congress is presumed to be aware of an administrative or judicial interpretation of a statute and to adopt that interpretation when it re-enacts a statute without change.” 666 F.3d 732, 739 (Fed. Cir. 2011) (internal quotation marks and citations omitted),
      superseded in part by statute as recognized in 678 F.3d 1308 (Fed. Cir. 2012); Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 108, 110 (1991); Procter & Gamble Co. v. Kraft Foods Global, 549 F.3d 842, 848–49
      (Fed. Cir. 2008) (improper to presume that congress would alter the backdrop of existing law sub silentio).

      Take it to the bank.

    3. Some of the history’s lamest ever claims at issue here:

      A speed limit indicator comprising:

      a global positioning system receiver;

      a display controller connected to said global positioning system receiver, wherein said display controller adjusts a colored display in response to signals from said global positioning system receiver to continuously update the delineation of which speed readings are in violation of the speed limit at a vehicle’s present location; and

      a speedometer integrally attached to said colored display.

      Lookie, mommy! Colors! Super impressive techno stuff. It’s like rocket science, except there’s no science … but the rocket is really really sparkly!

      This part is hilarious:

      Claim 10 includes the following limitation: “a speed-ometer integrally attached to said colored display.” ’074 patent col. 7 l. 10. Cuozzo argues that the board improper-ly construed the phrase “integrally attached.” The Board construed “integrally attached” as meaning “discrete parts physically joined together as a unit without each part losing its own separate identity.” J.A. 9. Cuozzo contends that the correct construction of “integrally attached” should be broader—“joined or combined to work as a complete unit.” Appellant’s Br. 33. Before the Board, Cuozzo stated that its construction would cover “a display that both functionally and structurally integrates the speedometer and the colored display, such that there only is a single display.” J.A. 10. Cuozzo argues that the Board’s claim construction improperly excludes a single-LCD embodiment of the invention wherein the speedome-ter and the speed limit indicator are on the same LCD.
      The phrase “integrally attached” was not included in either the specification or the claims as originally filed. ….

      The word “attached” must be given some meaning. As the Board explained, it would “be illogical to regard one unit as being ‘attached’ to itself.”

      You have to read that passage a few times before you appreciate that it isn’t one giant joke. Well, it is a joke on the public that the patent ever got out of the patent office in the first place but let’s not dwell on it.

      Instead, let’s celebrate one of those rare moments when the Federal Circuit manages to prove that it wasn’t born yesterday while examining some super fangled computer-implemented “technology”:

      Cuozzo also argues that there is no motivation to combine Aumayer, Evans, and Wendt because Aumayer is an automatic device while Evans and Wendt are manual devices. However, “[a]pplying modern electronics to older mechanical devices has been commonplace in recent years.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007).

      No kidding, CAFC. Welcome to earth.

      1. MM, I will accept your characterization of the claims and the obviousness case. I think it colored the court’s view of this litigant on purely legal issues. They did not want this litigant to win on any ground.

        1. Ned: I will accept your characterization of the claims and the obviousness case. I think it colored the court’s view of this litigant on purely legal issues. They did not want this litigant to win on any ground.

          This is a recurring theme in our patent system, isn’t it?

          Query whether the habit of cheerleading patentees with severely faulty claims is a habit worth breaking, much less the habit of cheerleading patentees while willfully avoiding or squelching any discussion of the underlying merits of the claims.

          I’m not referring to you, Ned, but rather to some other prolific blogers who gleefully line up behind whatever patentee comes to town with some sexy “issue” with the potential to expand patent rights or defang the PTO, regardless of the fact that the patentee shouldn’t have gotten past the front door in the first place.

      2. Jus so ya know, this was in fact an apparatus claim. The colored display was like a colored piece of plastic that rotated by a motor.

        Yes, let’s laugh at it, because I know that I’ve seen a read about such a speedometer so many times. Oh wait, I haven’t, and neither has MM.

        Look like, once again, Milly doesn’t know what time of day it is……

        1. You are correct, as pointed out, e.g., by this part of the patent:

          “This is accomplished by the control unit rotating the red filter disc 54 to the appropriate degree.”

          Although it also says:

          “And although a red filter disc has been described, it should be appreciated that the colored display herein described could also take the form of a liquid crystal display.”

        2. The colored display was like a colored piece of plastic that rotated by a motor.

          Right. And using an old analog display to display stuff is, like, totally different from using an old electronic display to display stuff.

          The patent system cares very deeply about micromental “innovations” like this. I’m glad you’re on top of this huge scandal.

          Milly doesn’t know what time of day it is……

          I sure do because of the clock I invented. It’s just like every other clock except it’s “continuously updated” with a POWERFUL COMPUTER BRAIN and the seconds change color when it’s my dog’s birthday. Promote the progress!

          1. Lol – this is a perfect example. There is nothing about a computer brain in this invention. You have truly indicated to everyone you are so far off the deep end you cant even see the shore. Lol!

            It’s like you lost (or never had) the ability to even read a claim. Here is patent law 101- a new device (pure structure) for doing the same thing as another old as the hills device is . . . wiat for it . . . patentable! Dudette, have you forgotten patent law 101?????!!!

            1. “Lol – this is a perfect example. There is nothing about a computer brain in this invention.”

              I thought they said that in this invention they read GPS signals to continuously update what the speed limit is to be displayed to you. I think such an operation might require at least a small compooter brain.

            2. “Fried”: There is nothing about a computer brain in this invention.

              Pretty sure the magical “controller” which accepts data and “adjusts” the output covers an integrated circuit, if not a microprocessor. Not to mention “said speed limit locating device comprises … a database of locations and their corresponding speed limits which is accessible by said display controller.”

              a new device (pure structure)

              Because you say so! What’s the new distinct “pure” structure of this “controller”? Describe it in structural terms for everyone.

              Dudette

              Funny stuff. You just gotta love the guys who never saw a claim they couldn’t embrace and defend. They never fail to disappoint. Keep it up, “Fried Brain”!

              Just fyi: U.S. Pat. No. 5,485,161 to Vaughn discloses a vehicle speed control based on GPS/MAP matching of posted speeds. However, the Vaughn ‘161 patent does not display the current speed limit,

              Lookie! A shiny display! Super techno!

  2. virtual “a record that appears to be but is not physically stored…it is constructed or derived from existing data when its contents are requested by an application program … .”

    The dist. ct.’s source is basically fine. They just read it wrong. It would be better if it read “not necessarily physically stored.” But still, this definition does not preclude the “existing data” from being “the file” stored. Merely that the virtual file means it could be other things.

    1. I would say the Dist. Ct.’s claim construction evinces a complete ignorance of technology and science.

      Chen was on the panel and that is probably what saved this. The writer of the opinion is a Google judge.

    2. Night, if the district court got it wrong (reading the dictionary definition) then why shouldn’t the Federal Circuit reverse based on clearly erroneous standard?

      Perhaps the patent owner never raised this in their briefs because Teva was just decided?

      1. I don’t know Ned. But, the dist. ct.’s decision was clearly erroneous. The dist. ct. is obviously incapable of applying simple logic to a technical definition.

  3. Prior art (as stated by FC): Hosts can connect to multiple other devices; Hosts sometimes have pre-installed drivers, including pre-installed camera drivers; When a camera connects to the host without a camera driver, a camera driver must be installed.

    Invention: Host, with pre-installed camera driver. Relabel host “interface device.” In pictures, draw it smaller.

    or conversely –

    Prior art: translation software that converts known computer command into known hard drive command, and back; translation software that converts known computer command into known camera command, and back.

    Invention: translation software that converts known computer command into known hard drive command, translation software that converts known hard drive command into known camera command

    See, I didn’t know that while you can translate english into french or german, it is non-obvious to convert english into french and then convert french into german. Now I know.

    I was discussing KSR on the other thread, and it’s applicable here again: Obviousness only requires that the PHOSITA be enabled to make a change, and that the change functions as the art would expect it to. This is textbook obviousness. In fairness, the patents are pre-KSR patents.

    1. ” Obviousness only requires that the PHOSITA be enabled to make a change, and that the change functions as the art would expect it to.”

      Fortunately for the rest of us, at least some of the APJ’s know you’re “understanding” of “textbook obviousness” is dead wrong.

      link to e-foia.uspto.gov

      1. Your cited PTAB case doesn’t really arrive at the conclusion you think it does. The examiner in that case attempted to provide a motivation to combine, but failed in doing so, instead only describing the results of the combination. (Unfortunately, this and other misconceptions concerning motivation show up every now and then among some examiners.)

        Meanwhile, RandomGuy was talking about rejecting claims not on the basis of motivation (or, as the cited PTAB decision says, a “reason for making [the combination]”), but instead on the same basis that the Supreme Court gave in KSR:

        “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (127 S.Ct. 1727, 1739)

        RandomGuy said the same thing in a roundabout way. The reason why this didn’t avail the examiner in the cited PTAB decision is because the examiner still needs to explain the rationale supporting the combination, but didn’t.

        1. The examiner in that case attempted to provide a motivation to combine, but failed in doing so, instead only describing the results of the combination.

          Careful with our language here. The Examiner did not explain why one of ordinary skill in the art would be motivated to make the combination. The board mistakenly thought that was required. The examiner described the results of the combination, that it would perform as it was expected to perform. When old things perform the way they are expected to perform in a combination, with no change in function, that is enough for obviousness.

        2. Some folks [including some tech media reporters] see claims like this in a Fed. Cir. decision, and cannot understand how they survived a KSR 103 POSITA obviousness attack. The usual reason is that they didn’t. In the majority of cases getting to the Fed. Cir. these days validity has never yet been litigated anywhere. That is, the case was decided below solely on non-infringement [based on the District Court’s claim scope determination] or 101 so the Fed. Cir. cannot even address validity issues. Summary judgments based on 103 are rare, and often not sustained on appeal by the Fed. Cir. due to alleged disputed facts needing a full blown trial [notwithstanding that KSR itself was such a summary judgment].

          1. They are rare because a 103 defense is a million bucks- experts required, the full panoply regardless of how simple or “obvious” the situation may be.

            Its the crux of the problem with software patents. When known elements behave in expected ways, they are obvious, but there are myriad ways to code virtually any software function. The patent system was not built to make what amounts to literary criticism….

            1. “Its the crux of the problem with software patents. When known elements behave in expected ways, they are obvious”

              No, it’s a crux of all patents. We’re dealing with a technology-neutral system of rules to segregate things worthy of a legal right, and things that aren’t. What you say can be applied to anything … chemicals, gears, circuit elements, etc. Singling out software suggest that you have a purpose other than a fair legal system. Like, maybe, being able to copy the creative inventions of others?

              1. HierarchyOfPontificationBuckets, virtually all of the trouble is with software patents. All of the other arts, even Pharm, have but a tiny fraction of the controversy, as measured by reversal rates, invalidity rates, and sheer complaints of people from all sides feeling that something is seriously broken. If you retort by saying that’s because all the latest “innovation” is in software, the argument fails because the problems in software are proportionally far greater when adjusted for volume.

                Denial of the problem will not make it go away. anon’s comfort in NEW MACHINES and PRINTED MATTER and UTILITY will not make it go away.

                There are hundreds of thousands of invalid software patents, each a timebomb waiting to mess up somebody but good, and something will be done about it.

                1. I don’t disagree with you assessment, based on firsthand experience. The point, however, is that a foundation of patent law is that the rules should be technology neutral. Like all laws, the patent laws ultimately go to human behavior and activity. For instance, whether something new is sufficiently technically creative depends on human experience and opinion — a black letter rule would be nice, but is not possible. As soon as you start to single something out for “special treatment”, you end up with other difficult questions. “What is software?”, for instance.

                  The patent system is already adapting — let it do it’s job. It’s like a learning machine. Over time the rules and precedents reflect collective experience and, in theory, provide better outcomes.

                  As to the complaints, some are legitimate, and some are from people who want information to be “free”, or who simply want to operate in a web of human activity without having to take into account how their actions might affect other people linked by the strands of that web.

              2. I disagree, the rules are the same but the important issue (predictability) varies by the art. Software is perfectly predictable. The program you run the first time is the same program run the 100th time. Chemistry is not so – the reaction you get in one context is not the reaction you get in another context, even if its the same combination.

                1. Software is perfectly predictable.

                  HAHAHA…

                  Keep on broadcasting your ig norance of the real world my friend.

                  First off, it is NOT the end product for which your “predictability” pertains.

                  Second, maybe you can help Prof Crouch with his recent software technical difficulties since you think some “perfect predictable ness” exists.

                  Third, your obsession with predictability just does NOT translate to the legal points, no matter how much you wish to believe otherwise. Your “version” of the law is just a fantasy version, and you need to come back to this reality.

        3. APJ Greenhut in Ex parte Horst: the Examiner states: “It would have been obvious to one of ordinary skill in the art at the time of the invention was made to utilize in Foyn, a suspension frame and the segments suspended from the suspension frame, as taught by Hardin or Kongsgaarden, for the purpose of suspending the holder.” [emphasis added by MM]

          This statement is conclusory. At best, it describes the results of the proposed combination, as opposed to articulating a reason for making it.

          Greenhut blew it.

          Foyn teaches: an electrode holder

          Hardin/Kongsgaarden teaches: suspension frame and segments suspended from the frame

          Motivation to combine (aka rational “purpose” for making the proposed combination): suspend the electrode holder

          Seems like more than enough for a prima facie case (I don’t see any dispute in the record that any claim elements are missing from the references).

          Certain applicants seem to have a relentless desire for hand-holding throughout the examination process. If the Examiner lets go of their hand for one moment — even if they are walking along on the legal equivalent a brightly lit sidewalk — the applicant will break down and pretend to be incapable of moving forward or understanding what it happening. The behavior is well documented and the reasons for it are well understood.

          Maybe the PTO should use a form with a box for entering in the “motivation to combine” so applicants arent confused about the prima facie case that is being made. Then applicants can actually move the prosecution forward by showing the Examiner the unexpected results that were disclosed in the specification as filed.

          Of coures, that magical “module” with the fancy function that always works can’t be relied to overcome the prima facie case because those magical “modules” never function unexpectedly. How could they? They are defined by ther functions. Meanwhile, every undescribed information processing “functionality” is treated like it’s the AIDS vaccine because making software that works is super duper hard.

          This is going to be such a fun year.

          1. Sorry, you’re wrong. It IS conclusory. Motivation answers the question: Why? Where in the prior art is this question answered? Why would you want to suspend the electrode holder? Saying “to suspend the electrode holder” simply begs the question, i.e., is conclusory.

            1. I am not a fan of your thinking.

              In printers, I may say that it would have been obvious to combine a feature because it increases the pages per minute that can be printed. That may be a direct quote from the secondary reference. But according to you, that is not enough. You want me to say “why” increasing the pages per minute is desirable. Well, it increases efficiency. But “why” is increased efficiency desirable? It improves profitability. But “why” is improved profitability desirable? It keeps the company in business and makes the CEO richer. But “why” is this desirable?

              See? You can always ask one level deeper of “why.” I think the appropriate question is whether one of ordinary skill in the art would recognize an appropriate “why” from the statement given by the Examiner. I’m not familiar with the art in this case, but if an ordinary artisan would recognize that “suspending the electrode holder” was desirable for some reason, even if not explicitly stated, then the Examiner has made his case.

              1. ” I’m not familiar with the art in this case, but if an ordinary artisan would recognize that ‘suspending the electrode holder’ was desirable for some reason, even if not explicitly stated, then the Examiner has made his case.”

                That’s a pretty big “if.”

                Would you agree that “if” the examiner can’t establish, by a preponderance, that an ordinary artisan would recognize that suspending the holder was desirable for some reason (there’s that word again!), then the examiner has not made his case?

                1. Examiners really just look for evidence on one side of the scale, so it usually tips their way. It is up to applicant to find evidence to the contrary.

                  So yes, I think the Examiner would have made his case, which could be overcome by a strong showing by the applicant.

                2. Why does it have to be a strong showing? The examiner’s burden to establish a reason to modify/combine the prior art is a preponderance. So if the applicant’s evidence and/or arguments that there is no reason to modify/combine are more persuasive, even by the teensiest, weensiest l’il bit, the claim is non-obvious.

                3. You are correct, “stronger” is what I meant, not a “strong” case.

                  By the way, maybe you should clue in some of the supervisors and primaries about the “preponderance of the evidence” standard. Many of them seem to believe in more of a “beyond a reasonable doubt” standard, which makes it hard for juniors to allow much.

                4. “By the way, maybe you should clue in some of the supervisors and primaries about the ‘preponderance of the evidence’ standard. Many of them seem to believe in more of a ‘beyond a reasonable doubt’ standard, which makes it hard for juniors to allow much.”

                  I do in every response. I point out the error(s) in the OA exactly as Rule 111(b) requires. When the examiner’s case is based on a faulty factual determination(s), I state explicity which one(s) and why their evidence and/or arguments are not persuasive by a preponderance. I have no doubt that many of the SPE’s and primaries read my response and say, “Heh? What’s this legal mumbo jumbo? Pre, pre, preponderance? Wuz dat?”

            2. You’re misconstruing the subject of the “Why” the Why question is “Why would you modify the system of Ref A with the teaching of Ref B?” and the answer is because the art appreciates that the structure described in Ref B can suspend things. You are NOT required to answer the question “Why would you want to suspend the holder?”

              1. The fact of the matter Random is that your thinking – as reinforced here with being off on the “why” question – is simply too shallow.

                You really don’t seem to grasp this – you are quite literally taking a 102 universe of prior art view and attempting to use the entirety of that in a de facto way with 103. Your statement here of “the art appreciates” is being assumed by you in the very conclusory manner that others here are trying to point out to you, but you are not listening. Your answer on the other thread reflects this as well (you said something to the effect of ‘well yes obviously, it is a PHOSITA standard. That’s not what we’re discussing.” -but it very much IS an important part of the discussion and IS a part that you are glossing over far too quickly (and it is your glossing over that is stopping you from understanding here).

                There is no need for you to repeat your position in response, as you have done several times now. All that does is reinforce your view that you are not mistaken, while you in fact remain mistaken. In analogy, all you are doing is clenching ever tighter your eyes and chanting “I just don’t see it.”

                1. you are quite literally taking a 102 universe of prior art view and attempting to use the entirety of that in a de facto way with 103

                  No, I am not. A 102 universe is anything that exists. A 103 universe is a universe of knowledge to a PHOSITA in a particular field, but IF you’re going to admit that the field knows about two things, then yes it functions similarly. You have to apply Graham. But you’re glossing over (or perhaps intentionally calling attention to) the important IF there. But in the cited decision the board explicitly found the very thing needed – the art knew about the structure that was missing from the first reference:

                  As Appellants correctly point out, the fact that references relate to the same technical field (Ans. 9) does not, without more, demonstrate the obviousness of their combination. The relevant technical field relates to the scope and content prong of the Graham analysis.

                  The Appellants admitted that the distinction you’re trying to draw doesn’t exist. Similarly, in the other thread, it was a given by MM that the references were in the same field.

              2. “You are NOT required to answer the question ‘Why would you want to suspend the holder?'”

                Of course you are. If the “answer” to the factual inquiry into whether there was a reason to modify and/or combine the prior art was, “It’s obvious to use a suspender to suspend things” then the factual inquiry would become a dead letter. And the result would be exactly what the Supremes said can not be done, which is to conclude, per se, that a claim composed of several elements is obvious merely by demonstrating that each of its elements was, independently, known in the prior art.

                1. If the “answer” to the factual inquiry into whether there was a reason to modify and/or combine the prior art was, “It’s obvious to use a suspender to suspend things” then the factual inquiry would become a dead letter.

                  Not for non-obvious combinations. If the art knows how to use a toaster for toasting, and you use a toaster to power a nuclear reactor, your use of the toaster is non-obvious. Using a toaster to toast is obvious, regardless of if the art can be shown to specifically desire toast. Invnetion is using known things for unconventional purposes. Using known things for conventional purposes is always obvious.

                  And the result would be exactly what the Supremes said can not be done, which is to conclude, per se, that a claim composed of several elements is obvious merely by demonstrating that each of its elements was, independently, known in the prior art.

                  A system comprising a piece of bread and a toaster (known elements) where the bread is inserted into the toaster is obvious. A system comprising a piece of bread and a toaster wherein the bread powers the toaster is not. Knowing elements is insufficient. Knowing elements that are used in their standard ways is sufficient.

            3. Motivation answers the question: Why?

              A) Motivation is not necessary

              B) The question that needs a rational answer is a Why question, but the subject is different than you think – “Why is this obvious?” and the answer to that is because there was a structure known to the art (the frame) that was known to be capable of performing just the function claimed (suspending an object). If I use a toaster to make toast, it’s not begging the question to ask why I’m using the toaster. I’m using the toaster because its known to make toast.

              The prior art doesn’t have to answer why I would want toast.

          2. (MM) “I don’t see any dispute in the record that any claim elements are missing from the references.”

            I assume then that by “any dispute in the record” you refer only to the PTAB decision.

            The rest of the record, check appeal brief, reply brief, shows the appellant first argues that even if properly combined, there are missing elements, then goes on to attack the rationale for combination.

            Or to put it in the language used, “lacks many important and recited features”. I would not have argued about whether the missing features were “important” – just state that they are not present in the combination.

            They also did not do a great job of closing the loop on the missing features; on a brief read through, I don’t think they clearly argued that all references both individually and as combined in the manner set out by the Office was absent those features.

            The PTAB decision did not mention any of the argument about missing features. Like most of the ones I see/get, they just seem to latch onto the easiest thing they think is a decision point and run with it.

            A lot of decisions just say, “Affirmed/Reversed; Wut He Said” (“He” here referring respectively to the Examiner or Appellant).

            1. “…closing the loop on the missing features; on a brief read through, I don’t think they clearly argued…”

              Uhg, sorry. Sappy pun unintended.

            2. Thanks for the details, Mellow. Your assumption was correct — my focus was/is on the motivation question and not on the merits of the claims as a whole.

      2. That’s why some people are only APJs rather than Examiners I guess. Greenhut and Co. shouldn’t take it so hard, the CAFC got it wrong too.

        From the opinion:

        Although the Examiner is correct regarding the issues of claim constructions raised in this appeal (see App. Br. 8–9, 11–13; Ans. 7–8, 9–10), it is not enough to simply show that the references disclose each
        element of a claim; in addition, it is important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements in the manner set forth in the claim.

        That is quoting a section of KSR. Let’s quote the entire section for context:

        When it first established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals captured a helpful insight. See Application of Bergel, 48 C.C.P.A. 1102, 292 F.2d 955, 956-957 (1961). As is clear from cases such as Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.

        Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents…when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs.

        The use of the test as a per se rule is wrong. The board here used it as a per se rule. They err.

        The correct citation was a few paragraphs up:

        For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.”…This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

        And from the Board:

        Regarding a reason for combining the references, the Examiner states: It would have been obvious to one of ordinary skill in the art at
        the time of the invention was made to utilize in Foyn, a suspension frame and the segments suspended from the suspension frame, as taught by Hardin or Kongsgaarden, for the purpose of suspending the holder. Ans. 5. This statement is conclusory. At best, it describes the results of the proposed combination, as opposed to articulating
        a reason for making it.

        In other words, the Examiner holds that the suspension frame would function in the combination in precisely the manner the art expected it to (it suspends). It is an “[application] for a combination which only unites old elements with no change in their respective functions.”

        Come on APJs, the FC doesn’t set a high bar to beat them, you can do it!

        1. By the way Board, there is one way to make a conclusory statement on obviousness: A and B together teach all the limitations, therefore the claim is obvious.

          Saying (structure that is named suspension frame because that is what it normally does) would be used here to suspend the holder is not conclusory, any more than it is conclusory to say “I am using this toaster to make toast.” There’s a ton of other things that you could use a toaster for, not the least of which is a paperweight. A system where a toaster is used as a paperweight could be (but probably isn’t) non-obvious. A system where a toaster is used to make toast is always obvious, and the Examiner doesn’t have to say “because one of ordinary skill in the art would find that toast is warm and delicious and a perfect place for jelly to lay” to make it so.

        2. “…it is important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements in the manner set forth in the claim.”

          Manner?

          I don’t see how KSR can apply even if the art teaches the elements if the art does not teach the “manner.”

          Take a process. The steps A B C and D are all old in the art. The art teaches A, then B, then C, then D. The invention teaches B, then A, then C, then D. The result is an improved process.

          How can the examiner legitimately reject the claim as obvious by saying that all the elements are known, and their function in the combination is familiar, etc., when the invention is not in the elements, but in their arrangement, their manner?

          1. I believe in your scenario that an Examiner would have a prima facie case of obviousness based on rearrangement of parts.

            The attorney could then rebut, showing that the results were unexpected, that the order B-A-C-D provided some synergy not present in A-B-C-D.

            It is not the Examiner’s job to mentally step through both sides of the prosecution and come to a result before issuing the first office action. Even if the Examiner suspects that the Applicant will argue unexpected results (or otherwise overcome the rejection with arguments, a certified translation, etc.), the Applicant must actually make those arguments on the record.

          2. Let me flip sides for a moment and ask Ned what he thinks about jigsaw puzzles.

            (alas, even that analogy is not one that can or should be applied too strictly, as many times the best way of putting a jigsaw puzzle together is to expressly rely on hindsight of a certain fashion – looking at the completed picture on the box.

            The takeaway here from KSR (and even from the recent Thomas opinion in Teva), is that OFTEN even the Supreme Court (especially?) simply mucks things up more than they help clarify.

            Even if they don’t use the Socratic method.

          3. The phrasing quoted is just the FC rewriting what the Supreme Court wrote. “Manner” has nothing to do with it, you’ll notice that the “manner” language replaces the “in the way” language of the Supremes. The idea is the idea expressed in KSR. Even if that wasn’t the case, if the FC speaks on the same issue that the Supreme Court does the SC speaking controls.

            1. OK, Random, but if the elements are alleged to operate the same way they always did in the combination, and the combination as a whole operates in the same way, etc., isn’t there a requirement that the facts and argument of the proponent of the proposition actually prove this to be true in some fashion? Otherwise, without such proof, the KSR becomes a mantra that one recites that effectively finds claims obvious if all the elements are in the prior art.

              1. if all the elements are in the prior art

                Which is exactly the type of blanket statement that KSR said NOT to make.

                Clearly Ned, Random’s view cannot be sustained.

              2. OK, Random, but if the elements are alleged to operate the same way they always did in the combination, and the combination as a whole operates in the same way, etc., isn’t there a requirement that the facts and argument of the proponent of the proposition actually prove this to be true in some fashion?

                Well that would be self-evident wouldn’t it? I mean the applicant likely doesn’t build the element in a combination from the ground up, he’s relying upon the previous enablement in the art. If you’re going to be using the same thing the art already knew, and the art knows it will function in a certain way, then the only facts on record are that it would achieve the range of results the art would expect it to achieve. I think the burden is on the applicant to say “in this particular situation it functions like this rather than the normal fashion.” Does that change after issuance? Possibly. But it appears like the presumption after issuance is a legal presumption, and I don’t know how you come to the opposite conclusion about an extrinsic fact (what the art would expect to result) without introduction of fact by the patentee.

                Let’s take a particular example: If I have a glass and I fill it with water and then ice, the art would presume that the resulting mixture would not be substantially different than if I filled the glass with ice and then water. Conversely, if I fill that glass with a base and then an acid, the art would find the reaction of adding the acid before the base to be totally different. In both situations I feel like the knowledge of the art controls – the examiner can’t cite the base/acid combination to an acid/base combination (at least without further relying upon “obvious to try” reasoning), but could cite the water/ice to ice/water without anything further, and it is up to the applicant to provide evidence that things are different from what’s expected.

                This, of course, presumes that the spec is silent on the issue. If the spec were to specifically say “Normally you’d expect the reaction to be at 300C, but it’s at 500C” now it’s probably incumbent on the examiner to show that the art would have posited the 500C result, and the applicant could win on argument alone if the examiner didn’t.

              3. I’ll say this though Ned, I view ABR as being very instructive against the motivation mentality, and there the court did point out that:

                There is uncontested evidence that the presence of the radiant-heat burner in the same machine with the other elements is not critical or essential to the functioning of the radiant-heat burner in curing the problem of the cold joint. For it appears that a radiant-heat burner operating in a tandem fashion would work as well.

                So that court did have evidence to go on. You might be right. I recall a case about extending a counter top which had no evidence though, I think.

        3. Random,

          I would be sincerely interested in your view as to why the Court used the words “is likely to” as opposed to the words “must be“.

          I view your position as analogous to a “must be” position, one the Court simply did not take.

          1. I would be sincerely interested in your view as to why the Court used the words “is likely to” as opposed to the words “must be“.

            The statement you are referring to is the following, correct? “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”

            They proceed to give an example in the very next paragraph: US v. Adams:

            “The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” <— Restatement of above, with the known method being substitution

            "It nevertheless rejected the Government's claim that Adams's battery was obvious. The Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious."

            In other words, the combination was insufficient because while the result could be expected (it functioned like any other battery when you applied simple substitution) the enablement part of the combination was taught away from, and Adams corrected the art on it.

            The court then discusses ABR (directly on point here, because there the evidence was that the art WOULDN'T be motivated to combine, and it was still found obvious because machines were just performing their functions) – There the court elucidates the rule of synergy, what is often referred to as "unexpected results" or "unexpected benefits". Art may know the general character of the results, but this combination is notably greater than was expected.

            Those are the times when you have all the elements but still have non-obviousness: The combination couldn't be done, or the combination that could be done reached results of a different character than what was expected.

            That's why I say (and here its me, not the court) that obviousness is a matter of predictability. If one of skill in the art thinks that doing A will lead to B, and in fact doing A does lead to B, then it is an obvious act, regardless of WHY one would choose to achieve B. When the cause/effect predictability becomes tenuous in some manner, either because the combination isn't enabled, preventing the art from applying the cause, or because the effect is unexpected to a sufficient degree, the combination becomes non-obvious. (You can see this is notably more likely in some arts than others) It is true to bolster a case you can apply TSM – that in addition to the cause/effect, the art desires the effect, as that makes it more clear the cause/effect link would fall within a PHOSITAs knowledge, but here the board admitted that under the Graham backdrop the art already knew about suspension frames, making the point of that test (under the Supreme Court's view) fulfilled. Well if your art knows about something, and the thing is doing what it does, your art isn't learning anything – it's obvious.

            I view your position as analogous to a “must be” position, one the Court simply did not take.

            My position on this case doesn’t need to involve this statement at all. It would be enough to quote what I quoted for a reversal.

            My general position is that most people mistarget the obviousness question – they ask why a rational person (that person being a PHOSITA) would do something, but the actual question is would the art appreciate what would result if they did do it.

            1. You really do seem unable to comprehend that your general view is wrong because it is simply too shallow.

              When pressed here, you dive down a layer and it is quite evident that the question is just far more involved than your general view provides. Likewise, your obsession with predictability is off kilter. You simply are trying too hard to shortcut the analysis and reach the endpoint that you want to reach, without giving proper credit to what is going on. The fact of the matter remains that the Court did NOT use a “must be” in the quote that YOU want to use to bolster your position. It is quite incorrect for you to say “doesn’t need to involve this statement” – for the very reason why the statement highlights the shortcoming of your view.

              To use another analogy, you implicate the case on point, then want to turn around and say “pay no attention to the man behind the curtain,” but Toto has already pulled that curtain aside, and it is obvious [pun intended] that your position falters as being too shallow.

              (as to “predictability,” see my comment on the Prof Hricik side of the blog today).

              1. “You simply are trying too hard to shortcut the analysis and reach the endpoint that you want to reach…”

                That’s exactly the fault in his “analysis.” It essentially collapses two separate factual inquiries (1. is there a reason to modify/combine and 2. is there a reasonable expectation of success in modifying/combining) into one. He concludes that because it is “predictable” (i.e. because there is a reasonable expectation of success) there is a “reason” to modify/combine. He puts the cart before the horse.

              2. The fact of the matter remains that the Court did NOT use a “must be” in the quote that YOU want to use to bolster your position.

                Hahaha, yeah that is true, the court simply said likely. You seem to forget that likely, without more, is sufficient to uphold the examiner’s rejection at the office level.

                I have already explained my position beyond this case. I can only point out error in the cases brought before me – this was wrongly decided, and Plas Pak was wrongly decided because they do what the Supreme Court said they cannot. Other cases will also be wrongly decided because they apply a standard the Court explicitly said you cannot apply. Other cases will not apply that standard and will be judged on different merits.

                1. “You seem to forget that likely, without more, is sufficient to uphold the examiner’s rejection at the office level.”

                  The problem though is that you’ve made it quite clear that, at least in your view, there is nothing “more” that is “sufficient” to change your mind that if all the elements are known then it’s “obvious” to combine the elements as long as the “result” or the “effect” is “predictable.” But you’re required to weigh the evidence and arguments on both sides of each factual question that needs to be resolved.

                2. there is nothing “more” that is “sufficient” to change your mind that if all the elements are known then it’s “obvious” to combine the elements as long as the “result” or the “effect” is “predictable.”

                  And the art was enabled to do the combining (rarely a raised issue, as the applicant rarely enables the combining himself), and the art had not taught away from the combination. Those are the major classes. Plus the predictability of the art is only perfect in particular situations (software for example) so there’s often an argument that could be made over that (especially in chem/bio). There might be further particular cases where something could be introduced that would change my mind, as each case is decided on its own. But generally yes, combining things known to the art which are used for their known purposes is obvious. Using known things for their known purposes doesn’t advance the art, no matter how many known things you do it with.

  4. For additional context, the patent troll’s ridiculous claim is reproduced below.

    Remember: this is a claim to a device. Try to believe what you are abut to read:

    1. An interface device for communication between a host device, which comprises drivers for input/output devices customary in a host device and a multi-purpose interface, and a data transmit/receive device, the data transmit/ receive device being arranged for providing analog data, comprising:

    a processor;

    a memory;

    a first connecting device for interfacing the host device with the interface device via the multipurpose interface of the host device; and

    a second connecting device for interfacing the interface device with the data transmit/receive device, the second connecting device including a sampling circuit for sampling the analog data provided by the data transmit/receive device and an analog-to-digital converter for converting data sampled by the sampling circuit into digital data,

    wherein the interface device is configured by the processor and the memory to include a first command interpreter and a second command interpreter, wherein the first command interpreter is configured in such a way that the command interpreter, when receiving an inquiry from the host device as to a type of a device attached to the multi-purpose interface of the host device, sends a signal, regardless of the type of the data transmit/receive device attached to the second connecting device of the interface device, to the host device which signals to the host device that it is an input/output device customary in a host device,

    whereupon the host device communicates with the interface device by means of the driver for the input/output device customary in a host device, and wherein the second command interpreter is configured to interpret a data request command from the host device to the type of input/output device signaled by the first command interpreter as a data transfer command for initiating a transfer of the digital data to the host device.

    The lawsuits giving rise to this absurd Federal Circuit opinion (what else could anyone expect given the claims here?) were filed 7 years ago. The district court’s claim construction issued six years ago.

    Here’s the “new method” described by the patentee in relatively plain English in its specification. Oops — did I say “method”? I meant “device.” Gaze upon the fantastic structure of this truly remarkable $100 million dollar “new” “interface” “device”:

    In the patents at issue, when the interface device of the invention is connected
    to a host, it responds to the host’s request for identification by stating that it is a type of device, such as a hard drive, for which the host system already has a working driver. By answering in that manner, the interface device induces the host to treat it—and, indirectly, data devices on the other side of the interface device, no matter what type of devices they are—like the device that is already familiar to the host. Thereafter, when the host communicates with the interface device to request data from or control the operation of the data device, the host uses its native device driver, and the interface device translates the communications into a form understandable by the connected data device.

    Endless coddling of the lowest form of innovators has turned the US patent system into a sad, broken joke. Here the “innovation” is the brilliant idea to facilitate communication through use of (omg!) a translator. Wowee zowee! Yes , it seems silly and obvious as all heck (not to mention abstract when claimed in purely functional terms) but because computers are involved everybody must throw their brains away and pretend to be born yesterday. Plus look at those words in the claim! “Command interpreter”. That is truly impressive stuff, like something you’d find on the bridge of the USS Enterprise (how many patents did Roddenberry file, by the way?).

    1. …because that attempted h1jack was helpful in discussing the point of this particular thread…

      Oh wait, no it was not.

  5. Right after Teva, the Federal Circuit and a District Court arrive at different constructions that each depend upon extrinsic evidence — outside the record — but this time with the Federal Circuit doing its own fact finding, and not reversing the District Court’s construction as clearly erroneous.

    Simply amazing.

    1. Just like in Plas-Pak, or in any of the Myriad (haha, pun) of cases on 101 pre-Alice, the Federal Circuit just kind of does whatever it feels like regardless of controlling precedent.

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