Teva, Nautilus, and Change without Change

By Jason Rantanen

Rather than just write short blog posts about the Federal Circuit’s recent claim construction decisions, I put together a longer piece that examines both indefiniteness after Nautilus v. Biosig and claim construction after Teva v. Sandoz.  In the essay, I argue that despite an expectation that Nautilus and Teva would have a substantial impact on the Federal Circuit’s jurisprudence in these areas, very little has actually changed either in outcome or in the court’s formal analytical framework.

Nevertheless, I conclude, the potential for substantial change still remains, both for claim construction and indefiniteness.  In a nutshell, I suggest that Teva’s real effect may be to expose a fundamental crack in the Federal Circuit’s claim construction methodology, one that could ultimately result in meaningful change.  And while indefiniteness might appear frozen, there are cracks beneath the surface on which perceptive advocates will inevitably push.

The essay is available here.  As this is a draft, I welcome reasonable comments.

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2585844

64 thoughts on “Teva, Nautilus, and Change without Change

  1. 9

    A useful analysis of Nautilus and its subsequent treatment should consider:

    1. The somewhat vague and grammatically peculiar language at the core of its holding – “its claims … inform … about the scope” (and the irony of that vagueness);

    2. A plain reading of the holding would have definiteness determined for a patent as a whole (contrary to 35 USC 282(a)), so divining a plausible interpretation out of the holding requires taking some liberties; and

    3. The PTO’s BRI standard could not survive a reading of Nautilus that is anything other than a nominal change from the Federal Circuit’s prior caselaw. The “broadest” in the PTO’s “broadest reasonable interpretation” standard presumes the existence of multiple “reasonable” interpretations as a matter of course, so the existence of multiple reasonable interpretations of a claim term (indeed of many claim terms) cannot be reason to find that a pending claim is indefinite (i.e., “fail[s] to inform, with reasonable certainty … about the scope of the invention”). Similarly, as a matter of law, the post-issuance survival of multiple reasonable interpretations which would not cause a claim to be indefinite during pendency cannot be reason to view the claim as becoming indefinite upon issuance. In other words, if BRI is to survive, the only possible impact of Nautilus is that while “It cannot be sufficient that a court can ascribe some meaning to a patent’s claims,” it IS sufficient that a court can ascribe some Reasonable meaning to a patent’s claims. This essentially renders as dicta the Court’s first example in fn. 9 (Hearing Components, Inc. v. Shure Inc., 600 F. 3d 1357, 1366 (CA Fed. 2010) (“the definiteness of claim terms depends on whether those terms can be given any reasonable meaning”)) of how the Federal Circuit had been “falling short” at being “at least ‘probative of the essential inquiry’” on indefiniteness.

    -> The BRI isn’t going anywhere (except in the IPR setting, where IMO it will be eliminated by reversal of In re Cuozzo or by legislation), so the Fed. Cir. is right to avoid investing any substantive analytical reliance on the gossamer of Nautilus.

    1. 9.1

      Gotta love it when scope depends on “reasonable” and validity on “obviousness” to a one of “ordinary” skill.

      Can’t we do better?

      1. 9.1.1

        That “we” is ambiguous ;) Indeed we patent attorneys could do better … unfortunately I doubt the present Justices would be eager to utilize patent attorneys as clerks in the drafting of patent decisions.

  2. 8

    I have enjoyed a rapid first read through the essay. It leaves me with two regrets.

    First, how very unfortunate is the presence in the statute of 112(f). Magic words. M+F Y/N. Endless argument over something very silly. Very sad.

    Second, how unfortunate that the approach to claim construction is not how it is in England. In England the court dons the mantle of the PHOSITA and then asks itself the simple question (to which there is always a straightforward answer) “What was the inventor using the language of the claim to mean?”

    The Essay finishes with the idea that the PTO can help in the quest for sensible claim construction. I suggest that the USPTO could do worse than to ask itself, of each claim it finds itself examining, “What was the writer of this claim using the language of this claim to mean” and then going about its search and examination duties on the basis of its own answer to that question. That, I think, would lay down a file wrapper that would afford pragmatic help to all those who subsequently are required to construe the claim.

  3. 7

    Nice, informative read. On a purely stylistic note, I would suggest cutting and replacing the last paragraph. It doesn’t relate to the rest of the paper.

  4. 6

    It seems clear that the skilled artisan was once routinely considered to have more applied skill and technical knowledge within his mythical life skills. That should include the pragmatic stuff learned in school, knowledge gleaned from technical literature and periodicals along with generic experience gained from things like specifying and ordering parts and components. That nominal body of skill is wider than an art unit.

    Today, ordinary skilled seems too often as meaning ability to interpret ambiguous, indefinite or nonce words, a skill that ordinarily that artisan does not really possess.

    1. 6.1

      the People,

      Did you by chance have a chance to read the link I posted recently to an article on the court’s slippery slope and changing PHOSITA from one of ordinary skill to one of ordinary inventor?

      1. 6.1.1

        anon,

        We recall the post, but not sure were able to read the linked. Can you point us to it again? Thanks.

        1. 6.1.1.1

          Even though Congress took the power of common law evolution away from the courts in 1952, the Court insists on attempting to ever return to a Flash of Genius, even if they have to resort to changing the person of ordinary skill into a person of ordinary inventor.

          See: link to jolt.law.harvard.edu

          1. 6.1.1.1.1

            Interesting article, we’ll have to think about it for a time. The PHOSITA persona must imply more than a proxy for state of the art and before, or maybe it is not needed (even as an interpreter). He is in 103 and we have to place the “Borderline Invention” line with the appropriate “yelping dog” of 1.2.1.1 below. One of our thoughts is that the modern day PHOSITA be considered as a broad amalgamation, even if not deeper.

            Relating to the thread topic, expecting the PHOSITA to understand much beyond ordinary and normal-context driven terms of his arts may be unreasonable. There is less logical support for him being interpretive than him being inventive.

            1. 6.1.1.1.1.1

              Yes, please do think about it, as the end of your post is exactly 180 degrees off of the thrust of the article.

              Making the PHOSITA “inventive” is a “magic trick” to reintroduce Flash of Genius, something Congress was explicit about removing.

              It appears that the Court has been up to its own “scrivining” tricks in more than one area…

              1. 6.1.1.1.1.1.1

                Nah we didn’t pull a brodie, but maybe did go off on a tangent that was less related to your linked article. (Twice actually)

            2. 6.1.1.1.1.2

              People, the state of the art is everything known.

              The one of ordinary skill, however, does not know everything.

              1. 6.1.1.1.1.2.1

                Ned, you leave me confused. Am I to understand that there are things unknown to the notional addressee which nevertheless destroy novelty. When it comes to 35 USC 102 law, is a prior publication in arabic, mandarin or sanskrit inside the USA a known known, a known unknown or an unknown unknown?

                People, the attributes of the PHOSITA are there to provide objectivity and legal predictability. That they are somehow “artificial” is not a good reason to disparage them. Are the known (established?) PHOSITA attributes fit for purpose. Perhaps Ned will speak to that?

                1. Max, I am no fan of 103 because it represented an intent by know it all patent attorneys to craft out of the blue a better measure of standard of invention then asked had been developed by the Supreme Court for 150 years.

                  Novelty: everything known.

                  Person of ordinary skill: he knows what he knows. But it is assumed that we only get to the person of ordinary skill when the subject matter is unknown in a literal sense.

                2. The law prior to 1952 focuses on “improvement.” Hotchkiss required functional improvement. The cases later required that the improvement be different in kind, not degree.

                3. M3, We are good with the legal fiction, as long as the mythology is objectively informed enough to lend predictability. Hopefully we were not disparaging our real selves either!

              2. 6.1.1.1.1.2.2

                Well, it is a very significant subset of all that is known. There are quite substantial portions of things known by individuals that do not make it into the prior art in both the AIA and pre-AIA definitions. It really is not very relevant because lawyers really would never find 99.9% of it anyway.

                Think about the amount of art that never left a laboratory or a workshop. It is staggering.

              3. 6.1.1.1.1.2.3

                Ned, we meant “state of the PHOSITA’s art.” In the article that anon linked, the author, Jonathan J. Darrow used the term “selectively omniscient” (footnote 39). Our proxy statement was premised on that paper’s historical non-inventive mechanic PHOSITA, and anon’s comment critical of the court’s “changing PHOSITA from one of ordinary skill to one of ordinary inventor”. This is a low or no-bar PHOSITA standard. We (the Peeps) wondered then, if such a limited artisan would just be superfluous, a personification of prior and states of (his)art? He has to be more than an “automaton” or he is effectively out of the 103 picture.

                This of course gets more complex, but it ties in with Max and your past comments correlating unobviousness to invention. Rich argued that he did not equivocate the two, but it seems to us that the only way he can really get out of that circularity was not by obviating the i- word, but by allowing some value add by the PHOSITA. See below, comment quote 1.2.1.2 —Rich implies some ordinary obvious-spontaneous inventiveness from the artisan. But do we get the clue on what that is?

                1. Patent Law could be greatly improved by moving away from Judge Rich’s view of things and back to the way Thomas Jefferson and the first congress viewed things.

                  Let us go back to Hotchkiss and see what the court actually held: There had to be a functional improvement otherwise it was the work of the ordinary mechanic.

                  The last part is there to suggest that something that was not a functional improvement was not an invention.

                  Functional improvement, however, was the legal requirement. This tracks well with the statute at that time that required “new or improved.”

                  It might be best simply to repeal 103, leaving only the second clause, with a specific reference to Hotchkiss and Eibel Process with approval.

                  Stay as far away as possible from Rich, ordinary persons, because we don’t know who they are. Go back to an objective test. Is the subject matter functionally improved? This actually can be measured, especially if it solves a problem.

                2. Ned,

                  Two problems with your views (at least):

                  1) they are clearly not the law

                  2) they are dead wrong in a real world engineering sense.

                  To wit: you ran away from the last discussion on the real world effect that engineers are always engaged in trade-offs and do not fold-plate everything. Hence, any true fully engineered item will be a mix of improvements in some areas and degradations in others. Your “improvement” is illusory and equally as subjective as that which you wish to denigrate.

                  A further thought for you to dwell on: it is a cold stone fact that most disruptive innovations are at first actually NOT improvements over the existing modes that they will eventually surpass. See the works of Christensen and Henderson-Clark.

                  Your views would actually prevent the patentability of those very things that bring the biggest benefits to the innovation game.

                  I think that you are simply mired in the past and cannot grasp the law as it is written or the reality of innovation (as opposed to some 18th or 19th century very-linear model that is stuck in your head).

                3. “new” or “improved”

                  If something is completely different, unknown, I surely think it is patentable provided it is useful.

                  What I would like is a very simple objective test that people can prove by actual tests!

                  I find it hard to believe that you would oppose this for any reason.

                  Take the PTO. The examiner says the claimed invention is shows no improvement in kind, just degree. Here one introduces tests showing the unexpected result.

                  Why is that a problem?

                4. Read again my post at 7:49 PM. You’ve talked right past it without seeing the answers already there.

  5. 5

    How does one actually determine that claim scope is not reasonably certain to one of ordinary skill in the art? Is this really part and parcel with claim construction? Can and should the issue of indefiniteness be decided as a matter of law?

    There has to be a lot of testimony about the person of ordinary skill, and what he or she would understand the claim to to mean. The court is going to resolve the fact dispute, and make a finding. But the essence of the finding is factual, not legal. On appeal, there must be deference, not a de novo review.

    Anywho, that is how I see it. The findings of fact will emerge as important in the determination of indefiniteness.

    Which brings one to another issue — the right to jury trial when the validity of the patent is at stake. A judge cannot be making findings of fact on summary judgment. There must be a trial. And at least the Federal Circuit has held that when validity is at stake, there is a right to a jury trial. In re Lockwood — vacate but still followed.

    1. 5.1

      How does one actually determine that claim scope is not reasonably certain to one of ordinary skill in the art?

      Right – this, x1000.

      By nature, we patent drafters are notoriously… well, I suppose that the most accurate term is pedantic. We develop hundreds of heuristics of claim and specification drafting with extraordinarily precise meaning. One discussion board that I read regularly fills up with discussions of the differences between “one or more” and “at least one,” between “comprises” and “includes,” between “each” and “respective.”

      We are this way because of the tortuous body of court-made law – hundreds of “gotcha!!” cases, like where someone writes “application (x) claims priority to application (b)” but doesn’t get a priority claim because they didn’t also state: “which is hereby incorporated by reference.”

      So this recent trend in patent case law, with completely subjective terms like “reasonably ambiguous” – we have no idea how to adapt our carefully constructed rule framework to comply with these rules. It is impossible for us to adapt any facet of our application drafting to satisfy this empty, meaningless statement. (Besides, 100% of us believe that 100% of our applications already meet this requirement by a wide margin.)

      1. 5.1.1

        Oh for gods sakes. You’re not going to “win” them all, sometimes a court is just going to screw you. And that is under no matter what standard you’re being judged.

        Bottom line, just draft as reasonably as you can, and leave the drafting games at home.

        1. 5.1.1.1

          Bottom line, just draft as reasonably as you can, and leave the drafting games at home.

          No, see, that’s exactly my point: I firmly believe that I’ve been doing just that for years, so I don’t have any idea what I should change in the wake of Nautilus.

          (For example: I loathe patent applications that are context-free – those that start and end with: “We claim: a process comprising (A), (B), (C),” with no explanation of what problem it addresses, what advantages it provides: how it’s different from conventional techniques, etc. So, throughout my prep/pros career, I have written every single specification as: “In the field of (x), problem (y) is often addressed by solution (z), but solution (z) has the following problems / limitations. Instead, we propose an alternative solution (q) to problem (y), with limitations (A) (B) (C), where (B) may provide the following advantages over solutions such as (z) in field (x).” Although absolutely nothing in patent law requires this type of explanation, I find that it vastly improves the readability and impact of the patent.)

          My point is simply that I feel confident that I have exceeded the “heightened” requirements of Nautilus throughout my drafting career. And I interpret the lack of response by the patent community to Nautilus as a sign that many other practitioners feel the same.

          1. 5.1.1.1.1

            Then you may not need to change anything brosef. Not everyone gets hit with a 112 2nd in every case you know.

            And yes, I’d say the majority of people practicing before me don’t need to change much. There’s only a few real jokers, and some foreign folks that have problems with 112 2nd. The other people occasionally need to pretty something up, no biggie.

      2. 5.1.2

        100% of us believe that 100% of our applications already meet this requirement by a wide margin

        Baloney.

      3. 5.1.3

        …like where someone writes “application (x) claims priority to application (b)” but doesn’t get a priority claim because they didn’t also state: “which is hereby incorporated by reference.”

        At the risk of being notoriously pedantic, that case doesn’t exist, David.

        1. 5.1.3.1

          At the risk of being notoriously pedantic, that case doesn’t exist, David.

          In re de Seversky (474 F.2d 671 (1973))

          Applicant filed CIP application (A), which included an explicit priority claim to application (B), which included an explicit priority claim to application (C).

          A reference was cited that predated (A), but postdated the original application (C). Applicant pointed to the priority chain claim to disqualify the reference. The CCPA refused because:

          “It should be noted in this connection that the parent application, No. 53,255, contains no “incorporation-by-reference” language whatsoever. Its only relation to de Seversky (C) is indicated by the simple statement that it is a “continuation-in-part” thereof. That language is insufficient to incorporate any part of de Seversky (C) into the parent case. All it means is that insofar as the disclosure of the parent finds corresponding disclosure in the grandparent, the parent is entitled to the filing date of the grandparent.

          “Appellant is confusing two distinctly different things: (1) the right to have the benefit of the filing date of an earlier application under § 120 for subject matter claimed in a later application because that subject matter is disclosed in an earlier application to which “a specific reference” is made — i. e., a reference to the earlier application per se, and (2) the incorporation by reference in an application of matter elsewhere written down (not necessarily in a patent application), for economy, amplification, or clarity of exposition, by means of an incorporating statement clearly identifying the subject matter which is incorporated and where it is to be found.”

          1. 5.1.3.1.1

            Yeah, I’m familiar with that case, David. You are apparently confused about exactly the same thing that tripped up the Appellant, per the last paragraph you quoted.

            The case most certainly did not hold that the Appellant “didn’t get his priority claim” because he failed to use the words “incorporate by reference.” His priority claim was fine, but it wasn’t very useful, since the priority document didn’t include the material he needed. (It’s also worth noting that it wouldn’t have helped the Appellant one bit to put the words “incorporate by reference” into the application that was actually at issue in this appeal, since the mistake was made in the parent application.) Pedantic? Yes, but I think you suggested that this was a virtue.

            1. 5.1.3.1.1.1

              The case most certainly did not hold that the Appellant “didn’t get his priority claim” because he failed to use the words “incorporate by reference.” His priority claim was fine, but it wasn’t very useful, since the priority document didn’t include the material he needed.

              I think you’re getting lost in the opinion (which is, admittedly, confusing).

              The CIP application claimed priority to a parent, and also to a grandparent. In order to overcome a prior art reference (another filing by the same applicant), the applicant pointed to the priority claim, and the fact that to the grandparent teaches the relied-upon feature (something called a Venturi inlet). The court refused, because while the applicant had a valid priority claim to the grandparent, the applicant had not also explicitly “incorporated by reference” the contents of the grandparent – and the intervening parent also did not include it.

              That is: The grandparent did indeed teach the Venturi inlet – that’s uncontested. The “S

              Here’s the language from the opinion:

              > Appellant argues that he is entitled to the date of a parent application filed in 1960, in which certain disclosure of a Venturi gas inlet is incorporated by reference from a still earlier grandparent application filed in 1955, referred to as de Seversky (C). That parent application, however, is totally devoid of any reference to a Venturi inlet and by itself is of no help to appellant as support for the appealed claims.

              > Appellant admits to this defect in the parent application, saying in his brief. He urges, however, that the defect is cured because the grandparent, de Seversky (C), discloses a Venturi inlet and because the parent application is a “continuation-in-part” of the grandparent that disclosure is, ipso facto, “incorporated by reference” in the parent.

              > However, the parent application, No. 53,255, contains no “incorporation-by-reference” language whatsoever. Its only relation to de Seversky (C) is indicated by the simple statement that it is a “continuation-in-part” thereof. That language is insufficient to incorporate any part of de Seversky (C) into the parent case.

              (etc.)

              This case has always bothered me, because one could very reasonably presume that a priority claim is an ipso facto incorporation by reference: that is, in fact, the sole purpose of a priority claim. By drawing a distinction between these concepts, the court elevates the phrase “incorporated by reference” to the level of “magic words” – such that if you don’t use them, you don’t get what you expected.

              1. 5.1.3.1.1.1.1

                Based on just a few seconds of reading this string of comments, I also do not see it as a Magic Words case.

                As to the Venturi Inlet, it was described in the “C” doc but NOT in the specification (call it X) under scrutiny. Had it been in X, we could then have scrolled back to check that it is also in C. But as it wasn’t in X, one needs the “i b r” Magic Words to smuggle its teaching belatedly into the X doc so that it can be treated as if it had been in X all along.

                Run of the mill priority cases aren’t like this, because the teaching you point to in your priority document is found also in your pending application (or issued patent).

                At the EPO, any attempt to “i b r” is refused. Instead, the “i b r” magic words are summarily deleted. So you had better repeat in your application as filed under the PCT or at the EPO everything in the prio doc that you think you might need in prosecution.

                1. > As it wasn’t in X, one needs the “i b r” Magic Words to smuggle its teaching belatedly into the X doc so that it can be treated as if it had been in X all along.

                  I fail to see how it’s “smuggling” and “belated” when the child application has an explicit priority claim to the parent application. There was a clear and express intent, at the time of filing, that the child application claims subject matter that was originally recited in the parent. Why isn’t that good enough?

                  Since the CCPA didn’t resolve this question with reference to a statute, it had two perfectly valid options. It could have concluded that a priority claim is an ispo facto incorporation by reference. Or, it could have ruled that it isn’t, and that the “magic words” of IBR are required. The CCPA chose the latter – thereby denying an otherwise-entirely-valid patent claim for the sole reason that a formalistic, judicially-created ad-hoc “gotcha” rule was not satisfied.

                2. What I find “puzzling” is that posts from MaxDrei and DanH continue to come forth as if patent profanity was not a factual result of judicial scrivining.

                  It is a bit more than a stretch beyond credulity to not recognize the source of patent profanity or its existence.

                3. Thanks for the reply David. I note that you “fail to see”.

                  To be frank, I think there is sometimes a risk with writing “I fail to see”. The extent of the risk depends on whether everybody else “fails to see”, whether some readers see and some don’t or (worst case) you turn out to be alone in “failing to see”.

                  I think lawyers are paid to see things that non-lawyers fail to see. The more more legal angles we can see than anybody else, the more valuable we are to our Clients.

                4. @MaxDrei:

                  > I think lawyers are paid to see things that non-lawyers fail to see. The more more legal angles we can see than anybody else, the more valuable we are to our Clients.

                  This isn’t a discussion of whether or not we should state “incorporation by reference” to avoid this problem. Since that is the court-created rule, for better or worse, we’re required to “see” it and follow it. And, yes, when I write my priority claim language, I include “incorporation by reference” language as a matter of course.

                  However, we’re not discussing best practices, MaxDrei, but the propriety of the court’s decision – not whether or not we should follow the rule, but whether or not the rule should exist. “I fail to see” = “I disagree.” That’s all.

                5. OK David. Your “fail to see” means “I disagree”. You ask if:

                  “There was a clear and express intent, at the time of filing, that the child application claims subject matter that was originally recited in the parent. Why isn’t that good enough?”

                  Suppose you file a provisional, which is a copy of (say) pages 100 to 180 of your laboratory notebook.

                  A year later you file PCT and claim priority and “incorporate by reference”. But the specification of your PCT is not a lab notebook but, rather, a properly drafted enabling description of an invention and set of claims defining that invention.

                  Then the prosecution runs into difficulty and to make progress you run back and fetch some more lab notebook stuff out of your provisional.

                  That doesn’t succeed so you do it again.

                  There’s no end to it.

                  The public, watching prosecution on the PTO file open to inspection, scratches its head in bewilderment, while you decide what subject matter to put forward for issue.

                  Is this OK? Do you still “fail to see”?

                6. There’s no end to it.

                  Utter B$.

                  Of course there is an end to it. That end is just like – no wait, exactly like – any reference incorporated “properly” with the right magic words.

                  MaxDrei, you have dived head first into the weeds here.

                  Your post is a rather startling “miss” in any and all manners.

  6. 4

    Very nice draft, Jason.

    At first I wondered if dealing with the two cases (Nautilis and Teva) and their corresponding holdings in one paper (as opposed to a “Change Without Change Part I” approach) was the best way to go but you did a great job of putting the information together (you better hurry up and finish it before a bunch more cases get decided. ;) )

    I stumbled across one typo: “If everyone worse the same lenses, of course, then interpretation wouldn’t be a problem.” page 23

    At the moment I don’t have much to add except that I agree with your observations. The PTO certainly needs to be more involved in claim construction. That requires (1) demanding from applicants practical and meaningful definitions for terms that appear in claims which are not expressly (or practically) defined and (2) being on high alert for subjective terms (“sufficient” “appropriate” “look and feel”) lacking express definitions that define those terms (narrowly or broadly) based on objectively measurable criteria (3) identifying functional language and demanding that applicants provide supported examples and definitions describing how that functionality is achieved as a matter of fact in the context of real-world practical embodiments.

    Applicants operating at the lowest levels will fight all of this tooth and nail, of course. Baiting-and-switching, dust-kicking or plain old opaqueness that might provide an opportunity to assert absurdly broad claims across wide swaths of an industry is just the nature of the game for same practitioners. Sure, the patent is invalid and maybe the Supreme Court will invalidate it but as long as their is some money to be made in the meanwhile …

    1. 4.1

      Maybe, MM, the PTO can raise a fallen flag and simply declare that one cannot distinguish the prior art based on the function of a machine, article or composition; and define function to includes adjectives and nouns that have no well known structure.

      1. 4.1.1

        Lol – sure Ned, nothing wrong with the executive branch de facto writing law and throwing out the law written by the legislative branch….

        What are you thinking?

        1. 4.1.1.1

          Yeah, sure, anon. Undoubtedly, you ignore the right of appeal of an adverse decision.

          The executive effectively writes the law if it allows cases based on its own view of the law.

          Cf., DNA.

          1. 4.1.1.1.1

            undoubtedly you…

            Where do you make this stuff up?

            How is this even remotely related to my (actual) comment?

  7. 3

    My biased take is that we won’t know the impact of Teva for several years. Until now, district judges had no incentive to set forth factual findings incident to claim construction as they did with other findings under FRCP 52(a). In fact, they had a strong incentive not to do so, as that might have signaled an improper construction under Cybor and Phillips. Note that there was no mention of Phillips in Teva.

    We need to see what happens with post-Teva constructions, and how Federal Circuit panels review them. It’s plausible that the Supreme Court will someday hold that the rigid hierarchy of Phillips is inconsistent with the requirements of Rule 52(a).

    Former Chief Judge Michel recently said of Teva, “I think this is a huge sea change that will change Markman in the vast majority of cases.” link to law360.com

    I don’t claim to know either way, but I’ll defer to the Chief on this.

    1. 3.1

      Andrew,

      I completely agree with you when it comes to any form of empirical assessment of the impact from Teva. And I agree with you a fair amount when assessing the overall impact. Still, I think there’s something to be learned from what the Federal Circuit is saying in the immediate aftermath of the decision since it will set the framing for future decisions.

      On the broader point, my own reading is that Federal Circuit’s current methodological approach to claim construction is inconsistent to at least some degree with Teva, but that’s just my interpretation of the decision (and one that the Federal Circuit judges to not appear to hold).

      1. 3.1.1

        Thanks for the reply, Jason.

        I suspect we’ll see some conflicting jurisprudence from the Federal Circuit as panels apply Teva. It will echo the conflicts after the Supreme Court’s Markman decision that led to Cybor. Some judges saw in Markman validation of the Federal Circuit’s en banc decision in the case. We might see something approaching that with Teva. Judges in the Lighting Ballast en banc majority may say sure, once in a blue moon Teva might change the appellate outcome, but that’s the rarest of cases given the hierarchy of Phillips. The Lighting Ballast dissenters may have very different ideas.

        As always, my comments are mine alone, and do not necessarily represent the views of any client or co-counsel.

        1. 3.1.1.1

          Lighting Ballast majority:

          Newman, Lourie, Dyk, Prost, Moore, and Toronto

          Dissenters: O’Malley, Rader, Reyna and Wallach

          Andrew L Dhuey, of Berkeley, CA, argued for plaintiff-appellee on rehearing en banc. With him on the brief were Jonathan T. Suder and David A. Skeels, Friedman, Suder & Cooke, of Fort Worth, TX; and Robert P. Greenspoon, Flachsbart & Greenspoon, LLC, of Chicago, IL.

          Ah, now I see how you and Bob Greenspoon know each other.

          BTW, what is the current status of your case?

          1. 3.1.1.1.1

            We’re on remand from the Supreme Court — ours and two other cases were GVR’ed.

            Once again, all comments I make are mine alone and are not attributable to any client or co-counsel.

    2. 3.2

      It is interesting to note that Michel wrote the opinion in Lockwood that held that validity had a right to trial by jury.

      1. 3.2.1

        Also noteworthy is that Chief Judge Michel was in the Cybor majority, but he later changed his views on appellate deference with regard to factual findings incident to claim construction. Shifting in the other direction were Judges Newman and Moore, both of whom once argued for deference on appeal but ultimately embraced Cybor in Lighting Ballast.

        That three such esteemed jurists would reverse their positions on the issue is testament to its complexity, and to the legitimate concerns each side has on the question.

        1. 3.2.1.1

          Andrew, and as reported here by many, Newman now regrets PatLex, an opinion she wrote.

  8. 2

    Jason,

    Very interesting. I’m disappointed that you’ve reached the point where you think the Federal Circuit is ignoring Nautilus, but after reading your paper I fear you are not wrong.

    Lack of notice by the patentee of what they claim is at the root of many problems in patent law, and the Federal Circuit’s insistence on giving the patentee wide latitude only perpetuates the problems. For example, how can someone effectively design around a patent if it’s unclear from the patent what is actually being claimed? How can someone be sure they take licenses to patents being brought to their attention when they should when the patent is unclear as to what it describes? How can the PTO do effective prior art searches when claim scope is unclear? And how can a lax standard prevent an applicant from saying one thing to the PTO in getting a claim allowed (often in an off-the-record interview) and another thing to a court in litigation (often by a purchaser of a patent that can say whatever it feels can be supported by the ambiguity)?

    I fear that the Federal Circuit is ignoring the harm it is causing by having such a lax definiteness standard. I cannot understand why it would view their standard as good public policy.

    1. 2.1

      Jane: how can a lax standard prevent an applicant from saying one thing to the PTO in getting a claim allowed (often in an off-the-record interview) and another thing to a court in litigation (often by a purchaser of a patent that can say whatever it feels can be supported by the ambiguity)?

      Or the situation where the same patent owner is in possession of and is actively licensing hundreds or thousands of patents that are individually premised on contradictory statements of “fact” and claim constructions.

  9. 1

    Jason,

    While you identify a problem, you do not identify the countervailing force. The countervailing force is not inconsiderable. An examination of whether fact-driven claim construction is worth it might be a significant advance for the paper.

    This is the same problem child of Greenwood v. Hotchkiss that made it into the 1952 Act. Who are these workmen of ordinary skill, or people of ordinary skill in the art? What are their vocabularies and definitions? What is in their background of education, and what problems are they used to solving?

    The Federal Circuit was created to obtain consistency of results. If each trial can have a different person of ordinary skill in the art, then there is no promise of consistency of result even for one patent across the nation. I think that is the inevitable result of fact-finding driven claim construction “fact-driven law of-the-patent” that the Federal Circuit cannot abide. Until the Supreme Court makes it abide such outcomes, I don’t think the Federal Circuit will do so.

    1. 1.1

      Erik,

      You make an excellent point, and I should clarify that this essay is part of a larger project to examine ways of approaching the meaning of claim terms. I wrote it to help sort out my thinking about Nautilus, Teva, and the Federal Circuit’s jurisprudence thus far, rather than to come to an ultimate conclusion about fact-based claim construction. Consistency of results is definitely something to keep in mind in the larger project.

    2. 1.2

      Erik, all Hotchkiss actually required was a functional improvement. Thus, even though there are common words between Hotchkiss and the ’52 Act. But in truth, the ’52 Act undid the moorings.

      1. 1.2.1

        And, later courts required the improvement to be in “kind,” not “degree.” See, e.g., Eibel Process.

        Rich and crew were truly thought they could ignore Supreme Court case law and make an improvement.

        Yeah sure.

        1. 1.2.1.2

          Or as Judge Rich said:

          “As we refrain from granting patents on inventions that are not new, we must also refrain from granting patents on those inventions which would arise spontaneously, given the need or desire for them, as the yelp of the dog surely follows from stepping on his tail, or with only a nominal expenditure of time, effort, money or wit – especially if the invention is one of real utility likely to meet with popular demand.”

        2. 1.2.1.3

          Reading the older Supreme Court case law, especially some of the farm inventions, one gets the feeling that some of the justices knew the prior art pretty well. They had some chances to calibrate the law of invention to something they knew. That is something that the current justices have no chance to do.

Comments are closed.