Teva v. Sandoz: On remand, Still No Deference and Claim is Indefinite

Taking up the remand from the Supreme Court, a divided Federal Circuit panel has held true to its prior decision in Teva v. Sandoz – holding once again that the lower court’s claim construction was incorrect and that the asserted claims (Group I) are invalid as indefinite.  The majority (led by Judge Moore and joined by Judge Wallach) did give deference to the lower court’s particular fact-finding, but found that the lower court had drawn incorrect conclusions-of-law from the factual bases.  Further, the new ‘reasonable certainty’ definiteness requirement under Nautilus made the invalidity holding even easier to justify.

[Read Teva v. Sandoz (Fed. Cir. 2015)]

= = = =

In Teva, the Supreme Court held that findings-of-fact subsidiary to a claim construction decision should be given deference on appeal.  However, the court also noted that most claim construction issues remain questions of law reviewed without deference to the trial court’s findings. These de novo issues include ultimate claim construction outcome, findings regarding intrinsic evidence, and (according to this opinion) the decision on how to apply any subsidiary factual findings in the analysis.

Here, the patent claims include a copolymer “having a molecular weight of about 5 to 9 kilodaltons.” The problem is that polymer chemists have three different ways that molecular weight could be calculated in this context (peak average; number average; and weight average).

Although ostensibly a claim-construction case, the ultimate issue here is actually whether the “molecular weight” term is unduly indefinite under the standards of 35 U.S.C. 112(b).  Indefiniteness is considered part of the claim construction analysis and thus is also a question of law.  While the case was pending, the Supreme Court decided the important indefiniteness case of Nautilus v. Biosig. In Nautilus, the court  lowered-the-bar by making it much easier to find a patent indefinite whenever a claim’s scope lacks “reasonable certainty.”

In addressing the details of this case on remand, the Federal Circuit first noted that there is no express definition of the molecular weight term and that the patentee’s expert had admitted that the term has no “default” meaning even to a person of skill in the art.

The patentee’s expert testified that one of skill in the art would understand that the the calculation should be peak-average molecular weight because it would be more straightforward to calculate peak-average based upon the data presented in Example 1 and Figure 1 of the patent document.  The district court relied upon that conclusion in its analysis. On appeal, the Federal Circuit gave deference to the district court’s factual conclusion but noted that the analysis only goes so far and cannot overcome the claim language itself:

A party cannot transform into a factual matter the internal coherence and context assessment of the patent simply by having an expert offer an opinion on it. The internal coherence and context assessment of the patent, and whether it conveys claim meaning with reasonable certainty, are questions of law. The meaning one of skill in the art would attribute to the term molecular weight in light of its use in the claims, the disclosure in the specification, and the discussion of this term in the prosecution history is a question of law. The district court should not defer to Dr. Grant [Teva’s Expert’s] ultimate conclusion about claim meaning in the context of this patent nor do we defer to the district court on this legal question. To the extent that Teva argues that this ultimate determination deserves deference, it is in error. . . .

Even accepting as correct the district court’s factual determinations about .. the transfer of chromatogram data to create Figure 1, these facts do not resolve the ambiguity in the Group I claim about the intended molecular weight measure.

The intrinsic evidence seen by the Federal Circuit here actually came from the prosecution history of a continuation application related to the patent-in-suit.  In that later-case, the examiner rejected a claimed “molecular weight” term as indefinite under 112(b) and the applicant at that time responded that the best definition of molecular weight used weight average rather than peak average. The confusion arises now because the patentee is arguing that the proper definition is peak average. In my view, it is really this late-stage change-in-definition that led to the Federal Circuit’s indefiniteness holding.

Writing in dissent, Judge Mayer argued that the expert testimony should be seen as dispositive here and that the Federal Circuit improperly rejected factual expert testimony.  Judge Mayer also suggested that the proper course of action when vacating a lower court claim construction is not to find the claim indefinite but instead to remand to consider whether further factual development is needed.

= = = = =

Of interest, the majority strongly implies that “clear and convincing evidence” is required to hold a claim invalid for indefiniteness:

We hold that claim 1 is invalid for indefiniteness by clear and convincing evidence because read in light of the specification and the prosecution history, the patentee has failed to inform with reasonable certainty those skilled in the art about the scope of the invention. On this record, there is not reasonable certainty that molecular weight should be measured using Mp. This is the legal question—and on this question—we reverse the district court.

Of course, the clear-and-convincing standard is associated with factual conclusions not questions of law and the Federal Circuit here does not appear to have relied upon any factual conclusions for its decision.


58 thoughts on “Teva v. Sandoz: On remand, Still No Deference and Claim is Indefinite

  1. 10

    There are more than three molecular weight averages that can be talked about in polymer science. In addition to those mentioned in Teva, there is also, at least, z-average. Most of these correspond, roughly, to moments of the molecular weight distribution, and in theory there are an infinite number of such moments. These may be integrated from a measured molecular weight distribution. There are also other ways of determining “molecular weight” from some physical property like modulus or viscosity.

  2. 9

    Dennis you are desperately wrong in stating “Of course, the clear-and-convincing standard is associated with factual conclusions not questions of law”.

    You really do not want your personal property be taken away but with anything else but with clear and convincing evidence.

    By law patents are personal property and carries with it clear and convincing evidence, facts or law aside. Do you really want government to take away your house, car, bank account at anything else than with clear and convincing evidence? The law states that patents are personal property. How do you differentiate how the law treats your own bank account or house than patents…professor?

    35 U.S.C. 261:

    Subject to the provisions of this title, patents shall have the attributes of personal property.

    1. 9.1

      Scientist: How do you differentiate how the law treats your own bank account or house than patents…professor?

      Super difficult question!

      The right to sue people verus ownership of a house.

      How can anyone possible distinguish the two?

      Maybe we should award a Nobel Prize to whoever succeeds at this daunting task. Or better yet: a patent. Because … progress!

      1. 9.1.1

        Malcolm, you seem to have a real problem with the concept of personal property.

        Is it an idealogical thing?

      2. 9.1.2

        “The right to sue people verus ownership of a house.” want to take a position that you won’t sue if someone lives in your house or takes off your money without your permission? Or runs out with your car?

        Whether you call it “ownership” or “right to sue” they are one and the same. Yes it will take more than a noble prize to distinguish them because they are same.


          Just a note, if you are wrongly issued a deed of ownership, it can be taken away. This can happen through Fraud or Mistake.

          There’s no reason why a patent should not be subject to the same issues. If you fail to properly disclose something (fraud) and it get’s invalidated, you lose it. By the same token, if it shouldn’t have been granted in the first place (mistake) it get’s revoked.

          Your argument argues that someone who fraudulently files ownership papers should keep the land they are fraudulently obtaining. And, equally, that if the state makes a mistake on property tax records and sells you property at auction, you should be allowed to keep it despite not really legally being able to buy it.

          A more logical argument would be that if the patent is invalidated at a later date, the patent owner should be able to apply for a refund of fees… if it can be determined that they didn’t improperly apply for the patent in the first place. But that’s a big giant fuzzy can of worms.

          Also, I’d be careful about demanding Patents and Personal Property be treated the same. Property can also be removed as part of Imminent Domain (Which, if we applied it to Patents, I think would cause a gigantic howling). Legally we provide different types of property different levels of legal protection.

  3. 8

    Where is the uproar a la Williamson v. Citrix? Result here is that a host of claims are now invalid as indefinite. We should expect this case to blossom into attacks on all claims that define an invention by reference to a standard unit of measure. Perhaps every value with standard moniker (molecular weight, elasticity, hardness, color temperature, viscosity, color temperature, neutron flux, and even electrical resistance) might each be measured with several different techniques that yield different values but are still expressed in the same units.

    1. 8.1

      Careful practicioners who use such standards in their claims — or who see any chance of that happening — are careful to define the measurement techniques in question. Professional scientists and skilled researchers with a couple ounces of integrity are used to providing that information in clear terms so others can reproduce their results.

      This isn’t a new issue. In fact, it’s a really old one.

      1. 8.1.1

        It’s unclear what happened in this case, at least by reading the current decision. I cannot find a copy of the district court’s decision to see if there is any indication as to why the inventors did not include information about which analytical method should be used. Perhaps they used one and only one analytical method (some language in the current decision might imply this)? Perhaps they never thought about what the analytical methods could be?

        Certainly assuming there’s something nefarious about this is not reasonable.


          It is reasonable to assume that anything coming out of the Fed. Cir. is nefarious. The Fed. Cir. is now dominated by judges appointed on the behest of Google. We have reached third world status at the Fed. Cir. Thanks Obama.

      2. 8.1.2

        So you would think. But 500 or so US patent that use the term kilodalton in the claims. I’m not very deep into the list, but I have not yet encountered one that specifies Mp, Mw, or Mn. U.S. Patent 9,040,018 recites “kilodaltons as measured by gradient polyacrylamide gel electrophoresis” but does not specify Mp, Mw, or Mn. Likewise, 8,969,519 specifies “as determined by gel electrophoresis under deglycosylated, reduced, and denatured conditions” but does not specify Mp, Mw, or Mn. Even the practitioners that are careful to specify the technique used to measure molecular weight appear to disregard the possibility that Mp, Mw, and Mn might be so far apart that a single expressed range would be indefinite.

    2. 8.2

      David, see my post 5.1.2 to see the problem with not defining the measurement technique.

      1. 8.2.1

        Good points. And after reviewing many kilodalton claims, I might add that it may be necessary to define the measurement technique (peak to peak, or peak to valley, or Mn, Mw or Mp) along with something else that we might also call the measurement technique (gel electrophoresis, or gradient polyacrylamide gel electrophoresis or the several other techniques use to measure molecular weight).

  4. 7

    “In my view, it is really this late-stage change-in-definition that led to the Federal Circuit’s indefiniteness holding.”

    Yeah seems so. Seems legit.

  5. 6

    link to

    6-4 en banc rehearing denied.

    The majority and the minority dispute whether an injunction was final when the PTO held the claim which was the subject of the injunction invalid. According to the minority, this places the Federal Circuit in conflict with all other circuits on the issue of finality of judgments and injunctions and mandates.

    After losing on the merits, the district court in 2011 entered a final injunction with respect to claim 26. The injunction was affirmed on appeal in 2012 with respect to claim 26 but not with respect to other claims. The Federal Circuit (2012) remanded for the judge to reconsider his injunction in light of the the mandate with respect to the other than 26. On remand, the district court found the defendant, Lawson, in contempt of the injunction regarding claim 26 because it’s allegedly redesign products continue to infringe. That contempt order is a subject of the present appeal.

    In a collateral attack, Lawson petitioned for re-examination. On re-examination the PTO held claim 26 invalid. That decision was affirmed by the Federal Circuit in 2013. In a companion decision issued yesterday, the Federal Circuit, 2 to 1, set aside the modified injunction of the district court and vacated the contempt order.

    In commenting on the denial of rehearing en banc, Judge Moore, with Wallach, O’Malley and Newman, made this observation,

    And it is not surprising that defendants pursue
    PTO review proceedings given that there exists a lower
    burden of proof for invalidity (preponderance versus clear
    and convincing) and given that the PTO uses a claim
    construction construct—broadest reasonable interpretation—that
    makes invalidation based on prior art easier.
    And while I question the wisdom and propriety of the
    applicability of the broadest reasonable construction
    standard in IPR proceedings, this is not the appropriate
    case for consideration of this standard.

    And then concluded,

    I do not agree with the majority that the injunction in
    this case was not final. More generally, there are problems
    with a system which permits defendants to snatch
    victory from the already closed jaws of defeat. Whether
    these problems are to be resolved by the Supreme Court
    through its precedent on finality or through Congress,
    this sort of gamesmanship ought to be curtailed. I have
    no problem with the dual track system Congress has
    created, but for at least a subset of cases, defendants are
    abusing the process by doing both. This is wasteful of
    judicial, executive, and party resources, and it is just
    plain unfair. Congress intended the IPR/CBM/reexam
    route to be an alternative to district court litigation of
    certain validity issues, not duplicative of them.

    1. 6.2

      6, and yes, there was a split in the circuit about whether the use of collateral attacks was an abuse of process.

      There is no question that congress intended reexaminations to benefit patent owners. See PatLex. But the system IS being used by accused infringers to game the system via the PTO’s lower standard of proof and BRI. The result is a collateral attack on validity litigation, and now judgments, all to increase expenses to the patent owner, consume judicial (District Court and Federal Circuit) and PTO resources looking at the same issue, etc., and hardly to the benefit of patent owners who must defend on two fronts.

      1. 6.2.1

        patent owners who must defend on two fronts.

        You don’t need to defend on any front if you offer a license in line with the strength of the patent.

        expenses to the patent owner

        Remember that these expenses are in many cases the only business expenses for the type of patent owners whose behavior necessitated the need for alternate patent review forums in the first place. When the patents themselves are simply variations of “do this type of commerce on a computer” or “do this routine ancient information processing activity in this specific context on a computer”, the cost of “innovation” is close to zero. Bottom line: get used to it or get out of the game.


          MM, in 1980, POs were using no-defect reissues to reexamine applications in face of new prior art because of Rene Tegtmeyer (former deputy commisioner). He and I had long discussions on this. Reexaminations were put forward as a way for the PTO to reexamine applications primarily as a benefit to patent owners — to shore up the validity of their patents and inspire “investor confidence.”

          From Patlex:

          Congress had an important public purpose in mind when it enacted the reexamination statute. The statute was part of a larger effort to revive United States industry’s competitive vitality by restoring confidence in the validity of patents issued by the PTO. In 1979 President Carter in his Industrial Innovation Initiative Message to Congress announced his intention to seek reexamination legislation, stating that “Patents can provide a vital incentive for innovation, but the patent process has become expensive, time-consuming, and unreliable.” 15 Weekly Comp. of Pres.Doc. 2069, 2070 (Oct. 31, 1979). Senator Birch Bayh echoed this concern when he explained “I introduced this legislation because of my conviction that a strong, dependable patent system is absolutely essential to our continued ability to innovate to meet the challenges of the future.” Patent Reexamination: Hearings on S. 1679 Before the Comm. on the Judiciary, 96th Cong., 1st Sess. 1 (1979) (Senate Hearings.) Congressman Kastenmeier, who introduced the legislation in the House, described 602*602 the bill as “an effort to reverse the current decline in U.S. productivity by strengthening the patent and copyright systems to improve investor confidence in new technology”. 126 Cong.Rec. 29,895 (1980).

          The bill’s proponents foresaw three principal benefits. First, the new procedure could settle validity disputes [as an alternative to litigation] more quickly and less expensively than the often protracted litigation involved in such cases.

          Second, the procedure would allow courts to refer patent validity questions to the expertise of the Patent Office. See Senate Hearings at 1, wherein Senator Bayh said that reexamination would be “an aid” to the trial court “in making an informed decision on the patent’s validity”.

          Third, reexamination would reinforce “investor confidence in the certainty of patent rights” by affording the PTO a broader opportunity to review “doubtful patents”. 126 Cong.Rec. 29,895 (1980) (statement of Rep. Kastenmeier).

          [According to Mr. Tegtmeyer, reissue proceeding were unavailable for government mistakes.]

          One can see that NONE of the congressional purposes and objectives are being currently met by today’s process abusers. With the lower standard of proof, BRI and the PTO’s acceptance of collateral attacks by infringers already in litigation, the reexamination monster set loose on the patent system is the opposite of what congress intended.



            You really need to take off your “align-with-me-must-be-an-Einstein” googles and realize that Malcolm is “for” any and every position that weakens patent rights – without fail.

            He is anti-patent.


          “or get out of the game.”

          I literally just heard a advertisement on my pandora where an ‘innovator” or their attorney was qqin about too many “innovators” being forced “out of the game” by the new proposed bill in congress. I was thinking to myself, perhaps if they didn’t regard it as a game then we wouldn’t be in this mess.


            Spangenberg is on the record somewhere saying, in effect, that it’s time to find a new grift.

  6. 5

    The patent claims a molecular weight of “about” 5 to 9 kilodaltons. Teva’s expert, Dr. Grant states that the error in Mp could be as high as 16.7%. Does anyone know what the variation in molecular weight would be for Mp, Mw, or Mn?

    1. 5.1

      I have the same question.

      To me, this case could’ve been caused by a drafter not realizing that molecular weight can be determined using three different methods, each of which could have a different result. And the inventors probably never gave it a second thought.

      1. 5.1.2

        PatentBob, I had a case where the patent attorney, at least initially, and the perhaps even the inventor did not know the difference between peak-to-valley and average roughness. Both had industry standard measurement techniques that resulted in approximately ten-to-one difference in the resultant number.

        The claims used “roughness factor” and a range. Depending on whether they were distinguishing the prior art or accusing one of infringement, they used interchangeably use the measurement that was best suited to their needs. Dependent claims indicated that “roughness factor” was peak-to-valley.

        During prosecution, the point of novelty was the degree of roughness. The applicant distinguished prior art because of the order of magnitude difference between the prior art and the claimed “roughness factor” range. But the prior art was using average roughness, which which meant that the ranges were the same or overlapping IF the claimed “roughness factor” was peak to valley.

        When they accused my client of infringement, the patent attorney who had prosecuted the application and now representing his client in litigation asserted the claims against our products measuring our roughness using average roughness.

        I do not know whether in fact these people were completely ignorant of the difference between the measurement techniques or whether they were simply being dishonest, but I always felt that they could not have been that ignorant.

    2. 5.2

      Depends on the distribution of molecular weights, which usually depends on the method of making of the polymer.

      For, say, a good atom-transfer polymerization (ATRP), you can get a very narrow, symmetric peak. Here, Mp (mass of peak) might be very similar equal to Mn (average weight). Mw would larger, because Mw is the mass at which the total mass of polymers above Mw is equal to the total mass of polymers below Mw, IIRC. So for a symmetric peak, it’s easy to see that Mw would be larger than Mp and Mn.

      Mw is always greater than Mn.

      Mw can be less than Mp if you have a broad tail at molecular lower than Mp, with a narrow tail at molecular weights higher than Mp.

      Fig. 2 clearly suggests it’s not Mp, as Mp is similar for the solid and dashed curves, but the dashed curve has an “Avg. MW” of 12.0.

      Fig. 1 clearly suggests it’s not Mw (Mw would be the MW at which the integral from 0 to MW is equal to the integral from MW to infinity, which is obviously > 10000 for the solid line and ~20000 for the dashed line).

      1. 5.2.1

        Also, Fig. 2 suggest it is Mn (Mn would be the MW at which the integral from 0 to Mn is equal to the integral from Mn to infinity, which is obviously somewhere between 5k and 10k for the solid line and ~10k for the dashed line)


          #$%! I just realized I found the median values above, not the mean/average. Mw is the integral of Fig. 1; Mn is the integral of Fig. 2. But the mean and median are typically close enough that it doesn’t really matter.

          It’s been almost a decade since I’ve done polymer chemistry…


            Just read the decision. I was under the impression that it was obvious Mn (I suspect the majority of polymer chemists would guess this).

            However, the applicant tried to argue that it was Mp, but the (presumably GPC?) data was shifted; ~25%. Wow. Loss for words.

            There’s shifting, and then there’s shifting.

            >The district court, however, accepted Dr. Grant’s opinion that a person of ordinary skill would understand that the process of transferring data from a chromatogram could cause a shift in the peak of the curves. Id. It therefore concluded that the fact that the peaks do not match the listed molecular weights does not dissuade the conclusion that “molecular weight” means Mp.

            Yes, it can shift the actual weights, but if the actual weights were shifted: 1) how did they determine the MW; most of the time you use a GPC trace, I dunno, like figure 1 and 2) Why didn’t they use whatever they used to determine the MW as the figure?



              Thanks for your effort. I was thinking that if Mp, Mn and Mw measurements substantially (=/- 20% ?) overlap, then the claim would be definite enough. Based on your discussion, that does not seem to be true. Of course, this is a factual inquiry which this court would not have considered anyway.


                I’m not sure that I am following your point, Troubled.

                Does “substantially” get you where you want to be?

                How is “substantially” determined? You wrote “20%” as some type of gauge, and I note the question mark, but what would be the appropriate gauge – and perhaps more importantly, why?

                Also, what is meant by “definite enough?” Enough for what? For whom?

                Lastly, was not the calling of experts in fact an attempt to consider the particular factual inquiry?

                Thanks in advance for fleshing out your thoughts.

                1. My guess is if they are within the “error” of the GPC (the 16.7%), then you could try to argue it doesn’t really matter, because presumably Mn, Mp, and Mw could be considered “equal within error”? That’s the only way I can read it, but that argument doesn’t make a lot of sense to me, and I wouldn’t buy it.


                So there’s this ratio called polydispersity (PDI), which is Mw/Mn. Typically, it’s about 1.5ish, unless you’re doing controlled polymerizations, which are tricky/difficult to do (although they do it all the time in peptide chemistry, but that’s an entirely different story). From their graphs, I’d estimate the PDI is around 1.6-1.8. So not very close at all.

                The 16% cited in the case usually comes from not having your GPC standardized, I’d wager. Typically you put in a very expensive standard solution, which contains 5-6 polymers of very narrow molecular weight, and look at their elution times (you’re passing the polymers through a gel with a gradient of pore sizes, and the smaller ones elute first; I think you measure the light scattering?), so then you know how weight relates to elution time.

                It looks like they used GPC for separation (see Ex. 1; fractogel), basically they collected the smaller MW polymers, which elute first, then just discarded the larger ones.

                >It noted that experts testified that Mn and Mw can be obtained from the chromatogram and calibration curve, but doing so would require additional data manipulation and calculations not disclosed in the specification.

                Except you usually get a nice little printout from the software that does it all for you, I’m betting people just copied the numbers from the prinout; usually peaks are labeled, and Mw, Mn, and PDI.

                >Having considered the claims, specification, prosecution history and extrinsic evidence, the district court determined
                that “molecular weight” means Mp in the context of the claimed invention and held that the claims are not indefinite.

                Except this doesn’t match with the legend of the Figures, as I noted above, and which the appellants also noted.

                I think they really shot themselves in the foot by arguing that it was Mp in order to try to overcome the original indefiniteness argument.

                IIRC, Mp is rarely used when someone uses the term “average molecular weight”; it’s usually Mn. And Mw is usually called “weight average molecular weight.” If they argued it was Mn, they could have said yes, there is some variation (the 16% quoted above), but it’s clearly not Mp because the variation in Fig. 2 would have to be much larger, like 100% (since the peaks are both around 8k).

                1. link to

                  cat, I wonder if you would care to do me a favour. Evidently, you know a lot about the science. The link above is to the English judgement and in it para 223 to 257 treat the “average MW” issue. Is it a solid treatment? If not, where is the court in London going astray?

                  In case you are interested, below is the Link to the English Decision in the Court of Appeal, para 77 to 105:

                  link to

                2. Well, I made a couple of mistakes, because it’s been a while. Larger elutes first, smaller elutes last. Also, I thought you took Mp from the mole fraction trace (Fig. 2), but you take it from the mass fraction trace (Fig. 1). Like I said, it’s been a while.

                  I pretty much agree with Prof. Hunter. There are lots of ways you can treat the data to find Mn and Mw. He used different methods than I did (of course, I mistakenly found the median instead of the mean), but we ended up with similar results, except for Mn of the 7.7kDa sample, but the median would be an underestimate of the mean when you have a long tail. Of course, the histogram method used by Hunter (see 232) is prone to errors, but I think it should be a good enough approximation.

                  Our conclusions were different, but, as noted above, my conclusions were skewed because I did median instead of mean, so my values were smaller.

                  Also, I thought Mp was from the mole fraction trace, but I was mistaken; it is read from the mass fraction trace.

                  Knowing that it is from Fig. 1, I can see how one could argue that it’s Mp, since, within the 16% error, the peaks match the molecular weights.

                  However, like Hunter says, Mp is seldom used (see 232), and I agree with this assertion.

                  However, I have not done peptide work, and for all I know people could use Mp to refer to average molecular weight in that subfield (see 227), and Dr. Grant may be correct.

  7. 4

    he Federal Circuit position in v. futurewei was that collateral estoppel should be applied with caution when patent claims, even claims from related patents, use the same wording. While prosecution history estoppel and collateral estoppel are not the same thing, I am not sure what justifies caution in one case and not in the other case.

    1. 4.1

      Over reach of a panel in justifying why they are not respecting a previous panel is what is going on**

      **granted here there may be intervening “law” written from above that justifies a panel not following an earlier panel, but such an action must be explicitly made clear.

    2. 4.2

      collateral estoppel should be applied with caution

      It’s not clear what that’s supposed to mean.

      Every doctrine should be applied “with caution”.

      What’s the alternative? “This doctrine should be applied blindly”? “This doctrine should be applied in a carefree manner”?

      It reminds me of the doctrines whose applications should (allegedly) be “rare.” The frequency at which the doctrine is applied depends on how frequently the appropriate circumstances for applying the doctrine present themselves to the court. If there’s a surge of such circumstances, for whatever reason, then the application should not be “rare” but more frequent.

    3. 4.3

      [reformatted for clarity]

      Pka collateral estoppel should be applied with caution

      It’s not clear what that’s supposed to mean.

      Every doctrine should be applied “with caution”.

      What’s the alternative? “This doctrine should be applied blindly”? “This doctrine should be applied in a carefree manner”?

      It reminds me of the doctrines whose applications should (allegedly) be “rare.” The frequency at which the doctrine is applied depends on how frequently the appropriate circumstances for applying the doctrine present themselves to the court. If there’s a surge of such circumstances, for whatever reason, then the application should not be “rare” but more frequent.

    1. 3.1

      Since I had a case very much like this back in the day, I agree. They got this one right.

  8. 2

    DC: the majority strongly implies that “clear and convincing evidence” is required to hold a claim invalid for indefiniteness:

    I suppose the alternate interpretation of the passage you cited is that the Federal Circuit simply believes that the claim is clearly and convincingly indefinite and should be held invalid whatever standard is applied.

  9. 1

    If my memory serves, this issue (MW measurement techniques) has been litigated already in Europe, in Germany and up to the English Court of Appeal.

    Litigants these days routinely check out the EPO file wrapper in the patent family case(s). It must be quite a help, I imagine, in such a delicate case, also for the Federal Circuit judges to read through the English Decision, because the English patents judges are specialist patent jurists with a science degree followed by at least 20 years of intensive and continuous experience in patent litigation.

    Or not. What do you say?

    1. 1.1

      a delicate case

      There was nothing “delicate” about this case. The patentee argued two contradictory definitions for the same term instead of doing what it should have done: expressly provide a clear definition in the specification for a crucial term in its claims.

      Nobody cares — and nobody should care — about what some European “specialists” think the term “really” means. The Federal Circuit is correct that introducing an expert to testify that “I’d resolve the contradiction/ambiguity in the instrinsic evidence this way” does not change the fact that the instrinsic evidence is contradictory and the undefined claim term is ambiguous.

      The bottom line is mundane: if you try to change horses midstream, there is a good chance you’ll end up in the rapids. Figure out what you want your claim terms to mean, clearly write your definitions into the specification, and live with them.

      1. 1.1.1

        Figure out what you want your claim terms to mean, clearly write your definitions into the specification, and live with them.

        But then somebody might figure out how to design around our invention! Thieves! Scoundrels!

      2. 1.1.2

        Typically robust (and enjoyable) remarks from MM. When I wrote “delicate”, MM, I was thinking of the delicacy of the operation of changing horses in mid-stream.

        Time and time again, inventors are so perplexed by what the patent attorney describes as their invention, in the patent application to be filed forthwith at the PTO, that they don’t give serious enough attention to the precise text of the patent application. This case illustrates when the chickens released by that inattention come home to roost, in litigation, years later.

        MM, you think it a foregone conclusion that a change of horse activates the gong that sounds “INVALID”. I guess the English court was more willing to presume validity until somebody actually proves that the disclosure is insufficient to put the invention into effect. I like that reticence.

        But having said that, given the breathtaking effrontery of this particular change of horse, the validity attack borders on a foregone conclusion. Presumably the patent owner, in committing to fight to the end, found itself to be in a “Money no Object” predicament.


          This is NOT a typical Malcolm post, so the “glad-handed” spin from MaxDrei has the opposite effect of perhaps what MaxDrei wanted, while at the same time ignores the fact that Malcolm is actually bashing MaxDrie’s usual mantra of EP Uber Alles.

          The attempted spin f001ed no one Max. The “over” politeness rings hollow, a fake mask that should be avoided as the “front” that it is.


              Can you clarify Ahan?

              Aside from the fact that the historical reference if “peace for our time,” that reference does not fit the fake mask of politeness here.


          MD MM, you think it a foregone conclusion that a change of horse activates the gong that sounds “INVALID”.

          No, it depends. But when Patent A is obtained by arguing that “X is white” and continuation Patent B is obtained by arguing that “X is black”, then one of those two patents is almost certainly invalid.


            Why not both? Sure, there may be situations in which only one should be forfeit, but just as assuredly, there are situations where both should be forfeited.

            To be clear, the context here is what is being said to obtain the patent right by a single party.


              Why not both? Sure, there may be situations in which only one should be forfeit, but just as assuredly, there are situations where both should be forfeited.

              I agree, particularly where there is ambiguity baked into the specification and the applicant takes advantage of that ambiguity by “innovating” around the prior art during prosecution, typically through the willy-nilly introduction of new definitions (or worse, new terminology).


                There is no need to inject the strawman of “typically through the willy-nilly introduction of new definitions (or worse, new terminology).

                1. My comments are not a “strawman”. I was making an uncontroversial statement about the prosecution histories of many cases where indefiniteness becomes a serious problem during litigation.

                2. It IS a strawman, as no one but you is advancing that fake argument to be knocked down.

                  We both know that you know that that I know that you have Zero evidence for the “willy-nilly… new definitions… new terminology” comment, which is merely an attempted spin for your usual short script attack on innovation in a particular art field.

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