Cuozzo v. Lee: The Problem of Standing

The AIA-Trial claim construction issue is important and many of us would like to see the Supreme Court address it in Cuozzo. However, there is one legal matter that has been an elephant-in-the-room since the Cuozzo appeals began several years ago: Standing.

As a general matter, parties do not have standing to raise issues on appeal that have no impact on the underlying dispute.  Likewise, a court has no jurisdiction over issues when the parties have no standing. An important feature of standing is that it is generally non-waivable.  Rather, a court must dismiss a case when one or more parties lack standing — even if (as here) neither party raise the issue.

The standard theory of claim construction is that the USPTO’s “Broadest Reasonable Construction” is broader than the standard Phillips construction used by courts in infringement litigation.  The theory behind this change in standard is that it allows the PTO to serve a gatekeeping role to better in sure that issued patents are valid patents. The particular oddity of the underlying case is that Cuozzo is asking for the Phillips standard to be applied in order to receive a broader claim construction of the term “Integrally Attached.”   Here, on its way to finding the disputed claims obvious, the PTAB construed the term in a way that excluded a described embodiment of the invention and Cuozzo has argued that the proper construction includes that embodiment.  To be clear here, a more broadly construed claim would encompass more prior art and thus are more likely to be invalid as obvious.  Although not strictly impossible, it would indeed be a rare case where the narrower claim is obvious while the broader is nonobvious.  [edited this] Point here is that if Cuozzo gets what it wants from this question on appeal (a broader claim scope), it is no closer to overturning the decision that the claim is obvious – in fact, Cuozzo will be further from that goal.

Although only spending a few pages on the issue, the newly filed Public Knowledge amicus brief roughly outlines case:

[I]n this case, Cuozzo’s patent received a narrow interpretation, and Cuozzo seeks to have the patent read to encompass more subject matter, not less. In other words, Cuozzo is asking for a narrower claim construction standard in order to obtain a broader claim construction. . . . This backwards fact pattern is not just puzzling; it potentially means that Cuozzo has no standing to raise the question, such that this Court lacks jurisdiction over the case.”

[Read the Brief: CuozzoPKAmicus.]

Cuozzo is not run by idiots. Rather, Cuozzo appears to be taking a broader strategy — it wants the term broadly construed in this case so that it will help the enforcement of parallel claims in other cases.  PK explains again:

Why, then, does Cuozzo pursue this case? It cannot be to alter the outcome of the inter partes review, as the district court standard will leave Cuozzo’s patent claims equally invalid—a broader reading of a claim cannot be valid when a narrower one is invalid for obviousness. Instead, the record reveals that Cuozzo seeks a broader claim construction in order to facilitate its infringement arguments in unrelated litigation—a manipulative attempt to commandeer inter partes review to ends
external to the proceeding.

Apart from PK’s snide “manipulative” remark, I am on-board with this analysis.

At this point, it may make the most sense for the Supreme Court to dismiss the claim construction issue as improvidently granted but retain question two regarding the appeal of institution decisions.

 

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

53 thoughts on “Cuozzo v. Lee: The Problem of Standing

  1. The sole point of the SCOTUS granting cert in Cuozzo is to demonstrate to the executive and legislative branches that they will not be taking control over the claim of patent validity.

    Despite MCM, the claim is not destined to become solely Article I.

  2. From the spec as filed:

    variations in size, materials, shape, form, function and manner of operation, assembly and use, are deemed readily apparent and obvious to one skilled in the art

    Except for “integral” attachment, which is a totally non-0bvious variation that we forgot to mention when we filed the application. Ah well. Bygones. Just swallow what our paid expert is dishing out. We’re super serious people.

    1. This bit in the background really cracks me up:

      U.S. Pat. No. 5,995,895 to Watt et al. discloses a control of vehicular systems in response to anticipated conditions predicted using predetermined geo-referenced maps. However, the Watt et al. ‘895 patent does not display the current speed limit, and has the additional deficiency of not audibly notifying the driver when the speed limit is being exceeded.

      Everybody got that? In the prior art, people taught that GPS and computers could be used to operate a vehicle without passenger input by taking into account location and speed limits.

      But those same people were toooootally stumped when it came to combining that knowledge with (wowee zowee!) the display (or otherwise communicate) the current speed limit to a passenger or driver. That was the applicant’s theory of patentability going into this case. Try to believe it.

      This reminds me of some commenters here who are so desperate to be born yesterday that they marvel at computer control of a vehicle in 2016. Meanwhile, the grown ups in the room remember when computers were used to send men to the moon and back … almost half a century ago.

      Grow up, people.

      1. Here, the comment applies as well…

        There has never been an ipsis verbis requirement in US patent law.

        Why are you throwing a hissy fit like some “great commandment” has been broken?

        You attempt to portray yourself as “grown up” WHILE you are throwing a hissy fit….

        The usual Malcolm – happy Decade of Decadence.

        1. Why are you throwing a hissy fit

          LOL

          I’m just pointing out how incredibly junky Cuozzo’s junk patent is.

          It’s your buddy Cuozzo who is crying a river all the way to the Supreme Court.

          LOLOLOLOL

          1. No Malcolm, it is you throwing a hissy fit directly on the ipsis verbis point.

            I even used short declarative sentences that you like to point this out.

  3. There is a more apparent reason that Cuozzo is arguing for a broader construction. Cuozzo is likely arguing for a broader interpretation of “integrally attached” so that it can prevail on its motion to amend. That motion was denied because the PTAB/CAFC concluded that its amendment impermissibly broadened its claim in one aspect (although it narrowed the claim in other aspects). Under Cuozzo’s broader interpretation of “integrally attached” (already in the claim), however, the proposed amendment would not have been a broadening amendment.

    Cuozzo’s argument that BRI is the incorrect standard is not necessarily a request for an advisory opinion. In order to achieve its objective of getting a broader construction, Cuozzo could argue that the PTAB construed the term too narrowly under the BRI standard or it could argue that the proper standard is the Phillips/Markman standard and under that standard, the broader construction is correct. In this case, Cuozzo has decided to make the second argument, not the first.

    1. “Cuozzo is likely arguing for a broader interpretation of “integrally attached” so that it can prevail on its motion to amend. That motion was denied because the PTAB/CAFC concluded that its amendment impermissibly broadened its claim in one aspect…”

      This is a great point. Cuozzo definitely should argue this (if they haven’t already).

  4. Here is a related question strange to this case. Any patent attorney should know that it is clearly illegal to broaden issued patent claims in any respect except with a broadening reissue application filed within two years of the patent’s issue date. It is clearly barred by statutes in the other post-grant proceedings. Patent claims effectively broadened in violation of statutes have been held invalid by the Fed. Cir. even if erroneously issued by the PTO. E.g., Pfizer Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006) and cases cited. So how could Cuozzo possibly win here by entry of such claims?

    [One might also ask why the PTAB did not apply its tough new IPR sanctions authority to sanction the claim broadening attempt? Why did the Fed. Cir. not sanction arguing for such claims after holding that they were broadening? ]

      1. Correct, at this stage, the refusal to enter amended claims in the IPR is not in either of the two cert questions. That’s what I meant by “a related question strange to this case” but I should have been clearer.

  5. OT – but just read something about a 25 page form for examiners addressing “patent quality”….

    Any of the usual examiners care to comment…?

  6. L.B.Z. points out below: “The term integrally attached does not appear in the specification and original claims of the application which was filed on March 18, 2002, and later issued as the ‘074 Patent. The term was proposed during examination by amendment of application claims 1 and 11 to distinguish over Avada”

    Are all the s00per serious patent attorneys out there keeping up with this?

    First we have the applicant reaching into the ether for a claim term that appeared nowhere in the application as filed in an attempt to distinguish itself from the prior art.

    The PTO, in a quintessential example of its profound incompetence (aided by the CAFC’s own applicant coddling case law) looks the other way.

    Then the patentee does backflips trying to nullify its own actions which should never have been permitted in the first place.

    If that werent enough, in 2002 how on earth could the recitation of “integral attachment” possibly overcome the obviousness of an otherwise identical claim that recited the “attachment” of two devices?

    As I noted earlier, this is a genuine farce.

      1. It’s just Malcolm’s typical (Yay Ec(h)osystem) way of saying “Look at me, look at me.” That happens when you are only interested in drive-by monologue type of propaganda.

        Happy Decade of Decadence.

    1. MM: “First we have the applicant reaching into the ether for a claim term that appeared nowhere in the application as filed in an attempt to distinguish itself from the prior art.”

      The Figures are part of the “application as filed.” One of ordinary skill in the art even just looking at a figure would understand that the illustrated speedometer 12 is “integrally attached” to the illustrated colored display 18.

      Are all the s00per serious anti-patent protestors keeping up with that?

      1. Les: One of ordinary skill in the art even just looking at a figure would understand that the illustrated speedometer 12 is “integrally attached” to the illustrated colored display 18.

        LOL! Sure they would! The paid expert said so!

        They’d see that Figure and immediately leap to the term “integrally attached”, as opposed to the term “attached” …. which is the actual term used by the inventor to describe his awesome “innovation”?

        Please tell everyone why the public has to pay the price for such extreme incompetence at the application drafting stage — assuming that’s what it was (the obvious alternative, of course, is that everyone, including the lazy inventor and his lazy patent attorney, knew that “integral attachment” added precisely zilch0 to the patentability of this junk claim so they just didn’t bother drilling down into the silliness).

        If the courts are going to allow applicants to rely on a specific embodiment that is only depicted figuratively then the claim should be limited to preciesly what’s disclosed in that Figure and nothing more. Oh but wait! The “skilled artisan” (aka “paid expert”) is supposed to be able to look at the Figure and determine what’s essential for that embodiment and what isn’t. It’s like mind reading except you’re not reading anything and you get paid more if you don’t actually use your mind.

        Keep celebrating the farce, Les.

        1. Careful. You’re starting to froth.

          “They’d see that Figure and immediately leap to the term “integrally attached”, as opposed to the term “attached” …. which is the actual term used by the inventor to describe his awesome “innovation”?”

          No, that isn’t the standard. The specification merely has to support the amendment. One can read the amendment “integrally attached” and then review the specification to see that the inventor clearly did “have the invention” at the time of filing and that integral attachment is disclosed.

          “Please tell everyone why the public has to pay the price for such extreme incompetence at the application drafting stage — assuming that’s what it was (the obvious alternative, of course, is that everyone, including the lazy inventor and his lazy patent attorney, knew that “integral attachment” added precisely zilch0 to the patentability of this junk claim so they just didn’t bother drilling down into the silliness).”

          I’m not sure what price you are referring to.

          As I have pointed out to you on numerous occasions, inventors (and even their lawyers) are not aware of all of the prior art that an examiner might apply against a claim. Therefore, the inventor (and even her lawyer) might not explicitly list every distinction of the invention over the prior art. That is not incompetence. It is merely a lack of clairvoyance.

          Thankfully, and appropriately, we are allowed to rely on implicit and implied disclosure as well as what one of ordinary skill in the art in question would have understood when making amendments.

          This flexibility is essential. Especially in a system plagued by whiners that generate enough hot air to cause ever shifting sands of statutory and regulatory interpretation and examination procedures.

          1. Les: the inventor (and even her lawyer) might not explicitly list every distinction of the invention over the prior art. That is not incompetence.

            In this case, it surely is incompetence or laziness or both. Or worse. But go ahead and pretend that the (non) inventor and the inventor’s incompetent and/or lazy attorney weren’t aware that attached devices or even attached signaling devices were not in the prior art. That’s how the patent maximalists roll! You were all born yesterday, in your own minds.

            One can read the amendment “integrally attached” and then review the specification to see that the inventor clearly did “have the invention” at the time of filing

            Not at all. The inventor had a Figure depicting a specific embodiment that is far narrower than what is being claimed.

            What is being claimed now was, in fact, never described by the (non) inventor and it was never described by the inventor’s attorney (either because of incompetence, or laziness or the third grade level realization that the issue of “integral attachment” versus “attachment” of devices could pretty much never be a patentable distinction in the 21st century.

    2. MM, generally I think that one should not be able to claim structure using language that has no well understood meaning and that is not used in the specification. However if the meaning of the claim term is clear given the context of the prosecution itself, for example, when the applicant argues that the claim term covers specific structure described and illustrated, a proper claim construction in court would be such that the claim would be interpret the cover both. It would not be proper to construe the claim to cover the prior art.

      Without having read the PTAB decision or the underlying patent prosecution, I think the situation is like this:

      Consider and application that discloses a screw and a nail as means for attachment. The claim initially says that X is attached to Y. The prior art shows X attached to Y using glue. The applicant amends the claim to distinguish the prior art by using the term “intersectionally attached” which he argues to the examiner covers both the screw example and the nail example but does not include glue. The case is allowed.

      Now I suppose the applicant could have provided two independent claims, one claiming the screw and a second claiming the nail, but if the new claim was clearly meant to include both structural embodiments, I am not so certain that the claim term is ambiguous in scope, or that it does not distinguish over the prior art, at least from the novelty point of view.

      The problem with this case is that the claim construction of the PTAB did not affect the patentability of the claim. At best, the claim with the broader construction still did not distinguish over the prior art in any way different from the claim with the narrower construction provided by the PTAB. At least that is my understanding of the facts.

      1. The problem, Ned, is that this was a stillb0rn application and it was granted only because the applicant reached into the ether to create a distinction that it never disclosed in its specification. Then the PTO, in its endless coddling incompetence, accepted the amendment.

        Ned: Consider and application that discloses a screw and a nail as means for attachment. The claim initially says that X is attached to Y. The prior art shows X attached to Y using glue. The applicant amends the claim to distinguish the prior art by using the term “intersectionally attached” which he argues to the examiner covers both the screw example and the nail example but does not include glue. The case is allowed.

        Why on earth would such a claim be allowed?

      2. Ned: if the meaning of the claim term is clear given the context of the prosecution itself, for example, when the applicant argues that the claim term covers specific structure described and illustrated, a proper claim construction in court would be such that the claim would be interpret the cover both.

        No. Wrong. False. Absurd.

        You do not get to create written description support for you claim during prosecution.

        It would not be proper to construe the claim to cover the prior art.

        Under the circumstances you described, it’s absolutely appropriate. Or you can find the claim term indefinite.

        When applicants invent claim language during prosecution, all the presumptions and doctrine of claim construction are irrelevant. The case is off the reservation and the normal restrictions can’t be applied without creating a farce like the farce in this case.

        1. MM, consider today’s case
          SIMPLEAIR, INC. v. SONY ERICSSON MOBILE COMMC’NS AB
          link to cafc.uscourts.gov

          as a case on point. The applicant added “data channel” to the claims to distinguish the prior art. Even though the term did not appear in the specification, the Federal Circuit affirmed that the claim term was not indefinite under Nautilus despite Google’s vigorous objection.

          Neither Google of the Federal Circuit had any problem understanding what the claim term meant in the context of the patent prosecution history.

  7. Lol. Still, they’re entitled to argue for whatever claim construction they want to. And aren’t they appealing the determination of obviousness itself not the “claim construction” itself? Standing doesn’t happen on an “issue” by “issue” basis does it? It’s based on standing for the case isn’t it?

    1. As the Supreme Court laments more and more – jurisdiction is too often over used, the issue is only a matter of statutory extent and not a real jurisdictional component.

      Likewise in this: standing is a fuzzy warm thing that has been twisted. But to address your comment, by way of analogy:
      (1) I have standing under private nuisance cause of action if i am harmed (injury in fact), caused by the defendant, and the court can grant a remedy.
      (2) I would not have standing under a public nuisance cause of action (usually, because I am not the state/municipality) because i have not suffered a harm (in the legally cognizable sense).

      Now, if I brought both (1) and (2), courts would say i have standing in general, but dismiss my second cause of action.

      Likewise, on appeal in this case. Cuzzo can challenge the obviousness decision. But, the ideal of limited judicial action would require the court to not address the proper interpretation because in either event the obviousness determination is upheld. Therefore, no standing on the proper form of step 1 (which of BRI or phillip) if we can jump straight to step 2 and affirm the general issue.

      Obviously, there are arguments and disagreements among the supreme court and everyone about the propriety of doing things in this manner. E.g., is it proper to address an easy merits question against a party, if a more difficult “threshold” issue would also, probably, go against the same party?

      Scalia would say no – the duty of the court must be to excercise only the power it has (le duh). The other side says …. (?) policy: judicial resources.

  8. “Cuozzo seeks a broader claim construction in order to facilitate its infringement arguments in unrelated litigation—a manipulative attempt to commandeer inter partes review to ends external to the proceeding.”

    So, wait a sec…as long as Cuozzo can show that it may indeed be harmed by not having the opportunity to engage in such “manipulation,” isn’t that technically enough for standing? The fact that the “harm” is “external to the proceeding” doesn’t seem automatically dispositive to me (and it certainly hasn’t been so in other areas of law where standing has come up).

      1. I believe I was suggesting that they might qualify here under a broad view of the first of those three requirements (i.e., the “something to lose” doctrine). I could be wrong, of course, which is why I don’t believe my initial post was the least bit strident.

        You’re usually not so snarky, Ned…

  9. More like this please:

    link to arstechnica.com

    “The practice of ranking things in categories based on popular vote was well-known before the advent of the Internet, or even computers, and the requirement to involve an online database does not make the claim inventive,” wrote [District Court judge] Simandle. “Any person with pen or paper could perform the same steps.”

    Simandle … ruled that EFF can collect fees for work that took place after April of last year. That’s when Garfum chose to oppose the motion to dismiss, even though by then “the handwriting on the wall for this sort of patent became clear under Alice and its progeny.”

    In all, Garfum is on the hook for 47 hours of work done by EFF’s Nazer and four hours of work by other attorneys. That will add up to close to $30,000 on its own, and some additional hours will be added for work on the fee motions….

    Garfum was represented by Austin Hansley, the same small Texas law firm that has worked some of the most egregious patent troll cases in recent years. Hansley represented the second- and third-most litigious patent trolls in 2014. The firm also represented eDekka, a patent troll that was ordered to pay more than $390,000 in attorneys’ fees after 168 of its cases were thrown out of an East Texas federal court.

  10. Fyi, Clear Correct’s petition for rehearing en banc was denied by the CAFC this morning. I’d be suprised if the Supreme Court decides to take this up. For the moment, the ITC does not have authority under 19 U.S.C. § 1337 to issue a remedy directed to electronic transmissions of digital data into the United States.

    Write ups on the earlier panel opinion (2-1 with Newman dissenting) here :link to kenyon.com

    and here: link to patentlyo.com

  11. On the standing issue, I have long agreed that what Cuozzo was seeking was an advisory opinion. I may have not have been the first to notice this issue; but I was certainly the first to point it out here and elsewhere.

    1. The Court (specifically in regards to your own leanings, Ned) have indulged themselves in “advisory opinions” when they have felt like it in regards to 35 USC 101 and what merely “may” happen with their own “exceptions.”

      A bit of inconvenient truth for you…

    2. I disagree with this assertion given the possibility of the PTAB’s interpretation being binding in a subsequent proceeding. The claim construction at issue (or re-issue here) directly impacts Cuozzo’s late enforcement options. It is entirely plausible that the patent with a narrow claim construction is essentially worthless to Cuozzo anyway, thus it is better in their eyes to go for a 5% chance of having a useful patent, rather than a 10% chance at a worthless patent.

      From a property as analog viewpoint: They are arguing the deed is 2 acres not 1 acre, and they don’t care if that makes the deed as a whole more likely to be invalid because the 1 acre they “have” is a bog, while the 2nd acre is beachfront property.

      1. As was pointed out smartly at post 12, the deed analogy that the original claim language is 2 acres instead of 1 opens up the possibility of a reduction in claim scope to only that 1 acre of beachfront property and giving up the ‘offensive’ 1 acre of bog property.

        If the original language is not ‘allowed’ to be 2 acres, then it is just not possible to switch from the bog to the beachfront**.

        **it should be EXPRESSLY noted that this discussion is not at all concerned with any sense of “gamesmanship” in somehow being a “con” to switch from the bog to the beachfront – and is instead directly – and only – concerned with whether the means to that end is available. Thus, there should be no attempts at dust-kicking with accusations of “defending claims” involved in this discussion of the larger aspects of the law in play here.

        Let’s see if the “ecosystem” supports this better discussion or not…

  12. From the brief:

    ” Furthermore, inter partes review was designed to advance the public interest in improving patent quality. The broadest reasonable interpretation standard, used during that proceeding, also was designed to advance the public interest in patent clarity. That standard is thus well justified for use in inter partes review. ”

    No citation to any authority.

    Do people really just get to make things up like this to advance their own agendas?

    The most accepted reason for IPRs is to provide a lows cost, speedier alternative to litigation — because litigation was and is expensive and allegedly “slow.” (Read, due process is expensive.) In MCM v. HP, the Federal Circuit said the purpose was to put validity into an agency expert in “patent law” (a particularly vile insult directed to district court judges).

    These folks drafting this brief pretend that courts were and are the problem and that getting validity out of the courts enhances patent quality. Connecting these dots makes an awful lot of negative assumptions about courts.

    What an IPR in fact does is

    1. Lower the burden of proof.
    2. Employs a claim construction standard that is intended to read on prior art if at all possible.
    3. Places validity into the hands of an agency controlled by a political appointee who pursues and has a right to pursue political agendas.
    4. Gets rid of examiners from inter partes proceedings in order to speed up the process.
    5. Limits the right to amend severely, similarly to speed up the process.

    Points 4 and 5 are valid improvements over inter partes proceedings. Further improvement would be to simply eliminate the opportunity to amend. Such has no place in a validity trial without an examiner.

    But the first three points are self explanatory. They show that the move to put validity trial the USPTO was an is intended to more easily invalidate patents and not to provide a level playing field.

    Moreover, because of the existence of IPRs, small firms are all but excluded from the patent system because they cannot afford IPRs. (Contingency fee trial counsel cannot litigate in the PTO due to protective orders.) The existence of IPRs simply slows down litigation because of stays. All of this prevents the small fry from obtaining help from contingency fees lawyers.

    All intended by the backers of IPRs. Injustice to patent owners is an intended feature of the IPR.

    1. Quick question for you. If claim construction occurs at the PTAB under BRI for invalidity, is the district court then required to acceptance that claim construction for infringement purposes? Thanks,

      1. No such acceptance requirement, but ironically if all those seeking Phillips rather than BRI claim construction in an IPR got what they are asking for then the PTAB claim construction could be harder to ignore and more persuasive to the D.C.

  13. “Although not strictly impossible, it would indeed be a rare case where the narrower claim is nonobvious while the broader is obvious.”

    What you wrote is the common situation: narrower claim = less prior art available = nonobvious, broader claim = more prior art = obvious. I think you meant to write, “Although not strictly impossible, it would indeed be a rare case where the narrower claim is obvious while the broader is nonobvious.”

    1. Dennis, thanks for this blog.
      Ned, both I and anon had also pointed that out on this blog, back when the cert petition was filed.
      I can understand why both parties and others would WANT an “advisory opinion” from the Sup. Ct. But they must know that is illegal. I find it hard to understand how such an obvious issue could be simply ignored by all the high-priced amicus brief attorneys in this case.
      Nor have I seen any argument to the contrary for why this is NOT a request for an advisory opinion from someone with no standing.
      I’m grateful that whomever “Public Knowledge” represents finally raised this fundamental jurisdictional issue.
      Ignoring 112 issues, I do not see how broadening a claim could EVER cause a reversal of an IPR 103 decision? Sup. Ct. G.P.s might not know that, but patent attorney brief authors in this case must have.

  14. DC: The particular oddity of the underlying case is that Cuozzo is asking for the Phillips standard to be applied in order to receive a broader claim construction of the term “Integrally Attached.”

    If that’s not plenty odd enough, take a look at the specification of the patent and guess what term is entirely missing:

    link to google.com

    What a farce.

    1. What a laugh, indeed. Take my wife! My “better half”, an integral part of the “item” we are. No question, I must say I’m really quite “attached” to her.

      No, really! I was integrally attached to her during our ceremony of marriage. Inseparably even! Till death us do part!

      Then again, take my Siamese Twin brother. In a way, I suppose, I’m integrally attached to him too. But not inseparably, not till death us do part, that is, if the surgeons achieve success, next Tuesday.

      No wonder the EPO puts great emphasis on clarity of claiming, before it will grant anything. Ever more so. The EPC Rules say that the claim must “define” the invention in terms of “technical features” and, in a mechanical engineering context, I have no idea what difference the word “integrally” makes to the technical term “attached”. Further, I have no idea what difference it might make to the ambit of the claim that recites this feature, whether one applies to the claim a Phillips or a BRI standard of interpretation.

      But Malcolm, in polyglot Europe, where one can never achieve 1:1 retention of meaning when toggling between the three official EPO languages, not even the EPO insists on verbatim support in the application as filed for every term in every claim. I understood that everybody in the USA deplores the strictness with which the EPO examines prosecution amendments for admissibility. Are you urging on the USPTO a standard of scrutiny for prosecution amendments so high that not even the EPO holds to it? You’re out on your own on that, aren’t you?

      1. Re: “I have no idea what difference [adding] the word “integrally” makes to the technical term “attached.”

        One example: The difference between being directly attached together versus being attached together via an intermediate object.

        1. So Paul, imagine an assembly of metal disc and metal ring, surrounding the disc and “attached” to it. I give you three methods of attachment a) friction welded b) heat shrink (like a metal tire on a wooden wagon wheel) but here irreversibly, in the sense that you cannot remove the ring without destroying it, and c) intervening film of adhesive glue.

          Are all three “attached”, or only a and c? Are any of them “directly” attached? Are any “integrally” attached? My sense is that only a) friction welding is both direct and integral. Is c) “direct”? Is b) integral?

          In short, I am sceptical that “direct” and “integral” mean the same thing and I do not know what either of them means, with any degree of precision.

            1. I thank you Ned. Recourse to the wrapper, to construe a claim? In the USA always, in Europe hardly ever. Your comment reveals why my instructing US associates suggest claim amendments that are useless in Europe, and also why those instructing associates scrutinise my draft cover letter to the EPO Examiner more minutely than they do the draft amendments to the claims.

            1. Ned in my hypo I intended that the film of adhesive would lie between the two components and constitute an intermediate “object”. Are you asserting that a layer of hard set adhesive is not an object? What if I dissolve away the two components and present you with what remains, the lump of hard set adhesive? Do you still assert that what lies in the palm of your hand is not an “object”?

      2. Unlikely that the EPO would not hold to it. In opposition proceedings, it would have been game over as soon as the opposition division noticed what was noted also by the PTAB:

        “The term integrally attached does not appear in the specification and original claims of the application which was filed on March 18, 2002, and later issued as the ‘074 Patent. The term was proposed during examination by amendment of application claims 1 and 11 to distinguish over Avada” (IPR decision, p. 10, internal quotations omitted)

        See also: link to patentlyo.com

      3. “I have no idea what difference the word “integrally” makes to the technical term “attached”.”

        Really? From the discussion of your wife and your brother, it seems to me you clearly do have an idea of the difference.

        However, in case your assertion is true, perhaps this will help. The pig is integrally involved in breakfast, while the chicken merely associated with it.

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