Although Functionally Claimed, Court Imports Structural Limitations from Specification

by Dennis Crouch – Note, the prevailing party here (Merck & Co.) is represented in this case by MBHB Partner Dan Boehnen. MBHB is a major sponsor of Patently-O.

ProFoot v. Merck & Co. (Fed. Cir. 2016)

This case offers a straightforward narrowing claim construction analysis involving the ProFoot’s patented method of fitting shoe inserts.  U.S. Patent No. 6,845,568.  The decision also lays traps for prosecutors hoping for implicitly broad claims. 

After a narrowing claim construction, the plaintiff stipulated that Merck’s Dr. Scholl’s process did not infringe and the case was dismissed.  On appeal, the Federal Circuit has affirmed in a nonprecedential opinion.

The claim construction process looks to provide additional meaning and context to the expressly stated claims.  The approach is to look for how a personal of ordinary skill in the art at the time of the application filing date would have interpreted the claim language.  In this process, Phillips v. AWH indicates that the primary sources for interpretation are the intrinsic documents: the patent document (the single best guide) and the prosecution history (a helpful additional resource).  When appealed, the Federal Circuit reviews claim construction determinations de novo while giving deference to underlying factual findings.

Here, the claimed insert-fitting method include use of a “neutralizer” that is used to place a customer’s ankle in a “neutral position.”  Following the Markman process, the district court construed the “neutralizer” according to how it was described in the specification — requiring a housing, protractor, and angular-adjustable foot plate.  On appeal, ProFoot argued that the district court improperly imported elements of the specification to limit the claims and that the claimed neutralizer does not require those specific components.  Rather, according to ProFoot, a neutralizer should be defined based upon its functional ability rather than any particular physical elements.

On appeal, the Federal Circuit rejected ProFoot’s broad-construction argument — holding that “when read in the context of the [asserted] patent, this term requires a device that includes these components.”  To reach this conclusion the court started with claim language that require a user to step on the neutralizer (claim 1 requires “place right foot on a neutralizer”) and to use the neutralizer to measure an angle.  Looking to the specification, the court found that the patentee had described “only two embodiments of the neutralizer” – and both embodiments required all of the components found in the claim construction in ways that are consistent with the requirements of the claims.

Although the appellate panel found that evidence from the specification was sufficient to support the district court ruling, it also noted that the prosecution history of the parent application offered additional support. The prosecution history story goes as follows: the claimed neutralizer was not found in the originally filed claim set but was added during prosecution with an express claim requirement that the neutralizer include the physical elements (housing, protractor, etc.). Although the physical components are not included in the child application, the court noted that the patentee never  indicated that it intended the child-patent neutralizer to be any different from the parent-patent neutralizer.  ProFoot made the claim-differentiation argument here – the child application does not include the express limitations that are included in the parent and therefore should be seen as broader.  The court rejected that argument as not providing any further information as to what the inventor understood “neutralizer” to include.  I the inventor had thought the word should be interpreted differently in the two cases “he could have said so explicitly or revised the [asserted] patent to include other, broader embodiments of the neutralizer.”

One question that I have here involves the court’s use of prosecution history as providing “evidence of the inventor’s understanding of neutralizer.”  The court has previously held that inventor’s understanding of claim meaning is not directly relevant to claim construction.  Rather, the focus is on the objective meaning understood by someone of ordinary skill in the art.

= = = =

ProFoot’s Claim 1.

A method of fitting an individual with right and left foot inserts which place the ankles of the individual in a neutral position comprising the steps of:

for creating a right foot insert, having the individual place the right foot on a neutralizer while elevating the left foot off of the neutralizer;

using the neutralizer to determine the angle necessary to place the right ankle in a neutral position;

providing an insert having an angle which represents the neutral state for the right ankle;

for creating a left foot insert, having the individual place the left foot on a neutralizer while elevating the right foot off of the neutralizer;

using the neutralizer to determine the angle necessary to place the left ankle in a neutral position; and

providing an insert having an angle which represents the neutral state for the left ankle.

124 thoughts on “Although Functionally Claimed, Court Imports Structural Limitations from Specification

  1. 11

    Dennis —

    The headline does not accurately characterize the case. “Functional” is never mentioned as a relevant factor.

    The case turns on the fact that “neutralizer” is a neologism coined for the purpose, with no definition in the art, no definition in the claim, and no express definition in the spec.

    On these facts, it’s always been fair game to import every mention of the neologism from the whole specification into the neologism claim term. Watts v. XL Systems, Inc., 232 F.3d 877, 882–83, 56 USPQ2d 1836, 1840 (Fed. Cir. 2000); McGill, Inc. v. John Zink Co., 736 F.2d 666, 673, 221 USPQ 944, 949 (Fed. Cir. 1984). After all, if you can’t look it up in a dictionary, where else would you look? And how would you choose one part of the specification that describes the neologism to import, and choose others to leave out?

    1. 11.2

      DB: The headline does not accurately characterize the case. “Functional” is never mentioned as a relevant factor. The case turns on the fact that “neutralizer” is a neologism

      “Neologism” isn’t mentioned as “a relevant factor”, either. It’s never mentioned at all.

      On these facts, it’s always been fair game to import every mention of the neologism from the whole specification into the neologism claim term.

      Or you could find the claim indefinite, which it surely is when the patentee says that the term refers to “some kind of measuring device” that performs the stated function of … measuring. Oops, I said “function”. Pretty difficult to avoid doing that.

      Note also that without this “neutralizer”, this claim is unpatentable because people have been making measurements to prepare shoe parts, including “inserts”, for a long, long time.

      Note that the CAFC doesn’t cite any of the cases you mentioned.

      Note what the CAFC says instead: inclusion of these components
      is consistent with the specification’s description of how the neutralizer is used
      . In other words, the CAFC imported into the claim the components that were necessary to perform the function of the “neutralizer.” It certainly did not import all the elements that appear in the two pictured embodiments, which would have been perfectly “fair” and would have rendered the claim even more worthless (as if that’s possible). Instead, the CAFC panel here “picked and chose” which elements to import.

      it’s always been fair game to import

      Are you sure you don’t mean “inform”? LOL

    2. 11.3

      And, David, and if the neologism was never used in the specification but was coined in the prosecution history to mean something specific, that is what it means in the claim.

      1. 11.3.1

        I think I agree with that, partly — a term created mid-prosecution and defined in the prosecution history (but not in the spec) has that definition in a Markman/Phillips construction.

        If you mean “coined to mean” with the meaning existing only in the head of the attorney, but with no square statement of that meaning, I wouldn’t bet on the attorney’s meaning sticking.

        As a practical matter, don’t count on that construction in a “broadest reasonable interpretation” context without the intervention of the Federal Circuit.

  2. 10

    In an aside to the tendency for sensatonalizing headlines, should we be clear about the difference between “inform” and “import”…?

    1. 10.1

      Dennis’ headline seems accurate enough. The CAFC could have — and probably should have — found these junk claims indefinite so that nobody would ever have to worry about them again. Instead they imported limitations from the specification to breath life into this nebulous “neutralizer”. The patentee, you’ll recall, wanted to construe the term to mean any measuring device which performs the measurement that is used to “provide” the super awesome shoe insert.

      How would you have re-written the headline?

      1. 10.1.1

        What the patented wanted to do is a separate issue, Malcolm.

        What the court did was less “import” than it was “inform.”

        It is a subtle distinction that in your rush to criticize you have missed.

        1. 10.1.1.1

          What the court did was less “import” than it was “inform.” It is a subtle distinction

          LOLOLOLOLOLOLOLOL

          Sure it is.

            1. 10.1.1.1.1.1

              Oh, it’s a “subtle” point that you must have missed.

              Tell everyone how you would rewrite Dennis’ headline, “anon.” C’mon, man. It should be easy for you, given your mastery of the English language and all its awesome nuances.

              What are you waiting for?

                1. My comment was pretty clear already.

                  What was “clear” is that you had some very poorly articulated issue with Dennis’ headline. What’s even more “clear” is that you have no clue what you’re talking about, and you’re incapable of expressing your allegedly “subtle” points in plain English.

                  But we knew all this about you already. Keep the laughs coming, “anon”. You’re a very very serious person.

                2. The articulation is clear.

                  It is even in short declarative sentences that you are always on about.

                  You are the one that seems to not be able to understand that there is a difference between “import” and “inform,” and your number one meme of ad hominem with accusing others of that which Malcolm does shows immediately (followed by your poker tell of “very, very serious”).

                3. there is a difference between “import” and “inform,”

                  LOLOLOLOLOLOLOLOL

                  There’s a difference between “black” and “white”, too.

                  Tell everyone how you’d rewrite Dennis’ headline, “anon.” You popped up here to whine about it but for some bizarre reason instead of showing everyone how you’d rewrite the headline you’ve chosen instead to drivel all over your shirt with some innuendo aobut “subtlety.” Again.

                  Friday laughs. Keep ’em coming, “anon”! We all love you so much.

                4. Again, Malcolm, your post says nothing.

                  Maybe try saying something (anything) without ad hominem and see if you can make a little sense.

                  Give it a try.

                5. You’re always free to phone a friend, “anon.”

                  Ideally once you’ve done so, you can stop your unintelligible yapping and let your mouthpiece take over.

                  But we all know that your yapping isn’t something you can control.

  3. 9

    Yet again (at 6.2.2) we are told that the EPO is too “pedantic” in its requirement for a written description at the filing date. Yet again we are told that at the EPO drawings cannot provide that written description. Wrong. They can.

    A strict written description requirement is an artefact of any First to File system, as the USA is going to find out, in the coming years.

    Any patent system has to balance fair protection for the inventor with reasonable legal certainty for those having to design around.

    1. 9.1

      Any patent system has to balance fair protection for the inventor with reasonable legal certainty for those having to design around.

      Agreed.

      Even the pre-AIA US system did that.

      As does the AIA (but not quite the same as ROW) First Inventor to File system does that.

      Not seeing what point you are trying to make MaxDrei.

      1. 9.1.1

        My point? That such a balance depends on consistently strict enforcement of a rigorous WD requirement. Without that, one cannot predict whether one is at risk from a published but not yet granted utility pat appln pending in the USPTO.

        1. 9.1.1.1

          The point in reality though, MaxDrei, and the point of the jab at the EPO, was that a TOO strict view is not necessary.

          That seems to still go over your head.

          1. 9.1.1.1.1

            Too strict? Granted, there are very many individual Examiners at the EPO who, when examining cases in English, find it difficult reliably to make the correct WD judgement. But that is invariably because their first language is not English (you will recall that EPO Examiners have to operate in all three EPO languages, regardless what is their language at home).

            In such cases, appeal is often needed, to get to a fair outcome.

            When you assert that “the EPO” is too strict, show me where this over-strictness manifests itself in the EPO’s “established caselaw” or in its MPEP.

            Otherwise, your opinion (or that of AAA JJJ) that “the EPO” is over-strict on WD, impresses me not at all.

            1. 9.1.1.1.1.1

              Whether you are impressed or not is one of the least concerns that I would ever have.

              Mayhaps the problem with your inability to grasp the jabs has to do with your own notion of “being impressed.”

              That would explain a lot…

            2. 9.1.1.1.1.2

              “Otherwise, your opinion (or that of AAA JJJ) that ‘the EPO’ is over-strict on WD, impresses me not at all.”

              If slavish pedanticism gets your rocks off, flail away.

              Whatever.

              1. 9.1.1.1.1.2.1

                If slavish pedanticism gets your rocks off, flail away

                Says Mr. “Appeal! Appeal! Appeal!”

                We can all be totally sure there’s no “pedanticism” in those appeal briefs.

                LOL

                1. I don’t prosecute applications for gene bits and sequence fragments, and I don’t even have any idea what those are, nor do I care what they are, but I’m pretty sure if I was handling a case you were examining I would smoke you at the Board. Cuz you’re whole schpiel is nothing more than, “Come on your honors, you can’t be serious. Everybody knows this stuff is so old and well known that nobody ever bothered to write it down.” I’ve gotten dozens of reversals of examiners like you.

              2. 9.1.1.1.1.2.2

                First, the courts in England construe Art 123(2) and (3) of the EPC at least as strictly as the Boards of Appeal of the EPO. But you know that already, don’t you.

                Second, that very strictness is just the ticket, when you are being threatened by a patent owner with a claim, amended in prosecution, leaving it directed to an invention that was perceived later than the filing date of the patent application that founded the asserted patent. But you knew that already, didn’t you, with all that experience you have accumulated, over your long career, of patent disputes in First to File country; oppositions, revocation actions and nullity suits under the EPC.

                Third, you seem to be fond of asserting that others here are too old to see the big picture, all the way from one side to the other . That gives me a clue to your own perceptions, junior.

          2. 9.1.1.1.2

            the jab at the EPO, was that a TOO strict view is not necessary

            It’s not “too strict” for most grown ups. Its just the way it is, for good reasons.

            But it easy to understand why less competent patent attorneys, accustomed to being coddled by the USPTO, would find international practice difficult. Of course, most of us competent prosecutors didn’t cut our teeth claiming methods of “automatically” sending lists of DVD recommendations by email or other cessp00l “technologies.”

            1. 9.1.1.1.2.2

              “Of course, most of us competent prosecutors didn’t cut our teeth…”

              We know. You were cloning zygotes in your mom’s basement and writing cutting edge BASIC programs on your Commodore 64 when we were still in diapers.

              Thanks for the laughs, Grandpa.

              1. 9.1.1.1.2.2.1

                Dear AAA JJ and “anon”,

                There really are patent prosecutors out there whose life doesn’t revolve around shoveling pure junk at the PTO and appealing it ad nauseum whenever you aren’t crying on a patent blog about the mean old examiners and “star chambers” that are oh-so-unfair to you.

                Just because they never wanted to work alongside you doesn’t mean those patent prosecutors don’t exist. Keep struggling, though! You make a great team and eventually the tiny green shoot of your combined intellectually prowess will poke up through the sand and we’ll all know how awesome you both are.

                P.S. Be sure to keep telling your clients that they don’t need to define critical elements in their claims because “drawings”! You’ll have cashed their checks long before they discover that you were just bein’ lazy.

                1. I’ll explain it to you again, Grandpa: I’m in-house at a Fortune 10 company. My docket is about 40% mechanical (think TC 3700), about 40% materials (think TC 1700), and about 20% semiconductors (think TC 2800).

                  But keep cutting and pasting from your script that anybody who disagrees with you is a “softie woftie” or a “do it on a compooter” “b0tt0m f##d!ng patent fl$ff#r.” It’s so original.

                  Maybe you can get the people who are paying you to post here to write you some new material.

                2. I would say it’s possible that the people who “write” the “jokes” on the new Matt LeBlanc sitcom are probably the same as the people who “write” Mooney’s “jokes” but that would be an insult to Matt’s writers.

                3. Malcolm, again with “the pendulum” when neither AA JJ nor I have ever made reference to that…?

                  Because anyone not agreeing with you must all “think the same” or something….?

                4. For filter’s sake:

                  I’ll explain it to you again, Grandpa: I’m in-house at a Fortune 10 company. My docket is about 40% mechanical (think TC 3700), about 40% materials (think TC 1700), and about 20% semiconductors (think TC 2800).

                  But keep cutting and pasting from your script that anybody who disagrees with you is a “s0ftie w0ftie.” It’s so original.

                  Maybe you can get the people who are paying you to post here to write you some new material.

                5. I’m in-house at a Fortune 10 company.

                  Ah, well, we all know that the most detail-oriented and diligent patent prosecutors end up in-house at Fortune 10 companies. There’s no corner cutting or “just file it” mentality there! Everybody knows that.

                  Let “Gramps” give you a little lesson: there’s a big difference between a well-drafted specification, on one hand, and “what you can get away with when nobody’s looking closely” on the other. Everybody in the business knows the difference. If you’re an expert at the latter, well, congrats to you. Collect your paycheck and be happy. But defending lazy drafting practices just makes you look, well, lazy. And immature.

                  Also, experience means nothing if you don’t learn from it. The only reason I’ve ever brought up my background here is to address the mewlings of puffed-up script-reciting bl0whards who insist that anyone who doesn’t love s0ftware patents as much as they do has never seen a computer or a patent before. But you knew that already.

                6. “Let “Gramps” give you a little lesson…”

                  No thanks. Save it for somebody who cares.

                  “There’s no corner cutting or ‘just file it’ mentality there! Everybody knows that.”

                  Your cluelessness is showing. Prolly those examiner tendencies creeping in.

                  “The only reason I’ve ever brought up my background here is to address the mewlings of puffed-up script-reciting bl0whards…”

                  That’s you. Go back and read the last 10,000 or so posts you’ve made.

                7. LOL – AAA JJ, you’ve noticed Malcolm’s number one meme of Accusing Others Of That Which Malcolm Does.

                  This has been noted so often that the mere acronym has found its way to the “politically incorrect” cen cen list and is blocked.

                  Pity that that same cen cen list cannot block the blight itself.

                  Oh well, maybe Prof. Crouch did not want to buy pizzas for the local college boys down at the coffee shop this past weekend (or any other weekend over the last past ten years ;-) )

  4. 8

    Dennis, please include the names of the judges on the panel in your write-ups. We all know that, as a practical matter, the outcome in many CAFC panel decision is dependent on the composition of that panel, so that information is helpful in putting a given decision in the proper context. (Here it was Prost, Taranto and Hughes.)

    1. 8.1

      Is there a decent reference point out there for the attitude of the CAFC judges toward patents? I’m sure several here could make a list if they so desired.

      1. 8.1.2

        Patent Investor

        Here’s a suggestion: don’t invest in patents whose validity hinges on the panel of CAFC judges who might hear the appeal.

  5. 7

    Bad law. Novelty claimed by function rather than structure so they write in the structure to save the claim. Should have reversed construction and let entire claim fail under 112a or 101.

    Here we see the very threat of overbreadth that Morse, Wabash, Halliburton, etc fear – Applicant posits two ways of achieving a functional result, defendant clearly invented a third, unposited manner, and rather than the law rewarding him with his own patent he is put on trial as an infringer. There is zero record evidence that the infringer’s manner of achieving the result was posited by the patentee, or else the construction would not be dispositive of the case.

    The office needs to properly train the examiners to recognize the functionally claimed invalidity to protect the later-inventor. Or what some short sighted people on here call “being anti patent”.”

    1. 7.1

      Btw, between this and the previous wrongly decided “no strong presumption of ‘means for’ invoking/not invoking 112f” case, the federal circuit is setting itself up to decide a claim as “entirely invalid” or “valid but limited to embodiments in spec” at will.

      1. 7.1.1

        the federal circuit is setting itself up to decide a claim as “entirely invalid” or “valid but limited to embodiments in spec” at will.

        That game has been going on for years. I can’t remember whose on which team anymore but there’s at least one CAFC judge still inclined to read limitations into claims to preserve their validity where the spec describes just one species (e.g., “a contoured X”) but somehow (so mysterious!) the claim, on its face, recites just the generic “X”.

      2. 7.1.2

        previous wrongly decided “no strong presumption of ‘means for’ invoking/not invoking 112f”

        Which case and exactly why “wrongly decided”…?

        I mean if course, more than just your feelings or desired view of the law…

    2. 7.2

      What’s hilariously desperate about the patentee’s theory of the case is how the claims read if we use the patentee’s definition of “neutralizer”, i.e., “just some kind of measuring device.”

      Let’s ignore the silliness of repeating the steps for each foot (surely that wasn’t necessary for patentability).

      A method of fitting an individual with a shoe insert which places the ankle of the individual in a neutral position comprising the steps of:

      having the individual place one foot on some kind of measuring device while elevating the other foot off of said measuring device;

      using the measuring device to determine the angle necessary to place the foot in a neutral position;

      providing an insert having an angle which represents the neutral state for the foot

      Wow. Just … wow.

    3. 7.3

      The odds of a nearly identical claim out there “wherein said neutralizer comprises a computer configured to calculate the angle” must be close to 100%.

      Totally different issues, of course. Totally.

    4. 7.4

      Random, I think the problem is the claim is (at least potentially) indefinite. If a person of ordinary skill in the art cannot tell with reasonable certainty what the scope of the claim is, then the claim is invalid.

      Here, if what a neutralizer is was clearly defined in the specification, then I believe there is no problem with definiteness. However if that is not the case from reading the specification, and the prosecution history provides no reliable definition, then it is also indefinite.

      In this case I believe that the court might be right that the claim term at issue, neutralizer, was clearly defined in the parent’s prosecution history. That is what saved this patent from being invalid.

      We get into scope issues if resort to the specification/prosecution history provides no definite structure – here for example if the specification only said that a neutralizer was anything that performed a neutralizing function.

      1. 7.4.1

        Ned,

        Under your “reasoning,” ALL claims are “potentially indefinite” because we have to use this thing called language (in the view of “This is not a pipe”).

        Breadth is simply not the same as indefinitenes. No matter how many times it appears that certain people may want to conflate the two.

        1. 7.4.1.1

          Breadth is simply not the same as indefinitenes.

          Sometimes it is, sometimes it isn’t.

          Different aspects of the patent statutes are informed by many of the same considerations. It should surprise nobody that a junk claim fails under multiple tests. And in many instances it doesn’t particularly matter which one you choose. Invariably the folks who hyperventilate about the hardest about the differences are the same folks who never saw a junky patent claim they couldn’t embrace and slober over.

          And we all know who I’m talking about.

          1. 7.4.1.1.1

            It is not.

            Ever.

            You may have separation items occurring at the same time though. But that does not mean that you should attempt to conflate these two very different things. That path is merely obfuscation.

  6. 6

    Bookend provided by today’s CAFC decision in GE Lighting:

    As GE’s expert admitted, an ordinarily skilled artisan cannot, without additional information, differentiate an “elongated” core from a “non-elongated” core. “Elongated” appears nowhere in the specification, nor, as GE admits, are the core’s dimensions otherwise described in text or drawings. And in the prosecution history, GE distinguished two prior art references disclosing heat sinks … as not containing an “elongated” element.

    This patent should never have left the PTO and if the PTO wants to pretend to be concerned about “patent quality” it should apologize to the public for its rank incompetence here (and elsewhere) and teach applicants that they will never be allowed to overcome the prior art be relying on unsupported, much less undefined, claim terms that have been pulled from the ether.

    1. 6.1

      But everyone knows what elongated means. Is a not very complicated portion of the English language. GE’s expert was probably nervous. Of course he knows what elongated means. It means the item is long compared to its width…. at least about 4 or 5 times longer than wide.

      1. 6.1.1

        I can’t tell if you’re being sarcastic or not.

        It means the item is … at least about 4 or 5 times longer than wide

        In what dictionary did you find this definition?

        Not that it matters. You aren’t allowed to “invent” around the prior art by reaching into the void and grabbing limitations that you failed to include in your specification. Yes, we all know that the s0ftie w0ftie crowd was brought up to believe differently but, hey, everybody has to grow up sometime.

          1. 6.1.1.1.1

            Says the guy who snarked about computers a half hour before my comment. But you’re totally not a hypocrite! Nope. Not you.

            1. 6.1.1.1.1.1

              Lol – my “snark” presages your actual “going there.”

              The fact that you saw that and still went there only shows just how 0bsessed YOU are.

              But thanks for pointing that out, O master clutcher of the shovel!

        1. 6.1.1.3

          In what dictionary have you found the definition of “abstract” hot shot? You have no problem when it comes to knowing what that undefined term means but at “elongated” you suddenly become befuddled.

          1. 6.1.1.3.1

            A bit like when he became befuddled when the word “effectively” was in play awhile back.

            His selectivity is just sooo awesome.

          2. 6.1.1.3.3

            In what dictionary have you found the definition of “abstract” hot shot? You have no problem when it comes to knowing what that undefined term means but at “elongated” you suddenly become befuddled.

            And this is why nobody should ever take the s0ftie w0ftie’s seriously. Welcome to elementary school, tourb! It’s a big step up from kindergarten. You’re going to miss the graham crackers.

            Nobody’s “befuddled” by the definition of “elongated.” There are two problems here. First, the term doesn’t appear anywhere in the applicant’s specification and until the applicant was presented with prior art there was no suggestion anywhere that an “elongated” anything was worthy of protecting. Second, the definition of “elongated” is a relative term and even if the prior art failed to show an “elongated” thing, there is no way that the mere recitation of “elongated” is going to make your claim non-obvious.

            This is basic stuff but, hey, I’m used to explaining basic stuff to ign0rant patent attorneys for whom every day is a profound intellectual struggle.

            Just learn how to write a patent application, guys. Grow up, stop whining, and learn how to do it right. Also, stop lying to your clients about all the awesome tricks you know for avoiding doing any work, learning about the prior art, or disclosing anything in meaningful detail. It’s gr0ss and it makes the whole profession look sleazy. Thanks, guys. LOL — who am I kidding? You’re born b0ttom-feeders and that’s never going to change.

            1. 6.1.1.3.3.2

              A patent doctrine that you might find helpful to understand here Malcolm is the doctrine of inherency.

              It matters not at all whether something “seemed” unimportant until any particular art was brought into the examination. I do not know why you would feel such.

              1. 6.1.1.3.3.2.1

                A patent doctrine that you might find helpful to understand here Malcolm is the doctrine of inherency.

                Maybe someday we’ll all have a laugh about the irony of you pretending that I don’t understand “the doctrine of inherency.”

                In the meantime …. LOL

                1. Rather than any faux pretending, perhaps you can simply adjust your usual scripts to reflect this (unseen) knowledge that you now seem to want to claim to have.

                  Hint: your “feelings” do not show any awareness of that doctrine.

          1. 6.1.1.4.1

            Mike: Doesn’t elongated merely mean a structure that is longer than it is wide?

            According to the opinion, that wouldn’t have sufficed to get around the prior art in this case. Got any other definitions? There’s one out there about “unusually lengthened”. You think that’s “definite”?

            Here’s the deal: applicants need to learn how to write an application. That means you understand what’s in the prior art and you include the terms and definitions of terms that you need to rely on to distinguish your claim from the art.

            It really isn’t that difficult. But that assumes that somebody actually innovated something that you can patent.

      2. 6.1.2

        Something that is much longer than it is wide is elongate.

        Elongated is what an elastic band is, when you are stretching it.

        So I for one am not sure, Les, that everyone agrees, on what “elongated” means.

        1. 6.1.2.1

          There’s no requirement for “much longer” in the definition of “elongated.” It’s a relative term. If something is normally round and I stretch it a tiny bit along one axis, it is now “elongated” relative to the “normal” version. The relative nature of the adjective is the source of the ambiguity. Granted, there might be situations where the degree of elongation isn’t critical to “the invention”. But that’s certainly not this case here, nor would it be wise to ever include such a term without a definition and a back up disclosure of more specific parameters. All this assumes that there is an actual “innovation” involved as opposed to scrivening for monetization’s sake.

        2. 6.1.2.2

          I said everyone knows. Not that they agree. You will find infringers that disagree with the patent owner about the meaning of every word. Patents cannot define every word included in the patent. Where would one fine the definition of the words in the definitions? I suppose its possible to draft a self contained application wherein only words defined in the application are used in the application. But the destinations would have to be circular on the whole….

          Anyway, its clear that the Examiner new what elongated meant and the Examiner must have felt elongated was supported by the specification else there would have been an new matter rejection.

          1. 6.1.2.2.1

            the Examiner must have felt elongated was supported by the specification else there would have been an new matter rejection.

            Or the Examiner was on drugs.

              1. 6.1.2.2.1.1.1

                Has anyone ever seen MM say anything nice about anyone at any time? I can’t remember a case. He’s here to put people down. He wants people to leave so that this is his forum (more that it already is — pretty much every post seems to become MM’s playground). If you disagree with him, prepare to meet his wrath.

                1. I can’t remember a case.

                  I’m trying to remember why anyone should care what you remember about anything.

                  Maybe you can refresh our collective memories?

    2. 6.2

      It’s particularly egregious when Applicant, having plucked “elongated” out of thin air, then has the bare-faced cheek to assert, in support of patentability, that none of the references discloses teaches or suggests “elongated”.

      A PTO Examiner of ordinary skill in the patent examining arts might at that point hoist that Applicant with his own petard, by quietly enquiring of Applicant: “OK. That may be so but, by the same token, where in the application as filed do you announce that “elongated” is the invention here?

      1. 6.2.2

        “It’s particularly egregious when Applicant, having plucked ‘elongated’ out of thin air, then has the bare-faced cheek to assert, in support of patentability, that none of the references discloses teaches or suggests ‘elongated’.”

        It wasn’t “plucked out of thin air.” It was clearly shown in the drawings. Drawings can provide written description support. Maybe not in the over infantilized, hyperpedantic EPO, but we’re not talking about the EPO.

        “A PTO Examiner of ordinary skill in the patent examining arts might at that point hoist that Applicant with his own petard, by quietly enquiring of Applicant: ‘OK. That may be so but, by the same token, where in the application as filed do you announce that ‘elongated’ is the invention here?'”

        Again, it’s in the drawings. You might want to see Vas-Cath: “These cases support our holding that, under proper circumstances, drawings alone may provide a ‘written description’ of an invention as required by § 112.”

        So examiners are experts, huh? Interesting. I do hear that a lot. I hear it, of course, from the examiners themselves. I hear it from appeals court judges too. When it suits the conclusion based decision they are rendering.

        Of course, in this case, the examiner, oh excuse me!, I mean THE EXPERT, saw the amendment to add “elongated” and considered it to have written description support, and to define over the prior art. So now the so-called EXPERT is apparently a complete dolt.

        Interesting.

        1. 6.2.2.1

          Drawings can provide written description support.

          If the drawing being relied on to bring a new term into the claim is a drawing of an embodiment of the invention as opposed to an embodiment of a component of the invention, then the claim in which that term appears needs to be limited to what’s depicted in the drawing.

          If you don’t like that result, learn how to draft an application properly. It’s really not that hard. Of course, you might have to actually understand the prior art instead of burying your head in the sand, pretending you were born yesterday and loading your application with a bunch of nonsense that you’ll massage later. Oh, right, and I also forgot: Appeal, appeal, appeal! Because that’s another way to waste your s@cker client’s money.

          By the way, are you also advising your clients that the “pendulum is swinging back” as other malpractice artists seem to be doing? Better grab that cash fast and run to the bank ….

          1. 6.2.2.1.1

            “…and I also forgot: Appeal, appeal, appeal! Because that’s another way to waste your s@cker client’s money.”

            It’s simply amazing that you’re the only person on this site that 1) knows how to draft an application, 2) has never committed inequitable conduct, and 3) has all the “sophisticated” clients.

            My clients are pretty happy with my appeals. Because I win. And they get what they are entitled to.

            You should try it sometime. But if your super sophisticated clients are content for you to get them picture claims, whatever. None of my business.

            1. 6.2.2.1.1.1

              you’re the only person on this site that 1) knows how to draft an application, 2) has never committed inequitable conduct, and 3) has all the “sophisticated” clients.

              Hey, if you say so.

              What’s amazing is the number of so-called “patent attorneys” who pop up in the wake of decisions like this one to defend the worst drafting practices out there.

              Go ahead and keep appeal!appeal!appealing! your poorly drafted cases. Yes, the patent attorneys do win when they can convince their clients that such appeals are just part of the cost of doing business. After all, “the pendulum is swinging back” and before we know it every junky functional claim littered with undefined abstract terms pulled out of the ether is going to be worth a zillion dollars. It’d be a shame to miss out! Some patent attorney on a blog told us so. So keep throwing money at your favorite patent attorney. They don’t have enough money yet.

          2. 6.2.2.1.2

            If the drawing being relied on to bring a new term into the claim is a drawing of an embodiment of the invention as opposed to an embodiment of a component of the invention, then the claim in which that term appears needs to be limited to what’s depicted in the drawing.

            Doctor, heal thyself.

            Try those short declarative sentences you are always on about.

            learn how to draft an application properly

            LOL – and then in reply you kind of abandon this statement. It appears that what you mean by “properly” Malcolm, is where your pedantic nature abounds.

            (and love how you attempt to lump AAA JJ into the “everyone else must all believe the same stuff” crowd” with the pendulum comment. Has AAA JJ ever given any indication whatsoever that he believes such? Hint: no. But why let that get in the way of your scripted reply, eh?)

    3. 6.3

      link to patentimages.storage.googleapis.com

      Figures 1 and 2 of the subject patent.

      Core is 62, goes from 60 to 64 (the fin like things).

      It looks longer than it is wide – so I would say inherently disclosed. Yes, the spec doesn’t use the term “elongated” but the Figure shows it.

      Now, that does actually answer the question that the litigation asked – what the f does “elongated” mean under 112(b) [really, 112, 2nd Paragraph, because it is pre-AIA].

    4. 6.4

      “…teach applicants that they will never be allowed to overcome the prior art be relying on unsupported, much less undefined, claim terms that have been pulled from the ether.”

      Unlike DNA bits and protein fragments, many electrical and mechanical inventions include drawings as part of the disclosure. Relying on the drawings’ disclosure, and what one of ordinary skill in the art would understand from the drawings, without going into painstaking written detail as to any, and every, possible feature that the drawings disclose is part of the grown up arts that are electrical and mechanical.

      1. 6.4.1

        Did I say that drawings don’t constitute support? No, I didn’t.

        And it goes without saying that if you’re only support for a newly introduced claim term is found in a drawing, then be prepared to have the claim in which that term appears limited to what appears in that drawing.

        Also, I know this hard for a person with a limited technological background (i.e., you) to understand, but biotech applications typically include drawings. Competent grown up practitioners still try to define their terms, particular the key terms. The failure to do so is almost always indicative of incompetence or chicanery.

        But competent practitioners know this already.

        [shrugs]

        1. 6.4.1.1

          The only person on this site impressed with your understanding of nucleic acids and the awesome FORTRAN programs you wrote as a post doc is yourself.

    5. 6.5

      “As GE’s expert admitted, an ordinarily skilled artisan cannot, without additional information, differentiate an ‘elongated’ core from a ‘non-elongated’ core.”

      That’s some pretty turrible witness prep. I would expect better.

      1. 6.5.1

        That’s some pretty turrible witness prep. I would expect better.

        Not everybody is as comfortable with perjuring themselves as you are, AAA JJ.

        1. 6.5.1.1

          Way to miss the point. Not preparing the witness to testify on the “ordinary and customary” meaning of the claim terms is terrible practice. No need for perjury. But as we all know you consider yourself the only person on this site to never have committed inequitable conduct, it’s not surprising.

          Good for you.

          1. 6.5.1.1.1

            Those of us who have litigated (at least) know that some cases are born l0sers. In those cases, it’s often not too difficult to get the l0sing side’s expert to admit the truth, regardless of the amount of time spent “prepping.”

            This wasn’t about looking up the dictionary definition of the term “elongated.” It’s about what exactly does the term “elongated” mean in the context of this technology. And the truthful answer is that you can’t answer the question with any degree of specificity without “additional information.”

            Note that with respect to the prior art which was allegedly distinguished as being “non-elongated”, the CAFC opinion observes that “the disk … and the plate … [in each of the cited references] both extend in length”.

            But, according to the applicant, somehow those articles weren’t “elongated”. Why should the public be forced to play this game with patentees, at the cost of hundreds of thoudands of dollars?

            Applicants need to learn how write specifications, and the PTO needs to learn how to say “no” to its “stakeholders” when they venture far beyond the borders of the playground.

            1. 6.5.1.1.1.1

              “Why should the public be forced to play this game with patentees, at the cost of hundreds of thoudands of dollars?”

              Wasn’t aware that “the public” was being sued in this case.

              1. 6.5.1.1.1.1.1

                In Malcolm’s mind, the field of rye he protects is for ALL OTHERS except those E V I L patent holders….

              2. 6.5.1.1.1.1.2

                Wasn’t aware that “the public” was being sued in this case.

                Ah yes: patents don’t really exist and have no impact on the public until the lawsuit is filed.

                Is this the latest script du jour?

            2. 6.5.1.1.1.2

              Those of us who have litigated (at least) know that some cases are born l0sers. In those cases, it’s often not too difficult to get the l0sing side’s expert to admit the truth, regardless of the amount of time spent “prepping.”

              What delightful spin.

              Of course, this is exactly NOT what AAA JJ was saying. But hey, you managed to imply your own “greatness” again, while moving those goalposts.

              How charming.

              Maybe now you want to go back and talk about what AAA JJ was actually talking about….

  7. 5

    according to ProFoot, a neutralizer should be defined based upon its functional ability rather than any particular physical elements.

    Hilarious. The “neutralizer” is the key component to the method. The steps that don’t recite the use of the “neutralizer” simply recite “providing the insert” which has an angle “representing” the “neutral state” determined through use of … (wait for it) … the “neutralizer.”

    What a piece of junk.

    One question that I have here involves the court’s use of prosecution history as providing “evidence of the inventor’s understanding of neutralizer.” The court has previously held that inventor’s understanding of claim meaning is not directly relevant to claim construction. Rather, the focus is on the objective meaning understood by someone of ordinary skill in the art.

    Dennis, I think the prohibition on consideration of “the inventor’s understanding” is narrower than you make it appear in your discussion here. Certainly the inventor’s testimony about what he/she “understood” a claim term to mean can’t trump the meaning of the term identified through the lens of Phillips. But there’s no avoiding the fact that when the Phillips methodology is followed, the court (standing in the shoes of one of ordinary skill) will at times be trying to figure out what “the inventor” (or the inventor’s attorney) must have “meant” when he/she used or relied on certain words. The problem for claim interpreters arises in situations, as in this case, where “the inventor” uses a term to mean whatever is convenient at the moment. In such situations, the claim should be deemed indefinite or at least interpreted against the applicant/patentee.

    1. 5.1

      I think Dennis asked a good question, and that you will find case law indicating that what the inventor now says he personally subjectively meant by a word in a claim is not relevant to what that word objectively means for a 103 [POSITA] test, and does not overcome intrinsic evidence. Of course the inventor’s testimony could presumably be used to present evidence of what others in his field thought such a word meant at the filing date, if he had such evidence?

        1. 5.1.1.1

          “Being your own lexicographer” refers to defining claim terms in the spec itself, and is clear intrinsic evidence.
          An attempt to better define a claim term in application prosecution history arguments, even if effective, could be considered an admission against interest and/or prosecution history estoppel.
          Neither is what Dennis was apparently referring to – subsequent inventor patent litigation testimony.

          1. 5.1.1.1.1

            Thanks Paul.

            I am not sure though that the timing (in the litigation phase) of the item being used for meaning was something actually stated during litigation as opposed to something stated during prosecution.

            In other words I do not take Prof. Crouch’s comment to be what you are taking that same comment to be. The court was using prosecution history – not litigation history. I do not see where you think that Prof. Crouch may have said anything about any statements strictly from litigation, as opposed to statements in litigation about what was said during prosecution.

            1. 5.1.1.1.1.1

              You may be right about the latter, but claim definition arguments in the application prosecution are usually mere attorney argumentation, not inventor declarations, unless supported with good evidence. Inventor declarations in the file history would still not be of proper evidentiary value [other than possible admissions against interest?] if not providing evidence of what the claim term meant to POSITAs [not just the inventor] as of the filing date.

              1. 5.1.1.1.1.1.1

                Maybe Prof. Crouch will weigh in (although I think that we are close in view of the point here).

  8. 3

    Is not the use of prosecution history understood to be an exception to PHOSITA, as an express repudiation of anything except what is stated by applicant, forsaking the PHOSITA standard (and not incoincidently creating a type of “patent profanity” – the very “trap for the unwary” during prosecution)…?

    Or in other words, PHOSITA remains the standard, except when the applicant affirmly says otherwise (akin to being his own lexicographer).

    1. 2.1

      Seems the court reviewed this as an implicit invocation of 112(f), which is not unheard of.

      1. 2.1.1

        Not so sure about that Alex.

        Courts doing that have not been shy about expressly saying that they are doing that.

        1. 2.1.1.1

          during oral arguments the judges spent most of the time discussing how the term should have invoked a 112 6th issue

  9. 1

    As to “the process” of claim construction, the Decision has it as: “The words of a claim are generally given their ordinary and customary meaning, which is the meaning that the term would have to a person of ordinary skill in the art at the time of the invention.”

    Meanwhile, Dennis has it as: “The approach is to look for how a personal of ordinary skill in the art at the time of the application filing date would have interpreted the claim language”

    Whereas the Supreme Court in the UK has it as: What was the writer of the claim using the language of the claim to mean (to the PHOSITA reader).

    Dennis and SCOTUK refer to the language of the claim whereas Philips is focussed on the meaning of an individual word in the claim. Is Dennis (perhaps unwittingly) closer to SCOTUK than to Philips?

Comments are closed.