En Banc: Construing Claims

by Dennis Crouch

Over the past several of years, the court has appeared to be increasingly divided on the question of when a district court (or PTAB judge) must offer an express construction of beyond simply assigning a claim its “plain and ordinary meaning” without further definition.  In NobelBiz v. Global Connect, the Federal Circuit ruled that disputed claims must be construed (despite some precedent to the contrary).  That result means that NobelBiz’s jury win is vacated and remanded.

Please Define What you Mean by Ordinary Meaning

Now in its en banc filing, the patentee has asked three questions:

  1. May a district court ever assign a “plain and ordinary meaning” construction? Or is an express construction required whenever a litigant asserts an O2 Micro “dispute,” as dictated by NobelBiz and Eon?
  2. May the Federal Circuit narrow claim scope without finding lexicography or prosecution disclaimer, by parsing the intrinsic record and relying on “extra-record extrinsic evidence,” as occurred in NobelBiz?
  3. May a district court refer the question of infringement to a jury when claim terms are assigned their plain and ordinary meaning?

The briefing is well done and does good job of highlighting the distinct approaches by the various Federal Circuit judges.  Even if they disagree on the appropriate rule, all of the Federal Circuit judges should agree that this is an issue that needs resolution.

[Panel Opinion with Newman Dissent][Petition for Rehearing En Banc]

63 thoughts on “En Banc: Construing Claims

  1. In the annals of patent blog silliness, this has to be right up there:

    Technology has become so complicated that it is no longer possible to properly describe its metes and bounds using 200 year-old claim grammar.

    Suffice it to say that if you can’t describe what you innovated using the same “grammar” that scientist use to describe objective physical reality and the phsyical structures within that reality, then you either aren’t “innovating” “technology” but something else, or you don’t know what it is that you innovated but for some mysterious reason you believe that the government needs to reward you with a monopoly anyway.

    Yes, I know: this is a truly shocking insight. Nobody ever thought about this issue before! Except that there that en banc Federal Circuit case back in 2009 — the most important case Randy Rader ever wrote — that dealt with the issue head on. See Abbott Laboratories v. Sandoz. See also the usual people whining and whining in threads on that topic here about all the undescribable “innovation” that would be “oppressed” because of the decision. What actually happened is that the PTO continued to crank out record breaking numbers of patents year after year for the next 8 years. And that included an incredible amount of junk (but surely far less product-by-process junk than we would have otherwise seen).

    1. You want to inject Product-by-process claims as some sort of legal position of yours…?

      Odd, but let’s go with it. What exactly is the point that YOU are trying to make with that case.

      Feel free to use your mastery of the English language to actually spell out your position and show how that case supports your position (hint: omit the usual ad hominem that drowns out your posts).

      1. What exactly is the point that YOU are trying to make with that case.

        The case speaks for itself. Read it. The patentee tried to make the same “argument” that I quoted above, i.e., it was “too hard” (or impossible!) to describe the “innovation” using words but give me a monopoly on this indescribable thing anyway, or else we’ll all be Amish. Or the Chinese will take over. Same old story.

        1. The case speaks for itself, and I have read it.

          What YOU think the case says though is a completely different matter. As well as what point you think that THAT case provides.

          For example, that case does NOT eliminate product-by-process claims, and in fact, your desired take-away of “Too-hard-does-not-work” is NOT a take-away from that case.

          As to you slipping back into the mindless ad hominem and attempting to mix in “Amish” or “Chinese,” well, not only is your ad hominem not appropriate to the point under discussion, you STILL have made no cognizable legal point here.

          Same old story

          Sadly, that part is true, as your blight remains that same old story for eleven and half years now.

          1. I never said that product by process claims were “eliminated”.

            What has been eliminated is the ability to go after someone’s product with a claim that doesn’t describe the product.

  2. Now let me tell you about a bugaboo mine: not removing unnecessary claim limitations. A lot of times we file claims with a theory of invention that turns out to be misplaced. It may turn out that only one feature is new, or that subject matter from dependent claims must be incorporated into the independent claim to gain allowance. But if one leaves in the claim the subject matter that formed the debate between the attorney and the examiner, that subject matter is subject to all the disclaimers made by the attorney during the course of trying to get the claims allowed based upon the original theory. Thus even if the accused infringer is practicing the novel features of the invention, they may still be able to avoid infringement because they are not practicing the otherwise prior art element as narrowed both by limitation to the improvement and by the argument of the attorney during prosecution.

    Just for example, assume the client thinks the invention of a better mousetrap is an improved spring. But it turns out that the improved spring is not an improved spring, but is otherwise known to the art. What is new is the use of any spring in combination with a particular lever.

    Thus if one does not remove or change the limitations regarding the spring to make it clear that one is no longer claiming the particular improved spring, but instead are now claiming any spring in combination with the particular lever, one is going to be limited to the improved spring and all the disclaimers made during prosecution pertaining thereto even though the invention is broader.

    1. That is a pretty interesting line of thought, Ned.

    2. I vaguely remember having similar thoughts when reading about the doctrine of equivalents. If you’re not sure whether the limitation is necessary, I suppose that’s what dependent claims are for.

    3. One of many good reasons to do a prior art search before filing.

    4. Ned, that is part of any good attorney’s prosecution. Identify what was patentable over the cited references and determine the broadest claim that is patentable. The step of re-writing the claim or removing claim elements usually has to come with a continuation or RCE to file new claims.

      1. Ned’s view here is different.

        He is actively pruning a claim of anything that may have come up during prosecution.

        1. anon, I think Ned’s view isn’t different.

          Ned is adding a fact which is a mistake by the attorney. That is that the attorney argues the improvement when only the combination is needed. That would be a mistake by the attorney. The attorney should argue the broadest argument that is patentable over the cited art.

          What Ned said is just common practice. It would be fixing a mistake by the prosecuting attorney.

  3. Just to stir this pot, contrast the arguments here [including this brief’s citations of conflicting Fed.Cir. claim interpretations – by no means complete] with numerous arguments presented in other appeals and blog comments here that judicial claim construction is much clearer than BRI claim construction [sustained in Cuozzo].

    1. The one has ZERO to do with the other, oh Cheer Leader of the IPR.

      That you even venture forth such a comment indicates has desparate you much feel the Constitutional infirmities are.

    2. arguments … that judicial claim construction is much clearer than BRI claim construction

      I haven’t seen these arguments and it’s not immediately clear what the arguments would be. Both use the same tools in more or less the same way, but BRI resolves close questions in favor of breadth, right? If that’s so, then it’s not clear why one would be clearer than the other as opposed to just broader.

      1. Yes, and it should only be broader if there the record and other evidence provides a legitimate reasonable choice between different claim interpretations.

  4. One point to keep in mind is that “construing” the usual uncontested majority of the claim language that is not relevant to any disputed issue of infringement or prior art distinction is a waste of time for everyone, including the judges.

    1. So true. Courts usually limit the number of claim terms that they construe to very few.

  5. Comments deteriorated quickly.

    This is an interesting issue, but I’m not sure what the right “rule” should be. The line between claim construction arguments and infringement arguments is easy to discern in some cases and really difficult in others. I don’t know whether this is the case to try to sort that out or whether any reasonable resolution is possible, but certainly agree with Dennis that “Even if they disagree on the appropriate rule, all of the Federal Circuit judges should agree that this is an issue that needs resolution.”

    1. The line between claim construction arguments and infringement arguments is easy to discern in some cases and really difficult in others

      Not sure I can agree with that. The two are necessarily linked (there really is no “line” to speak of).

      1. Legally, there is a line, and cases like O2 Micro say that it’s reversible error when the line is crossed. The court construes claims, the jury decides infringement. Claim construction is reviewed mostly de novo on appeal, and jury verdicts on infringement are reviewed with deference. Per O2 Micro and other cases, it’s legal error to send “claim construction” to the jury.

        I suppose “the line” is that the jury is supposed to decide disputes over how the accused products actually work as a factual matter. If no one disputes relevant aspects of how the accused products work, then infringement or noninfringement should follow as a matter of law, but it’s not always that neat in practice.

        1. That is not the line that I am talking about.

          Of course there are lines based on who does what.

          That though is quite different from what is effectively NO line between whether or not construction occurs (no matter who does it) and whether or not infringement is decided (again, no matter who does it).

          Whether or not it is legal error to send “claim construction” to the jury only tells me that you are not looking at the same issue as to which the “no line” comment is directed to.

  6. This just in: Leftist efforts to recruit women into STEM (and the fields dominating patent lawl) likely self-defeating.

    Whoulda thunk it?

    link to campusreform.org

    1. Super reliable site there. Totally not a wingnert pukkke funnel for li’l neo-N@ zi’s like 6.

      1. The site is of course somewhat biased, but take a look at who the researcher is there lefty.

        MM: Everyone that finds the massive factual faults in leftism is a wingnut! Everyone! Even if they’re a liberal progressive democrat!

        lulz.

        1. The site is of course somewhat biased

          ROTFLMAO

        2. massive factual faults in leftism

          LOLOLOL

          Deep deep stuff.

          1. MM’s upset that some of the “truth leaked out” lol.

            Be MM/lefty. Treat women like they’re re ta rds, and try to control their lives “for their own good”, tell everyone you’re doing it “for the women” and to “make everyone’s lives better”. Pretty much nothing you do is actually effective at affecting change, often actively sabotages your own supposed goal (although your real goal is just to sht on the dread white cis hetero mail christian which you got away with), and mostly just pis ses people off. And that which is effective to achieve change doesn’t work out to help anyone except every now and again a few, generally already over-privileged women who then generally end up immeasurably hurt in other ways unless their privilege is sufficient to tide them over. Someone points this out. Scream “they’re a wingnut”! Scream “I help people”! Scream about how the “republikkkans” are “kneecapping” the “muh program” for your “muh victims”.

            It’d make for a hilarious sit com. I’m in the wrong business, I should be writing productions.

            1. Treat women like they’re re ta rds, and try to control their lives “for their own good”

              The projection is amazing. Congratulations.

              1. The projection is amazing

                Deep deep stuff.

                Regardless of topic, comments such as these from Malcolm simply betray the 11 year blight that is Malcolm.

                First, as his number one meme is Accuse Others, that he would deign to call out anyone for “projecting” is, well, stultifying.

                Secondly, it appears that he has not realized yet that his “deep deep stuff” and “so serious” comments reflect a poker tell that he has nothing meaningful to actually say. It’s as if he thinks a pure “stutter” is somehow the most eloquent oratory ever delivered.

                1. Remember, folks: “anon” isn’t here to defend 6 or his views.

                  Nope. He’s “independent”. And totally not just another glibertarian with the intellectual depth of a 4 year old.

                2. You kind of missed the “regardless of topic” line there Malcolm.

                  Read again what I post – there is ZERO defense of anybody. What there is IS your massive ego in the way of you realizing that a critique of YOU is just not the same as a defense of whatever it is that you are being a (typical) ninny about in your blight style of posting.

                  Yes – your posting “style” is the singles largest source of blight in this ecosystem.

                  Happy 11th year of that auspicious record.

                  What a putz.

                3. Yes, CRP, I am only talking about the blight here in this ecosystem as to that 11 year mark (properly, as it is now September, I should be calling it an 11 and 1/2 year mark, as the archives here show that the Malcolm blight extends back to February of 2006.

                  So now that you bring this up, let me remind everyone here of this particular ecosystem Problem and Solution Approach(?)….

                  Which does remind me of that short “ecosystem-friendly” experiment we had awhile back here at Patently-O with the DISQUS system.

                  With that system (under normal – and perfectly adequate – identity-protection control settings), one could easily “co-locate” ALL of any particular poster’s postings.

                  It was quite illustrative to use that function and see just how much of a limited script certain sAme ones of the posting ecosystem used.

                  It was not small coincidence (yes, perceptions abound), that after this feature was discovered, and – in the name of making this a better ecosystem – the (long-practiced) tendency was highlighted, two things happened:

                  Malcolm (and a select few of like-“feelings” posters) opted for a maximum identity-protection controls setting that hid the script indicator; and

                  When that action was questioned (and Malcolm never provided an adequate answer as to why he wanted to hide such evidence of his scripting), the DISQUS experiment was stopped by the editors of this blog.

                  So, as much as Malcolm wants to turn to his number one meme of Accuse Others (and accuse me of “being her to defend 6 and his views), he quite misses the actual CLEAR point that my pointing out HIS errors and blight has nothing to do with defending anyone else or anyone else’s views.

                  That’s just Malcolm trying to kick up dust over the point that I am making – regarding Malcolm’s blight.

                  A blight that (apparently – again, those damm perceptions abound) that had L O N G been considered “acceptable” even as other commentators face subjective and uneven application*** of editorial controls in that same “name” of “ecosystem betterment.”

                  It is abundantly clear that “making the ecosystem better” is a sham; or at a minimum, it is a rather peculiar definition of “better” that is being aimed for.

                  *** a current example of this is the fact that different posters have different “count” limits on the number of posts allowed per thread per day.

                  Those – like myself – who actively engage in dialogues with multiple parties have a substantially lower limit than those – like Malcolm – who specialize in drive-by repeated script ad hominem laden diatribes.

                  If one does not like the narrative developed with actual dialogues, the better answer would be to develop the arguments on the one side better – as opposed to permitting (promoting) the ability to wield an internet style of shout down with the drive-by monologue style of NON-engagement.

              2. I know what you’re talking about, but now it isn’t the dread right wing that is asserting the power to control their lives, it is lefties.

                “you grls there, you need to go into stem!” “you grls there, you need to chase chad, not get married n have kids!” “you grls there, you need to work your whole lives and not have kids” “you grls there need to try to rise up the ranks and be powrfl womenz!”

                Lefties. So hilarious. I swear I could write a good sit com just on this premise for at least a season’s worth of material.

                1. Yes, we “leftists” are rounding up women into Forced Technology Camps.

                  And 6 is going to save them with his magic pimple cream.

                2. Um no, you’re rounding up everyone, women included into forced reedumacation camps where gender is weeee whatevz, arguable “mental illness” that causes you to want to genitally mutilate yourself and commit suicide is the BESTESTEST THING EVAR, women are the stronkzest and need to work till they’re 60 straight through (plenty of overtime!) with 0 babies so there is no muh wagez gapz, and they’re not dependent on no manz, double especially as much if they’re black/non-white (or wait, it might have been the other way around), and the dread white christian cis hetero mail is the evilz/super powerful and oppressive (also they’re all rapi sts until proven otherwise in a court of university “behavior” where there is no due process! bonus, nonwhite guys get the same re: ra ep!). And that’s just the first hour!

                  It’s called hur dur “mandatory leftist diversity training” and it’s a state institution/private institution/corp near you. It’ll be the setting for my sit com.

                  The attempts to indoctrinate women with a lurve of stem is just a bonus compared to the “camps”.

    2. Technology has become so complicated that it is no longer possible to properly describe its metes and bounds using 200 year-old claim grammar.

      This claim grammar is not mandated by statute. It comes from case law decided by judges who have to have their clerks find and print out files for them to read because they cannot do it themselves.

      These same judges give deference to examiners like 6 whose sole purpose is to shovel sand in the gears of the patent system.

      1. Mr. No, I must compliment you on packing so much bigotry into one post.

        1. Ned,

          What are you talking about?

          What in particular indicates “bigotry” in anything that NOiP stated?

            1. NOiP ‘s post – repeated in its entirety:

              Technology has become so complicated that it is no longer possible to properly describe its metes and bounds using 200 year-old claim grammar.

              This claim grammar is not mandated by statute. It comes from case law decided by judges who have to have their clerks find and print out files for them to read because they cannot do it themselves.

              These same judges give deference to examiners like 6 whose sole purpose is to shovel sand in the gears of the patent system.

              WHERE are you seeing “bigotry”…?

      2. “These same judges give deference to examiners like 6 whose sole purpose is to shovel sand in the gears of the patent system.”

        o now now, I give plenty of patents plenty quickly.

  7. BREAKING: Judge Posner Stepping Down After 36 Years At 7th Circ.

    Thanks goodness the boz0 that thinks the only motivation needed for invention is free pizzas. He did a few good things, but mostly his body of work is dismal. He is also the one that advocated that Wall Street not be punished because we should just move on.

    Good riddance you loser.

    1. He is also the one that advocated that Wall Street not be punished because we should just move on.

      Super brave position to take, all by himself.

      LOL

  8. link to washingtonpost.com

    OT, but information processing requires time, space, and energy. The conservation of information is the most important law in physics. (Note that the propagandists call this logic and claim that new functionality is possible without structure. ) Just bizarre that the inventions that are changing the world are claimed to be not inventions by the propagandists.

    1. A machine that does what peoples’ brains do, but better. And the propagandists claim these are not inventions. Only with judges that are so ignorant of technology (our goon squad) would this fly.

    2. Careful. You may be establishing prior art for claims to a chat-bot which impersonates a patent professional based on wikipedia articles.

      1. I am demoting you to troll, fourth class.

    3. Assuming that you are correct that entropy has something to do with patentable subject matter, what is the proper rejection of a claim to subject matter that does not reduce entropy, such as posts by blowhards on Internet discussion sites?

      1. The Conservation of Information is not the same as entropy. And you know that.

      2. Most claims to anything do not result in a reduction of entropy.

        Even your attempted slam is fallacious.

        1. Plenty of claims reduce the entropy of a particular subset of the universe.

          1. Please read more carefully what I actually posted, Ben.

      3. Ned,
        I think it depends on the filing date. Post AIA, patentable weight cannot be given to methods for demonstrating mental disability in order to procure tax credits.

  9. Essentially every direct infringement question can be redefined as a claim construction question.

    Ultimately, this is about having the judge decide the question of infringement (sometimes validity) by forcing the judge to (sometimes recursively) construe claim terms until the construction explicitly includes or excludes the accused infringing instrumentality (and/or prior art).

  10. Perhaps whether a claim term is ambiguous can only be answered after a reading of the specification. For example, a court would need to review the intrinsic evidence, at a minimum, to see whether the patentee had used a specially defined term or disclaimed subject matter.

  11. Just to be clear, the claim terms at issue are “outbound call” and “replacement telephone number” that may have plain and ordinary meaning to one of ordinary skill in the art but certainly do not have plain and ordinary meaning to the average citizen – juror.

    These terms feel more like coined terms that are idiosyncratic to the particular application as opposed to having well understood industry meanings to which an expert might testify. Regardless, this is one circumstance where I think I side with the Federal Circuit panel that construction was required.

    Now whether the Federal Circuit had the right to construe the claims itself is a separate question. The ultimate construction may require expert testimony, which the District Court may need to consider. It is improper that Federal Circuit conduct original fact-finding at the appellate court level.

    1. Just to be clear, the claim terms at issue are “outbound call” and “replacement telephone number” that may have plain and ordinary meaning to one of ordinary skill in the art but certainly do not have plain and ordinary meaning to the average citizen – juror.

      Jurors can’t ascribe a plain and ordinary meaning to outbound call or replacement telephone number?

      I guess all those shrinkwrap licenses really are illegal.

      1. MM, In the context of telephone equipment, I do not think that clearly describe what circuits or apparatus is involved.

        Outbound might be more definite if it was intended to contrast with an inbound call.

        Replacement phone might be more definite if one clearly knew what an original phone number was. What was the replacement number replacing?

        1. In the context of telephone equipment, I do not think that clearly describe what circuits or apparatus is involved.

          Right. Also true in the context of circus tent maintenance.

          Outbound might be more definite if it was intended to contrast with an inbound call.

          LOL As opposed to what other intent?

          Replacement phone might be more definite if one clearly knew what an original phone number was.

          Maybe. All kinds of things can make a phrase more “definite.”

          The problem here is that the claim is junk, not that lay juries can’t understand what an “outbound call” is.

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