In re Smith Int’l (Fed. Cir. 2017)
The validity of Smith’s patent turns on proper definition of the claim term “body” as used in U.S. Patent No. 6,732,817. With the basic question being: what is the “broadest reasonable interpretation” of the term “body” as used by the patentee. In its decision here, the Federal Circuit has reversed the PTAB unpatentability conclusion (ex parte reexam) — holding that the PTO had seemingly forgotten that BRI requires a “reasonable” construction.
The patent is directed to an oil drilling tool that can collapse down to fit through a small borehole and then expand-out to fill a larger borehole. Claim 28 shown below shows that the claim basically includes two elements, a body and an arm. The claim itself does not include any further express limitations on the Body. Still, it is clear from the patent document that the claimed 
body is something totally different from the human figure shown above-right (from a different patent). Rather, the specification describes “a generally cylindrical tool body 510 with a flowbore 508 extending therethrough” and “one or more moveable, non-pivotable tool arms 520.”
The PTO interpreted the term in-context but still in a broad manner – finding that the term “Body” can encompass additional components such as the mandrel and cam-sleeve and noting that the specification does not actually define the term. The Board noted that the term is generic – similar to “member” or “element” that “by itself provides no structural specificity.” Here, in particular, the claim was directed to the entire tool, but only claimed two parts – the body and arm. It was perfectly reasonable, according to the Board, for the examiner to interpret Body as including other unclaimed elements of the tool. This broad definition made it easy to find the claims unpatentable based upon a single prior art reference.
On appeal, the Federal Circuit has reversed – holding that the Board’s construction was “unreasonably broad.” Here, although reasonableness is – in most circumstances – usually a question of fact, because it is part of claim construction the Federal Circuit calls it a question of law with de novo appellate review. Here, the court found that “body” should be more narrowly construed — even at its broadest reasonable scope. In reaching its conclusion, the Federal Circuit found that the Board erroneously based its broad interpretation upon the fact that the specification did not “in and of itself proscribe the Examiner’s construction.” On appeal, the Federal Circuit noted that the BRI is does not extend so far as to cover all definitions not prohibited by the specification:
The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.”
Slip op., quoting In re Morris, 127 F.3d 1048 (Fed. Cir. 1997). The court went on to reiterate that a term’s ‘broadest reasonable interpretation’ is narrower than the the logically ‘broadest possible interpretation’ of a claim.
Looking through the specification it does appear, indeed, that the patentee did not use the “body” term as a generic “member,” but used it consistently to refer to a cylindrical tool body that was separate and distinct from the other elements of the tool. However, one important issue that the court did not discuss is that of claim differentiation. Pointedly, many the claims focus on particular bodies: “tubular body”; “tool body”; and “a body including a plurality of angled channels.” The court does not consider here whether those seemingly more narrow recitations of the element should be seen as broadening the definition of the bare “body.”
= = = = =
Claim 28:
28. An expandable downhole tool for use in a drilling assembly positioned within a wellbore having an original diameter borehole and an enlarged diameter borehole, comprising:
a body; and
at least one non-pivotable, moveable arm having at least one borehole engaging pad adapted to accommodate cutting structures or wear structures or a combination thereof;
wherein said at least one arm is moveable between a first position defining a collapsed diameter, and a second position defining an expanded diameter approximately equal to said enlarged diameter borehole.
.
Once again, I am confused.
How is it broader to interpret body as including more stuff?
Moreover, how is it easier to reject if you assume the body has more of the stuff from the spec than merely element 510?
If you read body as including more stuff it should be harder to find art with that same set of stuff.
This is how I reasoned it:
“A cookie” is very broad and encompasses all cookies. Cookies of course can include any combination of the standard parts of a cookie. e.g. batter and chocolate chips… batter and peanut butter… But its highly debated whether an animal cracker is a cookie.
Applicant showed and described various delicious home-made type cookies. (think Mrs. Fields type cookies)
But the examiner pointed to a reference describing an animal cracker because the specification did not articulate that an animal cracker is not “a cookie” as shown and described.
So the Federal Circuit said “naw… just because the broadest POSSIBLE interpretation of “cookie” includes an animal cracker, we all know they are not cookies, so the broadest REASONABLE interpretation should not include them.
Yes, I am hungry…
Your analogy did not help me one bit. An animal cracker (which is a cookie by the way) has less stuff that the disclosed exemplar chocolate chip. You do not have to read stuff from the spec into cookie in order to find animal cracker to read on cookie. In fact, you have to ignore the chocolate chips from the spec. THAT is a broader interpretation, which may or may not be reasonable.
The whole point is BRI requires a “Reasonable” determination. Your interpretation of cookie may be the broader interpretation, but the court is saying it is not a reasonable one.
It is unreasonable to call an animal cracker a cookie. You sir, are being unreasonable.
BRI is applicable to claim language, not cited art. They can’t apply BRI to a RITZ cracker and cite it against your cookie. They have to apply BRI to your cookie (in light of the spec) and say it reads on the cracker… but a cookie has sugar enough to taste and while a RITZ has buttery goodness, it is not sweet.
link to youtu.be
Not all cookies are sweet…
(just saying)
Shrug …. anyway, while Diamond Dave’s version is more fun, for this crowd I’m going with:
link to youtu.be
Hey, Mooney, have a look at D798091, issued two days ago, along with the slightly older D792137 and D791524, all owned by Post Consumer Brands. You’ll love ’em. IPlaw360 says the most recent one of them is the basis for a suit filed against General Mills.
Wow thanks for the heads up D should write that up asap
link to abovethelaw.com
“The salary one can expect to earn as USPTO director is $165,300, which is less than a first-year Biglaw associate’s paycheck. Iancu may be in for an incredibly rude awakening, because he lists his take from his partnership share at Irell during 2016-2017 at $4,733,748, with another $500,000 to $100,000 still owed. ”
Anyone have an estimate at how much a post-PTO pay premium Iancu can expect after a 2 year stint at the PTO? I’m curious whether the job will necessarily decrease his expected lifetime earnings, given the significant opportunity cost.
Iancu may be in for an incredibly rude awakening,
Imagine waking up and looking at your assets and seeing that their worth tens of millions of dollars!
What a nightmare.
I feel great pity for this poor suffering Iancu person. Oh, the humanity.
The final construction of CAFC of the term “body” still sounds indefinite to me:
I wonder how this will translate in future litigation.
This is an appeal of a patent reexamination, in which “indefiniteness” can only even be raised as to newly added or substantially amended claims.
As in an IPR, where if claim indefiniteness is found the claim may be refused consideration.
I agree with you regarding the grounds of rejections that can be raised in a reexamination. My question was more about the effects of a less than adequate claim construction by the CAFC on this patent. Maybe I should not have used “indefinite” to express what I think of the claim construction of the court.
Pika, is this truly claim construction or just telling future courts that the claim term body cannot be construed to include the listed structures?
The claim construction was disputed. I think the Court must propose a claim construction in its de novo review. So yes, this must be the construction of the term ‘body.’
Well, Pika, standing alone, the Feds “construction” that a body is a component (and is not “these” components) is hardly definite. I agree with you on this.
You guys are asking the term “body” to do too much. It’s only role is a place for the “channels” of claim 34. Since the channels house the extensions of the moveable arms, the body is distinct from the moveable connected components. Bear in mind that patent claims are directed to a person of ordinary skill rather than attorneys.
34. The tool of claim 28 wherein said at least one non-pivotable, moveable arm further comprises a plurality of extensions that fit within a plurality of channels in said body.
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Re amending the claims, the decision here says that: “During the ex parte reexamination, Smith added and cancelled claims 74–78 and 92, cancelled claim 37, amended claims 28, 35, 36, and 43, added and amended claims 82–84, 87, and 89–91, and added claims 79–81, 85, 86, 88, and 93–102. Claims 28, 43, and 93 are the independent claims.”
What happened to the lawsuit that triggered this reexam while this reexam was pending from 2012? And what happened in the other indicated later lawsuit on this patent in which IPRs were denied because of this pending ex parte reexam?
Paul, it appears from the above that both independent claims 28 and 43, the only independent claims that could possibly be part of the lawsuit, were amended. As such, the lawsuit is over if the amended claims are changed in scope. The only thing that remains is motion for SJ where the patent owner can try to show that the scope of the claims is unchanged.
Not sure I follow your “the lawsuit is over” statement Ned.
Damages maybe affected, but if the (changed) scope STILL affects the products (or methods) accused of being infringing, why would the case be over?
anon, are they still accused when all the claims are changed materially in scope?
That’s a good question.
The answer is the great lawyer answer:
It depends.
The change in scope may very well still stick with the infringement claims.
anon, the question is not whether the products infringe the “new” claims, it is whether they are even properly part of the lawsuit over “different” claims.
At a minimum, I would expect any court to require the filing of an amended complaint (notice pleading no longer counts) with particular attention to what products are continued to be accused, and/or require the filing new or amended preliminary infringement contentions.
But, if the defendant brings a proper motion, I would rule on intervening rights, and if the claims have such, then I would rule by summary judgment that there are no damages and no injunction relief possible for the claims in suit. The patent owner would then have to refile.
Thanks – I see where you are coming from now.
Another reminder that the “R” in BRI means reasonable. Two earlier Fed. Cir. decisions reversing Board claim interpretation decisions in ex parte cases as not being reasonable are In re Vaidyanathan (Fed. Cir. 2010) and the slightly earlier In re Suitco Surface.
Your statement, while indeed true, of: “Another reminder that the “R” in BRI means reasonable” brings forth the following rumination…
If there are items to which even reasonable minds may disagree, to whose benefit would such a “tie” go?
Also, as can be seen quite often even here on this blog, each of the anti-patent and the pro-patent sides may often view the other as (de facto) UNreasonable – what then in this type of “tie”…?
Since this was an ex parte reexamination [not an IPR] and the Fed. Cir. reversed [not remanded], the challenged patent claims have survived this reexamination, but there is no estoppel of the petitioner in any other proceeding.
Guys I heard a salacious rumor today that the top POPA folks don’t even examinate anymore as they spend all their time POPAizing.
Can anyone confirm, and is that scandalous?
Even if true, hardly salacious and no, such would not be scandalous.
Not sure why you would think that the “top” would necessarily still do what the bottom do.
The very existence of POPA is scandalous. It would be unsurprising if the higher-ups in the union drew a salary from the USPTO while doing none of the work for which the USPTO pays them.
You’d better watch your postings or POPA thugs will show up at your ISP.
If POPA goes on strike, will management try to bring in scabs?
They’re going to show up at my internet service provider?
They just may, 6 – they may be looking for identities and postings while on the government’s dime.
They could just ask.
You just heard that? The POPA leadership hasn’t examined an application in 40+ years. The current president hasn’t examined an application since the days of the wooden shoe cases. Never used any of the current search systems, the OA generating software, the count posting software, etc. Couldn’t search a case, write an OA, or post it for counting if her life depended on it.
You’re just now learning this?
WTF you been?
“You’re just now learning this?
WTF you been?”
Not exactly common knowledge around my area bruh. I’m not a super popa insider.
As far as I was aware all of popa was “real examiners doing real examinator work”.
I will castigate ol pam. She could do a case a week.
“Not exactly common knowledge around my area bruh.”
What’s your area? Under a rock?
“I’m not a super popa insider.”
You don’t need to be to understand what your union leadership is doing. And not doing. Do you think the president of the Teamsters actually drives a truck?
“As far as I was aware all of popa was ‘real examiners doing real examinator work’.”
You’re not aware of much. That much is evident from your years of posting here.
“I will castigate ol pam. She could do a case a week.”
I would pay to see that interaction. The effort she’s gonna have to make to not laugh in your face will be Herculean.
“Do you think the president of the Teamsters actually drives a truck?”
Look bro, “they” (amorphous) told us that the popa people were real examiners examinatin’. I didn’t question such. Most of the popa people are in fact that, it’s only like 3 of them that don’t examine.
“The effort she’s gonna have to make to not laugh in your face will be Herculean.”
Meh, she’s not very charismatic. She could be easily undone by a month’s worth of campaigning. Guess she’d just retire tho.
You hear a rumor today? The POPA president admitted it in the congressional hearings last year. The hearing is on youtube here: link to youtube.com
Interesting hearing.
I recently won an appeal at the PTAB where the examiner and I disagreed on whether a reference disclosed a specically claimed structure. The PTAB said that the dispute was one of construction, and that the construction that I was advancing was the construction used in the specification, while that of the examiner’s was that of the prior art being criticized.
The problem in this case stems primarily from the fact that the applicant chose a generic term to describe specific structure in the specification effectively creating a definition, then used that term in the claims to claim the specific structure in two different ways, one of which was consistent only with the generic sense of the term and inconsistent with the definition.
Lesson? Avoid the use of generic terms to describe specific structure.
34. The tool of claim 28 wherein said at least one non-pivotable, moveable arm further comprises a plurality of extensions that fit within a plurality of channels in said body.
Body is best term here where it is used to provide antecedent and structure for the channels in claim 34. More structure than that would narrow the scope to less than the patentee was entitled.
he patentee did not use the “body” term as a generic “member,” but used it consistently to refer to a cylindrical tool body that was separate and distinct from the other elements of the tool.
Except the CAFC also said this It is true that some of the claims at issue recite a broad term “body” without further elaboration on what the term “body” encompasses (citing claim 28 and 43)
The correct result here was invalidity for indefiniteness.
I think that’s largely correct.
BRI is essentially designed to force patent applicants to amend their claims in ways that make it very clear what the scope is. It is not apparent from the case why the patentee did not amend here, but perhaps there was some concern about losing the ability to sue for back damages.
Why not simply cancel all other claims that seemed to use “body” in its generic sense?
Loss of past damages leaps to mind, as to whether or not to cancel a claim in reexamination.
iwasthere, claims 28 and 43, the only independent claims in the patent, are already amended. Past damages are gone if the changes are material to scope.
Cancelling the claims that use “body” in its generic sense shore up definiteness. Adding the other limitations from the cancelled claims to claims that depend from claims 23 and 43 will preserve them if needed for validity.
Why? Would a person of ordinary skill in the art construing that element in light of the specification believe that term to be ambiguous or lack reasonable certainty?
Claim construction is not conducted in a vacuum.
Claim construction is not conducted in a vacuum.
Right. I think the problem here is that given the different ways that the term is used in the spec and the claims it would be easier to have more certainty about the scope of the term if it were conducted in a vacuum or at least conducted with less information.
As the term appears in claim 28, it could fairly be read by one skilled in the art to refer to any “body” anywhere in the apparatus. It’s not clear why the term is being recited at all.
The test, by the way, is not whether one skilled artisan somewhere on earth could come to a conclusion about what the claim means. That test was already floated by the CAFC and smacked down because it’s worthless.
Which is why I referred to the actual standard of reasonable certainty. It’s not absolute certainty. As long as a coherent/reasonable interpretation is available and it’s supported by the specification, I can’t see anything wrong with the claim. Would I draft a claim this way? Probably not, but that doesn’t make it indefinite. Applicants are provided wide latitude when drafting claims.
Just an FYI Bluto, rumor on the streets is that the PTO isn’t exactly 100% happy with that being considered the standard (or at least wasn’t when Lee was in). They kinda want the authority to go a bit beyond that in examinatin’ times just to get things cleared up before issue. Frankly, at some point issues of law (indefiniteness under 112) bump up against the irl and statutory responsibility that the PTO has to dutifully carry out their tasks responsibly and not be sloppy everywhere or allow what they’re issuing to be sloppy.
So I can somewhat agree with them on that, though it should be made clear when the PTO is exercising this authority and just how they propose to reasonably fix the situation if they’re going to claim somewhat “inherent” authority to insist upon such things.
Look at Ex Parte McAward, which was recently made precedential. The Nautilus standard doesn’t apply in examination. Instead, the standard is that a claim is indefinite when it “contains words or phrases whose meaning is unclear” or “when a claim is amenable to two or more plausible constructions.”
Frankly, I’m not sure how different that really is from Nautilus.
Whether this applies to ex parts reexams or IPRs was explicitly left open in McAward, but several other cases have applied this as the standard in IPRs.
Wow thanks for the heads up D should write that up asap
FYI:
link to uspto.gov
As long as a coherent/reasonable interpretation is available and it’s supported by the specification, I can’t see anything wrong with the claim.
Except that’s not the reasonable certainty test. The question isn’t whether there is a reasonable interpretation, the question is whether the language is *reasonably* certain. If I know a distance that works of 3 yards, I can’t claim a distance “less than a mile” even though a mile is definite and a distance less than that amount is definite. The question is whether “less than a mile” is reasonably certain with respect to the known distance of 3 yards.
In other words, you can’t insert intentional vaguery into the claim just because you want a larger scope. If there is a more reasonable way to describe the body other than “body” it may not be reasonable to only use the phrase “body.”
Not to disagree with you (per se), but is it not reasonable to obtain the broadest scope allowed?
In your example, are you thinking that 4 yards does not work? Is there a problem with any undue experimentation that needs to be done to determine the exact quantum under a mile?
I think it is less a point of inserting any type of “intentional vaguery” and more of a point that exactness is not required.
is it not reasonable to obtain the broadest scope allowed?
And off “anon” goes into the deep woods.
The maximalists will literally do and say anything. It’s their game.
Maybe address the point provided instead of the mindless insult…
Do you not attempt to obtain the maximum benefit for your clients?
Using your standard, there is always a more “reasonable” way to claim something. For instance, the USPTO could force an applicant to turn entire paragraphs of a specification into a multi-page claim rather than using formal claim language. Why allow the applicant to leave out anything related to a claimed embodiment? Such a claim would not be the “most reasonable.”
See 5.1.
“As the term appears in claim 28, it could fairly be read by one skilled in the art to refer to any ‘body’ anywhere in the apparatus.”
Huh? What? When you read the term “body” in the claim you would go to the spec to see what the term means, and which element is referred to as the “body.” You wouldn’t “fairly read” it to “refer to any body.”
Have you ever read a patent?
<iWhen you read the term “body” in the claim you would go to the spec to see what the term means, and which element is referred to as the “body.”
You’d actually first look at the claims, which is what Phillips (the law) teaches. The claims are part of the disclosure. And then you’d find stuff like “tubular body”; “tool body”; and “a body including a plurality of angled channels.”
So which “body” is the “body” in claim 28?
In describing Figs. 4 and 5, the detailed description sets forth “a generally cylindrical tool body 510” and then very consistently refers to “the tool body 510” or just “the body 510” numerous times after that. So it’s pretty clear what “the body” of claim 28 is. Only an a$$hat who thinks everything that doesn’t involve protein bits or DNA cloning fragments would miss that.
In describing Figs. 4 and 5, the detailed description sets forth “a generally cylindrical tool body 510” and then very consistently refers to “the tool body 510” or just “the body 510” numerous times after that. So it’s pretty clear what “the body” of claim 28 is.
LOL
Did you even read what you just wrote?