Practice before the PTAB: Recent Informative Decisions

The USPTO has recently designated five PTAB decisions as “informative.” (I have also included the recent Western Digital decision as well).

 

32 thoughts on “Practice before the PTAB: Recent Informative Decisions

  1. 4

    Re ex parte Jung, here is another new Fed. Cir. decision -“hair curling” [literally] – holding an IPR BRI claim interpretation to be unreasonably broad in view of the specification: TF3 Ltd. v. Tre Milano, LLC, 16-2285 –overturning a USPTO IPR decision that TF3’s claims were anticipated.

  2. 3

    Western Digital Corp. v. SPEX Techs., above, is not a decision, it is a lengthy detailed guideline paper list of current requirements for patent owner motions for claim substitutions during an IPR. Spec support, etc. must be shown.
    But there is relatively little guidance here for petitioner responses to such claim amendment motions other that a 12 page limit and the following sentence on the next to last page:
    “A petitioner may submit additional testimony and evidence with an opposition to the motion to amend, and a patent owner may do likewise with a reply.” [Assume the “and evidence” covers additional new publication or patent prior art responsive to the newly-added claim limitations, as before.]
    Both parties are under a disclosure duty re known art re such motions and their responses.

  3. 2

    The Colas Sols. Inc. v. Blacklidge Emulsions, Inc. IPR time limitation on joinder decision is not a normal joinder petition situation. It is complicated by the relationship there to a co-pending declaratory judgment [DJ] suit and its timing effects which are controlled by 35 USC 315(a)(1) and (2)

  4. 1

    Ex parte Jung is interesting in that “at least one of A and B” was construed narrowly, per a leading Fed. Cir. decision [construed as requiring at least one of EACH of A and B] so as to overcome the prior art rejection [since there was no contrary spec interpretation basis, as in cited contrary Fed. Cir. decisions]. But then the Board bounced-back the claims with a proposed 112 new ground of rejection because the spec never affirmatively taught requiring at least one of each!

    1. 1.1

      What is interesting to me is that I do not (and never will naturally) interpret “at least one of A and B” to mean “at least one A and at least one B,” which (in most instances) is the same as “A and B.” Although it was somewhat before my time, if I recall correctly the old time prosecutors used “at least one of A and B” to mean “A or B,” and did not use “or” because the old time Examiner’s would give an automatic 112 rejection is the word “or” was in the claims.

      To me, the better understanding of “at least one of A and B” would be to think of it as “at least one element of a group, the group including A and B.”

      1. 1.1.1

        “…if I recall correctly the old time prosecutors used ‘at least one of A and B’ to mean ‘0A or B,’ and did not use ‘or’ because the old time Examiner’s would give an automatic 112 rejection is the word ‘or’ was in the claims.”

        That is correct. But J. Prost, who has never written or prosecuted a patent application in her entire “career” (which prior to being on the bench apparently consisted of nothing more than picking up Sen. Hatch’s dry cleaning and carrying his brief case to committee meetings) was not familiar with that practice of the examining corps and applicants’ attempts to deal with it and found that unpersuasive.

        She should go back to picking up people’s dry cleaning. Not sure she’s even qualified for that, but hey somebody’s gotta do it.

      2. 1.1.2

        Agreed, you don’t say: “give me at least one of an apple…” when you mean “give me an apple…” or “give me at least one apple…”

    2. 1.2

      Page 14 of the Jung decision has an issue that never felt right to me. Using the phrase “at least one selected from THE group comprising A and B” has long been the standard language, in spite of the fact that there is no antecedent basis for “group”.

      Nevertheless, I think that decisions was flawed. Although they justified their decision on the basis of interpreting the claim language using standard English rules, and then demanded that claims are not to be presumed valid in an *application*, claims ARE to be interpreted in light of the specification. The fact that the board admitted that the specification discloses ‘A or B’, and not ‘A and B’, means they should have interpreted it ‘A or B’. This just frankly sounds like someone has a stick up their butt on language purity and wants to make a point.

      Had Jung appealed to the Federal Circuit, he’d win. But it’s far cheaper to just amend the claims and come back, so the board will not be rebuked on the stick.

      1. 1.2.1

        ” “at least one selected from THE group comprising A and B””

        this is definitely not standard language and would (and should) be immediately rejected as indefinite. You need to change the “comprising” to “consisting of”. (Also, antecedent basis is not an issue because the group is very well defined as having members X, Y, and Z, so there is no question as to what ‘the’ group is referring to).

        1. 1.2.1.1

          Wrong on both accounts…

          Consider:

          “A group consisting of A, B, and C” is the antecedent basis for any secondary reference to “the” group. Without an “a,” a “the” out of the blue lacks the establishing (even if you then attempt to define the members of the group with either “comprising” or “consiting.”

          Your attempt to force a “finished and complete” group with “consisting” speaks to a different and separate issue as to whether or not a list of elements provides definiteness support. Your position is akin to saying that all instances of “comprising” are necessarily indefinite.

          That’s just not how it works.

    3. 1.3

      Here’s a blogger who accurately characterizes SuperGuide as a “train wreck” of an opinion, flimsily premised as it is on a citation to an irrelevant passage of an irrelevant treatise (Strunk & White).

      link to adamsdrafting.com

      The Federal Circuit should overturn SuperGuide at the next possible opportunity, because until then, any patent applicant who uses the phrase “at least one of A and B” in a claim needs to have an extra sentence in the specification defining how the phrase must be interpreted.

      It is notable that a Board panel, ten years after SuperGuide but apparently ignorant of its holding, expressly told an applicant trying to use the (IMO) much clearer “and/or” that the preferred phrase is “at least one of A and B”! Ex parte Gross, No. 2011-004811 (P.T.A.B. Jan. 3, 2014).

    4. 1.4

      And, as you point out, the outcome of Jung is preposterous, the Board forgetting that claim interpretations must be made in light of the specification. How could the Board arrive at a claim construction not supported by the specification? Jung should not just not be labeled “informative”, it should’ve been sent up to the CAFC.

      If a claim is at first blush ambiguous but only one of the two meanings is comprehensible in view of the specification, that meaning must be selected, and it is not a matter of Board discretion. The PTO often forgets the end of the BRI rule.

      1. 1.4.1

        Thanks for both of your follow-up comments, Robert. Including your heretical suggestions that Strunk & White is not biblical level legal authority controlling the Fed. Cir.
        The bottom line is apparently to never to use the ambiguous claim expression “at least one of A and B,” and instead use “at least one of A and at least one of B” or “at least one of A or B” depending on which of these two different claim limitations or not you intended and have spec-supported?

        1. 1.4.1.1

          why not just go with markush style claim (at least one member selected from a group consisting of A, B, C) .

        2. 1.4.1.2

          That might work until some joker defends with the noninfringement argument that, when you think about it, “or” actually means “and”, like won in Smith v. United Television, Inc. Special Severance Plan, No. 06-1660 (8th Cir. Feb. 2, 2007). Until SuperGuide is overturned, best practice is to define “and” and “or” in your spec. I wish I was kidding.

        3. 1.4.1.3

          P.S. Robert I do not think you really meant “the end of the BRI rule” because that is only being proposed for IPRs, etc., not ex parte application claim rejection Board appeals, as here. Rather it is arguably a claim interpretation that ignores what the Fed. Cir. has said the “R” in BRI requires?

          1. 1.4.1.3.1

            How could the interpretation be “not R” when the Fed. Cir. Promulgated that is the plain and ordinary meaning?

            1. 1.4.1.3.1.1

              Your question ASSumes that the Fed Cir is never wrong.

            2. 1.4.1.3.1.2

              S. Morse, I assume that was sarcasm, since this very PTAB decision also lists Fed. Cir. phrase interpretation decisions inconsistent with SuperGuide, depending on spec differences.

              1. 1.4.1.3.1.2.1

                Given his other posts (whatever the moniker), one should not presume sarcasm.

              2. 1.4.1.3.1.2.2

                No sarcasm intended. The Fed. Cir. has told us the plain and ordinary meaning of the term. The plain and ordinary meaning controls in BRI, absent lexicography. It would be an incredible stretch to say an applicant was his own lexicographer by virtue of the disclosure failing to support the plain meaning of the claims.

          2. 1.4.1.3.2

            B-b-but “consistent with the specification.” I’ve seen this South Indian monkey trap scenario play out numerous times. Only after the Rule 36 does the poor monkey realize the fed. Cir. Panel asked only one important question during oral argument. To wit: Given that the PTO identified an ambiguity and you had the right of entry of an amendment responsive to the new ground of rejection, why are you here?

            1. 1.4.1.3.2.1

              Good observation TP. That is also the kind of question you might well get asked by some PTAB panels – why didn’t you just file a simple after-final claim amendment or RCE to eliminate the claim interpretation dispute with the examiner?
              But the more interesting question is why do some attorneys not do so? Stubborn conviction, wanting to prove the examiner is wrong even if it costs the client an appeal, or wanting to be able to argue either way if the patent is enforced?

              1. 1.4.1.3.2.1.1

                “Stubborn conviction” is why the monkey trap works. Some attorneys are incapable of letting go of their convictions, even when the circumstances demand it. If the Jung attorney had taken the counsel of blog commentators, the case would have ended up in the Fed. Cir. Rule 36 scrapheap. And still be the subject of a PTAB informative opinion.

          3. 1.4.1.3.3

            In reply to Paul Morgan’s remark in post 1.4.1.3, what I meant by “the end of the BRI rule” was the part of the rule usually given at the end of its recitation stating how the interpretation must be consistent with the specification. See, e.g., the recent case of In re Power Integrations, Inc., 884 F.3d 1370 (Fed. Cir. 2018), in which the CAFC lambasted the Board’s construction because the Board didn’t bother to read the specification to understand what the invention was about but instead just went straight to the dictionary to start defining terms. Wrong, wrong, wrong. And so with Jung. I agree with Experienced Patent Attorney that Jung would have been overturned had Jung appealed.

            1. 1.4.1.3.3.1

              Yes, a dictionary or writing style book interpretation of a claim phrase that is inconsistent with the specification does not logically meet the “reasonable” part of the BRI test.

              1. 1.4.1.3.3.1.1

                Alas, see S. Morse’s “no sarcasm intended” post above…

              2. 1.4.1.3.3.1.2

                “Yes, a dictionary or writing style book interpretation of a claim phrase that is inconsistent with the specification does not logically meet the ‘reasonable’ part of the BRI test.”

                An uncontroversial statement with which I agree. Not a lot to do with the unique facts of Jung, however. But the bigger problem is, some read “consistent with the specification” in such a way that no claim could ever be invalid for lack of adequate written description. Wrong, wrong, wrong. Wrong.

      2. 1.4.2

        The rub is that applicants do write claims that plainly contradict the teaching in the spec or are simply nonsensical. The spec might “control” in a legal sense but the proper solution to the contradiction isn’t to interpret the claim so that the interpretation contradicts the ordinary meaning of the words in the claim. The solution is to declare the claim invalid or unpatentable. Otherwise we end up in bi za rro world where black is white, less is more, etc.

        1. 1.4.2.1

          “The solution is to declare the claim invalid or unpatentable.”

          Especially where, as in Jung, BRI applies.

          1. 1.4.2.1.1

            Did S. Morse get lost finding his claims 5 and 6? You kind of disappeared in the middle of the conversation…

        2. 1.4.2.2

          Malcom’s view of the “R” of “reasonable” is often anything but reasonable.

          One need not get anywhere near a “Black is white” situation.

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