Predictability and Criticality in the Written Description Analysis

by Dennis Crouch

In re Global IP Holdings (Fed. Cir. 2019)

In its reissue application, Global IP asked the PTO to broaden its carpeted-car-floor patent by changing the “thermoplastic” requirement to simply “plastic.”  The PTO rejected the reissue application on written description grounds — noting that the specification only discloses the use of thermoplastics and not parts “formed generally from plastic materials.”  According to the examiner, the broader scope constituted “new matter.”  The PTAB made clear that the, although “plastics” might be enabled and within the skill of someone in the art, the patent document does not show possession of that invention:

[R]egardless of the predictability of results of substituting alternatives, or the actual criticality of thermoplastics in the overall invention,[Global’s] Specification, as a whole, indicates to one skilled in the art that the inventors had possession only of the skins and core comprising specifically thermoplastic.

PTAB Decision.

On appeal, the Federal Circuit has vacated — can you spot the written description error?

In its opinion, the Federal Circuit explained that the level of written description required to show possession “varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad.  Thus, the Board erred by stating that the predictability and criticality made no difference.

Contrary to the Board’s statement, the predictability of substituting generic plastics for thermoplastics … is relevant to the written description inquiry. . . . In addition to predictability, we have held that the criticality or importance of an unclaimed limitation to the invention can be relevant to the written description inquiry.

In other words, a variation predictable to PHOSITA is more likely to covered by the written description (as compared with an unpredictable variation). Likewise, variation of a non-critical component of the invention is more likely to be covered by the written description (as opposed to a component at the point of novelty).

= = = = =

Note here that in this case the Examiner/Board raised a standard written description challenge. On remand, they might achieve better results by focusing on the heightened written description standard for broadening reissues.

Heightened Written Description Standard for Reissue Patents

 

74 thoughts on “Predictability and Criticality in the Written Description Analysis

  1. 8

    As amusing (in a train wreck sort of way) as the distraction attempted by Malcolm and his pet jester are, let’s put another item on the table for discussion:

    The convergence or separateness of Written Description and Possession (versus, for example, the view that written description and enablement are key).

    To wit, from page 7 of the decision:

    n addition to predictability, we have held that the criticality or importance of an unclaimed limitation to the invention can be relevant to the written description inquiry. See In re Peters, 723 F.2d 891, 893–94 (Fed. Cir. 1983). In Peters, the original claims required, among other things, a metal tip having a tapered shape. Id. at 892. The patent owner filed a reissue application seeking to broaden the claims to cover both tapered and non-tapered tips. Id. The Board held that the broadened claims sought by the reissue application were not supported by the original disclosure because the only tips disclosed were tapered. Id. at 893. We disagreed, holding that “[t]he broadened claims merely omit an unnecessary limitation that had restricted one el- ement of the invention to the exact and non-critical shape disclosed in the original patent.” Id. We reasoned that the disclosed tip configuration was not critical because no prior art was overcome based on the tip shape and “one skilled in the art would readily understand that in practicing the invention it is unimportant whether the tips are tapered.” Id.

    We see nothing in Ariad rejecting the analysis in Peters. In Ariad, we identified a number of factors that bear on whether a written description disclosing a species supports generic claims, including “the existing knowledge in a particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Ariad, 598 F.3d at 1351 (quoting Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005)). Ariad did not present an exhaustive list of relevant factors, and we hold that, in some cases, the criticality or importance of the expressly disclosed species may be relevant to whether an inventor had possession of a claimed genus.

    Was not at least a significant portion of the hullaboo around Ariad the notion that written description and “possession”was separate from enablement?

    Does not the simpler notion that to actually enable, one must have description (and thus possession) come to mind [again]?

    As I put to Greg recently (see the Pre-Institution Merger thread, specifically post 10.2):

    Understanding full well that the requirements are each their own, how exactly is enablement actually met if what is merely purported to provide that enablement is NOT BOTH “described” and “clear?”

    Something that is purported to enable, but is not describing, CANNOT enable. Lacking actually describing, what is IT that is being said to be enabled?

    Something that is purported to enable, but is not clear, CANNOT enable. Lacking actual clarity, what is IT that is being said to be enabled?

    Not all “gifts” should be accepted in a lazy manner. Some horses should be ‘looked in the mouth’ (especially Trojan ones).

    1. 8.1

      “Does not the simpler notion that to actually enable, one must have description (and thus possession) come to mind [again]?“

      No, because a claim limitation that says “wherein the part has a length between 2 inches and 4 inches” is clearly enabled in that anyone of ordinary skill could make and use it, but if such dimensions weren’t disclosed in the spec it is a possession issue . Point being you can have claim limitations which are enabled but not described or possessed in the original disclosure.

      1. 8.1.1

        Not sure I fully agree with you – as claims (now here I speak of original claims) are a part of the spec, and as such, ARE both described and possessed by way of their simple presence.

        If on the other hand, you want to distinguish the claim as an amended claim, then your hypo is covered under the new matter rule and does not make it to the position that you ascribe.

        1. 8.1.1.1

          “If on the other hand, you want to distinguish the claim as an amended claim, then your hypo is covered under the new matter rule and does not make it to the position that you ascribe.”

          Oh, so wrong. What does good old 2163.01 instruct?

          “The claim should not be rejected or objected to on the ground of new matter. As framed by the court in In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981), the concept of new matter is properly employed as a basis for objection to amendments to the abstract, specification or drawings attempting to add new disclosure to that originally presented. While the test or analysis of description requirement and new matter issues is the same, the examining procedure and statutory basis for addressing these issues differ.”

          1. 8.1.1.1.1

            How the processing of a new matter rejection is countenanced by the Office is inapposite to our discussion.

            Stay focused.

  2. 7

    “The better view would be to analyze the already granted claims under a generous Doctrine of Equivalents view.”

    Green anon, you realize, as you must?, that the Doctrine of Equivalents is an equitable doctrine. Written description is a matter of law.

  3. 6

    Hey, lookie! Dennis acknowledges the existence and utility of using one’s brain to identify the point of novelty in a patent claim! Yay!

    Next thing you know he might learn to crawl again.

  4. 5

    This is a great decision. This puts the Constitutional requirement back into focus – that patents must promote innovation by securing to the inventor the exclusive right to their discovery. Copycats should not be allowed to game the system to avoid paying for the discoveries learned from the inventor via the patent bargain. This ruling really helps!

    1. 5.1

      Feel free to admit the easy predictability of the “art” which relates to your alleged “invention”.

  5. 4

    “As noted – the Doctrine of Equivalents makes this moot (as NO error is there and there is no “less” and certainly no “less than entitled” ALONG WITH no new matter).”

    No. Despite your apparent fetish for the doctrine of equivalents, the error is in failing to obtain a scope of literal protection that is commensurate with the invention. Examination and issuance of literal claim language has no connection to the doctrine of equivalents. Absent means plus function language, claim construction and scope are limited to the broadest reasonable literal interpretation of the terms.

    Literal infringement and infringement under the doctrine of equivalents are not the same. The first requires only that the element fall within the plain and ordinary meaning (or specialized meaning) of the term. The second requires an analysis such as function-way-result, as well as evidence that the person of ordinary skill — not just a skillful potential infringer — would have recognized the interchangability of elements at the time of the infringement.

    The different grounds of required evidentiary support inherently prevent an error from being deemed moot in view of the doctrine of equivalents.

    1. 4.1

      DRJlaw, it appears that you weren’t at the last Patent Maximalist Script Reciters Convention when the expansion of the DOE was high on the list of strategeries for ensuring that the written description requirements for claiming “new” computers (i.e., old computers carrying out new instructions) remained as non-existent and toothless as possible. You see, all instructions that cause one computer to execute Function X are equivalent to every other instruction that causes any other computer to execute Function X. To hold otherwise would be to do something unthinkable, like force someone to draft an application that included a large text file of additional data in a predetermined consistent format. You have to agree that this is something that the Framers would never have approved of!

    2. 4.2

      DRJlaw,

      Most of the time, your posts approximate an attempt at substantive matters, so it is easier to overlook when you go glib and insert insults without a basis for them (the notion of “apparent fetish” is a clear exaggeration on your part).

      Here, your point of literal interpretation simply is not available for the conversation at hand. THERE IS NO AVAILABILITY for a literal interpretation to be had here.

      In other words, you have leaped before you looked, and your comments are simply inapposite to THIS discussion.

      Literal infringement and infringement under the doctrine of equivalents are not the same

      A truism – and nothing that I have stated goes against that truism. It is precisely the continued comment of yours in that paragraph that I am providing. If you look at the facts presented in this case (e.g., the patentee’s statements directly lead to the “evidence that the person of ordinary skill — not just a skillful potential infringer — would have recognized the interchangability of elements at the time of the infringement” that supports MY assertion of why I posited that the DoE would be the better legal argument.

      Now, if one is willing to actually engage in an inte11ectually honest manner, we could discuss this legal point.

      Of course, the mindlessness of Malcolm and his erstwhile jester/defender may provide distraction (if distraction be your aim).

      1. 4.2.1

        “If you look at the facts presented in this case (e.g., the patentee’s statements directly lead to the “evidence that the person of ordinary skill — not just a skillful potential infringer — would have recognized the interchangability of elements at the time of the infringement'”

        On which of the 8 pages of the opinion is that fact presented in this case, Blue anon?

        1. 4.2.1.1

          Did you not get past page 3 of the decision…?

          1. 4.2.1.1.1

            I read the entire opinion, Blue anon.

            1. 4.2.1.1.1.1

              Apparently, your laziness (or ig n0r ance) is showing itself then, as your question is answered already in what you have read.

              Or are you just posting to distract, yet again?

              1. 4.2.1.1.1.1.1

                Seems like you’re the lazy one, Bildo. Just point us to the patentee’s evidence showing that skilled artisans would have recognized, based on a reading of this spec, that “plastics” is an equivalent to “thermoplastics”.

                Show us. Should be easy for you. After all, you brought it up, Bildo.

                1. Bildo: the patentee’s statements directly lead to the “evidence that the person of ordinary skill — not just a skillful potential infringer — would have recognized the interchangability of elements at the time of the infringement

                  Cite these statements and explain to everyone how they “directly lead” to your stated conclusion. Should be incredibly easy for you. Thank you in advance.

                2. Thank you in advance for taking you by the hand and showing you what you should already be able to see (and then having you ignore anyway the very thing of what I take you by the hand and show you?

                  You are kidding, right?

                  Further, it is worth noting that what I called you out for (“based on a reading of this spec,” – as a strawman – has been dropped in your last comment.

                  Have you bothered at all to read THIS case in a first instance? Would my providing a pincite to you thus “really” help you at all (when YOU have not even bothered with a necessary first step)?

                  How about YOU show that you are even capable of learning anything that I may provide WITH a pincite by showing that you grasp the particulars of THIS conversation BEFORE I go to the bother of spoon-feeding you…?

      2. 4.2.2

        “Here, your point of literal interpretation simply is not available for the conversation at hand. THERE IS NO AVAILABILITY for a literal interpretation to be had here.

        In other words, you have leaped before you looked, and your comments are simply inapposite to THIS discussion.”

        The Federal Circuit disagrees with you. The literal scope of the term “plastic” is at issue in the reissue application, the equivalent scope to thermoplastic is not, and it is the former, not the latter, that must be properly evaluated under sec 112(a).

        And yes, you do have an apparent fetish for the doctrine of equivalents, because you are making the argument that it in effect can fix everything, even errors in the literal scope of claims, which is the only thing that can be evaluated (absent means-plus-function language) during USPTO examination.

        1. 4.2.2.1

          Sorry, but no DRJlaw – “plastic” is NOT TO BE FOUND in the application, only “thermoplastic.”

          And also, no, I am NOT arguing that the doctrine of equivalents can “fix everything.” I have no clue as to why you would even begin to think that. I have been more than clear that my views on this topic pertain to THIS fact pattern. Methinks you leaped again. What is PLAINLY “literal” is ONLY “thermoplastic” and NOT “plastic” (as your error on this is noted).

          1. 4.2.2.1.1

            “plastic” is NOT TO BE FOUND in the application, only “thermoplastic.”

            Sure it is. “Plastic” is literally present in the pending claims, and the issue is whether “plastic” is supported by the written description. Again the Federal Circuit disagrees with you:


            “Contrary to the Board’s statement, the predictability of substituting generic plastics for thermoplastics in the skins and cellular cores of vehicle load floors is relevant to the written description inquiry.”

            “On remand, the Board should address the relevant factors, including predictability and criticality, based on the record evidence and determine whether the written description requirement has been satisfied under the proper legal standard.”

            “And also, no, I am NOT arguing that the doctrine of equivalents can “fix everything, [even errors in the literal scope of claims]…”

            Could have fooled me, selective editing aside. You wrote:

            “the attempt at re-issue should be rejected as moot (there is no error to correct, as the species term contains the desired generic term per the DOE).”

            It wasn’t, it won’t be, and you’re quite simply wrong.

            1. 4.2.2.1.1.1

              You are being disingenuous.

              Consider my prior comment with the words “as filed” in order for you to stay focused.

              And yes, you have “been fooled” – just not by me, as YOU are the one trying too hard to not get the plain points presented. And the summation of those plain points is that I am quite simply correct.

              1. 4.2.2.1.1.1.1

                “You are being disingenuous.”

                DRJlaw, you must know by now that “disingenuous” in Blue anon speak means “yeah, you got me.”

                1. No, disingenuous means what it normally means.

                  There is no “gotcha” here.

                  Maybe, my ever-shifting historical pseudonym friend, you should not be so 0bsessed with trying to play “gotcha,” and instead focus on the actual content.

              2. 4.2.2.1.1.1.2

                “Consider my prior comment with the words ‘as filed’ in order for you to stay focused.”

                Blue anon is adding the words “as filed.” Uhh, ok.

                1. You seem to be having trouble with the simplest of breadcrumbs. I am not quite sure if this is your laziness showing through or if this is your ig n0r ance showing through.

                  Perhaps a bit of both.

                  You seem to want to spend more energy keeping track of colors than any energy on the legal topic at hand…

              3. 4.2.2.1.1.1.3

                “Consider my prior comment with the words ‘as filed’ in order for you to stay focused.”

                Blue anon is adding the words “as filed.” Uhh, ok?

  6. 3

    Trying not to laugh here but …

    most any genus plastics — as used in the claim with the species “thermoplastics” fall within the doctrine of equivalence of the species,

    LOL

    Does this “all species are equivalent” theory apply to “most” species of all supergenuses of materials, or just the supergenus of plastics?

    There is no reason that in a sane patent system someone who uses the term “thermoplastic” throughout their specification without ever mentioning any other species of plastic, or the genus of plastic, should be able to expand their claim in a reissue (or even during prosecution) to recite an obvious genus which was never mentioned — and presumably intentionally never mentioned — in the specification.

    Learn how to write specifications and draft claims, people. Golly, the next thing you know the worst attorneys who ever walked the earth will be demanding that they can claim undisclosed “inherent correlations” that were “obvious” to “skilled artisans” reading their specifications.

    1. 3.1

      … you do realize that the path of Doctrine of Equivalents is precisely because the broadening re-issue path is problematic, right?

      It appears that you did not stop to think (at all) before launching into your “one bucket” denigrations.

      1. 3.1.1

        the path of Doctrine of Equivalents

        Ah, so Bildo mightily approves of this particular flavor of “judicial activism” (and would like to see it expanded!) in spite of the clear “separation of powers” issues that it presents.

        Anybody want to guess what the key difference is? LOL

        Thank goodness Bildo is totally not a total hypocrite like every other glibertarian patent maximalist out there.

      2. 3.1.2

        You will tell us how the broadening re-issue path is problematic, right?

      3. 3.1.3

        You are relying on judge-made law? What statute is this “Doctrine of Equivalents?”

  7. 2

    I would think that there is considerable tension in the holding of this case (what constitutes possession absent ANY mention of more than a mere species) and EVEN the alluded to “heightened” written description proscriptions.

    I think the court here is attempting to say “not important,” when clearly the change is important enough to attempt a broadening re-issue.

    It would almost seem that the better legal argument is that most any genus plastics — as used in the claim with the species “thermoplastics” fall within the doctrine of equivalence of the species, and thus the entire question of possession/new matter need not be addressed.

    1. 2.1

      … and to clarify, the attempt at re-issue should be rejected as moot (there is no error to correct, as the species term contains the desired generic term per the DOE).

      1. 2.1.1

        As those who have filed pre-litigation broadening reissues know, a typical broadening reissue oath asserts as the error “having claimed less than the applicant was entitled to claim.”

        1. 2.1.1.1

          asserts as the error “having claimed less than the applicant was entitled to claim.”

          As noted – the Doctrine of Equivalents makes this moot (as NO error is there and there is no “less” and certainly no “less than entitled” ALONG WITH no new matter).

          The precise factors here are very much distinguishable from OTHER (proper) broadening reissue cases.

          That’s kind of the point.

          Try to keep up, Paul.

          1. 2.1.1.1.1

            Doctrine of Equivalents, slow cousin Grey anon? This is a written description case.

          2. 2.1.1.1.2

            Have you noted that no one agrees with your view that DOE is a universal cure-all for having issued claims that are too narrow and that broadening reissues are unnecessary? 2.1.2.1 is asking an interesting question.
            Recently I noted to Dennis the only case I had seen in years in which the Fed. Cir. sustained a DOE infringement.

            1. 2.1.1.1.2.1

              Have you noted that the detractors — including yourself — are misstating what I actually stated?

              For example, here you state “universal cure-all” and nowhere have I indicated that the better legal argument FOR THIS SITUATION is anywhere near being a universal cure-all.

              2.1.2.1 is asking an interesting question.

              2.1.2.1. is nonsense.

              Clearly.

            2. 2.1.1.1.2.2

              The anons refuse to explain their position (4.2.1.1.1.1), so I will. They are making a faulty conclusion from this written description case and calling it “fact.” (see 4.2.1 ) They allege that “fact” because, obviously, they are working from Wikipedia. Wikipedia mischaracterizes a statement in Warner-Jenkinson (and Graver Tank) concerning what a showing of “interchangeability” might mean in the equitable Doctrine of Equivalents. Actually, the Supremes said showing interchangeability is an “important factor” — i.e., not conclusive. As in the machine or transformation test is an “important clue” for determining patent eligibility.

              The problem is that some young sole practitioner might read this rubbish and advise his clients “forget about what Congress has required. We can always fall back on the Doctrine of Equivalents !!” But, as you suggest, getting DOE is hard, and rare.

              1. 2.1.1.1.2.2.1

                The anons refuse to explain their position

                Utter rubbish, my ever shifting historical pseudonym friend.

                My posts are clear – and clearly on point to the particular factors of this case.

                Nothing that I have stated makes ANY indication that my post goes beyond the present case or that I make any faulty conclusion (nor then turn that conclusion improperly into an asserted fact).

                The “problem” here is that you simply see “anon” and react against whatever it is that I happen to be saying.

                I advise you to not jump so fast to conclusions that are not present, and “there” merely because of your feelings. Such is lazy, and you have shown a massive propensity of being lazy and then saying things (and asking questions) that belie that laziness. This then is compounded because you have a problem being corrected (even when your mistakes are quite obvious). For example, here, you want to through out a “dig” at the prior use of Wikipedia, and yet, on that thread, you had to whimper away in silence when I presented attribution that provided the same point from a different source (and after I had invited you to provide some [any] attribution for your own ‘competing’ viewpoint.

                This of course is nothing new between you and I.

                1. Funny, Green anon. I don’t see the word “interchangeability” in your reply. Care to defend your position now that I have pointed out your error (at 2.1.1.1.2.2) concerning the Doctrine of Equivalents due to using Wikipedia as a legal resource? (See Wikipedia entry for “Doctrine of Equivalents.”)

                  Let’s assume your allegation of “fact” is true. Let us say that patentee’s statements “lead to” “evidence that the person of ordinary skill — not just a skillful potential infringer — would have recognized the interchangability of elements at the time of the infringement,’” as you allege.

                  Specifically, under prevailing law, how would that “fact” establish that the Doctrine of Equivalents would capture subject matter outside the literal scope of the claims? Be specific.

                2. You want to reply on Ipsis Verbis, while still trying to get a dig in on YOUR smack down on another thread where my use of the Wiki was validated with a direct source?

                  Are you not shamed enough, my ever fluid historical pseudonym friend?

                3. To wit:

                  establish that the Doctrine of Equivalents would capture subject matter outside the literal scope of the claims?

                  You do know that THAT is what DoE does do, right? (Capture claim scope outside of literal claim scope)

                  Once again – your laziness and ig n0r ance shine as you try to play “gotcha.”

                4. Yes, Blue anon, I know that the DOE allows patentees to capture claim scope (sic; subject matter) outside of literal claim scope.

                  Now either of you are free to answer the question I asked:

                  Specifically, under prevailing law, how would the “fact” alleged, assuming it to be true, establish that the Doctrine of Equivalents would capture subject matter outside the literal scope of the claims? Be specific.

              2. 2.1.1.1.2.2.2

                Green anon says: “[in another debacle] my use of the Wiki was validated with a direct source.”

                Let’s assume that it was. You cannot cut and paste from the Internet and rely on me guessing what your argument might be and responding to what I think your argument might be. I am not that good a guesser.

                1. “Lol.”

                  What a devastating comeback.

                  So, specifically, under prevailing law, how would the “fact” alleged, assuming it to be true, establish that the Doctrine of Equivalents would capture subject matter outside the literal scope of the claims? Be specific.

                2. You focused only on the first part and should have focused on the second: try reading.

                3. What a devastating comeback, slow cousin Grey anon.

                  So, specifically, under prevailing law, how would the “fact” alleged, assuming it to be true, establish that the Doctrine of Equivalents would capture subject matter outside the literal scope of the claims? Be specific.

                4. Again,

                  Try reading.

                  (And considering who I am talking to, yes, that IS very devastating.)

                5. I will try reading, slow cousin Grey anon. Because we have a written record, you may now direct me to the post that answers the following question. And be specific as to the post (e.g., 2.1.2.1.).

                  Specifically, under prevailing law, how would the “fact” alleged, assuming it to be true, establish that the Doctrine of Equivalents would capture subject matter outside the literal scope of the claims? Be specific.

                6. You want to rely on your “black and white” again, when such has never helped you (and only shown your own propensity for laziness and ig n0r ance)…?

                  You really do like Malcolm’s use of Accuse Others with that “slow” accusation…

                7. What was that cite again, slow cousin Grey anon? Kind of useless advice to “[t]ry reading” when you admit there’s nothing there.

                  In any event, five times asked and five misses. Five strikes and you are out.

                  Here’s a simpler question. First, as a refresher, you espouse that the patentee in this case should not have filed a “re-issue” but instead should rely on the Doctrine of Equivalents. Further, you allege the fact that patentee’s statements “lead to” “evidence that the person of ordinary skill — not just a skillful potential infringer — would have recognized the interchangability of elements at the time of the infringement.’”

                  Is your alleged fact relevant to the Doctrine of Equivalents? If so, how?

                8. The misses are yours, as (apparently) your laziness is extending to the meaning of the word “read.”

                  It is not enough to glibly look at the words and move on without understanding.

                  When I suggest that you try reading, I am suggesting that you try reading AND understanding that which is in black and white.

                  And much like the “Wiki” incident of the recent thread (and the other recent exchange) the “black and white” meme you want to use just does not help you. All that the “black and white” does is show that you are (yet again) playing the jester and attempting to distract.

                  The very meaning of the words already answers the questions that you have posited. Your questions are inane.

                9. I have pointed out that your position is based on an error in the “Doctrine of Equivalents” entry in Wikipedia.

                  Understandably, it’s clear you have no intention of even attempting to defend the merits of the position, so . . . Bye.

                10. You can’t even get the wiki reference item correct.

                  The wiki reference item was in relation to your (incorrect) assertion regarding the Nobel Prize.

                  I invited you to support your assertion (and you refused to do so), and then I backed up my Wiki reference with a direct quote from a direct Nobel source.

                  You had some weak-@$$ quip as you retreated at lightening speed, and then attempted (more than once) to throw a “jab” at the use of Wiki — a use that you were humiliated with.

                  Are you really that dull-witted to continue to want to use “black and white” that shows how lazy and ig n0r ant you are?

                  That’s a special kind of St u p1d.

                11. Further, you have NOT shown that I have even used a wiki reference for DoE, nor have you shown any error in this purported Wiki statements on DoE.

                  I am not sure just what argument that you think that you have made (in your mind), but your distractions here in actual black and white do not support any notion that you have established any type of superior position for the topic at hand.

                  You appear excessively over-confident given your lazy and ig n0r ant approach here (as is typical for you).

                  You would be much better off putting your efforts into understanding anything that you read than your continued attempts at playing “gotcha.”

      2. 2.1.2

        BTW, it’s reissue. Not “re-issue.”

        1. 2.1.2.1

          Do you think the anons have never even . . . ? Nahhh. Not possible.

    2. 2.2

      The “not important” here means not important to the claims 112 support or patentability issues. As with almost all broadening reissues the claim change IS important to the very different issue of infringement assertions, in which arguing the doctrine of equivalents [instead of obtaining a reissue to get direct infringement] has low odds of success. [DOE would of course have to be used if the patent had issued for more than two years.]

      1. 2.2.1

        You miss the point as to the very thing that you advance (and having low odds of success).

        IF patents were actually looked at as GOOD THINGS, and the Doctrine of Equivalents was given its properly ROBUST weight, THIS precise situation would NEED NOT be handled so ham-fistedly under a broadening reissue attempt at all.

        There is a direct collateral damage issue here BECAUSE the term is NOT being protected under a Doctrine of Equivalence, and thus the dichotomy of “unimportant but important” is being played out.

        The notion of “very different issue of infringement assertion” is nothing more than a red herring, and thus, your post MAKES MY POINT that the better legal view is as I present.

        1. 2.2.1.1

          “Derp derp derp derp DERP DERP derpitty derpity dipderp dipperty derp derp derp DERP DERP patents slurp patents slurp yummm ohg0d0g0gpatents DERP derp.”

        2. 2.2.1.2

          your post MAKES MY POINT that the better legal view is as I present

          Dennis Crouch’s favorite son, doing what he does best.

          Heckuva job, bro’. Thank goodness he’s so “civil.” LOL

        3. 2.2.1.3

          handled so ham-fistedly

          Yes, the application was drafted incompetently, or someone involved with these later prosecution efforts is behaving dishonestly.

          Polishing a t-u-r-d is an appropriate activity for ham-fisted people, and for people who are desperate for work.

          1. 2.2.1.3.1

            NONE of your comments have any substantive weight, Malcolm.

            Maybe instead of seeking to denigrate (and only denigrate), you take a moment to realize that substantive points have been provided and try to actually engage in an inte11ectually honest manner.

        4. 2.2.1.4

          Green anon, you too? This is a written description case.

  8. 1

    Substituting a more generic claim term for an unnecessarily narrow species term not critical to the invention, as here, is precisely the kind of correctable attorney or applicant error a broadening reissue is supposed to be for. It is why doing any claim broadening at all is limited to two years from the issue date by statute – 35 U.S.C. 251.
    This is a also a reminder that a non-infringement opinion for a less than two year old patent must take into consideration a possible broadening reissue [as well as pending continuations or divisionals].

    1. 1.1

      Your indication of a non-infringement opinion actually makes MY case at post 2; given that NO amount of post-grant review will find the actual difference being ascribed to as “error” to be present (as there is no actual error per se). The better view would be to analyze the already granted claims under a generous Doctrine of Equivalents view.

      I would also remark that it appears that the tendency to look at cases with a Negative View towards patent holders sometimes obscures the words that the Court has already used.

      For example, and somewhat pertinent here, the words from KSR come to mind (emphasis added):

      Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.
      See link to supremecourt.gov page 15.

      MOST look at this statement and only see the “don’t grant a new patent” view. But the statement contains MORE. The statement contains the implicit direction that prior inventions should not be deprived based merely on inconsequential (obvious) variants, and that THIS statement is actually a statement FOR a strong and generous Doctrine of Equivalents.

      1. 1.1.1

        it appears that the tendency to look at cases with a Negative View … sometimes obscures the words that the Court has already used

        Bildo often ventures beyond parody but the capitalized “Negative View” was especially funny here. Not to mention the incredibly self-absorption on display.

        Look in the mirror, you miserable, “confused” f–kknob. That goes for all your patent maximalist mental defect friends, too.

        1. 1.1.1.1

          Your Accuse Others meme is noted.

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