Which Area is Wider?

Collabo Innovations, Inc. v. Sony Corp. (Fed. Cir. 2019)

The priority filing of Collabo’s U.S. Patent No. 5,952,714 reaches back to  1995.  Although the patent is now expired, Sony filed this inter partes review (IPR) to avoid back damages.  The pending infringement litigation was stayed pending outcome of the IPR.  For its part, Collabo is a subsidiary of the licensing company Wi-Lan, who bought several hundred patents from Panasonic.

The patent covers an improved solid state image sensor used in cameras. Here, the improvement is a reduction in manufacturing costs by increasing the size of the housing inlet (26) — allowing the chip (27) to be inserted more easily (from below in the drawing).

The odd part of the patent comes in how this “wider” inlet was claimed. In particular, the claims state that the inlet “has a wider area.”  Of course, “wider” is typically a modifier of single-dimension measurements and “area” mathematically requires two-dimensions.  That said, an “area” might be thought of more generally as a planar space that might be either wider or narrower, taller or shorter.

Which of my two figures above have the “Wider Area?”

In its claim construction, the Federal Circuit agreed with the Board, that “wider area” might be a smaller area, so long as one dimension is wider.  The Court particularly notes that the specification uses “larger area” when considering the actual area, but “wider” when looking at one dimension of the space.   That construction meant that the prior art was easier to link to the claims and support the Board’s invalidity finding.

Claim Coverage Argument ==> Claim Construction Demand: Neither party asked the Board to construe the “wider” term.  However, the Board went ahead and construed the term after finding that it was in issue. On appeal, the Federal Circuit affirmed this approach, explaining:

Collabo itself placed the meaning of ‘wider area’ at issue. It argued that the asserted prior art references did not disclose the “wider area” limitation because they failed to show or describe the relative areas—both length and width—of their openings.

Id.

84 thoughts on “Which Area is Wider?

  1. 11

    ” Of course, “wider” is typically a modifier of single-dimension measurements and “area” mathematically requires two-dimensions. ”

    Wide Area Network – one dimension?
    Hubble Wide Field of view camera – one dimension?
    The city wide alert has been extended to a nation wide alert – one dimension?
    Our new easy pour ketchup bottle has a wider mouth – one dimension?

  2. 10

    Goodness, I just noticed that this case is the first application of the recent Celgene holding that IPRs do not violate the Fifth Amendment takings clause. That did not take too long.

    1. 10.1

      The Office couldn’t have picked a more deserving recipient.

      1. 10.1.1

        ? Because the recipient here badly claims some “objective physical structural difference”…?

        Are your feelings simply out of control again?

    2. 10.2

      Also worth noting today’s precedential decision in American Bankers Assoc. v. United States. On its way to rejecting the Bankers Fifth Amendment Takings claim, the CAFC quoted Mitchell Arms, Inc. v. United States, 7 F.3d 212, 216 (Fed. Cir. 1993) for the proposition that “enforceable rights sufficient to support a taking claim against the United States cannot arise in an area voluntarily entered into and one which, from the start, is subject to pervasive Government control.”

      1. 10.2.1

        Thanks Greg – an interesting twist, and one in which the notion of patent law (being Private Personal Property) may well set up a genuine conflict.

        And that’s even taking your view that a franchise property is still a form of personal private property…

        1. 10.2.1.1

          the notion of patent law (being Private Personal Property)</i?

          "Derp derp private property derp I'm a glibertarian derp incapable of derp learning derp c-u-mstains all over my copy of Atlas Derp Shrugged."

          1. 10.2.1.1.1

            Did you have a point there, or did you just want to do your Derp Dance?

  3. 9

    But my slot has a longer area.

  4. 8

    What’s the difference between a duck?

    One leg’s the same.

    1. 8.1

      The answer is a peanut, because carbon is an element.

  5. 7

    Indefinite.

    1. 7.1

      Could be, but an IPR petitioner arguing claim indefiniteness could not get that considered other than to get the IPR institution denied or dismissed. A strong disincentive to not even raise that issue in an IPR, hence not in Fed. Cir. appeals therefrom unless the Fed. Cir. raises it sua sponte?

  6. 6

    “wider area” is obviously not proper. Wider refers to a single dimension and area refers to two dimensions.

    I would say the only fair way to read this is to say that it has to be wider and have a greater area absent a special definition of “wider area.”

    1. 6.1

      I agree that “wider area” is obviously not proper.

      I disagree that the only fair way to read this is to say that it has to be wider AND have a greater area absent a special definition.

      Three is NO imperative that “wider area” must be the same as “larger area.”

      None.

      When looking at your typical four-dimensional world, time, of course, is easily separable. Of the three spacial dimensions, there can be seen (and quite easily) a natural contextual separation of one of the three from the other two: height/depth has obvious natural gravitational aspects that a purely x-y framework may not have.

      That leaves the “planar” aspect of a constant Z dimension. Here (as of all people, Max Drei starts to indicate, context is king. It is the context of a relative perspective and whether or not a “true” area is a focal point, or merely one aspect of an affected area that is a focal point. Additionally, in those Z = constant scenarios, rotation may very well NOT matter, and then the whole “is this length or is this width” becomes a bit pedantic in relation to whether or not “wide” is a focal point.

      ALL of this however, is in quite the distinction to ANY notion that somehow it is truly a larger area qua area that somehow MUST BE a focal point.

      1. 6.1.1

        I can’t make any sense out of what you wrote, anon.

        I would put this on the patentee. There shouldn’t be terms like “wider area” in claims absent special definitions or dependent claims that make the meaning clear.

        Frankly, if you write a term like “wider area”, you deserve whatever you get.

        1. 6.1.1.1

          I too would put this on the patentee, and we are not in disagreement on the overall take-away.

          But what I said is simple enough to grasp: larger area is NOT synonymous with larger area. Context can be determinative, and in a manner easily opposite your “MUST” directive.

          IF context is there to support a more “loose” discussion of “wider area,” I am NOT going to get all bent out of shape just because the language is not strictly “The Queen’s English.”

          The nature of language itself is simply not as fixed in stone as some of the more rigid would have it. Just last week I was watching an interesting clip on how far back in time one might travel (if such were possible) and STILL be able to readily communicate in the “English-speaking” parts of the world.

          1. 6.1.1.1.1

            I get if you twist your head and maybe smack it with a rock that “wider area” may have some meaning.

            But –seriously–“wider area”? A term like that should not be in a claim.

        2. 6.1.1.2

          I would put this on the patentee… [I]f you write a term like “wider area”, you deserve whatever you get.

          Exactly. As between the patentee and the public, it was the patentee who had some ability to avoid this problem. Therefore it is only fair that the patentee should bear the loss here.

          This sort of approach will not appreciably lessen the incentive effects of the patent system, because would-be patentees will know that they have it entirely within their own control to avoid such outcomes.

        3. 6.1.1.3

          I can’t make any sense out of what you wrote, anon.

          That’s actually a good sign.

          1. 6.1.1.3.1

    2. 6.2

      “I would say the only fair way to read this is to say that it has to be wider and have a greater area”

      Why you getting the greater area requirement?

      1. 6.2.1

        Because you are right it is indefinite. So the claim construction should be against the patentee. Wider is being used as an adjective of area. So the “er” means more area is needed.

        The whole thing is ridiculous. “Wider area” should never have been allowed.

        1. 6.2.1.1

          “the claim construction should be against the patentee.”

          But the patentee wanted the “larger” interpretation. So your “wider and larger” interpretation is taking the patentee’s side.

          1. 6.2.1.1.1

            Doesn’t matter Ben. The claims should be invalidated on the basis of being ridiculous.

            1. 6.2.1.1.1.1

              And thus the Doctrine of Ridiculousness began to take hold.

              1. 6.2.1.1.1.1.1

                MM, :).

                If you want me to be more formal, then I think it should include a greater area in the claim construction–if the claims are going to be construed. But I would say, Ben, that you assessment of indefinite is correct. If I were I judge on the CAFC, I would have held that the claims were indefinite and invalid. I would not have construed the claims.

                1. Do you not have to attempt to construe the claims in order to reach the determination that the claims are invalid for being indefinite?

                  Indefiniteness is not something that happens in a vacuum.

        2. 6.2.1.2

          Pardon the error above (should read: larger area is NOT synonymous with WIDER area).

          One “er” is just not the same as the other “er.”

          A one meter tall by one kilometer wide area is wider (but not larger) than a ten meter tall by 3/4 kilometer wide area.

          In this example, I chose tall to implicate that the height/depth dimension is intrinsically not the “wide” factor (which, of course could also be alluded to in the specification).

  7. 5

    The lesson in the Chef America case and this case is to hire a decent patent attorney who can write sentences in English. Of course, if the “invention” is “the prior art, except this inlet is wider” then you might as well spend your money on something else besides a patent.

    Of course, we work in a profession where seven years isn’t enough for a pack of self-identifying attorneys with over 200 years of experience between them (and thousands of pages of text highlighting the critical issues) to write a statute that isn’t a steaming pile of d0g s—t.

    [shrugs]

    It makes you wonder if there isn’t something else going on which explains the rank incompetence … Any ideas, Dennis?

    [crickets]

    1. 5.1

      Your feelings are noted.

    2. 5.2

      Yes MM, I agree, patent attorneys ought to be required to be competent to formulate in clear English descriptions of embodiments of inventions. But also expected to be able, when drafting the claims of a patent application, to distinguish features essential to the invention from features that are not more than optional.

      And courts should require of attorneys at least that level of competence.

      Which means that they should eliminate the Doctrine of Equivalents. There is no need of it, in a properly functioning patent system.

      1. 5.2.1

        Which means that they should eliminate the Doctrine of Equivalents. There is no need of it, in a properly functioning patent system.

        Too bad there is not working “facepalm” emoticon…

      2. 5.2.2

        they should eliminate the Doctrine of Equivalents

        You won’t find any disagreement on that score from me.

        It’s curious isn’t it — the patent maximalists are endlessly complaining about “confusion” introducted by “judicial activism” but the D.O.E. is yet another one of those “complicated” and “unpredictable” doctrines which the maximalists seem to adore. It would be incredibly simple to amend the patent statute to get rid of confusion and unpredictability caused by the DOE. But somehow that never manages to be a priority for the maximalists who, as noted above, are rather obsessed with eliminating allegedly “confusing” doctrines from the system.

        It’s almost as if the patent maximalists aren’t being entirely forthright. Could that possibly be? I wonder if there is any way to explain this strange behavior. Any ideas, Dennis?

        [crickets]

        1. 5.2.2.1

          get rid of confusion and unpredictability caused by the DOE

          Why are you confused by the DOE? There is nothing not entirely forthright here.

          You must not be doing things right – maybe you should let your clients know how confused you are by this thing. And you malpractice insurance carrier, while you are at it.

          1. 5.2.2.1.1

            Why are you confused by the DOE?

            ROTFLMAO

            I’m not, because I’ve got tons of experience with it and I’m on the higher end of the intelligence spectrum.

            But please tell everyone, Bildo: what’s confusing about “the claim is ineligible because it protects an ineligible abstraction in a prior art context”? I mean, other than the fact that it means your precious patent rights are diminished, instead of expanded.

            You see, I’m actually not the one who runs around screeching about “it’s all so confusing!” and “illegal judicial activism!”, Bildo. That would be you and your maximalist cohorts.

            Of course, it doesn’t help when tenured professors — who are theoretically supposed to know something about legal reasoning and who are supposed to have so skill when it comes to educating others — just sit on their hands or, worse, contribute to the screeching. Maybe Dennis has some insights which would account for that reticence.

            [crickets]

            1. 5.2.2.1.1.1

              Move the goalposts back.

              For all your self-proclaimed “I’m not confused,” YOU were the one that claimed the concept TO BE confusing.

              Why the duplicity?

              1. 5.2.2.1.1.1.1

                YOU were the one that claimed the concept TO BE confusing.

                Actually I believe that was Jason, whom I corrected. But Conceptually, I don’t find it very confusing. Just like subject matter eligibility is pretty straightforward, as long as you aren’t assuming your conclusions.

                Making these things confusing is a specialty of a certain segment of the patent bar, Bildo. That would be the segment which includes you. Or the bucket that includes you, if you prefer.

                Still confused, Bildo? Sure you are.

                Can we hear your awesome lectures about the Monte Hall Experiment and Simpleton Set Structure Solution again? You’re a very serious person.

                1. No. It was not Jason. It was you. My reply to you at 5.2.2.1 quotes YOUR words.

                  YOU are the one that you immediately here turn and Accuse Me of doing.

                  Again – why the duplicity?

          2. 5.2.2.1.2

            “Why are you confused by the DOE? There is nothing not entirely forthright here.”

            Says Blue anon. With his Wikipedia knowledge.

            ROTFLMAO .

            1. 5.2.2.1.2.1

              “YOU are the one that you immediately here turn and Accuse Me of doing.”

              Not a sentence. Weird auto-correct?

              1. 5.2.2.1.2.1.1

                Wait, anons, I asked a question you can’t answer. Don’t I get an insult too?

                1. …too…?

                  Your logic is off. If you think that I insult just because I have been asked a question that I don’t have an answer to, you have not been paying attention (and likely believing the B$ that certain others — like Malcolm — spin).

                  Wake up son.

                2. Wrong again, my shiftless snowflake friend. I did not imply that the only time you avoid substance and rely on insults is when faced with a question you cannot answer. That is but one of many triggers.

                3. Your post carries no such “there are many triggers” intonation. thus, you are — yet again — wrong.

            2. 5.2.2.1.2.2

              My Shifty friend once again wants to invoke his self-flagellating “Wiki” reference.

              It’s as if you just can’t get enough of that beat down, can you?

      3. 5.2.3

        [T]hey should eliminate the Doctrine of Equivalents.

        +1

        1. 5.2.3.1

          “[T]hey should eliminate the Doctrine of Equivalents.”

          “[T]hey?” Who are “[T]hey?” Courts, do not do that? If one were to draft a statute that eliminated the Doctrine of Equivalents, what would the statute say?

          1. 5.2.3.1.1

            “[T]hey?” Who are “[T]hey?”

            Good question. I definitely had in mind the Congress as “they,” not the courts.

            If one were to draft a statute that eliminated the Doctrine of Equivalents, what would the statute say?

            Also a good question. I have every confidence that it is possible to amend §§ 1001, 112, & 271 (and possibly others) as necessary to achieve this recalibration of the infringement analysis, but I confess that it is beyond my immediate talents.

            1. 5.2.3.1.1.1

              Whoops, that is meant to read “§§ 100, 112, & 271.”

            2. 5.2.3.1.1.2

              “I confess that it is beyond my immediate talents.”

              I have a similar confession, but it could make one helluva final exam question.

    3. 5.3

      One way to improve PTO practice would be to require MCLE, specific to patent practice, for those holding themselves out as currently practicing patent attorneys or agents. How many other regulated professions now allow anyone who passed their entrance exam once, no matter how many years ago, to never formally learn any more about it if they don’t feel like it or think they already know everything? [Not even dental technicians or hair dressers, in many states.]
      Speaking of keeping up, have all of you seen the annual PTO fee now formally proposed by the PTO for all registered practitioners?

      1. 5.3.1

        “How many other regulated professions now allow anyone who passed their entrance exam once, no matter how many years ago, to never formally learn any more about it if they don’t feel like it or think they already know everything?”

        In the U.S., Physicians.

        1. 5.3.1.1

          Why physicians have higher status than engineers and lawyers in the U.S. is beyond the scope of whatever this is here.

        2. 5.3.1.2

          I found that hard to believe, so I looked a bit. It does vary between states, but there is apparently continuing Medical Education (CME) for board certified physicians and CME requirements have been established by their accrediting boards and at the state level.

          1. 5.3.1.2.1

            I find that hard to believe. Which states? And what are the consequences of not meeting the continuing requirements to be a board certified physician?

            1. 5.3.1.2.1.1

              You made me look up the current requirements, which are nowadays much stricter. CME requirements can be met by demonstrating renewed board certification, which in turn requires demonstrating the competency of walking a straight line.

              1. 5.3.1.2.1.1.1

                Translation:

                Shifty speaks without bothering to check on the veracity of what he speaks, someone challenges him, he then checks and finds out his original statement is wrong.

                Like this is not a pattern…?

      2. 5.3.2

        Another way would be to supplement your multiple choice, computer-administrated qualification exam with a real examination of competence to perform the core tasks of the a profession. Like, one that tests patent competence in drafting the sort of documents that patent attorneys draft for clients.

        Every invention is unique. Every case is unique. The supreme test of competence of an aspiring patent attorney (at least, outside the USA) is to give them a description of an invention and two pieces of prior art and see then whether they can draft a decent (clear, definite) and serviceable set of claims, that will serve to capture the full scope of protection due to the inventor, while being patentable over the given prior art. You might be surprised how well such an examination sifts the wood from the trees, will filter out the many aspirants who lack the aptitude for the patent attorney profession from those few that have some nascent talent for it.

        This is important, if the object is to grow a profession that serves the client. Do brain surgeons (or scriptwriters) qualify by passing a multiple choice, computer-administrated exam? I do hope not.

        As to the DoE, every jurisdiction has its courts and every day these courts face a choice: to make the law ever more complex, as with a DoE for example, or to strive to keep it simple.

        Who likes it complicated? Those lawyers seeking to bill as many hours as possible. Who strives to keep it simple? Those jurists who love the law

        1. 5.3.2.1

          and where to then, your “synthetical propensity”…?

          That you do not grasp that DoE IS the very same as your view of “synthetical propensity” is a rather off feature of yours.

          1. 5.3.2.1.1

            “That you do not grasp that DoE IS the very same as your view of ‘synthetical propensity’ is a rather off feature of yours.”

            From Wikipedia?

            1. 5.3.2.1.1.1

              Yet again with the self-flaggelation?

              1. 5.3.2.1.1.1.1

                Whatever you want to call it, slow cousin Grey anon. I was referring to when we found out the anons’ understanding of the Doctrine of Equivalents was based on a mistake in Wikipedia.

                1. when we found out” – is nothing more than you attempting your repeated L I E – and which was debunked immediately at that thread.

                  THIS is not a matter of “whatever I want to call it” — this is a matter of you being BUSTED for fabricating nonsense in an attempt to soothe your own beatdown on the Nobel Prize thread comment.

                  ALL if this is in plain black and white – no amount of attempted spin by you will change that, and as a matter of fact ONLY makes the situation WORSE for you.

                  Hence, the notion of self-flagellation.

          2. 5.3.2.1.2

            It was you who brought the Chef America case (to vs at) into this debate. I have no difficulty, when striving to construe that claim, in applying to that task the notion of synthetical propensity, building up meaning rather than trying to break it down.

            But I do have some difficulty applying to that claim the Doctrine of “Equivalents”. What is “equivalent”, between the “at” which makes a block of carbon and the “to” which makes a loaf of bread?

            1. 5.3.2.1.2.1

              That you do not grasp that DoE IS the very same as your view of “synthetical propensity” is a rather off feature of yours.

              The mechanism still eludes you, as you want to focus on the disparate results of the Chef America case (seemingly NOT even following your own stated principle of “with “a mind willing to understand” (at 4.1.1).

              And it was you that brought into the discussion the nonsense at post 5.2 of “Which means that they should eliminate the Doctrine of Equivalents. There is no need of it, in a properly functioning patent system.

              Do you not “get” that ALL that DoE does is to attempt to compensate for the fact that language is not perfect WITH that very same “mind willing to understand”….?

              It is more than a bit odd that you criticize a mechanism for which YOU first championed. Either you do not understand that which you champion, merely give it lip service, do not understand what DoE is about, or a plurality of these options.

              1. 5.3.2.1.2.1.1

                Here a Link to the recent Supreme Court case that introduced a DoE into UK patent law. The claim at bar required the cation to be Na, no more, no less. The Party held to infringe used K. I think it is a stretch (to say the least), even for a mind bending itself over backwards to understand, to hold that sodium means potassium.

                Ergo, DoE is not synonymous with synthetical propensity. It is a different animal altogether. Hence the absolute ruckus in the UK prompted by Lilly v Activis.

                link to ladas.com

  8. 4

    Every meaning depends on context. Context here, something in the nature of an “area”.

    Suppose we are debating an “area” in a context in which the width is self-evident. Like the field of play in a game of football, whether under Gaelic Rules, US-Rules or Australian rules. Which of these playing areas is “wider”? No confusion or ambiguity there, is there?

    Otherwise, suppose we are debating whether a 2-dimensional rectangular hatch opening in a ceiling in your house, that gives access to a space beneath your pitched roof, is “wider” than the corresponding hatch opening in my house. Either dimension will serve. So, no ambiguity there either, is there? In the words of the court “so long as one dimension is wider”.

    1. 4.1

      Which of these playing areas is “wider”? No confusion or ambiguity there, is there?

      No, but if you asked “Which playing field has a wider area?” the question would be just as confusing as the term at issue here.

      1. 4.1.1

        That’s exactly where you and I differ, MM. A playing area is a rectangle, with two long sides (defining the width) and two short sides (defining the length). That’s my point.

        I agree that the expression “wider area” is infelicitous. But what patent is ever drafted perfectly? In general, one needs to apply to patent reading what the EPO calls “synthetical propensity”. If you read the document as a whole, and through the eyes of the skilled reader, with “a mind willing to understand” rather than the eyes of a lawyer who is trying to misunderstand, you will routinely find the correct meaning (unless the expression is perfectly ambiguous).

        1. 4.1.1.1

          I agree that the expression “wider area” is infelicitous.

          Thank you for the comment.

        2. 4.1.1.2

          Sorry MaxDrei, I doubt that Malcolm made it all the way down to: “rather than the eyes of a lawyer who is trying to misunderstand

          1. 4.1.1.2.1

            Your “synthetical propensity” comes to mind…

            1. 4.1.1.2.1.1

              Oops – this should have posted below to your post at 2.1…

              1. 4.1.1.2.1.1.1

                Indeed.

  9. 3

    I am shocked that the prior art did not include a nonsensical vague term made up by the applicant.

  10. 2

    Brings back the memory of burnt biscuits…

    1. 2.1

      I thought it was bread. But never mind. The reference to the case is helpful.

      I thought the court got that one wrong, missed an opportunity to set claim construction on a better basis, going forward.

      1. 2.1.1

        Care to add any particulars to this?

        It might help with the conversation above.

  11. 1

    The interesting thing—to me, at any rate—about this opinion is that it rather unusually includes color figures in the slip op. I wonder if the Federal Appendix (or the USPQ, if they decide to include this one) will also have the color figures? I have never seen color images in a bound reporter.

    1. 1.1

      My suspicion is that the Joint Appendix included color images and the slip op. included one without changing to greyscale. I included color images in a joint appendix several years ago and ended up with a color photograph in the slip op: link to cafc.uscourts.gov . You could check the reporter for this case (In re Nordt Dev. Co., 881 F.3d 1371 (Fed. Cir. 2018)) to see if color images showed up.

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