Disavowal: Case Closed Once the Inventor Manifests That the Invention Includes a Particular Aspect

by Dennis Crouch

Techtronic Indus. v. International Trade Commission and The Chamberlain Group (Fed. Cir. 2019) (TechtronicvITC)

Chamberlain’s patent at issue here claims a garage door opener motor drive unit with two microcontrollers — one of which is sited in a “wall console” and the other presumably in the head unit, although this second portion is unclaimed. U.S. patent No. 7,161,319.

1. An improved garage door opener comprising a motor drive unit for opening and closing a garage door,

said motor drive unit having a microcontroller and a wall console,

said wall console having a microcontroller,

said microcontroller of said motor drive unit being connected to the microcontroller of the wall console by means of a digital data bus.

The accused infringer is Hong-Kong based TTI. TTI owns Ryobi, and Ryobi makes the accused garage door opening system.  hamberlain filed its case in the USITC which issued exclusion orders against the appellants.  On appeal, the Federal Circuit has reversed and vacated on claim construction.

Infrared Detector: It is clear from the patent document that the inventor’s saw the main point of their invention as a passive infrared detector housed in a wall console.

SUMMARY OF THE INVENTION: A passive infrared detector for a garage door operator … contained in a wall control unit.

‘319 patent, invention summary. This focus on the passive infrared detector is found throughout the patent document.  Consider the inventor’s statement of the problem to be solved by the invention:

What is needed then is a passive infrared detector for controlling illumination from a garage door operator which could be quickly and easily retrofitted to existing garage door operators with a minimum of trouble and without voiding the warranty.

‘319 patent, background.  The easy retrofit solution was to create a wall-unit with an infrared detector. Further, the only described embodiment places the passive infrared detector in the wall console.

Now, look back up at claim 1 and notice that a passive infrared detector is not expressly claimed. That limitation was spelled out in claims of the parent patent, but Chamberlain’s patent attorney at Fitch Even removed it from this continuation patent.

USITC decisions are made by the six commissioners (currently only five), but the Commission tasks an Administrative Law Judge (ALJ) to conduct the trial.  Here, the ALJ narrowly construed the “wall console” term — holding that “Chamberlain
… disavowed wall consoles lacking a passive infrared detector.”  This construction is important because Ryobi’s wall console does not have a passive infrared detector — thus, the narrow construction meant no infringement.

The Commissioners then took-up the ALJ’s decision and disagreed — ultimately giving “wall console” its ordinary broad meaning that resulted in an easy infringement finding (and resulting exclusion order preventing importation of Ryobi products).

On appeal, the Federal Circuit reviewed the claim construction de novo and found that the ALJ’s original decision was correct. “Chamberlain disavowed coverage of wall consoles without a passive infrared detector.”

[W]here the inventor … has manifested that the invention does or does not include a particular aspect, that intention is regarded as dispositive.

Here, such statements regarding the invention fall into the disavowal category – and must be “clear” although not necessarily “explicit.”

We conclude that the ’319 patent disavows coverage of wall consoles lacking a passive infrared detector because the specification, in each of its sections, discloses as the invention a garage door opener improved by moving the passive infrared detector from the head unit to the wall console. It is axiomatic that, where the specification “describes ‘the present invention’ as having [a] feature,” that representation may disavow contrary embodiments. See Poly-America (“[A]n inventor may disavow claims lacking a particular feature when the specification describes ‘the present invention’ as having that feature.” The ’319 patent, by consistently representing the invention as the placement of the detector in the wall console, has thus effected a disavowal of alternative locations.

According to the background section, the prior art taught the use of passive infrared detectors in the head unit of the garage door opener to control the garage’s lighting, but that locating the detector in the head unit was expensive, complicated, and unreliable. The ’319 patent therefore sets out to solve the need for “a passive infrared detector for controlling illumination from a garage door operator which could be quickly and easily retrofitted to existing garage door operators with a minimum of trouble and without voiding the warranty.”

The remaining sections of the patent—even the abstract—disclose a straightforward solution: moving the detector to the wall console.

Chamberlain argued that the patent recites a separate relating to programming of the microcontrollers. However, the Court rejected that argument:

The suggestion that the patent recites another invention—related to programming the microcontroller—in no way undermines the conclusion that the infrared detector must be on the wall unit. . . . But the entire purpose of [the microcontroller programming] part of the description is to enable placement of the detector in the wall console, and it never discusses programming the microcontroller or applying digital signaling techniques for any purpose other than transmitting lighting commands from the wall console.

The court appears to note that one problem with this additional invention is that the specification was not very specific.  The claimed “digital data bus”, for instance, is not expressly discussed in the specification other than an oblique reference to “lines carrying the normal wall control switch signals.”

Chamberlain also argues that disavowal is not clear because nothing in the specification suggests that it would be impossible or infeasible to put a passive infrared detector elsewhere.  On appeal, the Federal Circuit found some merit to that argument, but concluded that the specification here “plainly represents the scope of the invention to the exclusion of some embodiments.”

Here, the entire specification focuses on enabling placement of the passive infrared detector in the wall console, which is both responsive to the prior art deficiency the ’319 patent identifies and repeatedly set forth as the objective of the invention. Thus, the ’319 patent disavows locating the detector elsewhere, even without an express concession to that effect.

Slip Op.  Although not cited here, this case reminds me substantially of Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) and its maligned “omitted elements” test.


95 thoughts on “Disavowal: Case Closed Once the Inventor Manifests That the Invention Includes a Particular Aspect

  1. 12

    “It is a principal aspect of the present invention to provide
    a quickly and easily retrofitted passive infrared detector for
    controlling the illumination of a garage door operator
    through conventional signaling channels.” ‘319 Patent, column 2, lines 64-67.

    “A wall control unit 60 EMBODYING THE PRESENT INVENTION…” Id. at column 4, line 5 (caps added for emphasis)

    “THE WALL CONTROL 60, as may best be seen in FIG. 4, INCLUDES A PASSIVE INFRARED SENSOR 100….” Id. at 22-23.

    This is a pretty straightforward disavowal case. If the applicant wanted to claim a wall control without a passive infrared sensor, the applicant should not have indicated that “THE” invention is embodied by Wall control 60, which “INCLUDES a passive infrared sensor.”

    Myriad other drafting techniques could be used to convey the same information in a manner that ultimately does not disclaim claim scope. E.g.,:

    For example, the whole issue could have been avoided by simply stating that “FIG. 1 depicts one example of a wall unit consistent with the present disclosure.”

    If one wanted to be extra careful, the drafter could have also stated that “While the wall unit shown in FIG. 1 includes a passive infrared detector, the inclusion of a passive infrared detector therein is not required.” Of course, that would mean the applicant or his/her attorney would have to appreciate at the time the application was drafting that the passive infrared sensor does not need to be located in the wall unit – something that clearly did not happen in this case.

  2. 11

    Clarification please. Throughout the thread, I’m told that the mistake by the drafter was to use the profane words “the present invention” or even just “the invention”. I gather that one is supposed instead to write “the disclosure” or “the embodiment” or “the Example” but refrain from stating what it is that the embodiment is an embodiment of, and then everything will be all right.

    But reading the Dennis report, I’m thinking that if the drafter had used the by now ubiquitous sub-heading “SUMMARY” instead of “SUMMARY OF THE INVENTION”, and in the paragraphs below had studiously avoided the profane word “invention”, the outcome would still have been the same. If I were to read the Decision all through, would it tell me otherwise?

    In other words, is this a “patent profanity” case or is it in reality a case about the analysis of the substance of the disclosure in the specification as filed?

    1. 11.1

      “ALJ Opinion, slip op. at 14–18. The ALJ determined that the ’319 patent sets forth its invention as a passive infrared detector superior to those of the prior art by virtue of its location in the wall console, rather than in the head unit, and that the only embodiment in the ’319 patent places the passive infrared detector in the wall console as well. ”

      Probably that sums up the problem.

      1. 11.1.1

        Sums up? For you, perhaps, Night, but not for me. Whether or not:

        “…the ’319 patent sets forth its invention as a passive infrared detector superior to those of the prior art by virtue of its location in the wall console, rather than in the head unit,…”

        is, as a fact, as a matter of substance, for any reasonably well-informed, dispassionate and intelligent reader of the specification, independent of whether the drafter of that specification was guilty of any so-called “patent profanity”.

      2. 11.1.2

        superior to those of the prior art by virtue of its location in the wall console

        Doesn’t sound like an invention to me. Were the sensors so massive that they couldn’t be supported by a wall? Obviously not, since they previously were in the head unit.


          I gather that it was always the inconvenient-to-access head unit that, in the prior art, carried the IR detector. I gather that the inventor came to the idea to mount the detector in the easier-to-access wall unit. I assume that in the state of the art there was neither any recognition of the access problem nor any suggestion to put the IR sensor anywhere else but in the obvious place (in the head unit).

          In short, the invention the subject of the patent application, the subject matter for which protection was sought, solved a real technical problem in a way that the prior art did not render obvious.

          Only trouble was, the claim in suit claimed something other than that invention, something that, even if new, was manifestly obvious. What a pity, that in the USA obviousness is too complex to be used routinely, to tank claims which exhibit novelty but, nevertheless, are palpably devoid of any patentable merit.

          And then there’s the “bait and switch” issue. Start with a claim to particular subject matter, get a USPTO search, then switch to some other subject matter and take it to issue without it ever being subject to a rigorous PTO search. Isn’t this what Applicants routinely do, at the USPTO?

    2. 11.2

      Your thinking is wrong.

      It’s that simple.

      Particular words have earned the moniker of “patent profanity.”

      Using other words simply does not invoke the same “profanity.”

      While to you and I this may appear pedantic and “mere scrivining,” this is the direct result of the courts reaching out to “play gotcha.”

      What’s bizarre here is that the courts will continue to “blame”scriviners while simply not understanding that it is they who drive the “profanity”


          But Night, Chamberlain’s area of specific expertise is garage door openers. They have been patenting them since time immemorial. They are leaders in the field. Are you saying that, when they draft a new patent application, really they haven’t a clue what is their own contribution to the art? If so, that I must say is hard to swallow, beggars belief even.


            Max, you are making a mistake in confusing a client companies technical and prior art expertise with that of its patent attorney for preparing one application, especially if their patent work is being job-shopped out on a low bid basis.


              Beyond that Paul — MaxDrei is confusing the notion of having to write one’s innovation in a “Jepson format” type of manner.

              Heck, US Sovereign choice is such that NO prior art search whatsoever is required. It is simply NOT the applicant’s job to find out, let alone phrase the application, in terms of what the state of the art may be.

              And let’s add another bit of patent profanity in here: an applicant’s statement as to what IS prior art is taken as admitted prior art — even if the applicant happens to be mistaken and the item stated is not — in fact — prior art (such nonetheless and regardless of actual reality) is DEEMED prior art against the applicant.

              Applicants are penalized for inclusion of discussion of others’ works.

              This is a real thing.

    3. 11.3

      MD, it’s the latter.

      “Patent profanity” obsessions are for greenhorns and newbies who don’t really have a clue about how the system works in practice.

      That’s why Greg’s comment below about outside counsel really just shows that he’s a d-I-c-k client.

      Again: making accurate statements about your invention is not “an admission against interest.” Accurate explicit statements in the spec about the invention can just as often rescue the patent, and we see that happening often.

      1. 11.3.1

        MM, you are right that accurate statements can save a patent as often as sink it. I agree 100 percent.

        The reality is that the case law makes no sense and you just have to be careful to avoid the specific terms that have been used in previous cases, but I always put in as much as I can about advantages and the technical nature of embodiments as they are helpful for 101 and to prosecute at the EPO.

      2. 11.3.2

        Your position cannot be substantiated, and merely reflects (yet again) how out of touch you are with the objects of innovation protection.

        I can see the cognitive dissonance “against all those other practitioners” just screaming to be released in your comments (as if “patent profanity” were not a real thing).

        Patent profanity IS a real thing.

        And it has a real cause that you dare not admit of — in large part, because you despise the very thing that you “work to create.”


          “Real cause that I dare not admit of” …?


          You’re in that “beyond parody” mode again. What are you talking about?


            And you are in that “immediate denigration, then admit that you are c1ue1ess” mode again.

            Try just a little to figure this out on your own.

            (I am not expecting you to be able to handle even that simple of a task, based, you know, on your 14 and 3/4 years of examples here).

    4. 11.4

      Why do you need to say any of those things? They might make you sound all official and stuff, but how do they help an artisan or an examiner understand “the invention.” If I say the “the present provides a sandwich with peanut butter and jelly” does that convey more information than “Figure 1 shows a sandwich with peanut butter and jelly”? Maybe does, but why say it? I am legitimately curious.

  3. 10

    This holding is complete reindeer crap. It is not grounded in any statutory law or reasonable sense. The Federal Circuit just makes the rules up as they go. It continues looking for ways to find non-infringement and undermine patents. This will do wonders for our patent system. So technology thieves don’t infringe if elements described in the specification are not claimed? Do applicants now need to claim their entire specification? I swear if I knew 20 years ago that the U.S. patent system would melt away like Frosty the Snowman, I would have gone to medical school. What a total waste to time and money on a career field that has been ruined by special interests, lawmakers, the USPTO, and judges who don’t give a damn.

    1. 10.1

      I agree Peter. Had I known what I do now I never would have become a patent attorney. We used to get $16K for an application and $35oo for an office action. Now clients pay $8.5 if that. And office actions are $2200.

      The clients just think of patents as junk and their budgets keep shrinking.

    2. 10.2

      Way to totally misrepresent the case, Peter!

      Maximalist gaslighting: they cant help themselves. What a f—king d0-0sh.

  4. 9

    One of the things about this is that inventors often don’t how what they did compares with what was done before. So when judges dig into the patent application to invalidate a patent rather than use prior art or enablement, the judge is violating the exchange with the inventor. They agree to tell what they know, but they may not know how to say it or how it relates to the prior art. The judge is taking advantage of the inventor by using statements in the specification rather than going from first principles of science/technology and the prior art.

    1. 9.2

      News flash: if you or your attorney “don’t know” how to describe your alleged “invention” in an art-distinguishing manner, then you don’t deserve a patent. Period.

      My goodness what a bunch of patent-huffing derelicts we have here in the comments this week.

  5. 8

    Opinions such as this make examination more difficult and make patent disclosures less likely to fulfill their role in the exchange of exclusive rights for a public disclosure of how to make and use the invention. Attorneys will be less likely to disclose details of an invention that put the invention in the proper context, for fear that the claims will be unduly narrowed during litigation. And that will make disclosures even more unreadable than they already are.

    A patent disclosure should be a little like a scientific article – clear and to the point, maybe with a dash of boilerplate or alternate embodiments thrown in. The primary goal should be to teach other people how to make and use the invention, reserving the claims to be the determiner of what the protected scope of the invention is. But with case law the way it is now – where anything you write can be used against you in a court of law (or an administrative proceeding) – the exact opposite objective is achieved instead.

    1. 8.2

      I agree. The problem is the judges use some ridiculous pretext to invalidate claims rather than fairly evaluating the claims in view of the specification.

      It has made our job of writing patent applications very difficult.

    2. 8.3

      “A patent disclosure should be a little like a scientific article” is a common inventor fallacy. A valid patent application, including its claims, must meet the several much more stringent specific statutory requirements of 35 USC 112, 103, etc. If one narrowly defines what is the invention in the application as filed and then files a far broader claim much later on as here [which, BTW means it was not properly prior art searched], one is risking 112, 103 and other issues, as well as this kind of claim interpretation, in patent enforcement.

      1. 8.3.1

        Agree – but for a different reason, Paul.

        An application is NOT an engineering document, but instead is a legal document.

        An application (no matter the differences for 103 or 112) simply does not have the same purpose of an engineering document and it would be a grave mistake to think that it should “be the same” or heck, even “be similar” based on a mistaken notion of purpose.


          The problem with that philosophy is that the entire purpose of the specification is to fulfill the requirement that one of ordinary skill in the art be able to make and use the invention by virtue of the teachings offered by the specification. One of ordinary skill is generally an engineer of some sort, whether by training or experience, not a lawyer. The claims certainly serve a legal purpose, but the specification ostensibly serves an engineering or scientific purpose, and patent reform should include an effort to steer the specification back toward that purpose.




            One of ordinary skill is generally an engineer of some sort, whether by training or experience, not a lawyer.” is not quite right for the point that you are attempting.

            The legal fiction of PHOSITA certainly is an Art-related notion, but make NO mistake, that aspect of “level” AND “teaching” are merely parts of what the LEGAL document must contain.

            The legal document remains a legal document.

            I certainly “get” the desire to have any teaching BE meaningful, but your path — without recognizing the presence (and perhaps more importantly, the driver) of patent profanity is a f001’s errand.

            Apply a little “engineering analysis” to the problem of patent profanity and see the underlying cause of why LESS is necessary in that item of a legal document (hint: there are consequences of judges acting against patent rights).

            And let me add a slight tangent (but only slight, as this too is a consequence of judicial action): revisit KSR and note that the Justices there bring about the consequence of LESS being needed as they increase the power and range of PHOSITA (obstinately, to attack a granted patent). When you make PHOSITA more powerful for one aspect, you just don’t get to ignore the effect of that power on the flip side of what suffices for what the legal document must bring to the table.

            The blade is necessarily a double edged blade.

  6. 7

    The “invention” is whatever is particularly pointed out and distinctly claimed. If that is described and enabled by the application and novel and non-obvious over the prior art, then the “invention” is patentable. Talking about the “invention” anywhere other than the claims is just foolish.

    1. 7.1

      As a drafter and filer, I’m intrigued by your advice that it is “foolish” to “talk about” the “invention” anywhere in the patent application other than in the claims. What about when the patent application is to be filed and prosecuted internationally, that is to say, where PCT Rule 5 (link) plays a role. Is it possible to draft in a way that reconciles best drafting practice for the USA with best drafting practice for RoW?

      link to wipo.int

      1. 7.1.1

        Is it possible? I do it all the time. Nothing in Rule 5, or in EPO rules, requires repeated incantation of “the present invention.” Given its detriment in the US, and lack of benefit OUS, it’s best just to control yourself and avoid needless incantations.
        I would be interested in any basis for repeated incantations, though. OUS applications are infected with them. Do they serve any purpose, beyond sounding real official and formal?


          How about chemical cases, full of worked Examples, some of the invention and others comparative? You need them both, don’t you, in the application as filed, to make your case for patentability. And, also in the application as filed, you have to declare which are which, don’t you?


            Chemical cases are my bread and butter, and I will fire an outside counsel who drafts my cases with “the present invention.” Crockett is right. “The present invention” is a bad habit that creeps lazily into the text of the insufficiently attentive drafter.


          Indeed, and using different words other than “the invention is..” is so simple, e.g., “A specification example below provides ..

      2. 7.1.2

        Max, what we have to do in the USA is put “in an embodiment” or similar language.

        I write applications that are prosecuted around the world, e.g., EPO and China, and have to put all sorts of things in there for the EPO and China.


          China? What needs to be done for China? Verbatim support for claim language is certainly a practical necessity (not required by the rules). Anything else?

  7. 6

    Wait a minute. What happened to the name of the game is the claims?

    Whenever the PTAB wants to invalidate our patents they ignore the disclosure and broaden our claims to accuse us of claiming something already invented. Just look at the Chrimar case pending rehearing, where they construed phantom power to cover rotary phones from 1919.

    I would support this decision if it were equally applied to the PTAB.

  8. 5

    I have described invocations of “the present invention” as the involuntary grunts, burps and farts of the octogenarian patent attorney.
    The result in this case can be justified as punishment for use of the phrase long after it was clear that it could lead to importation of limitations from the spec to limit the claims.
    The urge to use the phrase is apparently uncontrollable. I just read a blog post from a well-known patent firm warning against use of the phrase, alongside one of their recent applications which included numerous instances of the phrase in such an insistent manner that the claims must be read to include features that are clearly overly limiting.
    Why are patent attorneys still doing it?

    1. 5.1

      The result in this case can be justified as punishment for use of the phrase long after it was clear that it could lead to importation of limitations from the spec to limit the claims.

      I’m not an octagenarian but I am curious: was there ever a time when it was NOT “clear” that repeatedly stating that “the solution to this prior art problem is to include X” over and over in the spec was going to negatively impact one’s ability to assert a patent claim against someone who wasn’t using X in their product?

      Likewise, was there ever a time when amending a claim during prosecution to recite a term that appears nowhere in your specification was perceived as just another day’s work by a skilled prosecutor?

      Must have been fun. It definitely explains why the prosecution profession has long been perceived as a “backwater” profession. Of course, anybody who has tried to discuss subject matter eligibility with the the prosecutors who “came of age” in the 80s and 90s knows how deeply most of those people think about the requirements for (and the restrictions on) patentability and why they exist in the first place (hint: there is very little thinking). I believe Judge Newman was an octagenarian or close to it when she asserted that it was absolutely critical to permit applicants to claim (!) allegedly new products which the inventors were incapable of describing in art-distinguishing structural terms. Thankfully her fellow judges closed the iron door on that nonsense.

      The “thinking” is: just get the patent claim, by any means necessary. Say anything. Then wash your hands because other than short period of time where the profession was “plagued” by “baseless” inequitable conduct accusations, there’s no downside at all to kicking dust in the PTO’s face and running out of the Office with whatever ridiculous claim you can grab. Just be sure to cash the client’s checks right away.


      1. 5.1.2

        See5.2.1. But as to”allegedly new products which the inventors were incapable of describing in art-distinguishing structural terms” have you never had to use “product-by-process” claims or products described by various test measurements for which a formal chemical structure is not yet known?

      2. 5.1.3

        “was there ever a time when it was NOT “clear” that repeatedly stating that “the solution to this prior art problem is to include X” over and over in the spec was going to negatively impact one’s ability to assert a patent claim ”

        Yes, and it persists to this day. A patent filed by a well-known large firm issued Tuesday with 38 instances of “the present invention” notwithstanding their own blog post warning of the negative implications.

    2. 5.2

      Yes, specification admissions against interest as to what is “the invention” or “summary of the invention” [which the Fed. Cir. uses to narrow claims] has been a real problem among too many PTO practitioners for more than 20 years. No PTO MCLE requirements and insufficient CLE programs for what to put, or not put, in a patent doesn’t help.

      1. 5.2.1

        Another factor is that the patent attorneys [or agents] who write and prosecute patents for a living rarely also do patent litigation assertion or defense work, or get asked to do formal invalidity opinions. Thus they have far less incentive to keep up with the case law on why patents lose in litigation. And rarely ever suffering any consequences for patent application drafting errors causing patent litigation losses typically years later.


          Note that the “drafting error” in this case (the use of a term that appears nowhere in the specification) was not relevant to the outcome, although in a just system it would have rendered the patent unenforceable and there would have been sanctions against the attorneys involved with the prosecution and assertion.

          Describing the alleged “invention” accurately is not a “drafting error.”


            Perhaps the “drafting error” was in inaccurately insisting that “the present invention” included the placement of the infrared sensor, when it was actually the communication bus between the wall console and the motor drive (at least, that’s what claim 1 says, and the examiner agreed).


              when it was actually the communication bus between the wall console and the motor drive (at least, that’s what claim 1 says, and the examiner agreed)

              Nah – from the opinion:

              And Claim 1’s requirement of a “digital data bus” is supported in the specification only by a disclosure of “the lines carrying the normal wall control switch signals.” J.A. 4628
              (identifying “line 62” in the specification, col. 4 ll. 5–32, as
              the bus). Thus, this section of the ’319 patent can only be
              understood as disclosing means to enable placement of the
              detector in the wall console by using preexisting components of the garage door opener.

              That seems like a tailor-made obviousness rejection there. The background section admits the prior art taught the invention but-for the different placement of the passive infrared sensor. The specification fails to independently enable the mechanism which allows for the different placement. Ergo we have a simple substitution situation – The background section admits the pieces. The means of switching the position of a piece was previously enabled to the art. Simple substitution is its own rationale of obviousness, and even if you ignored that, there was an admission in the background that generates a motivation (the cost and reliability).

              In short, moving Element A from position X to position Y is generally obvious if the art was enabled to make the position move, and more obvious when you admit a negative to locating A at X in the background section.

              Regardless, these claims are tankable on 112(b). The court construes the claim scope as including an infrared sensor at the wall console. The language of the claims does not reasonably suggest that an infrared sensor at the wall console is a limitation. A claim is invalid for indefiniteness if the claims read in light of the specification and the prosecution history fail to inform those skilled in the art about the scope of the invention with reasonable certainty. When the specification states there is a limitation and the claims do not, it is not reasonably certain.

              It’s probably also a 112(a) rejection for failing to claim essential matter, see MPEP 2172.01 (though frankly I think this logic is just duplicative incorrect logic that really applies to 112(b)).

              There’s no patentable invention here.


                When the specification states there is a limitation and the claims do not, it is not reasonably certain.

                But critically, maybe NOT.

                It very much depends on how well the specification is “scrivened” for flexibility.

                This too is not a new aspect.


          No doubt, incuriousity as to how patents get used and abused explains some. But that doesn’t explain my observation at 5.1.3, re a large firm with numerous litigator and prosecutors. What would?


            KDC you are making an assumption that in a large IP law firm that litigation partners [aware of what not to do in a specification of a patent to be litigated] regularly review the work product of the [typically] young associates or agents working full time on application prep and prosecution in that same firm with caped or restricted billables.
            Not in my observations, and not even usually cost-justified considering the very much higher hourly billing rates of litigators.


              Maybe, but the juxtaposition I mentioned was patents from one firm, and a blog by a patent prosecutor from the same firm. It’s a situation where the left hand doesn’t know what the left hand is doing. Try it with any blog post from a big firm, then search westlaw for their latest patents.



                We will not even want to get into any type of ethics of an attorney NOT licensed (that is, that does not have a current USPTO registration number) doing the legal work (i.e., supervising and directing another attorney) OF patent prosecution.

                As should be understood, that would be an unauthorized practice of law, and reportable to both State and the USPTO.

    3. 5.3

      Just to be clear here: statements about “what the invention is” are not “admissions against interest” unless those statements are inaccurate.

      There’s nothing inherently wrong with describing one’s inventive contribution to the art. On the contrary, it’s the legally correct thing to do if you actually understand the prior art and are prepared to discuss it honestly. It’s called “satisfying the written description requirement”.

      The other game you can play is to pretend that you were born yesterday, describe your “invention” in the most oblique and general terms possible, see what the Examiner does, and if worse comes to worse, just import some terms from outside the specification as filed and hope nobody notices! HOORAY FOR PROFESSIONALISM! Totally not a backwater. Right.

      1. 5.3.1

        if you actually understand the prior art and are prepared to discuss it honestly

        Discussing prior art is an invitation to malpractice given the KNOWN presence of patent profanity.

        It NEED BE exceedingly beneficial to venture into ANY discussion of prior art in one’s application.

        This has ZERO to do with Malcolm’s assertion of: “satisfying the written description requirement.” Zero.

        Malcolm, you mention “backwater,” but you get that reference wrong.

    4. 5.4

      It is cases like this one which strengthen the determination of the EPO to insist, during prosecution, that any disconformity between what is described in the specification as “the invention” and what is defined in the claims as “the invention” be removed prior to grant by appropriate amendments made to the specification. In the detailed description of illustrated embodiments, it very often happens that not all of them are embraced by the allowed claims, so to report them as “embodiments of the invention” is no longer accurate. The EPO insists that they no longer be reported as embodiments of “the invention”. Why doesn’t the USPTO do the same?

      How often does it happen, that the independent claim going to issue is no narrower than the independent claim of the application as filed? Some moderation of the scope of the Applicant’s original demands is nearly always necessary, so some disconformity between the allowable claims and the specification as filed will nearly always be present. What useful purpose does it serve, to let this disconformity through into the specification of the issued patent?

      1. 5.4.1

        You present a tempest in a teapot, and one easily extinguished by most any knowledgeable scriviner (who recognizes and handles patent profanity).

  9. 4

    When the House impeaches Trump a second time for a distinct set of abuses, l-I-e-s and crimes, it’ll be even more fun. Time to make some history.

      1. 4.1.1

        What the F has this to do with patent law?

        Quite a bit, given that Mango Spraytan will be a twice impeached Prezident who appointed a l-y-in-g fraud to run the PTO. That would be your l-y-in-g fraud, Bildo.

        You follow?

        Thank you for the comment.


          Your answer shows the opposite of what you claim.

          Find an appropriate forum for your non-patent law rants.

  10. 3

    You see claims like this getting granted in the super techno garage door opener space and it really makes you appreciate the relatively robust and deeply thoughtful exam that we know occurs in the “logic on a computer” space.


    But sure: “not enough patents” is the biggest problem facing Rich Whitey, society’s most oppressed demographic ever.

  11. 2

    The right result for the right reasons.

    Seems like the claims could just as easily have been summarily tanked under 112 (at least) for lack of written description support What a total pile of cr-ap. Everyone involved with the prosecution and examination should be ashamed of themselves.

    1. 2.1

      How in heck did this trash not get 103’d during exam? It’s painfully obvious even if the infrared silliness is included in the claim.

    2. 2.2

      “Seems like the claims could just as easily have been summarily tanked under 112 (at least) for lack of written description support”

      Nope. The claim is original to this application. There’s no written description issue.

      1. 2.2.1

        MPEP §2163.I: “[A] satisfactory description may be found in originally-filed claims or any other portion of the originally-filed specification… However, that does not mean that all originally-filed claims have adequate written support. The specification must still be examined to assess whether an originally-filed claim has adequate written support,” (emphases added).


          I didn’t mean to imply there was no issue per se, but that the particular claim in the article was fine because it was an original claim.

          As I understood from the post*, the parent disclosed (System A) and the child claimed (System A minus Infrared Detector). Where the system is a relatively simple combination (see claim 1 of the post), there is likely no WD issue for such a child as of it’s own priority date. In this case, it’s very hard to say the applicant didn’t contemplate their previous garage door opener but without an infrared detector doing anything when they filed the child. That’s borderline silly. And don’t forget that there’s a presumption against that argument (MPEP2163.I.A).

          *This understanding appears now to have been incorrect as the child qctually differs from the parent by more than just the subtraction of the detrctor and its functionality.

      2. 2.2.2

        The claim may be original to this application, but this application is a continuation, and you would need to look at the parent application, including its original claims, to conclude that there is no written description issue.


          Exactly. An “original” claim first presented in a continuation can’t satisfy written description if the parent disclosure itself doesn’t support the claim.


          In the context of claims being “tanked” there is no “issue”. Claims are not rejected or invalidated for priority issues. They simply get treated without priority.


            I disagree, new claims, like claims amendment, must be supported by the original document, otherwise they are rejected under 112(a).


              I don’t know what to tell you, man.

              “If the originally filed disclosure does not provide support for each claim limitation, or if an element which applicant describes as essential or critical is not claimed, a new or amended claim must be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as lacking adequate written description, or in the case of a priority or benefit claim under 35 U.S.C. 119, 120, 365, or 386, the priority or benefit claim must be denied.

              You can also think about it like this: A CIP can have perfectly valid claims which are not supported by the priority document. So should the validity of a claim hinge on the filing type (con vs. CIP)?


                The response to you last question is yes, a CIP can have a valid claim not supported by the priority document, a CON cannot. See MPEP 201.07 and 201.08.

                I have not yet seen a court decision where the claim of a continuation was found not supported by the parent application and not found invalid under 112(a).

                1. Can you point me to a court decision where a con claim was invalidated under 112a for insufficient priority support?

                2. First let me say thank you for trying to resolve the coversation despite it being so far down the front page.

                  Second, I think I see why you believe this case supports you, but I still think you’re wrong. I assume you’re relying on:

                  conclude that claim 8 of the ’655 patent and claim 4 of the
                  ’339 patent lack sufficient written description in the 2009
                  Application, meaning they cannot claim priority from the
                  2009 Application and are therefore invalid

                  Lots of claims lack priority to 2009 and yet are valid. The reason why lack of priority is fatal to these claims is because of intervening art.

                  “On summary judgment, the District Court determined
                  that the Asserted Claims could not claim priority from the
                  2009 Application because they were broader than the
                  invention disclosed in the 2009 Application, such that
                  they did not meet the written description requirement
                  pursuant to 35 U.S.C. § 112(a) (2012). … Accordingly,
                  the District Court invalidated all but one of the Asserted
                  Claims as anticipated based on D Three’s stipulation, and
                  found the remaining claim (claim 6 of the ’655 patent)
                  asserted against the purportedly-withdrawn EcoFasten’s
                  Tile Flashing System anticipated based on other prior art
                  that post-dated the 2009 Application”

                  The mechanism of invalidation is anticipation rather than lack of written description. Thus I see this decision actually affirming the invalidity mechanism I asserted above.

                  I suspect I will have failed to persuade you in this. I sincerely suggest that, assuming you’re a practicioner or an examiner, you broach this subject with someone in the field who you respect. Best of luck.

                3. My post regarding the D Three decision seems to have been caught in a filter.

                  I think that decision actually supports my position as the DC invalidated the claims because of anticipatory intervening art (i.e., invalidated under 102 not 112(a).

                  I realize I probably can’t persuade you at this point/medium, and I suggest you discuss the issue with someone whose patent law opinion you trust. Good luck.

                4. Actually, none of the references I found are on point.
                  The D Three enterprise decision is about priority to a provisional. “Conversion” applications are not continuations of their provisional. Now, the decision cites 35 usc 120 for the right of priority (to a provisional), but for priority to a provisional, it should have cited 35 usc 119(e). The error is harmless because the sections are similar.
                  The best argument for your position is that 35 usc 120 does not distinguish continuations from continuations-in-part. So I guess, a continuation could be treated the same way as a continuation-in-part, for which a claim present on the day of filing is part of the application, and thus will not likely have fail the written description requirement.
                  The best argument for my position in MPEP 201, which forbids added matter in continuations and allows it in continuations-in-part. Of course, courts are not bound by the MPEP.

                5. Check out MPEP211.05 and the associated form paragraph 2.10.01.

                  “Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: [1].”

                  Note that this isn’t a rejection.

                6. I suggest you read all MPEP 211.05, in particular the passage just above the portion you cite. Maybe that will make you change your position.

                7. FP 2.10 (the passage just above) describes the standard for whether there is an issue with priority as involving 112(a), but does not suggest this results in a 112(a) rejection. Elsewhere 211.05 repeatedly focuses on whether or not the claims are entitled to a benefit. It does not appear to discuss whether they are valid under 112 or should be rejected under 112. The sole reference to validity on 211.05 is about 102 validity where a priority document failed to support the patent.

                  The procedure in the MPEP is clear: explain the lack of support in the priority documents, and require an appropriate benefit claim modification. The mpep does not require or suggest a 112(a) rejection when a CON’s parent fails to provide support.

  12. 1

    I’m curious if any of the USITC five [or six] commissioners overruling the ALJ decision and then getting reversed here had any patent law experience before becoming ITC commissioners?

    1. 1.1

      Are their bios online anywhere? Maybe the ITC website or LinkedIn?

      Patent law experience isn’t required for government employees, at least from what I can tell from the backgrounds of most of the Fed. Cir. judges.

    2. 1.2

      USITC Experience in Patent Law: I believe that none of the five had any patent law experience prior to becoming commissioners other than working on trade deals that included IP provisions. Prof. Scott Kieff was a commissioner with substantial experience but he stepped-down in 2017.

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