U.S. cases rarely delve into international patent law issues. Rather, US courts have largely refused to allow parallel proceedings or filings in foreign jurisdictions to impact their decision-making at home.
IBSA Institut Biochimique, v. Teva Pharmaceuticals offers an interesting perspective on this. The patent at issue was ISBA’s U.S. Patent No. 7,723,390 that claimed priority back to an Italian patent application (MI2001A1401). The patent here is directed to a “soft gel capsule formulation containing the active ingredient levothyroxine sodium.”
In its decision, the Federal Circuit affirmed a lower-court ruling that the claims were indefinite. In particular, the claims require that the gel capsule contain “a liquid or half-liquid.” But, nobody knew the meaning of the term “half-liquid.” Although the term was used in the specification, it was not defined in the specification. And, the patentee could find no textbook or scientific journal that used the term “half liquid.”
IBSA had argued that the term should be interpreted as “semi-liquid — having a thick consistency between solid and liquid.” To support that conclusion, the patentee pointed to the Italian Application, which used the term “semiliquido” in the exact same places where the ‘390 patent uses “half-liquid.” A certified translation during the litigation translated the term “semiliquido” as “semi-liquid.” The suggestion here is that PHOSITA would understand the claim term “half-liquid” to be synonymous with “semi-liquid.”
In its claim construction, the district court gave no weight to the italian priority filing or its certified translation — concluding instead that the change in terminology was intentional. On appeal, the Federal Circuit affirmed that finding and also the indefiniteness conclusion.
Now IBSA has petitioned to the U.S. Supreme Court, raising the issues as follows:
Patents are unique: the rights they confer are strictly territorial in nature, yet there exists an agreed-upon framework among the vast majority of countries for efficiently securing patent rights. This mutual arrangement permits both U.S. and foreign inventors to seek patent protection first in their home country and then, if they choose, to seek similar rights abroad. In both cases, the inventor can claim “priority” to their domestic application, a critical step for warding off the potentially preclusive effects of “prior art” that can bar patenting.
This efficient system would suffer, if not disappear, without international agreements like the Agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”), which establishes a baseline for intellectual property protections among its 140 signatory countries. Amongst other protections, the TRIPS Agreement demands that foreign inventors, and foreign priority applications, be treated like their domestic counterparts. This “national treatment” is a critical protection for U.S. inventors abroad, and for the many foreign inventors who seek to pursue their patent rights in the United States. But the courts below rejected these treaty obligations by choosing to give no weight to a foreign patent application, resulting in a finding of indefiniteness.
Question:Whether, pursuant to the United States’ obligations under the TRIPS Agreement, codified at 19 U.S.C. § 3511, a court construing the claims of a U.S. patent may give no weight to a foreign priority patent application, despite its submission to the U.S. Patent & Trademark Office during prosecution of the patent-in-question, because it is written in a foreign language and exhibits minor differences from the U.S. patent resulting from a translator’s judgment.
[Petition for Writ of Certiorari] [Federal Circuit’s 2020 Decision]
Just curious, after cert is denied and despite the Fed Cir invalidity ruling, could
“half-liquid” be corrected to “semi-liquid” in a reissue and the patent holder enforce the reissue against future infringers for the remaining about four years of term?
There’s another big problem with this case that hasn’t been really addressed. As noted in the Fed Cir decision, during prosecution a dependent claim was proposed that used the term “semi-liquid”, not “half-liquid.” It is well established that, absence strong evidence to the contrary, different terms having different meanings. There is no discussion (at least that I have seen) that any arguments were made during prosecution that equated these two terms. Without that, they are properly interpreted to have a different meaning.
This is not a Paris Convention priority issue, it is a translation issue.
The assertion is not that the patent claims something that was not disclosed in the priority application, and that there was intervening prior art that as a result defeats the US claims. The assertion is that the US claims use a term that is not defined in the specification, and thus are indefinite under US law. The patentee urged the court to look to the priority document to try to understand the English term in question, and the court chose not to do so. One can agree or disagree with the court on that, but it does not amount to abrogating obligations under the Paris Convention. (I see that the US patent did not incorporate the Italian priority application by reference; I don’t know if this would have saved the day, but it surely would not have hurt.)
As to the issue of translations, in 2019 Maria Eliseeva wrote an article about hidden problems with patent translations, which can be accessed here: link to iliplaw.com
“I see that the US patent did not incorporate the Italian priority application by reference;”
Thank you for doing the leg work to my point below.
This seems a lot like what happened is that somebody cut corners on the underlying patent translation — most likely by hiring one of those omnipresent Big Agencies that cover their substantial advertising budgets by underpaying their translators. “Half liquid” is exactly the kind of half-assed mistranslation that these agencies crank out. (And then nobody was paying sufficient attention to catch it until it was too late.)
Whatever the underlying story is, the result seems correct. As they say, lie down with dogs, get up with fleas. Or in this case: neglect the translation process, get a negligent translation. A POSA can’t be assumed to be fluent in Italian, and the courts aren’t and shouldn’t be in the business of bailing out companies from the consequences of their own outsourcing practices.
But at any rate, it’s nice to see that in the end, at least one real translator (probably) got paid.
“A POSA can’t be assumed to be fluent in Italian”
That is not correct.
Practice survey:
As a US-based practitioner, when submitting foreign language translations,
a) do you leave the translation up to the local agent (doing it themselves or letting the local agent engage a translation service), or
b)do you engage a translation service company that translate your case across all the languages?
Regarding the instant case, I am going to assume this is a bad translation, not a lack of support error. I haven’t taken the time to read the decision or patents. So, assuming “Semiliquido” should have been “gel” or “semi-liquid”, I am wondering how this “semiliquido” word was translated into languages other than English, i.e., German, French and Spanish. In those languages, does the German word, when translated back to English, mean “semi-liquid” or “gel?”
In a polyglot world, can the Paris Convention deliver justice , and fair treatment, when no translation can do 100% justice to the original. Surely yes. But only when courts are intent on deciding cases justly.
Here, given the original “semiliquido”, how shall the translator navigate between Scylla and Charybdis, neither adding to the meaning nor depriving it of something? I recall a Paper by a specialist patent translator, back at the dawn of the EPO system in 1978, warning of “Patent Suicide by Translation”. In our real world, translation is never 100% 1:1.
Those of us with English as their first language do not routinely prepare translations for PTO filing. We have no appreciation, how difficult it is. Many suppose that there is an exact translation for every sentence. In fact, that is hardly ever the case.
How about “Die sensible Dame mit dem braven Hund” This does not mean “The sensible lady with the brave dog”. Rather, it means “The sensitive lady with the well-behaved dog”.
Frankly, to destroy a patent simply because one is at a loss how to construe (in context) the word “half-liquid” strikes me as unhelpful, to say the least. Oh and BTW, does the fault lie at the level of the Court of Appeal? I myself would lay the blame at the doormat of the court of first instance.
“But only when courts are intent on deciding cases justly.”
NOT just in a polyglot situation — isn’t that the rub (for most all US patent issues under discussion on this blog?)
We agree!!
Thanks. Would you like to explore why you might agree here?
Yes $$$
Nice. What is the point that you wish to explore?
Perhaps we should explore people who say mean things to you.
Meh, I would rather explore patent law concepts on a patent law blog.
Well, go do that then.
Or retort with some mindless ad hominem.
In case you have missed my presentation of objective facts, I already do as you may want me to do.
You, on the other hand, still insist on a 100% Obsess10n / 0 % on point record.
Even IF we expand the dataset beyond the present year and go back all the way to when you first anointed yourself this “Catcher in the Rye,” your “to or about me” rate is well over 97%.
No one – ever – has more single’minded’ attention from another in the entire history of this blog.
How do you feel about these facts?
So now you are pounding the table and making up “objective facts,” Snowflake. Did you not crow about how much you like to “post” about anything and everything? Were you lying?
Then? Or now?
How is your child ga y p0r no addiction coming along.
Have you stopped
l
y
i
n
g
about it?
(this is the response to your game being unchecked)
Like it? You do seem to, given as you have refused to stop the game-playing.
Cyberstalking, Snowflake? You really should no try to use legal terms when you don’t know what they mean. It makes you look (more) foolish.
Y
A
W
N
yes cyber stalking.
And yes, it fits your obsess10n with me.
Well well. The problem expression “half-liquid” was a prosecution amendment at both the USPTO and the EPO, where the language of the proceedings was also English. At the EPO it attracted no objection under any provision of the EPC (which is impressive because it doesn’t happen very often). Nevertheless, in the USA, it brought down the patent.
It all goes to show how different two English language jurisdictions can be, on whether “half-liquid” is, to the skilled reader of this specification, clear enough or definite enough to pass muster. Perhaps courts and litigators have more problems with such terminology than do skilled persons or skilled PTO Examiners.
… or it is just an indicator of the anti-patent tendencies in the fire-hosed CAFC.
By the way, the unnatural aversion to listing the panel members continues.
What’s up with that?
Before PROST, Chief Judge, REYNA and HUGHES, Circuit Judges.
PROST, Chief Judge.
Tell me, anon, how much room does the appeal court have, to reverse the lower court on indefiniteness? Is not the criticism here more properly directed at the court of first instance (and those representing the patent owner before that court)? Is it really fair to pile all the blame on the appeal panel here?
Let me answer with a part of your own statement:
“At the EPO it attracted no objection under any provision of the EPC ”
What point were you driving at?
What point? Why, anon, one that you are rather fond of, namely, whether it is proper to assess the disclosure content of a document with “a mind willing to understand” or with the mind of a lawyer, intent on finding things to misunderstand.
Let’s take the expression “half-liquid” for example. In the context of the entire disclosure content of the document in which it appears, is it really fair to declare it to be nothing better than ineluctably ambiguous? The CAFC (to my surprise and disappointment) thought so, the more “real world” and technically-oriented multi-lingual EPO not.
Shades of Chef America. Once again. Lawyers playing games with words, rather than trying to do justice for inventors.
Your use of the term “lawyers” and the fact that you don’t seem to “get” my reply exposes a bit of duplicity in your question of post 3.1.1 belies the evidence that while you appear to want to disagree with my post at 3.1, you are actually agreeing with me (it is not what either side’s advocate proposes that matters in the end, and to which blame will attach).
Or does your ‘penchant for politeness’ cloud that “desire to understand?”
My question at 3.1.1 was on the issue of how much discretion a court of appeal is given, to reverse the finding at first instance. When the decision of the court of appeal is one you find unsatisfactory, is it fair of you to blame the judges of the court of appeal? Perhaps any blame is more fairly attributed to the court of first instance? That was all.
And yet again – you miss the point as to where in patent law things like patent profanity and the mess of jurisprudence on eligibility come from.
“too polite by half” is not a phrase – but it should be.
Reply caught in filter
Of course Dennis doesn’t mention the panel members, because it’s unnecessary, we all know that CAFC judges are interchangeable. There’s no chance this case would have turned out differently if it had been heard by judges Newman, Moore and O’Malley.
/sarcasm off/
It’s a most odd tendency — as at least the two of us have noted this on a regular basis.
… and my chances of my post being rescued from the filter diminishes…
now released
This seems like a good argument, assuming the cert petition argument that: “It is undisputed that “semiliquido” may be translated as “semi-liquid,” which is a commonly used and well understood term of art” is correct for a POSITA, and is supported in the record, and in the spec. Is the spec example of a “gel” a “semi-liquid?” [Someone with a chemical dictionary handy?]
Paul,
I think that an interesting thought experiment is: if this application was simply originally filed in English, without any Italian priority application, would it have been indefinite based on use of “half-liquid”?
If this is the case (which it seems to be), then I think the tough part for the Petitioner is that, although they understandably want to characterize the issue as “minor differences from the U.S. patent resulting from a translator’s judgment,” (Pet. i), why would the requirement for U.S. patent counsel to exercise its own judgment to ensure an application complies with 35 USC 112 be any less simply because it started work from a foreign application?
While I am sympathetic to the situation where “an overly literal translation omitted a term having clear meaning to those in the field (‘semi-liquid’) and, instead inserted a comparatively obscure term (‘half-liquid’) in its place,” Pet. at 23, as I see how this could happen to counsel who are not given sufficient time to review a translation of a foreign application and prepare an application based thereon, the fact that the Petitioner characterizes the issue as an “obvious mistranslation” seems to beg the question of why this term was used so extensively in the claims as filed without this “obvious mistranslation” being caught. Pet. at 23. Indeed, the original application as filed actually did use the term “semi-liquid” in one dependent claim. See claim 14 of the U.S. application as filed.
Further, as the Fed. Cir. noted, apparently, “during prosecution, the applicant proposed a dependent claim using the term ‘semi-liquid[,] … [which] depended on an independent claim that used the term ‘half-liquid.'” Slip op. at 3-4.
It is also worth nothing that this was a U.S. patent application which was more than a direct copy of the Italian priority application because it included a new embodiment. See Pet. at 23 (“Other than the addition of the fourth embodiment, the substance of the Italian Application and U.S. Application are nearly identical.”)
J.D., re: “I see how this could happen to counsel who are not given sufficient time to review a translation of a foreign application and prepare an application based thereon, ..”
? I have never even heard of a foreign company willing to pay their U.S. firm for that kind of word for word time consuming activity for filing a U.S. equivalent application, even if the firm’s attorneys had that bilingual expertise? In fact I have been informed on several occasions that a shockingly high percentage of foreign origin applications are filed virtually “as is” in the U.S. and not straightened out even as to more appropriate U.S. claiming until after a first office action. Sometimes even on direct orders to do just that from the foreign applicant, to “save money.” [Leaving examiners to struggle with bad translations.] [I’m not condoning the practice, just presenting business realities.]
But one can agree that it is reasonable to expect a U.S. attorney handling a chemical application not to use in its claims a claim term that is inherently ambiguous in that art [if that ambiguity is really clear in advance], irrespective of the case origin?
BTW, the JDSupra comment on the D.C. decision below said a translation problem could have been avoided by filing the Italian language application in the U.S. and filing its English translation later, rather than filing only the English translation. Is that correct?
I have not bothered to check (and answer my own question), but how was the earlier Italian item not incorporated by reference?
If done so, Paul, would that not have given you your answer? Or to say it in a different way, is the LACK of so doing thus (incorporating the original so as TO HAVE that original – with that original’s vernacular) causing the issue here?
Is the question, “the right question?”
That is, does not the court’s decision below stating that a word changed from an ‘official’ translation control the filing – regardless of any desired and asserted priority effect?
Is it really the case that there was a STRICT “we are giving NO credit whatsoever” to the priority application, OR – and this is what negates the question presented – did the court GIVE credit to the priority application in so far as THAT priority application is credited for what IT has, and the DIFFERENT contents of the US application is given credit for what IT has?
Should not the question instead reflect any ‘incorporation by reference’ such that the US application may be said to contain BOTH the changed word, and the original?
I believe that there was no express incorporation by reference and 37 CFR 1.57(b) does not apply because the application was filed before 2004.
Ah – thanks for that detail (too bad I added another comment prior to scrolling down this far).
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