by Dennis Crouch
The Federal Circuit recently issued a decision in Maxell, Ltd. v. Amperex Technology Limited, No. 2023-1194 (Fed. Cir. Mar. 6, 2024), reversing Judge Alan Albright’s finding that certain claims of Maxell’s patent covering rechargeable lithium-ion battery indefinite under 35 U.S.C. § 112, ¶ 2 (112(b)). U.S. Patent No. 9,077,035.
The case provides important cover for patent prosecutors who inelegantly add narrowed limitations from the dependent claims into the independent claims without rewriting or deleting the corresponding broader element descriptions already there.
The key issue on appeal was whether two limitations in claim 1 regarding the transition metal element M1 contradicted each other, rendering the claim indefinite. The first limitation, labeled [c] by the court, is a Markush group requiring requiring that “M1 represents at least one transition metal element selected from Co, Ni and Mn.” The second limitation, [f], requires that “the content of Co in the transition metal M1 of the formulae (1) and (2) is from 30% by mole to 100% by mole.”
The district court held that these two limitations were contradictory because limitation [c] suggested that cobalt was optional, while limitation [f] required cobalt to be present at 30-100% by mole. Maxell, Ltd. v. Amperex Tech. Ltd., No. 21-cv-00347, 2022 WL 16858824 (W.D. Tex. Nov. 10, 2022). On this basis, the district court found claim 1 and its dependent claims indefinite.
On appeal, the Federal Circuit reversed, although the claim is inelegant, “there is no contradiction and therefore no indefiniteness.” The court reasoned that limitation [c] states one requirement that the transition metal element must contain cobalt, nickel, or manganese, while limitation [f] adds a second requirement that the transition metal must contain 30-100% cobalt by mole. “It is perfectly possible for a transition metal element to meet both requirements,” and therefore, “the two limitations are not contradictory.”
The Federal Circuit rejected the district court’s characterization of limitation [c] as providing “options” that were then taken away by limitation [f]. The court explained that “[c]laim limitations do not grant options. They state requirements—conditions that must be met for a product or process (as the case may be) to come within the claim’s protected zone of exclusivity.” If it is possible to meet both requirements, as is the case here, there is no contradiction.
Although the two limitations here were within a single claim, the court found support for its conclusion in the common practice of using dependent claims to add narrowing limitations to independent claims. Citing its precedent in Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350 (Fed. Cir. 2016), the court noted that “[a] dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid.” But here, limitation [f] merely narrows limitation [c] and does not contradict it. In fact, in this case, the cobalt concentration limitation was added during prosecution in order to overcome the prior art.
But the accused infringer argued that having a narrowing limitation in a dependent claim is different. At oral argument, David Bloch argued as follows:
The problem is that they claim both the broad range and the narrow range in the same claim. And that’s something even the MPEP section 2173.05(c) frowns upon. It says use of a narrow numerical range within a broader range in the same claim may render the claim indefinite precisely for the reason we have here.
Oral arguments at 17:05. The MPEP does not discuss the exact situation here, but does focus on claiming a narrower range within a broader range in the same claim.
Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible. . . . In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.
MPEP 2175.05(c). The Federal Circuit did not address the MPEP issue, but my reading does not create a problem. The MPEP does not prohibit a single claim defining something both broadly and narrowly, so long as it is clear that the narrow definition controls. In the present case, the court is following the same approach.
The Federal Circuit was unpersuaded by Amperex’s argument that a skilled artisan would be uncertain about the scope of M1 because the claim used different language to define the M2 term. Claim 1 defines the M2 term as follows: “M2 represents Mg and at least one metal element selected from the group consisting of Ti, Zr, Ge, Nb, Al and Sn.” This language clearly requires the presence of magnesium (Mg) and at least one additional metal from the specified group. In contrast, the M1 term is defined as “M1 represents at least one transition metal element selected from Co, Ni and Mn” and then subsequently requiring a non-zero concentration of Co. Amperex argued that a skilled artisan would be uncertain about the scope of M1 because if the patentee intended to require cobalt, it would have used language similar to the M2 term. However, the Federal Circuit found this argument unpersuasive because the M1 language is clear on its face and supported by the specification and prosecution history.
Reversed and remanded.
I think the holding in this case is correct, but the statement of “No contradiction = No indefiniteness” is clearly wrong. The Supreme Court set down a standard of reasonable certainty. “No contradiction” is the old, discarded standard of “insolubly ambiguous,” and frankly the statement of “there is no contradiction and therefore no indefiniteness” is in response to the particular argument made in this case, and is not a general statement applicable to other cases imo. This case is not a great case to highlight.
As an aside – Claim language I occasionally see is “X, optionally sub-X.” That language is, on it’s face, discernable. Optional means optional, so sub-X is not a limitation. The problem with that is that the purpose of a claim is to include limitations, not non-limitations, and the inclusion of the non-limiting language adds nothing. If the inclusion of the language adds nothing, I have difficulty concluding it is reasonable to leave it in. If Applicant wants to a solid limitation: dependent claims exist. If Applicant doesn’t want a solid limitation, “optionally…” does nothing but possibly confuse the claim scope for no benefit, and therefore does not inform the claim scope with reasonable certainty. I occasionally get pushback on 112b here, so I often object to it as prolix, which makes it a lot harder to get around. Regardless, it is something that shouldn’t be done, and I fear the notion that there must be a contradiction before it rises to indefiniteness is a negative in prosecution. Fortunately, the office will not ignore the MPEP like the court did.
The statement, “No contradiction = No indefiniteness” is clearly correct, and the the old standard of insolubly ambiguous has nothing to do with it.
So, can M1 be 100% Co?
Patent claims are almost always full of redundancies, which is what the defendant complained about here. “A device having an optical sensor… wherein the optical sensor is a camera”. There’s no contradiction. Nobody complains that this claim is both broad and narrow and therefore non compliant with 112. Silly argument, and a terrible judgment in the first instance.
Such a silly interpretation would require claims with narrower limitations to be rejected under 112(b) when they are first presented as dependent claims. How could it be definite when presented as an original dependent claim but become indefinite when just incorporated into the base claim from which it depended?
It theoretically can happen on rare occasion, due to the presence of another depending claim (or even more rare due to a similar but slightly different independent) due to claim differentiation etc. Tho that may not have been present in this case. I have seen that situation arise like once in 18 years.
How many rejections under Section 112(d) (fourth paragraph) have you seen or made in 18 years?
Maybe 9ish? Tho I actually gave people a pass on it one time, literally because the trainers said that they wanted us to so long as they use magical drafting language, and they called it a clear error lolol.
Sorry that’s how many I myself have made. I havent’ seen many in other people’s actions but I’m informed that people in my AU do make them. Also note that for the first 6 or so years of those 18 or so years we were not enforcing 112 4ths.
112(d) rejections were more or less rare than 102(f)? or 135(b)?
” than 102(f)? or 135(b)?”
I’ve never seen such a situation personally my own self. Even from anyone in any of my AUs.
why exactly can i not ask you a question about patent examining?
apparently i’m on double secret probation so i’ll try again.
how many 102(f) and how many 135 (b) rejections?
About 1 a year sounds about right
Let’s not forget that a US Patent Examiner approved the claim language.
and we all know that Examiners never make mistakes.
I see a very different message here, DVan.
Lot’s of people want to get very emotional very quickly about “Bad Patents.”
The focus should instead be on Bad Examination.
This necessarily includes both Type I and Type II errors.
“Lot’s of people want to get very emotional very quickly about ‘Bad Patents.’”
While those in the know — including innovators — properly and correctly do so about . . . bad courts . . . bad legislators . . . and bad infringers (there are of course no good infringers).
Pro Say – by definition, there is indeed no such thing as a good infringer.
Like trespass, infringement – direct – requires no state of mind.
The focus should instead be on Bad Examination. This necessarily includes both Type I and Type II errors.
Wow I agree with anon.
The irony here is that so very many patent owners, especially PAEs, have filed their patent suits in the Waco Eastern Texas District court to get former patent litigator Judge Alan Albright, on the apparent assumption that he would be more likely rule in their favor than for defendants. This is not his first decision for defendants, but it is one in which his decision was stronger for the defendant than the Federal Circuit in its appeal reversal!
[The more interesting question, however, is what is happening to the huge number of such filed suits that do not get a trial and appeal.]
Judge Alsup would have gotten this right in the first instance. 😉
I am not a litigator, but…my understanding is that PAE’s want Judge Albright because he enforces a rocket docket (not because he’s substantively biased in their favor). PAE’s strongly value the threat of an injunction, as that threat forces the other side to negotiate in good faith.
PAE’s may well get more of the cash case settlements they want sooner in E.D.TX Waco if they cannot get pre-trial case disposals or delays – I have not seen any statistics. But PAE’s can rarely if ever obtain patent infringement injunctions – they have no product or market being competitively harmed needing an injunction – ever since The Sup. Ct decision in eBay v. MercExchange (2006) (9-0) requiring normal injunction standards.
[Also, I believe the term “rocket docket” more typically means a court that moves cases rapidly to actual trials, and there have not been that many there.]
I expect no less from the IPR cheerleader…
“normal injunction standards“…?
That would be false – normal is not the same given the nature of the right involved (the ‘atom bomb’ of equitable remedy is just not the same as it would be in other contexts).
“no product or market being competitively harmed”
That would be false – as the right transgressed is NOT a product, but instead is the negative right of exclusion.
You know this Paul – why the misinformation?
Most attorneys and judges prefer to read and follow the controlling views of the 9 Supreme Court eBay judges vis a vis personal opinions on blogs or the prior CAFC views so thoroughly overruled in that decision.
Except when they understand the actual law.
Gee, you do seem to have a problem with that, but I suppose that you would have been ok with Dred Scott.
Own that.
Billy going woke!
Man, what a schlub.
…and how exactly is that “going woke?”
Anti-lemming is not the same as Woke.
Then again, you suffer (formidably) from your One-Bucket syndrome…
…and how exactly is that “going woke?”
You’ve been asked in the past as to what your definition of “woke” happens to be. I’ve asked you that question since that is one of your favorite terms to describe people with whom you disagree.
The reasons you were asked for YOUR definition of “woke” is that there are many definitions of “woke” out there. There is the original definition of “woke” as it applied to racial issues (e.g., “alert to racial prejudice and discrimination”). However, that term was hijacked by the right to mean something different. Typically, the right uses the word “woke” to mean discussing racial/gender issues in a critical manner. The term “woke” is often used (again, by the right) in conjunction with critical race theory, the teaching of which has been banned in several states. Florida, for example, passed the “Stop Wrongs to Our Kids and Employees Action” or “Stop WOKE Act.”
This is from an article on Politico regarding this act:
The state tweaked its history curriculum to match the so-called Stop WOKE law that takes aim at lessons over issues like “white privilege” by creating new protections for students and workers, including that a person should not be instructed to “feel guilt, anguish, or any other form of psychological distress” due to their race, color, sex or national origin.
For example, talking about the Dred Scott decision could cause certain (white) individuals guilt about their ancestors’ mistreatment of enslaved individuals, and consequently, such a discussion could be considered “woke” by the State of Florida and against state law.
You have asked.
I have answered.
You happen to become disgruntled with the answer because you happen to not like Dr. Lyndsay – even going so far as to dredge up known falsehoods in an attempt to smear him.
Perhaps now, you might want to chase down Malcolm, as he was the one that first used it here.
Oh that’s right, for some reason, you seem unable (or unwilling) to do so – and not just on non-patent law questions, but I see that you did not provide reasoning “up to your level” on the printed matter doctrine or its critical exceptions as I invited you to .
Does this mean that you (gasp) think that my prior explanations are actually sufficient?
Well, why didn’t you say so?
I have answered.
You have deflected. Seriously, it’s not that hard, all you have to do is write: “I believe ‘woke’ means [fill in the blank with what you believe].” I know you won’t do it because that means you’ll have something on the record that we can use against you in the future.
because you happen to not like Dr. Lyndsay – even going so far as to dredge up known falsehoods in an attempt to smear him.
Did he or did he not speak at America Fest with the likes of known centrists such as Steve Banon, DT Jr., Kimbery Guilfoyle, MTG, Matt Gaetz, Mike Lindell, Roger Stone, Charlie Kirk, and Tucker Carlson? Would you like to point out these so-called “known falsehoods”? I assume you will not identify these alleged known falsehoods as you like to lead with accusations and not facts.
Perhaps now, you might want to chase down Malcolm, as he was the one that first used it here.
You asked the question. I answered. MM didn’t ask the question, and I generally avoid interacting with him — so there is no need for me to “chase down Malcolm.” And regardless of who used the expression first, you use it the most … by a wide margin, which is why I asked you to define it some time ago.
I see that you did not provide reasoning “up to your level” on the printed matter doctrine or its critical exceptions as I invited you to.
Huh? That came out of left field. And what relevance is my thoughts on the printed matter doctrine relevant to this conversation? Aside from you attempting to deflect again?
Regardless, I explained to you why your comment as to “Dred Scott” could be considered “woke.” You probably don’t know this, but there is considerable debate going on in Florida as to what things can and cannot be taught in school based upon the Stop WOKE Act.
FYI — the 5th Circuit Court of Appeals very recently slammed down portions of that Act as it pertains to employers as being a violation of the 1st Amendment.
There is no deflection in the answer.
I know that you do like that answer – but that is entirely besides the point.
That you want to paint this as “right wing” is just more nonsense.
Showing a panel does not prove anything.
Other than perhaps the Overton Window attempt to paint anything NOT Sprint Left as Right.
And yes – you should ask Malcolm as I have answered you while he has not. That is directly on point here.
You “don’t have to do anything – but what you do choose to do speaks loudly.
As for the Printed Matter Doctrine – also not a deflection: link to patentlyo.com
Again – you can freely choose to do as you please – but you are not free from what this reveals about you.
“Regardless, I explained to you why your comment as to “Dred Scott” could be considered “woke.” ”
In your dreams maybe – you were in too much of a hurry to disagree with me to do what you claim to have done.
Your assertion that my view is the Florida view is wrong on many levels.
Your statement of:
“For example, talking about the Dred Scott decision could cause certain (white) individuals guilt about their ancestors’ mistreatment of enslaved individuals, and consequently, such a discussion could be considered “woke” by the State of Florida and against state law.”
Has ZERO to do with how I used the term in describing Paul’s penchant for blind obedience to Supreme Court mumbo jumbo – and his absolute refusal to even engage on the merits of any legal discussion involving the Supreme Court.
Stop.
Think.
Seems to me from all the above that Billy is a wee bit woke, but just not enough to admit it in public.
What “seems to you” is (yet again) an error on your part.
Say “La Vee.”
Showing a panel does not prove anything.
Not identifying the alleged falsehoods shows nothing. And as for Lyndsay, bird’s of a feather do flock together. Do you seriously think they would let a “centrist” speak at that conference?
I know that you do like that answer – but that is entirely besides the point.
I don’t know your answer. That is why I ask. Seriously, what is wrong with you?
That you want to paint this as “right wing” is just more nonsense.
Don’t get out much, do you?
Seeing as Wt as deigned to appear on another thread, perhaps he is busy researching and reminding himself of the principles involved in the Printed Matter Doctrine so as to be able to pen a response to his own desired level of thoroughness.
? Did I appear on that thread? I don’t see my name anywhere. Why do you think I read that ambiguous comment on a thread I didn’t appear on? And again, why is that relevant here? Unlike you, I don’t scan these threads looking for mentions of my name. Not my thing.
I’ve identified your past falsehoods re Lyndsay, so you are wrong there.
As far as who they may allow, I don’t know – but importantly, neither do you.
There’s a MUCH better spectrum with stick figures out there: it is tied directly to the Sprint Left phenomenon
Your claim of not knowing the answer is quite frankly B S.
I get our just fine.
I figured you read most all comments – it would not take a “search for my name” effort. But now that you are aware, let’s see you pen a response to Malcolm on the Written Matter Doctrine (with its exceptions) that rises to your level of snuff.
Goodness knows – you whined about what I had to say about it in a rather dismissive tone. Since you are going to whine, it would be highly hypocritical of you not to actually take up this challenge. Show us how it is done, and all.
I’ve identified your past falsehoods re Lyndsay, so you are wrong there.
LOL. I know that isn’t true because you don’t do facts. You do accusations. Seriously, you are a legend in your own mind.
As far as who they may allow, I don’t know – but importantly, neither do you.
Just look at the Turning Point website (founded by Charlie Kirk). The front page of the website has a little highlight reel. The start of the reel describes the 2023 “AmericaFest” as “The Biggest Conservative Event Ever.” It was chockful of the biggest rightwing scumb ags in this country. Lyndsay wasn’t invited there by mistake. Your North Star was invited because he gives them the red meat they crave. BTW — he spoke at the conference in 2022 and 2023. One time could be a mistake. Twice is intentional.
I figured you read most all comments
You figured wrong. Many of the articles don’t interest me. That particular article, while of some interest, was just a rehashing of what was previously discussed just a few days before. I scanned the article and skipped the contents.
let’s see you pen a response to Malcolm on the Written Matter Doctrine (with its exceptions) that rises to your level of snuff
You cannot even bother to give me your definition of woke, yet you ask me to give MM an unpaid legal lesson (BTW – it is called the Printed Matter Doctrine – not the Written Matter Doctrine – try to use the correct terminology). And BTW, the Printed Matter Doctrine involves an exception to the general rule that all limitations are given patentable weight. See In re Lowry; In re Gulack. I believe you are mixing up what is the exception and what is the rule.
Goodness knows – you whined about what I had to say about it in a rather dismissive tone
The projection is strong in you. You whine all the time about everything and everybody.
You’ve been hanging out with Malcolm too much – seeing as you are the one doing accusing AND you are wrong in that I have given (factual) answers AND you did try to impugn Dr. Lyndsay.
This is just not going well for you.
So, you did miss – and I can accept your reason for missing.
But is that really going to be your level of success explanation for Malcolm?
That’s plain awful.
And yes – it was YOU that was whining about explanations on these pages. Do you need me to find that whine? Would you then be satisfied (doubtful, given your bad habits from hanging with Malcolm on politics).
Bros do not know that Joe is actually an accelerationist.
link to youtube.com
Meh 6, it’s more likely that there be a puppet master than there be a Jekyl/Hide scenario.
But the Darth JarJar parallel could make some interesting memes.
I would add though 6, that the Darth JarJar is a far better “add” than Wt’s self-immolation and elitism in his most current stick figure that attempts to A S S U M E that a Sprint Left attempted Overton Window shift is proper, because “we all have learned SO much over the years” – as opposed to the LACK of learning and decrepitation of a captured Academia focused intently on propaganda style of indocrinating what to learn as opposed to how to learn.
As noted before, it is not the personal views themselves but the misleading to lay readers misrepresentations that personal views contrary to legal authority are “actual law” [as here] that is unprofessional on a legal CLE blog.
Oh please Paul – stop trying to hide behind that curtain of “these personal posts do not matter.”
If you were at all consistent, you would not be the IPR cheerleader that you are.
Yet, as others have pointed out, a US patent gives one the right to exclude others. It is in the Constitution.
OC – correct, and it is worth emphasizing that in cases in which infringement is already a finding, that “threat” is exactly the best remedy to make the transgressed whole.
This is in direct alignment with the borrowed Branch to Branch authority, in perfect view of the express words of Congress under the principles of equity:
35 U.S. Code § 283 – Injunction
The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.
> I am not a litigator, but…my understanding is that PAE’s
> want Judge Albright because he enforces a rocket docket
> (not because he’s substantively biased in their favor).
> PAE’s strongly value the threat of an injunction, as
> that threat forces the other side to negotiate in good faith
A little out of touch here, almost everything in this post is wrong.
The “threat of an injunction” hasn’t been a thing with respect to NPEs (who file most of the suits in W.D. Tex.), for almost 18 years since the eBay/MercExchange decision. Most NPEs haven’t bothered, for years, to even bother to include boilerplate requests for injunctions in their complaints.
The “rocket docket” argument is also overblown. There are plenty of districts that are much, much, faster to trial, and Albright has been forced to delay many trials because of the trial backlog, yet the filings continue.
If you go back 20+ years, you’d find that the single biggest predictor of whether a judge/district will be a hotspot for patent litigation is the resistance to venue transfer, that’s it. That factor largely explains the three top patent venues, e.g., Delaware, E.D. Texas, W.D. Texas.
For example, places like E.D. Virginia are true “rocket dockets,” they often set trials within 9 months of the case filing. They take their speed-to-trial reputation seriously; the familiar blindfolded Lady Justice statue outside the courthouse in Alexandria even has a tagline, “Justice Delayed, Justice Denied.” This was once a white hot patent litigation venue, that fizzled out once it became clear that the judges were willing to transfer cases to more convenient venues where appropriate. (Some of those judges also viewed their speed-to-trial as a public service to residents of that district, and didn’t appreciate it when people with very few ties to the district tried to take advantage of that by clogging their courts.) Every few years another district would pop up that people would declare as the new patent “hotspot” rocket docket, e.g., Wisconsin, Florida, Tennessee, North Carolina, the list goes on, but each of them eventually died down once it became clear the judges were willing to transfer cases. Then TC Heartland came, which vastly reduced opportunities for venue experimentation outside the established and reliable patent venues. But bottom line, speed to trial has never been the biggest factor in determining whether a district/judge will receive a high concentration of patent cases.
A Hail Mary that almost succeeded until it didn’t.
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