Patent Law

Lame Blaming About Claiming

By Gary Odom and Jordan Kuhn

CAFC Judge Plager recently mused out loud about claim construction, most strikingly, his and the court's technical incompetence.

The fundamental problem with claim construction today is that too many claims are no longer describing hammers or machines or other physical objects--though we have had our share of interpretive trouble even with some simple things like what is a "board."

How much more difficult it is when inventions involve complex software technologies or biochemical processes, or even how to conduct an online auction. Too often the problem is that words, the limitations of language, are such that trying to put the invention into English following the phrase "I claim ..." is difficult, and sometimes virtually impossible, for even an adroit drafter. The problem is complicated by the reality that not all claim drafters are adroit, and by some silly conventions that grew up in simpler times like the use of magic phrases such as "comprising," or the rule that using simple sentences in a claim is prohibited.

In the Markman case we came up with the brilliant idea of taking claim construction from the jury and giving it to the trial judges, whose articulated understandings we would then be able to review. I thought it a great idea, as I say, even brilliant, except there are the unintended consequences. Put aside the creation of a new industry, called Markman hearings. It is what happens after the Markman hearing that is so troubling. Many critics, including some of us on the court, think the reversal rate is unacceptable, and we need to defer more to the trial judges. But how would that work? On what basis would we prefer one trial judge's view of an indeterminate claim's words over our own, and how distinguish a different judge's view that we do not prefer?

Judge Plager then referred to an inconclusive study by academic David L. Schwartz, about why courts have such difficulty with claim construction.

The researcher hypothesized that the explanation is one of three things: 1) trial judges [] cannot master claim construction, especially if they are without a technical background; 2) the Federal Circuit has failed to provide useful rules and other guidance from which trial judges can learn; or 3) claim construction is inherently indeterminate.

Not given to point the finger at himself or his bench-sitting brethren, Judge Plager likes 3) best of all.

I would hazard the guess that it is some of all three, though in my experience it is the last that is at the heart of the problem.

But the heart of the problem beats at the Court of Appeals, Federal Circuit.

One problem is lack of enforcement of §112; ¶ 2 by the CAFC. From the January Halliburton CAFC opinion.

35 U.S.C. § 112, ¶ 2 requires that the specification of a patent "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." Because claims delineate the patentee's right to exclude, the patent statute requires that the scope of the claims be sufficiently definite to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent. Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims. Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996) ("[T]he primary purpose of the requirement is 'to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their [respective] rights.'") (quoting Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369, (1938)). The Supreme Court has stated that "[t]he statutory requirement of particularity and distinctness in claims is met only when [the claims] clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise." United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942).

If only the CAFC would follow the 1942 Supreme Court precedent of United Carbon. But the CAFC refuses, cutting slack where it should not.

Of course, claims are not indefinite merely because they present a difficult task of claim construction. Instead, "[i]f the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds." Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001) (citations omitted). Proof of indefiniteness requires such an exacting standard because claim construction often poses a difficult task over which "expert witnesses, trial courts, and even the judges of this court may disagree." Id.

Statute and Supreme Court precedent dictate that claims must "particularly point out and distinctly" claim, to "clearly distinguish what is claimed," to "clearly circumscribe what is foreclosed from future enterprise." Anything less is not patentable.

In his talk, Judge Plager lets his bias slip about the doctrine of equivalents.

As something of a sidelight, I was interested to note that one empirical study of the Markman process concluded that a consequence of Markman was to contribute to the fading away of the doctrine of equivalents--I thought that interesting since I had been working toward that goal--at least the goal of putting the equivalents genie back in the bottle--well before Markman was decided.

Last month, CAFC Judge Lourie spun the present anti-patent CAFC to neutral.

Since I have been on the court, over 18 years, not once have we had a discussion as to what direction the law should take, whether we should be pro-patent or not... We have been criticized for, in the view of some people, narrowing the doctrine of equivalents, emphasizing the need for a written description commensurate with the claims, and affirming summary judgments of non-infringement that in effect preclude juries from deciding these cases. To the extent those accusations may have any factual basis, they hardly comport with the fiction of a pro-patent court. They could be viewed as the opposite. So decisions are conscientiously made on the facts and law, not in any attempt to be pro- or anti-patent.

The Bilski ruling showed the CAFC to the contrary, by its refusal to adhere to Supreme Court precedent in State Street. Not merely conscientiously following the law, the CAFC, by incoherence and incompetence, causing endless confusion, appears bent on damaging patent protection in this country.

Full post as published by The Patent Prospector on November 07, 2008 (boomark / email).