Professor Mark Lemley's article Without Preamble (2019-2020) relates to the topic of claim construction, which can determine the outcome of patent litigation.
As background, a US patent claim has three parts: (1) a preamble, which states what the invention is or its environment, (2) a transitional term (e.g., comprising), and (3) a body that lists the steps of a method or the structure of a system. Generally, courts hold a preamble is a claim limitation "if it gives life, meaning and vitality" to the claim or recites essential structure or steps. Yes, it's a case by case determination. Perhaps a more practical test is whether the preamble is referenced repeatedly in the body. If so, the preamble is a claim limitation, i.e., for purpose of determining validity and infringement. See Mueller, Patent Law (2020).
Turning to Professor Lemley's Abstract:
"The Federal Circuit is ignoring a significant share of the words of patent claims. That's a bad idea as a matter of policy. It is virtually impossible to tell when the court is going to do it. And it’s inconsistent with the idea that the claims define the scope of the invention, and with how the Supreme Court thinks about claim construction and its closest analogies, statutory interpretation and construing contracts.
The culprit is a labyrinthine set of rules the Federal Circuit uses to decide whether or not to include the 'preamble' to a patent claim as a part of the claim. The words of the preamble, which can sometimes amount to more than half of the whole claim, might or might not be treated as part of the invention depending on a complex of factors, including whether the claim reads as a complete sentence without it, whether the same words are used in both the preamble and the body of the claim, whether the body of the claim includes the magic word 'said,' whether the preamble merely claims a use, benefit, or environment for the claim, and whether the preamble 'is necessary to breathe life and meaning into the claim.'
In Part I I discuss the bizarre body of law around patent claim preambles and how the law got to its current confused state. In Part II I suggest that the rule serves no useful purpose, and that if and when the Supreme Court gets such a case it should and will sweep the rule away. Patent applicants should be drafting patents with that fact in mind, and the rest of us should be interpreting claims with one eye on the fact that this is a doctrine whose days are numbered."
In short, this article asks courts drop the case by case determination test we use today on whether the preamble is a part of the claim just as much as the body of the claim. Saying the preamble always counts as proposed removes uncertainty, but means more patent claims will be held to not infringe. Further, this helps defendants rather than patent owners since a non-infringement defense is preferred to proving invalidity in court.
Copyright © 2020 Robert Moll. All rights reserved.
Showing posts with label claim construction. Show all posts
Showing posts with label claim construction. Show all posts
Tuesday, May 26, 2020
Wednesday, October 24, 2018
USPTO - Final rule changing claim construction standard for interpreting claims in AIA trial proceeding
The USPTO has changed the claim construction standard to better reflect the difficulty patent owners have experienced in amending claims in AIA trials. It recently "published a final rule changing the claim construction standard applied during inter partes review (IPR), post-grant
review (PGR), and the transitional program for covered business method
patents (CBM) proceedings before the PTAB.
The final rule replaces the “broadest reasonable interpretation” standard with the federal court claim construction standard that is used to construe a claim in a civil action under 35 U.S.C. § 282(b). This is the same claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny.
Additionally, under the final rule, when construing a claim term in an IPR, PGR, or CBM, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (ITC), if that prior claim construction is timely made of record in that IPR, PGR, or CBM.
The USPTO received a total of 374 comments from individuals, corporations, associations, law firms, and law professors in response to its May 9, 2018, Notice of Proposed Rulemaking (NPRM). A significant majority of comments supported the proposed change. As noted in the rule package, the change will lead, among other things, to greater consistency and harmonization with the federal courts and the ITC and lead to greater certainty and predictability in the patent system. The final rule adopts the proposed rule language set forth in the NPRM, with a few changes for clarification purposes.
Several comments questioned the proposed “retroactive” application of the rule. In response to these comments, the final rule will not be retroactively applied and instead will apply only to IPR, PGR, and CBM petitions filed on or after the effective date of the final rule, which is Nov. 13, 2018."
If you are interested in the background and details of this change to claim construction, see the Federal Register Final Rules.
Copyright © 2018 Robert Moll. All rights reserved.
The final rule replaces the “broadest reasonable interpretation” standard with the federal court claim construction standard that is used to construe a claim in a civil action under 35 U.S.C. § 282(b). This is the same claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny.
Additionally, under the final rule, when construing a claim term in an IPR, PGR, or CBM, the PTAB will take into consideration any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (ITC), if that prior claim construction is timely made of record in that IPR, PGR, or CBM.
The USPTO received a total of 374 comments from individuals, corporations, associations, law firms, and law professors in response to its May 9, 2018, Notice of Proposed Rulemaking (NPRM). A significant majority of comments supported the proposed change. As noted in the rule package, the change will lead, among other things, to greater consistency and harmonization with the federal courts and the ITC and lead to greater certainty and predictability in the patent system. The final rule adopts the proposed rule language set forth in the NPRM, with a few changes for clarification purposes.
Several comments questioned the proposed “retroactive” application of the rule. In response to these comments, the final rule will not be retroactively applied and instead will apply only to IPR, PGR, and CBM petitions filed on or after the effective date of the final rule, which is Nov. 13, 2018."
If you are interested in the background and details of this change to claim construction, see the Federal Register Final Rules.
Copyright © 2018 Robert Moll. All rights reserved.
Thursday, June 28, 2018
USPTO - Proposes Changes to the Claim Construction in Trial Proceedings Before the Patent Trial and Appeal Board
The USPTO is proposing changes favorable to patent owners with regard to claim construction in the following Patent Office proceedings: (1) inter partes review (IPR), (2) post-grant review (PGR), and (3) the transitional program for covered business method patents (CBM) proceedings before the Patent Trial and Appeal Board (PTAB).
As stated in the regulatory notice: the USPTO "proposes to replace the broadest reasonable interpretation (“BRI”) standard for construing unexpired patent claims and proposed claims in these trial proceedings with a standard that is the same as the standard applied in federal district courts and International Trade Commission (“ITC”) proceedings. The Office also proposes to amend the rules to add that the Office will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding."
If this change is implemented, it should be more difficult for a challenger to invalidate patent claims in certain cases, which may be reasonable given patent owners are rarely afforded the opportunity to amend claims in Patent Office proceedings to date.
See the USPTO Notice of Proposed Rule Making.
Also see U.S. Supreme Court's prior decision in Cuozzo Speed Technologies v. Lee that affirmed PTAB's use of the broadest reasonable interpretation of the claims in inter partes review.
Copyright © 2018 Robert Moll. All rights reserved.
As stated in the regulatory notice: the USPTO "proposes to replace the broadest reasonable interpretation (“BRI”) standard for construing unexpired patent claims and proposed claims in these trial proceedings with a standard that is the same as the standard applied in federal district courts and International Trade Commission (“ITC”) proceedings. The Office also proposes to amend the rules to add that the Office will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding."
If this change is implemented, it should be more difficult for a challenger to invalidate patent claims in certain cases, which may be reasonable given patent owners are rarely afforded the opportunity to amend claims in Patent Office proceedings to date.
See the USPTO Notice of Proposed Rule Making.
Also see U.S. Supreme Court's prior decision in Cuozzo Speed Technologies v. Lee that affirmed PTAB's use of the broadest reasonable interpretation of the claims in inter partes review.
Copyright © 2018 Robert Moll. All rights reserved.
Labels:
BRI,
CBM,
claim construction,
claims,
covered business method,
inter partes review,
IPR,
PGR,
post grant review,
PTAB,
USPTO
Monday, April 18, 2016
US Supreme Court - Cuozzo Speed Technologies, LLC v. Lee
The U.S. Supreme Court's case Cuozzo Speed Technologies, LLC v. Lee is getting lots of attention. One indicator is the numerous amicus briefs filed in support of either party (see above link to the SCOTUS blog). Here are the legal issues being considered by the Court:
(1) Whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.
The legal issues are technical, but how they are resolved will impact the value of US patents. If you don't want to "step into the jungle" of reading the conflicting amicus briefs, I recommend reading Professor Ronald Mann of Columbia Law's recent article on SCOTUS blog, which is concise, explains why we have the issues, and gives a balanced view of the controversy.
Updated April 26: Professor Mann has another interesting article on the SCOTUS blog: Argument analysis: Justices struggle to read “tea leaves” in Congress’s slipshod drafting of Patent Act provisions for inter partes review.
Copyright © 2016 Robert Moll. All rights reserved.
(1) Whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.
The legal issues are technical, but how they are resolved will impact the value of US patents. If you don't want to "step into the jungle" of reading the conflicting amicus briefs, I recommend reading Professor Ronald Mann of Columbia Law's recent article on SCOTUS blog, which is concise, explains why we have the issues, and gives a balanced view of the controversy.
Updated April 26: Professor Mann has another interesting article on the SCOTUS blog: Argument analysis: Justices struggle to read “tea leaves” in Congress’s slipshod drafting of Patent Act provisions for inter partes review.
Copyright © 2016 Robert Moll. All rights reserved.
Friday, January 22, 2016
US Supreme Court - Reviewing USPTO Patent Trials - Claim Construction & Institution of IPR
The US Supreme Court recently decided to review the USPTO's inter partes review proceedings that have been a much better way to invalidate US patents than going to federal court.
Specifically, in Cuozzo Speed Technologies v. Lee the US Supreme Court is expected to address: (1) whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.
Why is the US Supreme Court is addressing IPR?
Greg Stohr and Susan Decker's article Patent `Death Squad' Rules Draw U.S. Supreme Court Scrutiny gives one possible explanation:
"The U.S. Supreme Court will scrutinize a new system that helps technology companies like Google Inc. and Apple Inc. eliminate troublesome patent disputes without going to court. Taking up a case involving a device that alerts drivers when they are speeding, the justices agreed to decide whether an administrative board set up by Congress in 2011 is being too quick to invalidate patents.
The reviews by the board in the U.S. Patent and Trademark Office have been described by former federal appellate Judge Randall Rader as “death squads” for patents. The board has invalidated at least part of a disputed patent 87 percent of the time, compared with a 42 percent success rate for challenges in federal court, according to a brief by the pharmaceutical industry, which opposes the board review system."
Copyright © 2016 Robert Moll. All rights reserved.
Specifically, in Cuozzo Speed Technologies v. Lee the US Supreme Court is expected to address: (1) whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.
Why is the US Supreme Court is addressing IPR?
Greg Stohr and Susan Decker's article Patent `Death Squad' Rules Draw U.S. Supreme Court Scrutiny gives one possible explanation:
"The U.S. Supreme Court will scrutinize a new system that helps technology companies like Google Inc. and Apple Inc. eliminate troublesome patent disputes without going to court. Taking up a case involving a device that alerts drivers when they are speeding, the justices agreed to decide whether an administrative board set up by Congress in 2011 is being too quick to invalidate patents.
The reviews by the board in the U.S. Patent and Trademark Office have been described by former federal appellate Judge Randall Rader as “death squads” for patents. The board has invalidated at least part of a disputed patent 87 percent of the time, compared with a 42 percent success rate for challenges in federal court, according to a brief by the pharmaceutical industry, which opposes the board review system."
Copyright © 2016 Robert Moll. All rights reserved.
Saturday, November 7, 2015
USPTO - Enhanced Patent Quality Initiative - USPTO Director Michelle K. Lee
Director of the USPTO Michelle K. Lee continues to focus on the topic of patent quality:
"Patent quality is central to fulfilling a core mission of the USPTO, which as stated in the Constitution, is to “promote the Progress of Science and useful Arts.” It is critically important that the USPTO issue patents that are both Historically, our primary focus has been on correctness, but the evolving patent landscape has challenged us to increase our focus on clarity.
Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights. After successfully reducing the backlog of unexamined patent applications, our agency is redoubling its focus on quality.
We asked for your help on how we can best improve quality—and you responded. Since announcing the Enhanced Patent Quality Initiative earlier this year, we received over 1,200 comments and extensive feedback during our first-ever Patent Quality Summit and roadshows, as well as invaluable direct feedback from our examining corps. This feedback has been tremendously helpful in shaping the direction of our efforts. And with this background, I’m pleased to highlight some of our initial programs under the Enhanced Patent Quality Initiative.
First, we are preparing to launch a Clarity of the Record Pilot under which examiners will include as part of the prosecution record definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims. Based on the information we learn from this pilot, we plan to develop best examiner and applicant practices for enhancing the clarity of the record. We also will be launching a new wave of in the coming months emphasizing the benefits and importance of making the record clear and how to achieve greater clarity. Recently, we provided examiners with training on functional claiming and putting statements in the record when the examiner invokes 35 U.S.C. 112(f), which interprets claims under the broadest reasonable interpretation standard and secures a complete and enabled disclosure for a claimed invention. Training for the upcoming year includes an assessment of a fully described invention under 35 U.S.C. 112(a) and best practices for explaining indefiniteness rejections under 35 U.S.C. 112(b).
Second, we are Transforming Our Review Data Capture Process to ensure that reviews of an examiner’s work product by someone in the USPTO will follow the same process and access the same facets of examination. Historically, we have had many different types of quality reviews including supervisory patent examiner reviews of junior examiners and quality assurance team reviews of randomly selected examiner work product. Sometimes the factors reviewed by each differed, and the degree to which the review results were recorded. With only a portion of these review results recorded and different criteria captured in those recordings, the data gathered was not as complete, useful, or voluminous as it could have been. As a result, the USPTO has been able to identify statistically significant trends only on a corps-wide basis, but not at the technology center, art unit, or examiner levels. We are working to unify the review process for all reviewers and systematically record the same review results through an online form, called the “master review form,” which we intend to share with the public.
What are the implications of this new process and new form? This new process will give us the ability to collect and analyze a much greater volume of data from reviews that we were already doing, but that were not previously captured in a centralized, unified way. As we roll out this new review process the amount of data we collect will significantly increase anywhere from three to five times. This will allow us to use big data analytic techniques to identify more detailed trends across the agency based upon statistically significant data including at the technology center, art unit, and even examiner levels. Also, this new process will give us better insight into not just whether the law was applied correctly, but whether the reasons for an examiner’s actions were spelled out in the record clearly and whether there is an omission of a certain type of rejection. For example, for an obvious rejection we are considering not only whether a proper obvious rejection was made, but whether the elements identified in the prior art were mapped onto the claims, whether there are statements in the record explaining the rejection, and whether those statements are clear.
The end results will be the (1) ability to provide more targeted and relevant training to our examiners with much greater precision, (2) increased consistency in work product across the entire examination corps, and (3) greater transparency in how the USPTO evaluates examiners’ work product. You can read more about these and our many other initiatives, such as our pilot and Post Grant Outcomes, which incorporates insight from our Patent Trial and Appeal Board and other proceedings back into the examination process on our new Enhanced Patent Quality Initiativepage on our website.
Finally, let me close by emphasizing that our Enhanced Patent Quality Initiative is not a “one-and-done” effort. Coming from the private sector, I know that any company that produces a truly top quality product has focused on quality for years, if not decades. The USPTO is committed to no less. The programs presented here are just a start. My goal in establishing a brand new department within the USPTO was to focus exclusively on patent quality and the newly created executive level position of Deputy Commissioner for Patent Quality will ensure enhanced quality now, and into the future. With your input we intend to identify additional ways we can enhance patent quality as defined by our patent quality pillars of excellence in work products, excellence in measuring patent quality, and excellence in customer service.
To that end, we will continue our stakeholder outreach and feedback collection efforts in various ways, such as our monthly. The next Patent Quality Chat webinar on November 10 will focus on the programs presented in this blog and our other quality initiatives. I encourage you to join in regularly to our Patent Quality Chats and visit the Enhanced Patent Quality Initiative page on our website for more information. The website provides recordings of previous Quality Chats as well as upcoming topics for discussion. We are eager to hear from you about our Enhanced Patent Quality Initiative, so please continue to provide your feedback to WorldClassPatentQuality@uspto.gov. Thank you for collaborating with us on this exciting and important initiative!"
Copyright © 2015 Robert Moll. All rights reserved.
"Patent quality is central to fulfilling a core mission of the USPTO, which as stated in the Constitution, is to “promote the Progress of Science and useful Arts.” It is critically important that the USPTO issue patents that are both Historically, our primary focus has been on correctness, but the evolving patent landscape has challenged us to increase our focus on clarity.
Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights. After successfully reducing the backlog of unexamined patent applications, our agency is redoubling its focus on quality.
We asked for your help on how we can best improve quality—and you responded. Since announcing the Enhanced Patent Quality Initiative earlier this year, we received over 1,200 comments and extensive feedback during our first-ever Patent Quality Summit and roadshows, as well as invaluable direct feedback from our examining corps. This feedback has been tremendously helpful in shaping the direction of our efforts. And with this background, I’m pleased to highlight some of our initial programs under the Enhanced Patent Quality Initiative.
First, we are preparing to launch a Clarity of the Record Pilot under which examiners will include as part of the prosecution record definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims. Based on the information we learn from this pilot, we plan to develop best examiner and applicant practices for enhancing the clarity of the record. We also will be launching a new wave of in the coming months emphasizing the benefits and importance of making the record clear and how to achieve greater clarity. Recently, we provided examiners with training on functional claiming and putting statements in the record when the examiner invokes 35 U.S.C. 112(f), which interprets claims under the broadest reasonable interpretation standard and secures a complete and enabled disclosure for a claimed invention. Training for the upcoming year includes an assessment of a fully described invention under 35 U.S.C. 112(a) and best practices for explaining indefiniteness rejections under 35 U.S.C. 112(b).
Second, we are Transforming Our Review Data Capture Process to ensure that reviews of an examiner’s work product by someone in the USPTO will follow the same process and access the same facets of examination. Historically, we have had many different types of quality reviews including supervisory patent examiner reviews of junior examiners and quality assurance team reviews of randomly selected examiner work product. Sometimes the factors reviewed by each differed, and the degree to which the review results were recorded. With only a portion of these review results recorded and different criteria captured in those recordings, the data gathered was not as complete, useful, or voluminous as it could have been. As a result, the USPTO has been able to identify statistically significant trends only on a corps-wide basis, but not at the technology center, art unit, or examiner levels. We are working to unify the review process for all reviewers and systematically record the same review results through an online form, called the “master review form,” which we intend to share with the public.
What are the implications of this new process and new form? This new process will give us the ability to collect and analyze a much greater volume of data from reviews that we were already doing, but that were not previously captured in a centralized, unified way. As we roll out this new review process the amount of data we collect will significantly increase anywhere from three to five times. This will allow us to use big data analytic techniques to identify more detailed trends across the agency based upon statistically significant data including at the technology center, art unit, and even examiner levels. Also, this new process will give us better insight into not just whether the law was applied correctly, but whether the reasons for an examiner’s actions were spelled out in the record clearly and whether there is an omission of a certain type of rejection. For example, for an obvious rejection we are considering not only whether a proper obvious rejection was made, but whether the elements identified in the prior art were mapped onto the claims, whether there are statements in the record explaining the rejection, and whether those statements are clear.
The end results will be the (1) ability to provide more targeted and relevant training to our examiners with much greater precision, (2) increased consistency in work product across the entire examination corps, and (3) greater transparency in how the USPTO evaluates examiners’ work product. You can read more about these and our many other initiatives, such as our pilot and Post Grant Outcomes, which incorporates insight from our Patent Trial and Appeal Board and other proceedings back into the examination process on our new Enhanced Patent Quality Initiativepage on our website.
Finally, let me close by emphasizing that our Enhanced Patent Quality Initiative is not a “one-and-done” effort. Coming from the private sector, I know that any company that produces a truly top quality product has focused on quality for years, if not decades. The USPTO is committed to no less. The programs presented here are just a start. My goal in establishing a brand new department within the USPTO was to focus exclusively on patent quality and the newly created executive level position of Deputy Commissioner for Patent Quality will ensure enhanced quality now, and into the future. With your input we intend to identify additional ways we can enhance patent quality as defined by our patent quality pillars of excellence in work products, excellence in measuring patent quality, and excellence in customer service.
To that end, we will continue our stakeholder outreach and feedback collection efforts in various ways, such as our monthly. The next Patent Quality Chat webinar on November 10 will focus on the programs presented in this blog and our other quality initiatives. I encourage you to join in regularly to our Patent Quality Chats and visit the Enhanced Patent Quality Initiative page on our website for more information. The website provides recordings of previous Quality Chats as well as upcoming topics for discussion. We are eager to hear from you about our Enhanced Patent Quality Initiative, so please continue to provide your feedback to WorldClassPatentQuality@uspto.gov. Thank you for collaborating with us on this exciting and important initiative!"
Copyright © 2015 Robert Moll. All rights reserved.
Sunday, April 19, 2015
Professor Shawn Miller - "Fuzzy" Software Patent Boundaries and High Claim Construction Reversal
Tonight, I suggest reading "Fuzzy" Software Patent Boundaries and High Claim Construction Reversal in the Stanford Technology Law Review.
Here is the author's summary:
"Bessen and Meurer theorize that a breakdown in notice of patent boundaries caused the patent litigation surge of the 1990s. They argue that a prime source of this breakdown was the proliferation of software patents with particularly uncertain scope. In this Article I seek evidence that software patent scope is more uncertain by extending the empirical literature on claim construction reversal rates to determine whether the Federal Circuit has been more likely to find error in district court construction of software patents. Not only do I find that it has, but since 2002 software patents account for 40% of the difference between the Federal Circuit’s high claim construction reversal rate and its lower average reversal rate on all other patent issues. These results are cause for optimism because, in general, the application of existing claim construction law has been more predictable than many have feared. However, that optimism does not extend to software claim construction, which is highly unpredictable."
In my view, the article supports that one might reasonably appeal to the Federal Circuit a software patent case lost on claim construction since you have a 40% chance of reversal. However, the Federal Circuit's 40% reversal rate does not establish the software patent owner and prospective defendant disagreed regarding claim scope leading to a litigation surge in the 1990's. I think it only says why we had a lot of appeals to the Federal Circuit. Moreover, should anyone care about a litigation surge in the 1990's-- more than 15 years ago-- given the big decrease in patent litigation in recent years?
Copyright © 2015 Robert Moll. All rights reserved.
Here is the author's summary:
"Bessen and Meurer theorize that a breakdown in notice of patent boundaries caused the patent litigation surge of the 1990s. They argue that a prime source of this breakdown was the proliferation of software patents with particularly uncertain scope. In this Article I seek evidence that software patent scope is more uncertain by extending the empirical literature on claim construction reversal rates to determine whether the Federal Circuit has been more likely to find error in district court construction of software patents. Not only do I find that it has, but since 2002 software patents account for 40% of the difference between the Federal Circuit’s high claim construction reversal rate and its lower average reversal rate on all other patent issues. These results are cause for optimism because, in general, the application of existing claim construction law has been more predictable than many have feared. However, that optimism does not extend to software claim construction, which is highly unpredictable."
In my view, the article supports that one might reasonably appeal to the Federal Circuit a software patent case lost on claim construction since you have a 40% chance of reversal. However, the Federal Circuit's 40% reversal rate does not establish the software patent owner and prospective defendant disagreed regarding claim scope leading to a litigation surge in the 1990's. I think it only says why we had a lot of appeals to the Federal Circuit. Moreover, should anyone care about a litigation surge in the 1990's-- more than 15 years ago-- given the big decrease in patent litigation in recent years?
Copyright © 2015 Robert Moll. All rights reserved.
Wednesday, February 11, 2015
Federal Circuit - In re Cuozzo Speed Technologies, LLC - Affirms PTAB Decision on Institution of IPR and Broadest Reasonable Interpretation of Claims
In In re Cuozzo Speed Technologies, LLC, the Federal Circuit upheld the Patent Trial and Appeal Board (PTAB) decision on two issues:
1. A decision to institute an inter partes review (IPR) is non-appealable, since 35 USC § 314 precludes all review stating a determination to institute an inter partes review shall be final and non-appealable. The Federal Circuit did leave the door open to challenge a decision if a mandamus shows PTAB "clearly and indisputably exceeded its authority" in granting a petition to institute IPR.
2. Patent claims must be construed under the broadest reasonable interpretation, because Congress granted the USPTO authority to set the standard for claim construction in an IPR, the USPTO has long construed claims under BRI in PTO proceedings (e.g., reexamination, prosecution, and reissue), and a patent owner can amend patent claims at least according to the rules even if not in practice.
Judge Newman dissented from the majority stating claims in IPR should be interpreted narrowly as in court and 35 USC § 314(d) does not bar an appeal on institution of IPR, since it is intended to protect patent owners from harassing filings.
Copyright © 2015 Robert Moll. All rights reserved.
1. A decision to institute an inter partes review (IPR) is non-appealable, since 35 USC § 314 precludes all review stating a determination to institute an inter partes review shall be final and non-appealable. The Federal Circuit did leave the door open to challenge a decision if a mandamus shows PTAB "clearly and indisputably exceeded its authority" in granting a petition to institute IPR.
2. Patent claims must be construed under the broadest reasonable interpretation, because Congress granted the USPTO authority to set the standard for claim construction in an IPR, the USPTO has long construed claims under BRI in PTO proceedings (e.g., reexamination, prosecution, and reissue), and a patent owner can amend patent claims at least according to the rules even if not in practice.
Judge Newman dissented from the majority stating claims in IPR should be interpreted narrowly as in court and 35 USC § 314(d) does not bar an appeal on institution of IPR, since it is intended to protect patent owners from harassing filings.
Copyright © 2015 Robert Moll. All rights reserved.
Friday, February 6, 2015
WSJ - Patent Reform Bill Arises Again in Congress
Tonight, I suggest reading the Wall Street Journal article Patent Reform Bill Arises Again in Congress, discussing Congress' latest effort to change US patent law to address patent litigation abuse.
If you want details, here's Innovation Act 2015, which I will refer to as the Bill. If you want a brief account of Congress' latest patent reform, here's the key changes with brief comments:
1. Attorney Fee Awards - Current law permits the recovery of attorney fees to the prevailing party in an exceptional case, while the new law would require an award attorney fees to the prevailing party unless a judge finds that (1) the legal position and litigation conduct of the non-prevailing party was reasonably justified in law and fact; or (2) special circumstances (e.g., severe hardship to inventor) make attorney fee awards unjust. If the patent owner cannot pay the attorney fees, the court can make "the interested parties" (e.g., investors) pay the attorney fees.
My comment - This is a major change from the American rule where each party pays its own attorney fees. It will reduce patent litigation by smaller companies as they will now have to bear the risk of paying all of the attorneys if they lose and a court decides the legal position was unjustified and cannot establish special circumstances. No doubt many defendants may want this, but the Supreme Court's Highmark and Octane decisions adequately protect the "poor defendants" who hope to reduce patent litigation to just a "sport of kings."
2. Complaints Need Claim Charts - When a patent owners sues for patent infringement, the complaint will need to include a claim chart showing how the claim(s) read on the accused product or process except if it cannot be reasonably known before filing the complaint. Form 18 governing the content of complaints is eliminated, but not if you are pharmaceutical company.
My comment - this higher pleading standard will eliminate some patent infringement suits, because preparing a claim chart makes one stare at the infringement case. If you can't do a claim chart, maybe the case should not be filed. Placing the initial cost of a claim chart on the patent owner is better than asking a court to take on a poorly researched case that wastes court resources and defendant's money. Not sure eliminating Form 18 is useful. The Judicial Conference already says it plans to eliminate Form 18 in 2015 and why give pharmaceuticals "a free pass" on Form 18?
3. PTAB Claim Construction - The Bill proposes to replace the Patent Trial and Appeal Board (PTAB)'s broadest reasonable interpretation (BRI) for claims in inter partes review, post-grant review, and covered business methods with the court's narrower interpretation of claims.
My comment - This will help patents survive invalidity challenges in the USPTO, and better corresponds to the reality that patent owners rarely succeed on motions to amend claims.
4. Limit Discovery - This has a couple of parts: (1) claim construction must happen before much discovery occurs; and (2) only large companies or posting a bond will get discovery of non-core documents.
My comment - Claim construction before significant discovery sounds right, but saying a large company gets discovery without posting a bond only increases their advantages over a smaller company, and may raise disputes on whether certain requested discovery is "core" or "non-core."
5. Willful Infringement - The Bill would require demand letters identify the patent, the patent owner, accused product, and importantly how the product infringes at least one claim of the patent.
My comment - This imposes another claim chart into the process of patent enforcement, which of course helps defendants avoid treble damages by merely showing a claim chart did not accompany the demand letter.
6. Transparency of Ownership - This penalizes a patent owner who fails to update the USPTO within 90 days on changes of ownership with no enhanced damages, or attorney fees and an award of attorney fees to the defendant who spent money researching the ownership information.
My comment - Patent ownership should be transparent during enforcement, but the consequences of missing the 90 day window sounds draconian. Paying the attorney fees to find out the actual ownership should suffice.
7. Stay of Customer Suits - Courts may stay (suspend) a patent infringement suit of a customer lawsuits when the manufacturer of the product challenges the patent.
My comment - Why would anyone sue a customer?
Copyright © 2015 Robert Moll. All rights reserved.
If you want details, here's Innovation Act 2015, which I will refer to as the Bill. If you want a brief account of Congress' latest patent reform, here's the key changes with brief comments:
1. Attorney Fee Awards - Current law permits the recovery of attorney fees to the prevailing party in an exceptional case, while the new law would require an award attorney fees to the prevailing party unless a judge finds that (1) the legal position and litigation conduct of the non-prevailing party was reasonably justified in law and fact; or (2) special circumstances (e.g., severe hardship to inventor) make attorney fee awards unjust. If the patent owner cannot pay the attorney fees, the court can make "the interested parties" (e.g., investors) pay the attorney fees.
My comment - This is a major change from the American rule where each party pays its own attorney fees. It will reduce patent litigation by smaller companies as they will now have to bear the risk of paying all of the attorneys if they lose and a court decides the legal position was unjustified and cannot establish special circumstances. No doubt many defendants may want this, but the Supreme Court's Highmark and Octane decisions adequately protect the "poor defendants" who hope to reduce patent litigation to just a "sport of kings."
2. Complaints Need Claim Charts - When a patent owners sues for patent infringement, the complaint will need to include a claim chart showing how the claim(s) read on the accused product or process except if it cannot be reasonably known before filing the complaint. Form 18 governing the content of complaints is eliminated, but not if you are pharmaceutical company.
My comment - this higher pleading standard will eliminate some patent infringement suits, because preparing a claim chart makes one stare at the infringement case. If you can't do a claim chart, maybe the case should not be filed. Placing the initial cost of a claim chart on the patent owner is better than asking a court to take on a poorly researched case that wastes court resources and defendant's money. Not sure eliminating Form 18 is useful. The Judicial Conference already says it plans to eliminate Form 18 in 2015 and why give pharmaceuticals "a free pass" on Form 18?
3. PTAB Claim Construction - The Bill proposes to replace the Patent Trial and Appeal Board (PTAB)'s broadest reasonable interpretation (BRI) for claims in inter partes review, post-grant review, and covered business methods with the court's narrower interpretation of claims.
My comment - This will help patents survive invalidity challenges in the USPTO, and better corresponds to the reality that patent owners rarely succeed on motions to amend claims.
4. Limit Discovery - This has a couple of parts: (1) claim construction must happen before much discovery occurs; and (2) only large companies or posting a bond will get discovery of non-core documents.
My comment - Claim construction before significant discovery sounds right, but saying a large company gets discovery without posting a bond only increases their advantages over a smaller company, and may raise disputes on whether certain requested discovery is "core" or "non-core."
5. Willful Infringement - The Bill would require demand letters identify the patent, the patent owner, accused product, and importantly how the product infringes at least one claim of the patent.
My comment - This imposes another claim chart into the process of patent enforcement, which of course helps defendants avoid treble damages by merely showing a claim chart did not accompany the demand letter.
6. Transparency of Ownership - This penalizes a patent owner who fails to update the USPTO within 90 days on changes of ownership with no enhanced damages, or attorney fees and an award of attorney fees to the defendant who spent money researching the ownership information.
My comment - Patent ownership should be transparent during enforcement, but the consequences of missing the 90 day window sounds draconian. Paying the attorney fees to find out the actual ownership should suffice.
7. Stay of Customer Suits - Courts may stay (suspend) a patent infringement suit of a customer lawsuits when the manufacturer of the product challenges the patent.
My comment - Why would anyone sue a customer?
Copyright © 2015 Robert Moll. All rights reserved.
Wednesday, January 21, 2015
US Supreme Court - Teva Pharmaceuticals USA v. Sandoz - Claim Construction
In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., the Supreme Court held the Federal Circuit cannot reverse a district court's fact findings underpinning claim construction unless they are clearly wrong.
As background, patent claims define a patent owner's right to exclude others. When parties dispute whether a claim is valid or infringed, a judge will interpret the words and phrases of the claim (i.e., claim construction) in a Markman hearing. Claim construction is a big event, because many patent cases settle after the Markman hearing.
In Markman v. Westview Instruments, the Supreme Court held that a "judge, from his training and discipline, is more likely to give a proper interpretation to such instruments than a jury." But claim construction is not purely a legal question. Claim construction has facts underpinning the meaning of the claim that are determined by jury such as determining the credibility of experts testifying at trial, on e.g., what's molecular weight? Markman walked around this problem stating such facts are "subsumed within the necessarily sophisticated analysis of the whole document." Afterward the Federal Circuit understood claim construction should be reviewed as a question of law without deference to the trial court's fact findings. But this led to uncertainty on the meaning of the patent claim until the Federal Circuit gave its opinion, which too often reversed the trial court.
It is an important decision, but I am not entirely sure it's not mostly for lawyers, since it may just produce: (1) greater certainty that a trial court's claim interpretation will "stick," (2) less work for those lawyers in Federal Circuit practice, and (3) a greater role for expert witnesses. Although academics and lawyers are talking up a storm about this case right now, Teva should not be surprising since it is consistent with the Supreme Court's string of decisions that again try to rein in the considerable clout of the Federal Circuit, which has developed a substantial body of patent law.
Copyright © 2015 Robert Moll. All rights reserved.
As background, patent claims define a patent owner's right to exclude others. When parties dispute whether a claim is valid or infringed, a judge will interpret the words and phrases of the claim (i.e., claim construction) in a Markman hearing. Claim construction is a big event, because many patent cases settle after the Markman hearing.
In Markman v. Westview Instruments, the Supreme Court held that a "judge, from his training and discipline, is more likely to give a proper interpretation to such instruments than a jury." But claim construction is not purely a legal question. Claim construction has facts underpinning the meaning of the claim that are determined by jury such as determining the credibility of experts testifying at trial, on e.g., what's molecular weight? Markman walked around this problem stating such facts are "subsumed within the necessarily sophisticated analysis of the whole document." Afterward the Federal Circuit understood claim construction should be reviewed as a question of law without deference to the trial court's fact findings. But this led to uncertainty on the meaning of the patent claim until the Federal Circuit gave its opinion, which too often reversed the trial court.
It is an important decision, but I am not entirely sure it's not mostly for lawyers, since it may just produce: (1) greater certainty that a trial court's claim interpretation will "stick," (2) less work for those lawyers in Federal Circuit practice, and (3) a greater role for expert witnesses. Although academics and lawyers are talking up a storm about this case right now, Teva should not be surprising since it is consistent with the Supreme Court's string of decisions that again try to rein in the considerable clout of the Federal Circuit, which has developed a substantial body of patent law.
Copyright © 2015 Robert Moll. All rights reserved.
Sunday, November 16, 2014
Federal Circuit - In re Cuozzo Speed Technologies - Oral Arguments
In re Cuozzo Speed Technologies, the Federal Circuit heard oral arguments on what should be the standard for interpreting patent claims in America Invents Act (AIA) trials.
One advantage for petitioners is the claims are currently subject to the broadest reasonable interpretation (BRI), which makes it easier to invalidate the claims. The policy underlying BRI is the claims can be amended to overcome prior art so should be subject to the broadest reasonable interpretation to avoid the claims being later interpreted too broadly in court. However, only one party has successfully amended claims in an IPR! This calls into question whether we should use a broad standard suitable for the original prosecution in the AIA trials. In the meantime, here is the Federal Circuit's MP3 audio recording of the arguments.
Copyright © 2014 Robert Moll. All rights reserved.
One advantage for petitioners is the claims are currently subject to the broadest reasonable interpretation (BRI), which makes it easier to invalidate the claims. The policy underlying BRI is the claims can be amended to overcome prior art so should be subject to the broadest reasonable interpretation to avoid the claims being later interpreted too broadly in court. However, only one party has successfully amended claims in an IPR! This calls into question whether we should use a broad standard suitable for the original prosecution in the AIA trials. In the meantime, here is the Federal Circuit's MP3 audio recording of the arguments.
Copyright © 2014 Robert Moll. All rights reserved.
Sunday, November 2, 2014
Method Claims - Should They Recite Computer Terminology?
Although the Supreme Court stated it wouldn't give much weight to whether a method claim recites a computer in Alice v. CLS Bank, it may be a good idea to recite computer language in the claim in some cases.
During examination, an examiner should give a claim the broadest reasonable interpretation consistent with the specification. For example, in Phillips v. AWH Corp. the Federal Circuit stated an examiner should determine the scope of claims not solely on the claim language, but on the broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art."
The logic for the broadest reasonable interpretation standard is an applicant can amend claims during prosecution, and giving a claim the broadest reasonable interpretation reduces the possibility the issued patent claim will be interpreted more broadly than justified.
Let me explain now how this might apply using an example. In Application of Prater the CCPA considered a patent applicant pursuing a claim reciting a process of analyzing data generated by mass spectrographic analysis of a gas. The specification said the process included subjecting the data to be analyzed in a mathematical manipulation. The examiner rejected the claim as anticipated, because "analyzing data generated by mass spectrographic analysis" could be read on a mental process using a pencil and paper. The court agreed the claim was not limited to implementation on a machine, since the claim did not expressly recite it. The court explained "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." In short, Application of Prater indicates you cannot import subject matter (e.g., a machine or a computer) described in the specification into the claim where that subject matter is not recited in the claim.
Thus, if you want a method implemented in software to not read on a mental process, it may be better to recite the computer language in the body of the claim if you can live with the narrower claim.
Copyright © 2014 Robert Moll. All rights reserved.
During examination, an examiner should give a claim the broadest reasonable interpretation consistent with the specification. For example, in Phillips v. AWH Corp. the Federal Circuit stated an examiner should determine the scope of claims not solely on the claim language, but on the broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art."
The logic for the broadest reasonable interpretation standard is an applicant can amend claims during prosecution, and giving a claim the broadest reasonable interpretation reduces the possibility the issued patent claim will be interpreted more broadly than justified.
Let me explain now how this might apply using an example. In Application of Prater the CCPA considered a patent applicant pursuing a claim reciting a process of analyzing data generated by mass spectrographic analysis of a gas. The specification said the process included subjecting the data to be analyzed in a mathematical manipulation. The examiner rejected the claim as anticipated, because "analyzing data generated by mass spectrographic analysis" could be read on a mental process using a pencil and paper. The court agreed the claim was not limited to implementation on a machine, since the claim did not expressly recite it. The court explained "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." In short, Application of Prater indicates you cannot import subject matter (e.g., a machine or a computer) described in the specification into the claim where that subject matter is not recited in the claim.
Thus, if you want a method implemented in software to not read on a mental process, it may be better to recite the computer language in the body of the claim if you can live with the narrower claim.
Copyright © 2014 Robert Moll. All rights reserved.
Tuesday, October 14, 2014
US Supreme Court - Teva v. Sandoz - Standard of Review for Claim Construction
Some believe the next major patent case to be decided by the US Supreme Court is Teva v. Sandoz, which will address the standard of review for claim construction. Although the case deals with other issues such as claim indefiniteness, how the US Supreme Court handles the Federal Circuit's practice of de novo review of claims may be quite important, because US patent cases often turn on claim construction, which is considered to be a legal question despite the fact findings.
For details on Teva v. Sandoz see Mr. Lyle Denniston's SCOTUSblog article: Argument preview: Trimming a specialized court's power?
Copyright © 2014 Robert Moll. All rights reserved.
For details on Teva v. Sandoz see Mr. Lyle Denniston's SCOTUSblog article: Argument preview: Trimming a specialized court's power?
Copyright © 2014 Robert Moll. All rights reserved.
Monday, March 17, 2014
Federal Circuit - Verderi v. Google - District Court's Claim Construction Error Vacates Non-Infringement Judgment
In Verderi, LLC v. Google, Inc., the Federal Circuit vacated a judgment of non-infringement of four U.S. patents owned by Verderi, LLC because the district court erred in claim construction.
On October 15, 2010, Vederi LLC sued Google alleging Google Street View infringed U.S. Patent No. 7,239,760, U.S. Patent No. 7,577,316, U.S. Patent No. 7,805,025, and U.S. Patent No. 7,813,596 describe methods for creating synthesized images of a geographic area that can be displayed on a computer.
As background, Google Street View produces images and view that are curved or spherical, and never flat because it combines images of a wide range of views recorded by multiple cameras having wide-angle lenses mounted on a moving vehicle. Those photographs are overlapping pictures taken from a single location at approximately the same time. These images are stitched together into a virtual spherical composite image. The resulting image is a two-dimensional representation of a spherical shape.
Claim 1 of the '760 patent is representative of the claims:
1. In a system including an image source and a user terminal having a screen and an input device, a method for enabling visual navigation of geographic area from the user terminal, the method comprising:
On October 15, 2010, Vederi LLC sued Google alleging Google Street View infringed U.S. Patent No. 7,239,760, U.S. Patent No. 7,577,316, U.S. Patent No. 7,805,025, and U.S. Patent No. 7,813,596 describe methods for creating synthesized images of a geographic area that can be displayed on a computer.
As background, Google Street View produces images and view that are curved or spherical, and never flat because it combines images of a wide range of views recorded by multiple cameras having wide-angle lenses mounted on a moving vehicle. Those photographs are overlapping pictures taken from a single location at approximately the same time. These images are stitched together into a virtual spherical composite image. The resulting image is a two-dimensional representation of a spherical shape.
Claim 1 of the '760 patent is representative of the claims:
1. In a system including an image source and a user terminal having a screen and an input device, a method for enabling visual navigation of geographic area from the user terminal, the method comprising:
- receiving a first user input specifying a first location in the geographic area;
- retrieving from the image source a first image associated with the first location, the image source providing a plurality of images depicting views of objects in the geographic area, the views being substantially elevations of the objects in the geographic area, wherein the images are associated with image frames acquired by an image recording device moving along a trajectory;
- receiving a second user input specifying a navigation direction relative to the first location in the geographic area;
- determining a second location based on the user specified navigation direction; and
- retrieving from the image source a second image associated with the second location (emphasis added).
In the Markman hearing, Google argued "views being substantially elevations of the objects" in claim 1 required "vertical flat (as opposed to curved or spherical) depictions of front or side views." Verderi stated that it merely meant "front and side views of the objects." The district court stated the patents "did not disclose anything about spherical views" and entered summary judgment in favor of Google.
The Federal Circuit stated when it interprets claims it relies primarily on intrinsic evidence: the claim language, the specification, and the prosecution history and apart from the claims, the specification is the single best guide to the meaning of a claim term. After considering the intrinsic evidence, a court may seek guidance from extrinsic evidence, but should understand it may be less reliable than intrinsic evidence (quotations and citation omitted).
The Federal Circuit noted that the district court erred by not relying the intrinsic evidence: (1) the claims broadly recited "substantially elevations," but the court adopted an architect's strict definition of an elevation view, which read "substantially" out of the claims; (2) Figure 16 of the patents depicted buildings with depth and perspective not just front and side, which is more than an elevation view; and (3) The specification described taking a photo with a fish-eye lens, which produces photos which are not flat and not an elevation.
After reading the opinion, I think the specification was contrary to Google's "substantially elevations" = "flat images" argument at the Markman hearing so the decision was not surprising. On the other hand, using a relative term such as "substantially" in a claim is not risk free as it may raise an indefiniteness defense.
Copyright © 2014 Robert Moll. All rights reserved.
Copyright © 2014 Robert Moll. All rights reserved.
Saturday, February 22, 2014
Federal Circuit - Lighting Ballast v. Philips - District Court Patent Claim Construction Entitled to No Deference on Appeal
In Lighting Ballast Control LLC v. Philips Electronics N.A. Corp., an en banc Federal Circuit held that claim construction is a question of law reviewed de novo (i.e., anew) on appeal.
Claim construction is often a pivotal event in patent litigation since it often determines if (1) a patent claim is infringed; and/or (2) the claim is valid. The Lighting Ballast case focuses on the standard of appellant review of trial court's claim construction established in Cybor v. FAS Technologies, which gives no deference to a trial court's claim construction.
Because of the Federal Circuit's high reversal rates of district court's claim construction, since the Cybor case was decided 15 years ago, some argued it was time for the Federal Circuit to reconsider its view. The Federal Circuit agreed and invited amicus curiae participation on the following questions:
(1) Should this court overrule Cybor?
(2) Should this court afford deference to any aspect of a district court’s claim construction?
(3) If so, which aspects should be afforded deference?
Claim construction is often a pivotal event in patent litigation since it often determines if (1) a patent claim is infringed; and/or (2) the claim is valid. The Lighting Ballast case focuses on the standard of appellant review of trial court's claim construction established in Cybor v. FAS Technologies, which gives no deference to a trial court's claim construction.
Because of the Federal Circuit's high reversal rates of district court's claim construction, since the Cybor case was decided 15 years ago, some argued it was time for the Federal Circuit to reconsider its view. The Federal Circuit agreed and invited amicus curiae participation on the following questions:
(1) Should this court overrule Cybor?
(2) Should this court afford deference to any aspect of a district court’s claim construction?
(3) If so, which aspects should be afforded deference?
The Federal Circuit states the 21 amici briefs stated three general views:
The Federal Circuit states the first view "favored by Lighting Ballast is that the Cybor decision is incorrect and should be entirely discarded. Lighting Ballast argues that this court in Cybor misapplied the Supreme Court’s decision in Markman II, in that the Court had focused only on whether questions of patent claim construction are subject to jury trial, or whether this issue should be decided solely by a judge. These proponents state that the Court in Markman II, in deciding;the judge-jury question, did not change the traditional distinction between fact and law, recognized that there are factual aspects of claim construction, and did not address the standard of appellate review."
The Federal Circuit states the second view "favored by some amici curiae including the United States, may be viewed as a fusion or hybrid of de novo review and deferential review. These proponents acknowledge that the Court in Markman II described patents as “legal instruments” and stated that interpretation of patent claims is a “purely legal” matter, 517 U.S. at 391, but argue that the correct appellate approach is for the factual aspects of claim construction to be reviewed on the clearly erroneous standard, while the final conclusion receives review as a matter of law. Some of these amici suggest a solution whereby the standard of review would depend on whether the district court’s claim construction drew solely from the record of the patent and its prosecution history (called "intrinsic evidence"), or whether external information or witness testimony was presented in the district court (that is, "extrinsic evidence")."
The Federal Circuit said the third view "supported by some amici curiae, is that Cybor is both reasonable and correct in view of the Court’s rulings in Markman II. These proponents stress the Court’s statements that claim construction is a 'purely legal' matter, 517 U.S. at 391, and that 'the interpretation of a so-called patent claim . . . is a matter of law,' id. at 372. They argue that de novo review of the scope and meaning of patent claims conforms to the rule that applies in all areas of law, that “interpreting a set of legal words . . . in order to determine their basic intent' is a 'purely legal matter.' Buford v. United States, 532 U.S.59, 65 (2001). They state that sufficient reason has not been shown to change this established and effective precedent in patent cases."
The Federal Circuit stated its own viewpoint:
"The question that this court has now reconsidered is whether we should continue to review claim construction as a whole and de novo on the record, or whether we should change to a different system that at best would require us to identify any factual aspects and how the trial judge decided them, and review any found or inferred facts not for correctness but on a deferential standard, with or without also giving deferential review to the ultimate determination of the meaning of the claims. We conclude that such changed procedure is not superior to the existing posture of plenary review of claim construction. Over these fifteen years this court has applied Cybor to diverse subject matter, and the body of precedent has grown large. Deferential review does not promise either improved consistency or increased clarity. We have been offered no argument of public policy, or changed circumstances, or unworkability or intolerability, or any other justification for changing the Cybor methodology and abandoning de novo review of clam construction. The proponents of overruling Cybor have not met the demanding standards of the doctrine of stare decisis. They have not shown that Cybor is inconsistent with any law or precedent, or that greater deference will produce any greater public or private benefit. We conclude that there is neither 'grave necessity' nor 'special justification' for departing from Cybor."
Copyright © 2014 Robert Moll. All rights reserved.
The Federal Circuit states the first view "favored by Lighting Ballast is that the Cybor decision is incorrect and should be entirely discarded. Lighting Ballast argues that this court in Cybor misapplied the Supreme Court’s decision in Markman II, in that the Court had focused only on whether questions of patent claim construction are subject to jury trial, or whether this issue should be decided solely by a judge. These proponents state that the Court in Markman II, in deciding;the judge-jury question, did not change the traditional distinction between fact and law, recognized that there are factual aspects of claim construction, and did not address the standard of appellate review."
The Federal Circuit states the second view "favored by some amici curiae including the United States, may be viewed as a fusion or hybrid of de novo review and deferential review. These proponents acknowledge that the Court in Markman II described patents as “legal instruments” and stated that interpretation of patent claims is a “purely legal” matter, 517 U.S. at 391, but argue that the correct appellate approach is for the factual aspects of claim construction to be reviewed on the clearly erroneous standard, while the final conclusion receives review as a matter of law. Some of these amici suggest a solution whereby the standard of review would depend on whether the district court’s claim construction drew solely from the record of the patent and its prosecution history (called "intrinsic evidence"), or whether external information or witness testimony was presented in the district court (that is, "extrinsic evidence")."
The Federal Circuit said the third view "supported by some amici curiae, is that Cybor is both reasonable and correct in view of the Court’s rulings in Markman II. These proponents stress the Court’s statements that claim construction is a 'purely legal' matter, 517 U.S. at 391, and that 'the interpretation of a so-called patent claim . . . is a matter of law,' id. at 372. They argue that de novo review of the scope and meaning of patent claims conforms to the rule that applies in all areas of law, that “interpreting a set of legal words . . . in order to determine their basic intent' is a 'purely legal matter.' Buford v. United States, 532 U.S.59, 65 (2001). They state that sufficient reason has not been shown to change this established and effective precedent in patent cases."
The Federal Circuit stated its own viewpoint:
"The question that this court has now reconsidered is whether we should continue to review claim construction as a whole and de novo on the record, or whether we should change to a different system that at best would require us to identify any factual aspects and how the trial judge decided them, and review any found or inferred facts not for correctness but on a deferential standard, with or without also giving deferential review to the ultimate determination of the meaning of the claims. We conclude that such changed procedure is not superior to the existing posture of plenary review of claim construction. Over these fifteen years this court has applied Cybor to diverse subject matter, and the body of precedent has grown large. Deferential review does not promise either improved consistency or increased clarity. We have been offered no argument of public policy, or changed circumstances, or unworkability or intolerability, or any other justification for changing the Cybor methodology and abandoning de novo review of clam construction. The proponents of overruling Cybor have not met the demanding standards of the doctrine of stare decisis. They have not shown that Cybor is inconsistent with any law or precedent, or that greater deference will produce any greater public or private benefit. We conclude that there is neither 'grave necessity' nor 'special justification' for departing from Cybor."
Copyright © 2014 Robert Moll. All rights reserved.
Subscribe to:
Posts (Atom)