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November 7, 2008

Lame Blaming About Claiming

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 its own 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.

Posted by Patent Hawk at November 7, 2008 2:02 PM | § 112

Comments

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

Sure they are. I would be insulted if someone could just waltz in and understand things that I went to school for YEARS to get a good grasp on. And doing it by building, year upon year upon more and more teachings. You don't just jump straight into quantum mechanics PH, EM and Mechanics come first.

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

Let's be honest. Life is more complex than a written sentence. That's why 3 is the most correct answer most of the time.

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

Amen to that brother. Hopefully there will be some new 112 "guidance" overturning the hogwash of the more recent past. Although, what happens when you have an invention when nobody is competent enough to properly put it into words and you get repeating 112's forever? Maybe then you start looking back to the CAFC's view held today?

"The Bilski ruling showed the CAFC to the contrary, by its refusal to adhere to Supreme Court precedent in State Street. "

Now we're back to disagreeing. Bilski took some weird turns to be sure, but they laid out what their best interpretation of SS was. In effect, as you posted a long time ago, they "affirmed" SS. However, they "affirmed" it by choosing an interpretation that was different than popular opinion (amongst attorneys anyway) held was the correct one. They also said that the test in SS was one test, but wasn't sufficient. In other words, you might pass that test but you've still got a higher hurdle to meet even past that test. That said however, if you fail the SS test then you can forget it, you don't meet either hurdle.

Posted by: 6000 at November 7, 2008 6:34 PM

"Not merely conscientiously following the law, the CAFC, by incoherence and incompetence, causing endless confusion, appears bent on damaging patent protection in this country."

Come on Hawk. You're nearly as bad as JD with his (mismanagement)'s. They do their best. They're arguably the best we've got, and better than nothing. They're trying to perform a difficult task, and if you think you can do better, then please GET APPOINTED already.

Posted by: 6000 at November 7, 2008 6:37 PM

"They do their best. They're arguably the best we've got,"

The same can be said of the soon-departing administration in the executive branch of US government. It's a sad statement about the condition of our idiocracy if this is the "best" we can do. Arguably, our's is the best of all worlds. But in reality, it's fast becoming a nightmare as stupidity, arrogance and unchecked power take over. What is happening to the CAFC is emblematic of what is happening to our society in general. We have become complacent and accepting of all manner of malfeasance in thought processing no matter how no-logical it is. As long as we can say it is "tech"-no-logical, we excuse our judges for their ignorance and incompetence regarding science and the useful arts. It's time to stop making excuses for them.

Posted by: step back at November 8, 2008 6:18 AM

State Street wasn't a Supreme Court case, it was a CAFC case.

Posted by: PatentMan at November 8, 2008 4:44 PM

In addition to what you said (much, though not all that I agree with), you also have to blame the applicant's/lawyers for purposefully drafting claims that are dense to digest. This gives them a maximum of leeway in interpreting them at a later date in litigation, or when threatening such. If the courts are not sure what a claim is supposed to be covering, then the possible infringer will be in as difficult position. I;m not saying I necessarily blame you all for doing it under the circumstances, but you are one of the reasons that claims are in the state that they are today.

thanks,

LL

Posted by: Lazarus Long at November 9, 2008 7:35 PM

There's nothing wrong with the Federal Circuit that could not be solved by elevating some actual trial judges to the court. We've had enough academics and Senate committee staffers. Now let's have some common sense in the appointment process.

Claim construction is not that difficult for practitioners. Opinions on claim scope get rendered everyday. Review the file history, follow the case law, and construe the claims. As long as it's reasonable, that's all that's required.

Reasonableness is all that should be required.

Posted by: JD at November 10, 2008 8:04 AM

I agree w/ JD, but I would take it further. Appointing congressional aids and academics to circuit courts -- dumb, dumb, dumb.

The US judicial system is screwed from the start because, unlike many countries, there is no judicial track for law students. Students who want to become judges should be required to choose that track in their 3rd year and that year should be devoted to judicial administration. In order to get a clerkship, one should have to have completed the judicial administration track. In order to get on the bench one should have to have completed 5 years of clerking. In order to get on a circuit court, one should have a minimum of 10 years on the trial bench.

As for the USSCt, it needs to be expanded at least 2x. There should be 1 seat for each of the circuits, which is filled by the senior circuit judge. 4 seats should be appointments. The USSCt should normally sit in fixed, subject-matter related panels and rarely en banc.

Such changes are, of course, too Utopian for Americans, who mostly don't get it. But as a minimum they need to set up a separate IP court system akin to the bankruptcy system and put technical people on the benches. No brainer.

Posted by: Babel Boy at November 13, 2008 10:29 AM

"Reasonableness is all that should be required. "

What happens when there is a reasonable interpretation made by both sides which lead to different outcomes? The patentee gets to construe his claim, or the accussed infringer? Maybe the judge? Maybe the judge flips a coin and patentee calls it? You're right that it's not that hard to construe a claim but the problem arises when the reasonable interpretations conflict.

Posted by: 6000 at November 13, 2008 5:31 PM

6k, I was referring to the fact that appellate judges should defer to reasonable claim construction performed by trial court judges, i.e. fact finders. If a trial court judge finds the facts, applies the law correctly to those facts, and arrives at a legally sound, i.e. reasonable, claim construction, then appellate judges should not substitute their own judgment for the trial court judge's.

Posted by: JD at November 14, 2008 7:43 AM

BTW, the idea that claim construction is solely a question of law, to which trial court judges get zero deference, is just absolutely silly. J. Mayer has it correct: claim construction is a mixed question of fact and law and trial court judges deserve some deference.

What are the chances Markman's gonna be overruled?

Posted by: JD at November 14, 2008 8:20 AM

"...you also have to blame the applicant's/lawyers for purposefully drafting claims that are dense to digest."

Missed this the first time around.

What an ignorant statement. Spoken like a true examiner who's never drafted a claim in his life.

Oh, that's right, let me guess, you're gonna tell us all about that picture claim you drafted 15 years ago.

LOL

Posted by: JD at November 14, 2008 8:39 AM

6000 said: "They do their best. They're arguably the best we've got, and better than nothing. They're trying to perform a difficult task, and if you think you can do better, then please GET APPOINTED already."

Many practitioners could do a better job with respect to claim construction. The problem is that the skill-set needed to get appointed is drastically different from the skill-set needed to do a good job. This issue plagues any large bureaucratic entity, and is the major reason for the inefficiency (and frequent incompetence) of well-meaning, and otherwise well-run, governments and corporations.

Posted by: JCD at November 15, 2008 2:47 PM