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May 19, 2009

Product by Process

Abbott Labs got into two patent spats with generic drug makers, in different districts, over 4,935,507, which claims a chemical composition by process, the result being an antibacterial drug. In one, where Abbott sued, Abbott lost on noninfringement in summary judgment. In the other, which was started by Lupin as a declaratory judgment action, Abbott failed to secure a preliminary injunction in counter-claim. Both losses were from claim construction. The CAFC took them both on appeal in a single decision, a seminal ruling on product-by-process claims.

Abbott Laboratories and Astellas Pharma v. Sandoz and Teva and Ranbaxy and Par (2007-1400) and
Lupin v. Abbott Laboratories and Astellas Pharma (2007-1446) precedential

Claim 1 claims crystalline cefdinir, using its chemical name, and defining its unique characteristics with powder X-ray diffraction (PXRD) angle peaks... In contrast, claims 2-5 claim crystalline cefdinir, without any PXRD peak limitations, but with descriptions of processes used to obtain the crystalline cefdinir.

The claim construction warm-up, which in this case involved running a few laps -

Because the claims define the patent right, see Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004), naturally "the claims themselves provide substantial guidance as to the meaning of particular claim terms." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). But the claims "must be read in view of the specification, of which they are a part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). A patent's specification provides necessary context for understanding the claims, and "is always highly relevant to the claim construction analysis." Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). While equally true in a general sense, sometimes the specification offers practically incontrovertible directions about claim meaning. For example, inventors may act as their own lexicographers and give a specialized definition of claim terms. See id. at 1316. Likewise, inventors and applicants may intentionally disclaim, or disavow, subject matter that would otherwise fall within the scope of the claim. See id.

When consulting the specification to clarify the meaning of claim terms, courts must take care not to import limitations into the claims from the specification. This court has recognized the "fine line between" the encouraged and the prohibited use of the specification. Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). When the specification describes a single embodiment to enable the invention, this court will not limit broader claim language to that single application "unless the patentee has demonstrated a clear intention to limit the claim scope using 'words or expressions of manifest exclusion or restriction.'" Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)). By the same token, the claims cannot "enlarge what is patented beyond what the inventor has described as the invention." Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003) (quoting Netword, LLC v. Central Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001)). Thus this court may reach a narrower construction, limited to the embodiment(s) disclosed in the specification, when the claims themselves, the specification, or the prosecution history clearly indicate that the invention encompasses no more than that confined structure or method. See Liebel-Flarsheim, 358 F.3d at 908.

Along with the specification, the prosecution history is "intrinsic evidence" of the meaning of the claims, because it "provides evidence of how the [United States Patent & Trademark Office (PTO)] and the inventor understood the patent." Phillips, 415 F.3d at 1317. Although often producing ambiguities occasioned by ongoing negotiations between the inventor and the PTO, "the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id. "[C]lear and unmistakable" statements during prosecution may also disavow claim scope. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (quoting Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006)). Again owing in part to the inherent ambiguities of prosecution history, the doctrine of prosecution disclaimer only applies to unambiguous disavowals. See id. at 1375.

The word "crystalline" was only defined in the specification to one form, Crystal A.

The '507 patent claims priority to Japanese Patent Application No. 62-206199 (the JP '199 application), which claimed two crystalline forms of cefdinir, "Crystal A" and "Crystal B." The JP '199 application claimed Crystals A and B very specifically, defining Crystal A by three infrared (IR)-absorption wavelengths and sixteen PXRD angles and intensities. In contrast, Crystal B featured five IR-absorption wavelengths and twenty-one PXRD angles/intensities.

Despite using the JP '199 application for priority, the '507 patent's specification differs significantly. Specifically, Abbott (actually Fujisawa Pharmaceutical Co., Ltd., Astellas' predecessor in interest) jettisoned the Crystal B disclosure found in the JP '199 application and crafted broader claims in its prosecution of the '507 patent. Because the JP '199 applications defines Crystal A and Crystal B physiochemically rather than structurally, the forms actually represent subgenuses of crystalline cefdinir. Thus Crystals A and B comprise crystalline forms of varying structures, which in the context of this case means varying levels of hydration.

The JP '199 application establishes unequivocally that Abbott knew and could describe both Crystal A and Crystal B. Abbott could have retained the disclosure of Crystal B to support the broader claims of the '507 patent, but instead disclosed and claimed A alone.

Then, spouting on "proper interpretation of product-by process claims" the whole CAFC piled in, for this section only, en banc (Judge Schall excepted). Or, as Prof. Crouch put it: "en banc sua sponte sub secretum," because the court received no briefing, nor argued the issue.

The majority rooted its ruling in Atlantic Thermoplastics.

This court in Atlantic Thermoplastics construed product-by-process claims as limited by the process.

This rule finds extensive support in Supreme Court opinions that have addressed the proper reading of product-by-process claims. See Smith v. Goodyear Dental Vulcanite Co., 93 U.S. 486, 493 (1877) ("The process detailed is thereby made as much a part of the invention as are the materials of which the product is composed."); Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 224 (1880) ("[T]o constitute infringement of the patent, both the material of which the dental plate is made . . . and the process of constructing the plate . . . must be employed."); Merrill v. Yeomans, 94 U.S. 568 (1877); Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293 (1884) (BASF); The Wood-Paper Patent, 90 U.S. 566, 596 (1874); Plummer v. Sargent, 120 U.S. 442 (1887); Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938); see also Atl. Thermoplastics, 970 F.2d at 839-42 (discussing each of these cases). In these cases, the Supreme Court consistently noted that process terms that define the product in a product-by-process claim serve as enforceable limitations. In addition, the binding case law of this court's predecessor courts, the United States Court of Customs and Patent Appeals (see In re Hughes, 496 F.2d 1216, 1219 (CCPA 1974) (acknowledging that "true product claims" are "broader" in scope than product-by-process claims)), and the United States Court of Claims (see Tri-Wall Containers v. United States, 408 F.2d 748, 751 (Ct. Cl. 1969)), followed the same rule.

This court's sister circuits also followed the general rule that the defining process terms limit product-by-process claims. See, e.g., Hide-Ite Leather v. Fiber Prods., 226 F. 34, 36 (1st Cir. 1915) ("It is also a well-recognized rule that, although a product has definite characteristics by which it may be identified apart from the process, still, if in a claim for the product it is not so described, but is set forth in the terms of the process, nothing can be held to infringe the claim which is not made by the process."); Paeco, Inc. v. Applied Moldings, Inc., 562 F.2d 870, 876 (3d Cir. 1977) ("A patent granted on a product claim describing one process grants no monopoly as to identical products manufactured by a different process."). Indeed, this court itself had articulated that rule: "For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself." In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (emphasis added).

The Supreme Court has long emphasized the limiting requirement of process steps in product-by-process claims. In BASF, the Court considered a patent relating to artificial alizarine...

After BASF, the Supreme Court continued to emphasize the importance of process steps in evaluating the infringement of product-by-process claims. See, e.g., Plummer, 120 U.S. at 448 ("[W]hatever likeness that may appear between the product of the process described in the patent and the article made by the defendants, their identity is not established unless it is shown that they are made by the same process."); Gen. Elec. Co., 304 U.S. at 373 ("[A] patentee who does not distinguish his product from what is old except by reference, express or constructive, to the process by which he produced it, cannot secure a monopoly on the product by whatever means produced." (footnote omitted)).

Thus, based on Supreme Court precedent and the treatment of product-by-process claims throughout the years by the PTO and other binding court decisions, this court now restates that "process terms in product-by-process claims serve as limitations in determining infringement." Atl. Thermoplastics, 970 F.2d at 846-47. As noted earlier, this holding follows this court's clear statement in In re Thorpe that "product by process claims are limited by and defined by the process." 777 F.2d at 697.

More recently, the Supreme Court has reiterated the broad principle that "[e]ach element contained in a patent claim is deemed material to defining the scope of the patented invention." Warner-Jenkinson, 520 U.S. at 19. Although Warner-Jenkinson specifically addressed the doctrine of equivalents, this rule applies to claim construction overall. As applied to product-by-process claims, Warner-Jenkinson thus reinforces the basic rule that the process terms limit product-by-process claims. To the extent that Scripps Clinic is inconsistent with this rule, this court hereby expressly overrules Scripps Clinic.

The court reaffirmed the legitimacy of product-by-process claims.

Thus this court does not question at all whether product-by-process claims are legitimate as a matter of form. The legitimacy of this claim form was indeed a relevant issue in the nineteenth century when Ex parte Painter, 1891 C.D. 200, 200-01 (Comm'r Pat. 1891), and some later cases were before the Commissioner of Patents. However, this court need not address that settled issue. The issue here is only whether such a claim is infringed by products made by processes other than the one claimed. This court holds that it is not.

Product-by-process claims, especially for those rare situations when products were difficult or impossible to describe, historically presented a concern that the Patent Office might deny all product protection to such claims. See In re Butler, 17 C.C.P.A. 810, 813 (CCPA 1930) ("Process claims are valuable, and appellant thinks he is entitled to them; but it is submitted that he should not be limited to control of the process when the article which that process produces is new and useful."). In the modern context, however, if an inventor invents a product whose structure is either not fully known or too complex to analyze (the subject of this case - a product defined by sophisticated PXRD technology - suggests that these concerns may no longer in reality exist), this court clarifies that the inventor is absolutely free to use process steps to define this product. The patent will issue subject to the ordinary requirements of patentability. The inventor will not be denied protection. Because the inventor chose to claim the product in terms of its process, however, that definition also governs the enforcement of the bounds of the patent right. This court cannot simply ignore as verbiage the only definition supplied by the inventor.

A rare look behind-the-curtain into rationale. This to buck up the ruling in the face of withering dissent.

This court's rule regarding the proper treatment of product-by-process claims in infringement litigation carries its own simple logic. Assume a hypothetical chemical compound defined by process terms. The inventor declines to state any structures or characteristics of this compound. The inventor of this compound obtains a product-by-process claim: "Compound X, obtained by process Y." Enforcing this claim without reference to its defining terms would mean that an alleged infringer who produces compound X by process Z is still liable for infringement. But how would the courts ascertain that the alleged infringer's compound is really the same as the patented compound? After all, the patent holder has just informed the public and claimed the new product solely in terms of a single process. Furthermore, what analytical tools can confirm that the alleged infringer's compound is in fact infringing, other than a comparison of the claimed and accused infringing processes? If the basis of infringement is not the similarity of process, it can only be similarity of structure or characteristics, which the inventor has not disclosed. Why also would the courts deny others the right to freely practice process Z that may produce a better product in a better way?

In sum, it is both unnecessary and logically unsound to create a rule that the process limitations of a product-by-process claim should not be enforced in some exceptional instance when the structure of the claimed product is unknown and the product can be defined only by reference to a process by which it can be made. Such a rule would expand the protection of the patent beyond the subject matter that the inventor has "particularly point[ed] out and distinctly claim[ed]" as his invention, 35 U.S.C. § 112 ¶ 6.

Claims 2 and 5 claimed product-by-process, where the product was "obtainable by" a process.

As per BASF, Abbott's claim cannot capture a product obtained by or obtainable by processes other than those explicitly recited in the claims.

In sum, a patentee's use of the word "obtainable" rather than "obtained by" cannot give it a free pass to escape the ambit of the product-by-process claiming doctrine. Claims that include such ambiguous language should be viewed extremely narrowly. If this court does not require, as a precondition for infringement, that an accused infringer actually use a recited process, simply because of the patentee's choice of the probabilistic suffix "able," the very recitation of that process becomes redundant. This would widen the scope of the patentee's claims beyond that which is actually invented--a windfall to the inventor at the expense of future innovation and proper notice to the public of the scope of the claimed invention.

One of the cases involved infringement analysis under the doctrine of equivalents.

Infringement analysis under the doctrine of equivalents proceeds element-by-element; a generalized showing of equivalency between the claim as a whole and the allegedly infringing product or process is not sufficient to show infringement. See Warner-Jenkinson, 520 U.S. at 29 ("the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole"). The primary test for equivalency is the "function-way-result" or "triple identity" test, whereby the patentee may show an equivalent when the accused product or process performs substantially the same function, in substantially the same way, to achieve substantially the same result, as disclosed in the claim. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). But, because "[d]ifferent linguistic frameworks may be more suitable to different cases," Warner-Jenkinson, 520 U.S. at 40, the function-way-result test is not the only test for equivalency. Equivalency may also be proven where the differences between the invention as claimed and the accused product or process are insubstantial. Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1517-18 (Fed. Cir. 1995) (en banc), rev'd on other grounds, 520 U.S. 17 (1997). In no case, however, may the doctrine of equivalents ignore the individual claim elements. See Warner-Jenkinson, 520 U.S. at 40 (requiring "a special vigilance against allowing the concept of equivalence to eliminate completely any such [individual] elements").

Because the claims were limited to Crystal A, "the doctrine of equivalents cannot capture crystals that are not themselves equivalent to Crystal A."

Note that the doctrine of equivalents and bioequivalency are two different things.

While bioequivalency may be relevant to the function prong of the function-way-result test, bioequivalency and equivalent infringement are different inquiries. Bioequivalency is a regulatory and medical concern aimed at establishing that two compounds are effectively the same for pharmaceutical purposes. In contrast, equivalency for purposes of patent infringement requires an element-by-element comparison of the patent claim and the accused product, requiring not only equivalent function but also equivalent way and result. Different attributes of a given product may thus be relevant to bioequivalency but not equivalent infringement, and vice versa. As the Northern District of Illinois observed in the Sandoz case, "[i]f bioequivalency meant per se infringement, no alternative to a patented medicine could ever be offered to the public during the life of a patent." Sandoz PI Order, 486 F. Supp. 2d at 776. Thus, while potentially relevant, the bioequivalency of an accused product with a product produced from the patent at issue is not sufficient to establish infringement by equivalents.

Abbott out of luck affirmed.

Judge Newman, joined by Judges Mayer and Lourie, dissented from the en banc product-by-process ruling. For 39 pages. Her eloquence ample, and her stern logic formidable, as always.

My dissent is directed as much to the court's procedure, as to the substance of the court's decision.

The court has given no notice of this impending en banc action, contrary to the Federal Rules of Appellate Procedure and contrary to the Federal Circuit's own operating procedures. The en banc court has received no briefing and held no argument, although the Federal Rules so require. The communities of inventors, innovators, and the public who may be affected by this change of law have had no opportunity to be heard. The court has received no information concerning the effect on patents that were granted based on this long-established practice, no advice on what kinds of inventions may now lie fallow because they are unprotected. Nor does the court explain its suspension of the standards of judicial process.

Judge Newman argued that the huge flaw in the majority decision regarding product-by-process is a bifurcation of construction for validity versus infringement.

Defying precedent, the en banc court adopts for all situations "the basic rule that the process terms limit product-by-process claims," maj. op. at 17, whether the product is novel or known, and whether or not the new product could not have been fully described by its structure alone. The court eliminates the long-accepted expedient for new products whose structure is not fully known. While the Scripps decision is the only decision that is mentioned as "expressly overruled," maj. op. at 17, Scripps is only one of many cases now discarded.

The en banc majority's response to the dissenters is to state that "the inventor is absolutely free to use process steps to define this product" if its "structure is either not fully known or too complex to analyze," maj. op. at 19, but to eliminate the premise that the inventor thereby obtains a product claim, not a process claim. According to the majority, a patentee can continue to obtain product claims using process descriptors, but such product claims are treated as process claims for infringement. The applicant would still have to demonstrate patentability of the new product as a product (independent of the process), while enforcement of the patent against an identical product would be limited to the infringer's use of the process steps used as a descriptor. For the first time, claims are construed differently for validity and for infringement.

It has been an inviolate rule that patent claims are construed the same way for validity and for infringement. See, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 324 F.3d 1313, 1330 (Fed. Cir. 2003) ("It is axiomatic that claims are construed the same way for both invalidity and infringement."); Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) ("Because the claims of a patent measure the invention at issue, the claims must be interpreted and given the same meaning for purposes of both validity and infringement analyses."); C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1363 (Fed. Cir. 1998) ("Claims must be interpreted the same way for determining infringement as was done to sustain their validity."); Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) ("Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers."); Beachcombers, International, Inc. v. WildeWood Creative Products, Inc., 31 F.3d 1154, 1163 (Fed. Cir. 1994) ("We have already interpreted the claims for purposes of assessing their validity. The same claim interpretation of course applies to the infringement analysis."); Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1583 (Fed. Cir. 1991) ("claims must be construed the same way for validity and for infringement"); Smithkline Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878, 882 (Fed. Cir. 1988) ("The claims of the '970 patent measure the invention at issue; thus, the claims must be interpreted and given the same meaning for purposes of both validity and infringement analyses."); see also 5A Chisum on Patents §18.01 (2007) ("A fundamental tenet of patent law is that a claim must be interpreted consistently for purposes of infringement and validity."); id. §18.03[2][h] (collecting cases).

As interpreted for validity, the claims obtained under the expedient of necessity are product claims, and are subject to the requirements of novelty, unobviousness, and all other requirements for new products, independent of how the products can be made. My colleagues hold that these are product claims for validity, but process claims for infringement. Departure from the rule that forbids such deviation requires sound reason, and fuller exploration than the cursory brush-off dispensed by my colleagues.

The majority's change of law simply imposes unfairness as well as legal error on patent-supported advances.

Judge Lourie had his own beef, of historical bent.

I agree that there is substantial Supreme Court precedent that holds that product-by-process claims require use of the recited process for there to be infringement. However, many of those cases applied overly broad language to fact situations involving old products or used vague language that makes it difficult to determine whether the products were old or new. Clearly, however, when a product is old, a product-by-process claim cannot be interpreted as a claim to the product made by any means. The product is old and unpatentable per se. BASF in fact involved an old product. See Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293, 311 (1884) ("It was an old article.").

Judge Lourie would treat product-by-process as essentially product claims.

There is arguably a different situation that should apply to chemical-biological products today than to mechanical products of more than a century ago. When a product is new and the inventor claims it by a process of preparation, I fail to see why the product-by-process claim should not be interpreted as a product claim that can be infringed even when the product is made by means other than that recited in the claim. Supreme Court precedent dealing with old products, while utilizing broad language, does not foreclose that possibility. The Court years ago did not have occasion to consider today's innovations or decide whether a distinction should be made between a new chemical-biological product and an old product made by a new process.

It may be that with today's analytical techniques there is little need for product-by-process claims. After all, claim 1 of the Abbott patent is a claim to a compound, not only by name, but also by certain of its characteristics. A claim to a product defined by its characteristics or properties surely is a proper claim.

However, product-by-process issues still seem to come before us and I would make a distinction between old products and new products in interpreting product-by-process claims.

Judge Lourie's metric would be rent with the foolery that Judge Newman derided, requiring first validity analysis to determine "a distinction between old products and new products in interpreting product-by-process claims." A legal Schrödinger's cat, quite peculiar that Judge Lourie sat on both sides of the same fence.

Posted by Patent Hawk at May 19, 2009 9:15 PM | Claim Construction

Comments

I hope this thread will throw light on whether there is a legitimate need for "obtainable" claims, used as a matter of routine, in Europe, on each of those rare occasions when the only way there was, to define the new macromolecule product with precision, at the filing date of the application, was to recite in the claim the method that the inventor used to make it. Later, tests such as X-ray diffraction can prove that the infringer has the same thing, even if still not exactly what the formula of the macromolecule is.

The funny thing is, the EPO is satisfied that there is a need for such claims, and issues a lot of them, while some of the patent practitioners on the Patently-O thread doggedly assert there is no need under the sun for such claims. Who's right?

Posted by: MaxDrei at May 19, 2009 10:11 PM

It is interesting to see a more earnest side of MaxDrei. Typically an instigator, now on the defensive.

MaxDrei, let me see if I have your question in proper context. Who is more right, a diverse yet settled continent or a few babbling fools on a US patent blog?

One presumption (which runs with almost every one of a MaxDrei post) is that the matter of "right" needs to be settled into the appropriate body and jurisdiction of law. So much of MaxDrei's otherwise possibly interesting questions are lost in the Noise with the (purposeful) mixing of legalities and forums. Trying to shoehorn the US system into the Euro system simply will not suffice and generally is counterproductive. In this (and most) instances, the question that MaxDrei asks needs to be broken down into a US question and a Euro question. In the immediate instance, this distillation destroys the question and reveals that MaxDrei has not formulated the question appropriately and any proferred answer is more or less simply additional Noise.

MaxDrei, perhaps you can try your question again, this time citing an example form the euro side highlighting the value of "obtainable" claiming that would be lost in the new US jurisprudence.

Posted by: Noise above Law at May 20, 2009 3:24 AM

Product-by-process (PBP) claims cover products and their distinguishing physical characteristics. Period. To be patentable, the products must distinguish physically over the prior art.

A process of manufacture can inherently produce unique physical characteristics in a product; if these characteristics are not fully known or characterizable by applicant, the product may as a matter of convenience for applicants be claimed a product of that process, thus incorporating any physical characteristics into the product claim which the process inherently produces.

If you claim a PBP as a matter of convenience (rather that determining the unknown or uncharacterized product characteristics), don't expect the claim to cover the identical uncharacterized product characteristics made by other processes: you have, as a matter of convenience, limited your claim coverage to the process recited in your claim.

CASE 1:
Invention: (PBP Claim: "ABC made by process D" to inherently produce product ABC$%)
Prior Art: (ABC made by process J to inherently produce prior art ABC$%)
Claim invalid.

CASE 2:
Invention: (PBP Claim: "ABC made by process D" to inherently produce product ABC$%)
Prior Art: (ABC made by process F to inherently produce prior art ABC$&)
Patent Valid.
Infringer: ("ABC made by process V" to inherently produce product ABC$%)
Non infringement.

CASE 3:
Invention: (Product Claim: "ABC$%")
Infringer: ("ABC made by process V" to inherently produce product ABC$%)
Infringement

The product-by-process language is a matter of convenience for applicants. Ergo:

If the PTO finds the same product (e.g. made by another process), the PBP claims as written are not patentable, per the rules of a product claim.

If an infringer uses another process, the PBP claims as written are not infringed, even if the same product was produced by the other process, since applicant chose (as a matter of convenience) to limit himself to the claimed process (for defining the distinguishing physical characteristics) in his claims. If you don't want to be limited to the process, choose some other way of physically distinguishing your claims. If you know of no other way to physically distinguish your claim, you certainly haven't enabled how to use other processes for making your product, and your disclosure does not warrant such broad protection.

There is no logical inconsistency here. (I have not attempted to address the doctrine of equivalents, which is another can of worms.)

Posted by: niRPa at May 20, 2009 4:36 AM

If the patentee chooses to recite a product in product-by-process terms, it seems utterly foolish to not hold the patentee to the process limitations written into the claim. Nobody held a gun to the patentee's head forcing the claims to be written in this fashion.

IOW, the majority decision makes sense.

Product-by-process claims, even according to this decision, still can make sense to have. The royalty calculations (and the identity of the infringers) differ for product-by-process claims relative to process claims.

P.S. What Noise said.

Posted by: pikkumatti at May 20, 2009 4:36 AM

Regret, Noise, that I don't understand the criticism. Not being chem/bio myself, I don't have my own pet examples of "obtainable" claims, to a product that defies clear definition, except by the steps of the process the inventor used to get there.

But I gather that such situations have been relatively common, in recent years, in Pharma/Bio. The public policy issue (what claims are valid) is where different jurisdictions might differ. But, on scientific fact, that should be the same everywhere, regardless of the state of the law. My question was about the scientific fact. Are there in truth such compositions. Or not?

Posted by: MaxDrei at May 20, 2009 5:36 AM

niRPa,

I would like to believe you, as I do not have personal experience with this area and you tend to document your thought process in sufficient detail to follow along. I would like to believe you, but I cannot (yet).

Merely stating "no inconsistency" isn't convincing. "A distinction without a difference" is the phrase that comes to mind. We seem to be saying "A product is a product is a product", but "a product claim is not a product claim is not a product claim".

In your Case 1, the product is ABC. Period. ABCS% either is ABC, or it is not. Process D not being equal to process J is immaterial.

Again, in Case 2, the product is ABC. Period. ABCS% either is ABC is ABCS&, or it is not. To my common sense view, if the products are the same, then the distinctions of S% and S& simply do not matter for a product or product claim (a claim to a process is a different matter). The product IS or the product IS NOT.

Non infringement only makes sense if the question becomes larger than is ABC IS ABC. If ABC by process1 is patentably distinct from ABC by process2, then the finding of non-infringement may make sense. But this needs to be applied evenly through both prosecution and post-prosecution in order to maintain equity.

Applying distinctions on what is in play (class one of pure product vs. class two of product by specific process vs class three pure process) differently based on whether you are in prosecution or whether you are in post-prosecution just seems inescapably inequitable. Admittedly, I am stuck at this point.

Your Case 3 only makes sense if ABC is the same as ABCS%, in which case the distinction of S% is a distinction without a difference, and if so then who cares if process V is not the same as process J – The product IS identical. Or is it? In other words, the Product claim in a PBP is NOT the same as a pure Product claim (ABC does not equal ABC(?)) – Again – my common sense view is either the product is the same or it is not.


The issue does seem to be setting a double standard between prosecution and post-prosecution, and that double standard is what is most troubling.

Posted by: Noise above Law at May 20, 2009 9:33 AM

"The issue does seem to be setting a double standard between prosecution and post-prosecution, and that double standard is what is most troubling."

Yeah, it's really troubling. Let's hold hands.

Posted by: Frightened and Confused at May 20, 2009 9:43 AM

Noise, there are simple manufacturing steps (heat treating, annealing, quenching, aging, etc.) which change an alloy's crystallography ($%) and its properties without changing its constituency (ABC). The crystallography ($%) though inherent may not be understood. In such a case, the crystallography ($%) is not claimable. The treated alloy (ABC$%) can still be claimed using product-by-process.

Posted by: niRPa at May 20, 2009 10:05 AM

I take the same position as Nirpa and yet there are those amongst attorneys who would disagree with us.

"Not being chem/bio myself, I don't have my own pet examples of "obtainable" claims, to a product that defies clear definition, except by the steps of the process the inventor used to get there."

I was wondering why you were having such trouble with the subject.

"My question was about the scientific fact. Are there in truth such compositions. Or not?"

Actually, your question was directed to the presence or lack thereof of a "need" for such claims.

This is a separate issue from whether or not those compositions do exist.

The answer to your question is "yes, they do exist, and they are more rare than a 10 headed dragon"

The real elephant in the room is that we're giving out presumption of validity for claims where all too often the office doesn't even have a clue as to what the scope of the claim is.

And I understand where noise comes from. I do believe that if they were going to make this "change" then they needed to make changes to the examination standards as well so that the double standard goes away.

Specifically, they need to just bite the bullet and make the product by process claim a hybrid of the two stat classes and say that the product being made by the process must be novel/nonobvious, rather than only the product.

They might even should go ahead and toss out the "option of last resort" aspect to being allowed to utilize the claim type. One guy shouldn't get to utilize this claim format and get a claim to a product that is old, but that nobody can tell is old until much later after examination because he didn't tell us what the structure was, where another guy who actually can tell the office what his structure is cannot get a patent because he clearly presented his invention to the office. It isn't fair to the competent people, and is biased towards the people who don't know wtf they're working on. If we're going to let some people cheat a little on the sides, we may as well let everyone.

Posted by: 6000 at May 20, 2009 10:39 AM

"In such a case, the crystallography ($%) is not claimable. "

You know what is funny though Nirpa? You could claim the crystallinity, in the product by process format like you said, but notice how closely this mirrors what routinely goes on in the bio field with "isolated" genes.

You could claim, a product comprising: ABC wherein the crystallinity of the product is goobledegoock word (I am my own lexicographer in the spec to define the word to be the crystallinity which results from the process). This is no different than what the bio magicians do when they put the word "isolated" before "gene" in the preambles of claims in order to pass 101. They should be understood, just as in my example, I should be understood, to have made a product by process claim. Isolated is nothing more than a reference to it having been put through an isolating process in its formation. But while you might see the courts catch me making a product by process in that example, they have yet to call the bio folks out.

Posted by: 6000 at May 20, 2009 10:48 AM

I am not able to intelligently discuss product by process claims, but this really speaks to me:

The court has received no information concerning the effect on patents that were granted based on this long-established practice, no advice on what kinds of inventions may now lie fallow because they are unprotected.

I really wish the courts would stop making broad swaths of issued patents no longer enforceable every year or so.

Posted by: tazistan Jen at May 20, 2009 11:07 AM

6K, there is nothing wrong with your "a product comprising: ABC..." claim, as there is nothing wrong (I believe) with isolated gene claims. The only thing wrong is how you misconstrue, "In such a case...."

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=5047091.PN.&OS=PN/5047091&RS=PN/5047091

Posted by: niRPa at May 20, 2009 11:25 AM

niPRa,

Well, I think we are closer.
No I don’t. But I think at least I see where we are still apart.

You provided a further example of a Product, a treated alloy and used ABC as "constituency", yet revealed that simple manufacturing steps (heat treating, annealing, quenching, aging, etc.) can change ABC's properties such as crystallography ($%). You then say that the treated alloy (ABC$%) can still be claimed using product-by-process. I agree but not for the reason you might think. I posit that the steps have changed the product and we are no longer talking the same product. The first ABC no longer equals the second ABC (or rather, ABC does not equal ABCS%). Constituency is not the sole determinant of a product. Not all products with the same constituency are the same product, and claims to products with the same constituency do not necessarily anticipate nor infringe. Since one product has different properties than the other, a claim to ABC and a claim to ABCS% are claims to two distinct products.

Or to use a different example, I claim a Penny made by process X. You claim a Nickel, also made by process X. There is no doubt that even though we both claim metal coins made by the same process X, we are claiming distinct products. Let’s further say that in my patent I claimed both product Penny and product Penny made by process X. Let’s say there is prior art, a product Penny is claimed by Lincoln. Lincoln made his Penny by process Y, a very different and more expensive process than process X. (Y?, becuase he did not know X, I invented X, a real treasure spot). But Lincoln’s Penny and my Penny are exactly the same product.

I put to you that my claims to product Penny and the relation to the prior art of Lincoln should not matter when the prior art Lincoln arises (or conversely, if Lincoln comes after and I charge him with infringement). Both the product claim and the product by process claim should suffer (or be rewarded) with the same fate. IF they are exactly the same product. A Penny IS a Penny.

Let’s say for a moment that Lincoln’s Penny (made by process Y) and my Penny (made by process X) are NOT exactly the same, although having the same constituency, they have different properties. I would further posit that although I called my product Penny, it is inherently NOT the same as Lincoln’s Penny based on the different properties. One of common sense may call my Penny a New and Improved Penny. To hold that Lincoln’s Penny anticipates my New and Improved Penny (with different properties) would clearly be a mistake. Further, to base a particular holding PURELY on the relative timing of my application/patent has not been (and cannot be) squared in terms of equity (your follow-on post did not address the equity issue).

A Penny is a Penny and is not a Nickel, nor is it a New and Improved Penny.

Now, if I had claimed the process of making metal coins by process X before you gave out your Nickel, you and I might be negotiating a license for you to get your Nickel back.

A penny for your thoughts…

Posted by: Noise above Law at May 20, 2009 12:48 PM

"a claim to ABC and a claim to [the new] ABC$% are claims to two distinct products"

Yes. Now what if you don't know what ($%) is because you don't have access to X-ray diffraction equipment. You can't claim what you don't know. So how can you still claim the new product you've made? One not-so-perfect answer: product-by-process....

"But Lincoln’s Penny and my Penny are exactly the same product."

"I invented [process] X"

Then you can't get a product claim or a product-by-process claim. You invented a process, and you are entitled to a process claim. That's all.

"Both the product claim and the product by process claim should suffer (or be rewarded) with the same fate. IF they are exactly the same product."

That is correct - if they are exactly the same product, they should both suffer.

"To hold that Lincoln’s Penny anticipates my New and Improved Penny (with different properties) would clearly be a mistake."

That is correct.

Posted by: niRPa at May 20, 2009 2:13 PM

OK niPRa,

So you basically agree with all of my sub-points. You haven't made your argument and in fact, agree to mine.

Is that all my penny gets?

I am disappointed - you have got to have more, right?


"Now what if you don't know what ($%) is because you don't have access to X-ray diffraction equipment. You can't claim what you don't know. So how can you still claim the new product you've made? One not-so-perfect answer: product-by-process...."

Well, I'm not sure I agree with you completely. Since 35 USC 103(a) states "Patentability shall not be negatived by the manner in which the invention was made." a non-educated person literally stumbling upon some material he has accidently made does not have to know a lot about the product in order to claim the product. If he can meet the requirements of Law (such as enablement - he does know the process of making and using the product), patentability will NOT be denied even if the inventor does NOT "know" what he claims. I like to belive that this type of patentability is every bit on equal footing with the advanced scientists' "knowing" product. There is also a little thing called inherency that plays havoc with your logic (but that's another discussion).


"If you claim a PBP as a matter of convenience (rather that determining the unknown or uncharacterized product characteristics), don't expect the claim to cover the IDENTICAL uncharacterized PRODUCT characteristics made by other processes". - my emphasis

So I claim a product (even if I claim product by process, I am still claiming a Product) and an identical product (identical in EVERY WAY, albeit made by a different process) won't be covered by my claim? How is this not logically inconsistent?

One possible counter argument is that since claim limitations involve process steps, we must meet every claim limitation. At best, this logic gives you a subset of Product: Product by Process X.

Try to explain the "logical consistency" that this line of logic will excuse infringement of later Product (if not belonging to subset Product by Process X), YET, that very same non-infringing item would anticipate if it were prior art?

Now put that explanation in a common sense vernacular.

You will pardon me if I do not hold my breath.

Posted by: Noise above Law at May 20, 2009 3:45 PM

"You haven't made your argument and in fact, agree to mine."

Noise, sorry, I made my point with my first post, even if you didn't understand it.

"you have got to have more, right?"

Not for you, sorry.

Posted by: niRPa at May 20, 2009 4:06 PM

niRPa running circles around NAL who is trying very very hard not to understand.

NAL: "If he can meet the requirements of Law (such as enablement)"

What about written description requirement of 112? Here's the deal: if you can't describe your composition, then you haven't conceived. You've conceived the process for making the goop and maybe even a method for using the goop. But you haven't conceived of your goop until you have a fixed and permanent idea of what your goop is and if you can't even be bothered to describe your goop in such a way that an infringer can be reasonably certain he is in possession of your goop or someone else's goop, then you don't deserve a patent on the goop itself.

Posted by: Honest Abe at May 20, 2009 4:16 PM

"Since 35 USC 103(a) states "Patentability shall not be negatived by the manner in which the invention was made." a non-educated person literally stumbling upon some material he has accidently made does not have to know a lot about the product in order to claim the product."

According to this theory, the "non-educated person" is entitled to claim "A product by process, wherein said product is literally stumbled on by the named inventor." Any objections raised to such a claim would be "inconsistent" with 35 USC 103(a) and thus the claim must be valid.

Somehow I'm not convinced.

Posted by: Honest Abe at May 20, 2009 4:22 PM

"if you can't describe your composition [structurally?], then you haven't conceived."

Sorry Abe, I hate to look a gift horse in the mouth (thank you for your kind post), but I don't think that's entirely true.... Permit me to lift part of a Newman opinion from the 271 Patent blog:

"Product-by-process claims are not specifically discussed in the patent statute. The practice and governing law have developed in response to the need to enable an applicant to claim an otherwise patentable product that resists definition by other than the process by which it is made. For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d Cir.1935)."

I think the only time you should use product-by-process is when you can't describe the composition except by reference to the process by which it was made (for example, the minutia of the composition structure is not fully known and hence cannot be described).

Please see Peter Zura's whole post:

http://271patent.blogspot.com/2009/05/short-note-on-patentability-of-product.html

Posted by: niRPa at May 20, 2009 4:33 PM

niPRa,

I'll give you 6 guesses as to the identity of Honest Abe, even spotting you a clue (complete butchery of the Law(lol))

You are indeed wise to look THAT gift horse in the mouth, even if the horse's name wasn't Trojan.

P.S. - your first post was pointless - as I began, merely stating "no inconsistency" isn't convincing.

Posted by: Noise above Law at May 20, 2009 4:46 PM

niRPa "Sorry Abe, I hate to look a gift horse in the mouth (thank you for your kind post), but I don't think that's entirely true.... "

You are relying on a Newman dissent that cites 40 year old CCPA cases for your rebuttal? I believe the law has evolved considerably since that time, which is one of the many reasons that the Federal Circuit convened to remove the incentive for using the format.

"I think the only time you should use product-by-process is when you can't describe the composition except by reference to the process by which it was made (for example, the minutia of the composition structure is not fully known and hence cannot be described)."

Patent law does not require that all of a composition's "minutia" be known to be claimed. Likewise, all "minutia" are not necessary in the non-patent world for an object to be fairly described. What is required is that the invention is conceived in a fixed and permanent manner and described such that a reasonable person of skill in the art would understand what the composition is. Such a description must be in the form of a picture or words on the paper. The skilled artisan can not be required to make the composition in order to understand what is covered by the claims. That, after all, is what claims are for.

Posted by: Honest Abe at May 20, 2009 7:08 PM

"6K, there is nothing wrong with your "a product comprising: ABC..." claim, as there is nothing wrong (I believe) with isolated gene claims. The only thing wrong is how you misconstrue, "In such a case....""

I'm not saying that there is something wrong with them. I'm saying that the isolated gene claims are product by processes due to the use of the word "isolated". They are making a reference to the process by which the current product was formed.

Thus, it should be construed as a product by process. However, to date, I haven't heard of this being the case.

"You can't claim what you don't know."

That's what it all boils down to. Under the old regime they could. They'd still like to be able to. I kind of have sympathy for them "needing" (wanting) to sometimes. But it just goes against the statute, and the whole spirit of the quid pro quo. I'm surprised that it ever got the special consideration that it did.

"Then you can't get a product claim or a product-by-process claim. You invented a process, and you are entitled to a process claim. That's all."

But but but, I NEED a product claim. Lol.

"So I claim a product (even if I claim product by process, I am still claiming a Product) and an identical product (identical in EVERY WAY, albeit made by a different process) won't be covered by my claim? How is this not logically inconsistent?"

It is logically inconsistent until you throw into that mixture that in the product by process claim situation you couldn't be bothered to actually tell us what the product was. We gave you an extra statutory claim, it is not unreasonable to impose extra statutory limitations. Would you not agree?

"YET, that very same non-infringing item would anticipate if it were prior art? "

That's the biggest catch about using the product by process form. Until they change it that is.

And no, I'm not honest abe, though I do like that guy. He can hang around with the cool kids.

Idk about the conception issue raised above, indeed I've raised it before myself. But I don't know enough about the law on "conception" to speak definitively. Either way, it is very difficult in my mind to say you've invented something that you can't describe. And, I feel like the issue isn't that the something cannot be described, the issue is that it cannot be described in such a way as to distinguish it from the prior art. The chief judge has already expressed his view that those kinds of claims should be casualties of the system. I concur in so far as the system should change if there is a need for it to, we shouldn't be going outside the system because there is a need.

Oh, and what abe said at the end.

Posted by: 6 at May 20, 2009 10:37 PM

"You are relying on a Newman dissent that cites 40 year old CCPA cases for your rebuttal?"

The quote was from In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985) where Judge Newman wrote the unanimous opinion.

"The skilled artisan can not be required to make the composition in order to understand what is covered by the claims."

Well, then your beef is with all product-by-process claims, and with Judge Newman, the Abbott majority, SCOTUS, TOTUS, and the PTO.... no, you're not 6K.

"It is logically inconsistent until you throw into that mixture that in the product by process claim situation you couldn't be bothered to actually tell us what the product was."

It is not logically inconsistent because the "invention" that you've taught how to make and use is not a product per se made by any process - it is a "product made by a particular process" - you yourself don't know how to make it by any other process (or if you do, you've poorly prosecuted your claim by including unnecessary limitations... and welfare hasn't made it claim interpretation, yet, in that way.) Your invention is much narrower than a generic product made by any means. The PTO only considers it a product for patentability determination because that is the closest statutory class. And as Abe says, that the PTO treats product-by-process claims as products has been well settled for more than 40 years. The 1952 Patent Act (and judicial interpretation thereof) requires it.

[Over and out.]

Posted by: niRPa at May 21, 2009 2:25 AM

niRPA: "The quote was from In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985) where Judge Newman wrote the unanimous opinion."

I apologize. I've seen the same argument presented in Newman dissents. I maintain that it's dicta and worthless dicta, particularly now.

And I'm going to repeat something I wrote upthread because you didn't understand: "The skilled artisan can not be required to make the composition in order to understand what is covered by the claims."

When I refer to the skilled artisan, I am referring to the competitors and/or alleged infringers. This statement is 100% consistent with the Abbott majority and is one of the central facts, if not the most important fact, justifying their holding that product-by-process claims must be construed as method claims for infringement purposes (see pages 20-21 of the opinion).

Note that for invalidity/patentability purposes, a product-by-process claim can be invalidated either by showing that the product was old *or* that the claimed method was old. There is no prohibition against reading the method steps for that analysis. The rule -- entirely consistent with the law of anticipation -- is that an old product can't be patented by a product-by-process claim. So if it is demonstrated or admitted that the recited process yields an old product, the claim is toast. Consider the implications of that fact in the situation where the recited process uses "comprising" language.
If contemplating that task makes your head hurt, then you have taken another step towards understanding why the Federal Circuit pulled the rug from under the p-b-p paradigm.

Posted by: Honest Abe at May 21, 2009 8:19 AM

"The skilled artisan can not be required to make the composition in order to understand what is covered by the claims."

[Sorry, yes you are correct twice on this point assuming no infringement of the method. But if there is infringement, then the only way the artisan will know what product is covered by the PBP claim (i.e., for purposes of invalidating the claim by the first method you mentioned) will likely be to make it, since applicant has likely not disclosed the product minutia. So your argument does go to the heart of PBP claims, is for this reason perhaps not consistent with the Abbott majority.]

Posted by: niRPa at May 21, 2009 8:59 AM

"But if there is infringement, then the only way the artisan will know what product is covered by the PBP claim (i.e., for purposes of invalidating the claim by the first method you mentioned) will likely be to make it, since applicant has likely not disclosed the product minutia."

This is true except in the case where the infringer can show that his product existed in the prior art.

Note also that if the recited process uses comprising language then all bets are off because adding additional steps would allow one to synthesize virtually any composition.

Thus, the only compositions of relevance for this purpose would be the composition(s) actually obtained and "disclosed" in the specification, i.e., those compositions that were in fact made (but not described) by following the precise, specific, and unambiguous steps set forth in the specification.

Posted by: Honest Abe at May 21, 2009 9:29 AM

Honest Abe,

The use of "comprising" language does NOT allow unconditional and drastic changes to recited process claims.

Posted by: breadcrumbs at May 21, 2009 1:47 PM

"The use of "comprising" language does NOT allow unconditional and drastic changes to recited process claims."

He is not saying that it does. He is saying that it allows unconditional and drastic changes to the recited product as a result of the infinite variety of extra steps that can be included with the recited steps. You could, for instance, perform the recited process, get a product (a beachball perhaps), continue with the process outside of the recited process limitations because remember, the method only "comprises" those steps, burn the whole product to ash, disolve that ash in a liquid, do some other chemical things to the ash, and come up with a chunk of something that is a product that is nothing like the product in the spec.

That is the reason for his concern, amongst others. And it is a concern that is duly noted, and has been noted before.

Posted by: 6000 at May 21, 2009 2:10 PM

"...allows unconditional and drastic changes to the recited product..."

C'mon 6000, if this is your stand, then you must reject EVERY use of "comprising" in product patent applications. So tell me, since this has been noted before, where exactly has this stand taken you? How many such rejections (and there must be thousands) have been sustained?

Your briar patches are pathetic.

Posted by: Noise above Law at May 22, 2009 5:07 AM

"C'mon 6000, if this is your stand, then you must reject EVERY use of "comprising" in product patent applications."

You are confusing the issues, Noise.

We are talking about infringement of a product-by-process claim. The fatal flaw in attempting to determine the scope of protection given to the "product" of the process, as recognized by the Abbott court, is that the product is not described by the claim. Instead, the process is described.

If I claim a method of making a composition using "comprising" language and a standard method claim, and you practice all the steps in my method, it doesn't matter if you practice additional steps including a step that completely transforms the composition to one that I never contemplated. You still infringe my method. That's the law. I conceived of my method. I described it. It was new. I get a patent.

What 6000 and I are explaining to you is that the now-defunct "Newman-type" product-by-process claim using comprising language turns the quid pro quo on its head. It allows a patentee to sue competitors for selling compositions that were never conceived or described by the patentee, and which were made according to methods that were never conceived or described by the patentee.

Does that result not strike you as somewhat inconsistent with our patent laws?

Posted by: Honest Abe at May 22, 2009 9:52 AM

"C'mon 6000, if this is your stand, then you must reject EVERY use of "comprising" in product patent applications."

Um, no I don't. You are plainly confused as to what my stand is. Reread my post and try again to comprehend what is transpiring. I know the difference between step limitations and structure limitations is a daunting one for many. Try to wrap your mind around it.

I wasn't the one to take this stand first btw, and neither is Abe, I'm just repeating what has been said other places, years before now.

Posted by: 6000 at May 22, 2009 11:58 AM

"I'm just repeating..."

Sort of like - quoting out of context.

That's twice now you've run away from the quoting out of context challenge. Want to make it three for three?

Posted by: Noise above Law at May 22, 2009 1:42 PM


"Sort of like - quoting out of context."

Noise above Law, I'd like to respectfully ask you something. Do you have a problem?

Seriously. Is there something you want to say but for someone reason you just aren't coming out and saying it? You do not seem at all interested in discussing this case or the underlying facts, but rather you seem interested in picking a fight for the sake of the fight.

Posted by: Honest Abe at May 22, 2009 2:19 PM

Honest Abe,

I am not picking a fight - I'm trying to end one with 6 and his briar patch ways. You are merely seeing the tale end of discussions from another blog.

...and this has what to do with you? It seems you entered trying to pick a fight with me, with the inane comment about my being run circles around and trying very hard not to understand. I set up some very straight-forward questions to niPRa which only were answered in the direction I posited. I was looking to understand something put forward without backing and jumped in my face.

Now you calm done, apologize to niPRa and wonder why I seem excited? Abe, let's try being honest, OK?

Posted by: Noise above Law at May 22, 2009 8:36 PM

"Seriously. Is there something you want to say but for someone reason you just aren't coming out and saying it? "

All he wants to do is call me a doody head because I "run circles around him". It is shameful. Also, he wants me to retype a rather long and involved post that got eaten by the PO site awhile back wherein he was getting thrashed on his fav case. The discussion was practically ended at that point anyway, but I had rehashed everything for him in what I'd hoped was clearer terms. He presented his position, I clearly presented a masterfully differing position (this is what he refers to as going into my briar patch as it is where he cannot follow because of limited understanding), he continued to talk as per his standard operating procedure, and I got my last words cut off. It will take a Fed Circ. decision to quiet him down. Never the less, I shall away and return to the topic for him now.

I really do wish that typepad would get their posting in order, I have to copy/paste everything I write to get it to post. Forget to copy? Well, I'm fed. It's the same issue on both Patent Docs and PO.

Posted by: 6000 at May 24, 2009 7:30 AM

Posted by: 6000 at May 24, 2009 9:29 AM

6,

That's 4 for 4.

The challenge you are running from is not Alappat. It's quoting out of context:

"Give the man some more rope - 6, did you not notice the phrase “under the law”?" Did you notice what precedes it? Context, that's what.

Let's try this rope - you sound byted out of context. I put your sounbyte in context by supplying you with the critical phrase and even explained what that phrase does to your "logical" position. Your reply is that I have to pay attention to context. No 6, you have been caught (again) with your pants down playing your parlor tricks. Not that anyone believes your spinning (or can stop you from trying to spin out of this), but how is my adding context to your rendition of USC 151 "out of context"?"

C'mon, 6, no more excuses. Man up.

Posted by: Noise above Law at May 26, 2009 3:13 AM