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January 5, 2010


The noxiousness of the faux first-to-invent regime that the U.S. alone clings to is seldom exposed to the harsh daylight of the appeals court. Philips got its pulse up over a patent it inherited when it drew the short straw in a BPAI interference against Cardiac Science. Philips sued in Washington district court, where the judge sua sponte ditched the case with prejudice, provoking appeal. The CAFC reminded of the intricate rules that the PTO ignored, and the district court failed to heed.

Koninklijke Philips Electronics N.V. v. Cardiac Science (CAFC 2009-1241) precedential

Carlton B. Morgan and three other engineers invented a defibrillator that resulted in 6,241,751, which was originally assigned to Agilent Technologies before landing in Philips' hands.

The '751 patent is an improvement patent on a previous cardiac defibrillator, U.S. Patent No. 5,749,904 (the "Gliner patent")... In sum, the '751 patent discloses a defibrillator with a set of capacitors arranged according to both "patient impedance and desired energy level." Id. at [57].

Cardiac Science filed a patent application, the "Owen application," for a multiple-capacitor cardiac defibrillator, and provoked an interference with '751.

During the interference proceedings, Philips filed five preliminary motions in an effort to terminate the proceedings.

Motion 2 was an argument that an Owen claim was anticipated by Gliner.

Motion 4 was an asserted that Owen failed "failed to provide an adequate written description as required under § 112, ¶ 1." The Board dismissed that, "opining that "Morgan[, the '751 patent inventor,] has [presented] no basis for construing Owen's claims in light of definitions contained in Morgan's specification." The Board explained that the '751 patent's written description was irrelevant to its analysis under the PTO's interference procedures. The Board cited one regulation in particular as authority to disregard the '751 patent in construing the claim term in the Owen application: "A claim shall be given its broadest reasonable construction in light of the application or patent in which it appears." 37 C.F.R. § 41.200(b) (2009) (emphasis added)."

Motion 5 was "expressly contingent on the Board broadly interpreting the term "impedance-compensated defibrillation pulse" to include a capacitor configuration based only on patient impedance, but not based on desired energy level." That construction didn't happen, so the Board dismissed that motion.

[T]he Board opined that determining claim 38's patentability was "not essential for this interference." The Board assumed that the primary examiner could determine whether Owen's claim 38 was anticipated or obvious ex parte after the interference proceeding concluded.

"After denying all of the Philips' motions, the Board" gave Owen priority, whereupon Philips brought suit in the Western District of Washington, seeking review of motions 2, 4, and 5.

After the parties submitted their briefs, the court held a hearing to discuss the Board's rulings on Philips' preliminary motions. During that hearing, Philips' counsel advised the court that Philips "would be asking for a trial if there's no claim construction here" to relitigate the five motions before the Board and to argue no interference in fact. Counsel stated that Philips "can introduce evidence, live evidence to this Court at trial. That's what we intend to do if there's no claim construction in the case."

After the hearing, the district court denied Philips' motion for a claim construction hearing and sua sponte dismissed the complaint with prejudice. The district court affirmed all of the Board's decisions, finding that the Board's "reasons for denying or dismissing each motion were grounded in the application of the Board's own procedures and regulations."

The CAFC overturned the district court's sua sponte dismissal.

[A] district court in the Ninth Circuit may enter summary judgment (1) as long as the losing party has had a full and fair opportunity to present arguments and (2) the parties have no genuine dispute as to a material fact.

Because the district court ignored Philips' request to present new evidence and never heard Philips' argument that the '751 patent had priority, the court did not give Philips a full and fair opportunity to ventilate the issues raised in its complaint and improperly entered summary judgment under Ninth Circuit law. See Grayson, 879 F.2d at 625.

The material facts in dispute related to the Owen application being complaint with § 112, ¶ 1, and whether Gliner anticipated Owen's claim 38.

This court has held that genuine issues of material fact as to written description and anticipation preclude summary judgment. See, e.g., Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1332 (Fed. Cir. 2009) (holding that genuine issues of material fact with respect to anticipation, obviousness, and lack of enablement precluded summary judgment); SunTiger, Inc. v. Scientific Research Funding Group, 189 F.3d 1327, 1334 (Fed. Cir. 1999) (holding that a genuine issue of material fact as to written description precluded summary judgment).

The Board, and the district court, by affirming the Board, left hanging the patentability issues when they should have been addressed as part of the interference. The distinctions of how the issues are to be addressed are nuanced, based on three precedents: Spina, Agilent, and Rowe.

Congress has charged the Board with resolving questions of priority of invention in an interference proceeding when more than one party seeks to patent substantially the same subject matter. 3A Donald S. Chisum, Chisum on Patents § 10.09[1][a] (2005). By statute, the Board "shall determine questions of priority of the inventions and may determine questions of patentability." 35 U.S.C. § 135(a) (2006). This court has held that "the Board should decide issues relating to priority and patentability that are fairly raised and fully developed during the interference, despite the permissive language of § 135(a) with respect to patentability issues." In re Gartside, 203 F.3d 1305, 1317 (Fed. Cir. 2000); see also Schulze v. Green, 136 F.3d 786, 791 (Fed. Cir. 1998) ("[B]y combining the two boards, 'all issues of patentability and priority which arise in an interference can be decided in a single proceeding rather than in a series of complicated inter partes and ex partes proceedings.'" (quoting 130 Cong. Rec. 28,065, 28,072 (1984) (statement of Rep. Kastenmeier))); Perkins v. Kwon, 886 F.2d 325, 328 (Fed. Cir. 1989) ("[I]ssues of patentability and priority that have been fully developed before the Board should be resolved by the Board."). Pursuant to § 135(a), the PTO has issued procedural regulations that govern interference proceedings. See, e.g., 37 C.F.R. §§ 41.200-.208 (2009). The Board and district court relied on one of those regulations in deciding Philips' written description challenge on procedural grounds. That regulation governs claim construction in an interference proceeding: "A claim shall be given its broadest reasonable construction in light of the specification of the application or patent in which it appears." 37 C.F.R. § 41.200(b).

In Spina, this court considered which specification was relevant when interpreting a claim for a written description challenge. 975 F.2d at 856. The court agreed with the Board's approach: "When interpretation is required of a claim that is copied for interference purposes, the copied claim is viewed in the context of the patent from which it was copied." 975 F.2d at 856. Though the Board chose the relevant specification on which to interpret Charles Spina's claim, the court reversed the Board's claim construction on different grounds. See id. at 857-58. After Spina, the court distinguished a written description challenge from a priority challenge under 35 U.S.C. § 102, holding that when a party challenges a claim's validity based on prior art, "the PTO and this court must interpret [a] claim in light of the specification in which it appears." Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1997). Despite this distinction in Rowe, some parties still misunderstood when the Spina rule should apply.

In Agilent, this court again addressed the differences between a written description challenge and a validity challenge in interference proceedings. The court held: "[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language." Agilent, 567 F.3d at 1375 (emphasis added). In contrast, "[w]hen a party challenges a claim's validity under 35 U.S.C. § 102 or § 103, however, this court and the Board must interpret the claim in light of the specification in which it appears." Id. Consequently, the relevant specification for claim construction depends on whether a party in an interference proceeding challenges the written description under § 112, ¶ 1 or challenges validity under § 102 or § 103. Recall that PTO regulation requires the examiner to give a claim "its broadest reasonable construction in light of the application or patent in which it appears" regardless of the type of challenge in an interference proceeding. 37 C.F.R. § 41.200(b) (emphasis added).

Agilent made clear that 37 C.F.R. § 41.200(b) does not apply in an interference proceeding when one party challenges another's written description. The court applied the Spina rule to a case with the same preliminary motion as in this case: Philips filed a "preliminary motion challenging the validity of the copied claims on the grounds that the [Owen] application did not describe the invention adequately under § 112 ¶ 1." Agilent, 567 F.3d at 1373. As in Agilent, "[t]his case calls for application of the Spina rule, because the question is 'whether the copying party's specification[, Owen,] adequately supported the subject matter claimed by the other party[, the inventors of the '751 patent].'" Id. (quoting Rowe, 112 F.3d at 479).

Based on their failure to apply our precedent, the Board and the district court fundamentally erred by summarily rejecting Philips' written description challenge. A district court must base its analysis of written description under § 112, ¶ 1 on proper claim construction. See Agilent, 567 F.3d at 1383 (reversing the district court's holding that an applicant's written description was adequate because the court erred in its claim construction); Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289, 1296 (Fed. Cir. 2004) ("The district court's reliance on [an] erroneous [claim] construction . . . renders its finding that the . . . patent is invalid for failure to 'contain an adequate written description of the claimed invention' clearly erroneous."). Here, the district court did not construe the disputed term at all. Nor did the court analyze the Owen application's written description, assuming that the Board's procedural grounds obviated claim construction. The district court failed to recognize that "the Board should decide issues relating to . . . patentability that are fairly raised and fully developed during the interference, despite the permissive language of § 135(a) with respect to patentability issues." Gartside, 203 F.3d at 1317. Cardiac Science does not dispute that Philips fairly raised and fully developed its written description challenge before the Board. Consequently, the district court should have corrected the Board's error by deciding whether the Owen application's written description satisfied § 112, ¶ 1.

The CAFC swatted the patent office for its unction in making up it own rules.

The district court and the Board's legal errors stem from a failure to appreciate the consequences of the PTO's rulemaking authority. The PTO lacks substantive rulemaking authority. See Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996) ("[T]he broadest of the PTO's rulemaking powers--35 U.S.C. § 6(a)--authorizes the Commissioner to promulgate regulations directed only to 'the conduct of proceedings in the [PTO]'; it does not grant the Commissioner the authority to issue substantive rules." (quoting Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 930 (Fed. Cir. 1991))).

The failure to address motion 5, contingent upon claim construction, was in error because of what the Board failed to do: resolve the § 112, ¶ 1 issue.

The district court indeed erred in dismissing Philips' claim that Owen's claims 1-4, 13, 15, 20-22, and 39 are unpatentable because the Gliner patent anticipated those claims under 35 U.S.C. § 102 or at least rendered the claims obvious under § 103. The court opined that the Board properly dismissed motion 5 "because the contingency on which it was premised never arose." But the contingency never materialized because the Board failed to apply Spina and resolve the written description challenge as a properly raised issue of patentability. Moreover, Agilent makes clear that the district court should have addressed Philips' unpatentability claims under § 102 and § 103 regardless of whether it construed the term "impedance-compensated defibrillation pulse" in light of the '751 patent written description. In Agilent, the court clarified that when a party challenges a claim's patentability under § 102 or § 103--in contrast to a written description challenge--a court "must interpret the claim in light of the specification in which it appears." 567 F.3d at 1375.

Reversed and remanded. Costs to the Appellant, Philips.

While they don't arise often, interferences are messy business. First-to-file would clean up that mess in an instant - no more interferences.

First-to-invent is actually first-to-file-a-patent-in-the-US-and-claim-an-invention-date. Foreign patent filings don't count as prior art, so a foreigner could invent something that someone else can get a US patent for by filing here before the foreign application is published.

Posted by Patent Hawk at January 5, 2010 11:44 PM | Prosecution


Hmmm – “seldom exposed” – kinda like deflates your argument from the get-go Hawk. Yet you are more than willing to buy into the rest-of-the-world-except-that-is-not-what-is-on-the-table crap and forego our existing system even in the face of such evidence that Ron Katznelson and others have provided. You would clean up the rare mess with a blizzard of crap.

At the same time – you miss the opportunity to put the spotlight with full force on the real issue here. Sure, you pay lip service with “The CAFC swatted the patent office for its unction in making up it own rules”, but your zeal for first-to-file clouds the story (similar in certain ways to how my friend MaxDrei lets his passion for what he wants cloud his posts). The spotlight should not be on interference practice, but rather, on that the Office and its minions (read that as the BPAI) continuing to power grab and make things up as they go – the real crime of not APPLYING the Law.

Posted by: Noise above Law at January 6, 2010 10:53 AM


Thanks for the semi-coherent rant.

Sorry you had trouble handling two themes in a single blog entry.

Posted by: Patent Hawk at January 8, 2010 12:29 AM

Hawk, I will try to rein in my passion, and not rant.

I thank you for flagging up this Decision. For me, what was interesting inter alia was:

i) the struggle the technical experts had, to explain whether things like a gear pump and a squeeze pump are or are not "equivalent";

ii) the CAFC definition of "not equivalent" as "substantially different" (a big help to USpatent lawyers that must be);

iii) the "no reasonable finder of fact" findings; and

iv) the legal monstrosity of "copying" a claim, out of one patent and into another, and the resultant (amazing) confusion, post-Philips, over which "written description" is then to be used to construe the copied claim.

Altogether a great case for me. Thanks again. One waits with interest to see further comments, if not here then perhaps (belatedly!) on Crouch's blog.

Posted by: MaxDrei at January 8, 2010 1:33 AM


While I enjoy your irreverent style of writing, your ability to handle criticism leaves much to be desired.

You mistakenly attribute an inability of handling more than one theme to me. I can handle more than one theme and that is obviously NOT my gripe with your piece. My gripe is that your focus is on the wrong theme. Your primary theme of "interferences are bad" simply is the wrong take-home message. You do not develop the fact that the answer you want to install to handle interferrences will cause more, rather than less, "bad", and simply assume that since interferences can be messy, we should do just about anything to get rid of them. Rather a poor message for a legal blog.

By calling my message a "semi-coherent rant", you actually betray your lack of understanding. My points are rather logical and straight forward:
1) I used your own language to deflate your premise - "seldom" indicates that the problem is not that pervasive.
2) I point out that your solution would make things worse and that others have spoken eloquently on this matter.
3) I point out that the primary message that you missed, or at best conflated, was not given the focus it deserves.

If you find the straight forward 1-2-3 logic of my post to be "semi-coherent", I'm afraid the problem is with thee.

Posted by: Noise aobve Law at January 8, 2010 6:22 AM

Hawk -

This is a mere caution, not a comment on your posting - be careful of what you ask for.

I am mildly in favor of first-to-file, if by that we mean only "change § 102(g) from 'before the applicant's invention thereof' to 'before the applicant's effective filing date."

But that's not what's in the current legislation - S.515 not only does first-to-file, but so weakens the one year grace period that no inventor will ever be able to rely on it.

Longer discussion -

David Boundy

Posted by: David Boundy at January 12, 2010 8:49 AM

Posted by: Noise above Law at January 12, 2010 10:13 AM

"The US alone clings to"

Say what??? I prefer "the US established and has enjoyed a first to invent regime" Obviously Hawk, you have no experience with inventive wastelands in foreign lands where the question of who the actual inventors are is routinely ignored.

Posted by: Just sayin' at January 14, 2010 9:45 AM

Just Sayin, can you say more, to enlighten me. I too am lacking any such experience of such foreign wastelands (that is, as far as I know).

Posted by: MaxDrei at January 14, 2010 2:49 PM