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January 11, 2011

How to Bamboozle A Judge

Claim construction ought to be formulaic: take the plain meaning of crucial claim terms, in view of the specification and prosecution history, absent prosecution disclaimer (which would narrow claim scope). "Courts must not import limitations into the claims" is a hoary axiom. Yet that is exactly the formula to bamboozle a district court judge, as part of a two-step to noninfringement. With much practice as defendant, Microsoft seems to have mastered this dance, to a tune to which judges are sometimes legally tone deaf. It particularly helps when a patent holder, in the claim construction dance, has two left feet.

Case in point: Walker Digital v. Microsoft. Asserted: 6,349,295. The judge: Philip Gutierrez, Central District of California.

The claim element in dispute: "initiate said search using a search tool responsive to said received command without preempting said first application program;"

The crux of the dispute here is the meaning of the "without preempting" limitation. Walker Digital insists that "without preempting said first application program" as used in claims one, 16, 71 and 76 means "the use of the search tool does not prevent the user from using the first application program." Defendants, on the other hand, suggest that the phrase means that "the user interface of the first application program remains continuously responsive to user input." See Joint Claim Construction Chart, at 1.

Here's the facile setup: claim construction as a competitive exercise. There's an adjudicative fallacy operating here. In this country's legal system, lawyers are nothing but advocates, advocate being a polite expression for one who embraces weasel words. Hence a wise judge will follow the maxim: in the record and twixt the two parties, suss out the truth according to the law. But the suss requires more fuss than judges are willing to put themselves through (exceptions noted), and so advocacy prevails.

The judge continues.

Reading Walker Digital's proposed construction by itself broadly suggests that so long as the user can still use the first thread program, even if he must close other operations to get to it, the first thread program is not preempted. This adds ambiguity to the claim itself, and contradicts the specification and prosecution history.

In isolation, the statement appears beamed from a parallel reality. But Walker disserved itself.

Specifically, Walker Digital argues that the "without preempting" limitation grammatically modifies the "search tool" clause, not the "initiating said search" clause. See Pl's Markman Reply 9:1-18. During the patent prosecution, however, Walker Digital responded to the patent examiners rejection in light of the Wolfe patent by saying that "Wolfe contains no disclosure concerning initiating a search without preempting an application program such as a word processing program, a spreadsheet program or a database management program." See Block Decl., Ex. 6 at 67 (some emphasis added, some omitted). Moreover, in the same document, Walker Digital stated that claim 76 "recites initiating a search from an application program that is not a browser, without preempting the application program." Id. at 69. To overcome the Wolfe patent during prosecution, Walker Digital clearly understood that it was the search initiation that would not preempt the foreground program, not the use of the search tool as suggested now. That understanding controls. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (patentee cannot "recapture[e] through claim interpretation specific meanings disclaimed during prosecution"). To the extent that the claims differ but retain the "without preemption" limitation, the Court adopts Defendants' uniform construction.

So the judge sides with Microsoft, importing the lynchpin term "continuously responsive to user input" into the claims. Bamboozle step one planted.

In bamboozle step two, Microsoft argues noninfringement because its product is not "continually responsive" as claimed.

Defendants' correctly point out that the issue "is not how long these software routines take to execute," but whether Microsoft Word is literally unresponsive during the applicable routine execution. Defendants' evidence establishes that, while Walker-Digital's evidence fails to adequately challenge it.

In the bamboozle two-step, the claim construction step shifts the issue of infringement to an artifice term not claimed. It's a clever dance, artful in execution, and an especially exhilarating when opposing counsel is busy fox-trotting to a waltz.

Posted by Patent Hawk at January 11, 2011 2:50 PM | Litigation


... and yet another example of why you want to keep those con(tinuations) coming.

At least until the parent's passed away.

Posted by: Con Man at January 11, 2011 3:47 PM

On the other hand, had negative limitations still been under their proper ban, we wouldn't have this issue in the instant case to begin with.

Posted by: 6000 at January 11, 2011 5:46 PM

If we hadn't had software patents in the first place,
we wouldn't have had this issue.

If we hadn't had patents in the first place,
we wouldn't have had this issue.

If we hadn't had technology in the first place,
we wouldn't have had this issue.

If we hadn't had law in the first place,
we wouldn't have had this issue.

If we hadn't had people in the first place,
we wouldn't have had this issue.

Posted by: Pedantic Pete at January 11, 2011 8:09 PM

Looks like pendantic is a fan of negative limitations.

Figures, if you're a tard you're likely in favor of them.

Posted by: 6000 at January 12, 2011 11:13 AM

Negative limitations are a legitimately convenient way to express claim scope. Failure to recognize their value in economy of expression to delimit a claim is a clear failure of conceptualization that indicates incompetence, particularly when stated by a patent examiner, who should most certainly know better.

Posted by: Patent Hawk at January 12, 2011 11:33 AM

The legitimacy of their convenience and their value in economy of expression are both immaterial. Although I recognize both. That applicants are to claim what they believe their invention to be, rather than what they believe it to not be is rather material. And that they lead to nonsensical claims all too often is another thing which is in an ancilliary manner somewhat material. Just another Fed Circ lawllol f up. Along with the lol we should be able to do whatever we please so long as it is convenient to us lol crowd.

Strict guidelines on patent drafting increase the quality of, understandability of, and overall worth of patents in general.

Incidentally, they'd probably lead to fewer rejections as well which would make lawlyertards happy. Once everyone got their acts together that is.

Posted by: 6000 at January 12, 2011 12:35 PM

Looks like 6000 likes to jump to conclusions.

Looks like 6000 likes to make up his own law.

Looks like 6000 likes to paint his own version of reality.

And here I thought the worth of a patent had to do with the invention, the content, rather than the form.

Posted by: Pedantic Pete at January 12, 2011 1:57 PM