Archive for the ‘The Emperor Has No Clothes’ Category

Judge Plager’s Message to the Supreme Court on Patent Eligibility: The Emperor Has No Clothes

Wednesday, July 25th, 2018

Judge Plager penned a rather long and eloquent dissent in last week’s Federal Circuit decision of INTERVAL LICENSING LLC v. AOL, INC., No. 2016-2502 (Fed. Cir. July 20, 2018).  I have reproduced the dissent by the former Dean of the Indiana University School of Law below:


PLAGER, Circuit Judge, concurring-in-part and dissenting-in-part.

Today we are called upon to decide the fate of some inventor’s efforts, whether for good or ill, on the basis of criteria that provide no insight into whether the invention is good or ill. Given the current state of the law regarding what inventions are patent eligible, and in light of our governing precedents, I concur in the carefully reasoned opinion by my colleagues in the majority, even though the state of the law is such as to give little confidence that the outcome is necessarily correct. The law, as I shall explain, renders it near impossible to know with any certainty whether the invention is or is not patent eligible. Accordingly, I also respectfully dissent from our court’s continued application of this incoherent body of doctrine.

The Three Exceptions

The majority opinion, after reviewing in detail the district court’s decision and the patent’s written description and claims, goes through the obligatory review of the history of 35 U.S.C. § 101, the statutory section entitled “Inventions patentable.” Under the statute a patent may be obtained for an invention that is a “new and useful process, machine, manufacture, or composition of matter.” This phrasing is often described as providing a wide and permissive scope for patent eligibility.[1]

However, as the majority opinion notes, any recourse to § 101 must take into account not only the words of the statute but also the Supreme Court’s judicially created three exceptions to the statute’s description of what is patent eligible. Of these three Court-created exceptions— `laws of nature, natural phenomena, and abstract ideas’— the one at issue in this case is the one that causes the most trouble: `abstract ideas.’

That `abstract ideas’ is the only one of the three at issue here is a critical point, in need of emphasizing. All too often courts discussing these three judicially created exceptions to patent eligibility lump them together, as if all three present the same set of issues to be conceptualized and analyzed.[2] They do not. `Laws of nature’ and `natural phenomena’ have understandable referents, and thus have proven more amenable to workable definitions, or at least a reasonable degree of boundary-setting, and thus are more amenable to analysis.[3]

However, when it comes to applying the concept of `abstract ideas’ to a challenged patent (or application for patent) as a distinct test of patent eligibility, the issues are different, and require close examination. The analytical structure which we now are to employ is provided by the Supreme Court’s recent teachings in Alice Corp. v. CLS Bank International.[4] (Alice is often linked at citation-time to an earlier case, Mayo Collaborative Services v. Prometheus Laboratories, Inc.;[5] that case did not turn on the `abstract ideas’ formula, and is an example of the blending that can cause analytical confusion.)

I. Abstract Idea(s)

The majority opinion, following the structure dictated by Alice, first steps through “Alice Step 1: Abstract Idea.” The court recites a bit of the history of the `abstract ideas’ idea from its origins in the 19th century, and then reviews the more recent cases that wander through it, lining the cases up as they explain themselves on both sides of the divide between good and ill. (In Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,[6] I explained the reason for this evolved decision-by-example technique; the verbal nature of the distinctions drawn becomes quite apparent.)

The majority opinion concludes that “the recited claims are directed to an abstract idea because they consist of generic and conventional information acquisition and organization steps that are connected to, but do not convert, the abstract idea.” Maj. Op. at 18. This often-seen language is familiar from Alice. See Alice, 134 S. Ct. at 2359-60. It is interesting language—if “generic and conventional” is the same as `previously known,’ someone familiar with traditional patent law might think of the 1952 Patent Act’s § 103 and the nonobviousness principle—a point discussed later; but, following Alice, the majority opinion, as did the district court, ignores the Patent Act’s requirements and cites the current litany for abstractness.

But what makes an idea found in a claim an `abstract idea’? An idea itself by definition is “[s]omething, such as a thought or conception, that is the product of mental activity.”[7] The definitions of “abstract” include “[c]onsidered apart from concrete existence,” “[d]ifficult to understand; abstruse,” and “[n]ot applied or practical; theoretical.”[8] An idea, whether abstract or not, is something that lives in the interstices of someone’s brain, a psychophysiological area not fully understood to this day.[9]

And ideas can have an infinite range of abstractness, if by that we imply concreteness—for example, compare “I have an idea—let’s have hamburgers for dinner,” with “I have an idea—I am going to invent how to make time go backwards.”[10] How much of abstractness is a function of concreteness? How do we pick the line where the articulation and explication of an idea is sufficiently concrete to be `non-abstract,’ but not so much as to be `generic and conventional’? Does it help to phrase the notion as the difference between claiming a desired result and claiming how to produce that same result? Or are we just substituting one set of vague notions for the other, with the same line-drawing problem?

That the phrase `abstract ideas’ is a definitional morass can be seen in one simple fact—a search for a definition of `abstract ideas’ in the cases on § 101 from the Supreme Court, as well as from this court, reveals that there is no single, succinct, usable definition anywhere available. The problem with trying to define `abstract ideas,’ and why no court has succeeded in defining it, is that, as applied to as-yet-unknown cases with as-yetunknown inventions, it cannot be done except through the use of equally abstract terms.[11] As explained in Amdocs, the closest our cases come to a definition is to state examples of what prior cases have contained, and which way they were decided. But what anecdotal cases reveal, a definition does not make.

The `abstract ideas’ idea, when used for denying a claimed invention’s patent eligibility either before or after a patent is issued, cannot thus function as a valid rule of law. As a fundamental policy, a legal term such as `abstract ideas,’ if the exclusionary standards of § 101 are to function as a valid rule of law, must provide concise guidance for the future. In that sense, a rule of law is a prediction of how courts will decide future cases.[12] `Abstract ideas,’ like the term `obscenity,’ may provide a cultural consensus in a given instance regarding whether a past event qualifies, but it fails to provide the kind of specificity and clarity that makes it useful for future prediction of outcome. And from the viewpoint of decisional law, the `abstract ideas’ idea falls short in the sense of providing a trial judge with confidence that the judgment will be understood by the judges who come after, since only the judges who have the final say in the matter can say with finality that they know it when they see it.

II. Inventive Concept

Having determined the claims at issue to be directed to nothing more than `abstract ideas,’ the majority opinion, following the Alice analysis, segues to “AliceStep 2: Inventive Concept.” Here the court explores whether the invention’s claims, determined in Step 1 to be abstract, are not really abstract because they limit the abstractness by an `inventive concept.’ In the case before us, no such concept is seen; the trial court’s determination of fatal abstraction is affirmed.

A small puzzle—if a court, after reviewing challenged claims in light of their terminology and written description, determines the claims to be `abstract’ in Step 1, how can the same court be expected to determine on a second reading that the same claims have become `un-abstract’ via Step 2? Could it be that an `inventive concept’ cannot exist until the court reads the patent at least one more time? Perhaps courts cannot be expected to read the claims carefully enough the first time?

A bigger puzzle regarding the `inventive concept’ concept: Those who are familiar with the history of the Patent Act, when in 1952 the law of patenting was given a major statutory overhaul, will be the most puzzled. Is it the case that now, some 65 years later, we really have resurrected the concept of an `inventive concept’?[13]The late Judge Giles Rich, the grand old man of patent law, whose portrait hangs in the place of honor in the Federal Circuit courthouse—how can he rest in peace? He was one of the acclaimed authors of the new Patent Act. At the time he, along with many others, thought that the undefinable—truly abstract—concept of `inventive concept’ had been put into the dustbin of history by the specific criteria for a valid patent in the new Patent Act, specifically § 103, non-obvious subject matter.

Judge Rich wrote extensively on the point. See, e.g., Giles S. Rich, Laying the Ghost of the “Invention” Requirement, 1 APLA Q.J. 26 (1972); Giles S. Rich, The Vague Concept of “Invention” as Replaced by Sec. 103 of the 1952 Patent Act, 46 J. Pat. Off. Soc’y 855 (1964).[14] In his 1964 article, based on a speech he gave twelve years after the statutory changes were enacted, Judge Rich reviewed the long and sorry history during the 19th century of the “injection into the law of what has ever since been called the `requirement for invention.'” 46 J. Pat. Off. Soc’y at 860. “This proliferation of views on what did and did not amount to `invention’ went on for 100 years. We were enlightened with the view that `invention’ resulted from the exercise of the `inventive faculties’ and other circular reasoning.” Id. He attributed this development to an 1851 Supreme Court case, Hotchkiss v. Greenwood, 52 U.S. 248 (1851), and noted that “[a]s is usual with a `doctrine’ derived from a court opinion, the doctrine persists while the facts out of which it arose are forgotten.” Id. at 859-60.

Judge Rich bemoaned the fact that, even after the statutory enactment of § 103 of the Patent Act, some still used the meaningless `invention’ or `inventive requirement’ phrase. He concluded his article with a series of propositions to reinforce “that when 103 has been complied with, there is no further and different requirement called `invention’; that compliance with 103 is the policy judgment of Congress on how to bring the invention within the Constitutional purpose.” Id. at 875.

Without referring to this history, the Supreme Court in Alice instructed that we ask whether there is such structure or something in the patent claim(s) that recites an `inventive concept’ “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 73). Beyond the question of ultimate meaning of the `inventive concept’ phrase, other questions abound. When we search for this significantly more `inventive concept,’ are we limited to the limitations of a particular claim in the patent? If not limited to the limitations in the individual claim, then what? Do the written description and the scope of other claims in the patent come into play, as perhaps they did in Step 1?

And adding a little more complexity to the matter, the Supreme Court has recognized that “[a]t some level, `all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'” Id. at 2354 (quoting Mayo, 566 U.S. at 71). With that in mind, we are left to ponder at what level of abstraction do we focus—put another way, how deep into the `elements’ do we dig when we search for that which is not `abstract,’ or for that non-abstract combination that saves an otherwise `abstract idea’ patent claim?

When the `abstract idea’ notion appeared in the law back in the 19th century, the requirement for `invention’ in its many variants—currently `inventive concept’—was also part of patent law. Then, as now, it seemed logical that something claiming to be an invention should have something called an `inventive concept’ at its core. And as a literary construct that is unexceptional.

As a decisional construct for validation of a property right—a patent—the idea of a necessarily underlying `inventive concept’ proved unworkable. The concept provided no discernable boundaries for decision-making in specific cases, resulting in an incoherent legal rule that led to arbitrary outcomes. Judge Rich, who devoted his life to patent law, saw this clearly, and gave the Congress a workable alternative—nonobvious subject matter— which they adopted.

The modern Supreme Court inherited this body of formulaic doctrine, and we now expect the Court to make sense of it. That they have failed is less a commentary on their efforts than on the absence of recognition of the problem on the part of the lawyers and judges who continue to treat these doctrines as if they were gospel.[15]

The Emperor Has No Clothes

My purpose in this discussion is not to critique the Court’s handiwork, but rather to highlight the number of unsettled matters as well as the fundamental problems that inhere in this formulation of `abstract ideas.’ In the short expanse available in a court opinion (and in the reader’s patience), it is not possible for me to recite all the issues and all the problems with the current law of `abstract ideas’ and its `inventive concept’ offspring.

I do, however, want to go on record as joining my colleagues who have recently expressed similar views about the current state of our patent eligibility jurisprudence, and to incorporate by reference their wisdom concerning the matter. Judge Richard Linn, concurring and dissenting in Smart Systems Innovations, LLC v. Chicago Transit Authority,[16] critiqued at length the `abstract ideas’ idea, both in general and as specifically applied in that case. More recently, Judge Alan Lourie, concurring in the denial of en banc rehearing in Berkheimer v. HP Inc., and referring to the complex of issues in our current § 101 jurisprudence, wrote that “the law needs clarification by higher authority, perhaps by Congress, to work its way out of what so many in the innovation field consider are § 101 problems.”[17]

I welcome their attention to this—when two of our leading judges who have devoted their careers to the practice and explication of patent law publicly proclaim that there is a real problem, there is a real problem. I do not mean to suggest that they are the only two such judges on the court—to my knowledge, other than myself, they are the only two who have gone on record in such clear terms regarding the law of `abstract ideas.’

There is almost universal criticism among commentators and academicians that the `abstract idea’ idea has created havoc in the patent law. The testimonials in the blogs and elsewhere to the current mess regarding our § 101 jurisprudence have been legion.[18] There has even been a call for abolishing § 101 by the former head of the Patent and Trademark Office.[19]

This view is shared by many patent practitioners.[20] A § 101 defense is widely employed, and often successful. For example, in the period following Alice until April 30, 2017, one study reported that the federal courts invalidated patents on § 101 grounds in 330 out of 488 decisions. See Bilski Blog, #Alicestorm: April Update and the Impact of TC Heartland on Patent Eligibility (June 1, 2017).[21]According to the same report, the Patent Trial and Appeal Board has invalidated patents on § 101 grounds in 90 out of 92 covered business method review final written decisions. Id.

These defenses are a shortcut way for alleged infringers to try for a quick dismissal of the infringement charge on the grounds that the invention underlying the infringement suit was never entitled to a patent. If successful, it saves having to go to the effort of proving in a fulldress law suit one of the statutory invalidity defenses found in §§ 102, 103, and 112 of the Patent Act.[22]

Indeed, some of these shortcut cases now arrive on appeal following a trial court’s summary judgment, or in some cases, even following a judgment on the pleadings or motion for dismissal. This has the effect of ensuring a minimal record or virtually no record at all on which an appeal can sensibly be judged.[23]

There is little consensus among trial judges (or appellate judges for that matter) regarding whether a particular case will prove to have a patent with claims directed to an abstract idea, and if so whether there is an `inventive concept’ in the patent to save it. In such an environment, from the viewpoint of counsel for the defense, there is little to be lost in trying the § 101 defense. We are left with a process for finding abstract ideas that involves two redundant steps and culminates with a search for a concept—inventiveness—that some 65 years or so ago was determined by Congress to be too elusive to be fruitful. Is it any wonder that the results of this process are less than satisfactory?

It would not be useful, or even fair, to fault today’s Supreme Court for trying to find some way to decide what is an abstract idea, or at the least for trying to find a way to decide the question. Or to fault this court for doing its best to honor the Supreme Court’s formula, even when the results demonstrated that the test did not produce coherent, readily understandable, replicable, and demonstrably just outcomes. The Supreme Court inherited the `abstract ideas’ idea from cases decided at a time when it probably sounded reasonable and had little impact. With the rise of software and business method patents, the `abstract idea’ became a weapon of choice for summary execution of what many decried as `bad’ patents. The problem is that it does not distinguish good from ill in any coherent sense, and thus does not serve well either patent law or the public.

When the lawyers and judges bring to the Supreme Court a shared belief in the uselessness of the abstract notion of `abstract ideas’ as a criterion for patent eligibility, we can hope that the Court will respond sensibly. In light of the statutory criteria for patent validity established in the Patent Act, there is no need, and indeed no place in today’s patent law, for this abstract (and indefinable) doctrine. Something as simple as a declaration by the Court that the concept of `abstract ideas’ has proven unworkable in the context of modern technological patenting, and adds nothing to ensuring patent quality that the statutory requirements do not already provide, would remove this distraction from the salutary system of patent issuance and enforcement provided by the Congress in the 1952 Patent Act.

The problem with hoping for this solution is that there is no particular incentive for the Supreme Court to immerse itself again in this intellectual morass. The Court, unlike this court, is not called upon daily to address the consequences of an incoherent doctrine that has taken on a life of its own. It will take a special effort by the judges and the patent bar to gain the Court’s attention. Failing that, a legislative fix is a possibility, though waiting for that may be the ultimate test of patience.

In the interim, a district court in an appropriate case might choose to exercise control over its docket by instructing a defendant who raises an `abstract ideas’ § 101 defense that the court will defer addressing that defense until first having the issues in §§ 102, 103, and 112 addressed. This need not be viewed as offending existing law since the `abstract ideas’ test would remain in the case, as would the Alice process; only the timing would change.

There would be a shift in trial court process from the current notion, held by some, that a determination of patent eligibility under § 101 is necessarily the first thing to be decided in every case. That notion can still remain true for cases challenging a patent on laws of nature and natural phenomenon grounds; only because of the problems inherent in testing for `abstract ideas’ would the § 101 test be delayed until determinations are made under the statutory standards that Congress established.

What would be the consequences of such a procedural delay? Even a cursory look at the claims in our recent § 101 `abstract ideas’ cases suggests how many of those cases would just go away as soon as the well-understood statutory criteria are applied to the challenged claims, especially the question of whether the claimed invention is new or just a replay of prior art (see § 103). Those who would quail at the supposed burden this might place on the trial judges should remember that is what trial judges do. And besides, the trial judges have already started using an alternative along the same lines: many patent infringement suits are now being stayed by the trial courts when there is a reference of the patent eligibility and validity issues (depending on the kind of case) to the Patent Trial and Appeal Board under the expedited procedures of the America Invents Act.[24]

Whether this court should take the initiative and instruct the trial courts to follow such a procedure raises somewhat more difficult questions. We have generally left the case management of those courts to the courts themselves, or to the circuit courts of appeal to which they normally report. For these reasons among others, our court presumably should have little difficulty with respecting a district court’s decision about how best to manage its own docket.

Regardless of what other courts may do, an appellate court’s job is not only to decide the immediate case before it, but also to rationalize and regularize the law to be applied in future similar cases. Judge Rich believed that words have meaning;[25] years earlier Professor Wittgenstein expressed well that same thought: “What can be said at all can be said clearly, and what we cannot talk about we must pass over in silence. . . . The limits of my language mean the limits of my world.”[26]

This emperor clearly has no clothes; we need not wait for our children to tell us this.[27] The legitimate expectations of the innovation community, as well as basic notions of fairness and due process, compel us to address this § 101 conundrum.

[1] See, e.g., Bilski v. Kappos, 561 U.S. 593, 601 (2010).

[2] The Supreme Court itself is not always consistent. Compare id. at 601-02 (referring to the “three specific exceptions”) with Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)(referring to the three categories as constituting one “exception”).

[3] That does not, however, preclude controversy. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc.,788 F.3d 1371, 1380 (Fed. Cir. 2015) (Linn, J., concurring), reh’g denied, 809 F.3d 1282 (Fed. Cir. 2015) (per curiam denial with concurrences by Judges Lourie and Dyk and a dissent by Judge Newman). But see Robert R. Sachs, Bad Science Makes Bad Patent Law—No Science Makes It Worse (Part I), Bilski Blog (Sept. 13, 2016), (arguing that the courts have failed to accurately define `laws of nature’).

[4] 134 S. Ct. 2347 (2014).

[5] 566 U.S. 66.

[6] 841 F.3d 1288, 1294-95 (Fed. Cir. 2016).

[7] The American Heritage Dictionary of the English Language 872 (5th ed. 2011).

[8] Id. at 7.

[9] Cf. John Medina, Brain Rules (2d ed. 2014).

[10] See, e.g., Dava Sobel, Longitude 34 (1st ed. 1995) (“Time is to clock as mind is to brain. The clock or watch somehow contains the time. And yet time refuses to be bottled up like a genie stuffed in a lamp. . . . [I]t flows as sand or turns on wheels within wheels, time escapes irretrievably . . . .”).

[11] For example, compare In re Bilski, 545 F.3d 943, 959 (Fed. Cir. 2008) (en banc) proposing `machine-ortransformation’ as the test, with Bilski, 561 U.S. at 604, indicating that `machine-or-transformation’ is one test, “a useful and important clue” and “an investigative tool” but not the exclusive test and offering nothing better. See also the several opinions in this court’s CLS Bank International v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) (en banc), the harbinger of the Supreme Court’s Aliceopinion.

[12] See Oliver W. Holmes, The Path of the Law, in Collected Legal Papers 167, 173 (1920) (noting that rules of law are “prophecies of what the courts will do in fact, and nothing more pretentious”); see alsoKarl N. Llewellyn, The Bramble Bush: Some Lectures on Law and Its Study 3 (1930) (“What these officials do about disputes is, to my mind, the law itself.”). But cf. Michael C. Dorf, Prediction and the Rule of Law, 42 UCLA L. Rev. 651, 653 n.6, 715 (1996) (suggesting that “the prediction model undermines the rule of law by over-emphasizing the role of individual judges”).

[13] Some authorities attribute the resurrection of `inventive concept’ to Mayo, and to Justice Stevens in his earlier opinion in Parker v. Flook, 437 U.S. 584 (1978). For the history buffs, see Jeffrey A. Lefstin, Inventive Application: A History, 67 Fla. L. Rev. 565, 572-77 (2015).

[14] See also In re Bergy, 596 F.2d 952, 959-64 (CCPA 1979), vacated in part sub nom. Diamond v. Chakrabarty, 444 U.S. 1028 (1980), and aff’d sub nom. Diamond v. Chakrabarty, 447 U.S. 303 (1980); Giles S. Rich, Why and How Section 103 Came to Be, in Nonobviousness—The Ultimate Condition of Patentability 1:201 (John F. Witherspoon ed., 1980); Giles S. Rich, Principles of Patentability, 28 Geo. Wash. L. Rev. 393 (1960).

[15] See Amy L. Landers, Patentable Subject Matter as a Policy Driver, 53 Hous. L. Rev. 505, 517-18 (2015) (“Like an ice sculpture that is shaped by the parts that have been chipped away, the legal definition of invention is shaped by its exceptions. Decisions lack clarity. Their reasoning rests heavily on a limited field of precedent that is, in turn, written in opaque terms during a different technological era.” (footnote omitted)), and sources cited therein.

[16] 873 F.3d 1364, 1376 (Fed. Cir. 2017) (Linn, J., concurring-in-part and dissenting-in-part).

[17] 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Lourie, J., concurring in the denial of rehearing).

[18] Regarding patent blogs, see just about any issue of Law360; regarding the innovation community, see, e.g., Intellectual Prop. Owners Ass’n, Section 101 Legislation Task Force, Proposed Amendments to Patent Eligible Subject Matter Under 35 U.S.C. § 101 (2017),

[19] See Ryan Davis, Kappos Calls for Abolition of Section 101 of Patent Act, Law360 (Apr. 12, 2016),

[20] See, e.g., Peter Leung, The Federal Circuit’s Section 101 Uncertainty, Managing Intellectual Prop. (Sept. 29, 2015) (“Frustrated IP practitioners are hoping the court will soon change from telling them what is not eligible to providing some guidance on what is.”),; Ryan Davis, Major [Companies], IP Groups Call For Clearer USPTO Alice Rules,Law360 (Nov. 2, 2015),


[22] See Paul R. Gugliuzza & Mark A. Lemley, Can a Court Change the Law by Saying Nothing?, 71 Vand. L. Rev. 765, 777 n.70 (2018), quoting Saurabh Vishnubhakat, The Antitrusting of Patentability, 48 Seton Hall L. Rev. 71, 104 (2017) for the proposition that “`[c]ourts’ use of subject-matter eligibility as a shortcut to other patentability requirements appears to offer significant savings in decision cost,’ but that `these savings likely come at the expense of higher error costs.'”

[23] But see Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (observing that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination”); Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018).

[24] See Harness Dickey, A Look at Forty-Five Months of Inter Partes Review Proceedings Before the United States Patent and Trademark Office, (Aug. 24, 2016) (finding that 61% of all contested requests to stay were granted from September 16, 2012 to June 16, 2016 in the inter partes review context); Morgan Lewis, 2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings, at 26, (2017) (estimating that 58% of all contested requests to stay were granted as of June 1, 2016 in the inter partes review context and that 61% of all contested requests to stay were granted in the same period in the covered business method review context).

[25] Giles S. Rich, Escaping the Tyranny of Words—Is Evolution in Legal Thinking Impossible?inNonobviousness—The Ultimate Condition of Patentability 3:301.

[26] Ludwig Wittgenstein, Tractatus Logico-Philosophicus, Preface at 3, Proposition 5.6 (1922).

[27] See Hans Christian Andersen, The Annotated Hans Christian Andersen 3-16 (Maria Tatar, ed., trans., & contributor, Julie Allen, trans. & contributor, 1st ed. 2008).

Oral Argument Mayo v. Prometheus

Wednesday, March 21st, 2012

Now that the Mayo Collaborative Services, et al. v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012) decision has issued, some folks might once again be interested in the oral argument.  The oral argument is available on the OYEZ site [here].

Cited References as Intrinsic Evidence

Tuesday, November 29th, 2011

The Federal Circuit’s recent decision in Powell v. Home Depot ,  App. No. 2010-1409 (Fed. Cir. Nov. 14, 2011) is interesting in that it reminds one that the prior art cited in the prosecution history of a patent forms part of the intrinsic evidence for claim construction purposes.  You don’t often see this rule stated in opinions; so, I thought it would be interesting to try and identify where this proposition springs from and whether the rule is true to its roots.

As background, the court in Powell v. Home Depot was trying to determine whether the claim term “dust collection structure” connoted sufficient structure to a PHOSITA such that it should not be construed as a means plus function element.  The court noted that it would be entirely proper for one to look to any prior art cited in the patent’s prosecution history to see how “dust collection structure” was used in the cited prior art.  The court reasoned that this was true because the cited prior art forms part of the prosecution history and the prosecution history is intrinsic evidence.

We agree with Mr. Powell and conclude that the claim term “dust collection structure” is not subject to construction as a means-plus-function element under 35 U.S.C. § 112, ¶ 6. Here, the claim language at issue recites sufficiently definite structure. The claim term requires, in the context of the entire limitation, that the cutting box interior and the dust collection structure be in fluid communication with each other. See ‘039 patent col.7 ll.32-33, col.8 ll.26-27. This requirement indicates inter-connectedness between the cutting box interior and the dust collection structure, wherein the physical characteristics of the dust collection structure allow dust to pass from the cutting box and be collected by the dust collection structure.

The patent’s written description further confirms that the presumption against means-plus-function treatment is not rebutted. The written description depicts component parts of the dust collection structure, including a cutting box, dust collection outlet ports, and a dust collection tray. ‘039 patent figs. 2-4. The details of how this structure functions to collect dust are also disclosed, including that the “[c]utting box 130 . . . functions to contain the sawdust and wood chips generated as the blade cuts through the wood” and is “adapted for connection to an external dust collection system.” ‘039 patent col.5 ll.35-40.

Additionally, the written description identifies several prior art patents that disclose various types of dust collection structures. ‘039 patent col.2 ll.9-23. (“U.S. Pat. No. 3,322,169 . . . discloses a dust collector . . . including a rectangular shroud having an inlet and a tapered tube extending rearwardly therefrom . . . . U.S. Pat. No. 3,401,724 . . . discloses a dust collector . . . comprising generally funnel-shaped hood positioned at the rear of the work table. . . . U.S. Pat. No. 4,144,781 . . . discloses a dust collector . . . including a generally funnel-shaped flat-bottomed shroud . . . .”). This disclosure indicates that the term “dust collection structure” is used by persons of skill in the pertinent art to designate structure and “has a reasonably well understood meaning in the art.” Greenburg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996). Though Home Depot argues that we cannot consider these patents because they were never before the district court on this issue, the patents are not only cited, but also discussed in detail in the “Background of the Invention” section of the written description. Our cases establish that “prior art cited in a patent or cited in the prosecution history of the patent constitutes intrinsic evidence.” Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003) (citing Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1371-72 n.4 (Fed. Cir. 2002); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).

In sum, the claim language, the disclosure in the written description, and the meaning to persons of ordinary skill indicate that Home Depot has failed to rebut the presumption that the claimed “dust collection structure” is not a means-plus-function limitation.

As the following table shows, there are two rules that have evolved that treat cited art as intrinsic evidence for purposes of claim construction. One rule is that claims should be construed in view of the prosecution history’s treatment of the prior art so as to determine what the applicant gave up in obtaining allowance of the claims. 

A second rule, and somewhat troubling rule, proposes that “When prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning.  Arthur A. Collins, Inc. v. Northern Telecom Ltd., 216 F.3d 1042 (Fed.Cir.2000),  If you’ve ever prosecuted a patent application, you probably find the last part of that statement ludicrous, ridiculous, preposterous unsound.  Any prosecutor concerned about the meaning of a claim term in an application that he or she is prosecuting is not going to try to define a term by citing a reference that defines that term and hoping the citation is determinative during claim construction.  He or she instead is going to make the meaning of the term clear in the specification.  When it comes to claim drafting, prosecutors tend to prefer explicit disclosure over channeling the prior art.  Moreover, the statement “but also that the patentee intended to adopt that meaning” was simply a bald assertion by the court without any support for the assertion given in the opinion.

This second rule seems to have gotten its genesis with the Arthur Collins decision in 2000.  But, it has now been repeated at least in Tate Access Floors, Kumar, V-Formation, and LG Electronics.  I would suggest that while it is fair to treat cited art as extrinsic evidence so as to understand the meanings of claim terms, adopting a rule that treats cited art standing alone as intrinsic evidence and imputing the patentee with an intent to have adopted the meanings of terms used in those cited references is way out of touch with reality.  Patent prosecutors cite art for various reasons – the very least of those, if at all, is to define claim terms.

At any rate, it is good to be on notice of this rule.  It is also interesting to see how a rule that originally evaluated file history comments about prior art morphed into a variant where cited art standing alone became the intrinsic evidence.  This table may help to show that path more clearly.

Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 45 S.Ct. 117, 69 L.Ed. 316 (1924)

As between the owner of a patent and the public, the scope of the right of exclusion granted is to be determined in the light of the state of the art at the time of the invention. Can the state of the art be shown in a suit by the assignee of a patent against the assignor for infringement to narrow or qualify the construction of the claims and relieve the assignor from the charge? The Circuit Court of Appeals for the Seventh Circuit in Siemens-Halske Electric Co. v. Duncan Electric Co., 142 Fed. 157, seems to exclude any consideration of evidence of this kind for such a purpose. The same view is indicated in subsequent decisions of that court. Chicago & Alton Ry. Co. v. Pressed Steel Car Co., 243 Fed. 883, 887; Foltz Smokeless Furnace Co. v. Eureka Smokeless Furnace Co., 256 Fed. 847. We think, however, that the better rule, in view of the peculiar character of patent property, is that the state of the art may be considered. Otherwise the most satisfactory means of measuring the extent of the grant the Government intended and which the assignor assigned would be denied to the court in 351*351 reaching a just conclusion. Of course, the state of the art can not be used to destroy the patent and defeat the grant, because the assignor is estopped to do this. But the state of the art may be used to construe and narrow the claims of the patent, conceding their validity. The distinction may be a nice one but seems to be workable. Such evidence might not be permissible in a case in which the assignor made specific representations as to the scope of the claims and their construction, inconsistent with the state of the art, on the faith of which the assignee purchased; but that would be a special instance of estoppel by conduct. We are dealing only with the estoppel of an assignment based on the specifications and claims without special matter in pais.


Moto-Mower Co. v. E. C. Stearns & Co. Inc., 126 F.2d 854 (2d Cir. 1942).

The interpretation of the breadth of these claims must rest on the prior art. 856*856 Three prior patents — Davis 750,616, Olds 1,131,156, both cited to the Patent Office when Jenkins’ patent was before it, and Dale 961,485 — are relied on by defendant. It is sufficient to state that these three patents all disclose a lawn mower operated by a motor with a clutch for disengaging the motor. In Davis, the clutch is between the motor and the ground wheel, which latter drives the cutter; in Olds, between the cutter and ground wheel; and in Dale, there are two clutches disengaging both ground wheels from motor and cutter from motor. From these disclosures it follows that the claims in Jenkins’ patent must be read narrowly; that is, Jenkins must rest on the specific manner in which he disengages the various parts from operation.


Remington Rand, Inc. v. Meilink Steel Safe Co., 140 F.2d 519 (6th Cir. 1944)

In a case where the only issue is one of infringement, evidence of prior patents and prior use may be considered for the purpose of construing the patent, and although all of the elements of a patented combination are not found in a single structure in the prior art so as to fully anticipate, in determining the scope of the patent and its place in the art as affecting the question of infringement, prior patents showing separate elements of the combination, may properly be considered. Ventilated Cushion & Spring Co. v. D’Arcy, 6 Cir., 232 F. 468.

The patent in question must be considered in the light of the state of the art at the time it was granted (Cincinnati Cadillac Company v. English & Mersick Co., 6 Cir., 18 F.2d 542) and its claims must be construed in the light of its specifications and drawings. Knapp v. Morss, 150 U.S. 221, 228, 14 S.Ct. 81, 37 L.Ed. 1059.


Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)

It is, of course, well settled that an invention is construed not only in the light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office. Hogg v. Emerson, 11 How. 587 (1850); Crawford v. Heysinger, 123 U. S. 589 (1887). Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent. Powers-Kennedy Co. v. Concrete Co., 282 U. S. 175, 185-186 (1930); Schriber Co. v. Cleveland Trust Co., 311 U. S. 211, 220-221 (1940).


Autogiro Co. of America v. United States, 181 Ct.Cl. 55, 384 F.2d 391, 399, 155 USPQ 697, 704 (1967)

File wrapper. — The file wrapper contains the entire record of the proceedings in the Patent Office from the first application papers to the issued patent. Since all express representations of the patent applicant made to induce a patent grant are in the file wrapper, this material provides an accurate charting of the patent’s pre-issuance history. One use of the file wrapper is file wrapper estoppel, which is the application of familiar estoppel principles to Patent Office prosecution and patent infringement litigation. The patent applicant must 399*399 convince the patent examiner that his invention meets the statutory requirements;[10] otherwise, a patent will not be issued. When the application is rejected, the applicant will insert limitations and restrictions for the purpose of inducing the Patent Office to grant his patent. When the patent is issued, the patentee cannot disclaim these alterations and seek an interpretation that would ignore them. He cannot construe the claims narrowly before the Patent Office and later broadly before the courts.[11] File wrapper estoppel serves two functions in claim interpretation; the applicant’s statements not only define terms, but also set the barriers within which the claim’s meaning must be kept. These results arise when the file wrapper discloses either what the claim covers or what it does not cover.

The file wrapper also has a broader and more general use. This is its utilization, like the specification and drawings, to determine the scope of claims.[12] For example, the prior art cited in the file wrapper is used in this manner. In file wrapper estoppel, it is not the prior art that provides the guidelines, but the applicant’s acquiescence with regard to the prior art. In its broader use as source material, the prior art cited in the file wrapper gives clues as to what the claims do not cover. Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 45 S.Ct. 117, 69 L.Ed. 316 (1924); Remington Rand, Inc. v. Meilink Steel Safe Co., 140 F.2d 519 (6th Cir. 1944). Moto-Mower Co. v. E. C. Stearns & Co. Inc., 126 F.2d 854 (2d Cir. 1942).


Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1566-67 (Fed.Cir.1983)




Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569-71, 219 USPQ 1137, 1140-42 (Fed.Cir.1983)

At the time of the Fromson invention, the state of the art was depicted generally by U.S. Patent 2,714,006, issued on July 26, 1955 to Jewett and Case (Jewett). Jewett teaches the preparation of a presensitized lithographic plate by: first treating the surface of an aluminum sheet with an aqueous solution of an alkali metal silicate to form a water insoluble, hydrophilic, siliceous, organophobic surface layer; treating that layer with a diazo compound to form a light-sensitive, water soluble, diazo coating; and exposing portions of the coated plate to light through a negative or stencil, thus causing the exposed portions to become water insoluble, hydrophobic, organophilic image areas. The plate is then washed 1567*1567 with water to remove the water soluble diazo portions that were not exposed to light, thereby exposing the water insoluble, hydrophilic, organophobic, siliceous surfaces in their place (non-image areas). An image developer or printer’s developing ink is poured on the plate and the excess wiped off, making the image areas plainly visible. The plate is then ready for mounting on a press, successive treatments with water and ink, and printing. In this process, the image areas absorb ink while the non-image areas repel it.

The foregoing is fully consistent with long-standing use of “reaction” in the lithography art. Claims are normally construed as they would be by those of ordinary skill in the art. See e.g., Schenck v. Nortron Corp., 713 F.2d 782, 785, 218 USPQ 698, 701-02 (Fed.Cir.1983). Jewett interchangeably uses terms such as “treating”, “treatment”, and “react”, to describe a lithographic plate producing process. Jewett’s claims use “reacting”, “treatment”, and “reaction product”. Jewett makes no attempt to define the structure of the layer there disclosed (as an aluminosilicate compound or otherwise), although it does mention the hydrophilic layer as being chemically bonded to the aluminum surface. Jewett refers to the layer as “silicate treatment”, as “silicate or silicon containing” film, or as “an inorganic material such as silicate”. It is not unreasonable to conclude that one of ordinary skill in the lithography art would interpret “react” in Fromson to mean the same thing it appears to mean in Jewett, i.e., the treatment of a metal substrate with an aqueous solution to yield a layer, regardless of the chemical structure of the layer or the proper label for the phenomena that produced it.

[Jewett patent was mentioned in the specification of Fromson’s patent]


Tandon Corp. v. International Trade Comm’n, 831 F.2d 1017, 1021, 4 USPQ2d 1283, 1286 (Fed.Cir.1987)

Claim interpretation is a question of law, having factual underpinnings. When the meaning of key terms of claims is disputed, as in this case, extrinsic evidence may be adduced including testimony of witnesses, and reference may be had to the specification, the prosecution history, prior art, and other claims. H.H. Robertson, Co. v. United Steel Deck, Inc., 820 F.2d 384, 389, 2 USPQ2d 1926, 1929 (Fed.Cir.1987); SRI International v. Matsushita Electric Corp. of America, 775 F.2d 1107, 1117 n. 11, 1118, 227 USPQ 577, 582 n. 11, 583 (Fed.Cir.1985). Claims may not be construed one way in order to obtain their allowance and in a contrary way against infringers. Autogiro Company of America v. United States, 384 F.2d 391, 398-99, 181 Ct.Cl. 55, 155 USPQ 697, 703-04 (1967). When the interpretation of claims requires findings of underlying fact, those factual findings are reviewed in accordance with the appropriate evidentiary standard, i.e., that of substantial evidence. Texas Instruments, Inc. v. U.S. International Trade Commission, 805 F.2d 1558, 1562 n. 2, 231 USPQ 833, 834 n. 2 (Fed.Cir.1986).


SRI International v. Matsushita Electric Corp. of America, 775 F.2d 1107, 1117 n. 11, 1118, 227 USPQ 577, 582 n. 11, 583 (Fed.Cir.1985)

To understand what is being claimed in each claim one must often refer to the specification, prosecution, and prior art. One must do so to resolve any ambiguity in claim language. Use may be made by either party of materials extraneous to the words of a claim, to give them a “special meaning” which will support an assertion of actual infringement/non-infringement under the doctrines of equivalents/reverse equivalents. That use does not change the answer to the question of whether the claim language as written “reads on” the accused device, which is synonymous with what has long been called “literal infringement”. As the text makes clear, determination that the claim words read literally on the accused device is but an “initial hurdle”. See Autogiro Co. of America v. United States, 384 F.2d 391, 399, 181 Ct.Cl. 55, 155 USPQ 697, 704 (1967).


Lemelson v. General Mills, Inc., 968 F. 2d 1202, 1206 (Fed. Cir. 1992)


In determining the meaning of a claim, it is necessary to examine closely the language of the claim, the specification, and the prosecution history. See, e.g., Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569-71, 219 USPQ 1137, 1140-42 (Fed.Cir.1983). This is particularly true if, as is often the case, a dispute exists as to how language of the claim should be interpreted and the claim as a whole construed. The prosecution history gives insight into what the applicant originally claimed as the invention, and often what the applicant gave up in order to meet the Examiner’s objections. Prosecution history is especially important when the invention involves a crowded art field, or when there is particular prior art that the applicant is trying to distinguish.


Markman, 52 F.3d at 979-80

Further, it is only fair (and statutorily required) that competitors be able to ascertain to a reasonable degree the scope of the patentee’s right to exclude. Merrill v. Yeomans, 94 U.S. at 573-74 (“It seems to us that nothing can be more just and fair, both to the patentee and to the public, than that the former should understand, and correctly describe, just what he has invented, and for what he claims a patent.”); Hogg v. Emerson, 47 U.S. (6 How.) at 484. They may understand what is the scope of the patent 979*979 owner’s rights by obtaining the patent and prosecution history — “the undisputed public record,” Senmed, 888 F.2d at 819 n. 8, 12 USPQ2d at 1512 n. 8 — and applying established rules of construction to the language of the patent claim in the context of the patent. Moreover, competitors should be able to rest assured, if infringement litigation occurs, that a judge, trained in the law, will similarly analyze the text of the patent and its associated public record and apply the established rules of construction, and in that way arrive at the true and consistent scope of the patent owner’s rights to be given legal effect.


Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)

Third, the court may also consider the prosecution history of the patent, if in evidence. Id. at 980, 52 F.3d 967, 34 USPQ2d at 1330; Graham v. John Deere, 383 U.S. 1, 33, 86 S.Ct. 684, 701-02, 15 L.Ed.2d 545, 148 U.S.P.Q. 459, 473 (1966). This history contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims. As such, the record before the Patent and Trademark Office is often of critical significance in determining the meaning of the claims. See Markman, 52 F.3d at 980, 34 USPQ2d at 1330; Southwall 1583*1583 Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576, 34 USPQ2d 1673, 1676 (Fed.Cir. 1995) (“The prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution.”) (citations omitted). Included within an analysis of the file history may be an examination of the prior art cited therein. Autogiro Co. of America v. United States, 181 Ct.Cl. 55, 384 F.2d 391, 399, 155 USPQ 697, 704 (1967) (“In its broader use as source material, the prior art cited in the file wrapper gives clues as to what the claims do not cover.”).


Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584-85 (Fed. Cir. 1996)

In addition, a court in its discretion may admit and rely on prior art proffered by one of the parties, whether or not cited in the specification or the file history. This prior art can often help to demonstrate how a disputed term is used by those skilled in the art. Such art may make it unnecessary to rely on expert testimony and may save much trial time. As compared to expert testimony, which often only indicates what a particular expert believes a term means, prior art references may also be more indicative of what all those skilled in the art generally believe a certain term means. Once again, however, reliance on such evidence is unnecessary, and indeed improper, when the disputed terms can be understood from a careful reading of the public record. See Kearns v. Chrysler Corp., 32 F.3d 1541, 1547, 31 USPQ2d 1746, 1750 (Fed.Cir.1994). Nor may it be used to vary claim terms from how 1585*1585 they are defined, even implicitly, in the specification or file history.


Arthur A. Collins, Inc. v. Northern Telecom Ltd., 216 F.3d 1042 (Fed.Cir.2000),

The district court construed the TST switch limitation to require a three-stage switch. The first and third stages are time switches, which allow a change in the time slot occupied by a channel of data within a frame of channels. The first and third stages include the ports of the TST switch, with each port having a memory. The second stage is a single-stage space switch, which performs a change in the physical transmission path of a channel. To reach that construction of the TST switch limitation, the court relied primarily on the sole embodiment of the invention set forth in the written description and illustrated in figure 3 of each patent. Although the written description refers to TST switches and systems disclosed and claimed in several other patents, the court declined to consider the teachings of those patents to ascertain the meaning of the term as used in the ‘589 and ‘907 patents or as understood by a person skilled in the telecommunications art.

In construing the TST switch limitation, the district court properly consulted the written description and figure 3 of the patent. See, e.g., CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1153, 42 USPQ2d 1577, 1583 (Fed.Cir.1997). The written description and the drawing, however, do not suggest that Collins was using the term “TST switch” in a special manner in the two patents. In particular, nothing in the claims, descriptions, or drawings of the ‘589 and ‘907 patents requires limiting the TST switch to a single-stage space switch. Nor does any point of novelty or asserted advantage of the Collins inventions depend on the TST switch having a single-stage space switch. Accordingly, the normal rule of construing patent terms as persons skilled in the art would understand them applies in this case.

Even when prior art is not cited in the written description or the prosecution history, it may assist in ascertaining the 1045*1045 meaning of a term to a person skilled in the art. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584, 39 USPQ2d 1573, 1578 (Fed.Cir.1996). When prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning.

The ‘589 and ‘907 patents note that “system improvements attainable with time division transmission and switching techniques are very significant, and have resulted in the development of TST switches and systems described and claimed in, for example, U.S. Pat. Nos. 3,925,621; 3,956,593; 4,005,272; and 4,038,497.” ‘589 patent, col. 2, ll. 9-14; ‘907 patent, col. 2, ll. 1-6. The cited patents indicate that switches with time-switch inputs and outputs and with multiple intermediate space switches are referred to as TST switches, even though such structures can also be called, for example, TSSST switches. Based on the way the term “TST switch” is used in those patents, and the absence of any indication in Collins’s patents or in their prosecution histories that the term was meant to have a different meaning in the ‘589 and ‘907 patents, we agree with Collins that the TST switch limitation allows a multiple-stage space switch, rather than just a single-stage space switch.


Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1371-72 n.4 (Fed. Cir. 2002)

Contrary to Interface’s next contention, nothing in the prosecution history, or elsewhere in the prior art of record,[4] renders proper a construction that limits the claimed “border” to a single, horizontal layer. Interface would have us adopt its narrow construction in order to preserve the validity of the ‘491 patent. It contends that the prior art would render the asserted claims obvious if they cover floor panels with simple beveled edges such as its accused products.

[4] In construing claims, we look first to the intrinsic evidence of record — the patent, including the claims, remainder of the specification, and, if it is in evidence, the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed.Cir.1996). The court may not vary the meaning of claim language when that meaning is clear from the intrinsic evidence. Prior art cited in the prosecution history falls within the category of intrinsic evidence. Prior art the examiner failed to consider is extrinsic. In the present case, however, we will discuss all of the prior art on which Interface now seeks to rely, because none of it compels its narrow construction of the term “border.”

Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003)

Our cases also establish that prior art cited in a patent or cited in the prosecution history of the patent constitutes intrinsic evidence. Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1371-72 n. 4 (Fed.Cir.2002); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996); Markman, 52 F.3d at 979-80. For example, in Arthur A. Collins, Inc. v. Northern Telecom Ltd., 216 F.3d 1042 (Fed.Cir.2000), we rejected the district court’s claim construction, which “declined to consider the teachings of [prior art referenced in the patent] to ascertain the meaning” of the claim term “time-space-time (TST) switch.” Id. at 1044. Instead, we interpreted the term based on its usage in the prior art that was cited in the patent, explaining that “[w]hen prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning.” Id. at 1045.

In the present case, the Polk patent is not simply cited in the ‘686 patent as pertinent prior art; nor is there any showing that the Polk patent adopted a special definition at variance with that prevailing in the art. Rather the Polk patent was considered by both the applicant and the examiner to be highly pertinent prior art, and there is no indication that the Polk patent’s express definition (even if inconsistent with the general dictionary definition) was in any way at variance with the definition that would have been used by those skilled in the art at the time. Indeed, as noted below, Ovonic’s own ‘440 patent, though issued some few years after the issuance of the Kumar patent, uses the same definition, thus at least suggesting that the “long range order” definition was not unique to the Polk patent.

Under these circumstances, we conclude that the Polk patent definition is to be preferred over the general dictionary definition relied upon by Ovonic. This Polk patent definition should control unless the specification clearly states an alternative meaning or this meaning was disclaimed during prosecution. See Inverness I, 309 F.3d at 1371-72. Here, the specification and prosecution history do not require a different interpretation than the Polk patent’s definition of an amorphous alloy, namely one “in which the constituent atoms are arranged in a spatial pattern that exhibits no long range order….” Polk patent, col. 1, ll. 13-15.


V-Formation, Inc. v. Benetton Group SpA, 401 F. 3d 1307 (Fed. Cir. 2005)


The district court properly considered other intrinsic evidence to aid its construction. For instance, the district court considered U.S. Patent No. 5,549,310 (issued August 27, 1996) (the Meibock patent). The Meibock patent is prior art that was listed as a reference on the face of the ‘466 patent and in an Information Disclosure Statement. This prior art reference to Meibock is not extrinsic evidence. This court has established that “prior art cited in a patent or cited in the prosecution history of the patent constitutes intrinsic evidence.” Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed.Cir.2003); Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1371-72 n. 4 (Fed.Cir.2002); Vitronics, 90 F.3d at 1582 (Fed.Cir.1996); Markman, 52 F.3d at 979-80. For example, in Arthur A. Collins, Inc. v. Northern Telecom Ltd., 216 F.3d 1042 (Fed.Cir.2000), this court rejected the district court’s claim construction, which “declined to consider the teachings of [prior art referenced in the patent] to ascertain the meaning” of the claim term “time-space-time (TST) switch.” Id. at 1044. Instead, this court interpreted the term based on its usage in the prior art that was cited in the patent, explaining that “when prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning.” Id. at 1045.


Phillips v. AWH Corp., 415 F. 3d 1303, 1317 (Fed. Cir. 2005)


In addition to consulting the specification, we have held that a court “should also consider the patent’s prosecution history, if it is in evidence.” Markman, 52 F.3d at 980; see also Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) (“[A]n invention is construed not only in the light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office.”). The prosecution history, which we have designated as part of the “intrinsic evidence,” consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent. Autogiro, 384 F.2d at 399. Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent. See Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed.Cir.1992). Furthermore, like the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent. Yet because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes. See Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380-82 (Fed.Cir.2002) (the ambiguity of the prosecution history made it less relevant to claim construction); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1580 (Fed.Cir.1996) (the ambiguity of the prosecution history made it “unhelpful as an interpretive resource” for claim construction). Nonetheless, 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. Vitronics, 90 F.3d at 1582-83; see also Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed.Cir. 2005) (“The purpose of consulting the prosecution history in construing a claim is to `exclude any interpretation that was disclaimed during prosecution.'”), quoting ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1580 (Fed.Cir.1988); Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed.Cir.1995).


LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F. 3d 1364 (Fed. Cir. 2006)


But, this does not end our inquiry. The proper claim construction is “the ordinary and customary meaning . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313 (citations omitted). “When prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning.” Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1045 (Fed. Cir.2000). Although we have concluded that the patentee did not expressly adopt the definition of “requesting agent” in the incorporated industry standard, that standard remains relevant in determining the meaning of the claim term to one of ordinary skill in the art at the time the patent application was filed, and it is treated as intrinsic evidence for claim construction purposes, see V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1311 (Fed. Cir.2005) (“This court has established that `prior art cited in a patent or cited in the prosecution history of the patent constitutes intrinsic evidence.'”) (citations omitted).





Backsliding to a “Gist of the Invention” Analysis

Sunday, August 21st, 2011

It strikes me that there is some backsliding taking place by judges of the Federal Circuit in what boils down to their using a “gist of the invention” test.  You saw it most recently in the opinion of Judges Dyk, Bryson, and Prost in Cybersource to assess patent eligible subject matter where they said: 

Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. sec. 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.

Cybersource v. Retail Decisions, slip opinion at page 17 (Fed. Cir. Aug. 16, 2011)

In the Cybersource opinion, the panel essentially rewrote the article of manufacture claim (i.e., Beauregard claim) into a method claim so as to find the claim ineligible subject matter as reciting a mental process.  The panel rationalized that the gist of the invention was an abstract idea, as informed by the panel’s interpretation of the method claim, and therefore the article of manufacture claim should be analyzed similarly — regardless of whether that analysis required one to disregard express claim language. 

What may come as a surprise to many is that there was a similarly unsettling suggestion by Chief Judge Rader in the oral argument of Research Corporation Technologies v. Microsoft in his suggestion that one could just look to the subject matter of the specification as a test to determine patent eligibility, as opposed to looking to the express language of the particular claim at issue.  In that oral argument, Chief Judge Rader had the following colloquies with the patentee’s counsel and defendant’s counsel, respectively: [Listen] and [Listen].  Judge Rader seemed to be suggesting (at least for purposes of discussion during that pre-Bilski oral argument) that the patent eligibility of the  invention be gauged from the specification in order to assess section 101, rather than assessing the actual text of each claim on a claim by claim basis.   At the end of the day, the Research Corporation Technologies panel did not adopt such a test.*  Had they done so, it would have been just as troubling as what the Cybersource panel has done in re-writing Beauregard claims as method claims for purposes of assessing patent eligibility. 

It is interesting to see that one of the court’s newest members, Judge O’Malley, wrote the following as part of her dissent in Ormco v. Align, a case she sat on by designation when she was a district court judge:

This court, however, has rejected a claim construction process based on the “essence” of an invention. See, e.g., Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed.Cir.2002) (“It is well settled that `there is no legally recognizable or protected essential element, gist or heart of the invention in a combination patent.'”) (citing Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961)). Indeed, this court has done so quite forcefully and quite recently. See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1330-31 (Fed.Cir.2007) (“We sympathize with the district court’s choice, since 1323*1323 we agree that [the feature] is an essential element of the invention. . . . However, we cannot endorse a construction analysis that does not identify `a textual reference in the actual language of the claim with which to associate a proffered claim construction.'”) (quoting Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed.Cir. 1999)). Simply stated, “automatic determination of finish tooth positions without human adjustment of the final results” is a limitation that the majority has amalgamated from the specification of one of the patents in suit without reference to the specific language of any claim of any of the patents.

While Judge O’Malley’s comment was directed to claim construction, it reflects an underlying principle in patent law articluated by the Supreme Court in Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S.336 (1961) (also known as Aro I)  that is worth noting, namely that a patent claim covers the totality of the elements of the claim.  The Supreme Court in Aro I stated:

For if anything is settled in the patent law, it is that the combination patent covers only the totality of the elements in the claim, and that no element, separately viewed, is within the grant. See the Mercoid cases, supra, 320 U.S. at 320 U. S. 667; 320 U.S. at 320 U. S. 684. [Footnote 10] The basic fallacy in respondent’s position is that it requires the ascribing to one element of the patented combination the status of patented invention in itself. Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent. In Mercoid Corp. v. Mid-Continent Co., supra, the Court said:

“That result may not be obviated in the present case by calling the combustion stoker switch the ‘heart of the invention’ or the ‘advance in the art.’ The patent is for a combination only. Since none of the separate elements of the combination is claimed as the invention, none of them, when dealt with separately, is protected by the patent monopoly.”

320 U.S. at 320 U. S. 667. And in Mercoid Corp. v. Minneapolis-Honeywell Regulator Co., supra, the Court said:

“The fact that an unpatented part of a combination patent may distinguish the invention does not draw to it the privileges of a patent. That may be done only in the manner provided by law. However worthy it may be, however essential to the patent, an unpatented part of a combination patent is no more entitled to monopolistic protection than any other unpatented device.”

Aro Mfg. Co., Inc. v. Convertible Top Co., 365 U.S. 336, 344-45 (1961).

As the Federal Circuit struggles with the proper test to apply post-Bilski, it should keep this principle in mind.  Each claim should stand on its own merits (i.e., its claim limitations as a whole) for purposes of patent eligibility, rather than relying on the gist of the invention.  This would avoid the temptation to import the gist of the invention from related claims or to try to divine the invention from the specification.


You can listen to the entire oral argument of Research Corporation Technologies, Inc. v. Microsoft Corp. [here].

You can listen to the oral argument of Cybersource Corp. v. Retail Decisions [here].


Updated 8/22/11:

*A more careful reader than I brought to my attention the portion of Judge Rader’s opinion where he states:

The invention presents functional and palpable applications in the field of computer technology. These inventions address “a need in the art for a method of and apparatus for the halftone rendering of gray scale images in which a digital data processor is utilized in a simple and precise manner to accomplish the halftone rendering.” ‘310 patent col.3 ll.33-40. The fact that some claims in the ‘310 and ‘228 patents require a “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” also confirm this court’s holding that the invention is not abstract. Indeed, this court notes that inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.

It is important to realize that only three claims from the ‘310 and ‘228 patents were under review in the case for purposes of subject matter ineligibility.  Those claims recited the following:

Claims 1 and 2 of the ‘310 patent:

1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.


Claim 11 of the ‘228 patent:

11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to perform said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.

So, Judge Rader’s reference to “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” is a reference to claim language in claims other than the claims at issue; because, claims 1, 2, and 11 listed above recite none of those elements.