{"id":2141,"date":"2010-04-05T21:10:34","date_gmt":"2010-04-06T03:10:34","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=2141"},"modified":"2010-04-05T21:10:34","modified_gmt":"2010-04-06T03:10:34","slug":"disrupting-settled-expectations","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=2141","title":{"rendered":"Disrupting settled expectations"},"content":{"rendered":"

In the recent en banc<\/em> decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.<\/span>, 2008-1248 (Fed. Cir. Mar. 22, 2010), the majority opinion contains the following statement about not disrupting settled expectations of the inventing community:<\/p>\n

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In addition to the statutory language and Supreme Court precedent supporting the existence of a written description requirement separate from enablement, stare decisis<\/em> impels us to uphold it now. Ariad acknowledges that this has been the law for over forty years, see Appellee Br. 24, and to change course now would disrupt the settled expectations of the inventing community, which has relied on it in drafting and prosecuting patents, concluding licensing agreements, and rendering validity and infringement opinions. As the Supreme Court stated in admonishing this court, we \u201cmust be cautious before adopting changes that disrupt the settled expectations of the inventing community.\u201d Festo<\/span>, 535 U.S. at 739; see also<\/em> Watson v. United States<\/span>, 552 U.S. 74, 82 (2007) (\u201cA difference of opinion within the Court . . . does not keep the door open for another try at statutory construction, where stare decisis<\/em> has special force [since] the legislative power is implicated, and Congress remains free to alter what we have done.\u201d (internal quotations omitted)). If the law of written description is to be changed, contrary to sound policy and the uniform holdings of this court, the settled expectations of the inventing and investing communities, and PTO practice, such a decision would require good reason and would rest with Congress.<\/strong><\/span><\/span><\/p>\n<\/blockquote>\n

\u00a0<\/p>\n

While it is reassuring to know that the en banc<\/em> panel of the Federal Circuit appreciates the importance of not\u00a0disrupting the\u00a0settled expectations of the inventing community, one wonders\u00a0if this is more sizzle than steak.<\/p>\n

\u00a0<\/p>\n

(1)\u00a0 Take for example the cases of Dayco Prod., Inc. v. Total Containment, Inc.<\/span>, 329 F.3d 1358 (Fed. Cir. 2003) and McKesson Info. Solutions, Inc. v. Bridge Med., Inc.<\/span>, 487 F.3d 897 (Fed. Cir. 2007) in which the Federal Circuit seemingly\u00a0failed to\u00a0appreciate the long-accepted\u00a0practice by the inventing community\u00a0of not citing\u00a0office actions from related patent applications back to the Patent Office (the same Patent Office that\u00a0issued the office actions in the first place).\u00a0 In those cases, the Federal Circuit certainly disrupted the settled expectations of the inventing community by casting\u00a0a cloud over the validity of\u00a0many\u00a0issued U.S. patents.\u00a0 As a kicker, the U.S. Patent Office, already struggling with a massive backlog,\u00a0has been\u00a0burdened with processing\u00a0additional IDS filings that waste the Patent Office’s resources and applicants’ money.<\/p>\n

\u00a0<\/p>\n

(2)\u00a0 As another example, consider the use of patent abstracts by the Federal Circuit to construe claim language.\u00a0 Prior to the amendment of\u00a037 CFR \u00a71.72 this past\u00a0decade,\u00a0 37 CFR \u00a71.72 expressly stated that the abstract of\u00a0a patent “shall not be used for interpreting the scope of the claims<\/strong>.”\u00a0 Abstracts are required by the PTO to assist the PTO and the public generally in determining quickly from a cursory inspection of a patent application or issued patent the nature and gist of the technical disclosure.\u00a0<\/p>\n

\u00a0<\/p>\n

In Hill-Rom Co., Inc. v. Kinetic Concepts, Inc.<\/span>, 209 F.3d 1337 (Fed. Cir. 2000), the court stated:<\/p>\n

\u00a0<\/p>\n

\n

Citing 37 C.F.R. \u00a7 1.72(b), which provides that the abstract of the patent “shall not be used for interpreting the scope of the claims,” <\/span>Hill-Rom<\/span><\/span><\/a> argues that it would be improper for us to consider the abstract in determining whether the district court correctly construed the claims of the ‘346 patent. Section 1.72(b), however, is a rule of the Patent and Trademark Office that governs the conduct of patent examiners in examining patent applications; it does not address the process by which courts construe claims in infringement actions. We have frequently looked to the abstract to determine the scope of the invention, see, e.g.<\/em>, United States Surgical Corp. v. Ethicon, Inc.<\/span>, <\/span>103 F.3d 1554<\/span><\/span><\/a>, 1560, 41 USPQ2d 1225, 1230 (Fed. Cir. 1997); Stryker Corp. v. Intermedics Orthopedics, Inc.<\/span>, <\/span>96 F.3d 1409<\/span><\/span><\/a>, 1412, 40 USPQ2d 1065, 1066 (Fed. Cir. 1996); Moleculon Research Corp. v. CBS, Inc.<\/span>, <\/span>793 F.2d 1261<\/span><\/span><\/a>, 1269, 229 USPQ 805, 810 (Fed. Cir. 1986), and we are aware of no legal principle that would require us to disregard that potentially helpful source of intrinsic evidence as to the meaning of claims.<\/span><\/span><\/p>\n<\/blockquote>\n

\u00a0<\/p>\n

The selective acknowledgement of Patent Office regulations by the Federal Circuit certainly does not indicate\u00a0\u00a0a respect for the settled expectations of the inventing community.<\/p>\n

\u00a0<\/p>\n

(3)\u00a0 Perhaps the strongest trend these days is for the Federal Circuit to rely heavily on the language “the invention” or “the present invention” when construing a claim.\u00a0 Such language has been used for aeons\u00a0in patents.\u00a0\u00a0\u00a0 Nevertheless, in the last decade or so, the court\u00a0has been\u00a0relying on this language\u00a0with increasing frequency\u00a0to read limitations into a claim.\u00a0 In doing so, it failed to take into account the long-settled expectations of the inventing community as well as the\u00a0significant\u00a0effect on the construction of claim language\u00a0in\u00a0issued patents written as many as twenty years earlier.<\/p>\n

\u00a0<\/p>\n

\u00a0<\/p>\n","protected":false},"excerpt":{"rendered":"

In the recent en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 2008-1248 (Fed. Cir. Mar. 22, 2010), the majority opinion contains the following statement about not disrupting settled expectations of the inventing community: In addition to the statutory language and Supreme Court precedent supporting the existence of a written description requirement […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2141"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2141"}],"version-history":[{"count":61,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2141\/revisions"}],"predecessor-version":[{"id":2202,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2141\/revisions\/2202"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2141"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2141"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2141"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}