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Pecked to death by ducks April 29, 2016

Posted by Brian Schar in General.
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You may be familiar with travel writer Tim Cahill; if not, do yourself a favor and read “Road Fever.”  (Full disclosure: I am not providing a link to Amazon because I make no money off this blog, nor do I aspire to.  You can cut and paste the title yourself into your online retailer of choice.)  “Road Fever” concerns an attempt to set a speed record driving from the southernmost road-accessible point in South America to the northernmost road-accessible point in North America.  It is also a fascinating window into how such adventures are planned and financed.  Cahill published another book, which is more of a collection of magazine articles he wrote, entitled “Pecked to Death by Ducks.”

Some file histories I was just reviewing made me think about that.  Personally, after I have exhausted all reasonable amendments in a case, and the Examiner just doesn’t want to listen, and I am 100% confident in my position, I will appeal.  Otherwise the needle never gets moved in that case.  The file histories I was just reviewing, however, are examples of endless RCE churn, and we’ve all been there.  Nonfinal Office Action -> interview -> tentative agreement that a particular amendment overcomes the rejection “but the search needs to be updated” -> Final Office Action -> interview -> tentative agreement that a particular amendment overcomes the rejection “but the search needs to be updated” -> new Nonfinal Office Action.  Some of these cases have pendencies approaching 10 years.

As averse as you may be to confrontation with an Examiner, at some point you just have to accept the fact that the case is never going to issue unless you appeal.  Sometimes the fault is the Examiner’s, sometimes the SPE’s, sometimes your own.  But you’ll never get off the merry-go-round if you don’t do something different in a case from what you’ve done before.  6 “minor amendments” in a row to overcome objections end up narrowing a claim a lot, and each of those amendments is another duck peck.

Also by way of full disclosure, I got pecked by a duck when I was a kid, and it hurt a lot.   I made the mistake up picking up its duckling and it responded by clawing into my back and pecking the back of my head quickly and repeatedly.  As Mama Duck no doubt expected, it had the desired effect of me dropping the ducking and running away.

Words matter! April 22, 2016

Posted by Brian Schar in Federal Circuit, General, Patent prosecution.
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In patent prosecution, the specific word choices made in both the specification and the claims are critical to the validity and enforceability of those claims.

The Federal Circuit confirmed this in In re Man Machine Interface Technologies LLC.  The claims included “adapted to” limitations, such as “a body adapted to be held by the human hand.”  The drafter may have thought that “adapted to” was equivalent to the more-common “configured to.”  However, the Federal Circuit pointed out that, according to its precedent, “the phrase ‘adapted to’ generally means ‘made to,’ ‘designed to,’ or ‘configured to,’ through it can also be used more broadly to mean ‘capable of’ or ‘suitable for.'”  (In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).

Indeed, this language is lifted almost directly from In re Giannelli, which in turn lifted that language almost directly from Aspex Eyewear, which utilized dictionaries to construe the phrase “adapted to.”  (Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).

The Federal Circuit clearly considers “capable of” to be a broader construction than “configured to.”  That makes sense.  For example, the tip of a butter knife might be “capable of” turning a conventional slotted screw, but that butter knife is not “configured to” be used for that purpose.

However, anyone who has prosecuted patents at the USPTO knows that the Office tends to apply a “capable of” construction to every claim limitation, whether the applicant has chosen to limit his or her claims with an “adapted to” or “configured to” phrase, or in some other manner.

Here, the patentee was saved by the “reasonable” prong of the broadest reasonable interpretation standard, just as happened in In re Giannelli.  The specification made it clear that “adapted to” had its narrower meaning of “made to” or “designed to.”  Further, the specification expressly distinguished the type of device disclosed in the key reference cited by the Examiner.  As the Federal Circuit stated,” [t]he broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification.”

There are two lessons here.  First, make sure you fully understand the meaning of terms like “adapted to” before using them in a patent claim.  There are hidden pitfalls in virtually every approach to claim drafting, and it takes time to learn them, but you must learn them.  Second, the Federal Circuit continues to emphasize that the broadest reasonable interpretation of claim language must in fact be reasonable.  While it may be difficult to convince Examiners of this at times, hold fast to this argument, and emphasize it on appeal.


Unhappiness is… April 20, 2016

Posted by Brian Schar in General.
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…when your outside counsel pays one of those fraudulent Slovak invoices that looks like a foreign counsel bill, approves it, and passes it on to you for payment.

I am sure that the overwhelming majority of Slovaks are honest and cool and good.  But seriously, when you get a letter with a Slovak return address regarding a PCT application, you really have to look at it extra carefully.

The “broadest reasonable interpretation” actually has to be reasonable April 14, 2016

Posted by Brian Schar in General.
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PPC Broadband v. Corning Optical is one of the more helpful cases for patentees and applicants that has been decided for a few months.

If you’ve been at this crazy patent prosecution business for a while like I have, you remember the dictionary shopping in the wake of Phillips v. AWH.  This wasn’t just literal dictionary shopping, even though I went on eBay and bought a number of used dictionaries along with every other patent prosecutor.  Such dictionary shopping in practice meant poring through each of those dictionaries and cherry picking the definition that fit the argument you wanted to make against a particular Office Action.  That wasn’t ideal from either a practitioner or examiner standpoint, though, and the pure reliance on dictionaries was softened in later case law.

However, recently the PTAB seems to have caught the dictionary mania of 10 years ago, and that was a key issue in PPC Broadband.  The PTAB construed the term “around” consistent with the fourth of at least four definitions of “around” in the American Heritage College Dictionary: “in the immediate vicinity of; near.”  That is, the PTAB cherry-picked the definition of “around” that suited its purpose.  As Judge Moore pointed out, “[t]he Board seems to have arrived at its construction by referencing the dictionaries cited by the parties and simply selecting the broadest definition therein.”

However, the Federal Circuit emphasized that the PTAB has to give patent claims their “broadest reasonable interpretation consistent with the specification,” not the broadest possible construction.  “The fact that ‘around’ has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of th[e] specification.”

PPC Broadband’s proposed construction of “reside around” was “encircle or surround,” and this was the second of at least four definitions of “around” in the American Heritage College Dictionary.  In the patent at issue, the components of the claimed coaxial connectors as described in the specification “partially or wholly encircle the inner electrical conductor.”  The broadest reasonable interpretation in light of the specification thus is “encircle or surround,” not just being “in the immediate vicinity of, near.”  As Judge Moore states, “[g]iven the context of this technology, it seems odd to construe the term ‘reside around’ without recognizing the context of its use in terms of the coaxial cable at issue.”  If it wasn’t clear enough before that even after Phillips a bare dictionary definition won’t cut it for claim “interpretation,” it is now.  The PTAB is overworked and overloaded, but it can’t shortcut its way out of hard cases by picking up a few dictionaries and selecting a definition based solely on the criteria that the definition invalidates the patent.

The Federal Circuit also expressly declined Corning’s invitation to hold that the “broadest reasonable interpretation is the interpretation which includes as many of the disclosed embodiments as possible.”  To the contrary: “[a]bove all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.  The fact that one construction may cover more embodiments than another does not categorically render that construction reasonable.”

Current patent examination is riddled through with bare, unsupported assertions by Examiners that a particular broad interpretation of a claim term is just “broadest reasonable interpretation.”  PPC Broadband provides applicants with a powerful weapon to combat those vague and poorly-thought-out rejections.  Where the Examiner’s interpretation is nonexistent, or vague, or not consistent with the specification, the first and more powerful argument is that the Examiner has failed to interpret that term i a way that is reasonable in light of the specification.