Festo Corp. v. SMC Corp. (Fed. Cir. 2007).
In 1988, Festo sued SMC for infringement of its magnetized pistons. Since then, the CAFC has issued numerous Festo opinions including two en banc. The Supreme Court has also ruled twice. This appeal, like many of the others involve the scope and limits of the doctrine of equivalents (DOE).
Doctrine of Equivalents: While patent claim language traditionally defines the patent right, the doctrine of equivalents occasionally allows for a finding of infringement even when an accused product falls outside the literal limits of claim language. More particularly, DOE applies when a claim limitation differs insubstantially from the accused product or if the accused element performs the substantially same function in substantially the same way with substantially the same result (function/way/result test).
Prosecution History Estoppel: A narrowing claim amendment made during prosecution creates a presumption that the element should be narrowly interpreted — legally precluding application of the DOE. In its 2002 Festo decision, the Supreme Court noted three exceptions that would allow for DOE infringement even after a narrowing amendment: (1) the equivalent was unforeseeable; (2) the reason for the narrowing amendment was only tangentially related to the equivalent; or (3) “some other reason…”.
Foreseeable Equivalent: In this case, Festo’s amendment was narrowing, but the patentee argued that SMC’s equivalent was unforeseeable to one of ordinary skill at the time of the amendment. The question was whether the accused product’s aluminum sleeve was a foreseeable alternative of the claimed magnetizable sleeve. Aluminum sleeves were already well known in the art, but Festo argued unforeseeability because no PHOSITA knew that the aluminum sleeve would serve as a magnetic shield (the function of the sleeve). This unknown function — according to Festo — made the use of aluminum unforeseeable. In its briefs, Festo attempted to find a requirement for functional foreseeability in the function/way/result test of DOE.
The CAFC rejected Festo’s argument and instead found that foreseeability should be broadly interpreted — finding “that an alternative is foreseeable if it is disclosed in the pertinent prior art in the field of the invention. In other words, an alternative is foreseeable if it is known in the field of the invention as reflected in the claim scope before amendment.” This result follows the court’s 2003 en banc decision that later developed and nonanalogous technology are “usually not foreseeable” — but that equivalents already known in the relevant field are generally foreseeable.
Here, the CAFC went a step further — implying that the question of whether a PHOSITA could have known the suitability of a particular a alternative is not relevant to the question of foreseeability.
“An equivalent is foreseeable if one skilled in the art would have known that the alternative existed in the field of art as defined by the original claim scope, even if the suitability of the alternative for the particular purposes defined by the amended claim scope were unknown.”
Consequently, the aluminum sleeve was seen as foreseeable – and thus prosecution history estoppel applies to block the doctrine of equivalents.
Dissent: Judge Newman dissents – noting that the opinion is “confound[ing]”, “incorrect”, and “futher erodes the residue of the doctrine of equivalents.”
It is so very interesting and informative,this debate!
All said and done, a dissenting opinion is mostly always more daring and well-researched as it needs to stand scrutiny of even the fellow benchmates,
unless a Judge has a BIAS or Pre-FORMED OPINION which is predictable.
Luke,
As for what I want of Judge Newman, you are right that I don’t want an even longer dissent. What I do want is for her to explain *with citations to the record* why the majority is wrong in asserting that not even PharmaStem could argue from the record that “there was an array of possible choices as to how to achieve that objective or that there were problems to be solved in implementing the prior art suggestion that were not adumbrated in the prior art.”
Judge Newman simply *says* that both sides agreed it would be unduly difficult to carry out the suggested method (or at least let’s assume that’s what she says), but the majority plainly disagreed. Where she is asserting a positive that can be easily proven with one line’s worth of citations, and where the majority is asserting a negative for which no citation is available, the burden is on Judge Newman to make the citation.
As for novelty/obviousness, I don’t understand the relevance of your point. It seems to me the relevant point is that something can be both novel and yet obvious.
“Sub silentio submitter”, it’s true that p55 is in the novelty section – but something can’t be obvious and novel at the same time, so first you have to discuss what the prior art is before you talk about combining it.
You wrote: “The difference is between knowing how to do something and, although not knowing how to do it, having a reasonable expectation of success in doing it because the techniques (blood extraction, cryopreservation, reinsertion) are routine”.
Instances of something being routine, and yet nobody knowing how to it, must surely be very few and far between? It’s almost a contradiction in terms. If the steps to do something are all routine, AND you have every expetactation of success, I don’t see how you cansay that you don’t “know” how to do it. You do know how to do it, you are just waiting for confirmation that you are right.
Also: ‘I don’t see Judge Newman citing any evidence to show that the majority was wrong in stating that “the joint specification indicates that each step of the cryopreservation and transplantation procedure had been spelled out in the prior art.”‘; well indeed, but isn’t that the point – the steps were knowm but it wasn’t obvious (or routine) to combine these, as nobody had any expecatation of success?
And your first point: “I notice that Judge Newman does not cite to any witness’s testimony to support her point”. That’s because she says witnesses on BOTH sides agreed, so not a lot of point in quoting them. Just how long do you want her (alreday very long) dissent to be?
As for the rest, a good point, and I’ve just put a question about estoppel where this thread should really belong…
Regards, Luke
Luke,
Thank you for citing pages of Judge Newman’s opinion. I appreciate that you are taking the time to dig into the case rather than giving general feelings about it.
As to what Judge Newman says on page 55 of her dissent, there are two flaws. First, I notice that Judge Newman does not cite to any witness’s testimony to support her point. She is asserting a positive, so it should have been easy to identify the witnesses of concern. In contrast, the majority cites and analyzes the testimony of Dr. Bernstein and asserts that there was no evidence of record that it was particularly challenging to carry out the suggested method of extracting cord blood, cryopreserving it, and reinserting it. One cannot cite evidence to prove that negative, so the burden seems to be on Judge Newman to point out what in the record makes the majority’s assertion wrong.
Second, Judge Newman’s point comes in the anticipation section of her opinion. Assuming she is right (and I have no way to know), her point does not translate to the obviousness section. The difference is between knowing how to do something and, although not knowing how to do it, having a reasonable expectation of success in doing it because the techniques (blood extraction, cryopreservation, reinsertion) are routine. I don’t see Judge Newman citing any evidence to show that the majority was wrong in stating that “the joint specification indicates that each step of the cryopreservation and transplantation procedure had been spelled out in the prior art.” Indeed, the majority tells us that PharmaStem did not even argue that “there was an array of possible choices as to how to achieve that objective or that there were problems to be solved in implementing the prior art suggestion that were not adumbrated in the prior art.”
Next, you refer to the “many points” on p.65. Without knowing what you had in mind, I cannot address them. But Judge Newman’s main argument on that page is that a reasonable jury could have credited Dr. Bernstein’s testimony. The problem with that argument is that Judge Newman nowhere addresses the case law requiring the court to accept the patentee’s characterization of the prior art in the specification. Dr. Bernstein’s testimony that nobody knew that “true stem cells” were present in high numbers in cord blood was belied by the specification (which is conclusive), as well as the many prior art references discussed in the majority opinion. This seems to be (another) an instance of Judge Newman crediting a patent-validating argument without engaging case law defeating the argument.
“Sub silentio submitter” wrote:
“Ad hominem attacks on judges’ majors asides, can anyone identify where Newman in her Pharamastem dissent addresses the points raised by the majority, including (1) the lack of record evidence showing no expectation of success and (2) the logical flaws in the evidence of surprise and long-felt need. Malcolm Mooney is right that Judge Newman’s reliance on secondary factors has little relationship to the obviousness of the claimed invention”.
Presumably you have read the dissent? I put a question mark there, because these issues are clearly spelt out. For instance on p55, J. Newman writes “witnesses of both sides agree[d] that it was not known, at the time of the Koike reference, how to use cord blood for marrow transplantation…”, and the many points on p65, etc., etc. Likewise for secondary indica, the flaws are left naked. She frequently mentions that deference is due for evidentiary findings, but the majority show none.
Alan McDonald wrote:
“And, if you can get past her obviousness errors, please explain how Newman overcomes the lack of a sale to come within the contributory infringement statute”.
There seems to be a dispute on the facts here? The majority seems to say there was evidence introduced at trial about whether there was a “sale” or not (p25). J. Newman seems to dispute this, saying there was no record of such evidence being introduced to the jury (p75). The majority seem to argue that the district court provided the right instructions, and that because there wasn’t a “sale” (according to the courts’ judgements), the verdict couldn’t stand. J. Newman seems to say because there was no evidence about what a “sale” is put to the jury, as opposed to whether some sort of activity took place, sale or not, and the parties didn’t object at the time, this part of the jury verdict was reasonable. Not sure the dissent has the better argument here, but the rest looks solid.
Regards, Luke
I only recall a case in which the Feds shot down someone attempting to argue the “some other reason” prong.
Before one of the Festo decisions, I went to a luncheon at which Judge Radar discussed the doctrine of equivalents generally. He explained that some of the Feds disliked the uncertainty that the doctrine of equivalents caused, which motivated them to limit its application. If you have to rely on either foreseeability or “some other reason,” you’re in a bad place. Your best (and probably only bet) is tangentiality.
Point of clarification: the Festo mystery term used by the Supremes was the term “unforseeable”. But even that is not as mysterious as the ultra-mysterious Third Way: “some other reason.”
Is anyone aware of a court case where “some other reason” was found for allowing infringement of an amended claim under the DoE?
“the Supreme Court surely had something in mind when they held that an unforseeable equivalent was not excluded from coverage by prosecution history estoppel.”
I agree. I think what they had in mind was severely limiting the applicability of the DoE to amended claims and/or claim terms. That’s one reason the Supremes didn’t spend much time in their decision explicating a narrow definition for the term “foreseeable”.
And, if you can get past her obviousness errors, please explain how Newman overcomes the lack of a sale to come within the contributory infringement statute.
Take it to the bank, when Newman dissents, the majority got it right. She still believes the purpose of the CAFC is to uphold patents, not to uphold patent law.
Ad hominem attacks on judges’ majors asides, can anyone identify where Newman in her Pharamastem dissent addresses the points raised by the majority, including (1) the lack of record evidence showing no expectation of success and (2) the logical flaws in the evidence of surprise and long-felt need. Malcolm Mooney is right that Judge Newman’s reliance on secondary factors has little relationship to the obviousness of the claimed invention.
Newman in Pharmastem Therapeutics:
“my colleagues simply reweigh selectively extracted evidence, ignore the actual peer response and acclaim at the time these inventions were made, and decide that this long-sought advance would have been obvious to this court.”
The “long-sought advance” was obvious? I have no idea what that is supposed to mean.
But I do know that secondary factors of “commercial success” and other considerations are going to fade into obscurity as courts realize that their relationship to the obviousness of a claimed invention is tenuous at best.
I suspect Judge Newman won’t like that development. But Justice Roberts will.
Andros thinks I was unreasonable when I objected to the markings (initials?) added to the Examiner’s Interview Summary. This Examiner’s Intervew Summary was filed 14 months after the Interview (and after I filed the Notice of Appeal) and was written by the Examiner’s Supervisor who was not present at the interview. The markings (initials?) were added after I pointed this out to the various people at the Patent Office.
I expect that if I hadn’t made so much noise about it they would have asserted that those were the Examiner’s initials.
The reason the various actors at the Patent Office were pissed off at me was because I insisted they do their jobs.
Various people in this forum have characterized me as being emotional. That puzzles me. The arguments I made in my filings are all logical and clear and supported by references. I also try to make my filings interesting to read. I especially like the computer mouse example I made in my CAFC Appeal Brief (Blue Brief).
One of the biggest mistakes pro se applicants make is to write the way they think attorneys write. Many attorneys make that same mistake.
The book I found the most helpful was “The Elements of Legal Style” by Bryan A. Garner. Garner acknowledges his debt to “The Elements of Style” by Strunk and White. I read The Elements of Style in high school and have always tried to follow its teachings when I write. (Both books are available on Amazon.)
There are thousands of patents that involve “servers”. Although I have not read all of them, none of the ones I have read define the term. I don’t understand why I was singled out, especially when the Examiner (although a newbie Examiner at the time) was touted as a computer expert.
I suggest to all of you that if you ever use the term “server” or “home” in an application you devote at least a page (each) defining them.
In any event, I think that this latest incarnation of Festo is more important than rehashing my case.
Besides, many of the comments say more about your attitude toward independent inventors (you just plain don’t like us) than they do about my case.
And now, if you will all excuse me, I would like to get back to my day job designing directed energy weapons. (That’s what 6,377,436 is.)
Jed Margolin
Alun Palmer,
Great time-saving idea. That approach works for me regarding the hyperbolic comments by Max – it would simplify matters if I just say the opposite of what he says on principle.
If Malcolm Mooney opposes Pauline Newman’s dissents on principle perhaps it would simplify matters if I just say the opposite of what MM says on principle.
Hey Luke, check out today’s dissent by Judge Newman in Pharmasterm. I haven’t had time to read this 70+ page decision, including nearly 30 pages of dissent, but just reading the beginning of the dissent, it sounds like Bryson and Prost screwed up this one royally. Everything’s obvious if you’re an English major.
Thank you Luke. Yes, I am urging the Hoffmann way and, yes, it is objective and, yes, it would spawn lots of argument, before the Court, about what the notional hypothetical idealised average PHOSITA would understand that the writer of the claim was using the language of the claim to mean. That’s an argument that each real individual PHOSITA observer or participant can relate to, and join in, and then can subjectively accept the outcome as reasonable. Other things being equal, greater acceptance of outcomes, by stakeholders who are not patent attorneys, is a desirable development. Hoffmann’s objective test renders more in line with subjective common sense the answer to the questions “What does the claim mean” and “Based on that meaning, is it valid and is it infringed”.
“If the substitution is not obvious, then it can’t be insubstantial–no equivalence. What does that leave?”
Non-infringement.
I note that the majority seem to be quite taken by the idea that aluminium is a “common” material – e.g. on p16 where they quote Festo X that “it seems unlikely that an aluminum sleeve would have been unforeseeable, as it was made of a commonly available material”, by which it turns out later, on p23, they mean plain-old “disclosed”, which is rather different.
As a chemist, I find this rather disquieting. If being aluminium is what makes the difference (and it clearly is) then I don’t see how *any* thing in this position could have been unforseeable, since as far as chemistry is aware, all possible elements stable enough to make sleeves from have already been discovered, and thus disclosed…
Be that as it may, I think J. Newman has by far the better argument. I particularly like her pithy “Hindsight is not foreseeability.” on p29, and on p30 “Evidence of foreseeability must be limited to prior art, not future art.”.
Regards, Luke
“Just an ordinary inventor” wrote:
‘This suggestion, posted penultimately above, would be seditious if it weren’t so retarded. “In short, abolish the Doctrine of Equivalents. It’s had its day. Instead, construe claims in line with common sense.” Common sense is a subjective notion, the antithesis of doctrine’.
Common sense is not subjective, at least in the sense MaxDrei was using (if I understand him correctly). He was, I believe, using it in the sense of Lord Hoffman’s formulation, in which case it as an objective enquiry into what PHOSITA would believe the claim means.
In this sense it isn’t all that far removed from Phillips, under which, hopefully, American Chef would have been decided the right way. IMO Philips should have gone further and moved to something more like Hoffman’s test, by which a claim is interpreted SOLELY by how the PHOSITA would read the claim.
This does mean that if introduced to the US, you would get lots of litigation you don’t get know about what the PHOSITA is and what they think, but you would also get rid of a lot of stuff that is currently in there – such as the DoE.
Cheers, Luke
“As a result, amending the claims would have futile and resulted only in giving the Examiner more unmerited counts.”
I downloaded the file history from PAIR and, it appears to me, that amending the claims was exactly what the Board was recommending. The Board wrote, “The claim is thus broad enough to cover either of a server _for_ a home network and a server _on_ a home network. The Appellant could have amended the claim consistent with how appellant wants the claim to be interpreted.” See Opinion at 5. That’s an invitation to amend the claims to explicitly recite your intended definition in order to distinguish the cited reference.
Jed (Watson) Margolin,
I read through your page, and have some thoughts as to your case.
First, as Sherlock Holmes noted, the claims are not worth much, especially if given the meaning that you assert the claims to have. In order for a user to be found to be infringing, he must be making or using every word in the claims. In light of your assertions, the entity would would be found to be infringing would have to have the home network server in a subscriber’s home, one or more home network client devices (presumably also in the subscriber’s home), and an internet connection, with the subscriber receiving something for the use of the server in the subscriber’s home. As such, it is clear that the subscriber is the only person who can be infringing on the claims, where the subscriber is more than likely an end-user.
Even so, the right to act as one’s own lexicographer only applies to information that is explicitly disclosed in the specification. The term “subscriber” is exemplified in paragraph as “nominally the owner of the home network” in paragraph [0016]. The terms “home” and “server” also lack explicit definitions, but are discussed in terms of the preferred embodiment of the invention, which also constitutes exemplification of the terms. In this case, the claims would be given their broadest reasonable interpretation from the perspective of a person of ordinary skill in the art.
The broadest reasonable interpretation typically encompasses each and every definition in the dictionary that can be reasonably applied to the claims, so the order of priority in the Microsoft Computer dictionary is irrelevant. Therefore, using the second definition instead of the first when the specification is lacking an explicit definition (i.e. the term server, as used herein, means this) is a perfectly valid interpretation as long as the examiner applies the entire definition, which apparently happened.
Also, many of your arguments seem to center around the location of the equipment (i.e. in the subscriber’s home). When reading the claims without drawing limitations from the specification, the location of the equipment does not appear to provide any functionality. The exception to this would be the locations of the firewall, as they are not merely geographic locations, but actual locations on the network the clearly provide functionality based on the location.
SF noted that you failed to follow the cardinal rule of patent prosecution of “Don’t do anything to piss off the examiner.” Unfortunately, you also seemed to have performed actions to piss off the SPE, Directors, Judges, Solicitors, paralegals etc. by screaming conspiracy at each of these people as well as to their supervisors in some cases. While at some point the Office as a whole may have started to give you less service, it seems that it would be perfectly understandable in the manner that you seemed to treat individuals who had nothing to do with the case until you first talked to them. Some of your complaints also seem unreasonable, such as the alleged changing of the Interview Summary being “tampering with evidence (post from January 4, 2007), when the alleged change was simply some initials included in the corner, and not to the content of the summary.
With the accusations being thrown to everyone, along with the posting of the web page with all conversations being posted (Apparently as of October 30, 2005), it is not surprising that certain individuals (i.e. Mr. Williams) were advised not to talk to you. Even here, you seem to accuse Sherlock Holmes of colluding with the Patent Office in running a lottery.
On the other hand, the initial Examiner should have provided more explanation in the Office Action to make the interpretations of the claims clear, and should have answered your call initially. However, not all Examiners avoid answering phone calls, or provide generally poor customer service. Just like there are many variations of quality of Attorneys and Inventors, there are many variations in the Examiners, some being just good enough to stay in the job, others doing an excellent job (As you acknowledge with Xu Mei).
Festo fulfilled its duty of candor by notifying the PTO about prior publications (in German) of gapped rodless magnetic coupled piston cylinder actuators surrounded by a sleeve of “non-magnetic” material. Accompanying that notification to the PTO was a narrowing amendment. Festo narrowed its independent claim to include a requirement for that same sleeve to be made of “magnetisable” material. Neat way to neutralise the prior art threat, given that “magnetisable” and “non-magnetic” are polar opposites and mutually exclusive.
Agreed facts in the litigation include 1) the sleeve in the accused embodiment is of aluminum and 2) aluminum is non-magnetisable. What’s a competitor like SMC supposed to do, in the search for a reasonable degree of legal certainty, if not to adopt the polar opposite of the claimed feature, prior published and surrendered by Applicant during prosecution. What’s a reasonable CAFC supposed to do, if not to decline to find infringement on the DoI?
So, readers, if common sense is NOT the way to go, how would YOU decide Chef America?
Heating the dough TO 400F is what the claim said. That means charcoal. Heating the dough AT 400F is what the inventor meant. The court found the claim invalid (charcoal).
Do you agree that the patent attorney was incompetent and his client asleep, and so the right result is to find the claim invalid?
Or do you agree with every technical reader of the litigated patent in his/her right mind, that the obvious meaning of the claim is that the SURFACE of the dough is at 400F, that is to say, the oven’s set at 400F?
Even though it’s not a DoI case, I still think Chef America can help us to decide whether to use common sense or a DoI, to decide on the scope of protection of a claim asserted in USA.
To Sherlock Holmes:
I’m sorry, but you missed one of the key issues in the Case of the Distributed Computing System.
In defining several of the key terms (“home,” “server,” and “subscriber”) the Examiner and his Supervisor refused to allow me to be my own lexicographer or to use the most common meanings of the terms. They insisted on using their own contorted definitions.
As a result, amending the claims would have futile and resulted only in giving the Examiner more unmerited counts.
Do you really advise your clients to give up simply because you have drawn intellectually dishonest examiners?
That means whether or not your clients get a patent is determined by the luck of the draw rather than the merits of their invention or even your skill in writing patent applications.
If that is indeed the case, then you are colluding with the Patent Office in running a lottery and you should at least give your clients all their money back when you advise them to give up.
(And, no, the claims are not directed to end-users.)
Jed (Watson) Margolin
I was just reading the decision and I noted something really interesting. The court seems to be bringing back the idea (espoused primarily by J. Nies in the mid-1990s) that if a change is separately patentable, that is strong (though not conclusive) evidence that it can’t be insubstantially different, and therefore can’t be equivalent. At p. 17 of the slip opinion (p. *8 of the Westlaw opinion), the court states:
“We have not directly decided whether a device–novel and separately patentable because of the incorporation of an equivalent feature–may be captured by the doctrine of equivalents, although we have held that when a device that incorporates the purported equivalent is in fact the subject of a separate patent, a finding of equivalency, while perhaps not necessarily legally foreclosed, is at least considerably more difficult to make out. But there is a strong argument that an equivalent cannot be both non-obvious and insubstantial.” (footnotes omitted)
If the court really goes that far, it essentially make the foreseeability argument unwinnable. If the substitution is obvious, then the patentee should have foreseen it and claimed it–no equivalence. If the substitution is not obvious, then it can’t be insubstantial–no equivalence. What does that leave?
Jed, I reviewed your web site and the supporting documents for your “Distributed computing system” application that was rejected and affirmed on appeal. Unfortunately, that application supports anon’s position. If I were an attorney representing someone with a similar case, I would tell them two things. First, give it up. The BPAI appears to have the law on their side and, like it or not, there is no sound legal argument to overcome the rejection. Second, you need to sue your attorney for malpractice. There is way too much wrong with that application and its prosecution to describe here. Yes, I know you are pro se, but there is a lot of wisdom in the old saying: “someone who represents himself has a fool for a client.”
Notwithstanding the above, one glaring problem with the “Distributed computing system” claims is that the only possible infringer is someone sitting at home using their home network. The value of a patent is directly related to how enforceable the patent is. Practically speaking, patent claims directed toward end-users are not enforceable if the damages attributable to each end-user far exceeds the cost of enforcement. Seeking to enforce claims against indirect infringers is not a good way of proceeding, particularly, as here, when there are numerous available defenses for an indirect infringer.
I really enjoyed reading Jed’s story (see URL above). His pull-no-punches, bull-dog attitude is admirable. And his failure to follow the cardinal rule of patent prosecution (“Don’t do anything to piss off the examiner”) makes for a compelling read.
Jed Margolin wrote at his above URL’ed site: “Patent Attorneys and Agents have to more-or-less put up with this crap. They have their future clients to think of, not to mention their own careers (they may get the same Examiner again). Besides, when an Examiner pulls a lot of crap the result is usually more RCEs (Request for Continuing Examination) so the Examiner is rewarded by more Counts (used to measure an Examiner’s productivity) and the Patent Attorney gets more billable hours. An RCE also starts the examination clock over again so it appears to reduce the average pendancy time for an application. Everybody wins except for the Applicant.”
Jed, you pretty much figured out how the machine works.
Sorry that thing at the Fed. Cir. didn’t go your way. That’s the problem with going pro se. You don’t know the rules of the game. By the time you figure it out, it’s too late.
Dear Anon,
Thank you for your congrats for my personal celebrations that coincide with Independence Day. Some might have taken a cheap shot and commented on one getting married on “Independence” Day.
Congratulations on being a patent attorney, a most honorable and difficult profession to be sure; that’s fine by me, better than fine. Most of my friends are patent attorneys; I admire almost every attorney I’ve ever met, except, perhaps those representing the OBB infringers of my patents (and perhaps those who represented my ex-wives).
Notwithstanding your inappropriate challenge to self-employed inventors, perhaps I shouldn’t have supposed otherwise, i.e., that you might not be an attorney, please excuse. But you post your comments here anonymously, as I do; our respective cats, as far as I know for reasonable intents and posting purposes, are still bagged.
No, I don’t think you would really advise or condone a client of yours discussing the particulars his pending litigation on the Internet, or posting his case identification. I assume you were being facetious. I’m sure you must realize just how sticky patent litigation can be, and how cautious litigators are.
You are dead right about one thing — being an inventor is not for the faint-of-heart — perhaps it is, as you say, an “astoundingly poor career decision.” However, I cannot say it was a choice I made. I simply followed with great gusto and dedication the path laid out for me, and when I came to a fork, I took the road less traveled.
Lucky for me, my forty years of inventing has been incredibly satisfying and blessed, but my story as an inventor would take tomes to tell. When I can afford to take the time, I will relish writing my memoirs. When and if that time comes, I’ll reserve an autographed copy for you which I hope you will gladly accept as a gift.
My apologies to Just an ordinary inventor(TM). I was confused by the way the messages are separated.
Jed
I’m glad you are patriotic. And sincere congratulations on your successful son and marriage. What those two things have to do with the Declaration of Independence, however, is beyond me.
The statement that “Invention is not reserved to the wealthy corporations with a lot of R&D investment, in fact, those corps rarely produce any significant inventions.” is bulldung. Your baseless comments are offensive to individual inventors who whose research is funded by big corporations. (et al.?)
If “Invention can’t be planned in most cases, it can occur to anybody, in any area outside of one’s day job expertise, by sheer luck, by a pure magic.” then doesn’t a decision to be “an inventor” result in a lot of wasted time (as it happens by magic) and amount to an astoundingly poor career decision? I would suggest playing the lottery instead; at least you know what the odds are.
I took no position with respect to DOE, and do not think that “common sense” claim construction should prevail.
If your litigation is pending, please provide a docket number and court. Who is your counsel? What stage of the pleadings are you at? If it’s fair game for you to doubt whether I am a patent attorney, it’s fair for me to question whether you actually have real litigation pending. In any event, that’s a cop-out answer. If you have litigation pending, the cat is out of the bag, so to speak. The defendant ALREADY KNOWS that you are alleging your invention was misappropriated or a patent was infringed. What’s more, it’s all public record.
Jed,
My heart lies with you, I wish you nothing but success.
It was “anon”, the jaded patent attorney, who issued the challenge.
All the best,
Just and ordinary inventor (TM) has issued a challenge:
“I challenge all the individual inventors who are so fond of decrying the death of inventor’s rights to come up with a concrete example of an idea of THEIRS that was stolen or that has value.”
U.S. Patent 5,566,073 “Pilot Aid Using A Synthetic Environment” issued Oct 15, 1996 to Margolin covers the use of what is now called “synthetic vision” in flying an aircraft.
It has been stolen by NASA, Honeywell, Mercury Computers, Chelton, and others.
So has U.S. Patent 5,904,724 “Method and apparatus for remotely piloting an aircraft” issued May 18, 1999 to Margolin.
Here is a patent that has value: U.S. Patent 6,377,436 “Microwave Transmission Using a Laser-Generated Plasma Beam Waveguide” issued April 23, 2002 to Margolin. I don’t know if it’s been stolen yet.
The Patent Office likes to boast how friendly they are to independent inventors. That’s pure crap. This is how they really treat independent inventors: “Patent Office Story, How the U.S. Patent Office Jumped the Shark” at link to jmargolin.com
Hey, anon, Esq.,
Your comment above,
“Make no mistake, however, the days of Edison and Ford are long gone”
is bulldung. You and your baseless comments are offensive to individual inventors et al.
If my patriotic personality and Patently-O posts offend you, tough, live and let live.
I am an American through and through all year long, not just during Independence Day celebrations. This is a special week for me, and it makes me happy to give thanks and give credit where it belongs — I’ve also been celebrating my 17 year old son’s Associate of Arts degree, and my wife’s and my Anniversary date, July 4th — we’ve been together 32 years.
As “some garage inventor” told you and others of your ilk last month:
“With all due respect, you just don’t understand what the true invention is.
My guess is that you’ve written waaaay too many junk patents for your big corporate bosses…
Maybe it’s time to stop and think ?
Invention is not reserved to the wealthy corporations with a lot of R&D investment, in fact, those corps rarely produce any significant inventions.
Invention can’t be planned in most cases, it can occur to anybody, in any area outside of one’s day job expertise, by sheer luck, by a pure magic.
Very sad, but you guys just don’t understand the nature of *real* invention and the whole purpose of the patent system.”
If you abide the retarded european oaf’s suggestion above,
“In short, abolish the Doctrine of Equivalents. It’s had its day. Instead, construe claims in line with common sense”,
you too are dull witted, but I doubt you are that dumb, not too many are.
Regarding your
“Consider the gauntlet thrown down…”
challenge, I’m afraid I (and probably most individual inventors) cannot accommodate you — It would be ill advisable while involved in pending infringement litigation. No good litigator I’ve ever worked with would approve responding, and it is inappropriate of you, supposedly a patent attorney, to pose such a challenge to inventors. Mind you, I’d really like to take your challenge — it would shut you up once and for all.
Just and ordinary inventor (TM): When you sit at your computer, do you quietly hum the Battle Hymn of the Republic to yourself? Or perhaps you drape a 13-Star American flag about your shoulders and gaze longingly into a portrait of George Wythe…in either case, I’m inspired.
Although it’s off topic,a I’m always amazed when I read the comments on this website (which is excellent, by the way) that so many people think that the crazy crap they think up in their garage is a) changing the world or b) valuable. It’s unbelievable. And the paranoia about how “big business” stealing your precious ideas is laughable. They don’t give a damn about your ideas because, almost without exception, they are crap.
The first thing you hear when you tell somebody that you are a patent attorney is the inevitable “Wow. [uncomfortable/awkward pause] You know…I invented something once.” What follows is without fail some story about how they thought of gluing a laser pointer on a ruler before Black & Decker did it or some awesome way to take notes in the shower (see U.S. Pat. No. 4,907,824. That’s right. Yakov Smirnoff was an individual inventor as well. Congratulations.). Of course nobody can substantiate their claims, but they are all sure that they though of it first.
There are VERY few actual individual inventors that invented something of value without the R&D of the evil “big business.” Those that garage inventors are proudest of are not good inventors, but wise investors. Lemelson, Katz, Ballard, and whoever Ray Niro is financially backing these days are people who decided to sink their money into patents, rather than R&D. Lemelson sunk more money into patent prosecution over the years than R&D, a move that was doubtlessly a wise investment. But you are fooling yourself to think that these people are “inventors” of products; if anything they invented a novel way to make money. Perhaps respect is due for this reason alone, and the purpose of this post is not to kick the beehive of Lemelson supporters who think that he walked on water and healed the sick.
Make no mistake, however, the days of Edison and Ford are long gone. Much of this is due to where the real progress is being made; it’s damned hard to do pharma work or semiconductor wafer processing in your garage. True mechanical innovation, which is by far the easiest for an unfunded inventor, is dwindling. Business methods are crap to begin with, regardless of whether it is big business or individual inventors pursuing it. So it’s not necessarily a result of less brainpower or less economic incentive, just the transition between technological eras. That is why, however, the garage inventors, by and large, aren’t inventing a damned thing of any value. So bitch all you want about the courts taking away your precious IP and the big companies ripping you off and disincentivizing innovation on the individual level. Nobody cares, because you have become economically irrelevant (ideally I would insert some Posner quote here, but I’m too lazy to look one up). Those of you who fancy yourself the second coming of Edison could, of course, easily rebut my entire argument by pointing to one invention of yours that somebody else is willing to pay for. But I strongly suspect you cannot. I’m sure the usual posting equivalent of holding your breath and stamping your feet will occur: “We invented TONS of valuable things but the big companies keep stealing our ideas because they can get away with it in a consequence free environment because the courts allow them to bully us.” BS. That’s just self-justification for a failure to produce anything of value and a weak answer. I challenge all the individual inventors who are so fond of decrying the death of inventor’s rights to come up with a concrete example of an idea of THEIRS that was stolen or that has value.
Consider the gauntlet thrown down…
This suggestion, posted penultimately above, would be seditious if it weren’t so retarded.
“In short, abolish the Doctrine of Equivalents. It’s had its day. Instead, construe claims in line with common sense.”
Common sense is a subjective notion, the antithesis of doctrine.
Common sense claim construction would hopelessly divide any consensus on claim construction between opposing parties and aggravate litigation.
The ludicrous subjective common sense notion comes from an unrelenting in-your-face scheme advanced ad nauseam by a european oaf contributor who would like to corrupt and sterilize the American pro-inventor patent system which is designed to promote American progress: Our patent system gives us an innovative advantage and world-wide competitive technological edge.
Ironically, “COMMON SENSE,” the treatise by Thomas Paine published in 1776, challenged the authority of the British government and the royal monarchy. “Common Sense” was the first complete defence for political independence of the British colonies in North America. “Common Sense” sold 120,000 copies in three months, and laid the foundation The DECLARATION OF INDEPENDENCE.
In honor of July 4th Independence week, here is the preamble and beginning of The Declaration of Independence:
“IN CONGRESS, July 4, 1776.
“The unanimous Declaration of the thirteen united States of America,
“When in the Course of human events, it becomes necessary for one people to dissolve the political bands which have connected them with another, and to assume among the powers of the earth, the separate and equal station to which the Laws of Nature and of Nature’s God entitle them, a decent respect to the opinions of mankind requires that they should declare the causes which impel them to the separation.
“We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness…” Link to the Declaration of Independence:
link to archives.gov
* * * * *
The following excerpts are from a most enlightened comment that was posted on Jun 26, 2007 at 07:33 AM on this thread-link:
link to patentlyo.com
“ … The bottom line is that the majority of European law is based on a far more socialist leaning basis than we’ve adopted in the US … different in the manner in which individual contribution to the common good is measured.
“In the area of patent law, especially patent enforcement, Europe is damn near the least cost effective playground in the world …
“The bottom line is Europe doesn’t enjoy the benefit of independent inventor’s contribution to innovation to the extent we do in the US because they don’t compensate for it. We do, because we compensate for it. Being an independent inventor is, financially, among the highest risk professions. …
“American culture embraces those who take risk and succeed in being correct despite the spewing of ‘experts’. European culture, broadly speaking, doesn’t. … we’ll continue to outstrip Europe while they take their 7 weeks of vacation every year. …”
* * * * *
“Strength & Honor,” the American Independence Day way.
Winning isn’t everything — It is the American thing.
Well, I’m not sure how the Fed. Cir. would develop a doctrine of “common sense.” Sounds like the ipse dixit of the court.
A Doctrine of Equivalents is difficult to reconcile with two prominent themes of recent cases namely: 1) Be careful what you ask for; and 2) Common sense. One needs a DoI when one construes a claim strictly literally. But why do that? It flies in the face of the “common sense” of the designated notional reader, namely an appropriately skilled technical reader. Common sense dictates that you ask of that notional reader the question: “What was the writer of the claim using the language of the claim to mean?” That way, you bring onto the “same page” all stakeholders in the patent litigation business. Common sense accommodates Malcolm Mooney’s nucleotide sequence invention easily. Pioneering inventions are the easiest ones to claim broadly and with full coverage. It’s the incremental improvements that are trickiest to delineate from the art with perfect textual precision.
Other contributors bemoan the huge fees that patent attorneys charge. The least clients expect is competent claim writing. But the Courts have to set the Rules, how sloppy can the claim drafting be, and yet still nail the “infringer”. Applying my “common sense” question above would encourage the “telling a story” form of drafting. That would in turn commend itself to our customers, the ones who pay our fees, the inventors and applicant companies. In turn, that would build respect for patent lawyers.
In short, abolish the Doctrine of Equivalents. It’s had its day. Instead, construe claims in line with common sense.
Correction: If the *power source* is irrelevant, then don’t recite it. If the *type* of power source is irrevelant, don’t invoke 112p6 — just recite a power source, which would literally read on the later power sources.
“I’m thinking more about a means plus function claim element.”
If the type of power source is irrelevant, then don’t recite it. If the type of power source is irrevelant, don’t invoke 112p6 — just recite a power source, which would literally read on the later power sources.
I’m thinking more about a means plus function claim element (i.e., “power source means”) in a patent where the specification includes a decription of every known power source at the time of filing.
“Consider the hypothetical situation of where someone invents a completely new power source. Should they be entitled to freely use the inventions claimed by others if they incorporate their power source, since such a power source was not feasible when those others filed their applications?”
If the power source is irrelevant to the inventions of other people, but those people nonetheless claim a specific type of power source, they get what deserve for stupidly claiming the power source.
MM: “I would argue that the doctrine exists to prevent exactly that sort of trivial working around by competitors, and not to prevent competitors from using alternatives outside the literal scope of the claimed method that were not feasible at the time the claims were filed.”
Consider the hypothetical situation of where someone invents a completely new power source. Should they be entitled to freely use the inventions claimed by others if they incorporate their power source, since such a power source was not feasible when those others filed their applications?
Thanks, metoo — but is that $4m award on the ‘125 Patent the full scope of the dispute? The court referred to an older “Caroll Patent” not at issue in this latest appeal.
If $4 million is what was really at issue here, I’ll bet that each side has spent a lot more than that over the course of 20 years of patent litigation.
In the CAFC opinion, it says that he damage award was a little over $4 million.
As for Malcolm’s comments, if we already knew that obvious workarounds were foreseeable, and this new case holds that non-obvious workarounds are foreseeable, then what equivalents are not forseeable? Regardless of how you personally feel, the Supreme Court surely had something in mind when they held that an unforseeable equivalent was not excluded from coverage by prosecution history estoppel.
Dear Mr. Mooney,
I would be interested in hearing you succinctly comment on what you see as the logical, factual, or legal flaws in Judge Newman’s dissent. It’s great to hear your position, your view, your opinion, and so on – but do you have any analytical comments on the case itself?
Cheers,
Anon
I did a double-take on this line: “The case has been pending for almost twenty years and has been before the Supreme Court twice and before us twice en banc.” I knew this case had a long history, but that’s incredible.
Can you imagine the attorneys fees and costs of this case?! Does anyone know what the realistic amount in controversy is here? I suspect that both parties would have been a lot better off had they found some middle ground in the early days of this dispute.
Well, regular readers already know my position: if Judge Newman dissents, the majority is probably right.
Here, again, the CAFC reached the right result. Rather than newly limiting the application of the doctrine of equivalents, however, I would argue that this statement:
“An equivalent is foreseeable if one skilled in the art would have known that the alternative existed in the field of art as defined by the original claim scope, even if the suitability of the alternative for the particular purposes defined by the amended claim scope were unknown.”
… changes very little. The reason very little changes is that, as a practical matter, it was recognized that after Festo any amendments to the claims essentially killed your chances for successfully arguing equivalents. In that light, it never really mattered what “foreseeable” meant except that, at the very **least**, it meant that obvious workarounds were foreseeable. Now we know that Festo preclude application of the doctrine to non-obvious workarounds of amended claims as well. That, too, makes sense.
In my opinion, the idea that the doctrine of equivalents should be applied to allow patentees to capture technological improvements not literally encompassed by the scope of the claims (and not feasible at the time the patent was filed) fell by the wayside when the concept of “pioneering patents” was shoved to the curb and kicked in the head by the CAFC (good riddance!!).
In my view, the more interesting questions regarding the application of equivalents relate to its application to claims that have not been amended. The issue has been raised on this blog here hundreds of times: practitioners routinely file claims that are broader than what any reasonable person would consider to be allowable. By engaging in that practice, practitioners are arguably denying their clients the sorts of claims that are the most “dangerous” to accused infringers attempting a “workaround”: claims whose scope includes a penumbra of “substantially similar” embodiments.
Consider one possible example: a method claim which recites the use of a 300 nucleotide sequence, defined as Sequence ID No. 34 (where every nucleotide is defined). Assuming no prosecution history and no claim amendments, can an infringer change 1 nucleotide and escape infringement if the claimed method is substantially unchanged? I would argue that the doctrine exists to prevent exactly that sort of trivial working around by competitors, and not to prevent competitors from using alternatives outside the literal scope of the claimed method that were not feasible at the time the claims were filed.
Well, regular readers already know my position: if Judge Newman dissents, the majority is probably right.
Here, again, the CAFC reached the right result. Rather than newly limiting the application of the doctrine of equivalents, however, I would argue that this statement:
“An equivalent is foreseeable if one skilled in the art would have known that the alternative existed in the field of art as defined by the original claim scope, even if the suitability of the alternative for the particular purposes defined by the amended claim scope were unknown.”
… changes very little. The reason very little changes is that, as a practical matter, it was recognized that after Festo any amendments to the claims essentially killed your chances for successfully arguing equivalents. In that light, it never really mattered what “foreseeable” meant except that, at the very **least**, it meant that obvious workarounds were foreseeable. Now we know that Festo preclude application of the doctrine to non-obvious workarounds of amended claims as well. That, too, makes sense.
In my opinion, the idea that the doctrine of equivalents should be applied to allow patentees to capture technological improvements not literally encompassed by the scope of the claims (and not feasible at the time the patent was filed) fell by the wayside when the concept of “pioneering patents” was shoved to the curb and kicked in the head by the CAFC (good riddance!!).
In my view, the more interesting questions regarding the application of equivalents relate to its application to claims that have not been amended. The issue has been raised on this blog here hundreds of times: practitioners routinely file claims that are broader than what any reasonable person would consider to be allowable. By engaging in that practice, practitioners are arguably denying their clients the sorts of claims that are the most “dangerous” to accused infringers attempting a “workaround”: claims whose scope includes a penumbra of “substantially similar” embodiments.
Consider one possible example: a method claim which recites the use of a 300 nucleotide sequence, defined as Sequence ID No. 34 (where every nucleotide is defined). Assuming no prosecution history and no claim amendments, can an infringer change 1 nucleotide and escape infringement if the claimed method is substantially unchanged? I would argue that the doctrine exists to prevent exactly that sort of trivial working around by competitors, and not to prevent competitors from using alternatives outside the literal scope of the claimed method that were not feasible at the time the claims were filed.
Foreseeable equivalence is irrelevant to the forseeable equivalents inquiry?
I agree with “Just an ordinary inventor(TM)” regarding Judge Newman’s opinion.
The part I found most bothersome about the majority opinion is pages 16-17, where court argues that a putative equivalent may be deemed “foreseeable” for DOE purposes, even if it would have been non-obvious at the time of the application to substitute the putative equivalent for the corresponding claim element.
In contrast, Judge Newman explains that foreseeability analysis for DOE purposes should focus on whether the **equivalency** of the putative equivalent was foreseeable (Newman dissent, p. 3) – not whether the “then-believed to be non-equivalent structure was a known structure in the field of the invention” (id., p. 6). Isn’t that correct?
I would be interested to hear if anyone notices any legal or factual flaws in Judge Newman’s opinion.
“In its 2002 Festo decision, the Supreme Court noted three exceptions that would allow for DOE infringement even after a narrowing amendment: (1) the equivalent was unforeseeable; (2) the reason for the narrowing amendment was only tangentially related to the equivalent; or (3) ‘some other reason…’.”
Further regarding Judge Newman’s well-written, superior-in-every-way Opinion: Here are the first and last paragraph of her persuasive Dissent (emphasis added):
“The only issue remaining in this case is the reapplication of the law of equivalency, as adjusted by the Supreme Court in Festo VIII, 535 U.S. 722 (2002), to the technological facts of the accused SMC rodless cylinder. However, this court has confounded the issue by creating a new and incorrect criterion for the measurement of ‘foreseeability,’ the court now holding that an existing structure need not be recognized, or even recognizable, as an equivalent at the time of the patent application or amendment, in order to be ‘foreseeable’ if it is later used as an equivalent. This is a significant departure from precedent, as well as from the Court’s guidance in understanding the estoppels that arise when claims are amended during prosecution. TODAY’S NEW RULE FURTHER ERODES THE RESIDUE OF THE DOCTRINE OF EQUIVALENTS, FOR ITS FORESEEABLE RESULT IS TO DEPRIVE AMENDED CLAIMS OF ACCESS TO THE DOCTRINE OF EQUIVALENTS.
…
“The fact of whether technologic equivalency was known cannot be irrelevant to foreseeability, for the foreseeability bar is directed to subject matter that was foreseeably equivalent at the time of filing and amendment. This is evident from Festo VIII ‘s guidance to ‘readily known equivalents.’ 535 U.S. at 740. If the equivalency of the accused technology would not have been ‘readily known’ to a person of ordinary skill in the field of the invention, under proper application of the Court’s guidance the ‘foreseeability’ bar does not arise. In Festo VIII the Court ratified the value of the doctrine of equivalents to ‘ensur[e] the appropriate incentives for innovation,’ id. at 732, by rejecting this court’s ruling that had led to ‘excessive uncertainty and burdens legitimate innovation.’ Id. at 737. THE PANEL’S HOLDING TODAY STRAYS FROM CONTROLLING PRECEDENT AS WELL AS FROM LOGIC. I RESPECTFULLY DISSENT.”
Maybe we haven’t heard the last on Festo?
Wow – I tried to skim-read this opinion last night and it was darn near impossible to glean anything from it. While it certainly deserves a more thorough reading, I continue to be unimpressed by the quality of writing at the CAFC.
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