CIAS v. Alliance Gaming (On petition for Cert. 2008)
In a recent petition to the Supreme Court, CIAS asks the Supreme Court to think about how prosecution statements should be used for claim construction.
Issue: Whether the Federal Circuit’s use of patent prosecution history statements in claim construction is so erroneously inconsistent among its own panel decisions and incompatible with its prior en banc decision in Phillips as to make it impossible for the public to know with any degree of confidence the scope of patent claims; and whether that Court’s inconsistent judgment in this case should be reversed.
In this case, CIAS discussed a reference that had been cited by the Examiner. Although the reference was not asserted in a rejection, the CAFC found that CIAS’s discussion of the reference should shape how the patent claims were interpreted.
In its petition, CIAS argues that the CAFC’s approach to determine whether such prosecution history alters claim construction is much like the proverbial random walk.
Out of 16 district court cases since
Phillips specifically dealing with the issue of prosecution history disclaimer, the Federal Circuit has disagreed with the district court on that issue a total of 12 times. … [T]he Federal Circuit’s inconsistency has created a confused body of decisions. It is now extremely difficult for patent holders and the public to effectively gauge the meaning of claim terms in light of prosecution history statements.
Documents:
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File Attachment: CIAS_Petition_Appendix_H.pdf (733 KB) (Listing the 16 cases).
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Patently-O on CIAS (Discussing a different portion of the CAFC opinion).
” agree, it is a hard case to appeal, but it needs to be set aside.”
Well, no it doesn’t because it doesn’t change a darn thing. You may not like how the law was applied here (i.e., you may not agree with the conclusion that the pros history clearly and unmistakably disavowed some claim scope) but the law is plainly unchanged. Nothing new or interesting happened here.
What’s interesting though is that you get excited by this baloney case but didn’t really bat an eye when Newman introduced her Doctrine of Including All Embodiments Within the Claims garbage in Oatey v. IPS. What’s up with that?
Dear Leopold,
I agree, it is a hard case to appeal, but it needs to be set aside. I do not think it is overblown.
Any Patent Pirate with no other defence to infringement could, and I suspect myriad will, argue:
“The patentee implied to limit the claim scope when they described the prior art as …”, and the infringer will cite the district court decision, which limits claim scope by “implication” and no more, and the Pirate will continue the argument saying that the “limitation-by-implication” was AFFIRMED by no less than the CAFC.
On that argument, any Judge can (subjectively) “random-walk” and find a disavowal of claim scope.
In other words:
“… the CAFC’s approach to determine whether such prosecution history alters claim construction is much like the proverbial random walk.”
Are you happy with that? I’m outta’ here for now.
“Unless clarified by the Supreme Court, the CAFC’s CIAS v Bally Precedential decision could haunt the American patent system — the worst CAFC case law I’ve ever seen by far, no contest.”
Sorry, JAOI(tm), but this is way overblown. I haven’t read the district court record, so I’ll assume for the sake of argument that the district court was wrong to limit the claims based on the prosecution history. I’ll also assume that the CAFC was wrong to uphold the district court’s ruling.
However, this can’t possibly be the worst case law ever, since there’s hardly any law in it at all! With regards to the estoppel issue, the CAFC made only innocuous statements of law. Here’s what I could find:
“Patent claims are construed as they would be understood by persons experienced in the field of the invention, on review of the patentee’s description of the invention in the specification and the proceedings in the Patent and Trademark Office.”
“Although CIAS stresses that there was no rejection based on Shoshani, and thus no amendments were made or needed, this does not negate the arguments made during reexamination in order to distinguish Shoshani.” (not quite a statement of law, but there’s one implied in there…)
“CIAS points out that to constitute a disclaimer, any statements made during the patent’s prosecution require “clear and unmistakable statements of disavowal” of the specific claim interpretation at issue…” (I view this as an approving statement of CIAS’s position, since CIAS “points out”, rather than “asserts” or “claims”.)
That’s it for statements of law! Can you find anything else? As far as I can tell, everything else is just statements of fact or conclusions, including the ultimate conclusion: “The district court was correct that the amendments and arguments during examination and reexamination bar interpretation of ‘unique randomly selected authorized information’ to include the accused systems.”
This case is appeal-proof, since the court made hardly any statements of law. Those that they clearly made are innocuous. This cert petition is a waste of time. Whether or not CIAS identifies a real problem, this is the wrong vehicle to address it.
Happy New Year!
Dear anonymous,
I’ll take that bet for whatever wager you suggest ;o)
As I read the paragraph you posted, it is not so much what CIAS is arguing for as it is a statement of well cited case law which is consistent with the guidelines of en banc Phillips which, at least up to the CIAS v Bally decision, has been the unchallenged standard for a determination of a prosecution history disavowal of claim scope.
Keith,
Right on, you said a mouth full.
Unless clarified by the Supreme Court, the CAFC’s CIAS v Bally Precedential decision could haunt the American patent system — the worst CAFC case law I’ve ever seen by far, no contest. The CAFC should be ashamed of itself. It makes one wonder, what could they have been thinking?
As stated on the Supreme Court website, the CAFC denied Rehearing:
link to search.access.gpo.gov
Judging by the superbly written Petition to the Supreme Court, it is a safe bet to say the Petition to the CAFC for Rehearing was also a winner. I know that a Rehearing at the CAFC is as rare as a hen’s tooth, but I can’t imagine why the CAFC didn’t afford itself of the opportunity to clean up its own mess.
Let’s hope the Supreme Court haunts the CAFC for its devastating-case-law CIAS v Bally decision, grants certification, and saves the American patent system from such shameful and shocking precedent.
—————-
Today starts Chinese New Year, and my family has been invited to a special celebration; I will be out of pocket from lunch time today until tomorrow.
HAPPY NEW YEAR — By the Chinese calendar, 2/7/2008 midnight starts the Year of the Rat, which is also known by its former name of Wu Zi.
Any bets on whether Malcolm Mooney, examiner#6k and “Just an ordinary inventor” are the same person? There are too many “characters” on this blog, and I suspect that someone with internet access in prison has a bit too much time on his hands.
If anyone wants to talk about the cert petition, I thought this paragraph was a bit strange:
———–
Consistent with the Guidelines of Phillips, Federal
Circuit decisions have stated that, for prosecution
statements to limit the meaning of a claim to a more
narrow scope than would otherwise be given based on
the claim words and the patent specification, the
statements must amount to a clear and unmistakable
disavowal of claim scope. See Elbex Video, Ltd. v.
Sensormatic Elec. Corp., 508 F.3d 1366, 2007 WL
4180138, at *4 (Fed. Cir. 2007); Sorensen v. Int’l Trade
Comm’n, 427 F.3d 1375, 1380 (Fed. Cir. 2005).
Consequently, if the applicant’s statements are
ambiguous, or subject to interpretation, then they will
not result in surrender of subject matter so as to limit
the patent’s claims. Elbex, 2007 WL 4180138, at *6
(other statements in the prosecution made the
purported disclaimer statement ambiguous, weighing
against a finding of prosecution disclaimer); Honeywell
Int’l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d
1358, 1365 (Fed. Cir. 2007) (purported disclaiming
statement was subject to both parties’ interpretations,
creating ambiguity and precluding disclaimer)
———
(Cert petition at 5). CIAS seemss arguing for a rule that would encourage people to be as vague as possible with the PTO. I suppose that the benefit of such a rule is that it makes prosecution history less susceptible to after-the-fact twisting by litigators. During prosecution, though, I wonder if that’s a good idea.
This case makes the current push for applicant led examination even more frightening. Can you imagine how the soon to be required searches and descriptions of prior art will be torn to pieces in litigation looking for just this sort of statement? This makes the ESD and other similar documents even more of a poison pill than they were previously.
Dear Veteran Attorney,
Thank you for your comment. In general, I agree with you. For example, I agree that:
“Any argument you make, about any prior art, can lead to the application of argument estoppel. Assuming your opponent can make a credible argument that the examiner relied on your statement/argument in deciding to allow the application.”
The thing is, it appears there is no credible argument, to the contrary, and nothing in the claims or specification to even hint at the limitation — if the Examiner relied on the patentee’s statement/argument, he certainly didn’t require a reflection thereof in the claims as any competent Examiner would/should do in a reexamination, especially a litigation-inspired reexamination (as pointed out in the district court’s decision).
I’ve read many briefs in my career but none as fascinating as the Petition to the Supreme Court posted at the top of this thread. What intrigues me about this case is that it is hard to believe what happened, so I also studied the lower court and CAFC decisions. And then last night I listened to the audio of the oral argument on this link: link to cafc.uscourts.gov
You then enter the case number, 06-1342, scroll down and click and viola.
I couldn’t believe my ears! I asked my secretary to transcribe the portion of that audio starting at about 18:50 minutes. The HERE-TO-FORE standard for a “disclaimer” was specifically explained in regard to the “implied” prior art Shoshani “disclaimer” to the Bally attorney by Judge Moore. In this transcription, I’ve added emphasis with capitol letters to show the speaker’s emphasis, not my emphasis:
————————-
Judge Moore: “This is where I’m a little confused; so, is your argument now that the ‘disclaimer’ with regard to Shoshani cannot be serial numbers or randomly selected numbers alone? I assume you are saying it is clear and unmistakable” because that’s what our precedent says it HAS to be, ‘clear and unmistakable.’”
Bally’s Attorney: “’Clear and unmistakable,’ it doesn’t have to be the words ‘I disclaim X.’”
Judge Moore: “But, but there is no reference to any elements of the claims when they say that. In fact that reference is TO Shoshani, they are talking about what Shoshani discloses, and I agree with you, by implication it seems to me that they’re saying, well, Shoshani discloses this, not this, why would they be saying not this unless it meant something with the patent. By implication I agree with you, but it has to be clear and unmistakable DISAVOWAL, according to our precedent, that’s, I’m a little fuzzy there.”
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Veteran Attorney, Regarding your further comment, I agree-in-part, disagree-in-part:
“And the unapplied prior art in this case was not “merely being described” as you suggest. It was described in an attempt to explain/distinguish the applied prior art. By implication, that’s an argument about the applied prior art. 🙂 “
The Reexamination rule regarding “Citation of prior art” expressly refers to an explanation of the prior art as follows:
35 U.S.C. 301: “…If the person explains in writing the pertinency and manner of applying such prior art to at least one claim of the patent, the citation of such prior art and the explanation thereof will become a part of the official file of the patent…”
Re: your comment, I’m sure you will agree that there is a difference between “explain[ing] the applied prior art” and attempting to “distinguish the applied prior art.”
By way of explanation, as Judge Moore herself said to the Bally Attorney, “they [CIAS] are talking about what Shoshani discloses”, and that was required by the Reexamination rule 35 U.S.C. 301.
“Moreover, the prior art reference was even not asserted in a rejection — the prior art was merely being described, and I understand that is required during the reexamination process (at least it required was when one of my patents was reexamined).”
JAOI,
I’m not aware of any distinction between applied and unapplied prior art as far as argument estoppel applying. Any argument you make, about any prior art, can lead to the application of argument estoppel. Assuming your opponent can make a credible argument that the examiner relied on your statement/argument in deciding to allow the application.
And the unapplied prior art in this case was not “merely being described” as you suggest. It was described in an attempt to explain/distinguish the applied prior art. By implication, that’s an argument about the applied prior art. 🙂
People try this mess all the time in prosecution “that piece of prior art isn’t what we made” blah blah blah. No, it’s not, but it is what your claim claims. If yours and your attorney’s grasp of english isn’t what it should be, your friendly examiner is just a phone call away.
RCE fees apply. Additional prior art may apply. All patents final but subject to the whims of the courts. Exchanges only up to two years and with valid reciept.
Call TODAY! 571-270-XXXX
Malcolm,
With all due respect, you are running on half-cocked.
Please read more. You’ll thank me in the morning (another Mr. Monkism).
Veteran Attorney,
To answer your question, “Isn’t this a case of cut and dried argument estoppel?”
No.
You can find the district court’s decision, as I did, by following the third link from the top of this thread, and then finding instructions in one of the comments to NYS’s CourtWeb. Therein you can see that the Judge only found an “implication” (in his opinion) and no more. It is a real stretch to find even the hint of a “disavowal.” And the “implication,” which was found in the reexamination prosecution history (not the specification), as I wrote above:
“Moreover, the prior art reference was even not asserted in a rejection — the prior art was merely being described, and I understand that is required during the reexamination process (at least it required was when one of my patents was reexamined).”
I have to fess up: When I said above:
“I’m going to my bar (no, not the patent bar, the other kind, the one between the hardware store and the grocery)”
I was only joking to make Malcolm smile – the truth is, my bar is not “between the hardware store and the grocery.”
“Isn’t this a case of cut and dried argument estoppel?”
Yes.
Isn’t this a case of cut and dried argument estoppel? The statement about the unapplied prior art made during the reexam is not available on PAIR, so I don’t know what patentee said about the reference, and I don’t see an exact quote of patentee’s statement in the decision, but isn’t it possible that patentee argued, essentially, “Reference X discloses Y, and our invention is not Y”? (That’s what it appears to me that patentee did in an attempt to distinguish the claimed invention from another piece of applied prior art by comparing the applied prior art to the unapplied prior art.) If they did, who cares whether Reference X was applied or not? What difference does it make? If you make arguments about the prior art, applied or unapplied, you are aware that such arguments may arise to the level of argument estoppel. If the application is allowed in response to such statements/arguments, it’s almost certain argument estoppel will apply (unless the examiner takes the time to specifically note in a reason for allowance that such arguments were not persuasive and were not relied upon in allowing the application. Which rarely, if ever, happens.). So why make the statement/argument?
Malcolm,
Finally, we can agree on something you said when you said that: “I’m baffled”.
Or were you just invoking Phillips?
It has been fun (not) but I am running late.
Leopold,
Re:
“They implied it. 🙂 Seriously, they agreed that the standard was “clear and unmistakable,” and then said that the district court was correct in its application of prosecution history estoppel. That’s a pretty clear (and unmistakable?) implication to me.”
With all due respect once again, I disagree.
According to the CAFC decision, the CAFC merely said CIAS argued:
“… any statements made during the patent’s prosecution require ‘clear and unmistakable statements of disavowal’ of the specific claim interpretation at issue…”
In truth, the CAFC neither agreed, as you suggest :-), nor did the CAFC disagree. The CAFC was stone silent on “clear and unmistakable.” The CAFC only affirmed the district court which only found an “implication” and no more.
Hence, Patent Pirates have a new defence to infringement: “disclaimer by implication.”
Also, I never implied, nor did I mean to imply, that:
“…all implications in the prosecution history are going to lead to estoppel.”
Oh contraire: One point of the Petition, as I read it, is that the CAFC is not consistent with itself or any other courts! Owing to the growing pressures of the Supreme Court, the Congress and the PTO Reformists, it has snapped and run amuck and it sorely needs to be reigned in.
Therefore, the sky surely is falling, and I’m going to my bar (no, not the patent bar, the other kind, the one between the hardware store and the grocery).
“Put another way, are you telling me that your remarks describing prior art imply things that you expect will limit the claims”
All of my remarks? No.
Some of my remarks? Maybe.
It *depends on the remark* and the context in which it is made.
That’s sort of my point. And the CAFC’s point as well. CIAS has no chance and, as usual, I’m baffled that people have money to burn on such hopeless appeals.
“I also have read the CAFC decision but I cannot find where, as you say,’the CAFC only said that the particular implication made by CIAS’s attorney was clear and unambiguous.’ The CAFC decision does not say that.”
They implied it. 🙂 Seriously, they agreed that the standard was “clear and unmistakable,” and then said that the district court was correct in its application of prosecution history estoppel. That’s a pretty clear (and unmistakable?) implication to me.
I’m not arguing (and I don’t think Malcolm is either) that the district court was correct, or even that the CAFC was correct. But, I am arguing that you can’t read the CAFC opinion to say that all implications in the prosecution history are going to lead to estoppel. In fact, I don’t believe the CAFC ever even mentioned “implications.” Now, the CAFC may have gotten this case wrong on the facts. But they didn’t make new law here. The sky is still not falling.
Malcolm,
Please read the comments before sticking your foot in your mouth. I already did restate it just for you in my comment, i.e., I said above that:
“Put another way, are you telling me that your remarks describing prior art imply things that you expect will limit the claims?”
[fast approaching cocktail time, JAOI cannot hardly wait]
Leopold,
With all due respect, I disagree – – Malcolm does need help here.
I also have read the CAFC decision but I cannot find where, as you say,
“the CAFC only said that the particular implication made by CIAS’s attorney was clear and unambiguous.” The CAFC decision does not say that.
And I have also read the district court’s decision in this case following links posted above. Remarkably, neither the CAFC nor the district court ever said that anything CIAS said anywhere in the specification, or anywhere in the prosecution history, or anywhere else, was clear and unmistakable.
The patent’s claims’ scope was limited by implication and implication alone which was found only in the reexamination prosecution history (and not the specification).
Moreover, the prior art reference was even not asserted in a rejection — the prior art was merely being described, and I understand that is required during the reexamination process (at least it required was when one of my patents was reexamined).
Leopold gets it.
“are you telling me that remarks you’ve made describing prior art never implied something that you didn’t think would limit the claims”
Please rewrite in English.
Not that Malcolm needs any help from me, but all he said was that an implication COULD be clear and unambigous. He didn’t say that implications were always clear and unambiguous, nor did he “equate” an implication during prosecution with a clear and unambiguous disclaimer.
Despite CIAS’s petition (which I haven’t read yet, although I have read the CAFC’s opinion), the CAFC only said that the particular implication made by CIAS’s attorney was clear and unambiguous. NOT ALL implications will create prosecution history estoppel. Relax.
Malcolm,
I may be out on a limb here, but I assume you prosecute patent applications. Be truthful; are you telling me that remarks you’ve made describing prior art never implied something that you didn’t think would limit the claims?
Put another way, are you telling me that your remarks describing prior art imply things that you expect will limit the claims?
That would really stretch credibility. I’d bet patent attorneys who prosecute patent applications imply things all the time and they would be flabbergasted to find their implication limits the patent’s scope.
No way is this CAFC decision consistent with Phillips. In the Oatey thread you argued:
“It’s a basic claim construction issue … and should be resolved according to Phillips, NOT by creating some weird new doctrine.”
Which is it, Phillips or no Phillips, or should Phillips be applied only when you say so.
Malcolm,
You haven’t been funny for some time. That’s your forte.
“You know it. I know it. Any fool knows it.”
Didn’t you know a cobbler should stick to his forte?
“how do I know if you also stopped at the hardware store for some nails and they were out nails so you were screwed”
Because I said I went to *the* store.
I have to be more “clear” than that? Perhaps you should ask the Supreme’s to give you some “magic words” to use in the prosecution history. Do you think the Supremes will heed your request? Maybe you can hire Andy Pincus to improve your chances.
However, Me thinks thou protesteth with too much food. With that many items you couldn’t even have used the “10 items or less” check-out line.
You’re right. Even though I didn’t “clearly and unambigously” say so, it’s implied. You know it. I know it. Any fool knows it.
Welcome to the world of reason. The oxygen stings a bit, doesn’t it?
Malcolm,
Riddle me this: Did the farmer imply he wanted to ravish the girl or did the girl imply she wanted to be ravished?
That’s a really nice speech, 6k, but completely inapposite to the present case.
If anyone screwed up here, it was the examiner, for not requiring clearer claim language. The claim and the prior art were right there in front of him/her.
The prosecuting attorney got precisely what he wanted. The litigating attorney simply failed to stretch the claim to cover something his client wasn’t entitled to.
Roger,
Roger that. Thanks for the clarification.
Malcolm,
Hard to believe you would begin to equate an “implied” disclaimer with a “clear and unambiguous” disclaimer if you read the Petition. But I’ll let Webster know you think he can drop a few unnecessary words and save a few trees. At least you’re thinking “green.”
I did like your “shaggy dog comment” nonetheless:
“If there are two stores in my neighborhood, one a grocery store and the other a hardware store and I say that I went to the “store” and came back with eggs, a pint of milk, a loaf of bread, three apples, some shrimp, a pork chop, lettuce, orange juice, a box of cereal, a bar of chocolate, a bag of sugar, and a stick of butter…”
However, Me thinks thou protesteth with too much food. With that many items you couldn’t even have used the “10 items or less” check-out line.
Besides, how do I know if you also stopped at the hardware store for some nails and they were out nails so you were screwed?
You reminded me of farmer Jones. Tell me if you heard this story and I’ll stop:
One day, farmer Jones was in town picking up supplies. He stopped by the hardware store and picked up a bucket and an anvil, then stopped by the livestock dealer to buy a couple of chickens and a goose.
Now he had a problem: how to carry all of his purchases home. The livestock dealer said, “Why don’t you put the anvil in the bucket, carry the bucket in one hand, put a chicken under each arm and carry the goose in your other hand?”
“Hey, thanks!” the farmer said, and off he went.
While walking he met a fair young lady with a beautiful figure. She told him she was lost, and asked, “Can you tell me how to get to 15 Maiden Lane?”
The farmer said, “Well, as a matter of fact, I’m going to visit my brother at 16 Maiden Lane. Let’s take a short cut and go down this alley. We’ll save half the time to get there.”
The fair young lady said, “How do I know that when we get in to the alley you won’t hold me against the wall, pull up my skirt, and ravish me?”
The farmer said, “I am carrying a bucket, an anvil, two chickens, and a goose. How in the world could I possibly hold you up against the wall and do that?”
The young lady said, “Set the goose down, put the bucket over the goose, put the anvil on top of the bucket, and I’ll hold the chickens.”
How hard is it for you people to understand? Put what you claim, and only what you claim IN THE CLAIM. Not in the file wrapper where nobody can hardly find it, it’s not serving it’s public notice function there, and, not to mention, hardly anyone making these statements on the record even back them up with actual art. I’ve pretty much decided to stop accepting that bs (in all be the most straight forward of cases), you want to state something about what was in the prior art? Show me. You think that you can overcome my legal prima facia case with unsupported allegations about what has gone before? Get real bucko. Maybe when I send you a final I’ll withdraw all my references and just rely on official notice since I’ve seen all that art that I could have cited. Like that? I bet you wouldn’t, and it’s improper. Same thing with arguing vague allegations about prior art that supposedly functions like you say it does.
How hard is it for you people to understand? Put what you claim, and only what you claim IN THE CLAIM. Not in the file wrapper where nobody can hardly find it, it’s not serving it’s public notice function there, and, not to mention, hardly anyone making these statements on the record even back them up with actual art. I’ve pretty much decided to stop accepting that bs (in all be the most straight forward of cases), you want to state something about what was in the prior art? Show me. You think that you can overcome my legal prima facia case with unsupported allegations about what has gone before? Get real bucko. Maybe when I send you a final I’ll withdraw all my references and just rely on official notice since I’ve seen all that art that I could have cited. Like that? I bet you wouldn’t, and it’s improper. Same thing with arguing vague allegations about prior art that supposedly functions like you say it does.
“it is rare and possibly untrue here.”
I disagree.
“There is no contradiction per se between a “clear and unambiguous” disclaimer and an “implicit” disclaimer.”
Although true, it is rare and possibly untrue here.
Just an ordinary inventor,
While Patent No. 1 issued July 13, 1836, the first U.S. federal patent (No. X1) was granted July 31, 1790.
A pint of milk? Who buys only a pint of milk to go with his box of cereal?
Wow, so the CAFC notes that statements in a prosecution history “implied” that a claim term should be construed in a particular way and then CIAS has a little hissy fit?
Give me a break. There is no contradiction per se between a “clear and unambiguous” disclaimer and an “implicit” disclaimer.
If there are two stores in my neighborhood, one a grocery store and the other a hardware store and I say that I went to the “store” and came back with eggs, a pint of milk, a loaf of bread, three apples, some shrimp, a pork chop, lettuce, orange juice, a box of cereal, a bar of chocolate, a bag of sugar, and a stick of butter, it’s “implicit” that I went to the grocery store but there’s nothing unambiguous about it.
CIAS is wasting it’s time, just like it wasted the CAFC’s time.
You want to complain about crxppy opinions that confuse the case law, look here: link to patentlyo.com
This petition has even less of a “snowball’s chance in hell” than the one for the BMPC case being granted (SCOTUS’ apparent “hatred” of the Federal Circuit notwithstanding). I sure hope this was the client’s idea (and a misguided one at that), because they’ve likely thrown their money down a “dry hole.”
I’m also with those who wonder what “clarity” will occur if SCOTUS does (perish the thought!) grant CIAS’ petition (clarity is an oxymoron when SCOTUS is concerned)? Why not urge the Federal Circuit to grant an en banc hearing to resolve this problem? That would be a far better solution than having SCOTUS mucking up claim interpretation any worse than it did in Markman (the Federal Circuit has taken an unfair proportion of the blame for claim construction being a question of law because that’s what SCOTUS said in its infinite unwisdom).
I have a question regarding the Petition to the Supreme Court that was posted on
(A) January 24th, and
(B) today’s Petition posted above.
(A) The “BPMC v California” Petition is essentially limited to this issue: “waiver-or-not-waiver issue” under the Eleventh Amendment. This issue arises in a handful of patent cases (that Petition doesn’t address the inherent fairness/unfairness of the Eleventh Amendment itself).
(B) The claim construction issue, “limitation by mere implication,” as in the “CIAS v Alliance’s Bally,” arises in most all patent cases.
Here is the question:
Will the Supreme Court take either?, neither?, or maybe both?
Is there any way that the SC could reconsider de novo review in this case?
A decision would do nothing to codify the rules, but the petitioner is GENIUS to play on the SC hatred of the FedCir.
Dear Mr. McDonald,
I think the point is this:
Without litigation, how can anyone ever gauge a patent claims scope if an “implication” regarding prior art in the prosecution history can limit the claim’s scope?, since, “Virtually everything an applicant might say about prior art could give rise to an ‘implication.’”
Here’s the kicker – many in this profession complain that the CAFC doesn’t respect District Court claim interpretation and that it should change its de novo review stance.
Now someone is trying to take the CAFC to the SC because it AFFIRMED a District Court claim interpretation.
Why do I think what is really wanted is a CAFC that rubber stamps patents as always valid and always infringed?
“Anyone want to buy a patent portfolio? Cheap, real cheap.”
Hey JAOI(TM), I’d hold on to it – in 20 years it could be a collector’s item. 🙂
[/hope]
Death by Implication — R.I.P.
July 13, 1836 to September 27, 2007
Patent No. 1 issued July 13, 1836, and the patent system died on September 27, 2007 with a CAFC obituary.
Epitaph:
We could all see our beloved patent system was getting weaker and weaker, and then it died.
Anyone want to buy a patent portfolio? Cheap, real cheap.
More BS.
A SC decision wouldn’t do anything more than what KSR did for obviousness jurif–kance.
What did KSR do?
Anybody? Anybody? Bueller?
It killed the motivation to combine doctrine, which, whether it was good or not, was the only thing beyond “it’s obvious because it’s obvious” that we had.
Sure, you’ve got your basic thoughts on 103 – optimization of conditions is obvious, combining art that is used for its intended purpose in the invention is obvious, and so on.
But when those few things don’t apply, you have to fall back to – it’s obvious because [examiner/board/CAFC] said it’s obvious.
I quote CJ Roberts – “That seems pretty obvious to me.”
So what does a claim term mean?
Gum this up more. Why not.
I’ve lost all hope for the patent system. It’s dead, we can stop the CPR.
What a mess.
If the Supreme Court takes no other patent Petition, it ought to grant cert to this Petition in order to clarify whether or not an “implication” made in a patent’s prosecution history can limit claim scope.
The standard, at least up to now, has been that claim scope can be limited by a “clear and unmistakable” statement in the prosecution history.
Left standing, this CIAS v Alliance (Bally) Gaming CAFC decision would set a new standard in chaotic claim interpretation. As described in the Petition to the Supreme Court, the untenable dilemma stems from the district court’s opinion which was AFFIRMED in the CAFC decision in regard to an “implication” limiting claim scope:
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Quote from pages 6 & 7 of the Petition (emphasis added):
“… The result is that the public is left at sea as to what a patent’s claims mean unless and until one or another panel of the Federal Circuit decides how it is going to view these prosecution history statements.
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“In this case, for example, the District Court held that during reexamination of the patent-in-suit, CIAS, in describing a prior art patent system, had “IMPLIED” a particular operation of that system and that the “IMPLICATION” of this description was a limitation to the CIAS patent’s claims. Without explaining how such an “IMPLIED” description and “IMPLICATION” of a limitation could satisfy its own “clear and unmistakable disavowal of claim scope” standard, the Federal Circuit affirmed the District Court’s limiting claim construction and consequently judgment of noninfringement. If all that is required to create a limiting claim construction is an “IMPLICATION” based on a description of prior art, then patent applicants and the public as a whole are placed in an untenable position. VIRTUALLY EVERYTHING AN APPLICANT MIGHT SAY ABOUT PRIOR ART COULD GIVE RISE TO AN “IMPLICATION.” Yet applicants routinely must describe or discuss prior art cited to or by the patent examiner. No one will know whether that discussion will limit the patent’s claims unless and until there is litigation and the Federal Circuit speaks.”
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Left standing, this decision invites a plethora of patent court battles that would have otherwise settled-out. Virtually every infringer without a more viable defense will be able to mount a defense of “disclaimer-by-implication” unless the Supreme Court takes this Petition and clarifies.
Remarkably, this CAFC CIAS v Alliance (Bally) Gaming decision directly challenges Phillips — link to cafc.uscourts.gov — which said this on page 17:
“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.”
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