Pointing Out the Problem to be Solved or Objects of the Invention

Revolution Eyewear v. Aspex Eyewear (Fed. Cir. 2009) 08-1267.pdf [UPDATED 5/7/09 – To correct a mix-up of parties]

The patents at issue in this litigation focus on eyeglasses configured to be fitted with a second set of sunglass lenses using magnets. Magnetic auxiliary frames were already in the prior art, but the apparent advance is that the magnets are located in projections rather than embedded in the frames -- thus allowing for a stronger magnetic bond. The patent also identified a second deficiency in the prior art: insufficient "stability support."

The district court held that Revolution infringes claim 22 of Patent No. RE37,545.

On appeal, Revolution argued that that the claim was invalid -- raising three separate arguments: (1) failure of written description under Section 112 ¶ 1 because the apparatus as claimed does not address both deficiencies in the prior art; (2) failure to claim the "original" invention in the reissued patent under Section 251; and (3) improper expansion of claim scope in the reissue application under the recapture rule. The Federal Circuit rejected each of these invalidity arguments.

Written Description: The written description requirement is often raised when the issued claims are different than those originally filed. New claims must find support in the original specification in a way that "convey[s] with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the [claimed] invention."

Revolution admits that all of the claimed elements are found in the original drawings. Of course, that is not conclusive for written description. Rather, in cases such as LizardTech and Liebel-Flarsheim, the Federal Circuit found claims invalid even though all the explicitly claimed limitations and arrangements were originally disclosed. The problem with the claims in those cases was that they did not include enough limits.

The invalidity argument in this case is actually more akin to Gentry Gallery. Here, Revolution argues that the patent is invalid because the claimed apparatus does not address both of the stated functions of the invention. The Federal Circuit found that argument lacked legal grounding: "when the specification sets out two different problems present in the prior art, it is unnecessary for each and every claim in the patent to address both problems." Of course, the negative implication of the court's statement is that the claim must address at least one of the stated problems. "Inventors can frame their claims to address one problem or several, and the written description requirement will be satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in that claim." In this case, the claim addressed the magnetic strength problem - and thus satisfied the written description requirement.

Claiming the Same Invention: 35 USC Section 251 focuses on requirements of reissue applications. Under the statute, a reissued patent must be for the same "invention disclosed in the original patent." Here, the Federal CIrcuit found that this requirement is "analogous to the written description requirement." "Because we have held that the written description requirement is satisfied, we similarly hold that claim 22 complies with § 251."

Recapture Rule in Reissue Patents: Reissue patents are intended to correct errors in the originally issued patents. Courts have created the recapture doctrine which would exclude certain intentional acts from the list of correctable 'errors.' In particular, under the recapture rule, an intentional and deliberate act of narrowing claims or disclaimer of claim scope in order move the patent application toward issuance will not be considered an "error" under Section 251. Akin to prosecution history estoppel, "the recapture rule is aimed at ensuring that the public can rely on a patentee's admission during prosecution of an original patent." On appeal, the Federal Circuit could find no admission or disclaimer being recaptured.

Affirmed.

Notes:

• Pointing out deficiencies in the prior art: Most patent attorneys no longer discuss the prior art in the patent application because of the potential problems raised by this and other cases. Almost as an aside, this case also notes that by "pointing out the two deficiencies in the prior art, [the inventor] disclaimed an auxiliary frame that is not stably supported in top-mounting configuration and a primary frame that has embedded magnetic members."

Comments

[Actual Inventor]

Pointing out deficiencies in the prior art: Most patent attorneys no longer discuss the prior art in the patent application because of the potential problems raised by this and other cases. Almost as an aside, this case also notes that by "pointing out the two deficiencies in the prior art, [the inventor] disclaimed an auxiliary frame that is not stably supported in top-mounting configuration and a primary frame that has embedded magnetic members."

So in other words, if you criticize the prior art in your application you automatically disclaim said art, and can't include said art in claim scope for infringement purposes?

Well, what's the problem with that? As an "Actual Inventor" I am hopefully reducing to practice a new, improved ,novel and non obvious version of the technology that is the prior art. So there is no need to have a monopoly on an old version.

[curious]

It is unfortunate that the law has evolved to discourage including a brief statement of the prior art and its deficiencies. I thought that it told a helpful story to the examiner and later to the judge/jury. (However, just listing the objects of the invention was never a good idea, though I used that technique decades ago because my bosses did.)

[Leopold Bloom]

"It is unfortunate that the law has evolved to discourage including a brief statement of the prior art and its deficiencies."

Let's keep in mind that the court actually rejected all of the invalidity defenses in this case. There's nothing wrong with discussing the prior art and its deficiencies, as long as you do it intelligently. Furthermore, some of the perceived "problems" arise only when a litigating patentee tries to stretch a claim beyond recognition. The fact that a sizable number of attorneys believe that the law is "discouraging" any discussion of prior art is not the fault of the law, but appears to be more the result of a desperate need on the part of many attorneys for hard-and-fast rules for drafting applications. The fact is that there aren't that many.

[Roger Karp]

+1 to what Mr. Bloom said.

[patent.drafter]

+1 Mr Bloom.

[EG]

My comment here is that you should minimize what you say (and what you cite) in the Background section to avoid Admissions of Prior Art (APA). Otherwise, what Leopold suggests is fine if you do it in the Detailed Description section (where you can fight off APA allegations by the Examiner) and if you do it carefully (such as pointing out where the prior stuff is deficient and where what will be the claimed invention provides the benefit not obtained by the prior stuff).

In fact, in view of Kubin in the biotech area, it is almost imperative to allege that what may seem, at first glance "obvious to try" in terms of, for example, a nucleotide/protein sequence, isn't because the particular technology is still "unpredictable" (based on the reasoning and description provided in the application). Hope this makes sense.

[Steve Zweig]

Although I agree that when the prior art is discussed, it should be carefully distinguished, it seems to me that if the discussion of prior art is too short, this can raise issues of failure to be candid and perhaps even inequitable conduct.

The basic agreement between the patent filer and society is a quid pro quo -- sufficient disclosure for protection, and failing to place an invention in it's proper context can be viewed as an attempt to evade this responsibility.

Keep in mind also that in today's world, many patents are filed internationally, and other patent offices, in particular the EPO direct: "The description should also mention any background art of which the applicant is aware, and which can be regarded as useful for understanding the invention and its relationship to the prior art; identification of documents reflecting such art, especially patent specifications, should preferably be included."

So I would argue that the rule should not be "don't cite", but rather "cite but distinguish".

[MaxDrei]

Steve, important for the drafter is to distinguish between what you can put right after your filing date (insert background art section) and what you can't, because of Art 123(2) EPC. What you write in your as filed app about the problems your invention solves will have a decisive difference under Art 56 EPC, (that's our 103 Article) and you can't patch it in later.

[Babel Boy]

The US spec has to enable, it has to establish that the inventor had is mind around the invention, and it has to establish utility. None of these require a discussion of the PA. So why mention it? Utility does not require an advance over the PA. It only requires . . . usefulness.

The spec is not required to overcome the PA. It is not required to establish lack of grounds for 102 or 103 rejections. That is, of course, impossible unless you know every piece of PA when drafting the spec.

So I don't see that long discussions or stories about PA in the spec serve any purpose except inflating billing hours.

Of course, that is US prosecution. If I understand Max, if you're going to file in the EPO, you have to adequately discuss advantages over PA in your spec. That is a very scary rule and another reason to avoid EPO if at all possible.

[MaxDrei]

Bang on the money, Babel Boy. Scary? Very. Avoid? Probably a good idea.

Europe takes a terrible toll of US drafting style, and the jury's still out, on the question whether you will ever recoup your investment.

There's just one snag: No patent=no exclusive right.

My suggestions: 1) have a European take a quick look at your case before the end of the Paris year 2)go for just DE, FR, GB. No translation of the specification needed. 3) Use no more than 15 claims. With Art 69 EPC (+Protocol) and, these days, central limitation proceedings at the EPO, who needs more?

[Tazistan Jen]

"So I don't see that long discussions or stories about PA in the spec serve any purpose except inflating billing hours."

The reason I would talk about prior art would be to sell the patent, either to the Examiner or to licensors. Sort of a "look how bad things were and how great they are now with this invention!" gambit.

I do much less of this now, of course, and I certainly wouldn't say the word "invention." At the risk of earning Mr. Bloom's disdain (I do mostly agree with him). :-)

[Leopold Bloom]

No disdain from me, Taz. J. Given your comments on this board, I'd be pleased to work with you, even if we don't agree 100%.

[Jeff Kuester]

How does this case square with ICU Medical? All disclosed embodiments AND the originally-filed claims AND the Summary of the Invention AND the statements about the "invention" included primary frames with magnets for receiving top mounted auxiliary lenses.

[Babel Boy]

Has anyone written the book of international patent procedure traps, and how to avoid them?

You know, the book that explains how if your US application is bang-on, spotless, perfect, it will get you nailed to the wall when you file it in Japan or EPO. Or vise versa.

Any takers, Max?

[MaxDrei]

Babel, I too would be interested to know of any such book. It would be fun to review it.

[Mark Nowotarski]

OT

A whole class of MBA students from Kent State have descended upon the “SoberTeen Driving Insurance” patent application posted on Peer to Patent. (Apparently they like the cartoons :-))

Unfortunately, all they are posting are opinions (and rather wordy ones at that), which are going to be useless to an examiner.

Any practitioners care to post a comment about how essential it is to support an opinion with prior art? I think that would go a long way to steering these students in the right direction and make their efforts a lot more useful for subsequent examination.

Here is a link http://www.peertopatent.org/patent/20090063201/activity

[curious]

Max -- instead of a book, why don't you write an article pointing out how U.S. applications drafted without discussing the prior art, as many posters above have mentioned, can be deficient according to EP practice and why.

Dennis, will probably even publish it on this website.

[GP]

Number of times the Background Section has helped me . . . none.

Number of times I have seen a BG section hurt - either in prosecution or litigation - too many to count.

Keep the BG section short, sweet, and generic.

Many practitioners use the BG section as a page length crutch. I got one app in that was 8 pages long - 4 of them were BG. There was one sentence on the critical aspect of the invention. Crutch.

Further hassle - Examiners lacking clues who like to cite the BG and call it admitted art. Completely wrong, but they do it.

The thought that the BG can be used to sell Examiners or to woo licensees is, IMO, inaccurate.

The only time it seems that Examiners read the BG is when they are looking to save themselves a search.

Licensees typically know exactly what the prior art is and know why they want to take a license.

Short and sweet.

[MaxDrei]

Curious, the funny thing is that the lack of a BG section is not necessarily prejudicial in the EPO. See Rule 42 EPC 2000, where it states as "preferably" the citation of prior art references. The lurking "killer" is the Rule 42(1)(c) need to address "the problem" relative to the "closest art" otherwise called the PSA "prior art starting point" reference (D1), when replying to the FAOM, in all those cases in which the attorney who did the drafting had no knowledge of D1, with D1 appearing for the first time, long after the filing date, on the EPO search report. That's what makes the exploration of obviousness in the EPO "objective" rather than "subjective".

[Actual Inventor]

Tazistan Jen wrote: The reason I would talk about prior art would be to sell the patent, either to the Examiner or to licensors. Sort of a "look how bad things were and how great they are now with this invention!" gambit.

Yes, I agree, but then again I am an "Actual Inventor". Most Patent Attorneys, that can only write patent applications for a living, have no skill or interest in selling, and licensing inventions.

[Actual Attorney]

Actual Inventor--

Isn't that your mom calling from upstairs?

[Actual Inventor]

GP Wrote: "The thought that the BG can be used to sell Examiners or to woo licensees is, IMO, inaccurate."

And your opinion is wrong. Examiners do need to be sold on the importance of an invention and why it merits a patent, especially in this post KSR age.
And an Actual Inventor can't rely of the facade of "I am smarter than you so buy what I am selling", that most patent attorneys use.

You better believe a potential licensee is going to need to be sold on the benefits of the invention over what they already do or know A.K.A. Prior Art.

[Examiner Number 9]

The background section and the claims are the only sections I consistently read.

In my experience citing the advantages over PA leads to quicker resolution (one way or another).

[broje]

If all were right with the world, I could say that magnets in frames are insufficient, teach magnets in protrusions, get claims to magnets in protrusions, and enforce those claims against frame makers that put magnets in both protrusions AND in the frames. But is all right with the world? I am not convinced. So -1 to what Mr. Bloom said, just this once. Sorry Mr. Bloom.