JSonnabend

[ChrisWhewell]

It's inequitable that an entire patent be declared invalid because of a wrongful assertion by its owner that an alleged is trespassing.  Especially when the patentee did in fact teach something new, that conferred a benefit to society.  I don't purport to have an answer, but can only suggest penalty to the owner of some sort, for a newly-codified wrongful assertion cause of action, provided the one asserted against has suffered a soluble detriment as a result of the assertion.  If the penalty for such a fictitious "wrongful assertion" were high enough, that might cause extra scrutiny by plaintiffs prior to initiating suit.  At least the patentee would not be stripped of the fruits of their entire work, were a wrongful assertion cause of action be made an alternate to flat-out invalidation, especially when the patentees disclosure conferred a benefit to society.

[klaviernista]

[quote author=JimIvey link=topic=13140.msg62372#msg62372 date=1257786491

The specification is not a limit on the breadth of claims.  Period.  At least that's how I write my applications.

[/quote]

I'll respectfully disagree with this, if only because the Federal Circuit has repeatedly demonstrated that it is willing to use statements in the specification to limit the scope of patent claims, often in entirely unexpected ways. 

Tom Irving (of Finnegan Henderson) calls such statements "patent profanity."  And while Tom is arguably addled, he is an extremely good patent attorney with a very good grip on the law.  The article at the following link sums up Tom's position quite nicely.  If you ever get a chance to attend Tom's lecture on patent profanity, I suggest that you do so.  It is well worth it.

Best,

Klav

http://www.patents4life.com/2009/06/court-cusses-out-sanofi-holds.html

[JimIvey]

Yes, of course, I do my best to avoid things in the spec that invite importation into the claims.  I was referring there to invalidation of claims for claiming more broadly than what the specification describes.

I suppose I should have said that the breadth of the specification is not a limit on the breadth of the claims.

Regards.

[bartmans]

haven't some of these issues not be discussed in the Lemelson cases, where Lemelson invented something in 1950-1960 and kept the application pending to be able to insert claims reading on technology that only later became available? If these new claims would read on this new technology, there would be no basis in the app and also enablement would be questionable.
I believe recently the Lemelson foundation has been reprimanded by the CAFC because of this practice. And luckily, because of the introduction of the 20-year patent term in 1995 the possibility for such a strategy is taken away.

Regarding the distinction between enablement and written description: I totally disagree with the viewpoint of the CAFC in the Univ. California vs Eli Lilly case and I hope that the en banc rehearing in Ariad vs. Eli Lilly will make an end to that. Further, it seems strange that this requirement does play an enormous important role in biotech patenting, while in the other technologies it is not an issue at all. In nearly any Office Action I receive the Examiner(s) make an objection under section 112 written description and/or enablement. And believe me, those are not the most simple objections to respond to; they are often more difficult to overcome than the notorious 103 objections.

[Isaac]

I suppose I should have said that the breadth of the specification is not a limit on the breadth of the claims.

While I understand your general position re: Van Gogh, I'm a little bit puzzled by the absoluteness of your statement of principle here.   What if anything would it mean to interpret the claims in light of the specification if the specification had no effect on the scope of the claims?  Even the "own lexicographer" principle would result in limiting the breadth of the claims.

[khazzah]

I think the unfairness is applicable to both enablement and the written description requirement.

Jim, I think you've convinced me that these doctrines are unfair. I spend so much time trying to figure out what the law *is* that I rarely stop to think about *why* it is or whether it's a good idea.

This discussion has been very illuminating. Thanks to all who participated.

[ChrisWhewell]

One possible solution could be sanctions under FRCP rule 11 awarding attorney's fees to the other side for the time they wasted in responding to the pleading that violated rule 11, and leave the patent intact.  Counsel should be charged with knowing the contents of the spec and claim scope, and deciding whether the claim they're about to file has support.  Wait... that's already a feature of the system.  All that needs be done is apply it that way.

[JimIvey]

I suppose I should have said that the breadth of the specification is not a limit on the breadth of the claims.

While I understand your general position re: Van Gogh, I'm a little bit puzzled by the absoluteness of your statement of principle here.   What if anything would it mean to interpret the claims in light of the specification if the specification had no effect on the scope of the claims?  Even the "own lexicographer" principle would result in limiting the breadth of the claims.

Defining terms, putting meat on the definitions, yes, that's all part of the specification's job. 

My whole point is this:  Once you've done all the claim interpretation, all the prior art searching and analysis, infringement analysis, everything -- there is this amorphous notion that a claim can be fully enabled, fully non-obvious, fully infringed, and still be invalid for being "too broad."  And, the section that contains this ethereal notion of maximum permissible breadth is Section 112, paragraph 1, in the "written description" requirement -- or in the lack of enablement of some of the covered embodiments.

It seems to me to be a "go do justice" provision, as in:  "we don't like that this patent reached so far and we can't find any other reason to take it away, so -- while the Spec isn't required to enable all embodiments of the claimed invention, it should have enabled the particular embodiment practiced by the defendant and it didn't, so it's invalid."  Being a software engineer, I'm all about getting the rules right and them letting do the work.  I hate rules like "just go do justice."

Reminds me of an old joke about Texas jury instructions for murder trials (apologies to Texans, but I think many won't find the joke insulting):  There are just two questions the jury must answer:  (1) did the victim need killin'? and (2) was the defendant the one to do it?  Of course, they convict if either is answered in the negative.

I think 102 and 103 provide ample protection against overbreadth of claims, particularly since those issues can always be raised and, once raised successfully, the claim is gone forever (unless prosecution is still active).

Regards.