Section 112 as a limit on claim breadth

[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.

[khazzah]

Bumping this thread because I ran across a relevant case...

I don't think these sorts of unfair fact patterns [Enable=Yes and W.D.=No] come up very often.

I just ran across a case of Enable=Yes, W.D=No. Where Enablement="does spec describe how to make, use, and sell" and Written Description="does spec show that inventor 'possessed' the invention."

Caroll v. McMullin was a Fed. Cir. review of a BPAI interference decision. The interference provoker added claims directed to a golf cleat with an "outward angle", with no range at all on the angle. BPAI affirmed the Written Description ("possession") rejection because the provoker's spec consistently described the outward angle as <= 15. Thus, the BPAI found that a POSTIA would not understand the inventors to have possession of a cleat with an unlimited outward angle.

The reason for my post: enablement was not an issue in the case. Makes sense to me. The way I see it, the claim itself was sorta self-enabling.

While W.D. and Enablement may be intertwined in some fact patterns, in this fact pattern they are clearly different.

[ARWILLIAMS]

Isn't the quote below from the 4/22/10 Ariad-v-Lilly ruling unambiguous with regard to the movie exploitation of the video-game patent?

For example, a propyl or butyl compound may be made by a process analogous to a disclosed methyl compound, but, in the absence of a statement that the inventor invented propyl and butyl compounds, such compounds have not been described and are not entitled to a patent. See In re DiLeone, 436 F.2d 1404, 1405 n.1 (CCPA 1971) (“[C]onsider the case where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.”

Art Williams

[patag2001]

Presume the game of bowling and bowling balls do not exist.

I am granted a patent for a structure comprising a ball having three blind holes.  The detail description enables my claim by explaining how to make and use the three blind holes of the ball.  The balls are used as bearings.  In particular, the description goes into some length concerning the improvement of lubrication of the bearings from the blind holes.

A couple of years after my patent is granted, the game of bowling is invented.  Balls having three blind holes called bowling balls are used in the game of bowling.

Obviously, my patent does not embody bowling balls.

Do bowling balls infringe my patent?

Since the written description does not show the inventor was in possession of a bowling ball, does this mean that the broadness of the patent claim is limited by the written description?

Many Thanks!!

[Robert K S]

I would say the balls themselves infringe, but the method of playing the game is still patentable material for its rightful inventor.

Good job!  You're about to make a mint selling bowling balls.

[khazzah]

Do bowling balls infringe my patent?
Since the written description does not show the inventor was in possession of a bowling ball, does this mean that the broadness of the patent claim is limited by the written description?

Yours is a very interesting hypo.

I say that absolutely a bowling ball literally infringes. And also that as the infringer, I'd try to invalidate under 112 Written Description.

The detail description enables my claim by explaining how to make and use the three blind holes of the ball. 

As the infringer, I'd definitely use this detail to show that you didn't possess "bowling balls". That you only possessed ball bearings which differ from bowling balls in size and material -- even though your claims [presumably] don't mention either.

As an aside ... does your description really need to explain how to *make* ball bearings in order to claim them as an article?

Even though the statutory language is "make and use", in my world -- computers and electronics -- I tend to think of enablement more in terms of "how it works"., i.e., how the components [logically] fit together. So it seems strange to me to think about describing how ball bearings with holes are made and used.

[JimIvey]

I say that absolutely a bowling ball literally infringes. And also that as the infringer, I'd try to invalidate under 112 Written Description.

And therein lies the gross injustice.  I might be cool with determining that bowling balls don't infringe under the reverse doctrine of equivalents.  But the result here is that I, as a typically unscrupulous competitor, can now make, use, sell the new, useful, non-obvious bearings with three blind holes.

Aha!  Gotcha!  Your patent is gone and no patent protection for you ever because you didn't see that your patent might cover something that no one could have foreseen!

Let's ratchet the hypo up a bit.  Consider that the invention is cold fusion but that the claims are broad enough to read on a bait-less mosquito trap, which happens to not be described at all because the inventor of cold fusion wasn't thinking about mosquitoes at all.

Are we ready to toss billions in research money down the drain and toss cold fusion into the public domain because the claims happen to cover a bait-less mosquito trap?  What policy could possibly be served by this interpretation of the law? 

And, yes Karen, there's understanding what the law is and then there's understanding the purposes to be achieved by the law and how it could succeed. 

Regards.

[khazzah]

I say that absolutely a bowling ball literally infringes. And also that as the infringer, I'd try to invalidate under 112 Written Description.

And therein lies the gross injustice. 

...

And, yes Karen, there's understanding what the law is and then there's understanding the purposes to be achieved by the law and how it could succeed. 

Though I didn't comment on the public policy implications, I agree with Jim that the cold fusion hypo highlights the injustice of the "possession" doctrine.   

This "written description-possession" is one of the questions before the Fed Cir in the upcoming en banc rehearing of Ariad v. Lilly. So there's an opportunity to do away with this injustice. I don't know enough about the leanings of various judges to know how the decision is likely to come out. But I'm pretty sure there will be lots of amicus briefs, so we should have a chance to thoroughly explore the public policy implications.