Silence in prosecution can be held against the applicant
In Fuji v. ITC, the Federal Circuit observed:
That exchange indicates not only that the applicant’s attention was called to the examiner’s interpretation of “said means” as not including the “taking lens,” but also that the applicant was invited to correct the examiner’s interpretation—an invitation the applicant did not accept. Although caution must be used in attaching weight to an applicant’s silence in response to an examiner’s statement about claim scope, see 3M Innovative Props., Inc. v. Avery Dennison Corp., 350 F.3d 1365, 1373-74 (Fed. Cir. 2004); Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380 (Fed. Cir. 2002), the applicant’s failure to correct the examiner’s characterization of the “said means” as referring to only two means rather than three supports the inference that the omission of the word “means” after “taking lens” was not inadvertent.
If the omission of the word “means” after “taking lens” was an oversight, it should have been corrected with an amendment or by some other timely measure to correct the error. Since no amendment or other corrective measure was proposed, we have no way of knowing whether it would have been granted, i.e., whether the broader claim scope that Fuji now seeks would have been available to it. As we have previously observed, “as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection” for particular subject matter. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997); see also Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1208 (Fed. Cir. 1992) (“Other players in the marketplace are entitled to rely on the record made in the Patent Office in determining the meaning and scope of the patent.”).
[See also the article "Just the Facts, Ma'am," Intellectual Property Today, January 2003-->
The television show Dragnet n2 popularized the concept that anything you say can and will be used against you. There was a never a suggestion that your silence could be used against you. Recent court cases have suggested that silence in patent prosecution can and will be used against you.
On October 31, 2002, in Inverness v. Warner-Lambert, n3 the Federal Circuit referred to Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979, 52 USPQ2d 1109, 1113-14 (Fed. Cir. 1999) for the proposition that failure to respond to an examiner's reason for allowance functioned as a disavowal of a different interpretation of the claim. Although this is an overstatement of the text in Elkay, n4 it is not necessarily an incorrect statement of current law. Of recent case law using silence against a patentee, on November 25, someone posted on an internet chat board a quote from a district court case n5:
The Examiner's reasons for allowance are absolutely binding on the patentee, absent an objection by the patentee thereto. See, e.g., Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 41 U.S.P.Q.2D (BNA) 1865, 137 L. Ed. 2d 146, 117 S. Ct. 1040 (1997); Markman v. Westview Instruments, 52 F.3d 967, 34 U.S.P.Q.2D (BNA) 1321 (Fed. Cir. 1995), aff'd 517 U.S. 370, 38 U.S.P.Q.2D (BNA) 1461, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996); Vitronics Corp., 90 F.3d at 1578; Zenith Labs., Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 30 U.S.P.Q.2D (BNA) 1285 (Fed. Cir. 1996); see also 65 F.R. 54604 (2000) (changing the written text of the Manual of Patent Examining Procedures to reflect the cited case law); Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1296, 56 U.S.P.Q.2D 1161, 1173 (Fed. Cir. 2000) (stating that "it does not seem to us to be asking too much to expect a patentee to check a patent when it is issued in order to determine whether it contains any errors that require the issuance of a certificate of correction"). [end case quote]
The internet poster commented about the case quote: I find this part of the opinion quite "disappointing." I tried to follow the cites provided for elaboration, and I found none. The court points to Warner-Jenkinson and to Markman, but it does not say on which page(s) of the huge opinions support its statement regarding reasons for allowance. The court does provide a page cite for Vitronics, but the page says nothing about reasons for allowance. (It seems that judges are not held to the same standards as the parties' lawyer or law students are held.)[UPDATE: Please refer to Alan Dershowitz's comments (in regard to the accusation that Lawrence Tribe plagiarized work) to the effect that the legal area in general has different standards for sourcing, and separately note issues with certain footnotes of Mark Lemley.]
The poster is correct about the absence of justification in the cases for the proposition that "reasons for allowance are absolutely binding on the patentee, absent an objection by the patentee thereto." n6 Surprisingly, the situation is a bit worse than the poster envisioned. Those same cases were used prior to Apex v. Raritan to justify the change to rule 104(e) which eliminated the "safe harbor" which made explicit that a non-response to "reasons for allowance" would not be held against applicant. n7 Not only were there no cases eliminating the safe harbor, but there could not have been such cases. As pointed out by the BPAI in Ex parte Yamaguchi, 61 USPQ2d 1043 (BPAI 2001): "However, it is well settled that the rules of the PTO have the force and effect of law unless they are inconsistent with statutory provisions, In re Rubinfield, 270 F.2d 391, 395, 123 USPQ 210, 214 (CCPA 1959), cert. denied, 362 U.S. 903 (1960), and neither any of the cases cited in footnote 2, supra, nor any other decision of which we are aware, has specifically held this provision of 37 CFR § 1.109/1.104(e) to be inconsistent with the statute or otherwise invalid."
To illustrate the point in a somewhat whimsical way, contemplate a hypothetical analysis of 37 CFR 1.63(b)(2) n8 by some reviewing body: "In view of the supplementary guidelines adopted by the American Physical Society (APS) on November 10, 2002 n9 that co-authors who make specific, limited contributions are responsible only for the limited contributions but may have only limited responsibility for other results, we find it unreasonable to require all inventors to sign the oath required by 37 CFR 1.63(b)(2). The mandate that patent law promote the progress of science directs us to recognize that multi-person multidisciplinary scientific collaborations, frequently involving multiple institutions, which are necessary to advance scientific understanding, create an environment wherein not all inventors will understand all aspects of the invention. The requirement of the declaration of 1.63(b)(2) signed by all inventors deters collaboration and thus does not promote the progress of science." Later, there is an observation that 1.63(b)(2) is inconsistent with case law, and 1.63(b)(2) is subsequently eliminated.
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As a side point, the issue of "substantial evidence" came up in the Fuji case:
We review the administrative law judge’s findings on the issue of infringement for substantial evidence. Oak Tech., Inc. v. U.S. Int’l Trade Comm’n, 248 F.3d 1316, 1324-25 (Fed. Cir. 2001). Because we conclude that substantial evidence supports the administrative law judge’s noninfringement findings with respect to both models even under the administrative law judge’s claim construction, we find it unnecessary to consider Achiever’s argument that the administrative law judge’s claim construction was too broad.
"Ordinary meaning" also came up:
See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (an accused infringer cannot overcome the heavy presumption that claims should be given their ordinary meaning “simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope”).
It is a familiar axiom of patent law, however, that the scope of the claims is not limited to the preferred embodiments described in the specification. Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003).
That exchange indicates not only that the applicant’s attention was called to the examiner’s interpretation of “said means” as not including the “taking lens,” but also that the applicant was invited to correct the examiner’s interpretation—an invitation the applicant did not accept. Although caution must be used in attaching weight to an applicant’s silence in response to an examiner’s statement about claim scope, see 3M Innovative Props., Inc. v. Avery Dennison Corp., 350 F.3d 1365, 1373-74 (Fed. Cir. 2004); Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380 (Fed. Cir. 2002), the applicant’s failure to correct the examiner’s characterization of the “said means” as referring to only two means rather than three supports the inference that the omission of the word “means” after “taking lens” was not inadvertent.
If the omission of the word “means” after “taking lens” was an oversight, it should have been corrected with an amendment or by some other timely measure to correct the error. Since no amendment or other corrective measure was proposed, we have no way of knowing whether it would have been granted, i.e., whether the broader claim scope that Fuji now seeks would have been available to it. As we have previously observed, “as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection” for particular subject matter. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997); see also Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1208 (Fed. Cir. 1992) (“Other players in the marketplace are entitled to rely on the record made in the Patent Office in determining the meaning and scope of the patent.”).
[See also the article "Just the Facts, Ma'am," Intellectual Property Today, January 2003-->
The television show Dragnet n2 popularized the concept that anything you say can and will be used against you. There was a never a suggestion that your silence could be used against you. Recent court cases have suggested that silence in patent prosecution can and will be used against you.
On October 31, 2002, in Inverness v. Warner-Lambert, n3 the Federal Circuit referred to Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979, 52 USPQ2d 1109, 1113-14 (Fed. Cir. 1999) for the proposition that failure to respond to an examiner's reason for allowance functioned as a disavowal of a different interpretation of the claim. Although this is an overstatement of the text in Elkay, n4 it is not necessarily an incorrect statement of current law. Of recent case law using silence against a patentee, on November 25, someone posted on an internet chat board a quote from a district court case n5:
The Examiner's reasons for allowance are absolutely binding on the patentee, absent an objection by the patentee thereto. See, e.g., Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 41 U.S.P.Q.2D (BNA) 1865, 137 L. Ed. 2d 146, 117 S. Ct. 1040 (1997); Markman v. Westview Instruments, 52 F.3d 967, 34 U.S.P.Q.2D (BNA) 1321 (Fed. Cir. 1995), aff'd 517 U.S. 370, 38 U.S.P.Q.2D (BNA) 1461, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996); Vitronics Corp., 90 F.3d at 1578; Zenith Labs., Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 30 U.S.P.Q.2D (BNA) 1285 (Fed. Cir. 1996); see also 65 F.R. 54604 (2000) (changing the written text of the Manual of Patent Examining Procedures to reflect the cited case law); Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1296, 56 U.S.P.Q.2D 1161, 1173 (Fed. Cir. 2000) (stating that "it does not seem to us to be asking too much to expect a patentee to check a patent when it is issued in order to determine whether it contains any errors that require the issuance of a certificate of correction"). [end case quote]
The internet poster commented about the case quote: I find this part of the opinion quite "disappointing." I tried to follow the cites provided for elaboration, and I found none. The court points to Warner-Jenkinson and to Markman, but it does not say on which page(s) of the huge opinions support its statement regarding reasons for allowance. The court does provide a page cite for Vitronics, but the page says nothing about reasons for allowance. (It seems that judges are not held to the same standards as the parties' lawyer or law students are held.)[UPDATE: Please refer to Alan Dershowitz's comments (in regard to the accusation that Lawrence Tribe plagiarized work) to the effect that the legal area in general has different standards for sourcing, and separately note issues with certain footnotes of Mark Lemley.]
The poster is correct about the absence of justification in the cases for the proposition that "reasons for allowance are absolutely binding on the patentee, absent an objection by the patentee thereto." n6 Surprisingly, the situation is a bit worse than the poster envisioned. Those same cases were used prior to Apex v. Raritan to justify the change to rule 104(e) which eliminated the "safe harbor" which made explicit that a non-response to "reasons for allowance" would not be held against applicant. n7 Not only were there no cases eliminating the safe harbor, but there could not have been such cases. As pointed out by the BPAI in Ex parte Yamaguchi, 61 USPQ2d 1043 (BPAI 2001): "However, it is well settled that the rules of the PTO have the force and effect of law unless they are inconsistent with statutory provisions, In re Rubinfield, 270 F.2d 391, 395, 123 USPQ 210, 214 (CCPA 1959), cert. denied, 362 U.S. 903 (1960), and neither any of the cases cited in footnote 2, supra, nor any other decision of which we are aware, has specifically held this provision of 37 CFR § 1.109/1.104(e) to be inconsistent with the statute or otherwise invalid."
To illustrate the point in a somewhat whimsical way, contemplate a hypothetical analysis of 37 CFR 1.63(b)(2) n8 by some reviewing body: "In view of the supplementary guidelines adopted by the American Physical Society (APS) on November 10, 2002 n9 that co-authors who make specific, limited contributions are responsible only for the limited contributions but may have only limited responsibility for other results, we find it unreasonable to require all inventors to sign the oath required by 37 CFR 1.63(b)(2). The mandate that patent law promote the progress of science directs us to recognize that multi-person multidisciplinary scientific collaborations, frequently involving multiple institutions, which are necessary to advance scientific understanding, create an environment wherein not all inventors will understand all aspects of the invention. The requirement of the declaration of 1.63(b)(2) signed by all inventors deters collaboration and thus does not promote the progress of science." Later, there is an observation that 1.63(b)(2) is inconsistent with case law, and 1.63(b)(2) is subsequently eliminated.
<--]
As a side point, the issue of "substantial evidence" came up in the Fuji case:
We review the administrative law judge’s findings on the issue of infringement for substantial evidence. Oak Tech., Inc. v. U.S. Int’l Trade Comm’n, 248 F.3d 1316, 1324-25 (Fed. Cir. 2001). Because we conclude that substantial evidence supports the administrative law judge’s noninfringement findings with respect to both models even under the administrative law judge’s claim construction, we find it unnecessary to consider Achiever’s argument that the administrative law judge’s claim construction was too broad.
"Ordinary meaning" also came up:
See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (an accused infringer cannot overcome the heavy presumption that claims should be given their ordinary meaning “simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope”).
It is a familiar axiom of patent law, however, that the scope of the claims is not limited to the preferred embodiments described in the specification. Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003).
posted by Lawrence B. Ebert at 7:04 AM
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