Wednesday, June 29, 2016

CAFC handles USPTO roughly in LF Centennial Limited: the fallacy of the undistributed middle

From the CAFC decision, as to the PTO Director:

...the Director suggests a side panel can be a spine. That suggestion is fallacious: it employs a version of the fallacy of the undistributed middle, ...

To put this in context, from the opinion:

To support the Board’s contrary construction, the
Director of the Patent and Trademark Office, as intervenor,
asks us to hold LF Centennial to the construction
that it proposed—and the district court adopted—in the
prior litigation against Bell’O. But that construction is
not in tension with what LF Centennial proposes here: it
says nothing that contradicts the relevant ordinary nontechnical
meaning of “spine” or, specifically, its distinction
from side panels or legs. In the district court, LF Centennial
proposed only that “first short spine” means “[a]
component, as described in the claim, having a length
shorter than the [second long] spine,” J.A. 561, and that
“second long spine” means “a component, as described in
the claim, having a length longer than the first short
spine,” J.A. 563. The defendants, in turn, argued that the
first short spine and second long spine cannot be used
together and that the first short spine must be removable.
As the district court explained, the parties’ dispute centered
on “whether the two different spines described in
the claims can be used together.” J.A. 582. Nothing
supporting the Board here was said about the location of
the spines, in relation to the console as a whole or to the
side panels.

Nor did any post-claim-construction ruling in the
court case turn on any implicit view of “spine” different
from what LF Centennial urges here. In this circumstance,
there could be no basis for judicial estoppel, which
generally prevents a party from advancing a position that
is “clearly inconsistent” with an earlier position on which
it succeeded. See Zedner v. United States, 547 U.S. 489,
504 (2006); New Hampshire v. Maine, 532 U.S. 742, 750
(2001). Similarly, there could be no basis for issue preclusion,
which is limited to issues that were “actually litigated”
and whose resolution was “essential” to the outcome
in the first round of litigation. See B & B Hardware, Inc.
v. Hargis Indus., Inc., 135 S. Ct. 1293, 1303 (2015); Parklane
Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979);
Restatement (Second) of Judgments § 27 (1982).

The Director also points to the specification’s description
of a short spine in one embodiment as reaching from
the ground to the top of the console. See ’311 patent, col.
2, lines 6–9 (short spine “extends between the floor or
lowest shelf support to the level of the upper most shelf
support”). Because a side panel does the same, the Director
suggests, a side panel can be a spine. That suggestion
is fallacious: it employs a version of the fallacy of the
undistributed middle, under which the two statements, “a
dog is a four-legged pet” and “a cat is a four-legged pet,”
are asserted to give rise to the inference that a dog is a
cat. A common characteristic of a spine and a side panel
does not allow a conclusion that one can be the other.
Under the appropriate construction (which applies to
all of the claims), the Board’s anticipation and obviousness
rejections must be reversed. The challenger Bell’O,
the examiner, and the Board pointed only to the curved
legs or side panels shown in Figure 8 of Saxton as constituting
the disclosure of a “short spine.” Those components
were merely identified as the “short spines,”
without elaboration as to Saxton’s teaching to a relevant
skilled artisan. Because we hold that such components
cannot be considered “spines” under the ’311 patent, there
has been no showing of a disclosure or teaching of a “first
short spine” in the prior art of record. We reverse the
anticipation and obviousness rejections based on Saxton
and Pfister.


Opinion by Taranto.

A version of the fallacy, from wikipedia:

All Z is B
All y is B
Therefore, all y is Z


In this case,

Short spine has property X
Side panel has property X.
Therefore, some side panels are spines.


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