Monday, December 12, 2005

Strawmen, not real men, in law reviews?

In Establishing Rules for Resolving Markman Failures, 72 U. Chi. L. Rev. 1025 (2005), the author manages to talk about Texas Digital without mentioning Phillips v. AWH.

The author set up a tension between

--> Athletic Alternatives, Inc v
Prince Manufacturing, Inc wherein the CAFC said:

Where there is an equal choice between a broader and a narrower
meaning of a claim, and there is an enabling disclosure that indicates that the applicant is at least entitled to a claim having
the narrower meaning, we consider the notice function of the claim to be
best served by adopting the narrower meaning.
[to the author, [accused] product exclusive]


--> Rexnord Corp v Laitram Corp wherein the CAFC said that "we may presume that the examiner gave the terms in the proposed claim their 'broadest reasonable interpretation consistent with the specification,' since he was obliged to do so." [to the author, product inclusive]

The author stated "This rule of construction was later adopted by the more often-cited case of Texas Digital Systems, Inc v Telegenix, Inc, n17 which stated that "if more than one dictionary definition is consistent with the use of the words in the intrinsic record, the claim terms may be construed to encompass all such consistent meanings." The author did not mention the en banc Federal Circuit holding in Phillips v. AWH.

The rules of claim term scope are different for examiners and for the courts. The author did cite Yamamoto, but did not note that these rules are not conflicting as to the CAFC, which will interpret claim terms to the full scope permitted by the intrinsic record, but will attempt to preserve validity.

The author gives an interesting example:

Arguably, AAI may require choosing the narrower of
the two plausible definitions only when the definitions overlap. Rexnord, on the other hand, may require accepting both plausible definitions only when the definitions are nonoverlapping. To clarify, if the patent holder proffers a definition of a term that consists of a range from 1 to 10 and the adverse party proffers a
range from 1 to 5, AAI would require setting the scope of the patent to
a range from 1 to 5 as the two proffered definitions are overlapping. n60 On the other hand, if the patent holder proffers a definition of a term that consists of a range from 1 to 10 and the adverse party proffers a range from 20 to 30, Rexnord would require setting the scope of the patent to include both the range from 1 to 10 and the range from 20 to 30. n61 Under such an interpretive regime, AAI and Rexnord are not in conflict because they apply to two distinguishable sets of circumstances.

The author seems to think that the court is required to pick ONLY from the definitions advanced by the parties. This is not the case, as shown in the recent definition in the sugar/polysaccharide case.

The author suggests that Rexnord will promote strategic ambiguity: If the broad interpretive rule suggested by Rexnord is
unconditionally accepted, the patent drafter, with knowledge of a broad rule, is encouraged to leave critical terms vague to increase the likelihood that the patent examiner will unknowingly approve those terms.

Leaving critical terms vague is a death knell for patentee in any litigation.

We have some residue from Festo, 535 US 722:
Nonetheless, there are limits on patent drafters' ability to be
explicit Language is inherently ambiguous, n86 and therefore increasing the clarity of patent claims will be costly to the patent drafter as it increases the price of creating an effective patent. The patent system should be concerned with the cost of drafting adequate patents because the higher the cost is, the lower the incentive to invent will be.

Of the "doctrine of equivalents," the author suggests that this is a claim-scope enhancing doctrine:
the patent system might justifiably enlarge the scope of a patent in some instances. The patent system performs this scope
enlargement under the doctrine of equivalents.

On patent examiners:

First, it is important to note who the Patent Office employs as
patent examiners. The basic qualification for examiners in any field is simply a four-year science or engineering degree with either a grade point average over a 2.66 out of a possible 4.0 or membership in a recognized honor society. n70 Thus, most examiners will be young, recent graduates of colleges and universities [huh? how does this follow?], and not fully experienced professionals.


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