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« Pfizer, Inc. v. Lee (Fed. Cir. 2016) | Main | Sandoz Petitions for Certiorari over 180-day Notice Provision in BPCIA »

February 16, 2016

Comments

Troubling, perhaps, for litigators; but reassuring for those of us who prosecute applications. There are too many examples of practitioners being forced to insert meaningless descriptive terms into a claim to satisfy a stubborn examiner.

16 years of litigation, with more to come, involving a feature not central to the function of the device and likely never used by upwards of 95% of the buyers of the device, and a low-manufacturing margin device at that, but nonetheless potentially hugely damaging to the manufacturer because awarded damages may have no relation to the contribution to profits of the accused functionality.

What words can describe this situation?

This seems correct. Because courts and examiners use different claim construction standards, it's obvious that making amendments to overcome "broadest reasonable construction" would not necessarily narrow claim scope compared to a construction by an "ordinary and customary meaning" by a person of skill in the art. As Sean noted, Examiners regularly force prosecutors to add in "meaningless descriptive terms" (i.e., terms that one of skill in the art would have already understood the claims to mean).

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