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December 02, 2008


I wrote my law school law review paper on this very topic http://ssrn.com/abstract=1309802 . It seems inevitable to me that the Federal Circuit will have to revisit Cybor Corp. at some point if the "uniformity and predictability" envisioned in Markman is to be achieved. As Judge Walker points out, most of the time the district court relies on the Federal Circuit's own "rules" for construing claims, but still ends up with the "wrong" result. To me, it seems that if the district court is relying on valid legal principles of claim consturction to construe a term, they should reach the "correct" result more than just half of the time. The Federal Circuit needs to reconcile its claim construction authority (which it purported to clarify in Phillips), because this uncertainty just ends up wasting a lot of time and money for all involved.

"Moreover, the claimed invention would not work using a rigid, non-elastomeric plug,"

Then the claim is not enabled.

Patent invalid. End of analysis.

This is how the law is supposed to work. Patentees play games with sleepy lazy examiners, then the patent goes up in flames. The problem lies with District Court judges like Walker who allow themselves to be spun by dust-kicking lawyers who mis-cite the case law.

Crissa writes: "The Federal Circuit needs to reconcile its claim construction authority (which it purported to clarify in Phillips), because this uncertainty just ends up wasting a lot of time and money for all involved."

Phillips is perfectly clear. District Court judges need to pay attention to Phillips and the CAFC and start sanctioning attorneys who look the other way while crucial limitations are improperly read into the claims. Then you'll see a lot less waste of "time and money" by litigators and prosecutors.

Dear Zender:

The problem is how you construe the term "plug." If it encompasses rigid plugs and these don't work, then you maybe right - look at the Monsanto case where the issues were transforming monocots and dicots in the context of a claim that recited "plants."

But the CAFC teaches that claims should be construed, generally, without regard to validity. So if the district court is doing its job, the question is how does the specification, prosecution history and "plain meaning" define the term. The district court says, everything in the application says "elastomeric," and the CAFC says there is no basis for incorporating this limitation from the specification. (I assume there were no "wherein the plug is an elastomeric plug" dependent claims so claim differentiation didn't come up.)

I don't think Phillips can be "perfectly clear," since unlike "bright line" standards like written description, claim construction depends on different intrinsic evidence for each patent. And even "ordinary and customary" meanings are not black and white; a simple term like "mouse" means different things depending on the technology in question.

I think Judge Walker (and most district court judges working on patent cases) have a legitimate position (and gripe) with the CAFC's Cybor "no deference" standard, and some (but not enough) judges on the court agree. And so far, I see no impetus for anything to change.

Thanks for the comment.

"The problem is how you construe the term "plug." If it encompasses rigid plugs"

But this is exactly the sort of wasteful metaphysical silliness that Phillips was intended to crush.

A plug is a plug. If plugs were only "elastomeric" then the patentee would not have had to use the term "elastomeric plugs." It could have just said "plug". That's not the planet we live on.

Alternatively, ICU could have DEFINED "plug" to mean "elastomeric plug." Of course, then it would not have been able to drag Medegen into court on the basis of its claims (which should never have been granted in the first place).

"so far, I see no impetus for anything to change."

That's because the PTO still issues garbage patents like this one.

In a just system, this patent will be declared invalid as non-enabled in short order. That's the price for playing hardball with a junky patent. If ICU knew what they were doing, they have a continuation on file with their invention properly claimed, or they are already offering Medegen a cheap license. Of course, the public still loses under that latter scenario.


Judge Walker's point is that the Medegen apparatus was not infringing IF the term "plug" as disclosed by ICU was, by necessity, an elastomeric plug. The patent examiner and the patent drafter probably never considered rigid plugs, since they were working in a world where the plug needed to be deformed to work.

The problem is ICU asserting this patent, when they knew or should have known Medegen's article didn't infringe. Perhaps Medegen should move to have the district court declare this an exceptional case.

I don't think Phillips can crush this kind of hair-splitting; I think Phillips was intended to stop district courts from looking at purportedly "neutral" sources of claim term definitions (dictionaries) and focus on what the patentee represented her invention to be. Which gets us to the right result here (eventually): an invalid patent because they did not claim properly. Happens all the time, mostly because people (examiners, applicants, attorneys) aren't perfect and don't have a crystal ball.

But I agree that the lawsuit is wasteful for everyone. It's a little like entropy - get any system with enough complexity, and this kind of thing can be expected. The penalty is severe, but unless we impose sanctions it will never be severe enough to eliminate these types of lawsuits.

Thanks for the comment

Plug is an article and can either be flexible or rigid depending upon the material it is made up of. Eventhough the patent discloses a flexible plug but anyone using a rigid plug made of the material which can undergo the process of making a plug to be used for the same application as claimed in the said patent should be infringing under doctorine of equivalence

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