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« In re Queen's University at Kingston (Fed. Cir. 2016) | Main | FCBA Webcast on Federal Circuit Practice in 2020 »

March 17, 2016


Hi Joe:

You wrote "...it is troubling to see conflicting claim constructions used by the PTAB and District Court."


Right or wrong, at present, isn't it proper that the PTAB and the District Court would arrive at different claim constructions due to the differing standards (i.e., the PTAB using BRI and the District Court using P&OM)?

Perhaps I am mistaken. I'd love your thoughts. Thanks!

From my European standpoint I find it very hard to get excited about the level of invention in the subject matter of claim 1.

Although an International application was filed, it was not brought into effect at the EPO, which appears to have been a wise decision. As a rough working rule of thumb, I suggest, cases which cannot be successfully prosecuted through the EPO should not be litigated in the US. Much anguish in the Alice case could have been avoided if this rule of thumb had been followed.

For all the Cuozzo [and amicus support] allegations of a big difference between BRI and Phillips claim construction which would make a big difference in IPR outcomes,* they have yet to provide support for that argument from actual cases that contain more than dicta irrelevant to the final result, as here. [Also, a mere D.C. claim construction, as here, is not even binding on another D.C.]

*That is unfortunate wistful thinking, because the real difference is from the claims vs. the prior art being compared by three patent attorney APJs rather than a lay jury.

The difference in construction suggest to me that the term is indefinite.

I don't even know which art one has to be skilled into to know exactly what an "insurance claim' may be; the computer arts? The insurance arts? A claim may be a final agreement between an insurer and an insured to cover an indemnity, or it may be an assertion by an insured, or an assertion by a non-insured third party, or a hypothetical construct used to negotiate the possibility of an indemnity being paid...but the real point is that in a common sense world, how does an insurance claim relate to the patent system in the first place?

Mr. Snyder, is your question one of utility? Are you sliding into a view of "technology" when you should be aware that the U.S. patent system is not one of "technological arts" but rather one of the broader "Useful Arts"....? If you are going to call upon "common sense," it would be helpful to recognize the critical difference between "technological arts" and "Useful Arts" in order to properly inform that sense. I am aware that you have been teaching yourself with articles that have not made that distinction a part of the "common understanding" and I would urge caution there.

Mr. Cole, along this line of thought I would reject your call for applying EP law to a US law question as you have glossed over the differences in sovereign law without (apparently) a second thought as to those differences even existing.

The truth of the matter is that we do NOT have a "one world order" and that patent law REMAINS at its heart (even with treaties and such seeking to make a more aligned processing of patent law) a Sovereign-specific and inward looking law. I would also reject the unstated assumption that harmonization FOR ITS OWN SAKE is always something good and desirable. It is not xenophobic or overly nationalistic to be more concerned with a national view of building innovation strength within the US, as opposed to making it "easier" for non-US (and truthfully non-ANY country) transnational corporations to be able to have a "world" patent.

Separately, and to all readers, the notion that what is topically called the "Fourth Branch of the U.S. government" (the administrative agency branch) collecting unto itself the unbridled and unchecked powers from each of the three traditional branches (for which the United States government was explicitly built to have cross branch checks and balances) yields one of the WORST FEARS of consolidated power that our Founding Fathers had.

A PTAB that decides for itself what the law means (interpretations) in essence adopts the worst of the judicial branch tendency to use "common law" law writing in an area explicitly off-limits to that type of law writing (the judicial branch violating the legislative branch powers).

Follow along the admittedly complicated path here: so we have an executive branch agency, with a pseudo-judicial branch power, directly under the control of an executive with the worst record ever on transparency and whom it is (properly) delegated pursuit of policy objectives unchecked by any other branch basically "making things up as they want to see things."

From a power-checking and balance point of view, does anyone else see the issue here (within the US sovereign)?

This crossed my desk this morning (regarding executive office non-transparency):


While not directly geared to patents and patent law, it is emblematic of the disregard for "transparency in particular - ironically a plank of the Obama election campaign - and more generally, the disregard for the rule of law (if we want a direct example, one can easily turn to the Ron Katznelson "Tr011-busting" IQA request, fast approaching its YEAR anniversary).

In a times where SAWS evaporates under just a tiny bit of public sunshine (but not before the Office reveals that SAWS was but one of many such programs), and in a time where the Director is having closed door, minute-LESS meetings with major "donors" and others attempting to affect both policy and enforcement of existing law, this growing list of aggrandized power moves and disregard for any other branch of the government (or of the citizens) SHOULD BE alarming.

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