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June 15, 2016


Welcome decision.

But if you look at the patent, the invention is all about dentistry. On a quick scan I could not see a single claim specifying that the material to be removed is the material of a human or animal tooth. Is the specified laser output equally suitable for other treatments e.g. in dermatology?

A major recurrent fault in parent drafting, in the ceaseless quest for spurious generality, is to leave out a claim specifying the technical field which the invention is all about. In this case the invention is all about dentistry but the claims say nothing abut tooth enamel. Very famously, the Windsurfing patent did not specify that the hull was a surfboard, and even when the patent was reissued in the US the patentees STILL did not include a claim to a surfboard hull.

Hey Joseph,

Not even close on the patent-eligibility issue. Glad this district court saw through the "smoke and mirrors" asserted by the defendant.

It's great to see another island of sanity among the judges handling this patent-eligibility mess, too bad it's not a whole continent.

Having made it over this hurdle, it will be interesting to see how the patentee proves the presence of the "wherein each pulse interacts with a thin layer portion of said material so as to form a plasma" limitation in the accused infringing process. But maybe that's easier to prove than I think.

Mr. Cole,

I am surprised to read your comment, knowing as I do that you are aware of the "patent profanity" created by the Supreme Court when it comes to "fields of technology." You act like adding such has any actual "merit," when the Court had made clear that such has no "merit."

Do not blame "scriveners" for the lessons they have learned from the Court.


No profanity would have been involved by the inclusion of a dependent claim 11:

The method of claim 1, wherein the material is tooth enamel.

Addition of such a claim would have had the benefit of causing the patent draftsman to think carefully what other materials needed to be covered. Nothing would have been lost by its inclusion. And by the time that full trial is reached, the patentees might have been very glad that this claim had been included, depending on what prior art in distant technical fields had come to light.

Mr. Cole,

I fear that you missed the point of my post: the Court has basically stated that such a "field of use" limitation is meaningless when they look at claims with their thumbs on the scale of eligibility (or, if you prefer, their fingers in the wax nose of 101).

If an enforcing court is not going to use such a "limitation" to save a claim, and thus the only purpose of such a limitation is to reduce the description of the invention, weighing the benefit/risk of including such a limitation simply points to the opposite direction of your conclusion above.

Further, the increased powers provided by the KSR decision to PHOSITA make your concern about sequestering a claim from "distant technical fields [coming] to light" a nullity: you are not going to be protected because of the added field of use limitation.

You may not like this (hence your labeling such as "a major recurrent fault," but your label merely reflects your opinion of a desired state that is NOT supported by the effects of court decisions (and hence my label of patent profanity).

To me, this is one of those things that reflect (not necessarily in a bad way) your tendency to be a bit overly optimistic about the restraint of courts to NOT be looking to limit the reach of patents.

As I have pointed out though on many occasions, such "optimism" is just not warranted. The Court is going to treat our efforts as somewhat baseless scrivining anyway and we really do have to play the game that they lay out - seeking to optimize our client's inventions.

And yes, that does mean things like removing phrases, which while you may feel may be "helpful," are in the final analysis** simply not that helpful.

**I will add a caveat here that the removal of the field of use limitation should not happen without thought or care, and that the use of dependent claims for a spectrum of coverage may "properly" address your concern. But to have your proffered suggestion in the independent claim is rather the opposite of the label that you would use.

@ Skeptical

Please note that my recommendation was for dependent claim 11, not claim 1. And the invention is disclosed for other surgical procedures. So a claim to biological material would also be good.

Field of use is a key parameter in European practice, and is very helpful to the prosecution attorney. But you have to build the right features into the description and claims to make it work (which we do without patent profanity).

Thank you for pointing that out Paul - so my caveat resonates with you.

But I still think that you miss the point of my posts. Adding the fact that your application supports the field of use is rather a non sequitur to what OUR Court has done (in a profane manner).

I do hope you realize that your comment about Europian practice does not matter one whit when we are discussing US practice (another non sequitur of yours).

These are the types of comments that reinforce my post above - your "optimism" seems flavored by these NON-US items and this makes your posts concerning US law come across as more than a bit naive (no disrespect intended - I do believe that your heart is in the right place).

@ Skeptical

Your last comment raises an important practical point.

Especially in pharmaceutical and biotech patent cases, the importance of the invention does not stop at the US border. Protection is likely to be required at the EPO, in China, India, Japan, Korea, Australia, New Zealand, South Africa and other countries.

In my experience, a patent specification once drafted is almost never rewritten for other countries and the US text is filed as a PCT application (perhaps with some updates from the original filing) and then nationalised in the various national or regional patent offices. UK and European practitioners are well used to drafting texts which will have a good chance of working well on a world-wide basis. With the US in mind we do our best to avoid patent profanity. With Europe in mind we define field of use, make sure we have some field-of-use claims and ensure that there is sufficient information in the specification that the relevant technical problem can be reconstructed before the EPO. With Japan in mind we make sure that the specification contains sufficient information to support the important dependent claims. We bear in mind the wisdom of following PCT Rule 5(1)(a) (remembering that the PCT was a treaty primarily inspired by the US:

"The description shall first state the title of the invention as appearing in the request and shall:
(i) specify the technical field to which the invention relates;
(ii) indicate the background art which, as far as known to the applicant, can be regarded as useful for the understanding, searching and examination of the invention, and, preferably, cite the documents reflecting such art;
(iii) disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state the advantageous effects, if any, of the invention with reference to the background art;
(iv) briefly describe the figures in the drawings, if any;
(v) set forth at least the best mode contemplated by the applicant for carrying out the invention claimed; this shall be done in terms of examples, where appropriate, and with reference to the drawings, if any....;
(vi) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used..."

These requirements are not only desirable under the PCT for International patent filings but matters which if we all observe (with due caution as to patent profanity in the US) will give us and our clients good results in the cases we file and prosecute. To European practitioners the rightful concern about patent profanity often leads to vague and difficult patent specifications and omission of important information and claims of foreseeable importance in prosecution and subsequent litigation. Avoidance of patent profanity should not lead to paranoid omission of important subject matter and claims.

Thank you Paul - your last paragraph hits the nail on the head with "rightful," but (once again) you lean too much on the "should not" when it is plainly clear - (as in the number of times that I can say "I told you so" with how 101 is being used) - not does lead to, but MUST lead to our serving our clients by "better" scrivining.

It is simply a fallacy to say that one can ignore the very real world effects of patent profanity. This is NOT to say that important subject matter and claims are necessarily omitted - it is to say that even such things as you discuss MAY NOT save you here in the States.

(also, not everyone is a "world filer" - and there are plenty of folks who only aim for US protection)

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