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August 08, 2016

Comments

Hey Kevin,

This case illustrates why a definition section in a patent application for claim terms is a must. Indeed, if a panel that comprises O'Malley, Newman, and Moore says the claim terms are indefinite, they must be.

Dear EG: in this case I think the patentee's draftsmen were just sloppy - even if they had defined the terms there was no basis in the spec for the claim limitation regarding the relationship between them.

Thanks for the comment

Kevin, your efforts in providing thorough analysis of non-chemical cases like this of importance to newly-more-important general legal issues like this - indefiniteness under 35 U.S.C. § 112(b)- is appreciated.

I read (elsewhere) that the in band out band terminology first appeared in a prosecution amendment at the PTO. Should not a WD objection have been raised? Would it more likely be raised today?

In FtF country, prosecution amendments to introduce new terminology are more strictly policed, and more problematic. For readers outside the USA, it has always seemed amazingly lax of the USPTO to admit such amendments.

Hey Kevin,

Perhaps so, but note that the alleged infringer argued that the terms "in-band" and "out-band" were undefined in the specification, and therefore ambiguous as to their meaning, a position the Federal Circuit panel didn't disagree with.

Turtles all the way down, EG, with any "definitions section," which - quite naturally - will need to use words in that definition section.

Words, which will then next be called out as needing their own definitions.

That's just another rabbit hole to fall into.

Hey Skeptical,

With all due respect, I disagree. Put it this way: do you want to be the lexicographer for those claim terms, or do you want to let your adversary be it?

You should define those terms that need definition or require boundaries. For everything else, you're just putting up fences that you might regret later. It's part of the art of patent drafting.

In the case at hand, the specification does give *examples* of in-band and out-of-band interactions, but it doesn't *define* the terms. What really torpedoes the claims is the statement that "Of course, out-of-band interaction can also be performed in-band." You have to throw up your hands at that point.

EG,

You missed the point.

Sure, go ahead and be the lexicographer for those claim terms.

All that you have done is now moved the argument to the terms YOU used in your definition section - and it is the EXACT same battle all over again.

The comments to this entry are closed.

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