Arguing the meaning of a term of art

Takeaway: The cases in today's post revolve around the meaning of a term of art, where the Examiner is using a construction that is much broader than would be understood by a POSITA. To increase your odds of winning on the narrower meaning:

• Actually offer a narrower construction intead of simply saying "the reference has nothing to do with [claim term]."
• Offer evidence to support your construction. The best evidence is a dictionary or technical dictionary.
• Get your evidence into the record before the Appeal Brief.
• Check to see if statements in the spec undercut the narrower meaning; if so, you're less likely to win.

Ex parte Imaoka was an optics case in which the claim term at issue was "reflecting telephoto lens." In the Brief, the Appellant argued for a specific meaning of the term: "a telephoto lens that internally folds or turns the long optical path using reflective elements." In support of this meaning, the Appellant referred to figures in the specification and to a prior art reference. In the Answer, the Examiner stated that because the specification did not define the term, the proper meaning was a lens with a telephoto component and a reflectance component. Thus, the Examiner parsed the term of art into individual words. The Board adopted the Appellant's construction without any explanation.

In Ex parte Anonsen, the claim terms at issue were "hyperlink" and "hypermedia link." Neither the Appellant nor the Examiner offered an explicit claim construction. The Appellant's argument was simply that the relied-upon portions of the reference "have nothing to do with providing hypermedia links." The Board's characterized the Examiner's "apparent position" as "any kind of 'link' is a 'hypermedia link.'" Despite the lack of a clear issue, the Board had no trouble finding that "hypermedia link" and "hyperlink" are terms of art, and that the Examiner's interpretation was too broad:

A hypermedia link has two ends (anchors) and a direction which starts at the source node or object and points to the destination or target node or object. Anyone who has ever clicked on a hyperlink in a Web page to go to another Web page is familiar with the concept of a hypermedia link. The fact that there is some connection or link or path between the profile service instance and the external data store in Kumar does not in any way suggest that that path is specified by a "hypermedia link." While Kumar does contain the word "link," it does not describe the use of "hypermedia links" or "hyperlinks," which are terms of art.

The next case, Ex parte Marrigis, shows that you should have evidence of some sort, whether it's your own spec, a reference, or extrinsic evidence.

Appellant asserts that “the term ‘clock signal’ is a well known term of art, and . . . a ‘reference signal’ is not a clock signal, as a clock signal drives a circuit and a reference signal does not”. No factual evidence is submitted by Appellant to support this asserted difference in reference and clock signals, and, therefore, the assertion is an unsupported attorney argument and a conclusory statement that is deficient for rebutting a prima facie case of obviousness. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).

The final case, Ex parte Pangrle tells us that a) external evidence must be submitted before the Brief; and b) a dictionary is generally considered better evidence than technical articles.

The documents submitted belatedly by Pangrle are a fragment of a technical article and some technical abstracts. As such, they do not “endeavor to collect the accepted meanings of terms used in various fields of science and technology,” and they therefore lack the general authority which our reviewing court has recognized sets dictionaries, and especially technical dictionaries, “among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005).

Notably, the dispositve factor in Ex parte Pangrle was not the belated evidence — it was the Applicant's own spec. The Applicant argued that the claim terms "switching body" and "switching material" were terms of art: an element "capable of two or more resistant states.” Under this construction, neither term read on the prior art's capacitor. But the Board found that the specification "[did] not distinguish the switching body or the layer of switching material from the layer of insulating material."

Indeed, the 929 Specification teaches, “[a] layer of switching material 118 is deposited or grown on the conductive layer 116, . . . [t]his layer 118 is an insulator ... ; and “[a] layer of switching material 158 is deposited on the resulting structure, . . . [t]his layer 158 is an insulator, as described above”. Pangrle has not directed our attention to any disclosure in the 929 Specification that indicates that some further special property of the insulating layer is required. Indeed, the 929 Specification indicates that “any other suitable material” (Spec. 4, ll. 4-5) may be used as the insulating material that serves as the “switching body.”

My two cents: Some will object to arguing for a narrower meaning of a term of art, because you're giving up claim scope through prosecution disclaimer. True — but in such a scenario the accused infringer has a good case for the narrower meaning anyway. And although the BPAI performs claim construction, should you count on the Board to choose in your favor if you don't bring up the issue?

Examiner's interpretation of a claim term should not conflict with the reference

This is the third in a series of blog posts about arguing the meaning of claim terms. Previous posts are here and here.

Takeaway: The BPAI has limited the broadest reasonable interpretation doctrine by citing In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999), which holds that the broadest reasonable interpretation "should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art."

Here are a few BPAI decisions that use this doctrine to rein in the Examiner's unreasonably broad interpretation.

In Ex parte Hada, the claims on appeal were directed to an air dryer used in paper manufacturing. The limitation at issue was "heads," and the real issue was the meaning of this term.

The Examiner alleged that the "heads" were taught in the reference by structures numbered 26 and 28. The Applicant argued that the Examiner's reading was contradictory to the plain teachings of the reference. The Applicant noted that the reference used the claim term "head" to refer to a different structure (32), while the reference referred to structures 26 and 28 by the terms "inlet plenum" and "outlet duct," respectively.

The Examiner argued that "[t]he plain meaning, consistent with Appellants specification, of 'two opposing heads' include the ducts 26, 26' and ducts 28, 28' disclosed in [reference] because both form a head or inlet/outlet end duct region." The Examiner thus implicitly interpreted head as "duct located in an end region."

The Board analyzed as follows:

Kimberly-Clark’s Specification provides enlightenment as to the meaning of the term “heads”. According to the Specification, “heads” is used to describe the surfaces that close the ends of the through-air dryer roll [30]. FF 1. Sisson, the applied prior art, also utilizes the term “heads” to describe the closure of the sieve roll [21] at each end. FF 5. We find that Sisson’s heads are structurally similar to Kimberly-Clark’s described heads. FF 6. In light of the meaning given to “heads” by Sisson and its use in Kimberly-Clark’s Specification, one of ordinary skill in the art would understand the term “heads” to mean the closures at the ends of the roll.

The Board finished by stating that "the broadest reasonable interpretation should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art," citing to In re Cortright.

In Ex parte Madhav, the claims at issue were directed to coating metal surfaces. The real issue was the meaning of the term "metal alloy." One reference disclosed chemically combined forms of metals and the other disclosed a modified metal. The Examiner took the position that the claimed "metal alloy" read on both.

The Board made several findings of fact related to the Applicant's specification and the references:

7. The Specification does not explicitly define the terms “metal alloy” or “master alloy.”
8. The Examiner did not identify an explicit use of the term “alloy” by either Hayman or Ackerman in describing the coating materials utilized in their processes. (See generally, Ans.) Both Hayman and Ackerman do use the term “alloy” when describing the components to which the coating materials are applied.

The Board then relied on these findings to hold that: 

[t]he Examiner’s interpretation runs counter to the use of these terms in the references (see FF 2, 3, and 8 (using the term “alloy” to describe the substrate, but not the coating material)) as well as in the related prior art (see FF 9 (distinguishing “chemically combined” from “alloy” metals)).

The opinion's Conclusions of Law section quoted from, though did not cite to, the above referenced sentence in In re Cortright.

My two cents: I don't suggest using this sort of argument every time the reference uses a different term than a claim. After all, "the elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required." (In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990)).

Save this argument for those cases where you have evidence that the Examiner's interpretation is inconsistent with how a POSITA understands the term. This evidence can be in your spec, in the cited references, or even (as in Hada) in "related references."

Difference between written description and enablement

In a lot of file histories that I read, both practitioners and Examiners seem to confuse the written description and enablement requirement, conflating the two into a single requirement that "claim terms must have support in the spec."

Maybe there's good reason to be confused. The recent en banc decision by the Federal Circuit in Ariad v. Lilly affirmed that these two requirements are separate, but also suggested that the two requirements can be confusing. The majority recognized that in some fields "there is little difference between describing an invention and enabling one to make and use it" and that "written description and enablement often rise and fall together."

I read a recent blog post at Intellectual Property Directions which included this concise summary of the difference between written description and enablement, put in terms that anyone can understand:

In effect the [Ariad v. Lilly] court said that a pure enabling description was like a bare bones cookbook recipe in which the how to make is included but you are never told what you are making! Take flour, sugar, shortening, leavening, and water, mix them until smooth, and bake for 1 hour at 325 degrees in a greased cake pan. You can follow the steps but it’s up to you to guess what it is you are serving. Without a written description you almost have to try it to find out if it’s a cake or a giant cookie.
(from If it walks like a duck… you need a written description)

Thanks to blogger Bruce Horwitz for coming up with this explanation.

Monec v. Apple: maybe the iPhone's display isn't small after all

Looking back: Earlier I posted (here) about Apple's victory against holding company Monec. Apple won summary judgment of non-infringement in the Eastern District of Virginia before discovery even began. The claims require a display dimensioned to display a "normal size" book page, while the iPhone's display is only 2" x 3". Apple won primarily on arguments characterizing the claims to require a "relatively large display," and that no reasonable person could understand the iPhone display to be "relatively large."

Interesting Postscript: Monec didn't give up easily, and appears to be positioning itself for another run at Apple based on new evidence. Monec says Apple's own advertisements contradict Apple's earlier position that no reasonable person could understand the iPhone display to be relatively large. 

The parties settled the suit and filed a joint motion to vacate the district court's earlier judgment. In arguing for vacatur, Monec pointed to various pieces of new evidence. Monec introduced an Apple advertisement describing the iPhone screen as "large." Monec also offered new evidence — an Apple patent — that the phrase “relatively large” would be understood as comparing the display area to the device as a whole, rather than as an absolute dimension.

The court did vacate the judgment, which means that collateral estoppel will not apply, and Monec is free to relitigate against Apple.

It's obvious why Monec would want the judgment vacated: though no Markman hearing was held, Monec was on the losing end of whatever "claim construction" was present in the judgment. But how could vacatur benefit Apple?

According to the joint motion, vacatur would avoid the possibility of judicial estoppel in whatever future patent litigations that Apple might bring against parties infringing on its various touch-screen patents.

In litigating its touch-screen patents, Apple might want the freedom to argue that the i-product screens are large, or at least not small. Yet Apple urged, and the Monec v. Apple court ruled, that the i-product displays are "small," allowing a future Apple adversary to estop Apple from making  arguments about screen size that run counter to Apple's previous position. But the district court's vacatur of the Monec v. Apple judgment removes the possibility of this judicial estoppel issue, thus benefiting Apple.

Arguing the meaning of claim terms is difficult when the spec contains broadening language

Looking back: Last week I started a new series of arguing on appeal about the meaning of a claim term. The first post (here) highlighted a case where the Applicant won a narrower claim construction (and thus avoided the art) because the term of art used in the claim was not broadened by the spec. Today's case illustrates the dangers of using broadening statements in the spec.

Takeaway: Arguing for a narrower claim construction to distinguish over the art is difficult when the spec contains broadening language. Think very carefully about your claim terms when drafting the spec. Broad terms are great because they're more likely to ensnare infringers. But if you use nothing but broad terms, you may have trouble obtaining a patent to assert in the first place.

Ex parte Laxman
(Appeal 2008-281; Appl. No. 10/115,453; Tech. Center 2100)
Decided March 20, 2009

This application involved assigning addresses to network cards. As explained in the specification, each network card is originally assigned an address (a "MAC address") by the manufacturer. The claims in this application were directed to reprogramming the network card to use a MAC address assigned to the slot in which the card is located. Here is representative claim 1:

1. A system for assigning a Media Access Control (MAC) address to
a physical location in a network, comprising:
a slot having a physical location in a network;
a slot MAC address assigned to said slot, said slot for receiving a card having a card MAC address;
means for reprogramming the card MAC address with said slot MAC
address ... 

One issue on appeal was the meaning of "slot." The Examiner "broadly interpret[ed] the term slot to mean or be synonymous to 'hardware location' or 'physical location' of a network device in a network." The Applicant argued that the Examiner's claim construction was incorrect, but did not offer a particular construction. The Board characterized this as arguing for "some narrow but undefined meaning for 'slot'."

The Board looked to the specification to interpret the terms "card" and "slot."

Every hardware device or terminal (hereinafter referred to simply as a "card") connected to the network has its own unique address, commonly known as a Media Access Control address or "MAC" address. 
According to the invention, the MAC address is associated with a particular hardware location (e.g. slot) in the network rather than to the card itself. According to the invention, the MAC address is associated with a particular hardware location (e.g. slot) in the network rather than to the card itself. Thus, the card's MAC address assigned by the manufacturer is effectively ignored. Each slot is assigned its own MAC address. When a card is plugged into the slot for the first time it is initialized and reprogrammed with the MAC address of the slot.

Based on these passages, the Board made a Finding of Fact that a "card" was "a hardware device or terminal," and that a "slot" was "a device or terminal's physical interface at a particular hardware location in a network." Then the Board found that the reference did not use the terms "card" and "slot," but using this claim interpretation, the reference nonetheless taught the limitation at issue:

[The reference] shows components of a network device 100 .. whereby the communication address for each location is associated with the physical site location of the device, rather than the device MAC address.

My two cents: The Applicant attempted to expand claim coverage by using "slot" and "card" broadly in the spec. As a POSITA in this area of technology, I say that a slot really is a physical structure (not just a location), and a card is not exactly the same as a device. But the spec redefined "card" to mean "hardware device," and while the spec didn't actually redefine slot, it never explained how a "slot" differed from a "physical location." Without these statements, I believe the Applicant could have offered evidence as to what the terms at issue meant to a POSITA, and won the argument with that evidence.

Rather than writing the spec so that a term of art has broader coverage, maybe a better approach is to use a different word. Maybe use "card" and "slot" to describe one embodiment, and "device" and "physical location" to describe another embodiment. Even better, link the broad and narrow terms together so that [narrower] "card" is an example of [broader] "device."

Explaining infringement and validity in terms of AND OR

The blog On Technology Law has an interesting series of posts which explain patent infringement (here) and patent validity (here) in terms of clauses linked by AND OR operators. As a former software developer, I thought this was a really cool explanation.

Patent prosecution resources: blogs with argument boilerplate

Michael E. Kondoudis runs the Patentably Defined blog. Michael's posts offer a lot of advice on making arguments in prosecution, including quite a bit of argument boilerplate.

Found Persuasive is a relatively new blog run by the folks at Leonard, Patel, & Olsen, P.C. They describe their blog as "patent prosecution strategies and templates for the patent practitioner." Click on the "Prosecution Topics" link to find boilerplate arguments for a variety of rejections.

Arguing the meaning of claim terms: strict definition is not required

Takeaway: Consistent use of a claim term in the specification can help in arguing that the Examiner's interpretation of the term is unreasonable. Importantly, a strict definition of the term is not necessary. However, winning this argument is more likely when your specification doesn't also contain statements which attempt to broaden the term. Such statements often undermine your argument that the Examiner's broad interpretation is unreasonable.

The case Ex parte Bobba is a good illustration of the kinds of statements in the spec that help your argument "the Examiner's interpretation is too broad." This case also shows how an Applicant can use such statements in an argument.
 
Ex parte Bobba
(Appeal 2008-4179; Appl. No. 10/033,008; Tech. Center 2800)
Decided September 30, 2008

The technology in Bobba involved packaging for integrated circuits. Here is a representative claim on appeal:

1.  A bump and vias structure, comprising:
a metal layer;
a plurality of vias connecting the metal layer to another metal layer;
a bump mounted on the metal layer; and
a first slot formed in the metal layer between the vias and the bump.

The main issue on appeal was the meaning of the term "bump." The Applicant argued that "bumps are conductive deposits on a top metal layer of an integrated circuit (see bumps (44) in Figure 4a of the present application)." The Examiner used a dictionary definition of bump: "a relatively abrupt protuberance on a surface." 

Though not framed by the parties in this manner, it's clear from reading the file history that the claim construction issue is dispositive of the anticipation rejection. The Applicant argued, and the Examiner agreed, that the only slots disclosed in the reference were between sets of vias. Therefore, the reference only anticipated when the vias in the reference were read on the claim term "bump," which was only possible when bump was understood as "protuberance."

How did the parties arrive at their respective claim constructions? The Examiner, relying on MPEP 2101.01 "Plain Meaning," argued that since the Applicant did not provide a clear definition of "bump" in the specification, the plain meaning controlled. In the Reply Brief, the Applicant pointed out that Philips v. AWH Corp. clarifies the understanding of "plain meaning": "[T]he ordinary and customary meaning of a claim term is the meaning that the claim term would have to a person of ordinary skill in the art in question at the time of the invention." The Examiner's dictionary definition ignored what "bump" means to a POSITA. The Applicant reiterated that a POSITA would understand "bump" as a "conductive deposit on a top layer of an integrated circuit," pointing to portions of the specification that used this description of "bump."

The Board found that "the specification provides ample guidance and context for interpreting the term bump," pointing to various paragraphs in the specification and essentially adopting the Appellant's construction. Furthermore, the Board found the Examiner's construction was inconsistent with the specification, because it read "bump" on a structure described in the reference as a "via":

Moreover, the specification only uses the terms, "vias" and "bumps," in a mutually distinctive context. Contrary to the Examiner's position, the specification contains absolutely no indication that the term "bump" was intended to extend beyond its conventionally accepted meaning in the art so as to further include internal via structures.

The Board concluded with this useful analysis:

To summarize, intrinsic evidence of a claim term's plain meaning is generally to be given greater weight than extrinsic evidence of a dictionary definition. Appellants have provided a reasonable rationale of why their asserted interpretation is consistent with the plain meaning of "bump" as understood by one of ordinary skill in the art of semiconductor device packaging. The Examiner has not provided any evidence that the broader dictionary definition was one of the accepted usages for the term "bump' as it was used in the semiconductor packaging arts. Therefore, we are persuaded that the Examiner's interpretation of "bump" is overly broad and not reasonable. As such, we cannot sustain the anticipation rejection of claims 1-14.

My two cents: I've seen some cases where the Applicant offers evidence of the meaning of a claim term. Such evidence may come in the form of a dictionary definition (which might be a technical dictionary) or a declaration from a POSITA. The Applicant won here even without such evidence, because the spec itself provided guidance as to (though not a strict definition of) the meaning. I don't think you can expect to win without evidence if your spec contains no guidance at all on the meaning.

But in the end, I think the Applicant won here because the spec didn't contain any statements which undermined the argument. If you've got a spec contains a broadening statements ("widget is not limited to this usage, but should also be interpreted to include foobars and wikis"), then you'll probably have a much harder time arguing that the Examiner's interpretation is too broad.

Arguing the meaning of claim terms

In a recent post (here), I mentioned that I attended the PTO-sponsored BPAI conference in DC last week. At the conference, a panel of judges said that many appeals are really about claim construction. I never really thought about it this way, but now I'm reading Board decisions in a new light, and I can see that the judges are right.

My next post will start a series of posts about arguing about the meaning claim terms. In these posts, I'll discuss some winning arguments, some some losing arguments, and some missed opportunities to make the argument. I'll also discuss how what's in the specification affects your ability to make these arguments.

"Encrypted version" allows transformations other than encryption (Ex parte Hughes)

Takeaway: The BPAI held that "an encrypted version of the digital content" does not mean that encryption is the only difference between the content and the encrypted content. Thus, an encrypted G-rated version of a particular movie is an encrypted version of the R-rated version of the same movie.

Ex parte Hughes
Appeal 2008-003550; Appl. No. 10/853,464; Tech. Center 3600
Decided: September 28, 2009

This application was directed to distribution of digital content. Here is a representative claim:

38. A method for making a storage medium for the distribution of digital content, comprising:
storing, on a storage medium, digital content data adapted to be unreadable on a computer
system;
storing, on the storage medium, an encrypted version of the digital content data that is
readable on the computer system.

The reference described assembling a movie by selecting either the G-rated portions, R-rated portions, or X-rated portions of the movie, and then encrypting the selected portions. The Appellant argued that the encrypted R-rated movie was not an encrypted version of the G-rated movie. "Since one movie version contains parts (R-rated) that the other movie version does not, the two movie versions are different — not identical — and cannot be considered the same movie when perceived by a viewer (even though the titles may be the same)."

The Board chastisted the Appellant for arguing outside the claims.

     However, the claim does not require that the only difference between the readable version and the unreadable digital content data is that it is encrypted. The Specification does not contain an express definition of “version” (FF 2) and we find that version is defined as “a form or variant of a type or original” (FF 3). We find nothing in claim 1 that requires the only variation of encrypted version of the digital content data to be the encryption.
     We find that Schneck’s example of R-rated version and G-rated version of portions of a movie read on the claimed digital content data and encrypted version of the digital content data, respectively. Both are described as versions of the same portion of a movie (i.e. digital content data).
(Decision, pp. 8-9, emphasis added.)

My two cents: I give the Board points for a clever rationale. My first reaction to this reasoning was: but if you transform the movie by selecting only G-rated portions, it's no longer "an encrypted version of the digital content," it's now "a transformed encrypted version of the digital content", and thus the claim is distinguishable from the reference.
 
But I changed my mind. I think the Board is right, at least for this particular claim language.

To use an analogy involving successive transformations, my original thinking was that a blue+red car is no longer a blue car, but has been transformed into purple car. But if the rating transformation is independent of the encryption transformation, maybe the better analogy is fast+red, not blue+red. A fast+red car is still a red car, so the Board's view makes sense. I think the right outcome depends on whether or not the transformations are independent.

Due diligence in swear-behind declarations (Part III)

My previous posts (Part I and Part II) on § 1.131 (swear-behind) practice explained that the BPAI expects a swear-behind declaration to contain facts and supporting exhibits, not conclusory statements, to properly shows reduction to practice. The cases discussed in this post show that the same is true for a showing of due diligence.

Ex parte Kirkwood:

The declaration relies on events which were documented in an Invention Disclosure. See Oct. 20, 1995 Declaration, paragraphs 4 & 5. However, the Invention Disclosure itself is not provided as an exhibit. The declarants state that one of the inventors discussed the “invention” with scientists on or about February 10, 1987. Declarants further allege that the inventors worked “as time and budget allowed throughout February and early March” until completion of the experiments described in Exhibit 1 of their previous declaration. Id. at paragraph 6. These statements alone do not establish due diligence from a time prior to March 2, 1987 until the alleged actual reduction to practice on March 6, 1987. Appellants must state with particularity and provide evidence of the sequence of events which occurred from a specified time prior to March 2 until the actual reduction to practice on March 6. See generally, In re Nelson, 420 F.2d 1079, 164 USPQ 458 (CCPA 1970).

So Kirkwood's declaration failed because it characterized the inventor's activities ("inventors worked 'as time an budget allowed'") rather than stating specifically what activities occurred and when. And, of course, supporting evidence should have been attached to the declaration.

The BPAI made similar remarks in Ex parte Igelmund:

The Folise and Igelmund declarations provide absolutely no explanation of the appellant's activities with regard to the invention set forth in claims 1, 2 and 15 to support the appellant's assertion of diligence. In particular, the statement in paragraph 4 of the Igelmund declaration that the declarant “worked diligently with Mr. Folise's office in preparing a patent application on the invention” is merely conclusory in nature and fails to indicate (1) the actions that were taken by the declarant toward either reducing the invention to practice in the form of a prototype or preparing a patent application and (2) the dates on which those actions were taken.

These cases show that stating the legal conclusion of "diligence" is not enough. Nor is it sufficient to state in the declaration that the time period was "reasonable."

While we agree with counsel's statement that, in many circumstances, “[i]t is not unreasonable to expect the preparation of a patent application to take the interval from December 2, 1994 until March 6, 1995” (Br18), since the delay is over three months, a declaration of counsel would normally be expected setting forth dates establishing progress towards filing. 
(Ex parte Peppel.)

Here, Appellants' declarations and Brief fail to explain diligence in any way, merely asserting that the time periods in question are “reasonable” (supra). Without some explanation as to what the declaration does or does not show, Appellants do not persuade us that the declaration demonstrates diligence over the period from December 20, 2001 through June 25, 2002.
(Ex parte Flynn.)

Periods of inactivity in the critical time period are not fatal. The Applicant may instead provide a "valid excuse" for the gap. As explained by the Board in Ex parte Peppel, "the record has to show the required diligence or valid excuses for a lapse. (See Griffith v. Kanamaru, 816 F.2d 624, 625-26, 2 USPQ2d 1361, 1362 (Fed. Cir. 1987) which explores diligence in reduction to practice in the context of certain allowable excuses, such as vacations.)"

While gaps are not fatal, they do weigh against diligence:

While Appellants need only show reasonable diligence, and do not have to show work toward a constructive reduction to practice 24 hours a day, 7 days a week, time not accounted for during the period for diligence weighs against a successful showing of diligence.
(Ex parte Flynn.)

Finally, there is no per se rule for how big of a gap in activity is permissible. A few BPAI cases do say "a 2-day period lacking diligent activity has been held to be fatal," citing as authority In re Mulder, 716 F.2d 1542 (Fed. Cir. 1983). But I find that characterization of Mulder to be misleading.

In Mulder, the date of conception was only two days before the effective date of the reference. The Applicant argued that since the time period was so short, the diligence threshold should be reduced. The Federal Circuit disagreed, holding that “[L]iberality cannot be extended to the point of eliminating all proof of diligence, no matter how short the period to be covered.” In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983). I think this quote is a better summary of the holding of Mulder, rather than "a 2-day period lacking diligent activity has been held to be fatal."

BPAI provides guidance on effective appeal briefs

Last week I attended the first annual BPAI conference, a one-day event hosted in Arlington by the PTO. The conference featured presentations by Michael Fleming, Chief Judge at the BPAI, and David Kappos, Director of the PTO. The conference also featured several panel discussions with various BPAI judges (ALJs) and another panel discussion with Chief Judge Michel and Judge Rader of the Federal Circuit. You can get a copy of the agenda here and all the presentation materials here.

Since I am a self-avowed patent geek who appeals a lot of cases, I found all the discussions to be interesting. But the one that will impact my practice the most was the panel discussion on effective brief writing.

In fact, I feel strongly that every patent practitioner could benefit from reading the BPAI's paper on effective brief writing (available here). Even if you never appeal, wouldn't you like to make persuasive arguments in front of the Examiner? And even if some Examiners don't properly consider arguments, wouldn't you like to persuade those that do?

Here are the most important tips I learned from the BPAI's discussion of effective brief writing:

• Group your claims effectively. If you argue claims as a group, make sure all claims in the group actually share the feature you're arguing. Also, don't bother "arguing separately" if you're actually going to repeat the same argument about the same limitation.
• Don't make conclusory arguments. For example, if you argue "the reference doesn't teach X," then explain why.
• Use the proper legal standard. For example, "non-analogous art" is a two-pronged test, but some Appellants address only one prong. 
• Don't make arguments that are irrelevant to the issues in the case. [Comment by KGH: the Board didn't expound on this one, but I immediately thought of teaching away in the context of anticipation, which is one of my pet peeves.]
• Don't cite to the MPEP. Cite to statute and/or case law instead.
• Don't bring up petitionable issues (e.g., finality of an Office Action, new arguments in Examiner's Answer), because they're not something that the Board has the authority to decide.
• Acknowledge issues of claim construction. If your argument is really about claim construction, make that clear, and either advocate a claim construction or at least explain why the Examiner's construction is unreasonably broad. In many cases, the Appellant fails to address claim construction, and simply argues "Reference's X is not claimed Y", without considering that a broad interpretation of the claim element Y really does read on X in the reference.

Apple wins non-infringement before claim construction

Takeaway: If the visible features of your accused infringing device are far enough outside a claim on its face, can you file a motion for non-infringement before claim construction? It worked for Apple, who successfully argued that "[a]ny claim construction that [patentee] might advance to attempt to cover the iPhone would render [the size limitation] both meaningless and indefinite."

Details: Back in March 2009, the Swiss holding company Monec filed a lawsuit against Apple in the Eastern District of Virginia, alleging that the iPhone infringes Monec patent U.S. 6,335,678.

Early in the case — not just before claim construction, but before any discovery other than mandated initial disclosures  — Apple filed a motion for summary judgment of non-infringement. Apple's motion first stated that these two facts are undisputed:

• The claims recite a “display [with] dimensions such that one page of a book can be displayed at a normal size”.
• The display in the Apple iPhone is 2" x3".

Apple then contended that no claim construction was necessary because "[a]ny claim construction that Monec might advance to attempt to cover the iPhone would render [the size limitation] both meaningless and indefinite."

Monec opposed Apple's motion with an affidavit from an expert, asserting that books are printed in many of different sizes, and that there is no normal size for a book page.

Apple's unconventional strategy worked: the court granted summary judgment for Apple.

Monec immediately appealed to the Federal circuit on a number of grounds. Monec's statement of issues to be raised on appeal included whether the court improperly decided a disputed question of material fact, by ignoring Monec's uncontroverted expert affidavit. Another issue for appeal was whether the district court held what amounted to an impromptu Markman hearing during oral arguments on Apple's motion, thus denying Monec notice and opportunity to conduct discovery.

Thanks to the Federal Circuit's mediation process, a settlement was reached before oral arguments before the Federal Circuit were scheduled.

If you're interested in the case, you can find a number of posts about it in the Monec v. Apple section of the Williams Mullen Rocket Docket IP Litigation blog.

Case law you can use: claim terms are interpreted in the context of the claim as a whole

Takeaway: The next time the Examiner picks your claim terms apart one by one rather than considering how the limitations are linked together by the claim language, consider citing these two cases used by the BPAI in such a situation:

Claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) ("proper claim construction ... demands interpretation of the entire claim in context, not a single element in isolation."); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) ("While certain terms may be at the center of the claim construction debate, the context of the surrounding words of the claim also must be considered....").

Details: Here are quotes from various BPAI decisions where the Board has applied Hockerson-Halberstadt and/or ACTV, Inc. to require the Examiner to consider the context of the claim as a whole.

Ex parte Abajian:

   We conclude that the Examiner’s overly broad interpretation is unreasonable because it ignores specific positively-recited claim limitations. We note that the disputed step of “enhancing” is expressly defined by the claim language itself to require “adding at least a portion of the contents of the metadata record to the extracted metadata.” We conclude that a broad but reasonable interpretation of the claimed “enhancing” step involves more than merely adding two nondescript metadata elements together.
   The Examiner appears to be focusing on the “enhancing” element in isolation and is ignoring the context of the claim as a whole. However, claim terms are not to be interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc.; ACTV, Inc. v. Walt Disney Co.
(internal citations omitted.)

Ex parte Moore:

   The Examiner found that “[w]hether the delta is between available media stream output times among a plurality of devices or a single device is  not clear form [sic] the claim as recited.” We disagree with the Examiner.
   Based upon our review of the record, we conclude that the Examiner’s broad construction is inconsistent with the usage of the claim term “delta” as that term is recited throughout the claim. We note that claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc.; ACTV, Inc. v. Walt Disney Co. ...
   [C]laim 1 specifically recites supra that the “delta between available media stream output times” is received from each output device. Thus, we find that because the claimed “delta” is received from each output device, the delta must necessarily represent the delta between available output times in a single device. ...
    [A]t most, Shaw discloses a delta between an output time and a master clock. Thus, we find that Shaw fails to disclose receiving from each output device a delta between available output times.
(internal citations omitted.)

Ex parte Saxena:

   In the Answer, the Examiner explains that “the transform criteria [in Periyannan] is whether the requested object is cacheable or non-cacheable based on the URL and header information of the request.”... However, if we adopt the Examiner’s aforementioned reading of “transform criteria” (as applied to Periyannan), we find the Examiner’s construction to be inconsistent with the usage of “transform” as that term is applied in the remainder of the claim. Claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc.; ACTV, Inc. v. Walt Disney Co. ...
   Therefore, we find that Periyannan’s URLs are not compared with transform criteria where (to be consistent with the remainder of the claim) the transform criteria identifies a specific transform that defines an action to perform on the first uniform resource identifier portion where a second request is generated based on the specific transform.
(internal citations omitted.)

Ex parte Templer:

   We agree with the Examiner that an ordinary and customary meaning of the term “code” is “a system of signals used in communication.” ... However, in claim 1, we note that the term “operator” modifies the term “code.” ... [W]e find that an “operator code” is narrower in that it implies a code that corresponds to an operator. Similarly, in claim 12, because the code associated with the operator is received from the operator, a person of ordinary skill in the art would infer that the code corresponds to the operator. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (the claims themselves provide substantial guidance as to the meaning of particular claim terms); see also ACTV, Inc. v. Walt Disney Co. ... As such, we find that a code associated with the device and the operator, as generally required by claims 1 and 12, implies a code that corresponds to the operator.
(internal citations omitted.)

Ex parte Bergert:

   The Examiner asserts that Henneuse discloses the number of openings because by inviting people, the event inherently has one or more openings. The Examiner may be correct if the claim merely recited at least one opening. However, the claims recite that the reservation information includes the number of openings, which requires an actual number, especially in view of the later recitations in the claims that the number of individuals is greater than the number of available openings. See ACTV, Inc., 346 F.3d at 1088. This interpretation is confirmed by the Specification, where the number of openings is used in the context of a limited number of slots in a golf reservation. See Vitronics Corp., 90 F.3d at 1582.  Henneuse does not disclose that an actual number of openings is provided on the reply page.
(internal citations omitted.)

Arguments guaranteed to lose: "unexpected results" in an anticipation rejection

If you make an unexpected results argument in an appeal brief in the context of anticipation, the BPAI will probably point out that you've wasted your time. A prima facie case of anticipation under 35 U.S.C. § 102 is not overcome by a showing of unexpected results. In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974). However, as a strategic matter, if you're not to the appeal stage yet, you may still want to make this argument before the Examiner, if you suspect that the § 102 might become a § 103. Then you might choose to argue unexpected results, or any number of other 103-specific issues, as a preemptive strike. 

Here are a few quotes from the BPAI on how unexpected results is irrelevant to anticipation.

Appellants contend that they have “surprisingly discovered” that using the claimed amount of flake superabsorbents yields “an improved rate of intake and capacity for complex fluids.” (App. Br. 5-6). We understand Appellants’ contention of surprising discovery to be analogous to a contention that the claimed invention yields unexpected results. Appellants’ contention however is unpersuasive, because evidence of unexpected results is irrelevant to 35 U.S.C. § 102 rejections and thus cannot overcome a finding of anticipation. In re Malagari, 499 F.2d at 1302.
(Ex parte Roman-Hess, pp. 9-10.)

Finally, the Appellants argue that the films of the Appellants’ invention unexpectedly have “improved printability (via corona treatment), while still maintaining heat seal temperatures below 105ºC, as recited in the pending claims.” App. Br. 5. An appellant, however, cannot overcome a rejection under 35 U.S.C. § 102 by showing unexpected results. In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974).
(Ex parte Miller, p. 11.)

Appellant attempts to rebut the Examiner’s rejections based on inherency under §§ 102/103 by arguing unexpected results (Br. 18). Appellant lists a variety of “unexpected results and/or benefits” of the claimed product, such as producing thinner electrolyte membranes (Br. 18). However, a rejection based on anticipation (i.e., § 102) cannot be overcome by showing unexpected results. In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974). Rather, to overcome a rejection based on inherency the Appellant must show that the prior art product does not necessarily or inherently possess the characteristics of the claimed product (i.e., the claimed product is different than the prior art product). In re Best, 562 F.2d 1252, 1255 (CCPA 1977). See also, In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980).
(Ex parte Menashi, p. 9.)