Monday, October 18, 2010

BPAI says Applicant who argues "own lexicographer" waives ordinary meaning

Takeaway: In the ex parte reexamination Ex parte Three-Dimensional Media Group, an Applicant referred to the "own lexicographer" rule in arguing for a narrower meaning of the claim term "3-D image." The Board found that the specification did not clearly establish a definition contrary to the plain meaning, so the Applicant lost the claim construction argument. Furthermore, the Board found that the Applicant waived argument on plain and ordinary meaning by invoking the "own lexicographer" rule.

Two takeaways here, one for the drafting stage and one for the prosecution stage. First, if you really want to be your own lexicographer, you gotta be thinking about that when you draft the spec, so you can make sure that you do in fact provide a special definition. Second, when you get to prosecution, before you trot out own lexicographer," check to make sure that your spec really does have a clear definition that's contrary to ordinary meaning. If you don't, you're unlikely to win the "own lexicographer" argument, so consider instead arguing that a reasonable interpretation must be consistent with the specification.

Details:
Ex parte Three-Dimensional Media Group
Appeal 2009004087, Reexam. Control No. 90/007,578, Tech. Center 3900
Decided July 30, 2010

The disputed claim term on appeal was "3-D image." The Examiner took the position that the term covered images which used shading, texturing, and perspective projection to give the impression of depth. The Applicant argued that the term covered only stereoscopic images, and excluded images which gave only the appearance of depth.

In arguing for a narrower meaning, the Applicant said that “an applicant may be his own lexicographer.” The Applicant filed declaration evidence in which the expert declarants referred to specific passages in the patent. The declarants opined that the patent clearly refers to stereoscopically created images:

As used in the ‘294 patent, it is unambiguous to anyone skilled in the art that the terms “3D” and “three-dimensional” refer to the stereographic imagery, where a different view is presented to each eye of the viewer. It is clear that, as used in the ‘294 patent, the terms do not refer to the use of shading, texturing, perspective projection, or other techniques employed to give the impression of depth (but no true stereoscopic depth effect) in a two-dimensional image when that single image is viewed by both eyes.

The Examiner responded in the Answer that the specification did not provide a special definition of "3-D image" so as to limit the meaning. The Examiner cited to MPEP § 2111.01: “[w]hen a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description.” (quoting from Merck & Co., Inc. v. Teva Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005))

The Board found that the "entire specification of the ‘294 patent does not support Appellant’s argument (or the experts’ opinions) that 3-D always means stereographic." The Board then spent eight pages analyzing the specification and the declarations to explain its conclusion. For example:
  • "The ‘294 patent does not consistently interchange '3-D' with 'stereoscopic 3-D.' "
  • "Neither of the experts opines that the term 3-D always means stereoscopic 3-D in the ‘294 patent."
  • "These arguments demonstrate, at most, that the ‘294 patent discloses a preferred embodiment wherein some frames in a video are converted by stereoscopy."
  • "The ‘294 patent nonetheless specifically disavows any 'limiting' effect based on the 'illustrative' 'description' [in the specification, which reads:] 'It is intended that all matter contained in the above description or shown in the accompanying figures shall be interpreted as illustrative and not in a limiting sense.' "
Finally, the Board explained that the Applicant's invocation of the "own lexicographer" rule implied that the Applicant did not dispute plain and ordinary meaning and had waived such an argument.
By failing to clearly argue that the plain meaning of 3-D (or three-dimensional, or three-dimensional image) is in dispute in the opening Brief, Appellant has waived that potential argument.

My two cents: I find that the "own lexicographer" rule is one of the most misunderstood doctrines in patent pros. It seems to me this Applicant didn't understand it either. Most of the arguments under the heading "Applicant May Be His Own Lexicographer" relate to interpreting terms in light of the spec.

However, the "own lexicographer" doctrine is really about redefining a term in the spec:

When a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description.” Merck & Co., Inc. v. Teva Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005).
I've read a lot of specs, and most don't redefine a term or provide a special definition. So what you probably want is the "broadest reasonable construction" doctrine, which is about being consistent with the spec:
“During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). 
The Board said that if you don't clearly argue ordinary meaning consistent with the spec on appeal, then you've waived your right to do so. Without more, you could read this as allowing for arguing both approaches in the alternative. But the way I read the opinion, the Board went further to say special meaning forecloses ordinary meaning.
In the Reply Brief, Appellant on the one hand maintains the “right to be his own lexicographer” but on the other hand, says that “Appellant is not attempting to read the limitation of stereoscopic into his claim from the specification” because the term “‘stereoscopic’ is not found in the disclosure” and “3-D” always refers to imagery where different images are presented to each eye of the viewer.” (Reply Br. 13.) This argument is confounding since a lexicographer typically seeks to establish a contrary meaning by reliance on the specification.
Finally, if you do decide to invoke the "own lexicographer" rule and argue special meaning, I strongly suggest you read this opinion to see one example of an Appellant that put in a lot of effort to do so – and still lost.

Postscript: The patentee has appealed to the Federal Circuit. I haven't seen the briefs – the Federal Circuit hasn't joined the new millenium yet by making briefs available on PACER – but I'd be surprised if they get the decision reversed.The Board's reasoning looks sound to me.

Related Posts: Bruce Horwitz of the Intellectual Property Directions blog offers his insight on this case here. Though my original version of this post mentioned only the lesson for patent prosecutors, it was Bruce who first pointed out the case also offers a great lesson in patent drafting. I updated my Takeaway to include this second point in response to Bruce's insight.

10 comments:

  1. Karen,

    Great post. I agree with you about how applicants usually don't apply the "special meaning" doctrine correctly.

    I think the Board is being unduly harsh by saying that the applicant waived the ordinary meaning construction. If the case gets reversed by the CAFC, I hope and would expect that it would be on that ground.

    The claim term must have *some construction* - the fact that the Applicant argued for the wrong one doesn't mean that the Board can't and shouldn't apply the correct construction. It's ridiculous to me to be so harsh.

    BTW I remember reading about this 3D case a long time ago. Is it the same one? Did someone file a reexam on it? Maybe I read about it at the BPAI opinion blog.

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  2. >Board is being unduly harsh by saying
    >that the applicant waived the ordinary
    >meaning construction.

    Under BPAI precedent (Ex parte Ghuman), Applicant did waive the argument for ordinary meaning -- by *not making* the argument in the Appeal Brief. Regardless of the presence of an additional claim construction argument under "own lexicographer".

    I suppose the Applicant could ask the Fed. Cir. to review the Board's application of Ex parte Ghuman here. Especially since Ghuman is distinguishable.

    The more interesting question would be if Applicant tried to argue both meanings (in the alternative?) and the BPAI said ordinary meaning was waived. That seems more questionable, so I can definitely see taking that up to the Fed. Cir.

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  3. >BTW I remember reading about this 3D case a
    >long time ago. Is it the same one? Did
    >someone file a reexam on it?

    Yes, this one is a reexam appeal. The issued patent is too old for PAIR, so I have no idea if the original app was appealed.

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  4. First, absolutely agree the argument should have been about broadest >reasonable< interpretation.

    However, I think the take away here is that the time to be your own lexicographer is when you are generating the spec. If you have to use that argument with the PTO you've already failed to be a lexicographer.

    If you are being a lexicographer it means your are providing an explicit definition for a word or term; it doesn't mean just using the word in a particular (hopefully consisent) fashion.

    In this case, IMHO, both the PTO and the patentee are misusing "3-D image" in a true technical sense, but admittedly the patentee's usage is the use in the vernacular.

    In technical writing I'd limit "3-D" to images generated by, say, a hologram - one in which moving your head let's you see new things behind the foreground objects.

    The "3-D images" of this patent and in the current movie/TV rage are nothing more than stereoscopic images, the basic technology of which is ages old.

    The images suggested by the PTO are nothing more then perspective renderings. Since the shading, etc. are there to similulate what you would see in a photograph... and no one, not even the PTO I hope, would want to argue that a plain old photo shows a 3-D image just because the lighting and perspective "give the impression of depth"!

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  5. Karen,

    I was right about having about this case before:

    http://www.patentspostgrant.com/lang/en/2010/08/bpai-remains-silent-on-claim-construction

    Not sure why there is the gap between that post and this one?

    Also, you may be correct that under BPAI precedent, the Applicant waived the argument here. I would say that, in that case, the precedent is bad policy and should be overturned.

    In particular, barring Applicant from arguing ordinary meaning would be based on an unduly narrow characterization of the issue here. I would frame the issue as: (A) did the Applicant present the issue of claim construction (yes), (B) and not did the Applicant argue for the correct claim construction (no). The Board pretty much has to construe the claim to determine (A) - once it has done that, there is little policy reason to deny him the benefits of that construction. The whole discussion has become hypertechnical.

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  6. Bruce Horwitz said:
    >absolutely agree the argument should have been
    >about Broadest Reasonable Interpretation.
    >However, I think the take away here is that the
    >time to be your own lexicographer is when you >are generating the spec.

    Good point. I'd say there are two takeaways here. My original takeaway is relevant to pros, where yours is relevant to drafting. I'll update my post to say something "be your own lexicographer when you are generating the spec."

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  7. >I would frame the issue as: (A) did the
    >Applicant present the issue of claim
    >construction (yes), (B) and not did the
    >Applicant argue for the correct claim
    >construction (no).

    You're saying (A) is the issue on appeal from the BPAI to the Federal Circuit?

    Framing the issue that way would suggest the Applicant was free to argue *any* claim construction at the Fed. Cir. -- including ones not argued at the BPAI. That doesn't make much sense to me - as a court of appeal, the Fed. Cir. can only review positions that are already on the record. Right? I can see some leeway in framing the issues, but I think this goes too far.

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  8. Bruce Horwitz said:
    >The images suggested by the PTO are nothing
    >more then perspective renderings.

    Sure, I think both parties and the BPAI all agree on that question of fact. Yet the BPAI evaluated all the evidence and found that the *Applicant* used 3D in such a way as to include perspective.

    The 64,000 question is: why didn't the patentee simply *narrow* [at least in a dependent] to avoid the art. A single word - stereoscopic - would have done that, right? I didn't read the spec, but the BPAI did say that the patent described "a preferred embodiment wherein some frames in a video are converted by stereoscopy." So it seems like

    This was a reexam, with little opportunity to go beyond final. Maybe the Applicant didn't realize until too late that claim construction was the issue. Dunno.

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  9. Karen,

    You write:

    "Framing the issue that way would suggest the Applicant was free to argue *any* claim construction at the Fed. Cir. -- including ones not argued at the BPAI. That doesn't make much sense to me - as a court of appeal, the Fed. Cir. can only review positions that are already on the record. Right? I can see some leeway in framing the issues, but I think this goes too far."

    This is an appeal to the BPAI, not the CAFC.

    Since the Frye decision, the BPAI “reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on [the issues identified by the appellant].” Accordingly, the Examiner’s contested findings of fact and law are reviewed de novo, although the Board generally will not “unilaterally review [] uncontested aspects of the rejection.”

    The question is whether the "ordinary meaning" construction here is an "uncontested aspect" of the rejection. I think it is consistent with the Board's generally de novo standard of review, and with the fact the Board pretty much had to construe the claim (or do only nominal extra work to do so) for the Board to consider that issue here.

    I recognize, however, that reasonable people (including the judges in this case) can disagree.

    So, if I'm wrong about the current state of the law, and the application of Frye here, then (as a fallback position), I simply say that the law is bad policy. I don't think (as you suggest) that the Applicant should be able to argue any claim construction he wants to the CAFC. But I do argue that, if the Applicant raises the issue of claim construction for a claim term, then the BPAI should construe that claim and, if the construction favors Applicant, then the court should so hold. It is hypertechnical, and unjust, to hold otherwise.

    Claim construction is highly unpredictable and you cannot reasonable expect the Applicant to put forth every conceivable construction that the Board might adopt. It's the Board's job to construe the claim and then find for either the Applicant or the Examiner on that construction.

    I do not think that the PTO's reviewing court was always so hypertechnical. From a recent law review article:

    Judge Rich was remarkably candid in comparing the CCPA’s review to the Federal Circuit’s review of district court fact findings under the “clearly erroneous” standard of the Federal Rules of Civil Procedure: “In the CCPA, we were not reviewing trials, and Rule 52(a) was not applicable. Or if it was, we ignored it. Reviewing the PTO Boards, our attitude was we reversed them if they were wrong.”

    I would like that attitude to prevail at the Board and CAFC again today. If the law dictates otherwise, I would like to revise it.

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  10. >This is an appeal to the BPAI, not the CAFC.

    Ah, gotcha. I thought we were talking about the CAFC.

    >if the Applicant raises the issue of claim
    >construction for a claim term, then the BPAI
    >should construe that claim and, if the
    >construction favors Applicant, then the
    >court should so hold.

    Yeah, I'm with you -- the BPAI can't *ignore* the correct construction just because it's not one that the Applicant argued.

    >whether the "ordinary meaning" construction >here is an "uncontested aspect" of the
    >rejection.
    >... the Board pretty much had to construe
    >the claim ... for the Board to consider that
    >issue here.

    You're right. The Board explicitly considered ordinary meaning, and found that the Applicant lost there too.

    So I wonder what all the "waiver" talk was about.

    Maybe it's waiver in a more limited sense. Certainly if you don't advocate for a particular position -- including a claim construction -- in the Appeal Brief, you can't bring it up in the Reply Brief. Or in a Request for Rehearing.

    So while the Board may, in its wisdom, decide the issue in a way that's favorable to you -- you do waive the right to advocate for your position by not doing to in the Appeal Brief.

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