On January 19, 1905, U.S. Patent 1,125,476, issued to Georges Claude on a System of Illuminating by Luminescent Tubes.

Although the inventor was from Paris, his invention developed into an American classic – the neon sign.

Finding the perfect words to describe an invention is the cross that patent attorneys have to bear.  When trying to describe something that it cross-shaped, the word cruciform (see, e.g., U.S. Patent No, 8,517,327) can make the job a litte easier.

U.S. Patent No. 8,517,327 shows a cruciform or cross shaped element.

Cruciform is a fairly mainstream option, appearing in more than 7141 U.S. patents, cross-shaped appears in more than 11819 patents.

Supreme Court granted Cuozzo’s Petition for Certiorari regarding two important questions affecting post-grant reviews:

1. Whether the Court of Appeals erred in holding that in proceedings, the Board may construe claims of an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2. Whether the Court of Appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR Proceeding is judicially unreviewable.

Cuozzo received support from 3M Company, Bristol-Myers Squibb Co., Cargill Incorporated, Caterpillar Inc., Eli Lilly and Company, GlaxoSmithKline LLC, Illinois Tool Works Inc., Johnson & Johnson, Monsanto Company, Pfizer Inc., The Procter & Gamble Company, Qualcomm Incorporated and Sanofi US filed an amici curiae brief, as did the Biotechnology Industry Organization, the American Intellectual Property Law Association, The Pharmaceutical Research And Manufacturers America,  Intellectual Property Owners Association, The Intellectual Property Law Association of Chicago, New York Intellectual Property Law Association, Interdigital, Inc., Tessera Technologies, Inc., and Fallbrook Technologies, Inc. and Trading Technologies International, Inc.

These are both important questions.  With respect to the use of BRI in post grant proceedings, the USPTO’s use of this examination standard where the patent owner is essentially disabled from amending the claims is unfair.  With respect to reviewing institution decisions, it would be remarkable that a decision by the PTAB or any government agency could be completely immune from review, no matter how contrary to the statute.

Lexicography – the power to define words – is heady stuff (at least for your typical mild-mannered patent prosecutor). It would seem that this power would be most responsibly applied to words that had no meaning, rather than redefining a word with an established meaning.  Here are few examples of made up words and their meanings:

Doohickey

U.S. Patent No. 8,042,274 did not define doohickey in words, but rather instructs that a doohickey is shown in Fig. 5:

So at least now, you will know one when you seen one.

Thingamajig

Thingamajig has not been expressly defined in any patent, but it must be a kind of disc drive system, appearing in two Seagate Technology patents (6,411,454 and 7,209,304), the latter stating:

an including a bonus reference to “gadget.”  Speaking of gadget:

Gadget

Before its recent appropriation by computer geeks,  “gadget” was a generic reference to a device, see in U.S. Patent No. 3,998,694, and sometimes a pejorative reference (e.g., 4,019,313 or 4,101,130).  Appearing in nearly 2000 patents, “gadget” has taken a wide variety of meanings.  In U.S. Patent No. 5,005,336 it is tool that helps turn a coconut into an envelope.

There are even devices to organize one’s gadgets: D316,502 and D312,559 and D303552, and even one to help you find them when they are lost: D726,691.  Of course gadget was the code name for the first atom bomb, making all other uses trivial in comparison.

Doodad

U.S. Patent Nos. 6,398,058 and 7,004,347 gives us a definition of doodads: “small miscellaneous items, e.g., paper clips, rubber bands, buttons, etc.” and even provides a cup 10 to hold them.  Although in U.S. Patent Nos. 6,106,300 and 6,890,179, a doodad is an “expense.”

 Widget

U.S. Patent No. 9,225,817, explains that “widget” is “a  contraction of ‘window gadget,'” and “refers to components in a graphical user interface (GUI).”  However the use predates the computer age, and the word can be found in more than 7,000 patents.

Gizmo

Gizmo is used in more than 200 patents, mostly to refer to some non-specific device.  It is apparently part of some prosecutor’s stock language, because most of the uses are along the lines of:

The words “comprising,” “including,” and “having” are always open-ended, irrespective of whether they appear as the primary transitional phrase of a claim, or as a transitional phrase within an element or sub-element of the claim (e.g., the claim “a widget comprising: A; B; and C” would be infringed by a device containing 2A’s, B, and 3C’s; also, the claim “a gizmo comprising: A; B, including X, Y, and Z; and C, having P and Q” would be infringed by a device containing 3A’s, 2X’s, 3Y’s, Z, 6P’s, and Q).

In Apple Inc. v. Samsung Electronics Co., Ltd., [2014-1802] (Fed. Cir. 2015), the Federal Circuit vacated and remanded the denial of Apple’s request for a permanent injunction.

The trial court denied Apple’s proposed injunction despite public interest favoring the injunction, and the narrowness of Apple’s proposed injunction (which tilted the balance of hardships in Apple’s favor), because these factors did not overcome Apple’s lack of irreparable harm.

Apple argued to the district court that it was irreparably harmed by Samsung’s infringement due to damage to its reputation as an innovator, lost market share, and lost downstream sales.  The district court rejected Apple’s arguments regarding irreparable harm, finding that Apple had not shown that a causal nexus connected Samsung’s infringement to these alleged injuries.

The Federal Circuit held that a causal nexus linking the harm and the infringing acts must be established regardless of whether the injunction is sought for an entire product or is narrowly limited to particular features, rejecting Apple’s argument to the contrary.

The Federal Circuit found the district erred, however, with respect to Apple’s allegations of lost market share and lost downstream sales.  The Federal Circuit said that the patent owner proving a causal nexus requires the patentee to show “some connection” between the patented features and the demand for the infringing products.  The Federal Circuit said that it was legal error for the district court to effectively require Apple to prove that the infringement was the sole cause of the lost downstream sales.  Instead, the Court should have determined whether the features “impact” customer’s purchasing decision.  The Federal Circuit said that the fact that the infringing features are not the only cause of the lost sales may well lessen the weight of any alleged irreparable harm, it does not eliminate it entirely.  Thus, the district court thus erred when it required Apple to prove that the infringing features were the exclusive or predominant reason why consumers bought Samsung’s products to find irreparable harm.

The Court concluded that on the record, applying the correct legal standard for irreparable harm, Apple has established irreparable harm.

Cubist Pharmaceuticals, Inc. v. Hospira, [2015-1197, 2015-1204, 2015-1259] (November 12, 2015), the Federal Circuit approved the use of a Certificate of Correction to correct information not available at the time the application was filed.

At the time the application was filed, and until well after that patent was issued, it was universally believed that the asparagine amino acid in daptomycin was the L-isomer of asparagine, as set forth in the structural diagram in the patent.  Years after the issuance of the patent researchers discovered that daptomycin actually contains the D-isomer of asparagine, not the L-isomer. Cubist sought to correct the error by requesting a certificate of correction from the Patent and Trademark Office (“PTO”) pursuant to 35 U.S.C. § 255, which was granted.

In subsequent infringement litigation with Cubist, Hospira argued that the PTO had erred by issuing the certificate of correction because the change in the structural diagram altered the substance of the claims, broadening their reach.  However, Cubist’s expert testified that the specification made it clear that the claims of the patent were directed to daptomycin, not to the variant containing the L-isomer of asparagine. Because it was plain that the claims were directed to daptomycin, it was appropriate for the PTO to correct the error in the structural diagram.

The Federal Circuit said that once the PTO has issued a certificate of correction, a
court may invalidate the certificate only upon a showing of clear and convincing evidence that it was improperly issued, which Hospira failed to do.  The Federal Circuit said that the problem with Hospira’s argument was that the district court did not view the change in the diagram as changing the scope of the claims at all. Instead, the district court regarded the change as simply conforming the structural diagram to the compound described in the specification and covered by the claims.

In Williamson v. Citrix Online, LLC, [2013-1130] (Fed. Cir. 2015), the Federal Circuit reduced the “strong” presumption that a limitation expressed in functional language without using the word “means” is not subject to 35 USC §112, ¶6 (35 USC §112(f)).   The Federal Circuit concluded that this heighted  burden was unjustified, uncertain in meaning and application, shifted the balance struck by Congress in passing § 112, ¶6, and “has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute.”  The Federal Circuit announced that henceforth the test of whether the words of the claim “are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”

While the Federal Circuit criticized its previous “strong” presumption because of its “inappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale” one wonders whether a patent applicant can’t put its thumb back on the scale through definitions.  Consider U.S. Patent No. 6167810, which states:

The patentee has attempted to recapture the widely misunderstood meaning of “means” prior to In re Donaldson, by covering all possible means for performing the stated function.  Maybe redefining “means” is a step too far, but if the test really is how the words are understood by persons of ordinary skill, would an express statement that “none of the claim terms are intended to be construed under 35 USC §112(f)” affect how a person or ordinary skill in the art would understand the claims?

Furthermore, if the test is whether the words of the claim “are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure” would a definition help to capture the broadest scope?  Consider this language from U.S. Patent No. 6909672:

Whether by defining means to include “any means” as in U.S. Patent No. 6167810, or defining a functionally named element  to include “any means” as in U.S. Patent No. 6909672, an applicant can try to exert some control over how the functional elements in its claims will be construed, as long as the applicant is mindful of the written description and enablement requirements of the other parts of §112.

In Automated Merchandising v. Lee, 2014-1728 (April 10, 2015), the Federal Circuit held that AMS’s challenge to the PTO’s refusal to terminate pending reexaminations cannot proceed because the refusal is not a “final agency action” under the APA, 5 U.S.C. § 704.

AMS sued Crane in for infringement of four patents (U.S. Patent Nos. 6,384,402, 6,794,634, 7,191,915, and 7,343,220). Crane requested inter partes reexamination of the patents.  AMS and Crane settled their suit, with the court issuing a consent judgment that “[t]he parties stipulate that [the four patents] are valid.” AMS then asked the USPTO to terminate the reexamination, but the USPTO refused.  AMS brought an action in district court, challenging the USPTO’s refusal under the APA.  The district court rejected the challenge on the merits, but the Federal Circuit found that the USPTO’s decision was not a final decision that could be challenged under the APA.