{"id":1506,"date":"2017-04-19T22:13:57","date_gmt":"2017-04-20T02:13:57","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1506"},"modified":"2017-04-19T22:13:57","modified_gmt":"2017-04-20T02:13:57","slug":"little-words-that-can-make-a-big-difference-i-e-versus-e-g","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1506","title":{"rendered":"Little Words That Can Make a Big Difference: i.e. Versus e.g."},"content":{"rendered":"

The difference between i.e.<\/em> (id est<\/em> — that is) and e.g.<\/em> (exempli gratia<\/em> — for example) from time to time comes up in patent cases. \u00a0While the difference is not always clear to some practitioners, it is clear to the Federal Circuit. \u00a0Recently, in Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Ltd.,<\/em> [2016-1729] (April 17, 2017), the Federal Circuit held that patentee’s use of i.e.<\/em> during prosecution was definitional, finding that “two types of modulation methods, i.e., different\u00a0families of modulation techniques” defined “two types” as involving different families of modulation techniques. \u00a0The Federal Circuit noted precedent where i.e. was treated as definitional:<\/p>\n

A patentee\u2019s use of\u00a0\u201ci.e.,\u201d in the intrinsic record,\u00a0however, is often \u00a0definitional. \u00a0 Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322,\u00a01334 (Fed. Cir. 2009) (\u201c[U]se of \u2018i.e.\u2019 signals an intent to\u00a0define the word to which it refers.\u201d); see also Abbott Labs.\u00a0v. Novopharm Ltd., 323 F.3d 1324, 1330 (Fed. Cir. 2003)\u00a0(holding that a patentee \u201cexplicitly defined\u201d a term by\u00a0using \u201ci.e.\u201d followed by an explanatory phrase).<\/p><\/blockquote>\n

The Federal Circuit explained that “the term ‘i.e.’ is Latin for id est, which means ‘that is.’\u201d \u00a0The Federal Circuit added that\u00a0whether a statement to the PTO that\u00a0includes “i.e.” constitutes a clear and unmistakable disavowal\u00a0of claim scope depends on the context, citing\u00a0Braintree\u00a0Labs., Inc. v. Novel Labs., Inc.<\/em>, 749 F.3d 1349, 1355\u00a0(Fed. Cir. 2014).<\/p>\n

Samsung pointed to instances were i.e. was found not to be definitional, such as where it would be internally inconsistent as in\u00a0Pfizer, Inc. v. Teva Pharm., USA, Inc.<\/em>,\u00a0429 F.3d 1364, 1373 (Fed. Cir. 2005) or where it would\u00a0read out preferred embodiments, as in\u00a0Dealertrack, Inc. v.\u00a0Huber<\/em>, 674 F.3d 1315, 1326 (Fed. Cir. 2012). \u00a0But the Federal Circuit did not agree that interpreting “i.e.” as definitional, as it normally is, would result in inconsistency.<\/p>\n

The difference between i.e. and e.g. was highlighted by the Federal Circuit in Interval Licensing LLC v. AOL, LLC.<\/em>, [2013-1282, -1283, -1284, -1285] (September \u00a010, 2014). \u00a0In considering the definiteness of the claim limitation “unobtrusive manner that does not disturb the user,” the Federal Circuit noted that:<\/p>\n

Had the phrase been cast as a definition instead of as\u00a0an example\u2014if the phrase had been preceded by \u201ci.e.\u201d\u00a0instead of \u201ce.g.\u201d\u2014then it would help provide the clarity\u00a0that the specification lacks. But as the specification is\u00a0written, we agree with the district court that a person of\u00a0ordinary skill in the art would not understand the \u201ce.g.\u201d\u00a0phrase to constitute an exclusive definition of \u201cunobtrusive\u00a0manner that does not distract a user.\u201d<\/p><\/blockquote>\n

The Federal Circuit said that given a lone example, rather than a definition, a skilled\u00a0artisan is still left to wonder what other forms of display\u00a0are unobtrusive and non-distracting. The Federal Circuit concluded that the\u00a0phrase\u00a0\u201cunobtrusive manner that does not distract\u00a0a user\u201d was indefinite.<\/p>\n","protected":false},"excerpt":{"rendered":"

The difference between i.e. (id est — that is) and e.g. (exempli gratia — for example) from time to time comes up in patent cases. \u00a0While the difference is not always clear to some practitioners, it is clear to the … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7],"tags":[],"class_list":["post-1506","post","type-post","status-publish","format-standard","hentry","category-claim-constructino"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1506","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1506"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1506\/revisions"}],"predecessor-version":[{"id":1507,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1506\/revisions\/1507"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1506"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1506"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1506"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}