The television show Dragnet n2 popularized the concept that anything you say can and will be used against you. There was a never a suggestion that your silence could be used against you. Recent court cases have suggested that silence in patent prosecution can and will be used against you.
On October 31, 2002, in Inverness v. Warner-Lambert, n3 the Federal Circuit referred to Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979, 52 USPQ2d 1109, 1113-14 (Fed. Cir. 1999) for the proposition that failure to respond to an examiner's reason for allowance functioned as a disavowal of a different interpretation of the claim. Although this is an overstatement of the text in Elkay, n4 it is not necessarily an incorrect statement of current law. Of recent case law using silence against a patentee, on November 25, someone posted on an internet chat board a quote from a district court case n5:
The Examiner's reasons for allowance are absolutely binding on the patentee, absent an objection by the patentee thereto. See, e.g., Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 41 U.S.P.Q.2D (BNA) 1865, 137 L. Ed. 2d 146, 117 S. Ct. 1040 (1997); Markman v. Westview Instruments, 52 F.3d 967, 34 U.S.P.Q.2D (BNA) 1321 (Fed. Cir. 1995), aff'd 517 U.S. 370, 38 U.S.P.Q.2D (BNA) 1461, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996); Vitronics Corp., 90 F.3d at 1578; Zenith Labs., Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 30 U.S.P.Q.2D (BNA) 1285 (Fed. Cir. 1996); see also 65 F.R. 54604 (2000) (changing the written text of the Manual of Patent Examining Procedures to reflect the cited case law); Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1296, 56 U.S.P.Q.2D 1161, 1173 (Fed. Cir. 2000) (stating that "it does not seem to us to be asking too much to expect a patentee to check a patent when it is issued in order to determine whether it contains any errors that require the issuance of a certificate of correction"). [end case quote]
The internet poster commented about the case quote: I find this part of the opinion quite "disappointing." I tried to follow the cites provided for elaboration, and I found none. The court points to Warner-Jenkinson and to Markman, but it does not say on which page(s) of the huge opinions support its statement regarding reasons for allowance. The court does provide a page cite for Vitronics, but the page says nothing about reasons for allowance. (It seems that judges are not held to the same standards as the parties' lawyer or law students are held.)
The poster is correct about the absence of justification in the cases for the proposition that "reasons for allowance are absolutely binding on the patentee, absent an objection by the patentee thereto." n6 Surprisingly, the situation is a bit worse than the poster envisioned. Those same cases were used prior to Apex v. Raritan to justify the change to rule 104(e) which eliminated the "safe harbor" which made explicit that a non-response to "reasons for allowance" would not be held against applicant. n7 Not only were there no cases eliminating the safe harbor, but there could not have been such cases. As pointed out by the BPAI in Ex parte Yamaguchi, 61 USPQ2d 1043 (BPAI 2001): "However, it is well settled that the rules of the PTO have the force and effect of law unless they are inconsistent with statutory provisions, In re Rubinfield, 270 F.2d 391, 395, 123 USPQ 210, 214 (CCPA 1959), cert. denied, 362 U.S. 903 (1960), and neither any of the cases cited in footnote 2, supra, nor any other decision of which we are aware, has specifically held this provision of 37 CFR § 1.109/1.104(e) to be inconsistent with the statute or otherwise invalid."
To illustrate the point in a somewhat whimsical way, contemplate a hypothetical analysis of 37 CFR 1.63(b)(2) n8 by some reviewing body: "In view of the supplementary guidelines adopted by the American Physical Society (APS) on November 10, 2002 n9 that co-authors who make specific, limited contributions are responsible only for the limited contributions but may have only limited responsibility for other results, we find it unreasonable to require all inventors to sign the oath required by 37 CFR 1.63(b)(2). The mandate that patent law promote the progress of science directs us to recognize that multi-person multidisciplinary scientific collaborations, frequently involving multiple institutions, which are necessary to advance scientific understanding, create an environment wherein not all inventors will understand all aspects of the invention. The requirement of the declaration of 1.63(b)(2) signed by all inventors deters collaboration and thus does not promote the progress of science." Later, there is an observation that 1.63(b)(2) is inconsistent with case law, and 1.63(b)(2) is subsequently eliminated.
Law Review Articles on Festo
Text in the Harvard Law Review (HLR) noted of the Supreme Court Festo decision n10:
Without reference to the decades of cases it overturns, Festo shifts the prosecution history estoppel inquiry away from the established "reasonable competitor" test, focusing instead on the ex ante reasonableness of the claim drafting process itself. By thus endorsing a foreseeability test for estoppel, the decision breathes life into what has until now been a minority view on the Federal Circuit: that the doctrine of equivalents should not permit the recapture of subject matter reasonably foreseeable but left unclaimed at the time of prosecution. This shift will have consequences. As applied in practice, the Festo presumption of estoppel could largely eviscerate protection under the doctrine of equivalents for technologies existing at the time of the claim amendment. Instead, the foreseeability logic of Festo will protect primarily those technologies arising after the claim-drafting process is complete -- so-called "after-arising technologies."
Although the HLR text mentioned the brief of the United States [solicitor general], it did not fully explain that the unusual text in Festo linking "one skilled in the art" with claim drafting ["at the time of the amendment one skilled in the art could not have reasonably be expected to have drafted a claim" S Ct at 1842] apparently was essentially imported from the brief [which said "it was not possible for one of ordinary skill in the art to draft a claim amendment"] into the Festo decision. n11 The HLR text did note: "This test is nonsense in traditional patent law terms."
Of the comments about the competitor standard, n12 its de-emphasis may be overstated. The Federal Circuit has stated the vitality of the competitor standard to interpret claim terms in cases decided after the Supreme Court Festo decision. In Schwing v. Putzmeister, 305 F.3d 1318 (CAFC 2002), the court said: "Although prosecution history can be a useful tool for interpreting claim terms, it cannot be used to limit the scope of a claim unless the applicant took a position before the PTO that would lead a competitor to believe that the applicant had disavowed coverage of the relevant subject matter. See, e.g., N. Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1294, 55 USPQ2d 1065, 1075 (Fed. Cir. 2000)." This aspect of Schwing was cited in the later Inverness case. Because the boundary between literal and equivalent infringement can be manipulated by claim construction, n13 it is premature to announce the demise of the competitor standard.
Of the comments about foreseeability, the previous discussion within the Federal Circuit pertained to foreseeability as a limit on the scope of equivalents (foreseeability --> no equivalents), n14 but the Supreme Court foreseeability standard is a limit on estoppel (unforeseeability --> presumption of surrender rebutted --> no estoppel). The article was silent on the contradiction between the position of (foreseeability --> no equivalents) and the finding in Graver Tank, 339 U.S. 605 (1950), that known (and thus foreseeable) embodiments were equivalents. The article was also silent on the disparity between the position (unforeseeability --> no estoppel) and the finding in Gould v. Rees, 82 U.S. 187 (1872) (which was cited approvingly in Graver Tank) that unknown (and thus likely unforeseeable) embodiments could not be equivalents. The ABSENCE of estoppel is not equal to the PRESENCE of equivalents. As one point, one would be in the anomalous position that unforeseeable variations of an amended claim element are equivalents but unknown variations on a non-amended claim element are not equivalents (Gould v. Rees; Fuller v. Yentzer, 94 U.S. 288 (1876); Rowell v. Lindsay, 113 U.S. 97 (1885)). n15
As a odd "update" on the Festo case itself, n16 the Federal Circuit in Nikken v. Robinsons-May n17 propounded on the word magnetizable (the key word at issue with the Stoll patent in Festo): "Thus, we conclude that the phrase "magnetizable flexible sheet" requires that "the flexible sheet itself must be capable of being made a magnet." One recalls that the aluminum sleeve of the accused infringer in Festo was not capable of being made a magnet.
In Passing
On Dec. 5, 2002, the Canadian Supreme Court rejected the Harvard Mouse patent, n18 and, separately, research was reported which indicated that only about 300 of the 30,000 genes have no obvious counterpart in the human genome. n19 The conviction of an American employee under the Economic Espionage Act was affirmed in U.S. v. Lange (CA7). One topic which was discussed was whether the term "public" in the definition of trade secret in 1839(3)(B) implicitly meant "general public", which would undercut the accused's argument that the data were not trade secrets because they could be obtained by reverse engineering (i.e., the accused argued that competitors, members of the public, could perform reverse engineering on the publicly available parts). A different topic that arose was impossibility. On Dec. 2, Jon Dudas, deputy director of the USPTO, announced revisions to the 21st Century Strategic Plan including omitting encouraging deferred examination, omitting the option for applicants to hire private search firms, and dropping the proposal for mandatary information disclosure statements. n20
End Notes:
n1 The opinions expressed are those only of the author, and should not be imputed in any employer, past, present, or future. The author may be reached at ebert@email.com, c8asf5@yahoo.com, or 609-514-5951. The author was a Fannie and John Hertz Foundation Fellow at Stanford, was cited by the U.S. Supreme Court in Qualitex, and has been selected for inclusion in Marquis Who's Who in America.
n2 See Broadcasting and Cable, Vol. 130 (July 3, 2000) ([the requirements of the Miranda decision] became a staple of TV crime shows, perhaps most notably Jack Webb's Dragnet). Jack Webb starred as Sergeant Joe Friday in Dragnet which ran from 1952-1959 and from 1967-1970. See also Steven Stark, 42 U. Miami L. Rev. 229 (1987). See also Dickerson v. U.S., 530 U.S. 428, 120 S. Ct. 2326 (2000); U.S. v. Chapdelaine, 616 F. Supp. 522 (D RI 1985); Legree v. Greiner, 2001 WL 527423 (SDNY).
n3 2002 U.S. App. LEXIS 22692.
n4 The PTCJ (Vol. 65, No. 1596; Nov. 8, 2002) noted: "While the consequences of an applicant's amendments or arguments are well known, Judge Dyk's summary of Elkay suggests that there are also claim construction consequences for an applicant who remains silent. However, he overstates that case by suggesting that the applicant there was held to have disclaimed a claim interpretation by simply failing to respond. In fact, the applicant was held to have relinquished a particular claim construction in an argument to distinguish a reference; its failure to respond simply followed the examiner's restatement of the claim construction implied by the argument. Elkay involved an inference from the applicant's affirmative acts, not an inference from inaction." While the PTCJ is correct about Elkay, the PTCJ comment omitted reference to the consequences under 37 CFR 1.104(e), as described in R. S. Meyer and J. L. Reed, "Respond or regret: reasons for allowance may prove damaging if not responded to by applicants under the new rule 104(e) presumpton," 12 Federal Circuit Bar Journal 89 (2002).
n5 Although the poster did not identify the case, it is Apex Inc. v. Raritan Computer, Inc., 187 F. Supp. 2d 141 (SDNY 2002); 2002 U.S. Dist. LEXIS 3466.
n6 Footnote 47 of Meyer & Reed states: "Although the cited cases relate to prosecution history estoppel, they do not stand for the proposition that an un-rebutted RFA ["reasons for allowance"] is binding on the patentee." The text and cited cases also appear in the Federal Register, Vol. 65, No. 175, 54633 (Sept. 8, 2000). One sentence was deleted from the earlier rule 104(e) ["Failure to file such a statement is does not give rise to any implication that the applicant or patent owner agrees with or acquiesces in the reasoning of the examiner."] on the basis the statement of the rule (meaning this one sentence) is inconsistent with recent decisions of the Supreme Court and Federal Circuit. Separately, see PTCJ, Vol. 54, No. 1344 (Sept. 25, 1997). As a general proposition, the removal of the sentence (which indicated failure to respond does not imply agreement) does not require a conclusion that failure to respond does imply agreement. In the Elkay case, Elkay's failure to respond to reasons for allowance [dated March 30, 1993, prior to the removal of the above sentence] was noted as a factor in addition to an argument made by Elkay, 192 F.3d at 979. The Elkay case does not stand for the proposition that an un-rebutted RFA is binding on the patentee, and, separately, one might question whether the failure to rebut the RFA was properly considered as evidence in the Elkay case.
n7 Meyer & Reed stated: The safe harbor provision of pre-PBG Rule 104(e) reflected the economic reality that the majority of patent prosecutions are constrained by practical considerations such as budget and by the legal reality that an RFA alone may not accurately reflect the reasons for patentability nor a surrender of subject matter by the applicant. One might extend this thought to text in the Supreme Court Festo decision: it's not problems with the language, it's the money.
n8 1.63(b)(2) recites: "State that the person making the oath or declaration has reviewed and understands the contents of the application, including the claims, as amended by any amendment specifically referred to in the oath or declaration."
n9 The creation of these supplementary guidelines was (somewhat) in response to the report of the Beasley committee on the fraudulent actions of Bell Labs scientist J. Hendrik Schon. This author served on the Ethics Task Force of the American Chemical Society, which has not created comparable guidelines for the ACS. Of the Beasley report itself, allegations 19-24 pertained to results that contradict known physics, behavior inconsistent with stated device parameters and prevailing physical understanding. Articles on Schon continue. David Voss (Boston Globe, Nov. 19) discussed the "Where's Waldo"-like search for made-up data among the duplicated graphs, but did not discuss the scientists who made substantive criticisms of the science. Although there is a quote from a physicist: "We self-policed and these guys were caught," it may well be that Schon was caught more by his careless procedure [use of duplicate graphs, which were recognized by third parties, but not by supervisors, referees, or editors] than by substance [recognition of wrong science]. Phil Surgey of the National Post ("Geniuses, frauds get equal billing in publish or perish mentality," Dec. 2) asked how such complete nonsense could get beyond supervisors and reviewers. To borrow from Mr. Rogan, the answer is simple: because he could. He told people what they wanted to believe, and most people were very reluctant not to believe. First-formed opinions, whether among juries or among scientists, are difficult to break. Skeptics such as Paul Solomon who saw the nonsense for what it was were ignored. [See, L. B. Ebert, "Walking on Sunshine?", IPT, 30-32 (Nov. 2002)]. The fact that only the use, and recognition, of duplicated graphs led to resolution suggests that future frauds are still possible. A post-Schon article by Brian Bergstein in the Trenton Times was entitled: "Bell Labs: Life in the wringer. Lucent unit struggles to regain past glory." (B1, Dec. 2, 2002). A post-Schon article by Daniel Neff, "The truth about nanotechnology," mentioned nanoelectronics but not Schon. See also Keay Davidson, "Scientists under the microscope," San Francisco Chronicle (Dec. 16, 02) [have we drifted away from the open and, to some extent, confrontational culture that is necessary for science to go forward?]. Separately, of the Shuji Nakamura/Nichia flap over patents to blue light emitting diodes [LEDs], please see http://nesr.esci-va.com/materials/gan/maruska_story.asp.
n10 Leading Cases, 116 Harv. L. Rev. 402, 408-409 (2002). Separately, S. A. Mota, 9 Rich, J. L. & Tech. 1 (2002).
n11 The government brief had also supported equivalent protection for an equivalent element that is itself an innovation not known to persons of ordinary skill in the art at the time applicant amended his claim. While the government brief used the word "known," the IEEE brief used the word "foreseeable," but not to describe an equivalent element. The Supreme Court Festo decision used the word "foreseeable" of the IEEE brief but arguably the test of the government. The HLR text did not note this distinction, nor the unusual way in which the Supreme Court Festo decision cited the Goodyear Vulcanite case. (e.g., "considering what equivalents were surrendered during a patent's prosecution")
n12 In the HLR article, the case cited for "reasonable competitor" is Prodyne, 743 F.2d 1581, which is the second case of the two cases in the so-called Kinzebaw line of authority. See Festo (dissent), 234 F.3d at 610. The objective test of subject matter surrender was formulated in the en banc Cybor decision, 138 F.3d at 1457.
n13 In Middleton v. Minnesota Mining, 2002 U.S. App. LEXIS 24240, a combination of new claim term construction with Supreme Court Festo led to a reversal and remand.
n14 Sage Products v. Devon, 126 F.3d 1420, 1425 (CAFC 1997). The HLR text noted: "Festo will do more than revitalize Sage Products."
n15 Even disregarding the previous Supreme Court cases, one notes as a policy matter that dropping equivalent protection for foreseeable variations will encourage competitors to make foreseeable and trivial variations to evade the scope of patents. Such a policy deters innovation. From the viewpoint of the patentee, trivial variations will be used to free-ride upon his research investment, and the patentee will be discouraged from making such investments. From the viewpoint of the competitor, there is awareness that foreseeable and trivial variations are sufficient to evade the patent, so there is no incentive to create any significantly different design-arounds. Thus, a policy of denying equivalent protection for foreseeable variations deters innovation by both the patentee and by the competitor. Separately, granting protection for unforeseeable variations violates the basic quid pro quo of the patent system. Therein, one is given protection only for what one discloses to the public, as understood by one of ordinary skill at the time (and, under Johnson & Johnston, 285 F.3d 1046, 1071-1072, attempts to claim). Granting protection for unforeseeable variations overcompensates the patent applicant.
n16 Festo v. Shoketsu Kinzoku Kogyo, 535 U.S. 722, 152 L.Ed.2d 944, 122 S. Ct. 1831, 62 USPQ2d 1705 (2002).
n17 2002 U.S. App. LEXIS 23884 (unpublished opinion)
n18 T. Cohen, "Canadian Court Rejects Mouse Patent," AP, Dec. 5, 2002.
n19 N. Wade, "Comparing Mouse Genes to Man's and Finding a World of Similarity," New York Times, A1 (Dec. 5, 2002).
n20 In the Dec. 02 issue (p. 24), IP Worldwide had noted Mr. Rogan's program is finding few supporters.