01/11/2010 04:21:54 PM EST
Gholz on How Should "Copied" Claims Be Interpreted
How should copied claims be interpreted? Robertson v. Timmermans, 90 U.S.P.Q.2D (BNA) 1898 and Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009) both address this issue. However, to understand either opinion, one must consider Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997) and In re Spina, 975 F.2d 854 (Fed. Cir. 1992). In addition, one must consider the PTO's attempt to “legislatively” overrule Spina, which came after Spina and before Rowe v. Dror. In this Analysis, Charles Gholz analyzes these cases and discusses the interpretation of copied claims. He writes:
Agilent v. Affymetrix
Agilent is further support for the proposition that one should never (well, hardly ever) copy claims from a target patent or application in ipsissimis verbis—i.e., in word-for-word-identical form. Affymetrix had done just that, and it got into a peck of perhaps unnecessary trouble as a result.
The fact that Affymetrix had copied Agilent's claims in ipsissimis verbis led to the court's revisiting the inconsistency between its holdings in In re Spina and Rowe v. Dror. However, while the court acknowledged that, to decide the case before it, “this court must examine two of its prior decisions,” it refused to acknowledge the inconsistency between them. Instead, it held that each rule is valid, but in different circumstances. The rule of Rowe v. Dror is applicable “where the issue...[is] whether...[a] claim...[is] 'patentable to one or the other party in light of prior art'.” The rule of In re Spina is applicable where “the question is 'whether the copying party's specification...adequately...[supports] the subject matter claimed by the other party'.” That is, the copied claim is interpreted one way for purposes of 35 USC 102 and 103 and in a completely different way for purposes of the written description requirement of the first paragraph of 35 USC 112.
Agilent is also interesting for a separate point bearing on Tafas v. Doll, 559 F.3d 1345, 90 USPQ2d 1129 (Fed. Cir. 2009) (petition for en banc rehearing granted July 6, 2009). As previously stated, the PTO did not like the holding in In re Spina, and it sought to “legislatively” overrule Spina. However, notwithstanding its statement in Rowe that, in enacting 37 CFR 1.633(a), “the PTO was writing on a clean slate, not flouting judicial precedent,” in Agilent the court said that:
Rowe explicitly recognized that administrative regulations cannot trump judicial directives. In considering the effect of Rule 200's substantively similar predecessor (37 C.F.R. § 1.633(a) (1996) on the rule from Spina, this court stated: “This court does not accept the PTO's statement that it can 'administratively set aside the judicially created rule of In re Spina.' Judicial precedent is as binding on administrative agencies as are statutes.” Id. at 479 n.2 (internal citations omitted).