Given her conclusion that the patent was invalid for anticipation and obviousness, Snider J did not make any definitive finding with respect to utility. However, she did remark at [211] that
The first problem with the Defendants' arguments on this issue is that they have failed to
clearly define the promise of the ‘630 Patent. Not one of the Defendants' experts provided
their opinion on the promise until prompted during their oral testimony. Even then, the
experts appeared to be unfamiliar with the term and unable to provide a comprehensible
response.
In this passage Snider J is apparently somewhat critical of the defendant’s experts for failing to address the promise of the patent. To my mind, this actually highlights the artificiality of the concept. If a patent specification is supposed to be addressed to persons skilled in the art, and such persons have no idea what the “promise of the patent” means, then maybe this is a problem with the doctrine, and not with the experts. As another expert said of the promise of the patent: “It’s a strange word to me.”
"If a patent specification is supposed to be addressed to persons skilled in the art, and such persons have no idea what the “promise of the patent” means, then maybe this is a problem with the doctrine, and not with the experts."
ReplyDeleteIt is unlikely that the person of skill in the art would know the meaning of "Purposive claim Construction" either. This does not mean that we should get rid of claim construction.
Good point, and I admit that this isn't the strongest criticism of the false promise doctrine. However, I think there is a difference; while the phrase "purposive claim construction" wouldn't be understood by a skilled person, the concept intuitively would be, as ultimately the message of Catnic is that a patent should be understood as a skilled person would read it, and not as a lawyer would read it. The term “purposive claim construction” is in principle a legal label lawyers for the way a skilled person would naturally read the patent, and not something they would need instruction about. With that said, your basic point remains: simply because a skilled person would need to be instructed with respect to a particular doctrine, does not mean that the doctrine is necessarily flawed.
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