The IP Language Curmudgeon Archives

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The IP Language Curmudgeon Archives 2022-01-11T10:21:41-05:00

January 7, 2022

PROGRESS REPORT ON THE CURMUDGEON’S CAUSES

This is the 25th column in the Curmudgeon’s current run. The Curmudgeon tries to remain dispassionate when writing on IP language. But the Curmudgeon, being a Curmudgeon, has some causes that are continuing passions: E.g., (1) The PTAB should use the names of the parties in its opinions, as courts do, not “petitioner” and “patent owner”; (2) There’s no such thing as an irrebuttable presumption; (3) Everyone should call the court the Federal Circuit, not the CAFC; and (4) The usage of the word “comprising” in patent claims is out of step with ordinary English.

The good news is that readers have submitted many kind comments and have suggested several future topics. Many thanks. The bad news is that the Curmudgeon has not moved the world a bit on the causes above. The battle will continue. Happy New Year!

Your Friend,
The Curmudgeon

December 17, 2021

CONTINUING THE BATTLE AGAINST UNNECESSARY LATIN

The Curmudgeon hates use of Latin words and phrases that have simple English synonyms. A Latinism that crops up often is sua sponte. The eager litigator heard sua sponte and said, “Yeah! Let’s sue. What’s a sponte?” Then there’s vel non (or not). Pretentious in Latin and unnecessary words in English.

Vacatur is a weird Latin word. It means a vacated judgment. You can keep vacatur out of your writing. The majority in a recent Federal Circuit opinion said “We vacate and remand.” A dissenting judge, however, used vacatur when she could have said “vacating the judgment.” The Curmudgeon supports teaching Latin in schools but doesn’t like it in IP writing. Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.

Your Friend,
The Curmudgeon

December 10, 2021

A PATENT IS A RIGHT TO EXCLUDE OTHERS, NOT AN EXCLUSIVE RIGHT

Recently the Curmudgeon urged readers not to call a patent a monopoly. How about calling it an “exclusive right?” The answer is in Patent Act section 154, which defines a patent as a “right to exclude others from making, using, . . . or selling . . . .” (Emphasis added.)

Most of you know a patent is not an exclusive right. The owner may have patented an improvement of an invention patented by someone else. An improvement inventor may be unable to practice their invention without obtaining a license under the other patent, called a “blocking patent.” Also, an inventor can’t practice a patented invention if doing so would violate some law outside patent law. You know it’s not an exclusive right, but it’s easy to forget when you’re writing in a hurry.

Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.

Your Friend,
The Curmudgeon

December 3, 2021

DETAILS MATTER: SHORT FORM PATENT CITATIONS

The short form for citing the cumbersome 7 or 8 digit number of a U.S. patent is an apostrophe followed by the last three digits of the number. Here is a short form cite: ’829 patent. The concave side of the apostrophe, conspicuous in some fonts, should face left, according to the Bluebook. How do you make it face left? In Word, press CTRL and then the apostrophe key. Thank you, reader Andrea Evensen.

Readers commented on the recent column advising that the term “patent assets” usually can be shortened to “patents.” A majority believed “patent assets” is widely understood to mean patents plus patent applications. The Curmudgeon’s quip that an invalid patent may be a liability instead of an asset may have been a weak joke. But one reader thinks of patents “as options (in the financial sense) rather than assets, whose value (if any) is dependent on future events . . . .”
Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.

Your Friend,
The Curmudgeon

November 19, 2021

YOU USUALLY DON’T NEED TO SAY “PATENT ASSETS”

“Patent assets” is a term used by people buying and selling patents and doing M&A work. News releases often give the number of patent assets transferred without defining the term — U.S. patents, foreign patents, applications, etc. And, of course, the number doesn’t tell you the asset value anyway.

Sometimes inserting the word “assets” after “patent” may help make a point. A court brief argued that “devaluation of patent assets” would discourage R&D. But my accountant says, “If a patent is invalid, it’s a liability.” In most cases, just say “patents,” not “patent assets.”

Comments are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for my email address.

Your Friend,
The Curmudgeon

November 12, 2021

LET’S NOT SAY “PATENT MONOPOLY”

The phrase “patent monopoly” seems to pop up everywhere. It’s inaccurate and provokes arguments. “Monopoly” has multiple meanings in antitrust law and as a word meaning exclusive possession or control over almost anything. It never appears in the Patent Act. A patent is a right to exclude others from practicing an invention. Just say “patent,” not “patent monopoly.” We’ll leave for another day the difference between a right to exclude and an exclusive right.

After last week’s column, reader Kevin Ecker cited a First Circuit, non-IP case involving a missing Oxford comma. The plaintiffs obtained a $5 million settlement. The New York Times lamented, “. . . there will be no ruling from the land’s highest courts on whether the Oxford comma . . . is an unnecessary nuisance or a sacred defender of clarity, as its fans and detractors endlessly debate.”

Suggestions from readers are invited on any IP language topic. Click “Curmudgeon” at the top or bottom of this column for the Curmudgeon’s email address.

Your Friend,
The Curmudgeon 

November 5, 2021

ON THE OXFORD COMMA: EATS, SHOOTS, AND LEAVES

Today we take up the Oxford (or serial) comma, which comes before the “and” in a series of three or more items. Lynne Truss’s best-selling, witty book on punctuation opens with a gun-packing panda who walks into a bar. “The panda eats, shoots and leaves.” Or, with an Oxford comma, “The panda eats, shoots, and leaves.” Without that last comma, very different interpretations are possible.

The Curmudgeon sides with the majority of American style guides. In IP, legal, and technical writing, always place a comma before the “and.” It’s the only way to insure against ambiguity. Fiction writers say the Oxford comma interferes with their rhythm, but we’re not writing fiction.

Suggestions from readers are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for the Curmudgeon’s email address.

Your Friend,
The Curmudgeon

October 29, 2021

KEEPING OUR OBVIOUSNESS LANGUAGE STRAIGHT

How many times have you heard someone who isn’t educated in patent law, maybe a journalist, say an invention “IS” obvious? The Patent Act, of course, makes the test whether the invention “WOULD HAVE BEEN” obvious – that is, whether it would have been obvious before the filing date. Another common mistake is to say the “PATENT” would have been obvious. We should say the “CLAIMED INVENTION” would have been obvious. This tracks the statute.

Follow-up on “attorney fees”: Reader Rob Isackson thinks “attorney fees” is a misnomer “because the recovery includes more than just the fees charged by the attorney/s.” He suggests “legal spend.” Rob is correct, but the patent and trademark statutes use “attorney fees” and they’re hard to change.

Suggestions from readers are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for the Curmudgeon’s email address.

Your Friend,
The Curmudgeon 

October 22, 2021

ATTORNEY FEES, ATTORNEY’S FEES, OR ATTORNEYS’ FEES?

In some lawsuits in the U.S., the opponent must pay fees charged by attorneys. The patent statute uses the term “attorney fees.” The 1952 patent act changed it from “attorney’s fees” for reasons unknown. The trademark act uses “attorney fees.” In the copyright act, it’s “attorney’s fees.” Supreme Court justices write “attorney’s fees” unless they’re quoting a statute with a different phrase. Others are all over.

The sky is not falling, but the Curmudgeon has become convinced that everyone should write and say “attorney fees.” You don’t have to ponder whether to put an apostrophe before or after the “s.” You’ll save a character. And you’ll be consistent with the patent and copyright statutes. Maybe the Supreme Court will follow us.

Suggestions from readers are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for the Curmudgeon’s email address.

Your Friend,
The Curmudgeon

October 15, 2021

TYPE FONTS FOR LEGAL AND OTHER DOCUMENTS

Some people are passionate, even emotional, about the best fonts. Courts usually prefer “serif” fonts. Serifs are small strokes finishing off the ends of the main lines that make up the letters and numbers of a font. One well-known serif font is Times New Roman. The Supreme Court of the U.S. requires serif fonts from the Century family. U.S. Courts of Appeals are more flexible.

Science on readability of fonts is hard to find. The Seventh Circuit says, “Studies have shown that long passages of serif type are easier to read and comprehend than long passages of sans-serif type.” Putting courts aside, the modern trend is toward sans-serif fonts for short articles, blogs, and emails, but not for books or most newspapers. The Daily News uses the sans-serif font Arial.

Comments from readers are invited on any IP language topic. Click on the word “Curmudgeon” at the top or bottom of this column for the Curmudgeon’s email address.

Your Friend,
The Curmudgeon

October 8, 2021

A FEW NOTES ABOUT “PER CURIAM” COURT OPINIONS

The Curmudgeon has observed a recent and distressing epidemic of misspelling of “per curiam” as “per curium” by otherwise careful writers. Microsoft Word prods you to change the correct spelling to the incorrect. Can someone tell Bill Gates? Anyway, a per curiam opinion is an opinion handed down by a multi-judge appellate court without identifying the individual judge who wrote the opinion. It’s Latin for “by the court.” We probably should stick with the Latin words, because writing about an “opinion by the court” can be confusing.

Per curiam opinions sometimes are called unsigned opinions. At the Federal Circuit, the judges who participated are named and the Clerk signs the per curiam opinion (or order) on behalf of the court. Per curiams usually are unanimous. Per curiams also usually are short, but not always. On September 26 the Federal Circuit issued a 15-page, precedential, per curiam order granting a mandamus petition to transfer a case from the Western District of Texas, a current hot topic.

Your Friend,
The Curmudgeon

October 1, 2021

WHAT IS “PERFORMING THE FUNCTIONS AND DUTIES” AT THE USPTO?

Have you noticed that Drew Hirshfeld, leader of the USPTO since the resignation of former Director Andrei Iancu, has the title, “Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director the USPTO?” Why not just “Acting Director?”

The “functions and duties” language comes from the complex Vacancies Act of 1998. The act governs positions that require appointment by the President with approval of the Senate. It imposes limits on who can be acting officers and for how long. When a new President takes office, acting officers can perform the functions and duties of a position for up to 300 days before the President nominates a person to fill the position permanently. It’s all right to call Mr. Hirshfeld the acting director in informal communications, but in formal correspondence he should be addressed by the “performing the functions and duties” title.

Your Friend,
The Curmudgeon

September 24, 2021

A MODEST PROPOSAL TO REVISE THE ORDINARY-READER DEFINITION OF “COMPRISING”

The most common word in patent claims is “comprising.” Attorneys and judges know that comprising means “including but not including exclusively.” It makes a claim open-ended. But wait! Dictionaries written for ordinary readers say “comprising” often means “including exclusively.” According to Black’s Law Dictionary, the ordinary-reader meaning goes back to the 17th century. Is this what Justice Scalia had in mind when he said patent attorneys don’t write in the English language?

How do we fix it? Patent law is locked in by the Federal Circuit and the USPTO. Those people, with respect, write patent law on stone tablets. Readers, please write to all dictionary editors. Ask them to revise the ordinary-reader definition of “comprising.” It’s out of step with patent law.

Your Friend,
The Curmudgeon

September 17, 2021

THE BEST WRITERS USE LATIN SPARINGLY

U.S. Tenth Circuit Judge Robert Bacharach in his 2020 book Legal Writing argues, “Latin terms generally impede communication.” He says legal briefs are intended to persuade and judicial opinions are intended to explain. “So why use Latin when a simple English word is more readily understood?” The Curmudgeon agrees we should avoid Latin terms that have an easy English alternative. Examples are ab initio (from the beginning), arguendo (for sake of argument), inter alia (among others), and vel non (or not). Some Latin terms are acceptable because they’re understood by almost all educated readers, or because they have no concise, precise English alternative. Examples include amicus curiaede minimisprima facie, and res ipsa loquitur.

The late Supreme Court Justice Antonin Scalia once told an IP audience, “In one field of American law, they write and speak a language that is neither Latin nor English. That field is patent law.” In coming weeks we’ll discuss patent language, and the languages of copyright and trademark law as well.

Your Friend,
The Curmudgeon

September 10, 2021

THE REGISTER OF COPYRIGHTS OR THE REGISTRAR?

The head of the U.S. Copyright Office is the “Register of Copyrights,” not the “Registrar of Copyrights.” Attorneys and authors experienced in U.S. copyright law know this. Other readers may not. Is Register a weird title? As early as the 1500s in England, some public officials were called Registers. The U.S. Congress established the Register of Copyrights in 1897, but by then, according to the Copyright Office website, the use of the title Register in government offices already was in decline globally.

Today the U.S. copyright leader is the only one with the title Register. Ninety-three heads of copyright offices are Directors and 28 are Registrars. We should use the correct U.S. title, which is Register. But perhaps when Congress has an opportunity, it should modernize the title by changing it to Registrar?

Your Friend,
The Curmudgeon

September 3, 2021

SOME PATENT CLAIM PREAMBLES MAY BE NEEDLESS WORDS

The Curmudgeon seeks to annihilate needless words wherever they can be found, even in patent claims. A claim preamble is an introductory statement that precedes the body of the claim. Whether the preamble can be a substantive limitation on the scope of the claim is a recurring issue. In an opinion on August 16 (2020-1876), Federal Circuit Judge Lourie discussed the issue. The preamble was, “A method for treating headache in an individual, comprising . . . .” The court found it limiting in that case, but in a 12-page review Lourie concluded there is no bright-line rule for determining whether a preamble is limiting.

What about preambles that are not limiting? To the Curmudgeon, they look like needless words. If a preamble is determined not to be limiting, how about deleting it in the interest of clarity and conciseness? Who should do the deleting? The patent examiner? The PTAB? A court? That’s above the Curmudgeon’s pay grade.

Your Friend,
The Curmudgeon

August 27, 2021

A BAD DREAM ABOUT CAPITALIZATION OF “COURT”

This was a dream about an oral argument before the Supreme Court of the U.S.

CHIEF JUSTICE ROBERTS: Good morning, Mr. Curmudgeon. My first question is, Why didn’t you capitalize the first letter of the word “Court” in your briefs when you referred to our Court?

CURMUDGEON: Umm . . . Well, Mr. Chief Justice, my English teacher taught me not to capitalize the first letter of any word unless it is the first word in a sentence or a proper noun. If a court isn’t named in full, “court” isn’t a proper noun.

CHIEF JUSTIC ROBERTS: Counsel, up here parties usually follow the Blue Book®. It tells you to capitalize “Court” in documents submitted to a court when you refer to the Supreme Court, or when you are in a lower court and you are referring to that court.

CURMUDGEON: Mr. Chief Justice, I apologize.

Note to readers: The Chief Justice stated the rule correctly. It shows deference to the court, and everyone follows it.

August 20, 2021

LET’S CALL THE COURT THE “FEDERAL CIRCUIT,” NOT THE “CAFC”

The legendary Howard Markey, first chief judge of the U.S. Court of Appeals for the Federal Circuit, had his work cut out for him. According to Wikipedia, “He is often credited with establishing that court’s renown and competence in intellectual property law.” A prolific public speaker, Markey asked audiences to call the new court the “Federal Circuit,” not the “CAFC.” “Federal Circuit” conveyed the message that it was a prestigious federal appellate court on the same level with the other 12 courts of appeals.

For years it was an uphill battle to get away from “CAFC.” The court got stuck with the domain name cafc.uscourts.gov, presumably to make the address jibe with addresses of the other courts of appeals (ca1.uscourts.gov for the First Circuit, etc.). And some attorneys had an affection for the acronym. A recent, informal review of newsletters, blogs, and law reviews, however, revealed that “Federal Circuit” is now predominant. Let’s keep using the name preferred by Chief Judge Markey.

Your Friend,
The Curmudgeon

August 13, 2021

USE THE CORRECT NAME FOR THE APA: THE “ADMINISTRATIVE PROCEDURE ACT”

Congress enacted the landmark APA in 1946. Section 1 read, “This Act may be cited as the ‘Administrative Procedure Act.’” Traditionally, IP attorneys were not trained in administrative law. Today, however, federal administrative law has become one of the hottest issues in IP cases at the Supreme Court and the Federal Circuit. Everyone in IP is talking about the APA.

The Curmudgeon has observed a usage problem by IP attorneys. Many of them incorrectly call the APA the “Administrative Procedures Act.” If you mistakenly called the now-famous 2011 AIA the “American Inventions Act” instead of the “America Invents Act,” it would raise eyebrows. So, let’s say “Administrative Procedure Act,” unless you happen to be in state court in Rhode Island where the legislature enacted a state “Administrative Procedures Act.”

Your Friend,
The Curmudgeon

August 6, 2021

JUSTICE THOMAS USES “CLEANED UP” QUOTATION IN COURT OPINION

You might have noticed some Federal Circuit opinions recently that contain an unfamiliar phrase, “cleaned up,” in parentheses at the end of a cite for a quotation. What’s going on? This isn’t in The Bluebook®.

It departs from the rule that you must show every non-substantive alteration you make in a quotation or in a quotation within a quotation. This new parenthetical tells the reader that a quotation omits material like ellipses, brackets, single quotation marks, and footnote reference numbers.

It got a big boost in March, when Clarence Thomas became the first U.S. Supreme Court Justice to use it. Some call it lazy, but The Curmudgeon believes it is acceptable if you take care to avoid any alteration that could mislead the reader. Justice Thomas seems to be on a roll! As the most senior justice, he has asked his questions first at the oral arguments that have been held by phone during the pandemic.

Your friend,
The Curmudgeon

July 30, 2021

WHICH IS IT? “PATENTABILITY” OR “VALIDITY”?

The patent code says novelty and non-obviousness are conditions for “patentability.” It calls for reexamination of new questions of “patentability.” It tells us a PTAB petitioner may request cancellation of claims as “unpatentable.” When referring to suits in court for patent infringement, however, the code uses the term “validity.” Which is it? “Patentability” or “validity”?

The Curmudgeon concludes the terms mean the same thing in substance, but “patentability” usually is the best usage when a patent has not yet been granted or is being reviewed in the USPTO. “Validity” is the term to use later. Sometimes the words are used interchangeably. In the recent Arthrex opinion, Chief Judge Roberts said, “The validity of a patent previously issued by the Patent and Trademark Office can be challenged before the Patent Trial and Appeal Board . . . (emphasis added).” When courts uphold patents, they often say “not invalid.” One wit claims this expression means “not invalid yet.”

July 23, 2021

Don’t Capitalize “internet” or Put a Hyphen in “email”

Let’s visit the ubiquitous words “internet and “email.” They were born in the world of technology and IP.

Not so long ago, we were capitalizing “internet” in a sentence. On May 17, 2021, Bryan Garner, editor of Black’s Law Dictionary, tweeted, “Now is the time to lowercase internet.” He adapts to what the people are doing.

Hyphens come and hyphens go. According to trademark folklore, back in the 1950’s USPTO head Robert Watson declared the office would no longer use “trade-mark” in office publications. He held a lively party to celebrate taking out the hyphen. The Curmudgeon has not heard of any wild celebrations over the demise of the hyphen in email, but hardly anyone is using a hyphen. The trend seems to be against hyphen usage except for hyphenating phrasal adjectives, a topic for another day!

Your Friend,
The Curmudgeon

July 16, 2021

THE STATUTORY PHRASE “FINAL WRITTEN DECISION” HAS WORD USAGE ISSUES

In the world of PTAB decisions and the Federal Circuit, the phrase “final written decision” is everywhere. Congress inserted it into the Patent Act when it invented IPRs and PGRs, and word mavens have been cringing ever since.

Two of the word issues may seem small: (1) “Written” is a surplus word. All USPTO business is conducted in writing; and (2) A “final” written decision isn’t final. A party can ask for a rehearing.

The third issue is revolting. The “decision” isn’t a decision. It’s an opinion. The legendary Howard Markey, first Chief Judge of the Federal Circuit, said, “The decision is ‘affirmed’ or ‘reversed.’ Everything else, which is the opinion, is the court crowing about it.” How long will it take Congress to clean up the phrase? It only took 59 years to add the missing letters in front of the paragraphs of section 112 of the 1952 Patent Act!

Your friend,
The Curmudgeon

July 9, 2021

Using The Word “Rebuttable” With “Presumption” Can Cause Headaches

A “presumption” is a rule of law that permits a court to assume a fact is true until a preponderance (or greater weight) of evidence disproves or outweighs the presumption. The Curmudgeon is fond of the presumption of sanity.

The newly-minted Trademark Modernization Act of 2020 says a trademark plaintiff seeking an injunction “shall be entitled to a rebuttable presumption of irreparable harm . . . .” (Emphasis added.) “Rebuttable” here is just a feel-good word. All presumptions are rebuttable! “Irrebuttable” or “conclusive” presumptions are mere fictions used to disguise a substantive rule of law. Without using “rebuttable,” the 2019 STRONGER Patents Act (not enacted) said “the court shall presume . . . irreparable harm.” Would the trademark presumption and the patent presumption be the same strength? Surplus words give me a headache.

Your friend,
The Curmudgeon

July 2, 2021

IT MAY BE TIME FOR THE PTAB TO START WRITING OPINIONS USING NAMES OF REAL PEOPLE

In an inter partes review proceeding in which Smith is the petitioner and Jones is the patent owner, the PTAB throughout its opinion would refer to the parties as “Petitioner” or “the Petitioner,” and “Patent Owner” or “the Patent Owner.” On appeal, however, the Federal Circuit and the Supreme Court throughout their opinions would refer to the parties as Smith and Jones.

My preference is to follow the courts. The practice of using names of real people (or companies) helps the reader remember the parties and makes it easier to follow the story. Even in cases with multiple parties on each side, it may be best to settle on one name per side and stick to it. Do real names distract the judge from focusing on the issues in the case? No. The judge already knows who the parties are and it doesn’t matter. And it would be good practice for any PTAB judges aspiring to be Federal Circuit judges!
It’s good to be back after a long hiatus. See you next week!

Your friend,
The Curmudgeon