By Jason Rantanen
In re Katz Interactive Call Processing Patent Litigation (Fed. Cir. 2011)
Panel: Newman, Lourie, Bryson (author)
In addition to the discussion of complex patent litigation management procedures, summarized yesterday, In re Katz is also notable for its analysis of the indefiniteness of computer processing-type means plus function elements.
The patents at issue relate to interactive call processing and conferencing systems. Ten of the selected claims include "means for processing"-type limitations. For example, claims 96, 98, and 99 of the asserted '863 patent recite a "means for processing at least certain of said answer data signals." Applying WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) and Aristocrat Technologies Australia Pty Ltd v International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008), the district court found the claims indefinite because the specifications disclosed only general purpose processors without disclosing any of the algorithms used to perform the claimed functions.
The Federal Circuit agreed with the district court's analysis of three claims. Under Federal Circuit precedent, "a computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm." Slip Op. at 18, citing Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005). "[B]y claiming a processor programmed to perform a specialized function without disclosing the internal structure of that processor in the form of an algorithm, Katz’s claims exhibit the 'overbreadth inherent in open-ended functional claims,' … in violation of the limits Congress placed on means-plus-function claims in section 112, paragraph 6." Slip Op. at 19 (internal citation omitted). Thus, claims 21 and 33 of the '551 patent and claim 13 of the '065 patent, which claim a “processing means . . . for receiving customer number data entered by a caller and for storing the customer number data . . . and based on a condition coupling an incoming call to the operator terminal, the processing means visually displaying the customer number data” but do not disclose an algorithm that corresponds to the “based on a condition coupling an incoming call to the operator terminal” function are invalid for indefiniteness.
The CAFC reached the opposite result on the remaining seven claims – not on the ground that the patent disclosed the requisite algorithms, but on the basis that no algorithm was necessary because the claim elements may simply claim a general process computer:
[i]n the seven claims identified above, Katz has not claimed a specific function performed by a special purpose computer, but has simply recited the claimed functions of “processing,” “receiving,” and “storing.” Absent a possible narrower construction of the terms “processing,” “receiving,” and “storing,” discussed below, those functions can be achieved by any general purpose computer without special programming. As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions. Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of “processing,” “receiving,” and “storing” are coextensive with the structure disclosed, i.e., a general purpose processor.
Slip Op. at 20-21.
The CAFC also reviewed the district court's grant of summary judgment on other issues of indefiniteness, as well as written description, obviousness, claim construction, and noninfringement, largely affirming. Of these issues, patent litigators may want to take note of the court's comment that when dealing with written description issues it is permissible for the court to construe claims whose meaning has not been placed in dispute, "as claim construction is inherent in any written description analysis." Slip Op. at 27. Using this seemingly innocuous statement, the CAFC rejected Katz's argument that it was denied the opportunity to demonstrate specification support or proffer expert testimony on the written description issue because it "should have been clear to Katz that the construction of the claims was important to the written description analysis."
That’s why the stock of “magic phrases” includes the beaut – “examples provided are not intended to be limiting and combinations of the examples are intended to be included as covered by this application”
Wave bye-bye nit.
Ned-o,
That is downright fluffy. What’s up with that?
“Your condescension is always appreciated.”
I have been inspired by my fluffy friend Sunshine Malcolm. Everything it fluffy.
IANAE, while you appreciate Fluffy Ned’s condenscension, no one has fluffier condensension like you. You are the fluffiest.
Look, IANAE, I agree with you on the claims bit. I just find it odd that In re Wertheim required the subject matter to be claimed and that no one in 30 years has actually seemed have raised the issue.
I still think the simplest example is best. If the claimed subject matter is a compound X disclosed in the parent, but not in the manner required by 112, p. 1, such as by providing not description of how to make and use it, is the disclosure in the patent effective prior art as of the date of the parent? In other words, if a claim to the subject matter were made (and regardless of whether it was actually made) and that claim would NOT be entitled to the benefit of the filing date of the parent, is that subject matter nevertheless prior art as of the date of filing of the parent?
Thanks IANAE for your valiant struggles.
Your condescension is always appreciated.
What you need to do is ask the Feds to convene en banc and either clarify In re Wertheim or overrule it. It holding is straight forward.
No I don’t, because as far as I can tell it has no application to the facts we’re discussing.
precisely because of the difficulty presented by published applications. There having been no examination, it is not clear what the claimed subject matter IS.
That’s not the reason. Primarily because published applications are required to have claims, but also because even an issued patent might have a pending continuation, and anything in the spec might still hypothetically find its way into a claim. Even the claims in issued patents are subject to change, through reissue and re-examination.
None of that makes any difference, because the claims of a reference are completely irrelevant to the prior art status of that reference, and doubly irrelevant to the prior art status of a different, related reference. That’s why examiners and judges cite to the detailed description.
Thanks IANAE for your valiant struggles.
What you need to do is ask the Feds to convene en banc and either clarify In re Wertheim or overrule it. It holding is straight forward.
One can see from In re May that the BPAI has moved closer to your position precisely because of the difficulty presented by published applications. There having been no examination, it is not clear what the claimed subject matter IS.
Because Giacomini never argued before the Board that the Tran provisional failed to pro-vide written description support for the claimed subject matter in accordance with section 119(e),
That’s not only a non-statement of law (because the point was never argued), it’s a non-statement of a different law than you’re claiming. It’s also ambiguous which patent Rader meant when he said “claimed subject matter”, since the entire decision is about the validity of Giacomini’s claimed subject matter. Furthermore, what Tran claims is irrelevant because this is clearly a “first to invent” case.
Notice also that 119(e) contains no requirement that anything in particular be claimed. It only requires a description “in the manner provided by the first paragraph of section 112”. That is to say, written description, enablement, and best mode. The first paragraph of 112 doesn’t refer to a claim at all, which is fortunate because neither does a provisional application.
Even more interestingly, not only does section 119(e) not require that the invention be claimed in the child application, it doesn’t even require that the invention be disclosed in the child application. All it requires is that the regular application claim priority to a provisional application that describes the invention, and by that fact alone the regular is entitled to the date of the provisional for whatever is disclosed in the provisional.
Unless you can make a convincing argument that “an application … for an invention” necessarily requires that the invention be claimed, I’m not buying your argument. And if the invention must be claimed to have priority, serial continuations claiming different inventions have serious continuity issues with respect to the provisional.
Yet another interesting passage from Giacomini:
“Section 102(e) codified the “history of treating the disclosure of a U.S. patent as prior art as of the filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.”” (italics are Rader’s, bold is mine)
IANAE, see my response below to ping quoting In re May, citing In re Wertheim, a 1981 CCPA case.
If you read In re May, note the subtle change they made from In re Wertheim. The CCPA held the subject matter had to be claimed. In re May did not.
ping-a-ling, deal with it:
“A patent which is prior art under 102(e)
may be prior art as of the date of its parent if the subject matter claimed in the patent is described in the parent. In r e Wertheim, 646 F.2d 5 2 7 , 2 0 9 USPQ 554(CCPA 1981).”
In re May, 2006-1776 (BPAI 2006)
link to uspto.gov at 7
IANAE, I tend to agree that whether the subject matter is actually claimed should be irrelevant. But that is not what the Fed. Cir. seems to be suggesting.
On a separate note, if subject matter in the CIP is not disclosed in the parent, I would hope you would agree that it is not entitled to the earlier filing date. I would hope that you would further agree that if the subject matter of the CIP contains critical disclosure not found in the parent, that the effective date of THIS subject matter is the filing date of the CIP, not the filing date of the parent that does not have the critical disclosure.
As to the example of compound X, to the extent that the claim to that subject matter (whether or not actually presented) are supported in the parent, then that subject matter of the CIP is entitled to the filing date of the parent. ONLY THIS subject matter has an effective prior art date of the earlier application.
This all has to do with Section 120 and 119(e) — at least according to the Federal Circuit.
Check this from in re Giacomini
“An important limitation is that the provisional application must provide written description support for the claimed invention. Because Giacomini never argued before the Board that the Tran provisional failed to pro-vide written description support for the claimed subject matter in accordance with section 119(e),”
“ I do not think it means what you think it means.”
Ned is completely wacked on this area of law – he dont remember the multitude O observations of “as claimed” that he had to eat time and again.
That is REQUIRED for an effective priority claim.
It’s required for that particular claim to benefit from the date of the provisional. It has nothing at all to do with the date at which the spec is effective as prior art. The application as a whole is entitled to the priority of the provisional (just as a CIP to a regular), whether or not any particular claim happens to cover newly-added matter. Even if the regular emerged from re-exam with no claims at all, the prior art status of the provisional would not (and could not) change.
If this case is not the authority for your proposition, show me the authority. I do not think it means what you think it means.
What is effective prior art date of compound X?
If the structure of compound X is sufficiently described in the provisional, it is prior art from the date of the provisional. That depends on its manufacture being self-evident, otherwise the provisional is not enabling. Utility and method of use don’t need to be expressly stated to satisfy 112 for the compound itself.
That date would appear to also depend on whether the inventor had a best mode that he didn’t describe, which already holds the provisional to a higher standard than foreign or non-patent art.
It certainly does not depend on whether the non-provisional claims or has ever claimed compound X.
It’s nonsensical for the prior art status of the provisional to depend on any aspect of the non-provisional other than the priority claim.
Re-read In re Giacomini. The applicant there never objected that the subject matter of the provisional did not support the subject matter of the non provisional in the manner provided by Section 112, p. 1. That is REQUIRED for an effective priority claim.
Radar said, in dicta, not citing authority, but there is authority, that had the objection been made and sustained, the subject matter of the non provisional would NOT have an effective prior art date as of the filing date of the provisional.
Let’s take a simple case.
Prov. disclose compound X. But it does not disclose any utility or method of making and using.
All that is added in the non provisional that issues as a patent.
What is effective prior art date of compound X? The filing date of the non provisional or the filing date of the provisional?
There is also “dicta” in these cases that this subject matter must be claimed.
Such a rule would allow you to change the prior art effect of a patent retroactively by amending the claims. What’s more, it would mean that a patent with narrower claims would be “better” prior art than a patent with broad claims, because the claims would have more features in them.
More importantly, when was the last time you ever saw an art-based rejection of any kind that depended on what the prior art claimed? Or, better still, rejection over a parent application that depended on what a child application claimed?
Either you have it wrong or the Federal Circuit does.
IF — it is converted and issued as a patent,
There you go again, with your wacky theories about how to change the prior art status of a publication depending on what is done with it after it has already been made public.
IANAE, Prior art is about what is taught in the spec. You can’t change the prior art status of the spec by amending the claims, that’s ridiculous.
As I said, we have two Fed. Cir. cases that have addressed this issue. The subject matter that is entitled to the benefit of the date of a parent is subject matter supported in the manner described by Section 112, p. 6. There is also “dicta” in these cases that this subject matter must be claimed.
In other words, if the claimed subject matter in the reference has an effective filing date as of an earlier application, it is prior art as of that date and not otherwise.
The disclosure of the earlier application, if it is to be cited
There are at least two cases, In re Giacomini being one, and I cannot remember the other off hand, that have “held” that this requires that the subject matter relied upon for a reject also be claimed.
I find that very hard to believe. There’s no way the prior art status of an application can depend on what is claimed, unless the claim is the only part of the application that teaches what you’re looking for.
I have a feeling this is yet another instance of a case not exactly saying what you cite it to mean. Or possibly yet another instance of the court missing the point entirely, a bizarre inversion of Rader’s recent decision that statutory subject matter refers to the spec and not the claims.
IF — it is converted and issued as a patent, then yes, the effective prior art date is the filing date of
— the patent.
A provisional never becomes a patent.
That doesn’t mean it’s not an application for patent. You may recall that a provisional can be converted into a regular, for purely theoretical reasons relating to international priority claims. A provisional can end up being an issued patent, and the fact that nobody has ever actually bothered to do it is immaterial.
Regarding the effective prior art date of a “CIP,” which is the case we essentially have here, it is the effective filing date of the subject matter relied upon by the examiner.
This requires full section 112, p. 1 support for this subject matter in the earlier application. There are at least two cases, In re Giacomini being one, and I cannot remember the other off hand, that have “held” that this requires that the subject matter relied upon for a reject also be claimed. If the claimed subject matter has an effective date of X for filing purposes, it also has a effective date of X for prior art purposes.
IANAE, a provisional itself is never published in the manner prescribed by …
Therefor it is not and cannot be prior art by that statute.
A provisional never becomes a patent.
There is no basis for a provisional to be prior art under 102(e).
A provisional is published under 102(a) and (b) when it is “referenced” in a publication. The effective date of the publication is the date of publication, not the filing date of the provisional.
The date of publication of the specification of a provisionals is the date it is referenced in a US patent or patent application.
So, under normal circumstances, the provisional would have the date of the regular and the regular would have the date of the provisional? That doesn’t sound right to me.
You’re dealing with an application for patent that was filed before and published after. From a publication standpoint, a provisional is no different from a regular application subject to a secrecy order or a non-pub request which is later rescinded (for example, by claiming priority to it).
Sure, you might win on the technicality that it was a provisional, but I wouldn’t expect a lowly examiner to buy a technical legal argument like that on a point of law he doesn’t deal with every day. Even if you’re right.
What I mean is that the “invention” described and claimed in the non provisional is supported in the provisional as required by Section 112, p. 1 — just as the statute says.
I’m still not getting it. Why should it matter what the regular claims? Prior art is about what is taught in the spec. You can’t change the prior art status of the spec by amending the claims, that’s ridiculous.
IANAE,
1) made availabe, yes. But after my filing date. The date of publication of the specification of a provisionals is the date it is referenced in a US patent or patent application.
2) What do “you” mean by supported. Compare 2 and 3.
What I mean is that the “invention” described and claimed in the non provisional is supported in the provisional as required by Section 112, p. 1 — just as the statute says.
I simply break it down. The disclosure relied upon by the examiner in the non provisional is ALL new matter. I don’t see how he can find “support.”
ping, not in this case. The non provisional simply referenced the provisional under 119(e).
Max, not only is there “more” in the non proviosional, but there they obviously changed what was disclosed in the provisional into something different. So, even if they were “both” prior art, I would have to respond differently to each document. I might win one, but lose the other. Where would that leave us?
Regarding point 1), the provisional is an application for patent that was made available to the public (though not technically “published”), and it does have an earlier filing date than yours. Its prior art status shouldn’t depend on how much of of its contents were incorporated in a later application, because what’s important is when it appeared first. Anyway, all of its contents could have been incorporated verbatim in the later application.
Even if you win on this point, you might have a hard time bringing the examiner around to your side.
Regarding point 2), I think you’re right insofar as the particular matter cited by the examiner is not supported by the provisional.
What’s the relevance of point 3) in your post? Is the examiner citing the claims of the patent as prior art?
“Rare situation, eh, when the relevant disclosure is in the pro but not in the regular app filed one year later.”
Also, not a realistic one Maxie – Me thinks Ol Ned simply be trolling here.
The first line in any non-pro related to a pro will be to incorporate the pro. This be standard and normal practice to prevent such an instance. If Ned aint doin this, then he be risking malpractice.
I do believe that Ned once said that its been like twenty years since he actually did pros – he do need to brush up on that.
Would like to help Ned, but don’t know in which Patent Office your Exr sits. You say that the Exr relies on “matter” in the pro not “described” in the patent. Don’t understand you. Rare situation, eh, when the relevant disclosure is in the pro but not in the regular app filed one year later.
I’m having a lovely good time with an examiner who has cited a patent against me as prior art, but needs the date of the provisional to get before my filing date. He is citing matter from the patent that is NOT described in the provisional. So, I point out his problem.
So, what does he do?
He cites matter in the provisional that is not described in the patent.
I’m having a good time here.
I haven’t responded yet, but am thinking along these lines:
1) the description of the provision was not published until it was referenced in a US patent, the date of which is after the date of my application. Therefore, the description is not prior art.
2) the description of the patent is not found in the provisional, therefor it cannot be carried back to the provisional.
3) the claims in the patent rely on new matter, they do not have an effective filing date as of the provisional.
I win.
What do you guys thinks?
Software, Mr. Mooney, article claims. Thank you.
How about windmill hunting? Yous gots ta have lots of those Sunshine.
can anyone recommend some recently issuing “computer program” patents for my reference
Sure. Could you be more specific? Are you looking for “method of identifying a bird” type stuff, “method of recommending a new salad dressing to a user” type stuff, or “method of calculating a number” type stuff?
Exactly. Inventors are never done.
I have had inventors file serial provisionals, one per month or so, as they refine their invention. Then they cite them all in the regular.
can anyone recommend some recently issuing “computer program” patents for my reference
I agree that we’re in agreement here.
Out of curiosity, is the new matter that you add to nonprovisionals (“new” as in not in the provisional) usually added because the inventor wasn’t done inventing yet? Or is it some other reason?
Nailed it. It’s hard to believe they’re going foward with this line of case law, but it appears they are.
“then as to these skimpy provisionals, just how dangerous are they?”
Deadly dangerous – that’s why the Gov takes an especially hard look at invention promotion companies.
PT Barnum called and wants to offer cut-rate “Provisional Patent” application drafting…
Excellent point. I don’t think we have a disagreement. Your point is more nuanced and more accurate than mine.
When I said “claims as a whole” what I intended to convey was that a claim set as a whole that is appended to a PPA does not get the PPA priority date. One has to analyze each claim separately.
It’s often hard to get this across to inventors. They routinely think that having filed a PPA, everything in the regular patent application that cites the PPA is “covered by” the PPA, even if new matter is added to the RPA. I often get the question: “Why did I pay for the provisional?”
So in drafting that RPA, regardless of how much new matter is added, I’m careful to include one claim set that is restricted to the disclosure of the PPA. Then I can tell them: “Well, these claims here are covered. That was money well spent.”
It’s easier to be careful than to be sued.
Good to know, Babel. Thanks. I see that meeting all points of 112.1 is onerous. Just like in Europe.
Because the drafting step is the first step along the road to trial, and because the first step of a long journey is the most important one, so drafting skills ought to be valued more highly.
Especially if the inventor makes a public disclosure before the end of the Paris year.
Babel Boy: You have to view priority of a claim with respect to the individual claim as a whole, rather than just the latest priority of its elements. If you have two elements in a claim, and both of the elements were mentioned in a provisional app but not as part of the same embodiment, then there’s no written description support in the provisional for their combination. So, the claim wouldn’t be entitled to the provisional’s filing date, even though each separate element of the claim would be.
Yes, Max, if you want the priority date of the PPA, it must comply with 112.1. That PPA must disclose and enable with respect to any claim that you want to get the PPA’s filing date.
But you are not prevented from adding new subject matter and claims to that new subject matter in the regular application. It’s just that the claims that include the new subject matter do not get the priority date of the PPA.
Priority is a property of each claim, not of the claims as a whole or the application. I guess you could say it is a property of each element of each claim, but the claim’s priority date is the most recent date of all the elements’ priorities.
End of thread? I thought I was being provocative, in referring to Europe’s statutory requirement for a “written description” of the claimed subject matter in the app as filed. Did any of you think it was peculiar to the USA?
Gents, how about the provisional filing, at the start of the priority year. Do you need in that thing at least the same level of “written description” of the claimed subject matter, if you need your declaration of priority to be effective? If not, why not? If yes, then as to these skimpy provisionals, just how dangerous are they? How seriously false is the sense of security they deliver?
I agree with Max and Ned.
I need a stronger drink.
Max, I agree. The disclosure of any species of a genus anticipates the genus. While one can claim a subrange of a genus, one needs to disclose some unexpected property or advantage in order to claim it. Now consider just what would happen if one wanted to add a description of such criticality to the specification later.
New matter!!!
So the bottom line is, you are right.
I was struck by the passage at the top of page 25 which explains what the “written description” provision of the Statute is there for. I gather it is “to ensure that the right to exclude ….does not over-reach the scope of the inventor’s contribution….as described in the patent specification”.
Looks to me like a definition of “claim too wide”.Is that intended? I think that definition would have been better without the “over-“. Here’s why.
Suppose the specification sets forth “halogen” as the invention, and claims that contribution, and in the specification diligently recites the names of the individual members of the class of halogens, but does not single out any member as having any particular efficacy over the other members of the class. Suppose that then, in prosecution, it turns out that “halogen” is old. The “halogen” claim is duly narrowed to “bromine”. Does the narrower claim “over-reach”? It seems to me not.
Yet, for me there is no “written description” of bromine as an invention beyond the known “halogen”. If the “contribution” to “technical “progress” is “select bromine as your halogen”, I see no written description of it in the app as filed. So, is the bromine claim bad for want of written description? I think it ought to be (like it would be under Europe’s “written description” requirement).
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Agreed. What, pray tell, does “processing” without “special programming mean?”
Processing is only relevant within the context of inputs and outputs. There must be an input taken from the universe of all possible inputs and it must provide an ouput that maps to (is specific for) that input.
Even if you talk about something as “general” as an addition function, which all computers have the circuitry to do — but first they have to be specifically programmed to do it. A line of machine code has to exist to respond to “+”. That is a very specific instruction.
Federal Circuit: “a computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm.”
Only Humpty Dumpty and the Federal Circuit could possibly find an “algorithm” to be a corresponding structure. Once the door is opened for this kind of game-playing, then all appeals to “reason” and “logic” and “laws” are mere theater.
Federal Circuit Absent a possible narrower construction of the terms “processing,” “receiving,” and “storing,” discussed below, those functions can be achieved by any general purpose computer without special programming.
And as claim limitations they would be satisfied by any general purpose computer, regardless of what is being processed, received or stored.
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