Claim Construction in the Abstract

By Dennis Crouch

Typhoon Touch Tech. v. Dell, Lenovo, Toshiba, Fujitsu, Sand Dune Ventures, Panasonic, Apple, HTC, and Palm (Fed. Cir. 2011)

Touch screen technology has taken-off as an important element of consumer electronics. Typhoon’s US Patent Nos. 5,379,057 and 5,675,362 cover various embodiments of a “portable keyboardless computer system” with a “touch-sensitive screen.”

Typhoon appealed an E.D. Texas ruling that its patents were invalid and not infringed. The appeal focused on the claim construction that served as the basis for both invalidity and non-infringement. The appellate decision is notable for the detached process that the court used to consider claims elements at issue. The opinion never discussed the crux of the invention or its contribution to the art and instead simply looked to the disputed claim terms and the relation of those terms in the specification (as required by Phillips v. AWH).

This week, I participated in a roundtable discussion at Yale Law School sponsored by the Kauffman foundation and by Yale’s Information Society Project (ISP). A substantial amount of the discussion focused on problems stemming from our current claim construction process and our ongoing focus on claim language as opposed to invention or its contribution to the art.

For patent attorneys prosecuting patents, the claims are often seen as equivalent to the invention. The new patent act supports that definition by shifting focus away from the invention and instead onto the “claimed invention.” Thus, the new § 102(a)(1) asks whether “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The new statute’s sole focus on invention as claimed is largely just a codification of fairly well accepted Federal Circuit precedent without much thought of the consequences. Of course, broad subject matter eligibility described in State Street Bank and the TSM test for obviousness were, until quite recently, well accepted Federal Circuit precedents as well. In the past few years, the Supreme Court rolled-back the clock on those issues – returning focus to pre-1982 case law. For “invention” however, the new statute appears to lock-in the claimed-invention as the ongoing focus of patent law.

Judge Kimberly Moore highlighted this issue in her recent dissent from the court’s denial of en banc rehearing of Retractable Technologies, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011). In that opinion, Judge Moore noted that the approach of the panel decision in Retractable is evident of a major divide amongst Federal Circuit judges as to whether the inventor’s contribution to the art – “what the inventor actually invented” – should be considered in the claim construction process.

This week, my patent law students each argued a mock-Markman hearing – revisiting the facts of Nystrom v. Trex and arguing over whether Ron Nystrom’s claimed decking “board” should be limited to cover only to wood cut from a log. That litigation was interesting because it involved five different court decisions on the proper construction of the term. The final appellate decision narrowed the term’s meaning in a way that allowed Trex’s composite planking to avoid infringement.

Claim construction has become a fundamental aspect of every patent case – even to the extent that Section 101 patentable subject matter decisions turn on the meaning bestowed upon particular claim terms. For patent attorneys, all of this focus on claim meaning puts more pressure on the drafting of the claims and the specification. The sad thing about Nystrom’s patent is that he would have easily won the case if the patent attorney who drafted the application had thrown-in language indicating that a “board” could be made of various materials, not just wood cut from a log. This counterfactual conclusion is sad for Nystrom as the inventor, but it is also sad that such a major weight is placed on non-inventive boilerplate language. In my mind, the importance of claim construction should push the USPTO to do a better job of ensuring that the terms of issued patents are well defined.

###

The Typhoon decision is also notable in the way that the court narrowly interpreted functional claim limitations. As background, Typhoon’s claim was directed to a “computer” that included various elements including a “memory for storing [a] data collection application.” Typhoon argued its claimed invention only required that the memory be capable of storing the data collection application. However, the District Court Judge Davis and Federal Circuit agreed that the proper construction required that memory actually be used for storing the data collection application. In so holding, the courts looked to the specification and found that the described embodiments all had memories that actually included the application rather than just the capability.

###

Finally, the court looked at Typhoon’s “Means for cross-referencing” limitation. The district court held that limitation invalid as indefinite under 35 U.S.C. § 112 because the specification did not include an algorithm adequate to provide sufficient structure for the means-plus-function limitation, citing Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, 521 F.3d 1328, 1334 (Fed Cir. 2008). On appeal, the Federal Circuit rejected that conclusion – finding that the specification did disclose a cross-referencing algorithm in plain language in the text of the specification. The court went on to write that “computer code is not required to be included in the patent specification.” Rather, what is required is disclosure so that one of ordinary skill in the art would recognize the structure as linked to the claimed function.

###

  • Judge Newman wrote the court opinion and was joined by Chief Judge Rader and Judge Prost;
  • The Appellant-Patentee is represented on appeal by Charles Wolfe (Blank Rome);
  • Ed Reines (Weil Gotshal) and Joe Re (Knobbe) were co-lead-counsel for all the appellee-defendants. Briefs were also signed by attorneys at K&L Gates, Baker Botts, Amster Rothstein, Perkins Coie, Covington & Burling, and Malloy & Malloy, as well as Eric Albritton from the Albritton firm.

294 thoughts on “Claim Construction in the Abstract

  1. If what you say is correct, then Benson is bad law.

    Benson is not bad law, now is it?

    Now I will agree with you that a new machine is patentable as such.  Ditto an improved machine.  But in order for software to improve the machine, it must be part of the machine.

    This is the bit that you seem to miss.

    Some kinds of software ARE part of the machine.   That kind of software is automatically loaded and executed.  

    If have a device with such software, I can infringe by making, selling and using the device.

    In contrast, if the computer is a general purpose digital computer and the software is not automatically loaded and executed, the machine is not improved, rather than machine is used.  The sale of a general purpose digital computer does not infringe the programmed computer patent.  The making of the general-purpose digital computer does not infringe the programmed computer patent. The use of the software on the computer infringes. But, the use software on the computer cannot be claimed as a new or an improved machine. Further, the operation of a machine is not patentable subject matter. Rather, the operation of the computer can be claimed as part of a process.

    Your pleas for simplicity simply illustrate that you do not fully understand the subject matter.  You seek to avoid the hard issues rather than confront them.

    If what you said is true, i.e., that any programmed computer is patentable as such, then we can patent any nonsense whatsoever provided we merely recite that the subject matter is a program running on a computer. We could even patent the hedging algorithm held unpatentable in Bilski. You would make a laughingstock out of Supreme Court if all one had to do is claim that subject matter as a program running on a digital computer. Do you think the Supreme Court is made up of im– beciles?

  2. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    A computer is a machine. Software is an improvement to machine … ergo, patentable subject matter.

    A computer-implemented process is a process that is not merely something performed solely within the human mind. Ergo, not abstract and patentable subject matter.

    Listening to you trying to parse the case law Ned is like listening to some Trekkie explain the physiological difference between Klingons before and after the first Star Trek movie. Fun if you are with a bunch of like-minded buddies, but besides them who the F cares?

    There is only 3 ways for you get to software excluded as patentable subject matter: (i) move out of the US into a jurisdiction that doesn’t allow “pure” patent software (but even in those jurisdictions you can get patents on pretty much the same thing as software); (ii) convince Congress that software patents are bad; or (iii) convince SCOTUS that software patents are bad. I don’t care about (i) and the chance that you (and your like-minded buddies) are going to do (ii) and/or (iii) is about the same chance that I have to win Powerball (i.e., not in my lifetime).

    The plain fact of the matter is that software patents are here to stay. They are entrenched within the system and they have been entrenched for a very long time. The courts are not going to upset settled expectations. You may get nibbling at the very fringes (Bilski was a very fringe case), but the plain language of 101 makes it very easy (see my first three paragraphs) for the Courts to recognize that computer-related inventions are directed to patentable subject matter.

    One last thing, the people you need to convince of your “software as an abstract idea” theory are not tech-savvy. All someone has to do is show them a computer with XXXXX.exe file in the directory and show how the computer functions differently than when XXXXX.exe file is not in the directory. After that explanation, you are going to have a hard time convincing them that XXXXX.exe is an “abstract idea.” Ultimately, that is your problem … common sense is not on your side.

  3. I agree. But that is what the Sock puppets have been saying. They have been citing the very passage that said,

    “we have held” for Alappat’s holding.

    But as you can see, this is not Alappat’s holding. Further, as I delineate, the cases cited by Alappat for the proposition that “we have held” do not support that proposition at all. To the contrary, the undercut it. The cases cited by Alappat appear to hold the opposite of what the proposition stands for.

  4. And, if you actually review the three cases cited by Alappat for support for “we have held”, none of them support the proposition that “we have held” that a programmed GP computer is a “new machine” implying that it is patentable as such.

    Freeman’s claims were directed to a display device, as in Alappat, and included a lot of hardware beyond a programmed computer. Freeman’s note 11 referred to In re Noll. Noll similarly claimed a lot of display apparatus beyond a programmed computer, just as in Alappat. The last case cited by Alappat is In re Prater, at note 29. I reproduce note 29 below. But this note was complete dicta. In full:

    “No reason is now apparent to us why, based on the Constitution, statute, or case law, apparatus and process claims broad enough to encompass the operation of a programmed general-purpose digital computer are necessarily unpatentable. In one sense, a general-purpose digital computer may be regarded as but a storeroom of parts and/or electrical components. But once a program has been introduced, the general-purpose digital computer becomes a special-purpose digital computer (i. e., a specific electrical circuit with or without electro-mechanical components) which, along with the process by which it operates, may be patented subject, of course, to the requirements of novelty, utility, and non-obviousness. Based on the present law, we see no other reasonable conclusion.”

    In re Prater was decided in 1969. To the extent it stands for the proposition that a programmed computer without more is a patent eligible, that notion was laid to rest by Benson, which was decided a few years later.

  5. Sorry Ned – when the court reiterated iin a new case and expressly says “we hold” it means tha tin the new case, that holding is also a holding.

    You Lose.

  6. But they never said “we hold” with respect to the proposition that a programmed computer was patent eligible as a new machine.

    That would be false.

  7. Yeah, sure. But they never said “we hold” with respect to the proposition that a programmed computer was patent eligible as a new machine.

    Alappat did not involve a programmed computer. That was the holding of Alappat.

    The dicta about a programmed computer being a new machine was a criticism of the PTO’s position that held the Alappat claims unpatentable for this reason. But, since the Federal Circuit had held the claims did not cover a programmed computer, the whole passage was a pure digression.

    Regardless, even here they said, “we have held” referring not to Alappat, but to prior cases, which they listed. One actually has to look at those cases to understand what the holding in those cases was.

  8. Well, on the plus side, I’m in charge of claim construction in mah office :)

    And, not only do I go with the “capable of” construction, I also include in the construction something along the lines of: memory capable of, or actually, storing the data collection application, wherein such a capability, or actually storing, is conferred upon the medium by the inclusion of at least one 1 or one 0.

    Suffice it to say, I look forward to the response to my claim constructions and ensuing 102(b)’s. I have a few pending.

    Also, they have nice objections to the drawings pending. I even threw in a little part mandating that the “novel” part be set forth from the old in a little window for me since the proper understanding of the invention requires such.

    I think I gave them this.

    **> ¶ 6.22.01 Drawings Objected To, Details Not Shown
    The drawings are objected to under 37 CFR 1.83(a) because they fail to show [1] as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

    And this in the event they felt like it was an improvement over a blank CD:

    (b) When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.

    (c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d).

    I think they already missed the two month deadline so I hope they don’t consider it an improvement over a blank CD.

    I might also have thrown this in for flavor:

    **> ¶ 6.22.01 Drawings Objected To, Details Not Shown
    The drawings are objected to under 37 CFR 1.83(a) because they fail to show [1] as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

    As well as:

    ¶ 6.36 Drawings Do Not Show Claimed Subject Matter
    The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the [1] must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.

    Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

    Or I might have rolled them all into one big objection including all the grounds.

  9. anon, thanks.

    Now the quote says in a passage that is entirely dicta from the point of view of Alappat that

    "we have held."

    This does not refer to the holding in Alappat, but to a holding in prior cases, and they are cited.  

    So when one speaks of the holding of Alappat, this is not the holding of Alappat.  It is dicta, and the dicta references to holdings in prior cases which have to be reviewed for context.

    That is my point and has been my point.  

    Thanks for your help.

  10. Give us a quote

    Ned, would this help?

    Alappat admits that claim 15 would read on a general purpose computer programmed to carry out the claimed invention, but argues that this alone also does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree. We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.

    33 F.3d 1526 at 1545.

    The Court clearly states its holding.

  11. We can do this all day.

    Yes, but only you look foolish and lazy.

    (the quote has already been used on these boards).

  12. I cannot prove a negative”

    Then settle for the actual words (Here’s a hint: they said WE HOLD).

    The rest should be easy to spot.

  13. Hey, Ned – you are the one attempting to move the goal posts – no reason to get all in a snit.

    When the Court says We Hold – they mean it.

  14. Lazy, you move the goalposts.  It is you or your fellow poster who contended that Alappat expressly held so and so.  I know that Alappat did not.  I cannot prove a negative.  So, I simply invited the proponent of the original proposition to provide a quote.

    What I get is the BS cr ap and goalposting shift that is so typical of the BS sock puppets here.  Jerks all.

  15. Ned,

    You see here is one of your “examples” of addressing the issue where you have merely run away. You boast about “It is essential and critical to the machine to make the machine operate at all, yet negelct that there is no difference – at the patent scale – with software, wherein the very same statement applies to software as a component. This was captured by Ping a while back iin setting up two machiens, on eprogrammed and the other not and having a race to meet patent claims of a programmed computer. So the facts work against you. This is also something that has been explained to you as law (see Alappat), yet you refuse to open you reyes and thus the law works against you.

    All you can to is pound on the table since you have neither facts nor law. Yet you keep on pounding and pounding louder as is by volume alone you think that you can concince anyone. Like an empty wagon, you make a lot of noise, but you contain nothing.

    So keep at it – keep up your noisy protests and keep drawing attention to the fact that you have no legal or factual basis – at all.

    As you do, I will keep LOLZing at you.

  16. Actually,

    It is preceisely the question on the table.

    One which you seem to want to infuse doubt where most see no doubt (at least no doubt in what the law ataully is).

  17. Alappat simplified:

    US 5440676

    Fig. 1, an oscilloscope, from measured signal to display. Reference18 is a box labeled display system.

    Fig 2, display system including a vector list RAM 36, a rasterizer 40, a pixel processor 42, a frame buffer 32, and a display control 34 with output to a CRT.

    Figure 3, the rasterizer circuit. It consists of registers, two different ALUs, and to barrel shifters.

    The claim was to a rasterizer for display. It was claimed in means plus function language. Each element of means plus function language has corresponding structure in the rasterizer circuit.

    The patent office construed the means plus function claims elemens broadly, and did not limit them to the corresponding structure. Rather, the PTO construed the claims to read on a programmed general-purpose digital computer, and held the claims invalid as being directed to nonstatutory subject matter.

    The Federal Circuit on appeal reversed the claim construction, and held the claims limited to the corresponding structure described in the specification, which is specific hardware of a display circuit of an oscillascope.

    Even though this holding was sufficient to reverse the PTO, the Federal Circuit went on to discuss whether there was a mathematical algorithm exception even where a claim was the specific circuitry. The Federal Circuit resolved this issue because the claimed subject matter was not to a disembodied calculation, but to a specific circuit in a display, a rasterizer.

    In dicta, the Federal Circuit also objected to the patent office holding that had the claims actually read on a programmed general-purpose digital computer [in the display circuit] they would have been directed to nonstatutory subject matter. The opinion does have some unfortunate language that would suggest that a disembodied, programmed, general purpose computer by itself, and not part of a display circuit as disclosed in Alappat, might be patentable subject matter because it was a “new machine,” but this is so far beyond the facts of the case as to be complete dicta. Rather, considering the context of a display circuit, replacing the digital circuit disclosed by Alappat with a programmed general-purpose digital computer would have placed the Alappat claims squarely within the authorization of Diamond v. Diehr.

    The court concluded with an observation that Benson and not categorically excluded programmed computers from patent eligibility. Indeed, when placed in context such as in a circuit as disclosed in Alappat or in the mold of Diehr, the use of a general-purpose digital computer in context does not render a claim as a whole nonstatutory as the claim as a whole is not claiming a disembodied programmed computer doing nothing but calculating numbers, but a specific apparatus dedicated to a specific application.

  18. Night, another point you should consider: is the invention claimed?

    You, me, and every other poster here talks about information processing in terms of transformation of “data.” However, I, for some reason, can I get you to agree that one actually has to claim the transformation of data, and not the mathematics and abstract.

  19. Well I see the reason that patent’s road to issuance was so bumpy and ended in disaster. It’s posted right on the front.

    “Heather”

  20. Thanks Ned,

    Good to see that you agree that no actual algorithm is required in a software-related patent.

    So many people do not understand this art field and feel the need to throw out their opinions when they clearly do not understand what they are talking about.

    It is nice to see that some people understand that enablement does not require actual code.

  21. There are far more egregious mistakes on these blog pages than the misspellings of waive or wave.

    This is akin to anayalyzing the lint in your belly button.

    We really don’t care!

    If you are that distressed, seek counseling, get a puppy or both.

  22. Does that really add anything to a spec addressed to a person of skill in the art?

    The problem comes when those who do not understand “the art” feel compelled to denigrate “the art.”

  23. Old elements… A new element…

    Element by element parsing is not allowed.

    If you have a combination, then all elements must be looked at in toto, the claim as a whole is where the “point of novelty” of the claim must be sought, not in any one element.

    Like the “Flash of Genius” disease, this “point of novelty” disease just won’t go away. These aberrations must be stomped out.

    This has been the rule of law for ages. It is not a matter that the Federal Circuit “wrestles with it” because it refuses to recognize the difference between old and new elements of a combination, it is because the Federal Circuit is applying the “no dissection” of claims rule of law.

  24. Ned, you are an iron age thinker. The computer is what it is–new technology. It does not fit well with old descriptions. The claims that you complain about fit the invention. They are the way to particularly and distinctly claim the invention. They are enabled.

    So, if what they did is an invention, then the claims are the proper form to capture the invention. And it is indeed an invention.

    It is just sad Ned to read your lame attempts to characterize a computer as an iron age invention. And your peudo-intelluctual tone that is policy based is offensive.

    Big picture that you cannot escape—is the invention enabled? Is the invention particularly and distinctly claimed? The answer is clearly yes in this case. So, your beef is that the invention isn’t an iron age invention. Which makes you a petty little man wihtout honor.

    And, MM, go claim some more known compounds because your masters have found a use for a known compound.

  25. If one does n0ot know the difference between firmware and software, one should not be expounding their personal legal views. says:

    Software for such computer applications have a name. Their name is firmware

    BZZZZZT

    Wrong.

    Try Again.

  26. IF you limit you remarks to a computer programmed to perform the rasterizer math claimed as a component of a display apparatus, you and I are in agreement. That is the claimed subject matter in Alappat, save that the claimed structure was a circuit of a display not a special purpose computer programmed to perform the math of the display.

    Software for such computer applications have a name. Their name is firmware: a computer program that is part of the machine in the sense that it loads and executes automatically. That is necessary in the context of a machine or a component of a machine, else the computer without the programming is just a lump of doped silicon.

    However, people on the board and elsewhere have said, and have repeatedly said, that a programmed GP digital computer is patentable as a machine — without more: meaning, divorced from context, not tied to a specific application, or not part of a larger machine or circuit.

    That is the very bootstrapping I see from Rader in Ultramercial.

  27. When a court says it holds -that’s a pretty clear sign that the court hold.

    Deal with it – otherwise you look like you are stuggling with your own sanity.

  28. Quote the Court saying that a component of a car is patentable subject matter, per se, in this case or anywhere?

    You see Ned? Your argument is pure fallacy, because there is no such requirement for a court here there or anywhere to state that some component of a machine is patentable subject matter, per se.

    You have set a challenge that is quite meaningless.

    Now let’s get back to your riveting discussion on how firmware is somehow substantively different than software….

    Your Shilling masters are just dieing to see if you can pull your bacon out of the fire on that one!

  29. I have made the challenge elsewhere.  I will repeat it here.

    <b>Quote</b> the court saying that a programmed GP digital computer is patentable subject matter, per se, in this case or anywhere?  

    That was the "opinion" of the court in In re Benson, the very case the Supreme Court overturned.  Freaks.  Deal with it.

  30. Can someone answer a legal question?
    How can a Trademark that had no Power that was filed for you with no power behind it be held while another less than eight months later is started. And their is no Power to do that. How can you have two Trademarks spelled the same, and a legal problem with them allow this to go on? Isn’t that in FACT the basis in Law for the only valid Trademark to be the first one? Class 22 was real.. then the classes were changed to protect the guilty.
    I’m just asking because I don’t know. But it seems to me the second one ought to be held invalid, even though it was invalid to begin with.

  31. It is not a dicta to defeat a government case.

    To pretend otherwise is truly insane.

    THe COurts has expressly stated what is a holding – yet you think you know better.

    Your conceit is boundless.

  32. The Fed’s have expressly stated “THIS IS OUR HOLDING

    Only Ned would blatantly L_ie and try to say wuch was not a holding.

    No one else would date to look so st_upid.

  33. You sound like a patent examiner presenting a FAOM.

    Appellate courts do not act that way.  Neither to district court judges.  

    Here, in Alappat, the PTO's claim construction was overturned.  The claims did not read on a GP digital computer.  Everything after that holding was dicta.

  34. Back, let's see.

    A district court construes the claims, and based on its construction holds the claims invalid.

    The feds overturn the construction.  But they also go on to opine, completely unnecessary on whether the claims would have been invalid had the construction not been overturned.

    Anyone with a brain knows that the discussion related to invalidity is unnecessary. It is complete dicta.  Courts normally do not do it as the issue is not really before them, having been rendered moot by the reversal of claim construction.

    But, that is Alappat.  The Feds overturned the PTO's claim construction, but still went on to give its opinion on the now hypothetical case of whether the claims would have been patentable or not had they read on a programmed GP digital computer.   

    This dicta is NOT binding precedent.

  35. Hypothetical:
    Hancock Fabrics diversifies.. They begin their own line of Clothing.. Why not they say after all we are a Fabric Store. And better yet why don’t we make are own Fabric.
    Boy you are Greedy.. You figure hey the same scenario if we are able to take control of this. It took you 16 Years to bury me. I wouldn’t say that this last 16 years was your finest Dig.

  36. One must not limit oneself to just the patent involved, because a court’s holding must deal with all of the arguments brought against that patent.

    Therefore, all of the arguments brought by the government and all of the responses by the court to those arguments make up the holding of the case. If the government is successful on any one of its arguments the case may still be decided for the government, thus the court holding includes all those arguments used to defeat the government position.

    Ned is is clear denial of the holdings of this case.

  37. Compare:
    the holding was necessary to address one of the govenerment’s positions that is was a holding.

    And

    does not form a necessary part of the court’s decision

    W

    T

    F

  38. Back to Law School has provided a rationale basis. Ned Heller realies solely on ad hominem.

    It is easy to tell which is more conveincing.

  39. What happened to the “firmware” is not equivalent to “software” gaffe?

    Can’t get back up that slope?

  40. You seem to think that anything in an opinion regardless of it’s necessity is a holding.

    Quite the contrary.

    It is precesiely because the holding was necessary to address one of the govenerment’s positions that is was a holding.

    Or hasn’t this been explained to you (at least four times now)?

    All else you have to say on this is rather pathetic dust kicking.

    Enjoy what the court tells you – it is a holding and it is law. You might have to unclench your eyes, take your fingers out of your ears and stop chanting “nah-nah-nah-nah-nah“.

  41. basics, it is quite apparent that we do not agree what a holding is. You seem to think that anything in an opinion regardless of it's necessity is a holding. You are way out there.

    The Federal Circuit in Alappat held that the claims before it covered the circuit of figure 3, the rasterizer. This was a circuit. This was not a general purpose to the computer. In fact, it was not a computer at all.  It was a circuit.

    Not only did it hold that the claims covered that circuit, they also held that the claims could not be construed as broadly as the patent office held them to be, to essentially cover any means under the sun that could perform the mathematics recited in the claims.

    So, any discussion about general purpose digital computers, while necessary to the patent office decision, was not necessary the Federal Circuit's decision. As such, that discussion was not the courts holding. It was not the courts holding because it was not necessary. Rather, it was dicta.

  42. basics, you apparently do not know what "dicta"  is. Is an statement of law or opinion of the court that is not "necessary" to the decision. For example, this from Black's Law dictionary:

    "
    Obiter dictum (plural obiter dicta, often referred to simply as dicta or obiter) is Latin for a statement "said in passing". An obiter dictum is a remark or observation made by a judge that, although included in the body of the court's opinion, does not form a necessary part of the court's decision. In a court opinion, obiter dicta include, but are not limited to, words "introduced by way of illustration, or analogy or argument."

  43. And Ned does not even know what a holding is, yet feels compelled to lecture others.

    Draw your own conclusions on that gem.

    Ned, it seems you wisely put down the shovel on trying to drwa a distinction on firmware versus software, as well as any discussion on encryption.

    You’ve had a really bad week, haven’t you?

  44. Hw is this not dicta

    Simple – The court said it was not. The court said it was not in direct realtion to government argument.

    You do know what it means to be a “holding,” do you not?

    This is really basic stuff, Ned.

  45. Max, its the sock puppets doing this. Clearly they have no clue — on so many, many levels. They don’t even know when they are wrong or when they are right. They exist is a fog of narcissistic arrogance and demonstrated ignorance.

  46. There’s somebody here who persistently writes “waive” when they mean “wave”. As in “waiving the flag” or “hand-waiving”.

    It distreses me. Please can that person grasp the difference between the two words. It would be in their own interest. If they are in legal work, it might help their career progress.

  47. The reconsideration Board majority also erred in its reasoning that claim 15 is unpatentable merely because it “reads on a general purpose digital computer ‘means’ to perform the various steps under program control

  48. The reconsideration Board majority also erred in its reasoning that claim 15 is unpatentable merely because it “reads on a general purpose digital computer ‘means’ to perform the various steps under program control

  49. The practitioners of magic in computer software

    Ned,

    Don’t you think that you have embarrassed yourself quite enough?

    Please.
    Put.
    The
    Shovel.
    Down.

  50. Malcolm a jar with novel beans is different from a jar that holds beans.

    I knew that, Ned, hence my use of the term, “for storing”, instead of the term, “with.”

  51. Malcolm a jar with novel beans is different from a jar that holds beans. The jar and bean combo might function as a better bomb, for example.

    The practitioners of magic in computer software however you want us to believe that when they disclose a jar (read computer) that temporarily holds beans (software), that they can justify a claim to a jar configured to hold (but only temporarily so) beans as claiming a new combination, when in truth they are not claiming a new combination but the use of a jar to hold beans.

    It is clear that we have the same problem with computer software as we did with computer readable media comprising signals. The signals, like the combination, exist at the time of their creation, but they vanish when the power goes off.

  52. As anyone with a functioning brain will readily appreciate, “a jar for storing novel beans” is identical, for patent purposes, to “a jar for storing old beans,” unless some additional limiting information about the former jar is provided.

    the District Court Judge Davis and Federal Circuit agreed that the proper construction [of the term "memory for storing"] required that memory actually be used for storing the data collection application. In so holding, the courts looked to the specification and found that the described embodiments all had memories that actually included the application rather than just the capability.

    To truly appreciate the magnificently pathetic joke that this decision represents, one must remember the following: (1) the original decision came from the ED Texas where one of the attorneys on this very case famously wept on the stand (LOL!) to defend himself and his beloved banana republic from further humiliation (FAIL); and (2) the CAFC decision was written by Judge Newman, whose love for functional language is so deep and perfect that she believed (and no doubt continues to believe) that novel compositions could be claimed as compositions simply be reciting how they were made, without any knowledge or disclosure of the actual structure of the compositions.

    My gob, the defendants in this case must have collectively multiply orgasmed for a solid hour when they discovered who would be hearing the appeal.

  53. The Alappat court held that a proper construction of the claims at issue was to the specific hardware disclosed in figure 3. The court held that the claims, properly construed, would cover any apparatus that could perform the recited mathematical algorithm.

    This means, the later digression about the claims “reading” on a programmed general-purpose of the computer was complete dicta. The holding of the Court was that the claims actually read on the disclosed hardware. The court, in that section of its opinion, was rather criticizing the construction of the Board that did read the claims on a programmed general-purpose digital computer.

    What the court ended up saying was that a programmed general-purpose digital computer was not automatically excluded from patent eligibility simply by that fact, citing Benson.

    “Under the Board majority’s reasoning, a programmed general purpose computer could never be viewed as patentable subject matter under § 101. This reasoning is without basis in the law. The Supreme Court has never held that a programmed computer may never be entitled to patent protection. Indeed, the Benson court specifically stated that its decision therein did not preclude “a patent for any program servicing a computer.” Benson, 409 U.S. at 71, 93 S.Ct. at 257. Consequently, a computer operating pursuant to software may represent patentable subject matter, provided, of course, that the claimed subject matter meets all of the other requirements of Title 35. In any case, a computer, like a rasterizer, is apparatus not mathematics.”

  54. I just had a very long post swallowed. However, it describe in detail the Alappat holding. Gone. But to really understand Alappat and it would be quite useful to review the patent involved: US patent 5, 440, 676. Now look at figure 3. That is the rasterizer which is the subject of a claim. It is a specific hardware circuit that operates as a whole according to the mathematics set forth in the claims at issue. It is not a general purpose computer. It is not a special-purpose computer operating according to a sequence of instructions. It is specific hardware.

  55. To me, the most interesting thing about the Typhoon decision is that the court appears to hold that a computer memory is not just a device that can store any arbitrary data, i.e., a memory used for one thing is not the same as a memory used for another thing. According to Judge Newman, the act of storing data or an application in a memory turns the memory into something new and different. Therefore, anytime a memory is claimed as being “for” a particular purpose, that purpose must always be considered limiting.

    I believe that colleagues commonly use “for” limitations in computer related inventions inappropriately. A processor for doing one thing, is just a processor with an intended use. Any processor capable of doing that use should read on such a limitation. However, Examiners have been giving functional language in intended-use limitations patentable weight, and so there is a long pipeline of cases that have been inappropriately drafted and inappropriately granted in the Patent Office. Technically, this is a bad decision because it suggests that a memory must be somehow modified in order to store one set of data verses another set. However, this decision protects the status quo, such as it is, and for that reason I support it.

  56. PHOSITA,

    Quite in fact, Alappat is a case that explicitly includes software rather than firmware.

    This notion of the case involving firmware is pure horsehockey.

  57. the machine itself is unchanged.

    False – no machine is unchanged if you introduce new components. Those components can be in the form of hardware, firmware or software.

    Those are the facts. That is the law.

  58. “Signal” by Ned must mean “waiving a white flag.”

    The signal is that Ned has nothing to say – nothing useful and no BS. He is stumped.

  59. you know where you can go

    Even more LOLZ – what you think – especially as to where I can go, is even more meaningless than what you think of the law. You are still stuck at the bottom of the slippery hill, with no way to scramble past the inevitable conclusion that software is equivalent to firmware is equivalent to hardware.

    Your running is merely running in place.

    It is quite amusing watching you struggle, knowing that those who pay you to shill will be most displeased with your efforts.

  60. Ned,

    Your statement does not make sense. Alappat defines what is good law. The Holding that you refuse to accept is the lynchpin of what it means to have a special purpose machine. It is as if you cannot open your eyes and see what it directly in front of you.

    Whether what you think should be good law is a “you” problem, a problem of huge proportions. You must learn to deal with the law and not live in denial.

  61. It comes, it goes.

    From where? the ether? Or from the new machine, the computer “configuired to“.

  62. Ned,

    You do not get to decide what the “holding” of the court is when that very court has declared what its holding is.

    I have tried (politely) to explain to you that the decision on this factor was indeed a holding because it was necessary to defeat one of the arguments advanced by the government in its efforts to defeat the case. The court spoke on point, and that point is now law.

    Ned, this is a basic principle of law – you struggle in vain with your refusal to open your eyes and accept what you must.

    Any “bootstrapping” being done here is being done by you in your attemtps to salvage your ideology.

  63. Allappat, the rasterizer before the court was patentable because it had a "useful, concrete and tangible result." While there was a discussion that a programmed general purpose digital computer might be an equivalent of what was claimed, that was not critical to the holding because that was not what was claimed. Rather it was a particular machine, a rasterizer.

    This rasterizer was in fact not a programmed general-purpose computer, otherwise the discussion of equivalency would've been a non sequitur.

    There is no basis in the holding of Alappat that warrants the proposition that all general purpose digital computers running software are special purpose machines. Any such discussion is pure dicta because the rasterizer before it was not such.

  64. Ned’s deflection has been defeated – so on to other games, such as “stop it” or next, umbrage.

    Ned, I am afraid that the formidable assualt against your position leaves no defense for you at all. Your acquiescence of firmware must lead to an acquiescence on software, as that term is understand by those persons having ordinary skill in the art (quite in fact – those quotes leave no doubt at all).

  65. Ned,

    Replay again what the holding in Alappat was that you refused to recognize as a holding in our previous discussions.

    When you finally recognize what I told you was in fact a holding, you may then realize how your current struggles are in vain.

  66. Ned,

    Your reply is without substance and does not support your contentions.

    ANY machine “configured to” with software is a special purpose machine. See Alappat. See Ultramercial.

    You are reduced to making comments that support the view that you do not wish to hold. You have slid all the way down the slope and now must face the fact that software is equivalent to firmware is equivalent to hardware.

    Embrace Ultramercial. Embrace Alappat. Enbrace the facts. Embrace the law.

    Hush child, cease your pointless struggles.

  67. “I have no idea”

    LOLZ – the great MM “What the Sam-Hill” game.

    Keep running Ned, keep running!

  68. In contrast, a person uses the machine to run software. the machine itself is unchanged.

    There is no factual or legal basis for this statement.

    It is a paper table.

  69. Yes, the machine was a rasterizer.  It was a part that could be held in the hand.  Plug it in, and it operated as a rasterizer.  It WAS a special purpose machine.  

  70. It is essential and critical to the machine to make the machine operate at all.

    Wasn’t it Ping that made this very point in the Grand Hall experiment?

    The experiment that only 6 dared to take (take and fail)? MM, Ned and IANAE refused to address that experiment.

    Cowards!

  71. Alappat was a case involving firmware

    No. It was not. Nowhere in Alappat is that distinction made. You do not get to make up new facts after the case.

    Any “bootstrapping” being done is being done by you in trying to make a distinction that was not there (and even for agument’s skae, if there, is a distinction without a difference).

    Poor poor Ned – he just did not realize how slippery and how steep that slope was before committing to havign firmware as patent eligible subject matter.

  72. Alappat was a case involving firmware. The rasterizer there was a dedicated apparatus for use in a display. It was not a general-purpose digital computer, albeit, a digital computer programmed with firmware to execute the rasterizer algorithm would be an equivalent.

    Alappat cannot be used to bootstrap a general proposition that the use of any software on a general purpose the computer transforms the computer into a new machine. While it does so in a sense, it is transitory, nonpermanent. Software that is not automatically loaded and executed does not transform the machine. Rather, the machine is used to execute software.

    I support in principle the concept that firmware transforms the machine into a particular machine for the purposes of the MOT test. However, I opposed in principle extending this proposition beyond its facts into a general proposition that any software running on any general-purpose digital computer transforms the machine.

  73. Person, difference from what point of view?

    Firmware is software, certainly. But it is dedicated to the particular machine, stored permanently on memory that is fixed to the machine, loaded automatically and executed automatically. It makes the machine different. This is important, nay critical, if one is to consider whether particular software is defining a particular machine within the MOT.

    Firmware defines the machine. In contrast, a person uses the machine to run software. the machine itself is unchanged.

    The concepts are distinct, but important.

    The critical distinction about firmware, again, is that it is part of the machine. It is essential and critical to the machine to make the machine operate at all.

  74. From: link to support.apple.com
    Firmware is a combination of software and hardware. Computer chips that have data or programs recorded on them are firmware. These chips commonly include the following:
    ROMs (read-only memory)
    PROMs (programmable read-only memory)
    EPROMs (erasable programmable read-only memory)

    Firmware in PROM or EPROM is designed to be updated if necessary through a software update.

    From: link to seagate.custkb.com
    Seagate recommends applying new firmware to enhance the performance and or reliability of your drive.
    Like any software, firmware is improved over time and problems are also fixed

    From: link to grandstream.com
    Q: Where can I find the Firmware Version of my Grandstream device?
    There are two ways that you can see your unit’s firmware version depending on the product:
    For ALL Grandstream devices
    The software version is displayed on top of the Status web configuration page in a format similar to the following

    GET THE PICTURE?

  75. From: link to en.wikipedia.org
    IEEE Definition
    Institute of Electrical and Electronics Engineers (IEEE) Standard Glossary of Software Engineering Terminology, Std 610.12-1990, defines firmware as follows:
    “The combination of a hardware device and computer instructions and data that reside as read-only software on that device.
    Notes: (1) This term is sometimes used to refer only to the hardware device or only to the computer instructions or data, but these meanings are deprecated. (2) The confusion surrounding this term has led some to suggest that it be avoided altogether.”

    From link to forums.cnet.com
    Most comments recognize no substantive difference.

  76. From: link to qa.techinterviews.com
    Firmware is software that is programmed into chips and ususally perform basic instructions , like BIOS, for various components, Network cards, computer BIOS, etc… Software is a program that is is designed to run on a computer’s operationg system.

    From: link to differencebetween.net
    Firmware is basically a type of software, therefore making comparisons as if they are distinctly different would be wrong

  77. To Ned, since the reply links are not working properly:

    I do not know who this Ned Heller is, but he is clueless when it comes to the firmware/software distinction, because there is no meaningful distinction.

    From: link to differencebetween.com

    Firmware is a special name given to software that is embedded in an electronic gadget or device to make it run. Since it is a kind of software, trying to differentiate it with software may not be fruitful

    From: link to support.cybertronpc.com

    Most ATA RAID host adapters (except 3Ware Escalade, Adaptec 24×0, Areca, HP/Compaq, IBM ServeRAID, Intel SRC*/ICP Vortex, LSI Logic MegaRAID 150-4/150-6, and Tekram) turn out, upon examination, to not be real hardware RAID, but rather software/BIOS-dependent fakeraid. (I.e., missing hardware functionality is traditionally emulated inside idiosyncratic, undocumented, and proprietary software drivers, to hit low price points).
    …Setting up a software raid with Linux:

  78. Ned you might enjoy the newest case from the English Patents Court on 101 issues: abstract/software/mental act. Go to the IPKat blog Tuesday Nov 8 and look for the item about monotoring if the kids are accessing something inappropriate on the net. 103 seems to be a given. But i wonder if the inventor applied in the UK PTO (rather than the EPO) for exactly that reason.

  79. Don’t need to – I am waiting for you to try to explain a substantive difference between firmware and software, waiting for you to realize that no patent case spoke to any such difference and waiting for you to once again hoist yourself on your own petards.

    I am sure that I have the better position.

  80. no substantive difference

    Your mind has shown nothing as you run at every chance. Now, you try to run up a slippery slope.

    I am going to enjoy watching you squirm on this.

  81. If a GP computer uses software to transform it into a special purpose machine that operates with respect to this universe in a different way, that special purpose machine just might be patent eligible as a machine.

    A major crack (yet another) has appeared in Ned’s defense, as he can give no substantive difference between firmware and software. Just as there can be no substantive difference between firmware and hardware.

    The strands of the L_ie begin to fray and unravel.

  82. Bob, the scope of enablement should be very broad if the element claimed is old. At the point of novelty, however, stricter standards should apply.

    It appears the source of the wood was somewhat critical in the present case just as the source of starch, apparently, WAS the invention in Perkins Glue.

    One really has to re-read Perkins Glue carefully as it bears heavily on the wooden log case.

  83. If a GP computer uses firmware to transform it into a special purpose machine that operates with respect to this universe in a different way, that special purpose machine just might be patent eligible as a machine.

    What you continue to insist on, Night, is that a program running on a computer and not tied to any use is patentable as a machine. You do not require that the program be part of the machine as is firmware. You do not require any inputs or output to the computer. You do not place the computer into any context within the known universe. You simply state that information is transformed and that is enough. What information? You do not even identify that.

    Can’t you see you are patenting abstract ideas?

  84. Respectfully, I don’t think this issue has anything to do with obviousness or patentable subject matter. It has to do with a comparison between what was described and what was enabled with claim scope. These really are different issues.

  85. In other words your cheap attorney tricks to overbroaden an invention didn’t pan out this time? QQ moar, nothing sad about his failure to invent X. And there is even less sad about cheap attorney tricks not prevailing.

  86. 6–

    Condensed version:

    Moore either makes the very same error she blames others on the court for making, making her admonition rings entirely hollow–or, she doesn’t know how to write.

    Better opinions, please.

  87. You spend that last 3 years trying to keep me from understanding the SCOPE! The things you call me, the things you say. Justice is all I ever wanted. And now that I understand the “SCOPE” you want me to just dry up? No now I finally have been freed. I have vindication! And if all I get is a plug Nickle.. The People that did me wrong will get less! So bring it on. And thanks to the Poster that defined how he does what he does. Now maybe all the little people like me that he destroyed will come home to roost and Poo in his eye.
    Signed,
    Vindicated

  88. To bad that you can all throw Stones, and when I do you call me A Maggot, and smelly, and disgusting.Oh and lets not forget Ice Milk.
    60 Years and no one cared. I only hope I have 30 more. But those 30 won’t matter if you care or not. Because I don’t believe anything you say!
    I remember like it was yesterday. I don’t know Sally I just don’t know. But I do and that’s what matters!

  89. IANAE–

    It’s nice to see that your post shows that you sense the reality of the sad state of patent law.

    I will leave you to think about this further, unfortunately (fortunately?) I actually have work to do at the moment.

    But please read my comment more carefully, you have mischaracterized some things and have run with those mischaracterizations–although that might not actually matter in the end.

  90. IANAE: as I understand it all you do is try to get a patent for known substances and clog the PTO with endless patents for substances that are already known.

  91. Such evidence is always material to the scope of claim 1, even in view of evidence to the contrary from the spec, prosecution history, or testimony, and therefore CAN be “informative” of the meaning of terms in an independent claim.

    Ridiculous. If the spec, prosecution history or testimony indicate that claim 1 couldn’t possibly cover walnut, then it doesn’t and claim 2 is invalid for being improperly dependent.

    Otherwise, what’s the point of prosecution history estoppel, or indeed of anything we do in prosecution?

  92. The machines information processing machines are described at teh same level of funtionality as a hinge. A hinge is fine in a claim. A method with steps defines a scope of structural machines. That is fine.

  93. IANAE–

    I disagree with your first conclusion that added limitations in dependent claims ARE not “informative” of the meaning of terms in the independent claim.

    At the very least, the fact that the board of claim 2 is walnut evidences by implication that the board of claim 1 includes walnut boards.

    Such evidence is always material to the scope of claim 1, even in view of evidence to the contrary from the spec, prosecution history, or testimony, and therefore CAN be “informative” of the meaning of terms in an independent claim.

  94. Additionally, Ned, with information processing methods and machines that made to implement the information processign methods: What are the machines that are being precluded by these claims?

    You see, the situation has changed, a sea change. What is described in Benson and Haliburton is no longer how it works. You describe some abstract nonsense that does not correspond to the reality of the engineering.

  95. The discussion of what was invented vs the claim language is sadly lacking reference to the Supreme Court’s “claim as a whole” rule in Diehr. Falling back on “the underlying invention” is sometimes used as a way to ignore claim limitations. See, e.g., Cybersource decision of CAFC. Prosecuting attorneys have as much to worry about if the courts can ignore what they put into the claim as they do if the courts attribute significance to what they did not put into the specification.

  96. You are trying to cram information processing methods into this square hole.

    The fact is that information processing methods are the structure. The method is message.

    You want to go back to a pre 1930′s view of information and symbol representation. The world has changed. Iron age thinking must change.

    I do think you may have mad cow disease.

  97. I agree that this is one problem with claim construction–using restrictive claim construction to solve a problem that should be dealt with under another basis of invalidity. If a claim say “a fastener,” this term should be interpreted to encompass any and all fasteners (unless the term is defined in the specification otherwise). If the inventor has failed to enable all of the encompassed fasteners, then invalidate the claim on this basis.

  98. As Papa Bear stated someone’s been eating in my Bowl= Big bowl
    Mama Bear stated someone’s been eating in my Bowl= medium Bowl
    Baby Bear stated someone’s been eating in my Bowl and they ate it all up. Baby Bear’s Bowl is small. But funny thing they are all the same. They are all connected to each other. They are all the same. They all do the same thing. The only difference is they are different sizes. Of course they don’t fold. But they all do the same thing. And the “Utility” is holding food. I wonder if Baby Bear really belongs to Mama and Papa? Maybe I’ll just take a nap in one of theses Beds, and dream about finding my way out of these woods.

  99. I share the interest in knowing what happened in the moot and what the outcome was.

    As to the outcome of Nystrom v Trex nowadays, we are told that if equivalents are to be covered and are foreseeable they should be set out in the specification. So the draftsman SHOULD have set out the materials of which the board might be made, if not under previous practice then at least under current practice.

    Typhoon Touch is a useful decision insofar as it indicates that the needed algorithm cab be a verbal description and does not have to be a flowchart. As an exercise in claim interpretation, the length of time it takes to come to a conclusion about the meaning of keyboardless would probably surprise somebody working in the computer field and is perhaps over-elaborate but is not untypical of what one reads on both sides of the Pond. An Englishman, though would want to know not what the words mean but what the patentee meant by the words (there is a subtle but important difference)

  100. > It would have been less sad if the inventor had actually invented such an invention involving such a board.

    In my experience the inventor typically brings up one or two very detailed embodiments of the invention. Also the inventors I meet are so skilled that to them various variations are so obvious to them that they do not bother to mention it, just like most people do not discuss the air; it just is there around us all the time.

    It is then up to whoever is drafting the application to ask, does feature A have to be made of X or could it be made of Y? Each and every feature has to be reviewed for necessity, level of abstraction and more. This is not inventing on the part of the patent application drafter, simply getting to the heart of the invention.

    And that, sadly, appears not to have been reached here.

  101. Some might be bored by now, with boards. So, here’s a fresh tickle.

    There is also a lot of fun to be had with words in claims that mean one thing to a mathematician and another thing to the relevant PHOSITA, words like cylindrical, conical, co-axial or concentric. Bit of a lottery, eh, what the court decides they mean, and it can be of decisive importance for people like stent designers, who would design around and require legal certainty.

    What delivers more certainty in a claim than words of mathematical precision? What’a a poor claim drafter to do, to best serve the interests of his client? What’s a poor FTO opinion writer to do, to serve his client best?

  102. All the words in the post, and no simple statement of whether the result as affirmed or reversed?

  103. MM: “What if the dependent claims recited “wherein said board is walnut,” “wherein said board is treated to prevent wood-boring insect damage,” etc. These aren’t informative as to the meaning of “board”?”

    No, they’re not informative as to the meaning of “board”, because “board” literally includes all those and more. The board of claim 1 could still be plastic, steel, or composite even if the board of claim 2 is walnut. The dependent claims are just examples, and they don’t limit claim 1 any more than examples in the spec limit the claims.

    MM: “Where exactly does a “board” end and a “sheet” or a “stick” or a “block” begin? These things could matter.”

    That is a legitimately interesting question of claim construction. I would ideally resolve it based on suitability for the other limitations recited in the claim, failing an explicit definition in the spec. But also, I wouldn’t worry about it too much until an accused infringer comes along with something that is arguably the wrong shape to be a “board”.

    MM: “Patents are legal documents.”

    Fair enough, but if you had a contract or a statute saying that you can’t hit people with boards (or whatever), it would be pretty silly to debate whether that means wood boards or boards of any material composition. Even if a greater penalty is provided for boards made of walnut.

  104. Malcolm and IANAE have never discussed Halliburton or this topic.

    Wow, I’m impressed that you pay such close attention to my comments… or strive to anyway.

    However, I’m certain I’ve discussed claim construction and Halliburton with Ned (and others) before, numerous times. His characterization of my views is essentially correct.

  105. Restricting “board” to wooden boards is no more acceptable than restricting “body” to one-piece bodies. It doesn’t matter what’s in the dependent claims.

    With respect to the latter sentence, that simply can’t be true. What if the dependent claims recited “wherein said board is walnut,” “wherein said board is treated to prevent wood-boring insect damage,” etc. These aren’t informative as to the meaning of “board”?

    Note: I’m not saying the right decision was reached in the actual case. I’m just saying that the wrong decision was easily avoided and it doesn’t make me “sad” to know that I have to be careful when drafting claims and specifications to avoid having a court construe my terms unnecessarily narrowly.

    For what it’s worth, I understand the sentimement you expressed earlier:

    Must we point out that every single component could be made of any suitable material? Could be of any suitable color? Could be a little bit bigger or smaller? Does that really add anything to a spec addressed to a person of skill in the art?

    And my answer to those questions would be: it depends.

    Yes, but where does it end?

    It doesn’t. There will always be close questions of claim construction in some cases. But proclamations such as “dependent claims don’t matter” are pretty much equivalent to throwing a wrench into the machine, assuming that the goal is to maximize the rate of fair and reasonable outcomes.

    Lastly, I have no idea what you mean when you say that “a board is a board.” Where exactly does a “board” end and a “sheet” or a “stick” or a “block” begin? These things could matter.

    Patents are legal documents. That’s true in spite of the fact that a lot of computer-implemented claims look like they were written and examined by twelve year olds who seem to believe that the earth was created two days before they were born.

  106. Deluded, It is Malcolm’s and IANAE’s expressed position that claims not be limited to the corresponding structure and equivalents to preserve validity. If, after they are construed properly, if there remains a problem with 112, p.1, or with 101, 102, or 103, they would hold them invalid.

    While they have never discussed Halliburton, the point of Halliburton, even as discussed in that case, was the Supreme Court would not abide a narrowing construction to preserve the validity of the claims as argued by the patent owner and as construed by the lower courts. They construed the claim in that case for its full scope. But as such, the claim clearly claimed beyond the scope of enablement, as the inventors there had not invented all apparatus that could perform the recited function defined by the novel element.

  107. MM: “The professional skilled artisan and the professional skilled prosecutor RECOGNIZE THE INHERENT AMBIGUITY and if they use the term in the claim they remove the ambiguity (unless they’d rather “keep ‘em guessing”).”

    See, this is one of those times where I feel you’re being overly pedantic. It’s not a question of ambiguity, it’s a question of generality. A board is a board, whether it’s made of wood, composite, plastic, steel, or even frozen milk under the right circumstances. They all do pretty much the same thing in the same way, and we don’t need a million patents individually pointing that out.

    A builder probably wouldn’t understand the term to cover frozen milk, but for all we know the only reason for that is because it won’t stay frozen long enough to be commercially viable. Might make a half-decent igloo, though. We’ll deal with that issue when we find an accused infringer using frozen milk boards.

    Restricting “board” to wooden boards is no more acceptable than restricting “body” to one-piece bodies. It doesn’t matter what’s in the dependent claims. This claim literally recites a board. If the patentee wanted to claim only a wood board, it’s not like he didn’t have ample opportunity to do so. Let’s look at the right he asserts (the claim he drafted, construed using some sense), and decide whether he’s entitled to it.

  108. IANAE Or can we agree that construing “board” to require wood and exclude wood substitute is a little much?

    It’s not necessarily “a little much.” It may be “just right.” When I hear a builder talking about picking up some boards, I’m thinking he’s talking about wood boards but we’d both readily acknowledge the fact that he could (theoretically) be referring to boards made of composite materials, plastic, frozen milk, or steel. The professional skilled artisan and the professional skilled prosecutor RECOGNIZE THE INHERENT AMBIGUITY and if they use the term in the claim they remove the ambiguity (unless they’d rather “keep ‘em guessing”).

    An unqualified board should be anything board-shaped

    “Board-shaped.” Another awful term.

    It doesn’t make me “sad” that professionals need to learn to avoid using ambiguous terms (unless they are seeking to be ambiguous). It does make me “sad” that PTO Examiners don’t always recognize the ambiguity and force a fix at the prosecution level, and it makes me “sad” that the Federal Circuit can’t stop mucking up the law with respect to claim construction.

  109. This definition suggests that there may be something that could be called an “unclaimed invention.”

    There is. That’s the stuff you save for your reissue application. ;)

  110. That is the approach also advocated by Malcolm and IANAE.

    Really? Since when? Malcolm and IANAE have never discussed Halliburton or this topic.

    Ned, I think that you are alone in this.

  111. The understanding I have of “unclaimed invention” is anything that the applicant has provided in the application, but has not claimed.

    After two years (the window for broadening reissues), this material was dedicated to the public.

  112. When I learned patent law at the Examiner training classes and in law school in the 1970′s, I was taught that each claim is a separate invention. Basis is the language of 112¶2.
    I was also taught that, prior to the 1952 Patent Act, that claims were often rejected/invalidated as “lacking invention.” Again, I was taught that the 1952 Patent Act was passed, in part, to change this terminology.
    A patent application is submitted with one or more claims, each claim setting out what the applicants regards as his invention. If a claim meets the requirements of the patent statute (primarily 101, 102, 103 and 112), the claim is a “patentable” claim.
    I have read no cases that change any of this.

    One of my concerns about the new patent statute is the definition of “claimed invention.” This definition suggests that there may be something that could be called an “unclaimed invention.” It’s not nice to add more confusion.

  113. IBP, your basic premise is that since the inventor defined what he regarded his invention to be in the claims, the claims must be given their full scope for infringement purpose, or if that is completely unreasonable given the scope of disclosure, declare the claim invalid under 112, p.1 for failure of written description and enablement.

    What you say here, represents the exact holding in Halliburton, where the Supreme court would not abide functional language (or broad generic terms) at the point of novelty because they literly covered not only all equivalents of the disclosure, but also the independent inventions of others.

    That is the approach also advocated by Malcolm and IANAE.

    I understand it, and think it right in the abstract. But in practice, it might be better to simply apply the thinking of Rich here and construe the claims to cover the corresponding structure and equivalents.

  114. I see that I’m not the first commenter on this thread to re-post something from the lost Retractable Technologies thread…the plot thickens…

  115. Since Dennis raises afresh, with apparent approval, Moore’s dissenting opinion in Retractable Technologies, I feel it fair to re-post something I first posted on the Retractable thread:

    “In an earlier post, I stated my belief that there were both institutional and individual problems impeding progress in patent jurisprudence.

    With due respect to Judge Moore, it seems to me that in her written opinion in Retractable she directly contradicts one of the central points she is trying to make in that very same opinion.

    She opines that “The error in Retractable is the majority’s attempt to rewrite the claims to better conform to what it discerns is the “invention” of the patent instead of construing the language of the claim.”–that is, it is unacceptable under Phillips to “change the plain meaning of a claim term to tailor its scope to what the panel believes was the ‘actual invention’”.

    However, earlier in her opinion, she appears to suggest doing exactly that when performing a 112p2 analysis. In fact, the manner in which she discusses “metes and bounds” might call into question her understanding of the definite claim scope requirement of 112p2.

    This is what she said: “If the metes and bounds of what the inventor claims extend beyond what he has invented or disclosed in the specification, that is a problem of validity, not claim construction.”

    To my mind, the necessary implication of this statement is that in order to assess the metes and bounds of the claims, one must advert to an entirely extrinsic identification of “the invention”–i.e. to assess the metes and bounds of the claims, one must compare them to “what the inventor actually invented”–which is precisely what Moore advocates against doing.

    The “metes and bounds” are not judged WITH REFERENCE to “what the inventor has invented”–they DEFINE it! Moore herself says so in so many words: “It is clear that the words of the claim define the scope of the patented invention.”

    Should Moore’s words be construed to preserve the internal consistency of her opinion? Did she just conflate the “metes and bounds” requirement with the “enablement” requirement, or does she really not understand the “metes and bounds” requirement? As I understand it, the “metes and bounds” requirement demands that the scope of the claims be clearly and definitely defined, and as such, they can NEVER “extend beyond what the inventor has invented”, as stated by Moore.

    Whatever happened in this part of her opinion, Moore either expressed a misunderstanding of a basic patent validity requirement, or was very inarticulate about a key point of the opinion, or both. She has just exacerbated one of the very problems she claims to want solved regarding claim construction.

    The opinion isn’t totally useless of course–but this point does, IMHO, illustrate well an apparent lack of rigor in the expression of some CAFC opinions.

    While I applaud Moore for being on the right track, I call upon the CAFC to write better opinions.

    After all, they’re not writing blog posts.

    This part of her opinion, at least, is to my mind an impediment to the progress of patent jurisprudence.”

  116. MM: “Yes, it is an incredible burden on us prosecutors to write that “X can be composed of any material.”"

    Yes, but where does it end? Must we point out that every single component could be made of any suitable material? Could be of any suitable color? Could be a little bit bigger or smaller? Does that really add anything to a spec addressed to a person of skill in the art?

    Or can we agree that construing “board” to require wood and exclude wood substitute is a little much? An unqualified board should be anything board-shaped, and if that’s too broad for the patentee to claim, he’d better hope claim 2 fares better.

  117. it is also sad that such a major weight is placed on non-inventive boilerplate language

    Yes, it is an incredible burden on us prosecutors to write that “X can be composed of any material.”

    C’mon, Dennis.

  118. This is all rather simple:

    Old elements of a combination can be and ought be given a liberal construction.

    A new element needs a narrower construction, lest the claim be construed to encompass subject matter the inventor not only did not describe, but did not enable.

    Such has been fundamental law for ages. The Federal Circuit wrestles with it because it refuses to recognize the difference between old and new elements of a combination.

    Simply review the history and background of 112, p.6. Read In re Fuetterer, particularly at note 11. The CCPA (Rich) knew that when a claim was functional at the point of novelty, the Supreme Court required that the claim be construed to cover the corresponding structure and equivalents, citing Westinghouse v. Boyden Power Brake.

    Why?

    Because to not construe such claims to cover the corresponding structure an equivalents would permit the claim to LITERALLY cover the independent inventions of others, a violation of the very purpose of the patent law to promote the progress in the useful arts.

    I understand the Supreme Court has asked the government to file a brief on this very issue in a case where the Federal Circuit held a claim to be infringed under the DOE when the equivalent was itself was patented. That decision makes a mockery of 200years of Supreme Court jurisprudence in this area.

  119. shhhhh Inviting, that thread contained a link to the Kleenex delivery to Mr and Mrs Ned Heller and Malcolm Mooney as to the following:

    In Typhoon Touch Technologies, Inc. v. Dell, Inc., __ F.3d __ (Fed. Cir. 2011)(Newman, J.), the court reversed a trial court’s invalidity ruling that means-plus-function claims referencing an algorithm are invalid where no algorithm is disclosed. The panel accepted the argument of the appellant-patentee “that the specification contains adequate algorithmic criteria… to perform the computer-implemented function”. Typhoon Touch, __ F.3d at __

    112 p6, just not what it is all cranked up to be.

  120. Invention as claimed” – like that phrase was not worn through the ground on this blog!

    A Kewpie Doll to the first poster that identifies the blogger who used that phrase (with identification of the target poster of who was the recipient).

  121. “The sad thing about Nystrom’s patent is that he would have easily won the case if the patent attorney who drafted the application had thrown-in language indicating that a “board” could be made of various materials, not just wood cut from a log. ”

    It would have been less sad if the inventor had actually invented such an invention involving such a board. Since they didn’t I find that story not sad at all.

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