Federal Circuit Again Declines to Revisit Cybor

By Jason Rantanen

Retractable Technologies, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011) (CAFC en banc denial) Download 2010-1402 en banc order
Before Rader (dissenting), Newman, Plager, Lourie, Bryson, Linn, Dyk, Prost, Moore (dissenting), O'Malley (dissenting), and Reyna.

As in the past, the Federal Circuit has again expressly declined an invitation to revisit its 1998 en banc holding in Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 that claim construction is reviewed de novo.  Once again, however, that decision was not without dissent.  Both Judge Moore, joined by Chief Judge Rader, and Judge O'Malley wrote to express their view that Cybor should be revisited. Professor Tun-Jeng Chiang expresses his views on this issue below.

In addition to recommending that the court reconsider the issue of deference, Judge Moore's dissent emphasizes the problematic nature of claim construction review by the Federal Circuit itself: on the one hand, "[c]laim construction is the single most important event in the course of a patent litigation"; on the other, "our rules are still ill-defined and inconsistently applied, even by us."  Moore dissent at 1.  This problem is especially acute in Retractable Technologies: "Retractable simply cannot be reconciled with our en banc decision in Phillips."  Id. at 4.  Here, Judge Moore asserts, the majority applied its own approach to claim construction, not that of Phillips, "[c]hanging the plain meaning of a claim term to tailor its scope to what the panel believes was the actual invention."  Id. at 6.  This is not an isolated instance, Judge Moore points out, but is a common practice that points to a fundamental split on the court about the nature of claim construction: a disagreement over whether claim scope should be limited to "what the inventor actually invented" or instead construed according to the plain meaning to one of skill in the art, a meaning that may be informed – but is not dictated – by the specification.

Note: In  support of her view that the Federal Circuit's own claim construction is ill-defined and inconsistently applied, Judge Moore cited the views of several commentators who "have observed that claim construction appeals often lead to frustrating and unpredictable results for both the litigants and trial courts," including Dennis's post on the panel decision and Hal Wegner's post on Arlington Industries v. Bridgeport Fittings on IP Frontline

69 thoughts on “Federal Circuit Again Declines to Revisit Cybor

  1. I really got to hand it to you, anon.  Expressly!!!!!

    That is the point.  There is NOTHING in the statute itself that addresses the very point of Halliburton.  The statute itself is consistent with Halliburton and with Gibbs.   I have given you the history and origin of 112, p. 6.  As proposed to Congress, by Rich, the proposal WAS specifically intended to overturn Halliburton.  But that is NOT what Congress enacted.  Please read the legislative history from our article, posted above.
     Please!  It is critical to understanding the statute.

    Frederico had the final say on 112, p. 6.  He and the other counsel in Congress, who we identify, took what Rich proposed and rewrote it.  As he had drafted it, the Rich proposal would have sanctioned all forms of functional claiming including single means claims.  That was an anathema to the PTO.  Did you expect Frederico to take that lightly?  

    Finally, what 1952 disctrict court case are you talking about?

    Faulkner v. Gibbs is a Supreme Court case.  

  2. By the way, the appropriate case cite for the Faulkner v. Gibbs after enacted 1952 law case is 199 F.2d 635 (1952).

    There is no discussion of “point of novelty” in that case.

  3. If you are using Faulkner v Gibbs to buttress another decision that was expressly overruled and that other Supreme Court decision was Prior To the legislative change, your argument is stillborn.

    A district court on remand, applying the then in place law does not help you, and only shows that you are misapplying law, lending more weakness to your positon, rather than the strength you think you have added. Further, the reference to Halliburton in the 1952 District Court case simply is not on point to the current discussion.

    At all.

    I suggest you take a mulligan before you pass it back to A New Light.

  4. 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.

  5. A new light, you agree that the statute specifically authorizes the use of functional claiming in combination claims.  The question is whether Halliburton has been overturned.  

    Now consider that the Supreme Court, in Faulkner v. Gibbs, said this:

    "The controversy here concerned the validity of Patent No. 1,906,260, issued to respondent, May 2, 1933,
    and its alleged infringement by petitioner. The District Court found the patent to be valid and infringed. The Court of Appeals for the Ninth Circuit affirmed, 170 F. 2d 34 (1948). Being moved by the petition for certiorari that there was a conflict with Halliburton Oil Well Cementing Co. v. Walker, 329 U. S. 1 (1946), we granted certiorari.

    The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there held the patent invalid because its language was too broad at the precise point of novelty. In the instant case, the patent has been sustained because of the fact of combination rather than the novelty of any particular element."

    Shortly after this case, 112, p. 6 is enacted authorizing the use of functional claiming in combination claims.

    What are we to understand, that Congress intended to overturn Halliburton or to enact
    Faulkner v. Gibbs?

    Once one takes a full look at what happened, as we describe in Rosetta Stone, there is nothing in the history of 112, p.6 that is inconsistent with enacting Faulkner v. Gibbs or inconsistent with Halliburton still being good law.  That is a simple, undeniable, fact.

    Your turn.

  6. Ned,

    I will answer your simple question of “Can you see the difference between claiming old structure and new structure?”

    Yes, I can see the difference. But I am not sure your question is pertinent, as the real question is not a difference between claiming old structure and new structures, but rather claiming a new combination of old structures. I reject your premise that a point of novelty analysis forbids just where functional claiming is pertinent. I think that you are making this point of law up to suit your beliefs. The correct view in my mind is whether functional claiming is allowed (very much a simple yes or no question, quite apart from you philosophical crusade, and I think as aptly pointed out, quite apart from the conclusion of the paper that you had a hand in authoring).

    I am a firm believer in the inherency doctrine of what an old structure has in regards to inherency. But this is quite different than any inherency in any combination of old structures.

    To forestall the next question, I believe it a clear error to believe that a computer inherently has all possible future changed configurations.

    I believe that the so called “House” argument is completely fallacious and unworthy of even appearing on a patent blog.

    To me, that is too much akin to the Morse “all future modes, however invented” position. A computer may be designed to be changed, but that does not pre-empt all those future changes, nor does it make the computer inherently contain all such future configurations.

    This is just too much stealing from future inventors.

    This is also very much akin to the “play-pen” of molecules and molecular bonding. The “play-pen” of avaialable molecules and the existence of how molecualr bonding are each all known. This clearly does not mean that new configurations of molecules are beyond the reach of the reward of patents.

    Note that these analogies are not my own and have appeared on these boards time and again. I just have not seen anyone provide refuting arguments that overcome the positions established. I amquite willing to entertain such arguments, but I am nnot willing to entertain naked assertions and blanket statements of conclusions to the contrary.

    Lastly, I think you are applying your desired state to the law that overturns Haliburton. Whether or not the new law adequately addresses any such “pont of novelty” and functional claiming is a completely different matter than your impostion of re-installing a case that was overturned. Whether you think I should personally “get over it” is of course an opinion that you quite frankly have a right to have, but it is merely an opinion, and does not move the argument as you seem to think it does.

    We have discussed this tendency of yours to over-read law at length and I do not think us revisiting it again will change anyone’s mind, so I will leave you with the offer to agree to disagree.

    As I do not wish to be disagreeable or hostile I think we are done with this discussion, that is, unless you can address the various analogies previously presented.

    And please, Malcolm, this is not addressed to you, so spare everyone your not so clever “click” response or accustion of sockpuppetry, or need for medication or whatever other vacuous reply that may enter your mind. I think the boards have seen quite enough of that type of mindlessness.

  7. Dear Mud,

    Whether you find my post “boring” or not concerns me less that your admonition not to “squirm” or whether you think my post lacks the ability to elicit sympathy.

    I politely decline to join you in your desired pig sty unless you can rephrase your request in a clear and non-condescending manner. And even for argument’s sake that taking such a tone is a valid argument, you are simply in no position to be take such a tone.

    In other words, grow up. This blog does not need another juvenile smart-mouth.

  8. Agreed on the Federal Circuit legal standard.
     
    But,  don't just cringe a bit when the statute demands "clear" and the Federal Circuit says clear means "not impossibly ambiguous?"

  9. that the claim term is not clear. If the claim term is not clear, under the statute, it is indefinite.

    Except that is not the actual legal standard, now is it?

    Isn’t the actual legal standard something along the lines of irresolutely ambiguous? After all, cannot even dispassionate and reasonable people disagree on interpretations? Is not the very nature of langugae itself imperfect?

    Do you not seek an unobtainable standard?

  10. A new light, just a small question to you. Can you see the difference between claiming old structure and new structure?

    With old structure, the particular structure that could perform the recited function was largely irrelevant. Any structure that could perform the recited function not only was intended by the claim, but was intended by the law prior to 1952. In other words, such means plus function elements were construed to cover the corresponding structure recited in the specification and equivalents, where equivalents were construed very broadly.

    With new structure, however, the law is to the contrary. What the law provided prior to 1952 was the corresponding structure described in the specification and equivalents, but with equivalents narrowly construed.

    The Halliburton court decided that when new element in a combination was cclaimed using functional language, the claim was inherently indefinite. I personally do not think there’s anything in section 112, paragraph 6, which overturns Halliburton. If this is the case, I think the use of functional claiming is quite permissible in a combination claim when element being claimed is old, but a violation of Halliburton when the element is new.

  11. anon, “few have patent basics.”

    Well I think there’s a remedy in Congress recognizes it. What we need is to funnel patent cases to District Court judges that like patent cases and who do have a basic understanding of patent law.

  12. Inviting, on “legal fact,” what precisely did you have in mind? I know in interpreting documents in general the parol evidence rule would prevent testimony about the construction of the contract which should be clear on space. If there is an ambiguity, parole evidence may be introduced. But in a patent, if there is an ambiguity, what does this mean?

    What it means, it seems to me, is that the claim term is not clear. If the claim term is not clear, under the statute, it is indefinite.

    So what are we doing if we have allow experts to testify on the meaning of patent terms?

  13. Boring.

    Lacks the ability to elicit the sympathy you’re looking for.

    Try again.

    This time tell us why we should think that the ordinary use of prior art elements should be granted “inventive” status simply because more than one said element is made ordinary use of. Try not to squirm.

  14. A better example would be the tax code.

    Can you imagine the simplicity possible that will never happen because people are paid to not be clear?

  15. A clue, a strong glue that a claim is indefinite if the Federal Circuit disagrees with the District Court on the District Court’s construction of the claim, provided that the District Court properly applied the canons of construction correctly.

    Ned, I see that as too much a provisio to accept, with judicial discretion basicly meaning that a District Judge does whatever they want to do and so few seemingly having a grasp of patent basics.

    Heck, we cannot even have the CAFC seeing eye to eye on patent law. How can we expect District Judges to uniformly apply anything?

    I think we need to look elsewhere if we want to find a beacon of steadiness when it comes to claim interpretation.

  16. Ned–

    Your suggestion that they are resolving QoL’s is conclusory.

    I mentioned something some time ago on another thread that met with no recognition from anybody–the concept of a legal fact.

    It is not my original concept, it was embedded in me in law school 15 yrs ago.

    Does nobody else recognize this concept?

    Anyway Ned, there are just overwhelmingly many practical reasons for doing CC at the district level, and according more deference thereto, IMHO.

    I totally agree with you that we have to be stricter with claims, and that they have to be clear in the first instance. Absolutely. You know how many non-infringement opinions I’ve done where I could have totally destroyed the claim at issue were it not for the “what the inventor actually invented” paradigm?

    Like Mooney said upthread, it can effectively render any non-final claim analysis pointless, and therefore only really strong, unavoidable 112 errors currently go into an opinion–i.e. essentially none.

  17. Get a life, Word–everybody here knows it’s not the current law.

    Yours was indeed a pathetic and failed attempt at disapprobation.

  18. Regarding your complaints about Malcolm, IANAE and me on a personal level, my suggestion to you is get over it.

    Says the man who has a coniption everytime someone takes one of his little pet theories and turns it on its head.

    Ned Heller, the ultimate hypocrite.

  19. The get the system back on track, we have to require that the claims be clear in the first instance

    Impossible, given that people are paid to not get it clear.

    This blog is a perfect case in point.

  20. Inviting, you said “1) CC should be treated more like a QoF for appellate purposes, and more deference should be given to CC at the district level.”

    Why?

    The only reason district courts should be given deference is if they are resolving factual issues. When they are resolving questions of law, they should be given no deference. And when they are dealing with the patent that has a record, and with claims that are supposed to be clear, how can there be a question of fact?

    To the extent that claim construction devolves into a contest of expert testimony on what one of ordinary skill in the art would understand a term to mean, I think we have a problem. The question in my view should always be resolved by what the specification said the claim term meant. If that in turn is not clear, then I suggest that the claim cannot be construed and the claim is indefinite.

    A clue, a strong glue that a claim is indefinite if the Federal Circuit disagrees with the District Court on the District Court’s construction of the claim, provided that the District Court properly applied the canons of construction correctly. What the Federal Circuit should be doing primarily on appeal is to determine whether the District Court followed the law. If he did, but even so the Federal Circuit disagrees with the holding of the District Court, I would strongly consider not construing the claim differently, but simply holding the claim invalid.

    We cannot expect patent applicants to draft claims clearly if the Federal Circuit goes out of its way to approve of claims which cannot be construed without a court battle, and even where different judges disagree on the result.

    The get the system back on track, we have to require that the claims be clear in the first instance. The most serious probably have today in patent law, in my humble opinion, is indefinite claims.

  21. support my continuing contention that

    Except that no matter how “pretentious” you are about it, the preamble is not always limiting.

    No one died and made you absolute ruler – so stop acting like it.

  22. My views on Rich have changed the more I really got into the 101 issue.  I knew he and Frederico did not see eye-to-eye on 112, 6.   One of the reasons I felt inspired investigate the issue in the first place was because of Valmont and Donaldson.  I felt that means plus function elements in combination claims should be interpreted broadly.  I wanted and still wanted Donaldson reversed.  

    Regarding undue breadth.  That vice occurs only when the novelty is in the one element.  But, as the history of 112, 6, shows the drafters never intended to sanction functional claiming in single means claims just as they are not sanctioned in any other single element claims such as with our manufacturer claims or composition of matter claims. They
    intended to sanction functional claiming ONLY in true combination claiming where to novelty was in the combination and not in the single element.

    A new light, you constantly bring up the issue of "the claim as a whole." That is applicable when considering obviousness, and when considering patentable subject matter. It is not applicable when considering novelty. It is further not applicable when one is determining whether the claim is to a true combination or a faux combination.

    Regarding your complaints about Malcolm, IANAE and me on a personal level, my suggestion to you is get over it.

  23. BTW, the reasoning used in Moore’s dissenting opinion with respect to point (2) above can be beneficially used to support my continuing contention that

    THE PREAMBLE IS ALWAYS LIMITING.

  24. Well, Moore (and by association Rader) gets it correct IMHO on 3 important points:

    1) CC should be treated more like a QoF for appellate purposes, and more deference should be given to CC at the district level

    2) CC should not be undertaken with the goal of preserving validity (and therefore, by implication less deference should be given to PTO determinations), and the “what the inventor actually invented” paradigm should be discarded as being in violation of Phillips

    3) there are glaring deficiencies in patent jurisprudence.

    Number (3) is by far the most important–you have to recognize that there is a problem before you can do anything else.

    O’Malley essentially agrees, but disagrees that the “what the inventor actually invented” paradigm, as used in Retractable was in violation of Phillips. O’Malley’s disagreement on this point appears to me to be insubstantial–Moore lays out a reasonable description of what actually happened, and makes some substantive observations to which O’Malley doesn’t respond. Nor does O’Malley present any of her own, she just seems to conclude in vacuo that “what the inventor actually invented” as applied in Retractable comports with Phillips. Hollow and conclusory, with no reasoning.

    O’Malley does, however, seem to agree on (3), the most important point.

    You can see these judges waking up, some more quickly than others–unfortunately, for one reason or another, they haven’t really been able to do much about any of the mess that currently exists. There seems to be a pattern emerging in CAFC opinions of a growing awareness of, and dissatisfaction with, the body of patent jurisprudence–not to mention that penned by SCOTUS.

    Hopefully they can get their act together and actually get something done, sooner rather than later. I don’t even think it’s merely a matter of waiting for the perfect case to come along, either–there are other problems impeding progress, both individual and institutional.

  25. This we felt automatically prevented the claims from the vice of functional claim at the point of novelty.

    There are a coupls of “points” that I feel compelled to make with this statement.

    First, automatically, only if claims, including combination claims are read as a whole, in other words there is no parsing to find some such “point of novelty,” because the combination claim as a whole is the “point” of novelty. Those whose position dpeends on parsing claims, to use the government’s magic microscope, are wielding a fallen doctrine, an inappropriate doctrine.

    Second, “the vice of” reverberates the very interesting question that Clark Kent raises. The reference cited by “Ned Heller” does not treat “functional claiming” as a “vice” at all, but rather, that conclusion points out that functional claiming is a desirable claiming tool, one abused by the courts, that is, the anti-patent courts seeking to diminish the strength of patents, and one abused by the likes here of “Ned Heller,” who in that article put his name to that conclusion. That conclusion also drives that other doctrines have evolved and actually seeks to strengthen the acceptance of functional claiming, not disparage it.

    Further, those, like IANAE, who dress in sheep’s clothing pretending to be the patent system’s friend while seeking to diminish the meaning of a patent can only be labeled as anti-patent. The “Ned Heller” here is on a crusade to villify functional claiming. The “Ned Heller” here aligns with such people, and this, to me, gives me pause as to question just who this poster is. I have my doubts as to this “Ned Heller.”

    There are other clues.

    The willingness to denigrate his own name with specious arguments and obviously incorrect readings of case law, or not understanding the procedural position of important cases, like Tafas, and far too many obvious games that only diminish credibility.

    The alignment of these types of games with the games played by “Malcolm Mooney” and IANAE; and to see their “virtue” where there is none.

    The blind (and it is indeed blind) admiration of such as “Malcolm Mooney,” who also, rarely treated me poorly, but no doubt treated others and law very poorly. The only poor treatement I received from “MM” was to be accused of being someone else, but this seems standard protocol as “MM” does this to anyone who disagrees with him.

    I once held meaningful discussions with a certain Ned Heller, but some time back those discussions turned into chasing games and quashing misrepresentations of the sort that a scholar that worked with Mr. Hofmann would find appalling, the types of games that Malcolm and IANAE regularly engage in, when they engage at all.

    This “Ned Heller” is bent on a mission and is willing to subvert all to achieve that mission. There are no “endless debates” going on because this “Ned Heller” and Malcolm and IANAE do not engage in debates. They do not address issues and questions raised against their position. It is not a debate to step up on a soapbox, give your monologue, and then evade reaonable questions pointed at that monologue, only attacking not only the persons raising those questions, but also engaing in character assassinations of past champions of the opposing viewpoint. And while Ned and Malcolm are not alone (I do notice the villification of Stevens and Douglas), those positions do tie into the debate in a more reasonable and pointed manner than the naked aggression I have seen in the anti-Rich positions (and I would point out that the anti-Rich attacks do not align with the cited reference’s thankfulness expressed to Rich).

    No, there is a mean, almost desparate quality to the personal attacks. And given the lack of any real debate, such attacks can only signify a scorched earth, win at any means possible approach and not one indicative of being willing to, let alone able to, use reason and to listen without looking for point s to misrepresent and twist which I personally find unacceptable, and why I rarely engage anyone on this blog anymore.

    As for any such proposal to the AIPLA, given the posts here, I doubt that either Malcolm or IANAE are even eligible to vote. And for the sake of argument, if they would be able to vote, Malcolm would (and has repeatedly, for years, in fact) strongly disapprove of such. I am not sure how IANAE would feel about this. However,
    Rader thinks this whole 101 assault has gotten way out of hand, and would likely agree that 112 is a more appropriate – but distinctive manner of judging a claim.

    I realize this is a long post, but Malcolm would surely **click** and not listen the moment a view is expressed that he does not like anyway, and this post needed to be long in order to clearly express my thoughts.

    Take them as you will, but perhaps you will take a moment to think about them before discarding them.

  26. Clark, we had endless debates about what to do.  I personally favored a simple repeal, but wiser heads cautioned against that.  The primary problem we were focused on was indefiniteness.  We felt, the best way to handle that, in the end, was to simply allow the claims to cover the full scope they said the covered, but require enablement, etc.  This seems to be the European practice.

    Note that we also concluded that the only thing the statute truly authorizes is the use of MPF in combination claims
    where the novelty is in the combination, not in the single element.  This we felt automatically prevented the claims from the vice of functional claim at the point of novelty.

    You should know that we present the proposal to the AIPLA patent law committee.  They voted in favor.

    I know that Malcolm and IANAE would strongly approve.  So, perhaps, would Rader.

  27. Who wrote the conclusion of 23 RUCTLJ 227? It certainly does not sound like the same Ned Heller posting here. Who is the doppelganger?

    The conclusion:
    “The last paragraph of section 112 was intended to sanction the use of means-plus-function language in claims and provide a scope commensurate with the invention. The statute was based on principles of developed from cases that involved nonstatutory subject matter and claim overbreadth. When enacted, the statute was a thoughtful response to the mistreatment of function claims by the courts. However, the patent system has evolved to address in other ways the concerns that faced the drafters of section 112, last paragraph. Additionally, when construed in the context of our contemporary patent system, the scope clause serves to indefensibly restrict the scope of the claim to less than the invention and inject a dose of uncertainty as to what is protected by the claim. While functional claims remain desirable and provide advantages to applicants for patents, the scope clause does not. Hence, section 112, last paragraph, should be legislatively amended to delete the scope clause.”

  28. actually ned it’s funny you were published right before an article that actually should matter to everyday people:

    Mobile Data Terminals and Random License Plate Checks: The Need for Uniform Guidelines and a Reasonable Suspicion Requirement Notes and Comments

    That was a great article I read a few years back. Still the concerns noted therein go unheeded.

  29. condemned, even under 112, p. 6, is single means claims, or their equivalent, old combinations where one element is improved and that element is expressed in functional language.

    Single means claims is expressly NOT equivalent to old combinations with improvements expressed in functional language.

    There is no logic in making this jump.

  30. simple, all you have to do is compare what Rich proposed to Congress and what emerged. They are radically different. Yet Rich describes the effect of the new statute as if his proposal was enacted, not 112, p.6 as it emerged from Congress.

    I suspect the final draft was made by Federico.

  31. I will modify the above conclusion with this:

    The novelty has to be in the combination, but the combination may have a new element. What remains condemned, even under 112, p. 6, is single means claims, or their equivalent, old combinations where one element is improved and that element is expressed in functional language.

    The point of the statute as it emerged from Congress was not to overturn Halliburton, but to clarify that Continental Paper Bag was still good law. The net is that the use of functional language in combination claims is sanctioned, but not where the claim is like the claims in Perkins Glue and GE v. Wabash, where the novelty is in the one element.

  32. Would it be considered “snarky” if I were to say that this post was far too long and was not read, and compare the post to a request for help to an ancient city-state of Greece?

    Or would a simple “thank you” suffice?

    (thank you)

  33. Also consider this from Rosetta Stone:

    “The Court found the claim objectionable under the doctrine of General Electric Co. v. Wabash Appliance Corp., in that a claim cannot describe the “most crucial element of the `new’ combination in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus.”(186) Recognizing the doctrine had previously been applied to product claims or single means claims, the Court held that this statutory requirement of clear description of claims also applies to a combination of old devices, thus erasing the distinction it believed was drawn by the Ninth Circuit when that court denied rehearing.(187) The Court’s holding in this regard can be reduced to the following syllogism: A patentee cannot use functional language at the point of novelty; a new element is the point of novelty when it is added to an old combination to form a new combination; thus, a patentee cannot use functional language to describe a new element added to an old combination. The fault here lies in the minor premise because the point of novelty of a new combination is the combination itself, when invention was exercised in bringing the elements together, not any one of the elements considered separately. In this fashion, the relevant claims are analogous to those at issue in Continental Paper Bag Co. and should have been upheld. However, the Court distinguished that case because validity there was not at issue, and the claims, presumably, must have described the physical and operating relationship of all the crucial parts of the novel combination.(188) ”

    link to heinonline.org

    The reason for the statute becomes clear. The drafters wanted to make sure that when the novelty was in the combination, functional language was sanctioned, even if, as in Continental Paper Bag, the combination was a new combination.

  34. A relevant excerpt from the Rosetta Stone article by Rudy Hofmann and yours truly.

    link to heinonline.org

    In 1948, the Supreme Court granted certiorari to the Ninth Circuit in the case of Faulkner v. Gibbs.(194) The Court granted review to resolve a conflict with the upholding of the claims in the Ninth Circuit and the decision in Halliburton.(195) The Court, per curiam, affirmed and wrote the claim in Halliburton was invalid because it “was too broad at the precise point of novelty.”(196) In the present case, the patent was sustained because of the combination rather than the novelty of any particular element.(197)

    IV. THE STATUTORY CHANGE REGARDING FUNCTIONAL CLAIMS

    The Patent Act of 1952 was enacted in part as a response to the harsh attitude toward patents in the thirties and forties, and as a reaffirmation of the merits of our patent system. The Act sought to improve the law and settle the controversy in regard to the social and economic rationales for the patent system.(198) The drafters planned and carried out comprehensive programs of study and discussion of the patent statutes in which the drafters always maintained the fundamental principles of the patent system.(199) The drafters recognized patents are distinct from obnoxious monopolies and are a reward or an inducement to bring forth new knowledge.(200) It was against this background that the Patent Act of 1952, and consequently section 112, was born.

    In the beginning, the patent community sought a legislative solution to define the test for invention,(201) which had never been statutorily defined, and to restore the doctrine of contributory infringement.(202) The House Subcommittee on Patents, Trade-Marks, and Copyrights conducted hearings, but otherwise took no legislative action. As a result of the discontent in the patent community, the House Subcommittee became interested in a comprehensive amendment and codification of the patent laws. The House Subcommittee sought the assistance of Pasquale J. Federico to revise and codify the patent laws.(203) Mr. Federico prepared a draft of the codification within six months of the request, and submitted the draft to the House Subcommittee in January, 1950.

    Shortly thereafter, Henry R. Ashton, chairman of the National Council of Patent Law Associations (N.C.P.L.A.), sought to coordinate the efforts of the various regional patent law associations with regard to the “Federico Amendments.” To that end, the N.C.P.L.A. established a Coordinating Committee, which formed a two person Drafting Committee. The Coordinating Committee appointed patent attorneys Paul A. Rose and Giles S. Rich(204) to serve on the Drafting Committee. The Drafting Committee, including a virtual third member in Mr. Ashton, was given the task of preparing from the Federico Amendments a codification that contained only changes on which substantial agreement of the patent community could be obtained. Over two-thousand copies of the Federico Amendments were circulated, and every interested person or organization was invited to provide suggestions to the Drafting Committee. The Drafting Committee, with Mr. Federico and Charles J. Zinn, the House Subcommittee Law Revision Counsel and codification expert, prepared a redraft of the Federico Amendments for the House Subcommittee.(205) Subsequently, House Subcommittee Chairman Joseph R. Bryson introduced the first bill, H.R. 9133,(206) with regard to this effort, on July 17, 1950.

    The first bill addressed the inconsistent treatment of functional claims by the courts primarily by separating the clauses of Rev. Stat. 4888 relating to the description and to the claims into paragraphs one and two of section 112. This change was effected in response to several decisions, most significantly Halliburton, that confused the requirements for the description with the requirements for the claim. In the former statute, these requirements were two clauses in a single sentence. The separation of the two clauses was intended to make clear that the description must be in full, clear, concise, and exact terms, but that the claims need only particularly point out the invention. Additionally, the requirement for disclosing the best mode for carrying out the invention was made applicable to all inventions to provide further clarity in the description. Specifically, section 112, as it appeared in the first bill, provided:

    The specification shall contain a written description of the invention,

    and of the manner and process of making, constructing,

    compounding and using it, in such full, clear, concise, and exact

    terms as to enable any person skilled in the art or science to

    which it is most nearly connected, to make, construct, compound,

    and use the same, and shall set forth the best mode contemplated

    by the inventor of carrying out his invention.

    The specification shall conclude with one or more claims particularly

    pointing out and distinctly claiming the subject matter

    which the applicant regards as his invention.(207)

    The bill was introduced at the end of a Congress for the deliberate purpose of getting it into wide circulation in a form most likely to attract serious consideration. Criticisms and suggestions came to the Drafting Committee from patent groups throughout the country.

    The last paragraph of section 112 originated from such a suggestion. The Milwaukee Patent Law Association suggested to the Drafting Committee that an additional section relating to functional claims be included in the bill. Mr. Ashton recommended that suggestion to the Drafting Committee in a letter dated October 26, 1950.(208) The letter recommended that the additional section should follow section 103 in the bill and contain the substance of the following:

    Where the essence of the novelty of any claim is recited in terms

    of means or method for performing a specified function without

    the recital of structure or acts in support thereof, the claim shall

    not be invalid because of its functionality, but shall be construed

    to cover the corresponding structure or acts described in the

    specification and equivalents thereof.(209)

    The proposed section addressed the holding in Halliburton, where the Court proscribed the use of functional language at the point of novelty in a combination claim. The proposed section also could have been directed to the claims at issue in General Electric Co. v. Wabash Appliance Corp., where the patentee distinguished the invention over the prior art with a statement of its function. The proposed section would have sanctioned a single means clause, such that the patentee could obtain protection for a function or result never before achieved. Arguably, only functions and results never before achieved would be covered by the proposed section, and that the claim itself would be required to define over the prior art, as suggested by the phrase: “Where the essence of novelty of any claim.” The proposed section would have applied to both apparatus claims and process claims.

    The scope clause limited the patentee to the device disclosed in the specification and its equivalents. The effect of the scope clause in the proposed section would have been to throw the system of claiming back into the middle nineteenth century where an applicant simply named broad features accompanied by such words as “substantially as set forth.” The claim would merely call attention to what the inventor considered the salient function of the invention. This would be novel in as much as unequivocally functional claims were generally void ever since the courts began to consider this issue. The description would be the main aspect of a patent, and the claim would be adjunct to the description and drawings.(210)

    Infringement would be determined by a comparison of the accused device with the description in the specification, as it was a century before.(211)

    In late 1950, the Drafting Committee gathered again to prepare amendments to H.R. 9133, now dead, based on the multiplicity of comments received from the patent community about the bill.(212) A preliminary draft of the amendments to H.R. 9133 indicate that the proposed section relating to function claims was added as a pro posed last paragraph of section 112. The proposed paragraph, as it appeared in the prepared notes of the Drafting Committee, provided:

    The essence of the novelty of any invention may be recited in a

    claim in terms of means or method for performing a specified

    function without the recital of structure or acts in support

    thereof, and such claim shall not be refused or held invalid by

    reason only of its functionality, but shall be construed to cover

    the corresponding structure or acts described in the specification

    and equivalents thereof.(213)

    The proposed paragraph was slightly changed from the section as first suggested and was more precise than the original version. Also, the language made specific that the proposed paragraph would apply in determinations of patentability and validity. The proposed paragraph was directed at the recent Supreme Court holdings but did not address the underlying issues. For example, a question remained whether the essence of novelty of the claim in Halliburton was the new element added to the old combination or whether it was the combination itself. The proposed paragraph would apply in the case of the former but not in the latter. The handwritten notes on the prepared draft from one unidentified drafter indicate the Drafting Committee’s intention to “cover [the] Halliburton case, but not single means claims,” and suggested substantial modifications to the language of the first clause so that the proposed paragraph would apply to combination claims.(214)

    On April 18, 1951, with the help of House Committee Counsel L. James Harris, Representative Bryson introduced a new bill, H.R. 3760, which incorporated the amendments to H.R. 9133. H.R. 3760 was the first bill to include the third paragraph of section 112, which had been amended again from the prepared notes of the Drafting Committee’s meetings in 1950, and provided:

    An element in a claim for a combination may be expressed as a

    means or step for performing a specified function without the

    recital of structure or acts in support thereof, and such claim

    shall be construed to cover the corresponding structure, material,

    or acts described in the specification and equivalents thereof.(215)

    Save one minor modification to “structure or acts,” the paragraph in the bill was in the same form as it was enacted. At the request of the House Subcommittee, Mr. Federico drafted a report to accompany the bill. Mr. Harris delivered the bill and report to the full Judiciary Committee which unanimously approved the bill on April 29, 1952.

    A new bill, H.R. 7794,(216) which included changes to H.R. 3760, and a report,(217) were submitted to the House on May 12, 1952. This bill contained the enacted form of section 112.(218) The report was appended with “Revision Notes” that included information concerning the changes to the patent law introduced by the new bill. With regard to paragraphs 1 and 2 of section 112, the Revision Notes observe that “[t]he clause relating to the claim is made a separate paragraph to emphasize the distinction between the description and the claim or definition, and the language is modified.”(219) With regard to the last paragraph of section 112, the Revision Notes simply note that “[a] new paragraph relating to functional claims is added.”(220)

    The House of Representatives passed the bill by unanimous consent on May 19, 1952. The Judiciary Committee of the Senate reported the bill favorably with a few formal amendments on June 27, 1952, accompanied by a Senate Report.(221) The Senate Report was substantially the same as the House Report and was identical to the House Report with respect to section 112. The Senate passed the bill by unanimous consent on July 4, 1952, and the amendments made by the Senate were concurred in by the House on the same day. President Truman signed the bill on July 19, 1952, to become effective on January 1, 1953.

    After the enactment, several of the drafters had occasion to comment on last paragraph of section 112.(222) The drafters agreed that the last paragraph served to offset, modify, or render obsolete the decision in Halliburton, and indicated that a greater measure of liberality of the use of means clauses would be permitted than before.(223) The drafters recognized the overall practical advantages of means clauses to describe the contribution of the inventor “where strictly structural terms appeared to be unnecessarily cumbersome or inadequate.”(224) Similarly, the use of functional language to describe an element in a combination was determined to be proper and did not interfere with future development.(225) The type of claim that would be affected by the last paragraph was where invention lay in the combination itself, where the claim was directed to the relationship or association of elements.(226) Mr. Federico wrote that “an” element meant any element, and that the singular includes the plural so that more than one element in a combination could be so described.(227) This provision of the section appears to be the most crucial in clarifying the law regarding claims having means-plus-function elements because it addresses the point which created the most difficulty for the courts faced with interpretation of such a claim. No longer would a court need to consider whether the element was “at the point of novelty.” The required determination would be whether the claim set forth a nonobvious combination. Additionally, the last paragraph did not permit single means claims which cover all means for performing a function. Mr. Federico wrote that attempts to evade this by adding purely nominal or convention elements to such a claim were to be condemned.(228) Thus, the last paragraph gave statutory sanction to the use of means language in combination claims regardless of whether the invention was basic or whether the means clause was used with a new element in an old combination, the so-called “point of novelty.”

  35. Then we have that bit by Frederico that said that of novelty was in the one element and not in the combination, that it would not be tolerated.

    Sent from iPhone

  36. The remains odd that if Congress intended to overturn doctrine of functional claiming at the point of novelty that it would overrule only one case, and that being the Halliburton case, not all the other prior cases on the same doctrine 
    Sent from iPhone

  37. Rather the statute as written can be interpreted to be consistent with the Halliburton case

    Revisionist history at its finest, or rather, its worst.

  38. Section 112 paragraph 6

    It is generally understood that Congress enacted section 112 paragraph 6 in reaction to Halliburton, the Supreme Court case that extended to apparatus claims its prior holdings in cases such as Perkins Glue involving composition of matter and Gen. Electric Co. v. Wabash Co., 304 US 364 (1938) involving articles of manufacturer, that claims “functional at the point of novelty” were indefinite. Thus we see in section 112 paragraph 6 the authorization not only to use means plus function language, but also the authorization to use functional language in describing “materials” and “acts,” implicitly overruling not only Halliburton, but Perkins Glue. But if this was the intent of the drafters, they drafted the statute in that odd way. The statute authorizes functional claiming only in “combination claims.” Because claims to articles of manufacture and to composition of matter are not normally expressed in combination claims, section112 paragraph 6 does not seem to expressly apply. Rather, section 112 paragraph 6 seems to apply only with respect to apparatus claims which are normally claimed as combination of elements. The statute might also be applicable to method claims because they comprise a series of steps which could be construed to be combinations. But the latter point is not clear.

    Regardless, if one focuses solely on means plus function claims in “combination” claims, there is nothing in section 112 paragraph 6 which expressly authorizes the use of means plus function claims at the point of novelty. Rather, it authorizes the use of means plus function claims in combination claims; and combination claims at the time of enactment were fairly well understood to be a form of claim where the novelty was in the combination rather than in a particular element; meaning that all elements of a combination could be old and yet the claim as a whole could recite patentable subject matter. Thus the suggestion that section 112 paragraph 6 authorizes functional claiming at the point of novelty in combination claims reads something into the statute that literally is not there. Rather the statute as written can be interpreted to be consistent with the Halliburton case rather than inconsistent with it, because the Halliburton court did not object to the use of the means plus function claim format in the old elements of a combination claim.

    This latter point has to be emphasized. The Halliburton court did not object to the use of means plus function claim format in the old elements of a combination claim. So when section 112 paragraph 6 authorizes the use of means plus function claim format it appears to be codifying the holding of Halliburton not reversing it. Moreover, an interpretation of section 112 paragraph 6 that is consistent with Halliburton and not inconsistent with it probably is preferred when one is attempting to construe section 112 paragraph 6.

    The bottom line is this: there is nothing in section 112 paragraph 6 that expressly authorizes the use of means plus function claiming at the point of novelty. It authorizes instead the use of means plus function claim format in elements of a combination, which the Halliburton court affirmed was proper.

    If this is correct, I would suggest that the use of means plus function language in a claim is tantamount to an admission that the claim element is an old element, because if it was a new element, the claim would be invalid under Halliburton.

  39. Ned Overbroad claiming is the rule, not the exception.

    And the way to deal with that is to invalidate the claims under 101 (e.g., if the claims are deemed to be abstract or if the claims effectively preclude otherwise non-infringing actors from thinking), 102, 103, or 112.

    Restricting claim scope to that, and no more,
    should be the object of claim construction.

    As IANAE notes, this is the job of claim drafting. Otherwise, let’s just move to omnibus claiming and turn the USPTO into a publishing house. That is what you are asking for, Ned. I have no idea why anyone in the US would prefer such a system to the present system … unless they are a patent owner who believes that such a system would benefit them personally, e.g., by increasing uncertainty about patent scope generally. That would be a logical position for a non-practicing entity to take.

  40. should be the object of claim construction.

    Should be the object of claim drafting, I think you mean.

    If, for whatever reason, one claims more than one is entitled to claim, one’s claim is invalid. That’s trite law, and uncontroversial. It’s also what dependent claims are for, incidentally.

  41. "Functional claiming at the point of novelty."  Condemned repeated by the Supreme Court but sanctioned by Congress only if one limits the claim to the corresponding structure, etc.  I think, Malcolm, what you really want is to repeal 112, p.6.

  42. Just did.  Thanks.  The claim was construed to cover all ways to calculating DWT, but only one was disclosed and all ways were not enabled.

    So many cases center on this exact problem, but so many are approved by the Federal Circuit as to suggest there is a fundamental problem with the Federal Circuit.  There is no consistency.  Overbroad claiming is the rule, not the exception.

    It has to be a general principle that one is entitled to claim only that which one discloses and enables.  Restricting claim scope to that, and no more,
    should be the object of claim construction.

  43. “…what are we to do when claims, using broad indefinite language, claim subject matter neither described nor enabled.”

    Uhm, how ’bout invalidating them?

    “Now if we did have a robust Section 112, 1&2, jurisprudence, my concerns would not be so great. But we all know that we do not.”

    We don’t? You might want to peruse the archives of just this site. 112, 1st and 2nd jurisprudence seems to be alive and well.

  44. if we did have a robust Section 112, 1&2, jurisprudence, my concerns would not be so great. But we all know that we do not.

    I’m not sure who you mean by “we”, Ned, but in the chem/bio area I can assure you that Section 112 is quite robust.

    not practicing in the computer arts as I do, you may not fully appreciate the problem we have with the use of indefinite claiming.

    I’m intimately familiar with the problem, Ned. As you suggest, the bigger issue is not “indefinite claiming” per se (although that remains an issue) but “functional claiming at the point of novelty.” These problems, however should not be solved on a case-by-case basis by the courts during claim construction, as you suggest. That will be a disaster.

    I don’t think there is any question that the issues raised by the Retroactive decision are going to be addressed soon (within the next year) by the en banc Federal Circuit. If not, then the Supremes will have to step in. And there is no possible way that the Retroactive majority will come out the winner.

  45. “Well, IANAE, what if the claim claims all means for achieving a result but discloses only one or a limited number? One can do this either by using functional language or the equivalent generic language. Do you at least acknowledge that there could be a problem here?”

    Have you read Lizard Tech?

  46. I agree with you, MM, that Retractable Technologies is an awful decision. The dissenters are also correct: Federal Circuit claim construction law is an utter mess. Even longstanding doctrines, such as the doctrine of claim differentiation (which the Chief Judge correctly said in his dissent in the panel decision should have applied), aren’t applied correctly or consistently. And if SCOTUS gets ahold of this claim construction “mess,” look out.

  47. Of course I acknowledge that there’s a problem there. We simply disagree on the solution.

    I don’t see why it’s anybody’s problem but the patentee’s, if his claim has a problem. If he wants a narrower or more definite claim, that’s certainly an option available to him during prosecution. The public should be able to rely on the claims meaning what they say, and standing or falling on that basis.

  48. Well, IANAE, what if the claim claims all means for achieving a result but discloses only one or a limited number? One can do this either by using functional language or the equivalent generic language. Do you at least acknowledge that there could be a problem here?

  49. Judge Moore is right. A few years ago, you did not know what the claim construction rules would be until you saw what panel you were getting at oral argument. Now it had deteriorated to the point that you do not know what a patent’s claim construction is until you get the Fed.Circuit’s decision on appeal. What the District Judge says means nothing. Why have District Courts? Why not file all patent cases de novo at the Fed. Cir. let them do their claim construction magic and then remand to District Court for infringmen and damages determinations.

  50. If one starts from the principle that the specification is king,

    Why are you starting there? Surely the claim is king. The claim defines the patent right.

    I’m all for “what one describes and enables is all that one can claim”, but surely that’s no more than a way of deciding whether a claim once construed is invalid for lack of support or enablement.

    I’m with Malcolm here. If the applicant wants to assert a right in his invention, it’s his duty to adequately claim the scope of that right. The claim has to mean what it means. Otherwise, we might as well go back to the omnibus claim and at least save our clients a few billable hours for drafting.

  51. Malcolm, nice try. If one starts from the principle that the specification is king, and what one describes and enables is all that one can claim, and that is our statutory scheme, what are we to do when claims, using broad indefinite language, claim subject matter neither described nor enabled.

    Now if we did have a robust Section 112, 1&2, jurisprudence, my concerns would not be so great. But we all know that we do not.

    Malcolm, not practicing in the computer arts as I do, you may not fully appreciate the problem we have with the use of indefinite claiming. I generally favor a rule that all claims should be construed to cover the corresponding structure, materials and acts described in the specification and their equivalents, the rule of construction announced by the Supreme Court in Westinghouse v. Boyden Power Brake, and enacted for certain claims in 112, p. 6.

  52. Judge Moore asserts, the majority applied its own approach to claim construction, not that of Phillips, “[c]hanging the plain meaning of a claim term to tailor its scope to what the panel believes was the actual invention.” Id. at 6. This is not an isolated instance, Judge Moore points out, but is a common practice that points to a fundamental split on the court about the nature of claim construction: a disagreement over whether claim scope should be limited to “what the inventor actually invented” or instead construed according to the plain meaning to one of skill in the art, a meaning that may be informed – but is not dictated – by the specification.

    Judge Moore is correct in her assertion. The majority in Retractable effectively spat in the face of Phillips’ teaching. Retractable is one of worst decisions ever written by the Federal Circuit, bar none. It effectively renders claims (the drafting and examination of them) pointless.

    The pointlessness I’m referring does not flow from the fact that there is a “split” between judges on the Federal Circuit. Rather, it’s the reasoning used by the majority in Retractable. If adopted uniformly, there would be absolutely no point in examining “claims”. Simply let the patent owner state “You infringe my invention” and the court can figure out if any aspect of the defendant’s product is encompassed by something in the specification that’s not in the prior art. If not, then no infringement. If so, then whatever that thing is, the court can simply call it “the invention.”

    Why bother with “claims” and “claim construction” if the court is simply going to ignore the most basic rules of logic and reason and substitute narrower meanings for terms simply because the terms encompass more “invention” than the applicant seems entitled to? As a bonus, we can get rid of 112 entirely and simply turn it into The Other New Doctrine of Claim Construction (the First New Doctrine being that the “invention” can’t encompass the prior art).

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