IPCom Wins by Waiver – Federal Circuit Temporarily Revitalizes IPCom Case Against HTC

By Dennis Crouch

HTC v. IPCom (Fed. Cir. 2012)

IPCom is the German version of a “patent troll.” Or, as Lord Justice Jacob wrote in Nokia v. IPCOM, EWCA Civ 6 (2011), “IPCom is a ‘non practising entity’, i.e. a patentee with no business of its own in products covered by the patents.” The company is run by Bernhard Frohwitter, one of the most successful German patent litigators and backed by New York private equity. As suggested by this introduction, IPCom is pursuing patent battles against telecommunications device manufacturers around the world. [Even though I used the word "troll" here, I certainly believe that non-practicing entities should generally have a right to enforce their patents.]

In 2011, IPCom sued the Taiwanese company HTC Corporation in the US for infringement of its Patent No. 6,879,830. The patent covers an apparatus for solving the wireless communications problem of handing-over a data-stream connection to another base station as the wireless device travels geographically. The patent was originally owned by the German company Bosch who transferred rights to IPCom as part of a major IP asset purchase.

IPXL: The district court held the asserted claims invalid on summary judgment as indefinite under 35 U.S.C. §112. Following IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), the district court rejected the claims as reciting an apparatus with method steps. On appeal, the Federal Circuit has reversed – holding that the lower court misconstrued the language of the claims.

I have reproduced a representative claim below, but the basic gist is that a mobile station apparatus is claimed that operates with a network. The network provides a number of functions regarding the handover process, including storing data, holding information in reserve, and then later deleting the information after the handover. The claim includes only one element for the mobile station – requiring that the mobile station comprises “an arrangement” for reversing the handover if it is unsuccessful.

Claim 1. A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by: storing link data for a link in a first base station, holding in reserve for the link resources of the first base station, and when the link is to be handed over to the second base station: initially maintaining a storage of the link data in the first base station, initially causing the resources of the first base station to remain held in reserve, and at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising: an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

In IPXL, the court held a claim invalid that was structured as an apparatus claim that also required the performance of method steps. Here however, the Federal Circuit interpreted the claim language as having an apparatus defined by its capability to perform a set of defined tasks. The legal distinction here is in whether the apparatus must perform the step or merely be capable of performing the step. In addition, the language discussing the function of the network does not create any problem because the claim itself is actually claiming a mobile station. Thus, the “prohibition on hybrid claiming” identified in IPXL does not apply to this case.

In interpreting the claim, the court relied on its old rule of construction that claim terms “are generally given their ordinary and customary meaning.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Using ordinary meaning as a starting point ,the court also walked through the specification and prosecution history in reaching its conclusion that the seeming action-items were directed to the network rather than the mobile device itself.

Prosecution History: One basis of HTC’s argument came from the prosecution history where the applicant referred to the six action elements in the claim as a “process” and the examiner called them “steps.” The Federal Circuit held that HTC (and the lower court) placed too much emphasis on those statements – especially because “in most cases” the examiner was referring to parallel method claims not at issue here. In looking at the prosecution history, the court also sent the reminder that prosecution history is less important in interpretation than claim and specification language. “Although the district court was correct in considering the prosecution history, the claim language and specification in this case are better sources for the correct construction.”

Because the court identified the source of error claim construction rather than indefiniteness, the case was reviewed

Means-Plus-Function and Waiver: HTC also offered a separate invalidity challenge based on the claimed “arrangement for reactivating.” HTC argued that – as a means-plus-function limitation – the scope of the term is defined by the corresponding structure found in the specification. Further, HTC argued that the specification did not include any supporting structure and that the claim must therefore be held invalid as indefinite. The district court rejected that argument – holding that the disclosed processor and transceiver served as the corresponding structure. On appeal, the Federal Circuit identified that holding as in error because the claimed function must be tied to a more particular structure. Here that structure would ideally be an algorithm that defines in some terms how the arrangement would work. See Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).

After identifying the error, the appellate panel refused to reverse because HTC had failed to properly preserve an objection for the appeal. The problem: At the trial court, HTC had argued that more hardware disclosure was necessary beyond the “processor and transceiver,” while on appeal, HTC (and in the reply brief) shifted its argument to focus on the need for an algorithm. The appellate court held that this late-stage argument was too late.

To be clear, HTC had argued that the means-plus-function limitation was indefinite because it lacked sufficient corresponding structure in the specification. HTC’s error was that it identified the patent’s problem as lacking sufficient description of the hardware that would perform the claimed function while the Federal Circuit saw the patent’s problem deriving from lacking a sufficient description of the algorithm that would perform the claimed function. The Federal Circuit’s point was that no more hardware need be disclosed so long as the algorithm is there. This result is a bit odd for a few reasons. The practical reason for this failing is likely that these issues were litigated before the Federal Circuit’s 2008 decision on point. However, from a factual standpoint I suspect that HTC is absolutely correct – the lack of disclosed structure could-have been entirely solved by further disclosure of specific hardware designed to achieve the claimed function and without any further disclosure of the particular algorithm. Thus, the disclosure of a video graphics processor would likely serve as sufficient structure for a computer graphic processing function with a known solution even without disclosing the particular algorithm used for the processing. In the same way a nail could serve as the structure of a fastening claim even without a description of the particular process for hammering the nail into place. Likewise here, a particularly designed and disclosed circuitry could serve as the structure for achieving the claimed reactivating function even without disclosing its process flow per se. The fact that the Federal Circuit here chooses a different structure that should-have-been disclosed does not suggest that HTC waived its argument that the claimed function lacked sufficient structure. This leads me to a second and broader point about the accused infringer’s role in the invalidation process. It is not normally the accused infringer’s role to identify what the patentee should have invented or disclosed. Rather, invalidity is more simply based on a showing that the patentee did not do enough. In this sense, the accused infringer takes on a role parallel to a food critic who can identify poorly presented food even if she herself cannot cook. In my world, this is akin to my own low level spelling prowess. I usually know when a word is misspelled. However, I can only rarely posit the correct spelling formulation without assistance. Thus, the Court’s ruling here leaves a bad taste because it puts a new burden on accused infringers to take the additional step of identifying what the patentee should have said in the patent and then binds them to their suggested counterfactual.

Harmless Error on Remand: The Federal Circuit identified an error in the lower court’s judgment but, because of waiver, did not require the lower court to re-open this issue on remand. Odds are that the lower court will not stick to its original opinion that has now been adjudged legally incorrect. Instead the court will more likely assert its discretionary power to take a fresh look at the issue of indefiniteness. This is especially likely if the district court broadly considers Supreme Court precedent such as Leer v. Adkins and the associated policy that “bad patents” should be invalidated even if that means bending some of the norms of civil procedure.

Court of Appeals: For Judge O’Malley (the opinion’s author), the waiver portion of the opinion appears to be written as a reminder to patent litigators that the Federal Circuit is a Court of Appeals rather than a trier of fact or court of first instance. This legal reality continues to be lost on some of her colleagues on the appellate bench.

Means-Plus-Function in Combination: A final MPF issue that could also create trouble for IPCom involves the fact that the Federal Circuit’s new construction of the claim includes only one element and that element is a means-plus-function language. The basis for means-plus-function claiming is found in 35 U.S.C. § 112¶6. That paragraph includes an apparent limitation that MPF elements are available only in “a claim for a combination.” The result: single element claims may not use MPF language to define that lone element. In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983).

77 thoughts on “IPCom Wins by Waiver – Federal Circuit Temporarily Revitalizes IPCom Case Against HTC

  1. Getting away with Mur…der

    Marine Polymer Tech. v. HemCon, Inc — en banc

    On appeal, the losing defendant argued intervening rights based upon a change in the construction of the term “biocompatible” after the patent was re-examined. The District Court had construed the term to require “no” incompatibility on a series of four tests described in the specification. During re-examination, the patent owner urged the examiner to adopt the construction of the District Court. The examiner, reviewing the record in the the District Court case and the specification, agreed that the proper construction of biocompatible was that of the District Court.

    In the appeal, the majority held that the original claim construction by the District Court was erroneous, and that a proper construction of “biocompatible” would essentially encompass test scores a small range above zero on four tests described in the specification. It deemed that the District Court had erred by incorporating limitations from the specification.

    In the process of reaching this determination, the Federal Circuit majority placed great weight, it seems, on the cancellation of a number of dependent claims that required test scores above zero. The Federal Circuit noted that only with the cancellation of those claims did the examiner agree that the District Court claim construction was correct.

    However, what the majority apparently did not appreciate was that the claim construction adopted the District Court was, in fact, urged by the losing defendant. During Markman, the patent owner proffered a construction of “biocompatible” as essentially having a range above zero on the four tests. The District Court noted that the defendants argued that this definition was too broad based upon the specification. (The Court’s claim construction order is attached to the amendment in the re-examination and is available on public PAIR.) The District Court agreed with the defendants, and limited the the term biocompatible to zero on the relevant tests because, as the District Court discussed, the only section of the specification discussing “biocompatible” stated that the inventive composition exhibited no bio-incompatibility on the four tests.

    (It is important to note here that the dependent claims requiring scores on the sundry biocompatibility tests above zero appeared to be completely without support in the specification.)

    What we have here therefore is virtually indistinguishable from HTC v. IPcom. The defendants urged the very claim construction it now criticizes as error. If the District Court claim construction was in error, and it was not clearly in error, the error was substantially caused by the defendants urging its adoption. To allow the defendants to criticize the District Court’s claim construction in this appeal seems to border on the outrageous.

  2. Questions for Ned,

    Good questions. If (when?) Ned answers, he should also remember that firmware is also loaded onto a machine, that circuits (hardware) are “loaded” on a machine. How a program gets there is very much on point. The fact that it is there is very much on point, and points out Ned’s gaping hole in logic as he refuses (without reason) to acknowledge the critical similarities between the ‘wares.

    And as I indicated to Anonymous Geek, Ned will not answer to the controlling case law (it does not support his agenda – it speaks directly to – and is on point – to the ‘wares).

  3. Anonymous Geek,

    Ned has been pressed on this issue before and has failed to provide the clarity that you seek.

    He has failed to address the controlling law.

    He has failed to provide an distinction of substance between software and firmware.

    I would not hold your breadth for an answer on point now.

  4. (Mis)using terms is nothing new for mister “Whatev” legal logic man Malcolm. If a perjorative makes a better sound-byte, “what’s the dif?”

    Dennis should know better. Especially if he is being called to make a statement before Congress. Being slipshod on a blog is one thing. Being professional in front of Congress is most definitely something else (not that anyone expects professionalism from Malcolm).

  5. loads the programs

    from where?

    Does this loading change the machine? Does it reconfigure the machine in any way? What exactly is the difference between firmware and software? Is this a material difference for the object under consideration?

    What does the CAFC say about this? What is the controlling case law? Why are you not following it?

  6. Anonymous, typing of a program into the computer or calculator is hardly the point.  How the program gets there is irrelevant.  The fact that the user loads the programs and commands its execution is the point.

  7. I’m not fin reading a 101 case for a 112 6th discussion Nedtard. Besides, iirc, I’ve read it more times than you have and between the two of us am the only one to understand what was said.

  8. Software is uploaded and configured in a machine, using a calculator does not do this. Inthis sense it is equivalent to firmware, which you have recognized as a valid change in a machine. Please point out with particularity how software is different from firmware in this regard.

    That enough of a difference for you?

    You did not answer my question at 3:37, which is hardly a strawman point. My point neither changes what you have said nor distorts reality. How is it a strawman?

    Do not accuse me of strawmanning. Just answer my questions. It becomes evident that I am not the one throwing straw around.

    And MM, even if Nuitjen is the law, that law does not substantively change the validity of my points. Your ad homimem involving Gene Quinn is bizarre and more than a little out of place. Try to control yourself or just disappear.

  9. Now we get to do we not?  A person using a calcuator is making a new machine to the same extent that a persons commands the computer to load and execute software.  What is the difference? 

  10. But they are not articles of manufacture.

    They are. The court in Nuijten got it wrong.

    Regardless, the point by MSH still applies – everything is transitory. Please give an example of something, anything that is a non-transitory article of manufacture.

  11. Do you think a programmer types in the software everytime you want to use a computer program?

    The software is in there. Just as firmware or hardware.

    You are trying too hard to make a distinction that has no difference.

  12. Signals exist, for a time.  But they are not articles of manufacture. 

    Signal in a computer exist, for a time.  But signals do not make a machine new.

    In copyright, a signal is not a copy.  Why?

  13. Mike, do you understand that IPCom raised the issue of the presence of an algorithm below, that HTC said that that was irrelevant so that the judge did not consisder the sufficiency of the disclosed algorirthm. Now they shift grounds on appeal, arguing to the Federal Circuit that the algorithm was insufficient when that was an issue that should have been decided in the first by the disctrict court in but was not due to the waiver of HTC?

    Given the posture of this case, I think HTC waived the argument. If you disagree, please explain why.

  14. Everything is transitory, given a completely subjective timeframe.

    Show me anything that you think is not transitory and I can give you a timeframe that makes it transitory.

    Software = Firmware = Hardware.

    See the guiding CAFC position on this matter.

  15. When I punch in a new formula does the calculator become a new machine? Not really, because I am only using the calculator.

    Ah, but the calculator wasn’t capable of multiplying 2 by 3 until you gave it instructions to do so. Or something.

  16. Shaking, I really think you continue to miss the point.  This is the same issue faced when the Feds addressed "signals" as articles of mfg.  They are transitory. So is a program, unless it is made part of the machine.  But, that is firmware. 

    Take the calculator.  When I punch in a new formula does the calculator become a new machine?  Not really, because I am only using the calculator.  The formula is completely transitory and disappears with the calculator's power supply.   In contrast, if the formula were physically permanent in the machine, I would suggest that we do indeed have a new machine.

  17. “Except for the fact that you need to recognize the strucutre and the effect of the structure”

    I’m not saying that they’ll judge it obvious or not. That’s up to a court, but I think it would be a rather interesting decision, if for nothing else but the lulz no matter which way they go.

    ” Talk to the Bio and Chem people about shortcuts. Be prepared to listen.”

    I’ve heard quite enough from MM thanks.

  18. Oh, so your invention is putting a new 0 in place of this old 1? Hmmmm, obvious?

    Except for the fact that you need to recognize the strucutre and the effect of the structure, which would drive in the opposite direction of where you think it would drive.

    Not surprising really, since you don’t seem to understand patent law in the first place.

    What? Are you cr azy?

    No Talk to the Bio and Chem people about shortcuts. Be prepared to listen.

  19. How is it possible that

    Get a life Troll. Clearly shortcut annotations exist in a variety of disciplines, including bio.

    There is nothing false about the statement. There is only ignorance worn proudly by the likes of you and 6.

  20. The waiver issue is bad precedent. The Court overturned claim construction and found that HTC’s second arguement for invalidity was not sustainable. Case has to be remanded at that point for further proceedings. The advisory discussion on waiver is just wrong.

  21. “Such types of short hand notation are common.”

    Unfortunately.

    “One of ordinary skill in the appropriate art does know full well the type of structure and the words “configured to” suffice.”

    Look bro, as long as you can provide evidence of that then I have no problem so long as you’re willing to cooperate and let us know specifically what POSITA supposedly magically knows it corresponds to.

    “Possessiona nd definiteness have already come to town, enjoyed their visit and have gone home. IF you weren’t sleeping and dreaming of some alternate universe where your ideal of law were king you would have noticed this.”

    Lulz. The CAFC boi nking up a proper decision doesn’t mean that anything came or went to town. It only means that the CAFC bo inked up a proper decision. Likely because of poor briefing by a lawlta rd somewhere :(. O and it also means we have to suffer through their delusion until someone bothers to get the USSC to sort that sht on out.

    I’m wide awake thx. It’s time for you patent prosecutors to wake up from your long CAFC-induced stupor.

  22. “Would you be happy with a recital of the location of each pit/groove that would be structurally present in a medium so disposed?”

    Mhmm. I would. But probably not for the reason that you think.

    The no. 1 reason I would be happy with this is because after a few hundred thousand of these we’d actually have a good prior art database instead of the big ol’ sht pile we have now that is little more than a big ol’ dump of functionalities/ configurations often so outlandishly worded they don’t make any sense at all. And the courts would find it more and more impossible to grant any new such patents. Indeed, they may tire of it after the first hundred or so that get by. They’d be like: Oh, so your invention is putting a new 0 in place of this old 1? Hmmmm, obvious? Then we’d start seeing some new obviousness caselaw once courts got their heads out of their ar se and realized what they were allowing patents on. Or they’d be like, oh, so your “configuration” is actually the same configuration someone else used over here but which accomplished a completely different function? O, 102.

    Also, courts would start realizing that perhaps you don’t have WD for a whole genus of instructions or configurations when you only provided one example and the other species bear no resemblance at all to/have nothing in common with the species you gave.

    They might also start realizing how posita can’t realistically predict all structures/configs that might infringe upon your patent and start striking your sht down with 112 because of a lack of notice.

    “How would that add to the clarity? A: it wouldn’t.”

    What? Are you cr azy? If you put down the actual location/structure and if everyone else has been doing the same before you then the claim and overall application will be a sht ton more clear, even enough that I can simply search the prior art and find the same structure bam, 102 btches, no if ands or buts. As of right now the only thing I have to go on is that there is a 1 or a 0 or some sort of “configuration” somewhere in there. Indeed, they might even make a database like they have of chemical compositions that would be searchable by an algorithmlol that would simply find a 102 structure for me (or you prior to filing even).

  23. So I am Ramona’s and one of the Manning boys… And that is probably who I am. John.. or I keep hearing Dan. And Marcella did Mary a favor because Ray and Gloria only wanted the other one. So for all those years they paid for my upkeep. And now what was left to me they Took. And they are probably in the East. So maybe Ray and Gloria and Ramona came up to Mass for IH. Figuring it can’t get any better than this!And they are in Virginia or close to there.

  24. Would you be happy with a recital of the location of each pit/groove that would be structurally present in a medium so disposed?

    How would that add to the clarity? A: it wouldn’t.

    We’re talking about composition claims, aren’t we? How is it possible that additional physical description of the structure of the new composition would not clarify the description of the new composition?

    Very curious. Of course, your false statement about “adding to the clarity” gets right to the punchline of the sad joke known as “Beauregard claims.”

  25. Would you be happy with a recital of the location of each pit/groove that would be structurally present in a medium so disposed?

    How would that add to the clarity? A: it wouldn’t.

    Such types of short hand notation are common.

    One of ordinary skill in the appropriate art does know full well the type of structure and the words “configured to” suffice. Possessiona nd definiteness have already come to town, enjoyed their visit and have gone home. IF you weren’t sleeping and dreaming of some alternate universe where your ideal of law were king you would have noticed this.

    Time to wake up son.

  26. Sure thing brosensky if you can tell us what structure corresponds to your “configured to” followed by nothing but functional language or provide some evidence that one of ordinary skill would know it without you helping them. Otherwise gl showing possession and definiteness when 112 comes to town.

  27. Lulz, ya jack arse, courts making up nonsense doesn’t change reality and doesn’t mean “i lose”. It just means that I would need to go to a good court to get the CAFC straightened out.

  28. Which is 100% irrelevant if you don’t tell us what that “something different” is in structural terms.

    You have been told many times. The structural term is configured to.

    100% Relevance restored.

  29. You are probably right that eventually a case where holding such will lead to such an absurd result that the court will finally see the error of its ways. But what that case will be is anyone’s guess and how long it will take to get here is quite the b s.

  30. Patents are government sanctioned theft.

    Otay pumpkin, run along now. Your room is next to Malcolm’s.

  31. “. The programming of a computer CHANGES a computer into something different that operates differently.”

    Which is 100% irrelevant if you don’t tell us what that “something different” is in structural terms.

  32. will eventually grow tired of trying to defend

    That’s why after the Bilski reset, the CAFC has prominently reinstalled that CAFC holding.

    Your tinfoil hat is on too tight.

  33. “6, I think there is a difference between claiming a programmed computer as part of a larger apparatus or process and attempt to claim software as hardware. I don’t know if you followed my argument before about the difference between firmware and software, but firmware is always present, and necessary executes when its function is called. I think of microcode as an example. If the computer executes an instruction that invokes microcode, I think the microcoded program can be claimed as a programmed computer and the computer actually be a new machine.

    I’m sure it “can be”. The question is whether or not it “properly may be” when using 112 6th. And the answer is no. And it will be no when the USSC finally gets around to taking out the CAFC spawned trash or the CAFC miraculously sees the error of its ways. Period.

    If they want to claim a certain structure of a computer then fine, and even if they want to describe a well known structure, or a genus of well known structures functionally I do not mind. But tolerating putting in an “algorithm” and pretending that is in any way associated with a pie in the sky structure, as opposed to some specific known in the art (with some substantial evidence to back this up if you don’t mind) structure, is literally so incomprehensible it is nearly beyond belief that any rational human being, much less the vaunted judges of the federal circuit, would ever even attempt it.

    “In context, therefore, the programmed machine is a new machine.”

    I. Do. Not. Give. One. Dam. And neither does the lawl of 112 6th properly interpreted.

    “The algorithms that transform the mobile phone into a new machine ”

    You are aware that what you just said is physically impossible right? It is like saying “the ideas in Ned’s head that transform Ned’s head into a new machine/composition”. A ridiculous notion even from the start. Nobody has any fing clue what nueron patterns/firings are in your head while you’re thinking a certain idea so as to allow for us to think of ideas as structure as is called for by 112 6th.

    And I’m not discussing it further, we’ve had this discussion, I follow your ridiculousness just as well as I follow the CAFC’s ridiculousness. As usual the tards in the patent field of lawl have to be set straight by the supposedly technically incompetent judges of the USSC and accussed infringers and examiners et al will suffer until someone with some balls and a lot of money riding on the issue gets it to them. Same old story. It never (well hardly ever) changes. I guess it will be that way for all time until and if we can exorcise the overly pro-patent bias from the tards in power over the system at least to the extent that they’ll stop making up profoundly re tar ded sht to save a patent or group of patents for no other reason than they <3 patents.

  34. In contrast, software is loaded and executed. It uses the machine and is not part of the machine. There is a difference.

    Pure Crrp.

  35. “These are subtle differences”

    Differences without any significance. We’ve gone over this time and time and time and time and time again with you. The programming of a computer CHANGES a computer into something different that operates differently.

    Everbody from a 3rd grader to a Supreme Court justice can understand that concept (as well as the smarter ones in between).

    Regardless, since you are on the wrong side of the law on this, it doesn’t make much difference.

  36. I doubt most attorneytards thought of algorithms as structure.

    Most of us still don’t think of algorithms as structure … because they aren’t. CAFC law to the contrary is a bad joke that the CAFC will eventually grow tired of trying to defend. The sooner the better.

  37. 6, I think there is a difference between claiming a programmed computer as part of a larger apparatus or process and attempt to claim software as hardware.  I don't know if you followed my argument before about the difference between firmware and software, but firmware is always present, and necessary executes when its function is called.  I think of microcode as an example.  If the computer executes an instruction that invokes microcode, I think the microcoded program can be claimed as a programmed computer and the computer actually be a new machine.

    In contrast, software is loaded and executed.  It uses the machine and is not part of the machine.  There is a difference.

    But when the programmed computer is part of a larger apparatus or process, the software cannot be considered independently, it is part of the larger machine.  In context, therefore, the programmed machine is a new machine.

    These are subtle differences, to be sure.  But I see no vice with the claims at issue.  The algorithms that transform the mobile phone into a new machine are a description of a programmed computer and novel hardware.

    Ned

  38. “Clearly, HTC waived an invalidity argument based upon lack of adequate disclosure of an algorithm.”

    As D noted, the CAFC’s BS notion of algorithms being structure wasn’t even generated out of whole cloth as of the time of the arguing at the DC.

    Back in the day, when people still had brains, I doubt most attorneytards thought of algorithms as structure.

  39. What is to explain? Algorithms are no more “structure” than a human thought or a “mental process” is. The legal fiction that they are which the CAFC created out of whole cloth needs to go, sooner rather than later. Too many accused infringers suffer beneath that cloak of nonsense just the same as many patentees do.

  40. Malcolm, the PO argued that it had disclose an algorithm for the task, and that the hardware necessary perform the algorithm, namely a processor in the transceiver, was disclosed, albeit implicitly: it submitted an affidavit of an expert to demonstrate that one of ordinary skill in the art would know that a cell phone would include a processor and a transceiver.

    To anticipate, the prior art would have to disclose the algorithm, not just implicitly disclosed hardware.

  41. IBP, I am not so sure. Dennis’ summary of the facts are not right. IPCom had argued below that it did disclose an algorithm and that this disclosure implied structure. HTC said argued below that that disclosure was irrelevant, and insistent that sufficient hardware was not disclosed. On appeal, it shifted to asserting that the algorithm “disclosed” was not sufficient. But whether it was sufficient or not was an issued raised below and was not pursued by HTC.

    It waived the issue.

  42. why copyright new facts

    Seriously?

    From the article by 6: “worse, few signatories followed through with their promised boycotts of the publishers who refused.

    Who do you blame?

  43. Dennis, I think you should re-read the case as your summary seems a bit off on the indefiniteness/waiver issue.

    It appears for one that the patent owner had argued that the specification did disclose an algorithm and that such disclosure was sufficient. Rather it was that a processor and a transceiver were not in fact disclosed. Both the District Court and the Federal Circuit held that that structure was deemed implicit to one of ordinary skill in the art with knowledge of how mobile phones operated. HTC had ignored the patent owner’s argument regarding the sufficiency of an algorithm to disclose the necessary structure during claim construction saying it was irrelevant, and consistently argued that more circuitry had to be disclosed than just a processor and a transceiver.

    At a minimum therefore, the issue of whether there was an adequate disclosure of an algorithm was presented by the patent owner, but was not decided by the District Court because of HTC’s legal position. Clearly, HTC waived an invalidity argument based upon lack of adequate disclosure of an algorithm.

    I hardly think, given this posture the case, that the district court on remand will not, repeat, will not take up the issue of whether the algorithm disclosed was sufficient given that the Federal Circuit has already held that that argument was waived.

  44. Awesome development. Of course, why copyright new facts when you can patent methods of thinking about those facts? Of course, at the very least you have to include an old transformative step that “interacts” with the thinking step. According to shillywilly, anyway. Maybe shillywilly will come by later and teach us how that works exactly.

  45. “The Federal Circuit’s point was that no more hardware need be disclosed so long as the algorithm is there.”

    In other words they keep on harping on their legally incorrect version of 112 6th and are going to make someone go to the USSC to get them overturned.

    Meh, just another day with the Federal Circ.

    And I agree with the rest of what you said in your new “to be clear” paragraph D. Except for the part about disclosing a graphics card being enough when there is a known algorithm out there. However, it is consistent with the incorrect view which the CAFC takes on MPF claiming and which we need the USSC to step in to correct.

    On the plus side, this is yet another good case for the patentee himself to take to the USSC on the MPF+algorithm issue.

  46. Sorry, that should actually read

    “Structural limitations are necessarily implied by the recitation of functional limitations when claiming,

    BUT

    functional limitations are not necessarily implied by the recitation of structural limitations when appealing.

  47. I haven’t yet read the opinion, but the synopsis above reveals to me what seems like a potentially interesting asymmetry in the opinion:

    Indirect claiming of structural limitations implied by recitation of functional limitations is permissible,

    BUT

    the recitation of functional limitations does not in every instance necessarily imply structural limitations.

    That is, it was OK for IPCom to indirectly claim structural limitations by necessary implication resulting from recited functional limitations, but it was not OK for HTC to consider functional limitations as being necessarily implied in their prior assertion of structural limitations.

    If functional limitations had been necessarily implied by the recitation of structural limitations, the structural limitation-based objection would have been properly preserved for appeal by a functional limitation-based brief and argument.

  48. I’m not really sure that if you’re construing your own apparatus claims to have method steps in them that you’re begging for a beat down. Unless you are asserting them of course.

    However, you bring up a good subject litigator, I wonder how the patentee had argued the claims should have been construed back at the DC. And if he argued for the federal circuit’s adopted construction then I wonder how they planned to sidestep their own lack of a algorithm given that the fed was sure to rule on that. Or did the patentee totally not see that one coming like a gigantic freight train barrelling down the tracks whistles blowing and bells a ringing?

  49. BTW guys, protip, don’t construe method steps in your apparatus claims when they are not there. Seriously, you’re just begging for a beat down. Just begging.

  50. If the prior art doesn’t have instructions stored therein for performing the task, then the STRUCTURE (i.e., the processor storage or computer readable media) is not capable.

  51. BTW guys, protip, don’t put method steps in your apparatus claims. Seriously, you’re just begging for a beat down. Just begging.

  52. Here however, the Federal Circuit interpreted the claim language as having an apparatus defined by its capability to perform a set of defined tasks.

    Of course, that means that to anticipate or render obvious the claim, the prior art need only be capable of performing the tasks.

    Also, as noted above, in the absence of any defined novel structure which would impart such capabilities to the claimed system, the claim is d.o.a.

    Put a fork in Bernie. He’s done.

  53. Nah I agree with the court here, they’re not saying the steps have to be performed which is the vice people run into. As D pointed out, there is a legal distinction and it is important.

  54. “Here however, the Federal Circuit interpreted the claim language as having an apparatus defined by its capability to perform a set of defined tasks.”

    I concur that is what this claim is doing. However, indefiniteness/102 may well rear its ugly head even so.

    “On appeal, the Federal Circuit identified that holding as in error because the claimed function must be tied to a more particular structure. Here that structure would ideally be an algorithm that defines in some terms how the arrangement would work. See Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).”

    Mhmm, what I figured they’d say.

    “the appellate panel refused to reverse”

    Wow, way to f them over for having bad lawltards.

    “The Federal Circuit did not require the lower court to re-open this issue on remand. However, by identifying the error, it is quite likely that the lower court will take a fresh look at the issue – an action likely well within its discretion. This is especially likely if the court broadly considers Supreme Court precedent such as Leer v. Adkins and the policy that “bad patents” should be invalidated even if that means bending some of the norms of civil procedure.”

    Look forward to hearing about that.

    “To be clear, then, you should not use the term.”

    Pay him no mind D, you totally should.

    “As Dennis so subtly suggested, HTC also missed the “single means” claim issue.”

    Ned it looks to me like they missed a lot of issues.

  55. [To be clear, even though I used the word "troll," I believe that non-practicing entities should generally have a right to enforce their patents.]

    To be clear, then, you should not use the term.

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