Guest Post: The Problematic Origins of Nationwide Patent Venue.

Guest Post by Professor Tun-Jen Chiang of George Mason University.

Patent litigators are all familiar with the Eastern District of Texas. The reason that this otherwise-unexceptional district is able to dominate patent litigation comes down to a little known case, VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), which created nationwide venue for virtually every patent case.

Some background is in order. 28 U.S.C. § 1400(b) allows a patent infringement action to be brought, inter alia, where the defendant "resides." Intuitively, one would think that residence refers to the state of incorporation or principal place of business, and under that version few defendants reside in East Texas.

28 U.S.C. § 1391(c) adds a wrinkle. It states: "For purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction." By the plain language of the statute, a corporation that makes any sales in East Texas is then deemed to reside there. This is the basic analysis of VE Holdings.

But the Supreme Court decision in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957) is very much to the contrary. Fourco dealt with the prior version of § 1391(c), which stated: "A corporation may be sued in any judicial district in which it . . . is doing business, and such judicial district shall be regarded as the residence of such corporation for venue purposes." The respondent in Fourco specifically argued that old § 1391(c) was clear and deemed a corporation to "reside" wherever it did business. The Supreme Court nonetheless held it did not apply to § 1400(b):

We think it is clear that § 1391 (c) is a general corporation venue statute, whereas § 1400(b) is a special venue statute applicable, specifically, to all defendants in a particular type of actions, i.e., patent infringement actions. In these circumstances the law is settled that [h]owever inclusive may be the general language of a statute, it will not be held to apply to a matter specifically dealt with in another part of the same enactment. . . .

We hold that 28 U.S.C. § 1400 (b) is the sole and exclusive provision controlling venue in patent infringement actions, and that it is not to be supplemented by the provisions of 28 U.S.C. § 1391(c).

The Federal Circuit in VE Holdings distinguished Fourco because the statutory language had changed. See 917 F.2d at 1579. But the change in language was immaterial to the underlying rationale of Fourco: the new § 1391(c) was and is still a "general corporation venue statute," and § 1400(b) was and is still a "special venue statute applicable, specifically, to . . . patent infringement actions."

What we have is the familiar situation where the Federal Circuit tosses aside a Supreme Court decision by invoking a slim excuse. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Until very recently the Supreme Court indulged this. But the Court seems to have changed, and this would be a good time to revisit VE Holdings.

I should add one thing, which is that one can very much question whether Fourco itself is correctly decided. But this is, of course, not a question the Federal Circuit should arrogate upon itself to decide.

210 thoughts on “Guest Post: The Problematic Origins of Nationwide Patent Venue.

  1. 101, there is a difference.  But a process is a sequence of acts.  If one finds a path, how is that a process?  How is that even a machine?  Is it a composition of matter?  What is it?

  2. I’m not a patent attorney, so could someone please explain to me why the Eastern District of Texas is so popular for litigation? Thanks.

  3. I'm sorry, anon, but there was a lot of angst at the time.  IIRC Lemley cited some case commentary.  However, the fact that the bar wanted to "overturn" Halliburton independently demonstrates the angst.

  4. “While it may be true that a process does not require a particular machine, every course I ever took on cognitive psychology, neuroscience, systems analysis and complex information processing, all taught me that, “processes” require structure. ”

    If you ever actually did take such classes (which I doubt), that explains why your view of what a “structure” is is so far removed from what we are actually discussing in patent law as to be lolable.

  5. See Lemely’s article…
    Given that assumption, what Frederico said is clear.

    Thanks for proving my case Ned.

    You can pretty much take any assumption by Lemley and use it as proof of its counterpoint.

    Plus, directly to our conversation, you STILL have to show how you take Frederico’s exact words and turn them 180 degrees around to reach the fallacy of mere codification.

    The reason why you have not done so is simple: you cannot do so.

    On top of that, you are STILL trying to use the point of novelty and I have shown you that the Court has repeatedly ruled that the point of novelty is the claim. The whole claim.

    Stop using fallacy in your arguments. It’s not working.

  6. Not typically, but who knows? Perhaps I’ve fired him off a few times. I couldn’t tell you for sure, but it isn’t in my form paragraphs or anything.

  7. anon, the bar generally believe Halliburton had banned functional claiming in apparatus claims.

    See Lemely's article.  He agrees with this proposition.

    Given that assumption, what Frederico said is clear.

    In sum, The patent bar believed that Halliburton had banned the use of functionally defined claim terms in combination claims.  Based upon this belief the bar urged §112, paragraph 6.

    This does not mean that section 112 paragraph 6 was intended to authorize claims that were functional at the point of novelty.  These are single means claims.  Federico said that section 112 paragraph 6 did not authorize a single means claims.

  8. anon, asked and answered

    Respectfully Ned, not at all. Perhaps you thought you answered by email, but such answer is not present here on the web site.

    Again, explain the explicit words of Frederico saying Halliburton was made obsolete by the 1952 Act, and make this copacetic with your notion of “merely codified.”

  9. Oh I can’t remember the silly case name

    Come back when you do.

    Still looking MM? You’ve been gone for awhile now.

  10. But, generally, A to D converters are circuits.

    Generally?

    This is a path I have tried in the past to help you walk Ned. Are you ready to take those three steps to understanding software?

  11. Ned,

    Explain Frederico’s words.

    Do so with case law after the passage of the 1952 Act.

    Once again, you appear to be too selective in your “remembering,” and conveniently excising those things that get in the way of your agenda. Sorry Ned, but you have too deal with these things.

    And finally, stop with the Point of Novelty fallacy. The Supreme Court (post 1952) has made clear that the point of novelty is the claim itself – the whole claim. Any statement from you must deal with this. Any statement from you must deal with claims composed entirely of non-novel elements. Your attempts at painting a foundational view with any Point of Novelty must fail given these points and your ignoring them does not make them go away. Your mindlessly repeating “codification” does not make it so. Your writing an article does not make it so. All you are doing is closing your eyes, sticking your fingers in your ears and chanting “nananana.” Remove your fingers so that you can hear your own offered evidence from Frederico. Open your eyes to the actual words and open your mind to understanding what those words actually say – not what you want them to say.

  12. “Even the idea of that is obnoxious.”

    Mr. Heller:

    What is the difference between a circuit and a process?

    When you can answer that honestly, you may discover that the only idea that is obnoxious is your own.

  13. Mr. Heller:

    Well if I discover a path between two or more points along which an electronic current can be carried, and figure out how to make it work, and no other circuits are using that path, there is nothing in the statute, or Constitution that says I can’t get a patent on that process itself.

  14. anon, I know in minute detail the entire process behind 112, p.6.  I co-wrote the defining article with Rudy Hoffman.  I have described the process in detail many times.  Rich was codifying Faulkner v. Gibbs and Westinghouse.  

    However, as everyone recognized, right after Halliburton, there was broad concern that all forms of functional claiming in combination claims was proscribed.  It was this concern that prompted a proposed amendment.  But what happened was instead a codification because Faulkner v. Gibbs clarified Halliburton.  The SC made clear that functional elements in combination claims were acceptable where the novelty was in the combination.

    Such claims were already construed, per Westinghouse, to cover the corresponding structure recited in the specification and equivalents.  Nothing new there at all.

    Codification.  

    Nothing about overruling, which would have required saying something about PON.  Indeed Frederico specifically said 112, p. 6, did not apply to single means claims or their equivalent, which was the exact and entire problem with the Halliburton claims.

  15. Mr. 101, agreed.  If you can claim the process of conversion in some fashion, then you are not limited to specific apparatus or circuits.  

    But, generally, A to D converters are circuits.

  16. anon, that Frederico did not appreciate the rule of construction (from Westinghouse) was already the law can be understood.  He was not a litigator.  However, the portion about "combination" in 112, p.6, was clearly a codification of Faulkner.  If it was not, you will have to explain why congress did not say something about "point of novelty."  They said nothing at all.  Nothing.  If they had intended to OVERRULE Halliburton, one would think that congress might have said something about PON.

    Instead, Faulkner clarified that functional elements in combination claims were OK.  That is what congress enacted.  Why in the fricken world do you think that Halliburton overturned Faulkner or Halliburton?

    As I said, the construction clause was "new."  But this was simply a codification.

    You might want to also add that the original proposal from the Milwaukee Patent Law Assn. did propose a flat out overruling of Halliburton.  But that was not the language proposed.  What was proposed was simply a clarification of what Halliburton/Faulkner had actually held.

  17. Night, “You are entitled to claim the full scope of what you have enabled.”

    Ned :Obviously, you avoid the issue.

    101 Integration Expert: How has Night Writer Patent Attorney avoided the issue exactly?

    The issue is, you have invented on apparatus for converting analog to digital. Can you claim all apparatus that perform this function?

    101 Integration Expert: That is obviously a question of scope that comports with Night Write Patent Attorneys answer above, Is it not?

    On the other hand I find it a rather telling display of hypocrisy on your part to accuse someone of avoiding anything, the way you have avoided the issues of anon up thread.

    And of course there is that little thing of “Integration” that keeps coming up, and is avoided by you.

  18. As concerns Lemley, you only need be reminded of the old axiom: those who can Do, and those who can’t…teach. For the love of G*d I don’t know why anyone pays attention to a person who is not even a registered practitioner and – from all indications – never wrote a patent application in his life or helped prosecute a patent. And lets not get started on how a poly sci major with no technical education or experience seems to think he is qualified to opine on how computing systems work. His biggest achievement to date seems to be ….self-promotion.

  19. “Processes do not require particular machines or structure.”

    Mr. Heller:

    May I ask, what authority to you rely on for the above statement?

    While it may be true that a process does not require a particular machine, every course I ever took on cognitive psychology, neuroscience, systems analysis and complex information processing, all taught me that, “processes” require structure.

    In fact processes not only require structure, processes are structure.

  20. If it is written so as to comply with Section 112, my guess is that it would no longer be considered to be “abstract.”

  21. It appears that my comment did not take.

    Iin a nutshell, your pre-1952 cases were in fact NOT codified per your own beloved Frederico.

    You, Ned, after all, are the one who supplied the very source of this information.

    I really don’t understand how you can quote pre-1952 law and claim something completely at odds with what Frederico stated.

  22. One major problem Ned: configuring does in fact and in law create a new machine.

    Without fact and without law, all you have for your position is policy. Too bad your policy argument is nonexistent.

  23. Well, Mr. Heller:

    That will depend on the category one files under. A process is much broader than say a claim to a particular machine or apparatus. If your invention is limited to the converter box itself, then you may be limited in scope to the box in your drawings and the description of the specification. However, if your invention is the process of conversion from analog to digital you may indeed have a broad scope. And if you are the pioneer of converting analog to digital then you most certainly can foreclose others from the use of your analog to digital conversion process, without having to describe every single embodiment in your specification.

    But still even a patent with the broad scope of a pioneering process, or just a process itself, will not prevent inventors from discovering faster, and more efficient ways of performing the process, and filing a patent on the improvement.

  24. Clearly, Mr. anon, section 112, paragraph 6 is a codification Faulkner, which itself is a clarification of Halliburton.

    Clearly NOT.

    Ned, once again – your own beloved source of Frederico. Unless you have borrowed a time machine from a certain poster, Supreme Court decisions pre-1952 law do not and cannot overcome what is plainly in the new law.

  25. Message to Lemley:

    A claim to an old machine configured to run a process is, in reality, a claim to a process.

    Because such a claim nominally is to a machine, such a claim is indefinite under 112, p.2.

  26. Fish, even written the way it was, a dissent would have allowed the claim on the principle that his invention was of that scope.

    Still, the case established the principle that one could not claim principles in the abstract, that one must claim practical applications.  In that case, the court required the claim to be limited to the machines and processes disclosed in the specification and equivalents.  

  27. “That public policy is inapplicable for information processing.”

    Wait, WUT? It is VERY applicable, it is 300000000 times more applicable. As everyone and their granny can program on a compooter but only a very select few people are going to be “inventing” an oil well maintenance piece of equipment.

  28. “Let’s see systems that read on the claims and then arguments as to why it is over claiming in patent law”

    You just want the good prof Lemley to provide examples and arguments? I cannot fathom why you would literally wish for someone to, of their own volition start an argument. But, he may well do it if you’d like him to.

    I personally would rather him give us some real world examples and tell us, without putting forth any arguments, why it is overclaiming.

  29. anon, Just how was Halliburton modified or rendered obsolete. Have you Faulkner v. Gibbs?

    That case made it clear that when the novelty was in the combination, when each of the elements was old, the Supreme Court had no problem with means plus function claims. Clearly, Mr. anon, section 112, paragraph 6 is a codification Faulkner, which itself is a clarification of Halliburton.

    From the 1949 case:

    “The record, briefs and arguments of counsel lead us to the view that Halliburton, supra, is inapposite. We there 268*268 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.”

    Faulkner v. Gibbs, 338 US 267 – Supreme Court 1949

    link to scholar.google.com

  30. “overclaiming” is not a proper way to reject/invalidate a claim — rejection/invalidation needs to be based on a specific statutory section.

  31. The Morse claim is so riddled with definiteness problems that it should not stand for any Section 101 principle. Now if it were rewritten so as to be definite, then we could have a good 101 discussion.

    Dennis, that might be a good article/exercise for your readers — rewrite the Morse claim so it is definite and then see if it meets 101.

  32. No, Night, The principle applies the information processing technology.  It is just that when one is claiming a program for a computer that does X, one is really claiming a process and not a particular machine.  Once one realizes this, the difference becomes clear.

    Processes do not require particular machines or structure.  They simply require that X acts be performed.

  33. Night, "You are entitled to claim the full scope of what you have enabled."

    Obviously, you avoid the issue.  

    The issue is, you have invented on apparatus for converting analog to digital.   Can you claim all apparatus that perform this function?

    The answer clearly and unmistakably is no.  But you consistently say yes.  There is a major, major, major disconnect between your thesis and the law.  What you propose is to the ability to claim principles in the abstract.  You consistently do this, consistently.  You have been advocating this for years, while accusing everybody else of essentially being Neanderthals because they don't understand what you're talking about.  But we do know what you're talking about, and you are plainly wrong.

    One disclosing one analog to digital converter cannot claim all analog-to-digital converters, plain and simple.  This has been the law since O'Reilly v.  Morse.

  34. And yet again, Ned leaves out the particularly apt (but particularly inconvenient) observation from Frederico that Halliburton was obsoleted with the 1952 change in law.

    “It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete

    Ned, this is your own provided source and now not once, but twice its plain reading goes against what you purport the law to be.

    Citing bad law is one thing.
    Citing bad law shown to be bad is quite another.

    Please stop citing bad law.

  35. The SCOTUS said it was invalidating it as a matter of public policy to encourage other ways of making the electronic equipment.

    That public policy is inapplicable for information processing. And, let’s remember that this is an judicially created exception–means narrow as possible. Never use really unless the facts are dead on.

    So, what we have here is an attempt to make an analogy between two different types of inventions when the analogy does not apply. Bensondoo.

  36. You are entitled to claim the full scope of what you have enabled.

    Patent applications are not for exhaustively listing every possible embodiment that one skilled in the art could come up with.

  37. I don’t know. It might be somewhere on his site, but I read it in his e-mail. Highly entertaining, Greg’s e-mails. I encourage all to subscribe to them.

  38. Night, Halliburton was a about oil drilling equipment.

    In that case, a prior art mechanism recorded sound echoes from an oil well for the purpose of determining how far down the oil well extended. The blips from the tubing collars were visable and could be counted. Because each tubing collar had a fixed length, counting them determined the distance to the bottom of the well.

    The invention was a mechanical tuner that enhanced the tubing collar blips.

    The claim:

    “and means associated with said pressure responsive device for tuning said receiving means to the frequency of echoes from the tubing collars of said tubing sections to clearly distinguish the echoes from said couplings from each other.”

    The other elements of a claim were old and conventional in combination.

    Note this is an apparatus claim and not a method claim. Even though the lower court had construed this claim element to cover the mechanical tuner, it held that an electronic device that enhanced the tubing collar blips was an equivalent.

    The Supreme Court held the claim indefinite because it literally covered every possible way of enhancing the tubing collar echoes, exactly as if it were a method claim, and regardless that the claim was to a physical structure. This sheer nominal scope of the claim before itself was the problem.

    This is the exact problem that Lemley complains of with modern patents, particularly in the computer field. Their literal scope claims all apparatus that could perform the claimed function or result. It is amazing that this precise issue was before the Supreme Court once upon a time and decided. Such claims are indefinite.

    Do you have any comment?

  39. Night, stick to the facts. If you invent one A to D converter, can you patent all A to D coverters?

    Consider, the spec. definese and A to D converter in terms of its function. The structure of one example is disclosed. The claim is

    I claim:

    1. An A to D converter.

    Is this a proper claim?

  40. Yes, but notice over and over again, what we have is abstract arguments without real examples. Let’s see systems that read on the claims and then arguments as to why it is over claiming in patent law. As in, was the invention that is read on enabled?

    that is the question. Lemley’s abstraction psychotic rantings is Bensondoo. Yes, psychotic in the clinical sense as he apparently lives in his own world where he can wrote nonsense without real world examples and without using patent law.

  41. I admit MM that what has been happening is that people with no CS background have been writing these applications and many are ridiculous.

    But, you know, if you go back to the history of this, you will see that the top dogs at the time saw that Benson was going to cause this. The problem with Benson is that it does not give the PTO the tools it needs to examine CS applications. Instead, it mischaracterized the technology and encouraged the PTO to continue a fight to try and use 101 instead of 102 and 103.

    With that said there are many good CS applications out there and, by and large, the system is working.

  42. “why don’t you search for valid and eligible claims that contain mental steps. Then see how those are integrated into the claim as a whole.”

    Exactly! I even offered to perform the “Integration Analysis” for him, if he would just bring the claims. But he is too afraid to even do that!

    All MM wants to do is type[ old step new thought], (or whatever the latest version of his theory is) and never engage in any real analysis and substantive discussion of real claims and cases.

  43. “Funny, it’s the same people who keep dodging your request to apply the law of integration to certain claims. (Funny as in peculiar, not as in ha-ha).”

    Yes, that would be Ned, MM, and 6. All of whom decline to perform “Integration Analysis” on Ultramercials claims using the USPTO’s official guidelines.

    And now we have the MPEP with more examples of “Integration Analysis” as applied to software and computers.

    But you can bet if “Integration Analysis” validated MM’s point of novelty and mental steps tests/theories, 6 overreaching use of pre-emption, and Ned’s desire to eliminate business method and software patents by ANY means, they would be on here trumpeting “Integration” at every turn. Heck, Lemely would write a paper on it!

    Yet they all are quiet as mice as the law of “Integration Analysis” is further embedded in the patent system. From Diehr to Prometheus, to the Guidelines and now the new MPEP, “Integration” is here to stay and must be dealt with!

  44. MM,

    You seem to relish finding things, why don’t you search for valid and eligible claims that contain mental steps. Then see how those are integrated into the claim as a whole.

    Come back and report.

  45. 6, you are fat out wrong. First of all every method and process has structure, beginning with pure mental concepts. This was proven in the late 1980′ s and early 90′s with PET scans. However, for patent purposes we are talking about applied processes, and not mere thoughts.

    Read the process below as described by the “Actual Inventors”. There are no particular machines tied to the process. Yet it produces a concrete objectively measurable result just as though it was part of a mechanical process. This requires structure! Nothing can be accomplished without structure. Software has structure, business methods have structure irregardless of the particular instrumentalities used in the process. We knew this about process back in the 1800′s! We know it now.

    “The object of my invention was to increase the production of the best quality of flour, and my improvement consisted in separating from the meal first the superfine flour, and then the pulverulent impurities mingled with the flour-producing portions of the middlings meal, so as to make ‘white’ or ‘purified’ middlings, which, when reground and rebolted, would yield pure white flour, which, when added to the superfine, would improve the quality of the flour resulting from their union, instead of deteriorating its quality, as had heretofore been the case when the middlings flour was mingled with the superfine.”

    Cochrane v. Deener, 94 U.S. 780 (1876)

  46. “Just let me us all know how to “integrate” a new mental step with a prior old, conventional non-mental step. ”

    The Prometheus Court already explained that to you 9-0.
    The case most on point , and best example is Diehr.

    Now if you have an actual claim from a real patent I would be glad to perform “Integration Analysis” for the claim according to the USPTO Official Guidelines and the new MPEP sections on Integration.

  47. one of the places I used to work had plenty of folks with post-graduate degrees in computer science writing patent applications

    Define “plenty”.

    And how long ago was this?

  48. There is no point of novelty test for determining patent eligible subject matter.

    Steps can be in any combination of old, new, mental, and physical.

    As long as the applied concept is “integrated” into the process as a whole, the claim is a patent eligible application.

    Just let me us all know how to “integrate” a new mental step with a prior old, conventional non-mental step. Maybe you and anon can shack up together for a weekend and figure out how to do that. That would probably be a lot of fun for both of you and lucrative, too.

  49. “How is that possible for devices with the same structure to have differenet behaviors?”

    It is possible because nobody knows what the differences are.

  50. “is the method in Deener structureless?”

    All methods are structureless brosensky. They are, by their nature non-structural.

  51. “First, the structure is how to process the information (see Deener)”

    How to process information is not a structure brosensky, but I figured you wouldn’t be able to resist a little rant all about everything you say every time someone points out what is really going on in softwarez so I just had to let you see the article.

  52. Ned,

    The law is that the point of novelty is the claim, the whole claim. This is precisely why claims as a single means are not allowed. Your statement of “ that authorizes claiming the point of novelty functionally. Nothing is simply inappropriate in the context of our discussion once you accept the point of law that is foundational. Even your source of Frederico says so as I pointed out earlier.

    Everything else you posted above is simply incorrect as to what the law is. Your part about the SC is the part that Frederico himself says is gone. The claim must be read as a whole and ANY portion of a combination claim is allowed to be in functional language. You have no cite whatsoever that limits the functional portion of a combination claim ONLY to old elements. None.

    I “get” what you “want” the law to say. It just does not say that.

  53. Gee, one of the places I used to work had plenty of folks with post-graduate degrees in computer science writing patent applications for some of the largest software developers in the world. I am not sure why that is quoted. You cannot really believe that the most popular major at Stanford is not a real science.

    But, then that is your MO. Attack the first principles. No the earth doesn’t go around the earth. Please prove this over and over.

  54. No I do not, anon.  The problem is that the claim is not claiming the invention.  This is a classic 112, p.2 problem.
     
    Second, even if the novel claim element defines functionally over the prior art, it is claiming a result.  Why?  The because that is what is being claimed.  It is the same thing as a single means claim.  The novel structure is not being claimed.  That was the problem in Halliburton and in Donaldson, but not in the claims found OK in Halliburton. 
     
    What we get from this is that the SC has no problem with old elements being claimed functionally.  But it does the new.
     
    Note, the Federal Circuit, consistently, limits MPF equivalents to known equivalents.  This is the same thing as saying the MPF element can only claim old elements.  Very consistent with the notion that the new element cannot be claimed functionally.
     
    There is NOTHING in 112, p.6, that authorizes claiming the point of novelty functionally.  Nothing.
     
     

     

  55. The improvement lies in a new structure in the carburetor.

    Your foundation to your hypo is clear: there is an invention.

    After that, you drive off into the weeds.

  56. No.

    Your hypo is faulty.
    Your logic is faulty.

    You need to fix both because you are not communicating what you think you are communicating.

  57. Anon, there is no error in the hypo. The facts of the hypo are the same as in Halliburton and for that matter as in Donaldson. The claims in both cases litterally read on the prior art, but the corresponding structure was new.

    The lower court in Halliburton, as did the court in Donaldson limited, the claim to the corresponding structure described the specification and equivalents. In doing so they said the claim defined over the prior art. However, clearly the claim does not and the Supreme Court in Halliburton said so. Rich, in Donaldson, disagreed with the Supreme Court. What’s new here?

    I’m going to add to the facts the following, let us assume the claim instead of being word for word identical with the prior art, added a new functional limitation that the described the result of the novel structure. Let’s assume the novel structure improved the fuel/air mixture over a wider range of time, increasing the time the defined air/fuel mixture was present from 100 ms to 400 ms.

    A car comprising: a chassis, a pair of axles, an engine, and a carburetor cooperating with the engine to supply fuel in a defined air/fuel ratio for a predetermined time approximately 400 ms.

    The problem with this claim is that it varies in the prior art not by the novel structure, but by the result of that structure.

    Are you beginning to see the problem?

  58. You agree that the claim reads on the prior art, what it claims is not novel.

    Ned – you are not making any sense in your replies. Re-read my post and see that you have an error to correct in your hypo. Then you just might be able to say “Progress

    And don’t get me started about Lemley. He has no business in patent law. Or perhaps, his “business” interferes with his view of patent law. Either way, I do not view him as having any credibility in my book.

  59. Progress.

    You agree that the claim reads on the prior art, what it claims is not novel.

    But, if one construes the claim to cover the corresponding structure as advocated by Lemley?

    What we get is an indefinite claim, do we not? The claim itself does not define over the art. The corresponding structure does.

  60. Ned,

    You asking me to indulge you is similar to other discussions you would have in which you do not get the basics of the discussion correct, and yet want to build an edifice on a faulty foundation.

    I do not so indulge you.

    Get the foundation correct first.

    I will give you a hint though: you say that the novelty is in the particular structure of the carburetor and yet you say this “word” is identical to the prior art – you have a mis-connect as it cannot be both, novel and reads on. You seem to be caught up in the form of the word rather than the meaning of the word, for if an inventor truly has a “novel carburetor,” then by definition it cannot read on the prior art.

  61. “Ned, this boils down to a simple maxim that our mutual friend (101 Integration Expert) most readily agrees to: integration.”

    Yes, you are exactly right, as usual. Yet Mr. Heller will never broach the subject of “integration” or even include “integration” in his analysis.

    “As has been discussed many times, the claim itself is the “point of novelty.” The claim, the whole claim. This is the essence of what Diehr limits both Benson and Flook to.”

    Once again Anon, you are right on point. And once again Ned, to the best of my recollection, has never acknowledged that Diehr has cabined Flook and Benson is that way.

    It’s like the anti patent crowd just closes their eyes to huge pieces of Patent Law, and proceeds with their own fantasies. And for Ned its like the law stops at 1951.

  62. anon, indulge me:

    Prior art: A car comprising: a chassis, a pair of axles, an engine, and a carburetor cooperating with the engine to supply fuel in a defined air/fuel ratio.

    Claimed invention: A car comprising: a chassis, a pair of axles, an engine, and a carburetor cooperating with the engine to supply fuel in a defined air/fuel ratio.

    Note: this is not a means plus function claim. The novelty is in the corresponding structure of the carburetor.

    What, if anything is wrong with the claim? This should be simple, as the claim is word for word identical with the prior art. It reads on it, for G*ds sake. Word for word.

  63. “Everyone” does not dodge the question.

    Those with an agenda dodge the question.

    Funny, it’s the same people who keep dodging your request to apply the law of integration to certain claims. (Funny as in peculiar, not as in ha-ha).

    Yet these same people continuously clog the threads with baseless anti-patent arguments that have no merit and refuse to move forward, obsessed with and all in the name of trying to denigrate particular types of subject matter.

  64. MM, you are flat out wrong, as usual.

    There is no point of novelty test for determining patent eligible subject matter.

    Steps can be in any combination of old, new, mental, and physical.

    As long as the applied concept is “integrated” into the process as a whole, the claim is a patent eligible application.

    Prometheus ruled on this 9-0.

    Please go read it.

    I can quote it verbatim if you need me to, along with additional authority from the Court and the MPEP.

  65. Ned,

    This post of yours at 12:56 is non-responsive to my post. You are merely repeating your initial argument.

    Shall I repeat my response to your initial argument, or do you want to move the conversation forward?

  66. for which no research, development, or reduction to practice is required to obtain a patent grant

    What phrase of law comes to mind…?

    We’ve been over this before MM. Let’s move the discussion forward by not having to move backwards to accommodate your attempted obfuscations.

  67. NWPA: Look: is the method in Deener structureless?

    Well, when you first asked this question some time ago, I was not sure. So I went back and read Deener. And the answer to your question is no.

    Now what I don’t understand is why everyone on the board dodges the question?

  68. You have never acknowledged and used your own “theory” with the concepts of “no [newstep]” and “[newstep] = mental step” – NEVER.

    certainly does have a ‘point of novelty’

    Yes it does – the point of novelty is the claim. The whole claim. Time for you to be an “adult” and acknowedge the veracity of the above statement.

    After all, it is the law.

  69. “I think Halliburton is on point.”

    Mr. Heller, you are flat out wrong. Diehr is the case most on point for what is patent eligible subject matter. The Prometheus Court told you this 9-0. And in relying on Diehrs analysis, a claim to a combination ( The Whole Combination) that is “integrated” into the process is patent eligible subject matter

  70. Hello Mr. Heller:

    What authority do you rely on for dissecting a means claims from any individual elements then labeling it a single means claims ?

    If I claim a carberator that does function X, and that function is “integrated” into the process as a whole, according to the Supreme Court, the claim is a patent eligible application. Please see Prometheus for authority.

  71. anon, a combination of old elements is indeed patentable.  What we are talking about here is an old combination where one element is improved, but claimed functionally, or when a new element is added to an old, but claimed functionally.

    Just because a combination of elements may be novel because of the cooperation between elements, does not mean that every combination is new because of such cooperation. The cooperation between elements can be completely old and the invention lie in improvement of one of the elements.

    Take my carburetor example. The improvement lies in a new structure in the carburetor.  The specification discloses that the new carburetor delivers fuel and a gas/air ratio more reliably?  Assume further that the following combination is old,

    A car comprising:  a chassis, a pair of axles, an engine, and a carburetor cooperating with the engine to supply fuel in a defined air/fuel ratio.

    I improve the carburetor. I claim
     
    A car comprising: a chassis, a pair of axles, an engine, and a carburetor cooperating with the engine to supply fuel in a defined air/fuel ratio.
     
    Is there anything wrong with this claim?
     

     

  72. that we should protect investment

    No investment is required or necessary to draft vaguely described computer-implemented claims for which no research, development, or reduction to practice is required to obtain a patent grant.

    All you need to do is write the patent and file it. And very, very little skill in the “art” is needed. Maybe you should visit a law firm that prosecutes a lot of applications in this area and look at the quality of the invention disclosures and who’s drafting the applications. Hint: it isn’t people with post-graduate degrees in “computer science”.

  73. How can anything be implemented without structure?

    How can one claimed composition be distinguished from another by the recitation of process steps?

  74. we can only get you to realize that a claim having NO new steps at all still can yield a patent-eligible invention

    As all the regular commenters here know, I’ve acknowledged this fact scores of times. Where have you been?

    we can ever have you comment on the FACT that mental steps are allowed in a claim.

    Again, I’ve acknowledged this scores of times, at least. Where have you been? And it doesn’t take an “adult” to acknowledge these things. An honest child could do the same.

    Now then:

    A claim in the form:

    [series of old steps]+[newstep]

    certainly does have a “point of novelty” and recognizing that fact is something that people are permitted to do when discussing the claim.

    Now it’s your turn to be an “adult” and acknowedge the veracity of the above statement.

  75. Ned,

    Let’s keep this simple and on point – Frederico indicated that Halliburton was rendered obsolete.

    Stop using obsolete law.

    ps: no one is talking single means claims. Let that dust settle.

    pps: there is a difference between old structure and nominal elements. Your suggestion is not valid. Just like MM, you need to remember that a perfectly eligible (let alone valid) claim can be comprised completely of old structure.

    When you make an argument, you have to remember that that argument must be able to withstand such simple truths.

  76. Night, I think the problem here is that it doesn’t make any difference, really, what kind of phone one uses, or even if it is a phone, or how one does the software that recognizes the swipe and locks or unlocks the phone. All that is completely irrelevant. Which essentially makes a claim to locking or unlocking a phone in response to a swipe a method claim.

    I think method claims are just fine. I don’t think method claims should be limited to the corresponding structure recited the specification. That would turn the whole concept that the claims on its head.

    The objection I hear from others is that when you claim this method claim and for about apparatus however, that you are not claiming the method of claim in the structure. If you claim the structure, surely will have to disclose the software algorithms at least that implement the method.

    Regardless, a good patent attorney will include claims both to the apparatus and to the method in his patent. Even if the apparatus claims were not supported under section 112, the method claims would still be valid.

  77. Anon, it's keep this simple. Frederico did say that section 112 paragraph 6 to not authorize single means claims or claims that would add nominal elements. What does this mean?

    Halliburton condemned the claim there. It was a combination claim. In attitude old combination a new element. But the vice, according to the court, was that this new element was described functionally. Compare now the claimed that the Supreme Court did find valid. That too was a combination claim, but claimed the most crucial element in terms of its structure.

    From the above we again to see that the real problem identified by the court in Haliburton was at the most crucial element, the element that was added to the other elements, the element that was the new element in a combination, was described functionally. It appears that the Supreme Court thought the soul invention resided in this new element and not in a combination with the old elements.

    But if I were to take a single means claim and add to it nominal elements what would what I be adding? I would suggest you that I would be adding old structure.

  78. Luftwaffles:

    Please explain to me how a phone that is configured to unlock in response to a swipe and a phone that is configured to unlock based on pressing a button could have the same structure and yet behave differently. How is that possible for devices with the same structure to have differenet behaviors?

  79. Please explain to us laypeople how one would be able to identify the structural difference between a locked phone and an unlocked phone.

  80. The thing about Halliburton too is that the public policy for applying Halliburton is not present in all but a very few inventions. That is what is constantly forgotten in these posts (and misused by the likes of Lemley) is that Halliburton is judicial exception. It is not a statutory interpretation. That means narrow as possible. Fact patterns must be almost identical.

  81. This ignores common sense and what one having ordinary skill in the art would know and understand – and goes against the patent policy of including in specifications that which those of ordinary skill in the art would know and understand.

    But you already knew that, didn’t you NWPA? This is one fat slow pitch down the middle of the plate for you, isn’t it?

  82. Ned,

    Thanks for the purely nominal” language. Again, though, purely nominal is more than taken care of in the notion of integration that a claim as a whole must be understood in provides. Also, the end of the paragraph indicates that this is geared more towards novelty than to eligible subject matter – “not authorized to allow a claim which ‘reads on’ the prior art” – which is quite distinct from what you are purporting here.

    Also, interestingly,

    It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete

    Going exactly against the view that you purport here.

    So, in essence, what you have provided speaks against your views and towards mine.

    For that, I thank you.

  83. I think the word hinge and screw are functional language and should invoke 112, 6. If you forgot to put a description of a hinge or screw in your spec, then invalid claim. If you put in a screw and hinge, then you just get the exact structure for the screw or hinge you put in the spec.

  84. anon, from Frederico’s commentary:

    ” The last paragraph of section 112 relating to so-called functional claims is new. It provides that an element of a claim for a combination (and a combination may be not only a combination of mechanical elements, but also a combination of substances in a composition claim, or steps in a process claim) may be expressed as a means or step for performing a specified function, without the recital of structure, material or acts in support thereof. It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined. The language specifies “an” element, which means “any” element, and by this language, as well as by application of the general rule that the singular includes the plural, it follows that more than one of the elements of a combination claim may be expressed as different “means” plus statements of function. The language does not go so far as to permit a so-called single means claim, that is a claim which recites merely one means plus a statement of function and nothing else. Attempts to evade this by adding purely nominal elements to such a claim will undoubtedly be condemned. The paragraph ends by stating that such a claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. This relates primarily to the construction of such claims for the purpose of determining when the claim is infringed (note the use of the word “cover”), and would not appear to have much, if any, applicability in determining the patentability of such claims over the prior art, that is, the Patent Office is not authorized to allow a claim which “reads on” the prior art.”

    link to ipmall.info

  85. Ned,

    As posted below, I have not seen words of Frederico that purport to what you state, and as far as the statutory language goes, that clearly does not support your view (elsewise, we would not be having this discussion).

  86. Ned,

    I also caution you to be wary of citing to a pre-1952 Act case (Haliburton) for positions of law enacted by the 1952 act. – Not saying that you are directly wrong, but am saying that such a decision cannot speak to the impetus of why the Act was enacted if the decision came before the Act.

    You should readily agree that you have a propensity for discussing current law without citations that come after that current law was enacted. I hope that you recognize that this propensity actually weakens your position.

  87. That claim remains a single means claim in my view.

    Ned,

    I respect that that is your opinion.

    But how does that opinion stack up to what is actually law?

    Put simply, the law applies to a claim as a whole, and a single means claim simply is not the same thing as a single means claim PLUS other elements.

    In my opinion, you are merely treating form over substance, for any such multi-element claim can just as easily be reconfigured to take one of the elements and replace it with another means element, removing your concern, yet adding no substantive difference at all.

    It’s the content that matters – not the form. So the addition of elements, and (most importantly) the treatment of the claim as a whole, is what is important.

  88. Invention, a carburetor having a specific structure.
     
    I claim a carberator that does function X.
     
    That is a single means claim.
     
    I add to that a field of use limitation: "for a car."
     
    It still is a s single means claim.
     
    I add elements A, B, C, and D, all describing the conventional elements of a car.
     
    That claim remains a single means claim in my view.

  89. Sorry to have to explain this to you again, anon

    I’m sorry too that once again you have explained nothing with your attempted hijack with the bogus “[old steps]+[newstep] theory. But at least we see some baby steps from you in the amendment to a plurality of old steps. (shall I point out to you that your use of “adults” and “willing to understand” are thinly veiled insults, having no place here?)

    Now if we can only get you to realize that a claim having NO new steps at all STILL can yield a patent eligible invention, you might realize why your theory is such a fallacy. Or if we can ever have you comment on the FACT that mental steps are allowed in a claim. But that would take an adult willing to understand, wouldn’t it?

  90. even Frederico recognized that adding conventional elements to a single means claim was not authorized by section 112 paragraph 6.

    ????

    the novelty is in the combination

    Ned, this boils down to a simple maxim that our mutual friend (101 Integration Expert) most readily agrees to: integration.

    But in other words, this is merely what I have long posted actually means: As has been discussed many times, the claim itself is the “point of novelty.” The claim, the whole claim.

    This is the essence of what Diehr limits both Benson and Flook to.

  91. One only has to read the pitiful dicta in Benson to realize that it is one of the worst patent law decisions of all time.

  92. Haliburton was judicial exception that should be applied as narrowly as possbile. Lab equipment is not the same as information processing. So, Haliburton is inapplicable.

  93. >>Ned Heller: see Benson.

    NWPA: Benson: all numbers are laws of nature. Registers are an abstraction that capture a law of nature.

    NWPA to Ned Heller: See modern books on cognitive psychology and information theory.

  94. Night, I think Lemley really does not recognize that computer program claims are really method claims. They really are independent of computer apparatus and the details of the programming itself.

    Method claims are a legitmate claim form. However, there are limits to the genre, see Benson.

  95. “There was no point of novelty in a combination claim.”

    As has been discussed many times,

    As has been discussed many times, adults are permitted to discuss claims using the terms that are most accurate and understandable to people willing to understand.

    A claim in the form:

    [series of old steps]+[newstep]

    certainly does have a “point of novelty” and recognizing that fact is something that people are permitted to do when discussing the claim.

    Sorry to have to explain this to you again, anon.

  96. Lemley: summarized on page 54: I should be able to include an A to D converter, but you should not be able to claim all A to D converters if you were the first to invent an A to D converter.

    Lemley: Basic patent: scope of enablement. You should be able to claim all that you enabled. That is what software patents claim.

    You Lemley: my challenge to you: come up with systems that read on claims, and argue that the system was not enabled by the patent. That is patent law. Your paper is voodoo or Bensondoo.

  97. Mr. Heart, you might want to look at my reply to anon at 01:27 in addition to this reply.

    Regarding your first question, Congress did not expressly preclude functional claiming. However Congress did require that the claims be definite. The Supreme Court held that claims claiming the point of novelty functionally were indefinite. They did so not only in Haliburton, but also in Wabash, in Perkins Glue, and in O’Reilly v. Morse. (In contrast, in Westinghouse v. Boyden Power Brake, they limited the functionally claimed “novel” element to the corresponding structure described the specification and equivalents thereof.)

    Regarding your second question, I agree that the limitation of section 112 paragraph 6 to combinations expressed Congress’s intent to not authorize single means claims. From at least O’Reilly v. Morse, such claims were indefinite.

    However, even Frederico recognized that adding conventional elements to a single means claim was not authorized by section 112 paragraph 6. So what is the difference between a combination claim and a single means claim adding conventional elements? I think the difference must be that the novelty is in the combination and not in the single means.

  98. I will say it again–what is an idea?

    “A computer implementation of an idea.” Page 46. OK. What in the world does that mean.

    How can anything be implemented without structure? How can there be an “idea” without the “idea” having structure?

    Aren’t you mischaracterizing computer inventions? (Lemley responds in his head: yes, but I don’t care. The means justify the ends. I can re-write Benson and get it right so my Silicon Valley buddies will love me and it will make me even richer.)

    You see Dennis there are two statements that have recently been made by the SCOTUS: one by the boss: that we should protect investment, the other that the structure to implement the furance was what was patentable not the idea of how to improve the furance. Our Lemley is going after the second ever the clever boy that he is.

    The problem is that he is unfairly characterizing the invention and what is enabled. The hidden lie in his paper is what is enabled that is the question that is not answered.

    By the way, Lemley, you didn’t even cite serious papers on this subject that were written back in the late 1980′s.

  99. anon, when the novelty is in the combination, each of the elements can be old. But we can define an invention functionally in a single element. This is what is known as a single means claim. I think you will agree that single means claims are not authorized by section 112 paragraph 6.

    So what do we have when we add to a “single means claim” conventional elements? Federico complained of the latter, and gave his opinion that the new statute did not authorize such?

    Perhaps the solution is in the Halliburton case itself. In that case, the Supreme Court was not complaining about functionally expressed “old” elements of a claim. You can see this by comparing the claim they held invalid with the claim that they approved. The claimed they approved was set forth in its entirety in footnote 8, and is quoted below. That claim included a number of functionally claimed elements. However the functionally claimed elements were all old. The novel elements were defined structurally.

    From the above, the Supreme Court was complaining about apparatus claims that were functional at the point of novelty, essentially adding to the novel element, conventional elements. The novelty was not in the combination.

    This is why, I believe that when the novelty of a claim is in the combination, there is no problem under Halliburton, and such a claim is authorized by section 112 paragraph 6. But section 112 paragraph 6 does not authorize single means claims, or claims that add to the most crucial element conventional elements.

    Fn. 8 from Halliburton: “2. In a paper bag machine, the combination of the rotating cylinder provided with one or more pairs of side folding fingers adapted to be moved toward or from each other, a forming plate also provided with side forming fingers adapted to be moved toward or from each other, means for operating said fingers at definite times during the formative action upon the bag tube, operating means for the forming plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder during the rotary movement of said cylinder for the purpose of opening and forming the bottom of the bag tube, a finger moving with the forming plate for receiving the upper sheet of the tube and lifting it during the formative action, power devices for returning the forming plate to its original position to receive a new bag tube, and means to move the bag tube with the cylinder.” Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 417, n. 1.”

  100. This is not a paper that deserves serious attention. This paper simply mischaracterizes information processing. It is also interesting that he says that these software patent suits are way up there at 10%, which is probably less than the contribution of software to the GDP. So, just like in Benson, an attempt to demean the technology.

    Lemley is essentially just trying to re-write Benson so it will stick. The meaas justify the ends, eh Lemley?

    OK, Lemley, so I disclose one algorithm in the spec. as an example. Your argument is then what? You are arguing that the other algorithms weren’t enabled. But, of course they were. So, you are going against what one skilled in the art would say. And you obviously 1) know that and 2) don’t care. That makes you intellectually dishonest.

    So, swipe to unlock. What is the structure? The structure is a locked device, receiving a swipe command, and unlocking because you received the swipe command. That is structure. I–one skilled in the art of computer science–can implement that (just like in Deener) in many, many ways. The invention is what I wrote above. Just like in Deener the invention is in how to process the grain not exactly how the machines are arranged to process the grain.

    Actually, what I could do is write probably about 1000 pages that would disclose all the possible algorithms. But, that isn’t what patents are supposed to do is it.

    Lemley–Mr. I want to re-write Benson–but I can figure out ways to get away with it, where the law of nature and abstract words didn’t work. Here I got another way. Use 112, 6. Stern: Hey I got a way. Tie in to old technology.

    The problem is that Lemley is more clever and has Stanford to back him up. And, it is not conincidence that Lemley sits in the middle of the land of implementers not inventors.

  101. Look: is the method in Deener structureless? These functional claims have every bit as much strucuture as claiming a hinge to those of us skilled in the art.

    I could write out the structure for those claims you say are structureless. And, so could others that are skilled in the art. The fact that they have thousands of structures and the fact that (a person like Lemley) would not be able to understand the structure is not meaningful and merely speaks to the nature of the art. What is meaningful is that those skilled in the art know the structure that is claimed.

    The other thing that is bothersome is this word “idea.” What does that mean exactly? This is another word like “abstract” that is being used in different ways and being invoked to say we think that this claim is too broad.

    Well, guess what. There is case law to take out claims that are too broad under 112. Use it. If it is too broad then point to an invention that reads on the claims, and then argue how the invention that reads on the claims was not enabled.

    ==Read that sentence above 10 times Lemley. It invalidates everything in your paper. Instead of your abstract arguments, tell us real inventions that are read on by the claims and make the argument why they weren’t enabled by the patent. That is patent law. Your paper is voodoo.

  102. Yeah, this paper is terrible. First, the structure is how to process the information (see Deener). Lemley: what is the methods that you cite in your paper? Is that not structure on how to process information? I’ll answer for you—YES. It must be nice, Professor, to have a national forum for your nonsense.

    Lemley is, as I said before, the most dangerous person ever to be near the patent system. I pointed out that his copyright paper claimed that software had no strucuture.

    Another, thing that really gets me about this paper is not only is it trying to build a justification for removing software from patentability, but it also does not understand software and further the problems.

    You don’t know what big oh and little oh are do you Lemley?

  103. 28 U.S.C. § 1391(c) adds a wrinkle. It states: “For purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction.” By the plain language of the statute, a corporation that makes any sales in East Texas is then deemed to reside there. This is the basic analysis of VE Holdings.

    But the Supreme Court decision in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957) is very much to the contrary. Fourco dealt with the prior version of § 1391(c), which stated: “A corporation may be sued in any judicial district in which it . . . is doing business, and such judicial district shall be regarded as the residence of such corporation for venue purposes.”

    Doesn’t this just beg the question of whether the recent (and older) amendment(s) to 28 U.S.C. § 1391(c) overruled Fourco Glass Co.? That version of the statute didn’t even reference the Chapter, much less clearly attempt to define what it means to “reside” for the purposes of venue. It merely stated “[a] corporation may be sued in any judicial district in which it is incorporated or licensed to do business or is doing business, and such judicial district shall be regarded as the residence of such corporation for venue purposes.” See Fourco Glass Co., 353 U.S. at 223 (quoting § 1391(c)).

    This language is VERY different from the last version of the statute, which began “[f]or purposes of venue under this chapter[,]” which includes Section and 1400, and the new statute, which begins “[f]or all venue purposes . . . .” It doesn’t get any clearer than that. I can’t imagine SCOTUS ignoring the plain language of the statute, which clearly defines what it means for a corporation to “reside” in a location for purposes of venue in order to fall back on Fourco.

  104. Excellent point MM. The whole post seems biased. The Supremes have screw up patent law every time they touch it. The KSR decision was a disaster and Congress should revoke patent jurisdiction from the Supreme Court

  105. For the most part, Ned, I agree with your first post and some of your points in your second. But I have two follow-up questions about your second post.

    There is nothing in the congressional history that suggests that Congress intended to authorize functional claiming in apparatus claims.

    OK. But did Congress explicitly preclude functional claiming in apparatus claims?

    Thus the recital in section 112 paragraph 6 that a functional claim element had to be in a combination claim is significant. It is a declaration that the functional element cannot be the point of novelty.

    Wasn’t the combination requirement in 112_6 just an explicit recognition that “single means” claims are unpatentable, per O’Reilly v. Morse?

  106. There was no point of novelty in a combination claim.

    As has been discussed many times, the claim itself is the “point of novelty.” The claim, the whole claim.

  107. just as a recipe when written or printed on a piece of paper

    Really MM, recipes? how very trite. And how very ignorant as to what goes on in a computer.

    Oh I can’t remember the silly case name

    Come back when you do. In the mean time, stop making crrp up.

  108. programming a computer does cause structural (real life physical stuctural change).

    No doubt, just as a recipe when written or printed on a piece of paper has microscopic physical “structure” that can be measured. Can a novel recipe in a specification therefore be referred to via 112P6 and impart patentability to an otherwise anticipated claim? If not, why not? If so, where are the granted claims? Greedy recipe book authors everywhere are very curious.

    More importantly, as has been pointed out to you many, many time, the “structural change” incurred on computer-readable media by a generically encoded algorithm is a completely indefinite structure. Absent recitation of the encoding language, an infinite number of digital structures could suffice. You’ll recognize that this is not true of structures satisfying 112P6.

    “the legal fiction that says otherwise”

    Cite please.

    Oh I can’t remember the silly case name. I think it was Rader, way back when, pulling some baloney out of his behind.

  109. This is what has always puzzled me about this situation: If Congress really did intend to overule and render moot the special venue statute for patent suits by a general venue statute or its amendment [as a CAFC panel held} them why did Congress leave the now-misleading special patent venue statute on the books?

  110. TJ, well that was the key language.  If it is not there anymore, the question is once again on the table. 
     
    It is a matter of statutory construction.   The critical language in the current statute appears to be the word "all."
     
     
     

     

  111. I have two responses to that argument. The first is that I find a distinction between “for purposes of venue under this chapter” and “for venue purposes” pretty unconvincing. The second point–admittedly not a point I made in the main post–is that the current 1391(c)(2) says:

    “For all venue purposes . . . an entity with the capacity to sue and be sued in its common name under applicable law, whether or not incorporated, shall be deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the court’s personal jurisdiction . . .”

    Thus, the current 1391(c) is much closer to the language of Fourco than to the language of VE Holding. If the key language the Federal Circuit is hanging its hat on is “under this chapter,” then there is a huge problem that it is not there any more.

  112. the legal fiction that says otherwise

    Cite please.

    And let me give you one that says that programming a computer does cause structural (real life physical stuctural change) and is thus not “fiction” (legal or otherwise): Alappat.

  113. Lemley uses the term “overclaiming.” If a patent claim is invalid for “over claiming” under which section of Title 35 is it invalid?

  114. MM, not only not structure, but not a process.

    A process can use a programmed computer. But a programmed computer is not a process.

    The source of all the confusion about the function of a machine as process is none other than

    Rich.

  115. So what are we to take away from this?

    Algorithms are not “structure” and the legal fiction that says otherwise is probably the most offensive aspect of our current patent laws, with the possible exception of using the fact of a license or the number of sales of a patented prodcut as evidence of the non-obviousness of a claim covering that product.

  116. I like to add that Lemley has one thing right and it is this: Congress did not intend to authorize functional claiming in apparatus claims except in the manner provided by section 112, paragraph 6.

    After Westinghouse v. Boyden Power Brake, the rule of construction of functional elements in apparatus claims began to be that of section 112 paragraph 6, i.e. that they covered the corresponding structure described the specification and equivalents thereof. These were not limited in court to functional claim elements only at the point of novelty. They generally applied all claim elements expressed functionally in apparatus claims.

    So by the time of the Halliburton case, there was no real problem with respect to actual claim scope. A functionally express claim covered the corresponding structure and equivalents. It was a range of equivalents that was of issue in court.

    But in the Halliburton case, the Supreme Court thought the problem of claiming the novel feature of an apparatus claim in terms of what it did, rather than otherwise, was one of definiteness. Simply construing to cover the corresponding structure recited in the specification and equivalents was not sufficient. The Supreme Court there held that the problem was one of the broad language in the claim regardless of the narrowness of actual claim scope. The claims were indefinite, and because of that, they did not provide adequate notice of what was claimed. This is the central problem that Lemley complains of. Lack of precision in claim scope.

    There is nothing in the congressional history that suggests that Congress intended to authorize functional claiming in apparatus claims except in the manner provided by section 112 paragraph 6, which is specifically limited to combination claims. Combination claims, at the time, were well understood. The novelty was in the combination and not in the particular element. There was no point of novelty in a combination claim. Thus the recital in section 112 paragraph 6 that a functional claim element had to be in a combination claim is significant. It is a declaration that the functional element cannot be the point of novelty.

    So what are we to take away from this? That regardless of the construction of functional claim elements to cover the corresponding structure recited the specification equivalents, they are indefinite. They are authorized only in combination claims per section 112 paragraph 6. Further, they are authorized only when they use a specific claim format, i.e. means for or step for introductory language.

  117. TJ, my apologies.

    I think the point I was trying to make was that your quote of the statute did not highlight in italics the portion of the statute that the Federal Circuit highlighted. It is the portion I put in quotes, namely “For purposes of venue under this chapter….”

    That was the language that was critical to the analysis of the Federal Circuit. The Federal Circuit held that this language specifically incorporated the general venue language into all special venues statutes in that chapter. I think this is a reasonable construction of that language in that statute.

  118. 6, Lemley is close, but I don’t think he is entirely correct in his approach. May I be so bold as to suggest that a computer program claimed as a series of steps, each step of which is prefixed by an implied “means for” (which is his stated objective) really is a claim to a process. The apparatus is insignificant and can be ignored just as Lemley argues. When an apparatus is insignificant, and the details of the program are insignificant, one is really claiming a process. These are legitimate claim forms.

    However, in analyzing a process consisting of a series of program steps, the question really is whether the listed steps involves a plurality of physical acts. A process has to have at least two Acts. Simply reciting a series of program steps that have no physical acts, or which only have one physical input or one physical output is not a process.

    Also I find it interesting that Lemley doesn’t know the history of functional claiming. It really includes O’Reilly v. Morse, which he fails to mention. It also fails to include Westinghouse v. Boyden Power Brake, which announced the rule that an apparatus claim that was functional at the point of novelty that one should construe the claim to cover the corresponding structure described in the specification and equivalents thereof.

    Finally he states at footnote 39, that section 112 paragraph 6 authorizes claims that were functional at the point of novelty. There is nothing in the language of that statute which says this. The statute language is actually to the contrary. It requires that the claim be a combination claim, which essentially forbids the use of functional language in a single means claims. But as Federico mentioned, he believed that the courts would not extend the statute a single means claims, or to a claim that added only conventional elements. Lemley did not, significantly, quote this portion.

    Therefore I think a claim that is functional at the point of novelty and adds only conventional elements is not authorized by section 112 paragraph 6.

  119. Ned, in what sense is a full quote of the statutory language you are relying on, plus an acknowledgment that “by the plain language of the statute” the Federal Circuit is correct, not a “fair summary of the Federal Circuit holding”? If you want to say that “for purposes of venue under this chapter” (new statute) is somehow more clear than “for venue purposes” (old statute), then that is fine. But please do go around accusing people of misrepresentation.

    As for the answer to your question, the short answer would be “because the Supreme Court said so.” It is neither more sensible nor better policy to differentiate between patent infringement and product liability under the old statute (where such differentiation was unquestioned) than under the new statute. The only difference is that the Federal Circuit seized only a slim excuse to do what it thought was the more sensible thing to do. You can of course agree with its policy judgment–I explicitly said that in the last paragraph–but that is not the issue.

  120. If a corporation can be sued in a district for products liability because it resides there, why shouldn’t we be able to sue that same corporation in that same district for patent infringement?

    Is anyone making the counter-argument?

  121. I don’t think this a a fair summary of the Federal Circuit holding. The court relied on this language, “For purposes of venue under this chapter…,” The Federal Circuit noted that “chapter” referred to included the patent venue statute. The court essentially held that Congress had crafted the amendment to the general venue statute to apply generally to all venue statutes in the chapter to the extent of corporate residences. This holding clearly is correct.

    Second, I see no justification for distinguishing patent venue from the general vendor statute in the case of corporations. If a corporation can be sued in a district for products liability because it resides there, why shouldn’t we be able to sue that same corporation in that same district for patent infringement?

  122. Hey NWPA did you see the new Lemley article he’s about to publish? Draft versions are available!

    He basically just jumps on my bandwagon where I’m decrying the overuse of functional language in software cases. But, notably, I hear (though I haven’t gotten all the way through the article myself yet) he seems to think that it will all be fine as long as we use the 112 6th for all functional limitations in such cases and then limit to the algorithm (as the CAFC does for 112 6th currently).

    I of course disagree with him about the solution to the issue, preferring instead to simply acknowledge that they lack written description for all the infinite various species their functional language sets forth, but meh, at least he’s on to the problem!

    link to papers.ssrn.com

  123. Oh, I fully agree that the argument is old, and Congress hasn’t done anything in the meantime. But the Federal Circuit’s TSM test was even older, and Congress also did nothing. So what you say doesn’t worry me the least.

  124. “Patent trolls have settled expectations about nationwide jurisdiction and it would be unfair to them to change the law now.” — Non-Practicing Entities for American Prosperity, LLC

  125. Well, guess what, this argument is ONLY about 20 years old, and Congress has already decided to speak on the issue by… not doing anything. The CAFC interpretation has been around for 20 years, and Congress has acquiesced in the analysis:
    link to lawreview.byu.edu

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