FM v. Google: Means-plus-Function Indefiniteness and O2 Micro Challenges

By Jason Rantanen

Function Media, L.L.C. v. Google Inc. (Fed. Cir. 2013) Download FM v Google
Panel: Rader, Newman, Reyna (author)

Function Media sued Google for infringement of three related patents: 6,446,045; 7,240,025; and 7,249,059.  The patents involve a system for facilitating advertising on multiple advertising outlets (such as different websites) with different formatting requirements.  The district court granted summary judgment that the sole independent claim of the '045 patent was indefinite and a jury subsequently found that the asserted claims of the '025 and '059 patents invalid and not infringed.  The district court granted JMOL of validity of four claims but the noninfringement verdict stood.  FM appealed several issues including the indefiniteness ruling and raised a challenge based on O2 Micro

Indefiniteness: Claim 1 of the '045 patent reads as follows:

1. A method of using a network of computers to contract for, facilitate and control the creating and publishing of presentations, by a seller, to a plurality of media venues owned or controlled by other than the seller, comprising:

    a) providing a media database having a list of available media venues;
    b) providing means for applying corresponding guidelines of the media venues;
    c) providing means for transmitting said presentations to a selected media venue of the media venues;
    d) providing means for a seller to select the media venues; and
    e) providing means for the seller to input information;
    whereby the seller may select one or more of the media venues, create a presentation that complies with said guidelines of the media venues selected, and transmit the presentation to the selected media venues for publication.

At issue was the italicized "means for transmitting" claim element, which the district court held to be indefinite because the specification did not disclose a structure for carrying out the claimed function, as required by 35 U.S.C. § 112(f) [previously referred to as 112[6]).  

On appeal, the Federal Circuit affirmed the district court's ruling, emphasizing the requirement that an algorithm must be disclosed when using a means-plus-function claim involving software.   "When dealing with a “special purpose computer-implemented means-plus-function limitation,” we require the specification to disclose the algorithm for performing the function."  Slip Op. at 9.  For this claim element, at least, no algorithm was disclosed: "Here, there is no specific algorithm disclosed in prose, as a mathematical formula, in flow charts, or otherwise. FM cites to several places in the specification that it contends describe the software. These citations all explain that the software automatically transmits, but they contain no explanation of how the [Presentation Generating Program] software performs the transmission function."  Id. at 10.  "At most, the ’045 Patent specification discloses that the structure
behind the function of transmitting is a computer program that transmits. Beyond the program’s function, however, no algorithm is disclosed. As in Blackboard, the PGP is “simply an abstraction that describes the function” to be performed. 574 F.3d at 1383." Id.

Nor could FM rely on the knowledge of a PHOSITA: "Having failed to provide any disclosure of the structure for the “transmitting” function, FM cannot rely on the knowledge of one skilled in the art to fill in the gaps."  Id. at 11.  It was irrelevant that a person of ordinary skill could devise some method to perform the function: that goes to enablement, not to definiteness.  

Comment: Ironically here, it was probably the use of the narrowing "means" language that ultimately resulted in the holding of indefiniteness.  If the patentee had instead just referenced "a computer controller transmitting said presentation" (similar to what it did in Claim 1 of the '025 patent), it almost certainly would have survived an indefiniteness challenge.  See Mark A. Lemley, Software Patents and the Return of Functional Claiming (forthcoming in Wisconsin Law Review) at 41-42 (arguing that the Federal Circuit imposes no limit on the functional nature of software claim elements unless they use "means," thus negating the compromise established by 112(f)).  

O2 Micro: In addition to challenging several of the district court's claim constructions (which the CAFC affirmed), FM argued that the court improperly sent issues of claim construction to the jury in contravention of O2 Micro v. Beyond Innovation, 521 F.3d 1351 (Fed. Cir. 2008).  The Federal Circuit rejected FM's arguments, limiting O2 Micro to the rare circumstance when arguments about different claim scopes are actually presented to the jury.  "We disagree with FM that claim construction was decided by the jury because the district court’s construction was correct, and the district court never refused to construe any disputed terms.  Moreover, as with the other terms, FM never objected to any supposed improper argument or testimony."  Slip Op. at 26.  Absent this situation, the issue was whether Google made improper arguments to the jury, an issue on which FM bore an extremely high burden that it could not carry.

83 thoughts on “FM v. Google: Means-plus-Function Indefiniteness and O2 Micro Challenges

  1. Do you have any proof, here?

    No. That’s why I used the term “probably”.

    Also, there is nothing at all “bold” about proposing that an attorney has been instructed by his client to avoid making certain arguments.

    Your ignorance is noted.

  2. Right now, NWPA, big corporations keep secrets AND get patents. No technical person uses patents as a basis for implementing anything, because patents do not disclose the invention (even though they are *supposed* to). Lawyers make sure that the patents contain a lot of meaninless buzzwords that sound great and mean nothing. To someone who actually understands the techical matter, every patent reads like the spoof ad for the Retroencabulator.

  3. Wow, a glimmer, though just barely a glimmer, of sanity at the Federal Circuit. The problem is that, if the exact same steps had been provided as a flow chart the court would be so impressed and agog at the brilliance of the technical description that they would have allowed the patent. Well, one step at a time, I guess.

  4. And, a good questions for the anti’s:

    Do you really not want to encourage the invention of tests like this? (see above claims I drafted. I, frankly, think that is madness. I also think what is going to happen is the tests will dry up or big corp will start keeping a lot more secrets. We might get the discovery of genes in corp labs that are not published.

  5. Anon,

    Yes. I think you said it very well. Better than I did. I was struggling with understanding what my intuition was telling me.

    I would also note that I think a lot of the problems we have now is claim drafting to try and avoid 101 problems. If, instead, the drafters tried to capture what is really going on–and that was what I was trying to do–then the invention and the issues are easier to see.

    So, a goal of the patent system should be to encourage drafters to try to capture the invention–not obscure it.

  6. And in this instance, the proactive answer to Leopold’s question would be “Yes, Dr. Noonan has used my words as the foundation of his thoughts.”

  7. Rather than risk the retaliation of the Cry Baby’s Veto, I would have simply rephrased the evaluation as a continuing crusade of incorrect views based on a pre-conceived notion and rejection of the computer revolution.

    When you can dress up your dogma in enough sheep’s clothing to get into the farm yard area at night, that’s when the most damage will occur.

    And make no mistake – damage is the desired end result. Attacks from the Right and the Left. That’s another message that’s been accused of being portrayed in English as a second language – and yet respected bloggers such as Dr. Noonan have said the same exact thing.

  8. The problem is in the modern day

    While this is not what WD is saying (I am not spinning or mischaracterizing his view), the truncated sentence does characterize the view of those who do not accept the computer revolution.

    It’s as if “promotion” cannot include evolution past the 1800′s. A very odd way of looking at something for which upsetting and revolutionary innovations are the basis of the entire existence of the system in the first place.

  9. I am not saying that judicial exceptions don’t have to be evaluated, but that they do not apply in this case.

    I think I see – you have applied< ?i> them (as in evaluated them), but the exceptions don’t knock out the claim. Is that what you are saying?

    So, if you limit yourself to claiming the test, as opposed to claiming what you are testing, you think it is OK. So when Myriad does not stick with claiming a test, but instead claims the underlying material, the exceptions, when applied (as they must be to all individual claims), may not find “enough” of a difference between the exception of product of nature and the isolated bits of the claim.

    Good conversation.

  10. At best Lemley what you are is a advocate for a side that should not be publishing papers as if you are not biased.

    You should have to divulge where your money comes from before an “academic” journal publishes your polemics.

    You are not an academic in character but in name only. Shame on you.

  11. anon don’t be ridiculous. I am not saying that judicial exceptions don’t have to be evaluated, but that they do not apply in this case.

    I definitely am right about this. A test is being manufactured. The test is a manufacture. The test itself is transforming human DNA into information as to whether or not someone is likely to get breast cancer.

    It is not one of these: an abstract idea, a law of nature or a natural phenomenon.

    The SCOTUS is very wrong in Prometheus. This is the problem we are having. The invention is what it is. The SCOTUS is living in 1920′s.

  12. I was just reading through Lemley’s paper. It made me realize the real problem with people like Lemley. He shouldn’t be a professor. He shouldn’t be permitted to publish in academic journals. There are no more academic journals in law.

    I can’t trust him. He has an agenda. He has goals and does everything he can to further those goals. When obvious and intentional misrepresentations are made in his papers there is no consequence to him.

    Why read a history of claims by him? You can’t trust a word he says. His papers are like reading a legal brief.

    Lemley you degrade our system of law. Too bad too as I would have liked to read an unbiased academic’s history of functional claim drafting. But,with a person like Lemley you read a legal brief.

    How have we sunk so low? I think it is because there are no consequences to Lemley. Lemley should lose tenure for his paper on software and copyright. I think he intentionally misrepresented structure of software to achieve his policy goals. That is not an academic and he should not be respected as a academic. Lemley is a person that gets paid to teach and then he makes money on the side. His papers are about his money on the side.

    In other words…the legal professors are paid off whores.

  13. Personally, I am not offended, by the way, by your accusation. I consider the source and move on.

    But in considering that source, and all the QQ’ing of late, don’t you think you should at least try to live by the standard that you demand of others?

  14. And that’s probably because the CLS attorney was told that there were certain arguments he shouldn’t make.

    Didn’t you just ask someone else who made a bold statement if they had any proof?

    Do you have any proof, here?

  15. Is that your serious reply, 6?

    Do you not have even a basic understanding of the differences between copyright and patents?

  16. “That 101 case law includes two recent cases, Bilski and Prometheus, that are very important. The latter case tells you that old, conventional steps can be ignored for 101 purposes”

    101 Integration Expert: No, it does not. If I am wrong then please provide the proper pin-cite from Prometheus. I need that exact quote!

    :: Usual Silence::

  17. 101 Integration Expert: It’s complete and utter BS to say a computer sitting on a desk is abstract,

    INANE :Of course it is. Which is why nobody is saying that.

    101 Integration Expert: That’s exactly what Mr. Perry said when he argued Alice system/machine was an abstract idea.

    INANE: Another thing nobody is saying is that any of the patents currently in litigation are for the invention of the desktop computer.

    101 Integration Expert: Right that would be a strawman which is why you just said it.

  18. MM: I don’t think patents should be abolished

    101 Integration Expert: Right, you approach is to make patents so ineffective that there is no need to abolish them.

  19. MM: Likewise with the step of determining the levels of metabolites in blood in the Prometheus case.

    101 Integration Expert:False analogy. The step of determining the levels of metabolites in blood in the Prometheus case is not an abstract idea. It’s an added step to a LoN or natural correlation.

    MM: The mere recitation of computer as a means for automating information processing should not be allowed to rescue an ineligible information processing method

    101 Integration Expert: False assumption. automating information processing is not a Court created exception to statutory subject matter, and therefore not an ineligible information processing method.

    Look you cant win this on the merits of law. Because the current law is opposite of everything you believe and want to happen. So just stick to telling people that cite and follow the law to GFY, like you normally do.

  20. Well, it was a dam good question and no one could give her a logical answer, so she is supposed to keep asking it over and over.

    I was disappointed in the attempts to answer the question as well but I thought the way she asked the question was childish.

    She’s on a panel with people with people who are supposed to know more about US patent law than just about anyone on the planet. And she’s in a room with two incredibly well-informed and articulate attorneys. The question is not: “how can a computer be abstract”. The question is : given that computers are tangible articles of manufacture, why aren’t they eligible under 101?

    And the answer is that computer claims like the one at issue in CLS are not “article of manufacture” claims as contemplated by 101 but rather disguised method claims. A 101-eligible article of manufacture isn’t described be reference to its “capabilities” after it’s been modified in a manner that is left completely up to the skilled artisan. I can’t claim a new bulldozer by saying reciting an old bulldozer and chucking in a new “capability.” I have to set forth the structural improvements that confer that new capability on the old bulldozer.

    Computer claims like CLS’ claim merely recite a method to be carried out by the “new” computer. The recitation of “computer”, in that instance, is a meaningless limitation. It’s a gimmick. The claim is not examined like an article of manufacture but rather like a method. And so the 101 case law that applies to methods should be applied to CLS computer claims. That 101 case law includes two recent cases, Bilski and Prometheus, that are very important. The latter case tells you that old, conventional steps can be ignored for 101 purposes and will not rescue an attempt to claim an abstraction.

    You may not like this answer but I submit that it is a far better answer than the one given by the CLS attorney. And that’s probably because the CLS attorney was told that there were certain arguments he shouldn’t make.

  21. MM: All that “stucture is old.

    101 Integration Expert: Whether the structure is old or not is irrelevant to the 101 inquiry.

    MM:This patent tries to patent the abstract concept of collecting information (about formats) and using that information for its only purpose (to format something)

    101 Integration Expert: Formatting something, can only be done in the real world, and is thus not abstract.

    MM: Sticking a bunch of language about “on a computer” adds absolutely nothing where the computer only automates or facilitates the automation of tasks that a person would do.

    101 Integration Expert: Automation promotes the progress of the useful arts. In order to make the above argument work you would need to change the Constitution or abolish the patent system altogether.

  22. the computer itself, though a functional part of the process, is simply given no patentable weight under 101.

    Likewise with the step of determining the levels of metabolites in blood in the Prometheus case. The mere recitation of computer as a means for automating information processing should not be allowed to rescue an ineligible information processing method. It’s a meaningless limitation. It’s a meaningless limitation now and it was meaningless 50 years ago.

    You just might as well quit the patent office and start a tea patent party to abolish patents altogether!

    I don’t think patents should be abolished.

  23. Okay Examiner Mooney, let me get this straight.

    Your first office action on the merits is going to be, a 101 rejection that declares the “structure” old, then ignores it, and then takes the useful, concrete and tangible process steps, in isolation, and subjectively labels them abstract. And finally the computer itself, though a functional part of the process, is simply given no patentable weight under 101.

    WOW!

    In that one action you have violated so much patent law it would require a 30 page rebuttal just to state each violation and provide the proper pin-cites.

    And assuming you could find a BPAI panel scofflaw enough to support you. What good does it do for you to eviscerate patent law like this?

    This tactic reminds me of the efforts to water down voting rights, or abortion rights to the point the laws are effectively dead, though technically still on the books.

    You just might as well quit the patent office and start a tea patent party to abolish patents altogether!

  24. It’s complete and utter BS to say a computer sitting on a desk is abstract,

    Of course it is. Which is why nobody is saying that. Which makes it a colossal straw man.

    Another thing nobody is saying is that any of the patents currently in litigation are for the invention of the desktop computer.

  25. “I wondered the same thing. She just kept repeating over and over “how can a computer on my desk be abstract” with increasing shrillness.”

    Well, it was a dam good question and no one could give her a logical answer, so she is supposed to keep asking it over and over.

    We are ALL using computers right now. It’s complete and utter BS to say a computer sitting on a desk is abstract, but a toaster, or my pet rock for that matter, is absolutely real and patent eligible sub matter.

    And if as you say NWPA, she was only asking the question to get the best answer for voting against programmed computers being patent eligible machines, she obviously failed to get the answer, and is now compelled to vote on our side. I hope!

  26. Clearly Congress was asleep at the switch (and the sleeping part was even earlier – all the way back to Graham v. Deere.

    As to this sleeping at the switch, you have alighted upon one of the problems with corralling the Supreme Court. Just because something is not blatantly wrong (like Flash of Genius), does not mean that is not wrong. It is just not as likely to be caught be a body politic.

  27. as they did in 1952.

    How come nobody thought to mention that to the Supreme Court in 1972? Seems like it might have been relevant then. Was no legal representative of Congress present to make its views known?

  28. something fundamentally different

    Can you succinctly (and legally) explain why this is “something fundamentally different?”

  29. If you had been at Bilski irl you would.

    This brings laughter to me, as wasn’t one of the predictions by a well known blogger that Bilski itself on “the smacking down software?”

    Or was that just business method patents and the demise of Diehrbots?

  30. Congress can also remove the Supreme Court (or more generally, the judiciary) from defining what ‘invention” is, as they did in 1952.

    The USSC may say that congress can remove their jurisdiction, but as we have most recently seen, that same body is not about to let their control become a dead letter.

  31. “That’s exactly what they tried to do – to the extent possible.”

    According to the USSC itself congress can remove their jurisdiction over areas of the lawl.

  32. “If I were you I would not bet too heavy on the Supremes smacking down software. ”

    If you had been at Bilski irl you would.

  33. “I wondered the same thing. She just kept repeating over and over “how can a computer on my desk be abstract” with increasing shrillness.”

    I do admit I did find that a little odd, but then, I cannot set aside the possibility that she is simply sympathetic to anti-software patent views but sees this case as directed entirely to computers.

  34. Information is power

    Can we promote that by giving out patents on it? You know, since patents are strictly for limited times and all.

  35. A test as follows:
    determine sequence from patient.
    evaluate whether or not she/he is going to get cancer.
    report evaluation to patient.

    So, my manufacture is the test.

    This is an embodiment of the Prometheus problem. You discovered an ineligible fact (this sequence is correlated with something else). Now you want to claim all practical applications of that fact. From the perspective of promoting progress in the useful arts, how is that different from claiming the fact itself? It’s not.

    Whether you believe it’s “modern” or not, our society is a long ways from approving of the patenting of facts. The PTO and its favorite customers may think it’s a great idea but they aren’t the ones tasked with making such fundamental and society-altering decisions.

    I’ll note that there is a possible distinction to be drawn between your proposed claim and the claim at issue in Prometheus. In Prometheus, the non-mental (and otherwise eligible) step was admitted to be old as the hills. If I understand your hypothetical correctly, your “test” would involve a “new” step of determining the presence (or absence) of a previously “unknown” sequence.

    In the context of broadly claimed genetic tests such as the one you propose, however, the Prometheus issue looms mightily. That’s because the human genome is sequenced and parts of the human genome have been sequenced for a long time. So the step of “determining” a sequence is old. What’s new (as in Prometheus’ case) is the discovered information about what that sequence “means” (i.e., the “correlation”). And information itself isn’t protectable by patents no matter how you draft the claim.

  36. Well put. However, I don’t think the “social normative standards” relating to patents have evolved that much. There has always been a tension between the “entrepreneurial spirit” on one hand and “corporate abuse” on the other.

    What has changed is the ability of the general public (including patent attorneys) to monitor the situation and efficiently disseminate information about what is happening to everybody. For that, we can thank Al Gore and other idealists who recognized the potential of a (relatively) free Internet and paved the road appropriately.

    Information is power. That’s why certain entities will never stop trying to own and control as much information as they can. If they can’t own the facts themselves, they will try to claim ownership and control methods of disseminating those facts and the methods of using those facts.

    Maybe there was someone at the Hearst Corporation urging Hearst to patent methods of offering different formats to advertisers in his papers and the like. For whatever reason, he didn’t go that route (as far as I know). Even if he had, how would the average person have found about it?

    What’s happening today is less of a change in “social normative standards” than in a change in the amount of light that can be cast upon antisocial activities (corporate and otherwise) and ideologies that “test poorly” under increased scrutiny.

  37. Is there a case law definition for “element” as used in 112 6th? If not, then this needs clarification, because arguably, the claims are to a method, not to an apparatus, and the claim element should be the “providing” step, not the “means” that is provided thereby. Under that interpretation, 112 6th shouldn’t apply to these limitations.

  38. What if we put “five billion times a second” in the claims? It’s not abstract if it’s big enough, right?

    Wow.

    Would I get in trouble by simply noting how inane (and incorrect) this comment is?

  39. Malpractice? Doubtful, considering that the case was filed early 2000 and WMS Gaming (51 USPQ2d 1385) wasn’t decided by the CAFC until 1999, and that was so divergent from what came before regarding MPF for computers that one could easily ignore WMS Gaming.

  40. or Congress should remove patent jurisdiction from the SCOTUS, which is what should happen anyway.

    That’s exactly what they tried to do – to the extent possible.

    The Supreme Court will not be denied their fingers in the pie – their “implicit” writings will not be allowed to become dead letters – even if Congress wrote out “invention,” removed the judicial development of that term from the patent process, and substituted “obviousness” in its place.

    And don’t you know that the entire CAFC-SC p1ss1ing match has been about who has “last say,” no matter how in the dark that “last say” may be?

    Witness the link provided by Ned Heller re Rader. Notwithstanding the attempted tarnishment of Rader, the points Rader speaks of – every point – is dead-on accurate (truth sometimes is simply a casualty).

  41. You know, “the patent system” is very symbolic of a quality that many identify as being particularly American. It used to be widely viewed as representing the best of what America was, and could be–individual initiative, competition, inventiveness, etc.

    That perception has been turned on its head, and it is now often seen to represent the worst of what America is–greed, corporatism, abuse of power, etc.

    I guess that’s why I get so vitriolic about discussions about “the patent system”, including the courts. Us current practitioners are all straddling the 2 schools of thought–we believe in what the system could/should be, else we wouldn’t have gone through the pain of getting qualified, but at the same time we are influenced by the evolving social normative standards in which we are immersed.

    I still can’t help but see the potential positives of a well-managed patent regime that is focused on nurturing the positives. We can argue about what that means, but that argument should take place within a viable and efficient structure–the problem is that the very structure itself is corroded.

  42. Sticking a bunch of language about “on a computer” adds absolutely nothing where the computer only automates or facilitates the automation of tasks that a person would do.

    What if we put “five billion times a second” in the claims? It’s not abstract if it’s big enough, right?

  43. Look deeper and you will see larger problems of which the patent system is but a symptom.

    No doubt. I spend at least as much time studying the larger problems than I do at this particular symptom.

  44. for sake of the challenge let’s presume the disputed means function has been corrected as Professor Crouch suggested with, “computer controller for transmitting said presentations to a selected media venue of the media venues.” And all the other means steps have the required ‘structure, material, or acts’ set forth in the specification and equivalents thereof, so there is no 112 issue anymore.

    All that “stucture is old. This patent tries to patent the abstract concept of collecting information (about formats) and using that information for its only purpose (to format something) upon the request of someone who wants to use the information (to format something).

    Sticking a bunch of language about “on a computer” adds absolutely nothing where the computer only automates or facilitates the automation of tasks that a person would do.

  45. I think in oral arguments she just wanted to put forth the best arguments the other side had to see what were the best arguments to counter them.

    I wondered the same thing. She just kept repeating over and over “how can a computer on my desk be abstract” with increasing shrillness.

    If it wasn’t sincere, it was a great performance.

  46. Would you cut off your breast based on something that is not tangible?

    What the …? People harm themselves and others on a daily basis based on “things that are not tangible.”

  47. MM: “Our patent system is a joke.”

    Don’t tell me you’re just realizing this now.

    Plus, you’re not seeing the big picture–what is a joke about it, and why is it a joke?

    Look deeper and you will see larger problems of which the patent system is but a symptom. America has serious structural, and other, problems.

  48. I think that the next SCOTUS should have to have a science background, or Congress should remove patent jurisdiction from the SCOTUS, which is what should happen anyway.

    Man, another Sotomayor or Kagan will end all this in Stevens favor. It amazes me how much respect I lose for these justices. I so wanted to respect them. But, after reading their opinions on patents you realize that they are willing to be arrogant and making sweeping statements about topics they obviously know nothing about.

    I think we are suffering the same problem with these “justices.” We should appoint people that have climbed the ladder from prosecutor (or public defender), to dist. ct. judge, to fed. cir. judge. That way they have real experience. These people are —despite being so good at articulating what their little brains have determined—unqualified.

  49. I will gladly step back when I have the answer to: other than the knowledge of the test, what “more” (in the Supreme Court sense) have you done?

    Judicial exceptions are applicable in every case – bar none. Whether something fails the judicial exception or not (and why) is a different matter.

    Showing utililty is not on point. That just kicks up dust. I am perfectly willing to grant you utility, as even that does not necessarily get you by the individual claim level application of the judicial exceptions.

  50. I understand all that anon.

    It is a manufacture. A method of determining the likelyhood of getting breast cancer.

    The judicial exceptions should not be applicable. The manufacture is a method that can be used to determine likely hood of breast cancer. The method itself transforms information into a useful concrete and tangible result.

    Would you cut off your breast based on something that is not tangible?

    Something being valuable shows utility in this case.

    Step back a bit anon. Let this sink in a bit. I am not finished formulating this, but I am sure this is the right thread to follow.

  51. Aren’t these sort of tests incredibly valuable?

    That’s not a patent law question (necessarily).

    Aren’t they really being manufactured and not discovered?

    The judicial exceptions apply even after the categories have been reached successfully. Mere “manufacture,” much like mere “composition,” or mere “process,” only gets you so far. You still need to apply the judicial exceptions at the claim level (and not just at the category level).

    Do you have an answer to my question 3)?

  52. I have recast the problem for a modern information age where the manufacture is an information test.

    Aren’t these sort of tests incredibly valuable?

    Aren’t they really being manufactured and not discovered?

  53. 1) he does not have a stake in that race
    2) he does not give answers
    3) other than the knowledge of the test, what “more” (in the Supreme Court sense) have you done?

  54. Off the topic in this thread:

    By gene nonsense:

    This is how it should be thought of.———————–

    Manufacturing:

    I find a sequence of nucleic acids that have to do with breast cancer.
    I figure out how to determine whether or not the nucleic sequnce indicates that you are likely to get breast cancer.

    Product of manufacture:

    A test as follows:
    determine sequence from patient.
    evaluate whether or not she/he is going to get cancer.
    report evaluation to patient.

    So, my manufacture is the test. That is a manufacture in the modern world.

    ——End of analysis———————

  55. I wouldn’t bet on Moore. She has shown many anti-software opinions. Maybe she has reformed. I doubt it. I think in oral arguments she just wanted to put forth the best arguments the other side had to see what were the best arguments to counter them.

    She was just doing what she said she did with her law clerks. check it three times. What better way to check your arguments then to present the arguments of the other side and see what happens.

  56. Scoreboard for the hytpothetical En Banc confirms and the table is set for the Supremes:

    John Roberts
    Antonin Scalia
    Anthony Kennedy
    Clarence Thomas
    Ruth Bader Ginsburg
    Stephen Breyer
    Samuel Alito
    Sonia Sotomayor
    Elena Kagan

    The Stevens’ Bilski dissenting concurrence has lost more than Stevens (can’t tell you how I know – but I do know).

  57. Well, I don’t know much about REYNA. But I picked O’MALLEY because she was on the majority panel in Alice. Why would she reverse now and side with Proust? Especially with Linn participating. And if anyone can flip one of these judges it’s Rader. With the Chief on our side we have the advantage going in.

    If I were you I would not bet too heavy on the Supremes smacking down software. I truly think all this anti patent momentum peaked in Bilski and is leveling off now.

    I mean if you could not get Business Methods banned and Diehr cabined with Stevens on the Court you sure have less of a chance to get software killed off now that he’s gone.

  58. I wouldn’t bet my last dollar on O’Malley bro.

    Or even for that matter my boy Jimmie.

    Either way, I rather hope they do muster the votes to reverse the lower court decision so that the case will be all clear for the supremes to go ahead and finish this nonsense. The suspense is just killing me, and the waiting continues to kill companies.

  59. “The problem is that the dope doesn’t get that to fix the system you need people (judges) that understand the system.”

    I hope he is just pandering to the crowd at Techdirt because his views really sound close to being anti software if not anti patent.

    And to think he is going to appoint the next PTO Director and maybe a couple new Supreme Court Judges.

  60. “That ’045 claim could easily be taken down under 101

    Oh really?

    Okay, I will take that bet. So let’s see you invalidate these claims under 101. And for sake of the challenge let’s presume the disputed means function has been corrected as Professor Crouch suggested with, “computer controller for transmitting said presentations to a selected media venue of the media venues.” And all the other means steps have the required ‘structure, material, or acts’ set forth in the specification and equivalents thereof, so there is no 112 issue anymore.

    Here is a chance to perhaps redeem yourself for all the crying and running from the challenge to apply “Integration Analysis” to real claims.

    The corrected claim is below.

    1. A method of using a network of computers to contract for, facilitate and control the creating and publishing of presentations, by a seller, to a plurality of media venues owned or controlled by other than the seller, comprising:

    a) providing a media database having a list of available media venues;
    b) providing means for applying corresponding guidelines of the media venues;
    c) providing computer controller for transmitting said presentations to a selected media venue of the media venues;
    d) providing means for a seller to select the media venues; and
    e) providing means for the seller to input information;
    whereby the seller may select one or more of the media venues, create a presentation that complies with said guidelines of the media venues selected, and transmit the presentation to the selected media venues for publication.

  61. Okay then that brings the score card of potential pro patent votes to:

    X – RANDALL R. RADER,
    X – PAULINE NEWMAN,
    X – KIMBERLY A. MOORE,
    X – KATHLEEN M. O’MALLEY,
    X – JIMMIE V. REYNA,
    X – RICHARD LINN

    That would give us the win. Players place your bets keep your fingers crossed!

  62. Well, I mean, that’s one way. But then the useful arts wouldn’t be promoted all that well and we wouldn’t have nearly as many disclosures in the useful arts.

  63. I wouldn’t read too much into the Fed circ. not raising 101 sua sponte when they can just end this patent by affirming the 112.

    I wonder if the use of 112 6th in this case rises to the level of malpractice? Surely the guy could have used normal drafting instead of going all exotic.

  64. Why do you need judges that understand the system in order to draft clear and unambiguous legislation to solve the current ills of our patent system? I cannot think of an ill of our current patent system that I couldn’t solve with a stroke of a legislative pen. Trolls, gone, software claims, gone, business methods unconnected to the useful arts, gone, RCE backlog, gone (just disallow them lol). Whatever other problems there are, I don’t see how a little simple legislation wouldn’t sort things out completely, or instead, at least get started on sorting them out. I have a feeling though that if the president and the congress were to resolve to solve the problems currently in the patent system there are enough bright lawlyers to draft sufficient changes to the lawl to solve the issues right fast.

  65. That ’045 claim could easily be taken down under 101 or 103 (if not 102).

    How in heck did it get out of the PTO?

    What’s the invention?

    The patents involve a system for facilitating advertising on multiple advertising outlets (such as different websites) with different formatting requirements.

    Right. How to set up a system so a third party can advertise on multiple advertising outlets with different formatting requirements? Gosh, that’s a tough one. Well, first I suppose you need to figure out what those formatting requirements are. And that’s it, pretty much.

    Because prior to the invention of computers, advertisers never had to deal with different formatting requirements for different venues.

    Our patent system is a joke. This j–k made it up to the Federal Circuit????

  66. Nice link 6. I think Kappos was forced out. I think Obama has his eyes on patent reform. The problem is that the dope doesn’t get that to fix the system you need people (judges) that understand the system. We got Benson from a justice department attorney that was trying to protect the PTO and ended up with billions and billions burned and a 50 year war.

    Get a Rich’s and Newman’s in there and the problem with be straightened out in a jiffy.

  67. Well, if it hadn’t been Rader, Newman, and Reyna then it would have been a 101. Maybe this means that Reyna will stand with the righteous on the en banc epic opinion we are about to read.

  68. Well, it’s refreshing to see a process claim challenged on 112 instead of 101 for a change! So many of the 101 statutory subject matter challenges as of late are improper and should be challenged under 112, 102, or 103 instead.

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