Patent Reform 2013: Adding Clarity and Transparency to the System

By Dennis Crouch

President Obama today released information on planed executive orders and push for new legislation that will attempt to block companies from asserting their patents unless they are also manufacturing a product based upon the patented design. And at the same time, the President’s National Economic Council and Council of Economic Advisers released a report a report titled “Patent Assertion and U.S. Innovation.” The report generally takes the viewpoint that Patent Assertion Entities are bad for the US Economy and makes the bold claim that, in the past year PAE’s have threatened “over 100,000 companies with patent infringement.” The bulk of the report that identifies the “problem” is based upon the work of professor Colleen Chien (Santa Clara); Jim Bessen & Mike Meurer (BU); Mark Lemley (Stanford) and Michele Boldrin (WUSTL) & David K. Levine (WUSTL).

Despite the unknowing hyperbole of the report, the suggested actions are, for the most, welcome and will benefit the patent system as a whole. In fact, this move to finally address the problem of predictability of patent scope and patent validity hits the sweet spot of where problems emerge in the system. Of course, the devil will be in the details of these approaches.

Executive Actions:

1. Knowing Who Owns the Patents: Through the PTO a new rule will require patent applicants and owners to regularly update ownership information with the “real party of interest” so that the assignment records are accurate complete.

2. Tightening Functional Claiming. The PTO will provide new targeted training to its examiners on scrutiny of functional claims and will, over the next six months develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field.

In my view, these two elements are sorely needed and will generally improve the patent system without actually limiting the ability of patent assertion entities to derive value from their innovations through patent assertion. In addition, the PTO will begin a number of outreach mechanisms intended to provide assistance to non-patent-insiders who receive patent demand letter.

Legislative Actions:

1. Require patentees and applicants to disclose the “Real Party-in-Interest,” by requiring that any party sending demand letters, filing an infringement suit or seeking PTO review of a patent to file updated ownership information, and enabling the PTO or district courts to impose sanctions for non-compliance. [DC: This would add statutory back-up for the PTO rulemaking]

2. Permit more discretion in awarding fees to prevailing parties in patent cases, providing district courts with more discretion to award attorney’s fees under 35 USC 285 as a sanction for abusive court filings (similar to the legal standard that applies in copyright infringement cases). [DC: This can be helpful if allowed to go both-ways, although courts generally find that patent litigators are the most well-prepared and honorable of any that they see in court.]

3. Expand the PTO’s transitional program for covered business method patents to include a broader category of computer-enabled patents and permit a wider range of challengers to petition for review of issued patents before the Patent Trial and Appeals Board (PTAB). [DC: This has the potential of capturing a substantial percentage of issued patents, but that may be fine.]

4. Protect off-the-shelf use by consumers and businesses by providing them with better legal protection against liability for a product being used off-the-shelf and solely for its intended use. Also, stay judicial proceedings against such consumers when an infringement suit has also been brought against a vendor, retailer, or manufacturer. [DC: We are on our way here toward a fair use of patents.]

5. Change the ITC standard for obtaining an injunction to better align it with the traditional four-factor test in eBay Inc. v. MercExchange, to enhance consistency in the standards applied at the ITC and district courts. [DC: The focus here is to get patent assertion entities out of the ITC]

6. Use demand letter transparency to help curb abusive suits, incentivizing public filing of demand letters in a way that makes them accessible and searchable to the public. [DC: This sounds good, I wonder how those writing demand letters would respond.]

7. Ensure the ITC has adequate flexibility in hiring qualified Administrative Law Judges. [DC: However, must ensure that the flexibility is not used to hire because of particular political bent.]

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

284 thoughts on “Patent Reform 2013: Adding Clarity and Transparency to the System

  1. Certianly Oboma hasent adressed the root issue of who got hijacked on these new rules he is implementing. He refuses to mention the plight of the invention conciever who gets hijacked and thrown under the bus in each patent case or the injustice of the facts due to the money monopoly and exclusion that inventor indegency dictates. Wile moneyed titans fight over the true concievers invention thugs paid off with 1500 to intimidate the conciever into terror conceptions then sell the invention to other thugs who battle other thugs called infringers. And were suposed to feel sorry for the infringers I dont think so?

  2. The real parties of intrest is one good thing in this legislation what they conveniently left out is who is the inventor at filing definately not a corperation thats for sure. Its a critical factor in determining who gets the patent and the retention of the incentive to create and retention to the cival rights of the inventor to a patent. I cant believe Congress or a legitimate president can be making these retartive changes just when we need jobs creation. He apears to go every wrong direction possible

  3. Ned you may want to read the PTO’s supplemental guidelines on 112 because the PTO and the cases cited by the guidelines do NOT limit 112 6th to the magic words “means for” or “step for” anymore.

    You’ll also want to read the precedential decision by the PTAB in ex parte Rodriguez from 2009 regarding “configured to”.

    ALL software “system” claims these days could and/or should (depending on your opinion) fall under 112, 6th/f

  4. “Ned seems happy to be haunted. I think it is because Ned gets paid per response.”

    Is someone willing to explain this? I saw an oblique comment like this yesterday.

    In my visits here, Ned seems stubborn to the point of silliness and in particular sees in SCT/CAFC opinions “writing on the wall” that simply is not present, but what’s with the allegation of paid blog commenting?

  5. “No… your friend “anonymous” did…you seemed to be jumping in …on his behalf.”

    See, now that’s your problem. You make assumptions from moonbeams, Mooooonbeam. I have no friends here, least of all “anonymous” (or you). I am just me. I show up about twice a month, and I use the same name until I’m done with whatever convo is involved.

    “…you agree [that if greedy lawyers get away with a scheme, then it shouldn’t be called isolated.]”

    Yes, I would agree with that. It’s irrelevant to my post that you decided to jump upon, but I agree with it.

  6. “Fixed”

    As many times before (and as many times not engaged), cite please for this ‘fixed’ conjure.

  7. A rifle does not become a new rifle because one changes the ammunition.

    That’s true, Ned, but a weapon system defined as comprising a rifle and ammunition does, even thought the ammunition can be removed. I don’t think this fixture analogy of yours is very helpful.

  8. Les, the program has to be part of the machine for there to be a new machine.

    A rifle does not become a new rifle because one changes the ammunition. It does become a new rifle when one changes the barrel.

    The question is not about which kind of memory the program is loaded. The question is whether the program is fixed, like fixtures in real property, such that it can fairly be said to be part of the machine.

  9. And, also, if this horror has been going on since 1998 then that is 15 years. Shouldn’t all the giant broad patent applications be out there for prior art by now?

    You see again we have these giant big picture calculus that just doesn’t add up.

  10. What about just waiting. If there really are all these giant broad patents, then it won’t be long before we have all these giant broad disclosures that should make it easy for examiners to reject based on 102 and 103, and all those earlier disclosures with have expired.

  11. Why doesn’t anyone suggest turning maintenance fees into an annual renewal, like in most jurisdictions. Sure, it raises expenses for the little guy, but not as much as some of the proposals being tossed around in Congress, and some of these patents would have gone away long ago.

  12. What the sam hill are you talking about?

    A two year old could follow the sentence – why are you having difficulty with it?

  13. not agreeing to this

    Not agreeing to what? Learn to write like a 15 year old instead of a two year old.

  14. Anon, at times I think that you are Judge Rader.

    Interesting that Prof. Crouch has not run a new piece on Rader’s rather public view, ran recently in the New York Times (opinion page, June 4).

    It has the earmarks of a lively discussion, being co-penned by Patently-O associate (and current Rader clerk) David Hricik and even an academic, the vile Chien (in all fairness to the good Chief Judge, Chien’s ‘position’ seems to be taken as a worst case starting point).

    Oh, and lest I forget for Leopold’s benefit, the upshot of it is that existing tools are already present to battle tr011s.

      Writing in the Opinion Pages of The New York Times, Federal Circuit Chief Judge Randall R. Rader has focused on what he perceives as abusive litigation practices of “patent trolls.” Writing as lead author with Professors Colleen v. Chien and David Hricik, the Chief Judge and his coauthors state concerning such abusive litigation practices that trial “[j]udges know the routine all too well, and the law gives them the authority to stop it. We urge them to do so.” Rader et al., Make Patent Trolls Pay in Court, The New York Times (June 4, 2013).

    That existing authority? LOL, part of it Leopold knows (because I told him): Rule 11.

    Looky that – more people out there with English as a second language.

  15. With all due respect, you are arguing philosophy. I can load a program into DRAM and run it or I can burn it into flash in place of the DRAM and run it. It makes no difference as far as the invention and the claims are concerned. While the program is in DRAM, the machine is the same as the Machine made with FLASH or is at least encompassed by the same claim.

    If ya wanna get silly about it, you can call each boot up of the DRAM machine a separate count of manufacturing infringement of the machine claims, while the flash machine is only manufactured once.

    But that’s the only difference.

  16. anon,

    Claim 1

    Apparatus, comprising:

    a computer configured with program X.

    X is defined in the spec.

    Disclosure: A program residing in non executable form on a remote server where it is cannot be executed; the program is downloaded, compiled and linked on a computer by a user for local execution over a limited period of time. (Cloud or zero client computing, the new thing.)

    Is the claim supported, and if so, why?

  17. Ned – anthropomorphication.

    Why do you ignore this?

    I will tell you why: you depend on this to somehow paint the computer has somehow sentient and ‘running’ something apart from its own self – it’s own machine.

    The cloud – LOL, as if the machine ATTACHED to the cloud, does not include a configuration of such attachment.

    Intellectual honesty Ned – it will set you free.

  18. your position is STATE STREET BANK

    LOL – more deception Ned.

    You tried this angle in the past as well. When you did, I corrected you and told you that my position was built comepletely outside of the State Street Bank position and I did not reference that case at all.

    Time for more than just a little intellectual honesty.

  19. Ned,

    You continually get the holding of Alappat wrong.

    I have explained this to you many times now. Why do I need to retread through the facts when I have already done so? When a case has more than one issue, and a decision can go against a party for more than one reason, and the court provides rulings on these multiple items, there can be multiple holdings.

    Each of the holdings are still holdings.

    Time to drop your crusade on this point (do you remember my lesson to you with Bilski?)

    Why don’t you pick up and answer some of the other points I have been pressing you for? Cat got your tongue?

  20. anon, Alappat did not decide what you think it decided. That case involved a claim to real hardware. The MPF clauses all read on real, bone fide, hardware.

    The case that supports your position is STATE STREET BANK, a case that is remembered in infamy, to quote FDR. That case decided that a programmed machine was supported by the programs which it ran.

    State Street Bank. Indeed.

  21. Night, I am not debating that a configured computer can be a new machine. I am debating whether a disclosure that only shows a standard old computer being used to run software supports such a claim.

    Imagine for example that the disclosure shows software in a cloud. A configured computer is not disclosed, only that general purpose computers may be used to run cloud software. Is the claim to the configured computer supported?

  22. Just signs of his ever-present eplectic rants of rage which stem from his work in an occupation that he does not believe in.

    Look at his last response:
    Strawman? When he his talking about greed, money is no strawman.
    Suckie? LOL, I’ve been using a consistent and solitary moniker since I volunteered to do so (unlike Francis, er, um, Keeping It Real, er um, well you get the picture)
    Enjoy? Most definitely, as Malcolm’s agenda is constantly toasted with his own admissions.

  23. MM, you appear to be getting grouchier and grouchier. I think anon is winning. He seems to haunt your every move.

    Ned seems happy to be haunted. I think it is because Ned gets paid per response. It is an indication of his effectiveness. I suspect he gets rated on the number of responses.

    So, we have some circumstantial evidence that Ned is a paid blogger and MM is not.

    But, MM, you are being dogged and it is wearing on your nerves.

  24. So how does the Left and the Right (with the White House in tow) answer?

    Denigrate patents and those that would (gasp) enforce patents with their letters and lawsuits. Failing that, make patents weaker, make the process of getting them more expensive, and the rights they contain more uncertain. Change the law to force more lawsuits (joinder), then turn around and use the fact that more lawsuits have been filed as “proof” that the situation is “out of control.”

    Someone tell me again who coined the perjorative “Troll” and why…?

    Oh, right, no attack there…

    /eyeroll

  25. NWPA,

    just a nit (as I understand what I think you want to say), but you might want to use the language that the court did in Alappat.

    There is no such thing as a programmed general purpose computer. Once a general purpose computer is programmed, it IS a new machine, a specific purpose computer, the specific purpose tied to the transformation of the machine with the programming, and – as even Malcolm as voluntarily admitted, “programmed to” is structural.

    Ned, you accuse me of this platitude of “programmed to” is structural, while ignoring the fact that this is something that Malcolm has admitted to. Why do you resist this notion?

  26. They are NOT NEW MACHINES.

    If you have the law on your side, pound the law.
    Ned, the law says they are new machines.
    See Alappat

    If you have facts on your side, pound the facts.
    Ned, factually, they are new machines.
    Do machines think? Do they decide to use that which is not a part of them? Do they decide to ‘run’ something outside of themselves? Do you remember your failure at the Grand Hall experiment? Oh wait, that’s right, you refused to engage that experiment. Must have been one h311 of a platitude.

    If you have neither, pound the table.
    Ned, in your case, please stop pounding the table.

    The table thanks you.

  27. MM: You mean judges making outrageous findings of fact and not applying the law? Burning patents at the stake by claiming they are “abstract” and applying a judicial exception that is supposed to be as narrow and as infrequently applied as possible.

    You are right MM. It is worse than burning innocent women at the stake. It is taking place in the 21st century and being carried out by those that should know better.

  28. 6, you are an examiner. And you don’t know the law regarding functional claiming? Your job is to decide if it fits into 112, 6 or not. If not, it is not functional claiming, but recites structure.

  29. ” the evasion of the law”.

    What we need is for the anit’s to stop trying to use the courts do what Congress is supposed to do.

    Yes, Ned, it is a new machine. All your yacking and yacking is just wrong. A programmed general purpose computer is a new machine. You see, those of us that are skilled in the art, know this. We know that the von Neumann architecture is really just a trick. It is a way to reduce the machine to a small machine and then have the rest of the machine be emulated by the small machine. We know that. We know it is a new mahcine. Your iron age logic is ridiculous.

  30. With all due respect, Les, there is a difference between a machine that is configured and using an old machine for a new purpose. The latter can be claimed as a method and not as a new machine.

    In order to be a new machine, the machine must actually be different such that its operations are different. This can be done through circuitry, or through programming that is part of the machine. A good example would be CMOS code that boots the machine, micro-instructions, ROM code, an OS that loads and executes, and the like. Using the machine by loading and executing a program where the program is not even a semi-permanent part of the computer is quite different.

    When one talks about configuring a machine, but the description is of a tax calculation program, we know the machine is being used and the claims, while seeming to claim a new machine, are not. They are instead claiming a process.

    This is why the courts have been consistent over a very long period of time in treating claims to programmed machine like method claims. They are NOT NEW MACHINES.

    What we need is for the PTO to step up and put and end to the evasion of the law that is going on here. If they see a claim to a configured computer, but the disclosure does not show anything more than a generic computer that runs software, the claims should be rejected as lacking support or being indefinite.

  31. Speaking of China but the same logic applies to the U.S.: ‘“You’re not going to get a more vibrant private economy unless you have greater protection of intellectual property,” said Nicholas Lardy, a senior fellow at the Peterson Institute for International Economics. “Clearly one of the things that inhibit private economy is lack of protection for intellectual property.”

  32. Oh Noes! the evi1s of MONEY ! Run and Hide, Run and Hide !! And if MONEY is so bad, then property can only lead to that typ eof thing ans we should banish property

    /eyeroll

    LOL

    link to youtube.com

    What Would Jane Do?

  33. Speaking about 1ies and deliciousness,

    What is the controlling law concerning the exceptions to the printed matter doctrine?

    How about that “configured to” is structural language stance?

    And the old gambit of “free to challenge?” LOL – we’ve played that game Malcolm, remember? I posted that veryone agreed with everything I said (and now, will say). Anyone not agreeing to this is “free to challenge.”

    LOL

    No wait,

    LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL
    LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL LOL

  34. “But you have to recognize that the advocates here want to claim a computer calculating numbers, where the number represent something like price or an alarm limit or the result of BDC->binary or the correlation between metabolite level and the need to increase or decrease dosage. There the computer is not new. It is simply being used for its intended purpose: to calculate. It is not part of a larger apparatus or process, and its programming is not doing anything new.”

    By this logic, almost nothing is patentable.

    Almost all inventions are combinations of elements, each element performing its “intended purpose” when that purpose is defined broadly, as you have done. Granted a computers intended purpose includes performing calculations generically. However, at the inception of computers, they were not intended to perform my particular new calculation. No one had ever though to perform my new calculation before.

    So, configuring a computer to perform my new calculation makes a new machine.

    Likewise, wood has, for a very long time been intended to be used as a structural frame. For thousands of years, cloth has been used to harness the wind. Rope and cable and pulleys have been around for a very long time and used to pull and provide tension on members.

    Yet, when Wilbur and Orville used each for their intended purpose in a new way, they were able to patent the new configuration of old elements.

  35. you just answered with a self-serving circular logic ‘answer’

    No, I didn’t, Dumpty. You asked for the basis for changing the law and I provided the answer. Maybe if you learn English someday you’ll learn to how ask better questions. But that’s not going to happen at this late date, Gramps. You’re stuck with the syntax of a 12 year old Chinese boy who thinks he’s David Foster Wallace.

  36. I said nothing about isolated incidents,

    No, you didn’t, Suckie. Your friend “anonymous” did and you seemed to be jumping in to carry on the “argument” on his behalf.

    So I take it you agree with my assertion: “if you let a bunch of greedy lawyers get away with a greedy money-grubbing scheme, it’s meaningless and idi0tic to refer that scheme as an “isolated incident.”

    Thanks.

  37. Spammy McFilter: because intelligent and educated people (in fact like lawyers even) never 11e.

    In fact, it was the creationists who did the ly ing. Those l1es were exposed and that is just one of the reasons why their inevitable loss in the Dover case was so incredibly delicious.

    As you know, Spammy, any academics who are predisposed (or who appear to be so predisposed) are free to challenge any and all of the facts and arguments put forth by your infamous “enemies”. If those other academics wish, they can even point out with specificity an example of one of the alleged “l1es” that was told.

    But that’s what not what you and EG prefer, is it? You’d rather just hurl childish insults at “academics”, probably because that’s what your daddy did at the dinner table before he went down into the basement to polish his gun.

  38. Well, first, what I meant to say is the heart or core of the invention is in the new way to figure out how to drive OO.

    Clearly, the invention can be embodied in a device. Moreover, it is quite likely that my client and/or her competitors sell devices. Accordingly, it is entirely appropriate to claim device embodiments.

    So, it is absurd and unfair for you or the courts to attempt to denigrate claims to devices as “draftsmans art”. The inventors invent devices.

    Additionally, if my client is force to enforce said patent, she would much rather it be via a fair fight against her competitor than against an end user.

    In many instances, methods are carried out by end users or by devices under the control of the end user.

    And, no, 101 clearly includes methods. They are the first category listed for heavens sake. It is the courts that have legislated from the bench and created confusion here. All of the judicially identified exceptions are utter nonsense.

  39. Funny that Malcolm runs away from this discussion to troll me in my dialogue with Leopold on another thread.

  40. The process did not produe a new result – in the single use of the process.

    It is in the case itself Ned! – read the case – perfect cures of rubber were not a new result.

    I laugh at this as you interestingly enough abandon your canard Point of Novelty in this seminal case, because that Point of Novelty was the software use of the math equation – all other elements were old.

    Your duplicity and selectivenes is your own greatest weakness.

  41. Ned,

    I see that you have a significant amount of difficulty addressing the points raised against you.

    Return to my example of the multitude or resistors, parallel, series and combination thereof configurations.

    Return to my point of the controlling LEGAL authority of the excpetions tothe printed matter doctrine, or to the notion of anthropomorphication. Do machines think, Ned?

    Do you think, Ned?

  42. sits on a shelf someplace in the same room or house or office building or on the web someplace to be called or loaded or executed…

    Ned, I have addressed this with you before. Rivets, tires and bullets all can sit on a shelf someplace until they are ‘called’ or ‘loaded’ or ‘executed.’ Patent eligibility is unaffected by this notion. You still have failed to provide a legal basis for your view – as I have repeatedly asked of you. Who then, is engaging only in platitudes?

    You make no point here to support your position.

    at the will of the user

    Likewise, this does not support your position.

    You continue to ignore the plain words of Alappat. It matters not by whom, whether that is ‘automatic’ or at the volition of a user.

    I will bring you back to the Great Hall experiment. If you have a computer that has not been changed with the software, that has not been configured with the software, can you do what is claimed in the software-patent? Or do you NOT yet have a new machine?

    Either you do not understand machines, or you are just making a fuss but with an explicit (and no good) purpose. We both know why you do this.

    Time for a little intellectual honesty Ned.

  43. Nice strawman Ned – I did not ever say that the process as whole was not improved remarkalby.

    Try again to read what I actually wrote.

  44. Night: “A bit is being transformed. The electrons are being moved. Voltages are changing. You say a single bit has no structure? Well, with that arugment your doorknob has no structure as it is composed of atoms? Oh but you say the order of the atoms gives it structure. But, I say the combination of the bits gives them structure. And, the transformation of the single bit depends on the other bits.”

    Night, I see you have a significant amount of difficulty distinguishing between information content of a circuit and the circuit itself. You speak of Voltages and circuits. These are physical things indeed. They are structures. But what they mean or represent is abstract.

    I’ve given you an example of a cross. It physically is a structure composed of two beams attached in a particular manner. To some though, the cross has meaning. It represents Christ or the cruelty of the Roman Empire or some such.

    In the Catholic religion, the priest blesses a host. In a mind of the Catholic it is transformed into the body of Christ. But whether it is or not so transformed, it remains a simple piece of bread. The transformation, to the extent it occurs, is abstract. It is a mental leap of faith.

    When you see a circuit that has a bi-stable state, you see a bit. But in reality, it is simply a circuit. The information content of that circuit is in your brain. It is abstract.

  45. Ned,

    Do you realize that your main problem is that you ignore the facts of the case, ignore the law, ignore the plain words, and strive only for a desired end result that fits your agenda?

    Then you have the audacity to play Malcolm-like games instead of addressing the points I raise (btw, you STILL have not addressed the points of the controlling law of the exceptions to the printed matter doctrine or the concept of anthropomorphication).

    And may I remind you yet again who exactly was it that used your supplied reference to correct your attempt at misunderstanding and misapplying the holding of Bilski regarding your crusade against business method patents?

    Your acknowledgment of this is on the record, Ned.

  46. Anon, from the simple fact that you insist and others insist that the programming as part of the machine. If it is not part of the machine, but sits on a shelf someplace in the same room or house or office building or on the web someplace to be called or loaded or executed at the will of a user, then the programming itself is not not part of the machine. Either you do not understand machines, or you are just making a fuss but no purpose at all.

  47. Anon, that you recognize that your main problem in determining holding versus dicta is that you do not read or even consider the facts of a case?

  48. Anon, your insistence that nothing new was done in Diehr is remarkable. The process as a whole was improved, remarkably. It is the fact that you do not get this that is itself remarkable.

  49. Really, Ned, you should be ashamed of yourself. You are evoking an appeal to the ignorant.

    You guys just play these games of trying to conceptualize a completely new science of information processing in iron age terms and then try to come to a conclusion that is false because your analogies are fallacious.

    Just sickening that educated people would engage in this type of argumentation.

    A bit is being transformed. The electrons are being moved. Voltages are changing. You say a single bit has no structure? Well, with that arugment your doorknob has no structure as it is composed of atoms? Oh but you say the order of the atoms gives it structure. But, I say the combination of the bits gives them structure. And, the transformation of the single bit depends on the other bits.

    You see you lose, although I am sure you will continue to plow logic fallacy after logic fallacy into your arguments.

    The bit is just like a grain of wheat in Deener. There can be no question of that. Those gates are a machine that is processing the information that takes the form of electrons and that information is being transform. That transformation requires time, space, and energy and it obeys the fundamental laws of physics and there is a law of physics of the conservation of information.

  50. David, I know this, of course. But there is a problem. The problem is that if you don’t recite structure then you fall into 112, 6. There are cases that state that a circuit configured to blah is a structural claim. We don’t have a case right on point for a method that is implemented in software.

  51. Thank you for your thoughtful comment. IMHO the debate boils down to two camps:

    1. Collectivist – optimal use line of thinking.

    2. Individualist – Locke’s view (Advancing the individual is advancing the community, because after all the community is nothing more than a group of individuals.

    Your analog to Kelo is a good one as one can see (1) and (2) in stark contrast in that opinion.

    Unfortunately, in our current patent debate, google and intel (market power driven enterprise) have no use for any functioning IP system (with the exception of an employee walking out the door with the source code – whom they would have jailed). So they have turned their unmatched PR firepower on the system as a whole. Indeed, the more they break it, the more they complain of the ‘broken’ system!

  52. Let everyone note that the person that dropped out is 6.
    (And note that the structure should be seen from the perspective of one skilled in the art. If you don’t understand it, then put some effort in to understand it and don’t expect us to somehow figure out a way to explain new technology in your kindergarten understanding of science and engineering.)

    Did you hear that commie Posner, black heart Stern, academic integrity lapser Lemley, cranky old goat without morals Lourie, man without a clue Mayer, and the rest on the Island of Filthy Minds.

  53. 6, “you can’t make a function into a structure just by saying that it is so.”

    6, what I need do is comply with 112. Enable anyone of ordinary skill in the art to build and practice the invention. 6, the person of ordinary skill in the art knows 100’s of ways of implementing the claim with the teachings of the specification. Each one of those implementations defines a structure. The combination of them all defines the structure that is claimed.

    This is no different than mechanical claims. A hinge. People make functional claims all the time in the mechanical arts. It is the only way we could write a patent application without it being an encyclopedia. And, 6, remember that the applicant is presumed to be the person best able to explain their invention. Frankly, I really don’t understand how you can’t understand these arguments. I suppose a simple example might help you. A simple claim with several hundreds ways it could be implemented. And, then a discussion of the structure that is defined by these implementations.

    And, as to your computer readable medium: 6, how could something without structure cause a computer to behavior in radically different manners?

    And, goodness, take your pill. I don’t know why you get to get away with it. Could be that our good Professor doesn’t have as high expectations for you as he does for me. (Couldn’t resist a little jab.)

  54. Malcolm,

    Trying to imply that you did not make the admission (and we both know you did) is an ethical violation of deception – tantamount to 1ying.

    Remember, Prof. Crouch has explicitly stated that 1ying is not allowed here at Patently-O.

  55. accuse-others-of-what-you-do is your speciality, Malcolm.

    Accuse me of moving goalposts as you yourself move them. Fish scales was talking about 101 to which you replied “depends” to the 101 point, at the same time you wanted to import a 102/103 argument. Nope – can’t do that.

    Try not to self-defeat so fantasticly. 9-0 Baby.

  56. 6,

    (sigh)

    If ‘structure’ is not required to differentiate, then there is not failure to show possession of that ‘structure.’

    Note the quotes this time, please, as structure is there because in this art (a little something that you forgot about – the art dictates what needs to be there – not your rather unimportant desires), structure is present in the phase “configured to.”

    Even Malcolm has volunteered this admission.

  57. intelligent, educated segment of the culture

    Because intelligent and educated people (in fact like lawyers even) never 1ie.

    /eyeroll

  58. “The invention is in the new way to figure out how to drive OO”

    Could not have said it better myself Les, so why don’t you guys go ahead and claim what you subjectively believe to be “the invention” and stop beating round the bush with all this “apparatus” nonsense? Little ol 101 stopping you? Why then should the draftsman’s art be able to save the “invention”?

  59. “Third, 6, you don’t get to say how the structure is presented. ”

    I sure as f do brosef. That’s what my trusty friends 102 (I say that it has to be presented in a manner that distinguishes) and 112 (says that it has to be presented in a manner that shows you have possession of the whole functionally recited genus) are for along with their cousin the drawing regs. Your mere assertion that we don’t get to say how the structure is presented, and some old timey PTO ta rds lapping it up doesn’t make it so. The rules say you draw it, the law says you show possession and claim in a way that distinguishes. Not to mention a few other things the lawl says re this subject.

    And to be clear, I don’t mind how you present the actual structure SO LONG AS YOU ACTUALLY PRESENT IT AT SOME POINT INSTEAD OF JUST A FUNCTION TACKED ON TO NOMINAL STRUCTURALLULZ LANGUAGE. You can’t make a function into a structure just by saying that it is so.

    And as to why I get to say such things to you, I probably don’t, who knows perhaps it will disappear in a moment. But I will say this, perhaps he recognizes your trollin and how bad it will eventually infuriate the normal person trying to hold a frakin normal conversation which you all the time just simply drop out like a little after it reaches a head, and this is like the 10th time now. Or, as here, you simply change the subject. You changed the subject just in the last post onto what I do or do not get to say instead of GASP just wt f is going on in terms of substance in these sorts of cases (WHICH WAS BTW THE PREVIOUS TOPIC). We can talk about what I get to say later.

    Like seriously? This isn’t even an actual prosecution, you could at least TRY to put down the actual precise structure THAT CAUSES THE RECITED SUPPOSED FUNCTIONALITY of even ONE CLAIM EVER ISSUED of these types. But you won’t even do it even OFF THE RECORD. It should take no more than like 10 minutes according to your magical ordinary skill. And you could save a lifetime of arguing.

  60. “Nothing approximating the words “physical structure” anywhere in there, 6.”

    Don’t show your structure, fail to show possession of your structures.

  61. “No, I don’t. But I do know that if you let a bunch of greedy lawyers get away with a greedy money-grubbing scheme, it’s meaningless and idi0tic to refer that scheme as an “isolated incident.” “

    Uh, strawman much? I said nothing about isolated incidents, and my comment (which you appear to have made fun of) had only to do with one thing – manufacturing patentees not going after consumers. And this was only a comment on Sixie’s statement about patent claims appearing to target such. Greedy lawywers and the greedy money grubbing schemes wouldn’t seem to have anything to do with manufacturing patentees, by the way.

    I guess “No, I don’t. “ is probably where your answer should have stopped, Moooooonbeam.

  62. “fixed… automatic”

    I have asked many times before – maybe this time I will get an answer – Ned what basis in law do you get this new requirements from?

    Maybe these ‘platitudes’ will be ‘engaged?’

  63. Ned, the ‘something done’ in Diehr was not new: curing rubber.

    The ‘point of novelty’ was software used to read on a continual basis (old) temperature inputs from (old) thermocouples and use an (old) math formula to open an (old) door.

  64. Ned,

    Let’s face it, business methods (as a category) are patent eligible. See Bilski.

    We’ve been on this Merry-Go-Round before.

  65. LB, lets not conflate. Functionally claiming old elements has always been acceptable. Ditto the use of explanatory language in claims.

    The only thing that Malcolm and I ever complain about is claiming THE INVENTION functionally. That means the novelty itself must be defined by its result and not by the means or methods disclosed.

    The vice in this goes back to the days of Wyeth v. Stone, O’Reilly v. Morse, and was repeated in such cases as Perkins Glue, Wabash Appliance and Halliburton.

    Do not intentionally misunderstand us, please.

  66. LOL – oh, how I bet you can retract that little bit of honesty that snuck out when you tried to actually have a substantive discussion. It’s no wonder that you try not to ever give answers or address actual points made on this blog.

    Mmmmmm, toasty.

  67. LOL – I do believe that translates into “anon, you are correct.”

    You might try it in English, Malcolm. And yes, it will be shoved in your face whenever I please.

  68. Les, if you place the computer in context, having inputs and outputs, and doing something new (per Diehr), I too have no problem whatsoever.

    But you have to recognize that the advocates here want to claim a computer calculating numbers, where the number represent something like price or an alarm limit or the result of BDC->binary or the correlation between metabolite level and the need to increase or decrease dosage. There the computer is not new. It is simply being used for its intended purpose: to calculate. It is not part of a larger apparatus or process, and its programming is not doing anything new.

    Now this is where I thing the programmed computer can indeed be a new machine if the programming is fixed — as in ROM. This is just how micro-instructions work. The computer instruction are used to index a microprogram that then executes. The computer itself is new because of this.

    Had the Benson claim been limited to being fixed, and executed automatically when called, I think the Benson claims would have been held valid.

  69. The Justices most assuredly shot down the ‘depends’ Whatever argument.

    Nothing in the Prometheus case or any other case suggests that a claim can not be simultaneously ineligible and anticipated/obvious, or that anyone is prevented from raising both issues when evaluating a claim.

    But go ahead and move the goalpost some more, Mr. Dumpty. It’s your specialty.

  70. A new use of an old machine, yes. Have a glimpse at the statute.

    Aw jeez, Les, you were doing so well. Why in heaven’s name are you now saying that your apparatus is a new use of an old machine? A “use” is not a “machine.”

  71. your self-volunteered admission is archived.

    Right, exactly like your self-volunteered admission about beating your wife and having to wear an electronic leg bracelet that monitors your movements into and out of the mental hosptal.

  72. hint: the answer’s already been posted)

    Mr. Dumpty does love his little games. He must miss his sockpuppet “friends” terribly.

  73. like have a use requirement.

    Something along those lines. I think the Supreme Court has already indicated that factors such as use by the patentee can affect the patentee’s rights. You might remember that case. It was fairly recent.

    that 1908 Supreme Court decision

    Is that the decision which says that it’s unconstitutional to require US patent owners to make or use the invention covered in the patent they are trying to enforce? If so, I haven’t read that one. Have you?

  74. Ah, it’s a method of programming an old computer that you are trying to claim.

    No, not even close. I’m claiming a category of gadgets in terms that are quite clear and definite to the “Everyone” that Les mentions, which is exactly what the law requires. As Les says, there is no problem with functional claiming per se. Are some patent attorneys really bad at it? Absolutely. Do some patentees over-reach with claims that include functional language? Undoubtedly. Should PTO examiners be better trained at spotting indefinite claims? Definitely.

    Not ever? Hmm.

    Les didn’t say “not ever.”

  75. I’ll let you two ch@mps mull this over for a day or two.

    (hint: the answer’s already been posted)

  76. it’s those d_@mm greedy lawyers…

    LOL – as Malcolm buffs the shine to his aluminum headgear, the advise is still on the table: get into a profession that you can believe in.

  77. Cowboy, states can be temporary or permanent. If temporary, one finds a circuit, nay a computer, in a state that may exist only momentarily and be gone the next. If permanent, the modify state becomes a permanent part of the structure of the larger apparatus.

    If one is truly seeking to claim a new machine through programming, the state the machine is in must not be temporary, but fixed. Otherwise, one describes the use of an old circuit or machine rather that a machine in a new fixed state, a new machine.

  78. an old computer

    LOL reminds me of a joke (well, actually more than one):

    Q: What do you get when you combine House and the purposeful ignorance of controlling law of Alappat?

    A: A perpetual trainwreck canard that both Malcolm and Ned can indulge in.

    Sorry, not all jokes can be funny, and the canards by Ned and Malcolm usually are not.

  79. I’m pretty sure that I was not wrong at all about the Diehr decision.

    Of course you believe that, Mr. Dumpty! Why, you’ve probably managed to convince yourself that you predicted the result in Prometheus and it’s a “victory” for you. Yes, we all remember you championing your “theory” that an old conventional step could not rescue a claim that recited only a new ineligible mental step. We need only visit the archives, right, Mr. Dumpty?

    Let us know. And while you’re creating an alternate reality for yourself, please let us know the name of that law firm that uses your “screen and destroy” method for avoiding learning about prior art. There must be hundreds of “ethical” firms like yours, Mr. Dumpty. Just give us the name of one so we can call them up and find out who their insurance carrier is. Thanks, Mr. Dumpty.

  80. A new use of an old machine, yes. Have a glimpse at the statute.

    “Not ever? Hmm.”

    Not in this case. A case where functional claiming is used for good reason. Was that really not clear?

  81. There are many small businesses conducting research directed towards innovative technology funded in part by the Small Business Innovation Research (SBIR) and Small Business Technology Transfer Research (STTR) programs.

    Oh my goodness, that sounds like socialism!

  82. LOL – you just answered with a self-serving circular logic ‘answer’ that answers nothing.

    But thanks for ‘trying‘ to answer, Malcolm. That’s at least a start. Your fingers starting to recover from those burns?

  83. Come on, Chinese. Just move in already.

    Please please keep up this awesome “argument” in defense of patent trolls! I’m sure it’s working. Trust me.

  84. do you have some names to share? (making/selling patentee who goes after consumers?)

    No, I don’t. But I do know that if you let a bunch of greedy lawyers get away with a greedy money-grubbing scheme, it’s meaningless and idi0tic to refer that scheme as an “isolated incident.”

    I’ll let you figure out why, Suckie.

  85. LOL – remember Malcolm, no 1ying on the ‘new’ Patently-O And yes, your self-volunteered admission is archived.

    As they say, svcks to be you!

  86. The invention is in the new way to figure out

    Ah, it’s a method of programming an old computer that you are trying to claim.

    The invention is…not in whether and Intel XZ or an AMD ZR is used to do it.

    Not ever? Hmm.

  87. reduced to practice

    LOL – like have a use requirement. Oh wait, that’s asinine given how patents (per 101’s and any improvement thereof language) actually work.

    Still hunting for that 1908 Supreme Court decision, Malcolm?

  88. Love that admission.

    Reminds me, which leftist academics do you not stalk? Or is your list pretty much 100% inclusive?

  89. I’m pretty sure that I was not wrong at all about the Diehr decision.

    Funny that you have never actually squared the Prometheus decision (nor have your ‘friends’ who post in the exact same ways as you do), and that you still self-defeat with that 9-0 dance a jig baby decision.

  90. Nothing but FAIL

    I just answered your question, Mr. Dumpty. That’s all. I’m sorry you didn’t like the answer. Maybe it’s time for you to gather the king’s men to clean your diaper for you again.

  91. pay attention to your own admissions that “configured to” is structural

    Pay attention to your wife-beating charges. You’re still on parole, as you admitted to everyone here.

  92. I’m pretty sure Ned is “at liberty” to do that

    I’m pretty sure that purposely misrepresenting law is an ethical no-no, no matter what, so here you woould be wrong (again).

  93. the dominant academic and political theories for strengthening IP rights in the “information economy” by analogizing “intellectual property” rights as analogous to “tangible property” rights.

    Those political theories for “strenthening IP rights” aren’t particularly persuasive or popular among the general public, or even among educated members of the bar.

    This report to some extent says the rights of property owners perhaps should be curtailed

    The rights of certain patent owners, for sure. That’s because of over-reaching on the part of certain game-players. You know, law firm partners teaming up with the wives of the firm chair and trying to patent “paradigms” so they can make a lot of money “off the Internet” (because they don’t have enough money already). People like that. You know, greedy Republican types.

  94. LOL – the one who harasses without cause gets on his soap box (along with Francis and Keeping It Real and who knows how many others).

    We’ve been down this path already – I have outlined the real causes of poor quality blogging and all you could do was [shrug] – and continue your poor quality blogging. Shutdown? No, more like just highlight the crp for what it is.

    The word for you (still): hypocrite.

  95. it turned out that the private interests the government was trying to benefit were a bad choice in the market; the project never was realized even after the property was acquired.

    So what?

  96. The only argument that finds support in the document is an implicit argument that individual inventors should really have to demonstrate they have attempted (how?) to practice their invention to have standing to assert their rights.

    Gee, I dunno. Maybe provide an example of the invention reduced to practice and evidence of a bona fide attempt to bring that product to market?

  97. 35 USC 112 1st reads:

    “(a) In General.— The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”

    Nothing approximating the words “physical structure” anywhere in there, 6.

  98. > It appears that many my messages in the last day or so have not been posted.

    Patently-O’s comments section has apparently been having very serious trouble: lots of posts are getting dropped left and right. Seems arbitrary, not personal: switching browsers, logins, and post content doesn’t seem to affect the problem.

  99. I’m not aware of a functional claiming “problem.” Everyone knows that microprocessors are connected to memory and memory stores programs and instructions and that micro-controllers have inputs and outputs and can be programmed to do things. So, I don’t see a problem with claiming an apparatus operative to receive inputs X, Y and Z and manipulate them and other information to determine AA and to drive output OO according to AA.

    The invention is in the new way to figure out how to drive OO, not in whether and Intel XZ or an AMD ZR is used to do it.

    That’s exactly right, Les. Nicely put.

  100. I’m not aware of a functional claiming “problem.” Everyone knows that microprocessors are connected to memory and memory stores programs and instructions and that micro-controllers have inputs and outputs and can be programmed to do things. So, I don’t see a problem with claiming an apparatus operative to receive inputs X, Y and Z and manipulate them and other information to determine AA and to drive output OO according to AA.

    The invention is in the new way to figure out how to drive OO, not in whether and Intel XZ or an AMD ZR is used to do it.

    Now, if the claim is to a flying saucer and the components include three gimbaled anti-gravity engines and there is no disclosure on how to make an anti-gravity engine. I agree with you, there is a problem.

    On the otherhand, in this case that was dragged out for 20 years, someone should be ashamed. The definition of the coined phrase must be in the spec, or the amendments would not have been allowed. The BRI is what one of ordinary skill would understand the term to mean after reading and understanding the spec. The amendments that were apparently insisted on were not needed and should not have been required.

  101. “So nobody has anything to worry about.”

    Your words, tro11boy, not mine.

    So, do you have some names to share? (making/selling patentee who goes after consumers?)

    Moochass ohbleegadoes

  102. Depends

    LOL – Malcolm favorite dance a jig baby 9-0 Prometheus FAIL.

    The Justices most assuredly shot down the ‘depends’ Whatever argument.

  103. and the composition of the prior art is the same as that of the claim

    Typical Malcolm cite FAIL

    Try again, this time pay attention to your own admissions that “configured to” is structural and thus the composition is not the same.

  104. the points I raise that the little circle crowd seem incapable of addressing.

    Mr. Dumpty has spoken. Bend your knees.

  105. Spammy McFilter: Why am I still waiting for you to address things like the exception to the printed matter doctrine and controlling law therewith, and the concept of anthropomorphication?

    Because you’re a blogtroll with serious s-ciopathological tendencies.

    This has been another edition of simple answers to easy questions.

  106. 102 and/or 103, but NOT 101

    Depends. The best approach for an Examiner or defendant is to make a 101 rejection as well, if it can be reasonably made. It’s not unlike the “pinch” between simultaneously raised 103 and 112 rejections.

    In any event, if you want to prevent all 101 rejections of functionally claimed “new” compositions, I think you’d have to expressly overule Funk Brothers. I wouldn’t necessarily have a problem with that if the same result (no patent) is ensured (recognizing that human error/incompetence is here to stay).

  107. What is the (proposed) basis for removing licensing programs as a domestic industry?

    The reasonable policy of stifling PAE activity.

  108. We should clarify what is meant by “functional claiming,”

    Right, because it’s really, really hard to figure out what it is being discussed when we talk about claims to “new” compositions or “systems” which do not describe a single structural difference between the “new” composition and the old composition.

    ‘Point of Novelty’ can be laid to rest

    You wish. Keep dreaming, anon! 9-0. Still loving it.

    elements including both structure and function, and which are PERFECTLY legitimate

    Only if the structure is new. Nice try, Tr-llboy.

  109. First, I’d like Dennis to explain to me why people are allowed to talk to me like this, but my posts get deleted if I even come close to this type of abuse.

    Second, you forgot you pill 6. Go take it.

    Third, 6, you don’t get to say how the structure is presented. The structure is there in all the ways that one skilled in art can implement the method claim you refer to. There are 1000’s of ways to implement it and guess what? We know how to implement it and could write down all the methods. I’ll think about where I can find a reference that will explain this to you.

    But, guess what 6, you are wrong again and being vulgar again. Not an attractive combination.

  110. There are many small businesses conducting research directed towards innovative technology funded in part by the Small Business Innovation Research (SBIR) and Small Business Technology Transfer Research (STTR) programs. Collectively these companies file a large amount of patents and many of them commercialize their technology via a license to larger businesses with appropriate market channels. These companies may not be manufacturing a product and are technically a NPE. Consequently, they would be restricted under the proposed White House policy directive?

  111. Have you not listened to your pal Malcolm? Even he acknowledges that “configured to” is structural language.

    Sure I did. On the same day, you admitted that you loved David Kappos so much you wanted to lick his head shiny clean, for free. I remember that well. I was a bit suprised that you were allowed to comment here after that outburt, but I think you get a free pass from Dennis because he recognizes that your mental illness often leads you to post your fantasies here.

  112. They are planning on setting up witch trials.

    Burning innocent women alive at the stake … making it harder to obtain broad conceptual claims to computer-implemented methods … It’s the same thing. Why can’t the leftist academics and Megacorporations see this?????????!??!?!?!?

  113. Spammy McFilter: There is only one reason to want to know who owns a patent, and it has nothing at all to do with the patent right itself.

    C’mon, Spammy, don’t play your usual games. Please tell everyone this “one reason” which has “nothing at all to do with the patent right.”

  114. I have never seen a making/selling patentee who goes after his or his competitor’s consumers.

    Hey, some anonymous commenter on a patent blog claims to have never seen a patentee trying to target a “consumer”. So nobody has anything to worry about. Move along! Nothing to see here.

  115. isn’t anyone concerned about the possibly broad ramifications of handing out “get-out-of-infringement-free” cards to end users in order to address what seems to have been an isolated incident?

    LOL. Never, ever underestimate the dishonesty and ignorance of the patent t–b-ggers.

  116. ” I have some people right now before me who appear to be trying to target the end users with their claims.”

    Patent attorneys write claims that appear to target consumers so as to have argument against competitors for contribution.

    I have never seen a making/selling patentee who goes after his or his competitor’s consumers.

  117. “A bit is the smallest unit of a program instruction. But what is it, in reality? Is it structure? Or is it, rather, the state of some other structure?”

    The state of some other structure, I think is what a bit is. Just like a hammer head is a state of a piece of steel configured for driving nails into wood. A different state of steel makes a saw, that cuts wood in two. I don’t see any reason why one would deny patent eligibility to either form of steel or to a bit that is a one or a zero.

  118. Les, the definition itself must be structural. That was what I was trying to say. If you define a term such as widget that has no specific meaning to one of ordinary skill in the art in terms of what it does, you haven’t solved the problem of functional claiming. At some point, the definition has to be of structure, and that structure must be known to those of ordinary skill in the art.

    We recently had a case that was cited to us as being an example of a case that was pending for about 20 years. What the applicant had done was claim an article of manufacture that had a property that was identified by a name he had coined. That property was unknown to one of ordinary skill in the art. Yet he consistently tried to distinguish the art based upon the fact it did not show this particular property, without ever defining what that property was.

    The case was eventually allowed when new attorneys were brought in and who began to define in the claim some structure. That could have been done 15 or 20 years ago, but the patent attorney handling the case refused to give up on his coined term.

  119. Show me any excerpt of 35 USC, 37 CFR, or any precedential case that sets forth a requirement that claims must recite “physical structure,” as opposed to function.

    Here’s one:

    Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is appropriate for these types of claims as well as for composition claims.

    Nothing radical at all about this general concept. Only a cr–py d–chebag patent-troll lovin’ t–b-gger would attempt to claim otherwise.

  120. Here:

    “Patent trolls often set up shell companies to hide their activities and enable their abusive litigation and extraction of settlements. This tactic prevents those facing litigation from knowing the full extent of the patents that their adversaries hold when negotiating settlements, or even knowing connections between multiple trolls. The PTO will begin a rulemaking process to require patent applicants and owners to regularly update ownership information when they are involved in proceedings before the PTO, specifically designating the “ultimate parent entity” in control of the patent or application.”

  121. Attacks from both the Left and the Right.

    And the Center!

    It’s a nuclear war against The Patent Casino! First they come for your patents, then they come for your firearms!

  122. Well, I can tell you what you have not done. You have not answered my question.

    I’d respond to your point anyway. However, I don’t know what what it is.

    Try again and so will I.

  123. “There is only one reason to want to know who owns a patent, and it has nothing at all to do with the patent right itself.”

    Don’t keep us all guessing!

  124. “However, isn’t anyone concerned about the possibly broad ramifications of handing out “get-out-of-infringement-free” cards to end users in order to address what seems to have been an isolated incident?”

    I’m not. Especially since there were a couple other such incidents, read the news. That was just the big one. And it seems to be a growing trend. In fact, I have some people right now before me who appear to be trying to target the end users with their claims.

  125. Spammy McFilter: you are completely ignoring one of the important holdings (and factual basis) of Alappat.

    You are not at liberty to do so

    I’m pretty sure Ned is “at liberty” to do that, Spammy. Nobody except the p-t-nt t–b-ggers considers Alappat to be unassailable.

    Remember when you were completely wrong about your beloved Diehr decision and its absolutist prohibition against looking at the relationship of claim elements to the prior art? 9-0. I’m still loving it.

  126. Welcome to the world of soundbyte journalism.

    Where does that world stand in relation to the world of using hundreds of s-ckp-ppets posting thousands of comments yearly solely to harass, insult and effectively shut down the comments section of a blog whose commenters who disagree with? Better or worse?

    I’m asking you, obviously, because of your well-documented experience with the latter world.

  127. “6, answer the questions I put to Ned. You can’t.”

    I’ve answered them all before. And it always boils down to that:

    YES THERE IS SOME UNDERLYING STRUCTURE SOMEWHERE INVOLVED TANGENTIALLY BUT NOBODY, INCLUDING IMAGINARY MEN MADE UP IN YOUR MIND, KNOWS WT F IT IS, WHICH IS WHY YOU NEVER SUBMIT A FU CKING DRAWING YOU TU RD WHO ALWAYS SHUTS DOWN AND STOPS RESPONDING WHEN I POINT THIS OUT. AND NOTE THE TANGENTIALLY PART BECAUSE IT IS IMPORTANT.

    FURTHERMORE, AND IN ADDITION TO THE ABOVE, THE REASON NOBODY KNOWS WT F IT IS IS BECAUSE IT CAN LITERALLY BE ANYTHING, IN THE CASE OF YOUR STANDARD “MEDIUM” CLAIM, INCLUDING SIMPLY A 1 OR A 0, OR MY CO CK.

    Since you’ve succeeded in trolling me into answering you, GO AHEAD AND REPLY TO THIS POST YOU WORTHLESS PIECE OF TROL L SH IT. AND DO SO BY FUC KING TELLING ME, IN PRECISE TERMS JUST WT F ONE OF THE SUPPOSEDLY STRUCTURALLY DEFINED STRUCTURES IN ANY MEDIUM CLAIM YOU CAN FIND IS, AND DO SO IN STRUCTURAL TERMS ONLY. MAYBE EVEN DRAW IT OUT ON A SHEET OF PAPER AND POST THAT.

  128. The important point is that this number is not particularly pertinent to the problem supposedly being addressed here. Sending a threatening letter is pretty much free.

    It’s not “pretty much free” if sending the threatening letter lands you in state court because the basis for the threat “pretty much” non-existent.

  129. EG: the academic world

    Your whining reminds me of the infamous Pastor Ray Mummert, when his beloved “intelligent design” imploded in court: “We’ve been attacked by the intelligent, educated segment of the culture,” he said.

    LOL.

  130. 1. a new rule will require patent applicants and owners to regularly update ownership information with the “real party of interest” so that the assignment records are accurate complete.

    Awesome. I agree with Dennis: much needed and long awaited.

    Tightening Functional Claiming.

    Same here!

    It’s great to see these changes. Hopefully they’ll be implemented with real teeth.

    Now I look forward to the weeping of the patent t–b-ggers downthread and, of course, the inevitable denial. If history is any guide, I’ll probably also find a comment by Spammy McFilter claiming “victory” and crowing over my “devastation” because software patents weren’t legislatively destroyed as well.

  131. “To the economy as a whole, that “who”.”

    You seriously believe that the 20k or whatever trolls buy this sht for is impactful enough for “the economy” to be implicated?

    Come on back when the trolls are paying a milly per patent to the small guys instead of buying at firesale prices because the small fry has no ability to use the thing anyway. Then we’ll discuss just how much the economy is concerned with this activity.

    ” Isn’t his creation and monetization as important,”

    No, because the word on the street is that he gets sht for his patent because it is worthless to him and there aren’t exactly buyers clamoring to buy precisely because they cost so much to use. If you think differently, go ahead and show me. I’ve seen the patent auctions/sites and I’ve yet to see all that many small frys making bank.

    “being that he/she is one of those often hypothesized “small business owners” that generate all the new jobs in the economy”

    Who told you that? Or are you just adding that to your hypo now?

    “as the ability of Apple or Motorola or HTC or whoever else makes smart phones,”

    Your sentence is now officially running on and no longer makes sense.

    “I’m sure its the cell phone wars that have exacerbated the issues,”

    That and the kerfluffle about the scanner trolls trolling for 1k per employee of the end user corp. And of course the big corp wars.

    “all the more reason, as I’ve said before, to eliminate software from patent protection.”

    We find ourselves in agreement on at least some things.

  132. To the economy as a whole, that “who”. Isn’t his creation and monetization as important, being that he/she is one of those often hypothesized “small business owners” that generate all the new jobs in the economy, as the ability of Apple or Motorola or HTC or whoever else makes smart phones, to continue to sell their imported products?

    I’m sure its the cell phone wars that have exacerbated the issues, and highlighted the present actions. But interestingly, those lawsuits are being prosecuted by the biggies, not by PAEs…all the more reason, as I’ve said before, to eliminate software from patent protection. State Street Bank was a Pandora’s box.

  133. .
    “President Obama today released information on planed executive orders and push for new legislation…”

    These executive orders were the smoothest ones ever seen.

  134. Yep, I think it was generated by the Chinese. If they can get us to gut our own patent system, their economic model of COPY, COPY COPY will rule the world, with them in charge.

  135. 1. Require patentees and applicants to disclose the “Real Party-in-Interest,” by requiring that any party sending demand letters, filing an infringement suit or seeking PTO review of a patent to file updated ownership information, and enabling the PTO or district courts to impose sanctions for non-compliance. [DC: This would add statutory back-up for the PTO rulemaking]

    Yes, because the power of the administrative state would never play favorites.

  136. The internetz ate my posts excuse again?

    Sorry Ned – not buying it – I check your link to see all of your posts. Your silence on key points remains deafening.

  137. Ned,

    Have you not listened to your pal Malcolm? Even he acknowledges that “configured to” is structural language.

    Volunteered that admission even.

    Mmmmm, toasty.

  138. There is only one reason to want to know who owns a patent, and it has nothing at all to do with the patent right itself.

  139. No misquoting here by me.

    It is you that refuse to take the plain words of Alappat for what they say.

    We both know why. At least you are not denying that.

  140. Ned,

    You have been asked many times to provide some legal backing for this sui generis legal requirement of ‘read-only,’ some tie to a supporting law.

    You have never done so.

    You continue to ignore the fact that software is equivalent to firmware is equivalent to hardware.

    And yet you still play the Malcolm game of accuse-others-of-that-which-you-do with your post at 6:49.

    Shall we catalogue the number of discussions that you have either abandoned or attempted to train wreck when they were leading down a logical path you did not want to go down? Why am I still waiting for you to address things like the exception to the printed matter doctrine and controlling law therewith, and the concept of anthropomorphication?

    Try just a little intellectual honesty, ok?

  141. Anon, I know I responded to this message some time ago but through my email. It appears that many my messages in the last day or so have not been posted. I apologize.

    Let me say that I would agree with you that 102/103 is not a good vehicle for ignoring limitations in claims when there’s a statutory command to consider the differences and then determine whether they are obvious. In order to ignore limitations we would have to ignore the statute.

  142. Anon, you sound like Rader when you say this. He really likes taking things out of context in order to mislead. I wouldn’t trust any citation to authority in one of his cases because the he does this so often.

    Rader has the view that a programmed computer is patentable as such. He will misquote the holdings in prior cases in order to achieve that purpose.

    Anon, at times I think that you are Judge Rader.

  143. Night, just as circuits have states, so do machines. The state of a circuit providing an output to a different circuit may cause that succeeding circuit to behave differently depending on what the output is. But these are simply machine states. They are not different machines.

    If we need another example think about fixtures in real property law. In order to be part of the structure, the fixture has to be a permanent part of the structure. In other words, by analogy, the particular machine state must be fixed in order that it be part of the structure.

    In computers, the closest thing to being fixed when considering programming is when the programs are fixed in read-only memories that are physically part of the machine.

  144. Anonymous, I agree that the requirement to update the real party in interest doesn’t make any sense at all. Only the owner of the patent may appoint attorneys, and the ownership must be proved by chain of title from the inventors. In court, ownership is required for standing, and it must be proved.

    What are they talking about?

    Now, if the ownership changes while the patents is still in prosecution, and that fact is not made known to the patent office, the patent will nominally issue to the wrong party. But still, in order to bring suit, the lawsuit must be filed in the name of the true owner for standing purposes. Where is the problem?

    Above I asked the question of whether they are really intending to pierce the corporate veil and look at who owns the Corporation or who is a silent partner or who is the beneficiary of a trust. If that is what they are after, then I think we might need a statutory fix to define “real party in interest” in a manner that is contrary to general law.

  145. Funny how once Ned is busted down to the primitive questions he can’t answer that he jumps away….

  146. 4runner: “I thought means-plus-function language already required disclosure of an algorithm “in the software field.”

    What about “configured to?”

  147. Show me any excerpt of 35 USC, 37 CFR, or any precedential case that sets forth a requirement that claims must recite “physical structure,” as opposed to function.

  148. > If they get found out then they get sanctions.

    “Found out” about what? In this case, TRT has fully complied with the “real party of interest” rules.

    If “real party of interest” is further stretched to include licensing, then the same exact arrangement can be made through other means. TRT can acquire the patent from TrollTech for free. As a totally unrelated deal, TRT can purchase some services from TrollTech – let’s say, digging trenches in its front yard – for an exorbitant amount of money that happens to amount to all of TRT’s patent winnings.

    Or if that’s also found to qualify as “real party in interest,” TRT can happen to purchase expensive trench-digging services from Intermediate, Inc., which happens to have an unrelated high-value deal with TrollTech, etc.

    “Real party in interest” is a laughable, ridiculous concept.

    > …someone suing the end users of scanners, 1000$ per employee.

    Oh, right! I remember that now – good call, and thanks for the reminder.

    However, isn’t anyone concerned about the possibly broad ramifications of handing out “get-out-of-infringement-free” cards to end users in order to address what seems to have been an isolated incident?

    > I don’t think anyone has had the balls to do it to individual phone users just yet. As soon as it becomes a thing the admin will stomp it out faster than you can say bob’s your uncle. Watch.

    The open-source community has been crying “The sky is falling!” about Linux’s violation of huge swaths of software patents for, oh I dunno, about 15 years now. Hasn’t materialized yet.

    Non-troll companies have no interest in suing their competitors’ customers, because it is a recipe for self-destruction in the marketplace.

  149. (1) Third-party interests?

    (2) To what end? What possible good could come from Patently-O comments? No one here is remotely persuadable.

  150. 6, answer the questions I put to Ned. You can’t.

    The fact is that there is physical structure, it has a meaning that is definite, the so-called functional claiming problem is nonsense that is exploiting the ignorant mob.

  151. Ned, you busted! Except that the structure has a functional relationship with the other circuits of the machine. So, there is no structure of the beholder business. The structure’s meaning is definite and has a meaning given by the entire machine.

    So, you want to split the circuit up into a structure of a circuit and then the circuit has a state that you claim is not structure. And, yet you refuse to answer the question how two machine with the same structure can behavior differently.

    And, again, this word gamemanship. So, the placement of electrons in the silicon doesn’t count as structure? How can that be. That is arbitrary on your part.

  152. “How does this help anything?”

    If they get found out then they get sanctions. And lawlyers will stop doing it (one would hope) because they are officers of the court.

    “Define “computer-enabled patents.””

    Np, they have a grunt in the basement that can do that.

    “Are end-user suits a serious problem, or even something that happens in fact?”

    I’ve heard stories they used to happen way way back, but they just now came back in the news with someone suing the end users of scanners, 1000$ per employee. I don’t think they ever litigated though, they just sat back RICO style and collected settlement money. Pay attention to the news.

    “Through all of the incendiary mobile phone lawsuits (Apple/Google/Motorola/Nokia/Microsoft, etc.), how many end users have been sued for owning a potentially infringing product? Is it more than zero”

    I don’t think anyone has had the balls to do it to individual phone users just yet. As soon as it becomes a thing the admin will stomp it out faster than you can say bob’s your uncle. Watch.

  153. In re “2. Tightening Functional Claiming. …. in the software field.”

    Now I’m a little confused.

    I thought means-plus-function language already required disclosure of an algorithm “in the software field.”

    Are they now proposing to clamp down on words like “comparator” and “selector” in the software field?

  154. “That would be a valid question if U.S. patent law had a physicality requirement – if claims were required to recite physical structure.”

    You mean like here in the useful arts we require?

    Oh yeah. That.

  155. “I could write a 5,000 page application that would cover every possible structure—but you see those are all known structures just like the hinge.”

    Oh, they’re all well known? Then 102 will suffice eh?

  156. “and knows what the structure is. ”

    Well if they do then why can they not simply enunciate it for us?

  157. the attackers are generally disinterested in the operation of the system, and would gladly see the entire thing set on fire if it served their personal agenda

    Yes. Attacks from both the Left and the Right.

    Burn baby burn.

  158. Ned,

    As I have explained countless times, there was more than one issue and thus more than one holding in Alappat.

  159. The plain fact is that Ned has purposefully misconstrued Alappat for years, even as I have painstakingly held his hand through a step by step explanation. I went so far as to compose a three steps program for Ned, which he dutifully ran away from after the first step and when he could see where the logic was taking him.

    I chased him for months, but he refused to continue the conversation.

    Later, we found out exactly why – it has to do with the fact that Ned posts for third party interests (against the blog rules).

    C’est La Vie.

  160. On the contrary, Flagstaff, it is neither ‘childish regurgi-babble’ nor is it ‘not needed.’

    But you are welcome to voice your unsubstantiated opinion and even address any of the points I raise that the little circle crowd seem incapable of addressing.

    I welcome your answers.

  161. The two beams are structure.

    I give you the structure of a bunch of resistors. The ‘state’ of the resistors can be either all in parallel, all in series, or even (gasp) a mixture of in series and in parallel.

    These are the types of configurations that you errant call ‘platitude’.

    Sorry Ned, the real world is on my side. The law is on my side.

  162. Ned, the hardware in Alappat was totally ordinary.

    Alappat involved an ordinary computer, with an ordinary display having an ordinary raster. The novel part in Alappat was rendering graphics using a rasterizer (implemented as a circuit *or as software*) that performed anti-aliasing.

    And here’s the holding in Alappat: “if the claimed ‘rasterizer’ were equivalent to a ‘general purpose digital computer’ programmed to perform the calculations performed by the rasterizer, such programmed computer would be the invention of a ‘new machine’ within § 101.”

    As NWPA correctly noted, you are misconstruing the plain language of Alappat.

  163. On the contrary, see Alappat and take the fact that software is equivalent to firmware is equivalent to hardware.

  164. We should clarify what is meant by “functional claiming,” as it is likely that a bogeyman of what would be effectively a single means claim is likely the unstated strawman that Ned has in mind for his crusade here.

    Most actual ‘functional claiming is NOT this actual concern and instead is a combination of elements including both structure and function, and which are PERFECTLY legitimate – (and Ned’s implicit canard of ‘Point of Novelty’ can be laid to rest even before it appears).

  165. > Night, if you would, define the structure of a bit.

    That would be a valid question if U.S. patent law had a physicality requirement – if claims were required to recite physical structure.

    On the contrary, U.S. patent law permits the recitation of a method, as a set of steps. There is no physical requirement involved here.

  166. > “Means for fastening one object to another object.” Now the scope of this claim element is somewhat clear, but the problem may lie not in the clarity of the claim element but in the fact that it does not clearly claim the invention if the invention itself is, for example, a screw rather than a nail.

    If nails are known in the art, and if the novelty is in the fact that the fastener is a screw rather than a nail, then this claim would be properly rejected under 102, as the fastener includes nails. So I don’t see why functional claim language presents any problem here.

  167. anon, I asked for the structure of a bit. You seem to not understand that circuits, molecules, magnetic domains have states. What the states mean is quite independent of their structure.

    Thus, I give you a cross. Two intersecting beams, one shorter and attached near one end to the other.

    What this “means” is in the eye of the beholder. It can mean to some a symbol of Christianity. To other, of the cruelty of the Romans. But all it is in reality is a pair of beams assembled in a particular manner.

    The meaning of a structure or state is an abstraction.

  168. anon, until you actually read Alappat, review the underlying patent, look at Fig. 3, understand that hardware was being claimed but that the PTO ignored this and that that was the issue on appeal, you are never going to understand Alappat.

  169. Essentially, I think, a claim to a programmed computer is a claim to a new use of an old computer

    Essentially, you are completely ignoring one of the important holdings (and factual basis) of Alappat.

    You are not at liberty to do so – no matter that your desire is to do so.

  170. I dare say there is no link to debunk this claim, because it is probably true.

    While 100,000 may sound implausibly high, this is merely the number of companies threatened. I imagine that most of these threats go nowhere.

    Without even being in the US, I have clients come to me from time to time needing advice on how to deal with threatening letters from PAEs. These generally go away if we are able to persuade the PAE that the alleged infringer does not make enough money to be a worthwhile target. In such cases, I generally recommend being pretty up-front with the business’ financials. After all, it is not as if the information is being given to a competitor, and if the gross annual income from a product or service is only $10,000, it will be pretty clear to the PAE that the company will just stop providing it before it will pay $75,000 ‘go-away’ money!

    In another recent case, I have seen three US distributors threatened on the basis of just one product provided by an Australian company. Only a PAE would do this. A competitor or a good-faith licensor would address the alleged infringement at the single source of the goods, seeking an injunction or a per-sale royalty payment. Going after everybody who touches the product in the distribution chain obviously involves more effort and expense, and only makes sense if you are pursuing once-off lump-sum payments from each target.

    I am no fan of Bessen and Meurer’s analysis of the alleged ‘cost’ of NPEs to the US economy. In fact, I think it is deeply flawed. But it seems fairly clear that there are a few thousand suits initiated by PAEs in the US each year, though my guess would be that most of these get nowhere near trial. So it is not so unlikely that the number of threats which never go any further is more than 100,000.

    The important point is that this number is not particularly pertinent to the problem supposedly being addressed here. Sending a threatening letter is pretty much free. There could be millions of threats sent every year, but if none of them resulted in any further action, nobody would be talking about it, least of all the White House.

    But is anybody really surprised that the report cherry-picks the numbers that sound most alarming, rather than addressing the (much smaller) ones that might actually matter?

  171. LOL – answers that Ned does not like are merely labelled as “platitudes,” all the while he remains silent as to ANY answers of ANY kind (‘platitude’ or otherwise) to key questions and points put to him.

    The silence is deafening, Ned.

    The gamesmanship you are displaying is transparent.

    Try just a little intellectual honesty Ned.

  172. My point is that the childish regurgi-babble you endlessly inflict upon this forum is not needed.

  173. bad, Turbo once did me dirty and I had to pay more than 100k in penalties alone. Perhaps it was operator error. I don’t know, but I thought I was following the instructions of Turbo.

    Perhaps if I had explained that Turbo was confusing I could have avoided the penalty, just like TurboTax Jimmy.

  174. Okay, let’s see how these play out:

    > 1. Require patentees and applicants to disclose the “Real Party-in-Interest,” by requiring that any party sending demand letters, filing an infringement suit or seeking PTO review of a patent to file updated ownership information, and enabling the PTO or district courts to impose sanctions for non-compliance.

    TrollTech develops or buys patent X and sells it outright to TRT, Inc., with sale terms that require 100% of licensing and litigation revenue to be returned to TrollTech.

    On demand letters, infringement suits, and PTO review issues, TRT, Inc. discloses as the “real party-in-interest,” i.e., the owner of the patent, the company called TRT, Inc.

    How does this help anything?

    > 2. Permit more discretion in awarding fees to prevailing parties in patent cases, providing district courts with more discretion to award attorney’s fees under 35 USC 285 as a sanction for abusive court filings

    …thus exacerbating the financial risks of litigating patents, and inflating the incentives for accused infringers to take a license or settle with a patent troll rather than litigating it.

    Also, increasing the licensing terms demanded by the troll companies, since their targets are even less inclined to litigate.

    > 3. Expand the PTO’s transitional program for covered business method patents to include a broader category of computer-enabled patents and permit a wider range of challengers to petition for review of issued patents before the Patent Trial and Appeals Board (PTAB).

    Define “computer-enabled patents.”

    > 4. Protect off-the-shelf use by consumers and businesses by providing them with better legal protection against liability for a product being used off-the-shelf and solely for its intended use.

    Are end-user suits a serious problem, or even something that happens in fact?

    Through all of the incendiary mobile phone lawsuits (Apple/Google/Motorola/Nokia/Microsoft, etc.), how many end users have been sued for owning a potentially infringing product? Is it more than zero?

    How will any of this help the actual, serious problem of troll patentees?

  175. Are you really that dense?

    You’d have software companies suing users instead of the company ripping off their product? Seriously?

  176. awesome. Make their attack on the patent system and justice their own worst nightmare.

  177. metoo, I think we should modify that just a bit:

    “manufacture in the US under the patent.”

    That would put the likes of Apple into the same bin as any startup whose products failed because of being crushed by big brother. They may get no remedy because they have been crushed. But the likes of Apple will be denied because they use off-shore manufacturing.

  178. Ned, what difference does it make? You expect me to explain the different ways that a bit can be represented in silicon? Just a intellectually dishonest question.

    Support your apparent claim that there is no structure to representing a bit. How would that even be possible?

  179. In the Fe-y department, this gem:

    even at the smallest level, programmed instructions are states of structures and have values.

    LOL

  180. Dan, you know the saddest thing is that the likes of IBM, Apple and Intel will never show that they are actually manufacturing any component in the US under the patent when THEY use the ITC. Rather they will show investment in US R&D that lead to the patent. This is because all computer-related manufacturing is now offshore.

  181. Night, you hit the nail on the head when you said “value.” You may not have even known that when you said this, but you transformed the physical state of a structure into an abstract value.

    Bit: the state of a structure that has the abstract value of a 0 or a 1.

    In other words, even at the smallest level, programmed instructions are states of structures and have values.

  182. Night, “knows what the structure is?”

    I must say, Night, that I have never been able to get Anon to even discuss what the structure is. He always falls back on platitudes, like, “Configured to” means structure.

    Then I ask, what is the structure of a “bit” and get no answer. A bit is the smallest unit of a program instruction. But what is it, in reality? Is it structure? Or is it, rather, the state of some other structure?

    If we could get by the platitudes, we could begin discussion the difference between structures and states of structures.

  183. Just go circular – like the USPTO and how they defined ‘technological’ in the AIA and the implementing rules.

  184. Is this what you do? You put on your big boy pants and make terrible posts on the internet? This is how you live?

  185. could care a less what happens to us

    EXACTLY

    Bottom line, baby, is to use, abuse, and throw away for the almighty profit now – The corporation may be a ‘citizen,’ but does not have the allegience to this country. Big Corp has the allegience to NO country.

  186. David, the issues surrounding functional language in claims is a problem that has vexed patent law far longer than the existence of computers.

    But with computers we have a new dimension. Essentially, I think, a claim to a programmed computer is a claim to a new use of an old computer. Even according to Section 100, such a claim really is to a method.

    Thus viewed, there really is no problem to the functional language when claiming programming. But all such claims have to be treated as methods such for all purposes in my view. For example, the seller of the old computer does not infringe. The one who uses the old computer to run the software infringes.

  187. “Tightening Functional Claiming. The PTO will provide new targeted training to its examiners on scrutiny of functional claims and will, over the next six months develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field.”

    So, does there have to be a second glossary to define the terms used in the definitions in the glossary?

    What terms have to be in the glossary? Every noun? Every verb? Every adjective?

  188. So a bit has no structure? An electronic component that can hold a value of 1 or 0 has no structure?

    Amazing. Machines that have the same structure and yet perform different useful tasks. One driving down the street and another diagnosing cancer.

  189. “4. Protect off-the-shelf use by consumers and businesses by providing them with better legal protection against liability for a product being used off-the-shelf and solely for its intended use. Also, stay judicial proceedings against such consumers when an infringement suit has also been brought against a vendor, retailer, or manufacturer. [DC: We are on our way here toward a fair use of patents.] ”

    So if I use my Napster ap or a photocopier for its intended use, I’m not violating copyright?

    Kewl!

  190. Big corporations need it to compete internationally (oh by the way) big corps now earn less than 1/2 their profits from the U.S.A. and could care a less what happens to us.

  191. “5. Change the ITC standard for obtaining an injunction to better align it with the traditional four-factor test in eBay Inc. v. MercExchange, to enhance consistency in the standards applied at the ITC and district courts. [DC: The focus here is to get patent assertion entities out of the ITC]”

    Seems to me that an easier way of addressing the issue of patent trolls using the ITC is to remove licensing programs as a domestic industry, thereby divesting the ITC of jurisdiction. Such an amendment might negatively affect universities’ ability to use the ITC, but I don’t know how much universities avail themselves of the ITC anyway.

  192. I think we need a definition of real party in interest, otherwise we really will not know what our requirements are.

    Take Big Corp. They have an R&D outfit in Germany, call it BCGermany. BC assigns patents from its R&D to BCGermany. Is BC nevertheless a real party in interest, and if so, why?

    If the answer is yes, are we to understand that we are not to respect corporate structures at all? Are we to “pierce the veil” in all cases and attribute ownership to the holders of the stock, to the beneficial owners of a trust, to the silent partners?

    Without any definitions, I really don’t know what is going to change. If the PTO requires us to update ownership info and we blown them off, is the patent invalid. Of course not.

    So, I say, this cannot be effectively accomplished through a rule change.

  193. Who’s worried about him? It’s not like he’s making a campaign contribution.

    This is the best justice that money can buy.

  194. Taxes are only zero for libs like Turbo Tax Tim Geithner. Us conservatives get yearly audits from special divisions of the IRS. I’m with you on the rest though. The govn’t is just upside down. THis is just another brick in the wall.

  195. not the only case…Thus I think the principle is established

    No Ned, this is not so. If you recall one question presented was whether or not the category question could be so ignored. So there is NO SUCH precedence for your ‘holding’ here.

    Tell me again which of the two sentences of precedential value from Alice support that.

  196. And you quite miss the holding of Alappat – again.

    “but for” ? – No. Sorry Ned, that is a serious misrepresentation of the case.

  197. See Ned espouses the views of the black hearts. That information processing claims are not to hardware too–which is a lie; that they don’t have definitive bounds they do;and, that a functional claim in information processing doesn’t have structure—of course it does.

    Ned, these are lies as bold as the lie in Benson that all math is a natural law and that anything that can only be used in a computer is abstract.

    Shameful lies.

  198. Anon, CLS Bank is not the only case that has held that method and apparatus claims are to be construed in the same way in the context of computers and software. Alappat would have treated the claims in that case as method claims but for the fact that the underlying specification actually disclosed hardware. Thus I think the principle is established that when a claim is wholly functional, consisting only of means plus function elements, for example, plus a computer, that it will be construed as a method claim.

  199. LOL – oh, how Malcolm must be torn on this – this agenda falls to everything (else) that he h@tes (the Right).

    One of these days the bedfellows are going to wake up and wonder how they slept with each other.

    My feeling is that it will be too late for the Left at that point.

  200. Night, you have to be serious for a second. Consider the following,

    “Means for fastening one object to another object.” Now the scope of this claim element is somewhat clear, but the problem may lie not in the clarity of the claim element but in the fact that it does not clearly claim the invention if the invention itself is, for example, a screw rather than a nail.

    But in the software field I would agree with you that software claims in the form of “means for performing a function,” are essentially method claims. As such, the method claims are intended to define the invention by an a series of acts which are normally functioning defined, e.g, receiving an input, transforming the input into a digital representation, providing some mathematical operation, and providing an output.

  201. Attacks on functional language by patentees are like attacks on judges as not adhering to a strict construction of the Constitution. The attackers actually have no idea, or even interest, in the general topic (patent claim drafting or constitutional law); they are clinging to a talking-points issue that sounds erudite in order to push a totally unrelated agenda (driving a wedge in the patent system between software and other technology areas, and pushing the abortion issue out of the federal courts).

    Also, in both scenarios, the attackers are generally disinterested in the operation of the system, and would gladly see the entire thing set on fire if it served their personal agenda.

  202. Regarding software and functional claims, I think the precedent would support treating all claims involving software as method claims. In order to overcome this interpretation, I would think, that the applicant would have to show that there is bona fide structure disclosed in the specification that corresponds to the functionally defined claim elements.

  203. Paul, the executive branch cannot do is make law. Congress makes law and the Federal Circuit and the Supreme Court interpret the law.

    I think that the state of the law today is that §112(f) applies when the patentee uses the magic words “means for” or “step for,” and then only if the claim term remains wholly functional and does not include the structure explained by the functional language. If the claim is structural, the functional definition is interpreted as explanatory. (In my own personal opinion, if it is explanatory it should be ignored for the purposes of distinguishing prior art, otherwise it is a functionally defined claim element: e.g., widget that produces a particular result. In this example which may appear structural, but the claim really is wholly functional.)

    There are gray areas to be sure, but the executive branch does not have the power to declare that every use of functional claiming is governed by §112(f).

  204. Just three observations about seeming contradictions in the linked WH statement:

    1) The theories put forth on their face contrast with core arguments being made for extending and enforcing copyright protections by whatever business entity owns a copyright. Yet both patent and copyrights are supposed to have essentially the same economic purpose, to encourage innovation.

    2) Not surprisingly, the overall theoretical framework arguably deprecates the individual inventor in the real economy, which may not be surprising given the world views of academics and policymakers. Perhaps the biggest example is that seems to be little there that provides a coherent basis distinguishing in the real world between a PAE LLC in which the inventor is a partner and a PAE LLC in which the partner isn’t. The only argument that finds support in the document is an implicit argument that individual inventors should really have to demonstrate they have attempted (how?) to practice their invention to have standing to assert their rights.

    3) Yet another problem is how the principles articulated here conflict with the dominant academic and political theories for strengthening IP rights in the “information economy” by analogizing “intellectual property” rights as analogous to “tangible property” rights. With the latter, two of the most important attributes of ownership is the right to derive financial benefit from the property ***and*** the obligation to vigorously defend squatting by others to retain ownership even if one is not otherwise using the property. This report to some extent says the rights of property owners perhaps should be curtailed, in part by denying them the very right to demonstrate conscientious protection of their rights.

    Stepping back a bit, it almost seems in the current anti-troll legal theorizing we see shadows of the thinking in a body of contemporary eminent domain cases, most notably Kelo v. City of New London. In that case, the property rights of individual property owners were ruled to be secondary to the principle that the government had the right, if it chose, to use its eminent domain power to benefit other private interests to which it was more favorably disposed.

    Significantly, the three justices identified as “liberal” at the time were in the 5-4 majority. Also, the decision induced significant counter-legislation at the state level (something that can’t happen with IP, apparently). And finally, it turned out that the private interests the government was trying to benefit were a bad choice in the market; the project never was realized even after the property was acquired.

  205. “And who cares about the small inventor who can’t afford to practice or can’t sell his patent to Google and the like?”

    I’m going to be honest, not me. And not you either. If we did we’d probably make him a loan.

    “Does his income not count?”

    To whom? The person buying the patent off him? Or him? Or me?

  206. “This functional claiming business is just another attack of the black hearts UPON THE BLACK ARTS.”

    Fixed.

    6 the Blackhearted

  207. And who cares about the small inventor who can’t afford to practice or can’t sell his patent to Google and the like? He gets paid for it by a NPE, or PAE, or whatever its become. Does his income not count?

  208. You forgot the refrain that we need this to compete internationally. We got the anti-trust laws eviscerated with this refrain. We got the taxes dropped to nearly zero with this refrain. We got the Wall Street rules removed. We got the Fed. to give us free money. Now please remove the patent system.

  209. This looks like the best legislation money can buy. Microsoft, cisco, Apple, and IBM thank you mr prezzy.

    It’s imperative that we end these punk who come up with ideas, get patents, show big companies their ideas, then have the audacity to sue when they get ripped off (e.g., i4i). Probably not good for fairness or rule of law, but who cares about that stuff when an opportunity to steal like this comes along.

  210. This functional claiming business is just another attack of the black hearts. One skilled in the art knows the scope of the claims. The problem is more the Obamas (read liberal arts trained lawyer) who contrues the claims.

  211. Actually, it is pretty bold to be telling the PTO how to train their examiners and what to do to “fix” the system.

  212. Are we to understand that examiners are not already educated about the product and process implications of 35 USC 112(6)?

    There is no scope for tightening or relaxing functional claiming. It is provided for by law. A functional claim is elementary to detect, and when this has been done the examiner needs to check basis in the specification and form a view of the true ambit of the claim. None of this is news.

    Another legislative initiative in the direction of applying existing law. It gives the appearance at least of doing something at least in part allegedly effective.

  213. Glossary? Just add to the cost of writing a patent and will tend to change nothing other than give people like 6 excuses to reject to get points andclog the system.

  214. “”‘compiling’ is defined as transforming high-level instructions into machine language.””

    Transforming or translating?

  215. anon: as you might say, the “usual suspects” from the academic world when it comes to such blather.

  216. More malarkey on so-called “patent abuse,” now from the White House. Again, has all the large paw prints of the so-called Coalition for Patent Fairness & Co. So much for expecting this administration encouraging innovation from small American businesses.

  217. There was a semi-recent thread touching on a de facto ‘use’ requirement – and how asinine that was.

    I think it was the SHIELD thread, but don’t have time to verify now.

  218. > 2. Tightening Functional Claiming. The PTO will provide new targeted training to its examiners on scrutiny of functional claims and will, over the next six months develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field.

    I once had an examiner object to the claim term “data store” as not having a clear definition in the field of computing.

    By a bizarre happenstance, that case actually had a claim term glossary, and I overcame the objection by pointing to a single paragraph of the glossary reading: “‘Data store’ is defined to mean ‘an area of memory where data is stored.”

    I suppose that’s where this recommendation will take us. For any case involving functional claiming, we’ll staple a 50-page glossary onto the back, with broad definitions like “‘processing’ is defined as performing a mathematical calculation on a processor,” and “‘compiling’ is defined as transforming high-level instructions into machine language.”

    Will it improve patent quality? Not one bit. It will simply give the USPTO the superficial appearance of having “cracked down” on patent quality.

    I’d like to think it would also satisfy critics of patent claims as being “vague,” but most of those people don’t actually read or understand claims, anyway.

    Last weeekend’s NPR expose (“When Patents Attack… Part Two”) concluded with a shocking testimonial/anecdote about a patent for “a system for remotely monitoring physiological signals.” Neither the speaker nor anyone at NPR seemed to understand that this guy had only read the claim preamble. That was one of three instances in NPR’s podcasts involving the same basic error in understanding the patent system.

  219. Where does this come from? I did not see it in the White House fact sheet linked to above:
    “and push for new legislation that will attempt to block companies from asserting their patents unless they are also manufacturing a product based upon the patented design.”

  220. They need to be careful what they ask for. These efforts may inhibit economic expansion created by new business models…such as buying patents to actually use them rather than let them gather dust pinned to the wall.

  221. “The report generally takes the viewpoint that Patent Assertion Entities are bad for the US Economy and makes the bold claim that, in the past year PAE’s have threatened “over 100,000 companies with patent infringement.”

    Would someone post a link debunking this nonsense.

  222. This certain legal issues for big industry should dealt with carefully. No matter how many laws or executive orders are made will make no sense if companies keep imitating each other.

  223. although courts generally find that patent litigators are the most well-prepared and honorable of any that they see in court.

    Audacious troll-friend you.

  224. The bulk of the report that identifies the “problem” is based upon the work of professor Colleen Chien (Santa Clara); Jim Bessen & Mike Meurer (BU); Mark Lemley (Stanford) and Michele Boldrin (WUSTL) & David K. Levine (WUSTL).

    No kidding.

    Never mind the fact that most of the predicate analysis has been debunked.

    Triumph of the soundbyte. Can you say “Agency Capture” ?

Comments are closed.