Is “Insolubly Ambiguous” the Correct Standard for Indefiniteness?

By Dennis Crouch

Nautilus v. Biosig Inst. (on petition for writ of certiorari 2013)

A major focus of attention in the current arena of patent reform is on the notice function of patent claims and, in particularly, the standard for definiteness. Most of the time, the scope of a patent's coverage is only known once a district court construes those claims. And, in many cases, that knowledge is really delayed until Federal Circuit review. A substantial portion of the blame in this area can be placed on patentees who intentionally draft claims of ambiguous scope. Of course, the Supreme Court has long recognized the policy benefits of allowing ambiguity in patent coverage. (See, Doctrine of Equivalents). Most technology users would prefer to understand the scope of claims before litigation and use that information to decide whether to obtain a license. However, the ambiguity (in combination with other factors) lead to the common practice of holding-out until a court construes the claims.

For indefinite claims, the statutory guidelines come from 35 U.S.C. § 112(b) that requires claims that "particularly point[] out and distinctly claim[] the subject matter which the inventor … regards as the invention." The doctrine of indefiniteness finds its statutory support from §112(b). And, when a claim is indefinite it is both unpatentable and invalid.

Once a patent issues, it tends to be quite difficult to invalidate that patent on indefiniteness grounds. The difficulty begins with the statutory presumption of validity under § 282 that requires clear and convincing evidence of invalidity. That difficulty continues with the standard for indefiniteness itself. In particular, the Federal Circuit has required that invalidity by indefiniteness requires proof that the challenged claim is ambiguous in a way that is "insoluble." In Biosig, the Federal Circuit similarly held that indefiniteness of an issued claim can only be found "if reasonable efforts at claim construction result in a definition that does not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim."

In a new petition, John Vandenberg's team at Klarquist Sparkman has asked the Supreme Court to reconsider the Federal Circuit's standard on this point. Nautilus presents the following questions:

1. Does the Federal Circuit's acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not "insoluble" by a court—defeat the statutory requirement of particular and distinct patent claiming?

2. Does the presumption of validity dilute the requirement of particular and distinct patent claiming?

Many of these same issues have been previously addressed by the Supreme Court in pre-1952 decisions. See, for example, United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942). In Union Carbide, the court wrote that:

The statutory requirement of particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise. A zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field. Moreover, the claims must be reasonably clear-cut to enable courts to determine whether novelty and invention are genuine. . . . Whether the vagueness of the claim has its source in the language employed or in the somewhat indeterminate character of the advance claimed to have been made in the art is not material. An invention must be capable of accurate definition, and it must be accurately defined, to be patentable.

Interpreting the precursor to Section 112(b), 35 U.S.C. § 33 (1932). The old § 33 included the parallel requirement of claims that "particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery."

In the Union Carbide, the court's problem with the claims was what it called functionality, writing: [T]he claims are but inaccurate suggestions of the functions of the product, and fall afoul of the rule that a patentee may not broaden his claims by describing the product in terms of function. Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245; General Electric Co. v. Wabash Corp., 304 U.S. 371. The particular claims at issue in Union Carbide are as follows:

1. Substantially pure carbon black in the form of commercially uniform, comparatively small, rounded, smooth aggregates having a spongy porous interior.

2. As an article of manufacture, a pellet of approximately one sixteenth of any inch in diameter and, formed-of a porous mass of substantially pure carbon black.

See U.S. Patent No. 1,889,429. Read the claims again and look for the functional limitations, then read the Supreme Court's decision.

In General Electric Co. v. Wabash Corp., 304 U.S. 364 (1938), the Supreme Court similarly took issue with the indefiniteness of issued patent claims.

The limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others, and the assurance that the subject of the patent will be dedicated ultimately to the public. The statute seeks to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their rights. The inventor must inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.

. . . . Patentees may reasonably anticipate that claimed inventions, improvements, and discoveries, turning on points so refined as the granular structure of products, require precise descriptions of the new characteristic for which protection is sought. In a limited field, the variant must be clearly defined.

GE v. Wabash.

Reaching further back to the 19th century, the court wrote in Merrill v. Yeomans, 94 U.S. 568 (1876) that a patentee has no excuse for ambiguous or vague descriptions.

The growth of the patent system in the last quarter of a century in this country has reached a stage in its progress where the variety and magnitude of the interests involved require accuracy, precision, and care in the preparation of all the papers on which the patent is founded. It is no longer a scarcely recognized principle, struggling for a foothold, but it is an organized system, with well-settled rules, supporting itself at once by its utility, and by the wealth which it creates and commands. The developed and improved condition of the patent law, and of the principles which govern the exclusive rights conferred by it, leave no excuse for ambiguous language or vague descriptions. The public should not be deprived of rights supposed to belong to it, without being clearly told what it is that limits these rights. The genius of the inventor, constantly making improvements in existing patents,—a process which gives to the patent system its greatest value,—should not be restrained by vague and indefinite descriptions of claims in existing patents from the salutary and necessary right of improving on that which has already been invented. It seems to us that nothing can be more just and fair, both to the patentee and to the public, than that the former should understand, and correctly describe, just what he has invented, and for what he claims a patent.

Merrill (1876). These cases are in obvious tension with the Federal Circuit's current standard. However, there remains only a small chance that the Supreme Court will hear the case.

One key to the petition here is the argument that the Federal Circuit made it triply difficult to invalidate a claim on indefiniteness ground by (1) using the presumption of validity of § 282 to create stringent elements for the invalidity defense and then (2) also requiring clear-and-convincing evidence to prove those elements; all while (3) regularly ignoring the reality that indefiniteness is a question of law (as are patentable subject matter and obviousness).

178 thoughts on “Is “Insolubly Ambiguous” the Correct Standard for Indefiniteness?

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  2. One has to point out that the Feds jurisprudence addresses only “distinct” and ignores “particular.” The latter goes, I think, to the original cases that simply described embodiments with no effort to distinguish old from new. That has a counterpart today when we draft claims with a lot of prior art in the body of the claim. I would think that we should be putting old elements into a preamble like the Europeans.

      1. The language was first introduced in 1836, in the Act, at Section 6:”…and shall particular specify and point out the part, improvement, or combination, which he claims as his own invention or discovery”This was modified in 1870 to read”…and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery”It would seem that the change from 1836 to 1870 only relates to a separate requirement for claims but does not otherwise modify the requirement of claims to particular the specify and point out the part, improvement, or combination which he claims as his own invention or discovery.Walker explained “particularity” as follows:”The necessary degree of particularity in claims may be reached in various modes. Where the invention is an entire machine, the claim is sufficient if it is clearly co-extensive with the machine; and where the invention is a part of a machine or manufacture, that part must be clearly indicated in the claim which covers it: Claims for combinations of a plurality of the described devices, but less than all of them, should specify those devices unmistakably, and should clearly indicate that it is the specified combination that is claimed. But though this degree of obvious certainty is highly desirable in a combination claim, it is not absolutely necessary to the validity of such an one; for a claim may declare that it covers so much of the described mechanism as effects a particular specified result, without specifying those parts themselves.”Walker on Patents, Section 176However, in Section 116, Walker had this to say as well, “It is a practice of many solicitors of patents to write claims in vague phraseology, with an idea that vagueness is elasticity, and that elasticity is excellence. Such a practice is neither honest nor expedient. It is not honest, because it is often intended, and always adapted to deceive the public, and to lead individuals into unintended infringement. It is not expedient, because dishonesty is bad policy in matters of patents, as in all other human affairs, and because vagueness of claims may make a patent void which would otherwise be valid.”

        1. So then even Walker noticed that ‘particularity’ is not the best word to describe the ‘elasticity’ issue that existed even in Walker’s day.This rather defeats your attempt to use the word as a statutory ‘hook.’

  3. You will note, 6, that Tarczy-Hornoch was step 1 in Rich’s endeavor to allow claims to computer programs.  He, after all, was the very first patent attorney ever appointed to a Circuit Court and he was on a mission.
     

  4. 6, good post, and on point about pontification.  Did you read the dissent?  It questioned the wisdom if not the right of Rich to overturn precedent that had been followed 70 years. 
     
    Now recall the new Federal Circuit judge, Taranto, who questioned (in the case involving the issue of review of claim construction orders) whether the Feds should overturn a prior en banc case.  Stare decisis is a rule of law. 

     
     
     

  5. A very interesting case Ned, you should fav it while you have it up. Should have never happened. Had that rule remained in effect today then we would have much higher quality patents, and much less consternation over the patent system as a whole.

    I like the claim by Wyeth: “It is claimed as new, to cut ice of a uniform size, by means of an apparatus worked by any other power than human. The invention of this art, as well as the particular method of the application of the principle, are claimed by * * * Wyeth.”

    People in the software arts facing the mental steps doctrine as a problem to patent eligibility should give this limitation a try: “by means of an apparatus worked by any other power than human”. Lolololol. Course Wyeth lost on what sounds like preemption. In 1840 no less.

    “Justice Story, sitting on circuit, held the claimed matter “unmaintainable” in point of law and a patent, granted for such, void as for an abstract principle and broader than the invention. ”

    Frankly it does seem like that app before Rich might have hit 101 preemption though I’m not going to go through the whole rigamarole.

    Here’s a good quote for you though Ned, perhaps you’ll keep it in mind the next time you’re all “morse was 112v’d to death”.

    “The “true ground” of that decision, the opinion points out, was that Morse’s eighth claim was directed to a principle, not a process, a claim to a power of nature itself by one who had only first employed that power.”

    One other small historical note which is not lost on me in reading cases from this era was that these things happened right AFTER the post WWII explosion in innovation. Which seems to tell me that with those sorts of rules in place actual innovation tends to explode. Small wonder though, since such rules encourage designing around, and abolishing those rules allows for the patentee to deny you even the opportunity to design around by having captured the function itself divorced from the specifics of how the patentee accomplished it. But hey, Judge Rich is a generous guy and so sees fit to block the opportunity for folks to design around.

    “He urges, in rebuttal, that no specific prohibition is required to reject a claim as embracing non-statutory subject matter, and that there has been no shift in Congressional policy.”

    ^A sound argument, though he could simply say that such a rejection is a 101 rejection.

    “Our present review of the major precedents has persuaded us that the decisions of the Supreme Court have not required the rejection of process claims merely because the process apparently could be carried out only with the disclosed apparatus.”

    ^Very interesting. And apparently this has held until modern times. Perhaps it is time for the supremes to go ahead and chime in. I think the issue is rather ripe.

    “Even so, we would leave it undisturbed were it not the product of an essentially illogical distinction unwarranted by, and at odds with, the basic purposes of the patent system and productive of a range of undesirable results from the harshly inequitable to the silly.”

    An interesting commentary on a rule that exists specifically so that people can design around what the patentee did. Aka to encourage innovation.

    “For if the operation performed by the machine is new in reference to the object upon which it is employed, a new process has been invented; and this is no less true if the machine or instrument employed is new than if it were old, or if the process can be performed in no other known way than by this particular machine”

    Looks like ultimately the blame partially lies with this patent judge at the office.

    “We feel that the basic rationale of the patent system demands the upholding of properly drawn claims for new, useful, and unobvious processes, regardless of whether the inventor has invented one, two, or more machines to carry them out.”

    And surely it does, but that doesn’t mean that you divorce the function from the specifics of how the applicant accomplished it, either through steps or machine.

    “Exceptional treatment for this narrow class of processes is, pro tanto, inconsistent with the broad goal of the patent system, the promotion of the useful arts, in that it necessarily denies to certain inventors the exclusive rights to their discoveries and thus defeats the intent which must be presumed of Congress in enacting the Patent Statutes.”

    Hardly, it simply means they need to claim how they accomplished the function rather than the function itself.

    “We think there is no merit in the suggestion that § 112 of the Patent Act of 1952 sanctions such a practice.”

    Mmmmm, maybe. But 101 will suffice, or as the good commissioner noted, not statutory section even need be required to ensure that the invention before them falls into a statutory category. 101 also comes to mind.

    “The “mere function of the machine” cases, however, have clearly regarded the question as whether the processes at bar were within the statutory classes of invention. ”

    A good way of thinking about it.

    “Furthermore, perpetuation of this doctrine only invites inequitable consequences. ”

    I like how J. Rich says that allowing people to patent functions invites inequitable consequences. His fundamental error in judgement is thus left to future generations to sort out. Inequitable indeed.

    “The essential difficulty is in the fact that, although at the time of the application only one apparatus may be known which is capable of carrying out the process, others may become available later. In which case, of course, the inventor may be cheated of his invention.”

    Hardly, had he bothered to claim his actual invention and they used that he isn’t cheated at all.

    “This case illustrates one of the peculiarities of the doctrine. Several method claims, generic to those rejected, have been allowed, simply because they admit of operation by two sets of apparatus. This would suggest that any two process claims, each unpatentable under the “function of the apparatus” theory could be merged into a patentable claim. We see no interest of the Patent System well served by such a practice.”

    Mmmmm, but if he invented the two then he’s starting down the road of showing possession of having all means of performing the function. In which case I see little difficulty in creating an exception to the rule at issue in that case.

    Thanks again for the link to part of J. Rich’s pontification on how people really need to be able to claim just the function and where he got this idea. Some random ta rd ex-examiner, his failure to understand a simple statute, and an absurd notion of just what equity is (lulz, I would almost bet he was part of the reason why injunctions issued so often pre-ebay). Though on the one hand I will note that the rule at issue in that case was strangely designed. Which is the only saving grace for this travesty of pontification.

  6. Night, most machine processes can be claims as apparatus using means plus function.  Rich knew this.  So long as means plus function were allowed by statute, machine processes should also be eligible.

     
    I think he was right on this one.
     

  7. Yes, Ned, thank you. That is a good case to read. And the function of a machine is a very similar issue as with information processing and circuits.

    The problem is the massive number of solutions to known problems. It is a good thing and should be understood by the court and accommodated.

  8. And I should add that you cannot simply command from on high for people to do “better searches” and expect it to magically happen. That’s what primaries already try to do all too often and you see the results. Examiners already do give an honest effort into trying to do a good search (believe me, at the outset of the case you want nothing more than a solid 102 to appear right at the top of your search). Though a lot of them are simply bad at it. The search training around here doesn’t really help much.

  9. You just ignored what I said. A database being revolutionary in 1983 is funny? How so? I would push it back a bit, though, to late 1970′s.

    Again, you are just ranting on MM. The point is that a database is structure and that if you go down a level to the database then it is described functionally. I am not going to repeat everything I just type before that you ignored.

    So, since you are just ranting on not addressing my points, I will take your response as dust kicking, which is your forte.

  10. Yeah the move I’ve been here I note that such behavior is a direct result of the count system. If you want to change the desire to churn, you must change the incentives. You cannot simply command from on high that people must act against their own self-interest in such situations and expect it to happen all that often. You just can’t do it. There is exists a slight outside possibility of enforcing the command by constant rigorous spe review, if the spe’s themselves were all on board with the project, but they don’t have time to do that anyway. He ll, most of their schedule is meetings about training initiatives and office stats etc.

  11. for an old device

    LOL – the vapid “House” argument.

    Try Alappat and the fact that programming gives you a new machine.

  12. or is it “not lacking written description support” — “overclaiming” is an “Insolubly Ambiguous” word that we should not use on this board.

  13. A database sounds so funtional now perhaps, but 30 years ago it was revolutionary.

    Databases were “revolutionary” in 1983? That’s pretty funny.

    Unfortunately, we’re not discussing a claim to “A collection of organized information, wherein said organized information is stored on a computer.” Was such a claim ever granted? I doubt it and I hope not.

    No, we’re talking about claims being pursued or granted 3 decades down the road, reciting collections of organized information “on a computer” “wherein the information is available real estate” and equally ridiculous j*nk. Oh wait, it’s not “a computer”, it’s an “eBook” or a “portable handheld communication device” or some other worthless distinction.

    I don’t think you have a real interest in understanding this

    I think you’re head is so far up your a** that nobody cares what you think.

  14. “Better” means different things to different people. To me, it means better searches to start, and then a more rigorous application of the law (meaning it must first be understood) to the facts to winnow the wheat from the chaff early in prosecution. To the PTO, it seems to mean “churn churn churn until they either get sufficiently tired and discouraged to accept a worthless claim, or we get reversed on appeal and thus are covered to allow the case without being dinged by QA”.

  15. Realize Ned that the common law ability to set ‘invention’ was revoked in 1952.

    Try to understand the many threads of what I have attempted to teach you.

    The old ‘way of the SC’ was on an anti-patent path that Congress simply put a stop to. That old way was thrown out by the constitutionally sanctioned branch of the government empowered to write patent law: Congress.

    All around you today what one sees is the dust-kicking from the anti-patent people trying to resurrect the failed ploys of the past from the era of ‘patents are EV1L.’ Note in particular that the brief that this thread is written about does not use a single citation from after 1952 to support its view of how it wants the law to be interpreted on the key issue of ‘functional language.’ They wish to erase the law as it stands from the 1952 Act. They wish an unconstitutional shortcut of judicial law writing to achieve what Congress has not moved to do. Beware the unintended consequences of ‘giving’ this power back to the Court.

  16. Your animosity towards Judge Rich blinds you to what the law is, Ned.

    You need to read and understand the nuances here, otherwise you will remain confused.

  17. 6, the effort of patent attorneys to claim broadly, to claim the principle and not the embodiments, has been there since the beginning of claims. Cf., Wyeth v. Stone, cited by both Morse and by Rich in Tarczy-Hornoch.

    The Supreme Court has always been on one side of this issue. The Bar on the other. Rich was always on the side of the bar, having once been one of its movers and shakers.

  18. Note too how the court labels the SC version of “method” as some type of sub-category of the ‘hard’ categories: dictum.

    Need I present the “how to not misread case law based on dictum” source that you yourself presented in our Bilski discussion?

    Need I emphasize (yet again) that “method” IS NOT a sub -category of patent eligibility, but a full category in its own right – per the plain words of Congress?

    Learn, my man – learn.

  19. Ned,

    Do you read the cases that you provide?

    This one in particular you should study – noting the particular bias of yours that I have set out for you to correct: your ‘Story’ bias against method patents:

      The expression “function of an apparatus”[2] is our legacy of 19th century controversy over the patentability of processes

    Try to learn (still).

  20. Ned – you quite miss the point as your statement at 10:33 applies no matter what he language used – language that uses functionality or otherwise.

  21. 6, Claims will always have multiple reasonable interpretations if the terms are not defined in the specification and are not used in a very consistent manner between the spec and the claims, which is rarely the case.

    Thus, most claims will have multiple reasonable interpretations. Most will be invalid under this rule. But, I think this is an ideal we should go for, but maybe not retroactively.

  22. 6, and despite anon, the same claim terms can and do receive multiple inconsistent constructions if construed by more than one court or the ITC — and certainly they receive another construction in the PTO.

    Two people with different interests will almost always construe patent claims differently given the way claims are drafted with intended ambiguity.

  23. 6, Perkins Glue and Wabash were cited for authority in the “overruled” Halliburton. The concepts of functionality and indefiniteness are linked.

    I think the Supremes are avoiding the issue because they do not want to deal with functionality because of Halliburton and the reaction it received by the bar.

  24. As I noted to Malcolm, I would prefer better examination.

    (I think that you mean something a little different, but thought I would just point out that the real problem that needs to be addressed is poor examination)

  25. At first I thought I had blundered into revealing to an examiner the secret for not getting routinely reversed by the Board. But then I realized that 6, being an examiner, would ignore the advice to “look it up” even if came from a burning bush. So we’re good.

  26. That’s just it, NWPA – Malcolm does understand the difference (as witnessed by his own volunteered admissions like knowing what the controlling law is in regards to the exceptions to the printed matter doctrine and that ‘configured to’ is structural language).

    Malcolm’s problem instead is that despite knowing this, he insists on pursuing his agenda and can only do so by being intellectually dishonest.

    That’s the reason why I delight so much in shoving his nose into his own CRP.

    Surely you have noticed that Malcolm refuses to actually discuss these issues in ANY substantive manner – and on the extremely rare occasion that he so attempts he merely adds another great quote that I can use against him.

    Surely you recognize that he refuses to acknowledge the valid points raised against him and instead ploys the same old canards again and again (in the immediate case, he is employing the vapid’ ‘House’ argument that the computer is the same old computer when he knows full well that in order to even use the software, the ‘old’ computer must first be configured with the software and that very action means that the ‘old’ computer is now a new machine. This is the lesson from the Grand Hall experiment and every time those words are brought up to remind him of this very basic concept, Malcolm pulls out his vapid, feigned ignorance Vinnie Barbarino script of “Huh?.”

    He.
    F001s.
    No one.

  27. He’s an examiner, what does he know about looking up information in order to understand what someone says?

    (lol, you have to love the irony)

  28. And it takes one very simple hypothetical to understand that.

    LOL – did you get Vivika M.’s permission to trot out your well-burnt pet ‘theory’ yet again?

    And you still have not squared your well-burnt pet ‘theory’ with the facts that perfectly eligible claims can have elements that are thoughts (you keep on slipping to your strawman of a claim TOTALLY in the mind) or that perfectly eligible claims can be composed of ALL [oldsteps]. Your pet ‘theory’ remains DOA until you can do so.

    And you still have not squared Prometheus with the precedent cases most on point that that Prometheus decision stated it was not changing. YOU tossed your pet theory on the bonfire with your your first (and only) substantive attempt, and when I invited you to save your pet theory with those ‘vaunted’ English as a first language skills,

    You.
    Ran.
    Away.

    LOL – it is memorialized in the archives in plain black and white for all to see.

  29. LOL – Have fun with the Amish 6, as it appears that that is your measure of everyday public relevance, while to everyone else in the modern era software is extremely relevant.

    I LOVE when 6 proves my point for me and does not even realize it.

    What.
    An.
    Amateur.

  30. (sigh)

    6, your reading skills were never your strong suit – try again to read what I actually wrote. Did I say that Alappat was a structure or did I say that Alappat was an answer?

    Clearly, you do not yet understand that answer, and you think your question has not been answered when in fact it has. And once again, this is a “you” problem.

  31. Think of it like whitewater rafting – the shallow parts of Malcolm and 6 generate the most froth as I quickly run over them.

    Learn to see the fun that they provide.

  32. >>Is it to reward people who imagine new “functions” >>for old devices and then simply recite those >>functions?

    This sentence, MM, captures you cynicism and contempt for information processing. It also captures your ignorance.

    All the function are claimed as functions, but based on previously invented functions. It is the ladder of abstraction again. A database sounds so funtional now perhaps, but 30 years ago it was revolutionary. And, the database was defined by functions such search and storing that each have so many ways to be implemented that are known to a PHOSITA.

    But, I don’t think you have a real interest in understanding this or anything else about information processing.

  33. One interesting thing about MM anon is that he is on central time. I know this from the posting time when he post in the middle of my posts.

  34. You do not care about the technology because in the technology the functional descriptions are how the people in the field communicate sets of known solutions. You do not care about the law because the law has a large line of cases and reasoning dealing with this functional shorthand.

    Without functional claiming it is impossible to convey the invention without reciting huge parts already known in the art.

    Again, we have destructive forces. Rather than the patent application teaching what is new, the agenda pushers are changing the patent application to have to represent everything that the applicant has to defend their patent or patent application.

  35. MM, your goal is to so muddle the issues to drown out the truth. My point which you did not address is that functional claiming has a long history in the SCOTUS and people like Lemley that are misrepresenting or ignoring that history are doing so to push their agenda–find a nuclear bomb to take out information processing.

    So, I am not going to write a chapter on functional claiming to re-write Lemley here. I made it very clear above what the line cases discusses–that functional claiming has come to denote (I said connote incorrectly) structure as the set of solutions that are readily available to a PHOSITA. And, the reasons were that shorthand is used is because the number of solutions has grown so large that it is impossible to specify them in a patent application.

    That is the nutshell. To ignore that line of cases is unethical. You did not address this point, MM.

    You threw dirt as you do.

  36. “And this fascination of yours of returning patent law to a ‘backwater’ is a bit odd. What point exactly are you trying to make there? That you want progress to mirror some backwater?”

    The point is that it would be just fine returned to being a legal backwater of little relevance to the everyday public who aren’t involved in the useful arts and would be available to them if they decide to be, and not until.

  37. “Must I hold your hand across the board, my little clueless amateur?”

    When it comes to your made up phrases that you’re obsessed with using all the time, yes. I’m afeared I can’t keep up with them all.

  38. never hesitated to whine, whimper, wheedle

    LOL – there goes Malcolm (again) – the site’s biggest whiner, whimperer and wheedler – bar none.

  39. And we all know why

    Um, because it’s been asked and answered (even with Malcolm volunteering the answer that ‘configured to’ is structural).

    LOL – as they say, svcks to be you.

  40. LOL

    Anytime you want to exchange substantive posts, Malcolm (you know, with real law like Alappat, or the controlling law regarding the exception to the printed matter doctrine, or even if you want to discuss Myriad and who was right and why, feel free to stop your accuse-others-bl0gtr011ing and step up to the plate.

    Pardon me as I do not hold my breath (and look up the burn unit emergency number for you – just in case).

  41. 6: if you guys all of a sudden reverse course and start telling me what these mysterious structures are in every case, I have no problem with overlooking the use of functional language

    Word. But that’s not going to happen. And we all know why.

  42. Alappat. It’s all the answer you need.

    Patent Jeebus has spoken! If you don’t see why that’s the answer or you can’t accept the answer, it’s your problem! Just bow down and take it. And don’t expect anything more. Patent Jeebus has many many insults to spew, and there’s only 24 hours in a day.

  43. Major Major’s father was a sober God-fearing man whose idea of a good joke was to lie about his age. He was a longlimbed “independent inventor”, a God-fearing, freedom-loving, law-abiding rugged individualist who held that federal handouts and coddling of anyone but “small inventors” was creeping socialism. He advocated thrift and hard work and disapproved of loose women who turned him down. His specialty was software, and he made a good thing out of not writing any. He could write patent applications faster than anyone could write software and the government didn’t care. The more softwre he did not write, the more patents the government gave him, and he spent every penny he didn’t earn writing software to increase the number of applications he wrote and filed. Major Major’s father worked without rest at not writing any software. On long winter evenings he remained indoors watching Fox News and trolling “anti-patent” blogs, and he sprang out of bed at the crack of noon every day just to make certain that he wouldn’t write any software that morning. He invested in patent applications wisely and soon was not writing more software than any other man in the county. Neighbors sought him out for advice on all subjects, for he had made much money and was therefore wise. “As ye sow, so shall ye reap,” he counseled one and all, and everyone said, “Amen.”

    Major Major’s father was an outspoken champion of economy in government, provided it did not interfere with the sacred duty of government to ensure that inventors like him were paid as much as they could get for software that other people would write. He was a proud and independent man who was opposed to unemployment insurance and never hesitated to whine, whimper, wheedle and extort for as much as he could get from whomever he could.

    With apologies to Joseph Heller.

  44. I given you an answer plenty of times 6: Alappat.

    It’s all the answer you need.

    You do need to understand and accept it though. That’s also a “you” problem.

  45. Authorship? LOL – I thought you anti-software kind believed that software is math.

    Which is it?

    (and then please join Malcolm in remedial Intellectual Property Class wherein the purpose of patents and the purpose of copyrights will be discussed)

    And this fascination of yours of returning patent law to a ‘backwater’ is a bit odd. What point exactly are you trying to make there? That you want progress to mirror some backwater?

    Further, your understanding of the Doctrine of Equivalents is, um, a bit sparse (to be gentle on you). You might want to brush up on that before you commit to any ‘reasoned’ viewpoint.

    Lastly, what you view as Court versus courts and the point of this thread (the modern era and language that includes functional descriptions) speaks for itself (and it does not speak highly of your observational skills).

    Pay attention.

  46. “you seriously don’t think that the structures involved in the software arts are not readily understood?”

    Well I’ll tell you this much anon, when I ask someone what structures are covered by a functional term relating to nails, screws and other fastening items, they can tell me off the top of their head. When I ask someone what structures are covered by some functional language, I get a blank look and 0 answers. I’ve never once had an answer. And I’ve asked 50 times or more by now in different cases. Not one answer. Yet it is supposedly “known” to invisible men (and apparently only invisible men because real men don’t know anything about it apparently) who supposedly only have knowledge of old things. I mean, it could be that people are just holding out on me, but the numbers of people holding out on me are getting rather large. You happen to be within that pool of people. I mean, if you guys all of a sudden reverse course and start telling me what these mysterious structures are in every case, I have no problem with overlooking the use of functional language.

  47. “Not sure what that comment alludes to 6″

    It alludes to the fact that Judge Rich and the USSC don’t seem to be on the same page re some functional claiming.

    “The topic here is not about any SC views.”

    I thought it was “the courts” in general, and including the USSC.

    See?

    “That functional claims arose around the early 20th century because the courts”

    ^”the courts”.

    I mean I think the USSC is a “court”.

    “The context there is that such design arounds are NOT of a separately innovative nature”

    Well then you should have just said that. I will be happy to disagree with you there, on that separate issue. I feel like they are. And indeed, over in the vast majority, if not all, of the useful arts, they indeed are. What you’re referring to as not be supposedly “separately innovative in nature” is exactly the kind of sht that engineers do when innovating. In most of the useful arts anyway. In others arts that are outside of the useful arts, like software authorship, of course it isn’t separately innovative, there was no innovation present to begin with. It was just somebody deciding to tell and old machine to behave differently within it’s already existing capabilities. Not innovative. At all. Sorry, it just isn’t. You draw the line, arbitrarily, in such discussions at this being the line of innovation, and then no other being innovation. Sorry bro, I disagree, that’s not how it works in other arts, and I see no reason for it to work that way here, other than to line attorney’s pockets and allow for generous trollin.

    “You really ought to think”

    You really ought to go here the old people talk about just how much of a legal backwater the patent system truly was before the federal circuit got hold of it. You like Newman, and you may even like Prost. Ask them the next time you see them. Or look up their lighted taper events from the PTOS. They’ll tell you all about it. About how most attorneys didn’t even want to go into IP because that wasn’t where the “action” was.

    You know this to be true, as you daily rely on the federal circuit having rewritten patent law, if you truly are a software patent attorney as you claim. Without the federal circuit enabling the patent system to become what it is today it wouldn’t be nearly so bloated.

    “(and I note that you in addition to Malcolm refused to put your money where your mouth is in abandoning the use of all technology impacted by software)”

    How is abstaining from using machines that have been instructed to perform an intended use through the authorship of software putting my “money where my mouth is”? My money, and my mouth, are precisely at the same point, stating, and being on, that software authorship is not innovation. Period. It’s that simple, and my money and my mouth are both aligned perfectly.

    • makes up some nonsense

    Unless of course, it is not nonsense and is available in black and white in the archives – such that Malcolm’s spin simply has no effect.

    LOL – as they say, Malcolm, svcks to be you.

  48. The “Carroll” nonsense is the typical Malcolm-Accuse-Others-Of-That-Which-He-Does and the Alice in Wonderland author.

    Like I’ve said before: it’s beyond parody. Tr0 llb0y is certifiable.

  49. Apparently, Malcolm, your level of ‘arguments’ fully supports the view I have of those ‘arguments.’

    Want better? that would be up to you.

    Oven mitts?

  50. “Will he accuse me of being racist?”

    LOL – That’s a “you” problem there Malcolm. My statements to what you said

    Exactly what did I say, Tr0 llb0y? Oh right: this is where you pretend that you get to just accuse people of being prejudiced against blacks but you don’t have to show any evidence of it. You just get to imagine that it exists. And that’s “their problem.”

    Fun game, Tr0 llb0y.

    • I could just hold his hand through some of this sht and how it plays out in real life

    I see Malcolm is sharing his little pills with his lemming friend.

    How very sweet. Next up for the both: the Foundign Fathers (what were they thinking)?

    LOL

  51. he has voluntarily admitted that ‘configured to’ is structural language.

    Ah, there he goes again. When all else fails, Tr0 llb0y simply makes up some nonsense about some imaginary “agenda-destroying” statement that his “enemy” made. Great fun.

    Of course, everyone also knows that Tr0 llb0y voluntarily admitted that he took pictures of kids at the YMCA pool while he hid behind a big beach ball, in violation of his probation.

    It really is a fun game, Tr0 llb0y. I trust you’ll start the next round, as always? Say hi to Gene for me, by the way. He really loves your for this, I’m sure. You get to play the perpetual insult-spewing blogtr0ll here and you also get to be his favorite pet over at IP Witchdoctor.

  52. 6,

    The “Carroll” nonsense is the typical Malcolm-Accuse-Others-Of-That-Which-He-Does and the Alice in Wonderland author.

    Must I hold your hand across the board, my little clueless amateur?

  53. Will he accuse me of being racist?

    LOL – That’s a “you” problem there Malcolm. My statements to what you said and your actions supporting 6 need to be owned by you.

  54. “stop believing that everything Judge Rich said is some sort of gospel from the mountaintop.”

    But dude, Judge Rich obviously didn’t write all that stuff that he said on the tablets he brought down with him from the mountaintop. It was the Lawd!

    “The guy was dead wrong or simply confused about the role of prior art in evaluating a claim for subject-matter eligiblity”

    Sometimes I really do wish the man was alive so I could just hold his hand through some of this sht and how it plays out in real life.

  55. that is not idi0cy that you see. It is the plain and obvious hyprocisy

    Apparently Tr0 llb0y believes that if you oppose j*nk software patents that you can not use software without being a “hypocrite.”

    That’s just about the most re*trded thing I’ve ever heard but I really do hope Tr0 llb0y and Company run with that “argument” all the way to the Supreme Court.

    • that the Deener case might itself have been incorrectly decided or short-sighted.

    LOL – Oh, how very Carroll of you Malcolm (instead of bothering to read and understand the case yourself, you ask someone else to do the legwork and then provide yourself a wesal escape in case the plain words wreck you) – and if it is not in accord with your HOLY view, it must be ‘short-sighted’.

    LOL – great legal ‘reasoning’ there Malcolm (/eyeroll) – on par with “machines really do think” back in your odd corner of the universe (just not here on planet Earth).

    Address point of novelty? LOL – easy: CANARD.

    Back to your soiling efforts.

  56. they wreck your agendas

    Patent Jeebus has spoken! He wins because he says so! Bow down before his devastating “arguments”.

  57. “That’s actually a very Carroll comment to make, 6″

    Anon, if you’re going to talk in old people language, or whereever you got this “carroll” nonsense (perhaps carroll was an ex of yours?) then you’re going to need to tell us what you’re talking about.

    “The ‘law’ would need to be rewritten to suit Malcolm and would need to confirm to his view.”

    See, I’m not so sure about that anon. See, the thing is, the federal circuit is the one that “rewrote” patent law in the last few decades. All we need do is “rewrite” it back to where it was before the federal circuit got their hands on it.

  58. svcks to be you.

    Tr0 llb0y reaching ever deeper into his Magic Bag of Inults. What will he come up with next? Will he accuse me of being racist? Or will he pull out another weird non-sequitur fantasy trip?

    what is the controlling law about the exceptiosn to the printed matter doctrine?

    Oh, it was another weird non-sequitur fantasy strip. Nobody could have predicted that.

  59. point of novelty?

    Not a “canard” at all, Tr0 llb0y, in this context.

    Everyone else has figured that out. Are you going to be the last one on the block? It seems that way.

  60. You have no interest in the law or the technology.

    Right, because people who are interested in “the law or technology” must agree with you about everything.

    You think Deener contradicts my view? Tell everyone the facts in Deener, the relevant law applied by the Court in Deener, and quote the passage from Deener that you believe is responsive to my comment.

    It hslps to recognize from the beginning, of course, that the Deener case might itself have been incorrectly decided or short-sighted. Or is each and every “pro-patent” utterance in any case some kind of gospel that we need to genuflect before and never criticize?

    I’ll just say it again so you can try to directly address the point in your own words (good luck): functional gaming at the point of novelty turns turns “inventing” into a pure game of predicting what others will be able to successfully commercialize.

    Address that. use your brain and your ability to type in English and rebut that point. In your reponse, please consider the purpose of the patent system. Is it to reward people who imagine new “functions” for old devices and then simply recite those functions? Or is it the purppose to line the pocketbooks of the microscopic fraction of people in our society who are best-positioned to gamble on what desired functions others will figure out how to successfully implement in those devices and bring to market, and then grift off the work of those other people (or worse yet, simply extort the people who buy the products and use them for their intended purposes)? Or maybe a bit both? Let everyone know. We all know what the Merkin Cowboys in Texas think. What about you?

  61. LOL with Malcolm and strucutres, given that he has voluntarily admitted that ‘configured to’ is structural language.

    Mmmmm, toasty!

  62. Attempting?

    LOL – no – showing that you are using your speciality? Most definitely.

    As they say, svcks to be you.

    As to the law, what is the controlling law about the exceptiosn to the printed matter doctrine?

    What? What? Can’t hear you Malcolm, what?

  63. That’s actually a very Carroll comment

    Nobody knows what you are talking about, Tr0 llb0y. Are you engaging in some feeble attempt to ape an appropriate criticism of your own conclusory bullsh*t spewing?

    the law as it correctly stands

    LOL. More unintentional humor. Pretty soon we’re going to see Tr0 llb0y talking about “real engineers” (as opposed to the “fake” ones who disagree with him). Impossible to parody this stuff.

  64. Is “Insolubly Ambiguous” the Correct Standard for Indefiniteness?

    Of course it’s not. It’s an excuse for judicial fishing expeditions.

  65. let’s see you deal with:

    *click*

    Tr0 llb0y really likes to beat his weird strawmen. Must be something about his fear of “agraian” American.

  66. you continue to FAIL with that ‘pet theory’ of yours

    I could so easily out-argue you by using all caps and bold letters but then you’d just add caps, bold and italics, I suppose.

    the Office view on the decision

    LOL. Nobody cares about your fantasy trips, Tr0 llb0y.

  67. give up those innovations that are impacted by software

    The unbelievable idi0cy of this “argument” of yours is amusing insofar as it you continue to seriously present it. Please do not stop! Also, please continue to accuse people who disagree with you of being prejudiced against blacks or communists.

    Those are really effective “arguments”. That’s why you’ve been so successful these past several years, especially in court, in expanding the reach of patents further and further and defeating all attempts to reign them in. So turn it up to 11! That can only work better. Maybe you can get widely respected American companies like Intellectual Venturds to sign a petition in support of your awesome cause. Everyone knows you and your crew only have the best interests of the public in mind.

  68. Overclaiming is another way of saying under-enabling.

    Funny that language is like that – allowing you to use lots of different words…

  69. As for basic stuff, let’s see you deal with:

    Business methods are scientific.

    Software is a manufacture and a machine component.

    LOL.

  70. LOL – You are not one to talk about being confused about the Prometheus case, as you continue to FAIL with that ‘pet theory’ of yours under WHATEVER svckpuppet of the moment you want to use over at PatentDocs.

    Perhaps you can provide that link to the Office view on the decision? You know, for old time’s sake?

    LOL

  71. By the way, Tr0 llb0y: putting your lame insults in bold, caps or italics does not make them less insulting or more persuasive.

    They just make you like a st00pit tool.

  72. ou seriously don’t think that the structures involved in the software arts are not readily understood?

    There are no “readily understood structures” corresponding to the j*nk limitations in most computer-limited inventions. If there were, you could show them to us. But there aren’t, so you can’t.

    You were asked to do so repeatedly and you couldn’t. Nobody can.

    Instead, you want everyone to believe that “logic” has a patentable structure. Nobody believes that except for a handful of patent-fluffing jurists and a herd of “apologists” and syncophants who went off the rails years ago.

  73. Your attempts to tell me to ‘grow up’ are betrayed by your unwillingness to put your money where your mouth is.

    LOL – you want to prove your point? It is really simple Malcolm: give up those innovations that are impacted by software.

    Anything else from you is sheer hypocrisy.

  74. You really look like an amateur by panning the progress made by patents.

    Right. Because the professional thing to do is accuse anyone who disagrees with you about software patents of wanting to return America “back to its agraian roots”.

    Grow up. You’re invested in the status quo and you want to continue grifting off it to the greatest extent it’s legally permitted. Nothing else matters to you. You’ve got no evidence that granting more software patents is necessary for “better software” to be written. And you’ll never have that evidence because it’s a myth. You cling to it because it’s easy to remember and it sounds nice but it’s pure h*rsesh*t and when you strip away the glitter what you really have is an empty threat. It’s like Noonan with his shrieking that if we don’t grant patents on methods of thinking about the likelihood of disease that we’re all going to die and nobody will diagnose stuff anymore.

    It’s just hogwash, Tr0 llb0y. And yes it must be incredibly frustrating to discover that fewer and fewer people are buying it, even as Hal Wegner assembles lists of beloved corporations like “Trading Technologies” and “Colorado Technology Consultants” who want to keep the sh*t flowing for reasons that nothing to do with “progress” and everything to do with self-interest and greed.

    Best part: most of these rightwing patent t*bgger types despise the public education system at all levels and would love to dismantle it. Go figure.

  75. MM, you always soil every comment thread. I mean really. Read Deener and tell me that I have fabricated all this. The only thing you do is push an agenda. You have no interest in the law or the technology. You soil our society.

  76. Did Hal Wegner ever figure out what Prometheus was about? I recall he was pretty confused about the issues before the Supreme Court decision. And his colleague Courtenay Brinckerhoff and apparently all there roundtable friends were still confused after the decision.

    link to pharmapatentsblog.com

    Doesn’t adding words to a claim make the claim more specific? Of course, the shorter claim might not have been patentable over the prior art, but how could language that makes a claim patentable render it patent-ineligible?

    These are seasoned partners in law firms and self-proclaimed bigwigs. Apparently they live in a world without oxygen or the Internet because that issue was discussed and explained here many times. It’s simple, basic stuff. All you need to do is open the window and stop believing that everything Judge Rich said is some sort of gospel from the mountaintop. The guy was dead wrong or simply confused about the role of prior art in evaluating a claim for subject-matter eligiblity. And it takes one very simple hypothetical to understand that.

    “1. An entertainment method, comprising drinking a cup of caffeinated coffee and thinking about [novel entertaining thought].”

    We’ve got an old step of consuming a drug (patent eligible, by itself, but old) and a new step that is ineligible by itself but novel and patentable. Why is that claim not ineligible? Because it turns people who are drinking coffee into infringers when they engage in an additional act that, by itself, is ineligible for patenting.

    That’s basic stuff. So basic that even Hal Wegner should be able to understand it and communicate it to his fan base.

  77. LOL -you seriously don’t think that the structures involved in the software arts are not readily understood? That someone is waiving a little magic wand?

    Again – You not understanding this is a “you” problem.

  78. It’s only as funny Malcolm as the possibility that you will realize how two-faced you are by not putting your money where your mouth is and abstaining from all innovation driven by software.

    Please, try it. Just for a little while (like maybe twenty years).

  79. Your comment is meaningless 6. Just as meaningless as the idea that because something is described with language that dares hint at functionality, the item cannot be understood.

    There is no credibility possible with such a statement.

  80. Hal Wegner email containted a call from a wide variety of interests asking Congress NOT to attack patents containing the ubiquitous information processing innovations that characterize (and are integral to) modern day society.

    “ubiquitous information processing innovations”

    Thats pretty hilarious stuff right there, although you probably didn’t mean it to be funny. The truth just leaks out sometimes, doesn’t it? Sometimes that kind of information leaks out over a computer monitor, on a weekend, in September, upon a request from a user to refresh a web page, wherein said user is drinking a cup of coffee, wherein said coffee was brewed at said user’s home, and wherein said coffee is available for purchase online. Oh my gosh, I just “invented” another “ubiquitous computer processing innovation”.

    Promote the progress! Because Dow Chemical said so! And also because … Hal Wegner!

  81. To be clear anon, I don’t mind routine functional descriptions in arts where what structure is being portrayed is readily known, nails, screws, and what have you. It’s the modern over use of this to start claiming the NEW things in claims, especially where the scope isn’t so easily understood just from reading the term, that rankles my ar se, and would most certainly rankle the USSC’s ar se just as it has in the past.

  82. LOL – and Malcolm would reinstitute the Flash of Genius…

    LOL – next up, Malcolm attacks the Founding Fathers as not knowing much about patent law and the way that they wanted the law to be.

  83. That’s actually a very Carroll comment to make, 6.

    It points out that Malcolm has an ideological problem with the law as it correctly stands and would need to start over to reach the agenda that he wants to reach. The ‘law’ would need to be rewritten to suit Malcolm and would need to confirm to his view.

  84. In other words, whether you take issue of not is what is irrelevant and the comment itself is perfectly relevant.

    You not understanding why is a “you” problem.

  85. quite capable… to state very definitely what is claimed

    And you 6, quite miss the point that the proper language to use for such definiteness includes functional descriptions.

    Your miserliness is simply inappropriate.

  86. Guess the USSC never got the memo eh?

    Not sure what that comment alludes to 6. The topic here is not about any SC views.

    You are missing the point as well with the ‘designing around’ comment. The context there is that such design arounds are NOT of a separately innovative nature (think changing an unimportant attribute, like color for something that does not depend in any way on color). You might want to brush up on the Doctrine of Equivalents that you much too quickly brushed aside.

    LOL – legal backwater? You really ought to think through exactly why this country became the number one innovative country in the world 6 before you seek to return to the agraian roots (and I note that you in addition to Malcolm refused to put your money where your mouth is in abandoning the use of all technology impacted by software). You should also recognize the proper historical context and that the ‘patents are EV1L’ phase did not stretch back to the founding fathers, so your comment timing is simply wrong.

    You really look like an amateur by panning the progress made by patents. Each and evey item of your 4:07 comment is simply @ss backwards.

  87. “Of course, the Supreme Court has long recognized the policy benefits of protecting an inventor from the inadequacies of the English language (for example, see the Doctrine of Equivalents).”

    Well I take little issue with that sentence, but that sentence isn’t really relevant to vague or ambiguous language. The english language is quite capable, in pretty much every single case I’ve ever come across, of being used to state very definitely what is claimed, should the applicant be so inclined to use that language. A little “motivation” in the form of a strict 112 2nd req shouldn’t be all that bad. And if, just IF, there is some situation where the office and the applicant agree that there simply is no other way to claim the subject matter in a definite manner due to the limitations of the english language, then, and only then, should an exception be made.

  88. NW he functional claim became a way to say a way to perform a function that includes the set of solutions that would be readily known by a PHOSITA.

    At the point of novelty? That turns “inventing” into a pure game of predicting what others will be able to successfully commercialize.

    Does that game sound familiar? It should. It’s the sort of game that the spouses of firm chairs like to play at dinner parties. Oh right, Congress approved of that game when they got rid of the “flash of genius test”.

    Tell us another story, Gramps.

  89. It’s also a lot of dust-kicking here. While the law is the law, the point of the C&C is that the particular party must prove that the law favors them by meeting that standard.

    (this only proves the point about the limitations of language)

  90. FFFF

    Lost that comment.

    6, the sentence is clumsy, but there is a definite link.

    Try: “Of course, the Supreme Court has long recognized the policy benefits of protecting an inventor from the inadequacies of the English language (for example, see the Doctrine of Equivalents).

    Conversely, any drive to such a miserly use of precision would render the patent process worthless but for such a small amount of promotion, that you would be better off simply closing the patent office doors.

  91. J. Rich has written about this exact issue. That any claim that is not functional is easily designed around.

    Judge Rich was not a very deep thinking individual when it came to patents.

  92. The first thing I noticed wading into the brief is an attack on ALL modern day patent writing, and on engineering itself

    Let’s see the quote, Tr0 llb0y.

  93. “Isn’t there considerable confusion and/or overlap between “overclaiming” and claim “indefiniteness” in those older cases?”

    Not in the ones I’ve read.

  94. “You know what is missing from these arguments about functionality and definiteness is the complexity of technology. I am sure that J. Rich wrote about this. That functional claims arose around the early 20th century because the courts recognized that there were too many ways around a patent without allowing functional claims and that functional claims are actually a fair way—most of the time–to describe an invention.”

    Guess the USSC never got the memo eh?

    “It is intellectually dishonest not to address this issue.”

    The ease of designing around? Who says that isn’t the way the patent system isn’t supposed to operate brosefus? And whom made them king?

    Frankly it all sounds like nothing more than an attempt over the last century to expand the importance of patent law, which would otherwise still be the legal backwater it always was (and likely should have remained).

  95. “I don’t remember the case, but I know that J. Rich has written about this exact issue. That any claim that is not functional is easily designed around. So, now the anti’s are trying to simply re-write history and ignore this.”

    If that be true (which it plainly isn’t) then so much the better to encourage the designing around right?

  96. “Some 150 years ago the court discussed that without a functional claim it would be trivial to get around any patent claim. ”

    Lol wut? There are plenty of patents plenty hard to get around that have 0 functional language.

  97. “If Benson were expressly overturned as nonsense, which it is, and Lemley were disbarred, then I would be happy.”

    Why not simply ask for a million dollars? You’re much more likely to get that than your request.

  98. “all while (3) regularly ignoring the reality that indefiniteness is a question of law”

    Yeah the part 3 is what always concerned me about the whole talking about clear and convincing evidence in the indefiniteness arena. Fortunately I don’t have to deal with that nonsense standard in my day to day.

  99. “1. Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory requirement of particular and distinct patent claiming?

    2. Does the presumption of validity dilute the requirement of particular and distinct patent claiming?”

    Obviously, and nope, respectively.

    I’d really like for the supremes to go ahead and address this issue since it seems they’ve never done so and this is a major sticking point in the never ending quest to improve quality.

  100. “Of course, the Supreme Court has long recognized the policy benefits of allowing ambiguity in patent coverage. (See, Doctrine of Equivalents).”

    Lol WUT? How is ambiguity a “policy” benefit? Because of the doc of equivs? Give me a break. The two have nothing to do with one another.

  101. “Most of the time, the scope of a patent’s coverage is only known once a district court construes those claims.”

    If that’s really true that is a really sad state of affairs.

  102. Another thing about this functional claiming business is that what is interesting about Deener is that it is something like information processing. It is performing functions on the grain that produces a result. So, you see that these assembly line processing is similar to information processing and has many of the same characteristics.

    But, the sad thing is that Lemley knows this. And intentionally misrepresents facts and ignores other facts.

    So, Lemley, a machine that is going to replace 50 percent of the current jobs isn’t an invention? Isn’t eligible for patentability?

  103. I am reminded of recent Supreme Court reflections such as to the effect of “this cannot be taken too far, as it would surely eviscerate all Patent Law”

    Perhaps the realization of unintended consequences have awoken the N1MBYs…

  104. The first thing I noticed wading into the brief is an attack on ALL modern day patent writing, and on engineering itself, with a negative treatment on Faber – the source that I provided to Leopold in our ladders of abstraction discussion.

    I do not think this is a coincidence.

  105. You might be heartened NWPA to recognize that this morning’s Hal Wegner email containted a call from a wide variety of interests asking Congress NOT to attack patents containing the ubiquitous information processing innovations that characterize (and are integral to) modern day society.

    That list of entities:

      3M
      ActiveVideo Networks, Inc.
      Adobe Systems
      Advanced Technology Ventures
      Allison Transmission, Inc.
      Architecture Technology Corporation
      Beckman Coulter, Inc.
      BGC Partners, Inc.
      Bi-Level Technologies
      Biotechnology Industry Organization
      Boston Scientific
      Brash Insight Corp.
      BSA – The Software Alliance
      Cabochon, Inc.
      California Healthcare Institute (CHI)
      Cantor Fitzgerald L.P.
      Caterpillar, Inc.
      Ciencia, Inc.
      Cleveland Medical Devices Inc.
      Colorado Technology Consultants
      CONNECT
      Cotera Inc.
      The Cummins Allison Corporation
      Dolby Laboratories
      Domain Associates
      Donohue Consulting, Inc.
      The Dow Chemical Company
      DR Systems, Inc.
      DuPont
      Eatoni Ergonomics, Inc.
      Eli Lilly & Company
      Embedded Systems LLC
      Entrepreneurs for Growth
      Entropic Communications, Inc.
      ExploraMed Development, LLC
      Fairchild Semiconductor
      Fairfield Crystal Technology
      Fallbrook Technologies Inc.
      Flocel Inc.
      Forsight Labs
      ForSight VISION4, Inc.
      Foundry Newco XII, Inc. (d/b/a Twelve)
      Freescale Semiconductor
      GearMax USA Ltd.
      General Electric
      General Nanotechnology LLC
      Global Network Computers
      Great Lakes Neuro Technologies Inc.
      Holaira, Inc.
      IBM
      IEEE-USA
      Illinois Tool Works Inc.
      Innovation Alliance
      Inogen, Inc.
      Insight Legal
      Interknowlogy
      Inventors Network of the Capital Area
      IP Advocate
      IP Pipeline Consulting, LLC
      Irwin Research & Development, Inc.
      Johnson & Johnson
      Karbonique, Inc.
      KeepSight LLC
      Kovogen, LLC
      Lauder Partners, LLC
      Licensing Executives Society (USA & Canada), Inc.
      Lightstone Ventures
      MediaFriends, Inc.
      Medical Device Manufacturers Association
      MH Systems, Inc.
      Micron Technologies
      Microsoft
      Miramar Labs, Inc.
      Mogenthaler Ventures-Life Sciences
      National Association of Manufacturers (NAM)
      Neodyne Biosciences, Inc.
      NeoTract, Inc.
      NeuroPace, Inc.
      NeuroWave Systems Inc.
      Nevro Corp.
      NuGEN Technologies, Inc.
      NuVasive, Inc.
      OL2, Inc. (OnLive)
      Orbital Research Inc.
      Patent Office Professional Association
      Power Auctions LLC
      Precision Combustion
      PreEmptive Solutions
      Procter & Gamble
      Prometheus Research, LLC
      Qualcomm
      Rearden Companies, LLC
      Restoration Robotics, Inc.
      Sapheon, Inc.
      Software Partners LLC
      Soleon Robotics LLC
      Tessera
      The Foundry LLC
      TM Technologies, Inc.
      Trading Technologies
      S. Business and Industry Council
      Vibrynt, Inc.
      Xerox Corporation
  106. And, I know that this goes back to Deener. Some 150 years ago the court discussed that without a functional claim it would be trivial to get around any patent claim. And, that the functional claim is in effect defining a set of known solutions to problems that are readily within the reach of the PHOSITA.

    So, the functional claim became a way to say a way to perform a function that includes the set of solutions that would be readily known by a PHOSITA.

    And, let me repeat this—any attorney that ignores is committing an ethical violation and a violation of culture. You are a demagogue if you do not address this issue.

  107. Again, what we have is Lemley trying to lead a campaign filled with misinformation that both ignores history and misrepresents facts to try and find a nuclear bomb for information processing patents.

  108. I don’t remember the case, but I know that J. Rich has written about this exact issue. That any claim that is not functional is easily designed around. So, now the anti’s are trying to simply re-write history and ignore this.

  109. You know what is missing from these arguments about functionality and definiteness is the complexity of technology. I am sure that J. Rich wrote about this. That functional claims arose around the early 20th century because the courts recognized that there were too many ways around a patent without allowing functional claims and that functional claims are actually a fair way—most of the time–to describe an invention.

    It is intellectually dishonest not to address this issue. And, frankly, unethical for any attorney to write an article about functional claiming without discussing the rise of functional claiming as a response to the ability to easily design around claims. And, in fact, the functional claims arose in the mechanical field. Where there are many cases in the early 20th century where the court recognizes this. I know that J. Rich has written about this. It is outrageous to ignore the technology and law and disregard this.

  110. Context: 1942 – the heyday of the ‘patents are EV1L’ era.

    Because such descriptive language that dared hint at functionality just could not be ‘understood’…

  111. Looking at the summary paragraph of the blog entry (admittedly not yet having read the brief), how is it ‘key’ that
    1) the law of the presumption of validity is being followed,
    2) per that very law C&C is what is required, and
    3) the question is one of law (which on toto reflects directly on 1) and 2))

    If anything, this would indicate the key that the petition must fail.

  112. Isn’t there considerable confusion and/or overlap between “overclaiming” and claim “indefiniteness” in those older cases?
    ———–
    It does seem to me that the Federal Circuit seems to talk more about problems of claim indefiniteness than it does supporting or rendering actual invalidity decisions on that basis. The many Federal Circuit panel decisions “reading” specification language into litigated claims further complicates this issue.

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