One more Click: Settlement Agreement Revives Disney’s Business Method Patent

by Dennis Crouch

Disney v. Rea (Fed. Cir. 2013)

Disney's Patent No. 5,963,915 covers an internet purchase method. The patent was filed by Steve Kirsch and originally owned by his company InfoSeek that was purchased by Disney as part of what Wikipedia calls the "expensive failure" of Go.com.

The patent issued on October 5, 1999.  On October 4, 2001 (less than two years later), the patentee filed a broadening re-issue application that claimed a one-click purchase method to rival that of Jeff Bezos. Over the next eleven yars, the patentee argued back-and-forth with the PTO examiners over a variety of patentability issues. In due course, the patentee kept the application alive by filing three requests for continued examination (RCEs) and one administrative Appeal along with more than 100 different patent claims.  After losing at the BPAI, Disney then filed a civil action under 35 U.S.C. 145, asking the district court to order the USPTO to issue the patent. However, Federal Judge Brinkema sided with the USPTO and found that the claims as presented were invalid. Disney then appealed to the Federal Circuit.

Now, Disney and the USPTO have settled the appeal with the agreement that Disney will drop its appeal of pending claims so long as the USPTO (1) allows Disney to file another RCE in the case and (2) considers amended claims presented by Disney in a manner "consistent with the district court's decision" and considering the evidence presented at trial.  As part of the settlement, Disney also agrees that it is not entitled to a patent on the claims that were currently on appeal and agreed to pay the ~ $100,000 in appellate costs spent by the US Government.

In a joint brief, the parties suggest that Disney could still file a broadening continuation reissue application (while the civil action and related appeals are still pending) but could not file an RCE unless the case was remanded to the PTO.  It is unclear to me what actual benefit Disney receives here from the remand/RCE instead of filing of a continuation.

The settlement document is not yet publicly available.

116 thoughts on “One more Click: Settlement Agreement Revives Disney’s Business Method Patent

  1. Over at Gene’s echo chamber, the redoubtable Eric Guttag posts:Joe has also correctly noted that we in the “real” IP world need to do a better job at turning this “anti-patent” PR game around. Many of the anti-patent forces are very devious in spouting their anti-patent rhetoric, and hoping/expecting the general public to blip over the lack of factual support for this rhetoric ….Gee, that sounds a lot like the Republican party’s position regarding, e.g., banning gay marriage, destroying social security and dismantling every attempt to reduce healthcare costs for citizens: “We need to figure out some clever ways to convince people to buy what we’re selling.”Good luck with that, Eric. You’re going to need it. As you’ve been informed many times, the efforts to fix this broken system are not going to be disappear. They are growing and they are going to continue to grow until the patent system is substantially changed for the better. You’ll know we’re getting close when the number of patents granted and the number of applications being filed starts to plummet. Until then, well: just enjoy the present state of affairs while it lasts. Or scream at the sky. Your choice.

    1. Actually, I agree with you to a great degree MM on all points. I just would paint all Republicans with such a broad brush. There are some libertarians among them, as well as some social liberals. Moreover, Republicans as a whole are in favor of reducing medical costs. They just do not believe that the O-man’s approach of instituting a government monopoly will achieve that without the side effect of rationing. Just look to Canada, England or such. Rationing is part and parcel.

      1. They just do not believe that the O-man’s approach of instituting a government monopoly will achieve that without the side effect of rationing.Question: So what do they believe?Answer: More pain and suffering for everyone who isn’t rich like them. Because “side effects.”Once you digest this basic fact, you can explain pretty much every Republican policy position.

        1. Well, MM, to the extent any of them do want to inflict pain and suffering because that is a good thing to them, I would agree with you. But I think that most of them believe that a rising tide raises all boats and the best policy to promote policies that promote growth while protecting those who simply cannot protect themselves. They also suffer by constantly nominating businessmen who by nature may be good at running things but who also by nature may not fully understand the plight of the less fortunate.

          1. most of them believe that a rising tide raises all boatsThat’s great, if everyone has a boat. But everyone doesn’t have a boat. Only very few people have boats.The Republicans have no interest in creating “rising tides” that lift everyone. A rising tide that lifted everyone would take the shape of a helicopter drop of money, say, $5,000, into the hands of everybody, no strings attached. That is the exact opposite of what Republicans want. Republicans want the money to be given to their rich friends. Then (according to the discredited theory), their rich friends will “create jobs.” Or instead of money you can give them more patents. That works, too. Just hand out more patents and the jobs will magically appear. Sure they will. the best policy to promote policies that promote growth while protecting those who simply cannot protect themselvesTo the extent that any Republicans believe this, they are a virtually silent and irrelevant minority. This is not a Republican policy. And it never will be unless there are radical changes. That’s not what the modern party is about.

            1. MM, I simply cannot believe that most R’s are as callous and greedy as you make them out to be. Some, of course. Most?That said, people do tend to vote their interests. If R’s are well off, then they will oppose anything that threatens that. In contrast, D’s seem to think of the less fortunate first. But that does not mean their policies are going to work as opposed to causing harm. Good intentions are not enough.

          1. Oh, how cute! Our resident troll thinks he’s one of the “reasonable people” because all government leaders are equally bad.Tell you what, TB: just let me know when Obama starts a pointless war that kills hundreds of thousands of people based on “intelligence” that half the population can see is cooked-up nonsense.Also let me know when Obama starts appointing anti-science Bible-thumpers to key science posts.And by all means let me know when Obama starts advocating for dismantling social security and basic services for poor people because it’s better to give the money to super rich people and let it “trickle down”.Then we can talk about your silly “they’re all the same” nonsense. In the meantime, you might want to find a better source of information that the puke funnel your using now.

    2. Why are you QQ ing about a different site here?Especially as all that you ever do Malcolm is provide your own self-contained echo chamber. I’ve invited you to comment on the law and learned treatise writers in several threads now and all that you want to do is your mindless blathering QQ.Highlighting added since Malcolm has difficulty reading.

  2. Off topic, just a bit. Proposition, all functional claims must be construed to cover the corresponding structure, etc. … and equivalents.Authority: Fn. 11 of Application of Fuetterer, 319 F. 2d 259 – Court of Customs and Patent Appeals 1963. That note said 112(f) was intended to restore the law regarding functional claims, “means” being just an example, to its state prior to Halliburton. What state was that? It cited Westinghouse. Westinghouse construed functional claims just so — to cover the corresponding structure, etc. Note, that the claim under consideration in Westinghouse was not in MPF form. Also note, that the rule of construction applied where the novelty lay in the one element, not in old elements.

    1. You guys are relentless. We’ll give you a patent let us just make it worthless. Let’s be clear. If a patent application had to include all the different possible embodiments for information processing, then the application would be 1000′s of pages long. That isn’t the point of a patent application. Those skilled in the art know the metes and bounds of the functional claims. The functional claims convey structure. LizardTech explains well how to police the scope of claims.You guys are relentless.

      1. Hey NWPA, did you hear the news about your brosef Turing? He got pardoned, officially, for his gayness a couple of weeks ago.

        1. When I read that Turing had been pardoned for being convicted of homosexuality, I was appalled at his original conviction. The man was critically important to the Allied war effort against the Third Reich. We may not have won the war but for this man. What a black mark on British history. Black. Almost as black the Roman church excommunicating Galileo for suggesting the sun did not rotate about the earth.Imagine if our president were to persecute such a hero, a man that perhaps had exposed unconstitutional spying on the American people.

          1. Ned, earlier you scoffed at me when I told you the story of Turning. But, aside from that, you should read about the Church-Turing Thesis. And, information and physics. You would not be able to hold your views but for your ignorance.

            1. It is a purposefully chosen ignorance at that.Just like Ned’s ignorance of copyright law and what that law entails as to what software is: a manufacture and machine component in its own right. Somehow Ned always seems to think that software somehow magically appears anytime you have a physical computer already present – as if the computer alone is the invention, that the part of the statue (101: any improvement thereof) does not exist, and that all improvements by way of software are somehow void or subsumed into the original invention of the computer (the vacuous and debunked ‘House’/Morse view).He steadfastly (and inexplicably) refuses to even acknowledge the bridge created by the exceptions to printed matter doctrine that is the legal mechanism that makes the printings of software – functionally related as they are – a manufacture in the patent sense of the word.

            2. Anon, you have my thinking on programmed computers exactly backwards. The computer itself is generic and not new. Stored programmed computers generically were invented circa 1946. Changing the program does not change the computer, which remain a bunch of circuits connected to each other.The program can exist anywhere but essentially is described as a series of steps — a method. The infringer is the one who perform all the steps, e.g., the person who executes the program.I do agree that a computer with new programming permanently made part of the machine defines a new machine.

            3. “Changing the program does not change the computer”Wrong in fact.Wrong in law.See Alappat.And Ned – why is it that you completely disappear when I ask you about the exceptions to the printed mater doctrine?I mean, like you completely leave the scene and exit the discussion. Do you not understand the controlling law? Or is it that you simply have no answer to that controlling law?Add: “Stored programmed computers generically were invented circa 1946.” – that’s like saying all chemistry was invented with electrons, protons and neutrons in the first few minutes of the universe. The ‘House’/Morse banality continues.

            4. Ned states: “I do agree that a computer with new programming permanently made part of the machine defines a new machine.”Well besides your non-legal insertion of ‘permanently’ (Ununpentium anyone), you are at least taking a baby step in the right direction.Now if we can get you to realize the analogy to rivets, tires and bullets as manufactures and fully patent eligible in their own right, and get you to realize the exceptions to the printed matter doctrine that provides the legal bridge for software to be a manufacture, we will be getting you closer to being intellectually honest.After all, it is still an unassailable FACT that software is equivalent to firmware and is equivalent to hardware.

          1. You act like it was just the brits, mericans did the same iirc.And people in other parts of the world would have simply killed him and been done with it. So meh. Putting him in jail, all said, might have been the most civilized response he could get anywhere in the world at the time.

          1. I know a certain person that volunteered that admission against interest…Right, just like when you volunteered to your probation officer that you like to sit in the bushes near the elementary school and take pictures for your “research project.”Fun game. You’ll start the next round as usual, TB?

            1. True, but unless he gets a deal with the prosecutors that effectively is the same thing, he will not return.

            2. what do you thing of the NY Times recommending a pardon for Snowden?I agree with the NYT that Snowden is (or should be considered to be) a bona fide whistleblower and not some sort of “traitor” deserving of 20+ years in prison. We should be thankful he did what he did, when he did, so we could start taking some reasonable steps to curb the madness.Ten or fifteen thousand fewer NSA employees and a couple hundred more patent examiners would be a great start.

            3. Around the merry-go-round yet again with you. Note the difference though about my merely noting what you have actually said and what you make up to say about me.Let’s try to be just a little intellectually honest Malcolm, m’OK?

        1. Just a note, what we are talking about with functional claims are combination claims to real structure where the structure or material is claimed in terms of the result it achieves or what it does. While 112(f) layers in method claims, it is hard to imagine exactly how 112(f) applies to a method claim that are inherently functional and must by their nature describe actions. I have never seen, ever, 112(f) being applied to a method claim. Has anyone?

          1. I’ve seen “step plus function” claims on a few occasions, but at least in the computer-related arts, the claimed steps generally provide their own acts sufficient to perform the function, and so 112(f) is not invoked. I could only assume that this is more of an issue in, e.g., the chemical arts, where you might recite only the outcome of the step and thereby invoke 112(f).

            1. ApoTu, thanks. I can see that if one simply states the result of a process in a claim step that one might invoke 112(f). But I have never seen 112(f) invoked in any Federal Circuit opinion or for that matter CCPA. It would be interesting to see just how they would handle it.

          1. I’m sorry, anon, but a majority of the Federal Circuit en banc held in Alice that programmed computer claims were effectively method claims. And this is good as methods can be claimed functionally with no problem under 112(f) that I can see.

            1. Alice?Try again Ned – read the impact from Alice per the Chief Judge…add: in Alice(let me know if you need that reference that you supplied on how NOT to create law from dicta)Add: Sorry Tony, Prof. Chao (with his obvious bias) is merely kicking up dust with his rendition of the Marks Rule. The clearest meaning of that rule is exactly as Chief Judge Rader noted in the decision when he said the decision other than the judgment (precisely because it is the judgement itself that is the narrowest grounds) has any precedential weight.

            2. From Accenture v. Guideware, majority, No. 2011-1486, Sept. 5, 2013 reported at link to scholar.google.com…Although CLS Bank issued as a plurality opinion, in that case a majority of the court held that system claims that closely track method claims and are grounded by the same meaningful limitations will generally rise and fall together. Id. at 1274 n.1 (Lourie, Dyk, Prost, Reyna, & Wallach, JJ., plurality opinion) (“[E]ight judges, a majority, have concluded that the particular method, medium, and system claims at issue in this case should rise or fall together in the § 101 analysis.”). Those judges came to that conclusion because the method and system claims were so closely related that the system claim essentially implemented the process of the method claim on a general purpose computer. See id. at 1291 (“Despite minor differences in terminology . . . the asserted method and system claims require performance of the same basic process. Although the system claim associates certain computer components with some of the method steps, none of the recited hardware offers a meaningful limitation beyond generally linking `the use of the [method] to a particular technological environment,’ that is, implementation via computers.”

            3. Anon,Not sure it’s that simple. Read this post – link to patentlyo.com…. “Ironically, under the so called Marks rule, Judge Rader may not just be wrong, his opinion could be considered the holding of the court.”

      2. Can I ask you a pragmatic question with respect to Lizardtech, because I think that should be the standard too, but let me ask about two hypotheticals:1) Applicant states how to achieve a function, doing steps A, B and C. But Applicant then claims the entire function as a scope. Let’s say the Examiner posits that different steps X, Y and Z could achieve the function. Applicant hasn’t shown he’s in possession of X, Y and Z, so a 112, 1st is proper, correct? Does simply raising that X, Y and Z could achieve the function enough to sustain the 112, 1st? Must Examiner even mention X, Y and Z or can he simply state that Applicant has provided no proof that he has filled the scope? Must Examiner provide proof that X, Y and Z can do it? If he must provide proof, doesn’t that effectively neuter 112, 1st since it would be a 103 to prove it anyway? If Examiner need not provide proof, what is the basis by which Applicant can overcome the 112, 1st, and won’t that just invite every case to the Board?2) The Applicant states his computer can do a function and claims the function in a limitation. Applicant provides no steps further describing the function. Is a 112, 1st rejection proper? If so, can it be overcome? By what standard, keeping in mind the only thing the specification says is that applicant possesses the function.

        1. In the computer-arts, every function is fully enabled and possessed upon description of the function, unless that function is described in the prior art. If the function is described in the prior art, then it’s just “science fiction” that nobody could have implemented (otherwise they surely would have implemented it because look at how many people are doing this fifteen years after the application was filed). Typically, the prior art isn’t enabled because even though the “technology” necessary to achieve the recited functionality existed or was readily understood to be attainable at the time of filing, other people (sometimes known as “potential defendants) hadn’t spent the money to build and/or market the infrastructure and/or devices which would make the actual implementation of the invention (and the inevitable lawsuit) commercially feasible.

            1. “Must you soil every post”That’s what he does. – But you will notice how he avoids substantive discussions on actual points of law (or fact). He is a QQ-’policy’ machine, spewing the worn rhetoric at every opportunity. It is the same old CRP-runaway from counter points-CRP again routine that he engaged in forever and a day.As I have explained in the past, the bane of low quality posting is exemplified by Malcolm – no change in software will suffice to remove that bane.

            2. you will notice how he avoids substantive discussions on actual points of law (or fact)LOL.From time to time it’s worth reminding people that “anon” aka “Tr0llboy”, the most vociferious defender of junk claims on this blog (and several others) is a pathological lying tool who spent years here insulting everyone and anyone he disagreed with using hundreds of different pseudoynms. He did that while pretending to “do battle” with an imaginary “vocal minority”. He did that until he was busted by Dennis Crouch. In response, he stopped posting fifty times a day using fifty different pseudoymns and started hurling insults and incomprehensible innuendo under his “anon” moniker.Anyway, just a regular reminder in case there is anyone who has forgotten. Now you can look forward to Tr0llboy spewing more of his weirdass lies in response to this comment.

          1. Exactly right. Computer algorithm inventions are enabled per se. As you have often put, you as a 14-year old already had the skill to program any and all computer algorithms put to you.Saying there is something wrong with computer algorithm claims under 112(a) or (b) is almost ludicrous.

            1. Ned, you realize of course that Malcolm’s statements regarding 14-year olds are meant derisively only, and that he believes that it takes a Flash of Genius in order to earn a ‘true’ patent (no matter what the law actually says, and no matter what our founding fathers wanted our patent system to be), right?

            2. Malcolm’s statements regarding 14-year olds are meant derisively onlyNo, they are meant to to illustrate the contradictory and hypocritical positions adopted by the softie woftie patent teabaggers whenever anyone attempts to discuss their junk claims with them.

            3. LOL,Well, there you go again…You Accuse-Others gambit highlights your own contradictory and hypocritical position about just who can invent (and what fields of art legitimate inventions can inhabit), as you merely throw out ad hominem name calling at the particular art field most aligned with the type of group that the founding fathers most wanted the patent system available to.Sad thing is, I think you do know this, and yet cannot help yourself.

        2. I haven’t been on the board long but I really don’t understand the downvotes for asking the question. He says apply Lizardtech. I’d like to know how Lizardtech should be applied.With respect to me, NWPA’s statement that it would take 1000s of pages is a strawman. There does, believe it or not, exist a happy medium between having to explain each and every possible embodiment and asking for more than a single sentence. Nor does “those skilled in the art know the metes and bounds of the application” help. Indefiniteness and written description are separate rejections. It doesn’t help to particularly define the bounds if you’re going to ignore enablement and written description, since that would just allow anyone to transform a patent wish into a patent monopoly with no work.Let’s start with the premise that proving that you are the first person to do a function (that could be achieved in a multitude of ways) in one particular way does not entitle you to every way of achieving the function. Now, either you have a quibble with that premise, in which case we can have a legal debate, or you have to explain to me how you would go about differentiating them ex-ante, rather than ex-post (which the court in Lizardtech had the benefit of). NWPA seems to agree with me on the premise. Please explain how you handle the implementation of Lizardtech pre-issuance.

          1. Akin to the claim of a manufacture: You are the first to claim a nail. Let’s say for argument’s sake the nail meets 102/103/112 and the rest of the statute.Your patent is good against all other makers of nails – no matter if they invent a completely new way of making that nail (even though you may have only provided one enabling way of making). The scope of the material item is not limited by new ways of making. If someone does invent a new way of making a nail, great – they can get a patent for the new method. But they are still bound by your patent for the item.It appears that, like Ned, you have a problem with method claims in general, and wish to constrain method claims to be some odd subset of the material claims (the other statutory categories). No doubt you are (overly) influenced by Justice Story and some of the anti-method claim bias that permeates some of the pre-1952 patent leanings.

            1. Anon, in your example you are only claiming one structure. It is true that if you describe a nail that surpasses 102/103/112 you have defined a structure with apparently enough particularity to differentiate it as something new and you own the structure. But the situations is not the same for a standard computer function claim. In a computer, the “structure” you have made is the ordered processing of computer commands (or expanding it outward, a CRM containing or a processor executing them). If you disclose your structure (i.e. either the code or the algorithm that the code produces) you can claim it and have protection for it. Of this I have no doubt. But most applicants go further – they create the structure of steps A, B and C. But because their structure causes a broad end-result (“function D”) they seek to claim the entirety of the end result. This, without more, I cannot square with Lizardtech or 112, 1st.Even though this example works with a nail (since a nail has multiple structural limitations) let me instead substitute a spaceship for clarity’s sake. If you define the structure of your spaceship, you should get protection for YOUR spaceship. What you can’t get protection for is ALL spaceships. The range of “all spaceships” covers a multitude of structure which you do not have possession of. Similarly you have a computer which is storing particular code and executing steps in a particular manner. You can’t claim all structures (i.e. all sets of code or all possible algorithm steps) which just happen to give you the same end result. When you do that you’re not so much claiming a structure as claiming “all solutions to this problem”. But you’re not in possession of all solutions to the problem. You’re in possession of one solution to a problem, so under what basis should you be given the broader scope?Let’s say that you buy a brand new computer and only modify it by adding code that does steps A, B and C to cause function D to occur. I buy the same computer and modify it by adding code to do steps X, Y and Z to cause function D to occur. What you and I have is two different structures with the same intended use, like two differently shaped nails that can both be used to hang pictures. There are two different inventions and neither party is entitled to a scope that would cover the other, correct? I simply don’t see how this is akin to a product by process claim.

            2. Once again, your tendency to (only accepting) picture claiming is your downfall.Add: you want to cling to ‘one structure’ without realizing that the ladders of abstraction provide you with more than just a picture claim of ‘one’ structure.This is like trying to explain a three-dimensional world to a two-dimensional being. You are trapped in a circle and merely need to step over that circle to escape, but you seem incapable of recognizing what ‘step over’ means.

            3. You said you’re entitled to a structure regardless of the method of producing it. I agree.I argue that computers are different from the nail because the statement “I claim function D” covers a *broad range of structures which are distinct* from each other.I claim a motor vehicle that achieves the function of getting me from Chicago to St. Louis without having to stop for gas. You would agree (and certainly argue, post-issuance) that there are dozens, hundreds of possible structures that achieve that function. Is it your argument that the first person to build the first of those cars is entitled to a scope that reads not only his car, but on the other cars, motorcycles, trucks, busses and semis? Certainly you can claim your car, and you can claim similar cars, but you can’t claim the completely distinct other vehicles. How is this different from computers? You can claim your code, and similar codes, but not all of the codes. How is this picture claiming? If it is, clearly the mechanical people are doing it wrong, since the next person to push the art forward in making ONE novel efficient engine can write a functional scope that freezes EVERY OTHER ENGINE, regardless of how distinct, under that efficiency for the next 20 years. According to you, if someone came along tomorrow and invented an engine powered by giraffe spit and unobtainium they would be prevented from practicing it because the gas engine of the patent would make them infringing. Clearly that’s not the case, right?Similarly, its not enough to to give ONE means of achieving a function and then pretend that every other means of achieving it is both enabled and described by the applicant. Or does the picture claiming doctrine remove the 112 rejection completely?

            4. Once again, you raise ‘distinction’ without a difference. That’s because you simply don’t appear to understand what the ladders of abstraction mean – happens with some people who only write picture claims.

            5. This is the second time you’ve brought up ladders of abstraction and you seem to be fundamentally mistaken about them. Ladders of abstraction don’t allow you to avoid statutory requirements, they simply give the applicant the freedom to define his invention with multiple scopes. You’re just mistaken to try and counter a 112 rejection by saying “but, but ladders of abstraction…”If claim 1 is directed to “all machines” that do X and claim 2 is directed to a subset of those machines that do X, enablement and proper description of the dependent claim 2 does not inherently make claim 1 enabled or described and ladders of abstraction does not even assert to make that the case. If an infringer or the office can show why the enablement or description of the expanded scope wouldn’t be made, it is subject to rejection. (The opposite, that possession of a broad scope doesnt inherently enable or describe the limited scope, is likewise true. It is the cause of new matter rejections, I assume you’ve heard of those.) Fact: the applicant must show possession and enablement of all scopes they claim.

            6. In principle I agree. But when a claim is to a method, it is substantially irrelevant what the apparatus is. As decided en banc in Alice, claims to programmed computers that recite a series of steps and where the computer parts are generic are treated as method claims.That does not mean that if the computer is being used in a larger apparatus or system or process, that one can simply claim a computer programmed to produce a result X, where X is an effect in that larger system, apparatus or process.See my other posts on this topic.

            7. Ned, there are two different things in your statement. If the description and the claim is to method steps, then sure you can include computers and processors and CRMs and turn what was a method into an apparatus or system with no problem, as all the physical embodiments are old and within the art. That is what the Alice court held and even common sense would say its correct – that the form of claims that otherwise have a common scope is irrelevant.But to then go further and say you can claim anything that produces the result is incorrect, since now you’ve made a scope change – and there may be other methods that achieve the result in a superior, or at least patentably distinct, manner.

            8. I hope I made it clear that the result being claimed had to be in the larger system or apparatus or material or larger process. E.g., Computer programmed to drive a car weighing Y pounds from point A to B while consuming less than X gallons of gasoline. Now, this claims a result in the larger world or process. The claim is functional.

            9. Then you’ll have no problem pointing to a case where a 112, 1st rejection is overcome by the doctrine of ladders of abstraction?

            10. Nice strawman – you pose a non sequitur, as I can point you to any number of literally thousands of valid patents that employ the ladders of abstraction, that have no 112, 1st rejection to be overcome (your strawman) and that are more than picture claims.

            11. I can point to millions of patents that use ladders of abstraction. That’s not what I said. I said point to a case where a 112 rejection is made, and ladders of abstraction are a defense to the rejection. If you can’t, then you still need to answer how a scope that is undescribed is somehow made valid because you cry “picture claiming” or “ladders of abstraction”.

            12. I know what you said – but what you said was not correct for the reason that I gave you.Pay attention.And if you understood what the ladders of abstraction meant, and understood why picture claims are (derisively) contrasted, you would not be attempting to put forth the ‘argument’ that you are trying to put forth.As it is, you continue to dig yourself deeper because you only know picture claims.

            13. I’m not denying that you can claim more than what you have, not do I suggest that picture claiming is the only valid way to do things. I’m simply pointing out you can’t give one species and claim the whole genus (or one algorithm and claim the function in computer implementation). If I’m wrong then explain Lizardtech.

            14. You are attempting a question that does not fit what I am saying about ladders of abstraction.Then you are turning around and assuming that your position – wedded in picture claims (no matter how much you try to say otherwise) is what Lizardtech stands for.Sorry, but you are simply wrong.

            15. anon, method claims inherently call for actions. When a claim recites two method steps that each recite actions, there is no functional at the point of novelty problem. Faulkner v. Gibbs.I do not have a problem with method claims, nor do method claims have to show all means for carrying out the steps. The invention is in the steps themselves.I am not advocating any position remotely like Lemley’s position where he would take the method steps of a claim an force them to be subject to 112(f). I think that position is downright bizarre.

            16. PON is a canard as you are attempting to use it here Ned.”there is no functional at the point of novelty problem.”Ned – you are confused by single means claims (not allowed) and by ‘claims must be read as a whole.’

            17. Method claims that are functional are fine. Without being able to claim the method and in a functional way, the patent grant would be worthless as it would be too easy for someone to re-arrange or slightly change the machines. The rise of the method and functional claiming was due to the number of possible machines and the difficulty in claiming them without them easily being slightly changed to avoid infringement.Lemley’s paper on functional claiming is a ridiculous re-writing of patent claiming history. Read Deener.

            18. Thanks NWPA,Deener is indeed a good read.However, the discussion is broader than functional claiming in method claims. The use of functional claiming (and that term itself has many different definitions – see the warning in one of Ned’s supplied cases about lifting that term out of context) in claims of the other statutory categories is what seems to confuse many of the anti-patentists.

            19. “Method claims that are functional are fine. Without being able to claim the method and in a functional way, the patent grant would be worthless as it would be too easy for someone to re-arrange or slightly change the machines.”In other words the patent system would encourage too much innovation. Frowny face :(((((“The rise of the method and functional claiming was due to the number of possible machines and the difficulty in claiming them without them easily being slightly changed to avoid infringement.”In other words, innovation was a happenin’ and patent attorneys were NOT HAPPY ONE LITTLE BIT ABOUT THAT.

            20. Such minor alterations have NEVER been deemed to be innovation or invention, 6.You are WAY too eager to be contrarian here. Stop first, THINK through the actual meaning of the words you are going to use. You make the same mistake with your feelings about the doctrine of equivalents,

        3. RandomGuy, I am pretty backed up right now at work. Those are good questions. Don’t worry about down votes. There are haters on this board that will down vote anyone that is not a hater.In you hypo, am I claiming the steps of achieving the function? (and don’t be tricked into being roped just into information processing. mechanical claims are just as functional. And, EE and Chem are too.)The real question is what structure does the claim plus spec convey. What is structurally enabled. Are you saying that there is only one functional claim element that has different ways or that a method is claimed and there are other ways of performing the method to get the same function? The second one is easy. You only get the method you claimed. The first one is easy too. Is the other way of achieving the function known? Is it a solution that a person having ordinary skill in the art would use? If yes, then you are entitled to it. You have enabled the functional part of the claim. Compare with a hinge. Should we have to say every type of hinge? Every type of rotational connection? I write mechanical cases and the degree of functional claiming is the same. You need to say any of this massive set is fine, but listing out that massive set is impossible. And, then you get into well any of the types of ways of doing this are fine. Then you would have a multi-part or step where many ways are known. You can’t list them out and shouldn’t have to.

          1. Yes, we must differentiate that, sorry I wasn’t clear. Let’s take four hypos:1) The spec states that function D is possible and Applicant claims some old computer parts, old operating environment and allegedly novel function D. In my mind, D should be rejected under 112, 1st because merely stating something is possible, or that applicant is in possession of it, when it is the novel part of the machine is simply nondescriptive as a matter of law. There’s a case somewhere that talks about being nebulous at the point of novelty. I believe no claim can issue from this application, as to fix the 112, 1st rejection would require addition of new matter into the spec.2) The spec states applicant has done steps A, B and C to cause function D. Applicant claims some old computer parts, old operating environment and using steps A, B and C in that environment. A, B and C are each evaluated on their own for novelty and I see no 112 issue. This, I believe, is the only valid patent that can issue from these hypos – if the application of A B and C is non-obvious in this particular environment.3) The spec describes how steps A, B and C cause function D. Applicant claims some old computer parts, old operating environment and allegedly novel function D. This is at least better than 1, and allows the applicant to rewrite claims into the format in hypo 2 above, but I believe this claim as it stands is still rejected. I disagree with you here: Your response is that if there are other ways of achieving the function that are known then there is no problem. First, if other people can achieve the function you have a 102/103 issue. Second, even if other people know some methods of achieving the function, and you further detail other methods of achieving the function, you’re still not in possession of every means of achieving the function. This is okay if the function is admittedly non-novel. (i.e. One can say that non-novel step X can be achieved by any known method) This is not okay if this function is argued as the means of novelty, because you haven’t shown that you’re in possession of all ways of achieving the function, just all the ways you knew and all the ways a PHOSITA knew at the time of filing, which is not necessarily the full set. You thus still have a 112, 1st problem.Third, “is it a solution that a person having ordinary skill in the art would use” is similarly not useful for patenting. The standard for possession is whether this particular inventor had possession at the time, not whether one could fashion a broader scope with all the knowledge of the art in a ex-post manner. Further, this has the same problem as above – if the answer is yes you’ve just admitted there’s a 103 rejection.This is different from your hinge example because your hinge seems to admit that it’s not the point of novelty. If I’m building a new apparatus, certainly I can say that I’m allowed to use any hinge, because the hinge isn’t what is giving me novelty. Similarly with a computer, you can swap out any possible hard drive, RAM, processor, etc because those old pieces are not the novel part of the machine. What you cannot (simultaneously) do is claim that you have a function which is both 1) novel and 2) need not be fully described. The end result of this line of thinking is that you can almost never claim a novel function, because that would require detailing the full scope of it.Now I think you can claim more broadly than 2 for example, because steps A, B and C are each non-novel, and therefore you can expand them out which some descriptive phrases. For example, you could say Step A could be achieved by any well-known process that includes a GET command, or something of the like. Further, even if 2 were to issue as is it would de facto be larger because many types of code/algorithm steps are equivalents of each other. But it is different to say you can certainly claim A, B and C, and probably get expanded protection beyond the exact bounds of A, B and C, and take the large leap of saying that you have protection for all ways of achieving function D.I believe hypos 1 and 3 need to be eliminated from the software field. You can’t give no particular embodiment, or else a future court can’t determine equivalents for infringement. Further you can’t claim the whole function, since you’re not in possession of the whole function. Beyond that, my original question stands: It appears we have little guidance for exactly how far we can expand out the 2nd hypo – obviously you can claim your particular method, but by what standard can you claim more? Is it entirely fact dependent? See my previous post.

        4. Random, there is a simple answer to your questions: computer program claims are in truth method claims. Two or more steps that describe actions do not invoke 112(f), are inherently enabled, and do have not problems under 112(b). When I speak of functional claims, I am speaking of claims like those in Perkins Glue, Wabash Appliance and Halliburton. These claims were claims to apparatus or materials that claim them in terms of the results they achieved, rather than what they were. That is what a functional claim is. The claim has to be functional at the point of novelty and claim a result. Cf., In re Tarczy-Hornock, 397 F.2d 856 (1968)

          1. Perkins says exactly what I say though: “Perkins’ second way of describing the starch ingredient of his product was in terms of the use or function of the product itself….But an inventor *may not describe a particular starch glue which will perform the function* of animal glue *and then claim all starch glues which have those functions*, or even all starch glues made with three parts of water and alkali, since starch glues may be made with three parts of water and alkali that do not have those properties.” Perkins @ 257. The Perkins court does so on enablement grounds, but WD would equally apply – a particular example does not meet the scope requirements of the broader function.Similarly, Halliburton’s court found the claims invalid stating that: “By failing to identify the degree of the fragility of its invention, Halliburton’s proposed definition would allow the claims to cover *not only that which it invented that was superior to the prior art, but also all future improvements* to the gel’s fragility.” The court further noted: “Additionally, adopting the broadest possible construction could retard innovation because cautious competitors may steer too far around that which Halliburton actually invented, neglecting improvements that otherwise might be made.” i.e. Regardless of bounding the invention on the lower side of novelty – distinguishing it from the prior art, a failure to bound the invention on the upper side of novelty (explaining what Halliburton was in possession of) was fatal.

  3. Disney also agrees that it is not entitled to a patent on the claims that were currently on appeal and agreed to pay the ~ $100,000 in appellate costs spent by the US Government.Let’s wrap up this in a moldy bow, shall we? This is a quintessential junk patent correctly deemed invalid in district court with a snowball’s chance in heck of the pending claims being resurrected by the Federal Circuit. The USPTO would apparently have crushed any attempts to obtain remotely similar claims using the pending application. But apparently if you wave enough money in the PTO’s face they are prone to reconsider the situation. Now Disney gets their RCE and the benefits of some sort of handshake agreement to examine their (surely amended) claims in the way that Disney wants the claims to be examined (undoubtedly over-emphasizing some off-the-cuff comments by the judge regarding “additional limitations that might change the bad result for Disney if only those limitations were recited in the claims”).Meanwhile this “one-click purchase method” has been re-invented ten thousand times over by people who never read the patent and couldn’t care less about it. But in the interest of “promoting progress” we’ll all be responsible for paying the ransom when the revised but still completely junky patent issues and Disney initiates the wonderful process of “monetizing” it.

  4. Disney also agrees that it is not entitled to a patent on the claims that were currently on appeal and agreed to pay the ~ $100,000 in appellate costs spent by the US Government.Let’s wrap up this in a moldy bow, shall we? This is a quintessential junk patent correctly deemed invalid in district court with a snowball’s chance in hell of the pending claims being resurrected by the Federal Circuit. The USPTO would apparently have crushed any attempts to obtain remotely similar claims using the pending application. But apparently if you wave enough money in the PTO’s face they are prone to reconsider the situation. Now Disney gets their RCE and the benefits of some sort of handshake agreement to examine their (surely amended) claims in the way that Disney wants the claims to be examined (undoubtedly over-emphasizing some off-the-cuff comments by the judge regarding “additional limitations that might change the bad result for Disney if only those limitations were recited in the claims”).Meanwhile this “one-click purchase method” has been invented ten thousand times over by people who never read the patent and couldn’t care less about it. But in the interest of “promoting progress” we’ll all be responsible for paying the ransom when the revised but still completely junky patent issues and Disney initiates the wonderful process of “monetizing” it.

  5. Dennis, the only thing I can think of is that the PTO might be bound by the settlement with the RCE but not if a new application is filed.Also, the continuation must be filed before the abandonment of the original application. I am not sure exactly when abandonment occurs when one settles an appeal from a district court appeal. Anyone know?

    1. “Also, the continuation must be filed before the abandonment of the original application.”That’s what I was thinking about. If they “settle” an appeal from a decision of a district court that ruled against Disney then I presume that we use the procedures for when we win the case when it comes back. But I don’t recall if we give them some time to file an RCE or not in those circumstsances though.

      1. 6, regarding those procedures, is the application officially abandoned upon the mandate of the reviewing court, or does the examiner have to issue a notice of abandonment?I presume that if a court affirms the PTO, there remains a period of time to appeal or to file a writ of certiorari. When that time has expired, I would think the application becomes abandoned.So the settlement complicates things just a bit as there can be no further appeal and the mandate of the court is really final.

        1. For a CAFC appeal, either directly from the BPAI or from a civil action, abandonment is on the date of the mandate if no claims are allowed. (For a civil action, it’s as of the date that the time to appeal that decision expires.) See 37 CFR 1.197(b)(2). RCEs are not normally permitted after a CAFC appeal or civil action is filed. But the court can specifically mandate that the USPTO should take up the application again (e.g., with payment of an RCE), and the USPTO would be bound by the mandate.If the court doesn’t specify, though, it’s not entirely clear at what point we would abandon the application in this case if the applicant never files the RCE. I would assume we’d try to abandon it at 6 months from the mandate, but that’s probably above my pay grade at this point.

          1. Thanks, APoTU. Most of us would not know this. Thus it does appear that stipulating to a dismissal would result in the application going abandoned as soon as Federal Circuit entered an order. (Presumably, the clerk would do this.) Thus, the applicant would need some agreement with the Director to keep the case open after dismissal with no claims allowed.

            1. Yeah for some reason my response above didn’t post. I’d agree with Apotu, though I’m not sure if you can petition that abandonment or not. In either event, I get the feeling that the abandonment is a matter of procedure from the office’s viewpoint thus open to the PTO to keep the case open if they want.

            2. Actually, I had to look it up in the MPEP ;)Basically, the entire arrangement in this case hinges on the court mandating that the USPTO accept the RCE and reopen prosecution. Without the mandate, the USPTO has no rule for accepting the RCE at this point, because termination of the outside proceedings coincides with abandonment of the application.

  6. Disney and the USPTO have settled the appeal with the agreement that Disney will drop its appeal of pending claims so long as the USPTO (1) allows Disney to file another RCE in the case and (2) considers amended claims presented by Disney in a manner “consistent with the district court’s decision” and considering the evidence presented at trial. As part of the settlement, Disney also agrees that it is not entitled to a patent on the claims that were currently on appeal and agreed to pay the ~ $100,000 in appellate costs spent by the US Government.Thanks, Disney, for continuing to perpetuate your sick joke on the US public.

  7. There are about 3 differences between continuations and RCEs. The fees are different. The PTA consequences are (potentially) different. I think there’s another difference, but I don’t recall now. Under Exelixis I, filing the RCE might provide more PTA (or patent term)? This seems like precisely the kind of patent where PTA becomes very valuable. Of course, I feel fairly confident that the CAFC is going to side with the better reasoned opinion in Exelixis 2. I’m just speculating.

        1. Thanks for the link Kip.However, the link (and your exchange with my namesake) shows that you have not yet learned the lesson of the history of PTA and the exchange that was hammered out to allow for pre-grant publication. The entire statutory reason for the guarantees of the Office acting quickly (hence the onus on the office and the benefit of PTA due to applicants) seems to go over your head.You seem to be of the generation that merely assumes that publication (with no benefit to the applicant) is OK. It is not. Such is a taking of Quo with no providing of Quid.You do know what the Quid Pro Quo is, right?

          1. Anon, I would love to be wrong, so (if I am), please enlighten me. You reference the statutory reason behind PTA, but I think the Exelixis 2 opinion does a much better job of reviewing the legislative history. Perhaps I’m biased by years and years of the PTO adopting the reasoning of Exelixis 1. But I’m not convinced yet.

            1. You love to be wrong…?That’s the same response you gave at IPWatchdog. What explicitly about Exelixis II makes you think that that decision does a much better job of reviewing the legislative history?

            2. I would love to be wrong in this case, because I see Exelixis 1 as being more patentee friendly, and I try to obtain patents for a living.As for the reasons why, I don’t have the time to read both opinions again and give you specific answers. From what I recall, Exelixis 2 has much more extensive coverage of the legislative history than Exelixis 1. If you want further answers, I encourage you to read the two opinions again yourself, and you’ll see what I mean. Or not.

            3. It is difficult to enlighten you if I do not know where you are (and where you need enlightenment).Nevertheless, I will provide three pointers:1) Generally, you should look at the legislative history of the move towards publication, which may well lay outside of the Exelixis decisions themselves. PTA history alone does not suffice to tell you the complete story.2) Exelixis II shows a heavy anti-patentee bias. Look at the facts presented. The judge there attempts to use the facts presented to create a “patentee is a bad actor” flavor, and draw a parallel to the ‘bad actor’ actions of submarine practice. But these parallels are inapposite to the application of the law at hand to the actual facts of the case. It simply does NOT matter whether the facts of the Exelixis II case include multiple preliminary amendments and overbroad claims. The controlling fact of the matter (glossed over) is that the very first Office action came after the total three year guarantee. Also note the footnote treatment of Taffas in Exelixis II, wherein in the body of the decision, the judge actually seems to treat the Tafas case as having been decided in the opposite direction.3) Stare Decisis is done serious damage here, as this decision is in the same court system as Exelixis I and the judge here simply disregards the controlling nature of the previous decision and simply eliminates the weight of legal precedent of that decision for no more than what the judge ‘feels’ is (and is not) “reasonable.”

            4. “The controlling fact of the matter (glossed over) is that the very first Office action came after the total three year guarantee.”Umm.. the point of Exelixis 1 and 2 is to construe the statute. Under one interpretation (Exelixis 1), the fact you cite is controlling. Under another interpretation, the fact is not controlling. Saying that the fact is controlling simply assumes that the Exelixis 1 interpretation is correct. Maybe it is correct, but you haven’t given any specific argument showing that it is.

            5. How about stare decisis…? the arguments in Exelixis IHow about the other pointers I gave you?You are far too quick to reply (there is no way you have done any decent checking into the legislative record on publication concerns).Please don’t be another yahoo who merely claims he wants to be enlightened.

            6. I already reviewed the arguments in Exelixis 1 in a giant post on IPWatchdog, which I already sent you.As for stare decisis, A. stare decisis, by its nature, should be applied sparingly, B. Exelixis 1 just happened, giving the public very limited time to rely on it, which limits the policy argument for stare decisis.As for replying fast – I never pretended to check the legislative record. I explicitly told you that I don’t have time to do that.

            7. Then you should have taken the time to become ‘enlightened’ rather than respond only seeking to reinforce your prior view.Your bad.(and your view of stare decisis is most odd)Further, Exelixis II is poorly reasoned for the reasons I pointed out and it does NOT delve into the congressional record in a more convincing way than Exelixis I.As for your post at IPWatchdog, the comments with my namesake there and my comments here both serve to show that you have not bothered to even try to be ‘more enlightened’.Don’t ask for what you don’t want or ‘have time for.’

          2. “You seem to be of the generation that merely assumes that publication (with no benefit to the applicant) is OK”That really is a generational thing. Stodgy old people like to keep their secrits as if they’re the Greatest Thing Evar. Us young people think we’ll come up with the Next Greatest Thing Evar next week after we came up with the Greatest Thing Evar this week and so are less concerned about publication. In any event, we young people are the futuare! So, regardless of your feelings as an old man, the cultural norms are changing around you.

    1. Kip, this is a reissue. Doesn’t the reissue patent expire on the same day as the original? See, 251(a).

      1. Good point. I don’t the details about when reissue patents expire, but I hadn’t thought of that and have no reason to doubt you.

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