Supreme Court on Intellectual Property

The Supreme Court agreed today to hear four new intellectual property cases this session: Two patent cases, a copyright case, and a trademark case:

  • Nautilus v. Biosig Instruments (13-369): what is the proper standard for indefiniteness.
  • Limelight Networks v. Akamai Technologies (12-786): Does inducement require underlying direct patent infringement infringement by another as a prerequisite to liability.
  • ABC, Inc., v. Aereo, Inc. (13-461): when does an internet transmission count as a “public performance” under the copyright laws?
  • POM Wonderful v. Coca-Cola (12-761): Who has standing to challenge a food or beverage label as misleading or false under the Lanham Act.

The cases should all be decided by the end of June 2014.

 

106 thoughts on “Supreme Court on Intellectual Property

  1. We need a clear test if the Supreme Court is going to overrule the Federal Circuit’s test. May I suggest that if a claim is otherwise indefinite because it is functional within the meaning of United Carbon Company v. Binney & Smith Co., 317 US 228 (1942), then it be construed to cover corresponding structure, materials and acts as provided by §112(f); and if even then one cannot tell the meets and bounds of the invention because the specification lacks clarity in terms of what the structure is, as in United Carbon, then and only then should the claim be declared invalid under §112(b).We must recognize that Supreme Court has taken a harsher view on functional claims, declaring them indefinite even if they could be construed to cover corresponding structure and equivalents. See, Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S. Ct. 6, 91 L. Ed. 3 (1946). But Congress intended to overrule Halliburton when it passed §112(f) in 1952. Implicitly, this authorizes functional claims but with the construction given them by the statute. It is only when the specification itself does not supply the necessary definiteness that the claim must fail.

    1. Not quite correct Ned – as we have discussed previously.One thing that you are doing is lumping in all meanings of functional claiming – and not all such types are similarly treated. If you remember, the term itself was criticized because (like ‘invention”) it had become such a twisted nose of wax that it was scarcely recognizable.Also, what (legislative) “imprimatur” do you have to simply chose “functional” within the meaning of United Carbon?One must also note that the period of time prior to the 1952 Act was one of the most severe anti-patent time periods from the Supremes (the infamous “the only valid patent is one that has not yet appeared before us” era)

      1. Anon, I think that one of the reasons the SC avoided the issue of 112(b) for so many years was the because the bar thought that functional claiming was a useful way of informing the public of the outer limits of claim scope and that there was no real vice in having this nominal scope while have an much narrower real scope based on the Westinghouse rule. Note the holding in United Carbon was that the claim would not be saved by employing a Westinghouse construction because the specification itself was functional. This is where I think the Supreme court is headed:1) Apply Westinghouse (112(f)); and2) hold the claims invalid if the spec still renders the claim indefinite because of lack of a definitive test, structure, or materials, or in the case at bar, no disclosure whatsoever.

  2. For the record, I don’t think there’s much suspense about the Supreme Court’s answer to the question in Nautilus. As a practical matter, the “insolubly ambiguous” test is meaningless. If a judge wants to “solve” the meaning of a claim term, the judge will do it.The Federal Circuit seems to have a tendency to devise legal tests that completely defang the statute. This “insolubly ambiguous” test is just as bad as the “no other possible explanation” test for finding inequitable conduct. And if Rader could have his way, the test for subject matter eligibility would be “can you imagine it being real or being used.”But for KSR, who knows where the Federal Circuit would have gone with obviousness by now.

    1. “The Federal Circuit seems to have a tendency to devise legal tests that completely defang the statute.”Isn’t that the truth.

  3. Baby seats and car doors, anyone?(well, not baby seats exactly – Othrokinetics, Inc. v. Safety Travel Chairs, Inc. 806 F.2d 1565)

    1. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 U.S.P.Q.2d 1081 (Fed. Cir. 1986).Sized to fit is OK.

      1. “Sized to fit is OK”Please explain why, noting that such is clearly of the same flavor of both functionality and indefiniteness/broadness.

        1. anon, first, I question whether the invention lay in the size of the legs. If not, there is no vice in functionality. Let is not confuse and conflate.

            1. What was new? The vice the Supremes complain about is when the most crucial element, the point of novelty, is expressed functionally. They do not have problems with old elements or where novelty is in a combination. I have quoted you the cases making these distinctions. You persist nevertheless as if the Supreme Court did not address these issues.

            2. “What was new?”The claim as a whole.Period.There are only two instances where claim as a whole does not provide the proper answer (the second one below the line is receiving a deafening roar of silence from the runaway kid.One is Jepson claims. As can be seen at one of the links, Jepson claims have simply (and almost completely) fallen out of use. Are you suggesting that some governmental body other than Congress rewrite the law and make such claim form mandatory, Ned?Jepson (dated – 2009):link to patentlyo.com…Other similar drafting styles on the wane:link to patentlyo.comlink to patentlyo.com…The other incidence where one may look for claim as a whole in a bit more piecemeal fashion is where the elements of the claim just don’t come together.For that scenario, a recent post of mine is well worth repeating:Speaking of Malcolm taint, the concept of ‘aggregation’ would help explain why his pet theory of [oldstep]+[newthought] is such a fallacy, and why he always runs away and/or dissembles when it comes to claims as a whole and integration, why he is always trying to introduce the strawman of claims completely in the mind (when the topic is claim elements in the mind and never a complete claim). Aggregation is the concept that explains why claims of [oldstep]+[oldstep] or [oldstep+[ANYTHING] may well be perfectly patent eligible AND patentable claims, as the concept distinguishes between collections that merely are unconnected and lumped together and collections that are integrated. His fallacy relies on the “+” always being an aggregation when clearly that is simply not so.

            3. No doubt that if new functionality is provided, the parts are not unrelated.However, regarding 112(b), the courts do distinguish been old and new elements and combinations. In Ives, cited elsewhere in this thread, was an improvement of an old machine where the old elements were broadly recited. That was OK because the invention was not in the details of the old elements:”The defendants insist, however, that Hamilton’s patent is defective for not clearly describing the position, perpendicular or otherwise, in which the curved guides should be placed; and that, if any required position can be inferred from the patent, it is a perpendicular one, whilst the guides of the defendants’ saw are inclined at a slight angle to the perpendicular. As to the alleged defect of the patent, there is nothing in the objection. The invention claimed is an improvement on an old machine, and it is properly taken for granted that the practical mechanic is acquainted with the construction of the machine in which the improvement is made; and nothing appears in the case to show that any peculiar position different from that of sawmills constructed in the ordinary way is necessary to render it effective and useful. The essence of the improvement has nothing to do with the precise position of the guides. It is a combination of mechanical means to produce a rocking motion of the saw; and this combination is just as applicable to guides that have a slight inclination as to guides that are perpendicular. We think that there is no ground for either branch of the objection. The description in the patent is sufficiently specific; and the inclination of the defendants’ guides cannot exempt them from the charge of infringement.” Ives, 92 US 426 at 430.

            4. the concept of ‘aggregation’ would help explain why his pet theory of [oldstep]+[newthought] is such a fallacyAggregation is the concept that explainsClassic, TB. He comes up with some random term and asserts that the term is what proves other people wrong (see also “arthropanomorphication!” etc etc).Learn to write an argument, TB. Then come back here and try again. Better yet, just stop pretending that there is a claim in the form [oldstep]+[newthought] that is eligible for patenting. There isn’t any such claim because all claims in that form are effectively claims to the new thought itself. This is plainly (and, at this point, painfully) evident when one considers the claim from the viewpoint of the literal infringer who is practicing the prior art step and thinking the new thought. And that’s why Prometheus came out the way it did (i.e., in favor of the defendant).This has been explained to you hundreds of times already. Deal with it.

            5. “Learn to write an argument”LOL – why? Because you say so? How oh so very Carroll of you, Malcolm.As it is, my arguments are more than adequate. Why? Simple, because you have not been able to refute a single one of them.Deal with it? LOL – Why? Because you say so? How about you deal with what the law is here and now? What’s that? Running away again? LOL – so typical. Don’t forget to throw out one of those vacuous “Kenneth’s or *clicks* or something.

            6. Deal with it? LOL – Why? Because you say so?No, not “because I say so.” I explained why you need to deal with it in terms that a fourth grader could understand.

            7. LOL – wrong (again) Malcolm.You have explained nothing. You have merely vomited your typical nonsense – without addressing any of the counterpoints raised.

            8. “He comes up with some random term and asserts that the term is what proves other people wrong”I know right? Because he can make up a new term the other person HAS to be wrong!

            9. LOL – what a lemming 6. Try again – my terms are not ‘random’ in the least. Try (unlike Malcolm, who simply runs away screaming some inane phrase). to actually address the merits I present.

            10. What does randomness have to do with what is under discussion? You know, besides being a red herring.

            11. Why are you asking me, 6? The term was used by Malcolm, and you upvoted it.Please tell me that you read the comments you upvote…

            12. You misunderstood his emphasis in his post. His post is not emphasizing the randomness of the words you make up ta rd. It was just an adjective thrown in for dramatic effect.edit:To be clear, if MM wanted to emphasis the randomness of the terms you’re making up he’d have cited to the definitive work on the subject of making up something random and then arguing based thereupon. link to google.com?…

            13. “What was new?”The claim as a whole. Period.That’s ridiculous. We’re talking about patent rights and how to determine who is fairly entitled to them. Pretending that patent claims have no relationship to the prior art is absurd. Likewise, pretending that consideration of the relationship of a patent claim to the prior art is somehow “taboo” (outside of anticipation, evidently) is worse than inane.

            14. The other incidence where one may look for claim as a whole in a bit more piecemeal fashion is where the elements of the claim just don’t come together.”In a bit more piecemeal fashion”? “Just don’t come together”? Are those legal tests? There’s case law on those terms? I assume so given your incessant badgering of people when they dare to discuss policy or their views about what the law “should be.”Of course, you left out another major and important “incidence” where one is required to look at claims “in a bit more piecemeal fashion”: when the claim recites ineligible subject matter, e.g., “instructions” or “mental steps.”

            15. LOL – Simply wrong Malcolm – as evidenced by your tendency to kick up dust with a strawman and try to talk about claims ENTIRELY in the mind (when no one else does so).Further, you have admitted that items less than a full claim CAN recite what – IF were an entire claim would be patent ineligible – but no one else is so discussing such claims in the entirety of mental steps. – and no, your attempted conflation of “instructions” is NOT merely exchangeable with “mental steps.” – You know precisely why, right? That one might involve you not running away (lol, what a coward).You are so completely wrong – mindstaggeringadd: “Are those legal tests?” – LOL , well you were the one who jumped at giving the link to the Office takeaway from the Prometheus case – without even reading that link and how the Office expounded on integration, or “coming together.” Your penchant for Self-Fail is only surpassed by your desire to kick up dust and obfuscate as clearly, ipsis verbis is not required, and your asking here for ‘same terms” is an extremely feeble effort at clouding the issue.Further, you once again confuse wanting to talk about policy, and/or the feelings of how you want the law to be, with the way you go about talking about such. Why the dissembling when it comes to how the law is now? All you have to do is be intellectually honest about that – and yet, you consistently play your pathetic games of name-calling, innuendo, “Kenneth”, misstatements of law and fact and what others post and the notorious Accuse-Others-Of-That-Which-You-Do gamesmanship. You might try (instead) being upfront about the basics and first principles of law. You might try acknowledging the facts involved with software.Of course doing so will paint your agenda as the p1$$poor attempt at changing policy merely ‘because you want it so.”

            16. you have admitted that items less than a full claim CAN recite what – IF were an entire claim would be patent ineligible – but no one else is so discussing such claims in the entirety of mental steps.This may be the least intelligible thing you’ve ever written. Congrats.

    2. I actually think Nautilus is even less questionable than Orthokinetics was, since the functional recitation in Orthokinetics is dependent upon an undefined characteristic not under the control of the inventor (or the potential infringer, for that matter), which is an issue that seems not to be present in Nautilus.

      1. But, APoTU, was the size of the leg all that material to the invention? Could the claim have just said “leg” without explanation as to its size and still have defined the invention because the novelty did not like in the size of the leg, but elsewhere? It is very odd that in that one would describe the size of any component of a patentable combination unless that size was material. But folks do it all the time.

          1. Well anon, I agree the size of the legs was important. The fact that the leg size varied with the car did not make the claims indefinite. The cases cited extend back in time to this case: Minerals Separation, Ltd. v. Hyde, 242 US 261 – Supreme Court 1916http://scholar.google.com/scho…”Equally untenable is the claim that the patent is invalid for the reason that the evidence shows that when different ores are treated preliminary tests must be made to determine the amount of oil and the extent of agitation necessary in order to obtain the best results. Such variation of treatment must be within the scope of the claims, and the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter. 271*271 The composition of ores varies infinitely, each one presenting its special problem, and it is obviously impossible to specify in a patent the precise treatment which would be most successful and economical in each case. The process is one for dealing with a large class of substances and the range of treatment within the terms of the claims, while leaving something to the skill of persons applying the invention, is clearly sufficiently definite to guide those skilled in the art to its successful application, as the evidence abundantly shows. This satisfies the law. Mowry v. Whitney, 14 Wall. 620; Ives v. Hamilton, 92 U.S. 426, and Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 436, 437.”

            1. So……It appears that the function is satisfied and the actual hard core, hard number is allowed to ‘float’ (after all, an infinite variety is a pretty big float)(and yes, I notice that you have attempted to move away from the “functional claiming” battle-cry you were trumpeting and now merely want to ‘spin’ the claim as some (non) fixed tangible item – not nearly as clever as you might think, there Ned).I think that once again we go in a full circle with the courts (Court) on this topic – as I pointed out on the September 21 thread (in relation to the attempted hook on the word “particularity.”As it turns out, words themselves simply have an uncertain degree of elasticity. Heaven help us if we must rest on what judges (and justices) think is “reasonable” as the invitation to play with the nose of wax will only result in a mashed nose ripped from the face of justice.

            2. Some experimentation is allowed. But the specification must guide the experiment — tell one what is important in the variables.Also, as the Ives case makes clear, it makes no difference if the old parts of a machine are described without any detail at all. In that case, it made no difference to the invention whether the guides were perpendicular or angular.

            3. “Some experimentation is allowedWe are again back to what I posted above: the function is OK and the actual hardcore number is allowed to be anything (i.e. infinite choices, or, in the case you yourself presented, infinite different ore combinations)Your battle against functional claiming just took a mighty (self-inflicted) blow.

          2. Check this: Ives v. Hamilton, 92 U.S. 426 (1876)”The defendants insist, however, that Hamilton’s patent is defective for not clearly describing the position, perpendicular or otherwise, in which the curved guides should be placed; and that, if any required position can be inferred from the patent, it is a perpendicular one, whilst the guides of the defendants’ saw are inclined at a slight angle to the perpendicular. … The essence of the improvement has nothing to do with the precise position of the guides. It is a combination of mechanical means to produce a rocking motion of the saw; and this combination is just as applicable to guides that have a slight inclination as to guides that are perpendicular.”Now, what have I been saying about the fact that the novel feature of the invention must be indefinite or functional. If a part that is old is stated broadly, or without definition, that is no vice.

            1. Cite a more recent Supreme Court case that states that the issue of indefiniteness must be taken as the claim as a whole. I am sure you can do so with respect to 103, because that is what the statute says. But 103 does not apply to 112, not at all.

            2. You do have a small point Ned – a claim can surely fail for indefiniteness when an element within a claim fails to be definite.HOWEVER – that is a far cry from what you are trying to do: you are trying to import ‘invention’ or a facet of novelty (even your favorite buzzword “Point of Novelty” gives you away) under the guise of 112. I invite you to read that section of Prometheus again in which the Justices throw out the “WHATEVER” style of argument that one section (even though that section may have some similarities) can do the work of another different section.Quite simply, indefiniteness fails for attempting to change the rules for functional claiming.

      2. On the contrary, APoTU the arrangement of the electrodes to be grasped by the hand was critical to providing that the EMG signals from each hand be of equal amplitude. The specification itself is silent on how to do this, what the materials of the electrodes must be, how far apart they must be, whether they be should be adjustable, etc. It is puzzling that the patent office allowed the claims over prior art that showed exactly the same structure as being claimed: spaced electrodes for each hand connected to a differential amplifier. The specification of the patent did not describe anything special about the spacing of the electrodes, their size or shape, their materials or anything else. And yet the inventor was allowed to file an affidavit stating that in making production apparatus they had to be careful about the spacing, materials and other such so as to obtain equal EMG signals from each hand. And further given the testimony of the other expert that the EMG signals of each hand were different in the ordinary case, and probably differed from person-to-person, how apparatus could achieve zero EMG signals without being adjustable in the device sold is not explained. The specification simply showed uniformly spaced rings on the handlebars. Clearly, there was no disclosure in the specification of how to obtain zero EMG signals from each hand.I suspect that one given the disclosure that obtaining zero EMG out of the differential amplifier was the objective could make the adjustments and eventually obtain a configuration where the EMG signals out of the amplifier would be approximately zero. But how one could do this with fixed spacing still is uncertain given that the testimony indicated that this was impossible.

    3. Yeah I was thinking about those sorts of things. This is a very odd case it seems to me, before reading it all the way, to send to the supremes.

  4. Re: Nautilus. I don’t recall this case, and indeed, I don’t think it was previously discussed here on Patently-O. The case is precedential and extremely interesting giving its discussion of a functional limitation an not being indefinite.Can we ask, perchance, that Dennis take a look at this case and give us his views on it so that we can properly discuss it?

    1. I don’t recall this case, and indeed, I don’t think it was previously discussed here on Patently-O.It was “discussed.” And you were there.link to patentlyo.com…Granted, it wasn’t a very interesting “discussion” so you shouldn’t be surprised that you forgot about it. ;)

      1. Thanks, 6, but while there is discussion of the Supreme Court law on definiteness, there is no discussion of the case itself. That is why I did not recall it.Sent from Windows Mail

  5. ooooo snapalicious! “(1) Whether the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations – so long as the ambiguity is not “insoluble” by a court – defeats the statutory requirement of particular and distinct patent claiming”Obviously, but then we have the presumption of validity (which needs to be repealed and reinstituted to only do the job it was supposedly supposed to in the first place about the burdens). “whether the presumption of validity dilutes the requirement of particular and distinct patent claiming.”Great question! Can’t wait!

    1. I agree: good questions. Sometimes one cannot believe how much time can pass, without such questions being asked and answered.Given that mere words can never define patentable concepts with 100% clarity, no claim has ever issued that is 100% definite. So no wonder the Fed Ct’s test is the “insoluble” standard. Anything lower, and every patent dispute would be mired in argument about definiteness. This worry, by the way, is why in 1973 Europe excluded indefiniteness as a ground of attack on the validity of any duly issued claim. The absence of that attack has done no harm. The European Founding Fathers were right to resist its inclusion in the European Patent Convention. Articles 52 (eligibility) 54(novelty) 56(obviousness), 83(sufficiency) and 123(no new matter) are all one needs to do the validity Business. Infringement courts are more than capable of construing unclear claims. They have had years of practice at it!.Of course, courts in Europe are not burdened by the “clear and convincing” standard. If a claim is, on the preponderance, not valid, it gets to be declared invalid. This encourages thoughtful and cautious claim drafting, a boon for legal certainty.

      1. “Sometimes one cannot believe how much time can pass, without such questions being asked and answered.”It’s absolutely preposterous. I blame the CAFC just quietly monkeying around for decades with no real oversight and no outrage from the bar since to them, all was in their favor, there’s literally nobody to stand up for the law if the bar sits on its hands. Unless of course you finally get an accused infringer with $$$ and a chip on his shoulder.edit: omg best story ever! Three huzzahs! link to en.wikipedia.org

      2. I wish we had the briefs before us to see the arguments. But the problem in this case was that the novelty apparently lay in a functional requirement that a spaced relationship be such that the EMG signal sensed from spaced electrodes grasped by each hand be the same. How one did this was not described. The prior art had a similar spaced relationship. The patent owner apparently got the patent through reexamination by showing that the spaced relationship of his claim was different than the spaced relationship of the prior art by conducting experiments. However, the test he used was not described, nor did he describe what he did to conduct his experiments.

        1. The patent owner apparently got the patent through reexamination by showing that the spaced relationship of his claim was different than the spaced relationship of the prior art by conducting experiments. However, the test he used was not described, nor did he describe what he did to conduct his experiments.This is exactly the sort of “post-filing” submission that should never, ever have been permitted to rescue a claim. The plug should have been pulled right there. Instead, the defendant in this case is forced to spend … how much money do you suppose? They are probably well past the million dollar mark already. And they won’t be able to get the money back because, hey, this went all they want up to the Supreme Court so they could tell everyone the right words to use to understand why this patent is garbage.

      3. MM, but you do make claims more definite in the sense of 112, p.2, by segregating the old from the new in the claim.Beyond that, the problem we have is with functional claims. Every Supreme Court case on this topic dealt with a functional claim, every one.

    2. 6, you appear to me to be just a person that is cheering the burning of Rome. All your posts can be summarized as burn baby burn.

      1. Burn baby burn! To be clear NWPA, I’m just not a patent maximalist. People with legit inventions will continue to get valid and sometimes infringed claims and I will not weep one tear, not one, for people who cannot be bothered to draft properly. 99%+ of my applicants have no problem eventually getting to some claims that are crystal clear under mines skilled guidance, so none of them have much to fear from this. The people that do have something to fear from this are the people that 112 2nd was aimed at in the first place.

  6. Nautilus Issue: (1) Whether the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations – so long as the ambiguity is not “insoluble” by a court – defeats the statutory requirement of particular and distinct patent claiming; and (2) whether the presumption of validity dilutes the requirement of particular and distinct patent claiming.

    1. This seems like a horrible case for deciding those questions, because as near as I can tell, the fact pattern doesn’t support that question. I wouldn’t even have rejected that claim as being indefinite, since I would have just interpreted “spaced relationship” as meaning there was some space between the two electrodes. The CAFC notes that it’s not “insolubly ambiguous”, but I don’t think it’s any sort of ambiguous at all – just really broad.

      1. Just read the case (for the first time) and I think it very interesting. The novelty was in the functional limitation in the claim that required the EMG signal to be equal at both hands so that it could be removed using a differential amplifier. The patent owner convinced the PTO in reexamination to allow the case over the prior art based on linking the spaced relationship to this functional limitation. The prior art apparently had a similar spaced relationship, but did not reduce the EMG signals to zero. Why it did not do so was not clear to me. In reexamination, the patent owner relied on an expert opinion that one could determine the proper spaced relationship to reduce the EMG signal to zero. He conducted an experiment that showed that the claimed apparatus reduced the EMG signal to zero, and that the prior art did not. But how he conducted the experiment apparently was not described. Thus we really do not know what spacing is required to infringe an why the prior art does not infringe.I find it puzzling that the Federal Circuit did not affirm the district court that the claims were indefinite.

        1. “I find it puzzling that the Federal Circuit did not affirm the district court that the claims were indefinite.”Why did they say? I haven’t read it yet.

          1. “In addition, a skilled artisan could apply a test and determine the “spaced relationship” as pertaining to the function of substantially removing EMG signals.”—–The lower court held that spaced relationship was indefinite because the patent didn’t say what would constitute it. CAFC found that while spaced relationship in itself wasn’t enough, that the functional limitation sufficiently limited it. i.e. the claim required any spacing small enough to be grasped by the hand yet large enough to achieve the functional result of reducing the EMG signal. Because a skilled artisan would know whether a) there was space between something and b) whether the EMG signal was gone, they knew the bounds of the invention.The case isn’t all that interesting IMO because the CAFC gives the game away (see mid pg. 17):[The district court asked] “Should it be half inch, one inch, two inches, three inches?”…Moreover, the district court found nothing in evidence that provided how a skilled artisan would have determined the appropriate parameters yielding the necessary “spaced relationship” as recited by the ’753 patent: “[W]hat [the expert] says is that through trial and error , which he doesn’t describe, one can find a spaced relationship. That may be. But there’s no description.” These inquiries however miss the mark in this instance because they do not support an indefiniteness analysis. ——-In other words, someone should have sounded 112, 1st, not 2nd. The mistake is understandable, as functional claiming makes those issues to appear to be indefiniteness.Opinion: link to cafc.uscourts.gov

            1. Funny how small the world is. Even as we write, the EPO jurisprudence (after 30+ years of dithering around) is only just now getting its act together, on the proper way to distinguish what is insufficiently disclosed (Art 83, EPC) from what is not clearly enough defined (Art 84, EPC). Just because a claim is broad, or because its ambit includes areas not enabled, or because there is a puzzle at the periphery of the claim, as to what’s in and what’s outside the scope, is not sufficient to condemn it as unclear/indefinite.Flavour of the month, it seems, both sides of the Atlantic.I commend to readers the discussion:link to k-slaw.blogspot.de…in the K’s Law blog about the European notion that the more unclear a claim is, the stronger had better be its defences against prior art attacks on its validity.

            2. link to k-slaw.blogspot.de…in the K’s Law blog about the European notion that the more unclear a claim is, the stronger had better be its defences against prior art attacks on its validity.No doubt. And it’s critical for the courts to recognize that all of these issues are related. Analyzing something like “indefiniteness” in a vacuum makes no sense. That’s because to the extent a claim term is indefinite, it will almost always be non-enabled for the “possible” scopes that one could ascribe to it (if one tries to “solve” the ambiguity).The problem with the Federal Circuit’s jurisprudence is there not such thing as an “insoluble” claim term. If a judge decides that he/she can define the claim scope, then voila! the “ambiguity” will be solved. And if judges are allowed (as some judges believe they should be) to look at “examples” in the specification or extrinsic evidence to come up with vague terms that the applicant chose not to define (or forgot to define) and include in their analysis which of those constructios is the “enabled” construction, then we have left the reservation completely. Claims will have no purpose.There is nothing wrong with having a requirement for definiteness in claim drafting. There is also nothing wrong if there is some overlap in the analysis of what constitutes “indefiniteness” and what constitutes “non-enablement” and what constitutes “possession” and, for that matter, what constitutes an attempt to claim an “abstraction.” The only people who object to that overlap are patentees. Do you know why? Because once you remove the overlap, you’ve got a loophole.These are the same loopholes exploited by the “computer-implementer” types. That’s why they can’t stand 101 standing for anything other than a purely technical requirement to include the words “process” or “composition” or “device” in the claim. And that’s why their heads will explode once the Supreme Court (and other courts) starts putting their games to bed by learning to focus on all of the 112 issues, first and second paragraphs, raised by functional claiming, in addition to obviousness and 101. Whack a mole is pretty easy when there’s a big hammer above all the holes. Of course, that assumes that Examiners and jurists are capable of holding more than one hammer at a time. It’s pretty easy for most of the rest of us.

            3. An interesting take, but idk about there being no WD. I’m also not entirely sure why you’d need to give a detailed wd regarding the spacing. Seems like a weird case to me. I’ll check it out.

            4. 6, there is nothing in the patent that says there is something significant about the spacing and that is why the patent reduces EMG signals to zero and why the prior art does not. The inventor describe that they actually had to tweak the configuration and materials in real devices to get the EMG signals to zero. He said he did it, but not what he did. He still kept what he did a trade secret.It appears that the non disclosed adjustments were more than best modes, they were the invention.

            5. “He still kept what he did a trade secret.”In other words, this all boils down to a possible WD/best mode problem?

            6. Best mode certainly. Written description? Well if the claim itself provides written description, the claim itself was in the patent as filed. Enablement? Arguably one of ordinary skill can figure out how the reduced EMG signals to zero. But there is no description of how to do it in the patent.I don’t see why section 112(b) is not the right choice.

            7. “Well if the claim itself provides written description, the claim itself was in the patent as filed. “That’s what I figured likely happened.

            8. Apparently, even the patentee’s expert had to use trial and error to find the spacing. The CAFC said the spacing was defined as within the range of a hand and yet wide enough to produce the result, but that’s a post-facto look at it. That will help you take a possible infringer and see if it meets the claim bounds, but how does one sitting with the claims know what width he’s not allowed to build? He doesn’t. That’s why trial and error was needed. That’s why there’s no enablement/WD.

            9. Random, but the prior art also had two spaced rings connected to a differential amplifier in the same way as the patent. Why is it that I cannot adjust the prior art in the same manner?Thus, we have two patent that cover identical structure and electrical connections. The specification of the later patent has no discussion of any particular technique to reduce the EMG signals to zero. If it did, I think, there would be no problem.How in the world was this patent allowed? It allegedly taught adjustment to reduce the EMG signals to zero, but in fact, had no such teaching at all.

            10. It had a claim to a function that did not previously exist in the art. The function was nonobvious. That caused it to overcome 103. That is the de facto reason it was allowed.Whether the specification provided an enabling disclosure? That’s something that a) is easily argued at length, b) is so case specific a board could go either way and c) takes a lot of time to write up. In other words, why would an examiner write up an enablement rejection?Why was it kept up in re-exam? Because re-exam requires a new issue with new art. The new art went toward obviousness, not enablement.If you’re wondering why any function can slip by the office regardless of how well it is enabled/described, well now you’ve hit on something, haven’t you?

            11. The structure existed in the prior art. Some might argue, that the “property” of providing equal EMG signals was inherent because the structure was the same.There was nothing at all in the specification that suggested that there was anything special about the structure that contributed to producing equal EMG signals from a hand grasping them.

            12. My understanding, and I didn’t read the prior art so I could be wrong, but my understanding was that the prior art had spacing, but not spacing that causes the function. The function was an additional limitation that made it non-obvious, right?

            13. There were differences between the specification and the prior art — but none of this was in the claim. The claimed structure was identically disclosed in the prior art — identically.Now, when one distinguished two identical structures by the discovery of an inherent property of the structure, there still is anticipation.Had the patentee limited his claim structurally, I think he may have something valid. But otherwise, I think the PTO failed.

            14. Ah I see what you’re saying, again I dunno but it sounds like you’re misunderstanding.Not all spacing causes the function to occur, only certain types of spacing. In other words, the functional language was not describing an inherent property of spacing (in which case I agree the prior art would be anticipatory) but instead was limiting the types of spacing that were covered, which is a structural limitation. This is why the expert had to try so many times to get the right spacing – not all spacing did it. Thus it wasn’t an inherent feature but a limitation that further defined the possible structures and (again without seeing them) the structures were probably not identical between the prior art and the claimed invention.Likely what happened was the prior art claimed all spacing (which allowed ECG to be captured) and the patent-at-issue claimed particular spacing because it not only allowed ECG to be captured but removed the EMG noise. Right?

            15. Let me explain. The specification described the physical structure of the grips, and the electrical connections. There was NOTHING in the specification that suggested there was anything special about any of this. The specification did not link any structure of the contacts, or the spacing between ground and signal contacts to any difference in measured EMG signals. The electrical connections themselves were identical to the prior art: a difference amplifier connected to a band pass filter.What was different from the prior art, and what alone was different, was a statement in the claim that the EMG signals WERE equal. The specification did not say anything about adjusting the spacing to make this so. The prior art showed two spaced conductors connected in the same way to a differential amplifier and a band pass filter. There were difference, namely the spacing and the form of the conductors was different. But the patent’s spec. did not say these were significant.The expert testimony showed that the patentee had to make a lot of adjustments, not described in the patent, to get the EMG signal to zero. These included adjusting the spacing and adjusting the material of the contacts. Other expert testimony stated that the EMG signals from each hand were different. This would require, it seems, some adjustment of spacing, conductor configuration or materials, to accommodate. But the EMG signals could be expected to vary from person to person and from at rest conditions to excited conditions.The testimony showed the prior art worked for the at rest conditions, but not so well after that. But the claims did not distinguish between at rest and excited.All told, testimony showed that one could get the same EMG signals from each hand, but one had to adjust the spacing and material, but even then, EMG signals varied according to whether the subject was at rest and when he or she was excited.None of this variation was disclosed.Remember, this is an apparatus claim, not a claim to a method of adjusting the spacing, configuration or materials of the conductors to achieve equal EMG signals. Nevertheless, that is WHY the claims were allowed.But the question still should be asked is why the prior art configuration, which was identical as claimed, could not also be adjusted in a manner not described in the specification but which was known to the art?All told, there was a failure of disclosure, a failure to tell us just how one could achieve equal EMG signals, or what was even important in doing so.

            16. All told, testimony showed that one could get the same EMG signals from each hand, but one had to adjust the spacing and material , but even then, EMG signals varied according to whether the subject was at rest and when he or she was excited.None of this variation was disclosed. If the spacing required adjustment, then there was no inherency. Inherency requires a necessary result. It sounds like the prior art had spacing, and this art had particular spacing that gave a particular result. Because there was a more particular spacing requirement, there was a different required structure. The different structure was arguably non-obvious and led to the patent. It seems like you get this. But the question still should be asked is why the prior art configuration, which was identical as claimed, But we just agreed the prior art configuration isn’t identical. could not also be adjusted in a manner not described in the specification but which was known to the art? There is ample evidence to show it wasn’t known in the art, that’s the point. Had the adjustment been obvious, the patent wouldn’t have issued. Had the adjustment been known, the expert wouldn’t have needed to use trial-and-error.Instead what happened is the applicant claimed a difference, which the art wouldn’t have known how to make occur, and proceeded to fail to teach how to make the difference occur. It was a failure of enablement and written description.There is no anticipation or obivousness rejections because the prior art just required spacing, and this required a particular spacing, and that spacing would not be obvious to one of ordinary skill in the art.There is no indefiniteness rejection because it is clear what it covered: any spacing that results in a cancelled out EMG.But if one of skill in the art doesn’t know how to find spacing that cancels out the EMG, and it’s not obvious, they have to look to the spec for it. The spec fails to teach. This is an enablement and written description rejection.The CAFC basically said that this claim would fail under 112, 1st. Unfortunately, the issue before them was 112, 2nd. 112, 2nd, at least under the CAFC’s test, was met. Therefore they upheld the validity with respect to indefiniteness . That doesn’t mean the patent is valid though, and it seems like you understand why.

            17. Random, you need to understand that there was no particular spacing claimed, and there was nothing in the specification that suggested that spacing was important to reducing EMG signals. We got all THAT from experts. Had what the experts said been written into the spec., it would have been new matter.

            18. Lets say claim 1 is directed to a door:Claim 1 – An apparatus comprising: a wall, a hole in the wall, a rectangular door substantially fitting the hole in the wall, whereby the door, when operated, allows Lebron James to pass thru it while standing fully erect.Claim one limits the door to a structure that it must substantially rectangular. But not all rectangular doors meet claim 1, since the door cannot perform its function if it’s not at least 6′ 8″. Therefore the structure required of claim 1 is a rectangular door of at least 6’8″. Remove the Lebron functionality and the scope of the structure changes.Claim 1 in the patent claimed a spaced electrodes that can be grasped to make a first signal and a second signal, the signals are of substantially equal magnitude and that when the signals are applied to each other they produce a substantially zero signal. In other words, the spacing is particular because the spacing:1. must be placed so they are graspable2. must be placed so that they generate two signals of equal magnitude and phaseThat is particular spacing. Its no different than saying “place the two electrodes six inches apart from each other and place a mirror set an equal distance from the center of the machine on the other side. Two or four inches apart also works.” which would also be particular spacing. there was nothing in the specification that suggested that spacing was important to reducing EMG signals Again, that’s why it unenabled.

            19. Compare the door of the claim to the prior art door of the exact same structure. Is the door patentable if I claim a particular size? (Hint, our first statutes actually stated that a particular size of an apparatus was not invention.)The claim to the spaced electrodes reads on prior art showing exactly the same thing. The claim states the EMG signals ARE equal, but suggests nothing about adjusting anything to make them equal. They are assumed to be equal. Under these circumstances, what does one assume about the prior art? I can tell you — that its structure TOO produces equal signals.

            20. Then explain why the expert couldn’t induce the equal signals without trial and error?The signals ARE equal only when the spacing is particular. Is the spacing limitation met via the prior art? Yes. Is the functional limitation met by the prior art? No.

            21. Random, then you would agree that the claims were enabled?As to the prior art, no one even tried to manipulate them. As well, the disclosed configuration had to be adjusted to work.I think 112(b) is the right call here.

            22. Why would they be enabled when the required function couldn’t be achieved without undue experimentation?

            23. I should point out, btw, that this is a problem with a lot of patents: They have to shoot through the two competing provisions. On one hand, they can’t claim so far left that their claim includes the obvious. On the other, they can’t claim so far right that they haven’t enabled the scope of the claim. They have to shoot the middle. The width of the middle is determined by the breadth of the teaching in the specification. When they specification has no teaching, there is no “there” there – there’s no area that the applicant can claim that doesn’t fail one of the two tests.You’re thinking they shot too far left – that it’s obvious. In fact, they shot too far right – it’s unenabled. The expert’s testimony proves it.There’s a substantial amount of patents which teach so little that they really have no area they can hit that isn’t either obvious or unenabled. In my experience, the office fails to find these patents because they don’t properly bound the enablement side. They make sure it’s non-obvious, but fail to check enablement.

        2. That sounds like more of a matter of enablement than indefiniteness, though. If you position your electrodes so it cancels out the EMG signal, then you infringe.

          1. Exactly – as so often happens, it appears Biosig tried to claim the ends without expounding on the means, creating a 112, 1st issue.

          2. That sounds like more of a matter of enablement than indefiniteness, though.It sounds a little like both, which isn’t surprising nor should it be troubling. An indefinite claim is almost always also going to be a non-enabled claim. But courts should not be able to “solve” inherent, critical ambiguity in a claim by deciding “what’s enabled.” The purpose of drafting claims will become lost if that is permitted.

            1. What’s ambiguous though? If you shove a device in front of a jury and give them the EMG reading they’ll be able to determine whether the physical spacing and EMG cancellation exists. Note that the concurring opinion thinks the functionality shouldn’t even be considered and that even a lay person can see whether there is space between something.The fact that in order to make the infringing device one had to engage in undue experimentation (i.e. blind trial and error) speaks only to 112, 1st, not 112, 2nd. This is kind of the exact opposite as solving ambiguity by deciding whats enabled – instead the trial court was so confused by how unenabled it was that he mistakenly let it bleed into indefiniteness.

            2. the trial court was so confused by how unenabled it was that he mistakenly let it bleed into indefiniteness.That’s not “confusion” so much as a recognition that the claim term is so jacked that it fails under multiple prongs of the patent act. For similar reason, it’s entirely possible for a claim to be indefinite, non-enabled, obvious and ineligible.Those who habitually defend or refuse to acknowledge the existence of junk patents (not referring to you, necessarily) will always complain that the wrong test is being applied. Then when you try to apply the other test, they’ll come up with some reasoning that the other test doesn’t apply to that kind of claim term. That’s called “finding a loophole.”That’s the game played by applicants (e.g., the “computer-implementers) who depend on functional claim language to get their claims past the USPTO. On one hand, they’ll tell you that the claims are definite because “anyone” can “test” the alleged infringing device to see if it has that function. On the other hand, it’s enabled because the “structure” is immediately discernable to the skilled artisan (but they’ll never tell you what those particular structures are, because they can’t). And on the other hand, the invention is never obvious, because the prior art (which uses the same terms to describe the functionality) isn’t enabled because … programming is really hard and who knew that computers could be used to process information? It’s a transparent game. Only the USPTO is apparently still too dense to figure it out.

            3. ” entirely possible for a claim to be indefinite, non-enabled, obvious and ineligible”LOL – WHATEVERAdd:” will always complain that the wrong test is being applied. Then when you try to apply the other test, they’ll come up with some reasoning that the other test doesn’t apply… “finding a loophole”"(sigh) you got that all wrong, of course, Malcolm. It’s not that the test itself (any of the tests) is the wrong test – it’s that you attempt to apply each test in such a slipshod “sniff” manner that your applications are being panned – once again, it is not that you disagree, it is in HOW you disagree.You simply post vacuous CRP (Kenneth anyone?) and run away and hide from any discussion of first principles. The fact that you accuse others of being cowards when you perceive others of doing what you so rampantly do is simply beyond irony. That you pretend that such behavior of yours does not absolutely nullifies ANY position you want to advocate is rather quaint.

            4. It is entirely possible for a claim to be indefinite, unenabled, undescribed, anticipated, obvious and ineligible all at once. This is not that claim.

            5. The fact that in order to make the infringing device one had to engage in undue experimentation (i.e. blind trial and error) speaks only to 112, 1st, not 112, 2nd.That’s one way of looking at it. The other way of looking at it is to say “in order to understand the identity of the useful, working invention that the PTO believed to be worthy of a patent, one had to perform an experiment.”That speaks to 112, 2nd. Same issue, same fatal problem, just a different way of looking at it.

            6. The experimentation occurred in the creation of an embodiment. The identity was determinable without experimentation – the artisan needed only hook up a monitor and read the result. If a patent required cutting wood within a tenth of an inch you would still need a ruler to determine infringement…

            7. Good points, RG. I hear you.The experimentation occurred in the creation of an embodiment.Sure, but that experiment was deemed necessary because the Federal Circuit has slowly but steadily fouled up the rules by which claims are construed so that claim terms may be read more narrowly than they plainly appear, i.e., by reading broad terms to cover the “actual invention” instead of reading them as they would be ordinarily understood.Note that this yet another reason why the PTO should be rigorously applying the “Broadest Reasonable Interpretation” to claims, not just for the purpose of evaluating the relationship of the claims to the prior art but for all purposes (112 especially).The “inventors” who complain about BRI are the same folks who want to be able to claim their inventions as broadly and vaguely as possible, using purely functional language. They want to cover “everything that works” but they don’t want to describe in detail a single example of that new device. That’s for the little people to do, i.e., the people who do the hard work of designing and troubleshooting and commercializing (usually without knowledge of the patent) and who will be targeted with the lawsuit years later when the “technology has caught up with the industry” and when “monetization” possibilities are at their maximum level.

            8. The “inventors” who complain about BRI are the same folks who want to be able to claim their inventions as broadly and vaguely as possible, using purely functional language. They want to cover “everything that works” but they don’t want to describe in detail a single example of that new device. How correct you are. This is the #1 problem with patents today.I think we just disagree about what rule they’re violating. You seem to admit it’s not indefinite, you know what they’re claiming – They want to cover everything that works. That doesn’t sound like a 112, 2nd issue (unless you’re in means-plus, hey ho Aristocrat) that sounds more like a 112, 1st issue.

            9. “other way…just a different way”LOL – nothing like conflate the H311 out of anything and everything.Throw it all at the wall and see what sticks.

            10. The district court construed the term. The CAFC construed the bound of the limitation – so small it could be grasped by the hand yet so wide it would produce the functional result. There’s no problem with that identity and no experimentation required to define it.The expert had to try over and over to actually create the machine that was ultimately infringing. But he knew immediately upon reading the test result that it was infringing. That’s why it’s a 1st, not a 2nd. A 2nd would have it be the other way around – easy build, but lots of debate as to whether the embodiment falls within the claim language.The first is a nebulous means to a certain end, the second is certain means to a nebulous end. They’re not the same problem at all. That’s like saying waking up in your own bed with a random hooker is the same problem as waking up with your wife in a random hotel room because in both cases something just ain’t right.

            11. Malcolm’s “WHATEVER” philosophy.You need to define exactly what you mean by that, otherwise your statement is meaningless.Everything becomes lostThat’s the sort of hyperbole that you could never possibly defend even if your statement as a whole made any sense (which it doesn’t).

            12. “You need to define exactly what you mean by that, otherwise your statement is meaningless.”…and the irony meter pegs out yet again.(do you ever notice that it is always Malcolm asking someone else to define things – and to define exactly – while he never ever ever** answers questions that ask him the most basic of things, such as those that go directly to the heart of the software patent eligibility discussion?)**with the rare exceptions of when he volunteers admissions against interests, such as when he volunteers that he does know the controlling law in regards to the exceptions to the printed matter doctrine – which is funny that he insists on sticking his head into the sand when he is again later asked the simple question of whether he understands the law or not.

            13. the printed matter doctrineLOL — the very last thing our li’l friend ever wants to discuss honestly.

            14. 1) who is ‘our’?2) You STILL have not answered the very simple question as to controlling law concerning the exceptions to the printed matter doctrine.[add 3) That Malcolm has anything at all to say about "honesty" when he continues to post with such clear deception is beyond belief. That anyone actually upvotes the smarmy comments by Malcolm says more about that person than that person obviously realizes.]Why are you still hiding? CLEARLY, the lack of honesty here is yours.Someone should tell Malcolm that his little “Kenneth” refrain only makes him look more the @$$ than usual. – and of course, his head cheerleader Leopold is right there… oh, so mature /facepalm

            15. You STILL have not answered the very simple”What’s the frequency, Kenneth?! What’s the frequency, Kenneth??!!”

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