Means-Plus-Function: Invalidity Needs Expert Testimony

By Dennis Crouch

elcommerce v. SAP (Fed. Cir. 2014)

Facing another functional claim limitation case, the Federal Circuit here vacated the lower court holding that the means-plus-claims were invalid as indefinite for failing to teach sufficient corresponding structure in the patent specification. Particularly, the court here holds that, in this case, attorney-argument was insufficient to prove invalidity and rather than some amount of extrinsic evidence (such as expert testimony) was necessary to provide the necessary clear-and-convincing evidence.

Patent claims ordinarily recite particular “structure, material, or acts” as elements that both provide for the requisite inventive step and also materially limit the scope of rights. However, since 1952 the patent act has provided an express avenue for drafting patent claims using functional – instead of structural – limitations. Under 35 U.S.C. §112(f), a claim element “may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.” To a lay reader, these means-plus-function claims appear quite broad. For instance a claimed “means for connecting elements A and B” seemingly covers any method or structure that accomplishes the claimed function. However, the statute itself requires that means-plus-function claims be given a much more limited scope. That is, the statute goes-on to say that a means-plus-function claim “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. Thus, to know the meaning of a claimed “means for connecting,” we must look to the patent specification to see what particular connecting mechanisms were disclosed and the scope of the claim would be limited only to those disclosed structures and their equivalents. The result here is that means-plus-function claims typically have a scope that is much narrower than one might expect on the initial reading.

In recent years, a substantial number of means-plus-function claims have been invalidated as lacking definiteness under § 112(b). (I.e., invalid as indefinite). Courts follow the following logic: (a) The statute requires that a means-plus-function element be defined according to corresponding structure found in the specification; (b) If no corresponding structure is found in the specification then the term cannot be defined and (c) is therefore invalid as indefinite.

In this case, the asserted claims are directed to a system for monitoring a supply chain. Representative claim 37 in the case has nine-different means claim elements, such as a “means for monitoring” supply data; “means for extracting” supply data; “means for translating” the data into a common format; etc. As part of its claim construction, the district court found that the specification failed to include any structure for any of the claimed means and subsequently, that the claims were invalid and indefinite. One problem with the district court’s analysis is that it doesn’t come to terms with the reality that “structure” is to be seen in the eyes of one skilled in the art.

Now, the standards applied here are quite messy. We know that patents are presumed valid and, in Microsoft v. i4i, the Supreme Court explained that presumption may only be overcome with clear and convincing evidence. In a concurring opinion, Justice Breyer (joined by Justice Scalia) raised the point that the clear-and-convincing standard ordinarily applies to factfinding and questions of fact and not to questions of law. Justice Breyer writes: “Where the ultimate question of patent validity turns on the correct answer to legal questions—what these subsidiary legal standards mean or how they apply to the facts as given—today’s strict standard of proof has no application.” Ignoring that advice (sub silento), the Federal Circuit has ruled that indefiniteness must be proven with clear and convincing evidence. See TecSec, Inc. v. IBM, 731 F.3d 1336 (Fed. Cir. 2013)(Linn, J.). That conclusion draws its foundation from the 1987 Panduit decision stating that the presumption of validity is applicable to all validity challenges. Panduit v. Dennison, 810 F.2d 1561 (Fed. Cir. 1987) (Markey, J.). Drawing-in the claim construction issue, by statute, identifying the “corresponding structure” of a functional element is a claim construction issue. Such an element “shall be construed to cover the corresponding structure.” And, as patent litigators are well aware, claim construction is also a question of law.

In her opinion, Judge Newman does not address any of the aforementioned conflict except for the requirement that indefiniteness be judged with clear and convincing evidence. With that framework, the opinion notes that the only way “a general purpose judge could ascertain the position of persons of skill in the art and conclude that there is not a shred of support for any of the eleven interrelated means-plus-function claim limitations. . . . The burden was on SAP to prove its case, and in the absence of evidence provided by technical experts who meet the Daubert criteria there is a failure of proof. Attorney argument is not evidence.” Here, Judge Newman’s statement regarding “not a shred of support” goes beyond the clear-and-convincing standard, but her point is made – expert testimony is necessary here.

To be clear, the Federal Circuit does not expressly hold that expert testimony is always required. We do not of course hold that expert testimony will always be needed for every situation.” However, the court does not provide any explanation of when it might not be necessary.

In prior cases, the Federal Circuit has held that claim construction and indefiniteness findings can be made without expert testimony. See, e.g., Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012); Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005). The majority does not address these prior precedents. However, Judge Wallach does in his dissenting opinion.

The issue in this case is whether expert testimony is required to prove indefiniteness of a means-plus-function term when the specification contains no corresponding structure. This court answered “no” in Noah, explaining that expert testimony is not required where the specification contains no algorithm corresponding to each recited function. When there is an identifiable algorithm, however, expert testimony may be helpful in determining whether the algorithm is adequate corresponding structure in the view of a skilled artisan. Id. . . .

Indeed, indefiniteness is part of claim construction, both of which are questions of law. . . . Just as there is no requirement for expert testimony when construing means-plus-function claims to cover the corresponding structure, expert testimony is not needed to hold the claims indefinite when no structure is disclosed.

Judge Wallach’s point parallels what I discussed above – that these are questions of law where expert testimony does not appear to be a requirement. However, his perspective also appears lacking because he essentially ignores the requirement that these questions be viewed from the standpoint of one of skill in the particular area of technology.

118 thoughts on “Means-Plus-Function: Invalidity Needs Expert Testimony

  1. Pauline appears to be in a p*ssing contest with Rader. They seem to ignore each other’s cases.

    The case Ms. Newman ignored, Noah System 675 F.3d 1302, squarely lays the burden of showing corresponding structure (algorithm) on the patentee. Ms. Newman would require clear and convincing evidence that there is not such corresponding structure. The two cases cannot be reconciled. Let me quote from Noah Systems:

    “Means-plus-function claiming involves a quid pro quo. Med. Instrumentation, 344 F.3d at 1211 (“The duty of a patentee to clearly link or associate structure with the claimed function is the quid pro quo for allowing the patentee to express the claim in terms of function under section 112, paragraph 6.” (citation omitted)). In exchange for being able to draft a claim limitation in purely functional language, “[t]he applicant must describe in the patent specification some structure which performs the specified function.” Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042 (Fed.Cir.1993). And, importantly, the functional claim language covers only “`the corresponding structure, material, or acts described in the specification and equivalents thereof.'” Id. (quoting § 112 ¶ 6). Requiring the disclosure of a corresponding structure, thus, “confines the breadth of protection otherwise permitted by” purely functional claiming. Id. (citation omitted); see also Med. Instrumentation, 344 F.3d at 1211 (“If the specification is not clear as to the structure that the patentee intends to correspond to the claimed function, then the patentee has not paid that price but is rather attempting to claim in functional terms unbounded by any reference to structure in the specification.”).

    This court imposed the algorithm requirement to prevent purely functional claiming when a patentee employs a special purpose computer-implemented means-plus-function limitation. Aristocrat, 521 F.3d at 1333 (“The point of the requirement that the patentee disclose particular structure in the specification and that the scope of the patent claims be limited to that structure and its equivalents is to avoid pure functional claiming.”). As we have explained, the algorithm requirement is necessary “[b]ecause general purpose computers can be programmed to perform very different tasks in very different ways. . . .” Id. Without disclosing any corresponding structure, “one of skill simply cannot perceive the bounds of the invention.” Finisar, 523 F.3d at 1341.

    Accordingly, where a disclosed algorithm supports some, but not all, of the functions associated with a means-plus-function limitation, we treat the specification as if no algorithm has been disclosed at all. In such instances, we are not faced 1319*1319 with a disclosure which addresses itself to an identifiable function, but arguably does so inadequately. We are faced with an identifiable function, which all parties concede is claimed, but as to which there is a total absence of structure. We cannot allow disclosure as to one function to fill the gaps in a specification as to a different, albeit related, function. To hold otherwise would allow a patentee to employ generic functional claiming “unbounded by any reference to structure in the specification.” Biomedino, 490 F.3d at 948 (citation omitted). This outcome is impermissible under the plain terms of § 112 ¶ 6.

    For these reasons, we conclude that the district court did not err when it refused to allow expert testimony or other evidence regarding what one skilled in the art would understand from the specification before it construed the “access means” limitation as indefinite, or concluded that summary judgment of invalidity was appropriate in light of that construction.” Noah Systems v. Intuit, 675 F.3d 1302, 1318-19 (Fed. Cir. 2012).

  2. She’s beginning to destroy the pretentious absurdity that non- technical judges can determine the meaning of claims as a matter of “law”.

    I’m still waiting for a challenge to a 103 assertion that the sole measurement must be from a POSHITA — not an “Expert”.

    1. Stuart, hardly. Newman was the author of the recent en banc case that claim construction was a matter of law.

      You cannot have it both ways.

      1. I said she’s “beginning” to deconstruct the fabrication that a person lacking an understanding of a technical subject somehow is endowed with a mystic ability to nevertheless explain the meaning thereof.

  3. What is the definition of “structure?”

    Will anyone here agree on a meaning?

    Will it be, “I can’t actually define it but I know one when I see one.”

    Will it end up being a circular definition that doesn’t mean anything?

    In order to be valid a MPF claim must have a corresponding “structure” in the Specification, so if I want a claim to be valid whatever is in the Specification must be a “structure.”

    1. No one, allegedly, the new structure is the software.

      I have problems with this in that software is not structure. Computers have structure. However, the computer itself is physically unchanged unless the software is made permanent. I give you an example of what I mean by this. Consider the temple and its sacred writings. Is the temple change when the sacred writings are brought in to the temple and executed (read)? I dare say not. But the temple may be changed if those same writings were carved into stone.

      Thus, I would suggest a new machine is not disclosed and may not be claimed with a disclosure of general purpose software that may be loaded and executed, but does not become part of the machine in any why that permanently modifies its structure.

      1. I have problems with this in that software is not structure.

        Ned, explain how one obtains a copyright on software without meeting the statutory requirement that structure exists (fixed in media).

  4. Simply put, it is the patent owner’s obligation to provide corresponding structure. He has the burden to show that it is there, what it is, not the other way around. This is part of claim construction.

    The adequacy issue, essentially, enablement, comes up only if the patent owner identifies corresponding structure in the first place. That did not happen here.

      1. anon, Wallach said it well. The the cases that Newman ignored (and which are controlling law, BTW) require corresponding structure lest the claim be held invalid for functional claiming. That Wallach mentioned this several times shows that finally the Federal Circuit is paying attention to functional claiming.

        In other words, it is the burden on the patentee to show corresponding structure.

        Once that is done, the burden shifts.

        Newman, of course, was the author of Nautilus v. BioSig. This is just another case that should go up. Expect a GVR.

  5. Merits of the decision aside, for prudent counsel this decision practically requires obtaining expert testimony when arguing lack of structure for a means-plus-function claim, which will raise the expense of defensive litigation another notch.

    1. To be accurate, I think the case merely shows that attorney argument is a rather poor way to show the level required under a PHOSITA standard, especially coupled with the erroneous statement of “we don’t have to prove our case.”

      I also think the “it will raise the cost” statement is a FUD boogeyman join the lemming march type of statement – even if the statement is true that providing an adequate defense of your case costs money.

    2. Harvey, this case is inconsistent with a not very old Federal Circuit case to the contrary. It is not good law.

      Moreover, Newman’s prior case on 112(b) is now on appeal to the Supreme Court. Nautilus v. Biosig.

      I would give this case the deference it deserves. It is incredibly wrong on virtually every point.

  6. >One problem with the district court’s analysis is that it doesn’t come to terms with >the reality that “structure” is to be seen in the eyes of one skilled in the art.

    Or a ridiculous Federal Circuit judge whose name is Lourie who all by himself analyzed a complex software system and proclaimed it lacked structure. Or Tarantula who all by himself wiped out the entire field of cognitive psychology where Ph.D.’s work to simulate the mental steps of the human mind.

    What a parade of bozos.

    1. Newman almost had credibility after having authored the recent en banc opinion.

      Then she does this. She refuses to follow binding precedent to the contrary.

      I noted before that this seems to be the pattern of the Federal Circuit judges. If they disagree with precedent, they ignore it.

      That she would do this after having authored an opinion that relied on stare decisis is a wonder.

      1. (sigh)

        Ned with “Newman almost had credibility…

        Ned – anyone (quite literally) has ‘credibility’ with you when they agree with your view – regardless of merit.

        We have seen this with you and 6 (“6 is an Einstein with patent law“).

        We have seen this with you and Malcolm (“Malcolm has swagger and is almost always right“)

        And yet, the two worst people on these boards when it comes to credibility are 6 (law is subjective in the mind and anything goes with such politiks) and Malcolm (intellectual honesty is not required because this is a blog and not a court).

        And you yourself not only have a serious credibility issues (guilt by association – and apparent lack of judgment), but by your repeated tendency to simply run away from discussion points ( I am still waiting for you to discuss things like the Nazomi case, the Grand Hall experiment, the exceptions to the printed matter doctrine, a realistic view that software has structure, and on and on and on).

        I will co-opt a saying from Forrest Gump: Credibility is as credibility does.

        You need to do more than just agree with those that share your viewpoint. You need to face the points that I have made. You need to stop running away.

      1. I can think of some immediate improvements in speech quality – but they tie into posts that would pass the in-court ethics check.

  7. Boy this string of comments is like the march of the bozos.

    Ned’s it’s gotta be in hardware. MM’s blathering nonsense. The ridiculous 2+2 argument.

    What is common with the bozos is that they all seem to want to reduce the information processing invention to something small and unworthy. And, yet, we know that is not true. We know the mighty computer and information processing methods are replacing millions and beating the best humans at many tasks.

    We know from a macro scale that you lot are, well, bozos.

    1. “they all seem to want to reduce the information processing invention to something small and unworthy. And, yet, we know that is not true. We know the mighty computer and information processing methods are replacing millions and beating the best humans at many tasks.”

      This is the third time I’ve seen you trot this out. What does commercial success of a section of the economy have to do with anything?

      Surgeons make a lot of money too and yet patents on surgeries are specifically unenforceable.

      Maybe we should all just stick to the question of whether the requirements in 112(f) were met?

      1. RandomGuy, of course it is relevant. Commercial success goes to non-obviousness for one and usefulness for two. Moreover, the argument being made by the bozo gang is that these are not inventions. Then what are they? New machines that are replacing millions of workers (that is automating their work) and we are being told they are not inventions? =><= . Does not make sense to any person trained in science.

        Also, your ridiculous analogy with surgeries is a non sequitur as usual. You are comparing a person performing a method with a machine automating a person's job. Shameful that you would even compare the two.

        1. Too bad neither non-obviousness nor usefulness are at issue when the question is did the applicant disclose something.

          People can make commercially viable things all day, if they don’t instruct the public how to make it they aren’t getting a patent.

          But that wasn’t the point:

          “Also, your ridiculous analogy with surgeries is a non sequitur as usual. You are comparing a person performing a method with a machine automating a person’s job. Shameful that you would even compare the two.”

          So what? The point was that there is no correllation between making money and whether it is patent worthy. I could trot the Harry Potter series out there for the same principle. Shameful you don’t understand a simple comparison.

          1. Random steps into another beartrap.

            Your question of “So what?” shows that you don’t get the fallacies being trumped up. Rather like your comments that show an absence of what Malcolm vomits on these boards. You operate in this vacuum and you really need to understand what is going on about you.

            That is ‘so what.’

            Yes, you do have a point that a patent is not a guarantee of making money (if that is your point). But you need to understand that you misunderstand what NWPA is criticizing you for.

      2. And, the information processing machines are preforming tasks that no human can perform. And yet we are told by the cascade of bozos that if you tilt your head just right and put both hands below your waist and squint that they are really not inventions, and well they capture laws of nature, or they are abstract, or that they are the devil because they are performing the same steps as a human does (and we now have a holding that merely doing mental steps that people do is easy–what?!!!!).

        Face, machine, information processing machine is an invention.

        1. “And, the information processing machines are preforming tasks that no human can perform.”

          So does Superman.

          You keep talking about things that aren’t in the test as if they’re relevant. Whether an item can do something no human can do is irrelevant.

          How about we define invention, by oh I don’t know, a disclosure that proves the requirements of the statute?

  8. An idle speculative thought strictly for entertainment value. Theoretically this CAFC buck-passing remand could get a very quick S.J. rehearing at the D.C. with the same result by the defendant simply filing a really short expert affidavit setting forth the POSITA qualifications of the expert followed by “I have reviewed all the subject patent’s “means”claim elements against the specification and do not find any corresponding support or disclosure in the specification for any of them for a POSITA.” [Shifting the burden to the patent owner to try to refute that by cross-examination and/or contrary affidavits?] After all, what the CAFC majority is demanding here is expert evidence of specification non-existences.
    [But why not move for an S. J. on the additional ground of non-enablement while they are at it if there really is no spec. support?]

  9. “Per prior case law, an algorithm, when coupled with the processor, provides the “structure” for the means”

    By what mechanism does this supposedly occur in the “prior case law” which this is “per” (aka “by means of” or “in accordance with” lol)? I mean, I don’t mind if this happens, all I’d like is for someone to be like, “yes, this is a legal fiction that a court made up out of thin air for no apparent reason other than perhaps to patent protect”. Because if that be the case, then fine. But it needs to be up front explained to everyone.

    1. By what mechanism does this supposedly occur in the “prior case law” which this is “per” (aka “by means of” or “in accordance with” lol)?

      As you suggest, it’s a fiction made up out of thin air to coddle a certain class of patent applicant.

      But that’s okay with the teabaggers because it allows for more patents to be granted! And their radio silence on the origin of that fiction is how we know that “more patents, all the time, and easier to enforce” is the only “First Principle” that really matters to the patent teabaggers. Their incessant whining about the impropriety of “judicial exceptions” they don’t like is nothing more than self-serving drivel. And now prepare yourself for the inevitable false equivalence …

      1. Except for the fact that real facts and real law have been provided aplenty….

        But then again, Malcolm, you are known well for your “this is a blog not a court so intellectual honesty is not required” methodology.

    2. It’s not a fiction though. There is a structure that one of skill would understand to exist – code stored in a hard drive. Whether it’s claimed broadly or not, there is definitely a structure that exists. A hard drive full of code is different from a hard drive empty in the same way that a bottle full of water is a different structure than a bottle empty.

      1. Random steps closer with “A hard drive full of code is different from a hard drive empty in the same way that a bottle full of water is a different structure than a bottle empty.

        Not exactly true, Random.

        You do know the difference, right? It is a critical difference.

        It is something that Malcolm has volunteered an admission against his interests in knowing.

        It is the exceptions to the printed matter doctrine.

        Those same exceptions that create the legal bridge from ‘mere words’ to a man-made manufacture and machine component that, as a category, is fully patent eligible in its own right.

        And that is because patent law (unlike copyright law) covers the utility of things, and it is the utility that the exception to the printed matter doctrine focuses on.

        This is a simple truth that Malcolm and Ned and 6 refuse to face. A fact that trumps any of their no-law, no-fact, policy table pounding.

        It is a fact that no matter how hard they try to run from, they must eventually face.

  10. Dennis, one of the questions on appeal to the Supreme Court is whether the clear and convincing proof standard applies to indefiniteness.

    Nautilus v. Biosig, link to scotusblog.com

    “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”

    One would think the Federal Circuit would stop deciding indefinite cases using this standard pending result in Nautilus. They leave the loser here no choice but to file motions for reconsideration and/or to file for cert. just to drag things out until the Supreme Court decides.

    1. Also, I agree with the dissent that claim construction is a matter of law. The corresponding structure must be identified, and that is the burden of the patent owner, not the defendant.

      Shifting the burden to the defendant, and requiring clear and convincing evidence to prove there is no corresponding structure is flipping the burden of proof to the wrong party.

      As I said, this issue is now on appeal to the Supreme Court and we should pay attention to it.

  11. Just to put this ridiculous opinion in perspective, let’s say I program a computer to “extract” data obtained from a thermometer outside my house and “correlate” it with the amount of water needed by a very fussy orchid in a north-facing window. Dirk Spangledwarf t sends me a letter informing of a “patent of interest” he owns which describes “1. A system for determining the amount of water needed by a plant, comprising a temperature data obtaining means and a processing means for determining the amount of water needed by the plant based on the temperature data.” There’s no correponding structure in the specification, no code, no algorithm, no nothing, just a flowchart with two boxes containing text that describes the functions.

    Newman is saying that I need to hire an expert in order to get a summary judgment of indefiniteness on this p.o.s.? An expert in what exactly? Reading?

    Again: we have a deeply broken patent system. It’s hard to imagine it getting worse but, as I said, you can count on the Federal Circuit to engage in some serious horseplay when it comes to coddling their favorite sons, the same whining entitled grifters for whom the system was bent beyond recognition in the first place.

    1. “Newman is saying that I need to hire an expert in order to get a summary judgment of indefiniteness on this p.o.s.? An expert in what exactly? Reading?”

      I’m not really sure w t f she’s talking about. She, and at least half the court, have gone completely off the deep end with regards to mpf limitations esp concerning programmed things. We’re deep in crazy land by this point.

    2. “To be clear, the Federal Circuit does not expressly hold that expert testimony is always required. We do not of course hold that expert testimony will always be needed for every situation.”” And your hypo, MM, would likely be one of those situations.

      1. your hypo, MM, would likely be one of those situations

        How do you know this? What is the distinguishing fact in this particular case?

  12. The court should be able to find sua sponte that the claims are indefinite, even if neither side argues it during the Markman hearing, that being the logical conclusion of failing to arrive at any proper claim construction at all. Otherwise, the court can end up in a catch-22: they can’t proceed to trial because no proper claim construction can be reached, but they can’t rule the claims indefinite without extrinsic evidence of indefiniteness that the defense failed to provide.

  13. Dennis: his perspective also appears lacking because he essentially ignores the requirement that these questions be viewed from the standpoint of one of skill in the particular area of technology.

    The Federal Circuit just keeps moving the goalpost in its endless efforts to coddle its favorite sons. Now Newman proposes that an “expert” is necessary to tell us all when a means claim fails to disclose corresponding structure, even when a child could see that no corresponding structures are disclosed? Do we need a different expert for each “means”, too? A monitoring means expert, a translating means expert, an extracting means expert, etc? It would seem so. After all, those seem like wildly different functions, after all, beyond the expertise of any single expert, and surely they are all crucial for describing the invention or the applicant wouldn’t have bothered reciting them.

    As for this from Wallach:

    When there is an identifiable algorithm, however, expert testimony may be helpful in determining whether the algorithm is adequate corresponding structure

    What kind of expert is he referring to? Algorithms don’t have “structure” in any sense that is meaningful to patent law. They only have “structure” in the sense that a movie plot has structure or an equation has a “structure” or an “argument” has a structure.

    What does “experts” in determining the “adequacy” of structure imparted by a algorithm look for exactly when forming their conclusions? The answer is that they don’t look for anything. They are paid to recite a script and to do so they don’t need to be experts in anything except slinging bullcr@p on behalf of the patentee.

    What an incredibly broken system. Do we need to look at the junk claim at issue in this case more closely for additional laughs?

    1. What kind of expert is he referring to? Algorithms don’t have “structure” in any sense that is meaningful to patent law. They only have “structure” in the sense that a movie plot has structure or an equation has a “structure” or an “argument” has a structure.

      Nobody said that algorithms “have” structure. Per prior case law, an algorithm, when coupled with the processor, provides the “structure” for the means. Wallach is simply saying that an expert may be needed to determine whether the algorithm is described in enough detail to teach the skilled person how to build the means that carries out the desired function. That seems like an unremarkable proposition to me. Of course you don’t need one in every instance, but you may in some.

      1. Nobody said that algorithms “have” structure. Per prior case law, an algorithm, when coupled with the processor, provides the “structure” for the means.

        The algorithm is just another function that the processor carries out. There is no discernable “structure” whatsoever implied by the algorithm (baloney about “essence of electronic structure” notwithstanding).

        Consider my “A-determining means”:

        A=b/c*(d+e)-(f!/(g*g))

        Compare with Bob’s “M-determining means”:

        M=n/o*(p+q)-(r!/(s*t))

        How does patent law treat these algorithms? Same structure? Why or why not?

        Wallach is simply saying that an expert may be needed to determine whether the algorithm is described in enough detail to teach the skilled person how to build the means that carries out the desired function. That seems like an unremarkable proposition to me.

        What seems like an unremarkable proposition to me is that if you can’t describe in clear structural terms a single embodiment that (1) distinguishes your device from the prior art and (2) which achieves what your invention is intended to achieve without any guesswork on the part of the skilled artisan reading the patent, then you don’t deserve a patent on that device. Note that this is a separate issue from the issue of whether the “structure” of an algorithm has a non-abstract meaning.

        1. The problem is a bit deeper. Program a computer to add 2+2=4. Compare this with 2 apples + 2 apples = 4 apples. Do you see a structural difference in the computer? If you have any doubt, try comparing these two operations on a pocket calculator and see if there is structural change in the calculator.

          We can only program a computer to manipulate numbers in the form of bits. Limitations on the meaning of the numbers do not translate into machine instructions different from calculations on the same numbers but without this meaning. They do not translate into different electronic signals for representing the bits. Where is the machine structure then?

          Since the Federal Circuit wants to hear from experts about structure, someday someone will tell them that. I wonder what they will do then.

          1. Application of Bernhart, 417 F.2d 1395, 163 U.S.P.Q. 611 (C.C.P.A. 1969).

            “There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i. e. it is structurally the same, no matter how new, useful and unobvious the result. This rationale really goes more to novelty than to statutory subject matter but it appears to be at the heart of the present controversy. To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed.”

            1. This is not the point. Compare:

              A computer configured to compute 2+2=4.

              with

              A computer configured to compute 2 apples + 2 apples = 4 apples.

              Both computers are programmed to add numbers. How the limitation that the numbers are counts of apples makes a difference in machine structure? The instructions in the computer memory are identical and the bits they manipulate are identical.

              This question is applicable to any limitation that imposes meaning to numbers.

            2. Paul, I think the state of a computer become structure when the programming becomes hardwired into the machine in some fashion, as the program is encoded in ROM, Flash or something like that, and is available 24/7 such that it truly becomes part of the machine.

              Now, tell me just how many programmed computer claims disclose and claim such structure? Yeah, you got it. Not one.

            3. Ned,

              There are two different issues. One of them is about the physical changes programming causes in a computer. Are they the operations of moving parts that are needed for a machine to operate? Or are they the making of what Rader calls “individualized circuitry” for performing the functions of software? This argument may involve duelling experts with the Federal Circuit deciding who is right.

              The other issue about which words in the claim can be tied to the physical changes. Limitations on the meaning of the data do not generate instructions that are different from the same underlying calculations without the meaning. This sidesteps the previous issue. Even if the Federal Circuit sticks to Rader’s individualized circuitry these limitations on meaning are not limiting this circuitry.

            4. And the merry-go-round begins again:

              Ned”becomes hardwired

              Funny that, you never answered my many requests for you to provide some legal backing of this extra-requirement of yours.

              What are the chances that this will be yet another point that goes unanswered?

            5. Paul, I know where you are going. Numbers are numbers, and a process for computing number results in numbers. The beauty is in the eye, etc.

              Still we have to deal with whether a programmed computer is a new machine. The answer to this question and how it is answered may also decide whether a Programmed computer is patentable as such.

            6. Ned,

              The question as you state it is incomplete. It is not whether the programmed computer is a new machine. It is whether the programmed computer is a new machine to perform particular functions pursuant to instructions from program software. The italic part are the exact words of Alappat.

              There is more to this holding than just the making of a new machine. The new machine must perform the functions of the software. If it performs something else this is not the machine of the holding. Moreover, the functions must be performed by instructions, so if there is no instructions corresponding to a specific function then the Alappat machine is not being made.

              This issue can be tackled from several angles. I agree that we can make a case that no new machine is made at all. This is a relevant issue. But let’s not forget about the other angles. There are several concurrent reasons why the Alappat machine is not made.

            7. paul, your attempt re:”I agree that we can make a case that no new machine is made at all.” is a FAIL.

              Sorry but you cannot define ‘black’ as ‘white.’

              See the Grand Hall experiment. See Nazomi.

            8. paul,

              To your thought of “This question is applicable to any limitation that imposes meaning to numbers,” please consider a separate analogy.

              You invent a wonderful new device. Let’s call it a hammer. For our analogy, let’s accept that the hammer meets all the requirements under patent law to be a valid invention.

              You use the hammer to crush apples. You think this is wonderful, but you realize that the application did discuss the notion that among other things, the hammer could be used to crush apples.

              You also realize that the hammer can be used to crush oranges. Ah, you smile, crushing oranges was not disclosed in the application. You set out to build a factory for making and then engage in selling hammers. You proudly proclaim that your hammer is only to be used for smashing oranges.

              Do you infringe the hammer patent?

              Now with that thought experiment in mind, realize that an ‘oldbox’ computer is not the hammer of the analogy. The ‘oldbox’ computer is merely a box full of elementary particles that can be put together easily in many new ways.

              Let’s look at another analogy (shamelessly taken from something that capital A Anon posted on another blog): a toaster. It is a fallacy to think of the “oldbox” computer as a toaster with different settings and the ‘change’ being to move the setting from light to dark. A true way of thinking of the change of software with the analogy of a toaster is to compare a toaster with NO settings (you only have one option) to a toaster that has options (and the options have the equivalency of being either mechanically or electronically switched).

              What does get tricky is when the change from mechanical to electronic involves invention. One of the great anti-software patent lies is the notion that “doing it on a computer” must be de facto obvious because the idea of doing it (whatever “it” may be) on a computer is easily thought of. There is a kernel of truth to the lie: it is easy to think of ‘doing it on a computer.’ The trick to the lie is recognizing that science fiction is not a valid legal argument.

              One of the fun debates on a past thread was my use of 6’s introduction of a Star Trek replicator and the thought process that such a science fiction device was exactly the tool I needed to take my big box of elementary particles and all of the elements and make ALL biochem and chem inventions de facto obvious, thereby eviscerating patent law.

              That science fiction replicator makes obvious ALL physical configurations of the base elements – exactly like the false argument involving a computer built to be changed includes all configurations of how a computer may eventually be changed.

            9. Ned’s statement of “Now, tell me just how many programmed computer claims disclose and claim such structure? Yeah, you got it. Not one.” is easily shown to be false.

              Ned, remember our copyright discussion? You have admitted that the manufacture and machine component known as software easily earns the right of copyright.

              I have pointed out to you the legal requirement of earning copyright is that the item desired to have copyright must have structure – it cannot be ‘something of the mind.’ It must be in a fixed media. I then provided the legal mechanism that translates this structure to patentable weight: the exceptions to the printed matter doctrine. (yes, Malcolm’s volunteered admission as to knowing this controlling law shows his dissembling on software patent eligibility). It is the FACT that the words of software have a functional relationship that changes ‘mere words’ to words having structure (since we know they earn copyright) and having patentable weight as a manufacture.

              You dissemble with some (never tied to a legal citation) notion that firmware is acceptable as a patent eligible invention.

              You run away from the fact that software is equivalent to firmware (and software is equivalent to hardware).

              The fact that you have yet to acknowledge the legal logic in the Nazomi case screams so loudly that all of your posts scrambling to switch the subject cannot be heard.

              Front and center Ned: stop running.

            10. “The ‘oldbox’ computer is merely a box full of elementary particles that can be put together easily in many new ways.”

              Um a modern computer is not just a box full of elementary particles that can be put together easily in many new ways. And even if it was, you’re about to ignore those “new ways” of easily putting the particles together when you make your patent claim.

            11. “The trick to the lie is recognizing that science fiction is not a valid legal argument.”

              If that be true, then it shouldn’t be a valid means of “inventing” either. What you’re talking about should be a double edged sword against softiewafties if what you say were to be so. But you avoid the other edge while supposedly keeping this edge in place.

            12. “One of the fun debates on a past thread was my use of 6′s introduction of a Star Trek replicator and the thought process that such a science fiction device was exactly the tool I needed to take my big box of elementary particles and all of the elements and make ALL biochem and chem inventions de facto obvious, thereby eviscerating patent law.”

              I still don’t see your reasoning on that. It appears you’re just re ta rded.

            13. Three comments from 6 and three complete misses – I see where 6 got his ‘k’ moniker in his original name

              Strike 1:
              6 does not see, so someone else is a tar d…

              Classic government bureaucrat blame someone else mentality.

              Strike 2:
              “about to ignore…” – Pure nonsense.

              Strike 3:
              “shouldn’t be ‘inventing’…” – It’s not.

              A shamefully awful at bat – back to the pines, 6.

            14. Anon: The ‘oldbox’ computer is merely a box full of elementary particles that can be put together easily in many new ways.

              No this is not what a computer is. A computer is a device that may be programmed with instructions. According to case law the functions of the software result from the instructions.

              In re alappat, 33 F. 3d 1526 at 1545.

              a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.

              The new machine occurs because the instructions modify the circuitry to create electrical paths in the microprocessor.

              WMS Gaming, Inc. v. International Game Technology, 184 F. 3d 1339 at 1348

              The instructions of the software program that carry out the algorithm electrically change the general purpose computer by creating electrical paths within the device. These electrical paths create a special purpose machine for carrying out the particular algorithm.

              I say that when the instructions are not used to implement some function the electrical paths are not created and the new machine for performing this function is not made.

              It is possible to show that instructions don’t create new electrical paths in the microprocessor for performing the functions of software. This is arguing that case law is factually wrong. I am not doing this here. I am just raising an argument that is consistent with case law as it stands.

            15. Only in 6’s “subjective-in-the-mind” non-reality can you have software is real but claims to software are not.

              Do you even bother to try to understand how inane you come across 6, or are you so absolutely befuddled by your belief system that you just don’t care?

            16. paul,

              Pay attention. You are wrong with “It is possible to show that instructions don’t create new electrical paths… This is arguing that case law is factually wrong

              The case law is in fact factually right. It is not possible to show what you think you can show. All that would happen if you show what you think you can show is that you happen to have a device that infringes the patent that is in fact hard-wired. You missed the point of the discussion in which I emphasized the fact that software is equivalent to firmware and is equivalent to hardware.

              I am glad that you are not trying to argue something that you cannot argue – I just wanted you to realize that in fact you cannot argue that at all.

            17. … as the program is encoded in ROM, Flash or something like that, and is available 24/7 such that it truly becomes part of the machine. Now, tell me just how many programmed computer claims disclose and claim such structure? Yeah, you got it. Not one.

              You need to get out more, Ned. I’ve personally written hundreds of applications that disclose and claim such a structure. I even include a diagram of such a structure, for 6’s benefit.

            18. “I even include a diagram of such a structure, for 6′s benefit.”

              If this be so, then I see no reason to not give you the patent. Though I note that it seems to me that if this is legitimately so, then the days of software patenting are very numbered.

              Though I doubt it be legitimately so.

              If you might be so kind LB, should I swear to never disclose or otherwise cause you any problems knowing your supar secrit ID, might you send me the app no./pub no.? I would like oh so much to be in possession of such having been done correctly.

              Examiner6k@yahoo.com

              Heart across chest. I won’t even mention whether I’ve received such on here should you deem that also necessary.

          2. paul We can only program a computer to manipulate numbers in the form of bits. Limitations on the meaning of the numbers do not translate into machine instructions different from calculations on the same numbers but without this meaning. They do not translate into different electronic signals for representing the bits. Where is the machine structure then?

            There isn’t any — at least there’s nothing meaningful there from a patent sense. It would be like trying to patent on old chemical because you found a second use for it or, more analogously, because you invented a new name for the compound.

            As you note, this is a deep problem. It’s not a difficult problem to understand (for most of us) but it is a problem that can not be solved by waving one’s hand around and screeching “claims as a whole”, for example, or citing some Supreme Court case written about a technology far removed from devices that automate information processing.

            1. Malcolm dissembles with “or, more analogously, because you invented a new name

              Still waiting for you to answer the simple questions as to how that ‘oldbox’ inherently has all of the inventions not yet invented “already in there.’

              Another name I see for this Malcolm argument is B$.

          3. Paul, if you could, please cite the holding of Alappat to which you reference.

            If you are citing its dicta “We have held,” it ALL leads directly back to In re Bernhart which I quoted.

            Can you clarify then, what is the holding to which your refer. Please quote it.

            1. In the whole Alappat decision there is exactly one sentence stating that programming a new computer makes a new machine and it is the one I quoted. If this is not a holding then nowhere in the whole Alappat decision it is held that programming a computer makes a new machine. This is not how this case is usually understood.

              But I don’t think going to Bernhart changes my argument. It says

              if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged.

              They don’t use the word instruction but they refer to physical changes in memory induced by the program. What is a program in memory if not a series of instructions?

        2. How does patent law treat these algorithms? Same structure? Why or why not?

          Probably not, but you can’t really tell without more context (e.g., without some definitions of the domains of your input variables).

          But how does this help your argument?

        3. What seems like an unremarkable proposition to me is that if you can’t describe in clear structural terms a single embodiment that (1) distinguishes your device from the prior art and (2) which achieves what your invention is intended to achieve without any guesswork on the part of the skilled artisan reading the patent, then you don’t deserve a patent on that device.

          I agree completely. Where we differ is that from where I sit (and from where the court has been for the past 40 years), coupling a processing element with a well-defined algorithm does “describe in clear structural terms” a group of embodiments. Your demand for a “single embodiment,” whatever you think that means, has no basis in any law that I know of, and is clearly unreasonable. Any mechanical patent claim covers a range (and probably an infinite range) of structures, but that doesn’t mean that those claims are indefinite or unstatutory.

          1. “coupling a processing element with a well-defined algorithm does “describe in clear structural terms” a group of embodiments.”

            If you guys would be so kind as to draw a few of these embodiments of a structural nature out for the drawings I’ll let the whole thing slide.

            ” Your demand for a “single embodiment,” whatever you think that means, has no basis in any law that I know of”

            Sure it does. WD req. Also, the very clear RULES regarding drawings.

            But for a moment, perhaps we could set this aside LB. And instead discuss what the proposed regime is really doing “under the hood” so to speak, by adopting the policy stance and legal fiction you note about the algorithm and processor supposedly describing in clear structural terms a “group of embodiments” (I note on original topic I’ve never heard them actually say it like that and I doubt that is truly their position, but we’ll take your statement to be so for this brief aside discussion).

            What does such a regime accomplish? In terms of disclosing structure that is. All it seems to accomplish to me is to allow for us to take all the sequences of 1’s and 0’s in the universe and the universe of abstractions and divvy them up to different “inventors” under the guise of them having found out their function in a computer. To be clear, you could write a counting algorithm and disclose the output thereof as it counted to a gazillion zillion and you will have disclosed all “instruction structures” as are currently claimed by simply designating the number in ever increasing numbers of base 2 digits. For example a byte had 8 base 2 digits and it can describe up to 256 unique “instruction structures”. But you could simply take a bagazillion zillion base 2 digits to describe a huge number of numbers, and thus individual “instruction structures”. Count up through and disclose the numbers represented by those bagazillion zillion base 2 digits and you steadily work through all instruction structures that we’re currently divvying out to individuals in exchange for patents.

            I mean, to me, and it would seem so also for the country, it would be easier to discover (which is really what is happening as opposed to inventing) those structures that are supposedly being disclosed now through a simple counting program rather than disbursement of patent rights in exchange for a non-disclosed actual embodiment of the “structure” as people get now, or even the few actual embodiments of the structure if they were disclosed in each patent app to the max.

            In fact, it is so much easier to do that to obtain disclosure of instruction structures (what I take it are the supposed structures disclose by the processor+algorithm), it seems absurd to me to even suggest patentability or patent eligibility for the other.

            1. 6,

              You should realize that ‘proper drawing’ includes flowcharts and the like – right?

              You are asking for something you already have. That you do not recognize this speaks to your “tar dation” and no one else’s.

            2. “You should realize that ‘proper drawing’ includes flowcharts and the like – right?

              You are asking for something you already have. That you do not recognize this speaks to your “tar dation” and no one else’s.”

              If a flow chart is the only structure that you think you have then I suggest you put that in your pic. If you think you have more, then I suggest you put more.

            3. “No seriously 6 – I would ki11 you with kindness, and you just wouldn’t know what hit you. You would be begging to give me my patent.”

              I’m sure. /eyeroll

              Tell it to the last 5 softiewaftie patents I put to bed, with no cons, or even surprisingly divs, having come my way so far. I guess you’re just soooo much better than the other people trying the same ta rd sht you want to. Right? Right? Yeah right.

              Or are you just talking about voluntarily feeding me so many RCEs that I eventually just thank you for your money and grant it? Lol. Because I mean … that’s just terribly cliche isn’t it?

            4. You know anon, maybe you’re right. Perhaps I should be a little nicer. I mean, at this point, putting softiewaftie apps to bed isn’t exactly all it was supposed to be cracked up to be. It was supposed to be a harrowing experience with tar ds like yourself being on point with caselaw this and caselaw that and yadda yadda yadda yadda appeals all the time and all this. Exciting sht.

              There’s been some of that. But surprisingly little. Some attorneys are right straight on point with the ta rd talk and they make for a good show, signifying little ultimately. But at least some are just incompetent about the entire subject. They don’t know the first thing about the whole issue, they just count on the PTO to sign off on whatevz, or tell them to put “in a compooter” in the claim and sign off. Even the ones that are all good with the ta rd talk find it difficult to counter, or even attempt to counter, even the most rudimentary of my objections or rejections. I presume this is generally the case because they are novel to them personally. Indeed some note that what I’m saying is new to them. Though I also guess some of that is because I have carefully laid out generally how the entire discussion is going to go before it even takes place, and they have not. They are met not with an obstinate completely ignorant examiner as they likely expect in their day to day. Rather they are met with one intimately familiar with the situation and ready to discuss it with them in their own language. And indeed, one ready and willing to be persuaded of just a few things and thus allow the app that very day.

              So who knows? Maybe you could do better than them. I doubt it though. At least one of them has pretty decent credentials esp regarding this stuff. And he put a lot of effort in. Still your writings on here don’t indicate you’d be likely to. Coming in talking about star trek replicator nonsense isn’t going to get you anywhere no matter how much sense it makes to you in your own mind or in some abstract sense, or even how much it actually makes sense. You’re not going to be speaking in front of Newman and Rader most likely regarding your app. Sorry, just not likely. And guys around here, including the appeals guys, and the director, are all about us some structure. We, as a group, don’t have a super high regard for legal tomfoolery re that either. Sure, there’s a few qas’s around that no doubt buy into the policy stuff and all that, but they know about the recent cases. They doubt themselves.

              Either way at this point I’m getting bored troubling myself with it. The individual patent app isn’t my target. It can’t be. Those can be dealt with already at the examination stage if the examiner has the will to do so and the proper backing. At least that’s what my last 5 of them indicate. So the problem is rather not with the individual apps being issued, but rather with the judicial bodies implementing their nonsensical will across a broad swath of legal territory where people just go with the flow. I mean, I knew this before. But I’d thought that the problem would also be “local” to each app also. Empirical data indicate it isn’t really. I could likely examine for another 30 years and literally never see a case that they’re really and truly willing to send to appeal for 3 years rather than just send in the RCE. Much less have one they’re willing to send to the CAFC with my writings on the record. Their ability to self-select, and the self-selecting nature of which cases go up is annoying as sht. Only the ones against the most ridiculous rejections go that I see. I’m stuck, so to speak, in the useful arts.

              To be honest, I’m almost so bored with the subject, and willing to let the wheels of the government turn and fix the problem in due time, that I may well have to stop killing software patents off. It just eats into my time and production is what it does. I can either do the right thing, or I can get all my production done a bit early or do paid OT. I mean … it’s more than an academic subject at that point. And to top it off, I’d get to issue pretty patents all about abstract transfers of information on the interbuts or whatevz.

              Also it’s so underwhelming when you kill off a patent app, even if it is a software app. And especially if you put a lot of time and effort into getting it there.

              Ya know, I’m ultimately in it for the lulz. If I don’t get my lulz, w t f was the point?

    2. “When there is an identifiable algorithm, however, expert testimony may be helpful in determining whether the algorithm is adequate corresponding structure

      What kind of expert is he referring to? Algorithms don’t have “structure” in any sense that is meaningful to patent law. They only have “structure” in the sense that a movie plot has structure or an equation has a “structure” or an “argument” has a structure.”

      Algorithms have structure in the same way every method has a structure to it. There are steps that achieve small goals en route to a bigger goal.

      To use an example I used before – if one wanted to achieve the function of alleviating leg pain, one could measure out an amount of pain killer and have the patient take it. That’s a different algorithm than measuring the leg and then cutting it off. It’s also a different algorithm from simply strangling the patient.

      Those are three different algorithms for achieving the same function. There’s nothing surprising about needing an expert to tell you if the description of that algorithm is sufficient for an inventor to know the structure. For example, you would need an expert opinion to determine if “measure the amount of pain killer” is something that is sufficiently descriptive in itself, or if the art would require a further description to see that step through.

      1. RandomGuy Algorithms have structure in the same way every method has a structure to it.

        There is more to it than this.

        WMS Gaming, Inc. v. International Game Technology, 184 F. 3d 1339

        In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm. See Alappat, 33 F.3d at 1545, 31 USPQ2d at 1558.

        At this point the question may shift to whether an expert would agree that a programmed computer has a machine structure specific to performing the algorithm. What if a defendant provides expert testimony that his accused programmed computer does not have such structure and his case is factually distinguishable from Alappat?

        1. paul, you misapprehend law with “What if a defendant provides expert testimony that his accused programmed computer does not have such structure and his case is factually distinguishable from Alappat?

          What you would accomplish with your ‘factually distinguish from Alappat with an accused new machine that does not meet the claim’ is that you do not infringe the claim. You do not prove the claim itself is invalid.

          1. Anon,

            I didn’t argue that the claim was invalid. I did argue that it is possible to show that some elements of the software functions are implemented without corresponding machine instructions.

            Limitations stating the meaning of numbers have no corresponding instructions because a computer only supports instructions to manipulate the numbers, not their meanings. I said it could be argued that this factually distinguish the programmed computer from Alappat because the holding in this case requires the new machine to perform the functions pursuant to software instructions.

            You say this argument means the claim is valid but not infringed. You may be right. But then, think of how often this defense may be used.

            Personally I think this argument will force the court to think again about what constitutes machine structure in a programmed computer. I don’t know what the outcome will be but I don’t think WMS Gaming will stand as is.

            1. but I don’t think WMS Gaming will stand as is

              Care to share a legal basis for this thought?
              Care to share a factual basis for this thought?

              Or is this just some “policy-opinion” type of thinking?

            2. Anon asks:

              Care to share a legal basis for this thought?
              Care to share a factual basis for this thought?

              It is just common sense. When the courts will realise how often the meaning of numbers is used in the functional limitations of patent claims they will notice how often the argument may be used. I think they will not like that outcome and do something about it.

              No it is not a policy-opinion argument. I don’t know how the courts will react and there is no guarantee that I will like what they do. I just expect them to do something.

            3. “Personally I think this argument will force the court to think again about what constitutes machine structure in a programmed computer. I don’t know what the outcome will be but I don’t think WMS Gaming will stand as is.”

              I’m on board with all that.

            4. paul,

              I am completely unimpressed with an answer of “It is just common sense.

              Clearly, it is just common sense that you have no idea what you are talking about.

              You have no law.

              You have no facts (as I show above – you do not have the facts that you think you have, even if you are not arguing the facts that you have that you really do not have)

              And now you say you have no policy.

              You quite literally have nothing.

            5. There’s two levels of understanding: There’s a level of understanding between the processor and the ones and zeroes of code that is largely unseen by a person.

              Then there’s a level of understanding by the person as to the output of the computer, that is largely unseen by the computer.

              “Limitations stating the meaning of numbers have no corresponding instructions because a computer only supports instructions to manipulate the numbers, not their meanings.”

              I get where you’re coming from with this. The idea is that TO THE COMPUTER a number is a number and you either manipulate it or you don’t. But to the person a number isn’t a number – it’s a price or an amount of stock or whatever. The fact that a computer interprets all numbers the same is certainly relevant to whether a function is obvious over a similar manipulation to a different context, for example, but I don’t think it’s improper to consider the person, as that’s how all methods not relating to computers act as well.

              Limitations stating the meaning of numbers have no corresponding meaning to the computer, but they have a meaning to the user. Whether this would allow someone to escape infringement is questionable and I think unlikely, but I will admit I have no case to say that.

            6. RandomGuy,

              This is about what is structure, not infringement. Algorithms are described with language that considers the point of view of the user or the point of view of the programmer who inspects the contents of memory for debugging purpose. This is considered a description of the structure of a programmed computer. But if there is no corresponding instructions, how could that be the computer structure? It is the instructions that make the structure, not the human point of view.

            7. paul,

              You need to enter the legal world. Your comment of “for debugging purpose” indicates that you only have a technical perspective.

              You are in the wrong forest.

        2. What if a defendant provides expert testimony that his accused programmed computer does not have such structure and his case is factually distinguishable from Alappat?

          I’m not sure where you’re going with this, paul. If the specification at issue limited the structure to those involving only programmed instructions, then you may have a good case for limiting the means-plus construction to those structures. You still have to deal with equivalents, of course. None of this is any different than the claim construction and infringement issues arising from other means-plus limitations.

          1. LB: ’m not sure where you’re going with this, paul. If the specification at issue limited the structure to those involving only programmed instructions …

            I think this circumstance excludes specifications with limitations on what the numbers mean, like statements that the calculations are not plain arithmetic but adding counts of something. These limitations don’t have corresponding program instructions. Only the plain arithmetic does.

            1. paul,

              You seem to want to concoct a hypothetical that is simply unrealistic.

              Are you aware that a separate 101 legal requirement exists pertaining to utility? Quite apart from the 101 legal requirement pertaining to the statutory categories, the utility requirement needs to be met for each and every application.

              It seems that you want to talk about an excessively trivial application such as (in toto – and I mean the complete application): 2 + 2 = 4.

              When you begin with such nonsense, you will not achieve making any type of non-trivial point in law. Why are you bothering with such?

            2. Anon,

              2+2 was an example to illustrate a point.

              Since you want a complete application let’s consider a claim to a method for managing the inventory of a grocery. There is no machine instruction for a limitation that a number is a count of lemons. There is no machine instruction for that other limitation that this other number is the price of apples. This is true of all limitations giving meanings to numbers. This is also true of software applications that are not inventory of groceries. The machine instructions are good at moving the bits around and carrying out arithmetic calculations but they don’t do anything about meaning.

              This is a very realistic observation and it is not an hypothetical.

            3. He’s arguing that if we use a computer to do functions ABC to arrive at D, and D is human-context specific (i.e. a calculation as to “price of a car” when the computer has no context of price, it is only manipulating numbers), is it structurally different from using ABC to arrive at E where E is the same result mechanically but in a different human-context (i.e. the calculation now results in an “inflection point for investment decisions”).

            4. RandomGuy,

              Yes, this is the argument.

              I would add that the human context could be “just do the calculation/arithmetic for the sake of doing it”. This ensures that there is always another context, albeit not a useful one. But we may ask how the computer doing the useful thing when user context is considered be structurally different from the one that does the pure underlying calculation.

            5. paul, you are still in the weeds with “ But we may ask

              You need to go back and re read my posts. Try to understand that there is a legal world AND a technical world and that my posts incorporate both.

Comments are closed.