Lighting Ballast: Deference Would Have Only Masked the Problems

By Dennis Crouch

In Lighting Ballast, the en banc Federal Circuit once again held that claim construction should be seen as a question of law that is reviewed de novo on appeal. In the end, this is probably a good result for the patent system – but not for any of the reasons given by the court.

Over the years, the high-rate of claim construction reversal has repeatedly been highlighted as a symbolic of problems with the patent system. Some thought that the problem lay in district court failures to conduct proper analyses, but over time, most of us have come to reject that explanation. Rather, my view is that claim construction is a difficult task and it is not surprising that, out of the myriad possible definitions that a term could be given, two courts would disagree on which definition is best. I actually see this issue pointing a spotlight toward a major problem with the patent system – perhaps the largest problem – that patents often fail to provide clear notice of what is and what is not covered by the various claims.

Deference would have only masked the problem. The reversal rate would have gone down and from that high level that traditional off-kilter signal would be missing. The real difference with deference would be that patent scope would be understood as of the district court decision rather than having to wait for an appeal. That may help some litigants, but still it is a fairly ridiculous patent system where the scope of claims are not well understood until determined by a judge.

Rather, the problem has to be addressed by the US Patent Office with a renewed focus on clarity of claim scope. President Obama’s administration has recognized this with their call to “ensure claims are clear and can be consistently enforced.” The rub is that the administration’s approach of (1) encouraging glossaries and (2) providing additional examiner training are unlikely to have any meaningful impact. The good thing then is that the Federal Circuit’s continued power means that these systemic problems won’t be buried.

184 thoughts on “Lighting Ballast: Deference Would Have Only Masked the Problems

  1. Here are two ideas, either one of which would seem to solve the problem:

    1) Give the claims their broadest reasonable interpretation;

    or

    2) Since the claims are allowed, interpret them as broadly as possible while avoiding the prior art.

    The second one has the advantage of agreeing with the examiner’s interpretation (and the examiner is more of an expert that any court would be) and avoids having to deal with the validity question.

    1. Les, I agree that the examiner’s interpretation when he allowed the claims is highly pertinent. I have seen it be decisive in court.

      BRI is what happens earlier. The claims in the interim might be clarified by argument or affidavit, so that the claims as allowed might be different than BRI.

    2. So now to figure out infringement, you have to first conduct a prior art search? This solution goes the exact opposite way from what Prof. Crouch is talking about.

  2. In George Orwell’s 1984 the purpose of the language NEWSPEAK was to limit thought processes and amongst other things avoid ambiguity or multiple meanings. As explained in Wikipedia:

    “The purpose of Newspeak was not only to provide a medium of expression for the world-view and mental habits proper to the devotees of IngSoc, but to make all other modes of thought impossible. Its vocabulary was so constructed as to give exact and often very subtle expression to every meaning that a Party member could properly wish to express, while excluding all other meaning and also the possibility of arriving at them by indirect methods. This was done partly by the invention of new words, but chiefly by eliminating undesirable words and stripping such words as remained of unorthodox meanings, and so far as possible of all secondary meaning whatever.”

    1. The context missing is “proper” and an authoritarian control.

      Hmmm, much like those who would wish to emulate Jane and the views on ‘personal property.’

      Go figure.

  3. We have to stop wasting time and resources on patent applications that will never be asserted or that do not protect products. Some propose a registration system. A registration system still results in an issued patent, but of dubious scope.

    May I suggest this, that we condition examination upon any of the following:

    1) A payment of a very large fee; or
    2) An affidavit showing a product marked with the application number; or
    3) The owner has a product covered by the claims of the application and there is an infringement of the same claims.

    1. We have to stop wasting time and resources on patent applications that will never be asserted or that do not protect products

      Completely the wrong thought and one that ignores the nature of innovation.

      Innovation is not linear and the purpose of the patent system is to gather all types of innovation – regardless of assertion/products.

      Another loser post, Ned.

      1. What has that to do with not wasting resources actually examining patent applications that are not protecting products or which will never be asserted?

        1. You wrongly assume that the resources are ‘wasted.’

          Truth be told, they are not.

          Innovation is not so limited to those items actually made or to patents actually asserted.

          You are operating under a false pretense.

            1. Examination – done correctly – delineates what is truly worthy of being called invention – and that is the beginning of innovation.

              As to connected dots, Ned – your dots are not only not connected, but in complete disarray.

            2. “Examination – done correctly – delineates what is truly worthy of being called invention – and that is the beginning of innovation.”

              In other words anon and his fellow patent maximalist religion adherents have redefined “innovation” (“invention” too!) to have a special definition, known generally only to themselves, to fit their own agenda. Under their agenda innovations/inventions that occur “in the wild” so to speak are not actually innovations/inventions until officially vetted as being such.

              The sooner you learn this ned the less energy you’ll need to expend trying to understand their nonsensical statements.

            3. 6 errs badly with “redefined “innovation” (“invention” too!) to have a special definition, known generally only to themselves, to fit their own agenda.

              LOL – tell me 6, what is the purpose of the patent office? Why do you think it grants patents?

            4. “LOL – tell me 6, what is the purpose of the patent office?”

              To administer the patent entitlement program.

              “Why do you think it grants patents?”

              What I “think” about it doesn’t matter one whit. It grants patents to promote the progress of the useful arts through public dissemination of information related thereto.

              And neither of those things above have anything to do with your and some other folks having redefining of definitions of words to fit your agenda and pseudo religious beliefs.

            5. “Anonymous’ – what is the question that your answer of “The answer is full employment for patent prosecutors.” goes to?

              After I clear away the innuendo, there is not enough substance left to make anything intelligent of your post.

            6. ““Anonymous’ – what is the question that your answer of “The answer is full employment for patent prosecutors.” goes to?”

              He means that such is what you think, subjectively, is the purpose of the patent office. aka to provide for examination so that patent attorneys will have something to do.

          1. Examination – done correctly – delineates what is truly worthy of being called invention – and that is the beginning of innovation.

            Uh … most (nearly all?) innovation happens completely divorced from the patent system, for very good reasons.

            But maybe you’ve got some special definition of “innovation” you’d like to share with us. Based on your comments, I will bet that the definition is either circular, incoherent, or somehow impossible for you to articulate.

            1. 6,

              I have already given it a shot – and even though you say you disagree with me, your answer at 1:09 pm actually shows that you agree with me. You simply don’t see it because of your belief system blinding you.

            2. “Examination – done correctly – delineates what is truly worthy of being called invention – and that is the beginning of innovation.”

              ^ that is your shot? Lulzlulzlulz.

            3. Yet again, no answers from Malcolm to a direct and simple question.

              This time “Give it a shot Malcolm: why do we have a patent system?” goes unanswered.

              ‘Shockers.’

        2. What has that to do with not wasting resources actually examining patent applications that are not protecting products or which will never be asserted?
          Those “resources” are bought and paid for.

      2. >>>Innovation is not linear and the purpose of the patent system is to gather all types of innovation – regardless of assertion/products.<<

        Naw, the patent system has been instructed to disregard any novel and unobvious development that is useful in this world that gets subjectively designated to be flushed down the "ineligible subject matter" sewer, as recently redefined……

        1. Not quite. “Ineligible subject matter” has not been “recently redefined” because the 101 cases now at hand are predicated on a steroidal version of the “abstract idea” doctrine, which NEVER has been defined, much less “redefined” by anyone. This is why it is such a wonderful jurisprudential tool for a modern age of governance by fiat and whimsy, which perceptively recognizes the nuisance posed by consistent legal standards and creatively dispenses with them.

          What is interesting is that various worthies on this site who routinely disparage others for harboring “pseudo religious beliefs” and other amiable salutations also routinely express fealty to the tautology (and hence the pseudo-religion) of the abstract idea doctrine. But again, this seems inconsistent and contradictory only to those who are so backward they fail to comprehend that to see what is in a law, you have to pass it, and in discovering its less convenient provisions, transmogrify it by the expedient of executive fiat.

          Just as the President knows a bad provision in an act of Congress when he sees it, SCOTUS knows an abstract idea when they see it. In both cases the percipience is ad hoc but declared to the rest of us only post hoc, for our faithful acceptance and grateful appreciation.

            1. Thanks, and just finished the PTAB “CRS” opinion “6″ kindly linked me to. Classic 101. Start with describing the various stars in the abstract idea constellation. Then declare that the abstract idea telescope reveals the claims at issue to be closer to Orion than to Virgo. Zero meaningful legal analysis beyond a tarted-up kind of astrology.

            2. Further note that the PTAB is more than willing to not apply stare decisis and make things up all on its own.

              Of course, this too should be noted in a slightly different context of the Founding Fathers warnings against a blurring of the separation of powers – the article I court – fully under control of the executive agency (normally I would say Director of the USPTO – but with that position remaining vacant for so ungodly a length of time – clearly some other shadow person is pulling the strings) coupled with that same agency so willing to write its own laws, execute its own laws and ‘judge‘ the meaning of any laws unto itself, a certain Federalist paper screams for attention.

          1. Tour, I would argue that there was some ambiguity in the legal basis for Benson, Flook and Diehr, but one can see by comparing the facts in the cases that Benson and Flook ended in numbers that were not applied to any use; but in contrast, the Diehr numbers were used. There is very little distinguish Flook and Diehr except this. Observe, that the requirement of limitation to a useful application was laid down in Morse to distinguish the patentable from the principle in the abstract.

            In Bilski, Rader argued that the claims were abstract without clearly explaining why they were abstract. The majority in the Supreme Court adopted this approach, never explaining its reasoning. They could have, because the roadmap laid down by Benson, Flook and Diehr seemed clear. So they apparently intended to leave the door open to interpretations of “abstract,” that may not be consistent with Benson, Flook and Diehr.

            Many thought the problem with the Bilski claims was not that they ended in a number, but because the claims were not limited to being implemented in software on a computer.

            Thus on remand there was chaos that has to be resolved again by the Supreme Court. But, in truth, the chaos was the result of an indefinite definition, or by other lack of any definition, of what the Bilski court meant by the term “abstract.”

    2. Registration system ? No, ridiculous.
      (Not that in some art units we don’t already have that….)

      But, a DELAY for EXAM and separate from FILING FEE ?
      Great, I’ll take that system. I’ll go for early publication, maybe republish new claims. When the economist experts have counted enough $$ to make it worthwhile, I will polish up a set of claims that read as precisely as possible on the target’s product or process. File for Exam. On grant, file with courthouse and send out process servers on Wednesday morning. No worries about continuations, thus we can lay off a few Examiner’s who won’t have to worry about those, or the majority of cases where no Request for Exam will ever be filed. The Canadian system works as far as extending the date after filing, to make the necessary exam request…. …but prompt exam (rather than 3+ years in Canada) would be necessary to make such as system work in the US….

      1. Blindman, glad for your support for deferred examination. There are multiple good reasons for doing so and you just reminded us all that delaying allows one to craft the claims better in view of developments in the market so as to avoid the need for continuations.

        It also allows one to determine whether the patent is valuable at all, and to simply let it go if it turns out to be worthless.

        1. Ned,

          I will disagree with you as to continuations.

          First, there is the no-new-matter rule.

          Second, most people I know that draft applications use a Claim-Drawing-Specification reiteration style that negates what you are attempting to do.

          Third, the aspect of keeping a continuation alive comes part and parcel with having a granted patent to also enforce. The notion of ‘deferred examination’ completely misses this.

          1. anon, it is amazing how having a competitors product before you as you draft claims focus’s one’s attention on the problem of unnecessary limitations.

            1. Whether or not having a competitor’s product in front of you assist you in claim drafting has nothing to do with the three points I raised as 7.2.1.1.

    3. Another day at the Merry-Go-Round.

      Ned makes an inane post and disappears.

      I post a challenge that goes unanswered in any meaningful way.

      Malcolm jumps in with a some vacuous dust-kicking, joined full force by the lemming 6, exhibiting his typical character suicide tendencies.

      No answers to the points raised will be offered and inevitably the same CRP will be posted yet again.

      C’est La Vie.

  4. When the only tools available to define the concept are words, no claim can ever be 100% “clear” as to what the inventive concept is. No claim ever issued by the USPTO was 100% clear.

    As Chris Christie illustrates with traffic management, it is easier to bring chaos than it is to bring order. So it is with patent litigators, easier to clog the meaning of a claim than clear it.

    Those scriveners who wilfully write ambiguous claims should see their claims fail the 112 test. Those who strive for clarity, but fail to achieve it to a level of 100% are entitled to a fair treatment from a court which, in the words of Judge Lourie in the support to the majority judgement, wrote that, when enquiring what a particular claim term means, the relevant enquiry should be:

    ….what the Inventor understood the term to mean.

    To a British reader, that is an echo of the UK Supreme Court way to construe claims. The court must “don the mantle” of the PHOSITA, then read the patent and using what the EPO calls “synthetical propensity” ask itself, as the PHOSITA, what was the inventor using the language of the claim to mean.

    This process of claim construction has the merit, that inventors, engineers, scientists and business people can see that it makes sense, and that it puts patent law back into the real world of technology and business, thereby restoring their faith in the patent system.

    1. MaxDrei, have you looked at the Nautilus v. Biosig case now up to the supreme court? The claim was to old structure and the novelty was alleged to be in a function. The Feds said that one of ordinary skill would know how to adjust the prior art structure to achieve the function. However, the spec itself said nothing on this topic, not what should be adjusted or how. Nothing.

      How would such a claim fair in England?

      link to scotusblog.com

      1. Ned I’ll have a look at Nautilus, but not tonight.

        In Europe, post-issue, clarity is not available to attack validity. But there is often a squeeze between obviousness and enablement. Thus, saying that the skilled needs no instructions is grist to the mill of the obviousness attack and, in Europe, validity attacks succeed as soon as they get over the “balance of probability”.

        But were you perhaps looking for something else from me?

        1. No Max, I was genuinely curious at how you would handle the problem of Nautilus.

          Do you have a concept of enablement? Some would thing that that is the problem with Nautilus.

          1. Enablement under the EPC? Yes Ned. Article 83. See Link:

            link to epo.org

            Enablement is hard for PTO Examiners to challenge, ex parte, for they have no lab facilities.

            Insufficiency under Art 83 EPC is a ground of invalidity and of opposition at the EPO. The petitioner (or opponent) carries the burden of proof. The standard is the balance of probability. Of course, it costs nothing to assert and to argue insufficiency. To prove it though, that is typically not easy.

            Thus it is, that also in Europe invalid claims a) get to issue and b) survive attacks on their validity under Art 83 EPC.

        2. “So, a sensible contruction of the term could be to require simply the two electrodes of each couple to be placed apart from each other, nothing more, nothing less.”

          Yes, for that part of the term that is completely sensible. Now keep reading and you’ll note the functional term that supposedly modifies that spaced relationship to where it must be a special spaced relationship. Then note how the supposed claim construction morphed over time. It’s a pretty bizarre case. But it’s par for the course for functionally claimed garbage that the boundaries of shift with the function rather than with the structure claimed, and is a poster child for reform.

          1. I kept reading, and I did find the two “whereby” clauses, which are in all likelihood the functional terms that you are referring to, and I can imagine how construing this sort of features can be problematic. What strikes me as odd is that in the decision under appeal the contested term was “spaced relationship”, which I find rather harmless for the reasons I illustrated above, and not the two additional “whereby” limitations.

            Coming now to these two “whereby” clauses, they clearly specify at least a further limitation for the “spaced relationship”, namely that each couple of electrodes is arranged to be covered by one hand and therefore that there is an upper limit to the distance between them. This upper limit, although not expressed in absolute terms, is such that a skilled person could correctly assess it in the vast majority of cases, so I guess that it would be considered OK by most courts.

            The rest of the “whereby” clauses, insofar they concern the kind of signals that are picked up by the electrodes, is a classical example of “result to be achieved” that it is so strongly disliked on this side of the Atlantic, because they claim an effect and not the features that bring about said effect. If we had the same standard for assessing clarity (which, at least as long as the Fed. Cir. decision stands, apparently it is not the case) I agree that the two features would fail it. However, I think that at least the first question posed to the SC does not really reflect the issues raised by this case: rather than presenting an insoluble ambiguity, it seems to me that the claim basically fails to define the invention (a heart rate monitor) in terms of its features.

            1. “What strikes me as odd is that in the decision under appeal the contested term was “spaced relationship”, which I find rather harmless for the reasons I illustrated above, and not the two additional “whereby” limitations.”

              You seem to not be understanding that they’re only arguing over “spaced relationship” because of the supposed modification thereof. Or at least your post seems to indicate such.

              “Coming now to these two “whereby” clauses, they clearly specify at least a further limitation for the “spaced relationship”, namely that each couple of electrodes is arranged to be covered by one hand and therefore that there is an upper limit to the distance between them. This upper limit, although not expressed in absolute terms, is such that a skilled person could correctly assess it in the vast majority of cases, so I guess that it would be considered OK by most courts.”

              Yeah no arguments there I don’t believe.

              “The rest of the “whereby” clauses, insofar they concern the kind of signals that are picked up by the electrodes, is a classical example of “result to be achieved” that it is so strongly disliked on this side of the Atlantic, because they claim an effect and not the features that bring about said effect. If we had the same standard for assessing clarity (which, at least as long as the Fed. Cir. decision stands, apparently it is not the case) I agree that the two features would fail it. However, I think that at least the first question posed to the SC does not really reflect the issues raised by this case: rather than presenting an insoluble ambiguity, it seems to me that the claim basically fails to define the invention (a heart rate monitor) in terms of its features.”

              Exactly. Poster child for reform of the insoluably ambiguous standard re functional (in this case i.e. “result”) language.

              “rather than presenting an insoluble ambiguity,”

              Be sure to read the prosecution history before you pass such judgement. At first blush, sure it seems fine.

            2. L.B.Z., The rest of the “whereby” clauses, insofar they concern the kind of signals that are picked up by the electrodes, is a classical example of “result to be achieved” that it is so strongly disliked on this side of the Atlantic, because they claim an effect and not the features that bring about said effect. If we had the same standard for assessing clarity (which, at least as long as the Fed. Cir. decision stands, apparently it is not the case) I agree that the two features would fail it. However, I think that at least the first question posed to the SC does not really reflect the issues raised by this case: rather than presenting an insoluble ambiguity, it seems to me that the claim basically fails to define the invention (a heart rate monitor) in terms of its features.

              L.B.Z., I think you hit the nail on the head. This is a classic example of claiming a result. Since 1952, there has been tremendous controversy in the United States as whether this is a problem under section 112, paragraph 2, or under section 112, paragraph 1. Clearly, the Federal Circuit in this case treated the result as easy to achieve by anybody of ordinary skill in the art, effectively saying that there was no section 112 paragraph, 1 problem, even while the question presented was under section 112, paragraph 2.

      2. From a quick perusal of the decision you linked, it seems that the whole point of contention was the expression “spaced relationship” for the first (second) live electrode and the first (second) common electrode, which appears, for instance, in claim 1 (see the features: “a [first/second] live electrode and a [first/second] common electrode mounted on said [first/second] half in spaced relationship with each other”).

        I don’t know what an English judge would decide, but it is true that if the patent had been an European patent, it couldn’t have been revoked for lack of clarity of the granted text, so some kind of claim construction should have been attempted by the court.

        In the case at hand, a glance to the first paragraphs of the description reveals the passages “A first common electrode 11, which also comprises a ring member of a conductive material and which is also force-fit onto the cylindrical member, is also disposed on the first half and spaced from the first live electrode 9″ and “a second common electrode, also comprising a ring member of a conductive material force-fit onto the cylindrical member and, once again, spaced from the second live electrode 13″. So, a sensible contruction of the term could be to require simply the two electrodes of each couple to be placed apart from each other, nothing more, nothing less. As placing electrodes does not seem to me to involve any specific skill, I think the feature as such does not present enablement issues. I would also say that I don’t see how the feature could be regarded as functional.

        In more general terms, once the interpretations which do not make sense are ruled out, those which remain that make sense in the context of the patent should be considered to be part of the claim scope; in other words, this sort of lack of clarity ends up working against the patent proprietor in terms of novelty, because if the unclear feature “X” may be reasonably interpreted as either “A” or “B”, and the ambiguity cannot be resolved, then any document disclosing either “A” or “B” anticipates “X”.

        1. LBZ, but you have to understand that the prior art structure and circuits were identical. During reexamination, the effect of that structure, the claimed balancing or nullification of certain kinds of signal was what turned out to be new. Unless the claim was construed to include some adjustment of the spacing relationship to effect this function, then everything was old.

          But the specification did not say what to adjust to balance the signals. There was no link to any spacing relationship and the balancing of signal. Nothing.

          1. Ned, I don’t see how your concerns have anything to do with clarity of the claims. I haven’t had a look at the re-examination results, but taking at face value what you said, then the patent should have been invalidated for not being novel (“everything was old”) or possibly obvious. The Fed. Cir. had instead to examine a decision whereby the patent had been invalidated for being indefinite, they found the feature in question clear, and vacated.

            In my opinion, the term “spaced reltionship” as such does not indicate any predefinite spatial relationship by the two electrodes; at most, any further limitation comes from the other features of the claim, which require each couple of electrodes to be covered by one hand, thereby posing some upper limit to how far apart they can be. As for whether this is meaningful to patentability, I can hardly say without having a look to the prior art cited against it, but it’s definitely not an issue that makes the claim unintelligible. For sure, if someone is able to squeeze from those two words some sort of magical relationship, then you have a wonky claim construction; I don’t believe, however, that you can improve the situation by tightening the standard for indefiniteness (whether it *would* be a good idea, in general terms, to do so is another question) .

            1. L.B.Z., yes you might want to read the re-examination history because novelty did depend upon a construction of spaced relationship that allowed the new function of balancing certain signals so that they may be removed in a differential amplifier. In other words, the claims were not claiming any spaced relationship, but a particular spaced relationship.

              Divorced from this context, of course relationship, “spaced relationship” could mean any space. But if so, the claims read on the prior art. Thus the patent owner attempted a construction to read into spaced relationship the need to adjust the spacing to achieve the allegedly novel function.

              But I would agree, the claims never should have been allowed because there was no clear nexus between the term and the function, either in the claims or in the specification.

              Then we also have the problem of inherency.

            2. Ned’s comment of “Then we also have the problem of inherency.” calls to mind that the notion of ‘inherency’ of any old computer – any UNCHANGED old computer 6 – screams volumes for the patent eligibility of software patents.

              Ned, I will remind you also that once again you have run away from the legal logic of the Nazomi case. For your beloved FACT, use the fact that software is equivalent to firmware and is equivalent to hardware – as clearly done in the Nazomi case.

              Stop running away.

    2. >>>When the only tools available to define the concept are words, no claim can ever be 100% “clear” as to what the inventive concept is. No claim ever issued by the USPTO was 100% clear.<<<

      The last sentence seems a bit overbroad…. …in that there in quite a number of "molecule" or other chemical structure claims that are 100% defined.

      However the elements of patent claims are much like dominos…. you know that this element has 6's on one end and 2's on the other… and the drafter plays it one way, thinking about a particular use or function. Then, and someone else finds the technique useful for another – usually later developed situation – makes up a different set of words so his description is not clearly a copy of the words of the claim. The patentee then says, my dominos read on those words. yes they do…. …no they don't…. There will never be a perfect answer for preventing that dispute. It will inevitably happen. The PTO shouldn't worry about that during examination.

      The courts will look at the domino pieces – but it will remain their job, and not that of the patent office, to worry about how many different ways to let the patentee play the dominos they were granted… ..or if the hood and mask worn by the accused actually hides the body of an infringer… ..in spite of their carefully chosen alternate vocabulary….

      1. Thanks for those thoughts, Blindman, which I take as support for my assertions, despite your saying they are overbroad.

        As you remind us, the reason claims have to be “clear” (Europe) or “definite” (the USA) is so that folks know whether they are operating inside or outside the scope of protection afforded by the claim. As you point out, the courts will always have to adjudicate between two opposed parties who, on that issue, argue the opposite. For me “always” implies “never clear”.

        Seldom will the courts be called upon to decide whether molecule X infringes a claim directed to molecule X. More likely the claim will be directed to molecule X and substituents, and then it will turn out that X, per se, is old or obvious. Then the squeeze is on, to find a definite claim that is not only infringed but also not invalid. That’s when the lawyers can start having fun.

        I think that claim construction in the USA is so hard to do because of the assymmetry between scope and validity. When validity is protected by the “clear and convincing” standard, and courts are striving for justice between the parties but are prevented from holding the asserted claim invalid, strained constructions ensue which, in turn, strain the jurisprudence as a whole.

        Elsewhere in the world, justice is done by the simple expedient of finding the asserted claim invalid (until such time as its owner amends out of the difficulty and into a wording that is both valid and infringed). That brings clarity in its wake, and a simplification of the task of construing the claim.

        1. I have always found your desire to denigrate the C&C standard to be bizarre and itself to generate “strained constructions” of all types of law that are simply illogical.

          But you never want to discuss any of the points that I bring up, always taking umbrage at the fact that I bring up points against your soapboxing.

          Here, for example, you claim clarity as a function of easily finding (or not) validity. But that is nonsense. Clarity is the result of the process – not the degree to which the result of the process must be weighed against to reach a decision. The standard which you so evidently despise has no such ‘effect’ on clarity as you wish to portray.

        2. One of my favorite Einstein quotes:

          Everything should be made as simple as possible, but not simpler

          Your desire and reliance on “but it is simpler” is not sustainable and falls to the error of violating Einstein’s second half of the quote.

  5. I somewhat agree with you D. But that doesn’t really excuse the failure of the courts to recognize in their procedure the fundamental nature of claim construction. I kind of hope the USSC gets involved.

    1. Nautilus v. Biosig, at the supreme court, involves indefinite claims where the structure claimed was old and the function claimed was alleged to be novel.

      But, of course, if the structure is the same, the function is assumed to be inherent.

        1. anon, if you could, please explain Nazomi to me, and to all of us. What it holds in unclear because it was unclear what hardware was being claimed.

          As to Alappat, what are the facts of the case again?

          1. Ned – a million times now you do NOT need to concern yourself with a factual question like “hardware” to understand the legal logic of the Nazomi case.

            You really do need to come to grips with that legal logic. Once you do so, then you can take your time and revisit the archives of our many discussions on Alappat and you may finally understand what I have told you so many many many times now.

            1. Ned,

              And one cannot understand – even if one has the facts – if one cannot FIRST understand the legal logic that facts are to be applied to.

              You (purposefully it seems) refuse to see the legal logic because you are striving so hard to see “hardware” claimed and you are quite missing the FACT (as I have so often reminded you) that software is equivalent to firmware and is equivalent to hardware.

              You put blinders on by failing to understand the FACT of that equivalence and what that equivalence means under the law.

      1. “But, of course, if the structure is the same, the function is assumed to be inherent.”

        That’s why there is a lot of evidence they presented to try to show otherwise.

          1. anon, your “configured to” language is now in serious trouble given two events:

            1. Nautilus v. Biosig at the Supreme Court; and
            2. Application of Arbeit, 206 F.2d 947, 99 U.S.P.Q. 123 (C.C.P.A. 1953).

            The latter relies on the Supreme Court Wabash Appliance case that will be heavily discussed in Nautilus:

            “In the case of In re Dalton, 188 F.2d 170, 173, 38 C.C.P.A., Patents, 953, 956, this court stated the law as follows:

            “* * * Properties, functions, uses, and results that may appear from the defined structure are not definitions of it and may not be solely relied upon to make a claim containing them patentable unless there is a positive setting out of the structure itself in the claims which, of course, must be responsible for properties, functions, uses, and results thereof.” (Italics ours.)”

            “The decision of the Supreme Court of the United States in the case of General Electric Co.[4] v. Wabash Appliance Corp., 304 U.S. 364, 366, 58 S.Ct. 899, 901, 82 L. Ed. 1402, was, and is, recognized as a lucid and important restatement of certain legal principles appertaining to patents.

            “‘We need not inquire whether Pacz exhibited invention, or whether his product was anticipated. The claim is invalid on its face. It fails to make a disclosure sufficiently definite to satisfy the requirements of R.S. § 4888, 35 U.S.C. § 33, 35 U.S.C.A. § 33. That section requires that an applicant for a patent file a written description of his discovery or invention `in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains * * * to make, construct, compound, and use the same; * * * and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.’ We may assume that Pacz has sufficiently informed those skilled in the art how to make and use his filament. The statute has another command. Recognizing that most inventions represent improvements on some existing article, process, or machine, and that a description of the invention must in large part set out what is old in order to facilitate the understanding of what is new, Congress requires of the applicant `a distinct and specific statement of what he claims to be new, and to be his invention.’

            “In the instant case, counsel for appellants have referred to the difficulty of describing the claimed invention except by stating its function. That difficulty appears to have been alleged as present in the General Electric case, supra, and the Supreme Court said the following concerning it:

            ‘The Circuit Court of Appeals below suggested that `In view of the difficulty, if not impossibility, of describing adequately a number of microscopic and heterogeneous shapes of crystals, it may be that Pacz made the best disclosure possible * * *.’ * * * But Congress requires, for the protection of the public, that the inventor set out a definite limitation of his patent; that condition must be satisfied before the monoply is granted. The difficulty of making adequate description may have some bearing on the sufficiency of the description attempted, but it cannot justify a claim describing nothing new except perhaps in functional terms. It may be doubted whether one who discovers or invents a product he knows to be new will ever find it impossible to describe some aspect of its novelty.’

            “The only changes in phraseology necessary to be considered in connection with that question are those found in the last paragraph of Sec. 112, supra. It seems obvious to us that a construction of that paragraph, such as appellant contends for, would render it wholly inconsistent with the first and second paragraphs which, like former R.S. § 4888, are explicit and mandatory in requiring a written description expressed in “full, clear, concise and exact terms” in the specification, and so set forth in the claims. In the instant case, the descriptions given in appellants’ specification are no more definite than the functional statements in the claims, and the latter are not sufficient to meet the requirements of the Act.”

          2. “Completely wrong 6 (as usual). Don’t you know that the structure itself is changed with ‘configured to?’

            See Alappat”

            Wouldn’t it be grand if the USSC noted alappat and then struck it as a side note like it did state street?

            That aside, the structure itself may be changed but we don’t know how, and in that regard, it hasn’t been changed. So it doesn’t really matter.

  6. Here’s an idea. Not something I’m advocating for but something to chew on.

    How about putting a cap on the amount of patent property that can be legally claimed at any time period? The cap could be tied to the population size or some other metric. Everybody is permittted to own some amount (on claim for one year, maybe) if they apply and obtain it after examination, which they will continue to pay for. Everybody can sell their potential share of the pie to the government where other entities can purchase it (for the duration of the patent, at which point the option returns to the original owner).

    Maybe also include a limit on the amount of income that can be earned from pure patent licensing/enforcement (a limit that could be offset by bona fide productive activities not including other for-profit legal activities).

    Or mix and match any of these things.

    1. Let’s limit the number of cats anybody can have (e.g., crazy cat lady) or the number of shoes or cars or houses or any type of property.

      Brilliant idea….

      1. Let’s just give all the property to the government… and give to each according to their need…

        Oh wait, Jane’s calling – be right back.

        1. Where’s Jane…?

          Does anybody know what the blogtroll is trying to say when he asks this question? It it some kind of weird attempt at red-baiting?

          Are the patent teabxggers really that pathetic and paranoid?

          Of course they are.

          1. LOL – if showing the fallacy of your communistic tendencies is ‘red-baiting,’ then you might be on to something Malcolm.

            Meanwhile, this country is not yet there, and personal property is still, well, personal property.

      2. Because patents are just like cats.
        As much as tomatoes are just like typewriters. As anon put it, they are both personal property, and I have seen few limits placed upon the amount of personal property one can own.

          1. When’s the last time a court found a tomato unenforceable?
            Are we going to limit the number of rental properties one can own (e.g., “leases”)?

          2. By your logic Malcolm, laws should be able to be passed to limit the number of tomatoes (or typewriters or any other personal property) that a person can have.

            While you seek to jest with your vapid one-liner of “When’s the last time a court found a tomato unenforceable?” clearly under your logic such a question enters the ‘realm of the possible.’

            It is not all that surprising that you do not fathom the inanity of your own ‘logic.’

    2. Malcolm again proselytizes against what the Founding Fathers wanted with “Maybe also include a limit on the amount of income that can be earned from pure patent licensing/enforcement (a limit that could be offset by bona fide productive activities not including other for-profit legal activities).

      LOL – see the award winning historical research. See the (still controlling) 1908 Supreme Court case. See the very language of the patent act which allows improvement patents on items that thus cannot necessarily be manufactured of their own accord without infringing on the rights of others.

      24/7 your desired policy is dead in the water Malcolm. Come back to reality soon.

        1. That’s some not so nice libel there Malcolm as we both know that I never posted such.

          Prof. Crouch, please remove the offensive and completely uncalled for comment.

        2. “and you could click on their names and find them ranting away elsewhere on the Internets about the inherent evilness of being g@y.”

          Lol did you do that?

          1. Much as Malcolm jumped to 6′s defense when 6 was busted with an inappropriate use of the “N” word, here, 6 jumps to Malcolm’s defense at a truly offensive post.

            Malcolm, my older brother, who died of AIDS, was gay and was more a man than you will ever be.

            I would label you slime of the lowest order, but that would be an insult to slime of the lowest order.

            You – of all people – would smear me with an anti-gay innuendo through the visibility of Disqus when under that system I requested that my level be at the lowest security level and that all of my posts be easily obtainable, while you purposefully chose the highest security level so that your posts were explicitly not so available. When I (repeatedly) asked you why you choose such secrecy (while hypocritically demanding more data of others), you refused to answer the question with a direct and honest answer.

            Your lack of class here with the libel of me rivals, if not exceeds, the disgusting behavior of yours when you joined in on the making fun of Eric Guttag when his father passed away.

            Not only a new low for you – but by association, a new low for this blog and for the blog moderator. ‘Congratulations’ as I did not believe that the bar could be lowered further.

            1. “6 jumps to Malcolm’s defense at a truly offensive post.”

              I defended something? I thought I asked if he really did it and then loled. I’m not sure how that is a “defense”.

              Who knows, maybe disqus simply had more than one “anon” that he’s getting confused with? One a gay basher, and one a gay person’s brother?

              “Malcolm, my older brother, who died of AIDS, was gay and was more a man than you will ever be.”

              Sad to hear about that anon. HIV’s a terrible thing. Just watched the Dallas Buyers Club this past week actually, pretty good movie.

              “Your lack of class here with the libel of me”

              Oh yes, libeling the pseudonym “anon”. Terrible stuff really.

              “Your lack of class here with the libel of me rivals, if not exceeds, the disgusting behavior of yours when you joined in on the making fun of Eric Guttag when his father passed away.”

              I don’t recall that. What specifically did he say to make fun of EG re his dad passing? Or was he just making fun of him as usual during the period where his dad died also?

            2. No 6, Disqus did not have more than one ‘anon’ as indicated by what Malcolm said to do in his post (hopefully removed) at 2:04 am.

              That he seeks to equate me as a gay basher when he knows – and should know, given the very context of his post – that I have NEVER said anything to equate me with being a gay basher is exactly the reckless libel that opens up Professor Crouch to a court motion that would blow away his control of privacy of posters.

              Editorial control is exercised here – at times that control seems to lack a clear objective basis and seems to be used to shape content.

              Be that as it may – this is not my blog.

              But here – an instance beyond reason needs to be addressed. I do not want it addressed with a private phone call or email. The transgression is public and the corrective action should be equally public.

            3. 6′s “Sad to hear about that anon. HIV’s a terrible thing.

              Thanks – I do appreciate the note of condolence. My brother was a phenomenal man of whom I am rightfully proud of.

              That only makes Malcolm’s post all the more offensive.

  7. There was some discussion in the case about whether en banc Federal Circuit case as ever overturned a prior en banc case. There was such a case in it shall live in infamy. That case is In re Donaldson Co., Inc., 16 F.3d 1189, 29 U.S.P.Q.2d 1845 (Fed. Cir. 1994). Donaldson overruled In re Lundberg, 244 F.2d 543, 113 USPQ 530 (CCPA 1957), and In re Arbeit, 206 F.2d 947, 99 1194*1194 USPQ 123 (CCPA 1953), both en banc cases. The court gave no good reason for doing so. It simply revisited and changed the prior case law that had stood for 40 years and indeed a lot longer than that given that the prior case law refused to allow claim to be issued when a novelty was in a function. Check this quote from In re Arbeit,

    “[C]ounsel for appellant was understood by us to have argued that a correct interpretation of the Patent laws as they existed before January 1, 1953, would have rendered it unnecessary to include specific details of structure in claims when such details could be ascertained from the specification, and counsel contended in substance that by the last paragraph of Sec. 112, supra, Congress declared the law to be what counsel believes the tribunals of the Patent Office and the courts should have held it to be long, long ago.

    Obviously, if the statutes prior to the Patent Act of 1952 should have been construed as counsel for appellant is understood to contend, the tribunals of the Patent Office and all the courts having to do with patent law have been erring probably ever since administration of the patent system authorized by the Constitution began. It would be a waste of time and labor to trace and recite here the history appertaining to this vital principle of law.

    In the case of In re Dalton, 188 F.2d 170, 173, 38 C.C.P.A., Patents, 953, 956, this court stated the law as follows:

    “* * * Properties, functions, uses, and results that may appear from the defined structure are not definitions of it and may not be solely relied upon to make a claim containing them patentable unless there is a positive setting out of the structure itself in the claims which, of course, must be responsible for properties, functions, uses, and results thereof.” (Italics ours.)”

    In overturning these cases for no good reason Judge Rich and the Federal Circuit, unanimously for God’s sake, overturn precedent that had stood the test of history and have provided as best as possible clear indefinite claims. If there is any case that deserves to be overturn it is Donaldson, and Lundberg and Arbeit should be restored.

    The patent office needs to rely on In re Arbeit and begin rejecting functional claims now, and seek to overturn Donaldson when it goes back up because Donaldson is a travesty. It is a wonder that the patent office never sought certiori.

      1. Lundberg:

        The third paragraph[2] of 35 U.S.C. § 112 made its initial appearance in the Patent Act of 1952. As correctly stated by appellants in their brief, this paragraph was designed, at least in part, to modify or overrule such decisions as Halliburton Oil Well Cementing Co. v. Walker, 1946, 329 U.S. 1, 67 S.Ct. 6, 10, 91 L.Ed. 3,[3] and, as pointed out by an augmented Board of Appeals in Ex parte Ball & Hair, 99 USPQ 146 (Bd.App. 1953), “* * * some measure of greater liberality in the use of functional expressions in the definition of elements in proper combination claims is authorized by section 112, than has been permitted by some of the stricter decisions of the courts in the past.” This “measure of greater liberality,” however, is subject to well defined limitations, for Congress did not intend, by incorporating the third paragraph into section 112, to destroy certain basic precepts of patent law. Thus, though appellants’ arguments would necessarily lead to the opposite conclusion, it is still true that “the claim is the measure of the invention.” The requirement in the second paragraph of section 112 that “the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention” has not been at all diminished by the addition of the third paragraph; the latter paragraph must 548*548 be read in the light of the first and second paragraphs and given an interpretation consistent with their clear meaning. In re Arbeit, supra.

        We are of the opinion, therefore, that, notwithstanding the third paragraph of section 112, it is the language itself of the claims which must particularly point out and distinctly claim the subject matter which the applicant regards as his invention, without limitations imported from the specification, whether such language is couched in terms of means plus function or consists of a detailed recitation of the inventive matter. Limitations in the specification not included in the claim may not be relied upon to impart patentability to an otherwise unpatentable claim.

      1. Well, 6, if Donaldson is limited to its facts, In re Arbeit is not overruled with respect to every other type of claim containing functional limitations. Under that case, which is en banc and cannot be overturned by subsequent panels, the novelty of a claim to an apparatus or composition cannot be in a new property or new function. The structure itself that the fines over prior art must be claimed.

        The beauty of this case is that it does not depend upon Halliburton. It depends upon controlling CCPA case law.

        The survey provides authority to the position that “adapted to,”configured to” or the more generic “to” cannot distinguish structure, meaning that those limitations can be ignored.

        This would permit computer programs to be claimed only using means plus function language because that was the precise holding of Donaldson.

        Arbeit used to be cited in MPEP 706.03(c). It no longer appears in the MPEP, and that appears to be a mistake.

  8. If district court judges and expert ALJ panels get even simple claim construction wrong so often, expecting (mostly) inexperienced non-lawyer examiners to fix the problem strikes me a naive and unrealistic.

    Yes, some claims on their face are full of jargon and coined terms who meaning is opaque, but the principal culprit is the law of claim construction. The announced principles for when a claim is narrowed by unclaimed limitations is trivial to parrot but different judges with different agendas have woven a mare’s nest of indecipherable stare decisis from it.

      1. The English language is imperfect. Most words have many meanings with slight nuances between them. As such, obtaining perfect clarity from claim language is a pipe dream.

        Applicants rarely know exactly what words are going to be important before prosecution, so providing glossaries doesn’t guarantee success. Also, would we need a glossary for words in the glossary?

        For example, while many business contracts have sections that include definitions, even these are not foolproof. This is a problem inherent in law in which the English language is used.

        The problem is that any creative defendant/plaintiff is going to find a way to monkey with the language (one way or another) after it is issued and it is nearly impossible to predict, prior to issuance, what language will be monkeyed with.

        The US patent system is a balance between ease of accessibility and ease of use. Putting a greater onus on Examiners/Applicants to define terms (bearing in mind that any definition will still be imperfect) reduces accessibility to the system. Obtaining a patent should require an application — not an encyclopedia.

        Since the vast, vast majority of patents don’t see the light of day, it makes sense that we don’t spend a lot of time sharpening up the fuzzy edges of what is encompassed by the claims and what is not — it is time wasted. Instead, our system uses two motivated parties to clarify those fuzzy edges.

        Also, despite the existence of instances in which those fuzzy edges come into play, those fuzzy edges don’t come into play in most instances. We see, as part of court decisions, only those instances in which the fuzzy edges actually make a difference — and that represents a very small percentage of patents being asserted.

        1. The US patent system is a balance between ease of accessibility and ease of use. Putting a greater onus on Examiners/Applicants to define terms (bearing in mind that any definition will still be imperfect) reduces accessibility to the system. Obtaining a patent should require an application — not an encyclopedia.

          You really are skilled when it comes to battling those strawmen.

          Nobody is saying that applicants need to file an encyclopedia. What’s being suggested is that applicants in certain art fields make a greater effort to avoid jargon and provide clear definitions for terms that are used in the claims — definitions that the applicant and the public will subsequently rely on. That’s really not asking much.

          Applicants rarely know exactly what words are going to be important before prosecution

          Really? That’s not been my experience at all. I mean, maybe first time applicants who don’t really know what a patent is. But any applicant with a decent lawyer surely knows what words are going to be important before the claims are filed. That’s why it’s crucial to choose one’s words carefully when describing one’s invention.

          The problem is that any creative defendant/plaintiff is going to find a way to monkey with the language

          What’s your point? Should we make it as easy as possible to “monkey with the language” then? Should we give up trying to force applicants to do a better job of describing their contribution to “progress”? There seems to be some room for improvement in that regard.

          1. Malcolm does his typical AOOTWMD with “You really are skilled when it comes to battling those strawmen.

            Coming from the king of strawmen, that’s quite a compliment.

          2. That’s really not asking much
            I see you didn’t read much of my post.

            That’s not been my experience at all.
            Your experience with biotech claims is not relevant to most other applications.

            But any applicant with a decent lawyer surely knows what words are going to be important before the claims are filed.
            You know what term-of-art an examiner is going to misconstrue 3 years later? or what basic phrase a defendant will attempt to mangle 7 years later? You should be picking stocks instead.

            That’s why it’s crucial to choose one’s words carefully when describing one’s invention.
            Is that how you justify your $30K bill for preparing an application?

            Should we give up trying to force applicants to do a better job of describing their contribution to “progress”?
            You just don’t get it. The vast majority applications are described perfectly clearly. However, you cannot easily make something “clear” when the other side is trying really hard to make that same something “unclear” and the English language makes this very easy to do.

            This isn’t a “claim construction” problem. It is a problem that shows up anytime you have two parties fighting over the meaning of terms within a legal documents.

            1. There’s lots, depends on who you’re asking for an excuse from. If you’re asking me, I’d say the rock bottom “excuse” is that lawlyers and judges have overly complicated the law to the point where to new folks and undereducated folks it is impossible to provide what would be called a “good quality” examination. But there’s a variety of smaller excuses for various situations.

            2. lawlyers and judges have overly complicated the law
              The law is complicated because the issues are complicated. If it was easy, anybody could do it.

              to new folks and undereducated folks it is impossible to provide what would be called a “good quality” examination
              The USPTO needs to get their s h i t together then.

            3. “The law is complicated because the issues are complicated. If it was easy, anybody could do it.”

              The old fall back excuse for overly complicating the law.

              “If it was easy, anybody could do it.”

              That’s pretty much what you’re asking for when you take a general population of engineers and ask them to become examiners.

              “The USPTO needs to get their s h i t together then.”

              Meh, to them they’re already at record breaking quality. And for the nonsense you lawltar ds have laid on their plates I’d be inclined to agree that they’re at least reasonably at good quality examinations for most apps. There are of course exceptions to this, softiewaftie claims etc where the nonsense of the courts is especially hardcore and skews examination away from anything approaching reasonable quality.

            4. Meh, to them they’re already at record breaking quality

              Is that the same ‘record breaking quality’ as mentioned by Doll when he presented the patent allowance cliff chart?

              You know the one – the one that invigorated Kappos in one of his first addresses to the troops that “Quality does not equal reject

            5. “You know the one – the one that invigorated Kappos in one of his first addresses to the troops that “Quality does not equal reject“”

              Well you at least have to concede that quality did equal reject there for awhile ;)

            6. The ;-) is telling 6, as you and I both realize that a mantra of Reject-Reject-Reject was in fact in force at the Office.

              Malcolm has yet to recognize this reality. He has even intimated that Kappos had no reason to declare that “Quality does not equal Reject>”

              Further, as I have posted, this very mantra is responsible for the current state of the huge number of deck chairs on the various levels of the Patent Titanic.

              As I have often stated, a solid rejection will result in prosecution coming to an end. But a CRP rejection will likely result in prosecution not ending, but with the applications being shuffled off to wait in yet another queue.

              The problems that the Office has with its backlogs – with all of its backlogs is one of its own making.

            7. “As I have often stated, a solid rejection will result in prosecution coming to an end. But a CRP rejection will likely result in prosecution not ending, but with the applications being shuffled off to wait in yet another queue.”

              That just hasn’t been my experience. I make “solid” rejections in cases all the time that don’t bring the case to an end. They may bring those particular claims to an end, and indeed usually do. That hardly means that prosecution ends. It generally just means amendments are made, prosecution doesn’t end and the application is shuffled off to wait in yet another queue.

              “The problems that the Office has with its backlogs – with all of its backlogs is one of its own making.”

              I’m not even sure how you can say that with a straight face considering the record numbers of apps. Especially even given the huge numbers of allowances of late. I mean, according to your view of things if we just allowed the app then prosecution should end and the backlog go down a bit. But in reality that doesn’t really happen all that much. CONs and DIVs just get filed and prosecution continues until the money or the will to prosecute dries up. I had a whole slew of CONs of cases on my docket not long ago (and will have more when my spe dumps the new ones to me no doubt). Those cases are just the same case that would have been an RCE had I have artificially drawn out those parents to RCE.

              I mean, frankly your simplistic view of the backlog “problems” and their causes is attractive, but it just doesn’t seem to track well with empirical observations of reality. Sure maybe reject reject reject caused a bit of a bump back in the day. But it surely isn’t now and as well as I remember the backlog isn’t exactly disappearing. Though I will say I’m issuing/doing non-finals on very recently filed cases of late. I issued one the other day within the year it was filed.

            8. according to your view of things if we just allowed

              No 6 – stop that spin immediately. I have advocated against an Allow-Allow-Allow rubberstamping as being just as bad as a Reject-Reject-Reject rubberstamping.

              I guess it comes down to a simple choice really, get busy doing the Fn job. and stop whining (said in the best Andy Dufresne tones).

        2. >>English language is imperfect<<

          I often find myself working with/against an Examiner where English is their second or third language. Usually extremely bright, technically, but I get into some very absurd dogmatic fights on what is the proper expression or word selection or usage in English. The Examination corps needs a few folks to help settle "grammatical disputes" – and to whom applicants or their practitioners can appeal to review and sort out such situations. Something like a hybrid editor and proofreader. I haven't taken such a controversy to the Ombudsman, but sometimes I have thought about it…

          1. I get into some very absurd dogmatic fights on what is the proper expression or word selection or usage in English.
            I have gotten into some “grammatical” battles before. It probably wouldn’t be a bad idea to for the USPTO to offer some basic courses in grammar — bearing in mind that there are plenty of agents/attorneys that could probably use the same.

    1. I disagree – almost as vehemently as I disagreed with Ned’s cockamamie idea that examiners should not accept legal arguments.

      Examination is to be caused by the (still absent) director. This examination is to be conducted by examiners. Examiners are to exam to the law. Fully. No ifs and buts or excepts.

      To say ‘gee, it’s too hard, let’s find a ‘creative’ answer is strictly B$. The job is there to be done. Train the people to do the job and stop making excuses.

      1. anon, in a pluperfect world, you are right. But you know that the reality is the PTO suffers the same high turnover rate it always has, meaning that you perpetually have new examiners with zero legal training wrestling with what are perhaps the most difficult legal documents extant. Simply pounding the table and demanding that the entire examining corps be trained, dammit, is fine, and necessary, and so they are – but never at the needed depth.

        A registration system that removes examination of private monopolies from government hands and leaves the question to the interested private parties would solve this, and save a ton of money.

        1. Most patents never are litigated. They are just bright shiny ribbons to be hung on walls. Why pay tens of thousands of dollars for that?
        2. Registration system means no presumptions, and I would tighten down on fee-shifting. Not a blanket loser pays necessarily but a mechanism to throttle irrational exuberance on the part of registrants. Even with the “expert” government examination you have now there is no guarantee that nuisance suits do not happen. This would have to be a two-edge sword, by the way – intransigent defendants need to be brought to heel as often as patentees.

        OK, fire away bro. I hung it out there, it’s radical in this country if not elsewhere because it means walking back government supervision over a tiny speck of life, but I think it is no less realistic than expecting ALJ-level training and expertise for the entire examining corps.

        1. Tour, what we need is a system where we publish applications but only examine them upon the payment of the fee. They can sit there unexamined for as long as it takes.Perhaps we ought to provide that they go abandoned unless a request for examination is filed within seven years.

          Now this is the Japanese system that used to exist and that we asked the Japanese to change because we did not like Japanese patent applications pending so long without examination.

          But a simple remedy is to allow anybody to request examination, provided they paid the fee.

          1. …and how would you handle applications submitted with a non-publication request, Ned?

            Or are you thinking simply mandating a full taking of Quo with even less of a chance to obtain Quid?

        2. Thanks Tourbillion,

          In fact, I have given some serious consideration to the pros and cons of a registration system.

          As you mention, the vast majority of patents do not see a courtroom. Ever. My understanding is that far less than 2% of active patents have been involved in litigation. FAR LESS.

          That is one aspect that needs to be brought front and center to help squelch the witch hunt mentality foisted by the “Troll” boogeymen FUD campaign.

          A second (valid) point is that the budget of the Office is in the Billions (yes, that is a B). This is in the truest sense an innovation tax because that budget is paid for completely by users (and the innovation tax aspect is pernicious when those funds do not even stay in the patent office – that’s a separate gripe).

          However – and this is a huge point – you risk wholesale devastation of the patent system by reducing it to a “just sign up” for well, for basically nothing program. Can you say “Trade Secrets?” Why exactly share what is shared in patent applications? What does that get you? Reduce the Quid to nothing and you reduce the Quo to nothing as well. Now that would entail a serious question as to serving the constitutional purpose of the law.

          No. I am afraid that any modern type of registration system (with the eliminated rights) would fail both in its purpose and its legality.

          As for the notion of ‘realism’ and examination that cannot be in place for the government to do its appointed job, sorry – I refuse to buy that line. Examiners are paid to do a job. All I ask is that they do that job. Is it s tough job? Sure. Is it an impossible job? No. Can the job be changed to make it more efficient? Sure. I have given solid recommendations for just that. Those recommendations include eliminating the ‘widget’ mentality and having the best and brightest pre-screen and give weights to applications based on complexity and difficulty to examine. Those recommendations include tighter docket control and removal of gamesmanship. Those recommendations include APPLYING the law – as it should be applied – not throwing up your arms and saying ‘we give up.’

          1. ” Examiners are paid to do a job. All I ask is that they do that job. Is it s tough job? Sure. Is it an impossible job? No.”

            Are the given the tools and training (i.e. a legal education) to match with the people they argue against?

            Let’s assume you were to hire law/engineers – what’s the going rate for those people on the private market?

            You get what you pay for.

            1. “You get what you pay for.”

              Then fix that problem.

              … by drastically reducing the salaries of patent lawyers, thereby making the job of patent examiner that much more attractive.

              Just kidding, folks.

              In all seriousness, any serious upgrade to PTO functionality is going to cost serious money. But will there ever be enough money to go head to head with a pig-headed zillionaire or any massively funded company who decides they want to drive a train through a PTO at full throttle? I’m dubious, unless meaningful statutory limits are put on what one entity can do in a given time period. That said, any improvement is welcome.

            2. You guys talk about hiring on lawlyers to be good examiners. I know at least 4 lawlyers from the outside that had previous prosecution and even some of them industry exp. With the exception of one of them none of them are exactly cream of the examiner crop. But I guess 1 out of 4 that can do the job pretty well is a lot better than avg.

              You guys also seem to forget a rather key aspect of this job. The bureaucratic nonsense that goes along with it. That’s a huge piece of the job. And those lawyers need to be able to get along with that as well as just be lawlyers.

            3. Another angle on why Malcolm is dead wrong with “unless meaningful statutory limits are put on what one entity can do in a given time period

              Because limiting innovation is the opposite of the constitutional mandate for having a patent system in the first place.

            4. limiting innovation is the opposite of the constitutional mandate

              That’s nice. Unfortunately, you have zero evidence that the number of patents granted drives the rate of “innovation” in any technological field.

              Maybe the Heritage Foundation can cook up some data for you to cite to. You should ask them. They are very credible people, you know.

            5. That’s nice. Unfortunately, you have zero evidence that the number of patents granted drives the rate of “innovation” in any technological field.

              My what a pretty strawman.

              How else does the patent office live up to its constitutional mandate except grant patents Malcolm?

              Um, it is what they DO.

              LOL – do you even realize how futile your anti-patent position is?

          2. anon, registrants would still be incentivized to register inventions because doing so affords coverage against any trespasser – unlike merely retaining a trade secret. Works just fine in New Zealand, South Africa, Hong Kong, and other former (and non-backward) colonies of the Anglosphere.

            As to your insistence on training examiners to do a very difficult job right, please know that I have sympathy to that aspiration. But this is not a military arm of the government, for example, the nuclear service. You are demanding stringent training (and continuing proficiency) standards of a civilian government union. If you can make your goal happen, you should be elected Emperor of the Universe.

            1. “anon, registrants would still be incentivized to register inventions because doing so affords coverage against any trespasser – unlike merely retaining a trade secret”

              Yeah I don’t see why that goes over anon’s head. You still get legal rights even if you don’t get full legal rights that you get with the issuance of a patent as we have now.

            2. registrants would still be incentivized to register inventions because doing so affords coverage against any trespasser

              No. What is the coverage? A chance possibly years later to attempt to prove your case in court (with no presumption)? Years after you have given the quo? And trespassers against trade secrets do have afforded coverage under the law – something that you should know even if 6 would not.

              I don’t know about the foreign country workings, so I cannot comment, but for some reason TRIPS comes to mind to make me think that you have not compared apples to apples.

              And one needs not a military arm of the law to expect a job done right. Still not buying the “it’s too hard” whine.

          3. “That is one aspect that needs to be brought front and center to help squelch the witch hunt mentality foisted by the “Troll” boogeymen FUD campaign.”

            Couple that information you bring up with the factual matter of the absurd numbers being granted and it’s a wash. May as well bring up neither.

            1. 6 errs with “absurd numbers being granted

              LOL – B-b-b-but the system is working and there is ‘too much’ innovation going on…

              Another character suicide 6. How very Duell of you.

            2. “LOL – B-b-b-but the system is working and there is ‘too much’ innovation going on…”

              Nobody minds how much innovatin’ is going on in the wild anon. What they care about is how much of it is entitled to a government granted right to exclude others from making using or selling embodiments of thems innovatin’s.

          4. “?Is it an impossible job? No.”

            That’s just your assertion. For a lot of people around this hea office it actually is. They just bs good enough to get by.

            1. LOL – that’s your answer? An admission that for “a lot of people” in the office that non-BS examination is an impossibility?

              Think about what you wrote after you have your coffee this morning 6.

            2. “LOL – that’s your answer? ”

              My “answer”? You mean my “response”? Yes. That’s my response. My response is that you’re simply making an assertion that easily gathered factual evidence shows to be blatantly false for many people covered by your wildly broad assertion.

              “Think about what you wrote after you have your coffee this morning 6.”

              K. Did. All good. I repeat it. Your assertion is demonstrably false. I could walk you down my hallway and introduce you to at least 2 13′s and a 12 amongst just the people I know who it is, at least currently, impossible to examine in a quality fashion. When asked the 12 literally doesn’t know what “the law” is that we’re supposed to be applying. The 13′s can’t read a technical reference worth a god dam to save their lives. Oh, and let’s top all that off with another 12 who thinks that adding “with a computer” somehow makes everything regarding 101 A OK. I’m sorry, but for these people quality examination is, at least currently, and likely in the foreseeable future, impossible.

            3. people I know who it is, at least currently, impossible to examine in a quality fashion

              Then what the HE11 are they being paid for?

              Stop whining about how tough the work is and just do the Fn job.

        3. A registration system that removes examination of private monopolies from government hands and leaves the question to the interested private parties would solve this, and save a ton of money.

          Save money for whom?

          Seems to me that it just shifts a huge portion of the current costs from the patent applicant (who pays the PTO) to the public (who will be paying fees to courtrooms and attorneys unless the fees are shifted).

          2. Registration system means no presumptions, and I would tighten down on fee-shifting. Not a blanket loser pays necessarily but a mechanism to throttle irrational exuberance on the part of registrants.

          If such a mechanism exists, by all means we should be using it now while we wait for the details of this “registration system” to be ironed out.

          I’d almost like to see the switch to a registration system just to see how long it takes before full repeal. I’m guessing it wouldn’t last as long as prohibition. I predict it would end up being played like lottery where you can write your own numbers on as many pieces of paper as you can afford. Then when the winning number is announced the first five hundred people to show up can sue each other to see who was “really first”.

          1. “Save money for whom?

            Seems to me that it just shifts a huge portion of the current costs from the patent applicant (who pays the PTO) to the public (who will be paying fees to courtrooms and attorneys unless the fees are shifted).”

            Yeah people advocating for a reg. system are usually applicants that suffer fees under the current regime. They seem to be blithely unaware that it is they wishing to impose their will on the rest of the population. But the congress isn’t so unaware as they are.

            1. A little less cynicism, 6, might be to your advantage. I am neither an applicant “suffering” fees (interesting usage, that) nor a sinister Stalin-in-waiting trying to “impose my will” on the public.

              Under registration, there is no cost “shifting”, only cost saving, namely, the enormous cost of prosecution, which could be cut down immensely. Litigants currently subsidize court costs and would continue to do so. I do not think there will be an explosion in litigation under registration for the simple reason that most patentees currently can’t afford it now anyway, and hiring a good firm on contingency is nearly impossible in most cases.

            2. Tourbillion, your own reasoning provides the Achilles heel of actual rights:

              I do not think there will be an explosion in litigation under registration for the simple reason that most patentees currently can’t afford it now anyway, and hiring a good firm on contingency is nearly impossible in most cases.

              All you will have is a gathering of Quo with no effective grant of Quid, because in order to gain the Quid, you would need to afford the litigation expense.

              The system you would have is a thin veneer of sheepskin over the wolf of The Game of Kings.

              I flatly reject that.

            3. anon, not sure why you remain concerned with the lack of quid pro quo. There has been none since 2001, when all applications started to be published without any promise of grant. And by the way the fig leaf of NPR is only that, because the penalty for requesting non-pub and then filing foreign without remembering to rescind is so draconian it has had its intended effect of ensuring that almost every application will be filed without an NPR.

              I am aware you don’t like my proposal for a registration system. You might have the better position here, although any proposal that removes the smallest jot of life from Leviathan’s pitilessly consuming supervision seems to acquire an instant appeal of late. But opposing registration as divesting inventors of what is now a mythical quid pro quo from the halcyon days of yore is not the most overwhelming argument one might make.

            4. Sorry Tourbillion, the Quid Pro Quo is the foundation of the patent system.

              Yes, it was weakened with the taking of almost mandatory publication (with the fig leaf of PTA meant to make sure the Office acted in enough time for applicants to abandon prior to any such publication), but the answer to dealing with a fire in the kitchen is not to bring buckets of gasoline and hurry up burning down the house.

            5. “I am neither an applicant “suffering” fees (interesting usage, that) nor a sinister Stalin-in-waiting trying to “impose my will” on the public.”

              See you don’t even understand what I’m talking about. Anytime someone files for a patent it is them declaring that they wish to impose their will on the rest of the country, specifically for them to have the legal right to exclude them from doing x that they claim they just invented. It is an exercise of power. And you don’t even understand that it is one. The congress is not so unaware.

              To be sure it has nothing to do with stalinesque uses of power or levels of power. It’s just an ordinary everyday imposition of power, for an ordinary everyday fee and disclosure.

              “Under registration, there is no cost “shifting””

              Sure there is. Maybe you should read your history on the last time we tried it.

              “I do not think there will be an explosion in litigation under registration for the simple reason that most patentees currently can’t afford it now anyway”

              Nobody said there would necessarily be an “explosion” of litigation. It will depend entirely on what kind of registration system we put in place as to whether or not litigation would increase. But make no mistake about it, there will be increased costs for others. That’s the whole point of the registration system, to make it as painless as possible, in the aggregate at least if not for individuals, for those seeking to impose their will on others. And that is pretty much necessarily going to cost others.

              If you have a proposal that “only saves money” then put it forward. But don’t be surprised or overly defensive when other people point out the actual costs that would likely be raised under your proposal.

            6. Talk about “overly defensive” brosefus, telling me to “read my history” and defending the over-the-top hyperbole of “imposing will” on society by the strongman tactic of applying for a patent…chill dude. Decaf advised.

        4. A registration system that removes examination of private monopolies from government hands and leaves the question to the interested private parties would solve this, and save a ton of money.
          It isn’t a slam-dunk, bad suggestion. However, such a system would be rife with abuse — far more than today’s system. Anybody could claim anything and assert anything. While sophisticated parties would be able to survive the onslaught, unsophisticated parties would be at the mercy of predators attempting to extract payments for patents that would have never seen the light of day.

          The USPTO serves as a filter. What people should recognize is that the USPTO is not a perfect filter — it is not meant to be a perfect filter. It would cost too much for the USPTO to be a perfect filter and the cost would not justify the benefit.

          The court system, combined with two motivated, opposing parties, acts as a second, finer filter. This second filter gets applied rarely, but it gets applied when the cost of applying the second filter is worth it.

          1. What people should recognize is that the USPTO is not a perfect filter — it is not meant to be a perfect filter. It would cost too much for the USPTO to be a perfect filter and the cost would not justify the benefit.

            People already recognize that the USPTO isn’t perfect and it never will be. That doesn’t mean that its functionality can’t be dramatically improved.

            the cost would not justify the benefit.

            Depends on whose “benefit” you are concerned about.

            For example, a fair amount of the benefit right now is going to people who don’t do anything except sit around and think about patent claims that would be useful for sueing other people with.

            How much would it cost to get remove those people from the system? I don’t think it would cost that much in terms of money. It wouldn’t cost anything in terms of promoting the progress. And everyone in the country would benefit except for those bottom-feeders. That’s a lot of people that would benefit, for very little cost.

            1. a fair amount of the benefit right now is going to people who don’t do anything except sit around and think about patent claims that would be useful for sueing other people with.

              LOL – because Malcolm says so – oh how very Carroll of him.

            2. That doesn’t mean that its functionality can’t be dramatically improved.
              That can be said about anything: cars, computers, airplanes, refrigerators, phones, staplers. You name it and the functionality of it could be dramatically improved. However, the big questions is: “does the increased functionality offset the increased cost?”

              Anybody can throw out suggestions for making the USPTO or any system or any product better. However, if the benefit of the improvement of the improvement doesn’t outweigh the cost of the improvement it will not likely come to pass (unless Congress mandates it — because Congress likes fund wasteful things).

              For example, a fair amount of the benefit right now is going to people who don’t do anything except sit around and think about patent claims that would be useful for sueing other people with.
              Someone has to draft the claims, and given the value of a well-written claim, it is no wonder that these claim drafters are highly paid. Regardless, they do get paid fairly (i.e., “a fair amount”), so I’ll concede your point.

              How much would it cost to get remove those people from the system? I don’t think it would cost that much in terms of money.
              Why don’t you expound upon your idea? Tell us how you would implement it.

          2. You may be right that a registration system could be abused “far more than” today’s. But I do not think that has been the experience in the countries that have tried it. You don’t hear of New Zealand courts or Hong Kong courts or South African courts drowning in patent litigation, and at least in some of those places you wouldn’t laugh off the possibility of technical innovation occurring there.

            I’m not saying that registration is a panacea, or that claim indefiniteness and/or claim breadth is not a problem (although I do not see it as being as much of a problem as some). I’m just saying that if some of you guys had been advising Alexander, he’d still be sitting around Turkey trying to untie the Gordian knot.

            1. But I do not think that has been the experience in the countries that have tried it.

              Except for the fact that it was the experience of one particular country that tried it: this country.

              And what I have seen you propose so far as tinkering to avoid that results in the evisceration of the Quid Pro Quo that serves as the foundation of the patent system.

              You have not eliminated the knot by closing your eyes to the ramifications of your proposal – regardless of what has happened in other countries (I would add that those other countries have neither our record of innovation, nor our constitution – it still appears that you are trying to compare apples and oranges).

            2. You don’t hear of New Zealand courts or Hong Kong courts or South African courts drowning in patent litigation
              What is the value of the litigation in those jurisdictions versus the value of a litigation on the same patents in the US? Some jurisdictions just aren’t a good comparison to the US.

      2. Anon, RandomGuy made a persuasive point that the examiner’s could not determine and were not in a position to determine whether a legal argument made by the applicant is correct or not correct.

        The MPEP, and contrast, lays out the law and guidelines for the examiner’s to follow. Telling the examiner’s the follow the MPEP and ignore a legal argument that is inconsistent with the MPEP is proper.

          1. However Anon, I, the director, am in command of the patent office, not you. I tell the patent examiners what the law is. Not you. You have a right to appeal to the Federal Circuit if I, the director, am wrong. But until then, keep your legal arguments to yourself.

            1. This is not how the country is run?

              IS?

              or

              WAS?

              You might be right about WAS.

              Recall what Cromwell said to Henry VIII at a time when he feared the law, “The Kings words ARE the law?”

              I suspect that AG Holder well plays the part of Cromwell.

          2. You’re ignoring that there’s an established history of the office simply saying that they were unequipped to evaluate portions of the law. Did the system collapse? Was a stink even raised?

            Whats the difference between saying that you don’t have the tools to evaluate best mode and you don’t have the tools to evaluate abstract ideas, or 101s in general, etc.

            1. You’re ignoring that there’s an established history of the office simply saying that they were unequipped to evaluate portions of the law

              As I recall, that was a failed argument against software patents. See Benson – Ned can help you with the exact quote – it ends with “we do not so hold.”

            2. RG: Whats the difference between saying that you don’t have the tools to evaluate best mode and you don’t have the tools to evaluate abstract ideas, or 101s in general, etc.

              Not entirely sure what RG is driving at here but certainly some “inventions” are easier to examine than others. That difficulty is part of the reason that certain kinds of inventions are simply prohibited.

              What makes a specific abstraction “obvious” in view of a prior art abstraction? How about a never-before described functionality? when is a new functionality “obvious”?

              An abstraction selected from the group consisting of all new abstractions, wherein the new abstraction is more useful than previous abstractions under certain conditions.

              A functionality selected from the group of new functionalities, wherein the new functionality is more useful than previous functionalities under certain conditions.

              Now, suppose you want to claim something more specific. I say that your more specific claim is obvious in view of the above disclosures. You say I haven’t taught all the elements. That’s true. If all newly described functions and abstractions are deemed to pass 112 upon their description (which appears to be the status quo in certain art fields) and obviousness becomes synonymous with anticipation, then the only thing in the way of all abstraction and functionality being sucked up into patents is the amount of money and time people have to spend on filing applications.

              That’s not how the system is supposed to work. It’s not what it was designed for. To the extent that Judge Rich was confused about these things (and he seems to have been deeply confused about these things) he did everyone except for a microhandful of grifters a great disservice.

            3. I’m talking about how the office simply said “We can’t really evaluate best mode” so they didn’t. Nothing stops the office from saying “We can’t evaluate 101s, so we won’t.”

        1. “Telling the examiner’s the follow the MPEP and ignore a legal argument that is inconsistent with the MPEP is proper.”

          That one almost made it through my satire screen. Well done.

          Re your later comparison of Holder to Cromwell, it is at best partially accurate. Neither cared overmuch for whether the law disagreed with their intentions, this is true. However, Cromwell was bold, intelligent, and not a lickspittle to a king. Rather the opposite. OK compare and contrast time is over. Class dismissed.

    2. Tour, do you have an improvement over Phillips?

      Have you ever considered there is an inherent scope limitation that needs to be factored in (in court): that a patent cannot cover as a matter of law more than what it disclosed and equivalents. Thus, any construction that is proffered must show that it is not broader than the scope allowable.

      1. Inherency is a great concept and shows the fallacy of the House/Morse position that the ‘oldbox’ has all of the new functions that ever could be invented ‘already in there.’

  9. Re your conclusion that “the problem has to be addressed by the US Patent Office with a renewed focus on clarity of claim scope.” Since I have been told by PTO examiners that they are actually discouraged from giving 112 rejections, that does seem like an area for improvement.
    But I think there are at least two problems? First, one reason for that examiner discouragement was to discourage examiners from using 112 claim rejections to avoid the work of doing adequate 103 prior art searches and rejections, which had been a problem in the past. Secondly, unless and until the pending Sup. Ct. case on claim ambiguity provides clear changes, the Board is stuck with Fed. Cir. decisions that make it difficult to sustain claim ambiguity rejections. ?

    1. Agree in spades, Paul. The Federal Circuit, seen as a solution, has long been THE problem with regard to claim clarity. From the attempt to overturn Halliburton, to Donaldson, claim clarity has always taken a back seat.

      It is remarkable today to read the testimony to Congress regarding functional claiming. Virtually every witness testified in favor. Huh?

      Now, every claim is functional. That is how we are taught to claim. There is little doubt that so many patents issue that cover whole industries. That should not be possible, bit it happens all the time. Could it be that the majority of patents that issue cover whole industries? I wouldn’t be surprised.

      1. Shameless how you continue to mis-portray history Ned – “From the attempt to overturn Halliburton

        Halliburton was abrogated by Congress. Plain. Simple. End of story.

          1. Ned, let me ask you: since Arbiet was filed in 1949, does it utilize the law of the 1952 Act?

            And what do you make of this snippet: “One other matter requires brief discussion. The prosecution of this application began and ended in the Patent Office and the appeal to this court (notice given November 21, 1951) was taken prior to the effective date, January 1, 1953, of Public Law 593, 82nd Congress 2nd Session, Chap. 950, 66 Stat. 792, approved July 19, 1952, 35 U.S.C.A. § 1 et seq., hereinafter referred to as the Patent Act of 1952.

            Your past tendency to cite supporting case law that itself fails is noted as being repeated yet again.

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