On Thursday Feb 27, I’ll be participating in my first IPO Webinar hosed by Pamela Sherrid. The event begins at 3PM ET and will focus on the hot topic of “Functional Claiming.” $130 per user per webinar. Register here: http://www.ipo.org/IPChatChannel/. Also on the panel are Stephen Durant of the Schwegman firm and Abran Kean of Erise IP. — Dennis Crouch
I wonder if the panel discussed the question I proposed on whether a claim was invalid under Halliburton and its predecessors if it were functional at the point of novelty and did not use means plus function for the concerned claim element(s).
The pattern I observe is that when such a case is before the Federal Circuit, the question is presented as to whether the functional term is to be construed under 112(f) or not. That line of reasoning assumes that Halliburton is totally repealed and that all wholly functional language is to be construed under 112(f) regardless that the statute does not say that and regardless that Halliburton was concerned largely with the overarching apparent scope of such functional claims and not with their actual scope after construction.
And yes, I am still waiting for you to address the Nazomi case. For arguments sake, use the fact that software is equivalent to hardware to get past your, ahem, ‘mental roadblock.’
Among other questions that you still have not provided on point answers to…
So, did anyone listen to the Webinar? Was it as biased as we suspected?
Dennis –
The indenting and numbering or indexing feature is very nice. But it shuts off way to soon. Is there any way to increase the reply limit?
I believe that I’ve been able to add two more layers. DC
Just so everyone is clear on this, anon’s position is that 112(f) overruled every prior case that had found invalid a claim that was functional or functional at the point of novelty.
This includes O’Reilly v. Morse, Perkins Glue, United Carbon, Wabash Appliance and, last, but not least, Halliburton.
And, to top that off, he also has contended that such functional claims are not limited to the corresponding structure and equivalents unless they intentionally invoke 112(f).
Breathtaking….
But, actually consistent with the actually practice of the Federal Circuit. Which is why there is so much concern by so many that the patent system is really broken.
“ anon’s position is that 112(f) overruled every prior case
BZZZZT – wrong Ned.
You have a real problem with over-reading things.
no, anon, that is your position. A number of Supreme Court cases prior to Halliburton held claims invalid as functional at the point of novelty. Simply “abrogating” Halliburton as you claim 112(f) did, did not overrule these cases, at least not necessarily. Your FATPON-is-a-canard mantra makes clear you view that these other cases are overruled as well.
But I agree with you, a Rich-lead CCPA and Federal Circuit went out of its way to act as if the functionality of apparatus and composition claims were no problem. They even began to treat them under 112(f) even without the magic words “means.” They, en banc, decided Donaldson, declaring that cases like Arbeit are overruled — a case that clearly had nothing to do with means plus function, but with a functional claim.
The Rich lead CCPA and Federal Circuit wrote functionality out of the law. They all but wrote 112(b) out of the law.
But then, finally, we have a revolt, lead by some on the Federal Circuit, by Lemely, by the President, and now the issue is before the Supreme Court in Nautilus.
“no, anon, that is your position.”
No Ned – you do not get to force feed a position that I have not advocated.
Stick to what I have actually advocated.
PON is a canard – plain and simple. The 1952 Act was clear in this regard. The legislative record indicates paragraph 3 – not paragraph 6 as critical. Paragraph 6 – written in permissive language – is merely one of a multitude of ways that functional language was allowed by the 1952 Act. You are in serious error by thinking it is the only way. If it were the only way, it would not be written in permissive ‘may,’ but instead would have been written in controlling ‘must’ terms.
You need to accept this.
This is directly contrary to your implicit statement of Anti-Rich and your allusion (illusion) of painting him as the renegade.
He is not – and never was. You continue to make mistakes based on your inaccurate understanding of the 1952 Act.
PON is a canard
Nope. And it never will be.
Follow the breadcrumbs from the In re Fuetterer case to the legislative record, Malcolm, and try again.
anon, there is something weird in your viewpoint. A half-dozen SC cases condemned functional claiming. Along come 112(f) in ’53 authorizing MPF claims in combination claims. Nothing is said there about other situations.
Now, you contend you can claim any new structure that performs a function (“configured to,” “adapted to,” etc.) and it should be construed to cover any new structure that performs the recited function regardless of the Supreme Court cases that roundly condemned functional claiming and without any limitation imposed by 112(f).
Just how do you get away with this? Where do you even get this idea? It is downright bizarre.
“Nothing is said there about other situations.”
Not true Ned – you too should follow the breadcrumbs in the very case you provided.
I “get away with it” just like Judge Rich “got away” with it: by knowing the law and the intent of the law per the 1952 Act.
I suggest that you do the same: learn the law. It is not bizarre at all.
And by the way, not only Judge Rich would concur with me, but your hero Frederico would too.
A kernel of truth is revealed in your comment about revolt by “some on the Federal Circuit, by Lemely, by the President” as they explicitly are not the ones charged by our Constitution with writing patent law. Judicial re-writing, academic pandering and by-fiat-wrong branch re-writing of the words of Congress are each clearly unconstitutional.
Patent law has been written by those charted with the authority.
It is that patent law that was intimately known by Rich – and by him as judge – best interpreted.
Your anti-Judge Rich crusade is as legendary as it is misplaced.
Whether or not the current Supreme Court recognizes the lessons that I have so earnestly attempted to teach you remains to be seen.
anon, Judge Rich was a product of Harvard Law, and an excellent patent attorney. He was a mover and shaker in the patent Bar, and was tabbed by the chair of the NCPLA, Mr. Harry Aston, to head up a committee to review Frederico’s draft patent bill. 1500 copies were distributed widely, to all bar associations, who were invited to comment and to make recommendations.
On Halliburton, the Milwaulkee PLA, recommended the following to Rich’s committee: “Where the essence of the novelty of any claim is recited in terms of means or methods for performing a specified function without the recital of structure or acts in support thereof, the claim shall not be invalid because of its functionality, shall be construed to cover the corresponding structure or acts described in the specification and equivalence thereof.” This was suggested to be an amendment to section 103. Note the new clause was NOT limited to combination claims, and would have covered even single-element claims such as appeared in Morse, or Perkins Glue, or Wabash Appliance.
Because of objections that the clause as written would allow single means or method claims, and would arguably overrule not only Halliburton, but also O’Reilly v. Morse, Perkins Glue, and Wabash Appliance among other cases, the clause was limited to combination claims, and placed instead in 112 instead on 103. But the essence of the clause as originally proposed was retained.
Now compare this history with what Rich said about 112(f). He said the clause was intended to restore functional claiming to its state prior to Halliburton. But, what was that state? Did it allow functional claiming generally and only limit claims to corresponding structure when the magical means were used? Hardly.
Westinghouse in 1898 had authorized the construction of a function claim element to cover the corresponding structure and equivalents to preserve the validity of claims having their novel structure claimed functionally. But the Supreme Court soon began to hold such claims indefinite. See, Perkins Glue, Wabash Appliance and United Carbon. So at the time of Halliburton, the functional-at-the point of novelty doctrine was well established, allowing functional claims only to old elements of a combination. What Rich said about the law prior to Halliburton was hardly accurate.
So what did 112(f) do? It allowed MPF claims elements of a combination claim even when they were at the PON.
But that said nothing at all about functional claims that did not employ MPF elements, nor did it say anything about claims that were not combination claims.
But Rich never found any problem with such claims, did he? In Donaldson, he went so far as to condemn In re Arbeit, a case that had nothing to do with MPF claims. As a result, the PTO removed its reference to Arbeit, and off we ran claiming functions without using means.
Rich acted and behaved as if the original proposal by the Milwaukee PLA were passed, and then some. He behaved, just as you do, that functional claiming was OK across the board.
Tell me that he did not, anon.
Ned, there stillis a huge difference with what you said and the fact that PON is a canard.
You drift and kick sand with additional arguments (single means claims now), but what you do not address is the crux of the matter: the 1952 Act and what that act means.
And yes, I am still waiting for you to address the Nazomi case. For arguments sake, use the fact that software is equivalent to hardware to get past your, ahem, ‘mental roadblock.’
There is a huge difference with what you said and the fact that PON is a canard.
Dennis: In general, the “problem” with functional claims are that they are overbroad and have poorly defined boundaries. Of course, we already have strong doctrines to deal with issues of breadth (obviousness / enablement) and poorly defined boundaries (indefiniteness).
Those “strong doctrines” were not developed with functional claiming at the point of novelty in mind. Their “strength” lies in the fact that known structures with known functions in certain contexts can be combined to achieve unpredictable results and functionality in other contexts. That’s where evidence and expert testimony comes in: to establish that the results and functions flowing from those new structures are sufficient to merit a patent, and to establish that the specification shows possession of those structures and teaches others how to combine those structures with less guesswork than that which went through the inventor’s mind as he disclosed his invention.
When you throw the requirement for structure out the window then the “strength” of those doctrines also flies out the window. What’s the expected function of a new function? It’s the new function. To the extent we’re talking about information processing functions and the softie woftie folks are asserting that every described function is enabled upon description (something you should remember being asserted here on numerous occasions), you’re left with 102 and nothing else. And that’s the way the softie woftie crowd wants it. They’re used to things being that way, after all, because that’s the way the system has coddled them for years.
$130 bucks is a lot of money to pay to hear some people tell us that 103 and 112 were intended to address clarity and over-breadth issues. I think we all know that. The occasional claim construction fights in the non-computer arts notwithstanding, the issue that is of most concern to the most people is not the presence in claims of some functional language, but the effective claiming of new functions themselves by the computer-implementer crowd. What are you going to say about that subject? Please don’t just throw up your hands and say that it’s a difficult question. It is the question. What’s not too difficult, I think, is looking ahead and seeing what the failure to address that question will do to an already over-burdened and corroded patent system.
Ned asks the wrong question: “Who is right? Rich, or the Supreme Court?”
Congress is right. Congress rewrote the law back in 1952 that stripped the Court of its power to define invention. It was Congress – not Rich. You need to accept that as a basic fact.
Perhaps you meant to ask a different question, Ned. Perhaps you meant to ask who better understood what the intent of Congress was when they wrote the 1952 Act?
We both know that the proper answer to that question is easily Judge Rich.
That was why he was able to dispose of the rants of dicta in Benson with ZERO fear of any type of reprimand from the Court.
I have no real clue why you despise the person in the judiciary that was most knowledgeable on patent law in with as much venom as you do.
I am referencing Rich’s statements concerning 112(f) made in Fuetterer.
He claims that 112(f) restored Westinghouse. Did it? Westinghouse addressed a functionally claimed element that was not expressed in means plus function format. To preserve its validity, the SC construed the claim to cover the corresponding structure, etc., and equivalents.
Note, this is a lot broader than 112(f). It convers any and all functionally claimed apparatus.
You clearly do not appreciate the In reFuetterer case, Ned.
I would like to see the panelist address a simple question:
Halliburton overruled Westinghouse. Rich said in Application of Fuetterer, 319 F. 2d 259 (CCPA 1963), n. 11, that Westinghouse was restored — thus claims functional at the point of novelty (“e.g., means”) were not invalid, but construed to cover the corresponding structure, etc., and equivalents thereof per Westinghouse.
Question: Did 112(f) restore Westinghouse, or was the restoration limited to the specific conditions described in 112(f), the use of “means” etc., and only with respect to combination claims?
If Westinghouse is not restored in its entirety, are claims functional at the point of novelty invalid?
Thanks Ned. This is a good and important doctrinal question. Obviously, the Federal Circuit has come down saying that it is perfectly fine to have functional claim elements outside of the scope of 112(f). One question is whether the Supreme Court would agree. As we get into this debate, a more fundamental question would probe the meaning of “functional” and try to figure out what level of abstraction (if any) goes so far that the limitation becomes functional in a problematic way.
Dennis –
Lets say that I discover a set of genes associated with human speech and from that discovery, I come to understand that while hundreds seemly different languages have developed, the real communication occurs subconsciously based on clicks and spaces between clicks in the languages. That is, at the click/space level, all languages are the same.
From that, I invent a method for language to language audio to text translation and what to sell a universal translator that comprises an audio input analog to digital converter, a processor (DSP if you like) that analysis the digitized audio of a spoke input language for the clicks and spaces according to my method to determine the meaning and looks up the corresponding phrases in the desired output language and assembles a text representation of the received spoken words.
Do you agree that I should be able to patent my translator?
If so, if functional claiming is unacceptable, how could I draft a claim to distinguish it from other devices that include audio inputs and text outputs with processors in between?
Les, have you ever heard of method claims?
Ned. I want to protect my device. I invented that too. I sell the device. My competitors will sell devices. Juries better understand devices as inventions. Why shouldn’t I be able to protect my device?
Besides, the same people that say functional claiming should be banned, say methods are second class inventions that need to be tied to a machine or transform an article….
Les,
First, clearly MoT is only a clue.
The Supreme Court has made it clear:
Bilski MoT not required.
Prometheus MoT not sufficient.
Second, Method patents – according to the explicit words of Congress are not a second tier category. They are on equal footing with the ‘hard-good’ types of categories. Any monkey business to the contrary need to be expunged from our legal minds.
Les, let’s draft a claim and see.
However, the requirement is that the claim produce a new and useful result. Thus,
1. Method, comprising;
receiving spoken language;
determining from said language its clicks and spaces according to a predetermined algorithm;
from said determination step, translating the determined click and spaces into a second language translation;
and
one of, displaying said second language translation as text or producing an audio reproduction of said second language translation.
1. Translator comprising:
means for receiving and converting to digital values spoken language;
a DSP means for processing said digital values into a translation using a predetermined algorithm that determines clicks and spaces; and
means for producing from said translation a textual display or an audio reproduction of said spoke language.
I see nothing wrong with these claims under 101, do you?
Ned – I need to remind you that you have been corrected multiple times with your phrase “However, the requirement is that the claim produce a new and useful result”
That is simply not a requirement. Least not in the manner you are attempting.
Remember that perfect cures were done well before Diehr and the result of Diehr was thus not a single shot production of something new and useful.
Also, I will remind you (yet again) to be wary of conflating the utility aspect of 101 and the statutory categories aspect of 101.
Yes and no Ned.
I think the claims are fine. But the anti patent crowd, will assert mental steps, abstract idea, no transformation, natural law, can’t be saved by post solution activity….yadda yadda yadda.
Plus the means for lingo is too limiting or requires that my spec be hundreds of pages long to cover all conceivable hardware embodiments.
Les, on the MPF limitation, I daresay that all that is required is a specific algorithm in your specification.
The claim cover that and equivalents by law.
Without MPF, the claim covers any program that achieves the result. That is the problem.
So, my general take here is that the debate over functional claiming misses the mark. However, it is the current debate and has sufficient historic grounding that we’re unlikely to fully shift the debate.
In general, the “problem” with functional claims are that they are overbroad and have poorly defined boundaries. Of course, we already have strong doctrines to deal with issues of breadth (obviousness / enablement) and poorly defined boundaries (indefiniteness).
A “functional” element test is also problematic for many of the same reasons as the Section 101 “abstract idea” test is problematic. One basic notion is that some claimed function is fine and helpful, but, at some point, claims go too far along the functional scale. A tricky-point then is to define when the claim elements are “unduly functional.” I would propose that the answer to that question would refer us to the doctrines identified in the prior paragraph. I.e., the claim element is unduly functional when the resulting claim is either obvious, not sufficiently enabled, or indefinite.
Well that ain’t much help.
No one has ever used click type and click spacing to determine meaning before.
Seems to me, therefore, I should be able to claim, for example,
a translator comprising:
an audio input for receiving spoken word audio;
a digitizer operative to digitize the spoken word audio; and
a processor operative to analyze the digitized spoken word audio to identify click types and temporal spaces between the identified clicks and to use the identified click types and spaces as an index into a database of text of associated phrases in at least one language of interest to retrieve appropriate phrases in a language of interest and assemble a text translation of the spoken audio.
Is that indefinite or just broad?
Les, the problem, I think, is that you are not using MPF language to define structure of your processor limitation, the PON. You are simply stating a mathematical process in an apparatus claim. That is functional, not structural.
Moreover, you stop short of doing something with the text translation. Displaying it at a minimum should be required. Until then, you have the “alarm limit” problem of Flook.
That’s not a problem Ned. That’s what I’m entitled to. I invented click based translation. Just like the guy that invented the wheel covered all of them….rock, wood, steel, rubber etc by claiming: a go fast, comprising: a round thing having a whole in a middle configured to accept an associated axil.
Dennis, I think the answer has to be very simple and straight-forward:
I suggest, just as did Halliburton and many cases before it, and as did In re Arbeit, that novel structure or composition must be claimed structurally, no if’s and’s or but’s.
Thus, if an applicant relies on a function in an apparatus or composition claim to distinguish the prior art, the claim is indefinite and must be amended to include novel structure or composition. In court, the applicant cannot rely on a functional limitation to distinguish the prior art.
The one exception to the above is provided by 112(f). Use MPF, and the corresponding structure or composition is read into the claim.
Your answer is – and has been – rejected Ned.
That too is very simple and straightforward.
Well where is the novel “structure” in your translator claim Ned?
Les, the “novel structure” is the algorithm disclosed in the specification. The MPF format of the claim coverts the method of the claim into apparatus by operation of law.
Your answer is – and has been – rejected Ned.
You repeated the exact same b.s. a thousand times when Prometheus v. Mayo was cued up. That was a 9-0 decision that will never, ever be reversed.
Now the issue of functional claiming at the point of novelty is being cued up. It’s going to turn out the exact same way for you, anon.
You’d better figure out your fallback position because you’re going to need one. Or are you just going to pretend it never happened like you do with Prometheus v. Mayo? That’s your choice, of course, although it does make you look just a tad imbecilic.
Sort of like Myraid, Malcolm?
LOL
T.
O.
O.
L.
Sort of like Myraid, Malcolm?
No, not at all like that. We both agreed that Myriad’s claims were junk, but for different reasons. Also, I don’t have any issue with the ineligibility of Myriad’s claims. I’m fine with that result. I just wish the Court’s reasoning was more clear.
That’s a pretty huge difference. But of course you knew that already.
How imbecilic do you think you look carting around the albatross</i?
How imbecilic do you think you look carting around Ronald Reagan's decaying corpse?
Fun game! When you stop beating your wife, I assume you'll start the next round, as usual.
“ Also, I don’t have any issue with the ineligibility of Myriad’s claims. ”
30,000 plus words of mewling QQ afterwards, an inability of you to say three little words, and your recent admission that youstill don’t understand the reasoning of the court says otherwise.
Just being honest is really really difficult for you, isn’t it?
One basic notion is that some claimed function is fine and helpful, but, at some point, claims go too far along the functional scale. A tricky-point then is to define when the claim elements are “unduly functional.”
There’s nothing tricky about it. They go too far when the functionality recited in the claim is relied on for patentability.
“ is relied on for patentability”
Cite please.
Oh wait, this is pound the table policy from Malcolm….
LOL
Or you could just look at Morse or Wabash.
I agree with you Dennis that there is no “functional claiming” debate, as there is no per se invalidity of functionality. Functional description of old items may be encouraged, 112(f) is particularly sanctioned, and I can see a properly bounded non-(f) functionality that is valid.
That being said, you would certainly agree that the problem lies in when non-means functional claims are failed to be evaluated properly with respect to 112, 1st. So that leaves the questions:
Is there a concensus as to what are the current standards?
and Are the current standards sufficient?
To me, Lizardtech is a perfectly applied case, but so often because other issues are appealed there is a discussion of functional claims but no statement that the claims would fail under 112, 1st. I can’t tell you how many times someone has cited a claim construction case or a 101 case as an counter argument against written description. How is this fixed, given that a court generally shouldn’t do exactly what I’m saying – offer an opinion about something that isn’t before it?
>>A tricky-point then is to define when the claim elements are >>“unduly functional.”
I contend that to understand the functional claim issue one must view the claim in terms of one skilled in the art. “Unduly functional” as you say should be viewed by one skilled in the art.
The fact is that if one actually spends the time to understand the inventions that are being claimed in information processing, one will understand that the metes and bounds of the invention are very well set out with functional claims. And one will understand that structure is recited by functional claims in information processing (both EE and CS.)
The problem is hard because the ignorance is so rampant.
And let’s not forget that information processing is spec’ed out in real life in functional terms. That it is discussed in functional terms, it is taught in the classroom in functional terms, etc.
Academics (Lemley) can turn on their smoke machine and try to start from some theoretical starting place, but the reality is that the functional claims are exactly right. That there is no problem with functional claims. And the only one buying this nonsense is a bunch of academics and judges that are ignorant.
“ turn on their smoke machine”
A clear indicator of the effect of the smoke machine is the miss by Random of what Malcolm is actually saying.
Malcolm wishes to completely eviscerate elements of a claim that are stated functionally – he wants to give zero patentable weight to these elements of a claim.
This is often easily recognized when he imports a strawman “claim totally in the mind” argument in software patent discussions.
Instead of intellectual honesty, Malcolm almost universally resorts to dust-kicking and obfuscation and attempts to hide in a “anyone can talk about policy” cloud and refusing to recognize the tables of fact and law that stand between his ‘policy’ and reality.
Another indicator of what NWPA says is the desire to move back in time to before the 1952 Act and before computers changed the world. A critical element that must be kept in mind is that claims are to be read from the perspective of the art field. Far too often another canard is attempted: mental steps doctrine as denying eligibility (note – not patentability – let’s keep these terms appropriately distinguished). A claim clearly to a manufacture, a machine component or to a machine (made new with a new configuration of a new component) is not a claim to a thought, untethered (and to draw the copyright analogy – unfixed in some medium). Of course, my favorite word for annihilating the mental steps doctrine is anthropomorphication. Machines (no matter what spin Malcolm attempts) really do not think.
When I wrote:
“Malcolm wishes to completely eviscerate elements of a claim that are stated functionally – he wants to give zero patentable weight to these elements of a claim.
This is often easily recognized when he imports a strawman “claim totally in the mind” argument in software patent discussions.”
I was not specifically thinking of another strawman – but another one has been raised by both Ned and Random: that of single means claiming. However, the point of the matter is that this is not the argument under discussion.
Let’s stay focused people.
if functional claiming is unacceptable, how could I draft a claim to distinguish it from other devices that include audio inputs and text outputs with processors in between
You could recite the code you wrote that actually works to achieve this stunning result, for starters. I don’t think many people would object to you owning that.
Oh but wait — that’s not good enough for you, is it? Being first to market with a working product that nobody can copy just wouldn’t be enough. You need to get money from everybody else who can write better code than you and, of course, you don’t want to have to write any code at all in the first place. I mean, writing code that actually works for the claimed function is for the little people, after all, not awesome imaginary “innovators” like you.
code…
LOL
Let’s see Malcolm butcher copyright law while we are at it.
“You could recite the code you wrote that actually works”
You do realize that we have been over this already, right Malcolm? You do realize what “constructive reduction to practice” means, right Malcolm? You do realize that working models have not been required for more than 100 years, right Malcolm?
Why the dust-kicking with asking for something that is not actually required?
And herein lies the problem with functional claiming:
“Lets say that I discover a set of genes associated with human speech and from that discovery, I come to understand that while hundreds seemly different languages have developed, the real communication occurs subconsciously based on clicks and spaces between clicks in the languages. That is, at the click/space level, all languages are the same.”
Okay let’s say that. You have no protection for any work you’ve mentioned so far, because what you have done is “discovered” things that pre-existed you. I trust we agree on this?
“From that, I invent a method for language to language audio to text translation and what to sell a universal translator that comprises an audio input analog to digital converter, a processor (DSP if you like) that analysis the digitized audio of a spoke input language for the clicks and spaces according to my method to determine the meaning and looks up the corresponding phrases in the desired output language and assembles a text representation of the received spoken words.
Do you agree that I should be able to patent my translator?”
What you can do is describe the means by which your machine achieves the function – i.e. what inputs it takes, how it transforms the inputs and how it outputs the transformed inputs.
For example, you would need to describe, with particularity this: “a processor (DSP if you like) that analysis the digitized audio of a spoke input language for the clicks and spaces according to my method to determine the meaning”.
Then, in doing so, you may claim not the function, but your machine’s method steps.
A statement as to the function is an attempt to capture every means of achieving the translation. You don’t have that, and you aren’t entitled to it. What you were is the first to discover an eternal relationship and then you invented one particular means of capitalizing on that. The scope of your invention goes to your particular means.
“If so, if functional claiming is unacceptable, how could I draft a claim to distinguish it from other devices that include audio inputs and text outputs with processors in between?”
A processor doesn’t have a life of it’s own, describe the algorithm steps created by the code that you feed through the processor.
Your situation is zero percent different from Morse. All Morse did was discover a particular means of communication, invented a particular means to capitalize on it, and then claim every means of achieving his ultimate goal. He failed on the broader claim, and so should you.
The proper scope is to give you protection for your machine. The improper scope would be to make it so nobody could use clicks and spaces but you.
You are wrong. Discoveries are patentable. Have a glance at 101. As you imply, there is nothing to discover but natural laws and naturally occurring compositions of matter. Accordingly, all the judiciary created doctrines in this area a wrong.
or we could go, no one could use clicks for translation as no one knew about them. I discovered it, therefore I’m entitled to protected for another 20 years or so, in exchange for telling the world how to do it . Why is that not fair?
Les steps into the bear trap and SNAP.
Sorry Les, but no – the word “discovery” has taken multiple meanings in patent law and Random is correct here.
Kind of.
He still seems to be hedging to a “you must supply code” version as opposed to an allowed ladder of abstraction version. But other than that, pure discovery is not the same thing as “discovery” covered under patent law. There is that warehouse of nature thing that you have to abide by.
anon
I don’t care about ridiculous court rulings and legislation from the bench. Both the Constitution and 101 say discoveries can be protected. If someone legislates from the bench to change the meaning of a word to read it out of the statute, that is something to be undone, not something to be revered.
Anyway, this thread is regarding having a discussion about what should be, not about what is. So, stop correcting me.
Sorry Les but no – I will not stop correcting you when you step into bear traps.
Directly on that point, your statement of “this thread is regarding having a discussion about what should be, not about what is.” is as CRP as Malcolm’s pure fantasies.
You want to jump to a fantasy untethered in law or fact of what is now – go to a science fiction blog. You want to talk law – even law as it should be – then base the discussion in reality.
Or to adopt another metaphor, to climb the rungs of a ladder, you must be on that ladder.
Several points should be made and kept as a baseline reference:
PON is a canard. Plain and simple. This is backed by the statement “Obviously, the Federal Circuit has come down saying that it is perfectly fine to have functional claim elements outside of the scope of 112(f).” Ned attacks Judge Rich for this. But Ned cannot counter – and does not counter – the fact that no judge knew the law better – and thus could give a better interpretation of that law than Judge Rich. Ned’s attack is as groundless as it is misdirected.
The 1952 Act needs to be recognized for the powerful changes that it set forth, especially in all items related to patent eligible subject matter and the related PON doctrines.
That Act removed the common law ability of the court to set “invention.” This included ‘inventive gist’ and all other such devices. This was in direct reaction against an activist Court that stated “the only valid patent is one that has not yet appeared before us.” Also in that act, functional claiming was freed from the shackles of the anti-patent Court.
Did the pendulum swing too far? An interesting, but moot question as it is not up to the Court to decide that question in any effort to rewrite the law. It is up to Congress per our Constitution. The Court does not have the authority to write law at a different level. If the Court finds that Congress stepped over its Constitutional authority (and that should be doubtful given the vast power as noted in a fairly recent Supreme Court copyright case), then the appropriate action by the Court is to tell Congress to come up with a better rule – NOT to tell either the lower courts or itself to re-write the rule of invention. Remember – that power was revoked by Congress in 1952.
Implicit rewritings of law should be extremely discouraged. How far down the rabbit hole does implicit go? Even Stevens warned about the power addiction in the 101 nose of wax. “Prometheus showed the direct effect of that power addiction when Court placed its implicit writings to be an untouchable “live letter” – no matter is the plain and direct words of the law dictate otherwise. To this effect, Prof. Crouch’s statement of “ One question is whether the Supreme Court would agree.” has an (albeit unfortunate) pragmatic angle. Will the Supreme Court recognize their own addiction? Will they recognize their own part in the morass that has been created of 101? Will the Supreme Court agree to look at the explicit words of Congress? Or will the Supreme Court continue to make a mess of things by trying too hard to hold onto its activist powers and keep their fingers in the nose of wax 101 power?
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Lastly, what Prof. Crouch identifies as a more fundamental question is directly tied to the concept of the ladders of abstraction. Without a doubt, any claim of value – any claim beyond a complete (and thus easily designed around) picture claim – climbs one or more rungs on the ladder of abstraction.
To attempt a subjective “how high up the ladder” rule is to court disaster.
The Court has repeatedly recognized the risks of evisceration of patent law. The truth of the matter is that ANY rung short of the top rung of a ladder allows a rung to exist that eliminates the absolute preemption concern that may trigger a use of the judicial exception based on Abstract rejection. The truth of the matter is that any attempt to create a mid-height limit artificially constrains how high man can climb in their innovation efforts. When you cap how high you allow, you run the direct risk that you are violating the constitutional imperative by limiting and not promoting innovation. The very real problem the Court faces is that there is no apriori limit to man’s innovation and thus any cap – short of absolute knowledge that the cap is the absolute top rung is detrimental and not in accord with the constitution.
The Court has repeatedly recognized the risks of evisceration of patent law.
There is zero risk of “evisceration of patent law” by requiring applicants to structurally describe their new compositions of matter and articles of manufacture. None whatsoever.
There’s also no risk that softie woftie applicants will stop writing better programs if you take functional claiming away. Why is that? Because they don’t need patents to protect their better programs. They already have copyright law, specially designed for them.
We all know that you believe that copyright law is inadequate. That’s nice. You also habitually defend the worst junk and the worst actors out there in the patent world. Go figure.
“They already have copyright law”
And there we are: Malcolm butchers copyright.
LOL What a putz.
“PON is a canard. Plain and simple. This is backed by the statement “Obviously, the Federal Circuit has come down saying that it is perfectly fine to have functional claim elements outside of the scope of 112(f).””
Those statements don’t follow. It’s perfectly possible to have functional language outside of 112(f) that doesn’t fail any of the required tests in 112 or 103. How you leap from there to “PON is a canard” is unknown. Certainly each limitation goes into the whole of a claim and the claim must be enabled and described.
“Implicit rewritings of law should be extremely discouraged….Will the Supreme Court agree to look at the explicit words of Congress?”
This is an interesting statement coming from you. Since certainly enablement is a black-letter requirement, yet software functionality hangs its hat on the unproven assertion by a court that a described function is enabled. And then they go even further and don’t even describe their functions according to another court’s holding. It seems very odd that some court holdings should be followed and others not, and they seem to be drawn down the line of what anon feels will give him the right scope of patent allowance and protection.
“The Court has repeatedly recognized the risks of evisceration of patent law…The truth of the matter is that any attempt to create a mid-height limit artificially constrains how high man can climb in their innovation efforts. When you cap how high you allow, you run the direct risk that you are violating the constitutional imperative by limiting and not promoting innovation. The very real problem the Court faces is that there is no apriori limit to man’s innovation and thus any cap – short of absolute knowledge that the cap is the absolute top rung is detrimental and not in accord with the constitution.”
Spoken as a man who ignores 112, 1st. You should take a look at who is truly trying to eviscerate patent law. There is no “artificial constraint” – there is a black letter requirement that the scope of the invention must be enabled and described. There is a standard for description. There is a standard for enablement. You wish to ignore these standards and allow the applicant to subjectively claim whatever means he wishes. When one ignores the requirement that in order for computer software to be enabled the function it runs must be described, and the way the function is described is by recitation of the algorithm it runs and instead substitutes a standard that merely summarily mentioning functionality both enables and describes it, one eliminates the very real, very necessary constraints that prevent overbroad claiming. Whether you foolishly believe that is the law or not, it is clear that the system cannot stand absent a 112, 1st that puts meaningful limits of the breadth of claims.
Ladders of abstraction, just like 112, 6th, are a meaningful tool for an applicant to claim the scope he seeks to claim. But that scope is still evaluated under 112, 1st, even if you want to pretend there’s some sort of judicial interpretation of patent law that makes it always met (and thereby write’s Congress’ intention out of law).
My poor friend Random’s turn in the bear trap: “Those statements don’t follow. It’s perfectly possible to have functional language outside of 112(f) that doesn’t fail any of the required tests in 112 or 103. How you leap from there to “PON is a canard” is unknown. Certainly each limitation goes into the whole of a claim and the claim must be enabled and described.”
When you say that “Certainly each limitation goes into the whole of a claim and the claim must be enabled and described” you necessarily eliminate why PON as a concept was created. Not only “do they follow” – they must follow.
PON is a canard – a tool from a bygone era that has no place in patent law since the 1952 Act.
Nice strawman with “even if you want to pretend there’s some sort of judicial interpretation of patent law that makes it always met”
You keep on saying things that I have never said and arguing against the arguments you create.
Why don’t you try to argue against the points I actually do provide?
Random again misses with the fallacy of “Spoken as a man who ignores 112, 1st”
No such thing my friend. I suggest you read the decision here to see what level is required to meet 112, 1st. Let me give you a spoiler alert: I am right and you are wrong.
Then lets ask you straight out, and give me a straight answer –
1) Does Aristocrat detail the requirement for a single means of computer functionality, i.e. are you required to describe the algorithm by which the function occurs? If it is not that, is it something else? If so, what else?
2) Whatever the standard of description of a single means is, do you agree that as you step up the ladder of abstraction that you must meet 112, 1st as to that broader rung? If not, by what standard does policing which separates a given rung from the rung above it and the rung below it occur?
3) Assume a proper 112(6)th function. Applicant writes another claim which is the same in every respect but the function is no longer expressed in means plus. Is this second claim broader, narrower, or of the same scope as the first? Is the second claim easier, harder or just as easy to patent as the first? If the first claim is found to be allowable, must the second be? and vice versa?
4) Do you agree with me that the legal precedent states that enablement of a computer function is necessarily dependent upon the proper description of the function (i.e. that translation is only a “clerical step” once a function has been described)?
5) Assume that a person has no knowledge of computers or programming at all, but they believe that certain functionality would be profitable, for example – a function that analyzes your food eating habits and work schedule and automatically orders and pays for delivery, so your favorite dish is waiting for you when you get home. Can this person receive a patent? And I want to be very clear here – This person knows nothing about computers, he only knows what function he wants to see them achieve. His specification will read with the same level of expertise as my exposition here does. Why or why not?
1) Single means..? – Let’s move the goal posts back, shall we? Ask a crooked question…
2) asked and answered – another strawman of yours.
3) not sure what point you are trying to make. Do some applicants write claims with no difference? Sure. Is there a difference in means plus claims and non-means plus claims? Sure? What is the actual difference? The great lawyer answer (of which, you should have been aware of before you asked the question): it depends.
4) Again, it depends – give me a pincite and how you are using the pincite. Not all of what you post is wrong, but a lot of it is.
5) 103 comes to mind with your forced hypothetical. Or do you wish to revoke “patentability shall not be negatived by the manner in which the invention was made.” with some type of requirement that says the inventor must really understand what they invented? You overplay your cards here with your anti-functional views. Try understanding the law as it is.
1) I meant single means in the sense of the nominated structure (as in, the particular means of execution). Do you agree that the structure of a function is the algorithm that causes it, if not, what is it?
2) So the answer is yes?
3) What I am getting at here is to determine if you agree that there is a scope change between claiming a function inside and outside of 112(6).
4) It appears that Matter of Application of Sherwood, 613 F. 2d 809, despite being a best mode case, is the basis of the line of thinking of the enablement of computer functions (the rule is often misapplied to “every function even mentioned is enabled”). Read that, along with the footnotes. The question I ultimately seek to answer here is: Is there any question but that NWPA is wrong about his scope of enablement logic? Straight out question – does disclosure of one algorithm allow an applicant to claim performance of the function without limitation to the particular disclosed algorithm?
5) This really gets to the heart of it, because if your answer is anything but No, many of the foundational aspects of computer-implemented functional claiming are completely destroyed. If, for example, the answer is yes, then it is improper to conclude that one of ordinary skill in the art is an EE, or even a college graduate, right? If the answer is yes, then the reasoning of Sherwood is undermined. If the answer is yes, how does patent law distinguish between someone who has the invention (WD, a requirement) and someone who is simply attempting to monopolize what may be a commercial exploit? If the answer is yes, what benefit has his disclosure provided to the scientific arts?