Apple Loses on Claim Construction and Indefiniteness

by Dennis Crouch

Ancora Tech. v. Apple Inc. (Fed. Cir. 2014)

Ancora’s patent covers a verification system to ensure that the software running on a computer are properly licensed.  U.S. Patent No. 6,411,941.  Following claim construction, Ancora stipulated to a summary judgment of non-infringement — agreeing that the district court’s construction of the claim term “program” was so narrow that Apple’s verification system did not fit within its bounds.  In particular, the examples from the original 1998 patent application all focused on application programs — ones that rely upon an operating system in order to run and thus exclude the (Apple) operating system itself.

Asserted claim 1 is written as follows:

1. A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:
selecting a program residing in the volatile memory,
using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,
verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS, and
acting on the program according to the verification.
On appeal, the Federal Circuit rejected a narrow construction of the term “program”  — finding that the patentee gave no reason to move the term from its ordinary meaning in context.

A claim term  should be given its ordinary meaning in the pertinent context, unless the patentee has made clear its adoption of a different definition or otherwise disclaimed that meaning. . . There is no reason in this case to depart from the term’s ordinary meaning.

Although not stated in the opinion, I suspect that this is one case that would have turned-out differently under a deferential standard of review. However, in Lighting Ballast, the Federal Circuit reconfirmed that a district court’s claim construction is given no deference and instead reviewed de novo on appeal.
= = =
You’ll note that the claim also includes references to “volatile memory” and “non-volatile memory.”   In a cross-appeal, Apple argued that those terms were invalid as ambiguous under 35 U.S.C. 112(b).  The panel here easily rejected that argument:

The Supreme Court currently is considering how to refine the formulations for applying the definiteness requirement. See Nautilus, Inc. v. Biosig Instruments, Inc., Sup. Ct. No. 13-369, cert. granted, 2014 WL 92363 (Jan. 10, 2014). In this case, we think that we can reject the indefiniteness challenge without awaiting the Court’s clarification. However other circumstances may be evaluated, it suffices to reject the challenge in this case that the claim language and the prosecution history leave no reasonable uncertainty about the boundaries of the terms at issue, even considering certain aspects of the specification that could engender confusion when read in isolation.

Most importantly, there is no dispute that the terms “volatile memory” and “non-volatile memory” have a meaning that is clear, settled, and objective in content. Both parties and the district court agreed that, as a general matter, “[t]o one of ordinary skill in the art, a volatile memory is memory whose data is not maintained when the power is removed and a non-volatile memory is memory whose data is maintained when the power is removed.” That meaning leaves the relevant public with a firm understanding of the scope of the claim terms, unless something exceptional sufficiently supplants that understanding.

Apple’s particular indefiniteness argument was based upon the fact that the specification refers to a “hard disk” as an example of volatile memory when, in reality, a hard disk is ordinarily thought of as quite the opposite.  According to Apple, those references so blur the meaning of volatile and non-volatile that the terms should be seen as indefinite.  The Federal Circuit rejected Apple’s argument for several reasons.

Under our claim-construction law, a clear ordinary meaning is not properly overcome (and a relevant reader would not reasonably think it overcome) by a few passing references that do not amount to a redefinition or disclaimer.

Under our claim-construction law, a clear ordinary meaning is not properly overcome (and a relevant reader would not reasonably think it overcome) by a few passing references that do not amount to a redefinition or disclaimer. . . . [Furthermore], it is well known that a computer’s hard disk is routinely used as “virtual” memory to provide temporary storage when there is insufficient RAM to complete an operation.

It will be interesting to see here if Apple asks petitions for certiorari on either de novo review or indefiniteness.

113 thoughts on “Apple Loses on Claim Construction and Indefiniteness

  1. Multiple points raised and ignored – yet again.

    The “CRP, Run away and CRP again later” ploy is in effect.

  2. Nautilus’s brief:

    link to americanbar.org

    “Moreover, the court has made clear, the claim requirement’s purposes forbid permitting patentees curing otherwise fatal ambiguity or vagueness in their claims simply by adverting to the invention’s intended function. Language in a claim that identifies what the inventor claims as his invention based only on the outcome in that she accomplishes, without delineating a particular structure by which is invention achieves that outcome, does not clearly distinguish the invention from what came before. And it does not put the public on notice of what alternative means of achieving that function are still available. [Citing United carbon and Halliburton.] Congress has embraced this important limitation: the Patent Act permits claims to refer to a “means” of achieving a given “function,” but the claim is been confined under the statute to the particular apparatus the patentee has disclosed in his specification. [Citing §112, paragraph 6 [sic].]”

    Nice, but the brief fails to call the court’s attention to In re Donaldson that overruled In re Arbeit — a case that had actually held that one could not distinguish a claim to apparatus, composition or articles based on their functions or properties notwithstanding the new 112(f).

    If one wonders where the Federal Circuit drove the train off the rails, it was here.

    1. Wrong yet again Ned – and you provided the case that contained the breadcrumbs leading back to the 1952 Act (which is your so-called ‘culprit’ and NOT the Federal Circuit).

      You constant repitition of a wrong statement will not make that statement into a right statement.

    2. Look they cited Wabash and Halliburton and all. All that abrogated law and stuff.

      Questionable to cite it only under indefiniteness rather than written description, but ya dance with the girl who brung ya.

    3. From about midway through pg. 30 through mid pg. 34 is a spectacular argument. I especially like the citations to Faber.

      1. LOL – your wolf of “patent writers are evi1″ is shining through your sheepskin Random. No wonder you take such umbrage at the correctness of my posts.

        As I have clearly provided, you do not understand what the ladders of abstraction are, and you would reduce claim drafting down to a meaningless capture of the easiest to design around picture claims. You do not realize the bloat you would cause is such exacting detail would be required – that bloat or the absolute evisceration of patents would be the end result of your scheme.

        1. “that bloat or the absolute evisceration of patents would be the end result of your scheme.”

          You mean of some patents. Not all of course. In fact, the only ones that would be impacted seriously at all are a tiny minority. The rest would just adapt with little to no change.

        2. “As I have clearly provided, you do not understand what the ladders of abstraction are, and you would reduce claim drafting down to a meaningless capture of the easiest to design around picture claims.”

          Applicant builds a system for automated modification of a car. Applicant has several machines (3D scanners, 3D printers, reshaping lasers, etc) which are all controlled by a central software hub which is embodied in a Toshiba Qosmio Laptop. The specification states that there are many ways one can modify a car with his machine that would be useful: lowering the drag, decreasing the weight, using better tires, utilizing a more gas efficient engine, etc. The specification provides an enabling and descriptive algorithmic example of how the software in the system can be used to direct the other machines to reshape the hood of a car using lasers to decrease the drag.

          Applicant files system claims. Claim 1 includes the limitation “a non-transitory CRM containing code which, when run by a processor, directs the machines to improve the gas efficiency of the car.”

          Claim 2 is “The system of claim 1, wherein the code improves the gas efficiency of the car by decreasing the drag.”

          Claim 3 is “The system of claim 2, wherein the code decreases the drag by shaping the hood of the car with a laser.”

          Claim 4 is “The system of claim 3, wherein the processor resides within a Toshiba Qosmio Laptop; and wherein the code for shaping the hood of the car is as follows: XXX.”

          There’s a clear ladder of abstraction for you with respect to the software code. Claims 1 and 2 are invalid. They’re invalid because they violate 112, 1st, and you don’t even need a prior art search or industry expertise to see it. The office often fails to make this rejection, and instead the attempt becomes to render claims 3 and 4 obvious, which only works so long as the applicant does not add enough limitations to claim 1 to render it non-obvious (Applicant will never move claim 3 into claim 1 unless new art is needed for 3, and perhaps not even then). It doesn’t change the fact that claim 1 is far too sweeping for what Applicant has proven to invent.

          Claim 4 is a picture claim. Claim 3 is not. Claim 3 is valid subject to a 103 analysis. It does not change the FACT that despite “ladders of abstraction” claims 1 and 2 are invalid for failure of 112, 1st. Ladders of abstraction are a valid tool that are being used very often today in a way that fails the black letter tests for precisely the reason and in precisely the manner described in the brief – the applicant specifically tries to obfuscate in an attempt to claim more than what they have invented.

          I see this every day. It needs to stop.

          1. Indeed, RandomGuy, I see claims drafted like your claims 1 and 2 all the time as well. Had Donaldson not overruled Arbeit, such claims would also fail to distinguish over the prior art.

            Now consider that the Federal Circuit seems to apply 112(f) to wholly functional claims elements. Thus, how is it that the PTO can the PTO hold a functional claim invalid under 112(a) for lack of enablement if the corresponding structure has a fully enabled embodiment? The PTO is out of step with the Federal Circuit here.

            One can see, and I hope you do see Random, that the real problem with functional claiming more than anything else is exactly what the Supreme Court said in Perkins Glue, in Wabash appliance and in Halliburton, they are indefinite. A claim construction per Westinghouse does not solve THIS problem regardless that is solves the 112(a) problem.

            Given the brief filed by Nautilus, it appears we are not going to get a direct attack on functional claiming. But trust me, RandomGuy, the PTO needs to reject these claims as indefinite, insist that Arbeit is not overruled by Donaldson on this point as Donaldson only applied to MPF claims, claims that formally invoked the protection of 112(f). Any other claims that have functionally claimed structure should be rejected as indefinite. Moreover, applicants, per Arbeit, should not be permitted to distinguish prior art based upon functions or properties when claiming apparatus, compositions or articles.

            1. Ned – you keep on missing the point that it was not the doing of the Federal Circuit that is your problem: it is the Act of 1952.

              Your wanting the PTO to act in direct contradiction to the law is, quite frankly, absurd.

            2. “One can see, and I hope you do see Random, that the real problem with functional claiming more than anything else is exactly what the Supreme Court said in Perkins Glue, in Wabash appliance and in Halliburton, they are indefinite.”

              I suspect this to be accurate, but as anon points out, this is not the law (for the moment) under the CAFC’s jurisprudence on indefiniteness. I suspect the Supreme Court will correct them, and anon will be eating crow.

              That being said, there is a compatibility between yourself and anon in that written description as currently contemplated fills the hole. Under current written description jurisprudence, the claims fail, for exactly the same reasoning as Wabash and Halliburton – the terms are too vague to be either described or definite.

              As for anon, he seems to misunderstand how law in general works. The Supreme Court is going to say the same thing the Supreme Court said before. The Court doesn’t view its predecessors as incorrect, it views the CAFC as incorrect. When Congress writes a statute that says the mentioning of functionality enables and describes the function, then they will back off. Prior to that, the Court will correct what it views as a misbegotten child. A significant number of claims are similar to the claims in Morse, Wabash and Halliburton and the same reasoning applies, as regardless of what anon says, one cannot abrogate logic. He refuses to confine his abrogation analysis to the actual change that was made, and he will shortly see at least one facet of how that is incorrect.

              I do believe that WD is a better vehicle for debating the issue than indefiniteness though. I can think of any number of definite functionalities that one inventor simply does not reach the full scope of.

            3. RandomGuy, my real point is that there seems to be no good way under Federal Circuit law to attack claims that are wholly functional from a validity point of view. They are not indefinite if they can be construed. They are not non enabled if there is an embodiment because the Federal Circuit applies 112(f) to wholly functional claims even if they do not use MPF.

              But we both know that historically, such claims were invalid under both and all of 112(a) and (b). The Federal Circuit has so warped the law from its historical pinnings that functional claiming has become a national problem that even the president cannot ignore.

              We need, under the urging of the president, for the PTO to take a stand. We need the PTO to go over the heads of the willful Federal Circuit and take these issues to the Supreme Court. The PTO must reject functional claims under both 112(a) and (b) and seek to overturn any and all Federal Circuit authority to the contrary.

        3. “You do not realize the bloat you would cause is such exacting detail would be required – that bloat or the absolute evisceration of patents would be the end result of your scheme.”

          Faber states “it is the claim drafter’s job to have written the claims in the application to…cover competitive products which neither the inventor nor the attorney thought of or could even have imagined at the time.” If constricting the applicant to actually, you know, define the invention he imagined at the time constitutes an evisceration of patents then you’re right, I’m everything you imagine me to be.

          Let me know when you have an actual response to my ladders of abstraction example.

          1. Your example was one hot mess of hooey and straw that I refuse to touch it.

            As to the law, you are still off – check out the congressional record as Ned left some recent breadcrumbs in a particular (post-1952) case that Ned brought up.

            I will eat no crow until the law itself is changed. And even then, I will eat no crow because I am correct and it will take a change in law to, um, well, change the law.

      2. Faber!

        Today, a specification does not distinguish old from new. The Federal Circuit sees no problem with that.

        Today experts tell patent attorneys to draft vaguely. The Federal Circuit sees no problem with that.

        I think it is time to seriously question the existence of the Federal Circuit.

            1. Do you know why Jepson claims have disappeared?

              That reason has everything to do with your instant QQing.

              And yes, you are still trying to blame the Federal Circuit in error.

            2. Much like I have chided you in the past about discussing prior art in an application.

              It simply is not best practice anymore to characterize prior art of anyone else. The section of the application (Background of the Invention) that once contained any such discussions of Prior Art is best minimized.

        1. anon, you pretend as if the Federal Circuit was and is the ultimate authority here. To the extent it willfully allows indefinite claims, claims that distinguish over the prior art in terms of functions or properties, specifications that never say what the invention is, a court that allows late claiming in violation of controlling authority to the contrary, that on the whole, rewrites the requirement of the statutes and ignores the Supreme Court, let me assure you, anon, that the Federal Circuit’s time alone in the sun is over. The people gored by the wild boors loosed on the public are up in arms and are calling for reform. For some reason, the movers and shakers have not yet focused their attention on the party most to blame for the sorry state of patent law. But that time will soon come.

          In the meantime, expect the Supreme Court to take 4-5 patent cases a year in order to redirect the Federal Circuit back onto a proper path. But even that has not proven sufficient at times, as the defiance of the Federal Circuit is legendary, and somewhat encouraged by some, like yourself.

          1. Ned, you continue to be wrong with “anon, you pretend as if the Federal Circuit was and is the ultimate authority here

            I have told you before and I tell you again: your problem is not understanding the law as passed by Congress in 1952.

            It is you that ignore the statutes.

            As to encouraging anyone to ignore the errant dicta of the Supreme Court (as Judge Rich did post Benson), or to call out the Supreme Court for violating its Constitutional limits (separation of powers doctrine, Constitutional delegation tot he branch of government called Congress to write patent law), I will remind you that our Founding Fathers had specific words of warning that you should keep in mind.

            Read History. Learn History. Or repeat (painfully) History.

            That my friend is the encouragement I offer. Your choice.

            1. The CCPA and the Federal circuit err when they think, or pretend, that the ’52 Act was intended to wholly overturn prior case law. I have heard this expressed time and again by Rich, Rader and a few others. Donaldson turned on a literal reading of the statute, a reading that required just such a belief and that overturned two prior en banc cases to the contrary that had correctly concluded that by placing 112(f) in 112 that congress did not intend to overturn fundamental case law interpreting 112(2). Congress had no such intent. But that did not matter to Rich and crew who did fundamental violence to the clarity of patent claims by their ruling.

              Had we followed Rich, any claim that nominally was directed to a machine or composition or article would pass 101 regardless that the point of novelty was something like the new song.

              Such absolutism either is born of a lunatic or someone who intends to redo patent law in his own image.

            2. Sorry Ned you remain wrong and it was a case that you yourself brought forth (but still fail to fully appreciate.

              You simply do not understand yet what the law of 1952 entailed.

  3. The CAFC decision reads like Taranto didn’t feel he had to read the patent to understand it, or didn’t care to even try to understand it.

    The patent turns on putting common, known data for license verification into a storage medium that is somehow more difficult to access and change than wherever the prior art patents suggested to put it. In several places, the patent describes the difference between RAM and hard drives as volatile memory and this kind of non-volatile memory as being the difficulty involved in accessing it.

    “An important advantage in utilizing non-volatile memory such as that residing in the BIOS is that the required level of system programming expertise that is necessary to intercept or modify commands…”

    The other advantages listed are similar.

    But there is no objective difference in the level of system programming expertise needed to access any particular storage area inside a modern computer. If it can be accessed at all, you simply follow the manufacturer’s instructions to do so. BIOS manufacturers provide sample code. In fact, it could not be otherwise; the processor has no opinion about how difficult the code it runs was to write. If one program can write to storage, another program can too, unless hardware barriers are established. No actual hardware barriers are suggested in the application — they are specifically disclaimed — or in Apple’s supposedly infringing products.

    The example of hardware that might be harder to access given in EEPROM. All the accused products Apple makes keep all their programs and their data on EEPROM. The EEPROM is accessed through the BIOS. There is no other way to access it.

    So the application turns on not just a redefinition of volatile and non-volatile but on making a distinction without a difference.

    Taranto instead supposes that the ordinary meanings of the term apply. The prosecution history doesn’t contradict that explicitly, so he seems not to have read the patent closely or felt a need to explain how the supposed advantages could exist under such an interpretation. He even advances a hand-wavy idea that hard disk storage is volatile sometimes because it is used to store data in non-volatile storage that may be deliberately erased later as if it were volatile and Taranto uses that unrelated example to dismiss the meat of the patent itself as unambiguous.

    This is really second rate work from the CAFC. It’s exactly what we expect from computer software cases.

    1. It’s exactly what we expect from computer software cases.

      Indeed. As far as patent law is concernced, the entire field is just a giant sandbox, beloved by children and cats alike.

      When are they going to grow up? My god. Computers are old.

      I puked in my mouth the other night when I saw a commercial — a new commercial — which included a family squealing in delight because their daughter’s “wrist-born computing device” beeped. Were these people born yesterday?

      1. My god. Computers are old.

        My god. Electrons are old.
        My god. Protons are old.
        My god. Neutrons are old.
        My god. Elements are old.
        My god. Ways of putting together any of the above are old.

        /facepalm

        1. My god. Protons are old.

          Oooh, lookie, the blogtroll is getting ready to tell everyone about his magical box of programmable protons. This fantastical story is really “devastating” for anyone who dares suggest that software patent law is a ridiculous house-of-cards that needs to rebuilt from scratch. How do we know it’s “devastating”? Because anon says so.

          Bow down, everybody. Tune in next time when anon & co. tell us all that structure and function are just the same thing and anybody who disagrees is really just anti-patent.

          These are apparently your deepest thinkers, Team Patent Everything! We love ‘em, we really do. Keep the hits coming.

          1. Try as I might find anything of substance or merit in your post, there is nothing there.

            Try again. This time try to say something on point.

    2. Owen thanks for your further analysis.

      Now to the issue at hand: “non volatile,” as stated by the Federal Circuit, has a clear and well understood meaning. But, anyone reading the patent and prosecution history would not understand it to have this meaning.

      What are the claims supposed to do? Yeah, be clear, informative, and definite.

      Do the claims here do that when they use a well understood term in a way so contrary to its ordinary meaning? I don’t even care that the claims can be construed to vary from their ordinary meaning. In context, these claims are not an accurate definition of the invention.

  4. “Non volatile” has a well understood meaning in computers: not erased when power is off. But, as used in the patent, it simply meant “not erasable” by conventional software.

    MM and I have had this discussion before: while one is free to coin a term, one is not free to use a well understood term in a way that is not consistent with that understanding. The reader is confused and uncertain.

    This case is a prime example of that problem. Apple was and still is right. They need to seek reconsideration.

    1. Did you and Malcolm ever discuss the legal logic used in the Nazomi case Ned?

      (when will you stop running?)

      1. anon, on Nazomi, can you at least discuss the facts? The case is not understandable unless one know what the issue was.

        I do not know to this day exactly what hardware was being claimed, or was it software, or what?

        1. Ned – will you at least try to stop hiding behind your purposeful ignorance of the facts?

          I have already told you in regard tot eh facts that you want to hide behind: just use the fact that software is equivalent to firmware and is equivalent to hardware.

          Now use that and please please please FINALLY get to the legal logic of the case?

          1. ” just use the fact that software is equivalent to firmware and is equivalent to hardware”

            Would you find in the case above that it is anticipated by the admitted prior art? Not obvious, but anticipated. Not suggesting you’re wrong, just wondering what your answer is.

            1. I am not interested in giving you an answer Random until I can finally have Ned stop running from the Nazomi case.

              And even then, questions of anticipation and obviousness are clearly secondary to questions of eligibility, given the long standing attempts to use 101 inappropriately.

            2. Well this case does bear on that, as the thing being claimed is a movement of a program from software to firmware, and that patent issued, which means the movement is non-obvious, which would mean that is it not a fact that software firmware and hardware are all equivalent, correct?

            3. You really are clueless with this stuff, aren’t you Random?

              The aspect of equivalence does not require that the equivalence itself be novel and nonobvious.

            4. “The aspect of equivalence does not require that the equivalence itself be novel and nonobvious.”

              My point was quite the opposite, if the distinction is itself novel and nonobvious, it must not be equivalent.

              The structural distinction between this patent and the prior art is that the verification functionality exists in firmware rather than software, which you state is equivalent. Do you think that Person A can patent a CRM with software with some limitations, Person B can come along and patent firmware with the exact same limitations, because they’re not necessarily nonobvious, and then Person C can come along and patent hardware with the exact same limitations?

              Then person D comes along and does the limitations in software, and he is liable to A, B and C because while they are all non-obvious over each other (patents are valid), yet they are each equivalent to each other (action infringes them all)? Is that really what you’re suggesting?

              I would assume that you know that it can’t be (not the least of which would be if A B and C were the same person this would void the double patenting doctrine). If it can’t, there’s only two conclusions you can come to: either the latter two patents aren’t non-obvious and are in fact invalid, or the two patents which assert equivilency to reach the allegedly infringing action fail to do so.

              This patent was either wrongly granted, or your statement that equivalency between the forms per se exists is incorrect.

            5. Random – you have that backwards and you are driving yourself deeper into the weeds (or is it a brier patch?)

              I suggest you try to stop trying so hard to be confusing – you are again confusing a general state of equivalency with particulars that you have not established – and of which I have not discussed.

            6. RandomGuy, the alleged point of novelty was the use of a verifying application program that ran under an OS that accessed the BIOS verification information. The prior art disclosed non OS BIOS-specific programs that accessed BIOS information, and OS application programs that accessed the information through the OS, but not BIOS information.

              How an OS application program can access the BIOS is a wonder to this folk. Methinks, it cannot be done as the OS will prevent it.

              But, if the OS permitted it, then that is another kettle of fish. Then there would be nothing special about the application program or the location of the data.

        1. Dennis, thanks, and I hope he responds. But I have been discussing these issues with anon for a long time. He, to my memory, does not like to discuss the facts of particular cases like Alappat, Bilski, or Nazomi. He takes isolated statements from them, out of context, and uses them to advance his arguments.

          Needless to say, I believe an understanding of the facts of a case is necessary to understanding its holding. I would think most lawyers would share this view.

          Thus when we are discussing the equivalence argument anon brings up, it is important to understand context. In Alappat, a circuit was claimed. It was hardware – a rasterizer – a part of a graphic unit for a display. It was claimed that way, and each element was claimed in MPF format, which incorporated the specific hardware into the claim per 112(f).

          The PTO board, including commissioner Manbeck, held the claim also read on a programmed computer for implementing the mathematical steps claimed in the MPF clauses. As such, they held, the claims were directed to ineligible subject matter.

          On this point, the Federal Circuit overturned, holding that in the context of the claim, whether the rasterizer was implemented by circuit or by programmed computer was irrelevant to the issue of eligibility because, in context, the claim still covered a rasterizer of a graphics unit of a display.

          In an aside, the Federal Circuit went on to note that it had previously held that a programmed computer defined a new machine and was patentable as such. The cases the court referenced all referred back to Application of Bernhart, 417 F.2d 1395, 163 U.S.P.Q. 611 (C.C.P.A. 1969). In dicta, since the issue was not argued on appeal, the CCPA (Lane) disagree with the rationale of the board;

          “There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i. e. it is structurally the same, no matter how new, useful and unobvious the result. This rationale really goes more to novelty than to statutory subject matter but it appears to be at the heart of the present controversy. To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed. If a new machine has not been invented, certainly a “new and useful improvement” of the unprogrammed machine has been, and Congress has said in 35 U.S.C. § 101 that such improvements are statutory subject matter for a patent. It may well be that the vast majority of newly programmed machines are obvious to those skilled in the art and hence unpatentable under 35 U.S.C. § 103. We are concluding here that such machines are statutory under 35 U.S.C. § 101, and that claims defining them must be judged for patentability in light of the prior art. The solicitor’s brief, while stating agreement with all the grounds of rejection applied by the board, does not discuss the questions of statutory subject matter. The solicitor cites no authorities to us on this point and instead relies upon section 103 in urging us to affirm the rejections for prior art reasons.”

          While Bernhart was dicta, the CCPA relied on it in Application of Noll, 545 F.2d 141, 191 U.S.P.Q. 721 (C.C.P.A. 1976), in holding the claims to a programmed computer were eligible.

          But, Bernhart was pre-Benson, and Noll had a dissent by Lane, joined by Rich, that Benson could not be construed to apply only to method claims. Then there was Flook and Diehr, where Noll was criticized as a drafting effort, just as Lane/Rich said in dissent in Noll.

          Thus, when Rich reversed himself on this issue in Alappat, it meant something. But, still, Alappat was dicta. The holdings are the Rich-criticized Noll and Bernhart.

          On Nazomi, I have no comment as I do not know what the facts are.

          1. Bernhart is a joke. This in particular:

            If a new machine has not been invented, certainly a “new and useful improvement” of the unprogrammed machine has been, and Congress has said in 35 U.S.C. § 101 that such improvements are statutory subject matter for a patent. …We are concluding here that such machines are statutory under 35 U.S.C. § 101

            That’s the 101 analysis. It’s the same kindergarten level thinking that got the Federal Circuit smacked down in Prometheus and it’s going to get them smacked down again in CLS Bank.

            There’s no “there” there, so it’s difficult to break down but, in essence: “If you recite an old machine with improved functionality, it’s eligible under 101, period.”

            1. An improved toenail clipper, wherein said toenail clipper has a picture of David Kappos printed on it.

            Let’s see. A clipper is a machine. It’s improved. Therefore it’s eligible under 101 (Application of Bernhart, 417 F.2d 1395, 163 U.S.P.Q. 611 (C.C.P.A. 1969)). And it’s non-obvious under 103 because I’ve got ten licensees and I’ve pre-sold 1000 of them. Great system we have here, huh?

            1. An improved computer, wherein said computer has a dirty limerick about Judge Rader stored on it.

            Let’s see. A computer is a machine. It’s improved, therefore it’s eligible under 101 (Application of Bernhart, 417 F.2d 1395, 163 U.S.P.Q. 611 (C.C.P.A. 1969)). It’s non-obvious under 103 because I’ve got ten licensees and I’ve pre-sold 1000 of them. Great system we have here, huh?

            I wonder what the Supreme Court will think.

            1. And the best part of Malcolm’s present dissembling is that he does in fact know the controlling law as to the exceptions to the printed matter doctrine and why that is pertinent: the aspect of being functionally related – which means that his little dissembling here of the picture of Kappos reveals – yet again the lack of intellectual honesty in the posts of Malcolm.

              Gee – who would figure that?

              /eyeroll

            2. the printed matter doctrine

              LOL. Okay, let’s change the subject now that you’re childish views about subject eligibility are laid bare for all to see.

              Please tell everyone who created the “printed matter doctrine”, the legal justification for the doctrine, and the policy reason that led to the creation of this doctrine. Please also tell everyone where this doctrine is found in the statutes because we all know how “principled” you are about such things (except when you aren’t, of course).

              functional relationship

              Right, like the function of making something more pleasant to look at, or the function of allowing a person to express their views about a person, place or thing.

              Or did you have something else in mind?

              Pay attention, folks. We’re getting close to the creamy center of pure patent teabaggery here.

            3. Not the printed matter doctrine, Malcolm.

              The exceptions to the printed matter doctrine.

              Of course, you know this -and you know the difference and you know why the difference is important.

              Stop the dissembling.

            4. The exceptions to the printed matter doctrine.
              I wouldn’t characterize it as such. The printed matter doctrine is the exception — a very narrow one at that.

            5. The Critic,

              You are partially correct but miss the full force of the point I present.

              There is a judicial exception called the printed matter doctrine. However, when it comes to software, the critical element is the exceptions to the printed matter doctrine which provide that the printed matter doctrine has no effect – the judicial exception is gone – when there is a functional relationship.

              It is this functional relationship that Malcolm volunteered and admission against interest in knowing as controlling law (then proceeded to contort and dissemble to great lengths to pretend that he never made that admission – but he did and the restored archives have it in full glory). It is this functional relationship that provides the legal understanding that software is indeed a manufacture and machine component – every but as patent eligible as other machine components such as rivets, tires and bullets. It is this functional relationship that Ned has never addressed, let alone acknowledge and why – to this day – he still runs away in fright of looking at the Nazomi case.

              Not a single anti-software patent person ever has provided a reasonable rebuttal based in law or based in fact that overcomes this single critical item. Not one person. Not ever.

          2. Ned proclaims falsely: “He takes isolated statements from them, out of context, and uses them to advance his arguments.

            Simply not true Ned – our discussions have never shown – never – that I have taken isolated statements out of context. This is pure balderdash from you.

            The Alappat case provide more than one holding, as I have mentioned many times before – perfectly in context. If an argument by one side would win the day for that side, what the court says about that point is not dicta. That you refuse to understand this basic aspect of law is quite clear. You do this quite often when your third party interests are at stake.

        2. You asked a similar question Prof. Crouch as to the Grand Hall experiment.

          The Nazomi case illustrates the Grand Hall experiment to a T.

          1. The so-called “Grand Hall experiment” being nothing more than a silly name given to the utterly banal proposition that if machine A can perform a function which machine B can not perform, then machine A and machine B must be different in some way.

            Somehow this banal proposition is supposed to be a “devastating” response to critics of claims which depend on the recitation of new functions (devoid of any novel defined structures) for their patentability. Why? Nobody knows.

            Did Nazomi address this question? Of course it didn’t.

            1. You neglected one important aspect in your jump to silliness Malcolm: the two machines start out as identical to each other in all ways except programming.

              It is the programming that makes all the difference.

              Then again, you already knew that, didn’t you?

            2. MM, but it is worse that you suggest. The experiment includes an intentional misdirection of attention from one issue to another, a trick employed by Alice and its amici briefs. The announcer states that the programmed machine is DOING something different than the programmed machine. Thus, the implication is the programmed computer is physically connected to some other apparatus that it manipulates. In such a context, the programmed machine might actually be “new” and “useful.”

              But we know the proponents do not really want any requirement of context. They do not really want a requirement that a computer actually DO something new by physically manipulating its environment in a new way.

              Thus they use the Grand Hall experiment to argue that a programmed computer per se is eligible. To the bait and switch artist, a computer that calculates the improved price is therefor eligible. But price is a number. The meaning of the number is abstract. The number 5 is $5 only if the someone views it that way.

            3. It is the programming that makes all the difference. Then again, you already knew that, didn’t you?

              Everybody already knows that, Johnny. That was my point.

              Good lord you’re a m0r0n.

            4. Ned – you cannot use a machine to do something until you change the machine first.

              See Alappat.

              The ‘trick’ is that you (again) to first include that very changing of the machine in the first instance.

              Malcolm – simple question that you have not yet (ever) answered: how does an ‘oldbox’ – with no changes – all of a sudden have a new capability that is did not have prior to being changed (configured into something new) with the added manufacture and machine component of software?

              Why is it that you have never provided a direct, simple and honest answer to this question?

            5. how does an ‘oldbox’ – with no changes – all of a sudden have a new capability that is did not have prior to being changed

              Really deep stuff here, folks. This is the best they’ve got apparently.

            6. Thus they use the Grand Hall experiment to argue that a programmed computer per se is eligible.

              There is no “argument.” There’s just a conclusion.

              Their only argument is the kindergarten level text-based argument: “My claim recites an object that does something useful, therefore 101 is satisfied”, an argument that has been rejected squarely by the only Court that matters.

              One can imagine a fact situation where this sort of “let’s chuck everything out of the window” argument could win the day for a class of plaintiffs. Maybe a suspect class could force the Supremes to do it. Or maybe some perceived crisis (“socialists are preventing people from shooting drug-addicted criminals!”) could persuade them to do something profound. But I’m not seeing any chance of that in this context.

              The judicial exceptions to eligible subject matter are here to stay, one way or another. They work. I’m not sure why people find that so hard to deal with. It’s not like some pro-religious message stamped on our money and shoved in everyone’s faces all the time and we’re told to “live with it” because “it’s ever been thus”.

              The exceptions are necessary or the system quickly dissolves into a playground for grift and extortion, which is exactly what we are seeing now thanks to some judges who blinked or who simply couldn’t see beyond the four walls of their courtrooms or who were drunk on patent kool-aid.

            7. Malcolm remains vapid with “ This is the best they’ve got apparently.

              As you have yet to answer this point, it more than appears sufficient.

            8. “As you have yet to answer this point, it more than appears sufficient.”

              Looks like CLS “answered” it just fine. Using just the same “answers” that have been handed to you a thousand times. Now sit back and watch your pathetic “argument” lose at the supremes.

              You ready bro?

              You want to make a bet on what the outcome will be? I’m going to go with 9-0 all claims trashed. 1000 to 1 odds. I don’t have enough money to cover 10000000 to 1 odds or I’d make them higher.

              Maybe B claims go down as a class, maybe not. Maybe the court makes this case less about software and maybe not.

              You at least want to make a prediction?

            9. Ned provides a misdirection of his own with a strawman of “Thus, the implication is the programmed computer is physically connected to some other apparatus that it manipulates.

              Not so Ned – I have clearly provided several parallels to the patent eligibility of manufactures and machine components of items in their own rights: rivets, tires and bullets. A critical point that you still refuse to even acknowledge, let alone address is the exception to the printed matter doctrine which provides the legal basis of why software is recognized as a manufacture in its own right, quite apart and quite different than non-functional ornamentation or mere descriptive words for use completely in the mind.

              Show just a little intellectual honesty.

  5. Kind of arrogant to take an indefiniteness issue right before the Supreme Court speaks and come to a conclusion that pretty much anyone who reads the specification wouldn’t. Imagine if this rule were, you know, actually applied by the Office. “Basically don’t attempt to define anything with a special meaning, cause we say so.”

    Not before the court: Whether claims correctly characterized as “a method that it says overcomes those [admittedly prior art] problems. In particular, it discloses using the memory space associated with the computer’s basic input/output system (BIOS), rather than other memory space, to store appropriately encrypted license information to be used in the verification process.” (pg. 3) are obvious. Claim 1 amounts to putting pre-existing verification programs that previously existed on a pre-existing hard drive into the pre-existing BIOS. The motivation being that screwing with the BIOS may brick your computer. In other words, old thing, old thing, old thing, swapped around using a motivation that even a lay person understands equals new thing. This isn’t like most applications where at least they nominally claim to have disclosed new software.

    Apple’s argument is entirely correct that if you don’t construe “program” to be “application” the applicant’s argument that it proceeds against conventional wisdom (“The BIOS area is not considered a storage area for computer applications”) makes no sense, as BIOS was originally used to access things like the keyboard (before they were able to be directly accessed by OSes).

    The examiner probably was won over by an improper obviousness argument. Apple doesn’t bring an obviousness question either out of fear to set a precedent or because they feel they can’t. Indefiniteness, which at least is specification-specific, is decided poorly. This terrible patent survives. This is why the public dislikes what is going on with the patent system nowadays, and it’s proof that being a CAFC judge doesn’t make one any better at their job than a district judge.

    1. I guess I shouldn’t say improper obviousness argument. It’s technically proper, just insufficient and silly.

  6. “a clear ordinary meaning is not properly overcome (and a relevant reader would not reasonably think it overcome) by a few passing references”

    Unngh. In reading a specification, if I see that volatile memory has been defined to include hard disk storage, I’d have to think that the patentee clearly was not signaling utilisation of the “ordinary” meaning of the term volatile memory.

    1. Dennis: You’ll note that the claim also includes references to “volatile memory” and “non-volatile memory.” In a cross-appeal, Apple argued that those terms were invalid as ambiguous under 35 U.S.C. 112(b). The panel here easily rejected that argument

      It is very easy to reject any argument if you simply decide that you are going to reject it, and make up whatever facts you want to support the rejection.

      The Federal Circuit writes: “a few passing references that do not amount to a redefinition or disclaimer. . . . ”

      What qualifies as “a passing reference”? The specification in this case isn’t much longer than the claims. Here are a few of those “passing references” from the specification:

      Software based products have been developed to validate authorized software usage by writing a license signature onto the computer’s volatile memory (e.g. hard disk). These products may be appropriate for restricting honest software users, but they are very vulnerable to attack at the hands of skilled system’s programmers (e.g. “hackers”). These license signatures are also subject to the physical instabilities of their volatile memory media. ….

      An important advantage in utilizing non-volatile memory such as that residing in the BIOS is that the required level of system programming expertise that is necessary to intercept or modify commands, interacting with the BIOS, is substantially higher than those needed for tampering with data residing in volatile memory such as hard disk.

      According to one, non-limiting, preferred embodiment of the present invention, the first non-volatile memory area is a ROM section of a BIOS; the second non-volatile memory area is a E2PROM section of a BIOS; and the volatile memory is a RAM e.g. hard disk and/or internal memory of the computer.….. [this tracks the language in the claims]

      “Restricting the program’s operation with predetermined limitations” may include actions such as erasing the software in volatile memory,

      This computer (processor) internally contains a first non-volatile memory area (4) (e.g. the ROM section of the BIOS), a second non-volatile memory area (5) (e.g. the E2PROM section of the BIOS), and a volatile memory area (6) (e.g. the internal RAM memory of the computer).

      The term “erasable” occurs 15 times in the claims (nowhere in the specification). In each instance the term “erasable” is followed by the term “non-volatile memory.” The term “RAM” appears twice in the specification, each time associated with the term “volatile memory” and each time associated with “internal memory” or “hard disk”.

      Maybe the “experts” here can explain to the rest of us what is going on but it appears to me that this patent was irreparably FUBARed the moment it was filed. Of course, given the Fed Cir’s self-serving jurisprudence on indefiniteness, there really is no such thing as indefiniteness. Because once they tell you what the claim terms mean, then there is no reason for anyone to be confused. We’ll see what the Supreme Court thinks about that.

      1. This reply confuses me.

        Unless it’s a case of you replying to someone else, that Dear DC has unfriended-by-moderation?

        1. “Unless it’s a case of you replying to someone else, that Dear DC has unfriended-by-moderation?”

          Yes, MM is Dennis. Or somebody Dennis has given control of this site to.

          1. Yes, MM is Dennis.

            LOL. The stink of their own desperation is beginning to cause the teab*ggers to hallucinate. How many more ways can they find to be wrong about everything? Stay tuned, folks. This is going to be a fun year.

      2. “Oh, look, it’s one of this site’s most pathetic and bitter blogtrolls. ”

        The irony is just too much.

        Lulz

        1. The irony is just too much.

          The irony is a blogtroll like you stating that you are “tired” of a person that you identify incorrectly. Go back to Quinn’s blog and pound sand. You guys are getting really good at that.

          How are the impeachment proceedings going, by the way?

          1. Poor Malcolm, he mistakes pounding him while his head is buried in the sand with ‘pounding sand.”

            Are you ready yet to answer the simple questions about law and fact that go to the heart of the software patent eligibility issue?

          2. “How are the impeachment proceedings going, by the way?”

            I don’t recall calling for any impeachment proceedings. I think you have me confused with somebody else. I think you’re confused about a lot of things actually.

    2. In reading a specification, if I see that volatile memory has been defined to include hard disk storage, I’d have to think that the patentee clearly made a typographical error.

      1. Les – I agree that if it happened once and otherwise they had set out hard disk as non-volatile, then yes, I’d just think they’d made a typo.

        But if you pull up the patent and text bounce for hard disk, it is always/only identified as an example of volatile memory.

  7. Under our claim-construction law, a clear ordinary meaning is not properly overcome (and a relevant reader would not reasonably think it overcome) by a few passing references that do not amount to a redefinition or disclaimer.
    I doubt the PTAB considered this when redefining the term “storage” to include transitory, propagating signals in Mewherter.

      1. It is time to destroy the travesty that is In re Niutjen.

        Look up into the cloudless night cky to see so-called transitory signals that have existed well beyond anything – quite literally anything – created by man that is supposedly non-transitory.

        Not a single person ever, anywhere, has offered any reasonable rebuttal to this plain observation.

        1. Just because a signal lasts for a really long time doesn’t mean it isn’t transitory. Take, for instance, the modulations in brightness of those stars over time. Those modulations influence your vision only as they reach you, and if you don’t happen to be looking in the right place, you miss them. They’re gone forever, unobserved by anyone who isn’t receiving them in the moment.

          1. Apotu,

            What does ‘transitory’ mean? Non-transitory? Show me anything made by man – literally anything in the entire history of man that you call non-transitory and I will show you something more transitory than what is called transitory.

            It is time for just a little common sense here folks.

            1. What does ‘transitory’ mean? Non-transitory?
              Excellent question. The USPTO likes applicants to include the phrase “non-transitory” in certain claims but what does it mean? Must the thing always be non-transitory to avoid Nuijten? or can it be transitory in certain instances?

              I manufacture some RAM and destroy it a millisecond later — is it transitory?

              The art doesn’t seem to have a clear definition for “non-transitory” — 112, 2nd paragraph problem?

          2. Just because a signal lasts for a really long time doesn’t mean it isn’t transitory.
            I suggest you look up that term in a dictionary.

            Those modulations influence your vision only as they reach you, and if you don’t happen to be looking in the right place, you miss them
            You are confusing the transitory nature of your observance of the phenomena with the transitory nature of the phenomena itself. If you glance down on your airplane trip from NY to LA and see, for a millisecond, a tiny lake in Colorado your brief awareness of the lake doesn’t make it transitory.

            The modulations you describe would have been present when first generated, which could have been before the human species ever walked on this planet and will be detectable probably long after the human species becomes extinct.

            Regardless, reconcile your definition of “transitory” (whatever it happens to be) with storage. The PTAB, within Mewherter, got around this by citing a handful of patent applications that inferred (but did not explicitly teach) that storage could include a signal.

            1. If you glance down on your airplane trip from NY to LA and see, for a millisecond, a tiny lake in Colorado your brief awareness of the lake doesn’t make it transitory.

              But the specific ripples in the lake at that moment are transitory. That’s the point.

              You are confusing the transitory nature of your observance of the phenomena with the transitory nature of the phenomena itself.

              Define the “phenomena.” Also, if you’re worried about confusion, why are you discussing ineligible phenomena like “starlight” in the first place? What’s the relevance?

              Signals aren’t eligible for patenting. The Supreme Court got it right and that case will never be overturned. Get over it already.

            2. Signals aren’t eligible for patenting. The Supreme Court got it right and that case will never be overturned. Get over it already.

              Um, that was not a case before the Supreme Court…

            3. But the specific ripples in the lake at that moment are transitory. That’s the point.
              Not really. The waves propagate.

              Also, if you’re worried about confusion, why are you discussing ineligible phenomena like “starlight” in the first place? What’s the relevance?
              I didn’t raise the issue, APOTU did.

            4. The relevance is in trying to understand what exactly is the difference – both in reality and in the patent world – between the terms “transitory” and “non-transitory” and why that difference should matter in the least.

              Let us shine a huge spotlight of (transitory) meaning on the subject…(to play with another pun)

            1. Every invention is potentially transitory under this definition

              That’s the point: come up with an absurd definition for a term, then use the absurdity of the definition to trash any attempt to create a rule that uses that term.

              This is the same approach that anon & company use when they argue that current 101 jurisprudence means that “everything is ineligible.”

              They engage in this behavior while pretending to be “more principled” than everyone else, while deriding any and all reasonable attempts by others to discuss the obvious ramifications to the patent system (and the public) of having no such restrictions. The reason is because they don’t care about the “law” (much as they pretend to). They care about one thing: more patents, all the time, and easier to enforce. Once you digest this basic fact about anon & co., everything they do and say is very easy to understand. And that includes the rare occasion when they argue (against their own “principles”) that certain subject matter should not be eligible in spite of the “clear” wording of the statute (why would they do that? easy: spite).

            2. Shorter Malcolm: “QQ

              Actual point: try to be consistent with the law and definitions used in the law. The vapid and worthless of “transitory” being not supportable when a clear and consistent view is to be taken.

            3. What’s the point here? Every invention is potentially transitory under this definition.
              +1

              To recap some of my points. What is transitory versus what is non-transitory? Is the term “non-transitory” definite under 112, 2nd?

              How is a transitory, propagating signal an example of storage? Doesn’t “storage” imply some sort of permanence? Isn’t that inconsistent with a transitory signal?

            4. …and the difference between ‘storage’ and ‘storage enough’ can be (yet) another nose of wax we can let the Supremes use to set (arbitrary and how-deep-is-implicit-“policy“-type of law writing)…

        2. “Look up into the cloudless night cky to see so-called transitory signals that have existed well beyond anything – quite literally anything – created by man that is supposedly non-transitory.

          Not a single person ever, anywhere, has offered any reasonable rebuttal to this plain observation.”

          At the risk of getting thrashed or thresholded for severe punning, these questions cannot be viewed in a vacuum.

          They have context.

          In a mechanical case, whether or not a filiament is a “continuous filiament” depends on how it is viewed in the context of “non-continuous filiaments” in that art field.

          In the textile world, a 10 cm filiament can be viewed to be “continuous” as against standard textile discontinuous or non-continuous filiaments (seldom longer than 1 cm). But a 10 cm glass filiament would not be viewed as continuous.

          But in either case, we don’t measure the 10 cm filiament against a 5000 km long interstate highway to see whether or not it is continuous.

          1. At the risk of getting thrashed or thresholded for severe punning, these questions cannot be viewed in a vacuum.

            LOL – A for the pun.

            Take any context you want – the point still stands: In re Nuitjen makes no legal or real sense.

        3. anon, I up you one. It is time to destroy the travesty that are Beauregard claims. All they ever were was a dodge around the statutory requirements imposed by 271(b) and (c).

          We haven’t had the proper case yet, but if someone were to sue my client on a B-claim where he or she was not aware of the patent and of the infringement, I certainly would raise the issue.

          B-claims do not define new articles of manufacture and are truly non statutory. But they also undermine the protections congress wrote into the law of contributory infringement.

          1. That does not “up me one” at all, Ned.

            Or are you forgetting that the 101 statutory categories include manufacture? And yes – B-claims are explicitly manufactures.

            In fact, your effort to “one up me” is a FAIL for you , since this is yet another area that you always seem to run away from.

            Do you know the controlling law as to the exceptions to the printed matter doctrine and how that law provides the legal bridge to fully recognizing software as a manufacture and machine component in its own right?

            Ned – do not run away yet again!

            1. Or are you forgetting that the 101 statutory categories include manufacture? And yes – B-claims are explicitly manufactures.

              Are you forgetting that the 101 statutory categories include processes? And yes – the process of thinking about your mommy is explicitly a process.

              But wait: we know that such procesesses aren’t eligible for patenting and the Supreme Court is never going to hold otherwise. So I guess your kindergarten grade view of 101 is pretty much a complete lie.

              Nice work. As usual.

            2. Nice strawman of a process totally in the mind Malcolm.

              Of course, it has been pointed out that only you ever introduce that lame argument.

              Gee, I wonder why? Oh wait – here’s my chance to reintroduce one of my favorite words: anthropomorphication – and yes, even though Malcolm is on record for saying otherwise, machines really do not think.

            3. And we should all note that in a related manner, Malcolm will next bungle copyright law (yet again) by explaining how software – a manufacture and machine component is ‘perfectly protected by copyright (in his… um, … ‘mind’) and how this wonderful copyright is earned by his ‘completely in the mind’ strawman…

              (this out be good – I have TWO buckets of popcorn ready to watch Malcolm flub this)

      2. Look up into the cloudless night cky to see so-called transitory signals

        What drugs are you usually on when you do this?

        I mean, other than your prescription drugs.

  8. Given the prosecution history where the verifying application was distinguished from the OS, I think one could reasonably concluded that a verified program also was an application.

    While I think Apple was right, this was a close call.

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