Congratulations to the Winners of the Giles S. Rich Patent Moot Court Competition

Congratulations to our team from the Iowa College of Law, Joshua Galgano and Michelle Wallace, and their coaches, Prof. Christina Bohannan and Damon Andrews, for winning the national finals of the 41st Annual Giles S. Rich Patent Moot Court Competition.  Dr. Galgano is a 3L who holds a PhD in chemical and biochemical engineering; he will begin his career at Sterne Kessler Goldstein & Fox this fall.  Ms. Wallace is a 2L with a chemical engineering background; she will be working at Reinhart, Boerner, & Van Deuren this summer.  Congratulations to both!

Congratulations also to Suffolk Law School’s team of Christina Mott and Scott Chappell, coached by Even Brown, who finished in second place.  Other teams competing in the finals included Columbia, the University of Washington, the University of Utah, the University of Houston, and Michigan State.

Earlier this afternoon, the two teams argued before Judges Lourie, Tarranto, and Chen.  This year’s problem involved issues of subject matter eligibility of claims relating to DNA and of subject matter jurisdiction over a licensing dispute.  If you’re curious about the problem, it can be found here.

(Also, this morning the Federal Circuit issued its opinion in Apple v. Motorola, affirming-in-part and reversing-in-part Judge Posner.  While the three judges agreed on most issues, they disagreed on issues of injunctive relief (Judge Rader would have allowed Motorola’s request for injunctive relief to proceed and Judge Prost would not have vacated the district court’s summary denial of Apple’s request for injunctive relief) and means-plus-function claim interpretation.)  More on this opinion later.

175 thoughts on “Congratulations to the Winners of the Giles S. Rich Patent Moot Court Competition

  1. Congrats to the team from Iowa! Tough competition this year and you guys took the cake. Good job!

  2. I showed you a beginning step in the history of the experimental exceptions

    That’s nice. Unfortunately for your desperate efforts to move the goalpost, we weren’t discussing “the beginning steps in the history of the experimental exceptions”. Not even close.

    No, Mr. “Strict Liability” (have you forgotten your incessant endless hammering of this oh-so-precious “point” of yours??), we were discussing the issues raised by incredible broad composition claims that recite an arbitrary “effect” that might be “easy” for one or two people to test but, for the rest of the world, are the furthest thing from “easy.”

    As I wrote: I just made [a solution that seems like it might read on claim 15] right now, using readily purchased salts, for an entirely different purpose than that described in the claim. Get it? There is no “experimental use” at issue here. I’m not “experimenting.”

    So, my composition either infringes the claim, or it doesn’t (are you following along, Mr. “Strict Liability”?). And I stand by my conclusion (repeated here, verbatim): it’s absurd to require me to perform the applicant’s arbitrary clinical test on the “effectiveness” of the solution to discover if my solution infringes the applicant’s composition claim.

    Then you were asked a very straightforward question which you still have not answered: what happens if I send you half of my composition and you test it for “effectiveness” according to the applicant’s arbitrary test and it comes out “positive.” Is my composition infringing? Does it matter whether you were told to test it? Remember: we both have the identical composition. What if I do the same test on a different patient and it comes out “negative”? Remember: it’s identical to composition you tested.

    Step up and tell everybody the answer and why your answer “makes sense.”

    You already know what I think the answer is because I’m not a hypocritical, cowardly goalpost-moving p.o.s. like you.

    1. You did not ask for a holding.

      I presume that you know what a holding is, and if you wanted a holding you would have asked for one.

      Your bad.

      There was no moving of goalposts.

      I gave you what you asked for. I then invited you to take the next step. You have yet to do so.

      Again, your bad.

      As to “Mr. Strict Liability” – I have already responded to that comment as well on the other thread. You did not respond there.

      Again, your bad.

      might be “easy” for one or two people to test

      Talk about moving goalposts: we – you and I – were not talking about any subjective “ease” of making/performing the claimed invention. That has nothing at all to do with our discussion.

      Pay attention.

      There is no “experimental use” at issue here. I’m not “experimenting.”

      Stop being pedantic. The limited defenses are categorized as experimental uses and the well recognized patent term includes those things that Justice Story discussed (LOL – if you have a problem with what that term means, take it up with Justice Story)

      Then you were asked a very straightforward question

      You have not yet answered my very straightforward question – even after I have given you what you actually asked for.

      I’m not a hypocritical, cowardly goalpost-moving p.o.s. like you.

      Yes, it is opposite day in Malcolm’s mind.

      1. MM it is plain to see that anon doesn’t even understand what you are discussing. Anon thinks that we’re talking about a composition that you’re planning to make, or have just now invented, and you want to know whether or not it will infringe, so you run some experiments to see. Of course, what you’re actually talking about is, generally speaking, and especially where you’re already deep into making/selling this composition and simply found out about this patent and wonder if you’re infringing. Of course at that time, there is no experimental use other than that which you may undertake to determine infringement, the rest of the making/selling/using is not “experimental” at all and the experimental defense won’t come close to touching it. Anon doesn’t even understand that this is the hypothetical situation, even though everyone else reading does.

        He doesn’t understand the thoughts or feelings of others bro. You can’t discuss complicated matters with him, he won’t even follow the conversation, indeed he doesn’t even want a real conversation. He will only discuss what he wants to discuss (here the proposed, but shaky, “experimental defenses”) and make efforts to try to control the conversation to be about only that which he wants to discuss. Especially in the routinely occurring everyday situation where he mistakenly thought your hypo was different than what you wanted to talk about in the first place (he thought you were talking about a different hypo since you didn’t spoon feed it to him well enough).

        It is part of his condition brosef.

        1. He doesn’t understand the thoughts or feelings of others bro.

          LOL – you are doing that ‘projecting’ thing again 6.

          I understand fully the scope and content of the conversation. You on the other hand,… well, that is highly doubtful. Understanding does not equal agreement. You should understand that.

          already deep into making/selling” – LOL so you want to move the goalposts a bit and make this more than just seeing if the invention works as claimed…. Sounds like you want to have an Infringers’ Rights get out of jail free card for more than just seeing if the invention works as claimed – you seem to want to be able to excuse your “deep into” actions. Bad timing on your part (deciding too late into your “deep into” actions) is not a valid reason to move the goalposts, 6.

          your hypo was different than what you wanted to talk about

          LOL – you want me to read minds now, 6? That’s too funny. Malcolm is supposedly this master of English as a First Language. If he wanted to talk about something else, he should talk about something else. Again – I gave him what he asked for and if he does not have the ba11s enough to admit that he asked for the wrong thing, that’s his problem, not mine. You really should look into your ‘projecting’ problem as you are now projecting Malcolm’s problems onto me. Thank you but I will pass.

          1. “LOL so you want to move the goalposts a bit and make this more than just seeing if the invention works as claimed”

            Everyone on the blog except you knew the goalposts were there to begin with. Which is why you’ve made such a mess of your tit for tat with MM.

            1. “LOL – not so – you are misunderstanding quite clearly.”

              Oh, yes, sure thing, I’m the outlier. /eyeroll.

              Meanwhile you’ve had a huge tit for tat about something that was never even under discussion. As usual. Congrats.

          2. “you want me to read minds now, 6″

            Nah bro, I’d just like for you to either a. have a normal non-psychopathic brain or failing that, b. for you to obtain medication for said psychopathic brain so that it will operate more normally, or failing that, c. understand and accept that you usually do not understand w t f MM and most other people are even talking about here on PO, and thus make efforts to figure out what they’re talking about before you create a huge tit for tat about something that wasn’t even brought up. Efforts you can take is to ask people to be clarify what they mean, like you just did in another thread regarding what Owen said. Oh and also if you could cease attempts to make the tit for tats only about x subject which you want to discuss and instead be willing to discuss y things that other people want to discuss in addition to x subject you want to discuss then that would be nice.

            1. again, not so.

              Seeing as I was the principal in the conversation, you would think that you would care more for how I feel rather that trying to project your views onto the situation.

              You seem to have a problem with understanding how others feel 6 – perhaps you should get that checked out.

            2. “again, not so.

              Seeing as I was the principal in the conversation, you would think that you would care more for how I feel rather that trying to project your views onto the situation.

              You seem to have a problem with understanding how others feel 6 – perhaps you should get that checked out.”

              Christ sakes, your combo of psychopathy and ocpd is dam near invincible isn’t it? No wonder it’s been so hard for you to overcome.

            3. LOL- you are again projecting 6.

              Do you ever wonder why the CRP-Run Away and CRP again cycle is so virulent?

              (hint: maybe if you cared enough to understand it, you would realize the error of your ways)

          3. ” If he wanted to talk about something else, he should talk about something else.”

            He has been talking about something else. He just can’t always tell when you’re “off in left field” so to speak. It’s hard to tell when you’re actually off in your own little world but are for some reason supposedly responding to a person about x when you’re actually not. And then you usually refuse to come in from left field even when he (or others) asks you to. You really like to be off in left field. Specifically when left field is what you want to talk about. Generally you want everyone, especially the person you’re talking to, to come join you over in left field. And you take steps to make them.

            “I gave him what he asked for and if he does not have the ba11s enough to admit that he asked for the wrong thing”

            Everyone on the blog already knows what he asked for, and it was different from what you thought he was asking for. From the beginning. Everyone’s just too polite to jump in and correct you every time. Or afraid you’ll turn your mental behavior on them. Or they just don’t give a dam and are content to let you tit for tat all day long.

          4. Also, projecting is a defense mechanism of yourself, you cannot “project” “problems” of another person onto yet another person. You really need to learn what “projecting” is.

          5. ” If he wanted to talk about something else, he should talk about something else.”

            He has been talking about something else. He just can’t always tell when you’re “off in left field” so to speak. And you refuse to come in from left field when kindly asked to. Just like you’re doing right as we speak. Now you demand that he apologize for supposedly asking for the wrong thing. Absurd. I knew what he was asking for the whole time. So did everyone else. Except you. You’re the outlier bro.

            “I gave him what he asked for and if he does not have the ba11s enough to admit that he asked for the wrong thing”

            Everyone on the blog already knows what he asked for, and it was different from what you thought he was asking for. From the beginning.

            1. He has been talking about something else.

              Not in the conversation with me, 6 – why are you having such a difficult time understanding this?

            2. “Not in the conversation with me, 6 – why are you having such a difficult time understanding this?”

              Jesus christ you’re such a retard sometimes anon. Perhaps MM will get on here and confirm for your dumbass that he was in fact talking about “something different” the entire time while you were oblivious the entire time. He tried, repeatedly to call you back over to what he was talking about, and you just stood off in left field talking about whatever you wanted to talk about.

            3. 6,

              Malcolm lacks any sense of truthiness. SO even if he were to come on here and claim as you indicate, such would prove nothing.

              The black and white of the record tells all – he asked for something other than a holding. I gave him what he asked. I then countered with additional questions to show that (as usual) he was full of it. He ran away.

              Why you wanted to jump in with your passive/aggressive psycho B$ is not quite certain, but you did and you did so in very apparent error.

              Why do you have such a hard time understanding this?

            4. “6,

              Malcolm lacks any sense of truthiness. SO even if he were to come on here and claim as you indicate, such would prove nothing.

              The black and white of the record tells all – he asked for something other than a holding. I gave him what he asked. I then countered with additional questions to show that (as usual) he was full of it. He ran away.

              Why you wanted to jump in with your passive/aggressive psycho B$ is not quite certain, but you did and you did so in very apparent error.

              Why do you have such a hard time understanding this?”

              It’s literally like talking to a 5 year old when speaking with you.

            5. 6,

              It is more than apparent that massively, the non-understanding is something that you need to own.

              You seem to be in some pretty severe denial of this.

              Is that yet another symptom?

  3. anon, perhaps.

    But if we are talking 101 and “new and useful machine,” we have to be talking about new “structure.” New structure should not be confused with use. The new structure itself has to be there. It has to be there when the power is off as when it is on.

    1. Ned, stop running. A special purpose chip can be built to implement the method. The structure of this chip is equivalent to the structure of the software.

      Address that scientific fact and stop running.

      1. The structure of this chip is equivalent to the structure of the software.

        “Hardware configured to process credit card access requests, wherein said processing includes determining the geographic source of the request, wherein if said source is a state whose name ends with “a”, a message is communicated to the owner of said credit card.”

        Describe the structure for everyone, NWPA. You’re a skilled artisan, aren’t you? So please describe the structure such that it distinguishes the new hardware from the old hardware. Thanks.

        1. Not only are you missing the point, but you do realize that, of course, a special purpose chip to perform the method you described is going to have a structure. To determine whether or not a name ends with an “a” will take structure to determine.

          Do you suppose these things are magically determined?

          1. To determine whether or not a name ends with an “a” will take structure to determine.

            Oay, let’s say that it will “take structure” to perform that function. Please tell everyone exactly what that structure is.

            I suppose next you’ll tell everyone that the structure is “hardware configured to determine whether or not a state ends with an ‘a’”.

            1. A circuit diagram is not structure to you? We have been here at this argument before. I tell you a circuit diagram and then you say nonsense and run away.

              Ridiculous waste of time interacting with you.

            2. The ‘pretty please’ misses the point 6. Why are you having a hard time understanding this? Do you not care about the feelings of those involved?

  4. actually, anon, Night and you will not answer simple questions like how much software does it take to fill a breadbox.

    But back to 112(f), there seems no justification, in my mind, to construe any claim as MPF unless it at least uses the term “means.” The statute says the use of 112(f) is optional, and specifies its form, exactly, before it can be invoked.

    It seems the question should be focused on whether the optional use has been sufficiently invoked, such as, did the claim use “Means,” and did it recite no structure. Otherwise, the statute seems clear that 112(f) is not invoked because the request to invoke it was defective.

    The question should never be asked in the first place without the claim having the word means in it.

    1. you will not answer simple questions like how much software does it take to fill a breadbox.

      See below: such question need not be answered because such question has no legal significance.

      Stop obfuscating.

    2. The question should never be asked in the first place without the claim having the word means in it.

      I would be fine with that, given that the applicant has the power to choose the words they want to use.

    3. Actually, Ned there is an answer to how much software it takes to fill a breadbox if simply slightly recast in how much software does it take so that the hardware to represent the structure of the software is bigger than a breadbox.

      The answer, of course, is many billions of lines of code given current technology.

      You see Ned you are simply dodging the issues.

      1. The answer is easy, once you accept the fact that software is equivalent to firmware and is equivalent to hardware.

        But even asking the question only indicates running away from the facts and the law that must be accepted as the starting point in any intellectually honest discussion.

  5. Again I challenge Lemley to a debate based on Apple v. Motorola. Dennis can make the rules so that you can be assured it will be a civilized debate. But, then we all know you never will debate because your views are untenable.

    The great and powerful Lemley as long as he has his vanity press The Stanford Law Journal to fall back on.

  6. Prost is out of her mind. Heuristic is not means plus function. That is like saying hinge should be a means plus function. In this case, the claim is saying effectively some program to determine a certain type of finger movement. They are adding in heuristic to make it clear that his is not going to be black and white whether or not some swipes up and down or left to right.

    So, they enable some types of using a heuristic and that is enough for the combination claim. The claim is not about how make the heuristic. The heuristic is merely a component of the machine. Sheesh. To limit the machine to only using the components for heuristic in the specification would render the claim unenforcemable–worthless.

    And would lead to specifications that are 10,000 pages long. That would incorporate by reference potentially 100′s of thousands of pages. Absurd.

    Again, we are getting this intellectually dishonest attempt to burn down the patent system and here from a federal circuit judge.

    It is simply ridiculous. The claims should be construed to the scope of enablement. A person could file a patent on a heuristic to detect certain claim movements. That would be an improvement. Man. This is scary that judges try this kind of stuff. Lourie meet your twin.

    1. What MM does is completely disruptive to real discourse. There is interesting issues here and if he were to argue Prost’s position then fine, but he is not. He is intentionally lying and trying to disrupt the discourse. He should be banned for this behavior. And I agree with you that if he is a lawyer that he is violating this ethical duties as well. He has said that he is a lawyer before.

  7. Wow, did Genius Posner get scorched, and on multiple issues. About time.

    But the elephant in the room is the 2-1 decision refusing to universally cabin infringement of software patents to 112. This will ultimately have to be resolved by the Supreme Court because as other commentators note, right now the outcome depends on the panel draw at the CAFC. The “everything is 112″ infringement prong of attack is only a little behind resolution of the other prong of the attack (expanding invalidity exposure through inflated “abstract idea” analysis) about to be decided in Alice v. CLS Bank.

    I still predict software patents and even business methods will emerge intact from Alice, because the Court will punt the same way they did in Bilski, refusing a blanket rule, refusing a bright line test, and hiding behind their tautological gobbledegook to declare a single patent “abstract” on the unique facts of the case.

    But I’m not so sanguine about the 112-based infringement attack because it is less of a nuclear bomb and right in Robert’s wheelhouse: adopting Prost’s position (and that of the Board in Smith/Erol/Lakkala) will not destroy software patents, but it will narrow them into near-worthlessness. Which of course is the point, and precisely why Roberts can be expected to embrace it. Looks judicious and gets plaudits from the NY Times editorial page.

    1. will not destroy software patents, but it will narrow them into near-worthlessness.

      Got that, folks? A patent claim that covers an actual working piece of software isn’t worth anything.

      But people will still buy that software. And you can still protect it. And people will continue to develop new software and sell it, regardless of whether the patent teabagger’s gravy train continues to run as smoothly as it has in the coddling hands of the admittedly dishonest Federal Circuit and the kool-aid drinking incompetents at the PTO.

      1. Again, filth, he is talking about how narrow a patent claim is if it limited to only the express embodiments disclosed in the specification. But, then you know that don’t you? You are intentionally lying aren’t you? You see this is a prime example of why you should be banned from this board. You are intentionally lying.

        1. It is not just that NWPA.

          When such obfuscating and dissembling and yes, even outright lying are knowingly being done on a social media mechanism such as a blog, a lawyer (as Malcolm has intimated that he is such) does not have his ethical duties ‘suspended’ – he does not have those duties placed in limbo under the pretense of exercising First Amendment rights.

          Prof. Crouch has directly said “No lying.
          Prof. Crouch has posted the rules for blogging include ‘Only personal thoughts be posted.’ Or paraphrased: no shilling.

          It certainly does NOT help the perception that somehow Malcolm has an improper relationship with Prof. Crouch to see that the direct link to those terms of use is no longer available. (Don’t worry – still can be found: link to patentlyo.com )

          You agree that all content posted to the Blog is the sole responsibility of the individual who originally posted the content. You agree, also, that all opinions expressed by users of this site are expressed strictly in their individual capacities, and not as representatives of PO, its owners or employees.

          You agree that you will not knowingly and with intent to defraud provide material and misleading false information. You represent and warrant also that the content you supply does not violate these Terms, and that you will indemnify and hold PO and Dennis Crouch harmless for any and all claims resulting from content you supply.

          And it should be noted that rather comply with these, that Malcolm resorts to name calling (attempting to denigrate me with a Mr. Principle moniker) while still maintaining his deceitful ways and even attempting Cry Baby Vetoes.

          1. Not only has Malcolm volunteered an admission as to knowing the controlling law as to the exceptions to the judicial doctrine of printed matter, he has admitted knowing what that legally means.

            And yet, he is constantly posting in a deliberate and intentional manner, providing material and misleading false information. It is without question that such type of posting is not only done with constructive lies, but also with material omissions.

            1. I think MM should be banned. He clearly gets on here and lies to try and obfuscate the issues. It is horrendous to try to blog with him. Simply painful.

            2. I would not go so far as to ban.

              I would go so far as to eliminate every one of his posts that employ his vapid short list of scripted rhetorical tools.

              Any post of his that shows his use of AOOTWMD.
              Any post of his that shows his use of vapid and empty ad homenim
              Any post of his that shows his use of false spin
              Any post of his that shows his use of that contains improper (knowingly material omissions) law, attempting to hide opinion of what should be law (which would be acceptable if presented in an intellectually honest manner) with what is law.

              I have invited him to refrain from his vile posting techniques on his own volition. It is more than apparent that he is imply incapable of behaving properly. One cannot even get to disagreeing with what he wants to say since how he says it is so vile.

              As to banning – I would consider such for repeat offenders of the shilling kind. The CRP-Run away from valid points-CRP again syndrome is anathema to actual conversations. When one side has involved a legal restraint from carrying a conversations to their logical conclusion (by posting in a non-personal manner) and instead runs away or train wrecks the thread to prevent that logical conclusion from being reached, the blog suffers tremendously.

              The simple truth is that these blog comments are being used as a modern social media mechanism of legal advocacy, and such use does invoke the rules of legal ethics. We are well beyond a mere First Amendment trading of only personal opinions for those shilling on this blog (and shilling is NOT limited to actually being paid to blog – let’s remove that pedantic semantic).

        2. LOL – feeding him? I kind of like poking him in the eye with law and fact and watching him sputter out of control.

          Do you get how he is trying to avoid his most recent self-fail concerning experimental use exceptions? It is as if he wants to impale himself on his lack of knowledge of patent law.

      2. And MM you are not just intentionally lying, but you are intentionally trying to destroy this discourse. You should be banned from this board. This is a prime example of what you do day in and day out.

        But, this one example here should be enough to ban you. It is no wonder that you have been banned on other boards.

        1. I could not tell you that Malcolm has been banned on other boards.

          I do know that certain of the little circle mates of his have been.

          But it would not be surprising that Malcolm under one of his army of sockpuppets (which he swore he did not use ‘in years’ ;-) ), has been banned – his personal enmity and continuous diatribes against someone who does not even post here is beyond ridiculousness.

    2. Agreed with @Tour on Alice, which is changing nothing, but:

      “But I’m not so sanguine about the 112-based infringement attack because it is less of a nuclear bomb and right in Robert’s wheelhouse: adopting Prost’s position (and that of the Board in Smith/Erol/Lakkala) will not destroy software patents, but it will narrow them into near-worthlessness.”

      I don’t know. With Renya writing in AvM and Lourie likely agreeing with that position, we see that the CAFC has six judges that won’t cooperate with any Supreme Court decision to put teeth in §112. Rader, Newman, Moore, O’Malley, Renya, and probably Lourie won’t have it. Even if the rest go along with likely developments in §112 from Nautilus and future cases, that leaves an evenly divided Federal Circuit at best. I’m betting that not every one of the other six will go along, either.

      So §112 won’t be coming into effect in the near future any more than §101 is.

      1. Won’t be coming into effect?

        Try Owen that hopefully the patent system will not be crippled by activist judges that do not understand patent law.

        Owen: do an experiment. Image that Prost won and held that the claims were limited to only those heuristic procedures in the specification. I am not going to take the time to write about all the problems that would cause, but one it would cause is that the specification would then have to include every way currently known for the hueristic procedures. So, that would add maybe 1,000 – 100,000 pages to the specification just for that one element.

        And, filth (AKA MM), don’t deviate from this example. Just image that every specification would have to disclose every known hinge. That is absurd and evinces such ignorance of the patent system as to be unbelievable. The only conclusion one can draw is intellectual dishonesty. Grounds for impeachment for Prost. She should be impeached for her dissent.

      2. Owen,

        Since it is known that you are not a lawyer, I will cut you some slack, and merely ask you to back up your statement of “cooperate with any Supreme Court decision to put teeth in §112.

        Which decision was it that you think had the Supreme Court directing the CAFC to “to put teeth in §112.”…?

        Then turn around and realize that 101 IS in effect – as Congress wrote it – perhaps not the twisted nose of wax version that you may want to have the judiciary re write (in apparent violation of the Constitution and that document’s allocation of authority to the particular branch of writing patent law).

      3. Maybe you’re right. My predictions are not ex cathedra and even if they were and even if I were the Pope they still would not be infallible. I think it is a risk, but nothing is certain.

    3. Tour, if you know, what is the first case that suggested that a wholly functional claim element, not expressed in terms of means plus function, nevertheless had to be construed under 112(f)?

      Anon has made the point, and a very good point indeed, that 112(f) is entirely optional – and is something chosen by the applicant. If he did not choose to avail himself, then why defy his choice?

      This is the very best argument from anon in a very long time and I am persuaded.

      1. …but that aside, I think I see your point here – you are finally recognizing the permissive language used in 112(f) and the fact – as shown in the Orthokinetics case – that functional descriptions are fully allowed under law – 112(a) and 112(b) – outside of 112(f).

      2. in a very long time

        LOL – can the melodrama – I also recently switched your view on an aspect of 101.

        This is just another side effect of a “you” problem Ned. You have this tendency to think that anything that aligns with your dogma must be right and is the ‘stuff of genius’ – even to the point of you thinking that when 6 aligns with you he is GD gifted.

        Worth repeating (LOL, 160): link to youtube.com

      3. Don’t know the first case.

        I understand anon’s point and I understand your point about 112 being optional. That is not the point. The point is that a good part of the Board and CAFC (not to mention self-appointed opinion makers) do not see it that way and they have policy reasons for not seeing it that way which may carry the day.

        1. Tourbillion, you do hit on a fact that certain judges (at a minimum) at the CAFC view their role not as properly understanding the law, but as a manner of changing ‘interpretations’ in order to play policy-makers.

          I ran across this blog that indicates one such view – the infection of extrinsic value judgments pervading well established law:

          link to bilskiblog.com

  8. Melding the lessons from Braintree and Apple together to those who struggle with patent law (often, those very struggles stemming from extra-legal philosophical dogmas), and as the good professor notes in his comments on the Braintree case (and something that Malcolm tried to brush aside blithely), “patient” is a critical claim element.

    Yes, perhaps not in the “third-grade” immediate sense that Malcolm so often accuse others of that which Malcolm (is apparently) doing, – and case law that Ned finds inconvenient and simply ignores, but in a very real sense nonetheless.

    I offer for discussion the Orthokinetics case (806 F.2d 1565) 1986, which clearly shows that claim elements outside of the actual structure of a claimed item – and that may require effort outside of the claim itself (pay attention Random Examiner) – can no less impact that very structure recognized as validly claimed.

    In that case, the functional language of “is so dimensioned” (which was completely dependent on an extra-claim structure) was the critical point in the reversing the district court.

    Tellingly, this was not a 112(f) issue – even though functional claiming was involved (pay attention Ned Heller).

    As is readily evident, functional claiming is allowed beyond the bounds of 112(f).

    And much like the present case, the notion that a claim that requires some effort (“it is undisputed that the claims require that one desiring to build and use a travel chair must measure the space between the selected automobile’s doorframe and its seat and then dimension the front legs of the travel chair, so they will fit in that particular space in that particular automobile</I”) beyond the claim does not make the claim indefinite.

    In the art to which the invention pertains is very much a driver.

    And no amount of QQ from those whose agenda is to outlaw the art of software, will – or even can – negate the basics of patent law that thus must be recognized: functional claiming and some experimentation/analysis outside of the claim itself does not make a claim indefinite.

    To paraphrase Orthokinetitcs, “The phrase “configured to” is as accurate as the subject matter may permit, software being of various flavors**. As long as those of ordinary skill in the art realized that the configurations could be easily obtained, §112(b) requires nothing more.” And note too – this type of functional claiming is entirely permissible outside of 112(f).

    The dithering about what exactly that claim element means does not – and cannot – excuse the fact that it means something. Be it “patient” or be it a computer to be modified.

    Clearly, take that limiting item out of the claim, and you are claiming something else. Thus, in Malcolm’s ‘effective’ microcosm, the element must have some ‘effective’ structural context. Since claims of a product-by-process nature are effectively geared to the same exact type of protection of a patented item, something more than a vapid “no” must be put forth in a counter-position to move the conversation away from the starting point I offered.

    The name of the game is the claim – and all elements of the claim – as read and understood by a person having ordinary skill in the art to which the invention pertains.

    .

    When you have the law, pound the law.

    .

    ** as noted in the past, the form of the language of software is itself not limiting. Any of the various software languages thus do not exclude the patent eligibility of software, and simply do not detract from what software is: a manufacture and machine component, in every legal sense equivalent to firmware and equivalent to hardware.

    1. Anon, good post and I largely agree. A functional definition is acceptable if one of ordinary skill in the art would fairly understand what the claim covers without undue experimentation, and it doesn’t cover the independent inventions of others in that the claim scope is fully enabled.

      Back to Halliburton, as I discussed earlier, the claim at issue in Halliburton had three elements, all three of which were old, two in combination and a third known. The Supreme Court admitted that the combination of all three was new, but even having said that, they held the claimed to be invalid as functional at the point of novelty. In other words, the case was internally inconsistent.

      Faulkner v. Gibbs clarified that when a novelty was in the combination, there was no problem about functionally claiming the elements. Thus, exactly what Halliburton stood for is not clear.

      Thus, §112(f) can simply be viewed as a clarification. In a combination claim, functionally defined elements were acceptable even if they were arguably at the point of novelty if expressed using the magic words “means for” or “step for.”

      But as Frederico said in his commentaries, if the claim reduces to a single means claim in that the other elements, though appearing to be a combination, are nominal, then the claim is in fact violating O’Reilly v. Morse. I give you an example what I think Frederico was thinking about. Consider the invention of a screw, but the claim is the following:

      1. Apparatus, comprising:

      fastener means for attaching parts together.

      Aside from the prior art problems, such claim should is both indefinite and not enabled for the full scope given the disclosure of a particular screw. What if I claim,

      1. Apparatus, comprising:

      a plurality parts; and

      means for fastening the parts together.

      I think this is an example of what Frederico had in mind as being effectively a single means claim.

      1. Ned,

        You continue to over-read, and thus mis-apply cases (and commentaries).

        Halliburton was abrogated (whether Frederico recognized this or not is not clear given his comment of “that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined“).

        Likewise, as I have shown you, Faulkner itself being decided prior to the 1952 changes cannot be used to bootstrap your views.

        Lastly, there is NO discussion by Frederico that reflects a “Point of Novelty” take as you would introduce.

        None.

        Given the fact that a perfectly patent eligible and patentable claim can be comprised ONLY of non-novel elements, there is simply no distinction available to then differentiate in a case in which one of the elements is novel – regardless of that one element being in ANY particular form.

        You over-extend the Frederico commentary on single means, and without ANY justification change that commentary to somehow be talking specifically about not only functional claims, not only about a (improperly-parsed) novel element of a claim, but further, to a inordinately and tortured view of a PON and functional claim.

        You simply stretch this beyond the reasonable breaking point. Given the FACT that 112(f) is written in permissive language (not in mandatory language) and given the fact that it is well recognized that functional language is permissible under 112(a) and 112(b) for descriptions in claim elements OUTSIDE of 112(f), you have no justification for so torturing 112(f) and Frederico’s commentaries to try to arrive at your not-so-subtle agenda.

        1. anon, the problem you have is not recognizing that Frederico had a point.

          I agree with you that 112(f) is optional. But why? There must be a reason. Think about that for just one minute, will you?

          1. I will humbly point out that even Frederico’s words dictate that “mere codification” is NOT correct regarding functional claiming for the actions taken by the 1952 Congress (action in accord with which branch of the government was allocated the authority to write patent law):

            are modified or rendered obsolete, but the exact limits of the enlargement…,

            Enlargement is a given. And that enlargement is in view of case law – not just the prior written words of Congress.

      2. > the alleged infringer could have prevailed if the substituted device (1) ?>performed a substantially different function; (2) was not known at the >date of Walker’s patent as a proper substitute for the resonator;

        You notice that even in your Haliburton that the patentee is entitled to the solutions PHOSITA at the time of the invention.

        The problem with Haliburton is the SCOTUS not recognizing the method as being patentable. The way they analyze the device claims is not entirely inconsistent with LizardTech regarding the resonator. Basically, they are saying if someone else comes up with a new invention for a resonator they should be able to get a patent for it. Agreed.

        1. But a new resonator that performs the same function as the other one should not permit them to use the method which merely needed the new resonator to work.

          We should not forget that if they come up with a new resonator that they can get a patent on it and then no one can use their new resonator without a license.

          1. So, the case that you cite constantly is just silly. They don’t get that the method itself is novel. That the resonator enabled him to perform the device. That a new resonator is just an improvement of Walker’s method or machine. So, not surprisingly the SCOTUS got this wrong.

            1. Yeah, but Night, even the resonator and the method were old. See the discussion of the prior art.

              There really was nothing new except in the particular structure of the resonator that adapted it to the oil well application.

              The real concern of the Supreme Court was that the only thing new in the specification was not described in the claims.

            2. The real concern of the Supreme Court was that the only thing new in the specification was not described in the claims.

              How is that a concern?

              Since the claim is the name of the game, if the claim lacks, the claim fails of its own weight – there is no need for the Supreme Court to attempt to step in and write patent law based on such ‘sense and concern.’ What you have identified is pure judicial activism. Congress acted in 1952 to remove that power from the Supreme Court expressly because the Supreme Court had become too anti-patent.

              Those who do not learn history are bound to repeat it.

        2. “Basically, they are saying if someone else comes up with a new invention for a resonator they should be able to get a patent for it. ”

          Not only be able to get a patent for it, but not be covered by the previous patent. That’s the one rather crucial point that you seem to gloss over.

    2. The dithering about what exactly that claim element means does not – and cannot – excuse the fact that it means something.

      Like “new” non-obvious instructions included in a kit claim. They must “mean something”. Right?

      LOL.

      Keep hacking away, Tr0llb0y.

      1. Like your ‘kit claim’ is itself not ‘hacking,’ right Malcolm? What’s the matter pumpkin, did you forget (again) the controlling law regarding the exceptions the the judicial doctrine of printed matter and how that differentiates ‘kit claims?’

      2. Perfect example of impermissible sophistry by Malcolm.

        He is more than aware of the difference in law between ‘kit claims’ and those claims that fit the exceptions to the judicial doctrine of printed matter. His knowing omission and attempted obfuscation is nothing short of deception.

  9. One of the least well-crafted Giles Rich problems AIPLA has put out (the past three years have not been good). Issues not closely framed by the facts, unintended issues hiding in weird procedural posture, uninteresting dispute.

    1. That’s OK the bozos they had judging just look at something and if feels like something good then it is patentable and the accused device/method infringes otherwise they go through their psychotic abstract and then assert nothing has structure test and proclaim the patent is invalid. So, it doesn’t matter. Facts and law are irrelevant to this lot of judges.

    2. Gotta love the genetic disease:

      “MIND Syndrome causes megalomania paired with extreme intelligence, and uncontrollable urges to make repeated attempts to take over the world.”

  10. Apple v. Motorola, slip op. at 13-14 (2014):

    ““Structure” to a person of ordinary skill in the art of computer-implemented inventions may differ from more traditional, mechanical structure. For example, looking for traditional “physical structure” in a computer software claim is fruitless because software does not contain physical structures. Indeed, the typical physical structure that implements software, a computer, cannot be relied upon to provide sufficiently definite structure for a software claim lacking “means.” Rather, to one of skill in the art, the “structure” of computer software is understood through, for example, an outline of an algorithm, a flowchart, or a specific set of instructions or rules. See, e.g., Typhoon Touch, 659 F.3d at 1385 (“[T]he patent need only disclose sufficient structure for a person of skill in the field to provide an operative software program for the specified function.”); Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).1 Requiring traditional physical structure in software limitations lacking the term means would result in all of these limitations being construed as means-plus-function limitations and subsequently being found indefinite.”

    “Structure may also be provided by describing the claim limitation’s operation, such as its input, output, or connections. The limitation’s operation is more than just its function; it is how the function is achieved in the context of the invention.”

    When I recently posted that software is described in terms of boxes and arrows, regular commenter MM disagreed with it. The commenter “anon” always understood this correctly and has been arguing the same with MM and others of his ilk. Now the court has come out with sufficient clarity to tell these non software persons (or supporters of large software infringers) as well as Mr. Lemley that they should stop arguing about functional claiming and capability claiming of software claims.

    I applaud “anon” for the constant vigilance against misinterpretation of the software industry by MM and his friends.

    Large software companies appear to have hired trolls on various blogs to confuse the lawmakers and policy makers with nonsensical argument that software claims are “vague” and that they are “broad” and so on. Either these people are mechanically oriented (i.e., they cannot visualize something abstract such as software algorithm) or they are pushing a self-serving agenda.

    1. LOL – thanks but the phrase “they cannot visualize something abstract such as software algorithm” will most likely NOT be understood as you may have intended it (in a ladders of abstraction manner), and instead may be sought to be characterized as an admission that the patent term of “abstract” is what you meant.

      Truth be told, software is just not abstract. It is a manufacture, made by man, and a machine component, made for a purpose and utility. In the sister legal world of copyright, it is well understood that it has (that is must have) non-abstract structure – that it must be captured in a tangible medium, and thus, is is simply not something totally in the mind.

      1. This does not go far enough. The flow charts and boxes define a special purpose chip (actually thousands of different solutions that enabled for a PHOSITA.) So, there is actually physical structure in order to implement the invention.

        What I wrote above is irrefutable scientific fact. Anyone who disputes it like a flat earth person. That is what it comes down to. We have Lemley saying baldly that software has no structure or that a claim should be entitled to only the express embodiments in the specification. Both of these statements are outrageously wrong and Lemley is smart enough that I do not believe that he believes them. There are the teeth Professor Ted. Your mentor is intentionally making things up to get the judicial outcome he wants. Sounds like a person that has committed ethical violations to me. And, the reason your lot will never engage in a real debate is because your arguments do not hold water.

        1. If I had the time and money, I would file an ethics complaint against Lemley in California and with Stanford. A professor cannot take stands against science to further their legislative desires. Simply filth. The worst kind. And he is becoming a millionaire as he burns our system down with his lies.

        2. Or the outrage that someone like Lourie is a judge. Please J. Lourie that says a database has no structure? The J. Lourie that uses a paper and pencil test? The J. Lourie that does not understand the Church-Turing Thesis the most important theory of the information age. We. Need. Lourie. Out. Of. The. Federal. Circuit. Let him be appointed as the toilet cleaner of J. Rader.

          I wonder if Lourie even bothered to read the history of databases. Does he realize that they were invented. And that before they were invented that people simply were not able to organize their data efficiently. That for many years people did not figure it out. That Oracle built itself on figuring out that this new database invention thing was going to be big.

          1. Yeah, Night, Lourie has to go. Just the other day he was saying the had a new test for when databases were abstract. He would tie the database to a string and see if it would fly like a kite. If it did, it was not abstract.

        3. Night, just how is the structure of a computer changed when static ram has one voltage rather than another and it maintains that voltage ONLY if power is on?

      2. And I believe that about half the posts on this board are paid for by anti patent groups. Watch as the smoke machines start. There are simple issues here. No respectable computer scientist or electrical engineer would dispute that software has structure–not one.

        As bigger point, the more Obama appoints bourbon swilling liberal arts majors that never took an interest in science until they figured patents would provide them a gravy train are killing our system. They have no interest in understanding hind sight, the ladders of abstraction, or software structure. I voted for Obama twice. What a mistake.

        1. Night, are you in fact paranoid? People who disagree with you are paid spies?

          “No respectable … not one?” You are sounding like Al Gore dismissing dissent as not coming from “respectable” scientists.

          Night, just meet the arguments head on. Meet argument with counter argument. So, when I ask for the structure of a “1,” give me a decent answer. If I ask about the structure of a voltage level when power is one, give me an answer.

          You make a lot of assumptions about programmed computers. When I say the programmed has to be fixed to the computer in some fashion to make a new machine, you attack me. Yet you turn around and say the exact same thing when you say that a programmed machine has new structure. If it does, what is it?

          1. “meet the argument head on…”

            Ned, I just said that a special purpose chip could be made for each of the methods described with boxes and flow charts. You completely ignored that. Meet my argument head on.

            1. Ned asks in a completely misguided way: “where is this chip located?

              I will gladly answer you Ned in exchange for an answer to an even easier question: is there a statutory catogory of patent eligibility for machine components and other things recognized as manufactures?

            2. Ned – you attempt to use the analogy too far – and you (again) ignore controlling law as to the exceptions to the judicial doctrine of printed matter.

              I have pointed this fallacy out to you before.

              The difference in the bullet/gun analogy is the FACT of functionally related. The gun is not functionally changed when loaded with a different bullet. A computer IS functionally changed. A computer is imbued with new capabilities.

              This is not merely a case of ‘using’ the computer. I have also pointed out your fallacy with that term. You cannot include in ‘use’ those activities that make up invention in its own right. To do so would violate Morse and necessarily include in the invention of the first computer all future improvements to that computer. This you cannot do. You must give credit to such improvements to those that invent such improvements. You should not allow yourself the ‘lie’ of thinking that just because the computer was built to be changed, that that capability to be changed in the future means that all future changes are somehow immediately (inherently or otherwise) present. To do so is a fallacy in fact and in law.

            3. “The difference in the bullet/gun analogy is the FACT of functionally related. ”

              Last time I shot a hollow point bullet I noticed that the functionality of my gun was somewhat different than when I used non-hollow tipped bullets. Specifically my gun can make bigger holes in my target when I use hollow tips. They’re functionally related!

          2. Ned there is no dissent among scientist whether or not software has structure. Only law professors.

            Ned, you are becoming more and more silly. And you structure of 1 bit is something I have answered 10 times. I beat the pants off you and then you run away. Please.

            Paranoid? Patentlyo had a job announcement for paid anti-software bloggers.

            1. Let us review your answer to my question about the structure of a “1.”

              “Ned is the devil incarnate.”

              Yeah, you won that argument.

            2. anon, write it down and it is copyrightable subject matter.

              Carve it in stone, and it becomes legend.

              But, if it is in the mind, it is neither.

              So tell me, anon, how much do 1million 1′s weigh?

            3. A bit of dissembling (and moving the goalposts) from Ned: “ write it down and it is copyrightable subject matter.

              Very subtle Ned, but merely writing something down does NOT make that something copyrightable subject matter.

              One can write down math all day long and NOT have any copyrightable subject matter.

              “1″ is a number.

              “1″ is math.

              But you have admitted that software is NOT math. That software is a manufacture made by man. You cannot try to say software is something that you have already said that it is not. You are attempting an implicit analogy that breaks down and goes too far.

              “1″ – as you attempt to use it – is a fallacy. I have exposed this fallacy of yours many many many times now. So just like your attempt to kick up dust with non-Useful Arts examples, you need to stop trying to argue with known fallacies.

            4. I have shown you your fallacy by drawing the parallel to Morse’s allowed claim and asked you to provide the structure of “space.”

              You failed.

              Just as you fail now.

            5. Ned, stop lying. Answer this question: Have I or have I not engaged in at least one length debate with you regarding your question of the structure of a “1″?

          3. So, when I ask for the structure of a “1,”

            Ned, I have exposed this fallacy of yours time and again. Why do you repeat such tripe?

            1. He is turning into MM. He makes some assertion. Is beaten down. Runs. And then re-posts it in the next thread. Ned has is really going down hill.

            2. NWPA,

              There is no “going.”

              Ned has been running away from the points I present to him as long as he and I have been discussing the patent eligibility of software and business methods.

          4. You make a lot of assumptions about programmed computers.

            And what assumptions Ned are you locked into?

            What assumptions do you refuse to let go that still stop you from personally understanding the Nazomi case?

            How long will you persevere in your path of chosen ignorance?

        2. I believe that about half the posts on this board are paid for by anti patent groups

          I believe that you are a paranoid nutcase.

          1. Close your eyes Malcolm to the attacks on the patent system from the Right and from the Left. Clench tight those eyes as the patent system is made weaker. Chose not to see that after the AIA, patent protection takes longer to get, costs more to get (and enforce), and is more riskier, with patent rights once duly granted, ever more open to lower and lower levels of attack. Ignore the reality about you by clenching tight those eyes, sticking those fingers ever deeper into your ears and chanting LALALA ever louder.

            Go ahead and again spew venom and profanity at those who say otherwise (exactly like you did when I quoted more than one of the PatentDocs writers when those writers talked of that very thing).

            Empty name calling from you is all that you have to offer.

            1. Clench tight those eyes as the patent system is made weaker.

              It’s being improved and strengthened. Just because your b0tt0m-feedin’ is harder to achieve doesn’t mean the system is “weaker.”

              Nice try, though.

            2. What part of:

              …it costs more

              …it takes longer

              …rights duly obtained are more uncertain

              is “improved and strengthened”

              Or are you simply mouthing an empty soundbyte (again)?

      3. I used the word “abstract” in the commonplace sense of the word: that an electron is not capable of being “seen” with the naked eye, tasted, felt, heard from or smelt. Abstract does not mean that it is an “idea” under section 101, but simply that it cannot be grasped without some effort. But your point is taken. There are people who misinterpret everything.

    2. When I recently posted that software is described in terms of boxes and arrows, regular commenter MM disagreed with it.

      That’s not what I recall disagreeing with you about. The issue was whether “boxes” and “arrows” are properly considered to be structure as the term structure was contemplated by our patent laws.

      I think the idea that a flow chart is sufficient structure for a claimed function is nothing more than a ridiculous lie invented by the Federal Circuit to coddle bottom-feeders and grifters who understand that the lie allows them to sit around on their sad lazy butts and imagine something a computer could do if someone else programmed that computer, then patent that program (or the “configured computer”) without doing anything more.

      In any event, the money quote for the patent teabaggers has to be this: looking for traditional “physical structure” in a computer software claim is fruitless because software does not contain physical structures.

      That’s the sound of the Federal Circuit admitting that they are engaged in a Big Lie, simply because a tiny, tiny wealthy entitled minority of people in the country likes that lie.

      1. MM, this case also to put the spike in the idea that a programmed computer defines a new machine within the ambit of §101, because without new structure how can there be a new machine?

        Again, without new structure, how can there be a new machine?

        1. LOL – that is your Achilles Heel Ned.

          Tell me, have you resolved your own personal lack of understanding in the Nazomi case yet?

          Does ‘oldbox’ inherently have every future improvement to ‘oldbox’ somehow ‘magically’ inside?

          1. Does ‘oldbox’ inherently have every future improvement to ‘oldbox’ somehow ‘magically’ inside?
            Therein lies the problem — Ned’s belief in magic. Somehow, that computer is able to do something it was never able to do — if that change in the computer doesn’t exist in the physical/structural world, it must be magic.

            Oh wait, I forgot. Ned hangs onto the silly notion that a computer is just the processor and nothing else. He doesn’t believe that the motherboard, memory, hard drive, SSD, etc. are part of the “computer.” Thus, the instructions are not part of the computer.

            1. Ned’s silliness is perpetually displayed by his chosen path of ignorance.

              How else does one explain the inanity of his professed “knowledge in this art field” and his inability to personally understand the Nazomi case?

              The answer to Ned’s blindness is for him to open his eyes. Only he can do that.

            2. Cotton gin’s were invented a long time ago. Did anyone tried the patent and improve cotton gin when the pattern it will was changed?

              But you object, how could the cotton gin not be new if it produces a new weave?

            3. cotton gin when the pattern

              Cotton gins do not ‘pattern.’

              Perhaps you are thinking of a loom.

              The supposed problem is solved when you constrain yourself to the useful arts. Clearly, Ned, if you have to struggle and use that canard, your position is lost.

            4. …and to be clear, the canard of Ned’s is to wander far afield and attempt to use examples OUTSIDE of the Useful Arts.

              As explained many times, such examples are non-starters and utter nonsense for ANYONE with any appreciation that this is patent law that we are discussing.

            5. Well, anon, will a program float? What is the specific gravity of a program?
              Bad question. I take a complex machine with multiple parts made out of steel, put it in a crucible, melt it down, and form it into a solid block. Does the complex machine and the solid block of steel weigh any different? Using the logic implied by your question, one would say that they are no different.

            6. OH NO, shall we narrow the question just a bit. Is the computer power on or off when we determine its state?
              Why don’t you answer the question both ways.

            7. OH NO, “Machine?” We are talking about a program.

              How many programs does it take to fill a breadbox?

              On power on or power off, if the answer depends, then we are not talking about a new machine, are we?

            8. Ned,

              Have you (yet) overcome your own personal limitation of not understanding the Nazomi> case yet?

              How do you dare try to lecture on a topic while maintaining your choice of ignorance?

            9. How many programs does it take to fill a breadbox?

              Answer my question about this: “I take a complex machine with multiple parts made out of steel, put it in a crucible, melt it down, and form it into a solid block. Does the complex machine and the solid block of steel weigh any different?”

              When you get your answer — you’ll get a little closer to the answer of your question, which is … “it doesn’t matter.”

              The difference between a computer and a programmed computer is a state change. The difference between my cube of steel (e.g., a paperweight) and the complex machine is a state change. The change of a physical property is a state change.

              You get hung up on what is physically added to the computer — i.e., what matter is added to the computer. It doesn’t matter. The change in the computer is a state change, which is still a physical change — unless, of course, you believe in magic and want to argue otherwise.

            10. On power on or power off, if the answer depends, then we are not talking about a new machine, are we?
              I never said “the answer depends.” I asked you to answer the question both ways. Answer the question: “is there a change in a physical property of a computer after it has been programmed?” If you need to make some assumptions when answering the question, then explain what they are.

          2. Will a smoothed wave form float?

            More deep stuff from the patent teabaggers.

            Stick around folks. Maybe anon will start pretending that he knows the difference between a case holding and a summary of the argument made by the party who lost the case.

            1. LOL – keep digging Malcolm.

              You got what you asked for – and now you continue to dissemble as the ‘holding’ bit was your error, one you just are not capable of acknowledging and only able to lie to cover your other lies.

      2. Worth repeating and cross-threading:

        unless there is an art-recognized or otherwise defined relationship between the effect and some objective physical descriptor corresponding to the stated effect.

        Worth repeating for a morning chuckle of Malcolm self-FAIL.

        art-recognized.

        (hint: software really does work – it really does make a difference if you are holding a Britney Spears cd and a Microsoft Operating disc)

    3. Anonymous, I been saying the same thing but in a different way. We all know that the claimed “programmed computer” defines its programs as the series of steps taken by the program. The steps define actions, which are entirely functional to begin with. These series of steps are a effectively a process and should be construed the same way process claims are construed.

      Anon has also made the simple point that §112(f) by its terms is not mandatory. If the applicant or patent owner does not invoke the protection of that statute, the law should not impose upon him or her that protection against his will.

      Without the protection, of course the claim will be a lot broader and could read on the prior art. It could be indefinite. And because of its breath, it runs the risk of not being fully enabled. But that is a risk chosen by the patent owner.

      Where the Federal Circuit got the idea that the claim had to be construed according to §112(f) is uncertain. But it is to be observed that Westinghouse v. Boyden Power Break construed a functionally defined limitation in an apparatus claim, that also happened to be the point of novelty, to cover corresponding structure described in the specification and equivalents. They did this in order to preserve the validity of the claim. But this case, Westinghouse, implicitly has been overruled by the optional nature of §112(f). In other words, recognizing that there claims might be invalid as indefinite, etc., is a risk that the applicant or patent owner takes deliberately, and that risk should be respected. If the claim is indefinite or overbroad or invalid because it reads and the prior art, so be it.

      1. Tell me again Ned, or yet for the very first time, how does one copyright a ‘series of actions?’

        You have yet to acknowledge the true exceptions to the judicial doctrine of printed matter. Tell me, why is that?

    4. How in the world is Tarranto qualified? He is the one that just held that a machine simulating human brain’s mental steps is per se ineligible. So, the completely ignorant of science Tarranto has held that all the experimental cognitive science that simulates human brains with computers in order to understand human thinking is ineligible. Why? That decision evinces such an ignorance of science and engineering that he should resign in shame.

      I just cannot believe where we are. Obama keeps appointing scientifically illiterate judges and we get just bizarre results. And, then it sounds OK to the ignorant masses.

      So, let’s see here: an invention that simulates human thought. And that should not be eligible for a patent? That is the same as saying “if she floats she’s a witch, and if she sinks (and drowns) then she is not a witch. Throw her in.” What to you say to such ignorance?

      1. Yeah, I was talking to Taranto the other day about his new test for “abstract” subject matter. He proposes a variant of the “witch” test:” Toss the claimed subject matter into the tub of water. If it sinks, it is eligible. If not, it is abstract.

        1. Well that would be better than his current test. Now he takes two swills of bourbon and thinks about the invention. If his head feels swirly, then he proclaims it abstract. If his head feels somewhat focused, then he proclaims it patent eligible.

            1. Next challenge for you:

              Answer all of the points I have presented to you that you have run away from.

              Start with any one of them.

              Address them directly, fully and in an intellectually honest manner.

            2. Ned, conservation of information is the most important law of physics. It takes space, time, and energy to transform information.

              People are inventing machines to process the information.

              The structure in the software is equivalent to a special purpose chip–do you deny that a chip has structure? There is an equivalence to the structure between the chip and the software.

              Now. Run. Like. You. Always. Do. And pretend to be an honest man trying to puzzle this out in the next blog string.

            3. Software is equivalent to a chip.

              Put a chip in an electrical circuit and it operates on signals, does it not.

              Software is entirely abstract, not even physical. I don’t know how software does anything except exist in some form, such as source code written on printed paper.

              If this is not what you mean by software, tell us what you are talking about?

            4. It is a joke that you immediately contradict yourself: “exist in some form

              This form is NOT entirely abstract, is it?

              There MUST be a difference between two machines, with one virgin and no programming whatsoever and the other changed and configured with software.

              This is the lesson from the Grand Hall experiment. This is the legal logic from the Nazomi case that you refuse to let yourself ‘understand.’

            5. This is also the holding from Alappat that I trounced you with by showing you the definition of holding from Black’s Law Dictionary.

              And how I showed you that in Alice, it is on the record that both parties stipulated that a new machine was in fact created with the addition of the software.

              Your ‘teammate’ Perry has surrendered this point, Ned.

            6. anon, if the software is still there when you turn the computer off and operates when you turn it back on, then you and I are on the same page.

            7. As I have posted previously (and from which you have run away) you cannot use software on a machine unless you have first configured that machine to have the software.

              Power on or off is a red herring, a non sequitur, mere dust-kicking.

            8. >Software is entirely abstract, not even physical. I don’t >know how software does anything except exist in some >form, such as source code written on printed paper.

              Ned, software defines special purpose chips. The general purpose computer is doing nothing more than emulating that special purpose chip. The reason software is slower than a special purpose chip is because of the overhead in emulating the special purpose chip.

              That is the structure. Do you deny that a special purpose chip to implement the software has structure?

              Really, Ned, you are getting as bad as MM. You have turned into a liar and troll of the worst kind. Next you will start making racist comments and threatening to get me off the board.

    5. “sufficient clarity to tell these non software persons (or supporters of large software infringers) as well as Mr. Lemley that they should stop arguing about functional claiming and capability claiming of software claims.”

      “Should”? Lol, are obliged to? No, they’ve simply doubled down on what they were messing around with to begin with. Made themselves a little more clear over the last few years. Now it is simply a matter of “arguing about” whether they “should” (are obliged to) care about functional claiming and capability claiming of software claims because of this thing called a statute. Their hand has been forced such that they have to bring some of their “reasoning”, such as it is, into the spotlight for viewing. Now that what they are actually doing behind the scenes is more readily seen, the real battles may begin. Supposedly this was what they were doing all along, but you’re right, they’re making it more explicit what they’re doing (and supposedly have been doing) for the governing bodies that control them. So that those bodies can control them and put them back in line.

      That’s what your government does.

      1. Funny 6 how you have failed to note the particulars of the statute (as I have).

        Please feel free to add comments on the actual law (you know, the one that is not subjective all in your head make up whatever you want).

    6. “Either these people are mechanically oriented (i.e., they cannot visualize something abstract such as software algorithm) or they are pushing a self-serving agenda.”

      We all get exactly the people drafting such claims are trying to do, and can “visualize” something abstract such as an algorithm just fine. And at least I have no “self-serving” agenda. I would only see the law actually carried out and blatant attempts to run rough shod over the same squelched. Sooner rather than later. To the extent the congress wants to allow software patents (what a political minefield) then I say more power to them. It is after all their entitlement program. Until the word “software” shows up in 101 I don’t see how anyone can even begin to justify the historical extension of patents into that wholly different area.

      1. We all get exactly the people drafting such claims are trying to do

        Clearly not 6 – given your abysmal failure to address the ladders of abstraction in your so-called promise to do just that and your little pet theory.

        Until the word “software” shows up in 101

        LOL – It is already there: see the word “manufacture.”

        What? You want it more particularized? How about every other particularized manufacture, machine, process and composition of matter – none of those either are listed (you better get a lot of pens and paper to the people in Congress).

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