Federal Circuit: Jury Must Award Damages for Infringement

By Dennis Crouch

Apple v. Motorola (Fed. Cir. 2014)

Sitting by designation in the smart-device battle between Apple and Google’s proxy Motorola, famed 7th Circuit jurist Richard Posner offered the bold summary judgment conclusion that neither party had offered adequate proof of damages or ongoing harm to support injunctive relief. Here, each party had asserted infringement of three patents. However, without any remedy, the case became moot and Judge Posner dismissed the case with prejudice. The foundation for this decision was built when Judge Posner considered the lack of credibility of both sets of damages expert reports and excluded almost all of that testimony under Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993).

On appeal, the Federal Circuit has – as expected – has reversed. The majority decision has several sections, but portions regarding damages are of most interest. First, the court provides a detailed analysis of damages expert analysis and finds a number of faults with Judge Posner’s exclusionary rules. However, the court goes on to hold that, even if the damages expert testimony were properly excluded, the proper calculation for damages on summary judgment is not zero.

Once a court has found that a patent is infringed and enforceable then it has a duty to award damages “in no event less than a reasonable royalty.” Here, the Federal Circuit appears to place the burden of identifying that minimum royalty on the fact finder:

Because no less than a reasonable royalty is required, the fact finder must determine what royalty is supported by the record. . . . If a patentee’s evidence fails to support its specific royalty estimate, the fact finder is still required to determine what royalty is supported by the record. . . . Indeed, if the record evidence does not fully support either party’s royalty estimate, the fact finder must still determine what constitutes a reasonable royalty from the record evidence. . . . Certainly, if the patentee’s proof is weak, the court is free to award a low, perhaps nominal, royalty, as long as that royalty is supported by the record.

Thus, a fact finder may award no damages only when the record supports a zero royalty award. For example, in a case completely lacking any evidence on which to base a damages award, the record may well support a zero royalty award. Also, a record could demonstrate that, at the time of infringement, the defendant considered the patent valueless and the patentee would have accepted no payment for the defendant’s infringement. Of course, it seems unlikely that a willing licensor and willing licensee would agree to a zero royalty payment in a hypothetical negotiation, where both infringement and validity are assumed.

The court goes on to note that it has been unable to find any case in history where the record properly supported an infringement award of zero.

The majority was penned by Judge Reyna and joined by Chief Judge Rader. However, these two Judges disagreed on one particular point – whether Motorola’s FRAND commitment for its patent removes all possibility of injunctive relief for unlicensed infringement. Judge Reyna says yes, Judge Rader says no – and that Apple’s bad behavior as an unwilling licensee should open the door for injunctive relief.

The majority opinion also vacated Judge Posner’s SJ determination that Apple was not entitled to an injunction seemingly because of a change in claim construction that now potentially creates a causal nexus between infringement and a market harm. Writing in dissent from that portion of the opinion, Judge Prost disagreed.

147 thoughts on “Federal Circuit: Jury Must Award Damages for Infringement

  1. Random guy writes: “Here’s the actual state of the art: Someone who isn’t Apple invented a touchscreen. Apple took the mouse drag input (which is probably public domain) and replaced it in an obvious fashion with a finger swipe input (i.e. Apple invented nothing) then disclosed nothing about their obvious conversion, received a patent, and is now going around suing people who use completely different algorithms but want to use touchscreens. The end result is that you cannot use a touchscreen without infringing Apple’s independent, because every finger input is “based on the angle” in some fashion or other and its in the nature of the internet that things need to be scrolled. (I suppose you could just have button presses on the touchscreen, but in that case what you really have is a virtual keyboard, not a touchscreen)

    I asked for a real patent and real claims, and I’m not sure what patent you are referring to. The latest Apple patent (and reportedly the broadest) for the swipe to unlock (if you have another patent in mind, you need to specifically identify it) is US Patent No. 8286103, and claim 1 reads as follows:
    A method of unlocking a portable electronic device, the device including a touch-sensitive display, the method comprising: detecting a contact with the touch-sensitive display on an unlock image displayed at a first location on the touch-sensitive display, wherein the unlock image is a graphical, interactive user-interface object with which a user interacts in order to unlock the device; continuously moving the unlock image on the touch-sensitive display in accordance with movement of the detected contact while continuous contact with the touch-sensitive display is maintained; if moving the unlock image on the touch-sensitive display results in movement of the unlock image from the first location to an unlock region on the touch-sensitive display: unlocking the portable electronic device; and ceasing to display the unlock image; and if moving the unlock image on the touch-sensitive display does not result in movement of the unlock image from the first location to an unlock region on the touch-sensitive display: maintaining the device in a locked state; and maintaining display of the unlock image.

    In going through the claim, I see plenty of ways somebody can get around this claim. It describes an “unlock image displayed at a first location.” No “unlock image” = no infringement.

    Also, the claim recites “the unlock image is a graphical, interactive user-interface object with which a user interacts in order to unlock the device.” Include your “unlock image” but don’t require the user to interact with the unlock image itself.

    Also, the claims recites “continuously moving the unlock image on the touch-sensitive display in accordance with movement of the detected contact.” If you have your unlock image you can get around it by not moving in accordance with movement of the detected contact. Alternatively, you can move it non-continuously. Alternatively, it is moved but not in accordance with movement of the detected contact.

    BTW — I’m not particular fond of this language. I think it is sloppy claim drafting. Specifically, the claims recite “if moving the unlock image … results in movement” and “if moving the unlock image … does not result in movement.” I would argue that infringement requires that all the elements be present. I would also argue that “moving the unlock image” in both limitations refers to the same element. Thus, the moving the unlock image can either result in movement or not — but it cannot do both. Thus, the claim cannot be infringed.

    Regardless, the point of this exercise is to show how a patent that some people think claims just a result (i.e., “slide to unlock”) actually claims far more than just the result.

    Of course, if you want to point to another patent involving computer software (something issued in the last 10 years or so), I’ll perform the same exercise.

    1. Good luck Oh no – all you have is yet another thirsty horse dying of htirst piling up in front of the trough.

    2. OH No, I think you divert attention.

      The patent at issue in this discussion is 7,479,949. Claim 1 is set forth in the opinion. In material part, it requires:

      “a vertical screen scrolling heuristic for determining
      that the one or more finger contacts correspond
      to a one-dimensional vertical screen
      scrolling command rather than a two-dimensional
      screen translation command based on an angle of
      initial movement of a finger contact with respect to
      the touch screen display;

      a two-dimensional screen translation heuristic for
      determining that the one or more finger contacts
      correspond to the two-dimensional screen translation
      command rather than the one-dimensional
      vertical screen scrolling command based on the
      angle of initial movement of the finger contact with
      respect to the touch screen display; and

      a next item heuristic for determining that the one
      or more finger contacts correspond to a command
      to transition from displaying a respective item in
      a set of items to displaying a next item in the set
      of items.”

      What these claims seem to claim are swipes, where the initial angle distinguishes between command 1 and command 2. The priority date is Sept. 6, 2006.

      FIRST ACTION ALLOWANCE!

      The patent is subject to 2 ex parte and, it appears, one inter parte reexamination, still pending.

      This from the NIRC that was issued after a patent owner response:

      “Patent Owner’s Response states that the prior art of Wakai does not specifically teach

      “rather than a two-dimensional screen translation command based on an angle of initial movement of a finger contact with respect to the touch screen display;

      a two-dimensional screen translation heuristic for determining that the one or more finger contacts correspond to the two-dimensional screen translation command rather than the one-dimensional vertical screen scrolling command based on the angle of the initial movement of the finger contact with respect to the touch screen;”

      Claims were confirmed.

      The angle of initial movement appears to be the PON.

    1. The money quotes, early on during questioning of the patentee:

      JUSTICE KENNEDY: You would agree, I take it, that if, was it, “insolubly ambiguous” were the standard that the court used, that we should reverse?

      MR. HARRIS: If there were no other context and only those words alone would be used, it seems that some district courts might misinterpret those words, as the Solicitor General has mentioned, but —

      CHIEF JUSTICE ROBERTS: So it was fair, as I suggested earlier, nobody agrees with that formulation, right?

      MR. HARRIS: Yes, I guess so, Your Honor.

      And thus the Federal Circuit is slapped down again. Wave buh-bye to the awful, stillborn “insolubly ambiguous” standard for indefiniteness.

        1. Actually they were given one several times, but they didn’t seem to be following along for a long time. Granted it’s all a pretty abstract conversation and somewhat difficult for someone not familiar with the basic issue to just pick it up and be 100% on it immediately.

            1. I put my prediction, which is pretty much just what all the justices seemed to like all throughout, in the other thread.

              Though I don’t know, perhaps they’ll embrace the “two or more reasonable interpretations that differ substantially wreck the claim”. I don’t know if even I am comfy having that happen at the DC. At the PTO sure, but they seem to want the standard the same, which I applaud, but I also think the two or more reasonable interpretations is certainly approps for the PTO and inapprops for the DC.

      1. The court extensively talked about Chevron and statutory construction. A lot of times there are a number of reasonable constructions and the courts choose one.

        But is the issue that the claim can be construed? The court did ask that question. Is the amenability to construction the real issue or even relevant? One justice at one point suggested that claim construction should have little or nothing to do with the question of definiteness, perhaps suggesting that the issue should be resolved before the claim is construed.

        Regarding the claims at issue, Scalia was extremely harsh on the patent owner — suggesting that the claim at issue did not even suggest adjusting spacing — just that there be spacing. The patent owner agreed that picking any spacing would not work.

        Other justices pointed out that the specification provided no examples or methodology whereby one would know how to adjust spacing.

        One wonders just how the court can come up with a decent test in this case where the specification is as much at fault as the claim.

        Note: all parties seem to agree that the patent has to be definite on issue. Subsequent prosecution in reexaminations cannot provide a cure.

        1. One justice at one point suggested that claim construction should have little or nothing to do with the question of definiteness, perhaps suggesting that the issue should be resolved before the claim is construed.

          How does one even get to definiteness without construction?

          1. They’re saying that you should resolve whether there are two or more interpretations before formally adopting one or the other. In other words, you “get to definiteness” “during” construction. Or at least begin the inquiry.

            1. “An interpretation is a construction 6.”

              I rather agree with you anon. Though I’ve heard lately that some people like to draw a distinction between the two. I’ll let some of those people lay out how their proposed distinction works out sometime since it doesn’t interest me.

  2. RandomGuy: Here’s the actual state of the art: Someone who isn’t Apple invented a touchscreen. Apple took the mouse drag input (which is probably public domain) and replaced it in an obvious fashion with a finger swipe input (i.e. Apple invented nothing) then disclosed nothing about their obvious conversion, received a patent, and is now going around suing people who use completely different algorithms but want to use touchscreens. The end result is that you cannot use a touchscreen without infringing Apple’s independent, because every finger input is “based on the angle” in some fashion or other and its in the nature of the internet that things need to be scrolled. (I suppose you could just have button presses on the touchscreen, but in that case what you really have is a virtual keyboard, not a touchscreen)

    Yup. It’s a straightforward analysis once you cut through the semantic b.s.

    But this is how the computer-implementers love to patent their j*nk: take old stuff and give it a name. The new name = new function. The touchscreen recognizes touches — that’s why it exists. The computer accepts input from the touchscreen — that’s what computers do. Now the micromental “innovator” comes along and says “this touch means turn on” or “this touch means sleep” or “this touch means play Beethoven next time I lift up the txxlet set” and the PTO rolls over and pretends that some technological advance has been made. But there’s no progress in any useful art being promoted by that nonsense. It’s only progress in lining the pockets of patent lawyers and/or wealthy grifters who have the time and inclination to sit around and file claims on the infinite number of things that everybody already knows (and has known for many, many years) that computers can do in response to signals.

    1. One would have to compare the claimed technology to the prior art. I wonder how Apple got a patent if the PON was not even claimed.

      1. if the PON was not even claimed

        Isn’t part of your merry-go-round running that claims do not have to have a PON?

        Isn’t that your ‘standard” run away answer to my asking you what the PON was in Diehr when it is simply inconvenient for you to give the real answer as to the PON being only a computer program?

        1. anon, I think it is clear that Apple neither invented touch screens or swipes. What they patented here is, to me, quite unknown given the prior art.

          I don’t think this is so much a definiteness claiming issue. The problem is lack of invention.

  3. The oral argument in Nautilus is today. In the SCOTUS Blog, the poster noted the unprecedented number of patent cases being heard by the Supreme Court as follows:

    “The number of patent cases already granted certiorari in a few short months is unheard of. In each instance, it is likely that Supreme Court will be reigning in the Federal Court of Appeals for the Federal Circuit (CAFC), and the mess it has made out of a good portion of the patent system.

    CAFC’s expansion of what constitutes patentable subject matter under Section 101, and its weakening of requirements for definiteness under Section 112, have combined to create the swamp we are now in. A lot of the abusive litigation is a result of the fact that virtually any argument is plausible in a software or business method case. Software and business methods are difficult enough to deal with on their own. But CAFC’s hollowing out of definiteness standards have made a difficult task impossible.

    In the present case, Nautilus won at the district court. That court granted summary judgement of patent invalidity for indefiniteness. On appeal, CAFC reversed. In it’s brief to the Supreme Court, Nautilus argues “The Federal Circuit… expressly tolerates ambiguous patent claims with multiple reasonable meanings, so long as courts can construe the claim to ‘inform skilled artisans of the bounds of the claim (quoting Star Scientific…).” “In other words, the Federal Circuit has shifted the public-notice function from the patent claim to a court’s construction of the claim.” Nautilus goes on to criticize CAFC’s position that ” a ‘claim is indefinite only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’ ”

    In Alice v CLS and Nautilus v Biosig, SCOTUS could perhaps one last time, direct CAFC to drain the swamp. Should it subsequently fail to do so I am guessing some of the more extreme proposals, the one’s that question CAFC’s existence in present form, may well get looked at more seriously. We’ll be here to report on the case after it is argued in April and subsequently decided.”

    I think this clearly indicates that the rest of the country has come to realize that the Federal Circuit’s jurisprudence has gone awry, and for the reasons identified in the post. The Federal Circuit struggles to expand patents into business methods and software uncabined by technology, and refuses to find anything wrong with indefinite and otherwise functional claims. The court has, as I have noted, now been perceived as the problem and not the solution.

    Any more malfeasance, and congress will act.

    1. Scotublog also has an interesting article on the Akamai case:

      link to scotusblog.com

      It is interesting (and a little puzzling) the lack of coverage (lack? try none at all) of the Aereo case (which just held oral arguments) and the parallel to the logic put forth by Ronald Mann in his article.

      In the Aereo case, an avenue of attack laid out was that Aereo was merely gaming the copyright law with a work around. The same can be said for Limelight (and the article’s author goes one step further and indicates that he does not see a statutory tie to the tradition of single actor claim writing. In truth, 35 USC 112 does not indicate that claims must be written in single actor form.

      Given that one of the main points stressed in the AIA (by Lemley of all people) was that invention was more and more a ‘team activity’ creates the very real reading of 112(a)’s “any person” to use the permissible statutory construction of “any” as not limited to a singular actor.

      Is it time that the old-fashioned notion of single actor patent infringer fade away…? What legal basis is there to so (artificially) constrain inventions to be only those that can be performed by single actors?

      1. “What legal basis is there to so (artificially) constrain inventions”

        I think the word you’re looking for here is “statutes”.

      2. anon, I note the author share his total dumb-foundedness about BMC Resources, the case that announced doctrine, without citing any authority other than Lemley, that there was no direct infringement for multi-party cooperative actions:

        “Having offered what I would like to think is a relatively objective background summary, this is the point where I should admit that I always have regarded the Federal Circuit’s doctrine in this area as bizarre. The doctrine first arose in a 2007 case called BMC Resources Inc. v. Paymentech LLP. Essentially, that case held that a payments processing patent can’t be infringed if no single party implements the entire method. That seemed crazy to me because the very premise of payments networks is to transfer funds rapidly and seamlessly among a web of interconnected parties, through countless distinct intermediaries. I would have thought it common, and indeed desirable, for inventors to pursue technological improvements that facilitated those network activities, and I would have expected that many of those patents described joint conduct. The Federal Circuit rule, as far as I could tell, seemed to say that patents of that nature would as a practical matter never be enforceable. How much sense can that make?”

        He ends up opining that there is clear direct infringement in the case at bar, suggesting that the solution here would be to overrule BMC Resources.

        Here! Here! What I have been saying for a very long time.

    2. Nautilus argues “The Federal Circuit… expressly tolerates ambiguous patent claims with multiple reasonable meanings, so long as courts can construe the claim to ‘inform skilled artisans of the bounds of the claim (quoting Star Scientific…).” “In other words, the Federal Circuit has shifted the public-notice function from the patent claim to a court’s construction of the claim.”

      Beautifully written. The whole ScotusBlog piece is well-done. Thanks for sharing, Ned.

      <i<I think this clearly indicates that the rest of the country has come to realize that the Federal Circuit’s jurisprudence has gone awry, and for the reasons identified in the post. ….The court has, as I have noted, now been perceived as the problem and not the solution.

      It’s not the sole source of the problem, of course. The bxttom-feeding patentees in the so-called biz and computer-implemented arts and their cheerleaders are a major part of the problem as well. Their behavior is also well-documented and understood by the “rest of the country.”

      1. The esteemed Sotomayor:

        “Mm­hmm.”

        in re to “MR. HARRIS:  The word ­­ when ­­ when it
        says “whereby,” the whereby means the elements that came
        before are going to produce that result.”

        Lol.

        You can almost see the incredulous face being put on after the Mhmmm.

        “But what the whereby clause says, it ­­ it conveys a structure. ”

        Should have said “mhmm” again. lol.

        1. “Why didn’t the patent provide more specificity as to the exact spacing?

           MR. HARRIS:  Because like Eibel Process and like Mineral Separation, it wasn’t possible.  It depended on too many variables. ”

          Riiiiight, they could have just given at least an example.

        2. “If there are two constructions, each of which has survived the Markman claim construction process, and each one of them does the things that Markman says the correct construction needs to do, which is that it fully comports with the instrument as a whole and it preserves the patent’s internal coherence, then yes, we would agree in that case it’s indefinite.”

          ^That’s what anon likes to call an “admission against interests” and apparently throws the whole case lol.

    3. “In Alice v CLS and Nautilus v Biosig, SCOTUS could perhaps one last time, direct CAFC to drain the swamp. Should it subsequently fail to do so I am guessing some of the more extreme proposals, the one’s that question CAFC’s existence in present form, may well get looked at more seriously. We’ll be here to report on the case after it is argued in April and subsequently decided.”

      Mhmm. I’m glad other, more general, outlets are writing about such. And that’s what happens when courts get all uppity for decades, refuse to apply the law as written and make up their own nonsense to supplant it and implement their own policies. Not to mention dragging the PTO along with it. Gj CAFC.

    4. “The court has, as I have noted, now been perceived as the problem and not the solution.”

      I for one am glad to have been a part of pointing that out from the beginning.

    5. Once more, Ned, you’ve got it 180 degrees wrong. The primary blame for this mess properly lies at the door step of Our (“won’t obey the patents statutes”) Judicial Mount Olympus, not the Federal Circuit. And anon is correct that respect for SCOTUS is at an all time low, and correctly so.

      1. EG, and the Federal Circuit is more respected by the patent bar and is better situated to decide, in consultation with the patent bar, of course, what is the best patent policy so that the profession prospers?

        EG, your logic is impeccable.

        1. Ned,

          You ignore the Constitution repeatedly.

          You further paint the patent bar as de facto corrupt. No doubt, this is because of your long-standing agenda against Judge Rich and the 1952 Act which removed power from the courts.

          I understand why you feel that way.
          I do not understand why you think that the bias in your posts escapes critical notice and how that bias so tremendously harms your credibility.

        2. Ned,

          May be the Federal Circuit is more respected by the patent bar because it tries (not perfectly in all cases) to construe the patent statutes as they read (and as Congress asked them to do), rather than as does Our Judicial Mount Olympus which sticks their fingers in their ears and listens only to their own uninformed and nonsensical reasoning.

          1. EG, “May be the Federal Circuit is more respected by the patent bar because it tries (not perfectly in all cases) to construe the patent statutes as they read…”

            ?

            The WAY the Federal Circuit interprets the statutes is often to read them out of the law. The court was reversed today on 285. Tomorrow it will be reversed on 112(b). The day after it will be reversed on 271(a) and (b). And, just how many times in recent history has it been reversed on 101?

            The Federal Circuit seems to go out of its way to ignore the statutes or interpret them in ways that are untenable.

            Why the court does this is uncertain, but clearly they are not faithfully following the statutes, but are doing their own thing.

            1. Once again, Ned – you view the world through the prism of your own agendas.

              Your lack of ability to separate those agendas from the law and view the law in any type of objective measure is your greatest obstacle.

              And, just how many times in recent history has it been reversed on 101?

              LOL – you tell me. Or better yet, just ask Alice.

              (you further assume that the Court itself is ‘faithfully’ following the statutes when such is NOT on the record)

            2. Considering the “source” of this reversal, what you say doesn’t persuade me one whit, Ned, that the Federal Circuit doesn’t read the patent statutes, just interprets them differently. Now tell me where does 35 USC 103 say that “common sense” is part of the criteria for obviousness (i.e., as in KSR International)? Or where do those so-called “exceptions” to patent-eligible subject matter appear in 35 USC 101? Now tell me again who is “making up the law”?

  4. Worth posting as its own sub thread number, Malcolm has (once again) been caught in one of his deceptions.

    Malcolm at post 3.1.1.1 feigns ignorance over his own hypocrisy and too-clever-by-half states “Nobody is arguing that using functional language in claims is fatal per se. But you keep pretending that’s the case. And we all know why.

    Malcolm,

    Point blank, where in your “objective physical terms” does any sense of functional language lay?

    See your own post 15.2.2.2 at link to patentlyo.com

    Given that you yourself argued that “objective physical terms” is THE answer (and seeing as you have given no other answer, it appears to be your only answer and thus implicitly, at least, you are arguing that using functional language in claims (outside of 112(f) – to eliminate your weasel room) is fatal per se.

    Or are you pretending that it is ONLY in 112(f) that functional language in claims is allowed?

    If that is so, then please provide EITHER a holding or a citation to back up that proposition (and note that I have already provided the Orthokinetics case for the opposite proposition).

    Eagerly awaiting a substantive and intellectually honest answer devoid of any of the typical short script banality that seems to have come to be synonymous with “MM”….

    You will not answer directly and honestly and yes, we DO all know why.

    1. And interestingly enough, Random Examiner has just joined the “nobody” group by posting that all software-related functional claims be mandated to be examined under 112(f).

      LOL – nobody indeed.

      1. Random Examiner has just joined the “nobody” group by posting that all software-related functional claims be mandated to be examined under 112(f).

        Learn to read English, TB. Or learn to stop lying. Your choice.

        I wrote that “nobody is arguing that using functional language in claims is fatal per se.” Random Examiner is not arguing that “functional language in claims is fatal per se.”

        How can functional language in claims be fatal per se when 112(f) plainly allows functional language to be used (with certain important caveats)?

        This isn’t a difficult distinction to make. But you keep failing to make it and attacking strawmen. You look like a complete idi0t when you do that. Maybe you should consider some other tactic.

        1. Lovely AOOTWMD – you need to read what I actually wrote Malcolm. I negated your weasel efforts by including the notion of 112(f) and your (apparent) thinking that such is the only legal way (else would be fatal per se).

          Your problem is the same as Random Examiners – you have the law wrong, and functional claiming is permissible outside of 112(f).

          No strawman here Malcolm – I foresaw and incorporated your ‘out’ and defeated that out at the same time.

    2. Point blank, where in your “objective physical terms” does any sense of functional language lay?

      Point blank: learn to write in English and you’ll have better luck getting people to answer your questions.

      Given that you yourself argued that “objective physical terms” is THE answer … is fatal per se.

      Again: learn to write in English. This is gibberish.

      are you pretending that it is ONLY in 112(f) that functional language in claims is allowed?

      Functional language that isn’t tied to a readily ascertainable objective physical structure is certainly “allowed” in composition/article/manufacture claims. But the proper application of the law to such claims will result in those claims being invalidated to the extent that the functional language is/was relied on for patentability. That’s because you can’t protect new “functionality” with patent claims. You can certainly protect new compositions/articles/manufactures with new functionalities, but the new structures responsible for those new functionalities must be disclosed in the specification or (if you choose not to rely on 112(f)) they must be readily ascertainable by the skilled artisan upon recitation of the “functional” language.

      please provide EITHER a holding or a citation

      I’ll do better than that. I’ll provide you with a statute called 35 USC 101 that does not list “new functionality” as eligible subject matter. The rest of my argument is just the application of basic logic. As in Prometheus v. Mayo where the recitation of old conventional subject matter is insufficient to rescue an abstraction (e.g., a “new thought”) from ineligibility, the recitation of an old machine component and nothing more is insufficient to rescue a new “functionality” from ineligibility. If you want more cases, just consult the reams of case law out there applicants attempted to claim new functionality without any tie to new ascertainable physical structure and were denied. Or see Abbott v. Sandoz where similar issues arose from the attempt to claim new compositions by their method of manufacture.

      Proponents of computer-implemented jxnk such as yourself seek to warp the fundamentals of patent law around your jxnk. The rest of us (the overwhelming majority of people) would like to see those fundamentals respected. The time for coddling of the softie wofties is long past. That’s why your house of cards is continually being shaken from the foundation, and eventually it will collapse simply because the patent system can not bear the weight of all the ad hoc b.s. loaded onto it.

      If functional claiming without any tie to ascertainable objective structure was a necessary or important part of patent law, as you appear to believe, there would be zero need for 112(f). People would just claim the desired functions of their imaginary machines and let other people figure out how to make them (after taking a license of course). That’s never been the way our patent system has worked until very very recently, and it only started working that way because some patent fluffing judges (Rich and Rader) made up some ridiculous b.s. to please their friends and stroke their own gigantic egos.

      1. proper application of the law to such claims will result in those claims being invalidated

        LOL – in other words, per se fatal.

        You are such the shmuck.

        That’s because you can’t protect new “functionality” with patent claims

        LOL – why the quotes? What kind of English writing is that?

        I’ll do better than that. I’ll provide you with a statute called 35 USC 101 that does not list “new functionality” as eligible subject matter

        Inapposite and unconnected to the legal point at hand. Um, you do realize that the “new functionality” is not being claimed in a vacuum, right?

        computer-implemented jxnk such as yourself seek to warp the fundamentals

        LOL – you mean warping like a machine claimed is no longer “a machine” and that manufactures claimed are no longer “manufactures?”

        Warping like that? My your AOOTWMD is enormous. (that’s not a good thing)

        Again the examples I gave were not even in the software arts – why is your predilection so focused? Your comment of ‘coddling” is simply not germane to the legal point under discussion.

        Wake up.

        Do you really think that Rich and Rader are the creators of the exceptions to the judicial doctrine of printed matter? Or are you simply in one of your crazed snits?

        1. Do you really think that Rich and Rader are the creators of the exceptions to the judicial doctrine of printed matter?

          I was referring to the horseshirt they spewed in In re Lowry.

  5. ROTFLMAO

    Fed Cir: “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.

    So much for the usual patent teabagger b.s. re “software is structure.”

    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.”

    Indeed. So let’s watch the Federal Circuit reach deep inside their own butth0les and pull out the magical rabbit to coddle their beloved softie woftie babychildren:

    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.

    Why is the term “structure” in quotes? Oh right: because there is no structure. This is just One Big Fxcking Lie. At best, software has “structure” like an argument or a sentence has “structure.” That’s not the structure contemplated by the patent statutes. On the contrary, the “structure” being referred to by the Federal Circuit is a quintessential example of an abstraction.

    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.

    So what?

    After this, the majority simply drops the quotation marks from “structure” and pretends that they are referring to an actual physical structure. What a disengenuous pack of clowns. How low will they sink? Check this out:

    The specification also discusses the structure behind translating “content within a frame rather than translating the entire page that includes the frame.” Id. at col. 123, ll. 6-8. For performing this function, the specification describes an “M-finger translation gesture 4214,” where M is a number different from the number of fingers used to translate the entire page.

    So now a “gesture” is a structure? Lies upon lies. How do these people sleep at night?

    1. MM says: “Why is the term “structure” in quotes?”

      Because some compare a mechanical thing to an electronic thing. The concept of “structure” came from mechanical engineering and patents such as those from Halliburton and GE. In the mechanical arts the requirement for structure makes abundant sense because, to give an example, one may have invented a blanket but cannot claim the “function” of the blanket and claim “a device to keep me warm”, which is excessively broad and would encompass an electric heater, which the inventor could not have under any imaginable theory invented. The disallowed claims in Halliburton and GE were of this type.

      So much for mechanical engineers. They are comfortable with moving parts, and therefore anywhere they do not see moving they do not call a “machine.” Unfortunately for them, when electronics/computer science came about the terminology remained the same–we call a computer a “machine” and we call an arrangement of chips “architecture,” and organization on data “structure”–which completely throws off the mechanical engineer. How in the world can you call an algorithm a “structure,” he argues. It is, to the extent the word means arrangement of steps of how you can program a processor to do some things, and after such programming, the processor becomes, magically, a “new machine” doing new things.

      The argument against “functional” claiming does not apply to computer science and software because, all that you do in computers is “functions.” A programmer of software only programs “functions” which are called variously as “modules” in the PASCAL language, “methods” in C++/Java languages, and simply “functions” in FORTRAN (you are likely to remember this Mr. MM) and C programming language. If all that is done and invented is the “function” of how a processor is programmed, arguing that “functional” claiming is bad requires some serious examination of knowledge or motives. I do not think MM has bad motive; he appears to be too much engrossed in mechanical patents and is therefore uncomfortable with software patents.

      Lemley’s opposition to “functional claiming”, however, is predicated in bad faith. He is a troll for the corporate infringers. He deliberately applies inapplicable concepts from mechanical engineering to computer science to help destroy software patents altogether because that is what his clients would like to see.

      Someone predicted in this blog that Alice/CLS case would result in significant narrowing of software patents. I cannot disagree more. The case will be as significant as State Street Bank in expanding software patents. The Supreme Court will uphold that software is patentable, full stop.

      1. This is funny stuff:

        So much for mechanical engineers. They are comfortable with moving parts, and therefore anywhere they do not see moving they do not call a “machine.” Unfortunately for them, when electronics/computer science came about the terminology remained the same–we call a computer a “machine”

        Uh … last time I checked, computers are machines. Nobody is arguing that computers aren’t machines. People are arguing that programmable computers don’t become new machines for patent law purposes merely because they are programmed. But nobody is arguing that computers aren’t machines.

        we call an arrangement of chips “architecture,”

        That’s nice. Nobody has a problem with that.

        [we call] organization of data “structure”–which completely throws off the mechanical engineer.

        No, it doesn’t “throw off” anybody. In fact, everybody understands that the “structure” of data is an abstraction, just like the “structure” of an argument or “sentence structure.” Periods and commas have functions. But they don’t have any physical structure, at least not as far as patent law is concerned. The Federal Circuit recently acknowleged as much when it recognized that software has no structure.

        How in the world can you call an algorithm a “structure,” he argues. It is, to the extent the word means arrangement of steps

        Again, you can play all kinds of semantic games once you head down this road. And those games present problems for patent law because once you permit fundamental concepts such as structures and methods to become blurred the the system breaks down into gibberish and gobbledygook and becomes a playground for lawyers to protect all kinds of plainly ineligible subject matter with patent claims, e.g., ineligible subject matter like information and “new functionality”.

        The argument against “functional” claiming does not apply to computer science and software because, all that you do in computers is “functions.”

        Or the real problem is that the patent system is the wrong way to promote progress in information processing functionality. Note that I’m not suggesting that new computing machines or components thereof, properly described by the recitation of new structure, can be be patented and protected just as any other new machine is patented and protected.

        If all that is done and invented is the “function” of how a processor is programmed, arguing that “functional” claiming is bad requires some serious examination of knowledge or motives.

        Huh?

        Lemley’s opposition to “functional claiming”, however, is predicated in bad faith. He is a troll for the corporate infringers.

        LOL! Sorry, but the only response to this kind of nonsense is to laugh. You guys should really start bringing this silliness up in your legal briefs and in oral arguments and see how wonderfully it works in front of judges who are trained to smell fear and desperation a mile away.

        The case will be as significant as State Street Bank in expanding software patents.

        You are certainly wrong about that, but you are entitled to your opinion. Too bad you don’t have the guts to post with a name that we’ll recognize later when you show up to complain about the case.

        1. Nobody is arguing that computers aren’t machines. People are arguing that programmable computers don’t become new machines for patent law purposes merely because they are programmed.

          Is that why you run away, er um “argue” and never seem to be able to explain just how is it that ‘oldbox’ can – if NOT changed – somehow ‘magically’ be able to do something that it could not do before?

          My, that is very Morse of you.

          1. I have two old, conventional meat grinders. I put my “innovative” “structure” of combined chunks of lamb, emu, and ostrich meat, which we can call, for convenience, “Lame-o”. I leave the other meat grinder empty.

            I turn the cranks on both meat grinders. The loaded meat grinder obviously demonstrates the new capability of creating finely ground Lame-O, an unquestionable improvement over the other machine which has not been loaded with anything. Therefore, I have invented a new machine, a ground Lame-O production device.

            Is it really that difficult to see how ridiculous this claim is, and how it relates to a comparison between a load/non-loaded pair of computers?

            — Dobu

            Opinions are not [necessarily] facts.

            1. Dobu – you need to brush up on a little thing called law to see why your hypothetical is an instant FAIL.

              But then again, you are apt to call anything an opinion – even what is or is not law. In that regards you share the vapidness that is 6 and his view of law as something subjective totally in the mind and make up anything and it goes.

              When you want to return to this reality and discuss law and facts, let me know.

            2. Anon,

              When the CAFC and USSC are unable to agree on what the “facts” and the “law” are, I guess a computer expert trying to understand how the software landmine factory that is the PTO ended up in its current, horrifically broken situation, and what is being proposed or done to fix it, will forever be reaching beyond his grasp.

              How fortunate we (me and your compadre you keep mentioning to me, 6) are to have your comments to let us know the vapidness of our musings.

        2. Or the real problem is that the patent system is the wrong way to promote progress in information processing functionality

          LOL – Because Malcolm the RQ/HD has so decreed !

        3. Again, you can play all kinds of semantic games

          Translation: Waaaahhh Malcolm’s semantic games are no longer the best games in town.

      2. “So much for mechanical engineers.”

        Ahh, so it’s all a big ol conspiracy against people in certain arts then eh? Yeah I wonder how that’s going to work out now that it has been made a little more clear.

  6. You know the way to think about this —if we want to understand it and not get a political agenda through– is to take real world examples.

    Here we have one. Prost is saying to limit heuristic to those disclosed embodiments. The patent drafter must have known that there were 1000’s of other ways to perform the heuristic known in the art. The patent drafter under Prost proposed rule would have to include all of those 1000’s of ways. There are whole conferences in academia on this type of heuristic algorithm.

    Is that the result we want? That you have to disclose all known ways or things for each element of a claim or you are limited to only what you disclose? That is an absurd result.

    The novelty lies in the combination of steps.

    1. I just cannot believe that intelligent people could propose that Prost’s rule is anyway reasonable and in anyway a deliberate attempt to burn the patent system down.

      And, it is against fundamental principles of patent law. The specification is supposed to be what is new. Scope of enablement is supposed to be the rule. LizardTech.

      Gee, now let’s argue about creationism.

      1. “I just cannot believe that intelligent people could propose that Prost’s rule is anyway reasonable and in anyway a deliberate attempt to burn the patent system down.”

        Difficulty of description of structure is not justification for using functional language – Wabash.

        Lizardtech does not say scope of enablement is the rule. In fact, Lizardtech invalidated a claim based upon a lack of description without an enablement finding. Seriously, you need to read it again cause that’s a horrible takeaway from that case.

        That being said, Wabash also invalidated a claim and that was when they expressly assumed that enablement was met.

    2. The (un)intended consequences of decisions like KSR and the well-known fact that an applicant need not include every detail of what a person having ordinary skill in the art to which the invention pertains may know…

      Everything from how software is equivalent to firmware and is equivalent to hardware to the fact that a computer is designed to be changed (and that future state of change is perfectly capable of being an invention in its own right) must be accepted as baseline.

      When you add a machine component, a manufacture known as software, to ‘oldbox,’ you must accept that ‘oldbox’ has changed. The fact that ‘oldbox’ was built to be changed does not make those changes inherent in ‘oldbox.’

      This is why the analogy of my big box of electrons, protons and neutrons in the Star Trek replicator – using the attempted logic here – would destroy EVERY future invention in the entire catogories of machines and manufactures.

      link to texaslynn.files.wordpress.com

      To blindly accept that ‘oldbox’ magically has all of these future inventions inherently present is to embrace the fallacy of the House/Morse contradiction. Morse says that you cannot have “all of that” when “that” is not there and House wants to say that “all of that” is somehow magically already there.

      This fallacy is easily seen as not a single anti-software proponent has been able to explain this contradiction away. Not Malcolm, Not Random Examiner, Not Owen, Not Ned, Not 6, Not any of them. At “best,” you have the dissembling that “use” includes the vary acts of later inventors, seeking to deny those inventors their improvements. Of course, the immediate realization of how inane this proposition is does not stop the proposition from being advanced time and again (without taking into account the counterpoints raised to defeat the proposition in the first instance).

      1. “Everything from how software is equivalent to firmware and is equivalent to hardware to the fact that a computer is designed to be changed (and that future state of change is perfectly capable of being an invention in its own right) must be accepted as baseline.”

        Is it your argument that one of ordinary skill in computer programming is enabled to create a hardware-only version of their software?

    3. There are whole conferences in academia on this type of heuristic algorithm.

      So what?

      you are limited to only what you disclose? That is an absurd result.

      There’s nothing absurd about that result. It happens all the time in the grown-up arts.

      It’s 2014. Digital computers are old. We all know that they can process any kind of information they are programmed to process. When are the softie wofties going to stop crying and grow up?

    4. “The patent drafter must have known that there were 1000′s of other ways to perform the heuristic known in the art. The patent drafter under Prost proposed rule would have to include all of those 1000′s of ways. There are whole conferences in academia on this type of heuristic algorithm.”

      When you say “the patent drafter” surely you mean “the inventor” and since you don’t know this inventor, what you must mean “one of ordinary skill in the art” right?

      That’s really your statement, one of ordinary skill in the art could do it in 1000s of ways without being told how.

      So what did the “inventor” of this patent add to the collective knowledge? That computers can do functions? That you can write rules (in general) which turn finger inputs into well-known command calls.

      What was added?

  7. Rader’s argument on FRAND is wrong.

    “Motorola committed to offer a FRAND license, which begs the question: What is a “fair” and “reasonable” royalty? If Motorola was offering a fair and reasonable royalty, then Apple was likely “refus[ing] a FRAND royalty or unreasonably delay[ing] negotiations.” See Majority Op. 72. In sum, the district court could not duck the question that it did not address; was Motorola’s FRAND offer actually FRAND? ”

    It doesn’t matter. If Motorola is being unreasonable it can be cured by a monetary change – a could would determine the reasonable value. If Apple is refusing a royalty or delaying the royalty, calculated damages would force the royalty and could be increased for the delay. You cure unwillingness with a court decree. You cure reasonableness with a neutral trier of fact. Once you give up your right to exclude (which is what FRAND does) there’s simply nothing that can’t be settled by money.

    1. is wrong… It doesn’t matter

      LOL – the irony.

      You do not get the real world, do you Random Examiner?

      1. Once a patent is offered under FRAND the only injury is monetary. The basis for an injunction is that the exclusionary rights are unique and cannot be compensated for, but offering under FRAND is a statement that the exclusionary rights SHALL be given up for the proper amount of money. Thus the only question for a court is to fix the amount of money, which can occur regardless of a disagreement on how much it should be or whether the infringer believes it is necessary to license at all – the court can compel payment of the proper amount.

        1. Random, Bull.

          FRAND requires a FRAND royalty be offered. If it is, there is no basis for an infringer to not pay. If he or she does not pay, but instead refuses to negotiate in good faith, I daresay they have forfeited their right to a FRAND royalty — or to any license whatsoever.

  8. “In [previous] cases, the claims recited the term “means,” thereby expressly invoking means-plus-function claiming. In addition, the parties in these cases did not dispute on appeal that these claims were drafted in means-plus-function format. Hence, where a claim is not drafted in means-plus-function format, the reasoning in the Aristocrat line of cases does not automatically apply, and an algorithm is therefore not necessarily required.”

    The majority’s interpretation of the rule is that one can validly get MORE coverage with LESS description, which is absurd on its face.

    “A limitation has sufficient structure when it recites a claim term with a structural definition that is either provided in the specification or generally known in the art…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”

    Would that they actually applied the words “it is how the function is achieved.” Just to show you how off base their application is, here is how they find sufficient structure for the heuristic:

    “In all cases, the claimed input is a finger contact. The specification explains that the finger contacts may be taps, swipes, double taps, or finger rolling, and may
    involve one or two fingers contacting the screen at different angles.”

    Now imagine if you could get a patent on a car by saying “In all cases, the input in a key into the ignition, followed by pressing a pedal which results in the car moving forward.”

    But why stop there, since I’ve seen Star Trek: “In all cases, the input for the teleporter involves setting rematerialization coordinates and moving three bars vertically by finger contact.”

    Maybe, and I’m just spitballing here, maybe the law requires that you explain the black box part of those statements: By what means does the teleporter move the person, how does the engine drive the car, and by what means is the input translated into an output.

    Therein lies the problem of course, Apple simultaneously wants to claim that they invented the “heuristics” while giving no description of how one gets from the input to the output. Either the way is not known, in which case you have at least a nondescribed claim, or it is known and that’s not novel.

    1. RG: Just to show you how off base their application is, here is how they find sufficient structure for the heuristic: “In all cases, the claimed input is a finger contact. The specification explains that the finger contacts may be taps, swipes, double taps, or finger rolling, and may involve one or two fingers contacting the screen at different angles.”

      It is truly beyond nutty. In the weird coddled world of the softie wofties, black is white, up is down, compositions are methods, and gestures are “structure” (in quotes when the Federal Circuit feels like telling the truth; without quotes when the Federal Circuit is comfortable with their Big Lie).

      1. In the weird coddled world of “…

        …effective for

        …dimensioned to

        Yes, but let’s ONLY focus on the software arts and pretend that claims having parts with functional descriptions are not a part of current law, because, you know, “I’m aware of nobody who is arguing that functional language per se is fatal to a claim. I’ve certainly never argued that. I have seen people pretend that their opponents are trying to make that argument. That’s a convenient strawman to beat up on if you’ve got nothing else.

        LOL the hypocrisy is beyond nutty.

        link to theemptiness.info

        1. the hypocrisy is beyond nutty.

          Where’s this “hypocricy” you’re talking about, TB?

          Nobody is arguing that using functional language in claims is fatal per se. But you keep pretending that’s the case. And we all know why.

          1. What the H do you mean by this “nobody is arguing… fatal per se” and then not adding anything else to your QQing that the claims are merely being accepted in one particular art field to “coddle grifters?”

            You do realize that you have yet advanced any type of distinguishing logic to back up your vapid QQing, right?

            All – and I do mean all – that we have seen from you Malcolm is your typical short list of AOOTWMD, ad homenim name calling and vapid rhetorical tools off of your short script.

            You have addressed no points of law or fact. None.

            You have no law to pound.
            You have no facts to pound.

            All you do is pound the table.

          2. Malcolm,

            Point blank, where in your “objective physical terms” does any sense of functional language lay?

            See your own post 15.2.2.2 at link to patentlyo.com

            Given that you yourself argued that “objective physical terms” is THE answer (and seeing as you have given no other answer, it appears to be your only answer and thus implicitly, at least, you are arguing that using functional language in claims (outside of 112(f) – to eliminate your weasel room) is fatal per se.

            Or are you pretending that it is ONLY in 112(f) that functional language in claims is allowed? If that is so, then please provide EITHER a holding or a citation to back up that proposition (and note that I have already provided the Orthokinetics case for the opposite proposition).

            Eagerly awaiting a substantive and intellectually honest answer devoid of any of the typical short script banality that seems to have come to be synonymous with “MM”….

    2. The majority’s interpretation of the rule is that one can validly get MORE coverage with LESS description, which is absurd on its face.

      It is not absurd of you understand law.

      You may not like it, but that’s a different story.

    3. RandomGuy, without knowing what the novelty is, it is hard to judge whether the claim term involving heuristics should have been limited to the corresponding steps described the specification. I only suggest that without knowing what the novelty is, that the current claim construction should operate under the assumption that every functional definition is of old and well-known structure. If it turns out that the only novelty in the claim is in Functionally defined element and nowhere else, then the claim might be held invalid as being functional at the point of novelty.

      Regarding heuristic, if it had a well-known definition, I assume you would have no objection to the result. Your main problem is that if the term is somewhat defined in the specification so add that it’s “structure” is well-known, that it be construed as one would construe any other claim element in the specification – basically consistent with what one of ordinary skill in the art would understand having read the specification. That does not necessarily include every structure that can accomplish a particular function. That is not how claims are construed in court.

      Finally, as we all know, computer programs to find a series of steps to be conducted by the computer. They really are method claims, as a describe actions, not structure.

      If there is any vice in such claims, it lies in section 101, in my humble opinion. One should not be able to claim the operation of an old device as an improved device. This is a 101 issue.

      1. If there is any vice in such claims, it lies in section 101, in my humble opinion

        (sigh) – PON at 101 is a canard Ned.

        .

        You are again making things up – show me the LAW that supports your PON.

        As I showed you, Frederico does not support this contention, and it is only your contortions of Frederico that stretch to some de facto PON rule.

        Your view is just not supported by anything other than your crusade.

  9. Ned: functional language is quite proper… when the “structure” being claimed really is a method.

    A house of cards built upon a mountain of horse manure. Since when do methods have structure, as structure is understood in patent law? Where/how did that happen exactly?

    If functional claiming in a combination claim were not allowed, one would have thought the requirement of the statute would have been made mandatory.

    You refer to the “requirement of the statute.” What “requirement” do you have in mind and why do you believe the “requirement” is not mandatory? Put another way: if the “requirement” is not “mandatory”, why do you call it a “requirement”? Seems to me, Ned, that a better term would be “option” in that instance.

    But please let everyone know what “requirement” of the statute you had in mind.

    Here’s 112(f):

    An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, [<---that's the non-controversial part, where the term "recital" surely refers to "recital" in a claim]

    and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

    I don’t see anything “optional” there. If you use functional language in a composition claim, you better have some corresponding structure in your specification or you can’t rely on 112(f) and your claim is indefinite. If “corresponding structure” wasn’t required, then what in heck is the point of the second paragraph? Why would anyone bother to disclose corresponding structure?

      1. Ned: “May.”

        When answering a question, Ned, it helps if you copy the question to which you are responding. You referred in your earlier comment to a “requirement of the statute.” What requirement were you referring to? Please answer this question so I can understand your logic.

        I do see the term “may” in the first half of 112(f). It refers to the fact that patentees may or may not use functional language in their claims. As I already indicated, this is not a controversial proposition.

        I’m aware of nobody who is arguing that functional language per se is fatal to a claim. I’ve certainly never argued that. I have seen people pretend that their opponents are trying to make that argument. That’s a convenient strawman to beat up on if you’ve got nothing else.

        I’d like to ask you another direct question based on something you wrote. You said ” functional language is quite proper… when the “structure” being claimed really is a method”. So … how does one determine, when construing a composition, apparatus or article claim, that the “structure” (in quotes, because it’s not a structure at all) is “really a method”?

        I’m not counting so-called “product-by-process claims”, of course, since they are method claims for all practical purposes. For example, I can freely make a product identical to a product produced by a product-by-process claim as long as I don’t follow the recited method. The reason why was discussed at length in a very important en banc Federal Circuit decision from 2007 called Abbott v. Sandoz. Here’s a sample passage from that case:

        This court’s rule regarding the proper treatment of product-by-process claims in infringement litigation carries its own simple logic. Assume a hypothetical chemical compound defined by process terms. The inventor declines to state any structures or characteristics of this compound. The inventor of this compound obtains a product-by-
        process claim: “Compound X, obtained by process Y.” Enforcing this claim without reference to its defining terms would mean that an alleged infringer who produces compound X by process Z is still liable for infringement. … If the basis of infringement is not the similarity of process, it can only be similarity of structure or characteristics, which the inventor has not disclosed. Why also would the courts deny others the right to freely practice process Z that may produce a better product in a better way?

        Does that last question sound somewhat familiar?

        1. I’m aware of nobody who is arguing that functional language per se is fatal to a claim. I’ve certainly never argued that. I have seen people pretend that their opponents are trying to make that argument.

          LOL

          Is this part of your “objective physical terms” demand?

          You seem to have disappeared from that thread (a polite way of saying that you ran away again)

          .

          I’m not counting so-called

          Of course not, because a ready example that defeats the thrust of your position is just tooo inconvenient.

          /eye roll

        2. I do see the term “may” in the first half of 112(f). It refers to the fact that patentees may or may not use functional language in their claims. As I already indicated, this is not a controversial proposition.

          (sigh)

          Malcolm again spinning an obvious falsehood. Functional language in claims exists outside of 112(f), therefore how he spins the meaning of ‘may’ cannot be correct.

          If Malcolm’s version were correct, the directive would have been mandatory, not permissive, and would have been written in such a way as to indicate that only means plus/step plus language could have been used for functional language.

          That is simply not reality.

            1. Asked and answered – several times now.

              LOL! Please copy and paste your direct answer to my question.

              I can barely even follow your ridiculous syntax. What “directive” are you referring to?

              how he spins the meaning of ‘may’ cannot be correct

              Spinning the meaning of ‘may’? What? What on earth are you talking about, dipshirt?

        3. MM: I do see the term “may” in the first half of 112(f). It refers to the fact that patentees may or may not use functional language in their claims. As I already indicated, this is not a controversial proposition.

          Actually, Malcolm, it does not say that at all. First, it limits its applicability to combination claims which were the kind of claims that appeared in a Halliburton case. Second, it requires that the claim use “means for” or “step for” to invoke its applicability. Third, it permits the use of functional language without the recital of structure, materials or acts in support thereof. It, however, does not explicitly excludes applicability if the claim recites structure, materials or acts in support thereof. Thus the Rodime v. Seagate appears to be wrongly decided, and contrary to the very words of the statute.

          Frederico made clear that the new statute did not extend to single means claims. The statute cannot be employed claim in single element claims to compositions, methods, or manufactures, nor can it be used where the sole novelty is in the one element and the other elements are nominal.

          But the statute makes its use optional. Thus unless the protection of the statute is clearly and unmistakably invoked, it should not be construed to be under the statute. A bright line rule on this score is essential, just as the Federal Circuit recognized on multiple occasions.

          Finally, the statute contains no authorization that it supersedes requirements of §112(b). Thus, one should not be able to distinguish the prior art by reference to the function. This will confine its use to old elements or where the novelty is in a combination.

          1. MM: I do see the term “may” in the first half of 112(f). It refers to the fact that patentees may or may not use functional language in their claims. As I already indicated, this is not a controversial proposition.

            Actually, Malcolm, it does not say that at all.

            Actually, Ned, you’re wrong. It’s right there in black and white:

            An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof,

            You can use functional language in a claim, or you can choose not to use functional language. But if you choose to use it, then you must disclose some structure. Surely you aren’t going to argue that the statute only applies when the exact language “means” or “step” is used, are you? That would be very silly indeed. Almost as silly as the idea that if your claim uses the word “process” then the claim is immediately eligible for patenting. Nobody believes that. The Supreme Court certainly doesn’t. And they won’t believe you, either, when you hand them this b.s. about 112(f).

            Frederico made clear that the new statute did not extend to single means claims. The statute cannot be employed claim in single element claims to compositions, methods, or manufactures, nor can it be used where the sole novelty is in the one element and the other elements are nominal.

            Right. That just means that you can’t even “pass go” with a single means claim, regardless of whether you disclose structure or not. You don’t get past the first paragraph.

            one should not be able to distinguish the prior art by reference to the function

            No kidding.

            1. (sigh) – the discussion on functional language concerns more than just 112(f) Malcolm. In fact in many case (at the applicant’s discretion) 112(f) is not even invoked and functional language is still permissible under the law.

              This is abundantly clear – and only someone purposefully trying NOT to understand would be kicking up as much dust on this as you are.

        4. “I’d like to ask you another direct question based on something you wrote. You said ” functional language is quite proper… when the “structure” being claimed really is a method”. So … how does one determine, when construing a composition, apparatus or article claim, that the “structure” (in quotes, because it’s not a structure at all) is “really a method”? ”

          Well, MM, programmed computer claims are generally methods.

          Second, system claims are generally methods as well as it is the interaction of machines that is the novelty.

          The Federal Circuit has all but recognized that programmed computer claims are methods — they analyze them as such for 101 purposes. At some point in time, the PTO has to take a stand on programmed computer and B-claims. These claims are claiming methods and not new machines or new articles of manufacture. The claims violate 101.

          This is not to say that the claims drafted as method are non statutory. That is a separate consideration.

    1. “Since when do methods have structure, as structure is understood in patent law? Where/how did that happen exactly?”

      I think it just happened explicitly in this case this week. I’m just wondering how long it will last now that the feds have been explicit.

  10. The damages portion was interesting but not nearly as important as the 2-1 MPF discussion. The gambit of addressing the perception of overbroad software patents by narrowing all software claims to the specific algorithm disclosed in the specification is not going away. Too many people are plumping for it.

    It will not be resolved until the Supreme Court takes a case and maybe not even then, given the Court’s recent disgraceful history of obfuscating patent law instead of clarifying it, Festo excepted.

    1. Tour, just a point made by anon should be mentioned here — that the use of MPF is entirely optional according to the statute itself. Unless the applicant clearly invokes the statute, he should not enjoy its benefits — it was enacted not as a burden, but as a benefit. If functional claiming in a combination claim were not allowed, one would have thought the requirement of the statute would have been made mandatory. But the Federal Circuit is treating it as mandatory when the claim element is functional because the only time 112(f) is not being invoked is when the claim element under consideration has “sufficiently definite structure.”

      Obviously, there is something radically wrong with the Federal Circuit’s jurisprudence here, especially as they are ignoring the very words of the statute and are not giving them effect.

      As I have often noted, in most cases in combination claims, functional language is quite proper, particularly when claiming old elements, or when the invention is in the combination, or when the “structure” being claimed really is a method.

      The only time functional claiming is not allowed is when the claim is essentially a single means claim as noted by Frederico in his commentaries. The sole novelty has to be in the one element, and the other elements in the claim must be “nominal.” At that point the claim is arguably invalid as it is not saved by 112(f) that requires a true combination.

      1. I trace the first suggestion that the use of language other than “means for” could invoke §112(f) to Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996).

        link to scholar.google.com.,+232+F.3d+887,+880+(Fed.+Cir.+2000&hl=en&as_sdt=2006

        “While the language in the Interspiro case was in classic “means-plus-function” format, the language in Dr. Greenberg’s patent was not. Section 112(6) provides that an element in a claim for a combination “may be expressed” as a means for performing a function, which indicates that the patentee is afforded the option of using the means-plus-function format. The question then is whether, in the selection of claim language, the patentee must be taken to have exercised that option.

        In the Interspiro case, the patentee’s choice of “means-plus-function” language made it clear that the patentee had elected to invoke section 112(6). In this case, by contrast, the element in question did not use conventional “means-plus-function” language, no other element of the claim was in means-plus-function form, and nothing cited to us from the prosecution history or elsewhere suggests that the patentee intended to claim in that fashion. There is therefore no reason to read the claim language in this case as reciting a means for performing a function, within the meaning of section 112(6).”

        The is some discussion of a PTO position that “so that” invokes 112(f), but the court concludes, “Nonetheless, the use of the term “means” has come to be so closely associated with “means-plus-function” claiming that it is fair to say that the use of the term “means” (particularly as used in the phrase “means for”) generally invokes section 112(6) and that the use of a different formulation generally does not. In this case, because we have found no reason to depart from that general principle, we conclude that the phrase “cooperating detent mechanism defining the conjoint rotation of said shafts in predetermined intervals” was not intended to invoke section 112(6) and should not be construed to do so.”

        I can find no case where a term was held governed by 112(f) without using “means for” or something very close. Does anyone know of anything to the contrary? Even here, the court did not so find.

        Comment: If the court insists that anything like “instruction for” is going to invoke 112(f), then patent owners will simply find other words that make their “non choice” clear. Perhaps it might even be interesting to place such a “non choice” into the record in some fashion just in case.

      2. Ugh so much badness. I read the PON talk on the other blog entry with disgust. I can’t believe that so many supposedly intelligent people can’t understand that every valid claim has a PoN and it’s not the claim as a whole.

        “Unless the applicant clearly invokes the statute, he should not enjoy its benefits — it was enacted not as a burden, but as a benefit. If functional claiming in a combination claim were not allowed, one would have thought the requirement of the statute would have been made mandatory.”

        The first question is what was it enacted from? And the answer to that is a (still very much the law) holding that description of novel features by their functional result was at the very least undescribed and unenabled (and probably indefinite as well). So be clear from the outset: It’s “not mandatory” only in the sense that its not 100% wrong, just wrong in 95% of the cases its used.

        “The only time functional claiming is not allowed…”

        False. It’s closer to the opposite, functional claiming is always improper unless you can fit it into a box that makes in valid because the vices of functional claiming (they fail to enable/describe/define) are widespread and common. When the functional language evokes 112, 6th, it’s valid pursuant to the requirements of the paragraph. When the functional language is used as a shorthand to describe the inherent properties of well-known things it is no different than listing out those things and is valid. When the functional language describes the means of interrelationship between the elements (i.e. when the PoN is a combination motivation) it is valid.

        Outside of these situations, the SC has made clear that the use of functional language to describe the novel feature of an invention is improper because it attempts to describe and enable things outside of the knowledge of the inventor. It does not describe the actual invention but attempts to grab more than the invention.

        There are those on this board and apparently in the federal circuit which believe that the invention is a product of the subjective view of the inventor, as if one could invent the first electric car engine but view it in such a way to claim all devices that run on electricity and perform the function of moving a car. These people fail to understand Lizardtech or the earlier Supreme Court cases (Wabash, Halliburton, Morse, Perkin’s Glue). Your invention is what structures you describe to the public.

        “The only time functional claiming is not allowed is when the claim is essentially a single means claim as noted by Frederico in his commentaries.”

        You’re talking procedure absent substance in a way that makes clear you don’t understand. There is no particular rule for a single means claim. The rule for a single means claim is the same as any other claim, it’s just that the lack of complexity reduces the analysis you have to do which results in it being boiled down to an absolute statement. When there is only one element the novelty must exist within it, or it is invalid under 102. When that means is described functionally you have functionality at the exact point of novelty, which is the big no-no (it fails 112, 1st and 2nd). Therefore a single means claim is always invalid (it will always fail either 102 or 112). But when there’s more than one element, you’re still capable of having functionality at the point of novelty, and it would be just as bad there too because 112 applies just as much multiple element claims as any other claim.

        1. Prost’s writing is the only one which makes any decent amount of sense. Though it is also insufficient, at least it limits the claim to more than everything.

          The claim scope is:

          “a rule for determining if a vertical scroll should be executed”
          “a rule for determining if a frame scroll should be executed”
          “a rule for determining if a next page should be executed”
          “wherein the input for the rules is a finger swipe”

          All of which can be done on this webpage, and could have been done on this webpage, back in the 90s, with the exception of the “input is a finger swipe” part.

          Guess which part of the invention is not described?

          1. Nice work, RG. The flip side is that the same “logic” used to breathe novel “structure” into these junky claims can be used to justify patents on, quite literally, every specific action that changes the input or output “functionality” of any computer.

            For instance, I’ve just enabled my computer to display the specific text in this comment. It couldn’t do that until I “innovated” the information. I’ll call it “pseudopersonal metainformation” or “PPMI data” when I generalize it in my specification (I’ll kick up dust as necessary to avoid any pesky anticipation issues that might arise). Can I haz patent now?

            When information and “gestures” become “structure”, then we know that the race to the bottom is getting very hot and desperate indeed. Jump in the pool, all you patent attorneys with grifting, bottom-feeding tendencies! What are you waiting for? This golden opportunity to cash in probably isn’t going to be around that much longer ….

        2. RG You’re talking procedure absent substance in a way that makes clear you don’t understand. There is no particular rule for a single means claim. The rule for a single means claim is the same as any other claim, it’s just that the lack of complexity reduces the analysis you have to do which results in it being boiled down to an absolute statement.

          Yup.

        3. Outside of these situations, the SC has made clear that the use of functional language to describe the novel feature of an invention is improper because it attempts to describe and enable things outside of the knowledge of the inventor. It does not describe the actual invention but attempts to grab more than the invention.
          Explain how the doctrine of equivalents fits into your world view.

          1. Oh no,

            He will not because he cannot.

            Just like he imploded on the discussion of the ladders of abstraction – another concept that completely befuddles the anti’s, and yet the concept of the ladders of abstraction is related to easily more than 98% of all effective patent claims (with only a miniscule number of exactingly detailed picture claims with completely ineffectual real world coverage existing as the exceptions that prove the rule).

          2. LOL

            …ask him to sit down at his kitchen table and draw the table. Then show him the drawing of your kitchen table and discuss how in the world the two drawings do not match.

          3. “Explain how the doctrine of equivalents fits into your world view.”

            I’ve explained this before but I will again.

            The correct way to do most computer software claiming is to place it in 112, 6th and then argue doctrine of equivalents to a particular infringement. Conversely, one could lay out each particular way they think of in going about creating the function.

            This is correct because 1) the claim scope is proper and 2) it allows a case-by-case analysis with respect to any infringer who does something different but similar.

            What many people try to do is bake in the doctrine of equivalents up front by having an improperly large claim scope. An alleged infringer comes along and there can be no debate if their algorithm is an obvious difference from the patentee’s algorithm because the patentee never supplied an algorithm, he just claimed a functional result.

            That’s great for the patentee, because where he would normally have to prove substantial similarly result in substantially the same way, he need only prove result. But the law requires that an apples to apples comparison be done between alleged infringee and patentee, not a catch-all functional result. But that is the point isn’t it? Don’t disclose an algorithm because someone else, using a machine which is specifically designed to implement logic, might think up a different way to get there.

            The correct way also has the benefit of allowing for patents for algorithmic improvements. If I write an algorithm that achieves the function but takes 30 steps, someone else can find a non-obvious solution that takes 10 steps. That 10 steps by the second person is it’s own invention, but functional claiming forecloses it from issuing. The fact that it is so much more efficient and so obviously superior would lead one to think that the person who has the 30 step algorithm never considered the 10 step version, and it would likely not be equivalent.

            As claiming (incorrectly) stands now, I can invent a rube-goldbergian contraption which eventually gets to the end result no matter how inefficient, yet foreclose any competitors from practicing the end result, no matter how superior their method is, which is ridiculous. It’s saying that cave paintings that tell a story perform the function of communicating, and thus the paper, the book, the radio, the tv, and the internet can all be prevented from market because they all perform the same function. If you apply DoE, all of those later inventions are a) recognized actual inventions, as they should be and b) not foreclosed by the invention of an obviously inferior and completely unrelated item.

            1. Not de facto. But that’s the best way to do it. I said, conversely, you could actually describe every means of achieving the function. But that scope is only going to be valid until someone comes along and points out there’s a way you missed.

              That is the point, by the way – you missed a way. I know, with legal certainty, that you don’t know every way of achieving something. You know one way of achieving something. You might even know a handful of ways of achieving something. But you don’t know every way. There’s no way one can meet 112, 1st when talking about novel functionality.

            2. The correct way to do most computer software claiming is to place it in 112, 6th and then argue doctrine of equivalents to a particular infringement.
              Do you have a case cite for this correct way?

              Don’t disclose an algorithm because someone else, using a machine which is specifically designed to implement logic, might think up a different way to get there.
              If you’ve ever programmed a computer, you would realize that for every algorithm that produces a certain result, there are an untold number of different algorithms that produce the same result. Just like the law doesn’t require me to list every possible “hinge” within the claimed “an entryway comprised of a plurality of hinges and a door,” the law doesn’t require me to list every possible algorithm (e.g., for calculating prime numbers) within a claimed “a method comprising, calculating all the prime numbers less than 1000, and comparing the calculated prime numbers to a dataset.”

              FYI — the term “hinge” could be considered functional, structural, or both — depending on who you ask. Moreover, the term “hinge” likely describes things outside the knowledge of the inventor.

              If I write an algorithm that achieves the function but takes 30 steps, someone else can find a non-obvious solution that takes 10 steps. That 10 steps by the second person is it’s own invention, but functional claiming forecloses it from issuing
              No. You assume that computer program claims are nothing but “a method comprising: function” and nothing else. Every method claim I’ve come across doesn’t claim a single function in isolation. Base your policy arguments on what really goes in claiming. Moreover, “functional claiming” does not foreclose the 10 step invention — not by any stretch — not even close.

              yet foreclose any competitors from practicing the end result, no matter how superior their method is, which is ridiculous
              Again, you are presuming the single function claim that I never see. Let’s work with real claims, shall we. However, if you do have an example of a single function claim that forecloses any competitors from practicing the end result, then identify it, and we can talk about it.

            3. I think I wasn’t particularly clear in this post, but the point I was making was that DoE fits perfectly, you just have to remember that DoE is applied at a different time and to a different standard than the validity of a claim initially is applied.

              DoE exists to protect an invention from obvious changes to get around the technical wording.

              Functional claiming exists to improperly inflate the value of what was given to the public and prevent more efficient market competitors. Patent rights under functional claiming are a true monopoly in every sense of the word, and a patent was never intended to be such. A patent was supposed to protect your invention to compete with other inventions in a field. DoE exists to protect the invention while fostering competition. Functional claiming as it is being used forecloses the entire field.

            4. Functional claiming as it is being used forecloses the entire field.
              Although I asked this slightly differently before, but can you provide real-life examples, in software, where functional claiming has foreclosed an entire field?

            5. But that’s the best way to do it

              LOL – you announce with no legal backing what the ‘best way’ is?

              Really? When your ignorance on patent law is paraded all over the place, you want us to trust your judgement as to what the ‘best way’ is?

              No thanks. (soda to Oh no)

              some cave painters on this board

              LOL – take your errant view of Morse and add Deener.

            6. “Do you have a case cite for this correct way?”

              Morse finds invalid a claim to any machine that performs a function, specifically for the reason that someone else may come along with a better way of doing the function.

              Wabash states that difficulty of description does not entitle one to use functional language, and that structure must be described.

              Perkin’s Glue, Lizardtech, Ely Lily, Ariad all make clear that disclosure of one means of achieving something does not entitle you to every means of achieving it.

              Halliburton and Wabash are the best cites for functional claiming as a rule tending to be improper, with carved out exceptions for proper usage.

              “If you’ve ever programmed a computer, you would realize that for every algorithm that produces a certain result, there are an untold number of different algorithms that produce the same result. Just like the law doesn’t require me to list every possible “hinge”…”

              That’s not a fair comparison, because when you’ve got a computer software application, the item sought to be patented is an algorithm that the applicant claims never existed before his disclosure. If you were making and claiming a brand new hinge, you’d have to describe the hinge.

              “Moreover, the term “hinge” likely describes things outside the knowledge of the inventor.”

              But the hinge is the old thing, and as I said in my previous post, the use of functional language to describe the old is okay. There’s a difference between saying “Hinges are known in the art, you can use any old hinge because my improvement or invention lies elsewhere” and saying “An algorithm to achieve Function X is completely unknown in the art, so here is one example and now I own all of Function X.”

              “You assume that computer program claims are nothing but “a method comprising: function” and nothing else. Every method claim I’ve come across doesn’t claim a single function in isolation. Base your policy arguments on what really goes in claiming. Moreover, “functional claiming” does not foreclose the 10 step invention — not by any stretch — not even close.”

              I don’t assume anything, it’s just that the other parts are often irrelevant. If you want to tell me that all your algorithms pre-exist but you’ve got a reason why it’s not obvious, I’ll listen. (I should note you’re probably wrong in that case, because computers do nothing more than apply logic, but I’ll listen) But that’s not what applicants argue. They argue that this particular function doesn’t exist in the prior art. If you’re right then fine, I’ll give you a patent on that, but its a patent of proper scope – since you cannot rely on outside disclosure (you just said it’s brand new) then the scope of knowledge in the art consists solely of the algorithms you supply in your spec. Your invention is so limited.

              Can I tell you where you’re (mistakenly)headed with this argument? Your next statement will be “But once I told you one way of doing it, the rest of the ways would be obvious to anyone else”. First off, false. I mean, in general if you got 100 engineers you could come up with dozens of ways of getting the functional result, but no one engineer would think about the problem in all the different ways needed to achieve the functional result (which your inventor must prove in order to be given the function). Second, if that were true, it would only evidence that the only thing you contributed is something that patent law does not recognize: an abstract idea. If everyone else would automatically know every way of achieving the function, then your only non-obvious contribution is that a functional result can be achieved. That’s an abstract idea.

              Let me put this in terms of another concept you might be familiar with: the concurring opinion. Why do concurring opinions exist? Because two jurists, both intelligent people of their art, took the exact same inputs and got to the same general functional result, but they got their through different routes. Routes so sufficiently dissimilar that they chose to each write about it. Same thing with computers. Person A might take the inputs and take one route to reach the result, and Person B might take another. A and B’s inventions are both separate and valid on their own, and neither has the right to foreclose the other.

              “However, if you do have an example of a single function claim that forecloses any competitors from practicing the end result, then identify it, and we can talk about it.”

              Again, whether the claim is single or multiple matters not. The question is if that claim is purporting to describe the novelty of the invention.

              Take the Apple patent in this case. Now those functions are old, right? Scrolling, window scrolling, page back/forward. What Apple has, in their possession right now and at the time of filing, is code that will interpret a finger pressing on a touch screen and another set of code (which they call hueristics) which will change that input into a trigger for the scrolling.

              Samsung has the same thing. Is Samsung’s algorithm the same as Apple’s algorithm? Well neither of them disclose like they should, so we don’t know. But I think it’s safe to say probably not. One of them has a more efficient, responsive algorithm. One of them has more precise input control. One of them has more detailed rules for swiping (though that is more of a design choice). But make no mistake one is better. On a range of issues that matter to the efficiency of a computer one is objectively better than the other. But will the second patent ever issue? No, because the first patent forecloses the field. It takes all “fingers as inputs” algorithms and lumps them together. Apple doesn’t even limit itself to particular swipes to cause particular outcomes (in the independent). So basically what the independent says is “you can use your finger as an input trigger.” We’re fortunate that Apple didn’t file several of these patents, lest we all be using a mouse for 20 years, as every well-known function gets a brand new “heuristic” for triggering it.

              Here’s the actual state of the art: Someone who isn’t Apple invented a touchscreen. Apple took the mouse drag input (which is probably public domain) and replaced it in an obvious fashion with a finger swipe input (i.e. Apple invented nothing) then disclosed nothing about their obvious conversion, received a patent, and is now going around suing people who use completely different algorithms but want to use touchscreens. The end result is that you cannot use a touchscreen without infringing Apple’s independent, because every finger input is “based on the angle” in some fashion or other and its in the nature of the internet that things need to be scrolled. (I suppose you could just have button presses on the touchscreen, but in that case what you really have is a virtual keyboard, not a touchscreen)

            7. Random Guy — you might want to look at your own MPEP 2173.05(g) …. “Functional language may also be employed to limit the claims without using the means-plus-function format. See, e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999).”

              But the hinge is the old thing
              Except that new hinges are being invented all the time and would still fall under that language.

              That’s not a fair comparison, because when you’ve got a computer software application, the item sought to be patented is an algorithm that the applicant claims never existed before his disclosure
              You are painting with a overly-broad brush. The claimed method may consist of entirely known steps. Alternatively, the method may consistent of known steps but different inputs. As another alternative, the method may consistent of some known steps and some unknown steps. The determination of whether a particular step is enabled must be done on a case-by-case basis.

              “An algorithm to achieve Function X is completely unknown in the art, so here is one example and now I own all of Function X
              Read the claim language first, and then give me patent numbers. IMHO, you are gross misrepresenting what is actually being claimed by the vast, vast, vast majority of applications.

              I should note you’re probably wrong in that case, because computers do nothing more than apply logic, but I’ll listen
              Machines are almost always no more than collection of old parts used as they were intended — that doesn’t stop them from being patented. The question is whether the invention, as a whole, is obvious — not whether any (or all) of the individual elements were previously know. I thought even examiners knew this.

              A and B’s inventions are both separate and valid on their own, and neither has the right to foreclose the other.
              Wrong — the first to describe the invention can have a patent to the genus. However, the second can have a patent on the species if it is not obvious in view of the first.

              I’ll give you a patent on that, but its a patent of proper scope – since you cannot rely on outside disclosure (you just said it’s brand new) then the scope of knowledge in the art consists solely of the algorithms you supply in your spec.
              The fact that the invention, as a whole, is new doesn’t change that in the vast majority of applications, most (if not all) of the individual elements are known. As such, you are constructing a hypothetical that doesn’t accurately reflect what is going on.

            8. Oh no,

              Let me know if you think your systematic deconstruction of Random Examiner will make any impact to his understanding of law.

              I like the “ not whether any (or all) of the individual elements were previously know. I thought even examiners knew this. bit, as this exemplifies my Big Box of electrons, protons and neutrons analogy quite nicely, or if you want ot switch to another analogy, the simple question (which never gets answered) for someone to let me know the difference between three resistors in series and three resistors in parallel.

          4. I should add, Oh no, that outside of some cave painters on this board, it’s beyond debate that one cannot lay claim to the underlying function. That’s what Morse attempted to do – any machine that performs his function. I do nothing more than restate the words of the Supreme Court in that case and it’s progeny.

            Lizardtech would be a great case to use most of the time were it not for the fact that most applicants are worse at disclosing than the patentee in that case was.

            The patentee in Lizardtech described a means that utilized updated sums to achieve seamless DWT image compression. He had two sets of claims – one had the updated sums limitation and the other did not. The one lacking the updated sums limitation was tossed. Why? Because the patentee only described one method of achieving the result, via updated sums. Recognize that in many software cases there is not even a single means disclosed of achieving the function. The applicant simply says “Hey I’ve got a box and it does stuff.” People on this board argue that the same abstractness of claim that was thrown out in Lizardtech would be proper with even less disclosure than what Lizardtech had.

            1. I should add, Oh no, that outside of some cave painters on this board, it’s beyond debate that one cannot lay claim to the underlying function. That’s what Morse attempted to do – any machine that performs his function.
              Morse attempted to get a patent on an extremely broad claim. I don’t see the same thing happening today. Of course, as I noted above, if you’ve run across a similar claim (that has been patented), let’s talk about it.

              Recognize that in many software cases there is not even a single means disclosed of achieving the function. The applicant simply says “Hey I’ve got a box and it does stuff.”
              Enablement is a matter viewed through the eyes of one skilled in the art. If I claim: “a method, comprising: doing stuff, doing more stuff, and doing different stuff” and one having ordinary skill in the art would be able to do “stuff,” “more stuff,” and “different stuff” without undue experimentation, then they are enabled. There are hundreds of different ways to “turn on a computer” — I don’t have to describe any specific one if that happens to be one of my claim limitations.

              What your side doesn’t apparently appreciate is that “functional claiming” is a two-edged sword, which is what happens when you use broad claim language. Broad language is great when you are arguing infringement. However, broad language makes it that much easier to sink a claim based upon prior art. The easy solution to broad claims (if you are against them) is to find prior art.

            2. What your side doesn’t apparently appreciate

              There is a lot ‘their side’ does not appreciate. But with eyes clenched tight, they will not see.

            3. “Morse attempted to get a patent on an extremely broad claim.”

              There is no distinction between claiming any machine, no matter how constructed, that performs a function (regardless of how it achieves the function) and claiming any machine, no matter how constructed, that performs a function (regardless of how it achieves the function) within the limitations of the only computing environment in which anyone would want the function to occur. If you throw in a processor and a memory and a network and “two users seeking to communicate” or some other BS limitation, you’d have 90% of the claims today.

              ” There are hundreds of different ways to “turn on a computer” — I don’t have to describe any specific one if that happens to be one of my claim limitations.”

              Again, thats only because your novelty isn’t in turning on a computer. If you invented a new way of turning on a computer, you’d have to disclose your way. Your conflation of enablement and description is telling, as they are separate requirements with separate standards. Enablement is what one of ordinary skill the art could do. Description is what your particular inventor has done. There might be 100 ways of doing something, if your guy is dumb enough to pick the absolute worst one, his patent does not (validly) reach to the best.

              “What your side doesn’t apparently appreciate is that “functional claiming” is a two-edged sword, which is what happens when you use broad claim language. Broad language is great when you are arguing infringement. However, broad language makes it that much easier to sink a claim based upon prior art. The easy solution to broad claims (if you are against them) is to find prior art.”

              Yeah that’s nothing new to me. That’s also not a valid response. 102 and 103 bookend the exclusion on one side, but 112 bookends the other. The existence of 103 doesn’t somehow make the misapplication of 112 okay. It’s completely possible to describe a torch in a functional manner that would exclude any prior art and yet read on the lantern or the flashlight. A computer engineer disclosing one algorithm has no more proven that he is in possession of other algorithms (and thus is entitled to the function) than a neanderthal holding a torch has possession of a lantern or a flashlight or the next means of casting light.

            4. Random, LizardTech is another example where the court was convinced that the sole novelty was the running average disclosed. Just like in Halliburton or in Selden or in Mercoid, the failure to include the novel subject matter in the claim was fatal.

            5. Oh No, “Doing stuff…”

              And, “Means for doing stuff…”

              In the case for a computer program are the same thing. What Lemley wants to do is confuse the law regarding the claiming of structure, where functional claims are not allowed, with claims to programs where the program is described in terms of what its various steps actually do. The method is described in terms of acts, and, as with all methods, it makes little or no difference what means are employed. If one of ordinary skill can write a program according to the claimed method, and in almost all cases they can, then the claims are enabled.

              I simply do not see a consistent 112 issue where programs are being claimed. They are enabled.

              The only issue that I see are 101 issues, or novelty issues. 101 when programmed computers are being claimed. 101 when B-claims are involved. And 101 when business methods are being claimed.

              But functional claiming is not normally an issue for method claims unless the claims claim a result, not a method.

        4. RandomGuy, don’t misunderstand me – essential rule is that one cannot functionally claim the invention. But the Supreme Court has also made clear, for example in United Carbon, that functionally claiming old elements where the structure is well-known is no vice. The Supreme Court is also made clear that when the novelty is in the combination, the use of functional claiming of the elements also is no vice. Faulkner v. Gibbs , 338 U.S. 267, 70 S. Ct. 25, 94 L. Ed. 62 (1949).

          In Halliburton itself, all the elements were old but the combination was arguably new. But Supreme Court seem to be convinced that the combination itself was obvious, thereby leading it to the conclusion that the only invention in the patent was the particular resonator described in the patent. This was similar, if you recall, to the famous Selden patent and the way the Second Circuit handled that case. The Second Circuit concluded that the art had long desired a land locomotive, so the invention claimed was not broadly a land locomotive, but the particular engine Selden used, which was the only new feature he invented. Thus the court limited the scope of the invention to the particular gasoline engine Selden had invented.

          But this was in court and not in the patent office, where reference to particular structure recited in the specification should not be allowed to distinguish over the prior art. The real problem we have in the patent law today are cases like In re Donaldson and In re Swinehart, both which seemingly allowed functional claiming at the point of novelty.

          My argument regarding §112 (f) is that in combination claims, unless the applicant clearly invokes the statute by using the appropriate magic words, they should not be construed to be covered by the statute. It is optional. Thus, in attack on validity, the applicant or a patentee as the case may be, will be forced to defend that the particular element as claiming well-known structure, or that the novelty is in the combination. I see no problem in that. They might also adopted the approach of the court in either Westinghouse or the Selden patent and construe the claim to cover corresponding structure. But the Halliburton decision would suggest the opposite, that a claim is invalid if it is functional at the point of novelty.

          The central problem we have with the Federal Circuit jurisprudence is that they do not construe claims with any reference to whether the claim element is old or new. This is entirely inconsistent with traditional claim construction that always considered this issue. But if one is going to construe claims in the abstract, one should respect the patent owner’s choice. If he chose not to use §112 (f), he should understand that he puts his claims at risk.

          It is my understanding that the oral argument in Nautilus is today. Perhaps by the time I post this, we will have a report.

          1. “RandomGuy, don’t misunderstand me – essential rule is that one cannot functionally claim the invention. But the Supreme Court has also made clear, for example in United Carbon, that functionally claiming old elements where the structure is well-known is no vice. The Supreme Court is also made clear that when the novelty is in the combination, the use of functional claiming of the elements also is no vice.”

            All true. I’m uncertain you understand what functional language when novelty is in the combination means though. I don’t recall your exact points on the PON discussion, but it was horrid.

            The federal circuit simply fails to apply supreme court precedent, much like some people on this board (see anon at 1.1.4.5.1, misapplying stare decisis)

            1. Two organizations can overrule Halliburton (the functional language part, not the claim construction part), the supreme court and congress. Congress did not do so, and the Supreme Court has not spoken since. The holding stands, and will continue to stand until Halliburton is overruled.

              You wonder why there’s no citations after 1952, and the reason is because the only court who could change the law doesn’t want the law changed. The lack of speaking on the issue makes exactly the opposite point you want it to. For your edification though, Fuertterer was in 63 and accurately states the pre-52 test. Fuertterer is just a blip in a FC that has gotten further and further off course – they have started to consistently misapply the law and the supreme court will soon correct them.

            2. RandomGuy, “PON”? What I suggest is that one cannot distinguish the prior art by reference to the novelty of the one element.

              You reference a prior discussion regarding PON. In response to AAA JJ, where he referenced a claim to ABCD, where the art disclosed in one reference ABC, and the second, ABD, I responded there was no problem regarding functional claiming the elements. Clearly, both C and D are known, and novelty, if any, is in the combination.

              Halliburton was similar, AB was known. C was known, and the combination of ABC had to be the novelty. But the Supreme Court was not convinced, and said why. They found that he sole novelty was in the resonator described in the specification and the way it operated with the other apparatus of the claim. But that was not in fact claimed at all. Thus, it appears that claim ABC without the details of the resonator, read on the prior art or was obvious in view thereof. That is why the claim was indefinite.

              The Halliburton claims was like the claim at issue in the Mercoid case where the novelty was locating a thermocouple at a specific location above the firebox of a furnace coupled with a sensor that kept the fire on at low temperatures. The thermocouple itself was any thermocouple. Yet the patentee was obtaining royalties on says of conventional thermocouples for use in the patented combination. Do you see the problem?

              Yet that case sent the patent bar off, even though it was correctly decided based on the facts of the case.

            3. Don’t put the entire blame on the CCPA/Federal Circuit. Part of the blame has to be the PTO that did not take cases like Donaldson to the Supreme Court.

              Then there is the whole issue involving programmed computers and B-claims. Why the PTO does not take these cases up is part of the problem.

            4. Why the PTO does not take these cases up is part of the problem.

              LOL – little thing called case or controversy – you ASSUME that such are not in accord with the law when they are.

    2. Now, this is a case I’d like to see go to the Supreme Court. The majority opinion’s argument of what is “structure” hard to fathom and makes it hard to distinguish what the rules are. For instance, if this term was treated as MPF, then one would have to disclose an algorithm for performing the function. Since it’s not treated as MPF, they still seem to imply that you have to have some disclosed algorithm for performing the function. Where is the dividing line between non-MPF and MPF rules for computer-implemented claims written in functional language (that does use the word “means”)? Or is there no dividing line?

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