Means Plus Function: What Structure are you Referring To?

By Dennis Crouch

University of Pittsburgh v. Varian Medical Systems (Fed. Cir. 2014)

Pitt won its infringement lawsuit against Varian with a $100 million verdict. The patent basically covers a digital image processor that watches surgical patients and provides a warning signal if the patient moves. U.S. Patent No. 5,727,554.

A divided Federal Circuit has affirmed – with the division being over the construction of the claimed “processing means comprising means determining movement of said patient from digital image signals, including movement associated with breathing by said patient.”

The patent statute permits patentees to claim elements according to their function using so-called means-plus-function language. 35 U.S.C. § 112(f). However, the properly interpreted scope of the means-plus-function claim terms is limited to corresponding structures found in the patent specification and their equivalent.

Here, the claim construction debate is on whether the corresponding structure for the processing means is a computer processor programmed to perform either (a) a two-step process or (b) a thirty-two step algorithm. The difficulty in interpretation is that the patent does not affirmatively link the claim language with either structure but instead leaves readers to their own conclusions. On appeal, a two judge majority (Judges O’Malley and Lourie) agreed with the lower court that the proper interpretation was the broader two-step requirement while the dissent (Judge Dyk) would have chosen the more narrow interpretation that would have likely led to a non-infringement determination. To the dissent, the “two-step process” disclosed in the specification only offers more functional language – not structure. The dissent explains his position:

The majority’s identification of structure—the two steps of detecting and tracking fiducials—relies on a single statement in the specification that “[a]s will be discussed fully, the patient motion detector 47 detects and identifies the fiducials 39 and then tracks their movement.” The majority concludes that this disclosure identifies the corresponding structure as a two-step algorithm because the specification “links this algorithm to the function of determining patient movement.” But the statement in the specification does not explain how the fiducials are detected and tracked or how performing those steps accomplishes the function of determining a patient’s movement during radiation treatment.

One rule that would likely flip this decision would be if ambiguity in claim language were construed against the drafter (i.e., the patentee).

= = = = =

The majority did reverse the willfulness finding that almost tripled the damage. On that issue, the court found that the infringer’s non-infringement and invalidity defense were reasonable (or at least not objectively unreasonable).

159 thoughts on “Means Plus Function: What Structure are you Referring To?

  1. The case is also interesting , but for a different point, and that is damages. During re-examination, the patent owner added a new claim 38 that combined the movement detection system with a beam generator that provided “multibeam conformal dynamic radiotherapy” for a patient. I presume that it subject matter was disclosed, but I am not sure. But the point is that the defendant, Varian, argued that the beam generator was prior art and damages should not be extended to include the value of prior art items. The majority rejected this contention on two bases: first Varian did not make this argument to the jury, and second it is inconsistent with the Georgia-Pacific factors. On the latter point, the court observed that claim 38 was to the combination of the motion detection apparatus with the beam generator, and was not for the motion detection apparatus for a new use. With respect to the combination, there was testimony by the plaintiff of the incremental value provided by the motion detector to the combination. Varian’s position was further rejected because the cases they relied on were from an era involving lost profits where apportionment was required. That law no longer applies. Furthermore, the Georgia-Pacific factors specifically cover incremental value to a combination involving old apparatus.

  2. Here, the claim construction debate is on whether the corresponding structure for the processing means is a computer processor programmed to perform either (a) a two-step process or (b) a thirty-two step algorithm.

    Um, not quite correct.

    The dissent (and apparently many people here) missed this:
    Varian objected to the special master’s recommendation, and urged the district court to adopt a four-step algorithm instead, abandoning its argument regarding a thirty-step algorithm.

    As I initially said, this case is merely one of difference of degree – not one of difference of kind.

    1. Lazy thinking again. You appear to think “well gee 4 is close to 2, unlike 30.” That is irrelevant. Varian must have been willing to argue for a four step process because one of the two steps in the four step process that was not in the two step process couldn’t be proven by the patentee. Therefore, it is a difference in kind because the two steps are dispositive of the case.

      This case again proves the problem with functional claiming. The patentee disclosed one method of doing something and then argues an attempt to make it broader. Unfortunately, because he claimed under 6th, by statute it cannot be broader other than through equivilents, but to determine what the equivilent is to a step, you have to include the step as part of the claim. The majority again attempts to omit a necessary step (which is made worse, as the dissent points out, because it was the examiner found to distinguish over the prior art) in an effort to unfairly broaden the rights of the patentee beyond what he has made.

      1. Random Examiner – not lazy thinking at all.

        Correct thinking.

        A tempest in a teapot here – much ado about nothing.

        Move along.

      2. (and explicitly – whether or not a ‘step’ was included or omitted between the two and four has nothing to do with what I posted about – the “lazy” here is you and your thinking that I am talking about the explicit result of this particular case while I am talking about the legal concepts in play)

        Wake up.

      3. Random, what happened here was that the claim construction of the District Court and of the Federal Circuit effectively read out of the claim of novelty – the “how to” extracted from digital images of a patient real-time patient movement. The prior art disclosed the use of laser beams on the patient for this purpose but did not use the patient’s image. The prior art disclosed the use of fiducials and cameras, but not for real-time determination of patient movement. Thus the soul novelty in the claim was how to extract from a digital image real-time information about patient movement such as breathing.

        That point of novelty was argued to the initial examiner and to the re-examination examiners and gained allowance of the claims. The effect of the construction then, as you said below, is to read out of the claim it’s only novel feature.

        How this patent is not invalid on this claim construction is beyond me. I would suggest that the patent owner again request re-examination and introduce the argument of the patent owner that the so-called “two-step” method is all that is corresponding to the processing means. This two-step method probably is insufficient to overcome the prior art because it simply states the desired result and does not require any of the novel steps. In other words, while there is an invention disclosed in the specification, it is not claimed.

        1. Ned,

          Do you think that the patent owner will claim that the two-step includes the other items (if push comes to shove)?

          C = f1; f2 – as determined by the court

          but if pushed further, patentee simply admits

          f1 = Step1; Step2
          f2 = Step3; Step4

          1. anon, given the claim construction of the Federal Circuit and the argument about corresponding structure that was made in court, I think the patent owner any future re-examination will be required to amend into the claim some of the novel steps disclosed in the specification to distinguish over the prior art. This will of course introduce intervening rights they could have avoided had a they not advance such a ridiculous claim construction position in court.

          2. No anon, he can’t admit that, since one of the steps isn’t infringed. That would not be the issue on appeal if it would be proven anyway.

            The actual case is the same as every other junk patent:

            f2(patent) = step3;step4

            f2(infringer) = step5;step6;step7, etc.

            Applicant argues that the claim language is f2 and f2 is infringed. There’s no proof that applicant ever possessed steps5-7, but because poor thinkers with a “ladder of abstraction” think f2 is sufficient claim language (even, apparently, some poor thinkers ON THE COURT and in the context of 6th of all things) they often (and incorrectly) prevail.

            Surely you must understand that in the context of 6th at least, that steps 3-4 are the heart of the coverage and must be in the case, and steps 5-7 are not infringing. The court incorrectly holds the structure as f2, and comes to the wrong conclusion. It’s lazy thinking that is unbecoming of people whose job this is.

            1. Random, since the patent owner argued both in the first prosecution and in the re-examination that the prior art did not disclose how to process a digital image to detect and determine patient motion, it is a wonder to me how the special master could have come to a conclusion that the processing step was fulfilled by a high level objective description rather than a more detailed description of how one processes the digital information from the image to determine patient motion. I can only think that it was the failure by Varian’s counsel.

              But there’s another aspect to this case it really bothers me in that it looks like the patent owner took one position before the patent office on what was new over the prior art, and a decidedly different position in arguing corresponding structure regarding the processing limitation. As you say, patent owners urge a narrow construction to obtain the patent and then a broad construction defined infringement. While one assumes in the ordinary case that the defendant will raise the issue of inconsistent positions, at which point can everybody else point out the inconsistent positions taken by the patent owner so that the argument to the court can be viewed more than just litigation advocacy, but an fraud on the court. See e.g., United Business Communications v. Racal-Milgo, Inc., 591 F. Supp. 1172 (D. Kan. 1984). link to scholar.google.com

            2. Random Nonsense,

              LOL – I took a serious look at your response and there is nothing there – absolutely nothing – except your rather noxious (and completely unsubstantiated) attack on ladders of abstraction.

              You clearly still do not understand the ladders of abstraction concept whatsoever.

              You use that word “lazy,” but I think that you do not know what that word means.

            3. Ned at 15.1.3.1.2.1 – your link is off, as it takes me to
              APPLIED DIGITAL DATA SYSTEMS INC., Plaintiff, v.
              MILGO ELECTRONIC CORPORATION et al., Defendants.

              In general Ned, my point above seems to have not reached you. I wonder if you are intently searching for a lower wrong when a higher rung already includes that lower rung (I have not researched the case, so I am positing this as a question rather than as an assertion).

              You seem intent on thinking that the special master missed something. Could it be that you missed something and that the special master did not?

            4. (sigh)

              wonder to me how the special master could have come to a conclusion that the processing step was fulfilled by a high level objective description rather than a more detailed description

              A step up on the ladder of abstraction does not read out that which is below that step Ned.

            5. Ned,

              Do you feel that arguing in the alternative, or mere inconsistencies is the same as what happened in the UBC case?

              (I think that you may be doing that over-reading thing again…)

            6. The link to UBC v. Racal-Milgo is here

              link to scholar.google.com

              The point of the case is that making it argument to the court that is inconsistent with the arguments made are being made to patent offices, in the case linked, a German counterpart patent application currently in prosecution, is fraud on the court.

      4. If you had not been lazy and had read my post below with the quote from the dissent you would see that there is NO difference in kind – even for the larger step size argument. This is simply not the case that the chum would indicate. Functional claiming would be allowed by the dissent as well.

        Move along now – nothing to see here (unless you want to take note as to what legal structure is per the dissent).

        1. anon, the discussion of the special master’s report in in the majority opinion. The dissent never argued that the four step process was corresponding.

          But one thing seems clear from reading the opinion including the whole discussion about damages was that Varian shot itself in the foot time and again by changing its litigation positions. had they argued for four step process to the special master rather than the full, 32-step process, they may have prevailed. Also, given the prosecution history taken as a whole and given that the sole novelty argued time and again was the process for determining patient movement from digital images, how the special master could have come to a different result is almost beyond imagining. The Varian attorneys must not have made this argument during claim construction because the result cannot be explained without assuming that Varian did not make the argument.

  3. To help us all understand whether the precise algorithm for the distinguishing movement was incorporated by reference, the question has to be answered by whether that subject matter was argued in distinguishing the prior art. I think it was, at least in the underlying prosecution.

    The following argument was made in connection with claim 19 that became claim 20 in the patent:

    Claim 19 is an independent claim which calls for, inter alia, camera
    means generating digital signals and processing means comprising means determining movement. of the patient from the digital image signals including movement associated with breathing by the patient, and gating means generating gating signals synchronized with the movement associated with breathing by the patient. Fujita teaches generating signals associated with patient breathing from direct measurement of chest position using an ultrasonic detection system. It does not suggest using digital images generated by a camera to detect breathing. Gerig, et al., as mentioned, can only determine patient position at a repetition rate of five seconds, obviously too slow to detect breathing. Furthermore, there is nothing in Gerig, et al. to suggest how the rhythmic movement associated with breathing could be extracted from a camera image. Accordingly, Claim 19 is patentable over any combination of Gerig, et al. and Fujita.” Applicant Remarks of June 30, 1997, pages 9-10. (emphasis supplied)

    1. I don’t follow you Ned. Claim 19/20 apparently recited a camera and the cited documents didn’t even suggest a camera.

      What are you concluding from that?

      1. Read the highlighted portion. This is where the algorithm for determining rhythmic movement is incorporated by reference in the argument for novelty. It is there, else the claim would not have been allowed.

      2. Les, the prior art did disclosing using cameras and fiducials. Thus the argued novelty is that the prior art did not disclose “how the rhythmic movement associated with breathing could be extracted from a camera image.”

        The “how” then becomes the invention, because everything else was old – from the use of fiducials, to the use of cameras, even the use of laser beams that are monitored by cameras. What was new was the methods and algorithms used to determine and predict patient movement from not only fiducials, but from other images of the real person.

        I must say I have not yet reviewed the re-examination, in my opinion might be altered after that review, but based solely on the prosecution history before the initial examiner, it appears that the novelty was in the method, the “how.”

        1. I have now had a chance to review the re-examination, and nothing in it changes my view that the point of novelty over the prior art has to do with the real-time processing of camera images of a patient to determine movement. Thus that is the invention. Everything else in the claim is old from the use of cameras, to real-time processing of other things than digital images of the patient to determine movement.

          Thus the claim construction of the majority read out of the claim the only novelty as argued repeatedly to the patent office in obtaining allowance of the claims.

    2. Fujita teaches generating signals associated with patient breathing from direct measurement of chest position using an ultrasonic detection system. It does not suggest using digital images generated by a camera to detect breathing.

      This is the kind of total b.s. argument that the softie wofties always seem to get away with. Digital cameras predated this application by many years, as did their use to detect things. There is no teaching away in the prior art from the use of digital cameras to detect *any* kind of movement because that is what digital cameras do. Likewise, there is no question that more subtle movements than “breathing” were detected with “digital cameras” prior to this application. Researches in all kinds of disciplines were using digital cameras to detect subtle movements since the invention of such cameras.

      But somehow the PTO and the courts love to pretend they were born yesterday whenever a compooter of some sort is mentioned in the claims. Why is that? When will it end?

      1. Those silly electrons, neutrons and protons have been around very nearly forever. The way they bond to each other is one of the oldest things in the art. But somehow the PTO and the courts love to pretend they were born yesterday whenever a molecule of some sort is mentioned in the claims. Why is that? When will it end?

        /eyeroll

        1. somehow the PTO and the courts love to pretend they were born yesterday whenever a molecule of some sort is mentioned in the claims.

          In fact, the opposite is true and practioners in the chemical arts are routinely asked to provide evidence of unexpected results.

          But go ahead and engage in your path0l0gical lying. It’s what you do.

  4. “The majority concludes that this disclosure identifies the corresponding structure as a two-step algorithm because the specification “links this algorithm to the function of determining patient movement.” But the statement in the specification does not explain how the fiducials are detected and tracked or how performing those steps accomplishes the function of determining a patient’s movement during radiation treatment.”

    So what? There a zillion ways to do those two steps. The invention is at the level of those two steps. At least a preferred embodiment was also disclosed. That is all that is required. The examiner searched for the 2 step process and found nothing. I know this because the patent office applies the broadest reasonable interpretation. The 2 step process was what was invented.

    The argument that it was only the 32 step process that was covered is absurd on its face. Why would anyone bother getting a patent on the 32 step process that can so easily be worked around?

    Finally, a court got one right!

    1. The invention is at the level of those two steps.

      Detecting a marker and tracking the movement? That’s in the prior art. Really, really old prior art.

      Why would anyone bother getting a patent on the 32 step process

      Maybe because it works and represents a valuable improvement over other processes.

        1. You said it didn’t work, both here and in another thread, or at least you implied it, because the prior art didn’t include the “important aspects”.

          Remember : “See also, e.g., ’554 patent col. 6 ll. 63–64 (“An
          important aspect of the invention is the fine tuning of the tracking templates called for at 120 in FIG. 6.”); id. col. 5 ll. 9–12 (“The invention satisfies these requirements by utilization of successive levels of filtering and templates which are modified to accommodate for actual conditions.”).

          … which, as pointed out by the dissent, were relied on to get a patent over old prior art which (surprise!) “used markings to track a patient’s movement during radiation treatment more than ten years before the ’554 patent’s priority date.””

          See also, e.g., ’554 patent col. 6 ll. 63–64 (“An
          important aspect of the invention is the fine tuning of the tracking templates called for at 120 in FIG. 6.”); id. col. 5 ll. 9–12 (“The invention satisfies these requirements by utilization of successive levels of filtering and templates which are modified to accommodate for actual conditions.”).

          … which, as pointed out by the dissent, were relied on to get a patent over old prior art which (surprise!) “used markings to track a patient’s movement during radiation treatment more than ten years before the ’554 patent’s priority date.”

          1. You said it didn’t work, both here and in another thread

            No, I didn’t.

            or at least you implied it

            There is no “implication” that the prior art “did not work” in the text that you posted. Nice try, Les. Go ahead and try another lie. I’ll just keep busting you. But go ahead anyway.

            1. How could it work if it didn’t include the aspects they you say are so important to the present invention?

              Les, you are reading the inventor’s description of his own invention. That’s not a description of the prior art.

              Second, saying that something is “important” for an improvement is not the same as saying that the prior art “did not work.”

              Why would any of this have to be explained to someone who is presumably an adult with some knowledge of patent law?

              This is why we have to ask the question again: are the patent teabaggers really as st00pit as they sound? Or are they just habitual liars who can’t help but simply make sh*t up when they get busted?

              It’s a serious question. These people think they’re really sooper dooper important and smart. But they’re not. Mainly they’re m0r0ns and liars, shilling for their own self-interests. They’ll do and say anything to keep the party rolling, and screw everybody else.

              Dennis knows this as well as anybody. So does Jason.

            2. LOL – I love how you implicitly sign up both Prof. Crouch and Prof. Rantanen as full-fledged believers in your rantings.

              Nothing like trying to put words in their mouths.

              Here’s a better idea: lose your ad hominem and vapid posting techniques, learn and focus on the law and put that self-anointed English as a First Language Skill to use by actually posting with intellectual honesty and making some honest-to-goodness points in law and fact.

              Give it a try.

            3. I love how you implicitly sign up both Prof. Crouch and Prof. Rantanen as full-fledged believers in your rantings.

              I’ll debate anybody, anytime, about your path0l0gical lying habits, Tr0llb0y. Pretty much every day you add to your stockpile of b.s.

              My presumption is based on Dennis’ expressed recognition of your “crazy person” tendencies and the fact that you regularly direct your psych0path puke funnel at him. He knows what you’re all about.

              I mean, Dennis and Jason are pretty smart. We can all disagree about stuff (and we do!) but it’s really only you and NWPA who have the habit of lying about other commenters you disagreee with on a daily basis.

              You haven’t noticed this? Of course you haven’t.

            4. I’ll debate

              You use that word “debate,” but that word does not mean what you think it means.

              Debate is not the RQ/HD because you say so CRP you so often spoon out.

              You want an actual debate? LOL – stop running away. Stop with the tired and trite oh-so-limited script of AOOTWMD, ad hominem and the like.

              Try that.

            5. You want an actual debate? LOL – stop running away

              LOL. I’m right here, Tr0llb0y. And I’m responding to your b.s. all the time, every day. Nobody has responded directly to more of your nutjob b.s. than I have. Nobody.

              Running away? LOL. Like I said: you’re a path0l0gical liar. You just can’t help yourself.

            6. . And I’m responding to your b.s. all the time, every day

              LOL – Malcolm, here’s a clue: your “responding” is not working out all to well for you.

              That’s why I am asking that you improve your, um, “responding” by dropping the ad hominem and other typical trite and tired CRP from your limited script and try basing your comments in actual law and facts.

              “responding” is not answering in an intellectually honest manner with arguments poised with law and facts.

              (in case you have not yet noticed, it is your typical ‘responding’ that is by far what is excised from the threads – think about it)

            7. >It’s a serious question. These people think they’re really sooper >dooper important and smart. But they’re not. Mainly they’re >m0r0ns and liars, shilling for their own self-interests. They’ll do >and say anything to keep the party rolling, and screw everybody >else.

              Whenever you lose arguments, you get mean. Man, MM, you are one mean little mind. You must be a paid blogger.

    2. Les, consider this from the dissent:

      “Second, the additional steps were included because
      they were necessary to distinguish the prior art. The prior
      art used markings to track a patient’s movement during
      radiation treatment more than ten years before the ’554
      patent’s priority date. In the initial office action rejecting
      the application that issued as the ’554 patent, the examiner
      cited U.S. Patent No. 5,446,548, which disclosed
      “camera means 130, 160, passive fiducials 111–114, and
      processing means 200” as part of a “position/movement
      detection system subsidiary to the main (treatment)
      system.” Examiner’s Initial Rejection of Patent Application
      at 4, 5, Ser. No. 08/715,835, (P.T.O. Feb. 28, 1997).
      The examiner also identified three other prior art references—
      U.S. Patent Nos. 5,295,483; 5,558,430; and
      5,389,101—disclosing “[p]lural cameras used to track
      patient position in conjunction with camera-identifiable
      fiducials.” Id. at 5. The application for the ’554 patent
      included the additional steps, described above, to distinguish
      the abundance of prior art. Claim 20 cannot be
      construed broadly to cover all methods of determining
      patient movement by tracking markings that are visible
      on a patient.”

      Of course, this raises the issue of whether the means for detecting was in fact the novel feature of the claim or something old, novelty lying elsewhere. The Federal Circuit is never good at telling us the big picture so that we can understand whether it was critical to include all the steps of the larger algorithm in order to preserve validity, or whether they can be substantially ignored because any motion detector would suffice.

      As I have often said and I will say here again, functional claiming of old elements is okay and accepted. However when a novelty lies in the one element, functional claiming is not permissible. One must define the invention either in the claim, or when using means plus function, in the specification.

      1. was in fact the novel feature of the claim

        Onward ho mighty canard…

        Ned, tell me again what was the “Point of Novelty” in Diehr (hint, think computer program).

        1. Ned, tell me again what was the “Point of Novelty” in Diehr (hint, think computer program).

          Diehr wasn’t about functional claiming at the point of novelty. Relying on Diehr to respond to the problems created by functional claiming at the point of novelty just shows that you’re completely desperate.

          More importantly, Dierh’s patent was a quintessential junk patent if there ever was one. As has been noted repeatedly by commenters, the eligibility analysis of a claim that implicates a particular technology will change when that technology becomes conventional. No claim like Diehr’s claim would ever be deemed eligible or patentable today. It should’ve never gotten out of the PTO in the first place.

          All that Dierh stands for is mind-numbingly trivial proposition that a claim does not become ineligible per se simply because it recites an algorithm. That’s it. Big deal.

          1. Does not answer my question, Malcolm.

            No desperation on my end, at all – PON is a canard, so I really don’t care what the answer is – but the fact that neither you nor Ned care to be consistent in your treatment of the canard – that is interesting.

            That you seek to provide your typical, um, “legal” answer of ad hominem is not really a surprise.

            1. (sigh) I was looking for your answer or Ned’s answer.

              Yes I already have my answer because yes I know and understand the law.

              It is your turn.

              Please do not dodge again.

        2. tell me again what was the “Point of Novelty” in Diehr (hint, think computer program).

          Straight from the case:


          Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold.

          . . .


          Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading. But the shortcoming of this practice is that operating with an uncontrollable variable inevitably led in some instances to overestimating the mold-opening time and overcuring the rubber, and in other instances to underestimating that time and undercuring the product.

          The point of novelty is not in the computer program. It is in an industrial process which involves a computer. Again, straight from the case:

          According to the respondents, the continuous measuring of the temperature inside the mold cavity, the feeding of this information to a digital computer which constantly recalculates the cure time, and the signaling by the computer to open the press, are all new in the art.

          . . .

          The respondents’ claims were not directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had arisen in the molding of rubber products.

          . . .

          Their process admittedly employs a well-known mathematical equation

          It is clear that the computer program is not the point of novelty. The equation is well known. The point of novelty is the industrial process as a whole.

          1. The point of novelty is the industrial process as a whole.

            More specifically, the “point of novelty” is the combination of a computer with an old industrial process (hey lookie — it’s automatic now!).

            Why Diehr’s junk claim was not deemed obvious in view of reams of prior art teaching of the computer automation of other industrial processes is one of those great mysteries of patent law. But it does illustrate why the patent teabaggers are obsessed with using 103 instead of 101.

          2. Paul,

            In one sense, your ‘straight from the case’ ignores the art – the process of constant monitoring was accomplished by a computer program. All else was old in the art. It is very much clear that if you do NOT accept claim as a whole (as Ned and Malcolm do not) then the PON has to be something other than claim as a whole.

            That’s kind of the entire point of my sticking it to Ned.

            And in a critical sense, you cannot answer this question from your vantage point, because you are not coming from the vantage point of those who are (errant) in their attempted use of the canard.

            While I will not argue that the proper interpretation involves the claim as a whole (remember, I firmly hold that PON is a canard), the use of that canard does not follow your view here. Thus, please let those holding the view that PON is not a canard explain themselves.

            Note that I have politely asked for this legal explanation several times, and have yet to have a thoughtful and intellectually honest response provided.

            1. the process of constant monitoring was accomplished by a computer program. All else was old in the art.

              The process of “monitoring a process” using a computer was also old in the art.

              Note that I have politely asked for this legal explanation several times

              LOL. And you were given answers. You just didn’t like them so, as usual, you pretend that it didn’t happen.

              You’re a path0l0gical liar.

              You see how he works, Dennis? Of course Dennis sees this. It’s what you do here every day. You’re a liar, plain and simple. You can’t help yourself.

              Get help.

            2. Anon, please do not conflate issues.

              Claim-as-a-whole is a straight jacket on how you are permitted to analyze claims in certain context. People can argue against claim-as-a-whole while accepting the advance over the prior art could be in the combination of old elements. Claim-as-a-whole and what are the advances of the prior art in a particular claim are two separate issues.

            3. Do you want me to again quote you Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966) on what claim as a whole means? It means the novel elements of the claim, the point of departure over the prior art.

              From Graham:

              “Here, the patentee obtained his patent only by accepting the limitations imposed by the Examiner. The claims were carefully drafted to reflect these limitations and Cook Chemical is not now free to assert a broader view of Scoggin’s invention. The subject matter as a whole reduces, then, to the distinguishing features clearly incorporated into the claims.” Id., at 34.

              Other elements are considered only to give context and meaning.

              Absent, a point of novelty, all claim elements are considered. That is the way they are considered when examination STARTS. It not the way they are considered after.

              Graham is controlling authority on this point. It is the LAW.

              This is the nth time I have quoted the law to you, only to have you pretend that I did not.

              There is dicta in Diehr that is consistent. The point of novelty is evaluated to determine whether one is attempting to claim the ineligible. That notion was clearly confirmed in Prometheus.

              anon, your misunderstanding of what “claim as a whole” means is critical to your misunderstanding of a lot of what goes on in these 101 cases, let alone ordinary patent prosecution where the obviousness of the novel features are argued every day in determining the patentability of claims.

            4. Do you want me to again quote you Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966) on what claim as a whole means? It means the novel elements of the claim, the point of departure over the prior art.

              Of course that’s what it means: you can’t simply ignore the improvements described in the claim and say, e.g., “this is just another tractor — therefore obvious.” Trivial.

              Unless of course the new element is information, in which case the the express language of 103 gets chucked out the window … except when it doesn’t.

              When the patent teabaggers jump up and down about “claims as a whole” all they really are trying to do is steer the Examiner into approaching 103 as if it were 102. The reasons for doing that are, well, quite obvious.

            5. Ned at 13.2.1.2.2.5 -what section of law are you grossly misusing the case law of Graham for?

              You are attempting to use something non-101 in a 101 context.

            6. Ned, tell me again what was the “Point of Novelty” in Diehr (hint, think computer program).

              Tell me again how I am ‘ignoring you’ when you refuse to answer my question.

              That’s really ‘compelling

              /eyeroll

            7. anon, the point of novelty is critical when the issue is functional claiming. The Supreme Court case law is replete with this phrase.

              But, as we know, Rich, the CCPA and the Federal Circuit do not follow Supreme Court case law, but pretend it never existed, and make it up as they go.

            8. You are attempting to use something non-101 in a 101 context.

              This from the path0l0gical lying hypocrite who screamed “claims as a whole” at everybody for years when we talked about the relationship between eligibility and the prior art.

              What a joke these teabaggers are.

            9. With or without highlights, the only joke here is plain to see: why is it that both you and Ned refuse to answer a straightforward question, instead insisting on kicking up as much dust as possible.

              The question remains unanswered.

            10. Malcolm’s quip of “The process of “monitoring a process” using a computer was also old in the art.” reveals one of the flaws in both his pet theory and his overall approach to the jurisprudence of 101 .

              It does not matter that ALL elements of a claim are “also old in the art,” as perfectly patent eligible and perfectly patentable (and yes those are two distinct and different legal concepts, no matter how often Malcolm wants to conflate the two) claims can exist with ALL elements being old in the art.

              This has been pointed out to him (and his sockpuppet farm at PatentDocs) from the very beginning of his proselytizing of his pet theory. That pet theory comes down to a singular and rather unremarkable proposition that an unattached thought totally in the mind and unconnected to any other claim element will not change the status of whatever else it is that you are trying to claim. He kicks dust all over the fact that this [newthought] must be both unconnected and totally in the mind – neither of which pertains to software in general and the software that was the “Point of Novelty” in the Diehr case in particular. It is also the reason for the utmost delicious irony of Malcolm so proudly being the first to provide the link to the Office view of the Prometheus case without understanding what that link meant. For even a preposterously badly written case (from a legal perspective) that is nothing more than a Chamberlain like 9-0 bone tossed to Breyer does not mean what Malcolm thinks it means.

            11. Ned, tell me again what was the “Point of Novelty” in Diehr (hint, think computer program).

              Tell me again how I am ‘ignoring you’ when you refuse to answer my question.

              (the silence screams volumes)

      2. Ned – I haven’t read the entire file history. However, if the Examiner didn’t require the means for language to be amended to include a means for doing the allegedly argued filtering or whatnot, then the filtering must not have been necessary to provide novelty or non-obviousness.

        The Examiner gives the claim language broadest reasonable interpretation. In this case he would have had to interpret it as encompassing both the broadly described two step process and the 32 step process.

        1. Well, Les, I have yet to view the reexamination, but the applicant did argue that the prior art disclosed no “suggestion as how the rhythmic movement associated with breathing could be extracted from a camera image.”

          This argument made the way to do this essential to the novelty of the claim regardless that the examiner did not require the detailed method be set forth.

      1. You don’t understand 112, 6th do you?

        All Les understands is that patents are sooper dooper awesome and anyone that tries to prevent a single patent from being granted is nothing but an ignorant technology-h@ter.

        Once you appreciate these basic fact about the patent teabaggers who troll this blog, all the weird gibberish that comes out of their mouths is instantly explainable.

      2. I do. You don’t.

        The two step process was described. 112, 6 says the claims are interpreted as including the two step process and the 32 step process and equivalents there of.

        1. Yes exactly right Les. The APEs are thick in the jungle of patentlyo and they swing from argument to argument throwing their APE duty at us humans.

    3. O’Malley is pretty good. I would guess that Lourie wanted to invalidate the whole based on him being an unethical creep, but that O’Malley kept his filth in place.

  5. What was the Markman construction of the claim the District court?

    The SCT’s going to stop this de novo type of review when it decides Teva v Sandoz shortly.

    After which the Sociogy majors and political hacks on the Fed Cir will be properly held in check.

    1. What was the Markman construction of the claim the District court?

      That was the construction that was affirmed here.

      The SCT’s going to stop this de novo type of review when it decides Teva v Sandoz shortly.

      The Supremes are also going to chuck the Fed Cir’s ridiculous test for indefiniteness in the lake so a piece of junk like this will not necessarily be bulletproofed by a District Court’s decision. On top of that, the Fed Cir’s absurd habit of equating incredibly broad functional language with a structure is going to get hammered as well.

      Good times ahead, folks. I wouldn’t pay this $100 million judgment if I were Varian.

    1. Side Inquiry:

      How much of that “Troll” kool-aid have you slurped down?

      You realize that US patent law has never required a patent holder to ever actually produce/use the claimed subject matter, right?

      A clear sign that you are a T00l is the vapid repetition of propaganda. Please inform yourself so that a conversation can actually take place on the merits, not on a silly trumped up sideshow, coined by a Large Corp for purely their benefit and no benefit ‘for the masses.’

      1. Re: Troll…. I think I was making a point, to wit, that the likes of Pitt, Harvard, Stanford, MIT, etc., etc. would meet the present definition of a patent troll since they often don’t produce products related to their inventions. Thus, labeling an entity as a troll (and therefore adjudged evil according to some) and excluding them from the benefits of patent laws (as some have proposed) would have the effect of excluding the universities. Perhaps not an outcome that the founding fathers envisioned when they drafted the language “To promote the Progress of Science and useful Arts…” So you and I agree. Aren’t you happy?
        Play nice.

        1. Your point was too obscure, but I see now where you meant to go.

          The problem is that too many would see your post and go “Hell yeah, we need a ‘working’ requirement.”

          We do not.

          Further, any such ‘working requirement’ would have an immediate problem given the fact that US patent law promotes follow-on innovation in which the innovators have no right to produce/use the baseline item that may very well have exclusive rights to another.

          1. LOL – that’s like saying that nobody misconstrues data or attempts to spin things…

            Where is the part of the universe that you come from Malcolm?

        2. present definition of a patent troll

          Depends on whose definition you are using.

          Unlike the typical patent troll who does nothing except identify patents that can be “monetized” at the point of a lawsuit, universities actually do research and development and typically license their technology to entities interested in producing the claimed invention.

          That’s quite a difference.

  6. Infringer should make an argument that the claims are presumptively invalid.

    The Office rejected the claims, citing four patents. The applicant amended around them, and now the majority has construed the amended language to not include the distinguishing feature. (according to the dissent)

    The proper reading of the case is that the office has rejected this scope, and the burden is on the patentee to rebut the prima facie showing.

    1. True enough. But 112, 6 is hot right now with Lemley’s functional paper having been some kind of call to arms.

      1. That’s why I note the disappointment factor – this is not a case of “functional claiming,” as the dissent’s view is one still allowing functional claiming but merely wanting the claim to be construed with more functional steps.

        But that won’t stop the ‘feeding frenzy.’

            1. a guest post by Greg Aharonian would be nice…

              Dennis, please get on this!

              It’s important that you satisfy Tr0llb0y’s needs. I mean, where else would he go to get his patent fluffin’ propaganda?

            2. Not sure how Malcolm gets from my comment of “would be nice” to some sense of “need,”….

              Malcolm, are you even aware of your spin?

        1. it provides the evidence

          LOL – Malcolm’s RQ/HD because he says so is “evidence.”

          Way too funny. Sad thing is that he takes himself seriously.

        2. this is not a case of “functional claiming,” as the dissent’s view is one still allowing functional claiming

          That makes absolutely no sense. Read what you wrote.

          Now figure out what you were trying to say and write it in English. Ask you mom to help you.

  7. Given the stakes involved and the fact that Nautilus is pending at the Supreme Court, I would petition for a rehearing en banc with a suggestion to hold the decision pending Nautilus.

    Dyk is clearly right. The claim is wholly functional if limited only to the desired results set forth in the specification.

    1. Correct, Dyk, the Judge who penned the opinion in Bilski that the claims there were not within the useful Arts.

      Dyk clearly is a judge that gets it.

    2. Yeah I thought that dissent didn’t sound like Lourie’s writing. But I didn’t bother to check the author since D said it was Lourie.

  8. So, basically the dissent Lourie is trying to tell us that we have to put everything in a specification. When you have a new combination of elements that you have to specify each of the possibilities for each element and somehow claim them without using functional language. Maybe create a database of things like hinges then we can make 100′s of pages of claims “at least one from the group comprising” and then maybe a link to a database with all the known solutions.

    Again and again, we can tell that the Louries of the patent world are not interested in reform or improving the system, but only in burning it down. We can tell this because the Louries never offer any solution to the real problems just criticism and justifications for invalidating patents.

    1. “So, basically the dissent Lourie is trying to tell us that we have to put everything in a specification. When you have a new combination of elements that you have to specify each of the possibilities for each element and somehow claim them without using functional language.”

      Congratulations NWPA, you’re learning patent law!

      You meet the requirement of disclosing structure by disclosing structure. You don’t meet it by disclosing function. Nor disclosing other things that are like your thing.

      The funny thing is that you complain about this even in the context of 112, 6th where the statute outright says it requires structure. I bet your mind will be blown when the court reaffirms that it applies to standard claiming as well.

      1. Random guy you put what is new in a specification. Sheesh. Randomguy what do you do for a living? You seen anti’s this is the type of person that you rally to your cause.

        1. Your post doesn’t mean anything. You can’t believe that it requires structure, I point out how amazed you are it requires structure and you respond with “you put what is new in a specification”.

        2. Night, regardless of the issue your are discussing with Random Guy, I frankly find it amazing that someone openly admits that the novel subject matter does not have to be in the claim. How is this consistent with section 112,(b)? (And do not cite any case written by that archenemy of the Supreme Court, GS Rich.)

          1. (And do not cite any case written by that archenemy of the Supreme Court, GS Rich.)

            LOL – that’s not real law in Ned’s universe…

      2. Random Examiner,

        Difference in degree – not kind.

        You are wrong in your view, not necessarily wrong in your statement. See the dissent at page 2.

        You say that word “structure.” I do not think it means what you think that it means.

      3. In relation to the ongoing conversation between Ned and I and the intertwined nature of 101 and 103, let me posit another item that can be laid at the feet of the Royal Nine and their anti-patent leanings: KSR and the powerful double-edged sword of PHOSITA.

        When you augment the power of PHOSITA, you necessarily also reduce what is required to be presented in a patent application. The Court in its efforts has created an unintended – but unavoidable – side effect.

        Patent applications are not meant to regurgitate anything that a PHOSITA would know. This necessarily means that perfectly valid patent applications will tend to be thinner and thinner over time in any particular art field.

        This also shows a bright spotlight on the claptrap of the anti-software patent people and their incessant noise about “show me the structure.” The type of structure that software has is generally known and thus applications do not need to go into particular ‘structural’ detail about the type of structure when a person of ordinary skill in the art to which the invention pertains can easily determine that an actual structural differences exist. The type of structure that both ‘oldboxes’ and ‘newboxes’ have are generally known and thus applications do not need to go into particular ‘structural’ detail about the type of structure when a person of ordinary skill in the art to which the invention pertains can easily determine that an actual structural differences exist.

        Drawings are only required when such drawings would be helpful. 6′s claptrap about ‘show the structure in a drawing’ is easily seen as claptrap for the type of drawing he would want. In the case of software and improved machines configured with software, the type of drawing 6 would want would be so immense and detailed so as to NOT be helpful and thus that type of drawing is not required. See the immediate case, dissent at page 2 for the drawing of the appropriate structure required under law:

        Here, because the claimed function is implemented by
        a “processing means,” i.e., a computer, the specification
        must “‘disclose an algorithm for performing the claimed
        function.’” Noah, 675 F.3d at 1302, 1312 (quoting Net
        MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed.
        Cir. 2008)); see also Aristrocrat Techs. Austl. Pty Ltd. v.
        Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
        The algorithm may be disclosed “‘in any understandable
        terms including as a mathematical formula, in prose, or
        as a flow chart, or in any other manner that provides
        sufficient structure.’’’ Noah, 675 F.3d at 1312 (quoting
        Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340
        (Fed. Cir. 2008) (internal citation omitted in original)).

        Those swarming around about the chum thrown in the water would do well to recognize what is actually being said in this case.

        1. >>When you augment the power of PHOSITA, you necessarily also >>reduce what is required to be presented in a patent application.

          This part few of the posters on this blog understand or ignore. And, I’d say too that this part is ignored by Lourie who treats himself as PHOSITA (or even an expert) when he invalidates claims.

        2. anon, I agreed it one does not have to put into the specification how to do something if how to do something is well-known. But if the invention is related to what to do, as opposed to how to do it, the what to do must be disclosed. I hope you agree with that.

          But the degree of disclosure also varies as to whether the particular claim element being claimed is new or old. If the element being claimed his old, one should not have to describe anything more than what the element is, and the art should know how to make that structure. Thus of an element the claim is a screw, everyone knows both what a screw is structurally, and how to make one.

          But in contrast if the invention is a widget, and no one knows what a widget is structurally, the structure of the widget must be described the specification and how to make one.

          What is singly not present in the jurisprudence of the Federal Circuit is the distinction between old elements and new elements in this dialogue. They are moving in that direction, but have not yet gotten there. It is a shame, because this distinction was well known prior to 1952. But of course, the Federal Circuit is not considered the law prior to 1952 to be applicable and never looks to it.

          1. I do hope that you are not leaning on the canard that the 1952 Act was mere codification (I had thought that we had already resolved that).

        3. “The type of structure that software has is generally known and thus applications do not need to go into particular ‘structural’ detail about the type of structure when a person of ordinary skill in the art to which the invention pertains can easily determine that an actual structural differences exist. The type of structure that both ‘oldboxes’ and ‘newboxes’ have are generally known and thus applications do not need to go into particular ‘structural’ detail about the type of structure when a person of ordinary skill in the art to which the invention pertains can easily determine that an actual structural differences exist.”

          You know what anon? I’ve heard this sort of thing recently in a patent app that I’m taking care of. I’m willing to consider it with an open mind. It sounds, from my point of view, especially in their application and wording of what you said, like an assertion/admission that you’re not showing the structure because it was already conventional, aka old. Though you are harping more on the “type” of structure rather than the actual structure. And since you’re not being a total ass today I’ll bandy some words with you.

          3 things concern me.

          1. In all other fields, even when the structure that a certain device has is “generally known”, when an applicant comes to the office claiming a new structure that he thinks is structurally different from the structures that came before we always make him draw it out. And we also make them present the invention in such a way as to allow us to determine what the structural difference actually is, not just that there is a structural difference where we don’t get to know what that structural difference is. Not so in software though to date. This exceptionalism concerns me, especially since making this exception in other arts is essentially the US gov failing to demand its fair quid for the quo. A structural difference for a structural difference patent is the deal. A reference to a function for a structural difference patent is fundamentally a messed up quid pro quo. If you have a good reason why this should not concern me then I will hear you out. Please spare me any trollish answer, and just don’t post if that’s all you have to say.

          2. I have made extensive inquiry into the subject and I am personally unaware of what “type” of structure software has “generally” other than 1′s and 0′s in digital computing. From what I’ve read, this appears to be the general view of many folks, if not all folks. Software can have pretty much any “type” of “structure” in analog computing, or computing that is done via other means than electrical computing. Limiting ourselves to digital computing, the prior art usually shows that same structure, some 1′s and 0′s arranged just as generally as the applicant has arranged his, more or less at random where the pattern’s only meaning is an abstraction born from what a different device will do when it reads that pattern. This situation concerns me since it involves a certain question of fact known as anticipation, and the first factual inquiry under Graham. That we would not issue an anticipatory rejection concerns me even further since this is the primary means that the office has to apply art against functional claims, which essentially takes the primary means the office has of applying art against functional claims off the table when it comes to software applications. That taking prior art off the table in this art only, as an overall situation concerns me gravely. If you have some reason why that should not concern me gravely I’d appreciate you letting me know.

          3. What does the which “type” of structure is involved with the claimed invention have to do with anything? This appears to be something new you’re harping on, so I’m curious. Software is 0′s and 1′s generally in digital computing, correct? What “type” of structure is that and what does that “type” matter? I’m genuinely curious.

          “the invention pertains can easily determine that an actual structural differences exist.”

          Also, kind of a fourth. Even presuming for the sake of argument, that an invisible imaginary man can determine an actual structural difference does or would have to exist, how does that matter at all if we, aka real life people reading the application, including actual people of skill in the art, don’t know what that actual structural difference is? Or, in the alternate, the same question above if there are some smart alecks that assert that they do know what the actual structural difference is but decline or refuse to set it forth for us?

          If you’d just be a pal and hold off some trolling since I’m considering what you say with an open mind I’d appreciate it. And likewise if you’ll help me through these concerns that I have, I’d be appreciative.

          1. 6. the rule that corresponding structure is an algorithm stems from Alappat’s dicta — and that dicta is not good law — going back to the nonsense of Bernhart. I would challenge the applicant on the basis that unless the claim fixes the programming to the computer in some permanent fashion, a program does not define a new machine. A program is a way of using an old machine.

            For the source of the rule, see this quote from Aristocrat.

            “That was the point made by this court in WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed.Cir.1999). In that case, the court criticized the district court, which had determined that the structure disclosed in the specification to perform the claimed function was “an algorithm executed by a computer.” The district court erred, this court held, “by failing to limit the claim to the algorithm disclosed in the specification.” Id. at 1348. The rationale for that decision is equally applicable here: a general purpose computer programmed to carry out a particular algorithm creates a “new machine” because a general purpose computer “in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” Id., quoting In re Alappat, 33 F.3d 1526, 1545 (Fed.Cir.1994). The instructions of the software program in effect “create a special purpose machine for carrying out the particular algorithm.” WMS Gaming, 184 F.3d at 1348. ” Id. at 1333.

            1. rule that corresponding structure is an algorithm stems from Alappat’s dicta

              Once again Ned engages in sophistry.

              I have shown you with a direct reference to Black’s Law Dictionary that the thing you wish to portray as dicta in Alappat was a holding as it was required to resolve a direct legal issue advanced by the losing side, that – if it had been decided in the opposite – would have resulted in the case changing who was victorious.

              Ned you are doing that “repeat a lie often enough” thing.

            2. unless the claim fixes the programming to the computer in some permanent fashion

              Shall we all watch you run away yet again when I ask you to provide some (any) citation for this extra statutory requirement you want to make up out of thin air?

            3. A program is a way of using an old machine.

              LOL – you want to add a machine component, a manufacture in its own right to a machine and claim that the old machine is not changed…?

              You do realize the fact that since software is equivalent to firmware and is equivalent to hardware that you are attempting to negate Morse and allow to the invention of ‘oldbox’ all future changes and improvements to ‘oldbox,’ right?

              And once again the merry-go-round of Ned’s CRP-avoid valid points raised and run away-CRP again makes its turn.

            4. Ned,

              Why is it that you still refuse to pick up the Nazomi case and overcome your personal lack of understanding, and yet you wish to continue to post as if that case never happened?

          2. since you’re not being a total ass today I’ll bandy some words with you.

            LOL – from the same guy that wanted to bandy a baseball hat to my head recently? Tell me 6, is passive-aggressive in that little psych book of yours?

            Let’s deconstruct your little version of “bandy,” shall we?

            Working from the back of the first thing that concerns you to the top then:

            Please spare me any trollish answer, and just don’t post if that’s all you have to say

            Talk about control freak – post how I want you to post and any answer you don’t like you will deem a troll answer. In other words, any answer you don’t like and will call trolling – Oh, how very Malcolm of you.

            A structural difference for a structural difference patent is the deal

            That is absolutely NOT the deal 6. In other words you have just rewritten the actual deal and now have deemed that NO functional descriptions or elements are allowed and that is simply not the law – in ANY art field.

            essentially the US gov failing to demand its fair quid for the quo

            You blatantly misuse the phrase and simply do not use it correctly. When you do this with a specific term of art, you only look like a doofus.

            In all other fields,… we always make him draw it out
            Since we have easily already established that your sense of structure only is simply wrong, it is not surprising that you completely misunderstand what it means when you say “ we always make him draw it out”. I gave you the proper ‘draw-out’ from the dissent. See my post at 6.2.3. So again, right from the get-go you are already in the weeds. This does not look promising for you. You do realize that part of PHOSITA has to do with the art to which the invention pertains, right? So right off the bat your “in all other fields” is more than just a little suspect.

            Though you are harping more on the “type” of structure

            That is an important distinction. Apparently you do not understand what this distinction is, so you go about commenting as if I did not make that distinction. Congrats 6 – you just wasted your effort.

            consider it with an open mind

            LOL – except you promptly went about it not doing so. Completely wrong with your first reaction. Simply wrong from the get-go. You have to have a mind to have an open mind.

            It sounds, from my point of view, especially in their application and wording of what you said, like an assertion/admission that you’re not showing the structure because it was already conventional, aka old

            Not at all. Your point of view is simply wrong. That is why “type of” is critically important to actually give weight to in that mind that you merely think that you want to be open. You claim that you are coming to this exchange with an open mind and then you turn around and show that you are not open. Typical.

            1. “That is absolutely NOT the deal 6. In other words you have just rewritten the actual deal and now have deemed that NO functional descriptions or elements are allowed and that is simply not the law – in ANY art field.”

              Nah, that’s not what I’m saying. I was simply saying that you were previously bringing up structure so if you want to bring it up then that’s fine. Let’s discuss that. If we discuss that, there’s a certain quid pro quo. IF you’re really talking about structure when you functionally claim some software, as you have asserted (and NWPA has asserted) many times, then fine. But THEN you must meet the quid pro quo for structural claims. That’s all I’m saying, a simple IF THEN. And that it disturbs me that you’re not ever meeting that quid pro quo. But you don’t seem to be able to even grasp what I’m saying so whatever just set that to the side.

              “It looks like other than that you just wanted to troll so I guess we’ll just have to talk about that for now if you want to keep discussing the matter. ”

              Um I have no “sense of structure only”. I have a sense of structure period. And IF you’re going to assert that structure is tied up in your functional recitation(s), then, just as in every other art, we need that structure drawn out. This has nothing to do with any “sense of structure only” and rather with a “sense of structure”. Period.

              ” I gave you the proper ‘draw-out’ from the dissent.”

              What are you talking about? “Draw-out” means draw the mo fo in some drawings. Not “draw x out of something else”. God, this is why it’s so hard to converse with you.

              “You do realize that part of PHOSITA has to do with the art to which the invention pertains, right?”

              Your “that part” is indefinite. Which “that part of PHOSITA”?

              “That is an important distinction.”

              Ok, if “that” (indefinite, though I presume you mean the word “type”) is such an “important distinction” what is “type” an “distinction” from?

              “Apparently you do not understand what this distinction is, so you go about commenting as if I did not make that distinction. ”

              Indeed, I don’t understand what “this” distinction is. What is “this” distinction? Are you saying that you harping on the type of structure is a distinction? What two or more things is the “distinction” between?

              Look I heard you babbling about the “type of structure”, and I was curious about what you were talking about. If you don’t want to let me know then fine. I’m interested in what you have to say because every time you guys harp on some new little quirky phrase you make up, you let on a little something about the game you’re up to, and have been up to for years, in your heads. I usually find them amusing if not valuable insight into those so often opposing me.

              “That is why “type of” is critically important to actually give weight to in that mind that you merely think that you want to be open.”

              Why is why? Your “that” is indefinite unless you’re trying to say that my point of view being wrong is why “type of” is critically important to actually give weight to in my mind. But that sounds absurd. But maybe that’s what you mean. That’s cool if that’s what you mean. I’ll “give weight” to “type of” if you’ll explain what the “weight” you want given is to be.

              Look I’m totally willing to give you newest nonsensical phrase “type of structure” or “type” or whatever “weight” in my mind. Just tell me why you’re harping on that phrase and word and I will be happy to. Also, you can help me out perhaps with what “weight” needs to be given if you’d like.

              In either event, I guess you didn’t necessarily get around to addressing most of my concerns in any real depth, but hey, at least let me in on what your secrit “type of structure” is about, what it is a distinction between, what “weight” you would have me give it and what relevance it may have once given “weight”.

            2. 6,

              That was a serious bunch of nothing and you saying that you don’t understand.

              I suggest that you compose yourself. Re-read my post, take some time to understand and try again.

  9. What are the chances that Malcolm or 6 have even bothered reading the 39 page decision before they volunteer their usual comments?

    1. What are the chances that Malcolm or 6 have even bothered reading the 39 page decision before they volunteer their usual comments?

      I can’t speak for 6 but I read the parts relevant to the claim construction. Be sure to let everyone know what you think of the decision after you’ve read it.

      Or you can just insult people, being the s0ci0path that you are.

  10. Pretty ridiculous that the district court judge trifurcated the proceedings to address issues in this order:
    1. Willfulness
    2. Damages
    3. Validity

    Might as well just tell the jury to give the plaintiff what they want.

  11. The patent basically covers a digital image processor that watches surgical patients and provides a warning signal if the patient moves.

    Because nobody could have predicted that motion detection would be useful in an operating room.

    What an incredible piece of garbage. Heckuva job, PTO.

    1. From the dissent:

      See also, e.g., ’554 patent col. 6 ll. 63–64 (“An
      important aspect of the invention is the fine tuning of the tracking templates called for at 120 in FIG. 6.”); id. col. 5 ll. 9–12 (“The invention satisfies these requirements by utilization of successive levels of filtering and templates which are modified to accommodate for actual conditions.”).

      … which, as pointed out by the dissent, were relied on to get a patent over old prior art which (surprise!) “used markings to track a patient’s movement during radiation treatment more than ten years before the ’554 patent’s priority date.”

      What the heck happened here? Travesty.

      1. Malcolm quips in his typical self-FAIL sniff mode: “What the heck happened here? Travesty.

        The travesty of course is that Malcolm did not bother to read – and understand – what the case is saying.

      2. If those “important aspects” were not disclosed in the prior art and if those important aspects are as important to the invention as you imply, then the cited prior art did not work at that two step level. The prior art didn’t include those important aspects, so it could not have worked.

        Therefore, the two step process was invented by the inventors listed here.

  12. That’s a lot of money.

    I’d recommend that this accused infringer request an en banc rehearing to see if the Federal Circuit can salvage what’s left of its reputation and, if they can’t or won’t, then take it up to the Supreme’s and win easily.

    The question for cert: does the mere recitation of additional functional language constitute “structure” sufficient to satisfy the requirement under 112P6 for corrresponding structure?

    As for this comment by the dissent:

    the statement in the specification does not explain how the fiducials are detected and tracked or how performing those steps accomplishes the function of determining a patient’s movement during radiation treatment.

    Note that 112P6 requires corresponding structure, not function, be provided in the specification when means+function language is relied on. The function is already in the claim. The recitation of additional function is neither necessary nor sufficient. A description of “how the steps accomplish the function” would not address the requirement of providing the structure required under the statute.

    But let’s watch the “principled” patent teabaggers celebrate the “judicial activism” that created the bizarro world “analysis” relied on by the Federal Circuit here. That’s the kind of “judicial activism” the “principled” teabaggers love: the kind that works in their favor.

    1. “The question for cert: does the mere recitation of additional functional language constitute “structure” sufficient to satisfy the requirement under 112P6 for corrresponding structure?”

      You don’t even have to write much of a brief, just ask the question, and when they say “nah” be like: thx.

    2. MM, a MPF claim involving programmed computers really is a process and should be treated that way. It is now for 101 purposes and should be treated that way for infringement purposes. It would be nice if eventually someone would raise an issue under 112(b) about programmed computer claims when they misidentify the class of invention.

      That said, a MPF claim also covers step plus functions when a combination is claimed. Thus, the corresponding “structure” to a method claim are ACTS.

      But, Lourie is right, merely stating a desired result as an ACT is not sufficient for corresponding structure to a method claim. Functionality cannot be defined by desired results only. Specific acts must be defined.

      It is good that at least one judge on the Federal Circuit is beginning to really understand functional claiming in all its glory.

      1. That said, a MPF claim also covers step plus functions when a combination is claimed. Thus, the corresponding “structure” to a method claim are ACTS.

        More simply: the statute covers both step+function and means+function claiming. For step+function claiming under 112P6, the corresponding acts (not structures) for carrying out the step need to be described in the specification.

        1. Its a MEANS plus FUNCTION claim. The means is the structure PROCESSOR and other means and equivalents described in the specification. The FUNCTION are the ACTS described in the specification and equivalents.

          Even if you construe the claim to read on the 32 step process. The infringers process is equivalent because it performs the same 2 step process.

          1. 112, 6 says the claims are interpreted as including the two step process and the 32 step process and equivalents there of.

            The “two step process” is the recitation of two functions: (i) detecting and (ii) tracking markers. What are the “equivalents” of “detecting”? What are the “equivalents” of “tracking”?

            1. Well, one equivalents of detecting might be photographing and filtering, another might be photographing and analyzing, yet another might be photographing and comparing. Still yet another comprises some of the 32 steps.

              The answer to the equivalents of tracking takes a similar form. I’m sure you can fill in the blanks.

            2. Les, the two step process does not describe the novel feature argued to the examiner as the basis for allowance of the claim.

              There is no doubt here that the majority is wrong, IMHO.

          2. Ned – a lot of things get argued during prosecution. One never knows which aspect or argument might resonate with an examiner. If I argue that my claim is allowable because the prior art doesn’t show A, B or C and the Examiner accepts that the prior art doesn’t show C and that my claim recites C, that doesn’t mean that my claims also include A and B.
            Sometimes an Examiner will respond to such an argument by asserting: Yeah, but, your claim doesn’t recite A and B. In that case, I can amend the claim to say A or B to get around the art.

            So, that A and B were argued, does not mean the claim says A or B.

            Since the examiner apparently did not require that the claim be amended to recite means for doing the argued novel feature, it appears that the Examiner did not rely on that feature for novelty but was persuaded by some other aspect of the argument.

            1. Again, Les, after Donaldson, the examiner cannot require the novel structure be set forth in the claim for means plus function.

              That was the point of the case.

            2. I didn’t suggest he could Ned. I noted that he did not require the addition of an additional means for, i.e., a means for performing the function that you say was argued as left out of the prior art.

              I’m sure that Donaldson did not say that an examiner couldn’t require an element be recited in the claim when the current claim could be interpreted as reading on the prior art and the applicant argued that a feature of some (but not all) described embodiments was lacking in the prior art.

              Surely under those circumstances Donaldson allows the examiner to say, but your claim is not so limited. If you so limit the claim, then and only then, will I allow it.

            3. Les, AFAIK, no case after Donaldson has ever required the applicant to amend the claim to include corresponding structure that was relied on to distinguish the art. That was the whole point Donaldson — that he not be required to make that amendment.

              Which is why I and many others went apoplectic about that case. It cannot have been properly decided despite it being unanimous. The Supreme Court would have ripped the Federal Circuit to shreds, and yet, strangely, the Government did not appeal.

            4. Ned,

              I do not think that you are following what Les is saying.

              This is NOT a matter as you are painting it, that a claim limitation already present can be argued to include something in the specification.

              I believe that Les is trying to make the point that an existing means plus limitation can be held to NOT include a feature in the specification. That is, the means plus limitation does include something in the specification, but not something else that would be necessary to overcome a particular prior art item.

              In that case, the particular means plus item in the claim is not enough, and a separate item to be claimed would need to be added – either in means plus form or else in some other form – in order to overcome the cited prior art.

              These are clearly two distinct situations. In the one, no claim amendment is needed because it turns out the examiner was wrong (in a very real sense), and the body of the specification already is sufficient. In the other, the examiner is in fact correct, and the existing means plus claim is simply not sufficient given the prior art, thus some change is needed.

            5. anon, thanks for the clarification.

              While I think it is possible to argue that the processing means of the claim does not cover the specific methodology argued to overcome the prior art, I think this is really a poor argument here because the processing means is the computer and it processes the digital image to determine patient movement. Therefore, the corresponding structure the specification that does this was argued to be the novelty over the prior art.

              This is why I think there is a problem with the argument made to the District Court in that the essential novelty argued to the patent office was not included in the claim construction. How the special master could have allowed this if Varian made the point in rebuttal is beyond me. I can only assume that Varian did not make that point or that argument.

              If they didn’t make the argument, well I think there Client should consider this together with all the other mistakes made by their litigators and perhaps should get the firm to pony up some of the damages.

    3. celebrate the “judicial activism” that created the bizarro world “analysis” relied on by the Federal Circuit here.

      If this is some type of argument that the exceptions to the judicial doctrine of printed matter was an object created by the courts, let’s just put that fallacy to bed (again).

      Previously I have explained to Malcolm that since the exceptions are in fact exceptions to something that was judicially created, if one never creates the judicial doctrine (in which lies the judicial activism), then the exceptions remain and rule the day (the exceptions are not dependent on the judicial activism in the first place).

      Let’s have a little intellectual honesty on this legal point from Malcolm from here on out, ok?

  13. Take it to the supremes so they can set the record straight that neither a process or an algorithm are “structure” and a 112 2nd for failure to tie the mpf limitation to the spec properly can be put in place.

    1. LOL – and how exactly would you want the Supremes to “set the record straight?”

      Do you think that they will go against what they already said in the big three:
      Benson (“We do not so hold”),
      Flook (“Neither the dearth of precedent nor this decision should therefore be interpreted as reflecting a judgment that patent protection of certain novel and useful computer programs will not promote the progress of science and the useful arts, or that such protection is undesirable as a matter of policy.”) and
      Diehr (in which Malcolm and Ned still run away from their precious “Point of Novelty” being a mere computer program)?

      (not even to mention Bilski which shows that Diehr limited the less than savory misapplication of the Benson and Flook cases)

      Please 6 – tell us more – tell us in any way you wish (keeping in mind that being intellectually honest is simply the best way forward, and that noting this is in no way a ‘control’ tactic, but simply more just me noting a simple and universal fact that duplicity and lack of veracity hurts one’s arguments much more so than any attempted spin would help)

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