Discussion Fodder

Note that the below question is a hypothetical.  As far as I know, Congress isn’t currently thinking of adopting something like this.  Nor would I ever advocate for this language as its currently drafted.  It was deliberately written so as to produce problematic results. 

Question 8: [Limit: 150 words]

Congress is considering the following statute:

(1)   IN GENERAL.—Chapter 11 of title 35, United States Code, is amended by adding at the end of Section 112(f) the following:

An element expressed as a function that does not comply with this subsection shall be in considered to be in violation of subsection (b).

Argue that this proposed statute is consistent with the policy considerations underlying patent law.

Question 9: [Limit: 150 words]

Argue that this proposed statute is inconsistent with the policy considerations underlying patent law.

 

Edit: Here would be the text of Section 112(b) and (f) as (hypothetically) amended:

(b) Conclusion.— The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

(f) Element in Claim for a Combination.— 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, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. An element expressed as a function that does not comply with this subsection shall be in considered to be in violation of subsection (b).

 

174 thoughts on “Discussion Fodder

  1. The next big case: Baxter International, Inc. v. Fresenius USA, Inc
    Seth Waxman’s petition: link to sblog.s3.amazonaws.com

    In this case, after 11 years of litigation and after the judgment on damages was final and not even appealed, twice, after validity had been upheld in a prior appeal, and on further appeal where the only issue was an interim royalty and the right to an injunction, the Federal Circuit vacated the entire case because, in the interim the PTO, in a re-examination, had determined the relevant claims of the patent unpatentable, and had canceled the claims after an appeal by the patent owner to the Federal Circuit.

    The basic argument is that the Federal Circuit’s view on finality stands alone among the circuits. Second, the decision of the Federal Circuit conflicts with a decision of the DC circuit that held that once a court’s mandate had issued, the subsequent change in the statutory law upon which the judgment was entered could not render the court’s judgment invalid because the right of the right-holder did not depend upon the statute, but upon the mandate.

    The brief also suggested that what actually happened here was the result of an abuse of process and gaming the system by the infringer who did everything in their power to delay litigation once they had an adverse ruling on validity. The brief also noted that the purpose of re-examination was not to allow gaming the system as used by the infringer in this case, but to allow lower cost re-examination in lieu of litigation to reduce costs. Forcing the patent owner to conduct litigation in two forums, simultaneously, was not intended by Congress as a solution to reducing litigation costs, nor was it intended by Congress that judgments of the courts be superseded by the contrary opinions of the patent office on the validity of the patent.

    1. The re-exam and IPR processes that Congress and PTO have provided take longer than is ideal. Sometimes even litigation can proceed to final judgement before IPR and appeals are complete. The result is that courts may be issuing final judgement on presumptively valid patents that do not even exist according to the ordinary patent process of prosecution and review.

      The correct and obvious solution is that courts should issue a stay on patent litigation until the IPR process is complete. Final judgement, at least, must wait until the patent is determined to be valid or not.

      In the slowly evolving Samsung v. Apple I case, judge Koh expressed frustration with the timeline of the PTO and its gyrations. One utility patent involved had see final office actions declaring it invalid and valid alternatively and the parties expected a truly final resolution around 2016 or 2018. A patentee was obviously being dilatory in order to delay validity determination beyond final judgement in order to collect damages on a patent both sides appeared to suspect invalid. Final judgement in the case, as in all these cases, should wait until the PTO and appeals are done.

      1. Owen, as noted in one of the amicus briefs, courts are noticing that patent litigation is a waste of judicial resources given Fresenius and its predecessors that allow the PTO to ignore court judgments regarding validity, and allow collateral attack and multiple litigation between the same parties. Courts are not going to invest any time in patent litigation if their judgments are ignored and cast so easily aside.

        The current reexamination regime was intended as a low cost alternative to obtaining a review on the validity of truly suspect patents. With nearly 100% of petitions granted, there is no meaningful gatekeeper function being performed by the PTO, and with gamesmanship encouraged, not discouraged, by the Federal Circuit, the intent of congress is flouted.

        This case tends not only to undermine the patent system, but to undermine the court system. It is of fundamental importance.

        1. Well, the PTO carries out little gatekeeper function in initial prosecution so it can only be expected that most IPR petitions are going to find invalid claims. I don’t think Congress should be happy about that, but it’s not going to change easily.

          As far as Fresenius and other priority of invalidity issues, the accused have a right to challenge government actions taking their rights away. Relying on previous proceedings where the present defendants didn’t get to present their case on validity is never going to work. The recipient of a privilege is always going to have to defend the entitlement to that privilege at every level of review or else there isn’t any case against an infringer. Particular arguments over invalidity can be estopped from being asserted by any given defendant in more than one venue, though.

          Well, alternatively, Congress could fund the PTO sufficiently to get the IPRs done in a timely fashion. There are many offices, even in the government, where the pace of litigation isn’t considered an unreasonable lightning-fast standard of speediness.

          With appropriate appeals deadlines and if the PTO were not treated as a tiny slush fund for other government operations, it could happen. In fact, I wonder that such a proposal didn’t make it into the patent reform bill. Maybe we could all write Congress about it early in the process next time.

          Do judges really resent and delay proceedings when they know administrative agencies could render their work moot? I know that cases I follow in ND Cal often see judge Koh and judge Alsup among others creating a deliberate delay in IP cases while they threaten all litigants with unfavorable outcomes if they won’t come to a settlement before trial. I always thought the judges were probably just busy.

          1. Well, the PTO carries out little gatekeeper function in initial prosecution

            Translation: rubber stamp of Accept Accept Accept by the Office is going on.

            the accused have a right to challenge government actions taking their rights away

            Translation: infringers’ rights shall not be denied.

            Congress could fund the PTO sufficiently

            Translation: Owen really does not understand how the patent office is funded, and cannot be bothered to understand this.

            There are many offices, even in the government, where the pace of litigation isn’t considered an unreasonable lightning-fast standard of speediness.

            Translation: … (your guess is as good as mine)

            I wonder that such a proposal didn’t make it into the patent reform bill.

            Not for lack of effort, as such was a proposed part of the AIA. Owen, you might want to recognize why the real intent on these measures to weaken the patent system would make this “No Skimming” notion unpalatable.

            Looking at the translations and overall lack of awareness, Owen’s lemming march to the Malcolm mantra is unmistakable.

          2. Well, Owen, once the patent issues they are property and they are presumed valid. Infringement is a strict liability trespass, like all trespasses to property. I don’t know how one can think that patents are privileges, because an attribute of privilege is that they can be revoked at will by the issuing authority.

            Furthermore, the government’s right to revoke a patent lawfully granted against the will of the patent owner has never been tested at the Supreme Court. I am slightly surprised that Seth Waxman did not point this out in his petition. He just assumed that re-examinations were copacetic.

            You should know that IPR’s take about a year and a half total by statute. They cannot drag on like re-examinations.

            I don’t know much about the Samsung strategy in its lawsuit against Apple, or whether validity of Apple’s patents is a big issue in those cases. But the Fresenius case is exceptional where the defendant begin to try to delay the entire case in court after it had lost on validity. They asked for the trial to be delayed pending re-examination, but only after they had lost. The district court accused them of blatant gamesmanship. Seth Waxman’s brief is very powerful this point.

    2. “the Federal Circuit vacated the entire case because, in the interim the PTO, in a re-examination, had determined the relevant claims of the patent unpatentable, and had canceled the claims after an appeal by the patent owner to the Federal Circuit.”

      Oh. BUUUUURRRRRN. Lol.

      1. 6 laughs as he appears neither to care nor to understand why Ned would feel outrage at this…

        (and will no doubt want to project these symptoms onto others that may well show care and understanding)

        1. Oh nah I tots understand re re. And I also care a smidgen, but not much. I don’t know anything about these two parties, I’ve got no dog in their fight.

          Doesn’t mean it isn’t hilarious that the government would have such a system in place in the first place.

        2. “and will no doubt want to project these symptoms onto others that may well show care and understanding”

          Bandying those words around isn’t going to make anyone think you’re smart brosef, or that I’m exhibiting any “symptoms” of “no disease”.

          1. lol- there you go projecting again.

            I do not ‘bandy’ the words to try to “make anyone think [I'm] smart brosef,” I use the words to indicate what the situation is.

            You seem neither to care or understand the difference.

            1. “I use the words to indicate what the situation is.”

              Well why don’t you tell us a bit more about what “the situation is”? Perhaps you could tell us what disease you think I may have?

            2. Perhaps you could tell us that. You know, while you’re busy trying to have a pseudo-intellectual discussion about a topic that will move attention away from the topic of you. If I were a trained clinician treating you you’d be trying to get out of keeping focused on your feelings in this precise manner.

            3. And look, anon, check this out, someone made a whole section on a website to try to describe OCPD in positive terms.

              Excepting the part about your overwhelming ability to feel for others (due to that being blocked by your psychopathy) it really nails the positive aspects of this condition for you.

              link to giftofocpd.com

            4. Um, that was rhetorical – you have not been paying attention for awhile.

              Start by fixing your reading skills.
              Followed closely, by attending to your propensity to project your own symptoms onto others.
              A third step would be to start treating aspects of law and certain facts as objectively determinable.

              These three things alone should keep you busy (fruitfully) for quite some time.

            5. “Start by fixing your reading skills.
              Followed closely, by attending to your propensity to project your own symptoms onto others.
              A third step would be to start treating aspects of law and certain facts as objectively determinable.”

              None of those are diseases.

            6. With you they are, given your obsessive/compulsive irrational addiction to them, all the while wanting to pretend (in a delusional state) that they are not problems for any type of intellectually honest discussion.

              Just ask your doctor already.

            7. “With you they are”

              Meh, I, and other normal people, don’t really care either way whether they are “with me” or not, I, and other normal people, care about whether the things you mentioned are diseases “to doctors”. And “to doctors” they’re not diseases. Just fyi, that also means that if I did tell a doc about the supposed behaviors noted they would not and could not help me, in fact they wouldn’t even try. Though if they were a therapist they may give me some helpful hints about how to deal with a psychopathic person with OCPD.

              But let’s not let ourselves get distracted. On the other hand, you have a disease (psychopathy) and a disorder (ocpd), which are both, to doctors, quite legit conditions.

            8. I, and other normal people

              LOL – there is your first (and it is massive) mistake.

              You appear to be in some serious denial. Add that to your list of symptoms to discuss with your doctor.

            9. “denial”

              I’m going to presume you’re trying to use that word in the psychological sense, where it is “abnegation” and is a defense mechanism. And what am I defending myself against mr. psychopath?

            10. You seem really touchy on that subject 6…

              I must have hit a nerve with you.

              (for starters, you may want to read up again on that projection problem of yours)

  2. Gee, we better make it harder to enforce patents. :)

    According to various court records and people who have worked with Samsung, ignoring competitors’ patents is not uncommon for the Korean company. And once it’s caught it launches into the same sort of tactics used in the Apple case: countersue, delay, lose, delay, appeal, and then, when defeat is approaching, settle. “They never met a patent they didn’t think they might like to use, no matter who it belongs to,” says Sam Baxter, a patent lawyer who once handled a case for Samsung. “I represented [the Swedish telecommunications company] Ericsson, and they couldn’t lie if their lives depended on it, and I represented Samsung and they couldn’t tell the truth if their lives depended on it.” — Vanity Fair: The Great Smartphone War.

    1. The Vanity Fair article makes it clear that marketplace (i.e., price-to-performance) competition was the best avenue for Apple, but it chose to infringe others’ patents–how many times have we seen Apple being sued by Sam Baxter’s firm?–while claiming that it would engage in “nuclear” war against Samsung. Samsung, quite naturally, delayed the litigation and competed in the marketplace.

      The quote in Vanity Fair from Sam Baxter should start the debate on legal ethics.

  3. This is classic tension between “law of rules” vs “rule of law” and presumes that language can only be used a certain way regardless of context. (Is ‘lift’ a noun meaning elevator or a verb meaning to raise?) Such rigidity could lead to an inventor being deprived of Patent protection for an invention that truly promotes “progress”, hence a violation of patent law policy reflected in the Constitution.

  4. OT from the discussion fodder offered by Prof. Rantanen,

    but very much in line with the lively and energetic continuing discussion on the 1952 Act and that Act’s consequences and intersections with the patent eligibility question of 101, the Court’s excessive grab of power (pushing the violation of the separations of power doctrine) and even involving WHY Congress created section 103 (and stripped the power of the Court to use the tool of common law evolution to define “invention”), Sherry Knowles (pejoratively labeled an industry-shill at the PatentDocs discussion), offers some deeply incitement (and yes, some resoundingly familiar) analysis at

    link to managingip.com

    I invite all to become informed.

    1. anon, good post by Sherry, but she sets up a strawman and knocks down in her post. Let me explain.

      It is quite true that Funk Brothers had a claim that was functional at the point of novelty, thus broadly claim the principle. We today would recognize this problem as being a section 112 problem; and in I think we should urge the Supreme Court not to view functional claiming as a 101 issue. It confuses.

      Then she turns to Myriad and said the issue there was invention. But the problem is, there was no question as to whether the particular DNA claimed was new over the prior art. If that were the only question involved, then her whole article would make sense.

      But if you look to what the court held in Myriad, it rested the statutory basis for its holding on the lack of “newness” in 101. Thus a product of nature, unknown, and therefore not prior art, nevertheless is not new. That is the holding of Myriad.

      Thus her whole piece is a misdirection because she diverts attention from the holding to her strawman.

      1. Ned,

        What you would choose to do is the strawman that you attempt to set up and that was knocked down by the Court itself in Prometheus. The Court actually knocked it down TWICE – first by dismissing the government brief, and then by its emphasis that the Court’s implicit writings of judicial exceptions would not be allowed to be made into dead letters.

        This too is a facet that I have attempted to impress upon you as to exactly whom should be held accountable for so messing up the jurisprudence of 101.

        Further, I have steadfastly rejected your version of Myriad. Your desire to somehow parse “new” into the equation and utilize a time dependence fails scrutiny of the Court’s word in Chakrabarty, as well as is highlighted by the call I made to you on a recent thread to discuss a new mineral just discovered.

        Clearly, your attempt here to completely dismiss ALL merits by saying her piece is nothing but a strawman is suspect.

        I am saddened (but not altogether surprised) that you would seek to avoid any meaningful comments here. You do realize that she held a post within the USPTO, making her viewpoints especially interesting, right?

        1. anon, I don’t have a “version” of and Myriad. I have often quoted you the exact words from that case. The court cited section 101 and “new” as a statutory basis for its holding. Do you want me to again quote that language to you?

            1. No, anon, you have a problem with reading comprehension. Many posters here have noted that problem with you.

              I can quote the facts, the issue and the holding of a cast to you ad nauseum, and still you will sit there in denial.

            2. LOL – Take note of which posters those are Ned: it is the posters that are in direct opposition to my views.

              Tell me about quoting a holding of a case as I am the one that corrected you regarding Bilski‘s holding of abstract as opposed to your quotes of business methods.

              Tell me about quoting a holding of a case as I provide you the Black’s Law Dictionary of holding and show you that the holding in Alappat is as I have always said it is.

              Tell me about Nazomi. Oh wait, you still feign personal ignorance on that one.

              Sorry Ned, but I hold the high ground here. See Sun Tzu.

            3. (and it is actually funny that you claim I am the one with the reading problem as you are the one butchering the reading over on the Hricik side of the blog)

            4. anon, if you are just be willing at times come off your high horse and discuss a case thoroughly, with back-and-forth, on the facts, the issues, and the law, you would get along a lot better not only with me, but with everybody else here on Patently O.

              I suggest you begin generally doing what you are now doing with me in the Hricik thread on the AIA pitfalls – provide examples so we can be on the same page as to what we are talking about.

            5. you claim I am the one with the reading problem

              Lots of people have observed this about you, TB.

              Your problem goes much deeper than “reading comprehension,” however.

            6. you have a problem with reading comprehension
              I suggest you begin generally doing what you are now doing with me in the Hricik thread on the AIA pitfalls – provide examples

              Ned, the Hricik thread is a great example of you employing one of Malcolm’s rhetorical tools: AOOTWMD.

              You accuse me of having reading problems, and yet I had to correct you and your reading errors three times on the noted Hricik thread. Do you really expect me to post in triplicate just to make sure that your reading problems are resolved?

              You accuse when it is you that needs to shape up.

              You want to maintain your views and you want to be catered to in the process. While I do recognize that one catches more flies with honey than with vinegar, the points I have presented have been presented often enough and have been ignored often enough so that any reasonable person could see that my attempting to be more pleasant would be a waste of time.

              Further (and no surprise) , you again fall to the “if it agrees with my line of thought, it is OK no matter what” thinking in that the very worst and most offensive poster on this blog is looked on with admiration by you (you think that person is ‘hard hitting’ and merely shows ‘swagger.’

              Open your eyes.

              Stop thinking that anything or anyone that agrees with your viewpoint is a saint or ‘must‘ be right just because.

        2. exactly whom should be held accountable for so messing up the jurisprudence of 101.

          Should people be able to protect new thoughts by appending a step of thinking about those thoughts to old conventional data gathering steps?

          I don’t know anybody who believes that should be allowed.

          Do you believe that should be allowed?

          Prometheus thought it should be allowed.

          The Supreme Court wisely shut Prometheus down. That was a 9-0 decision and it’s never, ever going to be reversed.

          Are you ever going to stop crying about that? Is Kevin Noonan ever going to stop crying about it? What about Sherry Knowles? What about Gene Quinn? How long do we have to listen to these people crying about the fact that you can’t use patents to protect abstractions and facts?

          Because make no mistake: that’s what they’re crying about. And they’re crying about it for one reason only: $$$$$.

      2. Ned: we should urge the Supreme Court not to view functional claiming as a 101 issue. It confuses.

        There’s nothing confusing about it. “New functionalities” are not eligible subject matter.

        When your claim recites a new function but nowhere describes the new structure responsible for that new function, you’re claiming a new functionality.

        1. New functionalities

          The Red Queen / Humpty Dumpty has so declared.

          Never mind that ‘oldbox’ must be physically and structurally changed to have these “new functionalities” – otherwise inherency would be enough protection under existing patent laws…

          (Remember, claims are to be read and understood by the person having ordinary skill in the art to which the invention pertains – and to that ordinary person, ‘configured to’ is structural language – every bit as much as “effective to” or “dimensioned so that”)

    2. That is a great essay by Sherry Knowles. She points out that the greatest problem is a judge just looking at it and saying whether or not they think it should be an invention without some type of real test.

      1. Night, But she is talking about the Myriad case, the case that had nothing to do about “invention.” Nothing at all. The rubric invention is what the courts used to determine whether differences between the prior art and the claimed subject matter were sufficient to merit a patent. How does one express that in terms of law? The Supreme Court may have been all over the map on is, which is why we codified section 103. But has nothing to do with Myriad, which is not decided on the basis of prior art, but on the basis that even if DNA was first discovered by the patentee, it was not new within the meaning of section 101.

        1. Come on Ned, Myriad is a case where I predicted the outcome, but I don’t agree with the holding. The SCOTUS did define what “new” meant under 101 by determining that isolating a sequence from the DNA molecule didn’t count as new. I don’t agree with the holding and not just for the pedantic reasons that there are other molecules in the isolated form or that the isolated form is a replication of the original sequence. I disagree because I think they discovered something in nature. The vast billions and trillions of different isolated molecules that can be gleaned from the DNA should make the sequence a discovery and certainly the us of the sequence should be patent eligible.

          1. Night, The court made it clear they had no method claims before them. But the sequence itself was a product of nature and therefor not a new and useful composition of matter.

            The Court framed the issue:

            “We must … determine whether Myriad’s patents claim any “new and useful … composition of matter,” § 101, or instead claim naturally occurring phenomena.

            “Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention.

            “Myriad found the location of the BRCA1 and BRCA2 genes, but that discovery, by itself, does not render the BRCA genes “new … composition[s] of matter,” § 101, that are patent eligible.

            “Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule. Myriad’s claims are simply not expressed in terms of chemical composition, nor do they rely in any way on the chemical changes that result from the isolation of a particular section of DNA. Instead, the claims understandably focus on the genetic information encoded in the BRCA1 and BRCA2 genes.

            “[C]reation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring. … As a result, cDNA is not a “product of nature” and is patent eligible under § 101. … [T]he lab technician unquestionably creates something new when cDNA is made.”

            The Court indicated that had the claims been to the composition and not to the sequence, they would have passed 101, just like cDNA.

            Moreover, when considering a claim to a composition, the eligibility of the process for creating it is irrelevant. Perhaps the court could have been clearer on this point.

            We should note here that in Mayo we had the same situation and result — an eligible process (taking a drug, an conducting a blood test) that produced ineligible information. The eligibility of the process was largely irrelevant where the claim was to the information.

            1. The Court indicated that had the claims been to the composition and not to the sequence, they would have passed 101, just like cDNA.

              This version is just not correct.

            2. anon, Lurie had pointed out how the isolated DNA composition is structurally different from the structure in nature. The Supreme Court distinguished this structure, which it seemed to agree claimed patentable subject matter, because the claim did not claim that structure, but the sequence.

  5. Assume the policy expressed by Congress since 1836, and by Supreme Court in support, is that claims must particular point out and distinctly claim the invention, and must not read on the prior art, is there any justification for allowing an applicant, or a patent owner in court, to distinguish the prior art, not by reference to the claim language, but instead by reference to the corresponding structure? In other words, without more, the claim is claiming an old combination where all the elements are known and are known in the combination claimed, and where the sole novelty does not lie in the claim, but in the corresponding structure recited in the specification. Does such a claim, within its four boundaries and not by incorporating subject matter from the specification, distinctly claim the invention?

    The answer is no. The answer is clearly no. The answer is unmistakably no. It has been the congressional policy and the policy Supreme Court for nearly 200 years that the claim itself must claim the invention.

    The better question then is whether In re Donaldson was correctly decided, and whether it should be overturned by taking the issue to Supreme Court or by a legislative fix, particularly by repealing §112(f).

    1. You misplay the fact that inherency is still a valid mechanism to control the thing you want to control.

      Thus, the fallacy you wish to engage in: ‘oldbox’ contains all future improvements as those improvements may come to be realized through the additions to ‘oldbox’ of the manufacture known as software – and at least in part (but extending to the non-software arts as repeatedly shown) is exposed.

      (btw, repealing 112(f) does not stop the ability to employ functional claim language – either at or not at your so called Point of Novelty)

      1. anon, of course it doesn’t stop one from using functional language. 112(f), should not apply to old elements. Applying it to new, does not tell us what the invention is.

        So where does that leave us?

        1. Applying it to new, does not tell us what the invention is.

          You assume a conclusion that you have not proved.

          Just as you attempted to do with the demand for “structure.”

    2. claims must particular point out and distinctly claim the invention, and must not read on the prior art, is there any justification for allowing an applicant, or a patent owner in court, to distinguish the prior art, not by reference to the claim language, but instead by reference to the corresponding structure?
      As I believe you have noted previously, a claim to the function itself can easily be accomplished with a method claim. The justification (or if you would like, the “explanation”) is that there is no reason to deny device claims the same flexibility in verbiage as that provided to method claims.

      Also, as I have noted time and time and time again on this blog, there is oftentimes a blur between what is a structural phrase and what is a functional phrase. A structural term can just as easily be used to encompass subject matter not contemplated by the inventor as a functional term.

      These terms are nothing more than “names” or “labels” we’ve given certain things. A “truck” doesn’t necessarily connote certain structure nor does a “switch.” If you want definite structure, then you could require actual blueprints and engineering specifications. However, blueprints and engineering specifications only identify specific embodiments — they say nothing about the invention itself. To best claim the invention, we don’t use exacting blueprints — we use squishy words — words that were generated based on the structure, the function, or both.

      It may take longer for some than others, but spend enough time drafting claim language and it is easy to see that limiting claim language to just “structural” terms (whatever that means exactly) is as senseless a suggestion as banning all words that include an “e.”

      1. Owen, regardless a label and regardless of whether the term is structural or functional, the bottom line still remains is whether the claim is sufficiently particular so as to identify what the invention is in the claim itself. When invention is in fact the new structure, as opposed to a new method, then that structure should be claimed with sufficient particularity, and not in terms of what it does.

        1. and not in terms of what it does.

          Not exactly right, Ned. Remember that clarity that is important is the clarity to the ordinary person in the art to which the invention pertains.

          You keep skipping over this.

          Also, as I have showed you, the use of functional claiming is permitted under law under 112(a), 112(b), AND 112(f) – separably and distinctly. Quite in fact, ‘configured to’ is structural language, every bit as “effective to” or “dimensioned as to.”

          You keep skipping over this.

        2. When invention is in fact the new structure, as opposed to a new method, then that structure should be claimed with sufficient particularity, and not in terms of what it does
          I see you are doing your clients a great disservice with that approach. I have found, in most instances, the underlying invention lies not in what something “is” but what it “does.”

          You shouldn’t end your inquiry when the inventor states “this is my inventive structure.” Instead, you should ask yourself (and the inventor), what is being accomplished with this inventive structure? Typically, what is being accomplished is an action — sometimes called a function. Once you’ve identified the underlying action, you can then ask the inventor is there any other way to achieve the underlying action. Rarely is there only one way to accomplish this underlying action. If so, you want to craft your claims to cover all possible ways of accomplishing the underlying action.

          Sometimes an invention lies in performing an underlying action (already accomplished in the prior art) with a new structure. If so, then it may be appropriate to focus more on the structure.

          1. Mr. No, The premise of my point was that the only novelty was in the new structure.

            If the invention is in what it does, a method or system claim is appropriate.

            But, when claiming apparatus, claim structure.

            The PTO and the FC have been lax in enforcing the basic principles of the patent law, allowing method claims to be claimed as apparatus — as in programmed computers and CRM.

        3. Ned

          What about when the invention is a method and a software modification to an old machine to get it to preform the method?

          I anticipate that you will say only the method is the invention and that the modified machine should not be claimed.

          But that requires that I sue my competitors customers and not my competitor. Because it is only the customers that perform the method using my competitors product. My competitor only makes a device that could be used to preform the method.

          Wouldn’t you prefer that I sue my competitor?

          If not, you end up with the situation we have, where podcasters are being sued instead of the guy that sold the software than lets them do the podcasting.

          Isn’t that exactly the situation you want to avoid?

          If so, let me claim the modified device functionally (as the exact structure is not the invention, the invention is the function, independent of the exact physical implementation). It doesn’t matter if its a desktop, laptop, ipad, cell phone or single purpose device and its not fair that you try to limit me to one of those.

          1. Les, you sell software that is executed by a computer. The computer does something new under control of the software.

            1. If the something new is a larger machine, like a cell phone, there is a direct infringer of an apparatus claim available, and the software could be construed as a component under 271(c).

            2. If the something new is a process, like driving a car or a molding process, the software could be construed as a material or apparatus for use in practicing a patented process. [Although there might be some ambiguity in this point considering that software is neither a material or an apparatus.]

            Ҥ271(c)
            Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.”

            1. considering that software is neither a material or an apparatus

              Tell me again Ned (or yet for the first time) how does this thing of yours that is not material obtain a copyright?

  6. BREAKING NEWS: Apple Wins $120M In Latest Samsung Patent Battle
    A California federal jury Friday ordered Samsung Electronics Co. Ltd. to pay $119.6 million in damages to Apple Inc. for infringing three of Apple’s iPhone patents — far less than the $2.19 billion Apple said Samsung owed for infringing five patents in the rivals’ smartphone war.

    1. Well this is interesting, isn’t it? Samsung buys a patent and sues Apple. It receives only nominal damages. Should Samsung be entitled to an injunction, because with respect to the infringed patent, it is an NPE. Or is it enough that Samsung is selling competing products?

      1. Neither side in these cases where the patented ‘item’ involves much less than one percent of the product’s value should be entitled to an injunction. (In fact, we’re looking at patents that are collectively well under one percent of one percent of a smartphone’s market value.)

        But Samsung especially with its shady litigation behavior, trolling, and contempt should not be entitled to any injunctions.

        Lucky for both sides, smartphone product cycles are 12 months and litigation takes three or more years. So injunctions are probably moot for obsolescence.

        1. …because an injunction and the right of the patent have so little resemblance to each other….

          No, um, wait.

          Lucky for both sides, smartphone product cycles are 12 month

          Owen, you do realize that this statement actually favors injunctions, right? If it is so easy (and quick) to remove any offending feature, then there is less reason to quibble over the remedy that so MOST clearly matches the right transgressed.

        2. Owen, Lucky for both sides, smartphone product cycles are 12 months and litigation takes three or more years. So injunctions are probably moot for obsolescence.

          This seems argue for granting preliminary injunctions against Samsung since they seem to be a repeat offender, and furthermore since they seem to think that patent infringement is a nuisance they can deal with the few dollars.

          1. “This seems argue for granting preliminary injunctions against Samsung since they seem to be a repeat offender”

            Yes, it does. It adds a weight towards preliminary injunctions. The standard there is rightly steep, though. At least one has been issued in error in the case and needed to be removed while a related ITC case injunction was vetoed by the president, so I don’t expect to see more such injunctions.

            The patents at issue between Apple and Samsung are almost all frivolous, trivial, and issued in error (under §102 or §103). It is best for the industry and the consumers if these cases can be settled without disrupting the industry. These patents are not the kind that “promote the progress,” and blocking innovation for their sake would be very bad.

            That it is lucky for both sides for legal consequences to be so small is a fact, not a legal conclusion.

    2. And here’s another little factoid for our consideration. It appears Samsung denied (apparently in a discovery request) that it had sought indemnity from anybody, but Apple revealed in court that Samsung was lying, and that indeed Google was paying for the Samsung defense.

      Now why would Samsung lie? Could it be that Google had brought late IPR’s and didn’t want the fact that it was controlling Samsung’s defense to be become public knowledge?

      Does anybody know whether Google has filed any IPR’s against an Apple patent?

      Furthermore, I find the ethics of Samsung to be appalling. Anybody else have the same view?

  7. How apropos: today precedential opinions include GE LIGHTING SOLUTIONS, LLC v. AGILIGHT, INC, link to cafc.uscourts.gov where the issue was the construction of the term IDC connector that were known to the art as encompassing a number industry recognized structures. The district court held the interpretation to the disclosed examples. The Federal Circuit reversed because, regardless of the examples, there was no disavowal of the broader meaning known to the art in either the specification or prosecution history.

    Note, the claim was to a combination an nothing indicated that the particular form of IDC connector was important to the novelty. This is a example of a functional definition of known structure that is quite apropos and why 112(f) is a problem. If the claim had been construed under 112(f), the particular embodiments would have been chosen despite the very broad and functional claim that fully intended to claim all versions of the IDC connector.

    Fortunately, by the type the patent was filed, the industry had developed a generic term for the structure that could be used to avoid 112(f). But it also shows why 112(f) is wrongly applied where old structure is being claimed. The authors of the act seem to have assumed that 112(f) would only be used to claim new structure. But, that is hardly where MPF were normally used.

    1. The thrust of the case you offer Ned can be reflected in this statement:

      However, the specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal. The standards for finding lexicography and disavowal are exacting.” (internal citations omitted)

      Your attempt here to over-read (yet again) and make this case be about 112(f) can also be summed up with another comment found in the case: “Such circumstances are not present in this case.

      Your penchant for reading into cases those things that you want to see to support your overall view of the law only creates problems for your own credibility.

      So to your “How apropos” – I respond, Not at all, thank you.

  8. Of course, both Questions 8 and 9 are partially true.

    8- The Supreme Court has held in a line of cases – Morse, Perkin’s Glue, Wabash, Halliburton, that functional claiming raises a host of problems involving 101, 112 1st and 112, 2nd. Notably in Wabash the Court found the inventor, who described his invention of grains “to prevent sagging and offsetting”, as not having set out what he claims to be new. The Court recongized that the use of functional language often attempts to extend the patent beyond the invention when the inventor applies functional language at the exact point of novelty. When the inventor does such his claim is directed to a superclass of the invention and no longer particularly and distinctly claims his invention.

    9 – Wholesale banning of functional language fails to appreciate the times when functional language is validly employed as a shorthand for known structures or for describing the interrelationship of known members. While a claim to a new structure by its functional result may be invalid for a host of reasons (101, 112, 1st, 112, 2nd) those same problems are not implicated in limited circumstances. In Wabash the Supreme Court held that the use of functional language to describe a set of known items by their intrinsic properties was a valid use, which makes logical sense as it would be no different than listing out the well known structures. Similarly, when the novelty of a claim lies within the means of combination of several well-known structures it becomes a necessity to describe the interrelationship with interoperative (functional) language, but this presupposes that the structures are well known.

    1. Since few people seemed to know what point of novelty is, btw, a quick shorthand for the unlearned:

      Applicant claims elements ABCDE in claim 1.

      1 – ABCDE exists in reference A. Reference A anticipates, there is no novelty and no patent can issue.

      2 – ABCD exists in reference A. E does not exist in the prior art. E is the novelty and cannot be claimed in functional language. If neither D nor E existed in the prior art, both D and E would be points of novelty and neither could be in functional language.

      3 – ABC exists in reference A, DE exists in reference B. Reference A mentions that it would be advantageous or otherwise provides textual motivation for adding DE. In this case, barring an unforseen enablement issue, in fact ABCDE exists in reference A, and reference A anticipates. Ref B is unnecessary. This is because it is clear from the context that the inventor of Ref A has posited ABCDE.

      4 – ABC exists in Ref A, DE exists in Ref B. Ref C teaches some of ABCDE, but provides a textual statement or motivation for ABCDE. This is a tricky question, but I think the correct viewpoint is that Reference C anticipates. If not, it reduces to 5 below.

      5 – ABC exists in reference A, DE exists in reference B. No prior art posits the combination of ABCDE. The novelty of the claim lies in the combination of ABC with DE, what is often expressed a motivation to combine but is, in fact, greater than that. In this situation the instant applicant is adding the fact that ABC and DE can work together to the store of knowledge, and the question becomes whether that motivation is an obvious one.

      In situation 5, any functional language within the elements ABCDE which discusses the interoperability of ABC and DE is allowable.

      Notice the difference between 2 and 5. In 2, the language purports to describe a previously unknown structure. In claim 5, the language purports to further explain the structure that results in combining two known structures.

      Examples:

      Claim 1. An apparatus comprising: a bike; duct tape; and my new widget; wherein my new widget directs a beam of light.

      Improper. What applicant has invented is a new means of directing a beam of light. He cannot claim all means of directing a beam of light, as he is not in possession, nor has he enabled, that full scope. Further, that scope does not particularly describe his actual invention.

      Claim 2. An apparatus comprising: a bike; duct tape; and means for directing a beam of light.

      112, 6th controls, and we look to the specification for a structure.

      Claim 3. An apparatus comprising: a bike; duct tape; a flashlight; wherein the flashlight is mounted to the bike across the handlebars such that the flashlight may rotate in a restricted manner to shine a light within 25 degrees of straight ahead.

      In this case the functional language is used to give further structure to the combination – the flashlight can no longer be mounted anywhere (as it could have been with just the first three limitations). Proper. This is functional language at the combination. Even if this is the point of novelty (i.e. a bike, duct tape and a flashlight all preexisted, but nobody ever mounted the flashlight in the manner described before) this claim would be valid, because the functional language describes the combination of known structures, and is not a vaguery of a new structure.

      Note that attempting to use functional language in a similar, yet improper manner results in a significantly different and invalid scope:

      Claim 4. An apparatus comprising: a bike that can shine a light within 25 degrees of straight ahead.

      Improper. This claim is directed not only to applicant’s invention, but to all possible means of achieving it regardless of how different, and is no longer describing the applicants invention.

      1. Random, legally correct under current law.

        However I would draw your attention to

        “Claim 2. An apparatus comprising: a bike; duct tape; and means for directing a beam of light.

        112, 6th controls, and we look to the specification for a structure.”

        If the means for directing a beam of light is old structure, such as a flashlight, I have no dispute with your statement. But if the means for directing a beam of light reads on the prior art before construction, the claim itself fails to define the invention as one has to figure out what part of the specification is new. This is the system we had before claims, and the whole point of claims was to prevent obviate the resort to the specification to determine novelty.

        This is why I strongly contend that Donaldson was incorrectly decided, and further I contend that MPF cannot be used to claim novel structure.

        The SOONER the PTO gets behind this the better. One way or another, Donaldson needs to be reversed – and I think many of us would support a legislative fix to simply remove 112(f) as it confuses, seems to permit the impermissible, applies where it should not, and does not focus on the problem: the impermissibility of functionally claiming the novelty.

      2. the functional language describes the combination of known structures, and is not a vaguery of a new structure
        It could also invoke new structure as well. Someone can come along and invent a new way of “wherein the flashlight is mounted to the bike across the handlebars such that the flashlight may rotate in a restricted manner to shine a light within 25 degrees of straight ahead.”

        Someone could also invention an entire new structure that corresponds to (i) the bike, (ii) the handlebars, and (iii) a flashlight. As such, what the claims cover can be totally different than that contemplated by the inventor.

        1. Mr. no, in the case of the new invention of “wherein the flashlight is mounted to the bike across the handlebars such that the flashlight may rotate in a restricted manner to shine a light within 25° of straightahead,” hopefully, the patent office would require the applicant to put that new structure into the claim.

          Consider, revising claim 3 as follows. The first inventor, the one with the duct tape, claims,

          Claim 3. An apparatus comprising: a bike, having handlebars; a flashlight; and means for mounting the flashlight to the bike across the handlebars such that the flashlight may rotate in a restricted matter to shine a light within 25° of straightahead.

          Now consider the second inventor who attaches the flashlight to the handlebars using large rubber bands. He claims:

          Claim 3. An apparatus comprising: a bike, having handlebars; a flashlight; and means for mounting the flashlight to the bike across the handlebars such that the flashlight may rotate in a restricted matter to shine a light within 25° of straightahead..

          Now consider the third inventor who attaches to flashlight to the handlebars using a special bracket that attaches both to the handlebars and to the flashlight. He claims:

          Claim 3. An apparatus comprising: a bike, having handlebars; a flashlight; and means for mounting the flashlight to the bike across the handlebars such that the flashlight may rotate in a restricted matter to shine a light within 25° of straightahead.

          You see a pattern here, I hope. Each of the claims is identical and fails to inform one of what the invention is. It hardly complies with section 112(b). And yet the Federal Circuit unanimously, in the case of In re Donaldson, authorized this very travesty to take place.

          1. hopefully, the patent office would require the applicant to put that new structure into the claim
            Your ‘hope’ is not the law. I hope you don’t counsel your clients otherwise.

            Of course, if you were in the trenches everyday, you wouldn’t even make such a statement.

            Each of the claims is identical and fails to inform one of what the invention is
            Hardly. You really need to contemplate what is the difference between 112 2nd and 112 1st. A claim describes the boundary between patentable and unpatentable. While that boundary may include describing the invention itself, it isn’t absolutely necessary.

            Did you ever notice that the phrase “written description of the invention” is in the 1st paragraph but not in the 2nd paragraph? Moreover, did you ever notice that the phrase “written description of the invention” refers to the specification and not the claims? From all your comments, it appears that you haven’t.

            yet the Federal Circuit unanimously, in the case of In re Donaldson, authorized this very travesty to take place
            Perhaps the judges at the Federal Circuit who authored the decision and all the judges thereafter have a firmer grasp of statutory construction than you?

            1. Mr. No, I would never, ever, claim novel structure using MPF regardless of Donaldson because I continue to believe such claims are invalid. Eventually, someone is going to take the issue to the Supreme Court where the Federal Circuit will be reversed one more time.

            2. And, you should note, that RandomGuy never responds to my remarks on Donaldson. By that I can see that he shares my views and probably is trying to get the powers that be to do something about that case.

            3. I would never, ever, claim novel structure using MPF regardless of Donaldson because I continue to believe such claims are invalid.
              If you think your invention is limited to a specific “novel structure,” then you need to work harder in getting your clients broader claim scope.

              Eventually, someone is going to take the issue to the Supreme Court where the Federal Circuit will be reversed one more time.
              When will that be? 30 years from now? Work with the law you have — not the law you wish you had.

            4. Oh no, “Ned — I see you are avoiding my comments about the 1st and 2nd paragraph of 35 USC 112. Why?”

              I’m sorry, Oh no, but the statute is clear on this. The claim itself must “particularly pointing out … the invention.”

              It also separately requires “distinctly claiming.” You seem to think it only requires the latter.

              The written description as well must describe the invention. That the requirements are overlapped is important. There are a lot of overlapped requirements in the statute.

            5. The claim itself must “particularly pointing out … the invention.”
              … which is different from the written description of the invention. Pointing out something is not necessarily the same as describing it.

              Also, why should we be able to do something with a method claim (i.e., claiming something by function) that we cannot to with a device claim? What policy justification is there for that?

            6. “Someone could also invention an entire new structure that corresponds to (i) the bike, (ii) the handlebars, and (iii) a flashlight. As such, what the claims cover can be totally different than that contemplated by the inventor.”

              Which is why similar functional language to describe the relationship would be okay. I used truncated claims in my example.

              “Of course, if you were in the trenches everyday, you wouldn’t even make such a statement.”

              The patent office can only teach its examiners to imperfectly follow rules set out by the FC, which itself is doing a poor job of accurately applying the law. Don’t confuse what you can get by an examiner with what is sufficient under law.

              “Did you ever notice that the phrase “written description of the invention” is in the 1st paragraph but not in the 2nd paragraph?”

              The second para does require you to distinctly claim the invention. If my specification is about apples, a claim that correctly describes an orange still violates 112, 2nd.

              “And, you should note, that RandomGuy never responds to my remarks on Donaldson.”

              I’m not familar with it, but the creation of the law would disagree, right? In Halliburton it was a new structure, and Congress authorized claiming in in 112, 6th, as the point of that paragraph was to reverse the Supreme Court on claim construction there. Unless your argument is that the words do not perform Congress’ intent?

            7. RandomGuy,
              “And, you should note, that RandomGuy never responds to my remarks on Donaldson.”

              I’m not familar with it, but the creation of the law would disagree, right? In Halliburton it was a new structure, and Congress authorized claiming in in 112, 6th, as the point of that paragraph was to reverse the Supreme Court on claim construction there. Unless your argument is that the words do not perform Congress’ intent?

              The statute seems clear that Congress intended authorize means plus function in combination claims, which clearly identifies that the invention must be the combination. When the novelty is a new element, and the balance of the claim are nominal elements, even though it appears to be a combination claim, in essence the claim is a claim to a function. That is why Frederico said the new statute of functional claiming does not authorize single means claims.

              So Congress overruled Halliburton to the extent that a new combination could be rendered invalid under the doctrine of “functional at the point of novelty.”

              In re Donaldson overruled In re Arbeit and another case based upon its construction of §112(f). The patent office had construed the means plus function element to read on any structure that could perform recited function under the rubric that it could not issue a claim that literally read on the prior art. The Federal Circuit overruled, construing the claim to include the corresponding structure. With that construction, the claim defined over the prior art. But the problem was, of course, the claim without that corresponding structure was indefinite because it did not identify the novelty.

              In reaction, the ABA IP section called for the repeal of §112(f) on the grounds that, under Donaldson, it authorized indefinite claims because two claims could be word-for-word identical but still be claiming different inventions depending on the nuances of the corresponding structure, and this simply was not consistent with the requirement in the statutes since at least 1836 that claims particular point out and distinctly claim the invention.

    2. Good response man, but I don’t see much in there about how the proposed amendment is consistent with the policy considerations underlying patent law. I’m not even sure which policy considerations you’re referencing in your answers. If you’d have been more clear on which policy considerations you’re leaning on that would have been better imo.

      1. Translation: 6 likes the ends but does not understand the means.

        Pretty soapbox, but other than merely repeat your opinion and some rather high level abstractions on novelty, you have only assumed the conclusion you want to have without providing any support other than “because I say so.”

        You continue to neglect the fact that functional claiming – the use of functional language in claim elements – is perfectly allowed under the changes in law written by the branch of the government allocated authority to write patent law – Congress. These changes in 1952 allow such use of functional language – and critically – do not constrain this use to the attempted canard of “Point of Novelty,” nor is the form of the use limited to 112(f).

        112(f) is still written in permissive tones.
        Functional language in claims is still permitted wherever in claims (that are still to be read as a whole) per 112(a) and 112(b).
        Claims are still to be read in light of the specification and in the understanding of a person having ordinary skill in the art to which the invention pertains.

        Bottom line: there is no problem with indefiniteness caused by the use of functional language in claim elements if in the art to which the invention pertains the person having ordinary skill would not find the claim indefinite.

        WAY too much contortions going on here to eliminate a perfectly legal form of claim drafting and not understand what the Act of 1952 actually put in place.

        1. I just asked the man to be more specific about what which policy underlying the patent laws the instant proposed amendment would be in line with or not in line with.

          That is to say, I’m not obsessed with what the laws are currently like yourself and can discuss things other than that.

          1. Translation: anon is right again – must be that he really knows this stuff (so 6 is compelled to attempt some type of denigration).

            Of course, 6 is oblivious to his own afflictions. That, or he is doing that projection thing again.

            1. Look anon, I didn’t mean for the previous post just now to be “denigrating”. What you have is a legit clinical condition brosef, I don’t mean to put you down when discussing it. In all honesty though it is very exasperating dealing with a person with your condition on the day to day, apparently its even this way for clinicians.

              You exasperating me may be leading to me being a little overly hostile when responding to a post that appears, subjectively to me, to just be posted for little more than to annoy me. I certainly have no interest in playing “chase anon around while he gleefully tries to control me into discussing a topic he has a huge interest in: what he sees the law as being currently”. I’m sorry brosef, I just don’t. Especially not when the attempt at controlling me into discussing that is so blatant. I suggest the guy could be clearer about x about x and you bring up a totally different subject y that you want to talk about, though you do so in reply to my post in a ploy to get me to talk to you about y. That sht be annoying partner.

              But apologies for being overly hostile in my response to your behavior that is part of a legitimate condition. It is hard for me to cut you infinite slack just because you have a condition, so do try to be understanding. I also have limited experience in dealing with folks with mental conditions.

            2. I didn’t mean

              Um, sure…
              6, your tricks are more than just a bit stale.

              Have you checked out your projecting syndrome thing yet?

              I’m not sure you understand that you are ranting when nothing is there to rant about (you appear to be fixated back on this odd ‘control’ thing of yours)/

            3. “6, your tricks”

              Sigh. It’s really very difficult to deal with you and your mental condition.

              Seriously, anon. No tricks. No “deceptions”. Nothing of the sort is going on here. Only 100% complete earnestness.

            4. So you say, as you march up lemming hill with your belief system intact and your refusal to acknowledge law and facts that go against that belief system.

              Sorry 6 – thou protests too much.

      2. The policy considerations are those on which 112 is established, as that’s really what functional claiming injures. Congress requires a quid – enablement, description, notice of what is claimed, and functional language prohibits it from occurring (there’s also a 101 issue sometimes).

        As for the reasoning as to why functional language harms the policies of 112, that’s easily found within any of the cases that took up the issue. Wabash is my go-to case on it and it has a few paragraphs about the harms of functional language.

        Going the other way, when functional language does not improperly expand the scope it is no different than using different words to get to the same place, and we traditionally have allowed inventors to use whatever words they want.

        “These changes in 1952 allow such use of functional language – and critically – do not constrain this use to the attempted canard of “Point of Novelty,” nor is the form of the use limited to 112(f).”

        You’re factually incorrect, because certain types of functional claiming were allowed prior to 52, thus the proper way to interpret the permissive language in 6th is not as creating a new general right to functional claiming, but rather to say “You must use functional claiming in the limited manner permitted by the court previously, or you may avail yourself of the following.”

        Pre-52: Limited functional claiming okay, most functional claiming improper.
        Post-52: Limited functional claiming okay, means-plus with structure in specification okay, most functional claiming improper.

        NOT Post-52: All functional claiming okay, means-plus with structure specifically okay.

        The latter interpretation would be ridiculous despite your factual misstep because 112, 1st remained the law, and functional claiming creates scope of enablement and description issues, making it impossible to categorically allow functional language.

        1. Random Examiner – you are clearly wrong in the law and you refuse to understand that the use of functional language is well permitted outside of ONLY 112(f).

          Please incorporate this into your understanding.

  9. Q9. This statute is inconsistent with the policies underlying patent law for t least two reasons. First it may have some small impact on the disclosure of legitimate inventions due to applicants subjectively feeling as though they will be unable to secure what they consider “effective protection” of their invention due to the ease of designing around in those areas. Second it would be inconsistent with the “policy” of keeping patent applications short since many applicants may attemp to procure what they subjectively consider adequate protection by using elements in mpf format while listing out a huge number of things in their specification. Though the likelihood of either happening in any appreciable amount is quite small, these appear to be the largest concerns.

    1. lol – points off for lame writing “subjectively feeling” that poorly hides the influence of the belief system overpowering an objective view of the issue.

        1. Asked and answered, 6 – pay attention, as my views on these questions have been made known long before this thread.

          1. Yes, but here we have a word limit so that you’ll have to try to be persuasive. And in question 8 your task is to advocate for the position you don’t normally. If you were a lawlyer you’d know this and be able to accomplish it. You don’t always get to advocate for the side your personal views fall on.

            1. so that you’ll have to try to be persuasive.

              LOL – Let me share with you a little fact: Being right is far more persuasive than adhering to a word limit.

              Word limits remind me of something my pal Einstein said: “Everything should be made as simple as possible, but not simpler.

              your task is to advocate for the position you don’t normally

              Really? You might take heed of what the Prof. directly stated at 3.1 (““It’s not to [] take a position one way or another“).

              If you made it into law school you would know this. As it is, you seem to be perpetually unable to get out of your own way and your belief system (and like here, project that inability to someone else).

            2. “Being right is far more persuasive than adhering to a word limit.”

              Well yes, if you have OCPD.

              “Really? You might take heed of what the Prof. directly stated at 3.1 (““It’s not to [] take a position one way or another“).”

              Yes, he (the prof) is not taking a position either way, he wants the students to do so. Specifically, he wants them to pretend to take both positions and put their best feet forward for each.

              Look, if you don’t want to do it then fine. You could have just said so.

            3. Well yes, if you have OCPD

              LOL – and if you do not.

              Your obsession with the passive/aggressive psycho babble has long lapsed from its fifteen minutes of amusement.

              What the professor is doing is likewise not at all related to the post (your reading skills are atrocious – must be that belief system of yours getting in the way again).

              As far as not doing it, what part of my posts at 7.1.1.1 and 7.1.1.1.1.1 did you not understand?

            4. “Your obsession with the passive/aggressive psycho babble has long lapsed from its fifteen minutes of amusement.”

              I told you (and especially others trying to talk to you) that I’d keep you appraised when your symptoms rear up. It’ll help them know when to respond and how anon. It is just to mitigate the negative effect your condition brings to the blog.

    2. 6. If the policy is that a claim must be particularly point out and distinctly claim the invention, and must not read on the prior art, then section 112(f) is by itself inconsistent with the patent law as codified by Congress since at least 1836, to the extent that the patent office and the Federal Circuit both allow it’s functional definition to read on the prior art.

  10. Q8. This statute is consistent with the policy considerations underlying patent law for at least three reasons. First and foremost it promotes progress in the useful arts by adequately establishing protection for wht patent applicants invent and providing adequate room for others to invent, produce, and patent their own way of accomplishing the functionality. Second it promotes claims providing notice of the scope of the claim since it would require that at least some idea of what structures are claimed be provided via the first sentence. Third this statute encourages people to actually invent things rather than simply scribing down functions they think would be really cool.

    1. Points off for assuming that pure structural claiming is not only desired, but required, and not recognizing the policy drivers that existed for Congress to act and make that so.

  11. Dennis, nice try, but consider method claims. Method claims are always express functionally. This clause would make it impossible to claim methods.

    A claim is functional with respect to apparatus when it claims what it does, not what it is, or claims the result it achieves as opposed to what it is.

    A claim is functional with respect to methods when it claims the result it achieves as opposed to acts it performs. An act is what it does.

    Thus functionality with respect to method claims and functionality with respect to apparatus claims are two different things and one has to carefully distinguish between them.

    Secondly, §112(f) should have no place where the element being claimed is old. The concern for indefiniteness is where the novel structure or act(s) are being claimed functionally. Therefore, the only possible place for §112(f) is where the functional element is at the point of novelty. But if you allow a claim element to be functional at the point of novelty, it is inherently indefinite even if you have the construction clause. Therefore, we need to repeal §112(f).

    Thus I would revise §112(f) as follows: strike §112(f) in its entirety, and replace it with a statute along the lines of the following, perhaps in 103,

    The novelty of a claim to an apparatus, composition or article of manufacture may not be expressed in terms of its function, properties or the results it achieves. The novelty of a claim to a process may not be expressed in terms of result it achieves.

    1. My apologies Jason. My answer is an answer to both questions.

      I must add though I think we ever wrote the question is really confused.

    2. A claim is functional with respect to apparatus when it claims what it does, not what it is, or claims the result it achieves as opposed to what it is.

      Ned, I am sure that you realize that those are two different types (functions versus results) of functional claiming, right?

      1. Anon, yes, there is a difference between claiming functions and results.

        But I want to make the point very clear that functional claiming of old elements of a combination, where everybody knows what the structure is, should not be a problem. The novelty is not in the details of the old structure. Any structure that generally performs the function should be embraced within the claim because the invention is not in that structure but in its relationship with other structure.

        This is what caused the controversy in the Halliburton case because every element in the claim was old, and the novelty was in the combination – at least as so held by the lower court. The Supreme Court said it was going to decide the case based upon that assumption. But once they said that, the subsequent discussion made the case completely inexplicable because the Supreme Court went on to basically hold that the novelty was not in the combination, but in the one element. This predicate was essential for its holding. Thus Halliburton was confusing.

        Viewed in this light, the new statute regarding functional claiming was intended to clarify that all elements of a novel combination may be expressed functionally. But the novelty has to be in the combination, and not in the one element. This view of Halliburton was confirmed in Faulkner v. Gibbs. Novel combinations where the elements are functionally claimed presents no problem of definiteness, or of written description or of enablement.

        Properly understanding the Halliburton case informs what was enacted. Thus, it seems clear, that if the novelty has to be in the combination and not in any particular element, then one should not be able to distinguish the prior art based upon the one element, functionally expressed, as opposed to the combination. I would hope you would agree with this.

        1. Ned,

          I have previously addressed your incorrect views am over-reliance on pre-1952 cases (including pointing out to you your over-reading of Frederico).

          I see nothing new in your response here.

          1. anon, whatever. But you really need to appreciate that you do not have a clue as to what you are talking about and are merely substituting mantra for understanding.

            1. Your post at 5.2.1.1.1 is rejected in its entirety, as I have met your every supposition and shown you (repeatedly) where you are in error.

              To you blandly claim “do not have a clue” is beyond preposterous.

            2. anon, not really. Your posts on Halliburton repeat ad museum the very same mantra that Halliburton was abrogated. Since you never discuss the content of Halliburton, your statements are whole cloth, out of context, mantra.

            3. Halliburton was abrogated.

              There be the difference Ned. I under stand that and you continue to try to use (and bootstrap through Faulkner, another pre-1952 case) an abrogated case.

          2. anon, have you ever read Faulkner v. Gibbs? Do you realize it supports the point you have often made that there is no functional claiming problem when the novelty is in the combination?

            1. As I have already pointed out to you Ned, your attempts to bootstrap with Faulkner fail because Faulkner was a pre-1952 case.

              Let it go already. Embrace the change in law that the 1952 Act brought,

        2. I don’t agree with the way you are trying add this pon point and other parts of your analysis. But, I think you have done an excellent job bringing out all the issues.

          The reason I am convinced most of what is written is paid for by anti patent groups is that there seems to be no effort to try and get to the real issues and discuss them.

          1. Night, agreed. And, I might add, the Federal Circuit does not do a good job at figuring things out.

            But I must say, that I was highly impressed by Akamai’s brief in argument in the Limelight case before the Supreme Court. That argument and that brief was a tour de force, arguing both law and policy, and making it quite clear that the interpretation of direct infringement given by the Federal Circuit was completely wrong, and wrong primarily because the court did not thoroughly consider the issue, the statutory construction, and the wealth of case law that supported the notion that infringement of a method claims included joint infringement, where more than one actor contributed to the infringement and where there was joint and several liability for all actors.

            You will note, that not one single Federal Circuit case has ever look at Halliburton itself to determine why the patent bar was so upset about that case. They have never noted, that I can see, Faulkner v. Gibbs, that clarified Halliburton, and limited it. The Supreme Court made clear that it had no problem at all with functionally claim elements claiming old structure in combination claims, or where the novelty was in the combination. And why? Because as I said, when a novelty is not in the particular structure of the old element, but in its relationship with other elements in the combination, then one need not and should not limit the claim to the corresponding structure, but should allow the claim its full scope – it should cover all structure that carries out the recited function.

            Thus, in the final analysis, we should not have anything like section 112(f) in the statutes because it is not limited to new elements, and I don’t believe anyone ever intended it to apply to old elements with such a narrow construction.

            1. Ned, again you leap boldly off the path and into the weeds with your reference to an abrogated case and your attempt to bootstrap to that case through another pre-1952 case.

              Where do you get off trying to use case law you know (or should know) is not valid, and ignore the very words of Congress (and, as I have shown you – your own proffered words from Frederico) that Congress did not merely codify the law when it took the actions it did in 1952?

              The full scope of the claim is governed by 112(f) IF the applicant so chooses to invoke that section, and the full scope is STILL there (through 112(a) and 112(b)) using functional language in the claims – at or not at your so-called Point of Novelty if the claims, read as a whole, and in light of the specification, are not indefinite to a person having ordinary skill in the art to which the invention pertains.

              You fight this rather odd battle of wanting to eliminate 112(f), when what you really seem to want to crab about is allowed under law regardless of whether 112(f) exists or not.

            2. NWPA,

              Ned is guilty of a lack of critical thinking – or in the alternative, refusing to engage in critical thinking due to knowledge of where that critical thinking inexorably leads.

              He applies a gloss-test of “does it appear to match my agenda.”

              If it does, then it is accepted (no matter what it is) and it is the stuff of Einstein (the dubious example being 6′s ‘legal prowess’).

              If it does not, then it must be a game, a diversion, a trick, something not worth applying any effort to overcome a personal lack of understanding.

              As we have noted, the reason for this is obvious. Ned is on this modern electronic forum, this mode of social media, in an advocacy role for third party interests. Note, he is not technically paid to blog, but without doubt (or a clear, simple and honest affirmative denial from Ned, the reason he refuses to fully join conversations and take those conversations to their logical completion and result is abundantly and unmistakably clear.

            3. Defend Lemley’s paper? You have to be joking.

              I have often said that he is way off base in that paper in any number of different ways. He doesn’t seem to understand a lot of the basics of patent law or why the law is the way it is. Moreover, he is a source of a lot of confusion in the law today particularly his little bit about divided infringement that was adopted by the Federal Circuit in BMC Resources. Lemley is causing a lot of harm to the patent system, and you and I will agree in this.

      2. anon, I have a very long post in reply discussing the Halliburton case that has been held up for moderation. I have not idea why such a post would be held up.

        1. Halliburton was wrongly analyzed. The novelty was in the combination of elements. The one element was new and that should have been a separate patent application.

          You keep reading Halliburton wrong Ned.

  12. The problem what connotes structure. This is something that a PHOSITA needs to answer and not judges. Does a hinge connote structure? The fact is that seemingly functional terms used in claims actually –to a PHOSITA — connote many different structures that are known to perform the function.

    Frankly, this functional nonsense is nothing more than an attack on the patent system with intellectually dishonest assertions being made.

    1. Does a hinge connote structure?
      Does a switch? Does a light? Does a radiator? Does a modulator? Does a copier?

      The only people who would seriously (not to say that Dennis is seriously suggesting anything) suggest a thing has not written claim language before or is simply anti-patent.

      Suggesting such a thing completely fails to recognize that the English language is rife with examples where functional terms become structural terms and structural terms become functional terms.

      A switch, described, as a function is no more indefinite than a switch that describes a device.

      1. Well read Prost’s dissent. I think the only conclusion is that either she is unforgivably ignorant or anti-patent.

      2. Ohno, I think the point is this, if the claim term is structural, and that structure is known, the issue is not one of definiteness, but one of enablement.

        Ditto functionally referring to known structures.

        The only problem is where one claims, for example, a widget, and one does not know what a widget is except by reading the specification. While the claim term is supported, the claim itself does not describe the invention.

        1. The only problem is where one claims, for example, a widget, and one does not know what a widget is except by reading the specification
          “the purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant. A claim is not ‘indefinite’ simply because it is hard to understand when viewed without benefit of the specification.” S3 Inc. v. nVIDIA Corp., 59 USPQ2d 1745 (Fed. Cir. 2001).

          1. Note that this is NOT just a software or computer arts related concept.

            We agree that the claims are not a self-contained explanation of every step. That is not the role of claims.

            As noted recently on related threads, the art fields of medicines and baby car seats contain claim terms that are not a self-contained.

            Too many people are trying too hard to make 112 something that it is not.

            Things are not made for the sake of words, but words for things” 384 F.2d 391 at 397.

          2. I’m sorry oh no, but the purpose of claims is to put into the claim what the invention is. One cannot simply refer back to the specification and say I claim the invention described in the specification.

            Thus if one claims a widget, but a widget is unknown to one of ordinary skill in the art, one essentially is referring to the invention described in the specification; but a specification normally does not give one a clear idea of what the invention is down to the nitty-gritty, because one is including in the specification both old and new matter, and how to make and use.

            I will concede there is a possibility that if the widget is defined in the specification to be something particular, then the claim to the widget may pass muster However if the widget is defined in the specification to be any structure that achieves a particular function, the claim to the widget is not particular.

            1. Ned,

              Once again you are over-reading, and under-understanding.

              You really must read the claims as would a person of ordinary skill in the art to which the invention pertains, AND in light of the specification.

              You keep on wanting to forget these important aspects in your chase of your agenda.

            2. No doubt, anon, but there is another basic principle is that one cannot import into the claim structure that is not there.

            3. Nice strawman Ned.

              But you seem to neglect the fact that we are not discussing “what is not there,” because your attempted fallacy of what being there means.

              You attempt to end-run what Congress did in 1952 with some notion that it is ONLY in 112(f) that functional claiming is allowed. That somehow “structure” is the be-all and end-all when it is not, when it is very much (instead) determined by the one of ordinary skill in the art to which the invention pertains, informed by the specification – yes, the specification informs at 112(a) and 112(b) too.

              Your desire to elevate the form of “structure” is just not what the law is.

              Being there in the claim ALSO includes being there through any functional language in the claim.

              As noted, the notion of inherency does not go away – and is enough to protect what you seem is at the bottom of what you want to protect.

              This then leads back to ‘oldbox,’ and the FACT that evne though ‘oldbox’ may have been built to be easily changed with future configurations, the new inventions that arise from those future configurations just are not already ‘in there.’

            4. in other words, I will repeat the volunteered admission of a certain individual that “configured to”IS structural language.

              No less than “effective to” or “dimensioned so as to.” Language from non-software or computer-related arts – language from outside the confines of 112(f) – language that represents the law as it is today stemming from what Congress did in 1952.

    1. Equal weight for both questions; grading is based on whether answers are logical and grounded in established policy rationales. The goal of this question is to assess students’ ability to recognize the consequences of proposed statutory language and their understanding of the relevant policies. It’s not to develop a perfect statute or to take a position one way or another on the issue of functional language.

      1. Thanks Prof. Rantanen.

        Would you give bonus points to those who know and understand the 1952 Act’s legislative record, or conversely, and does the absence of any information from the current congressional record in the provided questions lean away from that understanding?

        relevant policies” being an exceptionally broad term… not taking a position seems a bit difficult.

        1. Policies underlying the 1952 patent act (and why 112(6) was included) are definitely relevant to answering this question.

          1. Excellent, so the distinction that exists in that functional claiming is not in fact limited to 112(f) would be recognized in your rubric, right?

            1. DanH,

              Your question indicates that you missed the point of the exchange.

              Take your time and re-read the discussion (keeping in mind that several regular posters do not seem to comprehend just what is the law today).

          2. Jason, a post of mine (reply to anon at 5.2) explaining Halliburton and the purpose of the new statute is being held up for moderation. Please fix that.

            1. Halliburton was wrongly analyzed. The new thing was the method combintation that also included something novel. There should have been two patents.

            2. Night, you are saying that the novelty was in the combination, and, frankly, that was the record below, and the Supreme Court said they were agreeing with that proposition.

              Then they went off on a lark, essentially repudiating the findings they said they assumed were correct.

              That is why Congress passed 112(f), because of the confusion caused by Halliburton.

            3. the confusion caused by Halliburton

              And still be caused to those who refuse to recognize that that particular case was abrogated.

              Give it up Ned, it’s gone.

  13. “(f) Element in Claim for a Combination- 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, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. ”
    How would the proposed addition to only 112(f) [above] change the other present 112 requirements when it is limited by “that does not comply with THIS subsection?” Furthermore, since the amendment would only apply to 112(f), it would only seem to apply to claims held to be “means-function” or “step-function” claims, which are now rarely used in the U.S.?

    1. Paul, as anon notes elsewhere, 112(f) is optional and was intended to be optional, implying that functionally expressed element that did not have definiteness or enablement issues was OK. The additional language is inconsistent with the 112(f) and makes it all but incomprehensible. When a claim element is functionally expressed and does not invoke 112(f), it may be indefinite, but not because it does not comply with 112(f), but because it effectively claims the invention as a result.

      1. Ned,

        Kudos – your view here was articulately and concisely stated.

        Unfortunately, you still rely on abrogated cases and over-reading to create the legal support for your view.

          1. (sigh),

            Ned, read the post again – try to understand that “agreement” is not in the post, while a compliment to you is still provided.

  14. First, it is not possible for an element under 112(f) to be expressed as a function.

    112(f) is directed toward claims to combinations that elements expressed as —-means or step for —-performing a specified function.

    Second, it is not possible for an element expressed as [means for performing] a function not to comply with this subsection.

    Perhaps the drafter means for which the specification does not describe corresponding structure, material, or acts ?

    If the people that are drafting these laws can’t be clear about what they mean, I don’t understand how they dare get all high and mighty about claim language.

    1. The proposed amendment isn’t addressing “an element under 112 f” . It is adressing all functionally claimed elements other than the ones covered by the first sentence in the amended statute. All of em.

      1. The what does it mean “that does not comply with this subsection”?

        I read that as, any element expressed as a function that is not a means plus function or step for function is not a valid claim.

        That means that they want to amend 112(f) to make methods unpatentable, doesn’t it? Every step in an method claim is expressed as a function that is not a means or step for function, isn’t it?

        1. Nah, should be, any element expressed as a function comma, that doesn’t comply with this subsection comma shall be considered in violation of 112 b. In other words, this amendment makes 112 6th MPF format the only way you can use any sort of functional language in your claims. Any other use of any type of functional language outside MPF and you get a 112 2nd.

        2. “That means that they want to amend 112(f) to make methods unpatentable, doesn’t it? Every step in an method claim is expressed as a function that is not a means or step for function, isn’t it?”

          No and no.

          Methods are a series of steps, not necessarily “functions”. And here we’re not talking about method step limitations, we’re talking about hitting functional limitations with 112 b.

          1. 6, your observation assumes an implied definition of “function.” But as we see, what function means is contextual.

            If we are going to uses such a term, we need a definition of what it means in 100 so that there is no ambiguity.

            1. Inventions exist apart from language. In the structural claim, “a box with a top having a handle,” is the handle functional? Implicitly the noun implies that a human hand can grasp the box by the structural element.

              The SC is fretting over “spaced relationship” of electrodes on the hand grips of an exercise device. Without the functional relationship to the human, the term is ambiguous. Congress cannot make good law to address the scourge of the alleged “patent trolls.”

            2. Richard, you might want to review the file history in the reexamination to see what the Nautilus case is really about. It is not about “spaced relationship” per se.

          2. add A to the solution;
            stir the solution.

            Thats OK, I guess

            add A to the solution;
            stir the solution until A dissolves.

            That’s OK too right?

            add A to the solution;
            stir the solution so that A dissolves.

            Functional Language but in step for form?

            dissolve A in the solution.

            Violation! Loose your patent. Functional but not in “step for” form!

            Yeah, that makes sense.

            1. “dissolve A in the solution.”

              Sounds more like a method step than a “function”.

              But even presuming you had come up with a good hypo, yes Les, the good professor knows the odd effect his proposed law would have. That was the point of the second part of the question, to have students consider the what policies underlying patent law the proposal would not be consistent with.

            2. OOOOo Noooo

              dissolve A in the solution is purely functional.

              It doesn’t say how the dissolving is to be achieved. It preempts all methods of dissolving, including heating, stirring, spontaneous dissolving, shaking… etc…

              so goes the silly logic of the functional claiming whiners.

      2. Too bad this is not a “how to write legislation” class, as the more direct path of changing the permissive language in 112(f) to mandatory language would be a cleaner solution.

      3. (…and everyone should note that the very premise of this question indicates that 112(f) [as exists in law today] is in fact neither mandatory, nor all-encompassing when it comes to functional language in claims)

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