Federal Circuit Sends Patent Case to Eighth Circuit

By Dennis Crouch

US Water Services, Inc. v. ChemTreat (Fed. Cir. 2014)

The Federal Circuit has determined that it lacks subject-matter appellate jurisdiction over the patent infringement appeal and has thus transferred the case to its sister-court, the Court of Appeals for the Eighth Circuit.

The unusual outcome stems from the parties pleading posture that began pre-AIA. Under the law when the case was filed, the Federal Circuit has subject-matter appellate jurisdiction over cases that “arise under” federal patent law. Arising-under jurisdiction is a term of art that follows the “well-pled complaint rule” which requires the patent law question appear on the face of the plaintiff’s original complaint as outlined in the Supreme Court’s 2002 decision on point. Holmes Grp., Inc. v. Vornado Air Circulation Sys., Inc., 534 U.S. 826 (2002).

Here, the original complaint was filed by USWS against ChemTreat for trade secret misappropriation under Minnesota law. In a counter claim, ChemTreat alleged invalidity and non-infringement of one of USWS’s issued patents. The parties then settled the trade secret claim and the district court subsequently granted ChemTreat’s motion for summary judgment of non-infringement. USWS now appeals that noninfringement determination. Since the patent issue was first raised in the responsive pleading (rather than in the complaint), the case cannot be said to arise under the federal patent laws. The result then is that the Federal Circuit has no subject matter appellate jurisdiction over the appeal.

As the patentee with a technical argument on appeal, the USWS was looking for Federal Circuit jurisdiction. It raised two arguments on the appeal (1) that it consented to the counterclaim filing; and (2) that the counterclaim joined additional parties (the patent owners since USWS was merely the exclusive licensee) and thus should be seen as the equivalent to a complaint under the well-pled-complaint rule. In its decision here, the Federal Circuit rejected both of those arguments, finding instead that the rule is hard and inflexible. See also Wawrzynski v. H.J. Heinz Co., 728 F.3d 1374 (Fed. Cir. 2013).

tl;dr: patent issue was first raised in a counterclaim so the case did not arise under the US patent laws.

If the same lawsuit had been more recently filed, it is possible but still unlikely that the Federal Circuit would have subject matter appellate jurisdiction based upon the AIA amendments made in 2011. In particular, the Federal Circuit jurisdiction now additionally extends to cases where the patent law issue is raised only in a “compulsory counterclaim.” Although not expressly decided it does not appear that the patent issue here should be seen as compulsory under the rules of civil procedure but instead merely supplemental. As such, even the broader appellate subject matter jurisdiction rules of the AIA would not permit the Federal Circuit to hear the case.

= = = = =

The decision here was based upon appellate subject matter jurisdiction and did not reach the merits of the underlying appeal. Those underlying merits focused on whether the district court held declaratory judgment jurisdiction since (according to USWS), USWS never threatened patent infringement and the challenged patent was so different from ChemTreat’s activities that it would be silly to fear such an action.

129 thoughts on “Federal Circuit Sends Patent Case to Eighth Circuit

  1. VIRTUALAGILITY INC. v. SALESFORCE.COM, INC
    link to cafc.uscourts.gov

    While litigation was pending against a defendant and that defendant’s customers, the defendant requested the PTO to institute a CBM. After the PTAB ordered trial on all claims, the defendant moved the district court to stay. A stay of a district court action favor of a CBM is authorized by statute, listing for factors. The District Court analyzed all four factors and found in favor of the patent owner and refuse entered a stay. The District Court reviewed the petition and the PTAB’s decision and was not convinced that the PTAB have would canceled all claims based on section 101 or based upon prior art. One of the reasons the district court denied a stay was that the CBM would not simplify the issues in that the defendant did not bring all the relevant prior art that was before the District Court to the attention of the patent office. Another of the reasons was that the defendants were direct competitors and the delay in the lawsuit would be prejudicial to the patent owner.

    The defendant appealed and Federal Circuit reversed over another vigorous dissent by Judge Newman.

    Essentially the Federal Circuit held that Congress did not intend district courts to review the PTAB’s institution decision as that would be a collateral attack on the PTAB. Once the PTAB institutes on all claims, that weighs heavily in favor of a stay.

    Furthermore, the fact that some references were not presented to the PTO does not weigh gases stay because if the PTAB canceled all claims, that would resolve the issue even with respect to the withheld references.

    The fact of competition weighed against stay, but was not decisive.

    Judge Newman noted the Congressional record that Congress did not want the stays to be automatic, but that the decision of the panel would make the decision of stay almost automatic if all claims in suit were subject to the PTAB institution decision. She further noted that the fact that the patent owner was suing a direct competitor should have been given heavy weight.

    Further she observed from the recent Hallmark case that decisions of the district court are entitled to respect. The majority did not decide the issue of the standard of review, however, saying that whatever the standard was, the outcome would be the same.

    Reply
    1. did not intend district courts to review the PTAB’s institution decision

      Don’t have time to check this out, but this might impact the “takings” argument, based on the Executive branch (Article I court) taking one of the sticks in the bundle or property rights that we have discussed previously.

      Note that in previous discussions, the separateness of this property right was distinguished from any later adjudication on the merits (of which may be challenged in an Article III proceeding).

      This appears to create a violation of substantive due process.

      Reply
      1. I think you are actually on to something anon. The question I think comes down to whether patents rise to the level of other property rights in the Constitution. It is stated in a discretionary fashion and so the question is whether they can weaken the property to any form because the granting of the property is discretionary.

        Reply
        1. The power is stated in a discretionary fashion.

          But like other such discretionary powers, once a system is in place, the property created is not discretionary.

          The power to obtain is left in the hands of the applicant. When the applicant meets his part of the Quid Pro Quo, it is not discretionary on the part of the government to give the grant of patent.

          When the Executive branch makes that grant of a patent, the full rights of the property inure.

          The full rights are a bundle of sticks. One of those sticks is the presumption of validity.

          That stick is being taken – not by an Article III court, but an Executive branch Article I court – and apparently, without any form of or ability to challenge.

          This is a taking.

          Of course, the remedy for this taking may – or may not – be nominal.

          But a taking without remedy most definitely is unconstitutional.

          Reply
          1. I think that is basically right. But, I also think that it is ironic that the SCOTUS is so worried about adhering to their federal common law of 200 years ago while at the same time not paying attention to the question of what does “patent” mean in the Constitution. It says patent. So, shouldn’t the SCOTUS being going ape sh$t over these changes to the fundamental rights?

            Reply
      2. anon, you already know that my view that taking validity from the courts is unconstitutional (Art. III, Jury Trial right). But consider this from the opinion:

        “Indeed, a challenge to the PTAB’s “more likely than not” determination at this stage amounts to an improper collateral attack on the PTAB’s decision to institute CBM review, and allowing it would create serious practical problems. As a preliminary matter, Congress made postgrant
        review more difficult to obtain than reexamination by raising the standard from “a substantial new question of patentability,” 35 U.S.C. § 303(a) (2012), to “more likely than not . . . unpatentable,” id. § 324(a). Congress clearly did not intend district courts to hold mini-trials reviewing the PTAB’s decision on the merits of the CBM review. To
        do so would overwhelm and dramatically expand the nature of the stay determination. If the district court were required to “review” the merits of the PTAB’s decision to institute a CBM proceeding as part of its stay
        determination, it would undermine the purpose of the stay. When the stay decision is then appealed to this court, we would be required to likewise review the PTAB’s decision to institute a CBM proceeding. This is clearly not how or when Congress intended review of the PTAB’s
        CBM determinations to take place.”

        Consider also, that institution decisions are by statute not appealable.

        Reply
        1. 1) the “Congress didn’t want blah blah blah” is a bunch of hogwash made up of whole cloth

          2) you did not address the fact (at all) that a property right was taken by the executive branch. This is a post-grant property right being taken without review by the Executive branch.

          Reply
          1. anon, the patent is not revoked, in whole or in part, until the PTAB issues its final decision canceling one or more claims.

            As I have previously pointed out, the executive has no power to do that and the act is unconstitutional. Stern v. Marshall (and the cases it relies on).

            I wonder if the patent owner here can raise the constitutional issue on remand in some form. They may not have preserved the issue properly because they should have raised it in opposition to the stay motion.

            Regardless, the patent owner should give it the best they’ve got. They might want to refer to IPR 2013-00217, Patent Owners response.

            Reply
            1. Ned,

              You are not paying attention. I distinguished the revocation of the patent itself with the taking of a different stick in the bundle of property rights.

              Revocation (or not) of the patent itself is not at issue. The stick in the bundle is the presumption of validity. That stick is taken by the Executive branch at the point that the Article I judge decides to pull the granted patent back into review. That is the issue highlighted here with the Article III court saying that such a decision is not reviewable.

              We have a taking – not of the entire bundle of sticks – but of one particular stick with no compensation, no review. That is the due process violation. Importantly, this taking by the executive branch, as being permitted by the judicial branch’s evaluation of the legislative branch’s intent – still fails the constitutional prohibition on taking. Here, it does not matter that all three branches are on the same page – a taking of a property right, without process of review or compensation has occurred. Once the grant occurs – that particular stick in the bundle of rights is real. And it does have value.

              Reply
              1. Again, Ned, you are missing the point.

                Nowhere do I identify what has been taken as a right of a legal action.

                Nowhere.

                I clearly identify the particular property right.

                Why are you trying to obfuscate this?

              2. Ned,

                Obtuse. Is it deliberate? (said in the best Andy Dufresne tones)

                The stick in the bundle of patent property rights is the presumption of validity.

  2. STAUFFER v. BROOKS 2 BROTHERS GROUP, INC
    link to cafc.uscourts.gov

    The AIA retroactively removed qui tam jurisdiction wrt false marking, and false making liability for marking with expired patents. A party to a pending lawsuit was then nonsuited, but argued the AIA was unconstitutional.

    The Federal Circuit held that the nonsuited party had standing to raise the constitutionality issues.

    Held that the Supreme Court decided the issue over a hundred years ago in the case of United States v. Connor, 138 U.S. 61 (1891), when it held that Congress could constitutionally amend laws in a way that nullified a pending suit of a qui tam claimant.

    Held, the party had no vested right either in a rule of law or in a lawsuit.

    The AIA is not unconstitutional on these grounds.

    Reply
  3. TROY v. SAMSON MANUFACTURING CORP
    link to cafc.uscourts.gov

    The Federal Circuit reversed a District Court holding that a losing party (Troy) to an interference could not introduce evidence regarding a July 2004 reduction the practice that it had not raised during interference. The PTO and the winning party to interference (Samson) had relied upon an earlier Federal Circuit case that a trial de novo cannot raise new issues.

    The Federal Circuit reversal was based upon the Supreme Court case of Kappos v. Hyatt, that had ruled that in such a trial de novo that a party could introduce any evidence without restriction. Such a broad statement was inconsistent with limiting the scope of a de novo review to new evidence with respect to previously litigated issues. Thus even though the previous Federal Circuit case relied upon by the PTO had not been overturned directly by the Supreme Court Hyatt, the Federal Circuit said it was implicitly overruled.

    One of the new issues that the losing party interference had raised was inequitable conduct by the Samson who had submitted a drawing made by Troy as its own invention. The losing party had proven in a trade secret action in a Massachusetts court that the Samson had derived the asserted invention at least in part from the losing party, Troy. The remand ordered the trial of this issue.

    Reply
    1. In our discussions Ned of pirates and good titles, what does this case remind you of?

      Reply
      1. Well, under the current law, anon, 102(f) exists and the patent is invalid if the invention was derived, even in part, from another.

        Reply
        1. Search as I may, I see absolutely ZERO mention of 102(f) in the entire decision.

          Reply
          1. anon, one assumes that a patent is invalid if the inventorship is incorrect, especially if it is been pirated. That was certainly the holding of OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997), a decision based upon §102(f). The repeal of §102(f) was intended to overrule this decision.

            Reply
            1. You stretch too far with a view simply not supported with the immediate case.

              Validity has nothing to do with the issue at hand.

              In Stanford v Roche, the issue was not validity – it was standing.

              Standing Ned – a ground of legal challenge not contained in section 285, that nonetheless is always available to prevent the pirates from enjoying their ill-gotten booty.

              Separately, as to overruling the decision as you now claim, do you have any backing of this in the Congressional record?

              Reply
              1. Your link is nothing but fluff Ned.

                One still has to submit an oath, right? Lying on that oath is still a fraud on the office right? one who lies, who attempts to pirate off the work of another cannot enforce and profit, can he Ned?

                Focus, Ned – you need to focus.

  4. DIGITECH IMAGE TECHNOLOGIES v. ELECTRONICS FOR IMAGING, INC
    link to cafc.uscourts.gov

    The Federal Circuit affirmed a holding of the Central District Court for the District of California that claims drawn to a device profile (useful in digital imaging processing) and a method for deriving a device profile are invalid under §101 for two different reasons. First, the device profile is nothing more than information and information is neither a machine, manufacture or composition of matter. Second the method for deriving the device profile specifies nothing more than calculation because the claim did not require input from the physical device. Therefore the claim was invalid under the Supreme Court decision in Alice v. CLS Bank.

    1. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:
    first data for describing a device de-pendent transformation of color infor-mation content of the image to a device independent color space; and
    second data for describing a device de-pendent transformation of spatial in-formation content of the image in said device independent color space.

    10.A method of gen erating a device profile that describes properties of a device in a digital im-age reproduction system for capturing, trans-forming or rendering an image, said method comprising:
    gen erating first data for describing a device dependent transformation of col-or information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions;
    gen erating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space
    through use of spatial stimuli and de-vice response characteristic functions; and
    combining said first and second data in-to the device profile.

    Reply
    1. Information is non statutory? Who’d have thunk it?

      Manipulation of information without more is not a statutory process (abstract exception)? Who’d have thunk it.

      What have Malcolm and I have been saying here for quite some time.

      PTO, back to the drawing boards. Find any case authored by Rich and put an asterisk next to it.

      Reply
      1. If only they had used the term “device profile data structure” instead they’d be totally golden.

        Just kidding, folks.

        You really can’t get around this basic, fundamental fact: information is ineligible subject matter. Therefore, you can’t use patents to protect information. Therefore, if your patent protects information — regardless of how limited the field is in which that information is protected — your patent is an ineligible p. o. s.

        See how that works? It’s really, really easy to follow the logic …. unless you believe that the much-beloved 1952 patent act was intentionally written with giant gaping loopholes designed to allow people to protect information with patents. Does anyone believe that? As far as I know, nobody believes that.

        Reply
        1. “If only they had used the term “device profile data structure” instead they’d be totally golden.”

          Lulz.

          Reply
      2. The case here is NOT what Malcolm has been preaching.

        Please pay heed to my comments on the other thread (the one that introduced this case).

        Reply
          1. Get a legal argument.

            Um, you do know what one of those is, right?

            (hint: it involves law, and likely fact – and typically not dependent on table pounding, so you will have to change your ways)

            Reply
      3. Here’s something that Ned and Malcolm need to, um, integrate:

        anthropomorphication.

        Reply
    2. Folks, we are very, very close to a full restoration of Hotel Security and its progeny overruled by Rich in State Street Bank. The gravamen of Hotel Security: combine the non statutory with the statutory and there must be invention in the statutory.

      Imagine had the claimant simply added that the profile was recorded on a CRM? Then the court would had to apply Prometheus/Alice. That would have said the addition of a known media would not be “enough.” There has to be invention in the eligible.

      This goes to show that the Stevens dissent in Bilksi is slowly being adopted as well, as that dissent would have restored Hotel Security in a direct overrule of State Street Bank.

      Reply
      1. Imagine had the claimant simply added that the profile was recorded on a CRM?

        Or a piece of paper.

        Then the court would had to apply Prometheus/Alice. That would have said the addition of a known media would not be “enough.” There has to be invention in the eligible.

        Yup.

        Reply
      2. “Imagine had the claimant simply added that the profile was recorded on a CRM? Then the court would had to apply Prometheus/Alice. That would have said the addition of a known media would not be “enough.” There has to be invention in the eligible.”

        Indeed. Would have made it more interesting.

        Reply
        1. LOL – the return of the “Britney Spears CD is the same as the Microsoft operating disc” depth of legal analysis.

          Reply
          1. You might have a point, Billy, if the “innovation” here was described with half as much detail as exists in one measure of a typical Britney Spears song.

            Reply
      3. Ned,

        You are clearly not reading what the judges here wrote.

        Read the case again my friend – this case does NOT support your agenda.

        Reply
      4. This goes to show that the Stevens dissent in Bilksi is slowly being adopted as well

        Yes, Ned, going from four votes to three votes is indeed “slow adoption.”

        Reply
  5. H-W TECHNOLOGY, L. C. v. OVERSTOCK.COM, INC
    link to cafc.uscourts.gov

    This case involves two issues: first, whether a claim that he issued without an element that was present at the notice of allowance, could be enforced. The Federal Circuit affirmed the district court holding that such claim cannot be asserted.

    Federal Circuit further affirmed the district court holding that a certificate of correction that issued after the case had been filed did not apply by statute because the statute states that a certificate of correction only applies to subsequent cause of action.

    However the Federal Circuit reversed the district court holding that the claim was invalid, because a claim as corrected has not yet been subject to litigation.

    Regarding the second issue, there was a CRM claim that called for a computer program comprising a number of method steps in the claim as set forth below. The Federal Circuit affirmed a ruling that the claim was indefinite because one cannot mix “apparatus” and method steps in a single claim.

    17. A tangible computer readable medium encoded
    with computer program for performing contextual
    searches on an Internet Phone (IP) phone
    comprising the steps of:
    receiving a command to perform a contextual
    search;
    receiving search criteria from a user of said IP
    phone;
    submitting said search criteria to a server
    coupled to said IP phone; and
    receiving from said server a list of merchants
    matching said search criteria and information
    regarding each of said merchants
    in said list;
    wherein said user completes a transaction with
    at least one of said merchants listed without
    the need to gen erate a voice call;
    wherein said information received by said user
    comprises a variety of offers, wherein
    said user selects one of said variety of offers
    associated with said one of said merchants
    listed, wherein said selected offer is
    transmitted to said one of said merchants
    listed electronically; and
    wherein said user’s contact and payment information
    is not transmitted to said one of
    said merchants listed, wherein said user’s
    contact and payment information is available
    to said one of said merchants listed.

    Reply
    1. Doesn’t this case invalidate all CRM claims not using MPF?

      Reply
      1. Ned,

        You have done it again (oops – in the best Britney Spears tones).

        You have misrepresented what exactly was being “mixed” – and this item is not representative of CRM claims.

        To wit, the portion of the claim at issue:

        wherein said user completes a transaction with
        at least one of said merchants listed without
        the need to g3n3rate a voice call;

        ’955 patent col. 28 l. 61–col. 29 l. 15 ([here, bold] added).

        The district court held that the italicized limitations
        were method limitations and that apparatus claim 17
        thus combines two statutory classes of invention. The
        rationale behind invalidating such a claim as indefinite is
        that it is unclear when infringement occurs.

        Please take note (before you go on a carpet bombing rampage).

        Reply
        1. for completeness, a part of the next claim element was also italicized:

          …wherein said user selects one of said variety of offers associated with said one of said merchants listed,…“

          Reply
        2. this item is not representative of CRM claims

          Seems pretty “representative” of a lot of j nk that’s floating out there.

          Kiss yet another class of s 0ftie w 0ftie patents buh-bye.

          Reply
          1. LOL – Another Malcolm self-FAIL.

            Pumpkin, try actually reading the case and what has been posted.

            Reply
      2. No, it doesn’t, Ned. It invalidates all CRM claims that are as poorly written as this one. The court had no problem with the receiving, receiving, submitting, and receiving steps – in context, these are not steps that define a claimed method but instead define the program that resides on the CRM. On the other hand, some of the “wherein” clauses recite steps in the form of method steps, not in the form of steps that are carried out by the computer program. For instance, the limitation “wherein said user selects one of said variety of offers” is not a step carried out by the program.

        The drafter here got lazy when converting the method to Beauregard form. It perhaps wouldn’t have been a critical error if the method claim wasn’t unenforceable for other reasons.

        Reply
        1. “in context, these are not steps that define a claimed method but instead define the program that resides on the CRM.”

          So much hilarity in that statement! “these blatant method steps merely describe a program therefore they all coo!”

          Reply
        2. “For instance, the limitation “wherein said user selects one of said variety of offers” is not a step carried out by the program.”

          As long as the step is carried out by a compooter instead of a person yous all good to go!

          Reply
          1. LOL – pay attention 6. That step specifically was not one “carried out by a compooter instead of a person,” hence, NOT good to go.

            /face palm

            Reply
            1. I’m pretty sure 6 was responding to DanH’s proposed “solution” to fixing the claim and not addressing the claim as written.

              Try to focus, Billy. Focus on your losses. They’re mounting.

              Reply
              1. “I’m pretty sure 6 was responding to DanH’s proposed “solution” to fixing the claim and not addressing the claim as written.”

                Did both at the same time actually in this case! The intention here was two birds, one stone!

              2. “You are “pretty wrong” again – 6 quoted the claim.”

                He was part right and part wrong anon. So were you. Just let the right/wronging go brosef.

            2. “pay attention 6. That step specifically was not one “carried out by a compooter instead of a person,” hence, NOT good to go.”

              Yes, I know that re re. That’s why I made a sarcastic comment re our existing paradigm! I was poking fun at our existing “paradigm”, where so long as you stick the method step in the “program” you’re golden, but if it isn’t on/in the “program” you’re not. Through the existing paradigm (where the 112 justification comes from “we don’t know when infringement happens”) we’ve effectively carved out an exception for compooter methods attached to machines, but all other methods attached to machines are anathema.

              Reply
    2. “The Federal Circuit affirmed a ruling that the claim was indefinite because one cannot mix “apparatus” and method steps in a single claim.”

      Meh, they hold only that because of the “wherein”s in the claim that it was indefinite. Of course they simply set to the side all the other 10 method steps that are blatantly set forth, supposing them to have been magically transformed via a draftsman into magical “functions” that are totally not method steps.

      So ta rded. It’ll take a case involving the actual method steps (as opposed to the mere wherein’s requiring someone to take action tacked onto the bottom) being contested all the way to the supremes to get people away from worshiping the draftsmanship.

      Reply
      1. get people away from worshiping the draftsmanship.

        LOL – 6, do you have an option to use something other than claims?

        Reply
        1. “LOL – 6, do you have an option to use something other than claims?”

          It is quite possible to “use claims” and not worship at the alter of the draftsman while “using claims”. You just got done reading a paper all about it the other day you said.

          Reply
            1. I’m not sure why the “paper” being crp makes it not a “real option”. I’d think it is a “real option” at this point.

              In any event, I don’t mind one bit the simple use of claims so there is no real need for an “alternative” to them.

              It is going beyond that, the consideration of the claims as being the invention, that really throws a monkey wrench in the works and to which I propose an “alternative” to. The “most real” and “easiest” option is to simply have the applicant set forth what the invention is in the specification and then use claims to delineate what about the invention he wishes to cover. Simple as that. In fact, it is really just doing what the statutes explicitly say though they have been interpreted otherwise.

              Reply
              1. I’m not sure…

                Of course not – that would take some critical thinking skills.

                In any event, I don’t mind one bit the simple use of claims

                Please explain what you mean by “simple use of claims” and distinguish from the CRP paper.

                set forth what the invention is in the specification and then use claims to delineate what about the invention he wishes to cover

                Nonsensical. This is not distinguishing the claim, and violates the patent profanity (created by the courts) as to “invention” in the application.

                really just doing what the statutes explicitly say though they have been interpreted otherwise.

                LOL – translation: 6 making up his own version of law. Because, to 6, law(l) is all subjective in the mind stuff and anything goes. (psssst, 6 this is objectively wrong).

              2. “Please explain what you mean by “simple use of claims” and distinguish from the CRP paper.”

                Simply using claims to circumscribe what aspects of the invention, i.e. the invention that has already been set forth in the specification, that you wish to claim as your invention. Call that the part of the invention that is claimed the “claimed invention” if you like, as opposed to “the invention”. And of course by the end of pros. you’ll have to make sure what you’ve circumscribed is eligible, definite, novel etc. I’m not sure that really is all that “distinguished from that CRP paper”, if you’ll recall, his suggestion is rather similar.

                “This is not distinguishing the claim”

                I guess I agree? We can worry about “distinguishing the claim” as in, from the prior art, separately. And we can set that aside for the moment.

                ” This is not distinguishing the claim, and violates the patent profanity (created by the courts) as to “invention” in the application.”

                The courts can be brought to heel through legislation if need be. And then all is well on that front. In effect we’d be making everyone commit “patent profanity” by legislation (or the courts doing it by all of a sudden interpreting 112 as it is explicitly written). With everyone having to do it then the courts would likely adjust without being made to. Especially the federal circuit, with their pro-patent angle.

                “translation: 6 making up his own version of law”

                More like simply taking a “literal” interpretation of the existing law. You can’t deny that the first sentence of 112 literally explicitly commands that the specification include a written description of “the invention”. And you cannot also have missed the recent changes to 102 etc. where they start referring to the “claimed invention” all of a sudden (because people have been bringing up this disconnect and everyone wants novelty etc. judged against the claimed invention, not the invention itself). And it isn’t really “my own”, I make no claims as to the literal interpretation being my own. In fact, I’m quite sure I heard it from someone else. But yes, the courts do not currently read the 112 statute in explicit fashion. Instead they put a little slant on it such that the explicit words need not actually be obeyed, and only their interpretation need be obeyed.

                Don’t you just hte when the courts don’t enforce explicitly what the statute commands?

                Anyway, with the new changes to 102 etc. this is a prime opportunity for them to distinguish between “the invention” that is supposed to be described in the spec (and is required to be actually) and the “claimed invention” which is the part of the invention you went ahead and claimed.

                That’s my position and I’m stickin’ to it lol.

              3. The courts can be brought to heel through legislation if need be.

                LOL – we see just how well that is happening don’t we? You seem to be in the opposite camp of that reality,celebrating the Court doing the exact opposite and your advice here in this instance is just NOT consistent and lacks credibility.

                And then all is well on that front.

                And then…?

                You assume the answer to the exact point of the problem I point out and simply “wish” it away. Come back to reality.

                More like simply taking a “literal” interpretation of the existing law.

                LOL – no, more like exactly what I said – and your attempt to characterize your own take falls flat (you have created a credibility problem for yourself with NOT being objective by your embracing the “subjective and everything goes” mantra of yours.

                You can’t deny that the first sentence of 112 literally explicitly commands that the specification include a written description of ‘the invention’”.

                As to your twist here – I have pointed out the difference between “description” and “description in a Jepson style.” You did not want to discuss that point, remember?

                Further, you continue to ignore (as does the CRP paper) what the claim actually are. By law (the UN twisted point of distinguishing was not between the provided claim and the prior art, but distinguishing what the claim is (and all that follows from the law) from the description. The CRP paper simply gets this distinguishing wrong – objectively wrong (that’s one reason why it is a CRP paper).

                And you cannot also have missed the recent changes to 102 etc. where they start referring to the “claimed invention” all of a sudden

                Staking your bet to a poorly written AIA is not exactly the smartest move 6. Regardless, you have not tied your position to the new words of the AIA, so I cannot evaluate what you think the point is with the changes in the AIA. Perhaps you would care to flesh that out in a little more cohesive and cogent manner…

                I make no claims as to the literal interpretation being my own.

                Actually that is exactly what you are doing, as you are largely incapable of NOT spinning things to be your version. You lack the objective point of view necessary for such. You lack the appreciation of critical thinking for such.

                and only their interpretation need be obeyed.

                See above – your particularized “concern” is unavailing. You also are only too eager to gloss over the difference between actual interpretation and re-writing (of either an implicit or explicit nature). These are separate points well documented throughout these threads (See the Prof. Hricik side of the blog for example on the limits of judicial construction).

                That’s my position and I’m stickin’ to it lol.

                Your position is full of holes that need to be addressed before any credibility can attach. Of course, you are free to stick to your position, just as I am free to point out the holes in the position and apprise you that your position in not credible and the CRP paper you lean on for your view is simply not attached to this reality.

              4. 6, agreed.

                From Ariad, “A description of the claimed invention allows the United States Patent and Trademark Office (“PTO”) to examine applications effectively; courts to understand the invention, determine compliance with the statute, and to construe the claims; and the public to understand and improve upon the invention and to avoid the claimed boundaries of the patentee’s exclusive rights.”

                “A separate written description requirement also does not conflict with the function of the claims. 35 U.S.C. § 112, ¶ 2. Claims define the subject matter that, after examination, has been found to meet the statutory requirements for a patent. See In re Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577 n. 5 (Fed.Cir.1985). Their principal function, therefore, is to provide notice of the boundaries of the right to exclude and to define limits; it is not to describe the invention, although their original language contributes to the description and in certain cases satisfies it. Claims define and circumscribe, the written description discloses and teaches.”

                From the above, the specification must identify the invention. The specification includes the claims as filed, but not later as issued.

                I might suggest that the PTO adopt a rule that the claims as filed be made a permanent part of the patent.

              5. “the subject matter which the inventor or a joint inventor regards as THE invention.”

                Anon I’m not sure what you want me to address about that but I certainly agree that when it comes to the claim we’re talking about what the inventor subjectively regards to be his invention. That’s exactly the point of what all I’m saying. The claim is simply what he subjectively believes the invention to be. That’s literally what the claim is, his attempt to put into words what he subjectively feels is the invention from amongst the invention he has set forth. That’s what claims were invented for as a matter of fact.

                As to what the invention actually is, well that’s another matter. The inventor (or his draftsman) may very well be mistaken in their subjective opinion on the matter. The written desc of the invention itself is to have been laid out in the specification.

                It’s really that simple. And the change won’t affect most applications all that much. Maybe a tiny shift in what is said in the spec.

              6. “As to your twist here – I have pointed out the difference between “description” and “description in a Jepson style.” You did not want to discuss that point, remember?”

                The “jepson” stuff that D suggested is another separate matter.

                “what the claim actually are.”

                Brosef there is no question what claims “actually are”. They’re an attempt to put into language that which the inventor subjectively believes to be his invention. That’s literally what they are, always have been, and always will be. Forever. Nothing you or I can do about that. What they are currently is set in stone by history. That said, they DO a lot of different things.

                And the author of the paper knows exactly what I just said above. And neither me nor him are “ignoring” this.

                “Regardless, you have not tied your position to the new words of the AIA, so I cannot evaluate what you think the point is with the changes in the AIA. ”

                I did just kind of tie it to them. See the changes in the wording of 102 etc. That’s me tying.

                “Actually that is exactly what you are doing, as you are largely incapable of NOT spinning things to be your version. You lack the objective point of view necessary for such. You lack the appreciation of critical thinking for such.”

                Yes, you mean I’m not inside anon’s head. Look, if you want to have a discussion I’m going to need you to set the OCPD to the side for the duration aight? I have my views, you have yours, other people have theirs. Shades of gray remember? Feel free to express yours but there’s no need to simply sit and tell me how I (along with pretty much everyone else in the world) is totally incapable of taking an “objective” viewpoint and how only your viewpoint is objective.

                In any event, most of the rest of your comment is you going off on a tangent and I don’t really want to go down all those rabbit holes.

              7. First Ned’s (continued) nonsense:

                From Ariad,…” [and Ned is off on the same carpet bombing of off-point material yet again]

                I might suggest that the PTO adopt a rule that the claims as filed be made a permanent part of the patent.” Interesting. But not on point here either.

                Tell me Ned – why do you find it so difficult to respond to points put before you?

                Let’s try again, shall we?

                Your references to Ariad revolve around a non-contested – read that as not at issue – point. You keep on repeating “must describe to one of ordinary skill in the art what the inventor regards as his invention.” as if that means something critical here. As I keep telling you, Ned – that’s not at issue.

                Read my posts:
                “must describe” and
                “must describe in Jepson style
                are two very different propositions.

                Now to 6’s nonsense:

                That’s exactly the point of what all I’m saying.

                No 6, it is precisely not what you are saying – such would be precisely what I am saying.

                is the invention from amongst the invention he has set forth

                Circular rubbish.

                As to what the invention actually is, well that’s another matter.

                No 6, it is not.

                The written desc of the invention itself is to have been laid out in the specification.

                Great.
                Happy.
                No one is arguing this.

                But your conflation of the concept of the description OF what the invention is and what the invention is is self-evident.

                It’s really that simple.

                It’s really something different. And THAT is that simple.

                What they are currently is set in stone by history. That said, they DO a lot of different things.

                LOL – and yet, you are ignoring that very thing which is set in stone, attempting to make it “subjective” (as in , your version meaning “whatever”) and to then augment “the invention” as itself being objectively elsewhere. You are confusing yourself – just as Liivak is confused.

                And neither me nor him are “ignoring” this.

                Except you both are. Such is an objective fact.

                And regarding the AIA,…

                kind of tie

                No duh – I’m asking for kind of more, as your “kind of” is kind of incomprehensible at this point.

                Yes, you mean I’m not inside anon’s head.

                No, quite the opposite – you need to get out of your own head and express what you “feel” so that your position can be understood.

                but there’s no need to simply sit and tell me how I (along with pretty much everyone else in the world) is totally incapable of taking an “objective” viewpoint and how only your viewpoint is objective.

                LOL – not at all what I have said 6. Nice mischaracterization. You have not shown yourself capable of being objective. – that alone is an objective fact. Not sure where you get off lumping yourself with the rest of the world – that’s more than a bit grandiose. My pointing out your condition has nothing at all to do with the fact that you do have the condition I point out. Sorry, I know that you like to pretend otherwise, but that is just the reality of it.

                I don’t really want to go down all those rabbit holes.

                Great. Just see if you can get out of your own way, get out of your own head, and express yourself cogently. No need at all to obsess over me.

              8. Actually anon, we had a case where the claims as filed told us clearly what the inventor thought the invention to be. Over time, a lot more limitations were added. But when interpreting the claims, the whole point of the invention was lost because the specification was no clear on this point, and the claims at issue seem to stress something entirely different.

                During claim construction, I tried to focus the attention on the claims as filed to tell us and the court what the invention was in broad terms. I did not succeed in this, and everything got muddled.

                That is why I think it is really important that the specification have a section for the claims as filed to preserve the original conception of what the invention was so that later amendments can be placed in context, and so that the defendant cannot concoct a completely, and radically different view.

              9. Ned,

                The whole concept of divisional practice defeats your supposition.

                Further, this whole line of reasoning is disjoint from the main thrust of this particular thread – it is an interesting side note, but a side note nonetheless.

              10. “But your conflation of the concept of the description OF what the invention is and what the invention is is self-evident.”

                brosef the invention must be that which is described and what is described must be the invention. It has to be. Otherwise you fail the first condition of 112. At least if you interpret it literally and explicitly. There really ain’t two ways about this. You can tell me that I’m conflating things all you like, it isn’t going to change this.

                “and yet, you are ignoring that very thing which is set in stone, attempting to make it “subjective” (as in , your version meaning “whatever”) and to then augment “the invention” as itself being objectively elsewhere.”

                Um we’re not “ignoring” what claims are at all (that is, the thing that is set in stone). We’re making sure that the full ramifications of what they are be realized in everyday proceedings. You guys are attempting to, and have been for many decades, circumventing certain ramifications of what they fundamentally are.

                Just as an example:

                I’m pretty sure you concede that claims are exactly what I put down above. As we’ve discussed that is set in stone as of this minute.

                Do you not also concede that the inventor’s subjective opinion very well could be mistaken as to what the invention is?

                “Circular rubbish.”

                There’s nothing circular about it. You set forth your invention then you pick something about the invention you want to try to cover, then you claim that. How is that “circular”? It’s very straight forward.

                The “circular rubbish” you might say is the current system where the “invention” is the “claim” and the “claim” is the “invention. That’s what is known as a big ol circle.

              11. The map is not the land.

                A picture of a horse is not the horse.

                The description and the possession factors are a function of something else – that something else is the claim.

                Your belieb system is getting in your way again 6.

              12. “The description and the possession factors are a function of something else – that something else is the claim.”

                See and that’s where you make a leap.

                The article’s author also makes a leap. He makes a substantive leap. You make a nonsubstantive leap. Your way leads to “patent profanity” that then screws over a patentee every couple of years. His way leads to a wholistic system.

              13. He makes a substantive leap.
                You make a nonsubstantive leap

                You are full of sheepdip.

                There is nothing in my way that leads to patent profanity, as the profanity comes from outside this understanding.

                There is nothing in his way that leads to a “[w]holistic” system. His way is utter CRP.

              14. “There is nothing in my way that leads to patent profanity, as the profanity comes from outside this understanding.”

                I’m not sure what mystical plane you think patent profanity hails from. So far as I’ve seen it arises as a side effect of your system. An occasionally fatal side effect.

                There is nothing in his way that leads to a “[w]holistic” system. ”

                Sure there is. The whole thing is holistic. It is one big virtuous cycle with each part building on the one before it.

              15. “No mystical plane and not arising from my system

                (you need a little lesson in cause and correlation?)”

                So then you’re saying that “patent profanity” is not strictly caused by your system, it is merely correlated thereto? I don’t see where you’re going with this whole making a distinction between cause and correlation.

                It might be easier if you just tell me what the “cause” of it existing is. You know, according to you.

              16. So then you’re saying that “patent profanity” is not strictly caused by your system, it is merely correlated thereto?

                Neither – but nice to see you can be manipulated to jump so easily – love that lemming nature of yours ;-)

                As to the cause, that’s simple: judicial activism – and as such, would happen regardless.

                Try to keep up, my man.

              17. “judicial activism – and as such, would happen regardless.”

                Right, I figured that’s what you thought already but wanted it explicit so you can’t move the goalpost later. But why did that judicial activism happen at all? Do you think the mean ol judges were out to get the poor pathetic little inventors? Federal Circuit judges like Rader? You think they’re out to get the poor little inventors?

                I don’t think you really belieb that.

                I’ll submit that the cause is fundamentally the interaction between the judiciary and the system you’re wanting to use and we’ve been using. Even if we presume that we cannot change the judiciary, you can simply change the system, and hey presto, that interaction goes away. Then lay the system out clearly the way it was in the article and everyone’s problems go away.

    3. The Lowest Form of Innovation, folks.

      My gob, I can barely keep my lunch down reading that claim.

      Reply
      1. “Lowest form of Innovation” = LFI?

        Like UFO has become a “word,” LFI might to a good acronym to fix to computer implemented business method patents.

        Rich-era LFI.

        Reply
        1. The “patent-elitism” is reminiscent of the “Flash of Genius” mindset.

          Try to remember the founding era and the desire to have a patent system approachable by the “less-than-elite.”

          Your shame in only in part from your ignorance.

          Reply
      2. Funny then, that this “lowest form” is also (factually) the highest form of innovation today – and is the hallmark of the era that you live in – typically known as the Information Age. (the Amish still await you with open arms)

        Your backwards view and longing for the past combined with your typical short script is what places you in the Rush Limbaugh category.

        That you fail to see this – or the irony of it all given your rather “leftliberal” leanings makes the joke that is you even more funny.

        Reply
        1. Rush Limbaugh? Leftliberal? Both?

          Really, I am a libertarian. I daresay, Rush Limbaugh is not, as he trumpets his Christianity and social conservatism constantly. He grates.

          Also, some of my views of just how bad and corrupting crony capitalism in fact is stemmed from my involvement is several anti-trust lawsuits.

          Reply
          1. Ned,

            You really need to wake up. The irony is that Malcolm is the best example of all that grates from Rush. That he and Rush may be polar opposites is what drive the irony. The fact that I have to point this out to you only shows how thick you can be at times.

            (the post was actually in reply to Malcolm, not you – I will cut you a little slack on that as the nesting of comments does not always make that clear)

            Reply
    4. How in the world did this incredible ga rb age get out of the USPTO?

      Reply
      1. MM, “How in the world did this incredible ga rb age get out of the USPTO?”

        Dicta in Alappat about “programmed computers” and such. Alice finally! trashed all notions that the Rich dicta is good law.

        It is amazing how much damage to the patent system one man caused.

        Reply
        1. Your passion and venom against that one man remains as wrong as your views on the law.

          The holding in Alappat remains good law Ned, as – and I will remind you yet again – both sides in Alice had stipulated certain facts in that case and the issue was not before the Court. Thus – here you would be engaging in the attempted elevation of dicta (if you could find any) to change the law and remove the still controlling holding of Alappat.

          What you continue to miss from Alice is that the Court disregards the statutory category provision of 101 in its entirety. The Court applies its implicitly written, superseding law above the words of Congress in its attempts to quash “scriviners” who have abided the actual words of Congress.

          You worship the Royal Nine and yet clench tight your eyes to what they have done.

          Reply
          1. Anon, there is iconic worship hereabouts. Just think of the reverence people have when they speak of the late Judge Rich.

            Reply
            1. The irony is that you are blinded by your own venom, and refuse to see that Judge Rich had perhaps the best seat ever in the history of understanding patent law – and properly interpreting patent law due to his role in helping WRITE the words that Congress adopted as patent law.

              That you wish to stick your hand into the sands of time and pretend that the 1952 Act never happened is part of your problem.

              Reply
  6. H-W TECHNOLOGY, L. C. v. OVERSTOCK.COM, INC
    link to cafc.uscourts.gov

    This case involves two issues: first, whether a claim that he issued without an element that was present at the notice of allowance, could be enforced. The Federal Circuit affirmed the district court holding that such claim cannot be asserted.

    Federal Circuit further affirmed the district court holding that a certificate of correction that issued after the case had been filed did not apply by statute because the statute states that a certificate of correction only applies to subsequent cause of action.

    However the Federal Circuit reversed the district court holding that the claim was invalid, because a claim as corrected has not yet been subject to litigation.

    Regarding the second issue, there was a CRM claim that called for a computer program comprising a number of method steps in the claim as set forth below. The Federal Circuit affirmed a ruling that the claim was indefinite because one cannot mix “apparatus” and method steps in a single claim.

    17. A tangible computer readable medium encoded
    with computer program for performing contextual
    searches on an Internet Phone (IP) phone
    comprising the steps of:
    receiving a command to perform a contextual
    search;
    receiving search criteria from a user of said IP
    phone;
    submitting said search criteria to a server
    coupled to said IP phone; and
    receiving from said server a list of merchants
    matching said search criteria and information
    regarding each of said merchants
    in said list;
    wherein said user completes a transaction with
    at least one of said merchants listed without
    the need to generate a voice call;
    wherein said information received by said user
    comprises a variety of offers, wherein
    said user selects one of said variety of offers
    associated with said one of said merchants
    listed, wherein said selected offer is
    transmitted to said one of said merchants
    listed electronically; and
    wherein said user’s contact and payment information
    is not transmitted to said one of
    said merchants listed, wherein said user’s
    contact and payment information is available
    to said one of said merchants listed.

    Reply
  7. [re-post to get through sto0pid filter]

    OT – a Lemley-argued case just came down from the Federal Circuit.

    link to cafc.uscourts.gov

    This one is trouble. I think the claims should have gone down and that the court is on the right track, more or less, but I suspect that the very broadly stated holding on the method claims is going to be abused by the PTO.

    Reply
    1. DanH: I suspect that the very broadly stated holding on the method claims is going to be abused by the PTO.

      Care to elaborate, DanH?

      Reply
  8. OT – a Lemley-argued case just came down from the Federal Circuit.

    link to cafc.uscourts.gov

    This one is trouble. I think the claims should have gone down and that the court is generally on the right track, but I suspect that the very broadly stated holding on the method claims is going to be abused by the PTO.

    Reply
  9. Correct or not, it’s weird result when compared to Oracle v. Google where copyright issues get heard by the Federal Circuit simply because the case below formerly included some patent claims.

    Reply
    1. It does seem weird, doesn’t it? But as a wise man once said:

      … my mantra on following statutory law adheres in the specific case of patent law based on the direct allocation of authority in the constitution, and that such things as civil procedure have their [origin] in the courts themselves (coinciding with the power of Congress).

      Reply
  10. The courts need to follow the law/reg/rule as it is, not as you might wish it to be in some perfect world.

    Of course, you are free to lobby for change; until then, we should applaud “wooden” adherence, no? Rather than, say, a court striking off on its own and deciding it is not bound by law or FRCP.

    Enjoyed the pun, by the way (forest/trees, wooden following, etc.)!

    Reply
    1. (Test reply – my comment shown as #3 was supposed to be a direct “Reply” to commenter “anon” at #1.)

      Reply
    2. Your pun would be more phunny if you realized that my mantra on following statutory law adheres in the specific case of patent law based on the direct allocation of authority in the constitution, and that such things as civil procedure have their genesis in the courts themselves (coinciding with the power of Congress).

      What you may balk as an inconsistency, then, merely highlights your lack of appreciation of the complexity of law.

      Reply
    3. Your pun would be more phunny if you realized that my mantra on following statutory law adheres in the specific case of patent law based on the direct allocation of authority in the constitution, and that such things as civil procedure have their [origin] in the courts themselves (coinciding with the power of Congress).

      What you may balk as an inconsistency, then, merely highlights your lack of appreciation of the complexity of law.

      Reply
      1. Ah, I see, thanks; at its base just more broad-scale whinging about how the actions of the supreme court are not to be respected.

        P.S. It was your pun, not mine. However, seeing as it was unintentional, then I must withdraw my admiration of it.

        Reply
        1. ..more broad-scale whinging…

          Um, no – you still do not “see.”

          I suggest that you actually open your eyes.

          Reply
    4. You also then might realize (if you read my post), that I am not necessarily saying that a change is even needed.

      You do know what a “case or controversy” means, right shadow?

      Reply
  11. See the research below:

    Jiwen Chen, The Well-Pleaded Complaint Rule and Jurisdiction over Patent Law Counterclaims: An Empirical Assessment of Holmes Group and Proposals for Improvement, 8 Nw. J. Tech. & Intell. Prop. 94 (2009).
    link to scholarlycommons.law.northwestern.edu

    Reply
  12. The decision here was based upon appellate subject matter jurisdiction and did not reach the merits of the underlying appeal.

    Hmm, not liking the bigger picture here.

    The surviving claim itself appears to be a case and controversy all on its own – and in that regards (no matter when or how ‘birthed’) is an issue that calls out for (screams for?) the “arising under” rationale to apply.

    If we look for the underlying reason to ever apply federal question jurisdiction (directly related to the subject matter of the case or controversy), it should be evident that such wooden following of civil procedure rules misses the forest for the trees.

    I would put this in the “common sense” category.

    Reply
    1. Hmm, not liking the bigger picture here.
      The surviving claim itself appears to be a case and controversy all on its own …

      If we look for the underlying reason to ever apply federal question jurisdiction …

      What are you babbling about? There is no “bigger picture here” – this is nothing more than a statutory issue of whether the 8th Circuit or the Federal Circuit hears the appeal. This is not a constitutional issue, it’s a statutory one, so there is no issue with “case or controversy,” and there’s no “federal question jurisdiction” issue either. The issue is the subject matter jurisdiction specifically allocated to the Federal Circuit by statute, and the statute at issue refers to a “civil action arising under …” not a “case or controversy arising under …”

      The court clearly got it right, at least with respect to argument (1) as identified in Dennis’ post. I haven’t read the case closely enough to have an opinion on argument (2), but, as Dennis points out, it doesn’t matter since the statute has changed anyway.

      Reply
      1. Who said anything about a constitutional issue?

        And yes, there is a bigger picture here. Just because you don’t see it, does not mean it is not there.

        Try to not charge at the red cape and think – just for a moment – what is necessary for a civil action, and what may constitute a separate action (that is, when a separate case or controversy is the driver).

        Reply
        1. And yes, there is a bigger picture here. Just because you don’t see it, does not mean it is not there.

          LOL. Yes, please go ahead and explain to us what the “bigger picture” is. I’m just dying to hear the breathtaking implications of the Federal Circuit’s decision to send this appeal over to the 8th Circuit.

          Or is the “big picture” to be found in this incomprehensible drivel:

          … my mantra on following statutory law adheres in the specific case of patent law based on the direct allocation of authority in the constitution, and that such things as civil procedure have their [origin] in the courts themselves (coinciding with the power of Congress).

          You’re too funny.

          Reply
          1. DanH/Leopold…

            What is funny is that you insist on setting yourself up for (yet another) smackdown with your smarmy reply and later “oops.”

            The name change does not hide the “character.”

            Reply
            1. I can assure you that you’re deluding yourself if you think you found an “oops” in my comment. But whatever floats your boat.

              Reply

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