Giving Effect to the Order of Steps in a Method Claim

Mformation Tech v. Research-in-Motion (Fed. Cir. 2014)

Although several important patent litigation procedure issues are embedded here, the most important legal outcome of this case is the Court’s construction of the method claim to require a particular stepwise order – even though the order is not express in the claim itself.

Mformation’s Patent No. 6,970,917 claims a client-server method for managing a wireless device’s mailbox. The steps include:

transmitting registration information relating to the wireless device from the wireless device to the server;

verifying the registration information at the server; and

without a request from the wireless device, performing the steps of:

establishing a mailbox for the wireless device at the server,

placing a command for the wireless device in the mailbox at the server,

delivering the command from the mailbox at the server to the wireless device by establishing a connection between the wireless device and the server, transmitting the contents of the mailbox from the server to the wireless device, and accepting the contents of the mailbox at the wireless device, and

executing the command at the wireless device;

wherein the connection is established based on a threshold condition.

After for years of litigation, the jury found that BlackBerry infringes ($200 million verdict), but the federal district court rejected the people’s verdict on motion for JMOL.

The basic question at issue is claim construction – and whether the step of “establishing a connection between the wireless device and the server” must occur prior to the step of “transmitting the contents of the mailbox from the server to the wireless device.”  Apparently, in the blackberry device, a connection to the mobile device is established contemporaneously with the transmission of contents.

In finding a required order of operations, the Federal Circuit writes:

We agree … that claim 1 requires that a connection be established before transmission. We are persuaded … that the separate sub-step for establishing a connection would become “superfluous” if we concluded that a connection did not have to be established (completed) before transmission. That is because, under such construction of the claim, establishing a connection is necessarily encompassed in transmitting a command.

Further, we note that other sub-steps in claim 1 inherently require an order-of-steps. . . . And while it is true that “we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment,” Phillips v. AWH, we do note that our conclusion is consistent with the sole embodiment in the specification.

Thus, the basic idea here is not that the listing of steps in a particular order necessarily means that the claims require that particular order.  What is implicit here, however, is that the listing order is important and will be given limiting effect when additional factors corroborate that result.

= = = = =

An odd element of the case is that the district court’s JMOL determination (rejecting the jury verdict) was based upon its post-verdict “clarification” of the claim construction. There is some prior precedent barring district courts from altering claim construction post-verdict. Thus, here it was important that the Federal Circuit found that the claim meaning had only been “clarified” rather than substantively modified.

During the trial, the patentee’s infringement testimony and evidence relied upon the original claim construction that did not expressly require the stepwise ordering. Thus, it is not surprising that evidence presented fails to prove infringement under the new construction.  What is surprising, however, is that the Federal Circuit did not order a new trial based upon the modification.

148 thoughts on “Giving Effect to the Order of Steps in a Method Claim

  1. […] construction decisions by Judges Ware and Chen in Mformation Technologies v. RIM (also noted on Patently-O). And we’ll be getting more attention from the East Coast soon, as the Patent Office announced […]

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  2. NWPA, “Random dirt bag, the industrial revolution was fueled by patents and scientific progress was fueled by the scientific method. Those that say I want to judge ’cause are the ones that impede progress. They are the non-enlightened ones.”

    There you go again.

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      1. Ned only finds such acceptable (and calls it “swagger” to be enjoyed) when it aligns with his agendas.

        He is ever the hypocrite.

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    1. What is your point, Ned?

      Clearly, Random Examiner is anti-patent and quite clueless on patent law. Your “rallying” around him is just one of those “6-is-a-genius-because-he-agrees-with-me” things.

      It’s rather pathet1c the way that you lose track of all reason in your curse-ades.

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  3. I can’t help but notice that nobody has challenged the fact that the “establish” limitation clearly DOES something – namely it removes from the claim devices which would request the connection even if it doesn’t request the transmission.

    This isn’t a standard limitation, its a sub-limitation within a statement that it will be done “without” a request. Remove the limitation and the scope of infringement expands.

    Unless someone wants to argue that this isn’t true, then the main argument for saying there must be an order is simply wrong because the limitation isn’t superfluous. If the claim doesn’t fail for obviousness, Blackberry infringes.

    Once again the Federal Circuit is wrong, correct?

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    1. Random, I’ve been holding off telling you this because you’re an examiner. But you just keep on posting like this.

      Brosef, you’re dumb. And I mean that in the nicest possible way. Dumb people need love too, we all need to love dumb people for what they are, but brosef, you dumb.

      To address the “substance” of your most recent dumb post, yes, the limitation “does” something under any reasonable construction. But it does not “do” something under the construction that the patent holder is arguing for. The patent holder wants the limitation to be able to be folded into the other sub-step (like blackberry does irl) and by doing so render the limitation superfluous (since there must be a connection established during the transmission step since the transmission itself would be the establishment of a connection).

      This isn’t rocket scientry bro.

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      1. The patent holder wants the limitation to be able to be folded into the other sub-step (like blackberry does irl) and by doing so render the limitation superfluous (since there must be a connection established during the transmission step since the transmission itself would be the establishment of a connection).

        Right…it is impossible to transmit without establishing a connection, and the court seizes on this to say that the “establishing” step must do something more because otherwise it would be pointless because the “transmit” step inherently requires establishing a connection. I have no problem with that logic (other than it flies in the face of some of their other cases, but that’s not being raised here).

        They conclude that the “something more” must be to make it an ordered claim. This I have an issue with, because it could be for another purpose: it could be limiting the requests possible by the device.

        I don’t know if you’re in the area, but read the spec paragraph starting with “in steps 408 and 410.” Ask if what he’s trying to do is remove “pull” connections from claim coverage. Here’s the language:

        In an embodiment in which remotely managed device 502 is a pull device, the management agent running on device 502 will occasionally connect to management server 508 and request the commands in mailbox 512. In an embodiment in which remotely managed device 502 is a push device, management server 508 will occasionally connect to remotely managed device 502 and transmit the commands in mailbox 512 to management agent 504.

        That tracks the claim language. It sounds to me like he just wanted to disclaim pulls, which would make sense since pulls are older and thus would have more references about them, and most every device has push functionality nowadays anyway. i.e. very little gain in coverage, but made obviousness much easier to show. You’ll notice that none of the dependent claims mention either push or pull language, which lends credibility to the idea that the independent itself was limited to one type.

        If the language is for disclaiming pulls, it is not for the purpose of creating an ordered setup. Sorry if this is too rocket sciencey for you brosef.

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        1. My participation in this conversation is regrettably at an end.

          Also, have fun twisting yourself into knots over this fairly simple claim construction issue. If you’re anything like several other folks I know around the PTO, you live for that sort of thing and do it over much.

          Have a nice evening.

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        2. it is impossible to transmit without establishing a connection

          /face palm

          Where do these people come from?

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          1. Just quoting the language of the district court. maybe?

            Below, the district court read an order-of-steps requirement into the claim, concluding that “before the server can ‘transmit’ the command, it must first ‘establish a connection’” that is used for transmitting.” J.A. 89. The district court explained that, “[i]n the context of a network communication, the ordinary meaning of the phrase ‘a connection’ is ‘a means of communication or transport.’”

            Blackberry supports the conclusion by arguing: According to BlackBerry, if the “establishing a connection” sub-step were not temporally distinct from the transmitting sub-step (and prior to it), there would be no reason to specify a separate sub-step for establishing a connection at all, as it is inherently part of transmitting a command.

            You simply can’t transmit without establishing a connection (well you could, you could broadcast, but that’s not in play here, it’s a targeted command to a targeted device).

            The court buys the “no reason for a separate sub-step” argument. But there is a reason for the separate sub-step, it makes clear that the “establishing” cannot be done by the device. i.e. it disclaims pull messaging.

            Surprised you’re so intent on bashing me that you’ll go against your court and a pro-patent position. I’m actually saying there should be infringement here. Little surprised.

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      2. Yeah I just checked the file in edan. You might want to do the same, see how the claims were originally structured (see claims 1, 5 and 7 as filed, 7 being the cause of patentability), and rescind your statement brosef.

        The most likely reading of the claims in view of the spec is that the language being argued about is a disclaimer of pull/fetch messaging and not a requirement of a stepwise order.

        By the way for others listening, all the other claims were rejected using 2 prior arts, and a threshold condition (the limitation found allowable) for action certainly pre-existed the filing. This patent was issued before KSR, and certainly would have been found obvious post KSR. This is just a bad patent. I’m surprised it wasn’t taken out via obviousness at trial. The decision doesn’t say if Blackberry raised an obviousness defense or relied upon non-infringement.

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        1. “You might want to do the same”

          “see how the claims were originally structured (see claims 1, 5 and 7 as filed, 7 being the cause of patentability), and rescind your statement brosef.”

          No thank you.

          “The most likely reading of the claims in view of the spec is that the language being argued about is a disclaimer of pull/fetch messaging and not a requirement of a stepwise order.”

          I couldn’t give less of a sht about what your opinion about what the “most likely reading” is. It is literally impossible.

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      3. 6, I think the real issue is “completion.”

        No one suggests that establishing must occur before transmission. But this is from the point of view of the server. Thus it could begin transmission before it, the server, receives an ACK.

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        1. “No one suggests that establishing must occur before transmission.”

          I’m pretty sure that the court “suggested” that. In fact, they “held” that pretty much.

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          1. 6, as I read the opinion, it required the act of establishing to be completed before transmission.

            The used the “established” language in the “threshold” limitation to make this determination.

            However, the threshold limitation only relates to the initiation of the establishing step, not its completion. The Feds seemed to get things backwards, as did, it appears, Judge Ware.

            The claims read literally on the Blackberry system if someone could tell us about Blackberry’s threshold condition.

            Now, if that is “You got mail,” I am thinking that such a condition is obvious if everything else in the claim is old.

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          2. There is a difference between the statement “no one suggests that establishing must occur before transmission” and “no one suggests that establishing must be completed before transmission.”

            This isn’t rocket scientry, bro.

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    2. Proust is the ultimate ’cause person. ’cause she said so.

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  4. The reason the claims were allowed was the “threshold condition” whatever that means. Nothing else in the claim is novel.

    Can anyone tell from the claim what the threshold condition is? Is it defined in the spec?

    Regardless, whether the connection was completely established before transmission began does not seem relevant or even important to the claimed invention.

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    1. You are forgetting (again) that notion of novelty that comes from claims as a whole.

      (unless you want to comment on any items that is comprised of electrons, neutrons and protons…)

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    2. As I suspected, threshold condition is not defined in the written description, nor are any examples given.

      Please, anyone, what is wrong with a claim where the point of novelty is a functional statement and no one knows precisely what it means?

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      1. What has you confused about threshold condition?

        I know precisely what it means. It means there is a monitored parameter and when it goes one side or the other of some threshold value, then the connection is established.

        Just a wild guess, but I’d bet a coupla bucks that the parameter has something to do with signal strength.

        It might also be an account balance or a number of emails in the email account, or a total size of emails in the email account, or an age of an email in the email account.

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        1. Actually, Les, we don’t know what it means because it is something is going on at the server and not something is going on at the wireless device. Some threshold condition other than a periodic a timeout causes the server to connect to the wireless device and then transmit the command. What this is is completely unknown and completely ambiguous.

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          1. But apparently, with the freedom to apply any threshold imaginable against this language, the examiner was unable to find any prior art.

            That’s appropriately broad language. It is not ambiguous.

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            1. with the freedom to apply any threshold imaginable against this language, the examiner was unable to find any prior art.

              One of the biggest problems in patent law is that the assumption you’re making here (that because the patent issued on this limitation there was no art found for it) is simply not true as to how the office works.

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          2. What this is is completely unknown and completely ambiguous
            A common malady — confusing breadth with ambiguity.

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            1. Mr. Y, give me an example of a threshold condition. (BTW, none are listed in the spec., nor is it given any definition or meaning.)

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        2. Just a wild guess, but I’d bet a coupla bucks that the parameter has something to do with signal strength. It might also be an account balance or a number of emails in the email account, or a total size of emails in the email account, or an age of an email in the email account.

          Sounds like you don’t know what it means. Sounds like you’re completely foggy on the very thing that led to patentability.

          Regardless, that’s a ridiculous reason, because every mail account has threshold conditions. I’ll give you a hint on one prior art – back in the AOL days the flag would trigger a voice saying “You’ve got mail.” Want to guess what that trigger condition is?

          “I’d bet a coupla bucks that the parameter has something to do with signal strength.”

          Yeah, phones didn’t log onto a base station based on signal strength prior to this application, that’s it.

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          1. And just to clarify – the fact that you’re saying:

            It means there is a monitored parameter and when it goes one side or the other of some threshold value, then the connection is established.

            and following it up with this:

            Just a wild guess, but I’d bet a coupla bucks that [it could be]…

            Means there’s a 101 issue. If the differentiating factor from the prior art is a machine that uses a trigger condition to connect/send mail, the claim is directed toward “triggered network connecting” and is an abstract idea.

            the parameter has something to do with signal strength.

            It might also be an account balance or a number of emails in the email account, or a total size of emails in the email account, or an age of an email in the email account.

            Look ma, it’s the stuff that would save it from a 101.

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            1. Random, how can one make a 101 rejection without knowing what a threshold condition is? Is the real issue here indefiniteness? Just take a look at the wild speculation here as to what it could be. No one knows.

              Now, if this is the PON, and the spec does not define what it is, gives no examples, and no one of skill in the art can reliably tell us what it is, isn’t there also a WD problem?

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          2. I’ll give you a hint on one prior art – back in the AOL days the flag would trigger a voice saying “You’ve got mail.”
            You must be an examiner because your grasp of the limitations is poor — at best.

            The claim recites “wherein the connection is established based on a threshold condition.” AOL’s “you’ve got mail” is in no way a threshold condition for establishing a connection. The “you’ve got mail” is conditional upon (new) mail being received.

            phones didn’t log onto a base station based on signal strength prior to this application, that’s it
            The claim called for a connection between the wireless device and server. A base station is not a server — not even under a broadest unreasonable interpretation.

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            1. The claim called for a connection between the wireless device and server. A base station is not a server — not even under a broadest unreasonable interpretation.

              Would advancements in another field prompt application to others? Yes. Is a base station a server? No, but would it be obvious to apply the phone/base station acts to the similarly situated device/server? Yep.

              The “you’ve got mail” is conditional upon (new) mail being received.

              There ya go. New mail into a mailbox triggers an act. For AOL the act was playing a sound, but is initiating a connection known in the art? Yep. Simple substitution.

              AOL’s “you’ve got mail” is in no way a threshold condition for establishing a connection.

              You’re bad at this. Obviousness is not a series of anticipation rejections. I’m not required to show it existed as claimed, I’m required to show it would be obvious to do it. The limitation for establishing the connection was presumably already taught a few limitations prior (otherwise the threshold condition would not be the reason for patentability), this limitation only further required the teaching of a triggering condition.

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              1. The limitation for establishing the connection was presumably already taught a few limitations prior (otherwise the threshold condition would not be the reason for patentability), this limitation only further required the teaching of a triggering condition.

                You’re way over Yawn’s head, RG. Yawn understands matching the words in the claim to word in prior art references and that’s about it. Basic, elementary logic confounds him because it would require him to pull his head out of the sand where it’s clearly very warm and safe.

                Let’s all pretend we were born yesterday because there’s some computer stuff mentioned in the claims. Plus … wireless! omgomgomg Man, that’s a lot of “technology”.

                Who could have predicted that the concept of meeting a threshold condition would apply in the sooper dooper technical world of wireless computing????

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              2. It’s a rare and strange occasion when I agree with anon, but when Random steps up to the plate even that strange thing can occur.

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              3. “Obviousness is not a series of anticipation rejections.”

                Nope, but it does involve these things called the graham factual inquiries. Look into them sometime.

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            2. “The claim recites “wherein the connection is established based on a threshold condition.” AOL’s “you’ve got mail” is in no way a threshold condition for establishing a connection.”

              It was a theshold condition for my establishing a connection with my gf! Badump shhhh!

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            3. Yawn, you also have it backwards. The server was required to establish a connection based on the threshold condition.

              Again, what that condition is is not discussed in the spec. The specification assumes everyone knows what it is. But as we discuss here, no 0ne really knows what it is. We are just speculating.

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    3. On the merits, Judge Ware did seem to impose a past tense “established” requirement in his jury instructions. I think this was error as when one reads the specification, and the arguments, seems clear that the term “established” relates to the requirement of a threshold condition, and that simply triggers the process of establishing a connection. Threshold condition and a periodic time were two ways the server was commanded to establish a connection.

      The spec does say that the “command” for the wireless device be transmitted after the connection is established. However the claim does not require that and it was not material at all to the novelty of the claim.

      While I still do not know what threshold condition means, I still come away with the distinct impression that an unnecessary limitation was read into the claims as a part of claim construction/jury instruction in this case to defeat the patent owner.

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  5. “Thus, here it was important that the Federal Circuit found that the claim meaning had only been “clarified” rather than substantively modified.

    During the trial, the patentee’s infringement testimony and evidence relied upon the original claim construction that did not expressly require the stepwise ordering. Thus, it is not surprising that evidence presented fails to prove infringement under the new construction. What is surprising, however, is that the Federal Circuit did not order a new trial based upon the modification.”

    Surprising to you perhaps, but not to any U.S. patent prosecutor.

    If the claims were not amended, and the applicants did not submit any related information, the PTO cannot present a new ground of rejection AND make the Office Action final. If a new ground of rejection is presented under those circumstance, the Office Action must be made non-final to give the applicant an opportunity to amend or argue against the new grounds.

    Accordingly, having, after reviewing applicants response, recognized that cited paragraphs 24, 36 and 17 do not in fact support a rejection of claim 1, the Office will often “clarify” the rejection by citing paragraph 108 and insist that since the paragraphs are in the same document this is not a new ground of rejection and make the action final. Most often, they play the game by not modifying the actual rejection. Instead, they sneak the new ground of rejection in a Response to Arguments section.

    How about a patent reform movement to deal with THAT injustice and insanity. Might cut down on RCEs…

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    1. Yes Les. The more we get into the ’cause territory (out of TSM), the more we also get just plain do whatever you can get away with.

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    2. Nice Les – but this was not a patent application and was a granted patent, so your comment is not germane to this particular case.

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      1. Well, if your going to bring that up.

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      2. It is germane to the point I was addressing: Dennis’ surprise at the behavior of the Court.

        Your arrogant comment was not germane.

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        1. The “clarification” was performed by the District Court, Les, not the PTO, so the PTO’s practices are irrelevant.

          I agree with you regarding the frequent abuse of the rules for finality at the PTO, though.

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          1. OMG!

            I am merely pointing out the similarity in the abuse of power of “deciders”.

            The PTO’s practices are irrelevant to what? Some conversation YOU are having?

            They are relevant to the conversation IIIIII am having.

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            1. the point I was addressing: Dennis’ surprise at the behavior of the Court

              …the behavior of THIS court – in THIS case: thus, the status of the intellectual property in question is very much germane.

              Now, if you want to talk about a different set of circumstances, no problem – but realize that Prof. Crouch was not talking about the topic that you jumped to, and thus the corrections offered (by both myself and DanH/Leopold) are on point.

              Getting all flustered about it is not helping you.

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              1. Check again Les. Ignoring the fact that you do need help is a sure-fire way of maintaining the need for help.

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              2. “Ignoring the fact that you do need help is a sure-fire way of maintaining the need for help.”

                Said the psy cho path with OCPD.

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        2. Your inability to accept criticism is a severe weakness Les.

          You attribute “arrogance” where there is none. Re-read my comment.

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          1. I am not going to re-read your arrogant policing of the conversation.

            Your “criticism” it that I’m not allowed to discuss what I want to discuss if it is tangential to the conversation you are having with the voices in your head. I find the conversation in your head disturbing and I would like to have a different conversation, if that’s ok with your highness.

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            1. LOL – You are more than free to wallow in your ignorance Les. Makes no real difference to me (although, you just might care that you are being a wayward @$$ about it, and seeing imaginary slights – the voices, my friend, are very much in your own head).

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            2. I thought it was a good point Les. I saw immediately that you were making an analogy to the new ’cause we say so reasoning.

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            3. “Your “criticism” it that I’m not allowed to discuss what I want to discuss if it is tangential to the conversation you are having with the voices in your head. ”

              That’s always his criticism. He has a mental disability.

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              1. I see that 6 is missing the point (and badly) here – Les is allowed to discuss what ever he wants to discuss – as I noted.

                Try again 6.

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          2. “Your inability to accept criticism is a severe weakness Les.”

            Said the owner of all Truths of Evar.

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              1. Ah! A “reference” that “deals with” my “errant” views! Lulz. You’re hilarious brosef. Your OCPD flairs up even while you’re trying to downplay your having OCPD.

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    3. the Office will often “clarify” the rejection by citing paragraph 108 and insist that since the paragraphs are in the same document this is not a new ground of rejection and make the action final.

      This is an incomplete hypothetical. If 108 deals with the same items as 24, 36 and 17, it is simply elaboration (or clarification as most examiners seem to say). Citing to a different portion of the same document to elaborate on what has been cited previously is not a new ground, see MPEP 1207.03(a).

      The purpose of a new ground standard is to give due process to applicants, and its tough to argue you haven’t received process when you’ve been handed the document before. I could see a rule which simply says “anything in the same document is fair game” as being a valid rule. You’re charged with the knowledge of your applicant, how hard is it to hand him the document and ask him “is there anything in there that reads on our limitation about X?”

      I agree it can be abused, because its possible to see 2000 paragraph applications, and it’s possible 1950 has nothing to do with 138, or the reasoning may be completely different, and those cases are wrong. But simply saying “You cited 17, 24 and 36 and now you’re citing 108″ doesn’t inherently make it a new grounds, especially if 108 is just the detailed section of the element discussed in 17, 24 or 36.

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      1. The irony of Random Examiner wanting the application to be responsible for “whatever is in the document” as he is the same guy who cannot be bothered with examining the entire application as submitted (the notion of whatever is in the document being fixed at filing date), and who throws a conniption when an amendment is made and he has to “do a new search.”

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        1. who throws a conniption when an amendment is made and he has to “do a new search

          Where does this come from? You clearly have plenty of things to rant about when it comes to me without making things up.

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          1. It comes from your past whinings – and yes, you have given plenty of things for me to “rant” about as you have whined about some of the silliest things.

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  6. In this case it wouldn’t matter whether there is an order o operations or not. They’re separate steps, and the blackberry does them all as one big “together” step. They wouldn’t infringe even if they dropped the order.

    Though frankly in the context of the claim it is not completely out of the realm of reasonable constructions to require an order. Especially if the spec shows that happening every single time.

    “What is surprising, however, is that the Federal Circuit did not order a new trial based upon the modification.”

    Sort of, but meh maybe not really, the outcome seems like a foregone conclusion.

    “We are persuaded … that the separate sub-step for establishing a connection would become “superfluous” if we concluded that a connection did not have to be established (completed) before transmission. That is because, under such construction of the claim, establishing a connection is necessarily encompassed in transmitting a command.”

    That is also true, buuuuut, technically speaking they could just be referring to a different establishment of a connection.

    But it doesn’t make a hill o beans anyway for blackberry.

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    1. Technically speaking, it’s crystal which connection is being established and the order of steps. Only a desperate attorney could ever succeed in convincing himself or herself otherwise.

      This case went off the rails at trial. The judge did the right thing by chucking the jury verdict and the CAFC was wise to let it lie in the gutter.

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      1. I think the claim construction needs to be viewed in light of how they were trying to get out of infringement.

        At least by rational decent people. (So, I guess Mills doesn’t need to bother.)

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        1. Let’s see if a conversation may break out here:

          NWPA, are you saying that design around efforts should be taken into account for basic claim construction?

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          1. I am saying that the arguments that are being presented for non-infringement need to be considered during claim construction.

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            1. In what way would you have the arguments considered? As an indicator (perhaps) of what one having ordinary skill in the art to which the invention pertains understands the claims?

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              1. I am very busy today and haven’t read the case, but just from reading the post it appears that the non-infringement argument has something to do with “establishing a connection between the wireless device and the server.” So, is Blackberry splitting hairs on the meaning of these elements?

                And the reason is simply that it is evidence of how one skilled in the art would interpret the claims (at least admissions) and because how finely a construction needs to be on a element is determined by the non-infringement and invalidity arguments.

                Here, I am not sure what is going on–frankly. But, a wild speculation is that Blackberry is saying they aren’t communicating over an established connection or don’t do that but just transmit. But, the court needs to consider then what they are doing since they are trying to say it isn’t that (the establishing.)

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              2. the reason is simply that it is evidence of how one skilled in the art would interpret the claims

                Thanks – that was the clarification I was looking for.

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    2. A claim should be viewed as a finger print/ check list.

      Blackberry establishes a connection? Check
      Blackberry transmits a command? Check

      6, you know darn well that if you had the blackberry method as prior art, you are not allowing the other application because the claim implies an order that is different. You would allege that they are obvious variations….

      In the context of an infringement suit, these are called equivalents.

      Moreover, the contemporaneous argument is nonsense. Even if it is a mere transmission of the command that causes the connection, the first thing that has to happen is the identity of the transmitter is verified or authenticated thereby establishing the connection, then the receiving device accepts and processes the rest of the transmission. It doesn’t just accept command from anyone.

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      1. “6, you know darn well that if you had the blackberry method as prior art, you are not allowing the other application because the claim implies an order that is different. You would allege that they are obvious variations….”

        That may be true. Kind of irrelevant for infringement tho.

        “In the context of an infringement suit, these are called equivalents.”

        Actually not. But, they were free to allege equivalents and admit that blackberry did not literally infringe. Indeed, I don’t think blackberry’s method is an equiv since it does not do substantially the same thing in substantially the same way. The way is substantially not the same way.

        In any event, as always, I spit upon the doctrine of windfall for things I admit I did not invent or even claim.

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        1. In any event, as always, I spit upon the doctrine of windfall for things I admit I did not invent or even claim.

          LOL – the little red queen /humpty dumpty would decree the law be otherwise.

          Reply
  7. >We are persuaded … that the separate sub-step for establishing a connection >would become “superfluous” if we concluded that a connection did not have to be >established (completed) before transmission.

    Well, I didn’t read the opinion, but if this is true then how could it affect infringement? And, if it did affect infringement, then this must not be true.

    Reply
  8. This claim is horrible. Registration was well known before 2005 (see any company’s marketing/tech support department), remote commands to control a computer were known before 2005 (see “internet, the”), and sending data in an email was well known before 2005.

    I can tell you what got this claim allowed: “without a request from the wireless device, performing the steps of” along with the argument that the cited references are silent, or in fact loud on the issue, since most requests for setting up an email account for a wireless device come from a wireless device. As if nobody in the world could issue the command from a separate device or internally just because it isn’t written down in a document.

    Regardless, I think it’s so sad it’s funny that the court states: “We are persuaded by BlackBerry’s argument that the separate sub-step for establishing a connection would become ‘superfluous’ if we concluded that a connection did not have to be established before transmission. That is because, under such construction of the claim, establishing a connection is necessarily encompassed in transmitting a command.”

    This is terrible logic. The establishing is what enables the transmission. Without the limitation there is a possible WD attack a la Lizardtech.

    Further, the establishing is an act that requires participation of the device, yet the claim specifically prohibits a request from the device, so including the limitation performs the non-superfluous act of removing devices which request the channel (but don’t begin the transmission, indeed how could they?) from infringement.

    Beyond that, I suspect the evidence would actually show an “established” connection. Unless you’re going to broadcast a single packet to anyone who is listening, you’re necessarily going to target a particular device, and that device has a protocol about what to do when it receives the data (usually it’s to send a response packet saying “i’ve received it, send the next one”) and that constitutes an establishED connection.

    Reply
    1. Without limitation: Prior art would be a device which requests a connection, and the server is programmed to automatically deliver mail when they get a connection request.

      With limitation: Only prior art is when the server requests the connection as well as the transmission.

      The former would be a type of fetch messaging, and its perfectly reasonable to write a limitation to exclude it. Its simply not superfluous.

      Reply
    2. Even when the federal circuit is doing something I like (preventing an infringement judgement for a claim that shouldn’t have issued) they manage to muck it up.

      Reply
    3. As if nobody in the world could issue the command from a separate device or internally just because it isn’t written down in a document.
      Hindsight is so illuminating. I can see why RG and MM are addicted to it.

      Reply
      1. Hindsight is so illuminating.

        So is using pulling your head out of your axx.

        Try it sometime.

        Reply
        1. So is using pulling …
          Another stunning piece of analysis by MM. Why he hasn’t been permanently banned from this blog is a mystery.

          Reply
          1. Well Yawn, he does hold the record for most posts expunged for being tasteless and improper (by far – more than all others combined).

            Reply
      2. Hindsight is so illuminating.

        Another thing that’s illuminating is noticing how the basic logic that was used for eons in the development of methods and systems for transmitting, processing and/or storing non-digital information (and the associated pre-digital art) somehow gets completely ignored when it comes to evaluating the obviousness of computer-implemented j nk. Why is that, I wonder? It’s especially odd considering that most computer-implemented j nk claims do nothing more than recite one or more logical frameworks (“if-then” pathways) for a computer (or computerized system) to follow.

        When will these computer-implemented art units grow up?

        Reply
        1. When a general purpose computer configured with software and claimed with functional claims to a general purpose computer replaces you.

          Reply
        2. When a gen eral purpose computer configured with software and claimed with functional claims to a gen eral purpose computer replaces you.

          Speaking of growing up: have you sent your pledge in to Dennis not to libel Gen e anymore so that we all don’t have to keep putting in spaces?

          Reply
            1. Are you pretending that your obsession has not had this obvious effect, Malcolm?

              Sort of like your pretending that patent rights are not under attack from the Left and from the Right?

              Reply
        3. When will these computer-implemented art units grow up?
          Putting down the USPTO again?

          Reply
      3. Yes, MM is great at writing claims to systems that have existed for a long time. He isn’t so good at writing claims that will exist. We keep telling him that he could be rich if only he could flip his remarkable hindsight into foresight.

        Reply
        1. B-b-b-but ‘oldbox’ inherently has all future inventions “already in there” – so says the “House/Morse” fallacy that the anti’s belieb in.

          Reply
        2. writing claims that will exist.

          You gotta love it when the truth leaks out of the patent t e a b a g g e r s.

          Too f u ck ing funny for words.

          Reply
          1. It should have been “to systems that will exist.”

            I guess when you have nothing you have to nitpick.

            Reply
              1. Don’t tell me that you are making that mistake again of wanting an actual reduction to practice, eh Malcolm?

                Reply
              2. Milly is nitpicking after being slammed hard. One of the joys of blogging with Milly is that he never admits defeat. He is a man’s man.

                (The reduction to practice objection is silly and opens a deeper discourse where again MM has so many intentional misconceptions that it is worthless to try to explain anything to him.)

                Milly if you want to try to make your argument I will spend some time explaining to you why you are wrong with some empirical evidence. But I am sure that Mill’s won’t do that.

                Reply
              3. For example, Mills, please contrast your lame enablement argument for information processing with your smelly chemicals.

                It just flows out your mouth like a broken sewer.

                Reply
      4. Hindsight is so illuminating. I can see why RG and MM are addicted to it.

        It’s only hindsight if you ignore that’s how every command was entered before networking, or how most commands are entered today.

        Right now, you’re typing out a comment and posting it over the internet, are you suggesting you wouldn’t find it obvious to write out the comment and save a copy locally instead? No, you’re right, you would totally need a separate reference for that, cause nobody would think of that stuff without being told.

        Reply
        1. Depends on the content of the content. Is it copyrighted and could you charge money or make people look at an ad first? Does it pertain to available real estate or something sooper technical like that?

          Reply
        2. Radom: the reason you want a reference is that hindsight inhibits one’s ability to judge what is obvious and what is not.

          And, it keeps examiners honest and provides a more objective way to evaluate an invention.

          Frankly, your and MM’s method of I will look at it and judge is an offensive to rational thought and progress.

          Reply
          1. You really might want to think about what kind of world you want to live in. Try to use what little reasoning power and decency you have to extend this line of thinking to other areas of law and life.

            If you try real hard and are an honest person, you might turn yourself around and have some hope of understanding what decent people would like for the world.

            Reply
            1. But from where I am sitting Random, you appear to be one of the type of people that causes wars, misery, torture, and inhibits our society.

              You no doubt have little power and are merely a want-to-be, but there is no doubt that you carry a dark character. That your spirit is not good.

              Reply
              1. NWPA,

                You give too much “credit” to Random Examiner.

                Much like 6, Random is merely another examiner lemming, unable to understand the viewpoint that he parrots. As such, the enmity that should be saved for those that knowingly pervert the law should not be expressed towards him.

                Reply
              2. Well, anon, I agree with that to some extent, but I am afraid little Random and 6 are the agents of abuse. I know it sounds too strong, but I am afraid that the roots of abuse lie right in the arguments made by MM. When reason doesn’t trump your position, then you are a short step to all the ills that have plagued our species since the dawn of civilization.

                And, I am afraid at the core of all of these battles is does reason trump your self interests. And with Lemley, MM, Ned, etc. the answer is no.

                Reply
              3. There is no doubt that they are agents of abuse. And yes, they deserve a healthy amount of disapprobation. But they are not attorneys and are not violating the same level of ethical responsibility that inures to members of our profession. The worst disdain should be reserved for those who not only should know better, but (as evidenced by volunteered admissions against interests) have shown that they do know better – and still seek to subvert the rule of law in order to pursue their agendas.

                In an allusion to Dante, the mere pawns/parrots/lemmings are in an outer circle.

                Reply
          2. Frankly, your and MM’s method of I will look at it and judge is an offensive to rational thought and progress.

            No, it’s really not, because it’s specifically what the Supreme Court tells us to do. It’s precisely because things are so obvious that they’re rarely written down. Just because you don’t like KSR doesn’t mean you get to pretend it doesn’t exist. I’m not bound to the TSM test for precisely the reason the court said – it is too restrictive over what is obvious.

            The reason the “without a request from the client device” limitation is in there is because everyone knows that’s the common way to do it – you send a request from the device for your mail. But the very nature of the system would allow a second device to request on behalf of the first device, or for the user of the first device to walk to the server and enter the transmit command there or even (and here’s a shocker) set up an automated delivery system where the server doesn’t take requests, just pushes the data on set time intervals. You could set it up to deliver that mail every day of the week. Well not every day, you should give the server some rest – every day but Sunday. Nobody would ever think of delivering non-requested mail six days a week. Patent please!

            It’s arguments like this where I really wonder if your head is on right. Arguing it’s hindsight bias to modify email delivery to apply the commands at the server (how all commands were entered before the internet) or to use the same system that has been used for about 225 years.

            If you try real hard and are an honest person, you might turn yourself around and have some hope of understanding what decent people would like for the world.

            Don’t drink in the middle of the day dude. Your clients will smell it on you.

            Much like 6, Random is merely another examiner lemming, unable to understand the viewpoint that he parrots.

            In the words of Plato as Socrates’ prisoners emerge from the cave: “Scoreboard”.

            Reply
            1. Random, what nonsense. Objective measures are what powers progress forward. The scientific method is where our progress has come from. And, examination needs objective measures like TSM not some dirt bag like MM sticking his wang out and saying, “’cause I don’t like it man.”

              Reply
              1. And try to remember Random dirt bags like MM add and if you service the thing that I just put in your face (or drop me some $$$) I think I can see my way to reversing my ’cause.

                Reply
              2. And Random dirt bag, the industrial revolution was fueled by patents and scientific progress was fueled by the scientific method. Those that say I want to judge ’cause are the ones that impede progress. They are the non-enlightened ones.

                Reply
              3. And, examination needs objective measures like TSM

                Obviousness is based on what a PHOSITA would be motivated to do at the time of filing. That’s an objective measure. If you don’t think he would have that motivation, go ahead and appeal and someone will pass on if you’re objectively right. The fact that you get an appeal must mean it’s not a subjective standard, because otherwise they would summarily uphold my motivation. Regardless, you’ll find you won’t get very far, especially when the motivation is to copy a system (non-requested delivery) the US Postal Office has seen fit to use for over 200 years.

                You’re not upset about an objective standard, you’re upset about there not being absolute proof. But I’m not held to an absolute proof standard, nor even a reasonable doubt one. I just have to make it more likely than not, and I can make it more likely than not by explaining how someone would want to do it. I don’t need to point to a TSM in the same way cops don’t have to catch the criminal in the act to convict. Yet people are convicted every day despite there being no confession or video tape, but for you there must be a black and white piece of evidence saying there can be no doubt. Get real.

                Reply
        3. Right now, you’re typing out a comment and posting it over the internet, are you suggesting you wouldn’t find it obvious to write out the comment and save a copy locally instead? No, you’re right, you would totally need a separate reference for that, cause nobody would think of that stuff without being told.
          As someone who has personally seen the level of sophistication of both software (and hardware) grow over the past 35 years, your comments smack of hindsight. What is possible and/or obvious today may have been flat out impossible but 10-20 years ago.

          Reply
          1. You are too polite, Yawn, as it smacks of something more odoriferous than mere hindsight.

            Reply
          2. As someone who has personally seen the level of sophistication of both software (and hardware) grow over the past 35 years, your comments smack of hindsight. What is possible and/or obvious today may have been flat out impossible but 10-20 years ago.

            Due in zero part to patents, as most software patents don’t teach anything.

            Regardless the claim claims none of that “sophistication” (what a ridiculous word to apply to functional claiming) and only asks that actions be done without a request from another machine. It’s not even a question that is not hindsight – as the majority of actions are done without another machine requesting it. You could avoid the request by setting the entire thing on a timer using “sophisicated” digital alarm clock technology (not even talking about the myriad examples of computer timers). Tell me, was that impossible on December 5, 2000? I actually own a digital alarm clock older than this application.

            Reply
            1. Due in zero part to patents,

              LOL – now that’s an unsupported conclusary statement…

              I’m pretty sure that his comments were not limited to the application at hand.

              But hey, since you don’t like the technology of software, you too are invited not to partake in the fruits of that innovation.

              The chances are nill that you will avail yourself of this option and put your money where your mouth is.

              Reply
              1. Tell you what, I promise not to use any software that wouldn’t have come about when they did but-for patent disclosures to the public.

                I will avail myself of that right now. I’ll let you know when I feel that kick in.

                Reply
  9. $200 million

    For a functionally claimed method of managing a mailbox. In the year 2014.

    Try to believe it, folks.

    Reply
    1. Try to believe it, folks.
      So much for the public outcry against these so-called j nk patents.

      Reply
      1. So much for the public outcry against these so-called j nk patents.

        “So-called”? That’s funny.

        But not as funny as your feeble attempt to change the subject.

        Reply
  10. Has any significant verdict – more than the expense to litigate – actually held up since Versata (killed by PTAB)?

    What was the last one before Versata?

    Reply
  11. Dennis is correct — a new trial was in order here.

    Don’t know whether Mformation also argued DoE, but it could have won the day for them. Not that they realized they’d need it.

    And in any case, here’s yet another case where you sure would have liked to have an active con.

    Reply
    1. here’s yet another case where you sure would have liked to have an active con.

      Pretty sure there were plenty of cons involved here.

      Reply
  12. What an incredible piece of j nk. Four years of litigation over a method of “managing” what comes in and out of a flipping mailbox? Oh wait — there’s a POWERFUL COMPUTER BRAIN involved so we all have to pretend we were born yesterday and everything ancient is shiny and new again.

    Just look at all that “technology” in the claim — “transmitting”, “veryifying”, “placing” (WOW!), “executing” (double WOW! WOWOW). I wonder how many brilliant inventors it took to pretend to solve this sooper difficult “problem” of “managing” the receipt of stuff at a mailbox. The claim looks like something that could have been conceived of and written by a 12 year old. But, hey, these are The Most Important Innundators Ever so we have to give them slack. Or else, well, you know: the tears will flow like a river.

    During the trial, the patentee’s infringement testimony and evidence relied upon the original claim construction that did not expressly require the stepwise ordering.

    How on earth is it possible to carry out this method without at least some stepwise ordering? You can’t “place a command … in the mailbox at the server” without first “establishing a mailbox at the server” unless “establishing” is given some bizarro world meaning completely unrelated to its plain English meaning. Likewise, you can’t “deliver a command from the mailbox” until the command is “placed there.” And you can’t “execute the command at the wireless device” until you deliver the command to the wireless device. On and on it goes.

    If the steps in this claim weren’t limited to the order in which they are recited, then how in the world could this claim possibly be valid?

    You really gotta love the chutzpah of the wannabe rocket scientists who “innovate” claims this j nky and then think everyone owes them hundreds of millions of dollars. What an incredibly broken patent system we have.

    What is surprising, however, is that the Federal Circuit did not order a new trial based upon the modification.

    What’s surprising is that the District Court judge did what judges are supposed to do and pulled the plug on this utterly disgusting example of the patent system at its very worst.

    Reply
      1. You want some real excitement, Billy? Go over to you favorite blog and watch the lovefest between Big Jenny and Little Bobby Zeidman. Best part:

        we are reminded practically every time we start our desktops that software doesn’t work the way it’s supposed to

        No kidding. So remind everyone why are you entitled to use functional language in your j nky computer-implemented claims. Go ahead.

        Or just keep ducking that issue and keep pretending that dreaming up new functionalities for a computer requires any special skills at all. It’s not like the issue is going to go away.

        We now return you to the regularly scheduled discussion about the Mailbox Arts.

        Reply
        1. “the Mailbox Arts.”

          I lulzed. I actually wonder why there is no straight up 101 assault on these “mailbox arts” patents. I guess supposedly there is some sort of upgrading of the device that occurred.

          Reply
        2. Malcolm reveals (again) his predisposition for a ‘Flash of Genius’ patent law era with “requires any special skills

          The faux-elitism from the one who stands at the edge of the field of rye – seeking to prevent any commoner from partaking in the sport of kings (while mouthing the class warfare ‘speak’ of “grifters” and such) – oh, the duplicity…

          Reply

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