In Robert Bosch v. Snap-On (Fed. Cir. 2014), the Federal Circuit has held that two different claim elements “lack sufficiently definite structure” that must be interpreted under 35 U.S.C. 112(f) as means-plus-function elements and, because corresponding structures were not sufficiently disclosed in the patent document (as required by 112(f)), the associated claims were held invalid as indefinite. Here the claim elements in question are a ‘program recognition device’ that plugs into a car motor to see if its control software is out of date and also a ‘program loading device’ that updates the control software if necessary. U.S. Patent No. 6,782,313.
Functional claim limitations are in vogue. Part of the reason is that the current generation of computer-focused engineers have been trained in an object oriented approach that discusses solutions more in terms of results than in detailed algorithmic steps. That approach makes it easier to create new tools and devices by relying upon the building blocks created by others. But, the carryover to patent law remains somewhat tenuous.
Functional claim terms also offer a mechanism for achieving broader claim coverage and claim coverage that is more aligned with the scope of potential competitor activities and follow-on innovation. The use of functional language for that purpose has a century-long history in U.S. patent law and has been much debated at all levels, including the U.S. Supreme Court.
When the Supreme Court discussed the topic in its landmark 1946 decision of Halliburton v. Walker, the Court described functional claim terms as those that focus on results – “what it will do” – and not on the actual physical implementation. In Halliburton, the court held:
A claim which describes the most crucial element in a “new” combination in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination, is invalid.
Id. The result in Halliburton was that the claim was found invalid under as indefinite because the functional language there (an “echo receiving means”) did not provide sufficient notice of the scope of patent rights.
The Patent Act of 1952 left intact a strong definiteness requirement but overturned Halliburton by enacting what is now known as 35 U.S.C. 112(f). That provision expressly allows for an element to be claimed as a “means” for performing a “specified function” but without actually specifying the physical characteristics of how it works. However, 112(f) has an important and significant limitation that cabins-in the scope of any such means limitation to only cover corresponding embodiments described in the patent document, and their equivalents.
(f) Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
A second limitation on 112(f) is the court interpretation that purely functional claim elements that are not physically described in the specification are deemed indefinite and the corresponding claim invalid.
US patent attorneys have taken notice of these legal limits on means-plus-function claiming and have largely abandoned the form. Twenty years ago, most patents included claim terms written in means-plus-function form. Today, that figure is under 5%. But the strategy for many does not eschew functional claim elements, but rather to integrate functional limitations together with structural limitations with the result being broadly defined claim elements that avoids the limitations of 112(f).
The Big Middle Ground
Partially Functional Elements: The rules are clear for claim elements written in purely functional terms such as a ‘means for communicating’ without any claimed physicality. However, there exists a vast middle-ground for claim limitations that include some functionality and some physicality. These might include a ‘circuit for communicating’ or – as in the recent Bosch Case – a ‘program recognition device.’
In Robert Bosch v. Snap-On (Fed. Cir. 2014), the Federal Circuit has affirmed a lower court determination that two different functional claim elements are indefinite and thus that the associated claims are invalid. The patents relate a motor vehicle software-update tool. The claims include a ‘program recognition device’ that plugs into the motor control unit to see if the software is out of date and also a ‘program loading device’ that plugs into the motor control unit to upload new software. Easy enough. But, the specification includes no diagrams and no real structural detail about these ‘devices.’
The Federal Circuit has a fairly straightforward algorithmic approach to functional claims elements. The first step it to determine whether the element qualifies as “functional” and, if so, interpret the limitation under the rubric of Section 112(f). For the court, a functional claim element is one recites a functional limitation without “reciting sufficient structure for performing that function” or that fails to “recite sufficiently definite structure.” EnOcean GmbH v. Face Int’l Corp., 742 F.3d 955 (Fed. Cir. 2014). The court also uses a linguistic shortcut — claim elements drafted in the form “means for [performing a specified function]” are also presumed to be functional. Similarly, elements that do not use the word “means” are presumed to be structural. Importantly, Federal Circuit precedent indicate that these presumptions are “strong.” See Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004).
Here, although the terms were not claimed in “means” form, the court found that they lacked structure and therefore were functional. In walking through its analysis, the court first looked at the claim words ‘program recognition device’ and ‘program loading device’ and found no structure other than the ‘nonce’ word device. Then, looking at the specification, the court found:
[The] ‘313 patent’s specification does not contain a single reference to the structure of the “program recognition device” itself; all of the proffered citations from the specification merely explain its function. For example, the statement that the external diagnostic tester is “equipped” with the “program recognition device” that “querie[s] and recognize[s]” program versions in the control unit is nothing more than a functional description. This passage is devoid of structure. Likewise, the passage that explains how the external diagnostic tester uses the “program recognition device” to automatically check which program version is currently on the control unit only describes the connection of the external diagnostic tester to the control unit in the vehicle. The specification is, therefore, also silent about any interaction between the “program recognition device” and other components of the system, including the external diagnostic tester. Contrary to what Bosch contends, the specification does not teach how the “program recognition device” receives and processes signals, as the words “signal” and “process” are not even in the specification. . . .
Because the claim terms lack structure, the court determined that they fall under the rules of 112(f) [112p].
The claim terms, construed in light of the specification, fail to provide sufficiently definite structure to one of skill in the art. The claim terms “program recognition device” and “program loading device” invoke § 112, ¶ 6.
The problem for Bosch in this case is that the same analysis of the specification above also supports the conclusion that the claimed function lacks structural description in the specification. And, as a result, the court found the claims invalid as indefinite.
Since we have concluded that both claim terms invoke § 112, ¶ 6, we now must attempt to construe the terms by identifying the “corresponding structure … described in the specification” to which the claim term will be limited. Welker Bearing Co., 550 F.3d at 1097. “If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed.Cir.2007). On this point, however, little needs to be said. Bosch did not argue to this court that, even if the claim language at issue is within § 112, ¶ 6, the language is definite because the specification sufficiently discloses corresponding structure. See Appellant’s Br. 51–52. And we also see no such disclosure.
Indeed, as already discussed in Part III.B, in the limited number of instances that the specification even mentions these claim terms, it offers no further guidance about their structures. Therefore, we conclude that “program recognition device” and “program loading device” are indefinite. Since these terms are found in the only independent claim of the ‘313 patent, we conclude that all claims in the ‘313 patent are invalid.
An important element of the court’s analysis here is that it is all seen as a question of law reviewed de novo on appeal. Thus, although the appellate panel largely agreed with the lower court’s original decision in this case, that decision was given no deference in the analysis. Further, the strong presumption of validity requiring clear and convincing evidence was also entirely ignored here because that evidentiary requirement is directed toward questions of fact not questions of law.
A second important and interesting element of the court’s decision here is that it does not cite the Supreme Court’s most recent foray into indefiniteness – Nautilus v. BioSig (2014) (requiring reasonable certainty). Likewise, the court did not cite Halliburton. In fact, the court has not cited Halliburton for almost 20 years and it has never cited the case other than to criticize the decision or indicate that it has been legislatively overruled by 112(f).
The case here is also in tension with those cited above: EnOcean, Lighting World, and Inventio. however, the court here took steps to distinguish those cases based upon the ‘fact’ that Bosch’s patent application failed to provide structure in the specification to guide one skilled in the art in understanding the ‘device’ limitation. In the other cited cases, the specification included examples and diagrams sufficient to transform the seeming ‘nonce’ words into ones with structural meaning.
What will be interesting here will be to see whether this case is the beginning of a movement in a new direction. This case’s path to the Supreme Court is most likely if the Federal Circuit first grants an en banc rehearing request.
The moment you leave behind claims that are “purely” functional is the moment you enter into the vast middle ground wherein one is allowed to use language of functional description.
The law fully supports the use of such language, quite apart from the sixth paragraph of 112.
Such is statutory law that cannot be overridden by the courts. When all else fails, start with the statute.
Mr. Universe: “Such is statutory law.”
Name the statute.
Surely you already know the statute – I have read the discussions here.
“For the life of me I cannot figure out why this is not happening. It seems like after a couple of brutal 9-0’s, people would change their approach. Maybe its a “stages of grief” type thing. We’ve had denial and anger. Time for bargaining!”
Why is there need for anyone in favor of business methods and software patents to be in grief? If anything it’s the anti patent crowd that is in denial. Specifically in denial that Business methods have been upheld as patent eligible subject matter by the Supreme Court, 5-4 in Bilski. And now there are probably only three votes against them since Stevens has retired. And in denial that the Court specifically refused to strike down software patents as far back as Benson, upheld them in Diehr and that case is still the controlling precedent, as so indicated in Mayo.
In fact, if you look at the current state of patent law rationally and logically, all that has has occured in Mayo, Bilski, and Alice is thus::
Bilski= A hedging concept that can be reduced to practice as a a math formula is an exception to statutory subject matter.
Mayo= A law of nature/natural phenomenon reduced to two steps and nothing significantly more is an exception to statutory subject matter.
Alice: Another hedging concept similar to Bilski’s and offering nothing more is still an exception to statutory subject matter.
Okay so you can’t patent hedging concepts and laws of nature. The above doesn’t sound like the end of software or business methods to me. But what I can’t understand is why the anti patent crowd can’t reconcile any of their legal beliefs/theories with the Courts “Integration” analysis from those cases. Could it be that “Integration”, the antithesis of dissection , makes it possible for 99.9 % of all business method and software to pass 101 as statutory subect matter?
To paraphrase the great anti patent proponent Malcolm Mooney, “Ding, Ding, Ding, we have a winnuh!!”
101,
Well, I agree with you that not all software or business method patents are ineligible per se under the current law. However, I do not think Mayo, Bilski and Alice are as limited as you suggest. For example, the same reasoning that would invalidate a hedging method would invalidate many, many other patents that purport to organize human activity or otherwise claim a very old economic practice, on a computer.
I’m still a little unclear on the concept, though I do appreciate that you’ve tried to explain it. Were the claims in Alice not integrated? I seem to remember their requiring computer implementation.
As an example of how these cases are being implemented, see BuySafe v Google, Planet Bingo v VKGS, Digitech v Electronics for Imaging. There are also many district court cases along these lines.
I would argue that these cases indicate that the federal judiciary believes that Bilski, Alice and Mayo are as limited as you suggest.
not…as limited, rather
You attempt a voice of reason – much like Paul Cole here: link to patentdocs.org
But much like Mr. Cole, your attempt at reason is just not supported by what is happening in the courts.
Well, l surely can’t speak for Mr. Cole, but I for one am aware that some lower court judges are not following the Supreme Courts rule on Integrated claims as the Court said “must” be done. I also believe in a year or two you will see the Court take up one of these cases and hold the claims are eligible because the claims are “Integrated” to the point the claims do not preempt an implicit exception.
“I would argue that these cases indicate that the federal judiciary believes that Bilski, Alice and Mayo are as limited as you suggest.”
The question is not whether these Federal and DC judges believe the Courts predecents are limited, but whether the judges are applying the Courts “Integration” analysis.
By not doing so these judges are thereby eviscerating the Supreme Courts rule that, ” in applying the §101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that “integrate” the building blocks into something more, Mayo, 566 U. S., at ___ (slip op., at 20), thereby “transform[ing]” them into apatent-eligible invention, id., at ___ (slip op., at 3).” [Emphasis Added]
Yes, Alice’s method ( series of steps ) is “Integrated”, as are all fully enabled claims . The process in that case is “Integrated” into a computer system. However in the Courts view, the concept itself is pre-empted even when”Integrated” on a computer and therefore falls into one of the implicit exceptions. The lesson here is the concept must be “Integrated” to the point it no longer covers the concept itself.
I would suggest you go back and read all the Federal Circuit cases you cited and ask the question, is the concept itself pre-empted, even when “Integrated” on a computer? If the answer is no in any of those cases then that is cause for the Supreme Court to overturn the lower courts decesions. Because as the Court said, “The latter ( referring to “Integrated”patent claims ) pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws. (See Alice)
It is fundamentally unfair to invalidate the claims of a patent X years post-issuance due to a change in the law.
I think it would only be fair to push the patent back into some sort of a reexamination process to see if any claim could be allowed if written differently. If no claims are allowable, so be it, but we shouldn’t punish patentees for getting claims allowable under one set of laws on validity and then changing the validity rules after the fact and using those laws to invalidate claims written to another standard.
The current process is insane.
The rule is basically that the courts can retroactively change patent law while Congress generally cannot. I agree that system is problematic.
Optional, voluntary reexamination upon a finding of invalidity would help. Of course this assumes the spec was written more robustly as well, which was not required either.
So… where does the USPTO fall in that spectrum? Is the USPTO part of Congress, or part of the court system?
I don’t even mean the PTAB, which at least has administrative law judges and looks like a court. I mean the USPTO Office of Policy and International Affairs, and the instructions that they give to examiners. If their policy instructions post-date the filing of these applications by several years, and also insert brand-new requirements of patent-eligibility that cannot be amended into the specification without adding new matter – is that an administrative taking, or simply a radical reinterpretation of law?
Adam Mossoff writes some about this in his article titled Patents as Constitutional Private Property: The Historical Protection of Patents Under the Takings Clause available at link to papers.ssrn.com
A key case is McClurg v. Kingsland, 42 U.S. (1 How.) 202 (1843) at link to casetext.com
“This repeal, however, can have no effect to impair the right of property then existing in a patentee, or his assignee, according to the well-established principles of this court in 8 Wheat. 493; the patent must therefore stand as if the acts of 1793 and 1800 remained in force” McClurg, 42 US at 206
The case, 9 Wheat. 493 is never cited by name. Dennis, do you know the US citation?
I believe that the cite is to Society for Propagation of the Gospel v. Town of New Haven,
21 U.S. 464 (1823) (“the termination of a treaty cannot devest rights of property already vested under it.”)
The money quote from Society:
But there is a still more decisive answer to this objection, which is, that the termination of a treaty cannot devest rights of property already vested under it.
If real estate be purchased or secured under a treaty, it would be most mischievous to admit, that the extinguishment of the treaty extinguished the right to such estate. In truth, it no more affects such rights, than the repeal of a municipal law affects rights acquired under it. If, for example, a statute of descents be repealed, it has never been supposed, that rights of property 494*494 already vested during its existence, were gone by such repeal. Such a construction would overturn the best established doctrines of law, and sap the very foundation on which property rests.
Id. at 493-494.
The point about vesting here is interesting from the standpoint of how you view what the Court is doing.
If the Court is merely interpreting, then there is no “real” vesting.
If the Court is instead changing (writing) patent law, then there was a vesting (at the time of grant).
I think it clear what Congress intended when they state that a granted patent has the attributes of personal property: at the time of grant, the item is vested.
The logical conclusion then is that the Court is writing patent law…
…so we come then full circle to the Separation of Powers issue. Prof. Hricik has spoken of this on his side of the blog concerning the difference between judicial interpretation and writing law through the mechanism of common law development. It is worth repeating that writing patent law in particular has been designated to a particular branch of the government in the heart of our constitution. Many other areas of law are not so constrained.
Bluto –
Why do you stop at re-claiming. The spec was drafted based on the requirements understood at the time. If the rule at the time was –describe it so one of ordinary skill would understand– and the rule now is, expressly recite the litany of combinations of memory and microprocessors, micro-controllers, digital signal processors, tc currently available from Intel, Atmel, Advanced micro-devices, Analog Devices (thats just the A’s off the top of my head) that could be used to make the device and show circuit schematics for each showing how each would interconnect to memory devices and I/O devices and power supplies and flow charts, and state diagrams, sample code showing the variety of ways each claim element could be implemented, isn’t it equally unfair to punish patentees for getting claims allowed with support that was sufficient under one set of laws and then change the support rules after the fact?
isn’t it equally unfair to punish patentees for getting claims allowed with support that was sufficient under one set of laws and then change the support rules after the fact?
It’s not “unfair” because it applies to everybody and everybody is on notice that the law or the interpretation of the law could change at any time. That’s doubly true when the law being relied on was created by a lower court and has been heavily criticized from the moment it was created.
This has always been the case in patent law and it’s what makes the practice of patent law interesting and challenging. You have to think several steps ahead at all times and account for as many contingencies as possible. If you fail to do this, you are almost certainly going to get burned.
From the perspective of someone (or, more accurately, just about anyone) who started out drafting biotech applications for the international stage many years ago, these sourpuss, handwringing complaints about a requirement for actual data and a detailed description of a working embodiment (or two) in exchange for a broad 1/2 billion dollar information-processing patent claim aren’t terribly compelling, to say the least.
“This has always been the case in patent law and it’s what makes the practice of patent law interesting and challenging. You have to think several steps ahead at all times and account for as many contingencies as possible. If you fail to do this, you are almost certainly going to get burned.”
How can someone write this kind of nonsense and do it with a straight face?
The only answer I can come up with is that he is paid to do so and is working off a script.
What’s “nonsensical” about it?
It is a meaningless statement (no substance) in the context of a real complaint about a ruling from the SCOTUS.
Anyone who thinks they can, with any certainty, predict the future of law, issued by courts whose constituents change frequently and in response to changes in politics, should apply for James Randi’s million dollar prize. Should we call you Sylvia Brown from now on?
Any patent applicant who relies on “magic words” (e.g., “configured to”) handed down to them by a court or an agency that is plainly bending over backwards to find some way to accomodate that applicant is playing with fire and asking to be burned.
Applicants need to demand from their patent lawyers a nuanced and informed view about the state of patent law that takes into account all of the contingencies. Relying on a “software patent” in the short term to secure some money from an otherwise skeptical investor or bank may be feasible but relying on the continued existence and/or enforceability of such patents over the long haul is a big gamble.
Do not forget: from the perspective of many of us, the claims shot down in Bilski, Mayo and Alice were never valid. Not even close. We didn’t hide our views about that. But those views were not only ignored by many, but vociferously derided at every turn. And they are still being derided by many of those same people in spite of the fact that there will be no “swinging back of the pendulum.”
Whose fault is it that some people refuse to listen and choose instead to find sources of “information” where that information amounts to little more than sunshine being blown up their behinds? Not mine.
What’s really “unfair” is that the gates were ever opened so wide that any person with an idea for a new “function” could buy their ticket and rush in. The circus is going to take a long time to shut down because all those folks who swarmed into the gates want to finish their peanuts before they leave.
I’d like to see specific examples where people think functional claiming is a problem. So, a functional claim and then an accused device that you believe should be held to infringe.
This case just reinforces the obvious – one cannot simply take the fact that a machine will do all the processing you tell it to and use that to support a claim to anything on a computer.
The actual test (which the federal circuit is looping around to the long way round) is that Aristocrat applies to all language. When a claim is directed to functional goalposts it is claiming an abstract idea with no limitation on how to get there. Consequently it has 101 problems (claims an abstract idea), 112 1st problems (does not enable or possess the full scope of the idea) and 112 2nd problems (novelty cannot be claimed functionally). The Supreme Court was here 70 years ago if not sooner, and some poor decisions have waylaid the Federal Circuit.
What I say when I mean Aristocrat applies to all language is that in order for a patent to be validly asserted against a defendant, the patent must describe an algorithm of sufficient specificity that one of ordinary skill would immediately know the structure of the steps taken to get there for all parts of the program.
A claim to a novel function violates 101 and 112, 2nd. The failure to disclose every means of getting to that function violates 112, 1st. Consequently, unless one discloses the means of achieving each part of the program and those parts match up (at least in an equivalent manner) to the infringer’s program means that an infringer will always have a Lizardtech or Abbvie defense to a limitation, or even a Wabash or Alice defense before that. You cannot simply say “Function F was known in the art” and rely upon that to protect your claim, and you certainly can’t (as even the Federal Circuit seems to be getting this now) say “One of ordinary skill could figure out how to do F so I claim F.” It simply does not matter that one way of doing something is known or can be achieved when the scope is directed to all ways of achieving something.
What is the point of 112-2? The EPC manages OK without it. Take the set consisting of eligibility, novelty, obviousness, enablement. Isnt that enough to despatch into oblivion any claim that is bad?
Or does the EPC need revising?
The problem with 112-2 is that it doesn’t give the judge the ability to sniff the patent and claim it is invalid based on how he/she thinks it smells.
There is an agenda at work here. There are a group of people that rather than wanting to go to Congress have decided our courts are a better place to get legislation.
That is the US way. The golden rule. He who has the gold makes the rules.
What is the point of 112-2? The EPC manages OK without it. Take the set consisting of eligibility, novelty, obviousness, enablement. Isnt that enough to despatch into oblivion any claim that is bad?
I tell you to do X on a computer. 100 PHOSITAs come up with 100 ways of doing X. Applicant claims doing X. Is X enabled? Yes. Is X eligible? Possibly. Does Applicant possess each way of doing X? Probably not. Applicant has a single way of doing X. That’s why you need WD.
You need indefiniteness for similar reasons – enablement can cure any issues on the outer boundary of a nebulous claim, but obviousness won’t necessarily cure the inner boundary, because applicant may not be claiming all he is entitled to, nor is it immediately clear where the office draws the obviousness boundary.
Thanks for that revealing answer. If only the PTO had a reliable way to examine for obviousness, and if only it were required to enable over the full width of the claim. Would examination at the PTO then proceed more expeditiously and fairly?
When a person first invents the bow, and claims “a machine that fires a projectile” how does the EPO enforce a scope that would exclude a gun from coverage, despite the fact that nobody has posited the gun at the time?
i.e. Prove that they haven’t enabled the full scope without using any evidence that the scope is not enabled.
That’s exactly right. Hopefully, the Fed Cir uses this analysis to satisfy Alice requirements. For all those who understand algorithms, there are A LOT of crappy, functional-language-laden patents out there that need to be invalidated, albeit following an invalidation analysis that makes more sense than Alice.
As to the object-oriented programming that Dennis mentioned. We are heading into that darkness very fast—is there a copyright or a patent right for a painting drawn by an elephant, a selfie captured by a monkey, a painting drawn by a robot, a program coded entirely by a computer (and which the initial programmer would have to read to understand what the computer’s algorithm is).
RandomGuy
The following claim claim is directed to functional goal posts. Is it abstract and not eligible?
18. A method for fabricating a high light extraction efficiency light emitting diode (LED) structure, comprising:
(a) wafer bonding a first optical element, comprising n-type ZnO, to a p-type layer of an LED, to form a wafer bonded structure, wherein the LED is comprised of an n-type layer having an n-type electrode, an active region, the p-type layer, and the n-type ZnO;
(b) shaping the first optical element into an n-type ZnO cone to extract light emitted by the active region, wherein a base of the n-type ZnO cone is bonded to the p-type layer, and an angle, between a base and sidewalls of the n-type ZnO cone, is a critical angle;
(c) placing a p-type electrode on top of the n-type ZnO cone; and
(d) forming an interface between the sidewalls of the n-type ZnO cone and a second optical element, wherein the second optical element’s cross-section is a trapezoid, the interface extracts light emitted by the active region into the second shaped optical element because the second shaped optical element on one side of the interface has a refractive index lower than a refractive index of the n-type ZnO cone on the other side of the interface, the critical angle is determined from the refractive index of the second shaped optical element divided by the refractive index of the n-type ZnO cone, and most light entering the n-type ZnO cone from the active region impinges on the interface within the critical angle for refraction into the second shaped optical element, so that the trapezoid and the n-type ZnO cone provide at least a 500% increase in output power.
If you’re referring to d, it looks like it is structural with intended use or prolix about inherent properties thrown in (“the interface [performs function] because of [structure]” is read in terms of patentable weight only as “[structure]”)
But to answer your question – if the claim asserts there is a function performed, but discloses no or inadequate structure for performing it, it is either invalid because it is purely functional, or it is properly construed as being in means-plus, and becomes invalid if the spec has no structure in it. If it is in means-plus and the spec does have structure, then by operation of statute the scope is limited to the structure. Either way the limitation is structural. There is no such thing as a valid functional limitation imparting novelty.
I am talking about each element, with the possible exception of the placing element.
Each recites a step in general terms and then describes the desired result of the step.
The patent office disagrees with you, as do I.
link to google.com
I think it ought to be clear that what the patent office considers patentable and what the courts consider patentable seem to be two vastly different scopes. I’m talking about the law here.
Each recites a step in general terms and then describes the desired result of the step.
There is step-for just as there is means-for. Either the specification states an act which would allow you to perform the function, or it does not. If it does not, the claim is invalid. If it does, the claim is limited to that act. You cannot validly claim the full scope of a functional result.
You can’t get around the fact that WD requires you to possess the full scope of your claim. If an infringer can show that you did not possess that scope, then you aren’t entitled to the claim. This is pretty basic stuff here. It is clearly stated in several cases that merely using the same words, claiming function F and then saying in the spec to do function F, is insufficient description.
I’m curious why you think this is necessary, when such requirements are neither present nor demanded in any other field of technology.
In chemicals, the applicant does not need to describe an exact, step-by-step process for making the chemical in the manner of a cookbook. The disclosure is sufficient if a chemical engineer could figure out how to make and use the disclosed chemical.
In semiconductor processing, the applicant does not need to describe the step-by-step process for manufacturing a semiconductor, starting from the bare substrate. A description of the actual change in the process, with a nominal reference to the step of the process that’s being changed, is sufficient.
In mechanical engineering, the applicant can describe the new part of an engine. The disclosure does not need to describe the exact process of building an engine, step-by-step, from the bolts up.
All of these areas reflect a consistent trend: the written description only needs to meet the level of ordinary skill in the art. Yet, this complaint about software seems to presume a special need in software for an exacting disclosure – all the way down to the type-in source code listings that appeared in computer magazines in the 80’s.
On what basis do you demand a tremendously higher level of disclosure for software than for any other technology?
Do you perceive that there is no “level of ordinary skill” in software? Why can chemical patents be oriented toward the typical chemical engineer, but software patents can’t depend on any level of expertise?
I’m curious why you think this is necessary, when such requirements are neither present nor demanded in any other field of technology.
Structure is always a requirement of a claim. Functional claiming is improper and always has been.
In chemicals, the applicant does not need to describe an exact, step-by-step process for making the chemical in the manner of a cookbook. The disclosure is sufficient if a chemical engineer could figure out how to make and use the disclosed chemical.
If the computer medium was defined in the same manner as the chemical code (a medium containing the flops 010111010…) then yes, the structure would be satisfied in the same way the structure of the chemical is satisfied. But that’s not what is happening, is it? The computer is claiming any structures (any set of commands, any flops in a disk, etc which is a huge range of structures) which cause a result to happen. If a chemical claim was directed to “any compound that cures cancer” that claim would be invalid too.
A computer program defined by the function it performs is nothing more than a method. You cannot say “I claim a method which does X” you have to claim a method containing steps ABCD, the use of which causes X to happen.
All of these areas reflect a consistent trend: the written description only needs to meet the level of ordinary skill in the art.
Perhaps you’re misunderstanding the argument – I’m not saying that there is no skill in the art for software, as it is not a question of what one can or can’t build, as that goes to strict enablement. What you cannot do (under any number of grounds) is actually know of one way of achieving something but create a vaguery in your claim language such that you are in fact getting many or all of the ways of achieving something.
Lizardtech put it well – if one creates a new fuel-efficient engine, even if they perfectly enable or describe that engine, that disclosure does not necessarily support a claim to ALL fuel-efficient engines, no matter how different in form or method of operation. The reason you have to disclose your way of performing a function is not because the art is full of uneducated oafs, the reason you have to disclose your way is because that is all you are entitled to claim.
Morse had a particular machine that harnessed electrical signals in a particular way to create his claimed result (printing at a distance). Morse violated 101 because his claim was to an idea/result (printing at a distance) but he also violated what today would be 112 1st and 2nd, because he did not describe or enable the full scope of what he claimed (which should be clear, since a computer connected to the internet infringes on Morse’s claim, and he obviously didn’t describe or enable that). The claim to the machine Morse had was valid, the overclaim to any way of doing it was not.
Once it is clear that you are only entitled to your way of doing something (something that ought to be an initial starting point in all patent law thought) it should become obvious why you need to disclose each part of the algorithm – the infringer’s defense is always going to be that the infringer has a completely novel way of doing step XX, and thus Applicant never possessed his method, but is instead trying to capture it via functional language. This very same thing was done in the chemical sphere in Abbvie – the patentee disclosed structures, claimed functionally, and the infringer got off because his structures were totally different and there was no proof the patentee ever had the infringer’s structures.
Once again, we see the persistent belief that claims in other areas, like chemistry, are specified with exacting precision, while claims in software are not.
A glance at some recent chemical patents reveals otherwise:
U.S. Pat. No. 8,859,628:
Ah, structure – as in, the word “scyllo-inositol.” That’s some powerful “structure” right there.
U.S. Pat. No. 8,865,841:
U.S. Pat. No. 8,865,813:
I see “functional claiming at the point of novelty.”
I see property- and results-oriented claiming: “the wax is incompatible with the polyester”; the rubber composition is “thermally curable.”
I see all sorts of things that would cause software patent opponents to decry the sloppiness and overbreadth of claim drafting… if only these claims were presented in the field of computers.
Once again, we see the persistent belief that claims in other areas, like chemistry, are specified with exacting precision, while claims in software are not.
Its partially about the precision, but it’s about whether its structural or not, and whether you can reasonably be more descriptive of what it is you have. If it’s not structural you have a 101 issue. If it’s not reasonably descriptive you have a 112, 2nd issue. You’re also likely creating an overbreadth issue under 112, 1st.
Ah, structure – as in, the word “scyllo-inositol.” That’s some powerful “structure” right there.
I don’t know what scyllo-inositol is, but I assume that is referring to what is in the compound. What is in the compound of a computer program that calculates hedges? In any case, if the structure there is too vague, then that patent is invalid too.
U.S. Pat. No. 8,865,841:
This looks entirely structural?
U.S. Pat. No. 8,865,813:
This one is invalid.
I see property- and results-oriented claiming
Properties are not necessarily a problem, though they can be. Functions are a problem.
I see all sorts of things that would cause software patent opponents to decry the sloppiness and overbreadth of claim drafting… if only these claims were presented in the field of computers.
I’m not getting this crusade. Nowhere have I said that it applies only to computers or that it doesn’t apply to chemistry.
There is a thing you cannot do which is commonly done in software – which is describe your program not by what it IS but by what it DOES. Software, being entirely ethereal in nature, is fertile ground for this misuse, and it is the worst place for it. That is not to say it cannot be done elsewhere obviously – Morse, Wabash, Perkins Glue, Halliburton – machinery and chemical cases. But they all exhibit the same problem which today is done commonly in computers: An attempt to avoid describing the structure of what you have by instead describing the results of the use of the structure that you have.
If you invent a bow, you can claim the bent wood and the string that forms the bow. You can’t claim a machine that fires a projectile, as that is overbroad of what you have made (1st), claims you novelty in functional terms (101) and is not reasonably definite because a better description easily exists (2nd).
The problem occurs everywhere, and the standard is the same it was 60 years ago – the means-plus standard, as that is the only way you can claim functionality. Computers are the best at violating it for precisely the reason Dennis suggests – computer programmers themselves think of the program not by the steps it takes but by the ultimate function that it performs.
>>If it’s not structural you have a 101 issue.
The anti-patents for information processing put forth so much nonsense. Here we have mystics. They believe that thinking occurs in the spirit world and that machines perform functions without structure.
It is how one skilled in the art would view the claim. None of the claims I have seen would present a problem for me (an MS in computer science).
Just nutso stuff.
The anti-patents for information processing put forth so much nonsense. Here we have mystics. They believe that thinking occurs in the spirit world and that machines perform functions without structure.
Every time you open your mouth I feel sorry for you man. The Supreme Court has routinely said what ought to be obvious – describing a machine by function does not limit its structure.
It is how one skilled in the art would view the claim. None of the claims I have seen would present a problem for me (an MS in computer science).
It’s about claiming what you have. He doesn’t have every way of performing the function. He has one way. Nor do you possess every way of performing the function.
If you want to run around pretending that the facts you would like to be true are actually true, get a job at Fox News. If you want to be a patent attorney, you might want to actually use the legal standards.
Actually, there is no “immediately” requirement. The requirement is –without undue experimentation–.
Actually, there is no “immediately” requirement. The requirement is –without undue experimentation–.
No, that’s the enablement standard. Whether it could be done with or without undue experimentation has zero importance for written description. I’ll just quote you the paragraph if you’re not going to read the case and make the same arguments they did:
Aristocrat also argues that, even if there is no disclosure of an algorithm in the patent, the disclosure of a microprocessor with “appropriate programming” is a sufficient disclosure of structure for meansplus-function purposes, because the evidence showed that one of ordinary skill in the art could build the device claimed in the ‘102 patent based on the disclosure in the specification. That argument, however, conflates the requirement of enablement under section 112 paragraph 1 and the requirement to disclose the structure that performs the claimed function under section 112 paragraph 6.
As I said, sooner or later the court will figure out that it doesn’t just apply in 112, 6th circumstances, because the evils it causes occur outside 6th as well. What is indefinite under 6th is undescribed under 1st.
I better quote the next paragraph too for full understanding:
Whether the disclosure would enable one of ordinary skill in the art to make and use the invention is not at issue here. Instead, the pertinent question in this case is whether Aristocrat’s patent discloses structure that is used to perform the claimed function. Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device. A section 112 paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents. The difference between the two is made dear by an exchange at oral argument. In response to a question from the court, Aristocrat’s counsel contended that, in light of the breadth of the disclosure in the specification, any microprocessor, regardless of how it was programmed, would infringe claim 1 if it performed the claimed functions recited in the means-plus-function limitations of that claim. That response reveals that Aristocrat is in essence arguing for pure functional claiming as long as the function is performed by a general purpose computer. This court’s cases flatly reject that position.
Guess what – you can’t claim functionally outside of means-plus either. That rule existed before means-plus came to be. Then 112 6th created a safe harbor for functional claims (by turning the semi-structural by limiting them, by statute, to the disclosed structures). Now people are ignoring the harbor but still demanding the safety. It doesn’t work like that.
Aristocrat was right. The court was wrong. shrug.
Aristocrat was right. The court was wrong. shrug.
Good, now you just have to find a place where they listen to Arisocrat Inc rather than the federal judiciary and you’ll be all set.
Hard to sympathize with the loser in this case. There’s no new law here. An attorney with understanding of how 112(f) can be undesirably invoked could have avoided the outcome. It’s not that there was insufficient structure, it’s that there was _no_ structure, in either the specification or the claims. How hard is it to avoid this problem? Not hard at at all.
Hard enough in foreign origin work
Incredibly hard, basically impossible in foreign origin work. They don’t have the same rules we do, so anything in “means” format does not have a corresponding structure, and need not have one there.
Second round of assaults on patents continues with the functional claiming nonsense. Just ask: how would a person having ordinary skill in the art interpret the claim in view of the specification. Funny how the Lemley’s and the Google Judges seem to forget that step.
Just ask: how would a person having ordinary skill in the art interpret the claim in view of the specification.
That just moves the goalpost to what some “expert” is going to testify to in court in exchange for some money and a promise from the patentee’s attorneys that he/she will be given some time to “train” for his/her performance.
The important issue being presented here doesn’t go away.
How does a person “having ordinary skill” interpret a functional element devoid of new, objective physical structure or any known objective relationship to any such new structure?
In the case of the software “innovations” that are typically being filed upon, there is no such corresponding physical structure that is ascertainable by the skilled artisan — at least not one that is unambiguously “new”.
If you disagree, then go ahead and describe the objective physical structure of software that “determines whether the copyrighted video stream authorized by Grandma Jones at 422 Wildcreek Way contains images or audio is inappropriate for children.” If you need additional information before answering that question, just ask.
I am not sure why Dennis went around and deleted my responses to you MM. Your response to me is shear nonsense. I don’t know what “objective structure” is. You made that term up after our debate about structure. You began adding “objective” as if that adds meaning.
I have pointed you to many articles about the structure of software from computer scientist. Respond to the computer scientist and academic papers about structure in software. And about the equivalence of software to hardware.
So, please respond to Mano on the equivalence and the structure issue.
No serious academic would say there is no structure to software.
No true Scotsman puts sugar on his porridge.
NWPA I don’t know what “objective structure” is.
It’s “objective physical structure.”
objective: not influenced by personal feelings or opinions in considering and representing facts.
It eliminates those physical structures that can be deduced by a paid expert who has been trained to tell a court “I can see the structure!” in the case where half of the rest of the world sees no structure or a different structure.
.No serious academic would say there is no structure to software.
You guys have been making these “no true Scotsman” type “arguments” for years. It’s no different than the usual tactic of labeling everyone who disagrees with you as ignorant of the law and/or the technology. It’s fine to do that if you’re preaching to the choir but it doesn’t work as an argument.
There is “structure” to software only insofar as there is “structure” to a sentence, an algorithm, or a logical framework. That’s not the type of “structure” that our patent system was designed to evaluate or protect. It’s difficult to imagine how any patent system could be successfully implemented to evaluate or protect such “structures”. In any event, it would seem to require going back to the drawing board and starting over with a very different and specialized regime than the one that we have.
>objective: not influenced by personal feelings or opinions in >considering and representing facts.
OK. So, it is your belief that things like computers exist without structure? That different functions can be perform by machines without a structural change?
OK. Sure. And ideas exist in the ether not in your brain.
MM >>making these “no true Scotsman”
How about you respond to Mano a respect computer architect with a book that was universally used to teach generations of EE/CS people. We quoted from that book about the equivalence of software and hardware. You have never responded to that.
I think that we’re simply coming down to a disagreement over the meaning of “structure” as found in the precedent. We do know that the Federal Circuit has identified a software algorithm as structure when disclosed in a manner sufficient to teach PHOSITA how to make and use it. We also know that from any fundamental physics perspective, software (when implemented on a computer) is certainly physical both in its existence and in the results that it can cause. I don’t think that there is any debate on these points.
But, we have also seen the Supreme Court disregard certain algorithmic steps as unduly abstract. And, I would suggest that something abstract is not structural.
Where does all of this take us?
and what is the definition of “abstract”?
Dennis,
If a programmed computer is an element in a larger combination, such as a disc drive, and one is claiming that disc drive, I see no fundamental problem in simply requiring a disclosed algorithm for definiteness purposes. In the context of the larger machine or process, it is only important what the programmed computer does, and defining what it does, in context of an algorithm, is sufficiently definite.
The problem occurs fundamentally when the novelty appears to be in the software alone, no larger machine or process is involved, and the computer is generic. Here the software cannot define a new machine so as to pass 101 and be consistent with the Supreme Court cases beginning with Benson and ending with Alice. Rich’s opinion in In re Benson was premised, after all, on a programmed computer being per se eligible. If cannot be and be consistent with the Supreme Court’s opinion in the same case.
Ned, please let LexisNexus know that Alappat is no longer good law as they haven’t heard the word yet.
Casemaker (OSBA service) has no negative indicators…