Vehicle Intelligence v. Mercedes-Benz (Fed. Cir. 2015) (Non-precedential opinion)
Vehicle Intelligence and Safety LLC is the owner of United States Patent Number 7,394,392 vehicle safety improvements. In particular, the patent claims systems and methods for testing vehicle operators and then taking control of the vehicle if the operator is deemed impaired. Senior Judge Hart of the Northern District of Illinois ruled on the pleadings (12(c)) that the asserted claims were invalid as being drawn to patent-ineligible subject matter under Section 101 of the Patent Act. On appeal, the Federal Circuit here affirms – holding that “the disputed claims cover only abstract ideas coupled with routine data-gathering steps and conventional computer activity.” An early potential strike against the patent that the inventor, Kevin Roe, is also the patent attorney who prosecuted the case and the litigator who filed the appellate briefs.
Claim 16 reads as follows:
A system to screen an equipment operator, comprising:
a screening module to screen and selectively test an equipment operator when said screening indicates potential impairment of said equipment operator, wherein said screening module utilizes one or more expert system modules in screening said equipment operator; and
a control module to control operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening module includes one or more expert system modules that utilize at least a portion of one or more equipment modules selected from the group of equipment modules consisting of: an operations module, an audio module, a navigation module, an anti-theft module, and a climate control module.
In applying Alice Corp., Federal Circuit began with step one – is the claim drawn to ineligible subject matter? Answer: Yes. Here, the court found the claims directed toward “the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment.”
Although the court did not explain particularly how the testing of operators for impairment fits within the definition of an abstract idea, the court made clear that one element of its decision was based upon the fact that the claims were broadly written and not limited to particular impairments, particular screening or testing methods, the method of programming the claimed “expert system,” or the “nature” of the control.
[C]ritically absent from the entire patent is how the existing vehicle equipment can be used to measure these characteristics; assuming these measurements can be made, how the decision module determines if an operator is impaired based on these measurements; assuming this determination can be made, how the decision module decides which control response to make; and assuming the control response decision can be made, how the “expert system” effectuates the chosen control response. At best, the ‘392 patent answers the question of how to provide faster, more accurate and reliable impairment testing by simply stating “use an expert system.” Thus, in the absence of any details about how the “expert system” works, the claims at issue are drawn to a patent ineligible abstract idea, satisfying Mayo/Alice step one.
An important take-away from this analysis is that the concept of an abstract-idea is closely tied-in with the novelty of the claims themselves – even at step-one of Alice. Thus, contrary to what many patent attorneys continue to believe, whether a concept is an “abstract idea” will depend upon the invention’s priority dates. However, on that same point, the Court rejected Vehicle Intelligence’s argument that its claim did not embody that broad concept of “testing-operators and taking control” since prior patents held by other companies already disclosed and claimed other methods of achieving those same results. The court rejected that notion since full-preemption is not a requirement of the Alice test.
Readers will also notice the linkage between the court’s analysis for eligibility and the doctrines of written description and indefiniteness. The suggestion in this case appears to be that the same claim could have been eligible if the patentee had provided (in the specification) a full explanation of how to implement its system.
On step two of Alice, the court found that “nothing” in the claims disclosed “any inventive concept sufficient to transform the abstract idea of testing operators of any kind of moving equipment for any kind of physical or mental impairment into a patent-eligible application of that idea.” On this point, the patentee argued that its claims were tied to particular device (one of “an operations module, an audio module, a navigation module, an anti-theft module, and a climate control module.”). However, the court found that the patent did not include enough of an explanation of “how the methods at issue can be embedded into these existing modules.”
The court also notes that being “tied to particular machines” is not “sufficient to confer eligibility.”
Although non-precedential, the case will certainly reverberate – especially the court’s refusal to limit the definition of ‘abstract idea’ and its continued acceptance of judgment-on-the-pleadings as the proper method for dismissing cases on Section 101.
With echoes of “politeness” being neither hot nor cold, we have here a prime example of a “bubble chamber” effect of confusing (and conflating) several critical aspects of the conversation and the resulting v0m1tfest:
Useful Arts versus Non-Useful Arts
(including the absolutely horrible and illogical attempt at analogizing stories to a book as some type of “same relation” of software to a machine – missing the critical aspect that software is a Set C printed matter, while a story is a Set B printed matter.
Entirely mucking up the differences of the single pre-1952 paragraph and the change in law as enacted in 1952 that broke apart that single paragraph into separate sections of 101/102/103/112.
Misapplying “terms sounding in function” with pure functional claiming (and attempts to simply disregard the Vast Middle Ground based on nothing but a lack of understanding of what that term means (the “feeling” that such is not good law…) – further conflated with a wrong view of the optionality of 112(f) and the FACT that terms sounding in function were permitted – by Congress through the Act of 1952 – to be used, even outside of 112(f).
A fundamental lack of understanding on the Ladders of Abstraction concept – exhibited both in not recognizing that easily over 95% of worthwhile claims – in ALL art units – use this technique AND not recognizing that the ladder has more than two rungs. Random confuses himself with my reference of equivalence as the use here that I reference was explicitly the MathS philosophy concept and not the hardware/software concept. This goes hand in hand with Random’s long mistaken belief as to “code” level claiming and his bizarre refusal to understand the Art view as deeply explained by POiR.
The immediate case may indeed F A I L – but the means to that Ends are critical to understand and “get right.” Problems of obviousness, possession, breadth, are NOT the domain of the law of 101: the broken scoreboard IS an issue when the Supreme Court attempt to hold onto a power that was removed by Congress, and the resultant free-for-all (e.g. the limitless “Gist/Abstract sword) simply is NOT the “right balance” that Random wishes to present.
With echoes of the endless haranguing between MM and Night Writer, we have at 9.1.1.1.1.1.2 the very articulate Random Guy, a self-confessed PTO Examiner in the computer program arts and well able to express himself clearly, writing this:
“I’ve said – I claim a system comprising a book and a new story. The book is clearly within the useful arts. Nobody is suggesting that when the book was invented it was ineligible subject matter for a patent. I think we all agree that a story, in and of itself, is not useful. But that’s just one aspect of the system as a whole. Many of the 101 cases do this as well – in Mayo there was certainly treatment of a disease utility, but the novelty lay in the ineligible aspect which in and of itself was not useful.
So do we ignore the non-functional aspects altogether? Do we count them for some things and not others?
If I have a book with a novel story in it, is it anticipated by another book because the story is given no weight at all? Is it obvious over another book with words in it? Or does it surpass the prior art rejections and fail for some other reason?”
I like Random’s questions. I know how they are answered in the established caselaw of the EPO (and hence throughout Europe). But I don’t know how in the USA.
I know that Night constantly reminds us that software is a machine component whereas MM likens it to text in a recipe book. It pleases me to think that the SCOTUS justices have by now worked out how to decide what patentable weight to give to software features in a claim, even if they haven’t yet effectively communicated their current thinking to the world outside their four walls.
Or have they? If so, somebody should tell the commentators on this blog.
Max, indeed, the Supreme Court has struggled with claims that include both eligible and ineligible subject matter. The lower courts have kept it simple by giving no weight to the ineligible in any patentability analysis. But the Supreme Court has never yet spoken of “weight.”
I’m not surprised Ned that they “struggle”. I know that at the EPO the issue whether a non-technical feature in the claim can endow the claim with patentable novelty awaits ultimate resolution. One day soon, the question will be referred up to the ultimate authority, the Enlarged Board of Appeal, as soon as a case comes along that forces the question to be addressed and answered. Up till now though, the Boards of Appeal have always found a judicially economical way to resolve cases rigorously under the other provisions of the EPC that determine patentability, mainly Art 56 EPC obviousness.
But sooner or later Art 54(3) EPC will be determinative, and then there’s no Art 56 escape route.
Why the extreme reticence at the EPO? Because now that the Art 84 (clarity) issue has been sorted (G3/14) it’s the last remaining “hard problem” under the EPC, and the EPO wants to be as prepared as it possibly can be, when the time comes that the question can no longer remain unanswered.
I guess it’s similar in the USA.
Random Guy, a self-confessed PTO Examiner
Well, nobody’s perfect 🙂
Regarding abstract ideas and their “pre-emption” Random Guy writes at 16.2.1.1 a post that I think deserves wider attention so I reply to it here rather than directly below it. Sorry, Random, that I didn’t see it and reply to it straightaway when you posted it.
I think that “freeze branding” (when it was invented) was a brilliant invention, exactly what the patent system should protect. And I think that my claim is commensurate in scope with the valuable insight, the flash of inspiration, the invention which has so usefully contributed to the art. I think my broad claim is enabled over its full scope, is definite and clear, and does admirably the job of stimulating designs around. What’s not to like?
But Random doesn’t like it at all. Nor does MM. They have a slew of objections but note, readers, they are not the same ones. Random majors on his “scope not enabled” and indefiniteness points whereas MM thinks the claimed subject matter was all egregiously obvious. Me, I think the current hubbub about pushing the eligibility/patentability envelope in computer/internet commerce and pharma fields has obfuscated consideration of the basics of a properly functioning patent system. Bad cases make bad law: that sort of thing. I should welcome Ned’s rubber-tipped pencil jottings on the matter, as well as constructive thoughtful comment from others because, if MM and Random are right then I want to be convinced, so I can write in future claims to a great new invention that are of a scope which is proper to issue. So far though, I am not at all convinced by any of their assaults on the validity of my claim. I think they simply see its scope as somehow a threat, and dangerous to the system. Especially for MM, a defender of “absolut Stoffschutz” ie claims to “Molecule X” I find that a bit rich. See, readers, MM and I do not always agree. Sometimes we hold opposed positions. I thought I had better add that, in case any regular readers had not noticed yet.
It might help MaxDrei if you were to better explicate what it is about each of Random’s and Malcolm’s views that do not convince you.
As it is, you have been polite, but ineffective in your responses to either. I am not calling for you to be disrespectful, but I am calling on you to differentiate your position and make a case as to why their views do not (actually) convince you – and more than just a “feeling” why they do not, if you please.
..and did you bother to read (at all) the post from outside of your “bubble chamber”…?
That post was direct, and even polite (and objectively more polite than the response at 16.3.1.1), and yet, not a word or comment, but merely – and only – more fawning from you to those whom you share a “larger view” of the patent system – (the bubble).
Max, the combination of known branding by applying heated brand and known whitening by freezing at the temps of liquid nitrogen renders “freeze branding” obvious. Where is the new functionality? I would think that to get a patent one here must at least develop some new technology rather than “combine” two existing technologies without changing either them any way.
For example, if there was a problem in branding with liquid nitrogen that was overcome by some technique that the inventor had discovered, that is where invention begins.
Ned,
One (rather important) wrinkle that you need to weave in to your conclusary finding: POS I T A.
Be aware of – and beware of – the tendency to expand “the universe” of 103 art into “the universe” of 102 art. The mere fact that you are combining items pre-existing does NOT necessarily create the (de facto) finding of obviousness.
Yes it does, anon, unless there are unexpected problems in the combination.
Hotchkiss set the standard. In Hotchkiss, there was a known doorknob configuration and the use of Clay for doorknobs was known. The combination of the known doorknob configuration with the known utility of clay for doorknobs rendered a combination the work of one of ordinary skill in the art.
The same can be said here the combination of the known branding technique with known utility of freezing at the temperature of nitrogen for marking animal hides. The combination brought nothing to the table that was not known.
“The same can be said here the combination of the known branding technique with known utility of freezing at the temperature of nitrogen for marking animal hides.”
That’s just it, Ned – you are doing what you “just” cannot do: merely “say.”
You have to “show.”
The point here is that such may be obvious – or it may not be obvious, and the exercise of determining that is NOT a merely “say.” You have to show – in the art. Otherwise what you are doing is falling to a de facto expansion of the 103 world into a 102 world. You are “saying” obvious on nothing more than mere existence – as opposed to that existence being within the art.
..so, no, Ned, you are just not correct to say “yes, they can be combined = de facto obvious”
That is legal error.
You need more – and just cannot take that short cut that you want to take.
Anon, I think it comes down to whether the freeze marking of animal hides is so-called analogous art.
As I plainly and directly stated Ned: your post is in error because you attempt a short cut.
You just cannot do that.
As I also stated, the hypothetical may – or may not be – obvious based on the “I T A portion of PHOSITA.
If you are changing your position to match mine, simply say so.
anon, thanks for reminding me.
Ned, sorry for not making myself clear. The 20 year old Paper in The Lancet that notes the permanent whitening effect on hairs growing from skin subject to a short sharp freeze was not in any field of technology, just in scientific research. How the Inuit survive, their genetic development, whatever. Of course, if it had been in an Inuit Manual of tattooing techniques to prettify their bodies I grant you, that might make freeze branding obvious to the person of skill in the skin marking/decorating arts.
Max, I think the answer depends upon whether one in the tattooing art would even look or be aware of the freeze/whitening paper. It does seem, on reflection, a bit farfetched.
Ned said: ” I would think that to get a patent one here must at least develop some new technology rather than “combine” two existing technologies without changing either them any way.”
So then Ned, what say you of the cotton gin? A box, a comb, a hopper, a crank handle. Is this the mere combination of existing technologies not worthy of a patent or does the crank handle perhaps represent a satisfactory new technology?
(likewise with Diehr… unless Ned wants to again confuse the issue and ig nore that a single instance of rubber is somehow not cured but once)
Les, I am not so certain about the cotton gin, but a claim to a new structure which combines elements all of which are old in a unique way is in fact new technology. That is why I think one cannot simply say that I claim “freeze branding.” But I need to do is describe something unique that did not exist before in either the traditional branding technologies or in the prior art nitrogen marking technique.
I think that you are reading too much into this so-called “prior art nitrogen marking technique” arts…
MD: I think the current hubbub about pushing the eligibility/patentability envelope in computer/internet commerce and pharma fields has obfuscated consideration of the basics of a properly functioning patent system.
That’s ridiculous, MD, because the “hubbub” is all about what kinds of patents a “properly functioning patent system” should be granting, and what such a system needs to do in order to grant them.
Random doesn’t like it at all. Nor does MM. They have a slew of objections but note, readers, they are not the same ones. Random majors on his “scope not enabled” and indefiniteness points whereas MM thinks the claimed subject matter was all egregiously obvious
So what? Broadly written claims fail for multiple reasons all the time.
I think they simply see its scope as somehow a threat, and dangerous to the system.
*sigh*
All I said is that your claim seemed incredibly obvious in view of the prior art that you provided us with. Just my opinion. Your claim doesn’t represent any “threat” to the system and if it was just that one claim being granted I don’t think anyone would care one way or the other about it, except maybe some hide-branders.
What concerns me (and many other people, I think) is the idea you appeared to be pushing with your hypothetical, i.e., if someone publishes a paper about discovery X then it’s proper for a thousand lawyers in a thousand different “arts” (defined by you, of course) to run to the PTO and file a hundred thousand patents on the use of X in each of those arts. And none of those claims are obvious, according to your theory, because the publication in question “wasn’t relevant to the art.” That doesn’t sound like a working patent system to me. I do, of course, recognize its strong resemblance to the system favored by the lovers of software patents.
Thanks MM. You see the interface with software patents and I see (in particular because of the recent English Eli Lilly v Activis case I cited to) an interface with the patenting efforts of innovative pharma.
I’m spoiled, I suppose, by my practice before the EPO. I’m just looking elsewhere, for a consistent objective standard of patentability in all of the useful arts (and non-patentability for innovation outside the useful arts).
^^^ for all the politeness here, MaxDrei, I cannot tell if you are satisfied with Malcolm’s position or if you still find it not convincing – or why (either way).
Such lukewarm position shall be spit from my mouth. (Revelation 3:16 – and for you, it continues into verse 17)
I take no position on obviousness. My problem with your response Max is that it consists of “I don’t like it” rather than combating the logic which applies to any scope in any field.
There is one thing which you definitely have considered and definitely works – your example embodiment. On this we have no disagreement. Logically, I think you would agree, that its not feasible for your claim scope to always convey your example embodiment even if you wanted to, and reasonable leeway is made. But beyond that there is what we all know are “intentional” vagueries and removals of limitations. Choosing to claim a functional result rather than the posited step which achieves the result is an intentional vaguery, for example. Not all intentional vagueries are fatal, nor are all of them bad. Instead, what they are is an avenue by which the claim is attacked.
For each vaguery that occurs in the claim, the drafter should be able to point to something in the specification or the art which makes the leap from the particular posited embodiment to the broader genus. The writer should also be careful that knowledge of “something in the art” is extremely curtailed when the thing being talked about is considered to be a novel feature or combination. In software (where I play) the “leap” consists of adding the phrase “For example” or “in one embodiment” to the example and then stating the functional result that one desires a claim for. This, in my mind, is per se insufficient.
Apply basic logic here. I am (despite what some of my detractors may say) capable of functioning as a patent examiner. A patent examiner is a job. A basketball player is also a job. Nobody would suggest that it follows that because I can be a good patent examiner that I am also be a good basketball player. A patent agent is also a job. It does not necessarily follow that because I am a good examiner I would be a good agent, but at least there are relationships between the two jobs where we can make the leap.
What maximizes support for any particular scope is for the specification to make the tying-similarity explicit: “I am a good examiner, the role of examiner requires engineering knowledge and non-fictional analytical writing skills. A patent agent also relies upon those skills, therefore I would be a good patent agent.” That’s a bottom-up approach which works in general. Instead, it’s clear from the writing that most lawyers are thinking top-down. “The job one can be good at is any job. For example, a patent examiner is a job.” In the latter case, even if a fact-finder assumes that the species is sufficient, they have no support language by which I can say that the genus is similarly sufficient.
What actually happens in the real world in the second case (at the PTO at least) is that the examiner is not trained to recognize that the species fails to support the genus. Instead most Examiners accept as fact that the genus is true too. Then the claim issues and now by law there is an assumption that the genus is true. This continues until you run into a real-world defendant that causes an Abbvie or Lizardtech like situation – where they are falling under the genus using a completely different species, and then a fact-finder can look the claim scope, look at the specification and say “This spec never considers the defendant’s species but claims a genus that encompasses it.” Then the claim fails under either 112a or b.
See, the statement that is sometimes bandied about in CAFC decisions is “The patentee need not anticipate the infringer’s machine” which is a true-but-very-misleading statement. Instead the actual law is much closer to what Prof. Crouch explained the Abbvie holding was on this blog: “To Satisfy the Written Description Requirement, a patent “must at least describe some species representative” of the accused product.” If you are claiming a genus that has a swath of undescribed species in it, that scope is invalid. It’s invalid regardless of who your defendant is (which is why the first statement is true-but-misleading) but when your defendant is an Abbvie defendant the truth of the overbroad scope is much more apparent. Better courts have recognized the overbreadth is fatal even without a competing example (see, e.g. Morse, Perkin’s Glue, Wabash, all finding claims invalid on their face absent discussion of the infringer by positing hypotheticals) but the CAFC as currently constituted is rarely a better court, and needs to have the overbreadth shoved in their faces.
Lawyers have apparently been taught as a matter of routine to take a particular example and immediately go as broad and vague as possible with it, then work back down to the example. That necessarily ignores divergent species within their broad genuses (genusi?) and invites…poor litigation attorneys to highlight the issue by suing people who achieve the genus through different species.
All of this is generically true. Turning now to your particular example, it’s clear you’ve posited using liquid nitrogen to chill a brand to cause white hairs. Does the fact that you’re using liquid nitrogen to chill the brand make a difference? Probably not. It’s sufficient to say that there known ways to chill a brand and the only relevant feature of the brand for the use in the system is that it be chilled. Is a chilled brand the only way to cause white hairs? Here I suspect the answer is no, or at least you haven’t given me a reason to think that. I suspect there are multiple, divergent means of producing the white hairs, of which chilling the hide is one of them. This is not a good place for you to be vague in your claim, because you haven’t shown me (and in fact you don’t know) if there are other ways to make the hairs white. So can you be vague about the cooling agent, safely? Probably. About the cold brand causing the white hairs? Probably not. Is a claim to freeze branding (assume we define this as “branding without using bonfire temperatures”) vague about the cause of the white hairs? Yep. It’s a dangerous claim to rely upon. Perhaps suitable for an independent, but you would want most of your claim tree dependent upon a more detailed claim. Is it possible your scope is valid? Sure, but prove it up.
This notion that you “feel” that the “contribution” “warrants” the scope is irrelevant. You contributed a means to achieve the end. Either the means is the only way of achieving the end or it isn’t. If it isn’t, you shouldn’t be given the scope of the end, you should be given the scope of the means. If it is, it’s irrelevant whether you’re given the means or the end. The thing to do is teach the means, and teach as much as you can to expand the means outward, but it’s extremely unsafe to rely upon a claim directed to the ends, because rarely can we say with any certainty that the described means are the only ways of achieving the end.
Again, like I said, if you claim only the end result of branding at low temperatures, and the only way you posit is to use a cold brand, you better not sue someone who used agitating chemicals, because even this CAFC can figure out that scope is overbroad, but *historically* it is the fact that you have failed to foreclose the hypothetical of other means of achieving the end (of which agitating chemicals can be one example) which is the fatal flaw.
“Lawyers have apparently been taught as a matter of routine to take a particular example and immediately go as broad and vague as possible…”
They would not do this if doing reliably resulted in their claims being held invalid.
To the contrary, it’s been reliably happening for about 2 years now, and instead the refrain is that they themselves are right and that the law is messed up.
Random, I do see Morse->Halliburton being implemented in the current 101 jurisprudence. Odd and unexpected, at least to me.
Morse is an extremely interesting case to me which is why I quote it so often. Morse is a case that was essentially rejected as being “overbroad” without confining the discussion to any of the rubrics that we define today. The language of Morse sounds in what today we would call enablement, WD, indefiniteness and judicial exceptions.
No court has ever said this, but I feel very strongly that the case law supports the conclusion that a valid defense tactic is to compare the novelty embodiments of the patentee with the infringer and decide the case based on a finding of “difference.” If a PHOSITA would conclude that what the inventor considered and with the infringer did are different, neither a properly-considered statutory scheme nor the constitutional grant would allow liability to attach.
The question becomes what constitutes “difference” and I have said before the lack of equivalency is it.
I think (Scoreboard, for all it matters) that if the novel feature of an invention is disclosed as caused by Element or Combination A, and the infringer does B instead, a statement by patentee’s expert that A and B would not be considered equivalent is sufficient for a summary judgement in favor of the defendant. Notice that in no part of that equation do we actually consider the claim.
Random, as you say:
“..in no part of that equation do we actually consider the claim.”
There was a time, a hundred years ago, when nobody included claims. But then it was thought that in the interests of legal certainty there ought to be in the patent a definition of the invention which the patent is seeking to protect. Surely neither you nor the US courts want to go back to those ancient days? Or do you?
Max, the Halliburton court was faced with a claim* where the lower court had construed the claim to cover the disclosed mechanical tuner and had determined that the accused electronic tuner was an equivalent. The Supreme Court did not overturn this conclusion but held the claims invalid nevertheless because of their apparent scope.
Broad claims put everybody on notice of the outer limit of what the inventor regards as his invention. Claim construction often limits the invention to the corresponding structure and equivalents pretty much along the lines of what Random is talking about. But I agree with the Supreme Court that the broad functional claim is inherently a violation of the patent law because such breath intimidates those who enter at their peril and thus retards the progress of the useful arts. While the statutory reason for holding a claim invalid in that case was “112,” the real reason was that allowing such a claim scope was unconstitutional in their view.
The Supreme Court has never addressed the Congressional response to Halliburton which essentially says it was okay to claim an invention functionally because one only receive that which was disclosed and equivalents. Still, the apparent breath of the claim remains a problem in my opinion and eventually the Supreme Court should take up an appropriately argued case.
But it comes as a somewhat shock that the Federal Circuit is now holding such broad claims invalid under 101 if they have no corresponding disclosure that even describes a single embodiment within the claimed scope. Here there is no possibility of a narrowing construction. The claims simply are invalid under any number of theories.
* “means associated with said pressure responsive device for tuning said receiving means to the frequency of echoes from the tubing collars of said tubing sections to clearly distinguish the echoes from said couplings from each other.”
Surely neither you nor the US courts want to go back to those ancient days? Or do you?
Of course not, but summary judgement doesn’t mean there’s no issues of fact, it means there’s no material issues of fact. If we reach a conclusion that liability would not attach under any circumstances then we need not consider further facts. Generally, you must consider claims because you need to consider scope for infringement and invalidity purposes, but if we can get to a situation where its irrelevant, then it’s irrelevant.
Suppose you had a case where prior to walking into court the patentee said “This patent was procured through fraud” and the court believes him. You’re not suggesting we have to go through claim construction then, are you?
Thanks for all that Random. Of course I accept your point about the mischief of over-broad claims. The textbook case when I was a student in England was one involving regulating the growth of seedlings by imposing on them a specified chilling temperature at various stages of growth, thereby to increase ultimate crop yield when the seedlings have become harvestable plant matter. The worked Example was peas. The claim failed because i) it was unspecific as to which plant and ii) there was no reason to suppose that other plants would respond like pea seedlings.
Freeze branding is different, because there is good reason to suppose that the hair whitening effect of an ultra-cold branding iron works not only with cattle hides but with other hides too.
I concede that my claim might have to run for more than one line, to replace the shorthand “freeze” with a specified temperature range for at least a specified minimum period of time, and the shorthand “branding” with explicit recitation of a branding iron tool. My mistake was to suppose that readers here would find all that implicit. Instead, I find them construing the imaginary claim to include in “freeze branding” such non-freezing and non-branding procedures like spraying with an aerosol can of spray substance in a highly volatile solvent.
All in all, this discussion is valuable to me for its revelation of the importance in US jurisprudence of the comfort blanket, the universal wrench, of magic words. Of course I have a “feeling” as to what scope is commensurate. It comes from more than 40 years of practice drafting patent claims that do justice to the inventions my clients make. Of course the independent claim has to be supported by a nicely graded sequence of ever-narrower dependent claims. This goes without saying in Europe but sometimes in the US jurisdiction I have the feeling that the vital skill of laying down serious fall-back positions in high quality dependent claims is an under-appreciated facet of the basic skills of a competent patent draughtsperson. But when a dependent claim merely recites explicit what is already implicit in the independent claim, I’m going to fight for allowance of that independent claim as very definitely not “over-broad”. US claims strike me very often as being unnecessarily verbose. US patent specifications are invariably much more lengthy and repetitive than those optimised for Europe.
Thanks for the time you are giving me.
Max, unnecessarily verbose? !
because there is good reason to suppose that the hair whitening effect of an ultra-cold branding iron works not only with cattle hides but with other hides too.
Let’s assume that’s true – it certainly wasn’t known at the time, after all the hair whitening effect on cattle hides is what you’re claiming the novelty is. So there has to be evidence that your inventor knew or had reason to believe it would work on other hides too. You can’t just simply say “It worked with this species, therefore its going to work with the genus” its the same problem as my jobs example.
Instead, I find them construing the imaginary claim to include in “freeze branding” such non-freezing and non-branding procedures like spraying with an aerosol can of spray substance in a highly volatile solvent.
Well it was you yourself that defined freeze as not bonfire temperatures. And to me branding is simply the act of placing a mark of ownership upon something. But we’re in agreement on the underlying concept I think, which is when the claim is a smaller scope it is easier to find it valid, and larger scopes are easier to find invalid, and it’s context specific how much.
This goes without saying in Europe but sometimes in the US jurisdiction I have the feeling that the vital skill of laying down serious fall-back positions in high quality dependent claims is an under-appreciated facet of the basic skills of a competent patent draughtsperson.
Would that this be our only problem because I, as an examiner, don’t much care if the scope is ultimately a smart litigation tactic. My problem arises from people who put forward broad scopes supported by the faintest most common acts, then redirect attention elsewhere.
I was just watching an episode of House, MD where the doctors are all about to break into their boss’ place. House approaches the door, pulls out his credit card, moves to jimmy the lock and says “I’ll bet you guys $100 I can open this door in under 20 seconds.”
“You’re on” they say and look at their watches. House proceeds to put his credit card back, pick up a flower pot, retrieve the spare key under it, and unlock the door. His coworkers reach for their wallets.
In my experience (and again I work in software, which is relevant here), a lot of inventors are trying to pretend they’re expert lock pickers before opening the door with a key. There’s nothing more frustrating than seeing a broad scope which covers all sort of fantastical means which is “supported” by a mundane, nearly useless disclosed embodiment, followed by an argument directed to it being a non-obvious combination. It’s a constant fight to explain to people they can’t have anything close to this scope while they make minor changes in an effort to get out of a 103 so they can appeal their 101/112s. Some days I wish I could just step outside of the office for a second to point and make fun of them here in the hopes that other people might wise up.
But when a dependent claim merely recites explicit what is already implicit in the independent claim, I’m going to fight for allowance of that independent claim as very definitely not “over-broad”.
See I don’t understand how this can be right. If there is no leap between the explicit/implicit boundary – i.e. if the set of embodiments under the implicit language and the set of embodiments under the explicit language is the same set – then what have you lost by acquiesing to the explicit language? The point of you not wanting to give in is that you know or you suspect that the sets are not the same. So you want to obtain something which you might not even know what it is and why? Because you could conjure fancy language? That’s not the inventor inventing something that great, thats the inventor inventing something small (relatively) and his lawyer trying to make a mountain out of a molehill.
” There’s nothing more frustrating than seeing a broad scope which covers all sort of fantastical means which is “supported” by a mundane, nearly useless disclosed embodiment, followed by an argument directed to it being a non-obvious combination. It’s a constant fight to explain to people they can’t have anything close to this scope while they make minor changes….”
Again, I think this is a problem caused primarily by the enactment of 112(6), and by numbers of CCPA and Federal Circuit cases that seemed to endorse functional claiming. The Feds are now reading functional claims as all being governed by 112(6), but that, in turn, makes there real scope indefinite — which is the real problem identified by Halliburton.
Perhaps during prosecution you could say that claims that are essentially functional are either to be construed under 112(6) or they are invalid. If they are to be construed under 112(6), perhaps you could ask them to amend them to provide the “means for” or “step for” signals for clarity purposes. That would really get their attention.
Ned – please refrain from your attempts to portray this as ONLY a 112(f) issue – as has been made perfectly clear by me and well as by Prof. Crouch (and his coined phrase of Vast Middle Ground is in part applicable outside of 112(f) and that (tiny and optional) section that deals with claims TOTALLY functional.
“and reasonable leeway is made”
Define that please.
Define that please.
Nautilus named a standard, the CAFC hasn’t gone anywhere with it yet.
LOL – no Random, I meant a real definition – not your “version” of what “may” happen from Nautilus (which you used to like totally “wipe out” the coined term of Prof. Crouch’s Vast Middle Ground) – as my friends from Montgomery say, “That dog won’t hunt.”
What is reasonable is context specific and a component that is normally considered in reasonableness is the difficulty in being more reasonable. The most well-known (so well known its often overlooked) mechanism is to look to other claims. This was done in Lizardtech, where one set of claims contained a limitation and the other set of claims did not – there the removal of the limitation became a focal point for determining if the non-limited claimset had support over its entire scope.
Another easy mechanism for this is to look into the examples in the specification itself. If the specification includes an embodiment discussing Feature X with some level of particularity, and the claim lacks facets of that particularity, we naturally have to conclude that the failure to include is intentional, because clearly it was possible to convey it – the spec just did so.
There are also a few general rules. For example, Wabash makes clear that novelty can never be described in purely functional terms. We can’t “save” a claim whose novelty is claimed functionally outside of 112f by trying to construe the language to be something from the spec.
Beyond that, it’s a PHOSITA question – if a PHOSITA would find that detail in a particular piece of the invention is necessary then a failure to include that detail will render a scope both overbroad under 112a and indefinite under 112b.
“We can’t “save” a claim whose novelty is claimed functionally outside of 112f by trying to construe the language to be something from the spec.”
But the Feds do it all the time now because they are construing ever functionally defined element of a combination to be covered by 112(f).
The only exception to 112(f) today is where the claim is not to a combination, but when is that ever the case?
First point here:
“What is reasonable is context specific and a component that is normally considered in reasonableness is the difficulty in being more reasonable.”
Very much so – and this is at the “heart” of what is wrong with the current broken scoreboard attempts to take what is in fact an INDIVIDUAL case/application/claim investigation and mash the nose of wax of the law of 101 by attempting to ig nore what Congress did in 1952 by expanding what was a single paragraph into the several sections of law of 101/102/103/112.
Combine this too with the allowance BY Congress to permit terms of function (not ONLY in 112(f)) in any combination claims – the Vast Middle Ground that you for some inexplicable reason refuse to understand as being the law – regardless of what happens in your Supreme Court case of choice, and once you realize what exactly the section of law in 112 – different than that of the single pre-1952 paragraph and any case law from pre-1952, then the light of understanding may (admittedly painfully for you) dawn upon you.
Second point here of course is that the Supreme Court itself greatly lessened what must be shared in the spec by its attempts to hyper empower PHOSITA. Your statement of “we naturally have to conclude that the failure to include is intentional, because clearly it was possible to convey it – the spec just did so misunderstands and misstates exactly what must be included in an application.
and as for your continued assertions that you are in the software arts – I find it incredulous that you have such a background and still have not checked out the MathS philosophy and the writings of POiR at slashdot/techdirt on what equivalence entails.
You’re not discussing the equivalence I care about. You are talking about hardware/software equivalence, which has always been irrelevant to me and ought to be irrelevant to you in a post-Alice world. Had the claims in Alice been to a physical circuit that performed the function it still would have been invalid.
I don’t have a problem with “math” or its implementation like MM does. I have a problem with the difference between talented and untalented speakers. Some people can write beautiful, elegant algorithms which achieve results with a minimum of work. Others may achieve even better or more accurate results with significantly more work, and those people have their place too. But most achieve pedantic results with poor work, and then try and use functional vagueries to elevate themselves to parity with people who are decidedly greater than they.
Take any functional result that end users use on a daily basis – my example du jour is driving directions. There are as many ways to write algorithms that give driving directions as there are books in a bookstore. But bad writers, afraid that their book isn’t special and wont sell, try and steal the entire store for themselves rather than merely occupy their spot on the shelf. My concern is simply to keep every book in its place. The fact that this results in bad writers being limited to something that lacks commercial value is nobody’s fault but the writer’s.
We’re going through a period now where recent 101 and 112 developments in the law are just starting to confine bad inventors to their marginal inventions rather than give them an overbroad scope. It’s a good thing for everyone but those inventors. It’s not the end of the world or the collapse of the US patent system. It’s healthy to have properly sized scopes.
Random, it is not the inventors that have the problem of claiming the world but disclosing only an island. It is the patent bar that has the problem. This has been a problem with this group since claims were birthed. See, Morse as a good first example.
Random, it is not the inventors that have the problem of claiming the world but disclosing only an island. It is the patent bar
It’s both in concert. The attorney charges a fee and has to justify the fee and the client wants bang for his buck – a commercially valuable scope for the cost. The situation (in software) does not ordinarily justify a commercially valuable scope – it prevents to copying of his algorithm, but his algorithm is one of many that achieve a result. Consequently they’re both trying to justify spending too much for too little and too often the office wants to throw them a bone to make our “customers” happy.
Random, the patent bar will always try for broad scope and it is true the inventor as well has an interest. It is job number 1 of the PTO to limit claim scope to the scope of the disclosure.
But with 112(f) in the mix, it makes literally no difference how broadly worded a claim is. I daresay, the PTO has no effective means of limiting apparent scope. This is a problem.
Random confounds his apparent ig norance be merely mouthing a repeat of the misunderstandings of what the different IP laws protect.
Very much in echo of the poor misunderstandings as “voiced” by Malcolm and Ned.
Gee, what a surprise.
Great ec(h)0system here….
I very much AM discussing the equivalence that you care about.
You are the one refusing to understand what that equivalence means when it comes to NOT having the explicit “code-level” claiming that has LONG permeated your “notions.”
“This notion that you “feel” that the “contribution” “warrants” the scope is irrelevant”
So too, Random, many of your own “notions” are also irrelevant.
Your views specifically on code level claiming and lack of understanding of the Ladders of Abstraction are your downfall.
I’m interested in how the scope of a claim that is considered commensurate with the contribution to the art varies with the art. That is why I wrote my 1.2.1 below.
I see that, overnight, I have attracted a good solid response to my 1.2.1 but all it does is to increase my level of interest in the question.
Suppose you find out that novel Molecule X cures disease Y. You write it up and file on it. Claim 1 though, you direct to useful new molecule X, per se.
I think that scope is too wide. I think your claim should be purpose-limited, commensurate with your contribution to the art of treating disease Y. But I’m a lone voice against the might of Big Pharma.
Suppose instead I am a tanner and frustrated by the blemishes on my hides caused by red hot branding irons. By chance I come across technical literature that teaches that liquid nitrogen leaves hide undamaged but permanently bleaches to pure white any hair (coat/pelt) growing out of that area of the hide. So I file on my new method of branding hides, at temperatures around that of liquid nitrogen rather than bonfire temperature. I call my process “Freeze Branding”. It leaves no wound and is atraumatic to the animal too.
Commentators here (see below) shrink from letting me have my claim. Intuitively, they think it too wide. I find their arguments less than convincing. As a matter of fairness and common sense, and fitting to my dramatic new contribution to the age-old arts of branding hides, isn’t my claim scope OK?
Reverting to Kevin Roe, who had an idea, wrote it down, and got to issue, I suggested below (at 10) that Eli Lilly did more than that, and at 10.2 MM agreed. But actually, what I wrote was slightly tongue in cheek. How much more than did did the ELI Lilly inventor actually do, before Lilly filed on it? One criticism of First to File is that it rewards those (like Kevin Roe) who are still mere speculators at the time they file. The Lilly case is on the border, but there is no speculation in my freeze branding claim. If mine is not a patently good claim, what is? Let’s not suppose that throwing more detail into the claim is the Cure-All for every bad claim. Sometimes a seemingly broad claim is sound and fair and best promotes the progress.
“ I think your claim should be purpose-limited,”
In our sovereign, a claim to an item covers the item and not a particular use of the item.
Your view just is not in accord with our sovereign.
Anon, I don’t think that fully understand your point here.
In U.S. law, the item itself does not infringe but rather infringement is defined by a set of acts (make, use, sell…).
The distinction is in the statutory category: Thing (itself) versus a use of (or perhaps “method involving”) that item.
As a (very limited) example, let’s say that I invent a thing – let’s say the very first hammer. It just does not matter what you use that hammer for, if you do so, you infringe the item itself, and there is NO call for a specification to include the entire possible breadth of use of the thing.
MaxDrei here appears to want to limit the scope of the “thing” invention to the explicit uses (utility ) shared in the application.
That is just not how our sovereign has created our patent system. Yes, you do need utility, but once obtained, that utility is not a limit on the patent right.
Ugh I agree entirely with anon. My heart hurts.
LOL – happy new year Random (that pain you feel just might be from the use of the “muscle” of critical thinking – don’t worry, it gets easier and less painful the more you use it.
😉
Next step – if you are ready, my young padawan – is to grasp the “item” that is software versus the “method” of executing software – and ALL that that distinction entails.
Here too, young padawan, your penchant for “all species” falls when (if) you are ready to accept what is known in the art of software (the POir equivalence point).
Sufficient species – not ALL species – is why the “code-level” claiming underlying view of yours is simply – but critically – flawed.
Once you accept that – then we can next move on to your waywardness with the ladders of abstraction and your rather odd desire to not see the multiplicity of rungs on a ladder and your ever present “notion” to want to grasp the top rung as if ANY use of the ladders of abstraction “dooms” you to do so.
Thanks!
It’s not clear what your statement here is. Let’s make some claims:
1. A method of branding comprising: coating a brand in liquid nitrogen; and pressing the brand against cattle.
2. A method of branding comprising: acquiring cattle; and branding the cattle at temperatures at or about that of liquid nitrogen.
1 is valid and not overbroad based on the disclosure you discuss in 16. 2 is invalid for two reasons – it’s a single means claim and your disclosure fails to show that coating the brand with liquid nitrogen is the only manner in which to achieve branding at temperatures of liquid nitrogen.
2 should never be granted, but lets assume 2 is granted. Then two alleged infringers come along. Alleged Infringer A coats their brand in liquid nitrogen. Alleged Infringer B utilizes a new organic paste which marks the cattle, but because of the chemistry of the paste it can only be applied at very low temperatures (after which point it heats up and hardens to the hide or something). B does not infringe Claim 1. Asserting Claim 2 against Infringer B is a Lizardtech or Abbvie situation – it technically meets the words of a claim that will be declared invalid because there is no proof the patentee posited this means (and therefore his scope was overbroad). You can’t catch Infringer B no matter what you do, because there is no valid claim scope that would reach him based upon your disclosure. The added danger is that Infringer A asserts that the existence of Infringer B proves your claim fails 112, 1st and Infringer A gets off as well.
There’s no benefit to trying to get the additional scope of Claim 2, but there is additional cost. Therefore, given the choice of Claim 1 or Claim 2 you should always right Claim 1. Of course, claiming lets you have your cake and eat it too – you can get both Claims 1 and 2 in independent forms or make 1 a dependent of 2, which is why dependency is an important thing to take advantage of – It will let you try (but probably fail) to go after the Infringer Bs of the world while still having a dependent claim to protect against the Infringer As.
Sometimes a seemingly broad claim is sound and fair and best promotes the progress.
This is an issue less often than you seem to think. If you describe a single species and the single species is the only way to achieve the genus you are claiming, there IS NO species/genus problem. Ex: Assume that applying liquid nitrogen to the brand is, in fact, the only way possible of branding at low temperatures. Then it doesn’t matter whether you claim “applying nitrogen to the brand” (species) or “branding at low temperatures” (functionally-defined genus) because the set of infringers that can infringe the latter without infringing the former is a null set.
On the other hand, assume that there ARE different methods. Then a claim to the species accurately describes your contribution, while a claim to the genus does not, because nothing in your disclosure suggests the different methods.
Random, I’m delighted that you take so much time and trouble to reply so thoughtfully. Thank you. What is nice is that my mindset to a claim to “freeze branding” is “Why not” but yours is more negative, to recoil in horror muttering the age-old incantation “Singe Means. Single Means”. I strongly get the feeling that yours is a PTO “If in doubt, say No” mindset.
First, a preliminary point of clarity. The liquid N2 serves only to chill the iron, prior to branding. You take the iron out of its Dewar flask of N2 and apply it, dry, to the hide. No N2 contacts any hide. You could have something else in your Dewar, but N2 is cheapest.
Don’t get me wrong. I am a fierce supporter of the EPO’s stalwart fight against over-broad claims. In general, single means claims are too broad. The incantation is proper, nearly always. Perhaps because I operate in polyglot Europe, in a patent system with 38 Member States all using the same Patent Convention and substantive law of patentability, I really do not like “magic words”, like “single means”. We can serve deserving inventors better than that.
My hypothetical has it that the hair whitening effect of freezing the underlying hide of a living beast has long been part of the state of the art. The invention is lies in the insight to utilise that effect in branding.
The problems with conventional branding (and solved by freeze branding) are permanent hide damage and temporary beast trauma. But there are known alternatives. You don’t have to use freeze branding if you want undamaged pelts and trauma free animals. Aerosol paint sprays, ear tags, neck collars: there are a host of good alternatives. But none of them is good against loss or theft (rustlers!) during the full life of the animal. Only freeze branding ticks all the boxes. But it doesn’t pre-empt other methods of tagging your bovine property. I still think its inventor is entitled to a claim that pre-empts “freeze branding”. I agree with you, that the specification needs to be enabling, so it should cite to the learned Paper that teaches the hair-whitening effect of chilling, and needs to say quite a lot about the thermal capacity of the iron, how long you need to hold it against the hide (shaggy Scottish Highland cattle longer than a chihuahua dog, I suppose), what constraints there are on the design detain of the brand, alternatives to liquid nitrogen etc etc but quite why a competitor who chills the iron using some other coolant in the Dewar should escape infringement is beyond me.
Now to your organic paste. A much-cited benefit of the patent system is that it forces design arounds (or is that “designs around”?). Your chemical branding is a case in point. By “freeze branding” I mean “branding by freezing” and not “branding living hide by procuring a chemical reaction between the hide and a paste applied to it”. I think your claim 2 is unfair to my inventor. It is not that we are branding (by whatever means) at a particular ambient temperature. Rather, it is that we are branding by chilling the hide locally, in the pattern of the brand, long enough that the hide is transformed (as known) by the local chilling, thereafter to grow only white hairs. If you like, it is a Chef America point. The claim needs to recite “by” rather than “at” liquid nitrogen temperatures.
That’s enough for now, I should think. Any thoughts in reply?
I still think its inventor is entitled to a claim that pre-empts “freeze branding”.
But that still begs the question of what constitutes freeze branding (which I know you answer, but go with me here). Your post, for example, is replete with other, similar methods of branding (in that they all form sort form of brand without using heat) that have positives and negatives. Aerosol paint, for example, must certainly be cheaper that liquid nitrogen, simply not as effective for branding over the course of the life.
That statement, right there, is evidence that the art draws a distinction between the two acts. The art clearly does not believe that aerosol paint and liquid nitrogen are the same acts (at least, not according to you, or your inventor’s “testimony”). So under what basis would the art say that all forms of freezing are the same? You say that freeze branding “checks all the boxes” but those are YOUR boxes of what YOU find important. What if someone else comes along with other boxes and says “liquid nitrogen checks this box, but my invention checks some other box”
There is one sentence which may lead us to some agreement:
I agree with you, that the specification needs to be enabling, so it should cite to the learned Paper that teaches…alternatives to liquid nitrogen etc etc
This is a long list sentence which glosses over the primary point. Of key importance for your claim scope to “all freeze branding” would necessarily require enablement of the alternatives to liquid nitrogen.
My problem with functional scopes like “all freeze branding” is that for the fact finder to conclude that you have enabled the scope you necessarily have to know what the scope is. I’m not talking about an indefiniteness question here, I’m talking about a breadth question. Let’s say your treatise lists 6 alternatives for liquid nitrogen (so 7 in total). Each of these 7 items will chill the hide locally to only grow white hairs. How does the fact finder know those seven fill the scope of the claim? How do we know that there aren’t 100 different alternatives, or a thousand? How do we know that while your 7 may function in a generally similar manner, there aren’t 100 different ways which function completely differently to yours which still achieve the result? (I’m not sure what your claim is, are you claiming a method that grows white hairs?)
You would, necessarily, have to prove a negative. You would have to say “Here are my 7 examples, and we know no other examples exist because ____” And while that may sometimes work in deductive areas of math, it generally does not work in inductive areas of physical science. So if you can make it work, great, but you probably can’t. Since you can’t prove a proper fit, the only reason I could see for giving you the scope is to say “But there’s no better way to describe what I’ve contributed.” But that clearly isn’t true, as we’ve just pointed out you have posited 7 possible avenues and it isn’t difficult to convey that list of 7 items.
If you’re not limiting it to the list of 7, all you are doing is relying upon the fact that you can distinguish between characteristics of things – “lifetime marking” is a quality that exists in this technique and this one but not that one, and I think lifetime marking is good. Well lifetime marking as a quality isn’t something you invented. Lifetime marking is a fact of the world, and you discovered a means of creating it, but not all the means of creating it (at least, we don’t know there aren’t other ways if you can’t prove the negative). So if you didn’t create the characteristic, nor all ways of making the characteristic, why should you be getting an exclusionary right to it?
Max invented branding at cold temperatures. The paste branding is a particular flavor of cold temperature branding and may be patentable in its own right.
Nevertheless, Max’s claims (your 1 or 2) are legitimately open ended and encompass methods with or without paste. To make or use the paste brand requires a license from Max.
To argue otherwise is to argue that “comprises” means “consists of” or that any claim that includes the word comprises is invalid.
Les, in both hot iron and freeze branding, it is the thermal capacity of the iron that achieves the desired effect. An aerosol of a volatile solvent has a chilling effect on your skin but cannot brand it and so cannot effect “freeze branding”. Similarly the paste concept. Neither are embodiments of freeze branding so both are outside the scope of my claim.
Not as described by Random. He applied the paste to the brand. A reaction cooled the brand. This is encompassed by claim 2 as proposed by Random : 2. A method of branding comprising: acquiring cattle; and branding the cattle at temperatures at or about that of liquid nitrogen. I believe this claim 2 is an allowable claim based on your disclosure even if you did not contemplate this particular embodiment. You invented make a brand cold and apply it to a cow.
Les our discussion reveals the importance of the precise words of the claim. Not easy in a summary hypo. Random posits:
“a new organic paste which marks the cattle, but because of the chemistry of the paste it can only be applied at very low temperatures”
I see that as a species of chemical marking, not “branding”. I do not see my invention as reaching as far as methods of hair whitening by chemistry as opposed to freezing the hide down to liquid N2 temperatures without resort to any added chemical.