Claim Construction Leads to Nonsensical Result and thus Indefiniteness Holding

Columbia University v. Symantec Corp (Fed. Cir. 2015)

Back in 2013, the NPE known as Columbia University sued Symantec for infringing at least six of its data-analytics patents covering the process of detecting and blocking computer malware.[1]  Following a 2014 claim construction it was clear that all of the asserted claims were either (1) not infringed or (2) invalid as indefinite.  As a result, Columbia stipulated to such and filed its appeal of the claim construction order.[2]  On appeal, the Federal Circuit has affirmed the indefiniteness holding and substantially affirmed the claim construction, but did find enough problems with the lower-court decision to re-ignite the case.

Here, I’m just going to focus on the claim term “Byte Sequence Feature.”

Defining Byte Sequence Feature: The claim construction issues in this case are parallel to those debated in many cases – when a term is understood by one skilled in the art, does the specification limit that definition by using the term in particular ways (but not expressly re-defining the term), or does the term retain its ordinary and customary meaning?   Here, the court reiterated its en banc statements from Phillips that “the specification may define claim terms by implication.”

Columbia argued that the term “byte sequence feature” includes more than merely machine code instructions, and also extends to other non-compiled elements of an executable attachment.   On appeal, the Federal Circuit rejected that argument — finding that the specification indicates that the byte sequence feature “represents the machine code in an executable.”  The court also found that the machine-code limitation “most naturally aligns” with the inventor’s description of his invention.[3]

Since none of the accused products analyze machine code instructions, they don’t infringe (under this construction).

Loose Statements in the Provisional: Of interest to patent prosecutors, the associated provisional application included a statement essentially saying that the byte sequence feature does not include non-machine code “resource information.” That statement was removed from the non-provisional application, but the Federal Circuit indicated that the original definition still stands.[4]  This fits within the normal approach to patent prosecution that the mere withdrawal of a mis-statement is insufficient.  Rather, following a mis-statement or change-in-definition, the patent applicant should affirmatively identify the change for the examiner’s consideration.

Resource Code is Indefinite: I noted above that both courts agreed – the proper definition of “byte sequence feature” covers machine code and not ancillary resource information that may be part of the executable file.  Now, the confusing part is that many of these same claims include a express limitation that the “byte sequence feature” includes this resource information — exactly opposite of the court’s definition of the term.

It is a problematic ambiguity to have a claim element include embodiments excluded from the element’s definition.  As such, the court determined that those claims must be found invalid as failing the definiteness requirement of 35 U.S.C. 112. The court writes:

Claims 1 and 16 conflate a “byte sequence feature,” which is a feature extracted from machine code instructions, with the extraction of “resource information,” which is not a machine code instruction. Specifically, the claims describe the step of extracting machine code instructions from something that does not have machine code instructions. . . . The claims are nonsensical in the way a claim to extracting orange juice from apples would be, and are thus indefinite.

The court’s decision on indefiniteness appears correct but avoids the patentee’s actual argument that the claim terms should be construed so as to avoid this nonsense approach.

As noted in the intro, the Federal Circuit did reverse the claim construction as to the claims of two of the patents and vacated the non-infringement judgment. Thus, the patent case will continue on remand.  In the case, Columbia also sued Symantec for fraudulent concealment, unjust enrichment, and conversion. Those state law claims are apparently still pending before the district court.

= = = = =

[1] The asserted patents include Patent No. 7,487,544 (“the ’544 patent”), U.S. Patent No. 7,979,907 (“the ’907 patent”), U.S. Patent No. 7,448,084 (“the ’084 patent”), U.S. Patent No. 7,913,306 (“the ’306 patent”), U.S. Patent No. 8,074,115 (“the ’115 patent”), and U.S. Patent No. 8,601,322 (“the ’322 patent”).

[2] You might question whether the claims are valid under 35 U.S.C. § 101 for being directed to an unpatentable abstract idea.  Claim 1 of the ‘544 patent is directed to a “method for classifying” an executable file attached to an email by (1) extracting a byte sequence from the attachment “representative of resources referenced by the … attachment”; and (2) using a set of classification rules (not defined by the claim) to predict whether the byte sequence is malicious.  I suspect that the full-throated Section 101 argument was not raised because the defendant Symantec also supports broad subject matter eligibility.  In that situation, it may be the Court’s jurisdictional role to take up the mantle.

[3] See Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 2003).

[4] See Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (provisional applications incorporated by reference are “effectively part of the” specification as though it was “explicitly contained therein.”).  This suggests that the oft-used approach of ‘fixing it in the non-provisional’ may need to be reconsidered.

[5] In the ‘115 and ‘322 patents.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

92 thoughts on “Claim Construction Leads to Nonsensical Result and thus Indefiniteness Holding

  1. Several instances here from the sAme ones (Ned and Malcolm) of the drive-by monologue style of NOT having an actual dialogue on legal points.

    Counter points are raised and presented, and it is just gosh darn too inconvenient for these counter points to be actually addressed.

    Nope. Instead we are guaranteed that the exact same scripted items will again be presented by Malcolm and the Echoes at the very next whim of theirs and (of course) any attempt at dialogue by bringing such things as these counter points, will be ig nored.

    My, that’s a lovely “ec(h)osystem…

  2. On a practice note, what did they hope to get out of incorporation by reference? It’s just lazy. Especially here, where the specification is quite brief. Maybe somebody saw those magic words in an old patent, and thought it made the application more patenty.

    Incorporation of unrelated documents raises similar issues: It may ensure enablement, but there may be a single sentence that defines a key term to your disadvantage. But if it is publicly available and provides enablement, why do you need to even mention it? If its necessary, why not just mention that it describes how to do something and avoid incorporating it by reference.

    Are there benefits to incorporation by reference that can’t be obtained by good drafting?

      1. Certainly there are, but good driving still leaves you open to an accident arising from circumstances that you don’t control. Good drafting does not leave you open to attack from your own provisional which you control. You know exactly what is in your provisional, and no little sentence is going to run out between paragraphs and get run over by your metaphor.

        1. No matter the level of your good drafting, Mr. Oblivious, no one yet has devised a way to tell the future to avoid tomorrow’s patent profanity created by the muckery of the courts.

          1. Agreed, and I am surprised by the potential effect of an errant statement in a provisional. I don’t do knee-jerk incorporation by reference, for reasons totally unrelated to this trap, but I am not sure that this case is or is not strong reason to avoid it.

  3. I did not read Phillips the way Judge Dyk does here. If Judge Dyk reading is correct, Phillips would have ruled that the “baffles” are angled to deflect bullets, as it was described in the specification. Phillips ruled the opposite.
    By the way, the Judge Dyk’s opinion switches between “plain and ordinary meaning” and “dictionary definition” as if these two were the same. I find this suspicious.

  4. tian I know at least one other person sees a difference without distinction when comparing typical University tech transfer office practices to an NPE. They are one in the same.

    In fact there’s some key differences between the university and the typical NPE.

    (1) The university’s research branch is actually engaged in ongoing innovation-related work; (2) the university is typically not in the business of acquiring third party patents for assertion; (3) universities typically don’t create shell companies for the purpose of obscuring the identity of the party controlling the litigation; (4) university inventors typically continue to focus their research on the subject matter of the patent; (5) the universities don’t typically draft claims with litigation targets in mind; (6) universities typically are not hauling hundreds of diverse “big corps” into East Texas to shake them down.

    I’m happy to learn of any stats/facts pointing in the opposite direction.

    The bottom line, though, is that equating the typical university tech transfer office with your typical NPE is best done with a hint of sarcasm (even if unintentional) because it’s not a defensible position.

    1. ..because having patents and (gasp) asserting patents just must be “bad”…

      What a schmuck.

      You quite miss the foundational aspect of US patent system in that the property right was always meant to be fully alienable and it simply matters not at all whether “practicing the invention” is done by the holder of the patent property.

    2. MM, I hope you would agree that there are at least some startups that invest in real technology and that they should have a right to protect it with patents?

      1. Ned: there are at least some startups that invest in real technology and that they should have a right to protect it with patents?

        Absolutely. Moreover, those startups exist and they surely do use the patent system.

          1. that somebody can purchase and use as they will?

            Of course, the answer is obvious.

            (pssst svg, think** of the basic foundational aspect of US patent law: fully alienable property.)

            **to a certain extent, this asking you to think is rhetorical, as I think this is something that you are aware of and fully accept. Malcolm, on the other hand, has shown a consistent propensity to not think or accept this very foundation of US patent law. His anti-patent views will often kick dust over this foundation of fully alienable property and he will attack with ad hominem on the “who” instead of the “what” that is the property of the patent right.

            He will NOT address nor acknowledge this basic and foundation of patent law because it just does not support his feelings and is not on his short script.

          1. Ned,

            You are quite missing the point concerning the fully alienable right – and the lack of constraining that alienability (or important substantive legal distinctions thereof) based on who the owner of the right is, or how the owner wants to use that right.

            This is a rather important point that you would do well to recognize.

              1. it is property is sufficient.

                Apparently NOT Ned – as you** keep on wanting that specific property to be somehow constrained post grant when the system had nothing of the sort in mind.

                **the somewhat “n@ked emperor” royal you version – you and the echoes who constantly parrot the Big Corp “Oh Noes – the Tr011s” mantra.

    3. I have to admit I don’t get your about face with regard to this. Here’s claim 1 of 7,487,544:

      1. A method for classifying an executable attachment in an email received at an email processing application of a computer system comprising: a) filtering said executable attachment from said email; b) extracting a byte sequence feature from said executable attachment; and c) classifying said executable attachment by comparing said byte sequence feature of said executable attachment with a classification rule set derived from byte sequence features of a set of executables having a predetermined class in a set of classes to determine the probability whether said executable attachment is malicious, wherein extracting said byte sequence features from said executable attachment comprises creating a byte string representative of resources referenced by said executable attachment.

      So, Columbia University is great because they got this claim, but if this claim was advanced by an NPE, then the claim would be terrible? What if Columbia University sold the patent to an NPE?

      You rail against these types of claims (and the supposedly dis gusting sc um bag lawyers who get them) all the time. What’s the difference because a university got this patent instead of an NPE? What about the lawyers for Columbia? Are they somehow good because they work for Columbia and don’t work for an NPE?

      1. PatentBob, fortunately, I think the message has gotten to Congress that in NPE does not equate to a troll although trolls are typically NPE’s. Trolls are those who abuse the patent system in one way or the other typically by asserting business method patents in a manner so as to avoid trial. Anybody who actually goes to trial with a reasonable case should not be called a troll.

      2. Also, PatentBob I would just like to mention that eBay was all about a business method patent. The district court did not like these kinds of patents, and that I am sure that colored its opinion in denying the injunction in the face of continued infringement by eBay. I am very certain that Supreme Court also thought very little of business method patents. That helps explain why they thought the public interest would be against allowing injunctions with such patents: Enjoining the manufacture and sale of products is quite a bit different from enjoining the practice of business methods.

        1. Ned,

          It is beyond clear that to the extent that the courts are trying to rewrite the law based on their feelings of how the law “should be,” as opposed to how the law is actually written, that you merely have the “Broken Scoreboard” effect.

          Some – for whatever reason – cannot seem to identify that as an important and driving issue within the statutory law that is patent law.

          Even you posted a link to an article written by Judge O’Malley that criticizes “friends of the court” that seek to improperly change the law by asking the courts to take on the role expressly provided to the legislative branch. Do you remember that post of yours?

            1. Not just “the courts” with a lower case “c” Ned.

              And very much the Court with a capital letter “C.”

              Unfortunately, this tends to be a rather major blind spot to you and your sense of separation of powers.

              Judge O’Malley’s criticism – I daresay – is even MORE damming of those who would advocate statutory law changes at the Supreme level.

      3. PB Columbia University is great because they got this claim, but if this claim was advanced by an NPE, then the claim would be terrible?

        Meet PatentBob. PatentBob claims to be an attorney but he can barely read English. He also has a habit of creating strawman and molesting them.

        Let’s all have a laugh at PB’s expense. Again.

          1. xtian,

            You will receive no inte11ectually honest or actual dialogue from Malcolm.

            Don’t you know that?

            Come and celebrate the Decade of Decadence that this February marks of the exact same blight of the manner in which Malcolm “adds” to this “ecosystem.”

            (and yes, it is a legitimate question as to exactly why that blight has not been taken care of for a decade now)

  5. tian I know at least one other person sees a difference without distinction when comparing typical University tech transfer office practices to an NPE. They are one in the same.

    In fact there’s some key differences between the university and the typical NPE.

    (1) The university’s research branch is actually engaged in ongoing innovation-related work; (2) the university is typically not in the business of acquiring third party patents for assertion; (3) universities typically don’t create shell companies for the purpose of obscuring the identity of the party controlling the litigation; (4) university inventors typically continue to focus their research on the subject matter of the patent; (5) the universities don’t typically draft claims with litigation targets in mind; (6) universities typically are not carpet bombing diverse “big corps” in East Texas for shakedown settlements.

    I’m happy to learn of any stats/facts pointing in the opposite direction.

    The bottom line, though, is that equating the typical university tech transfer office with your typical NPE is best done with a hint of sarcasm (even if unintentional) because it’s not a defensible position.

  6. Many commenters below: The claims that make clear the term is broad are indefinite, because we’ve FORCED a narrow meaning on the claim that was explicitly removed in the change from the provisional to the final app

    There was no “explicit removal” of the conflicting definition because the provisional was incorporated by reference.

    Live and learn.

    Besides that, the claims are junk on numerous other levels so it’s really not worth getting worked up about.

    1. on numerous other levels so it’s really not worth

      LOL – “whatever”

      “Great” critical thinking skills there Malcolm.

      1. Since you seem to have been snowed over by the high-falootin’ scrivening, let me break it down for you. The super awesome insight here is that you can filter stuff by comparing that stuff to (get ready for this!) …. a rule set derived from aspects of stuff that has previously been classified as good or bad.

        Let’s call it Exhibit 90,392 in our broken patent system. Of course there’s probably ten thousand other equally vacuous “bad file detection” processes patented out there, each filled to the brim with the kind of desperate scrivening that only a real “expert” can bring to the table.

        It seems a fair question to ask why hundreds of thousands of “use rules!” patent claims were not larded on top of every other technological (and non technological!) sector in the history of our patent system. After all, rules have always been important and it’s pretty easy to rewrite the old ones using fancy new words.

        Eggs are popular. Let’s sort the good ones from the bad “using rules based on aspects falling into a pretedermined class”. Then I’ll sue the egg industry. Rinse. Bananas are popular too. Recycle. Now I’m going to sue the banana industry. Rinse. Microwaves are popular. Recycle. Now I’m going to sue all the microwave manufactures. Rinse. Audio CDs are popular. Recycle. Now I’m going to sue all the audio CD manufacturers. Repeat, ad nauseum.

        1. Since you seem to have been snowed over

          Clearly you are wrong, as I have made it abundantly clear that I am not in the habit of “defending” any particular patent or set of claims.

          My comments are to the larger law itself – something that you seem haplessly confused about (at times, purposefully so).

          The only “Repeat, ad nauseum” here is your own short script.

          1. “anon” I am not in the habit of “defending” any particular patent or set of claims.

            Right. You’re in the habit of defending giant swaths of the worst junk ever granted by any patent system in the history of the universe.

            Gob forbid you actually follow your inane “theories” to their practical conclusions and take a whiff.

  7. “Loose Statements in the Provisional: Of interest to patent prosecutors, the associated provisional application included a statement essentially saying that the byte sequence feature does not include non-machine code “resource information.” That statement was removed from the non-provisional application, but the Federal Circuit indicated that the original definition still stands.[4] This fits within the normal approach to patent prosecution that the mere withdrawal of a mis-statement is insufficient. Rather, following a mis-statement or change-in-definition, the patent applicant should affirmatively identify the change for the examiner’s consideration.

    OK….

    “Resource Code is Indefinite: I noted above that both courts agreed – the proper definition of “byte sequence feature” covers machine code and not ancillary resource information that may be part of the executable file. Now, the confusing part is that many of these same claims include a express limitation that the “byte sequence feature” includes this resource information — exactly opposite of the court’s definition of the term.”

    Huh? Seems to me — the patent applicant affirmatively identified the change for the examiner’s consideration– BY PUTTING IT IN THE CLAIMS! (quite often the only place Examiners look)

    “It is a problematic ambiguity to have a claim element include embodiments excluded from the element’s definition. As such, the court determined that those claims must be found invalid as failing the definiteness requirement of 35 U.S.C. 112. ”

    BUT THE COURT CREATED THE PROBLEMATIC AMBIGUITY!

    BY THE WAY, THE EXAMINER DIDN’T READ THE PROVISIONAL!!!

    “The court’s decision on indefiniteness appears correct”

    To whom? Not me!

  8. “I suspect that the full-throated Section 101 argument was not raised because the defendant Symantec also supports broad subject matter eligibility. In that situation, it may be the Court’s jurisdictional role to take up the mantle.”

    Dennis,

    Please, your bias is showing. Why is it the job of the Federal Circuit to be “patent-eligibility police” when the issue isn’t raised by the parties?

    1. “Why is it the job of the Federal Circuit to be “patent-eligibility police” when the issue isn’t raised by the parties?”

      I think he means the District Court not the Fed. Circ. and that is because at the end of the day their job is to see justice done under the laws of the nation.

  9. This seems like a strange outcome from a claim differentiation point of view. The claims that make clear the term is broad are indefinite, because we’ve FORCED a narrow meaning on the claim that was explicitly removed in the change from the provisional to the final app. Seems like it should just be a new matter change of priority date with the broader definition – then it all makes sense.

      1. While it is indeed true regarding incorporation by reference, I believe the point attempted here is akin to file wrapper estoppel.

        But yes, a position not in accord with the provisional should have been made clear that that portion of the provisional was not binding.

        FAR too many times I have seen inherited works of provisionals filed under the “bag of grass clippings” motif. That is, just file something because “we are going to a conference or an exhibition and we want something on file” Attorneys who do this should make it abundantly clear how little value (and possible harm) this practice provides.

  10. Denise,

    “the NPE known as Columbia University” – I believe the word that most people use for this type of entity that obtains patents, doesn’t make a product, but sues other commercial entities for royalties is TR0LL.

    Thanks for the smile. I know at least one other person sees a difference without distinction when comparing typical University tech transfer office practices to an NPE. They are one in the same. A rose by any other name…still makes me sneeze!

    1. steve,

      While you are sneezing, can you find for me the legal requirement in U.S. patent law that mandates that some product must be held in order for a patent to be valid?

      (I will not be holding my breathe)

      1. Also, let’s say you’re a hardware manufacturer. You patent not only the product you actually manufacture but also variations on it, so that competitors will have a difficult time getting around your product. Why aren’t you a non-practicing entity with respect to those other patents, since your product does not have those?

        I don’t really consider universities to be NPEs, even if they don’t make products. They do the research in order to enable spin-off companies (those small, dynamic companies everyone seems to love) to make the actual product. Those professors don’t actually want to get their hands dirty with such trivial things as bring a product to market.

        1. Universities and NPE’s both engage in the patent procurement/licencing dance to make money – and there is absolutely nothing wrong with that! Thus, in my eyes, there is no distinction between the two. I do not treat them unequally. I just have a hard time understanding why others do.

          1. xtian, to make money to fund research. The link is important.

            Startups are trying to develop new technology. They invest in patents to protect it/license it should their product development fail.

            Patent attorneys “inventing” and prosecuting business method patents to sue businesses? Not the same.

            Then we have the likes of IBM who invest in patents themselves, creating great numbers of patents that ordinary businesses cannot deal with practically and thus take a license. Not the same.

            1. Ned,

              Your “version” her is just not in accord with the law – from the very start of the U.S> patent system and how that system was set up to have the property right that is the patent to be a fully alienable right.

              If your “version” were to be in play, then the alienability of that property right would have been constrained.

              It was not.
              It is not.

              Your “version” is just not correct.

                1. Not just by Congress Ned (which Congress does affirmatively acknowledge), but is part and parcel of the constitution itself.

                  I suggest that you find and read that (historical award winning) piece of journalism featured on an old PatentDocs story.

                2. anon, I agree that the Constitution provides for exclusive rights for a limited time. If the claims can be cancelled at any time by the Executive, there is no guarantee of a limited time.

                3. Sorry Ned – that legal thinking is a bit too shallow for me.

                  You seem to lose appreciation of the separation of powers and seem to want to “hang your hat” on the “but the limited time is arbitrary/uncertain” line of thinking.

                  That is just a weaker line of thought when the hard core driver of separation of powers is directly available.

                  Further, the Constitutional patent clause is a grant of power to Congress, not an edict that patent laws must be in place – reminiscent of your confused writings over at Quinn’s place on whether or not additional “gold-star” protections could be created by Congress to protect inventions (alternatives – either in addition, or in place of – are fully possible under the law).

                4. Further, you are still not addressing nor acknowledging the aspect under consideration here of that property being fully alienable.

                  If you are going to attempt to make substantive legal changes to the property based on some “to whom” aspect of the would-be owner of the property, you have violated that selfsame fully alienable aspect.

                  This is yet another reason why a “must-have-product” line of thought is simply incongruent with the U.S. patent system.

                  There are other reasons of course, for example, the notion that the patent right is a negative right – not an affirmative one – and that MOST often, follow on inventions (of which, most inventions are of that type), do NOT give the follow-on inventor ANY affirmative right to the base invention from which the follow-on invention follows from.

                5. Help me out here Ned – what does your frolic into a point about possible Federal preemption and states rights have to do with the actual discussion on the meaning of a property right being FULLY alienable and your lack of seeing that your desire to restrict that alienability based on “who is the owner” has serious problems with the way that the US patent system was put in place (per the historical award winning article)?

                  At best your post is a non sequitur.

                6. anon, we are not talking about property in general, now are we?

                  Why are patents property?

                  Are they property because they were property in England prior to 1792?

                  Are they property because that is what the Constitution provides Congress has the power to create?

                  Are they property because Congress made them property?

                  And if the states have a right to create patents absent federal preemption, what will they create ? Exclusive rights or gold stars?

                7. Ned,

                  We are talking about the specific aspect of the U.S. patent system in that the property that is a patent was intended to be fully alienable.

                  You seem to have a really difficult time grasping that point.

                  Instead of grasping that point directly, you seem to want to try to obfuscate with other concerns.

                  Here’s a hint: recognize and acknowledge THAT point.

                  Then, take the next step – when you understand that point – and move to the next dot about how attempts to constrain the property – post grant and based SOLELY on the “who” of ownership is in a fundamental cross-purpose with full alienability.

                  After you take this very small journey and “get” the point of the conversation her – AFTER that, then maybe we can pick up on the other conversations that you seem to want to have (including how you seem unable to see that invention can be rewarded by more than just the Patent Clause).

                8. anon, “ntended to be fully alienable.”

                  I keep asking, “by whom?”

                  The answer to that question is critical.

                9. I keep asking, “by whom?”

                  The answer to that question is critical.

                  Except it is not critical whatsoever.

                  And besides that, that question was already answered; those drafting the Constitution. As I indicated, this was covered in the historical award winning article.

                  STOP avoiding the important points.

        2. Why aren’t you a non-practicing entity with respect to those other patents, since your product does not have those?

          Who says that you are not?

          (you are)

      2. anon – my post was intended to mock those that use the “T” word against corporations but not against universities. But for the fact that the actions (as in this case) fit the definition of a “tr0ll,” for reasons beyond my comprehension, those actions are excusable when it is the conduct of a University, but are a scourge on patent law when carried out by a corporation. I don’t believe in tr0lls.

        “(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention,….”

        “any patented invention” The patent rights are not limited by who owns the patent. Those that make this distinction engage in class envy/warfare.

        We are adamantly in agreement.

        1. Absolutely good sir!

          (and let’s remind everyone who exactly made the term “patent tr011” into the sound byte propaganda term that it is: Big Corp)

          (and let’s further remind everyone that Big Corp did this NOT for the benefit of anyone except themselves)

          1. Absolutely good sir!

            Beyond parody.

            The best part? They are toasting each other over their mutual dislike for “class warfare.”

            Too freaking funny.

            1. Odd that you take exception to two people agreeing with each other Malcolm – and not so odd that you offer NOTHING to base your “disagreement” upon.

              Take note Prof: Malcolm being Malcolm – you really want that for your “ecosystem?”

  11. Ah, the mysterious magical world of computer jargon. Instead of using the term “pattern,” the specification uses the engineer-friendly term, “byte sequence feature,” which is the ordinary term in the art for a pattern of bytes.

    Since all components of a program (“executable”) are compiled into bytes (that’s how computers work), both machine code and “resource information” (data) are compiled into sequences of bytes. Significantly, the specification explicitly describes an embodiment where

    “extracting the byte sequence features from the executable attachment may
    comprise creating a byte string representative of resources
    referenced by said executable attachment”

    Consequently, the district court and CAFC both erred by construing “byte sequence features” exclusively as machine code. Moreover, the claims must be construed in light of other claims, which also refer to “resources.”

    Accordingly, the claims are supported by the specification and are not indefinite. The only nonsensical result here is the claim construction adopted by both courts.

    1. I agree. The limiting factor is that the provision had a definition that was narrower. But the solution, I think, was to bump the priority date due to new matter rather than shoehorn a narrower interpretation.

  12. >>> As a result, Symantec stipulated to such and filed its appeal of the claim construction order.

    >>> Symantec argued that the term “byte sequence feature” includes more than merely machine code instructions, and also extends to other non-compiled elements of an executable attachment.

    Both of the references to Symantec above should actually be referencing Columbia, right?

  13. b) extracting a byte sequence feature from
    said executable attachment; and
    c) classifying said executable attachment
    by comparing said byte sequence feature of
    said executable attachment with a classification
    rule set derived from byte sequence
    features of a set of executables
    having a predetermined class in a set of
    classes to determine the probability
    whether said executable attachment is
    malicious, wherein extracting said byte sequence
    features from said executable attachment
    comprises creating a byte string
    representative of resources referenced by
    said executable attachment.

    I assume the spec teaches how one creates byte sequences representative of resources referenced by the attachment. I do not see the ambiguity.

    1. Ned: I assume the spec teaches how one creates byte sequences representative of resources referenced by the attachment.

      Why would you assume that?

      You think the person who drafted this application was careful?

      1. MM, I only assume it because it was claimed and the examiner did not suggest that the subject matter was not disclosed.

        There is a presumption along these lines somewhere in the law — perhaps in 35 USC 282?

        1. The odds of an important claim term being defined in a meaningful non-circular manner in a computer-implemented process claim is probably less than 1%.

          The whole game is pretending that logic is structure. Hence “attachments” and “features” — magical terms that boil down to abstract descriptions of quintessentially ineligible subject matter, i.e., information.

          1. The odds of an important claim term being understood by Malcolm in a computer-implemented process claim is probably less than 1%.”

            There, fixed it for you.

            Or better yet, shall we return to something that you have never answered?

            The odds of an important [ ] term “technological” being defined in a meaningful non-circular manner [ ] is probably less than 1%.

            And please, not your “version” of “answer” where you simply declare that you have answered something.

            Further, your “magical terms that boil down to” belie your utter ig norance.

            Question: does the actual software on a machine make a difference as to what that machine is capable of?

            The only “magic” here is your incessant insistence that ALL future improvements to a machine are “already in there” – and your ardent desire not to look behind the curtain of your LACK of understanding of the patent doctrine of inherency which is what you would need to use in order to have your “magic” become reality.

            Your short script needs to be retired.

    2. The super awesome insight here is that you can filter stuff by comparing that stuff to (get ready for this!) …. a rule set derived from aspects of stuff that has previously been classified as good or bad.

      Let’s call it Exhibit 90,392 in our broken patent system. Of course there’s probably ten thousand other equally vacuous “bad file detection” processes patented out there, each filled to the brim with the kind of desperate scrivening that only a real “expert” can bring to the table.

      It seems a fair question to ask why hundreds of thousands of “use rules!” patent claims were not larded on top of every other technological (and non technological!) sector in the history of our patent system. After all, rules have always been important and it’s pretty easy to rewrite the old ones using fancy new words.

      Eggs are popular. Let’s sort the good ones from the bad “using rules based on aspects falling into a pretedermined class”. Then I’ll sue the egg industry. Rinse. Bananas are popular too. Recycle. Now I’m going to sue the banana industry. Rinse. Microwaves are popular. Recycle. Now I’m going to sue all the microwave manufactures. Rinse. Audio CDs are popular. Recycle. Now I’m going to sue all the audio CD manufacturers. Repeat, ad nauseum.

      1. MM, without looking at it more deeply, I think the novelty here had to be in extracting a bite sequence from the binary of a type dictated by the resource “referenced” by the executable.

        But, it seems, resource was not defined and indefinite. I don’t even know what it means.

          1. Malcolm’s magic “sniff” does not need to bother with how a Person Having Ordinary Skill In The Art would understand the terms.

            He wants instead to use some other art understanding of the terms, and then wonder why no one understands these things like he does.

            After all, software is not “real,” and all changes to [Old Box] are merely “magic” in Malcolm’s odd little “reality.”

            After all, three resistors in parallel “really” are the same as three resistors in series to Malcolm…

  14. Dennis, take 101 up, but only to remand to the district court, I think. Are the claim invalid on their face?

    Regarding unspecified rules, is this really a 101 issue? Couldn’t terms like this be construed under 112(f) to cover the rules described? If there are no rules described, then the claim is indefinite?

  15. using a set of classification rules (not defined by the claim) to predict whether the byte sequence is malicious

    Maybe the POWERFUL COMPUTER BRAIN determines that the byte sequence is “anomalous”. That seems to be a popular term among the highly sophisticated people who “innovate” these “detect bad stuff” methods.

    As for this:

    the NPE known as Columbia University

    It’s interesting that Columbia didn’t even use this important and revolutionary method to protect their own computer systems from malware. Maybe they used the other revolutionary and important method where you look at the incoming file and you compare it to a list of known bad files.

    1. >>Maybe the POWERFUL COMPUTER BRAIN

      Is that ridiculed “powerful computer brain” the same one that can drive now and play chess better than humans? The one that is the foundation of the modern society? The one that our age is named after, the information age? The one that will likely replace paid bloggers in the next 10 years? That one?

      So, your argument comes down to that you know what the delta of an invention for information processing should be and not the inventors. Sounds like a Disney movie and not the real world that real patent attorneys like me work in.

      1. Malcolm’s tired and trite short script has nothing to do with real world innovation.

        Quite in fact, his dichotomy with being against the form of innovation most accessible to all – but constantly writing as if some conspiracy of one percenters are driving the recognition of this form of innovation – has never been explained.

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