Cox Communications v. Sprint (Fed. Cir. 2016)
The district court found all of Sprint’s asserted claims invalid as indefinite under 35 U.S.C. § 112, ¶ 2. The term “processing system” was common to the claims of all six asserted patents, and the lower court found it “functionally” described and claimed in a manner that did not provide the reasonable certainty of claim scope required under Nautilus. U.S. Patent Nos. 6,452,932; 6,463,052; 6,633,561; 7,286,561; 6,298,064; and 6,473,429. On appeal, the Federal Circuit has reversed.
Section 112, ¶ 2 requires claims “particularly pointing out and distinctly claiming” the invention and is seen as the textual source of the definiteness requirement. In Nautilus, the Supreme Court held that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
More Definiteness Leeway For Terms Outside the Point of Novelty: In thinking through its analysis, the Federal Circuit started with an interesting issue: Point of Novelty. The appellate panel noted that the claimed “processing system” was did not provide newness to the claim but was “merely the locus at which the steps are being performed.” To drive this point home, the court walks through a representative set of claims to show how “processing system” does almost no work in the claims.
Of course, “point of novelty” analysis has a history in indefiniteness cases – most famously in the pre-1952 Supreme Court cases of Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) and Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938) that heightened the definiteness burden at the point of novelty. Those cases particularly on functional claim language:
The vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.
Gen Elec. I’ll note here that the Federal Circuit’s Sprint opinion does not cite to either of these older cases. The court does, however, refer to the Post Nautilus decision in Eidos Display, LLC v. AU Optronics Corp., 779 F.3d 1360 (Fed. Cir. 2015). In that case, the court found the term “contact hole” sufficiently definite since the specification referred to well-established practice in the industry and the limitation was not itself offering a point of novelty.
Coming back to Sprint’s claims, the court writes
If “processing system” does not discernably alter the scope of the claims, it is difficult to see how this term would prevent the claims … from serving their notice function under § 112, ¶ 2.
Here, the court notes that the indefiniteness test focuses on each “claim” not “claim terms” themselves. And, although we have a common practice of focusing on individual terms — that approach is merely a helpful tool.
Particularly focusing on the functional nature of the “processing system” claim term – the court first held that functional claim language is permissible and at times quite helpful in providing definite scope limits.
As Nautilus instructs, the dispositive question in an indefiniteness inquiry is whether the “claims,” not particular claim terms, “read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
The Sprint majority opinion here was authored by Judge Prost and joined by Judge Bryson. Judge Newman wrote a concurring opinion, protesting the majority’s approach to determining the term’s importance by removing the challenged term from the claim and then determining whether the removal changes the claim meaning.
The terminological usage is probably not relevant to this patent except historically, but before 1983, AT&T Bell Labs & Western Electric documentation tended to avoid terms like computer and computing system because AT&T was legally barred from the computer business. Processing system was generally the recommended term because typically program executing electronics could not do floating point calculations and integer calculations if available were highly limited.
This is a little bit of a messy decision (with both the majority and the concurrence being partially right and partially off), but the biggest “losers” from this decision are the typical anti’s here of Random and Ned.
How so? This case seems to confirm that the point of novelty has a higher standard for definiteness. The subject matter being challenged was clearly old in the art. It was correctly decided – you can refer to old subject matter by function.
“[Y]ou can refer to old subject matter by function.”
Two questions:
1) When combining two things that are “old,” such that the only novelty is in the combination, can the whole claim can in essence be functional?
2) When claiming an “old” element as functional, does such an element in a given claim encompass later-developed ways of performing that function in that context?
1) When combining two things that are “old,” such that the only novelty is in the combination, can the whole claim can in essence be functional?
No, but it’s not clear whether it would be under 103 or 112a depending on context. For example, if the claim is just a simple aggregation of two function-producing things (i.e. “I claim a system comprising: [thing for function A] [thing for function B]”) then it’s rejected under 103. If it’s not a mere aggregation (for example, it was previously impossible to combine the two functions) then the claim is missing a necessary claim element and fails under 112a.
2) When claiming an “old” element as functional, does such an element in a given claim encompass later-developed ways of performing that function in that context?
Generally yes, but not if substituting the later-developed ways are non-equivalent within the context of the claim. It’s not sufficient for them to achieve the same functional result, they also have to produce an output which functions similiarly within the context of the rest of the claim. A notable example of this is when the applicant posits using, for example, a nail to combine two elements. Using functional language such that the claim encompasses a later developed glue would be okay, unless the glued member would later be unenabling for a later part of the claim which dunks the members in water.
Remember – one can only depart from particular language to the extent one posits a generic invention. If it turns out not all things which cause a generic sub-result lead to an ultimately enabled invention, it shows that the inventor did not possess the generic invention, he only possessed a specific invention that used his particular element for achieving the function.
Thanks – I think I agree with most of what you said here, except this:
“…if the claim is just a simple aggregation of two function-producing things (i.e. “I claim a system comprising: [thing for function A] [thing for function B]”) then it’s rejected under 103.”
I believe you’ve suggested before that you view 103 as largely a “predictability” test, which I think I disagree with because most cases seem to require a “motivation to combine” (and predictability is only one factor in that determination).
His “predictability” meme suffers the serious fault of leading to patents in only two instances: Flash of Genius, and pure “Oops” serindipity, “by accident.
The first was expressly rejected by Congress, and the second, while allowable, do very little for any actual “promotion” (in the advancement sense of the word – and not touching the other patent sense of “spread the word” or the “advertising” sense).
Clearly, his views simply are not enough (and not good enough).
I believe you’ve suggested before that you view 103 as largely a “predictability” test, which I think I disagree with because most cases seem to require a “motivation to combine” (and predictability is only one factor in that determination).
What KSR said is that to meet 103 you need *a rationale as to why it is obvious.* A generic motivation is the “catch all” reasoning, but the court identified a handful of rationales beyond the catch all motivation. The most common one (at least in the mechanical and electrical arts) is arranging known elements for their conventional use.
It’s an important distinction. For example, I wouldn’t expect to find a machine that we call a toaster (as that is what it so commonly does) inside of a small car. But if you put a toaster inside of a car and it makes toast (the same way it does anywhere else) I don’t know how you’d call that anything but obvious. I don’t need to come up with some reason as to why I want a toaster inside of a car – It has a known use, the use was already dedicated to the public, and the use has not changed. If you put the toaster inside of a car and activating it causes milk to come out, well then you have new information that the public might want to reward you for sharing. But what the public (and most explicitly Congress under the patent power) can’t reward you for is doing something that does not promote the arts – for re-telling the public what it already knows.
Both Anderson’s Black Rock and Sakraida have explicitly stated the above logic. ABR even had testimony that said “We don’t expect that adding the radiant heater will do anything more than using a radiant heater separately” i.e. there was no motivation to combine. Rather than accepting that as a reason it was non-obvious, the court cited that as a reason it was obvious – the machines were simply doing the same in concert they were doing independently.
Contrary to what anon says, this does not limit invention to “flash of genius.” All it requires is that the combination must be more than the sum of its parts – there must either be a synergistic effect greater than the sum or there must be a wholly unexpected effect. What there cannot be is the same effect that already existed – that’s simply an attempt to repatent something which has already been purchased by the public by claiming only a fraction of its use.
There are exceptions around the margins (the most common one being that the function of the machine is known but the machine is not known to the art, i.e. a non-analogous art argument) but by-and-large the rule is ironclad – If element A does X, and B does Y and C does Z, each individually, then a claim directed to ABC which yields XYZ is obvious. To hold otherwise would be to re-patent the dedicated-to-the-public functionality of X simply because elements B and C happen to be in the vicinity (and similarly with the other elements). A causing X was already dedicated to the public. See ABR.
I suppose another way to say it would be to say that the correctly-predicted effect of using a machine is always a motivation for using the machine. So in my toaster example, it would be motivating to combine the toaster with the car because the toaster is known to make toast, and one may desire toast while driving. But that’s just taking an always-applicable step from Sakraida/ABR to fit the context to your demand for a motivation. i.e. I suppose if you wanted to say that MPEP 2143(g) is the only way of rejecting something as obvious, you would simply state the rationales of MPEP 2143 (a-f) as motivations under (g). That would satisfy you, but it would be technically wrong, because the reason (g) is *option* (g) is because (a-f) on their own are each legally sufficient.
Lol – that “correctly predicted” leaves behind the dual Flash or Oops that I stated.
“…arranging known elements for their conventional use.”
I think the key here may come down to what gets to be considered a “non-conventional” use. In your example of a toaster in a car (presuming it’s just because one might happen to want to make toast while in a car…), I think your approach makes sense. This may be a reason why TSM can’t be the whole story.
But taken as a blanket rule, I think it would unfairly wipe out a lot of *simple* yet nevertheless *clever* inventions. Sometimes it’s a matter of being the first to actually recognize that a particular combination/modification – predictable though it may seem once suggested – can in fact solve a given problem, such that we all slap our foreheads and say “doh, why didn’t we think to do that sooner!” Other times it may be a matter of recognizing the problem in the first place. Perhaps you allow for some of this in what you called “exceptions around the margins” (and I agree that non-analogous art is another such area…).
Nice comment Ken. (no snark, if you are wondering)
KSR has to be one of the worst decisions by the Supreme Court outside of Alice. Ever wonder why no US patent says anything about the prior art AT ALL? Thank you, KSR. Ever wonder why it’s impossible to beat a 103 rejection, even based on references no one skilled in the art would combine in a million years? Thank you, KSR. Ever wonder why Examiners can perform a word search and combine references based on thin air and it’ll stick? Thank you, KSR.
If you’re frustrated with KSR, you should blame the drafters of the 1952 act for their vague “obviousness” criteria.
?? Put the blame where it belongs – on the writers of the KSR decision.
The Court was scrivining when it should have been finding “Void for Vagueness.
PatentBob, it is not so much KSR, but the PTAB that abuses KSR.
Then there is the burden of proof issue — who has to prove that two references combined do the same, expected work of the two references in isolation. The allegation is simply made, not proved.
What exactly do you think is the “abuse” of KSR, Ned?
(no snark – I don’t know what you think is being abused)
The way I see it, anon, is that the PTAB has become an advocate – basically an examiner – on the side of the petitioner. They believe that they, in that role, can make a rejection without supporting it with evidence, and then force the patent owner to rebut it with evidence. In other words, they can say in their institution decision that the combination of references perform the same work, etc., in the combination as it did separately and that as such the claim combination is legally obvious without actually having to prove, or have the petitioner proof, that in fact the combination performs the same work as the prior art elements do separately.
The PTAB also does not seem to require any proof of motivation to combine the references other than that the references are in the same field and their combination reduce costs or something else. In other words the PTAB and the petitioner both using hindsight to reconstruct the invention from the patent, and then declaring the patent obvious without any proof whatsoever.
Now some would say that the Federal Circuit jurisprudence in this area is different in that they require more of the PTAB. Yes they do. But, trust me, there are a large number cases were effectively the patent owner has to prove patentability based upon mere allegations without proof almost as if he were back in ex parte examination.
I see you insert “the institution decision” into your reasoning.
Would it be fair to say that your beef is more with IPR than with KSR itself?
This (once again) returns us to that initiation point – and what happens to the bundle of sticks that make up the patent property.
As I see it, you are (once again) complaining about something, and yet still do not see that what you are complaining about ties directly to a taking at the intitiation point. A taking that lowers value, is provided NO remuneration, is not appealable, and places the (reduced) property in the hands of a (political) body aiming to revoke (perhaps selectively) patents.
I really think that YOU need to think about what is happening AT the initiation point (no matter what else happens once your property is back in the Office).
Random,
Were you not the one that presented the MPEP section that allows the use of mere “aggregations”…?
That would directly contradict what you are saying here.
The MPEP says that rejections on the grounds of aggregation are disallowed, not that aggregations are allowable.
Thanks Ben – and what do you think is the difference? (Why is the notion of “disallowed” there, if Random’s statement above applies – which collapses ANY difference that you might think may exist).
No snark here – you are just attempting a distinction that has no difference.
and what do you think is the difference?
Because it doesn’t give notice to respond to say it is an aggregation – it isn’t clear if the argument is that it fails 103 or that it fails 112b or (now, though this generally wasn’t true at the time the MPEP section was written) whether it fails 101.
Again – a distinction without a difference.
Think guys: the part about allowing aggregations means that Random’s statement of “just 103” cannot be correct, else the MPEP would not leave the “ok to have aggregation” in there on its own.
It’s just saying you have to reject aggregation under a statute, you can’t say claims are rejected “because of aggregation” with no statutory basis.
Where does the MPEP explicitly say “it is ok to have aggregation” wrt 35 usc 103?
Only other thing about aggregation is claims are *not necessarily* indefinite because they have a combination without describing how they are interrelated.
You are missing the point, patent cat.
If Random is correct, then the MPEP is not correct.
You don’t say “ok under 112” IF for all cases, aggregation is ALWAYS NOT OK under 103.
The MPEP would be written differently, with at least a “but nonetheless aggregations are not allowed. See 103.”
Likewise, ksr says just because prior art refs can be combined does not render the combination obvious *unless the results would have been predictable to one of ordinary skill in the art*.
So basically, what RG said, but with the caveat that you establish predictable and reasonable expectation o’ success.
Except that’s exactly what ksr says.
Paraphrased, aggregations are obvious unless combo is not predictable/expected to succeed.
That’s not what KSR says, patent cat (you’ve turned a “may” into a “must.”)
Random,
Your “possess10n” position is thoroughly pan ned on the prior thread (the one I noted your rather consp1cu0s absence from).
Random,
Your “enablement versus obvious” zeitgeist is taking a beating.
Neither enablement nor obviousness are part of this decision.
..and yet, elsewhere in this thread you are discussing them….
My oh my.
😉
If i’m discussing it somewhere its because that is where the discussion has gone. More than anyone except maybe MM, you should know how someone can discuss something completely off topic.
Um sure, let’s go with that.
😉
Anon, you are simply remarkable. When the court is finally getting it, and going the way I have been arguing it should go for years, you are saying this decision is a loss for my position?
Remarkable.
This decision IS a loss for your position Ned, as this does NOT align with your Windmill curse-ades.
Maybe you will listen to what I say below at 2.1.2.1…
“Dear Colleagues,
In our production-based system at the USPTO, allotted examination time is a critical aspect of our day-to-day operations as well as our overall mission. The last comprehensive assignment of expectancies for examination time was over 40 years ago. Since that time, significant changes to the examination process have occurred, including increased use of electronic tools, changes in interpretation of law due to court decisions, a growing volume of prior art, and an increase in the complexity of application subject matter. In consideration of these factors and in support of our Enhanced Patent Quality Initiative (EPQI), I am pleased to announce a new effort to evaluate examination time goals.
A joint committee of management and POPA representatives is working together to conduct a comprehensive analysis of examination time and, based on the results of the analysis, identify possible changes. The intent of the overall effort is to enable the organization to understand all impacts and make an informed, transparent decision about the future of examination time.
As professionals working within the boundaries of examination time every day, you are our greatest resource for providing valuable input to this effort. All examiners and SPEs will have the opportunity to complete a comprehensive survey in early November. Prior to the survey, a random sample of examiners will be invited to participate in focus group sessions to support the development of a fully representative survey.
I encourage you to take advantage of this opportunity. Your participation is critical to the success of this effort.”
Mgmt.
Finally.
Lol – you are welcome 6.
“As professionals working within the boundaries of examination time every day, you are our greatest resource for providing valuable input to this effort.”
So…
Will the “professional” AS REPORTED time be used, or will (80% ?) UNprofessional UNderreported time of the lower “tail” of the normal distribution curve (finally) see “transperancy” and help move (as I have so often advocated) “examination time” to reflect ACTUAL examination time?
I don’t know what all you’re specifically talking about, and the words you used to express yourself are a bit confusing, but I did see Ron K’s stats over on IP. So maybe you’re talking about that? Anyway, yes I think the last part of your statement about examination time actually reflecting actual examination time is somewhat the goal here.
I also don’t know why you’re telling me that I’m welcome, I’m the one that specifically told the popa pres. to start beating them over the head with good gov./transparency to make them use an actual evidence based estimation of the avg time rather than a hearsay guesstimate from the 70’s (not but a few weeks ago). And I was about to start making noise about them not negotiating in good faith with the union because they were aware of material facts that were not consonant with the facts they were putting forth during negotiation. Though to be clear, I’m sure the avg times in some arts are probably fine atm.
“ I’m the one that specifically told the popa pres. to start beating them over the head with good gov./transparency to make them use an actual evidence based estimation of the avg time rather than a hearsay guesstimate from the 70’s (not but a few weeks ago).”
LOL – I am the one that told YOU to do that.
And have done so for years now.
Oh right, and I do these things because you told me to /boggle.
LOL – what else can I think? At the time you posted against what I told you (including your typical ad hominem of “meds”), and now you have switched your mind.
Again.
Hey, I “get” the fact that you don’t want to say that I was right, but, you know, I was right.
So, you are welcome.
“LOL – what else can I think?”
You can think that everyone that works at the PTO, me included have always known, way previous to even talking to you that POPA was whom mgmt had to bargain with ta rd breath.
Except for the fact that you are now “thinking” exactly as I previously suggested and which you refused to believe in.
You ridiculed my post with your typical empty ad hominem and now, you state what I had already told you to do.
You are not going to be able to talk your way out of the problem you talked yourself into.
Face it: I was right when you said I was wrong and now you have merely come around and agree with what I have told you for years.
Again.
So, you are welcome.
“You ridiculed my post with your typical empty ad hominem”
Yes, because popa, by itself, without my divine intervention is still rather useless on the topic. And it still will be after this incident.
Lol – without your input?
Tar D:
It was me telling you to “give your input.”
…and yes, you are welcome.
(and it was you whining that YOU giving YOUR input was a waste of time – now you are crowing the opposite, which just happens to be exactly what I told you to do)
You are welcome.
Yeah, saw this when I started this morning…sounds like they might actually do something to give us the time we need to do our job at a level of quality that our paying customers expect and deserve.
Or maybe it’s just lip-service to OIG findings and recommendations so management can say the last time they took a look at examination time was 2016 instead of 1970-something. I guess we’ll see.
Yeah I dunno what you’re excited about. They’re going to find that technology has made it easier to do our jobs but that the law has become more complex and that there is more art to search and they’re going to call it a wash and make no real changes at all. This is hoop-jumping.
Then I’m taking over as POPA head next year and filing a lawlsuit on its behalf.
Nearly anon level bluster.
Ben,
Your “feelings” are getting in the way again.
When have I ever blustered about taking anything over personally?
You really need to drop your preoccupation with me. Just because I show you up does not mean that you have to seek retribution with made-up fantasies and odd concoctions.
It isn’t that hard to run for popa office brah.
And yet, “brah,” your past responses to me ran along the lines that the POPA avenue was completely useless…
Gee, I wonder why you changed your mind…
“that the POPA avenue was completely useless”
It was and still is without me or someone competent there to run the show. Observe how quickly something happens when I send the POPA pres explicit instructions on how to achieve something. This is like the 3rd time something happens very quickly on a front I mail them specific instructions on how to proceed with that had been deadlocked for years prior.
Obviously POPA in the right hands wouldn’t be so worthless, but that requires someone like myself to go and take it over. Who has time for that sht? My hat is off to Mr. Budens (sp?) and his predecessor for taking the time out of their day to even do it.
Lol – nice dancing.
I was – and still am – right.
Even if you cannot bring yourself to admit it.
You are welcome.
“nice dancing”
In other words anon doesn’t know his arse from his elbow.
lol – nope, you are just dancing.
Does it sting that bad to realize how right I have been on this topic all along?
This is actually responsive to the GAO quality reports rather than the OIG report. The GAO specifically called out the ancient expectancies as a quality issue.
There will be no real assessment. And the process will be as transparant as asphalt. At best there will be a tiny across the board increase in time that management uses to wash its hands of the issue without fixing anything.
6,
I presume that you have seen this:
link to observer.com
This one even includes the statement that Obama was using “sockpuppets”
link to pjmedia.com
I did hear about the sockpuppet thing also, but hadn’t seen the specifics just yet. Again, none of this nonsense surprises me at all.
I had heard about it but I hadn’t read the specifics yet. None of these “leaks” surprise me anymore. The DNC is obviously one of the most corrupt and ridiculous organizations on the face of the planet. All in the name of, you know, fighting “evil” society (you know, the people paying the bills, and esp white males).
6, it is always struck me how the Democrat party with its “talking points” and central organization resembles the Jacobin club of France that ran the reign of terror. link to britannica.com The Jacobin club at that time was composed of radical leftists. The central committee, the Parisian Club, made decisions and those decisions were communicated through “talking points” that were disseminated throughout France to the thousands of other clubs throughout the land. The Parisian Club also controlled the Committee of Public Safety, which was the real power during the Reign of Terror.
There is, I think, a small group actually controlling the Democratic Party. Clearly Obama and the Clintons are part of that small group. Another might be George Soros. Very Jacobin.
I don’t know about it being all that small. I’d say the top tier group is nearly surely at least 50 people. Though yes, in most orgs like this they usually have top dogs in the org.