Does the Piracy Paradox apply for Patents?

A 2006 paper by Kal Raustiala (UCLA) and Chris Sprigman (UVA) titled the Piracy Paradox discusses intellectual property and the fashion industry. The authors conclude that the legal ability of manufacturers to create knock-off versions of fashion designs actually promotes innovation and investment in that industry. Similar phenomena have been explained in other industries. In music, for instance, some studies have shown that peer-to-peer file sharing of copyrighted work actually increases sales because of the increased popularity of the artist. Since the dawn of radio, record companies have paid stations to broadcast their music – even though the broadcast would be considered infringement.

My question is whether there are patent specific examples of this process going on? Are there times when ‘piracy’ of a technology actually encourages further R&D?

102 thoughts on “Does the Piracy Paradox apply for Patents?

  1. 102

    “Are there times when ‘piracy’ of a technology actually encourages further R&D? ”

    Pretty much *all* of software works this way *all* the time. Business methods too.

    The key feature here is that patent protection does not act as an incentive to creation of inventions, or publication of them, at all, in either field. So it’s not even like the fashion industry, where uniqueness is inherently valuable.

    In fact, patents usually suppress innovation. Some rather careful economic studies showed, for quite a lot of fields, no examples where they could be shown to have helped, and for several fields, strong evidence that they hurt.

    The theoretical best fields for patents are ones where R&D is *very expensive* but reproducing an already-discovered thing is *very cheap*. Software and business methods fail because R&D is very cheap, verging on the cost-free. Trains and airplanes fail (though less so) because reproducing an already-discovered thing is quite expensive. Pharmaceuticals are the only area where patents were shown to have an actual benefit: R&D is fiendishly expensive, but reproducing existing drugs is extremely cheap.

  2. 101

    The original RSA patent didn’t have any non-super-computer embodiments until Phil Zimmerman infringed on his PC.

    Interestingly, Zimmerman refused to seek patent protection for his inventions, essentially handing all the rents over to RSA.

    I’m sure there are other takes, but that’s been mine. Once upon a time, I examined crypto at the PTO.

    DCC

  3. 99

    Interesting ploy AllSeeingEye/Mooney, accusing me of doing exactly what you’re doing. Clever, yes, but your multiple aliases aren’t fooling anyone.

  4. 98

    duckworth (aka Mooney (who everyone knows is NOT AllSeeingEye))

    Anyone who tries to defend the French automotive industry needs no help in making a fool of themselves. Making more crap per capita does not change the bad smell.

    Mooney/duckworth/whoeverelse (not to be confused with AllSeeingEye)

    Why don’t you go back to your own crappy little website that nobody reads. Oh wait, I think I know the answer to that question.

  5. 97

    Nice attempted smokescreen duckworth/Mooney. Anybody who reads this boards knows that I am not Mooney, but you surely are – along with your other annoying personas. You are an obfuscating little ba$stard
    aren’t you?

    But I do appreciate and understand why you would want to try to co-opt my brand. Because you don’t know what you’re talking about.

  6. 95

    Awww, poor big guy, still qqing over his software now that his ridiculous arguments about distinguishing in terms of structure, or the function of that structure are now gone. Now all that’s left to him is flaming. Too bad really, he almost managed to show what should be the basics of a very popular type of claim.

  7. 94

    “LOL. Don’t worry, random. Keep up your needling on software claims and you’ll soon find the Terrible Two calling you an idixt, a fraud, and maybe (if you’re lucky) the worst insult of all: a “socialist”! OOooooooo, scary!”

    But he’s still an id10t.

  8. 93

    random “Oh and also, can you an MM stop your flame/counter flame for awhile already? It’s becoming tiresome.”

    LOL. Don’t worry, random. Keep up your needling on software claims and you’ll soon find the Terrible Two calling you an idixt, a fraud, and maybe (if you’re lucky) the worst insult of all: a “socialist”! OOooooooo, scary!

  9. 92

    Oh and also, can you an MM stop your flame/counter flame for awhile already? It’s becoming tiresome.

  10. 91

    The above post was not done when I accidentally hit “post” on this laptop.

    “If you did attempt to describe the dips in terms of their functionality you will end up with only one claim.”

    Should be followed by:

    Dips on a cd comprising:
    raised portions for indicating a 1, recessed portions for indicating a 0, and pluralities of raised/recessed portions for storing strings of 1’s and 0’s.

    That is the only, I repeat, the only functionality of the dips on a cd.

    Then we see that indeed what is occuring in a beauregard is that you have defined the functionality of the dips in terms of the functionality of the information stored thereby which is not defining purely in terms of the functionality of the dips which, so far as I am aware, is the only type of functional limitation allowed.

    Also, I do not concede that your example about a phillips head is completely analogous because you said that the head is configured to do x. You did not say that the head is configured to turn a screw counter clockwise, wherein turning a screw counter clockwise causes a house to fall down. With “wherein turning a screw counter clockwise causes a house to fall down” being the distinguishing part of the claim. That would be a more analagous claim. And in that instance we run into the same problems of the beauregard. Just because the screwdriver is configured to turn a screw counter clock wise doesn’t open it up to being distinguished by what may occur when you use it for that function. Analogously, just because dips on a cd are configured to store information doesn’t mean you can then distinguish the dips by what that information may be used to do. Or are you a believer in distinguishing in terms of the functionality of the functionality of a thing? Let me remind you that at that point, you are no longer describing the functionality of the thing, but are instead describing the fuctionality of the functionality. So far as I’m aware, you’re not able to do that since you are no longer distinguishing a thing in terms of its functionality and are instead distinguishing a thing in terms of its functionality’s functionality.

  11. 90

    pds I’m pretty sure I explained above that I was a bit drunk at the time of my last reply and so wasn’t going to reply anymore for the time being. And, as to your assertation that I did not respond to your arguments I should first note that I do not even see an “argument” having been made by you. I see an example and I see some text describing your position, but no argument.

    “It is the same as the limitations that were discussing with regard to a computer readable medium. It is a limitation, couched as a method/function, which results in defining a structure.

    Personally, I don’t care what you call the limitation, but in the end, it is capable of defining a structural aspect of either a device or product.

    That appears to be your opinion, not an argument. However, I will address your opinion which appears to be the real basis of the whole argument for proper patentability of the beauregard.

    Now, let us turn to see, if, indeed your opinion is a correct statement. I would say that indeed, this is a correct statement, but, it is a misdirecting statement. The product, must be defined in terms of the functionality of its structure (if you choose to go the functionality route). As stated above, the functionality of the dips on any cd in existence is merely to store information. It has not ever been, nor ever will be, to cause a computer to perform the method steps: find x, find y, compare x to y. You cannot show me a cd which will cause a computer to perform such a method. You will however be able to show me information on the cd’s which functions to cause a computer to do those things. An artful misdirect to be sure, saying that you are defining the dips on a cd in terms of their functionality when indeed you are not. You have thus attempted to distinguish a product in terms of the functionality of information, not based on the functionality of its own structure. If you did attempt to describe the dips in terms of their functionality you will end up with only one claim.

    Although I am not making the printed matter argument, a book example might suffice to show what I am talking about.

    A medical reference book that shows dosages of drugs to be administered. When you go to claim it, should you want to distinguish it in terms not of the actual functionality of the words (ink structure?) of the book you would claim it thus:

    A book comprising words which, when read by a human, cause the human to administer correct amounts of drugs.

    Besides making the prined matter argument to a book claim, you can also see that here we have again attempted to distinguish the structure of the words in terms of the functionality of a human, rather than in terms of the functionality of the words themselves. You cannot show me a book which is capable of administering the correct amounts of drugs. Nor can you show me a book that “causes” a human to administer a certain amount of drugs. The words merely transfer information to a human who then uses the information to perform a function. Analogously, the same is true for the cd dips portraying information to be read by a computer which can then be directed by a user to(or configured to automatically) process said information in a specific way.

    I should add that if you are taking the outrageous position that it is the functionality of a dip or series of dips on a cd to store specific information that will lead to a specific result you are sorely mistaken. A series of dips on a cd stores nothing more than generic information either the dip is low or doesn’t exist. The only “functionality” of the dips is to portray a 0 or a 1 (or if your system is advanced you could store 0, .5, 1, etc)

    “You’ve now abandoned that logic because computer readable medium claims are only directed to the product.”

    Actually, no, I stick with my original logic in the case of a claim that fits the form:

    “Claim 1. A computer readable medium … with instructions that when read by a computer cause the computer to perform a method, the method comprising: find x, find y, compare x and y. ”

    Because “information” is not “dips on a cd” or any other structure. You have distinguished a non-structural limitation (information) in terms of method steps since you didn’t even specify that supposedly the method steps are to be the functionality of a structure.

    And then I have been addressing whether your supposed definition of a structural limitation by any sort of supposed functionality of that structure has been accomplished so as to see if you might by clever drafting circumvent my argument about distinguishing in terms of method steps. I do not see that it has.

  12. 89

    “They’d want to claim all the possible variations of those dips but they can’t but they aren’t in possession of them, nor are they even close to possessing a tiny fraction of them.”

    With many software-related ideas, a flowchart can fully enable one of ordinary skill in the art to make and use the idea. So I have no problem granting an exclusive right that is commesurate with the scope to which the process has been enabled.

    Nevertheless, it’s pretty clear that the software patent bubble has burst. The courts have recently been guarding overclaiming software processes with respect to enablement. Moreover, In re Bilski will soon issue and may signficantly change the landscape. And let’s not forget the USPTO has no qualms about rejecting software claims by combining any software reference with any other software reference without any theory of analogous arts. (It’s as ab$urd as saying all mechanical devices are analogous, but yet they do it routinely.) Like with the housing bubble of today or the tech bubble of the late nineties, it’s hard to say this software-patent-bubble bursting wasn’t deserved.

  13. 88

    “”pds will tell you that the reason this isn’t the case for software is that because enabling the full of scope of the invention is so easy anybody could do it.”

    Hardly …”

    No, literally. Or did you forget? Or are you lying again? I’m happy to link you to your own comment. Let me know if I need to link you to your own comment. The alternative would be admitting you’re a self-contradicting wanker.

    The decision is yours. You “forgot” or you are full of it. Which is it?

  14. 87

    “There is no bigger crybaby on this board than you MM.”

    False. There are at least two: pds and SmallPeeingGuy, who routinely post not one but typically two substanceless responses to my comments. Check the archives if you’re confused.

  15. 86

    “Because a lot of people would cry if it was any other way.”

    There is no bigger crybaby on this board than you MM. Just mention “software” and you come running with your crocodile tears streaming down your cheeks. Regardless, all that needs to be known is that I, and many others, are getting allowances on these claims every month of the year, and none of your QQing is going to prevent that. Not only will that be true 20 years from now, but the percentage of patents directed to software, as a whole, will probably be much greater then than it is now.

    Cry all you want, but there is nothing you can do to stop it.

  16. 85

    “Instead, they elect to define their claim in a manner which is inappropriate (method steps) in order to skirt the statutory block on them getting a pure software claim.”

    6K … errr, I mean ‘Meeting’ … when you make it to the BPAI or the Federal Circuit with those arguments, come talk to us.

    In the mean time, I’ll point to the tens of thousands of issued US patents, which support my point of view. BTW: I see that you ignored the arguments I made … granted, I’m used to examiners ignoring the arguments I make that they know they cannot respond to. Doesn’t it make you feel emasculated when you know that you don’t have a good response to my arguments?

    BTW — remember you started this argument by citing Ex parte Lyell. The preamble of which recites: “An automatic transmission tool in the form of a workstand and method for using same comprising.” The court found that the claim was directed to both a device (i.e., the tool) and the method (i.e., “method for using same”).

    You’ve now abandoned that logic because computer readable medium claims are only directed to the product. The rest of your arguments rest on an assertion that knocks out far more than just computer readable medium claims and isn’t supportd by the MPEP section I cited.

    JD was right … you really aren’t ready for your second semester of law school.

  17. 84

    “pds will tell you that the reason this isn’t the case for software is that because enabling the full of scope of the invention is so easy anybody could do it.”

    Hardly … I imagine that your secretary has to turn on your computer in the morning before you can access the internet. Your ignorance as to anything related to computers is astounding. Let me guess, you and John McCain are attending classes with the “Video Professor.”

    “What a joke. Is there any limitation that can not be described in that way?”
    So, what is your point? Oh, I forgot, you try not to make points … you are just trolling.

    “But why aren’t these garbage patents obvious then?”
    Uhhh … because ease of enablement is not grounds for denying a patent. Hey, in MM-world, you can invalidate your patents for any reason, but in the real-word, you are just going to have to stick with 101, 102, 103, and unfortunately for your QQ-ing ways, ease of enablement doesn’t cut it.

    You are just a windup doll when it comes to software patents.

    Just windup MM and here is what you get:

    “Waah … waah … software is unpatentable.”
    “Waah … waah … all software is obvious.”
    “Waah … waah … all software does is repeat on a computer what is done in non-computers.”
    “Waah … waah … I’ve got nothing better to do than cry my little eyes out.”

    God … get a life.

  18. 83

    “Sure you could claim 650 bytes of data arranged in the fashion of 10010011 repeated x times represented as dips in a cd, but no applicant would ever choose to define his claim thus”

    That’s right. They’d want to claim all the possible variations of those dips but they can’t but they aren’t in possession of them, nor are they even close to possessing a tiny fraction of them. They haven’t even conceived of a tiny fraction of the variations that would achieve the claimed functionality.

    And yet they get it all. Why? Because a lot of people would cry if it was any other way.

    Heck, they get warped into incessantly yapping puppies just by hearing others *talk* about the possibility that their claims are doodoo. You know who I’m talking about.

  19. 80

    “No matter what else, this admission makes the case for BigGuy. The requirement is for differentiation by structure”

    It would, except for one tiny thing. The applicant willfully chooses to define the claim in terms of method steps. Whether or not the two items are different in terms of structure is not in question. The issue which is in question is whether the claim format is proper. Sure you could claim 650 bytes of data arranged in the fashion of 10010011 repeated x times represented as dips in a cd, but no applicant would ever choose to define his claim thus. Instead, they elect to define their claim in a manner which is inappropriate (method steps) in order to skirt the statutory block on them getting a pure software claim. Sorry, you chose the inappropriate path, not me.

    Also, I am now lit, so I won’t be able to talk for a bit.

  20. 79

    pds “It is a limitation, couched as a method/function, which results in defining a structure.”

    What a joke. Is there any limitation that can not be described in that way?

    In the world of serious patents that aren’t written on toilet paper, the case law is very clear that such functional claiming raises serious written description and enablement issues. pds will tell you that the reason this isn’t the case for software is that because enabling the full of scope of the invention is so easy anybody could do it.

    But why aren’t these garbage patents obvious then? Mumble mumble mumble impermissble hindsight wah wah wah!!!!!!!

    It’s just a joke. But the party will be ending soon.

  21. 77

    what is the name of the case which discussed citing Office Actions in related application in IDS’s?

  22. 75

    Meeting:

    Correct me if I’m wrong, but I think your question is (assuming that the diskette is useful) to what extent can its instructions be relied upon for 102/103. I think a key fact is that the diskette contributes at least in some substantial way to the novel, nonobvious and useful functionality. Without the diskette be configured in a novel and nonobvious manner, the computer wouldn’t have the novel, nonobvious and useful functionality. In that sense, I believe you can rely on it for novelty and nonobviousness.

    It would be different if you claimed a client configured to receive a message from a server, the server configured to perform a novel, nonobvious function unrelated to that message. In that case, the function of the server has no nexus with the claimed client. The key is the nexus to novel, nonobvious functionality. The diskette has that nexus.

  23. 74

    We have reviewed the record on this matter and conclude:

    BigGuy: “You don’t think a CD encoded with a copy of Microsoft Word is functionally (and structurally) different than a CD encoded with a copy of Age of Empires?”

    Meeting: “I would say that functionally both of them are identical or distinguishable only by method steps performed by a computer. They both “function” to convey information, or they have no “function” but to sit there, and the only difference in the information they convey are the method steps they cause the computer to perform. Structurally they are both different, but by defining (or distinguishing) the structure by the information coded thereon you are now distinguishing your product’s structure in terms of the information stored thereby, which in turn is being distinguished from other information by method steps. In the end, you are still distinguishing your product by method steps.”

    in pertinent part: “Structurally they are both different,…”

    No matter what else, this admission makes the case for BigGuy. The requirement is for differentiation by structure. It is not for differentiation by any particular mode.

    Simply put, differentiation by structure has been agreed to by both parties. Meeting adjourned.

  24. 73

    “PDS — so do you agree or disagree with:”

    It is the same as the limitations that were discussing with regard to a computer readable medium. It is a limitation, couched as a method/function, which results in defining a structure.

    Personally, I don’t care what you call the limitation, but in the end, it is capable of defining a structural aspect of either a device or product.

  25. 72

    PDS — so do you agree or disagree with:

    “My opinion is that “configured for engaging a cross-shaped recess in a head of a screw” is a STRUCTURAL limitation and should/must be taken into account in a patentability/validity determination.” Thanks

  26. 71

    “If you would like a ‘trip down anti-patent’ lane, you may find it interesting to take a look at the sites Anti-Monopoly and techDirt.”

    I looked at both and there was nothing there that I haven’t seen before.

    The question of R&D and patenting, for me, boils down to who is going to pay for R&D? and what are their motivations for performing R&D?

    There may be some altruistic souls that perform R&D because they enjoy it and it makes them feel good, but those are few and far between. Also, there may be some ignorant souls that don’t realize that their R&D is going to go to waste if they don’t protect it and their competitor is going to be able to capatilize on that mistake.

    Despite these instances in which R&D is performed without protection, most businesses are too “business-oriented” to spend $$$$ dollars on R&D with no expectation of a return on the $$$$ that they spent.

  27. 70

    “My opinion is that ‘configured for engaging a cross-shaped recess in a head of a screw’ is a STRUCTURAL limitation and should/must be taken into account in a patentability/validity determination.”

    Not sure if you are disagreeing/agreeing with either I or Meeting. The “for engaging a cross-shaped recess in a head of a screw” is a functional limitation. However, as recognized by the Courts (and by the USPTO), functional limitaitons are not inherently invalid. As I’ve written on this board not too long ago … “form follows function.”

    My problem with Meeting’s logic (or is it 6K’s logic in disguise?) is that when you take the same logic and apply it to other types of claims, you start knocking out claim language that has long been considered to be acceptable.

  28. 69

    MP3’s are not even CD quality, let alone vinyl quality. I understand the portability and effort-to-music ratio is much lower with MP3s, and I myself have an I-Pod. But the songs are compressed and lack the detail one can hear on a vinyl record with a good needle.

  29. 68

    “My opinion is that ‘configured for engaging a cross-shaped recess in a head of a screw’ is a STRUCTURAL limitation and should/must be taken into account in a patentability/validity determination.”

    Of course it is, just as “encoded with computer program instructions for carrying out a method comprising A, B, and C” is also a STRUCTURAL limitation, despite e6k’s nonsensical babbling.

  30. 67

    pds,

    your hypothetical claim:

    A screwdriver comprising:
    a shaft; and
    a tip configured for engaging a cross-shaped recess in a head of a screw.

    My opinion is that “configured for engaging a cross-shaped recess in a head of a screw” is a STRUCTURAL limitation and should/must be taken into account in a patentability/validity determination.

    I invite other practitioners to state their opinions and case law support on this issue

  31. 66

    “However, take that client out and put them into a system in which the client’s R&D could be immediately copied by a competitor without repercussion, and I have little doubt that the client’s R&D budget will inexorably decrease over time. Most clients are fairly intelligent, particularly as it pertains to business matters — one of which is that unless you can obtain a reasonable return on your investment (whether new/updated equipment, employees, marketing, or R&D), then the investment is a bad investment.”

    If you would like a “trip down anti-patent” lane, you may find it interesting to take a look at the sites Anti-Monopoly and techDirt.

  32. 64

    “I would say that functionally both of them are identical or distinguishable only by method steps performed by a computer. They both ‘function’ to convey information, or they have no ‘function’ but to sit there, and the only difference in the information they convey are the method steps they cause the computer to perform.”

    So your answer is both yes and no? Forget law school, you should become a politician.

    This is an Advisory Action – your after-final response failed to place your argument in condition for allowance.

  33. 63

    MEETING:

    See link to uspto.gov

    Really, this stuff isn’t that complicated. Also, if anybody really believed this argument had a snowball’s chance in he11, the argument would have already been made — since, as I already note, above their have been tens of thousands of opportunities to make this argument.

    However, to give you an example:

    A screwdriver comprising:
    a shaft; and
    a tip configured for engaging a cross-shaped recess in a head of a screw.

    I just claimed a device using your so-called “method step” (i.e., “engaging a cross-shaped recess in a head of a screw”). One having ordinary skill in the art should recognize that what I’ve just described is a phillips-head screwdriver.

    The “for engaging a cross-shaped recess in a head of a screw” is a functional limitation (i.e., defining something by what it does, rather than by what it is).

    Regardless, feel free to make these arguments all you want — just don’t set your expectations too high.

  34. 61

    “You don’t think a CD encoded with a copy of Microsoft Word is functionally (and structurally) different than a CD encoded with a copy of Age of Empires? You’re even more of an idi0t than I thought.”

    I would say that functionally both of them are identical or distinguishable only by method steps performed by a computer. They both “function” to convey information, or they have no “function” but to sit there, and the only difference in the information they convey are the method steps they cause the computer to perform. Structurally they are both different, but by defining (or distinguishing) the structure by the information coded thereon you are now distinguishing your product’s structure in terms of the information stored thereby, which in turn is being distinguished from other information by method steps. In the end, you are still distinguishing your product by method steps.

  35. 60

    HAHAHAHAAHAHA, Big Guy, you’re too funny. Information, a structure. We’ve been over and over this. It never has been, and never will be. For your convience:

    a message received and understood
    knowledge acquired through study or experience or instruction
    formal accusation of a crime
    data: a collection of facts from which conclusions may be drawn; “statistical data”
    (communication theory) a numerical measure of the uncertainty of an outcome; “the signal contained thousands of bits of information”
    wordnet.princeton.edu/perl/webwn

    Or go here:

    link to dictionary.reference.com

    He ck, even the wiki doesn’t support you:

    link to en.wikipedia.org

    You should edit that to include: “I wanna make information mean magnetic storage sites on a floppy, or burnt areas on a cd, and etc… thanks for listening guys dur”

    Although I’ve already “traversed” your idi0t statements I don’t really care anymore as your arguments are more outlandish than my own. Information, a structure. It’s like I have to correct someone everyday on this board with none of them coming back with anything credible to support their “information as a structure” nonsense.

    I’ll play along though, just because you fail double hard. Let’s assume instead of saying “information” they instead say “bumps and dips on a cd” which would obviously be a structural feature of a cd right? Is there anything that distinguishes these bumps from other bumps in the art? Sure there is. STEPS that a computer may perform when it reads those bumps. What’s that? Steps you say? Steps distinguish that bumpy/dippy cd from other bumpy/dippy cd’s? Oh, how your dips fail to distinguish in terms of structure. AND, not only that, let’s presume now that they said bumps on a cd and let’s presume that maybe they’re trying to distinguish in terms of the function of the bumps on a cd. Even that fails because it is clear as day that finding x, finding y, and comparing them is not a function of bumps on a cd. Let’s then presume that you’d like to argue that the function of the bumps is causing the computer to perform a method. However, this clearly is not the case because the dips on a cd clearly do not function to cause a machine to perform a method. I promise you, no dip on any cd will ever cause a machine to perform a method. The only function of any dip (or array of dips) on any cd that has ever been made is to sit there and store information. A dip on a cd will literally never, ever, do anything other than store information. Notice here, the information is stored in a structure or arrangement of structures, it is not the structure itself. Let’s say you want to argue that it is storing a specific piece of information, a piece of information that will cause a computer to perform a method. That’s good for it, but that isn’t the functionality of the structure. Let’s say that you want to argue that the function of the dip(s) on a cd is to store specific information that will cause a computer to perform a method. Even that fails because you are now distinguishing the product not by the bumps, but by the information stored by the bumps. Note here that “information” here means either “a message” or “data”.

    “This structural change differs depending upon the method steps.”

    Couldn’t have said it better myself pds, and that is exactly my point. Sure, you could make a Beauregard claim that included “dips and bumps” instead of “information” but that will not make a difference. My point is that product claims may ONLY distinguish in terms of structure, not an amalgamation of structure and method steps, and in these cases it takes the method steps to finish the job of distinguishing. However, this of course is not permitted because as has already been shown, product claims must distinguish in terms of structural limiations.

    And while you rely on “The method steps are reflected in the structure of the product” to validate your position it also validates my own. This is because without the method steps your structure fails to distinguish. In other words, your claim at least in part distinguishes over the prior art in terms of method steps.

    See? You can say: Oh, well I’m just describing my structure in terms of method steps all you want, you’re still not going to avoid having distinguished your product over the prior art in terms of method steps.

    Any other questions or comments?

  36. 59

    “Anonymous: I considered what you are saying already, basically that Beauregard claims might be just using the functionality to distinguish. However this fails on at least two points. 1. The functionality is clearly the functionality of the computer, not the storage medium (which is what the product is). 2. find x, find y, compare x and y are most certainly not the functionality of a disk (nor even information on a disk if you choose to go down that wrong headed path).”

    The finality of my previous response is hereby withdrawn.

    You don’t think a CD encoded with a copy of Microsoft Word is functionally (and structurally) different than a CD encoded with a copy of Age of Empires? You’re even more of an idi0t than I thought.

    This response is made final.

  37. 58

    “Personally, I have yet to meet a client who has come out and stated that it was because of patent law that they expended significant sums in R&D. Hence, I do have to question the initial assumptions that R&D levels and patent law are causally linked.”

    Clients don’t spend money on R&D because of patent law. Clients spent money on R&D because this is what allows them to either maintain their competitive advantage or acheive a competitive advantage — this is what is going through in the client’s minds. The client understands this, without thinking about the nitty-gritty details, because this is the way it has alway been for the client.

    However, take that client out and put them into a system in which the client’s R&D could be immediately copied by a competitor without repercussion, and I have little doubt that the client’s R&D budget will inexorably decrease over time. Most clients are fairly intelligent, particularly as it pertains to business matters — one of which is that unless you can obtain a reasonable return on your investment (whether new/updated equipment, employees, marketing, or R&D), then the investment is a bad investment.

    Although this example is imperfect (because it includes many other variables – but few examples are ever perfect), look at the former USSR. They had plenty of talented people and spent lots money to spend on R&D, but in the end, they were not as successful as the US (and the West) when it came to developing/implementing technology.

    To (perhaps) over-simplify the issue, the USSR had very little incentives for people to innovate more than they had to (because that is what communism eventually reaps – disincentivized people). Take away an incentive for spending money (e.g., a business’ competitive advantage obtained from R&D) and most rational actors will eventually not spend the money. Instead, the rational actor will allow the other guy to spend the money and reap the benefits of the other guy’s expenditures.

    This is why I’ve always described proposals for weaking patent rights as “patent communism.” Communism may work in isolated situations or in the short term. However, where the incentive for doing more has been eliminated, the incentive eentually becomes to see who can do the least.

  38. 57

    “distinguishing over the prior art only in terms of method steps in a product claim makes it invalid”.

    The method steps are reflected in the structure of the product.

    A memory device, CD-ROM, disk-drive, etc., (all examples of computer readable medium) undergo a structural change when the computer readable medium contains computer program code for performing the “method steps.” This structural change differs depending upon the method steps.

  39. 56

    “However, commerical piracy would likely never be tolerated, but that isn’t related to R&D.”

    A spate of “scholarship” and “economic studies” have been published using R&D levels as an indicator of whether or not there exists a causal relationship between R&D expenditures and patent law (Bessen/Meurer, Jaffe/Lerner, Levine/Boldrin…to name a few that immediately come to mind). Based upon the data sets they selected they concluded (or at least strongly suggested) that patent law does not provide any appreciable incentive for additional R&D investment. In fact, some go so far as to suggest that patent law operates as a disincentive.

    Personally, I have yet to meet a client who has come out and stated that it was because of patent law that they expended significant sums in R&D. Hence, I do have to question the initial assumptions that R&D levels and patent law are causally linked. I belive it is far too simplistic to say that R&D expenditures are a relevant factor in determining if patent law is “working” as intended. What motivates clients is not something that I believe admits to a one-size-fits-all answer.

  40. 55

    “Having “steps” in a device/product claim does not render a claim invalid just like having physical elements in a method claim does not render the method claim invalid. Based upon your logic … most method claims would be invalid”

    Never said it did, and in fact I believe I concured with you on that point already. I believe that you noticed this so I’m not sure what made you want to reiterate it. In the event that you’re not seeing the distinction between my argument and your assertion here it is: “having any method steps in a product claim makes it invalid” is different than “distinguishing over the prior art only in terms of method steps in a product claim makes it invalid”.

    And also, apparently the reasoning behind method claims being able to distinguish in terms of structure is because they’re not really distinguishing in terms of structure, they’re distinguishing in terms of a step using a new structure, where the courts have decided that such a step is a “new” step.

    But you’re right, I will need lots of luck. Fortunately I have a sound reasoning backing me :)

    Anonymous: I considered what you are saying already, basically that Beauregard claims might be just using the functionality to distinguish. However this fails on at least two points. 1. The functionality is clearly the functionality of the computer, not the storage medium (which is what the product is). 2. find x, find y, compare x and y are most certainly not the functionality of a disk (nor even information on a disk if you choose to go down that wrong headed path). In essence, I’m saying that those apparatuse claims that are routinely issued are distinguishing on the functionality of the apparatus with something else, they are not distinguishing on the functionality of something else (as with Beauregard claims are distinguishing on the functionality of something else, aka a computer). In other words anon, nobody tries to claim a widget by distinguishing it over the prior art in terms of a novel function of the whatsit it is attached to. Or perhaps you can give a better example of this occuring?

  41. 54

    “No, no, even more rich, you’re trying to tell me that the information on the disk is a structural limitation.”

    That’s right. This reply is hereby made FINAL. Note that because you failed to seasonably challenge my Official Notice that you’re an idi0t, despite a clear request for you to do so, it is now deemed admitted that you’re an idi0t.

    Please use size 14 font in your appeal brief.

  42. 53

    “”Does a Beauregard claim distinguish itself in terms of structure? Yes, no, or maybe?”

    Yes.”

    That I disagree with. The only thing distinguishing the claim is the method the computer is performing, not the information on the disk, and not the disk.

    You’re trying to tell me that “find x” is a structural limitation? L. O. L. No, no, even more rich, you’re trying to tell me that the information on the disk is a structural limitation. LOLOL. LOLOL. LOLOL.

  43. 52

    “While the question he asked (“Are there times when ‘piracy’ of a technology actually encourages further R&D?”) is a bit too broad in it in its presentation, its underlying questioning of IP orthodoxy deserves thoughtful consideration.”

    Some thoughts, to get back on track … there are two types of piracy. Piracy for purposes of R&D (unless you practice the invention, you cannot do exhaustive R&D on the invention), and commerical piracy (the invention is practiced in a money-making venture).

    As a practical matter, most inventors aren’t going to care if you improve upon their invention — so long as your improvement falls within the scope of their claims. Any improvements will provide greater demand and opportunities for licensing — all good things in the eye of the patent holder.

    However, commerical piracy would likely never be tolerated, but that isn’t related to R&D.

    I think the music industry is very different. The free distribution of ‘pirated’ music COULD be considered a form of marketing, in which money is paid (or revenue is not received) in the expecation of gaining greater revenues in the future.

    The difference between studios paying radio stations to pay for airplay and current technologies (e.g., P2P w/ BitTorrent) is that, in the past, the product being given away for “free” was of a lesser quality than “paid for” product. These days, however, the technology not only makes the quality of product nearly the same (or indistiguishable by most measures), the technology makes obtaining the “free” product easier than obtaining the “paid for” product.

  44. 51

    “Conclusion: all ten thousand Beauregard claims are invalid for attempting to distinguish a standard product claim in terms of method steps?”

    Funny that … given the USPTO’s extreme desire to reject all claims on any argument possible over the past 5-10(?) years, yet the USPTO has not tried to make that argument. Instead, the USPTO has, to this point, allowed 36,461 applications with the phrase “computer readable medium.

    Go to:
    link to patft1.uspto.gov
    Type in:
    aclm/”computer readable medium”

    “computer usable medium” gets you 5,502 patents.
    “machine readable medium” gets you 4,431 patents.
    “computer-readable medium” gets you 17,463 patents.

    BTW: The case law requires that the claim recite, as the object of the claim, two types of statutory subject matter (we had this conversation with 6K some time ago). Having “steps” in a device/product claim does not render a claim invalid just like having physical elements in a method claim does not render the method claim invalid. Based upon your logic … most method claims would be invalid.

    I’ll end this conversation by saying …. good luck with that line of reasoning as I think you are reall going to need it.

  45. 50

    “big hairy rat must be one of those Coalition for Patent fairness shills. Maybe he gets a paycheck from Research in Motion.”

    No, I’m just contrary by nature. Did your law school teach you to make arguments ad hominem?

  46. 49

    Mr. Crouch poses a legitimate and provocative question, the responses to which have quite sadly (and perhaps quite predictably) devolved once more into heated exchanges of claim drafting.

    While the question he asked (“Are there times when ‘piracy’ of a technology actually encourages further R&D?”) is a bit too broad in it in its presentation, its underlying questioning of IP orthodoxy deserves thoughtful consideration.

    Based upon my experience I can answer it without the slightest hesitation…”maybe, it depends, sometimes”. Different industries have different norms, and to provide an answer universally applicable to all is in my view an exercise in futility. In some industries I have seen that “piracy” does have a negative effect on the willingness of parties to make extensive R&D investments, whereas in others I have seen that it makes not a whit of difference. Obviously, the “fashion industry” in large measure falls within the “whit” category.

  47. 48

    “Must every standard product claim (not product by process) distinguish itself from the prior art in terms of structure? Yes, no or maybe?”

    Of course.

    “Is a Beauregard claim a standard product claim? Yes, no, or maybe?”

    Yes.

    “Does a Beauregard claim distinguish itself in terms of structure? Yes, no, or maybe?”

    Yes.

    “Is there any conclusion that can be drawn? Yes, no, or maybe? If so, what conclusion?”

    Yes. That you’re an idi0t.

    Which of the above answers do you disagree with?

  48. 47

    MEETING: Apparatus claims are regularly distinguished by their function when used with other, non-claimed components. (e.g., a client device that can interact with a server. a plug that can interact with an outlet.) Claiming a diskette that can interact with a computer is not meaningfully different.

  49. 46

    “My “real inquiry” is the one that is actually supported by law”

    And mine is supported by fact. Call it even.

    “syllogistic fallacy known as the illicit treatment of the major term”

    So that’s the best you’ve got? Nevermind a reasoned statement as to what the major term is in this case, just throw out something that sounds fancy and declare victory. No wonder I win the majority of arguments with attorneys by simply having them affirm my position as being correct. For being trained to argue you guys sure su ck at it.

    I was going entertain your foolishness at lenght but here, let’s just get to your affirmation of my position and skip the bs.

    Must every standard product claim (not product by process) distinguish itself from the prior art in terms of structure? Yes, no or maybe?

    Is a Beauregard claim a standard product claim? Yes, no, or maybe?

    Does a Beauregard claim distinguish itself in terms of structure? Yes, no, or maybe?

    Is there any conclusion that can be drawn? Yes, no, or maybe? If so, what conclusion?

    Make that +1 argument won by having the attorney simply state my position as being in fact true. Do you just fight this to avoid looking ridiculously stup id for having made your original argument? Why keep fighting?

  50. 45

    “Also, your “real inquiry” is the “inquiry” you would like to make. I would rather make a different inquiry. And it is an inquiry which leads directly to the claim being improperly distinguished and thus invalid.”

    What you would rather do is certainly not relevant. My “real inquiry” is the one that is actually supported by law. Yours is based on fallacious reasoning. In particular, you’re basing your conclusion on a syllogistic fallacy known as illicit treatment of the major term. Idi0ts frequently do that. That’s why they’re given manuals to do their jobs, and asked not to engage in creative thinking.

  51. 44

    Back to Dennis’ question, does patent infringement actually encourage innovation, in this context? Has anyone here actually talked to a small business owner – the kind that eventually becomes a big business – in the fashion and related industries? I think you will find that the more innovative the IP that supports the business, the more fatal the infringement is to the survival of that business. When a company has to spend about 10-30% of net profits on a full-time attorney to prosecute infringers, well, not only does it bleed critical capital, but it is demoralizing and defeating. I gave up my fashion business partly because of the legal fees I had to incur to defend my design patent that was infringed by many different parties. Heck, I won some good money, but you can’t just make innovation worthy of a patent happen. After a while, it is not worth the risk, time and money to create something truly innovative, when you know you have to spend a significant amount of your profits defending that unique, un-teachable, thing called creativity.

  52. 43

    “A patentee doesn’t have to offer explanation or reasoning about why a claim is proper; the examiner has to explain why it’s improper.”

    I already did explain it to him. I then asked him if he had any different way I should see the issue, or guidance as to how I should approach the matter. I told you what his response was to my explanation. What I say is that a product claim must be distinguished from the prior art in terms of structure. Method and product by process claims are distinguished in terms of steps. He failed to distinguish his product claim (which he freely admits it is) in terms of structure, and instead has attempted to distinguish it in terms of method steps (all of which he freely admits).

    Also, your “real inquiry” is the “inquiry” you would like to make. I would rather make a different inquiry. And it is an inquiry which leads directly to the claim being improperly distinguished and thus invalid.

    If I’m not mistaken, the way the judge in Forsyth? put it “the The Patent Act of 1952 did not abolish the then existing different classes of invention.” and neither did the patent office dropping the printed matter issue in Beauregard. Iirc there were specific guidelines for what types of claims were what back before the patent act but of course I’ll have to re-research that tidbit before I can recall for certain.

    Also, let me spell this out for you. The following statement is so elemental as to not require a citation of sources: “Product claims must distinguish in terms of structure, method claims must dinstiguish in terms of steps, and product by process must distinguish in terms of steps”. Whether or not your claim is ambiguous or not has no bearing on those elemental axiomatic truths. They stand just as true no matter what your claim says. Your claim must conform to them.

    Let me be clear, since this seems to be going over your head, the best I can do, is not “products are different than processes”. The best I can do, is “products must be distinguished from the prior art in a different manner than processes” “and Beauregard claims fail to do this”.

  53. 42

    “Also, big guy, I understand that the claim being ambiquous was relevant to the case cited, but that relevance doesn’t change what is so elemental as to not require a citation of source.”

    Not sure I follow you. Probably because you’re not only an idi0t, but a blithering idi0t.

    “The funniest thing about this claim was the attorneys response when I brought up the problem above. It was something like this: *Long silence* Well, no I can’t offer you any explanation or reasoning about why that would be proper.”

    Hmm… I’m an attorney. And I’m sorry it took me a whole hour and twenty minutes to respond. By the way, you’re again revealing your ignorance. A patentee doesn’t have to offer explanation or reasoning about why a claim is proper; the examiner has to explain why it’s improper. The best you can do is to say “products are different than processes”?

    By the way, in the example claim you posted, those “method steps” you’re concerned about are simply limitations that describe the computer program instructions that are on the computer readable medium. You can search all you want in 101 and 112 for formalistic rules about “method steps” in “product claims”, but you won’t find them. The real inquiry is whether someone of ordinary skill in the art can understand what the claim describes. So, ambiguity is not “irrelevant”, it’s the central issue.

  54. 41

    AllSeeingEye (aka Mooney): “And of course everyone knows that France leads the world in aviation and in automobiles too, just look at the blistering international success of Citroen and Peugot.”

    Actually, France produces more motor vehicles per capita than the US. A lot of areas the US leads in are due to sheer size more than anything else. Not sure about Peugeot, but Renault is quite innovative.

    I could go on, but I won’t because you’re obviously trolling.

  55. 40

    Also, big guy, I understand that the claim being ambiquous was relevant to the case cited, but that relevance doesn’t change what is so elemental as to not require a citation of source. And that elemental truth is what the lack of ambiguity in this case is irrelevant to. The funniest thing about this claim was the attorneys response when I brought up the problem above. It was something like this: *Long silence* Well, no I can’t offer you any explanation or reasoning about why that would be proper. But I’m sure if I review the case (beauregard) then I can get back to you on that one because like you said it is a beauregard claim and there are lots of those issued.

    That’s a big L O L good buddy.

    link to patentdocs.typepad.com

    That is good reading right there.

  56. 39

    Awwww, Big guy QQ for software claims? I noticed I’d accidentally posted my reply to your previous idi0t statement in the wrong thread. None the less, you still lose on that argument as well as this one.

  57. 38

    “That is the full quotation, but it is irrelevant that the case had some ambiguity to it. In this case we see that there is a fundamental difference between apparatus and method claims. Does that also imply, as the board stated here, that there is a fundamental difference between product and method claims? I would say yes.”

    That’s because you’re an idi0t. Just like “random.” In fact, very much like “random.”

    Creative thinking in petty bureaucrats is a dangerous thing. Please leave that to the inventors and the trial attorneys.

  58. 37

    All I need to open the window is a spe/appeals specialist to sign a case :) And if all else fails, I can always ask Dudas if he’d like to reject thousands of applications in one stroke as he leaves the office. Talk about production!

  59. 36

    “all ten thousand Beauregard claims are invalid for attempting to distinguish a standard product claim in terms of method steps?”

    Meeting, that’s just the tip of the iceberg. But the reason that Beauretard claims are allowed has nothing to do with patent “law” and everything to do with patent *policy*. In the US, that translates to: such claims are allowed because somebody at the PTO decided it would make a wealthy and powerful person very sad if they weren’t allowed.

    And so we’re stuck with them until somebody opens the window and lets the oxygen back into the room.

  60. 35

    Oh yes PDS, I checked out the case. All 2 paragraphs stating the the PTO withdrew its complaint so as to not allow the Fed Circuit rule on the issue were quite masterful of the topic. However, Landis says that an article claim (aka product claim) can be distinguished in terms of its structure and other productish type things, and then, in a footnote he notes that process limitations in a product claim do not render it indefinite under 112 (and cites a case) and then goes on to cite a case that says that process limitations in a product claim must be given normal weight if they are process limitations leading to the creation of the product (I’m supposing he’s talking about product by process).

    Conclusion: all ten thousand Beauregard claims are invalid for attempting to distinguish a standard product claim in terms of method steps?

  61. 34

    I don’t know about ‘piracy’ of a technology encouraging further R&D. But certainly technology often encourages design=around R&D, and the design-around technology can be better than the original technology.

  62. 33

    “Trust me: I see enough of this baloney at the printer every day to know the fundamentals of the softywofty patent “craft”.”

    More layers of the onion exposed…

    Mooney as just admitted to being a patent “poseur”

    Everyone who has made the mistake of taking him seriously is now free to go take a shower.

  63. 32

    Sooo many comments, soo much food for thought, so little time, its [sic] giving me a headache. Back to me whole for the nite all.

  64. 29

    pds “Since then, there have been several tens of thousands of ISSUED patents with claims which include that (or very similar) language.”

    No kidding. What fraction of those are valid, do you think? I’m guessing 10%, tops. No art unit gets worse examination.

  65. 28

    pds “*if* and I repeat *if* these steps were already performed outside of a computer, then the performance of these steps inside a computer, IMHO, would likely render obvious a claim to these steps”

    But of course the sequence of steps recited in my claim were never performed outside of a computer. Even if you did find some of your beloved “analogous art” to combine, it would be painfully easy for me to rewrite the steps to avoid it. If nothing else, I’d just make up some fancy-sounding phrases (“chronopromotion of dehomogenization”) to throw you off the trail.

    Trust me: I see enough of this baloney at the printer every day to know the fundamentals of the softywofty patent “craft”. It really is amazing what you can get away with when (1) nothing in the non-virtual world is analogous art; and (2) there is no such thing as enablement.

  66. 27

    FYI, a proper Beauregard claim starts “An article of manufacture comprising:” and not “a computer readable medium comprising:”

  67. 26

    “A piece of paper with a recipe written on it that when read by a robot chef causes the chef to crack an egg in a bowl, add liquid celery root to said bowl, then mix said root and said egg in said bowl for 30-50 seconds.”

    I knew you would start cozying up to Sandy Strawman again, which is why I wrote:
    “However, to throw you a bone … *if* and I repeat *if* these steps were already performed outside of a computer, then the performance of these steps inside a computer, IMHO, would likely render obvious a claim to these steps (unless you can then assert unexpected results or some other indicia of nonobviousness).”

    After I already responded to your strawman before you even brought it up, you still rested your argument on a strawman — talk about being predictable, you certainly take the prize.

    As for the claim being discussed (i.e., the “computer readable medium” product claim). This is a Beauregard claim — named after the Federal Circuit case “In re Beauregard,” in which these types of claims were addressed. Since then, there have been several tens of thousands of ISSUED patents with claims which include that (or very similar) language.

  68. 25

    Legend has it that the original GUI was “stolen” from Xerox PARC. Guess that led to a fairly substantial amount of R&D in the computer field. Of course, Mooney thinks the GUI is “trivial.” Tell that to Bill Gates or Steve Jobs for that matter.

  69. 24

    How a bout a very small piece of paper with Mooney’s cumulative knowledge of patent matters scribbled on it. Yes, you’d still have room for the Declaration of Independence and the chemical formula for his favorite hair regrowth product.

  70. 23

    big hairy rat must be one of those Coalition for Patent fairness shills. Maybe he gets a paycheck from Research in Motion.

  71. 22

    Next thing you know big hairy rat will be telling us how the Swiss abandoned their patent system back in the day. What he won’t tell you is that they quickly fell behind in the international market and even the Swiss market suffered from the importation of cheaper better alternatives from Germany and Japan.

    And of course everyone knows that France leads the world in aviation and in automobiles too, just look at the blistering international success of Citroen and Peugot.

  72. 21

    Sorry to hear about your hair loss problem Mooney, that explains a lot.

    “record companies have paid stations to broadcast their music – even though the broadcast would be considered infringement.”

    Since the record companies usually own the rights to the music, why would paid broadcasting at the request of the owner be considered infringement???

    Patent specific examples might involve a tied patented product and a tying product (patented or not). Generally, the patent owner of the tying product is or should be somewhat indifferent to piracy with regard to the tying product, but vigorously enforce rights as against the tied product since the tied product usually carries a higher margin and produces a potentially limitless income stream – particularly if the magnitude of piracy is high.

  73. 20

    Just because piracy expands the fashion industry does not mean it benefits the original designer.

    “Are there times when ‘piracy’ of a technology actually encourages further R&D?”

    Steam engines, airplanes and computers are examples of foundational breakthroughs which were patented and then infringed. In each case others sought to improve and build on the original designs. In the case of steam engines the patentee was successful and steam engine development essentially stagnated for 20 years. In the case of airplanes, the Wrights’ patent suits were successful and technological leadership moved from the US to France. In the case of computers the patents were struck down as being filed too late and the United States leads the world in computers. Draw your own conclusion about the benefit of strict patent enforcement.

  74. 19

    “Claim 1. A computer readable storage medium … with instructions that when read by a computer cause the computer to perform steps, the steps comprising:
    find x; find y; compare x and y; and display a result of comparing x and y.”

    A piece of paper with a recipe written on it that when read by a robot chef causes the chef to crack an egg in a bowl, add liquid celery root to said bowl, then mix said root and said egg in said bowl for 30-50 seconds.

    Go ahead and file it. See what the PTO says. Then we can end this charade.

  75. 18

    “I simplified the example claim because the find x find y compare x and y portions are not relevant to the question at hand. In fact, in the claim in question it isn’t 100% assured that anyone has ever found x and y in one process”

    So what? I don’t care if it is 100% assured that “nobody ever found x and y in one process” (whatever the heck that is supposed to mean). Finding x and finding y and comparing them is either unpatentable or obvious. Pick you poison, then drink up.

  76. 17

    “the only way a product claim can be distinguished in terms of method steps is as a product by process”

    And let’s be clear: a product-by-process claim is not a product claim.

  77. 16

    “Mooney I simplified the example claim because the find x find y compare x and y portions are not relevant to the question at hand. In fact, in the claim in question it isn’t 100% assured that anyone has ever found x and y in one process.”

    That’s irrelevant.

    “the types of methods that are claimed as being performed by a computer are almost always going to be performed on a computer or not at all.”

    Oh yes, that’s right. And things that computers do have no relationship to things that people did without computers. Like counting. Or organizing. Or storing. Got it.

  78. 15

    “How about this claim: A method of detecting cancer, comprising:
    find x (pattern of protein X in blood)
    find y (pattern of protein Y in blood)
    compare x to y.

    Looks like a good claim to me, so long as it meets 102/103.”

    It’s an invalid claim and a painfully plain one at that.

  79. 14

    Mooney I simplified the example claim because the find x find y compare x and y portions are not relevant to the question at hand. In fact, in the claim in question it isn’t 100% assured that anyone has ever found x and y in one process. Except for in my references ;)

    What do you say about the product claim distinguishing in terms of method steps MM?

    LB, actually, I am thinking of a citation from a case where what you are supposing was the case, however, that is irrelevant.

    “The dichotomy between process and product classes of invention has also been recognized and noted in the following discussion in Ex Parte Forsyth, 151 USPQ 55, 56 (Bd. of Appeals 1965):

    A claim such as those before us cannot be both method and apparatus. It must be clear from its wording that it is drawn to one or the other of these mutually exclusive statutory classes of invention. A method or process, as indicated above, is an act or a series of acts and from the standpoint of patentability must distinguish over the prior art in terms of steps, whereas a claim drawn to apparatus must distinguish in terms of structure. This is so elemental as not to require citation of authorities. The Patent Act of 1952 did not abolish the then existing different classes of invention. It reaffirmed the same by Section 101 of USC 35. ”

    Ex Parte Lyell citing Ex Parte Forsyth and claiming that the difference between product and method claims was shown by Ex Parte Forsyth showing the difference between apparatus and method claims.

    link to ipmall.info

    That is the full quotation, but it is irrelevant that the case had some ambiguity to it. In this case we see that there is a fundamental difference between apparatus and method claims. Does that also imply, as the board stated here, that there is a fundamental difference between product and method claims? I would say yes. So far as I know, the only way a product claim can be distinguished in terms of method steps is as a product by process. This is not the case here.

    For instance:

    A bicycle wheel comprising:
    turning a bicycle wheel.

    That claim makes no sense because it is a product distinguished in terms of a method step.

    A method of riding a bicycle comprising:
    a bicycle wheel.

    That claim makes no sense because it is a method distinguished in terms of a structural limitation.

    A diskette with instructions to cause a computer to perform a method, the method comprising:
    find and output a.

    Likewise, distinguishing a diskette in terms of what method steps a computer will perform makes no sense.

  80. 13

    “what is the unexpected result of comparing x and y?”

    You haven’t figured out 102/103 yet? Unexpected results are an indicia of non-obviousness — which only need be presented upon a prima facie case of obviousness being made. Also, if a 102 rejection was made, then your unexpected results of comparing x and y don’t get you anything regardless.

    How about this claim: A method of detecting cancer, comprising:
    find x (pattern of protein X in blood)
    find y (pattern of protein Y in blood)
    compare x to y.

    Looks like a good claim to me, so long as it meets 102/103.

    BTW: In case you didn’t get it, the proposed claim above was likely a hypothetical. Regardless, these steps could be patentable.

    However, to throw you a bone … *if* and I repeat *if* these steps were already performed outside of a computer, then the performance of these steps inside a computer, IMHO, would likely render obvious a claim to these steps (unless you can then assert unexpected results or some other indicia of nonobviousness).

    Your problem, MM, is that you assume that everything that is claimed in the computer arts are things that have already been done outside of the computer arts and people are just transferring a non-computer method to a computer method. In my experience, very, very, very few of such claims exist. Moreover, the types of methods that are claimed as being performed by a computer are almost always going to be performed on a computer or not at all.

  81. 12

    “Claim 1. A computer readable medium … with instructions that when read by a computer cause the computer to perform a method, the method comprising: find x, find y, compare x and y.”

    What a pile of crap. Thanks a lot, software patent “prosecutors”, for clogging the US patent system with your inane drivel.

    Tell me, oh garbage peddlers, what is the unexpected result of comparing x and y?

  82. 11

    “Since it is a product claim attempting to distinguish over the prior art in terms of method steps does that prove fatal?”

    Why would that “prove fatal?” I’ve not aware of a rule that says that product claims can’t distinugish over the prior art in terms of method steps. In a sense, that is what all Beauregard claims do, since the uncoded computer-readable medium is not novel.

    I think you’re confusing this situation with the cases out there where a claim is written so poorly that you can’t tell whether it is a product or a process. E.g., “A widget-producing machine, comprising the steps of A, B, and C.” But your exemplar, although perhaps inartfully written, doesn’t present any ambiguity about the statutory class it falls within.

  83. 10

    Yes anon, that was a concern as well, my claim doesn’t have the display portion either :( Why do applicants suck so badly at writing claims? It r not rocket science.

    More minds! I demand more minds on this subject! The subject is: Since it is a product claim attempting to distinguish over the prior art in terms of method steps does that prove fatal? This is so elemental my dear PO minds. Which is it? Fatal? Or does this nonsense survive?

  84. 9

    MEETING: Yes, it’s a Beauregard claim. But you may want to wait for the Bilski case to figure out if it’s OK.

  85. 8

    Claim 1. A computer readable storage medium … with instructions that when read by a computer cause the computer to perform steps, the steps comprising:
    find x; find y; compare x and y; and display a result of comparing x and y.

  86. 7

    I hereby call this meeting of the PO minds to order.

    Claim 1. A computer readable medium … with instructions that when read by a computer cause the computer to perform a method, the method comprising: find x, find y, compare x and y.

    Beauregard right? It looks to me like this is a product claim that is attempting to distintuish over the prior art in terms of method steps. No no? Or A OK?

  87. 6

    Um D. I’m pretty sure that I agree with the above posters. Stealing promotes research. Here’s an example for you. The big RAM debacle in semis, supposedly one company comes out with the basis for the rest of the tech, goes to a conference and makes sure that it’ll be adopted, then claims the whole thing. I assure you there was A LOT of research done beyond the initial research that was “stolen”.

  88. 5

    Much more often [unlike the fashion industry], the alleged patent infringer has not copied anything, the have re-invented the accused feature of what they make or sell without even knowing that there is a patent claim out there (among the millions of unexpired patent claims) that they might be accused of infringing in their own products, which may be otherwise quite different[until they get sued or otherwise noticed by the current patent owner]. [But there are important exceptions to the latter, including those in the pharmecutical industry, and other products with high profit margins due to patent coverage which may attract willfully infringing competition in some cases.]
    But I don’t see the point of this kind of speculative comparison of apples and oranges anyway. If fashion designs ever did get IPL protection it would be by some kind of limited copyright protection, not by patents. And the whole point of high fashion design rip-offs is to make cheap copies that look as much like the very costly originals as possible, which is irrelvant to utility patenting, and only relevant in a relatively small number of design patent cases.

  89. 4

    Anytime piracy circumvents transactions costs associated with introducing R&D for one market into adjacent markets, further R&D is encouraged in these adjacent markets. I think that’s what the Federal Circuit means when it says patents are “anticompetitive.”

    But notice that patents would actually promote R&D in BOTH the original market and the adjacent markets when transactions costs are low relative to expected value of the technology in each market. And patents and patent licenses are MUCH cheaper than the transactions costs of trade secrets and contracts. Thus, patents are actually NOT anticompetitive in view of the integrated costs and benefits over the entire period over which technology is developed and then sold to customers.

  90. 3

    “I can’t see why someone who would go to the trouble and expense of patenting something would then let others infringe. ”

    Some entities use their issued patents as a form of advertising, e.g., “Our patented formulation will reduce hair loss in 6 weeks, GUARANTEED!!!!”

  91. 2

    I can’t see why someone who would go to the trouble and expense of patenting something would then let others infringe. If they want to disclose the technology as free-to-the-world, there are other, cheaper alternatives.

    There are of course people who innovate faster then their competitors and have little need for patents. I.e., If they were to file, when the patent issues, the technology would be old hat and they would be on to better things.

    There are also those, many in fact, who practice 20-year-old technology. Spoon manufacturers are still in business and the spoon art unit was shut down long ago.

    There are examples of this going on in the useful arts, but they are not “patent specific” because those who pay for patents precisely don’t want this going on.

    Piracy does encourage innovation. E.g, When software security schemes are broken to enable software piracy, people innovate better ones. But that’s pretty obvious.

  92. 1

    While I don’t know of any particular examples, I have to think this happens all the time in industries like electronics and semiconductors. Infringer gets notice letter from patentee, looks at the patents, and designs around it — some of those times have to result in better technology.

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