Claim Construction in the Abstract

By Dennis Crouch

Typhoon Touch Tech. v. Dell, Lenovo, Toshiba, Fujitsu, Sand Dune Ventures, Panasonic, Apple, HTC, and Palm (Fed. Cir. 2011)

Touch screen technology has taken-off as an important element of consumer electronics. Typhoon’s US Patent Nos. 5,379,057 and 5,675,362 cover various embodiments of a “portable keyboardless computer system” with a “touch-sensitive screen.”

Typhoon appealed an E.D. Texas ruling that its patents were invalid and not infringed. The appeal focused on the claim construction that served as the basis for both invalidity and non-infringement. The appellate decision is notable for the detached process that the court used to consider claims elements at issue. The opinion never discussed the crux of the invention or its contribution to the art and instead simply looked to the disputed claim terms and the relation of those terms in the specification (as required by Phillips v. AWH).

This week, I participated in a roundtable discussion at Yale Law School sponsored by the Kauffman foundation and by Yale’s Information Society Project (ISP). A substantial amount of the discussion focused on problems stemming from our current claim construction process and our ongoing focus on claim language as opposed to invention or its contribution to the art.

For patent attorneys prosecuting patents, the claims are often seen as equivalent to the invention. The new patent act supports that definition by shifting focus away from the invention and instead onto the “claimed invention.” Thus, the new § 102(a)(1) asks whether “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The new statute’s sole focus on invention as claimed is largely just a codification of fairly well accepted Federal Circuit precedent without much thought of the consequences. Of course, broad subject matter eligibility described in State Street Bank and the TSM test for obviousness were, until quite recently, well accepted Federal Circuit precedents as well. In the past few years, the Supreme Court rolled-back the clock on those issues – returning focus to pre-1982 case law. For “invention” however, the new statute appears to lock-in the claimed-invention as the ongoing focus of patent law.

Judge Kimberly Moore highlighted this issue in her recent dissent from the court’s denial of en banc rehearing of Retractable Technologies, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011). In that opinion, Judge Moore noted that the approach of the panel decision in Retractable is evident of a major divide amongst Federal Circuit judges as to whether the inventor’s contribution to the art – “what the inventor actually invented” – should be considered in the claim construction process.

This week, my patent law students each argued a mock-Markman hearing – revisiting the facts of Nystrom v. Trex and arguing over whether Ron Nystrom’s claimed decking “board” should be limited to cover only to wood cut from a log. That litigation was interesting because it involved five different court decisions on the proper construction of the term. The final appellate decision narrowed the term’s meaning in a way that allowed Trex’s composite planking to avoid infringement.

Claim construction has become a fundamental aspect of every patent case – even to the extent that Section 101 patentable subject matter decisions turn on the meaning bestowed upon particular claim terms. For patent attorneys, all of this focus on claim meaning puts more pressure on the drafting of the claims and the specification. The sad thing about Nystrom’s patent is that he would have easily won the case if the patent attorney who drafted the application had thrown-in language indicating that a “board” could be made of various materials, not just wood cut from a log. This counterfactual conclusion is sad for Nystrom as the inventor, but it is also sad that such a major weight is placed on non-inventive boilerplate language. In my mind, the importance of claim construction should push the USPTO to do a better job of ensuring that the terms of issued patents are well defined.

###

The Typhoon decision is also notable in the way that the court narrowly interpreted functional claim limitations. As background, Typhoon’s claim was directed to a “computer” that included various elements including a “memory for storing [a] data collection application.” Typhoon argued its claimed invention only required that the memory be capable of storing the data collection application. However, the District Court Judge Davis and Federal Circuit agreed that the proper construction required that memory actually be used for storing the data collection application. In so holding, the courts looked to the specification and found that the described embodiments all had memories that actually included the application rather than just the capability.

###

Finally, the court looked at Typhoon’s “Means for cross-referencing” limitation. The district court held that limitation invalid as indefinite under 35 U.S.C. § 112 because the specification did not include an algorithm adequate to provide sufficient structure for the means-plus-function limitation, citing Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, 521 F.3d 1328, 1334 (Fed Cir. 2008). On appeal, the Federal Circuit rejected that conclusion – finding that the specification did disclose a cross-referencing algorithm in plain language in the text of the specification. The court went on to write that “computer code is not required to be included in the patent specification.” Rather, what is required is disclosure so that one of ordinary skill in the art would recognize the structure as linked to the claimed function.

###

  • Judge Newman wrote the court opinion and was joined by Chief Judge Rader and Judge Prost;
  • The Appellant-Patentee is represented on appeal by Charles Wolfe (Blank Rome);
  • Ed Reines (Weil Gotshal) and Joe Re (Knobbe) were co-lead-counsel for all the appellee-defendants. Briefs were also signed by attorneys at K&L Gates, Baker Botts, Amster Rothstein, Perkins Coie, Covington & Burling, and Malloy & Malloy, as well as Eric Albritton from the Albritton firm.

294 thoughts on “Claim Construction in the Abstract

  1. 294

    I watched All About Eve. Interesting line in that movie about a play write saying that the piano doesn’t write music that it is a mere conduit of the music. And, of course, it was a metaphore for an actress not writing the play but merely playing the part of the play.

    The scene is great in that it evokes the image of how insignificant a piano is compared to the composition of the music. (general purpose computer/software)

    Gee, well, according to the shills on this board this is not true. Everything stops at the piano or computer.

  2. 293

    IANAE, aka, “Mr. Red Herring.” I stated my position. Someone who works in the field and is not paid for my opinions. You don’t state your position. And, in typical shill fashion you just skip over the difference between someone advocating a position as part of their profession and someone who is being paid to take a position and push it on the world.

    Just amazes me that you can be so dense either intentinoally or not. I suspect what you are is a wanna-be rich and are willing to do anything to get there including r@pe our legal system.

  3. 292

    And by the way, as soon as your Computer can work without the Plug similar to a DSL (without having to plug in) exchange then by golly it will have no means. Can you imagine how much fun it will be to cross in the line of Power? ZZZZZZZZZTTTTTTZZZZZ! If you can think it you can do it.

  4. 291

    Oh contrarie! It does have other uses. When moving furniture It is a great go between to protect the furniture. When in the water It is a great life ring. Although I am going a bit far afield as a Furniture Pad , never say never.

  5. 290

    District courts are known for bad decisions – I would hold this to be one of them.

    At one point, the making had to be done – if only then to disable.

    Now was an item “sold” that met the claim? perhaps not – but as you pointed out, patent protection is for more than merely “sold” – patent protection is for “make.”

    Do we know if this case is being appealed? (it should be).

  6. 289

    Thanks Ned.

    I think the big deal, as most will attest, is not to nail the individual user as an infringer. Thus, your 3) above is not a critical point under discussion. It is not him as a buyer that is key (small potatoes and all).

    Rather, it is the maker (deep pockets) that is key. And I doubt that “making” but then having to supply an additional key to “activiate” gets around the “making” in the first place. This reminds me of the blank lenses case – a seller of lens blanks claimed he did not infringe since he did not perform that last step – however, he was found guilty, becuase there was no other use for the lens blanks. Here too, a seller of “software” as a component to a machine would have no out – not because the machine has other uses – it does – but because the component he is selling – the software – does not have other uses.

    This in fact highlights the discussion ongoing (and one rightly so in my opinion) in Ultramercial, that a component is a component and it simply does not matter if that component is hardware, or if that component is firmware, or if that component is software. Such become merely pedantic differences without distinctions, and I think a court should rightfully see straight through such.

  7. 288

    Let’s, you are entirely right that 101 sets forth no negative conditions for patentability as do 102/103. The exceptions are entirely judicial. They include the three well known patentable subject matter exceptions, and also double patenting. While we loosely call the exceptions 101 exceptions, none of these is actually set forth in the statute as are the exceptions regarding prior art in 102/103.

    Regarding your point about principle and abstract not being the same thing, or to that effect, I invite you to read Le Roy v. Tatham, 55 U.S. 156, 174-75, 185-86 (1852), the source of the concept.

    There you will see the original phraseology was “principle in the abstract.”

  8. 287

    There are others, but here is one:

    “On April 7, 2011, the United States District Court for the Eastern District of Wisconsin denied plaintiff’s motion for summary judgment of direct infringement. Plaintiff’s patent, focused on graphics cutting, contained method claims that the district court concluded were not directly infringed. The district court concluded that even if defendant’s software product contained an infringing search function, there was still no direct infringement because the defendant disabled that function when it sold the software. The district court reached this conclusion even though a user or customer could enable the infringing function. “[T]he question is whether the claims read on a device that contains source code for searching, even if that code has been disabled. . . . Nothing in [plaintiff’s] apparatus claims suggests that a device that contains disabled source code for searching is within the scope of the claims. The claims are not drafted in terms of software components but in terms of the actual function of the apparatus. . . . When the code for searching is disabled, the device does not perform [plaintiff’s] methods, and thus sales of the device with the code for searching disabled is not direct infringement.”
    This type of decision once again heightens the importance of including apparatus claims that closely track the method claims, if possible. Here, an apparatus claim was included but it was significantly different than the method claim. An apparatus claim that tracked the method claim would likely have survived the analysis of the district court.
    The case is Mikkelsen Graphic Engineering, Inc. v. Zund America, Inc., Case No. 2-07-cv-00391 (E.D. Wis. April 7, 2011 (Adelman, J.)

    link to patentlaw.jmbm.com

  9. 286

    OK. I will concede this point in the context of an apparatus claim.  

    Alappat did make a big deal that the claim preamble tied the claim into the display application.  Recall, that was an en banc case.

  10. 285

    “Only when the calculation results in something useful, and that use is actually defined at least in the context of a preamble as it was in Alappat, then we have a patentable eligible claim.”

    Again, confusing 112 1st with 112 2nd. Claims need only distinguish the claimed invention over the prior art — no need for enabling/describing the invention in claims. As such there is NO NEED for the use to be “actually defined at least in the content of a preamble.” The “use” doesn’t have to be described anywhere in the claims. The claims are used for something different.

  11. 283

    Listen, I agree there is a problem under 112, p. 2.

    The claim could be reconfigured as 

    1. A computer comprising;

    a program memory; and

    a CPU comprising means for accessing and executing program code from said program memory; 

    wherein the program code comprises Algorithm A.

    Still some problems, but at least we have a nominal combination claim.

  12. 281

    anon, thanks.

    Actually, recent cases trend towards the conclusion that actual use is not required to "infringe."  But, I think these cases fail to consider that infringement is

    1) selling
    2) making
    3) using

    If the end user does not of these, how is he an infringer?  He he buys a device with disabled software on it, he neither makes, uses or sells.  Just how he infringes is not clear.

    However, if he buys the software and installs it, clearly he makes.

    There is a case involving WD disc drives.  Certain drives were sold with a feature installed, but disabled so that it could not be used.  The feature was intended for a future disc drive, not the one sold.

    The court held there was not infringement.

    The cases are fact dependent.

  13. 280

    You guys really need to re-read Benson.

    Which Benson is that? The one where you have acquiesced your argument? Or the one where you are still confused in your argument?

  14. 279

    In principle, I can agree that a claim to a computer implicitly includes both a CPU and a stored programmed memory.

    There go the computer as a “single means” claim.

    Wait, without the single means claim mantra, the “point of novelty” mantra is also out the window.

    We have yet another slippery slope issue here….

  15. 278

    where I agreed in principle that a computer comprising new firmware was patentable as a new machine, as such.

    Except Ned, the quote from Benson re programmed computers does not make the distinction that it is firmware that a computer comprises – quite in fact, it is software and further, as per the numerous quotes from the industry sources, firmware is equivalent to software.

    You are still very much at the bottom of the slippery slope and have made no move up that slope.

    The more you talk, the greasier you become, and the more you are stuck at the bottom of the slope.

    Have at it, it is quite enjoyable watching you struggle so.

  16. 277

    Ned Heller,

    I actively have your ignorance – it is not a matter of atively seeking it – you are quite verbose with it, posting hundreds of times a week, yet saying nothing of note.

    Whoever coined the term “emtpy wagon” nailed the characterization of your contributions.

  17. 276

    regarding non-enabled features of apparatus

    Are you not assuming what Clear the Dust asks?

    As I read the 9:04 AM comment, Clear the Dust seems to be stating that the “configured to state” has been achieved and whether or not a license has been activated is a separate issue of the machine configured to (which is what the infringement would be about).

    Ned – you appear to have jumped too hastily to a conclusion not warranted. Your hypo does conflate the issues at hand, with no apparent rhyme or reason.

    I would also point out that Let’s Make This Simple makes the same point at 9:32 AM – and you have not jumped all over that poster, yet you let loose a torrent of “inane”, “asinine”, “meretricious interloper and hatemonger” when the post merely calls (rightly) into question your position.

    Clearly, this is simply more of your “Umbrage” game, in which you take umbrage at anyone directly challenging you.

    Ned,

    Not only is this transparent, but it gets old and shows poorly on you. I certainly hope that you hold your composure better in court.

    Also, actually providing an answer to either Clear the Dust or Let’s Make This Simple would be appreciated (unless you are staying true to your game of taking umbrage in order to evade actually answering a point made).

  18. 275

    Bookmark, obviously, you missed my whole discussion where I agreed in principle that a computer comprising new firmware was patentable as a new machine, as such.

  19. 274

    The cupboard, I think you were intentionally trying to misunderstand me. What I am saying and have said is that I will agree in principle that a computer with firmware is a new machine patentable as such.

    This does not mean that I do not agree that a programmed computer is not patentable in other contexts, such as when it is claimed as a component of a larger apparatus or process as defined in cases such as Diehr, Alappat, Freeman and Noll.

  20. 273

    King, I'm not doing anything, King.  What I am doing is seeking to understand Let's position.  

    In principle, I can agree that a claim to a computer implicitly includes both a CPU and a stored programmed memory.

  21. 271

     Ridiculous.

    I am quite familiar with the section. Not only did I reviewed again in response to the post earlier today, I quoted portions of the MPEP back in response.  The MPEP section clearly states that functional language is not objectionable to find "part" of the invention. What is so difficult to understand about that!

  22. 270

    IANAE, you are right.  All one would have to do the claim the mousetrap without violating the principles of Halliburton would be to claim two cooperating elements.  For example, one could define the trap as two elements: a trap portion and a mouse operable catch that restrains the trap. That's two elements. That's all that is required.

  23. 269

     Let's, I think we agree on this. When you got the point where the data calculated by human was simply a number on a piece of paper, you hit the nail on the head. Similarly, if the result of a calculation by a computer was discarded or not used for anything, as the number on a piece of paper, nothing of any practical use would've been achieved by the calculation. Only when the calculation results in something useful, and that use is actually defined at least in the context of a preamble as it was in Alappat, then we have a patentable eligible claim.

  24. 267

    Let's, meaning is not the issue.  

    "Catch" is the only physical element in the claim. Its structure is defined functionally.

    Regarding your statement that the claimed functionality has two states, that riposte would be apt were this a method claim.

  25. 266

    Yes, a computer is patentable. But it’s been invented already

    The decrepit “House” argument.

    Always fallacious, never entertaining.

    Tell me, without more, did that first inventor of the computer invent all the future inventions that have been completed? (a la Morse)?

    Back to the tower with you !

  26. 265

    Worth repeating:

    Ned Heller said Regarding Benson, OK. Programmed computers are not categorically excluded. I agree.

    Gee, I wonder how MM, 6 and IANAE feel about this quote?

  27. 264

    Gaffe? Hardly.

    Gaffe – definitely – you still have not clambered up the slippery slope and distinguished software from firmware in any patentably substantive manner.

    Go back and read all the quotes from a whole variety of sources in the particular art field that negate anything that you may have feebly offered.

    I laugh at you sitting at the bottom of the slippery slope, sucking your thumb and crying for your mommy (or for MM, 6 and IANAE to try to come and rescue you). You will note that no one else has ventured into the hardware is equivalent to firmware is equivalent to software slope that you jumped on (and slid straight to the bottom).

    Gaffe? Oh, most definitely!

  28. 263

    “The King has No Clothes”

    In your art, that would be a “general-purpose monarch configured to receive clothes”, and it would be perfectly acceptable.

    Yes, a computer is patentable. But it’s been invented already. If your invention is a way of making a computer do stuff, you’re claiming it wrong.

  29. 262

    The fundamental point you keep missing Ned is that the computer itself is the system, is a machine made of other components and is patentable in its own right (the computer is the system) – yet you insist on combining a computer with something else, and thus in fact you do treat the computer differently – and without legal basis for doing so.

    I can only imagine that your n_akedness looks like the finest clothes in all the world because your tailors have told you so.

  30. 261

    “Does not matter – the apparatus claim has been infringed.”

    A claim to a computer “configured to” infringed by a computer expressly “configured not to”. As usual, the computer arts guys want to have it both ways.

  31. 260

    what relevance does the fact that a computer might be a complex machine if all you claim as a computer?

    compare:

    “Then claim a system”

    W

    T

    F

    Ned, do you realize how often you talk in circles?

  32. 259

    N-Dubz: “I think Dennis should consider banning people that are being paid to spam this blog. I, for one, am likely to stop participating here”

    I don’t think you have any self-awareness at all.

  33. 258

    Ned (and others) have been invited to read this sectionof the MPEP and the associated case law in the past.

    Funny that – they refused. An altogether too common occurance when faced with real law they do not like.

    Lmts, you have just seen yet another Ned Heller Game.

    He’s full of them.

  34. 257

    you are claiming multiple states of a given mousetrap. That is claiming a machine in terms of its operation. Effectively, your mousetrap claims has one apparatus in two states. What this amounts to is a single means claims, banned by Halliburton and not rescued by 112, p. 6.

    I don’t practice much in the critter-and-vermin arts, but I would never claim a mouse trap that way. I’d have a structural whatever-that-part-is-called that is movable/pivotable/whatever between a first position where structure happens (biasing, abutting, that sort of thing) and a second position where different structure happens.

    It’s very hard to analogize computer or software claims to anything in the real world, because their claims would never pass the laugh test in other arts. Nobody would ever claim a general purpose block of wood configured for luring a mouse, sensing the mouse, and catching the mouse. They certainly wouldn’t claim a readable medium with instructions for building such a device.

  35. 256

    “I take it is your position, that all of the above cannot be patented because they are the actions of a human being performing calculations and not of a machine. Where I think you would agree that patentability begins is where the machine, independent of a human, reads data, conducts the algorithm, and stores the output data on a storage device or outputs the data to some recording device or to some other machine that uses it. Do you agree?”

    Let’s see. An abacus is a machine. The pencil (let’s make a mechanical pencil) is a machine, which transforms the paper. The calculator is cerainly a machine. Under the machine or transformation test, all would be OK.

    However, a claim to all of those probably wouldn’t be considered a practical application of an abstract idea. A noise reduction algorithm caclulated by hand gets you nothing but numbers on piece of paper. However, a noise reduction algorithm used by a computer will. There is some fuzzy line there that SCOTUS refuses to make clear, but regardless of the fuzziness of the line, it is quite easy to take your hypothetical noise reduction algorithm out of the real of abstract idea and into the realm of patentable subject matter.

    “independent of a human”
    Nothing wrong with having a human perform one of the steps. A human can dig, mix, pound, hammer, saw, glue among a whole host of things that wouldn’t be a problem. You just cannot have a human perform the whole process in his/her mind.

    For example, a human could enter information into a GUI, and that wouldn’t be a problem Personally, I would prefer to recite “receiving information via the GUI” rather than “entering information using the GUI.”

  36. 255

    Actually,

    Ned,

    I only highlight your inane and asinine remarks.

    If you want to talk about specific cases – mention those cases and set the stage appropriately. Your “gamesmanship” and dustkicking in trying to conflate hypo’s only shows you trying to be too clever by half and FAILING.

    Engage the topic appropriately, or not at all.

    Your oblique angle and attempted shoehorning of your pet theories just do not work.

  37. 254

    “There is only one structural element. Just one. And that one element is definied functionally.”

    No … a catch has a meaning more than just the claimed functional limitations associated with it — just like a processor has a meaning more than just the claimed functional limitations associated with it.

    Also, unless I’m claiming “a means for X” then your “some part” is meaningless. For example, the mousetrap claim also requires that the catch has two states.

  38. 253

    Regarding Benson, OK.  Programmed computers are not categorically excluded.  I agree.   I am now trying to define here just what that means.   I am making progress with Let's because he is not playing games but is, in fact, a serious poster.

  39. 251

    Really?

    Then I could claim, by what you just said:  "A computer configured to perform Algorithm A,"  where Algorithm A was a defined term, because computer is understood to include means for storing the program and for executing it? 

  40. 250

    “I did respond.”

    I don’t think so. I specifically asked for your comments on Benson’s statement that “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.” I haven’t seen those comments

  41. 249

    Yes.  So what. You seem to miss the point entirely.  There is only one structural element.  Just one.  And that one element is definied functionally.

    You might want to read 
    2173.05(g)  yourself, especially this:  "
    There is nothing inherently wrong with defining some part of an invention in functional terms. "

  42. 248

    “So when one claims a programmed computer, one implicitly is claiming at least a computer readable memory storing the program, and, as a separate element, a CPU. You did not say whether the computer readable memory had to be associated with the CPU in some physical relationship sense that the program could be executed by the CPU from the computer readable medium. However, I will make that presumption for you. If you disagree let me know.”

    You know the difference between the first and second paragraphs of 112? The claims don’t need to enable the invention – just distinguish them over the prior art. I don’t need a computer readable memory or a CPU to distinguish the claims; hence, they don’t need to be part of the claims.

    “Now assuming that the program is located on such a computer readable medium, but the accused infringer demonstrates to the satisfaction of the court that the program is never executed, is there any infringement in point of fact?”
    “No” to the method claim, but “Yes” to the device claim. Also, you have to consider secondary infringement such as contributory infringement and inducement.

    “Clear the Dust, regarding non-enabled features of apparatus, there are cases that actually discuss this point.”
    Cite please.

  43. 247

    “For this reason, your claim is functional at the point of novelty, meaning that its structure is defined in the claim by what it does rather than that by what it is, and therefore fails any of Halliburton, General Electric v. Wabash, or Perkins Glue.”

    Hello??? Ever read MPEP 2173.05(g)? Also, what are full citations for these cases?

  44. 246

    We do not agree, why all this argument? We are in agreement that components of a system are patentable. I do not distinguish between computers and other kinds of components. I actually say that under DIehr, under Alappat, under Freeman and under Noll, programmed computers are entirely patentable when claimed as part of systems.  Is not that the point you were making? You assert that I do not agree, when not only do I agree, it is my fundamental point.

  45. 245

    I'm sorry, what are you talking about? We had a discussion about a hypothetical claim they had a single structural element whose structure was defined by what it did. How is this authorized by section 112 paragraph 6?

    Your statement that a single element claim is a combination claim is laughable?

  46. 244

    Clear the Dust, regarding non-enabled features of apparatus, there are cases that actually discuss this point.  Your posts illustrate that you are completely unfamiliar with the issues involved.

    What you have done by your completely inane and asinine remark is to illustrate your ignorance about this topic.

  47. 243

    "What this amounts to is a single means claims, banned by Halliburton and not rescued by 112, p. 6."More of the "Magic Microscope" trick – zoom in and out at will to collapse any "means" into a single means claim and wallah, no patent for you (don't forget to use the magic word "effectively", and don't forget that a computer is actually an extremely intricate machine made up of many components and no one would actually believe the machine to be a "single means").

    Whoever you are, if your claim has a single element, and its structure or materials are defined by what they do and not by what they are, don't you think there is a small possibility that such claims may not be authorized by section 112 paragraph 6?

    Regarding computers, we began to get into the structure of the computer in subsequent posts. The only thing at issue up to this point in our conversation was the mousetrap hypothetical.

    That said, what relevance does the fact that a computer might be a complex machine if all you claim as a computer?

  48. 242

    We do not agree – for some reason, Ned, you insist on a magic microscope and you insist on treating “computers” differently.

    There is no such legal basis for doing so.

  49. 241

    "as I have discussed already, there is no need for the computer to be actually executing the code for the computer to be configured to perform steps A, B, and C."And you are not the oly one to have pointed this out to Ned – nevermind that Ned does not respond to those points that are inconvenient to his pet theories.
    Whoever you are, I did respond.

  50. 240

    For this reason, your claim is functional at the point of novelty,

    Old Canard, new day.

    There is a combination claim, there is structure, and there is functional language.

    In such a case, the claim as a whole is the point of novelty and you CANNOT dissect the claim as you attempt to do.

    Diehr supercedes any of the cases you cite.

    Period.

  51. 239

    one claims a programmed computer

    That is an apparatus.

    but the accused infringer demonstrates to the satisfaction of the court that the program is never executed

    Does not matter – the apparatus claim has been infringed.

    This is one reason why Ned your penchant for delving into “action” completely misses the boat.

    As far as the strawman further hypothetical of “program’s actual execution is blocked by license verification software, and no license fee as ever been paid with respect to a particular machine, or, that the licensing program as a whole has not yet been activated” – you are now conflating whether or not the actual machine was changed to be in the configured to state.

    It was or it was not. Mixing “licensing” in with your hypo is only kicking up dust.

  52. 237

    No mirror, I just responded 30 seconds ago to a very large post that remonstrated me for not understanding that one can patent components of a larger system. I have no idea where the person who made that post got the idea that I disagreed with that concept. It is in fact what I have been arguing for quite some time that programmed computers are quite patentable under Diamond v. Diehr when they are components of a larger system.

    This is why I say that people pretend to not understand what I am saying when they make such posts. They can't be serious.

  53. 236

     Realize this, I have no idea why you made that post because you and I are in fundamental agreement. One can patent the larger system. One can patent components of the larger system. We agree.

    If you look at Alappat, if you look at Freeman, if you look at Noll, the particular graphics display component under discussion in those cases was a component of a larger system. That was disclosed. In the claim was fairly well limited the graphics display system.

    As I said, I don't understand the purpose for your post because we agree.

  54. 235

    Actual Inventor, I agree the Supreme Court limited patentable subject matter analysis in Diamond v. Diehr to claim as a whole. I further agree that the statutes limit obviousness analysis the claim as a whole.  But, but the statutory requirement is limited to just obviousness. I don't understand why you think it applies elsewhere when no case has held that it does?

  55. 234

    Still, you recite a catch as the sole element of the claim and define it structure by its operation.  The point of my post was not that 112, p.6 "saved" your claim by authorizing it.  My point is the exact opposite.

    In order to be saved or authorized by section 112 paragraph 6, there are two requirements. First, that the claim in the proper format, i.e. use the magic words "means for" or their equivalent. The second, is that the claim element appear in a combination claim. Your claim fails both criteria, and therefore is not saved by section 112 paragraph 6.

    For this reason, your claim is functional at the point of novelty, meaning that its structure is defined in the claim by what it does rather than that by what it is, and therefore fails any of Halliburton, General Electric v. Wabash, or Perkins Glue.

  56. 233

    Let's I somewhat agree with everything in your post, but I will like to distinguish real computers in your experience with real computers with claims of a patent.

    Let's imagine a noise reduction algorithm.  It takes noisy data, and transforms the noisy data into noise-free data.  The algorithm is independent of any machine. It can be practiced by the human in his brain. It can be practiced by a human using pencil and paper. It can be practiced by human using an Abacus. It can be practiced by human using a calculator. It can be practiced by human using a computer to perform some calculations.

    I take it is your position, that all of the above cannot be patented because they are the actions of a human being performing calculations and not of a machine. Where I think you would agree that patentability begins is where the machine, independent of a human, reads data, conducts the algorithm, and stores the output data on a storage device or outputs the data to some recording device or to some other machine that uses it. Do you agree?

  57. 232

    Let's,  thanks. Now we are making progress. 

    So when one claims a programmed computer, one implicitly is claiming at least a computer readable memory storing the program, and, as a separate element, a CPU.  You did not say whether the computer readable memory had to be associated with the CPU in some physical relationship sense that the program could be executed by the CPU from the computer readable medium. However, I will make that presumption for you. If you disagree let me know.

    Now assuming that the program is located on such a computer readable medium, but the accused infringer demonstrates to the satisfaction of the court that the program is never executed, is there any infringement in point of fact? For example, assume, for the sake of this argument, that the program's actual execution is blocked by license verification software, and no license fee as ever been paid with respect to a particular machine, or, that the licensing program as a whole has not yet been activated. 

  58. 231

    I think Dennis should consider banning people that are being paid to spam this blog

    Won’t happen.

    This would mean a 90% drop in blog postings – 60% directly by the empty wagon vocal minority crowd and another 30% who post in direct response to the n_aked shilling.

  59. 230

    Remember even though you erased it from my Paper port I have plenty of copies. of the Oct. 19, 1995 Letter. and the fact that there was NOOOOOOOOOOOOOOOOO MEANNNNNNNNNNS and only Flaps..So from the very beginning means was exactly what was expected. But the fact that it was so wonderful made it hard to resist. And I could not get an Atty. for Malpractice to save my Life AL.

  60. 229

    I made the statement that I am not being paid for my posts here. Can the others in this thread make that statement? I don’t think so.

    I think Dennis should consider banning people that are being paid to spam this blog. I, for one, am likely to stop participating here since I it appears there are shills that are paid for their posts.

    IANAE: you are always so patently obvious. Your lame attempts at throwing up smoke never work. You should re-name yourself Mr. Red Herring.

  61. 228

    Ned,

    Now people are pretending to misunderstand you?

    Not only is the rest of the world wrong and you singularly are correct, but those who are wrong only pretend to misunderstand you?

    You are WAY too full of yourself.

  62. 227

    But the machine must be a component in a systemis the machine that you speak of. Oh, and you will love this, the court has made clear that the components of such a machine are to be treated equally, whether those components are hardware components, whether those components are firmware components, or whether those components are software components.

    As much as you dislike the law as it stand today, the sooner you acknowledge just what that law says, the sooner your posts may start to gather some respectability. Otherwise, it is just more hundreds of ranting posts in some make-believe world. And yes, I know who you used to be, but the shell that posts here is but a sad remnant of that person.

  63. 226

    Imagine that – functional claiming that does not invoke 112 P6?

    Who would have thought that possible?

  64. 225
    Ned has forgotten more than most lawyers will ever know - too bad that not much is actually left up in that cupboard says:

    What say you 6, Malcolm, IANAE?

    When you are alone in your c_razy ramblings, and the voices in your head have grown accustomed to each other, it is only natural to seek out those with like minded views.

    “You are known by the company you keep” is an adage that “comes to mind”, and Ned’s seeking out of the notorious anti-patent crowd reinforces his “agenda.”

    It’s too bad his “Shilling” has been so ineffective of late with his gaffe on the firmware-software eqivalency issue that no one has joined his chorus of postings.

    Sometimes, it appears, misery does not love company.

    as I have discussed already, there is no need for the computer to be actually executing the code for the computer to be configured to perform steps A, B, and C.

    And you are not the oly one to have pointed this out to Ned – nevermind that Ned does not respond to those points that are inconvenient to his pet theories.

    Still no comment about my quote from Benson?

    Oh, Ned did comment – he said re-read Benson, which is shorthand for re-read and pay attention only to selected portions and ignore those portions that do not fit his theory.

    What this amounts to is a single means claims, banned by Halliburton and not rescued by 112, p. 6.

    More of the “Magic Microscope” trick – zoom in and out at will to collapse any “means” into a single means claim and wallah, no patent for you (don’t forget to use the magic word “effectively”, and don’t forget that a computer is actually an extremely intricate machine made up of many components and no one would actually believe the machine to be a “single means”).

  65. 224

    “Old elements… A new element…”Element by element parsing is not allowed.
    Where’d you get this stuff?”

    Hi Ned:

    Someone may have already pointed this out on the blog but I dont have time to read it all. The answer to your question is: Diehr, the Supreme Courts controlling precedent on 101 subject matter. If you need it, I can cite the exact paragraph and quote the text.

    You are welcome.

  66. 223

    “Effectively, your mousetrap claims has one apparatus in two states. What this amounts to is a No. Whether the sixth paragraph of 35 U.S.C. § 112 applies depends principally on whether the limitation uses the term “means.” Inventio AG v. ThyssenKrupp Elevator Americas Corporation, __ F.3d __ (Fed. Cir. 2011). When that term is not used, “we presume that the limitation does not invoke § 112 ¶ 6.” Id. The presumption “is a strong one that is not readily overcome.” Id. at 10.single means claims, banned by Halliburton and not rescued by 112, p. 6.”

    By reciting “a catch,” I have undoubtedly taken this out of the sixth paragraph of 35 USC 112. Similarly, by reciting a processor, I do the same. Nobody who knows what they are doing looks to invoke the sixth paragraph of 35 USC 112.

    “Effectively, your mousetrap claims has one apparatus in two states.”
    Precisely … and nothing wrong with it. For mechanical devices, this type of language definitely has it uses.

    “What say you 6, Malcolm, IANAE?”
    FYI — no attorney worth the paper on which their law degree is printed would ask an examiner what they think about patent law. And you wonder why I think you are a non-lawyer?

  67. 222

    “As far as I know, every programmed computer claims that has ties to the real world such transforms signals in the machine is patent eligible.”

    Not sure what you mean by “ties to the real world,” but everything I do on a computer has some tie to the real world.

    “Bilski is different in that the physical steps were mere data gathering. That is all.”
    Bilski was a fringe claim … likely written by an attorney that was overreaching. Again, not a problem for the vast majority of the patent applications at the USPTO. Bilski was a complete non-issue in my book to the extent that it didn’t change the law, as I viewed it.

    “when a computer is not tied to a specific use.”
    That all depends upon what you mean by “specific use.” What may be a “specific use” to one person is not a “specific use” to another. I dare say that the invention described in Benson had a specific use.

    FYI — that being said, I don’t concern myself with Benson for the reasons already discussed. At the time Benson was decided, likely 99.99% of the people in the US had never used or even seen a computer — nonetheless understood computers or computer programming. Even today, there are justices on the Supreme Court that have apparent minimal use of computers (e.g., Scalia). However, once a more “tech savvy” Supreme Court gets seated (probably in another decade before Ginsburg and Scalia leave), I’ll find it hard to believe that any of them will consider software to be a mere “abstract idea” unlike the justices of Benson, who probably thought computers were more science fiction than reality and a few of the justices on the Bilski court (FYI, if you look at Bilski, the older judges were much more likely to be anti-business methods than the younger judges).

    Also, a reading of the Bilski (and the other 101 related cases) describe the exceptions to patentability as the “basic tools of scientific and technological work.” With this in mind, I (and I’m sure many others) can make a very persuasive argument that an overwhelming majority of the software being patented today does not constitute a basic tool of science or technological work.

  68. 221

    “How is the computer configured if one wants to claim a computer that will sequentially perform Steps A, B and then C?”

    The precise configuration, of course, depends upon what steps A, B, and C are. However, a computer configured to perform steps A, B, and C would have some computer progam code, stored in some type of storage device (hard drive, memory, cache, etc.), which when executed by a processor, of the computer would perform steps A, B, and C. Mind you, as I have discussed already, there is no need for the computer to be actually executing the code for the computer to be configured to perform steps A, B, and C.

    The details of the exact computer program code isn’t important just like the details of the “fastener” used in the language “a fastener joing the widget A to the widget B.” One of ordinary skill in the art would be able to recognize a fastener (of whatever form) so capable, and one of ordinary skill in the art would be able to recognize computer code (of whatever form), so capable.

    One last thing, with the right tools, a person could analyze the state of a computer and be able to determine whether or not the computer was configured to perform A, B, and C. Hence, the computer program code has been elevated to beyond more than an abstract idea.

  69. 220

    Actually, Let's, regarding your mousetrap claim, the more I think if it, you are claiming multiple states of a given mousetrap.  That is claiming a machine in terms of its operation.  Effectively, your mousetrap claims has one apparatus in two states.  What this amounts to is a single means claims, banned by Halliburton and not rescued by 112, p. 6.

    However, if viewed as a method claim, there appear to be two steps, and the claim might be protected by 112, p. 6.

    What say you 6, Malcolm, IANAE?

  70. 219

    OK, try this again with a math algorithm comprising Steps A, B  and C.

    How is the computer configured if one wants to claim a computer that will sequentially perform Steps A, B and then C?

  71. 218

    “What does ‘configure to’ mean to you in the context of the apparatus claim?”

    First, the language is “configured to” not “configure to.” Second, “configured to” is just another way of saying the processor has a configuration by which the processor can perform A.

    For example, consider the claim of:

    A mousetrap, comprising:
    a catch having a first configuration and
    a second configuration, wherein
    in the first configuration, the catch of the mousetrap is armed, and
    in the second configuration, the catch is released.

    Let me rewrite that same claim as follows:
    A method of using a mousetrap, comprising
    arming a catch of the mousetrap, and
    releasing the catch.

    When somebody sells a mousetrap, the first claim is infringed without the catch ever being released since the claim only requires that the mousetrap has two configurations — not that the mousetrap is in those configurations.

    Still no comment about my quote from Benson?

  72. 217

    “Let’s, regarding your quip about me being a non lawyer, are you bucking for a defamation suit?”
    Really? Many people would consider that a compliment.

    Your profile doesn’t list the real you, so I’m basing my analysis on the quality of your treatment of the law.

  73. 215

    So much like Ned – all the sources cited are wrong and only Ned is right.

    Why must the entire world be against him?

  74. 213

    :But if you do not, what about a person typing in a program by hand and then pressing “go.”

    What about it?

    Do you think claims that feature human actions are verbotten?

  75. 212

    Let’s, you had better figure out who you are talking to before you say anything more to me.

    Ned Heller – internet tough guy. Watch out or he might get huffy with you.

    Putz.

  76. 211

    Equivalency?

    If the novelty is in the process, it is independent of hardware.  That is the equivalency one talks about when one talks about software.

    The inventor of a circuit is not entitled to all circuits that perform the same function.  That is a given.

    The inventor a machine that can be used to calculate an algorithm is not entitled to claim all machines that can calculate the same algorithm.

    And so on.

    You conflate and twist and distort and dissemble endlessly.  You talk of computers and circuits and physical devices as equivalent when you really mean that the commonality is in the math — the process.   If you claim a process, it makes no difference what machine or circuit implements it.  If you claim a machine, you cannot claim or cover all machines that may perform the process as you haven't invented all such machines.

    The problem we have here is that you lack an understanding of patent law fundamentals while pretending to be well educated.

  77. 209

    You place enormous weight on "configured to."  I wonder if you mean by that the computer has the software in it and the machine executes the software without further intervention of man?  Your prior example had the computer actually running the software.

    But if you do not, what about a person typing in a program by hand and then pressing "go."  

    What about a human commanding the loading of and  the execution of a program?  Is the machine configured up until execution begins?

    What about placing the software in the same room as the computer.  Is the computer configured?  

    Is the computer configured if the program, though physically present, will not execute because a license fee is not paid?

    I expect in all cases you mean that the software is loaded and is executing.  But I am not sure.

    Where do you draw the line?

  78. 208

    "Patentable" is the word actually used by the Supreme Court.

    As to a machine that performs information processing — I agree in principle.  But the machine must be a component in a system which obtains physical information and does something with the transformed information.  Otherwise you are simply discarding the output, and that is useless.

  79. 207

    Let's, you had better figure out who you are talking to before you say anything more to me. 

    Regarding Bilski, just speculating, but I would agree with you that the PTO probably would have granted the Bilski programmed computer claims had they recited a computer, leaving it to the public to raise the 101 issue.

    Regarding pen and paper, the abacus and the programmed computer as tools, see Benson.  The problem is that when a computer is not tied to a specific use, it is just calculating.  It is being used to calculate, just as is the abacus or the pen and paper. 

    In contrast, if the computer is part of a machine or process, the computer receives inputs and provides output to the real world for doing something real.  As far as I know, every programmed computer claims that has ties to the real world such transforms signals in the machine is patent eligible.  

    Bilski is different in that the physical steps were mere data gathering.  That is all.

  80. 206

    Let's, regarding your quip about me being a non lawyer, are you bucking for a defamation suit?

    Regarding your two examples, I have a question:

    What does "configure to" mean to you in the context of the apparatus claim?

  81. 205

    Excellent point there Night.

    One of our professor contributors suggested that Congress should have amended 101/102 to exclude "laws of nature" etc.  As it stands, invalidity over the three exclusions remains completely atextual.  For example, 101 (which is the closest related statute) is not even a grounds for invalidity in 282.

  82. 204

    I replied elsewhere.

    Yes. And poorly so, you have utterly failed to address any of the many points I raise.

    If you had any clue as to this art area, you would recgonize that to a Person Having Ordinary Skill in the Art, the equivalency required by law captures software, firmware and harware all equally.

    You have provided no answers to these points.

  83. 203

    “But IANAE has a point”

    Specifically, my point is that nobody here sounds more like a rabid paranoid industry shill than N-Dubz. Honestly, N-Dubz, if you get so defensive when people point that out, you really shouldn’t go name-calling against people who don’t have anywhere near the blatantly obvious bias you show.

    Which almost makes me suspect that the sanctimonious efforts of our self-proclaimed shilling police are a bit misguided.

    “upsetting their apple cart.”

    I see what you did there. Very witty. I assume it was unintentional.

  84. 202

    constantly rely on Diehr

    False.

    Blatantly false. If anything, you rely on the dissent and ignore the larger picture.

    As least MM as been upfront about how he feels that the Diehr was wropngly decided (for all the good that does him).

  85. 201

    NWPA,

    But IANAE has a point – Ned is not a shill to the pharmacies – he is a shill to the landed tech groups who are deathly afraid of new patents upsetting their apple cart. Ned would like nothing more than to eviscerate the abilitiy of innovators to out innovate his stale products.

    Correct on the Shill, wrong on the industry.

  86. 200

    Yes there is, but not expressly discussed

    Cite please.

    Also, you (yet again) gloss over the key phrase (“configured to“) – without such configuration, no amount of “placed into operation” will avaial you. Somehow, you think an unprogrammed machine has the same capacity, the same configuration (structure) as a programmed machine, but you will nevere never never be able to prove that. (And I am not even beating on you for that “equivalence” requirement built into the law and the fact that software is equivalent to firmware is equivalent to hardware). So even if you get past stage one of the discussion, you are still d_ead in the water.

    You keep leaving out these small critical components to the discussion. This must be aon purpose, as if you were to actually discuss these things on the merits you would be laughed into MM land.

  87. 199

    “It is you who do not see the light regardless of how many time I show you.”
    I know. Us attorneys, the USPTO, and the Federal Circuit have got it all wrong, and good ol’ Ned’s got it right.

    Yup … that’s one convincing argument.

    “Patents are give for useful applications of abstract principles. That is not an exception to statutory law. That is the constitution.”
    No, the Constitution says nothing about “useful applications of abstract principles.” As a reminder, the Constitution reads: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

    I don’t see anything about “useful applications” or “abstract principles.” I’ve already reproduced 35 USC 101 above and it is also silent as to “useful applications” or “abstract principles.” The prohibition against patenting abstract ideas is judge-made law. Moreover, it is an exception and SCOTUS makes it quite clear that it is an exception. “This Court’s precedents provide three specific exceptions to §101’s broad principles: ‘laws of nature, physical phenomena, and abstract ideas.’”

    Also, the exception is to an abstract idea — not an abstract principle. The term “idea” has a particular connotation to attached to it, and you will be hard pressed to explain how software is just an “idea.” Of course, you’ve pressed this issue a lot, but me, most attorneys on this blog, the USPTO, the Federal Circuit, and SCOTUS are not on your side.

    However, keep believing you are right and everybody else is wrong.

  88. 198

    Not held patentable Ned, but eligible for patentability. A machine that performs information processing should be eligible for patentability.

    Then comes 112, 103, and 102. I suspect in Bilski case the right rejection was a 103.

    A machine. 101.
    Routine automation of known process. 103.

    End of traumatic experience for all.

  89. 197

    “You actually believe the SC would have held Bilski patentable it recited the use of a computer to perform the calculations.”

    And your problem with that is??????

    Again, your lack of a legal background hampers your ability to understand Supreme Court jurisprudence. How the “media” oftentimes characterizes the holding of an (important) Supreme Court case is oftentimes very different than the real holding. What people think are broad pronouncements by the Supreme Court are typically narrow decisions based upon fine points. As a general matter, the Supreme Court is loathe to make broad pronouncements (hence my quote from Benson that you haven’t bothered commenting about).

    Turning to Bilski, I have no doubt that if Bilski put more computer technology limitations into the claims and fleshed out the algorithm with some specifics, then this claim would have never been rejected by the Examiner, would have never been appealed to the BPAI, would have never gone to the Federal Circuit, and would have never been taken up by SCOTUS. Bilski is a fringe case, with fringe facts, and is inconsequential to 99.9% of the patents currently being examined at the USPTO.

    “Ditto the use of an abacus or, even, a pencil and paper.”
    Use of these meets the ‘machine or transformation test,” am I not correct? However, as a practical matter, trying to encompass these uses is where Bilski got himself into trouble. Almost all practical uses of Bilski’s algorithm would use a computer, and that is where Bilski should have focused the claims/specification. However, by getting greedy, and trying to encompass everything, he got himself into trouble.

  90. 196

    Nice explanation Let’s make this simple.

    Ned, you aren’t a lawyer? That would explain a lot.

    How come M&M’s isn’t making his simian noises on this thread as much as usual. I guess one of his clients found a new use for an old compound and commanded M&M’s to write a patent application pretending it was not a known compound.

  91. 195

    “Simple, you do not understand the difference between a machine and using a machine.”

    Conclusory statements unsupported by analysis or fact doesn’t get you far in my book. Then again, being a non-lawyer, you don’t fully understand the extent that facts and analysis plays in evaluating a position.

    A process is the use of a machine, and I can claim the process as:
    A method comprising:
    performing, using a machine, function A;
    performing, using the machine, function B; and
    performing, using the machine, function C.

    A machine is, well, a machine, and I can claim the machine as:
    A machine, comprising:
    An element, wherein the element is configured to perform:
    function A,
    function B, and
    function C.

    Interestingly enough, these claims recite overlapping subject matter. The method claim requires that the method actually be practiced while the machine claim does require that the method be practiced … only that the machine be configured to perform functions A, B, and C.

    FYI, although I recite “using the machine” in the process claim, in many instances, it isn’t needed.

    This is really simple stuff.

  92. 194

    Ned, the word abstract is not in the Constitution.

    You show the darkness Ned–not the light.

    Information takes time, energy, and space to transform. Information is a fundamental property of matter.

  93. 193

    I will state simply and without deception intent: I am not paid for these posts. I am not a lobbyist in any sense of the word. I am a working stiff that gets his money from clients for litigaion, transactional, and prosecution work. There has never been an hour billed of my time for any type of lobbying. I write these posts based on my understanding of the law. I may be biased since this is where I make my living, but I am not paid directly to be so.

    Can some of the others on this board say that?

    IANAE: you are still a terribly dull pest.

  94. 192

    But thanks anyway for the long post. It does illustrate that I was right about your position. You actually believe the SC would have held Bilski patentable it recited the use of a computer to perform the calculations. Ditto the use of an abacus or, even, a pencil and paper.

  95. 191

    Again, night, I constantly rely on Diehr, Benson et al. It is you who do not see the light regardless of how many time I show you.

    Patents are give for useful applications of abstract principles. That is not an exception to statutory law. That is the constitution.

  96. 190

    No such requirement?

    Yes there is, but not expressly discussed. It is in the cases and provides a good description of why some cases come out the Yes, and some No.

    A machine placed into operation, a transitory, impermanent state, by the hand of man is not a machine. It is the USE of a machine. It is at best, a PROCESS.

  97. 188

    N-Dubz is accusing someone else of being a shill for a particular industry. That’s priceless.

    Cupertino’s just a hotbed of pharmaceutical R&D, isn’t it?

  98. 187

    Ned, you constantly cite judicial exceptions to Congressional Law and want to interpret them as broadly as possible, but that is not how a judicial exception should be read. It should be read as narrowly as possible and applied only when absolutely necessary.

    Your nonsense about programmed general purpose computers is a good example of this as you want to narrow the holding as much as possible and narrow it despite the reality of the engineering. You constantly go against Diehr: we could exclude computers and computer methods, but we shouldn’t as this issue is before Congress and they should decide.

    Congress has had the issue before it for 59 years now and has not said no. That is a yes by the rule of law. Go to Congress and not the courts.

    And, Ned, I think you are paid by the pharma companies to write these posts.

    Pharma we patent known compounds once we find a use for a known compound.

  99. 186

    Since you have nothing to say, constantly repeating yourself does nothing as well. After all, mathematically, any number multiplied by zero, remains zero.

    That’s funny – that’s exactly how I feel about your gazillion posts Ned.

  100. 185

     Okay then. If that is your reply, you have no reply.  The quotes from Alappat do not support the proposition you state they support. I have made that clear time and time again.

    Since you have nothing to say, constantly repeating yourself does nothing as well. After all, mathematically, any number multiplied by zero, remains zero.

  101. 184

     You are obviously talking about Ultramercial.  You should know that Rader quotes his concurrence in Alappat and not Alappat itself.  There is nothing an Ultramercial that actually says that Alappat held that a programmed general-purpose digital computer was patentable as such.

    With respect to Alappat itself in the "new machine" discussion, if one actually reads the cited cases, the cited cases (Freeman and Noll) support the proposition that the presence of a programmed general-purpose digital computer in those cases did not render the claims unpatentable because the programmed computers were claimed as part of larger apparatus that had a significant number of hardware components. In point of fact both Freeman and Noll were also  graphic display circuits, just as in Alappat.  Those cases did not stand for the proposition that a general purpose digital computer by itself was patentable as a new machine.  Rather, as in Diamond v. Diehr, the programmed computer was part of a larger apparatus or process and that apparatus or process was claimed.

  102. 183

    Obviously you do not understand either Alappat or for that matter general principles of law.  Having decided the claim construction issue (i.e.,  that the claims read on the corresponding structure described the specification and not on a general-purpose digital computer programmed to perform the recited mathematics), the court did not have to reach the issue of the hypothetical case of whether the patent office was correct or not in its view that claims reading on a program general-purpose digital computer in the context of an oscilloscope display circuit rendered the claims unpatentable. That discussion was dicta. They discussed the issue in order that the PTO stop it's practice of holding claims unpatentable simply because they read on programmed general-purpose digital computers, even in the context where the programmed general-purpose digital computer was part of a larger apparatus and the connection to the larger apparatus was claimed.

  103. 182

    Let’s see, Ned parses the difference of pre- and post-Star Trek Movie Klingon physiology as follows:

    1) Software pre-loaded when machine is turned on: improved machine
    2) Software loaded after machine is turned on: machine not improved, machine is just used

    We put two machines behind closed doors, one is fact pattern 1) above and the other is fact pattern 2) above. The software is the same software, and we turn the machine on and then let Ned walk in the room and tell us the difference between the two in terms of operation. Ned scratches his head for awhile and leaves mumbling something about wishing he never mentioned the phrase “form over substance”

    FYI – you do know that BIOS can be changed?

    “The sale of a general purpose digital computer does not infringe the programmed computer patent.”
    No … it doesn’t. However, when you improve the machine (consistent with the claims in the patent), then it infringes.

    “But, the use software on the computer cannot be claimed as a new or an improved machine.”
    Dude … I do it every day. A machine configured to perform X, Y, and Z where X, Y, and Z are functions that the machine was previously incapable of performing is all that you need.

    “Further, the operation of a machine is not patentable subject matter.”
    I guess all process patents are not statutory subject matter then? Is that what you are saying? That seems to contradict the explicit statement in 35 USC 101 that processes are statutory subject matter.

    “Your pleas for simplicity simply illustrate that you do not fully understand the subject matter. You seek to avoid the hard issues rather than confront them.”
    Yes. Let’s see: gone to law school: check; worked in this area every day over the last decade: check; made partner: check. Yeah … I’m really unqualified to speak on this. FYI – they are hard issues because you are trying to make a silk purse out of a sow’s ear. Doing the impossible is oftentimes considered hard.

    “We could even patent the hedging algorithm held unpatentable in Bilski.”
    Yup. The hedging algorithm was easily patentable if it was described using a computer. Give me that same disclosure today, let me add a few paragraphs of supporting text (as part of CIP) for computer implementation, and I can easily draft a set of claims that will sail through both the USPTO and the Federal Circuit without any 101 issues.

    Philosophically speaking, you seem to forget that every invention starts out as an abstract idea floating around in the head of an inventor. However, there is some point when the abstract idea is transformed into a practical application, and the law only excludes abstract ideas from being patentable. You may abhor “form over substance,” but in patent law the form (i.e., the claims) is what transforms any abstract idea into a practical application. Put enough of the right kind of limitations (i.e., form) into a claim and you’ll get patentable subject matter.

    “Do you think the Supreme Court is made up of imbeciles?” No – but that is the wrong question to ask. If you asked me if I thought the Supreme Court doesn’t understand good portions of patent law, and my answer would be yes. There is a good reason why we have the Federal Circuit.

    FYI … what do you make of the statement in Benson of: “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold”?

    “Benson is not bad law, now is it?”
    If Benson’s claims were resubmitted to the USPTO, they wouldn’t be rejected under 101, and both the Federal Circuit and SCOTUS would likely let them sail through. Despite being given lip service support, Benson is now limited to its facts.

  104. 181

    Ultramercial?  You mean this?

    "In this context, this court examines as well the contention that the software programming necessary to facilitate the invention deserves no patent protection or amounts to abstract subject matter or, in the confusing terminology of machines and physical transformations, fails to satisfy the “particular machine” requirement. This court confronted that contention nearly two decades ago in the en banc case of In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994). At that time, this court observed that “programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program soft-ware.” Id. at 1545. As computer scientists understand:

    the inventor can describe the invention in terms of a dedicated circuit or a process that emulates that circuit. Indeed, the line of demarcation between a dedicated circuit and a computer algorithm ac-complishing the identical task is frequently blurred and is becoming increasingly so as the technology develops. In this field, a software process is often interchangeable with a hardware circuit.

    Id. at 1583 (J. Rader, concurring).

    "Court observed"  is a holding?  Rader quotes his own concurrence?  That is the court's holding? 

    Really!!!!!!!!!!!!

    You cannot be serious.

  105. 180

    LOL.   Obviously you cannot and do not distinguish dicta from holding.  We really cannot communicate in this environment.  You really need to get an education.

    As to Tafas, "understand" and "know" are two different words.  They have different meanings, but nuances are lost on you.  

  106. 178

    Quote please!

    Already given – numerous times.

    Your constant asking only shows you to be the fool. It’s not like one day the quote will cahnge and the Court will say, “Oh, never mind.”

  107. 177

    Prove me wrong!

    Already done. Just because you refuse to recognize this to be the case means nothing. Pull your head out of your _zz in order to look around once in a while.

  108. 176

    But they also go on to opine, completely unnecessary

    You don’t understand the case at all, do you?

    The governement had multipler arguments as to why the claims should fail. A court, in addressing the various arguments are not “opin[ing], completely unnecessary

    Learn the basics before you step up on that soapbox.

    T O O L

  109. 175

    This dicta is NOT binding precedent.

    Ultramercial says otherwise. And yes, that is the law.

  110. 174

    I have prevaricated elsewhere in significant detail

    Fixed.

    Ned, just repeating your error does not change your error into a correct statement of law.

    You should take the time and read the statement in ALappat and recognize the tense of the verbs, the context of the sentence and the argument used by the government.

    From someone who once did not even understand the procedural aspects of the Tafas case, you are way too full of yourself inthinking you know what the law is.

    You don’t.

    You know what you want the law to be, but too bad for you, that is not what the law actually is.

  111. 171

    You have no clue.  Really.

    I have explained elsewhere in significant detail just what the holding in Alappat was. Please search and after you have read it, if you want to discuss this case a little bit more please do.

    Sent from iPhone

  112. 168

    But, the use software on the computer cannot be claimed as a new or an improved machine
    Actually it can. It is. And it is the law.

  113. 167

    But in order for software to improve the machine, it must be part of the machine. This is the bit that you seem to miss

    Actually, Ned – this is the part you confuse and conflate. There is no such requirement that software must be “automatically loaded and executed” for it to be part of the machine. This is pure make believe balderdash. Is a spare tire in the trunk of a car a component of the car? (Hint: yes).

    You also (once again) leave out the key phrase “configured to” which does in fact take that extra software and make it very much part of the machine – Wallah – new machine!

    So once again, Ned – you lose.

    Thanks for playing!

    Oh, and you also forgot the equavalency of software to firmware to hardware!

  114. 166

    This does not refer to the holding in Alappat

    Actually – it does. Note teh sentence structure and the use of the phrase to defeat a government argument in the Alappat case itself.

    Not only is the phrase used, it is required to defeat a government arguemnt. This means – yes – it is a HOLDING in that case.

    Sorry Ned – you lose!

  115. 165

    Except for one small fact – the “We Hold” was directly in Alappat.

    Put that in your pipe and smoke it.

  116. 163

    If what you say is correct, then Benson is bad law.

    Benson is not bad law, now is it?

    Now I will agree with you that a new machine is patentable as such.  Ditto an improved machine.  But in order for software to improve the machine, it must be part of the machine.

    This is the bit that you seem to miss.

    Some kinds of software ARE part of the machine.   That kind of software is automatically loaded and executed.  

    If have a device with such software, I can infringe by making, selling and using the device.

    In contrast, if the computer is a general purpose digital computer and the software is not automatically loaded and executed, the machine is not improved, rather than machine is used.  The sale of a general purpose digital computer does not infringe the programmed computer patent.  The making of the general-purpose digital computer does not infringe the programmed computer patent. The use of the software on the computer infringes. But, the use software on the computer cannot be claimed as a new or an improved machine. Further, the operation of a machine is not patentable subject matter. Rather, the operation of the computer can be claimed as part of a process.

    Your pleas for simplicity simply illustrate that you do not fully understand the subject matter.  You seek to avoid the hard issues rather than confront them.

    If what you said is true, i.e., that any programmed computer is patentable as such, then we can patent any nonsense whatsoever provided we merely recite that the subject matter is a program running on a computer. We could even patent the hedging algorithm held unpatentable in Bilski. You would make a laughingstock out of Supreme Court if all one had to do is claim that subject matter as a program running on a digital computer. Do you think the Supreme Court is made up of im– beciles?

  117. 162

    “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    A computer is a machine. Software is an improvement to machine … ergo, patentable subject matter.

    A computer-implemented process is a process that is not merely something performed solely within the human mind. Ergo, not abstract and patentable subject matter.

    Listening to you trying to parse the case law Ned is like listening to some Trekkie explain the physiological difference between Klingons before and after the first Star Trek movie. Fun if you are with a bunch of like-minded buddies, but besides them who the F cares?

    There is only 3 ways for you get to software excluded as patentable subject matter: (i) move out of the US into a jurisdiction that doesn’t allow “pure” patent software (but even in those jurisdictions you can get patents on pretty much the same thing as software); (ii) convince Congress that software patents are bad; or (iii) convince SCOTUS that software patents are bad. I don’t care about (i) and the chance that you (and your like-minded buddies) are going to do (ii) and/or (iii) is about the same chance that I have to win Powerball (i.e., not in my lifetime).

    The plain fact of the matter is that software patents are here to stay. They are entrenched within the system and they have been entrenched for a very long time. The courts are not going to upset settled expectations. You may get nibbling at the very fringes (Bilski was a very fringe case), but the plain language of 101 makes it very easy (see my first three paragraphs) for the Courts to recognize that computer-related inventions are directed to patentable subject matter.

    One last thing, the people you need to convince of your “software as an abstract idea” theory are not tech-savvy. All someone has to do is show them a computer with XXXXX.exe file in the directory and show how the computer functions differently than when XXXXX.exe file is not in the directory. After that explanation, you are going to have a hard time convincing them that XXXXX.exe is an “abstract idea.” Ultimately, that is your problem … common sense is not on your side.

  118. 160

    I agree. But that is what the Sock puppets have been saying. They have been citing the very passage that said,

    “we have held” for Alappat’s holding.

    But as you can see, this is not Alappat’s holding. Further, as I delineate, the cases cited by Alappat for the proposition that “we have held” do not support that proposition at all. To the contrary, the undercut it. The cases cited by Alappat appear to hold the opposite of what the proposition stands for.

  119. 159

    And, if you actually review the three cases cited by Alappat for support for “we have held”, none of them support the proposition that “we have held” that a programmed GP computer is a “new machine” implying that it is patentable as such.

    Freeman’s claims were directed to a display device, as in Alappat, and included a lot of hardware beyond a programmed computer. Freeman’s note 11 referred to In re Noll. Noll similarly claimed a lot of display apparatus beyond a programmed computer, just as in Alappat. The last case cited by Alappat is In re Prater, at note 29. I reproduce note 29 below. But this note was complete dicta. In full:

    “No reason is now apparent to us why, based on the Constitution, statute, or case law, apparatus and process claims broad enough to encompass the operation of a programmed general-purpose digital computer are necessarily unpatentable. In one sense, a general-purpose digital computer may be regarded as but a storeroom of parts and/or electrical components. But once a program has been introduced, the general-purpose digital computer becomes a special-purpose digital computer (i. e., a specific electrical circuit with or without electro-mechanical components) which, along with the process by which it operates, may be patented subject, of course, to the requirements of novelty, utility, and non-obviousness. Based on the present law, we see no other reasonable conclusion.”

    In re Prater was decided in 1969. To the extent it stands for the proposition that a programmed computer without more is a patent eligible, that notion was laid to rest by Benson, which was decided a few years later.

  120. 158

    Sorry Ned – when the court reiterated iin a new case and expressly says “we hold” it means tha tin the new case, that holding is also a holding.

    You Lose.

  121. 157

    But they never said “we hold” with respect to the proposition that a programmed computer was patent eligible as a new machine.

    That would be false.

  122. 156

    Yeah, sure. But they never said “we hold” with respect to the proposition that a programmed computer was patent eligible as a new machine.

    Alappat did not involve a programmed computer. That was the holding of Alappat.

    The dicta about a programmed computer being a new machine was a criticism of the PTO’s position that held the Alappat claims unpatentable for this reason. But, since the Federal Circuit had held the claims did not cover a programmed computer, the whole passage was a pure digression.

    Regardless, even here they said, “we have held” referring not to Alappat, but to prior cases, which they listed. One actually has to look at those cases to understand what the holding in those cases was.

  123. 155

    Well, on the plus side, I’m in charge of claim construction in mah office :)

    And, not only do I go with the “capable of” construction, I also include in the construction something along the lines of: memory capable of, or actually, storing the data collection application, wherein such a capability, or actually storing, is conferred upon the medium by the inclusion of at least one 1 or one 0.

    Suffice it to say, I look forward to the response to my claim constructions and ensuing 102(b)’s. I have a few pending.

    Also, they have nice objections to the drawings pending. I even threw in a little part mandating that the “novel” part be set forth from the old in a little window for me since the proper understanding of the invention requires such.

    I think I gave them this.

    **> ¶ 6.22.01 Drawings Objected To, Details Not Shown
    The drawings are objected to under 37 CFR 1.83(a) because they fail to show [1] as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

    And this in the event they felt like it was an improvement over a blank CD:

    (b) When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.

    (c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d).

    I think they already missed the two month deadline so I hope they don’t consider it an improvement over a blank CD.

    I might also have thrown this in for flavor:

    **> ¶ 6.22.01 Drawings Objected To, Details Not Shown
    The drawings are objected to under 37 CFR 1.83(a) because they fail to show [1] as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

    As well as:

    ¶ 6.36 Drawings Do Not Show Claimed Subject Matter
    The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the [1] must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.

    Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

    Or I might have rolled them all into one big objection including all the grounds.

  124. 154

    anon, thanks.

    Now the quote says in a passage that is entirely dicta from the point of view of Alappat that

    "we have held."

    This does not refer to the holding in Alappat, but to a holding in prior cases, and they are cited.  

    So when one speaks of the holding of Alappat, this is not the holding of Alappat.  It is dicta, and the dicta references to holdings in prior cases which have to be reviewed for context.

    That is my point and has been my point.  

    Thanks for your help.

  125. 152

    Give us a quote

    Ned, would this help?

    Alappat admits that claim 15 would read on a general purpose computer programmed to carry out the claimed invention, but argues that this alone also does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree. We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.

    33 F.3d 1526 at 1545.

    The Court clearly states its holding.

  126. 151

    We can do this all day.

    Yes, but only you look foolish and lazy.

    (the quote has already been used on these boards).

  127. 149

    I cannot prove a negative”

    Then settle for the actual words (Here’s a hint: they said WE HOLD).

    The rest should be easy to spot.

  128. 148

    Hey, Ned – you are the one attempting to move the goal posts – no reason to get all in a snit.

    When the Court says We Hold – they mean it.

  129. 146

    Lazy, you move the goalposts.  It is you or your fellow poster who contended that Alappat expressly held so and so.  I know that Alappat did not.  I cannot prove a negative.  So, I simply invited the proponent of the original proposition to provide a quote.

    What I get is the BS cr ap and goalposting shift that is so typical of the BS sock puppets here.  Jerks all.

  130. 145

    Ned,

    You see here is one of your “examples” of addressing the issue where you have merely run away. You boast about “It is essential and critical to the machine to make the machine operate at all, yet negelct that there is no difference – at the patent scale – with software, wherein the very same statement applies to software as a component. This was captured by Ping a while back iin setting up two machiens, on eprogrammed and the other not and having a race to meet patent claims of a programmed computer. So the facts work against you. This is also something that has been explained to you as law (see Alappat), yet you refuse to open you reyes and thus the law works against you.

    All you can to is pound on the table since you have neither facts nor law. Yet you keep on pounding and pounding louder as is by volume alone you think that you can concince anyone. Like an empty wagon, you make a lot of noise, but you contain nothing.

    So keep at it – keep up your noisy protests and keep drawing attention to the fact that you have no legal or factual basis – at all.

    As you do, I will keep LOLZing at you.

  131. 143

    Actually,

    It is preceisely the question on the table.

    One which you seem to want to infuse doubt where most see no doubt (at least no doubt in what the law ataully is).

  132. 141

    Alappat simplified:

    US 5440676

    Fig. 1, an oscilloscope, from measured signal to display. Reference18 is a box labeled display system.

    Fig 2, display system including a vector list RAM 36, a rasterizer 40, a pixel processor 42, a frame buffer 32, and a display control 34 with output to a CRT.

    Figure 3, the rasterizer circuit. It consists of registers, two different ALUs, and to barrel shifters.

    The claim was to a rasterizer for display. It was claimed in means plus function language. Each element of means plus function language has corresponding structure in the rasterizer circuit.

    The patent office construed the means plus function claims elemens broadly, and did not limit them to the corresponding structure. Rather, the PTO construed the claims to read on a programmed general-purpose digital computer, and held the claims invalid as being directed to nonstatutory subject matter.

    The Federal Circuit on appeal reversed the claim construction, and held the claims limited to the corresponding structure described in the specification, which is specific hardware of a display circuit of an oscillascope.

    Even though this holding was sufficient to reverse the PTO, the Federal Circuit went on to discuss whether there was a mathematical algorithm exception even where a claim was the specific circuitry. The Federal Circuit resolved this issue because the claimed subject matter was not to a disembodied calculation, but to a specific circuit in a display, a rasterizer.

    In dicta, the Federal Circuit also objected to the patent office holding that had the claims actually read on a programmed general-purpose digital computer [in the display circuit] they would have been directed to nonstatutory subject matter. The opinion does have some unfortunate language that would suggest that a disembodied, programmed, general purpose computer by itself, and not part of a display circuit as disclosed in Alappat, might be patentable subject matter because it was a “new machine,” but this is so far beyond the facts of the case as to be complete dicta. Rather, considering the context of a display circuit, replacing the digital circuit disclosed by Alappat with a programmed general-purpose digital computer would have placed the Alappat claims squarely within the authorization of Diamond v. Diehr.

    The court concluded with an observation that Benson and not categorically excluded programmed computers from patent eligibility. Indeed, when placed in context such as in a circuit as disclosed in Alappat or in the mold of Diehr, the use of a general-purpose digital computer in context does not render a claim as a whole nonstatutory as the claim as a whole is not claiming a disembodied programmed computer doing nothing but calculating numbers, but a specific apparatus dedicated to a specific application.

  133. 138

    Night, another point you should consider: is the invention claimed?

    You, me, and every other poster here talks about information processing in terms of transformation of “data.” However, I, for some reason, can I get you to agree that one actually has to claim the transformation of data, and not the mathematics and abstract.

  134. 135

    Sanity Check, “When a court says it holds -that’s a pretty clear sign that the court hold.”

    no doubt. But really that is not the question on the table is it?

  135. 134

    Well I see the reason that patent’s road to issuance was so bumpy and ended in disaster. It’s posted right on the front.

    “Heather”

  136. 133

    Thanks Ned,

    Good to see that you agree that no actual algorithm is required in a software-related patent.

    So many people do not understand this art field and feel the need to throw out their opinions when they clearly do not understand what they are talking about.

    It is nice to see that some people understand that enablement does not require actual code.

  137. 132

    There are far more egregious mistakes on these blog pages than the misspellings of waive or wave.

    This is akin to anayalyzing the lint in your belly button.

    We really don’t care!

    If you are that distressed, seek counseling, get a puppy or both.

  138. 131

    Does that really add anything to a spec addressed to a person of skill in the art?

    The problem comes when those who do not understand “the art” feel compelled to denigrate “the art.”

  139. 130

    Old elements… A new element…

    Element by element parsing is not allowed.

    If you have a combination, then all elements must be looked at in toto, the claim as a whole is where the “point of novelty” of the claim must be sought, not in any one element.

    Like the “Flash of Genius” disease, this “point of novelty” disease just won’t go away. These aberrations must be stomped out.

    This has been the rule of law for ages. It is not a matter that the Federal Circuit “wrestles with it” because it refuses to recognize the difference between old and new elements of a combination, it is because the Federal Circuit is applying the “no dissection” of claims rule of law.

  140. 129

    Ned, you are an iron age thinker. The computer is what it is–new technology. It does not fit well with old descriptions. The claims that you complain about fit the invention. They are the way to particularly and distinctly claim the invention. They are enabled.

    So, if what they did is an invention, then the claims are the proper form to capture the invention. And it is indeed an invention.

    It is just sad Ned to read your lame attempts to characterize a computer as an iron age invention. And your peudo-intelluctual tone that is policy based is offensive.

    Big picture that you cannot escape—is the invention enabled? Is the invention particularly and distinctly claimed? The answer is clearly yes in this case. So, your beef is that the invention isn’t an iron age invention. Which makes you a petty little man wihtout honor.

    And, MM, go claim some more known compounds because your masters have found a use for a known compound.

  141. 128
    If one does n0ot know the difference between firmware and software, one should not be expounding their personal legal views. says:

    Software for such computer applications have a name. Their name is firmware

    BZZZZZT

    Wrong.

    Try Again.

  142. 127

    IF you limit you remarks to a computer programmed to perform the rasterizer math claimed as a component of a display apparatus, you and I are in agreement. That is the claimed subject matter in Alappat, save that the claimed structure was a circuit of a display not a special purpose computer programmed to perform the math of the display.

    Software for such computer applications have a name. Their name is firmware: a computer program that is part of the machine in the sense that it loads and executes automatically. That is necessary in the context of a machine or a component of a machine, else the computer without the programming is just a lump of doped silicon.

    However, people on the board and elsewhere have said, and have repeatedly said, that a programmed GP digital computer is patentable as a machine — without more: meaning, divorced from context, not tied to a specific application, or not part of a larger machine or circuit.

    That is the very bootstrapping I see from Rader in Ultramercial.

  143. 125

    When a court says it holds -that’s a pretty clear sign that the court hold.

    Deal with it – otherwise you look like you are stuggling with your own sanity.

  144. 124

    Quote the Court saying that a component of a car is patentable subject matter, per se, in this case or anywhere?

    You see Ned? Your argument is pure fallacy, because there is no such requirement for a court here there or anywhere to state that some component of a machine is patentable subject matter, per se.

    You have set a challenge that is quite meaningless.

    Now let’s get back to your riveting discussion on how firmware is somehow substantively different than software….

    Your Shilling masters are just dieing to see if you can pull your bacon out of the fire on that one!

  145. 123

    I have made the challenge elsewhere.  I will repeat it here.

    <b>Quote</b> the court saying that a programmed GP digital computer is patentable subject matter, per se, in this case or anywhere?  

    That was the "opinion" of the court in In re Benson, the very case the Supreme Court overturned.  Freaks.  Deal with it.

  146. 121

    Can someone answer a legal question?
    How can a Trademark that had no Power that was filed for you with no power behind it be held while another less than eight months later is started. And their is no Power to do that. How can you have two Trademarks spelled the same, and a legal problem with them allow this to go on? Isn’t that in FACT the basis in Law for the only valid Trademark to be the first one? Class 22 was real.. then the classes were changed to protect the guilty.
    I’m just asking because I don’t know. But it seems to me the second one ought to be held invalid, even though it was invalid to begin with.

  147. 120

    It is not a dicta to defeat a government case.

    To pretend otherwise is truly insane.

    THe COurts has expressly stated what is a holding – yet you think you know better.

    Your conceit is boundless.

  148. 118

    The Fed’s have expressly stated “THIS IS OUR HOLDING

    Only Ned would blatantly L_ie and try to say wuch was not a holding.

    No one else would date to look so st_upid.

  149. 117

    You sound like a patent examiner presenting a FAOM.

    Appellate courts do not act that way.  Neither to district court judges.  

    Here, in Alappat, the PTO's claim construction was overturned.  The claims did not read on a GP digital computer.  Everything after that holding was dicta.

  150. 116

    Back, let's see.

    A district court construes the claims, and based on its construction holds the claims invalid.

    The feds overturn the construction.  But they also go on to opine, completely unnecessary on whether the claims would have been invalid had the construction not been overturned.

    Anyone with a brain knows that the discussion related to invalidity is unnecessary. It is complete dicta.  Courts normally do not do it as the issue is not really before them, having been rendered moot by the reversal of claim construction.

    But, that is Alappat.  The Feds overturned the PTO's claim construction, but still went on to give its opinion on the now hypothetical case of whether the claims would have been patentable or not had they read on a programmed GP digital computer.   

    This dicta is NOT binding precedent.

  151. 115

    Hypothetical:
    Hancock Fabrics diversifies.. They begin their own line of Clothing.. Why not they say after all we are a Fabric Store. And better yet why don’t we make are own Fabric.
    Boy you are Greedy.. You figure hey the same scenario if we are able to take control of this. It took you 16 Years to bury me. I wouldn’t say that this last 16 years was your finest Dig.

  152. 114

    One must not limit oneself to just the patent involved, because a court’s holding must deal with all of the arguments brought against that patent.

    Therefore, all of the arguments brought by the government and all of the responses by the court to those arguments make up the holding of the case. If the government is successful on any one of its arguments the case may still be decided for the government, thus the court holding includes all those arguments used to defeat the government position.

    Ned is is clear denial of the holdings of this case.

  153. 113

    Compare:
    the holding was necessary to address one of the govenerment’s positions that is was a holding.

    And

    does not form a necessary part of the court’s decision

    W

    T

    F

  154. 112

    Back to Law School has provided a rationale basis. Ned Heller realies solely on ad hominem.

    It is easy to tell which is more conveincing.

  155. 110

    What happened to the “firmware” is not equivalent to “software” gaffe?

    Can’t get back up that slope?

  156. 109

    You seem to think that anything in an opinion regardless of it’s necessity is a holding.

    Quite the contrary.

    It is precesiely because the holding was necessary to address one of the govenerment’s positions that is was a holding.

    Or hasn’t this been explained to you (at least four times now)?

    All else you have to say on this is rather pathetic dust kicking.

    Enjoy what the court tells you – it is a holding and it is law. You might have to unclench your eyes, take your fingers out of your ears and stop chanting “nah-nah-nah-nah-nah“.

  157. 107

    basics, it is quite apparent that we do not agree what a holding is. You seem to think that anything in an opinion regardless of it's necessity is a holding. You are way out there.

    The Federal Circuit in Alappat held that the claims before it covered the circuit of figure 3, the rasterizer. This was a circuit. This was not a general purpose to the computer. In fact, it was not a computer at all.  It was a circuit.

    Not only did it hold that the claims covered that circuit, they also held that the claims could not be construed as broadly as the patent office held them to be, to essentially cover any means under the sun that could perform the mathematics recited in the claims.

    So, any discussion about general purpose digital computers, while necessary to the patent office decision, was not necessary the Federal Circuit's decision. As such, that discussion was not the courts holding. It was not the courts holding because it was not necessary. Rather, it was dicta.

  158. 106

    basics, you apparently do not know what "dicta"  is. Is an statement of law or opinion of the court that is not "necessary" to the decision. For example, this from Black's Law dictionary:

    "
    Obiter dictum (plural obiter dicta, often referred to simply as dicta or obiter) is Latin for a statement "said in passing". An obiter dictum is a remark or observation made by a judge that, although included in the body of the court's opinion, does not form a necessary part of the court's decision. In a court opinion, obiter dicta include, but are not limited to, words "introduced by way of illustration, or analogy or argument."

  159. 105

    And Ned does not even know what a holding is, yet feels compelled to lecture others.

    Draw your own conclusions on that gem.

    Ned, it seems you wisely put down the shovel on trying to drwa a distinction on firmware versus software, as well as any discussion on encryption.

    You’ve had a really bad week, haven’t you?

  160. 104

    Hw is this not dicta

    Simple – The court said it was not. The court said it was not in direct realtion to government argument.

    You do know what it means to be a “holding,” do you not?

    This is really basic stuff, Ned.

  161. 103

    Max, its the sock puppets doing this. Clearly they have no clue — on so many, many levels. They don’t even know when they are wrong or when they are right. They exist is a fog of narcissistic arrogance and demonstrated ignorance.

  162. 101

    There’s somebody here who persistently writes “waive” when they mean “wave”. As in “waiving the flag” or “hand-waiving”.

    It distreses me. Please can that person grasp the difference between the two words. It would be in their own interest. If they are in legal work, it might help their career progress.

  163. 100

    The reconsideration Board majority also erred in its reasoning that claim 15 is unpatentable merely because it “reads on a general purpose digital computer ‘means’ to perform the various steps under program control

  164. 99

    The reconsideration Board majority also erred in its reasoning that claim 15 is unpatentable merely because it “reads on a general purpose digital computer ‘means’ to perform the various steps under program control

  165. 98

    The practitioners of magic in computer software

    Ned,

    Don’t you think that you have embarrassed yourself quite enough?

    Please.
    Put.
    The
    Shovel.
    Down.

  166. 97

    Malcolm a jar with novel beans is different from a jar that holds beans.

    I knew that, Ned, hence my use of the term, “for storing”, instead of the term, “with.”

  167. 96

    Malcolm a jar with novel beans is different from a jar that holds beans. The jar and bean combo might function as a better bomb, for example.

    The practitioners of magic in computer software however you want us to believe that when they disclose a jar (read computer) that temporarily holds beans (software), that they can justify a claim to a jar configured to hold (but only temporarily so) beans as claiming a new combination, when in truth they are not claiming a new combination but the use of a jar to hold beans.

    It is clear that we have the same problem with computer software as we did with computer readable media comprising signals. The signals, like the combination, exist at the time of their creation, but they vanish when the power goes off.

  168. 95

    As anyone with a functioning brain will readily appreciate, “a jar for storing novel beans” is identical, for patent purposes, to “a jar for storing old beans,” unless some additional limiting information about the former jar is provided.

    the District Court Judge Davis and Federal Circuit agreed that the proper construction [of the term “memory for storing”] required that memory actually be used for storing the data collection application. In so holding, the courts looked to the specification and found that the described embodiments all had memories that actually included the application rather than just the capability.

    To truly appreciate the magnificently pathetic joke that this decision represents, one must remember the following: (1) the original decision came from the ED Texas where one of the attorneys on this very case famously wept on the stand (LOL!) to defend himself and his beloved banana republic from further humiliation (FAIL); and (2) the CAFC decision was written by Judge Newman, whose love for functional language is so deep and perfect that she believed (and no doubt continues to believe) that novel compositions could be claimed as compositions simply be reciting how they were made, without any knowledge or disclosure of the actual structure of the compositions.

    My gob, the defendants in this case must have collectively multiply orgasmed for a solid hour when they discovered who would be hearing the appeal.

  169. 93

    The Alappat court held that a proper construction of the claims at issue was to the specific hardware disclosed in figure 3. The court held that the claims, properly construed, would cover any apparatus that could perform the recited mathematical algorithm.

    This means, the later digression about the claims “reading” on a programmed general-purpose of the computer was complete dicta. The holding of the Court was that the claims actually read on the disclosed hardware. The court, in that section of its opinion, was rather criticizing the construction of the Board that did read the claims on a programmed general-purpose digital computer.

    What the court ended up saying was that a programmed general-purpose digital computer was not automatically excluded from patent eligibility simply by that fact, citing Benson.

    “Under the Board majority’s reasoning, a programmed general purpose computer could never be viewed as patentable subject matter under § 101. This reasoning is without basis in the law. The Supreme Court has never held that a programmed computer may never be entitled to patent protection. Indeed, the Benson court specifically stated that its decision therein did not preclude “a patent for any program servicing a computer.” Benson, 409 U.S. at 71, 93 S.Ct. at 257. Consequently, a computer operating pursuant to software may represent patentable subject matter, provided, of course, that the claimed subject matter meets all of the other requirements of Title 35. In any case, a computer, like a rasterizer, is apparatus not mathematics.”

  170. 92

    I just had a very long post swallowed. However, it describe in detail the Alappat holding. Gone. But to really understand Alappat and it would be quite useful to review the patent involved: US patent 5, 440, 676. Now look at figure 3. That is the rasterizer which is the subject of a claim. It is a specific hardware circuit that operates as a whole according to the mathematics set forth in the claims at issue. It is not a general purpose computer. It is not a special-purpose computer operating according to a sequence of instructions. It is specific hardware.

  171. 91

    On further review, Alappat was not a case about firmware. Rather, it was a case about a specific circuit that was mathematically described in the claim.

  172. 90

    To me, the most interesting thing about the Typhoon decision is that the court appears to hold that a computer memory is not just a device that can store any arbitrary data, i.e., a memory used for one thing is not the same as a memory used for another thing. According to Judge Newman, the act of storing data or an application in a memory turns the memory into something new and different. Therefore, anytime a memory is claimed as being “for” a particular purpose, that purpose must always be considered limiting.

    I believe that colleagues commonly use “for” limitations in computer related inventions inappropriately. A processor for doing one thing, is just a processor with an intended use. Any processor capable of doing that use should read on such a limitation. However, Examiners have been giving functional language in intended-use limitations patentable weight, and so there is a long pipeline of cases that have been inappropriately drafted and inappropriately granted in the Patent Office. Technically, this is a bad decision because it suggests that a memory must be somehow modified in order to store one set of data verses another set. However, this decision protects the status quo, such as it is, and for that reason I support it.

  173. 89

    PHOSITA,

    Quite in fact, Alappat is a case that explicitly includes software rather than firmware.

    This notion of the case involving firmware is pure horsehockey.

  174. 88

    the machine itself is unchanged.

    False – no machine is unchanged if you introduce new components. Those components can be in the form of hardware, firmware or software.

    Those are the facts. That is the law.

  175. 87

    “Signal” by Ned must mean “waiving a white flag.”

    The signal is that Ned has nothing to say – nothing useful and no BS. He is stumped.

  176. 86

    Sorry Dennis, the Kewpie Doll does not go to you.

    Think more local – as in, on this blog.

  177. 85

    you know where you can go

    Even more LOLZ – what you think – especially as to where I can go, is even more meaningless than what you think of the law. You are still stuck at the bottom of the slippery hill, with no way to scramble past the inevitable conclusion that software is equivalent to firmware is equivalent to hardware.

    Your running is merely running in place.

    It is quite amusing watching you struggle, knowing that those who pay you to shill will be most displeased with your efforts.

  178. 84

    Ned,

    Your statement does not make sense. Alappat defines what is good law. The Holding that you refuse to accept is the lynchpin of what it means to have a special purpose machine. It is as if you cannot open your eyes and see what it directly in front of you.

    Whether what you think should be good law is a “you” problem, a problem of huge proportions. You must learn to deal with the law and not live in denial.

  179. 81

    It comes, it goes.

    From where? the ether? Or from the new machine, the computer “configuired to“.

  180. 80

    Ned,

    You do not get to decide what the “holding” of the court is when that very court has declared what its holding is.

    I have tried (politely) to explain to you that the decision on this factor was indeed a holding because it was necessary to defeat one of the arguments advanced by the government in its efforts to defeat the case. The court spoke on point, and that point is now law.

    Ned, this is a basic principle of law – you struggle in vain with your refusal to open your eyes and accept what you must.

    Any “bootstrapping” being done here is being done by you in your attemtps to salvage your ideology.

  181. 78

    Allappat, the rasterizer before the court was patentable because it had a "useful, concrete and tangible result." While there was a discussion that a programmed general purpose digital computer might be an equivalent of what was claimed, that was not critical to the holding because that was not what was claimed. Rather it was a particular machine, a rasterizer.

    This rasterizer was in fact not a programmed general-purpose computer, otherwise the discussion of equivalency would've been a non sequitur.

    There is no basis in the holding of Alappat that warrants the proposition that all general purpose digital computers running software are special purpose machines. Any such discussion is pure dicta because the rasterizer before it was not such.

  182. 77

    Ned’s deflection has been defeated – so on to other games, such as “stop it” or next, umbrage.

    Ned, I am afraid that the formidable assualt against your position leaves no defense for you at all. Your acquiescence of firmware must lead to an acquiescence on software, as that term is understand by those persons having ordinary skill in the art (quite in fact – those quotes leave no doubt at all).

  183. 73

    Ned,

    Replay again what the holding in Alappat was that you refused to recognize as a holding in our previous discussions.

    When you finally recognize what I told you was in fact a holding, you may then realize how your current struggles are in vain.

  184. 72

    Ned,

    Your reply is without substance and does not support your contentions.

    ANY machine “configured to” with software is a special purpose machine. See Alappat. See Ultramercial.

    You are reduced to making comments that support the view that you do not wish to hold. You have slid all the way down the slope and now must face the fact that software is equivalent to firmware is equivalent to hardware.

    Embrace Ultramercial. Embrace Alappat. Enbrace the facts. Embrace the law.

    Hush child, cease your pointless struggles.

  185. 71

    “I have no idea”

    LOLZ – the great MM “What the Sam-Hill” game.

    Keep running Ned, keep running!

  186. 70

    In contrast, a person uses the machine to run software. the machine itself is unchanged.

    There is no factual or legal basis for this statement.

    It is a paper table.

  187. 68

    Yes, the machine was a rasterizer.  It was a part that could be held in the hand.  Plug it in, and it operated as a rasterizer.  It WAS a special purpose machine.  

  188. 67

    It is essential and critical to the machine to make the machine operate at all.

    Wasn’t it Ping that made this very point in the Grand Hall experiment?

    The experiment that only 6 dared to take (take and fail)? MM, Ned and IANAE refused to address that experiment.

    Cowards!

  189. 66

    Alappat was a case involving firmware

    No. It was not. Nowhere in Alappat is that distinction made. You do not get to make up new facts after the case.

    Any “bootstrapping” being done is being done by you in trying to make a distinction that was not there (and even for agument’s skae, if there, is a distinction without a difference).

    Poor poor Ned – he just did not realize how slippery and how steep that slope was before committing to havign firmware as patent eligible subject matter.

  190. 65

    Alappat was a case involving firmware. The rasterizer there was a dedicated apparatus for use in a display. It was not a general-purpose digital computer, albeit, a digital computer programmed with firmware to execute the rasterizer algorithm would be an equivalent.

    Alappat cannot be used to bootstrap a general proposition that the use of any software on a general purpose the computer transforms the computer into a new machine. While it does so in a sense, it is transitory, nonpermanent. Software that is not automatically loaded and executed does not transform the machine. Rather, the machine is used to execute software.

    I support in principle the concept that firmware transforms the machine into a particular machine for the purposes of the MOT test. However, I opposed in principle extending this proposition beyond its facts into a general proposition that any software running on any general-purpose digital computer transforms the machine.

  191. 63

    Person, difference from what point of view?

    Firmware is software, certainly. But it is dedicated to the particular machine, stored permanently on memory that is fixed to the machine, loaded automatically and executed automatically. It makes the machine different. This is important, nay critical, if one is to consider whether particular software is defining a particular machine within the MOT.

    Firmware defines the machine. In contrast, a person uses the machine to run software. the machine itself is unchanged.

    The concepts are distinct, but important.

    The critical distinction about firmware, again, is that it is part of the machine. It is essential and critical to the machine to make the machine operate at all.

  192. 60

    From: link to support.apple.com
    Firmware is a combination of software and hardware. Computer chips that have data or programs recorded on them are firmware. These chips commonly include the following:
    ROMs (read-only memory)
    PROMs (programmable read-only memory)
    EPROMs (erasable programmable read-only memory)

    Firmware in PROM or EPROM is designed to be updated if necessary through a software update.

    From: link to seagate.custkb.com
    Seagate recommends applying new firmware to enhance the performance and or reliability of your drive.
    Like any software, firmware is improved over time and problems are also fixed

    From: link to grandstream.com
    Q: Where can I find the Firmware Version of my Grandstream device?
    There are two ways that you can see your unit’s firmware version depending on the product:
    For ALL Grandstream devices
    The software version is displayed on top of the Status web configuration page in a format similar to the following

    GET THE PICTURE?

  193. 59

    From: link to en.wikipedia.org
    IEEE Definition
    Institute of Electrical and Electronics Engineers (IEEE) Standard Glossary of Software Engineering Terminology, Std 610.12-1990, defines firmware as follows:
    “The combination of a hardware device and computer instructions and data that reside as read-only software on that device.
    Notes: (1) This term is sometimes used to refer only to the hardware device or only to the computer instructions or data, but these meanings are deprecated. (2) The confusion surrounding this term has led some to suggest that it be avoided altogether.”

    From link to forums.cnet.com
    Most comments recognize no substantive difference.

  194. 58

    From: link to qa.techinterviews.com
    Firmware is software that is programmed into chips and ususally perform basic instructions , like BIOS, for various components, Network cards, computer BIOS, etc… Software is a program that is is designed to run on a computer’s operationg system.

    From: link to differencebetween.net
    Firmware is basically a type of software, therefore making comparisons as if they are distinctly different would be wrong

  195. 57

    To Ned, since the reply links are not working properly:

    I do not know who this Ned Heller is, but he is clueless when it comes to the firmware/software distinction, because there is no meaningful distinction.

    From: link to differencebetween.com

    Firmware is a special name given to software that is embedded in an electronic gadget or device to make it run. Since it is a kind of software, trying to differentiate it with software may not be fruitful

    From: link to support.cybertronpc.com

    Most ATA RAID host adapters (except 3Ware Escalade, Adaptec 24×0, Areca, HP/Compaq, IBM ServeRAID, Intel SRC*/ICP Vortex, LSI Logic MegaRAID 150-4/150-6, and Tekram) turn out, upon examination, to not be real hardware RAID, but rather software/BIOS-dependent fakeraid. (I.e., missing hardware functionality is traditionally emulated inside idiosyncratic, undocumented, and proprietary software drivers, to hit low price points).
    …Setting up a software raid with Linux:

  196. 56

    Ned you might enjoy the newest case from the English Patents Court on 101 issues: abstract/software/mental act. Go to the IPKat blog Tuesday Nov 8 and look for the item about monotoring if the kids are accessing something inappropriate on the net. 103 seems to be a given. But i wonder if the inventor applied in the UK PTO (rather than the EPO) for exactly that reason.

  197. 55

    Don’t need to – I am waiting for you to try to explain a substantive difference between firmware and software, waiting for you to realize that no patent case spoke to any such difference and waiting for you to once again hoist yourself on your own petards.

    I am sure that I have the better position.

  198. 53

    no substantive difference

    Your mind has shown nothing as you run at every chance. Now, you try to run up a slippery slope.

    I am going to enjoy watching you squirm on this.

  199. 51

    If a GP computer uses software to transform it into a special purpose machine that operates with respect to this universe in a different way, that special purpose machine just might be patent eligible as a machine.

    A major crack (yet another) has appeared in Ned’s defense, as he can give no substantive difference between firmware and software. Just as there can be no substantive difference between firmware and hardware.

    The strands of the L_ie begin to fray and unravel.

  200. 50

    Bob, the scope of enablement should be very broad if the element claimed is old. At the point of novelty, however, stricter standards should apply.

    It appears the source of the wood was somewhat critical in the present case just as the source of starch, apparently, WAS the invention in Perkins Glue.

    One really has to re-read Perkins Glue carefully as it bears heavily on the wooden log case.

  201. 49

    If a GP computer uses firmware to transform it into a special purpose machine that operates with respect to this universe in a different way, that special purpose machine just might be patent eligible as a machine.

    What you continue to insist on, Night, is that a program running on a computer and not tied to any use is patentable as a machine. You do not require that the program be part of the machine as is firmware. You do not require any inputs or output to the computer. You do not place the computer into any context within the known universe. You simply state that information is transformed and that is enough. What information? You do not even identify that.

    Can’t you see you are patenting abstract ideas?

  202. 47

    Respectfully, I don’t think this issue has anything to do with obviousness or patentable subject matter. It has to do with a comparison between what was described and what was enabled with claim scope. These really are different issues.

  203. 46

    In other words your cheap attorney tricks to overbroaden an invention didn’t pan out this time? QQ moar, nothing sad about his failure to invent X. And there is even less sad about cheap attorney tricks not prevailing.

  204. 45

    6–

    Condensed version:

    Moore either makes the very same error she blames others on the court for making, making her admonition rings entirely hollow–or, she doesn’t know how to write.

    Better opinions, please.

  205. 44

    You spend that last 3 years trying to keep me from understanding the SCOPE! The things you call me, the things you say. Justice is all I ever wanted. And now that I understand the “SCOPE” you want me to just dry up? No now I finally have been freed. I have vindication! And if all I get is a plug Nickle.. The People that did me wrong will get less! So bring it on. And thanks to the Poster that defined how he does what he does. Now maybe all the little people like me that he destroyed will come home to roost and Poo in his eye.
    Signed,
    Vindicated

  206. 43

    To bad that you can all throw Stones, and when I do you call me A Maggot, and smelly, and disgusting.Oh and lets not forget Ice Milk.
    60 Years and no one cared. I only hope I have 30 more. But those 30 won’t matter if you care or not. Because I don’t believe anything you say!
    I remember like it was yesterday. I don’t know Sally I just don’t know. But I do and that’s what matters!

  207. 41

    IANAE–

    It’s nice to see that your post shows that you sense the reality of the sad state of patent law.

    I will leave you to think about this further, unfortunately (fortunately?) I actually have work to do at the moment.

    But please read my comment more carefully, you have mischaracterized some things and have run with those mischaracterizations–although that might not actually matter in the end.

  208. 40

    IANAE: as I understand it all you do is try to get a patent for known substances and clog the PTO with endless patents for substances that are already known.

  209. 39

    Such evidence is always material to the scope of claim 1, even in view of evidence to the contrary from the spec, prosecution history, or testimony, and therefore CAN be “informative” of the meaning of terms in an independent claim.

    Ridiculous. If the spec, prosecution history or testimony indicate that claim 1 couldn’t possibly cover walnut, then it doesn’t and claim 2 is invalid for being improperly dependent.

    Otherwise, what’s the point of prosecution history estoppel, or indeed of anything we do in prosecution?

  210. 38

    The machines information processing machines are described at teh same level of funtionality as a hinge. A hinge is fine in a claim. A method with steps defines a scope of structural machines. That is fine.

  211. 37

    IANAE–

    I disagree with your first conclusion that added limitations in dependent claims ARE not “informative” of the meaning of terms in the independent claim.

    At the very least, the fact that the board of claim 2 is walnut evidences by implication that the board of claim 1 includes walnut boards.

    Such evidence is always material to the scope of claim 1, even in view of evidence to the contrary from the spec, prosecution history, or testimony, and therefore CAN be “informative” of the meaning of terms in an independent claim.

  212. 36

    Additionally, Ned, with information processing methods and machines that made to implement the information processign methods: What are the machines that are being precluded by these claims?

    You see, the situation has changed, a sea change. What is described in Benson and Haliburton is no longer how it works. You describe some abstract nonsense that does not correspond to the reality of the engineering.

  213. 35

    The discussion of what was invented vs the claim language is sadly lacking reference to the Supreme Court’s “claim as a whole” rule in Diehr. Falling back on “the underlying invention” is sometimes used as a way to ignore claim limitations. See, e.g., Cybersource decision of CAFC. Prosecuting attorneys have as much to worry about if the courts can ignore what they put into the claim as they do if the courts attribute significance to what they did not put into the specification.

  214. 34

    You are trying to cram information processing methods into this square hole.

    The fact is that information processing methods are the structure. The method is message.

    You want to go back to a pre 1930’s view of information and symbol representation. The world has changed. Iron age thinking must change.

    I do think you may have mad cow disease.

  215. 32

    I agree that this is one problem with claim construction–using restrictive claim construction to solve a problem that should be dealt with under another basis of invalidity. If a claim say “a fastener,” this term should be interpreted to encompass any and all fasteners (unless the term is defined in the specification otherwise). If the inventor has failed to enable all of the encompassed fasteners, then invalidate the claim on this basis.

  216. 31

    As Papa Bear stated someone’s been eating in my Bowl= Big bowl
    Mama Bear stated someone’s been eating in my Bowl= medium Bowl
    Baby Bear stated someone’s been eating in my Bowl and they ate it all up. Baby Bear’s Bowl is small. But funny thing they are all the same. They are all connected to each other. They are all the same. They all do the same thing. The only difference is they are different sizes. Of course they don’t fold. But they all do the same thing. And the “Utility” is holding food. I wonder if Baby Bear really belongs to Mama and Papa? Maybe I’ll just take a nap in one of theses Beds, and dream about finding my way out of these woods.

  217. 28

    I share the interest in knowing what happened in the moot and what the outcome was.

    As to the outcome of Nystrom v Trex nowadays, we are told that if equivalents are to be covered and are foreseeable they should be set out in the specification. So the draftsman SHOULD have set out the materials of which the board might be made, if not under previous practice then at least under current practice.

    Typhoon Touch is a useful decision insofar as it indicates that the needed algorithm cab be a verbal description and does not have to be a flowchart. As an exercise in claim interpretation, the length of time it takes to come to a conclusion about the meaning of keyboardless would probably surprise somebody working in the computer field and is perhaps over-elaborate but is not untypical of what one reads on both sides of the Pond. An Englishman, though would want to know not what the words mean but what the patentee meant by the words (there is a subtle but important difference)

  218. 27

    > It would have been less sad if the inventor had actually invented such an invention involving such a board.

    In my experience the inventor typically brings up one or two very detailed embodiments of the invention. Also the inventors I meet are so skilled that to them various variations are so obvious to them that they do not bother to mention it, just like most people do not discuss the air; it just is there around us all the time.

    It is then up to whoever is drafting the application to ask, does feature A have to be made of X or could it be made of Y? Each and every feature has to be reviewed for necessity, level of abstraction and more. This is not inventing on the part of the patent application drafter, simply getting to the heart of the invention.

    And that, sadly, appears not to have been reached here.

  219. 26

    Some might be bored by now, with boards. So, here’s a fresh tickle.

    There is also a lot of fun to be had with words in claims that mean one thing to a mathematician and another thing to the relevant PHOSITA, words like cylindrical, conical, co-axial or concentric. Bit of a lottery, eh, what the court decides they mean, and it can be of decisive importance for people like stent designers, who would design around and require legal certainty.

    What delivers more certainty in a claim than words of mathematical precision? What’a a poor claim drafter to do, to best serve the interests of his client? What’s a poor FTO opinion writer to do, to serve his client best?

  220. 25

    All the words in the post, and no simple statement of whether the result as affirmed or reversed?

  221. 24

    MM: “What if the dependent claims recited “wherein said board is walnut,” “wherein said board is treated to prevent wood-boring insect damage,” etc. These aren’t informative as to the meaning of “board”?”

    No, they’re not informative as to the meaning of “board”, because “board” literally includes all those and more. The board of claim 1 could still be plastic, steel, or composite even if the board of claim 2 is walnut. The dependent claims are just examples, and they don’t limit claim 1 any more than examples in the spec limit the claims.

    MM: “Where exactly does a “board” end and a “sheet” or a “stick” or a “block” begin? These things could matter.”

    That is a legitimately interesting question of claim construction. I would ideally resolve it based on suitability for the other limitations recited in the claim, failing an explicit definition in the spec. But also, I wouldn’t worry about it too much until an accused infringer comes along with something that is arguably the wrong shape to be a “board”.

    MM: “Patents are legal documents.”

    Fair enough, but if you had a contract or a statute saying that you can’t hit people with boards (or whatever), it would be pretty silly to debate whether that means wood boards or boards of any material composition. Even if a greater penalty is provided for boards made of walnut.

  222. 23

    Malcolm and IANAE have never discussed Halliburton or this topic.

    Wow, I’m impressed that you pay such close attention to my comments… or strive to anyway.

    However, I’m certain I’ve discussed claim construction and Halliburton with Ned (and others) before, numerous times. His characterization of my views is essentially correct.

  223. 22

    Restricting “board” to wooden boards is no more acceptable than restricting “body” to one-piece bodies. It doesn’t matter what’s in the dependent claims.

    With respect to the latter sentence, that simply can’t be true. What if the dependent claims recited “wherein said board is walnut,” “wherein said board is treated to prevent wood-boring insect damage,” etc. These aren’t informative as to the meaning of “board”?

    Note: I’m not saying the right decision was reached in the actual case. I’m just saying that the wrong decision was easily avoided and it doesn’t make me “sad” to know that I have to be careful when drafting claims and specifications to avoid having a court construe my terms unnecessarily narrowly.

    For what it’s worth, I understand the sentimement you expressed earlier:

    Must we point out that every single component could be made of any suitable material? Could be of any suitable color? Could be a little bit bigger or smaller? Does that really add anything to a spec addressed to a person of skill in the art?

    And my answer to those questions would be: it depends.

    Yes, but where does it end?

    It doesn’t. There will always be close questions of claim construction in some cases. But proclamations such as “dependent claims don’t matter” are pretty much equivalent to throwing a wrench into the machine, assuming that the goal is to maximize the rate of fair and reasonable outcomes.

    Lastly, I have no idea what you mean when you say that “a board is a board.” Where exactly does a “board” end and a “sheet” or a “stick” or a “block” begin? These things could matter.

    Patents are legal documents. That’s true in spite of the fact that a lot of computer-implemented claims look like they were written and examined by twelve year olds who seem to believe that the earth was created two days before they were born.

  224. 21

    Deluded, It is Malcolm’s and IANAE’s expressed position that claims not be limited to the corresponding structure and equivalents to preserve validity. If, after they are construed properly, if there remains a problem with 112, p.1, or with 101, 102, or 103, they would hold them invalid.

    While they have never discussed Halliburton, the point of Halliburton, even as discussed in that case, was the Supreme Court would not abide a narrowing construction to preserve the validity of the claims as argued by the patent owner and as construed by the lower courts. They construed the claim in that case for its full scope. But as such, the claim clearly claimed beyond the scope of enablement, as the inventors there had not invented all apparatus that could perform the recited function defined by the novel element.

  225. 20

    MM: “The professional skilled artisan and the professional skilled prosecutor RECOGNIZE THE INHERENT AMBIGUITY and if they use the term in the claim they remove the ambiguity (unless they’d rather “keep ’em guessing”).”

    See, this is one of those times where I feel you’re being overly pedantic. It’s not a question of ambiguity, it’s a question of generality. A board is a board, whether it’s made of wood, composite, plastic, steel, or even frozen milk under the right circumstances. They all do pretty much the same thing in the same way, and we don’t need a million patents individually pointing that out.

    A builder probably wouldn’t understand the term to cover frozen milk, but for all we know the only reason for that is because it won’t stay frozen long enough to be commercially viable. Might make a half-decent igloo, though. We’ll deal with that issue when we find an accused infringer using frozen milk boards.

    Restricting “board” to wooden boards is no more acceptable than restricting “body” to one-piece bodies. It doesn’t matter what’s in the dependent claims. This claim literally recites a board. If the patentee wanted to claim only a wood board, it’s not like he didn’t have ample opportunity to do so. Let’s look at the right he asserts (the claim he drafted, construed using some sense), and decide whether he’s entitled to it.

  226. 19

    IANAE Or can we agree that construing “board” to require wood and exclude wood substitute is a little much?

    It’s not necessarily “a little much.” It may be “just right.” When I hear a builder talking about picking up some boards, I’m thinking he’s talking about wood boards but we’d both readily acknowledge the fact that he could (theoretically) be referring to boards made of composite materials, plastic, frozen milk, or steel. The professional skilled artisan and the professional skilled prosecutor RECOGNIZE THE INHERENT AMBIGUITY and if they use the term in the claim they remove the ambiguity (unless they’d rather “keep ’em guessing”).

    An unqualified board should be anything board-shaped

    “Board-shaped.” Another awful term.

    It doesn’t make me “sad” that professionals need to learn to avoid using ambiguous terms (unless they are seeking to be ambiguous). It does make me “sad” that PTO Examiners don’t always recognize the ambiguity and force a fix at the prosecution level, and it makes me “sad” that the Federal Circuit can’t stop mucking up the law with respect to claim construction.

  227. 17

    This definition suggests that there may be something that could be called an “unclaimed invention.”

    There is. That’s the stuff you save for your reissue application. ;)

  228. 16

    That is the approach also advocated by Malcolm and IANAE.

    Really? Since when? Malcolm and IANAE have never discussed Halliburton or this topic.

    Ned, I think that you are alone in this.

  229. 15

    The understanding I have of “unclaimed invention” is anything that the applicant has provided in the application, but has not claimed.

    After two years (the window for broadening reissues), this material was dedicated to the public.

  230. 13

    When I learned patent law at the Examiner training classes and in law school in the 1970’s, I was taught that each claim is a separate invention. Basis is the language of 112¶2.
    I was also taught that, prior to the 1952 Patent Act, that claims were often rejected/invalidated as “lacking invention.” Again, I was taught that the 1952 Patent Act was passed, in part, to change this terminology.
    A patent application is submitted with one or more claims, each claim setting out what the applicants regards as his invention. If a claim meets the requirements of the patent statute (primarily 101, 102, 103 and 112), the claim is a “patentable” claim.
    I have read no cases that change any of this.

    One of my concerns about the new patent statute is the definition of “claimed invention.” This definition suggests that there may be something that could be called an “unclaimed invention.” It’s not nice to add more confusion.

  231. 12

    IBP, your basic premise is that since the inventor defined what he regarded his invention to be in the claims, the claims must be given their full scope for infringement purpose, or if that is completely unreasonable given the scope of disclosure, declare the claim invalid under 112, p.1 for failure of written description and enablement.

    What you say here, represents the exact holding in Halliburton, where the Supreme court would not abide functional language (or broad generic terms) at the point of novelty because they literly covered not only all equivalents of the disclosure, but also the independent inventions of others.

    That is the approach also advocated by Malcolm and IANAE.

    I understand it, and think it right in the abstract. But in practice, it might be better to simply apply the thinking of Rich here and construe the claims to cover the corresponding structure and equivalents.

  232. 10

    I see that I’m not the first commenter on this thread to re-post something from the lost Retractable Technologies thread…the plot thickens…

  233. 9

    Since Dennis raises afresh, with apparent approval, Moore’s dissenting opinion in Retractable Technologies, I feel it fair to re-post something I first posted on the Retractable thread:

    “In an earlier post, I stated my belief that there were both institutional and individual problems impeding progress in patent jurisprudence.

    With due respect to Judge Moore, it seems to me that in her written opinion in Retractable she directly contradicts one of the central points she is trying to make in that very same opinion.

    She opines that “The error in Retractable is the majority’s attempt to rewrite the claims to better conform to what it discerns is the “invention” of the patent instead of construing the language of the claim.”–that is, it is unacceptable under Phillips to “change the plain meaning of a claim term to tailor its scope to what the panel believes was the ‘actual invention'”.

    However, earlier in her opinion, she appears to suggest doing exactly that when performing a 112p2 analysis. In fact, the manner in which she discusses “metes and bounds” might call into question her understanding of the definite claim scope requirement of 112p2.

    This is what she said: “If the metes and bounds of what the inventor claims extend beyond what he has invented or disclosed in the specification, that is a problem of validity, not claim construction.”

    To my mind, the necessary implication of this statement is that in order to assess the metes and bounds of the claims, one must advert to an entirely extrinsic identification of “the invention”–i.e. to assess the metes and bounds of the claims, one must compare them to “what the inventor actually invented”–which is precisely what Moore advocates against doing.

    The “metes and bounds” are not judged WITH REFERENCE to “what the inventor has invented”–they DEFINE it! Moore herself says so in so many words: “It is clear that the words of the claim define the scope of the patented invention.”

    Should Moore’s words be construed to preserve the internal consistency of her opinion? Did she just conflate the “metes and bounds” requirement with the “enablement” requirement, or does she really not understand the “metes and bounds” requirement? As I understand it, the “metes and bounds” requirement demands that the scope of the claims be clearly and definitely defined, and as such, they can NEVER “extend beyond what the inventor has invented”, as stated by Moore.

    Whatever happened in this part of her opinion, Moore either expressed a misunderstanding of a basic patent validity requirement, or was very inarticulate about a key point of the opinion, or both. She has just exacerbated one of the very problems she claims to want solved regarding claim construction.

    The opinion isn’t totally useless of course–but this point does, IMHO, illustrate well an apparent lack of rigor in the expression of some CAFC opinions.

    While I applaud Moore for being on the right track, I call upon the CAFC to write better opinions.

    After all, they’re not writing blog posts.

    This part of her opinion, at least, is to my mind an impediment to the progress of patent jurisprudence.”

  234. 8

    MM: “Yes, it is an incredible burden on us prosecutors to write that “X can be composed of any material.””

    Yes, but where does it end? Must we point out that every single component could be made of any suitable material? Could be of any suitable color? Could be a little bit bigger or smaller? Does that really add anything to a spec addressed to a person of skill in the art?

    Or can we agree that construing “board” to require wood and exclude wood substitute is a little much? An unqualified board should be anything board-shaped, and if that’s too broad for the patentee to claim, he’d better hope claim 2 fares better.

  235. 6

    it is also sad that such a major weight is placed on non-inventive boilerplate language

    Yes, it is an incredible burden on us prosecutors to write that “X can be composed of any material.”

    C’mon, Dennis.

  236. 5

    This is all rather simple:

    Old elements of a combination can be and ought be given a liberal construction.

    A new element needs a narrower construction, lest the claim be construed to encompass subject matter the inventor not only did not describe, but did not enable.

    Such has been fundamental law for ages. The Federal Circuit wrestles with it because it refuses to recognize the difference between old and new elements of a combination.

    Simply review the history and background of 112, p.6. Read In re Fuetterer, particularly at note 11. The CCPA (Rich) knew that when a claim was functional at the point of novelty, the Supreme Court required that the claim be construed to cover the corresponding structure and equivalents, citing Westinghouse v. Boyden Power Brake.

    Why?

    Because to not construe such claims to cover the corresponding structure an equivalents would permit the claim to LITERALLY cover the independent inventions of others, a violation of the very purpose of the patent law to promote the progress in the useful arts.

    I understand the Supreme Court has asked the government to file a brief on this very issue in a case where the Federal Circuit held a claim to be infringed under the DOE when the equivalent was itself was patented. That decision makes a mockery of 200years of Supreme Court jurisprudence in this area.

  237. 4

    shhhhh Inviting, that thread contained a link to the Kleenex delivery to Mr and Mrs Ned Heller and Malcolm Mooney as to the following:

    In Typhoon Touch Technologies, Inc. v. Dell, Inc., __ F.3d __ (Fed. Cir. 2011)(Newman, J.), the court reversed a trial court’s invalidity ruling that means-plus-function claims referencing an algorithm are invalid where no algorithm is disclosed. The panel accepted the argument of the appellant-patentee “that the specification contains adequate algorithmic criteria… to perform the computer-implemented function”. Typhoon Touch, __ F.3d at __

    112 p6, just not what it is all cranked up to be.

  238. 3

    Invention as claimed” – like that phrase was not worn through the ground on this blog!

    A Kewpie Doll to the first poster that identifies the blogger who used that phrase (with identification of the target poster of who was the recipient).

  239. 1

    “The sad thing about Nystrom’s patent is that he would have easily won the case if the patent attorney who drafted the application had thrown-in language indicating that a “board” could be made of various materials, not just wood cut from a log. ”

    It would have been less sad if the inventor had actually invented such an invention involving such a board. Since they didn’t I find that story not sad at all.

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