By Dennis Crouch
Motorola Mobility v. ITC and Microsoft (Fed. Cir. 2013)
In a short opinion, the Federal Circuit has affirmed the ITC’s judgment that Motorola infringes Microsoft’s Patent No. 6,370,566 covering a mobile device having a “personal information manager.”
The most interesting part of the decision comes from the court’s analysis of the Apple Newton MessagePad device. Motorola had argued that the Newton anticipated the ‘566 patent. The ITC found that, while it was “plausible” that the Newton contained the claimed synchronization feature, that Motorola had failed to fully prove that limitation was practiced by the Newton. In particular, the ITC concluded that the “inference of a possibility” did not rise to the level of clear and convincing evidence. On appeal, the Federal Circuit affirmed – finding that “substantial evidence supports the Commission’s conclusion that Motorola did not present clear and convincing evidence that the operating system necessarily required any additional capacity that would qualify it as a component ‘to synchronize.’ Inherency requires more than probabilities or possibilities.”
The bad trick here is that Motorola pursued anticipation-by-inherency rather than proving that the Newton was actually used in an anticipating manner. As the Federal Circuit wrote, “inherency requires more than probabilities or possibilities” but instead requires that the limitation in question be a necessary consequence of using a device for its intended purposes. As Janice Mueller writes in her treatise: Stated another way, [inherency occurs when the] practice of the prior art reference would inevitably have resulted in the claimed invention.” Bottom line here is that anticipation-by-inherency can be quite difficult to prove well beyond the already difficult hurdle of clear-and-convincing evidence.
The ITC issued an exclusion order that blocks importation of foreign-manufactured Motorola phones that infringe the ‘566 patents. It is unclear to me at this point which phones and Android operating systems are covered by the exclusion order.
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The ‘566 patent stems from a 1997 application and claims:
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1. A mobile device, comprising: an object store; [i.e., a section of memory used to store records] an application program configured to maintain objects on the object store; a user input mechanism configured to receive user input information; a synchronization component configured to synchronize individual objects stored on the object store with remote objects stored on a remote object store; a communications component configured to communicate with a remote device containing the remote object store; and wherein the application program is further configured to generate a meeting object and an electronic mail scheduling request object based on the user input information. |
It seems like this makes a loophole for the PTO to make inherency rejections. The opinion says it is not unreasonable to infer the existence f the synch feature even if not expressly disclosed, but that the ITC had substantial evidence to believe that Motorola did not meet the clear and convincing standard for establishing that the allegedly inherent feature had to exist given the disclosed feature. The PTO, on the other hand, only needs substantial evidence when making a rejection. So if the PTO had asserted that the feature was inherent, then on the same facts Applicant would have lost on appeal. After all, the PTO only has to meet the substantial evidence standard. So there is a double standard at work here.
“The PTO, on the other hand, only needs substantial evidence when making a rejection. “Not exactly. During examination, the examiner has to establish all facts that are relied upon in making the rejection (i.e. the facts establishing the scope and content of the prior art, the facts establishing the differences between the claimed subject matter and the prior art, and in the rare circumstances when it’s done, the facts establishing the level of ordinary skill in the art) by a preponderance of the evidence. The Board has to review the evidence supplied by the examiner to determine if the burden of a preponderance has been met as to each factual element.On appeal, the Fed. Cir. will review the Board’s findings for substantial evidence.
AAA JJ, if the examiner shows that the element exists using circumstantial evidence, the applicant cannot simply say he has not established a prima facie case. The burden of production shifts.
Ned,The burden of persuasion on the examiner is a preponderance. The examiner has to produce evidence that establishes that it is more likely than not that the claimed feature was within the scope and content of the prior art. That burden of persuasion remains on the examiner throughout the entire prosecution. See Oetiker.
The burden on the examiner is a preponderance. The examiner has to produce evidence that establishes that it is more likely than not that the claimed feature was within the scope and content of the prior art. That burden remains on the examiner throughout the entire prosecution.By analogy to the prima facie case of obviousness, if the Examiner makes a prima facie case and the Applicant simply says “NO NO NO NO NO NO!” and nothing else, then the “preponderance of the evidence” standard has been met by the Examiner. In other words “prima facie evidence” weighs more than “temper tantrum.”
You really s#ck at this, Examiner Mooney.When the examiner states, “The reference doesn’t disclose claimed feature x, but it is inherent” that is not a prima facie case. The examiner has to present evidence and technical reasoning, not merely conclusory bald faced statements, to establish that a feature is inherently within the scope and content of the prior art. Pointing out that the examiner has provided zero evidence, or arguing that the evidence and reasoning provided is not sufficient to establish, by a preponderance, that the feature is within the scope and content of the prior art is not a “temper tantrum.” It’s the appropriate response.
meh balete this
“The examiner has to present evidence and technical reasoning”Actually “or”.
The examiner has to present evidence and technical reasoningI never said otherwise.Pointing out that the examiner has provided zero evidence … is the appropriate response.Only if the response is truthful and there is an explanation as to why the Examiner’s evidence or argument is incorrect. Again, merely telling the Examiner “no” does not put the burden back on the Examiner.You really s#ck at thisSame to you, xxxhole.
For the examiner to merely say, “it’s inherent” does not shift the burden to applicant. Keep s#cking, xxxhole.
“The examiner has to produce evidence that establishes that it is more likely than not that the claimed feature was within the scope and content of the prior art.”Funny you should say that because in establishing inherency the examiner has to produce evidence that establishes that it is 100% likely that the claimed feature was within the scope and content of the prior art.
“in establishing inherency the examiner has to produce evidence that establishes that it is 100% likely that the claimed feature was within the scope and content of the prior art.”Not quite. The examiner has to produce evidence that establishes that the claimed feature is necessarily present in whatever prior art disclosure is being relied upon. It’s not good enough to establish, even clearly and convincingly, that the claimed feature could possibly be present.
Indeed, perhaps I wasn’t clear enough that I was talking about the scope and content of the prior art before you.
“The Board has to review the evidence supplied by the examiner to determine if the burden of a preponderance has been met as to each factual element.”Horse sht, looks to me like they just decide the facts de novo in every case I see. Then in so doing they decide, themselves if the preponderance has been meet or not, if they even decide to try to find the fact. In either event, Tino is quite correct that the PTO standard is different, though it wasn’t this case that started that.
Agreed. In the PTO, the examiner wins based on the Fed’s reasoning. If the presence of the sync component is more likely that not, based on the evidence, then I think the applicant has to provide evidence that the implication is not in fact true.But this is not really a change in the law, is it?
It seems like this makes a loophole for the PTO to make inherency rejections.More like a “loophole” for the Federal Circuit to avoid using its collective brainpower to tank a junk patent.
Throw into the discussion (because the anti-software folks won’t): the “inherency” of a device “built to be changed” (and note the inherent contradiction with the Morse case and the typical attempt to claim all future improvements…)
The phrase “built to be changed” is just more functional language. I’m not sure what your point is and I’m sure you can’t be bothered to explain yourself.That said, I (and others who think that software patents are junk) routinely bring up the fact that programmable information processing devices are capable of processing any kind of information that those machines are programmed to process. That includes information about “meeting times”. And, yes, “meetings” inherently includes meetings where “copyrighted media” is being discussed in addition to any other topic that anyone has ever imagined or will imagine in the future. See how that works?
Yes, and test tubes are capable of mixing all forms of chemicals ergo anything that can be done in a test tube is anticipated. And, let’s not forget that steel is suitable for all sorts of shapes so that any device built with steel is anticipated.MM: can’t you get a clue.
test tubes are capable of mixing all forms of chemicals ergo anything that can be done in a test tube is anticipated.Nice non-sequitur.
No it is directly on point.
LOL – talk about non sequiturs….Dump truck? really?You are doing that Accuse-Others-Of-That-Which-You-Do thing again (hint: think exceptions to the printed matter doctrine and functionally related).
hint: think exceptions to the printed matter doctrine and functionally relatedHint: if you have a coherent argument to make, then make it. Otherwise focus on that fingerpainting project the nurse gave you.
We both know the coherent argument Malcolm.Tell me again what is the controlling law in regards to the exceptions to the printed matter doctrine. Don’t be bashful.
We both know the coherent argument Malcolm.Patent Jeebus can read everyone’s mind! Bow down!If anyone out there knows what anon is talking about and can articulate his argument for him, please go right ahead. He needs your help badly right now.
steel is suitable for all sorts of shapes so that any device built with steel is anticipatedSeveral points leap to mind.First, we’re not talking about world where “steel” is in the prior art and the claim at issue describes, in structural terms, a “new” device that’s made of steel.We’re talking about a world where prior art machines can be programmed to process any kind of information in the prior art, regardless of the source of that information, and the claim at issue just recites a “new” information processing function for that machine, in functional terms. Similarly, a dumptruck is inherently capable of carrying any kind of gravel, regardless of whether the gravel came from Mr. Slate’s quarry or Fred’s backyard. A “limitation” about the source or the color of the gravel that the machine is capable of carrying is a meaningless “limitation.”So, too, is a “limitation” in an information-processing device claim that recites the device’s capability to process information about a “scheduling request.” It’s a sad joke is what it is. Someday we’ll all look back at this garbage and shake our heads.And for crying out loud, if that kind of functional junk is not inherently anticipated, it sure in heck is obvious.
1) Functional claims describe a clear set of solutions to those skilled in the art. Just go look at a specification for a computer system. Written in functional language. So, you contend that people are specifying systems with no meaning being conveyed by these documents. Again, outrageously ridiculous. 2) general purpose computers are just a tool to accomplish the processing of information. How to process the information is the trick. 3) So, according to you a Turning machine anticipates all possible computable functions. Or (in your 5th grade language) some processor that can perform 4 functions anticipates a machine driving a car or a machine writing appeal briefs better than a human. That makes no sense.These ignorant arguments you present to appeal to the mob are both transparent and annoying. Face it your arguments sound so nice and so cozy as then we don’t have to deal with real problems or real life. A nice little bed story to children is what you tell.Your arguments are nothing more than saying a hammer anticipates anything built with a hammer. Or that everything built with a transistor is anticipated by the invention of the transistor because transistors were meant to change or process electricity. It really is not a debate with you. You are fabricating fairy tales that do not reflect science, engineering, or patent law. And, really MM you don’t think that your nonsense is bought by anyone other than your fellow policy pushers and paid bloggers do you?
Functional claims describe a clear set of solutions to those skilled in the art. Just go look at a specification for a computer system.”The earth is flat. Just go look at the books that say the earth is flat.”
Wow, what a come back. Ignore the substance of what I said and what those skilled in the art say and just keep pushing nonsense to achieve policy goals.
Ignore the substance of what I saidI didn’t ignore the “substance” of what you said. You made a circular argument and I threw it right back at you. Try again.
LOL – more of that Accuse-Others-Of-That-Which-Malcolm-Does…
MM read what I wrote above. It reflects reality. It reflects how information processing is understood by those skilled in the art (such as myself.) Your arguments are gibberish. Tell us more about how each time I write a computer program that I am capturing a natural law. (I.e. Benson and your old arguments about 6 years ago.)
read what I wrote above. It reflects reality.It’s a reflection of your desire to maintain a status quo which was created to coddle an industry that didn’t need coddling then, and certainly doesn’t need coddling now.t reflects how information processing is understood by those skilled in the art (such as myself.)I understand “information processing” at least as well as you do. Get off your high horse before you hurt yourself.
You understand information processing at least as well as I do? OK. Tell us about the Church-Turing Thesis and computable functions. Throw in a short discussion about Godel too. Funny, just the other day you were mocking the Church-Turing Thesis.
just the other day you were mocking the Church-Turing Thesis.No, I was mocking you. Or more accurately, I was mocking your obsession with bringing up the CTT in every other comment, as if it is the Most Important Thing Ever for ensuring the patentability of new methods of using a computer to alert Johnny’s mommy when Johnny crosses the state line to buy a beer with Mommy’s bitcoins.
MM: it is squirting out your ears.
How to process the information is the trick.Right, and the “how” is exactly what’s absent from the claims which merely recite the functions achieved by a computer that has been programmed and debugged. according to you a Turning machine anticipates all possible computable functionsHere we go again with your “Turing machine” baloney. Wank away, brother.
Similarly, a dumptruck is inherently capable of carrying any kind of gravel,Such is completely inapposite. Even ignoring your own well-documented self-volunteered self-admissions against self-interest (they’re in the archives, honest), you can’t compare computers to dump trucks. They’re a series of tubes.
LOL! What’s even funnier, IANAE, is that one of the knee-jerkers gave you a “downvote”. Apparently they don’t like other people stealing their “special” arguments.
Apparently they don’t like other people stealing their “special” arguments.Too bad, because I’m stealing anon’s argument that downvotes prove how right my post is. Yup, “special” is the word for it.
anon’s argument that downvotes prove how right my post isHe actually said that? LOL.
Poor IANAE,Clearly you are tired of being drubbed directly by me and suffering all of those Calvinball face spikes and are willing to sign up for anything anti-anon.But really, try to place my downvote comment in context. When I receive downvotes from particular people (you especially), that does tend to prove my post is correct. Seeing as your posts are so often shown to be without merit.As to Malcolm, try something slightly original and maybe on point with the law. You know, like I keep on inviting you to (still a chance for you to share your understanding of Chisum).
try to place my downvote comment in contextROTFLMAO
Is that a “yes” you will actually provide something of substantive value?Of course it is./eyeroll
“And, yes, ‘meetings’ inherently includes meetings where ‘copyrighted media’ is being discussed in addition to any other topic that anyone has ever imagined or will imagine in the future. See how that works?”You forgot about the part of the effect induced because of a functional relationship.Funny, that’s the same part that is related to what you volunteered an admission as to knowing what is controlling law in the exceptions to the printed matter doctrine.Actually, that’s not very funny. It’s very hypocritical. You know what the controlling law is. You know that it contradicts your position, you have admitted knowing that it contradicts your position, and yet, you insist on posting arguments that fail because of that controlling law. Repetition ad nauseum.
you volunteered an admissionSure I did. Meanwhile, back on planet Earth …
I know you want to imply this as a smarmy answer, but the plain fact is that you have volunteered an admission as to what the controlling is (and what it means) with the exceptions to the printed matter doctrine.As they say: sucks to be you.
you have volunteered an admissionYou are a lying sociopath who needs medical attention.
LOL – not at all Malcolm, not at all. But please, keep digging.
not at all Malcolm, not at all.Yes, anon, yes.please, keep digging.How about I just fabricate some “admissions against interest” that you’ve made and then smear you with them ever time I see you post anything? You know: do exactly what you do to everyone here you disagree with (when you’re not just simply insulting them)? Would you like that, anon? Because that’s what you’re going to get until you’re permanently banned from commenting here, which should have happened a long time ago.Go ahead, anon. Tell everyone how you’d like to play the game.
Are you saying that you do not know controlling law and the exceptions to the printed matter doctrine?Are you saying that you have not admitted to knowing such?Why the dissembling, Malcolm?
Malcolm: “My dissembling is perfectly clear”Corrected for accuracy.
Anon, I have no problem with this patent claim as claiming ineligible subject matter. A mobile device is being claimed – with the software being integral part of that device. The claims do not claim a generic computer that executes a program. The claims claim a mobile device that has as part of its structure, novel software. This is entirely different.
“The claims do not claim a generic computer that executes a program. The claims claim a mobile device that has as part of its structure, novel software. This is entirely different.”I can’t tell if this is sarcasm.
It’s easier to understand if you assume that it’s sarcasm, that’s for sure. “Entirely different”? Or “different in a really subtle way that is pretty much impossible to describe but if you want to believe that the patent is valid you can find a way, in your gut, like the Federal Circuit did.”Odd that the word “software” doesn’t appear in the claim. I do see the word “component”, though. Oh but wait! There’s an “active transitive verb” in there, too, I think. That’s important. You can sense it.
Ned,A better discussion might be concerning the last wherein clause (of course, this just might be a drafting nit, and will not serve to ban all software patents as the anti-software folk want – hence the constant 101 nuclear bomb desire).Is that last clause limiting? Just intended use?Don’t forget, ‘configured to’ is structural language.
“Anon, I have no problem with this patent claim as claiming ineligible subject matter. A mobile device is being claimed:”Ineligible or not patentable, Ned – there is a critical difference (as last noted by the Supreme Court in Prometheus). Please state why you think a mobile device fails the express machine category of patent eligible subject matter, and include proper legal citation to support your position.Further, let’s debunk your implicit fallacy of ‘using’ in the form of a machine executing software.This has been pointed out to you before. You do not ‘magically’ get to have software appear out of nowhere on a machine. The machine must first be changed and configured with software before you can execute said software. Doing so – in the step you repeatedly ignore – creates a new machine. See Alappat.
anon, you will note that I said it was eligible.
Ned, You will note that my direct quote of yours indicates that you said “ineligible.” If you meant to say “eligible” that is another thing.
You do not ‘magically’ get to have software appear out of nowhere on a machine.Unless you’re a patentee, of course.
LOL – no. Try again.Better tro11ing please.
Please state why you think a mobile device fails the express machine category of patent eligible subject matter”Please state why you think a chemical fails the express composition category of patent eligible subject matter.””Please state why you think a process fails the express process category of patent eligible subject matter.”The law has sort of moved on since State Street Bank, in case you haven’t noticed.
Who cares about State Street?See Bilski, see the first case post Bilski at the CAFC that reconfirmed Alappat.Better tro11ing please.
See BilskiBilski found a process ineligible, in spite of the fact that “processes” are listed in 101. Likewise with Prometheus. And then there was Myriad, involving a man-made composition of matter: also ineligible.So there are no “magic words.” Reciting a “machine” does not make a claim eligible subject matter. It’s the other words that matter.Can you claim a new function for an otherwise old composition merely by reciting the old composition and its new function in the claim, and end up with an eligible claim? I don’t think so. And no Supreme Court decision says otherwise, unsurprisingly.
LOL – nice strawman, Malcolm.But an “otherwise old composition” when combined with a new manufacture and changed into a new machine is quite different, isn’t it?Add:”And no Supreme Court decision says otherwise, unsurprisingly.”Nice dissembling. We’ve talked about the fact that the majority of controlling law has not been in front of the Supreme Court. Your intimation that such is not ‘real law’ is a fallacy. Please stop posting in such fallacious manner.
I can only imagine the super technical and detailed structural construction given to the term “synchronization component.” That construction must have been heavily analyzed by the Federal Circuit, given its importance to this case. There’s already an (old) “communication component” allowing the device to “communicate” with a remote data storage device. It must require some really ingenius and new-fangled electronics way back in 1975 (when this application was filed) to allow a computer to update a local memory based on data that was obtained from a remote device.Or not.
Actually synchronization is an inherently impossible problem to solve absolutely correctly in the general case. There are several mathematical proofs of the insolubility of the various aspects of the dilemma — starting with Two Generals and moving on to general ACID compliance — since it is, after all, a mathematical problem. Various techniques and compromises are known and practiced widely and some are quite complicated.Apple has suffered from high profile failures of its Core Data Sync that have been losing data for customers over the past few years.So not only §103 but also §112 should be enough to knock the claim down. (That’s to say nothing of §101 — of course the ‘novelty’ claimed is not a process, machine, manufacture, or composition of matter but rather an abstract idea of functionality.)
So, the distinguishing feature of the claim is “a synchronization component configured to synchronize individual objects stored on the object store with remote objects stored on a remote object store”.Regarding this feature Motorola had produced a Newton connection utilities manual (as far as I understand, this is a program that can be loaded and run on a desktop computer), which stated that the Newton Connection Utilities work with the Newton 2.0 operating system and that synchronization may be initiated using the Apple Newton MessagePad (p. 9 of the decision). Furthermore, Motorola had an expert testifying that he synchronization function disclosed in the Newton Connections Utilities manual required the execution of software on the Apple Newton MessagePad (p. 8 of the decision).Maybe I am oversimplifying things, but if I have software running on a computer to synchronize local data with mobile data, there must necessarily be another piece of software running on the mobile device closing the communication loop and reading/writing data on the mobile device, depending on which data is to be synchronized on which device. Considering that the term “synchronization component” is purely described in term of its function and was not construed in any specific way (p.7 of the decison), it is not clear to me why this case was decided this way. I notice that the Court comments (again p.7) that “[g]iven the use of an active transitive verb with the mobile device component as the subject, that meaning requires something more than whatever software may be needed simply for the mobile device to operate at all and to act entirely under the control of another device”, but unfortunately it is not apparent to me what kind of “something more” they had in mind…
“it is not clear to me why this case was decided this way.”Because when it comes to computers the courts become complete ta rds.