The Supreme Court agreed today to hear four new intellectual property cases this session: Two patent cases, a copyright case, and a trademark case:
- Nautilus v. Biosig Instruments (13-369): what is the proper standard for indefiniteness.
- Limelight Networks v. Akamai Technologies (12-786): Does inducement require underlying direct patent infringement infringement by another as a prerequisite to liability.
- ABC, Inc., v. Aereo, Inc. (13-461): when does an internet transmission count as a “public performance” under the copyright laws?
- POM Wonderful v. Coca-Cola (12-761): Who has standing to challenge a food or beverage label as misleading or false under the Lanham Act.
The cases should all be decided by the end of June 2014.
We need a clear test if the Supreme Court is going to overrule the Federal Circuit’s test. May I suggest that if a claim is otherwise indefinite because it is functional within the meaning of United Carbon Company v. Binney & Smith Co., 317 US 228 (1942), then it be construed to cover corresponding structure, materials and acts as provided by §112(f); and if even then one cannot tell the meets and bounds of the invention because the specification lacks clarity in terms of what the structure is, as in United Carbon, then and only then should the claim be declared invalid under §112(b).We must recognize that Supreme Court has taken a harsher view on functional claims, declaring them indefinite even if they could be construed to cover corresponding structure and equivalents. See, Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S. Ct. 6, 91 L. Ed. 3 (1946). But Congress intended to overrule Halliburton when it passed §112(f) in 1952. Implicitly, this authorizes functional claims but with the construction given them by the statute. It is only when the specification itself does not supply the necessary definiteness that the claim must fail.
Not quite correct Ned – as we have discussed previously.One thing that you are doing is lumping in all meanings of functional claiming – and not all such types are similarly treated. If you remember, the term itself was criticized because (like ‘invention”) it had become such a twisted nose of wax that it was scarcely recognizable.Also, what (legislative) “imprimatur” do you have to simply chose “functional” within the meaning of United Carbon?One must also note that the period of time prior to the 1952 Act was one of the most severe anti-patent time periods from the Supremes (the infamous “the only valid patent is one that has not yet appeared before us” era)
Anon, I think that one of the reasons the SC avoided the issue of 112(b) for so many years was the because the bar thought that functional claiming was a useful way of informing the public of the outer limits of claim scope and that there was no real vice in having this nominal scope while have an much narrower real scope based on the Westinghouse rule. Note the holding in United Carbon was that the claim would not be saved by employing a Westinghouse construction because the specification itself was functional. This is where I think the Supreme court is headed:1) Apply Westinghouse (112(f)); and2) hold the claims invalid if the spec still renders the claim indefinite because of lack of a definitive test, structure, or materials, or in the case at bar, no disclosure whatsoever.
OT, but a couple of interesting stories….:link to news.yahoo.com… (don’t blame us, blame the people using our product…link to forbes.com… (being smart simply isn’t good enough)http://www.fool.com/investing/… (the golden rule makes a comeback, no, the other golden rule…)
For the record, I don’t think there’s much suspense about the Supreme Court’s answer to the question in Nautilus. As a practical matter, the “insolubly ambiguous” test is meaningless. If a judge wants to “solve” the meaning of a claim term, the judge will do it.The Federal Circuit seems to have a tendency to devise legal tests that completely defang the statute. This “insolubly ambiguous” test is just as bad as the “no other possible explanation” test for finding inequitable conduct. And if Rader could have his way, the test for subject matter eligibility would be “can you imagine it being real or being used.”But for KSR, who knows where the Federal Circuit would have gone with obviousness by now.
“The Federal Circuit seems to have a tendency to devise legal tests that completely defang the statute.”Isn’t that the truth.
test
Baby seats and car doors, anyone?(well, not baby seats exactly – Othrokinetics, Inc. v. Safety Travel Chairs, Inc. 806 F.2d 1565)
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1 U.S.P.Q.2d 1081 (Fed. Cir. 1986).Sized to fit is OK.
“Sized to fit is OK”Please explain why, noting that such is clearly of the same flavor of both functionality and indefiniteness/broadness.
anon, first, I question whether the invention lay in the size of the legs. If not, there is no vice in functionality. Let is not confuse and conflate.
The invention lay in the claim.
What was new? The vice the Supremes complain about is when the most crucial element, the point of novelty, is expressed functionally. They do not have problems with old elements or where novelty is in a combination. I have quoted you the cases making these distinctions. You persist nevertheless as if the Supreme Court did not address these issues.
“What was new?”The claim as a whole.Period.There are only two instances where claim as a whole does not provide the proper answer (the second one below the line is receiving a deafening roar of silence from the runaway kid.One is Jepson claims. As can be seen at one of the links, Jepson claims have simply (and almost completely) fallen out of use. Are you suggesting that some governmental body other than Congress rewrite the law and make such claim form mandatory, Ned?Jepson (dated – 2009):link to patentlyo.com…Other similar drafting styles on the wane:link to patentlyo.com…link to patentlyo.com…The other incidence where one may look for claim as a whole in a bit more piecemeal fashion is where the elements of the claim just don’t come together.For that scenario, a recent post of mine is well worth repeating:Speaking of Malcolm taint, the concept of ‘aggregation’ would help explain why his pet theory of [oldstep]+[newthought] is such a fallacy, and why he always runs away and/or dissembles when it comes to claims as a whole and integration, why he is always trying to introduce the strawman of claims completely in the mind (when the topic is claim elements in the mind and never a complete claim). Aggregation is the concept that explains why claims of [oldstep]+[oldstep] or [oldstep+[ANYTHING] may well be perfectly patent eligible AND patentable claims, as the concept distinguishes between collections that merely are unconnected and lumped together and collections that are integrated. His fallacy relies on the “+” always being an aggregation when clearly that is simply not so.
No doubt that if new functionality is provided, the parts are not unrelated.However, regarding 112(b), the courts do distinguish been old and new elements and combinations. In Ives, cited elsewhere in this thread, was an improvement of an old machine where the old elements were broadly recited. That was OK because the invention was not in the details of the old elements:”The defendants insist, however, that Hamilton’s patent is defective for not clearly describing the position, perpendicular or otherwise, in which the curved guides should be placed; and that, if any required position can be inferred from the patent, it is a perpendicular one, whilst the guides of the defendants’ saw are inclined at a slight angle to the perpendicular. As to the alleged defect of the patent, there is nothing in the objection. The invention claimed is an improvement on an old machine, and it is properly taken for granted that the practical mechanic is acquainted with the construction of the machine in which the improvement is made; and nothing appears in the case to show that any peculiar position different from that of sawmills constructed in the ordinary way is necessary to render it effective and useful. The essence of the improvement has nothing to do with the precise position of the guides. It is a combination of mechanical means to produce a rocking motion of the saw; and this combination is just as applicable to guides that have a slight inclination as to guides that are perpendicular. We think that there is no ground for either branch of the objection. The description in the patent is sufficiently specific; and the inclination of the defendants’ guides cannot exempt them from the charge of infringement.” Ives, 92 US 426 at 430.
the concept of ‘aggregation’ would help explain why his pet theory of [oldstep]+[newthought] is such a fallacyAggregation is the concept that explainsClassic, TB. He comes up with some random term and asserts that the term is what proves other people wrong (see also “arthropanomorphication!” etc etc).Learn to write an argument, TB. Then come back here and try again. Better yet, just stop pretending that there is a claim in the form [oldstep]+[newthought] that is eligible for patenting. There isn’t any such claim because all claims in that form are effectively claims to the new thought itself. This is plainly (and, at this point, painfully) evident when one considers the claim from the viewpoint of the literal infringer who is practicing the prior art step and thinking the new thought. And that’s why Prometheus came out the way it did (i.e., in favor of the defendant).This has been explained to you hundreds of times already. Deal with it.
“Learn to write an argument”LOL – why? Because you say so? How oh so very Carroll of you, Malcolm.As it is, my arguments are more than adequate. Why? Simple, because you have not been able to refute a single one of them.Deal with it? LOL – Why? Because you say so? How about you deal with what the law is here and now? What’s that? Running away again? LOL – so typical. Don’t forget to throw out one of those vacuous “Kenneth’s or *clicks* or something.
Deal with it? LOL – Why? Because you say so?No, not “because I say so.” I explained why you need to deal with it in terms that a fourth grader could understand.
LOL – wrong (again) Malcolm.You have explained nothing. You have merely vomited your typical nonsense – without addressing any of the counterpoints raised.
“He comes up with some random term and asserts that the term is what proves other people wrong”I know right? Because he can make up a new term the other person HAS to be wrong!
LOL – what a lemming 6. Try again – my terms are not ‘random’ in the least. Try (unlike Malcolm, who simply runs away screaming some inane phrase). to actually address the merits I present.
What does randomness have to do with what is under discussion? You know, besides being a red herring.
Red herrings DO NOT THINK! Try again.
Why are you asking me, 6? The term was used by Malcolm, and you upvoted it.Please tell me that you read the comments you upvote…
You misunderstood his emphasis in his post. His post is not emphasizing the randomness of the words you make up ta rd. It was just an adjective thrown in for dramatic effect.edit:To be clear, if MM wanted to emphasis the randomness of the terms you’re making up he’d have cited to the definitive work on the subject of making up something random and then arguing based thereupon. link to google.com?…
To be clear, you are full of sheepdip.
“What was new?”The claim as a whole. Period.That’s ridiculous. We’re talking about patent rights and how to determine who is fairly entitled to them. Pretending that patent claims have no relationship to the prior art is absurd. Likewise, pretending that consideration of the relationship of a patent claim to the prior art is somehow “taboo” (outside of anticipation, evidently) is worse than inane.
“That’s ridiculous”LOL – Why, Malcolm? Because you said so? Oh so very Carroll of you.
The other incidence where one may look for claim as a whole in a bit more piecemeal fashion is where the elements of the claim just don’t come together.”In a bit more piecemeal fashion”? “Just don’t come together”? Are those legal tests? There’s case law on those terms? I assume so given your incessant badgering of people when they dare to discuss policy or their views about what the law “should be.”Of course, you left out another major and important “incidence” where one is required to look at claims “in a bit more piecemeal fashion”: when the claim recites ineligible subject matter, e.g., “instructions” or “mental steps.”
LOL – Simply wrong Malcolm – as evidenced by your tendency to kick up dust with a strawman and try to talk about claims ENTIRELY in the mind (when no one else does so).Further, you have admitted that items less than a full claim CAN recite what – IF were an entire claim would be patent ineligible – but no one else is so discussing such claims in the entirety of mental steps. – and no, your attempted conflation of “instructions” is NOT merely exchangeable with “mental steps.” – You know precisely why, right? That one might involve you not running away (lol, what a coward).You are so completely wrong – mindstaggeringadd: “Are those legal tests?” – LOL , well you were the one who jumped at giving the link to the Office takeaway from the Prometheus case – without even reading that link and how the Office expounded on integration, or “coming together.” Your penchant for Self-Fail is only surpassed by your desire to kick up dust and obfuscate as clearly, ipsis verbis is not required, and your asking here for ‘same terms” is an extremely feeble effort at clouding the issue.Further, you once again confuse wanting to talk about policy, and/or the feelings of how you want the law to be, with the way you go about talking about such. Why the dissembling when it comes to how the law is now? All you have to do is be intellectually honest about that – and yet, you consistently play your pathetic games of name-calling, innuendo, “Kenneth”, misstatements of law and fact and what others post and the notorious Accuse-Others-Of-That-Which-You-Do gamesmanship. You might try (instead) being upfront about the basics and first principles of law. You might try acknowledging the facts involved with software.Of course doing so will paint your agenda as the p1$$poor attempt at changing policy merely ‘because you want it so.”
you have admitted that items less than a full claim CAN recite what – IF were an entire claim would be patent ineligible – but no one else is so discussing such claims in the entirety of mental steps.This may be the least intelligible thing you’ve ever written. Congrats.
When you intentionally try not to understand, you ‘succeed’ wonderfully.
I actually think Nautilus is even less questionable than Orthokinetics was, since the functional recitation in Orthokinetics is dependent upon an undefined characteristic not under the control of the inventor (or the potential infringer, for that matter), which is an issue that seems not to be present in Nautilus.
But, APoTU, was the size of the leg all that material to the invention? Could the claim have just said “leg” without explanation as to its size and still have defined the invention because the novelty did not like in the size of the leg, but elsewhere? It is very odd that in that one would describe the size of any component of a patentable combination unless that size was material. But folks do it all the time.
Yes, Ned, the size of the legs was very much material to the invention. The invention is read as a whole, after all.
Well anon, I agree the size of the legs was important. The fact that the leg size varied with the car did not make the claims indefinite. The cases cited extend back in time to this case: Minerals Separation, Ltd. v. Hyde, 242 US 261 – Supreme Court 1916http://scholar.google.com/scho…”Equally untenable is the claim that the patent is invalid for the reason that the evidence shows that when different ores are treated preliminary tests must be made to determine the amount of oil and the extent of agitation necessary in order to obtain the best results. Such variation of treatment must be within the scope of the claims, and the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter. 271*271 The composition of ores varies infinitely, each one presenting its special problem, and it is obviously impossible to specify in a patent the precise treatment which would be most successful and economical in each case. The process is one for dealing with a large class of substances and the range of treatment within the terms of the claims, while leaving something to the skill of persons applying the invention, is clearly sufficiently definite to guide those skilled in the art to its successful application, as the evidence abundantly shows. This satisfies the law. Mowry v. Whitney, 14 Wall. 620; Ives v. Hamilton, 92 U.S. 426, and Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 436, 437.”
So……It appears that the function is satisfied and the actual hard core, hard number is allowed to ‘float’ (after all, an infinite variety is a pretty big float)(and yes, I notice that you have attempted to move away from the “functional claiming” battle-cry you were trumpeting and now merely want to ‘spin’ the claim as some (non) fixed tangible item – not nearly as clever as you might think, there Ned).I think that once again we go in a full circle with the courts (Court) on this topic – as I pointed out on the September 21 thread (in relation to the attempted hook on the word “particularity.”As it turns out, words themselves simply have an uncertain degree of elasticity. Heaven help us if we must rest on what judges (and justices) think is “reasonable” as the invitation to play with the nose of wax will only result in a mashed nose ripped from the face of justice.
Some experimentation is allowed. But the specification must guide the experiment — tell one what is important in the variables.Also, as the Ives case makes clear, it makes no difference if the old parts of a machine are described without any detail at all. In that case, it made no difference to the invention whether the guides were perpendicular or angular.
“Some experimentation is allowedWe are again back to what I posted above: the function is OK and the actual hardcore number is allowed to be anything (i.e. infinite choices, or, in the case you yourself presented, infinite different ore combinations)Your battle against functional claiming just took a mighty (self-inflicted) blow.
Check this: Ives v. Hamilton, 92 U.S. 426 (1876)”The defendants insist, however, that Hamilton’s patent is defective for not clearly describing the position, perpendicular or otherwise, in which the curved guides should be placed; and that, if any required position can be inferred from the patent, it is a perpendicular one, whilst the guides of the defendants’ saw are inclined at a slight angle to the perpendicular. … The essence of the improvement has nothing to do with the precise position of the guides. It is a combination of mechanical means to produce a rocking motion of the saw; and this combination is just as applicable to guides that have a slight inclination as to guides that are perpendicular.”Now, what have I been saying about the fact that the novel feature of the invention must be indefinite or functional. If a part that is old is stated broadly, or without definition, that is no vice.
LOL- great Ned, a case from 1876. Now fold in a more recent case that tells you to take the claim as a whole.
Cite a more recent Supreme Court case that states that the issue of indefiniteness must be taken as the claim as a whole. I am sure you can do so with respect to 103, because that is what the statute says. But 103 does not apply to 112, not at all.
You do have a small point Ned – a claim can surely fail for indefiniteness when an element within a claim fails to be definite.HOWEVER – that is a far cry from what you are trying to do: you are trying to import ‘invention’ or a facet of novelty (even your favorite buzzword “Point of Novelty” gives you away) under the guise of 112. I invite you to read that section of Prometheus again in which the Justices throw out the “WHATEVER” style of argument that one section (even though that section may have some similarities) can do the work of another different section.Quite simply, indefiniteness fails for attempting to change the rules for functional claiming.
On the contrary, APoTU the arrangement of the electrodes to be grasped by the hand was critical to providing that the EMG signals from each hand be of equal amplitude. The specification itself is silent on how to do this, what the materials of the electrodes must be, how far apart they must be, whether they be should be adjustable, etc. It is puzzling that the patent office allowed the claims over prior art that showed exactly the same structure as being claimed: spaced electrodes for each hand connected to a differential amplifier. The specification of the patent did not describe anything special about the spacing of the electrodes, their size or shape, their materials or anything else. And yet the inventor was allowed to file an affidavit stating that in making production apparatus they had to be careful about the spacing, materials and other such so as to obtain equal EMG signals from each hand. And further given the testimony of the other expert that the EMG signals of each hand were different in the ordinary case, and probably differed from person-to-person, how apparatus could achieve zero EMG signals without being adjustable in the device sold is not explained. The specification simply showed uniformly spaced rings on the handlebars. Clearly, there was no disclosure in the specification of how to obtain zero EMG signals from each hand.I suspect that one given the disclosure that obtaining zero EMG out of the differential amplifier was the objective could make the adjustments and eventually obtain a configuration where the EMG signals out of the amplifier would be approximately zero. But how one could do this with fixed spacing still is uncertain given that the testimony indicated that this was impossible.
Yeah I was thinking about those sorts of things. This is a very odd case it seems to me, before reading it all the way, to send to the supremes.
Re: Nautilus. I don’t recall this case, and indeed, I don’t think it was previously discussed here on Patently-O. The case is precedential and extremely interesting giving its discussion of a functional limitation an not being indefinite.Can we ask, perchance, that Dennis take a look at this case and give us his views on it so that we can properly discuss it?
I don’t recall this case, and indeed, I don’t think it was previously discussed here on Patently-O.It was “discussed.” And you were there.link to patentlyo.com…Granted, it wasn’t a very interesting “discussion” so you shouldn’t be surprised that you forgot about it. 😉
Thanks, 6, but while there is discussion of the Supreme Court law on definiteness, there is no discussion of the case itself. That is why I did not recall it.Sent from Windows Mail
that was mm
ooooo snapalicious! “(1) Whether the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations – so long as the ambiguity is not “insoluble†by a court – defeats the statutory requirement of particular and distinct patent claiming”Obviously, but then we have the presumption of validity (which needs to be repealed and reinstituted to only do the job it was supposedly supposed to in the first place about the burdens). “whether the presumption of validity dilutes the requirement of particular and distinct patent claiming.”Great question! Can’t wait!
I agree: good questions. Sometimes one cannot believe how much time can pass, without such questions being asked and answered.Given that mere words can never define patentable concepts with 100% clarity, no claim has ever issued that is 100% definite. So no wonder the Fed Ct’s test is the “insoluble” standard. Anything lower, and every patent dispute would be mired in argument about definiteness. This worry, by the way, is why in 1973 Europe excluded indefiniteness as a ground of attack on the validity of any duly issued claim. The absence of that attack has done no harm. The European Founding Fathers were right to resist its inclusion in the European Patent Convention. Articles 52 (eligibility) 54(novelty) 56(obviousness), 83(sufficiency) and 123(no new matter) are all one needs to do the validity Business. Infringement courts are more than capable of construing unclear claims. They have had years of practice at it!.Of course, courts in Europe are not burdened by the “clear and convincing” standard. If a claim is, on the preponderance, not valid, it gets to be declared invalid. This encourages thoughtful and cautious claim drafting, a boon for legal certainty.
“Sometimes one cannot believe how much time can pass, without such questions being asked and answered.”It’s absolutely preposterous. I blame the CAFC just quietly monkeying around for decades with no real oversight and no outrage from the bar since to them, all was in their favor, there’s literally nobody to stand up for the law if the bar sits on its hands. Unless of course you finally get an accused infringer with $$$ and a chip on his shoulder.edit: omg best story ever! Three huzzahs! link to en.wikipedia.org…
I wish we had the briefs before us to see the arguments. But the problem in this case was that the novelty apparently lay in a functional requirement that a spaced relationship be such that the EMG signal sensed from spaced electrodes grasped by each hand be the same. How one did this was not described. The prior art had a similar spaced relationship. The patent owner apparently got the patent through reexamination by showing that the spaced relationship of his claim was different than the spaced relationship of the prior art by conducting experiments. However, the test he used was not described, nor did he describe what he did to conduct his experiments.
The patent owner apparently got the patent through reexamination by showing that the spaced relationship of his claim was different than the spaced relationship of the prior art by conducting experiments. However, the test he used was not described, nor did he describe what he did to conduct his experiments.This is exactly the sort of “post-filing” submission that should never, ever have been permitted to rescue a claim. The plug should have been pulled right there. Instead, the defendant in this case is forced to spend … how much money do you suppose? They are probably well past the million dollar mark already. And they won’t be able to get the money back because, hey, this went all they want up to the Supreme Court so they could tell everyone the right words to use to understand why this patent is garbage.
MM, but you do make claims more definite in the sense of 112, p.2, by segregating the old from the new in the claim.Beyond that, the problem we have is with functional claims. Every Supreme Court case on this topic dealt with a functional claim, every one.
6, you appear to me to be just a person that is cheering the burning of Rome. All your posts can be summarized as burn baby burn.
Burn baby burn! To be clear NWPA, I’m just not a patent maximalist. People with legit inventions will continue to get valid and sometimes infringed claims and I will not weep one tear, not one, for people who cannot be bothered to draft properly. 99%+ of my applicants have no problem eventually getting to some claims that are crystal clear under mines skilled guidance, so none of them have much to fear from this. The people that do have something to fear from this are the people that 112 2nd was aimed at in the first place.
Nautilus Issue: (1) Whether the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations – so long as the ambiguity is not “insoluble†by a court – defeats the statutory requirement of particular and distinct patent claiming; and (2) whether the presumption of validity dilutes the requirement of particular and distinct patent claiming.
This seems like a horrible case for deciding those questions, because as near as I can tell, the fact pattern doesn’t support that question. I wouldn’t even have rejected that claim as being indefinite, since I would have just interpreted “spaced relationship” as meaning there was some space between the two electrodes. The CAFC notes that it’s not “insolubly ambiguous”, but I don’t think it’s any sort of ambiguous at all – just really broad.
Just read the case (for the first time) and I think it very interesting. The novelty was in the functional limitation in the claim that required the EMG signal to be equal at both hands so that it could be removed using a differential amplifier. The patent owner convinced the PTO in reexamination to allow the case over the prior art based on linking the spaced relationship to this functional limitation. The prior art apparently had a similar spaced relationship, but did not reduce the EMG signals to zero. Why it did not do so was not clear to me. In reexamination, the patent owner relied on an expert opinion that one could determine the proper spaced relationship to reduce the EMG signal to zero. He conducted an experiment that showed that the claimed apparatus reduced the EMG signal to zero, and that the prior art did not. But how he conducted the experiment apparently was not described. Thus we really do not know what spacing is required to infringe an why the prior art does not infringe.I find it puzzling that the Federal Circuit did not affirm the district court that the claims were indefinite.
“I find it puzzling that the Federal Circuit did not affirm the district court that the claims were indefinite.”Why did they say? I haven’t read it yet.
“In addition, a skilled artisan could apply a test and determine the “spaced relationship†as pertaining to the function of substantially removing EMG signals.”—–The lower court held that spaced relationship was indefinite because the patent didn’t say what would constitute it. CAFC found that while spaced relationship in itself wasn’t enough, that the functional limitation sufficiently limited it. i.e. the claim required any spacing small enough to be grasped by the hand yet large enough to achieve the functional result of reducing the EMG signal. Because a skilled artisan would know whether a) there was space between something and b) whether the EMG signal was gone, they knew the bounds of the invention.The case isn’t all that interesting IMO because the CAFC gives the game away (see mid pg. 17):[The district court asked] “Should it be half inch, one inch, two inches, three inches?”…Moreover, the district court found nothing in evidence that provided how a skilled artisan would have determined the appropriate parameters yielding the necessary “spaced relationship†as recited by the ’753 patent: “[W]hat [the expert] says is that through trial and error , which he doesn’t describe, one can find a spaced relationship. That may be. But there’s no description.” These inquiries however miss the mark in this instance because they do not support an indefiniteness analysis. ——-In other words, someone should have sounded 112, 1st, not 2nd. The mistake is understandable, as functional claiming makes those issues to appear to be indefiniteness.Opinion: link to cafc.uscourts.gov…
Funny how small the world is. Even as we write, the EPO jurisprudence (after 30+ years of dithering around) is only just now getting its act together, on the proper way to distinguish what is insufficiently disclosed (Art 83, EPC) from what is not clearly enough defined (Art 84, EPC). Just because a claim is broad, or because its ambit includes areas not enabled, or because there is a puzzle at the periphery of the claim, as to what’s in and what’s outside the scope, is not sufficient to condemn it as unclear/indefinite.Flavour of the month, it seems, both sides of the Atlantic.I commend to readers the discussion:link to k-slaw.blogspot.de…in the K’s Law blog about the European notion that the more unclear a claim is, the stronger had better be its defences against prior art attacks on its validity.
link to k-slaw.blogspot.de…in the K’s Law blog about the European notion that the more unclear a claim is, the stronger had better be its defences against prior art attacks on its validity.No doubt. And it’s critical for the courts to recognize that all of these issues are related. Analyzing something like “indefiniteness” in a vacuum makes no sense. That’s because to the extent a claim term is indefinite, it will almost always be non-enabled for the “possible” scopes that one could ascribe to it (if one tries to “solve” the ambiguity).The problem with the Federal Circuit’s jurisprudence is there not such thing as an “insoluble” claim term. If a judge decides that he/she can define the claim scope, then voila! the “ambiguity” will be solved. And if judges are allowed (as some judges believe they should be) to look at “examples” in the specification or extrinsic evidence to come up with vague terms that the applicant chose not to define (or forgot to define) and include in their analysis which of those constructios is the “enabled” construction, then we have left the reservation completely. Claims will have no purpose.There is nothing wrong with having a requirement for definiteness in claim drafting. There is also nothing wrong if there is some overlap in the analysis of what constitutes “indefiniteness” and what constitutes “non-enablement” and what constitutes “possession” and, for that matter, what constitutes an attempt to claim an “abstraction.” The only people who object to that overlap are patentees. Do you know why? Because once you remove the overlap, you’ve got a loophole.These are the same loopholes exploited by the “computer-implementer” types. That’s why they can’t stand 101 standing for anything other than a purely technical requirement to include the words “process” or “composition” or “device” in the claim. And that’s why their heads will explode once the Supreme Court (and other courts) starts putting their games to bed by learning to focus on all of the 112 issues, first and second paragraphs, raised by functional claiming, in addition to obviousness and 101. Whack a mole is pretty easy when there’s a big hammer above all the holes. Of course, that assumes that Examiners and jurists are capable of holding more than one hammer at a time. It’s pretty easy for most of the rest of us.
An interesting take, but idk about there being no WD. I’m also not entirely sure why you’d need to give a detailed wd regarding the spacing. Seems like a weird case to me. I’ll check it out.
6, there is nothing in the patent that says there is something significant about the spacing and that is why the patent reduces EMG signals to zero and why the prior art does not. The inventor describe that they actually had to tweak the configuration and materials in real devices to get the EMG signals to zero. He said he did it, but not what he did. He still kept what he did a trade secret.It appears that the non disclosed adjustments were more than best modes, they were the invention.
another canard from Ned being sought to be resurrected: talking bout the prior art in an application.
“He still kept what he did a trade secret.”In other words, this all boils down to a possible WD/best mode problem?
Best mode certainly. Written description? Well if the claim itself provides written description, the claim itself was in the patent as filed. Enablement? Arguably one of ordinary skill can figure out how the reduced EMG signals to zero. But there is no description of how to do it in the patent.I don’t see why section 112(b) is not the right choice.
“Well if the claim itself provides written description, the claim itself was in the patent as filed. “That’s what I figured likely happened.