Congratulations to our team from the Iowa College of Law, Joshua Galgano and Michelle Wallace, and their coaches, Prof. Christina Bohannan and Damon Andrews, for winning the national finals of the 41st Annual Giles S. Rich Patent Moot Court Competition. Dr. Galgano is a 3L who holds a PhD in chemical and biochemical engineering; he will begin his career at Sterne Kessler Goldstein & Fox this fall. Ms. Wallace is a 2L with a chemical engineering background; she will be working at Reinhart, Boerner, & Van Deuren this summer. Congratulations to both!
Congratulations also to Suffolk Law School’s team of Christina Mott and Scott Chappell, coached by Even Brown, who finished in second place. Other teams competing in the finals included Columbia, the University of Washington, the University of Utah, the University of Houston, and Michigan State.
Earlier this afternoon, the two teams argued before Judges Lourie, Tarranto, and Chen. This year’s problem involved issues of subject matter eligibility of claims relating to DNA and of subject matter jurisdiction over a licensing dispute. If you’re curious about the problem, it can be found here.
(Also, this morning the Federal Circuit issued its opinion in Apple v. Motorola, affirming-in-part and reversing-in-part Judge Posner. While the three judges agreed on most issues, they disagreed on issues of injunctive relief (Judge Rader would have allowed Motorola’s request for injunctive relief to proceed and Judge Prost would not have vacated the district court’s summary denial of Apple’s request for injunctive relief) and means-plus-function claim interpretation.) More on this opinion later.
Congrats to the team from Iowa! Tough competition this year and you guys took the cake. Good job!
I showed you a beginning step in the history of the experimental exceptions
That’s nice. Unfortunately for your desperate efforts to move the goalpost, we weren’t discussing “the beginning steps in the history of the experimental exceptions”. Not even close.
No, Mr. “Strict Liability” (have you forgotten your incessant endless hammering of this oh-so-precious “point” of yours??), we were discussing the issues raised by incredible broad composition claims that recite an arbitrary “effect” that might be “easy” for one or two people to test but, for the rest of the world, are the furthest thing from “easy.”
As I wrote: I just made [a solution that seems like it might read on claim 15] right now, using readily purchased salts, for an entirely different purpose than that described in the claim. Get it? There is no “experimental use” at issue here. I’m not “experimenting.”
So, my composition either infringes the claim, or it doesn’t (are you following along, Mr. “Strict Liability”?). And I stand by my conclusion (repeated here, verbatim): it’s absurd to require me to perform the applicant’s arbitrary clinical test on the “effectiveness” of the solution to discover if my solution infringes the applicant’s composition claim.
Then you were asked a very straightforward question which you still have not answered: what happens if I send you half of my composition and you test it for “effectiveness” according to the applicant’s arbitrary test and it comes out “positive.” Is my composition infringing? Does it matter whether you were told to test it? Remember: we both have the identical composition. What if I do the same test on a different patient and it comes out “negative”? Remember: it’s identical to composition you tested.
Step up and tell everybody the answer and why your answer “makes sense.”
You already know what I think the answer is because I’m not a hypocritical, cowardly goalpost-moving p.o.s. like you.
You did not ask for a holding.
I presume that you know what a holding is, and if you wanted a holding you would have asked for one.
Your bad.
There was no moving of goalposts.
I gave you what you asked for. I then invited you to take the next step. You have yet to do so.
Again, your bad.
As to “Mr. Strict Liability” – I have already responded to that comment as well on the other thread. You did not respond there.
Again, your bad.
“might be “easy” for one or two people to test”
Talk about moving goalposts: we – you and I – were not talking about any subjective “ease” of making/performing the claimed invention. That has nothing at all to do with our discussion.
Pay attention.
“There is no “experimental use” at issue here. I’m not “experimenting.””
Stop being pedantic. The limited defenses are categorized as experimental uses and the well recognized patent term includes those things that Justice Story discussed (LOL – if you have a problem with what that term means, take it up with Justice Story)
“Then you were asked a very straightforward question”
You have not yet answered my very straightforward question – even after I have given you what you actually asked for.
“I’m not a hypocritical, cowardly goalpost-moving p.o.s. like you.”
Yes, it is opposite day in Malcolm’s mind.
MM it is plain to see that anon doesn’t even understand what you are discussing. Anon thinks that we’re talking about a composition that you’re planning to make, or have just now invented, and you want to know whether or not it will infringe, so you run some experiments to see. Of course, what you’re actually talking about is, generally speaking, and especially where you’re already deep into making/selling this composition and simply found out about this patent and wonder if you’re infringing. Of course at that time, there is no experimental use other than that which you may undertake to determine infringement, the rest of the making/selling/using is not “experimental” at all and the experimental defense won’t come close to touching it. Anon doesn’t even understand that this is the hypothetical situation, even though everyone else reading does.
He doesn’t understand the thoughts or feelings of others bro. You can’t discuss complicated matters with him, he won’t even follow the conversation, indeed he doesn’t even want a real conversation. He will only discuss what he wants to discuss (here the proposed, but shaky, “experimental defenses”) and make efforts to try to control the conversation to be about only that which he wants to discuss. Especially in the routinely occurring everyday situation where he mistakenly thought your hypo was different than what you wanted to talk about in the first place (he thought you were talking about a different hypo since you didn’t spoon feed it to him well enough).
It is part of his condition brosef.
“He doesn’t understand the thoughts or feelings of others bro.”
LOL – you are doing that ‘projecting’ thing again 6.
I understand fully the scope and content of the conversation. You on the other hand,… well, that is highly doubtful. Understanding does not equal agreement. You should understand that.
“already deep into making/selling” – LOL so you want to move the goalposts a bit and make this more than just seeing if the invention works as claimed…. Sounds like you want to have an Infringers’ Rights get out of jail free card for more than just seeing if the invention works as claimed – you seem to want to be able to excuse your “deep into” actions. Bad timing on your part (deciding too late into your “deep into” actions) is not a valid reason to move the goalposts, 6.
“your hypo was different than what you wanted to talk about”
LOL – you want me to read minds now, 6? That’s too funny. Malcolm is supposedly this master of English as a First Language. If he wanted to talk about something else, he should talk about something else. Again – I gave him what he asked for and if he does not have the ba11s enough to admit that he asked for the wrong thing, that’s his problem, not mine. You really should look into your ‘projecting’ problem as you are now projecting Malcolm’s problems onto me. Thank you but I will pass.
“LOL so you want to move the goalposts a bit and make this more than just seeing if the invention works as claimed”
Everyone on the blog except you knew the goalposts were there to begin with. Which is why you’ve made such a mess of your tit for tat with MM.
“Everyone on the blog except you knew the goalposts were there to begin with. ”
LOL – not so – you are misunderstanding quite clearly.
“LOL – not so – you are misunderstanding quite clearly.”
Oh, yes, sure thing, I’m the outlier. /eyeroll.
Meanwhile you’ve had a huge tit for tat about something that was never even under discussion. As usual. Congrats.
“Outlier” has nothing to do with veracity.
Not sure why you would think otherwise….
“you want me to read minds now, 6”
Nah bro, I’d just like for you to either a. have a normal non-psychopathic brain or failing that, b. for you to obtain medication for said psychopathic brain so that it will operate more normally, or failing that, c. understand and accept that you usually do not understand w t f MM and most other people are even talking about here on PO, and thus make efforts to figure out what they’re talking about before you create a huge tit for tat about something that wasn’t even brought up. Efforts you can take is to ask people to be clarify what they mean, like you just did in another thread regarding what Owen said. Oh and also if you could cease attempts to make the tit for tats only about x subject which you want to discuss and instead be willing to discuss y things that other people want to discuss in addition to x subject you want to discuss then that would be nice.
again, not so.
Seeing as I was the principal in the conversation, you would think that you would care more for how I feel rather that trying to project your views onto the situation.
You seem to have a problem with understanding how others feel 6 – perhaps you should get that checked out.
“again, not so.
Seeing as I was the principal in the conversation, you would think that you would care more for how I feel rather that trying to project your views onto the situation.
You seem to have a problem with understanding how others feel 6 – perhaps you should get that checked out.”
Christ sakes, your combo of psychopathy and ocpd is dam near invincible isn’t it? No wonder it’s been so hard for you to overcome.
LOL- you are again projecting 6.
Do you ever wonder why the CRP-Run Away and CRP again cycle is so virulent?
(hint: maybe if you cared enough to understand it, you would realize the error of your ways)
” If he wanted to talk about something else, he should talk about something else.”
He has been talking about something else. He just can’t always tell when you’re “off in left field” so to speak. It’s hard to tell when you’re actually off in your own little world but are for some reason supposedly responding to a person about x when you’re actually not. And then you usually refuse to come in from left field even when he (or others) asks you to. You really like to be off in left field. Specifically when left field is what you want to talk about. Generally you want everyone, especially the person you’re talking to, to come join you over in left field. And you take steps to make them.
“I gave him what he asked for and if he does not have the ba11s enough to admit that he asked for the wrong thing”
Everyone on the blog already knows what he asked for, and it was different from what you thought he was asking for. From the beginning. Everyone’s just too polite to jump in and correct you every time. Or afraid you’ll turn your mental behavior on them. Or they just don’t give a dam and are content to let you tit for tat all day long.
Also, projecting is a defense mechanism of yourself, you cannot “project” “problems” of another person onto yet another person. You really need to learn what “projecting” is.
I know what it is – clearly, you lack understanding here.
I just wished you cared enough to correct that problem of yours.
” If he wanted to talk about something else, he should talk about something else.”
He has been talking about something else. He just can’t always tell when you’re “off in left field” so to speak. And you refuse to come in from left field when kindly asked to. Just like you’re doing right as we speak. Now you demand that he apologize for supposedly asking for the wrong thing. Absurd. I knew what he was asking for the whole time. So did everyone else. Except you. You’re the outlier bro.
“I gave him what he asked for and if he does not have the ba11s enough to admit that he asked for the wrong thing”
Everyone on the blog already knows what he asked for, and it was different from what you thought he was asking for. From the beginning.
“He has been talking about something else. ”
Not in the conversation with me, 6 – why are you having such a difficult time understanding this?
“Not in the conversation with me, 6 – why are you having such a difficult time understanding this?”
Jesus christ you’re such a retard sometimes anon. Perhaps MM will get on here and confirm for your dumbass that he was in fact talking about “something different” the entire time while you were oblivious the entire time. He tried, repeatedly to call you back over to what he was talking about, and you just stood off in left field talking about whatever you wanted to talk about.
6,
Malcolm lacks any sense of truthiness. SO even if he were to come on here and claim as you indicate, such would prove nothing.
The black and white of the record tells all – he asked for something other than a holding. I gave him what he asked. I then countered with additional questions to show that (as usual) he was full of it. He ran away.
Why you wanted to jump in with your passive/aggressive psycho B$ is not quite certain, but you did and you did so in very apparent error.
Why do you have such a hard time understanding this?
“6,
Malcolm lacks any sense of truthiness. SO even if he were to come on here and claim as you indicate, such would prove nothing.
The black and white of the record tells all – he asked for something other than a holding. I gave him what he asked. I then countered with additional questions to show that (as usual) he was full of it. He ran away.
Why you wanted to jump in with your passive/aggressive psycho B$ is not quite certain, but you did and you did so in very apparent error.
Why do you have such a hard time understanding this?”
It’s literally like talking to a 5 year old when speaking with you.
Should I aim lower so that you have a better chance of understanding?
I understand your dumbass quite well thanks, now if you were able to “understand” me then that’d be swell.
6,
It is more than apparent that massively, the non-understanding is something that you need to own.
You seem to be in some pretty severe denial of this.
Is that yet another symptom?
anon, perhaps.
But if we are talking 101 and “new and useful machine,” we have to be talking about new “structure.” New structure should not be confused with use. The new structure itself has to be there. It has to be there when the power is off as when it is on.
Stop running away from the holding of Alappat
(Perry even embraced it)
Power off or on is a red herring Ned.
Ned, stop running. A special purpose chip can be built to implement the method. The structure of this chip is equivalent to the structure of the software.
Address that scientific fact and stop running.
The structure of this chip is equivalent to the structure of the software.
“Hardware configured to process credit card access requests, wherein said processing includes determining the geographic source of the request, wherein if said source is a state whose name ends with “a”, a message is communicated to the owner of said credit card.”
Describe the structure for everyone, NWPA. You’re a skilled artisan, aren’t you? So please describe the structure such that it distinguishes the new hardware from the old hardware. Thanks.
You do realize how badly you are missing the point, right Malcolm?
Not only are you missing the point, but you do realize that, of course, a special purpose chip to perform the method you described is going to have a structure. To determine whether or not a name ends with an “a” will take structure to determine.
Do you suppose these things are magically determined?
To determine whether or not a name ends with an “a” will take structure to determine.
Oay, let’s say that it will “take structure” to perform that function. Please tell everyone exactly what that structure is.
I suppose next you’ll tell everyone that the structure is “hardware configured to determine whether or not a state ends with an ‘a'”.
Your continued asking for what the structure is misses the point.
You do realize that, right Malcolm?
So, a circuit that performs the method you described is not structure? Is that what you contend MM?
A circuit diagram is not structure to you? We have been here at this argument before. I tell you a circuit diagram and then you say nonsense and run away.
Ridiculous waste of time interacting with you.
Make lemonaide from lemons NWPA, at least have fun poking Malcolm in the eye with some facts and law.
“A circuit diagram is not structure to you?”
Please, be our guest, draw us out a circuit diagram. Pretty please.
The ‘pretty please’ misses the point 6. Why are you having a hard time understanding this? Do you not care about the feelings of those involved?
actually, anon, Night and you will not answer simple questions like how much software does it take to fill a breadbox.
But back to 112(f), there seems no justification, in my mind, to construe any claim as MPF unless it at least uses the term “means.” The statute says the use of 112(f) is optional, and specifies its form, exactly, before it can be invoked.
It seems the question should be focused on whether the optional use has been sufficiently invoked, such as, did the claim use “Means,” and did it recite no structure. Otherwise, the statute seems clear that 112(f) is not invoked because the request to invoke it was defective.
The question should never be asked in the first place without the claim having the word means in it.
“you will not answer simple questions like how much software does it take to fill a breadbox.”
See below: such question need not be answered because such question has no legal significance.
Stop obfuscating.
Lovely soundbyte Malcolm – you might have tried to understand what I said before you posted….
“The question should never be asked in the first place without the claim having the word means in it.”
I would be fine with that, given that the applicant has the power to choose the words they want to use.
Actually, Ned there is an answer to how much software it takes to fill a breadbox if simply slightly recast in how much software does it take so that the hardware to represent the structure of the software is bigger than a breadbox.
The answer, of course, is many billions of lines of code given current technology.
You see Ned you are simply dodging the issues.
The answer is easy, once you accept the fact that software is equivalent to firmware and is equivalent to hardware.
But even asking the question only indicates running away from the facts and the law that must be accepted as the starting point in any intellectually honest discussion.
Again I challenge Lemley to a debate based on Apple v. Motorola. Dennis can make the rules so that you can be assured it will be a civilized debate. But, then we all know you never will debate because your views are untenable.
The great and powerful Lemley as long as he has his vanity press The Stanford Law Journal to fall back on.
Prost is out of her mind. Heuristic is not means plus function. That is like saying hinge should be a means plus function. In this case, the claim is saying effectively some program to determine a certain type of finger movement. They are adding in heuristic to make it clear that his is not going to be black and white whether or not some swipes up and down or left to right.
So, they enable some types of using a heuristic and that is enough for the combination claim. The claim is not about how make the heuristic. The heuristic is merely a component of the machine. Sheesh. To limit the machine to only using the components for heuristic in the specification would render the claim unenforcemable–worthless.
And would lead to specifications that are 10,000 pages long. That would incorporate by reference potentially 100’s of thousands of pages. Absurd.
Again, we are getting this intellectually dishonest attempt to burn down the patent system and here from a federal circuit judge.
It is simply ridiculous. The claims should be construed to the scope of enablement. A person could file a patent on a heuristic to detect certain claim movements. That would be an improvement. Man. This is scary that judges try this kind of stuff. Lourie meet your twin.
What MM does is completely disruptive to real discourse. There is interesting issues here and if he were to argue Prost’s position then fine, but he is not. He is intentionally lying and trying to disrupt the discourse. He should be banned for this behavior. And I agree with you that if he is a lawyer that he is violating this ethical duties as well. He has said that he is a lawyer before.
Wow, did Genius Posner get scorched, and on multiple issues. About time.
But the elephant in the room is the 2-1 decision refusing to universally cabin infringement of software patents to 112. This will ultimately have to be resolved by the Supreme Court because as other commentators note, right now the outcome depends on the panel draw at the CAFC. The “everything is 112” infringement prong of attack is only a little behind resolution of the other prong of the attack (expanding invalidity exposure through inflated “abstract idea” analysis) about to be decided in Alice v. CLS Bank.
I still predict software patents and even business methods will emerge intact from Alice, because the Court will punt the same way they did in Bilski, refusing a blanket rule, refusing a bright line test, and hiding behind their tautological gobbledegook to declare a single patent “abstract” on the unique facts of the case.
But I’m not so sanguine about the 112-based infringement attack because it is less of a nuclear bomb and right in Robert’s wheelhouse: adopting Prost’s position (and that of the Board in Smith/Erol/Lakkala) will not destroy software patents, but it will narrow them into near-worthlessness. Which of course is the point, and precisely why Roberts can be expected to embrace it. Looks judicious and gets plaudits from the NY Times editorial page.
That is a scary and plausible prediction.
will not destroy software patents, but it will narrow them into near-worthlessness.
Got that, folks? A patent claim that covers an actual working piece of software isn’t worth anything.
But people will still buy that software. And you can still protect it. And people will continue to develop new software and sell it, regardless of whether the patent teabagger’s gravy train continues to run as smoothly as it has in the coddling hands of the admittedly dishonest Federal Circuit and the kool-aid drinking incompetents at the PTO.
Again, filth, he is talking about how narrow a patent claim is if it limited to only the express embodiments disclosed in the specification. But, then you know that don’t you? You are intentionally lying aren’t you? You see this is a prime example of why you should be banned from this board. You are intentionally lying.
It is not just that NWPA.
When such obfuscating and dissembling and yes, even outright lying are knowingly being done on a social media mechanism such as a blog, a lawyer (as Malcolm has intimated that he is such) does not have his ethical duties ‘suspended’ – he does not have those duties placed in limbo under the pretense of exercising First Amendment rights.
Prof. Crouch has directly said “No lying.”
Prof. Crouch has posted the rules for blogging include ‘Only personal thoughts be posted.’ Or paraphrased: no shilling.
It certainly does NOT help the perception that somehow Malcolm has an improper relationship with Prof. Crouch to see that the direct link to those terms of use is no longer available. (Don’t worry – still can be found: link to patentlyo.com )
“You agree that all content posted to the Blog is the sole responsibility of the individual who originally posted the content. You agree, also, that all opinions expressed by users of this site are expressed strictly in their individual capacities, and not as representatives of PO, its owners or employees.”
“You agree that you will not knowingly and with intent to defraud provide material and misleading false information. You represent and warrant also that the content you supply does not violate these Terms, and that you will indemnify and hold PO and Dennis Crouch harmless for any and all claims resulting from content you supply.”
And it should be noted that rather comply with these, that Malcolm resorts to name calling (attempting to denigrate me with a Mr. Principle moniker) while still maintaining his deceitful ways and even attempting Cry Baby Vetoes.
Not only has Malcolm volunteered an admission as to knowing the controlling law as to the exceptions to the judicial doctrine of printed matter, he has admitted knowing what that legally means.
And yet, he is constantly posting in a deliberate and intentional manner, providing material and misleading false information. It is without question that such type of posting is not only done with constructive lies, but also with material omissions.
I think MM should be banned. He clearly gets on here and lies to try and obfuscate the issues. It is horrendous to try to blog with him. Simply painful.
LOL – feeding him? I kind of like poking him in the eye with law and fact and watching him sputter out of control.
Do you get how he is trying to avoid his most recent self-fail concerning experimental use exceptions? It is as if he wants to impale himself on his lack of knowledge of patent law.
And MM you are not just intentionally lying, but you are intentionally trying to destroy this discourse. You should be banned from this board. This is a prime example of what you do day in and day out.
But, this one example here should be enough to ban you. It is no wonder that you have been banned on other boards.
I could not tell you that Malcolm has been banned on other boards.
I do know that certain of the little circle mates of his have been.
But it would not be surprising that Malcolm under one of his army of sockpuppets (which he swore he did not use ‘in years’ 😉 ), has been banned – his personal enmity and continuous diatribes against someone who does not even post here is beyond ridiculousness.
Agreed with @Tour on Alice, which is changing nothing, but:
“But I’m not so sanguine about the 112-based infringement attack because it is less of a nuclear bomb and right in Robert’s wheelhouse: adopting Prost’s position (and that of the Board in Smith/Erol/Lakkala) will not destroy software patents, but it will narrow them into near-worthlessness.”
I don’t know. With Renya writing in AvM and Lourie likely agreeing with that position, we see that the CAFC has six judges that won’t cooperate with any Supreme Court decision to put teeth in §112. Rader, Newman, Moore, O’Malley, Renya, and probably Lourie won’t have it. Even if the rest go along with likely developments in §112 from Nautilus and future cases, that leaves an evenly divided Federal Circuit at best. I’m betting that not every one of the other six will go along, either.
So §112 won’t be coming into effect in the near future any more than §101 is.
Won’t be coming into effect?
Try Owen that hopefully the patent system will not be crippled by activist judges that do not understand patent law.
Owen: do an experiment. Image that Prost won and held that the claims were limited to only those heuristic procedures in the specification. I am not going to take the time to write about all the problems that would cause, but one it would cause is that the specification would then have to include every way currently known for the hueristic procedures. So, that would add maybe 1,000 – 100,000 pages to the specification just for that one element.
And, filth (AKA MM), don’t deviate from this example. Just image that every specification would have to disclose every known hinge. That is absurd and evinces such ignorance of the patent system as to be unbelievable. The only conclusion one can draw is intellectual dishonesty. Grounds for impeachment for Prost. She should be impeached for her dissent.
Owen,
Since it is known that you are not a lawyer, I will cut you some slack, and merely ask you to back up your statement of “cooperate with any Supreme Court decision to put teeth in §112. ”
Which decision was it that you think had the Supreme Court directing the CAFC to “to put teeth in §112.”…?
Then turn around and realize that 101 IS in effect – as Congress wrote it – perhaps not the twisted nose of wax version that you may want to have the judiciary re write (in apparent violation of the Constitution and that document’s allocation of authority to the particular branch of writing patent law).
Maybe you’re right. My predictions are not ex cathedra and even if they were and even if I were the Pope they still would not be infallible. I think it is a risk, but nothing is certain.
Tour, if you know, what is the first case that suggested that a wholly functional claim element, not expressed in terms of means plus function, nevertheless had to be construed under 112(f)?
Anon has made the point, and a very good point indeed, that 112(f) is entirely optional – and is something chosen by the applicant. If he did not choose to avail himself, then why defy his choice?
This is the very best argument from anon in a very long time and I am persuaded.
“wholly functional”
Another subtle manipulation and moving of the goal posts….
…but that aside, I think I see your point here – you are finally recognizing the permissive language used in 112(f) and the fact – as shown in the Orthokinetics case – that functional descriptions are fully allowed under law – 112(a) and 112(b) – outside of 112(f).
“ in a very long time”
LOL – can the melodrama – I also recently switched your view on an aspect of 101.
This is just another side effect of a “you” problem Ned. You have this tendency to think that anything that aligns with your dogma must be right and is the ‘stuff of genius’ – even to the point of you thinking that when 6 aligns with you he is GD gifted.
Worth repeating (LOL, 160): link to youtube.com
Don’t know the first case.
I understand anon’s point and I understand your point about 112 being optional. That is not the point. The point is that a good part of the Board and CAFC (not to mention self-appointed opinion makers) do not see it that way and they have policy reasons for not seeing it that way which may carry the day.
Tourbillion, you do hit on a fact that certain judges (at a minimum) at the CAFC view their role not as properly understanding the law, but as a manner of changing ‘interpretations’ in order to play policy-makers.
I ran across this blog that indicates one such view – the infection of extrinsic value judgments pervading well established law:
link to bilskiblog.com
Melding the lessons from Braintree and Apple together to those who struggle with patent law (often, those very struggles stemming from extra-legal philosophical dogmas), and as the good professor notes in his comments on the Braintree case (and something that Malcolm tried to brush aside blithely), “patient” is a critical claim element.
Yes, perhaps not in the “third-grade” immediate sense that Malcolm so often accuse others of that which Malcolm (is apparently) doing, – and case law that Ned finds inconvenient and simply ignores, but in a very real sense nonetheless.
I offer for discussion the Orthokinetics case (806 F.2d 1565) 1986, which clearly shows that claim elements outside of the actual structure of a claimed item – and that may require effort outside of the claim itself (pay attention Random Examiner) – can no less impact that very structure recognized as validly claimed.
In that case, the functional language of “is so dimensioned” (which was completely dependent on an extra-claim structure) was the critical point in the reversing the district court.
Tellingly, this was not a 112(f) issue – even though functional claiming was involved (pay attention Ned Heller).
As is readily evident, functional claiming is allowed beyond the bounds of 112(f).
And much like the present case, the notion that a claim that requires some effort (“it is undisputed that the claims require that one desiring to build and use a travel chair must measure the space between the selected automobile’s doorframe and its seat and then dimension the front legs of the travel chair, so they will fit in that particular space in that particular automobile</I”) beyond the claim does not make the claim indefinite.
In the art to which the invention pertains is very much a driver.
And no amount of QQ from those whose agenda is to outlaw the art of software, will – or even can – negate the basics of patent law that thus must be recognized: functional claiming and some experimentation/analysis outside of the claim itself does not make a claim indefinite.
To paraphrase Orthokinetitcs, “The phrase “configured to” is as accurate as the subject matter may permit, software being of various flavors**. As long as those of ordinary skill in the art realized that the configurations could be easily obtained, §112(b) requires nothing more.” And note too – this type of functional claiming is entirely permissible outside of 112(f).
The dithering about what exactly that claim element means does not – and cannot – excuse the fact that it means something. Be it “patient” or be it a computer to be modified.
Clearly, take that limiting item out of the claim, and you are claiming something else. Thus, in Malcolm’s ‘effective’ microcosm, the element must have some ‘effective’ structural context. Since claims of a product-by-process nature are effectively geared to the same exact type of protection of a patented item, something more than a vapid “no” must be put forth in a counter-position to move the conversation away from the starting point I offered.
The name of the game is the claim – and all elements of the claim – as read and understood by a person having ordinary skill in the art to which the invention pertains.
.
When you have the law, pound the law.
.
** as noted in the past, the form of the language of software is itself not limiting. Any of the various software languages thus do not exclude the patent eligibility of software, and simply do not detract from what software is: a manufacture and machine component, in every legal sense equivalent to firmware and equivalent to hardware.
Anon, good post and I largely agree. A functional definition is acceptable if one of ordinary skill in the art would fairly understand what the claim covers without undue experimentation, and it doesn’t cover the independent inventions of others in that the claim scope is fully enabled.
Back to Halliburton, as I discussed earlier, the claim at issue in Halliburton had three elements, all three of which were old, two in combination and a third known. The Supreme Court admitted that the combination of all three was new, but even having said that, they held the claimed to be invalid as functional at the point of novelty. In other words, the case was internally inconsistent.
Faulkner v. Gibbs clarified that when a novelty was in the combination, there was no problem about functionally claiming the elements. Thus, exactly what Halliburton stood for is not clear.
Thus, §112(f) can simply be viewed as a clarification. In a combination claim, functionally defined elements were acceptable even if they were arguably at the point of novelty if expressed using the magic words “means for” or “step for.”
But as Frederico said in his commentaries, if the claim reduces to a single means claim in that the other elements, though appearing to be a combination, are nominal, then the claim is in fact violating O’Reilly v. Morse. I give you an example what I think Frederico was thinking about. Consider the invention of a screw, but the claim is the following:
1. Apparatus, comprising:
fastener means for attaching parts together.
Aside from the prior art problems, such claim should is both indefinite and not enabled for the full scope given the disclosure of a particular screw. What if I claim,
1. Apparatus, comprising:
a plurality parts; and
means for fastening the parts together.
I think this is an example of what Frederico had in mind as being effectively a single means claim.
Ned,
You continue to over-read, and thus mis-apply cases (and commentaries).
Halliburton was abrogated (whether Frederico recognized this or not is not clear given his comment of “that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined“).
Likewise, as I have shown you, Faulkner itself being decided prior to the 1952 changes cannot be used to bootstrap your views.
Lastly, there is NO discussion by Frederico that reflects a “Point of Novelty” take as you would introduce.
None.
Given the fact that a perfectly patent eligible and patentable claim can be comprised ONLY of non-novel elements, there is simply no distinction available to then differentiate in a case in which one of the elements is novel – regardless of that one element being in ANY particular form.
You over-extend the Frederico commentary on single means, and without ANY justification change that commentary to somehow be talking specifically about not only functional claims, not only about a (improperly-parsed) novel element of a claim, but further, to a inordinately and tortured view of a PON and functional claim.
You simply stretch this beyond the reasonable breaking point. Given the FACT that 112(f) is written in permissive language (not in mandatory language) and given the fact that it is well recognized that functional language is permissible under 112(a) and 112(b) for descriptions in claim elements OUTSIDE of 112(f), you have no justification for so torturing 112(f) and Frederico’s commentaries to try to arrive at your not-so-subtle agenda.
anon, the problem you have is not recognizing that Frederico had a point.
I agree with you that 112(f) is optional. But why? There must be a reason. Think about that for just one minute, will you?
I have no problem with Frederico.
I DO have a problem with your version of Frederico.
There is a huge difference.