Note that the below question is a hypothetical. As far as I know, Congress isn’t currently thinking of adopting something like this. Nor would I ever advocate for this language as its currently drafted. It was deliberately written so as to produce problematic results.
Question 8: [Limit: 150 words]
Congress is considering the following statute:
(1) IN GENERAL.—Chapter 11 of title 35, United States Code, is amended by adding at the end of Section 112(f) the following:
An element expressed as a function that does not comply with this subsection shall be in considered to be in violation of subsection (b).
Argue that this proposed statute is consistent with the policy considerations underlying patent law.
Question 9: [Limit: 150 words]
Argue that this proposed statute is inconsistent with the policy considerations underlying patent law.
Edit: Here would be the text of Section 112(b) and (f) as (hypothetically) amended:
(b) Conclusion.— The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
(f) Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. An element expressed as a function that does not comply with this subsection shall be in considered to be in violation of subsection (b).
The next big case: Baxter International, Inc. v. Fresenius USA, Inc
Seth Waxman’s petition: link to sblog.s3.amazonaws.com
In this case, after 11 years of litigation and after the judgment on damages was final and not even appealed, twice, after validity had been upheld in a prior appeal, and on further appeal where the only issue was an interim royalty and the right to an injunction, the Federal Circuit vacated the entire case because, in the interim the PTO, in a re-examination, had determined the relevant claims of the patent unpatentable, and had canceled the claims after an appeal by the patent owner to the Federal Circuit.
The basic argument is that the Federal Circuit’s view on finality stands alone among the circuits. Second, the decision of the Federal Circuit conflicts with a decision of the DC circuit that held that once a court’s mandate had issued, the subsequent change in the statutory law upon which the judgment was entered could not render the court’s judgment invalid because the right of the right-holder did not depend upon the statute, but upon the mandate.
The brief also suggested that what actually happened here was the result of an abuse of process and gaming the system by the infringer who did everything in their power to delay litigation once they had an adverse ruling on validity. The brief also noted that the purpose of re-examination was not to allow gaming the system as used by the infringer in this case, but to allow lower cost re-examination in lieu of litigation to reduce costs. Forcing the patent owner to conduct litigation in two forums, simultaneously, was not intended by Congress as a solution to reducing litigation costs, nor was it intended by Congress that judgments of the courts be superseded by the contrary opinions of the patent office on the validity of the patent.
The re-exam and IPR processes that Congress and PTO have provided take longer than is ideal. Sometimes even litigation can proceed to final judgement before IPR and appeals are complete. The result is that courts may be issuing final judgement on presumptively valid patents that do not even exist according to the ordinary patent process of prosecution and review.
The correct and obvious solution is that courts should issue a stay on patent litigation until the IPR process is complete. Final judgement, at least, must wait until the patent is determined to be valid or not.
In the slowly evolving Samsung v. Apple I case, judge Koh expressed frustration with the timeline of the PTO and its gyrations. One utility patent involved had see final office actions declaring it invalid and valid alternatively and the parties expected a truly final resolution around 2016 or 2018. A patentee was obviously being dilatory in order to delay validity determination beyond final judgement in order to collect damages on a patent both sides appeared to suspect invalid. Final judgement in the case, as in all these cases, should wait until the PTO and appeals are done.
Owen, as noted in one of the amicus briefs, courts are noticing that patent litigation is a waste of judicial resources given Fresenius and its predecessors that allow the PTO to ignore court judgments regarding validity, and allow collateral attack and multiple litigation between the same parties. Courts are not going to invest any time in patent litigation if their judgments are ignored and cast so easily aside.
The current reexamination regime was intended as a low cost alternative to obtaining a review on the validity of truly suspect patents. With nearly 100% of petitions granted, there is no meaningful gatekeeper function being performed by the PTO, and with gamesmanship encouraged, not discouraged, by the Federal Circuit, the intent of congress is flouted.
This case tends not only to undermine the patent system, but to undermine the court system. It is of fundamental importance.
Well, the PTO carries out little gatekeeper function in initial prosecution so it can only be expected that most IPR petitions are going to find invalid claims. I don’t think Congress should be happy about that, but it’s not going to change easily.
As far as Fresenius and other priority of invalidity issues, the accused have a right to challenge government actions taking their rights away. Relying on previous proceedings where the present defendants didn’t get to present their case on validity is never going to work. The recipient of a privilege is always going to have to defend the entitlement to that privilege at every level of review or else there isn’t any case against an infringer. Particular arguments over invalidity can be estopped from being asserted by any given defendant in more than one venue, though.
Well, alternatively, Congress could fund the PTO sufficiently to get the IPRs done in a timely fashion. There are many offices, even in the government, where the pace of litigation isn’t considered an unreasonable lightning-fast standard of speediness.
With appropriate appeals deadlines and if the PTO were not treated as a tiny slush fund for other government operations, it could happen. In fact, I wonder that such a proposal didn’t make it into the patent reform bill. Maybe we could all write Congress about it early in the process next time.
Do judges really resent and delay proceedings when they know administrative agencies could render their work moot? I know that cases I follow in ND Cal often see judge Koh and judge Alsup among others creating a deliberate delay in IP cases while they threaten all litigants with unfavorable outcomes if they won’t come to a settlement before trial. I always thought the judges were probably just busy.
“Well, the PTO carries out little gatekeeper function in initial prosecution”
Translation: rubber stamp of Accept Accept Accept by the Office is going on.
“the accused have a right to challenge government actions taking their rights away”
Translation: infringers’ rights shall not be denied.
“Congress could fund the PTO sufficiently”
Translation: Owen really does not understand how the patent office is funded, and cannot be bothered to understand this.
“There are many offices, even in the government, where the pace of litigation isn’t considered an unreasonable lightning-fast standard of speediness.”
Translation: … (your guess is as good as mine)
“I wonder that such a proposal didn’t make it into the patent reform bill.”
Not for lack of effort, as such was a proposed part of the AIA. Owen, you might want to recognize why the real intent on these measures to weaken the patent system would make this “No Skimming” notion unpalatable.
Looking at the translations and overall lack of awareness, Owen’s lemming march to the Malcolm mantra is unmistakable.
Well, Owen, once the patent issues they are property and they are presumed valid. Infringement is a strict liability trespass, like all trespasses to property. I don’t know how one can think that patents are privileges, because an attribute of privilege is that they can be revoked at will by the issuing authority.
Furthermore, the government’s right to revoke a patent lawfully granted against the will of the patent owner has never been tested at the Supreme Court. I am slightly surprised that Seth Waxman did not point this out in his petition. He just assumed that re-examinations were copacetic.
You should know that IPR’s take about a year and a half total by statute. They cannot drag on like re-examinations.
I don’t know much about the Samsung strategy in its lawsuit against Apple, or whether validity of Apple’s patents is a big issue in those cases. But the Fresenius case is exceptional where the defendant begin to try to delay the entire case in court after it had lost on validity. They asked for the trial to be delayed pending re-examination, but only after they had lost. The district court accused them of blatant gamesmanship. Seth Waxman’s brief is very powerful this point.
“the Federal Circuit vacated the entire case because, in the interim the PTO, in a re-examination, had determined the relevant claims of the patent unpatentable, and had canceled the claims after an appeal by the patent owner to the Federal Circuit.”
Oh. BUUUUURRRRRN. Lol.
6 laughs as he appears neither to care nor to understand why Ned would feel outrage at this…
(and will no doubt want to project these symptoms onto others that may well show care and understanding)
Oh nah I tots understand re re. And I also care a smidgen, but not much. I don’t know anything about these two parties, I’ve got no dog in their fight.
Doesn’t mean it isn’t hilarious that the government would have such a system in place in the first place.
“and will no doubt want to project these symptoms onto others that may well show care and understanding”
Bandying those words around isn’t going to make anyone think you’re smart brosef, or that I’m exhibiting any “symptoms” of “no disease”.
lol- there you go projecting again.
I do not ‘bandy’ the words to try to “make anyone think [I’m] smart brosef,” I use the words to indicate what the situation is.
You seem neither to care or understand the difference.
“I use the words to indicate what the situation is.”
Well why don’t you tell us a bit more about what “the situation is”? Perhaps you could tell us what disease you think I may have?
Perhaps you could tell us that. You know, while you’re busy trying to have a pseudo-intellectual discussion about a topic that will move attention away from the topic of you. If I were a trained clinician treating you you’d be trying to get out of keeping focused on your feelings in this precise manner.
And look, anon, check this out, someone made a whole section on a website to try to describe OCPD in positive terms.
Excepting the part about your overwhelming ability to feel for others (due to that being blocked by your psychopathy) it really nails the positive aspects of this condition for you.
link to giftofocpd.com
LOL -the diseases you may have…?
Where do I start? 😉
“Where do I start?”
Please, feel free to start anywhere. I’ve been asking you to for awhile.
Um, that was rhetorical – you have not been paying attention for awhile.
Start by fixing your reading skills.
Followed closely, by attending to your propensity to project your own symptoms onto others.
A third step would be to start treating aspects of law and certain facts as objectively determinable.
These three things alone should keep you busy (fruitfully) for quite some time.
“Start by fixing your reading skills.
Followed closely, by attending to your propensity to project your own symptoms onto others.
A third step would be to start treating aspects of law and certain facts as objectively determinable.”
None of those are diseases.
With you they are, given your obsessive/compulsive irrational addiction to them, all the while wanting to pretend (in a delusional state) that they are not problems for any type of intellectually honest discussion.
Just ask your doctor already.
“With you they are”
Meh, I, and other normal people, don’t really care either way whether they are “with me” or not, I, and other normal people, care about whether the things you mentioned are diseases “to doctors”. And “to doctors” they’re not diseases. Just fyi, that also means that if I did tell a doc about the supposed behaviors noted they would not and could not help me, in fact they wouldn’t even try. Though if they were a therapist they may give me some helpful hints about how to deal with a psychopathic person with OCPD.
But let’s not let ourselves get distracted. On the other hand, you have a disease (psychopathy) and a disorder (ocpd), which are both, to doctors, quite legit conditions.
“I, and other normal people”
LOL – there is your first (and it is massive) mistake.
You appear to be in some serious denial. Add that to your list of symptoms to discuss with your doctor.
“denial”
I’m going to presume you’re trying to use that word in the psychological sense, where it is “abnegation” and is a defense mechanism. And what am I defending myself against mr. psychopath?
You seem really touchy on that subject 6…
I must have hit a nerve with you.
(for starters, you may want to read up again on that projection problem of yours)
Gee, we better make it harder to enforce patents. 🙂
According to various court records and people who have worked with Samsung, ignoring competitors’ patents is not uncommon for the Korean company. And once it’s caught it launches into the same sort of tactics used in the Apple case: countersue, delay, lose, delay, appeal, and then, when defeat is approaching, settle. “They never met a patent they didn’t think they might like to use, no matter who it belongs to,” says Sam Baxter, a patent lawyer who once handled a case for Samsung. “I represented [the Swedish telecommunications company] Ericsson, and they couldn’t lie if their lives depended on it, and I represented Samsung and they couldn’t tell the truth if their lives depended on it.” — Vanity Fair: The Great Smartphone War.
The Vanity Fair article makes it clear that marketplace (i.e., price-to-performance) competition was the best avenue for Apple, but it chose to infringe others’ patents–how many times have we seen Apple being sued by Sam Baxter’s firm?–while claiming that it would engage in “nuclear” war against Samsung. Samsung, quite naturally, delayed the litigation and competed in the marketplace.
The quote in Vanity Fair from Sam Baxter should start the debate on legal ethics.
This is classic tension between “law of rules” vs “rule of law” and presumes that language can only be used a certain way regardless of context. (Is ‘lift’ a noun meaning elevator or a verb meaning to raise?) Such rigidity could lead to an inventor being deprived of Patent protection for an invention that truly promotes “progress”, hence a violation of patent law policy reflected in the Constitution.
OT from the discussion fodder offered by Prof. Rantanen,
but very much in line with the lively and energetic continuing discussion on the 1952 Act and that Act’s consequences and intersections with the patent eligibility question of 101, the Court’s excessive grab of power (pushing the violation of the separations of power doctrine) and even involving WHY Congress created section 103 (and stripped the power of the Court to use the tool of common law evolution to define “invention”), Sherry Knowles (pejoratively labeled an industry-shill at the PatentDocs discussion), offers some deeply incitement (and yes, some resoundingly familiar) analysis at
link to managingip.com
I invite all to become informed.
The PatentDocs discussion can be found at:
link to patentdocs.org
anon, good post by Sherry, but she sets up a strawman and knocks down in her post. Let me explain.
It is quite true that Funk Brothers had a claim that was functional at the point of novelty, thus broadly claim the principle. We today would recognize this problem as being a section 112 problem; and in I think we should urge the Supreme Court not to view functional claiming as a 101 issue. It confuses.
Then she turns to Myriad and said the issue there was invention. But the problem is, there was no question as to whether the particular DNA claimed was new over the prior art. If that were the only question involved, then her whole article would make sense.
But if you look to what the court held in Myriad, it rested the statutory basis for its holding on the lack of “newness” in 101. Thus a product of nature, unknown, and therefore not prior art, nevertheless is not new. That is the holding of Myriad.
Thus her whole piece is a misdirection because she diverts attention from the holding to her strawman.
Ned,
What you would choose to do is the strawman that you attempt to set up and that was knocked down by the Court itself in Prometheus. The Court actually knocked it down TWICE – first by dismissing the government brief, and then by its emphasis that the Court’s implicit writings of judicial exceptions would not be allowed to be made into dead letters.
This too is a facet that I have attempted to impress upon you as to exactly whom should be held accountable for so messing up the jurisprudence of 101.
Further, I have steadfastly rejected your version of Myriad. Your desire to somehow parse “new” into the equation and utilize a time dependence fails scrutiny of the Court’s word in Chakrabarty, as well as is highlighted by the call I made to you on a recent thread to discuss a new mineral just discovered.
Clearly, your attempt here to completely dismiss ALL merits by saying her piece is nothing but a strawman is suspect.
I am saddened (but not altogether surprised) that you would seek to avoid any meaningful comments here. You do realize that she held a post within the USPTO, making her viewpoints especially interesting, right?
anon, I don’t have a “version” of and Myriad. I have often quoted you the exact words from that case. The court cited section 101 and “new” as a statutory basis for its holding. Do you want me to again quote that language to you?
You have a version.
That you do not think that you have a version is part of your problem.
No, anon, you have a problem with reading comprehension. Many posters here have noted that problem with you.
I can quote the facts, the issue and the holding of a cast to you ad nauseum, and still you will sit there in denial.
LOL – Take note of which posters those are Ned: it is the posters that are in direct opposition to my views.
Tell me about quoting a holding of a case as I am the one that corrected you regarding Bilski‘s holding of abstract as opposed to your quotes of business methods.
Tell me about quoting a holding of a case as I provide you the Black’s Law Dictionary of holding and show you that the holding in Alappat is as I have always said it is.
Tell me about Nazomi. Oh wait, you still feign personal ignorance on that one.
Sorry Ned, but I hold the high ground here. See Sun Tzu.
(and it is actually funny that you claim I am the one with the reading problem as you are the one butchering the reading over on the Hricik side of the blog)
anon, if you are just be willing at times come off your high horse and discuss a case thoroughly, with back-and-forth, on the facts, the issues, and the law, you would get along a lot better not only with me, but with everybody else here on Patently O.
I suggest you begin generally doing what you are now doing with me in the Hricik thread on the AIA pitfalls – provide examples so we can be on the same page as to what we are talking about.
you claim I am the one with the reading problem
Lots of people have observed this about you, TB.
Your problem goes much deeper than “reading comprehension,” however.
exactly whom should be held accountable for so messing up the jurisprudence of 101.
Should people be able to protect new thoughts by appending a step of thinking about those thoughts to old conventional data gathering steps?
I don’t know anybody who believes that should be allowed.
Do you believe that should be allowed?
Prometheus thought it should be allowed.
The Supreme Court wisely shut Prometheus down. That was a 9-0 decision and it’s never, ever going to be reversed.
Are you ever going to stop crying about that? Is Kevin Noonan ever going to stop crying about it? What about Sherry Knowles? What about Gene Quinn? How long do we have to listen to these people crying about the fact that you can’t use patents to protect abstractions and facts?
Because make no mistake: that’s what they’re crying about. And they’re crying about it for one reason only: $$$$$.
Ned: we should urge the Supreme Court not to view functional claiming as a 101 issue. It confuses.
There’s nothing confusing about it. “New functionalities” are not eligible subject matter.
When your claim recites a new function but nowhere describes the new structure responsible for that new function, you’re claiming a new functionality.
“New functionalities”
The Red Queen / Humpty Dumpty has so declared.
Never mind that ‘oldbox’ must be physically and structurally changed to have these “new functionalities” – otherwise inherency would be enough protection under existing patent laws…
(Remember, claims are to be read and understood by the person having ordinary skill in the art to which the invention pertains – and to that ordinary person, ‘configured to’ is structural language – every bit as much as “effective to” or “dimensioned so that”)
That is a great essay by Sherry Knowles. She points out that the greatest problem is a judge just looking at it and saying whether or not they think it should be an invention without some type of real test.
Night, But she is talking about the Myriad case, the case that had nothing to do about “invention.” Nothing at all. The rubric invention is what the courts used to determine whether differences between the prior art and the claimed subject matter were sufficient to merit a patent. How does one express that in terms of law? The Supreme Court may have been all over the map on is, which is why we codified section 103. But has nothing to do with Myriad, which is not decided on the basis of prior art, but on the basis that even if DNA was first discovered by the patentee, it was not new within the meaning of section 101.
Come on Ned, Myriad is a case where I predicted the outcome, but I don’t agree with the holding. The SCOTUS did define what “new” meant under 101 by determining that isolating a sequence from the DNA molecule didn’t count as new. I don’t agree with the holding and not just for the pedantic reasons that there are other molecules in the isolated form or that the isolated form is a replication of the original sequence. I disagree because I think they discovered something in nature. The vast billions and trillions of different isolated molecules that can be gleaned from the DNA should make the sequence a discovery and certainly the us of the sequence should be patent eligible.
Night, The court made it clear they had no method claims before them. But the sequence itself was a product of nature and therefor not a new and useful composition of matter.
The Court framed the issue:
“We must … determine whether Myriad’s patents claim any “new and useful … composition of matter,” § 101, or instead claim naturally occurring phenomena.
…
“Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention.
…
“Myriad found the location of the BRCA1 and BRCA2 genes, but that discovery, by itself, does not render the BRCA genes “new … composition[s] of matter,” § 101, that are patent eligible.
…
“Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule. Myriad’s claims are simply not expressed in terms of chemical composition, nor do they rely in any way on the chemical changes that result from the isolation of a particular section of DNA. Instead, the claims understandably focus on the genetic information encoded in the BRCA1 and BRCA2 genes.
…
“[C]reation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring. … As a result, cDNA is not a “product of nature” and is patent eligible under § 101. … [T]he lab technician unquestionably creates something new when cDNA is made.”
The Court indicated that had the claims been to the composition and not to the sequence, they would have passed 101, just like cDNA.
Moreover, when considering a claim to a composition, the eligibility of the process for creating it is irrelevant. Perhaps the court could have been clearer on this point.
We should note here that in Mayo we had the same situation and result — an eligible process (taking a drug, an conducting a blood test) that produced ineligible information. The eligibility of the process was largely irrelevant where the claim was to the information.
“The Court indicated that had the claims been to the composition and not to the sequence, they would have passed 101, just like cDNA.”
This version is just not correct.
anon, Lurie had pointed out how the isolated DNA composition is structurally different from the structure in nature. The Supreme Court distinguished this structure, which it seemed to agree claimed patentable subject matter, because the claim did not claim that structure, but the sequence.
Ned – again it is your version I disagree with. You are doing that over-reading thing again.
Ugh! anon, if you disagree with the analysis do more than just say that you disagree, tell us why.
some resoundingly familiar
ROTFLMAO
Assume the policy expressed by Congress since 1836, and by Supreme Court in support, is that claims must particular point out and distinctly claim the invention, and must not read on the prior art, is there any justification for allowing an applicant, or a patent owner in court, to distinguish the prior art, not by reference to the claim language, but instead by reference to the corresponding structure? In other words, without more, the claim is claiming an old combination where all the elements are known and are known in the combination claimed, and where the sole novelty does not lie in the claim, but in the corresponding structure recited in the specification. Does such a claim, within its four boundaries and not by incorporating subject matter from the specification, distinctly claim the invention?
The answer is no. The answer is clearly no. The answer is unmistakably no. It has been the congressional policy and the policy Supreme Court for nearly 200 years that the claim itself must claim the invention.
The better question then is whether In re Donaldson was correctly decided, and whether it should be overturned by taking the issue to Supreme Court or by a legislative fix, particularly by repealing §112(f).
You misplay the fact that inherency is still a valid mechanism to control the thing you want to control.
Thus, the fallacy you wish to engage in: ‘oldbox’ contains all future improvements as those improvements may come to be realized through the additions to ‘oldbox’ of the manufacture known as software – and at least in part (but extending to the non-software arts as repeatedly shown) is exposed.
(btw, repealing 112(f) does not stop the ability to employ functional claim language – either at or not at your so called Point of Novelty)
anon, of course it doesn’t stop one from using functional language. 112(f), should not apply to old elements. Applying it to new, does not tell us what the invention is.
So where does that leave us?
“Applying it to new, does not tell us what the invention is.”
You assume a conclusion that you have not proved.
Just as you attempted to do with the demand for “structure.”
claims must particular point out and distinctly claim the invention, and must not read on the prior art, is there any justification for allowing an applicant, or a patent owner in court, to distinguish the prior art, not by reference to the claim language, but instead by reference to the corresponding structure?
As I believe you have noted previously, a claim to the function itself can easily be accomplished with a method claim. The justification (or if you would like, the “explanation”) is that there is no reason to deny device claims the same flexibility in verbiage as that provided to method claims.
Also, as I have noted time and time and time again on this blog, there is oftentimes a blur between what is a structural phrase and what is a functional phrase. A structural term can just as easily be used to encompass subject matter not contemplated by the inventor as a functional term.
These terms are nothing more than “names” or “labels” we’ve given certain things. A “truck” doesn’t necessarily connote certain structure nor does a “switch.” If you want definite structure, then you could require actual blueprints and engineering specifications. However, blueprints and engineering specifications only identify specific embodiments — they say nothing about the invention itself. To best claim the invention, we don’t use exacting blueprints — we use squishy words — words that were generated based on the structure, the function, or both.
It may take longer for some than others, but spend enough time drafting claim language and it is easy to see that limiting claim language to just “structural” terms (whatever that means exactly) is as senseless a suggestion as banning all words that include an “e.”
Owen, regardless a label and regardless of whether the term is structural or functional, the bottom line still remains is whether the claim is sufficiently particular so as to identify what the invention is in the claim itself. When invention is in fact the new structure, as opposed to a new method, then that structure should be claimed with sufficient particularity, and not in terms of what it does.
“ and not in terms of what it does.”
Not exactly right, Ned. Remember that clarity that is important is the clarity to the ordinary person in the art to which the invention pertains.
You keep skipping over this.
Also, as I have showed you, the use of functional claiming is permitted under law under 112(a), 112(b), AND 112(f) – separably and distinctly. Quite in fact, ‘configured to’ is structural language, every bit as “effective to” or “dimensioned as to.”
You keep skipping over this.
When invention is in fact the new structure, as opposed to a new method, then that structure should be claimed with sufficient particularity, and not in terms of what it does
I see you are doing your clients a great disservice with that approach. I have found, in most instances, the underlying invention lies not in what something “is” but what it “does.”
You shouldn’t end your inquiry when the inventor states “this is my inventive structure.” Instead, you should ask yourself (and the inventor), what is being accomplished with this inventive structure? Typically, what is being accomplished is an action — sometimes called a function. Once you’ve identified the underlying action, you can then ask the inventor is there any other way to achieve the underlying action. Rarely is there only one way to accomplish this underlying action. If so, you want to craft your claims to cover all possible ways of accomplishing the underlying action.
Sometimes an invention lies in performing an underlying action (already accomplished in the prior art) with a new structure. If so, then it may be appropriate to focus more on the structure.
Mr. No, The premise of my point was that the only novelty was in the new structure.
If the invention is in what it does, a method or system claim is appropriate.
But, when claiming apparatus, claim structure.
The PTO and the FC have been lax in enforcing the basic principles of the patent law, allowing method claims to be claimed as apparatus — as in programmed computers and CRM.
Ned
What about when the invention is a method and a software modification to an old machine to get it to preform the method?
I anticipate that you will say only the method is the invention and that the modified machine should not be claimed.
But that requires that I sue my competitors customers and not my competitor. Because it is only the customers that perform the method using my competitors product. My competitor only makes a device that could be used to preform the method.
Wouldn’t you prefer that I sue my competitor?
If not, you end up with the situation we have, where podcasters are being sued instead of the guy that sold the software than lets them do the podcasting.
Isn’t that exactly the situation you want to avoid?
If so, let me claim the modified device functionally (as the exact structure is not the invention, the invention is the function, independent of the exact physical implementation). It doesn’t matter if its a desktop, laptop, ipad, cell phone or single purpose device and its not fair that you try to limit me to one of those.
Les, you sell software that is executed by a computer. The computer does something new under control of the software.
1. If the something new is a larger machine, like a cell phone, there is a direct infringer of an apparatus claim available, and the software could be construed as a component under 271(c).
2. If the something new is a process, like driving a car or a molding process, the software could be construed as a material or apparatus for use in practicing a patented process. [Although there might be some ambiguity in this point considering that software is neither a material or an apparatus.]
Ҥ271(c)
Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.”
“considering that software is neither a material or an apparatus”
Tell me again Ned (or yet for the first time) how does this thing of yours that is not material obtain a copyright?
BREAKING NEWS: Apple Wins $120M In Latest Samsung Patent Battle
A California federal jury Friday ordered Samsung Electronics Co. Ltd. to pay $119.6 million in damages to Apple Inc. for infringing three of Apple’s iPhone patents — far less than the $2.19 billion Apple said Samsung owed for infringing five patents in the rivals’ smartphone war.
Well this is interesting, isn’t it? Samsung buys a patent and sues Apple. It receives only nominal damages. Should Samsung be entitled to an injunction, because with respect to the infringed patent, it is an NPE. Or is it enough that Samsung is selling competing products?
Neither side in these cases where the patented ‘item’ involves much less than one percent of the product’s value should be entitled to an injunction. (In fact, we’re looking at patents that are collectively well under one percent of one percent of a smartphone’s market value.)
But Samsung especially with its shady litigation behavior, trolling, and contempt should not be entitled to any injunctions.
Lucky for both sides, smartphone product cycles are 12 months and litigation takes three or more years. So injunctions are probably moot for obsolescence.
…because an injunction and the right of the patent have so little resemblance to each other….
No, um, wait.
“Lucky for both sides, smartphone product cycles are 12 month”
Owen, you do realize that this statement actually favors injunctions, right? If it is so easy (and quick) to remove any offending feature, then there is less reason to quibble over the remedy that so MOST clearly matches the right transgressed.
Owen, Lucky for both sides, smartphone product cycles are 12 months and litigation takes three or more years. So injunctions are probably moot for obsolescence.
This seems argue for granting preliminary injunctions against Samsung since they seem to be a repeat offender, and furthermore since they seem to think that patent infringement is a nuisance they can deal with the few dollars.
idk dude samsung takes ip pretty srsly from what I’ve seen of them.
“This seems argue for granting preliminary injunctions against Samsung since they seem to be a repeat offender”
Yes, it does. It adds a weight towards preliminary injunctions. The standard there is rightly steep, though. At least one has been issued in error in the case and needed to be removed while a related ITC case injunction was vetoed by the president, so I don’t expect to see more such injunctions.
The patents at issue between Apple and Samsung are almost all frivolous, trivial, and issued in error (under §102 or §103). It is best for the industry and the consumers if these cases can be settled without disrupting the industry. These patents are not the kind that “promote the progress,” and blocking innovation for their sake would be very bad.
That it is lucky for both sides for legal consequences to be so small is a fact, not a legal conclusion.
And here’s another little factoid for our consideration. It appears Samsung denied (apparently in a discovery request) that it had sought indemnity from anybody, but Apple revealed in court that Samsung was lying, and that indeed Google was paying for the Samsung defense.
Now why would Samsung lie? Could it be that Google had brought late IPR’s and didn’t want the fact that it was controlling Samsung’s defense to be become public knowledge?
Does anybody know whether Google has filed any IPR’s against an Apple patent?
Furthermore, I find the ethics of Samsung to be appalling. Anybody else have the same view?
Woah, thta’s a lot of money. Good job, Apple!
How apropos: today precedential opinions include GE LIGHTING SOLUTIONS, LLC v. AGILIGHT, INC, link to cafc.uscourts.gov where the issue was the construction of the term IDC connector that were known to the art as encompassing a number industry recognized structures. The district court held the interpretation to the disclosed examples. The Federal Circuit reversed because, regardless of the examples, there was no disavowal of the broader meaning known to the art in either the specification or prosecution history.
Note, the claim was to a combination an nothing indicated that the particular form of IDC connector was important to the novelty. This is a example of a functional definition of known structure that is quite apropos and why 112(f) is a problem. If the claim had been construed under 112(f), the particular embodiments would have been chosen despite the very broad and functional claim that fully intended to claim all versions of the IDC connector.
Fortunately, by the type the patent was filed, the industry had developed a generic term for the structure that could be used to avoid 112(f). But it also shows why 112(f) is wrongly applied where old structure is being claimed. The authors of the act seem to have assumed that 112(f) would only be used to claim new structure. But, that is hardly where MPF were normally used.