In Nautilus, the Supreme Court made it easier to void a patent claim based upon its ambiguity.
I’m looking for a few real examples of cases where the standard makes a difference — claims that do not fail the ‘insolubly ambiguous’ test but that do fail the ‘reasonably certain’ test.
– Dennis
Scanning through these comments, I do not see a single example offered by the posters (who seem to be distracted into simply attacking each other) that would fit your question. In my view, it is manifestly clear that in this Nautilus case the CAFC analysis of the facts (read the CAFC opinion) would satisfy both standards.
IP maximalization comes home to roost:
“Our intellectual property is the training and fostering of our counselors, which makes for our unique environment,”
link to finance.yahoo.com
I wonder if they’ve filed for a patent on their ground breaking training and fostering or if they’re simply keeping that a “trade” sercrit?
misfire – noncompete is not an IP (or “patent maximalist” item)
in fact 6 – such flows from the anti-patent world view.
I know a “noncompete” is not IP. I’m talking about what the camp person said about his camp’s “IP” re re. It’s simply another example of how “IP” (patents and trade secrits at least, set trademarks to the side) is entering into fields where it simply has no place. Or at least the people in those fields think it is in their fields.
link to law360.com
More scandal on the horizon? Or perhaps more fallout from the old scandal?
6,
If you want scandal….
link to naturalnews.com
6, regarding GMO, one really has to read the Hugo-Award winning the Windup Girl to see what the world will be like when all food plants are GMO, and all of them have the “sterility” gene.
Anon, I note that Salmon in the see have now been modified to have Eel genes, for what purpose, I do not know.
But it would be interesting to see if the Salmon modification were patented.
link to law360.com
Well Ned I hope you’re happy having stirred up trouble.
But hey, I’m ready to lol if you are 🙂
6, thanks. But perhaps we should give Dennis some compliments as well because a lot of people read this site.
Patent licensing company eCharge Licensing LLC and an inventor on Thursday launched a suit claiming that the U.S. Patent and Trademark Office’s inter partes review process is unconstitutional because it denies patent holders of their right to a jury trial in infringement proceedings.
LOL. That is pretty funny.
I thought I had an example, but after consideration, I was not happy with its implications. Anyway, my example was a claim that would have a finite (2) number of possible interpretations, with no way to pick one interpretation over the others. I though such a claim would pass the “not insolubly ambiguous” test, because the claim has at least one plausible interpretation. But one may argue that having more than one interpretation is not enough to pass the “reasonable certainty” test. I felt happy with myself for a while, until I realized that with this logic, a “means plus function” claim may fail the “reasonable certainty” test if more than one embodiment are disclosed. Same thing could happen with a Markush type claim. That would not make sense…
I think with MPF that the office can demand that the corresponding structure be identified with certainty if the MPF clause is relied upon to distinguish the prior art. In this way, that structure is effectively amended into the claim.
If it were not for Donaldson, the Office could demand that the structure be amended into the claim.
“ office can demand that the corresponding structure be identified with certainty”
Does not make sense in context.
There is no “demand,” as MPF requires that the corresponding structure be contained in the specification.
Further, the doctrine of equivalents still applies (providing no prosecution events curtails the doctrine).
Period. There is NO “point of novelty” aspect invoked, and this goes to show Ned’s propensity for using PON as a canard.
“THE” corresponding structure?
How fricken naïve and inexperienced you sound anon.
and how biased and inane you sound Ned.
Now, you want to actually address the points of law instead of name-calling?
“Anyway, my example was a claim that would have a finite (2) number of possible interpretations, with no way to pick one interpretation over the others. ”
O look a miyazaki situation.
“But one may argue that having more than one interpretation is not enough to pass the “reasonable certainty” test.”
Actually you don’t even need to “argue” that.
“I felt happy with myself for a while, until I realized that with this logic, a “means plus function” claim may fail the “reasonable certainty” test if more than one embodiment are disclosed. ”
Ur dum bro. If more than one embodiment is disclosed then more than one embodiment is covered.
And, 6, if water one embodiment is disclosed and covert, just what is “the” corresponding structure? Shouldn’t the applicant be required to clearly identify what it is among the embodiments that is common such that one might know with some certainty, some reasonable certainty, without any substantial guesswork, what that subject matter is that is being claimed?
Why do you think “the” has to be singular?
Are you doing that kindergarten confusing breadth for indefiniteness thing again?
I think you have a typo in your first sentence there ned, but sure, if they didn’t say what does the function and it isn’t readily ascertainable then sure there may be a problem.
Ned, that’s what independent claims do, they cover plural embodiments. Why can’t I claim a device that does a function that has at its heart a computational element, be it a microprocessor, micro-controller, digital signal processor, ASIC or what have you?
“have a finite (2) number of possible interpretations, with no way to pick one interpretation over the others. ”
O look a miyazaki situation.”
LOL – wherefore does thou go, oh Markush?
” If more than one embodiment is disclosed then more than one embodiment is covered.”
Oh oh….6 said something that I agree with…. I’m pretty sure that’s the breaking of the sixth seal…beware the Apocalypse.
yes Les, we are running full-on headlong into the “mistaking breadth for indeterminacy” conundrum… 😉
Why is a broad independent claim that covers 2 embodiments not reasonably certain?
Les, and example:
claim: means for encoding and decoding.
This is the novelty.
The specification discloses to different codes.
The question becomes, what among these codes is common, or does the analysis look at equivalents of each in isolation?
What if one of the codes is old, and the other novel?
What about chemical patents – for example the use of fluorescent dyes in diagnostics? Of course the final product is ambiguous and may be a unique entity not thought of in the construction of the patent. However, everyone in the field knows how to attach the new dye to a protein of interest (expressed in the patent) and commonly use these dyes for detection or localization of the attached molecule. Does such a chemical moiety used in a diagnostic fail the ‘reasonably certain’ test?
If so, we are in big trouble.
Does such a chemical moiety used in a diagnostic fail the ‘reasonably certain’ test?
Can you be a bit more specific about the claim you have in mind? I can’t even tell if you are talking about a composition or a method.
It appears that he is talking of both compositions and methods, as he references “patent” which typically may have both, and he offers an example indicating “use” (that would be method) and also indicates “final product,” (that would be composition).
Come man, those vaunted English as a First Language skills surely has reading as a skill, right?
Come man, those vaunted English as a First Language skills surely has reading as a skill, right?
What?
lo…
No wait,
Lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol
ah…. Malcolm at his Vinnie Barabarino best.
Stephen,
I believe you are referring to a 112, first issue. See, In re Cohn, 169 USPQ 95 (CCPA 1971), for a somewhat chemical case on 112, second. In this case the term “opaque” appearance of a coating on an aluminium substrate is held to be ambiguous. The law on 112, second was always there, and admittedly, the Court could have selected a better case on the facts.
The claim is ambiguous and invalid becasue there is no disclosure on how to determine when a coating is opaque. How much of a selected wavelength of light does the coating reflect? Please give me a test so I known if my product infringes or not. That is what P2 is all about.
Dennis, on the main topic may I suggest that any claim that is functional at the point of novelty, including any means plus function claim claiming novel structure, inherently is indefinite.
Regarding means plus function, if the claimed element is claiming old and well-known structure, the functional definition in the claim itself should be sufficient to clarify the scope because one is claiming old and well-known structure. The functional definition is explanatory as much as a noun is explanatory if the structure is well-known.
However if novel structure is being claimed functionally, the scope of the claim is indefinite – even if one suggests that the claim covers the corresponding structure recited in the specification and equivalents. The reason is that is often unclear exactly what that structure is, and how much detail must be incorporated. In court, there are often battles over what the corresponding structure is. The defendant always wants to incorporate a lot more detail than the patent owner. The answer to this particular question is never clear. Because of that, the scope of even a means plus function claim claiming structure at the point of novelty is indefinite.
Because of this, the patent office should use Nautilus to impose a ban on claims that a functional at the point of novelty even if they are expressed in means plus function terms. What this means in practice is that an applicant cannot distinguish an apparatus claim or a composition claim or a claim to a manufacture in terms of its results, it’s functions, or its properties.
inherently…?
LOL not so given 112(a), 112(b), and 112(f).
Ned – call your congressman if you want a change to the law.
“the patent office should use Nautilus to impose a ban on claims that a functional at the point of novelty ”
EXCESSIVELY bad legal advice.
Are you an attorney Ned? That suggestion is so far beyond preposterous.
anon, we have the SC decision and 112(2). Claims have to be reasonably certain in scope – and this has nothing to do with enablement.
Ned,
This has every thing to do with in the art to which the invention pertains.
You seem to want to white-wash that part out of existence.
“so far beyond preposterous.” I agree
may I suggest that any claim that is functional at the point of novelty, including any means plus function claim claiming novel structure, inherently is indefinite
Again confusing what is enabled versus what is (in)definite.
Depending upon the point in the process, claim language is either compared with the prior art or a potentially infringing product. I claim “a process configured to display 5 parallel lines on the screen.” You cannot argue (with any credibility) that this is inherently indefinite (even if it is the “point of novelty”). On the contrary, determining whether or not a product infringes (or anticipates) is incredibly easy. Hence, the scope is reasonably certain.
The claim, however, does not disclose the different number (perhaps hundreds) of ways that this is accomplished. This is a question enablement — not definiteness. You look to the specification to see whether or not this function is enabled to one skilled in the art.
The reason is that is often unclear exactly what that structure is, and how much detail must be incorporated.
I feel sad for your clients — you clearly don’t understand the distinction between claims and the specification — or the purpose of claims. As a result, there is a good chance that your claims are bloated g-a-r-b-a-g-e that include far more limitations in them than necessary. Claims only need to distinguish the invention from the prior art and encircle the scope of the claimed subject matter — no need to have a description of the invention.
Read the first and second paragraphs of 112 … say … about a hundred times and focus on the different words they use.
What this means in practice is that an applicant cannot distinguish an apparatus claim or a composition claim or a claim to a manufacture in terms of its results, it’s functions, or its properties.
Which is a useless aspiration since I can claim the same thing as a method claim <– you never respond to that point. Why is that?
Oh No, do not confuse, as you do, process and system claims with claims to apparatus, manufactures or compositions. Of course processes and systems are functional by definition.
And do not talk about old elements that are claimed functionally.
And do not talk about enablement.
When claiming structure, functional at the point of novelty does not tell us what that structure is. Ditto a manufacture or a composition. That much is plain and simple, self-evident.
Now try again. I give you the better mouse trap were the novelty is a coil spring.
Claim it so that we have reasonable certainty.
Novelty is the claim, as a whole…
From Graham:
Let us first return to the fundamental disagreement between the parties. Cook Chemical, as we noted at the outset, urges that the invention must be viewed as the overall combination, or—putting it in the language of the statute—that we must consider the subject matter sought to be patented taken as a whole. With this position, taken in the abstract, there is, of course, no quibble. But the history of the prosecution of the Scoggin application in the Patent Office reveals a substantial divergence in respondent’s present position.
As originally submitted, the Scoggin application contained 15 claims which in very broad terms claimed the entire combination of spray pump and overcap. No mention of, or claim for, the sealing features was made. All 15 claims were rejected by the Examiner because (1) the applicant was vague and indefinite as to what the invention was, and (2) the claims were met by Lohse. Scoggin canceled these claims and submitted new ones. Upon a further series of rejections and new submissions, the Patent Office Examiner, after an office interview, at last relented. It is crystal clear that after the first rejection, Scoggin relied entirely upon the sealing arrangement as the exclusive patentable difference in his combination. It is likewise clear that it was on that feature that the Examiner allowed the claims. In fact, in a letter accompanying the final submission of claims, Scoggin, through his attorney, stated that “agreement was reached between the Honorable Examiner and applicant’s attorney relative to limitations which must be in the claims in 33*33 order to define novelty over the previously applied disclosure of Lohse when considered in view of the newly cited patents of Mellon and Darley, Jr.”
Moreover, those limitations were specifically spelled out as (1) the use of a rib seal and (2) an overcap whose lower edge did not contact the container cap. Mellon was distinguished, as was the Darley patent, infra, n. 18, on the basis that although it disclosed a hold-down cap with a seal located above the threads, it did not disclose a rib seal disposed in such position as to cause the lower peripheral edge of the overcap “to be maintained out of contacting relationship with [the container] cap . . . when . . . [the overcap] was screwed [on] tightly . . . .” Scoggin maintained that the “obvious modification” of Lohse in view of Mellon would be merely to place the Lohse gasket above the threads with the lower edge of the overcap remaining in tight contact with the container cap or neck of the container itself. In other words, the Scoggin invention was limited to the use of a rib—rather than a washer or gasket—and the existence of a slight space between the overcap and the container cap.
…
Here, the patentee obtained his patent only by accepting the limitations imposed by the Examiner. The claims were carefully drafted to reflect these limitations and Cook Chemical is not now free to assert a broader view of Scoggin’s invention. The subject matter as a whole reduces, then, to the distinguishing features clearly incorporated into the claims.
383 US 1 at 32-34
Was Graham about novelty or nonobviousness – or about 112?
In other words Ned – what point are you trying to make with your comments at 7.3.1.1.1?
Claim as a whole is bogus concept, anon, just as Graham aptly illustrated. Who can up with that phrase and why should be studied, as, in the end, it is a meaningless concept.
LOL – a bogus concept…?
Really?
Wow, talk about “How fricken naïve and inexperienced you sound“
Is this where you run and hide if I were to point you to the Diehr decision? It seems awfully convenient to want to use “claims as a whole” when a situation in which to NOT have such would point out that a “Point of Novelty” of a mere software program has the imprimatur of the Royal Nine…
By the way, how is your personal lack of understanding of the Nazomi case coming along? Still trying to paint that case as a “hardware only” case? Or is that another case where you would reverse yourself and somehow “claims as a whole” would “magically” NOT be the bogus concept you claim it to be?
Not so meaningless when you “need it”, huh?
Anon, I hardly run and hide from the Diehr decision. It is you who refused to answer the question: “Where in the statute is ‘claim as a whole’ required?” We all seem to agree that any requirements imposed upon patentable subject matter have to be based in the statutes. So where in the statute is the requirement that section 101 must view the claim as a whole. Is it in section 101 or is it elsewhere?
And if it is elsewhere, why are we debating whether the requirements of section 103 should be imported into section 101?
You run and hide Ned, because it is you that displays the duplicity of falling back on the “claim as a whole” when I ask you what is your vaunted “Point of Novelty” in Diehr.
You are the one who does not answer that question – and we both know why. It is the same reason why you engage in a course of purposeful and deliberate ignorance concerning the Nazomi case.
You would be forced to concede – on the record – that software (and software alone) creates an acceptable “Point of Novelty.”
Your third party interests force you into either stunning silence or violent dust-kicking, but neither one avails you shelter from the obvious conclusion that you cannot win this point.
Your confusion, anon, or better, your intentional confusion, is that claims must necessarily have a point of novelty. They do not. But when they do, the law commands that the claim not be functional at that point of novelty.
Your constant refrain to show us the point of novelty in Diehr is a little bit ridiculous because nobody ever asserted that Diehr had point of novelty. It has novel subject matter, but may be and is in more than one element.
Not at all Ned – I am merely pointing out your inconsistent use of (and dependence on) the cannard of PON.
The problem my friend is all you.
As to intentional and deliberate confusion, tell me all about the Nazomi case, or the Grand Hall experiment, or the exceptions to the judicial doctrine of printed matter, or to the notion that copyright can be had by software and copyright demands a structure in that copyright must be in a fixed media, or… (shall we continue to count the number of points that you have run away from in our discussions, only to proselytize with your CRP on yet another thread?
As to Diehr each of the elements (except that which you fear to mention) were all old in the art. Of course, you already know this.
Of course processes and systems are functional by definition
Really, why is a system claim “functional by definition”?
…because that is the way that things are in Ned’s alternate reality of Ned-IMHO-Law land….?
When claiming structure, functional at the point of novelty does not tell us what that structure is
You seem to forget (AS ALWAYS) that the description requirement is in 112, 1st — not 112, 2nd.
I wonder, is that forgetfulness….
…purposeful?
Oh No, the structure illustrated in the spec is only an example of the structure being claimed — unless the it becomes the law that all functional claim shall be interpreted as MPF claims.
The problem is that the structure being claimed is not definite — any structure that performs the recited function is covered.
Now try again. I give you the better mouse trap were the novelty is a coil spring.
Claim it so that we have reasonable certainty.
A mousetrap, comprising
a first member;
a second member; and
a coil spring operatively connected between the first member and the second member, wherein
the coil spring movable between a first configuration and a second configuration.
I could have just claimed the coil spring in isolation but the remaining limitations shouldn’t substantively narrow the scope. Of course, the claim doesn’t say what the first or second member is, what the coil spring does (exactly), or what the first and second configurations are. However, the claim doesn’t need to. Your problem is that you want the claim to spell out all these things — not a requirement.
Whether or not prior art (or an infringing product) is covered by the claims is reasonably certain. Start with the product (or prior art) and see whether or not all the elements are present.
Also, Oh no, your discussion of 112(f) and your failure to appreciate the inherent problems one faces in litigation in identifying corresponding structure clearly marks you a practitioner of very little practical experience. You’ve clearly never dealt with MPF in litigation, nor have you had your own patents litigated.
LOL – Ned, kindly refrain from lecturing others about 112 discussions and “failures” when you seek to insert your own “philosophies” as law when such are NOT law.
Such marks you as intellectually dishonest.
If you want the law to be different, plainly state so. Then you can inject your concerns based on philosophy or pragmatism or whatever. But to hide behind such and pretend that the law is something other than what it is and attempt a de facto change in the law is plain error at best and scurrilous at worst.
no, anon, what I say is borne from a lot of actual experience.
MPF at the point of novelty are as inherently indefinite as any functional claim unless one, on the record, identifies the structure that is corresponding. One must just as well write it into the claim — as one should. The ONLY thing blocking the PTO from actually requiring that is
Donaldson.
That case needs to be reversed.
born of experience?
No Ned – it is as I submit to you: bias and intellectual dishonesty.
Separate what you want from what is, recognize what is, and then put forth a cogent position to change from what is to what you want.
Anything less is easily seen through as a parlor trick.
“The ONLY thing blocking the PTO from actually requiring that is”
the law.
Sorry Ned, but I am right on the law and you are dead wrong here. We have discussed this before and I have used your own supplied reference of Frederico to show you that you were dead wrong.
All we have here is yet again you jumping on your merry-go-round of CRP – ignore the valid points raised – and CRP again.
Your schtick is rather old.
The PTO can require clear and definite claims. The only think blocking actually putting the novel structure into the claim to make them definite is the Federal Circuit. (Donaldson.)
…and the fact that the Office cannot disregard the law (Ned needs a little lesson on 112(f) and the inability of the Office to disregard the law).
Seriously Ned – you huff and puff about “naïveté” and then act as if the Office need not follow what 112(f) allows.
Are you trying to ruin your credibility?
anon, the very idea that Congress intended to allow the new clause regarding means plus function to trump the requirement that claims be clear indefinite is ludicrous. Frederico commented that the new statute but have little or nothing to do with the PTO because the PTO could not allow claims that literally read on the prior art. The new statute provided a claim construction using courts to preserve the validity of functional claims by construing them to cover corresponding structure recited in the specification and equivalents – refer to Westinghouse v. Boyden Power Break, a case that announced a rule in order to preserve the validity of the claim that was functional at the point of novelty.
Now you tell me that Congress intended to allow indefinite claims when it passed section 112 paragraph 6? I tell you that they had no such intention and that In re Donaldson was completely wrong.
Nice strawman Ned. You are assuming your own conclusion and I call you out for the obvious B$.
NO ONE is saying that claims are not to be clear and definite.
What IS being said is that your version of what that means is unfounded and that you do not get to assume the conclusion that you would need to prove.
I have shown you this directly already with Fredrico’s own words. The archives have this of record.
Stop kicking up dust and misrepresenting both what I and Congress (as reflected directly by Frederico) have said.
Anon, claims a functional at the point of novelty are inherently indefinite – that is a given. Just look at the Supreme Court cases from Perkins Glue, Wabash Appliance and United Carbon, to Halliburton. Means plus function claims do not become definite because of the construction clause. They become enabled. Only when the corresponding structure is identified in the patent specification or in the prosecution history or in court can one know what the claim covers.
“Anon, claims a functional at the point of novelty are inherently indefinite – that is a given.”
No Ned- that is precisely NOT a given – that is your conclusion that you insist on masquerading around as a given.
You are simply wrong on this point of law – and I have shown you why with the words of Congress in the 1952 Act and your own favorite source on those words: Frederico.
And Haliburton is still abrogated.
You’ve clearly never dealt with MPF in litigation, nor have you had your own patents litigated.
Why would anybody have MPF claims these days? Why would somebody want to litigate those?
Oh no, your discussion of 112(f)
I made no mention of 112(f).
failure to appreciate the inherent problems one faces in litigation in identifying corresponding structure
Yawn. I don’t care about “corresponding structure.” I care whether or not the product infringes the claim.
Oh No, but you were responding to my post that was in part about MPF and was discussing its limitation that the claim cover the corresponding structure. The problem identified was that one still did no know what that structure was with any precision.
I think this is where you might have become confused between 112, p.1 “support” and 112(f) “cover.”
Ned, I think you make an excellent point. I was recently reviewing some mechanical patents to devices (just as an initial screen; not my area of expertise) and some of them seemed completely unclear. The claims did not refer to particular drawings or drawing numbers or part numbers and did not use “means for” language. So what do they actually cover? I guess this might actually be good for an accused infringer after Nautilus, but you make a great point that the scope of the claims should be clear from the record and not need to be determined or resolved through litigation. Thanks for your post.
Coaxial,
You appear not to understand what claims are, nor understand what is required for claims from a legal perspective.
Not meant as a denigration, but Coaxial, you are not an attorney, nor familiar with patent law, are you?
What exactly is your “area of expertise?” – perhaps technical only?
anon, since you are against clear and definite claims, it appears you have no place lecturing anyone on your views.