The Malleability of Patent Rights

By Jason Rantanen

Folks who write about patents commonly explain the concept by drawing an analogy to real property rights, with the metes and bounds of a patent set out in the claims rather than a deed description.  Drawing upon this analogy, a common critique of by scholars such as Jim Bessan and Mike Meurer is that patent boundaries are much less clear than those of deeds.  Related to this uncertainty in scope is the fact that the very existence of the rights themselves is hardly certain.  While issued patents come with a presumption of validity, it is only that: a presumption.  Patent claims can be and are invalidated by courts.  Commentators have used various terms to describe these attributes, terms that when unpacked mean somewhat different things.  Indeterminacy and probabilistic rights are two of the most common.  Regardless of the terminology, the core idea is that that patent rights are characterized by a degree of uncertainty.

In my most recent long-form work, I describe another important characteristic of patent rights: their malleability.  By malleable, I mean that the scope and strength of the right can be changed after the patent is issued through an array of mechanisms, thus allowing actors operating within the patent system the ability to change the very contours of the right.  In other words, not only can patent rights involve something akin to a roll of the dice or an inability to definitively pin down their scope, but the outcome of that roll or the contours of the uncertainty can be changed by the actions of the parties involved.  An obvious example is the role that skilled counsel play in litigation, but that’s not the only way that patent rights can be altered after issuance.

Over the past few months, we’ve seen quite a few manifestations of this malleable nature of rights; most recently in the Federal Circuit’s decision this morning in Content Extraction v. Wells Fargo Bank invalidating an issued patent on section 101 grounds.  The rise in importance of Section 101 is in large part the result of individual actions pushing and pulling on patent rights using those tools at their disposal, as attorneys develop creative new ways to deploy the legal precedent and policy arguments.  The consequence in this case is that the patent rights are eliminated well after the patent issued.  There are, of course, better examples of malleability than invalidation: claim construction is the one that most quickly comes to mind.

Ultimately, it’s not clear to me that malleability is a desirable characteristic.  Although there are individual doctrines where malleability may be necessary, I have yet to come up with a good theoretical justification for it on a broad scale.

Read The Malleability of Patent Rights here: http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2540356.  The article is still a draft, so well thought out comments and responses are particularly welcome.

84 thoughts on “The Malleability of Patent Rights

  1. 16

    Let’s try again…

    One ponders the “malleability” that the Found1ng F@thers (i.e. think Feder@list Papers) would consider this patent bl0g invoking a “real-name only” policy on a string of articles dealing with an originality topic like “Interpretation-Construction.” (or at least one can be sure that from the historical perspective, the ir0ny is lost on the moderator).

    Of course, no rationale was given for such a “policy” move, but it is easy to see that whatever “preferred” discussion results may be being aimed for, those results simply are not rigorous enough to withstand some sharp or pointed commentary.

    Perhaps the byline should credit the M1n1stry of Tr uth…?

    1. 16.1

      One of my favorites, Ben Franklin:

      link to pbs.org

      Not unsurprisingly, a quote attributed to Ben: “It is the first responsibility of every citizen to question authority.”

      Being “comfortable” with and mandating a certain level of “politeness,” creates “political correctness” which ends up being all about the political and nothing at all about the correct.

  2. 15

    Let’s try again…

    One ponders the “malleability” that the Founding Fathers (i.e. think Feder@list Papers) would consider this patent blog invoking a “real-name only” policy on a string of articles dealing with an originality topic like “Interpretation-Construction.” (or at least one can be sure that from the historical perspective, the irony is lost on the moderator).

    Of course, no rationale was given for such a “policy” move, but it is easy to see that whatever “preferred” discussion results may be being aimed for, those results simply are not rigorous enough to withstand some sharp or pointed commentary.

    Perhaps the byline should credit the M1n1stry of Truth…?

  3. 14

    One ponders the “malleability” that the Founding Fathers (i.e. think Federalist Papers) would consider this patent blog invoking a “real-name only” policy on a string of articles dealing with an originality topic like “Interpretation-Construction.” (or at least one can be sure that from the historical perspective, the irony is lost on the moderator).

    Of course, no rationale was given for such a “policy” move, but it is easy to see that whatever “preferred” discussion results may be being aimed for, those results simply are not rigorous enough to withstand some sharp or pointed commentary.

    Perhaps the byline should credit the Ministry of Truth…?

  4. 13

    Seems to me the biggest problem is that different terms and conceptualizations are made of the same inventions. Because of this the patent owner must mold their claims to the terms used by infringer.

    So, I think malleability is a necessity as long as so many different ways of describing pretty much the same thing are used.

      1. 13.1.1

        Would you care to develop this thought a little bit more?

        As for on the surface, it appears that you want to be able to claim post-filing “later developing” technologies, and I think that you don’t want to do so, but instead want to give homage to the words of the Supreme Court in the KSR decision (those words being “deprive prior inventions of their value“).

        1. 13.1.1.1

          Later arising technologies issue merely means that different terms may be used for essentially the same thing. For example, if a transistor is used instead of a vacuum tube, then that doesn’t necessarily mean the claims suddenly become worthless. DOE helps. But, there are plenty of things where the names change or functionality is shifted.

  5. 12

    I was surprised to read on pages 61-62 that a party can propose a broad claim construction in an Inter Partes Review and then a narrower construction in a subsequent trial. Has anyone examples of this?

    1. 12.1

      They still might get bitten by PHE. But if they’re just addressing some minutia not previously made explicit in the previous claim construction it shouldn’t be an issue.

    2. 12.2

      That would be the IPR petitioner doing that, not the patent owner. But it is not surprising, since the proper IPR claim scope test (BRI) is indeed supposed to be broader than the claim scope test in a subsequent patent trial, especially if citing panel decisions of the Fed. Cir. which take a narrower claim scope view than others.

    3. 12.3

      Here’s one from a district court, which I’ll also add to the article. As far as I’m aware, the Federal Circuit has not yet formally ruled on this specific issue. So in terms of dispositive precedent, I don’t know of any. But as a logical matter, I don’t see how estoppel could apply against the patent challenger given the different legal standards that are applied.

      ***

      In light of this standard, the Court understands Defendants’ argument to the PTO to have been that the broadest reasonable interpretation of speed command covered functions disclosed in the prior art. The Court does not find that this position is inconsistent with Defendants’ argument at summary judgment that the accused trains do not accept speed commands under the more narrow construction that the parties have applied in this case. The inconsistency prong of judicial estoppel is therefore not present here.

      Mike’s Train House, Inc. v. Broadway Ltd. Imports, LLC, No. 1:09-CV-02657-JKB, 2012 WL 664498, at *22 (D. Md. Feb. 27, 2012) aff’d, 500 F. App’x 958 (Fed. Cir. 2013)

      1. 11.1.1

        The only thing I want to know is how Stern is still alive or how he supposedly had such great influence at such a young age.

        1. 11.1.1.1

          He went to law school with Douglas and is still kicking and posts on this board. I think his suggestion of tightening the requirements to be part of a standards committee are great.

  6. 10

    I found this statement a bit shocking:

    “In addition, it is a fundamental principle of patent law that an inventor is
    not limited to only the embodiments disclosed in the specification. As Donald
    Chisum observes: “An enabling disclosure is all that is required. The applicant
    need not describe actual embodiments or examples. Indeed, an applicant need not
    have reduced the invention to practice prior to filing.”(footnote 126)

    To me, “enablement” and “written description” are equivalent to saying that the claims are the outer limit, but they should be construed to cover the corresponding disclosure and equivalents. If there are no disclosed embodiments, then one is patenting an abstraction. This was the problem identified in O’Reilly v. Morse in connection with claim eight. If one is not limited to the disclosed embodiments and processes, one needs no specification. All one has to do is state the principle (in the abstract), which actually is no more than the claim itself.

    1. 10.1

      “Shocking” – Ned does not “get” that real law is different than Ned-IMHO law.

      Um, no, not shocking at all.

      1. 10.1.1

        The judicial activist are attacking claim scope. They have invented the witch word functional and are trying to get the same success they had with abstract. Lemley’s paper is leading the way.

    2. 10.2

      The quote in the paper from fn. 1 in 7.03, The Enablement Requirement, may give a false impression. Chisum was discussing Gould v. Quigg. Gould did not provide a working example of a laser but that, by itself, was not a sufficient reason to reject the claims. I.e., Chisulm is alluding to working examples here. Fn. 1 also refers to 7.05[3], infra, (Best Mode) wherein we learn that a working example is not required but the number may affect how broadly the invention may be claimed, especially (from discussions in 7.03) in unpredictable fields.

      1. 10.2.1

        The fallacy of thinking that a reduction to actual practice is a patent requirement is an item on certain regular posters’ “short lists.”

        1. 10.2.1.1

          It is also the difference between a real machine and a theoretical machine…

          Also known as an abstract idea.

              1. 10.2.1.1.1.1.1

                Better…?

                That’s a rich fantasy land you inhabit.

                Please make sure you understand the terrain when you want to leave that fantasy land and discuss topics in real law (topics such as constructive reduction to practice which applies to all art units)

                have a nice day

                1. You keep on using that phrase “abstract ideas,” but I think that phrase does not mean what you think that phrase means.

                  Read – and understand – Sun Tzu.

                2. I could say the same thing to you.

                  Especially since you seem to think everything is patentable… even thoughts.

                3. You could attempt to say the same thing, but you would be wrong as usual, as I have clearly distinguished patent eligibility from your attempted strawmen of “mere thoughts” or “something totally in the mind”

                  Pay attention – you are doing that monologuing thing again and not recognizing what I have actually said.

                4. And you still have not recognized that you can’t patent abstract ideas.

                  All you have done is show that patents are not for practitioners of science and engineering.

                  Just other lawyers.

                5. Abstract ideas as opposed to other ideas…?

                  You keep on making the same mistakes my ignorant friend, as I have distinguished between the thought of software and software.

                  You do realize that software is defined to be a machine component, right?

                  You do recognize what that means logically, right?

                  Do you yet realize why I ask you about your copyright ability with your version of something that as you want to have it is something ONLY ‘totally in the mind?’

                  Think man – think.

                6. You do realize that software is defined to be a machine component, right?

                  Only in the legal world.

                  Nobody else seems to think so.

                7. jesse,

                  Your “nobody else seems” is merely the lemming anti-patent crowd you march with.

                  The definition of software as a machine component is the real world technical-minded definition.

                  You are not free to ignore this reality, leastwise outside of your fantasy belieb system.

                8. Your “nobody else seems” is merely the lemming anti-patent crowd you march with.

                  sorry – no. It happens to be where software research is done. As in through academia where I started and taught, through industrial development (navigation systems, GPS navigators, wireless communications) through government research centers (from weather forecasting through security systems).

                  Software has never been considered a “component” of a computer. It has always been considered a mathematical notation that made it easier for people to read, write, understand, analyze, and possible for automatic translation to the numbers the computer could interpret.

                  Components have always been cables, wires, circuit boards, ICs, cases, racks , power supplies… physical items that could be counted, ordered, machined and inventoried.

                  Software? need another? just copy. Need an alteration? change it. An infinitely malleable resource that never wears out, which no component is or can be.

                9. Sorry but yes – it is a component – nothing more and nothing less. You will have to find some other alter to worship at.

                  Yes, this particular type of component is a highly valuable one – witness the growth and expansiveness of its use: the type is truly ubiquitous, and it’s value is directly related to its ease of copying and ability to be changed and modified. But those attributes make it no less a component (and at point to your canard, still something that is NOT entirely in the mind).

                  computer could interpret” – watch your anthropomorphication there jesse, you are slipping again in regards to animating a simple machine, an object expressly captured under patent law (you might want to open your eyes and recognize the terrain).

                10. “computer could interpret” – watch your anthropomorphication there jesse, you are slipping again in regards to animating a simple machine, an object expressly captured under patent law (you might want to open your eyes and recognize the terrain).
                  Unfortunately for you that is the mathematics. Something that can interpret numbers according to the mathematical rules can be a person, but doesn’t have to be.

                  The algorithm implemented in a CPU is the mathematical expression for interpreting numbers. And that is how it will remain.

                  That is why it is called an interpreter. That is why programs that interpret commands are called interpreters. That is why natural language translators are called interpreters, whether they are people… or machine based.

                  That IS the term used in the field of computer science.

                  Anthropomorphic views are not those of science. It is ascribing sentient qualities to things that are not sentient – but that isn’t what is being done. The best arithmeticians are not human (though there are some very good human ones). They are entities that can interpret numbers following the rules without being distracted. And that describes a CPU perfectly.

    3. 10.3

      Ned I don’t understand your shock. To me, the statement you find shocking I find banal.

      Perhaps the invention of freeze branding of steers might help? Freeze branding as opposed to branding with a hot iron. On the pelt of a freeze branded beast there is no blemish that will reduce the value of the hide for the leather merchants, only locally white hair, a white number on an otherwise black or brown background.

      The idea certainly isn’t “abstract”. But I think I can write an effective enabling disclosure without including a worked example.

      What does “reduced to practice” mean, in this context? All the way to the tanned hide product? Is all that necesaary, before I can even file a good patent application on my idea?

    4. 10.4

      “If there are no disclosed embodiments, then one is patenting an abstraction.”

      It is for this precise reason that people are currently so confused by the 101 jurisprudence of the USSC. They think to themselves, but but but we allow for “abstractions” (as you just used the term) to be patented over in art x, so why not over in art y?

      And the quote you made is also a reason for strengthening the WD req such that some embodiments need to be presented.

  7. 9

    For some new software problem reason I cannot download your draft article itself so I remain puzzled as to what you encompass in “By malleable, I mean that the scope and strength of the right can be changed after the patent is issued through an array of mechanisms.” ? The only clear legal mechanism to BROADEN claim scope [rather than narrow it,so that it is less likely to be infringed] AFTER a patent issues is a broadening reissue. But a broadening reissue is limited to only the first 2 years after the patent issues, and further limited by the recapture doctrine, 112 claim support requirements, and the intevening rights protection statute, and only a miniscule percentage of issued patents obtain broadening reissues.

    1. 9.1

      P.S. Of course the U.S. does allow the tactic of keeping a continuation or divisional application [with the same spec and filing date benefit] pending for years after the first patent based thereon has issued, to eventually obtain a DIFFERENT patent with different claims that may be broader. That is primarily a PTO management issue – not requiring applications to be examined in their original filing date order.

    2. 9.2

      Furthermore, no amount of “mallable”by attorney argumentation or otherwise can overcome the “all elements” rule that no claim limitation can be ignored to find infringement in any product or process not containing that claim limitation. Non-infingement decisions on that basis are the vast majority of patent suit disposals.

      1. 9.2.1

        Alas Paul, your point here at 9.2 is far too easily ignored by those who would chose to wield the limitless sword of “Gist/Abstract,” which dispenses with the notion that all of the elements must actually be considered in the Gisting.

        (this is the ‘you-cannot-be-a-little-bit-pregnant-and-eliminate-the-“nominalist”-statutory-category-words-of-Congress’ problem that the Coury has created because of its finger in the nose of 101 wax addiction)

        1. 9.2.1.1

          There has been a big difference between those getting away with “mallable” mere claim scope assertions by those filing patent suits versus actually winning patent suits ignoring non-infringed claim limitations. Now with Sup. Ct. decisions increasing the risk of serious (defense attorney fee recovery) sanctions, and the elimination next year of FRCP Form 18, there should be less of that.
          I also covered this below as: “The real problem is that patent owners can make extremely broad claim scope interpretation allegations for filing patent suits that are never even tested for proper claim scope until a Markman hearing, and too many judges delay conducting a Markman hearing until way too late – not until after most defendants have been forced into settlements to avoid huge discovery and other costs. [Unless the patent owner has been forced to take a more realistic claim interpretation to avoid prior art cited in an IPR.] That is a judicial managment problem not a patent law problem.”
          {It has already invited legislative statutory proposals, such as restricting the scope of costly discovery in patent suits prior to a Markman.]

          1. 9.2.1.1.1

            This is an excellent point. At one time, I was an in-house attorney at a corporation sued by an NPE. The NPE had construed claims to cover something they obviously (to me, anyway) had never been intended to cover. A Markman hearing before discovery could’ve been beneficial to avoid the insanely high costs of discovery. No wonder most people settle — the cost of discovery alone is often much higher than the offered settlement price. In this case, too, discovery for the corporation really had no bearing on construing the claims.

      1. 9.3.1

        Thanks Ned. this 12/24/14 FLEMING v. ESCORT INC Fed. Cir. decision should be a wake-up for anyone not realizing that a 102(g) prior invention 103 prior art defense is still available against the vast majority of current patent suits and assertions where adequate 102(g) facts are available, prior to the effective dates of patent or printed publication prior art itself.

  8. 8

    Rantenan’s published legal writing is slipshod and careless. For example, when Rantenan cites another person’s published article, it is often NOT the case that Rantenan has even read the article and, as a result, Rantenan’s writing is misleading and incorrect. The consequence of this, is that Rantenan’s published articles are tainted with irrational gibberish. In my opinion, it might be reasonable to characterize Rantenan’s behavior as malpractice.

    1. 8.1

      I would beg to differ – but more on a “nit” line of thought, as malpractice speaks more to a violation of duty in an established relationship, and the work of Prof. Rantanen exists without any such relationship.

      To me, the better description is Ivory Towerism. The rather blase acceptance of the debunked work of fellow Ivory Tower dweller Besson should have been a first clue.

      I do know that several practitioners bristle at the seeming indifference of academics writing “whatever” without regard to well established corrections and the near incestuous citing of other academic works which does create a false impression of veracity, and I have postulated that academics involved in and in a very real sense advocating for changes in law should be held to an even higher ethical standard, but alas, there is no governing body of authority that can enforce any such higher standard.

    2. 8.2

      You should at least give the professor the credit he deserves for bravely posting summaries of his drafts on this blog to be subjected to criticisms and personal attacks. Note how few other academic writers on patent law subjects do so, or make any other effort to informatively interact with long term practitioners.

      1. 8.2.1

        Actually, I am referring to only one if Rantanen’s published articles. Rantanen summarized facts that had been discovered and published by another author, but Rantanen’s summary stated the exact opposite of the discoveries of the published author. I am not able to determine if this was the result of slipshod and careless “scholarship” or if it was the result of an intentional distortion of proven, verifiable facts. This is different from “Ivory Towerism,” a term used above by anon. Ivory Towerism results where a faculty member derives most or all of his or her facts by reading (rather than by real world experiences). In patent law, real world experiences are typically derived from the friendly adversarial exchange that occurs during patent prosecution, between the attorney and the examiner. Thus, where a person uses the technique of “Ivory Towerism” in writing an article about patent prosecution, the risk for errors in the article is high.

  9. 7

    I am not up to date on real property jurisprudence, but it seems to me that some of the administrative procedures to re-examine patents under the AIA are analogous to “regulatory takings.” This is another way that patent IP rights are not “static and fixed.” You may want to explore this line of “malleability” to see if patent holders with patents found invalid through inter partes review are having patent property being taken for public use, without just compensation.

    1. 7.1

      fm,

      To your point several discussion points have been offered along those lines.

      For example, one of the sticks in the bundle of propert rights of a granted patent is the presumption of validity.

      With any post-grant action, that is not voluntarily joined by a patent holder, that removes that particular stick from the bundle – said removal being effected by an executive branch Article I court without possibility of review of that particular taking by an Article III court, we have in fact a taking of a property right without recourse or compensation. Several have attempted to move the focus of the taking to the ability to challenge any final action, but such re-focusing missed the very real point of which stick in the bundle is taken at what particular point in time.

      Funny that that particular pro-patent issue has NOT been made the subject of academic research (as far as I can tell)…

      In the land of Ivory Towers, it is just not fashionable to be pro-patent. I can think of only two or three academics that I can classify as being pro-patent (and only one – Prof. Hricik – that I associate with this forum).

      1. 7.1.1

        In the paper, I discuss both inter partes review and CBM as important examples of malleability, and raise concerns about their unidirectional nature. If post-issuance arguments can substantially affect the scope and strength of patents, it undermines the idea that IPR and CBM are only about eliminating low-quality patents. The article tries to present the concept of malleability in a balanced way. I realize that opens me up to criticism from both sides, but it’s what I attempt to achieve.

        I do not discuss IPR and CBM in takings terms, but it’s something to think about.

        1. 7.1.1.1

          ?? An IPR or CBM applies a “broadest reasonable interpretation” to the subject claims, not an infringement suit claim scope test. If the patent owner chooses not to contest or appeal that theoretically broader BRI claim scope of the PTAB, or successfully argues for a narrower scope to avoid the cited art, or cancels its broader claims, the only “malability” is from the patent owner banging dents in its own patent pot. If the PTAB is simply correctly interpreting the claim scope, where is there any “malibility?” One cannot logically call “malibility” the difference between a legally incorrect and unreasonable claim scope assertion by a patent owner in filing a complaint vis a vis a PTAB or other properly judicially interpreted claim scope. Nor is a narrowing claim amendment at all likely to be entered, plus get allowed, in an IPR or CBM.

      2. 7.1.2

        There has been no shortage of patent Don Quixotes tilting at alleged un-Constitutional windmills in comments on this blog against any and all Congressionally enacted PTO post-grant administrative proceedings, so no academic Sancho Panza mule borne support seems to be needed?
        Let us all know when any court ever even takes any such attack seriously [none has so far, in several attempts], because it will impact every interference decision ever made against any issued patent as well as all reexaminations ever decided.

    2. 7.2

      fm, your answer is in Marbury v. Madison and McCormick Harvesting, a case that followed that authority.

      Under separation of powers, a grant of a right for a fixed term is property, and its validity can only be adjudicated in an Art. III court.

  10. 6

    It seems anomalous in the first place to refer to patent rights as malleable rather than simply indefinite. I think that the implied analogy to materials is likely to cause analytical problems at some point.

    1. 6.1

      agreed. by attempting to delineate the nature of the underlying right, the author appears to be suggesting that the bundle of rights inherent to patents for land do not necessarily apply to patents for IP. if that is his ultimate conclusion (which would be an interesting one), he should say it.

      1. 6.1.1

        As I mentioned elsewhere, recognizing the limits of analogies is an important ability to have.

        One can be “too clever by half” with the application of an analogy beyond that analogy’s meaningful similarities.

        1. 6.1.1.1

          Hey now, don’t recycle that ol’ garbage. Stepping back, we took took your “too clever by half” to mean we were 50% more clever than one of ordinary analogic skill, guess we missed that one too. Now we see you meant it exceeding one’s limited capacity, sometimes one needs another bin to hold it all.

    2. 6.2

      Harry, but when claim construction varies from case to case at the behest of the current defendant, what are we to think?

      Are claims malleable? They certainly are — trimmed, expanded, shaped according to the needs of the parties in a particular case.

      Even the Federal Circuit does not seem to find itself bound by its prior rulings. In a recent case, now on petition, the Feds ignored completely its prior ruling on the very same claim construction issues in the very same case. link to laipla.net

  11. 5

    “Ultimately, it’s not clear to me that malleability is a desirable characteristic. Although there are individual doctrines where malleability may be necessary, I have yet to come up with a good theoretical justification for it on a broad scale.”

    Whya? Does this accord with any objective reality? Argument is inevitable around complex human creations, and it’s a healthy, important way to get toward the truth…

    link to jewishreviewofbooks.com

    As to Content Extraction: IBM Kenexa is up in Massachusetts arguing for a nearly identical POS mid ’90’s patent, #5999939. Not exactly inline with their public stance favoring “patent quality”.

  12. 4

    Contrast this thread alluding to the scholarship of Besson and today’s absolutely scathing dismantling of Besson’s anti-patent tendencies by Greg A….

    While the truth is probably somewhere in the middle, I would lean towards Greg’s views (and not just by a little)

  13. 3

    Re: Content Extraction vs. Wells Fargo/Diebold/etc and the counterclaim filed by Diebold: this particular troll is lucky that it filed when it did.

    There will be little room going forward to continue to assert claims as laughably empty as the claims asserted here (reproduced below0.

    The Federal Circuit could, of course, collectively apologize for its inexcusable failure to see the writing on the wall and its feeble attempts to keep the bubble inflated for its patent worshipping “friends”. It’s not as if vast numbers of people hadn’t predicted the collapse of the bizarre house of cards the CAFC had created for “do it on a computer” and “think about the data this way” “innovators” (and yes that last term in quotes is used extremely loosely here) but quite a few of the “expert” commenters were awfully slow to see the writing on the wall and help others understand what was happening, and why.

    Are any academics exploring that failure, I wonder? If anyone needs evidence, it’s still all around us. Some people are out there still wondering why 103 can’t be used instead of eligibility to eliminate claims that protect “new” information in the context of old technology. Try to believe it.

    A method of processing information from a diversity of types of hard copy documents, said method comprising the steps of:

    (a) receiving output representing a diversity of types of hard copy documents from an automated digitizing unit and storing information from said diversity of types of hard copy documents into a memory, said information not fixed from one document
    to the next, said receiving step not preceded by scanning, via said automated digitizing unit, of a separate document containing format requirements;

    (b) recognizing portions of said hard copy documents corresponding to a first data field; and

    (c) storing information from said portions of said hard copy documents corresponding to said first data field into memory locations for said first data field.

    From the decision: CET attempts to distinguish its claims from those
    found to be abstract in Alice and other cases by showing
    that its claims require not only a computer but also an
    additional machine—a scanner

    It’d be hilarious if it weren’t so sad.

    1. 3.1

      I still think its hilarious!

      My favorite part of that claim has got to be “said information not fixed from one document to the next, said receiving step not preceded by scanning, via said automated digitizing unit, of a separate document containing format requirements.”

      I’m sure the disclosure really advanced the field of…digitizing a diversity of types of hard copy documents.

  14. 2

    Claims were originally invented to provide a basis for examining novelty. But they almost instantly, viz Morse, became a vehicle for claiming the all the way to the moon on disclosing a molehill.

    The obvious lesson learned is this: claims should only define novelty, but not scope. As with MPF, an infringement must always be what is claim, but also what is disclosed or an equivalent of what is disclosed.

    1. 2.1

      A potential fix would be to amend 112(f) to cover all claims, i.e.,

      “Claims shall be construed to cover for infringement purposes only the corresponding structure, materials or acts and equivalents thereof.”

          1. 2.1.1.1.1

            I’m not anon, but that’s a tough situation. Take encryption for instance, if you do not assume a person of ordinary skill is reading the application, you’d have to have entire books to build the concepts to a point where one (still very technologically adept) person could understand the claims. Even simple things, like generating a random number, could take pages of description.

            I think a patent system without the concept of one skilled in the art is unworkable. So is the law with 112(f), it makes no sense. Suddenly, what one skilled in the art knows becomes irrelevant. Why?

            1. 2.1.1.1.1.1

              Patent Bob, I have no gripe about experts giving lectures on background technology, I just abhor them giving opinions, especially on the ultimate issue.

              Experts who give opinions are little better than mouthpieces of their attorney advocates. Attorneys should not testify, they should argue.

              1. 2.1.1.1.1.1.1

                Ned – it sounds more like you have a problem with the American legal system than the patent system. Or maybe you just came out on the wrong end of a Daubert motion one too many times.

                1. TK, the only expert I would trust giving an opinion would be one appointed by the court.

                  Second, why are we allowing experts to testify in IPRs? Isn’t the whole point of using the patent office to try validity is because of their alleged technical expertise?

                  The fact that administrative patent judges allegedly need the testimony of experts to figure out the technology involved in particular patent dispute on validity tells me there is something very wrong in the state of Denmark. If they need help on the technology involved they should have access to the examining corps in the art that issued the patent in the first place.

    2. 2.2

      “Claims were originally invented to provide a basis for examining novelty. But they almost instantly, viz Morse, became a vehicle for claiming the all the way to the moon on disclosing a molehill.”

      That is very interesting Ned.

      “The obvious lesson learned is this: claims should only define novelty, but not scope. As with MPF, an infringement must always be what is claim, but also what is disclosed or an equivalent of what is disclosed.”

      That’s odd.

  15. 1

    Boundary disputes are not that uncommon even in real property cases, where boundaries are vastly easier to draw. The recently Sup. Ct. enhanced patent claim indefinitness or ambiguity test is a partial cure. Also, real property property rights can also change over time, in response to subsequent case law, statutory, and/or regulatory changes – enviornmental, easement, wetlands, zoning changes, etc.
    The real problem is that patent owners can make extremely broad claim scope interpretation allegations for filing patent suits that are never even tested for proper claim scope until a Markman hearing, and too many judges delay conducting a Markman hearing until way too late – not until after most defendants have been forced into settlements to avoid huge discovery and other costs. [Unless the patent owner has been forced to take a more realistic claim interpretation to avoid prior art cited in an IPR.] That is a judicial managment problem not a patent law problem.

    1. 1.1

      “Boundary disputes are not that uncommon even in real property cases, where boundaries are vastly easier to draw.”

      It’s not clear to me that we have empirical data to support claims about the relative frequency of boundary disputes one way or another. That said, from talking to my real property law colleagues, my general sense is that while boundary disputes do occur, there are many issues in property law that occur with much greater frequency. And as measured relative to the number of real property parcels in play, my intuition is that boundary disputes probably involve only a very small percentage. But that’s just my intuition.

      Ultimately, though, whether or not patent law involves greater boundary uncertainty than real property law is not really central to the argument I’m making here, which is that regardless of their uncertainty, patent rights are also malleable. For that reason, I didn’t discuss the critiques of the “patent rights are more uncertain than property rights” perspective in this post (although I do talk about it in the article).

      In an earlier draft of the article, I talked about malleability and the effective claim scope – basically, the idea that the effective claim scope extends beyond the actual claim scope as decided by a court. But because I wanted to focus on the narrower, more formal concept of patent rights, I decided to cut that section out of this article. That said, I still see it as at least partially a patent law problem, not just a problem of judicial management, because it depends on the malleable and uncertain nature of patent rights.

      1. 1.1.2

        The analogy may be more or less apt depending on where you own your real property. In a well developed urban area, with lots of little square plots, there is likely a level of certainty in a property deed well beyond that provided by a patent claim. However, in a rural area on the East Coast, which may not have been fully surveyed since the original land patent from the Crown, interpretation of the boundaries of your real property and (utility) patent are remarkably similar. In fact, when your deed incorporates by reference a marginally legible earlier deed written by hand in cursive, with a fountain pen (or quill?), and includes metes and bounds such as “from the South East corner of Smith’s Grant further south easterly more or less about three-quarters of a mile to the large, lone oak, then Westerly…”, I’d say the patent owner may actually be ahead – especially when it appears the lone oak was cut down long enough ago that no one currently alive can recall seeing it.

        1. 1.1.2.1

          Even more common are real property disputes between neighbors that never make it to a reported legal decision, such as driveways, fences or trees that have extended over neighbors property lines (for which survey boundary markers are long gone), violations of local ordnances or zoning laws, etc.

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