By Jason Rantanen
Biosig Instruments, Inc. v. Nautilus, Inc. (Fed. Cir. 2015) (on remand from the Supreme Court) [2015 WL 1883265] Download Opinion
Panel: Newman, Schall, Wallach (author)
About a month ago, I wrote an essay entitled “Teva, Nautilus and Change without Change.” To the extent that anyone still harbored doubts about that premise in the context of Nautilus, the Federal Circuit’s opinion on remand should dispel them. (Caveat: As I discussed in the essay, means-plus-function claims, such as the claims in Eon that Dennis will post about shortly, are a whole different ball of wax. To me one of the most fascinating issues in patent law right now is whether the court will expand that framework to function-claiming more broadly. The revised Nautilus opinion leaves that door a little more open than the original opinion.)
This dispute is well-known, so I’ll just summarize the procedural posture. The district court granted summary judgment that the claims were indefinite. On appeal, the Federal Circuit reversed, holding the claims not indefinite. The Supreme Court granted certiorari to address the legal standard the Federal Circuit referenced on indefiniteness: that a claim is indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.'” 715 F.3d 891, 898 (2013). In Nautilus, the Supreme Court rejected this standard:
Those formulations can breed lower court confusion, for they lack the precision § 112, ¶ 2 demands. It cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that rendering a claim “insolubly ambiguous” would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging “zone of uncertainty,” United Carbon, 317 U.S., at 236, 63 S.Ct. 165, against which this Court has warned.
Nautilus, 134 S.Ct. at 2130 (2014). The Court did not, however, resolve the overall dispute, instead returning the appeal to the Federal Circuit.
On remand the parties disputed “whether the Supreme Court articulated a new, stricter standard or whether, in rejecting the phrases ‘insolubly ambiguous’ and ‘amenable to construction,’ the Court was primarily clarifying that a patent’s claims must inform those skilled in the art with “reasonable certainty” of what is claimed.” Slip Op. at 7-8. The Federal Circuit did not directly answer this question, but suggested the latter through a nautical metaphor: “The Court has accordingly modified the standard by which lower courts examine allegedly ambiguous claims; we may now steer by the bright star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.'” Id. at 9. The implication of this metaphor, combined with the passage preceding it, is that the problem the Court perceived was not that the insolubly ambiguous standard allowed too much imprecision in patent claims; the problem was that the insolubly ambiguous standard itself was too imprecise: “The Court found too imprecise our “insolubly ambiguous” standard,” Id. at 8. The implication that Nautilus simply clarified, rather than raised, the standard for indefiniteness is further supported by an extensively-footnoted discussion of “reasonably certainty” as a “familiar standard,” one that “In the wake of Nautilus II, judges have had not problem operating under.” Id. at 12. The takeaway is that Nautilus offers a more precise standard, but not one that moves the target.
With this clarification in place, the panel concluded that its prior decision was correct: Biosig’s claims inform those skilled in the art with reasonable certainty about the scope of the invention.” Id. at 14. The court’s revised analysis turns entirely on the intrinsic evidence (“We revisit the intrinsic evidence here to make clear that a skilled artisan would understand with reasonable certainty the scope of the invention.”) Notably missing from this discussion is any mention of Halliburton, which the court distinguished at length in the original opinion. To the contrary: the description of the indefiniteness standard at the beginning of the opinion expressly quotes from that case: “Moreover, when a claim limitation is defined in ‘purely functional terms,’ a determination of whether the limitation is sufficiently definite is ‘highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the relevant art area).’ Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008).” Function-claiming remains an area to watch.
And the Software/Business methods crowd goes WILDDDDDDDDDDDDDDDDDDDDDDDDDD
…or not (if you bothered to read the Eon case, you would note that it is a dud).
But maybe you can find a funny gif…?
link to therecorder.com
Article in The Recorder on the Eon case, noting a potential “one-two punch” should the Federal Circuit wakes up and starts recognizing that many software claims rely on nonce words (e.g., “module” or “device”) to fuzz up the lack of definite structure — real structure or fake “structure” — in their claims drafted to protect “new functionalities” for configurable machines. In that regard, the Recorder article links to Jason’s earlier blog post re the Williamson v. Citrix case (this one: link to patentlyo.com).
It looks like en banc has been pending in Williamson since December. Anyone have any thoughts on what’s going on there?
And yet, in the real world–you know reality, these same words and functional specifications are used to write specifications for software systems and are used on such sites as elance for real programmers to bid on real structure.
So, again, we have this bizzarro world where liberal arts judges are fabricating reality. Thanks Obama.
Again with the dissembling of “claiming functionalities” as if the option of writing claims in total “objective” physical structure was the only option under the law (and that is beyond just 112(f), which other dust kickers here apparently want to obscure).
More of the same – nothing new, keep moving.
OT: ScotusBlog had this interesting petition for cert highlighted today:
link to scotusblog.com
Internet Machines LLC v. Cyclone Microsystems Inc.
The Federal Circuit affirmed the lawyer court’s decision per curium which may be why there was no coverage of the case here. Looks to me like Internet Machines is seeking to reverse at least partially the Federal Circuit’s holding in Transocean v. Maersk (CAFC 2010; discussed here link to patentlyo.com) that the location of acceptance of an offer to provide goods does not control whether an infringing “sale” under 271(a) has taken place. Instead, it’s the location of manufacture or delivery of the purchased goods that matters (e.g., two companies that contract within US territory to perform both manufacturing and delivery of a patented product overseas are not infringers under 271(a)).
Internet Machine’s petition for cert was filed March 26.
Oops, that should read “lower court’s”, not “lawyer court’s”!
Title and the article are not the same thing. So, when we speak of “sale,” are we speaking of transfer of title or possession of the article?
So, when we speak of “sale,” are we speaking of transfer of title or possession of the article?
Actually neither, in the case at issue, since an infringing article was apparently never built. In this case, both parties seemed to concede that entering a contract to build a patented system could be a “sale/offer to sell,” but argued over how to define the location of that sale.
The district court thought the place the contract was made should control, and said there was no sale or offer to sale because the deal was made outside the US. The Federal Circuit said that the important thing was that the contract was for activities to be performed in the US. (The sale/offer to sale issue was critical because the contracted-for system was redesigned before it was actually installed in the US, so as to no longer fall under the claims.)
Under the category of “one can always hope,” can we explore the concept here that no actual article need exist for the part of the law dealing with offer for sale to be violated?
Does that impact any of the “location” arguments?
Should the “policy” tend towards the protective aspect and be wide ranging so as to include not only where the offer may have been made, but also whereever the reach of the business entities involved in the offer exist? Other forms of infringement have policy drivers such that skirting the letter of the law is frowned upon, so why not here with the mere offer?
DanH, I’m not sure what “case at issue” you are referring to.
My understanding of Internet Machines (the case for which the cert petition is pending) is that there were, in fact, infringing articles made and the defendant was found by the district court to have infringed the patent with certain of its actions. [from the cert peition: “The judgment entered by the District Court and affirmed by the Federal Circuit determined that PLX’s products imported directly from PLX’s overseas warehouse … infringed the patents-in-suit.”]
The district court’s finding that was appealed by the patentee to the Federal Circuit (who affirmed the district court per curium) and which the Supremes are being asked to review is based on the CAFC’s holding in Transocean. Specifically, the district court found that the sale agreement — completed in the US — was not infringement under 271(a) because the agreement is for manufacturing that occurs overseas. As far as I can tell, there is no dispute that such manufacturing does occur overseas, nor is there any dispute that the claimed invention is “embedded” into third party products and then imported into the US.
Internet Machine’s “strongest” argument for reversal of the Transocean holding is that it’s “too hard” for patentee’s like Internet Machine to police and discover examples of embedded embodiments of their invention in imported goods. Frankly, that argument strikes me as ridiculous. If it’s “too hard” for you to identify and prove that some component of an imported device is infringing your patent, then you shouldn’t have bothered filing your patent in the first place.
The last line of the cert petition is interesting: Without action from this Court, millions of OEM products with hidden, infringing embedded components are free to enter the country to the detriment of United States patent holders and businesses, and to the detriment of innovation in this country.
In fact, regardless of how 271(a) is interpreted (and I think the Federal Circuit’s interpretation is perfectly reasonable), embedded components that infringe US patents are going to continue to enter the country and almost all US businesses (and other consumers) will benefit immensely from that. The fact that certain “patent holders” own rights to inventions that are difficult to identify when they are “embedded” isn’t a “detriment to innovation” in the US or anywhere else. It’s just a practical real-world business problem those particular patent holders need to contend with, or they need to get out of the business and let someone else step in.
Personally, I’m much more interested in the Promega v. Life Tech petition for cert, which has not been filed yet. If anyone knows whether that case settled (I hope not), please share …
Since importation is still infringement, and you take obvious delight in patentee’s NOT being protected (infringers benefiting), it is so very clear that with friends of the patent system like you, who needs enemies?
“anon”: importation is still infringement
Indeed it is.
you take obvious delight in patentee’s NOT being protected
Protected from what? Their own bad decisions about what is worth protecting with a patent? Their own unwillingness to do the work to figure out when their own “property” is being “trespassed” upon?
Importation is still infringement. And so is the sale of items to be imported. It’s unclear why that isn’t enough, other than “ME PATENTEE! ME WANT MORE MONEY MORE EASY!”
“Their own bad decisions about what is worth protecting with a patent? ”
More spin and dissembling misdirection.
Go figure.
DanH, thanks. At 1st blush it would seem that there is significant ambiguity in what “offer of sale” really means beyond simply location. If the embodiment of the invention does not exist, I don’t think they can be infringement at all.
Where in the words or scope of the words by Congress that pertain to “offer,” does one find the requirement of what is being offered must be physically extant at the time of (or at any time) of the offer?
The act of infringement based on “offer” is separate and distinct from any other act of infringement.
Let’s keep a clear mind on these distinctions.
OT (breaking): In re Magna Electronics, 14-1798 (CAFC May 7 2015)
Nor can Magna substantiate its claim of skepticism of experts. As we have noted, such arguments often require a showing of technical infeasibility or manufacturing uncertainty. …Yet here, Magna relies only on high costs and other companies’ purported preferences. Such evidence “does not raise doubt that a CMOS camera-based automotive vision system can be manufactured”.
This was the correct decision (upholding the PTO’s invalidation of Magna’s claims as obvious). Additionally, it’s great to see the CAFC plainly moving away its poorly reasoned decision in Anderson v. Pella (CAFC 2008; Schall and Rader) where “price feasibility” was a significant factor in finding non-obviousnes (even when the claims failed to recite cost as a limitation).
Also out today: Biogen v. Japanese Foundation for Research 2014-1525 (CAFC May 7, 2015)
This looks like one for the subject matter jurisdiction nerds out there (it’s precedential, at least). I haven’t read it yet.
Since when have you ever let the stop you?
In short, no disctrict court appeals of interferences filed after Sept. 15, 2012. 146 district court appeals continue only for interferences filed before that date.
MM, reminds me of the Selden patent. He got the patent because he was the first to adapt a previous engine for a car. The problem was weight. His modifications reduced weight, but maintained enough power to move the car.
Result: patent on the engine and the car.
The problem with the car claim, was that it was not limited to the modified engine. Nevertheless, the courts sustained its validity by limiting its scope by construction to the use of the modified engine. The implication was that if the scope was broader, the claim was invalid.
link to en.wikipedia.org
This appeal was pretty weak all around. The patentee was arguing that it wasn’t obvious to substitute a CMOS camera for a CCD camera in an automobile rearview vision system. While early CMOS cameras had performance issues (and, apparently, cost issues) that would have rendered them less than optimal for such an application, the combination was nevertheless technically obvious, especially since it was a foregone conclusion that the performance and costs would steadily improve (as they did, of course).
First, it appears to me that the Federal Circuit has essentially ignored the very clear holding and direction issued by the Supreme Court and that the attempts to reconcile past Federal Circuit indefiniteness decisions with the Supreme Court’s clear standard are in vain.
Second, for the specific case involving the spacing of the sensors, it appears to me that the Federal Circuit slips into what is essentially enablement and away from definiteness and certainty of scope. Of course one of ordinary skill in the art could determine spacing of the sensors but how would that engineer know if that spacing was within or without the protected spacing range. This is true even when you consider that touching is too close and wider than a hand is too far.
The essential purpose of a patent and of claims in particular is to give notice. For notice to be effective it must be clear and unambiguous. Anything less defeats the essential purpose of a patent.
Yes, John, any spacing that works is covered. This is a claim to a result.
United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 63 S. Ct. 165, 87 L. Ed. 232 (1942).
“Spaced” to achieve a balance in EMG signals are indefinite per United Carbon. A structure may not be described in terms of its result.
“Spaced” to achieve a balance in EMG signals are indefinite per United Carbon. A structure may not be described in terms of its result.
Ned, with all due respect, that’s a ridiculous over-reading of United Carbon. Nowhere did that opinion say that “a structure may not be described in terms of its result.” Indeed, there was no “result” in the claims:
1. Sustantially (sic) pure carbon black in the form of commercially uniform, comparatively small, rounded, smooth aggregates having a spongy or porous interior.
The problem with the United Carbon claim is that there was no standard anywhere for determining what “commercially uniform” and “comparatively small” meant.
That’s quite different than the Biosig claim, which, by the way, did not recite “spaced to achieve a balance in EMG signals.”
DanH, I quote the relevant portions of United Carbon at post 10.1.1 where the court describes just how one, in that case, determined whether several claim limitations were present – build one and make adjustments ’til it worked.
This, they said, violated the rule against functional claiming:
“So read, the claims are but inaccurate suggestions of the functions of the product, and fall afoul of the rule that a patentee may not broaden his claims by describing the product in terms of function.”
So, United Carbon does prohibit claiming by result.
And, the Federal Circuit here endorses what United Carbon prohibits.
The Federal Circuit has no recourse now but to take this panel decision en bank and reverse it.
Of course, Ned neglects to incorporate the actual changes brought about by the act of 1952…
(Nothing new here either)
So, United Carbon does prohibit claiming by result.
No, it doesn’t. Read what you just posted. It prohibits claims that are but “inaccurate suggestions of the functions of the product.” These claims were invalid because they were overly vague, not because they recited “functions.”
DanH, read that again, please.
“So read, the claims are but inaccurate suggestions of the functions of the product, and fall afoul of the rule that a patentee may not broaden his claims by describing the product in terms of function.”
What “rule” did the claim fall afoul of and why?
There is absolutely no doubt that Rich was hostile to Halliburton, as was the entire bar if one reads the congressional testimony. But Rich could not and did not overrule the Supreme Court.
United Carbon is still good law. One can cite it and rely on it.
You continue to dissemble Ned by attempting to blame Rich when it is the words of Congress that is your undoing.
Tell me again which branch of the government was given authority in the constitution to write patent law…
Why do you think I keep asking you to watch The Paper Chase and note the key words of wisdom at the hour and six minute mark? (Hint: you really need to stop abusing the notion of the Supreme Court being above the law)
Ha – I did overlook the second half of the quote, Ned. Mea culpa. That said, however, that statement is something of a non sequitur, as there were no “functions” in the claims. Also, the “rule” appears to be against “broadening” claims – I’m not sure what that means.
Do you have an even more ancient case that lays out this “rule”?
DanH, Start with Morse, claim 8, then go to Westinghouse v Boyden Power Brake (claim 2), Perkins Glue, General Electric v. Wabash Appliance, Faulkner v. Gibbs.
From Westinghouse,
“This rule was clearly laid down in the leading case of Corning v. Burden, 15 How. 252, in which Mr. Justice Grier, delivering the opinion of the court, drew the distinction between such processes as were the result or effect of “chemical action, by the operation or application of some element or power of nature, or of one substance to another,” and the mere result of the operation of a machine, with regard to which he says:
“It is for the discovery or invention of some practicable method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself. It is when the term `process’ is used to represent the means or method of producing a result that it is patentable, and it will include all methods or means which are not effected by mechanism or mechanical combinations.
“But the term `process’ is often used in a more vague sense, in which it cannot be the subject of a patent. Thus we say that a board is undergoing the process of being planed, grain of being ground, iron of being hammered or rolled. Here the term is used subjectively or passively as applied to the material operated on, and not to the method or mode of producing that operation, which is by mechanical means, or the use of a machine, as distinguished from a process.”
“In this use of the term it represents the function of a machine, or the effect produced by it on the material subjected to the action of the machine. But it is well settled that a man cannot have a patent for the function or abstract effect of a machine, but only for the machine which produces it.”
From Perkins Glue:
“That the patentee may not by claiming a patent on the result or function of a machine extend his patent to devices or mechanisms not described in the patent is well understood. O’Reilly v. Morse, 15 How. 62, 112, 113; Knapp v. Morss, 150 U.S. 221, 228; Electric Signal Co. v. Hall Signal Co., 114 U.S. 87; Westinghouse v. Boyden Power Brake Co., 170 U.S. 537; Mitchell v. Tilghman, 19 Wall. 287; Fuller v. Yentzer, 94 U.S. 288; Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68. ”
Cf., Application of Tarczy-Hornoch, 397 F.2d 856 (C.C.P.A. 1968)(Rich, J.) that stopped its summary of at Westinghouse and Risdon, and did not discuss Perkins Glue, Wabash Appliance, United Carbon, Halliburton, or Faulkner. There is a reason for this and it appears as follows:
“The notion of undue breadth in the claims may be consistent with the proscription of claims directed merely to effects or results. See O’Reilly v. Morse, supra. The “mere function of the machine” cases, however, have clearly regarded the question as whether the processes at bar were within the statutory classes of invention. The emphasis has never been on the claims but always on the processes. The inquiry has been into whether these are “proper subjects” for a patent after a reference, more often than not, to the celebrated observation in Corning v. Burden, supra, that although it is included under the general term useful art, “a process eo nomine is not made the subject of a patent” by our laws. See, e. g., In re Weston, supra. 868*868 Furthermore, during the entire gestation period of the “function of the apparatus” objection, the patent statutes contained the following or a similar provision:[19]
[The inventor] shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.
The provision, indistinguishable for our purposes from the present statute,[20] was never referred to at all, as far as we know, in the elaboration of the “function of the apparatus” rejection.”
Had Rich actually cited Perkins Glue, Wabash Appliance, or United Carbon, he would’ve found that the cases relied on indefiniteness the cold the claims invalid. It was not simply a 101 issue as Rich contended.
Returning to Perkins Glue:
“Respondent argues that this principle, applicable to machine patents, is inapplicable to a patent for the composition of matter which is always a result of a process and concededly is patentable as such, but the attempt to broaden product claims by describing the product exclusively in terms of its use or function is subject to the 258*258 same vice as is the attempt to describe a patentable device or machine in terms of its function. As a description of the invention it is insufficient and if allowed would extend the monopoly beyond the invention.”
It is in this sense that the Court has confined the rule to what is today 112(b).
I think we’re traveling in circles, Ned. I agree with you that a claim that “merely” (i.e., only) claims a result is invalid. That’s a far cry from saying, as some seem to want to do, that you can’t claim a machine using functional terms to describe aspects of its structure.
Biosig’s claim is not directed to a mere result, and doesn’t look anything like the United Carbon, Morse, Halliburton, etc., claims:
1. A heart rate monitor for use by a user in
association with exercise apparatus and/or
exercise procedures, comprising:
an elongate member;
electronic circuitry including a difference
amplifier having a first input terminal of a first
polarity and a second input terminal of a second
polarity opposite to said first polarity;
said elongate member comprising a first half and
a second half;
a first live electrode and a first common electrode
mounted on said first half in spaced relationship
with each other;
a second live electrode and a second common
electrode mounted on said second half in spaced
relationship with each other;
said first and second common electrodes being
connected to each other and to a point of common
potential . . . .
DanH, I take it that you have yet to read Faulkner v. Gibbs. There the Supreme Court made it clear that in combination claims that they do not object to functionally claimed elements describing machines. They do care however where a claim has a point of novelty and that point of novelty is functionally claimed in terms of how the machine operates or in terms of desired results. This is where they draw the line.
The problem in the Nautilus case is that the only thing new in the claim is the idea of adjusting the spacing on the grips in order to cancel out the EMG signals. But the specification is completely silent on any method or means of adjusting anything in the grips to make the EMG signals of each hand equal. In fact, as I have noted before, the specification discloses only the prior art structures and circuits and simply says that the signals coming off the two grip electrodes are equal in terms of their EMG signals.
As to others who generally oppose functionally claiming any element, regardless of whether it is new or old, I do not agree with their position. When I see the Federal Circuit applying a very narrow and cramped construction to any functionally claim element regardless of whether it is at the point of novelty or not, I get very sick to my stomach. It is clear that the Federal Circuit does not know what it is doing, and that is because it has failed to even acknowledge the existence of such cases as Halliburton and Faulkner.
Perhaps it is also the fault of the bar who, like our friend anon, thinks that Halliburton was overruled by 112(f). But of course it was not.
Moreover, that statute is optional by its own terms. Thus one can claim a novel element functionally if one employees 112(f). But, the choice of whether to employ the benefits of that statute in terms of protecting against invalidity is the choice of the applicant. They must use the magic words.
But if a claim, not using means plus function, nevertheless is functional at the point of novelty, it is indefinite.
Ned,
Your “version” or characterization of BOTH the law and my view of the law is flat out wrong.
In no way is the concept I (repeatedly) tell you about limited merely to 112(f).
I have been abundantly clear on this point.
It is your (continued) mistake to think that the use of language sounding in functional terms is so limited. I have used your own preferred source of Federico to show that you are plainly wrong.
Please stop this mischaracterizarion.
(Ned’s views require adding in the canard of Point of Novelty) as well as dissection of claims an isolation of any functional language, breaking apart combination claims in order to treat what he finds “offensive” as if that singular portion was the only “real” portion of the claim (with all else somehow being like a Jepson claim, and separate from “the real invention”).
One should note the similarity of this type of “divining the real invention” with the Supreme Court’s “Gist/Abstract” sword treatment of “Gisting” away any “undesired” claim elements in order to arrive at a desired end state of finding “the real invention” to be some “Abstract Idea,” because those durn scriviners were just too clever to actually hew to the written words of Congress.
Unfortunately, anon, the Supreme Court cases long recognized that one could not patent a result, and centered its objection on 112(b).
Like Rich, you consistently try to divert attention. It will not work.
Again Ned it is you that attempts to divert attention by aiming at Judge Rich when you need to pay attention to what Congress did in 1952.
As has been abundantly noted, you continue to attempt to quote pre-1952 cases as if there was no change by Congress in 1952.
What Rich was trying to do was to find a statutory basis for everything. That much is apparent.
But in reading Tarczy-Hornock, where he pointedly left off his review prior to Perkins Glue, one can also see that he did not care for the functional-at-the-point of novelty line of cases at all.
Ditto, Hotel Security.
Ditto, Benson, etc.
It seems to me that given that the subject claim limitation has qualifying words other than simply “spaced apart” then there is some limitation on the spacing but the problem with the claim is that we cannot determine what that limitation is and thus what infringes and that which does not infringe. Whether the claim is to vague structure or to results for which no structure is specified in the claim, the result is the same — no certainty as to scope.
John, while you certainly can what spacing is needed in a particular exercise machine if you build one and make adjustments until the EMG signals are balanced. However, under United Carbon, such a claim is indefinite.
I cannot understand how the Federal Circuit can continue to ignore the Supreme Court. But it does so time and again.
“I cannot understand how ”
As has been pointed out many times Ned, your choice of willful blindness as to what Congress did in 1952 and your (rather unholy) abject worship of the Supreme Court and their addiction to putting fingers in the 101 nose of wax is a bug and not a feature of your “understanding” of patent law concepts.
Ned: Yes, John, any spacing that works is covered.
I believe that’s incorrect, Ned.
The claim term “spaced relationship” was construed to mean “neither infinitesimally small nor greater than the width of a user’s hands”.
Excellent point, Malcolm. Why of course.
So I build an exercise machine with a pair of electrodes spaced apart by 7 inches, greater than the span of known human beings, and make adjustments to the EMG signals according to other means and methods, I can be determined to be infringing if I someone can find a human being with a large hand spanning 7 inches.
Why of course. This makes a lot of sense. Way to go Federal Circuit.
You do recognize your own contradiction in your false response, right Ned?
See In re Orthokinetics
> So I build an exercise machine with a pair of electrodes spaced apart by 7 inches, greater than the span of known human beings, and make adjustments to the EMG signals according to other means and methods, I can be determined to be infringing if I someone can find a human being with a large hand spanning 7 inches.
Of course, your “exercise machine” would only infringe if it also includes every other element of the claim (see below).
And if it fully meets that definition, then it should absolutely be found to infringe – because it would be clear that the designer has basically taken the invented product, and stapled it onto an exercise machine.
All of this manufactured ambiguity about “spaced relationship” only matters if the other 99% of the claim – i.e., the part that recites the actual invention – indisputably describes the product. Doesn’t this raise any yellow flags for you, Ned?
Well, it turns out David, that under the formula decided by the Federal Circuit, all exercise machines long on the market, and in public use infringe, because such machines with multiple grips, spaced electrodes and the same circuit have long been on the market and in public use. Everybody infringes. Gotta love the Federal Circuit here.
> because such machines with multiple grips, spaced electrodes and the same circuit have long been on the market and in public use.
Only if they have the same circuit – including, specifically, a difference amplifier (not merely “an amplifier, and not “a differential amplifier”), with opposite-polarity terminals connected to the left handle and right handle, where the differencing amplifier outputs a signal difference in the ECG and EMG signals between the left hand and right hand.
As demonstrated, at the time of filing, this was a novel circuit for a specific technique. That’s why Biosig got a patent on it. And, yes, everyone who uses that specific circuit, specifically including that difference amplifier (not a differential amplifier) with those connections, infringes the patent.
Because… that’s how patents work.
Check the Fujisaki reference cited in the reexam.
Same physical structure and same circuits.
Again, incorrect. See above.
> Of course one of ordinary skill in the art could determine spacing of the sensors but how would that engineer know if that spacing was within or without the protected spacing range.
Easy: if the live electrode and the common electrode (having the “spaced relationship”) can pass current in a way that allows the invention to work, then that limitation of the claim is satisfied.
The entire point of this invention is the circuit that interprets electromyogram signals. Obviously those signals are collected from a patient by a communicating pair of electrodes. That is the sole purpose of the electrodes.
In this context – the “spaced relationship” part of the claim is utterly irrelevant to the invention. It is not relied on for novelty, non-obviousness, or 101 eligibility – all of those requirements, and the entire point of the invention, is recited elsewhere in the claim.
This entire incident is Nautilus’s attempt to play games with the patent – to steal the invention, and then dodge infringement by playing games by manufacturing confusion around an irrelevant part of the claim. This is all courtroom razzle-dazzle, reminiscent of Bill Clinton’s “it depends on what ‘is’ is” shtick, or the “Chewbacca” defense.
David, read the reexamination history. You will find your thinking on what the invention is to be slightly different than what you say here.
The identical circuits were used in the prior art.
The two grips with spaced electrodes with the same circuit were used in the prior art.
There was nothing in the specification about adjusting anything to achieve a balance in the EMG signals.
The specification did not disclose anything at all in terms of novel structure or circuits.
What was disclosed was the “appreciation” that the EMGs signals were causing the interference problem. But what was disclosed in terms of structure and circuits was the same as what the prior art disclosed.
So, what invention did the specification actually disclose?
Ned,
If everything is identical as you say, then the proper legal doctrine of inherency would suffice.
Perhaps it is not David that is misreading things…
> What invention did the specification actually disclose?
Here’s the invention (this is the Supreme Court’s summary):
That seems like a completely clear concept. Now, principally, how is that result achieved? What parts of the claim carry out that invention?
That’s how it works. Capture the signals, feed them into the difference amplifier, get the filtered result.
Notice what’s missing from that entire description? I’ll tell you: where the electrodes are, i.e., the physical proximity of the live electrode and the common electrode in each hand. Why is it missing? Because it’s irrelevant to the invention. As long as the electrodes capture the signal from each hand, the invention can operate on it.
The reexam fully supports that fact. During reexam, the inventor said: “Look, the position of the electrodes on the hand doesn’t matter. You can use many variations in the electrode type, shape, size, placement, whatever. Any configuration that gives you a decent signal will work fine.”
And out of that statement, Nautilus has tried to manufacture “ambiguity” about the invention. This argument is courtroom razzle-dazzle, which is why it has failed.
Still, David, the prior art disclosed the two grips, the spaced electrodes, and the very same circuit as did the patent.
Tell me once again, what structure or method in specification is new?
Patents are not awarded for discovery of a law of nature — the EMG signals. Patents are awarded for some new technology.
The inventor here described nothing new in terms of structure or method or materials. Nothing at all.
Where is the invention?
> Still, David, the prior art disclosed the two grips, the spaced electrodes, and the very same circuit as did the patent.
You keep asserting this point about the prior art teaching “the very same circuit.”
Well, I’m calling your bluff.
The file wrapper, available via Public PAIR, indicates that the originally filed claims were identical to the issued claims up to the end of the “display device” clause. Those original claims include the entire structural description of the circuit.
The independent claims were rejected, once, under 35 USC 103, in view of Cutter (U.S. Patent No. 4,319,581). Cutter discloses an electronic monitoring circuit comprising “an amplifier” and “a counter” that count pulses. That’s all it does: it just counts waves. Cutter recites nothing about the concept of subtracting the signal from each hand. Cutter recites nothing about a “differencing amplifier,” nor that the signals received by electrodes received for each hand are connected to different terminals. You’ll recall that this differencing is the central point of Biosig’s invention.
In response to the rejection, the applicant amended the claims to add the “whereby” clauses. You’ll note that the “whereby” clauses do not change the (originally claimed) structural recitation of the circuit – they only describe, more specifically, how these components interoperate.
The examiner issued a final rejection with only a 112 rejection – no art-based rejection here. The applicant submitted an after-final amendment with the final few additions (the “calculating” means). These claims were allowed by the examiner.
That is: The closest prior art that was cited does not cover the originally disclosed and claimed circuit. All the applicant did to traverse the closest prior art is to explain what a circuit with that configuration does.
Of course, this is why Nautilus did not raise arguments about patent invalidity due to anticipation or obviousness, but instead ventured down the “let’s manufacture ambiguity about ‘spaced relationship'” path.
From what I remember David is somewhat close in his analysis, but there was somewhat of a bit of a wrinkle not accounted for in you guy’s instant discussion. Sorry I can’t remember what it was off hand.
David, the differential amplifier 40 disclosed in the ‘581 reference is the same as a differential amplifier 29 disclosed in the 5,337,753 patent. The circuits in both the reference in the patent after the differential amplifier do the same thing, count pulses.
What the ‘753 patent discloses that if the signals coming into the differential amplifier have equal EMG signals, the output of the differential amplifier will include no pulses attributable to EMG signals. But neither will the prior art circuit. There is no difference at the circuit level between the patent and the reference.
> David, the differential amplifier 40 disclosed in the ‘581 reference is the same as a differential amplifier 29 disclosed in the 5,337,753 patent.
Ned… did you actually read the ‘581 patent?
First: Cutter, the ‘581 reference, does not disclose a a differential amplifier. It discloses: an amplifier.
There are actually dozens of configurations of amplifiers, and they all do different things. As luck would have it, I’m currently studying for an electrical engineering final exam that covers some of the more basic configurations of operational amplifiers. Here’s a link to a Javascript application that I wrote that shows just some of them. (To demonstrate why details matter: the “differential” amplifier that you mis-cited is completely different from the “differencing” amplifier that Biosig’s patent actually includes.)
Second: Cutter does not use an amplifier for the same reason as the Biosig patent. Cutter simply uses an amplifier for its most straightforward purpose: to amplify the signal. Biosig’s patent uses a differencing amplifier to calculate a difference between two signals, to carry out the EMG vs. ECG observation.
Can’t Cutter’s device circuit do the same? No, because the amplifier is not configured as a differencing amplifier. It only takes in a signal, and… amplifies it.
Q.E.D.
This really couldn’t be more black-and-white, Ned. You’re going to have to acknowledge defeat on this one.
Not going to happen David.
Not even in this particular case, and certainly not in any meaningful way that just even might impugn Ned’s windmill quests.
He has been on his crusade for far too long to let the truth get in the way.
David, the Cutter reference is not as good as Fujisaki US4444200 cited in reexam 90/010,366. This references discloses two grips, spaced electrodes connected in the same manner to a differential amplifier.
Fujisaki is certainly a much better reference – and, yes, it does teach a differential amplifier.
However, in response to Fujisaki, the applicant submitted arguments (without amendment). The examiner agreed and issued a reexam certificate.
How is that possible if Fujisaki teaches “the same circuit?” Because it doesn’t. Here is the applicant’s argument, which the examiner found persuasive:
So, this raises the question: What’s in the patent, and the disclosure, that achieves this result?
Well… that’s where your argument starts to gain some traction, Ned, because the disclosure is pretty weak about this. There is some further explanation in the reply to the non-final office action:
It is submitted that claim 1 distinguishes from the teachings of the Cutter patent by defining the electrode arrangements (the first live electrode and the first common electrode; the second live electrode and the second common electrode) on either half of the elongate member. … Only with such electronic connections is it possible to eliminate noise, which includes signals of substantial equal amplitude and equal phase on each set of electrodes, and the effects on muscle artifact, which also have equal magnitude and equal phase signals on both sets of electrode.
If that were the end of it, I’d say that your arguments have some validity, Ned.
However, there is one additional key difference between Fujisaki’s circuit and Biosig’s circuit – one that reflects both a structural difference, and a difference in the inventive concept (again citing the applicant’s argument that prompted a reexam certificate):
So, that’s the difference – structural and functional. Fujisaki uses a differencing amplifier to amplify the ECG difference and a band-pass filter to reduce noise, but this configuration has the side-effect of also capturing and amplifying noise caused by the EMG signal. Biosig’s inventor appreciated the effect of EMG, and therefore not only adjusted the positioning of the electrodes, but also relied on amplification by the differencing amplifier to cancel out the EMG.
Put another way: Fujisaki’s circuit amplifies the entire signal – both the EMG and ECG components – and then tries to filter out the ECG component, but this is futile because the EMG component already overwhelms the ECG component. In Biosig’s circuit, the differencing amplifier simultaneously cancels the EMG (same-phase, opposite-polarity) contribution of each signal and amplifies the ECG component.
Seems completely persuasive to me that Biosig’s circuit is structurally different from Fujisaki’s. It was also persuasive with the examiner – and presumably to Nautilus, which apparently didn’t even raise it in litigation, but chose the indefiniteness / “spaced relationship” aspect of attack.
“This entire incident is Nautilus’s attempt to play games with the patent – to steal the invention, ”
David,
You keep on cutting through the smoke like that, and how are the Infringer’s Rights groups get to weaken patent law further?
“and that the attempts to reconcile past Federal Circuit indefiniteness decisions with the Supreme Court’s clear standard are in vain.”
Oh, I don’t know about that / there does appear to be a shiny new coat of paint on the subject.
Indulge me in a 10000 foot view question.
Imagine someone invents a process, which is truly inventive: new, useful, and unobvious, which is essentially a combination of functions.
Imagine now an unimaginative parasitical manufacturing corporation which discovers the inventor’s inventive method, and decides to try to profit from the fruits of the inventor’s labor by manufacturing and selling a device which performs his inventive method of functions.
Should the inventor be able to, over and above being granted a patent with valid method and process claims to his invention, have the right to exclude the corporation from manufacturing and selling devices which are specifically designed to perform the inventive combination of functions, i.e. the process?
If so, what would be wrong with allowing him to have, explicit recourse to some form of broad apparatus claims, based on function, in order to obtain a correlatively broad scope of monopoly directly against those devices?
Why must we force him to wade into the area of inducement liability when he could have apparatus claims to directly address the issue?
While I recognize that you are indulging in a 10,000 ft view – in part in rebuttal to Ned’s odd views, I would clarify (as if there were any real doubt), that just as the idea of software is not the same as software, the idea of process should not be confused with software. Software is a manufacture and machine component. Enacting and using software may be the process.
Clearly, keeping those who would seek to confuse from doing so is critical.